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OPTION AGREEMENT
THIS OPTION AGREEMENT is made and is effective as of September 1, 1998,
by and between the Xxxxxxx and Women's Hospital, having administrative
offices at 00 Xxxxxxx Xxxxxx, Xxxxxx, XX 00000 ("Brigham"), and
Infectech, Inc. a for-profit corporation having its principal offices
at 00 Xxxxxxxxx Xxx., Xxxxxx, XX 00000 ("Company").
WITNESSETH
WHEREAS, Xx. Xxxxxx Xxxx is named as inventor on United States Patent
4,578,458 (and related foreign patents) entitled "Muciod
Exopolysaccharide Vaccine Against Pseduomanas Aeruginosa" issued March
25, 1986, and United States Patent 5, 502,039 entitled "o-Derivatized
Alginic Acid Antigens" issued March 26, 1996, both are described in
Appendix A ("Inventions"). Dr. Pier is obligated to assign his
ownership interest in both patents to Hospital.
WHEREAS, Company is desirous of considering a license from the Xxxxxxx
for the commercial development, use and sale of the Inventions; and to
facilitate this consideration, Company is serious of obtaining an
Option to such license from the Xxxxxxx for an agreed-upon period of
time; and
WHEREAS, Brigham is willing to grant such an Option;
NOW THEREFORE, in consideration of the covenants and undertakings
hereinafter set forth, it is agreed by and between the parties as
follows:
1. OPTION
1.1 Brigham hereby grants to Company the right to obtain a worldwide
license to manufacture, use sell or lease products and/or processes
incorporated in the Inventions. The license contemplated by this
Paragraph 1.1 will be exclusive, royalty-bearing, subject to Due
Diligence requirements and subject to a License Issue Fee upon
execution.
1.2 The Option granted in Paragraph 1.1 shall exist and be exercisable
by written notice to the Xxxxxxx for one year from the effective date
of this Option Agreement, after which is shall automatically expire.
2. OPTION FEE
2.1 In consideration of the Option being granted, Company will pay an
Option Fee of ten thousand dollars ($10,000) immediately upon execution
of this Agreement. The Company will also pay the ongoing patent costs
for maintenance of the following patents and any of their foreign
counterparts as listed in the attached Appendix A: (1) Mucoid
Exopolysaccharide Vaccine Against Pseudomonas Aeruginosa U.S. Patent
4,578,458 issued 3/25/86 and any corresponding international
equivalents and (2) O-Derivatized Alginic Acid Antigens U.S. Patent No.
5,502,039 issued 3/26/94.
3. LICENSE
3.1 If Company elects to exercise its right under Paragraph 1.1,
Brigham agrees to meet with Company within thirty (30) days of receipt
of written notice of such exercise, and the parties shall thereupon
negotiate in good faith to arrive at mutually agreeable, reasonable
nonfinancial terms and conditions for the appropriate license, such
license shall include the financial terms and conditions set forth in
Appendix B which is incorporated herein by reference.
Notwithstanding the foregoing, if the Xxxxxxx reasonably determines
prior to entering into a license agreement for Inventions that the
royalty rates set forth in Appendix B as applied to the Inventions so
licensed would be uncompetitive and fail to reflect the market value of
the Inventions at the effective time of the license agreement, the
Xxxxxxx shall xxxxx and Company shall accept a royalty rate that fairly
and reasonably reflects the fair market value of the Inventions so
licensed.
4. Notices
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4.1 Any payment, notice or other communication required or authorized
to be given hereunder shall be deemed to have been properly given and
to be effective: (a) upon delivery if delivered in person, or (b) Five
(5) days after mailing if mailed by first-class, certified mail,
postage paid, to the respective addressed given below, or to such other
address as either party shall designate by written notice given to the
other party as follows:
In the case of Brigham:
Xxxxxxx and Women's Hospital
Attn: Director, Ventures
00 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
With a copy to:
Xxxxxxx and Women's Hospital
Attn: Office of General Counsel
00 Xxxxxx Xxxxxx
Xxxxxx, XX 00000
In the case of the Company:
Infectech, Inc.
