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EXHIBIT 10.16
LICENSE AGREEMENT
(Therapeutic Field)
THIS LICENSE AGREEMENT (this "Agreement"), effective as of _________
__, 1998 the "Effective Date"), is between DYAX CORP., a Delaware corporation,
having a principal place of business at One Xxxxxxx Square, Bldg. 600, 5th Fl.
Xxxxxxxxx, Xxxxxxxxxxxxx 00000 (collectively referred to herein as "Licensor");
and _____________________________________________ ("Licensee"), a
____________________ corporation having its principal place of business at
______________________________________________________________.
R E C I T A L S
A. Licensor has the right to grant licenses to and under certain
technology described and claimed in U.S. Patent No. 5,223,409 entitled "Directed
Evolution of Novel Binding Proteins", U.S. Patent No. 5,403,484 entitled
"Viruses Expressing Chimeric Binding Proteins", U.S. Patent No. 5,571,698
entitled "Directed Evolution of Novel Binding Proteins", and associated patent
rights.
B. Licensee desires to obtain a license from Licensor to practice the
inventions described in the patents referenced above and Licensor is willing to
grant such a license on the terms and subject to the conditions provided herein.
NOW, THEREFORE, in consideration of the mutual covenants set forth in
this Agreement, the parties hereby agree as follows:
ARTICLE 1. DEFINITIONS
For purposes of this Agreement, the terms defined in this Article shall
have the meanings specified below:
1.1. "AFFILIATE" shall mean a corporation or other legal entity that
controls, is controlled by, or is under common control with such party. For
purposes of this definition, "control" means the ownership, directly or
indirectly, of more than fifty percent (50%) of the outstanding equity
securities of a corporation which are entitled to vote in the election of
directors or a more than fifty percent (50%) interest in the net assets or
profits of an entity which is not a corporation.
1.2. "BULK PRODUCTS" shall mean Licensed Products other than Finished
Products.
1.3. "END USER" shall mean a person or entity whose use of a product
results in its destruction, loss of activity, and/or loss of value.
1.4. "FINISHED PRODUCTS" shall mean Licensed Products which are in a
form ready for use by an End User without further formulation, processing or
chemical transformation.
1.5. "FIELD OF USE" shall mean human therapeutics only and not any in
vitro or in vivo diagnostics, purification or separations, research products,
or other purposes.
1.6. "FIRST COMMERCIAL SALE" shall mean the initial transfer by
Licensee or its Affiliate (or a Third Party Transferee of any of the foregoing)
of a Licensed Product for value and not for demonstration, testing or
promotional purposes.
1.7. "LICENSED INTERMEDIATE" shall mean any fusion protein (including
without limitation any chimeric binding protein), genetic package (including
without limitation any virus, spore or cell) or other intermediate compound, or
any compound derived from any of the foregoing, that is (i) discovered, made or
developed by Licensee or its Affiliates using a method covered in whole or in
part by Patent Rights or (ii) is otherwise covered by Patent Rights.
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1.8. "LICENSED PRODUCT" shall mean any product intended for sale to an
End User as a human therapeutic that is (i) discovered, made or developed,
whether by Licensee, its Affiliates or any Third Party Transferee, using a
Licensed Intermediate or a method covered in whole or in part by Patent Rights
or (ii) otherwise covered by Patent Rights.
1.9. "NET SALES" shall mean the amounts received on sales of Licensed
Products in the Field of Use by Licensee, its Affiliates and any Third Party
Transferee, less five percent (5%) as credit for normal and customary deduction
such as trade discounts, rebates, or commissions actually allowed and taken,
credits or allowances given for rejections or returns, taxes levied, and
shipping costs charged to a customer, without any further reduction. In any
transfers of Licensed Products between Licensee and one of its Affiliates or
between any of the foregoing and a Third Party Transferee and its Affiliates,
the Net Sales shall be calculated based on the final sale of the Licensed
Product to parties which are not Affiliates of Licensee or of such Third Party
Transferee. In the event that non-monetary consideration is received for any
Licensed Products, Net Sales with respect to such Licensed Products shall be
calculated based on the fair market value of such consideration.
