1
EXHIBIT 10.5
REVENUE SHARING AGREEMENT
T H I S DEED is made the 8th day of September 0000
X X X X X X X
(1) PROTEUS MOLECULAR DESIGN LIMITED whose company registration number in
England is 2459087 and whose registered office is at Beechfield House,
Lyme Xxxxx Xxxxxxxx Xxxx, Xxxxxxxxxxxx, Xxxxxxxx XX00 XXX ("the
Company");
(2) BTG INTERNATIONAL LIMITED whose company registration number in England
is 2664412 and whose registered address is 00 Xxxxx Xxxxx, Xxxxxx, XX0X
0XX ("BTG").
WHEREAS by an Assignment of even date herewith and made between the
parties hereto the Company assigned to BTG the invention and relative patent
application particulars of which are set out in the Schedule hereto and it has
been agreed that BTG shall endeavor to secure the commercialization of the said
invention upon the terms hereinafter contained.
NOW IT IS HEREBY AGREED by and between the parties hereto as follows:
1. IN this Agreement (whenever the context permits):
(i) the singular shall include the plural;
(ii) the expression "patent" shall include any like form of
protection;
(iii) the expression "application" shall mean an application for a
patent;
(iv) the expression "the said invention" shall include all patent
rights (being patents and applications in any parts of the
world) in respect of the said invention and shall (whenever
appropriate) be deemed also to include any further invention and
patent rights included in the above recited Assignment or which
by agreement between the parties hereto are assigned to BTG for
exploitation on the terms of this Agreement
2. SUBJECT as hereinafter provided BTG shall use all reasonable endeavors
having regard to the circumstances prevailing from time to time to secure the
commercialization of the said invention in such manner (including the sale
thereof) and upon such terms as it shall in its sole discretion deem fit. BTG
shall periodically provide the Company with reports in respect of the
commercialization of the said invention and give consideration to any comments
raised by the Company in respect of such reports.
3. SO far as its commitments allow the Company shall from time to time
upon request by BTG furnish BTG with any drawings models designs specimens
biological material technical data computer software information or "knowhow" in
its possession relating to the said invention and shall make available to BTG or
as BTG may reasonably require any consultancy services which may be necessary to
further the exploitation of the said invention.
1
2
4. (1) BTG shall keep accounts showing:
(A) gross receipts of BTG (as hereinafter defined).
(B) costs fees and expenses of BTG (including all external expenses
relating to the provision of patent legal or other services
other than legal expenses relating to assignment and revenue
sharing agreements and all internal expenses relating to the
provision of patent services) in connection with this Agreement
in respect of the following:
(i) the filing and prosecution of applications and the
procurement and maintenance of patents;
(ii) proceedings before the Patent Office or any appeal
tribunal therefrom in any country;
(iii) professional advice on patent matters relating to the
said invention or otherwise incidental to the
implementation of this Agreement;
(iv) proceedings by or against BTG in any Court or Tribunal in
any country for the enforcement or defense of any patent
to which this Agreement applies or for revocation of or
opposition to any patent or application of any third
party or for the recovery of royalties or for any other
cause (including any costs or sums awarded against BTG in
any such proceedings);
(v) agent's commission.
(C) payments (if any) made by BTG to the Company in reimbursement
of expenses incurred in applying for patents in respect of the
said invention or for any items or services provided by the
Company under the provisions of Clause 3 hereof and travelling
and out-of-pocket expenses and other direct expenditure
incurred by BTG in furtherance of its obligations under this
Agreement.
(D) sums expended by BTG in respect of the development of the said
invention where there is no other provision for reimbursement
of such sums.
(2) COMMENCING with the last day of December One thousand nine hundred
and ninety-eight BTG shall twice a year render to the Company a
cumulative statement showing the receipts and expenditure of BTG
for the preceding six months (or any period longer than six months
or any proportion thereof) under the headings in sub-clause (1) of
this Clause.
