CO-OWNERSHIP AGREEMENT
PORTIONS OF THIS EXHIBIT IDENTIFIED BY [*****] HAVE BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE THE EXCLUDED INFORMATION IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED.
Translation for information purposes only
Ref UPMC: X14039- C16/1030
RefIB: Sarcob IV 24479
BETWEEN THE UNDERSIGNED
1) BIOPHYTIS, public limited company with a capital of €1 237 900.20, registered in the Trade and Companies Register of Paris under the number B 492 002 225, having its head office at ▇▇ ▇▇▇▇▇▇ ▇▇ ▇’▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, represented by its CEO, ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, duly authorised for this purpose, hereinafter referred to as the “COMPANY”,
And
2) UNIVERSITE PIERRE ET ▇▇▇▇▇ ▇▇▇▇▇ (Paris 6), public institution of a scientific, cultural and professional nature, SIRET No.: 19751722000012 — APE code: 8542Z, located at 4 Jussieu - ▇▇▇▇▇ ▇▇▇▇▇ Cedex 05, represented by its Chairman, ▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇, hereinafter referred to as “UPMC”,
UPMC and the COMPANY are hereinafter jointly referred to as “PARTIES” and individually as “PARTY” or “Co-owner”.
IT IS RECALLED THAT:
Considering the beneficiary contract no. ANR-10-SATT-04-01 signed between the Agence Nationale de la Recherche, Université Pierre et ▇▇▇▇▇ ▇▇▇▇▇, Université de technologie de Compïègne, Université Panthéon Assas, institut Européen d’Administration des Affaires and Centre National de la Recherche Scientifique [National Centre for Scientific Research], in the presence of the Caisse des Dépôts et Consignation [Bank for Official Deposits] on 17 January 2012;
Given the articles of association of SATT LUTECH signed on 31 January 2012;
Given the framework agreement concluded between UPMC and SATT LUTECH and any addendum or supplementary document relating thereto.
In the context of the research undertaken in collaboration with the UPMC research team on the Biogenesis of peptidic signals entitled BIOSIPE (ER 3) hereinafter referred to as the “LABORATORY”, the COMPANY and METABRAIN RESEARCH, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and ▇▇▇▇-▇▇▇▇▇ ▇▇▇▇▇▇ have developed an invention relating to products derived from the 20-hydroxyecdysone and their use in the preparation of drugs.
This invention being susceptible to protection under industrial property, a priority French patent application No. FR 14 54538 called “chemical compounds and their use to improve the muscle quality” was filed on 20 May 2014 on behalf of UPMC, BIOPHYTIS and METABRAIN RESEARCH.
METABRAIN RESEARCH has transferred all its ownership rights relating to the French patent application no. 14 54538 filed on 20 May 2014 and the invention that is its object, to BIOPHYTIS by a deed dated 4 June 2015.
By virtue of this Contract, the PARTIES wish to formalise the co-ownership on the above-mentioned patent application and determine the rights and obligations of each PARTY.
The COMPANY has informed UPMC of its wish to benefit from the exclusivity of the exploitation of the PATENTS. Thus, the PARTIES have agreed to define the terms of such exclusive exploitation by separate agreement.
THEREFORE, THE PARTIES HAVE AGREED AS FOLLOWS:
Preliminary Article - DEFINITIONS
APPRAISER, refers to the co-owner chosen and who has accepted to identify and contact potential partners to conclude LICENSES for the use of PATENTS, as well as to take all the necessary measures for such exploitation territory for the listed territory(-ies).
CO-CONTRACTING THIRD PARTY means any identified third party interested in the
exploitation of the PATENTS under a LICENSE. The COMPANY and its affiliates are excluded from this definition.
CONFIDENTIAL INFORMATION, means any confidential information belonging to PARTIES or one of the PARTIES, notably relating to the invention protected by PATENTS or actions, steps, on-going negotiations with a CO-CONTRACTING THIRD PARTY in order to establish a LICENSE whether it is written, graphic , oral or any other form.
CONTRACT FOR USE, means a contract for use signed on 1st January 2016 between the COMPANY and SATT LUTECH and UPMC.
COSTS OF INDUSTRIAL PROPERTY, means exclusive direct costs incurred for the preparation filing, extension, issuance and continuance in force and defence operations before a patents office (opposition, interference..) of PATENTS.
