Exhibit 10.86
*Certain confidential information contained in this document, marked by
brackets, has been omitted and filed with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended
COMMERCIALIZATION AGREEMENT
This is an Agreement, effective as of the 1st day of November, 1994 (the
EFFECTIVE DATE), between Xxxxxxx Corporation, a corporation incorporated in the
State of Delaware, with offices located at 00000 X.X. 000 Xxxxxx, Xxxxx, Xxxxxxx
00000 ("XXXXXXX"), and the Regents of the University of Michigan, a
constitutional corporation of the State of Michigan, with offices located at
0000 Xxxxx Xxxxx, Xxxx 0000, Xxx Xxxxx 48109-1280 ("MICHIGAN"). XXXXXXX and
MICHIGAN agree as follows:
1. BACKGROUND.
1.1 MICHIGAN undertakes biological research in order to understand and
develop strategies to address the pathogenesis of cancer and other human
disease. XXXXXXX utilizes new scientific discoveries to serve humanity by
developing commercial products for use by research scientists and for the
diagnosis and treatment of diseases.
1.2 Researchers employed by XXXXXXX and those employed by MICHIGAN have
jointly invented LICENSED PATENTS that are identified and defined below. XXXXXXX
desires to commercialize LICENSED PRODUCTS that are identified and defined
below. Both XXXXXXX and MICHIGAN desire to make the benefits of the LICENSED
PRODUCTS available to the public.
1.3 MICHIGAN and XXXXXXX believe that exclusive rights are an important
factor with regard to the ability to market the LICENSED PRODUCTS, and both
Parties have determined that in order to best effectuate the commercialization
of the LICENSED PRODUCTS, the exclusive right to the LICENSED PATENTS needs to
be held and promoted by XXXXXXX. To this end and for the benefit of both
MICHIGAN and XXXXXXX, MICHIGAN, in accordance with the terms and conditions of
this Agreement and consistent with its mission of education and research, is
agreeing to refrain from exercising its rights to license the LICENSED PRODUCTS
to third parties; and XXXXXXX, in consideration for the benefits thereby gained,
is agreeing to share the benefits and revenues resulting from commercialization
of the LICENSED PRODUCTS.
2. DEFINITIONS.
2.1 "TECHNOLOGY," as used in this Agreement, shall mean
A. All information (including by way of example and not limitation,
any manufacturing techniques, data, designs, or methods; and also including
know-how and other information, whether or not protected by patents relating to
manufacture, use and marketing), covering the method of radioimmunotherapy of
lymphoma developed by MICHIGAN's employees Xxxx Xxxxxxxx and Xxxxxxx Xxxx as
described in MICHIGAN'S Technology Management Office File #1009, a copy of which
is attached hereto as Exhibit A; and which encompasses:
B. All information encompassed in U.S. Patent Application No.
08/121,582, filed September 15, 1993 entitled "Radioimmunotherapy of Lymphoma
Using the Anti-CD20 Antibodies," invented by MICHIGAN's employees Xxxx Xxxxxxxx
and Xxxxxxx Xxxx and by XXXXXXX'x employees Xxxxxxx Xxxxxxx and Xxxxxxx Xxxxx.
2.2 "LICENSED PATENT(S)" shall mean:
A. All patents and patent applications encompassing U.S. Patent
Application No. 08/121,582, filed September 16, 1993 entitled
"Radioimmunotherapy of Lymphoma Using Anti-CD20 Antibodies," invented by
MICHIGAN's employees Xxxx Xxxxxxxx and Xxxxxxx Xxxx and by XXXXXXX'x employees
Xxxxxxx Xxxxxxx and Xxxxxxx Xxxxx, and
B. All future patents and patent applications which cover an
invention included in the TECHNOLOGY,
C. All foreign equivalent patent applications and Patent Cooperation
Treaty filings, and all patents issuing therefrom, which cover an invention
included in the TECHNOLOGY, and
D. All divisionals, continuations-in-part, continuations, reissues,
renewals, extensions or additions to any such patents.
