Exhibit 10.19
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS
AMENDED.
LICENSE AGREEMENT
BETWEEN
THE TEXAS A&M UNIVERSITY SYSTEM
AND
INHIBITEX, INC.
THIS LICENSE AGREEMENT is made and entered into by and between The
Texas A&M University System (hereinafter referred to as "SYSTEM") with principal
offices in College Station, Texas, and Inhibitex, Inc. (hereinafter referred to
as "INHIBITEX"), a Delaware corporation with principal offices in Alpharetta,
Georgia.
WITNESSETH:
WHEREAS, SYSTEM is the owner, or the exclusive licensee, of certain
intellectual property related to Extracellular Matrix Binding Proteins; and
WHEREAS, SYSTEM desires that such intellectual property should be
commercialized for the public benefit and welfare; and
WHEREAS, INHIBITEX holds rights in related patent applications and
patents owned by SYSTEM, under a sublicense from the SYSTEM's licensee to such
related technologies, the AM Fund I, L.P.; and
WHEREAS, in addition to value that the subject intellectual property
may hold in the production of commercial products, the intellectual property may
enhance the value of the company, and may complement other assets in the
portfolio of patent rights held by the company; and
WHEREAS, INHIBITEX has represented that it has certain marketing,
engineering and financial capabilities, and that it shall commit itself to a
thorough and diligent program of development and commercialization of SYSTEM's
intellectual property so that the public utilization shall result therefrom; and
WHEREAS, SYSTEM is willing to grant to INHIBITEX, and INHIBITEX is
willing to accept, a license to use SYSTEM intellectual property, upon the terms
and conditions set forth below.
NOW, THEREFORE, in consideration of the mutual covenants and premises
contained herein, the receipt and sufficiency of which is hereby acknowledged,
the parties hereto agree as follows.
ARTICLE I - DEFINITIONS
1.01 "PATENT RIGHTS" shall mean the SYSTEM's rights by assignment or by
license in the following:
(a) United States Patent Application 09/200,650 entitled,
"Extracellular Matrix-Binding Proteins from Staphylococcus
Aureus," filed on November 25, 1998; and
(b) PCT/US Application 98/25246 entitled, "Extracellular
Matrix-Binding Proteins from Staphylococcus Aureus," filed on
November 25, 1998; and
(c) United States Patent Application 09/095,272 entitled, "Methods
for Inhibiting Platelet Aggregation and Thrombosis," filed on
June 10, 1998; and
(d) United States Provisional Patent Application 60/098,449
entitled, "Staphylococcal Adhesions for Donor Select and Donor
Stimulation Strategies, "filed on August 31, 1998; converted
August 1999 and also filed as a PCT application in August
1999; and
(e) United States Provisional Patent Application 60/098,439
entitled, "Multi-component Vaccines," filed on August 31,
1998; converted August 1999 and also filed as a PCT
application in August 1999; and
(f) United States Provisional Patent Application 60/098,443
entitled, "MSCRAMMS from Staphylococcal Epidermidis as Targets
from Immunopreventive and Immunotherapeutic Measures," filed
on August 31, 1998 and refilled on January 25, 1999 as
Provisional Application 60/117,119 as "Polypeptides and
Polynucleotides from coagulase-negative staphylococci"; and
(g) United States Provisional Application 60/133,334 entitled,
"Ace, a Collagen Binding MSCRAMM for Enterococcus Faesalis as
a Target for Immunopreventative Therapeutic Strategies,"
filed May 10, 1999; and
(h) United States Provisional Patent Application 69/132,404 field
April 28, 1999 entitled, "The Fibronogen-Binding MSCRAMM
(ClfA) of S. Aureus Inhibits Polymorphonuclear Attachment to
Fibrinogen"; and
(i) any patent(s) issuing from the foregoing application(s); any
divisionals, continuations, or continuations-in-part of the
foregoing applications; all equivalent foreign patent
applications which claim priority under such application(s);
any patent(s) issuing from the foregoing application(s); and
all extensions or reissues of any such patent(s).
1.03 "LICENSED PRODUCT" or "LICENSED PRODUCTS" shall mean any product,
process, or composition of matter which is within the scope of any
Valid Claim under the PATENT RIGHTS. As used herein, Valid Claim shall
mean and include a claim of an unexpired patent, or one whose
expiration date has been extended by law, so long as such claim shall
not have been held invalid in an unappealed or unappealable decision or
a court or other authority of competent jurisdiction.
