[LETTERHEAD OF OREGON STATE UNIVERISTY OFFICE OF TECHNOLOGY TRANSFER]
November 30, 1999
Xx. Xxxxxx Xxxxxx, CEO
SIGA Pharmaceuticals, Inc.
000 Xxxxxxxxx Xxxxxx, Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
RE: Oregon State University Docket No. 97-24
Chlamydia Vaccine
Option Agreement Extension
Dear Xx. Xxxxxx:
I am pleased to enclose a fully executed amendment to the option agreement for
your files. The exclusive option will be extended to January 13, 2000, and can
be extended an additional three months if SIGA needs more time to work with this
technology.
Please send the $2,500 option extension fee to:
Director of Technology Transfer
312 Xxxx Administration Bldg.
Oregon State University
Corvallis, Oregon 97331
If you have any questions, don't hesitate to call me at 000-000-0000.
Sincerely,
/s/ Xxxxxx Xxxxxxx
Xxxxxx Xxxxxxx
Xx. Licensing Associate
Enclosures
cc: Xx. Xxx Xxxxxx
Xx. Xxxxxx Xxxxx
AMENDMENT TO AGREEMENT
This Amendment To Agreement is effective upon the date of last signature by the
parties and is by and between SIGA Pharmaceuticals (hereinafter "Licensee"),
having its principal office at 000 Xxxxxxxxx Xxxxxx, Xxxxx 000, Xxx Xxxx, Xxx
Xxxx 00000 (hereafter "Company"), and The State of Oregon Acting by and through
the State Board of Higher Education on Behalf of Oregon State University, an
educational institution having a campus at Corvallis, Oregon 97331 (hereafter
"University").
WHEREAS:
Company and University are parties to an April 13, 1998, Exclusive Option
Agreement relating to a Chlamydia Vaccine, Oregon State University Docket No.
97-24, (hereafter the "Agreement"); and
Company and University wish to amend the Agreement as set forth herein.
NOW THEREFORE, Company and University agree as follows:
1. Under Section 3.3
The exclusive option period shall be extended for an additional three (3)
month period, from October 13, 1999 to January 13, 2000.
2. Under Section 3.2
Company shall pay a $2,500 option extension fee, due upon execution of
this Amendment to Agreement. The option extension fee should be made
payable to Oregon State University and should be mailed to the Director of
Technology Transfer at the address in Section 5.4.
3. Except as expressly set forth herein, the Agreement remains in full force
and effect.
ACCEPTED AND AGREED TO:
STATE OF OREGON, Acting by and SIGA PHARMACEUTICALS
through the STATE BOARD OF
HIGHER EDUCATION on behalf of
OREGON STATE UNIVERSITY
/s/ Xxxxxxxx X. Xxxxxxx 22 Nov 99 /s/ Xxxxxx Xxxxxx 11/11/99
------------------------------------ -----------------------------------
Xxxxxxxx X. Xxxxxxx Date Xxxxxx Xxxxxx Date
Director of Legal Services CEO
/s/ Xxxxxx X. Xxxxx 10/29/99
------------------------------------
Xxxxxx X. "Xxxx" Xxxxx Date
Vice Xxxxxxx for Research
[LETTERHEAD OF OREGON STATE UNIVERISTY OFFICE OF TECHNOLOGY TRANSFER]
March 6, 2000
Xx. Xxxxxx Xxxxxx, CEO
SIGA Technologies, Inc.
000 Xxxxxxxxx Xxxxxx, Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
RE: Oregon State University Docket No. 97-24
Chlamydia Vaccine
Second Amendment to the Option Agreement
Dear Xxxx:
Enclosed is an original fully executed second amendment to the option agreement
for your files. Please make the check for the $2,500 extension fee payable to
Oregon State University and mail it to the Director of Technology Transfer at
000 Xxxx Xxxxxxxxxxxxxx Xxxx., Xxxxxx State University, Corvallis, OR 97331. I
look forward to completing our pending license agreement.
