EXHIBIT 10.1
AGREEMENT, dated May 27, 2004 (the "Effective Date"), between THE TRUSTEES OF
COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, a New York corporation
("Columbia"), and, SENTIGEN BIOSCIENCES Inc. a Delaware corporation ("Company").
1. Acknowledgements.
a. Each party acknowledges that the Patents were jointly developed by
employees of Company and employees of Columbia.
b. Columbia represents that its employees have an obligation to assign
their rights to Columbia.
c. Company represents that its employees have an obligation to assign
their rights to Company.
d. Each party acknowledges that the Patents are jointly owned by the
parties and that each party has an independent right to exploit the
Patent and an independent right to sublicense their rights.
2. Definitions.
a. "Affiliate" shall mean any corporation or other business entity
that, as of the Effective Date, directly or indirectly controls, is
controlled by, or is under common control with the Company. Control
means ownership or other beneficial interest in more than 50% of the
voting stock or other voting interest of a corporation or other
business entity.
b. "Field" shall mean all fields of use.
c. "Net Sales" shall mean the total of all fees and other consideration
received by Company and any Affiliate for the use, sale, rental, or
lease of Products, less returns and customary trade discounts and
rebates actually given, outbound freight, value added, sales or use
taxes, and custom duties. No other costs incurred in the
manufacturing, selling, advertising, and distribution of the
Products shall be deducted. In the case of transfers of Products to
an Affiliate by Company for sale, rental, or lease of such Products
to third parties by such Affiliate, Net Sales shall be based upon
the greater of the total fees and other consideration charged by the
Affiliate to third parties or the total fees and consideration
charged by Company to the Affiliate.
d. "Patent" or "Patents" shall mean the United States and foreign
patents and/or patent applications listed in Exhibit A hereto; any
and all patents issuing from the patent applications listed in
Exhibit A and from any divisionals, continuations and
continuations-in-part of such patent applications, and any reissues,
re-examinations, renewals, substitutions, extensions, confirmations
and registrations of such patents.
e. "Product" or "Products" shall mean any product (or component
thereof) the making, use, sale, offer for sale, importation of
which, but for the license granted herein, would constitute an
infringement (whether direct, contributory or inducing) of any Valid
Claim of a Patent. Product or Products shall include any therapeutic
products discovered or developed, in whole or in part, through use
of any Patents.
f. "Sublicensee" shall mean any third party to whom the Company has
granted a sublicense pursuant to this Agreement.
g. "Sublicense Receipts" shall mean the total of all fees and other
consideration received, following United States FDA approval of a
Product issued to any applicant, by Company and any Affiliate from a
Sublicensee for the sublicense of such approved FDA Product; except
Sublicense Receipts shall not include:
(i) fair market value payments for bona fide research and
development, or
(ii) fair market value payments for bona fide goods and
services provided by Company to Sublicensee, or
(iii) Fair Market Value (as such term is defined in Exhibit B)
of Sublicensee's purchase of equity in Company, but
Sublicense Receipts does include any premium over Fair
Market Value paid for equity in the Company or
(iv) Sublicensee's debt investment in Company.
h. "Territory" shall mean worldwide.
i. "License Year" shall mean the one year period from the Effective
Date of this Agreement or an anniversary thereof to the next
anniversary of the Effective Date.
j. "Valid Claim" means an unexpired claim of a patent application or
issued patent of the Patents which has not been held unenforceable,
unpatentable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealed within the
time allowed for appeal or unappealable, and which claim has not
been cancelled, disclaimed or admitted to be invalid or
unenforceable through amendment or cancellation in prosecution,
reissue, reexamination, disclaimer or otherwise.
