Exhibit 10.29
LICENSE AGREEMENT
by and between
TRUSTEES OF BOSTON UNIVERSITY
and
SCRIPTGEN PHARMACEUTICALS, INC.
January 1, 1998
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE
CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY
[***]. THE CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION.
LICENSE AGREEMENT
-----------------
This agreement ("AGREEMENT") is made as of January 1, 1998 ("EFFECTIVE
DATE"), by and between TRUSTEES OF BOSTON UNIVERSITY (hereinafter referred to as
"UNIVERSITY"), a corporation duly organized and existing under the laws of the
Commonwealth of Massachusetts and having a principal office at 000 Xxx Xxxxx
Xxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 and Scriptgen Pharmaceuticals, Inc.,
(hereinafter referred to as "LICENSEE"), a corporation duly organized and
existing under the laws of the State of Delaware having a principal place of
business at 000 Xxxxxx Xxxxxx Xxxxxxx, XX 00000
WHEREAS, UNIVERSITY and LICENSEE entered into a sponsored research
agreement ("SPONSORED RESEARCH AGREEMENT"), pursuant to which LICENSEE was
granted an exclusive option to an exclusive license to any inventions which
resulted from the research; and
WHEREAS, UNIVERSITY and LICENSEE warrant that they are co-owners by
assignment of an invention entitled [ * * * ] more fully described in EXHIBIT
A, having [ * * * ] which resulted from the SPONSORED RESEARCH AGREEMENT; and
WHEREAS, LICENSEE now wishes to exercise its OPTION and obtain a license to
UNIVERSITY'S undivided interest in PATENT RIGHTS rights upon the terms and
conditions hereinafter set forth; and
WHEREAS, UNIVERSITY desires to have such rights utilized to promote the
public interest by granting a license hereunder; and
WHEREAS, LICENSEE has represented to UNIVERSITY, in order to induce
UNIVERSITY to enter into this AGREEMENT, that LICENSEE has the strategic
commitment to commercialize such technology; and
NOW, THEREFORE, in consideration of the mutual promises and covenants
herein contained and other good and valuable consideration, the receipt of which
is acknowledged, the parties agree as follows:
ARTICLE I -- DEFINITIONS
------------------------
1.1 "FIELD OF USE" shall mean all uses.
1.2 "LICENSED PRODUCT(s)" shall mean any product or part thereof, process, or
service:
(a) the manufacture, use or sale of which, but for the license granted
hereunder, would infringe any issued, unexpired claim or a pending
claim contained in the PATENT RIGHTS; or
(b) which is employed to practice a process which, but for the license
granted hereunder, would infringe any issued, unexpired claim or a
pending claim contained in the PATENT RIGHTS in the country in which
any LICENSED PROCESS is used or in which such product or part thereof
is used or sold.
1.3 "LICENSED PROCESS" shall mean any process which is covered in whole or in
part by an issued, unexpired claim or a pending claim contained in the
PATENT RIGHTS.
1.4 "LICENSEE" shall include any related company of Scriptgen Pharmaceuticals,
Inc., the voting stock of which is directly or indirectly at least fifty
percent (50%) owned or controlled by Scriptgen Pharmaceuticals, Inc., any
organization which directly or indirectly controls more than fifty percent
(50%) of the voting stock of Scriptgen Pharmaceuticals, Inc., and any
organization, the majority ownership of which is directly or indirectly
common to the ownership of Scriptgen Pharmaceuticals, Inc.
1.5 "NET SALES" shall mean all amounts billed or invoiced by LICENSEE or a
sublicensee for LICENSED PRODUCTS, less the following:
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(a) allowances and adjustments customary in the trade separately and
actually credited to customers for spoiled, damaged, outdated, and
returned LICENSED PRODUCTS(s);
(b) transportation charges or allowances actually paid or granted;
(c) trade, quantity, cash or other discounts customary in the trade, if
any, allowed and paid by LICENSEE to independent parties in
arms-length transactions;
(d) credits or allowances made or given on account of rejects, returns or
retroactive price reductions;
(e) any tax or governmental charge directly on sale or transportation, use
or delivery of products paid by LICENSEE and not recovered from the
purchaser.
1.6 "PATENT RIGHTS" shall mean UNIVERSITY's undivided interest in the following
intellectual property:
(a) the United States and foreign patents and/or patent applications
listed in EXHIBIT A and B;
(b) United States and foreign patents issued from the applications listed
in EXHIBIT A and B and from divisionals and continuations of these
applications;
(c) claims of U.S. and foreign continuationinpart applications, and of the
resulting patents, which are directed to subject matter specifically
described in the U.S. and foreign applications listed in EXHIBIT A and
B;
(d) claims of all foreign patent applications, and of the resulting
patents, which are directed to subject matter specifically described
in the United States patents and/or patent applications described in
(a), (b) or (c) above; and
(e) any reissues of United States patents described in (a), (b) or (c)
above.