Attn: Xxxxxxxx X. Xxxxxx, MD, CEO
00 Xxxxxxxxx Xxx., Xxxxx 0
Xxxxxx, XX 00000
5. ASSIGNEMENT
5.1 This Agreement is binding upon and shall inure to the benefit of
the Xxxxxxx, its successors and assigns, but shall be personal to
Company and may not be assigned without the consent of Brigham.
6. GOVERNING LAWS
6.1 This Agreement shall in interpreted and construed in accordance
with the laws of State of Massachusetts.
IN WITNESS WHEREOF, the parties have executed this Agreement in
duplicate originals by their respective duly authorized officers on the
date hereinafter written.
THE XXXXXXX AND WOMEN'S HOSPITAL
By (signature)
Name: Xxxxx X. Xxxxx
Title: Director, Venture Department
Date: 8/25/98
INFECTECH, INC.
By (signature)
Name: Xxxxxxxx X. Xxxxxx, M.D.
Title: CEO & President
Date: 8/31/98
Agreed to and Accepted
Name: Xxxxxx Xxxx Date: 8/27/98
(investigator)
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APPENDIX A
I. Mucoid Exopolysaccharide Vaccine Against Pseudomonas Aeruginosa
(BWH#0091)
COUNTRY PATENT NO. ISSUE DATE EXPIRATION DATE FILING DATE
USA 4,578,458 3/25/86 3/25/2003 3/23/83
Australia 571495 4/21/88 3/9/2000 3/9/84
Canada 1226543 9/9/87 9/9/2004 3/22/84
Denmark 1587/84 5/16/90 3/15/2004 3/19/84
EPC/Austria AT0120532 5/16/90 3/15/2004 3/15/84
EPC/Belgium BE0120532 5/16/90 3/15/2004 3/15/84
EPA/Xxxxxxx. PO120532-8 5/16/90 3/15/2004 3/15/84
EPC/Germany P3482241-0 5/16/90 3/15/2004 3/15/84
EPC/France FR0120532 5/16/90 3/15/2004 3/19/84
EPC GreatBrt.GB0120532 5/16/90 3/15/2004 3/15/84
EPC/Italy IT0120532 5/16/90 3/15/2004 3/15/84
II. O-Derivatized Alginic Acid Antigens (BWH#0095)
COUNTRY PATENT ISSUE DATE EXPIRATION DATE FILING DATE
USA 5,502,039 3/26/94 3/26/2013 7/11/94
APPENDIX B
LICENSE AGREEMENT TERMS
LICENSED PATENTS: (1) Mucoid Exopolysaccharide Vaccine Against
Pseudomonas Aeroginosa U.S. Patent No. 4,578,458 issued 3/25/86 and any
corresponding international equivalents and (2) O-Derivatized Alginic
Acid Antigens U.S. Patent No. 5,502,039 issued 3/26/94.
INVENTOR:. Xxxxxx Xxxx
EXCLUSIVITY: Exclusive
TERRITORY: Worldwide
TERM: Life of the Patent
FIELD OF USE: Therapeutic purposes only
LICENSE FEES: upfront: $40K ($20K to be paid upon the effective date,
$20K to be paid upon November 1, 1999)
License maintenance fee:
$10K YEAR 1
$20K YEAR 2
$30K YEAR 3
$40K YEAR 4
$50K YEAR 5 and each year thereafter
Milestone payments:
$100K upon each IND filing
$500K upon each FDA approval
ROYALTY: Company shall pay 5% of net sales.
PATENT FEES: Company shall be responsible for ongoing expenses for the
licensed Hospital Technology.
SUBLICENSING: Company shall pay to Hospital 30% of all sublicensing
income (e.g. royalties, success fees, license issue fees, milestone
payments, license maintenance fees, patent annuity fees, and other
payments) made by a licensee to Company or its affiliates in connection
with a sublicense to the Hospital Technology. Company shall pay to
Hospital 5% of research money received from sublicensees.
If sponsored research is mutually agreed upon in writing, it shall
include the following financial arrangements:
YEAR 1 $60K ($0 to be credited against license maintenance fees)
YEAR 2 $140K ($10K to be credited against license maintenance fees)
YEAR 3 $200K ($20K to be credited against license maintenance fees)
YEAR 4 $250K ($30K to be credited against license maintenance fees)
YEAR 5 $300K ($30K to be credited against license maintenance fees)