2.3 "VALID CLAIM(S)" means:
A. Any claim(s) in an unexpired patent or pending in a patent
application included within the LICENSED PATENTS which has not been held
unenforceable, unpatentable, or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or, unappealed
within the time allowed for appeal, and which has not been admitted to be
invalid or unenforceable through reissue or disclaimer.
B. In any patent application which includes claims that encompass
the invention described by U.S. Patent Application No. 08/121,582, filed
September 15, 1993 entitled "Radioimmunotherapy of Lymphoma Using the Anti-CD20
Antibodies," [*].
2.4 "LICENSED PRODUCT(S)" shall mean:
A. Any product(s) whose manufacture, use or sale in any country
would, but for the ownership of or a license under LICENSED PATENTS, comprise an
infringement, including contributory infringement, of one or more VALID CLAIMS,
and
B. Any product which incorporates, is produced by or utilizes the
TECHNOLOGY.
2.5 "FIELD OF USE" shall refer to any field of use for which the LICENSED
PRODUCTS may be designed, manufactured, used and/or marketed under this
Agreement.
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2.6 "TERRITORY" shall mean all countries of the world.
2.7 "NET SALES" shall mean the revenue derived by [*]:
A. [*];
B. [*];
C. [*];
D. [*].
[*]
2.8 "ROYALTY QUARTER(S)" shall mean the three-month periods ending on the
last day of MARCH, JUNE, SEPTEMBER and DECEMBER each year.
2.9 "PARTIES" in singular or plural usage, as required by the context
shall mean XXXXXXX and/or MICHIGAN.
2.10 "AFFILIATE(S)" shall mean any corporation or other business entity
controlled by, controlling, or under common control with XXXXXXX. For this
purpose, "control" means direct or indirect beneficial ownership of greater than
fifty percent (50%) interest in the income or stock of such corporation or other
business.
2.11 "SUBLICENSEE(S)" shall mean any person or entity, except an
AFFILIATE, sublicensed by XXXXXXX under this Agreement to make, have made, use,
market or sell LICENSED PRODUCTS.
3. GRANT OF EXCLUSIVITY.
3.1 MICHIGAN agrees not to license any rights under the TECHNOLOGY to any
third party.
3.2 MICHIGAN grants to XXXXXXX the exclusive right and license to make,
have made, use, lease and sell the LICENSED PRODUCTS in the TERRITORY for the
FIELD OF USE for the term of this Agreement with the right to grant sublicenses
(as used herein, referring both to the sublicense of MICHIGAN's rights granted
to XXXXXXX, and to the license of XXXXXXX'x rights) to AFFILIATES and
SUBLICENSEES. XXXXXXX agrees to grant such sublicenses in accordance with the
terms of Article 8 below.
4. CONSIDERATION.
4.1 XXXXXXX shall pay to MICHIGAN a one time license issue fee [*]. The
license issue fee shall be credited against royalties due MICHIGAN provided in
this ARTICLE 4. The license issue fee shall be nonrefundable.
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4.2 XXXXXXX shall pay to MICHIGAN a royalty equal to [*] of NET SALES
of LICENSED PRODUCTS which are covered by one or more VALID CLAIM(S) (that is,
for LICENSED PRODUCTS which are described by Paragraph 2.4A).
4.3 If the LICENSED PRODUCTS are not covered by one or more VALID
CLAIM(S), but only incorporates non-patented TECHNOLOGY (that is, for LICENSED
PRODUCTS which are not described by Paragraph 2.4A), XXXXXXX shall pay to
MICHIGAN a royalty equal to [*] of NET SALES of LICENSED PRODUCTS for a period
of [*] from the date of commercialization of LICENSED PRODUCTS.
4.4 Only a single royalty shall be paid with respect to any LICENSED
PRODUCT, irrespective of the number of VALID CLAIMS, LICENSED PATENTS or
TECHNOLOGY utilized.
4.5 XXXXXXX shall pay to MICHIGAN an annual Agreement maintenance fee.
This annual fee shall accrue in the ROYALTY QUARTER ending June 30th of the
years specified below, and shall be due and payable and included with the report
for that quarter. Each annual fee can be credited by XXXXXXX in full against all
royalties to be paid to MICHIGAN.
