EXHIBIT 10.2
LICENSE AGREEMENT
This License Agreement (the "Agreement") is effective as of the 25th
day of May 2001 (the "Effective Date"), between the UNIVERSITY OF CONNECTICUT
HEALTH CENTER having a place of business at the Center for Science and
Technology Commercialization, 000 Xxxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxxx,
00000 ("UCONN") and ANTIGENICS, INC. having offices at 000 Xxxxx Xxxxxx, Xxxxx
#0000, Xxx Xxxx, XX 00000 ("ANTIGENICS") (each a "Party" and collectively the
"Parties").
RECITALS
WHEREAS, UCONN has been engaged in certain research pursuant to a
separate Research Agreement by and between UCONN and ANTIGENICS dated February
18, 1998 (the "Research Agreement");
WHEREAS, pursuant to the Research Agreement, ANTIGENICS obtained an
option for an exclusive license to inventions arising under the research
activities contemplated therein; and
WHEREAS, ANTIGENICS is exercising said options and is interested in
obtaining, and UCONN wishes to grant to ANTIGENICS, an exclusive license to such
inventions.
NOW, THEREFORE, ANTIGENICS and UCONN agree as follows:
1. DEFINITIONS
1.1 "Affiliate" means an entity which controls, is controlled by
or is under common control with ANTIGENICS or UCONN as the case may be. An
entity shall be regarded as in control of another entity if it owns or controls
more than fifty percent (50%) of the voting power of such entity.
1.2 "Combination Product" means a product that contains a Licensed
Product as one component and at least one other essential functional component.
1.3 "Expiration Date" means the date upon which the last patent
covered by this license expires or otherwise becomes no longer valid.
1.4 "Intellectual Property" means all Patent Rights and Related
Technology.
1.5 "Licensed Product" means any method, procedure, process,
product, or component part thereof whose manufacture, use, sale, offer for sale
or importation is covered by a Valid Claim of the Patent Rights or which could
be construed to infringe the Patent Rights in the absence of the license granted
hereunder.
1.6 "Net Sales" means total xxxxxxxx for Licensed Products,
determined in accordance with generally accepted accounting principles, sold by
ANTIGENICS and/or its Affiliates, less (a) discounts actually allowed in amounts
customary in the trade; (b) sales, tariff duties and/or use taxes directly
imposed and with reference to particular sales; (c) outbound transportation
prepaid or allowed; and (d) amounts allowed or credited on returns. ANTIGENICS
shall keep records of all amounts (a) through (d) that are subtracted from total
xxxxxxxx. Licensed Products shall be considered "Sold" when billed out or
invoiced. Sales of Licensed Products between or among ANTIGENICS and its
Affiliates shall not be subject to any royalties hereunder, and in such cases
royalties shall be calculated upon ANTIGENICS or its Affiliates' Net Sales to an
independent Third Party. ANTIGENICS shall be responsible for payment of any
royalty accrued on Net Sales of Licensed Products to such independent Third
Party through ANTIGENICS' Affiliates. Notwithstanding the foregoing, any
transfer of Licensed Product by ANTIGENICS to a Sublicensee for resale by that
Sublicensee for an amount at or below ANTIGENICS' cost of manufacturing such
Licensed Product shall not constitute a Net Sale.
In the case of Combination Products, Net Sales means the gross amount
billed or invoiced on sales of the Combination Product less the deductions set
forth above, multiplied by a proration factor that is determined as follows: (i)
if all components of the Combination Product were sold separately during the
same or immediately preceding Royalty Period, the proration factor shall be
determined by the formula [A / (A+B)], where A is the aggregate gross sales
price of all Licensed Product components during such period when sold separately
from the other essential functional components, and B is the aggregate gross
sales price of the other essential functional components during such period when
sold separately from the Licensed Product components; or (ii) if all components
of the Combination Product were not sold separately during the same or
immediately preceding Royalty Period, the proration factor shall be determined
by the formula [C / (C+D)], where C is the aggregate Fully Absorbed Cost of
Goods for the Licensed Product components during the prior Royalty Period and D
is the aggregate Fully Absorbed Cost of Goods for the other
essential functional components during the prior Royalty Period, with such costs
being determined in accordance with generally accepted accounting principles.
As used herein, "Fully Absorbed Cost of Goods" means, with respect to any
component, the direct variable and direct fixed costs associated with the
manufacture of such component. Direct variable costs shall be deemed to be the
cost of labor, including salaries, wages and current period employee benefits,
raw materials, supplies and other resources directly consumed in the manufacture
of such component. Direct fixed costs shall be deemed to be the cost of
utilities, insurance, equipment depreciation, and other fixed costs directly
related to the manufacture of such component. Fixed costs shall be allocated to
such component based upon the proportion of such costs directly attributable to
support of such component's manufacturing process. All cost determinations made
hereunder shall be made in accordance with generally accepted accounting
principles consistently applied.
1.7 "Patent Rights" means Patent Rights For Incremental Inventions
and Patent Rights For New Inventions.
1.8 "Patent Rights For Incremental Inventions" means those patent
applications listed on Exhibit A-1, attached hereto and incorporated herein,
that as of the Effective Date are Incremental Inventions as defined in Section
9.4 of the Research Agreement, together with all continuations,
continuations-in-part, divisions, issued patents, patents of addition, patents
of substitution, reissues, renewals, extensions, supplementary protection
certificates and complementary protection certificates of any of the foregoing
throughout the world. Sections 9.3 and 9.4 of the Research Agreement are
attached as Exhibit B hereto and are incorporated into this Agreement.
1.9 "Patent Rights For New Inventions" means those patent
applications listed on Exhibit A-2, attached hereto and incorporated herein,
that as of the Effective Date are New Inventions as defined in Section 9.3 of
the Research Agreement, together with all continuations, continuations-in-part,
divisions, issued patents, patents of addition, patents of substitution,
reissues, renewals, extensions, supplementary protection certificates and
complementary protection certificates of any of the foregoing throughout the
world. Sections 9.3 and 9.4 of the Research Agreement are attached as Exhibit B
hereto and are incorporated into this Agreement.
1.10 "Related Technology" means information, data, know-how, and
protocols generated by or under the direction of Xx. Xxxxxx Xxxxxxxxxx under the
Research Agreement that are directly related to the Patent Rights.
1.11 "Royalty Period" means the partial calendar quarter commencing
on the date on which the first Licensed Product is sold and every complete or
partial calendar quarter thereafter during which either (i) this Agreement
remains in effect or (ii) ANTIGENICS has the right to complete and sell
work-in-progress and inventory of Licensed Products pursuant to Section 9.4.
1.12 "Sublicensee" means any sublicensee of the rights granted
ANTIGENICS by UCONN under this Agreement.
