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EXHIBIT 10.42
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
AMENDED AND RESTATED LICENSE AGREEMENT
BETWEEN
RIBOZYME PHARMACEUTICALS, INC.
AND
COMPETITIVE TECHNOLOGIES, INC.
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TABLE OF CONTENTS
Page
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ARTICLE I DEFINITIONS 2
ARTICLE II SURVIVAL OF ASSIGNMENT 5
ARTICLE III USE OF PATENTED SUBSTANCES 6
ARTICLE IV THE LICENSE 6
1. Grant 6
2. Sublicenses 7
3. Exclusivity 9
4. Consultation 10
5. Cross-Licensing 10
6. Country of Origin 11
ARTICLE V PRODUCT DEVELOPMENT 11
1. Due Diligence 11
2. Research and Development Information 12
3. Data 12
4. Remedial Action 12
ARTICLE VI PAYMENTS UNDER THE LICENSE 13
1. License Fee 13
2. Royalty Basis 13
3. Royalty Rates 13
4. Guaranteed Minimum Payments 14
ARTICLE VII REMITTANCES, RECORDS AND REPORTS
UNDER THE LICENSES 16
1. Royalties 16
2. Sublicense Fees 17
3. Guaranteed Minimum Payments 17
4. Currency 17
5. Credit for Patent Expenses 17
6. Foreign Royalty Payments 17
7. Inspection 18
8. Price 18
ARTICLE VIII PATENT PROTECTION 18
Patent Filing 18
Recovery of Patent Expenses 19
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ARTICLE IX ENFORCEMENT OF LICENSED PATENTS 19
1. Enforcement 19
2. Defense 20
ARTICLE X TERMS OF LICENSE: TERMINATION 21
1. Term 21
2. Termination 21
ARTICLE XI REPRESENTATIONS AND WARRANTIES 22
ARTICLE XII PREFERENCE FOR U. S. INDUSTRY 22
ARTICLE XIII COMMUNICATION 23
ARTICLE XIV ASSIGNMENTS 24
ARTICLE XV MISCELLANEOUS 24
1. Execution 24
2. Construction 24
3. Indemnification 24
4. Anonymity 24
5. Severability 25
6. Jurisdiction 25
7. Headings 25
8. Force Majeure 25
9. No Waiver 25
10. Compliance 25
11. Remedies 25
12. Counterparts 26
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AMENDED AND RESTATED LICENSE AGREEMENT
This Amended and Restated License Agreement ("Agreement") is effective
as of the 20th day of November, 1996 between Competitive Technologies, Inc. a
Delaware corporation having its principal office at 0000 Xxxxxxx Xxxx,
Xxxxxxxxx, Xxxxxxxxxxx 00000 (hereinafter referred to as "LICENSOR") and
Ribozyme Pharmaceuticals, Inc., a Delaware corporation having its principal
office at 0000 Xxxxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000 (hereinafter referred
to as "LICENSEE"), and amends and restates that certain Assignment of License
and Restated License Agreement dated of even date herewith between LICENSOR,
LICENSEE and United States Biochemical Corporation, a corporation having a
place of business at 00000 Xxxxx Xxxx, Xxxxxxxxx, Xxxx 00000 (hereinafter
referred to as "USB") (the "Assignment").
WHEREAS, under a Servicing Agreement between the University of Colorado
Foundation (the "Foundation") and LICENSOR, LICENSOR is assignee of all right,
title and interest of the Foundation to certain patent rights relating to
ribozymes owned by University Research Corporation, a Colorado corporation and
wholly owned subsidiary of the Foundation ("URC"), and has the exclusive right
to license to others the entire interest in such patent rights; and
WHEREAS, pursuant to that certain Second Restated License Agreement
dated September 1, 1993 between LICENSOR (as successor to University Patents,
Inc.) and USB, as amended by that certain Letter Agreement dated October 13,
1994 (the "Prior License Agreement"), USB was the exclusive licensee of
LICENSOR of such patent rights, and pursuant to the Assignment USB has assigned
and delegated all of its rights and obligations under the Prior License
Agreement to LICENSEE, whereby LICENSEE has become the exclusive licensee of
such patent rights; and
WHEREAS, LICENSOR and LICENSEE wish to hereby amend and restate the
terms of such exclusive license.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
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ARTICLE I DEFINITIONS
1. "Commercial Sale" shall mean any transaction which transfers to a
purchaser physical possession and title to a Product Unit, after which transfer
the seller has no right or power to determine the purchaser's resale price, if
any, and any transaction which involves the performance of Licensed Services
for a third-party after which no further services are performed. Transfer of
possession and title to a Product Unit, or performance of Licensed Services
for, an "Affiliated or Related Interest" shall not constitute a Commercial
Sale. An "Affiliated or Related Interest" means an entity in which LICENSEE
has a direct or indirect ownership interest in excess of fifty percent (50%),
or any entity which directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with LICENSEE. If a
purchaser of a Product Unit or Licensed Services is not independent of LICENSEE
and if the sale of a Product Unit to such purchaser, or performance of Licensed
Services for such purchaser, is at a lower price than other sales of similar
Product Units to, or the performance of Licensed Services for, independent
purchasers of substantially similar size, in substantially similar amounts,
operating in markets of substantially similar competitive conditions, then the
transfer of the Product Unit to, or performance of Licensed Services for such
nonindependent purchaser shall not constitute a Commercial Sale thereof at the
price charged such purchaser, but the Commercial Sale shall be deemed to have
occurred at the Net Selling Price at which such Product Unit or Licensed
Services was last sold, or would have been sold, to an independent purchaser
under similar conditions.
