Exhibit 10.17
CONFIDENTAL
PATENT ASSIGNMENT AGREEMENT
This agreement (hereinafter "Agreement")
is made and effective on the 4th day of June, 2004
("Date of the Agreement")
and entered into and between
HORMOS MEDICAL CORPORATION
PharmaCity, Itainen Pitkakatu 4 B
FIN-20520 Turku, Finland
(hereinafter referred to as "Hormos")
and
UNIVERSITY OF TURKU
FIN-20014, Turun yliopisto, Finland
(hereinafter referred to as the "University")
The University and Hormos are together referred to as "Parties".
WITNESSETH;
Whereas,
Two researchers of the Institute of Biomedicine at the University, Xxxx. Xxxxx
Xxxxxx and Xx. Xxxx Xxxxxx (hereinafter the "Inventors") have in collaboration
with Hormos studied use of aromatase inhibitors in the treatment of lower
urinary tract symptoms (LUTS) under a research collaboration agreement, dated
Feb. 1, 2002. In course of research the Inventors have made an invention
relating to the method for the treatment of prevention of lower urinary tract
symptoms or pelvic pain with selective estrogen receptor modulators (SERMs). The
Inventors have assigned all of their rights to the Invention to the University.
Whereas,
The University and the Inventors have given information of the Invention (as
defined hereinafter) to Hormos and the Parties have in collaboration prepared
and filed a patent application thereof. Hormos is interested in studying the
usefulness of the Invention to Hormos and the exploitation and development of
the Invention to commercially viable pharmaceutical product(s).
Whereas,
The Parties have reached a consensus on the transfer to Hormos of the Invention
and the right to apply for and obtain corresponding Letters Patent in any
country of the world.
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Furthermore, Hormos and University are interested in and intend to continue
their co-operation in further study of the mechanisms related to LUTS.
Now, the Parties agree as follows:
1. DEFINITIONS:
"Assignee" shall mean any third party to whom Hormos has assigned its right to
receive royalties, excluding licensee, sub-licensee and a party to whom Hormos
has sold or assigned the Invention entitling the University to a one time
payment as set forth in section 4.5.
"Invention" shall mean an invention made by the Inventors as it is described in
the U.S patent application n:o ***** ************************* filed *****.
"Net Income" shall include all milestone payments, royalties and other income
based on the commercial exploitation of the Invention and received by Hormos or
its Assignee. Hormos shall be permitted to deduct from its Net Income audited
costs of Hormos internal R&D, the payments made to third parties or to the
University which costs or payments have directly contributed the development of
the Invention and which costs or payments incurred after the Date of the
Agreement.
"Patent(s)" shall mean any patent rights to the Invention and any and all
patents, Letters Patent or patent applications granted or pending in any country
of the world and based wholly or partly on the Invention, all reissues,
extensions, substitutions, confirmations, registrations, revalidations,
additions, continuations in part, refilings and divisions thereof and any
supplemental protection certificates.
"Product" shall mean any product or product concept on the market for use by
consumers developed by or on behalf of Hormos utilising the claims of the
Patents comprising the Invention or any part of the claims.
2. ASSIGNMENT
2.1. The University hereby assigns to Hormos:
a) all of its rights, title and interest in and to the Invention to
the intent that the grant of any Patents thereon shall be in the
name and vest of Hormos; together with all rights and powers
arising or accrued therefrom including, but not limited to, the
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right to xxx for damages and other remedies in respect of any
infringement of such rights or other acts within the scope of any
claims accompanying the Patent rights.
b) the right to apply for, prosecute and obtain Patent or similar
protection throughout the world in respect of the Invention
including, but not limited to the right to claim priority from
any filed patent application to the intent that the grant of any
Patents or similar protection shall be in the name of Hormos.
c) However, the University and the Inventors shall be entitled, free
of any charge and without any compensation, to perpetually use
the Invention, whether patented or not, for their further
academic, non-commercial research and for teaching purposes.
Right to commercially use and exploit any new invention which is
related to the treatment or prevention of lower urinary tract
symptoms or pelvic pain and which is directly and solely arising
out of exercising such right shall be first offered to Hormos.
2.2. The University hereby warrants to Hormos that it has an unrestricted
right and authority to effect the assignment of the Invention. Furthermore the
University warrants that to the best of its knowledge, the Invention is free
from encumbrances.
2.3. The Invention and any information related to the Invention are
understood to be experimental in nature, and except as provided herein, neither
the University nor the Inventors make any representations or extend any
warranties of any kind, either express or implied. There are no express or
implied warranties, responsibilities or liabilities of merchantability or
fitness for a particular purpose, or that the use of the Invention or any rights
in and to the Invention, as well as, any information related to the Invention
will not infringe any patent, copyright, trademark or other rights. It is
Hormos' responsibility to ensure that the Invention and any rights pertaining to
the Invention, as well as, any information related to the Invention are suitable
for Hormos and for Hormos' needs and the University or the Inventors shall have
no liability for Hormos' use or other action or non-action of the Invention or
any rights pertaining to it or of any information related to the Invention.
