Exhibit 10.22
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS
AMENDED.
EXCLUSIVE LICENSE AGREEMENT
BETWEEN
ENTERPRISE IRELAND (TRADING AS BIORESEARCH IRELAND)
AND
INHIBITEX, INC.
This Exclusive License Agreement (the "Agreement") is made effective as
of the last signature date below (the "Effective Date"), by and between
Enterprise Ireland (trading as BioResearch Ireland), formerly Forbairt trading
as BioResearch Ireland ("BRI") having its principal place of business at
Glasnevin, Xxxxxx 0, Xxxxxxx, and Inhibitex, Inc. ("Inhibitex"), having its
principal place of business at 0000 Xxxxxxxx Xxxxxxx, Xxxxxxxxxx, XX 00000
("INHIBITEX").
WITNESSETH
WHEREAS, BRI in collaboration with Trinity College Dublin has
identified, characterized or developed the use of certain surface binding
proteins from bacteria and gene products thereof for pharmaceutical and
diagnostic purposes, which are encompassed by the Licensed Technology and
Licensed Patents;
WHEREAS BRI is empowered to enter into license agreements with third
parties and to grant rights for commercial exploitation of the Licensed
Technology and Licensed Patents;
WHEREAS, BRI is willing to grant a royalty bearing, worldwide,
exclusive license to the Licensed Technology and Licensed Patents to Inhibitex
on the terms set forth herein;
WHEREAS, Inhibitex desires to obtain said exclusive license;
WHEREAS Inhibitex and BRI entered into a first License Agreement
effective March 1996, which was amended on December 6, 1996, February 21, 1997,
July 1998 and November 1998; and
WHEREAS Inhibitex and BRI desire to supersede the first License
Agreement (as amended) in full with this Exclusive License Agreement;
NOW, THEREFORE, in consideration of the foregoing and the mutual
covenants and promises contained herein, and subject to the consideration
herein, the receipt and sufficiency of which is hereby acknowledged:
1. DEFINITIONS
1.01 "LICENSED TECHNOLOGY" shall mean all inventions, conceptions,
reductions to practice, patent filings, technology, methods, compounds,
compositions, cell lines, biological materials, proteins, nucleic
acids, know-how, information, documents, materials, tests, laboratory
notebooks, computer data, and all improvements thereto, including
confidential information, related to Staphylococcal surface proteins
developed in partnership between BRI and Trinity College during the
period of the Research and Development Agreement executed on February
22, 1996, and extensions thereof;and the 1999 Cooperative Research and
Development Agreement executed at the time this Exclusive License
Agreement is executed, and extensions thereof.
1.02 "LICENSED PATENTS" shall mean any U.S. or foreign patent application(s)
filed for protection of LICENSED TECHNOLOGY; and any patent(s) issuing
from the foregoing application(s); all applications and patents which
correspond to or which claim priority under any application(s) or
patent(s); any divisions, continuations, continuations-in-part, or
continuing prosecution applications (CPAs), of such U.S. or foreign
application(s); and all extensions, reissues, or reexaminations of any
such patent(s). LICENSED PATENTS includes those patent filings listed
in Attachment B. Attachment B will be amended annually on the
anniversary of the Agreement to reflect additional filings.
1.03 "IMPROVEMENTS" shall mean all improvements, advancements,
modifications, revisions, changes or alterations in or to the LICENSED
TECHNOLOGY that are made or under the scope of the Research and
Development Agreement executed on February 22, 1996, and extensions
thereof; and the 1999 Cooperative Research and Development Agreement
executed at the time this Exclusive License Agreement is executed, and
extensions thereof.
1.04 "LICENSED PRODUCT" shall mean any product or part thereof, whose
manufacture, sale or use would, but for the licenses granted herein,
infringe a VALID CLAIM of the LICENSED PATENTS in the country for which
such product or part is sold.
