Confidential Treatment Requested. Confidential portions of this document have been redacted and separately filed with the Commission. ***** Confidential material redacted and filed separately with the Commission. AGREEMENT
Confidential
Treatment Requested. Confidential portions of this document have been redacted
and separately filed with the Commission.
*****
Confidential material redacted and filed separately with the
Commission.
This
Agreement (“Agreement”) is entered into as of September 12, 2003, (the
“Effective Date”) by and among XTL Biopharmaceuticals Ltd., a corporation
organized under the laws of Israel (“XTL”), Applied Immunogenetics LLC (“AI”), a
Delaware limited liability company, ***** and *****.
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A.
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XTL
and The Board of Trustees of the Xxxxxx Xxxxxxxx Junior University
(“Stanford”) are parties to that certain Agreement effective as of *****
(the “XTL Nonexclusive License Agreement”), pursuant to which Stanford
granted a nonexclusive license to XTL with respect to certain HCV
monoclonal antibodies (the “Licensed
Antibodies”).
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B.
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AI
and Stanford are parties to that certain License Agreement effective
as of
***** (the “AI License Agreement”), pursuant to which Stanford granted an
exclusive license, subject to XTL’s rights under the XTL Nonexclusive
License Agreement, to the Licensed Antibodies as well as other
related
inventions.
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C.
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D.
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AI
and Stanford have agreed to enter into an amended and restated
AI License
Agreement (the “Amended and Restated AI License Agreement”), pursuant to
which AI is granting back to Stanford its rights to the Licensed
Antibodies in the field of human therapeutics in all territories
of the
world with the exception of the Peoples Republic of China, as more
fully
set forth therein.
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X.
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Xxxxxxxx
and XTL have agreed to terminate the XTL Nonexclusive License Agreement
and enter into an exclusive license agreement (the “XTL Exclusive License
Agreement”), pursuant to which Stanford is granting to XTL an exclusive
license to the Licensed Antibodies in the human therapeutic field
of use
for all territories of the world with the exception of the Peoples
Republic of China, as more fully set forth
therein.
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F.
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XTL
and ***** have agreed to terminate the Original ***** Consulting
Agreement
and are entering into a new consulting agreement (the “New *****
Consulting Agreement”), pursuant to which ***** will provide certain
consulting services to XTL.
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G.
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XTL
and ***** are entering into a consulting agreement (the “***** Consulting
Agreement”), pursuant to which ***** will provide certain consulting
services to XTL.
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*****
Confidential material redacted and filed separately with the
Commission.
NOW,
THEREFORE, in consideration for the terms and conditions set forth herein,
the
Parties agree as follows:
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1.
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OTHER
AGREEMENTS
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As
of the
Effective Date, the parties hereto will enter into the following
agreements:
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a.
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AI
shall execute the Amended and Restated AI License
Agreement.
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b.
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XTL
shall execute the Exclusive XTL License
Agreement.
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c.
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XTL
and ***** shall execute the New ***** Consulting
Agreement.
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d.
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XTL
and ***** shall execute the ***** Consulting
Agreement.
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2.
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INITIAL
PAYMENT BY XTL
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In
partial consideration for AI’s agreeing to transfer the license rights back to
Stanford pursuant to the Amended and Restated AI License Agreement thereby
enabling those rights to be licensed to XTL, XTL will pay to AI ***** within
***** of the Effective Date.
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3.
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ADDITIONAL
PAYMENTS BY XTL
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As
further consideration for AI’s agreeing to transfer the license rights back to
Stanford pursuant to the Amended and Restated AI License Agreement thereby
enabling those rights to be licensed to XTL, XTL will make additional payments
to AI as set forth in this Section 3 for so long as XTL is required to make
earned royalty payments to Stanford under the Exclusive XTL License Agreement,
as it may be amended.
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a.
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For
purposes of this Agreement, the terms “Licensed Field of Use,”“Licensed
Patents,”“Licensed Products,”“Net Sales” and “Valid Claim” shall have
the meanings given those terms in the Exclusive XTL License
Agreement.
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b.
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XTL
shall make periodic payments to AI equal to *****
of
Net Sales *****.
For
any period in which a Licensed Product is not the subject of a
Valid Claim
in a country, the payments shall be equal to *****
of
Net Sales in such country for that period *****.
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c.
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Notwithstanding
Section 3(b), if a Licensed Product is part of a
combination product, as described in the Exclusive XTL License
Agreement,
then the payments due to AI shall be calculated as follows:
*****.
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2
*****
Confidential material redacted and filed separately with the
Commission.
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d.
