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EXHIBIT 10.30
UNIVERSITY TECHNOLOGY CORPORATION
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Agreement is made and entered into this ninth day of December
1996, by and between the UNIVERSITY TECHNOLOGY CORPORATION a not-for-profit
Colorado corporation having its principal place of business at 0000 Xxxx Xxx.,
Xxxxx 000, Xxxxxxx, Xxxxxxxx 00000 X.X.X. (hereinafter referred to as UTC),
and
GERON CORPORATION
a corporation duly organized under the laws of Delaware and having its
principal place of business at 000 Xxxxxxxxxxxx Xxxxx, Xxxxx Xxxx, Xxxxxxxxxx
00000 (hereinafter referred to as LICENSEE)
RECITALS
WHEREAS, UTC is the owner of certain University of Colorado
intellectual property developed at the University of Colorado by its employee
and one or more employees of the Xxxxxx Xxxxxx Medical Institute (hereinafter
referred to as THE INSTITUTE), embodied in Inventions, Patent Rights, Patents,
Patent Applications, Copyrights or proprietary Know-How (as later defined
herein and referred to collectively as "Intellectual Property Rights") related
to:
CASE NO: 7017
TITLE: TELOMERASE PROTEIN SEQUENCES AND NEW MOTIFS
INVENTORS: DRS. X. XXXXXXX AND X. XXXX
and has the right to grant licenses for aforementioned intellectual property,
subject only to a royalty-free, non-exclusive license granted to the United
States Government and/or to THE INSTITUTE, when applicable; and,
WHEREAS, UTC desires to have the Intellectual Property Rights utilized
in the public interest and is willing to grant a license thereunder; and,
WHEREAS, LICENSEE has represented to UTC in order to induce UTC to
enter into this Agreement, that LICENSEE shall commit itself to a thorough,
vigorous and diligent
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program of exploiting the Know-How and/or Intellectual Property Rights
commercially so that public utilization and royalty income to UTC shall result
therefrom; and,
WHEREAS, LICENSEE and UTC agree that the best way to utilize the
existing Intellectual Property is to cooperate in identifying protein sequences
and new motifs specific to human telomerase through collaborative efforts at
both Geron and the University of Colorado, Drs. Xxxxxxx and Xxxx, and various
Geron scientists have entered into a collaborative effort upon the signing of
the Option Agreement dated November 8, 1996 and entered into by UTC and
LICENSEE and
WHEREAS, LICENSEE desires to obtain a license under the Intellectual
Properly Rights upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the promises and the mutual
covenants contained herein the parties agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall include a related company of LICENSEE, the
voting stock of which is directly or indirectly at least fifty percent (50%)
owned or controlled by LICENSEE; an organization which directly or indirectly
controls at least fifty percent (50%) of the voting stock of LICENSEE; and, an
organization, at least fifty percent (50%) of which is directly or indirectly
common to the ownership of LICENSEE.
1.2 "Intellectual Property Rights" shall mean rights to
commercialize all of the following UTC intellectual property based on
inventions and/or discoveries and/or Know-How related thereto arising from THE
INSTITUTE or the University of Colorado, including:
(a) the United States and foreign patents and/or patent
applications and/or inventions listed in Appendix A;
(b) the United States and foreign patents issued from the
applications listed in Appendix A and from divisionals and continuations of
these applications;
(c) claims of U.S. and foreign continuation-in-part
applications, and of the resulting patents, which claim priority to (a) and/or
(b) above, and which are directed to subject matter specifically described in
the U.S. and foreign applications listed in Appendix A;
(d) claims of all foreign patent applications, and of the
resulting patents, which claim priority to (a) and/or (b) above, and which are
directed to subject matter specifically described in the United States patents
and/or patent applications described in (a), (b), or (c) above; and
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(e) any patent, U.S. or foreign, filed on the human
telomerase protein(s) and corresponding genes and related nucleic acids arising
from the collaborative efforts between Geron scientists and Drs. Xxxxxxx and
Xxxx after the signing of the Option Agreement; and
(f) any reissues of patents described in (a), (b), (c),
(d), or (e) above.
