Collaboration And License Agreement
EXHIBIT 10.3
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CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “***”. A COMPLETE
VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE
EXCHANGE ACT OF 1934.
This Collaboration and License Agreement (this “Agreement”) is entered into on
February 29, 2008 (the “Effective Date”) by and between Buck Institute for Age Research, a
California non-profit public benefit corporation having a principal place of business at 0000
Xxxxxxx Xxxxxxxxx, Xxxxxx, XX 00000 (“Institute”), and Neurobiological Technologies, Inc.,
a Delaware corporation having a principal place of business at 0000 Xxxxxx Xxxxxx, Xxxxx 000,
Xxxxxxxxxx, Xxxxxxxxxx 00000 (“NTI”). Institute and NTI are sometimes referred to herein
individually as a “Party” and collectively as the “Parties.”
Whereas, NTI is a biotechnology company engaged in the business of in-licensing and
developing central nervous system-related drug candidates;
Whereas, Institute is a non-profit research institute focused on aging and
age-related disease;
Whereas, Institute possesses certain patent rights related to the Netrin-1 protein
described in Exhibit A (“Netrin”) and the potential use of Netrin, which patent rights are jointly
owned by Institute and the Centre National de la Recherche Scientifique (“CNRS”);
Whereas, pursuant to the terms of an Interinstitutional Agreement between CNRS and
the Institute effective April 14, 2006 (the “CNRS Agreement”), CNRS has vested Institute with the
exclusive responsibility for licensing both CNRS’ and Institute’s rights under the patent rights
jointly owned by CNRS and Institute, and has consented to the grant of the license to NTI under
such patent rights hereunder;
Whereas, NTI desires to fund, and Institute agrees to collaborate with NTI to
perform, research related to Netrin in order to discover and develop pharmaceutical products that
incorporate or are based on Netrin to treat certain diseases in humans; and
Whereas, in the event that Institute and NTI, at their sole discretion, agree to have
the CNRS Laboratory “Apoptose, cancer et développement — UMR 5238” (the “CNRS Laboratory”)
participate in the collaboration and, as a result of the collaboration, personnel in the CNRS
Laboratory conceive, generate, discover or create identifiable know-how or a patentable invention
in the framework of the collaboration, CNRS shall not be considered as a Third Party. In such
event, an addendum shall be drafted between the Parties and CNRS to
memorialize the participation of CNRS in the collaboration, which addendum shall be consistent
with the principles established in the present Agreement.
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Whereas, NTI desires to obtain, and Institute and CNRS are willing to grant to NTI an
exclusive, worldwide license under their respective patent rights relating to Netrin, and Institute
is willing to grant to NTI, an exclusive, worldwide license under its patent rights and technology
resulting from the performance of the research funded by NTI hereunder to develop and commercialize
pharmaceutical products that incorporate or are based on Netrin on the terms and conditions
provided in this Agreement.
Now, Therefore, in consideration of the foregoing and the covenants and promises
contained in this Agreement, the Parties hereby agree as follows:
1. Definitions.
As used herein, the following terms shall have the following meanings:
1.1 “Affiliate” means any entity that, directly or indirectly, through one or more
intermediates, is controlled by, controls, or is under common control with NTI or Institute, as the
case may be, as of or after the Effective Date. For purposes of this definition only, the term
“control” means the possession of the power to direct or cause the direction of the management and
policies of an entity, whether by ownership of voting stock or partnership interest, by contract or
otherwise, including direct or indirect ownership of more than fifty percent (50%) of the voting
interest in the entity in question; provided, however, that if local law requires a minimum
percentage of local ownership, control will be established by direct or indirect beneficial
ownership of one hundred percent (100%) of the maximum ownership percentage that may, under such
local law, be owned by foreign interests.
1.2 “Claims” has the meaning set forth in Section 9.1.
1.3 “Clinical Candidate” shall mean a Product candidate for which NTI has initiated the
preparation of an IND.
1.4 “Commercially Reasonable Efforts” means, as applied to a Party, those efforts and
diligence (including with respect to the allocation of resources and personnel) consistent with the
reasonable efforts and diligence that would be typically exerted by a biotechnology or
pharmaceutical company in a similar circumstance in pursuing the research, development, and
commercialization of products of similar nature and comparable market potential. With respect to
NTI, NTI shall be deemed to be using Commercially Reasonable Efforts as long as it is expending not
less than $* * * per year on Product development during the period from the end of the
Research Program Term until the initiation of the first Phase II Clinical Trial of a Product and
thereafter not less than $* * * per year on Product development until the completion of the first
Phase III Clinical Trial of a Product.
| * * * | Confidential Information, indicated by [***], has
been omitted from this filing and filed separately with the Securities and
Exchange Commission. |
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1.5 “Control” or “Controlled” means the ability and the right of a Party to grant a license or
sublicense as provided for herein to the other Party without either (a) creating an obligation of
such Party to make any payments to any Third Party in consideration therefor, or (b) violating the
terms of any agreement or other arrangement with any Third Party.
1.6 “Damages” means any and all costs, losses, claims, liabilities, fines, penalties, damages
and expenses, court costs, and reasonable fees and disbursements of counsel, consultants, and
expert witnesses incurred by a Party hereto (including any interest payments which may be imposed
in connection therewith).
1.7 “FDA” means the United States Food and Drug Administration or any successor thereto having
the administrative authority to regulate the investigation, development, and marketing of human
pharmaceutical products in the United States.
1.8 “First Commercial Sale” means, with respect to a Product, the first sale of such Product
by NTI or its Sublicensees to a Third Party following receipt of Marketing Authorization in the
country or territory of sale; provided, however, that Product shipped by NTI or its Sublicensees to
a Third Party prior to receipt of Marketing Authorization therefor in a particular country or
territory where such Product is intended for sale shall be deemed for the purposes hereof a First
Commercial Sale to the extent such Product is sold to a Third Party for sale in that country or
territory after such Marketing Authorization is obtained.
1.9 “FTE” means the full-time equivalent effort, based on an employee working one thousand
eight hundred eighty (1,880) hours per year, of one employee who participates directly in the
research and development activities contemplated under this Agreement and who has appropriate
scientific or technical expertise given his/her responsibilities under the Research Plan.
1.10 “Good Laboratory Practices” or “GLP” means the regulations set forth in 21 C.F.R. Part 58
and the requirements thereunder imposed by the FDA, and the equivalent thereof in jurisdictions
outside the United States.
1.11 “IND” means an investigational new drug application and associated documents required to
be filed with the FDA or a comparable government agency outside of the United States to obtain
approval to commence human clinical trials of a Product.
1.12 “Information” means any data, results, and information of any type whatsoever, in any
tangible or intangible form, including, without limitation, know-how, trade secrets, practices,
techniques, methods, processes, inventions (patentable or otherwise), developments, specifications,
formulations, formulae, materials or compositions of matter of any type or kind, technology, test
data including pharmacological, biological, chemical, biochemical, toxicological, preclinical and
clinical test data, analytical and quality control data, stability data, studies, and procedures.
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1.13 “Institute Patent Rights” means (a) U.S. provisional patent application serial number
60/792,369, and any U.S. non-provisional patent application claiming the benefit of or priority to
U.S. provisional patent application serial number 60/792,369, including all continuations and
divisions thereof; (b) International patent application serial number
PCT/US2007/009394 and Taiwanese patent application number 096113221 and any U.S.
non-provisional patent application claiming the benefit of or priority to PCT/US2007/009394
including any continuations and divisionals thereof; (c) continuations-in-part applications filed
at any time during the term of the Agreement, to the extent they claim subject matter specifically
described in, the patent applications in (a) and (b); (d) U.S. patents issuing from any of the
patent applications set forth in (a), (b) and (c), including, without limitation, all extensions,
registrations, confirmations, reissues, substitutions, revalidations, reexaminations, renewals, or
any like filings thereof; and (e) all counterparts to any of the foregoing patents and patent
applications set forth in (a), (b), (c) and (d) filed in or issued by any country or jurisdiction
other than the United States.
1.14 “Joint Program Inventions” has the meaning set forth in Section 6.1.
1.15 “Joint Research Committee” or “JRC” has the meaning set forth in Section 2.1(a).
1.16 “Marketing Authorization” means the requisite governmental approval for the marketing and
sale of a Product in a given country or territory.
1.17 “NDA” means a New Drug Application filed with the FDA or any equivalent filed with the
regulatory authorities in any country or territory other than the United States to obtain approval
for the marketing and sale of a Product in such country or territory, but excluding any pricing or
reimbursement approvals.
1.18 “Net Sales” means the amount received by NTI or Sublicensees for the sale of Products,
less the following: (a) customary trade and quantity discounts actually allowed and taken; (b)
allowances actually given for returned Product; (c) freight and insurance, if separately identified
on the invoice; and (e) value added tax, sales, use, or turnover taxes, excise taxes, and customs
duties included in the invoiced price. In addition, Net Sales by NTI or Sublicensees hereunder are
subject to the following:
(a) In the case of pharmacy incentive programs, hospital performance incentive program charge
backs, disease management programs, similar programs, or discounts on “bundles” of products, all
discounts and the like shall be allocated among products on the basis on which such discounts and
the like were accrued, or if such basis cannot be determined, proportionately to the list prices of
such products;
(b) In the case of any sale or other disposal of Product by NTI or Sublicensees to an
affiliated party for resale, the Net Sales shall be calculated as above on the value charged or
invoiced on the first arm’s length sale to a Third Party; and
(c) If NTI or Sublicensees make a sale or other disposal of Product to a customer in a
particular country other than on normal commercial terms or as part of a package of products and
services, the Net Sales of that Product shall be deemed to be “the fair market value” of such
Product (i.e., the value that would have been derived had said Product been sold as a separate
product to a similar customer in the country concerned on normal commercial terms).
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1.19 “Netrin” has the meaning set forth in the Recitals.