1.04 "EFFECTIVE DATE" shall mean the date this Agreement is executed by both
parties hereto.
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1.05 "NET SALES" shall mean INHIBITEX's xxxxxxxx, or sublicensee(s)'s
xxxxxxxx for sales of LICENSED PRODUCTS hereunder less the sum of the
following:
(a) sales taxes, tariff duties and/or use taxes directly imposed
with reference to particular sales;
(b) outbound transportation prepaid or allowed; and
(c) amounts allowed or credited on returns.
No deductions shall be made for commissions paid to individuals whether
they are with independent sales agencies or regularly employed by
INHIBITEX and on its payroll, or for the cost of collections. LICENSED
PRODUCTS shall be considered "sold" when billed out or invoiced.
Receipts from transactions which are not made at arm's length shall be
assigned the value they would have had in similar commercial sales made
at arm's length.
ARTICLE II - LICENSE GRANT
2.01 Grant. Except as outlined in paragraphs 2.02, 2.03, and 2.04, SYSTEM
hereby grants to INHIBITEX the exclusive license and right under
SYSTEM's rights in PATENT RIGHTS to make, have made, use, and sell the
LICENSED PRODUCTS, and to grant sublicenses of the same scope, to the
end of the term of this Agreement as prescribed in paragraph 7.01.
2.02 Reservation. SYSTEM, on behalf of itself, reserves an irrevocable,
nonexclusive, nontransferable, royalty-free right to PATENT RIGHTS for
its research and educational purposes only, and not for commercial
purposes.
2.03 Reservation for Rice University, SYSTEM, on behalf of Rice University,
reserves an irrevocable, nonexclusive, nontransferable, royalty-free
right to the patent application within PATENT RIGHTS, and any
subsequent patents issuing therefrom, identified as United States
Patent Application 09/095,272 entitled, "Methods for Inhibiting
Platelet Aggregation and Thrombosis," filed on June 10, 1998, for
research and educational purposes only at Rice University and not for
commercial purposes.
2.04 U.S. Government Rights. In light of the funding which led to the
development of the technology described in the PATENT RIGHTS, the U.S.
Government holds certain rights in the PATENT RIGHTS, as set forth in
37CFR410.14(a).
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ARTICLE III - CONSIDERATION
3.01 Commercial Development and Sales. In consideration of the license grant
made to INHIBITEX by SYSTEM herein, INHIBITEX agrees to use
commercially reasonable efforts to accomplish commercial development of
LICENSED PRODUCTS. INHIBITEX or its sublicense(s) shall record first
NET SALES no later than December 31, 2006, unless failure to reach this
development milestone is due to commercial circumstances beyond its
control, such as but not limited to unforeseen delays in U.S.
Government regulatory approval; or unexpected technical, manufacturing
scale up, clinical trial or regulatory issues. Once product sales
begin, INHIBITEX shall record NET SALES every consecutive Calendar
Year.
3.02 License Fee. In light of the funding which INHIBITEX has provided for
research at SYSTEM, and in light of the support INHIBITEX has and is
providing for U.S and international patent protection, SYSTEM hereby
waives any requirement for payment of a License Fee.
3.03 Running Royalty Rate. In consideration for the license granted herein,
INHIBITEX shall remit to SYSTEM a royalty on NET SALES as follows:
(a) [ *** ] of NET SALES of LICENSED PRODUCTS which are claimed in
patents comprising PATENT RIGHTS in which SYSTEM is the sole
entity with authority to enter into license agreements for
such patent(s), either by ownership, or by assignment or
exclusive license; and
(b) [ *** ] of NET SALES of LICENSED PRODUCTS which are claimed in
patents comprising PATENT RIGHTS wherein SYSTEM and a second
party have authority to enter into license agreements for such
patent(s), either by ownership, or by assignment or exclusive
license; and
(c) [ *** ] of NET SALES of LICENSED PRODUCTS which are claimed in
patents comprising PATENT RIGHTS wherein SYSTEM and two or
more parties have authority to enter into license agreements
for such patent(s), either by ownership, or by assignment or
exclusive license.
