EXHIBIT 10.13
AMENDED AND RESTATED EXCLUSIVE LICENSE AGREEMENT
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THIS AGREEMENT (the "Restated Agreement"), effective as of the 1st day of
April, 1993, (the "Effective Date") by and between the CORNELL RESEARCH
FOUNDATION, INC., having offices at Cornell Business & Technology Park, 00
Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxx Xxxx 00000 (hereinafter referred to as
"FOUNDATION") and GENVEC, INC., having offices at 00000 Xxxxxxxx Xxxxx,
Xxxxxxxxx, Xxxxxxxx 00000 (hereinafter referred to as "LICENSEE").
W I T N E S S E T H T H A T:
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WHEREAS, FOUNDATION is a wholly owned subsidiary corporation of Cornell
University and holds the ownership interests of patents issued on inventions
made by Cornell University's staff and administers licenses in a manner
consistent with the patent policy of Cornell University;
WHEREAS, FOUNDATION represents that it is assignee of the patents and/or
patent applications included within the Sponsored Research Intellectual Property
(as defined below) and any patents issuing thereon and has the right to grant
licenses under said patents and/or patent applications and patents issuing
thereon;
WHEREAS, LICENSEE and FOUNDATION previously entered into that certain
Sponsored Research Agreement effective as of May 18, 1993 (the "Prior Crystal
Sponsored Research Agreement"), pursuant to which LICENSEE agreed to fund
certain research conducted under the supervision of Dr. Crystal at the Cornell
University Medical College ("CUMC").
WHEREAS, LICENSEE and FOUNDATION previously entered into that certain
Sponsored Research Agreement effective as of July 10, 1995 (the "Prior Xxxxx-
Xxxxxxxx Sponsored Research Agreement"), pursuant to which LICENSEE agreed to
fund certain research conducted under the supervision of Xx. Xxxxx-Xxxxxxxx at
the Cornell University Medical College.
WHEREAS, LICENSEE and FOUNDATION intend to supersede the Prior Crystal
Sponsored Research Agreement with a further Sponsored Research Agreement
pursuant to which LICENSEE expects to fund certain research conducted under the
supervision of Dr. Crystal at the Cornell University Medical College, and
LICENSEE and FOUNDATION may enter into other agreements pursuant to which
LICENSEE may support the conduct of research at Cornell University Medical
College and its affiliated clinical entities.
WHEREAS, FOUNDATION has previously granted to LICENSEE an exclusive license
under (i) FOUNDATION's rights included in the Sponsored Research Intellectual
Property (as defined in the Prior Crystal Sponsored Research Agreement)
including the Designated Inventions, Biological Material and Technical
Information and related intellectual property rights subject to that certain
License Agreement entered April 1, 1993, and (ii) under FOUNDATION's rights in
the
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
Subject Inventions (as defined in the Prior Xxxxx-Xxxxxxxx Sponsored Research
Agreement) including the Designated Inventions, Biological Material and
Technical Information and related intellectual property rights subject to that
certain License Agreement entered July 10, 1995;
WHEREAS, FOUNDATION and LICENSEE wish to amend and restate the License
Agreements and to include under this Restated Agreement exclusive, worldwide
licenses under the discoveries and inventions embodied in the Sponsored Research
Intellectual Property Rights (as defined below);
WHEREAS, as a benefit of funding such research, FOUNDATION is willing to
grant to LICENSEE an exclusive license under FOUNDATION's rights in such
Sponsored Research Intellectual Property Rights upon the terms and conditions
hereinafter set forth;
WHEREAS, the work leading to the Sponsored Research Intellectual Property
was supported in part by an agency of the U.S. Government, FOUNDATION is
obligated to comply with the U.S. Office of Management & Budgets Circular No. A-
124, or 37 CFR Part 401; and
WHEREAS, such FOUNDATION and LICENSEE have entered into a Warrant Agreement
on even date herewith, pursuant to which LICENSEE shall provide to FOUNDATION
warrants to purchase shares of GenVec stock, in accordance with the terms and
conditions therein.
NOW, THEREFORE, in consideration of the covenants and obligations
hereinafter set forth, the parties hereto hereby agree as follows:
I.
DEFINITIONS
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The following definitions will apply throughout this Restated Agreement:
1.1 "Affiliate" shall mean any corporation or other entity which
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is directly or indirectly controlling, controlled by or under the common control
of a party hereto. For the purpose of this Restated Agreement, "control" shall
mean the direct or indirect ownership of at least fifty percent (50%) of the
outstanding shares or other voting rights of the subject entity to elect
directors, or if not meeting the preceding, any entity owned or controlled by or
owning or controlling at the maximum control or ownership rights permitted in
the country where such entity exists.
1.2 "Biological Research Materials" shall mean any [*]
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or other biological material or derivative or analogs thereof, created by one or
more employees of Cornell University and arising out of the Sponsored Research
conducted pursuant to any of the Sponsored Research Agreements (except to the
extent such biological material is subject to the Material Transfer Agreement).
