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XXXXXX XXXXXX PATENT NO. 4,873,191 SUBLICENSE
AGREEMENT BETWEEN DNX AND GTC REGARDING TRANSGENIC
EXPERIMENTAL ANIMALS AND TRANSGENIC MAMMARY PRODUCTION SYSTEMS
This Agreement is made effective this 1st day of February, 1990, by
and between DNX, Inc., a company duly formed and existing under the laws of the
State of Ohio, with its principal offices at 000X Xxxxxxx Xxxx Xxxx, Xxxxxxxxx
Xxxxxxxxx Center, Princeton, New Jersey 08540 (hereinafter referred to as
"Sublicensor"); and Genzyme, Inc., a company duly organized and existing under
the laws of the State of Delaware, with its principal offices at 00 Xxxxxxxx
Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as "Sublicensee");
WITNESSETH:
WHEREAS, Sublicensor, pursuant to the terms of its License Agreement
with Ohio University, is an exclusive licensee, subject only to the reserved
research rights of Ohio University and the statutory rights of the United States
as per earlier contracts between Xxxxxxx Laboratories and the National
Institutes of Health, of United States Letters Patent No. 4,873,191 pertaining
to a method of obtaining genetic transformation of a zygote and the embryo and
mature organism which result therefrom, and has the full right to sublicense
that patent;
WHEREAS, Sublicensor desires to sublicense United States Letters
Patent No. 4,873,191 for certain uses by Sublicensee in connection with the
development of certain kinds of transgenic animals and certain of Sublicensee's
research and development activities, and Sublicensee desires to accept such
sublicense upon the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the premises and mutual covenants
hereinafter set forth the parties hereto hereby agree as follows:
1. DEFINITIONS.
(a) "Party" shall mean Sublicensor or Sublicensee and when used in
plural shall mean Sublicensor and Sublicensee.
(b) "Affiliate" or "Affiliates" shall mean, with respect to any
entity, any entity that controls, is controlled by or is under common control
with such entity; and "control" for purposes of this definition shall mean the
possession of the power to direct or cause the direction of the management and
policies of an entity, whether through the ownership of voting stock, by
contract or otherwise. In the case of a corporation, "control" shall mean the
direct or indirect ownership of more than fifty percent (50%) of the outstanding
voting stock.
(c) The "`191 Patent" shall mean United States Letters Patent No.
4,873,191, issued October 10, 1989, and any continuation, continuation-in-part,
extension, division, substitution or addition to such patent and all reissues
thereof.
(d) "Patented Technology" shall mean any and all processes or methods
which are covered by one or more issued and maintained claims of the `191
Patent.
(e) "Transgenic Animal" shall mean any non-human mammal developed by,
through or with the use of the Patented Technology, including, without
limitation, any descendent of such mammal which has inherited genetic material
which was originally transferred to an ancestor by use of the Patented
Technology, and any zygotes or embryos, or cells or tissues of or derived from
such mammal or descendent.
(f) "Transgenic Experimental Animal" shall mean a Transgenic Animal
of one of the following species: mouse, rat, rabbit, hamster, or guinea pig.
(g) "Transgenic Production System" shall mean a Transgenic Animal
which is used to produce at a commercial scale a product that is recovered from
the Transgenic Animal, or any cells, tissue, or fluid of or derived from the
Transgenic Animal (including, without limitation, its milk, mammary cells and
tissue, urine, or hematopoetic cells, tissues, and fluids) whether or not
recovery and use of the product in commerce involves or requires further
processing, culturing, purification, manipulation, formulation, or other such
steps.
(h) "Transgenic Mammary Production System" shall mean a Transgenic
Production System in which the product is produced in the mammary gland of, or
mammary cells derived from, the Transgenic Production System or is recovered
from the milk of the Transgenic Production System.
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(i) "Production Genetic Material" shall mean genetic material which
is designed and engineered in a manner such that when introduced into and
expressed in a mammal results in a Transgenic Animal that can reasonably be
employed as a Transgenic Production System.
(j) "Mammary Production Genetic Material" shall mean Production
Genetic Material which is designed and engineered in such a manner that when
introduced into and expressed in a mammal results in a Transgenic Production
System that can reasonably be employed as a Transgenic Mammary Production
System.