Sincerely,
/s/ Xxxxxx Xxxxxxx
Xxxxxx Xxxxxxx
Xx. Licensing Associate
Enclosures
cc: Xx. Xxx Xxxxxx, OSU
Xx. Xxxxxx Xxxxx, SIGA Technologies
SECOND AMENDMENT TO AGREEMENT
This Amendment To Agreement is effective upon the date of last signature by the
parties and is by and between SIGA Technologies, Inc. (hereinafter "Licensee"),
having its principal office at 000 Xxxxxxxxx Xxxxxx, Xxxxx 000, Xxx Xxxx, Xxx
Xxxx 00000 (hereafter "Company"), and The State of Oregon Acting by and through
the State Board of Higher Education on Behalf of Oregon State University, an
educational institution having a campus at Corvallis, Oregon 97331 (hereafter
"University").
WHEREAS:
Company and University are parties to an April 13, 1998, Exclusive Option
Agreement relating to a Chlamydia Vaccine, Oregon State University Docket No.
97-24, (hereafter the "Agreement"); and
Company and University wish to amend the Agreement as set forth herein.
NOW THEREFORE, Company and University agree as follows:
1. Under Section 3.3
The exclusive option period shall be extended for an additional three (3)
month period, from January 14, 2000, 1999 to April 14, 2000.
2. Under Section 3.2
Company shall pay a $2,500 option extension fee, due upon execution of
this Amendment to Agreement. The option extension fee should be made
payable to Oregon State University and should be mailed to the Director of
Technology Transfer at the address in Section 5.4.
3. Except as expressly set forth herein, the Agreement remains in full force
and effect.
ACCEPTED AND AGREED TO:
STATE OF OREGON, Acting by and SIGA Technologies, Inc
through the STATE BOARD OF
HIGHER EDUCATION on behalf of
OREGON STATE UNIVERSITY
/s/ Xxxxx X. Xxxxxxxx for 3/3/00 /s/ Xxxxxx Xxxxxx 2/18/00
------------------------------------ -----------------------------------
Xxxxxxxx X. Xxxxxxx Date Xxxxxx Xxxxxx Date
Director of Legal Services CEO
580-300-920129-00
/s/ Xxxxxx X. "Xxxx" Xxxxx 02/28/00
------------------------------------
Xxxxxx X. "Xxxx" Xxxxx Date
Vice Xxxxxxx for Research
[LETTERHEAD OF OREGON STATE UNIVERISTY OFFICE OF TECHNOLOGY TRANSFER]
March 6, 2000
Xx. Xxxxxx Xxxxxx, CEO
SIGA Technologies, Inc.
000 Xxxxxxxxx Xxxxxx, Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
RE: Oregon State University Docket No. 97-24
Chlamydia Vaccine
License Agreement for Signature
Dear Xxxx:
Enclosed are three original license documents for your signature. Please sign
all three and be sure to date them March 6, 2000 which is the date you signed
the faxed signature page. Please return them to my attention, and I will get
them signed by Xxxxx Xxxxxxxx in the Oregon Department of Justice. One original
will be returned for your files.
I am delighted that SIGA has decided to license this technology, and I am
looking forward to a mutually rewarding partnership between OSU and SIGA
Technologies, Inc. Please call me at 000-000-0000 if you need anything in the
future.
Sincerely,
/s/ Xxxxxx Xxxxxxx
Xxxxxx Xxxxxxx
Xx. Licensing Associate
Enclosures
cc: Xx. Xxx Xxxxxx, OSU
Xx. Xxxxxx Xxxxx, SIGA Technologies
EXCLUSIVE LICENSE AGREEMENT
This Agreement, effective the date of last signature, is between SIGA
Technologies, Inc having a principal place of business at 000 Xxxxxxxxx Xxxxxx,
Xxxxx 000, Xxx Xxxx, Xxx Xxxx 00000, hereafter referred to as "Company", and the
State of Oregon Acting by and through the State Board of Higher Education on
Behalf of Oregon State University, an institution of higher education in the
State of Oregon, located at Corvallis, Oregon, hereafter referred to as
"University".
