AMENDMENT TO TECHNOLOGY TRANSFER AGREEMENT
BETWEEN ANTI-GENE DEVELOPMENT GROUP AND ANTIVIRALS INC.
This Amendment to the Technology Transfer Agreement dated February 9, 1992 but
executed on February 9, 1993 (the TT Agreement or the 1993 TT Agreement) between
ANTI-GENE DEVELOPMENT GROUP and ANTIVIRALS Inc. (Amendment) is by and between
ANTI-GENE DEVELOPMENT GROUP (AGD), an Oregon limited partnership, and ANTIVIRALS
Inc. (AVI), an Oregon corporation.
RECITALS
A. As per the terms of the 0000 XX Agreement, hereby incorporated by
reference herein, AGD (Seller) is due Purchase Price payments from AVI (Buyer)
in the amount of 4.051 percent of Sales of Products after the first two hundred
million dollars in total cumulative worldwide Sales by Buyer and Buyer
Affiliates collectively.
B. AVI wishes to have Purchase Price payments reduced on Sales of
diagnostic products.
C. AGD wishes to receive Purchase Price payments for diagnostic products
and research products due upon AVI's sale of such products without regard to the
two hundred million dollars exemption referred to in Recital A, and otherwise
pursuant to the payment schedules and procedures set forth in this Amendment and
in the TT Agreement.
D. AGD wishes to obtain from AVI a royalty-bearing license for
small-scale products and a royalty-bearing license for diagnostic products.
AGREEMENT TO AMEND
In consideration of the above and as provided in Section 14.7 of the TT
Agreement, AGD and AVI agree to amend the TT Agreement as set forth below.
1. TT AGREEMENT TERMS. All capitalized terms not defined in this
Amendment shall have the meanings assigned to such terms in the TT Agreement or
its Exhibits.
2. TT AGREEMENT DEFINITIONS.
2.1 BUYER AFFILIATE. Section 1.1 of the TT Agreement is hereby
amended to read in its entirety as follows:
"Buyer Affiliate" shall mean Buyer's Licensees and any other entity
that controls, is controlled by, or is under common control with
Buyer or Buyer's Licensees, except that Seller and any direct
licensee of Seller shall not be deemed to be a Buyer Affiliate.
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2.2 NEW DEFINITIONS. Section 1 of the TT Agreement is hereby
amended to include the following definitions:
1.20 "Therapeutic Product" shall mean a Product, as defined in
the TT Agreement, which is approved for use in, or is used in a
human or other animal to achieve a therapeutic or prophylactic
effect.
1.21 "Diagnostic Product" shall mean a Product, as defined in
the TT Agreement, which is approved for, or is used for detecting
and/or quantitating in a biological specimen outside any animal
body one or more selected nucleic acid sequences.
1.22 "Research Product" shall mean a Product, as defined in the
TT Agreement, which is not classed as a Therapeutic Product or a
Diagnostic Product.
1.23 "Small-Scale Product" shall mean a Product and AVI
Improvements relating thereto--including adducts for enhancing
delivery and cell entry, as defined in the TT Agreement, which
meets all of the following requirements: 2(i) is produced in a lot
size of less than 1 gram; 2(ii) is sold by any entity for research
purposes only;
1.24 The terms "Seller's Affiliate" and "AGD Affiliate" are
synonymous, and are understood and intended to mean, any entity
that controls, is controlled by, or is under common control with,
AGD, but only if Xxxxx X. Xxxxxxxxx (i) controls AGD and such AGD
Affiliate; and (ii) is an acting key policy decision maker and
manager of AGD and such AGD Affiliate. For purposes of this
paragraph, to "control" an entity means to own greater than 50%
of the ownership interests with commensurate voting power in such
entity.
