gbmlic.doc
LICENSE AGREEMENT
This LICENSE AGREEMENT (the "Agreement") is made and entered into as of June 26,
1997, by and between Glyko Biomedical Ltd, ("Glyko"), a Canadian corporation
having its offices at Cassels Xxxxx Xxxxxxxxx, 00 Xxxx Xxxxxx Xxxx, 00xx Xxxxx,
Xxxxxxx, Xxxxxxx X0X 0X0, Xxxxxx existing under the laws of Canada and BioMarin
Pharmaceuticals, Inc, having offices at 00 Xxxxxxxx Xxxxx, Xxxxxx, XX 00000
existing under the laws of California ("BioMarin").
RECITALS
WHEREAS, Glyko has rights in certain technology; and
WHEREAS BioMarin desires to acquire from Glyko, and Glyko is willing to
grant to BioMarin, rights in such technology for the purpose of allowing
BioMarin to develop and market products for Therapeutic Uses (as defined below);
NOW THEREFORE, in consideration of the foregoing and the mutual
promises contained herein, the parties agree as follows:
1. DEFINITIONS
1.1 "Technology" shall mean all know-how, processes, formulae,
concepts, ideas, data, technical information, testing results, descriptions,
technologies, procedures, processes, articles of manufacture, compositions of
matter, designs, inventions, discoveries ,documents and works of authorship,
whether or not patentable or patented, now owned or licensed by Glyko and its
subsidiaries and affiliates, including without limitation the items described in
Exhibit A hereto.
1.2 "Therapeutic Uses" shall mean pharmaceutical entities, medical
devices, chemicals or materials for pharmaceutical use, or other chemicals which
can be used for the treatment of diseases in humans or animals, all uses other
than Diagnostic or Analytical Uses, including without limitation uses for drug
discovery and genomics.
1.3 "Diagnostic or Analytical Uses" shall mean all uses for scientific
laboratory research and all uses for diagnosis of disease in humans and animals
(but not the development of products or services to prevent and/or treat
diseases in humans or animals).
1.4 "Intellectual Property Rights" shall mean all current and
future worldwide patents, patent applications and other patent
rights, trade secrets, copyrights and other proprietary
rights.
1.5 "Effective Date" shall mean the date upon which the last of the
signatures is applied to this Agreement.
2. GRANT OF RIGHTS
2.1 License. Glyko hereby grants to BioMarin an exclusive, worldwide,
perpetual, irrevocable, royalty-free right and license, with the right to grant
and authorize sublicenses, under all of Glyko's Intellectual Property Rights in
and to the Technology, including without limitation those issued patents and
pending patent applications listed in Exhibit B hereto, to make, have made, use,
offer for sale, import and sell products for Therapeutic Uses incorporating,
manufactured using, or derived from the Technology.
2.2 Patent Marking BioMarin and its sublicensees shall xxxx products for
Therapeutic Uses made, sold or otherwise disposed of under the license granted
in Section 2.1 with such patent and other proprietary right notices as Glyko may
provide to BioMarin from time to time.
2.3 Reservation of Rights Except to the extent expressly granted to BioMarin
herein, Glyko retains all of its right, title and interest in and to the
Technology and all Intellectual Property Rights therein and thereto. Nothing in
this Agreement shall be deemed to prevent Glyko from making, having made, using,
offering for sale, importing and/or selling any product other than products for
Therapeutic Uses.
2.4 Disclosure of Technology As soon as practicable after the Effective Date,
and on an ongoing basis thereafter, Glyko shall make the Technology available to
BioMarin.
3. CONSIDERATION
In consideration for the license granted under Section 2 and Glyko's
other obligations hereunder, BioMarin shall issue Glyko on the Effective Date,
seven million (7,000,000) fully-paid, non-assessable shares of the common stock
of BioMarin.
4. LICENSE TO IMPROVEMENTS BY BIOMARIN
BioMarin hereby grants to Glyko an exclusive, worldwide, perpetual, irrevocable,
royalty-free right and license, with the right to grant and authorize
sublicenses, under all of BioMarin's Intellectual Property Rights in and to any
and all inventions, discoveries, or developments that modify, improve upon,
extend or enhance the Technology, which are made, conceived or reduced to
practice or expression by BioMarin ("Improvements"), to make, have made, use,
offer for sale, import and sell products for Diagnostic and Analytic Uses.
