Exhibit 10.14
BAYLOR COLLEGE OF MEDICINE
OPEXA PHARMACEUTICALS, INC.
LICENSE AGREEMENT
This License Agreement (this "Agreement") is made and entered into on this
5th day of September, 2001 (the "Agreement Date"), by and between Baylor College
of Medicine (hereinafter called "BAYLOR"), a Texas non-profit corporation having
its principal place of business at Xxx Xxxxxx Xxxxx, Xxxxxxx, Xxxxx 00000, and
Opexa Pharmaceuticals, a corporation organized under the laws of Delaware and
having a principal place of business at 0000 Xxxxxx Xxxx, Xxxxx 000, Xxxxxxx,
Xxxxx 00000 and its Affiliates (hereinafter, collectively referred to as
"OPEXA").
WITNESSETH :
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WHEREAS, BAYLOR, by virtue of its relationship with its faculty, staff and
students, and conveyances with the individuals listed on Schedule 1, and under
and pursuant to the terms and provisions of its Policy on Inventions and Patents
(the "Baylor Patent Policy"), a copy of which has been delivered to OPEXA, is
the owner of certain right, title and interest in and to the Technology (as
defined below); and
WHEREAS, BAYLOR desires to grant to OPEXA and OPEXA desires to obtain a
worldwide license to employ the Technology and to make, use, sell, have made and
otherwise market and commercialize Licensed Patent Pending Products and Licensed
Patented Products; and
WHEREAS, BAYLOR is willing to negotiate a license for the rights to market
and commercialize the Technology to OPEXA in exchange for the receipt of equity
and other consideration as described herein;
NOW, THEREFORE, in consideration of the mutual promises and obligations
hereinafter set forth and for other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the Parties hereto stipulate
and agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "Affiliate" shall mean any corporation, partnership, joint venture or
other entity of which the common stock or other equity ownership thereof is
fifty percent (50%) or more owned by OPEXA or BAYLOR.
1.2 "Baylor Patent Policy" is as defined in the first Whereas clause.
1.3 "Common Stock" is as defined in Paragraph 3.4.
1.4 "Confidential Information" shall mean any proprietary and secret ideas,
proprietary technical information, know-how and proprietary commercial
information or other similar proprietary information, which is reduced to
writing and marked CONFIDENTIAL in writing on the document or, if orally
disclosed, summarized in writing and delivered to the receiving party within
thirty (30) days of disclosure, marked as CONFIDENTIAL. Neither Party shall have
an obligation of confidentiality with respect to Confidential Information that:
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(i) at the time of its disclosure or thereafter is disclosed in a
publicly available document through no fault of the receiving Party;
(ii) at the time of its disclosure is, or thereafter becomes without
fault of the receiving Party, part of the public domain;
(iii) was in the possession of the receiving Party prior to disclosure
by the disclosing Party hereunder and was not acquired directly or indirectly
from any third party under obligation of confidentiality to the disclosing
Party;
(iv) subsequent to its disclosure, is obtained from a third party not
subject to a contractual or fiduciary obligation for confidentiality to the
disclosing Party;
(v) is required by court or governmental order, law or regulation to be
disclosed; or
(vi) is disclosed pursuant to any research grant relating to the
Technology from a non-commercial granting entity, such as grants from the United
States Department of Health and Human Services and other governmental and
private non-profit agencies; provided, however, that OPEXA be notified of the
terms of such research grant applications.
1.5 "Developers" shall mean those individuals listed in Schedule 1.
1.6 "Developer's Agreement" shall mean agreements executed by BAYLOR, the
Developers and OPEXA which discusses distribution policies of OPEXA stock and
other aspects of such distribution, copies of which have been delivered to
OPEXA.
1.7 "First Commercial Sale" shall mean the date on which OPEXA first
transfers title to a Licensed Patent Pending Product or Licensed Patented
Product to an independent third party for monetary consideration.
1.8 "Funded Technology" is as defined in Paragraph 7.1.
1.9 "Gross Sales" shall mean the gross amount of monies or cash equivalent
or other consideration which is paid by unrelated third parties to OPEXA or
sublicensees for the Licensed Patented Products or Licensed Patent Pending
Products by sale, utilization or other mode of transfer. The term "Gross Sales"
in the case of non-cash sales, shall mean the fair market value of all
equivalent or other consideration received by OPEXA for the Licensed Patent
Pending Products or Licensed Patented Products
1.10 "Improvements" shall mean any modifications, variations and
improvements to the following aspects of the Technology;
(i) Materials and procedures for Autologous T-cell vaccination for
Multiple Sclerosis and other autoimmune disorders;
(ii) T-cell receptor sequences and therapeutic-diagnostic products
derived from them that direct T-cell antigen recognition specificity in Multiple
Sclerosis and other autoimmune disorders;
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(iii) Combinations of pregnancy-related hormones that suppress
autoreactive T-cell migration, proliferation or activity against autoantigens in
Multiple Sclerosis or other autoimmune disorders; and
(iv) Materials and procedures for development of a vaccine against
human herpesvirus-6;
whether patentable or not, that during the two years between the Agreement
Date and the second anniversary of the Agreement Date, are (i) conceived or
reduced to practice, (ii) are owned by BAYLOR or become property of BAYLOR and
(iii) arise out of work performed in laboratory at BAYLOR that is under the
direct supervision of the Developers.
1.11 "Indemnified Parties" is as defined in Paragraph 5.4.
1.12 "Legal Costs" shall mean all legal fees and expenses, filing or
maintenance fees, assessments and all other reasonable costs and expenses
related to prosecuting, obtaining and maintaining patent protection on the
Patent Rights in the United States and foreign countries, including all costs
reasonably incurred in filing continuations, continuations-in-part, divisionals
or related applications and any re-examination or reissue proceedings.
1.13 "Licensed Patented Product" shall mean any product, process, or
service using all or any part of the Technology that is made, used, marketed or
sold in a country where the Technology is covered by a Valid Claim (as defined
below).
1.14 "Licensed Patent Pending Product" shall mean any product, process, or
service using all or any part of the Technology that is made, used, marketed or
sold in a country where the Technology is covered by a Patent Pending Claim (as
defined below).
1.15 "Licensed Patented Product Net Sales" shall mean that portion of Net
Sales related to Licensed Patented Products.
1.16 "Licensed Patent Pending Product Net Sales" shall mean that portion of
Net Sales related to Licensed Patent Pending Products.
1.17 "Net Sales" shall mean Gross Sales for the Licensed Patent Pending
Products or Licensed Patented Products by sale, license or other mode of
transfer, less all trade, quantity and cash discounts actually allowed, credits,
and allowances actually granted on account of rejections, returns or billing
errors, separately billed duties, transportation and insurance, taxes and other
governmental charges actually paid.
1.18 "Patent Pending Claim" shall mean a claim of pending patent
application included in the Patent Rights.
1.19 "Patent Rights" shall mean all patents to be filed relating to the
Technology and all pending and issued United States patents and corresponding
foreign patent applications or parts thereof listed in Schedule 2 and any and
all divisions, reissues, re-examinations, renewals, continuations,
continuations-in-part, and extensions thereof, and all other counterpart
applications in all other countries and patents, inventor's certificates,
utility models and the like issuing therefrom, which list shall be amended and
updated from time to time.
1.20 "Party" shall mean either OPEXA or BAYLOR, and the "Parties" shall
mean OPEXAand BAYLOR.