2. "Improvement" shall mean any invention the practice of which
would infringe the claims covered by the Licensed Patents, which invention was
made by the Inventors and/or persons acting under their direction and control
at the University of Colorado, which is the work product of the Research
Support Funding Agreement between USB and the University of Colorado Foundation
entered into on May 20, 1987 (the "RSFA") and which was conceived or reduced to
practice during the term of the RSFA.
3. "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-
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in-part, divisions, patents of additions and/or reissues thereof filed upon an
Improvement, and to which LICENSOR has or shall have the right to grant
licenses during the term hereof.
4. "Intermediate Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application, RNA enzymes which may be
claimed in any other Licensed Patent and/or Improvement Patent, and plasmids
used as vectors for the delivery of ribozymes (either viral or nonviral), made
and sold in bulk by LICENSEE to Manufacturers.
5. "Inventors" shall mean Xxxxxx X. Xxxx, Xxxxxx X. Xxxx and Xxxxxxx
X. Been.
6. "Licensed Methods" shall mean any invention, method, process,
procedure or technology which is covered by and/or may be claimed in the
Licensed Patent and any Improvement Patent.
7. "Licensed Patents" shall mean the inventions and discoveries
which are the subject of, or which are covered in whole or in part by, the
claims included in (i) U.S. Patent Application Serial Number 937,327, filed
December 3, 1986 entitled RNA RIBOZYME POLYMERASES, DEPHOSPHORYLASES,
RESTRICTION ENDORIBONUCLEASES AND METHODS (the "'327 Patent Application"), a
copy of the Claims of which is attached hereto and marked EXHIBIT "A", (ii)
the United States Patents listed on EXHIBIT "B" attached hereto, and any
patents issuing thereon as well as any corresponding patent applications or any
patents that may issue thereon throughout the world, including any extensions,
renewals, divisions, continuations, continuations-in-part, patents of addition,
and/or reissues thereof, including Improvement Patents, and to which LICENSOR
has or shall have the right to grant licenses during the term hereof. It is
understood that any reference in this Agreement to claim numbers as recited in
the '327 Patent Application as filed on December 3, 1986, or other Licensed
Patents corresponding thereto or derived therefrom (including but not limited
to those included in EXHIBIT "B"), shall be deemed to refer to any and all
claims which are or have been renumbered, deleted or added during the course of
prosecution of the '327 patent application and are included in such Licensed
Patents.
8. "Licensed Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application and RNA enzymes which may
be claimed in any other Licensed Patent and/or Improvement Patent, packaged and
sold by LICENSEE for use as (by way of illustration and not of limitation)
research reagents, diagnostic products, pharmaceutical
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products, agricultural biochemical products, veterinary products, cell culture
and/or fermentation products, or otherwise, and plasmids used as vectors for
the delivery of ribozymes (either viral or nonviral), but shall not include
Intermediate Products.
9. "Licensed Services" shall mean any service which is performed for
a third-party which includes use of a Product Unit or Licensed Method.
10. "Manufacturer" shall mean a business entity which makes and sells
merchandise in finished form and ready for end use without further substantial
alteration incorporating or utilizing Intermediate Product(s).
11. "Market Year" shall mean the twelve (12) month period which
commences upon the first Commercial Sale of Licensed Products or Licensed
Services by LICENSEE, and each ensuing twelve (12) month period during the term
of this Agreement. For the purposes of this definition, the term "Licensed
Products" shall exclude Research Reagents.
12. "Net Selling Price" shall mean the actual gross selling price of
each Product Unit upon its Commercial Sale, including all packaging,
instructional or other charges made to a purchaser, but less customary trade
discounts and refunds or credits allowed for shortages, returns, or defective
articles and transportation or shipping charges and/or taxes billed by LICENSEE
to its customers. In the case of Licensed Services, (i) the term Net Selling
Price shall include the actual gross receipts received for the performance of
Licensed Services upon a Commercial Sale, less customary trade discounts and
refunds or credits and/or taxes billed by LICENSEE to its customers; and (ii)
the term "Commercial Sale" shall include any transaction under which the
Licensee or any sublicensee provides Licensed Services to a person who is not
an Affiliated or Related Interest. The actual selling price of Product Units
to a purchaser or amounts received for the performance of Licensed Services for
a third party, with whom LICENSEE has a reciprocal discount or preferential
price arrangement for merchandise, services or use of technology and which
discount or preferential price arrangement affects the price LICENSEE charges
such purchaser or third-party, shall not be the Net Selling Price thereof, but
the Net Selling Price for such Product Units or Licensed Services shall be the
actual selling price plus the amount(s) of such discounts or price preferences.
13. "Patented Substances" shall mean those materials listed on
EXHIBIT "C" hereof previously supplied to LICENSEE.
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14. "Product Units" shall mean:
(i) Licensed Products, and
(ii) Intermediate Products
ARTICLE II SURVIVAL OF ASSIGNMENT
LICENSOR and LICENSEE agree that the terms of Article II of the
Assignment, and such other provisions of the Assignment as they pertain to USB,
shall be and remain in full force and effect, and that all other terms and
conditions of the Assignment, including the license granted to LICENSEE by
LICENSOR thereunder, shall be superseded hereby.