WITNESSETH:
WHEREAS, University is the owner by assignment from Drs. Xxxxxx X. Xxxxxx
and Xxxx X. Xxxxxxxxxx of their entire right, title and interest in the
invention entitled "Chlamydia Vaccine" which is the subject of three provisional
United States Patent Applications, Serial Numbers 60/082,438 filed April 20,
1998, 60/082,588 filed April 21, 1998, and 60/086,450 filed May 22, 1998, and
one PCT Application No. US99/08744, filed April 20, 1999, comprising Oregon
State University Docket Number 97-24, hereafter referred to as the "Invention",
and
WHEREAS, University is committed to a policy that ideas and creative works
produced at University should be used for the greatest possible public benefit;
and
WHEREAS, University accordingly believes that every reasonable incentive
should be provided for the prompt introduction of such ideas into public use,
all in a manner consistent with public interest; and
WHEREAS, Company is desirous of obtaining a worldwide license in order to
practice the above-identified Invention, and to manufacture, use and sell in the
commercial marketplace the products made in accordance therewith; and
WHEREAS, University is desirous of granting such license to Company in
accordance with the terms of this agreement; and
NOW, THEREFORE, in consideration of the foregoing premises, the parties
agree as follows:
Article I
Definitions
A. Patent Rights shall mean three provisional United States Patent
Applications, Serial Numbers 60/082,438 filed April 20, 1998, 60/082,588 filed
April 21, 1998, and 60/086,450 filed May 22, 1998, and one PCT Application No.
US99/08744, filed April 20, 1999, all divisions and continuations of these
applications, all US and foreign patents issuing from such application,
divisions, and continuations, and any reissues, reexaminations and extensions of
all such patents.
B. Licensed Products shall mean products claimed in Patent Rights or
products made in accordance with or by means of Licensed Processes.
C. Licensed Processes shall mean the processes claimed in Patent Rights.
Page 1 of 12
D. Licensed Services shall mean all services that utilize the Patent
Rights.
E. Licensed Combination Products shall mean any product that is comprised
in part of a Licensed Product and in part of one or more other biologically
active diagnostic, preventive or therapeutic agents which are not themselves
Licensed Products (the "Other Agents"). "Other Agents" excludes diluents and
vehicles of Licensed Products.
F. Know-How shall mean unpatented discoveries, inventions, and
improvements, proprietary information, trade secrets, drawings, plans, designs,
or specifications provided by University pertaining to Licensed Products.
G. Net Sales with respect to Licensed Products shall mean the amount
billed or invoiced on sales of Licensed Products, Licensed Processes or Licensed
Services less:
1) Customary trade, quantity or cash discounts and commissions
actually allowed and taken;
2) Amounts repaid or credited by reason of rejection or return;
or
3) To the extent separately stated on purchase orders, invoices
or other documents of sales, taxes levied on and/or other
governmental charges made as to production, sale,
transportation, delivery or use, and paid by or on behalf of
Company.
H. Net Sales with respect to Licensed Combination Products shall mean the
amount billed or invoiced on sales of Licensed Combination Products, less the
deductions set forth in section G.l through G.3 above, multiplied by a fraction
having (i) a numerator of the gross sales price of the Licensed Product included
in such Licensed Combination Product as if sold separately or, if such sales
price is not available, the fair market value of such Licensed Product(s), and
(ii) a denominator of the gross sales price of such Licensed Combination
Product, or if such sales price is not available, the sum of the fair market
values of the Other Agents and the Product(s) contained in such Licensed
Combination Product, The "fair market value" for any Licensed Product or Other
Agent shall be determined for a quantity comparable to that included in the
Licensed Combination Product and of substantially comparable class, purity and
potency, and shall be mutually agreed to by University and Company. When no fair
market value is available, the fraction set forth above shall be changed to a
fraction having (x) a numerator of the cost to Company, its affiliates or
sublicensees, of the Licensed Product(s) included in such Licensed Combination
Product, and (y) a denominator of the sum of such cost plus the cost to Company,
its affiliates or sublicensees of the Other Agents contained in such Licensed
Combination Product, provided that in no event shall the fraction be less than
(A) one-half (1/2), if only one Other Agent is included with a Licensed
Product(s) in such Licensed Combination Product, (B) one-third (1/3), if two
Other Agents are included with a Licensed Product(s) in such Licensed
Combination Product, and (C) one-quarter (1/4), if three or more Other Agents
are included with a Licensed Product(s) in such Licensed Combination Product.
