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EXHIBIT 10.18
LICENSING AGREEMENT
"Agreement", effective as of January 1, 1995 ("Effective Date") by and
between CORIXA CORPORATION, a Delaware corporation with its principal place of
business at 000 Xxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxx, XX 00000-0000 (hereinafter
referred to as "Corixa"), and the XXXX-XXXXXX CANCER INSTITUTE, INC., a
Massachusetts non-profit corporation, with its principal place of business at
00 Xxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx, 00000 (hereinafter referred to as
"DFCI").
WITNESSETH:
WHEREAS, DFCI is the owner of certain rights in technology as later
defined herein, subject only to a royalty-free, nonexclusive license heretofore
granted to the United States Government; and
WHEREAS, DFCI desires to have such rights utilized to promote the
public interest by granting a license hereunder;
WHEREAS, Corixa has represented to DFCI that Corixa and/or its
officers and employees are experienced in the development, production,
marketing and sale of products similar to the technology which is the subject
of this Agreement and has the financial capacity and the strategic commitment
to facilitate the transfer of such technology for the public interest; and
WHEREAS, Corixa desires to obtain a license to said rights upon the
terms and conditions hereinafter set forth;
NOW THEREFORE, in consideration of the mutual covenants herein
contained and intending to be legally bound hereby, the parties hereto agree as
follows:
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ARTICLE I - Definitions
1.1 "Invention" shall mean cytotoxic lymphocyte stimulation by MHC1
antigen presentation, together with any Technical Information as
herein defined.
1.2 "Technical Information" shall mean inventions (whether or not
patentable), trade secrets, processes, formulas and know-how related
to the subject matter of the Patent Rights that are owned and used by
DFCI as of the date of this Agreement or hereafter. All Technical
Information shall be communicated to Corixa in writing.
1.3 "Patent Rights" shall mean the following:
(a) the United States patent applications listed in Appendix A
and corresponding foreign patent applications;
(b) United States and foreign patents issued from the applications
listed in Appendix A and from divisionals and continuations of
these applications;
(c) claims of U.S. continuation-in-part applications, and
corresponding foreign patent applications, and of the
resulting patents, which are directed to subject matter
specifically described in the U.S. and foreign applications
listed in Appendix A;
(d) claims of all foreign patent applications, and of the
resulting patents, which are directed to subject matter
specifically described in the United States patents and/or
patent applications described in (a), (b) or (c) above.
1.4 "Licensed Products" shall mean any product which, except for the
license granted herein, would otherwise infringe an issued, unexpired
claim in the Patent Rights or a pending claim or equivalent thereof
pending for less than [***] and/or which incorporates or utilizes
the Technical Information.
1.5 "Licensed Process" shall mean any process which is covered in whole or
in part by an issued, unexpired claim or a pending claim in the Patent
Rights and/or which incorporates or utilizes the Technical
Information.
1.6 "Field of Use" shall mean all uses.
1.7 "Territory" shall mean worldwide.
1.8 "Net Sales" shall mean the gross income derived by Corixa, its
Affiliates or its Sublicensees from the sales
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of Licensed Products to independent third parties less:
(a) Transportation charges or allowances actually paid or granted,
including insurance with respect thereto;
(b) Trade, quantity, cash or other discounts and brokers' or
agents' commissions, if any, allowed and paid by Corixa, its
Affiliates or its Sublicencees to independent parties in
arms-length transactions;
(c) Credits or allowances made or given on account of rejects,
returns or retroactive price reductions for any amount not
collected;
(d) Any tax or governmental charge directly on sale, value added
or transportation, use or delivery of products paid by Corixa,
its Affiliates or its Sublicencees and not recovered from the
purchaser.
Licensed Products shall be considered "sold" when payment is actually
received from purchaser.
1.9 "Sublicensee" shall mean any corporation, partnership or business
organization which is not an affiliate of Corixa but to whom Corixa
transfers know-how, rights or products to enable said party to sell
Licensed Products.
1.10 "Affiliate" shall mean any corporation or other business entity
controlled by, controlling, or under common control with Corixa. For
this purpose "control" means direct or indirect beneficial ownership
of at least fifty percent (50%) interest in the income or stock of
such corporation or other business.
ARTICLE II - Grant
2.1 DFCI hereby grants to Corixa and its Affiliates if any, subject to all
the terms and conditions of this Agreement including the nonexclusive
license heretofore granted to the United States Government, the
exclusive right and license to make, have made, use and sell the
Licensed Products and to practice the Licensed Process in the
Territory for the Field of Use for the term of this Agreement unless
this grant is sooner terminated according to the terms hereof.
