Exhibit 10.10
CERTAIN INFORMATION HAS BEEN DELETED FROM THIS EXHIBIT AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT UNDER RULE 24b-2.
NOVATION
This agreement is made on the first day of January, 1989 (the "Effective
Date"), by and between the BOARD OF REGENTS OF THE UNIVERSITY OF NEBRASKA, a
public body corporate of the State of Nebraska, having a place of business at
Xxxxxx Xxxx, 0000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxx (hereinafter referred to
as "Board"), FINNISH SUGAR CO., LTD., a corporation organized and existing
under the laws of Finland, with a principal place of business at
Xxxxxxxxxxxxxxx 0, Xxxxxxxx, Xxxxxxx (hereinafter referred to as "Finnsugar")
and BIO NEBRASKA, INC., a corporation of the State of Nebraska (hereinafter
referred to as "BioNebraska").
W I T N E S S E T H
WHEREAS, Xxxx X. Xxxxxx, Xxxxxxx Xxxxx, Xxxxxxx X. Xxxxxxxx and Xxxxx X.
Xxxxx of the University of Nebraska (hereinafter referred to as Inventors)
have developed, while employed by the Board, certain technology, which is
believed by the parties hereto to be novel and useful (hereinafter referred
to as Inventions) relating to: (1) products and techniques for the detection
of heavy metals; (2) modification of carboxy terminus for immobilization of
antibodies including the immobilization of gamma ray emitting compounds with
antibodies; (3) cloning of chicken egg white lysozyme; (4) purification of
synthetic oligonucleotides and synthetic peptides by antigenic capping; and
(5) mutants of ASPERGILLUS NIGER.
WHEREAS, the Board, BioNebraska and Finnsugar desire that the Inventors
continue their work on the novel and useful technology referred to above and
to further enhance the existing techniques and methods with further
proprietary techniques and methods.
WHEREAS, the Board and Finnsugar entered into a cooperative agreement
dated January 9, 1986 , ("the Cooperative Agreement") providing for certain
sponsored research and disposition of rights to inventions, including the
first two Inventions listed above which were made in the course of that
sponsored research and identified as resulting from an approved Task under
the Cooperative Agreement.
WHEREAS, Finnsugar does not wish to obtain the right of first refusal to
the first two inventions mentioned above made using the results of research
covered by an approved Task under the Cooperative Agreement but instead
wishes Board to transfer an exclusive license to Finnsugar under Inventions
funded as approved Tasks by the Cooperative Agreement and also wishes an
exclusive license under the Inventions mentioned above but not developed as
approved Tasks with the express condition as to all Inventions that Finnsugar
transfer all of its rights to Inventions to BioNebraska as part consideration
for stock in BioNebraska.
WHEREAS, BioNebraska is expected to: (a) do contract research; (b)
transfer rights to others to manufacture; and (c) manufacture and sell
products itself related to at least some of the Inventions.
WHEREAS, BioNebraska wishes to obtain an exclusive license under said
Inventions.
NOW, THEREFORE, for and in consideration of the premises and mutual
covenants and agreements contained herein, the parties agree as follows:
ARTICLE I
TABLE OF CONTENTS AND DEFINITIONS
Section 1 Table of Contents
a. Parties page 1
b. Purposes pages 1 to 3
c. Table of Contents pages 4 to 5
d. Definitions pages 5 to 9
e. University of Nebraska Inventions page 5
f. Covered Products pages 5 to 6
g. Covered Process page 6
h. Net Selling Price pages 7 to 8
i. Fair Market Value page 8
j. Finnsugar page 8
k. Accrued Royalties page 9
l. Paid Royalties page 9
m. Reimbursable Royalties pages 8 to 9
n. Scope of Grant pages 9 to 10
o. Transfer of Rights pages 9 to 10
p. Filing of Applications pages 11 to 12
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q. Royalties pages 12 to 18
r. Reporting pages 16 to 17
s. Limitations on Grant pages 17 to 18
(Diligence Requirements)
t. Funds for Research page 20
u. Commercialization page 18
v. Minimums pages 17 to 18
w. Term pages 18 to 19
x. Termination pages 19 to 20
y. Past agreements page 20
z. Warranties and Use of Names pages 20 to 21 and 22
aa. Notices pages 21 to 22
ab. Force Majeure page 23
ac. Modification of Agreement page 23
ad. severability pages 23 to 24
ae. Signatures page 25
Section 2. Definitions
As used in this license:
1. "University of Nebraska Inventions" means Inventions owned by Board
which Board has the right to license and/or assign and only of the scope and
to the extent that Board has the right to license and/or assign them.
