EXCLUSIVE SUBLICENSE AGREEMENT
Exhibit
10.34
This Exclusive Sublicense Agreement
(“Agreement”) is made and entered into as of the 15th day of August, 2008 (the
“Effective Date”), by and between Advanced Cell Technology, Inc., a Delaware
corporation with offices located at 00000 Xxxxx Xxxxxx Xxxx, Xxxxx 000, Xxx
Xxxxxxx, XX 00000 (“ACT”), Embryome Sciences, Inc., a California corporation
(“ES”), with offices located at 0000 Xxxxxx Xxx Xxxxxxx, Xxxxx 000, Xxxxxxx,
Xxxxxxxxxx 00000. ACT and ES are sometimes hereinafter referred to as
the “Parties”.
WITNESSETH
WHEREAS, ACT is the licensee of certain
PATENT RIGHTS under an Exclusive License Agreement, effective as of May 9, 2006,
among ACT, Kirin Beer Kabushiki Kaisha, Aurox, LLC, Hematech, LLC, and Kirin SD,
Inc.; and
WHEREAS, ES desires to obtain an
exclusive sublicense from ACT to use the PATENT RIGHTS and a license to use
KNOW-HOW upon the terms and conditions set forth in this Agreement;
and
WHEREAS, ACT is willing to grant such a
license to ES upon the terms and conditions set forth in this
Agreement;
NOW, THEREFORE, in consideration of the
premises and the mutual covenants contained herein, the Parties hereto agree as
follows:
ARTICLE 1 -
DEFINITIONS
For the purposes of this Agreement, the
definitions found in Article 1 of the Kirin License Agreement are incorporated
into this Agreement by reference, except as otherwise provide
below. In addition, the following words and phrases shall have the
following meanings:
1.1 “AFFILIATE”
means any corporation, limited liability company, limited partnership or other
entity in control of, controlled by, or under common control with
ES. Any use the word AFFILIATE in this Agreement shall have the
meaning set forth in this paragraph, rather than the mean ascribed to such term
in the Kirin License Agreement.
1.2 “CONFIDENTIAL
INFORMATION” means confidential or proprietary information of ACT or ES relating
to the PATENT RIGHTS, KNOW-HOW, LICENSED PROCESSES, LICENSED SERVICES or
LICENSED PRODUCTS. CONFIDENTIAL INFORMATION may be in written,
graphic, oral or physical form and may include scientific knowledge, know-how,
processes, inventions, techniques, formulae, products, business operations,
customer requirements, designs, sketches, photographs, drawings, specifications,
reports, studies, findings, data, plans or other records, biological materials,
and/or software. CONFIDENTIAL INFORMATION shall not
include: (a) information which is, or later becomes, generally
available to the public through no fault of the recipient; (b) information which
is provided to the recipient by an independent third party having no obligation
to keep the information secret; (c) information which the recipient can
establish by written documentation was previously known to it; or (d)
information which the recipient can establish by written
documentation
was
independently developed by it without reference to the CONFIDENTIAL
INFORMATION.
1.3 “KIRIN
LICENSE AGREEMENT” means that certain Exclusive License Agreement, effective as
of May 9, 2006, among ACT, Kirin Beer Kabushiki Kaisha, Aurox, LLC, Hematech,
LLC, and Kirin SD, Inc., as the same may from time to time be amended or
modified.
1.4 “KNOW-HOW”
means all compositions of matter, techniques and data and other know-how and
technical information including inventions (whether or not patentable),
improvements and developments, practices, methods, concepts, trade secrets,
documents, computer data, computer slide illustrations, computer code,
apparatus, test data, analytical and quality control data, formulation,
manufacturing, patent data or descriptions, development information, drawings,
specifications, designs, plans, proposals and technical data and manuals and all
other CONFIDENTIAL INFORMATION that is owned or controlled by ACT as of the
Effective Date, and that specifically relates to the subject matter described in
or claimed by the PATENT RIGHTS.
1.5 “SUBLICENSEE”
means a sublicensee of the rights granted ES under this Agreement, as further
described in Article 2.
For
purposes of this Agreement, except as otherwise expressly provided herein or
unless the context otherwise requires: (a) the use herein of the
plural shall include the single and vice versa and the use of the
masculine shall include the feminine; (b) unless otherwise set forth herein, the
use of the term “including” or “includes” means “including [includes] but [is]
not limited to”; and (c) the words “herein,” “hereof,” “hereunder” and other
words of similar import refer to this Agreement as a whole and not to any
particular provision. Additional terms may be defined throughout this
Agreement.
