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EXHIBIT 10.9
SPONSORED RESEARCH AND
TECHNOLOGY LICENSE AGREEMENT
This Sponsored Research and Technology License Agreement (the
"Agreement") is made and entered into this 28th day of March, 1995 by and
between Antigenics, Inc., a Delaware corporation having its principal place of
business c/o Xxxxx Partners, L.P., 00 Xxxxxxxxxxx Xxxxx, Xxxxx 0000, Xxx Xxxx,
N.Y. 10011 ("Antigenics"), and Fordham University, located at 000 Xxxx Xxxxxxx
Xx., Xxxxx, Xxx Xxxx 00000-0000 ("Fordham").
R E C I T A L S:
WHEREAS, Xx. Xxxxxx X. Xxxxxxxxxx ("Xx. Xxxxxxxxxx") is currently on
the faculty of and performing research and development at Fordham in the area of
the use of heat shock proteins for the development of therapeutic and
prophylactic vaccines for cancer and infectious diseases (the "Field");
WHEREAS, Antigenics desires to sponsor, support and fund Xx.
Xxxxxxxxxx'x research and development efforts at Fordham in the Field and obtain
exclusive rights to the intellectual property which has resulted to date from
his research and development efforts in the Field at Fordham and which may
result from his continuing research and development efforts in the Field at
Fordham; and
WHEREAS, Fordham desires to obtain funding for Xx. Xxxxxxxxxx'x
research and development efforts in the Field and to support the
commercialization of the results of such efforts;
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and other good and valuable consideration, Antigenics and Fordham hereby
agree as follows:
1. Sponsored Research.
(A) PERIOD OF PERFORMANCE; TERM. This Agreement shall begin on
the date hereof and shall continue in effect for a period of three (3) years
(the "Initial Term"). The term of this Agreement shall be extended beyond the
Initial Term for one or more additional one (1) year periods (individually, an
"Additional Term") unless either party desires not to extend the term of this
Agreement for an additional term, in which case such party shall give the other
party at least thirty (30) days' prior written notice of his or its intention
not to extend the Agreement for an Additional Term. As used in this Agreement,
the term of the Agreement shall include the Initial Term and any Additional
Terms. Notwithstanding the foregoing, Antigenics may terminate this agreement on
thirty (30) days' prior notice if Xx. Xxxxxxxxxx dies, becomes incapacitated or
otherwise incapable of performing his duties at Fordham or if Xx. Xxxxxxxxxx
becomes affiliated with a university or institution other than Fordham. The
termination of this Agreement will not relieve Antigenics of its obligation to
make any payments due but unpaid on the date of termination.
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(B) STATEMENT OF WORK. Fordham agrees to use its best efforts
to facilitate the performance by Xx. Xxxxxxxxxx and his laboratory personnel at
Fordham of the project set forth and described on EXHIBIT A attached hereto (the
"Project").
(C) RESEARCH SUPPORT. Antigenics will supply the equipment to
be associated with the Project as set forth and described on EXHIBIT B hereto.
All such property supplied by Antigenics will be the property of Antigenics.
Antigenics will pay Fordham all direct and indirect costs for space, supplies,
services and personnel incurred by Fordham in the performance of the Project,
which, for the term hereof, shall not exceed a total of $100,000 per quarter
all as itemized and set forth as Exhibit B hereto without the prior written
authorization of Antigenics. The parties agree to update EXHIBIT B from time to
time and at least annually as of November 1 of each year during the term hereof.
No update of EXHIBIT B will be effective unless executed by each of the parties
hereto.
(D) PAYMENT. An initial payment of $100,000 has been paid to
Fordham covering the quarter commencing November 1, 1994 and ending January 31,
1995. An additional payment of $100,000 will be made upon execution of this
Agreement covering the quarter commencing February 1, 1995 and ending April 30,
1995. The remaining quarterly payments of $100,000 will be payable in advance as
of the first day of the quarter commencing May 1, 1995. Notwithstanding the
foregoing, Fordham shall reimburse to Antigenics the pro rata portion of any
quarterly payment paid if this Agreement shall terminate within a quarter for
which payment has been made in advance.
