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EXHIBIT 10.11
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "AGREEMENT") is made and entered into this 1st
day of March, 1999, by and between DUKE UNIVERSITY, a not-for-profit corporation
organized and existing under the laws of the State of North Carolina
(hereinafter called "DUKE'), having a mailing address at Office of Science and
Technology, Duke University, Room 230, North Building, Box 90083, Xxxxxx, Xxxxx
Xxxxxxxx 00000, and ANTIGENICS, LLC, a limited liability company organized and
existing under the laws of the State of Delaware (hereinafter called
"ANTIGENICS"), having a mailing address at 000 Xxxxx Xxxxxx, Xxxxx 0000, Xxx
Xxxx, Xxx Xxxx 00000.
WHEREAS, Xxxxxxxxxxx Xxxxxxxxx, Xxxxx Xxxx, and Xxx Xxxxxx (hereinafter
called the "INVENTORS") are inventors of an invention within the PATENT RIGHTS
(as hereinafter defined) and described generally in DUKE Office of Science and
Technology File #1526 (hereinafter called the "1526 INVENTION");
WHEREAS, the INVENTORS have assigned their entire right, title and interest
in, to, and under the PATENT RIGHTS to DUKE;
WHEREAS, DUKE is the sole owner of the entire right, title and interest in,
to, and under the PATENT RIGHTS;
WHEREAS, DUKE has the right to grant licenses under the PATENT RIGHTS;
WHEREAS, DUKE wishes to have LICENSED PRODUCTS (as hereinafter defined)
developed and commercialized for the public benefit; and
WHEREAS, ANTIGENICS wishes to develop and commercialize LICENSED PRODUCTS
for the public benefit.
NOW THEREFORE, in consideration of the premises above and the faithful
performance of the covenants herein contained, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
1.01 - For the purposes of this AGREEMENT, and solely for that purpose, the
terms and phrases set forth in this Section 1.01 in capital letters shall be
defined as follows:
a. "FIELD" shall mean all uses of the LICENSED PRODUCTS.
b. "PATENT RIGHTS" shall mean the U.S. patent application filed
February 26, 1999, and all U.S. and foreign patent applications
filed, or to be filed, to protect the 1526 INVENTION, as well as
all substitutes, continuations, continuations-in-part, divisions,
and renewals thereof, all
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U.S. or foreign patents now issued or hereafter issuing thereon,
and all reexaminations, extensions, and reissues, thereof, and
the inventions therein.
c. "VALID CLAIM" means a claim of an issued patent which has not
lapsed or become abandoned or been declared invalid or
unenforceable by a court of competent jurisdiction or an
administrative agency for which there is no right of appeal or
for which the right of appeal is waived.
d. "LICENSED PRODUCT" shall mean any product, the use, sale, offer
for sale, manufacture, or importation of which, if unlicensed,
would infringe one or more VALID CLAIMS of an application, if
issued, or a patent within the PATENT RIGHTS.
e. "NET SALES" shall mean the total invoiced sales of LICENSED
PRODUCTS sold by ANTIGENICS, or its AFFILIATES, or sublicensees,
less the following sums actually paid or credited by ANTIGENICS
as shall be detailed in ANTIGENICS' reports made pursuant to
Section 5.02 of this AGREEMENT:
(a) trade, quantity or cash discounts or commissions allowed in
amounts customary in the trade;
(b) any tax, excise or other governmental charge upon or
measured by the production, sale, transportation, delivery
or use and duties imposed on the import of LICENSED PRODUCTS
included in such amount;
(c) credits or allowances, if given or made for LICENSED
PRODUCTS, price adjustments, returns, rejections, recalls or
destructions (voluntarily made by or requested or made by an
appropriate government agency, subdivision or department) of
LICENSED PRODUCTS previously delivered.
LICENSED PRODUCTS used by ANTIGENICS for its own use in the
FIELD, LICENSED PRODUCTS sold to Affiliates, and internal sales
for use in service businesses in arms length transactions shall
be considered to be NET SALES for purposes of computing royalty
obligations, except that LICENSED PRODUCTS used for non-revenue
producing activities, including but not limited to promotional
items or field trials, shall not be considered to be NET SALES.
For purposes of this definition, a LICENSED PRODUCT shall be
considered sold when billed out to a customer other than
ANTIGENICS or its AFFILIATES.
