1
EXHIBIT 10.19
CONFIDENTIAL MATERIAL OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
XXXXXXXXX INSTITUTE FOR BIOMEDICAL RESEARCH
and
DYAX CORP.
PATENT LICENSE AGREEMENT
(EXCLUSIVE)
2
(i)WHI Vers 2/9/96 (i) LN
Patent/Ex June 18, 1997
TABLE OF CONTENTS
PAGE
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PREAMBLE.................................................................... 1
ARTICLES
1 DEFINITIONS........................................................ 2
2 GRANT.............................................................. 3
3 DUE DILIGENCE...................................................... 4
4 ROYALTIES.......................................................... 4
5 REPORTS AND RECORDS................................................ 6
6 PATENT PROSECUTION................................................. 7
7 INFRINGEMENT....................................................... 7
8 PRODUCT LIABILITY.................................................. 9
9 EXPORT CONTROLS.................................................... 9
10 NON-USE OF NAMES................................................... 10
11 ASSIGNMENT......................................................... 10
12 DISPUTE RESOLUTION................................................. 10
13 TERMINATION........................................................ 11
14 PAYMENTS, NOTICES AND OTHER
COMMUNICATIONS..................................................... 12
15 MISCELLANEOUS PROVISIONS........................................... 12
16 APPENDIX A......................................................... 14
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
XXXXXXXXX INSTITUTE FOR BIOMEDICAL RESEARCH
and
DYAX CORP.
PATENT LICENSE AGREEMENT
This Agreement is made and entered into this day of
, 199 , (the "EFFECTIVE DATE") by and between the MASSACHUSETTS
INSTITUTE OF TECHNOLOGY, a corporation organized and existing under the laws of
Massachusetts and having its principal office at 00 Xxxxxxxxxxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. (hereinafter referred to as "M.I.T."),
and the XXXXXXXXX INSTITUTE FOR BIOMEDICAL RESEARCH, a corporation organized and
existing under the laws of Delaware and having its principal office at Nine
Xxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000, U.S.A., (hereinafter referred
to "XXXXXXXXX") and DYAX CORP., a corporation organized and existing under the
laws of Delaware and having its principal office at One Xxxxxxx Square, Bldg.
600, 5th Floor, Cambridge, 02139 (hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, XXXXXXXXX and the MASSACHUSETTS GENERAL HOSPITAL (herein
referred to as "M.G.H.") are the joint owners of certain PATENT RIGHTS (as later
defined herein) relating to XXXXXXXXX Case No. WHI ***************, (M.I.T. Case
No.***************,) "Adipocyte-Specific Sequences" by: Xxxxx Xxxxxx, Xxxxxx X.
Xxxxxx and Xxxxxxx Xxxxxxx and has the right to grant licenses under said PATENT
RIGHTS subject only to a ***************.
WHEREAS, M.G.H. has authorized M.I.T. to act as its sole and exclusive
agent for the purposes of licensing the PATENT RIGHTS and has authorized M.I.T.
to enter into this Patent License Agreement on its behalf;
WHEREAS, M.I.T. and XXXXXXXXX desire to have the PATENT RIGHTS utilized
in the public interest, and M.I.T. is willing to grant a license thereunder;
WHEREAS, LICENSEE has represented to M.I.T., to induce M.I.T. to enter
into this Agreement, that LICENSEE shall commit itself to a thorough, vigorous
and diligent program of exploiting the PATENT RIGHTS so that public utilization
shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS
upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the parties hereto agree as follows:
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ARTICLE 1 - 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 Dyax Corp., the
voting stock of which is directly or indirectly at least Fifty Percent (50%)
owned or controlled by Dyax Corp., an organization which directly or indirectly
controls more than Fifty Percent (50%) of the voting stock of Dyax Corp. and an
organization, the majority ownership of which is directly or indirectly common
to the ownership of Dyax Corp.
