Exhibit 10.1
EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
THE UNIVERSITY OF TEXAS SYSTEM
AND
COLLATERAL THERAPEUTICS, INC.
TABLE OF CONTENTS
RECITALS PAGE 3
1. EFFECTIVE DATE PAGE 3
2. DEFINITIONS PAGE 3
3. WARRANTY, SUPERIOR RIGHTS PAGE 4
4. LICENSE PAGE 5
5. PAYMENTS AND REPORTS PAGE 6
6. SPONSORED RESEARCH PAGE 8
7. TERM AND TERMINATION PAGE 8
8. INFRINGEMENT BY THIRD PARTIES PAGE 10
9. ASSIGNMENT PAGE 10
10. PATENT MARKING PAGE 10
11. INDEMNIFICATION PAGE 10
12. USE OF NAME PAGE 10
13. CONFIDENTIAL INFORMATION PAGE 10
14. PATENTS AND INVENTIONS PAGE 11
15. GENERAL PAGE 12
SIGNATURES PAGE 14
Exhibit I PAGE 15
Exhibit 2 PAGE 16
Page 2
EXCLUSIVE PATENT LICENSE AGREEMENT
THIS Agreement (AGREEMENT) is between the Board of Regents (BOARD) of The
University of Texas System (SYSTEM), an agency of the State of Texas, whose
address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of the University
of Texas Southwestern Medical Center at Dallas (UT SOUTHWESTERN), a component
institution of SYSTEM, and Collateral Therapeutics, Inc. (LICENSEE), a Delaware
corporation having a principal place of business located at 00000 Xx Xxxxxx
Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000.
RECITALS
A. BOARD owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related to
LICENSED SUBJECT MATTER, which were developed at UT SOUTHWESTERN.
B. BOARD desires to have the LICENSED SUBJECT MATTER developed and used
for the benefit of LICENSEE, INVENTOR, BOARD, and the public as outlined in
BOARD's Intellectual Property Policy.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED
SUBJECT MATTER.
D. LICENSEE intends to sponsor research relating to LICENSED SUBJECT
MATTER at UT SOUTHWESTERN to further develop LICENSED SUBJECT MATTER and to
identify related technologies and will execute a sponsored research agreement
(SPONSORED RESEARCH AGREEMENT) in the form attached hereto as Exhibit 2
concurrently with the execution of this AGREEMENT.
NOW, THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties agree as follows:
1. EFFECTIVE DATE
This AGREEMENT is effective August 15, 2000 (EFFECTIVE DATE).
2. DEFINITIONS
As used in this AGREEMENT, the following terms have the meanings indicated:
2.1 AFFILIATE means any business entity more than 50% owned by LICENSEE,
any business entity which owns more than 50% of LICENSEE, or any business entity
that is more than 50% owned by a business entity that owns more than 50% of
LICENSEE.
2.2 ANTISENSE THERAPY means therapeutic use of oligonucleotides or modified
oligonucleotides that bind in a sequence specific manner to DNA or mRNA.
2.3 FIELD means GENE THERAPY for treatment of heart disease and heart
failure.
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2.4 GENE THERAPY means therapeutic use of a designated gene (including
therapeutic use of a homolog or derivative, or gene product thereof) which may
be incorporated into vectors or other carriers, in a pharmaceutical composition
that is administered by in vivo delivery (i.e. introduced inside the body) or by
ex vivo delivery (i.e. introduced into cells or other complexes outside of the
body which are subsequently introduced into the body). GENE THERAPY specifically
excludes ANTISENSE THERAPY.
2.5 INVENTOR means Xx. Xxxx X. Xxxxx and any potential co-inventor(s)
working under the direct supervision of Xx. Xxxxx.
2.6 LICENSED PRODUCT means any product or service SOLD by LICENSEE
comprising LICENSED SUBJECT MATTER pursuant to this AGREEMENT.
