PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT. THE OMITTED PORTIONS, MARKED BY AN * AND [ ], HAVE BEEN
SEPARATELY FILED WITH THE COMMISSION.
Exhibit 10.27
LICENSE AGREEMENT
This License Agreement (hereinafter referred to as the License Agreement),
effective as of the 25th day of November, 1997 is made by and between Bar-Ilan
Research and Development Company Ltd., a company duly organized and existing
under the laws of the State of Israel and having a principal place of business
at Bar-Ilan University, XX Xxx 0000, Xxxxx Xxx 00000, Israel (BAR-ILAN), and
Titan Pharmaceuticals, Inc., a corporation duly organized and existing under the
laws of the State of Delaware and having a principal place of business at 000
Xxxxxx Xxxxx Xxxxxxxxx, Xxxxx 000, Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000, XXX
(TITAN).
WHEREAS, BAR-ILAN is entering this License Agreement on its own behalf, and
as representative and trustee for Bar-Ilan University (the University) and MOR -
Research Applications Ltd. (MOR), and represents that it has been authorized by
the University and MOR to make the representations and undertakings contained
herein; and
WHEREAS, BAR-ILAN has the right to grant licenses under the Patent Rights
(as later defined) and whereas TITAN desires to obtain a license upon the terms
and conditions hereinafter set forth; and
WHEREAS, TITAN has represented to BAR-ILAN, to induce BAR-ILAN to enter
into this License Agreement, that it shall commit itself to a thorough, vigorous
and diligent program of exploiting the Patent Rights and know-how of BAR-ILAN,
so that public utilization shall result therefrom; and
WHEREAS, BAR-ILAN and Ansan Pharmaceuticals, Inc., a corporation duly
organized and existing under the laws of the State of Delaware and having a
principal place of business at 000 Xxxxxx Xxxxx Xxxxxxxxx, Xxxxx 000, Xxxxx Xxx
Xxxxxxxxx, Xxxxxxxxxx 00000, XXX (ANSAN) have entered into a previous license
agreement, effective as of October 31, 1992; and
WHEREAS, BAR-ILAN and ANSAN mutually agree to terminate that previous
license agreement and replace it with this License Agreement and a parallel
license agreement between BAR-ILAN and ANSAN.
NOW, THEREFORE, it is agreed as follows:
ARTICLE I - DEFINITIONS
For the purposes of this License Agreement, the following words and phrases
shall have the following meanings:
1.1. "AFFILIATE" shall mean any company or entity, the voting control of
which is at least fifty percent (50%), directly or indirectly, owned or
controlled by TITAN or which, directly or indirectly, owns or controls at least
fifty percent (50%) of TITAN or which is under common control with TITAN.
AFFILIATE shall also mean any entity in fact effectively controlled by or under
common control with TITAN.
1.2. "Patent Rights" shall mean Israeli Patent Applications Nos. 83389 and
87072, filed July 30, 1987 and July 11, 1988, respectively; and any applications
claiming priority or benefit directly or indirectly from either or both of them,
including any continuations, continuations-in-part, and divisionals thereof; and
any patents issuing from any of the foregoing, including any reissues,
reexaminations, and extensions thereof; as set forth in Appendix I.
1.3. "Licensed Product(s)" shall mean:
1.3.1. Any product which is covered in whole or in part by a valid and
unexpired claim contained in the Patent Rights in the country in which the
product is made, used, leased, or sold;
1.3.2. Any product which is manufactured by using a process which is
covered in whole or in part by a valid and unexpired claim contained in the
Patent Rights in the country in which the process is used;
1.3.3. Any product which is used according to a method which is
covered in whole or in part by a valid and unexpired claim contained in the
Patent Rights in the country in which the method is used.
1.4. "Licensed Process(es)" shall mean any process or method, which is
covered, in whole or in part, by a valid and unexpired claim contained in the
Patent Rights in the country in which the process or method is used.
1.5. "TITAN Field" shall mean: (a) with respect to butylidene dibutyrate
(sometimes referred to as AN-10), non-topical applications for oncologic
disorders; and (b) with respect to all other products within the Patent Rights,
all indications and routes of administration except (i) the treatment of
(-hemoglobinopathies ((-globin disorders) and (ii) topical applications other
than oncologic disorders. The term oncologic disorders shall not include
chemotherapy-or radiotherapy-induced alopecia.
1.6. "Net Sales" shall mean TITAN's or an AFFILIATEs xxxxxxxx for Licensed
Products and Licensed Processes, less the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariffs, duties, and/or use taxes directly imposed on and
with reference to particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) bad debt deductions actually written off during the period.