2.2 Notwithstanding the provision of Section 2.1, DFCI shall retain the
right to make, use and practice the technology encompassed by Patent
Rights for its own non-commercial, basic research purposes. DFCI or,
at its option, Corixa on behalf of DFCI, may, subject to DFCI
providing prior written notice to Corixa, convey to other
organizations at no charge other than shipping fees research reagents
inorporating the technology encompassed by Patent Rights which have
been the subject of publications in the scientific literature, solely
for use in non-commercial, basic research. Said transfers shall be
subject to a material transfer agreement substantially in the form
contained in Appendix B hereto.
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2.3 Corixa agrees that Licensed Products sold in the United States shall
be manufactured substantially in the United States. This requirement
shall be included in any sublicense agreements.
2.4(a) Corixa shall have the right, subject to the terms of this Section, to
enter into sublicensing agreements with any other entity other than an
Affiliate for the rights, privileges and licenses granted hereunder at
royalty rates not less than those delineated in Section 4.3. DFCI
shall be informed by written notice of the identity of any prospective
Sublicensee and shall have the right to approve of said Sublicensee,
which approval shall not be unreasonably withheld. If DFCI does not
object in writing within twenty (20) days of said written notice,
approval shall be presumed conclusively to have been given.
(b) Corixa agrees that any sublicenses granted by it shall provide that
the obligations to DFCI contained in this Agreement shall be binding
upon the Sublicensee. Corixa further agrees to attach a copy of this
Agreement to sublicense agreements.
(c) With respect to sublicenses granted under this Section, Corixa shall
pay to DFCI [***] of all fees and lump sum payments, including, but not
limited to, technology access fees and license issue fees, but
excluding investments in Corixa equity, milestone payments and research
funding payments, provided, however, that if no patent within the
Patent Rights is issued within [***] of the date hereof, any payments
due to DFCI pursuant to this paragraph 2.4 (c) shall be reduced by
[***] until any such issuance occurs.
(d) From any royalties received from its Sublicensee, Corixa shall pay
DFCI an amount equivalent to the sum DFCI would otherwise have
received in royalties if Licensed Products were sold by Corixa
directly. Recording and payment of such royalties shall be made in
accordance with the provisions of Article IV.
(e) Corixa agrees to forward to DFCI a copy of any and all fully executed
sublicense agreements, and further agrees to forward to DFCI annually
a copy of such reports received by Corixa from its Sublicensee during
the preceding twelve (12) month period under the sublicenses as shall
be pertinent to a royalty accounting under said sublicense agreements.
[f) Corixa hereby agrees that every sublicensing agreement to which it
shall be a party and which shall relate to the rights, privileges and
license granted hereunder shall contain a statement setting forth the
date upon which Corixa's exclusive rights, privileges and license
hereunder shall terminate.
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ARTICLE III - Due Diligence
3.1 Corixa shall use its best commercial efforts to bring one or more
Licensed Products to market through a thorough, diligent program for
exploitation of the Patent Rights and to continue active, diligent
marketing efforts for such Licensed Product(s) throughout the life of
this Agreement; provided, however, that such efforts shall only be
required to the extent that the applicable Licensed Product(s)
warrants such efforts in light of then prevailing market conditions,
including the existence of new or more competitive technologies. In
addition, within ninety days (90) after the Effective Date and
annually thereafter, Corixa will submit a project development plan
showing the time, money and personnel it plans to devote to the
commercialization of Licensed Products in the next twelve months.
DFCI and Corixa will mutually agree to this project development plan.
As part of its best efforts, Corixa will also:
[***] By [***]
[***] By [***]
[***] By [***]
File IND By [***]
3.2 Corixa's material failure to perform its obligations under Section 3.1
shall be grounds for DFCI to terminate pursuant to Section 7.5 of this
Agreement.
ARTICLE IV - Payments
4.1 In partial consideration for the license granted hereunder and upon
execution of this Agreement, Corixa agrees to pay DFCI [***] promptly
after the Effective Date to offset the legal and administrative
expenses arising from establishing a proprietary position in the
Invention and facilitating the transfer of the Invention to the
commercial marketplace. Corixa further agrees to issue to DFCI fifty
thousand (50,000) shares of common stock, to be conveyed promptly after
the Effective Date of this Agreement, and an additional fifty thousand
(50,000) shares of common stock, to be conveyed promptly after receipt
of the issue date of the first patent issued in the U.S., Europe or
Japan containing claims substantially equivalent to independent claims
present in the US application listed in Appendix A. Such common stock
shall be considered upfront royalties.
