REDACTED VERSION
EXHIBIT 10.23
To
Targeted Genetics Corporation's
Form 10-K
For the Year Ended
December 31, 1997
"[ * ]" = omitted, confidential material, which material has been
separately filed with the Securities and Exchange Commission pursuant to a
request for confidential treatment.
LICENSE AGREEMENT
This Agreement is made and entered into as of March 15, 1997 (the
"Effective Date") by and between THE XXXXXXX INSTITUTE, a non profit public
benefit corporation duly organized and existing under the laws of the State of
California and having its principal office at 00000 Xxxxx Xxxxxx Xxxxx Xxxx, Xx
Xxxxx, XX 00000, XXX (hereinafter referred to as "INSTITUTE"), and TARGETED
GENETICS CORPORATION, a corporation duly organized under the laws of the State
of Washington and having its principal office at 0000 Xxxxx Xxx, Xxxxx 000,
Xxxxxxx, XX 00000 (hereinafter referred to as "LICENSEE").
RECITALS
--------
A. INSTITUTE is the owner of certain PATENT RIGHTS (as later defined
herein) and warrants that it has the right to grant licenses under said PATENT
RIGHTS, subject only to a royalty-free, nonexclusive license heretofore granted
to the United States Government.
B. INSTITUTE desires to have the PATENT RIGHTS developed and
commercialized to benefit the public and is willing to grant a license
thereunder.
C. LICENSEE has represented to INSTITUTE that LICENSEE is experienced in
the development of products similar to the LICENSED PRODUCT(s) (as later defined
herein) and that it will commit itself to a diligent program of exploiting the
PATENT RIGHTS so that public utilization will result therefrom.
D. 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:
ARTICLE 1 - DEFINITIONS
-----------------------
For the purposes of this Agreement, the following words and phrases will
have the following meanings:
1.1 "LICENSEE" means Targeted Genetics Corporation as well as a related
company of Targeted Genetics Corporation, the voting stock of which is
directly or indirectly at least fifty percent (50%) owned or
controlled by Targeted Genetics Corporation, an organization which
directly or indirectly controls more than fifty percent (50%) of the
voting stock of
Targeted Genetics Corporation and an organization, the majority
ownership of which is directly or indirectly common to the ownership
of Targeted Genetics Corporation.
1.2 "PATENT RIGHTS" means all of the following:
(a) The US Patent Applications listed in Appendix A;
(b) divisions, continuations and continuations-in-part of (a) above,
including reissues, extensions or reexaminations of the
foregoing; and
(c) all foreign counterparts of (a) and (b) above;
(d) any and all US and foreign counterpart patent applications and
patents including divisions, continuations and continuations-in-
part and reissues, extensions or reexaminations of the foregoing
that claim any Institute Invention or Joint Invention as those
terms are defined in the Sponsored Research Agreement of even
date herewith;
(e) but excluding claims in any or all of (a) - (d) above drawn to
any uses of nucleic acid sequences that are not homologous with,
or a derivative, variant, progeny or improvement of E1A.
1.3 A "LICENSED PRODUCT" will mean any product or composition which
would, in the applicable jurisdiction, in the absence of the license
granted hereunder, infringe a Valid Claim.
1.4 A "LICENSED PROCESS" will mean any method or process or part thereof
which would in the applicable jurisdiction, in the absence of the
license granted hereunder, infringe a Valid Claim.
1.5 "NET SALES" will mean LICENSEE's (and its sublicensees') gross
xxxxxxxx for LICENSED PRODUCTS produced hereunder less the sum of the
following items to the extent that said items are included in the
gross xxxxxxxx: (a) discounts actually allowed in amounts customary in
the trade; (b) sales taxes, tariffs, duties and/or use taxes directly
imposed and with reference to particular sales; (c) outbound
transportation prepaid or allowed; and (d) amounts allowed or credited
on returns.
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No deductions will be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by
LICENSEE and on its payroll, or for cost of collections. LICENSED
PRODUCTS will be considered "sold" when billed to the customers.
1.6 "TERRITORY" will mean the entire world.
1.7 "FIELD OF USE" will mean for the diagnosis and/or treatment of cancer.