In the event a LICENSED PRODUCT is sold in combination with other
active components, NET SALES, for purposes of determining
royalties on
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the combination will be calculated by multiplying NET SALES of
the combination by the fraction A/(A+B), in which A is the
invoiced price of the LICENSED PRODUCT if sold separately, and B
is the invoiced price of the other active components in the
combination if sold separately. If the LICENSED PRODUCTS and the
other active components in the combination are not sold
separately, then royalties on the combination will be calculated
by the same method, in which A is the direct cost of
manufacturing the LICENSED PRODUCT and B is the direct cost of
manufacturing the other active components. However, in no case
shall the calculated fraction A/(A+B) be less than [ ]*.
f. "AFFILIATE" shall mean any entity which, directly or indirectly,
owns or controls, is owned or controlled by, or is under common
ownership or control with a party hereto. An entity shall be
regarded as in control of another entity if it, directly or
indirectly, owns or controls more than fifty percent (50%) of the
voting power of the entity, except that in any country where the
local law does not permit a U.S. entity to own or control at
least fifty percent (50%) of the voting power of an entity
organized under its laws, an entity shall be regarded as in
control of a party hereto if it, directly or indirectly, owns or
controls the maximum percentage permitted by local law.
g. "EFFECTIVE DATE" shall mean the date first set forth above.
ARTICLE 2 - LICENSE
2.01 - DUKE hereby grants to ANTIGENICS and ANTIGENICS hereby accepts from
DUKE, subject to the terms and conditions of this AGREEMENT, an exclusive
worldwide license, with the right to grant sublicenses, to make, have made, use,
offer to sell, sell, and import LICENSED PRODUCTS under the PATENT RIGHTS during
the term of this AGREEMENT, unless sooner terminated as hereinafter provided.
2.02 - Any sublicense granted by ANTIGENICS shall incorporate substantially
the same terms and conditions of Articles 10, 17, 18, and 19 and Section 2.03 of
this AGREEMENT, which terms shall be binding upon each sublicensee. Royalties
paid to DUKE for NET SALES of LICENSED PRODUCTS by sublicensees shall be equal
to the royalties that would have been paid to DUKE if LICENSED PRODUCTS were
sold directly by ANTIGENICS. ANTIGENICS agrees to be responsible for the payment
to DUKE of royalties on funds received by ANTIGENICS from its sublicensees and
for using commercially reasonable efforts to enforce the terms of the sublicense
agreements. If, for any reason, this AGREEMENT is terminated, ANTIGENICS agrees
to assign all such sublicenses directly to DUKE.
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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2.03 - It is agreed that, notwithstanding any provisions herein, DUKE is
free to use the LICENSED PRODUCTS for its own non-commercial educational,
teaching, and research purposes without restriction and without payment of
royalties or other fees to ANTIGENICS.
2.04 - Within thirty (30) days following the execution of this AGREEMENT
and thereafter during the period of this AGREEMENT, DUKE agrees to provide
ANTIGENICS with copies of all information it may have or later obtain relative
to the PATENT RIGHTS, and copies of any and all patents or patent applications
owned or controlled by DUKE covering the PATENT RIGHTS or the use of the PATENT
RIGHTS or processes for the manufacture of the LICENSED PRODUCTS, including all
U.S. and foreign patent office actions received and amendments filed, in any,
relative thereto.
ARTICLE 3 - ROYALTIES ON NET SALES OF LICENSED PRODUCTS
3.01 - As consideration for the license granted by DUKE to ANTIGENIC
pursuant to Section 2.01 of this AGREEMENT, ANTIGENICS shall pay to DUKE
royalties at the rate of [ ]* of NET SALES of LICENSED PRODUCTS sold by
ANTIGENICS, its AFFILIATES, and its sublicensees, during the prior six (6) month
period ending December 31st and June 30th, such royalties to paid to DUKE prior
to February 28th and August 31st of each year, respectively.
3.02 - ANTIGENICS shall pay to DUKE a minimum annual royalty of [ ]*
prior to February 28th of each year, starting with the second February 28th
after the earlier of (i) the first approval for sale by the U.S. Food and Drug
Administration ("F.D.A."), or a comparable regulatory authority in a foreign
country, of a LICENSED PRODUCT, or (ii) the first sale of a LICENSED PRODUCT
that does not require F.D.A. or comparable foreign approval, but only if the
LICENSED PRODUCT so approved is actually sold by ANTIGENICS, its AFFILIATES, or
sublicensees.