1.3 A "Licensed Product" shall mean any product or part thereof
which:
(a) is based on the Intellectual Property and/or which is
covered in whole or in part by an issued, unexpired claim or a pending claim
contained in the Intellectual Property Rights in the country in which any
Licensed Product is made, used or sold; or
(b) is manufactured using a Licensed Process which is
covered in whole or in part by an issued, unexpired claim or a pending claim
contained in the Intellectual Property Rights in the country in which any
Licensed Process is used or in which such product or part thereof is used or
sold; or
(c) is created using the Intellectual Property Rights
licensed hereunder, and/or Know-How related to or described in Intellectual
Property Rights provided hereunder, and used prior to the Know-How entering the
public domain; and
(d) is sold, manufactured or used in any country under
this Agreement.
1.4 A "Licensed Process" shall mean:
(a) any process which is based on the Intellectual
Property and/or which is covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the Intellectual Property Rights; or
(b) is created using the Intellectual Property Rights
licensed hereunder and/or Know-How related to or described in Intellectual
Property Rights provided hereunder, and used prior to the Know-How entering the
public domain; and
(c) is sold, manufactured or used in any country under
this Agreement.
1.5 "Net Sales" of LICENSEE and/or its sublicensee shall mean such
party's receipts for Licensed Products and Licensed Processes produced
hereunder less the sum of the following:
(a) discounts allowed in amount customary in the trade,
(b) sales, tariff duties and/or use taxes directly
imposed and with reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
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No deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Products shall be considered
"sold" when billed out or invoiced. In the event that the sale is made to an
Affiliate, the Net Sale will not be less than an equivalent sale to a
non-affiliate.
1.6 "Know-How" shall mean any and all technical data,
information, or knowledge which relate to the Licensed Product, the Licensed
Process or the manufacture, marketing, registration, purity, quality, potency,
safety, and efficacy of the Licensed Product or Licensed Process and which is
not in the public domain.
1.7 "Territory" shall mean worldwide.
1.8 "Field of Use" shall mean any and all uses or
applications of the Intellectual Property Rights and the inventions and patents
derived therefrom.
1.9 "Royalty Year" shall mean each consecutive twelve
(12) month period commencing with the Effective Date.
ARTICLE II - GRANT
2.1 UTC hereby grants to LICENSEE the exclusive right and license
to the Intellectual Properly Rights to make, have made, use, lease and sell the
Licensed Products, and to practice the Licensed Processes in the Territory for
the Field of Use to the end of the term for which the Intellectual Property
Patent Rights are granted unless sooner terminated according to the terms
hereof, and Know-How for a term of [*] years or until such time that the
LICENSEE can establish that all of the Know-How is available in the public
domain.
2.2 LICENSEE agrees that Licensed Products leased or sold in the
United States shall be manufactured substantially in the United States.
2.3 In the case of an exclusive license, UTC hereby agrees that it
will not grant any other license to make, have made, use, lease and sell the
Intellectual Property Rights and/or the Licensed Products, or to utilize
Licensed Processes, in the Territory for the Field of Use during the period of
time commencing with the Effective Date of this Agreement and terminating with
the expiration of this Agreement.
2.4 UTC reserves the right to allow the Inventors, the University
of Colorado and the Xxxxxx Xxxxxx Medical Institute, and all of their
employees, to practice the Know-How and/or Intellectual Property Rights for
their own noncommercial, research and educational purposes.
2.5 LICENSEE shall have the right to enter into sublicensing
agreements for the rights, privileges and licenses granted hereunder with UTC
permission, such consent not to be unreasonably withheld. LICENSEE shall
provide written notification to UTC of license
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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negotiations with potential sublicensees in which the Intellectual Property
Rights licensed hereunder constitute a material portion of the consideration to
be provided by Geron in the agreements under negotiation.