3. License Grant.
a. Columbia grants to the Company and its Affiliates, upon and subject
to all the terms and conditions of this Agreement, an exclusive
license under its rights in the Patents to discover, develop,
manufacture, have made, use, sell, have sold, offer to sell, import,
distribute, rent or lease Products in the Field throughout the
Territory.
b. Columbia grants to the Company and its Affiliates, upon and subject
to all the terms and conditions of this Agreement, the right to
grant sublicenses to third parties to Columbia's rights. Each such
sublicense shall be royalty-bearing. Company will notify Columbia of
any grant of a sublicense and provide to Columbia, upon request, a
copy of any sublicense agreement. No such sublicense shall relieve
the Company of its obligations to Columbia in this Agreement. In
addition, each Affiliate of Company shall abide by all the terms and
provisions of this Agreement and the Company remains fully liable
for the performance of its Affiliates' obligations hereunder.
c. All rights not specifically granted herein are reserved to Columbia.
Except as expressly provided under this Section 3, no right or
license is granted (expressly or by implication) by Columbia to
Company or its Affiliates or Sublicensees under any tangible or
intellectual property, materials, patent, patent application,
trademark, copyright, trade secret, know-how, technical information,
data or other proprietary right.
4. Reservation of Rights for Research Purposes; Freedom of Publication.
a. Columbia reserves for itself and Xxxxxx Xxxxxx Medical Institute
("HHMI") the right to use the Patents for noncommercial research
purposes in the Field.
b. The Company acknowledges that Columbia is dedicated to free
scholarly exchange and to public dissemination of the results of its
scholarly activities. Columbia, HHMI and their faculty and employees
shall have the right to publish, disseminate or otherwise disclose
the Patents; provided, however, Columbia, HHMI and their faculty and
employees shall provide any such proposed publication to Company 120
days before it is published and Company shall have the right to file
for patent protection pursuant to Section 11 on the material before
such publication and to require that all of Company's confidential
and proprietary information be removed from such proposed
publication before it is published.
5. Royalties and Payment.
a. In consideration of the licenses granted under Section 3a of this
Agreement, following United States FDA approval of a Product issued
to any applicant, the Company shall pay to Columbia a royalty of 5%
on Net Sales of such FDA approved Product by the Company and its
Affiliates in the Territory.
b. In consideration of Company's right to sublicense third parties
granted under Section 3b of this Agreement, following United States
FDA approval of a Product issued to any applicant, Company shall pay
to Columbia 5% on Sublicense Receipts in the Territory.
c. Subject to Section 2g, without the prior written consent of
Columbia, Company, its Affiliates and Sublicensees shall not solicit
or accept any consideration for the sale of any Product other than
as will be accurately reflected in Net Sales.
6. Reports and Payments.
a. Sixty (60) days after the first business day of each calendar
quarter of each License Year of this Agreement, the Company shall
submit to Columbia a written report with respect to the preceding
calendar quarter (the "Payment Report") stating:
(i) Net Sales by the Company and any Affiliate during such
quarter with detailed information including product
names, country where manufactured, country where sold,
average selling price, units sold, discounts given,
foreign withholding tax rates, exchange rates used,
other deductions taken, etc. to derive gross sales;
(ii) In the case of transfers or distributions of Products by
the Company to an Affiliate for sale, rental, lease,
transfer or other distribution of such Products by the
Affiliate to third parties, Net Sales by the Company to
the Affiliate and Net Sales by the Affiliate to third
parties during such quarter;
(iii) Sublicense Receipts received during such quarter
together with the respective payment reports received by
Company or its Affiliates from any Sublicensees; and
(iv) A calculation under Section 5 of the amounts due to
Columbia, making reference to the applicable subsection
thereof.
b. Simultaneously with the submission of each Payment Report, the
Company shall make payments to Columbia of the amounts due for the
calendar quarter covered by the Payment Report. Payment shall be by
check payable to The Trustees of Columbia University in the City of
New York and sent to the following address:
Science and Technology Ventures
Columbia University
General Post Office
X.X. Xxx 00000
Xxx Xxxx, XX 00000-0000
or to such other address as Columbia may specify by notice
hereunder, or, if requested by Columbia, by wire transfer of
immediately available funds by Company to a bank and account
identified by notice to the Company by Columbia. Company is required
to send the quarterly royalty statement whether or not royalty
payments are due.