INDUSTRIAL PROPERTY COSTS do not include the costs incurred in the proceedings for infringement actions initiated by one/the PARTY(IES) for the defence of the PATENTS, declarations of invalidity and/or actions that fall within the provisions of the Article 8 of this Agreement.
DATE OF SIGNATURE means the last date of signature of this Agreement by all the PARTIES.
EFFECTIVE DATE, refers to the date of filing the priority application of the initial patents of this agreement i.e. on 20 May 2014.
FIRM, refers to the firm of Industrial Property advice, which has received responsibility for establishing all documents for the preparation, filing, extension, issuance, defence before the Patents Offices and the continuance in force of PATENTS, its foreign correspondents, and eventually the service company in charge of annuity payment for the PATENTS.
INVENTORS, means ▇▇▇▇ ▇▇▇▇▇▇ (UPMC), ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ (COMPANY), ▇▇▇▇▇▇ ▇▇▇▇▇▇ (COMPANY), Waly DIOH (COMPANY), Franck Lepifre and ▇▇▇▇-▇▇▇▇▇ ▇▇▇▇▇▇ (METABRAIN RESEARCH) as specified in the invention declaration.
LICENSE, means any agreement as notably without this list being exhaustive, term sheet, letter of intent, protocol, license agreement, licensing agreement with right to sub-license, option contract on license, joint transfer agreement by all PARTIES, having as object all or part of the PATENTS, negotiated by the APPRAISER with a CO-CONTRACTING THIRD PARTY within the framework of the tasks assigned hereunder, whether this contract is in the negotiation stage or signed. The licenses granted by the COMPANY to third parties within the framework of the CONTRACT FOR USE are not LICENSES under this co-ownership rule.
MANAGER OF PATENTS, refers to the PARTY chosen and which has accepted the mandate to manage all operations related to the preparation, filing, extension, issue, maintenance and defence before a patent office (opposition, interference..) of PATENTS for the(s) territory(-ies) that have been designated by the Co-owners.
PATENTS collectively means:
· The French patent application no. FR 14 54538 filed on behalf of the COMPANY, METABRAIN RESEARCH and UPMC, on 20 May 2014, entitled “chemical
compounds and their use to improve muscle quality”, as well as the priority right attached to it;
· The PCT patent application filed on behalf of the COMPANY and UPMC on May 20, 2015 under the number PCT/FR2015/051332,
· as well as all patent applications and patents and corresponding additional protection certificates in foreign countries, all reissues, re-examinations, extensions pertaining thereto, all divisions, continuations in whole or in part related thereto, as well as the re-issue, divisional applications, renewals, claiming in whole or in part priority of the French patent application no. 14 54538.
OPERATING INCOME means the amounts of any nature collected under the LICENSES, including, not exhaustively, optional income, income from license, sublicense income, instalment payments, the lump sum amounts, fees, any capital gains received by the APPRAISER on transfer of eventual securities acquired by the said APPRAISER for share in the capital of young companies and any similar income.
OPERATING INCOME does not include income from collaborative research agreements having the PATENTS and their object that will be paid directly to the PARTY(IES) participating in the collaboration.
SHARE, refers to the sharing of ownership of the PATENTS of each PARTY, as defined in article 1.1 below.
Words in singular can be understood in plural and vice versa.
Article 1 - PURPOSE AND SCOPE OF THE AGREEMENT
1.1 The PARTIES co-own PATENTS as follows:
· seventy percent (70%) for the COMPANY,
· thirty percent (30%) for UPMC.
1.2 Thus, the PARTIES wish to formalise the rules applicable to the co-ownership of the PATENTS, the rights and obligations resulting therefrom, and the distribution forms of the OPERATING INCOME.
It is hereby specified that each PARTY will personally take charge of the remuneration of its own INVENTORS.
In the event of contradiction between this Agreement and the CONTRACT FOR USE signed with the COMPANY, it is specified that the provisions of the CONTRACT FOR USE shall prevail over those of this Agreement, as set out in Article 12.
Article 2 - TERM
This Contract shall take effect retroactive to the EFFECTIVE DATE, and will remain in force, unless terminated earlier, until expiry or abandoning of the last of the PATENTS.
Article 3 - FILING, EXTENSION, DELIVERY AND CONTINUANCE ENFORCEMENT OF THE PATENTS
3.1 The PARTIES agree by mutual agreement that the COMPANY will be the APPRAISER, as specified in Article 4.3.1. In this respect, SOCIETE will then be the MANAGER OF PATENTS.
