EXHIBIT 10.28
LICENSE AGREEMENT
This agreement is made the 6th day of December, 2006 (the "Effective Date"),
between:
MCMASTER UNIVERSITY, an institution, with a principal place of business at 0000
Xxxx Xx. X. MIP 000, Xxxxxxxx, Xxxxxxx X0X 0X0, Xxxxxx, Tel: 000-000-0000 xxx
22176, Fax: 000-000-0000 (herein called "McMaster" or "University")
- and -
MOLECULAR INSIGHT PHARMACEUTICALS, INC., a corporation with a principal place of
business at 000 Xxxxxx Xxxxxx Xxxxxxxxx, XX 00000, Tel: 000.000.0000, Fax:
000.000.0000 (herein called the "Licensee"); each a Party to this Agreement
(herein, collectively called the "Parties").
WHEREAS, McMaster is the owner of the Technology (as defined herein below) and
has the exclusive world-wide right to license and sublicense the Technology; and
WHEREAS, Licensee wishes to license the Technology for the purpose of developing
and commercializing products using the Technology within the permitted
Field-of-Use (as defined herein below);
NOW, THEREFORE, in consideration of the mutual covenants and agreements
hereinafter contained, the parties agree as follows:
DEFINITIONS
"CONFIDENTIAL INFORMATION" means any part of the information which is designated
by a Party as confidential, whether orally or in writing but excluding any part
of the information:
(i) possessed by a first Party prior to receipt from the second Party,
other than through prior disclosure, as evidenced by the first
Party's written records;
(ii) published or available to the general public otherwise than through
a breach of this Agreement;
(iii) obtained by a Party from a third party with a valid right to
disclose it, provided that said third party is not under a
confidentiality obligation to the other Party to this Agreement; or
(iv) independently developed by employees, agents or consultants of a
Party who had no knowledge of or access to the information as
evidenced by the Party's written records.
"FIELD-OF-USE" means the discovery, development, preparation and use of
radiopharmaceuticals in diagnostic and therapeutic applications.
"LICENSED PROCESS" means any process or procedure that, but for the license
granted herein, would infringe either Technical Information Rights or one or
more claims in the Patent Rights.
"LICENSED PRODUCTS" means any product designed and developed by Licensee in the
Field-of-Use that (a) if made, used, offered for sale, sold, imported, leased or
otherwise disposed of in the United States or any other country would, but for
the license granted herein, infringe the Technical Information Rights or one or
more claims of the Patent Rights, (b) is made by using Licensed Processes, or
(c) when used, practices Licensed Processes.
"NET SALES" means, for any given fiscal year, the total of the gross amounts
billed by Licensee for Licensed Products made, used, leased, transferred, sold
or otherwise disposed of by Licensee, less deductions for (a) cash, trade or
quantity discounts included on the invoice and actually allowed and (b) sales or
use taxes imposed upon particular sales; import/export duties; and
transportation charges, to the extent actually paid. No deductions shall be made
for commissions paid to individuals, whether employed by Licensee or engaged as
independent contractors. The term "Net Sales" shall also include the amount or
fair market
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value of all other consideration received by Licensee in respect of a Licensed
Product, including payment in kind, exchange or other transfer of value.
"PATENT RIGHTS" means all rights of McMaster arising under United States and
foreign patents and patent applications related to the Technology, whether
existing on the Effective Date or arising thereafter, and any divisionals,
continuations, continuations-in-part, continued prosecution, reissue or
reexamination applications claiming priority thereto to the extent the claims
are directed to subject matter disclosed in such applications, and any patents
issuing thereon or reissues, reexaminations or extensions thereof. The Patent
Rights are listed at Schedule A.
"PHASE II CLINICAL TRIAL" means a clinical human trial with a Licensed Product
in patients with the targeted medical condition, to assess short-term safety and
diagnostic or therapeutic dose-range finding (minimum and maximum doses) and
determine short-term side effects and risks associated with an investigational
product.
"PHASE III CLINICAL TRIAL" means a pivotal clinical human trial with a Licensed
Product in patients with the targeted medical condition, to demonstrate short
and long term safety and efficacy and assess overall diagnostic or therapeutic
value as well as determine the benefit/risk relationship of an investigational
product, where the trial is of a kind acceptable to the U.S. Food and Drug
Administration or an equivalent foreign regulatory authority elsewhere, as a
submission for approval of a commercial drug product.