c. Within sixty (60) days after the date of termination or expiration
of this Agreement, the Company shall pay Columbia any and all
amounts that are due pursuant to this Agreement as of the date of
such termination or expiration, together with a Payment Report for
such payment in accordance with Section 6a hereof, except that such
Payment Report shall cover the period from the end of the last
calendar quarter prior to termination or expiration to the date of
termination or expiration.
d. With respect to revenues obtained by the Company in foreign
countries:
(i) The Company shall make royalty payments to Columbia in
the United States in United States Dollars. Royalty
payments for transactions outside the United States
shall first be determined in the currency of the country
in which they are earned, and then converted to United
States Dollars using the buying rates of exchange quoted
by Citibank, N.A. (or its successor) in New York, New
York for the last business day of the calendar quarter
in which the royalties are earned. Any and all loss of
exchange value, taxes or other expenses incurred in the
transfer or conversion of foreign currency into United
States Dollars, and any income, remittance, or other
taxes on such royalties required to be withheld at the
source shall be the exclusive responsibility of Company.
Royalty statements shall show sales both in the local
currency and United States Dollars, with the exchange
rate used clearly stated.
(ii) If transfer restrictions exist in any country which
prevent making payments in the United States, Company
shall make all reasonable efforts to procure whatever
licenses or permits are required to waive such
restrictions or otherwise facilitate the making of such
payments. If Company's efforts fail to permit making
payments in the United States, Company may make such
payments in local currency in the country where such
restrictions exist by depositing the payments in a local
bank or other depository designated by Columbia.
e. The Company shall maintain at its principal office usual books of
account and records showing its actions under this Agreement. Upon
reasonable notice, such books and records shall be open to
inspection and copying, during usual business hours, by an
independent certified public accountant to whom the Company has no
reasonable objection, for seven years after the calendar quarter to
which they pertain, for purposes of verifying the accuracy of the
amounts paid by the Company under this Agreement. In the event that
such review shows that the Company has underpaid royalties or other
amounts due hereunder by five percent (5%) or more with respect to
any calendar quarter, the Company shall pay, within ten days after
demand by Columbia, the costs and expenses of such review. In the
event of a licensing inspection, Company is required to provide
auditors with detailed information including detailed sales,
inventory, manufacturing,
purchasing, transfer records, customer lists, access to invoices,
purchase orders, sales orders, shipping documentation, cost
information, pricing policies, agreements with the Company's
Sublicensees, agreements with the Company's or its Affiliates'
customers or other third parties, etc.
f. Notwithstanding anything to the contrary in this Agreement
(including Section 15b, and without limiting any of Columbia's
rights and remedies hereunder, any payment required hereunder that
is made late (including unpaid portions of amounts due) shall bear
interest, compounded monthly, at the rate of 10% per annum. Any
interest charged or paid in excess of the maximum rate permitted by
applicable law shall be deemed the result of a mistake and interest
paid in excess of the maximum rate shall be credited or refunded (at
the Company's option) to Company.
g. Company shall submit annual sales forecasts for Columbia's internal
budget purposes.
7. Diligence.
a. The Company shall use its best efforts to research, discover,
develop and market Products for commercial sale and distribution
throughout the Territory, and to obtain all licenses and permits
necessary to do so. Company shall meet it obligations under this
Section 7 if:
(i) From the Effective Date through December 31, 2005,
Company will have spent a minimum of $1,000,000 on
research related to development of Products using the
Patents; and
(ii) From January 1, 2006 through December 31, 2010, Company
will have spent a minimum of $100,000 per year on
research related to the development of Products using
the Patents.
b. Notwithstanding any other provisions of this Agreement but subject
to Section 15b, failure to achieve any of Company's diligence
obligations under this Section shall result in Columbia having the
option of terminating the licenses granted to its rights under
Section 3 in accordance with Section 16 of this Agreement.
c. On each anniversary of the Effective Date of this Agreement, the
Company shall report in writing to Columbia on progress made toward
the diligence objectives set forth above.