ARTICLE 4 - MILESTONE BASED ROYALTIES
4.01 - As further consideration for the license granted by DUKE to
ANTIGENICS in Section 2.01 of this AGREEMENT, ANTIGENICS shall pay to DUKE
milestone based royalties within thirty (30) days of the attainment by
ANTIGENICS, its AFFILIATES, or its sublicensees of the commercial milestones
specified below. No such milestone payments shall be credited towards other
royalties or minimum royalties due by ANTIGENICS to DUKE under this AGREEMENT.
a. [ ]*.
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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b. [
]*.
c. [
]*.
ARTICLE 5 - RECORDS AND REPORTS
5.01 - ANTIGENICS shall deliver to DUKE prior to February 28th and August
31st of each year a written account of the NET SALES of LICENSED PRODUCTS made
during the prior six (6) month period ending December 31st and June 30th,
respectively, upon which royalties are due hereunder. Such reports shall include
a calculation of royalties by LICENSED PRODUCT and by country in substantially
the format provided in APPENDIX A hereto.
5.02 - ANTIGENICS shall keep and maintain complete and accurate book and
records containing an accurate accounting of all data in sufficient detail to
enable verification of earned royalties and other payments hereunder. ANTIGENICS
shall preserve such books and records for five (5) years after the sales
recorded were actually made. Upon reasonable notice from DUKE, ANTIGENICS shall
permit an independent certified public accountant selected by DUKE (except one
to whom ANTIGENICS has some reasonable objection) to have access during ordinary
business hours to such of ANTIGENICS' records as may be necessary to determine,
in respect of any quarter ending not more than two (2) years prior to the date
of such notice, the correctness of any report and/or payment made under this
AGREEMENT. Such certified public accountant shall execute a written
non-disclosure agreement reasonably acceptable to ANTIGENICS.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.01 - ANTIGENICS represents and warrants to DUKE as follows:
a. ANTIGENICS has all necessary legal power to enter into and
perform its obligations under this Agreement and has taken all
necessary legal action under the laws of the State of Delaware
and its articles of organization and operating agreement to
authorize the execution of this Agreement and the consummation of
the transactions contemplated hereunder.
6.02 - DUKE represents and warrants to ANTIGENICS as follows:
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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x. XXXX has all necessary legal power to enter into and perform its
obligations under this Agreement and has taken all necessary
legal action under the laws of the State of North Carolina, its
charter, and bylaws to authorize the execution of this Agreement
and the consummation of the transactions contemplated hereunder.
x. XXXX legally and beneficially owns and controls all of the
INVENTORS' right, title, and interest in, to, and under the
PATENT RIGHTS, free and clear of all liens and encumbrances and,
to the best of DUKE's knowledge, no other party legally or
beneficially owns or controls any right, title, or interest in,
to, or under the PATENT RIGHTS, and the PATENT RIGHTS are free
and clear of all liens and encumbrances.
c. To the best of DUKE's knowledge, there are no outstanding options
or rights in any third party to any of the PATENT RIGHTS or to
acquire any rights or licenses to any of the PATENT RIGHTS.
d. There is no action, suit, claim, proceeding, or governmental
investigation pending or, to the best of DUKE's knowledge,
threatened against DUKE, with respect to any of the PATENT RIGHTS
either at law or in equity, before any court or administrative
agency or before any governmental department, commission, board,
bureau, agency or instrumentality, whether United States or
foreign.
e. As used in this Section 3.02, the expression "to the best of
DUKE's knowledge" means that, after an examination of documents
in the files of DUKE's Office of Science and Technology and due
inquiry of the INVENTORS and the personnel of DUKE's Office of
Science and Technology, DUKE has found no reason to believe that
the statements set forth in this Section 3.02 are false or
misleading.
ARTICLE 7 - DUE DILIGENCE REQUIREMENTS
7.01 - Throughout the term of this AGREEMENT, and subject to the exercise
of its reasonable business judgment, ANTIGENICS shall use commercially
reasonable diligence to: (i) perform research and development to bring LICENSED
PRODUCTS to market, (ii) develop manufacturing capabilities, (iii) market
LICENSED PRODUCTS, and (iv) sublicense the PATENT RIGHTS for applications that
ANTIGENICS will not pursue.
7.02 - Within twelve (12) months of the execution of this AGREEMENT,
ANTIGENICS will demonstrate to DUKE that ANTIGENICS is using commercially
reasonable diligence to establish a research effort to develop LICENSED
PRODUCTS. For the purposes of the preceding sentence, commercially reasonable
diligence shall mean that either (i) at least one of ANTIGENICS employee has
dedicated sufficient time to perform appropriate research to develop LICENSED
PRODUCTS for a period of at least six (6) months or (ii) ANTIGENICS has
established a research agreement with another academic or commercial party, such
agreement specifying that at least one ANTIGENICS employee will dedicate
sufficient time to
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perform appropriate research to develop LICENSED PRODUCTS for at least one year.