ARTICLE 2 – LICENSE
GRANT
2.1 Grant of
Rights. ACT hereby grants to ES, and ES accepts, subject to
the terms and conditions of this Agreement, a royalty-bearing (to the extent
provided herein), worldwide, exclusive sublicense, with the right to
further sublicense, to use the PATENT RIGHTS, and a worldwide, exclusive
license, with the right to further sublicense, to use the and
KNOW-HOW, to (a) research, develop, make, have made, use, sell, offer for sale,
import, export, reproduce, distribute, perform, and display and otherwise
dispose of LICENSED PRODUCTS, and (b) to develop and perform LICENSED
SERVICES, in the Territory in the Exclusive ACT Field.
2.2 Sublicense
Rights. ES shall have the right to grant sublicenses of its
rights under Section 2.1 without the consent or approval of ACT. ES
agrees to provide ACT with a fully executed copy of all sublicense agreements
within thirty (30) days after execution.
2.3 Knowledge
Transfer. Within ten (10) days of the Effective Date, ACT
shall provide, deliver, and transfer to ES all information and data relating to
the PATENT RIGHTS and KNOW-HOW as may be reasonably necessary to allow ES to
exploit the licenses granted hereunder. Such transfer shall be made free and
clear of all liens, security interests, encumbrances, and claims of any kind by
any third party. ACT shall bear all costs of so delivering the KNOW
HOW to ES. ACT shall not retain any copies (in any format or media)
of the KNOW HOW.
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2.4 Performance of Obligations
under Kirin License Agreement. ACT agrees to fully perform
when and as due all of its obligations, including but not limited to the payment
of all royalties, Sublicense Revenue, and other amounts due, under the Kirin
License Agreement. ACT will not terminate the Kirin License Agreement
or cause the Kirin License Agreement to be terminated, and will not enter into
any amendment or modification of, or waiver of rights under, the Kirin License
Agreement, without the prior written consent of ES, which consent may be given
or withheld in ES’s sole discretion. ACT shall deliver to ES, within
five (5) days after receiving the same, any and all notices or communications
from the Licensor under the Kirin License Agreement. ES shall have
the right, but not the obligation, to cure any and all breaches or defaults by
ACT, or to perform any obligation of ACT required to avoid or prevent a breach
or default by ACT, under the Kirin License Agreement, including but not limited
to the payment of any royalties or Sublicense Revenue due under the Kirin
License Agreement. ACT shall reimburse ES on demand, with interest at
the rate of 12% per annum, for all costs and expenses incurred by ES to cure any
breach or default, or to perform any obligation of ACT required to avoid or
prevent a breach or default by ACT, under the Kirin License
Agreement.
ARTICLE 3 –
COMMERCIALIZATION OBLIGATIONS
3.1 ES
intends to use, or to cause its Sublicensees to use, commercially reasonable and
diligent efforts to bring one or more ROYALTY-BEARING LICENSED PRODUCTS and
ROYALTY BEARING LICENSED SERVICES to market through an active and diligent
program for exploitation of the PATENT RIGHTS and KNOW-HOW and to continue
active, diligent marketing efforts for one or more ROYALTY-BEARING LICENSED
PRODUCTS and ROYALTY-BEARING LICENSED SERVICES throughout the life of this
Agreement. ES makes no representation, guaranty, or warranty that it
or its Sublicensees will be successful in developing or bringing to market any
ROYALTY-BEARING LICENSED PRODUCT or ROYALTY-BEARING LICENSED
SERVICES.
ARTICLE 4 -
CONSIDERATION
4.1 Initial Sublicense
Fee. In partial consideration of the rights and licenses
granted to ES by ACT in this Agreement, ES shall pay to ACT on the Effective
Date a sublicense fee equal to Fifty Thousand Dollars (U.S.) ($50,000) (the
“Sublicense Fee”). The Sublicense Fee is not refundable and is not
creditable against other payments due to ACT under this
Agreement. The Sublicense Fee shall
be allocated
and paid in the following manner: (a) ES shall pay $37,500 to
the Licensor under the Kirin License Agreement (the “Licensor”) to
satisfy ACT’s minimum royalty payment obligation for the year ended December 31,
2007 under Section 3.3 of the Kirin License Agreement; (b) ES shall pay to the
Licensor the amount due under Section 3.7 of the Kirin License Agreement with
respect to the payment made under clause (a) of this sentence to satisfy ACT’s
obligation to pay a late fee; (c) ES shall pay $10,000 to
the Licensor to satisfy ACT’s obligation under Section 3.4 of the Kirin License
Agreement to pay the Licensor 20% of all “Sublicense Income;” and (d) the
amount, if any, by which $50,000 exceeds the amounts paid under clauses (a)
through(c) of this sentence shall be paid to ACT.