1.21 "Sublicensing Revenue" shall mean all (i) cash, (ii) sublicensing
fees, including maintenance fees and milestones not listed in Article 3 and
(iii) all other payments and the cash equivalent thereof, which are paid to
OPEXA by the sublicensees of its rights hereunder in consideration thereof,
other than research and development money paid to OPEXA to conduct research at
fair market value and consideration paid to OPEXA for shares of capital stock in
OPEXA at the fair market value for said shares.
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1.22 "Technology" shall mean and include the Patent Rights and non-patented
technologies listed in Schedule 3, together with all know-how, information,
processes, formulas, patterns, compilations, programs, devices, methods,
techniques, products, data, preparations and usage information or materials and
sources thereof, whether or not patentable, in each case that are related to, or
pertain to, the Patent Rights and non-patented technologies listed on Schedule 3
and arise out of work performed in a laboratory at BAYLOR that is under the
direct supervision of the Developers as of the Agreement Date. Technology shall
also include the Improvements (as defined above), but shall not include (i)
know-how, discoveries and inventions developed at BAYLOR by any individual(s)
other than the Developers and (ii) know-how, discoveries and inventions
developed at OPEXA solely by OPEXA employees.
1.23 "Term" is as defined in Paragraph 10.1.
1.24 "Valid Claim" shall mean a claim of an issued, unexpired patent
included within the Patent Rights claiming an invention, which has not been
revoked or held unenforceable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and which has not been disclaimed, denied or
admitted to be invalid or unenforceable through reissue, disclaimer or
otherwise.
ARTICLE 2
GRANT OF EXCLUSIVE LICENSE
2.1 License Grant. Subject to the reservations of rights set forth in
Paragraph 2.2 and the terms of Paragraph 11.4, effective as of the Agreement
Date, BAYLOR hereby grants to OPEXA an exclusive, worldwide right and license
with rights to sublicense the Technology with rights to use, develop, make, have
made, market, sell, offer to sell and otherwise commercially exploit the
Technology, Licensed Patent Pending Products and Licensed Patented Products.
OPEXA shall have the right to sublicense any of the rights granted under this
Paragraph 2.1, provided that such sublicense shall be subject to and subordinate
to the terms and conditions of this Agreement.
2.2 Restrictions on License. The grants in Paragraph 2.1 shall be further
subject to, restricted by and non-exclusive with respect to:
(i) the use of the Technology by BAYLOR for non-commercial research, patient
care solely as it relates to research and teaching purposes (so long as BAYLOR
is in compliance with all laws and regulations regarding such use and with the
consultation and approval of OPEXA), and other educationally related purposes;
(ii) the use of the Technology by the Developers for non-commercial research
purposes at academic or research institutions;
(iii) any non-exclusive license of the Technology that BAYLOR grants to other
academic or research institutions strictly for non-commercial research purposes
(said non-exclusive research use license shall expressly prohibit the use of the
Technology in human subjects); and
(iv) any non exclusive license of the Technology that BAYLOR is required by law
or regulation to grant to the United States of America or to a foreign state
pursuant to an existing or future treaty with the United States of America.
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ARTICLE 3
CONSIDERATION
3.1 Royalties and Milestones. (a) In consideration of the grant of the
exclusive licenses specified in Paragraph 2.1, OPEXA agrees to pay BAYLOR the
following applicable royalties and milestones in accordance with the provisions
set forth in Table 3.1 below and Paragraph 3.1 (b);
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Table 3.1 Consideration
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Financing Event/Value to BAYLOR OPEXA Royalty and Payment Obligations to BAYLOR
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Scenario 1: OPEXA closes on a financing event with o __% royalty on Net Sales of Licensed Patented Products
capital raised from outside sources (other than where annual Gross Sales of said Licensed Patented
BAYLOR) that generates $_________ or more in Product is less than or equal to _______ ($__________)
equity value to BAYLOR within eighteen (18) dollars. This royalty rate applies to Net Sales of
months of the Agreement Date. OPEXA, including Affiliates. This royalty rate shall
not apply to Net Sales of OPEXA sublicensees. As
For example: OPEXA closes on a financing round of stated below, OPEXA sublicensees shall pay a __%
$________for a 40% ownership stake in the company. royalty, regardless of product sales level.
The value of the company would then be (5 o __% royalty on Net Sales of Licensed Patented
million/0.4) = $_________. The value to BAYLOR Product(s) where annual Gross Sales of said Licensed
would then be value of the company multiplied by Patented Product exceed ________ ($________) dollars.
the percentage ownership retained by BAYLOR. In This royalty rate applies to Net Sales of OPEXA,
this case the value to BAYLOR would be including Affiliates.
(0.8)(0.6)(___) = $_________. o 1% royalty on Net Sales of Licensed Patent Pending
- where (0.8 or 80%) reflects the initial BAYLOR Product(s). This royalty rate applies to Net Sales of
ownership percentage of outstanding capital stock OPEXA, including Affiliates.
in OPEXA. o __% royalty on Net Sales of Licensed Patented Products
Because the value to BAYLOR exceeds $__________in or Licensed Patent Pending Products sold by OPEXA
this example, the consideration terms of Scenario sublicensees.
1 would apply.
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Scenario 2: OPEXA closes on a financing event with o __% royalty on Net Sales of Licensed Patented Products
capital raised from outside sources (other than where annual Gross Sales of said Licensed Patented
BAYLOR) that generates greater than $_________, Product is less than or equal to __________
but less than $______in equity value to BAYLOR ($_____________) dollars. This royalty rate applies to
within eighteen (18) months of the Agreement Date. Net Sales of OPEXA, its Affiliates, and sublicensees.
o __1% royalty on Net Sales of Licensed Patented
For example: OPEXA closes on a financing round of Products where annual Gross Sales of said Licensed
$____million for a 40% ownership stake in the Patented Product exceed _____________ ($________)
company. The value of the company would then be dollars. This royalty rate applies to Net Sales of
($______/0.4) = $_____. The value to BAYLOR would OPEXA, its Affiliates and sublicensees.
then be: (0.8)(0.6)(_____) = $_________. o ____% royalty on Net Sales of Licensed Patent Pending
Because the value to BAYLOR is between $_____ and Products. This royalty rate applies to Net Sales of
$_______in this example, the consideration terms OPEXA, its Affiliates and sublicensees.
of Scenario 2 would apply. o One time milestone payment of __________ ($________)
dollars upon the first FDA-approved sale by OPEXA, an
Affiliate or sublicensee of a Licensed Patented
Product or Licensed Patent Pending Product in the
therapeutic field.
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Scenario 3: OPEXA closes on a financing event with o __% royalty on Net Sales of Licensed Patented Products
capital raised from outside sources (other than by OPEXA, its Affiliates or sublicensees.
BAYLOR) that generates $3 million or less in o __% royalty on Net Sales of Licensed Patent Pending
equity value to BAYLOR within one year of the Products by OPEXA, its Affiliates or sublicensees.
Agreement Date. o Milestone payments of ____________ ($_______) dollars
upon the first FDA-approved sale of a Licensed Patent
For example: OPEXA closes on a financing round of Pending Product or Licensed Patented Product by OPEXA,
$______ for a 50% ownership stake in the company. an Affiliate, or sublicensee in each of the following
The value of the company is then ($_______/0.5) = classes:
$______. The value to BAYLOR would then be: (i) Autologous T-cell vaccine for Multiple Sclerosis
(0.8)(0.5)(___) = $__________. (ii) Peptide-based vaccine for Multiple Sclerosis
Therefore, the value to BAYLOR is under (iii) Steroid hormone therapeutic product for Multiple
$_____________ and the consideration terms of Sclerosis
Scenario 3 would apply. (iv) Vaccine or other prophylactic/therapeutic
product based on human herpesvirus-6 (HHV-6)
technology.
o OPEXA shall pay all unreimbursed Legal Costs incurred
by BAYLOR prior to the Agreement Date up to a maximum
of $_________.