2.7 LICENSED SUBJECT MATTER means inventions, discoveries and processes
covered by PATENT RIGHTS and/or TECHNOLOGY RIGHTS within FIELD.
2.8 NET SALES means the gross revenues received by LICENSEE from the SALE
of LICENSED PRODUCTS less sales and/or use taxes actually paid, import and/or
export duties actually paid, outbound transportation prepaid or allowed, and
amounts allowed or credited due to returns (not to exceed the original billing
or invoice amount).
2.9 PATENT RIGHTS means BOARD's rights in information or discoveries
covered in patents, and/or patent applications, whether domestic or foreign, and
all divisionals, continuations. continuations- in-part, reissues, reexaminations
or extensions thereof, and any letters patent that issue thereon: (i) as defined
in Exhibit 1 attached hereto; or (ii) discovere,. conceived and/or reduced to
practice during the term of and directly related to or resulting from the
research performed under the SPONSORED RESEARCH AGREEMENT and for use within
FIELD.
2.10 SALE, SELL OR SOLD means the transfer or disposition of a LICENSED
PRODUCT for value to a party other than LICENSEE.
2.11 TECHNOLOGY RIGHTS means BOARD's rights in technical information,
know-how, processes, procedures, compositions, devices, methods. formulas,
protocols, techniques, software, designs, drawings or data which are not covered
by PATENT RIGHTS but which are useful and/or necessary for practicing the PATENT
RIGHTS and which: (i) were created by INVENTOR at UT SOUTHWESTERN before the
EFFECTIVE DATE or (ii) are created by INVENTOR at UT SOUTHWESTERN during the
term of and directly related to or resulting from the research performed under
the SPONSORED RESEARCH AGREEMENT and for use within FIELD.
3. WARRANTY: SUPERIOR RIGHTS
3.1 Except for the rights, if any, of the crovernment of the United States
of America (GOVERNMENT), as set forth below, BOARD represents and warrants (1)
that it is the owner of the entire right, title, and interest in and to LICENSED
SUBJECT MATTER, (2) that it has the sole right to grant licenses thereunder, (3)
its belief that it has not knowingly granted licenses thereunder to any other
entity that would restrict rights granted to LICENSEE, and (4) that it will not
knowingly grant licenses thereunder to any other entity that would restrict
rights granted to LICENSEE hereunder.
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3.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the GOVERNMENT and, if so, that the
GOVERNMENT may have certain rights relative thereto. This AGREEMENT is
explicitly made subject to the GOVERNMENT's rights under any agreement and any
applicable law or regulation. If there is a conflict between any agreement,
applicable law or regulation and this AGREEMENT, the terms of the GOVERNMENT
agreement, applicable law or regulation shall prevail.
3.3 LICENSEE understands and acknowledges that BOARD, by this AGREEMENT,
makes no representation as to the operability or fitness for any use, safety,
efficacy, approvability by regulatory authorities, time and cost of development,
patentability, and/or breadth of the LICENSED SUBJECT MATTER. BOARD, by this
AGREEMENT, also makes no representation (other than those provided above under
Section 3.1) as to whether there are any patents now held, or which will be
held, by others or by BOARD which may be dominant or subordinate to PATENT
RIGHTS, nor does BOARD make any representation that the inventions contained in
PATENT RIGHTS do not infringe any other patents now held or that will be held by
others or by BOARD.
3.4 LICENSEE, by execution hereof, acknowledges, covenants and agrees that
it has not been induced in any way, other than by the covenants, premises,
representations and warranties contained herein, by BOARD, SYSTEM, UT
SOUTHWESTERN or its employees, to enter into this AGREEMENT, and further
warrants and represents, based on the foregoing, that (1) it has conducted
sufficient due diligence with respect to all items and issues pertaining to this
AGREEMENT and all other matters pertaining to this AGREEMENT; and (2) LICENSEE
has adequate knowledge and expertise, or has utilized knowledgeable and expert
consultants, to adequately conduct the due diligence, and agrees to accept all
risks inherent herein.