8. Disclaimer of Warranty; Limitations of Liability.
a. COLUMBIA IS LICENSING THE PATENTS AND THE SUBJECT OF ANY OTHER
LICENSE HEREUNDER TO THE COMPANY AND ITS AFFILIATES ON AN "AS IS"
BASIS. COLUMBIA MAKES NO WARRANTIES EITHER EXPRESS OR IMPLIED OF ANY
KIND, AND HEREBY EXPRESSLY DISCLAIMS ANY WARRANTIES, REPRESENTATIONS
OR GUARANTEES OF ANY KIND AS TO PATENTS, PRODUCTS AND/OR ANYTHING
DISCOVERED, DEVELOPED, MANUFACTURED, USED, SOLD, OFFERED FOR SALE,
IMPORTED, DISTRIBUTED, RENTED, LEASED OR OTHERWISE DISPOSED OF UNDER
ANY LICENSE GRANTED HEREUNDER, INCLUDING BUT NOT LIMITED TO: ANY
WARRANTIES OF MERCHANTABILITY, TITLE, FITNESS, ADEQUACY OR
SUITABILITY FOR A PARTICULAR PURPOSE, USE OR RESULT; ANY WARRANTIES
AS TO THE VALIDITY OF ANY PATENT; AND ANY WARRANTIES OF FREEDOM OF
INFRINGEMENT OF ANY DOMESTIC OR FOREIGN PATENTS, COPYRIGHTS, TRADE
SECRETS OR OTHER PROPRIETARY RIGHTS OF OTHER PARTIES. NEITHER
COLUMBIA, NOR ANY EMPLOYEE OR AGENT OF COLUMBIA, SHALL HAVE ANY
LIABILITY TO THE COMPANY, ITS SUBLICENSEES OR AFFILIATES, OR ANY
OTHER PERSON
ARISING OUT OF THE USE OF PATENTS, PRODUCTS AND/OR ANYTHING
DISCOVERED, DEVELOPED, MANUFACTURED, USED, SOLD, OFFERED FOR SALE,
IMPORTED, DISTRIBUTED, RENTED, LEASED OR OTHERWISE DISPOSED OF UNDER
ANY LICENSE GRANTED HEREUNDER BY COMPANY, ITS SUBLICENSEES OR
AFFILIATES, OR ANY OTHER PARTY FOR ANY REASON, INCLUDING BUT NOT
LIMITED TO, THE UNMERCHANTABILITY, INADEQUACY OR UNSUITABILITY OF
THE PATENTS, PRODUCTS AND/OR ANYTHING DISCOVERED, DEVELOPED,
MANUFACTURED, USED, SOLD, OFFERED FOR SALE, IMPORTED, DISTRIBUTED,
RENTED, LEASED OR OTHERWISE DISPOSED OF UNDER ANY LICENSE GRANTED
HEREUNDER FOR ANY PARTICULAR PURPOSE OR TO PRODUCE ANY PARTICULAR
RESULT, OR FOR ANY LATENT DEFECTS THEREIN OR THE INFRINGEMENT OF ANY
DOMESTIC OR FOREIGN PATENTS, COPYRIGHTS, TRADE SECRETS OR OTHER
PROPRIETARY RIGHTS OF OTHER PARTIES.
b. Notwithstanding anything else in this agreement, neither Columbia
nor Company will be liable with respect to any subject matter of
this agreement under any contract, negligence, strict liability or
other legal or equitable theory for any incidental, special,
indirect, consequential or punitive damages or lost profits or
otherwise including, but not limited to, from any destruction to
property or from any loss of use, revenue, profit, time or good
will, arising from the use, operation or application of the Patents,
Products and/or anything discovered, developed, manufactured, used,
sold, rented, leased or otherwise disposed of under any license
granted hereunder.
c. In no event shall Columbia's liability to the Company exceed the
payments made to Columbia by Company under this Agreement.
d. The parties hereto acknowledge that the limitations and exclusions
of liability and disclaimers of warranty set forth in this Agreement
form an essential basis of the bargain between the parties.