1.10. "PATENT RIGHTS" shall mean all Valid Claims (defined below) of
United States Patent Nos. 5,223,409, 5,403,484 and 5,571,698 (collectively, the
"U.S. Patents"), reissues, reexaminations, renewals and extensions thereof, and
all continuations, continuations-in-part and divisionals of the applications for
such patents in the United States and all counterparts thereto in countries
outside the United States, all of which patents and patent applications as of
the Effective Date are listed in ATTACHMENT B. Patent Rights shall not include
(i) Valid Claims in U.S. Patent No. 5,233,409 to the extent they cover single
chain antibodies, nor (ii) Valid Claims of any continuation,
continuation-in-part or divisional applications of the U.S. Patents or any
counterparts of the U.S. Patents in countries outside of the United States, that
cover particular protein or peptide sequences, or nucleic acids thereof, that
bind to a specific biological or molecular target.
1.11. "ROYALTY PERIOD" shall mean the calendar quarter, or partial
calendar quarter, commencing with the First Commercial Sale of any Licensed
Product in each country, and each calendar quarter thereafter.
1.12. "THIRD PARTY TRANSFEREE" shall mean any party, other than an
Affiliate of Licensee, which is undertaking to make, have made, use, sell or
have sold Licensed Products and (i) to which Licensee (or any of its
Affiliates), sells, transfers, or otherwise makes available any Licensed
Intermediate or (ii) for which Licensee (or any of its Affiliates) performs
services or provides proprietary information, with respect to any Licensed
Intermediate.
1.13. "VALID CLAIM" shall mean either (a) a claim of an issued patent
that has not been held unenforceable or invalid by an agency or a court of
competent jurisdiction in any unappealable or unappealed decision or (b) a claim
of a pending patent application that has not been abandoned or finally rejected
without the possibility of appeal or refiling.
The above definitions are intended to encompass the defined terms in
both the singular and plural forms.
ARTICLE 2 GRANT OF RIGHTS
2.1. LICENSE GRANT. Subject to the terms and conditions set forth
herein, Licensor hereby grants Licensee and its Affiliates a world-wide,
nonexclusive, royalty-bearing license (without the right to grant sublicenses)
under Patent Rights (i) to make, have made, use, sell and have sold Licensed
Products in the Field of Use and (ii) to make and use Licensed Intermediates in
the Field of Use for sale or transfer to any Third Party Transferee.
2.2. LIMITATION OF RIGHTS. Licensee acknowledges that its rights under
Patent Rights are limited to those expressly granted herein and that Licensee
and its Affiliates are expressly prohibited from selling, transferring or
otherwise making available to third parties Licensed Products or Licensed
Intermediates for use outside the Field of Use.
2.3. COVENANT NOT TO XXX. In partial consideration for the grant of
rights hereunder, Licensee agrees not to enforce against Licensor or its
Affiliates any patent right owned or controlled by Licensee or its Affiliates
during the term of this Agreement that Licensor or its Affiliates may infringe
in practicing the inventions claimed
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in Patent Rights. Nothing in this Section 2.3 is intended to grant Licensor or
its Affiliates any proprietary rights or rights to nonsuit with respect to
specific peptides or proteins or analogs thereof.
ARTICLE 3. THIRD PARTY AGREEMENTS
3.1. REQUIRED AGREEMENT. Licensee acknowledges that the value of Patent
Rights is measured in part by the value of products resulting from any Licensed
Intermediate. Licensee agrees, therefore, that it will not sell, transfer, or
otherwise make available a Licensed Intermediate to any Third Party Transferee
and will not provide services or proprietary information with respect to any
Licensed Intermediate to any Third Party Transferee, unless such Third Party
Transferee executes and delivers an agreement in the form attached hereto as
ATTACHMENT C (a "Third Party Agreement").