1.2 "PATENT RIGHTS" shall mean all of the following XXXXXXXXX
intellectual property:
(a) the United States provisional patent application
listed in Appendix A;
(b) the United States patent applications corresponding
to the provisional application listed in Appendix A,
and divisionals, the completed continuations and
claims of continuation-in-part applications which
shall be directed to subject matter specifically
described in such patent applications, and the
resulting patents;
(c) any patents resulting from reissues or reexaminations
of the United States patents described in a. and b.
above;
(d) Foreign patent applications filed corresponding to a.
and b. above and divisionals, continuations and
claims of continuation-in-part applications which
shall be directed to subject matter specifically
described in such patent applications, and the
resulting patents; and
(e) any Foreign patents, resulting from equivalent
Foreign procedures to United States reissues and
reexaminations, of the Foreign patents described in
d. above.
1.3 A "LICENSED PRODUCT" shall mean any product or part thereof
which is covered in whole or in part by an issued, unexpired claim or a pending
claim contained in the PATENT RIGHTS.
1.4 A "LICENSED PROCESS" shall mean any process which is covered
in whole or in part by an issued, unexpired claim or a pending claim contained
in the PATENT RIGHTS.
1.5 "IDENTIFIED PRODUCT" shall mean any product, or direct
derivative thereof, which was identified or selected through the use of the
LICENSED PROCESS.
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ARTICLE 2 - GRANT
2.1 XXXXXXXXX has authorized M.I.T. to act as its sole and
exclusive agent for the purposes of licensing the PATENT RIGHTS and has
authorized M.I.T. to enter into this Patent License Agreement on its behalf.
2.2 M.I.T. hereby grants to LICENSEE the right and license to
practice under the PATENT RIGHTS to make, have made, use, lease, sell and import
LICENSED PRODUCTS and to practice the LICENSED PROCESSES, until the expiration
of the last to expire of the PATENT RIGHTS, unless this Agreement shall be
sooner terminated according to the terms hereof.
2.3 LICENSEE agrees that LICENSED PRODUCTS leased or sold in the
United States shall be manufactured substantially in the United States.
2.4 In order to establish a period of exclusivity for LICENSEE,
M.I.T. hereby agrees that it shall not grant any other license to make, have
made, use, lease, sell and import LICENSED PRODUCTS or to utilize LICENSED
PROCESSES, except for the ***************.
2.5 XXXXXXXXX, M.I.T. and M.G.H. reserve the right to practice
under the PATENT RIGHTS for noncommercial research purposes.
2.6 LICENSEE shall have the right to enter into sublicensing
agreements for the rights, privileges and licenses granted hereunder. Upon any
termination of this Agreement, sublicensees' rights shall also terminate,
subject to Paragraph 13.6 hereof.
2.7 LICENSEE agrees to incorporate into all sublicensing
agreements, language that enables such sublicensing agreements to comply with
LICENSEE's obligations to M.I.T. under this License Agreement.
2.8 LICENSEE agrees to forward to M.I.T. with the major terms of
any and all sublicense agreements promptly upon execution by the parties which
shall be treated as confidential by M.I.T.
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 M.I.T.
2.10 Nothing in this Agreement shall be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
or patent rights of M.I.T. or XXXXXXXXX or any other entity other than the
PATENT RIGHTS, regardless of whether such patent rights shall be dominant or
subordinate to any PATENT RIGHTS.
ARTICLE 3 - DUE DILIGENCE
3.1 LICENSEE shall use its best commercial efforts to
commercialize the results of utilizing LICENSED PROCESSES through a thorough,
vigorous and diligent program for exploitation of the PATENT RIGHTS throughout
the life of this Agreement.
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3.2 In addition, LICENSEE shall adhere to the following
milestones:
(a) LICENSEE shall deliver to M.I.T. *************** a
business plan 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 M.I.T. *************** which shall be kept
confidential by M.I.T.