1.05 "NET SALES" shall mean the gross revenue received by INHIBITEX from the
sale by INHIBITEX of LICENSED PRODUCTS to non-affiliate third parties,
less (i) discounts actually allowed, (ii) credit for claims, allowances
or returned products, (iii) prepaid freight, and (iv) taxes or other
governmental charges added to the face of the invoice and actually paid
by INHIBITEX. There shall be no imputed revenues for samples, free
goods, or other marketing programs whereby LICENSED PRODUCTS are given
away to induce sales of the LICENSED PRODUCTS.
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1.06 "INHIBITEX" shall include any "Affiliate" thereof. An Affiliate of
INHIBITEX shall mean any corporation or other business entity
controlled by, controlling or under common control with INHIBITEX. For
this purpose "control" means direct or indirect beneficial ownership of
twenty percent (20%) of capital stock of the subject entity entitled to
vote in the election of directors (or, in the case of an entity that is
not a corporation. interests entitled to vote in the election of the
corresponding managing authority).
1.07 "VALID CLAIM" shall mean a claim of an issued and unexpired patent
included within the LICENSED PATENTS, which has not been held
unenforceable, unpatentable or invalid by a court or other governmental
agency of competent jurisdiction, and which has not been admitted to be
invalid or unenforceable through reissue, disclaimer or otherwise. If a
claim of an issued and unexpired patent within the LICENSED PATENTS is
held by a court or other governmental agency of competent jurisdiction
to be unenforceable, unpatentable or invalid, and such holding is
reversed on appeal by a higher court or agency of competent
jurisdiction, such claim shall be reinstated thereafter as a VALID
CLAIM hereunder.
(2) GRANT
2.01 Grant. Except as provided in paragraph 2.02, BRI hereby grants to
INHIBITEX an exclusive, worldwide license under LICENSED TECHNOLOGY to
make, have made, use, and sell the LICENSED PRODUCTS and otherwise
exploit the LICENSED PATENTS and LICENSED TECHNOLOGY. Such license
shall include the right to grant and authorize sublicenses of the same
or lesser scope, to the end of the term of this Agreement, as
prescribed in Article 3.
2.02 Reservation. BRI reserves an irrevocable, nonexclusive, royalty-free
right to LICENSED TECHNOLOGY for academic, non-commercial research
purposes.
(3) SUBLICENSES
3.01 Sublicenses. INHIBITEX shall have the right to grant and authorize
sublicenses consistent with this Agreement, provided that INHIBITEX
shall be responsible for the contractual obligations of its
sublicensee(s) relevant to this Agreement. All
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sublicenses to Inhibitex affiliates must be approved by BRI, which
approval will not be unreasonably withheld.
3.02 Reporting. INHIBITEX shall provide BRI with copies of all executed
sublicenses and annual or semi-annual reports as are pertinent to the
calculation of BRI's sublicense royalties.
(4) CONSIDERATION
4.01 Stock Option. Inhibitex shall grant to BRI an option to purchase twenty
eight thousand (28,000) shares of the common stock of Inhibitex (the
Common Stock), representing approximately eight tenths of one percent
(0.8%) of the Common Stock outstanding as of the date of this Agreement
("the BRI Option"). Inhibitex shall grant to Xx. Xxxxxx an option to
purchase seven thousand (7,000) shares of Common Stock (the Xxxxxx
Option), representing approximately 0.2% of the Common Stock
outstanding as of the date of this Agreement. The BRI Option and the
Xxxxxx Option (together the Options) shall be exercisable at an
exercise price of $0.15 per share for a period of ten (10) years
following the date of the grant; provided, however, that the Options
shall become exercisable at the rate of twenty-five percent (25%) of
the shares per year on the date of the mailing of the completed annual
report for the performance period for each of the first four years
after the date of the grant. In consideration of the Xxxxxx Option, Xx.
Xxxxxx will execute a Consulting Agreement with Inhibitex Within thirty
(30) days of the signing of this Exclusive License Agreement.