3.04 Minimum Annual Consideration. In order to maintain this exclusive
license to PATENT RIGHTS, INHIBITEX shall pay to SYSTEM Minimum Annual
Consideration in accordance with the following schedule:
Calendar Years 2002 and 2003 [ *** ]
Calendar Year 2004 and every year thereafter
through the expiration of the Agreement [ *** ]
In the event that the requirement for the Minimum Annual Consideration
comes due before first NET SALES are recorded, then the Minimum Annual
Consideration for the subject Calendar Year shall be waived as long as
INHIBITEX is providing research support of like amount to the SYSTEM
for the same Calendar Year. Once NET SALES
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begins, in the event that INHIBITEX does not achieve any NET SALES
during any specified Calendar Year, or that running royalties for the
Calendar Year do not achieve the required minimum, INHIBITEX's royalty
payment for the last quarter of the Calendar Year shall include payment
of the balance needed to achieve the Minimum Annual Consideration for
the Calendar Year. In the event that this Agreement expires of is
terminated prior to the end of a Calendar Year, the Minimum Annual
Consideration shall be prorated for that year.
3.05 Patent Expense Reimbursement. As additional consideration for the
license granted herein, INHIBITEX shall reimburse SYSTEM for its
documented expenses incurred after the EFFECTIVE DATE in the
prosecution and maintenance of the PATENT RIGHTS as further described
in Article VI. Reimbursement of SYSTEM documented expenses shall be
provided by INHIBITEX to SYSTEM no later than thirty (30) days
following INHIBITEX's receipt of SYSTEM's statement of expenses.
3.06 Research Sponsorship. INHIBITEX shall provide to The Institute of
Biosciences and Technology of The Texas A&M University System Health
Science Center, a component of SYSTEM, research funding of [ *** ] for
the period September 1, 1999 through August 31, 2000. INHIBITEX may,
but is not required to, annually renew the research contract, subject
to approval of a Statement of Work and Budget to be submitted for its
consideration.
ARTICLE IV- SUBLICENSES
4.01 Sublicenses. INHIBITEX may grant sublicenses hereunder to persons,
firms or corporations under such terms and conditions as it may
arrange. As set forth in paragraph 1.05, sales made by sublicense(s)
shall be subject to the royalty set forth in paragraph 3.03. Beginning
on January 1, 2006, or when INHIBITEX first becomes profitable as
determined by generally accepted accounting principles, whichever comes
first, if INHIBITEX negotiates for up-front license fees or other fees
for the grant of a sublicense to PATENT RIGHTS in addition to royalty
consideration, or receives periodic fee payments after this date, then
INHIBITEX shall provide to SYSTEM [ *** ] of the portion of such fees
recorded from such sublicense that are attributable to PATENT RIGHTS.
The portion attributable to the PATENT RIGHTS shall be determined
mutually and in good faith. Any payments due to SYSTEM under this
paragraph 4.01 shall be included with INHIBITEX's payments and reports
under the provisions of ARTICLE VI hereof for the quarterly period in
which any such considerations are received by INHIBITEX.
4.02 Reporting. INHIBITEX shall notify SYSTEM of the grant of sublicense to
any third party and shall provide SYSTEM with copies of all executed
sublicenses and of such sublicensee's quarterly reports as are
pertinent to calculation of SYSTEM's consideration hereunder.
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4.03 Non-cash transactions. INHIBITEX shall not accept anything of value in
lieu of money payment under a sublicense without the express written
consent of SYSTEM.
4.04 Sublicense obligations. INHIBITEX agrees that any sublicenses granted
by it shall provide that the obligations to SYSTEM of Article X, and
paragraphs 12.02 and 12.03 of this Agreement shall be binding upon the
sublicensee(s) as if it were a party to this Agreement. INHIBITEX
further agrees to include or attach copies of these Articles and
paragraphs to sublicense agreements.
ARTICLE V - PATENTS
5.01 Patent Filing and Prosecution. SYSTEM shall prosecute to completion the
U.S. Patent Applications identified in and comprising PATENT RIGHTS.
"Prosecution to completion" shall mean prosecution of the original and
any continuing or divisional applications to issuance or to a final
rejection. SYSTEM is not required to, but may at its discretion, pursue
an appeal to the Board of Patent Appeals and Interferences, or the
Federal Circuit Courts, or similar action in foreign countries. SYSTEM
shall maintain any U.S. patent resulting from the prosecution described
hereinabove. In the event that INHIBITEX determines not to continue
reimbursement of SYSTEM's expenses for the prosecution to completion or
maintenance of U.S. Patent Applications comprising PATENT RIGHTS,
INHIBITEX will inform SYSTEM of its decision in sufficient time for
SYSTEM to make decisions regarding its desire to continue prosecution.