2.6 LICENSEE hereby agrees that every sublicensing agreement to
which it shall be a party and which grants a sublicense to the rights,
privileges and license granted hereunder shall contain a statement setting
forth the date upon which LICENSEE's exclusive rights, privileges and license
hereunder shall terminate, as defined in section 2.1 above.
2.7 LICENSEE agrees that any sublicenses to the rights, privileges
and license granted hereunder by it shall provide that the obligations to UTC
or this Agreement shall be binding upon the sublicensee as if it were a party
to this Agreement. LICENSEE further agrees to attach copies of this Agreement
to such sublicense agreements, and to guarantee the performance of that
sublicensee under any such agreement.
2.8 LICENSEE agrees to forward to UTC a copy of any and all
sublicense agreements granting a sublicense to the rights, privileges and
license granted hereunder within thirty (30) days of the execution of such
sublicense agreements and further agrees to forward to UTC annually a copy of
such reports received by LICENSEE from its sublicensees during the preceding
twelve (12) month period under such sublicenses as shall be pertinent to a
royalty accounting under such sublicense agreements, and to guarantee the
performance of that sublicensee under any such agreement.
2.9 LICENSEE shall not receive from sublicensees anything of value
in lieu of cash payments in consideration for any sublicense under this
Agreement, without the express prior written permission of UTC.
2.10 The license granted hereunder shall not be construed to confer
any rights upon LICENSEE by assumption, implication, estoppel or otherwise as
to any technology not specifically set forth herein.
ARTICLE III - DUE DILIGENCE
3.1 LICENSEE shall use commercially reasonable efforts to bring
one or more Licensed Products or Licensed Processes to market through a
thorough, vigorous and diligent program for exploitation of the Know-How and/or
Intellectual Property Rights to attain successful commercialization of Licensed
Products and/or Licensed Processes. Both parties also agree that due diligence
will be met by exerting reasonable effort to identify and clone the genes
encoding protein components(s) of human telomerase.
3.2 In addition, LICENSEE, shall adhere to the following
milestones:
(a) LICENSEE shall deliver to UTC, within [*] of
successfully cloning the genes encoding the protein component or components of
the human telomerase, as demonstrated by reconstitution of telomerase activity
using only recombinant proteins or if such reconstitution proves impractical,
then by demonstrating sufficient homology to the Euplodes
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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and yeast protein genes to provide reasonable certainty that the human
telomerase protein(s) has been cloned, a basic business plan and forecast
showing the amount of money, number and kind of personnel and time budgeted and
planned for each phase of development of the Licensed Products and Licensed
Processes and shall provide similar reports to UTC on an annual basis on or
before the ninetieth (90th) day following the close of LICENSEE's fiscal year.
(b) LICENSEE shall permit an in-plant inspection by UTC
on or before July 1, 1997, and thereafter permit in-plant inspections by UTC at
regular intervals with at least twelve (12) months between each such
inspection.
(c) LICENSEE shall have Net Sales of licensed products or
processes or services based in whole or in part on the Intellectual Property
according to the following schedule, beginning [*] after successfully cloning
the genes encoding the protein component or components of human telomerase:
Year 1 [*];
Year 2 [*];
Year 3 [*]; and
Year 4 [*]
3.3 LICENSEE's failure to perform in accordance with Paragraphs
3.1 and 3.2 above shall be grounds for UTC to terminate this Agreement pursuant
to Paragraph 12.3 hereof, unless LICENSEE makes a minimum annual royalty
payment equal to the royalty to be paid if such Net Sales had been made, or
both parties renegotiate the Due Diligence plan and mutually agree to revisions
thereto.