(k) "Chromosomal Genetic Material" shall mean a whole chromosome or
fragment thereof or recombinant genetic material greater than 100 kilobases in
length.
(l) "Transomic Animal" shall mean a Transgenic Animal which was
created or developed by using the Patented Technology to transfer Chromosomal
Genetic Material.
(m) "Transgenic Mammary Product" shall mean the product produced by
or recovered from a Transgenic Mammary Production System and shall include both
Transgenic Mammary Bulk Product and Transgenic Mammary End Product.
(n) "Transgenic Mammary Bulk Product" shall mean a Transgenic Mammary
Product which is intended for further formulation, processing, chemical
transformation or formatting by a manufacturer, formulator or the like prior to
its sale to the Ultimate Consumer.
(o) "Transgenic Mammary End Product" shall mean a Transgenic Mammary
Product which is sold in a form and format for utilization by the Ultimate
Consumer and is not intended or marketed for further formulation, processing,
chemical transformation or reformatting.
(p) "End Product Approval Date" shall mean the date on which a
Transgenic Mammary End Product is approved for sale in the United States by the
relevant governmental agency of the United States of America. If, with respect
to any given Transgenic Mammary End Product, no such approval is required in the
United States of America, the date of first sale in the United States shall be
considered to be the End Product Approval Date.
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(q) "Ultimate Consumer" shall mean that person or entity whose use of
a Transgenic Mammary Product results in its destruction or loss of activity or
loss of value.
(r) "Net Sales" shall mean the gross receipts from sales of
Transgenic Mammary End Product, whether by Sublicensee, Affiliate of
Sublicensee, or a third party, but shall not include the following: (i) any
resales of Transgenic Mammary End Products subsequent to their first or initial
sales, except that when a Transgenic Mammary End Product is initially sold by
Sublicensee to an Affiliate thereof, or amongst Affiliates thereof, the first or
initial sale shall be deemed to be the first instance in which the Transgenic
Mammary End Product is sold to a third party that is a non-Affiliate of
Sublicensee; (ii) any common carrier charge for transportation of any Transgenic
Mammary End Product to the extent included in the invoice price as a separately
stated charge; (iii) credit given or allowance made by Sublicensee on account of
returns, replacements, defects or the renegotiation of the invoice price for the
product sold; (iv) any sales, excise, use or ad valorem taxes and any direct
governmental charges assessed on the manufacture, sale or delivery of any
Transgenic Mammary End Product and included in such invoice as a separately
stated charge; and (v) any insurance, packing charges, rate discounts, normal
customary and trade, cash and quantity discounts actually allowed, or
commissions paid to agents to the extent they are separately stated in the
invoice; PROVIDED, HOWEVER, that the amount excluded from Net Sales under
clauses (ii), (iii), (iv) and (v) shall not exceed, in the aggregate, 5% of the
gross receipts from such sales. Transgenic Mammary End Products are considered
sold hereunder when billed out or, if not billed out, when shipped or mailed or
otherwise delivered, or when paid for if not billed out but paid for before
delivery.
(s) "Adjustment" shall have the meaning assigned to it in Section
3(c) hereof.
2. GRANT OF SUBLICENSE.
(a) THE GRANT. Subject to the fulfillment by Sublicensee of all the
terms and conditions of this Agreement, Sublicensor hereby grants to Sublicensee
and Sublicensee hereby accepts a non-exclusive, non-transferable sublicense
under the `191 Patent to use the Patented Technology during the term of this
Agreement as described below in clauses (i) and (ii), without the right to grant
further sublicenses except to Affiliates of Sublicensee:
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(i) DEVELOPMENT OF TRANSGENIC MAMMARY PRODUCTION SYSTEMS.
Sublicensee may use the Patented Technology to transfer Mammary
Production Genetic Material to develop Transgenic Mammary Production
Systems and may use, sell or otherwise commercially exploit the
Transgenic Mammary Production Systems thereby developed, but only
insofar as the Transgenic Mammary Production Systems are to be used
for the purpose of making Transgenic Mammary Products; and
(ii) DEVELOPMENT OF TRANSGENIC EXPERIMENTAL ANIMALS.