The annual maintenance fees shall be as follows:
A. In full calendar years [*] this Agreement, the annual maintenance
fee shall be [*] per year.
B. By the maintenance fee due date of the [*] of this Agreement [*],
XXXXXXX must have [*].
(1) If Xxxxxxx has not [*], then the maintenance fee will be
[*] per year until [*].
(2) The PARTIES will renegotiate in good faith [*].
C. After the [*], the maintenance fee will revert to [*] for the
time remaining to the end of [*].
4.6 XXXXXXX shall pay to MICHIGAN annual minimum royalty fees. This annual
fee shall accrue in the ROYALTY QUARTER ending March 31st of the calendar years
of this Agreement specified below, and shall be due and payable and included
with the report for that quarter. Each annual fee can be credited by XXXXXXX in
full against all royalties otherwise to be paid to MICHIGAN in the future.
Minimum royalties fees will be due MICHIGAN as follows:
A. [*]
[*]
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[*]
[*]
[*]
B. In a year that [*], the parties will renegotiate in good faith
the requirement of minimum royalties due MICHIGAN [*].
4.7 Where XXXXXXX must obtain a license from a third party in order to
practice the subject TECHNOLOGY, either because the commercial utility of such
TECHNOLOGY is dependent upon third party intellectual property or because there
is a good faith determination by XXXXXXX that practice of the TECHNOLOGY can
subject XXXXXXX to an infringement action, then the royalty rate provided in
Sections 4.2 and 4.3 shall be reduced by [*], but only with respect to
royalties due upon LICENSED PRODUCTS covered by such third party licenses.
5. REPORTS.
5.1 XXXXXXX shall keep and require AFFILIATES and SUBLICENSEES to keep
true and accurate records and books of account containing data reasonably
required for the computation and verification of, payments to be made as
provided by this Agreement, which records and books shall be open for inspection
upon reasonable notice during business hours by an independent certified
accountant selected by MICHIGAN, for the purpose of verifying the amount of
payments due and payable. Said right of inspection will exist for three (3)
years from the date of origination of any such record, and this requirement and
right of inspection shall survive any termination of this Agreement (this right
shall not be deemed to foreshorten any statute of limitations applicable to any
claim). MICHIGAN shall be responsible for all expenses of such inspection,
except that if such inspection [*], then said inspection shall be at XXXXXXX'x
expense and [*] shall become due and payable to MICHIGAN.
5.2 Within [*] after March 31, June 30, September 30 and December 31,
during the term of this agreement (including the close of any ROYALTY QUARTER
immediately following any termination of this Agreement), XXXXXXX shall report
to MICHIGAN true and accurate reports of its and its AFFILIATES' and
SUBLICENSEES' activities relating to this AGREEMENT during the ROYALTY QUARTER
period. If no royalties are due, XXXXXXX shall so report. These reports shall
include at least the following:
A. Number of LICENSED PRODUCTS sold or otherwise generating NET
SALES (to be reasonably identified and segregated by type, in reports and in
internal records above), and country of sale of LICENSED PRODUCTS;
B. Total xxxxxxxx for LICENSED PRODUCTS, and any other revenues
included in NET SALES;
C. Deductions applicable to a determination of NET SALES;
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D. Any data, amounts and calculations used in the special
calculations of NET SALES for certain AFFILIATES as provided in the Note under
Paragraph 2.7 (with, for reference, the transfer sales amounts received by
XXXXXXX from the AFFILIATE): and
E. Total royalties due.
6. PAYMENTS.
6.1 XXXXXXX shall pay to MICHIGAN the royalties due and payable (those
royalties accrued during each ROYALTY QUARTER) in United States Dollars in Ann
Arbor, Michigan and such payment shall be included with each quarterly report.
XXXXXXX agrees to make all payment due hereunder to MICHIGAN by check made
payable to "The Regents of the University of Michigan," and sent to the address
for notices set forth in ARTICLE 19 herein.
6.2 On all amounts outstanding and payable to MICHIGAN, interest shall
accrue from the date such amounts are due and payable [*] at such lower
rate as may be required by law.