"TECHNICAL INFORMATION RIGHTS" means all rights of McMaster in and to all
inventions, trade secrets, copyrights, research data, methods, processes,
know-how and other technical data related to the Technology, whether patentable
or not, whether owned by or licensed to McMaster, and whether existing as of the
Effective Date or arising thereafter if funded by the Licensee under a research
contract.
"TECHNOLOGY" means all technical information and know-how related to or
associated with invention(s) as described in the Patent Rights, and any
modifications, enhancements or improvements thereto.
LICENSE
1. Grant. Subject to the terms and conditions of this Agreement,
McMaster hereby grants to Licensee a world-wide, exclusive license
under the Patent Rights and to the Technical Information Rights to
make, have made, use, offer to sell, sell, import, lease or
otherwise dispose of Licensed Products within the Field-of-Use and
to practice the Licensed Process in connection with the design,
development, manufacture and sale of the Licensed Products during
the term of this Agreement.
2. Reserved Rights. Subject to the grant of the exclusive license set
forth above, Licensee acknowledges that McMaster retains any rights
not expressly granted to Licensee in Section 1 above, including
without limitation the right to use the Patent Rights and Technical
Information Rights for academic research, scholarly publication,
education, or other non-commercial purposes. McMaster will be free
to publish the data and results of the Research Project in
appropriate scientific journals after providing a copy of the
manuscript to the Licensee and receiving written approval from the
Licensee within sixty (60) days of manuscript submission to the
Licensee to prevent the premature public disclosure of
commercializeable intellectual property or disclosure of Licensee's
confidential information. If Licensee does not object in writing to
such publication or presentation within sixty (60) days of receipt
thereof, it shall be deemed to have agreed to the disclosure and
McMaster shall be free to proceed. In publishing research results,
McMaster will undertake all reasonable measures to protect the
commercial potential of Technology to ensure that the patent
interests of the Licensee or McMaster are not adversely affected or
jeopardized. If requested in writing by the Licensee, McMaster will
defer publication for a maximum period of six (6) months for the
purposes of obtaining appropriate intellectual property protection.
Licensee shall not, at
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EXHIBIT 10.26 McMaster License
any time, do or suffer to be done any act or thing which may in any way
adversely affect any rights of McMaster in and to the Patent Rights or
Technical Information Rights or any registrations thereof or which,
directly or indirectly, may reduce the value of the Patent Rights or
Technical Information Rights.
3. Sublicensing. Licensee may sublicense the rights granted pursuant to
this Agreement provided that: (i) Licensee obtains McMaster's prior
written consent, which consent shall not be unreasonably withheld;
(ii) McMaster shall receive such revenue or royalty payment as is
provided in Section 4 below; and (iii) any such sublicense shall not
derogate in any way the obligations of Licensee hereunder. The
Parties acknowledge that Licensee may choose to distribute Licensed
Products through third party-contracted distributors which shall not
be deemed to be an assignment or sublicense subject to this
provision provided such distributors are not using the Patent Rights
or Technical Information Rights to manufacture or modify the
Licensed Products. A sublicense under this Agreement as well as the
rights that accrue to a sublicense(s) thereunder, shall survive the
termination of this Agreement pursuant to Section 17.
4. Payments. In consideration of the license herein granted, Licensee
shall pay or cause to be paid to McMaster:
(a) an initial licensing fee of ** payable within 90
days following execution of this Agreement. The initial
license fee is non-refundable and is required to reimburse
McMaster for its costs of developing, protecting and licensing
the Technology;
(b) royalty of Net Sales on Licensed Products sold by Licensee or
sublicensee in any country in which Patent Rights exist,
according to the following schedule: ** for diagnostic
applications of the Licensed Products and ** for therapeutic
applications of the Licensed Products. In the event that
Licensee's total royalty burden on any Licensed Product sold
exceeds ** (depending on whether it involves a diagnostic or
therapeutic product) wherein ** or ** is the royalty stack cap
expressed as a percentage of Net Sales receipts), then,
because of the need for licensing additional components, the
royalty payable hereunder shall be reduced by an amount
proportionate to the amount by which the total royalty exceeds
the royalty stack cap. However, in no event shall the adjusted
reduced royalty rate be less than ** of the applicable ** or
** royalty due hereunder.
Specifically:
R2 = R1 x (royalty stack cap/T)
where:
R1 is the royalty due hereunder
R2 is the adjusted reduced royalty rate due hereunder
T is the total royalty due to all licensors, and
The royalty stack cap is either ** for all diagnostic Licensed
Products, or ** for all therapeutic Licensed Products.