Sublicensee may use the Patented Technology under this Agreement to
develop Transgenic Experimental Animals (except Transomic Animals or
Transgenic Production Systems) for use by Sublicensee, and only
Sublicensee, in testing or evaluating products which are manufactured
or being developed by Sublicensee, but Sublicensee is not sublicensed
to sell, lease, rent, barter away or otherwise transfer Transgenic
Experimental Animals so developed. To the extent, however, that a
Transgenic Experimental Animal developed by Sublicensee constitutes a
Transgenic Mammary Production System, Sublicensee's rights in
connection therewith shall be governed by clause (i) of this subpart
(a).
(b) LIMITED GRANT. The sublicense granted to Sublicensee pursuant to
this Agreement is limited to the specific rights under the `191 Patent specified
above in subpart (a), and shall not be construed to include uses or other rights
which are not specified above. Without in any way limiting the scope of rights
which are not subject to this Agreement, the following are listed as examples of
uses and other rights under the `191 Patent which are NOT sublicensed to
Sublicensee under this Agreement: (i) use of the Patented Technology to transfer
Production Genetic Material other than Mammary Production Genetic Material; (ii)
use of the Patented Technology to transfer Chromosomal Genetic Material that
does not constitute Mammary Production Genetic Material; (iii) the sale, lease,
rental, bartering away or other transfer of any Transgenic Animals or any other
products of the Patented Technology, except as provided with respect to
Transgenic Mammary Production Systems in subpart (a) above; (iv) use of the
Patented Technology to develop a Transgenic Animal, other than a Transgenic
Mammary Production System, for use in the testing or evaluation of products
manufactured or developed by a party other than Sublicensee; (v) use of the
Patented Technology as a service pursuant to which a Transgenic Animal, other
than a Transgenic Mammary Production System, is developed for a third party; and
(vi) use of the Patented Technology to develop a Transgenic Animal other than a
Transgenic Experimental Animal or Transgenic Mammary Production System. It shall
be
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deemed a material breach of this Agreement for Sublicensee to use or exploit the
Patented Technology other than as provided in subpart (a) above or as may be
permitted by law.
3. FEES AND TERM.
(a) TERM. This Agreement shall come into full force and effect as of
its effective date and shall continue in full force and effect until March 1,
1993. This Agreement shall terminate on March 1, 1993, unless renewed as
provided below in subpart (c).
(b) FEES. (i) On or before the effective date, Sublicensee shall
pay to Sublicensor a non-refundable fee of $50,000. (ii) On or before
February 15, 1991, Sublicensee shall pay to Sublicensor a non-refundable fee
of $20,000 plus an amount equal to (1) the percentage increase in the United
States Bureau of Labor Statistics' Consumer Price Index for Urban Wage
Earners and Clerical Workers (hereinafter, "CPI") for 1990, multiplied by (2)
$20,000. (iii) On or before February 15, 1992, Sublicensee shall pay to
Sublicensor a non-refundable fee equal to the total fee paid pursuant to
clause (ii) above plus an amount equal to (1) the percentage increase in the
CPI for 1991, multiplied by (2) the total fee paid pursuant to clause (ii)
above.
(c) RENEWAL. Sublicensee shall have the right to renew this Agreement
for a renewal term of one (1) year by paying Sublicensor, on or before February
15, 1993, a renewal fee equal to the total fee paid pursuant to subpart (b)(iii)
above plus an Adjustment determined as provided below. The renewal term shall
begin on March 2, 1993. This Agreement may be so renewed by Sublicensee for
additional one (1) year renewal terms in each succeeding year by payment to
Sublicensor of an amount equal to the last renewal fee paid by Sublicensee plus
the Adjustment on or before the February 15 immediately preceding such
additional renewal term, until the `191 Patent expires. The amount of the
"Adjustment" for a renewal term shall be equal to the product of (i) the
percentage increase in the CPI for the calendar year immediately preceding the
year in which such renewal term commences, multiplied by (ii) the amount of the
fee last paid by Sublicensee pursuant to this Section 3 (including the amount of
any Adjustment included therein). It is the intent of Sublicensor to notify
Sublicensee, on or before the February 1 immediately preceding the commencement
of each renewal term, of the amount of the renewal fee due pursuant to
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this subpart (c). This Agreement shall automatically terminate fifteen (15) days
after any renewal fee is due if Sublicensee does not exercise its right to renew
this Agreement pursuant to this subpart (c) prior to the commencement of any
renewal term.