No deductions shall be made for commissions paid to individuals whether
they be independent sales agencies or regularly employed by TITAN or an
AFFILIATE and on their payroll. Licensed Products and Licensed Processes shall
be considered sold when billed out or invoiced.
ARTICLE 2 - GRANT
2.1. BAR-ILAN hereby grants to TITAN a worldwide license to practice under
the Patent Rights, and to make, have made, use, lease, and/or sell the Licensed
Products in the TITAN Field and to practice the Licensed Processes in the TITAN
Field, said license being perpetual unless sooner terminated as hereinafter
provided and subject to the payment of royalties
as hereinafter provided, and said license to include the right to sublicense in
the TITAN Field and to be exclusive to TITAN in the TITAN Field.
2.2. TITAN agrees that any sublicenses granted by it shall provide for the
same obligations as those obligations imposed only by this License Agreement.
2.3. TITAN agrees to forward to BAR-ILAN annually a copy of such reports
received from any sublicensee as may be pertinent to an accounting of royalties,
as well as copies of all sublicense agreements entered into by TITAN in
connection with the Patent Rights.
ARTICLE 3 - DUE DILIGENCE
3.1. TITAN shall use its reasonable best efforts to bring Licensed Products
or Licensed Processes to market through a thorough, vigorous and diligent
program for exploitation of the Patent Rights and continue active, diligent
marketing efforts for Licensed Products or Licensed Processes throughout the
life of this Agreement.
3.2. TITAN shall endeavor to use the Xxxxx Medical Center in Petach-Tikva,
Israel, as one of the sites to conduct human clinical trials of the Licensed
Products provided that US Food and Drug Administration (FDA) protocols and
standards can be achieved and the cost per patient is competitive with the
United States.
ARTICLE 4 - ROYALTIES
4.1. For the rights, privileges, and license granted hereunder, TITAN shall
pay to BAR-ILAN, as set forth below, either (i) until the expiration of the last
applicable patent within the Patent Rights on any Licensed Product or Licensed
Process in the country in which such Licensed Process is used or such Licensed
Product is made, used, leased, or sold, after which time TITANs license shall
become fully paid-up and perpetual in such country; or (ii) until this License
Agreement shall be terminated as hereinafter provided:
The information below, marked by * and [ ], has been omitted pursuant to a
request for confidential treatment. The omitted portion had been separately
filed with the Commission.
4.1.1. In each calendar year, a royalty in an amount equal to [*****]
of Net Sales of the Licensed Products or Licensed Processes leased or sold by
TITAN or an AFFILIATE.
4.1.2. In each calendar year, a royalty in an amount equal to [*****]
of the royalties, fees, or any other lump sum received by TITAN or an AFFILIATE
from its sublicensees for the use, lease, or sale of Licensed Products and
Licensed Processes. TITAN shall not sell or sublicense the use, lease, sale, or
other disposition of Licensed Products or Licensed Processes to an AFFILIATE of
TITAN without obtaining the prior written consent of BAR-ILAN, which consent
shall not unreasonably be withheld.
4.1.3. To maintain the exclusivity of TITANs license to the Patent
Rights, TITAN shall pay minimum annual royalties in accordance with the
following schedule:
(a) On October 31, 1998, a minimum of ............. [*****]
(b) Each calendar year thereafter, a minimum of ... [*****]
4.2. No multiple royalties shall be payable because use, lease, or sale of
any Licensed Product or Licensed Process is, or shall be, covered by more than
one valid and unexpired claim contained in the Patent Rights.
4.3. Royalty payments shall be paid in United States Dollars in New York or
at such other place as BAR-ILAN may reasonably designate consistent with the
laws and regulations controlling in any foreign country. Any withholding taxes
which TITAN or any sublicensee shall be required by law to withhold on
remittance of the royalty payments shall be deducted from the royalty paid to
BAR-ILAN. TITAN shall furnish BAR-ILAN the original copies of all official
receipts for such taxes. If a currency conversion shall be required in
connection with the payment of royalties hereunder, such conversion shall be
made using the exchange rate prevailing at Citibank, NA in New York on the last
business day of the calendar quarterly reporting period to which such royalty
payments relate.
The information below, marked by * and [ ], has been omitted pursuant to a
request for confidential treatment. The omitted portion had been separately
filed with the Commission.