4.2 Additional
Provisional Sublicense Fee. ES shall pay
to ACT or to the Licensor the amount, if any, by which royalties on Net Sales
paid to the Licensor under the Kirin License Agreement are less than
$50,000. Such amount shall be paid to ACT or to the Licensor on the
later of (a) the date required under Section 3.3 of the Kirin License Agreement,
or (b) five (5) business days after ES receives
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written
notice from ACT showing the total amount of royalties on Net Sales paid to the
Licensor for the applicable year. ES shall determine in its sole
discretion whether to pay such amount to ACT or directly to Licensor to satisfy
ACT’s obligation under Section 3.3 of the Kirin License Agreement.
4.3 Royalties and Other
Consideration.
(a) As
additional consideration of the license granted to ES from ACT in Article 2 of
this Agreement, ES shall pay to ACT a royalty equal to (i) 3.5% of the Net Sales
received by ES and its AFFILIATES for all ROYALTY-BEARING LICENSED PRODUCTS or
ROYALTY-BEARING LICENSED SERVICE sold, performed, or leased by ES or any
AFFILIATE, and (ii) 20% of all Sublicense Revenue (as defined in the Kirin
License Agreement) received by ES and its AFFILIATES, provided that in o even
shall ACT receive, on a country-by-country basis, less than 3.5% of the
aggregate Net Sales of the Licensed Product or Licensed Service in a particular
country where ES has sublicensed to a third party rights with respect to the
Licensed Product or Licensed Service. The obligation of ES to pay
royalties shall terminate with respect to NET SALES and Sublicense Revenue
arising in any country concurrently with the expiration or termination of the
last applicable VALID CLAIM within the PATENT RIGHTS in such country in which
the ROYALTY-BEARING LICENSED PRODUCT or ROYALTY-BEARING LICENSED SERVICE is
sold, or May 9, 2016 if no such patents have issued by such date, whichever is
longer.
(b) ES
shall receive a credit toward the payment of royalties due under this Section
4.3 in an amount equal to the payments, if any, made by ES under Section
4.2. Such credit shall be cumulative and shall carry over to each
subsequent year if the amount of royalties payable to ACT under this Section 4.2
is less than the amount paid by ES under Section 4.2.
(c) In
the event that Licensee or any of its AFFILIATES or SUBLICENSEES is required to
make, and actually does make, royalty payments to one or more third parties for
a license to an issued patent or patents,(“Third Party Payments”) in order to
make, have made, use, import, sell or offer for sale ROYALTY-BEARING LICENSED
PRODUCTS or to perform ROYALTY-BEARING LICENSED SERVICES, in the absence of
which such ROYALTY-BEARING LICENSED PRODUCT or ROYALTY-BEARING LICENSED SERVICE
could not legally be used or sold or performed in such country, and the
resulting aggregate royalty owed by ES or any of its AFFILIATES or SUBLICENSEES
is 15% or greater, then, ES may reduce the royalties due ACT pursuant to Section
4.2(a) above for such ROYALTY-BEARING LICENSED PRODUCT or ROYALTY-BEARING
LICENSED SERVICE on the same proportionate basis as all other third party
royalties are reduced in the same royalty period. However, the
royalty payments due ACT under Section 4.2(a) may never be reduced by more than
fifty percent (50%) in any royalty period.