4. ROYALTIES.
(a) APPROVAL DATE ROYALTY. With respect to each Transgenic Mammary
End Product, within thirty (30) days of its End Product Approval Date,
Sublicensee shall pay Sublicensor a non-refundable lump sum royalty of
$250,000. The Approval Date Royalty, though non-refundable, shall be
creditable against future earned royalties based on subsequent Net Sales of
that Transgenic Mammary End Product.
(b) EARNED ROYALTIES. Sublicensee shall pay to Sublicensor earned
royalties for production and sale of Transgenic Mammary End Products
developed through its use, or its permitted sublicensees' use, of the
Patented Technology. Earned royalties shall be based on all Net Sales of
Transgenic Mammary End Products, regardless of whether such sale is made by
Sublicensee itself, by an Affiliate of Sublicensee, or by a third party, and
regardless of whether such Transgenic Mammary End Product has been approved
for sale by a relevant governmental agency in the country in which it was
sold. The earned royalty rate shall be 0.5% for Net Sales made in the United
States through October 10, 1999, and shall be 0.75% for Net Sales made in the
United States thereafter. The earned royalty rate shall be 0.25% for Net
Sales made outside of the United States.
(c) STATEMENTS. Sublicensee shall render to Sublicensor written
statements setting forth the gross sales and Net Sales for each Transgenic
Mammary End Product subject to royalties pursuant to this Agreement, and which
also set forth the number, or quantity, and description of the Transgenic
Mammary End Products sold, and the calculation of any royalty payments due to
Sublicensor. Sublicensee shall also render written statements setting forth the
number, description and purchasers of any Transgenic Mammary Production Systems
sold or transferred by Sublicensor. Such statements shall be rendered quarterly,
commencing with the first quarter in which Transgenic Mammary Products or
Transgenic Mammary Production Systems are sold or transferred. Each statement
shall be rendered within thirty (30) days after the close of the period to which
the statement relates.
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(d) INSPECTIONS. Sublicensor shall have the right to inspect and
examine the books and records of Sublicensee, and the books and records of
Sublicensee's Affiliates, relating to the sale or transfer of Transgenic Mammary
Products or Transgenic Mammary Production Systems. Inspections pursuant to this
subpart (d) shall be made no more frequently than annually upon reasonable
notice to Sublicensee, shall be made during regular business hours and without
undue interruption of the operations of Sublicensee or its Affiliates, and shall
be performed only by an independent auditing firm of internationally recognized
standing or otherwise reasonably acceptable to Sublicensee. Inspection of the
books and records relating to a statement shall be solely for the purpose of
verifying the accuracy of such statement and the determination of Net Sales for
Transgenic Mammary End Products and the sale, transfer or disposition of
Transgenic Mammary Production Systems. The cost of such inspections shall be
borne by Sublicensor; PROVIDED, HOWEVER, that if the results of any inspection
reveal that books and records were not kept according to this Agreement, or that
an underpayment of at least 5% in any quarterly period has occurred, all
expenses for such inspection shall be borne by Sublicensee alone. Sublicensor
shall obtain the written agreement of each Person performing any such inspection
for Sublicensor not to disclose to Sublicensor or to any other Persons or use
any information contained in such books and records except for the purposes of
enabling Sublicensor to enforce its rights under this Agreement. Any Person
performing such inspection shall agree as a precondition to performing any audit
hereunder to execute a confidentiality agreement containing terms reasonably
acceptable to Sublicensee.
(e) INSPECTION OF THIRD PARTIES' BOOKS. Sublicensee, by itself or
through its Affiliates, shall covenant and agree with any third party to whom
Sublicensee or its Affiliates sell or transfer Transgenic Mammary Production
Systems or Transgenic Mammary Bulk Products that such third party shall provide
statements to Sublicensor and shall permit Sublicensor to inspect and examine
the books and records of such third party pursuant to substantially the same
terms and conditions provided for above in subparts (c) and (d) with respect to
Sublicensee's statements and the inspection of Sublicensee's books. Sublicensee,
by itself or through its Affiliates, shall further covenant and agree with any
such third party that, in the event the third party sells or otherwise transfers
to a transferee Transgenic Mammary Production Systems or Transgenic Mammary Bulk
Products, the third party will obtain an agreement with any such transferee
providing for statements to Sublicensor and the right of Sublicensor to inspect
the books and records of any such transferee pursuant to substantially the same
terms and
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conditions provided above in subparts (c) and (d) with respect to statements of
Sublicensee and the inspection of Sublicensee's books.