2. "Covered Products" means Products incorporating or requiring the
use of or being specifically designed for using or being made using any of
the University of Nebraska Inventions either: (a) made by or for BioNebraska
or any of its subsidiaries or affiliated companies; or (b) used, leased or
sold by BioNebraska or any of its subsidiaries or affiliated companies.
3
3. "Covered Process" means any process using said University of
Nebraska Inventions as an integral part thereof to make and use said Covered
Products.
4. "Licensed Products" means Products incorporating or requiring the
use of or being specifically designed for using or being made using any of
the University of Nebraska Inventions either: (a) made by or for BioNebraska
or any of its subsidiaries or affiliated companies; or (b) used, leased or
sold by a licensee of BioNebraska or any of its subsidiaries or affiliated
companies.
5. "Subsidiary" means any corporation, company or association, more
than 50 percent of the outstanding shares of stock of which is owned outright
or beneficially by some corporation, company or association, or the
management or policy of which is directed, directly or indirectly, by some
corporation, company or association.
6. "Affiliated Company" means any company, corporation or firm in
which a party has a material financial interest or as to which the parties'
relationship is such that, the parties substantially influence its business
policies and activities.
7. "Net Selling Price" means: (a) if a Covered Product or Licensed
Product is sold for a specified consideration payable in money to a party
other than a Subsidiary or Affiliated Company of or a company of which
BioNebraska or a licensee of BioNebraska is a Subsidiary or Affiliated
Company, the amount invoiced by the corresponding one of BioNebraska or the
licensee of BioNebraska to its customer; and (b) the fair market value in the
case of other transactions. To determine the "Net Selling Price" certain
deductions shall be made from BioNebraska's list price. These deductions
shall consist of all applicable rebates, allowances adjustments, trade and
cash discounts, packing, freight, and insurance charges, customs and related
charges and all sales, use or similar taxes except if such rebates,
allowances, adjustments, trade or cash discounts are the result of
BioNebraska's or the licensee of BioNebraska's sale to a party which is a
Subsidiary, affiliated or related party of BioNebraska or the licensee and
the same are not offered to any customers which are not a subsidiary or an
affiliated or related party of BioNebraska.
8. "Fair Market Value" means the Net Selling Price which BioNebraska
or a licensee of BioNebraska hereunder would realize from an unaffiliated
buyer in an arm's length sale of the substantially identical covered Products
or Licensed Products in the same country, in the same quantity and at the
same time as the transaction subject to royalty; provided, however, that it
shall not be lower than the complete cost. Complete cost shall consist of
all properly allocatable direct costs and indirect expenses necessary or
incidental to the sale, manufacture or distribution of such Covered Products
or Licensed Products. There shall be no royalties on free samples to
unaffiliated parties.
9. "Finnsugar" means Finnsugar as defined above and also its
Affiliated Companies and Subsidiaries including Finnsugar Biochemical, Inc.
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10. "Reimbursable Royalties" means royalties that would be payable to
Board except for a provision of this agreement that permits payment of the
royalties to Finnsugar as a reimbursement for no more than [CONFIDENTIAL
TREATMENT REQUESTED] of the direct costs for the filing, maintenance and
prosecution of patent applications Inventions and the funds advanced by
Finnsugar pursuant to the Cooperative Agreement, as amended and extended for
approved Tasks (until a total of [CONFIDENTIAL TREATMENT REQUESTED] plus the
direct patent expenses spent by Finnsugar are recovered by Finnsugar).