4. LICENSE AND OPTION
4.1 BOARD hereby grants to LICENSEE a royalty-bearing, exclusive worldwide
license under LICENSED SUBJECT MATTER to manufacture, have manufactured, import,
use, offer for SALE and/or SELL LICENSED PRODUCTS for use within FIELD. This
grant is subject to the payment by LICENSEE to BOARD of all consideration as
provided herein, and is further subject to rights retained by BOARD to:
a. publish the general scientific findings from research related
to LICENSED SUBJECT MATTER subject to the terms of Article 13,
Confidential Information; and
b. use LICENSED SUBJECT MATTER for research, teaching and other
educationally-related purposes.
4.2 LICENSEE may extend the license granted herein to any AFFILIATE if the
AFFILIATE consents in writing to be bound by this AGREEMENT to the same extent
as LICENSEE. LICENSEE must deliver to BOARD a true and accurate copy of such
written agreement, and any modification or termination thereof, within 30 days
after execution, modification or termination.
4.3 LICENSEE may grant sublicenses consistent with this AGREEMENT if
LICENSEE is responsible for the operations of its sublicensees relevant to this
AGREEMENT as if the operations were carried out by LICENSEE, including the
payment of royalties whether or not paid to LICENSEE by a sublicensee. LICENSEE
must deliver to BOARD a true and correct copy of each sublicense granted by
LICENSEE, and any modification or termination thereof, within 30 days after
execution, modification, or termination. When this AGREEMENT is terminated,
BOARD and UT SOUTHWESTERN agree to accept as successors to LICENSEE existing
sublicensees in good standing at the date of termination
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provided that the sublicensees consent in writing to be bound by all the terms
and conditions of this AGREEMENT.
4.4 For a 3 year period commencing with the EFFECTIVE DATE, BOARD grants
LICENSEE an exclusive option (OPTION) to negotiate an exclusive,
royalty-bearing, worldwide license for inventions, discoveries and intellectual
properties related to LICENSED SUBJECT MATTER that were developed by INVENTOR at
UT SOUTHWESTERN and: (i) which result from research conducted under funding
sources other than the SPONSORED RESEARCH AGREEMENT; and (ii) which are not
otherwise obligated to any other third party; and (iii) which are directed to
GENE THERAPY for use within FIELD. This exclusive right to negotiate a license
will extend for a 6 month period (OPTION PERIOD) commencing with receipt by
LICENSEE of a written description of the invention from UT SOUTHWESTERN. Upon UT
SOUTHWESTERN's written notification to LICENSEE of any such new invention,
discovery or intellectual property, LICENSEE shall have 30 days to notify UT
SOUTHWESTERN of its election to maintain it OPTION rights to the technology.
LICENSEE will pay all patent expenses incurred by UT SOUTHWESTERN during the
OPTION PERIOD for inventions, discoveries and intellectual properties which are
included under the OPTION, not to exceed $9,000, unless LICENSEE notifies UT
SOUTHWESTERN in writing within the first 30 days of the OPTION PERIOD that it
does not wish to maintain its OPTION to such invention. LICENSEE may exercise
its option at any time during the OPTION PERIOD by notifying BOARD and UT
SOUTHWESTERN in writing of its intent to exercise this option. If LICENSEE
exercises its OPTION. BOARD and UT SOUTHWESTERN agree to diligently negotiate
with LICENSEE for an exclusive, royalty-bearing, worldwide license. Such license
will include reasonable and customary economic terms (i.e., royalties and/or
other payments) as the parties shall mutually agree upon. In the event that the
parties are unable to successfully negotiate an exclusive license agreement
within 90 days after LICENSEE exercises it OPTION, either party may supply the
other with written notice of its intent to terminate license negotiations. If
license negotiations are terminated, LICENSEE will, for an additional 3 month
period retain the right to obtain an exclusive, worldwide, royalty-bearing
license for such invention for the same consideration set forth in any new
proposed license agreement that UT SOUTHWESTERN might negotiate with any other
party, provided that the consideration to be provided as part of the new
proposed license agreement between UT SOUTHWESTERN and such third party is less
than the consideration offered by LICENSEE in its last proposal before
termination of license negotiations. Upon UT SOUTHWESTERN'S written notification
to LICENSEE of any such new proposal, LICENSEE shall have 10 days to notify UT
SOUTHWESTERN of its election.