2. LICENSE OF INTELLECTUAL PROPERTY.
(A) DEFINITION OF INTELLECTUAL PROPERTY. "Intellectual
Property" shall mean all inventions, discoveries, know-how, technical
information, improvements and other information which are or were conceived
(whether or not reduced to practice) and/or made or become known (i) by
employees of Fordham, including Xx. Xxxxxxxxxx, (ii) jointly by employees of
Fordham and employees of Antigenics, if any, or (iii) by employees of or
consultants to Antigenics, if any, at Xx. Xxxxxxxxxx'x Xxxxxxx laboratory in the
Field or resulting or arising from or in connection with the performance of the
Project hereunder.
(B) GRANT OF LICENSE. In consideration of the research support
set out in Section 1(C) hereinabove and other good and valuable consideration,
Fordham hereby grants to Antigenics a worldwide, exclusive license to all
Intellectual Property resulting or arising from or in connection with the
performance of the Project hereunder, including all patents and patent
applications and specifically the patent applications described in subsection
2(C) hereof.
(C) PROTECTION OF INTELLECTUAL PROPERTY RIGHTS. Fordham hereby
agrees that it will promptly disclose to Antigenics any and all of such
intellectual Property in a manner that will enable Antigenics to use effectively
such Intellectual Property, and that, upon request of
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Antigenics, authorized officials of Fordham will execute and deliver any and all
documents or instruments and take any other action which Antigenics shall deem
necessary to transfer and vest an exclusive license in Antigenics, to perfect
copyright and patent protection with respect to, or to protect Antigenics'
interest in, all of its rights and interests in and to such Intellectual
Property. Antigenics shall have the right to prepare, file and prosecute, at its
own expenses, by counsel of its choice, any U.S. and foreign patent applications
covering inventions arising out of the Intellectual Property. Without limiting
the generality of the foregoing, Fordham specifically agrees to execute all
documents, to ensure the cooperation of its employees, and take any other
actions necessary to perfect filing of such patent applications in the U.S.
Patent and Trademark Office and in such foreign Patent Offices as Antigenics
shall choose to file. The obligations of this Section 2 shall continue beyond
the termination of this agreement with respect to such Intellectual Property and
shall be binding upon the successors and assigns of Fordham. Antigenics agrees
to pay all copyright and patent fees and expenses incurred by Fordham for any
assistance rendered to Antigenics pursuant to the foregoing.
(D) RIGHT TO SUBLICENSE. Antigenics may not grant sublicenses
to the Intellectual Property without the prior written consent of Fordham which
consent shall not be unreasonably withheld. Notwithstanding the foregoing,
Antigenics may grant sublicenses to the Intellectual Property to its affiliates
without the prior written consent of Fordham.
(E) NIH AND OTHER INSTITUTIONAL FUNDING. Fordham and
Antigenics each acknowledges that certain of the research and development,
efforts that are embodied in certain of the Intellectual Property to which
Antigenics will receive exclusive license rights hereunder were funded in whole
or in part by institutions other than Fordham, including the National Institutes
of Health and the Cancer Research Institute (the "Institutions"). The parties
also acknowledge that the Project may be partially funded by other Institutions.
Fordham hereby represents and warrants that it has taken and will take any
actions required by such Institutions or applicable law to be taken to obtain
ownership right, title and interest in any Intellectual Property to be licensed
hereunder. During the term hereof, both Antigenics and Fordham agree to comply
with all laws, regulations and requirements of NIH or any other government
agency with respect to research sponsored by such agency and Intellectual
Property resulting therefrom. Each party agrees to indemnify and hold harmless
the other party in the event of a breach of the provisions of this Section 2(E).
3. ROYALTIES. For the rights and privileges granted under this
Agreement, Antigenics shall pay to Fordham a royalty of [ ]*on Net Sales of any
product covered by any patent based on the Intellectual Property licensed
hereunder from the date hereof until the date the last such patent has expired.
For purposes of this Agreement "Net Sales" shall mean sales that are net of any
take-backs and/or trade discounts or allowances whether products are sold by
Antigenics or another party with which Antigenics has a marketing agreement.
Royalties are payable for sales of products only if a patent has been issued or
is pending which covers the country or countries in which such products are
sold.