ARTICLE 4. PAYMENTS, RECORDS AND REPORTS
4.1. PAYMENT OPTION SELECTION. Licensee has, upon execution of this
Agreement and as a condition hereto, irrevocably elected one and only one of the
payment options (such selected option being herein referred to as the "Payment
Schedule") as set forth in ATTACHMENT A, which election is evidenced and
confirmed by Licensee's signature thereon.
4.1.1. SIGNING FEE. Licensee agrees to pay Licensor, within ten
(10) days of the Effective Date, a non-refundable signing fee in the amount
specified in the Payment Schedule.
4.1.2. MAINTENANCE FEE. Licensee agrees to pay Licensor, on every
anniversary of the Effective Date, an annual maintenance fee for the license
granted under this Agreement in the amount specified in the Payment Schedule.
4.1.3. TRANSFER FEE. Licensee agrees to pay Licensor the amount
specified in the Payment Schedule within thirty (30) days of the first event
relating to each specific biological or molecular target for which a Third Party
Agreement is required (or would be required but for the fact that the Third
Party Transferee has previously executed and delivered a Third Party Agreement)
pursuant to Section 3.1 above.
4.1.4. IND MILESTONE. Licensee agrees to pay Licensor the amount
specified therefor in the Payment Schedule within thirty (30) days of the first
application for an Investigational New Drug ("IND") in the United States or
foreign equivalent thereof for each indication for a Licensed Product. As used
herein, "indication" refers to a new and distinct primary disease (for example
cancer versus inflammation) and does not refer to the subsequent filing of a
different type of the same primary disease (for example colon versus breast
cancer).
4.1.5. NDA MILESTONE. Licensee agrees to pay Licensor the amount
specified therefor in the Payment Schedule within thirty (30) days of the first
New Drug Application ("NDA") in the United States or foreign equivalent thereof
for each indication for a Licensed Product. As used herein, "indication" refers
to a new and distinct primary disease (for example cancer versus inflammation)
and does not refer to the subsequent filing of a different type of the same
primary disease (for example colon versus breast cancer).
4.1.6. ROYALTIES. Licensee agrees to pay Licensor, concurrently
with delivery of the quarterly report set forth in Section 4.2, royalties on
aggregate Net Sales during the prior Royalty Period, as follows:
a. on Net Sales of Finished Products, at the royalty rate
specified in the Payment Schedule; and
b. on Net Sales of Bulk Products, at one hundred thirty percent
(130%) of the royalty rate specified therefor in the Payment Schedule;
provided, however, that for any Licensed Product that is not a peptidic compound
(i.e. cannot in whole or part be genetically encoded), the royalty rate
specified in the Payment Schedule shall be reduced by fifty percent (50%).
4.2. REPORTS AND PAYMENTS.
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4.2.1. THIRD PARTY TRANSFEREE TRANSFERS AND REPORTS. On each
anniversary of the Effective Date, and within thirty (30) days after a transfer
described in Section 4.1.3, Licensee shall deliver to Licensor a report
containing the following information with respect to each Third Party Transferee
to whom Licensee has transferred Licensed Intermediates during the period since
the last such report or, in the case of the first such period, since the
Effective Date:
a. a copy of the Third Party Agreement with such Third Party
Transferee; and
b. to the extent publicly available or not subject to
confidentiality obligations, identification of the specific biological or
molecular target to which such Licensed Intermediates are to be directed.
4.2.2. ROYALTY PAYMENTS AND REPORTS. Commencing with the First
Commercial Sale of a Licensed Product in any country, within thirty (30) days
after the conclusion of each Royalty Period, Licensee shall deliver to Licensor
a report containing the following information:
x. xxxxx sales of Licensed Products, in each country of sale, made
by or on behalf of Licensee and its Affiliates during the applicable Royalty
Period;
b. calculation of Net Sales for the applicable Royalty Period in
each country of sale, together with the exchange rates used for conversion; and
c. calculation of the amount payable to Licensor for the
applicable Royalty Period.