Furthermore, ANTIGENICS shall continue to conduct the research in the use of
calreticulin in vaccines during the term of this AGREEMENT that ANTIGENICS was
conducting prior to the EFFECTIVE DATE, provided that continuing such research
remains commercially reasonable.
7.03 - Within two (2) months of the EFFECTIVE DATE, ANTIGENICS will meet
with the INVENTORS and DUKE to discuss ways to further develop the 1526
INVENTION. Neither this Section 7.03 nor the discussions referred to in the
preceding sentence shall create any obligation on the part of ANTIGENICS to
enter into any agreement.
ARTICLE 8 - PATENTS
8.01 - DUKE shall have the sole responsibility to file and prosecute U.S.
and foreign patent applications covering any patentable invention within the
PATENT RIGHTS; to prosecute and defend such applications against third party
oppositions; and upon grant of any patent covering inventions included within
the PATENT RIGHTS, to maintain such patent in full force. DUKE agrees to
consider in good faith ANTIGENICS' advice as to the selection of appropriate
legal counsel and jurisdictions within which to file and prosecute such patent
applications and maintain such patents. DUKE shall keep ANTIGENICS advised as to
the filing and prosecution of such applications and the maintenance of such
patents by forwarding to ANTIGENICS (i) copies of all documents relating to such
filing and prosecution, in sufficient time to review such documents and comment
thereon, and (ii) all official correspondence relating thereto, promptly.
ANTIGENICS agrees to provide DUKE with all commercially reasonable assistance in
the filing and prosecution of such U.S. and foreign patent applications and the
maintenance of such patents.
8.02 - DUKE shall request from ANTIGENICS a written list of foreign
countries in which ANTIGENICS wishes DUKE to prosecute and maintain the PATENT
RIGHTS ("DESIGNATED COUNTRIES"), and DUKE shall proceed to prosecute and
maintain the PATENT RIGHTS in the DESIGNATED COUNTRIES. ANTIGENICS shall
reimburse DUKE for all expenses associated with prosecution and maintenance of
patent applications and patents related to the PATENT RIGHTS in the DESIGNATED
COUNTRIES, such reimbursement to be made within thirty (30) days of being
invoiced. DUKE shall be free, at its own option and expense, to file patents in
foreign countries that are not DESIGNATED COUNTRIES. ANTIGENICS shall have no
rights under Article 2 of this AGREEMENT to make, have made, use, sell, or offer
for sale LICENSED PRODUCTS in countries that are not DESIGNATED COUNTRIES and no
obligation to reimburse DUKE for patent expenses incurred in pursuing patent
protection in countries that are not DESIGNATED COUNTRIES.
8.03 - DUKE shall pay for all expenses associated with the filing,
prosecution, and issuance of U.S. patent applications within the PATENT RIGHTS,
and ANTIGENICS shall reimburse DUKE for all such expenses within thirty (30)
days of receipt of an invoice therefor from DUKE, provided, however, that
ANTIGENICS shall not be obligated to reimburse DUKE
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in excess of [ ]*for such expenses. If such filing, prosecution, and
issuance expenses exceed [ ]* DUKE shall not be obligated to continue filing
and prosecuting U.S. patent applications within the PATENT RIGHTS, and
ANTIGENICS shall not be obligated to reimburse DUKE for additional expenses
associated with the filing, prosecution, and issuance of U.S. patent
applications within the PATENT SIGHTS. In the event that expenses for filing,
prosecution, and issuance of U.S. patent applications within the PATENT RIGHTS
exceed [ ]* DUKE and ANTIGENICS shall determine in good faith whether to
continue filing and prosecution of U.S. patent applications within the PATENT
RIGHTS and how such expenses of filing, prosecution, and issuance shall be
financed by the parties.
8.04 - DUKE shall pay for all expenses associated with the maintenance of
all issued U.S. patents within the PATENT RIGHTS, and ANTIGENICS shall reimburse
DUKE for all such maintenance expenses within thirty (30) days of receipt of an
invoice therefor from DUKE.