5. OBLIGATIONS OF BIOMARIN
BioMarin shall at all times use reasonable commercial efforts to
develop and commercialize products for Therapeutic Uses.
5. REPRESENTATIONS AND WARRANTIES
6.1 Representations and Warranties by Glyko Glyko represents and
warrants that (i) Glyko owns or has sufficient rights in the Intellectual
Property Rights relating to the Technology to give it the necessary power, right
and authority to enter into this Agreement and to grant the license granted
herein and to disclose the Technology to BioMarin; (ii) to the best of its
knowledge the Technology does not infringe any patent, copyright, trade secret
or other proprietary right of any third party; (iii) the Technology is free and
clear of any lien, encumbrance, security interest or restriction on transfer or
license, (iv) Glyko has not previously granted, and will not grant during the
term of this Agreement, any right license or interest in and to the Technology,
or any portion thereof for products(s) for Therapeutic Uses, which is in
conflict with the rights and licenses granted to BioMarin herein; and (v) Glyko
has no right, title or interest in any issued patents or pending patent
applications other than those set forth in Exhibit B hereto which relate to the
Technology.
6.2 Disclaimer EXCEPT FOR THE REPRESENTATIONS AND WARANTIES SETFORTH
ABOVE, GLYKO DISCLAIMS ALL WARRANTIES, EXPRESS, IMPLIED, STATUTORY, IN ANY
COMMUNICATION WITH BIOMARIN OR OTHERWISE, AND EXPRESSLY DISCLAIMS ANY IMPLIED
WARRANTY OF NONINFRINGEMENT, MERCHANTIBILITY OR FITNESS FOR A PARTICULAR
PURPOSE. WITHOUT LIMITING THE FOREGOING, GLYKO DISCLAIMS (i) ANY WARRANTY
REGARDING THE VALIDITY OF THE PATENTS AND PATENT APPLICATIONS LISTED IN EXHIBIT
B HERETO AND (ii) ANY WARRANTY THAT THE MANUFACTURER, USE OR SALE OF ANY
PRODUCT(S) FOR THERAPEUTIC USES WILL NOT INFRINGE ANY PATENT OR OTHER
PROPRIETARY RIGHT OF ANY THIRD PARTY.
7. PROTECTION AND ENFORCEMENT OF INTELLECTUAL PROPERTY
7.1 Maintenance of Patents Glyko shall maintain any and all issued patents
pertaining to the Technology, including without limitation those patents listed
in Exhibit B hereto. If Glyko elects not to pay any fee required to maintain any
such patent, Glyko shall so notify BioMarin at least sixty (60) days prior to
the date that such patent would no longer be effective, and BioMarin shall have
the right to pay such fee.
7.2 Prosecution of Patent Applications Glyko shall have the right, at
its option and expense, to control the filing for, prosecution, issuance and
maintenance of new and existing patent applications (including without
limitation the patent applications listed in Exhibit B hereto) covering the
Technology. Glyko shall keep BioMarin reasonably informed as to the status of
all such patent applications, including without limitation (i) the scope and
content of all such patent applications and (ii) responses to official actions
of patent offices during prosecution of all such patent applications. If Glyko
elects not to pursue any patent application covering the Technology in any
country, Glyko shall so notify BioMarin at least sixty (60) days prior to the
date that such application would no longer be effective. In such case, BioMarin
shall have the right to control the filing for, prosecution, issuance and
maintenance of such application in that country at its own expense, and Glyko
shall give BioMarin all reasonably requested assistance to enable BioMarin to do
so.
7.3 Notification of Infringement Each party shall notify the other upon
such party becoming aware of any infringement by any third party or any
Intellectual Property Rights with respect to the Technology, and shall provide
the other with the available evidence, if any, of such infringement. In
addition, Glyko shall notify BioMarin in the event that Glyko becomes aware that
the Technology infringes a patent, copyright, trade secret or other proprietary
right of any third party.
7.4 Enforcement of Patent Rights If Glyko or BioMarin has actual notice
of infringement by any third party of any Intellectual Property Rights with
respect to the Technology, the respective officers of Glyko and BioMarin shall
promptly confer to determine in good faith an appropriate course of action to
enforce such Intellectual Property Rights or otherwise xxxxx the infringement
thereof. Glyko shall have the right but not the obligation, at its own expense
and within its sole control, to take appropriate action to enforce such rights.