1.20 “Patent” means (a) issued and unexpired U.S. patents including, without limitation, any
extension, registration, confirmation, reissue, substitution, revalidation, reexamination, renewal,
or any like filing thereof, (b) pending patent applications, including without limitation any
provisional, continuation, division, or continuation-in-part thereof, and (c) all counterparts to
any of the foregoing issued by or filed in any country or jurisdiction other than the United
States.
1.21 “Phase II Clinical Trial” means a human clinical trial conducted in any country that is
intended to initially evaluate the effectiveness of a pharmaceutical product for a particular
indication or indications in patients with the disease or indication under study, or that otherwise
satisfies the requirements of 21 CFR 312.21(b) or its foreign equivalent.
1.22 “Phase III Clinical Trial” means a pivotal human clinical trial conducted in any country
that satisfies the requirements of 21 CFR 312.21(c) or its foreign equivalent, which trial is
designed to (a) establish that a pharmaceutical product is safe and efficacious for its intended
use, (b) define warnings, precautions, and adverse reactions that are associated with the product
in the dosage range to be prescribed; and (c) support Marketing Authorization of such product.
1.23 “Principal Investigator” has the meaning set forth in Section 2.3.
1.24 “Product” means any pharmaceutical or biological formulation containing Netrin or a
fragment or derivative thereof, or a functional mimetic of Netrin, the manufacture, use,
importation, offer for sale, or sale of which would constitute a misappropriation and/or
infringement of Program Technology or Institute Patent Rights but for a license thereunder.
1.25 “Program Inventions” means Joint Program Inventions and Sole Program Inventions.
1.26 “Program Know-How” means Information, whether or not patentable, that is conceived,
generated, discovered, or created by one or both Parties or their Affiliates, or by any Third Party
working on behalf of one or both Parties or their Affiliates, at any time during the Research
Program Term as a direct result of the performance of the activities under the Research Program.
Program Know-How shall include Results and Program Inventions and shall exclude Program Patents.
1.27 “Program Patents” means all Patents owned or Controlled by either Party or both Parties
that are directed to, and claim an invention that is, Program Know-How. For clarity, Program
Patents only includes Patents owned or Controlled by either Party or both Parties after the
Effective Date, and does not include Patents owned or Controlled by a Party as of the Effective
Date.
1.28 “Program Technology” means the Program Know-How and Program Patents.
1.29 “Research Program” means the research and development program to be conducted by the
Parties in accordance with the Research Plan under this Agreement to discover, research and/or
develop Products for the prevention or treatment of disease in humans.
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1.30 “Research Program Term” has the meaning set forth in Section 2.6.
1.31 “Research Plan” means the plan for conducting the Research Program attached hereto as
Exhibit C, as it may be amended or updated from time to time in accordance with Section 2.5.
1.32 “Results” means any research, preclinical, clinical, development, or testing results,
data, and related Information generated, developed, created, or originated by or for Institute or
NTI in connection with the Research Plan or Research Program.
1.33 “Sole Program Inventions” has the meaning set forth in Section 6.1.
1.34 “Sublicensee” means any person or entity, including Affiliates, to which a Party or such
Party’s sublicensee grants a sublicense under the intellectual property rights licensed to such
Party under this Agreement (a) to perform any portion of such Party’s activities under the Research
Program in accordance with Section 2.11, (b) to research and/or develop a Product, or (c) to make,
have made, use, sell, offer for sale and/or import a Product (which, for the purposes hereof, will
include the right to distribute, market, or promote a Product).
1.35 “Third Party” means any person or entity other than NTI, Institute, or an Affiliate or
Sublicensee of either of them.
1.36 “Valid Claim” means either: (a) a claim of an issued and unexpired patent that has not
been (i) canceled with prejudice, (ii) been declared invalid by an irreversible and unappealable
decision of a court or other appropriate body of competent jurisdiction, (iii) admitted to be
invalid or unenforceable through disclaimer or otherwise, or (iv) abandoned; or (b) a claim of a
pending patent application filed and kept pending in good faith and that has not been (i) canceled
with prejudice, (ii) withdrawn from consideration without the ability to resubmit or refile, (iii)
finally determined to be unallowable by the applicable governmental authority (and from which no
appeal is or can be taken), or (iv) abandoned.
(a) Membership. Within ten (10) days after the Effective Date, the Parties shall form a joint
committee (the “Joint Research Committee” or “JRC”) that shall oversee and direct the collaborative
research activities being conducted by the Parties under the Research Program. Each Party shall
appoint three (3) representatives to be such Party’s members of the JRC. Each Party shall select a
co-chairperson of the JRC. A Party may change any of its appointments to the JRC at any time upon
giving written notice to the other Party.
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(b) Responsibilities. The JRC shall be responsible for the day-to-day management of the
Research Program. The JRC has the following duties: (1) preparing updates, amendments, and
revisions to the Research Plan; (2) overseeing and directing the conduct of the work under the
Research Plan; (3) prioritizing activities under the Research Program; (4) reviewing the budget
contained in the Research Plan, proposed expenditures, and actual expenditures in connection with
the Research Program; and (5) reviewing results from activities
conducted under the Research Program. The Parties may also mutually agree in writing that the
JRC shall have additional specified responsibilities. All decisions of the JRC shall be by
unanimous consent of its members. In the event that the JRC cannot reach a unanimous decision with
respect to a particular matter, such matter shall be referred to a senior executive of each Party
who shall promptly meet and endeavor to reach mutually acceptable resolution in a timely manner. In
the event that such persons cannot resolve the issue, NTI shall have the right to resolve the issue
in its reasonable discretion, except that such resolution shall not place any additional
obligations on Institute. For the avoidance of doubt, the JRC shall not have the authority to amend
or modify any term or condition of this Agreement or make any determinations regarding whether a
Party has breached this Agreement. For the avoidance of doubt, once NTI has selected a Clinical
Candidate, NTI shall be solely responsible for directing and overseeing further development.
2.2 JRC Meetings. The JRC shall meet, either in person or by videoconference, at least once
per calendar quarter during the Research Program Term, and shall have its final meeting three (3)
months after the expiration of the Research Program Term. At least every six (6) months, the
agenda of the JRC meeting shall include the review of any inventions arising from the Parties’
conduct of the Research Program. The Parties also may conduct informal exchange of information as
needed by electronic mail or videoconference to communicate regarding the Research Program.
Attendance and participation in JRC meetings shall be at the respective expense of the
participating Parties. The co-chairpersons of the JRC shall work together cooperatively to assure
that an agenda is prepared and circulated to the JRC members at least ten (10) days before each JRC
meeting, and shall assure that minutes are prepared for each JRC meeting and circulated to each
Party. The Parties will alternate responsibility for the preparation of minutes of each committee
meeting. The co-chairpersons will review and approve JRC minutes before they become effective. The
first meeting of the JRC shall occur not later than thirty (30) days after the Effective Date.
Each Party will use diligent efforts to cause all of its JRC representatives to attend all JRC
meetings. Each Party also may allow a reasonable number of its other employees to attend specific
JRC meetings as non-voting participants, if reasonably useful to the functioning of the JRC and the
Research Program.
2.3 Principal Investigators. Each Party shall appoint a principal investigator reasonably
acceptable to the other Party (each, a “Principal Investigator”) who shall serve as the primary
point of communication and coordination between the Parties with respect to the Research Program
and shall be responsible for such Party’s internal day-to-day activities under the Research
Program. Subject to the foregoing, each Party shall have the right to replace its Principal
Investigator from time to time with another individual reasonably acceptable to the other Party by
providing prior written notice to the other Party. The initial Principal Investigators are listed
on Exhibit B. During the Research Program Term, the Principal Investigators shall meet to discuss
the progress of the respective activities of each Party under the Research Program at least monthly
in person, by phone, or by video conference. Each meeting of the JRC shall be considered a meeting
of the Principal Investigators for purposes of the foregoing. Each Principal Investigator shall be
responsible for: (a) monitoring progress against the Research Plan; (b) receiving and submitting
requests for information, materials, and/or assistance between the Parties; (c) coordinating the
preparation of, and providing, all proposed updates or amendments to the Research Plan to the JRC;
and (d) performing such other activities as requested by the JRC.
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2.4 Undertaking and Scope of Research Program. Subject to the terms and conditions set forth
herein, the Parties agree to conduct the Research Program concerning the discovery, research, and
pre-clinical development of Products on a collaborative basis during the Research Program Term.
Each Party shall use diligent efforts to perform its responsibilities set forth in the Research
Plan, including by using diligent efforts to meet the schedule and budget set forth therein. Each
Party shall conduct all of its activities under the Research Plan in a good, scientific manner, and
in compliance in all material respects with the requirements of applicable laws, rules, and
regulations, including, where applicable, GLP, to attempt to achieve the objectives under the
Research Plan efficiently and expeditiously. Each Party shall ensure that all individuals
performing work by or on behalf of such Party shall be reasonably qualified.
2.5 Research Plan. The specific research and development activities to be performed by each
Party in connection with the Research Program, and the applicable timelines and budget (with
respect to Institute) for such activities, shall be defined in a detailed Research Plan. Each
Party agrees to conduct its activities under the Research Program in accordance with the Research
Plan, as such plan may be modified or updated by the JRC. The initial Research Plan for the first
year of the Research Program Term is attached hereto as Exhibit C. The JRC will review the
Research Plan for each year on at least a semiannual basis during the course of the year to
determine if any changes are necessary given the progress and results of the Research Program as of
such date. The JRC shall be responsible for reviewing and approving changes to the Research Plan.
If the Parties agree to extend the Research Program Term as contemplated in Section 2.6, the
Parties shall work collaboratively in an effort to propose to the JRC, no later than ninety (90)
days prior to the beginning of the extended Research Program Term, an updated Research Plan,
including an updated budget, covering the additional year of the Research Program Term.
