[*] indicates that a confidential portion of the test of this agreement has been
omitted and filed separately with the Securities and Exchange Commission.
LICENSE AGREEMENT
This License Agreement (hereinafter referred to as "Agreement") is made and
effective as of the 15th of December, 1993, by and between XOMA CORPORATION
(hereinafter referred to as "Licensor"), a Delaware corporation, having an
office at 0000 Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxx, 00000;
AND
RESEARCH DEVELOPMENT FOUNDATION (hereinafter referred to as "Licensee"), a
Nevada nonprofit corporation having its office at 000 Xxxxx Xxxxxxxx Xxxxxx,
Xxxxxx Xxxx, Xxxxxx 00000.
WITNESSETH:
WHEREAS, Licensor is the owner of certain inventions, discoveries, and
know-how comprising certain Proprietary Property (as hereinafter defined)
described in Exhibit 1 hereto;
WHEREAS, Licensor is the owner of all the right, title and interest in and
to said Proprietary Property and has determined that the grant of exclusive and
non-exclusive licenses to Licensee as described herein is the best way in which
the Proprietary Property can be utilized to benefit the public and its
stockholders;
WHEREAS, Licensor has filed for patents and/or other protection therefor in
the countries listed in Exhibit 2 hereto;
WHEREAS, Licensee is a nonprofit organization exempt from taxation under
Section 501(c)(3) of the Internal Revenue Code of 1986;
WHEREAS, Licensee desires to obtain exclusive and non-exclusive worldwide
licenses from Licensor as described herein to produce, have produced, make, have
made, manufacture, have manufactured, use, sell, rent, and/or lease ("make, use,
or sell") methods, processes, or products of Licensor's Proprietary Property;
WHEREAS, Licensee is the owner of certain technology and is granting
Licensor exclusive and non-exclusive licenses to such technology by a cross
license (the "Cross License") of even date herewith;
NOW, THEREFORE, in consideration of the above premises and the covenants
herein, the parties agree as follows:
ARTICLE I
Definitions
As used in this Agreement, the following terms shall have the following
respective meanings:
1.1 The term "Proprietary Property" shall mean and include all Patent
Rights and Know-How, whether patentable or not, described in Exhibit 1 hereto
and all Improvements (as herein defined);
1.2 The term "Patent Rights" shall mean rights in claims directed to
Gelonin (as herein defined) or methods or processes for the manufacture of
Gelonin of any United States patent issued on, and in claims of any foreign
patent granted on, the patent applications listed in Exhibit 1 hereto, or in
such claims of any divisions, continuations and continuations-in-part based
thereon, reissues, patents of addition or importation, or extensions thereof.
1.3 The term "Know-How" shall mean all information, data, specifications,
techniques, and methods of manufacture described in Exhibit 1 hereto.
1.4 The term "Improvements" shall mean refinements, enhancements, or
improvements in Gelonin itself or in methods or processes for the manufacture of
Gelonin itself described in the claims of the Patent Rights or consisting of
Know-How which are developed during the term of this Agreement.
1.5 The terms "commercialize," "commercializing," and "commercialization"
shall mean the sale, licensing, or other use by Licensee of the right to use the
methods or processes for the manufacture of Gelonin or to make, use, or sell
products within the scope of the Proprietary Property and this Agreement under
such circumstances as may be permitted by applicable international, federal, and
state laws and regulations.
1.6 The term "Fields of Use" shall mean the applications described in
Exhibit 3 hereto.
1.7 The term "Product" shall mean any material, composition, product or
portion of a product that embodies an invention claimed, or which results from
or is specifically
-2-
intended to be used to practice a method or process claimed, within the Patent
Rights and which is made, used, or sold by or for Licensee (or its sublicensees)
and, if not for the licenses granted herein, would infringe a claim of an issued
patent within the Patent Rights.
1.8 The term "Gross Revenues" shall mean charges actually collected by
Licensee from the making, use, or sale of Products, less:
(a) usual trade and/or cash discounts actually allowed and taken;
(b) forwarding expenses, freight, special packaging charges, postage and
duties actually paid or allowed and taxes imposed directly on the
seller with respect to such sales; and
(c) credits for goods returned or rejected.
No other allowance or deduction shall be made by whatever name known.