9. Prohibition Against Use of Columbia's Name.
Unless required by government law, rule or regulation, Company will not use the
name, insignia, or symbols of Columbia, its faculties or departments, or any
variation or combination thereof, or the name of any trustee, faculty member,
other employee, or student of Columbia for any purpose whatsoever without
Columbia s prior written consent; unless the faculty member, other employee, or
student is a consultant or employee of Company.
10. Compliance with Governmental Obligations.
a. Notwithstanding any provision in this Agreement, Columbia disclaims
any obligation or liability arising under the license provisions of
this Agreement if the Company is charged in a governmental action
for not complying with or fails to comply with governmental
regulations in the course of taking steps to bring any Product to a
point of practical application.
b. Each party shall comply upon reasonable notice from the other party
with all governmental requests directed to either party and provide
all information and assistance necessary to comply with the
governmental requests.
c. The Company shall insure that its research, development,
manufacturing and marketing under this Agreement complies with all
government regulations in force and effect including, but not
limited to, Federal, state, and municipal legislation.
11. Patent Prosecution and Maintenance; Infringement.
a. Company shall have the right, but not the obligation to prepare,
file, prosecute and maintain all Patents. Company's counsel will
prepare, file, prosecute and maintain all Patents in Company's and
Columbia's names and in countries designated by Company. Company
will pay the expenses incurred in filing, prosecuting and
maintaining such Patents, including attorneys' fees, the costs of
any interference proceedings, reexaminations, or any other ex parte
or inter partes administrative proceeding before patent offices,
taxes, annuities, issue fees, working fees, maintenance fees and
renewal charges. Company's counsel shall provide copies of
correspondence with the patent offices to Columbia or Columbia's
designated counsel in a reasonably timely manner. Columbia or its
counsel will have a reasonable opportunity to provide substantive
review and comment on any such correspondence; provided, however,
Company shall have the final decision on any correspondence filed
with the patent offices.
b. In the event that Company decides not to file any or all United
States and foreign applications or to continue prosecution of a
patent application to issuance or maintain any United States or
foreign patent application or patent, Company shall timely notify
Columbia in writing in order that Columbia may file United States or
said foreign applications and continue said prosecution or
maintenance of such patent applications at Columbia's sole expense.
Company's exclusive right under this Agreement to practice the
invention under the patent in which Columbia took over prosecution
or maintenance shall become non-exclusive immediately upon Columbia
assuming the costs. The Company will be deemed not to want to file
or continue prosecution of a Patent in a particular country or
countries if it fails to respond within thirty (30) days to a
written inquiry from Columbia concerning such filing or continued
prosecution.
c. Company shall have the right, but not the obligation, to protect the
Patents from infringement and prosecute infringers at its own
expense when in its sole judgment such action may be reasonably
necessary, proper, and justified. Any recovery from infringement
shall be used to reimburse Company for the costs and expenses of the
litigation and the remainder after such reimbursement shall belong
to Company and shall be treated as Net Sales subject to payments
under Section 3.
d. If Company institutes any action under this Section 11 to protect or
enforce the Patents it shall have sole control of that proceeding.
Columbia agrees to cooperate and provide assistance at the request
of Company, and Company shall be responsible for the reasonable
expenses incurred by Columbia in providing the requested assistance
and cooperation.
e. Company and Columbia shall be joint owners of the Patents.