11. "Paid Royalties" are royalties which are to be paid to Board
hereunder.
12. "Accrued Royalties" means the sum of Reimbursable Royalties and
Paid Royalties hereunder.
ARTICLE II
GRANTS
Section 1. Board hereby grants and transfers to Finnsugar and Finnsugar
hereby accepts from Board upon terms and conditions herein an exclusive
license under University of Nebraska Inventions to manufacture, have
manufactured for it, lease, use, vend and sublicense Covered Processes and
Covered Products under the terms hereunder. No assignment of these rights
and no sublicense of such rights to manufacture shall be granted without
prior approval of Board, but such approval shall not be unreasonably
withheld. The rights granted in this article to Finnsugar must be assigned
and transferred to BioNebraska within three months of the date of this
agreement subject to the terms and conditions herein.
Section 2. The rights granted in this agreement and the obligations
incurred do not nor will they apply to any invention developed by Xxxx X.
Xxxxxx, Xxxxxxx Xxxxx, Xxxxxxx X. Xxxxxxxx or Xxxxx X. Xxxxx or owned by
Board in the future except as provided elsewhere in this agreement.
Section 3. The grant of rights under section 1, article II, shall not
be transferable or assignable except as provided elsewhere in this agreement.
Section 4. Finnsugar, BioNebraska and the Board agree to cooperate
fully in the filing of any United States or foreign patent applications with
respect to the University of Nebraska Inventions, including but not limited
to, the execution of any and all documents necessary for the filing and
prosecution of said applications. Finnsugar and Board shall agree on which
party will file, prosecute and maintain patent applications and patents on
University of Nebraska Inventions and the time of such filing, prosecution
and maintaining.
Section 5. Finnsugar and Board each agree to furnish the other with
copies of any such applications, prosecution papers and correspondence with
the United States Patent and Trademark Office relating to such prosecution
which originate with them or are sent to them from an agency.
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Section 6. If agreement is not reached to file a patent application in
the United States on any University of Nebraska Invention within six months
of the effective date of any statutory bar, Board has the right but not the
obligation to file such applications. The party that filed the application
shall have the primary responsibility to prosecute and maintain the patent
applications or patents in the United States. If that party decides to
discontinue such prosecution or maintenance it shall notify the other party
and the other party shall have the right but not the obligation to continue
such prosecution or maintenance.
Section 7. Board and Finnsugar shall promptly and mutually determine in
which countries it is desirable to file foreign patent applications (other
than the United States) corresponding to any University of Nebraska
Inventions covered by this agreement and who shall file them. If an
agreement is not reached within eleven months after initial filing in the
United States Patent and Trademark office of the corresponding United States
patent application Board shall have the right but not the obligation to file
as outlined above; and if the party handling a foreign application decides to
discontinue prosecution of the pending foreign patent application filed under
agreement or the maintenance of any foreign patent issuing thereon, that
party shall notify the other party of such decision at least sixty days prior
to the time deadline for continuing such prosecution or maintenance, as the
case may be, and the other party shall have the option to continue such
prosecution or maintenance as outlined above with respect to United States
applications and patents.