1.9 The term "Subsidiaries" shall mean any present or future companies
organized under the laws of any nation with respect to which (i) at least 50
percent in value or (ii) at least 50 percent of the total combined voting power
of all classes of shares entitled to vote is directly or indirectly under the
control of Licensee. The term "Licensee" wherever used herein shall include any
Subsidiaries of Licensee.
1.10 The term "Gelonin" shall mean and include gelonin as defined in the
claims of any United States patent issued on and in claims of any foreign patent
granted on the patent applications listed in Exhibit 1 hereto.
ARTICLE II
Grant of License
2.1 Licensor hereby grants and Licensee hereby accepts:
(a) a worldwide, exclusive license in the Fields of Use to make, use,
or sell Products;
(b) outside the Fields of Use, and outside those fields of use
exclusively granted to Licensor in the Cross License which are
hereby excluded from this grant to Licensee, a worldwide,
non-exclusive license to make, use, or sell Products; and
(c) outside those fields of use exclusively granted to Licensor in
the Cross License which are hereby
-3-
excluded from this grant to Licensee, a worldwide, non-exclusive
sublicense under the license described on Exhibit 4 hereto (the
"Governing License") to make, use, or sell Gelonin or Products
containing Gelonin as a significant component thereof (but only
to the extent that Licensor is entitled pursuant to the Governing
License to grant sublicenses of the scope set forth in this
paragraph (c)); provided that such sublicense shall be
royalty-free with respect to XOMA; provided further that Licensee
shall pay any royalties or other amounts owing to Sanofi and/or
any other third party arising out of Licensee's activities as
sublicensee under the Governing License directly to Sanofi or
such third party; [*]
[*]
Except as provided herein, no other, further, or different license or sublicense
is hereby granted, either expressly or by implication.
2.2 The licenses granted in Section 2.1 above shall include the license and
right to use Know-How in the exercise of such license rights and to incorporate
Know-How in any Products that Licensee makes, uses, or sells in accordance with
said Section 2.1; [*]
2.3 Licensor hereby grants and Licensee hereby accepts the right to grant
sublicenses to others within the scope of the license and sublicense grants made
in Section 2.1 above, but only under the terms and conditions herein set forth
and in the Governing License. Licensee accepts all responsibility for obtaining
binding agreements from and enforcing all terms and conditions hereof upon any
and every such sublicensee.
ARTICLE III
Patent Prosecution and Improvements
3.1 Licensor represents that it has timely filed patent applications
relating to the Patent Rights in the countries listed on Exhibit 2 hereto.
Licensor hereby agrees that if Licensor fails to file a patent application
relating to the Patent Rights in any country within six months after receipt of
a written request from Licensee to do so, Licensor shall be deemed to have
consented to Licensee filing and maintaining such patent
-4-
application in the name of Licensor at Licensee's expense. Following the
issuance of a patent as a result of any such filing by Licensee, such patent
shall be deemed included in the Patent Rights, and Licensee shall be entitled to
deduct all reasonable fees (including counsel fees) and expenses incurred in
obtaining or maintaining such patent from royalties otherwise payable to
Licensor as a result of such patent issuance.
3.2 Licensor further agrees to use commercially reasonable efforts to
prosecute United States and foreign patent applications it has filed or files
related to the Patent Rights, and to maintain any patents issued thereon.
Notwithstanding the foregoing sentence, in the event that Licensor decides to
discontinue prosecution or maintenance of a patent or patent application related
to the Patent Rights in a particular country, Licensor shall promptly notify
Licensee. Upon receipt of such notice, Licensee, in its sole discretion, may
elect to assume responsibility (and thereafter pay all associated fees and
expenses) with respect to any such patent application or patent. If Licensee
elects to assume responsibility for a patent application or patent which
Licensor intends to abandon, following issuance of the patent Licensee may
deduct from the royalties payable to Licensor as a result of such patent the
reasonable fees (including counsel fees) and expenses incurred in connection
with prosecution of such patent application or maintenance of any such patent.
Licensee may, in its sole discretion, abandon any such patent application or
patent for which it has previously assumed responsibility and will not be liable
to Licensor in any way for such abandonment, but shall promptly notify Licensor
of any decision to abandon any such patent or application.
3.3 Consistent with the definitions contained in Article I, Licensor agrees
to make available promptly to Licensee during the term of this Agreement any
Improvements now or hereafter found, owned, or controlled by Licensor. Such
Improvements and the corresponding rights throughout the world shall be the
property of Licensor, and shall be included in the Proprietary Property licensed
to Licensee upon the terms and conditions set forth in this Agreement.