1.8 "SPONSORED RESEARCH AGREEMENT" means the agreement of even date
herewith between the INSTITUTE and LICENSEE having said title.
1.9 "VALID CLAIM" will mean any pending or issued claim of the LICENSED
PATENT RIGHTS that has not been held invalid or unenforceable by a
final judgment by a court of competent jurisdiction and authority
which is unappeallable or as to which the applicable time for appeal
has expired without any appeal being filed.
ARTICLE 2 - XXXXX AND SUBLICENSES
---------------------------------
2.1 License Grant. INSTITUTE hereby grants to LICENSEE the exclusive
license right to make, use, sell, import and export (subject to the
provisions of Article 9) LICENSED PRODUCTS and LICENSED PROCESSES in
the TERRITORY, for use in the FIELD OF USE. This license grant will
continue until the last to expire of the PATENT RIGHTS, unless this
Agreement is terminated sooner according to the terms hereof. This
license grant is subject to the governmental rights referenced in
Recital A and to the reserved rights referenced in Paragraph 2.2
hereof.
2.2 Reserved Rights. INSTITUTE reserves the right to (a) practice and
have practiced the PATENT RIGHTS for noncommercial purposes; and (b)
use and distribute to third parties material covered by the PATENT
RIGHTS for noncommercial research purposes and (c) grant to others the
right to practice the PATENT RIGHTS to make use or sell products that
are not LICENSED PRODUCTS and LICENSED PROCESSES. INSTITUTE will
notify LICENSEE of any pending distribution of materials covered by
the PATENT RIGHTS to commercial third parties and its intention to
grant licenses per (b) and (c) of this section, respectively, at least
thirty (30) days prior to such planned distribution.
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LICENSEE will have the right to request that materials covered by the
PATENT RIGHTS not be distributed or licenses not granted, and such
request will not be unreasonably denied by the INSTITUTE.
2.3 No Implied Rights. The license granted hereunder will not be
construed to confer any rights upon LICENSEE by implication, estoppel
or otherwise as to any technology not specifically set forth in
Appendix A hereof.
2.4 Sublicensing. LICENSEE will have the right to enter into sublicensing
agreements for the rights, privileges and licenses granted hereunder,
subject to the INSTITUTE'S prior written approval, which approval will
not be unreasonably denied. Upon any termination of this Agreement,
sublicensees' rights will also terminate, subject to Paragraph 13.6
hereof.
2.5 Binding on Sublicensee. LICENSEE agrees that any sublicenses granted
by it will provide that all obligations of LICENSEE to INSTITUTE
created by this Agreement will be binding upon the sublicensee as if
it were a party to this Agreement.
2.6 No Extra Consideration from Sublicensee. LICENSEE will 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 INSTITUTE
ARTICLE 3 - DUE DILIGENCE
-------------------------
3.1 Commercialization.
(a) LICENSEE will use its commercially reasonable efforts to bring
LICENSED PRODUCTS to market through a thorough, vigorous and
diligent program for exploitation of the PATENT RIGHTS and to
continue active, diligent marketing efforts for LICENSED PRODUCTS
throughout the life of this Agreement.
(b) LICENSEE will prepare and furnish to INSTITUTE an annual
development and progress report, as of June 30 of each year,
describing LICENSEE'S progress (and sublicensee's plans) for the
development and commercialization of LICENSED PRODUCTS.
(c) So long as LICENSEE is pursuing commercially reasonable efforts
to bring to market and to diligently market at least one
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LICENSED PRODUCT, including meeting the milestones for said
LICENSED PRODUCT as specified in Paragraph 3.2, below, then
INSTITUTE will not be entitled to terminate this Agreement on
account of a default under this Paragraph 3.1.
3.2 Milestones. In addition, LICENSEE will adhere to the following
milestones:
(a) Initiate first Phase II clinical trial for a product covered by
the PATENT RIGHTS not more than [ * ] from the Effective Date;
and
(b) Initiate first Phase III clinical trial for a product covered by
the PATENT RIGHTS not more than [ * ] from the Effective Date;
and
(c) File a New Drug Application for a product covered by the PATENT
RIGHTS not more than [ * ] years from the Effective Date; and
(d) Receive approval of a New Drug Application for a product covered
by the PATENT RIGHTS not more than [ * ] years from the Effective
Date.
