Exhibit 10.19
LICENSE AGREEMENT
NO. W 960625
ANTIGENIC COMPOSITIONS AND METHODS FOR USING SAME
PROGENICS PHARMACEUTICALS
AND
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
LICENSE AGREEMENT
No. W 960625
TABLE OF CONTENTS
ARTICLE PAGE NUMBER
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RECITALS ...............................................................1
1. DEFINITIONS ....................................................1
2. GRANT ..........................................................2
3. SUBLICENSES ....................................................3
4. CONSIDERATION ..................................................3
5. ROYALTIES ......................................................3
6. DILIGENCE ......................................................4
7. PATENT FILING, PROSECUTION AND MAINTENANCE .....................5
8. PATENT INFRINGEMENT ............................................6
9. PROGRESS AND ROYALTY REPORTS ...................................7
10. BOOKS AND RECORDS ..............................................7
11. LIFE OF THE AGREEMENT ..........................................7
12. TERMINATION BY THE REGENTS .....................................8
13. TERMINATION BY PROGENICS .......................................8
14. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION ......8
15. PATENT MARKING .................................................9
16. USE OF NAMES AND TRADEMARKS ....................................9
17. LIMITED WARRANTY ...............................................9
18. INDEMNIFICATION ...............................................10
19. NOTICES .......................................................10
20. ASSIGNABILITY .................................................11
21. LATE PAYMENTS .................................................11
22. WAIVER ........................................................11
23. FAILURE TO PERFORM ............................................11
24. GOVERNING LAWS ................................................11
25. GOVERNMENT APPROVAL OR REGISTRATION ...........................12
26. EXPORT CONTROL LAWS ...........................................12
27. PREFERENCE FOR UNITED STATES INDUSTRY .........................12
28. FORCE MAJEURE .................................................12
29. ARBITRATION ...................................................12
30. CONFIDENTIALITY ...............................................12
31. MISCELLANEOUS .................................................13
LICENSE AGREEMENT
No. W 960625
This Agreement is made and is effective this 25th day of June 1996, (the
"Effective Date") between THE REGENTS OF THE UNIVERSITY OF CALIFORNIA ("The
Regents"), a California corporation having its corporate offices located at
000 Xxxxxxxx Xxxxx, 00xx Xxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000, acting
through its offices located at Box 951525, 000 Xxxxxxx Xxxxxx, Xxx Xxxxxxx,
Xxxxxxxxxx 00000-0000, and PROGENICS PHARMACEUTICALS, INC. ("Progenics"), a
corporation having a principal place of business at Xxx Xxx Xxxx Xxxxx Xxxx,
Xxxxxxxxx, XX 00000.
RECITALS
WHEREAS, a certain invention (the "Invention"), generally characterized as
"Antigenic Compositions and Methods for Using Same" (U.S. Case No.
92-078-01), was made in the course of research at the University of
California, Los Angeles by Xxxxx Xxxx, Xxxxxxx Xxx, Xxxxxx X. Xxxxxx, Xxxxx
X. Xxxxxxx and Xxxxxx Xxxxx, and is covered by Regents' Patent Rights as
defined below;
WHEREAS, the Invention was developed with United States Government funds, and
The Regents granted a royalty-free nonexclusive license to the United States
Government on January 18, 1983, as required under 35 U.S.C. Section 201-212;
WHEREAS, Progenics is a "small business firm" as defined in 15 U.S.C.
Section 42; and
WHEREAS, The Regents wishes that Regents' Patent Rights be developed and
utilized to the fullest extent so that the benefits can be enjoyed by the
general public.
The parties agree as follows:
1. DEFINITIONS
1.1 "Regents' Patent Rights" means patent rights to any subject matter
claimed in or covered by the patent entitled "Antigenic Compositions
and Methods for Using Same", U.S. patent no. 4,557,931 (filed
December 10, 1985), assigned to The Regents (UCLA Case No.
LA92-078-01), including reissues and reexaminations.
1.2 "Licensed Product" means any article, composition, apparatus,
substance, chemical, or any other material covered by Regents'
Patent Rights or whose manufacture, use or sale would constitute an
infringement of any claim within Regents' Patent Rights, or any
service, article, composition, apparatus, chemical, substance, or any
other material made, used, or sold by or utilizing or practicing a
Licensed Method.