1.7 "TECHNOLOGY" shall mean any know-how, procedure, method, technique,
clinical data, technical data and the like which are owned or controlled by
UNIVERSITY, have been or can be documented as such in writing, and which
directly relate to the LICENSED PRODUCTS LICENSED PRODCESS and/or PATENT
RIGHTS, but which are not the subject of the PATENT RIGHTS.
1.8 "TERRITORY" shall mean worldwide.
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ARTICLE II -- GRANT
-------------------
2.1 UNIVERSITY hereby grants to LICENSEE, subject to all the terms and
conditions of this AGREEMENT the exclusive right and license under the
PATENT RIGHTS and TECHNOLOGY to make, have made, import, use, lease and/or
sell LICENSED PRODUCT(s) for use in the FIELD OF USE within the TERRITORY.
2.2 UNIVERSITY hereby grants to LICENSEE, subject to all the terms and
conditions of this AGREEMENT, the nonexclusive right and license to use the
TECHNOLOGY in the FIELD OF USE within the TERRITORY under the PATENT RIGHTS
and TECHNOLOGY. TECHNOLOGY that is independently utilized by an independent
third party and that results in the manufacture of LICENSED PRODUCTS that
are not covered by a valid claim of PATENT RIGHTS, shall not cause
UNIVERSITY to be liable to LICENSEE for failure of UNIVERSITY to provide
exclusivity to LICENSEE.
2.3 Notwithstanding the provision of Section , UNIVERSITY shall retain the
right to practice under the PATENT RIGHTS solely for its own noncommercial
research.
2.4 LICENSEE agrees that LICENSED PRODUCTS leased or sold in the United States
shall be manufactured substantially in the United States, whether leased or
sold by LICENSEE or a sublicensee.
2.5 LICENSEE shall also have the right to grant exclusive or non-exclusive
sublicenses for the rights privileges and licenses granted hereunder;
provided, however, that LICENSEE shall remain primarily responsible for the
performance of all obligations herein.
2.6 LICENSEE hereby agrees that every sublicensing agreement to which it shall
be a part and which shall relate to the rights, privileges and license
granted hereunder shall contain a statement setting forth the date upon
which LICENSEE's exclusive rights, privileges and license hereunder shall
terminate.
2.7 LICENSEE shall furnish to UNIVERSITY a true and complete copy of each
sublicense agreement and each amendment thereto, promptly after the
sublicense or amendment has been executed and delivered.
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2.8 LICENSEE agrees that any sublicenses granted by it shall provide that the
obligations to UNIVERSITY of ARTICLE II, Section 4.5 and 4.6,ARTICLE V,
ARTICLE VII, ARTICLE VIII, ARTICLE IX,
2.9 ARTICLE XI, ARTICLE XII, ARTICLE XIII and ARTICLE XIV of this Agreement
shall be binding upon the sublicensee as if it were a party to this
Agreement. LICENSEE further agrees to attach copies of these ARTICLES and
Sections to sublicense agreements.
2.10 LICENSEE shall not receive from sublicensees anything of material value in
lieu of royalties on sales under any sublicense under this Agreement,
without the express prior written permission of UNIVERSITY.
2.11 The license granted hereunder shall not be construed to confer any rights
upon LICENSEE by implication, estoppel or otherwise as to any technology
not specifically set forth in EXHIBITS A and B hereof or of any technology
which does not constitute TECHNOLOGY.
ARTICLE III -- DUE DILIGENCE
----------------------------
3.1 LICENSEE agrees to use best efforts to effect introduction of the use of
the LICENSED PRODUCTS(s) into the United States commercial market as soon
as practical, consistent with sound and reasonable business practices and
judgments.
3.2 UNIVERSITY shall have the right, at any time after [ * * * ] from the
date of this AGREEMENT, to terminate the exclusivity and sublicensing
provisions of this AGREEMENT if LICENSEE within [ * * * ] after
written notice from UNIVERSITY of such intended termination of exclusivity
fails to provide written evidence that it has commercialized or is actively
attempting to commercialize the use of LICENSED PRODUCTS(s). UNIVERSITY
shall have the further right at any time after [ * * * ] from the
date of this AGREEMENT to terminate the AGREEMENT in its entirety if
LICENSEE within [ * * * ] after written notice from UNIVERSITY of
such intended termination fails to provide written evidence that it has
commercialized or is actively attempting to commercialize LICENSED
PRODUCTS(s). Evidence that LICENSEE has an ongoing and active research
program or marketing program, as appropriate, directed toward development,
production or sale of such product under the
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license shall be deemed satisfactory evidence. If LICENSEE has failed to
raise funding necessary to pursue an active research program or marketing
program, as appropriate, directed toward development, production or sale of
such product, whether raising of such funding is specified as a milestone
event pursuant to Section or not, UNIVERSITY may invoke the provisions of
this Section 3.2.