ARTICLE III
ROYALTIES
Section 1. In consideration of the grants set forth herein, BioNebraska
agrees, to pay a continuing royalty consisting of:
(a) Reimbursable Royalties to Finnsugar up to [CONFIDENTIAL TREATMENT
REQUESTED] ([CONFIDENTIAL TREATMENT REQUESTED] maximum deductible
for patent expenses and [CONFIDENTIAL TREATMENT REQUESTED]
reimbursable from research funds as Reimbursable Royalties) at the
rate of [CONFIDENTIAL TREATMENT REQUESTED] of the Net Selling price
of any Covered Product embodying the University of Nebraska
Inventions in the country where the manufacture, commercial use or
sale of said product takes place and [CONFIDENTIAL TREATMENT
REQUESTED] of all royalties received from sublicensing so that
the total of Accrued Royalties is [CONFIDENTIAL TREATMENT REQUESTED];
(b) Paid Royalties to Board at the percentages of the net selling price
of Covered Products and/or fractions of royalties received by
BioNebraska from sublicensing specified below:
(i) after Reimbursable Royalties are paid and until Paid
Royalties equal [CONFIDENTIAL TREATMENT REQUESTED], (A) for
the first 39 months from the effective date of the agreement
whether a patent covering the process or
6
product has been granted or not, [CONFIDENTIAL TREATMENT
REQUESTED] of all royalties received from sublicensing and
[CONFIDENTIAL TREATMENT REQUESTED] of the net selling price
of Covered Products and (B) for the remainder of the time
after the 39 months have passed but before the Paid Royalties
reach [CONFIDENTIAL TREATMENT REQUESTED], [CONFIDENTIAL
TREATMENT REQUESTED] of all royalties received from
sublicensing and [CONFIDENTIAL TREATMENT REQUESTED] of the
net selling price of Covered Products covered by a granted
patent together with [CONFIDENTIAL TREATMENT REQUESTED] of
the net selling price of Covered Products not covered by a
granted patent for a total period of 60 months from the
effective date of the agreement or until aggregate Paid
Royalties equal [CONFIDENTIAL TREATMENT REQUESTED] whichever
occurs earlier;
(ii) after Paid Royalties have equaled [CONFIDENTIAL TREATMENT
REQUESTED] and until Paid Royalties equal [CONFIDENTIAL
TREATMENT REQUESTED], [CONFIDENTIAL TREATMENT REQUESTED] of
all royalties received from sublicensing a patent on a
Covered Product or Covered Process and [CONFIDENTIAL
TREATMENT REQUESTED] of the net selling price of Covered
Products but only for those Covered Products covered by a
patent;
(iii) after Paid Royalties have equaled [CONFIDENTIAL TREATMENT
REQUESTED] [CONFIDENTIAL TREATMENT REQUESTED] of one percent
of Net Selling Price of Covered Products, Covered Processes
and Licensed Products on which patents have been granted.
(iv) In the event Licensee, with Board concurrence, shall decide
to withdraw a patent application in any jurisdiction and
market the invention without patent protection, the Licensee
shall enter into a separate license agreement covering that
application.
Section 2. The date of sale of any products shall be the date of
shipment or the date of payment, whichever is latest. A sale shall include
any transfer, lease or other demonstration, test, stock or otherwise.
However, only one royalty shall be paid on any Covered Product or Covered
Process.
Section 3. BioNebraska shall keep full, true and accurate books of
account containing all particulars which may be necessary for the purpose of
showing the amount payable to the Board by way of royalties as provided
herein. The books of account shall be kept at BioNebraska's principal place
of business, and the books or the supporting data therefor shall be available
for inspection by the Board or its representatives during BioNebraska's
normal business hours during the term of this Agreement, and for three years
following the expiration or termination of this Agreement for any reason.
The Board shall give BioNebraska prior written notice of any inspection
7
of books of account and any such inspection shall be for the limited purpose
of verifying BioNebraska's royalty statements.
Section 4. BioNebraska shall, within thirty days of each one year
anniversary of the Effective Date deliver to the Board a true and accurate
report of all transactions relating to the calculation and payment of
royalties pursuant to this Agreement. Such report shall include, INTER ALIA,
the period of time covered by the report, a description of all products sold
by BioNebraska or its permitted assigns and/or licensees upon which royalties
are due and payable, the number and Net Selling Price of all said products,
all deductions from royalties, and the computation of any royalties due and
payable to the Board by BioNebraska. Simultaneously with the delivery of
each report, BioNebraska shall pay to the Board the royalty accrued for the
period covered by such report. If no royalties are due, it shall be so
reported.