8.05 - ANTIGENICS may, at its sole option, elect to discontinue
reimbursement of expenses incurred during filing or prosecution of any
individual patent application within the PATENT RIGHTS or maintenance of any
individual patent within the PATENT RIGHTS within the United States or any
DESIGNATED COUNTRY which ANTIGENICS is otherwise obligate to reimburse DUKE for
pursuant to Sections 8.02, 8.03, or 8.04 above, by providing DUKE with written
notice that it no longer shall reimburse DUKE for such expenses. However, any
rights granted to ANTIGENICS in Article 2 of this AGREEMENT shall be revoked
with respect to such individual patent application or patent that ANTIGENICS so
elects in writing not to reimburse DUKE for, such revocation of rights to become
effective immediately upon receipt by DUKE of written notice from ANTIGENICS
that it no longer wishes to reimburse DUKE for expenses for a given patent
application or patent which ANTIGENICS would otherwise be obligated to reimburse
DUKE for pursuant to Sections 8.02, 8.03, or 8.04 above.
ARTICLE 9 - INFRINGEMENT BY THIRD PARTIES
9.01 - Upon learning of the infringement of the PATENT RIGHTS by a third
party, the party learning of such infringement shall promptly inform the other
party in writing of that fact along with any evidence available to it pertaining
to the infringement. ANTIGENICS may at its own expense take whatever steps are
necessary to stop the infringement and recover damages, including but not
limited to the right bring any legal action for infringement and defend any
counterclaim of invalidity or action of a third party for declaratory judgment
for non-infringement or non interference. ANTIGENICS may settle such suits
solely in its own name and solely at its own expense and through counsel of its
own choice.
9.02 - DUKE shall provide to ANTIGENICS all reasonable assistance and
cooperation requested by ANTIGENICS with respect to the legal actions described
in Section 9.01.
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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ANTIGENICS shall keep DUKE informed of the steps taken by ANTIGENICS and the
progress of any legal actions taken by ANTIGENICS.
9.03 - ANTIGENICS shall pay to DUKE royalties pursuant to Section 3.01 on
any such damages recovered as consideration for lost sales of LICENSED PRODUCTS
that are in excess of legal expenses incurred by ANTIGENICS in enforcing its
PATENT RIGHTS. Any punitive damages awarded shall be divided equally by the
parties.
9.04 - If ANTIGENICS does not undertake, within sixty (60) days of notice,
to enforce the PATENT RIGHTS against the infringing party, and if ANTIGENICS is
not currently engaged in litigation involving the PATENT RIGHTS, DUKE shall have
the right, at its own expense to take whatever steps are necessary to stop the
infringement and recover damages, and shall be entitled to retain damages so
recovered, after reimbursing ANTIGENICS for any of its expenses in cooperating
with DUKE in prosecuting such infringement.
ARTICLE 10 - LAWS AND REGULATIONS
10.01 - ANTIGENICS shall use commercially reasonable efforts to comply with
all foreign, federal, state, and local laws, regulations, rules, and orders
applicable to the testing, production, transportation, packaging, labeling,
export, sale, and use of the LICENSED PRODUCTS.
10.02 - ANTIGENICS shall use commercially reasonable efforts to comply with
all U.S. export laws and regulations applicable to this AGREEMENT and
ANTIGENICS' activities hereunder.
ARTICLE 11 - PUBLICATION
11.01 - ANTIGENICS agrees that the right of publication in scientific
journal or to present orally at professional conferences or meetings the 1526
INVENTION and related information within the PATENT RIGHTS shall reside in the
INVENTORS. DUKE shall use reasonable efforts to provide ANTIGENICS a review copy
of such publication or the text of any propose presentation sixty (60) days in
advance of submission for publication or public presentation for the sole
purpose of DUKE and ANTIGENICS filing a patent application prior to such
publication or public presentation. In the event that ANTIGENICS wishes to have
patent applications filed in order to protect the subject matter to be
disclosed, ANTIGENICS may request that DUKE cause the INVENTORS to delay
publication or public presentation for no more than ninety (90) days, and DUKE
shall comply in causing the INVENTORS to delay such publication or public
presentation. ANTIGENICS shall also have the right to publish and/or co-author
any publication relating to the 1526 INVENTION based upon data developed by
ANTIGENICS.
ARTICLE 12 - DURATION AND TERMINATION
12.01 - This AGREEMENT shall become effective upon the EFFECTIVE DATE, and
unless sooner terminated in accordance with this Article 12, shall remain in
full force and effect for the longer of: (i) the life of the last-to-expire of
the patents included in the PATENT RIGHTS; or (ii) ten (10) years from the
EFFECTIVE DATE hereof.
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12.02 - ANTIGENICS may terminate this AGREEMENT without cause by giving
DUKE written notice at least sixty (60) days prior to such termination.