6.3 Where NET SALES are received in foreign currency, the foreign currency
shall be converted into its equivalent in United States dollars at the exchange
rate of such currency as reported (or if erroneously reported, as subsequently
corrected) in the Wall Street Journal on the last business day of the ROYALTY
QUARTER during which such payments are received by XXXXXXX or AFFILIATES (or if
not reported on that date, as quoted by the Chase Manhattan Bank, N.A., in New
York City, New York).
7. COMMERCIALIZATION.
7.1 It is understood that XXXXXXX has the responsibility to [*]. XXXXXXX
agrees to [*].
7.2 It is further understood that MICHIGAN [*].
7.3 To the extent that such obligation must be required of XXXXXXX by
MICHIGAN pursuant to 37 CFR 401.14 and other law relating to the licensing of
results of federally sponsored research, the following obligation applies:
XXXXXXX agrees to substantially manufacture or have manufactured all LICENSED
PRODUCTS in the United States. If United States manufacture of any LICENSED
PRODUCT is not commercially feasible, then MICHIGAN will cooperate with XXXXXXX
in obtaining waivers of this requirement from the United States Government.
8. SUBLICENSING BY XXXXXXX.
8.1 XXXXXXX shall have the exclusive right to grant sublicenses to its
ownership rights and privileges under the LICENSED PATENTS and TECHNOLOGY to its
AFFILIATES and SUBLICENSEES, to make, have made, use, market and sell, in the
TERRITORY, LICENSED PRODUCTS designed and marketed solely for use in the FIELD
OF USE.
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8.2 MICHIGAN shall be informed by written notice of the identity of each
SUBLICENSEE and AFFILIATE.
8.3 XXXXXXX agrees that any sublicenses granted by it shall be consistent
with the terms of this Agreement, and shall contain acknowledgements by the
SUBLICENSEE or sublicensed AFFILIATE of MICHIGAN's rights in the TECHNOLOGY and
LICENSED PATENTS, and the disclaimer of warranty and limitation on MICHIGAN's
liability, as provided by Article 11 below. All sublicenses shall also contain
provisions under which the SUBLICENSEE or sublicensed AFFILIATE accepts duties
to keep records; to avoid improper representations or responsibilities; to
defend, hold harmless, and indemnify MICHIGAN; to comply with laws; and to
restrict the use of MICHIGAN's name; which duties shall be at least equivalent
to those accepted by XXXXXXX in Paragraphs 5.1, 11.4 and 12.1, and articles 16,
and 17, respectively, herein.
8.4 Reporting and payment of such royalties shall be made by XXXXXXX in
accordance with the provisions of ARTICLE 5 REPORTS and ARTICLE 5 PAYMENTS.
8.5 XXXXXXX agrees to forward to MICHIGAN copies of such reports as
received by XXXXXXX from its AFFILIATES and SUBLICENSEES as shall be pertinent
to a royalty accounting, with XXXXXXX'x reports for the relevant ROYALTY QUARTER
to which such reports relate.
9. PATENT APPLICATIONS AND MAINTENANCE.
9.1 MICHIGAN recognizes that XXXXXXX has filed a patent application on
MICHIGAN and XXXXXXX'x behalf, which is LICENSED PATENTS U.S. Patent Application
No. 08/121,582, filed September 16, 1993 entitled Radioimmunotherapy of Lymphoma
Using Anti-CD20 Antibodies invented by MICHIGAN's employees Xxxx Xxxxxxxx and
Xxxxxxx Xxxx and by XXXXXXX'x employees Xxxxxxx Xxxxxxx and Xxxxxxx Xxxxx.
XXXXXXX [*] of said patent application and any resulting patent, as well as
all other LICENSED PATENTS as may be applied for (though this is not in itself
intended as an obligation for XXXXXXX to file new patent applications), provided
that:
A. [*];
B. [*];
C. [*]; and
D. [*].
9.2 XXXXXXX agrees to reasonably file, prosecute and maintain such patent
applications and patents as will, in its reasonable opinion, contain legally
viable VALID CLAIMS covering any commercially valuable TECHNOLOGY.