4.02 Royalties. Inhibitex shall pay to BRI royalties on NET SALES of
LICENSED PRODUCTS, as specified in Attachment A. Inhibitex will pay a [
*** ] royalty on net sales for products sold in territories where there
is an issued patent having claims covering technology used in the
product sold. If Inhibitex funds at least two full Performance Periods,
and if a royalty is payable to a second entity for these product sales,
the royalty to BRI will be reduced to [ *** ]. If a second third party
royalty is required to commercialize the product, the royalty to BRI
will be reduced to [ *** ]. In no case shall the royalty payable to BRI
fall below [ *** ] for sales in territories where there is an issued
patent having claims covering technology used in the sales. If
Inhibitex funds less than two Performance Periods, the royalty paid
under the provision for a second royalty payment shall be raised from [
*** ] to [ *** ]%.
4.03 Sublicense Royalties INHIBITEX shall pay to BRI the royalty set forth
in Attachment A on NET SALES by a sublicensee of LICENSED PRODUCTS
pursuant to a sublicense under the LICENSED PATENTS., The rate shall be
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decreased as provided in section 4.02 above in the event third party
licenses are required.
(5) DUE DILIGENCE
5.01 INHIBITEX shall use commercially reasonable efforts to bring one or
more LICENSED PRODUCTS to market directly or through sublicensees.
(6) PAYMENTS AND REPORTS
6.01 When payments are due. Payments shall be made semi-annually. Payments
shall be made to BRI not later than sixty (60) days after the last day
of June and December of each semi-annual period in which NET SALES or
Sublicense Royalties pertaining to the LICENSED TECHNOLOGY were
received by INHIBITEX.
6.02 Payment reports. With each semi-annual payment, INHIBITEX shall provide
information sufficient to allow BRI to calculate the payment due. This
information shall include, at a minimum, sublicensee reports and
deductions permitted under this Agreement and payment due. No
semi-annual reports are due until revenues are earned from sublicenses.
6.03 Payments in Dollars. All payments due hereunder are expressed in and shall
be paid by check payable in United States of America currency, without deduction
of exchange, collection or other charges, to BRI, or to the account of BRI at
such other bank as BRI may from time to time designate by notice to Inhibitex.
All currency conversion rates will be calculated at the reported conversion rate
in The Wall Street Journal on the first day of the month in which the payment is
due.
6.04 Inspection of books and records. At its own expense, BRI may annually
inspect INHIBITEX'S books and records as needed to determine royalties
and sublicense fees payable. INHIBITEX shall maintain such books and
records for at least three (3) years following the dates of the
underlying transactions. Any such inspections shall be in confidence
and conducted during ordinary business hours, and BRI will provide
INHIBITEX prior notice of two (2) weeks before making such inspections.
BRI may employ a Certified Public Accountant for this purpose; if it
does so, and if the sum of all royalty and sublicense royalty
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payments for the preceding two (2) semi-annual periods is determined to
be less than the royalty and sublicense fee payments due BRI by ten
percent (10%) or more, then INHIBITEX shall pay the documented expenses
of the accountant.
6.05 Interest charges. Overdue payments shall bear interest until payment at
a per annum rate two per cent (2%) above the prime rate in effect at
the Chase Manhattan Bank (N.A.) on the due date. The payment of such
interest shall not foreclose BRI from exercising any other rights it
may have as a consequence of the lateness of any payment.
(7) INTELLECTUAL PROPERTY RIGHTS
7.01 Definition of Intellectual Property. "Intellectual Property" shall
include research results and any works, inventions, improvements,
formulae, processes, techniques, biological materials, compositions of
matter, pharmaceutical compositions, know-how, data, trade secrets,
computer data, and other innovations and proprietary information and
materials (whether patentable or not) made, conceived, reduced to
practice, or learned by Trinity College, or in particular, the
Principal Investigator (Dr. Xxxxxxx Xxxxxx) and/or his Researchers
(those employees or graduate students selected by BRI to act in
cooperation with the Principal Investigator), during the term of the
Research and Development Agreement executed on February 22, 1996, and
extensions thereof; or the Cooperative Research and Development
Agreement executed at the time this Exclusive License is executed, and
extensions thereof; either alone or in conjunction with others,
including employees or other agents of Inhibitex, for example, the
employees or other agents of Texas A&M University. The fact that BRI
may receive funding for the intellectual property from sources other
than Inhibitex shall not affect Inhibitex's rights under this Agreement
with respect to the Intellectual Property.