3.4 If patentable or otherwise protectable Improvements are now or
hereafter made and found by agents or employees of Licensor or otherwise owned
by Licensor, and Licensor, at its sole discretion, considers it desirable to
obtain patent protection thereon, Licensee agrees to cooperate fully and to do
all proper things reasonably necessary or desirable to obtain and maintain
patent protection therefor throughout the world, all at Licensor's
-5-
expense.
3.5 Notwithstanding the provisions in Section 3.4 above, if Licensor fails
to file an application for patent protection for Improvements within six months
after receipt of a written request from Licensee to do so, Licensor shall be
deemed to have consented to Licensee obtaining and maintaining the necessary
protection therefor in the name of Licensor at Licensee's expense and, following
issuance of a patent, Licensee shall be entitled to deduct the reasonable fees
(including counsel fees) and expenses incurred in connection with such
protection from the royalty payments that Licensee is obligated to pay to
Licensor under this Agreement as a result of such patent. The filing and
prosecuting of the United States patent applications by Licensee shall in no
case go beyond an appeal to and a decision by the United States Patent and
Trademark Board of Appeals, unless Licensor specifically agrees otherwise in
writing.
3.6 If either Licensor or Licensee files patent applications or otherwise
obtains patent rights for Improvements, such patent applications or patent
rights shall be included in the Patent Rights, and Licensee shall have exclusive
and non-exclusive worldwide licenses therefor under the terms and conditions as
set forth in this Agreement.
[*]
ARTICLE IV
Royalties
4.1 Licensee shall pay Licensor during the term of this Agreement an earned
royalty of [*] on Gross Revenues with respect to all sales or uses of Products
[*].
4.2 Only one royalty shall be payable on a Product, regardless of the
number of licensed patents or patent applications of the Patent Rights under
which such Product has been manufactured, used or sold. In those cases where a
Product is sold as a part of an article which includes additional materials or
components, the production of which does not use the inventions, processes or
methods of the Patent Rights, the Gross Revenues shall be based on the sales
price at which Licensee would sell the Product independently of such other
materials or components in an arm's length transaction.
-6-
4.3 Royalty payments, as provided in Section 4.1 of this Agreement, to be
paid hereunder, shall be paid for a period extending until expiration of all of
the Patent Rights or, if earlier, until this Agreement is terminated as
hereinafter specified. Royalty payments shall cease for any patent which has
expired or been declared invalid by a final determination or judgment.
4.4 In the case of sublicenses, Licensee will pay to Licensor [*]
[*]
4.5 Wherever this Agreement provides that Licensee may deduct expenses,
payments or other amounts from royalties payable to Licensor, (a) such
deductions shall be applied only against royalties payable from the country with
respect to which such deductions arose, [*].
4.6 Licensee is free to make, use, and sell any toxins or other substances
other than Gelonin to any third party without paying a royalty to Licensor
hereunder.
ARTICLE V
Payments, Reports, and Third Party Negotiations
5.1 Licensee shall notify Licensor, in writing, within 30 days of the date
of the first commercial sale of each Product subject to this Agreement and/or
the signing of each sublicense hereunder, and Licensee agrees to provide a copy
of each sublicense to Licensor with such notification.
5.2 Licensee agrees that beginning with the last day of the month of the
first commercial sale of a Product, Licensor shall receive from Licensee within
90 days after the end of each three-month period thereafter:
(a) payment of earned royalties; and
(b) a report showing the information and basis on which the earned
royalties have been calculated.
5.3 All royalties payable by Licensee shall be paid in U.S. Dollars.
Conversion from currencies other than U.S. Dollars shall be at the rate of
exchange quoted in the U.S. version of The Wall Street Journal as of the last
day of the three-month period in which such royalties are accrued.
-7-
5.4 Until such time as royalties become payable pursuant to this Agreement,
Licensee agrees to make an annual report to Licensor by April 1st of each year
during the term of this Agreement covering Licensee's progress during the
previous calendar year toward research, development and commercialization.