(b) Notwithstanding anything in Paragraph 3.1 (a) to the contrary, in the
event that OPEXA completes a financing covered by Scenario 3 in Paragraph 3.1
(a) within the time parameters set out therein, and thereafter completes an
additional financing within the time parameters identified in Scenario 1 or 2 of
Paragraph 3.1 (a), which additional financing, together with the initial
financing covered by Scenario 3, meets the required financing level specified in
either Scenario 1 or 2, then in such instance, the royalty payments and
milestones specified in Scenario 1 or 2 , as applicable, shall apply to all Net
Sales of Licensed Patented Products and Licensed Patent Pending Products
occurring after the date of such additional financing.
3.2 Common Stock. Since, but for the equity received hereunder, BAYLOR
would have insisted upon and received a greater royalty and, in consideration
and in exchange for (i) property constituting good and valuable consideration,
including, but not limited to, the Technology, and (ii) the reduced royalty
consideration provided in Table 3.1, the receipt and sufficiency of which are
hereby acknowledged by OPEXA, OPEXA shall issue to BAYLOR one million, seven
hundred thousand (1,700,000) shares of its common stock, $0.001 par value (the
"Common Stock").
3.3 Issuance of Common Stock. The Common Stock shall be divided and issued
as described in Schedule 4.
3.4 Income Tax. Notwithstanding anything herein to the contrary, OPEXA
shall not be responsible for any income tax payments required to be paid by
BAYLOR on funds received from OPEXA under this Agreement.
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ARTICLE 4
ACCOUNTING AND RECORDS
4.1 Payment and Reports. At the close of each quarter of OPEXA's fiscal
year, the Net Sales for said quarter shall be computed, and the royalties earned
thereon shall be paid to BAYLOR within sixty (60) days after the close of said
quarter. With each payment, OPEXA shall furnish to BAYLOR a written accounting
report related to said quarter stating the Net Sales and the reason for said
payment, consideration due and consideration paid. Such report will include,
where applicable, the OTA reference number(s) from Schedule 3 to which such
payment shall be attributed and the percent attributed to each Technology if
more than one (1) Technology is commercialized.
4.2 Interest Payments. In the event that any payment due hereunder is not
made when due, the payment shall accrue interest beginning on the tenth day
following the due date thereof, calculated at the annual rate of the sum of (i)
____ percent (___%) plus (ii) the prime interest rate quoted by The Wall Street
Journal on the date said payment is due, the interest being compounded on the
last day of each calendar quarter, provided, however, that in no event shall
said annual interest rate exceed the maximum legal interest rate for
corporations. Each such payment when made shall be accompanied by all interest
so accrued. Said interest and the payment and acceptance thereof shall not
negate or waive the right of BAYLOR to seek any other remedy, legal or
equitable, to which it may be entitled because of the delinquency of any
payment.
4.3 Currency Requirements. All payments due hereunder are expressed in and
shall be paid in United States of America currency, without deduction of
exchange, collection or other charges, to BAYLOR by check, or to the account of
BAYLOR at such bank as BAYLOR may from time to time designate by notice to
OPEXA. OPEXA shall use foreign currency exchange rates published in The Wall
Street Journal on the last day of the calendar quarter that said payment is due.
4.4 Record and Audits. OPEXA agrees to maintain written records with
respect to its operations pursuant to this Agreement in sufficient detail to
enable BAYLOR or its designated accountants to compute the amount of
consideration payable to BAYLOR. During the Term and for a period of two (2)
years thereafter, OPEXA agrees to permit an accountant selected and paid by
BAYLOR and reasonably acceptable to OPEXA to have access during ordinary
business hours to such records as are maintained by OPEXA as may be necessary,
in the opinion of such accountant, to determine the correctness of any report
and/or payment made under this Agreement, provided, however, that such
examination shall not take place more than once per year. In the event that the
audit reveals an underpayment of royalty by more than five percent (5%), the
cost of the audit shall be paid by OPEXA. If the underpayment is less than five
percent (5%) but more than two percent (2%), OPEXA and BAYLOR shall each pay
fifty percent (50%) of the cost of the independent audit. Such accountant shall
maintain in confidence, and shall not disclose to BAYLOR, any information
concerning OPEXA or its operations or properties other than information directly
relating to the correctness of such reports and payments.
4.5 Annual Report. On or about the anniversary of the Agreement Date and
thereafter throughout the Term, or at such time as an annual report to
shareholders is delivered, OPEXA shall deliver to BAYLOR a written annual report
as to: (i) the efforts and accomplishments of OPEXA and each of its sublicensees
during the preceding year in developing and commercializing Licensed Patent
Pending Products and/or Licensed Patented Products in every country in which it
or its sublicensees shall have developed and/or sold Licensed Patent Pending
Products and/or Licensed Patented Products; (ii) the status of scientific and/or
clinical trials, if any, on Licensed Patent Pending Products and/or Licensed
Patented Products; (iii) the activities of OPEXA, if any, with respect to the
filing, prosecution, obtaining, and maintenance of patents in the United States
and any foreign countries in which such protection has been sought on the Patent
Rights, as provided in Article 6; and (iv) the obtaining of regulatory approvals
in the United States and foreign countries for the advertising, use and sale of
Licensed Patent Pending Products and/or Licensed Products.
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4.6 Payment Address. All payments and reports shall be sent to the address
listed in Paragraph 15.1.
ARTICLE 5
WARRANTIES, REPRESENTATIONS, INDEMNITY AND INSURANCE
5.1 BAYLOR Warranties. (a) BAYLOR hereby represents and warrants that:
(i) to the best of its knowledge, other than the grants set forth herein,
including, without limitation, for or to the United States of America, or for or
to a foreign state, it has not encumbered, restricted, transferred or otherwise
burdened the Technology;
(ii) the execution, delivery and performance of this Agreement by BAYLOR
and the consideration provided for herein has been duly authorized by all
necessary BAYLOR actions and officials;
(iii) it has the full power and authority to enter into and carry out the
obligations of this Agreement.
(B) WITH THE EXCEPTION OF PARAGRAPH 5.1(a), BAYLOR MAKES NO WARRANTIES
OR REPRESENTATIONS, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF FITNESS OR MERCHANTABILITY, REGARDING OR WITH RESPECT TO THE
TECHNOLOGY, LICENSED PATENT PENDING PRODUCTS OR LICENSED PATENTED PRODUCTS AND
BAYLOR MAKES NO WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED, OF THE
PATENTABILITY, USE OR OTHER APPLICATION OF THE TECHNOLOGY, LICENSED PATENT
PENDING PRODUCTS OR LICENSED PATENTED PRODUCTS OR OF THE ENFORCEABILITY OF ANY
PATENTS ISSUING THEREUPON, IF ANY, OR THAT THE TECHNOLOGY, LICENSED PATENT
PENDING PRODUCTS OR LICENSED PATENTED PRODUCTS ARE OR SHALL BE FREE FROM
INFRINGEMENT OF ANY PATENT OR OTHER RIGHTS OF THIRD PARTIES AND BAYLOR MAKES NO
WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED, AS TO THE LIKELIHOOD OF THE
SUCCESS OF ANY RESEARCH, DEVELOPMENT, TESTING, MARKETING OR OTHER UTILIZATION OF
THE TECHNOLOGY.
