EXHIBIT 10.28
ASTRO LICENSE AGREEMENT
ASTRO LICENSE AGREEMENT
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This Agreement is entered into as of December 18, 1990 among Glyko, Inc.
("Glyko"), a Delaware Corporation with its principal office at 00 Xxxxxxx Xxxxx,
Xxxxxx, Xxxxxxxxxx 00000, Astromed, Ltd. ("Astromed"), a United Kingdom
corporation with its principal office at Cambridge Science Park, Milton Road,
Cambridge CB4 465 England, and Astroscan, Ltd. ("Astroscan"), a Manx corporation
with its principal offices at Ballabeg House, Crankbourne Village, Bradden, Isle
of Man, British Isles.
RECITALS
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Astromed and Astroscan are the owners of the patents and patents
applications listed in Exhibit A relating to techniques to facilitate analysis
of carbohydrate and glycoconjugate molecules. Glyko wishes to obtain a license
to use those patents, and Astromed and Astroscan have agreed to license those
patents and associated know-how to Glyko.
AGREEMENT
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1. Definitions.
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Reference is hereby made to the Joint Venture Agreement dated December 18 ,
1990 (the "Joint Venture Agreement") among Glyko, Astromed, Astroscan, Millipore
Corporation ("Millipore") , Glycomed, Inc., Xxxxx X. Xxxxxxxx, and Xxxx Xxxxx.
Terms defined in the Joint Venture Agreement and not otherwise defined herein
shall have the meanings so defined. As used in this Agreement, the following
terms shall have the meanings defined below:
1.1 "FACE" shall mean the technique known as Fluorescence Assisted
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Carbohydrate Electrophoresis.
1.2 The "Field" shall mean all aspects of and applications for the
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analysis, manipulation, and synthesis of carbohydrates and glycoconjugates, and
molecules containing carbohydrates and glycoconjugates, including separation,
sequencing, compositional analysis and diagnostic applications.
1.3 "Licensed Current Patents" shall mean the patents and patent
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applications throughout the world listed in Exhibit A hereto, and patents
hereafter issued throughout the world on patent applications listed on Exhibit A
hereto.
1.4 "Future Patents" shall mean patents, patent applications, and patent
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rights throughout the world that Astromed or Astroscan file or obtain in the
future and which
Astromed and Astroscan are obligated to disclose and license to Glyko pursuant
to Section 2.4 hereof.
1.5 "Licensed Patents" shall mean Licensed Current Patents and Future
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Patents.
1.6 "Astromed and Astroscan Current Know-how" shall mean the technical
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information, know-how, and technology possessed by Astromed and Astroscan on the
date hereof relating to or useful in the Field.
1.7 "Future Know-how" shall mean technical information, know-how, and
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technology that Astromed or Astroscan develop or obtain in the future and which
Astromed or Astroscan are obligated to disclose and license to Glyko pursuant to
Section 2.4 hereof.
1.8 "Licensed Know-how" shall mean Astromed and Astroscan Current Know-how
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and Future Know-how.
1.9 "Rights Licensed to Astromed or Astroscan" shall mean any patents,
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patent applications, technical information, know-how or other technology owned
by third parties and licensed to Astromed or Astroscan with the right to grant
sublicenses that relates to or is useful in the Field.
1.10 "Licensed Technology" shall mean the Licensed Patents, Licensed Know-
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how, and Rights Licensed to Astromed or Astroscan collectively.
1.11 "Glyko Improvements" shall mean any and all improvements made by Glyko
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to Licensed Technology.
2. Grant of Rights: Exclusivity.
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2.1 License Grant. Subject to all of the provisions hereof, Astromed and
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Astroscan hereby grant to Glyko a royalty-free, perpetual, worldwide license to
make, have made, use, sell, or otherwise dispose of any products, equipment,
components, or systems for use in the Field based upon, embodying, or otherwise
using the Licensed Technology, and to otherwise practice the Licensed Technology
in the Field.
2.2 Exclusivity. Except as provided below, the license granted herein
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shall be exclusive to Glyko in the Field and Astromed and Astroscan shall not
practice the Licensed Technology to market, or license others to market products
or services that compete with Glyko in the Field.
2.3 Right to Sublicense. Astromed and Astroscan hereby grant to Glyko the
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perpetual right to sublicense the Licensed Technology for use in the Field.
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2.4 Future Developments. Astromed and Astroscan will disclose to Glyko
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promptly after creation any and all inventions, patents, patent applications and
technology relating to FACE, including know-how, developed or acquired by them
during the term of this Agreement.
2.5 Glyko Improvements. Glyko hereby grants to Astromed and Astroscan a
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non-exclusive, royalty-free, perpetual worldwide license, including the right to
sublicense, under the Glyko Improvements to make, have made, use, sell, or
otherwise dispose of any products, equipment, components, or systems for use
outside the Field and to otherwise practice Glyko Improvements outside the Field
3. Representations and Warranties. Astromed and Astroscan represent and
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warrant that, as of the date hereof,
(a) To the best of their knowledge, the Licensed Technology licensed
by it to Glyko hereunder did not infringe any proprietary rights of any
third parties;
(b) Their license and transfer of the Licensed Technology does not
breach any of their duties toward any third party, nor did such license and
transfer impose any obligations on Glyko other than those expressed in this
Agreement; and
(c) The Licensed Technology can be freely used and exploited by Glyko
in the Field without any liability of any nature to third parties.
