EXHIBIT 10.16
LICENSE AGREEMENT
This Agreement is made as of February 23 , 1989, by and between
ZymoGenetics, Inc., a Washington corporation ("ZymoGenetics"), and the
University of Washington, a public institution of higher education
("University"), with respect to the following:
A. University and ZymoGenetics have collaborated and are continuing to
collaborate with respect to the cloning and expression of DNA sequences encoding
Factor XIII and portions thereof pursuant to that certain Research Agreement
dated August 1986, as amended and extended (the "Research Agreement").
B. Pursuant to the Research Agreement, title to all inventions and
discoveries arising out of the research undertaken pursuant thereto (the
"Inventions") vest in University, ZymoGenetics or jointly in University and
ZymoGenetics depending upon the good faith determination of the parties as to
the inventive contribution.
C. University and ZymoGenetics have filed joint United States and foreign
patent applications on certain Inventions (including U.S. Patent Application
Serial Nos. 909,512 and 174,287 and foreign equivalents pending in Australia,
Canada, Denmark, the European Patent Office and Japan) which disclose and claim
DNA sequences coding for Factor XIII and portions thereof, expression vectors,
plasmids comprising DNA sequences encoding Factor XIII and portions thereof,
mammalian cells transfected to produce Factor XIII and portions thereof, methods
of making Factor XIII and portions thereof, as well as the recombinant proteins
and pharmaceutical compositions containing the proteins, and which are included
herein as part of the Licensed Patent Rights (as defined below).
D. University desires to grant, and ZymoGenetics desires to obtain, the
exclusive license, with the right to sublicense, to all Inventions to which
ZymoGenetics does not, or will not, have sole title pursuant to the Research
Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereby agree as follows:
1. Definitions. As used herein, the following terms shall have the
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meanings set forth below:
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request for confidential treatment filed separately with the Commission.
1.1 "Improvements" shall mean any modifications, alterations,
enhancements or improvements to the Inventions, whether developed pursuant to
the Research Agreement or separately.
1.2 "Licensed Patent Rights" shall mean University's rights in and to
the Inventions and Improvements covered at any time by United States or foreign
patents or patent applications and all divisions, continuations, continuations-
in-part, reissues, reexaminations or extensions thereof, and any letters patent
that issue thereon.
1.3 "Licensed Products" shall mean materials (including organisms)
the manufacture, use or sale of which would, in the absence of this license,
infringe one or more claims of Licensed Patent Rights.
1.4 "Net Royalties" shall mean royalty payments, advances on
royalties or license fees actually received by ZymoGenetics with respect to any
sublicense of any of its rights hereunder, less any taxes withheld at the source
and any third party royalties.
1.5 "Net Sales" shall mean the gross proceeds actually received by
ZymoGenetics pursuant to sales of the Licensed Product by ZymoGenetics, less
sales and/or use taxes paid, import and/or export duties paid, outbound
transportation, insurance, wholesaler and cash discounts, returns and allowances
granted, and third party royalties.
2. Grant. University hereby grants to ZymoGenetics a worldwide, exclusive
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license (with the right to sublicense) to practice the Licensed Patent Rights
and to make, have made, use and sell Licensed Products under Licensed Patent
Rights. However, University shall have the right to exercise the Licensed
Patent Rights solely for its own non-commercial research purposes. The license
granted herein shall include any Improvements made by or on behalf of University
or made jointly by University and ZymoGenetics during the term of this
Agreement, and University agrees to promptly provide ZymoGenetics with access to
such Improvements and full disclosure thereof. Title to any Improvements made
by or on behalf of ZymoGenetics shall be and remain in ZymoGenetics.
3. Royalties.
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3.1 In consideration of the rights granted herein, ZymoGenetics shall
pay to University the following royalties:
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request for confidential treatment filed separately with the Commission.
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3.1.1 [ * ] Royalties received by ZymoGenetics from any
sublicensee.
3.1.2 [ * ] of Net Sales of Licensed Products when sold in bulk
to third parties for incorporation into a finished product or when the Licensed
Product is not the primary active ingredient in the final product sold by
ZymoGenetics.
3.1.3 [ * ] of Net Sales of Licensed Products in all other
cases.
3.2 ZymoGenetics shall not pay more than one royalty to University
for each Licensed Product sold or sublicense granted, regardless of the number
of Inventions or Improvements included in the Licensed Product or sublicense.
3.3 The royalties payable under this Agreement shall be due and
payable thirty (30) days after the end of each calendar quarter for all
royalties earned during the preceding calendar quarter. A written statement
shall be submitted quarterly with each royalty payment showing the calculation
of royalties due and payable.