1.3 "Licensed Method" means any process or method which is covered by
Regents' Patent Rights or whose use or practice would constitute an
infringement of any claim within Regents' Patent Rights.
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1.4 The "Licensed Field" shall mean all fields of use.
1.5 "Affiliate" means any corporation or other business entity in which
Progenics owns or controls, directly or indirectly, at least 50% of
the outstanding stock or other voting rights entitled to elect
directors. In any country where the local law does not permit foreign
equity participation of at least 50%, then "Affiliate" means any
company in which Progenics owns or controls, directly or indirectly,
the maximum percentage of outstanding stock or voting rights that is
permitted by local law.
1.6 "First Commercial Sale" means the first sale of any Licensed Product
by Progenics or any Affiliate or Sublicensee, following approval of
its marketing by the appropriate governmental agency for the country
in which the sale is to be made. When governmental approval is not
required, "First Commercial Sale" means the first sale in that
country.
1.7 [***]
1.8 "Sublicensee" means any third party sublicensed by Progenics to make,
have made, use, sell, or have sold any Licensed Product or to
practice any Licensed Method.
1.9 [***]
2. GRANT
2.1 The Regents hereby grants to Progenics an exclusive license (the
"License") under Regents' Patent Rights, in jurisdictions where
Regents' Patent Rights exist, to make, have made, use, sell, have
sold and offer to sell Licensed Products and to practice Licensed
Methods in the Licensed Field.
2.2 The License is subject to all the applicable provisions of any
license to the United States Government executed by The Regents.
The License is subject to any overriding obligations to the United
States Federal Government under 35 U.S.C. Section 201-212.
2.3 The Regents expressly reserves the right to use Regents' Patent
Rights and associated technology for educational, research and
clinical purposes and for any other purpose that is not inconsistent
with the rights granted to Progenics in this Agreement.
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3. SUBLICENSES
3.1 The Regents also grants to Progenics the right to issue exclusive or
nonexclusive sublicenses ("Sublicenses") to third parties to make,
have made, use, sell, and have sold Licensed Products and to practice
Licensed Methods in any jurisdiction under which Progenics has
exclusive rights under this Agreement. All Sublicenses will be
subject to the rights of The Regents under this Agreement.
Sublicenses will also be subject to the rights of the United States
Federal Government under 35 U.S.C. Section 201-212.
3.2 Progenics must pay to The Regents [***]
3.3 Progenics must provide to The Regents a copy of each Sublicense
within 30 days of execution, and a copy of all information submitted
to Progenics by Sublicensee relevant to the computation of the
payments due to The Regents under this Article 3.
3.4 If this Agreement is terminated for any reason, all outstanding
Sublicenses will be assigned by Progenics to The Regents. The
Sublicenses will remain in full force and effect with The Regents
as the licensor or sublicensor instead of Progenics, but the duties
of The Regents under the assigned Sublicenses will not be greater
than the duties of The Regents under this Agreement, and the rights
of The Regents under the assigned Sublicenses will not be less than
the rights of The Regents under this Agreement, including all
financial consideration and other rights of The Regents.
4. CONSIDERATION
4.1 In consideration for the License, Progenics will pay to The Regents
[***] within 30 days of the Effective Date. This fee is
nonrefundable and is not an advance against royalties.
4.2 Progenics must pay to The Regents [***] beginning on the
one-year anniversary date of the Effective Date of this Agreement and
continuing annually on each anniversary date of the Effective Date.
The maintenance fee will not be due and payable on any anniversary
date of the Effective Date if on that date Progenics is commercially
selling a Licensed Product and paying an earned royalty to The
Regents on the sales of that Licensed Product.
The license maintenance fees are non-refundable and are not an
advance against royalties.
5. ROYALTIES
5.1 Progenics must pay to The Regents for sale of Licensed Product(s)
sold by Progenics or its Affiliates an earned royalty of [***]
5.2 Paragraphs 1. 1, 1.2 and 1.3 define Regents' Patent Rights, Licensed
Products and Licensed Methods so that royalties are payable on
products covered by issued patents. Royalties accrue for the duration
of this Agreement.
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5.3 Progenics must pay royalties owed to The Regents on a quarterly
basis. Progenics must pay the royalties within two months of the
end of the calendar quarter in which the royalties accrued.