Additionally, subject to the minimum funding requirements set forth in Section 5.1, each Party
shall have the right to request changes to the Research Plan at any time. In the event that a
Party desires a change to the Research Plan, it shall submit to the JRC a proposed Research Plan
for approval. The JRC shall promptly review each such proposal and approve it, reject it, and/or
propose modifications thereto. All updated and modified Research Plans shall become effective only
to the extent approved in writing by the JRC. If any change or update is not approved, then the
pre-existing Research Plan shall remain in effect. Notwithstanding the foregoing, any extension of
the Research Program Term in accordance with Section 2.6 shall remain contingent upon the approval
in writing by the JRC of an updated Research Plan and budget covering the additional one (1) year
extension period prior to the expiration of the then-current Research Program Term.
2.6 Research Program Term. The Research Program shall, unless earlier terminated as provided
in this Section 2.6, be conducted for an initial period of one (1) year commencing on the Effective
Date (such period, the “Research Program Term”). The Research Program Term may be extended twice,
each for an additional one (1) year period, only upon a written extension signed by authorized
representatives of each Party within at least one hundred twenty (120) days prior to the expiration
of the then-current Research Program Term; provided, however, that any such extension shall be
contingent upon the approval in writing by the JRC in accordance with Section 2.5 of an updated
Research Plan covering the additional one (1) year period prior to the expiration of the
then-current Research Program Term. NTI may terminate the Research Program upon sixty (60) days’
written notice at any time during the Research Program Term if either (a) NTI has selected a
Clinical Candidate and has generated
substantially all of the data necessary to support the filing of an IND for such Clinical
Candidate or (b) it reasonably determines that substantially all of the key objectives for the
Research Program as set forth in the Research Plan cannot be substantially met. In addition, the
JRC may terminate the Research Program at any time during the Research Program Term if it
unanimously determines the Research Program is no longer scientifically useful or that all
potential Products would not be commercially viable. In the event that either the Research Program
Term is terminated as permitted herein or the Research Program Term, as it may be extended, expires
prior to the three (3) year anniversary of the Effective Date and, in each case, a Clinical
Candidate does not exist at the time of such termination or expiration, this Agreement shall
automatically terminate.
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2.7 Personnel. The scientific priorities and direction for the Research Program will be
determined by the JRC. Unless otherwise agreed in writing by the Parties, Institute shall dedicate
four (4) FTEs to performing Institute’s responsibilities under the Research Plan during the
Research Program Term. NTI shall provide sufficient FTEs to conduct its obligations and activities
under the Research Program.
2.8 Research Materials. Except pursuant to the licenses expressly granted to a Party pursuant
to this Agreement, each Party shall use all materials and other Information provided by or on
behalf of the other Party solely as necessary to perform its responsibilities under the Research
Program. Without limiting the foregoing, each Party shall use all biological materials in a safe
manner and in compliance with applicable federal, state, and local laws and regulations, including
National Institutes of Health guidelines. Each Party acknowledges that the other Party cannot and
does not guarantee the safety, non-toxicity, fitness, or efficacy of any biological materials
provided by the other Party, and each Party accepts any and all risk resulting from its use of
biological materials provided to it by the other Party. All quantities of biological materials
including, without limitation, all Products provided by a Party to the other are experimental in
nature, are not for use in humans, AND ARE PROVIDED “AS IS” AND WITHOUT ANY REPRESENTATIONS OR
WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED.
2.9 Records. Each Party shall maintain complete and accurate records (including those records
required by law or regulation) of all work conducted by or on behalf of such Party under the
Research Program and all Information generated by or on behalf of such Party under the Research
Program. Such records shall be complete and accurate, and shall fully and properly reflect all
work done and results achieved in the performance of the Research Program in sufficient detail and
in good scientific manner appropriate for patent and regulatory purposes.
2.10 Reports. During the conduct of the Research Program, each Party shall report to the JRC
at each JRC meeting the results of its work under the Research Program. Each Party also will
prepare and submit to the other Party and the JRC an annual written progress report summarizing the
work performed by such Party under the Research Plan and the results thereof.
2.11 Use of Third Party Contractors. Each Party may contract its activities under the
Research Program to consultants and contractors, but only if and to the extent approved by the JRC
in writing. Each Party shall manage and coordinate the services of its approved consultants and
contractors and shall bear full responsibility for the performance or non-
performance of any duties delegated thereto, including without limitation compliance with the
confidentiality provisions of this Agreement.
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2.12 Disclaimer of Warranty. NEITHER PARTY PROVIDES ANY WARRANTY, EITHER EXPRESS OR IMPLIED,
REGARDING THE RESEARCH PLAN, THE PROGRAM TECHNOLOGY, OR ANY PRODUCT OR DELIVERABLE PROVIDED
PURSUANT TO THE RESEARCH PLAN, AND EACH PARTY HEREBY DISCLAIMS ALL EXPRESS AND IMPLIED WARRANTIES,
INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, AND NON-INFRINGEMENT.
3.1 Research License. Each Party hereby grants to the other Party a non-exclusive license to
practice the Patents and Information Controlled by such Party solely as necessary for such other
Party to perform its responsibilities under the Research Program in accordance with the Research
Plan during the Research Program Term. Without limiting any rights and licenses granted in any
other portion of this Agreement, it is understood and agreed that this Section 3.1 does not grant
to a Party any right or license under the other Party’s Patents and Information to: (a)
manufacture, distribute, sell, or otherwise provide any commercial products or services using or
based upon any such Patents or Information; or (b) perform any activities outside the Research Plan
or after the termination or expiration of the Research Program Term. Neither Party may grant
sublicenses under the foregoing research licenses without the prior written consent of the other
Party, which consent shall not be unreasonably withheld or delayed.
3.2 License to NTI. Subject to the terms and conditions of this Agreement and the retained
rights specified in Section 3.3 below, (i) Institute, on its own behalf and on behalf of CNRS,
hereby grants to NTI an exclusive, worldwide, royalty-bearing license under all of their right,
title, and interest in, to, and under the Institute Patent Rights to make, have made, use, import,
offer for sale, and sell Products, and (ii) Institute hereby grants to NTI an exclusive, worldwide,
royalty-bearing license under all of Institute’s right, title, and interest in, to, and under the
Program Technology to make, have made, use, import, offer for sale, and sell Products. NTI shall
have the right to grant sublicenses under the foregoing license subject to the provisions of this
Section 3.2. If NTI grants any such sublicense, NTI shall promptly disclose to Institute the
identity of the Sublicensee. NTI shall ensure that all sublicenses granted by NTI hereunder are
consistent with the terms and conditions of this Agreement. NTI may grant sublicenses through
multiple tiers of Sublicensees consistent with this Agreement to its Affiliates and to Third
Parties if NTI is responsible for the activities of such Sublicensees with respect to the Institute
Patent Rights, Program Technology, and Products as if the activities were carried out by NTI,
including the payment of royalties due to Institute hereunder, whether or not such amounts are paid
to NTI by a Sublicensee. NTI must deliver to Institute a true and correct copy of each sublicense
granted by NTI as permitted herein, and any modification or termination thereof, within thirty (30)
days after execution, modification, or termination (which copy may only be redacted to delete
information not relevant to determining whether such sublicense is consistent with the provisions
of this Agreement).
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3.3 Retained Rights. For clarity, the license rights granted to NTI in Section 3.2 shall be
subject to the retained rights of the Institute to: (a) perform the Research Program in accordance
with the Research Plan during the Research Program Term; (b) use and practice the Institute Patent
Rights and Program Technology solely for educational and non-commercial research purposes; and (c)
publish the general scientific findings from research related to the Institute Patent Rights and
Program Technology, subject to the provisions of Sections 10 and 11.3. In addition, the license
rights granted to NTI in Section 3.2 shall be subject to the right of (a) CNRS use and practice the
Institute Patent Rights and, in the event that the CNRS Laboratory participates in the Research
Program, the Program Technology, solely for educational and non-commercial research purposes, and
(b) the CNRS Laboratory to publish the technical data and the general scientific findings resulting
from research performed by it relating to the Institute Patent Rights and, in the event that the
CNRS Laboratory participates in the Research Program, the Program Technology, subject to the
provisions of Section 11.4. Each Party retains exclusively all its rights in all its Patents,
Information and other intellectual property rights, and grants the other Party no rights therein
(implied or otherwise), other than the license rights expressly granted in this Agreement.
3.4 Mutual Covenant. Each Party covenants that it will not use or practice any of the other
Party’s intellectual property rights licensed under this Section 3 except for the purposes
expressly permitted in the applicable license grant.
4. Diligence.
4.1 General Diligence Requirements. NTI covenants to Institute that it, either on its own or
through its Affiliates or Sublicensees, shall, at its own expense, use Commercially Reasonable
Efforts to develop, seek Marketing Authorization for, and commercialize at least one Product
worldwide. As between the Parties, NTI shall be responsible, at its expense, for all development
and manufacturing activities, for the preparation, filing, and maintenance of NDAs for Products in
each country worldwide, and commercializing Products. By January 31 of each calendar year for the
term of this Agreement, NTI shall provide Institute a written report of its activities in this
regard during the preceding calendar year, and a summary of any such activities for the upcoming
year.
4.2 Specific Diligence Requirements. Subject to Section 4.3, NTI shall, either on its own or
through its Affiliates or Sublicensees, (a) * * * within * * * after the termination or
expiration of the Research Program Term, (b) * * * within * * * after the termination or expiration
of the Research Program Term, (c) * * * within * * * after the termination or expiration of the
Research Program Term, and (d) * * * within * * * after the termination or expiration of the
Research Program Term.