ARTICLE IV -- ROYALTIES AND PAYMENTS
------------------------------------
4.1 In partial consideration for the license granted hereunder, LICENSEE agrees
to pay UNIVERSITY [ * * * ] upon execution of this AGREEMENT.
4.2 In consideration of the license herein granted, LICENSEE agrees to pay
UNIVERSITY an earned royalty equal to [ * * * ] of NET
SALES by LICENSEE or its sublicensees with respect to sales of LICENSED
PRODUCTS for the [ * * * ] in which the LICENSED PRODUCTS(s) are first
sold and [ * * * ] thereafter. The obligation of LICENSEE to pay
royalties to UNIVERSITY shall terminate on a country-by-country basis at
such time as no pending patent applications or unexpired patents remain in
the PATENT RIGHTS.
4.3 In the event that a LICENSED PRODUCT under this AGREEMENT is sold in a
combination package or kit containing other active products, then NET SALES
for purposes of determining royalty payments on the combination package
shall be calculated using one of the following methods, but in no event
shall the royalties payable to UNIVERSITY be reduced to less than
[ * * * ] of that provided for in Section 4.2 hereof:
(a) By multiplying the net selling price of that combination package by
the fraction A/A+B, where A is the current gross selling price, during
the royalty-paying period in question, of the LICENSED PRODUCT sold
separately, and B is the gross selling price, during the royalty
period in question, of the other active products sold separately; or
(b) In the event that no such separate sales are made of the LICENSED
PRODUCT or any of the active products in such combination package
during the royalty-paying period in question, NET SALES for the
purposes of determining royalty payments, shall be calculated by
dividing the net selling price of the combination package by the
number of functions performed by the combination package sold
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where such package contains active agents other than those licensed
under this AGREEMENT.
4.4 Only a single royalty shall be paid with respect to any LICENSED PRODUCT
irrespective of the number of claims of PATENT RIGHTS utilized.
4.5 Within [ * * * ] after March 31, June 30, September 30 and
December 31 of each year in which this AGREEMENT is in effect, LICENSEE
shall deliver to UNIVERSITY full, true and accurate reports of its
activities and those of its sublicensee(s), if any, relating to this
AGREEMENT during the preceding three month period. These reports shall
include at least the following:
(a) number of LICENSED PRODUCTS manufactured and sold;
(b) total xxxxxxxx for LICENSED PRODUCTS sold; where applicable,
(c) deductions applicable to a determination of NET SALES;
(d) total royalties due;
(e) activities of LICENSEE directed toward promoting the sale and use of
LICENSED PRODUCTS.
4.6 LICENSEE shall keep (or cause to be kept) and maintain complete and
accurate records of its sales of the LICENSED PRODUCTS(s) in accordance
with generally accepted accounting procedures. Such records shall be
accessible to an authorized representative selected and paid for by
UNIVERSITY and acceptable to LICENSEE, not more than [ * * * ] at any
reasonable time during business hours until [ * * * ] after the end
of the royalty period to which such records relate, for the purpose of
verifying NET SALES and any royalty due thereon. Such representative shall
disclose to UNIVERSITY only information relating to the accuracy of the
records kept and the payments made, and shall be under a duty to keep
confidential any other information gleaned from such records. Any
adjustment in the amount of royalties due the UNIVERSITY on account of
overpayment or underpayment of royalties shall be made at the next date
when royalty payments are to be made to the UNIVERSITY under Section 4.5
herein. If the verification on behalf of the UNIVERSITY results in an
upward adjustment of greater than [ * * * ] of royalties due to the
UNIVERSITY for the period of time in question, LICENSEE shall pay the
out-of-pocket expenses of the UNIVERSITY relating to such verification.
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4.7 On or before the [ * * * ] following the close of LICENSEE's
fiscal year, LICENSEE shall provide UNIVERSITY with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum,
a balance sheet and an operating statement.
4.8 All moneys to be paid to UNIVERSITY shall be made and computed in United
States Dollars, and LICENSEE shall use its best efforts to convert royalty
payments payable on NET SALES in any country to United States Dollars;
provided, however, that if conversion to and transfer of Dollars cannot be
made by LICENSEE in any country for any reason, LICENSEE may pay such sums
in the currency of the country in which such sales are made, deposited in
UNIVERSITY's name in a bank designated by UNIVERSITY in any such country.
The rate of exchange of local currencies to United States Dollars shall be
at the rate of exchange prevailing at the Bank of Boston on the day such
payment is made pursuant to the periods specified in Section .
4.9 In the event that any payment due hereunder is not made when due, the
payment shall accrue interest beginning on the first day following the due
date as herein specified, calculated at the annual rate of the sum of (a)
[ * * * ] plus (b) the prime interest rate quoted by the Bank of
Boston on the date said payment is due, the interest being compounded on
the last day of each calendar quarter, provided that in no event shall said
annual rate exceed the maximum legal interest rate in Massachusetts. The
payment of such interest shall not foreclose UNIVERSITY from exercising any
other rights it may have as a consequence of any overdue payment.