4.2 Corixa agrees to make the following payments within forty-five (45)
days of the occurrence of the
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following events
Initiation of Phase I Clinical Trials $[***]
Initiation of Phase III Clinical Trial $[***]
The first product approval in [***] $[***]
Such payments are to be construed as additional upfront royalties and
are not offsettable against earned royalties.
4.3 In partial consideration of the license to the Technical Information
and Patent Rights granted hereunder by DFCI to Corixa, Corixa and/or
any Sublicensee(s) shall pay royalties on a country-by-country basis
during the term of this Agreement to DFCI according to the following
schedule:
(a) [***] on the sale of Licensed Products, the manufacture, sale
or use of which, except for the license granted herein, would
otherwise infringe an issued, unexpired claim within the Patent
Rights.
(b) [***] on the sale of Licensed Products, the manufacture, use or
sale of which utilize only technical information.
4.4 Corixa shall pay a minimum royalty of [***]; provided, however, that
such minimum royalty for a given year shall be creditable against any
royalties subsequently due during said year under Section 4.3. Waiver
of any minimum payment by DFCI shall not be construed as waiver of any
such subsequent payment.
4.5 The parties acknowledge that Corixa will require licenses to one or
more additional technologies to sell Licensed Products and that to
acquire such licenses Corixa may be required to make additional royalty
payments to third parties. If it is necessary for Corixa to obtain
licenses from third parties such that cumulative royalties on Net Sales
of any particular Licensed Product are greater than or equal to [***]
of Net Sales of such Licensed Product, then the percentage royalty
rate on Net Sales of such Licensed Product under Section 4.3 shall be
reduced on a pro rata basis along with royalties to be paid to such
third parties with respect to such Licensed Product to the extent
necessary so that cumulative royalties on Net Sales of such Licensed
Product are reduced to less than [***] of Net Sales of such Licensed
Product; provided, however, that in no event shall royalties due DFCI
be less than [***] of Net Sales.
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4.6 Payment of royalties specified in Section 4.3 shall be made by Corixa
to DFCI within forty-five (45) days after March 31, June 30, September
30 and December 31 each year during the term of this Agreement
covering the quantity of Licensed Products sold by Corixa during the
preceding calendar quarter. The last such payment shall be made
within forty-five (45) days after termination of this Agreement.
4.7 All payments to be made under this Article shall be paid in United
States dollars in Boston, Massachusetts, or at such other place and in
such other way, as DFCI may reasonably designate, without deduction of
exchange, collection or other charges.
4.8 Only a single royalty shall be paid, either by Corixa or a Sublicensee
as appropriate, with respect to any Licensed Product, either under
Section 4.3(a) or 4.3(b) irrespective of the number of claims of
Patent Rights or Technical Information utilized.
4.9 In the event that any payment due hereunder is not made when due, the
payment shall accrue interest beginning on the first day following the
due date as herein specified, calculated at the annual rate of the sum
of (a) [***] plus (b), the prime interest rate quoted by the Bank of
Boston on the date said payment is due, the interest being compounded
on the last day of each calendar quarter, provided that in no event
shall said annual rate exceed the maximum legal interest rate in
Massachusetts. The payment of such interest shall not foreclose DFCI
from exercising any other rights it may have as a consequence of the
lateness of any payment.
ARTICLE V - Reports and Records
5.1 Corixa shall keep true books of account containing an accurate record
of all data necessary for the determination of the amounts payable
under Article IV hereof. Said records shall be kept at Corixa's
principal place of business or the principal place of business of the
appropriate division of Corixa to which this Agreement relates. Said
records shall be available for inspection by a certified public
accountant selected by DFCI and reasonably acceptable to Corixa during
regular business hours for five (5) years following the end of the
calendar year to which they pertain in order for DFCI to ascertain the
correctness of any report and/or payment made under this Agreement.
The provision of this Section 5.1 shall survive termination of this
Agreement.
5.2 Within forty-five (45) days after March 31, June 30, September 30 and
December 31, of each year in which this Agreement is in effect, Corixa
shall deliver to DFCI full, true and accurate reports of its
activities and those of its Sublicensee(s), if any, relating to this
Agreement during the preceding three month period.
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These reports shall include at least the following:
(a) Number of Licensed Products manufactured and sold;
(b) Total xxxxxxxx for Licensed Products sold; where applicable,
(c) An accounting of all Licensed Processes used or sold;
(d) Deductions applicable to a determination of Net Sales;
(e) Total royalties due.
5.3 With each such report, Corixa shall pay to DFCI the royalties due and
payable as provided for in Section 4.6. If no royalties are due,
Corixa shall so report.