5. PAYMENTS AND REPORTS
5.1 In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, LICENSEE will pay BOARD the following:
a. a non-refundable license documentation fee in the amount of
$400,000, due and payable within 30 days of LICENSEE's receipt of a
fully executed AGREEMENT from BOARD;
b. a license reissue fee in the amount of $125,000, due and
payable on or before the first anniversary of the EFFECTIVE DATE;
c. an annual license reissue fee in the amount of $50,000, due
and payable on each anniversary of the EFFECTIVE DATE beginning on the
second anniversary;
d. a running royalty equal to 1.5% of NET SALES for LICENSED
PRODUCTS,
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e. all expenses incurred by UT SOUTHWESTERN in filing,
prosecuting, enforcing and maintaining PATENT RIGHTS, for so long as,
and in such countries as this AGREEMENT remains in effect. UT
SOUTHWESTERN will invoice LICENSEE within 30 days of the EFFECTIVE DATE
and on a quarterly basis thereafter, beginning for expenses incurred by
UT SOUTHWESTERN after the EFFECTIVE DATE. The invoiced amounts will be
due and Payable by LICENSEE within 30 days; and
f. a sublicense fee of fifty percent (50%) of all consideration,
other than research and development money, received by LICENSEE from
either (1) any sublicensee pursuant to Paragraph 4.3 herein above, or
(2) any assignee pursuant to Article 9 hereinbelow, including but not
limited to, royalties, up-front payments, marketing, distribution,
franchise, option. license, or documentation fees, bonus and milestone
payments and equity securities (to the extent that such consideration
is transferred to LICENSEE in exchange for the sublicense pursuant to
Paragraph 4.3 herein above or the assignment pursuant to Article 9
hereinbelow) within 30 days of LICENSEE's receipt of any such
consideration. The value of any equity securities will be calculated as
the average market value of the class of stock involved for 5
consecutive days preceding the transfer to LICENSEE. In cases where
consideration for the sublicense is met by payment to LICENSEE's of a
premium over the market value, BOARD will also share 50% of the premium
over market value paid to LICENSEE.
5.2 In the event of late payments to BOARD due under Article 5, a penalty
of 10% p.a. of the amount due will be assessed and due additionally from
LICENSEE for each such late payment.
5.3 During the term of this AGREEMENT and for 1 year thereafter, LICENSEE
agrees to keep complete and accurate records of its and its sublicensees' SALES
and NET SALES under the license granted in this AGREEMENT in sufficient detail
to enable the royalties payable hereunder to be determined. LICENSEE agrees to
permit BOARD or its representatives, at BOARD's expense and with 14 days written
notice, to periodically examine its books, ledgers, and records during regular
business hours for the purpose of and to the extent necessary to verify any
report required under this AGREEMENT. If the amounts due to BOARD are determined
to have been underpaid by more than 10%, LICENSEE will pay the cost of the
examination and all overdue amounts with accrued interest at 20% per annum.
5.4 Within 30 days after June 30 and December 31 of each year of the valid
term of this AGREEMENT, beginning immediately after the first SALE, LICENSEE
must deliver to BOARD a true and accurate written report, even if no payments
are due BOARD, giving the particulars of the business conducted by LICENSEE and
its sublicensee(s), if any exist, during the preceding 6 calendar months under
this AGREEMENT as are pertinent to calculating payments hereunder. This report
will include at least:
a. the total quantities of LICENSED PRODUCTS produced, and
b. the total SALES by country, product, quantity and extended
dollars SOLD, and the conversion factor used to convert to United
States dollars; and
c. the calculation of royalties thereon; and
d. the total royalties computed and due BOARD; and
e. all other amount due BOARD herein.