Neither the University nor the Inventors shall have any liability with respect
to this Agreement for indirect, consequential, exemplary or incidental damages
(including without limitation loss of profits, loss of contracts, business
interruptions) even if they have been advised of the possibility of such
damages.
This section 2.3. survives the termination or expiration of this Agreement.
2.4 Liability for claims of patent infringement presented by third parties
Hormos shall be solely responsible and liable for the relating costs of
arbitration and other costs for proceedings, as well as, for any other expenses
and damages related to any claims of patent infringement presented to Hormos by
third parties. The University and the Inventors shall be totally free from such
costs, expenses or damages.
This section 2.4. remains in force as long as Hormos or its Assignee or its
successor is the owner of the Patent(s).
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3. PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF THE PATENTS
3.1. After the execution of this Agreement, Hormos shall be responsible for
filing, prosecution, maintenance of the Patents and any costs thereto. Hormos is
entitled in its sole discretion to make any decision related to patenting
strategy. Hormos undertakes to use its best endeavours to obtain a patent.
3.2. In case Hormos or its successor in title decides to discontinue the
prosecution and/or maintenance of all the Patents, Hormos or its successor
undertakes to primarily offer the Patents free of charge to the University. In
order to reserve the University reasonable time to prepare its own decision,
Hormos undertakes to inform already when preparing or considering decision to
discontinue Patent maintenance. In case the University decides not to accept the
offer, Hormos shall offer the Patents free of charge to the Inventors. If such
transfer or assignment back to the University or the Inventors takes place
before the PCT national phase has become due, Hormos shall be responsible for
the costs related to patent transfer. In case the assignment takes place after
the PCT national phase has become due, Hormos shall offer to transfer the
Patents at the assignee's (the University or the Inventors) cost.
3.3. Upon specific assignment by Hormos, the University and the Inventors
are obliged to technically assist Hormos in the prosecution and defence of any
Patents or Patent applications at a reasonable cost paid to the University or to
the Inventors by Hormos. At the request of the University Hormos agrees to keep
the University and the Inventors informed of the status of Patent prosecution.
4. REMUNERATION
4.1. As a consideration for the Invention assigned herein and the right to
exploit said Invention, Hormos agrees to pay i) to the Inventors patent
application fees and patent approval fees ii) signing fee and milestone payments
to the University and iii) royalties for the commercial exploitation of the
Invention to the University, as defined hereinbelow.
4.1.1. Patent application fee. Hormos shall pay a patent application
fee of 700 E individually to both of the Inventors within thirty (30) days
after the date of this Agreement or the date the first patent application is
filed, whichever is later, provided that Hormos has received appropriate bank
account and taxation details from the Inventors. Patent application fee is
non-refundable.
4.1.2. Patent approval fee. Hormos shall pay a patent approval fee of
700 E individually to both of the Inventors within thirty (30) days after
the first Patent based on the Invention has been granted by any patent authority
carrying out the examination of patentability, provided that Hormos has received
appropriate bank account and taxation details from the Inventors. Patent
approval fee is non-refundable.
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4.1.3. Signing fee. Hormos shall pay to the University a
non-refundable signing fee of **** E within 30 days after this Agreement has
been signed by both Parties. The University shall provide Hormos with itemized
invoice.
4.1.4. Milestone payment. Hormos shall pay to the University a
non-refundable milestone payment of 10.000 E at latest on June 30 2005 after
receipt of itemized invoice from the University. The milestone payment shall be
due only in case Hormos still wishes to exploit the Patents and to continue the
prosecution and maintenance of the Patents. If Hormos decides not to prosecute
the Patents, Hormos shall assign the Patents back to the University free of
charge and at its cost in accordance with section 3.2. above.
4.2. Royalties. Hormos shall pay a product-specific royalty to the
University out of the Net Income received by Hormos or by its Assignee or by its
successor based on universal succession for the Product (Royalty). The Royalty
shall be paid to the University irrespective of how and by whom the Products are
sold.
The Royalty shall be
a) **** (**) per cent of the Net Income of Hormos in case ******
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b) **** (**) per cent of the Net Income of Hormos in case *********
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**************.
c) **** (**) per cent of the Net Income of Hormos in case *********
*********
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Hormos' obligation to pay Royalties shall terminate on a country-by-country
basis concurrently with the expiry or termination of the Patent rights
(including any SPC or corresponding) in the country in which the Product is on
the market. For avoidance of doubt, in addition to the Royalty payable to the
University and the fees paid to the Inventors, Hormos shall not be obliged to
pay any other payments or compensation to the Inventors or the University.
4.3. The Royalty defined above is product-specific. If there are more than
one Product based on claims of a Patent, the University is entitled to Royalties
for each Product. If a Product utilises claims of more than one patent where the
Inventors are inventors, the Parties shall negotiate in good faith of a fair
royalty rate for the Product. Until the Parties have reached an agreement on the
new royalty, the royalty rates set forth in this Agreement will be applied.