ARTICLE VI - Patent Prosecution and Infringement
6.1 DFCI shall apply for, seek prompt issuance of, and maintain during the
term of this Agreement any Patent Rights in the United States and in
foreign countries. The prosecution, filing and maintenance of all
patents shall be the primary responsibility of DFCI, provided,
however, that Corixa shall have reasonable opportunity to advise DFCI
on such matters, such opportunity toinclude the right to review all
documents intended for submission in the examination of any
application within the Patent Rights, including patent prosecution in
foreign countries. If DFCI is unable or unwilling to do so, DFCI
shall provide appropriate notice to Corixa, following which Corixa may
file or prosecute any such patent applications or continue maintenance
of the patents licensed hereunder.
6.2 Payment of all fees and costs relating to the filing, prosecution and
maintenance of all patents shall be the responsibility of Corixa,
whether such fees and costs were incurred before, as provided for in
Section 4.1, or after the date of this Agreement. As of the Effective
Date, the total expenses incurred by DFCI were [***], as delineated
in Section 4.1.
6.3 (a) If at any time during the term of this Agreement, Corixa furnishes to
DFCI reasonably convincing written evidence of an infringement of a
patent included in the Patent Rights covering the Invention which
materially adversely affects the commercial operations of Corixa under
the license granted hereunder, and DFCI shall within three (3) months
after receipt of such evidence fail to cause such infringement to
terminate or to bring a suit or action to compel termination, then in
each country in which an infringement is occurring, payment of
royalties and minimum amounts which are earned under Article IV hereof
shall be waived as long as such infringement continues; provided,
however, that such royalties and minimum amounts shall not be so
waived as long as at least one suit or action is being prosecuted by
DFCI for infringement of a patent covering the Invention and Corixa is
not enjoined from commercial sales of
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Licensed Products. In no event shall such waiver of royalties and
minimum amounts exceed [***] of the royalties and minimum amounts
payable hereunder.
(b) If after said three (3) months, DFCI fails to cause such infringement
to terminate or to bring a suit or action to compel termination,
Corixa shall have the right, but not the obligation, to bring such
suit or action to compel termination and shall have the right for such
purpose to join DFCI as a party plaintiff at Corixa's expense. DFCI
independently shall have the right to join any such suit or action
brought by Corixa and, in such event, shall pay one-half of the cost
of such suit or action from the date of joining. No settlement,
consent judgment or other voluntary final disposition of the suit may
be entered into without the consent of DFCI, which consent shall not
unreasonably be withheld.
(c) Any damages recovered by such suit or action shall be first used to
reimburse each party hereto for the cost of such suit or action
(including attorney's fees) actually paid by each party hereto as the
case may be, then to reimburse DFCI for any royalties and minimum
royalties deferred under this Section 6.3 and of the residue, if any,
[***] shall go to DFCI and [***] shall go to Corixa.
6.4 In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the Patent Rights shall be brought by a
third party, DFCI, at its sole option, shall have the right, within
thirty (30) days after commencement of such action, to takeover the
entire defense of the action, provided Corixa is allowed to consult
during such actions.
6.5 In any infringement suit as either party may institute to enforce the
Patent Rights pursuant to this Agreement, the other party hereto
shall, at the request and expense of the party initiating such suit,
cooperate in all respects and, to the extent possible, have its
employees testify when requested and make available relevant records,
papers, information, samples and the like.
ARTICLE VII - Term and Termination
7.1 Unless earlier terminated as hereinafter provided, this Agreement
shall remain as an exclusive Agreement and in full force and effect
for the life of the last to expire patent issued under the Patent
Rights.
7.2 If Corixa shall cease to carry on its business with respect to
Licensed Products, this Agreement shall terminate upon notice by DFCI.
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7.3 Should Corixa fail to pay DFCI such royalties as are due and payable
hereunder, DFCI shall have the right to terminate this Agreement
ninety (90) days after providing Corixa written notice of Corixa's
failure to pay such royalties, unless Corixa shall pay DFCI within
such notice period, all such royalties and interest that are due and
payable. Upon the expiration of the ninety (90) day period, if Corixa
shall not have paid all such royalties and interest due and payable,
DFCI, at its sole option, may immediately terminate this Agreement and
all rights, privileges and license hereunder granted.
7.4 Corixa shall have the right to terminate this Agreement at any time
upon six (6) months written notice to DFCI, and upon payment of all
amounts due DFCI through the effective date of termination.