(d) No
multiple royalties shall be payable on the basis that any LICENSED PRODUCT,
LICENSED PROCESS or LICENSED SERVICE, its manufacture, use, lease, sale or
performance are or shall be covered by (i) more than one patent or patent
application within the PATENT RIGHTS, or (ii) any other patent or know how under
a license or sublicense from ACT. In the case of the use of patents
or know how licensed or sublicensed by ACT under other agreements, ES and ACT’s
other licensees or sublicensees shall have the right to credit against the
royalties owing to ACT, under this Agreement and under such other license or
sublicense agreements, any royalty payments received by ACT with respect to the
sale or lease of any product or performance of any service (regardless of
whether
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ES or
another licensee or sublicensee of ACT patents or know how pays the royalty),
such that in no event shall the total of royalty payments that are due to ACT in
any royalty period under this Agreement and under such other license or
sublicense agreements exceed the highest applicable royalty rate among this
Agreement and such other license or sublicense agreements. By way of
example only, if a product is produced by ES (alone or with a third party) and
that product uses PATENT RIGHTS under this Agreement and patents licensed under
a license or sublicense agreement between ACT and ES (or between ACT and the
third party with whom ES is producing the product), (i) only one royalty would
be paid to ACT on sales of the product, (ii) the royalty rate would be the
higher of the royalty rate applicable under this Agreement or under ACT’s other
license or sublicense agreement with ES or the third party, and (iii) the
royalty payment (whether paid by ES or by the third party) will be credited
toward royalties payable under this Agreement and under the other ACT license or
sublicense agreement with ES or the third party for the sale of the
product.
4.4 Payment
Method. All payments due under this Agreement shall be paid
either to ACT in Los Angeles, California, U.S.A. or to the Licensor in Sioux
Falls, South Dakota, U.S.A, a provided in Section 3.6 of the Kirin License
Agreement, and shall be made in United States currency without deduction for
taxes, assessments, exchanges, collection or other charges of any kind.
Conversion of foreign currency to U.S. dollars shall be made at the
conversion rate reported in The Wall Street Journal on the last working day of
the calendar quarter to which the payment relates.
4.5 Late
Fee. ES shall pay ACT or the Licensor interest on any overdue
amounts at the rate of one percent (1%) per month (twelve percent (12%) per
annum), from the date when such payment should have been made.
ARTICLE 5 - REPORTS AND
RECORDS
5.1 ES
shall maintain complete and accurate records of LICENSED PRODUCTS, LICENSED
SERVICES and LICENSED PROCESSES that are sold, performed, or, leased by ES or
its AFFILIATES under this Agreement, and all Sublicense Revenue
received by ES and its AFFILIATES. ES shall keep, and shall cause its
AFFILIATES and SUBLICENSEES to keep, full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to ACT hereunder and ES’s compliance with the terms and
conditions of this Agreement. Said books of account shall be kept at
ES’s principal place of business or at such other location as may be agreed upon
by the parties. Said books and the supporting data shall be open upon
reasonable advance notice (and no more frequently than once per calendar year)
for three (3) years following the end of the calendar year to which they
pertain, to the inspection of ACT or its agents for the purpose of verifying
ES’s royalty statement or compliance in other respects with this
Agreement. If any such audit determines that the reported payments to
ACT were less than ninety percent (95%) of the actual amount due to ACT for the
period in question, ES shall bear the cost of such audit (without limiting ACT’s
other remedies with respect thereto).
5.2 After
the first commercial sale of a LICENSED PRODUCT or LICENSED SERVICE by ES any
AFFILIATE, or any SUBLICENSEE, or ES’s receipt of any Sublicense Revenue, ES,
within forty-five (45) days after March 31, June 30, September 30 and December
31, of each year, shall deliver to ACT a true and accurate report of all NET
SALES and License Revenue during the preceding three-month period under this
Agreement as shall be pertinent to a royalty accounting
hereunder. Each
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such
report shall include at least the following:
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(a)
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number(s)
of ROYALTY-BEARING LICENSED PRODUCTS, manufactured by ES, its AFFILIATES,
or SUBLICENSEES, or by any third party on ES’s
behalf;
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(b)
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number(s)
of ROYALTY-BEARING LICENSED PRODUCTS sold by ES, its AFFILIATES, and
SUBLICENSEES;
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(c)
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total
receipts for ROYALTY-BEARING LICENSED PRODUCTS sold by ES, its AFFILIATES,
SUBLICENSEES;
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(d)
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total
receipts for ROYALTY-BEARING LICENSED SERVICES sold by ES, its AFFILIATES,
SUBLICENSEES; and
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(e)
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deductions
applicable as provided in Section 1.9 of the Kirin License
Agreement.