Section 5. Board, BioNebraska and Finnsugar agree that all rights under
this license shall revert back to Board effective one month after
notification by Board if neither of the following have occurred:
(a) Covered Products or Licensed Products are offered for sale by
BioNebraska or by a sublicensee of BioNebraska within two years
after the date of this agreement or for any two consecutive years
thereafter; or
(b) funds are made available to Board to continue work at facilities of
Board within six months of Effective Date at a level of at least
[CONFIDENTIAL TREATMENT REQUESTED] semiannually and continue for at
least two years.
Section 6. If at any time during the term of this agreement after the
quarterly report occurring after the fourth anniversary date (beginning of
fifth year) of the agreement and before the end of the ninth year, the amount
of yearly Paid Royalties on a cumulative basis falls below that indicated in
the following table after the year to which it applies, Board may upon thirty
days written notice convert this license to a non-exclusive license and seek
other non-exclusive licensees. In such an event, all other terms of this
agreement remain the same:
Fifth year [CONFIDENTIAL TREATMENT REQUESTED]
Sixth year [CONFIDENTIAL TREATMENT REQUESTED]
Seventh year [CONFIDENTIAL TREATMENT REQUESTED]
Eighth year [CONFIDENTIAL TREATMENT REQUESTED]
Ninth year [CONFIDENTIAL TREATMENT REQUESTED]
This section 6 of article III shall not apply after such time as the
Board has received not less than [CONFIDENTIAL TREATMENT REQUESTED] in Paid
Royalties.
8
Section 7. BioNebraska shall exercise best efforts to commercialize
University of Nebraska Inventions in Nebraska or to locate a licensee that
will commercialize the University of Nebraska Inventions in Nebraska.
ARTICLE IV
TERM AND TERMINATION
Section 1. This Agreement shall remain in full force and effect for the
longer of ten years or the life of any patent (issued in the United States or
elsewhere) which embodies the University of Nebraska Inventions which are the
subject of this Agreement.
Section 2. If Finnsugar or BioNebraska shall become bankrupt or
insolvent and/or the business of Finnsugar or BioNebraska shall be placed in
the hands of a receiver, assignee or trustee, whether by the voluntary act of
BioNebraska or otherwise, this Agreement shall become void effective thirty
days following the effective date of such written notice, unless the breach
or default is cured prior to the expiration of this thirty-day period. It
shall be considered a breach or default to fail to pay money owed to the
Board by BioNebraska, or to use the Board's name by BioNebraska or by
Finnsugar in a manner that is not approved of by the Board and which may call
into question the propriety of any of the Board's actions.
Section 3. Termination of this Agreement shall not affect the
obligations of BioNebraska to pay any royalty or other payments which may be
due and unpaid at the date of termination, nor shall it prejudice any other
right of the Board under this Agreement. Within sixty days after
termination, BioNebraska shall render to the Board a written statement of the
kind required in article III hereof respecting the due and unpaid royalties
and shall accompany such a statement with a payment to cover the same.
ARTICLE IV
MISCELLANEOUS
Section 1. To the extent the terms of this agreement are inconsistent
with any earlier agreements with respect to research funded by Finnsugar and
conducted by the Board, the terms of this agreement shall apply.
Section 2. Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation of any party as to the validity or
scope of any patent obtained on the University of Nebraska
Inventions, except that the parties warrant that they will act in
good faith without fraud with respect to the filing and prosecution
of any patent applications;
9
(b) a warranty or representation that any manufacture, sale, lease or
use of any products embodied by the University of Nebraska
Inventions will be free from infringement of patents owned by any
third party;
(c) an agreement to bring or prosecute actions or suits against third
parties for infringement, the right to bring or prosecute said
actions or suits residing solely in BioNebraska or in Board or in
Finnsugar; or
(d) conferring to either party any right to use in advertising,
publicity, or otherwise any name, trade name, or trademark, or any
contraction, abbreviation or simulation thereof of the other party.
Section 3. The construction and performance of this agreement shall be
governed by the laws of the State of Nebraska.