"Cost" as used above means the actual cost paid by Company, and/or its
affiliates or sublicensees in an arm's length transaction, if purchased, or if
not purchased but actually manufactured by any such entity, the sum of the
direct manufacturing cost as determined by such entity's internal cost
accounting system consistently applied.
Page 2 of 12
I. Field of Use shall mean all fields of use.
J.Subsidiary shall mean any corporation, company or other entity fifty
percent (50%) or more of whose voting stock is owned or controlled, directly or
indirectly, by Company.
Article II
Grant
A. Subject to the terms and conditions of this agreement, University
hereby grants to Company a worldwide, exclusive license with right to
sublicense, to use Patent Rights and Know-How, to make, use, sell and have made
Licensed Products, Licensed Combination Products, Licensed Processes, and
Licensed Services in the Field of Use. Sublicensees shall be subject to the
terms and conditions of this Agreement.
X.Xxxxxxx and sublicensees shall alone have the obligation to ensure that
any Licensed Products or Licensed Combination Products it makes, uses, sells,
leases, or otherwise disposes of is not defective and that any Licensed Product
or Licensed Combination Product satisfies all applicable government regulations.
C. The University retains an irrevocable, nonexelusive and nontransferable
right to practice for its own educational and research purposes the Patent
Rights and Know How. University reserves the right to supply the Patent Rights
and Know How to academic research scientists, with such supply subject to
limitation of use by such scientists for research purposes and restriction upon
further distribution.
Article III
Diligence
A. Company shall use its best efforts, consistent with sound and
reasonable business practices and judgment, to effect commercialization of
Licensed Products, Licensed Combination Products, Licensed Processes or Services
as soon as practicable and to maximize these sales. "Best efforts" under this
clause shall mean satisfying the following goals:
Development Plan -- Chlamydia Research
SIGA Research Laboratories, hereafter "Company", and Oregon State University
(hereafter "University") Collaborative Project
Starting in 2/29/00
In collaboration with Xx. Xxx Xxxxxx at University, Company intends to
push forward research and development of vaccines for the prevention of
disease caused by one or more of the following: Chlamydia trachomatis,
Chlamydia pneumoniae, and Chlamydia psittaci. This work is based on Xx.
Xxxxxx'x discovery of the family of proteins involved in the formation of
inclusion bodies which are crucial in the Chlamydia life cycle -- IncA,
IncB, and IncC -- as well as TroA. To accomplish this goal, Company will
work closely with Xx. Xxxxxx in formulating several vaccine delivery
strategies for these proteins. To further develop the
Page 3 of 12
concept, promising early work by Xx. Xxxxxx on the C. psittaci proteins
will be repeated in a guinea pig model to show that significant protection
can be achieved. In parallel, proteins from C. trachomatis have already
been cloned and will be developed using Company's proprietary vaccine
delivery technology, as well as other delivery systems in a mouse model.
Company's commitment to this technology includes both financial and
personnel resources. In meeting this responsibility, Company will use all
reasonable means to accomplish the proposed goals financially, including,
but not limited to: applications for Small Business Innovation Research
Grants (one is currently pending at NIH), review of and application to
other appropriate government and private Requests for
Proposals/Applications, and active pursuit of corporate partnerships (one
such collaborative partnership has just been established).
Article IV
Annual License Fee
University shall have the right to terminate this license in the event
that Company does not pay to University a nonrefundable annual license fee in
the sum of ten thousand dollars ($10,000) one year from the effective date of
this Agreement and every year thereafter with the following exceptions; Company
may omit this annual license fee during the years the milestones, Phase I IND,
Phase II IND, Phase III IND and the Product License Approval (PLA) are paid. The
annual license fee may be deducted from royalties due University during the
calendar year in which the annual license fee is paid.
Article V
Royalties
A. In addition to the terms of Article IV, Company agrees to pay
University a royalty of two percent (2%) of Net Sales of Licensed Products,
Licensed Combination Products, Licensed Processes or Services sold by Company,
its distributors, affiliates, and its sublicensees.
B. In the case of sublicenses, Company shall also pay to University twenty
percent (20%) of non-royalty sublicense income (e.g., license issue fees,
license maintenance fees, etc.) excluding research and development support and
milestone payments, to an aggregate maximum of one million ($1,000,000) dollars.