3. TT AGREEMENT PURCHASE PRICE. Section 4.2(b) of the TT Agreement is
hereby amended to read in its entirety as follows:
(b) If Seller does distribute an undivided interest in
the Intellectual Property to Buyer in liquidation of its Interests
pursuant to Section 2.2, the Purchase Price set forth in Section 4.2(a)
shall be (i) with respect to Therapeutic Products, reduced pro rata to
reflect Seller's reduced ownership interest in the Intellectual Property
resulting from the liquidating distribution; and (ii) with respect to
Diagnostic Products and
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Research Products, a flat 2.00 percent. By way of example, if Buyer
tenders for liquidation fifty (50.000) percent of the Interests
outstanding as of the Closing, Seller shall distribute in liquidation of
Buyer's Interests an undivided one-half ownership interest in the
Intellectual Property and Seller will retain an undivided one-half
ownership interest. The Purchase Price for a Therapeutic Product shall
be reduced by half so that Buyer will pay four (4.00000) percent of the
total Sales of Products under Section 4.2(a). The Purchase Price for a
Diagnostic or Research Product shall remain two (2.00000) percent
regardless of the Interests liquidated.
4. RIGHT OF FIRST REFUSAL. A new Section 4.9 is added to the TT Agreement,
which Section reads in its entirety as follows:
4.9 RIGHT OF FIRST REFUSAL. Buyer shall have the right of first refusal
to purchase a controlling interest or any interest in any AGD Affiliate
upon any proposed change in ownership in such entity that would result in
Xxxxx X. Xxxxxxxxx losing control over such entity ("Triggering Event").
Transfers of interests by Xxxxx X. Xxxxxxxxx to Xxxxxxxxx'x children,
Xxxxx X., Xxxx and/or Xxxxxx Xxxxxxxxx, shall not be considered a
Triggering Event, and shall not give rise to Buyer's right of first
refusal hereunder, but transfers by such children transferees to parties
other than Xxxxx X. Xxxxxxxxx would constitute a Triggering Event. Such
rights of first refusal shall be exercised as follows: Xxxxx X. Xxxxxxxxx
or his children transferees (hereafter "Summerton") shall give written
notice (the "Notice") of Summerton's desire to sell such interests prior
to the sale, and the parties shall seek to determine the interest price
as quickly as reasonably possible after such Notice. The price of the
interests shall be (i) the price offered by the proposed transferee in
good faith and at arm's length; or (ii) if there is no proposed
transferee or no terms have been offered by a proposed transferee, the
price as determined by a neutral third party appraiser acceptable to both
the AGD Affiliate and Buyer; or (iii) if a price has not been determined
pursuant to the preceding subsections (i) or (ii), or the parties
otherwise agree, a price mutually agreeable to both Buyer and the AGD
Affiliate. If Buyer elects not to acquire the interests specified in the
Notice, Summerton may sell such interests within the 60 day period
following the parties' determination of the interest price, provided that
the sale of such interests shall only occur at no less than the interest
price as determined according to this paragraph. Once an AGD affiliate
has obtained the SS license from AGD, Summerton's loss of control of AGD
affiliate will not terminate this license.
5. REPORTS. Section 4.3 of the TT Agreement is hereby amended to read in its
entirety as follows:
Within sixty (60) days after the end of each calendar quarter,
for so long as Products are covered by unexpired Patents, Buyer shalt
provide Seller with a written report setting forth the total amount of
each Product sold by Buyer and Buyer Affiliates during the quarter, to
whom the Products were sold, the gross invoice amount for each Sale, and
the amount of any returns. At the time the report is made, Buyer shall
pay Seller any amounts payable pursuant to this Section 4.
6. RECORDS. Section 4.4 of the TT Agreement is hereby amended to read in its
entirety as follows:
Buyer shall maintain records concerning Sales of Products
sufficient to enable Seller to verify the amounts payable under this
Agreement. Seller shall have the right, through an independent auditor,
to examine such records that concern Sales of Products once in any given
calendar year. Seller shall bear all expenses associated with such
audits.
7. COMMENCEMENT OF PAYMENT OBLIGATIONS. Section 4.6 of the TT Agreement is
hereby amended to read in its entirety as follows:
The first two hundred million dollars ($200,000,000) in total
cumulative worldwide Sales of Therapeutic Products by Buyer and Buyer
Affiliates, collectively, are exempt from Purchase Price payments.
All Sales of Diagnostic Products and Research Products by Buyer and Buyer
Affiliates are subject to Purchase Price Payments as of the initial Sale
without regard to any exemption.
8. NEW SCHEDULES. Section 9.1 of the TT Agreement is hereby amended to read
in its entirety as follows:
Buyer and Seller shall execute a License and Option Agreement shown
in SCHEDULE 9.1. In addition, the parties hereby enter into a License
for Small-Scale Products, attached hereto as Schedule 9.1.1 and a License
for Diagnostic Products and Improvements, attached hereto as Schedule
9.1.2.