12. Indemnity and Insurance.
a. The Company will indemnify, defend and hold Columbia, HHMI and their
respective trustees, officers, faculty, employees and agents,
harmless from and against any and all actions, suits, claims,
demands, prosecutions, liabilities, costs, expenses, damages,
deficiencies, losses or obligations (including attorneys' fees)
based on or arising out of this Agreement, including, without
limitation, (i) the discovery, development, manufacture, packaging,
use, sale, offering for sale, importation, distribution, rental or
lease of Products, even if altered for use for a purpose not
intended, (ii) the use of Patents by the Company, its Affiliates,
its Sublicensees or its (or their) customers, (iii) any
representation made or warranty given by the Company, its Affiliates
or Sublicensees with respect to Products or Patents, (iv) any
infringement claims relating to Products or Patents, and (v) any
asserted violation of the Export Laws (as defined in
Section 14 hereof) by the Company, its Affiliates or Sublicensees.
The Company will reimburse Columbia for the cost (including
attorney's fees) of enforcing this provision.
b. The Company shall maintain, during the term of this Agreement,
commercial general liability insurance (including product liability
and contractual liability insurance) with reputable and financially
secure insurance carriers to cover the activities of the Company,
its Affiliates and its Sublicensees, for minimum limits of
$1,000,000 combined single limit for bodily injury and property
damage per occurrence and $2,000,000 in the aggregate. Such
insurance shall include Columbia, HHMI, and their respective
trustees, faculty, officers, employees and agents, as additional
insureds. The Company shall furnish a certificate of insurance
evidencing such coverage, within thirty days' written notice to
Columbia of cancellation or material change in coverage. The minimum
amounts of insurance coverage required herein shall not be construed
as creating any limitation on the Company's indemnity obligation
under Section 12a of this Agreement.
c. The Company's insurance shall be primary coverage; any insurance
Columbia and/or HHMI may purchase shall be excess and
noncontributory. The Company's insurance shall be written to cover
claims incurred, discovered, manifested, or made during or after the
expiration of this Agreement.
d. The Company shall at all times comply with all statutory workers'
compensation and employers' liability requirements covering its
employees with respect to activities performed under this Agreement.
13. Marking.
Company will comply with the marking laws of the countries in which it does
business regarding the Patents. The Company shall cause its Affiliates and
Sublicensees to comply with the marking requirements of this Section 13.
14. Export Control Laws.
This Agreement is made subject to any restrictions concerning the export of
products or technical information from the United States of America which may be
imposed from time to time by the government of the United States of America.
Each party shall cooperate with the other party as reasonably necessary to
comply with the laws and administrative regulations of the United States
relating to the control of exports of commodities and technical data ("Export
Laws"). Each party hereby assures the other party that the it will not export or
re-export, directly or indirectly, any technical information acquired from the
other party under this Agreement or any products using such technical
information or any part thereof to any country for which a validated license is
required for such export or re-export under the Export Laws in effect at the
time without first obtaining such a validated license.
15. Breach and Cure.
a. In addition to applicable legal standards,
(i) the Company shall be considered to be in material breach
of this Agreement for:
(w) failure to pay fully and promptly amounts due
pursuant to Section 5 and payable pursuant to
Section 6;
(x) failure of the Company to meet any of its
obligations under Sections 3 or 7 of this
Agreement; and
(ii) either party shall be considered to be in material
breach of this Agreement for its:
(y) failure to comply with governmental requests
directed to Columbia or the Company pursuant to
Section 10b; or
(z) failure to comply with the Export Laws under
Section 14.
b. Either party shall have the right to cure its material breach. The
cure shall be effected within a reasonable period of time but in no
event later than ninety (90) days after notice of any breach given
by the non-breaching party.