ARTICLE III USE OF PATENTED SUBSTANCES
The Foundation and the Inventors having agreed that Patented Substances
shall not be transferred by way of sale, gift, loan or otherwise to any other
person or business entity during the term of the license granted to LICENSEE
hereunder, excepting distribution to the academic community, not for profit, in
accordance with normal academic procedures, and to obtain a written agreement
from such potential academic distributees in advance of such distribution
evidencing agreement that the materials will not be used or distributed for
commercial purposes, LICENSEE affirms that it understands and agrees that the
Inventors may retain and use the Patented Substances for purposes of research.
ARTICLE IV THE LICENSE
1. Grant. Subject to the rights of the United States Government, as
set forth in P.L. 96-517, P.L. 98-620 and 00 XXX 000, as amended, LICENSOR
hereby grants to LICENSEE an exclusive worldwide license under the Licensed
Patents to exercise the following rights:
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(a) To make, have made, use and sell RNA enzymes alone or when
incorporated in Licensed Products;
(b) To use, practice, or have used or practiced on its behalf,
but not to sell, the Licensed Methods;
(c) To perform, or have performed on its behalf, Licensed
Services which include use of a Product Unit or Licensed
Method;
(d) To make, have made, use and sell plasmids as described or
claimed in the Licensed Patent and any Improvement Patent;
(e) To pass on to its customers for RNA enzymes, Licensed
Products and/or Intermediate Products, or its customers
for Licensed Services, a license for the use thereof as
described or claimed in the Licensed Patents and any
Improvement Patent; and
(f) To make, have made and use Intermediate Products and to
sell Intermediate Products to Manufacturers, and to grant
licenses to Manufacturers to make, use and sell Product
Units, to use and practice Licensed Methods and/or to
perform Licensed Services; provided that, in the case of
the sale of Intermediate Products, LICENSEE has
theretofore entered into royalty-bearing agreements
whereunder LICENSEE obtains royalties from such
Manufacturers based upon said Manufacturers' selling
prices of merchandise:
(i) in which one or more Intermediate Product is a
constituent, and/or
(ii) in the production of which one or more Intermediate
Product is or has been utilized,
in accordance with the provisions of paragraph 3(b) of
Article VI.
(g) To grant sublicenses with respect to any of the foregoing,
subject to the terms of Paragraph 2 of this Article IV.
2. Sublicenses. (a) During the term of exclusivity granted
hereunder, the license hereby granted shall include the right of LICENSEE or
any sublicensee to grant written sublicenses covering Licensed Products,
Licensed Services and Licensed Methods, provided that
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LICENSEE shall include all sales and receipts therefrom received from
unaffiliated third parties by all sublicensees in LICENSEE'S statements to
LICENSOR as provided in paragraph 1(b) of Article VII and (A) in the case of
sublicenses granted to parties other than to Manufacturers shall pay royalties
to LICENSOR in an amount equal to the greater of (i) [ ]of the royalty income
received from each such sublicensee for the sale of Licensed Products and
Licensed Services and for use of Licensed Methods or (ii) [ ](x) of the Net
Selling Price of each Licensed Product made or sold, or received from the
performance of Licensed Services, by or for such sublicensee or (y) of the
amounts received by or from the sublicense of Licensed Methods and (B) in the
case of any sublicense granted to a Manufacturer in respect of Intermediate
Products pay royalties to LICENSOR as per paragraph 3(b) of Article VI.
LICENSEE and its sublicensees shall be free to grant sublicenses at any royalty
rate they may deem appropriate. Notwithstanding the foregoing, no multiple
royalties shall be payable because a Licensed Product, Licensed Service,
Licensed Method or Intermediate Product are or shall be sold or licensed to or
by a sublicensee in the same transaction.
(b) In addition to the foregoing, LICENSEE agrees that it will remit to
LICENSOR in accordance with paragraph 2 of Article VII, [ ]of any option fee,
license fee, prepaid royalty or other "front-end payment" which it may receive
from a sublicensee or which a sublicensee may receive from its sublicensees.
It is agreed that research and development funding (as defined hereafter) does
not constitute an "option fee, licensee fee, prepaid royalty or 'front-end
payment'" under this paragraph.
For purposes hereof, the term "research and development funding" shall
mean funding received from third parties for (1) LICENSEE's direct or indirect
cost (purchase or lease) of materials, equipment and facilities used in
research and development; (2) salaries, wages, benefits and other related costs
of personnel engaged in or supporting the research and development activity;
(3) the cost to LICENSEE of services performed by others in connection with
LICENSEE's research and development activity; (4) the cost to LICENSEE of
payments to third parties (other than LICENSOR) for patent or other rights
utilized in research and development; (5) a reasonable allocation of general,
administrative and other indirect and overhead costs to research and
development activities; (6) debt or equity investments in LICENSEE and (7)
research and development milestone payments paid to LICENSEE for
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completion of research and development activities associated with ribozyme
technology and product development. Determinations with respect to research
and development funding shall be made in accordance with generally accepted
accounting principles. Costs associated with selling products and costs
associated with facilities and equipment unrelated to research and development
activities shall not be included in "research and development funding."