ARTICLE IV - MONETARY CONSIDERATION, INCLUDING ROYALTIES
4.1 For the rights, privileges and license granted hereunder,
LICENSEE shall pay royalties to UTC in the mariner hereinafter provided to the
end of the term of the Know-How and/or Intellectual Property Rights or until
this Agreement shall be terminated as hereinafter provided:
(a) LICENSE ISSUE FEE of [*] which shall be deemed earned
and due immediately upon the execution of this Agreement (and for which the [*]
option fee paid pursuant to the Option Agreement dated November 8, 1996 entered
into by UTC and LICENSEE shall be credited) plus:
(i) a grant of [*] shares of Geron common stock,
and (ii) a grant of [*] nonqualified stock options for Geron common stock. The
shares of common stock will not be registered and are subject to the provisions
of Rule 144. The exercise price of the options will be the closing price of
Geron common stock on December 11, 1996, the day the Geron Board of Directors
approves the grants of shares and options. The options will vest immediately
and be
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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exercisable for a ten year period. The shares obtained through exercise of
options are subject to a lock-up period of 90 days from the signing of this
Agreement,
(b) LICENSE MAINTENANCE FEES of [*] per year payable on
January 1, 1998 and on January 1 of each year thereafter for the Term of the
Agreement.
(c) RUNNING ROYALTY in an amount equal to [*] of
therapeutics and [*] of other products based on the Net Sales of the Licensed
Products or Licensed Processes used, leased or sold by or for LICENSEE or
sublicensee. In the event that other patents from third parties are required
for commercialization of the Intellectual Property, the royalty rate may be
reduced by [*] of Net Sales per each additional patent required, but in no
case will the expected royalty rate be reduced by more than [*].
(d) In addition to the foregoing, LICENSEE agrees that it
will remit to UTC [*] of any Option Fee, License Fee, or any
other front-end payment which it may receive from any sublicensee granted by it
under the Intellectual Property Rights licensed hereunder. If other, non-UTO,
technologies are involved, the share going to UTC will be pro-rated by an
amount to be determined by good faith negotiations.
(e) Milestone payments will be based on the use of this
Intellectual Property to clone the human telomerase protein component or
components such that UTC earns:
(i) a payment of [*] if a publication
authored by scientists from Geron and/or the University of Colorado is the
first to be published on the complete cloning of the nucleic acid encoding a
human telomerase protein or proteins, such payment to be made within thirty
(30) days of such publication, and
(ii) a payment of [*] plus (i) a grant of
[*] shares of Geron common stock, and (ii) a grant of [*] nonqualified
stock options for Geron common stock [The shares of common stock will not be
registered and are subject to the provisions of Rule 144. The exercise price
of the options will be the closing price of Geron common stock on the date that
the [*] is payable. The shares obtained through exercise of options
are subject to a lock-up period of 90 days from the date of this grant, and can
be exercised for a ten year period.] when Geron and/or UTC is issued a patent
(or patents) that claim recombinant methods and vectors encoding the human
telomerase protein component or components, which patent (or patents) is not
subject to an interference proceeding and is not dominated by a patent owned by
a third party with claims directed specifically to human telomerase proteins or
nucleic acids encoding the same.
4.2 No multiple royalties shall be payable because any Licensed
Product, its manufacture, use, lease or sale are or shall be covered by more
than one Intellectual Property Rights patent application or Intellectual
Property Rights patent licensed under this Agreement.
4.3 Royalty payments shall be paid in United States dollars in
Boulder, Colorado or at such other place as UTC may reasonably designate
consistent with the laws and regulations
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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controlling in any foreign country. If any currency conversion shall be
required in connection with the payment of royalties hereunder, such conversion
shall be made by using the exchange rate prevailing at the Chase Manhattan Bank
(N.A.) on the last business day of the calendar quarterly reporting period to
which such royalty payments relate.
ARTICLE V - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to UTC hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of
the appropriate division of LICENSEE to which this Agreement relates. Said
books and the supporting data shall be open at all reasonable times for three
(3) years following the end of the calendar year to which they pertain, to the
inspection of UTC or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other respects with this Agreement.