It is understood and agreed that the Biological Research Materials shall
include, without limitation, the Biological Materials (as defined in the Prior
Sponsored Research Agreements and/or License Agreements).
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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1.3 "Confidential Information" shall mean (i) any proprietary or
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confidential information or material in tangible form disclosed hereunder that
is marked as "Confidential" at the time it is delivered to the receiving party,
or (ii) proprietary or confidential information disclosed orally hereunder which
is identified as confidential or proprietary when disclosed and such disclosure
of confidential information is confirmed in writing within thirty (30) days by
the disclosing party.
1.4 "LICENSEE" shall mean GenVec, Inc. and its Affiliates.
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1.5 "License Year" shall mean each [*] period beginning on the
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effective date of this Restated Agreement first written above and thereafter on
the anniversary date thereof.
1.6 "Licensed Application" shall mean any U.S. patent application
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within the Sponsored Research Intellectual Property Rights and any continuation,
continuation-in-part, or divisional applications thereof, as well as foreign
counterparts thereof.
1.7 "Licensed Patent" shall mean any U.S. Patent issuing from a
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Licensed Application, and all extensions, reissues and re-examinations thereof,
as well as foreign counterparts thereof.
1.8 "Licensed Product" shall mean any product, composition or
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material, within the scope of a Valid Claim, or which incorporates, in material
part, Biological Research Materials.
1.9 "Material Transfer Agreement" shall mean that certain
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Material Transfer Agreement entered by LICENSEE and Cornell University
Medical College effective as of December 19, 1996.
1.10 "Net Sales Price" shall mean the gross amount received by
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LICENSEE or its sublicensees in arm's length sales to third parties
of Licensed Products, after deduction of the following items to the extent such
items are incurred and do not exceed reasonable and customary amounts for each
such item in the market in which such sale occurred:
[*]
Net Sales Price shall not include sales or transfers between LICENSEE and its
subsidiaries, Affiliates or sublicensees, except that where such subsidiary,
Affiliate or sublicensee utilizes the Licensed Products for the performance of
commercial services for third party customers. Net Sales Price shall
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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be based on subsequent final sales of such Licensed Products to third parties by
such Affiliates or sublicensees, unless the intermediate sales price to a
sublicensee is higher than the subsequent final Sales Price, in which case the
intermediate Sales Price shall control.
1.11 "Sponsored Research Agreements" shall mean the Prior
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Sponsored Research Agreements and the Other Sponsored Research Agreements.
1.11.1 "Prior Sponsored Research Agreements" shall
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mean each of the Prior Crystal Sponsored Research Agreement and the Prior Xxxxx-
Xxxxxxxx Sponsored Research Agreement.
1.11.2 "Other Sponsored Research Agreements" shall
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mean any Sponsored Research Agreement entered by LICENSEE and FOUNDATION (or its
affiliated clinical entities) after December 31, 1997.
1.12 "Sponsored Research Intellectual Property Rights" shall mean
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individually and collectively, all patent applications, patents, and patentable
discoveries and inventions arising, in whole or in part, out of the Sponsored
Research conducted pursuant to any of the Sponsored Research Agreements that are
first conceived or discovered and/or reduced to practice (i) by one or [*].
1.13 "Technical Information" shall mean and include all technical
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information, developments, discoveries and know-how, methods, techniques,
formulae, processes, and other information conceived and/or discovered and/or
reduced to practice in connection with research conducted pursuant to any of the
Sponsored Research Agreements. "Technical Information" shall exclude any of the
foregoing that are included within a claim of a Licensed Patent or a Licensed
Application or which are Biological Research Materials.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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1.14 "Valid Claim" shall mean a claim of an issued and unexpired
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patent or a claim of a pending patent application which has not been held
unpatentable, invalid or unenforceable by a court or other government agency of
competent jurisdiction and has not been admitted to be invalid or unenforceable
through reissue, re-examination, disclaimer or otherwise; provided, however,
that if any holding of invalidity, unenforceability or unpatentability is later
reversed by a court or agency with overriding authority, the relevant claim
shall be reinstated as a Valid Claim hereunder with respect to sales made after
the date of such reversal. Notwithstanding the foregoing provisions of this
Section 1.14, if a claim of a pending patent application has not issued as a
claim of an issued patent, within [*] after the date from which such
claim takes priority, such pending claim shall not be a Valid Claim for purposes
of this Agreement unless and until a patent issues including such claim.
II
GRANT
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2.1 Subject only to the prevailing rights of and obligations to the
U.S. Government with respect to ownership of intellectual property derived in
the course of federally sponsored research, including, without limitation, any
such rights and obligations set forth in 37 CFR Part 401, should they exist,
FOUNDATION hereby grants to LICENSEE for the term set forth below and under the
royalty basis set forth below, an exclusive license under the Sponsored Research
Intellectual Property Rights (and related Licensed Applications and Licensed
Patents) to make, have made, use, lease, import, have imported, offer for sale,
sell and otherwise exploit Licensed Products in the United States and throughout
the world, with the right to grant sublicenses, as set forth in Article XII
infra; [*];
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2.2 FOUNDATION shall retain the nontransferable right to practice
the Sponsored Research Intellectual Property Rights for its internal, academic,
non-commercial research.