5.4 All monies due The Regents must be paid in United States funds. When
Licensed Products are sold for monies other than United States
dollars, the royalties will first be determined in the foreign
currency of the country in which those Licensed Products were sold
and, second, converted into equivalent United States funds. Progenics
must use the exchange rate established by the Bank of America in San
Francisco, California on the last day of the calendar quarter.
5.5 Any tax for the account of The Regents required to be withheld by
Progenics under the laws of any foreign country must be promptly paid
by Progenics for and on behalf of The Regents to the appropriate
governmental authority. Progenics will use its best efforts to
furnish The Regents with proof of payment of any tax. Progenics is
responsible for all bank transfer charges. All payments made by
Progenics in fulfillment of The Regents' tax liability in any
particular country will be credited against fees or royalties due
The Regents for that country.
5.6 If legal restrictions in any country prevent the prompt remittance by
Progenics of some or all royalties, then Progenics will have the
right and option to make those payments by depositing them in local
currency to The Regents' account in a bank or other depository in
that country. If the royalties still cannot be returned to the United
States after one year of good-faith efforts by The Regents to recover
them, Progenics will be responsible for payment in the United States.
5.7 If any patent or any claim included in Regents' Patent Rights is held
invalid or unenforceable in a final decision by a court of competent
jurisdiction from which no appeal has or can be taken, all obligation
to pay royalties based on that patent or claim or any claim
patentably indistinct from it will cease as of the date of that final
decision. Progenics will not, however, be relieved from paying any
royalties that accrued before that decision or that are based on
another patent or claim not involved in that decision.
5.8 If Progenics transfers Licensed Products for end-use to itself or an
Affiliate or Sublicensee, that transfer is considered a sale at list
price, and Progenics must pay a royalty in accordance with this
Article 5 (Royalties). If Progenics sells a Licensed Product to an
Affiliate or Sublicensee at a price lower than that customarily
charged to an unrelated third party, the royalties paid to The
Regents will be based on the Net Sales of Licensed Products by the
Affiliate or Sublicensee to their customers.
6. DILIGENCE
6.1 Upon the execution of this Agreement, Progenics must diligently
proceed with the development, manufacture and sale
("Commercialization") of Licensed Products and must earnestly and
diligently endeavor to market them within a reasonable time after
execution of this Agreement and in quantities sufficient to meet the
market demands for them.
6.2 Progenics must endeavor to obtain all necessary governmental
approval for the Commercialization of Licensed Products.
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6.3 The Regents has the right and option to terminate this Agreement if
Progenics fails to perform any of the terms in this Paragraph 6.3.
This right, if exercised by The Regents, supersedes the rights
granted in Article 2 (Grant).
[***]
6.4 To exercise its right under Paragraph 6.3 to terminate this
Agreement, The Regents must give Progenics written notice of the
deficiency. Progenics thereafter has 60 days to cure the deficiency
or to request arbitration. If The Regents does not receive within
the 60 days either a written request for arbitration or satisfactory
tangible evidence that Progenics has cured the deficiency, then The
Regents may, at its option, terminate this Agreement by giving
written notice to Progenics.
6.5 Progenics has the sole discretion for making all decisions as to how
to commercialize any Licensed Product.
7. PATENT FILING, PROSECUTION AND MAINTENANCE
7.1 The Regents will maintain the patents comprising Regents' Patent
Rights. These patents will be held in the name of The Regents and
will be maintained with counsel of The Regents' choice. The Regents
must provide Progenics with copies of each patent request for
terminal disclaimer, and request for reissue or reexamination
of any patent under Regents' Patent Rights. The Regents will consider
any comments or suggestions by Progenics. The Regents is entitled
to take action to preserve rights and minimize costs whether or not
Progenics has commented.
7.2 Progenics will bear all costs incurred during the term of this
Agreement in the maintenance of patents in Regents' Patent Rights.
Progenics will reimburse The Regents for the maintenance fees for the
Patent and the reasonable attorney's fees for services in connection
with the payment of the maintenance fees. Progenics must send payment
to The Regents within 30 days of Progenics's receipt of an invoice.