ARTICLE V -- WARRANTIES, LIMITATIONS, AND REGULATIONS
-----------------------------------------------------
5.1 Nothing herein contained shall be construed by either party hereto as a
guarantee or warranty on the part of the other party with respect to the
results to be obtained by use of the inventions, patented or otherwise, or
TECHNOLOGY licensed hereunder.
5.2 UNIVERSITY shall not be obligated to defend or save harmless LICENSEE or
any other person against any suit, damage, claim, or demand based on actual
or alleged infringement of any patent or other rights owned by a third
party, or any unfair trade practice resulting from the exercise or use of
any right or license granted hereunder.
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5.3 UNIVERSITY MAKES NO WARRANTY, EXPRESS OR IMPLIED (OTHER THAN THIS AGREEMENT
HAS BEEN DULY EXECUTED BY IT AND THAT THIS AGREEMENT CONSTITUTES
UNIVERSITY'S DINDING AND ENFORCEABLE OBLIGATION), INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR OF FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO ANY PATENT, TRADEMARK, SOFTWARE,
NONPUBLIC OR OTHER INFORMATION, OR TANGIBLE RESEARCH PROPERTY, LICENSED OR
OTHERWISE PROVIDED TO LICENSEE HEREUNDER AND HEREBY DISCLAIMS THE SAME.
5.4 UNIVERSITY DOES NOT WARRANT THE VALIDITY OF PATENT RIGHTS LICENSED
HEREUNDER AND MAKES NO REPRESENTATION WHATSOEVER WITH REGARD TO THE SCOPE
OF THE PATENT RIGHTS OR THAT SUCH PATENT RIGHTS MAY BE EXPLOITED BY
LICENSEE OR ANY SUBLICENSEE WITHOUT INFRINGING OTHER PATENTS. IF
BIOLOGICAL MATERIALS ARE LICENSED HEREUNDER, UNIVERSITY MAKES NO
REPRESENTATION THAT SUCH MATERIALS OR THE METHODS USED IN MAKING OR USING
SUCH MATERIALS ARE FREE FROM LIABILITY FOR PATENT INFRINGEMENT.
5.5 LICENSEE agrees to hold UNIVERSITY, its Trustees, officers, and employees
harmless against all liabilities, demands, damages, expenses, and losses
arising out of use by LICENSEE or its sublicensee(s) of LICENSED PRODUCT(s)
including without limitation the licensing, sale, or other distribution of
LICENSED PRODUCTS(s). LICENSEE agrees to require its sublicensee(s) to
hold UNIVERSITY harmless.
5.6 LICENSEE and its sublicensee(s) agree to comply with all regulations and
safety standards of government agencies such as the FDA.
5.7 LICENSEE shall defend, indemnify and hold harmless UNIVERSITY, and its
trustees, officers, employees and agents and their respective successors,
heirs and assigns (the "INDEMNITEES"), against any and all liability,
damage, loss or expense (including reasonable attorneys' fees and expenses
of litigation) that may be incurred by or imposed upon the INDEMNITEES, or
any of them, in connection with any claim, suit, demand, action or judgment
arising out of the following:
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(a) the design, production, manufacture, sale, use in commerce, lease or
promotion by LICENSEE or by an Affiliate or sublicensee of LICENSEE of
any product, process or service relating to or developed pursuant to
this AGREEMENT; or
(b) any other activities of LICENSEE or a sublicensee to be carried out
pursuant to this AGREEMENT.
LICENSEE's indemnity under (a) shall apply to any liability, damage, loss
or expense whether or not it is attributable to the negligent activities of
the INDEMNITEES. LICENSEE's indemnification under (b) shall not apply to
any liability, damage, loss or expense to the extent that it is
attributable to the negligence or willful misconduct of the INDEMNITEES.
5.8 At such time as any product, process or service relating to, or developed
pursuant to, this AGREEMENT is being commercially distributed or sold
(other than for the purpose of obtaining regulatory approvals) by LICENSEE
or a sublicensee, LICENSEE shall at its sole expense, procure and maintain
policies of comprehensive general liability insurance in amounts not less
than [ * * * ] and naming the INDEMNITEES as additional insureds. Such
comprehensive general liability insurance shall provide (i) product
liability coverage and (ii) broad form contractual liability coverage for
LICENSEE's indemnification under Section 5.5 of this AGREEMENT. LICENSEE
shall provide UNIVERSITY with written evidence of such insurance upon
request of UNIVERSITY. LICENSEE shall provide UNIVERSITY with written
notice at least [ * * * ] prior to the cancellation, non-renewal or
material change in such insurance; if LICENSEE does not obtain replacement
insurance providing comparable coverage within such [ * * * ] period,
UNIVERSITY shall have the right to terminate this AGREEMENT effective at
the end of such [ * * * ] period without notice or any additional waiting
periods. In the event the product liability coverage aforesaid is not
occurrence liability, LICENSEE shall maintain such comprehensive general
liability insurance for a reasonable period of not less than [ * * * ]
after it has ceased commercial distribution or use of any product, process
or service relating to, or developed pursuant to, this AGREEMENT. If
LICENSEE is unable to obtain the required amounts of insurance at
commercially reasonable rates, UNIVERSITY will cooperate with LICENSEE to
either obtain a waiver of this provision, assist in identifying a carrier
to provide such insurance at commercially reasonable rates, or identify a
program for self-insurance or other alternative measures. This Section
shall survive the expiration or termination of this AGREEMENT.
