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EXHIBIT 10.14
MEDICAL RESEARCH COUNCIL
-AND-
SANGAMO BIOSCIENCES
L I C E N C E
FOR
ZINC FINGERS PATENT
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EXHIBIT 10.14
THIS AGREEMENT is made the 1 day of September One thousand nine hundred and
ninety six between MEDICAL RESEARCH COUNCIL of 00 Xxxx Xxxxxxxx, Xxxxxx X0X 0XX
(hereinafter called "MRC" which expression includes its successors and assigns)
of the one part and Sangamo Biosciences of 000 Xxxxxx Xxxxxxx Xxxxxxx, Xxxxxxx,
XX 00000, X.X.X. (hereinafter called "the Licensee" which expression includes
its successors and permitted assigns) of the other part.
WHEREAS:-
(A) MRC is the proprietor of certain applications for patent rights in respect
of methods of selecting and designing polypeptides comprising zinc finger
binding motifs and polypeptides made by these methods.
(B) The Licensee wishes to obtain a licence to the applications from MRC, and
MRC is willing to grant such licence on the terms, and subject to the
conditions, which follow.
NOW IT IS HEREBY AGREED as follows:-
1. Definitions
(1) In this Agreement the following words and expression shall be
construed as follows:-
"Affiliate" shall mean any corporation, company, partnership or other
entity which directly or indirectly controls, is controlled by or is under
common control with either party to this Agreement.
"Control" means the ownership of more than 50% of issued share capital or
the legal power to direct or cause the direction of the general management
and policies of the party in question.
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"THE EFFECTIVE DATE" shall mean the date of execution above written.
"NET INVOICE PRICE" shall mean in relation to a Product sold by Licensee or
sub-licensee of Licensee, the price invoiced by Licensee (or sub-licensee
as appropriate) to the relevant purchaser (or in the case of a sale or
other disposal otherwise than at arm's length, the price which would have
been invoiced in a bona fide arm's length contract of sale), but deducting
the costs of packing, transport and insurance, customer duties, any credits
actually given for returned or defective Products, normal trade discounts
actually given, and sales taxes, VAT or other similar tax charged on and
included in the invoice price to the purchaser.
"THE PATENT RIGHTS" shall mean:-
(a) the patent applications short particulars of which are set out in
Schedule 1;
(b) all patents which may be granted pursuant to any of the foregoing
applications;
(c) any patents which derive from the foregoing patent applications
including any divisions, renewals, continuations,
continuations-in-part, extensions or reissues thereof.
"THE PRODUCTS" shall mean products whose development (including use of the
methods claimed in the Patent Rights), manufacture use or sale would, but
for this licence, infringe the Patent Rights.
(2) In this Agreement the singular shall where the context so permits
include the plural and vice versa.
2. Commencement
This Agreement shall be deemed to have come into force on the Effective
Date and shall be read and construed accordingly.
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3. Grant of Rights
(1) MRC agrees to grant to the Licensee a non-exclusive worldwide licence
under the Patent Rights to develop manufacture use and sell Products.
(2) The Licensee shall have the right to grant sub-licenses of the rights
granted to it under this Agreement but only in conjunction with a
licence of Licensee's complementary technology and in a defined field
equivalent to that licensed technology. Any such sub-license shall be
granted on and shall contain substantially similar terms and conditions
as the clauses of this Agreement including, but without limitation, the
terms herein relating to indemnity.
(3) Prior to the first anniversary of the Effective Date MRC shall review
the scope and desirability for entering negotiations with Licensee for
conversion of this agreement to an exclusive licence in whole or in
part, and MRC shall inform Licensee on or about the first anniversary
of the Effective Date whether it wishes to enter such negotiations. For
the avoidance of doubt, neither party is under any obligation to enter
such negotiations, or committed to accept specific terms for conversion
of an exclusive or partially exclusive licence.
4. Payments
(1) In consideration for the non-exclusive licence granted pursuant to
Clause 3.1 hereof the Licensee shall pay to MRC the following sums:
(i) * to be paid upon * .
(ii) * to be paid on the 1st anniversary of the Effective
Date.
(iii) * to be paid on the 2nd anniversary of the Effective
Date.
(iv) * to be paid on the 3rd anniversary of the Effective
Date.
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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(2) In further consideration for the licence granted pursuant to Clause 3.1
hereof the Licensee shall pay to MRC the following milestone payments:-
(i) * to be paid on
*
relating to products derived in whole or in part from the
technology described and claimed in the Patent Rights.