(3) THE expression "gross receipts" as used in this Clause shall mean
the actual royalties or other sums received from time to time by
BTG in respect of the commercialization of the said invention
(including the amount of any damages
2
3
awarded to BTG in any infringement proceedings) or of any drawings
models designs specimens biological material technical data
computer software information or know-how furnished to BTG pursuant
to Clause 3 hereof but excluding any sums received by BTG in
respect of or relative to the recovery of expenditure incurred by
BTG in the development of the said invention. There shall be added
to such gross receipts (a) the amount of any United Kingdom Income
Tax deducted therefrom before receipt and (b) the amount of any
relief for double taxation received by BTG in respect of such sums
and the expression "net receipts" as used in this Clause shall mean
the balance from time to time remaining after deducting from gross
receipts the costs and expenses of BTG in respect of the items
mentioned in paragraphs (B) (C) and (D) of sub-clause (1) of this
Clause.
(4) THE gross receipts shall be the absolute property of BTG but BTG
shall make payments to the Company as follows:
(i) BTG shall pay to the Company the first Five thousand pounds
(Pound Sterling 5,000) of the cumulative gross receipts
Provided that in the event of the said invention being
commercialized in conjunction with other inventions and
patent rights owned by BTG (all such inventions and patent
rights from time to time being exploited in conjunction as
aforesaid being hereinafter referred to as "the Package"),
BTG shall pay to the Company a sum being such proportion of
the said sum of Five thousand pounds (Pound Sterling 5,000)
as the value of the said invention in the opinion of BTG
bears to the value of the Package. The sum payable to the
Company under this paragraph is hereinafter referred to as
"the Initial Payment."
(ii) Thereafter the cumulative gross receipts in excess of Five
thousand pounds (Pound Sterling 5,000) shall be shared Twenty
per centum (20%) to the Company and Eighty per centum (80%)
to BTG until BTG's costs and expenses in respect of the items
mentioned in paragraphs (B) (C) and (D) of sub-clause (1) of
this Clause and the Initial Payment have been recovered.
(iii) Thereafter cumulative net receipts shall be shared Fifty per
centum (50%) each to BTG and the Company Provided that any
sums payable to the Company under this subparagraph shall be
assessed after deducting all payments made to the Company
under paragraphs (i) and (ii) of this sub-clause from the
share payable to the Company.
(5) THE receipt of the Company shall be a good discharge to BTG for any
payments to be made by BTG under the provisions of this Clause.
(6) WHERE the said invention is commercialized in conjunction with
other inventions and patent rights owned by BTG in such manner that
BTG receives
3
4
royalties or other sums in respect of all such inventions and
patent rights without distinction as to the amount deriving from
each such invention the gross receipts attributable to the said
invention shall be as determined by BTG.
(7) PAYMENTS by BTG pursuant to subclause (4) of this Clause shall be
made on or before the last days of March and September in each year
after deduction of income tax at the standard rate where
applicable.
(8) EACH of the parties hereto shall (on request) produce to any duly
authorized representative of the other parties for inspection the
accounts of its receipts and expenses referred to in this Clause
and any receipts or vouchers relating thereto.
(9) NOTHING in this Agreement contained shall be construed as requiring
BTG to develop or to assist or procure the development of the said
invention nor as precluding BTG from developing or assisting or
procuring the development thereof on such terms as it may in its
sole discretion deem fit. But expenditure incurred on such
development shall only be included in the accounts referred to in
this Clause where BTG has not made any other arrangements for
reimbursement thereof, Save as aforesaid no expenditure incurred in
such development shall be included in the said accounts and no sums
recovered in respect of or relative to such expenditure shall be
included in such accounts.
5. (1) (a) Before abandoning any patent application (other than a
superseded application as hereinafter defined or an application
which BTG has notified the Company that it intends to abandon
and refile) or withholding payment of any fee necessary for
procuring or keeping in force any patent to which this
Agreement applies, BTG shall endeavor to give to the Company
adequate notice of its intended course of action and if so
requested by the Company within a period to be specified by
BTG, and so far as practicable, shall procure the continuance
of the prosecution of the application for the grant or
maintenance of the patent for a period of three months
thereafter or such other period as may be requested by the
Company and reasonably agreed by BTG, provided that the Company
shall pay or indemnify BTG against all costs and expenses
incurred in such period in so doing.
(a) In this Clause the expression "superseded application" shall
mean an application which is either replaced by another
application or other applications claiming the same priority or
priorities in the same country or countries as the first
mentioned application or else is dropped because of a decision
by BTG to give preference to an equivalent application filed
under an alternative procedure.