If, within six (6) months after notice of infringement, Glyko has not commenced
reasonably sufficient action to enforce such Intellectual Property Rights,
BioMarin shall have the right, at its own expense, to take appropriate action to
enforce such Intellectual Property Rights and Glyko shall cooperate with
BioMarin as reasonably requested by BioMarin, including the joinder by Glyko in
such action as a party plaintiff. Each party shall retain any and all amounts
recovered in any action by it to enforce such Intellectual Property Rights.
8. CONFIDENTIALITY
8.1 Confidentiality. Each party agrees that any inventions, know-how,
ideas and other business, technical or financial information it obtains from the
other are the confidential property of the disclosing party or its licensors
("Confidential Information"). Confidential Information of Glyko shall include,
without limitation the Technology, Confidential Information of BioMarin shall
include, without limitation, the Improvements. The receiving party shall not use
or disclose the Confidential Information of the disclosing party except as
expressly permitted herein, and shall keep confidential such Confidential
Information using the same degree of care it uses to protect its own information
of a similar nature, but in no event with less than reasonable care; provided
however that the foregoing restrictions shall not apply to any Confidential
Information of the disclosing party which is (i) independently developed by the
receiving party without the use of or reference to the Confidential Information
of the disclosing party, (ii) in the public domain at the time of its receipt or
thereafter becomes part of the public domain through no fault of the recipient,
(iii) received without any obligation of confidentiality from a third party
having the right to disclose such information, (iv) released from the
restrictions of this Section 8 by the express written consent of the disclosing
party or (v) required by law, statute, rule or court order to be disclosed (the
receiving party shall, however, use all reasonable efforts to obtain
confidential treatment of any such disclosure).
8.2 Permitted Disclosures Notwithstanding the provisions of Section 8.1
thereof, either party may, to the extent necessary, disclose Confidential
Information of the other party (i) for the purpose of securing safety agency
approvals and/or (ii) to exercise its rights under this Agreement, provided that
in each such instance (x) the other party shall have been notified of the
disclosure and (y) any such disclosure shall be made to third parties which
either have agreed to be bound by or are already subject to duties of non-use
and non-disclosure at least as restrictive as that set forth in Section 8.1
hereof.
8.3 Technology Each of Glyko and BioMarin agrees to use reasonable
efforts to maintain the confidentiality of the Technology.
9. PURCHASE OF GLYKO PRODUCTS AND SERVICES
BioMarin shall have the right to purchase any and all products
manufactured by Glyko (including without limitation enzymes) and services
offered by Glyko at a discount which is equal to the lowest price to its most
favored customer, subject to the reasonable availability of such products and/or
services.
10 TERM
This Agreement shall commence on the Effective Date and shall continue
in full force and effect thereafter.
LIMITATION OF LIABILITY
EXCEPT WITH RESPECT TO ANY GROSS NEGLIGENCE OR WILLFUL MISCONDUCT BY SUCH PARTY,
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL OR INDIRECT DAMAGES, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY, WHETHER TORT (INCLUDING NEGLIGENCE), BREACH OF CONTRACT OR
OTHERWISE, AND WHETHER OR NOT THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGE.
12 GENERAL PROVISIONS
12.1 Governing Law This Agreement shall be governed by the laws of the
state of California without reference to its conflict of laws provisions. The
parties hereby consent to the personal and exclusive jurisdiction of the state
and federal courts in Marin County California to adjudicate any dispute arising
out of this Agreement.
12.2 Modification This Agreement may be modified only by a writing
signed by both parties hereto.
12.3 Entire Agreement This Agreement (together with its Exhibits A and
B) represents the entire agreement of the parties with respect to the subject
matter hereof and supersedes all prior or contemporaneous agreements,
understandings, proposals and representations by the parties.
12.4 Assignment either party may assign or delegate its rights or
obligations under this Agreement in the case of a transfer of ownership or
control of substantially all of its assets to which this Agreement pertains. No
assignments or delegations by either party other than those set forth herein
shall be permitted, and any such attempted assignment by either party in
violation of this Section 12.4 shall be void. Subject to the foregoing, this
Agreement shall bind and inure to the benefit of the parties hereto and their
successors and assigns.
12.5 Further Assurances Each party agrees to duly execute and deliver,
or cause to be duly executed and delivered, such further instruments, and to do
and cause to be done, such further acts and things, including without limitation
the execution and filing of such additional agreements, documents and
instruments, that may be necessary or as the other party hereto may from time to
time reasonably request in connection with this agreement in order to carry out
more effectually the provisions and purposes of this Agreement, or to better
assure and confirm unto such other party its rights under this agreement.