C. Licensed Products, Licensed Combination Products and Licensed Processes
or Services shall be deemed to have been sold when invoiced, or if not invoiced,
then when delivered, shipped or paid for, whichever is first.
D. Company agrees to pay University a royalty of one percent (1%) of Net
Sales of Licensed Products, Licensed Combination Products, and Licensed
Processes or Services sold or licensed for exclusive use within foreign
countries in which no patent has been applied for, until such time that Company
can show there exists some competing products which incorporate a material
aspect of the Licensed Product.
Page 4 of 12
Article VI
Milestone Payments
As further consideration for the license grant provided in Article II, Company
agrees to pay the University the following amounts in the nature of milestone
payments:
A. Seventy-five Thousand ($75,000) Dollars within sixty (60) days
of FDA approval of a Phase I Investigational New Drug
Application (IND) on a Licensed Product, Licensed Combination
Product or Licensed Processes.
B. One Hundred Thousand ($100,000) Dollars within sixty (60) days
of FDA approval of a Phase II IND on a Licensed Product,
Licensed Combination Product or Licensed Process.
C. One Hundred and Twenty-five Thousand ($125,000) Dollars within
sixty (60) days of FDA approval of a Phase III IND on a
Licensed Product, Licensed Combination Product or Licensed
Process.
D. One Hundred and Fifty Thousand ($150,000) Dollars within sixty
(60) days of a Product License Approval (PLA) from the FDA on
a Licensed Product, Licensed Combination Product or Licensed
Process.
Article VII
Reports and Accounting
A. Prior to sales, Company shall provide written annual development
reports within thirty (30) days after each calendar year which shall
include, but not be limited to: reports of progress on research and
development, regulatory approvals, manufacturing, sublicensing, or
marketing during the preceding twelve (12) months as well as plans for the
coming year. After sales of Licensed Products, Licensed Combination
Products, Licensed Processes or Services begins, Company shall provide
written quarterly royalty reports within thirty (30) days after each
calendar quarter which shall include, but not be limited to: reports of
progress on research and development, regulatory approvals, manufacturing,
sublicensing, marketing and sales during the preceding three (3) months as
well as plans for the coming quarter. If progress differs from that
anticipated in the plan provided under Article III, Company shall explain
the reasons for the difference and propose a modified plan for
University's review and approval. Company shall also provide any
reasonable additional data University requires to evaluate Company's
performance.
B. In order to minimize Company time spent on royalty reports, a
brief one-page royalty report form is provided in Appendix A that will
satisfy the University's reporting requirements. With each royalty report,
Company shall pay the amount of royalty due, if any. Such report shall be
signed by an officer of Company and shall include a detailed listing of
all deductions from royalties as specified herein. If no royalties are
due to University for any reporting period, the written report shall so
state.
C. Any payments to University shall be made payable to Oregon State
University and be tendered to the Director of Technology Transfer, Oregon
State University for distribution in keeping with State Board of Higher
Education policies.
Page 5 of 12
D. All payments due hereunder shall be payable in United States
dollars. Conversion of foreign currency to US dollars shall be made at the
conversion rate existing in the United States (as reported in the New York
Times or, if not in the Times, then in the Wall Street Journal) on the
last working day of each royalty period. Such payments shall be without
deduction or exchange, collection or other charges.
E. Late payments shall be subject to an interest charge of one and
one half percent (1.5%) per month.
Article VIII
Record Keeping
A. Company shall keep, and shall require sublicensees to keep
accurate and correct records of Licensed Products, Licensed Combination
Products or Licensed Processes or Services made, used or sold under this
Agreement, appropriate to determine the amount of royalties due hereunder
to University. Such records shall be retained for at least three (3) years
following a given reporting period. They shall be available during normal
business hours for inspection at the expense of University by University's
Internal Audit Department, or by a Certified Public Accountant selected by
University and approved by Company for the sole purpose of verifying
reports and payments hereunder. Such accountant shall not disclose to
University any information other than information relating to accuracy of
reports and payments made under this Agreement. In the event that any such
inspection shows an under reporting and under payment in excess of five
percent (5%) for any twelve (12) month period, then Company shall pay the
cost of such examination as well as any additional sum that would have
been payable to University had the Company reported correctly, plus
interest.