7.02 Ownership of Intellectual Property. All Intellectual Property invented
solely by persons at Trinity College Dublin and/or BRI, including the
Principal Investigator and/or Researchers shall be owned jointly by
Trinity College Dublin and BRI pursuant to a collateral agreement
between Trinity College Dublin, BRI and the inventors which appoint BRI
as exclusive agent for the commercialization of the Intellectual
Property. This collateral agreement and ownership of the Intellectual
Property shall be subject to Inhibitex's exclusive licensing rights set
forth in Section 2 hereof. The rights to all Intellectual Property
invented by the Principal Investigator and/or Researchers in
conjunction with others, including employees or other agents of
Inhibitex shall be assigned to Trinity College Dublin and BRI pursuant
to the collateral agreement in the case of the Principal Investigator
and/or
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researchers, and as required by the employment agreement of each
individual inventor in the case of other inventors.
7.03 Protection of Intellectual Property by BRI and Inhibitex. BRI will
promptly notify Inhibitex in writing of any relevant Intellectual
Property invented solely by persons at Trinity College Dublin and/or
BRI including the Principal Investigator and/or Researchers and any
relevant Intellectual Property owned jointly by Trinity College Dublin
and BRI or owned jointly by BRI and another. Inhibitex shall be
entitled to review such Intellectual Property for patentability or
other proprietary protection. If Inhibitex requests a patent
application, copyright registration or other form of protection for
such Intellectual Property, Inhibitex shall promptly take action to
have prepared, filed, and prosecuted such U.S. and foreign
application(s) or other appropriate filing. Inhibitex shall bear all
costs incurred in connection with such preparation, filing, prosecution
and maintenance of U.S. and foreign application(s) requested by
Inhibitex and directed to said Intellectual Property. Inhibitex and BRI
shall cooperate to assure that such application(s) will cover, to the
best of Inhibitex's and BRI's knowledge, all items of commercial
interest and importance. While Inhibitex shall be responsible for
making decisions regarding scope and content of application(s) to be
filed and the prosecution thereof, BRI shall be given an opportunity to
review all substantive documents filed with patent offices prior to
filing and will be allowed to add and amend claims, and revise text.
Inhibitex shall keep BRI advised as to all developments with respect to
such application(s) and shall promptly supply to BRI copies of all
papers received and filed in connection with the prosecution thereof in
sufficient time for BRI to comment thereon. Further, Inhibitex shall
promptly notify BRI in writing of any matter which has been patented
under this Paragraph.
7.04 Protection of Intellectual Property by BRI. If Inhibitex elects not to
provide financial support for or to discontinue the financial support
of the prosecution or maintenance of the protection of any Intellectual
Property owned solely by BRI, BRI shall be free to file or continue
prosecution or maintain any such patents or application(s), and to
maintain any protection issuing thereon in the U.S. and any other
country at BRI's sole expense. Inhibitex shall notify BRI in sufficient
time for BRI to act upon any such patents or applications Inhibitex is
abandoning. If Inhibitex makes such an election, Inhibitex forfeits its
rights pursuant to this Exclusive License Agreement within the
territory(ies) for which Inhibitex elects not to provide financial
support for the prosecution or protection of the specific Intellectual
Property owned by BRI.
7.05 BRI shall provide, free of charge, to INHIBITEX any scientific data and
results, including but not limited to animal test data, obtained by BRI
in using and validating the LICENSED TECHNOLOGY.