7.5 Upon any material breach or material default of this Agreement by
Corixa, other than those delineated in Sections 7.2 and 7.3 which
shall always take precedence in that order over any material breach or
default referred to in this Section 7.5, DFCI shall have the right to
terminate this Agreement and the rights, privileges and license
hereunder granted upon ninety (90) days written notice to Corixa.
Such termination shall become effective immediately at the conclusion
of such notice period unless Corixa shall have cured any such breach
or default prior to the expiration of the ninety (90) day period.
7.6 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that
matured prior to the effective date of such termination. Corixa and
any Sublicensee thereof may, after the effective date of such
termination, sell all Licensed Products which are in inventory at the
time of termination, and complete and sell Licensed Products which
Corixa can clearly demonstrate were in the process of manufacture at
the time of such termination, provided that Corixa shall pay to DFCI
the royalties thereon as required by Article IV of this Agreement and
shall submit the reports required by Article V hereof on the sales of
Licensed Products.
7.7 Upon termination of this Agreement for any reason, any sublicense not
then in default shall continue in full force and effect except that
DFCI shall be substituted in place of the sublicensor.
ARTICLE VIII - Indemnification and Insurance
8.1 Corixa shall indemnify, defend and hold harmless DFCI, Xxxx-Xxxxxx
Inc., the parent corporation of DFCI, and their respective trustees,
officers, medical and professional staff, employees, and agents and
their respective successors, heirs and assigns (the "Indemnitees"),
against any liability, damage, loss or expense (including reasonable
attorneys' fees and expenses of litigation) incurred by or imposed
upon the Indemnitees, or any one of them, in connection with any
claims, suits, actions, demands or judgments (a)
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arising out of the design, production, manufacture, sale, use in
commerce, lease, or promotion by Corixa or by a licensee, affiliate
or agent of Corixa, or any product, process or service relating to,
or developed pursuant to, this Agreement or (b) arising out of any
other activities to be carried out pursuant to this Agreement.
8.2 Corixa's indemnification under 8.1 (a) shall apply to any liability,
damage, loss or expense whether or not it is attributable to the
negligent activities of the Indemnitees. Corixa's indemnification
under 8.1 (b) shall not apply to any liability, damage, loss or
expense to the extent that it is attributable to (i) the negligent
activities of the Indemnitees, or (ii) the intentional wrongdoing or
intentional misconduct of the Indemnitees.
8.3 Corixa agrees, at its own expense, to provide attorneys reasonably
acceptable to DFCI to defend against any actions brought or filed
against any party indemnified hereunder with respect to the subject of
indemnity contained herein, whether or not such actions are rightfully
brought.
8.4 At such time as any product, process or service relating to, or
developed pursuant to, this Agreement is being commercially
distributed or sold (other than for the purpose of obtaining
regulatory approvals) by Corixa or by a licensee, affiliate or agent
of Corixa, Corixa shall, at its sole cost and expense, procure and
maintain policies of comprehensive general liability insurance in
amounts not less than [***] per incident and [***] annual
aggregate and naming the Indemnitees as additional insureds. Such
comprehensive general liability insurance shall provide (a) product
liability coverage and (b) broad form contractual liability coverage
for Corixa's indemnification under Sections 8.1 and 8.3 of this
Agreement. If Corixa elects to self-insure all or part of the limits
described above (including deductibles or retentions which are in
excess of [***] annual aggregate), such self-insurance program must
be acceptable to the DFCI and the DFCI's associated Risk Management
Foundation. The minimum amounts of insurance coverage required under
these provisions shall not be construed to create a limit of Corixa's
liability with respect to its indemnification obligation under
Sections 8.1 through 8.3 of this Agreement.
8.5 Corixa shall provide DFCI with written evidence of such insurance upon
request of DFCI. Corixa shall provide DFCI with written notice at
least fifteen (15) days prior to the cancellation, non-renewal or
material change in such insurance; if Corixa does not obtain
replacement insurance providing comparable coverage, including self
insurance, within such fifteen (15) day period, DFCI shall have the
right to terminate this Agreement effective at the end of such fifteen
(15) day period without any notice or additional waiting periods.
8.6 Corixa shall maintain such comprehensive general liability insurance
beyond the expiration or termination
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of this Agreement during (a) the period that any product, process, or
service, relating to, or developed pursuant to, this Agreement is
being commercially distributed or sold (other than for the purpose of
obtaining regulatory approvals) by Corixa or by a licensee, affiliate
or agent of Corixa and (b) a reasonable period after the period
referred to in 8.6 (a) above which in no event shall be less than
[***].