3.4 All monies due to University hereunder shall be paid by
ZymoGenetics in United States dollars. Computation of the amount of currency
equivalent to United States dollars due to University shall be made at the rate
of exchange in effect at Chase Manhattan Bank on the last business day of the
quarter in which the royalty was earned.
3.5 ZymoGenetics shall keep complete, true and accurate records for
the purpose of showing the derivation of all amounts payable to University under
this Agreement. ZymoGenetics shall maintain such records for a period of at
least three (3) years following the end of the calendar year to which they
pertain, and University or its representatives shall have the right to inspect
such records no more often than annually, at University's expense during
ZymoGenetics' regular business hours, for the purpose of verifying ZymoGenetics'
royalty statement. ZymoGenetics shall have the right to specify that any such
representative be a Certified Public Accountant.
4. Term and Termination.
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4.1 The term of this Agreement shall extend from the date hereof
until expiration of the last to expire of the Licensed Patent Rights. Royalty
obligations shall terminate with respect to any sales of Licensed Products or
any sublicense of Licensed Patent Rights in a particular jurisdiction upon the
expiration in such jurisdiction of the last Licensed Patent Right incorporated
into such Licensed Product or covered in such sublicense, or when such last
Licensed Patent Right is held to be
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request for confidential treatment filed separately with the Commission.
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invalid or the application therefor is denied in such jurisdiction, and no
appeal can be, or has been, taken from such decision.
4.2 Except as otherwise provided in Section 4.3, upon any material
breach of, or default under, this Agreement by ZymoGenetics, University may
terminate this Agreement by ninety (90) days' written notice to ZymoGenetics.
Said notice shall become effective at the end of such period unless during said
period ZymoGenetics shall cure such defect or default.
4.3 University shall not have the right to terminate this Agreement
for any purported breach which is the subject of a bona fide good faith dispute
between the parties.
4.4 ZymoGenetics shall have the right to terminate this Agreement at
any time upon ninety (90) days' written notice to University.
5. Representations, Warranties and Indemnities.
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5.1 University represents and warrants that:
5.1.1 To the best of its knowledge (which for the purposes of
this Agreement shall mean to the best knowledge of any of University's faculty
or research personnel directly involved in the research relating to any of the
Inventions or Improvements or of any of University's administrative staff or
counsel), the Inventions and Improvements covered by the Licensed Patent Rights
were made and developed without the use of, or infringement upon, the secrets,
patents or other proprietary rights or interests of any third party and without
the use of any equipment, supplies or facilities of any third party and that it
has the full right and authority to lawfully grant the license granted herein.
5.1.2 The obligations of University under this Agreement are not
subject to prior commitments and obligations to any third party.
5.1.3 It has not entered into any contract, agreement,
partnership, joint venture or other arrangement, whether oral or written, with
any third party relating to the Inventions, Licensed Products or Licensed
Patents.
5.2 Nothing in this Agreement shall be construed as:
5.2.1 A warranty or representation by University as to the
validity or scope of any Licensed Patents.
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request for confidential treatment filed separately with the Commission.
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5.2.2 An obligation to bring or prosecute actions or suits
against third parties for infringement.
5.2.3 A warranty, representation or undertaking with respect to
utility, efficacy, nontoxicity, safety or appropriateness of using the
Inventions or the Licensed Products, except that University represents and
warrants that it has fully disclosed, and will fully disclose, to ZymoGenetics
all data and information in its possession, knowledge or control relating to the
utility, efficacy, nontoxicity, safety and appropriateness of the Inventions or
the Licensed Products.
5.3 ZymoGenetics agrees to indemnify and hold University harmless
from any and all liability arising out of ZymoGenetics' development,
manufacture, use or sale of the Licensed Product unless such liability results
from information not disclosed in breach of Section 5.2.3. and except for
liability covered by the University's indemnification pursuant to Section 5.4
5.4 University agrees to indemnify and hold ZymoGenetics harmless
from and against any and all liability arising out of any breach by University
of its representations and warranties under this Agreement and, to the extent of
the total royalties payable by ZymoGenetics to University under this Agreement,
against any loss, damage, liability and expense arising out of or related to any
claim that any portion of the Inventions, Improvements or Licensed Products
attributable to University's contribution thereto infringes upon or makes
improper use of any patent, copyright, trade secret or other proprietary right
or interest of any third party.
5.5 ZymoGenetics shall be entitled to a set off against royalties for
any loss, damage, liability and expense that it incurs with respect to any claim
covered by the University's indemnification pursuant to Section 5.4.