4.3 Failure. If NTI does not use Commercially Reasonable Efforts as provided for in Section
4.1, or if NTI does not fulfill any of its obligations under Section 4.2, then, at Institute’s sole
election, Institute shall have the right, upon written notice, to terminate in its entirety, or
convert to non-exclusive, the license rights granted to NTI hereunder, effective upon receipt by
NTI of such written notice; provided, however, that NTI shall not be considered to have failed
to use Commercially Reasonable Efforts if the failure is caused in any way by the actions or
omissions of Institute or any breach of this Agreement by Institute.
| * * * | Confidential Information, indicated by [***], has
been omitted from this filing and filed separately with the Securities and
Exchange Commission. |
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5.1 Research Program Funding. NTI shall commit one million two hundred thousand U.S. Dollars
($1,200,000) for the first year of the Research Program Term to fund the Institute’s performance of
activities under the Research Plan. If the Research Program Term is extended for any additional
years beyond the initial one (1) year period, NTI shall commit the amount specified in the budget
contained in the updated Research Plan for such additional year, which amount shall in no event be
less than one million two hundred thousand U.S. Dollars ($1,200,000) provided that the results of
the Research Program have substantially met the objectives established in writing by the JRC for
the Research Program. NTI shall pay its funding amount under this Section 5.1 for each year of the
Research Program Term in four (4) equal installments (e.g., for the first year of the Research
Program, 4 equal installments of three hundred thousand U.S. Dollars ($300,000)) on a quarterly
basis in advance during the Research Program Term, and Institute agrees to apply such funding
solely to its activities under the Research Program. Notwithstanding the foregoing, NTI shall pay
to Institute the first installment of its funding amount (i.e., $300,000 U.S. Dollars) for the
first year of the Research Program Term within ten (10) days after the Effective Date. Provided
that the Research Program Term has not terminated or expired, the next installment of NTI’s funding
amount shall be payable by NTI no later than three (3) months after the Effective Date, and all
subsequent installments shall each be payable by NTI during the Research Program Term every three
(3) months thereafter. All amounts paid by NTI hereunder are non-refundable and non-creditable.
5.2 Up-Front Payments. As partial consideration for the license and other rights granted to
NTI under this Agreement, NTI shall make to Institute a non-refundable, non-creditable up-front
payment in the amount of one hundred seventy-four thousand nine hundred ninety-nine U.S. Dollars
($174,999) (the “Up-Front Payment”), which payment shall be payable in three (3) installments of
fifty-eight thousand three hundred thirty-three U.S. Dollars ($58,333) each. Such installment
payments shall be made as follows: (a) the first payment shall be made within ten (10) days after
the Effective Date; (b) the second on the first anniversary of the Effective Date; and (c) the
third on the second anniversary of the Effective Date. For clarity, NTI’s obligation to pay to
Institute all three (3) installments of the Up-Front Payment under this Section 5.2 is not
contingent upon the completion or success of the Research Program Term, or on the Research Program
Term being extended beyond the initial one (1) year term, and, accordingly, such obligation shall
survive termination of this Agreement for any reason.
5.3 Milestone Payments. As partial consideration for the license and other rights granted to
NTI hereunder, NTI shall pay milestone payments upon the first occurrence of the corresponding
milestone events with respect to each Product as set forth in the table below. Such milestone
payments shall be non-refundable and non-creditable, and in addition to any royalty or other
payments due under this Agreement. NTI shall notify Institute in writing upon its achievement of
each milestone event, and shall make each milestone payment payable hereunder no later than thirty
(30) days after the date on which the applicable milestone event is achieved. The milestone
payments below shall only be payable one time with respect to each
Product. If, for whatever reason, a particular milestone event for which a milestone payment
is due is not achieved then, in such case, the milestone payment that Institute would have received
upon the occurrence of such milestone event for the Product, had the particular milestone event
been achieved, shall be paid on the occurrence of the next milestone event for which a milestone
payment is due, which payment shall be paid in addition to, and not instead of, the milestone
payment that is to be paid to Institute upon the occurrence of the next milestone event.
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| Milestone Event | Milestone Payment | |
* * * |
US $ * * * | |
* * * |
US $ * * * | |
* * * |
US $ * * * | |
* * * |
US $ * * * | |
* * * |
US $ * * * |
5.4 Royalties. NTI shall pay Institute non-refundable and non-creditable royalties on a
Product-by-Product basis in an amount equal to * * * percent (* * *%) of the annual aggregate Net
Sales of such Products worldwide where the manufacture, importation, use, offer for sale, or sale
of such Product is covered by a Valid Claim within the Program Patents in which the Institute has
an ownership Interest or Institute Patent Rights. The foregoing royalty rate shall be reduced * *
* percent (* * *%) in each country in which there is no Valid Claim within the Program Patents in
which the Institute has an ownership interest or Institute Patent Rights covering the composition,
method of making, or method of using the applicable Product. No multiple royalties related to Net
Sales shall be payable hereunder because the relevant Product or its manufacture, importation, use,
offer for sale, or sale is covered by more than one Valid Claim within the Institute Patent Rights
or Program Patents. NTI shall have the right to reduce the royalty rates payable to Institute to
offset * * * percent (* * * %) of any royalties paid to third parties on a Product.
Notwithstanding the foregoing, in no event shall the royalty rates paid by NTI to Institute
pursuant to this Section 5.4 be reduced to less than * * * percent (* * * %) of the Net Sales of
Products as a result of the reductions and offsets permitted herein.
5.5 Length of Royalty Obligations. NTI’s obligation to pay royalties to Institute under
Section 5.4 shall commence on the date of the First Commercial Sale of the applicable Product in
such country or territory and shall expire upon the later of (a) ten (10) years following the date
of the First Commercial Sale of such Product in such country, or (b) the date on which the last
Valid Claim within the Program Patents in which Institute has an ownership interest or Institute
Patent Rights covering the composition, method of making, or method of using the applicable Product
expires in such country or territory.
| * * * | Confidential Information, indicated by [***], has
been omitted from this filing and filed separately with the Securities and
Exchange Commission. |
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5.6 Royalty Payment Terms. Payments due under Section 5.4 shall be payable within forty-five
(45) calendar days after the end of each calendar quarter with respect to Net Sales in such
quarter. Each such payment shall be accompanied by a written report showing: (a) the calendar
quarter for which such payment applies; (b) the amount received by NTI, its Affiliates or its
Sublicensees for the sale of Products during such quarter; (c) the total deductions from the amount
invoiced to arrive at Net Sales; and (d) the amount of royalties due under Section 5.4.
(a) All payments to be made under this Agreement shall be made in U.S. Dollars. With respect
to sales of Products invoiced in a currency other than United States Dollars, all such amounts
shall be expressed both in the currency in which the sale is invoiced and in the United States
dollar equivalent. NTI further agrees in determining such amounts, that it will use the rate of
exchange reported by Citibank in New York City as of the close of the last business day of the
applicable calendar quarter for which royalties are due for the translation of foreign currency
sales into United States dollars.
(b) Exchange Control. If at any time legal restrictions prevent the prompt remittance of part
or all of the royalties payable by NTI with respect to any country or territory where a Product is
sold, NTI shall have the right, at its option, to make such payments by depositing the amount
thereof in local currency to Institute’s account in a bank or other depository in such country. If
the royalty rate specified in this Agreement should exceed the permissible rate established in any
country, the royalty rate for sales in such country shall be adjusted to the highest legally
permissible or government-approved rate.
(c) Withholding Taxes. Each Party shall pay any and all taxes levied on it or incurred by it
on account of payments it receives under this Agreement. If laws or regulations require that taxes
be withheld, the paying Party shall: (a) deduct these taxes from the remittable amount; (b) pay
the taxes to the proper taxing authority; and (c) if requested, send proof of payment to the
receiving Party within sixty (60) days following such payment.
(d) Late Payment. Any amounts not paid by NTI when due under this Agreement will be subject
to interest from and including the date payment is due, up through and including the date upon
which Institute has collected the funds in accordance herewith at a rate equal to the lesser of (i)
the sum of two and one-half percent (2.5%) plus the prime rate of interest quoted in the Money
Rates (or equivalent) section of the Wall Street Journal per annum, calculated daily, or (ii) the
maximum interest rate allowed by law.
5.8 Audit Rights. NTI shall keep (and, as applicable, shall cause its Affiliates and require
its Sublicensees to keep) complete and accurate books and records as are necessary to ascertain
NTI’s compliance with this Agreement, including such records as are necessary to verify royalty
payments owed. Upon the written request of Institute and not more than once in each calendar year,
NTI shall permit an independent certified public accounting firm of nationally recognized standing
selected by Institute and reasonably acceptable to NTI, at the Institute’s expense, to have access
upon prior written notice during normal business hours to such of the records of NTI as may be
reasonably necessary to verify the accuracy of the royalty
reports hereunder for any year ending not more than thirty-six (36) months prior to the date
of such request. The accounting firm shall disclose to Institute only whether the reports are
correct and the specific details concerning any discrepancies.
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No other information shall be
shared. Institute shall treat all financial information subject to review under this Section 5.8
as confidential, and shall cause its accounting firm to retain all such financial information in
confidence. All amounts due as shown by the audit shall be paid within thirty (30) days following
the receipt of the final audit report. The expense of such audit shall be borne by Institute;
provided, however, that if an error of more than five percent (5%) in favor of NTI or its
Affiliates or Sublicensees is discovered, then such expenses shall be paid by NTI. NTI will use
reasonable efforts to include in all sublicenses granted in accordance herewith, and any other
agreements enabling a Third Party to be a seller of Products, an audit provision substantially
similar to the foregoing requiring such seller to keep full and accurate books and records relating
to the Products and granting Institute the right to audit the accuracy of the information reported
by the sublicensee in connection therewith.
