PATENT SUBLICENSE AGREEMENT
Exhibit
10.30
This
Patent Sublicense Agreement (“Sublicense
Agreement”) is entered into and made as of April 27, 2009 (“Effective Date”)
between AVAX Technologies, Inc. (“AVAX”), a New York corporation having a place
of business at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxxxx, Xxxxxxxxxxxx
00000, and Cancer Treatment Centers of America, Inc. (“CTCA”), an Illinois
corporation having a place of business at 0000 Xxxxxxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxx 00000.
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I.
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RECITALS
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1.1 AVAX
is a development stage biotechnology company engaged in the research,
development and future commercialization of vaccine therapies and other
technologies for the treatment of cancer.
1.2 CTCA
is a cancer treatment company focusing on the research and development of cancer
treatments, and on the treatment and individual needs of cancer
patients.
1.3 AVAX
is a successor-in-interest of Xxxxxx Laboratories, Inc. (“Xxxxxx”), formerly a
Delaware Corporation having a place of business at 000 Xxxx Xxxxxx, Xxx Xxxx, XX
00000, with respect to a License Agreement effective November 20, 1995 between
Xxxxxx Xxxxxxxxx University (“TJU”) and Xxxxxx (Ex. A). By virtue of the License
Agreement and AVAX’s status as successor-in-interest, AVAX is the worldwide
exclusive licensee, with right to sublicense all Patent Rights as defined in
Paragraph 1.02 of the License Agreement.
1.4 CTCA
desires and agrees to acquire a nonexclusive sublicense of the Patent Rights set
forth in the License Agreement (Ex. A) under the terms and conditions set forth
in this Sublicense Agreement, and AVAX desires and agrees to grant the
same.
1.5 CTCA
and AVAX are parties to a Production Agreement effective February 20, 2007 (Ex.
B) by which AVAX has agreed to perform certain obligations for CTCA in return
for funding and compensation
by CTCA.
1.6 In
consideration of the foregoing premises and mutual covenants set forth herein,
AVAX and CTCA (collectively “Parties”) hereby agree as set forth
below.
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II.
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DEFINITIONS
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For
purposes of this Sublicense Agreement, the terms set forth below shall have the
indicated definitions and meanings.
2.1
“Affiliate” shall mean, with respect to either Party, any Entity which directly
or indirectly controls, is controlled by, or is under common control with the
Party. A Party shall be regarded as in control of an Entity if it directly or
indirectly possesses the power to direct or cause the direction of the
management and policies of the Entity. An Entity shall be regarded as in control
of a Party if it directly or indirectly possesses the power to direct or cause
the direction of the management and policies of the Party.
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2.2
“Entity” shall mean an individual, corporation, partnership, trust, association,
company, partnership, join venture, pool, syndicate, sole proprietorship,
unincorporated organization, governmental authority, or any other affiliation
not specifically listed herein.
2.3
“License Agreement” refers to the License Agreement between TJU and Xxxxxx
referenced in Paragraph 1.3 of this Sublicense Agreement and attached as Ex.
A.
2.4
“Patent Rights” shall have the same meaning as set forth in Paragraph 1.02 of
the attached License Agreement (Ex. A). The aforementioned Paragraph 1.02 is
incorporated by reference in its entirety.
2.5
“Production Agreement” refers to the Production Agreement between CTCA and AVAX
referenced in Paragraph 1.5 of this Sublicense Agreement and attached as Ex.
B.
2.6
“Products” shall have the same meaning as set forth in Paragraph 1.05 of the
attached License Agreement (Ex. A). The aforementioned Paragraph 1.05 is
incorporated by reference in its entirety.
2.7
“Term” refers to the term of this Sublicense Agreement as set forth in Section
IV below.
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III.
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REPRESENTATION
AND WARRANTIES
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3.1 AVAX
represents and warrants that it is duly organized, validly existing and in good
standing under the laws of New York, and has the power, authority and legal
right to carry on its business as it is now being conducted. AVAX further
represents and warrants to CTCA each of the following: (a) that the License
Agreement has been continuously effective since its execution and that it
remains in effect as of the date hereof; (b) that AVAX has full legal right to
grant the Sublicense granted hereunder pursuant to the License Agreement; (c)
that the Sublicense granted hereunder shall provide CTCA with the right to
develop and manufacture vaccines for use on CTCA’s patients; (iv) that AVAX has
not violated the terms of the License Agreement; and (v) that execution and
delivery of this Sublicense Agreement will not violate the terms of the License
Agreement.