(ii) * to be paid on
*
relating to products derived in whole or in part from the technology
described and claimed in the Patent Rights.
(iii) * to be paid on
*
relating to products derived in whole or in part from the technology
described and claimed in the Patent Rights.
(3) In further consideration of the licence granted by MRC to Licensee under
Clause 3(1), Licensee shall pay to MRC a royalty of * of the Net
Invoice Price on all sales of Products by Licensee or any Affiliate or any
sub-licensee where the Products are either manufactured and/or sold in a
country where a patent under the Patent Rights is granted valid and
subsisting at the date of such sale.
(4) If the Licensee is required to pay total royalties in excess of * of
Net Invoice Price to parties other than MRC the royalty payable to MRC may
be reduced by the amount of royalty in excess of * payable to such
other parties but in no event shall the royalty payable to the MRC be
reduced by * from the royalty rate specified in Clause 4(3). If
the Licensee avails itself of the provision of this paragraph, the Licensee
agrees to provide the MRC with proof of such royalties paid to other
parties.
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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(5) Licensee agrees to keep true and accurate records and books of account
containing all data necessary for the calculation of the milestone
payments and royalties payable to MRC under Clause 4(2) and 4(3). Such
records and books of account shall upon reasonable notice having been
given by MRC be open at all reasonable times during business hours for
inspection by MRC or its duly authorised representative.
(6) Licensee shall prepare a statement in respect of each calendar quarter of
this Agreement which shall show for the calendar quarter in question the
quantity of Products manufactured and sold by the Licensee and
sub-licensees in each country and the Net Invoice Price of each Product so
sold and the royalty due to MRC thereon pursuant to Clause 4(3) above. Such
statement shall be submitted to MRC within 60 days following the end of the
calendar quarter or part thereof to which it relates together with a
remittance for the royalties due to MRC. If MRC shall give notice to
Licensee within 60 days of the receipt of any such statement that it does
not accept the same such statement shall be certified by an independent
chartered accountant appointed by agreement between the parties or, in
default of agreement within 14 days, by the President for the time being of
the Institute of Chartered Accountants of England and Wales in London.
Licensee shall make available all books and records required for the
purpose of such certification at reasonable times during normal business
hours and the statement so certified shall be binding between the parties.
The costs of such certification shall be the responsibility of MRC if the
certification shows the original statement to have been accurate and
otherwise shall be the responsibility of Licensee. Following any such
certification the parties shall make any adjustments necessary in respect
of the royalties already paid to MRC in relation to the period in question.
(7) The Licensee shall pay royalties to MRC free and clear of and without
deduction or deferment in respect of any demand, set-off, counterclaim or
other dispute and so far as is legally possible such payment shall be made
free and clear of any taxes imposed by or under the authority of any
government or public authority and in particular but
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without limitation where any sums due to be paid to MRC hereunder are
subject to any withholding or similar tax, the Licensee shall pay such
additional amount as shall be required to ensure that the net amount
received by MRC hereunder will equal the full amount which would have
been received by it had not such tax been imposed or withheld. The
Licensee and, without prejudice to the foregoing, MRC shall use their
best endeavors to do all such lawful acts and things and to sign all
such lawful deeds and documents as will enable the Licensee to take
advantage of any applicable legal provision or any double taxation
treaties with the object of paying the sums due to MRC without
imposing or withholding any tax.
Sums are expressed in this agreement as exclusive of any value added
tax (VAT) which might be applicable. MRC agrees to provide Licensee
with a VAT invoice in respect of every payment affected by VAT.
(8) Where MRC does not receive payment of any sums due to it within the
period specified hereunder in respect thereof interest shall accrue on
the sum outstanding at the rate of * per month calculated on a daily
basis without prejudice to MRC right to receive payment on the due
date therefor.
5. Patent Prosecution and Infringement
(1) MRC shall be responsible for seeking issuance and maintenance of the
Patent Rights.
(2) If the Licensee becomes aware of a suspected infringement of the
Patent Rights it shall notify MRC giving full particulars thereof. If
the alleged infringement consists of any act which (if done by the
Licensee) would be within the scope of the licences granted under this
Agreement MRC and the Licensee shall (within a reasonable time of the
said notification) consult together with a view to agreeing upon a
course of action to be pursued.
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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6. Term and Termination
(1) Subject as hereinafter provided this Agreement and the licence granted
pursuant thereto shall continue in force in each territory during the
subsistence of the last to expire of the Patent Rights.