2.3 Promptly following execution of this Agreement, FOUNDATION
shall transfer to LICENSEE a sufficient quantity of the Biological Research
Materials existing as of the Effective Date, and thereafter as Biological
Research Materials are developed, in each case, as are
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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reasonable and necessary for LICENSEE to establish a viable culture of such
Biological Research Materials. LICENSEE shall reimburse FOUNDATION for the
reasonable out-of-pocket costs incurred by FOUNDATION in transferring the
Biological Research Materials to LICENSEE.
III
TO HAVE MADE
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3.1 The right of LICENSEE and its sublicensees to make Licensed
Products includes the right to have made Licensed Products by contract with
third parties. Such contractual arrangements with third parties shall be subject
to and conditioned upon appropriate supervision and quality assurance and
control of the third party by LICENSEE and the third party shall be bound in
writing to respect all rights of FOUNDATION and to supply any production of
Licensed Products made by such third party exclusively to LICENSEE or a
sublicensee of LICENSEE.
IV
FOREIGN PATENTS AND PAYMENT OF COSTS
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[*]
V
PAYMENT OF U.S. FEES
AND CONTINUING PROSECUTION COSTS
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[*]
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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[*]
VI
ROYALTIES AND MINIMUM ROYALTIES TO BE
PAID DURING THE LICENSE AGREEMENT
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6.1 Beginning on March 1, 1998, and continuing for a [*] period
thereafter, LICENSEE shall pay FOUNDATION a [*] maintenance fee for that License
Year, and following such [*] period, LICENSEE shall pay FOUNDATION a [*]
maintenance fee for each License Year during the term of this Restated
Agreement. Such monies will be considered as a credit for any royalties due for
that License Year under this Restated Agreement and the royalty reports may
reflect the use of such credit. Such provision is to be construed as an annual
maintenance fee payment requirement and none of the maintenance fee payments are
refundable or applicable to succeeding License Years.
6.2 LICENSEE will pay to the FOUNDATION a royalty of [*] of the Net
Sales Price of Licensed Products within the scope of an issued Valid Claim in
the country of manufacture or sale.
6.3 If a Licensed Product is covered in the country of manufacture
or sale only by a Valid Claim of a Licensed Patent owned jointly by the
FOUNDATION and LICENSEE, the royalty rate [*] Sales.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
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6.4 If a Licensed Product is covered in the country of manufacture
or sale only by a Valid Claim of a Licensed Application, [*] of the Net Sales
Price.
6.5 In the event that a Licensed Product is sold in combination as
a single product with another product or component whose sale and use are not
covered by a claim within the Sponsored Research Intellectual Property Rights in
the country for which the combination product is sold, Net Sales Price from such
sales for purposes of calculating the amounts due under this Article VI above
shall be calculated by multiplying the Net Sales Price of that combination by
the fraction A/(A+B), where A is the selling price of the Licensed Product and B
is the selling price of the other product or component sold separately. In the
event that no such separate sales are made, the Net Sales Price for royalty
determination shall be as reasonably allocated by LICENSEE between such Licensed
Product and such other product or component, based upon their relative
importance and proprietary protection.
6.6 If LICENSEE or its sublicensee is required to pay a third party
with respect to a license for intellectual property rights or other technologies
which LICENSEE, or its sublicensee, in its reasonable judgment, determines are
necessary to practice the Sponsored Research Intellectual Property Rights,
LICENSEE may offset such amounts against royalties due to FOUNDATION for such
Licensed Product. Notwithstanding the foregoing provisions of this Section 6.6
in no event shall the royalties due to FOUNDATION hereunder be reduced [*] of
the amount that would otherwise be due FOUNDATION pursuant to this Restated
Agreement.
6.7 If LICENSEE or its sublicensee is required to pay a third party
with respect to a license for intellectual property rights or other technologies
which LICENSEE, or its sublicensee, in its reasonable judgment, determines are
necessary or useful to make, use or sell a Licensed Product, but are not
required to practice the Sponsored Research Intellectual Property Rights,
LICENSEE may offset such amounts owing to such third parties against royalties
due to FOUNDATION for such Licensed Product. Notwithstanding the foregoing
provisions of this Section 6.7 in no event shall the royalties due to FOUNDATION
hereunder be so reduced [*] of the amount that would otherwise be due FOUNDATION
pursuant to this Restated Agreement.
6.8 It is understood and agreed that regardless of any credits or
offsets to which LICENSEE or its sublicensees are entitled under the terms of
this Restated Agreement, the royalty payments due FOUNDATION under this Article
6 [*] of the Net Sales Price of any Licensed Product.