LICENSOR shall be promptly advised of any agreement which provides for
such research funding and LICENSOR shall be furnished with a true and correct
copy of any such agreement. LICENSOR shall have the right, upon prior
reasonable notice, to inspect the books and records of LICENSEE or a
sublicensee, as applicable, in accordance with the provisions of paragraph 7 of
Article VII to verify the nature of such research funding. In the event of any
disagreement between the parties with respect to the foregoing, representatives
of LICENSOR and LICENSEE or a sublicensee shall meet and seek to resolve any
such disagreement, as applicable; and if the parties are unable to reach
agreement, then any such disagreement under this paragraph shall be submitted
to arbitration in accordance with the Commercial Arbitration Rules of the
American Arbitration Association then in effect before a panel of one
arbitrator. The place of arbitration shall be New York, New York. Any award
rendered thereon shall be final and binding on the parties and judgment may be
entered on the arbitrator's award in any court having jurisdiction.
LICENSEE agrees to deliver to LICENSOR a true and correct copy of each
and every sublicense entered into by LICENSEE within thirty (30) days after
execution thereof and shall promptly advise LICENSOR in writing of any
modification (and supply same) or termination of each sublicense. Upon
termination of this Agreement for any cause, any and all existing sublicenses
hereunder shall thereupon be assigned to LICENSOR. This shall be made a
condition of any such sublicense that may be granted by LICENSEE.
3. Exclusivity. LICENSOR agrees not to grant to any other party any
option, license or other right under the Licensed Patents to make, have made,
use or sell Product Units, Licensed Services and Licensed Methods during the
period of the exclusive license herein granted.
4. Consultation. The Parties recognize that during the term of this
Agreement, LICENSEE may confer and consult freely with the Inventors in
furtherance of the development
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and testing of Product Units, Licensed Services and Licensed Methods, in
accordance with such arrangements as they may make among themselves.
5. Cross-Licensing. LICENSOR understands that LICENSEE'S
negotiations with Xxxx Xxxxxx (J&J) for the cross licensing of certain Xxxx
Xxxxxx patented technology to LICENSEE in exchange for the cross licensing of
certain Licensed Patents to Xxxx Xxxxxx is now in suspense. LICENSOR agrees
that in the event these negotiations are re-activated on terms and conditions
similar to or more favorable to LICENSEE than those described in correspondence
between LICENSOR and LICENSEE during the period April 19 to 21, 1994, LICENSOR
will consent to such cross-license. (Said correspondence being incorporated
herein by this reference solely for this purpose.).
In the event that LICENSEE believes that one or more additional cross-
licenses (other than that with Xxxx Xxxxxx referenced above) are necessary
between LICENSEE and any third party, LICENSOR shall negotiate in good faith
with LICENSEE for the grant of LICENSOR's consent thereto in return for
reasonable consideration.
If LICENSEE grants a license (an "RPI License") to any of its patented
technology, or to any of its proprietary technology for which a patent
application is pending ("RPI Technology") to any cross-licensee under this
Agreement, or any third party affiliated with or related to such cross-
licensee, and the license or option fee, royalty basis, royalty rate and/or
minimums of the RPI License are substantially greater than in the cross-
license, then LICENSOR and LICENSEE shall negotiate in good faith a division of
the incremental royalties paid under the license resulting from such
substantially greater license or option fee, royalty basis, royalty rate and/or
minimums (the "Incremental Royalties"). The division of Incremental Royalties
will be based upon the relative value the cross-licensed technology and the
licensed RPI Technology contribute to the products upon which the Incremental
Royalties are paid. In the event an agreement cannot be reached by the
parties, such matter will be arbitrated before a panel of three arbitrators,
one of whom shall be selected by LICENSEE, one of whom shall be selected by
LICENSOR, and the third of whom shall be selected by the two arbitrators so
selected by LICENSEE and LICENSOR. In no event will the payment of any part of
Incremental Royalties to LICENSOR on any license extend beyond the term of this
Agreement. In addition, in no event will LICENSOR be entitled to share in any
license or option fees, royalties and/or minimums in
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excess of those to which it would be entitled if all license or option fees,
royalties and/or minimums paid under the cross-license and RPI License had
instead been paid pursuant to this Agreement.
6. Country of Origin. The Parties agree that royalties shall be
paid only upon Product Units, Licensed Services and Licensed Methods which are
covered in the country of their manufacture, use or sale by a Licensed Patent.
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ARTICLE V. PRODUCT DEVELOPMENT
1. Due Diligence. LICENSEE has represented to LICENSOR that it is
experienced in the development and commercialization of Product Units, and that
commencing with the execution of the Prior Sublicense Agreement it committed
itself to a program of developing, obtaining governmental agency approvals for,
and marketing Product Units. LICENSEE agrees that it will diligently continue
the efforts above described. In furtherance of the foregoing, to maximize the
commercial potential of the Licensed Patents and their benefit to mankind,
expanding the number of researchers utilizing ribozyme technologies is
necessary. LICENSEE's activities and programs regarding the technology are
designed to maximize the potential of this technology and shall include the
following activities:
(a) sale and promotion of research reagents to provide tools
to researchers;
(b) sponsorship of meetings and seminars regarding the
technology;
(c) contacting firms in the pharmaceutical, diagnostic and
agbiotech fields to establish potential research
relationships and/or licenses;
(d) support of commercial development activities through
technology development efforts and the expertise of
LICENSEE's scientists.