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9. SCHEDULE 9.1 DEFINITIONS. Schedule 9.1, Section 1.3 of the TT Agreement
is hereby amended to read in its entirety as follows:
"AGD Improvements" shall mean Improvements developed by AGD after the
effective date of this Agreement but before January 1, 1998, and which AGD
has the right to sublicense to AVI.
10. SCHEDULE 9.1 AVI IMPROVEMENTS. Schedule 9.1, Section 1.6 of the TT
Agreement is hereby amended to read in its entirety as follows:
"AVI Improvements" shall mean Improvements developed by AVI after the
effective date of this Agreement but before January 1, 1998, and which AVI
has the right to sublicense to AGD.
11. SCHEDULE 9.1 AGD IMPROVEMENTS. Schedule 9.1 of the original TT Agreement
is hereby amended to include a new Section 2.4 which reads in its entirety as
follows:
Improvements to the Technology made by AGD and its licensees under
the Research and Development License to AGD will be defined as "AGD
Improvements" which are to be made available to AVI under the terms of
Section 5 of this Schedule 9.1 of the TT Agreement.
12. SCHEDULE 9.1 CROSS LICENSES. Section 5 of Schedule 9.1 of the original TT
Agreement is amended as follows:
12.1. Change in Title. The title of Section 5 of Schedule 9.1 is hereby
amended to read in its entirety as follows:
5. License to AVI and Cross Licenses of Improvements.
12.2. Change in Numbering of Section 5.4. Section 5.4 of Schedule 9.1,
relating to the confidentiality of AGD improvements, is hereby renumbered 5.5
and is otherwise left intact.
12.3. New Section 5.4. A new Section 5.4 is hereby added to Schedule
9.1, which reads in its entirety as follows:
5.4 The parties grant each other the following cross-licenses. AGD
agrees to grant to AVI a royalty-free non-exclusive license to make, use,
sell, and sublicense any improvements made by AGD before January 1, 2000
relating to preparation of Morpholino subunits and/or assembly of said
subunits into Morpholino polymers. AVI agrees to grant to AGD a
royalty-free non-exclusive license to make, use, sell, and sublicense any
improvements made by AVI before January 1, 2000 relating to preparation of
Morpholino subunits and/or assembly of said subunits into Morpholino
polymers.
IN WITNESS WHEREOF, the parties hereby execute this Amendment to the
Technology Transfer Agreement, effective as of the later of the dates of
signature by the representatives of AVI and AGD below.
ANTIVIRALS Inc.
By: /s/ Xxxxx Xxxxxx
----------------------------------
Xxxxx Xxxxxx, Ph.D.
Chief Executive Officer
Date: 1/20/97
ANTI-GENE DEVELOPMENT GROUP
By: /s/ Xxxxx X. Xxxxxxxxx
----------------------------------
Xxxxx X. Xxxxxxxxx, Ph.D.
Sole General Partner
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Date: January 20, 1997
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SCHEDULE 9.1.1
License for Small-Scale Products
1. SMALL-SCALE PRODUCTS LICENSE TO AGD
AVI hereby grants to AGD a license to Small-Scale Products (SS Products),
with right to sublicense to AGD Affiliates, to make, have made, use, and sell SS
Products, and to make, have made, and use subunits and other components in
amounts not to exceed that required for assembly and use of SS Products. This
license (the "SS Product License") is to be exclusive with respect to, and only
with respect to selling SS Products. AGD and AGD Affiliates agree to label
all SS products with the phrase "Not for use in humans."
2. ROYALTY
AGD shall pay AVI as a royalty four (4.00) percent of the total Sales of
SS Products sold by AGD and AGD Affiliates, where Sales of SS Products shall
mean total worldwide sales of SS Products by AGD and AGD Affiliates to any
entity other than AGD and AGD Affiliates at the Gross Invoice Amount minus
returns, where returns comprise compensation to the purchaser of the SS
Product for SS Products returned to AGD or AGD Affiliates. Gross Invoice
Amount shall mean all money and other valuable consideration paid to AGD and
AGD Affiliates in exchange for SS Products.