All such reports shall be maintained in confidence by Licensor. If no royalties
or other payments are due to Licensor for any reporting period, the report shall
so state. Concurrent with these reports, Licensee shall remit to Licensor any
payment due for the applicable Royalty Period. The method of payment shall be by
check or wire transfer as directed from time to time by Licensor. All amounts
payable to Licensor under this Section will first be calculated in the currency
of sale and then converted into U.S. dollars in accordance with Section 4.3, and
such amounts shall be paid without deduction of any withholding taxes,
value-added taxes, or other charges applicable to such payments.
4.3. PAYMENTS IN U.S. DOLLARS. All payments due under this Agreement
shall be payable in United States dollars. Conversion of foreign currency to
U.S. dollars shall be made at the conversion rate existing in the United States
(as reported in the WALL STREET JOURNAL) on the last working day of the calendar
quarter preceding the applicable calendar quarter. Such payments shall be
without deduction of exchange, collection, or other charges.
4.4. RECORDS. Licensee and its Affiliates shall maintain, and shall
ensure that any Third Party Transferee shall maintain, complete and accurate
records of Licensed Products made, used, or sold under this Agreement and any
amounts payable to Licensor in relation to such Licensed Products, which records
shall contain sufficient information to permit Licensor to confirm the accuracy
of any reports delivered to Licensor in accordance with Section 4.2. Licensee
and its Affiliates shall retain such records relating to a given Royalty Period
for at least three (3) years after the conclusion of that Royalty Period, during
which time Licensor shall have the right, at its expense, to cause an
independent certified public accountant to inspect such records during normal
business hours for the sole purpose of verifying any reports and payments
delivered under this Agreement. Such accountant shall not disclose to Licensor
any information other than information relating to accuracy of reports and
payments delivered under this Agreement and shall provide Licensee with a copy
of any report given to Licensor. The parties shall reconcile any underpayment or
overpayment within thirty (30) days after the accountant delivers the results of
the audit. In the event that any audit performed under this Section reveals an
underpayment in excess of five percent (5%) in any Royalty Period, Licensee
shall bear the full cost of such audit.
4.5. LATE PAYMENTS. Any payments by Licensee that are not paid on or
before the date such payments are due under this Agreement shall bear interest,
to the extent permitted by law, at two percentage points above the base prime
rate of interest most recently reported by The WALL STREET JOURNAL, calculated
based on the number of days that payment is delinquent.
ARTICLE 5. REPRESENTATIONS AND WARRANTIES
5.1. AUTHORIZATION. Each party represents and warrants to the other
that it has the legal right and power to
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enter into this Agreement, to extend the rights and licenses granted to the
other in this Agreement, and to fully perform its obligations hereunder, and
that the performance of such obligations will not conflict with its charter
documents or any agreements, contracts, or other arrangements to which it is a
party.
5.2. OWNERSHIP OF PATENT RIGHTS. Licensor represents and warrants that,
as of the Effective Date, it possesses the exclusive right, title, and interest
in and to the Patent Rights and that it has the full legal right and power to
enter into the obligations and grant the rights and licenses set forth in this
Agreement.
5.3. DISCLAIMER OF WARRANTIES. Nothing in this Agreement shall be
construed as:
a. a warranty or representation by Licensor as to the validity or
scope of any patent included within the Patent Rights;
b. a warranty or representation that the exploitation of the
Patent Rights or the manufacture, use or sale of a Licensed Intermediate or a
Licensed Products is or will be free from infringement of patents of third
parties;
c. an obligation of either party to bring or prosecute actions or
suits against third parties for infringement;
d. an obligation of Licensor to maintain any patent or to continue
to prosecute any patent application included within the Patent Rights in any
country;
e. an obligation of either party to furnish any confidential
information or know-how;
f. creating any agency, partnership, joint venture or similar
relationship between Licensor and Licensee; or
g. conferring by implication, estoppel or otherwise any license,
immunity or right under any patent of Licensor other than those specified in
Patent Rights.