3.2 Should the MANAGER OF PATENTS wish to abandon the role of MANAGER OF PATENTS, it must notify the other PARTY at least sixty (60) days prior to the next deadline for the proceedings of Industrial Property so that one of the other PARTIES can take over this responsibility, if it so wishes. If no other PARTY agrees to resume this role, the PARTIES will appoint a third party as PATENT MANAGER and will work to find an amicable solution as soon as possible. In this case, the COSTS OF INDUSTRIAL PROPERTY will be borne by the PARTIES in proportion to their respective SHARE, unless otherwise agreed by the PARTIES.
3.3 The MANAGER OF PATENTS undertakes to consult the other PARTY in writing before undertaking any legal action in relation to the procedures or on the choice of procedures relating to any of the PATENTS. The other PARTY must be given a copy of any document relating to the said procedures sufficiently in advance to allow them to submit their comments before maturity.
Subject to the correct application of the provisions of the preceding paragraph, the absence of a written response within thirty (30) days or a shorter time if imposed due to a maturity of proceedings before an office following receipt of these documents by the other PARTY will be presumed as acceptance of the MANAGER OF PATENTS’ proposal.
In addition, the MANAGER OF PATENTS commits not to undertake exceptional industrial property costs before a Patents office for any one of the PATENTS for procedures of interference or opposition, reviews or reissues, without the prior written consent of(s) (the) other(s) PARTY(-ies), which must communicate its(their) respective position(s) within thirty (30) days of its (their) interrogation. In the event of failure to reply within the above-mentioned period of time, its (their) agreement shall be presumed acquired. Notwithstanding what is stated above, in the event where one of the PARTIES does not wish to incur an exceptional industrial property cost, it does not call into question the possibility for the other PARTY to act on its own name and at its sole expense.
Unless the PARTIES otherwise agree between them, to the DATE OF ENTRY INTO FORCE hereof in the countries where the PARTIES have in common procedures for the PATENTS, the INDUSTRIAL PROPERTY COSTS are set out by the PATENT MANAGER, except in the event of LICENSE providing that these costs be borne by the CO-CONTRACTING THIRD PARTY.
During the term of the CONTRACT FOR USE the COSTS OF INDUSTRIAL PROPERTY are supported under the conditions set out in the CONTRACT FOR USE.
Non-payment of all or part of the COSTS OF INDUSTRIAL PROPERTY by the MANAGER OF PATENTS will be construed as a waiver by the MANAGER OF PATENTS or the PARTY that it represents of its SHARE in the(s) PATENT (S) concerned by the said COSTS and consequently, shall be considered as free transfer of the SHARE of the said PATENTS of the
MANAGER OF PATENTS in the countries concerned in favour of the other PARTY. Consequently, the MANAGER OF PATENTS shall undertake to grant without delay any power, any document and any signature for the completion of this assignment and it can no longer receive, from the time of receipt of the notification by the other PARTY, any remuneration for the direct and/or indirect use of PATENTS for this(these) given country(-ies) and will no longer have any industrial or commercial operating right on these PATENTS.
3.4 If one of the PARTIES:
decides to abandon all or part of the PATENTS, or
· does not wish to participate in the extension or continuation of the procedure in a particular country, or
· does not wish to incur exceptional property rights costs,
it shall notify the other PARTY in writing within thirty days (30) days before the next due date for the Industrial Property proceedings, and will abandon its share in the said PATENT(S). The transferee will be subrogated in all the rights and obligations of the transferor, except for the right to be APPRAISER/MANAGER OF PATENTS if the transferring PARTY was APPRAISER /MANAGER OF PATENTS on behalf of the PARTIES. The abandonment of these rights will take effect from the receipt of the notification of abandonment by the receiving PARTY.
The PARTY giving up its share undertakes to provide to the other PARTY all signatures and all documents necessary to continue with the procedure of any one of the PATENTS that it wants to give up.
In addition, the PARTIES undertake to have their staff members named INVENTORS provide the necessary signatures and perform all the measures required of them as Inventors that are necessary for the filing, extension, delivery, and the keeping in force of the PATENTS.