3.3 If LICENSEE fails to achieve the milestones described in Paragraph 3.2
(a), then the INSTITUTE has the option, in its sole discretion, to
terminate this Agreement, or to convert the exclusive license granted
by this Agreement to a non-exclusive license.
3.4 LICENSEE may request INSTITUTE approval to modify the milestones
described in Paragraph 3.2 (b)-(d). If LICENSEE can reasonably
demonstrate that such failure is attributable to causes outside of its
control, INSTITUTE approval of such request will not be unreasonably
denied. If such failure is attributable to causes within LICENSEE'S
[*] Confidential Treatment Requested
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control then the INSTITUTE has the option, in its sole discretion, to
consider such failure a material breach or default of this Agreement
and may exercise its right to terminate this Agreement pursuant to
Paragraph 13.3 hereof.
ARTICLE 4 - LICENSE FEES, ROYALTIES AND MILESTONES
--------------------------------------------------
4.1 License Fees and Stock Warrants. In consideration of the license
granted LICENSEE pursuant to Article 2 hereof, LICENSEE will pay
and/or deliver to the INSTITUTE:
(a) a license fee of [ * ] cash payable as follows:
[ * ] already paid by LICENSEE upon execution of the term sheet
that outlined the terms of this Agreement, receipt of which is
hereby acknowledged; [ * ] due within thirty (30) days after the
Effective Date; and [ * ] due on or before six months after the
Effective Date.
(b) a stock warrant to purchase 50,000 of LICENSEE'S common stock at
the market price as of the Effective Date of this Agreement,
which warrant will be exercisable for a period of seven years
after the Effective Date. Such warrant will vest as follows:
1. 16,667 shares upon the Effective Date of this Agreement;
2. 16,666 shares upon successful completion by INSTITUTE of
[ * ], provided that such studies are completed within one
(1) year after the Effective Date, and provided further that
if such studies are not completed within one (1) year after
the Effective Date such warrant for these 16,666 shares will
be rescinded;
3. 16,667 shares upon issuance of a US patent covering [ * ].
4.2 Running Royalties.
(a) LICENSEE will pay to the INSTITUTE running royalties of
[ * ] of NET SALES of the LICENSED
[*] Confidential Treatment Requested
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made, used or sold by LICENSEE or sublicensees; provided however,
if there are multiple, stacking royalties payable by LICENSEE on
the LICENSED PRODUCTS to third parties, then LICENSEE may reduce
the [ * ] royalty to INSTITUTE on the same proportionate basis as
all of the other stacking royalties are reduced, so long as the
resulting royalty payable to the INSTITUTE does not go below
[ * ] of NET SALES of LICENSED PRODUCTS.
(b) In the case of NET SALES of LICENSE PRODUCTS by sublicensees,
INSTITUTE will be paid the greater of the running royalties
specified in Paragraph 4.2(a) or [ * ] of the royalties payable
by the sublicensee to LICENSEE.
(c) In the case of a sublicense which pays any consideration to
LICENSEE other than running royalties on NET SALES of LICENSED
PRODUCTS ("Non-Royalty Fees") (e.g. such other consideration
includes license fees, marketing fees, milestone payments, equity
in sublicensee, bonus payments and the like - but excludes
specific funding for specific future research and development
work and purchases of equity in LICENSEE) then LICENSEE will pay
[ * ] of said other consideration to INSTITUTE. In the event that
LICENSEE sublicenses the PATENT RIGHTS to a third party in
combination with patent(s) and or other rights of the University
of Texas MD Xxxxxxxx Cancer Center ("MDACC") for which LICENSEE
receives Non-Royalty Fees, then the INSTITUTE's share of Non-
Royalty Fees will be reduced from [ * ] to the amount of
reduction from [ * ] agreed to by MDACC, but in no event will the
INSTITUTE's share of Non-Royalty Fees be reduced to less than
[ * ].
(d) Payments of royalties will be made within thirty (30)days after
March 31, June 30, September 30 and December 31 of each year
during the term of this Agreement covering LICENSED PRODUCTS sold
during the preceding calendar quarter. Payments of other
consideration pursuant to Paragraph 4.2(c) will be made within
thirty (30) days after receipt by LICENSEE.