(2) WHEN BTG has given notice under sub-clause (1) of this Clause in
respect of all applications and patents relating to the said
invention, the Company shall have the right at any time within
three months after the receipt of notice under sub-clause (1) of
this Clause to the re-assignment of the applications and patents
therein mentioned which are still subsisting subject to payment by
the Company to BTG
4
5
out of the first receipts of any future revenue (each such payment
to be made within ninety days of receipt and to be subject to
verification by BTG) of the amount of the external costs incurred
by BTG in respect of the applications and patents so assigned and
certified by BTG as not having been recovered by it under
sub-clause (4) of Clause 4 hereof.
(3) ANY re-assignment of any applications or patents to the Company
under the provisions of sub-clause (2) of this Clause shall be
subject to the provisions of any agreements or other arrangements
which BTG shall previously have entered into in relation thereto.
(4) EXCEPT as hereinbefore provided, BTG shall not be liable to
prosecute any application or to procure or maintain in force any
patent to which this Agreement applies.
6. BTG shall not be under any obligation to institute or defend any legal
proceedings whether for infringement or otherwise in respect of any application
or any patent to which this Agreement applies.
7. NOTHING herein contained shall be deemed to constitute partnership
between the parties hereto or to constitute BTG as the Agent of the Company.
8. Neither the Company nor BTG shall assign this Agreement or any of
their respective rights benefits liabilities or obligations thereunder except
with the previous consent of the other, such consent not to be unreasonably
withheld.
9. THE Company shall:
(A) consult with BTG (so far as it is free to do so) as to the
desirability of applying for patents in respect of the results
of any further research carried out by it in relation to the
said invention in reasonable time before making such results
or any part thereof available for publication. In the event of
the Company obtaining any further patent which can only be
exercised in conjunction with a license under a patent
assigned to BTG under this Agreement, such further patent
shall be assigned to BTG and shall fall within the definition
of the said invention contained in this Agreement;
(B) keep STG informed from time to time of the results of any such
further research as aforesaid (so far as it is free to do so);
(C) keep BTG informed of any commitments or arrangements entered
into or undertaken by it which restricts or prevents the
fulfillment of this Clause and Clause 3 of this Agreement.
10. ANY notice consent or other communication authorized or required to be
given hereunder or for the purpose hereof shall be deemed to be duly given by
BTG if left at or sent by recorded delivery post to the Company at its principal
address and, in the case of a notice, given to BTG if left at or sent L-1,
recorded delivery post to the registered office of BTG.
5
6
11. ANY dispute, question or difference arising under this Agreement as to
the rights or duties of any of the parties or the construction or effect of any
of the provisions of this Agreement shall be referred to an Arbitrator to be
agreed between the parties and in default of agreement to be nominated by the
President for the time being of The Law Society and such reference shall be
deemed to be an arbitration agreement within the meaning of the Arbitration Xxx
0000 or any re-enactment or modification thereof for the time being in force.
I N W I T N E S S whereof this document has been executed as a Deed
the day and year first above written.
6
7
THE SCHEDULE above referred to
-------------------------------------------------------------------------------------
Patent
Application
Country No. Date of Filing Title of Invention
-------------------------------------------------------------------------------------
PCT 93908000.8 06.04.93 Vaccines containing
non-Ionic Surfactant
Vesicles
-------------------------------------------------------------------------------------
(EXECUTED as a DEED by (PROTEUS
MOLECULAR (DESIGN LIMITED in a manner
(legally binding upon it:
---------------------------------------
Director/Authorized Signatory
---------------------------------------
Secretary/Authorized Signatory
(EXECUTED as a DEED by BTG
(INTERNATIONAL LIMITED in a (manner
legally binding upon it:
---------------------------------------
Director/Authorized Signatory
---------------------------------------
Director/Authorized Signatory
7
8
DATED ___________________________ 199__
PROTEUS MOLECULAR DESIGN LIMITED
- and -
BTG INTERNATIONAL LIMITED
---------------------------------------
A G R E E M E N T
relating to the commercialization
of the invention the subject of PCT
patent application Number 93908000.8
---------------------------------------