4.4. In all cases, the price utilized to determine Net Sales employed in
the computation of royalties shall be a genuine and objective selling price
which would otherwise be established in a bona fide arms length transaction
between unrelated and independent parties which have no affiliation or other
interest which might affect such genuine and objective selling price. TITAN
covenants not to engage in manipulative transfer pricing, distribution of
Licensed Products which are not commercially reasonable, or any other means to
avoid the intended application of this Article 4. In the event Licensed Products
are used or otherwise disposed of by TITAN to an AFFILIATE or any other party at
a price which is less than a genuine and objective selling price, as described
herein, the price utilized to determine Net Sales employed in the computation of
royalties shall be the prevailing price of the identical type of Licensed
Products sold or leased by TITAN to independent and unrelated third parties. In
the event that TITAN shall not have customarily sold or leased the identical
type of Licensed Products to independent and unrelated third parties then the
price employed in the computation of royalties shall be set at [*****] of the
full cost of production, including all direct costs and full overhead, for such
Licensed Products sold.
4.5. In addition to any royalties payable under Paragraph 4.1, if TITAN, or
an AFFILIATE or sublicensee of TITAN, receives approval from the US FDA to
market a Licensed Product in the TITAN Field (as those terms are used in this
License Agreement) before ANSAN, or an AFFILIATE or sublicensee of ANSAN,
receives approval from the US FDA to market a Licensed Product in the ANSAN
Field (as those terms are used in the License Agreement between BAR-ILAN and
ANSAN), then TITAN shall pay to BAR-ILAN four additional payments of [******]
each: the first within 90 days of receiving the approval, the second within 180
days of receiving the approval, the third within 270 days of receiving the
approval, and the fourth within 360 days of receiving the approval.
ARTICLE 5 - REPORTS AND RECORDS
5.1. TITAN shall keep full, true and accurate books of account containing
all particulars that may be necessary to the purpose of showing the amount
payable to BAR-ILAN by way of royalty as aforesaid. Said books of account shall
be kept at TITAN's principal place of business. Said books and the supporting
data shall be open upon reasonable notice to TITAN and no more than twice per
calendar year, for five (5) years following the
end of the calendar year to which they pertain, for inspection by the BAR-ILAN
Internal Audit Division and/or by an independent certified public accountant
employed by BAR-ILAN, to which TITAN has no reasonable objection, for the
purpose of verifying TITAN's royalty statement or compliance in other respects
with this License Agreement.
5.2. TITAN, within sixty (60) days after the end each quarter of each
calendar year, shall deliver to BAR-ILAN true and accurate reports, giving such
particulars of the business conducted by TITAN during the preceding quarter
under this License Agreement as shall be pertinent to a royalty accounting
hereunder. These shall include at least the following:
(a) All Licensed Products and Licensed Processes used, leased,
or sold by or for TITAN, its AFFILIATES and sublicensees.
(b) Total amounts invoiced for Licensed Products and Licensed
Processes used, leased, or sold by or for TITAN, its
AFFILIATES and sublicensees.
(c) Deductions applicable in computed "Net Sales as defined in
Paragraph 1.6.
(d) Total royalties due based on Net Sales by or for TITAN, its
AFFILIATES and sublicensees.
(e) Names and addresses of all AFFILIATES and sublicensees of
TITAN. (f) On an annual basis, TITAN's Annual Report.
5.3. With each such report submitted, TITAN shall pay to BAR-ILAN the
royalties due and payable under this License Agreement. If no royalties (other
than the minimum royalty pursuant to Paragraph 4.1.3) shall be due, TITAN shall
so report.
ARTICLE 6 - PATENT PROSECUTION
6.1. TITAN, at its own expense and utilizing patent counsel of its choice
selected in consultation with BAR-ILAN, shall have the sole right and obligation
for the filing, prosecution, and maintenance of the Patent Rights. TITAN, or its
patent counsel, shall provide BAR-ILAN
with copies of all correspondence and documents filed with, or received from,
any patent office or patent agent. In addition, TITAN agrees that any and all
official or ribbon copies of issued patents shall be forwarded to, and retained
by, BAR-ILAN.
6.2. BAR-ILAN and TITAN agree for the benefit of ANSAN that neither shall
take any action in regard to prosecution of the Patent Rights (including by
reexamination, reissue, or the like) that could result in any diminution of
rights with respect to any claims covering rights outside the TITAN Field, in
particular, to any composition of matter claims relating to butylidene
dibutyrate, except with the consent of ANSAN.