Article IX
Domestic and Foreign Patent Filing and Maintenance
A. Company shall reimburse University for all reasonable out of
pocket expenses University incurs for the preparation, filing, prosecution
and maintenance of Patent Rights upon execution of this Agreement,
however, expenses previously reimbursed by Company as part of an earlier
option agreement will not be included. Company shall reimburse University
for all such future expenses within thirty (30) days of Company's receipt
of invoices. University shall take responsibility for the preparation,
filing, prosecution and maintenance of any and all patent applications and
patents included in Patent Rights, provided however that University shall
first consult with Company as to the preparation, filing, prosecution and
maintenance of such patent applications and patents and shall furnish to
Company copies of documents relevant to any such preparation, filing,
prosecution or maintenance,
B. University and Company shall cooperate fully in the preparation,
filing, prosecution and maintenance of Patent Rights and of all patents
and patent applications licensed to Company hereunder, executing all
papers and instruments or requiring members of University to execute such
papers and instruments so as to enable University to apply for, to
prosecute and to maintain patent applications and patents in University's
name in any country. Each party shall provide to the other prompt notice
as to all matters which come to its attention and which may affect the
preparation, filing, prosecution or maintenance of any such patent
applications or patents.
Page 6 of 12
C. If Company elects to no longer pay the expenses of a patent
application or patent included within Patent Rights, Company shall notify
University not less than sixty (60) days prior to such action and shall
thereby surrender its rights under such patent or patent application.
Article X
Infringement
A. With respect to any licensed Patent Rights under which Company is
exclusively licensed pursuant to this Agreement, Company or its
sublicensee shall have the right to prosecute in its own name and at its
own expense, any infringement of such patent, so long as such license is
exclusive at the time of the commencement of such action. University
agrees to notify Company promptly of each infringement of such patents of
which University is or becomes aware. Before Company or its sublicensee
commences an action with respect to any such infringement, Company shall
contact University to obtain University's view concerning any potential
effects such an action may bring and shall report such views to the
sublicensee.
B. If Company or its sublicensee elects to commence an action as
described above and University is a legal party to such action, University
shall have the right to assign to Company all of University's rights,
title and interest in licensed Patent Rights (subject to all University's
obligations to the government and others having rights in such licensed
Patent Rights). In this event, such assignment shall be irrevocable and
such action by Company on that patent shall thereafter be brought or
continued in the name of Company. Notwithstanding any such assignment to
Company by University, University shall cooperate fully with Company in
connection with any such action. Regardless of any licensed Patent Rights
assigned to Company by this clause, Company shall be required to continue
to meet its obligations to University under this Agreement as if licensed
Patent Rights were still licensed in the name of University.
C. If Company or its sublicensee elects to commence an action
described above and University is a legal party to such action, University
may join the action as a co-plaintiff. Upon so doing, University shall
jointly control the action with Company or its sublicensee.
X.Xxxxxxx shall reimburse University for any costs it incurs as part
of an action brought by Company or its sublicensee, irrespective of
whether University shall become a party to such action.
E. If Company or its sublicensee elects to commence an action as
described above Company may reduce, by up to fifty percent (50%), the
royalty due to University earned under the patent subject to suit by fifty
percent (50%) of the amount of the expenses and costs of such action,
including attorney fees. In the event that such fifty percent (50%) of
such expenses and costs exceed the amount of royalties withheld by Company
for any calendar year, Company may, to that extent, reduce the royalties
due to University from Company in succeeding calendar years, but never by
more than fifty percent (50%) of the royalty due in any one year.
F. No settlement, consent judgment or voluntary final disposition of
the suit may be entered into without the consent of University, which
consent shall not be unreasonably withheld.
Page 7 of 12
G. Recoveries or reimbursements from such action shall first be
applied to reimburse Company and University for litigation costs not paid
from royalties and then to reimburse University for royalties withheld.
Any remaining recoveries or reimbursements shall be shared equally by
Company and University.
H. In the event that Company and its sublicensee, if any, elect not
to exercise their right to prosecute an infringement of Licensed Patent
Rights pursuant to the above clauses, University may do so at its own
expense, controlling such action and retaining all recoveries therefrom.