3.5 If, pursuant to article 3.4, one of the PARTIES decides to abandon its rights to the PATENTS in one or more countries given, the COSTS OF INDUSTRIAL PROPERTY paid for these countries by that PARTY prior to its decision to abandon cannot under any circumstances be reimbursed. Unless the PARTIES have together stated otherwise, the said PARTY will no longer receive, from the time of receipt of the notification by the other PARTY, any OPERATING INCOME on the said PATENTS for these countries given. Subject to compliance with the rules governing the sharing of COSTS OF INDUSTRIAL PROPERTY mentioned below, the decision to abandon does not absolve the PARTY giving up its share from settling its share in the COSTS OF INDUSTRIAL PROPERTY incurred for these countries until its notification of abandonment.
In the event of a decision of abandonment by the MANAGER OF PATENTS, it does not exempt the MANAGER OF PATENTS from advancing the COSTS OF INDUSTRIAL PROPERTY, under the conditions set out in Article 3.3, incurred for these countries until its notification of abandonment.
Subject to compliance with the provisions of the foregoing paragraph, in any country where one of the PARTIES decides to pursue by itself the procedures for the filing, extension, issuance and keeping in force of the relevant PATENTS, the INDUSTRIAL PROPERTY COSTS will be the sole responsible of that PARTY.
3.6 By this agreement, UPMC informs SOCIETE that all or part of the rights and obligations mentioned above, particularly the follow-up of management of procedures by the MANAGER OF PATENTS in the name and on behalf of UPMC can be entrusted, for its SHARE, to the société accélératrice du transfert de technologies - SATT- referred to as S ATT LUTECH in accordance with all or part of the agreements concluded with SATT as well as those mentioned in the preamble and in particular under the conditions of the negotiation and administration mandates.
Article 4 - EXPLOITATION AND USE OF THE PATENTS
UPMC may entrust the negotiation and administration of LICENSES to the société accélératrice du transfert de technologies -SATT- referred to as SATT LUTECH, in connection with and within the conditions provided for in the negotiation and administration mandates to SATT and in accordance with all or part of the agreements concluded between SATT and UPMC, as well as those mentioned in the preamble.
Similarly UPMC had given mandate to SATT LUTECH to negotiate the CONTRACT FOR USE.
4.1 Use for research purpose:
The PARTIES are free to use the invention subject of PATENTS exclusively for research purposes, excluding any commercial exploitation, only, in collaboration with SATT within the context of the projects of maturation or in collaboration with third parties, provided that in case of collaboration with third parties, it informs the other PARTY of it beforehand, complies with the confidentiality obligations set out in Article 7 below, and without contravening the rights and operating conditions granted to the COMPANY in the CONTRACT FOR USE. The conditions of use of the invention subject of the PATENTS for research by Establishments are, during its term, those set out in the CONTRACT FOR USE
4.2. Operation and direct or indirect use, by SOCIETE:
The COMPANY expressed its desire to be able to enjoy exclusive usage right to the PATENTS in an area that is identified in the CONTRACT FOR USE, which is accepted by UPMC.
4.3. Indirect operation and use by a CO-CONTRACTING THIRD PARTY:
4.3.1 Designation of the APPRAISER
The PARTIES agree that each PARTY may be designated as an APPRAISER by mutual agreement between the PARTIES and, if applicable, on a case-by-case basis.
The PARTIES agree by mutual agreement that SOCIETE will be the APPRAISER for the duration of the CONTRACT FOR USE.
If the APPRAISER no longer wishes to take on the role of APPRAISER, for whatever reason, it shall promptly notify the other PARTY so that it can take on this responsibility, if it so wishes. In the event where no PARTY wishes to take over this role of the APPRAISER, the PARTIES may appoint a third party for this purpose who will strive to reach an amicable solution.
4.3.2 Tasks of the APPRAISER
4.3.2.1 The APPRAISER will be the MANAGER OF PATENTS, unless otherwise agreed by the Parties in a written agreement.
4.3.2.2 Unless the PARTIES together agree otherwise, by written agreement, they give, hereby, mandate to the APPRAISER to negotiate and sign in the best interests of the PARTIES, secret agreements having as object PATENTS and expertise associated with third parties, in particular, industrial as part of an appraisal plan.
4.3.2.3 In addition, only the APPRAISER may negotiate and draft LICENSES, unless otherwise agreed between the PARTIES, the draft LICENSE is communicated by the APPRAISER to the other PARTY for approval and prior to signing within thirty (30) days before the scheduled signing date. This agreement may be refused only if one or other of the PARTIES may reasonably demonstrate in writing, within thirty (30) communication days, that such LICENSE contradicts its articles of association, activities and/or tasks.