12.03 - Either party may immediately terminate this AGREEMENT for fraud,
willful misconduct, or illegal conduct of the other party, that materially
adversely affects such party, upon written notice of same to that other party.
12.04 - Except as provided in Section 12.03 above, if either party commits
a breach of any material obligation under this AGREEMENT, the non-breaching
party may terminate this AGREEMENT, upon sixty (60) days written notice to the
breaching party. Such notice must contain a full description of the event or
occurrence constituting a breach of this AGREEMENT. If the breach is not cured
within that time, the termination will be effective as of the end of the sixty
(60) day cure period.
12.05 - Upon the termination of this AGREEMENT, ANTIGENICS shall notify
DUKE of the amount of LICENSED PRODUCTS ANTIGENICS then has on hand and
ANTIGENICS shall then have a license to use, offer for sale, and sell that
amount of LICENSED PRODUCTS, but no more, provided ANTIGENICS shall pay the
royalty thereon at the rate and at the time provided for herein.
12.05 - If during the term of this Agreement, ANTIGENICS shall become
bankrupt or insolvent or if the business of ANTIGENICS shall be placed in the
hands of a receiver or trustee, whether by the voluntary act of ANTIGENICS or
otherwise, or if ANTIGENICS shall .ease to exist as an active business, this
AGREEMENT shall immediately terminate as though as a result of ANTIGENICS'
uncured breach, and DUKE shall have all the remedies and rights available to it
for termination with cause; provided, however, that this provision shall not
apply to a reorganization of ANTIGENICS under Chapter 11 of the United States
Bankruptcy Code.
12.06 - Articles 10, 17, and 19 shall all survive the termination of this
AGREEMENT.
12.07 - The rights provided in this Article 12 shall be in addition to, and
without prejudice to, any other rights which the parties may have with respect
to any breach or violations of the provision of this AGREEMENT.
ARTICLE 13 - LAW TO GOVERN
13.01 - This AGREEMENT shall be construed and enforced in accordance with
the laws of the State of North Carolina.
ARTICLE 14 - NOTICES
14.01 - Notice hereunder shall be deemed sufficient if personally
delivered, if given by registered mail, postage prepaid, or by national
overnight courier, charges prepaid, and in each instance addressed to the party
to receive such notice at the address given below, or such other address as may
hereafter be designated by notice in writing.
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DUKE ANTIGENICS
Office of Science and Technology Antigenics, LLC
Duke University 000 Xxxxx Xxxxxx
Room 000, Xxxxx Xxxxxxxx Xxx Xxxx, Xxx Xxxx 00000
Box 90083 Attn.: Xxxxxxx Xxxx
Xxxxxx, Xxxxx Xxxxxxxx 00000
Attn.: Xxxxxx X. Xxxxxx, Ph.D.
With a copy to:
Office of the University Counsel Xxxxxx & Xxxxxxx LLP
Xxxx University Medical Center 1155 Avenue of the Americas
XXXX Xxx 0000 Xxx Xxxx, Xxx Xxxx 00000
0000 Xxxxx Xxxxxx, Xxxxx 0000 Xxxx.: Xxxxxxx X. Antler, Ph.D
Xxxxxx, Xxxxx Xxxxxxxx 00000
14.02 - Information and transactions exchanged between the parties in
relation to financial consideration contemplated under this AGREEMENT, including
but not limited to royalty reports and payments, shall be tendered to the
following offices of each party respectively:
DUKE ANTIGENICS
Office of Science and Technology Antigenics, LLC
Room 230, North Building 000 Xxxxx Xxxxxx
Xxx 00000 Xxx Xxxx, Xxx Xxxx 00000
Xxxxxx, Xxxxx Xxxxxxxx 00000 Attn.: Xxxxxxx Xxxx
Attn.: Financial Administrator
ARTICLE 15 - ASSIGNMENT
15.01 - This AGREEMENT shall be binding upon and inure to the benefit of
the respective successors and assigns of the parties hereto. This Agreement may
not be assigned except by a written agreement signed by both parties, except
that without such consent ANTIGENICS may assign this Agreement to an AFFILIATE
or to an entity assuming all or substantially all of its business to which the
LICENSED PRODUCTS relate.
ARTICLE 16 - INDEMNITY INSURANCE, REPRESENTATIONS, STATUS
16.01 - ANTIGENICS agrees to indemnify, hold harmless and defend DUKE, its
officers, employees, and agents, against any and all claims, suits, losses,
damages, costs, fees, and expenses asserted by third parties, both government
and non-government, resulting from or arising out of the use, sale, or
manufacture of the LICENSED PRODUCTS, except as may arise out of DUKE's own
gross negligence or willful misconduct.