Forexample, if two additional licenses are needed from two
additional third parties in order to obtain freedom to operate
to make, use and sell a therapeutic Licensed Product, and these
two other royalty rates are 2% and 4.0% (total of 6.0% third
party royalties), the value of T is ** and the recalculated
royalty rate (R2), is ** x ** or **. Since R2 is never
less than ** of R1, the adjusted royalty rate due under this
Agreement is **.
(c) Minimum annual royalties shall be paid by Licensee to McMaster; such
minimum annual royalty payments shall be non-refundable, except that for
any year where the minimum royalty stated hereunder exceeds the earned
royalties described in Section 4(b) above, Licensee shall be able to
credit such excess
* confidential treatment requested *
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payment against any royalties due in the subsequent year. Minimum annual
royalties shall be paid according to the following schedule, based on the
Effective Date of this Agreement:
i. 1st anniversary -- USD **
ii. 2nd anniversary -- USD **
iii. 3rd anniversary -- USD **
iv. 4th anniversary -- USD **
v. 5th and subsequent anniversaries -- USD **
(d) Licensee's obligation to pay a royalty under Section 4b shall
terminate on a country-by-country basis upon expiry of Patent Rights in
such country.
(e) Where Licensed Products are not sold separately, but are sold in
combination with or as parts or components of other products, the Net
Sales of the Licensed Products shall be calculated for the purpose of
computing payments due under this Agreement by applying to the total net
sales price of the combined or composite products a fractional multiplier
having as its numerator the manufacturing cost of the Licensed Product,
and as its the denominator the total manufacturing cost of the combined or
composite products (determined in accordance with the Licensee's customary
accounting procedures) including the Licensed Product;
(f) Payments made pursuant to Section 4 shall be paid by wire transfer, or
other means mutually agreed upon by the Parties, within 90 days following
the close of the calendar quarter during which the Net Sales underlying
such royalties have actually been received by Licensee. Each payment shall
be accompanied by a statement of account of the payments due hereunder and
the number of Licensed Products sold, licensed or otherwise provided, the
dates thereof and the terms of sale.
(g) In the event that the Licensee fails to make any payment when such
payment is due hereunder, the amount of such payment shall bear interest
at the rate equal to the minimum lending rate to prime commercial
borrowers established by McMaster's banker plus one percent (1%)
calculated from the date due until the date paid provided that the payment
of such interest shall not be deemed an alternate for the sums owing on
the due dates which payments shall be deemed to be in default and remain
subject to the termination provisions herein.
(h) In addition to the royalty payments set forth in Section 4b and 4c,
Licensee shall make the milestone payments set forth below. Milestone
payments shall apply only to the first time for each new Licensed Product
in any indication. For avoidance of doubt, if Licensee should choose to
enter into more than one clinical trial with a Licensed Product (for
example, multiple IND applications) or a trial with more than one Licensed
Product, then the milestone payments for subsequent trials or additional
Licensed Product shall only apply to the first indication or to one (1)
Licensed Product in the event that two (2) or more Licensed Products are
used. Licensee shall make the following payments:
i. Upon initiation of a Phase I Clinical Trial, the sum of
**
ii. Upon initiation of a Phase II Clinical Trial, the sum of **
iii. Upon successful completion of a Phase III Clinical Trial, the
sum of **
iv. Within ninety (90) days of first commercial sale of a Licensed
Product, the sum of **
v. The milestone payments paid to Licensor as provided in Section
4(h)(i-iv) above, shall be creditable against royalties due
under Section 4c.
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* confidential treatment requested *
5. Performance Guarantees. The Licensee will use commercially
reasonable efforts to develop, market, and sell the Licensed
Products. In the event that McMaster is of the view that the
Licensee is not using its best efforts, it may call for an
evaluation to be conducted by a mutually agreed upon evaluator. If
the evaluator determines that Licensee is not using commercially
reasonable efforts, or if the Licensee does not sell a first
Licensed Product on or before seven (7) years from the Effective
Date of this Agreement, McMaster may, at its option, terminate the
Agreement or change the rights granted pursuant to the Agreement
from exclusive to non-exclusive, or restrict the Field-of-Use.