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7.06 Certain Notices. BRI shall notify Inhibitex of each notice pertaining
to any patent included within the Patent Rights which BRI receives as
patent owner, including, but not limited to those pursuant to the Drug
Price Competition and Patent Term Restoration Act of 1984 (hereinafter
called the "Act"), including but not necessarily limited to notices
pursuant to Sections 101 and 103 of the Act from persons who have filed
an abbreviated NDA ("ANDA"). Such notices shall be given promptly, but
in any event within ten (10) days of each such patent's date of issue
or receipt of each such notice pursuant to the Act, whichever is
applicable.
Authorizations Relating to Patent Term Extension. BRI hereby authorizes
Inhibitex (i) to include in any NDA for a Licensed Product, as
Inhibitex may deem appropriate under the Act, a list of patents
included within the Patent Rights that relate to such Licensed Product
and such other information as Inhibitex in its reasonable discretion
believes is appropriate to be filed pursuant to the Act; (ii) to
commence suit for any infringement of Patent Rights under Section
271(e) (2) of Title 35 of the United States Code occasioned by the
submission by a third party of an ANDA or an NDA for a Licensed Product
pursuant to Sections 101 or 103 of the Act; and (iii) in consultation
with BRI, to exercise any rights that may be exercisable by BRI as
patent owner under the Act to apply for an extension of the term of any
patent included within the Patent Rights, as Inhibitex in its
discretion deems appropriate. In the event that applicable law in any
other country of the world hereafter provides for the extension of the
term of any patent included in the Patent Rights in such country, upon
request by Inhibitex, BRI shall use its best efforts to obtain such
extension or, in lieu thereof, shall authorize Inhibitex or, if
requested by Inhibitex, its sublicensee to apply for such extension, in
consultation with BRI. BRI agrees to cooperate with Inhibitex or its
sublicensee, as applicable, in the exercise of the authorization
granted herein and will execute such documents and take such additional
action as Inhibitex may reasonably request in connection therewith,
including, if necessary, permitting itself to be joined as a proper
party in any suit for infringement brought by Inhibitex.
(8) OBLIGATIONS OF CONFIDENTIALITY
8.01 Definition of Confidential Information. The term "Confidential
Information" shall refer to any information, technical data, trade
secrets, or know-how, whether written or oral, including but not
limited to that which relates to research, data, products, services,
customers, markets, business information, laboratory data, inventions,
processes, patent applications, computer information, conceptions,
reductions to practice, experiments, documents, or notebooks, in any
form emanating, directly or indirectly, from Inhibitex (provided such
item is marked or
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otherwise identified as confidential by Inhibitex) or that is generated
by BRI and/or Trinity College Dublin during the performance of research
under this Agreement and shall include any compilation of otherwise
public information in a form not publicly known.
8.02 Exclusions from Confidential Information. It is understood that the
term "Confidential Information" does not include information which:
(a) is publicly known at the times of disclosure;
(b) after disclosure by Inhibitex or generation under
this Agreement, becomes publicly known other than through a
breach of this Agreement;
(c) BRI can show by written records was known to it,
other than under obligation of confidentiality or restricted
use, prior to disclosure by Inhibitex or prior to performance
of this Agreement;
(d) can be shown, by written records kept in the
ordinary course of business by BRI, was developed
independently by members or students of BRI who were not aware
of the content of information disclosed by Inhibitex or
generated under this Agreement; and/or
(f) can be shown was made available by a third party who had a
right to do so and has not imposed any obligation of
confidentiality or restricted use in respect hereof.
8.02 Non-Disclosure Obligations. BRI acknowledges that Inhibitex has a
proprietary interest in maintaining the confidentiality of the
Confidential Information and agrees that, both during and after the
termination of this Agreement, it will not disclose the Confidential
Information to any third party and will not use the Confidential
Information except for the purpose of the Research Work.
8.03 BRI Representatives Confidentiality Obligations. BRI will inform the
Principal Investigator, Researcher(s), and any other of its members,
staff, employees or students involved with the Research Work of the
obligation of confidentiality and will require them to use all
reasonable efforts to maintain the confidentiality of the Confidential
Information both during and after the termination of this Agreement.
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(9) TERMINATION
9.01 Term. The term of this Agreement shall be for the life of the last to
expire of the patents and patent applications and any modifications,
extensions, or reissues thereof.