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5.3 With
each such report submitted, ES shall pay to ACT the royalties and other payments
due and payable under this Agreement. If no royalties or other
payments shall be due, ES shall so report.
5.4 ES’s
reporting obligations hereunder shall terminate when ES’S obligation to pay
royalties to ACT terminates.
ARTICLE 6 - PATENT
RIGHTS
6.1 Prosecution of Patents and
Claims. ACT agrees confer with ES with respect to (a) the
claims made in the patent applications included within the PATENT RIGHTS, and
(b) the extent to which and manner in which Licensor is prosecuting such patents
and claims, and (c) any additional, broader, or different claims under the
patent applications or other PATENT RIGHTS that reasonably could be prosecuted
for the benefit of ACT and ES. ACT will cooperate with ES in seeking
the cooperation and agreement of Licensor to prosecute such patents and claims
under patent applications or other PATENT RIGHTS as ES may reasonably
request. ACT agrees that ES may assert the rights of ACT under
Article 5 of the Kirin License Agreement, on behalf of ACT and ES, if ES does
not agree with or is not satisfied with the content of any patent application or
any other matter pertaining to the prosecution of any patent application or
claim within any patent application or other PATENT RIGHTS.
6.2 Abandonment of
PATENT
RIGHTS. In the event that ACT receives a notice from the
Licensor under Section 5.2 of the Kirin License Agreement, ACT shall promptly,
but in no even later than five (5) days after receiving such notice, deliver a
copy of such notice to ES. ACT and ES shall confer regarding what
action, if any, to take to preserve any PATENT RIGHTS that might otherwise be
abandoned by Licensor. ES shall have the right, but not the
obligation, to take any and all actions that ACT is entitled to take under
Section 5.2 of the Kirin License Agreement. ACT and ES agree to
reasonably cooperate in connection with the preparation, filing, prosecution,
and maintenance of the PATENT RIGHTS under this Section. Cooperation
includes, without limitation, (a) promptly executing all papers and instruments
or requiring employees of ACT or ES to execute papers and instruments as
reasonably appropriate to enable ES to file, prosecute, and maintain PATENT
RIGHTS in any country;
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and (b)
promptly informing ES of matters that may affect preparation, filing,
prosecution, or maintenance of PATENT RIGHTS (such as becoming aware of an
additional inventor who is not listed as an inventor in a patent
application).
6.3 Infringement of PATENT
RIGHTS. The Parties agree to notify each other in writing of
any actual or threatened infringement by a third party of the PATENT RIGHTS or
of any third-party claim of invalidity or unenforceability of the PATENT RIGHTS,
or of any interference or other proceeding affecting the PATENT
RIGHTS.
6.4 New Patents, Inventions, and
Discoveries. ES shall have the right to file and prosecute new
patent applications (and to obtain new patents) covering LICENSED PRODUCTS and
LICENSED SERVICES, and any other subject matter, with respect to any technology,
invention, or discovery made by ES or any of its AFFILIATES or SUBLICENSEES
using PATENT RIGHTS or KNOW-HOW. ACT shall acquire no rights with
respect to such new patents, inventions, discoveries, or technology not included
within the PATENT RIGHTS sublicensed, or the KNOW-HOW licensed, to ES by
ACT.
ARTICLE 7 –
INDEMNIFICATION,
LIMITATION OF LIABILITY AND
INSURANCE
7.1 ES
shall at all times during the term of this Agreement and thereafter, indemnify,
defend and hold harmless ACT and its affiliates, successors, assigns, agents,
officers, directors, shareholders and employees (each, an “Indemnified Party”),
at ES’s sole cost and expense, against all liabilities of any kind whatsoever,
including legal expenses and reasonable attorneys’ fees, arising out of the
death of or injury to any person or persons or out of any damage to property
resulting from the production, manufacture, sale, use, lease, performance,
consumption or advertisement of the LICENSED PRODUCTS or LICENSED SERVICES or
arising from any obligation, act or omission, or from a breach of any
representation or warranty of ES hereunder, excepting only claims that result
from (a) the willful misconduct or gross negligence of ACT, (b) any material
breach by ACT of its representations and warranties under this Agreement, and
(c) claims alleging that the use of any of the PATENT RIGHTS infringe upon any
patent, trade secret, or moral right of any third party. The
indemnification obligations set forth herein are subject to the following
conditions: (i) the Indemnified Party shall notify ES in writing promptly upon
learning of any claim or suit for which indemnification is sought; (ii) ES shall
have control of the defense or settlement, provided that the
Indemnified Party shall have the right (but not the obligation) to participate
in such defense or settlement with counsel at its selection and at its sole
expense; and (iii) the Indemnified Party shall reasonably cooperate with the
defense, at ES’s expense.