Section 4. Any notice, request or statement hereunder shall be deemed
to be sufficiently given when sent by electronic transmission followed by
registered mail addressed to Finnsugar or to BioNebraska or to the Board at
the addresses herein below specified or at such changed address as the
addressee shall specify by written notice:
IF TO THE BOARD:
Patent Administrator
University of Nebraska
303 Administration Building
0000 Xxxxxxxx Xxxxxx
Xxxxxxx, XX 00000-0000
IF TO FINNSUGAR:
Legal Department
Finnish Sugar Co., Ltd.
Xxxxxxxxxxxxxxx 0
Xxxxxxxx, Xxxxxxx
IF TO BIO NEBRASKA:
President
BioNebraska, Inc.
X.X. Xxx 00000
Xxxxxxx, Xxxxxxxx 00000
10
with a copy to:
Secretary
BioNebraska, Inc.
c/o Finnsugar Biochemicals, Inc.
0000 X. Xxxxxxx Xxxx
Xxxxxxxxxx, Xx. 00000-0000
Section 5. The headings of this Agreement are intended merely to
facilitate reference and shall have no bearing upon the interpretation of any
terms of this Agreement.
Section 6. Nothing in this Agreement constitutes permission to use the
name of the University of Nebraska or the Board of Regents of the University
of Nebraska or the names of the Inventors without the express written
permission of the Board, except as expressly authorized in this Agreement.
Section 7. Neither party shall be liable to the other for any loss,
damage or default occasioned by strike, civil disorder, governmental decree
or regulation, acts of God or any other force majeure. In the event of the
occurrence of such force majeure, the term of this Agreement will be
suspended and extended for the duration of such force majeure.
Section 8. This Agreement may not be modified and limited and none of
its terms may be waived except by agreement in writing signed by both
parties. The failure of either party to enforce, or the delay by either party
in enforcing any of their rights shall not be deemed a continuous waiver or
modification of this Agreement.
Section 9. This agreement is severable. If any term of it is found to
be illegal or unenforceable, the contract shall be interpreted as though that
term was omitted and the contract shall remain valid to the extent possible.
In determining severability, the rights in article II are consideration for
the duty to file patent applications, transfer rights from Finnsugar to
BioNebraska, and the requirements to pay certain minimum amounts of royalties.
Section 10. The parties hereto specifically contemplate and agree that
within three months of the Effective Date and without any further permission
or action required from the parties hereto:
(1) Finnsugar shall transfer all of its rights under this Agreement
including its rights to Inventions to BioNebraska and that
henceforth after such transfer BioNebraska shall be substituted for
Finnsugar as to such rights and shall exclusively thereafter enjoy
all of the rights conferred herein upon Finnsugar; and
(2) the obligations of Finnsugar to Board created by this agreement
except those created by virtue of Finnsugar's ownership of stock in
BioNebraska or Finnsugar's control of BioNebraska or the obligation
to pay patent expenses under article II, sections 4-7,
11
shall be transferred to BioNebraska and henceforth after such
transfer BioNebraska shall be substituted for Finnsugar as to such
obligations and shall exclusively thereafter bear all of the
obligations to Board conferred herein upon Finnsugar.
THE BOARD OF REGENTS OF FINNISH SUGAR CO- LTD.
THE UNIVERSITY OF NEBRASKA
By: /s/ W. E. Splinter By: /s/ Juha Koivurinta /s/ Xxxx Xxxxxxxx
------------------------------ ----------------------------------------
Name: W. E. Splinter Name Juha Koivurinta Xxxx Xxxxxxxx
--------------------------- --------------------------------------
Title: Assoc. X. Xxxxxxxxxx - Res. Title: Director, Corp. Dev. General Counsel
--------------------------- -------------------------------------
Date: 4/20/89 Date: 4/3/89
---------------------------- -------------------------------------
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BioNebraska, Inc.
By: /s/ Xxxxxx X. Xxxxxxxx
------------------------------
Name: Xxxxxx X. Xxxxxxxx
----------------------------
Title: Chairman of the Board
---------------------------
Date: 4/7/89
---------------------------
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