6. Information Rights. Licensee shall prepare and maintain complete and
accurate books and records covering all transactions arising out of
or relating to this Agreement or the carrying on of its business in
respect of the Licensed Products. Provided these records disclose
information about the Net Sales of Licensed Products, Licensee shall
provide to McMaster financial information including, but not limited
to the following:
(a) Quarterly financial statements: Within 30 days after the last
day of each quarter, financial statements, including a balance
sheet and a statement of income related to the terms and
volume of Net Sales of the Licensed Products as of the last
date of each quarter;
(b) Annual financial statements: Within 120 days after the end of
each fiscal year of the Licensee, financial statements
detailing the terms and volume of Net Sales of the Licensed
Products prepared in accordance with generally accepted
accounting principles (GAAP), reviewed and/or audited by a
reputable accounting firm;
(c) All such books of account, records and documents related to
the statements provided under Sections 6(a) and 6(b) shall be
kept available by Licensee for at least two (2) years after
termination of this Agreement; and
(d) McMaster and its duly authorised representatives shall have
the right, upon giving Licensee ten (10) days notice, at its
own expense and during regular business hours, for the
duration of the Agreement and for two (2) years thereafter, to
inspect and audit Licensee's records relating to the
Technology licensed under this Agreement.
7. Patents. McMaster owns all of the patents and patent applications
identified as the Patent Rights, including all foreign counterparts
and continuation applications and reissued patents. McMaster shall
own all patent applications claiming improvements to the technology
disclosed in the Patent Rights, except those applications disclosing
improvements developed solely by the Licensee. Licensee will oversee
the prosecution and maintenance of all Patent Rights, including all
patents for McMaster improvements. The Licensee will bear all costs
for preparation, filing, prosecution and maintenance of the Patent
Rights, and in return will have the right to designate which
improvements should be patented and shall become a licensee of all
resulting McMaster improvement patents on the same terms as provided
in this Agreement without any further action required on the part of
either party. Should Licensee elect not to pursue patent protection
on one or more of the applications or patents in the Patent Rights,
or on a McMaster improvement (a "Nonelected Patent"), then McMaster
may assume all rights and responsibility for the Nonelected Patent,
and the Nonelected Patent shall be excluded from the Patent Rights
licensed hereunder. The Licensee will ensure proper patent marking
for all Licensed Products subject to patent protection as well as
provide copies of all correspondence to McMaster that are related to
the prosecution and maintenance of the Patent Rights, including all
patents and applications for McMaster improvements.
8. Further Assurances. At the request of the Licensee, McMaster will
use its best efforts to timely provide documents or information
required by Licensee to file, prosecute, or maintain all patent
applications giving rise to Patent Rights. Licensee shall execute
any documents, reasonably requested by McMaster
5
to confirm McMaster's and/or other inventors' rights in and to the
Technology and Patent Rights, and the respective rights of the
Licensee in the Technology and Patent Rights pursuant to this
Agreement. Licensee shall cooperate, at its expense, in connection
with the filing and prosecution of applications to register any
rights or interest in or to the Technology and Patent Rights.
9. Infringement.
(a) Notice Regarding Infringement. Each party shall inform the
other promptly in writing of any alleged infringement of the
Patent Rights or the Technical Information Rights by a third
party and of any available evidence thereof.
(b) Right of Licensee to Prosecute Suit. Licensee shall have the
right, but shall not be obligated, to prosecute at its own
expense all infringements of the Patent Rights and Technical
Information Rights. In furtherance of such right, McMaster
hereby agrees that Licensee may include McMaster as a party
plaintiff in any such suit, without expense to McMaster;
provided, however, that such right to bring such an
infringement action shall remain in effect only during such
time as this Agreement remains in effect. No settlement,
consent judgement or other voluntary final disposition of the
suit may be entered into as to the Patent Rights without the
consent of McMaster, which consent shall not unreasonably be
withheld. Licensee shall indemnify McMaster against any order
for costs that may be issued against McMaster in such
proceedings.
(c) Right of McMaster to Prosecute Suit. If within six (6) months
after having been notified of an alleged infringement,
Licensee shall have been unsuccessful in persuading the
alleged infringer to desist and shall not have brought an
infringement action, or if Licensee shall notify McMaster at
any time prior thereto of its intention not to bring suit
against any alleged infringer, then McMaster shall have the
right, but shall not be obligated, to prosecute at its own
expense any infringement of the Patent Rights. No settlement,
consent judgement or other voluntary final disposition of the
suit may be entered into that would result in invalidity of
any Patent Right licensed to Licensee hereunder without the
consent of Licensee, which consent shall not unreasonably be
withheld. In the event that Licensee withholds its consent,
Licensee shall indemnify McMaster against any costs associated
with the defence against claims of patent invalidity.