6. Patents.
6.1 Ownership of Program Technology. All Program Know-How that is conceived, generated,
discovered, or created solely by employees or other Third Parties acting on behalf of a Party or
its Affiliates (collectively, the “Sole Program Inventions”), together with all intellectual
property rights appurtenant thereto, shall be solely owned by such Party. All Program Know-How
that is conceived, generated, discovered, or created jointly by employees or other Third Parties
acting on behalf of a Party or its Affiliates, together with employees or other Third Parties
acting on behalf of the other Party or such other Party’s Affiliates (the “Joint Program
Inventions”), together with all intellectual property rights appurtenant thereto, shall be jointly
owned by the Parties. Each Party shall own an undivided one-half interest in, to and under such
Joint Program Inventions and intellectual property rights appurtenant thereto, and neither Party
shall have any duty to account to or obtain the consent of the other Party in order to exploit or
license such jointly owned inventions and intellectual property rights (but otherwise subject to
the express provisions of this Agreement). Inventorship shall be determined in accordance with
United States patent law. Each Party shall ensure, and hereby covenants, that all employees,
agents, consultants, contractors, and other Third Parties acting on behalf or such Party’s
Affiliates in performing obligations under this Agreement shall be obligated under a binding
written agreement to (i) assign to such Party all inventions conceived, generated, discovered, or
created by such employee, agent, consultant, contractor, or other Third Party in the course of
performing such Party’s obligations under this Agreement, and (ii) preserve the proprietary and
confidential nature of Confidential Information substantially to the extent provided for in Section
10.
6.2 Ownership of Institute Patent Rights. CNRS and Institute acknowledge and agree that the
Institute Patent Rights may contain inventions that have been made solely by employees or agents of
the Institute or CNRS, or jointly by employees or agents of the Institute and CNRS. Institute and
CNRS agree that the inventorship of the claims in a given Patent shall be determined in accordance
with the laws of the country or region having jurisdiction over such a Patent. CNRS and Institute
agree to use their diligent efforts and endeavors to ensure that any necessary changes to the named
inventors on any Patent within the Institute Patent Rights shall be duly made and recorded in any
relevant patent office. Furthermore, CNRS and Institute agree
that their rights to ownership of any Patent within the Institute Patent Rights results from
CNRS’ or Institute’s respective relationship with individual inventors as employees or agents of
their respective institution. CNRS and Institute agree to use their diligent efforts and endeavors
to ensure that any necessary changes to the ownership of any Patent within the Institute Patent
Rights, which necessarily flow from the inventors named on a Patent, is duly made and recorded by
any relevant patent office.
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(a) As permitted by the CNRS Agreement, NTI shall be responsible, using counsel reasonably
acceptable to the Institute, for the preparation, filing, prosecution (including the prosecution of
any interferences, reexaminations, reissues, and opposition proceedings) and maintenance of any and
all Patents included in the Institute Patent Rights and the Program Patents. NTI shall consult
with Institute as to the preparation, filing, prosecution and maintenance of such Patents and shall
furnish to Institute, or to counsel of Institute’s choice, copies of documents relevant to any such
preparation, filing, prosecution or maintenance for Institute’s review and comment pursuant to
Section 6.3(d). NTI may determine the countries in which to maintain Patents, provided however,
that no Patent in which Institute and/or CNRS has an ownership interest that has been filed will be
abandoned without providing Institute and/or CNRS reasonable notice and opportunity to maintain the
Patent, and such Patent shall no longer be included in the Institute Patent Rights or Program
Patents licensed to NTI under this Agreement. NTI may determine in which countries to file Patents
that would, if filed, be included in the Institute Patent Rights; provided, however, that if NTI
elects not to file any such Patent in a particular country, Institute and CNRS, as appropriate,
shall be solely responsible for, and have complete discretion in controlling and making decisions
with respect to, filing, prosecution, defense and maintenance of such Patent in such country, and
such Patent shall not be included in the Institute Patent Rights licensed to NTI under this
Agreement. With regard to the previous sentence, the Institute and CNRS agree not to take any
action, for example, in prosecuting or defending such Patents that is likely to materially
adversely affect the scope and/or enforceability of the Institute Patent Rights or Program Patents
licensed to NTI under this Agreement.
(b) NTI agrees to use commercially reasonable efforts to obtain broad and strong patent
protection in the best interests of the Parties. NTI shall obtain Institute’s prior approval
before taking actions that may have a material adverse impact on the scope of any claims of any
Patents within the Institute Patent Rights in which Institute and/or CNRS have an ownership
interest or in the Program Patents in which Institute has an ownership interest; provided that such
approval may not be unreasonably withheld or delayed and shall be deemed given if Institute does
not respond to a request for approval before NTI needs to take an action to meet applicable filing
requirements.
(c) Subject to Section 6.2 (d) NTI shall bear all costs incurred during the term of this
Agreement for the preparation, filing, prosecution and maintenance of Patents included in the
Institute Patent Rights and the Program Patent Rights. NTI shall reimburse the Institute for
reasonable attorney’s fees incurred by Institute solely related to Institute’s reasonable review of
NTI’s preparation, filing, prosecution and maintenance of the Institute Patent Rights and the
Program Patents, provided, however, that NTI shall not reimburse Institute for any expenses
Institute may incur related to disputes, differences of opinion as to strategy and other
disagreements between Institute and NTI with respect to the preparation, filing, prosecution and
maintenance of the Institute Patent Rights and the Program Patents (beyond expenses related to the
initial identification of issues in the reasonable review referred to above). NTI agrees to
reimburse Institute for such attorney’s fees within 30 days of NTI’s receipt of invoices from
Institute.
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(d) Institute, CNRS and NTI, as appropriate, shall cooperate fully in the preparation, filing,
prosecution and maintenance of the Institute Patent Rights and the Program Patents and of all
Patents licensed to NTI hereunder, including executing all papers and instruments or requiring
members of Institute or CNRS to execute such papers and instruments so as to enable NTI to apply
for, to prosecute and to maintain Patents in Institute’s and/or CNRS’ name in any country. Each
Party shall provide to the other and, if appropriate, CNRS, prompt notice as to all matters which
come to its attention and which may affect the preparation, filing, prosecution or maintenance of
any such Patents. With respect to the drafting of patent applications, NTI shall provide draft
patent applications to the Institute at least fourteen (14) days before filing or within one-third
of the time span between disclosure of an invention to NTI and the date of intended filing,
whichever is less. With respect to documents relating to the prosecution of patent applications,
NTI shall promptly provide Institute with copies of patent office correspondence, and shall provide
Institute with drafts of responses to patent office correspondence at least fourteen (14) days
before transmission of such responses to the relevant patent office. Institute shall provide any
comments on such applications or responses promptly and in sufficient time to allow NTI to meet
applicable filing requirements. NTI shall incorporate any and all reasonable comments or
suggestions made by Institute with respect to such filing and prosecution.
(e) NTI may elect to surrender its interests in any Patents in the Institute Patent Rights in
which CNRS and/or Institute have an ownership interest or the Program Patents in which Institute
has an ownership interest in any country upon sixty (60) days written notice to Institute. Such
notice shall not relieve NTI from responsibility to reimburse Institute for patent-related expenses
incurred prior to the expiration of the sixty (60) day notice period. Upon the expiration of such
sixty (60) day period, such Patents in such countries shall no longer be included in the Institute
Patent Rights or Program Patents, as applicable, licensed to NTI hereunder. In the event that NTI
elects to surrender its interests in any Patents under this Section 6.2 (e) NTI shall provide
Institute with reasonable cooperation and assistance in transitioning the prosecution and
maintenance of such Patents to Institute including, without limitation, executing, acknowledging
and delivering such further instruments and performing all such other acts that may be appropriate
to enable Institute to assume sole responsibility and control of the prosecution and maintenance of
such Patents.
(f) The Parties acknowledge and agree that this Agreement shall be deemed to be a Joint
Research Agreement as defined by 35 U.S.C. §103(c), provided that no Party shall be required by
this reference to have any patent or patent application take advantage of or become subject to such
§103(c) without the other Party’s prior consent.
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7. Infringement.
7.1 Infringement by Third Parties. Each Party shall notify the other Parties of any
infringement or possible infringement of the Institute Patent Rights or the Program Patents by a
Third Party promptly after it becomes aware of such infringement.
7.2 Infringement of Program Patents. NTI will have the first right, but not the obligation,
to institute, prosecute, and control any action or proceeding with respect to infringement of the
Program Patents (a “Program Patents Enforcement Action”), by counsel of its own choice. Institute
shall provide reasonable assistance and cooperation to NTI in connection with such Program Patents
Enforcement Action at NTI’s expense, and Institute may, at Institute’s sole discretion and its own
expense and by counsel of its choice, join in such Program Patents Enforcement Action. If NTI
finds it reasonably necessary to join Institute as a party in a Program Patents Enforcement Action,
then, as reasonably requested by NTI and at NTI’s sole expense, Institute shall take all actions
and execute all documents and instruments necessary for NTI to bring such action in the names of
NTI and Institute. In such event, NTI shall promptly reimburse Institute on a monthly basis for
all reasonable expenses (including attorneys’ fees and Institute’s actual costs and expenses for
time spent by Institute to assist with such action) incurred by Institute in connection with such
action. If NTI fails to institute a Program Patents Enforcement Action within (a) ninety (90) days
following written notice of alleged infringement, or (b) thirty (30) days before the time limit, if
any, set forth in the appropriate laws and regulations for the filing of such actions, whichever
comes first, Institute shall have the right, but not the obligation, to bring and control any such
action or proceeding at its own expense and by counsel of its own choice. In such event, NTI shall
provide reasonable assistance and cooperation to Institute in connection with such Program Patents
Enforcement Action at Institute’s sole expense including, without limitation, taking all actions
and executing all documents and instruments necessary for Institute to bring such action in the
names of NTI and Institute if Institute finds it reasonably necessary to join NTI as a party in
such Program Patents Enforcement Action. If Institute institutes a Program Patents Enforcement
Action, NTI shall have the right, at its own expense, to be represented in any such action by
counsel of its own choice. Any damages, settlement amounts, or other consideration resulting from
any such action, after reimbursement of each Party’s attorneys’ fees and court costs in connection
with such action, shall belong to the Party that initiated the action; provided, however, that if
NTI is the initiating Party, the remainder (after reimbursement of fees and costs of both Parties)
will be deemed to be Net Sales subject to royalty obligations under Section 5.4.