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Notwithstanding
Sections 3(b) and (c), the periodic payment rates therein shall
be reduced
by ***** with respect to any Licensed Product for which XTL’s license
rights under the XTL Exclusive License Agreement have become nonexclusive
pursuant to Article 5 thereunder.
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e.
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Payments
calculated on the basis of Net Sales made in currencies other than
U.S.
Dollars shall be calculated using the appropriate foreign exchange
rate
for such currency quoted by the Bank of America (San Francisco)
foreign
exchange desk, on the close of business on the last banking day
of each
*****.
All payments to AI shall be in U.S. Dollars.
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f.
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Beginning
with the first sale of a Licensed Product, XTL shall make any payments
due
to AI under this Section 3 *****
after the end of each *****
for Net Sales during such *****.
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g.
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XTL
agrees to keep and maintain records for a period of *****
showing cash receipts and expenses and any related information
in
sufficient detail to enable the payments due to AI hereunder to
be
determined. XTL further agrees to permit these books and records
to be
examined by from time to time (but not more than *****
per *****)
to the extent necessary to verify the payments
made to AI. Such examination is to be made by an independent certified
accountant reasonably acceptable to XTL, at the expense of AI,
except in
the event that the results of the audit reveal an underreporting
of
payments due AI of *****
or
more, then the audit costs shall be paid by
XTL.
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4.
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PATENT
PROSECUTION
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a.
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Within
***** after receipt of XTL’s invoice, AI shall reimburse XTL for payments
made by XTL to reimburse Stanford pursuant to the XTL Exclusive
License
Agreement for costs incurred by Stanford in connection with the
preparation, filing and prosecution of Licensed Patents covering
the
Licensed Antibodies identified on Schedule 2.2 of the XTL Exclusive
License Agreement as ***** in the Peoples Republic of
China.
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b.
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Within
***** after receipt of XTL’s invoice, AI shall reimburse XTL for ***** of
XTL’s costs and expenses incurred in connection with the preparation,
filing and prosecution of Licensed Patents covering the Licensed
Antibodies identified on Schedule 2.2 of the XTL Exclusive License
Agreement as ***** in the Peoples Republic of China. XTL shall
keep AI
fully informed as to the status of such patent matters, including,
without
limitation, by providing AI with the opportunity to review and
comment on
any documents to be filed in the Peoples Republic of China in connection
therewith and by providing AI with copies of any documents received
by XTL
from the Peoples Republic of China, including notices of all
interferences, reexaminations, oppositions or requests for patent
term
extensions. AI shall cooperate with and assist XTL in connection
with such
activities at XTL’s request. In the event that XTL declines or fails to
prepare, file, prosecute or maintain any Licensed Patents covering
the
***** in the Peoples Republic of China, including patent applications,
which, if filed, would be included in the Licensed Patents, XTL
shall
promptly, and in no event later than ***** prior to any filing
deadline,
provide written notice to AI. Subject to any rights of Stanford,
AI shall
have the right to assume such responsibilities at its own expense
using
counsel of its choice.
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3
*****
Confidential material redacted and filed separately with the
Commission.
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5.
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REPRESENTATIONS
AND WARRANTIES
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a.
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Each
of XTL and AI hereby represents and warrants that it is duly authorized
to
enter into this Agreement and the other Agreements attached hereto
to
which it is a party and to perform its respective obligations hereunder
and thereunder.
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b.
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Each
of the parties hereby represents and warrants that this Agreement
does not
and will not conflict with any other right or obligation provided
under
any other agreement or obligation that it or he has with any third
party.
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c.
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AI
hereby represents and warrants that it has not executed and shall
not
execute any agreements, has not granted and shall not grant any
rights and
has not taken and shall not take any actions in conflict with the
terms
and provisions of this Agreement or the Amended and Restated AI
License
Agreement or with the rights and licenses previously held by AI
that were
granted back to Stanford pursuant to the Amended and Restated AI
License
Agreement and granted to XTL pursuant to the XTL Exclusive License
Agreement.
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6.
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TERM
AND TERMINATION
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The
term
of this Agreement shall begin on the Effective Date and, unless sooner
terminated as provided herein, shall expire upon the expiration or termination
of the Exclusive XTL License Agreement. XTL may terminate this Agreement
if AI
materially breaches this Agreement upon ***** advance written notice and
such
breach is not cured within the notice period. Upon expiration or termination
of
this Agreement, Sections 4, 8 and 11 shall survive and remain in full force
and
effect.
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7.