(C) NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, (A) IN NO EVENT
SHALL ANY PARTY'S LIABILITY OF ANY KIND INCLUDE ANY SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL LOSSES OR DAMAGES, EVEN IF SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES; (B) IN NO CASE SHALL BAYLOR'S
LIABILITY FOR DAMAGES OF ANY TYPE EXCEED THE TOTAL ROYALTIES WHICH HAVE ACTUALLY
BEEN PAID TO BAYLOR BY OPEXA AS OF THE DATE OF THE FILING OF THE ACTION AGAINST
BAYLOR WHICH RESULTS IN THE SETTLEMENT OR AWARD OF DAMAGES.
5.2 OPEXA Warranties. OPEXA hereby represents and warrants that:
(a) it is a corporation duly organized and in good standing under the
laws of the State of Delaware;
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(b) it is qualified to do business and in good standing in the State of
Texas and elsewhere as the nature of its business and properties so require;
(c) the execution, delivery and performance of this Agreement by OPEXA
and the consideration provided for herein has been duly authorized by all
necessary corporate action;
(d) it has the full power and authority to enter into and carry out its
obligations under this Agreement; and
(e) the Common Stock to be issued pursuant to this Agreement has been
duly authorized and upon issuance, pursuant to the terms hereof and for the
consideration herein set forth, will be validly issued, fully paid and
non-assessable.
5.3 Indemnification for Breach of Warranty. OPEXA agrees to indemnify and
hold BAYLOR and its officers, trustees, faculty, employees, agents and
representatives (the "Indemnified Parties") harmless from any liabilities, costs
and expenses (including attorneys' fees and expenses), obligations or causes of
action arising out of or related to any breach of the representations and
warranties made by OPEXA herein.
5.4 Indemnification of BAYLOR re: Technology. OPEXA agrees to protect,
defend, indemnify and hold BAYLOR, each of the entities with which it is or will
be in the future affiliated with respect to the invention or development of
Technology, and each of BAYLOR's, officers, trustees, faculty, employees,
agents, representatives, and each of them ("the Indemnified Parties") harmless
from and against, and to pay any and all losses, liabilities, claims, demands,
causes of action, lawsuits, or other proceedings (whether in contract, tort,
strict liability or otherwise), fines, assessments, damages or any other amounts
of whatever nature that any of the Indemnified Parties may sustain or incur
("Claims"), including all reasonable attorneys' fees and court costs, as a
consequence of any third party's (including, but not limited to, OPEXA's
officers, directors, employees, agents, consultants, representatives or
servants) claims and demands arising from the use, testing, operation, sale or
manufacture of the Technology or Licensed Patent Pending Products or Licensed
Patented Products by OPEXA or its assignees or sublicensees even though such
Claims result in whole or in part from the negligence of any of the Indemnified
Parties or are based upon doctrines of strict liability or product liability;
provided, however, that such indemnity shall not apply to any Claims arising
from the gross negligence or intentional misconduct of any Indemnified Party.
5.5 Participation in Defense. (a) BAYLOR will promptly notify OPEXA in
writing of notice of any claims or the commencement of any action, if a claim in
respect thereof is to be made under Paragraph 5.4. BAYLOR's failure to notify
OPEXA will not relieve OPEXA from any liability to BAYLOR except to the extent
any BAYLOR delay in notifying OPEXA causes such damages. After receiving notice
of said action, OPEXA is entitled to participate in the defense therein, and may
elect to assume the defense thereof by promptly notifying the Indemnified Party
in writing and by selecting counsel reasonably satisfactory to such Indemnified
Party. After BAYLOR has received notice of OPEXA's election to assume the
defense of said action and has approved OPEXA's counsel, OPEXA will not be
liable to BAYLOR under Paragraph 5.4 for any legal or other expenses
subsequently incurred by BAYLOR in connection with the defense thereof unless
(i) BAYLOR has reasonably concluded that there may be legal defenses available
to it that are different from or additional to those available to OPEXA, in
which case such BAYLOR shall have the right to select separate counsel to assume
said legal defenses and to otherwise participate in the defense of said action
on behalf of BAYLOR, (ii) OPEXA shall not have employed counsel reasonably
satisfactory to BAYLOR to represent BAYLOR within a reasonable time after notice
of commencement of the action or (iii) OPEXA has authorized the employment of
counsel for BAYLOR at the expense of OPEXA.
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(b) Neither BAYLOR nor OPEXA shall settle any action covered by
Paragraph 5.4 without first obtaining the consent of the other Party, which
consent will not be unreasonably withheld. Should a controversy or dispute arise
between the Parties regarding a decision to settle an action covered by
Paragraph 5.4, the Parties then agree that the dispute shall be resolved
according to the mediation and arbitration procedures described in Article 17 of
this Agreement.
(c) OPEXA's indemnity obligations under this Agreement shall survive
the termination of this Agreement, regardless of how this Agreement is
terminated.
5.6 Insurance.
5.6.1 Requirements. During the Term, OPEXA shall maintain in full force and
effect, and at levels that are reasonable and consistent with industry standards
for corporations that are developing or marketing products for human clinical
applications, policies of:
(i) General liability insurance (with Broad Form General Liability
endorsement) with limits of not less than one million dollars
($1,000,000) per occurrence with an annual aggregate of two million
dollars ($2,000,000);
(ii) Clinical trials insurance (in the event that OPEXA uses any Licensed
Patented Product(s) or Licensed Patent Pending Product(s) in human
clinical trials) with limits of not less than one million dollars
($1,000,000) per occurrence with an annual aggregate of five million
dollars ($5,000,000).
(iii) Products liability insurance (in the event that OPEXA sells any
Licensed Patented Product(s) or Licensed Patent Pending Product(s))
with limits of not less than three million dollars ($3,000,000) per
occurrence with an annual aggregate of twenty million dollars
($20,000,000). OPEXA shall notify BAYLOR in writing prior to the sale
of any Licensed Patented Product(s) or Licensed Patent Pending
Product(s) that it has obtained products liability coverage that meets
or exceeds these requirements.
In all cases such coverage(s) shall be purchased from a carrier or carriers
reasonably deemed acceptable to BAYLOR and shall name BAYLOR as an additional
insured. Upon request by BAYLOR, OPEXA shall provide to BAYLOR copies of said
policies of insurance.
5.6.2 Annual Meeting. On or about the anniversary of the Agreement Date and
thereafter throughout the Term, for as long as BAYLOR owns stock in OPEXA or
until OPEXA becomes a public company (whichever occurs first), senior executives
from each Party shall meet to discuss and assess OPEXA's insurance coverage
levels.
ARTICLE 6
PROTECTION OF PROPERTY RIGHTS
6.1 Responsibility for Patent Prosecution. From the Agreement Date and for
the Term of this Agreement, OPEXA shall have primary responsibility using patent
counsel of its choice reasonably acceptable to BAYLOR, for deciding whether to
file United States and foreign patent applications, continue prosecution of any
patent applications or maintain any patent application or patent regarding the
Technology licensed hereunder, except that BAYLOR may assume responsibility at
its sole expense for pursuing any protection which OPEXA declines to prosecute
pursuant to Paragraph 6.2 of this Agreement.