_________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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On or before the forty-fifth (45th) day following each fiscal quarter,
Antigenics shall submit to Fordham full and accurate statements showing the
quantity, description and Net Sales of any products distributed and/or sold
during the preceding fiscal quarter and covered by the foregoing royalty payment
obligation, including any additional information kept in the ordinary course of
business by Antigenics, which is appropriate to enable an independent,
determination of the amounts due hereunder. All payments then due Fordham shall
be made simultaneously with the submission of the statements. Such quarterly
statements shall be submitted only when they reflect any sales. Antigenics shall
inform Fordham within thirty (30) days of the first such sale. In addition,
Antigenics will provide Fordham with audited financial statement within ninety
(90) days of the end of Antigenics' fiscal year provided, however, that
Antigenics shall not be required to deliver-audited financial statements until
such time as there are sales hereunder.
4. ACKNOWLEDGMENT OF AGREEMENT BETWEEN ANTIGENICS AND XX. XXXXXXXXXX.
Xxxxxxx hereby acknowledges that Xx. Xxxxxxxxxx will enter into an agreement or
agreements with Antigenics which will provide, among other things, for Xx.
Xxxxxxxxxx to receive an equity interest in Antigenics and to consult for
Antigenics.
5. MUTUAL NON-DISCLOSURE.
(A) PROPRIETARY INFORMATION. For purposes of this Agreement,
the term "Proprietary Information" shall mean all knowledge and information
which each party hereto has acquired or may acquire as a result of, or related
to the performance of the terms of this Agreement concerning the other party's
business, finances, operations, strategic planning, research and development
activities, products, molecules, organisms, laboratory materials, prototypes,
software programs, firmware, designs, systems, improvements, applications,
processes, trade secrets, services, cost and pricing policies, and including,
but not limited to, information relating to formulae, diagrams, schematics,
notes, data, memoranda, methods, know-how, techniques, inventions, and
purchasing, merchandising and selling strategies. Notwithstanding the foregoing
sentence such Proprietary Information does not include (i) information which is
or becomes publicly available (excepts as may be disclosed by either party in
violation of this Agreement), or (ii) information acquired by either party from
a third-party source, other than the other party or any of its employees,
consultants or shareholders, which source legally acquired such information from
the party for whom the information is Proprietary Information.
(B) NONDISCLOSURE OBLIGATION. Each party agrees that it will
not at any time, either during or after the term of this Agreement, without the
prior written consent of the other party, divulge or disclose to anyone outside
of the other party, or appropriate for his own use or the use of any third
party, any such Proprietary Information, and will not during the term hereunder,
or at any time thereafter, disclose or use or attempt to use any such
Proprietary Information for his own benefit, or the benefit of any third party,
or in any manner which may injure or cause loss or may be calculated to injure
or cause loss to the other party. Each party's obligations contained in this
subsection 5(B) shall lapse on the fifth anniversary of the termination of this
Agreement. Each party shall obtain from personnel, agents or other
representatives employed or engaged by it to perform any work hereunder an
agreement which contains the provisions of this Section 5.
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6. ANTIGENICS COLLABORATION. Subject to the nondisclosure obligations
of Section 5 hereof, Antigenics agrees that during the term hereof it will share
with the Fordham employees working on the Project hereunder the results of
research and development efforts of Antigenics employees in the Field for the
purpose of enhancing the performance of the Project hereunder.
7. PUBLICATIONS. Nothing in this Agreement shall prevent Fordham from
submitting for publication to any academic journal or periodical the results of
research relating to the Field or to which the services provided by Fordham to
Antigenics hereunder shall then pertain. So long as Fordham is subject to a
non-disclosure obligator under Section 5 hereof, Fordham shall deliver at least
30 days prior to any such submission for publication, to Antigenics a final form
of the manuscript to be so submitted. Notwithstanding the foregoing obligation
to deliver publications to Antigenics prior to submission for publication,
Fordham does not need to obtain Antigenics' approval of any manuscript prior to
publication of the manuscript. Fordham shall cooperate in a timely manner with
Antigenics in taking any and all actions necessary to perfect copyright and
patent protection with respect to, or to protect Antigenics' interest in, any
Proprietary Information or Intellectual Property that Antigenics may deem to be
disclosed in such manuscript.
8. CONSULTATION WITH NON-COMMERCIAL ENTITIES. Subject to all the
provisions hereof, nothing herein shall preclude Fordham or employees of Fordham
working on the Project hereunder from consulting in the Field with
non-commercial entities and institutions.