(2) MRC may terminate this Agreement and the said licences forthwith by
notice to the Licensee to that effect upon the happening of any of the
following events:-
(i) if the Licensee fails to perform or observe any of the
obligations on its part to be performed or observed and if the
breach is one capable of remedy has not been remedied within
three (3) months of the giving of a notice informing the Licensee
of such breach;
(ii) if the Licensee files a voluntary petition in bankruptcy or
applies to any Tribunal for a Receiver Trustee or similar officer
to be appointed by any Court or Executive Department to liquidate
or conserve the Licensee or any substantial part of its property
or assets due to insolvency or to the threat thereof or if the
Licensee suffers any trusteeship or receivership to continue
undischarged for a period of sixty days or suffers any similar
procedure for the relief of distressed debtors entered into by
the Licensee voluntarily or involuntarily or if the Licensee is
otherwise divested of its assets for a period of sixty days or
makes a general assignment for the benefit of its creditors;
(3) The Licensee may terminate this Agreement and the Licences granted
pursuant hereto by giving to MRC 6 months notice to that effect. Such
termination shall be without prejudice to the right of MRC to enforce
the Patent Rights in the event of subsequent manufacture of Products
by the Licensee.
(4) Termination of this Agreement or of the said Licences shall be without
prejudice to any rights of either party against the other which may
have accrued up to the date of
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such termination and the licensee shall pay to MRC the appropriate
royalties hereunder on all stocks of the Products (on which royalties
have not already been paid) held at the date of termination by the
Licensee or any person engaged by the same to manufacture the Products
and shall thereafter be free to sell such products on which royalty
has been paid.
7. Warranties
(1) MRC hereby represents and warrants that MRC owns the Patent Rights or
is otherwise authorised to licence the Patent Rights to the Licensee.
(2) Nothing in this Agreement or in any licences to be granted pursuant
thereto shall be construed as a representation or warranty that any of
the said Patent Rights are valid or that any development manufacture
use sale or other disposal of the Products is not an infringement of
any patents or other rights not vested in the MRC.
(3) The Licensee shall promote the sale of the Products of good marketable
quality and shall use reasonable endeavours to meet the market demand
therefore.
8. Liability and Indemnity
Licensee hereby undertakes and agrees to be solely responsible at its own
cost and expense for dealing with and for any liability arising from any
contractual tortious or other claims or proceedings concerning the Products
or their development production marketing distribution or sale and in
particular product liability claims or proceedings. Further, Licensee
hereby grants MRC an indemnity against any loss damage costs or expense
incurred or suffered by MRC arising out of any such claims or proceedings.
9. Waiver
The waiver by MRC of any breach default or omission in the performance or
observance of
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any of the terms of this Agreement by the Licensee shall not be deemed to
be a waiver of any other such breach default or omission.
10. Notices
Any notice consent or other communication authorised or required to be
given hereunder or for the purposes hereof shall be in writing and be
deemed to be duly given to MRC if left at or sent by recorded delivery or
registered post addressed to its principal office and to the Licensee if
left at or sent by recorded delivery or registered post to its principal
place of business. Any such notice consent or other communication if served
by post shall be deemed to have been given at the time when it would have
been received in due course of the post.
11. Non-assignability
Save for an assignment to an Affiliate of the Licensee, the Licensee shall
not be entitled to assign the benefit of this Agreement or any rights
granted or to be granted under the Agreement.
12. Non-Use of Names
Licensee shall not use the name of MRC nor of any of its employees or
agents in any advertising promotional or sales literature without obtaining
the prior written consent of MRC in each case, except that Licensee may
state that it is licensed by MRC under one or more patents and/or
applications comprising the Patent Rights.
13. Law and Jurisdiction
This Agreement is to be read and construed in accordance with and governed
by the Laws of England so far as the subject matter allows and the parties
hereby submit to the jurisdiction of the English courts in relation to any
dispute arising out of this Agreement.
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In witness whereof the parties hereto have caused this Agreement to be executed
in the matter legally binding upon them by causing authorised representatives to
sign this Agreement.
Signed by: /s/ Xxxxxx X. Xxxx, 21 August 1996
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For and on behalf of Xxxxxx X. Xxxx Ph.D.
MEDICAL RESEARCH COUNCIL Head of Technology Transfer Group
Signed by: /s/ Xxxxxx X. Xxxxxxxx
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For and on behalf of XXXXXX X. XXXXXXXX
SANGAMO BIOSCIENCES PRESIDENT
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