8.7 In the event any such action is commenced or claim made or threatened
against DFCI or other Indemnitees as to which Corixa is obligated to
indemnify it (them) or hold it (them) harmless, DFCI or the other
Indemnitees shall promptly notify Corixa of such event. Corixa shall
assume the defense of, and may settle, that part of any such claim or
action commenced or made against DFCI (or other Indemnitees) which
relates to Corixa's indemnification and Corixa may take such other
steps as may be necessary to protect itself. Corixa shall not be
liable to DFCI or other Indemnitees on account of any settlement of
any such claim or litigation affected without Corixa's consent. The
right of Corixa to assume the defense of any action shall be limited
to that part of the action commenced against DFCI and/or Indemnitees
which relates to Corixa's obligation of indemnification and holding
harmless.
8.8 This Article VIII shall survive expiration or termination of this
Agreement.
ARTICLE IX - Disclaimer of Warranties
9.1 DFCI MAKES NO WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR OF FITNESS
FOR A PARTICULAR PURPOSE WITH RESPECT TO ANY PATENT, TRADEMARK,
SOFTWARE, NON-PUBLIC OR OTHER INFORMATION, OR TANGIBLE RESEARCH
PROPERTY, LICENSED OR OTHERWISE PROVIDED TO CORIXA HEREUNDER AND
HEREBY DISCLAIMS THE SAME.
9.2 DFCI DOES NOT WARRANT THE VALIDITY OF THE PATENT RIGHTS LICENSED
HEREUNDER AND MAKES NO REPRESENTATION WHATSOEVER WITH REGARD TO THE
SCOPE OF THE LICENSED PATENT RIGHTS OR THAT SUCH PATENT RIGHTS MAY BE
EXPLOITED BY LICENSEE, AFFILIATE OR SUBLICENSEE WITHOUT INFRINGING
OTHER PATENTS. IF BIOLOGICAL MATERIALS ARE LICENSED HEREUNDER, DFCI
MAKES NO REPRESENTATION THAT SUCH MATERIALS OR THE METHODS USED IN
MAKING OR USING SUCH MATERIALS ARE FREE FROM LIABILITY FOR PATENT
INFRINGEMENT.
ARTICLE X - Notices
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10.1 Reports, notices and other communications from Corixa to DFCI as
provided hereunder shall be sent to:
Xx. Xxxxxxx X. Xxxxxxx
Director for Research
Xxxx-Xxxxxx Cancer Institute
00 Xxxxxx Xxxxxx
Xxxxxx, XX 00000
or other individuals or addresses as shall hereafter be furnished by
written notice to Corixa.
10.2 Reports, notices and other communications from DFCI to Corixa as
provided hereunder shall be sent to:
Xxxx XxXxxx
Chief Operating Officer
Corixa Corporation
0000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxx, XX 00000
or other individuals or addresses as shall hereafter be furnished by
written notice to DFCI.
ARTICLE XI - Arbitration
11.1 Any controversy or claim arising out of, or relating to, any
provisions of this Agreement or the breach thereof which cannot
otherwise be resolved by good faith negotiations, or by Alternate
Dispute Resolution mechanisms other than arbitration which may be
mutually agreed to, between the parties shall be resolved by final and
binding arbitration in Boston, Massachusetts under the rules of the
American Arbitration Association, or the Patent Arbitration Rules if
applicable, then obtaining.
The arbitration shall be subject to the following terms:
a) The number of arbitrators shall be one (1).
b) The arbitrator shall be an independent, impartial third party
having no direct or indirect personal or financial
relationship to any of the parties to the dispute, who has
agreed to accept the appointment as arbitrator on the terms
set out in this Section 11.1.
c) The arbitrator shall be an active or retired attorney, law
professor, or judicial officer with at least five (5) years
experience in general commercial matters and a familiarity
with the laws governing proprietary rights in intellectual
property.
d) The arbitrator shall be selected as follows:
(i) Each party shall submit a description of the matter
to be arbitrated to the American Arbitration
Association at its Regional Office in Boston,
Massachusetts. Said Association shall submit to the
parties a list of the arbitrators available to
arbitrate any dispute between them. Thereafter, each
party shall select, in numerical order, those
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persons on said list acceptable as arbitrators and
return the same to the Association. The first
arbitrator acceptable to both parties shall be deemed
the selected arbitrator with respect to the dispute
then at issue under this Agreement. In the event of
a failure to select a mutually agreeable arbitrator,
the Association shall be requested to submit as many
subsequent lists of arbitrators as shall be necessary
to effect a mutual selection.