5.6 ZymoGenetics understands that the Inventions and Improvements may
be, or have been, developed under funding agreements with the Government of the
United States of America (the "U.S."), and, if so, that the U.S. may have
certain rights relative thereto. This Agreement is explicitly made subject to
the U.S.'s rights under any such agreement and any applicable law or regulation.
6. Infringement by Others.
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6.1 ZymoGenetics and University shall promptly inform each other of
any suspected infringement of any Licensed Patent Rights by a third party, and
University and ZymoGenetics each shall have the right to institute an action for
infringement of the Licensed Patent Rights against such third party in
accordance with the following:
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request for confidential treatment filed separately with the Commission.
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6.1.1 If, within sixty (60) days after written request therefor
by either party hereto, University and ZymoGenetics both give written notice to
the other party of their intention to institute suit, the suit shall be brought
jointly in both their names and all costs thereof shall be borne equally.
ZymoGenetics shall exercise control over such action, provided, however, that
University may, if it so desires, be represented by counsel of its own
selection, the fees for which counsel shall be paid by University. Recoveries,
if any, whether by judgment, award, decree or settlement, shall, after the
reimbursement of each of University and ZymoGenetics for its costs in such
action, be shared as follows:
(i) Any portion of such net recoveries which constitutes the
equivalent of, or damages or payments in lieu of, Net Royalties which
would have been received by ZymoGenetics had the infringing party been
operating under a sublicense shall be shared between ZymoGenetics and
University in accordance with Section 3.1.1 as if it were Net
Royalties received by ZymoGenetics for the sublicensing of Licensed
Patent Rights; and
(ii) Any remaining portion of such net recoveries shall be shared
between ZymoGenetics and University equally.
6.1.2 If, within the sixty (60) day period described above, only
one (1) of the parties has given written notice of its intention to institute
suit, it may at any time within one (1) year from the last day of such sixty
(60) day period institute suit in its own name, and may join the other party as
a plaintiff. All costs of the suit shall be borne by the party who has
instituted such suit, and recoveries, if any, whether by judgment, award, decree
or settlement, shall belong solely to such party. If no suit is brought within
such one (1) year period, then the right to institute suit reverts to both of
the parties and the procedure described in Section 6.1.1 shall apply thereto.
6.1.3 If, within the sixty (60) day period described above,
neither party has given written notice of an intention to institute suit, then
the right to institute suit reverts to both of the parties and the procedure
described in Section 6.1.1 shall apply thereto.
6.2 Should either University or ZymoGenetics commence a suit under
the provisions of this Section and thereafter elect to abandon the same, it
shall give timely notice to the other party, who may, if it so desires, continue
prosecution of such suit, provided, however, that the sharing of expenses and
any recovery in such suit shall be as agreed upon between University and
ZymoGenetics.
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request for confidential treatment filed separately with the Commission.
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7. Obligations of ZymoGenetics.
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7.1 ZymoGenetics shall have the sole right to prosecute any patent
applications covered by the Licensed Patent Rights and to maintain the Licensed
Patent Rights. ZymoGenetics shall have the right to apply for patents (in its
name, in the University's name, or in both names, in accordance with the terms
of the Research Agreement) to Inventions and Improvements not already covered by
the Licensed Patent Rights, and the University's rights, if any, in and to such
applications, and to any patents that issue thereon, shall then be included in
the Licensed Patent Rights. ZymoGenetics will promptly provide University with
copies of all patent applications and any amendments or correspondence with the
United States Patent Office and foreign patent offices relating thereto.
ZymoGenetics has to date borne, and shall continue to bear, all expenses of the
patent filing, prosecution and maintenance activities undertaken by it.
ZymoGenetics shall, at University's request and at University's expense, permit
University to participate in any proceedings to which ZymoGenetics may be a
party relating to any Licensed Patent Rights.
7.2 If at any time during the term of this Agreement ZymoGenetics
elects to abandon any issued patent or pending patent application included
within the Licensed Patent Rights, it shall notify University of that decision
at least sixty (60) days prior to any deadline for the filing of any response or
the taking of any other action necessary to maintain such patent or patent
application in existence. Thereafter, University shall have the right to take
over the sole and exclusive responsibility for the maintenance of such patent or
the prosecution of such patent application, at University's sole expense.
7.3 ZymoGenetics shall report to University in writing at least once
per year, during the month of January, with respect to the progress made toward
the development and promotion of the manufacture and sale of the Licensed
Products. ZymoGenetics shall provide one additional such report on an interim
basis during any such year, if University requests that it do so in a written
request given at least thirty (30) days prior to the requested date of such
interim report.