[*] Confidential Treatment Requested
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4.3 Milestone Payments. LICENSEE will pay to the INSTITUTE the following
milestone payments, due as follows:
(a) [ * ] upon achievement of the milestone outlined in Paragraph
3.2(a); and
(b) [ * ] upon achievement of the milestone outlined in Paragraph
3.2(b); and
(c) [ * ] upon achievement of the milestone outlined in Paragraph
3.2(c); and
(d) [ * ] upon achievement of the milestone outlined in Paragraph
3.2(d)
4.4 Minimum Sales. From and after the date of the first commercial sale
of a LICENSED PRODUCT, in each of the three succeeding calendar yeras,
LICENSEE will pay to the INSTITUTE royalties of not less than [ * ]
("Minimum Royalties"). In each calendar year thereafter LICENSEE will
achieve sales of LICENSED PRODUCTS sufficient to produce royalties
payable to the INSTITUTE of not less than [ * ]. If LICENSEE fails to
achieve such sales after three (3) full calendar years from the date
of the first commercial sale, INSTITUTE may either terminate this
Agreement or convert the license rights from exclusive to non-
exclusive. Minimum Royalties for the first year of commercial sales
will be pro-rated according to the month when such sales begin.
4.5 Net of Taxes. All payments due hereunder will be paid in full,
without deduction of taxes or other fees which may be imposed by any
government (excluding however any US income taxes which may be payable
by INSTITUTE), and which taxes and fees will be paid by LICENSEE.
4.6 No Multiple Royalties. No multiple royalties will be payable to
INSTITUTE because any LICENSED PRODUCT is covered by more
[*] Confidential Treatment Requested
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than one patent or patent application included in the PATENT RIGHTS
licensed under this Agreement.
4.7 US Dollar Payments. Royalty payments will be paid in United States
dollars in San Diego, California, or at such other place as INSTITUTE
may reasonably designate consistent with the laws and regulations
controlling in any foreign country. If any currency conversion will be
required in connection with the payment of royalties hereunder, such
conversion will be made by using the exchange rate prevailing at the
Chase Manhattan Bank (NA) 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'S Books; Inspection. LICENSEE will keep full, true and
accurate books of account containing all particulars that may be
necessary for the purpose of showing the amounts payable to INSTITUTE
hereunder. Said books of account will 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 will be open and made available for
inspection by the INSTITUTE and/or its agents not less than seven (7)
days after receipt by LICENSEE of INSTITUTE'S advance written notice
of its intent to inspect said books and data for three (3) years
following the end of the calendar year to which they pertain, for the
purpose of verifying LICENSEE's royalty statement or compliance in
other respects with this Agreement. Such inspection may be conducted
no more frequently than annually. Should such inspection lead to the
discovery of a greater than ten percent (10%) discrepancy in reporting
to INSTITUTE's detriment, LICENSEE agrees to pay the full cost of such
inspection.
5.2 Annual Development Reports. Before the first commercial sale of a
LICENSED PRODUCT, LICENSEE will submit to INSTITUTE annual reports on
June 30 of each year as to LICENSEE'S activities, progress and plans
applicable to Paragraphs 3.1 and 3.2.
5.3 Quarterly Royalty Reports. Within thirty (30) days after the
expiration of each calendar quarter commencing with the quarter in
which the first commercial sale occurs of a LICENSED PRODUCT, LICENSEE
will deliver to INSTITUTE a written statement of all royalties due on
sales of LICENSED PRODUCTS during such calendar quarter. Such written
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statements will be duly signed on behalf of LICENSEE and will show
the NET SALES of LICENSED PRODUCTS sold by LICENSEE and/or its
sublicensees during such calendar quarter and the amount of royalties
due, pursuant to section 4.2. If no royalties are due, LICENSEE will
so report.
5.4 Late Payment Charge. The payments set forth in this Agreement will,
if overdue, bear interest until paid at a per annum rate equal to two
percent (2%) above the prime rate in effect at the Chase Manhattan
Bank (NA) on the due date. The payment of such interest will not
preclude INSTITUTE from exercising any other rights it may have as a
consequence of the lateness of any payment.