7.3 Infringement of Institute Patent Rights. The Parties agree that the initial right to
enforce the Institute Patent Rights flows from whether a Patent included in the Institute Patent
Rights is owned solely by Institute or is owned jointly by the Institute and CNRS.
(a) Patent Rights Owned Solely by Institute. In the event that a Patent included within the
Institute Patent Rights is owned solely by the Institute, then NTI shall have the first right, but
not the obligation, to institute, prosecute, and control any action or proceeding with respect to
infringement of the Institute Patent Rights using the mechanism set forth in Section 7.2.
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(b) Patent Rights Owned Jointly by Institute and CNRS. In the event that a Patent included
within the Institute Patent Rights is jointly owned by the Institute and CNRS, then the enforcement
of such Patent shall be governed by this Section 7.3(b). Pursuant to the
terms of the CNRS Agreement, Institute is obligated to, and shall, notify CNRS in writing
after becoming aware of any infringement or possible infringement of such patent by a Third Party;
provided, however, that if CNRS notifies Institute of such infringement, it shall be unnecessary
for Institute to provide written notice to CNRS, and Institute shall instead provide written notice
to NTI of such infringement as required under Section 7.1. For a period of thirty (30) days from
the date on which either Institute or CNRS provides written notice to the other of such
infringement (such period, the “Consultation Period”), Institute shall consult with both NTI and
CNRS regarding the strategy to be adopted with respect to abating such infringement, and shall give
due consideration to NTI’s economic interests in, and opinion regarding, same. Within fifteen (15)
days after the expiration of the Consultation Period, Institute shall provide written notice to NTI
if either or both of Institute and CNRS intend to initiate, prosecute, and control any action or
proceeding with respect to the infringement of such patent (an “Institute/CNRS Patent Enforcement
Action”) by counsel of their own choice and at their own expense. NTI shall have the right, at its
sole discretion and expense, to join an Institute/CNRS Patent Enforcement Action using counsel of
its own choice. Institute and CNRS shall consult with NTI regarding the strategy to be adopted in
connection with the Institute/CNRS Enforcement Action and shall give due consideration to NTI’s
economic interests in, and opinion regarding, same. If neither Institute nor CNRS institutes an
Institute/CNRS Patent Enforcement Action within (i) ninety (90) days following written notice of
their intent to do so, or (ii) thirty (30) days before the time limit, if any, set forth in the
appropriate laws and regulations for the filing of such action, whichever comes first, NTI shall
have the right, but not the obligation, to bring and control any such action or proceeding at its
own expense and by counsel of its own choice. In such event, Institute and CNRS shall provide
reasonable assistance and cooperation to NTI in connection with such Institute/CNRS Patent
Enforcement Action at NTI’s expense. If NTI finds it reasonably necessary to join either or both
of CNRS or Institute as parties in an Institute/CNRS Enforcement Action, then, as reasonably
requested by NTI and at NTI’s sole expense, Institute and CNRS shall take all actions and execute
all documents and instruments necessary for NTI to bring such action in the names of NTI, CNRS and
Institute. In such event, NTI shall promptly reimburse CNRS and Institute on a monthly basis for
all reasonable expenses (including attorneys’ fees and CNRS’ and Institute’s actual costs and
expenses for time spent by CNRS and Institute to assist with such action) incurred by CNRS and
Institute in connection with such action. Any damages, settlement amounts, or other consideration
recovered in any Institute/CNRS Patent Enforcement Action shall first be used to reimburse each of
NTI’s, CNRS’ and Institute’s reasonable attorneys’ fees and court costs in connection with such
action (to the extent that such fees and costs have not already been reimbursed by NTI under this
Section 7.3(b), with the remainder, if any, allocated among the parties that initiated such action
in direct proportion to the share of the fees and costs of the action paid by such parties;
provided, however, that if NTI is the sole party initiating such action, the remainder (after
reimbursement of the fees and costs of NTI, CNRS, and Institute) will belong to NTI but will be
deemed to be Net Sales subject to royalty obligations under Section 5.4.
7.4 Third Party Infringement Claims. NTI shall promptly inform Institute in the event of any
claim, threat, or suit by a Third Party against NTI or its Affiliates or Sublicensees alleging that
the manufacture, use, importation, offer for sale, or sale of Products infringes any Patents or
other intellectual property rights of such Third Party. NTI shall have final control of the
defense against such claim, threat, or suit and any settlement thereof; provided that NTI shall
not settle such claim, threat, or suit in a manner that adversely affects Institute’s and/or
CNRS’, as appropriate, interest in the Institute Patent Rights or Institute’s interest in Program
Patents including, without limitation, the validity of the Patents within the Institute Patent
Rights or Program Patents, without the prior written consent of Institute and/or CNRS, as
appropriate, which consent shall not be unreasonably withheld. NTI shall bear its own
out-of-pocket costs incurred in connection with such legal proceedings and the amount of
settlements or damages awarded to a Third Party as a result of the suit for infringement by NTI of
such Third Party’s Patents or other intellectual property rights or settlement thereof.
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8.1 Each Party hereby represents, warrants, and covenants to the other Party the following:
(a) It is a corporation duly organized and validly existing and in good standing under the
laws of the state of its incorporation, and in each state where a failure to be in good standing
would have a material adverse effect on the operations of such Party;
(b) It has sufficient legal and/or beneficial title under its intellectual property rights, or
sufficient rights licensed from Third Parties, to grant the rights and licenses provided hereunder;
(c) All of its employees, officers, Third Party contractors and consultants performing any
activities on behalf of a Party under this Agreement have executed agreements requiring assignment
to the Party of all inventions made as a result of the performance of such activities and
obligating the individual or entity to maintain as confidential all Confidential Information;
(d) In performing its obligations and exercising its rights under this Agreement, it shall
comply with the requirements of any and all applicable federal, state, local, foreign and other
laws, regulations, rules and orders of any governmental body having jurisdiction over such Party or
the activities of such Party;
(e) It has all necessary right, power and authority to enter into this Agreement and perform
its obligations hereunder, and, in so doing, will not violate any other agreement to which it is a
party. It has taken all corporate action necessary to authorize the execution and delivery of this
Agreement;
(f) It has not entered, nor shall it enter, into any agreement or arrangement with a Third
Party that is in conflict with the rights granted to the other Party under this Agreement; and
(g) It shall not take any action that would conflict with or prevent it from granting any
rights it has granted or purported to grant hereunder, or adversely affect the rights such Party
has granted to the other Party under this Agreement.
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8.2 Disclaimer of Implied Warranties. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT,
INSTITUTE MAKES NO REPRESENTATIONS OR WARRANTIES
AS TO THE INSTITUTE PATENT RIGHTS, THE PROGRAM TECHNOLOGY OR ANY OTHER MATTER EXPRESS OR
IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW, BY STATUTE OR OTHERWISE, AND INSTITUTE SPECIFICALLY
DISCLAIMS ANY AND ALL IMPLIED OR STATUTORY WARRANTIES INCLUDING, WITHOUT LIMITATION, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT, VALIDITY OF ANY PATENT RIGHTS
OR OTHER INTELLECTUAL PROPERTY RIGHTS, WHETHER ISSUED OR PENDING.
9.1 Institute’s Right to Indemnification. NTI shall indemnify, defend, and hold Institute,
CNRS and the trustees, directors, officers, employees and Affiliates of Institute and CNRS harmless
from and against any and all Damages incurred or suffered by each of them (excluding incidental or
consequential Damages suffered or incurred by Institute directly (as opposed to incidental or
consequential Damages suffered or incurred by Third Parties who are, in turn, seeking the same from
Institute, which shall be covered by the indemnity set forth herein)) as a consequence of Third
Party claims or actions (“Claims”) based on:
(a) a breach of any of NTI’s representations, warranties, or obligations contained in this
Agreement;
(b) the negligence, gross negligence, or intentional misconduct of NTI or its Affiliates or
Sublicensees, or the employees or any Third Party acting on behalf of NTI or its Affiliates or
Sublicensees; and
(c) the research, development, manufacture, importation, sale and use of Products by or on
behalf of NTI or its Affiliates, Sublicensees, or assignees including, without limitation, all
product liability or other claims for injury or death arising from the sale or use of Products sold
by or on behalf of NTI or its Affiliates, Sublicensees, or assignees after the Effective Date,
regardless of the theory under which such claims are brought.
NTI’s indemnification obligations under this Section 6.1 shall not apply to the extent that the
applicable Claim arises out of or results from (i) a breach of any of Institute’s representations,
warranties, or obligations contained in this Agreement; or (ii) the recklessness or intentional
misconduct of Institute or its Affiliates, or the employees or agents of Institute or its
Affiliates.
9.2 By Institute. Institute shall indemnify, defend and hold NTI and its directors, officers,
employees, and Affiliates harmless from and against any and all Damages incurred or suffered by
each of them (excluding incidental or consequential Damages suffered or incurred by NTI directly
(as opposed to incidental or consequential Damages suffered or incurred by Third Parties who are,
in turn, seeking the same from NTI, which shall be covered by the indemnity set forth herein)) as a
consequence of Claims based upon:
(a) a breach of any of Institute’s representations, warranties, or obligations contained in
this Agreement; or
(b) the recklessness or willful misconduct of Institute, its Affiliates, or the employees or
agents of Institute or its Affiliates.
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Institute’s indemnification obligations under this Section 9.2 shall not apply to the extent that
the applicable Claim arises out of or results from (i) a breach of any of NTI’s representations,
warranties, or obligations contained in this Agreement; or (ii) the negligence, gross negligence,
or intentional misconduct of NTI or its Affiliates or Sublicensees, or the employees or any Third
Party acting on behalf of NTI or its Affiliates or Sublicensees.