5.2 LICENSEE, after first sales of Licensed Product, Process or
Intellectual Property, and within forty-five (45) days after March 31, June 30,
September 30 and December 31, of each year, shall deliver to UTC true and
accurate reports, giving such particulars of the business conducted by LICENSEE
and its sublicensees during the preceding three-month period under the
Agreement as shall be pertinent to a royalty accounting hereunder. These shall
include at least the following:
(a) number of Licensed Products sold;
(b) total xxxxxxxx for Licensed Products sold;
(c) accounting for all Licensed Processes used or sold;
(d) deductions applicable as provided in Paragraph 1.5;
(e) total royalty due; and
(d) names and addresses of all sublicensees of LICENSEE.
5.3 With each such report submitted, LICENSEE shall pay to UTC the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide UTC with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum, a
Balance Sheet and an Operating Statement.
5.5 The royalty payments set forth in this Agreement shall, if
overdue, bear interest until payment at the monthly rate of [*]. The payment of
such interest shall not foreclose UTC from exercising any other rights it may
have as a consequence of the lateness of any payment.
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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ARTICLE VI - PATENT PROSECUTION
6.1 [*] shall apply for, seek issuance of and maintain during the
term of this Agreement the Intellectual Property Rights in the United States and
in foreign countries. The prosecution, filing and maintenance of all
Intellectual Property Rights patents and applications shall be the primary
responsibility of that party. Provided, however, the other party shall have
reasonable opportunities to advise [*] and shall cooperate with [*] in such
prosecution, filing and maintenance.
6.2 Payment of all fees and costs relating to the filing,
prosecution, and maintenance of the Intellectual Property Rights shall be the
responsibility of [*], after the date of this Agreement
ARTICLE VII - INFRINGEMENT
7.1 LICENSEE shall inform UTC promptly in writing of any alleged
infringement of the Intellectual Property Rights by a third party and of any
available evidence thereof.
7.2 During the term of this Agreement, UTC shall have the right,
but shall not be obligated, to prosecute at its own expense any such
infringements of the Intellectual Property Rights. If UTC prosecutes any such
infringement, UTC agrees that LICENSEE may join UTC as a party plaintiff in any
such suit, without expense to UTC. The total cost of any such infringement
action commenced or defended solely by UTC shall be borne by UTC and UTC shall
keep any recovery or damages for past infringement derived therefrom. Once an
IND has been filed and/or sales commence, Geron shall have the right, but not
the obligation, to control litigation and recover costs and damages, though
royalties will be paid to UTC on lost sales due to such infringements after
first recovering the necessary and reasonable expenses associated with the
litigation. If LICENSEE prosecutes any such infringement, LICENSEE agrees that
UTC may join LICENSEE as a party plaintiff in any such suit, without expense to
LICENSEE.
7.3 If UTC has the right to assume litigation responsibility, and
within six (6) months after having been notified of any alleged infringement or
such shorter time prescribed by law, if UTC shall have been unsuccessful in
persuading the alleged infringer to desist and shall not have brought and shall
not be diligently prosecuting an infringement action, or if UTC shall notify
LICENSEE at any time prior thereto of its intention not to bring suit against
any alleged infringer, then, and in those events only, LICENSEE shall have the
right, but shall not be obligated, to prosecute at its own expense any
infringement of the Intellectual Property Rights, and LICENSEE may, for such
purposes, use the name of UTC as party plaintiff; provided, however, that such
right to bring an infringement action shall remain in effect only for so long
as the license granted herein remains exclusive. No settlement, consent
judgment or other voluntary final disposition of the suit may be entered into
without the consent of UTC, which consent shall not unreasonably be withheld.
LICENSEE shall indemnify UTC against any expenses, including attorney's fees,
incurred by UTC in such proceedings commenced by LICENSEE.
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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7.4 In the event that LICENSEE and UTC jointly shall undertake the
enforcement and/or defense of the Intellectual Property Rights by litigation,
then all costs and judgments shall be shared in a formula to be developed
through mutual consent.
7.5 In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the Intellectual Property Rights shall
be brought against LICENSEE, UTC has the opportunity, with LICENSEE consent,
within thirty (30) days after commencement of such action, to intervene and
take over the sole defense of the action at its own expense.