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5.9 LICENSEE agrees to comply, and to require its sublicensees to comply, with
all applicable laws and regulations relative to the manufacture and
marketing of LICENSED PRODUCTS.
5.10 Notwithstanding the provisions of Sections 5.1, 5.2 and 5.3, the liability
of UNIVERSITY for any and all breaches of this AGREEMENT by a party other
than UNIVERSITY, and for any and all failures of LICENSED PRODUCTS(s) in
the aggregate, shall be limited to [ * * * ] of the cumulative
royalties paid by LICENSEE and its sublicensee(s), and LICENSEE and its
sublicensee(s) hereby waive and disclaim the right to recover any damages
in excess of such amount for any and all such breaches and for any and all
such failures irrespective of whether such damages are direct, indirect,
consequential, incidental, or any other types of damages and irrespective
of whether based upon loss of investment, loss of production, lost profits,
interest on investment, interruption of business, or any other loss of any
character whatsoever. LICENSEE and its sublicensee(s) further agree that
their sole and exclusive remedy for any and all such breaches and any and
all such failures shall be to recover damages actually sustained up to, and
not in excess of, such amount. The foregoing notwithstanding, nothing in
this Section shall limit LICENSEE's right to seek equitable relief in the
event of UNIVERSITY's breach of this AGREEMENT.
ARTICLE VI -- PAYMENT OF PATENT COSTS
-------------------------------------
6.1 LICENSEE shall apply for, prosecute and maintain during the term of this
AGREEMENT the PATENT RIGHTS. The application filings, prosecution,
maintenance and payment of all fees and expenses, including legal fees,
relating to such PATENT RIGHTS shall be the sole responsibility of
LICENSEE. UNIVERSITY shall be entitled to review and comment upon all
actions undertaken in the prosecution of all patents and applications. If
LICENSEE decides not to apply for, prosecute or maintain any PATENT RIGHTS,
LICENSEE shall give sufficient and timely notice to UNIVERSITY so as to
permit UNIVERSITY to apply for, prosecute and maintain such PATENT RIGHTS.
ARTICLE VII -- INFRINGEMENT BY THIRD PARTY
------------------------------------------
7.1 LICENSEE will protect PATENT RIGHTS from infringement and prosecute
infringers when, in its judgment, such action may be reasonably necessary,
proper and justified. In
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the event LICENSEE elects not to prosecute an infringer, UNIVERSITY shall
have the right to do so unless LICENSEE can demonstrate a reasonable basis
why an action against the infringer should not be pursued.
7.2 In the event one party shall initiate or carry on legal proceedings to
enforce any PATENT RIGHTS against any alleged infringer, the other party
shall fully cooperate with and supply all assistance reasonably requested
by the party initiating or carrying on such proceedings. The party which
institutes any suit to protect or enforce PATENT RIGHTS shall have sole
control of that suit and shall bear the reasonable expenses (excluding
legal fees) incurred by said other party in providing such assistance and
cooperation as is requested pursuant to this Section. The party initiating
or carrying on such legal proceedings shall keep the other party informed
of the progress of such proceedings and said other party shall be entitled
to counsel in such proceedings but at its own expense. Any award paid by
third parties as the result of such proceedings (whether by way of
settlement or otherwise) shall be divided between the parties as follows:
(a) (i) If the amount is based on lost profits, LICENSEE shall
receive an amount equal to the damages the court or the parties
determine LICENSEE has suffered as a result of the infringement less
the amount of any royalties that would have been due UNIVERSITY on
sales of LICENSED PRODUCT lost by LICENSEE as a result of the
infringement had LICENSEE made such sales; and
(ii) UNIVERSITY shall receive an amount equal to the royalties it
would have received if such sales had been made by LICENSEE; or
(b) As to awards other than those based on lost profits, [ * * * ] to the
party initiating such proceedings and [ * * * ] to the other party.
7.3 Should either party commence a suit under these provisions and thereafter
elect to abandon the same, it shall give timely notice to the other party
who, if it so desires, may continue prosecution of such suit; provided,
however, that the sharing of expenses and any recovery in such suit shall
be as agreed upon between the parties.