9.3 Process for Indemnification. For purposes of Section 9.1 and Section 9.2, the indemnified
Party shall give prompt written notice to the indemnifying Party of any suits, claims, actions,
proceedings or demands by Third Parties that may give rise to any claim for which indemnification
may be required under this Section 9; provided, however, that failure to give such notice shall not
relieve the indemnifying Party of its obligation to provide indemnification hereunder except, if
and to the extent that such failure materially and adversely affects the ability of the
indemnifying Party to defend or mitigate the applicable suit, claim, action, proceeding or demand.
The indemnifying Party shall be entitled to assume the defense and control of any such suit, claim,
action proceeding or demand at its own cost and expense; provided, however, that the indemnified
Party shall have the right to be represented by its own counsel at its own cost in such matters.
Neither the indemnifying Party nor the indemnified Party shall settle or dispose of any such matter
in any manner that would adversely affect the rights or interests of the other Party (including the
obligation to indemnify hereunder) without the prior written consent of the other Party, which
shall not be unreasonably withheld or delayed. Each Party shall cooperate with the other Party and
its counsel in the course of the defense of any such suit, claim, action, proceeding or demand,
such cooperation to include, without limitation, using reasonable efforts to provide or make
available documents, information and witnesses.
9.4 Limitation of Liability. IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY
SPECIAL, INCIDENTAL, CONSEQUENTIAL, LOST PROFITS OR INDIRECT DAMAGES OF ANY KIND ARISING IN ANY WAY
OUT OF THIS AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY. NOTWITHSTANDING ANY FAILURE
OF ESSENTIAL PURPOSE OF ANY LIMITED WARRANTY PROVIDED HEREIN, THIS LIMITATION WILL APPLY EVEN IF
THE OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. THE FOREGOING LIMITATION SHALL
NOT APPLY, HOWEVER, TO A PARTY’S INDEMNIFICATION OBLIGATIONS PURSUANT TO SECTION 9 OR TO A BREACH
OF A PARTY’S CONFIDENTIALITY OBLIGATIONS UNDER SECTION 10.
10. Confidentiality.
10.1 Confidentiality; Exceptions. In connection with this Agreement, the Parties may provide
to each other Confidential Information, including but not limited to each Party’s Information,
invention disclosures, proprietary materials and/or technologies, economic information, business or
research strategies, trade secrets and material embodiments thereof. As used herein, “Confidential
Information” means any information of a confidential or proprietary nature disclosed by or on
behalf of a Party to the other Party. Notwithstanding the foregoing, Confidential Information of a
disclosing Party shall not include:
(a) information which, at the time of disclosure to the receiving Party by or on behalf of the
disclosing Party, was previously known to the receiving Party as demonstrated by contemporaneous
written records;
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(b) information which, at the time of disclosure to the receiving Party by or on behalf of the
disclosing Party, is published or otherwise generally available to the public;
(c) information which, after disclosure to the receiving Party by or on behalf of the
disclosing Party, is published or otherwise becomes generally available to the public through no
breach of this Agreement by the receiving Party;
(d) information which is received by the receiving Party from a Third Party which did not
directly or indirectly receive the information from the disclosing Party, and which Third Party has
the legal right to disclose the same and which is not required to hold the same confidential; and
(e) information that is independently developed by the receiving Party without use of,
application of or reference to the disclosing Party’s Confidential Information.
10.2 Confidentiality Obligations. During the term of this Agreement and for a period of ten
(10) years after the expiration or termination of this Agreement, the recipient of a disclosing
Party’s Confidential Information shall maintain such Confidential Information in confidence and
shall disclose such Confidential Information only to its employees, agents, consultants, Third
Party contractors, Affiliates, Sublicensees, attorneys, accountants and advisors and, in the case
of Institute, CNRS, who have a reasonable need to know such Confidential Information and who are
bound by obligations of confidentiality and non-use no less restrictive then those set forth
herein. The recipient of the disclosing Party’s Confidential Information shall use such
Confidential Information solely to exercise the receiving Party’s rights and perform the receiving
Party’s obligations as set forth in this Agreement (including, without limitation, the right to use
and disclose such Confidential Information in regulatory applications and filings), unless
otherwise mutually agreed in writing. The recipient of the other Party’s Confidential Information
shall take the same degree of care that it uses to protect its own confidential and proprietary
information of a similar nature and importance (but in any event no less than reasonable care).
10.3 Permitted Disclosure. A receiving Party may disclose Confidential Information of the
disclosing Party under the following circumstances, provided that the receiving Party has promptly
provided prior written notice to the disclosing Party, and shall provide reasonable cooperation and
assistance, to enable the disclosing Party to seek a protective order or otherwise prevent or limit
disclosure and/or use of such Confidential Information of the disclosing Party: (a) as required, in
connection with the order of a court or other governmental body; (b) as required by or in
compliance with laws or regulations; (c) as required in the course of obtaining regulatory and
necessary institutional approvals to clinically test, sell or market the Product or to perform
research and development with respect to the Product as permitted under, and during the term of,
this Agreement; and (d) as required to secure patent protection for a Program Invention consistent
with Section 6.
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10.4 Terms of this Agreement. Except to the extent otherwise required by law (including
applicable securities laws and regulations), and without limiting any other provision of this
Section 10.4, each Party agrees not to disclose the financial or other terms or conditions of this
Agreement to any Third Party without the prior written consent of the other Party, except (a) in
confidence to accountants, banks and financing sources and their advisors; (b) in confidence to
consultants and advisors in connection with a merger or acquisition or proposed merger or
acquisition, or the like, or (c) as permitted under Section 10.3(a) or (b).
11.1 Initial Press Release. The Parties agree that the first public announcement of the
execution of this Agreement shall be in the form of a press release to be mutually agreed by the
Parties.
11.2 Public Announcements. With the exception of Section 11.1, neither NTI nor Institute
shall make any public announcement concerning the existence of or the terms of this Agreement,
without the prior written approval of the other Party with regard to the form, content and precise
timing of such announcement, except such as may be required to be made by either Party in order to
comply with applicable law, regulations, court order, or tax or securities filings. Such consent
shall not be unreasonably withheld or delayed by such other Party. Prior to any such public
announcement, the Party wishing to make the announcement will submit a draft of the proposed
announcement to the other Party in sufficient time to enable the other Party to consider and
comment thereon. Notwithstanding anything to the contrary in this Agreement, nothing in this
Section 11 is intended to prohibit either Party from republishing or restating information relating
to this Agreement that has already been approved by the other Party for use in a prior press
release or public announcement.
11.3 Institute Publication Rights. The Institute shall have the right to publish or otherwise
publicly disclose those results of the Research Program generated by or on behalf of the Institute
in accordance with the provisions of this Section 11.3. The Institute shall provide NTI with a
copy of any proposed publication or release at least forty-five (45) days in advance of the
proposed publication or release date. NTI shall have thirty (30) days from the date of its receipt
of a proposed publication or release in which to submit a written notice to Institute requesting
that NTI Confidential Information contained in such publication or release be deleted or that the
publication or release be delayed until such time as Institute has, at NTI’s expense, filed patent
applications directed to patentable subject matter contained therein in accordance with Section 6.
Upon receiving any such written notice from NTI within such thirty (30) day period, the Institute
shall take the action requested therein before publishing or otherwise releasing such publication
or release. Subject to the foregoing, Institute shall have the final authority to determine the
scope and content of any publications.
11.4 CNRS Publication Rights. As permitted under Section 3.3, the CNRS Laboratory shall have
the right to publish or otherwise publicly disclose the general scientific findings resulting from
its research related to (i) the Institute Patent Rights and (ii) in the event that NTI and
Institute agree to have the CNRS Laboratory participate in the Research Program, the Program
Technology. The CNRS Laboratory shall provide NTI with a copy of any proposed publication or
release at least forty-five (45) days in advance of the proposed publication or
release date. NTI shall have thirty (30) days from the date of its receipt of a proposed
publication or release in which to submit a written notice to the CNRS Laboratory requesting that
the publication or release be delayed until such time that NTI, at its expense, has filed patent
applications directed to patentable subject matter contained therein in accordance with Section 6.
Upon receiving any such written notice from NTI within such thirty (30) day period, the CNRS
Laboratory shall take the action requested therein before publishing or otherwise releasing such
publication or release. Subject to the foregoing, the CNRS Laboratory shall have the final
authority to determine the scope and content of any publications.
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12.1 Term. This Agreement shall be effective as of the Effective Date and, unless earlier
terminated by mutual agreement or in accordance with other provisions herein, shall continue in
effect until the expiration of NTI’s royalty obligations under this Agreement.
12.2 Termination. Anything herein to the contrary notwithstanding, this Agreement may be
terminated as follows:
(a) NTI Voluntary Termination. NTI may terminate this Agreement at any time after the third
anniversary of the Effective Date by giving ninety (90) days’ written notice to Institute of its
intention to terminate.
(b) Termination for Lack of Diligence. If NTI does not use Commercially Reasonable Efforts as
provided for in Section 4.1, or if NTI does not fulfill its obligations under Section 4.2, then, at
Institute’s sole election, Institute shall have the right, upon written notice, to terminate this
Agreement in its entirety.
(c) Termination for Default. Each Party shall have the right to terminate this Agreement for
default due to the other Party’s uncured failure to comply in any material respect with the terms
and conditions of this Agreement. At least thirty (30) days prior to any such termination for
default, the Party seeking to so terminate shall give the other Party written notice of its
intention to terminate this Agreement in accordance with the provisions of this Section 12.2(c),
which notice shall set forth the default(s) which form the basis for such termination. If the
defaulting Party fails to correct such default(s) within thirty (30) days after receipt of
notification, the other Party may terminate this Agreement upon written notice.