ARTICLE 6 - PATENT PROSECUTION
------------------------------
6.1 LICENSEE'S Payment of Patent Costs. Payment of all reasonable fees
and costs relating to the filing, prosecution, and maintenance of the
PATENT RIGHTS incurred after December 1, 1996, will be the
responsibility of LICENSEE, and will be paid by LICENSEE.
6.2 INSTITUTE'S Duty. Subject to LICENSEE'S payment of the reasonable
costs, INSTITUTE will apply for, seek prompt issuance of, and maintain
during the term of this Agreement the PATENT RIGHTS in the United
States and in the foreign countries listed in Appendix B hereto.
Appendix B may be amended by written agreement of both parties. The
prosecution, filing and maintenance of all PATENT RIGHTS will be the
primary responsibility of INSTITUTE; provided, however, that INSTITUTE
will keep LICENSEE fully informed of the progress thereof, and will
provide LICENSEE with copies of all documents related to filing,
prosecuting and maintaining the PATENT RIGHTS, and a reasonable
opportunity to review any proposed application, amendment, response or
other communication related to the PATENT RIGHTS; and the INSTITUTE
will use its best efforts to accommodate LICENSEE'S reasonable
requests regarding filing, prosecuting and maintaining the PATENT
RIGHTS.
ARTICLE 7 - INFRINGEMENT
------------------------
7.1 Prosecution of Infringement Action. If it is believed in good faith
that the PATENT RIGHTS are infringed by a third party as evidenced by
a third party's manufacture, use or sale of a product, the party to
this Agreement first having knowledge of such infringement will
promptly
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notify the other party in writing, which notice will set forth the
facts of such infringement in reasonable detail. LICENSEE will have
the right, but not the obligation, to institute and prosecute at its
own expense any such infringement of the PATENT RIGHTS to enjoin any
third party infringement of the PATENT RIGHTS in such third party's
efforts to make, use or sell a product and to recover damages as may
be awarded. If LICENSEE fails to bring such action or proceedings
within a period of three (3) months after receiving written notice or
otherwise having knowledge of such infringement, then INSTITUTE will
have the right, but not the obligation, to prosecute at its own
expense any infringement of the PATENT RIGHTS. In either instance in
which one party to this Agreement institutes an infringement action,
the second party will agree to be joined as a party plaintiff if
required by law, and at the expense of the first party, and the second
party further agrees to give the first party reasonable assistance and
authority to file and to prosecute such suit. Any recovery of damages
and costs in such suits will be apportioned as follows: the party
bringing the suit will first recover an amount equal to two (2) times
the costs and expenses incurred by the party directly related to the
prosecution of such action, and the remainder will be divided equally
between the INSTITUTE and LICENSEE.
7.2 Consent to Settlement. No settlement or consent judgment or other
voluntary final disposition of a suit under this Article may be
entered into without the consent of the INSTITUTE and/or LICENSEE,
which consents will not be unreasonably withheld.
7.3 Sublicense to Infringer. LICENSEE will have the sole right to grant a
sublicense to any alleged infringer for the FIELD OF USE to make, use
or sell LICENSED PRODUCTS, subject to compliance with all of the terms
and conditions, including Paragraph 2.4, of this Agreement.
ARTICLE 8 - PRODUCT LIABILITY
-----------------------------
8.1 Indemnity. LICENSEE will at all times during the term of this
Agreement and thereafter, indemnify, defend and hold INSTITUTE, its
trustees, directors, 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, or resulting from the testing, production,
manufacture, sale, use, lease, consumption or advertisement of the
LICENSED PRODUCT(s) or arising from any obligation of LICENSEE
hereunder,
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excepting only claims that the PATENT RIGHTS infringe third party
intellectual property.