7.2 ACT
shall at all times during the term of this Agreement and thereafter, indemnify,
defend and hold harmless ES and its AFFILIATES, successors, assigns, agents,
officers, directors, shareholders and employees, at ACT’s sole cost and expense,
against all liabilities of any kind whatsoever, including legal expenses and
reasonable attorneys’ fees, arising out of or resulting from (a) any breach or
default by ACT under the Kirin License Agreement, or (b) any breach of any
warranty or representation of ACT under this Agreement.
7.3 EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, ACT, ITS DIRECTORS,
OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER
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EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING,
AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING
IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN
BY ACT THAT THE PRACTICE BY ES OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL ACT,
ITS DIRECTORS, OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES AND AFFILIATES BE
LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC
DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER ACT SHALL
BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY OF SUCH DAMAGES.
7.4 ES
agrees to maintain insurance or self-insurance that is reasonably adequate to
fulfill any potential obligation to the indemnified parties. ES shall
continue to maintain such insurance or self-insurance during the term of this
Agreement and after the expiration or termination of this Agreement for a period
of five (5) years.
ARTICLE 8 –
TERMINATION
8.1 This
Agreement shall be effective on the Effective Date and shall extend until the
expiration of the last to expire of the PATENT RIGHTS, or until May 9, 2016 if
not patents are issued, unless sooner terminated as provided in this Article
8.
8.2 ACT
may terminate this Agreement and the rights, privileges and license granted
hereunder by written notice upon a breach or default of this Agreement by ES, as
follows:
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(i)
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non-payment
of any amounts due which is not cured within thirty (30) days of receipt
of written notice of such non-payment wherein said notice is delivered by
registered mail; or
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(ii)
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breach
of any obligation which is not cured within thirty (30) days of a written
request to remedy such breach wherein said request is delivered by
registered mail, or if the breach cannot be cured within said thirty (30)
day period, failure of ES within said thirty (30) day period to proceed
with reasonable promptness thereafter to cure the
breach.
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Such
termination shall become automatically effective unless ES shall have cured any
such material breach or default prior to the expiration of the applicable cure
period.
8.3 ES
shall have the right to terminate this Agreement at any time on three (3)
months’ prior notice to ACT, and upon payment of all amounts due ACT through the
effective date of the termination.
8.4 Upon
termination of this Agreement for any reason, nothing herein shall be construed
to release either party from any obligation that matured prior to the effective
date of such termination; and Sections 5.1, Article 7, Article 9, and Article
11, and any other Sections or provisions which by their nature are intended to
survive termination, shall survive any such termination.
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ARTICLE 9 -
CONFIDENTIALITY
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9.1 During
the course of this Agreement, ACT and ES may provide each other with
CONFIDENTIAL INFORMATION. CONFIDENTIAL INFORMATION may be disclosed
in oral, visual or written form, and includes such information that is
designated in writing as such by the discloser at the time of disclosure, orally
disclosed information that is designated in writing as confidential within 30
days after such oral disclosure, or information which, under all of the given
circumstances ought reasonably be treated as CONFIDENTIAL INFORMATION of the
disclosing party. ACT and ES each intend to maintain the confidential or trade
secret status of their CONFIDENTIAL INFORMATION. Each shall exercise
reasonable care to protect the CONFIDENTIAL INFORMATION of the other from
disclosure to third parties; no such disclosure shall be made without the
other’s written permission. Upon termination or expiration of this
Agreement, ACT and/or ES shall comply with the other’s written request to return
all CONFIDENTIAL INFORMATION that is in written or tangible
form. Except as expressly provided herein, neither ACT nor ES is
granted any license to use the other’s CONFIDENTIAL INFORMATION. The
obligations of ACT and ES under this Article 9 shall survive any expiration or
termination of this Agreement. Notwithstanding the preceding
provisions of this Section 9.1, until such time as this Agreement is
terminated: (a) KNOW HOW and the content of any patent application
relating to or included in PATENT RIGHTS shall be deemed to be the LICENSEE’s
CONFIDENTIAL INFORMATION rather than ACT’s CONFIDENTIAL INFORMATION; (b)
LICENSEE shall have the right to disclose KNOW HOW and the content of patent
applications related to or included in PATENT RIGHTS to third parties without
restriction under this Agreement; and (c) LICENSEE shall not have any obligation
to ACT to treat KNOW HOW or the content of any patent application related to or
included in PATENT RIGHTS as ACT’s CONFIDENTIAL INFORMATION.