5.5 Licensee also agrees to make a notarized written report to Licensor
within 90 days after the termination of this Agreement, stating in such report
the royalties payable hereunder, if any, and the basis therefore not previously
reported to Licensor. Licensee shall also continue to make written reports
pursuant to the provisions of this Agreement covering Gross Revenues and the
applicable earned royalties hereunder for Products made during the term of this
Agreement, but not sold, used, or reported until after termination hereof, until
such time as all such sales and uses shall have terminated. Concurrent with the
submittal of each post-termination report, Licensee shall pay Licensor all
applicable royalties.
5.6 Licensee shall keep full, true, clear and accurate records and books of
account with respect to the Products and/or Proprietary Property subject to
royalty or other payments. Said records and books of account shall be kept by
Licensee at the usual places where their like records and books are kept and
shall be retained for a period of two years following the end of the calendar
year to which they pertain. Licensor shall have the right at Licensor's expense
through its designated representatives, who shall be subject to the
confidentiality provisions of Article XII hereof, to examine and audit at all
reasonable times all such records and books of account and such other records
and accounts as may under recognized accounting practices contain information
bearing upon the amount of royalty payable to it under this Agreement. Prompt
adjustment shall be made by the proper party to compensate for any errors or
omissions disclosed by such examination or audit. [*] Neither such right to
examine and audit nor the right to receive such adjustment shall be affected by
any statement to the contrary appearing on checks or otherwise, unless such
statements appear in a letter, signed by the party having such right and
delivered to the other party, expressly waiving such right. Notwithstanding the
foregoing, Licensor may require Licensee to furnish any other information
reasonably requested to enable Licensor to evaluate Licensee's performance under
this Agreement.
-8-
5.7 Royalty payments provided for in this Agreement shall, when overdue,
bear interest at the then existing prime rate at Citibank of New York plus 4
percent per annum until paid but in no event shall such interest exceed the
usury limit as it exists from time to time in the States of Nevada or
California.
[*]
ARTICLE VI
Protection of Patents
6.1 Licensor agrees where economically justified and within reasonable
limits to protect the Proprietary Property from infringement or misappropriation
by third parties and to prosecute such infringers or defendants, but the
decision to undertake such protection shall be in the sole discretion of
Licensor and Licensor's decision as to whether any such action shall be taken by
it shall be accepted by Licensee. In the event that Licensor shall recover
profits and/or damages from said infringer or defendant, Licensor agrees to turn
over to Licensee [*] of any amounts paid to it by said infringer or defendant
after deducting any or all of its expenses, including costs and legal fees
incurred in the undertaking of such protection and/or prosecution.
6.2 Licensor and Licensee shall each give immediate written notice to the
other of any infringement of a Patent Right or misappropriation of Know-How or
Improvements by any third party as may come to its knowledge. Notwithstanding
Section 6.1, if Licensor has not within six months from the date on which it is
notified or otherwise becomes aware of an infringement or misappropriation
either terminated such infringement or initiated legal action against the
infringer or defendant, it shall, upon written request of Licensee, grant to
Licensee the right to prosecute an action against the infringer or defendant at
Licensee's expense. Licensor agrees, in the event that Licensee cannot prosecute
such infringement or misappropriation in its own name, to sign and give to
Licensee, as soon as practicable, all necessary documents in order for Licensee
to prosecute such infringement or misappropriation in the name of Licensor.
Licensee shall be entitled to deduct all its expenses, including costs and legal
fees incurred in bringing and prosecuting such infringement or misappropriation
action, from royalties due Licensor with respect to the country in which such
action is prosecuted after commencement of such infringement or misappropriation
action.
-9-
Licensee shall not settle or compromise any such suit or action without the
prior written consent of Licensor, which consent shall not be unreasonably
withheld. In the event Licensee shall recover profits and/or damages from said
infringer or defendant, Licensee agrees to turn over to Licensor [*] of any
amounts paid to it by said infringer or defendant after deducting any or all of
its expenses, including costs and legal fees incurred in the undertaking of such
prosecution.
6.3 Licensee shall promptly advise Licensor in writing of any notice or
claim of any infringement and of the commencement against it of any suit or
action for infringement of a third party patent made or brought against Licensee
and based upon the use hereunder by Licensee of the Proprietary Property.
Licensee shall have the right either to:
(a) request that Licensor enter into negotiations with such third
party to obtain rights for Licensee under the third party patent;
or
(b) request that Licensor defend such suit or action at Licensor's
expense.