Each PARTY may send to the APPRAISER, within the aforesaid period of thirty (30) days, any comments, remark or proposed amendment to the draft LICENSE, the APPRAISER undertakes to communicate to the CO-CONTRACTING THIRD PARTY so that the said comments are incorporated into the final LICENSE, however, to the extent that such comments, remarks, or proposals of modification will be sent to the APPRAISER (i) motivated, (ii) within the deadline granted, and (iii) will be based on substantial elements of the draft LICENSE. It is understood that the insertion of the said comments in the final version of the LICENSE in charge of the APPRAISER, who negotiates in the best interests of the PARTIES, constitutes only an obligation of means.
For the purposes of this Article, the PARTIES agree to consider as substantial any element of the LICENSE, particularly relating to the scope of rights granted by the PARTIES to the CO-CONTRACTING THIRD PARTIES, for the enhancements, responsibilities and guarantees mentioned in the draft LICENSE, but excluding any information of pure form without any impact on the merits thereof.
The other PARTY’s silence on expiry of the thirty (30) day period mentioned above will be deemed as tacit acceptance of the terms of the draft LICENSE.
The PARTIES will sign the said LICENSE except in the event of specific mandate given to the APPRAISER. Each PARTY having signed the LICENSE will receive an original; the PARTIES represented by the APPRAISER for signing the LICENSE, will receive a copy.
4.3.2.4 Subject to prior notification sent to the APPRAISER, each PARTY may propose potential CO-CONTRACTING THIRD PARTIES to the APPRAISER for the use of PATENTS. The APPRAISER may oppose the application of a CO-CONTRACTING THIRD PARTY only if the APPRAISER can reasonably demonstrate in writing, within thirty (30) days from the notification, that said candidacy creates a serious conflict with its articles of association, activities and/or missions or that negotiations with another CO-CONTRACTING THIRD PARTY have already been initiated by the APPRAISER.
4.3.2.5 Unless the PARTIES together agree, in writing, all LICENSES shall establish that all CO-CONTRACTING THIRD PARTIES will directly pay to the APPRAISER the OPERATING INCOMES, it is up to the latter to distribute such OPERATING INCOME, after deduction of COSTS OF INDUSTRIAL PROPERTY, if applicable, and in the conditions and within the limits of Article 3.3, between the PARTIES according to their SHARE.
However, for each LICENSE with a CO-CONTRACTING THIRD PARTY, the PARTIES may, by means of an amendment hereto, determine in good faith the breakdown of the OPERATING INCOME, taking into account, in addition to the SHARES of each PARTY, economy of the LICENSE signed by the appraisal efforts, as well as investments made.
The OPERATING INCOME of the LICENSE due to the PARTIES will be paid to them by the APPRAISER.
For amounts due to UPMC in respect of the CONTRACT FOR USE, SATT LUTECH will pay them to UPMC.
4.3.4 In the event of negotiation of a LICENSE exclusively with a CO-CONTRACTING THIRD PARTY, the APPRAISER undertakes to put in its best efforts to get the CO-CONTRACTING THIRD PARTY to pay all or part of the COSTS OF INDUSTRIAL PROPERTY, it being understood that this obligation of the APPRAISER is only of means.
Article 5 - ACCOUNTING
5.1 THE APPRAISER communicates each year, a statement of operating incomes received in accordance with Articles 4.2 and 4.3 hereof. In view of this state, each PARTY establishes, if applicable, an invoice indicating the amounts owed by the.
5.2 The sums due must be paid in euros, to the individual and at the banking address indicated on the invoice, by bank transfer, within forty-five (45) days of issue of an invoice.
5.3 The sums due will be increased by the legal fees in force on the maturity date, in particular VAT, if applicable.
Article 6 - ASSIGNMENT OF THE SHARE OF THE PATENTS
6.1 At any time, and in the conditions defined below, each PARTY may transfer its share of co-ownership in the PATENTS, subject to complying with the legal obligations applicable to public bodies.
In this case, the PARTY that wishes to sell its share of co-ownership to a third party, will firstly notify its intention by registered letter with acknowledgement of receipt to the other PARTY, specifying in particularly the name of the third party purchaser and the financial conditions of transfer, this information will be treated as CONFIDENTIAL INFORMATION.
The other PARTY, has a pre-emptive right for a period of [****] from receipt of the said notification by registered letter with acknowledgement under financial conditions at least equal to those granted to third parties. During this period, the other PARTY shall inform the transferring party of its decision by registered letter with acknowledgement of receipt.