(b) LICENSEE shall develop a working model of LICENSED
PROCESS *************** and permit an in-plant
inspection by M.I.T. ***************, and
thereafter permit in-plant inspections by M.I.T. at
regular intervals with at least ***************
between each such inspection, subject to
appropriate notice and confidentiality obligations.
3.3 LICENSEE's failure to perform in accordance with Paragraphs
3.1 and 3.2 above shall be grounds for M.I.T. to terminate this Agreement
pursuant to Paragraph 13.3 hereof.
ARTICLE 4 - ROYALTIES
4.1 For the rights, privileges and license granted hereunder,
LICENSEE shall make payments to M.I.T. in the manner hereinafter provided to the
end of the term of the PATENT RIGHTS or until this Agreement shall be
terminated:
(a) License Issue Fee of ***************, which said
License Issue Fee shall be deemed earned and due
within *************** of the ***************.
(b) License Maintenance Fees of *************** payable
on *************** and on ***************
thereafter through and including ***************.
(c) *************** of *************** received by
LICENSEE for the practice of LICENSED PROCESSES on
behalf of third parties, excluding revenues received
from grants from the Federal Government, and
excluding sublicensing payments paid by any third
parties, which shall be covered under P. 4.1 (d)
below.
(d) *************** received by LICENSEE for
***************. This ***************
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shall include, but not limited to, ***************
from *************** for ***************. No
***************, however, on *************** covered
under ***************.
(e) Milestone payments as follows, regardless of whether
the milestone is reached by LICENSEE or a partner
(such as a sublicensee, corporate partner or other)
of LICENSEE, but excluding sublicensees to the PATENT
RIGHTS under 4.1.d.
(i) For each successful reduction to practice of
a LICENSED PROCESS *************** by the
*************** for that ***************.
(ii) For each successful identification of each
IDENTIFIED PRODUCT from *************** by
*************** regardless of whether it is
the first IDENTIFIED PRODUCT from
***************.
(iii) For each IDENTIFIED PRODUCT for
*************** per IDENTIFIED PRODUCT,
regardless of whether it is the first
IDENTIFIED PRODUCT from ***************.
(iv) For each IDENTIFIED PRODUCT for
*************** per IDENTIFIED PRODUCT,
regardless of whether it is the first
IDENTIFIED PRODUCT from ***************.
(v) For each IDENTIFIED PRODUCT ***************
per IDENTIFIED PRODUCT, regardless of
whether it is the first IDENTIFIED PRODUCT
for ***************.
(vi) For each IDENTIFIED PRODUCT ***************
of an IDENTIFIED PRODUCT arising from each
IDENTIFIED PRODUCT: *************** per
IDENTIFIED PRODUCT, regardless of whether it
is the first IDENTIFIED PRODUCT for
***************.
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(f) As of the Effective Date, LICENSEE and M.I.T.
contemplate that the primary use of the PATENT RIGHTS
will be in the development of *************** by
LICENSEE (on behalf of itself and third parties)
and/or by its sublicensees. However, LICENSEE's
rights under this Agreement are in all fields of use
and it is possible that LICENSEE and/or sublicensees
may later develop products for sale to third parties
which are reagents derived specifically from or used
specifically to practice LICENSED PROCESSES, or are
LICENSED PRODUCTS. If such occurs, such that LICENSEE
or its sublicensees contemplates selling such
products, then LICENSEE and M.I.T. shall meet to
negotiate reasonable royalties which shall be due to
M.I.T. for such products.
4.2 All payments due hereunder shall be paid in full, without
deduction of taxes or other fees which may be imposed by any government.
4.3 No multiple royalties shall be payable because any LICENSED
PROCESS or LICENSED PRODUCT, its manufacture, use, lease or sale are or shall be
covered by more than one PATENT RIGHTS patent application or PATENT RIGHTS
patent licensed under this Agreement.