7.4 In the event a declaratory judgment action alleging invalidity or
non-infringement of any of the PATENT RIGHTS is brought against LICENSEE
and/or UNIVERSITY, LICENSEE shall have the right to control the defense and
settlement of the action,
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provided that the expenses and costs of such action, including attorneys'
fees, shall be borne by LICENSEE.
7.5 In any infringement suit as either party may institute to enforce the
PATENT RIGHTS pursuant to this AGREEMENT, the other party hereto agrees, at
the request and expense of the party initiating the suit, to use its best
efforts to cooperate, to have its employees testify when requested and to
make available relevant records, papers, information, samples, specimens,
and the like.
7.6 No settlement or consent judgment or other voluntary and final disposition
of any suit affecting the PATENT RIGHTS may be entered into without the
consent of UNIVERSITY, which consent shall not be unreasonably withheld.
Notwithstanding the foregoing, the party controlling any suit referred to
in this shall have the right to settle any claims for infringement upon
such terms and conditions that shall be mutually agreed upon by UNIVERSITY
and LICENSEE.
7.7 In the event of an infringement or infringements by third parties of PATENT
RIGHTS on a scale that significantly affects LICENSEE's sales of LICENSED
PRODUCTS(s) and neither UNIVERSITY nor LICENSEE elect to bring an
infringement suit against such infringer, the royalties hereunder payable
by LICENSEE pursuant to shall be reduced by [ * * * ] of the sums
otherwise payable; provided, however, that LICENSEE presents information
to UNIVERSITY that such infringer has refused to enter into a
royalty-bearing, sublicensing agreement with LICENSEE on terms reasonably
acceptable to LICENSEE.
ARTICLE VIII -- BENEFITS OF LITIGATION, EXPIRATION, OR ABANDONMENT
------------------------------------------------------------------
8.1 In a case where one or more patents, or particular claims therein within
the PATENT RIGHTS expire, or are abandoned, or are declared invalid or
otherwise construed by a court of last resort, or by a lower court from
whose decree no appeal is taken, or certiorari is not granted within the
period allowed therefor, then the effect thereof hereunder shall be:
(a) that such patents or particular claims shall, as of the date of
expiration or abandonment or final decree of invalidity as the case
may be, cease to be included within the PATENT RIGHTS for the purpose
of this AGREEMENT and shall be henceforth included within TECHNOLOGY;
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(b) that such construction so placed upon the PATENT RIGHTS by the courts
shall be followed from and after the date of entry of the judgment or
decree, and royalties shall thereafter be payable by LICENSEE only in
accordance with such construction; and
(c) in the event that LICENSEE challenges the validity of PATENT RIGHTS,
LICENSEE may not cease paying royalties as of the date validity of the
claims in issue are challenged, but rather may cease paying royalties
as to those claims only after a final adjudication of invalidity of
those claims.
8.2 In the event that any of the contingencies provided for in Section 8.1
herein occurs, UNIVERSITY agrees to renegotiate in good faith with
LICENSEE a reasonable royalty rate under the remaining PATENT RIGHTS which
are unexpired and in effect, and under which LICENSEE desires to retain a
license.
ARTICLE IX -- TERMINATION
-------------------------
9.1 The license granted hereunder shall continue until terminated pursuant to
one of the following events:
(a) If LICENSEE materially breaches this AGREEMENT or fails to account for
or pay royalties or minimum royalties as herein provided, UNIVERSITY
shall have the right to terminate this license including the right to
sublicense on [ * * * ] prior written notice; provided,
however, that if LICENSEE cures the said breach or default within said
[ * * * ] period, this license shall continue in full force and
effect.
(b) UNIVERSITY shall also have the right to terminate this License and the
right to sublicense forthwith by giving written notice to LICENSEE in
the event of bankruptcy, liquidation or insolvency of LICENSEE.
(c) LICENSEE may terminate this AGREEMENT at any time by giving
[ * * * ] prior written notice thereof to UNIVERSITY.
9.2 Upon termination of this AGREEMENT for any cause, nothing herein shall be
construed to release either party of any obligation matured prior to the
effective date of such termination, including, without limitation, payments
of accrued royalties, and LICENSEE may after the effective date of such
termination complete or sell all LICENSED PRODUCT(s) that it may have on
hand at the date of termination or which LICENSEE can clearly demonstrate
were in the process of manufacture at the time of such
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termination, provided that it pays earned royalties thereon as provided in
this AGREEMENT and provided that at the time notice of termination is
provided by LICENSEE or within thirty days of receipt of notice by
LICENSEE, as the case may be, LICENSEE provides UNIVERSITY with an
accounting of LICENSED PRODUCTS then on hand and its best estimate of the
duration of such sales of LICENSED PRODUCTS.