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16.02 - ANTIGENICS shall maintain in full force, at its sole cost and
expense, general liability insurance coverage and, with respect to the LICENSED
PRODUCTS, if any, product liability insurance coverage, in amounts customary for
businesses similarly situated in the ANTIGENICS' industry. DUKE shall have the
right to ascertain from time to time that such coverage exists, such right to be
exercised in a commercially reasonable manner. In lieu of said coverage, DUKE
agrees to consider the existence of an adequate self-insurance program as an
acceptable alternative.
16.03 - NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A REPRESENTATION OR
WARRANTY BY DUKE OF THE VALIDITY OF ANY OF THE PATENTS OR THE ACCURACY, SAFETY,
EFFICACY, OR USEFULNESS, FOR ANY PURPOSE, OF ANY PATENT RIGHTS. DUKE SHALL HAVE
NO OBLIGATION, EXPRESS OR IMPLIED, TO SUPERVISE, MONITOR, REVIEW OR OTHERWISE
ASSUME RESPONSIBILITY FOR THE PRODUCTION, MANUFACTURE, TESTING, MARKETING OR
SALE OF ANY LICENSED PRODUCT, AND, EXCEPT AS MAY ARISE FROM DUKE'S GROSS
NEGLIGENCE OR INTENTIONAL MISCONDUCT, DUKE SHALL HAVE NO LIABILITY WHATSOEVER TO
ANTIGENICS OR ANY THIRD PARTIES FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR
DAMAGE, OF ANY KIND OR NATURE, SUSTAINED BY, OR ANY DAMAGE ASSESSED OR ASSERTED
AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR IMPOSED UPON ANTIGENICS OR ANY
OTHER PERSON OR ENTITY, ARISING OUT OF OR IN CONNECTION WITH OR RESULTING FROM:
a. the production, use, or sale of any LICENSED PRODUCT by
ANTIGENICS or its sublicensees; or
b. any advertising or other promotional activities by ANTIGENIC with
respect to any of the foregoing.
16.04 - Neither party hereto is an agent of the other party for any purpose
whatsoever. The relationship of DUKE and ANTIGENICS established hereunder shall
be that of independent contractors and, except as expressly provided herein,
nothing contained in this AGREEMENT shall be construed to: (i) give either party
the power to direct or control any activities of the other, (ii) constitute the
parties as partners, joint venturers, co-owners or otherwise as participants in
a joint or common undertaking, or (iii) allow either party to create or assume
any obligation on behalf of the other for any purpose whatsoever.
ARTICLE 17 - USE OF A PARTY'S NAME
17.01 - Neither party will, without the prior written consent of the other
party:
a. use in advertising, publicity or otherwise, any trade-name,
personal name, trademark, trade device, service xxxx, symbol, or
any abbreviation, contraction or simulation thereof owned by the
other party; or
b. represent, either directly or indirectly, that any product or
service of the other party is a product or service of the
representing party or that it is
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made in accordance with or utilizes the information or documents
of the other party.
ARTICLE 18 - SEVERANCE, WAIVER AND ALTERATION
18.01 - Each clause of this AGREEMENT is a distinct and severable clause
and if any clause is deemed illegal, void or unenforceable, the validity,
legality or enforceability of any other clause or portion of this AGREEMENT will
not be affected thereby, unless the part or parts which are illegal, void, or
unenforceable shall substantially impair the value of the entire AGREEMENT as to
either party.
18.02 - The failure of a party in any instance to insist upon the strict
performance of the terms of this AGREEMENT will not be construed to be a waiver
or relinquishment of any of the terms of this AGREEMENT, either at the time of
the party's failure to insist upon strict performance or at any time in the
future, and such terms will continue in full force and effect.
18.03 - Any alteration, modification, or amendment to this AGREEMENT must
be in writing and signed by both parties.