4.4. Hormos shall keep and require its possible licensees to keep and
maintain complete and accurate records and books of account in sufficient detail
and form so as to enable
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verification of Royalties paid or payable hereunder. Hormos will allow and
arrange the Inventors to audit its own and its licensees records for correctness
of royalty payments, if requested and at auditor's expense.
Payment schedule for the Royalties
The Royalty payments to the University shall be paid within 30 days after Hormos
has received its respective Net Income, if the Product is marketed by a licensee
or an other third party. If the Product is marketed by Hormos, Hormos shall pay
the Royalty once a year within 14 days after the closing of the accounts has
been completed. Hormos shall inform in writing the University within 30 days
after the Product has entered into the market and after that report in detail in
writing annually of its Net Income in connection with the payment of the
respective Royalties.
The Royalties shall be payable to the following bank account:
IBAN-account number: ****************************************
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4.5. If Hormos sells or assigns the Invention and patents related to it
without receiving any royalties, Hormos shall pay as a one time compensation to
the University as follows:
a) **** (**) per cent of the total purchase price in case ***
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b) **** (**) per cent of the total purchase price in case ***
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If the purchase takes place after 24 months from the Date of the Agreement, the
compensation percentage is **** of what has been stated in sections 4.5. a) and
b) above.
The compensation shall be paid to the University by Hormos within 30 days from
the date Hormos received the price of the purchase.
4.6. The royalties and compensations set forth in this Agreement are
exclusive from any value added tax (VAT). If the payments are subject to VAT, an
applicable VAT at the time of payment will be added to the payments and paid by
Hormos to the University.
5. GOVERNING LAW AND DISPUTE RESOLUTION
This Agreement will be governed by the laws of Finland. In the event of any
controversy, claim or dispute arising out of or relating to any provision of
this Agreement, the Parties shall try to settle those conflicts amicably between
themselves within ninety (90) days of
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either Party's request for amicable settlement negotiations. Should the Parties
fail to so settle then the matter in dispute shall be finally settled by one
arbitrator appointed under the rules of the Finnish Central Chamber of Commerce
and decided in accordance with the Finnish Arbitration Act (23.10.1992/967) and
the rules of the Finnish Central Chamber of Commerce. The arbitration will be in
Turku and be conducted in Finnish.
6. MISCELLANEOUS
6.1. No amendment or modification of this Agreement will be deemed legally
binding, unless made in writing and signed by both Parties hereto.
6.2. Each Party hereto agrees to execute, acknowledge and deliver such
further instruments and documents and to do all such as may be necessary or
appropriate to affect the purpose and intent of this Agreement.
6.3. This Agreement with its appendices contains the entire understanding
of the Parties with respect to the matters contained herein.
6.4. If any provision hereof is or later becomes invalid or unenforceable
such provision shall be ineffective without affecting the validity of the
remaining provisions.
7. TERM
This Agreement shall enter into force as from the date written in the first page
and shall remain in effect until the last of the issued Patents expires
(including any applicable patent term restoration or extension that may be
allowed, such as a supplementary protection certificate) or until the Patent has
been offered back to the University in accordance with and under circumstances
of section 3.2.
This Agreement may be terminated by the University or by Hormos by notice in
writing effective immediately upon receipt by the other Party of such notice if
any of the following events would occur:
(i) breach or failure by the other Party to perform any of its obligations
which breach or failure shall not have been remedied by the other
Party in breach within a period of thirty (30) days after written
notice thereof; or
(ii) bankruptcy, liquidation or permanent insolvency of the other Party.
Consequences of termination based on the subsection (i) are that the
non-breaching Party is entitled to a compensation for the damage or loss caused
by the breaching Party and /or all rights, title and interest in and to the
Invention and the Patent(s) shall be automatically returned to the University.
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Consequences of termination based on the subsection (ii) are that all rights,
title and interest in and to the Invention and the Patent(s) shall be
automatically returned to the University.
E.g. the following sections 1., 2.1.c)., 4.4, 5 and 6. survive the termination
or expiration of this Agreement.
8. SIGNATURES
This agreement is executed in two (2) originals, one for the University and the
other for Hormos.
In witness hereof, the Parties hereto have executed this as of the day and year
first written above.
UNIVERSITY OF TURKU
By: /s/ Xxxxx Xxxxxxxx Date and place Turku, 4.6.2004
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Xxxxx Xxxxxxxx, Vice Xxxxxx
By: /s/ Xxxxxx Xxxxxxxxxx Date and place Turku, 4.6.2004
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Xxxxxx Xxxxxxxxxx,
Head of Research Services
Accepted by the Inventors Date and place Turku May 31, 2004
/s/ Xxxxx Xxxxxx /s/ Xxxx Xxxxxx Xxxx 24.05.2004
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By: Xxxxx Xxxxxx By: Xxxx Xxxxxx
HORMOS MEDICAL CORPORATION
By: /s/ Xxxxx Xxxxxxxxxxxx Date and place Turku 12.05.2004
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Xxxxx Xxxxxxxxxxxx, CEO