In such case, SYSTEM shall have the right to continue the prosecution
or maintenance at its own expense. However, any such applications or
patents funded by SYSTEM thereafter shall be excluded from PATENT
RIGHTS.
5.02 Foreign Patent Applications. At its sole discretion and expense,
INHIBITEX may authorize SYSTEM to file and prosecute foreign patent
applications corresponding to U.S. patent applications filed pursuant
to paragraph 5.01.
(a) Election not to file. INHIBITEX will inform SYSTEM no later
than nine (9) months following the date of filing of such U.S.
applications as to its selection of foreign countries in which
it desires SYSTEM to seek corresponding patent protection. The
SYSTEM shall then have the right to file corresponding foreign
patent applications at its own expense in those foreign
countries not selected by INHIBITEX. However, such
applications filed at SYSTEM's expense shall be excluded from
PATENT RIGHTS.
(b) Prosecution and Maintenance of Foreign Patents. Should
INHIBITEX select a country in which to file corresponding
foreign patent applications(s) and subsequently elects not to
continue to reimburse the SYSTEM for its diligent prosecution
and maintenance of such foreign patent(s) or patent
application(s), it shall so notify the SYSTEM at least three
(3) months prior to taking (or not taking) any action which
would result in abandonment, withdrawal or lapse of
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such foreign patent(s) or application(s). The SYSTEM shall
then have the right to continue maintenance of prosecution of
such foreign patent(s) or application(s) at its own expense.
However, expenses incurred prior to the point of INHIBITEX
taking (or not taking) such action shall remain the
responsibility of LICENSEE and such foreign patent(s) or
applications(s) shall be excluded from PATENT RIGHTS.
5.03 Financial Responsibility. INHIBITEX, upon receipt of a supporting
invoice from SYSTEM, shall reimburse SYSTEM for all expenses incurred
by SYSTEM in filing, prosecuting, and maintaining the aforementioned
patent application(s) and patent(s) under the PATENT RIGHTS, in
accordance with paragraphs 5.01, and 5.02, hereinabove. INHIBITEX shall
provide payment as reimbursement of SYSTEM's documented expenses
incurred in filing, prosecuting or maintaining patent application(s) or
patent(s) as described hereinabove within thirty (30) days of receipt
of SYSTEM's supporting invoice.
5.04 Information. SYSTEM shall keep INHIBITEX promptly and fully informed of
the course of patent prosecution or other proceedings. SYSTEM shall
disclose to INHIBITEX the complete texts of all patent applications
filed by SYSTEM under the PATENT RIGHTS as well as all information
received concerning office actions, the institution or possible
institution of any interference, opposition, re-examination, reissue,
revocation, nullification or any other official proceeding involving
PATENT RIGHTS. SYSTEM shall provide to INHIBITEX the timely and
reasonable opportunity to provide input to the development of the
patent application and any official proceedings thereafter.
ARTICLE VI - PAYMENTS AND REPORTS
6.01 When Royalty Payments are due. Royalty Payments shall be made
quarterly. Royalty Payments shall be made to SYSTEM, in College
Station, Texas, not later than sixty (60) days after the last day of
the calendar quarter in which they accrue.
6.02 Royalty reports. With each quarterly payment, INHIBITEX shall provide a
royalty and sales report with sufficient details to allow SYSTEM to
calculate the royalty due that quarter. No quarterly reports are due
until sales of LICENSED PRODUCTS begin. After product sales begin,
quarterly reports shall be provided even if no royalties accrued during
the quarter.
6.03 Currency. Payments shall be in United States dollars. If any currency
conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made using the exchange
rate prevailing at the Chase Manhattan Bank (N.A.) on the last business
day of the calendar quarter reporting period to which royalty payments
relate.
Page 7 of 15
6.04 Inspection of books and records. At its own expense, SYSTEM may
annually inspect INHIBITEX's books and records as needed to determine
royalties payable. INHIBITEX shall maintain such books and records for
at least three (3) years following the dates of the underlying
transactions. Any such inspections shall be in confidence and conducted
during ordinary business hours, and SYSTEM will provide INHIBITEX prior
notice of two (2) weeks before making such inspections. SYSTEM may
employ a Certified Public Accountant for this purpose.