3. INFORMATION FOR MAKING AND USING SS PRODUCTS
Unless requested earlier by AGD, in December of 1997 AVI will convey to
AGD written "Information for Making and Using SS Products." This Information
for Making and Using SS Products shall comprise the best ways known to AVI to
make and use SS Products as of the date of conveyance of said Information for
Making and Using SS Products. No other rights to transfer information
concerning any other AVI Improvements are implied or granted by this SS
Products License. If AGD shares information on AVI Improvements other than
"Information for Making and Using SS Products," with a sublicensee for SS
Products, except where expressly allowed by a separate AVI license to AGD,
that sublicensee shall also be considered to be a Research and Development
Licensee and any and all Improvements to the Technology made by that
sublicensee will be defined as AGD improvements which are to be made
available to AVI under the terms of Section 5 of Schedule 9.1 of the TT
Agreement.
4. CONFIDENTIALITY OF INFORMATION
AGD may not disclose the Technology or any AVI Improvements described in
the Information for Making and Using SS Products that are not in the public
domain unless: (a) the recipient has entered into a written agreement
acceptable to AVI under which the recipient agrees to restrictions on
disclosure, use and transfer of the Technology and AVI Improvements, and (b)
AVI has consented in writing to the disclosure, use, and transfer, which
consent shall not be unreasonably withheld.
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5. EXEMPTION
AVI's provision of Small-Scale Products to a for-profit entity as part of a
contract which includes testing and assessment of Products by said for-profit
entity, where said contract is for an amount not less than $100,000, shall not
be construed as infringing the "exclusive with respect to selling SS Products"
clause of this SS Products license to AGD. It is understood that AVI is free to
provide SS Products to any of its collaborators at no charge (including, without
limitation in arrangements such as the 1995 option arrangement with Xxxxxx
Laboratories). Further, it is understood that AVI may sell SS Products to a
given collaborator is those sales are part of a contract with a value of not
less than $100,000 for the purchase of SS Products.
6. EFFECTIVE DATE
The effective date of this SS Products License shall be when both AVI and
AGD have signed the Amendment to which this is Schedule 9.1.1, except that the
exclusivity of the SS Product License granted to AGD under Section 1 above will
only become effective at the time AGD or AGD Affiliate demonstrates a capability
to prepare at lease 10 different 20-mer Morpholino polymers in a 2 week period
and two such representative Morpholino polymers exhibit on a per mass basis in a
cell-free translation system at least 60% of the efficacies of corresponding
highly-purified Morpholino polymers prepared by AVI.
7. TERMINATION OF PAYMENT OBLIGATIONS
AGD's obligation to make royalty payments to AVI for any given SS Product
shall end upon the expiration of all AVI patents claims that cover that SS
Product.
8. TERMINATION OF SS PRODUCT LICENSE
Either party may terminate this SS Products License for any material
breach by the other party that remains uncured 90 days after that party
receives notice of the breach from the non-breaching party, except that if a
dispute arises with respect to AGD's payment of royalties, AVI shall be
entitled to terminate this SS Products License only after the arbitration
process set forth in Section 14.
9. OBLIGATION TO EXPLOIT
Subsequent to the year 1999 AGD must pay AVI a royalty of at least $10,000
per year for this SS Products License. If the royalty paid is less than this
amount the exclusivity granted to AGD to the SS Product License under Section 1
shall automatically terminate.
10. DISCLAIMER OF WARRANTY
AVI makes no warranty whatsoever, express or implied, including without
limitation a warranty of merchantability or fitness, with respect to Technology,
AVI Improvements, or SS Products licensed to AGD pursuant to this Amendment,
which SS Products AGD takes "as is".
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11. REPORTS
Within sixty (60) days after the end of each calendar quarter, for so
long a SS Products are covered by unexpired AVI Patents, AGD shalt provide
AVI with a written report setting forth the total amount of each Product sold
by AGD and AGD Affiliates during the quarter, the gross invoice amount for
each Sale, and the amount of any returns. At the time the report is made, AGD
shall pay AVI any amounts payable pursuant to this SS Products License.
12. RECORDS
AGD shall maintain records concerning Sales of SS Products sufficient to
enable AVI to verify the amounts payable under this SS Products License. AVI
shall have the right, through an independent auditor, to examine such records
that concern Sales of SS Products once in any given year. AVI shall bear all
expenses associated with such audits.