7.6 In any infringement suit as either party may institute to
enforce the Intellectual Property Rights pursuant to this Agreement, the other
party hereto shall, at the request and expense of the party initiating such
suit, cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers,
information, samples, specimens, and the like.
ARTICLE VIII - PRODUCT LIABILITY
8.1 LICENSEE, once a product is defined and clearly identified,
for the remainder of this Agreement, shall indemnify, defend and hold UTC, the
University of Colorado, THE INSTITUTE, and their respective trustees, board
members, officers, employees and affiliates, harmless against all claims and
expenses, including legal expenses and reasonable attorney's fees, arising out
of the death of or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense and liability
of any kind whatsoever resulting from the production, manufacture, sale, use,
lease, consumption or advertisement of the Licensed Products and/or Licensed
Processes or arising from any obligation of LICENSEE hereunder.
8.2 LICENSEE shall obtain and carry in full force and effect
liability insurance which shall protect LICENSEE, UTC, the University of
Colorado, and THE INSTITUTE in regard to events covered by Paragraph 8.1 above.
8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UTC
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, AND VALIDITY OF INTELLECTUAL PROPERTY RIGHTS CLAIMS,
ISSUED OR PENDING.
ARTICLE IX - EXPORT CONTROLS
It is understood that UTC is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United
States export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United
States Government and/or written assurances
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by LICENSEE that LICENSEE shall not export data or commodities to certain
foreign countries without prior approval of such agency. UTC neither
represents that a license shall not be required nor that, if required, it shall
be issued.
ARTICLE X - NON-USE OF NAMES
LICENSEE shall not use the names of UTC, THE INSTITUTE, and/or the
University of Colorado nor any of their employees, nor any adaptation thereof,
in any advertising, promotional or sales literature without prior written
consent obtained from UTC in each case, except that LICENSEE may state that it
is licensed by UTC under one or more of the patents and/or applications
comprising the Intellectual Property Rights, and the same right is held by UTC
in regard to the LICENSEE action in obtaining this license.
ARTICLE XI - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be
void; provided, however, that either party may assign this Agreement to any
party acquiring all or substantially all of the assets and business of such
party.
ARTICLE XII - TERMINATION
12.1 If LICENSEE shall cease to carry on its business or initiate
or conduct actions in order to declare a state of bankruptcy, this Agreement
shall terminate upon notice by UTC.
12.2 Should LICENSEE fail to pay UTC royalties due and payable
hereunder, UTC shall have the right to terminate this Agreement on [*] notice,
unless LICENSEE shall pay UTC within the [*] day period, all such royalties and
interest due and payable. Upon the expiration of the [*] period, if LICENSEE
shall not have paid all such royalties and interest due and payable, the rights,
privileges and license granted hereunder shall terminate.
12.3 Upon any material breach or default of this Agreement by either
party other than those occurrences set out in Paragraphs 12.1 and 12.2
hereinabove, which shall always take precedence in that order over any material
breach or default referred to in this Paragraph 12.3, the non-breaching party
shall have the right to terminate this Agreement and the rights, obligations,
privileges and license granted hereunder by [*] notice to the party in breach.
Such termination shall become effective unless the party in breach shall have
cured any such breach or default prior to the expiration of the [*] period.
12.4 LICENSEE shall have the right to terminate this Agreement at
any time on [*] notice to UTC, and upon payment of amounts due UTC through the
effective date of the termination.
12.5 UTC may terminate this Agreement upon the occurrence of the [*]
separate instance of LICENSEE's failure to pay royalties when due within any
consecutive [*] period.
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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12.6. Upon termination of this Agreement for any reason, nothing
herein shall be construed to release either party from any obligation that
matured prior to the effective date of such termination. LICENSEE and any
sublicensee thereof may, however, after the effective date of such termination,
sell all Licensed Products, and complete Licensed Products in the process of
manufacture at the time of such termination and sell the same, provided that
LICENSEE shall pay to UTC the royalties thereon as required by Article IV of
this Agreement and shall submit the reports required by Article V hereof on the
sales of Licensed Products.