8.2 Insurance. LICENSEE will obtain and carry in full force and effect
liability insurance which will protect LICENSEE and INSTITUTE with
respect to events covered by Paragraph 8.1, above, as soon as
commercially practical, but in no event later than the earlier of the
commencement of any clinical trial for or the first sale of a LICENSED
PRODUCT or first practice of a LICENSED PROCESS. The limits of such
insurance will not be less than One Million Dollars ($1,000,000) per
occurrence with an aggregate of Three Million Dollars ($3,000,000) for
personal injury or death, and One Million Dollars ($1,000,000) per
occurrence with an aggregate of Three Million Dollars ($3,000,000) for
property damage and such insurance will be endorsed to included
clinical trials or product liability coverage as the circumstances may
require. LICENSEE will provide INSTITUTE with Certificates of
Insurance evidencing the same and will provide ten (10) days written
notice to INSTITUTE prior to any cancellation or material change
thereof. LICENSEE will have INSTITUTE named as an additional insured
on such insurance prior to the date of the first commercial sale of a
LICENSED PRODUCT or the practice of a LICENSED PROCESS. Additionally,
LICENSE will use its best efforts to have INSTITUTE named as an
additional insured on such insurance prior to the commencement of any
clinical trial for a LICENSED PRODUCT or LICENSED PROCESS. If,
however, LICENSEE is unable to have INSTITUTE named as an additional
insured on such insurance prior to the commencement of any clinical
trial for a LICENSED PRODUCT or LICENSED PROCESS, LICENSEE will so
advise INSTITUTE prior to the commencement of such clinical trial and
the INSTITUTE and LICENSEE will negotiate in good faith alternative
means to protect the INSTITUTE with respect to events covered by
Paragraph 8.1 during the period of such clinical trial.
8.3 Disclaimers by INSTITUTE. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN
THIS AGREEMENT, INSTITUTE, ITS 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,
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AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT
DISCOVERABLE. NOTHING IN THIS AGREEMENT WILL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY INSTITUTE THAT THE PRACTICE
BY LICENSEE OF THE LICENSE GRANTED HEREUNDER WILL NOT INFRINGE THE
PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT WILL INSTITUTE, ITS
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
INSTITUTE WILL BE ADVISED, WILL HAVE OTHER REASON TO KNOW, OR IN FACT
WILL KNOW OF THE POSSIBILITY.
8.4 Representations by INSTITUTE. INSTITUTE hereby makes the
representations as set forth in Recital A of this Agreement.
ARTICLE 9 - EXPORT CONTROLS
---------------------------
It is understood that INSTITUTE is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE will not export
data or commodities to certain foreign countries without prior approval of such
agency. INSTITUTE neither represents that a license will not be required nor
that, if required, it will be issued.
ARTICLE 10 - NON-USE OF NAMES
-----------------------------
LICENSEE will not use the names or trademarks of The Xxxxxxx Institute, 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 INSTITUTE, or said employee, in each case, except that LICENSEE
may state that it is licensed by INSTITUTE under one or more of the patents
and/or applications comprising the PATENT RIGHTS. INSTITUTE will not use the
name of the LICENSEE in any public disclosure without the prior written consent
of the LICENSEE.
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ARTICLE 11 - ASSIGNMENT
-----------------------
This Agreement is not assignable by LICENSE without the express prior
written consent of the INSTITUTE except in the event of the sale of all or
substantially all of the LICENSEE'S assets and/or business. Any other attempt
to assign this Agreement without such consent will be void. This Agreement will
bind and inure to the benefit or permitted assigns.
ARTICLE 12 - DISPUTE RESOLUTION
-------------------------------
12.1 Arbitration. All disputes arising between the INSTITUTE and LICENSEE
under this Agreement will be settled by binding arbitration conducted
in the English language in accordance with and US laws with the
Commercial Arbitration Rules of the American Arbitration Association.
The parties will cooperate with each other in causing the arbitration
to be held in an efficient and expeditious manner. Any arbitration
proceeding instituted under this Agreement will be brought in the
state and county of the principal executive offices of the party
against which the arbitration is initiated.
12.2 Award. Any award rendered by the arbitrators will be final and
binding upon the parties hereto. Judgment upon the award may be
entered in any court of record of competent jurisdiction. Each party
will pay its own expenses of the arbitration, and the expenses of the
arbitrators will be equally shared, unless the arbitrators assess as
part of their award all or any part of the arbitration expenses of
one party (including reasonable attorneys' fees) against the other
party.
12.3 Jurisdiction. The law governing this Agreement, for purposes of the
arbitration will be the law of the state of the principal offices of
the party against which the arbitration is initiated.