13. LATE PAYMENTS
If AGD fails to make any royalty payments due to AVI from this SS
Products License when due, AGD shall pay AVI interest on the amount past due
at a rate equal to the "Prime Rate" reported in the Wall Street Journal on
the date payment is due, plus 7.5% per annum.
14. PAYMENT DISPUTES
(a) Any dispute between the parties concerning payment of royalty payments
on this SS Products License shall be settled by binding arbitration in
accordance with the rules of the American Arbitration Association. The
arbitration shall be held in Portland, Oregon before three (3) arbitrators
who are knowledgeable about the industry and markets for the SS Products.
Judgment upon the arbitrators' award may be entered in any court having
jurisdiction. This agreement to arbitrate shall apply only to disputes
concerning royalty payments in this SS Products License and shall not prevent
either party from seeking judicial relief in connection with other matters
relating to this SS Product License. The prevailing party in any such
arbitration proceeding shall be entitled to recover reasonable costs and
attorneys fees at the arbitration and in connection with any judicial
proceeding to enforce the arbitration award.
(b) If AVI believes AGD has refused to make royalty payments in bad faith,
AVI may request that the arbitrators make a finding of AGD's bad faith
refusal to pay. The parties agree that such a finding of bad faith shall not
be made unless there is clear and convincing evidence that AGD knew the
payment was owing and refused to make the payment. AGD may appeal any finding
of bad faith to any court having jurisdiction and the court shall review any
finding of bad faith de novo.
(c) If the arbitrators make a finding of bad faith under Section 14(b) above
in three (3) separate proceedings relating to three (3) separate payment
disputes involving SS Products in a single year, AVI shall have the right,
upon notice to AGD, to terminate this SS Products License.
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15. CHOICE OF LAW
The construction and performance of this SS Products License will be
governed by the laws of the state of Oregon (except for conflicts of law
provisions thereof.)
16. EXPENSES
Each party to this SS Products License shall pay its own expenses
incident to the negotiation, execution, delivery and performance of this SS
Products License.
17. NOTICES
Any notice or other communication required or permitted under this
Agreement shall be in writing and shall be sent by certified mail, return
receipt requested, or by hand delivery:
If to AVI, to the following address:
ANTIVIRALS Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxxx Xxxxxx
With a copy to:
ANTIVIRALS Inc.
0000 XX Xxxxxxxx Xxx, Xxxxx 000
Xxxxxxxxx, Xxxxxx 00000
Attention: Xxxx Xxxxxxx
If to AGD, to the following address:
ANTI-GENE DEVELOPMENT GROUP
Attention: Xxxxx X. Xxxxxxxxx
P.O. Box 2210
Xxxxxxxxx, Xxxxxx 00000
With a copy to:
Xxxxx X. Xxxxxxxxx
General Partner of AGDG
0000 X.X. Xxxxxxx Xx.
Xxxxxxxxx, Xxxxxx 00000
Unless otherwise provided in this SS Products License, all notices and
communications shall be deemed to have been duty given or made (i) When
delivered by hand, (ii) five business days after being deposited in the U.S.
mail, postage prepaid, as registered or certified mail, return receipt
requested. The address to which notices or other communications shall be
directed may be changed from time to time by any party by giving written
notice to the other parties of the substituted address.
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18. ATTORNEY FEES
If a suit or action is filed by either party to enforce the provisions
of this SS Products License, or otherwise with respect to the subject matter
of this SS Products License, the prevailing party shall be entitled to
recover reasonable attorneys' fees and expenses (including, but not limited
to those fees and expenses permitted or defined by statute) as fixed by the
trial court, and if any appeal is taken from the decision of the trial court,
as affixed by the appellate court.
19. SUCCESSORS AND ASSIGNS
This SS Products License will be binding upon and inure to the benefit
of each of the parties and its successors and assigns; provided that no party
may assign its rights under this SS Products License agreement without the
consent of the other party, which consent shall not unreasonably be withheld.
20. AMENDMENT
No supplement, modification or amendment of, or waiver with respect to,
this SS Products License shall be binding unless executed in writing. This SS
Product License agreement may be modified, amended, or terminated upon the
written agreement of both parties.
21. CONSENTS
Any consent required by this SS Products License shall be effective only
if given in a writing executed by the party giving the consent.