If the other PARTY does not wish to acquire the share transferred, it shall so inform the transferring PARTY as soon as possible.
On expiry of the above-mentioned pre-emptive period, if the other PARTY has not informed it of its willingness to exercise its pre-emptive right, the transferor automatically benefits from the transfer authorisation.
The other PARTY can refuse the purchaser only if it can reasonably demonstrate in writing, in this same [****] period from the notification of the intention, that a transfer with such transferee would be contradictory to its articles of association, activities and/or tasks.
The terms and conditions of sale of any of the PATENTS to a third party may not under any circumstances be more favourable than those proposed to the other PARTY.
In the assignment deed, the assignor shall inform the assignee, who accepts them without modification, the rights and obligations contained in this Agreement and in the agreements relating to the PATENTS under the conditions and reserves of said agreements. The transferee will be subrogated in all the rights and obligations of the transferor, except for the right to be the APPRAISER/MANAGER OF PATENTS if the transferring PARTY were the APPRAISER/MANAGER OF PATENTS on behalf of the PARTIES. A copy of the transfer deed is sent to the other PARTY.
The transferring PARTY undertakes to provide to the other PARTY and/or to the third party purchaser all signatures and documents necessary for the industrial property proceedings relating to PATENTS.
In addition, the transferring PARTY undertakes to ensure that its staff members cited as inventors provide the necessary signatures and any information necessary for any proceedings related to PATENTS before of the Patents Office, particularly for the filing and maintenance of the PATENTS.
Article 7 - CONFIDENTIALITY
7.1 The PARTIES agree to respect and to maintain strictly confidential all CONFIDENTIAL INFORMATION received from the other PARTY.
7.2 The PARTIES undertake to have their staff and any person attached to their service in any capacity whatsoever observe the same commitment, and to make sure that they respect this confidentiality commitment as regards the CONFIDENTIAL INFORMATION.
7.3 The PARTIES agree not to submit application patent application or to claim any other intellectual property title including all or part of the CONFIDENTIAL INFORMATION received from the other PARTY, unless specifically agreed in writing with the latter PARTY.
7.4 The confidentiality obligations binding the PARTIES under this Agreement do not apply to the use or disclosure of CONFIDENTIAL INFORMATION for which the recipient PARTY can demonstrate:
a) that it has been disclosed after obtaining the prior written authorisation of the owner PARTY, or that the disclosure has been made by the owner PARTY,
b) that it was in the public domain at the time of its disclosure or was published or made available to the public, in any manner whatsoever, without action or fault on the part of the recipient PARTY,
c) that it was received by the PARTY as a legitimate recipient of a third party without breaching this Agreement,
d) that at the date of its communication by the owner PARTY that provided it, the recipient PARTY was already in possession of this information,
e) that its disclosure was imposed by the application of a mandatory legal or regulatory provision or by the application of a final court decision or an arbitral award.
The aforementioned exceptions are not cumulative.
7.5 The PARTIES agree by this Agreement that any disclosure to third parties of any CONFIDENTIAL INFORMATION, particularly disclosure to a CO-CONTRACTING THIRD PARTY, given that, in this case, SATT LUTECH will not be considered as a third party, will be preceded by the signing of a secret agreement whose terms and conditions will be at least similar to those in this Article.
7.6 This Article shall remain in force for five (5) years after the expiry or early termination of this Agreement without prejudice to the more stringent contractual provisions provided in a LICENSE or a CONTRACT FOR USE.
Article 8 - INFRINGEMENT - VALIDITY OF THE PATENTS
8.1 In the event of an infringement action filed by a third party against the PATENTS, declarations of invalidity, infringement of PATENTS by a third party, the PARTIES will meet to determine by mutual agreement the strategy to adopt and will provide each other with all the elements in their possession in order to assess the nature and magnitude of the grievances filed or acts of infringement.
8.2 In the event that a consensus cannot be obtained, each of the PARTIES may carry out the actions that it deems appropriate at its own expense, on the understanding that, in this case, the indemnities resulting from said actions granted by the deliberating jurisdiction will fully and irrevocably remain with the acting PARTY.
8.3 The PARTY not having taken action undertakes to provide all the documents, powers or information that would be necessary to the PARTY bringing the aforementioned actions.
8.4 In the event of an action brought by a third party, each PARTY shall bear the costs of its own defence. Each of the PARTIES will be personally liable for the sanctions pronounced against them by the courts, notwithstanding any solidarity that may be pronounced against them.