ARTICLE 6. INDEMNIFICATION
6.1. INDEMNIFICATION. Licensee shall indemnify, defend, and hold
harmless Licensor and its Affiliates and their directors, officers, employees,
and agents and their respective successors, heirs and assigns (the
"Indemnities") 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 concerning any product, process or service that
is made, used, sold or provided pursuant to any right or license granted under
this Agreement.
ARTICLE 7. TERM AND TERMINATION.
7.1. TERM. Unless sooner terminated as provided herein, this Agreement
shall commence on the Effective Date and shall remain in effect until the
expiration of the last to expire of the applicable Patent Right, unless earlier
terminated as provided in this Article.
7.2. TERMINATION BY LICENSEE. Licensee may terminate this agreement for
any reason upon six (6) months notice to Licensor.
7.3. TERMINATION BY LICENSOR. In the event that Licensee fails to make
timely payment of any amounts due to Licensor under this Agreement, including
amounts due under Article 4 hereof, Licensor may terminate this Agreement upon
thirty (30) days written notice to Licensee, unless Licensee pays all past-due
amounts prior to the expiration of such thirty (30)-day notice period.
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7.4. OTHER MATERIAL BREACH. In the event that either party commits a
material breach of any of its obligations under this Agreement, other than that
stated in Section 7.3, and such party fails to remedy that breach within ninety
(90) days after receiving written notice thereof from the other party, that
other party may immediately terminate this Agreement upon written notice to the
breaching party.
7.5. EFFECT OF TERMINATION. Upon the expiration or termination of this
Agreement, Licensee's rights under the Patent Rights shall terminate
immediately. Such expiration or termination shall not affect the rights of any
Third Party Transferee if any such Third Party Transferee performs its
obligations under the Third Party Agreement. The following provisions shall
survive the expiration or termination of this Agreement: Articles 1, 3, 6 and 8
and Section 2.3; as well as Licensee's obligations to make payments and reports
pursuant to Article 4 with respect to Licensed Products developed using the
Patent Rights, or developed as a result of Licensed Intermediates, during the
term of this Agreement.
7.6. NOTICE OF TERMINATION. Licensee agrees that, in the event that
this Agreement is terminated pursuant to the terms hereof, Licensee shall so
notify each Third Party Transferee within twenty (20) days of such termination.
ARTICLE 8 MISCELLANEOUS
8.1. NOTICES. All notices, requests, demands and other communications
required or permitted to be given pursuant to this Agreement shall be in writing
and shall be deemed to have been duly given upon the date of receipt if
delivered by hand, recognized international overnight courier, confirmed
facsimile transmission, or registered or certified mail, return receipt
requested, postage prepaid to the following addresses or facsimile numbers:
If to Licensor: If to Licensee:
Dyax Corp. To the address or facsimile
One Xxxxxxx Xxxxxx, Xxxx. 000, 5th Fl. set forth below the signature
to this Agreement
Xxxxxxxxx, XX 00000
Attention: Chief Executive Officer
Facsimile: (000) 000-0000
Either party may change its designated address and facsimile number by notice to
the other party in the manner provided in this Section.
8.2 GOVERNING LAW & JURISDICTION. This Agreement shall be governed by
and construed in accordance with the laws of the Commonwealth of Massachusetts.
The parties hereby irrevocably consent and submit to the exclusive jurisdiction
of any Commonwealth of Massachusetts or Federal court sitting in Boston in any
action or proceeding of any type whatsoever arising out of or relating to this
Agreement.
8.3. SPECIFIC PERFORMANCE. The parties agree that irreparable damage
will occur in the event that the provisions of Article 3 are not specifically
enforced. In the event of a breach or threatened breach of any such provisions,
Licensee agrees that Licensor shall, in addition to all other remedies, be
entitled to temporary or permanent injunction, without showing any actual damage
or that monetary damages would not provide an adequate remedy and without the
necessity of posting any bond, and/or a decree for specific performance, in
accordance with the provisions hereof.