9. GENERAL. This Agreement constitutes the entire Agreement between the
parties relative to the subject matter hereof, and supersedes all proposals or
agreements, written or oral, and all other communications between the parties
relating to the subject matter of this Agreement.
No provision of this Agreement shall be waived, amended, modified,
superseded, cancelled, renewed or extended except in a written instrument signed
by the party against whom any of the foregoing actions is asserted. Any waiver
shall be limited to the particular instance and for the particular purpose when
and for which it is given.
The invalidity, illegality or unenforceability of any provision of this
Agreement shall in no way affect the validity, legality or enforceability of any
other provision of this Agreement.
This Agreement, the Project to be performed and all rights hereunder
may not be transferred or assigned by Fordham at any time. Antigenics may assign
its rights, together with its obligations hereunder, to any affiliate or
successor in connection with any consolidation, merger, sale, transfer or other
disposition of all or substantially all, of Antigenics' business and assets. In
the event of any consolidation or merger of Antigenics' with or into any other
corporation, or the sale or conveyance of all or substantially all of the assets
of Antigenics to another corporation, the surviving or acquiring corporation
shall he entitled to the rights and benefits of the services provided under this
Agreement, and become obligated to perform all of the terms and conditions
hereof. The foregoing notwithstanding, Antigenics may transfer its Proprietary
Information without limitation.
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This Agreement shall be construed and enforced in accordance with, and
the rights of the parties shall be governed by, the internal laws of the State
of New York.
All notices provided for in this Agreement shall be given in writing
and shall be effective when either served by personal delivery, express
overnight courier service, or by registered or certified mail, return receipt
requested, addressed to the parties at their respective addresses herein set
forth, or to such other address or addresses as either party may later specify
by written notice to the other.
This Agreement may be executed in duplicate counterparts, which, when
taken together, shall constitute one instrument and each of which shall he
deemed to be an original instrument.
The provisions of Sections 2, 3, 5 and 7 shall survive the termination
or expiration of this Agreement for the periods set forth herein as a continuing
agreement of the parties hereto.
The parties agree that a breach of the provisions of Sections 2, 3, 5
and 7 of this Agreement by either party will cause irreparable damage to the
other party and that in the event of such breach either party shall have, in
addition to any and all remedies of law, the right to an injunction, specific
performance or other equitable relief to prevent the violation of the other
party's obligations hereunder. Nothing herein contained shall he construed as
prohibiting either party from pursuing any other remedies available to either
for breach by the other under this Agreement or applicable law.
The parties agree that each provision of this Agreement shall be
treated as a separate and independent clause, and the unenforceability of any
one clause shall in no way impair the enforceability of any of the other clauses
herein. Moreover, if any one or more of the provisions of this Agreement shall
for any reason be held to be exclusively broad as to scope, activity or subject
so as to be unenforceable at law, such provisions shall be construed by the
appropriate judicial body by limiting and reducing it or them, so as to be
enforceable to the maximum extent compatible with the applicable low as it shall
then appear.
(REMAINDER OF PAGE LEFT BLANK INTENTIONALLY.)
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IN WITNESS WHEREOF, parties have executed this Agreement as of the day
and year first above written.
ANTIGENICS, INC.
By: /s/ Xxxx X. Xxxxx
------------------------------------
President
FORDHAM UNIVERSITY
By: [AUTHORIZED SIGNATORY]
------------------------------------
Title:
------------------------------
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EXHIBIT A
---------
THE PROJECT
[
]*.
_________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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EXHIBIT B
---------
First Year's (November 1, 1994 to October 31, 1995) Budget
----------------------------------------------------------
I. Equipment
Computers and printer $ 12,000
------------------------------------------------------------------------
II. Supplies
Calf sera ($150/bottle) $ 9,000
Mice ($12/mouse) 3,600
Peptides (-$700/peptide) 14,000
Chemicals 35,000
Plasticware (tissue culture xxxx) 20,000
Non-capital equipment 14,000
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TOTAL $ 95,600
------------------------------------------------------------------------
III. Services
Mouse maintenance (400 mice) $ 24,000
------------------------------------------------------------------------
IV. Personnel
Xxx Xxxxxxx (Secy.) $ 25,000
Xxxxxxx Xxxxxxxx (PDF) 32,000
Antoinc Xxxxxxx (PDF) 10,000
Post-Doctoral Fellow (TBN) 27,000
Technician (TBN) 25,000
Xxxxx Xxxxxx (Technician) 22,000
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TOTAL $141,000
------------------------------------------------------------------------
V. Miscellaneous
Slides/prints $ 2,000
Transportation (samples, mice, people) 3,600
--------
TOTAL $ 5,600
------------------------------------------------------------------------
VI/ Indirect cost (84.4% of personnel) $119,004
GRAND TOTAL $397,204
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AMENDMENT TO
SPONSORED RESEARCH AND
TECHNOLOGY LICENSE AGREEMENT
BY AND BETWEEN
ANTIGENICS, INC.