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LICENSED
PATENT INFRINGEMENT BY THIRD
PARTIES
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XTL
and
AI shall each promptly notify the other of any suspected infringement of
any
Licensed Patents by a third party. Subject to Stanford’s rights under the
Amended and Restated AI License Agreement and the Exclusive XTL License
Agreement, XTL shall have the first right, but not the obligation, to institute
an action for infringement of the Licensed Patents against any third party.
In
the event that XTL fails to institute an infringement suit or take other
reasonable action in response to the infringement within *****, subject to
Stanford’s rights under the Amended and Restated AI License Agreement and the
Exclusive XTL License Agreement, AI shall have the right, upon ***** notice
to
XTL, to institute such suit or take other appropriate action. Regardless
of
which party brings the action, the other party hereby agrees to cooperate
reasonably in any such effort, including if required to bring a legal action,
furnishing a power of attorney and shall have the right to participate in
such
action at its own expense with its own counsel. Any recovery obtained by
settlement or otherwise shall be allocated between XTL and AI in proportion
to
their respective expenses paid in connection with the action.
4
*****
Confidential material redacted and filed separately with the
Commission.
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8.
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ARBITRATION
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a.
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Any
controversy arising under or related to this Agreement, and any
disputed
claim by either party against the other under this Agreement, shall
be
settled by arbitration in accordance with the Licensing Agreement
Arbitration Rules of the American Arbitration Association.
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b.
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Upon
request by either party, arbitration will be by a third party arbitrator
mutually agreed upon in writing by AI and XTL within *****
of
such arbitration request. Judgment
upon the award rendered by the arbitrator shall be final and nonappealable
and may be entered in any court having jurisdiction
thereof.
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c.
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The
parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court.
The
arbitrator may limit the scope, time and/or issues involved in
discovery.
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d.
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Any
arbitration shall be held in San Francisco, California, unless
the parties
hereto mutually agree in writing to another
place.
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9.
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NOTICES
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All
notices under this Agreement shall be deemed to have been fully
given when
done in writing and hand-delivered or sent by registered mail,
postage
prepaid and return-receipt requested, or by express international
courier,
and addressed as follows:
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5
*****
Confidential material redacted and filed separately with the
Commission.
|
To
AI,
***** or *****:
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*****
Xxxxxxxx,
Xxxxxxxxxx 00000
Attention:
*****
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| To XTL: |
Xxxxxx
Xxxxxxxx, X.X. Xxx 000
Xxxxxxx,
00000
Xxxxxx
Attention: President
and CEO
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| With a copy to: | Xxxxxx Xxxxxx White & XxXxxxxxx LLP
0000
Xx Xxxxx Xxxxxxx Xxxxx
Xxx
Xxxxx, Xxxxxxxxxx 00000
XXX
Attention:
*****
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A
party
may change its address upon written notice to the other parties.
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10.
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WAIVER
|
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None
of the terms of this Agreement can be waived except by the written
consent
of the party waiving compliance.
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11.
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APPLICABLE
LAW
|
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This
Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly
within
California,
without regard to principles of conflicts of laws.
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12.
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MODIFICATIONS
|
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No
amendment or modification of this Agreement is valid or binding
on the
parties
unless made in writing and signed by XTL and
AI.
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13.
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SEVERABILITY
|
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In
case any of the provisions contained in this Agreement are held
to be
invalid, illegal
or
unenforceable in any respect, that invalidity, illegality or
unenforceability will not affect any other provisions of this Agreement,
and this Agreement will be construed as if the invalid, illegal,
or
unenforceable provisions had never been contained in
it.
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14.
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FORCE
MAJEURE
|
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No
party shall be responsible for delay or failure in performance
caused by
any government act, law, regulation, order or decree, by communication
line or power failures beyond its control, or by fire, flood or
other
natural disasters or by other
causes beyond its reasonable control, nor shall any such delay
or failure
be considered to be a breach of this Agreement; provided that the
delayed
party gives the other parties affected prompt written notice thereof
and
uses its commercially reasonable efforts to resume
performance.
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6
*****
Confidential material redacted and filed separately with the
Commission.
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15.
|
RELATIONSHIP
BETWEEN THE PARTIES
|
None
of
the provisions of this Agreement are intended to create any form of association,
partnership or joint venture among the parties, rights in third parties or
rights that are enforceable by any third party. No party will have the power
to
bind the other parties or incur obligations on another party's behalf without
such other party's prior written consent.
7
*****
Confidential material redacted and filed separately with the
Commission.
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by themselves or their duly authorized officers or
representatives.
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By:____________________________
Name:__________________________
Date:___________________________
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Applied
Immunogenetics LLC
By:____________________________
Name:__________________________
Date:___________________________
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|
*****
_______________________________
Date:___________________________
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*****
_______________________________
Date:___________________________
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