Exhibit 10.66
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Nonexclusive License
97-107-.MW
11/20/97
LICENSE AGREEMENT
Effective as of November 20, 1997 ("Effective Date"), THE BOARD OF TRUSTEES OF
THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers under the
laws of the State of California ("STANFORD"), and Ontogeny, Inc., having a
business address at 00 Xxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000 ("LICENSEE"),
agree as follows;
1. BACKGROUND
1.1 STANFORD has certain rights to biological material known as "Transgenic
Mice Carrying a Reporter Gene for the Hedgehog Signaling Pathway"
("Biological Material") developed in the laboratory of Xx. Xxxxxxx Xxxxx,
a Xxxxxx Xxxxxx Medical Institute ("HHMI") investigator at STANFORD, and
described in Stanford docket S97-107.
1.2 STANFORD desires to have the Biological Material utilized at the earliest
possible time in order that products resulting therefrom may be available
for public use and benefit.
1.3 LICENSEE wishes to acquire a license to said Biological Material to use
Biological Material in the Licensed Field of Use.
1.4 Biological Material was developed in the course of research supported by
the Xxxxxx Xxxxxx Medical Institute.
2. DEFINITIONS
2.1 "Biological Material" means "Transgenic Mice containing an E. Coli
laczgene inserted in the patched gene" and provided to LICENSEE pursuant
to this Agreement.
2.2 "Licensed Field of Use" means any use of the Biological Material for
research purposes. The Biological Material may be used to identify,
discover or characterize products. The Licensed Field of Use specifically
excludes any use of Biological Material which requires U. S. F. D. A.
approval, including any human in vitro and human in vivo diagnostic or
therapeutic applications, and any human in vivo use for whatever purpose.
3. GRANT
3.1 STANFORD hereby grants, and LICENSEE accepts, a nonexclusive license to
the Biological Material in the Licensed Field of Use. Said license does
not include the right to grant sublicense(s). However, if LICENSEE is
collaborating with a corporate partner, such corporate partner shall be
allowed access to Biological Material solely for purposes of the
collaboration and provided that it is bound by the same restrictions on
use and transfer as LICENSEE under conditions outlined in Section 5.4.
LICENSEE is only
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
allowed to provide the mice under collaboration to 2 corporate partners.
In addition, STANFORD will supply LICENSEE with 2 pairs of homozygous
breeding mice and 4 pairs of heterozygote transgenic mice to begin
research.
3.2 The term of said license shall commence as of the Effective Date of this
Agreement and shall expire November 1, 2017 unless sooner terminated
according to Article 9 hereunder.
3.3 STANFORD reserves the right to supply any or all of Biological Material to
academic research scientists, subject to limitation of use by such
scientists for research purposes only.
3.4 STANFORD will not file a patent application covering the Biological
Material.
3.5 The Biological Material were made in the course of research conducted by
Xxxxxx Xxxxxx Medical Institute ("HHMI") in affiliation with Stanford
University. LICENSEE acknowledges that STANFORD has granted to HHMI an
irrevocable, nonexclusive, non-transferable, royalty-free license with
respect to the Biological Materials.
3.6 LICENSEE agrees to take all action necessary on its part as LICENSEE to
enable STANFORD to satisfy its reporting obligations to HHMI relating to
Invention(s) and Biological Material as follows: "HHMI shall have the
right to require periodic reporting, in confidence, on the utilization or
efforts at obtaining utilization of any subject discovery or invention."
4. ROYALTIES
4.1 LICENSEE agrees to pay to STANFORD a noncreditable, nonrefundable license
issue royalty of [**]. Upon receipt of payment, STANFORD shall send a
breeding pair of Biological Material to LICENSEE. LICENSEE shall not
transfer Biological Material to any third party without prior written
consent from STANFORD.
4.2 LICENSEE shall pay license maintenance royalties of [**] on November 7,
1998, and [**] on every November 7 thereafter through November 7, 2017.
Said payments are nonrefundable.
4.3 LICENSEE shall make a payment of [**] for each of the first two IND
filings of products identified or discovered through material use of the
Biological Material. LICENSEE shall not pay any more than [**] pursuant to
this Section 4.3.
4.4 If LICENSEE should decide to make Biological Material available to a
corporate partner under a collaboration as described in Section 3.1,
LICENSEE will pay to STANFORD [**] upon transfer. This payment will be
made for each collaborator who receives the mice.
4.5 All payments to STANFORD shall be in U.S. Dollars, net of any non-U.S.
taxes.
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4.6 No other payments are due under this Agreement to STANFORD with regard to
the Biological Material or products identified or discovered through the
use of the Biological Material.
5. NEGATION OF WARRANTIES
5.1 Nothing in this Agreement shall be construed as:
(a) A warranty or representation that anything made, used, sold,
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and trademarks, of third parties;
(b) Conferring rights to use in advertising, publicity, or
otherwise any trademark or the name of "STANFORD"; or
(c) Granting by implication, estoppel, or otherwise any licenses
or rights under patents of STANFORD.
5.2 Except as expressly set forth in this Agreement, STANFORD makes no
representations and extends no warranties of any kind, either express or
implied. There are no express or implied warranties of merchantability or
fitness for a particular purpose, or that the use of the Licensed
Product(s) will not infringe any patent, copyright, trademark or other
rights or any other . express or implied warranties. As of the Effective
Date, STANFORD is unaware of any patents or other rights which cover the
Biological Material.