9.2 The
parties agree that the specific terms (but not the overall existence) of this
Agreement shall be considered CONFIDENTIAL INFORMATION; provided, however, that
the parties may disclose the terms of this Agreement to investors or potential
investors, potential business partners, potential SUBLICENSEES and assignees,
potential co-developers, manufacturers, marketers, or distributors of any
LICENSED PRODUCT or LICENSED SERVICE, and in any prospectus, offering,
memorandum, or other document or filing required by applicable securities laws
or other applicable law or regulation. The parties may also disclose
CONFIDENTIAL INFORMATION that is required to be disclosed to comply with
applicable law or court order, provided that the recipient gives reasonable
prior written notice of the required disclosure to the discloser and reasonably
cooperates with the discloser’s efforts to prevent such disclosure.
ARTICLE 10 - PAYMENTS,
NOTICES, AND OTHER COMMUNICATIONS
Any payment, notice or other
communication required to be given to any party will be deemed to have been
properly given and to be effective (a) on the date of delivery if delivered by
hand, recognized national next business day delivery service, confirmed
facsimile transmission, or confirmed electronic mail, or five (5) days after
mailing by registered or certified mail, postage prepaid, return receipt
requested, to the respective addresses given below, or to another address as it
shall designate by written notice given to the other party in the manner
provided in this Section.
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| In the case of ACT: | Advanced Cell Technology, Inc. |
| 00000 Xxxxx Xxxxxx Xxxx, Xxxxx 000 | |
| Xxx Xxxxxxx, XX 00000 | |
| Attention: Xxxxxxx X. Xxxxxxxx, XX |
| With a copy to: | Xxxxxx Xxxxxx LLP |
| One Monument Square | |
| Portland, ME 0401 | |
| Attention: Xxxxxxx X. Xxxxxx, Esq. |
| In the case of ES | Embryome Sciences, Inc. |
|
|
0000
Xxxxxx Xxx Xxxxxxx, Xxxxx 000
|
|
|
Xxxxxxx,
Xxxxxxxxxx 00000
|
|
|
Attention: Xxxxxxx
X. Xxxx
|
|
With a copy to:
|
Xxxxxxx
X. Xxxxxx, Esq.
|
|
|
Lippenberger,
Thompson, Welch, Xxxxxx & Xxxxxxx
LLP
|
|
|
000
Xxxxx Xxxxx Xxxx.
|
|
|
Xxxxx
Xxxxxx, Xxxxxxxxxx 00000
|
ARTICLE 11 - REPRESENTATIONS
AND WARRANTIES
11.1 ES
represents and warrants that it has full corporate power and authority to enter
into this Agreement, that this Agreement constitutes the binding legal
obligation of ES, enforceable in accordance with its terms, and that the
execution and performance of this Agreement by ES will not violate, contravene
or conflict with any other agreement to which ES is a party or by which it is
bound or with any law, rule or regulation applicable to ES, and that any
permits, consents or approvals necessary or appropriate for ES to enter into
this Agreement have been obtained.
11.2
ES is an entity duly incorporated or otherwise organized, validly existing and
in good standing under the laws of the jurisdiction of its incorporation or
organization, with the requisite power and authority to own and use its
properties and assets and to carry on its business as currently
conducted.
11.3 ACT
represents and warrants that (a) the Kirin License Agreement is in full force
and effect, (b) it has the full legal right and power to enter into this
Agreement and to grant the sublicenses granted hereunder, (c) that this
Agreement constitutes the binding legal obligation of ACT, enforceable in
accordance with its terms, (c) the execution, delivery, and performance of this
Agreement by ACT will not violate, contravene or conflict with the Kirin License
Agreement or with any other agreement to which ACT is a party or by which it is
bound or with any law, rule or regulation applicable to ACT, (d) ACT owns the
KNOW-HOW, and (e) any permits, consents or approvals necessary or appropriate
for ACT to enter into this Agreement have been obtained.