1.13 "Sublicense Revenues" means any payments that ANTIGENICS
receives from a Sublicensee in consideration for a sublicense of the rights
granted ANTIGENICS under this Agreement, including without limitation, [ ** ],
but excluding the following payments: (i) payments made in consideration for the
issuance of equity or debt securities of ANTIGENICS at fair market value, (ii)
equity or debt securities of a Sublicensee issued to ANTIGENICS if acquired by
ANTIGENICS at fair market value, (iii) payments specifically committed to
research, marketing and advertising relating to a Licensed Product, and (iv) any
payment received upon the transfer of Licensed Product to a Sublicensee for
resale by that Sublicensee.
1.14 "Third Party" shall mean a party other than ANTIGENICS, UCONN,
or their respective Affiliates or Sublicensees.
1.15 "Valid Claim" means either (a) a claim of an issued and
unexpired patent included within the Patent Rights which has not been held
permanently revoked, unenforceable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise or (b) a claim of a
pending patent application included within the Patent Rights, which claim was
filed in good faith and has not been finally abandoned or finally disallowed
without the possibility of appeal or refiling of said application.
2. LICENSE GRANTS
2.1 License Grant. UCONN hereby grants to ANTIGENICS an exclusive
royalty-bearing license, with the right to grant sublicenses, under its
Intellectual Property to develop, make, have made, import, use, sell, have sold,
offer for sale, and otherwise exploit Licensed Products throughout the world.
2.2 Rights Retained. UCONN retains the perpetual, royalty-free
right to make, have made and use the Intellectual Property solely for
noncommercial educational and research purposes at UCONN. In no event shall
UCONN transfer Intellectual Property for sale or other distribution to Third
Parties other than educational institutions for non-commercial research and
educational purposes as contemplated herein.
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
2.3 Government Rights. Any license granted to ANTIGENICS under
this Article 2 shall be subject to the rights of the United States Government,
to the extent that the licensed Intellectual Property was, or in the future may
be, funded by the U.S. Government.
3. PAYMENTS TO UCONN
3.1 Payments for License.
(a) Up Front Payment. In consideration for the licenses
granted to ANTIGENICS hereunder, ANTIGENICS shall pay UCONN an up front fee of
[ ** ], payable within thirty (30) days of the Effective Date.
(b) Annual License Fee Maintenance. Starting at the fifth
(5th) anniversary of the Effective Date, ANTIGENICS shall pay UCONN the
following annual license maintenance fees, payable in advance semi-annually,
against which royalties otherwise due UCONN pursuant to Section 3.3 may be
credited:
5th Anniversary: [ ** ]
6th Anniversary: [ ** ]
7th Anniversary: [ ** ]
8th Anniversary: [ ** ]
9th Anniversary &Each
Subsequent Anniversary [ ** ]
3.2 Milestone Payments. ANTIGENICS shall pay UCONN each of the
following non-refundable milestone payments payable within thirty (30) days of
the occurrence of the described events:
Payment Event
------- -----
[ ** ]
3.3 Royalties. ANTIGENICS shall pay to UCONN the following
royalties or percentage of Sublicense Revenues:
(a) ANTIGENICS shall pay UCONN an amount equal to [ ** ] of
Net Sales for Licensed Products covered by a Valid Claim of Patent Rights For
New Inventions, whether or not such Licensed Product(s) is also covered by a
Valid Claim of Patent Rights for Incremental Inventions.
(b) ANTIGENICS shall pay UCONN an amount equal to [ ** ] of
Net Sales for Licensed Products covered by a Valid Claim of Patent Rights For
Incremental Inventions that are dominated by the claims of at least one patent
application or patent licensed by ANTIGENICS from one Third Party, including as
of the Effective Date, without limitation, USSN 09/489,216 filed on January 21,
2000 [Docket # 8449-066].
(c) ANTIGENICS shall pay UCONN an amount equal to [ ** ] of
Net Sales for Licensed Products covered by a Valid Claim of Patent Rights For
Incremental Inventions that are dominated by the claims of patent applications
or patents licensed by ANTIGENICS from two or more Third Parties, including as
of the Effective Date, without limitation, USSN 09/488,393 filed on January 20,
2000 [Docket # 8449-055].
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
(d) ANTIGENICS shall pay UCONN [ ** ] of Sublicense Revenues.
ANTIGENICS agrees to provide UCONN with a copy of the relevant section of each
sublicense to the extent necessary for UCONN to understand and confirm the
source and the calculation of UCONN's share of Sublicense Revenues.
(e) Notwithstanding the foregoing provisions of this Section
3.3, the Parties agree that ANTIGENICS may transfer a reasonable quantity of
sample Licensed Products to Sublicensees for use in training and marketing
without any obligation to pay UCONN royalties or Sublicense Revenues with
respect thereto.
(f) Notwithstanding the above provisions of Section 3.3(b),
with respect to a Licensed Product that is covered by a Valid Claim of U.S.
Patent Application USSN 09/489,216 (Docket # 8449-066) filed January 21, 2000 or
a continuation, continuation-in-part, division, issued patent, patent of
addition, patent of substitution, reissue, renewal, extension, supplementary
protection certificate, or complementary protection certificate of any of the
foregoing throughout the world (collectively termed "the -066 Family"), for each
such Licensed Product, the royalty rate on Net Sales of such Licensed Product
shall be that set forth in Section 3.3(a) if, at the time of first commercial
sale of such Licensed Product: (i) there is at least one issued U.S. patent
within the -066 Family; and (ii) there is no claim within any issued U.S. patent
within the -066 Family that is dominated by a claim of a patent application or
patent licensed by ANTIGENICS from a Third Party. In such instance, such royalty
rate shall be in effect until such time as at least one claim issues within a
U.S. patent within the -066 Family that is dominated by a claim of a patent
application or patent licensed by ANTIGENICS from a Third Party; upon issuance
of such a claim, the royalty rate shall revert to that set forth in Section
3.3(b).
3.4 With Respect to Royalties Due to UCONN and Third Parties. In
the event that the aggregate royalties applicable to Licensed Product covered by
a Valid Claim of Patent Rights for New Inventions payable to UCONN hereunder and
to any Third Parties pursuant to any agreement(s) entered into after the
Effective Date of this Agreement and/or payable to UCONN pursuant to any
separate agreement(s) exceed [ ** ] of the Net Sales of such Licensed Product
in any country, ANTIGENICS may reduce any amounts due UCONN hereunder by the
[ ** ] under such Third Party agreement(s) and/or UCONN agreement(s), provided,
however, that in no event shall the royalties payable hereunder for a Licensed
Product covered by a Valid Claim of Patent Rights for New Inventions be less
than [ ** ] of Net Sales. In the event that ANTIGENICS exercises its right to
reduce royalty payments as provided herein, ANTIGENICS will provide to UCONN a
copy of relevant sections of those Third Party agreements for which royalties
are being [ ** ] to the extent reasonably necessary for UCONN to confirm the
royalty reductions applicable hereunder. UCONN agrees that in the event separate
agreements are entered into by and between UCONN and ANTIGENICS applicable to
Licensed Product, such agreement shall contain reasonable royalty reduction
provisions sufficient to give effect to this Section 3.4., provided that if such
agreement contains a royalty rate on Net Sales of less than [ ** ], that
agreement may or may not contain a royalty reduction provision.