22. HEADINGS
The headings in this SS Products License are solely for convenience of
reference and shall not limit or otherwise affect the meaning of this SS
Products License.
23. SEVERABILITY
If any part of this SS Products License is found invalid or unforceable,
it shall be enforced to the maximum extent permitted by law, and other parts
of this SS Products License will remain in force.
24. ENTIRE LICENSE
This SS Products License, whose terms comprise Schedule 9.1.1 of the
1997 Amendment to the 0000 XX Agreement between AGD and AVI, constitutes the
entire license pertaining to SS Products and supersedes all prior agreements
and understandings of the parties in connection therewith. No covenant,
representation or condition not expressed in this SS Products License will
affect or be effective to interpret, change or restrict, the express
provisions of this SS Products License.
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SCHEDULE 9.1.2
License for Diagnostic Products and Improvements
1. AVI GRANT OF DIAGNOSTIC PRODUCTS AND IMPROVEMENTS LICENSE TO AGD
AVI grants to AGD a non-exclusive license (the "DPI license"), with right
to sublicense to AGD Affiliates, to the Diagnostic Products and AVI Improvements
relating thereto, as defined in the 0000 XX Agreement and the 1997 amendment
thereto. The DPI license is to make, have made, use, and sell Diagnostic
Products and AVI Improvements relating thereto (DPI), and to make, have made,
and use subunits and other components of DPI in amounts not to exceed that
required for assembly and use of DPI. AVI also grants to AGD the right to
develop and patent "undeveloped AVI ideas relating to diagnostics" (Undeveloped
Ideas), where Undeveloped Ideas are defined as AVI ideas relating to diagnostics
which have not been reduced to practice as of the effective date of this DPI
license. This right to develop and patent Undeveloped Ideas is non-exclusive
and is only effective if "develop and patent" includes an actual reduction to
practice. The right to develop and patent the Undeveloped Ideas shall not
eliminate AGD's responsibility to pay royalties upon the sale of any DPI as set
forth in Section 2 below.
2. ROYALTY
AGD shall pay AVI as a royalty four (4.00) percent of the total Sales of
DPI sold by AGD and AGD Affiliates, where Sales of DPI shall mean total
worldwide sales of DPI by AGD and AGD Affiliates to any entity other than AGD
and AGD Affiliates at the Gross Invoice Amount minus returns, where returns
comprise compensation to the purchaser of the DPI for DPI returned to AGD or AGD
Affiliates. Gross Invoice Amount shall mean all money and other valuable
consideration paid to AGD and AGD Affiliates in exchange for DPI.
3. INFORMATION FOR MAKING AND USING DIAGNOSTIC PRODUCTS AND AVI IMPROVEMENTS
RELATING THERETO (DPI INFORMATION)
Upon request by AGD, but not later than December 1997, AVI will convey to
AGD written DPI Information. This DPI Information shall comprise only the
specific information described in Exhibit A. No other rights to transfer
information concerning any other AVI Improvements are implied or granted by this
DPI license. If AGD shares information on AVI Improvements other than "DPI
Information," with a sublicensee for DPI, except where expressly allowed by a
separate AVI license to AGD, that sublicense shall also be considered to be a
Research and Development licensee and any and all Improvements to the Technology
made by that sublicensee will be defined as AGD Improvements which have to be
made available to AVI under the terms of Section 5 of Schedule 9.1 of the TT
Agreement.
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4. CONFIDENTIALITY OF DPI INFORMATION
AGD may not disclosed the Technology or any AVI Improvements described in
the DPI Information that are not in the public domain unless: (a) the recipient
has entered into a written agreement acceptable to AVI under which the recipient
agrees to restrictions on disclosure, use and transfer of the Technology and AVI
Improvements, and (b) AVI has consented in writing to the disclosure, use, and
transfer, which consent shall not be unreasonably withheld.
5. EFFECTIVE DATE
The effective date of this DPI license shall be the date when both AVI and
AGD have signed the Amendment to which this is Schedule 9.1.2.
6. TERMINATION OF PAYMENT OBLIGATIONS
AGD's obligation to make royalty payments to AVI for any given DPI shall
end upon the expiration of all AVI patents containing claims that cover that
DPI.