Simultaneously with the delivery of each report, LICENSEE must pay to BOARD
the amount, if any, due for the period of each report.
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5.5 On or before each anniversary of the EFFECTIVE DATE, irrespective of
having a first SALE or offer for SALE, LICENSEE must deliver to BOARD a written
progress report as to LICENSEE's (and any sublicensee's) efforts and
accomplishments during the preceding year toward diligently commercializing
LICENSED SUBJECT MATTER and LICENSEE's (and sublicensee's) commercialization
plans for the upcoming year.
5.6 All amounts payable here by LICENSEE must be paid in United States
dollars without deductions for taxes, assessments, fees, or charges of any kind.
Royalties accruing on SALES in countries other than the United States must be
paid in United States dollars in amounts based on the rate of exchange as quoted
in the Wall Street Journal (WSJ) as of the last business day of the reporting
period. If the WSJ does not publish any such rate, a comparable rate publication
will be agreed upon from time to time by the parties. and with respect to each
country for which such rate is not published by the WSJ or in a comparable
publication, the parties will use the prevailing rate for bank cable transfers
for such date, as quoted by leading United States banks in New York City dealing
in the foreign exchanae market. Check must be payable to UT SOUTHWESTERN and
sent to:
UT Southwestern Medical Center at Dallas
Office for Technology Development
0000 Xxxxx Xxxxx Xxxxxxxxx
Xxxxxx, Xxxxx 00000-0000
ATTN: Director for Technology Development
6. SPONSORED RESEARCH
LICENSEE and UT SOUTHWESTERN have entered into, concurrently with this
AGREEMENT, a SPONSORED RESEARCH AGREEMENT in the form attached hereto as
Exhibit 2.
7. TERM AND TEMINATION
7.1 The term of this AGREEMENT is from the EFFECTIVE DATE to the full end
of the term or terms for which PATENT RIGHTS have not expired or, if only
TECHNOLOGY RIGHTS are licensed and no PATENT RIGHTS are applicable, for a period
of 20 years.
7.2 Any time after the later of either 3 years from the EFFECTIVE DATE or 2
years following the termination of the SPONSORED RESEARCH AGREEMENT, BOARD and
UT SOUTHWESTERN have the right to terminate this license in any national
political jurisdiction to the extent it covers a LICENSED PRODUCT in such
national political jurisdiction if LICENSEE, within 90 days after receiving
written notice from UT SOUTHWESTERN of the intended termination, fails to
provide written evidence satisfactory to UT SOUTHWESTERN that LICENSEE or its
sublicensee(s) has commercialized or is actively and effectively attempting to
commercialize a licensed invention within such jurisdiction(s). The following
definitions apply to Article 7: (1) "commercialize" means having SALES of
LICENSED PRODUCTS within such jurisdiction; (2) "attemptincy to Commercialize"
means having SALES of LICENSED PRODUCTS or an effective, ongoing and active
research and development program directed toward obtaining regulatory approval
for LICENSED PRODUCTS within such jurisdiction, and/or a manufacturing,
importing, marketing or sales program, as appropriate, directed toward
production, importation and/or SALES of LICENSED PRODUCTS within or directed
toward
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such jurisdiction, and has provided plans acceptable to UT SOUTHWESTERN, in its
sole discretion, to commercialize licensed inventions within the jurisdiction(s)
that UT SOUTHWESTERN intends to terminate.