4.4 Royalty payments shall be paid in United States dollars in
Cambridge, Massachusetts, or at such other place as M.I.T. may reasonably
designate consistent with the laws and regulations 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 5 - 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 M.I.T. 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 ***************
following the end of the calendar year to which they pertain, to the inspection
of M.I.T. or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other respects with this Agreement. Should such
inspection lead to the discovery of a greater than *************** discrepancy
in reporting to M.I.T.'s detriment, LICENSEE agrees to pay the full cost of such
inspection.
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5.2 LICENSEE shall deliver to M.I.T. true and accurate reports
which shall be kept confidential by M.I.T., giving such particulars of the
business conducted by LICENSEE and its sublicensees under this Agreement as
shall be pertinent to diligence under Article 3 and royalty accounting hereunder
*************** after the end of each calendar half year, reporting for the
events of the preceding half-year period:
(a) Names and addresses of third parties contracting with
LICENSEE for research and development services practicing
LICENSED PROCESSES
(c) Names and addresses of sublicensees under this Agreement
(d) Research and development contract revenue and other
revenue received by LICENSEE for the practice of LICENSED
PROCESSES on behalf of third parties: and the payments
due to M.I.T. for them under P. 4.1 (c).;
(e) Third Party Milestone Payments and the payments due to
M.I.T. for them under P. 4.1(d);
(f) LICENSEE's and any sublicensee milestones met, as defined
under P. 4.1(e), and the payments due to M.I.T. for each
milestone met.
(g) Total amount due to M.I.T.
5.3 With each such report submitted, LICENSEE shall pay to M.I.T.
the royalty payments due and payable under this Agreement. If no royalties shall
be due, LICENSEE shall so report.
5.4 On or before the *************** following the close of
LICENSEE's fiscal year, LICENSEE shall provide M.I.T. with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum, a
balance sheet and an income statement.
5.5 The amounts due under Articles 4 and 6 shall, if overdue, bear
interest until payment at a per annum rate *************** above the prime rate
in effect at the Chase Manhattan Bank (N.A.) on the due date. The payment of
such interest shall not foreclose M.I.T. from exercising any other rights it may
have as a consequence of the lateness of any payment.
ARTICLE 6 - PATENT PROSECUTION
6.1 XXXXXXXXX shall apply for, seek prompt issuance of, and
maintain the PATENT RIGHTS during the term of this Agreement, subject to
LICENSEE's advance approval of the foreign countries to be applied for. The
filing, prosecution and maintenance of all PATENT RIGHTS applications and
patents shall be the primary
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responsibility of XXXXXXXXX; provided, however, LICENSEE shall have reasonable
opportunities to advise XXXXXXXXX in advance and shall cooperate with XXXXXXXXX
in such filing, prosecution and maintenance.
6.2 Payment of all fees and costs relating to the filing,
prosecution and maintenance of the PATENT RIGHTS shall be the responsibility of
*************** after the filing of the first non-provisional U.S. patent
application. Such fees and costs incurred shall be paid by ***************
within *************** of invoicing. Payment of fees and costs incurred for the
filing of the first provisional U.S. patent application and the first
non-provisional patent application shall be due *************** from the
issuance of the first U.S. claim of the PATENT RIGHTS.
ARTICLE 7 - INFRINGEMENT
7.1 LICENSEE shall inform M.I.T. promptly in writing of any
alleged infringement of the PATENT RIGHTS by a third party and of any available
evidence thereof, and M.I.T. shall so inform XXXXXXXXX.
7.2 XXXXXXXXX shall have the right, but shall not be obligated, to
prosecute *************** all infringements of the PATENT RIGHTS and, in
furtherance of such right, LICENSEE hereby agrees that XXXXXXXXX may include
LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The
total cost of any such infringement action commenced or defended solely by
XXXXXXXXX shall be *************** shall keep any recovery or damages for past
infringement derived therefrom.