7. TERMINATION OF DPI LICENSE
Either party may terminate this DPI License for any material breach by the
other party that remains uncured 90 days after that party receives notice of the
breach from the non-breaching party, except that if a dispute arises with
respect to AGD's payment of royalties, AVI shall be entitled to terminate this
DPI license only after the arbitration process set forth in Section 12.
8. DISCLAIMER OF WARRANTY
AVI makes no warranty whatsoever, express or implied, including without
limitation a warranty of merchantability or fitness, with respect to Technology,
AVI Improvements, or DPI licensed to AGD pursuant to this Amendment, which AVI
Improvements or DPI AGD takes "as is".
9. REPORTS
Within sixty (60) days after the end of each calendar quarter, for so long
as DPI are covered by unexpired AVI Patents, AGD shall provide AVI with a
written report setting forth the total amount of each DPI sold by AGD and AGD
Affiliates during the quarter, the gross invoice amount for each Sale, and the
amount of any returns. At the time the report is made, AGD shall pay AVI any
amounts payable pursuant to this DPI license.
10. RECORDS
AGD shall maintain records concerning Sales of DPI sufficient to enable AVI
to verify the amounts payable under this DPI license. AVI shall have the right,
through an independent auditor, to examine such records that concern Sales of
DPI once in any given year. AVI shall bear all expenses associated with such
audits.
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11. LATE PAYMENTS
If AGD fails to make any royalty payments due to AVI from this DPI license
when due, AGD shall pay AVI interest on the amount past due at a rate equal to
the "Prime Rate" "Prime Rate" reported in the Wall Street Journal on the date
payment is due, plus 7.5% per annum.
12. PAYMENT DISPUTES
(a) Any dispute between the parties concerning payment of royalty payments on
this DPI license shall be settled by binding arbitration in accordance with the
rules of the American Arbitration Association. The arbitration shall be held in
Portland, Oregon, before three (3) arbitrators who are knowledgeable about the
industry and markets for diagnostics. Judgment upon the arbitrators' award may
be entered in any court having jurisdiction. This agreement to arbitrate shall
apply only to disputes concerning royalty payments on this DPI license, and
shall not prevent either party from seeking judicial relief in connection with
other matters relating to this DPI license. The prevailing party in any such
arbitration proceeding shall be entitled to recover reasonable costs and
attorneys fees at the arbitration and in connection with any judicial proceeding
to enforce the arbitration award.
(b) If AVI believes AGD has refused to make royalty payments in bad faith, AVI
may request that the arbitrators make a finding of AGD's bad faith refusal to
pay. The parties agree that such a finding of bad faith shall not be made
unless there is clear and convincing evidence that AGD knew the payment was
owing and refused to make the payment. AGD may appeal any finding of bad faith
to any court having jurisdiction and the court shall review any finding of bad
faith de novo.
(c) If the arbitrators make a finding of bad faith under Section Section 12(b)
above in three (3) separate proceedings relating to three (3) separate payment
disputes involving DPI in a single year.
13. CHOICE OF LAW
The construction and performance of this DPI license will be governed by
the laws of the state of Oregon (except for conflicts of law provisions
thereof).
14. EXPENSES
Each party to this DPI license shall pay its own expenses incident to the
negotiation, execution, delivery and performance of this DPI license.
15. NOTICES
Any notice or other communication required or permitted under this
Agreement shall be in writing and shalt be sent by certified mail, return
receipt requested, or by hand delivery.
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If to AVI, to the following address:
ANTIVIRALS Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxxx Xxxxxx
With a copy to:
ANTIVIRALS Inc.
0000 XX Xxxxxxxx Xxx, Xxxxx 000
Xxxxxxxxx, Xxxxxx 00000
Attention: Xxxx Xxxxxxx
If to AGD, to the following address:
ANTI-GENE DEVELOPMENT GROUP
Attention: Xxxxx X. Xxxxxxxxx
P.O. Box 2210
Xxxxxxxxx, Xxxxxx 00000
With a copy to:
Xxxxx X. Xxxxxxxxx
General Partner of AGDG
0000 X.X. Xxxxxxx Xx.
Xxxxxxxxx, Xxxxxx 00000
Unless otherwise provided in this DPI license, all notices and communications
shall be deemed to have been duly given or made (i) when delivered by hand, (ii)
five business days after being deposited in the U.S. mail, postage prepaid, as
registered or certified mail, return receipt requested. The address to which
notices or other communications shall be directed may be changed from time to
time by any party by giving written notice to the other parties of the
substituted address.