7.3 This AGREEMENT will earlier terminate:
a. automatically if LICENSEE becomes bankrupt or insolvent and/or
if the business of LICENSEE is placed in the hands of a receiver,
assignee, or trustee, whether by voluntary act of LICENSEE or
otherwise; or
b. upon 30 days written notice from BOARD if LICENSEE breaches or
defaults on its obligation to make payments (if any are due) or
reports, in accordance with the terms of Article 5 hereunder, unless,
before the end of the 30 day period, LICENSEE has cured the breach or
default and so notifies BOARD, stating the manner of the cure; or
c. upon 90 days written notice if LICENSEE breaches or defaults
on any other obligation under this AGREEMENT, unless, before the end of
the 90 day period, LICENSEE has cured the breach or default and so
notifies BOARD, stating the manner of the cure;or
d. at any time by mutual written agreement between LICENSEE, UT
SOUTHWESTERN and BOARD, upon 30 days written notice to all parties and
subject to any terms herein which survive termination; or
e. by BOARD under the provisions of Paragraph 7.2 if invoked; or
f. by LICENSEE upon 90 days written notice to BOARD provided that
all payments then due are made to BOARD at the time of notice and
subject to any terms herein which survive termination.
7.4 BOARD may terminate this AGREEMENT if LICENSEE terminates the SPONSORED
RESEARCH AGREEMENT before its initial 3 year term expires for any reason other
than material breach by UT SOUTHWESTERN and/or INVENTOR, unless LICENSEE pays
all remaining funds due under the terms of the SPONSORED RESEARCH AGREEMENT
within 30 days of written notice by BOARD of its intent to terminate this
AGREEMENT.
7.5 If this AGREEMENT is terminated for any cause:
a. nothing herein will be construed to release either party of
any obligation matured prior to the effective date of the termination;
b. after the effective date of the termination, LICENSEE will
provide BOARD with a written inventory of all LICENSED PRODUCTS in
process of manufacture, in use or in stock. LICENSEE may SELL any such
LICENSED PRODUCTS within the 90 day period following such termination
if it pays earned royalties thereon, and any other amount due pursuant
to the terms of Article 5; and
c. LICENSEE and BOARD will be bound by the provisions of Articles
11 (Indemnification), 12 (Use of Name), and 13 (Confidential
Information) of this AGREEMENT.
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8. INFRINGEMENT BY THIRD PARTIES
8.1 LICENSEE, at its expense, is entitled to enforce any patent exclusively
licensed hereunder against infringement by third parties and it is entitled to
retain recovery from such enforcement. LICENSEE must pay BOARD a royalty on any
monetary recovery if the monetary recovery is for damages or a reasonable
royalty in lieu thereof. If LICENSEE does not file suit against a substantial
infringer of a patent within 6 months of written notice by BOARD, then BOARD may
enforce any patent licensed hereunder on behalf of itself and LICENSEE, BOARD
retaining all recoveries from such enforcement and/or reducing the license
granted hereunder to non-exclusive to the extent it is directed to the
infringing product or technique.
8.2 In any infringement suit or dispute, the parties agree to cooperate
fully with each other, and hereby consent to being named as a party to the
extent necessary to maintain the suit. At the request and expense of the party
bringing suit, the other party will permit access to all relevant personnel,
records, papers, information, samples, specimens, etc., during regular business
hours.
9. ASSIGNMENT
Except in connection with a transfer by the sale of substantially all of
LICENSEE's assets to a third party or by a merger or other business combination,
which is considered to be a transfer by corporate reorganization and not a
transfer by assignment, this AGREEMENT may not be assigned by LICENSEE without
the prior written consent of BOARD, which will not be unreasonably withheld.
10. PATENT MARKING
LICENSEE must permanently and legibly xxxx all products, packaging and
documentation manufactured or SOLD by it under this AGREEMENT with a patent
notice as may be permitted or required under Xxxxx 00, Xxxxxx Xxxxxx Code.