6.4 Licensor is neither obligated to enter into negotiations with such
third party to obtain rights for Licensee under the third party patent nor
obligated to defend such suit or action. If Licensor, in its sole discretion,
elects to enter into negotiations with such third party to obtain rights for
Licensee under the third party patent or if Licensor, in its sole discretion,
elects to undertake at its own expense the defense of any such suit or action to
the extent that the alleged infringement is based upon such use hereunder of the
Proprietary Property, Licensee shall render Licensor all reasonable assistance
that may be required by Licensor in the negotiations or in the defense of such
suit or action. Licensor has the primary right to control the defense of any
such suit or action by counsel of its own choice, and Licensee shall have the
right, at its own expense, to be represented in any such suit or action in
respect of which Licensee is a defendant by counsel of its own choice, subject
to Licensor's right of control. Notwithstanding the foregoing, if Licensor has
not within 90 days (or such lesser period of time as is necessary to avoid entry
of a default judgment against Licensor or Licensee) from the date of receipt of
a request from Licensee under Section 6.3 either entered into negotiations with
such third party to obtain rights for Licensee under the third party patent or
initiated legal action to defend such suit, it shall, upon written request of
Licensee, grant to
-10-
Licensee, the right to enter such negotiations or defend such suit or action.
Licensee shall be entitled to deduct all its expenses, including costs and legal
fees incurred in entering into such negotiations or defending such suit or
action, from royalties due Licensor with respect to the country in which such
suit or action is prosecuted after commencement of such suit or action. Licensee
shall not settle or compromise any such suit or action without the prior written
consent of Licensor, which consent shall not be unreasonably withheld.
ARTICLE VII
Disclaimer of Liability and/or Warranty
7.1 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by Licensor as to the validity or
scope of any Proprietary Property; or
(b) a warranty or representation that anything sold, used, produced
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and/or trademarks of third parties; or
(c) an express or implied warranty of merchantability or fitness for
a particular purpose.
7.2 Licensor shall exercise reasonable care in verifying the accuracy of
information provided under this Agreement, but Licensor shall not be liable for
any damages arising out of or resulting from any information made available
hereunder or of the use thereof nor shall it be liable to Licensee for
consequential damages under any circumstances.
7.3 Licensor shall have no responsibility for the ability of Licensee to
use such information, the quality or performance of any process or any product
produced by Licensee with the aid of such information or with respect to claims
of third parties arising from Licensee's use of such information.
7.4 Licensee shall assume all responsibility and liability for the sale,
use, production, and/or commercialization of the Proprietary Property by or
through Licensee, including, but not limited to, the safety, effectiveness, and
reliability of the process and/or products produced pursuant to this Agreement.
Licensee further agrees to defend, indemnify, and hold Licensor, its trustees,
directors, officers,
-11-
employees, agents, representatives, successors, assigns and affiliated entities,
harmless from and against any and all liability, demands, damages, expenses and
losses for death, personal injury, illness, or property damage, including the
cost of defense against same, which may be asserted, or any claims which may
arise from the sale, use, production, commercialization, or other disposition of
the Proprietary Property. Licensee acknowledges that the Proprietary Property
included herein is experimental and agrees to take all reasonable precautions to
prevent death, personal injury, illness, and property damage.
7.5 Licensee agrees to purchase and/or maintain insurance coverage
sufficient, taking into account its other assets, to establish the ability of
Licensee to honor the indemnity made in Section 7.4. [*]
ARTICLE VIII
Term and Termination
8.1 The Term of this Agreement shall be for a period extending until the
life of the last to expire of the Patent Rights or the patent rights included in
the Governing License, unless sooner terminated as herein provided.
8.2 If Licensee shall determine that it intends to declare itself insolvent
or file for bankruptcy or reorganization, it shall give ten days written notice
to Licensor. Notwithstanding the above, if Licensee shall become bankrupt or
insolvent; if the business or any assets or property of Licensee shall be placed
in the hands of a receiver, assignee or trustee, whether by the voluntary act of
Licensee or otherwise; if Licensee institutes or suffers to be instituted any
procedure in bankruptcy court for reorganization or rearrangement of its
financial affairs; or if Licensee makes a general assignment for the benefit of
creditors, this Agreement shall immediately terminate unless such bankruptcy,
insolvency, receivership or assignment for the benefit of creditors shall have
been cured within 30 days of such event occurring. Upon occurrence of any of the
foregoing events, Licensee shall give immediate written notice thereof to
Licensor.