6.05 Interest charges. Overdue royalty payments shall bear interest until
payment at a per annum rate five percent (5%) above the prime rate in
effect at the Chase Manhattan Bank (N.A.) on the due date or the
highest rate allowed by law, whichever is lower. The payment of such
interest shall not foreclose SYSTEM from exercising any other rights it
may have as a consequence of the lateness of any payment.
6.06 Commercialization Report. Within sixty (60) days following the close of
each Calendar Year, INHIBITEX shall deliver to SYSTEM a written report
as to INHIBITEX's efforts and accomplishments during the preceding year
in commercializing LICENSED PRODUCTS, as well as its commercialization
plans for the coming year.
ARTICLE VII- TERMINATION
7.01 Expiration. This Agreement, unless sooner terminated as provided
herein, shall remain in effect until (a) failure of SYSTEM to obtain
one or more issued patent under PATENT RIGHTS, (b) expiration of the
last to expire patent(s) under the PATENT RIGHTS, or (c) final and
unappealed determination by a court of competent jurisdiction that all
patent applications and patents comprising PATENT RIGHTS are invalid
and unenforceable.
7.02 Termination by INHIBITEX. INHIBITEX may terminate this Agreement by
providing written notice to SYSTEM at least sixty (60) days before the
termination is to take effect.
7.03 Termination by SYSTEM. If INHIBITEX defaults in making payments under
this Agreement or otherwise materially breaches this Agreement, SYSTEM
may give INHIBITEX written notice of the breach. INHIBITEX shall have a
period of sixty (60) days from receipt of the notice to cure the
breach. If INHIBITEX does not cure the breach within this period,
SYSTEM may terminate this Agreement by giving written notice of its
election to do so.
7.04 Financial condition. If INHIBITEX: (a) ceases to carry on its business,
(b) becomes "insolvent" (as such term is defined in the United States
Bankruptcy Code, as amended from time to time), (c) fails to pay its
debts in the ordinary course of business under conditions indicating
insolvency, or (d) voluntarily seeks, consents to or acquiesces in the
benefits of any bankruptcy or similar debtor-relief laws, then SYSTEM
may terminate this Agreement without prejudice to any other remedy to
which SYSTEM may be entitled
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at law or in equity or elsewhere under this Agreement, by giving
written notice of termination to INHIBITEX.
7.05 Return of rights. Should this Agreement be terminated under paragraphs
7.02, 7.03, or 7.04 above, any and all rights, licenses and claims
hereunder shall be returned by INHIBITEX to SYSTEM.
7.06 Return of Rights in Individual Technologies. INHIBITEX and SYSTEM
recognize and acknowledge that PATENT RIGHTS may claim technologies
that ultimately may comprise more than one potential commercial
product. Furthermore, INHIBITEX and SYSTEM recognize that INHIBITEX, in
its normal business operations, may choose to pursue development and
commercialization of one or more potential products with greater
diligence than other, including but not limited abandonment of pursuit
of commercialization of one or more technologies claimed in PATENT
TIHTS. Furthermore, while SYSTEM recognizes the importance of the body
of related technologies to INGIBITEX'S business and development
efforts, SYSTEM's public mission requires that it assure that potential
products are developed to the maximum public benefit. Accordingly, at
any time following the second anniversary of EFFECTIVE DATE, in the
event that SYSTEM believes that INHIBITEX has failed to devote
reasonable business efforts to the development and commercialization of
certain technology or products claimed in one of more of the patents
comprising PATENT RIGHTS, it may send notice to INHIBITEX requesting
that the License Agreement be amended to return to SYSTEM those rights
previously granted to INHIBITEX in such enumerated PATENT RIGHTS.
INHIBITEX shall consider SYSTEM's request in good faith and unless it
can prove diligence consistent with reasonable judgement in business
developments for the cited technology or product claimed in such
enumerated PATENT RIGHTS, shall return such SYSTEM's rights in such
PATENT RIGHTS to SYSTEM, the parties shall submit the question to
non-binding arbitration. It is understood that the principles set forth
in this paragraph 7.06 are applicable to one or more patent
applications or patents, and not to individual claims of the patent
applications or patents; as further clarification, diligence respecting
any claim of a subject patent application or patent would constitute
diligence to the patent application or patent as a whole.