8.4. ASSIGNMENT. This Agreement may not be assigned by either party
without the prior written consent of the other party, except that either party
may assign this Agreement to any of its Affiliates or to a successor in
connection with the merger, consolidation, or sale of all or substantially all
of its assets or that portion of its business pertaining to the subject matter
of this Agreement, with prompt written notice to the other party of any such
assignment. This Agreement shall inure to the benefit of and be binding upon the
parties and their respective lawful successors and assigns.
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8.5. COMPLIANCE WITH LAW. Nothing in this Agreement shall be construed
so as to require the commission of any act contrary to law, and wherever there
is any conflict between any provision of this Agreement and any statute, law,
ordinance or treaty, the latter shall prevail, but in such event the affected
provisions of the Agreement shall be conformed and limited only to the extent
necessary to bring it within the applicable legal requirements.
8.6. AMENDMENT AND WAIVER. This Agreement may be amended, supplemented,
or otherwise modified only by means of a written instrument signed by both
parties. Any waiver of any rights or failure to act in a specific instance shall
relate only to such instance and shall not be construed as an agreement to waive
any rights or fail to act in any other instance, whether or not similar.
8.7. SEVERABILITY. In the event that any provision of this Agreement
shall, for any reason, be held to be invalid or unenforceable in any respect,
such invalidity or unenforceability shall not affect any other provision hereof,
and the parties shall negotiate in good faith to modify the Agreement to
preserve (to the extent possible) their original intent.
8.8. ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
between the parties with respect to the subject matter hereof and supersedes
all prior agreements or understandings between the parties relating to
the subject matter hereof.
IN WITNESS WHEREOF, the undersigned have duly executed and delivered
this Agreement as a sealed instrument effective as of the date first above
written.
LICENSOR: LICENSEE:
DYAX CORP. ____________________
By: By:
Name: Name:
Title: Title:
Address of Licensee:
Facsimile:
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ATTACHMENT A
PAYMENT SCHEDULE OPTIONS
==============================================================================
Payments Option 1 Option 2 Option 3
-------- -------- -------- --------
==============================================================================
Signing Fee $ 40,000 $ 80,000 $160,000
------------------------------------------------------------------------------
Annual Maintenance Fee $ 30,000 $ 60,000 $ 90,000
------------------------------------------------------------------------------
Each transfer of one or more Li- $ 55,000 $ 55,000 $ 55,000
censed Intermediates or provision of
services therefor for a specific target
------------------------------------------------------------------------------
First application for an IND or $ 80,000 $160,000 $260,000
equivalent for each indication
------------------------------------------------------------------------------
First NDA or equivalent for each $160,000 $320,000 $510,000
indication
------------------------------------------------------------------------------
Royalty rate on Net Sales 2.2% 1.65% 1.1%
==============================================================================
The undersigned hereby irrevocably elects payment option __ (fill in 1, 2 or 3).
-------------------------------
(signature of individual signing
on behalf of Licensee)
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ATTACHMENT B
PATENT RIGHTS
================================================================================
Application/
Country Patent No. Filing Date Patent No. Issue Date
--------------------------------------------------------------------------------
US 07/664,989* 3/1/91 5,223,409 6/29/93
--------------------------------------------------------------------------------
US 9,319 1/26/93 5,403,484 4/4/95
--------------------------------------------------------------------------------
US 08/057,667 6/18/93 5,571,698 11/5/96
--------------------------------------------------------------------------------
US 08/415,922 4/3/95 allowed
--------------------------------------------------------------------------------
US 08/993,776 12/18/97
--------------------------------------------------------------------------------
PCT US89/03731 9/1/89
W09002809 (pub) 3/22/90
--------------------------------------------------------------------------------
EPO 89/910702.3 9/1/89 436,597 4/2/97
EP436597 (pub) 7/17/91
--------------------------------------------------------------------------------
EPO div 96/112867.5 8/9/96
--------------------------------------------------------------------------------
Japan 89510087 9/1/89
JP4502700 (pub) 5/21/92
--------------------------------------------------------------------------------
Canada 610,176 9/1/89
--------------------------------------------------------------------------------
Ireland IR89/2834 9/4/89
--------------------------------------------------------------------------------
Israel (& 3 divs) 91501 9/1/89
--------------------------------------------------------------------------------
PCT US92/01456 2/27/92
W09215677 (pub) 9/17/92
--------------------------------------------------------------------------------
EPO 92/908057.0 2/27/92
--------------------------------------------------------------------------------
Canada 2105300 2/27/92
--------------------------------------------------------------------------------
Japan 92507558 2/27/92
--------------------------------------------------------------------------------
PCT US92/01539 2/28/92
X00000000 (pub) 9/17/92
--------------------------------------------------------------------------------
EPO 92/908799.7 2/28/92
--------------------------------------------------------------------------------
Canada 2105303 2/28/92
--------------------------------------------------------------------------------
Japan 92508216 2/28/92
================================================================================
* CIP of US SN487,063 filed 3/2/90 which is a CIP of US SN240,160 filed 9/2/88
Protein Engineering Corporation patent rights now assigned to Dyax Corp.