7.3 Progenics' obligation to underwrite and to pay all United States
patent costs will continue for as long as this Agreement remains in
effect. Progenics may terminate its obligations with respect to any
given patent upon three months written notice to The Regents. The
Regents will use its best efforts to curtail patent costs chargeable
to Progenics under this Agreement after this notice is received from
Progenics. The Regents may continue prosecution or maintenance of
these application(s) or patent(s) at its sole discretion and expense,
and Progenics will have no further rights or licenses to them.
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7.4 The Regents will use its best efforts to not allow any Regents'
Patent Rights for which Progenics is licensed and is underwriting
the costs of to lapse or become abandoned without Progenics'
authorization or reasonable notice. The Regents must notify
Progenics 90 days prior to the proposed abandonment. Within 30 days
after receipt of the notice, Progenics must, in writing, either (a)
concur in the abandonment or (b) elect to assume responsibility
for the prosecution and maintenance of all Patent Rights that The
Regents proposes to abandon. Lack of written response to The Regents
within 30 days will constitute concurrence.
8. PATENT INFRINGEMENT
8.1 In the event that Progenics learns of the substantial infringement of
any patent in Regents' Patent Rights, Progenics will inform The
Regents in writing and will provide The Regents with reasonable
evidence of the infringement. During the period and in a jurisdiction
where Progenics has exclusive rights under this Agreement, neither
party will notify a third party of the infringement of any of
Regents' Patent Rights without first obtaining consent of the other
party, which consent must not be unreasonably denied. Both parties
will use their best efforts to cooperate to terminate the
infringement without litigation.
8.2 Progenics may request that The Regents take legal action against the
infringement of Regents' Patent Rights. This request must be in
writing and must include reasonable evidence of the infringement and
the damages to Progenics. If the infringing activity has not been
abated within 90 days following the effective date of the request,
The Regents has the right to (a) commence suit on its own account or
(b) refuse to participate in a suit. The Regents must give notice of
its election in writing to Progenics by the end of the 100th day
after receiving notice of the request from Progenics. Progenics may
thereafter bring suit for patent infringement in its own name if
and only if The Regents elected not to commence suit and if the
infringement occurred during the period and in a jurisdiction where
the third party had allegedIy infringed Progenics's exclusive rights
under this Agreement. However, in the event Progenics elects to bring
suit in accordance with this Paragraph 8.2, The Regents may
thereafter join the suit at its own expense. Progenics has the right
to join any litigation brought by The Regents at Progenics's cost and
expense and with counsel of Progenics's choice.
8.3 Any legal action will be at the expense of the party that brings the
suit and, with the exception of Paragraph 8.5, all recoveries will
belong to that party. Legal action brought jointly by The Regents and
Progenics and fully participated in by both, however, will be at the
joint expense of the parties and all recoveries will be shared
jointly by them in proportion to the share of expense paid by each
party.
8.4 Each party must cooperate with the other in litigation proceedings
instituted under this Article but at the expense of the party who
brings the suit. The litigation will be controlled by the party
bringing the suit, although The Regents may be represented by
counsel of its choice if The Regents joins a suit brought by
Progenics.
8.5 If Progenics undertakes the enforcement or defense of any Regents'
Patent Rights by litigation, any recovery of damages by Progenics
will be applied first toward Progenics's unreimbursed expenses and
legal fees relating to the suit. Progenics will retain the balance of
the recovery but will pay The Regents [***]
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9. PROGRESS AND ROYALTY REPORTS
9.1 Beginning January 31, 1997, Progenics must submit to The Regents
semiannual progress reports covering Progenics's activities related
to the development and testing of all Licensed Products and the
obtaining of the governmental approvals necessary for marketing.
These progress reports must be made for each Licensed Product until
its First Commercial Sale.
9.2 The progress reports submitted under Paragraph 9.1 must include the
following topics:
9.2(a) Summary of work completed.
9.2(b) Key scientific discoveries.
9.2(c) Summary of work in progress.
9.2(d) Current schedule of anticipated events or milestones.
9.2(e) Market plans for introduction of Licensed Products.
9.2(f) A summary of resources (dollar value) spent in the
reporting period.
9.3. Progenics must notify The Regents if Progenics or any of its
Sublicensees or Affiliates ceases to be a small entity (as defined by
the United States Patent and Trademark Office) under the provisions
of 35 U.S.C. Section 41(h).
9.4 Progenics must report the date of the First Commercial Sale in the
royalty report immediately following that Sale.