(ii) If the method of selection set out in paragraph d)(i)
fails for any reason, then either party may petition
any state or federal court in Massachusetts having
jurisdiction for appointment of the arbitrator in
accordance with applicable law, provided that the
arbitrator must satisfy the requirements of b) and c)
above.
e) The arbitrator shall announce the award in writing accompanied
by written findings explaining the facts determined in support
of the award, and any relevant conclusions of law.
f) Unless otherwise provided in this Section 11.1 or extended by
agreement of the parties, each party shall submit an initial
request for designation of an arbitrator within thirty (30)
days after any request for arbitration, the dispute shall be
submitted to the arbitrator within ninety (90) days after the
arbitrator is selected, and a decision shall be rendered
within thirty (30) days after the dispute is submitted.
g) The fees of the arbitrator and any other costs and fees
associated with the arbitration shall be paid in accordance
with the decision of the arbitrator.
h) The arbitrator 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 Commonwealth of
Massachusetts or in the United States District Court for the
District of Massachusetts, to whose jurisdiction for such
purposes DFCI and Corixa each hereby irrevocably consents and
submits.
11.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations
existing under this Agreement.
ARTICLE XII - Restrictions on Use of Names
12. Corixa shall not use the names of DFCI, its related entities and its
employees, or any adaptations thereof, in any advertising, promotional
or sales literature, or in any securities reports required by the
Securities and Exchange Commission, without the prior written consent
of DFCI in each case; provided however, that Corixa (a) may refer to
publications by employees of DFCI in the scientific literature or (b)
may state that a license from DFCI has been granted as herein
provided.
Corixa Exclusive License, Execution Copy - - Page 14 of 16 -
15
ARTICLE XIII - Independent Contractor
13. For the purpose of this Agreement and all services to be provided
hereunder, both parties shall be, and shall be deemed to be,
independent contractors and not agents or employees of the other.
Neither party shall have authority to make any statements,
representations or commitments of any kind, or to take any action,
that will be binding on the other party.
ARTICLE XIV - Severability
14. If any one or more of the provisions of this Agreement shall be held
to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this Agreement shall not
in any way be affected or impaired thereby.
ARTICLE XV - Non-assignability
15. Neither this Agreement nor any part hereof shall be assignable by
either party without the express written consent of the other. Any
attempted assignment without such consent shall be void, except that
Corixa may assign this agreement to a third party which acquires its
entire business interest in the subject matter hereof without DFCI's
prior written consent.
ARTICLE XVI - Entire Agreement
16. This instrument contains the entire Agreement between the parties
hereto. No verbal agreement, conversation or representation between
any officers, agents, or employees of the parties hereto either before
or after the execution of this Agreement shall affect or modify any of
the terms or obligations herein contained.
ARTICLE XVII - Modifications in Writing
17. No change, modification, extension, termination or waiver of this
Agreement, or any of the provisions herein contained, shall be valid
unless made in writing and signed by a duly authorized representative
of each
Corixa Exclusive License, Execution Copy - - Page 15 of 16 -
16
party.
ARTICLE XVIII - Governing Law
18. The validity and interpretation of this Agreement and the legal
relations of the parties to it shall be governed by the laws of the
Commonwealth of Massachusetts.
ARTICLE XIX - Captions
19. The captions are provided for convenience and are not to be used in
construing this Agreement.
ARTICLE XX - Construction
20. The parties agree that they have participated equally in the formation
of this Agreement and that the language herein should not be
presumptively construed against either of them.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed in quadruplicate by their duly authorized representatives as of the
date first above written.
XXXX-XXXXXX CANCER INSTITUTE (DFCI) CORIXA CORPORATION (Corixa)
By: /s/ XXXXXXX X. XXXXXXX By: /s/ XXXX XXXXXX
------------------------- ------------------------
Xxxxxxx X. Xxxxxxx, Ph.D. Xxxx XxXxxx
Title: Director for Research Title: Chief Operating Officer
WITNESSED BY: WITNESSED BY:
/s/ Xxxxxx X. Xxxxx /s/ Xxxx Xxxxxx
------------------------ ------------------------
Corixa Exclusive License, Execution Copy - - Page 16 of 16 -
17
Appendix A
Intellectual Property Licensed Hereunder
[***]
-i-
18
Appendix B
MATERIAL TRANSFER AGREEMENT
The ________________________ of ______________________ ("Recipient")
and its investigator(s) Dr. ________________________. ("Investigator"), in
consideration of the receipt of biological materials from Dr._
______________________ of the Xxxx-Xxxxxx Cancer Institute, of Boston, MA
("DFCI"), hereby agree to the following terms and conditions:
1. The biological materials to be provided to Recipient and
Investigator are: ____________________ (the "Research Material"). For purposes
of this Agreement, Research Material shall also include progeny and mutations
of the Research Material, unmodified derivatives thereof and any know-how or
data provided with the Research Material.