6.9 In the event that more than one Valid Claim within the Licensed
Patents is applicable to any Licensed Product, then only one royalty shall be
paid to FOUNDATION in respect of such Licensed Product. It is understood that
royalties shall only be payable under this Article VI with respect to Licensed
Products whose sale would infringe a Valid Claim in the country for which such
Licensed Product is sold. In no event shall more than one royalty be due
hereunder with respect to any Licensed Product unit, nor shall a royalty be
payable under this Article VI with respect to sales of Licensed Products for use
in research and/or development, in clinical trials or as samples.
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THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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6.10 With respect to the possible renegotiation of royalty rates
with regard to any Sponsored Research Intellectual Property Rights subject to
this Agreement, FOUNDATION shall promptly notify LICENSEE if it believes that
any such a renegotiation is required under the Tax Reform Act of 1986
specifically identifying the applicable intellectual property, and in such event
the following shall apply:
6.10.1 Fair Consideration. FOUNDATION and LICENSEE
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have determined that the consideration payable to the FOUNDATION pursuant to
this Agreement is fair and competitive with respect to all reasonably
conceivable inventions and other intellectual property which might be developed
by FOUNDATION under any of the Sponsored Research Agreements at the time each
Sponsored Research Agreement was executed.
[*]
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THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED FORMS.
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[*]
6.11 Royalties due under this Article VI shall be payable on a
country-by-country and Licensed Product-by Licensed Product basis until the
expiration of the last-to-expire issued Valid Claim covering such Licensed
Product in such country. It is understood that LICENSEE'S obligation to pay
royalties with respect to a particular Licensed Product shall cease:
(i) if the applicable claims in the Licensed Patent in any
particular country are held invalid by an unappealed or unappealable decision of
a court of competent jurisdiction, in that particular country, or
(ii) upon expiration of the last to expire Licensed Patent covering
such Licensed Product in a country;
(iv) if FOUNDATION abandons its patent solicitation efforts for all
Licensed Applications, and no issued Licensed Patent is in force.
VII
ACCOUNTING AND PAYMENT SCHEDULE
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7.1 Payment, reporting and financial accounting shall be on a
quarterly basis and LICENSEE will deliver to the FOUNDATION within sixty (60)
days after the end of each quarter of the License Year a report in writing
setting forth sales of Licensed Products (including a negative report if
appropriate) and will accompany such report with an appropriate payment of
royalty or maintenance fee due for such period. LICENSEE will keep accurate
records, certified by it, showing the information by which LICENSEE arrived at a
royalty determination and upon FOUNDATION's written request, but not more
frequently than once per calendar year, will permit a person appointed by the
FOUNDATION and acceptable to LICENSEE after entering into a confidentiality
agreement with LICENSEE, at FOUNDATION's expense, to make such inspection of
said records at agreed times during LICENSEE's regular business hours for the
sole purpose of and to the extent necessary to verify royalty reports made by
LICENSEE with respect to Net Sales Price received not more than three (3) years
prior to the date of FOUNDATION's request. The report for the first quarter of
the first License Year will include any sales of Licensed Products by LICENSEE
prior to the date of this Restated Agreement and will be accompanied by
appropriate payment of royalty therefor in the U.S. dollars. To the extent that
LICENSEE does not have the right to grant to FOUNDATION the right to audit its
sublicensees' books and records hereunder, LICENSEE shall endeavor to obtain for
itself
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THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED FORMS.
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such right and at the request and expense of FOUNDATION, LICENSEE shall exercise
such audit right with respect to sublicensees, and to the extent its contractual
obligations to the sublicensee permit, provide the results of such audit for
inspection by FOUNDATION pursuant to this Section 7.1.
7.2 Conversion from foreign currencies, if any, shall be based upon
the conversion rate for conversion of the foreign currency into U.S. Dollars,
quoted for current transactions for buying U.S. Dollars, as reported in The Wall
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Street Journal for the last business day of the calendar quarter to which such
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payment pertains.
7.3 Payments which are delayed beyond the sixty (60) days after the
end of the quarter in which they become due shall bear interest at a rate equal
to the prime rate as reported by Chase Manhattan Bank, New York, calculated on
the number of days such payment is delinquent.
VII
TERM
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8.1 The aforesaid exclusive license shall commence on April 1, 1993
and unless terminated earlier pursuant to Article XIII, continue in full force
and effect on country-by-country and Licensed Product-by-Licensed Product basis
until the expiration, revocation or invalidation date of the last Licensed
Patent or of the abandonment of the last Licensed Application in such country,
whichever is later. LICENSEE's license with respect to Biological Research
Materials and Technical Information in each country shall survive the expiration
of this Restated Agreement and shall be deemed fully-paid as of such date.
IX
DUTY OF DILIGENCE
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9.1 LICENSEE shall use its reasonable efforts to effect the
introduction of Licensed Product(s) into the commercial market as soon as
practicable consistent with sound and reasonable business practices. Upon and
after such introduction and consistent with sound and reasonable business
practices, LICENSEE agrees to continue to use its reasonable efforts to maximize
commercial sales of Licensed Products for the duration of the term of this
Agreement. LICENSEE further agrees to use reasonable best efforts to maintain
quality control over Licensed Products and generally attend to proper, safe,
fair and lawful development and exploitation of the market for Licensed
Products. The foregoing diligence requirements may be satisfied by LICENSEE or
its sublicensees.