I. If a declaratory judgment action alleging invalidity of any
Licensed Patent Rights shall be brought against Company or University,
then University, at its sole option, shall have the right to intervene and
take over the sole defense of the action at its own expense.
Article XI
Term
A. The term of this Agreement shall be five (5) years or the life of
the last to issue patent in Licensed Patent Rights whichever is greater.
Article XII
Termination
A. In the event an order for relief is entered against Company under
the Federal Bankruptcy Code, or an order appointing a receiver for
substantially all of Company's assets is entered by a court of competent
jurisdiction, or Company makes an assignment for the benefit of creditors,
or a levy of execution is made upon substantially all of the assets of
Company and such levy is not quashed or dismissed within thirty (30) days,
this Agreement shall automatically terminate effective the date of such
order or assignment or in the case of such levy, the expiration of such
thirty (30) day period, provided, however, that such termination shall not
impair or prejudice any other right or remedy that University might have
under this Agreement.
B.Upon any material breach or default of this agreement by Company,
University shall have the right to terminate this Agreement and the
rights, privileges and licenses granted hereunder by xxxxxx (90) days
notice to Company. Such termination shall become effective unless Company
shall have cured any such breach or default prior to the expiration of the
ninety (90) day period.
C. Company shall have the right to terminate this Agreement at any
time on ninety (90) days notice to University and upon payment of all
amounts due and payable to University through that date.
D. If at any time prior to the first commercial sale of Licensed
Product under this agreement Company shall cease to pursue commercial
development of Licensed Product as contemplated in Article III herein,
Company shall be obligated to so notify University and this Agreement
shall automatically terminate without obligation on the part of University
to refund any of the fees which may have been paid by Company prior to
such termination.
Page 8 of 12
E. If Company stops development efforts as outlined in Article III
A, during any consecutive 12 month period, University shall have the right
to terminate this Agreement or make this Agreement non-exclusive by giving
Company written notice of termination or conversion to a non-exclusive
license to take effect thirty (30) days after notification as described in
Article XVI.
F. Upon termination of this Agreement under this Article XII, but
subject to the provisions of Article XII Section G, Company shall either
return to University Licensed Products or Licensed Combination Products in
its possession or certify to University in writing that Licensed Products
or Licensed Combination Products in its possession have been destroyed.
G. Termination of this Agreement for any reason shall not be
construed to release either party from any obligation that matured prior
to the effective date of such termination. Company and any sublicensee
thereof may, however, after the effective date of such termination, have
six (6) months to sell all Licensed Product or Licensed Combination
Products completed and in inventory.
H. Within thirty (30) days of the termination of this Agreement,
Company shall duly account to University for the sale of Licensed Product
or Licensed Combination Products and inventory in Company possession as of
the date of termination.
I. Upon termination of this Agreement for any reason, each
sublicense then in effect of any of the rights, privileges and licenses
granted hereunder shall continue in effect, provided that there then
exists no circumstance that, with the giving of notice or the lapse of
time or both, constitutes an event of default under any provisions of the
sublicense Agreement permitting termination of such sublicense for
default. Company's rights under all sublicenses continues in effect by the
provisions of this clause shall be deemed assigned to University upon
termination of the Agreement and Company agrees to execute any instrument
reasonably requested to confirm such assignment. Such assignment of rights
to University shall not impose any obligation on University other than to
permit the exercise of the licenses granted by such sublicenses.
Article XIII
Indemnification, Insurance and Limitation of Warranties
A. Company shall, at all times during the term of this Agreement,
indemnify, defend and hold University, its members, agents, officers,
employees and affiliates harmless against all claims and expenses,
including legal expenses and reasonable attorney fees arising out of the
death 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 sale, use, lease or distribution of
Licensed Product, Licensed Combination Product, Licensed Processes and
Licensed Services by Company and its sublicensees or arising from any
obligations of Company hereunder, except for any claims or expenses
arising out of the negligence or willful actions of University or its
officers, members, agents or employees.