ARTICLE 7 - TERMINATION
7.1. If TITAN shall become bankrupt or insolvent, shall file a petition in
bankruptcy, or if the business of TITAN shall be placed in the hands of a
receiver, assignee, or trustee for the benefit of creditors, whether by the
voluntary act of TITAN or otherwise, this License Agreement shall automatically
terminate.
7.2. Should TITAN fail in its payment to BAR-ILAN of royalties due in
accordance with the terms of this License Agreement which are not the subject of
a bona fide dispute between BAR-ILAN and TITAN, BAR-ILAN shall have the right to
serve notice upon TITAN, by certified mail to the address designated in Article
13 hereof, of its intention to terminate this License Agreement within sixty
(60) days after receipt of said notice of termination unless TITAN shall pay to
BAR-ILAN, within the sixty (60) day period, all such royalties due and payable.
Upon the expiration of the sixty (60) day period, if TITAN shall not have paid
all such royalties due and payable, the rights, privileges and license granted
hereunder shall thereupon immediately terminate.
7.3. Upon any material breach or default of this License Agreement
(including without limitation, the failure to submit annual reports as provided
under Paragraph 5.2) by TITAN, other than those occurrences set out in
Paragraphs 7.1 and 7.2 hereinabove, which shall always take precedence in that
order over any material breach or default referred to in this Paragraph 7.3,
BAR-ILAN shall have the right to terminate this License Agreement and the
rights, privileges and
license granted hereunder by ninety (90) days' notice to TITAN by certified mail
to the address designated in Article 13 hereof. Such termination shall become
effective unless TITAN shall have cured any such breach or default capable of
being cured prior to the expiration of the ninety (90) day per from receipt of
the notice of termination.
7.4. TITAN shall have the right to terminate this License Agreement at any
time on nine (9) months notice by certified mail to BAR-ILAN.
7.5. Upon termination of this License 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. TITAN and/or any
sublicensee thereof may, however, after the effective date of such termination,
sell all Licensed Products, and complete Licensed Products in the process of
manufacture at the time of such termination, and sell the same, provided that
TITAN shall pay to BAR-ILAN the royalties therein as required by Article 4 of
this License Agreement and shall submit the reports required by Article 5 hereof
on the sales of Licensed Products.
7.6. Upon the termination of this License Agreement, TITAN shall (except to
the extent necessary to complete the manufacture and sale of Products permitted
under Paragraph 7.5 above): (i) return to BAR-ILAN any materials still in its
possession provided to it by BAR-ILAN pursuant to this License Agreement; (ii)
maintain the confidentiality of all proprietary, non-public information provided
to it by BAR-ILAN; and (iii) not use the Licensed Products or other information
disclosed pursuant to this License Agreement in any way in connection with its
business.
7.7. Upon the termination of this License Agreement for any reason,
existing sublicense agreements pertaining to Licensed Products entered into by
TITAN pursuant to this License Agreement shall at BAR-ILANs option be assigned,
upon such termination, from TITAN to BAR-ILAN or to BAR-ILANs designee.
ARTICLE 8 - ARBITRATION
8.1. Except as to issues relating to the validity, enforceability, or
infringement of any patent contained in the Patent Rights licensed hereunder,
any and all claims, disputes, or
controversies arising under, out of, or in connection with this License
Agreement, which have not been resolved by good faith negotiations between the
parties, shall be resolved by final and binding arbitration to be held in Tel
Aviv under the rules of the American Arbitration Association then in effect. The
arbitrators shall have no power to add to, subtract from, or modify any of the
terms or conditions of this License Agreement. Any award rendered in such
arbitration may be enforced by either party in any court having jurisdiction.
8.2. Any claim, dispute, or controversy concerning the validity,
enforceability, or infringement of any patent contained in the Patent Rights
licensed hereunder shall be. resolved in any court having jurisdiction thereof.
In the event TITAN institutes a proceeding to contest the validity or
enforceability of the Patent Rights, all royalties owed by TITAN under Article 4
of this License Agreement shall continue to be paid by TITAN until such
proceeding is resolved, after appeals if any.
8.3. In the event that, in any arbitration proceeding, any issue shall
arise concerning the validity, enforceability, or infringement of any patent
contained in the Patent Rights licensed hereunder, the arbitrators shall, to the
extent possible, resolve all issues other than validity, enforceability, and
infringement; in any event, the arbitrators shall not delay the arbitration
proceeding for the purpose of obtaining or permitting either party to obtain
judicial resolution of such issues, unless an order staying the arbitration
proceeding shall be entered by a court of competent jurisdiction. Neither party
shall raise any issue concerning the validity, enforceability, or infringement
of any patent contained in the Patent Rights licensed hereunder in any
proceeding to enforce any arbitration award hereunder, or in any proceeding
otherwise arising out of any such arbitration award.