9.02 Termination by INHIBITEX. INHIBITEX may terminate this Agreement in the
whole or as to any particular patent or patent application by providing
written notice to BRI at least ninety (90) days before the termination
is to take effect. From and after the effective date of a termination
under this Paragraph with respect to a particular patent application or
patent, such patent application and patent in the particular country
shall cease to be within the LICENSED PATENTS for all purposes of this
LICENSE AGREEMENT.
9.03 Termination by BRI. If INHIBITEX defaults in making payments under this
Agreement, fails to achieve due diligence requirements as specified in
Article 5, or otherwise materially breaches this Agreement, BRI shall
give INHIBITEX written notice of the breach. INHIBITEX shall have a
period of ninety (90) days from receipt of the notice to cure the
breach. If INHIBITEX does not cure the breach within this period, BRI
may terminate this Agreement; provided that INHIBITEX disputes such
breach within such ninety (90) day period, this Agreement shall not be
terminated unless it has been finally determined by a court of
competent jurisdiction or by Arbitration as provided in Section 13.10,
at INHIBITEX's option, that this Agreement was materially breached, and
INHIBITEX fails to cure such breach within ninety (90) days after such
court's or arbitrator's determination.
9.04 INHIBITEX's financial condition. If INHIBITEX: (a) ceases to carry on
its business, or (b) voluntarily seeks, consents to or acquiesces in
the benefits of any bankruptcy or similar debtor-relief laws, then BRI
may terminate this Agreement without prejudice to any other remedy to
which BRI may be entitled at law or in equity or elsewhere under this
Agreement, by giving written notice of termination to INHIBITEX.
9.05 Mutual Agreement. It is understood that this Agreement may be
terminated at any time by mutual agreement of INHIBITEX and BRI.
9.06 Other matters surviving termination. All accrued obligations and
claims, including royalty and sublicense royalty obligations and claims
or causes of action for breach of this Agreement, shall survive
termination of this Agreement.
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(10) ENFORCEMENT OF LICENSED PATENTS
10.01 Notice of Infringement. INHIBITEX and BRI shall promptly notify one
another in writing of any evidence of potential or suspected
infringement of LICENSED PATENTS. Within thirty (30) days after receipt
of such notice, INHIBITEX and SRI shall meet and formulate a strategy
for resolving the potential or suspected infringement.
10.02 Action by INHIBITEX. INHIBITEX may choose to pursue legal action to
redress the infringement at its own expense. BRI hereby grants that
INHIBITEX may include BRI as a party plaintiff in any suit, without
expense to BRI. INHIBITEX shall indemnify BRI against any order for
costs that may be made against BRI in such proceedings.
10.02 Action by BRI. Should INHIBITEX choose not to pursue legal action to
redress the infringement, BRI may do so at its own expense. INHIBITEX
shall notify BRI in a timely manner if INHIBITEX chooses not to pursue
legal action to redress the infringement.
10.03 Monetary Recovery. Any monetary recovery for an infringement suit
brought by INHIBITEX shall belong to INHIBITEX, except, however, that
all legal fees and costs shall be paid first and BRI shall be
reimbursed for out of pocket legal fees related to the action of
INHIBITEX. Any monetary recovery for an infringement suit brought
solely by BRI shall belong to BRI, except, however, that all legal fees
and costs shall be paid first and INHIBITEX shall be reimbursed for out
of pocket legal fees related to the action of BRI.
10.05 Cooperation. INHIBITEX and BRI shall cooperate in any legal process
concerning filing, prosecution or alleged infringement of LICENSED
PATENTS. Each party shall, to the fullest extent possible, make
available its employees, records, information and the like as relevant
to the legal process.