5. LIABILITY AND INDEMNIFICATION.
Sublicensee shall defend, indemnify and hold Sublicensor harmless
against any and all liability, damage, loss, cost or expense resulting from any
third party's claim, suit or other action arising out of or based on or
resulting from Sublicensee's use of the Patented Technology; provided, however,
that upon the filing of any such claim or suit against Sublicensor, Sublicensor
shall promptly notify Sublicensee and permit Sublicensee, at Sublicensee's cost,
to handle and control such claim or suit and shall cooperate in the defense
thereof.
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6. PATENT INFRINGEMENT.
(a) NOTIFICATION OF INFRINGEMENT. Sublicensee shall notify
Sublicensor of any infringement by third parties of the `191 Patent to the
extent that Sublicensee becomes reasonably aware of any such infringement, and
shall provide Sublicensor with the available nonconfidential evidence, if any,
of such infringement. If at any time any third party shall, by making, using or
selling a Transgenic Mammary Production System or Transgenic Mammary Product,
infringe the `191 Patent to such an extent that Sublicensee, or one of
Sublicensee's sublicensees, is placed at a substantial commercial disadvantage
with respect to its operations under this Agreement, and Sublicensee so notifies
Sublicensor in writing, furnishing prima facie evidence of the infringement and
substantial commercial disadvantage, and Sublicensor reasonably agrees that the
activity of the third party constitutes infringement and causes substantial
commercial disadvantage, and, further, if Sublicensor does not within one
hundred eighty days after receipt of such notice (i) xxxxx the infringement by
licensing or otherwise, or (ii) bring suit against at least one infringer, then
Sublicensee shall be entitled to pay into an interest-bearing escrow account any
fees and royalties due thereafter under this Agreement until the infringement
ceases, or until one of the acts specified in clause (i) or (ii) above is
effected by Sublicensor, whichever shall occur first. If, within four (4) years
of Sublicensee's notice of third party infringement, the infringement ceases or
is abated or Sublicensor files said suit, all sums paid into escrow and all
interest earned thereon shall be promptly paid to Sublicensor; otherwise, such
sums shall be paid to Sublicensee on the date four (4) years after the date of
Sublicensee's notice of third party infringement, or upon termination of this
Agreement, whichever shall occur first.
(b) ENFORCEMENT OF LICENSED PATENTS. Sublicensor shall retain the
sole right, at its sole discretion, to enforce the `191 Patent against third
party infringers.
(c) NO WARRANTY OF NON-INFRINGEMENT. Nothing in this Agreement shall
be construed as a representation made or warranty given by Sublicensor that the
practice by Sublicensee of the license granted hereunder will not infringe the
patent rights of any third party.
7. FINDING OF INVALIDITY.
(a) CHALLENGE BY THIRD PARTY. In the event that the `191 Patent is
challenged by a third party and invalidated in any court of the United States or
in any proceedings before the United States Patent and Trademark
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Office, Sublicensee shall be entitled to pay into an escrow account all fees and
royalty payments due during the pendency of an appeal or other challenge to any
such finding of invalidity. If Sublicensor does not appeal or otherwise
challenge the finding of invalidity, or if Sublicensor exhausts and loses all
appeals or challenges available to it, all of the funds in the escrow account,
including all interest accrued thereon, shall be returned to Sublicensee. If the
finding of invalidity is reversed or otherwise overturned either on appeal or in
some other challenge by Sublicensor to the finding of invalidity (including, for
example, if it is overturned by remand or by office action of an examiner), all
of the funds in the escrow account, including all interest accrued thereon,
shall be immediately paid to Sublicensor.
(b) CHALLENGE BY SUBLICENSEE. In the event that the validity or
enforceability of the `191 Patent is challenged by Sublicensee, subpart (a)
above shall not apply and Sublicensee shall remain obligated to pay to
Sublicensor any fees or royalty amounts due. Any payment by Sublicensee of fees
or royalty amounts due Sublicensor under this Agreement to any escrow account or
third party, other than as provided in subpart (a) above or in Section 6(a)
above, or by subsequent agreement between the Parties, shall be deemed a
material breach of this Agreement.