(d) Termination or Expiration of Research Program Term. In the event that either the Research
Program Term is terminated as permitted under Section 2.6 or the Research Program Term expires
prior to the three (3) year anniversary of the Effective Date, this Agreement shall automatically
terminate upon the date of termination or expiration of the Research Program Term; provided,
however, that this Agreement shall not so terminate if, in accordance with Section 2.6, a Clinical
Candidate exists as of the date of expiration or termination of the Research Program Term.
12.3 Continuing Obligations. Except as otherwise provided above, termination of this
Agreement for any reason shall not relieve the Parties of any obligation accruing prior thereto and
shall be without prejudice to the rights and remedies of either Party with respect to any
antecedent breach of the provisions of this Agreement. Without limiting the generality of
the foregoing, no termination or expiration of this Agreement shall serve to terminate the
rights and obligations of the Parties hereto under Sections 5.2, 5.8, 6.1, 6.2, 6.3, 10, 12.3,
12.4, and 13, and such obligations shall survive any such termination or expiration.
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12.4 Effects of Termination. If the Agreement is terminated for any reason other than for
Institute’s uncured material breach of the Agreement, NTI shall, as of the date of termination of
this Agreement, be deemed to have granted to Institute an exclusive (even as to NTI), worldwide,
perpetual, irrevocable license, with the right to grant and authorize the grant of sublicenses,
under NTI’s right, title and interest under the Program Technology to make, have made, use, import,
offer for sale, and sell Products.
13. Miscellaneous.
13.1 Agency. Neither Party is, nor shall it be deemed to be, an employee, agent, co-venturer,
partner or legal representative of the other Party for any purpose. Neither Party shall be
entitled to enter into any contracts in the name of, or on behalf of, the other Party, nor shall
either Party be entitled to pledge the credit of the other Party in any way or hold itself out as
having the authority to do so.
13.2 Successors and Assigns; Assignment. The terms and provisions of this Agreement shall
inure to the benefit of, and be binding upon, NTI, Institute and their respective successors and
permitted assigns; provided, however, that neither NTI nor Institute may transfer or assign any of
its rights and obligations hereunder without the prior written consent of the other (which consent
shall not be unreasonably withheld following the conclusion of the Research Program), except that
either Party may transfer or assign any of its rights and obligations hereunder to an Affiliate or
a person that acquires all or substantially all of the assets of such Party to which this Agreement
relates or pursuant to a merger or consolidation involving substantially all of the assets to which
this Agreement relates, provided that such assignee or transferee promptly agrees in writing to be
bound by the terms and conditions of this Agreement. Each Party shall notify the other within
thirty (30) days prior to any such transfer, assignment, merger, sale or consolidation. The Party
receiving such notices shall keep such information strictly confidential. Unless affirmed in
writing by the non-assigning Party, any purported assignment in contravention of this Section 13.2
shall be null and void and of no effect. Notwithstanding the foregoing, NTI may delegate any of
its obligations or responsibilities hereunder to its Affiliates and such Affiliates shall enjoy the
rights extended to NTI hereunder in connection therewith; provided that NTI continues to remain
responsible for its obligations and responsibilities under this Agreement.
13.3 Further Actions. Each Party agrees to execute, acknowledge and deliver such further
instruments and to do all such other acts that may be necessary or appropriate to carry out the
purpose and intent of this Agreement.
13.4 Force Majeure. Neither Party shall be held responsible for any delay or failure in
performance hereunder caused by strikes, embargoes, unexpected government requirements, civil or
military authorities, acts of God, earthquake, or by the public enemy or other causes reasonably
beyond such Party’s control and without such Party’s fault or negligence; provided that the
affected Party notifies the unaffected Party as soon as reasonably possible, and resumes
performance hereunder as soon as reasonably possible following cessation of such force majeure
event. The Party giving such notice shall thereupon be excused from such of its obligations
hereunder as it is thereby disabled from performing for so long as it is so disabled and the Party
receiving notice shall be similarly excused from its respective obligations which it is thereby
disabled from performing; provided, however, that the Party providing notice commences and
continues reasonable and diligent actions to cure such force majeure cause. Notwithstanding the
foregoing, nothing in this Section 13.4 shall excuse or suspend the obligation to make any payment
due hereunder in the manner and at the time provided.
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13.5 Notices. Any notices which a party may be required or shall desire to give hereunder
shall be in writing, specifically refer to this Agreement, and be addressed to the appropriate
party at the address specified below or such other address as may be specified by such party in
writing in accordance with this Section 13.5. Such notices shall be deemed to have been given for
all purposes: (a) immediately, if delivered personally; (b) upon receipt if sent by reputable
courier, such as FedEx; or (c) on the date transmitted if sent via facsimile (with confirmation of
receipt generated by the transmitting machine), provided that the sender calls and notifies the
recipient prior to sending the facsimile.
| If to Institute: | Buck Institute for Age Research | |||
| Attn: Business Development | ||||
| 0000 Xxxxxxx Xxxxxxxxx | ||||
| Xxxxxx, XX 00000 | ||||
| If to NTI: | Neurobiological Technologies, Inc. | |||
| Attn: Xx. Xxxx Xxxxxxx | ||||
| 0000 Xxxxxx Xxxxxx, Xxxxx 000 | ||||
| Xxxxxxxxxx, XX 00000 | ||||
| If to CNRS: | Centre National de la Recherche Scientifique | |||
| Attn: Responsable de la Politique de Valorisation | ||||
| 0, xxx Xxxxxx-Xxxx | ||||
| 00000 XXXXX Cedex 16 – France |
13.6 Amendment. No amendment, modification or supplement of any provision of this Agreement
shall be valid or effective unless made in writing and signed by a duly authorized officer of each
Party.
13.7 Waiver. The failure of a Party to enforce any rights or provisions of the Agreement
shall not be construed to be a waiver of such rights or provisions, or a waiver by such Party to
thereafter enforce such rights or provision or any other rights or provisions hereunder. No waiver
hereunder shall be effective unless made in writing and signed by the waiving Party.
13.8 Counterparts. This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original and all of which together shall constitute one instrument.
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13.9 Descriptive Headings. The article, section and paragraph headings contained herein are
for the purposes of convenience only and are not intended to define or limit the contents of the
articles, sections or paragraphs to which such headings apply.
13.10 Governing Law. This Agreement shall be governed by and construed in accordance with the
laws of California, without regard to conflicts of laws principles or provisions that would result
in the application of the substantive laws of another jurisdiction.
13.11 Severability. Whenever possible, each provision of this Agreement shall be interpreted
in such manner as to be effective and valid under applicable law, but if any provision of this
Agreement is held to be prohibited by or invalid under applicable law, such provision shall be
ineffective only to the extent of such prohibition or invalidity, without invalidating the
remainder of this Agreement. In the event of such invalidity, the Parties shall seek to agree on
an alternative enforceable provision that preserves the original purpose of this Agreement.
13.12 Entire Agreement of the Parties. This Agreement and the Exhibits attached hereto,
constitute and contain the complete, final and exclusive understanding and agreement of the Parties
hereto and cancel and supersede any and all prior negotiations, correspondence, understandings and
agreements, whether oral or written, between the Parties respecting the subject matter hereof, and
no Party shall be liable or bound to any other Party in any manner by any representations,
warranties, covenants or agreements, except as specifically set forth herein or therein. Nothing
in this Agreement, express or implied, is intended to confer upon any Party, other than the Parties
hereto and their respective successors and assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement, except as expressly provided herein.
13.13 Compliance with Law. Nothing in this Agreement shall be deemed to permit either Party
to export, re-export or otherwise transfer any Information of the other Party transferred hereunder
or the Product manufactured therefrom without complying with applicable laws.
REMAINDER OF PAGE INTENTIONALLY LEFT BLANK
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In Witness Whereof, the Parties hereto have, as of the Effective Date, duly executed
this Agreement.
| Buck Institute for Age Research | Neurobiological Technologies, Inc. | |||||||||
By:
|
/s/ Xxxxx Xxxxxx
|
By: | /s/ Xxxx X. Xxxxxxx
|
|||||||
| Name: | Xxxxx Xxxxxx | Name: | Xxxx X. Xxxxxxx | |||||||
| Title: | President and COO | Title: | President and CEO | |||||||
Consent Of And Agreement By CNRS.
CNRS hereby approves the terms and conditions of this Agreement, and agrees to be bound by the
terms and conditions applicable to the licenses granted under the Institute Patent Rights (Section
3), the ownership of Institute Patent Rights (Section 6.2), patent prosecution and maintenance of
the Institute Patent Rights (Section 6.3), enforcement of Institute Patent Rights (Section 7.3),
and CNRS’ Publication Rights (Section 11.4).
Centre National De La
Recherche Scientifique
Recherche Scientifique
By:
|
/s/ Xxxx X. Xxxxxx
|
|||
Name:
|
Xxxx X. XXXXXX | |||
Title:
|
Directeur de la Politique Industrielle |
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EXHIBIT A
Netrin-1
Netrin -1 is a protein of 604 amino acids that resides in the extracellular matrix and functions as
an axon guidance molecule and trophic factor. It is a member of a relatively large family of
conserved proteins and one of several netrins identified in mammals. In addition to its role in
axon guidance, netrins also mediate the migration of neuron, glial oligodendrocyte precursors and
mesodermal cells during embryogenesis. In addition, netrin-1 blocks programmed cell death mediated
by DCC and UNC5H1-3.
EXHIBIT B
Principal Investigators
Neurobiological Technologies, Inc. – Xxxx Xxxx, MD, PhD
Buck Institute – Xxxx Xxxxxxxx, MD
EXHIBIT C
Research Plan
* * *
| * * * | Confidential Information, indicated by [***], has
been omitted from this filing and filed separately with the Securities and
Exchange Commission. A total of 11 pages has been omitted. |