10
6.2 Notification of Intent Not to Pursue. During the Term, in the event
that OPEXA decides not to file any or all United States and foreign applications
or to continue prosecution of a patent application to issuance or maintain any
United States or foreign patent application or patent, OPEXA shall timely notify
BAYLOR in writing in order that BAYLOR may file said United States and foreign
applications and continue said prosecution or maintenance of such patent
applications at its own expense. OPEXA's right under this Agreement to practice
the invention under said patent or patent application shall immediately
terminate upon OPEXA ceasing to pay such costs. If OPEXA fails to notify BAYLOR
in sufficient time for BAYLOR to assume the cost, OPEXA shall be considered in
default of this Agreement.
6.3 Prosecution of Patent Applications.During the Term, subject to
Paragraphs 6.1 and 6.2 above, OPEXA agrees to prosecute with good faith and due
diligence all such patent applications and to take all actions reasonably
necessary to maintain and enforce the patents and proprietary rights in and to
the Technology.
6.4 Continuing Obligation to Inform. During the Term, OPEXA shall instruct
counsel for OPEXA to keep BAYLOR reasonably informed, at OPEXA's expense, of
prosecutions pursuant to this Article 6 including submitting to BAYLOR copies of
all official actions and responses thereto.
6.5 Cooperation. BAYLOR agrees to cooperate with OPEXA to whatever extent
is necessary to procure patent protection of any rights, including fully
agreeing to execute any and all documents to give OPEXA the full benefit of the
licenses granted herein.
6.6 Confidentiality. Each Party shall use its best efforts to maintain and
assure the confidentiality of the Confidential Information disclosed to it by
the other Party hereto.
6.7 Allowed Disclosure. Notwithstanding the foregoing, the Parties
understand and agree that OPEXA may, to the extent it deems necessary or
appropriate, disclose the Technology to potential and existing consultants,
employees, board members, licensees, purchasers, investors, joint venturers and
the like, but OPEXA agrees to use reasonable efforts to make such disclosures
subject to a satisfactory confidentiality agreement.
ARTICLE 7
RIGHTS IN ADDITIONAL RESEARCH
7.1 The Parties acknowledge that OPEXA may support research on the
Technology in laboratories and facilities at BAYLOR that are under the direct
personal supervision of the Developers and that said research may result in
discoveries or inventions ("Funded Technology") that are not included within the
definition of Technology transferred by this Agreement. Nothing in this
Agreement shall be deemed to allocate rights or ownership of any Funded
Technology, and any rights to Funded Technology shall be determined by a
separate written agreement.
ARTICLE 8
INFRINGEMENT
8.1 Actions Based on Infringement. Each Party shall promptly inform the
other of any suspected infringement of any licensed Patent Rights or misuse,
misappropriation, theft or breach of confidence of other proprietary rights in
the Technology by a third party, and with respect to such activities as are
suspected, BAYLOR and OPEXA each shall have the right to institute an action for
infringement, misuse, misappropriation, theft or breach of confidence of the
proprietary rights against such third party in accordance with the following:
11
(a) If BAYLOR and OPEXA agree to institute suit jointly, the suit shall
be brought in both their names and all of the out-of-pocket costs and legal fees
relative to such procedures shall be borne by OPEXA. OPEXA shall exercise
control over such action; provided, however, that BAYLOR may, if it so desires,
be represented by counsel of its own selection, at its own expense.
(b) If BAYLOR or OPEXA, as the case may be, decides not to take action,
then the other Party may do so in its own name and at its own cost.
(c) Should either BAYLOR or OPEXA commence suit under the provisions of
this Article 8 and thereafter elect to abandon the same, it shall give timely
notice to the other Party who may, if it so desires, continue prosecution of
such suit at such continuing Party's sole expense.
(d) All recoveries, whether by judgment, award, decree or settlements,
from infringement or misuse of licensed Technology shall be divided as follows:
(i) the Party bringing the action or proceeding shall first recover an amount
equal to the costs and expenses incurred by such Party directly related to the
prosecution of such action or proceeding and (ii) the remainder shall be divided
as follows: (A) in the event that OPEXA instituted the suit or otherwise handled
the matter, the recovery shall be retained by OPEXA, subject to the royalty
obligations hereunder, and (B) in the event that BAYLOR instituted the suit or
otherwise handled the matter, the recovery shall be retained by BAYLOR.
8.2 Settlement. Neither BAYLOR nor OPEXA shall settle any action covered by
this Article 8 without first obtaining the consent of the other Party, which
consent will not be unreasonably withheld.
8.3 Liability for Losses. BAYLOR shall not be liable for any losses
incurred as the result of an action for infringement brought against OPEXA as
the result of OPEXA's exercise of any right granted under this Agreement. The
decision to defend or not defend shall be in OPEXA's sole discretion.
8.4 Obligation to Inform. The Parties shall keep one another informed of
the status of, and their respective activities regarding any litigation as
described herein.
ARTICLE 9
INDEPENDENT CONTRACTOR STATUS
9.1 Parties are Independent Contractors. The Parties hereby acknowledge and
agree that each is an independent contractor and that neither Party shall be
considered to be the agent, representative, master or servant of the other Party
for any purpose whatsoever, and that neither Party has any authority to enter
into a contract, to assume any obligation or to give warranties or
representations on behalf of the other Party. Nothing in this relationship shall
be construed to create a relationship of joint ventures, partnerships, fiduciary
or other similar relationships between the Parties.
ARTICLE 10
TERM AND EXPIRATION
10.1 Term of License. Unless sooner terminated as otherwise provided in
Article 11, the term of the license to employ Technology, Licensed Patent
Pending Products and/or Licensed Patented Products or other Patent Rights
granted herein as part of Article 2 (the "Term") shall expire on a
country-by-country basis, on the date of expiration of the last of the Patent
Rights to expire.
12
ARTICLE 11
TERMINATION
11.1 Automatic Termination. This Agreement shall be terminated
automatically in any one or more of the following circumstances:
(a) the assets of OPEXA are seized or attached, in conjunction with any
action against them by any third party, and such seizure or attachment is not
abated within ninety (90) days;
(b) OPEXA is dissolved, or a sale of all or substantially all of the
assets of OPEXA pursuant to a liquidation not approved in writing by BAYLOR is
made;
(c) OPEXA assigns or attempts to assign any rights under this Agreement
in breach of Paragraph 13.1,
provided, however, that the provisions of Paragraph 11.1(c) shall terminate at
such time that the aggregate of OPEXA's stated capital and capital surplus
accounts equals or exceeds two million dollars ($2,000,000), and shall not
thereafter be applicable notwithstanding a subsequent decrease in such accounts;
or
(d) OPEXA licenses or attempts to license any rights under this
Agreement in breach of Paragraph 13.2,
provided, however, that the provisions of Paragraph 11.1(d) shall terminate at
such time that the aggregate of OPEXA's stated capital and capital surplus
accounts equals or exceeds five hundred thousand dollars ($500,000), and shall
not thereafter be applicable notwithstanding a subsequent decrease in such
accounts.
11.2 Termination by BAYLOR. BAYLOR may terminate this Agreement if OPEXA
fails to perform any of its obligations under this Agreement and fails to remedy
said breach within sixty (60) days after being given written notice of the
specific failure or default and termination by BAYLOR, unless such breach is not
capable of being cured within such time period, in which event this Agreement
shall not terminate so long as OPEXA is pursuing a cure of such breach in a
timely manner and can demonstrate that it is taking all diligent actions
possible to cure the breach. If the breach is disputed, the parties agree to
arbitrate such dispute in accordance with the terms of the Agreement.