7.07 Other matters surviving termination. All accrued obligations and
claims, including royalty obligations and claims or causes of action
for breach of this Agreement, shall survive termination of this
Agreement. Obligations of confidentiality shall survive termination of
this Agreement. This section controls in the case of a conflict with
any other section of this Agreement.
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ARTICLE VIII - ENFORCEMENT OF LICENSED TECHNOLOGY.
8.01 Notice of infringement. SYSTEM and INHIBITEX shall promptly notify one
another in writing of any alleged infringement of any PATENT RIGHTS.
Within thirty (30) days after receipt of such notice, SYSTEM and
INHIBITEX shall meet and formulate a strategy for resolving the alleged
infringement.
8.02 Legal process. INHIBITEX shall have the right, but no obligation, to
pursue legal process to redress the alleged infringement. Upon SYSTEM's
written consent, INHIBITEX may bring such process in the name of SYSTEM
and may make SYSTEM a party plaintiff or otherwise appropriate
participant in such process. In the event that INHIBITEX desires to
bring such process in the name of SYSTEM, INHIBITEX shall pay SYSTEM's
legal expenses incurred in bringing such process in the name of SYSTEM,
and shall indemnify SYSTEM against any order for costs that may be made
against SYSTEM as a result of SYSTEM being named as a party in such
proceedings. In the event SYSTEM elects to participate substantively in
the litigation it shall do so at its own expense.
8.03 Monetary Recovery. Any monetary recovery for an infringement in a suit
brought by INHIBITEX shall be applied in the following manner: first,
to INHIBITEX's documented legal expenses; second, [ *** ] to INHIBITEX
and [ *** ] to SYSTEM.
8.04 Cooperation. SYSTEM and INHIBITEX shall cooperate in any legal process
concerning alleged infringement of PATENT RIGHTS. Each party shall, to
the fullest extent possible, make available its employees, records,
information and the like as relevant to the legal process.
8.05 Action by licensor. Should INHIBITEX choose not to pursue legal action
to redress the alleged infringement, SYSTEM may do so at its own
expense. Any monetary recovery resulting from pursuit of redress solely
by SYSTEM shall be considered SYSTEM's recovery with no obligations to
INHIBITEX.
ARTICLE IX - OBLIGATIONS OF CONFIDENTIALITY
9.01 Confidential information identified. These obligations of
confidentiality cover all information which any party to this Agreement
discloses to the other party, provided that the information concerns or
arises out of this Agreement and is made in a written document marked
"Confidential." This information is called the "CONFIDENTIAL
INFORMATION" in this section. However, the following classes of
information are specifically excluded from this definition of
"CONFIDENTIAL INFORMATION":
(a) Information which is available to the public at the time it is
disclosed,
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(b) Information which becomes available to the public without a
breach of this Agreement,
(c) Information which the recipient already possesses at the time
it is disclosed,
(d) Information which is internally developed by the recipient
independently of and wholly without knowledge of the
CONFIDENTIAL INFORMATION, and
(e) Information which is lawfully disclosed to the recipient by a
third party which makes such disclosure without a breach of
any secrecy Agreement.
9.02 Secrecy. The recipient shall hold the CONFIDENTIAL INFORMATION in
confidence and shall not disclose it nor permit it to be disclosed to
any other party, with the exception that INHIBITEX may disclose
CONFIDENTIAL INFORMATION disclosed by SYSTEM hereunder to sublicense(s)
or potential sublicensee(s), consultants, its Board of Directors and
Scientific Advisory Boards as long such parties agree to be bound by
similar terms of confidentiality. The recipient shall use the
CONFIDENTIAL INFORMATION solely for the purposes of this Agreement. The
recipient's obligation to maintain the CONFIDENTIAL INFORMATION in
confidence shall expire after five (5) years from the date of
disclosure.
9.03 Governmental Disclosure. It is understood and agreed that the recipient
of any CONFIDENTIAL INFORMATION shall not be precluded from disclosing
such CONFIDENTIAL INFORMATION if such disclosure is made in response to
a valid order of a court or other governmental body of the United
States or any political subdivision thereof, or by order of the
Attorney General of the State of Texas; provided, however, that the
recipient first shall have given notice to the disclosing party
sufficient to allow the other party to seek protection from such order.