11. INDEMNIFICATION
LICENSEE agrees to hold harmless and indemnify BOARD, INVENTOR, SYSTEM,UT
SOUTHWESTERN, its Regents, officers, employees and agents from and against any
claims, demands, or causes of action whatsoever (including without limitation
those arising on account of any injury or death of persons or damage to
property) caused by, or arising out of, or resulting from, the exercise or
practice of the license granted hereunder by LICENSEE, its AFFILIATES or their
officers, employees, agents or representatives.
12. USE OF NAME
LICENSEE may not use the name of UT SOUTHWESTERN, SYSTEM, INVENTOR or BOARD
without express written consent from UT SOUTHWESTERN and/or SYSTEM. BOARD may
not use the name of LICENSEE, its AFFILIATES and/or its sublicensee, or their
trademarks, without express written consent from LICENSEE, its AFFILIATES and/or
its sublicensee.
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13. CONFIDENTIAL INFORMATION
13.1 BOARD and LICENSEE each agree that all information forwarded to one by
the other for the purposes of this AGREEMENT (1) Is to be received in strict
confidence, (2) is to be used only for the purposes of this AGREEMENT, and (3)
is not to be disclosed by the recipient party, its agents or employees without
the prior written consent of the other party, except to the extent that the
recipient party can establish by competent written proof that such information:
a. was in the public domain at the time of disclosure;
b. later became part of the public domain through no act or
omission of the recipient party, its employees, agents, successors or
assigns;
c. was lawfully disclosed to the recipient party by a third party
having the right to disclose it;
d. was already known by the recipient party at the time of
disclosure;
e. was independently developed by the recipient; or
f. is required by law or regulation to be disclosed, provided
however, that the disclosing party shall first give the other party
written notice and adequate opportunity to object to such order for
disclosure or to request confidential treatment.
13.2 Information shall not be deemed to be available to the public or to be
in the recipient's possession merely because it:
a. includes information that falls within an area of general
knowledge available to the public or to the recipient (i.e., it does
not include the specific information provided by the other party); or
b. can be reconstructed in hindsight from a combination of
information from multiple sources that are available to the public or
to the recipient, if not one of those sources actually taught or
suggested the entire combination, together with its meaning and
importance.
13.3 Each party's obligation of confidence hereunder shall be fulfilled by
using at least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information. This
obligation shall exist while this AGREEMENT is in force and for a period of 5
years thereafter.
14. PATENTS AND INVENTIONS
If after consultation with LICENSEE, both parties agree that a patent
application should be filed for LICENSED SUBJECT MATTER, BOARD will prepare and
file the appropriate patent applications and such applications will be included
under PATENT RIGHTS (the parties agree to timely amend Exhibit I when new matter
is added under PATENT RIGHTS), and LICENSEE will pay all reasonable costs to
prepare, file, prosecute and maintain same. If LICENSEE notifies BOARD that it
does not intend to pay such costs, or if LICENSEE does not respond or make an
effort to agree with BOARD on the disposition of rights in the subject
invention, then BOARD may file an application at its own expense and LICENSEE
will have no rights to such invention. BOARD shall retain the sole right to
select the attorney responsible for diligently filing, prosecuting and
maintaining any patents based on technology
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invented at UT SOUTHWESTERN. BOARD and/or its attorney will promptly provide
LICENSEE a copy of any patent application for which LICENSEE has agreed to pay
the cost of filing, as well as copies of any documents received or filed with
the respective patent office during the prosecution thereof so that LICENSEE may
be currently and promptly informed and apprised of the continuing prosecution,
and may provide input and reasonable requests regarding such patent prosecution
sufficiently in advance of applicable deadlines for filing any required
response; provided, however, that if LICENSEE has not provided its input prior
to the final deadline for filing a response or the BOARD must otherwise act
unilaterally to preserve PATENT RIGHTS, then BOARD shall be free to do so
without awaiting input by LICENSEE.
15.GENERAL
15.1 This AGREEMENT and the SPONSORED RESEARCH AGREEMENT constitute the
entire and only agreement between the parties for LICENSED SUBJECT MATTER and
all other prior negotiations, representations, agreements, and understandings
are superseded hereby. No agreements altering or supplementing the terms hereof
may be made except by a written document signed by both parties.