(11) LIABILITY
11.01 Patent Infringement Indemnification. INHIBITEX shall at all times
require sublicensees, during the term of this Agreement and thereafter,
to indemnify, defend and hold harmless BRI, their regents, officers,
employees, and affiliates,
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against any claim, proceeding, demand, liability, or expense (including
legal expenses and reasonable attorney's fees) which relates to any
action brought by a third party alleging infringement of a domestic or
foreign patent as a result of the activities of sublicensee(s) under
this Agreement; provided that the party to be indemnified gives
INHIBITEX prompt notice of any claim, and provides INHIBITEX or its
designee the sole right to defend and/or settle the same.
11.02 Product Liability and Indemnification. INHIBITEX shall at all times
require its sublicensees during the term of this Agreement and
thereafter, to indemnify, defend and hold harmless BRI, their agents,
officers, employees, and affiliates, against any claim, proceeding,
demand, liability, or expenses (including legal expenses and reasonable
attorney's fees) which relates to injury to persons or property, or
against any other claim proceeding, demand, expense and liability of
any kind whatsoever resulting from the production, manufacture, sale,
use, lease, consumption or advertisement of LICENSED PRODUCTS or
arising from any obligation of sublicensee(s) hereunder; provided that
the party to be indemnified gives INHIBITEX prompt notice of any claim
and provides INHIBITEX or its designee the sole right to defend and/or
settle the same.
11.03 Representation. BRI represents that it owns and has title to the
LICENSED PATENTS and has the full right and power to grant the
exclusive license set forth in paragraph 2.01, and that there are no
outstanding agreements, assignments, or encumbrances inconsistent with
the provisions of this Agreement. BRI further warrants that, as of the
EFFECTIVE DATE, there are no existing or threatened actions, suits or
claims pending against BRI with respect to the LICENSED TECHNOLOGY or
the LICENSED PATENTS, or the right of BRI to enter into and perform its
obligations under this Agreement; and the LICENSED TECHNOLOGY includes
all inventions of BRI as of the EFFECTIVE DATE. BRI MAKES NO OTHER
REPRESENTATIONS AND EXTENDS NO OTHER WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, NOR DOES BRI
ASSUME ANY OBLIGATIONS WITH RESPECT TO INFRINGEMENT OF LICENSED PATENTS
OR OTHER RIGHTS OF THIRD PARTIES DUE TO INHIBITEX'S ACTIVITIES UNDER
THIS AGREEMENT.
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(12) NOTICES
12.01 Notices. Payments, notices, or other communications required by this
Agreement shall be sufficiently made or given if mailed by certified First Class
mail, postage prepaid, addressed to the address stated below, or to the last
address specified in writing by the intended recipient.
1. If to INHIBITEX:
Xx. Xxxxxxx X. Xxxxxxxx
Inhibitex, Inc.
0000 Xxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX
Telephone: (000) 000 0000
Fax: (000) 000 0000
2. If to BRI:
Xx. Xxxxxxxx X. Xxxxx
BioResearch Ireland
National Pharmaceutical Biotechnology Centre
X'Xxxxxx Institute
Trinity College
Xxxxxx 0, Xxxxxxx
Telephone 000-0-0000000/2159
Telefax 353 -1-6715198
(13) MISCELLANEOUS PROVISIONS
13.01 Non-Use of Names. INHIBITEX shall not use the name of BRI nor of any of
its employees or components, nor any adaptation thereof, in any product
advertising or sales literature without the prior written consent obtained from
BRI in each case, except that INHIBITEX may state, that it is licensed by BRI
under one or more of the patents and/or applications comprising the LICENSED
PATENTS. INHIBITEX shall not use the name of Xx. Xxxxxx or his employer, nor any
adaptation thereof, in any product advertising or sales literature without the
prior written consent obtained from Xx. Xxxxxx or his employer in each case.
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13.02 Assignment of this Agreement. This Agreement, with the rights and
privileges it creates, is assignable only with the written consent of both
parties; provided that either party may assign this Agreement without such
consent to an assignee of substantially all of the business or assets of such
party.
13.03 Force majeure. Each party shall be excused from any breach of this
Agreement which is proximately caused by government regulation, war, strike, act
of God, or other similar circumstance normally deemed outside the control of
well-managed businesses.