11.3 Termination by OPEXA. OPEXA, upon ninety (90) days prior written
notice to BAYLOR, may terminate this Agreement with or without cause.
11.4 Effects of Termination. In the event that this Agreement is terminated
for any reason in any country covered by the terms of this Agreement:
(a) any and all rights in and to the Technology in such country shall
revert to BAYLOR;
(b) all grants and licenses made by BAYLOR to OPEXA pursuant to this
Agreement in such country shall automatically terminate;
13
(c) OPEXA will deliver to BAYLOR within ten (10) days of termination
all copies in its possession or control of all documents and other tangible
information in such country that contain the Technology;
(d) OPEXA agrees to execute all instruments as BAYLOR may reasonably
request that are necessary to reinvest any licensed rights in BAYLOR in such
country;
(e) OPEXA, subject to Article 6, shall have an obligation to maintain
the confidentiality of all Technology in such country;
(f) OPEXA will not use any Confidential Information regarding
non-patented Technology in such country for a period of five (5) years after
termination of this Agreement;
(g) OPEXA shall have thirty (30) days to complete the manufacture and
ninety (90) days to complete the sale or license of any Licensed Patented
Products and Licensed Patent Pending Products in stock or in the course of
manufacture at the time of termination in such country, all subject, however, to
payments of royalty and accounting as provided herein, even if such royalty
obligations arise from transactions subsequent to the effective date of
termination;
(h) OPEXA's obligation to pay royalties, keep records and allow a final
audit shall survive termination in such country;
(i) The Common Stock issued pursuant to this Agreement or the ownership
thereof shall not be affected by any termination in such country, regardless of
the reason for, or the timing of, such termination;
(j) Except as expressly provided herein, no Party hereunder shall be
discharged or relieved from any liability or obligation existing prior to such
termination in such country; and
(k) Upon termination of this License Agreement in such country, all
sublicenses shall automatically terminate. BAYLOR agrees to enter into good
faith negotiations with the sublicensees to establish the terms and conditions
of a license agreement between BAYLOR and such sublicensee.
ARTICLE 12
GOVERNMENTAL COMPLIANCE
12.1 Compliance with All Laws. OPEXA shall at all times during the term of
this Agreement and for so long as it shall sell Licensed Patented Products or
Licensed Patent Pending Products comply and cause its sublicensees to comply
with all local, state, federal and foreign formalities, laws, orders, rules,
decrees or regulations that may control the import, export, manufacture, use or
sale of Licensed Patented Products or Licensed Patent Pending Products or any
other activity undertaken pursuant to this Agreement.
14
12.2 OPEXA Requirements. OPEXA understands and agrees that before BAYLOR
shall be required to perform any obligation hereunder that shall be subject to
local, state, federal and foreign formalities, laws, orders, decrees or
regulations, OPEXA shall first provide BAYLOR with any letter of assurance or
other certification that may be required to comply with the formalities, laws,
decrees, rules, orders or regulations of any agency or instrumentality having
jurisdiction. For example and not by limitation, this includes United States
import and export regulations, Food & Drug Administration regulations,
Department of Agriculture regulations, environmental regulations and recombinant
DNA regulations.
12.3 Failure to Obtain Governmental Approval. Inability or failure, if any,
of OPEXA to secure any necessary government license or approval shall not
entitle OPEXA to terminate this Agreement or to obtain any form of relief,
credit, rebate or recovery from BAYLOR.
12.4 Expenses. During the Term, OPEXA shall be responsible for any and all
expenses, costs, fees, duties or taxes relating to the Technology, Licensed
Patent Pending Products, and/or Licensed Patented Products which are reasonably
necessary to comply with government orders, formalities, rules, regulations and
laws.
12.5 Requirement for U.S. Manufacture. OPEXA agrees that Licensed Patented
Products and/or Licensed Patent Pending Products leased or sold in the United
States shall be manufactured substantially in the United States.
ARTICLE 13
ASSIGNMENT AND LICENSING
13.1 Assignment Requirements. Until the aggregate of OPEXA's stated capital
and capital surplus accounts equals or exceeds two million dollars ($2,000,000),
OPEXA may not assign or attempt to assign any rights under this Agreement.
Except as limited by this Paragraph 13.1 hereof, a sale by OPEXA of all or
substantially all of its assets, or merger or other consolidation shall not
constitute an assignment for purposes hereof, and OPEXA shall be free to enter
into any such sale, merger or other consolidation, so long as the successor
entity acknowledges its consent and agreement to the terms hereof in writing.
13.2 Sublicense Requirements. Until the aggregate of OPEXA's stated capital
and capital surplus accounts equals or exceeds five hundred thousand dollars
($500,000), OPEXA may not sublicense or attempt to sublicense any rights under
this Agreement without the prior written approval of BAYLOR, with respect to
which BAYLOR and OPEXA will negotiate in good faith.
13.3 Consistent Sublicenses. All sublicenses granted by OPEXA of its rights
hereunder shall be subject to the terms of this Agreement. OPEXA shall be
responsible for its sublicensees and shall not grant any rights which are
inconsistent with the rights granted to and obligations of OPEXA hereunder. Any
act or omission of a sublicensee which would be a breach of this Agreement if
performed by OPEXA shall be deemed to be a breach by OPEXA of this Agreement,
provided that BAYLOR shall give OPEXA and sublicensee notice of any such breach
or alleged breach hereof and an opportunity to cure such breach pursuant to the
terms of Paragraph 11.2 herein. Each sublicense agreement granted by OPEXA shall
include an audit right by BAYLOR of the same scope as provided in Article 4
hereof with respect to OPEXA. OPEXA shall give BAYLOR prompt notification of the
identity and address of each sublicensee with whom it concludes a sublicense
agreement and shall supply BAYLOR with a copy of each such sublicense agreement.
13.4 Pre-Existing Agreements. This Agreement shall not supersede any
preexisting agreement BAYLOR has with a third party in the event that this
Agreement is assigned by OPEXA to that third party, even if BAYLOR has consented
to the assignment.
15
13.5 BAYLOR Assignment Rights. BAYLOR may assign its rights hereunder,
including the right to receive the consideration (equity and monetary) for the
licenses herein granted, to its Affiliates, or to such other parties as may be
entitled to receive or exercise same under the Baylor Patent Policy.
ARTICLE 14
PUBLICITY
14.1 Use of Names. Neither Party shall use the name, logotypes or symbols
of the other Party or the name of any employee, faculty, staff, affiliate or
associate of the other Party for publication or advertising purposes, except
with the written consent of the other Party.
ARTICLE 15
ADDRESSES
15.1 Payments. All payments shall be made payable to "Baylor College of
Medicine" and all payments and reports shall be sent to the address below:
BAYLOR Tax ID #: 00-0000000
Director, Office of Technology Administration
Baylor College of Medicine
One Baylor Plaza, BCM-D, 600D
Xxxxxxx, XX 00000
15.2 Notices. All notices or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such Party
by United States Postal Service certified mail, return receipt requested,
postage prepaid, or via overnight courier, addressed to it at its address below
or as it shall designate by written notice given to the other Party:
In the case of BAYLOR: With a copy to:
Senior Vice President & General Counsel Director, Office of Technology
Administration
Baylor College of Medicine Baylor College of Medicine
One Baylor Plaza One Baylor Plaza, BCM-D, 600D
Houston, TX 77030 Xxxxxxx, XX 00000
In the case of OPEXA: With a copy to:
Xxxxxxx Xxxxxx, President Xxxxxxx X. Xxxxxx
Opexa Pharmaceuticals, Inc. Xxxxxxx & Xxxxx, L.L.P.