9.5 After the First Commercial Sale of each Licensed Product, Progenics
must make quarterly royalty reports to The Regents by February 28,
May 31, August 31 and November 30 of each year (i.e., within two
months from the end of each calendar quarter). Each royalty report
must cover Progenics's most recently completed calendar quarter and
must show:
9.5(a) Gross sales and Net Sales of any Licensed Product.
9.5(b) Number of each type of Licensed Product sold.
9.5(c) Royalties payable to The Regents.
9.6 Progenics must state in its royalty report if it had no sales of any
Licensed Product.
10. BOOKS AND RECORDS
10.1 Progenics must keep accurate books and records of all Licensed
Products manufactured, used or sold. Progenics must preserve these
books and records for at least five years from the date of the
royalty payment to which they pertain.
10.2 The Regents' representatives or agents are entitled to inspect these
books and records at reasonable times. The Regents will pay the fees
and expenses of these inspections. If an error favoring Progenics of
more than 5% of the total annual royalties is discovered, then
Progenics will pay the fees and expenses of these inspections.
11. LIFE OF THE AGREEMENT
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11.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this
Agreement is in force from the Effective Date recited on page one
and remains in effect for the life of the last-to-expire patent in
Regents' Patent Rights.
11.2 Upon termination of this Agreement, Progenics will have no further
right to make, have made, use or sell any Licensed Product except
as provided in Article 14 (Disposition of Licensed Products on Hand
Upon Termination).
11.3 Any expiration or termination of this Agreement will not affect the
rights and obligations set forth in the following Articles:
Article 10 Books and Records.
Article 14 Disposition of Licensed Products on Hand upon Termination.
Article 16 Use of Names and Trademarks.
Article 18 Indemnification.
Article 23 Failure to Perform.
12. TERMINATION BY THE REGENTS
12.1 If Progenics violates or fails to perform any material term or
covenant of this Agreement, then The Regents may give written notice
of the default ("Notice of Default") to Progenics. If Progenics does
not repair the default within 90 days after the effective date of the
Notice of Default, then The Regents has the right to terminate this
Agreement and the License by a second written notice ("Notice of
Termination") to Progenics. If The Regents sends a Notice of
Termination to Progenics, then this Agreement automatically
terminates on the effective date of this notice. Termination does not
relieve Progenics of its obligation to pay any royalty or fees owing
at the time of termination and does not impair any accrued right of
The Regents.
12.2 The provisions of Article 6 (Diligence), and not Paragraph 12.1, will
apply to termination for lack of diligence.
13. TERMINATION BY LICENSEE
13.1 Progenics has the right at any time to terminate this Agreement in
whole or with respect to any portion of Regents' Patent Rights by
giving written notice to The Regents. This notice of termination will
be subject to Article 19 (Notices) and will be effective 90 days
after the effective date of the notice.
13.2 Any termination in accordance with Paragraph 13.1 does not relieve
Progenics of any obligation or liability accrued prior to
termination. Nor does termination rescind anything done by Progenics
or any payments made to The Regents prior to the effective date of
termination. Termination does not affect in any manner any rights of
The Regents arising under this Agreement prior to termination.
14. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
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14.1 Upon termination of this Agreement, Progenics will have the right to
dispose of all previously made or partially made Licensed Products,
but no more, within a period of six months. But Progenics must submit
royalty reports on the sale of these Licensed Products and must
pay royalties at the rate and at the time provided in this Agreement.
15. PATENT MARKING
15.1 Progenics and their Sublicensees must xxxx all Licensed Products
made, used or sold under the terms of this Agreement, or their
containers, in accordance with the applicable patent marking laws.
16. USE OF NAMES AND TRADEMARKS
16.1 Neither party is permitted to use any name, trade name, trademark or
other designation of the other party or its employees (including
contraction, abbreviation or simulation of any of the foregoing) in
advertising, publicity or other promotional activity. Unless required
by law, Progenics is expressly prohibited from using the name "The
Regents of the University of California" or the name of any campus of
the University of California.
17. LIMITED WARRANTY
17.1 The Regents warrants that it has the lawful right to grant this
license to Progenics.