13.04 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT OR
THE EXERCISE OF RIGHTS HEREUNDER.
13.05 Execution and modification. This Agreement will become binding only when
signed by both parties. It may be modified or amended by a written agreement
between the parties.
13.06 Entire Agreement. This Agreement contains the entire understanding of the
parties with respect to the LICENSED TECHNOLOGY and supersedes all other written
and oral agreements between the parties with respect to the LICENSED TECHNOLOGY,
including the first License Agreement between Forbairt (trading as BioResearch
Ireland) (now known as Enterprise Ireland,trading as BioResearch Ireland and
INHIBITEX executed in March 1996. This Agreement is to be interpreted in
conjunction with, and consistent with the 1999 Cooperative Research and
Development Agreement between BRI and Inhibitex ..
13.07 Headings. Headings appear solely for convenience of reference. Such
headings are not part of this Agreement and shall not be used to
construe it.
13.08 Provisions. If any provision or provisions of this Agreement shall be
held to be invalid, illegal, or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be
affected or impaired thereby.
13.09 Governing Law. This Agreement shall be governed by the laws of the
state of Georgia and the country of the United States.
13.10 Dispute Resolution. The Parties will attempt in good faith to resolve
any controversy or dispute arising out of or relating to this Agreement
promptly by negotiations between or among the parties. Any and all
claims, disputes or controversies arising under, out of, or in
connection with this Agreement, including any dispute relating to
patent validity or infringement and appropriate license terms and
royalties, which have not been resolved by good faith negotiations
14
between the parties shall be resolved by final and binding arbitration
in Atlanta, Georgia, under the rules of the American Arbitration
Association, or the Patent Arbitration Rules if applicable. BRI shall
choose one arbitrator, Inhibitex shall choose one arbitrator, and the
two arbitrators together will choose a third arbitrator. The
arbitrators shall have no power to add to, subtract from or modify any
of the terms or conditions of this agreement. Any award rendered in
such arbitration may be enforced by either party in either the courts
of the State of Georgia or in the United States District Court for the
Northern District of Georgia, to whose jurisdiction for such purposes
BRI and Inhibitex each hereby irrevocably consents and submits.
IN WITNESS WHEREOF, the parties have caused this Agreement to become effective
as of the date last executed below by a signatory to this Agreement,
Enterprise Ireland (trading as BioResearch Ireland)
/s/ Xxxxx Xxxx
----------------------------------
Dr. Xxx Xxxx
Title: Director
Date: 8 April 1999
Inhibitex, Inc
/s/ Xxxxxx X. Xxxxx
----------------------------------
Xxxxxx X. Xxxxx, Ph.D.
Vice President Preclinical Development
Chief Scientific Officer
Date: 4-5-99
15
Attachment A
BRI Compensation
Number of separate licenses
required by Inhibitex to Royalty paid for BRI's
commercialize a Product licensed technology in a
produced by product produced by
Inhibitex or by a sublicensee. Inhibitex or a sublicensee (%)
------------------------------ ------------------------------
1 license [ *** ]
2 licenses [ *** ]
3 or more licenses [ *** ]
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Attachment B
Current Licensed Patent Filings
1. The S. aureus Fibrinogen Binding Protein Gene, filed 8/22/94 U.S.
08/293,728.
2. Fibrinogen Binding Proteins from S. aureus, filed 11/26/97 U.S.
60/066,815.
3. Extracellular Matrix Binding Proteins from S. aureus, filed 8/31/98
U.S. 60/098,427; filed 11/25/98 U.S. 09/200,650 and filed 11/25/98 as
PCT/US98/25246.
4. Multicomponent Vaccines, filed 8/31/98 U.S. 60/098,439.
5. Polypeptides and Polynucleotides from Coagulase-Negative
Staphylococci, filed 8/31/98 U.S. 60/098,443.
6. Staphylococcal Adhesions for Donor Select and Donor Stimulation
Immunization Strategies, filed 8/31/98 U.S. 60/098,449.
17