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9.3 The PARTIES acknowledge that because [*] is [*] to XXXXXXX, XXXXXXX
may not desire to [*], and may choose to [*] in a manner which will require [*].
9.4 The PARTIES acknowledge a good faith duty to cooperate in the
prosecution of Licensed Patents with a common goal of seeking broad,
commercially useful patent protection.
10. INFRINGEMENT.
10.1 Should either PARTY desire to enforce the LICENSED PATENTS against
infringement by third parties, including defending any action for declaratory
judgment of noninfringement or invalidity, and filing, prosecuting, defending
and settling infringement and declaratory judgment actions, then that PARTY
shall notify the other, [*].
10.2 [*].
11. NO Warranties; LIMITATION ON MICHIGAN'S LIABILITY.
11.1 MICHIGAN, including its fellows, officers, employees and agents,
makes no representations or warranties that any LICENSED PATENT is or will be
held valid, or that the manufacture, use, sale or other distribution of any
LICENSED PRODUCT will be held valid, or that the manufacture, use, or sale or
other distribution of any LICENSED PRODUCT will not infringe upon any patent or
other rights not vested in MICHIGAN or XXXXXXX. MICHIGAN represents that it has
no knowledge of any third party rights in TECHNOLOGY.
11.2 MICHIGAN, INCLUDING ITS FELLOWS, OFFICERS, EMPLOYEES AND AGENTS,
MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BOTH NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATEVER
WITH RESPECT TO DESIGN, DEVELOPMENT, MANUFACTURE, USE, SALE OR OTHER DISPOSITION
BY XXXXXXX, AFFILIATES OR SUBLICENSEES OF LICENSED PRODUCTS.
11.3 The entire risk as to performance of the LICENSED PRODUCT is assumed
by XXXXXXX, AFFILIATES AND SUBLICENSEES. In no event shall MICHIGAN, including .
its fellows, officers, employees and agents, be responsible or liable for any
direct, indirect, special, incidental, or consequential damages or lost profits
to XXXXXXX, AFFILIATES, SUBLICENSEES, or any other individual or entity
regardless of legal theory. The above limitations on liability apply even though
MICHIGAN, its fellows, officers, employees or agents may have been advised of
the possibility of such damage.
11.4 XXXXXXX will not make any statements, representations or warranties
or accept any liabilities whatsoever to or with regard to any person or entity
which are inconsistent with any disclaimer or limitation included in this
Article 11. XXXXXXX will require written agreement with its sublicensed
AFFILIATES and SUBLICENSEES that they will not make any statements,
representations or warranties or accept any liabilities whatsoever to or with
regard to any person or entity which are inconsistent with any disclaimer or
limitation included in this Article 11.
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12. INDEMNITY; INSURANCE.
12.1 XXXXXXX shall defend, indemnify and hold harmless and shall require
its AFFILIATES and SUBLICENSEES to defend, indemnify and hold harmless MICHIGAN,
its fellows, officers, employees and agents, for and against any and all claims,
demands, damages, losses, and expenses of any nature (including attorneys' fees
and other litigation expenses), resulting from, but not limited to, death
personal injury, illness, property damage, economic loss or products liability
arising from or in connection with, (i) manufacture, use, sale or other
disposition by XXXXXXX, AFFILIATES of SUBLICENSEE of LICENSED PRODUCTS; (ii) the
direct or indirect use by any person of LICENSEES; (iii) the use by XXXXXXX,
AFFILIATES or SUBLICENSEES of any invention related to the TECHNOLOGY.
12.2 MICHIGAN shall be entitled to participate at its option and expense
through counsel of its own selection, and can join in any legal actions related
to any such claims, demands, damages, losses and expenses under Paragraph 12.1
above.
12.3 Prior to any distribution (including any distribution for clinical
trials) of any LICENSED PRODUCT by XXXXXXX, AFFILIATES or SUBLICENSEES, XXXXXXX
shall purchase and maintain in effect a policy of product liability insurance.