9.3 Upon termination of this AGREEMENT for any reason, any sublicense not then
in default shall continue in full force and effect except that UNIVERSITY
shall be substituted in place of the LICENSEE.
9.4 Upon termination of this agreement for any reason, LICENSEE shall, upon
request by UNIVERSITY, make available to UNIVERSITY all non-proprietary
information then in LICENSEE's possession relevant to the commercialization
of LICENSED PRODUCTS, including, but not limited to, research results,
toxicology data, assays, preclinical data, prototypes, manufacturing
processes including cell lines and unused, unexpired amounts of LICENSED
PRODUCTS, clinical results, regulatory submissions, product licenses and
customer lists.
ARTICLE X -- NOTICE
-------------------
10.1 Any notice or communication authorized or required to be given hereunder
shall be in writing and be served by depositing the same either in the
United States mail, postage prepaid, receipt requested, or with a
recognized overnight courier service. addressed to the parties,
respectively, at the following addresses:
UNIVERSITY:
-----------
Boston University
Community Technology Fund
000 Xxx Xxxxx Xxxx
Xxxxxx, XX 00000
Attn.: Director, Office of Technology Transfer
LICENSEE:
---------
SCRIPTGEN Pharmaceuticals, Inc.
000 Xxxxxx Xxxxxx
Xxxxxxx, XX 00000
Attn.: Vice President, Research & Development
-Page 15 of 22-
ARTICLE XI -- NON-USE OF NAMES
------------------------------
11.1 LICENSEE shall not use the names of UNIVERSITY nor of any inventor of the
inventions covered by the PATENT RIGHTS nor any adaptation thereof, in any
advertising or promotional sales literature without the prior written
consent of UNIVERSITY in each case, except that LICENSEE may state that it
is licensed by UNIVERSITY under one or more patents and/or applications.
However, LICENSEE may make reference to technical publications by Xx. Xxxxx
or his co-authors. LICENSEE shall submit to UNIVERSITY for its approval,
which approval shall not be unreasonably withheld or delayed, any
references to LICENSED PRODUCTS, this AGREEMENT, UNIVERSITY, and/or its
inventors in submissions required by the SEC and/or the rules of any stock
exchange on which its shares are listed or are being considered for
listing.
ARTICLE XII -- MEDIATION/ARBITRATION
------------------------------------
12.1 In the event a controversy or dispute arises between the parties relating
to any provision of this AGREEMENT or the breach thereof, the parties agree
to use the following procedure prior to either party pursuing other
available remedies.
(a) A meeting shall be held promptly between the parties, attended by
individuals with decision-making authority regarding the dispute, to
attempt in good faith to negotiate a resolution of the dispute.
(b) If, within [ * * * ] after such meeting, the parties have not
succeeded in negotiating a resolution of the dispute, they agree to
submit the dispute to mediation by the American Arbitration
Association and bear equally the cost of mediation.
(c) The parties agree to participate in good faith in the mediation and
negotiations related thereto for a period of [ * * * ]. If the
parties are not successful in resolving the dispute through mediation,
then the dispute shall be submitted for arbitration, unless the
parties agree to do otherwise.
12.2 Arbitration shall be subject to the following terms:
(a) The arbitration shall be held at a mutually agreeable location in the
Boston, Massachusetts metropolitan area.
(b) The arbitrator(s) shall be an independent, impartial third party(ies)
having no direct or indirect personal or financial relationship to any
of the parties to the
-Page 16 of 22-
dispute, who has(have) agreed to accept the appointment as
arbitrator(s) on the terms set out in this .
(c) The arbitrator(s) shall be an active or retired attorney, law
professor, or judicial officer with at least [ * * * ]
experience in commercial technology transfer matters and a familiarity
with the laws governing proprietary rights in intellectual property.
(d) The arbitrator(s) shall be selected as follows:
Within [ * * * ] of the written notice set forth in Section
above, each party shall submit a description of the matter to be
arbitrated together with the terms of this to the American
Arbitration Association at its Regional Office in Boston,
Massachusetts. Said Association shall submit to the parties a list of
the qualified arbitrators available to arbitrate the matter. The
first arbitrator acceptable to both parties shall be deemed the
selected arbitrator with respect to the dispute then at issue under
this AGREEMENT. In the event of a failure to select a mutually
agreeable arbitrator, the parties will each select an arbitrator and
the two arbitrators will select a third arbitrator.
(e) Within [ * * * ] after selection of the arbitrator(s), each
party shall submit a description of the matter to be arbitrated to
said arbitrator(s).
(f) From the date the arbitrator(s) is in possession of both parties'
submitted material, the arbitrator(s) shall have [ * * * ] days
in which to hear oral testimony and render a decision. Each party
shall have a maximum of [ * * * ] during said [ * * * ] period in
which to present oral testimony.