X
INFRINGEMENT OF LICENSED PATENT RIGHTS BY THIRD PARTIES
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10.1 In the event that any infringement of a patent within the
Sponsored Research Intellectual Property Rights shall come to the attention of
the FOUNDATION or LICENSEE, then FOUNDATION and LICENSEE shall duly inform each
other. LICENSEE shall have the first right (itself or through others), at its
sole option, to bring suit to enforce the Sponsored Research Intellectual
Property Rights, and/or defend any declaratory judgment action with respect
thereto, in each case with respect to the manufacture, sale or use of a Licensed
Product; provided, however, that LICENSEE shall keep FOUNDATION reasonably
informed as to the defense and/or settlement of such action. FOUNDATION shall
have the right to participate in any such action with counsel of its own choice
at its own expense. If LICENSEE fails to initiate a patent infringement action
to enforce the Sponsored Research Intellectual Property Rights against a
commercially significant infringement by a third party, within [*] of a request
by FOUNDATION to do so, (or within such shorter period which may be required to
preserve the legal rights of FOUNDATION under the laws of the relevant
government), FOUNDATION may initiate such action at its own expense; provided,
prior to initiating any such action it shall notify LICENSEE of its intent to do
so and shall discuss with LICENSEE and reasonably take into consideration
LICENSEE's views as to whether such an action should then be pursued. LICENSEE
shall have the right to participate in any such action with counsel of its own
choice and its own expense.
10.2 LICENSEE may credit any expenses (including, without
limitation, attorneys and expert fees) incurred in connection with any
infringement or declaratory judgment against up to [*] of any royalties payable
by LICENSEE. Out of any damages or awards recovered by LICENSEE in such action
such amounts shall be first applied to reimburse LICENSEE's and then
FOUNDATION's unreimbursed expenses, including without limitation, reasonable
attorneys' and expert fees and court costs. Any amount remaining belongs to [*]
10.3 In any action brought by LICENSEE, LICENSEE undertakes to
indemnify for and hold FOUNDATION harmless from any damages, costs or expenses
incurred by reason of such litigation. LICENSEE shall not settle any claim based
on the infringement of a patent within the Sponsored Research Intellectual
Property Rights without the consent of FOUNDATION, which consent shall not be
unreasonably withheld.
XI
ASSIGNMENT
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[*]
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THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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XII
SUBLICENSING
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[*]
12.2 Any sublicense granted by LICENSEE (including, without
limitation, any non-exclusive sublicense) shall remain in effect in the event of
any termination of this Restated Agreement and shall provide for the assignment
of such sublicenses to FOUNDATION or its designee, in the event that the
Restated Agreement is terminated; provided, the financial obligations of each
sublicensee to FOUNDATION shall be limited to the amounts LICENSEE shall be
obligated to pay to FOUNDATION for the activities of such sublicensee pursuant
to this Restated Agreement.
XIII
TERMINATION
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13.1 Either party may terminate this Restated Agreement for
noncompliance with a material term of this Restated Agreement by the other party
by written notice to the breaching party of its intentions to do so, if such
breach is not cured within [*] after such written notice is given. However, if
the party alleged to be in breach of this Restated Agreement disputes such
breach within such [*] period, the nonbreaching party shall not have the right
to terminate this Restated Agreement unless it has been determined by an
independent arbitrator that this Restated Agreement was materially breached, and
the breaching party fails to comply with its obligations hereunder within [*]
after such determination.
13.2 LICENSEE may terminate this License Agreement, in its entirety
or as to any Licensed Patent or Licensed Application, or as to any particular
Licensed Product, or as to any country, at any time by giving FOUNDATION at
least [*] prior written notice.
13.3 (a) Termination of this Restated Agreement for any reason
shall not release any party hereto from any liability which, at the time of such
termination, has already accrued to the other party or which is attributable to
a period prior to such termination nor preclude either party from pursuing all
rights and remedies it may have hereunder or at law or in equity with respect to
any breach of this Restated Agreement.
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THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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(b) Upon termination of this Restated Agreement for any
reason, each party shall promptly return to the other party all Confidential
Information received from the other party (except one copy of which may be
retained for archival purposes).
(c) In the event this Restated Agreement is terminated for
any reason, LICENSEE and its sublicensees shall have the right to sell or
otherwise dispose of the stock of any Licensed Product subject to Articles VI
and VII hereof.
(d) Articles I, VIII, X, XIV, XV and XVI and Sections 12.2
and 13.3 shall survive the expiration and any termination of this Restated
Agreement. Except as otherwise provided in this Article XIII, all rights and
obligations of the parties under this Restated Agreement shall terminate upon
the expiration or termination of this Restated Agreement.