Furthermore, it is understood and agreed that nothing in this Agreement
shall prevent either party from disclosing information to the United
States or any State of foreign government, or to any agency or
representative thereof, which is required to be disclosed by law or
regulation or to satisfy any governmental regulation relating to the
use of the LICENSED PRODUCTS. It is understood and agreed that
disclosure of CONFIDENTIAL INFORMATION may be made to the U.S. Patent
and Trademark Office, and to comparable foreign offices, for purposes
of securing and prosecuting patent application(s) under the PATENT
RIGHTS.
9.04 Protective Measures. To protect the confidentiality of the CONFIDENTIAL
INFORMATION, the recipient shall take the same measure which it takes
to protect the confidentiality of its own confidential information, and
shall take those measures which a prudent business person would take to
protect valuable, secret, proprietary information.
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ARTICLE X - LIABILITY, INDEMNIFICATION & REPRESENTATIONS
10.01 Patent Infringement Indemnification. INHIBITEX shall at all times
during the term of this Agreement and thereafter, indemnify, defend and
hold harmless SYSTEM, Rice University, their regents, officers,
employees, and affiliates, against any claim, proceeding, demand,
liability, or expense (including legal expenses and reasonable
attorney's fees) which relates to any action brought by a third party
alleging infringement of a domestic or foreign patent as a result of
the activities of INHIBITEX or sublicensee(s) under this Agreement.
10.02 Product Liability and Indemnification. INHIBITEX shall at all times
during the term of this Agreement and thereafter, indemnify, defend and
hold harmless SYSTEM, Rice University, their regents, officers,
employees, and affiliates, against any claim, proceeding, demand,
liability, or expenses (including legal expenses and reasonable
attorney's fees) which relates to injury to persons or property, or
against any other claim, proceeding, demand, expense and liability of
any kind whatsoever resulting from the production, manufacture, sale,
use, lease, consumption or advertisement of LICENSED PRODUCTS or
arising from any obligation of INHIBITEX or sublicensee(s) under this
Agreement.
10.03 Representation. SYSTEM represents that it owns and has title, either
solely or jointly, to the PATENT RIGHTS, or holds a license to the
PATENT RIGHTS, and has the full right and power to grant the license to
its interests in such PATENT RIGHTS as set forth in paragraph 2.01, and
that there are no outstanding agreements, assignments, or encumbrances
inconsistent with the provisions of this Agreement. SYSTEM MAKES NO
OTHER REPRESENTATIONS AND EXTENDS NO OTHER WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, NOR DOES SYSTEM
ASSUME ANY OBLIGATIONS WITH RESPECT TO INFRINGEMENT OF INTELLECTUAL
PROPERTY RIGHTS OR ANY OTHER RIGHTS OF THIRD PARTIES DUE TO INHIBITEX'S
ACTIVITIES UNDER THIS AGREEMENT.
10.04 Representation Regarding AtheroGenics, Inc. SYSTEM represents that it
previously entered into a Letter Agreement with AtheroGenics, Inc.,
wherein AtheroGenics, Inc. funded U.S. Patent Application 06/049,333
(converted to U.S. Patent Application 09/095,272) as consideration for
an option to negotiate for rights in any resulting patents. By letter
dated August 19, 1998, a copy of which is included as Exhibit A hereto,
AtheroGenics, Inc. has requested that SYSTEM instead license the
subject intellectual property to INHIBITEX.
10.05 Representation Regarding Rice University. SYSTEM represents that is has
entered into a Memorandum of Agreement dated September 10, 1998 with
Rice University wherein Rice University has licensed its interest in
U.S. Patent Application 09/095,272 to the SYSTEM.
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10.06 Representation Regarding BioResearch Ireland. SYSTEM represents that a
subset of PATENT RIGHTS is jointly owned by BioResearch Ireland, and
that SYSTEM has not secured exclusive licenses to the rights of
BioResearch Ireland in such jointly owned PATENT RIGHTS. SYSTEM has
received communication from INHIBITEX that such rights of BioResearch
Ireland have been licensed directly between the parties, such
arrangement confirmed by BioResearch Ireland in letter dated December
7, 1999, and included as Attachment B hereto.
10.07 Representation Regarding United States Provisional Application
60/133,334. SYSTEM represents that continued development and
improvement of the technology comprising United States Provisional
Application 60/133,334, entitled, "Ace, a Collagen Binding MSCRAMM for
Enterococcus Faesalis as a Target for Immuno-preventative Therapeutic
Strategies," may involve collaboration with researchers at the
University of Texas Health Science Center at Houston, Texas ("Center").