12.6 Notices All notices under this Agreement shall be in writing and
sent by (i) certified airmail, return receipt requested, postage prepaid or (ii)
commercial courier service if properly addressed to or delivered at the
addresses of the parties set forth above, notices and other communications shall
be deemed given upon delivery or, when delivery cannot be effected due to the
actions of the addressee, upon tender. Either party may change its address by a
notice given in compliance with this section.
12.7 Severability. If any provision thereof should be held invalid,
illegal or unenforceable in any respect in any jurisdiction, then, to the extent
permitted by law, (i) all other provisions thereof shall remain in full fore and
effect in such jurisdiction and the invalid , illegal or unenforceable provision
shall be liberally construed in order to carry out the intentions of the parties
hereto as nearly as may be possible and (ii) such invalidity, illegality or
unenforceability shall not affect the validity, legality or enforceability of
such provision in any other jurisdiction. To the extent permitted by applicable
law, each party hereby waives any provision of law that would render any
provision hereof prohibited or unenforceable in any respect.
12.8 No Waiver. The failure or delay of either party to exercise any
right under this Agreement may not be construed as a waiver of that right, and
no waiver of any term or condition of this Agreement shall be valid or binding
on either party unless set forth in a writing signed by such party.
12.9 Counterparts. This Agreement may be executed in any number of
counterparts and when so executed and delivered shall have the same force and
effect as though all signatures appeared on one document.
IN WITNESS WHEREOF, the parties by their duly authorized
representatives have entered into this Agreement as of the Effective Date.
Glyko Biomedical Ltd: BioMarin Pharmaceuticals Inc:
By: /s/ Xxxx X. Xxxxx By: /s/Xxxxx X. Xxxxxxx, Xx.
Name: Xxxx X. Xxxxx Name: Xxxxx X. Xxxxxxx, Xx.
Title: Director Title: Chief Executive Officer
Exhibit A
Technology
1. FACE Technology
2. All clones, vectors and probes developed by Glyko
3. All enzymes developed or offered by Glyko
4. Glyko know-how for practicing the Technology
EXHIBIT B
LICENSED CURRENT PATENTS
PATENT SUBJECT MATTER COUNTRY NUMBER
2D ANALYSIS OF CARBOHYDRATES US ALLOWED
ANTS FLUOROPHORE US ISSUED US 5,340,453
2 AMINOACRIDONE TAG US ISSUED US 5,472,582
ANTS-BLOTTING US ISSUED US 5,316,638
FACE CLONING ASSAY US ISSUED US 5,258,295
CLONED NEURAMINIDASE ENZYME US ISSUED US 5,591,839
ANTS-2D ELECTROPHORESIS US ISSUED US 4,975,165
ANTS-2D ELECTROPHORESIS US ISSUED US 5,094,740
ANTS-2D ELECTROPHORESIS EPC ALLOWED
ANTS-BLOTTING (GLYCOMED) US ISSUED US 5,019,231
ANSA FLUOROPHORE (GLYCOMED) US ISSUED US 5,094,731
ANSA FLUOROPHORE (GLYCOMED) US ISSUED US 5,035,786
ANSA FLUOROPHORE (GLYCOMED) US ISSUED US 5,087,337
FACE SYNTHESIS US ISSUED US 5,308,460
CARBOHYDRATE SEQUENCING UK ISSUED GB 2215836
CARBOHYDRATE SEQUENCING US ISSUED US 5,104,508
CCD DETECTION OF CARBOHYDRATES (ASTROSCAN) US ISSUED US 4,874,492
CCD DETECTION OF CARBOHYDRATES (ASTROSCAN) PCT ISSUED EP 0,214,713
CCD DETECTION OF CARBOHYDRATES (ASTROSCAN) US ISSUED UK 2,175,690
FLUOROPHORE 2-AMINOACRIDONE UK ISSUED GB 2,254,851
CLONED NEURAMINIDASE US ISSUED US 5,591,839
PRECAST GELS US ALLOWED
CCD IMAGER US ALLOWED
ABBREVIATIONS:
ANSA=AMINONAPHTHALENE SULFONIC ACID
ANTS=2-AMINONAPHTHALENE TRISULFONIC ACID
CCD=CHARGE COUPLED DEVICE;
FACE=FLUOROPHORE-ASSISTED-CARBOHYDRATE ELECTROPHORESIS.