4. Defense of Licensed Rights. If during the term of this Agreement Glyko
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becomes aware of an infringement of any Licensed Technology in the Field, it
shall notify Astromed and Astroscan. and Glyko, Astromed, and Astroscan will
confer and determine what actions may be taken to protect Glyko's rights under
the Licensed Technology. The prosecution of such infringers shall be at the
direction and expense of Glyko. Astroscan and Astromed shall have no obligation
to prosecute any such infringer but shall join as nominal plaintiffs, at Glyko's
expense, if requested to do so by Glyko. If Glyko determines not to prosecute an
infringer, Astroscan and Astromed may do so, in which event Astroscan and
Astromed shall pay all expenses of and may retain all recovery in any such
proceeding.
5. Term and Termination.
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5.1 Perpetual Term. Unless sooner terminated in accordance with the terms
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hereof, this Agreement, and the license herein granted to Glyko, shall continue
in effect perpetually.
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5.2 Breach and Remedies. If either party commits a breach of any of the
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terms of this Agreement, the other party may notify the defaulting party in
writing, specifying the nature of the breach or the obligation that the
defaulting party has failed to meet. If the defaulting party fails to cure the
breach or meet the obligation specified within a period of thirty (30) days
after service of such written notice, then the party not in default may
terminate this Agreement forthwith by serving written notice of such termination
upon the defaulting party.
5.3 Bankruptcy. If Glyko should become bankrupt or make any arrangement
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or assignment for the benefit of its creditors, Astromed and Astroscan each
shall have the right to terminate this Agreement forthwith by serving written
notice of such termination.
5.4 Default on Obligation to Fund. In the event that Millipore defaults in
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its obligation to fund Glyko pursuant to Section 2.4 of the Joint Venture
Agreement, and the Joint Venture Agreement is terminated pursuant to Section 8.3
thereof, Astromed and Astroscan each shall have the right to terminate this
Agreement forthwith by serving written notice of such termination to Glyko.
6. Effective Date. This Agreement shall become effective as of the date the
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Joint Venture Agreement is signed.
7. Applicable Law. As this Agreement relates to the Joint Venture Agreement to
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which Glyko, Astromed, and Astroscan are all parties and as the Joint Venture
Agreement is governed by the laws of the State of Delaware, this Agreement and
the relationships between the parties shall be governed in all respects by the
laws of the State of Delaware.
8. Notices. All notices required or permitted by this Agreement shall be given
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in writing and shall be deemed effective when personally delivered or when
delivered by registered or certified mail, addressed as follows:
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If to Glyko: If to Astromed:
Glyko, Inc. Astromed, Ltd.
00 Xxxxxxx Xxxxx Xxxxxxxxx Xxxxxxx Xxxx
Xxxxxx, XX 00000 Xxxxxx Road
Attn: Chief Executive Xxxxxxxxx XX0 465 England
Officer Attn: Xxxxx Xxxxxxxx
If to Astroscan:
Astroscan, Ltd.
Ballabeg House
Crankbourne Village, Bradden
Isle of Man, British Isles
Attn: Xxxxx X. Xxxxxxxx
Such notices may also be sent by telex, telegram, or facsimile
transmission, and shall be deemed effective upon receipt by the other party if
confirmed in writing by the sender via registered or certified mail delivered
within ten (10) days 'thereafter. Either party may at any time during this
Agreement designate a different person or address for notices by notice to the
other in the manner prescribed herein.
9. Amendments. No modification or waiver of any provision of this Agreement
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shall be valid unless it is in writing and signed by all the parties hereto.
10. Assignment. Neither party may assign its rights or obligations under this
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Agreement without the prior written consent of the other, except that a party
may assign its rights and obligations to a party acquiring the business and
assets of the party with which the license is used, provided the acquiror agrees
in writing to be bound by the provisions hereof. All provisions of this
Agreement shall be binding upon and inure solely to the benefit of the parties
hereto, their heirs, legal representatives, successors (whether by
consolidation, merger, or otherwise), and assigns.
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IN WITNESS WHEREOF, the parties hereto, intending to be bound hereby, have
caused this Agreement to be executed by their duly authorized representatives as
of the___ day of December, 1990.
GLYKO, INC.
By:
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ASTROMED, LTD.
By:____________________________
ASTROSCAN, LTD.
By:____________________________
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IN WITNESS WHEREOF, the parties hereto , intending to be bound
hereby, have caused this Agreement to be executed by their duly authorized
representatives as of the ____ day of December, 1990.
GLYKO, INC.
By:____________________________
ASTROMED, LTD.
By:
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ASTROSCAN, LTD.
By:____________________________
IN WITNESS WHEREOF, the parties hereto, intending to be bound hereby, have
caused this Agreement to be executed by their duly authorized representatives as
of the ____ day of December, 1990.
GLYKO, INC.
By:____________________________
ASTROMED, LTD.
By:____________________________
ASTROSCAN, LTD.
By: /s/ Xxxxx X. Xxxxxxxx
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EXHIBIT A
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LICENSED PATENTS
Astromed Patents
1. Charge coupled device detection and electrophoresis
PN May 29, 1985
US #4,874,492 Issued 17 Oct 00
Xxxxx Pending
UK Granted
Astroscan Patents and Patent Applications
1. Carbohydrate sequencing (Basic PCT)
PCT 9B88/00472
US Office Action 9/90
Europe Office Action 9/90
UK Office Action 0/00
Xxxxx Pending
2. Aminonaphthalene sulfonic acid labeling of carbohydrates
PN Sept. 27, 1989
UK Pending
3. Electrophoretic blotting of ANTS-labeled carbohydrates
PN Sept. 27, 1989
PCT Application filed 9/90
4. Lucifer yellow fluorophore-labeling of carbohydrates for electrophoresis
PN June 26, 1990
UK Pending
PCT Application filed 9/90
5. Method of quenching unlabeled ANTS for electrophoresis of carbohydrates
PN June 26, 1990
UK Pending
PCT Application filed 9/90
6. Updated ANTS application
PN June 26, 1990
UK Pending
PCT Application filed 9/90