10. McMaster Representations and Warranties. McMaster warrants that it
has the power and authority to enter into this Agreement and has no
knowledge as to any third party claims regarding proprietary rights
in the Technology, Patent Rights or Technical Information Rights
which would interfere with the rights granted under this Agreement.
McMaster warrants that it owns all right, title and interest in the
Technology.
11. Licensee Representations and Warranties. Licensee hereby represents
and warrants as of the date hereof that:
(a) Licensee is a corporation duly organised and validly existing
under the laws of the Commonwealth of Massachusetts and has all
requisite corporate power and authority to execute, deliver and
perform its obligations under this Agreement and to consummate the
transactions contemplated hereby;
(b) Licensee has the full right and authority to enter into this
Agreement, including without limitation the right to grant the
licenses granted by it hereunder;
(c) Licensee acknowledges that it does not own the Patent Rights
listed at Schedule A; and
12. Disclaimer Of Warranties. EXCEPT FOR THE REPRESENTATIONS AND
WARRANTIES SET
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FORTH IN SECTIONS 10 AND 11 HEREOF, NOTHING CONTAINED IN THIS
AGREEMENT SHALL BE CONSTRUED AS: (A) A WARRANTY OR REPRESENTATION OF
EITHER PARTY AS TO THE VALIDITY, ENFORCEABILITY OR SCOPE OF ANY
INTELLECTUAL PROPERTY RIGHT LICENSED HEREUNDER; (B) A WARRANTY OR
REPRESENTATION THAT THE EXERCISE OF ANY OF THE RIGHTS GRANTED
HEREUNDER WILL BE FREE FROM INFRINGEMENT OF THE INTELLECTUAL
PROPERTY RIGHTS OF THIRD PARTIES; (C) AN AGREEMENT TO BRING OR
PROSECUTE ACTIONS OR SUITS AGAINST THIRD PARTIES FOR INFRINGEMENT;
OR (D) EXCEPT AS EXPRESSLY PROVIDED HEREIN, REQUIRING EITHER PARTY
TO FILE AN APPLICATION FOR PATENT, SECURE ANY PATENT OR MAINTAIN ANY
PATENT IN FORCE. EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY
MAKES ANY EXPRESS WARRANTIES AND EACH PARTY EXPRESSLY DISCLAIMS ANY
IMPLIED WARRANTIES INCLUDING, WITHOUT LIMITATION, THE IMPLIED
WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. MCMASTER MAKES NO WARRANTY AS TO THE SUFFICIENCY
OR SUITABILITY FOR LICENSEE'S USE OF THE PATENT RIGHTS OR THE
TECHNICAL INFORMATION RIGHTS, AND NEITHER PARTY ASSUMES ANY
RESPONSIBILITY OR LIABILITY FOR LOSS OR DAMAGES, WHETHER DIRECT OR
INDIRECT, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR SPECIAL, WHICH MAY
ARISE OUT OF THE OTHER PARTY'S USE OF SUCH INFORMATION OR
INTELLECTUAL PROPERTY TO DESIGN, MANUFACTURE OR FABRICATE PRODUCTS,
OR WHICH MAY ARISE OUT OF SUCH OTHER PARTY'S SALE OF SUCH PRODUCTS
DESIGNED, MANUFACTURED OR FABRICATED USING OR INCORPORATING SUCH
INFORMATION OR INTELLECTUAL PROPERTY, AND EACH PARTY SHALL BE SOLELY
RESPONSIBLE FOR THE QUALITY, PERFORMANCE, RELIABILITY AND SAFETY OF
PRODUCTS MANUFACTURED BY OR FOR SUCH PARTY.
13. Indemnification. Licensee shall at all times during the term of this
Agreement and thereafter, defend, indemnify and hold harmless
McMaster, its directors, officers, employees, agents and affiliates,
from and against any and all liability, damage, loss, cost or
expense of any kind whatsoever (including reasonable attorneys'
fees) incurred by or imposed upon McMaster in connection with any
and all claims, suits, actions, demands, proceedings, causes of
action or judgements (including, without limitation, product
liability claims) resulting from or arising out of the production,
manufacture, use, marketing or sale of Licensed Products or Licensed
Processes or Licensee's breach of any of its obligations hereunder.