7.4 ZymoGenetics shall at all times during the term of this Agreement
use commercially reasonable efforts to develop and to promote the manufacture
and sale of the Licensed Products. If at any time the University believes that
ZymoGenetics is not using such efforts, University may notify ZymoGenetics
thereof in writing, which notice must specify in reasonable detail the reasons
why University believes ZymoGenetics is not in compliance with this Section. If
ZymoGenetics and University are, after good faith discussions over a period of
at least ninety (90) days, unable to resolve any material disagreement over the
level of effort
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required to be made, or actually being made, by ZymoGenetics hereunder, either
party may demand that the disagreement be settled by binding arbitration as
provided herein for disputes between the parties; provided, however, that
University's SOLE REMEDY for any failure by ZymoGenetics to comply with this
Section (if and as determined in such arbitration) shall be to convert the
license herein to a non-exclusive license, whereupon the royalties payable
hereunder shall be the amounts set forth in Section 3 [ * ].
8. Use of Names, Trade Names and Trademarks. Except as provided herein,
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nothing contained in this Agreement shall be construed as conferring any right
on either party to use in advertising, publicity or other promotional activities
any name, trade name, trademark or other designation of the other party hereto,
including any contraction, abbreviation or simulation of any of the foregoing,
unless the express written permission of such other party has been obtained.
9. Disputes. Any dispute between the parties hereunder which cannot be
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resolved by good faith negotiation between the parties over a period of at least
ninety (90) days shall be resolved by arbitration under the then current rules
and procedures of the American Arbitration Association (the "AAA"), or other
rules and procedures as the parties may agree. Each party shall bear its own
costs incurred in connection with such arbitration, and the fees, expenses and
costs of the AAA, the arbitrator(s) and the arbitration proceeding not incurred
solely by one party shall be divided equally between the parties. The arbitral
award shall be binding and conclusive on both parties and may be enforced in any
court of competent jurisdiction.
10. Miscellaneous.
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10.1 Headings are included for convenience of reference only and
shall not limit or affect the parties' agreement or constitute terms hereof.
The use herein of pronouns of any gender shall include all other genders, as
appropriate.
10.2 Neither party shall be in default by reason of failure in its
performance under this Agreement if such failure is due to causes beyond such
party's reasonable control and is without the fault or negligence of such party.
10.3 This Agreement shall be governed by the laws of the State of
Washington.
10.4 This Agreement is the complete and exclusive statement of the
agreement between the parties and supersedes any or all prior or contemporaneous
oral or written communications with respect to the subject matter hereof. Each
party has read and reviewed this Agreement and intends to be bound by its terms,
which
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shall be construed without regard to which of the parties may have drafted any
such terms.
10.5 No modification, waiver, or amendment hereof shall be binding
unless stated in a writing signed by the parties thereto, and no waiver of a
right hereunder in any instance shall constitute a waiver of the same or any
other right in any other instance.
10.6 If any provision of this Agreement shall be held to be invalid,
illegal or unenforceable, such provision shall be enforced to the maximum extent
permitted by law and the parties' fundamental intentions hereunder, and the
remaining provisions shall not be affected.
10.7 Notices and payments under this Agreement shall be sufficiently
given if delivered in person or sent by telecopier, first class prepaid mail, or
reputable courier service to the respective addresses stated on the signature
page of this Agreement (or to such other address as a party may by notice
specify for notices to it), and shall be effective upon the earlier of actual
delivery or the third day after mailing.
10.8 Neither party may assign or transfer this Agreement or its
rights or responsibilities hereunder without the prior written consent of the
other party, provided, however, that ZymoGenetics and its permitted assigns may
without such consent assign all of ZymoGenetics' rights and responsibilities
hereunder to any successor to or acquirer of all or substantially all of the
assets and business operations of ZymoGenetics. Subject to the foregoing
limitation, this Agreement shall be binding upon and inure to the benefit of the
parties hereto and their successors and assigns.
10.9 No employment, agency, trust, partnership or joint venture is
created by, or shall be founded upon, this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized officers as of the date first written above.
UNIVERSITY OF WASHINGTON ZYMOGENETICS, INC.
Address: Graduate School, AG-10 Address: 0000 Xxxxxxxxx Xxx X.X.
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Xxxxxxx, XX 00000 Xxxxxxx, XX 00000
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Attn: Xxxxxx X. Xxxxxxx Attn: Xx. Xxxxx X.X. Xxxxxx
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Telecopier: (000) 000-0000 Telecopier: (000) 000-0000
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BY: /s/ X X Xxxxxxx BY: /s/ Xxxxx X.X. Xxxxxx
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TITLE: Director of Technology Transfer TITLE: President
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[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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