ARTICLE 9 - INFRINGEMENT AND OTHER ACTIONS
9.1. TITAN and BAR-ILAN shall promptly provide written notice to the other
party of any alleged infringement by a third party of the Patent Rights within
the TITAN Field and provide such other party with any available evidence of such
infringement.
9.2. During the term of this Agreement, TITAN shall have the right, but not
the obligation, to prosecute and/or defend, at its own expense and utilizing
counsel of its choice, any infringement of and/or challenge to the Patent Rights
within the TITAN Field. In furtherance of such right, BAR-ILAN hereby agrees
that TITAN may join BAR-ILAN as a party in any such suit, without expense to
BAR-ILAN. No settlement, consent judgment, or other voluntary final disposition
of any such suit may be entered into without the consent of BAR-ILAN, which
consent shall not unreasonably be withheld. TITAN shall indemnify BAR-ILAN
against any order for costs that may be made against BAR-ILAN in any such suit.
9.3. Any recovery of damages by TITAN in any such suit shall be applied
first in satisfaction of any unreimbursed expenses and legal fees of TITAN
relating to the suit. The balance remaining from any such recovery shall be
treated as royalties received by TITAN from sublicensees and shared by BAR-ILAN
and TITAN in accordance with Paragraph 4.1.2 hereof.
9.4. If within six (6) months after receiving notice of any alleged
infringement within the TITAN Field, TITAN shall have been unsuccessful in
persuading the alleged infringer to desist, or shall not have brought and shall
not be diligently prosecuting an infringement action, or if TITAN shall notify
BARILAN, at any time prior thereto, of its intention not to bring suit against
the alleged infringer, then, and in those events only, BAR-ILAN shall have the
right, but not the obligation, to prosecute, at its own expense and utilizing
counsel of its choice, any infringement of the Patent-Rights within the TITAN
Field, and BAR-ILAN may, for such purposes, join TITAN as a party plaintiff. The
total cost of any such infringement action commenced solely by BAR-ILAN shall be
borne by BAR-ILAN and BAR-ILAN shall keep any recovery or damages for past
infringement derived therefrom.
9.5. In any suit to enforce and/or defend the Patent Rights pursuant to
this License Agreement, the party not in control of such suit shall, at the
request and expense of the controlling party, cooperate in all respects and, to
the extent possible, have its employees testify when requested and make
available relevant records, papers, information, samples, specimens, and the
like.
9.6. BAR-ILAN and TITAN agree for the benefit of ANSAN that, before either
of them shall commence or respond to a suit to enforce and/or defend the Patent
Rights, they shall consult with ANSAN in good faith to the extent legally
permissible to ensure that no action shall jeopardize the legitimate interests
of ANSAN in the Patent Rights. TITAN further agrees that it will cooperate in
good faith with ANSAN to establish an agreement for shared responsibility and/or
cost of enforcement and/or defense to the extent that such enforcement and/or
defense implicates both the ANSAN Field and the TITAN Field.
ARTICLE 10 - PRODUCT LIABILITY
10.1. BAR-ILAN, by this License Agreement, makes no representation as to
the patentability and/or breadth of the inventions contained in the Patent
Rights. BAR-ILAN, by this License Agreement, makes no representation as to
patents now held or which will be held by others in the field of the Licensed
Products for a particular purpose.
10.2. TITAN agrees to defend, indemnify, and hold BAR-ILAN, the University
and MOR harmless from and against all liability, demands, damages, expense, or
losses for death, personal injury, illness, or property damage arising (a) out
of the use by TITAN or its transferees of inventions licensed or information
furnished under this License Agreement, or (b) out of any use, sale, or other
disposition by TITAN or its transferees of products made by use of such
inventions or information. As used in this clause, BAR-ILAN includes the
Trustees, Officers, Agents, Employees and Students of BAR-ILAN, the University,
and MOR, and TITAN includes its AFFILIATES, Contractors and Sub-contractors.
ARTICLE 11 - ASSIGNMENT
TITAN may assign or otherwise transfer this License Agreement and the
license granted hereunder, and the rights acquired by it hereunder so long as
such assignment or transfer shall be accompanied by a sale or other transfer of
TITAN's entire business or of that part of TITAN's business to which the license
granted hereunder relates. TITAN shall give BAR-ILAN thirty (30) days prior
written notice within which to reasonably object to such assignment or transfer.