8.3 Upon any material breach or default under this Agreement by Licensee,
Licensor may give written notice thereof to Licensee, and Licensee shall have 30
days thereafter to cure such breach or default. If such breach or default is not
so cured, Licensor may then in its sole discretion and option: (a) convert the
exclusive license granted hereunder into a non-exclusive license; or (b)
terminate this Agreement and
-12-
the licenses granted by it; and/or (c) seek such other relief as may be provided
by law or in equity in such circumstances by giving written notice thereof to
Licensee.
8.4 Upon any material breach or default under the Cross License by Licensee
in its capacity as licensor thereunder, Licensor may give written notice thereof
to Licensee, and Licensee shall have 30 days thereafter to cure such default or
breach. If such breach or default is not so cured, Licensor may then in its sole
discretion and option, and in addition to any legal rights it may have pursuant
to the Cross License arising from such breach or default: (a) convert the
exclusive license granted hereunder into a non-exclusive license; or (b)
terminate this Agreement and the licenses granted by it; and/or (c) seek such
other relief as may be provided by law or in equity in such circumstances by
giving written notice thereof to Licensee.
8.5 If Licensee contests or assists another in contesting the validity of
any of the patents licensed hereunder in a court of competent jurisdiction,
Licensor shall have the right to terminate this Agreement.
8.6 Upon termination hereof for any reason, all rights, licenses, and
sublicenses granted to Licensee hereunder shall immediately terminate and all
related sublicenses shall immediately terminate or, at the option of Licensor,
be deemed to have been assigned to Licensor.
ARTICLE IX
Representations and Warranties
9.1 Licensor represents and warrants that it owns or otherwise has the
right to license or sublicense the Proprietary Property and has the legal power
and authority to extend the rights granted to Licensee pursuant to this
Agreement and has not assigned, licensed, pledged or compromised the Proprietary
Property or made any commitments or offers inconsistent with or in derogation of
the rights created by this Agreement. [*]
9.2 Licensor represents or warrants that it has no knowledge of any
information likely to have a material effect on the validity or enforceability
of any Patent Right or any claim thereof which was not disclosed to the U.S.
Patent and Trademark Office at the time that the patent applications for the
Patent Rights were filed or during the pendency of said applications through the
date of this Agreement.
-13-
9.3 Licensee represents and warrants that it has full power and authority
to enter into this Agreement and to carry out the transactions contemplated
hereby.
9.4 Except as provided above in this Article IX, neither Licensor nor
Licensee makes any representation or warranty, express or implied, including,
without limitation, any implied warranty of merchantability, fitness for a
particular purpose, or non-infringement.
ARTICLE X
Agency/Partnership
10.1 Neither party shall be deemed to be an agent of the other party as a
result of any transaction under or related to this Agreement, and shall not in
any way pledge the other party's credit or incur any obligations on behalf of
the other party.
10.2 This Agreement shall not constitute either a partnership or a joint
venture, and neither party may be bound by the other to any contract,
arrangement or understanding except as specifically stated herein.
10.3 Without prior written consent obtained from Licensor, Licensee
(including any affiliate or sublicensee of Licensee) shall not use for purposes
of sales, advertising, marketing, marking of goods, promotion to investors,
press releases or other publicity, etc.: (i) the name of (or any other
information which would identify) Licensor or any corporation which is
controlled by the same persons who control Licensor ("controlled corporation");
(ii) the names of trustees, directors, officers, or employees of Licensor or a
controlled corporation; or (iii) any trademarks (or adaptations thereof) of
Licensor or a controlled corporation.
ARTICLE XI
Marking
Licensee agrees to apply or have applied to all articles and to all
containers containing products manufactured by it or any sublicensee(s) under
this Agreement such patent notices as may be required by the laws of the
countries where manufactured or as may reasonably be requested by Licensor.