McMaster shall promptly notify Licensee of any such claim(s) of
which McMaster is aware. Licensee, at Licensee's sole expense, shall
maintain control and direction of the defence of such claims brought
against McMaster, provided, however, that McMaster shall have the
right to participate in such defence at McMaster's expense. McMaster
agrees to provide Licensee with any and all reasonable assistance
which Licensee may request in connection with its defence of such
claims.
14. Insurance. Prior to any use of a Licensed Product in humans, the
Licensee will be required to obtain insurance in amounts and on
terms that are customary for companies in the biotechnology industry
who are creating diagnostic and therapeutic compounds for
administration to humans. Insurance shall be maintained as long as
Licensed Products are administered to human subjects. If any
sublicenses are granted, sublicensees will also be required to
obtain similar insurance.
15. Confidentiality. Confidential Information shall be developed,
received and used by the Parties solely in furtherance of the
purposes set forth in this Agreement subject to the terms and
conditions set forth in this Section 15.
(a) Subject to the limitation set for the in paragraph (b) below,
the Parties shall keep and use all of the Confidential
Information in confidence and will not, without the prior
written consent of the other Party, disclose any Confidential
Information to any person or entity, except those of the
Parties' officers, employees and professional advisors who
require said Confidential Information in
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performing their obligations under this Agreement. The Parties
covenant and agree to initiate and maintain appropriate
internal programs limiting the internal distribution of the
Confidential Information to only those officers, employees,
researchers and professional advisors who require said
Confidential Information to perform their obligations under
this Agreement.
(b) Notwithstanding the restrictions detailed in Section 15(a),
Licensee shall have the right to disclose any or all
Confidential Information, without prior notice or consent of
McMaster, as may be required by any regulatory authority,
including, e.g., but not limited to, the United States
Securities and Exchange Commission, or the U.S. Food and Drug
Administration. Where available, Licensee shall request
confidential treatment of certain Confidential Information. (
c) If a Party is required by judicial or administrative process
to disclose any or all of the Confidential Information, the
Party shall promptly notify the other Party and allow if
possible the other Party reasonable time to oppose such
process before disclosing any Confidential Information.
16. Term. Unless sooner terminated pursuant to paragraphs (a) or (b)
below, the license herein granted shall commence on the Effective
Date of this Agreement and continue until the last to expire of any
Patent Rights.
(a) Licensee shall have the right to terminate the license herein
granted upon at least three (3) months written notice of such
termination to McMaster.
(b) McMaster shall have the right to terminate the license herein
granted for any of the following reasons:
(i) for any breach by Licensee of any of its obligations
contained in this Agreement, which breach is not cured
within thirty (30) days after written notice thereof by
McMaster except that, where it is not possible to cure
the breach within the said thirty (30) day period, this
Agreement shall not be terminated if the Licensee has
commenced to cure the breach within the said thirty (30)
day period and proceeds diligently thereafter to cure
the breach no later then a further sixty (60) days
thereafter;
(ii) Licensee fails to meet any of its payments or
performance requirements as provided in Section 4; or
(iii) bankruptcy or insolvency of Licensee or the appointment
of a receiver or liquidator to take charge of the
affairs of Licensee or the making of an assignment for
the benefit of Licensee's creditors or the equivalent of
any such proceedings or acts (whether known by some
other name or term), effective immediately upon written
notice to Licensee.
17. Termination. The following provisions shall take effect upon the
termination of this license:
(a) such termination shall not release Licensee from its
obligations with respect to the any payment accrued pursuant
to Section 4 up to the date of termination;
(b) Licensee shall forthwith following such termination deliver to
McMaster a complete and accurate schedule of Licensee's
inventory of completed and uncompleted Licensed Products on
hand and all unfilled orders for the purchase of Licensed
Products;
(c) Licensee may sell its inventory of work in progress and
Licensed Products on hand on the date of termination but only
pursuant to the terms of this Agreement;
(d) Licensee shall forthwith, and no later than thirty (30) days
after termination, return free of charge to McMaster all
written information and documents of whatever kind; including
technical data, manuals, reports and programs only to the
extent that it embodies, contains or specifically relates to
the
8
Technology; and
(e) The following obligations under this Agreement, strictly and
only in accordance with their express terms shall survive
termination of this agreement: Sections 2; 6(c); 6(d); 10;
11(c); 13; 14; and 15.