2. The Research Material shall be used exclusively for
non-commercial research by Recipient and Investigator to study
______________________ (the "Research Program"). The Research Material will
not be used in connection with any diagnosis, treatment or any other activity
involving humans or for any use not directly related to the Research Program.
Use will be in compliance with all applicable Federal, State and local laws and
regulations, including, but not limited to, animal welfare laws and
regulations. In addition, the Research Material may only be possessed or used
by employees of the Recipient who are under the control and supervision of the
Investigator and bound to the terms of this Agreement, and may not be provided
to any other individual, entity or institution, including institutions and
entities affiliated or under contract with the Recipient without the prior
written consent of DFCI. DFCI may withhold consent for any reason.
3. The Research Material is the property of DFCI. It is agreed
that the transfer of the Research Material hereunder shall not constitute a
sale of Research Material or a grant, option or license of any patent or other
rights, other than as provided in Section 4 below. DFCI shall retain and have
all right, title and interest in the Research Material. In addition, Recipient
and Investigator and DFCI agree that ownership of modifications, derivatives,
improvements, results, techniques, inventions, discoveries, ideas, processes,
know-how, patents, patent applications, copyrights, trade secrets and other
proprietary information and rights (collectively, "Intellectual Property")
arising out of or in connection with the Research Material or Recipient's
and/or Investigator's use of the Research Material will be negotiated in. good
faith by the parties based upon (a) their relative contribution to the creation
of said Intellectual property and (b) any applicable laws and regulations
relating to inventions and inventorship. Recipient and Investigator will not
disclose any Intellectual Property of DFCI without the consent of DFCI, and any
disclosure of Intellectual Property developed during the Research Program will
be made only after first disclosing it to DFCI in a timely manner.
4. Recipient and Investigator shall not use or otherwise
distribute Research Material to a third party for any purpose. This Agreement
and the resulting transfer of Research Material constitute a non-exclusive
license to use the Research Material solely for the basic research or other
not-for-profit purposes described herein. Recipient and Investigator shall not
use Research Material for any products or processes for profit-making or
commercial purposes or for the benefit of any third party.
19
5. This Agreement is not assignable.
6. DFCI has, or may, make Research Material available to others,
both profit and non-profit.
7. Recipient and Investigator agree to provide DFCI with a copy
of any publications which contain experimental results obtained from the use of
the Research Material. Recipient and Investigator will acknowledge DFCI as the
source of the Research Material in all publications containing any data or
information about the Research Material unless DFCI indicates otherwise after
consultation.
8. Recipient and Investigator will arrange the return to DFCI or
disposal of any unused Research Material whenever investigation for which it
has been supplied discontinues or is terminated, or upon the request of DFCI.
In the event Investigator(s) transfer to another institution, a new Material
Transfer Agreement is to be executed.
9. THE RESEARCH MATERIAL IS UNTESTED AND HAS BEEN GIVEN TO
RECIPIENT AT NO COST. SUCH RESEARCH MATERIAL IS PROVIDED "AS IS" WITH NO
WARRANTIES EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, WARANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NON- INFRINGEMENT.
RECIPIENT AND INVESTIGATOR, AS APPLICABLE, BEAR ALL RISK RELATING TO THE
RESEARCH MATERLAL OR ITS USE AND DFCI WILL NOT BE LIABLE UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR ANY DAMAGES INCLUDING, WITHOUT
LIMITATION, DIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR COST OF PROCUREMENT
OF SUBSTITUTE GOODS, SERVICES OR TECHNOLOGY. DFCI MAKES NO REPRESENTATION AND
PROVIDES NO WARRANT THAT THE USE OF THE RESEARCH MATERIAL WILL NOT INFRINGE ANY
PATENT OR OT'HER PROPRIETARY RIGHT.
10. To the extent permitted by law, Recipient agrees to
indemnify, defend and hold harmless DFCI and its trustees, officers, staff,
representatives and agents against all damages, expenses (including without
limitation legal expenses), claims, demands, suits or other actions arising
from Recipient and Investigator's acceptance, use and disposal of the Research
Material and their progeny, mutations or derivatives.
20
AGREED AND ACCEPTED:
RECIPIENT
By ______________________________________
Title ______________________________________
Date ______________________________________
INVESTIGATOR
By ______________________________________
Title ______________________________________
Date ______________________________________
XXXX-XXXXXX CANCER INSTITUTE
By ______________________________________
Xxxxxx X. Xxxxxxx, Ph.D., Director,
Office of Technology Transfer
Date ______________________________________