3.2 CTCA
represents and warrants that it is duly organized, validly existing and in good
standing under the laws of Illinois, and has the power, authority and legal
right to carry on its business as it is now being conducted.
3.3 AVAX
and CTCA each represent and warrant that it has the power, authority and legal
right to enter into this Sublicense Agreement and to perfoun its obligations
under this Sublicense Agreement, and has taken all necessary action to authorize
the execution and delivery of this Sublicense Agreement and the performance of
its obligations. AVAX and CTCA each represent and warrant that this Sublicense
Agreement has been duly executed and delivered on behalf of itself and
constitutes a legal, valid and binding
contract of such Party, enforceable against such Party in accordance with its
terms herein.
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3.4 AVAX
and CTCA each represent and warrant that, if applicable, all necessary consents,
approvals and authorization of governmental authorities and other Entities
required to be obtained by such Party in connection with this Sublicense
Agreement have been obtained.
3.5 AVAX
and CTCA each represent and warrant that the execution and delivery of this
Sublicense Agreement and the performance of such Party’s obligations under this
Sublicense Agreement a) to the knowledge of such Party, do not conflict with or
violate any requirement of any applicable laws and regulations, and b) do not
conflict with, or constitute a default under any contractual obligation of such
Party.
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IV.
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GRANT
OF SUIBLICENSE
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4.1 AVAX
grants CTCA a limited non-exclusive sublicense in the Patent Rights. This
sublicense includes the rights to develop, make, have made, use, sell, offer to
sell and import Products and to grant the purchaser of such Products the right
to use such purchased Products in accordance with the Patent Rights, subject to
the limitations set forth in Paragraphs 4.2-4.4 below.
4.2 CTCA
may implement the Patent Rights in connection with operations of a laboratory
operated by CTCA, an Affiliate of CTCA, a subcontractor of CTCA, and/or a
subcontractor of an Affiliate of CTCA. The operations of any such laboratory may
include the research, development, production, supply and/or sale of Products
for use in treating patients at hospitals and other Entities that are owned or
controlled by CTCA or an Affiliate of CTCA. CTCA may not implement the Patent
Rights in connection with the operations of any other laboratory.
4.3 CTCA
may implement the Patent Rights in connection with the any production of
vaccines to be supplied, sold or otherwise used to treat patients at hospitals
and other Entities that are owned or controlled by CTCA or an Affiliate of CTCA.
CTCA may not implement the Patent Rights in connection with the production of
vaccines to be supplied, sold or otherwise used by any other
Entity.
4.4 CTCA
may not implement the Patent Rights to develop Products to be supplied, sold or
licensed to, or otherwise used on patients of any Entity that is not owned or
controlled by CTCA or an Affiliate of CTCA.
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V.
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TERM
OF SUBLICENSE
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5.1 The
Term of this Sublicense Agreement shall commence on the Effective Date and shall
expire on the earlier of the following: (a) the expiration date of the last to
expire of the Patent Rights; (b) the first date on which AVAX (or a successor in
interest) has a commercial sale of an ovarian vaccine product that it has
developed based on the Patent Rights; and (c) CTCA and AVAX entering into a
revised Production Agreement which terminates the Sublicense.
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5.2 The
expiration dates in Paragraph 5.1 of this Sublicense Agreement are subject to
TJU’s right to terminate as set forth in Article IX of the License Agreement
(Ex. A).
5.3 CTCA
may terminate this Sublicense Agreement at any time for any reason, or for no
reason, by giving one-hundred twenty (120) days advance written notice of such
termination to AVAX and/or TJU.
5.4 The
parties may terminate this Sublicense Agreement at any time for any reason, or
for no reason, if both Parties agree in writing to such
termination.
5.5
Termination of this Sublicense Agreement shall not relieve either Party of
obligations accruing before the effective date of the termination.
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VI.
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ROYALTIES
AND NOTIFICATION OF TJU
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6.1 For
all Products to be supplied by AVAX to CTCA pursuant to the Production Agreement
(Ex. B), the compensation to be paid by CTCA will be the same as set forth in
the Production Agreement and no additional royalty or other compensation shall
be owed to AVAX under this Sublicense Agreement. AVAX shall be solely
responsible for any royalties or other compensation owed to TJU under Article
III of the License Agreement (Ex. A).