2. Research and Development Information. LICENSEE agrees to furnish
to LICENSOR in a timely manner, copies of all periodic reports filed by
LICENSEE with the U.S. Securities and Exchange Commission. In addition,
LICENSEE agrees that its President or CEO shall meet with representatives of
LICENSOR no less frequently than once per year at LICENSOR's offices in
Connecticut or in New York City to review progress in developing and
commercializing the Licensed Patents. In addition, LICENSEE shall furnish to
LICENSOR, to the extent it is legally able to do so, copies of any progress
reports LICENSEE receives from its sublicensees and/or cross-licensees
respecting Product Units.
3. Data. LICENSEE and LICENSOR agree that during the term of the
License hereunder, they will provide to patent counsel all information and data
that either party develops or otherwise possesses which may assist patent
counsel in the filing, prosecution and defense of patent applications and
patents included in the Licensed Patents.
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4. Remedial Action. In the event LICENSOR believes that LICENSEE
has failed to exercise reasonable diligence hereunder, LICENSOR shall have the
right to advise LICENSEE of its belief and request remedial action. If
LICENSOR and LICENSEE disagree, they may bring the matter to arbitration upon
mutual agreement, or lacking such agreement, each shall rely upon such remedies
and defenses as are available to it in law or equity.
ARTICLE VI PAYMENTS UNDER THE LICENSE
1. License Fee. All License Fees payable under the Prior License
Agreement have been paid to LICENSOR, and no additional License Fees shall be
payable by LICENSEE hereunder.
2. Royalty Basis. LICENSEE agrees to pay, as hereinafter provided,
royalties to LICENSOR:
(a) in respect of each Licensed Product made or sold by or for
LICENSEE;
(b) in respect of each Intermediate Product sold by LICENSEE
to a Manufacturer or with respect to which a Manufacturer
has been granted a sublicense as provided in paragraph 2
of Article IV.
(c) in respect of Licensed Services performed by or for
LICENSEE.
3. Royalty Rates.
(a) For each Licensed Product sold by Licensee, which is
subject to paragraph 2(a) of this Article VI, and for
Licensed Services performed by Licensee, which are subject
to paragraph 2(c) of this Article VI, the rate shall be [
]of the Net Selling Price.
(b) For each Intermediate Product which is subject to
paragraph 2(b) of this Article, the rate shall be:
(i) [ ]of the Net Selling Price of such
Intermediate Product, and in addition,
(ii) [ ]of any royalty or fee (except of a sublicense
fee, which shall be payable as set forth in
paragraph 2(b) of Article IV and paragraph 2 of
Article VII), which a Manufacturer pays LICENSEE
upon the
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manufacture, use, sale or other transfer of
merchandise in which the Intermediate Product is a
constituent or has been utilized.
(c) No multiple royalties shall be payable because a Licensed
Product, Licensed Services and Licensed Method are or
shall be sold, performed and/or licensed in the same
transaction by LICENSEE, so long as LICENSOR receives the
royalties provided for in paragraphs 3(a) or 3(b) of this
Article VI, as applicable.
(d) Notwithstanding the provisions of this Article VI, in the
event that LICENSEE is presented with an opportunity or
opportunities for the exploitation of ribozymes in
diagnostic products, through sublicensing, then LICENSOR
will cooperate in good faith with LICENSEE to revise the
royalty rate structure to permit such exploitation for the
mutual benefit of the parties.
4. Guaranteed Minimum Payments.
(a) To retain its license hereunder, LICENSEE shall pay to
LICENSOR, as minimum annual payments, no less than the
amounts set forth below:
(i) For the first Market Year, [ ];
(ii) For the second Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the first Market Year;
(iii) For the third Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the second Market Year;
(iv) [ ]shall be the greater of [ ]or [ ]of
the royalty actually earned during the third Market
Year;
(v) For the fifth Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the fourth Market Year;
(vi) For the sixth and each ensuing Market Year, the
amount shall be the [ ]or [ ]of the royalty
actually earned during the fifth Market Year.
(vii) Payments shall be payable in accordance with
paragraph 3 of Article VII.
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(b) In the event LICENSEE does not pay the minimum annual
amounts as aforesaid, LICENSOR shall have the right to
terminate the license granted hereunder; provided,
however, that if LICENSEE shall have paid minimum annual
amounts under the license for a period of ten (10) years,
then the license shall thereafter no longer be terminable
by LICENSOR for failure to pay such minimum annual
amounts; provided LICENSEE is not in any respect in
default hereunder.
(c) Notwithstanding the foregoing, LICENSEE agrees that if it
sells Licensed Products in any country under its exclusive
license and subsequently withdraws such Licensed Products
from sale in that country (except upon governmental
requirement) and has no Commercial Sales therein for a
period of one (1) year thereafter, LICENSOR may convert
LICENSEE's exclusive license in that country to a
nonexclusive license for such Licensed Products.
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ARTICLE VII REMITTANCES, RECORDS AND REPORTS UNDER THE LICENSES
1. Royalties.
(a) Royalties shall accrue when Product Units or Licensed
Services are first sold or performed by or for LICENSEE.
Product Units shall be considered sold to, and Licensed
Services performed for, third parties when billed out.