3.5 Payments in U.S. Dollars. All payments due under this
Agreement shall be payable in United States dollars. Conversion of foreign
currency to U.S. dollars shall be made at the rate of exchange at which U.S.
dollars are listed in The Wall Street Journal (or its equivalent if The Wall
Street Journal is no longer being published at the time) on the last business
day of the Royalty Period in which such sales were made.
3.6 No Multiple Royalties. No more than one royalty payment shall
be due with respect to a sale of a unit of a particular Licensed Product. No
multiple royalties shall be payable because any Licensed Product, or its
manufacture, sale or use is covered by more than one Valid Claim in a given
country. No royalty shall be payable under this Article 3 with respect to
Licensed Products distributed without charge to Third Parties for use in
research and/or development, in clinical trials or as promotional samples.
4. DUE DILIGENCE
4.1 ANTIGENICS shall have complete discretion over the
commercialization of Licensed Products. However, ANTIGENICS agrees to use
commercially reasonable diligent efforts to introduce commercial Licensed
Product(s) within and outside of the United States as soon as commercially
reasonable, consistent with sound and reasonable business practices and
judgments.
4.2 ANTIGENICS will provide annual reports to UCONN that describe
progress toward the milestones defined in Article 3.2.
5. PATENT INFRINGEMENT AND ENFORCEMENT
5.1 Notice of Infringement. If, at any time during the term of
this Agreement, either Party becomes aware of an apparent infringement of the
Patent Rights licensed herein, such Party shall promptly notify the other Party.
5.2 Action. ANTIGENICS shall have the right, but not the
obligation, to take any action that it reasonably deems necessary to obtain a
discontinuance of such infringement or to bring suit against the Third Party
infringer. ANTIGENICS shall have the sole right to control such actions at its
own expense, and UCONN shall cooperate with ANTIGENICS with respect thereto. If
UCONN supplies ANTIGENICS with evidence of infringement of the Intellectual
Property, UCONN may, by notice, request ANTIGENICS to take steps to enforce the
Intellectual Property rights. If UCONN does so, and ANTIGENICS does not, within
six (6) months of the receipt of such notice, either (i) cause the infringement
to terminate, or
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
(ii) initiate a legal action against the infringer, UCONN may, upon notice to
ANTIGENICS, take the actions it deems necessary, proper and justified to protect
the Intellectual Property, including initiating an action against the infringer
at UCONN's expense, in the name of UCONN, ANTIGENICS or both as may be required
by law. UCONN shall have sole control of any such action. Notwithstanding the
foregoing, ANTIGENICS shall have the right to sublicense any alleged infringer
pursuant to Section 2.1.
5.3 Cooperation. In the event one Party institutes or carries on a
legal action pursuant to this Article 5, the other Party shall fully cooperate
with and supply all assistance reasonably requested by the Party instituting or
carrying on such action, including by using commercially reasonable efforts to
have its employees testify when requested and to make available relevant
records, papers, information, samples, specimens, and the like. A Party
controlling an action pursuant to this Article 5 shall bear the reasonable
out-of-pocket expenses incurred by said other Party in providing such assistance
and cooperation as is requested pursuant to this Section 5.3. A Party
instituting or carrying on such an action shall keep the other Party informed of
the progress of such action, and said other Party shall be entitled to be
represented by counsel in connection with such action at its own expense.
5.4 Settling or Abandoning Actions. The Party controlling any
action referred to in this Article 5 shall have the right to settle any claims,
but only upon terms and conditions that are reasonably acceptable and agreed to
in writing by the other Party. Should either Party elect to abandon such an
action other than pursuant to a settlement with the alleged infringer that is
reasonably acceptable to the other Party, the Party controlling the action,
shall give timely notice to the other Party who, if it so desires, may continue
the action; provided, however, that the sharing of expenses and any recovery in
such suit shall be as agreed upon between the Parties.
5.5 Allocation of Payments. Any amounts paid to a Party by Third
Parties as the result of any action contemplated in this Article 5 shall first
be applied to reimbursement of the documented unreimbursed out-of-pocket
expenses (including attorneys' fees and expert fees) incurred by each Party. Any
remainder shall be divided between the Parties as follows:
(a) To the extent the remainder of the amount recovered
reflects lost royalties or percentage of Sublicense Revenue to UCONN, ANTIGENICS
shall pay UCONN the lost royalties or percentage of Sublicense Revenue that
would have been due UCONN if sales of Licensed Product had been made by
ANTIGENICS, or a Sublicensee, as the case may be, and ANTIGENICS shall retain
the remainder.
(b) To the extent the remainder of the amount recovered does
not reflect lost royalties or the percentage of Sublicense Revenues otherwise
due UCONN, recovery shall be retained by the Party who brought or defended the
action.
5.6 Declaratory Judgement Actions. If any Third Party initiates a
declaratory judgment action against ANTIGENICS and/or UCONN alleging invalidity
or unenforceability of any patent within the Patent Rights, ANTIGENICS or UCONN
as the case may be, shall provide written notification to the other Party of
such action within five (5) business days of its initiation. ANTIGENICS shall
have the first right to defend such action at its own expense. In such event,
UCONN shall fully cooperate with ANTIGENICS in connection with any such action.
If ANTIGENICS fails to bring such defense within a thirty (30) day period from
written notification of such action, UCONN may elect to take over such action at
its own expense. In such an event, ANTIGENICS shall cooperate fully with UCONN
in connection with any such action.
6. RECORDS, REPORTS AND PAYMENTS
6.1 Books and Records. ANTIGENICS shall keep records and books of
account in respect of all Licensed Products made and sold by ANTIGENICS and/or
Affiliates under this Agreement and of Sublicense Revenues ANTIGENICS receives
directly from Sublicensees. UCONN shall have the right, during business hours,
no more often than annually, to examine, or to have its designated auditors
examine, such records and books. ANTIGENICS shall keep the same for at least
four (4) years after it pays UCONN the royalties due for such Licensed Products.
UCONN shall not disclose to any Third Party any confidential information learned
through an examination of such records and books, nor shall UCONN use any such
information for any purpose other than determining and enforcing its rights
under this Agreement.