12.4 No Waiver. Notwithstanding the foregoing, nothing in this Article
will be construed to waive any rights or timely performance of any
obligations existing under this Agreement.
ARTICLE 13 - TERMINATION
------------------------
13.1 Cessation of Business by LICENSEE. If LICENSEE will cease to carry
on its business, this Agreement will terminate upon notice by
INSTITUTE.
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13.2 Payment Default by LICENSEE. If LICENSEE fails to make any payment
due and payable to INSTITUTE hereunder, INSTITUTE will have the right
to terminate this Agreement effective on thirty (30) days' written
notice, unless LICENSEE will make all such payments to INSTITUTE
within said thirty (30) day period. Upon the expiration of the thirty
(30) day period, if LICENSEE has not made all such payments to
INSTITUTE, the rights, privileges and license granted hereunder will
automatically terminate.
13.3 Default by LICENSEE. Upon any material breach or default of this
Agreement by LICENSEE (including, but not limited to, breach or
default under Paragraphs 3.3 or 4.4 or 8.1 or Article 11), other than
those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove,
which will always take precedence in that order over any material
breach or default referred to in this Paragraph 13.3, INSTITUTE will
have the right to terminate this Agreement and the rights, privileges
and license granted hereunder effective on ninety (90) days' written
notice to LICENSEE. Such termination will become automatically
effective unless LICENSEE will have cured any such material breach or
default prior to the expiration of the ninety (90) day period.
13.4 LICENSEE'S right to Terminate. LICENSEE will have the right to
terminate this Agreement at any time on six (6) months' written
notice to INSTITUTE, and upon payment of all amounts due INSTITUTE
through the effective date of the termination.
13.5 Effect of Termination. Upon termination of this Agreement for any
reason, nothing herein will 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 will
survive any such termination. LICENSEE and any sublicensee thereof
may, however, after the effective date of such termination, sell its
then existing inventory of LICENSED PRODUCTS, and complete LICENSED
PRODUCTS in the process of manufacture at the time of such
termination and sell the same, provided that LICENSEE will make the
payments to INSTITUTE as required by Article 4 of this Agreement and
will submit the reports required by Article 5 hereof.
13.6 Sublicenses. Upon termination of this Agreement for any reason, any
sublicensee will also terminate, but a sublicensee will have the
right to seek a license from INSTITUTE. INSTITUTE agrees to negotiate
such a license in good faith under reasonable terms and conditions
subject to
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the INSTITUTE'S sole discretion as to whether or not to enter into a
new license agreement.
ARTICLE 14 - PAYMENTS AND NOTICES
----------------------------------
Any payment, notice or other communication pursuant to this Agreement will
be sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it will designate by written notice given to the other party:
In the case of INSTITUTE:
Vice President
The Xxxxxxx Institute
00000 Xxxxx Xxxxxx Xxxxx Xxxx
Xx Xxxxx, XX 00000
In the case of LICENSEE:
President
Targeted Genetics Corporation
0000 Xxxxx Xxx, Xxxxx 000
Xxxxxxx, XX 00000
ARTICLE 15 - MISCELLANEOUS PROVISIONS
-------------------------------------
15.1 Governing Law. This Agreement will be construed, governed,
interpreted and applied in accordance with the laws of the State of
California, USA, except that questions affecting the construction and
effect of any patent will be determined by the law of the country in
which the patent was granted.
15.2 Entirety. 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 will not be subject to any change
or modification except by the execution of a written instrument
subscribed to by the parties hereto.
15.3 Severability. The provisions of this Agreement are severable, and in
the event that any provisions of this Agreement will be determined to
be invalid or unenforceable under any controlling body of the law,
such invalidity or unenforceability will not in any way affect the
validity or enforceability of the remaining provisions hereof.
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15.4 Patent Marking. LICENSEE agrees to mark 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
will be marked in such a manner as to conform with the patent laws
and practice of the country of manufacture or sale.
15.5 No Waiver. The failure of either party to assert a right hereunder
or to insist upon compliance with any term or condition of this
Agreement will not constitute a waiver of that right or excuse a
similar subsequent failure to perform any such term or condition by
the other party.