(b) Payments of earned royalties shall be made within sixty
(60) days following the end of each half of each Market
Year for the sale of all Product Units sold or otherwise
transferred, and/or Licensed Services performed, by
LICENSEE during said half Market Year. LICENSOR's
participation in royalties from Manufacturers under
paragraph 3(b)(ii) of Article VI shall be paid within
sixty (60) days following the end of each half of each
Market Year, based upon LICENSEE's receipts of such
royalty payments from Manufacturers during each half
Market Year. Such payment shall be accompanied by a
statement certified to LICENSOR by an officer of LICENSEE
which shall give sufficient information from which to
calculate the amount of royalties due hereunder,
including, but not limited to, the total quantity and Net
Selling Price of Product Units and/or Licensed Services
for which royalty has accrued during the preceding half
Market Year and the aggregate royalties due. Statements
shall also be submitted in the event no sales of Product
Units or Licensed Services took place.
(c) Notwithstanding the foregoing paragraph, LICENSEE may
establish a reserve for bad debts in the amount of two
percent (2%) of the Net Selling Price of Product Units
sold or otherwise transferred, and or Licensed Services
performed, by LICENSEE during each Market Year. Such
reserve shall be reconciled at the end of each Market Year
and, in the event that the amount of non-collectible
accounts receivable for the
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Market Year is less than the amount so reserved, LICENSEE
shall remit to LICENSOR the royalties earned on such
difference; and, in the event that the amount of non-
collectible accounts receivable for the Market Year is
greater than the amount so reserved, LICENSEE shall be
entitled to a credit against the next scheduled royalty
payment to LICENSOR in the amount of the royalties paid by
LICENSEE on such difference.
2. Sublicense Fees. Payment of LICENSOR's share of sublicense fees,
prepaid royalties or "front-end" payments received by LICENSEE from
sublicensees pursuant to paragraph 2(b) of Article IV shall be remitted to
LICENSOR within sixty (60) days following the end of the calendar quarter of
receipt.
3. Guaranteed Minimum Payments. LICENSEE agrees that each minimum
annual payment under paragraph 4 of Article VI shall become a present
obligation of LICENSEE to LICENSOR on the first day of each Market Year; and
LICENSEE agrees that such minimum amounts are to be paid to LICENSOR together
with the remittance made for the last accounting period of the applicable
Market Year, in the event earned royalties for such Market Year do not reach
the minimum amount set forth.
4. Currency. Payment hereunder shall be made in U. S. dollars in
the United States.
5. Credit for Patent Expenses. LICENSEE may deduct as credits from
payment of royalties due under paragraph 1(b) of this Article VII amounts not
to exceed one-half (1/2) of said royalties due during any half Market Year
until [ ]of the expenses incurred by LICENSEE pursuant to paragraph 2 of
Article VIII have been credited.
6. Foreign Royalty Payments. With respect to sales in countries
outside the United States, royalties shall be payable in U. S. dollars at the
rate of exchange published in The Wall Street Journal on the last day of the
accounting period in which the royalty accrues. Royalties shall be paid to
LICENSOR free and clear of all foreign taxes, including withholding and
turnover taxes, except such taxes which LICENSEE may be required to withhold by
a foreign country (provided that LICENSOR can receive full credit for such
taxes with the Internal Revenue Service of the United States).
7. Inspection. LICENSEE shall keep records in sufficient detail to
permit the determination of royalties payable hereunder and, at the request and
expense of LICENSOR, will
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permit an independent Certified Public Accountant, acceptable to both LICENSOR
and LICENSEE, to examine, in confidence, during ordinary business hours once in
each calendar year such records as may be necessary to verify or determine
royalties paid or payable under this Agreement. For the purposes of this
paragraph, LICENSEE shall be required to retain its records for no more than
three (3) years.
8. Price. LICENSEE shall submit to LICENSOR, no less than once per
year during the life of this Agreement, copies of its customer catalogs in
which Licensed Products and Licensed Services are listed for sale.
ARTICLE VIII PATENT PROTECTION
1. Patent Filing.
(a) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefore for the prosecution and
maintenance of the '327 Patent Application and any patents
which issue thereunder in the United States.
(b) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefor for the filing,
prosecution and maintenance of any counterpart foreign
patent applications to the '327 Patent Application and
patents which issue thereunder which LICENSEE, in its sole
discretion, elects to support.
(c) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefor for the filing,
prosecution, and maintenance of such U.S. and foreign
Improvement Patents which LICENSEE, in its sole
discretion, elects to support.
(d) In the event LICENSEE shall not elect to reimburse
LICENSOR for filing, prosecution and/or maintenance, as
aforesaid, then such patent application(s) and/or any
patent(s) which issues thereunder shall not be included in
Licensed Patents licensed to LICENSEE hereunder.
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2. Recovery of Patent Expenses. LICENSEE shall bear the expenses
associated with the filing, prosecution and maintenance of Licensed Patents
including, without limitation, filing, maintenance, and attorneys' fees;
provided that, LICENSEE shall be entitled to recover [ ]of such costs from
royalties otherwise to become due to LICENSOR, earned in the country in which
the application was filed, in accordance with paragraph 5 of Article VII.
ARTICLE IX ENFORCEMENT OF LICENSED PATENTS
1. Enforcement. In the event LICENSEE, LICENSOR, the Foundation or
URC becomes aware of any actual or threatened infringement of a Licensed Patent
anywhere in the world, that party shall promptly notify the other parties in
writing. LICENSEE shall have the first right to bring, at its own expense, an
infringement action against any third party and to use the names of LICENSOR,
the Foundation and URC in connection therewith. If LICENSEE does not proceed
with a particular patent infringement action within ninety (90) days, LICENSOR,
after notifying LICENSEE in writing, shall be entitled to take proceedings
against such infringer at its own expense, and shall have the right to settle
infringement litigation by licensing the infringer, unless LICENSEE shall
equally share the cost of enforcement with LICENSOR. The party conducting such
suit shall have full control over its conduct. In any event, LICENSOR, the
Foundation, URC and LICENSEE shall assist one another and cooperate in any such
litigation upon request without expense to the requesting party. Any recovery
as a result of any litigation or settlement thereof shall be the property of
the party bearing the principal responsibility of such litigation.