7.3 If within *************** after having been notified of any
alleged infringement, XXXXXXXXX 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 XXXXXXXXX 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 PATENT RIGHTS and LICENSEE may, for such purposes, use the
name of XXXXXXXXX as party plaintiff; provided, however, that such right to
bring such an infringement action shall remain in effect only during the
EXCLUSIVE PERIOD. No settlement, consent judgment or other voluntary final
disposition of the suit may be entered into without the consent of XXXXXXXXX,
which consent shall not unreasonably be withheld. LICENSEE shall indemnify
XXXXXXXXX and M.I.T. against any order for costs that may be made against
XXXXXXXXX and M.I.T. in such proceedings.
7.4 In the event that LICENSEE shall undertake litigation for the
enforcement of the PATENT RIGHTS, or the defense of the PATENT RIGHTS under
Paragraph 7.5, LICENSEE may withhold up to *************** of the payments
otherwise thereafter due M.I.T. under Article 4 hereunder and apply the same
toward reimbursement of up to half of LICENSEE's expenses, including reasonable
attorneys' fees, in connection therewith. Any recovery of damages
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by LICENSEE for each such suit shall be applied first in satisfaction of any
unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next
toward reimbursement of M.I.T. for any payments under Article 4 past due or
withheld and applied pursuant to this Article 7. The balance remaining from any
such recovery shall be ***************.
7.5 In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the PATENT RIGHTS shall be brought
against XXXXXXXXX or LICENSEE, XXXXXXXXX, at its option, shall have the right,
within *************** after commencement of such action, to intervene and take
over the sole defense of the action at its own expense. If XXXXXXXXX shall not
exercise this right, LICENSEE may take over the sole defense at LICENSEE's sole
expense, subject to Paragraph 7.4.
7.6 In any infringement suit as either party may institute to
enforce the PATENT 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.
7.7 LICENSEE, during the EXCLUSIVE PERIOD, shall have the sole
right in accordance with the terms and conditions herein to sublicense any
alleged infringer for future use of the PATENT RIGHTS. Sublicensee revenues
shall be treated per Article 4.
ARTICLE 8 - PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement
and thereafter, indemnify, defend and hold M.I.T., XXXXXXXXX and M.G.H., their
trustees, officers, employees and affiliates, harmless against all claims,
proceedings, demands and liabilities of any kind whatsoever, including legal
expenses and reasonable attorneys' fees, arising out of the death of or injury
to any person or persons or out of any damage to property, resulting from the
production, manufacture, sale, use, lease, consumption or advertisement of the
LICENSED PRODUCT(s) and/or LICENSED PROCESS(es) or arising from any obligation
of LICENSEE hereunder.
8.2 LICENSEE shall obtain and carry in full force and effect
commercial, general liability insurance which shall protect LICENSEE and M.I.T.,
XXXXXXXXX and M.G.H. with respect to events covered by Paragraph 8.1 above.
8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
M.I.T., XXXXXXXXX AND M.G.H., THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES,
AND AFFILIATES MAKE NO REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS
CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER
OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY M.I.T. OR XXXXXXXXX THAT
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THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE
PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL M.I.T., XXXXXXXXX AND
M.G.H., THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE
FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE
OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER M.I.T., XXXXXXXXX
AND/OR M.G.H. SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT
SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
ARTICLE 9 - EXPORT CONTROLS
LICENSEE acknowledges that it 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 United States Department of Commerce Export
Administration Regulations). The transfer of such items may require a license
from the cognizant agency of the United States Government and/or written
assurances by LICENSEE that LICENSEE shall not export data or commodities to
certain foreign countries without prior approval of such agency. M.I.T. neither
represents that a license shall not be required nor that, if required, it shall
be issued.
ARTICLE 10 - NON-USE OF NAMES
LICENSEE shall not use the names or trademarks of the Massachusetts
Institute of Technology nor of the Xxxxxxxxx Institute for Biomedical Research,
nor any adaptation thereof, nor the names of any of their employees, in any
advertising, promotional or sales literature without prior written consent
obtained from M.I.T., or said employee, in each case, except that LICENSEE may
state that it is licensed by M.I.T. under one or more of the patents and/or
applications comprising the PATENT RIGHTS.