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ATTACHMENT C
THIRD PARTY AGREEMENT
The undersigned hereby acknowledges that Dyax Corp. ("Licensor"),
having a principal place of business at One Xxxxxxx Square, Bldg. 600, 5th Fl.,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000, has licensed certain patent rights to and under
U.S. Patent No. 5,223,409 entitled "Directed Evolution of Novel Binding
Proteins", U.S. Patent No. 5,403,484 entitled "Viruses Expressing Chimeric
Binding Proteins", U.S. Patent 5,571,698, U.S. Patent No. 5,571,698 and
associated patent rights, to ______________ ("Licensee") under a License
Agreement (the "License") effective as of _____________, a copy of which has
been provided to the undersigned by Licensee; and that the undersigned as a
Third Party Transferee expects to receive from Licensee or its Affiliates one or
more Licensed Intermediates or services or proprietary information with respect
to one or more Licensed Intermediates (collectively, the "Transferred
Technology"). All terms not otherwise defined herein shall have the same
meanings set forth tin the License.
1. In consideration of the value of the patent rights referenced above in
developing the Transferred Technology, the undersigned agrees (a) to use the
Transferred Technology solely within the Field of Use to make, have made, use,
sell and have sold Licensed Products (collectively, "Covered Products"); and (b)
to maintain and retain complete and accurate records of sales of Covered
Products and any amounts paid or payable to Licensee in relation to such Covered
Products, all in accordance with Article 4 of the License.
2. If the undersigned is notified, by Licensor or Licensee or otherwise, that
the License has been terminated in accordance with its terms, such termination
shall not affect the rights of the undersigned to make, use and sell Covered
Products; provided, however, that the undersigned hereby agrees that from and
after the date of such termination the undersigned shall have the obligation (a)
to pay directly to Licensor all amounts due pursuant to the Payment Schedule
elected by Licensee under Section 4.1 of the License (as determined, in the
event of any conflict, by the records of Licensor), including royalties on Net
Sales, with respect to all Covered Products (which shall be deemed for purposes
of this paragraph to be "Licensed Products" as defined in the License), and (b)
deliver directly to Licensor all reports otherwise due to Licensee pursuant to
paragraph 1 above. All such payments and reports shall be subject to the terms
and conditions therefor set forth in the License, which are incorporated herein.
To the extent that the foregoing constitutes a grant of rights to the
undersigned under Patent Rights with respect to the Transferred Technology, such
rights shall be contingent and, in the event of a failure to make any such
payments or any other material breach by the undersigned, terminate upon thirty
(30) days notice unless the breach is cured prior to expiration of such period.
Licensor shall not be deemed to have assumed, and will not be liable for, any
representations, warranties or obligations of Licensee to the undersigned.
3. This Agreement is executed and delivered as an instrument under seal
expressly for the benefit of each of Licensor and Licensee and their respective
Affiliates and permitted successors.
(Company
Name) Address:
By:
Title:
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