2. Defense. In the event a third party brings an action to obtain a
declaration of patent invalidity of a Licensed Patent (a "DJ Action") against
LICENSOR and/or LICENSEE:
(a) The named defendants shall have the first right to defend
said action at its own cost and expense and to control
ensuing litigation.
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(b) If the named defendant elects not to defend the DJ Action,
the other Party may elect to defend the DJ Action at its
own cost and expense and to control the ensuing
litigation.
(c) If a litigating Party finally prevails, it shall retain
all damages which it may collect.
(d) If either Party finally loses because a patent is held
invalid, LICENSEE may thereafter cease paying royalties on
sales of Licensed Products, the performance of Licensed
Services or Product Units and use of Licensed Methods, as
the case may be, in the country in which such invalidity
has been finally adjudicated provided that Licensed
Products, Product Units, Licensed Services and Licensed
Methods, as the case may be, are covered or the use
thereof are covered only by claims which have been held
invalid.
ARTICLE X TERMS OF LICENSE: TERMINATION
1. Term. The term of this Agreement shall be from the date first
written above until the expiration of the last to expire of any patent included
in the Licensed Patents.
2. Termination.
(a) LICENSEE may terminate this Agreement:
(i) For cause; or
(ii) Upon sixty (60) days written notice to LICENSOR,
provided that LICENSEE shall thereafter terminate
the manufacture, sale and/or use of Product Units
except for disposition of inventory on hand, for
which royalties shall be paid in accordance with
Article VI hereof. Disposition of inventory must
be completed within one hundred twenty (120) days
of the aforementioned notice.
(b) If LICENSEE shall at any time default in any obligation
under this Agreement, including but not limited to failing
to make any report, pay
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any royalties, or permit the inspection of its books and
records as hereinabove required, and such default shall
not be cured within sixty (60) days after written notice
from LICENSOR to LICENSEE specifying the nature of the
default, then LICENSOR shall have the right to terminate
the license granted to LICENSEE hereunder and such
termination shall become effective on the sixtieth (60th)
day after giving such notice.
(c) Any termination pursuant hereto shall not relieve LICENSEE
or LICENSOR of any obligation or liability accrued
hereunder prior to such termination, nor rescind or give
rise to any right to rescind anything done or any payments
made or other consideration given hereunder prior to the
time of such termination and shall not affect in any
manner any rights of either party arising out of this
Agreement prior to such termination.
ARTICLE XI REPRESENTATIONS AND WARRANTIES
LICENSOR represents that it has the right to enter into this Agreement
and that, to the best of LICENSOR's knowledge, no amounts are due LICENSOR from
either LICENSEE or USB under the Prior License Agreement. LICENSOR makes no
other representation or warranty, express or implied, except as herein
provided, nor does LICENSOR assume any liability in respect of any infringement
of any patent or other rights of third parties due to LICENSEE's operation
under the rights herein granted. LICENSEE recognizes that the Patented
Substances and the RNA enzymes produced therefrom have been produced by the
Inventors for research purposes only. THE INVENTORS, THE FOUNDATION, URC, AND
LICENSOR EXPRESSLY DISCLAIM THAT THE PATENTED SUBSTANCES AND/OR THE RNA ENZYMES
PRODUCED THEREFROM WILL BE OF ANY COMMERCIAL VALUE TO LICENSEE WHATSOEVER, AND
NO SUCH REPRESENTATION OR WARRANTY OF SUCH VALUE SHOULD BE IMPLIED. LICENSEE
AGREES THAT IT IS OBTAINING THE LICENSES HEREIN GRANTED WITHOUT ANY
REPRESENTATION OF VALUE, MERCHANTABILITY OR FITNESS FOR USE.
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ARTICLE XII PREFERENCE FOR U. S. INDUSTRY
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, LICENSEE agrees that any Product Unit covered by Licensed Patents
or produced through the use of a method or process claimed in the Licensed
Patents for sale in the United States of America will be manufactured
substantially in the United States of America, unless a waiver of such
obligation is obtained from the Federal Agency which supported in whole or in
part said invention. LICENSEE shall include the foregoing provision in any
sublicense(s) it grants hereunder.
ARTICLE XIII COMMUNICATION
Any payment, notice or other communication required or permitted to be
made or given to a Party pursuant to this Agreement shall be sufficiently made
or given on the date of mailing if sent to such Party by certified or
registered mail, postage prepaid, addressed to it at its address set forth or
to such other address as it shall designate by written notice to the other
Party as follows:
In the case of LICENSOR:
President
Competitive Technologies, Inc.
x/x XXXX
X.X. Xxx 000
Xxxxxxxxx, Xxxxxxxxxxx 00000
In the case of LICENSEE:
President
Ribozyme Pharmaceuticals, Inc.
0000 Xxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
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ARTICLE XIV ASSIGNMENTS
This Agreement shall not be assignable by LICENSEE without the prior
written consent of LICENSOR except to a successor in ownership of all or
substantially all of the business assets of LICENSEE, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning Party.