AND
FORDHAM UNIVERSITY
THIS AMENDMENT TO THE SPONSORED RESEARCH AND TECHNOLOGY LICENSE
AGREEMENT ("AMENDMENT"), effective as of March 22, 1996 ("EFFECTIVE DATE"), is
made and entered into by and between ANTIGENICS, INC., a Delaware corporation
having a principal place of business c/o Xxxxx Partners, L.P., 000 Xxxxx Xxxxxx,
Xxxxx #000, Xxx Xxxx, Xxx Xxxx 00000, ("Antigenics") and FORDHAM UNIVERSITY,
having a principal of business at 000 Xxxx Xxxxxxx Xxxx, Xxxxx, Xxx Xxxx 00000
("Fordham").
WHEREAS Antigenics and Fordham entered into a Sponsored Research and
Technology License Agreement ("License Agreement") effective as of March 28,
1995 pursuant to which Antigenics (i) agreed to fund certain research activities
by Xx. Xxxxxx X. Xxxxxxxxxx at Xxxxxxx, and (ii) obtained a worldwide, exclusive
license under Intellectual Property (as defined in thc License Agreement); and
WHEREAS Antigenics and Fordham desire to amend the License Agreement to
provide for modification of the obligations of the parties.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
1. GRANT
Section 2(B) of the License Agreement is hereby amended to read in its
entirety as follows:
(B) GRANT OF LICENSE. In consideration of the research support
set out in Section 1(C) hereinabove and other good and valuable
consideration, Fordham hereby grants to Antigenics a worldwide,
exclusive license to all Intellectual Property, including without
limitation all patents and patent applications therein.
2. RIGHT TO SUBLICENSE
Section 2(D) of the License Agreement is hereby amended to read in its
entirety as follows:
(D) RIGHT TO SUBLICENSE. Antigenics may grant sublicenses to
the Intellectual Property; provided that, at least ten (10) business
days prior to the effective date of any such sublicense, Antigenics
shall provide written notice to Fordham of Antigenics'
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intention to grant such sublicense, such notice to be provided in
accordance with the provisions of Section 9. Fordham may provide
comments to Antigenics relating to the terms and conditions of such
sublicense. In the event that Fordham provides comments to Antigenics,
Antigenics shall consider such comments in good faith; provided that
such comments are received by Antigenics within ten (10) business days
after Fordham's receipt of Antigenics written notice. Antigenics
acknowledges that it is aware of, and will take fully into account the
distinctive history, tradition and mission of Fordham, in its
evaluation and selection of sublicensees under the Intellectual
property. Antigenics agrees that the economic terms and conditions of
any sublicense granted by Antigenics will be at least as favorable as
the economic terms and conditions of the license between Fordham and
Antigenic relating to the Intellectual Property. In addition,
Antigenics agrees that it will include in any sublicense granted by
Antigenics the condition that in the event of any event of, or filing
for, bankruptcy, arrangement among creditors or any other procedure
sounding in insolvency, the sublicense, to the extent permitted by
applicable law, will be immediately terminated and of no further force
or effect.
3. OTHER PROVISIONS
All provisions of the License Agreement not expressly modified by this
Amendment shall remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized representatives to execute this Amendment.
ANTIGENICS, INC. FORDHAM UNIVERSITY
("Antigenics") ("FORDHAM")
By: /s/ Xxxx X. Xxxxx By: /s/ Xxxxxx X. Charrubba
--------------------------------- ---------------------------------
Name: Xxxx X. Xxxxx Name: Xxxxxx X. Charrubba
-------------------------------- --------------------------------
Title: Chairman & CEO Title: VP for Academic Affairs
------------------------------- -------------------------------
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