16. ATTORNEY FEES
If a suit or action is filed by either party to enforce the provisions of
this DPI license, or otherwise with respect to the subject matter of this DPI
license, the prevailing party shall be entitled to recover reasonable attorneys'
fees and expenses (including, but not limited to those fees and expenses
permitted or defined by statute) as fixed by the trial court, and if any appeal
is taken from the decision of the trial court, as affixed by the appellate
court.
17. SUCCESSORS & ASSIGNS
This DPI license will be binding upon and inure to the benefit of each of
the parties and its successors and assigns; provided that no party may assign
its rights under this license agreement without the consent of the other party,
which consent shall not unreasonably be withheld.
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18. AMENDMENT
No supplement, modification or amendment of, or waiver with respect to,
this DPI license shall be binding unless executed in writing. This DPI
license may be modified, amended, or terminated upon the written agreement of
both parties.
19. CONSENTS
Any consent required by this DPI license shall be effective only if
given in a writing executed by the party giving the consent.
20. HEADINGS
The headings in this DPI license are solely for convenience of reference
and shall not limit or otherwise affect the meaning of this DPI license.
21. SEVERABILITY
If any part of this DPI license if found invalid or unenforceable, it
shall be enforced to the maximum extent permitted by law, and other parts of
this DPI license will remain in force.
22. ENTIRE LICENSE
This DPI license, whose terms comprise Schedule 9.1.2 of the 1997
Amendment to the 0000 XX Agreement between AGD and AVI, constitutes the
entire license pertaining to DPI and supersedes all prior agreements and
understandings of the parties in connection therewith. No covenant,
representation or condition not expressed in this DPI license will affect or
be effective to interpret, change or restrict, the express provisions of this
DPI license.
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EXHIBIT A
DPI Information
Below is a listing of specific notebooks which comprise the agreed upon DPI
Information. This notebook information constitutes the entire DPI Information.
Notebook Designation Notebook Title Dates of Entries
-------------------- -------------- ----------------------------
X. Xxxxxxxxx Notebook Diagnostics 1 Jan. 20, 1993 - May 1, 1993
X. Xxxxxxxxx Notebook Diagnostics 2 May 1, 1983 - July 16, 1994
AVI 9 Diagnostics 3 July 17, 1994 - Dec. 23, 1994
AVI 10 Diagnostics 4 Dec. 24, 1994 - Jan. 27, 1995
AVI 29 Diagnostics 5 Jan. 30, 1985 - Mar. 4, 1995
AVI 32 Diagnostics 6 Mar. 4, 1995 - Apr. 4, 1995
AVI 33 Diagnostics 7 Apr. 4, 1995 - Apr. 26, 1995
AVI 38 Diagnostics 8 Apr. 26, 1995 - Oct. 31, 1995
AVI 57 Diagnostics 9 Oct. 31, 1995 - Dec. 24, 1995
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ANTIVIRALS Inc. (AVI) hereby provides its consent to ANTI-GENE DEVELOPMENT
GROUP (AGD) to allow the transfer to and use by a single sublicensee of AGD
of "Information for Making and Using SS Products" and "DPI Information,"
where "Information for Making and Using SS Products" and "DPI Information"
are as defined in the 1997 Amendment to the 1993 Technology Transfer
Agreement between AGD and AVI. In return for this AVI consent to allow
transfer to and use of said information by a sublicensee of AGD, said
sublicensee agrees not to disclose to any other entity any of said
information, excepting that which is already in the public domain, and to
abide by all terms necessary for its licensor, AGD, to fulfill AGD's license
obligations to AVI under the terms in Schedules 9.1.1 and 9.1.2 of the 1997
Amendment to the 1993 Technology Transfer Agreement between AGD and AVI.
By: /s/ Xxxxx Xxxxxx
------------------------------------
Xxxxx Xxxxxx, Ph.D.
Chief Executive Officer
ANTIVIRALS Inc.
Date: 1/20/97
By: /s/ Xxxxx X. Xxxxxxxxx
------------------------------------
President
__________ (Sublicensee of AGD)
Jan. 20, 1997
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