6.2 Reports. At the end of each Royalty Period, ANTIGENICS shall
render to UCONN a report in writing, setting forth gross sales, Net Sales and
the number of units of each Licensed Product sold on a country-by-country basis
during that Royalty Period and the Sublicense Revenues ANTIGENICS received
during that Royalty Period. Each such report shall also set forth an explanation
of the calculation of the royalties and percentage of Sublicense Revenue payable
hereunder, shall provide documentation of the amount of any credits allowed and
taken under Articles 3 and shall be accompanied by payment of the royalties and
the percentage of Sublicense Revenue shown by said report to be due UCONN.
6.3 Royalty Escrow Account. Notwithstanding the foregoing, if (i)
UCONN materially breaches this Agreement, (ii) ANTIGENICS gives UCONN written
notice of the breach at least forty-five (45) days prior to the date that such
report, royalties, and percentage of Sublicense Revenues are due to UCONN, and
(iii) UCONN has not cured the breach by the time a payment is due under this
Section, then ANTIGENICS may make the required payment into an escrow account
bearing interest at the prevailing prime rate, such escrowed payments to be
released when the breach is cured.
7. PUBLICATION; CONFIDENTIALITY
7.1 Publications. UCONN shall provide to ANTIGENICS copies of any
proposed presentation or publication or abstract including Intellectual Property
prior to the submission of such documents for presentation or publication. Such
proposed presentations or publications shall be supplied to ANTIGENICS at least
thirty (30) days in advance of presentation or submission to a journal, editor,
or Third Party; abstracts shall be supplied at least seven (7) days in advance
of such submission. ANTIGENICS may request changes and/or deletions be made in
any proposed publication in order to prevent public disclosure of Intellectual
Property or ANTIGENICS confidential information. UCONN agrees that it will honor
ANTIGENICS' requests to remove any confidential information of ANTIGENICS
included in any such proposed public disclosure. If ANTIGENICS believes that the
subject matter to be disclosed or published warrants patent protection,
ANTIGENICS will identify the subject matter requiring protection and notify
UCONN within the thirty (30) day or seven (7) day review period and UCONN shall
delay the proposed public disclosure for an additional sixty (60) day period.
ANTIGENICS may file a patent application covering the technology disclosed in
the proposed publication at the United States Patent and Trademark Office. UCONN
agrees to cooperate in the filing of a U.S. patent application prior to any date
that such material may be publicly disclosed including the electronic
transmission or internet release of the material or presentation of the subject
matter.
7.2 Confidentiality.
(a) All reports provided to UCONN pursuant to this Agreement
shall be marked "CONFIDENTIAL" and treated as the confidential information of
ANTIGENICS and shall not be disclosed to any Third Party without the prior
written consent of ANTIGENICS.
(b) Except as expressly provided herein, each Party agrees not
to disclose any terms of this Agreement to any Third Party without the prior
written consent of the other Party; provided, however, that disclosures may be
made as required by securities or other applicable laws, or, in confidence, to
actual or prospective investors or corporate partners, or to a Party's
accountants, attorneys, and other professional advisors.
(c) UCONN shall have the right to disclose the existence, but
not the business terms, of this Agreement in reports UCONN prepares from time to
time, which reports are considered to be publicly available.
(d) ANTIGENICS agrees not to disclose to any Third Party
Intellectual Property received from UCONN, unless already covered by a pending
U.S. patent application or issued U.S. patent, without the prior written consent
of UCONN; provided, however, that disclosures may be made as required by
securities or other applicable laws, or, in confidence, to actual or prospective
investors or corporate partners, or to ANTIGENICS' accountants, attorneys, and
other professional advisors.
8. PATENT PROSECUTION
8.1 Responsibility. ANTIGENICS, in its sole discretion, is
responsible for preparing, filing, prosecuting, and maintaining the patent
applications and patents included within the Patent Rights. For purposes of this
Agreement, patent prosecution includes appeals, ex parte prosecution,
interference proceedings, reissues, re-examinations, and oppositions. ANTIGENICS
shall provide, or cause its agent to provide, copies of relevant correspondence
between ANTIGENICS and the United States Patent and Trademark Office or the
various foreign patent offices to UCONN and give UCONN reasonable opportunity to
advise ANTIGENICS or ANTIGENICS' counsel on such matters. Upon UCONN's request,
ANTIGENICS shall be available to consult with UCONN on matters relating to
preparing, filing, prosecuting or maintaining any of the applications or patents
within the Patent Rights, which matters may be of particular interest to UCONN.
ANTIGENICS shall reasonably consider the legitimate interests of UCONN in
performing its responsibility under this Section 8.1.
8.2 Cooperation. UCONN and ANTIGENICS shall cooperate in
preparing, filing, prosecuting and maintaining the patent applications and
patents within Patent Rights. Each Party shall provide prompt notice to the
other of any matter that comes to its attention, which may affect the
patentability, validity or enforceability of any patent application or patent
within Patent Rights. UCONN agrees to undertake to cause all of its employees or
others working on its behalf to assign all right, title and interest to licensed
Intellectual Property to UCONN and to make all reasonable efforts to enforce
such agreements.
8.3 Relinquishing Rights. ANTIGENICS may elect not to prosecute or
maintain any of the patents or patent applications relating to the Patent Rights
or any portion thereof in any country, by giving ninety (90) days advance
written notice to UCONN; provided, however, that if ANTIGENICS is making such an
election with respect to any patent or application within Patent Rights on which
an interference proceeding or opposition has been declared or filed, the notice
period is one hundred and eighty (180) days; and provided further, that
ANTIGENICS will remain responsible for all patent-related expenses incurred by
UCONN during the applicable notice period. In the event that ANTIGENICS elects
not to prosecute or maintain any of the patents or patent applications relating
to the Patent Rights or any portion thereof in any country, then UCONN shall
have the right, but not the obligation, at its own expense to prosecute or
maintain such patents or patent applications or portions thereof in such
country. ANTIGENICS' rights to such patents or patent applications or portion
thereof in such country shall thereupon be terminated.
9. TERMINATION
9.1 The term of this Agreement shall commence upon the Effective
Date and expire upon the Expiration Date. UCONN shall have the right to
terminate this Agreement prior to the date it would otherwise expire pursuant to
this Section 9.1 if: (i) ANTIGENICS fails to make any payment due hereunder and
ANTIGENICS continues to fail to make the payment, either to UCONN directly or by
placing any disputed amount into
an interest bearing escrow account to be released when the dispute is resolved,
for a period of thirty (30) days after receiving notice from UCONN specifying
ANTIGENICS' failure to make payment; or (ii) ANTIGENICS shall cease to carry on
its business related to the Intellectual Property or if ANTIGENICS shall
initiate or conduct actions in order to declare a state of bankruptcy which
actions are not dismissed within sixty (60) days.