8. TERMINATION.
(a) TERMINATION FOR BREACH. Sublicensor shall have the right to
terminate this Agreement and the sublicense granted hereunder upon thirty (30)
days' written notice to Sublicensee for Sublicensee's material breach of this
Agreement if Sublicensee has failed to cure such breach within thirty (30) days
of notice thereof.
(b) INSOLVENCY. If, at any time, either Party shall file in any court
pursuant to any statute of any individual state or country, a petition in
bankruptcy, insolvency or for reorganization or for an agreement among creditors
or for the appointment of a receiver or trustee of the Party or of its assets,
or if either Party proposes a written agreement of composition or extension of
its debts, or if either Party shall be served with an involuntary petition
against it filed in any insolvency proceeding, and such petition shall not be
dismissed within sixty (60) days after the filing thereof, or if either Party
shall propose or be a Party to any dissolution or liquidation, or if either
Party shall make an assignment for the benefit of creditors, THEN, in the event
of any of the above, only the other Party shall have the right to terminate this
Agreement.
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(c) TERMINATION BY SUBLICENSEE. Sublicensee shall have the right to
terminate this Agreement and the sublicense granted hereunder for any reason
whatsoever upon thirty (30) days' written notice to Sublicensor.
(d) TERMINATION UPON EXPIRATION OF THE `191 PATENT. Unless earlier
terminated, this Agreement and the sublicense granted hereunder shall terminate
on the last date of expiration of the `191 Patent.
(e) EFFECT OF TERMINATION. Termination of this Agreement in whole or
in part for any reason shall not relieve Sublicensee of its obligations to pay
all fees and royalties that shall have accrued hereunder prior to the effective
date of termination.
9. NO TRADEMARK OR TRADE NAME SUBLICENSE.
Nothing contained herein shall be construed to grant either Party the
right to use, for advertising, publicity or other commercial purposes, the name
or any trade name or trademark, or contraction, abbreviation or simulation
thereof, of the other Party. Notwithstanding the terms of this Section 9, the
Parties shall be permitted to publicize this Agreement and to notify the public,
by press release or otherwise, of the fact that the Parties have entered into
this Agreement and the terms hereof; provided, however, that the Party issuing
the press release or otherwise shall provide a copy thereof to the other Party
and shall provide the other Party an opportunity to comment on the press release
or otherwise.
10. LIMITATION ON ASSIGNMENT BY SUBLICENSEE.
Neither this Agreement nor any interests hereunder shall be
assignable by Sublicensee without the written consent of Sublicensor; provided,
however, that Sublicensee may assign this Agreement to any corporation or entity
with which it may merge or consolidate, or to which it may transfer
substantially all of its assets or all of its assets to which this Agreement
relates without obtaining the consent of the Sublicensor. Prior to execution of
any assignment by Sublicensee pursuant to this paragraph, Sublicensee shall
notify Sublicensor in writing of Sublicensee's intent to enter into such
assignment, and, upon execution thereof, shall provide Sublicensor with a copy
of such assignment.
11. SUBLICENSOR'S RIGHT OF ASSIGNMENT.
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Sublicensor shall have the right and power to assign this Agreement
to any Affiliates of Sublicensor or to any third parties, including the right
and power to assign to the Ohio University all rights, title and interest of
Sublicensor in, to and under this Agreement. In the event of assignment by
Sublicensor, the assignee of Sublicensor shall be subrogated to the rights and
liabilities of Sublicensor under this Agreement.
12. MORE FAVORABLE TERMS.
(a) SUBLICENSEE'S ELECTION. Sublicensor intends that all sublicenses
under the `191 Patent which pertain solely to both of the specific grants set
forth in subpart (a)(i) and (ii) of Section 2 of this Agreement, or which
pertain solely to the specific grant set forth in subpart (a)(i) of Section 2 of
this Agreement, and which do not include any provisions for grant-backs or other
technology transfers, are to be essentially similar to the terms of this
sublicense with respect to earned royalties and the Approval Date Royalty, as
provided in Section 4(a) and (b) of this Agreement. Sublicensor will advise
Sublicensee as to those terms which are different in such other sublicense
agreements, whereupon Sublicensee may determine whether such terms are more
favorable than those granted herein. Sublicensee shall, at its election, be
entitled upon written notice to Sublicensor to have this Agreement amended to
substitute all terms of such more favorable sublicense for all terms of this
Agreement as of the date upon which such more favorable sublicense shall have
become effective. Such amendment shall, as to royalties and fees, apply only as
to prospective royalties and fees.