If within thirty (30) days after the giving of such notice, no written objection
is received by TITAN,
BAR-ILAN shall be deemed to have approved such assignment or transfer; provided,
however, BAR-ILAN shall not be deemed to have approved such assignment and
transfer unless such assignee or transferee shall have agreed in writing to be
bound by the terms and conditions of this License Agreement. If, within such
thirty (30) day period, BAR-ILAN provides written notice of reasonable objection
to such assignment or transfer, then no such assignment or transfer shall be
made and, if made, shall be deemed null and void. Upon such assignment or
transfer and agreement by such assignee or transferee, the term TITAN as used
herein shall mean such assignee or transferee. If TITAN shall sell or otherwise
transfer its entire business or that part of its business to which the license
granted hereby relates and the transferee shall not have agreed in writing to be
bound by the terms and conditions of this License Agreement, or new terms and
conditions shall not have been reasonably agreed upon within sixty (60) days of
such tale or transfer, BAR-ILAN shall have the right to terminate this License
Agreement.
ARTICLE 12 - NON-USE OF NAMES
TITAN shall not use the name of BAR-ILAN or MOR or any adaptation thereof
in any advertising, promotional, or sales literature without prior written
consent obtained from BARILAN, in each case, except that TITAN may state that it
is licensed by BAR-ILAN under one or more of the patents and/or applications
comprising the Patent Rights.
ARTICLE 13 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice, or other communication pursuant to this License
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by certified first class mail, postage prepaid, addressed to it at
its address below or as it shall designate by written notice given to the other
party:
In the case of BAR-ILAN:
Bar-Ilan Research & Development Company Ltd.
Bar-Ilan University
XX Xxx 0000
Xxxxx Xxx 00000
Israel
In the case of TITAN:
Titan Pharmaceuticals, Inc.
000 Xxxxxx Xxxxx Xxxxxxxxx, Xxxxx 000
Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
XXX
ARTICLE 14 - EFFECTIVENESS
This License Agreement shall become effective and binding on the parties
hereto upon the closing of the Agreement and Plan of Reorganization dated July
16, 1997 by and between ANSAN and Discovery Laboratories, Inc.
ARTICLE 15 - MISCELLANEOUS PROVISIONS
15.1. This License Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Israel, except that
questions affecting the validity, enforceability, or infringement of any patent
contained in the Patent Rights shall be determined by the law of the country in
which the patent was granted.
15.2. The parties hereto acknowledge that this License Agreement sets forth
the entire agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
15.3. The provisions of this License Agreement are severable, and in the
event that any provision of this License Agreement shall be determined to be
invalid or unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4. TITAN agrees to xxxx the Licensed Products sold in the United States
with all applicable United States patent numbers. All Licensed Products shipped
to, or sold in, other countries shall be marked in such a manner as to conform
with the patent laws and practice of the country of manufacture or sale.
15.5. The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this License Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
IN WITNESS WHEREOF, the parties hereto have executed this License
Agreement, in duplicate, by proper persons thereunto duly authorized.
BAR-ILAN TITAN
By: /s/ AMITZOR SHLASKY By: /s/ XXXXX XXXXXXX
----------------------------- ------------------------------
Name: Amitzor Shlasky Name: Xxxxx Xxxxxxx
Title: Managing Director Title: Exec. V.P. and COO
Date: 13-11-97 Date: 11/24/97
APPENDIX I
Application
Country No. Filing Date Patent No. Issue Date
Israel 83389 July 30, 1987 83389 Xxxxxxxx 00, 0000
Xxxxxx 87072 July 11, 1988 87072 November 19, 0000
Xxxxxxx* 88111971.3 July 25, 1988 95164 September 29, 0000
Xxxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxxx 573,518 July 29, 1988 1,327,595 Xxxxx 0, 0000
Xxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 1993
Germany* 88111971.3 July 25, 0000 0000000 September 29, 1993
Great
Britain* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxx 191,981/88 July 30, 1988 -- --
Luxembourg* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxxxxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxx* 88111971.3 July 25, 0000 0000000 September 29, 0000
Xxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 0000
Xxxxxxxxxxx* 88111971.3 July 25, 1988 0 302 349 September 29, 1993
USA 07/223,595 July 25, 1988 5,200,553 April 6, 1993
* Based on European Patent Application No. 88111971.3, filed July 25, 1988;
European Patent No. 0 302 349, granted September 29, 1993