-14-
ARTICLE XII
Nondisclosure of Confidential Information
12.1 All Proprietary Property and confidential scientific and technical
information communicated by one party to the other party under this Agreement,
including information contained in patent applications, shall be kept
confidential by such other party. Notwithstanding the foregoing, either party
shall be relieved of the confidentiality obligations herein and not be prevented
by this Agreement from utilizing any information received by it from the other
party if:
(a) the information was previously known to such party, but not
including what was previously known to the inventors of the
Proprietary Property;
(b) the information is or becomes generally available to the public
through no fault of Licensee, including as a result of
publications and/or laying open to inspection of any patent
applications that Licensor may file corresponding to such U.S. or
foreign patent applications;
(c) the information is acquired in good faith in the future by such
party from a third party who is not under an obligation of
confidence to the other party in respect to such information;
(d) the disclosure is required by a governmental or regulatory agency
or is otherwise required by law; or
(e) the disclosure of such information is essential for the
commercial exploitation of the Proprietary Property and is
disclosed subject to a confidentiality agreement including terms
substantially identical to those in this Article XII.
12.2 The agreement of the parties to maintain the Proprietary Property as
confidential shall survive termination of this Agreement, regardless of the
reason for its termination.
12.3 It is understood and agreed that Licensee's disclosure of information
in breach of this Article XII will cause Licensor irreparable harm, for which
monetary damages will not be an adequate remedy. Licensor shall therefore be
entitled to injunctive relief, in addition to any other relief to which it may
be entitled, to prevent any such disclosure.
12.4 Neither party shall be required to disclose to the other party any
proprietary property and confidential scientific
-15-
and technical information of a third party (including any sublicensees).
ARTICLE XIII
Miscellaneous
13.1 The captions herein are for convenience only and shall not be deemed
to limit or otherwise affect the construction hereof.
13.2 All written notices, payments, reports and the like required or
permitted hereunder shall be deemed to be given when mailed, postage prepaid, by
registered or certified mail, if to Licensor to:
XOMA Corporation
0000 Xxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attn: Legal Department
and if to Licensee to:
Research Development Foundation
x/x Xxxxxx XxxXxxxxx, Xxx.
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxx Xxxx, Xxxxxx 00000
[*]
[*]
or to such other person or by such other means as to which the parties may from
time to time agree.
13.3 This Agreement, in whole or in part, shall not be assignable by
Licensee without the prior written consent of Licensor (unless to a successor
entity to Licensee by merger, acquisition or other reorganization), which
consent will not be unreasonably withheld, and any attempted assignment without
such consent shall be void. Licensor may assign this Agreement.
13.4 The failure of either party to enforce at any time any of the
provisions of this Agreement, or any rights in respect thereto, or to exercise
any election herein provided, shall in no way be considered to be a waiver of
such provisions, rights, or elections, or in any way to affect the validity of
this Agreement. The exercise by either party of any of its rights herein or any
of its elections under the terms or covenants herein shall not
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preclude either party from exercising the same or any other rights it may have
under this Agreement, irrespective of any previous action or proceeding taken by
either party hereunder.
13.5 Except as provided in Section 5.7 above, this Agreement shall be
governed and construed in accordance with the laws of the State of California,
U.S.A.
13.6 If any provision of this Agreement is judicially determined to be void
or unenforceable, such provision shall be construed to be severable from the
other provisions of this Agreement which shall retain full force and effect.
13.7 The parties hereto agree promptly to execute, forward, or otherwise
provide all documents and material necessary or desirable to effectuate this
Agreement.
13.8 The terms and conditions herein contained constitute the entire
agreement between the parties and shall supersede all previous communications,
either oral or written, between the parties hereto with respect to the subject
matter hereof. No agreement or understanding bearing on the same shall be
binding upon either party hereto unless it shall be in writing and signed by the
duly authorized officer or representative of each of the parties and shall
expressly refer to this Agreement.
13.9 This Agreement shall be binding on and shall inure to the benefit of
the parties hereto, and their respective successors and assigns.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed in multiple originals by their duly authorized representatives.
XOMA CORPORATION
By: /s/Xxxx X. Xxxxxxxx
------------------------------------
Xxxx X. Xxxxxxxx
Chairman of the Board, President and
Chief Executive Officer
RESEARCH DEVELOPMENT FOUNDATION
By: /s/Xxxxxx XxxXxxxxx
-----------------------------------
Xxxxxx XxxXxxxxx, Vice President
and Secretary
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EXHIBIT 1
Proprietary Property
[*]
EXHIBIT 1, CONTINUED
Proprietary Property
[*]
EXHIBIT 2
List of Countries
[*]
EXHIBIT 3
Fields of Use
[*]
EXHIBIT 4
Governing License
[*]