(b) ALL TERMS ADOPTED. In the event Sublicensee chooses to exercise
its option under subpart (a) above, Sublicensee agrees that it shall also accept
and be bound by the same terms and conditions for the benefit of Sublicensor as
those which are a part of or shall accompany such other sublicense granted by
Sublicensor to a third party.
13. APPLICABLE LAW.
This Agreement shall be deemed to have been entered into and shall be
construed and enforced in accordance with the laws of the state of Ohio and in
accordance with the laws of the United States of America.
14. JURISDICTION.
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If any dispute arises in connection with the interpretation of and/or
performance under this Agreement, it is expressly understood and agreed by the
Parties hereto that they do hereby submit to and shall be subject to the
jurisdiction of the appropriate federal and/or state courts located in the State
of Ohio in the United States of America.
15. RELATIONSHIP OF THE PARTIES.
Nothing in this Agreement is intended or shall be deemed to
constitute a partnership, agency, employer-employee, or joint venture
relationship between the Parties.
16. FURTHER ACTS AND INSTRUMENTS.
Each Party hereto agrees to execute, acknowledge and deliver such
further instruments and to do all such other acts as may be reasonably necessary
or appropriate to effect the purpose and intent of this Agreement.
17. ENTIRE AGREEMENT.
This Agreement constitutes and contains the entire agreement of the
Parties and supersedes any and all prior negotiations, correspondence,
understandings and agreements between the Parties respecting the subject matter
hereof. This Agreement may be amended or modified or one or more provisions
thereof waived only by a written instrument signed by the Parties.
18. SEVERABILITY.
In the event any one or more of the provisions of this Agreement
should for any reason be held by any court or authority having jurisdiction over
this Agreement or any of the Parties hereto to be invalid, illegal or
unenforceable, such provision or provisions shall be validly reformed to as
nearly approximate the intent of the Parties as possible and if unreformable,
the Parties shall meet to discuss what steps should be taken to remedy the
situation; elsewhere, this Agreement shall not be affected.
19. CAPTIONS.
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The captions to this Agreement are for convenience only and are to be
of no force or effect in construing and interpreting the provisions of this
Agreement.
20. DISCLAIMER OF WARRANTIES.
EXCEPT AS OTHERWISE EXPRESSLY PROVIDED HEREIN, THE PARTIES EXPRESSLY
DISCLAIM ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NONINFRINGEMENT, OR PATENT VALIDITY.
21. NOTICES.
Any notice, request, approval or other document required or permitted
to be given under this Agreement shall be in writing and shall be deemed to have
been sufficiently given when delivered in person, transmitted by telex,
telecopier, telegraph or three days after being deposited in the United States
mail, postage prepaid, for mailing by first class, certified or registered mail,
return receipt requested, addressed as follows:
If to Sublicensee, addressed to:
Genzyme, Inc.
Xxx Xxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxx X. Xxxxxxxxx
Executive Vice President
Telefax: 000-000-0000
If to Sublicensor, addressed to:
DNX, Inc.
000X Xxxxxxx Xxxx Xxxx
Xxxxxxxxx Xxxxxxxxx Center
Xxxxxxxxx, Xxx Xxxxxx 00000
Attention: Vice President - Corporate Development
Telefax: 000-000-0000
or to such other address or addresses as may be specified from time to time
in a written notice.
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IN WITNESS WHEREOF, Sublicensor and Sublicensee have caused this
Agreement to be executed by their duly authorized representatives.
GENZYME, INC.
By:
-------------------------------------------
Name: Xxxxxx X. Xxxxxxxxx
Title: Executive Vice President
Date: February 1, 1990
DNX, INC.
By:
-------------------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: Vice President - Corporate Development
Date: 1/29/90
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