0000 Xxxxxx Xxxx, Xxxxx 000 0000 Xxxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxx, XX 00000 Xxx Xxxxxxxxx, Xxxxx 00000
ARTICLE 16
BOARD SEAT
16.1 BCMT Board Seat. A representative from BCM Technologies, BAYLOR's
venture development subsidiary, shall also be a director of the OPEXA's Board of
Directors as long as BCM Technologies owns stock in OPEXA or until OPEXA becomes
a public company, whichever comes first.
16
16.2 BAYLOR Board Seat. A representative from BAYLOR shall also be a
director of the OPEXA's Board of Directors as long as BAYLOR owns stock in OPEXA
or until OPEXA becomes a public company, whichever comes first. The Parties
agree that Xx. Xxxxxx Xxxx Zhang, M.D., shall fill such position for so long as
he is affiliated with BAYLOR, unless the Parties agree otherwise.
ARTICLE 17
ARBITRATION
17.1 Amicable Resolution. The Parties shall attempt to settle any
controversy between them amicably. To this end, a senior executive from each
Party shall consult and negotiate to reach a solution. The Parties agree that
the period of amicable resolution shall toll any otherwise applicable statute of
limitations. However, nothing in this clause shall preclude any Party from
commencing mediation if said negotiations do not result in a signed written
settlement agreement within thirty (30) days after written notice that these
amicable resolution negotiations have commenced.
17.2. Mediation. If a controversy arises out of or relates to this
agreement, or the breach thereof, and if the controversy cannot be settled
through amicable resolution, the Parties agree to try in good faith to settle
the controversy by mediation before resorting to final and binding arbitration.
The Party seeking mediation shall propose five mediators, each of whom shall be
a lawyer licensed to practice by the state of Texas, having practiced actively
in the field of commercial law for at least fifteen (15) years, to the other
Party who shall select the mediator from the list. The Parties shall split the
cost of the mediator equally. The Parties agree that the period of mediation
shall toll any otherwise applicable statute of limitations. However, nothing in
this clause shall preclude any Party from commencing arbitration if said
negotiations do not result in a signed written settlement agreement within sixty
(60) days after written notice that amicable resolution negotiations have
commenced.
17.3 Arbitration. Any dispute, controversy, or claim arising out of or
relating to this Agreement, or the breach, termination or invalidity thereof,
including claims for tortious interference or other tortious or statutory claims
arising before, during or after termination, providing only that such claim
touches upon matters covered by this Agreement shall be finally settled by
arbitration administered by the American Arbitration Association pursuant to the
Commercial Arbitration Rules in force at the time of the commencement of the
arbitration, except as modified by the specific provisions of this Agreement. It
is the specific intent of the Parties that this arbitration provision is
intended to be the broadest form allowed by law.
17.4 Parties to Arbitration. This agreement to arbitrate is intended to be
binding upon the signatories hereto, their principals, successors, assigns,
subsidiaries and affiliates. This agreement to arbitrate is also intended to
include any disputes, controversy or claims against any Party's employees,
agents, representatives, or outside legal counsel arising out of or relating to
matters covered by this Agreement or any agreement in which this Agreement is
incorporated.
17.5 Consolidation Permitted. The Parties expressly agree that any court
with jurisdiction may order the consolidation of any arbitrable controversy
under this Agreement with any related arbitrable controversy not arising under
this Agreement, as the court may deem necessary in the interests of justice or
efficiency or on such other grounds as the court may deem appropriate.
17.6 Entry of Judgment. The Parties agree that a final judgment on the
arbitration award may be entered by any court having jurisdiction thereof.
17
17.7 Appointing Arbitrators. The American Arbitration Association shall
appoint the arbitrator(s) from its Large, Complex Claims Panel. If such
appointment cannot be made from the Large, Complex Claims Panel, then from its
Commercial Panel. The Parties hereby agree to and acquiesce in any appointment
of an arbitrator or arbitrators that may be made by such appointing authority.
17.8 Qualifications of the Arbitrator(s). The arbitrator(s) must be a
lawyer, having practiced actively in the field of commercial law for at least
fifteen (15) years.
17.9 Governing Substantive Law. The arbitrator(s) shall determine the
rights and obligations of the Parties according to the substantive laws of the
State of Texas (excluding conflicts of law principles) as though acting as a
court of the State of Texas.
17.10 Governing Arbitration Law. The law applicable to the validity of the
arbitration clause, the conduct of the arbitration, including any resort to a
court for provisional remedies, the enforcement of any award and any other
question of arbitration law or procedure shall be the Federal Arbitration Act.
17.11 Governing Convention. The Parties elect to have the New York
Convention on the Recognition and Enforcement of Foreign Arbitral Awards of June
10, 1958 (instead of the Inter-American New York Convention on International
Commercial Arbitration of August 15, 1990) govern any and all disputes that may
be the subject of arbitration pursuant to this Agreement.
17.12 Preliminary Issues of Law. The arbitrator(s) shall hear and determine
any preliminary issue of law asserted by a Party to be dispositive of any claim,
in whole or part, in the manner of a court hearing a motion to dismiss for
failure to state a claim or for summary judgment, pursuant to such terms and
procedures as the arbitrator(s) deems appropriate.
17.13 Confidentiality. The Parties and the arbitrator(s) shall treat all
aspects of the arbitration proceedings, including without limitation discovery,
testimony and other evidence, briefs and the award, as strictly confidential.
Further, except as may be required by law, neither Party nor the arbitrator(s)
may disclose the existence, content, or results of any arbitration hereunder
without the prior written consent of both Parties.
17.14 Place of Arbitration. The seat of arbitration shall be Houston,
Texas, USA.
17.15 Language. The arbitration shall be conducted in the English language.
All submissions shall be made in English or with an English translation.
Witnesses may provide testimony in a language other than English, provided that
a simultaneous English translation is provided. Each Party shall bear its own
translation costs.
17.16 Punitive Damages Prohibited. The Parties hereby waive any claim to
any damages in the nature of punitive, exemplary, or statutory damages in excess
of compensatory damages, or any form of damages in excess of compensatory
damages, and the arbitrator(s) is/are specially divested of any power to award
any damages in the nature of punitive, exemplary, or statutory damages in excess
of compensatory damages, or any form of damages in excess of compensatory
damages.
17.17 Costs. The Party prevailing on substantially all of its claims shall
be entitled to recover its costs, including attorneys' fees, for the arbitration
proceedings, as well as for any ancillary proceeding, including a proceeding to
compel or enjoin arbitration, to request interim measures or to confirm or set
aside an award.
17.18 Survival. The provisions of this Article 17 shall survive expiration
or termination of this Agreement.
18
MISCELLANEOUS
18.1 Assistance. Without further consideration, BAYLOR hereby agrees to
execute and deliver, and BAYLOR agrees to cause its officers, trustees,
employees, and agents to execute and deliver, such other instruments, and to
take such other action as OPEXA hereunder may reasonably request to more
effectively convey and transfer to and vest in OPEXA, and to put OPEXA in
possession of, the rights granted hereunder, and to assist OPEXA in the
recordation of same as necessary, all in such form and substance as OPEXA may
reasonably request and at OPEXA's expense.