Such insurance policy shall provide for reasonable coverage for all claims with
respect to any LICENSED PRODUCTS manufactured, sold, sublicensed or distributed
and shall specify MICHIGAN, including its fellows, officers and employees, as an
additional insured. XXXXXXX shall furnish certificate(s) of such insurance to
MICHIGAN, upon request.
12.4 The requirements of defense and indemnity for events under Paragraph
12.1(ii) are not intended to apply to situations in which MICHIGAN might use
LICENSED PRODUCTS received from XXXXXXX (or its AFFILIATES or SUBLICENSEES) and,
because of the manner of MICHIGAN's use (i.e., negligent or otherwise actionable
use), thereby cause damage to third parties.
13. TERM AND TERMINATION.
13.1 This Agreement will become effective on its EFFECTIVE DATE and will
remain in effect until and terminate upon the last to expire of LICENSED
PATENTS, unless terminated under another specific provision of this Agreement.
13.2 Upon termination of this Agreement, all rights and obligations of the
PARTIES hereunder shall cease, except those terms, provisions, representations,
rights and obligations contained in this Agreement that by their sense and
context are intended to survive until performance, including:
A. Obligations to pay royalties and other sums accruing to the day
of such termination;
B. MICHIGAN's rights to inspect books and records as described in
ARTICLE 5, and XXXXXXX'x obligations to keep such records for the required time;
C. Obligations of defense and indemnity in ARTICLE 12; and
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D. The general rights, understandings and obligations of Articles
11, 26 and 27.
13.3 In the event that either PARTY shall default in the performance of
its obligation under this Agreement and shall fail to remedy such default within
[*] for breaches of financial obligations and [*] for breaches of non-financial
obligations after written notice from the other PARTY, the non defaulting PARTY
shall be entitled upon giving written notice to immediately terminate this
Agreement; provided however, that if the defaulting PARTY has undertaken and
continues to undertake, good faith efforts to cure, the defaulting PARTY shall
be granted another [*] to cure.
13.4 XXXXXXX can terminate this Agreement by giving MICHIGAN at least
[*] advance notice of termination. The notice shall be deemed by the
PARTIES to be final and upon receipt of the notice of termination, MICHIGAN
shall have the immediate right to enter into commercial agreements with others
for the manufacture sale, and/or use of LICENSED PRODUCTS, except that XXXXXXX
does not guarantee or warrant that XXXXXXX, or any other entity, will supply any
third party with [*]. Should XXXXXXX choose to terminate this Agreement under
this Paragraph 13.4, it agrees [*].
14. ASSIGNMENT.
Due to the unique relationship between the PARTIES, this Agreement shall
not be assignable by either PARTY without the prior written consent of the other
PARTY. Any attempt to assign this Agreement without such consent shall be void
from the beginning. MICHIGAN shall not unreasonably withhold consent for XXXXXXX
to assign this Agreement. No assignment shall be effective unless and until the
intended assignee agrees in writing to accept all of the terms and conditions of
this Agreement. [*].
15. REGISTRATION AND RECORDATION.
15.1 If this Agreement, any assignment or sublicense of this Agreement are
required to be registered or reported to a national or supranational agency in
an area in which XXXXXXX, AFFILIATES or SUBLICENSEES would do business, XXXXXXX
will undertake such registration or report at its own expense. Prompt notice and
appropriate verification of the act of registration or report or any agency
ruling resulting from it will be supplied by XXXXXXX to MICHIGAN.
15.2 Any formal recordation of this Agreement or any license or right
herein granted which is required by the law of any country, as a prerequisite to
enforceability of the Agreement or license or right in the courts of any such
country or for other reasons, shall also be carried out by XXXXXXX at its
expense. Appropriately verified proof of recordation shall be promptly furnished
to MICHIGAN.
16. CONFORMITY WITH LAW.
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16.1 This Agreement, and XXXXXXX'x and its AFFILIATES' and SUBLICENSEES'
activities hereunder, shall to the best of XXXXXXX'x knowledge, be carried out
in strict compliance with all applicable federal, state and local laws and
regulation, including without limitation, laws and regulations related to equal
opportunity, animal welfare and immigration compliance, and related to the
export, testing, production, transportation, packaging, labeling, sale or use of
LICENSED PRODUCTS.