B. Company shall maintain in effect insurance in the combined amount
of one million dollars ($1,000,000) per occurrence for bodily injury and
property damages, including reasonable attorney fees, arising out of any
alleged defects in Licensed Product, Licensed Combination Product,
Licensed Processes and Licensed Services or in the use thereof. The policy
(ies) shall include an endorsement naming University as an additional
insured insofar as the Agreement is concerned and provide that notice
shall be given to University at least thirty (30) days prior to
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cancellation or material change in the form of such policy(ies). The
insurance carrier must be authorized to do business in the State of
Oregon. Any sublicense to this Agreement shall provide insurance as
provided in this Article XIII.
C. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
UNIVERSITY MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, WITH REGARD TO ANY LICENSED PATENT RIGHTS
HEREUNDER OR ANY PARTS THEREOF, AND UNIVERSITY EXPLICITLY DISCLAIMS ALL
WARRANTIES OF MERCHANTABILITY AND OF FITNESS FOR A PARTICULAR PURPOSE.
Article XIV
University's Name
A. Company agrees not to use the name of University or any of its
employees, in any advertisement or sales promotion relating to any
Licensed Product, Licensed Combination Product, Licensed Processes and
Licensed Services without prior written approval by University. University
will allow Company to use University's name as holder of Patent Rights and
developer of Licensed Products.
Article XV
Transfer of Rights and Obligations
A. This Agreement shall not be assignable by either party hereto
without the prior written consent of the other party, except to the
successor or assignee of all or substantially all of the assignor's
business to which this Agreement relates. When duly assigned in accordance
therewith, this Agreement shall be binding on and inure to the benefit of
the assignee.
Article XVI
Notices
A. All notices, demands, payments, reports or other writings
provided for in this Agreement shall be deemed to have been fully given,
made or sent when made in writing and delivered by hand or deposited in
the U.S. mail, first class, postage paid, and addressed as follows (unless
another address has been provided by the party affected):
To University:
Director of Technology Transfer
Research Office
312 Xxxx Administration Building
Oregon State University
Corvallis, Oregon 97331-2140
Telephone: 000-000-0000
Facsimile: 000-000-0000
Page 10 of 12
With a copy to:
Director of Legal Services
Oregon University System
Xxxxx Xxxxxxxx Xxxx
P.O. Box 3175
Eugene, Oregon 97403
Telephone: 000-000-0000
Facsimile: 000-000-0000
To Company: President/CEO
SIGA Technologies, Inc.
000 Xxxxxxxxx Xxxxxx -- Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
B. Any notice or communication given in conformity with this Article
shall be deemed to be effective when received by the addressee, if
delivered by hand or upon transmission, if delivered by facsimile, and
five (5) days after mailing, if mailed. The address to which any notice,
demand, payment or report or other writing may be given, made or sent to
any party may be changed upon written notice given by such party as above
provided.
Article XVII
Miscellaneous Provisions
A. This agreement shall be construed in accordance with the laws of
the State of Oregon. Any action brought hereunder shall be brought and
conducted solely and exclusively within the United States District Court
for the District of Oregon.
B. In the event that any provision hereof is found to be invalid or
unenforceable pursuant to a final judgement or decree, the remainder of
this agreement shall remain valid and enforceable according to its terms.
C. Nothing contained in this Agreement shall be construed as
creating a joint venture, partnership or employment relationship between
the parties hereto. Except as specified herein, neither party shall have
the right, power or implied authority to create any obligation or duty,
express or implied, on behalf of the other party hereto.
D. This document represents the entire Agreement between the parties
as to the matters set forth and integrates all prior discussions or
understandings between them. This Agreement may only be modified or
amended in writing by a document signed by an authorized representative of
University and Company.
E. The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of the 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.
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IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and duly
executed this Agreement effective as of the date of last signature.
STATE OF OREGON, Acting by and SIGA Technologies, Inc.
through the STATE BOARD OF
HIGHER EDUCATION on behalf of
OREGON STATE UNIVERSITY
/s/ Xxxxxx Xxxxxx 3/6/00
------------------------------------ -----------------------------------
Xxxxxxxx X. Xxxxxxx Date Xxxxxx Xxxxxx Date
Director of Legal Services CEO
/s/ Xxxxxxx [Illegible] for 3/6/00
------------------------------------
Xxxxxx X. "Xxxx" Xxxxx Date
Vice Xxxxxxx for Research
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