XIV
ARBITRATION AND JURISDICTION
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14.1 If a dispute arises out of or relates to this Restated
Agreement, or the breach thereof, and if said dispute cannot be settled through
negotiation, the parties agree first to try in good faith to settle the dispute
by mediation under the Commercial Mediation Rules of the American Arbitration
Association before resorting to arbitration.
14.2 Subject to Section 14.3, any dispute under this Restated
Agreement (except any dispute relating to the validity or enforceability of any
patent) which is not settled by mutual consent shall be finally settled by
binding arbitration. Any such arbitration proceeding shall be conducted in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association and shall be held in New York, New York, unless otherwise agreed by
the parties. The arbitration shall be conducted by an Arbitration Panel
comprising three neutral, independent arbitrators. One arbitrator shall be
appointed by FOUNDATION, one arbitrator shall be appointed by LICENSEE, and a
Chairman of the Arbitration Panel shall be appointed by the first two
arbitrators. The members of the Arbitration Panel shall have sufficient and
appropriate education and experience to competently address the matter submitted
to the Arbitration Panel for resolution. Judgment upon the arbitration award may
be entered in any court of competent jurisdiction. The costs of the arbitration
including administrative and arbitrators' fees, shall be shared equally by the
parties and each party shall bear its own costs and attorneys' and witness' fees
incurred in connection with the arbitration. No punitive damages may be granted
by the arbitrators. The arbitration proceedings and the decision shall not be
made public without the joint consent of the parties and each party shall
maintain the confidentiality of such proceedings and decision unless otherwise
permitted by the other party. The parties agree that the decision shall be the
sole, exclusive and binding remedy between them regarding any and all disputes,
controversies, claims and counterclaims presented to the arbitrators. Any award
may be entered in a court of competent jurisdiction for a judicial recognition
of the decision and an order of enforcement.
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14.3 The FOUNDATION reserves the right and power to proceed with
direct judicial remedies against LICENSEE without conciliation, mediation or
arbitration for breach of the royalty payment and sales reporting provisions of
this Restated Agreement after giving written notice of such breach to LICENSEE
followed by an opportunity period of [*] in which to cure such breach. In
collecting overdue royalty payments and securing compliance with reporting
obligations, FOUNDATION may use all judicial remedies available.
XV
CONFIDENTIALITY
15.1 Except as expressly provided herein or as required by law, the
parties agree that, for the term of this Restated Agreement and for [*]
thereafter, the receiving party shall keep completely confidential and shall not
publish or otherwise disclose and shall not use for any purpose except for the
purposes contemplated by this Restated Agreement any Confidential Information
furnished to it by the disclosing party hereto pursuant to this Restated
Agreement, except that to the extent that it can be established by the receiving
party by competent proof that such Confidential Information:
15.1.1 was already known to the receiving party, other
than under an obligation of confidentiality, at the time of disclosure;
15.1.2 was generally available to the public or
otherwise part of the public domain at the time of its disclosure to the
receiving party;
15.1.3 became generally available to the public or
otherwise part of the public domain after its disclosure and other than through
any act or omission of the receiving party in breach of this Restated Agreement;
15.1.4 was independently developed by the receiving
party as demonstrated by documented evidence prepared contemporaneously with
such independent development; or
15.1.5 was subsequently lawfully disclosed to the
receiving party by a person other than a party hereto.
15.2 Each party hereto may use or disclose information disclosed to
it by the other party to the extent such use or disclosure is reasonably
necessary in filing or prosecuting patent applications, prosecuting or defending
litigation, complying with applicable governmental regulations or otherwise
submitting information to tax or other governmental authorities, conducting
clinical trials, or making a permitted sublicense or otherwise exercising its
rights hereunder, provided that if a party is required to make any such
disclosure of another party's confidential information, other than pursuant to a
confidentiality agreement, it will give reasonable advance notice to the latter
party of such disclosure and, save to the extent inappropriate in the case of
patent applications, will use its best efforts to
[*] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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secure confidential treatment of such information prior to its disclosure
(whether through protective orders or otherwise).
15.3 Except as expressly provided herein, each party agrees not to
disclose any terms of this Restated Agreement to any third party without the
consent of the other party; provided, reasonable disclosures may be made as
required by securities or other applicable laws or other federal or national
agency requirements, or to actual or prospective investors or corporate
partners, or to a party's accountants, attorneys and other professional
advisors. Once a disclosure has been approved, LICENSEE may make disclosures
which do not materially differ therefrom without obtaining approvals from
FOUNDATION.
XVI
OTHER
-----
16.1 LICENSEE acknowledges that title to all Biological Research
Materials remains in FOUNDATION and that LICENSEE's possession of Biological
Research Materials under this Agreement is by way of bailment and not
conditional or unconditional sale. Upon termination for cause by FOUNDATION or
termination by LICENSEE under Article XIII, LICENSEE agrees to destroy or return
all Biological Research Materials to FOUNDATION and FOUNDATION shall destroy or
return to LICENSEE all "Sponsor Materials" (as defined in the Sponsored Research
Agreements) and any other materials provided by LICENSEE and its sublicensees
unless provided otherwise in any prevailing biological materials agreements
between the parties. At the natural termination of this Agreement (Article
VIII), LICENSEE shall have the right to continue to possess and use the
Biological Research Materials for any and all purposes without additional
payment.