18.2 Binding Agreement. This Agreement shall be binding upon and shall
inure to the benefit of the legal representatives, administrators, successors,
permitted assigns and licensees of the Parties hereto.
18.3 Unenforceable Provision. The Parties hereby agree that neither Party
intends to violate any public policy, statutory or common law, rule, regulation,
treaty or decision of any government agency or executive body thereof of any
country or community or association of countries, and that if any word,
sentence, paragraph or clause or combination thereof of this Agreement is found,
by a court or executive body with judicial powers having jurisdiction over this
Agreement or any of the Parties hereto, in a final, unappealable order to be in
violation of any such provision in any country or community or association of
countries, such words, sentences, paragraphs or clauses or combination shall be
inoperative in such country or community or association of countries, and the
remainder of this Agreement shall remain binding upon the Parties hereto.
18.4 Entire Agreement. The terms and conditions herein contained, including
all the schedules hereto, and all the agreements referenced herein, the
assignments with the individuals listed on Schedule 1, and each of the
Developer's Agreements with the individuals listed on Schedule 1, executed
contemporaneously herewith or contemplated by any of such agreements constitute
the entire agreement between the Parties and supersede all previous
communications whether oral or written between the Parties hereto with respect
to the subject matters hereof, and no previous agreement or understanding
varying or extending the same shall be binding upon either Party hereto.
18.5 No Waiver. The Parties covenant and agree that if either Party fails
or neglects for any reason to take advantage of any of the terms provided for
the termination of this Agreement or if either Party, having the right to
declare this Agreement terminated, shall fail to do so, any such failure or
neglect by either Party shall not be a waiver or be deemed or be construed to be
a waiver of any cause for the termination of this Agreement subsequently
arising, or as a waiver of any of the terms, covenants or conditions of this
Agreement or of the performance thereof. None of the terms, covenants and
conditions of this Agreement may be waived by either Party except by its written
consent.
18.6 Survival Upon Termination.The provisions, rights and obligations set
forth in Articles 1, 2 (as contemplated by Paragraph 11.4(g)), 3 (but only with
respect to sales occurring prior to the date of termination or to the extent
applicable as per the terms of Paragraph 11.4 (g)), 4, 5, 9, 11, 13, 14, 15, 17
and 18, along with any other obligations that by their terms survive expiration
or termination, shall survive the expiration or termination of this Agreement.
18.7 Changes to Agreement. No amendment or modification to this Agreement
shall be effective unless it is in writing and signed by duly authorized
representatives of both Parties.
18.8 Informed Review. The Parties acknowledge that each Party has received
and reviewed this Agreement and that normal rules of construction to the effect
that any ambiguities are to be resolved against the drafting Party shall not be
employed in the interpretation of this Agreement or any amendments or exhibits
thereto.
19
18.9 Headings and References. The headings on articles and sections used in
this document are for convenience and reference only, and shall not affect the
meaning or interpretation of this Agreement unless the context requires
otherwise. All references in this Agreement to any exhibit, schedule, or
appendix shall be deemed and construed as references to a section of an exhibit,
schedule or appendix of this Agreement and any exhibits, schedules, or
appendices are hereby incorporated in this Agreement by such reference.
18.10 Third Party Beneficiaries.This Agreement is intended only to benefit
the Parties. The Parties have no intention to create any interests for any other
party. Specifically, no interests are intended to be created for any customer,
patient, research subject or other persons (or their relatives, heirs,
dependents, or personal representatives) by or upon whom the Technology,
Licensed Patent Pending Products and Licensed Patented Products may have been
used.
18.11 Recordation. Each Party shall have the right during the Term to
record or register this Agreement in any patent office or other appropriate
facility, and the other Party shall provide reasonable assistance in effecting
such recording.
18.12 Counterpart Execution. This Agreement shall become binding as of the
Agreement Date when any one or more counterparts hereof, individually or taken
together, shall bear the signatures of each of the Parties hereto. This
Agreement may be executed in any number of counterparts, each of which shall be
an original against any Party whose signature appears thereon, but all of which
shall constitute one and the same instrument.
18.13 Responsibility for Expenses. Each Party is responsible for its own
expenses related to the preparation and execution of this Agreement.
IN WITNESS WHEREOF, the Parties hereto have executed and delivered this
Agreement in multiple originals by their duly authorized officers and
representatives on the respective dates shown below, but effective as of the
Agreement Date.
OPEXA BAYLOR COLLEGE OF MEDICINE
Name: /s/ Xxxxxxx X. Xxxxxx Name: /s/ W. Xxxxxx Xxxxxx
--------------------- --------------------
Xxxxxxx X. Xxxxxx W. Xxxxxx Xxxxxx
Title: President, Opexa Pharmaceuticals Title: Senior Vice President &
General Counsel
Date: September 6, 2001 Date: September 6, 2001
20
Schedule 1
DEVELOPERS
1. Xxxxxx Xxxx Zhang, M.D., Ph.D.
2. Xxxx X. Xxxx, M.D., Ph.D.
21
Schedule 2
PATENTS PENDING AND ISSUED
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
OTA NUMBER PATENT SERIAL NUMBER TYPE STATUS
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
00-00 "X-Xxxx X(xxxx)-X(xxxx)-X(xxxx) 09/507,819 U.S. Pending; received
Sequence and Methods for its Non-provisional Notice of Allowance.
Detection."
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
00-00 "X-Xxxx X(xxxx)-X(xxxx)-X(xxxx) US00/40006 PCT Pending
Sequence and Methods for its
Detection."
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
00-00 "X-Xxxx X(xxxx)-X(xxxx)-X(xxxx) US00/22988 PCT; claims to Pending
Sequence and Methods for its 20-mer peptide
Detection."
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
00-00 "X-Xxxx X(xxxx)-X(xxxx)-X(xxxx) 09/641,576 U.S Pending
Sequence and Methods for its Continuation-In-Part
Detection." with claims to
20-mer peptide.
--------------- ------------------------------------ ------------------- ---------------------- ----------------------
22
Schedule 3
TECHNOLOGY LICENSED TO OPEXA
1. OTA 00-70 "T-Cell Peptides as Therapeutics for Immune-Related Disease."
Inventor: Xxxxxx Xxxxx, M.D., Department of Neurology.
2. OTA 00-71 "T-Cell Receptor V(beta)-D(beta)-J(beta) Sequence and Methods
for its Detection." Inventor: Xxxxxx Xxxx Zhang, M.D., Department of
Neurology.
3. OTA 01-02 "A Hormone Compound in the Treatment of Autoimmune Disease."
Inventors: Xxxx Xxxxx, Ph.D. and Xxxxxx Xxxxx, M.D., Department of
Neurology.
4. OTA 01-21 "The Use of a Unique Sequence of Human Herpesvirus-6."
Inventor: Xxxxxx Xxxxx, M.D., Department of Neurology.
5. OTA 01-68 "T-Cell Vaccination in Multiple Sclerosis." Inventor: Xxxxxx
Xxxxx, M.D., Department of Neurology.
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Schedule 4
DISTRIBUTION OF SHARES OF COMMON STOCK
Name Number of Shares
------------ ----------------
1. Xxxxxx Xxxx Zhang, M.D., Ph.D. 637,500
2. Xxxx X. Xxxx, M.D., Ph.D. 212,500
3. Baylor College of Medicine Department of Neurology 425,000
4. Baylor College of Medicine General Fund 425,000
Total 1,700,000
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