11.4 ACT
represents and warrants that, to the best of its knowledge, the use of the
PATENT RIGHTS and KNOW-HOW by ES or any AFFILIATE or SUBLICENSEE of ES for any
purposes contemplated or permitted by this Agreement, will not infringe in any
way any claim under any patent held by any third party.
10
11.5 ACT
represents and warrant that the use of the PATENT RIGHTS and KNOW-HOW by ES or
any AFFILAITE or SUBLICENSEE of ES for any purposes contemplated or permitted by
this Agreement, will not infringe in any way any claim under any patent held by
ACT or under any patent that may issue from any ACT patent application now
pending, or under any patent that ACT may in the future obtain, or any other
intellectual property rights of ACT.
11.6 ACT
further represents, warrants and agrees, that it shall not make any claim or
demand, or commence any lawsuit or other proceeding, alleging that use of the
PATENT RIGHTS and KNOW-HOW by ES or any AFFILIATE or SUBLICENSEE of ES for any
purpose contemplated or permitted by this Agreement infringes in any way any
claim under any patent held by ACT or under any patent that may issue from any
ACT patent application now pending, or under any patent that ACT may in the
future obtain, or any other intellectual property rights of ACT. The
provisions of this Section 11.6 shall pertain as well to all subsidiaries of ACT
and all patents and patent applications of ACT subsidiaries. ACT and
its subsidiaries shall cause the provisions of this Section 11.6, as they
pertain to refraining from asserting claims and demands or commencing lawsuits
and proceedings, to be including in all licenses and assignments of ACT’s
patents and patent applications.
11.7 This
Article 11 shall survive expiration or termination of this
Agreement.
ARTICLE 12 - MISCELLANEOUS
PROVISIONS
12.1 Nothing
herein shall be deemed to constitute either party as the agent or representative
of the other party.
12.2 To
the extent commercially feasible, and consistent with prevailing business
practices, all products manufactured or sold under this Agreement will be marked
with the number of each issued patent that applies to such product.
12.3 This
Agreement shall be construed, governed, interpreted and applied in accordance
with the laws of California, without regard to principles of conflicts of law
thereof, except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent was
granted.
12.4 The
parties hereto acknowledge that this Agreement (including the Exhibits hereto)
sets forth the entire Agreement and understanding of the parties hereto as to
the subject matter hereof, and shall not be subject to any change or
modification except by the execution of a written instrument subscribed to by
the parties hereto.
12.5 The
provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under any
controlling body of the law, such invalidity or unenforceability shall not in
any way affect the validity or enforceability of the remaining provisions
hereof.
12.6 The
failure of either party to assert a right hereunder or to insist upon compliance
with
11
any term
or condition of this Agreement shall not constitute a waiver of that right or
excuse a similar subsequent failure to perform any such term or condition by the
other party.
12.7
Licenses of
Intellectual Property; Bankruptcy Code. The parties agree that
the sublicenses granted to ES to use PATENT RIGHTS constitute licenses of
“intellectual property” as defined in the United States Bankruptcy Code (the
“Bankruptcy Code”) and as used in Section 365(n) of the Bankruptcy
Code. The Parties agree that the KNOW-HOW includes trade
secrets. The parties also agree that the payments of royalties on Net
Sales and Sublicense Revenue required to be paid by ES to ACT under this
Agreement constitute “royalties” under Section 365(n) of the Bankruptcy
Code.
[The next
page is the signature page]
12
IN WITNESS WHEREOF, the parties have
duly executed this Agreement as of the Effective Date set forth
above.
ADVANCED
CELL TECHNOLOGY, INC.
By:
/s/
Xxxxxxx X. Xxxxxxxx,
XX
Printed
Name: Xxxxxxx X. Xxxxxxxx, XX
Title: Chairman
& CEO
By: /s/
Xxxxxxx X. Xxxxxxxx,
XX
Printed
Name: Xxxxxxx X. Xxxxxxxx, XX
Title: Secretary
EMBRYOME
SCIENCES, INC.
By: /s/
Xxxxxxx X.
Xxxx
Printed
Name: Xxxxxxx X. Xxxx
Title:
Chief Executive Officer
By: /s/
Xxxxxx
Xxxxxx
Printed
Name: Xxxxxx Xxxxxx
Title:
Secretary
13