15.6 No Third Party Beneficiary. The rights set forth in this Agreement
are for the benefit of the parties to this Agreement. No third party
will have any benefits or rights under this Agreement, without the
expressed written approval of both parties to this Agreement.
15.7 Counterparts. This Agreement may be signed in counterparts, and
signatures may be transmitted by facsimile.
15.8 Construction. The words and provisions in the Agreement will be
construed and applied in accordance with the customary and plain
meaning of the words and provisions. Any ambiguity in the
interpretation of this Agreement will not be construed against either
party as the draftsman of this Agreement.
15.9 The INSTITUTE and its agents will maintain in confidence and will not
disclose to any third party or use for any purpose not expressly
authorized by this Agreement, all information provided to the
INSTITUTE or its agents pursuant to Articles 3 and 5 of this
Agreement.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the day
and year set forth below.
THE XXXXXXX INSTITUTE
By: Xxxxx X. Xxxxxxx 3/17/97
---------------------- ---------
Signature Date
-17-
TARGETED GENETICS CORPORATION
By: X. Xxxxxxx Xxxxxx 3/19/97
----------------------- ---------
Signature Date
-18-
APPENDIX A
1. US Patent Application, "Method of Inhibiting Replication of
Hyperproliferative Cells", Serial No. 07/960,112, and continuing application
08/473,399.
2. US Patent Application, Method of Sensitizing Tumor Cells with
Adenovirus E1A", Serial No. 08/301,316.
3. Any US or foreign patent applications and patents covering inventions
conceived and/or reduced to practice in the laboratory of Xx. Xxxxxx Xxxxxx at
the INSTITUTE during the course and term of the Sponsored Research Agreement
between the INSTITUTE and LICENSEE of even date herewith.
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APPENDIX B
----------
Foreign Patent Applications
(Paragraph 6.2)
Foreign countries in which PATENT RIGHTS will be filed, prosecuted and
maintained in accordance with Article 6:
EPO
CANADA
JAPAN
AUSTRALIA
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THE XXXXXXX INSTITUTE
---------------------
Established in 1976 as
LaJolla Cancer Research Foundation
January 7, 1998
Xxxxxxx Xxxxxx, Ph.D.
Corporate Development
Targeted Genetics Corporation
0000 Xxxxx Xxx
Xxxxx 00
Xxxxxxx, XX 00000
re: Amendment to the License Agreement dated March 15, 1997
Dear Xx. Xxxxxx:
This letter is to amend the referenced license agreement between The
Xxxxxxx Institute and Targeted Genetics Corporation. Replacement of Paragraph
4.2(b), with the following allows for a royalty stacking provision previously
omitted from the original agreement.
(b) In the case of NET SALES of LICENSED PRODUCTS by sublicenses, INSTITUTE
will be paid the greater of the running royalties specified in Paragraph 4.2(a)
or [ * ] of the royalties payable by the sublicensee to LICENSE; provided,
however, if there are multiple, stacking royalties payable by sublicensees on
the LICENSED PRODUCTS to third parties, then LICENSEE may reduce the payment to
INSTITUTE on the same proportionate basis as all the other stacking royalties
are reduced, so long as the resulting payment to the INSTITUTE is no less than
the greater of [ * ] of NET SALES of LICENSED PRODUCTS by sublicensees or [ * ]
of the royalties payable by the sublicensees to LICENSEE.
Please acknowledge the amendment of the agreement by signing in the space
provided below, on both copies of this letter, and returning a copy at your
earliest convenience.
[*] Confidential Treatment Requested
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Thank you, in advance, for your efforts in completing this amendment.
Sincerely yours,
Xxxxxxx Xxxxxxxx
Technology Licensing Associate
AGREED TO AND ACCEPTED AGREED TO AND ACCEPTED
The Xxxxxxx Institute Targeted Genetics Corporation
Xxxxx X. Xxxxxxx: Xxxxx X. Xxxxxxx By: Xxxxx X. Xxxxxxx
--------------------------- ---------------------------
Vice President & Chief Administrative Officer Title: Vice President, Finance
------------------------
Date: 1/8/98 Date: 1/14/98
------------------------- ------------------------
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