6.2 For
all products made by or on behalf of CTCA, an Affiliate of CTCA, a subcontractor
of CTCA and/or a subcontractor of an Affiliate of CTCA to make up for any
shortfall in the Products supplied by AVAX to CTCA under the Production
Agreement (Ex. B), no royalty shall be owed from CTCA to AVAX. AVAX shall be
solely responsible for any royalties or other compensation owed to TJU under
Article III of the License Agreement (Ex. A). CTCA shall keep and maintain
complete and accurate records of all such Products that are not supplied by AVAX
or an Affiliate of AVAX.
6.3 AVAX
shall notify TJU of the existence of this Sublicense Agreement as required under
the terms of the License Agreement (Ex. A). Notwithstanding the foregoing,
failure of AVAX to comply with the requirements of the prior sentence shall in
not invalidate the Sublicense, and CTCA shall have the right to provide such
notification to TJU.
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VII.
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MISCELLANEOUS
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7.1 This
Sublicense Agreement constitutes the entire understanding between the Parties
with respect to the obligations of the Parties, and supersedes all prior
agreements, understandings, writings and discussions between the Parties
relating to the subject matter of this Sublicense Agreement.
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7.2 This
Sublicense Agreement may be amended and any of its terms or conditions waived
only by a written instrument executed by the Parties. The failure of either
Party at any time or times to require performance of any provision shall in no
manner affect its right at a later time to enforce the same. No waiver by either
Party of any condition or term in any one or more instances shall be construed
as a further or continuing waiver of such condition or term or of any other
condition or term.
7.3 This
Sublicense Agreement shall be binding upon, inure to the benefit of and be
enforceable by the Parties and their respective successors and
assignees.
7.4 This
Sublicense Agreement shall be governed by and interpreted according to the laws
of the State of Illinois. Any claim or controversy shall be adjudicated in an
appropriate Court located in the vicinity of Chicago, Illinois.
7.5
Neither Party shall be held liable or responsible to the other Party nor be
deemed to have defaulted or breached this Sublicense Agreement for failure or
delay in fulfilling or performing any term of this Sublicense Agreement to the
extent, and for so long as, such failure or delay is caused or results from
causes beyond the reasonable control of the affected Party including but not
limited to earthquakes, floods, embargoes, wars, acts of war (whether war is
declared or not), insurrections, riots, civil commotions, strikes, lockouts or
other labor disturbances, acts of God or acts, omissions or delays in acting by
any governmental authority or other entity that is not a Party to this
Sublicense Agreement.
7.6 If
any provisions of this Sublicense Agreement are or become invalid, or are ruled
illegal or unenforceable by any court of competent jurisdiction under applicable
law in effect during the term of this Sublicense Agreement, then it is the
intention of the Parties to the remainder of this Sublicense Agreement shall
remain in effect.
7.7 Any
notice required or permitted to be given under this Sublicense Agreement shall
be deemed sufficient, if mailed by registered or certified mail, or delivered by
hand or facsimile to the Party to whom such notice is required or permitted to
be given. All notices to AVAX and CTCA shall be addressed as
follows.
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Notices
to AVAX:
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Notices
to CTCA:
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Xxxx
Xxxxxxxxxxx, Chairman
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Xxxxxx
Xxxxx, VP
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AVAX
Technologies, Inc.
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CTCA
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0000
Xxxxxxxx Xxxxxx, Xxxxx 000
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0000
Xxxxxxxx Xxxx
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Xxxxxxxxxxxx,
XX 00000
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Xxxxxxxxxx,
XX 00000
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Facsimile:
(000) 000-0000
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Facsimile:
(000) 000-0000
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The
Parties have duly executed this Sublicense Agreement effective as of the date
first written above.
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AVAX
TECHNOLOGIES, INC.
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CANCER
TREATMENT CENTERS OF
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AMERICA,
INC.
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By
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/s/ Xxxx, Xxxxxxxxxxx |
By
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/s/ Xxxxxx Xxxxx | |
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John,
Prendergast, Chairman
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Xxxxxx
Xxxxx, Vice President
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