16. Term of Agreement.
a. This Agreement shall be effective as of the Effective Date and shall
continue in full force and effect until its expiration or
termination in accordance with this Section 16.
b. Unless terminated earlier under any provision of this Agreement, the
term of the licenses granted hereunder shall extend, on a
country-by-country basis, until the later of the date of expiration
of the last to expire of the Patents.
c. This Agreement, and all licenses granted under this Agreement, may
be terminated by Columbia:
(i) upon thirty (30) days written notice to the Company if
Columbia elects to terminate in accordance with Section
7b;
(ii) upon written notice to the Company for the Company's
material breach of the Agreement and the Company's
failure to cure such material breach in accordance with
Section 15b;
(iii) should the Company commit any act of bankruptcy, become
insolvent, file a petition under any bankruptcy or
insolvency act or have any such petition filed against
it or
(iv) Company fails to obtain and maintain product liability
insurance in the amount and of the type provided for
herein.
d. Sections 6e, 0x, 0, 0, 00, 00, 00, 00x, 00x, 00x, 17, 18, 19, 20,
21, 22, 23 and 24 will survive any termination or expiration of this
Agreement.
e. Any termination of this Agreement shall not adversely affect any
rights or obligations that may have accrued to either party prior to
the date of termination, including without limitation, the Company's
obligation to pay all amounts due and payable under Sections 5 and 6
hereof.
f. Upon any termination of this Agreement for any reason, the Company
still retains its joint ownership rights in the Patents and, without
any obligation to pay Columbia for any actions taken after such
termination, its non-exclusive rights to
(i) discover, develop, manufacture, have made, use, sell,
have sold, offer to sell, import, distribute, rent or
lease Products in the Field throughout the Territory and
(ii) sublicense the same.
17. Assignment.
This Agreement and all rights and obligations hereunder may not be assigned by
either party without the written consent of the other party. Any attempt to
assign without compliance with this provision shall be void.
18. Waiver.
The failure of any party to insist upon strict adherence to any term of this
Agreement on any occasion shall not be considered a waiver or deprive that party
thereafter of the right to insist upon strict adherence to that term or any
other term of this Agreement. All waivers must be in writing and signed by an
authorized representative of the party against
which such waiver is being sought.
19. Binding on Successors.
This Agreement shall be binding upon and inure to the
benefit of the parties and their respective successors and assigns to the extent
assignment is permitted under this Agreement.
20. Notices.
Any notice required or permitted to be given under this Agreement shall be
sufficient if in writing and shall be considered given
(i) when mailed,certified mail (return receipt requested),
postage prepaid, or
(ii) on the date of actual delivery by hand or overnight
delivery, with receipt acknowledged, if to Columbia, to:
Executive Director
Science & Technology Ventures
Columbia Innovation Enterprises
Columbia University
Engineering Terrace, Suite 363
500 West 120th Street, Mail Code 0000
Xxx Xxxx, Xxx Xxxx 00000
copy to: General Counsel
Columbia University
000 Xxx Xxxxxxxx Xxxxxxx
000 Xxxx 000xx Xxxxxx, Mail Code 0000
Xxx Xxxx, Xxx Xxxx 00000
if to HHMI (for purposes of Section 12 only):
Xxxxxx Xxxxxx Medical Institute
Office of the General Counsel
0000 Xxxxx Xxxxxx Xxxx
Xxxxx Xxxxx, Xxxxxxxx 00000
if to the Company, to:
Xxxxxx X. Xxxxxx
Chairman, CEO, and President
SENTIGEN Holding Corp.
Audobon Biomedical Center
0000 Xxxxxxxx
Xxx Xxxx, XX 00000
copy to: Fulbright & Xxxxxxxx LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
or to such other address as a party may specify by notice hereunder.
21. Independent Contractors.
It is the express intention of the parties that the relationship of Columbia and
the Company shall be that of independent contractors and shall not be that of
agents, partners or joint venturers. Nothing in this Agreement is intended or
shall be construed to permit or authorize either party to incur, or represent
that it has the power to incur, any obligation or liability on behalf of the
other party.