ARTICLE 19 - CONFIDENTIALITY
19.01 - "CONFIDENTIAL INFORMATION" shall mean any information conspicuously
labeled "confidential" or "proprietary" by the disclosing party or, if such
information is communicated orally, is identified as confidential at the time of
its disclosure and confirmed as such in writing within thirty (30) days of its
disclosure. ANTIGENICS and DUKE each recognize that the other's CONFIDENTIAL
INFORMATION constitutes highly valuable information. ANTIGENICS and DUKE agree
that during the term of this AGREEMENT and until the later of five (5) years
after the EFFECTIVE DATE or two (2) years after the effective date of
termination of this AGREEMENT, they:
a. will keep confidential the other's CONFIDENTIAL INFORMATION by
taking whatever action each would take to preserve the
confidentiality of its own CONFIDENTIAL INFORMATION;
b. will only disclose that part of the other's CONFIDENTIAL
INFORMATION that is necessary for those officers, employees,
independent contractors, or agents who need to know to carry out
their responsibilities under this Agreement;
c. will not disclose the other's CONFIDENTIAL INFORMATION to any
third parties under any circumstance without written permission
from the other party and taking commercially reasonable
precautions to preserve the confidentiality of such CONFIDENTIAL
INFORMATION;
d. will not use the CONFIDENTIAL INFORMATION except as provided in
this Agreement; and
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e. will, within sixty (60) days of the request of the disclosing
party upon termination of this Agreement, return all the
CONFIDENTIAL INFORMATION disclosed to the other party pursuant to
this Agreement, save that the RECEIVING PARTY (hereinafter called
the "RECEIVING PARTY") and its legal counsel may each keep one
(1) copy of such CONFIDENTIAL INFORMATION for their records.
19.02 - Neither party shall be bound by the obligations of Section 19.01
hereof if the CONFIDENTIAL INFORMATION received from the other party:
a. is already known or available to the public or known or available
to the RECEIVING PARTY thereof;
b. has become known or available to the public through no fault of
the RECEIVING PARTY thereof;
c. is nonconfidentially disclosed to the RECEIVING PARTY by a third
party legally entitled to disclose the CONFIDENTIAL INFORMATION;
d. is required by law to be disclosed, provided commercially
reasonable measures are taken to preserve its confidentiality; or
e. is independently developed by the RECEIVING PARTY thereof, as
evidenced by written documentation.
19.03 - Except as required by law or legally advisable, neither party may
disclose the terms of this AGREEMENT without the written consent of the other
party, which consent shall not be unreasonably withheld.
ARTICLE 20 - TRANSFER OF MATERIALS
20.01 - Any transfer of materials between DUKE and ANTIGENICS in connection
with this AGREEMENT shall be made under the terms of a materials transfer
agreement mutually acceptable to the parties.
ARTICLE 21 - TITLES
21.01 - All titles and headings contained in this AGREEMENT are inserted
only as a matter of convenience and reference. They do not define, limit, extend
or describe the scope of this AGREEMENT or the intent of any of its provisions.
ARTICLE 22 - ENTIRE UNDERSTANDING
22.01 - This AGREEMENT represents the entire understanding between the
parties with respect to the subject matter hereof, and supersedes all other
agreements, express or implied, between the parties concerning the 1526
INVENTION, and the PATENT RIGHTS.
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ARTICLE 23 - FORCE MAJEURE
23.01 - Any delays in or failure by either party in performance of any
obligations hereunder shall be excused if and to the extent caused by such
occurrences beyond such party's reasonable control, including but not limited to
such occurrences as acts of God, earthquakes, strikes or other labor
disturbances, war, and other causes which cannot reasonably be controlled by the
party who failed to perform.
ARTICLE 24 - COUNTERPARTS
24.01 - This AGREEMENT may be signed in counterparts which, when taken
together, shall constitute one and the same document.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties have caused these presents to be executed
in duplicate as of the date and year first above written.
SEAL DUKE UNIVERSITY
By: /s/ Xxxxxx Xxxxx
-------------------------------
Xxxxxx Xxxxx
Director, Office of Science &
Technology
Date: 3/3/99
-----------------------------
SEAL ANTIGENICS, LLC
By: /s/ Xxxx Xxxxx
-------------------------------
Title: CEO
----------------------------
Date: 3/4/99
-----------------------------
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Appendix A
License Agreement for 1526 INVENTION
ROYALTY REPORT for period ending _____________
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County Product Sales in Sales in Sales in Sales in Sales in Sales in TOTAL Reductions TOTAL NET TOTAL
(Month) (Month) (Month) (Month) (Month) (Month) GROSS to Sales(2) SALES ROYALTY DUE
SALES(1)
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SubTOTAL x Country
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SubTOTAL x Country
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GRANT TOTAL
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----------
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TOTAL Royalty Credits
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(1) Includes sales by Affiliates or by sublicensees of Antigenics.
(2) Note that Reductions to Sales are limited by the definition of Net
Sales as set forth in Section 1.01(e) of Article 1 of the License
Agreement.
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ROYALTIES PAID
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