5.3 LICENSEE agrees that nothing in this Agreement grants LICENSEE any express
or implied license or right under or to: U.S. Patent 4,656,134,
"Amplification of Eucaryotic Genes," or any patent application
corresponding thereto.
6. INDEMNITY
6.1 LICENSEE agrees to indemnify, hold harmless, and defend STANFORD, Stanford
Health Services and Xxxxxx Xxxxxx Medical Institute and their respective
trustees, officers, employees, students, and agents against any and all
claims for death, illness, personal injury, property damage, and improper
business practices arising out of the use of Biological Material by
LICENSEE or for any breach of this Agreement by LICENSEE, unless due to
the gross negligence or willful misconduct of STANFORD. STANFORD shall
promptly notify LICENSEE of such claim, other than any claim for breach of
this Agreement by LICENSEE, and to the extent that the LICENSEE is
responsible for payment to a third party under this indemnity, LICENSEE
shall manage and control the defense and/or settlement of said
indemnifiable claim, utilizing attorney's reasonably acceptable to
STANFORD and HHMI. LICENSEE agrees not to settle any such claim against
any Indemnitee without STANFORD's and HHMI's written consent where such
settlement would include any admission of liability on the part of any
Indemnitee, where the settlement would impose any restriction on the
conduct by the Indemnitee of any of its activities, or where the
settlement would not include an unconditional release of such Indemnitee
from all liability for claims that are the subject matter of such claim.
This Section 6.1 shall survive termination of this Agreement.
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6.2 Neither STANFORD nor Xxxxxx Xxxxxx Medical Institute shall be liable for
any indirect, special, consequential, or other damages whatsoever, whether
grounded in tort (including negligence), strict liability, contract, or
otherwise arising out of the use of Biological Material by LICENSEE,
unless due to the gross negligence and willful misconduct of STANFORD.
6.3 LICENSEE shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
7. STANFORD NAMES AND MARKS
Except as required by law, LICENSEE agrees not to identify STANFORD in any
promotional advertising or other promotional Material(s) to be disseminated to
the public or any portion thereof or to use the name of any STANFORD faculty
member, employee, or student or any trademark, service xxxx, trade name, or
symbol of STANFORD or the Stanford Health Services, or that is associated with
either of them, without STANFORD's prior written consent, which shall not be
unreasonably withheld.
8. TERMINATION
8.1 LICENSEE may terminate this Agreement for any reason and at any time by
giving STANFORD notice in writing at least ninety (90) days in advance of
the Effective Date of termination provided that LICENSEE shall thereupon
cease use of Biological Material.
8.2 STANFORD may terminate this Agreement if LICENSEE is in material breach of
any provision hereof; and LICENSEE fails to remedy any such breach within
thirty (30) days after written notice thereof by STANFORD.
8.3 Surviving any termination are:
(a) Any cause of action or claim of LICENSEE or STANFORD, accrued
or to accrue, because of any breach by the other party;
(b) Payment of royalties due under Section 4 hereof; and
(c) The provisions of Articles 5 and 7.
8.4 At STANFORD's request, LICENSEE will return all Biological Material in its
possession upon the effective date of termination of this Agreement.
9. ASSIGNMENT
This Agreement may not be assigned except by LICENSEE to a party which acquires
all of substantively all of the business to which the Agreement relates through
a merger or sale of assets or otherwise.
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10. MISCELLANEOUS
10.1 LICENSEE agrees to make written reports annually on or about November 1
until the expiration of this license on November 1, 2017. These reports
should contain a brief description of LICENSEE's use of Biological
Material during the preceding year and shall be held by STANFORD in
confidence.
10.2 Arbitration - If a controversy should arise out of this Agreement, or the
breach thereof, the individuals executing this Agreement on behalf of each
party, or their respective successors or designees (hereinafter referred
to as "the parties") will provide written notice of the existence and
nature of the dispute to each other and will attempt in good faith to
resolve the dispute informally through discussion, the exchange of
documents, or meetings. If the parties are unable to resolve the dispute
informally within thirty (30) days after the date of the initial written
notice to a party informing the party of a dispute, the parties may agree
in writing to submit the dispute to arbitration in accordance with the
Licensing Agreement Arbitration Rules of the American Arbitration
Association. If the parties are unable to resolve the dispute informally
within thirty (30) days after the date of the initial written notice of
the dispute, either party may elect not to arbitrate the dispute and to
file instead a civil action in a court of competent jurisdiction. These
provisions shall not apply to HHMI's right to indemnification under this
Agreement.
10.3 Termination Report - LICENSEE also agrees to make a written report to
STANFORD within ninety (90) days after the date of termination of this
Agreement, stating in such report the number and description of all
Biological Material made or otherwise disposed of which were not
previously reported to STANFORD.
10.4 Notices - All notices under this Agreement shall be deemed to have been
fully given when done in writing and deposited in the United States mail,
registered or certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
000 Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, XX 00000-0000
Attention: Director
To LICENSEE: Ontogeny
00 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Attention: ____________________
Either party may change its address upon written notice to the other party.
10.5 None of the terms of this Agreement can be waived except by the written
consent of the party waiving compliance.
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10.6 This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed, and performed wholly within
California.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
Signature: /s/
----------------------------------
Name:
----------------------------------------
Title: Director, Technology Licensing
Date:
----------------------------------------
ONTOGENY, INC.
Signature: /s/
----------------------------------
Name:
----------------------------------------
Title:
----------------------------------------
Date:
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