16.2 XXXXXXX shall obtain written assurances regarding export and
re-export of TECHNOLOGY and LICENSED PRODUCTS that is required by the Office of
Export Administration Regulations. XXXXXXX will give the required written
assurances to MICHIGAN.
17. RESTRICTION ON USE OF NAMES.
Neither PARTY shall use the names of the other, its related entities, and
its employees or any adaptations thereof, in any advertising, promotional or
sales literature, without the prior written consent of the PARTY whose name is
being used in each case; provided however, a PARTY can:
A. Refer to publications by employees of the other PARTY in the
scientific literature or reports in scientific literature and presentations of
joint research and development work, and
B. State that a license has been granted as herein provided, as
required in financial reports and other non-commercial documents.
18. PRODUCT MARKING.
XXXXXXX agrees to xxxx, and to require AFFILIATES and SUBLICENSEES to
xxxx, LICENSED PRODUCTS with an appropriate patent notice [*].
19. NOTICES.
19.1 Any notice, request, report or payment required or permitted to be
given or made under this agreement by either PARTY can be given by sending such
notice by certified or registered mail, return receipt requested, to the address
set forth below or such other address as such PARTY shall have specified by
written notice given in conformity herewith.
19.2 Any notice given in accordance with the above provisions shall be
effective when mailed.
19.3 Alternatively, notices may be sent by U.S. first class mail or by
courier, postage prepaid (where applicable), or by facsimile where promptly
confirmed by personal delivery via U.S. first class mail or courier, postage
prepaid, to the address set forth below or such other address as such PARTY
shall have specified by written notice given in conformity herewith; such
notices shall be effective only upon actual receipt by the addressee.
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To MICHIGAN: The University of Michigan
Technology Management Office
Wolverine Tower, Room 2071
0000 Xxxxx Xxxxx Xxxxxx
Xxx Xxxxx, XX 00000-0000
Attn: File No. 1009
To XXXXXXX: Xxxxxxx Corporation
00000 X.X. 000 Xxxxxx
Xxxxx, Xxxxxxx 00000
Attention: Xx. Xxxxxx Xxxxxxx
With copy to: Xxxxxxx Corporation
0000 X.X. 000 Xxxxxx
Xxxxx, Xxxxxxx 00000
Attention: Corporate Counsel
20. SEVERABILITY AND CONSTRUCTION.
20.1 If any one or more of the provisions of the AGREEMENT shall be held
to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this AGREEMENT shall not in any
way be affected or impaired thereby.
20.2 The parties agree that they have participated equally in the
formation of this Agreement and that the language herein should not be
presumptively construed against either of them.
21. ENTIRE AGREEMENT AND AMENDMENTS.
This agreement contains the entire understanding of the PARTIES with
respect to the matter contained herein. The PARTIES can modify, vary or alter
any of the provisions of this agreement, by only by an instrument duly executed
by authorized officials of both PARTIES.
22. WAIVER.
No waiver by either PARTY of any breach of this Agreement shall be deemed
a waiver of any subsequent breach thereof nor shall any delay or omission on the
part of either PARTY to exercise any right, power, or privilege hereunder be
deemed a waiver of such right, power or privilege.
23. ARTICLE HEADINGS.
The ARTICLE headings herein are for purposes of convenient reference only
and shall not be used to construe or modify the terms of this Agreement.
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24. NO AGENCY RELATIONSHIP.
For the purpose of this AGREEMENT and all services to be provided
hereunder, both PARTIES shall be independent contractors and not agents or
employees of the other. Neither PARTY shall have authority to make any
statements, representations or commitments of any kind, or to take any action,
that will be binding on the other PARTY.