18. No Waiver. The failure of either party to exercise their rights
herein upon the occurrence of any breach by the other party of its
obligations shall not in any event constitute a waiver of such
rights if any such breach by the other party should reoccur.
19. Assignment. This Agreement and all its rights and privileges
hereunder may not be assigned by either party without the prior
written consent of the other party, which consent shall not be
unreasonably withheld. This Agreement and everything herein
contained shall inure to the benefit of and be binding upon each of
the parties hereto and upon their respective successors and
permitted assigns.
20. Construction; Interpretation. This Agreement shall be construed in
accordance with the laws of the Province of Ontario. This Agreement
was written in English, and the English language shall control
interpretation of this Agreement.
21. Dispute Resolution. McMaster and the Licensee shall use their best
efforts to settle in a fair and reasonable manner any dispute
arising in connection with this Agreement. If such dispute cannot be
settled by the parties between themselves, it shall be first
submitted to mediation by a mediator chosen jointly by the parties.
In the event that mediation does not bring a resolution of the
dispute within thirty (30) days, the dispute shall be submitted to
arbitration before a single arbitrator pursuant to the Arbitration
Act of Ontario and the schedules thereto (as amended from time to
time).
22. Relationship Between the Parties. The parties are not and shall not
be considered to be joint venturers, partners or agents of each
other and neither of them shall have the power to bind or obligate
the other except as set forth in this Agreement. Not withstanding
the foregoing, this Agreement shall be a collaboration for the
purposes of 35 U.S.C. 103(c).
23. Notice. All notices, demands or other communications required to be
made or given pursuant to the terms of this Agreement shall be in
writing and shall be delivered personally, by courier or by prepaid
first class post, to the parties at their respective addresses as
hereinafter set out, or such other addresses as the parties may
subsequently advise in writing. The following shall be the addresses
for the delivery of notices to each of the parties:
McMaster: McMaster University - Office of Research
Contracts and Intellectual Property
0000 Xxxx Xxxxxx West, MIP 100
Xxxxxxxx, Xxxxxxx X0X 0X0
Attention: Executive Director
Licensee: Xxxx XxXxxx
Chief Operating Officer
Molecular Insight Pharmaceuticals, Inc.
000 Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
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IN WITNESS WHEREOF the parties hereto, intending to be bound by the terms and
conditions specified herein, have caused this Agreement to be executed by their
duly authorized representatives.
MCMASTER UNIVERSITY
/s/ Xxxxxx Xxx Date: Dec. 8, 2006
------------------------------------------ --------------------------
Name: Xxxxxx Xxx
Title: Interim Director
MOLECULAR INSIGHT PHARMACEUTICALS, INC.
/s/ Xxxx XxXxxx Date: Dec. 6, 2006
------------------------------------------ --------------------------
Name: Xxxx XxXxxx
Title: Chief Operating Officer
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SCHEDULE A
COUNTRY
REFERENCE APPLICATION OR FIRST NAMED
SERIAL NO. REGION INVENTOR TITLE
---------------------------------------------------------------------------------------------
346715-0562 60/419739 USA Valliant et al. METHODS FOR PURIFYING
(BSA-01760) RADIOLABELED COMPOUNDS
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346715-0563 2003301432 AU Valliant et al. METHODS FOR PURIFYING
(BSA-01740) RADIOLABELED COMPOUNDS
---------------------------------------------------------------------------------------------
346715-0564 2502358 CA Xxxxxxxx et al. METHODS FOR PURIFYING
(BSA-01750) RADIOLABELED COMPOUNDS
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346715-0565 03809042.9 XX Xxxxxxxx et al. METHODS FOR PURIFYING
(BSA-01780) RADIOLABELED COMPOUNDS
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346715-0566 2004-545341 XX Xxxxxxxx et al. METHODS FOR PURIFYING
(BSA-01730) RADIOLABELED COMPOUNDS
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346715-0567 PCT/US2003/32721 PCT Valliant et al. METHODS FOR PURIFYING
(BSA-01725) RADIOLABELED COMPOUNDS
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346715-0568 10/686950 USA Valliant et al. METHODS FOR PURIFYING
(BSA-01701) RADIOLABELED COMPOUNDS
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