ARTICLE XV MISCELLANEOUS
1. Execution. This Agreement will not be binding upon the Parties
until it has been signed herein below by or on behalf of each Party, in which
event it shall be effective as of the date first above written. No amendment
or modification hereof shall be valid or binding upon the Parties unless made
in writing and signed as aforesaid.
2. Construction. This Agreement embodies the entire understanding
of the Parties and shall supersede all previous communications, representations
or undertakings, either verbal or written between the Parties relating to the
subject matter hereof.
3. Indemnification. LICENSEE agrees to indemnify and hold harmless
LICENSOR, the Foundation, URC, and the Inventors from and against any and all
claims, damages and liabilities asserted by third parties (private and
governmental) arising from LICENSEE's sale of Product Units and/or the
purchaser's use thereof or from the performance of Licensed Services or use of
Licensed Methods, as the case may be.
4. Anonymity. LICENSEE shall have no right to use the names or
other designation of THE UNIVERSITY OF COLORADO or the Inventors in connection
with any sales or promotion of Product Units, Licensed services and Licensed
Methods, as the case may be without the express written consent of the
University of Colorado or the Inventors, as the case may be.
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5. Severability. If any provision or provisions of this Agreement
shall be held to be invalid, illegal or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be affected
or impaired thereby.
6. Jurisdiction. This Agreement shall be construed, and the legal
relations between the Parties determined, in accordance with the law of the
State of Connecticut, U.S.A.
7. Headings. The headings of the several sections are inserted for
convenience of reference only, and are not intended to be part of or to affect
the meaning or interpretation of this Agreement.
8. Force Majeure. Neither of the Parties hereto shall be liable in
damages or have the right to cancel this Agreement for any delay or default in
performing hereunder if such delay or default is caused by conditions beyond
its control, including acts of God, government restrictions, wars or
insurrections.
9. No Waiver. Failure by either party to enforce any provision of
this Agreement or assert a claim on account of breach hereof shall not be
deemed a waiver of its right to enforce the same or any other provision hereof
on the occasion of a subsequent breach.
10. Compliance. LICENSEE agrees to comply voluntarily with and abide
by the United States Department of Health and Human Services, National
Institutes of Health "Guidelines for Research Involving Recombinant DNA
Molecules". June 1981, 46 F.R. 34461, or as subsequently amended, so long as
LICENSEE uses the Patented Substances conveyed to it hereunder.
11. Remedies. The remedies provided in this Agreement are not and
shall not be deemed to be exclusive and shall be in addition to any other
remedies which either party may have at law or in equity.
12. Counterparts. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed as of the date first above written.
COMPETITIVE TECHNOLOGIES, INC.
By: /s/ Xxxxxx X. Xxxxxxx
Title: President/Chief Executive Officer
Date: February 18, 1997
RIBOZYME PHARMACEUTICALS, INC.
By: /s/ Xxxxx X. Xxxxxxxxxxxxxx
Title: President/Chief Executive Officer
Date: February 24, 1997
By its subscription hereto, UNIVERSITY OF COLORADO FOUNDATION, INC.
consents to and acknowledges the terms and conditions of the Agreement within.
By: /s/ Xxxxxxx X. XxXxxx
Title: President
Date: February 26, 1997
By its subscription hereto, UNIVERSITY RESEARCH CORPORATION consents to
and acknowledges the terms and conditions of the Agreement within.
By: /s/ Xxxxxxx X. XxXxxx
Title: President
Date: February 26, 1997
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EXHIBIT A
What is claimed:
[ ]
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EXHIBIT B
"Licenses Patents"
Patents and Pending Applications
================================================================================
PATENT NO. OR
CLAIMS PATENT APPLICATION NO TITLE
--------------------------------------------------------------------------------
1 - 47 U.S. Xxx. No. 4,987,071 (Parent) RNA Ribozyme Polymerase
Dephosphorylases Restriction
Endoribonucleases and Methods
--------------------------------------------------------------------------------
48 - 62 U.S. Xxx. No. 5,093,246 RNA Polymerase Dephosphorylases
(Division of U.S. Xxx. No. Restriction
4,987,071) Endoribonucleases and Methods
--------------------------------------------------------------------------------
63 - 66 Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
67 and 68 U.S. Xxx. No. 5,093,246 See above
--------------------------------------------------------------------------------
69 U.S. Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
70 U.S. Xxx. No. 4,987,071 See above
--------------------------------------------------------------------------------
71 U.S. Xxx. No. 5,093,246 See above
================================================================================
72 U.S. Xxx. no. 5,037,746 RNA Ribozyme Polymerases and
(Continuation-in-part of Methods
U.S. Xxx. No. 4,987,071)
--------------------------------------------------------------------------------
73 Xxx No. 4,987,071 See above
================================================================================
Notes:
1. U.S. Patent No. 5,116,742 entitled "RNA Ribozyme Restriction
Endoribonucleases and Methods," filed March 24, 1989, is a continuation-in-part
of U.S. Patent No. 4,987,071, and includes additional claims which were not
contained in the original patent application.
2. U.S. Patent Application Serial No. 843,737 entitled "RNA Polymerase
Dephosphorylases Restriction Endoribonucleases and Methods," filed February 28,
1992, is a continuation of U.S. Patent No. 5,093,246. It has been allowed, and
the issue fee is due to be paid on or before February 24, 1994.
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EXHIBIT C
Patented Substances
[ ]
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