25. FORCE MAJEURE.
If the performance of any part of this Agreement by either PARTY, or of
any obligation under this Agreement is prevented, restricted, interfered with or
delayed by reason of any cause beyond the reasonable control of the PARTY liable
to perform, unless reasonable evidence to the contrary is provided, the PARTY so
affected shall, upon giving written notice to the other PARTY, be excused from
such performance to the extent of such prevention, restriction, interference or
delay, provided that the affected PARTY shall use its reasonable efforts to
avoid or remove such causes for nonperformance and shall continue performance
with the utmost dispatch whenever such causes are removed. When such
circumstances arise, the PARTIES shall discuss what, if any, modification of the
terms of this Agreement may be required in order to arrive at an equitable
solution.
26. GOVERNING LAW.
This Agreement and the relationships between the Parties shall be governed
in all respect by the law of the state of Michigan (notwithstanding any
provisions governing conflict of laws under such Michigan law to the contrary),
except that questions affecting the construction and effect of any patent shall
be determined by the law of the country in which the patent has been granted.
27. DISPUTE RESOLUTION.
27.1 any controversy or claim arising out of, or relating to, any
provisions of this agreement or the breach thereof which cannot otherwise be
resolved by good faith negotiations between the PARTIES or by some form of
alternate dispute resolution other than arbitration shall be resolved by final
and binding arbitration in New York, New York under the rules of the American
Arbitration Association, or the Patent Arbitration Rules if applicable, then
obtaining.
27.2 The arbitration shall be subject to the following terms:
A. The number of arbitrators shall be one (1).
B. The arbitrator shall be an independent, impartial third party
having no direct or indirect personal or financial relationship to any of the
parties to the dispute, who has agreed to accept the appointment as arbitrator
on the terms set out in this Section 27.
C. The arbitrator shall be an active or retired attorney, law
professor, or judicial officer with at least five (5) years experience in
general commercial matters and a familiarity with the laws governing proprietary
rights in intellectual property and the TECHNOLOGY in dispute.
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D. The arbitrator shall be selected as follows:
(1) Each PARTY shall submit a description of the matter to be
arbitrated to the American Arbitration Association at its Regional office in New
York, New York. Said Association shall submit to the PARTIES a list for the
arbitrators available to arbitrate any dispute between them. Thereafter, each
PARTY shall select, in numerical order, those persons on said list acceptable as
arbitrators and return the same to the Association. The first arbitrator
acceptable to both PARTIES shall be deemed the selected arbitrator with respect
to the dispute then at issue under this Agreement. In the event of a failure to
select a mutually agreeable arbitrator, the Association shall be requested to
submit as many subsequent lists of arbitrators as shall be necessary to effect a
mutual selection.
(2) If the method of selection set out in paragraph D(1) fails
for any reason, then either PARTY may petition an appropriate state or federal
court for appointment of the arbitrator in accordance with applicable law,
provided that the arbitrator must satisfy the requirements of B and C, above.
E. The arbitrator shall announce the award in writing accompanied by
written findings explaining the facts determined in support of the award, and
any relevant conclusions of law.
27.3 Unless otherwise provided in this Section or extended by agreement of
the PARTIES, each PARTY shall submit an initial request for designation of an
arbitrator within [*] after any request for arbitration, the dispute shall be
submitted to the arbitrator within [*] after the arbitrator is selected, and a
decision shall be rendered within [*] after the dispute is submitted.
27.4 The fees of the arbitrator and any other costs and fees associated
with the arbitration shall he paid in accordance with the decision of the
arbitrator.
27.5 The arbitrator shall have no power to add to, subtract from, or
modify any of the terms or conditions of this Agreement. Any award rendered in
such arbitration may be enforced by either PARTY in the appropriate State or
United States District Court in the State of Michigan.
27.6 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this agreement.
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* Confidential treatment requested
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IN WITNESS WHEREOF, the PARTIES hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
XXXXXXX INCORPORATED THE REGENTS OF THE
UNIVERSITY OF MICHIGAN
By: /s/ XXXXX X. XXXXXXX By: /s/ XXXXXX X. XXXX
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(authorized representative) (authorized representative)
Typed Name: Xxxxx X. Xxxxxxx Typed Name: Xxxxxx X. Xxxx
Title: Director of Immunology Title: Director, Technology Management
Office
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Exhibit A
[*]
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* Confidential treatment requested
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