ARTICLE 11 - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be
void; provided, however, with the prior written consent of M.I.T., which shall
not be unreasonably withheld, LICENSEE may assign this Agreement in connection
with the sale or transfer of all or substantially all of LICENSEE's equity and
assets, by merger, consolidation or otherwise, so long as the assignee shall
agree in writing to be bound by the terms and conditions hereof prior to such
assignment. Failure of such assignee to so agree shall be grounds for
termination by M.I.T. under Paragraph 13.3
ARTICLE 12 - DISPUTE RESOLUTION
12.1 Except for the right of any party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary injunction, or
other equitable relief to preserve the status quo or prevent irreparable harm,
any and all claims,
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disputes or controversies arising under, out of, or in connection with the
Agreement, including any dispute relating to patent validity or infringement,
which the parties shall be unable to resolve within *************** shall be
mediated in good faith. The party raising such dispute shall promptly advise the
other parties of such claim, dispute or controversy in a writing which describes
in reasonable detail the nature of such dispute. By not later than
*************** after the recipient has received such notice of dispute, each
party shall have selected for itself a representative who shall have the
authority to bind such party, and shall additionally have advised the other
parties in writing of the name and title of such representative. By not later
than *************** after the date of such notice of dispute, the party against
whom the dispute shall be raised shall select a mediation firm in the Boston
area and such representatives shall schedule a date with such firm for a
mediation hearing. The parties shall enter into good faith mediation and shall
share the costs equally. If the representatives of the parties have not been
able to resolve the dispute within *************** after such mediation hearing,
then any and all claims, disputes or controversies arising under, out of, or in
connection with this Agreement, including any dispute relating to patent
validity or infringement, shall be resolved by final and binding arbitration in
Boston, Massachusetts under the rules of the American Arbitration Association,
or the Patent Arbitration Rules if applicable, then obtaining. The arbitrators
shall have no power to add to, subtract from or modify any of the terms or
conditions of this Agreement, nor to award punitive damages. Any award rendered
in such arbitration may be enforced by either party in either the courts of the
Commonwealth of Massachusetts or in the United States District Court for the
District of Massachusetts, to whose jurisdiction for such purposes M.I.T.,
XXXXXXXXX and LICENSEE each hereby irrevocably consents and submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall
be construed to waive any rights or timely performance of any obligations
existing under this Agreement.
ARTICLE 13 - TERMINATION
13.1 If LICENSEE shall cease to carry on its business, this
Agreement shall terminate upon notice by M.I.T.
13.2 Should LICENSEE fail to make any payment whatsoever due and
payable to M.I.T. hereunder, M.I.T. shall have the right to terminate this
Agreement effective on thirty (30) days' notice, unless LICENSEE shall make all
such payments to M.I.T. within said thirty (30) day period. Upon the expiration
of the thirty (30) day period, if LICENSEE shall not have made all such payments
to M.I.T., the rights, privileges and license granted hereunder shall
automatically terminate.
13.3 Upon any material breach or default of this Agreement by
LICENSEE (including, but not limited to, breach or default under Paragraph 3.3),
other than those occurrences set out in Paragraphs
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13.1 and 13.2 hereinabove, which shall always take precedence in that order over
any material breach or default referred to in this Paragraph 13.3, M.I.T. shall
have the right to terminate this Agreement and the rights, privileges and
license granted hereunder effective on ninety (90) days' notice to LICENSEE.
Such termination shall become automatically effective unless LICENSEE shall have
cured any such material breach or default prior to the expiration of the ninety
(90) period.
13.4 LICENSEE shall have the right to terminate this Agreement at
any time on six (6) months' notice to M.I.T., and upon payment of all amounts
due M.I.T. through the effective date of the termination.