(g) Time periods set forth in this may be altered only by mutual consent
of the parties;
(h) The arbitrator(s) shall announce the award in writing accompanied by
written findings explaining the facts determined in support of the
award and any relevant conclusions of law;
(i) The fees of the arbitrator(s) and any other costs and fees associated
with the arbitration shall be paid in accordance with the decision of
the arbitrator(s), except that the prevailing party shall pay no more
than [ * * *] of such costs.
(j) Except as provided in Section 12.2 (i) the decision of the
arbitrator(s) shall be final and binding on all parties, and judgment
may be entered thereon in any court having jurisdiction thereof.
(k) Nothing contained in this ARTICLE XII shall prohibit a party which has
complied with the provisions of Section 12.1 from seeking a
preliminary
-Page 17 of 22-
injunction or other equitable relief without the need to post bond if,
in the party's judgement, such action is necessary to avoid
irreparable damage.
ARTICLE XIII -- EXPORT CONTROL RESTRICTIONS
-------------------------------------------
13.1 The Export Control Regulations of the United States Department of
Commerce (the "REGULATIONS") prohibit, except under a special validated
license, the exportation from the United States of technical data
relating to certain commodities listed in the REGULATIONS, unless the
exporter has received certain written assurances from the foreign
importer. In order to facilitate the exchange of technical information
under this AGREEMENT, LICENSEE therefore gives its assurance to
UNIVERSITY that LICENSEE will not knowingly, unless prior authorization
is obtained from the United States Office of Export Control, re-export
directly or indirectly any technical data received from UNIVERSITY under
this AGREEMENT and will not export directly the LICENSED PRODUCTS(s) or
such technical data to any country listed on either the Commodity Control
List or Militarily-Critical Technologies List.
13.2 UNIVERSITY neither represents that a license is not required nor that, if
required, it will be issued by the United States Department of Commerce.
ARTICLE XIV -- MISCELLANEOUS PROVISIONS
---------------------------------------
14.1 Neither party shall assign this AGREEMENT without the written consent of
the other party which consent shall not be unreasonably withheld;
provided, however, that either party, without such consent, may assign or
sell the same in connection with the transfer or sale of all or
substantially all of its business involving LICENSED PRODUCTS or in the
event of its merger, or consolidation with another company. Each
assignee shall assume all obligations of its assignor under this
AGREEMENT. No assignment shall relieve either party of responsibility
for the performance of any accrued obligations which such party then has
hereunder.
14.2 This AGREEMENT embodies the entire understanding between the parties as
to the subject matter hereof and may not be varied except by a document
in writing signed by an officer of LICENSEE and a person authorized to
sign on behalf of UNIVERSITY.
-Page 18 of 22-
14.3 This AGREEMENT shall be construed, governed, interpreted, and applied in
accordance with the laws of the Commonwealth of Massachusetts without
regard to conflicts of laws principles except that questions affecting
the validity, construction, and effect of any foreign patent shall be
determined by the laws of the country in which the patents were granted.
14.4 The provisions of this AGREEMENT are severable, and in the event that any
of the provisions of this AGREEMENT are determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or
enforceability of the remaining provisions hereof.
14.5 LICENSEE shall xxxx the LICENSED PRODUCTS(s) sold in the United States
with all applicable patent numbers. All LICENSED PRODUCTS(s) shipped
and/or sold in other countries shall be marked in such a manner as to
conform with all of the laws of the country where the LICENSED
PRODUCTS(s) are shipped to and/or sold.
14.6 For the purpose of this AGREEMENT and all services to be provided
hereunder, both parties shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other. Neither party
shall have authority to make any statements, representations or
commitments of any kind, or to take any action, that will be binding on
the other party.
14.7 The captions are provided for convenience and are not to be used in
construing this AGREEMENT.
14.8 The parties agree not to use the PATENT RIGHTS or TECHNOLOGY in a manner
which attempts to circumvent, avoid or bypass obligations to the other
party, directly or indirectly, or to avoid payment of fees or royalties
or other benefits, either financial or otherwise, due under this
AGREEMENT in connection with the use and commercialization of the PATENT
RIGHTS or TECHNOLOGY or related information.
14.9 The parties agree that they have participated equally in the formation of
this AGREEMENT and that the language herein should not be presumptively
construed against either of them.
-Page 19 of 22-
IN WITNESS WHEREOF, the parties hereto have hereunder set their hands and
seals and duly executed this AGREEMENT in duplicate original copies the day and
year first written above.
SCRIPTGEN PHARMACEUTICALS, INC. TRUSTEES OF BOSTON UNIVERSITY
(LICENSEE)
By: /s/ By: /s/
-------------------------------- --------------------------
Name:______________________________ Name: Xxxxxxx X. Xxxxx
Title:_____________________________ Title: Assistant Treasurer
-Page 20 of 22-
EXHIBIT A
[ * * *]
-i-
EXHIBIT B
[ * * *]
-ii-