16.2 LICENSEE agrees that it will not use the indicia or names of
FOUNDATION or any of its personnel in advertising, promotion, or labeling of
Licensed Products without prior written approval of the FOUNDATION, which
approval shall not be unreasonably withheld.
16.3 FOUNDATION represents and warrants that (i) FOUNDATION is and
shall remain the exclusive owner of the entire right, title, and interest in and
to Licensed Patents and Licensed Applications (and co-owner with LICENSEE of all
right, title and interest in and to the Joint Inventions and related Licensed
Patents and Licensed Applications) and Sponsored Research Intellectual Property
Rights; (ii) FOUNDATION has the sole right and authority to enter into this
Restated Agreement and grant the rights and licenses hereunder; (iii) FOUNDATION
has not previously granted and will not grant any rights in the Licensed
Patents, Licensed Applications and Sponsored Research Intellectual Property
Rights that are inconsistent with the rights and licenses granted to LICENSEE
herein; (iv) there are no pending or threatened actions, suits, investigations,
claims or proceedings in any way related to the Licensed Patents, Licensed
Applications and Sponsored Research Intellectual Property Rights; (v) the
Licensed Patents, Licensed Applications and Sponsored Research Intellectual
Property Rights are free and clear of any lien, encumbrance, security interest
and restriction on transfer and license; and (vi) FOUNDATION has and shall
comply fully with 35 U.S.C. (S)(S)200 et seq. and all implementing regulations
------
necessary to perfect its ownership
-16-
interest in the Licensed Patents, Licensed Applications and Sponsored Research
Intellectual Property Rights.
16.4 EXCEPT AS PROVIDED IN SECTION 16.3 AND THE WHEREAS CLAUSES,
NEITHER PARTY MAKES ANY REPRESENTATIONS OR WARRANTIES (EXPRESS, IMPLIED,
STATUTORY OR OTHERWISE) WITH RESPECT TO THE SUBJECT MATTER HEREOF, AND
FOUNDATION MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE.
16.5 FOUNDATION by this Restated Agreement makes no representation
as to the patentability and/or breadth of the inventions and/or discoveries
involved in the Licensed Patents, Licensed Applications and Sponsored Research
Intellectual Property Rights.
16.6 LICENSEE agrees to defend, indemnify and hold FOUNDATION
harmless from and against all liability, damages, expenses or losses for death,
personal injury, illness or property damage (including reasonable attorney's
fees) resulting from a claim, suit or proceeding brought by a third party
against FOUNDATION and arising (a) out of use by LICENSEE or its sublicensees of
inventions licensed or information furnished under this Restated Agreement, or
(b) out of any use, sale or other disposition by LICENSEE or its sublicensees of
Licensed Products made by use of such inventions or information; provided that
any indemnitee that intends to claim indemnification under this Article XVI
shall: (i) promptly notify LICENSEE in writing of any claim with respect to
which the indemnitee intends to claim such indemnification, (ii) give LICENSEE
sole control of the defense and settlement thereof, and (iii) provide LICENSEE,
at LICENSEE's expense, with reasonable assistance and full information with
respect to such claim. LICENSEE shall have no obligation for any claim if the
indemnitee seeking indemnification makes any admission, settlement, or other
communication regarding such claim without the prior consent of LICENSEE, which
consent will not be unreasonably withheld. As used in this clause, FOUNDATION
includes its trustees, officers, agents and employees, and those of Cornell
University (including CUMC) and affiliated hospitals, clinics, or other
institutions affiliated with CUMC, and "LICENSEE" includes its Affiliates,
contractors and sub-contractors. In discharge of the above, LICENSEE will
maintain general liability insurance in the amount of at least [*] per
occurrence with a deductible of more than [*] per occurrence against damage to
or destruction of property and injury to or death of individuals and against
such other risks as FOUNDATION may reasonably request arising out of or in
connection with any of the Licensed Products, FOUNDATION, LICENSEE and their
respective officers, trustees, members of their governing boards, and employees
will be named insureds under all such insurance. Such insurance will also
provide that FOUNDATION will be given notice of any material modification
thereof which would reduce insurance coverage of LICENSEE, and at least thirty
(30) days prior written notice of cancellation or termination and reason
therefore. LICENSEE will furnish FOUNDATION upon request, and in any event on
execution of this Restated Agreement and on each anniversary of the Effective
Date of this Restated Agreement, written confirmation issued by the insurer or
an independent insurance agent confirming that insurance is maintained in
accordance with the above requirements.
[*] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
-17-
16.7 This Restated Agreement shall be interpreted under the Laws of
the State of New York.
16.8 Any payment, report, notice or other communication required or
permitted to be given to either party hereto shall be deemed to have been
properly given and to be effective on the date of delivery if delivered in
person or telecopied (with confirmed answerback) to the number provided by the
other party, or five (5) days after mailing in the United States by certified
first-class United States mail, postage paid, return receipt requested, to the
other party's address as set forth below or to such other address as a party
shall designate by written notice to the other party.