13.5 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; and Articles 1, 8, 9,
10, 12, 13.5, 13.6, and 15 shall survive any 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 make the payments to M.I.T. as required by Article 4 of this
Agreement and shall submit the reports required by Article 5 hereof.
13.6 Upon termination of this Agreement for any reason, any
sublicensee not then in default shall have the right to seek a license from
M.I.T. M.I.T. agrees to negotiate such licenses in good faith under reasonable
terms and conditions.
ARTICLE 14 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payments, 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, return receipt requested, 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 of M.I.T.:
Director
Technology Licensing Office
Massachusetts Institute of Technology
Room NE25-230
Five Cambridge Center, Xxxxxxx Square
Cambridge, Massachusetts 02142-1493
15
- 13 -
In the case of WHITEHEAD:
Vice President
Xxxxxxxxx Institute for Biomedical Research
Nine Xxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
In the case of LICENSEE:
Chief Executive Officer
Dyax Corp.
One Xxxxxxx Square, Bldg. 000
0xx Xxxxx
Xxxxxxxxx, XX 00000
ARTICLE 15 - MISCELLANEOUS PROVISIONS
15.1 All disputes arising out of or related to this Agreement, or
the performance, enforcement, breach or termination hereof, and any remedies
relating thereto, shall be construed, governed, interpreted and applied in
accordance with the laws of the Commonwealth of Massachusetts, U.S.A., except
that questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent shall have been
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 signed by the parties.
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.
16
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IN WITNESS WHEREOF, the parties have duly executed this Agreement the
day and year set forth below.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
By: /s/ Xxxx X. Xxxxxx
----------------------------------------
Name Xxxx X. Xxxxxx
---------------------------------------
Title Director Technology Licensing Office
--------------------------------------
Date June 17, 1997
---------------------------------------
XXXXXXXXX INSTITUTE FOR BIOMEDICAL RESEARCH
By: /s/ Xxxx Xxxxx
----------------------------------------
Name Xxxx Xxxxx
---------------------------------------
Title Vice President
--------------------------------------
Date June 19, 1997
---------------------------------------
DYAX CORP.
By: /s/ X. X. Xxxxxx
----------------------------------------
Name X. X. Xxxxxx
---------------------------------------
Title President
--------------------------------------
Date June 19, 1997
---------------------------------------
17
CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
- 15 -
APPENDIX A
PATENT RIGHTS on the EFFECTIVE DATE
***************
M.I.T. Case No. ***************
XXXXXXXXX Case No. WHI ***************
U.S. Provisional Patent No. *************** Filed on
***************
"Subtractive Antibody Screening (SAS) and Uses Therefor"
By: Xxxxx X. Xxxxxx, Xxxxxxx X. Xxxxxxx and Xxxxxx X. Xxxxxx
***************
18
FIRST AMENDMENT
This Amendment with the Effective Date of November 10, 1997 is to the License
Agreement dated June 19, 1997 between Massachusetts Institute of Technology
(hereinafter "M.I.T."), Xxxxxxxxx Institute for Biomedical Research (hereinafter
"XXXXXXXXX") and Dyax Corp. (hereinafter "LICENSEE").
WHEREAS, the parties wish to acknowledge The General Hospital doing business as
The Massachusetts General Hospital ("M.G.H.") as a co-owner of the PATENT RIGHTS
and wish to amend Paragraphs 2.1, 2.5, and Article 10, and to modify the
insurance clause to reflect M.G.H.'s requirements.
The parties thereto now further agree as follows:
1. Paragraph 2.1 shall be deleted and replaced in its entirety with the
following:
2.1 XXXXXXXXX and M.G.H. have authorized M.I.T. to act
as their sole and exclusive agent for the purposes
of licensing the PATENT RIGHTS and have authorized
M.I.T. to enter into this Patent License Agreement
on their behalf.