17.2 This License and the associated Invention are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE
OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO
REPRESENTATION OR WARRANTY THAT ANY LICENSED PRODUCT OR LICENSED
METHOD WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
17.3 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL
OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR
THE USE OF THE INVENTION OR LICENSED PRODUCTS OR THE USE OR THE
PRACTICE OF LICENSED METHODS.
17.4 Nothing in this Agreement will be construed as:
17.4(a) A warranty or representation by The Regents as to the
validity or scope of any Regents' Patent Rights.
17.4(b) 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 of third parties.
17.4(c) An obligation to bring or prosecute actions or suits
against third parties for patent infringement except as
provided in Article 8 (Patent Infringement).
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17.4(d) Conferring by implication, estoppel or otherwise any
license or rights under any patents of The Regents other
than Regents' Patent Rights as defined herein, regardless
of whether such patents are dominant or subordinate to
Regents' Patent Rights.
17.4(e) An obligation to furnish any know-how not provided in
Regents' Patent Rights.
18. INDEMNIFICATION
18.1 Progenics must indemnify, hold harmless and defend The Regents, its
officers, employees, and agents, the inventors of the patents and
patent applications in Regents' Patent Rights and their respective
employers from and against any and all liability, claims, suits,
losses, damages, costs, fees and expenses resulting from or arising
out of exercise of this License.
18.2 Progenics, at its sole cost and expense, must insure its activities
in connection with the work under this Agreement and obtain, keep in
force and maintain Comprehensive or Commercial Form General
Liability Insurance (contractual liability included) with limits
as follows:
18.2(a) Each occurrence [***]
18.2(b) Products/completed operations aggregate [***]
18.2(c) Personal and advertising injury [***]
18.2(d) General aggregate (commercial form only) [***]
18.3 Progenics expressly understands, however, that the coverages and
limits in Paragraph 18.2 do not in any way limit the Progenics's
liability. Progenics must furnish The Regents with certificates
of insurance evidencing compliance with all requirements. Progenics
is not required to insure its activities pertaining to the products'
liability risks until it begins to use Licensed Products in human
subjects. Progenics's insurance must:
18.3(a) Provide for 30-day advance written notice to The Regents of
any modification.
18.3(b) Indicate that The Regents of the University of California is
endorsed as an Insured under the coverages listed in
Paragraph 18.2.
18.3(c) Include a provision that the coverages will be primary and
will not participate with nor will be excess over any valid
and collective insurance or program of self-insurance
carried or maintained by The Regents.
19. NOTICES
19.1 Any notice or payment required to be given to either party must be
sent to the respective address given below and is effective: (a) on
the date of delivery if delivered in person, (b) five days after
mailing if mailed by first-class certified mail, postage paid, or
(c) on the next business day if sent by overnight delivery. Either
party may change its designated address by written notice.
For Licensee: PROGENICS PHARMACEUTICALS. INC.
000 Xxx Xxx Xxxx Xxxxx Xxxx
Xxxxxxxxx, XX 00000
(000) 000-0000
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Attention: Xxxx Xxxxxx
For The Regents: The Regents of the University of California
Business Research Partnerships
Box 951525, 1106 Xxxxxxxxx Building
University of California, Los Angeles
Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxxxxxx X. Xxxxxx
VIA OVERNIGHT DELIVERY:
The Regents of the University of California
Business Research Partnerships
Box 951525, 1106 Xxxxxxxxx Building
University of California, Los Angeles
Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxxxxxx X. Xxxxxx
20. ASSIGNABILITY
20.1 This Agreement is binding upon and inures to the benefit of The
Regents, its successors and assigns. But it is personal to Progenics
and assignable by Progenics only with the written consent of The
Regents, which consent may not be unreasonably withheld. The consent
of The Regents will not be required if the assignment is in
conjunction with the transfer of all or substantially all of the
business of Progenics to which this license relates.
21. LATE PAYMENTS
21.1 For each royalty payment or fee not received by The Regents when due,
Progenics must pay to The Regents a simple interest charge of [***]
per annum to be calculated from the date payment was due until it
was actually received by The Regents.
22. WAIVER
22.1 The waiver of any breach of any term of this Agreement does not waive
any other breach of that or any other term.
23. FAILURE TO PERFORM
23.1 If either party takes legal action against the other because of a
failure of performance due under this Agreement, then the prevailing
party is entitled to reasonable attorney's fees in addition to costs
and necessary disbursements.