22. Entire Agreement; Amendment.
This Agreement, together with the Exhibits, sets forth the entire agreement
between the parties concerning the subject matter hereof and supersedes all
previous agreements, written or oral, concerning such subject matter. This
Agreement may be amended only by written agreement duly executed by the parties.
23. Governing Law.
This Agreement shall be governed by New York Law applicable to agreements made
and to be fully performed in New York, and without reference to the conflict of
laws principles of any jurisdiction.
24. Third-Party Beneficiaries.
HHMI is not a party to this Agreement and has no liability to any licensee,
sublicense, or user of anything covered by this Agreement, but HHMI is an
intended third-party beneficiary of this Agreement, and certain of its
provisions are for the benefit of HHMI and are enforceable by HHMI in its own
name. Except as expressly set forth herein, Company and Columbia agree that
there are no third-party beneficiaries of any kind to this Agreement.
IN WITNESS WHEREOF, Columbia and the Company have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
written above.
THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK
By: /s/ Xxxxxxx X. Xxxxxx
Xxxxxxx X. Xxxxxx
Executive Director, Science & Technology Ventures
SENTIGEN BIOSCIENCES Inc.
By: /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxxx
Chairman, CEO and President
EXHIBIT A
PATENTS
Application
Number Filing Date Title Inventors
----------- ------------ ------------------- -----------------------
60/485,968 07/09/2003 Method for Assaying Xxxxxxx Xxxx, Gilad
Receptor Activity Barnea, Xxxxx Xxx, and
Xxxxxx Xxxxxxx
60/511,918 10/15/2003 Method for Assaying Xxxxxxx Xxxx, Gilad
Receptor Activity Barnea, Xxxxx Xxx, and
Xxxxxx Xxxxxxx
60/566,113 4/27/2004 Method for Assaying Xxxxxxx Xxxx, Gilad
Receptor Activity Barnea, Xxxxx Xxx, and
Xxxxxx Xxxxxxx
EXHIBIT B
FAIR MARKET VALUE
As used Section 2g(iii) , the "Fair Market Value" per share of capital stock
shall mean the greater of $3.00 and
(A) if such class of capital stock is then traded on a national
securities exchange or the Nasdaq National Market (or a
similar national quotation system), an amount equal to the
average of the closing prices per share of shares of such
class of capital stock on such exchange or system for the
twenty (20) trading-day period ending three (3) days prior to
the date of issuance of such capital stock to Sublicensee;
(B) if such class of capital stock is then traded
over-the-counter, an amount equal to the average of the
closing bid prices per share of shares of such class of
capital stock over the twenty (20) trading day period ending
three (3) days prior to the date of issuance of such capital
stock to Sublicensee; and
(C) if such class of capital stock is not then traded on a
national securities exchange, any such national quotation
system or over-the-counter, an amount per share as determined
in good faith by the Board of Directors of Company to be the
Fair Market Value of the shares; provided, that the Company
shall furnish to Columbia a written report setting forth in
reasonable detail the basis for such determination, and shall
promptly furnish to Columbia all such additional information
as Columbia may request in connection with its review of such
determination.
If Columbia objects in writing to the Company's determination within (30) days
following the date Columbia receives such report, then at the request of
Columbia the Fair Market Value of such shares shall be determined by an
independent accounting firm, investment bank or valuation firm which has not had
any relationship with Columbia or the Company or an Affiliate for a period of
three years prior to such determination (the "Appraiser"); the parties, acting
reasonably and in good faith, shall mutually agree upon the Appraiser. Company
shall promptly furnish to the Appraiser all such information as the Appraiser
may request in connection with such determination. The fees and expenses of the
Appraiser shall be shared equally by the Company and Columbia; provided that if
the Fair Market Value determined by the Appraiser is less than ninety-five (95%)
of the Fair Market Value as determined by Company's Board of Directors, then all
such fees and expenses shall be borne by Company.