2. Paragraph 2.5 shall be deleted and replaced in its entirety with the
following:
2.5 XXXXXXXXX, M.I.T. and M.G.H. reserve the right to
practice under the PATENT RIGHTS for noncommercial
research and patient care purposes.
3. Paragraph 8.2 of the License Agreement shall be deleted in its entirety
and replaced with the following:
8.2 a. Beginning at such time as any LICENSED
PRODUCT and/or LICENSED PROCESS is being
commercially distributed or sold (other than for
the purpose of research and development and
obtaining regulatory approvals) by LICENSEE or by
a licensee, affiliate or agent of LICENSEE,
LICENSEE shall, at its sole cost and expense,
procure and maintain commercial general liability
insurance in amounts not less than Two Million
($2,000,000) per incident and Three Million
(3,000,000) annual aggregate and naming M.I.T.,
XXXXXXXXX and M.G.H. as additional insureds. Such
commercial general liability insurance shall
provide (i) product liability coverage and (ii)
broad form contractual liability coverage for
LICENSEE's indemnification under Paragraph 8.1 of
this agreement. If LICENSEE elects to self-insure
all or part of the limits described above
19
CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
(including deductibles or retentions which are in
excess of $250,000 annual aggregate) such
self-insurance program must be acceptable to the
M.G.H., XXXXXXXXX and M.I.T. and the Risk Management
Foundation. The minimum amounts of insurance coverage
required under this Paragraph 8.2 shall not be
construed to create a limit of LICENSEE's liability
with respect to its indemnification under Paragraph
8.1 of this agreement.
b. LICENSEE shall provide M.I.T. with written
evidence of such insurance upon request of M.I.T.
LICENSEE shall provide M.I.T. with written notice at
least fifteen (15) days prior to cancellation,
non-renewal or material change in such insurance; if
LICENSEE does not obtain replacement insurance
providing comparable coverage prior to the expiration
of such fifteen (15) day period, M.I.T. shall have
the right to terminate this Agreement effective at
the end of such fifteen (15) day period without
notice or any additional waiting periods.
c. LICENSEE shall maintain such commercial
general liability insurance beyond the expiration or
termination of this Agreement during (i) the period
that any LICENSED PRODUCT and/or LICENSED PROCESS is
being commercially distributed or sold (other than
for the purpose of research and development and
obtaining regulatory approvals) by LICENSEE or by a
licensee, affiliate or agent of LICENSEE and (ii) a
reasonable period after the period referred to in (c)
(i) above which in no event shall be less than
***************.
d. This ***************.
4. Article 10 shall be deleted and replaced with the following:
LICENSEE shall not use the names or trademarks of the
Massachusetts Institute of Technology, Massachusetts General
Hospital, nor the Xxxxxxxxx Institute for Biomedical Research,
nor any adaptation thereof, nor the names of any of their
employees, in any advertising, promotional or sales literature
without prior written consent obtained from M.I.T., M.G.H. or
XXXXXXXXX, or said employee, in each case, except that
LICENSEE may state that it is licensed by M.I.T., M.G.H. and
XXXXXXXXX, under one or more of the patents and/or
applications comprising the PATENT RIGHTS.
All other terms and conditions as set forth in the Agreement.
20
Agreed to for:
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
By: /s/ Xxxx X. Xxxxxx
----------------------------------------
Name Xxxx X. Xxxxxx
---------------------------------------
Title Techology Licensing Office
--------------------------------------
Date October 30, 1997
---------------------------------------
XXXXXXXXX INSTITUTE FOR BIOMEDICAL RESEARCH
By: /s/ Xxxx Xxxxx
----------------------------------------
Name Xxxx Xxxxx
---------------------------------------
Title Vice President
--------------------------------------
Date November 3, 1997
---------------------------------------
DYAX CORP.
By: /s/ L. Xxxxxx Xxxxxx
----------------------------------------
Name L. Xxxxxx Xxxxxx
---------------------------------------
Title President
--------------------------------------
Date November 10, 1997
---------------------------------------