9.2 If either Party materially breaches this Agreement, the other
Party may elect to give the breaching Party written notice describing the
alleged breach. If the breaching Party has not cured such breach within ninety
(90) days after receipt of such notice, the notifying Party will be entitled, in
addition to any other rights it may have under this Agreement, to terminate this
Agreement effective immediately; provided, however, that if either Party
receives notification from the other of a material breach and if the Party
alleged to be in default notifies the other Party in writing within thirty (30)
days of receipt of such default notice that it disputes the asserted default,
the matter will be submitted to dispute resolution as provided in Article 11 of
this Agreement.
9.3 ANTIGENICS shall have the right to terminate this Agreement
upon 90 days written notice.
9.4 Upon termination by UCONN under Section 9.1 or 9.2, (i)
ANTIGENICS shall have six (6) months to complete the manufacture of any Licensed
Products that then are work in progress and to sell any inventory of Licensed
Products, provided ANTIGENICS pays the applicable royalties in accordance with
Section 6.2, and (ii) UCONN, to the extent that UCONN has the ability and is
legally capable of doing so, shall accept an assignment by ANTIGENICS of any
sublicenses granted by ANTIGENICS to entities other than Affiliates, and any
sublicense so assigned shall remain in full force and effect.
9.5 No termination of this Agreement shall relieve ANTIGENICS of
the liability for payment of any royalty due for Licensed Products made prior to
the effective date of such termination.
9.6 Termination of this Agreement for any reason shall not release
any Party hereto from any liability which, at the time of such termination, has
already accrued to the other Party or which is attributable to a period prior to
such termination, nor preclude either Party from pursuing any rights and
remedies it may have hereunder or at law or in equity which accrued or are based
upon any event occurring prior to such termination.
9.7 Articles 1, 6, Section 7.2 (for a period of five (5) years
after termination), Articles 9, 11, 12, and 13 of this Agreement shall survive
termination of this Agreement for any reason.
10. REPRESENTATIONS, NO IMPLIED AGENCY
10.1 UCONN Representations. UCONN represents that (i) to the best
of its knowledge it owns all right, title and interest in and to the
Intellectual Property subject to this license; (ii) to the best of its knowledge
it has not granted any Third Party, other than the rights of the U.S. government
described in Section 2.3, right or interest in any of the Intellectual Property
and will not grant any Third Party such a right during the term of this
Agreement; (iii) the execution, delivery, and performance of this Agreement have
been duly authorized by all necessary corporate action on the part of UCONN;
(iv) it has the right to grant the rights and licenses granted herein, and, to
the best of its knowledge, the Intellectual Property is free and clear of any
lien, encumbrance, security interest, or restriction; and (v) to the best of its
knowledge, there are no threatened or pending actions, suits, investigations,
claims, or proceedings in any way relating to the Intellectual Property.
10.2 No Implied Agency. UCONN and ANTIGENICS are independent
parties in this Agreement. Accordingly, there is no agency relationship between
UCONN and ANTIGENICS under this Agreement with respect to any products made or
sold, or any methods used, by ANTIGENICS under this Agreement.
11. DISPUTE RESOLUTION
11.1 Dispute. In the event of any dispute, controversy or claim
arising out of or relating to this Agreement or any subsequent amendments to
this Agreement including, without limitation, the breach, termination, validity
or invalidity thereof, or any non-contractual issues relating to this Agreement
(each, a "Dispute"), each of the Parties will appoint a designated officer to
meet for the purpose of endeavoring to resolve such Dispute or to negotiate for
an adjustment to such provision. No formal proceedings for the judicial
resolution of such Dispute, except for the seeking of temporary restraining
orders or injunctions, may begin until this dispute resolution procedure has
been elevated to the Chief Operating Officer, in the case of ANTIGENICS, and the
Associate Vice President for Research Administration, in the case of UCONN, and
either of such officers of UCONN or ANTIGENICS in good faith conclude, after a
good faith attempt to resolve the Dispute, that amicable resolution through
continued negotiation of the matter at issue does not appear likely. Such
attempt to resolve the dispute may be accomplished by conference between such
officers of ANTIGENICS and UCONN, either face-to-face or by telephone, or by the
exchange of correspondence.
11.2 Mediation. If the Parties are unable to reach a solution by
negotiation within a period of 60 days, the Parties agree to try in good faith
to settle the Dispute by mediation administered by the American Arbitration
Association under its Commercial Mediation Rules (the "Rules").
11.3 Statute of Limitations. Any statute of limitations will be
tolled upon initiation of the dispute resolution procedures under this Article
and will remain tolled until the Dispute is resolved in accordance herewith;
provided, however, that tolling will cease if the Party against which the
statute of limitations would be applied fails to observe the procedures set
forth in this Article.
12. PRODUCT LIABILITY
12.1 Indemnification. ANTIGENICS agrees that UCONN shall have no
liability to ANTIGENICS, Sublicensees, or Affiliates or to any purchasers or
users of Licensed Products made or sold by ANTIGENICS, Sublicensees, or
Affiliates for any claims, demands, losses, costs, or damages suffered by
ANTIGENICS, Sublicensees, or Affiliates or purchasers or users of such Licensed
Products, or any other Party, which may result from personal injury, death, or
property damage related to the manufacture, use, or sale of such Licensed
Products ("Claims"). ANTIGENICS agrees to defend, indemnify, and hold harmless
UCONN, its trustees, officers, agents, and employees from any such Claims,
provided that (i) ANTIGENICS is notified promptly of any Claims, (ii) ANTIGENICS
has the sole right to control and defend or settle any litigation within the
scope of this indemnity, (iii) all indemnified parties cooperate to the extent
necessary in the defense of any Claims, and (iv) Claims are not the result of
UCONN's negligence or willful misconduct.
13. MISCELLANEOUS
13.1 No Publicity. ANTIGENICS agrees that it shall not use the name
of UCONN or its employees in any advertising or publicity material regarding a
Licensed Product or for any other purpose, or make any form of representation or
statement which would constitute an express or implied endorsement by UCONN of
any Licensed Product, and that it shall not authorize others to do so, without
first having obtained written approval from UCONN, except as may be required by
governmental law, rule or regulation.
13.2 Marking Licensed Products. ANTIGENICS agrees to xxxx the
appropriate U.S. patent number or numbers on all Licensed Products made or sold
in the United States and, to the extent commercially feasible, on all Licensed
Products made or sold outside of the U.S. in accordance with all applicable
governmental laws, rules and regulations.
13.3 Complete Agreement. This Agreement sets forth the complete
agreement of the Parties concerning the subject matter hereof. No claimed oral
agreement in respect thereto shall be considered as any part hereof. No waiver
of or change in any of the terms hereof subsequent to the execution hereof
claimed to have been made by any representative of either Party shall have any
force or effect unless in writing, signed by duly authorized representatives of
the Parties.