15.2 Any notice required by this AGREEMENT must be given by facsimile
transmission confirmed by personal delivery (including delivery by reputable
messenger services such as Federal Express) or by prepaid, first class,
certified mail, return receipt requested, addressed in the case of BOARD and UT
SOUTHWESTERN to:
Board of Regents
The University of Texas System
000 Xxxx 0xx Xxxxxx
Xxxxxx, Xxxxx 00000
ATTENTION: Office of General Counsel
Phone: (000) 000-0000
Fax: (000) 000-0000
UT Southwestern
Xxxxx X. Xxxxxxxxxx, Ph.D.
Executive Vice President for Business Affairs
0000 Xxxxx Xxxxx Xxxxxxxxx
Xxxxxx, Xxxxx 00000-0000
Phone: (000) 000-0000
Fax: (000) 000-0000
UT Southwestern
Xxx Xxxxxxxx
Director, Technology Development
0000 Xxxxx Xxxxx Xxxxxxxxx
Xxxxxx, Xxxxx 00000-0000
Phone: (000) 000-0000
Fax: (000) 000-0000
or in the case of LICENSEE to:
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Collateral Therapeutics
Xxxxx Xxxxxx
Vice President, Administration
00000 Xx Xxxxxx Xxxx
Xxx Xxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
or other addresses as may be given from time to time under the terms of this
notice provision.
15.3 LICENSEE and BOARD must comply with all applicable national, state and
local laws and regulations in connection with its activities pursuant to this
AGREEMENT.
15.4 This AGREEMENT will be construed and enforced in accordance with the
laws of the United States of America and of the State of Texas (including
without limitation the applicable laws of jurisdiction and venue).
15.5 Failure of BOARD or LICENSEE to enforce a right under this AGREEMENT
will not act as a waiver of that right or the ability to later assert that right
relative to the particular situation involved.
15.6 Headings are included herein for convenience only and shall not be used
to construe this AGREEMENT.
15.7 If any part of this AGREEMENT is for any reason found to be
unenforceable, all other parts nevertheless remain enforceable.
THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK
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15.8 Neither party shall be held liable or responsible to the other party
nor be deemed to have defaulted under or breached this AGREEMENT for failure or
delay in fulfilling or performing any term of this AGREEMENT when such failure
or delay is caused by or results from causes beyond the reasonable control of
the affected party, including, without limitation, fire, floods, earthquakes,
natural disasters, embargoes, war, acts of war (whether war be declared or not),
insurrections, riots, civil commotions, strikes, lockouts or other labor
disturbances, acts of God or acts, omissions or delays in acting by any
governmental authority or the other party.
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
BOARD OF REGENTS OF THE COLLATERAL THERAPEUTICS, INC.
UNIVERSITY OF TEXAS SYSTEM
By /s/ Xxxxx X. Xxxxxxxxxx, Ph.D. By /s/ Xxxxx Xxxxxx
--------------------------------------------- ------------------------------
Xxxxx X. Xxxxxxxxxx, Ph.D. Xxxxx Xxxxxx
Executive Vice President for Business Affairs Vice President. Administration
UT Southwestern Medical Center at Dallas
Date 8-23-00 Date 8-15-00
----------------------- -----------------------
Approved as to Form:
By /s/ Xxxx Xxxx Xxxxxxx, Ph.D., X.X.
---------------------------------------------
Xxxx Xxxx Xxxxxxx, Ph.D., X.X.
Office of General Counsel
UT System
Date 21 August 2000
-----------------------
Approved at to Conent:
By /s/ Xxxxxx X. Xxxxx, M.D.
---------------------------------------------
Xxxxxx X. Xxxxx, M.D.
Vice President for Technology Development
UT Southwestern Medical Center at Dallas
Date 22 August 2000
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