8.5 Each PARTY waives the right to ▇▇▇ the other PARTY regarding the consequences on the validity of the PATENTS as a result of an action or defence by the latter.
8.6 In the event of use of the PATENT, the provisions of the LICENSE or the CONTRACT FOR USE relating to the infringement, shall apply as of right and will prevail over any other provision.
8.7 Points 8.3, 8.4, 8.5 and 8.6 of this Agreement shall survive the expiration or termination of this Agreement.
Article 9 - TERMINATION
This Agreement is terminated as of right in the event that one of the PARTIES becomes the sole owner of all the PATENTS.
Article 10 - THE ASSIGNMENT OF THE AGREEMENT
This Agreement is personal, non-assignable and non-transferable subject to the provisions of Article 6 of this Agreement.
Article 11 - WAIVER
The fact that one of the PARTIES does not claim a breach by the other PARTY of any of the obligations set out in this Agreement shall not be construed in the future as a waiver by the PARTY of the obligation in question.
Article 12 - INTERPRETATION AND PREPONDERANCE OF THE CONTRACT FOR USE SIGNED WITH the COMPANY
In case of difficulty bearing on the interpretation or in case of contradictions of the terms of this agreement in accordance with the provisions of the CONTRACT FOR USE signed with SOCIETE, the provisions of this CONTRACT FOR USE shall prevail and shall be applicable automatically.
Article 13- APPLICABLE LAW - DISPUTES
13.1 This Agreement is governed by French laws and regulations.
13.2 In the event of a difficulty in the interpretation or execution of this Agreement, the PARTIES will work to resolve their dispute amicably.
13.3 In case of a disagreement persisting for more than three (3) months as of the first notification concerning the dispute by one of the PARTIES to the other, the dispute will be brought before the competent French courts.
13.4 Notwithstanding the termination or expiry of this Agreement, this Article shall remain in effect.
Article 14 - ENTIRE AGREEMENT
This Agreement expresses all the obligations of the PARTIES relating to the co-ownership of the PATENTS and may be modified only by a written agreement between the PARTIES signed by the representatives of the PARTIES duly authorised for said purpose. No general or specific condition contained in the documents sent or delivered by the PARTIES can be integrated in this Agreement.
Article 15 - INVALIDITY OF A CLAUSE
If one or more stipulations of this Agreement is found to be invalid or declared as such under any law, rule - and in particular, the European Union law - or following a final decision of a competent court, the other stipulations shall retain their full force and scope and the PARTIES will immediately proceed with the required modifications in accordance with, to the fullest extent possible, the voluntary agreement existing at the time of signing this Agreement.
Article 16 - TITLES
In case of difficulties in interpretation between any of the titles appearing at the head of the clauses and any of the clauses, the titles will be declared non-existent.
Article 17 - REGISTRATION IN THE NATIONAL REGISTER OF PATENTS
17.1 The MANAGER OF PATENTS can register this Contract in the National Patents Register, held by the National Institute of Industrial Property, and in the national patents register held by the national offices of Industrial Property concerned by the PATENTS.
17.2 Registration costs under Article 17.1 are considered as INDUSTRIAL PROPERTY COSTS.
Article 18 - NOTIFICATIONS
Any notification required under this Contract shall be issued by registered letter with acknowledgement of receipt, to the concerned PARTY at the following address:
For the COMPANY:
Institut Biophytis
▇▇ ▇▇▇▇▇▇ ▇▇ ▇’▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇
For UPMC:
Université Pierre et ▇▇▇▇▇ ▇▇▇▇▇
▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇
▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇ cedex 05
Article 19- MISCELLANEOUS
In addition, the PARTIES undertake, in case of final abandonment by all the PARTIES of all PATENTS, to fulfil their legal and regulatory obligations vis-à-vis their INVENTORS (in particular to offer beforehand to take over the concerned PATENT(S) in their name and at their own cost) under the conditions to be defined.
The provisions of this Article shall remain in force notwithstanding the early termination of this Agreement, in accordance with Article 9.
Executed in two (2) originals drafted in French, one (1) for each one of the PARTIES.
Signed in Paris, on 18 11,2016
|
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇ |
|
|
▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ |
|
|
Chairman of UPMC |
|
|
|
|
|
|
|
|
/s/ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ |
|
|
▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ |
|
|
For the COMPANY |
|