13.4 Binding Effect; Assignment. This Agreement shall be binding
upon and inure to the benefit of any successor or assignee of UCONN. This
Agreement is not assignable by ANTIGENICS without the prior written consent of
UCONN, except that ANTIGENICS may assign this Agreement to an Affiliate or any
successor of, or purchaser of substantially all of the assets of the business to
which this Agreement pertains. Any permitted assignee shall succeed to all of
the rights and obligations of ANTIGENICS under this Agreement.
13.5 Applicable Laws. This Agreement is subject in all respects to
the laws and regulations of the United States of America, including the Export
Administration Act of 1979, as amended, and any regulations thereunder.
13.6 Governing Law. This Agreement shall be deemed to have been
entered into in Connecticut and shall be construed and enforced in accordance
with Connecticut law without regard for any choice or conflict of laws or
principle that would result in the application of the domestic substantive law
of any other jurisdiction.
13.7 Notices. Any notice or communication required or permitted to
be given or made under this Agreement shall be addressed as follows:
UCONN: University of Connecticut Health Center
c/o Center for Science and Technology Commercialization
000 Xxxxxxxxxx Xxx.
Xxxxxxxxxx, XX 00000-0000
Attention: Executive Director
ANTIGENICS: Antigenics, Inc.
000 Xxxxx Xxxxxx, Xxxxx 0000
Xxx Xxxx, X.X. 10111
Attention: Xxxxx Xxxxxxx
Either Party may notify the other in writing of a change of address or
fax number, in which event any subsequent communication relative to
this Agreement shall be sent to the last said notified address or number,
provided, however, that the Parties shall deliver all material notices under
this Agreement by registered mail or overnight delivery service. All notices and
communications relating to this Agreement shall be deemed to have been given
when received.
13.8 NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT,
HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
13.9 Force Majeure. Neither Party shall lose any rights hereunder
or be liable to the other Party for damages or losses (except for payment
obligations) on account of failure of performance by the defaulting Party if the
failure is occasioned by war, strike, fire, Act of God, earthquake, flood,
lockout, labor dispute, labor disturbance, embargo, governmental acts or orders
or restrictions, failure of suppliers, or any other reason where failure to
perform is beyond the reasonable control and not caused by the negligence or
intentional conduct or misconduct of the nonperforming Party, and such Party has
exerted all reasonable efforts to avoid or remedy such force majeure; provided,
however, that in no event shall a Party be required to settle any labor dispute
or disturbance.
13.10 Severability. In the event that any provisions of this
Agreement are determined to be invalid or unenforceable by a court of competent
jurisdiction, the remainder of the Agreement shall remain in full force and
effect without said provision. The Parties shall in good faith negotiate a
substitute clause for any provision declared invalid or unenforceable, which
shall most nearly approximate the intent of the Parties in entering this
Agreement.
13.11 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
13.12 Headings. The headings of the several Sections are inserted
for convenience of reference only and are not intended to be a part of or to
affect the meaning or interpretation of this Agreement.
13.13 Consent. Whenever provision is made in this Agreement for
either Party to secure the consent or approval of the other, that consent or
approval shall not unreasonably be withheld or delayed, and whenever in this
Agreement provisions are made for one Party to object to or disapprove a matter,
such objection or disapproval shall not unreasonably be exercised.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed:
UNIVERSITY OF CONNECTICUT HEALTH CENTER
By: /s/ Xxxxxxx X. Xxxxxxx
-------------------------------------------------------
Name: Xxxxxxx X. Xxxxxxx
Title: Executive Director, Center for Science and Technology Commercialization
Date: 5/25/01
ANTIGENICS, INC.
By: /s/ Xxxxxxx Xxxxxxx
-------------------------------------------------------
Name: Xxxxxxx Xxxxxxx
Title: Chief Operating Officer
Date: 5/24/01
EXHIBIT A-1
PATENT RIGHTS FOR INCREMENTAL INVENTIONS AS OF THE EFFECTIVE DATE
Serial # 09/488,393 filed on January 20, 2000 [Docket # 8449-055]
Complexes of fragments of heat shock/stress proteins and their uses as
immunotherapeutics agents
Serial # 09/489,216 filed on January 21, 2000 [Docket # 8449-066]
Heat Shock/stress protein complexes as vaccines against neurodegenerative
disorders
EXHIBIT A-2
PATENT RIGHTS FOR NEW INVENTIONS AS OF THE EFFECTIVE DATE
Serial # 60/103,115 filed on October 5, 1998 [Docket # 8449-054]
Heat Shock/Stress Protein Cell Surface Receptors and Their Use as
Immunotherapeutic Agents
Serial # 09/166,401 filed on October 5, 1998 [Docket # 8449-057]
Method for Generating CD4+ T cells in Vitro Using Noncovalent Complexes of
Mammalian Heat Shock Protein and Antigenic Molecules
Serial # 09/488,385 filed on January 20, 2000 [Docket # 8449-058]
Novel Costimulatory Molecule Required For Priming of Naive Cytotoxic T Cells in
Vitro.
Serial # 09/489,219 filed on January 21, 2000 [Docket # 8449-065]
Vaccines containing Alzheimer's implicated proteins for treatment of
Alzheimer's disease
Serial # 09/489,215 filed on January 21, 2000 [Docket # 8449-077]
Pharmaceutical compositions comprising antigens associated with Alzheimer's
disease
Serial # 60/209,266 filed on June 2, 2000 [Docket # 8449-121]
Complexes of alpha (2) macroglubulin and antigenic molecules for immunotherapy
Serial # 09/625,137 filed on July 25, 2000 [Docket # 8449-123]
Alpha (2) macroglubulin receptor as a heat shock protein receptor and uses
thereof
EXHIBIT B
Sections 9.3 and 9.4 of the Research Agreement between Antigenics,
University of Connecticut Health Center, and Xxxxxx Xxxxxxxxxx, Ph.D.
9.3 For new inventions, other than incremental improvements which are
dominated by existing patents or pending patent applications for which
Sponsor holds a license, UCHC agrees to grant and hereby grants to
Sponsor an option to secure a royalty-bearing exclusive license,
including the right to grant sublicenses, under reasonable terms with
the right to make, use and sell, have made, have used, import and offer
for sale the claimed invention of any patent or patent application
which is base on any invention conceived or reduced to practice in the
conduct of the Project, subject to Article 9.1 above. The license (and
all sublicenses) will include a royalty rate in an amount to be
negotiated in good faith by both UCHC and Sponsor at the time Sponsor
decides to exercise its option and shall remain in effect until the
expiration of the last to expire patents licensed to Sponsor. Such
option shall be in effect and exercisable for each invention within one
hundred and eighty (180) days from the date of filing a U.S. patent
application on each such invention. Upon exercise of such option, the
terms and conditions of the license will be negotiated in good faith by
the parties. In the absence of agreement within six (6) months from the
date of exercise of such option, which time shall be extended upon
mutual written agreement, the dispute shall be submitted to a mutually
acceptable third-party mediator, which period of mediation shall not
exceed 90 days or such longer period as may be mutually acceptable to
the parties.