12.7 Upon termination of this Agreement for any reason, any
sublicensee not then in default shall have the right to seek a license from
UTC.
ARTICLE XIII - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such
party by certified first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
In the case UTC: UNIVERSITY TECHNOLOGY CORPORATION:
0000 Xxxx Xxx., Xxxxx 000
Xxxxxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxxxx, Ph.D.
President and CEO
In the case of LICENSEE: GERON CORPORATION
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx, XX 00000
Attn: Xxxxxx Xxxxxxx
President and CEO
ARTICLE XIV - PUBLICATIONS ARISING
FROM LICENSEE R & D SUPPORT
14.1 LICENSEE recognizes that UTC's relationship with the
University of Colorado requires that the results of University of Colorado's
research must be publishable and agrees that University of Colorado personnel
engaged in research pertinent to Know-How and/or Intellectual Property Rights
shall be permitted to present at symposia, professional meetings and to publish
in journals, theses or dissertations, or otherwise of their own choosing,
methods and results of research, provided, however, that LICENSEE shall have
been furnished copies of any proposed publication or presentation at least
[*] in advance of the submission of such
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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proposed publication or presentation to a journal, editor or other third party
when LICENSEE has provided the research funding which lead to the results
presented in manuscript form.
14.2 LICENSEE shall have [*], after receipt of said copies, to
object to such proposed presentation or proposed publication either because
there is patentable subject matter which needs protection and/or there is
confidential information of LICENSEE contained in the proposed publication or
presentation. In the event that LICENSEE makes such objection, the University
of Colorado personnel shall refrain from making such publication or presentation
for a maximum of [*] in order for the LICENSEE to file patent applications with
the United States Patent and Trademark Office and/or foreign patent office(s)
directed to the Patentable subject matter contained in the proposed publication
or presentation.
14.3 The parties agree that scientific publications describing the
results of their collaborative efforts to clone genes encoding human telomerase
proteins shall be authored and published by mutual agreement and that, until
such publication, information exchanged between the parties in this regard
shall be treated as confidential information and shall not be further
disseminated by the receiving party for a three year period without the written
consent of the party from whom the information was received.
ARTICLE XV - MISCELLANEOUS
15.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Colorado, USA, except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth
the entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto
15.3 The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement shall be determined to be invalid
or unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof
15.4 LICENSEE agrees to xxxx the Licensed Products sold in the
United States with all applicable United States patent numbers. All Licensed
Products shipped to or sold in other countries shall be marked in such a manner
as to conform with the patent laws and practice of the country of manufacture
or sale.
15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
* Certain portions of this Exhibit have been omitted for which confidential
treatment has been requested and filed separately with the Securities and
Exchange Commission.
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15.6 The University Technology Corporation, the Inventors, the
University of Colorado, and the Xxxxxx Xxxxxx Medical Institute, and their
trustees, officers, employees, and agents, will be indemnified and held
harmless by the LICENSEE or sublicensee from and against any claim, liability,
cost, expense, damage, deficiency, loss, or obligation (including, without
limitation, reasonable attorney's fees and disbursements), based upon, arising
out of, or otherwise relating to any actions taken or omissions made by
LICENSEE in connection with or pursuant to this license.
IN WITNESS WHEREOF, the parties have hereunto set their hands and
seals and duly executed this Agreement the day and year set forth below.
UNIVERSITY TECHNOLOGY CORPORATION
By: _________________________________
Xxxxxxx X. Xxxxxxxx, Ph.D.
President and CEO
Date: _______________________________
GERON CORPORATION
By: _________________________________
Xxxxxx X. Xxxxxxx
President and CEO
Date: _______________________________
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APPENDIX A
UNIVERSITY Case No. 7017: Telomerase Protein Sequences and New Motifs
USSN: Not yet available
By: Xxxxxxx and Cech
Date filed: October 1, 1996 by Xxxxxx & Xxxxxxx,
San Francisco, CA
Foreign Applications: None as yet.