To FOUNDATION: H. Xxxxxx Xxxxxxxxx, President
CORNELL RESEARCH FOUNDATION, INC.
Cornell Business & Technology Park
00 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxx, Xxx Xxxx 00000
To LICENSEE: GENVEC, INC.
00000 Xxxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attn: President
with a copy to: Vice President, Corporate Development
16.9 LICENSEE's sole obligation to exploit the Licensed Patents,
Licensed Applications and Sponsored Research Intellectual Property Rights is as
set forth in Article IX. Nothing in this Restated Agreement will impair
LICENSEE's right to independently acquire, license, develop for itself, or have
others develop for it, similar technology performing similar functions as the
Licensed Technology or to market and distribute products based on such other
technology.
16.10 The relationship of FOUNDATION and LICENSEE established by
this Restated Agreement is that of independent contractors. Nothing in this
Restated Agreement shall be construed to create any other relationship between
FOUNDATION and LICENSEE. Neither party shall have any right, power or authority
to assume, create or incur any expense, liability or obligation, express or
implied, on behalf of the other.
16.11 Any delays in or failures of performance by either party
under this Restated Agreement shall not be considered a breach of this Restated
Agreement if and to the extent caused by occurrences beyond the reasonable
control of the party affected, including but not limited to: acts of God, acts,
regulations or laws of any government, strikes or other concerted acts of
workers, fires, earthquakes, floods, explosions, riots, wars, rebellion, and
sabotage. Any time period for performance imposed hereunder shall be extended by
the actual time of delay caused by any such occurrence.
16.12 A waiver, express or implied, by either FOUNDATION or
LICENSEE of any right under this Restated Agreement or of any failure to perform
or breach hereof by the other party hereto
-18-
shall not constitute or be deemed to be a waiver of any other right hereunder or
of any other failure to perform or breach hereof by such other party, whether of
a similar or dissimilar nature thereto.
16.13 SUBJECT TO SECTION 16.6, NEITHER PARTY SHALL BE LIABLE TO THE
OTHER PARTY OR ANY THIRD PARTY FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR
EXEMPLARY DAMAGES (INCLUDING LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO
THE SAME), ARISING FROM ANY CLAIM RELATING TO THIS RESTATED AGREEMENT, WHETHER
SUCH CLAIM IS BASED ON CONTRACT, TORT OR ANY THEORY OF LIABILITY.
16.14 Headings included herein are for convenience only, do not
form a part of this Restated Agreement and shall not be used in any way to
construe or interpret this Restated Agreement.
16.15 If any provision of this Restated Agreement shall be found by
a court to be void, invalid or unenforceable, the same shall be reformed to
comply with applicable law, or stricken if not so conformable, so as not to
affect the validity or enforceability of the remainder of this Restated
Agreement.
16.16 This Restated Agreement shall be binding upon and inure to
the benefit of and be enforceable by the parties hereto and their respective
successors and permitted assigns.
16.17 At any time or from time to time on and after the date of
this Restated Agreement, either party shall at the request of the other party
(i) deliver to the other party such records, data or other documents consistent
with the provisions of this Restated Agreement, (ii) execute, and deliver or
cause to be delivered, all such consents, documents or further instruments of
transfer or license, and (iii) take or cause to be taken all such actions, as
the other party may reasonably deem necessary or desirable in order for the
other party to obtain the full benefits of this Restated Agreement and the
transactions contemplated hereby.
16.18 LICENSEE and LICENSOR have each consulted counsel of their
choice regarding this Restated Agreement, and each acknowledges and agrees that
this Restated Agreement shall not be deemed to have been drafted by one Party or
another and will be construed accordingly.
16.19 This Restated Agreement, together with the Sponsored Research
Agreements and Material Transfer Agreement, constitute the entire understanding
and agreement between the parties with respect to the subject matter hereof and
supersedes any and all prior negotiations, representations, agreements, and
understandings, written or oral, that the parties may have reached with respect
to the subject matter hereof. No agreements altering or supplementing the terms
hereof may be made except by means of a written document signed by the duly
authorized representatives of each of the parties hereto. It is understood that
the Sponsored Research Agreements and Material Transfer Agreement are separate
and independent from this Restated Agreement and termination of any of such
agreements shall not operate to terminate or otherwise affect the rights and
obligations of the parties under the other agreements.
-19-
16.20 This Restated Agreement may be executed in counterparts, each
of which shall be deemed an original, but both of which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this instrument to be executed
in duplicate as of the day and year first above written.
ATTEST: CORNELL RESEARCH FOUNDATION, INC.
By
-------------------------- -----------------------------------
H. Xxxxxx Xxxxxxxxx
Title President
---------------------------------
Date
----------------------------------
ATTEST: GENVEC, INC.
By
-------------------------- -----------------------------------
Title
---------------------------------
Date
----------------------------------
[*]
[*] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
-20-