9.3 For inventions which are incremental improvements dominated by existing
patents or pending patent applications for which Sponsor holds a
license, UCHC agrees to grant and hereby grants to Sponsor an option to
secure a royalty-bearing exclusive license with the right to make, use
and sell, have made, have used, import and offer for sale the claimed
invention conceived or reduced to practice in the conduct of the
Project. Such option shall be in effect and exercisable for each
invention within one hundred and eighty (180) days from the date of
filing a U.S. patent application on each such invention. In the case of
Licensed Products that incorporate the UCHC Technology but are
dominated by patent applications licensed by Sponsor from one other
third party, Sponsor shall pay UCHC a royalty calculated at the rate of
[ ** ] of Net Sales of Licensed Products. In the case of Licensed
Products that incorporate the UCHC Technology but are dominated by
patent applications licensed by Sponsor from two or more third parties,
Sponsor shall pay UCHC a royalty calculated at the rate of [ ** ] of
Net Sales of Licensed Products. Upon exercise of such option, the
remaining terms and conditions of the license will be negotiated in
good faith by the parties. In the absence of agreement within six (6)
months from the date of exercise of such option, which time shall be
extended upon mutual written agreement, the dispute shall be submitted
to a mutually acceptable third-party mediator, which period of
mediation shall not exceed 90 days.
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
AMENDMENT AGREEMENT
This Amendment Agreement is effective as of the 18th day of March 2003
(the "Effective Date") between the UNIVERSITY OF CONNECTICUT HEALTH CENTER
having a place of business at the Center for Science and Technology
Commercialization, 000 Xxxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxxx,
00000-0000("XXXXX") and ANTIGENICS, INC. having offices at 000 Xxxxx Xxxxxx,
Xxxxx #0000, Xxx Xxxx, XX 00000 ("ANTIGENICS") (each a "Party" and collectively
the "Parties").
RECITALS
WHEREAS, UCONN has been engaged in certain research pursuant to a
separate Research Agreement by and between UCONN and ANTIGENICS dated February
18, 1998 as amended by Amendment No. 1 of Research Agreement dated April 19,
2002 (the "Research Agreement");
WHEREAS, pursuant to the Research Agreement, ANTIGENICS obtained an
option for an exclusive license to inventions arising under the research
activities contemplated therein;
WHEREAS, ANTIGENICS exercised said option and obtained an exclusive
license with respect to certain inventions pursuant to the License Agreement
dated May 25, 2001 between the Parties (the "License Agreement"); and
WHEREAS, ANTIGENICS AND UCONN wish to amend the Research Agreement and
License Agreement to provide, among other things, that inventions under the
Research Agreement for which ANTIGENICS exercises its option thereunder, shall
automatically be included within the License Agreement, without the need for the
Parties to further negotiate financial or other licensing terms.
NOW, THEREFORE, ANTIGENICS and UCONN agree as follows:
1. Section 1.8 of the License Agreement is hereby amended by deleting it in
its entirety and replacing it with the following:
"Patent Rights For Incremental Inventions" means (i) the
patents and patent applications listed on Exhibit A-1 attached
hereto and incorporated herein by reference, (ii) any and all
future incremental inventions as described in Section 9.4 of
the Research Agreement for which ANTIGENICS exercises its
option, in each case together with all continuations,
continuations-in-part, divisions, issued patents, patents of
addition, patents of substitution, reissues, renewals,
extensions, supplementary protection certificates and
complementary protection certificates of any of the foregoing
throughout the world.
2. Section 1.9 of the License Agreement is hereby amended by deleting it in
its entirety and replacing it with the following:
"Patent Rights For New Inventions" means (i) the patents and
patent applications listed on Exhibit A-2 attached hereto and
incorporated herein by reference, (ii) any and all future new
inventions as described in Section 9.3 of the Research
Agreement for which ANTIGENICS exercises its option, in each
case together with all continuations, continuations-in-part,
divisions, issued patents, patents of addition, patents of
substitution, reissues, renewals, extensions, supplementary
protection certificates and complementary protection
certificates of any of the foregoing throughout the world.
3. Exhibit A-1 of the License Agreement is hereby amended by adding the
following list:
ADDITIONAL PATENT RIGHTS FOR INCREMENTAL INVENTIONS AS OF THE
EFFECTIVE DATE OF THE AMENDMENT AGREEMENT
Serial # PCT/US01/28840 filed on September 15, 2000
[Docket # 8449-072 old;
0000-000-000 new]
Improved therapeutic formulations using heat shock/stress protein-peptide
complexes.
Serial # 10/255,367 filed on December 6, 2001 [Docket # 8449-195]
Compositions comprising heat shock proteins or alpha 2 macroglobulin for the
treatment of cancer and infectious diseases.
Serial # 60/377,483 filed on May 2, 2002 [Docket # 8449-202]
Use of heat shock proteins to enhance efficacy of antibody therapeutics.
Serial # 60/377,484 filed on May 2, 2002 [Docket # 8449-206]
Using heat shock proteins and alpha 2 macroglobulins to increase immune
response to vaccines comprising heat shock protein-peptide complexes or alpha 2
macroglobulin complexes.
Serial # 10/131,961 filed on May 25, 2002 [Docket # 8449-209]
Using heat shock proteins to improve the therapeutic benefit of a non-vaccine
treatment modality.
4. The Parties acknowledge and agree that each of the patent applications
within the Patent Rights For Incremental Inventions listed in paragraph 3
above are dominated by the claims of patent applications or patents of two
or more Third Parties, and are therefore subject to Section 3.3(c) of the
License Agreement (rather than Section 3.3(b) of the License Agreement).
5. Exhibit A-2 of the License Agreement is hereby amended by adding the
following list:
ADDITIONAL PATENT RIGHTS FOR NEW INVENTIONS AS OF THE
EFFECTIVE DATE OF THE AMENDMENT AGREEMENT
Serial # 09/693,643 filed on October 20, 2000 [Docket # 8449-073]
Using heat shock proteins to increase immune response.
Serial # PCT/US01/28841 filed on September 15, 2000
[Docket # 8449--078 old;
0000-000-000 new]
Compositions and methods for prevention and treatment of primary and metastatic
neoplastic diseases and infectious diseases with compositions comprising
unfractionated cystolic soluble proteins.