Furthermore, at such time as the subject provisional patent may be
converted to a full utility patent, inventors from the Center may be
included as co-inventors for the subject technology. In such case,
while the SYSTEM would seek to obtain exclusive rights in the Center's
interest in such technology through a Memorandum of Understanding
("MOU") with the Center, the SYSTEM makes no representation that such
MOU will be certain or that it will succeed in obtaining exclusive
interest in the Center's rights in any such patent application.
ARTICLE XI - NOTICES
11.01 Notices. Payments, notices, or other communications required by this
Agreement shall be sufficiently made or given if mailed by certified
First Class United States mail, postage pre-paid, or by commercial
carrier (e.g., Federal Express, Airborne, etc.) when such carrier
maintains receipt or record of delivery, addressed to the address
stated below, or to the last address specified in writing by the
intended recipient.
(a) If to SYSTEM:
Executive Director
Technology Licensing Office
The Texas A&M University System
000 XXXX
Xxxxxxx Xxxxxxx, Xxxxx 00000-0000
(b) If to INHIBITEX:
Xxxxxxx X. Xxxxxxxx, Ph.D.
President and CEO
Inhibitex. Inc.
0000 Xxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX 00000
Page 13 of 15
ARTICLE XII - MISCELLANEOUS PROVISIONS
12.01 Export Controls. It is understood that SYSTEM is subject to United
States laws and regulations controlling the export of technical data,
computer software, laboratory prototypes and other commodities, and
that its obligations hereunder are contingent on compliance with
applicable United States export laws and regulations. The transfer of
certain technical data and commodities may require a license from the
cognizant agency of the United States Government and/or written
assurances by INHIBITEX that INHIBITEX shall not export data or
commodities to certain foreign countries without prior approval of such
agency. SYSTEM neither represents that a license shall not be required
nor that, if required, it shall be issued.
12.02 Non-Use of Names. INHIBITEX shall not use the names of The Texas A&M
University System, Rice University, nor of any of their employees or
components, nor any adaptation thereof, in any advertising, promotional
or sales literature without the prior written consent obtained from
SYSTEM in each case, except that INHIBITEX may state that it is
licensed by SYSTEM under one or more of the patents and/or applications
comprising the PATENT RIGHTS.
12.03 Trademarks. INHIBITEX shall have the right to select, own and use its
own trademark(s) on the LICENSED PRODUCTS. However, nothing herein
shall be construed as granting to INHIBITEX any license or other right
under any trade name, trademark, or service xxxx owned or licensed by
SYSTEM. Conversely, SYSTEM shall have no rights to trade names,
trademarks, or service marks owned by INHIBITEX.
12.04 Assignment of this Agreement. This Agreement, with the rights and
privileges that it creates, is assignable only with the written consent
of both parties.
12.05 Funding. It is understood that royalty and other payments due SYSTEM as
specified in Article III are just returns to SYSTEM in consideration of
the grant made to INHIBITEX, and shall not be construed in any manner
to be funding for additional research.
12.06 Force majeure. Each party shall be excused from any breach of this
Agreement, which is proximately caused by government regulation, war,
strike, act of God, or other similar circumstance normally deemed
outside the control of well-managed businesses.
12.07 Execution and modification. This Agreement will become binding only
when signed by both parties. It may be modified or amended only by a
writing signed by the parties.
12.08 Entire Agreement. This Agreement contains the entire understanding of
the parties with respect to the PATENT RIGHTS and supersedes all other
written and oral agreements between the parties with respect to the
PATENT RIGHTS.
Page 14 of 15
12.09 Headings. Headings appear solely for convenience of reference. Such
headings are not part of this Agreement and shall not be used to
construe it.
12.10 Provisions. If any provision or provisions of this Agreement shall be
held to be invalid, illegal, or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be
affected or impaired thereby.
IN WITNESS WHEREOF, the parties have caused this Agreement to become
effective as of the date last executed below by a signatory to this Agreement.
INHIBITEX, INC. THE TEXAS A&M UNIVERSITY SYSTEM
/s/ Xxxxxxx X. Xxxxxxxx /s/ Xxx X. Xxxx
---------------------------------- -------------------------------------
Xxxxxxx X. Xxxxxxxx Xxx X. Xxxx
President & CEO Vice Chancellor for Business Services
Date: 1/19/00 Date: 2/4/00
Page 15 of 15