Serial # 09/750,973 filed on December 28, 2000 [Docket # 8449-133]
CD 36 as an HSP receptor and uses thereof
6. Exhibit B of the License Agreement is hereby deleted in its entirety.
7. Section 9.3 of the Research Agreement is hereby amended by deleting it in
its entirety and replacing it with the following:
9.3 For new inventions, other than incremental
improvements which are dominated by existing patents or
pending patent applications for which the Sponsor holds a
license, UCHC agrees to grant and hereby grants to Sponsor an
option to secure a royalty-bearing exclusive license,
including the right to grant sublicenses, under reasonable
terms (pursuant to the License Agreement as set forth herein,
or as otherwise agreed to by the Parties in any subsequent
written agreement between the Parties) with the right to make,
use and sell, have made, have used, import and offer for sale
the claimed invention of any patent or patent application
which is based on any invention conceived or reduced to
practice in the conduct of the Project. Such option shall be
in effect and exercisable for each new invention hereunder
within one hundred and eighty (180) days from the date of
filing a U.S. patent application on each such invention. Upon
Sponsor exercising its option, such invention shall
automatically be licensed to Sponsor under the License
Agreement and the Patent Rights therein shall automatically be
included as Patent Rights For New Inventions under the License
Agreement.
8. Section 9.4 of the Research Agreement is hereby amended by deleting it in
its entirety and replacing it with the following:
9.4 For inventions which are incremental improvements
dominated by existing patents or pending patent applications
for which the Sponsor holds a license, UCHC agrees to grant
and hereby grants to Sponsor an option to secure a
royalty-bearing exclusive license, including the right to
grant sublicenses, under reasonable terms (pursuant to the
License Agreement as set forth herein, or as otherwise agreed
to by the Parties in any subsequent written agreement between
the Parties) with the right to make, use and sell, have made,
have used, import and offer for sale the claimed invention of
any patent or patent application which is based on any
invention conceived or reduced to practice in the conduct of
the Project. Such option shall be in effect and exercisable
for each incremental invention hereunder within one hundred
and eighty (180) days from the date of filing a U.S. patent
application on each such invention. Upon Sponsor exercising
its option, such invention shall automatically be licensed to
Sponsor under the License Agreement and the Patent Rights
therein shall automatically be included as Patent Rights For
Incremental Inventions under the License Agreement. For the
avoidance of doubt, the Parties acknowledge and agree that in
the case of Licensed Products covered by a Valid Claim (as
defined in the License Agreement, or any subsequent written
agreement between the Parties) of the Patent Rights For
Incremental Inventions (as defined in paragraph 1 of this
Amendment Agreement) that are dominated by patents or patent
applications licensed by Sponsor from one other third party,
Sponsor shall pay UCHC a royalty calculated at a rate of
[ ** ] of Net Sales of Licensed Products, and in the case of
Licensed Products covered by a Valid Claim of the Patent
Rights For Incremental Inventions that are dominated by
patents or patent applications licensed by Sponsor from two or
more third parties, Sponsor shall pay UCHC a royalty
calculated at a rate of [ ** ] of Net Sales of Licensed
Products.
9. In consideration of the execution of this Amendment Agreement and the
rights and licenses granted to ANTIGENICS hereunder, ANTIGENICS shall make
the following payments to UCONN:
(a) In consideration for the rights and licenses granted to
ANTIGENICS to the Patent Rights listed in paragraphs 3 and 5
above, ANTIGENICS shall pay UCONN [ ** ] within thirty
(30) days of the Effective Date.
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
(b) In addition, ANTIGENICS shall pay UCONN the following amounts within
thirty (30) days of exercising its option to license pursuant to
Section 9.3 or 9.4 of the Research Agreement (as amended by this
Amendment Agreement) and any future extensions and amendments thereof:
(a) [ ** ] per patent application for each of the next ten (10)
additional patent applications filed for which ANTIGENICS exercises
its option (above the eight patent applications listed in paragraphs 3
and 5 above), (b) [ ** ] per patent application for each of the next
ten (10) additional patent applications filed for which ANTIGENICS
exercises its option, (c) [ ** ] for each of the next ten (10)
additional patent application filed for which ANTIGENICS exercises its
option, (d) [ ** ] for each of the next ten (10) additional patent
application filed for which ANTIGENICS exercises its option, and (e)
[ ** ] for each additional patent application filed for which
ANTIGENICS exercises its option. For the purposes of this paragraph
9(b), the Parties agree that the number of patent applications for
which payments are payable to UCONN shall be based on the number of
patent applications included in each notice ANTIGENICS sends to UCONN
to exercise its (ANTIGENICS') option rights.
(c) For the avoidance of doubt, the Parties acknowledge and agree that in
the event ANTIGENICS makes a payment pursuant to paragraph 9(a) or
9(b) above for a provisional patent application within the Patent
Rights, no payment shall thereafter be due pursuant to paragraph 9(a)
or 9(b) above on a subsequent non-provisional patent application
claiming priority to such provisional application.
(d) ANTIGENICS agrees that each time it notifies UCONN that it is
exercising its option rights under Section 9.3 or 9.4 of the Research
Agreement, it will send a copy of such notice to UCONN's Center for
Science and Technology Commercialization at the address given in
Section 13.7 of the License Agreement.
10. Section 13.7 of the License Agreement is hereby amended by deleting the
reference to "Xxxxx Xxxxxxx" and replacing it with "Chief Executive
Officer."
11. Capitalized terms not defined herein shall be deemed to have the meaning
set forth in the License Agreement.
12. This Amendment Agreement shall be deemed to have been entered into in
Connecticut and shall be construed and enforced in accordance with
Connecticut law without regard for any choice or conflict of laws or
principle that would result in the application of the domestic substantive
law of any other jurisdiction.
13. Except as set forth in this Amendment Agreement, the Research Agreement and
the License Agreement shall remain in full force and effect.
14. This Amendment Agreement may be executed in two or more counterparts, each
of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
[ ** ] Portions of this exhibit have been omitted pursuant to a confidential
treatment request. An unredacted version of this exhibit has been
filed with the Commission.
IN WITNESS WHEREOF, the Parties have caused this Amendment Agreement to be
executed:
UNIVERSITY OF CONNECTICUT HEALTH CENTER
By: /s/ Xxxxxxx Xxxxxxx
-------------------
Name: Xxxxxxx X. Xxxxxxx
------------------
Title: Executive Director, Center for Science and Technology Commercialization
-----------------------------------------------------------------------
Date: March 21, 2003
--------------
By: /s/ Xxxxxxx X. Xxxxxxxxxx
-------------------------
Name: Xxxxxxx X. Xxxxxxxxxx
---------------------
Title: Associate Vice President for Research Administration
----------------------------------------------------
Date: 3/27/03
-------
ANTIGENICS, INC.
By: /s/ Xxxxxxx Xxxxxxx
-------------------
Name: Xxxxxxx Xxxxxxx
---------------
Title: Chief Operating Officer
-----------------------
Date: March 19, 2003
--------------