24. GOVERNING LAWS
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24.1 THIS AGREEMENT IS TO BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF CALIFORNIA, but the scope and validity of
any patent or patent application will be governed by the applicable
laws of the country of the patent or patent application.
25. GOVERNMENT APPROVAL OR REGISTRATION
25.1 If this Agreement or any associated transaction is required by the
law of any nation to be either approved or registered with any
governmental agency, Progenics will assume all legal obligations
to do so. Progenics will notify The Regents if it becomes aware that
this Agreement is subject to a United States or foreign government
reporting or approval requirement. Progenics will make all necessary
filings and pay all costs including fees, penalties, and all other
out-of-pocket costs associated with such reporting or approval
process.
26. EXPORT CONTROL LAWS
26.1 Progenics must observe all applicable United States and foreign
laws with respect to the transfer of Licensed Products and related
technical data to foreign countries, including the International
Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations.
27. PREFERENCE FOR UNITED STATES INDUSTRY
27.1 Because this Agreement grants an exclusive right to a particular use
of the Invention, Progenics must manufacture in the United States
any products embodying this Invention or produced through the
Invention's use to the extent required by 35 U.S.C. Section 201-212.
28. FORCE MAJEURE
28.1 The parties will be excused from any performance required under this
Agreement if performance is impossible or unfeasible due to any
catastrophe or other major event beyond their reasonable control,
including war, riot, or insurrection; laws, proclamations, edicts,
ordinances or regulations; strikes, lockouts or other serious labor
disputes; and floods, fires, explosions, or other natural disasters.
When such events xxxxx, the parties' respective obligations will
resume.
29. ARBITRATION
29.1 At the request of either party, any controversy or claim arising out
of or relating to the diligence provisions of this Agreement
(Article 6) will be settled by arbitration conducted in Los
Angeles, California in accordance with the then current Licensing
Agreement Arbitration Rules of the American Arbitration Association.
Judgment upon the award rendered by the Arbitrator(s) will be binding
on the parties and may be entered by either party in the court or
forum, state or federal, having jurisdiction.
30. CONFIDENTIALITY
30.1 If either party discloses confidential information to the other
party, the disclosing party will designate this information as
confidential by appropriate legend or instruction, and the
receiving party will:
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30.1(a) Use the same degree of care to maintain the secrecy of the
confidential information as it uses to maintain the secrecy
of its own information of like kind.
30.1(b) Use the confidential information only to accomplish the
purposes of this Agreement.
30.2 Neither party will disclose confidential information received from
the other party except to its employees, customers, distributors and
other agents who are bound to it by similar obligations of confidence
and only as required to accomplish the purposes of this Agreement.
30.3 Neither party will have any confidentiality obligation with respect
to the confidential information belonging to or disclosed by the
other party that:
30.3(a) The receiving party can demonstrate by written records was
previously known to it.
30.3(b) The receiving party lawfully obtained from sources under no
obligation of confidentiality.
30.3(c) Is or becomes publicly available other than through an act or
omission of the receiving party or any of its employees.
30.3(d) Is required to be disclosed under the California Public
Records Act or other requirement of law.
30.4 The provisions of this Article 30 will continue in effect for five
years after expiration or termination of this Agreement.
31. MISCELLANEOUS
31.1 The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of,
or to affect the meaning or interpretation of, this Agreement.
31.2 This Agreement is not binding upon the parties until it has been
signed below on behalf of each party, in which event it becomes
effective as of the date recited on page one.
31.3 No amendment or modification of this Agreement will be valid or
binding upon the parties unless made in writing and signed by each
party.
31.4 This Agreement embodies the entire understanding of the parties and
supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating
to the subject matter hereof.
31.5 If any part of this Agreement is for any reason found to be
unenforceable, all other parts nevertheless remain enforceable as
long as a party's rights under this Agreement are not materially
affected. In lieu of the unenforceable provision, the parties will
substitute or add as part of this Agreement a provision that will be
as similar as possible in economic and business objectives as was
intended by the unenforceable provision.
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Both The Regents and Progenics have executed this Agreement in duplicate
originals by their authorized offficers on the dates written below:
PROGENICS PHARMACEUTICALS, INC. THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
By /s/ XXXX X. XXXXXX By /s/ XXXXXXXX X. XXXXXX
--------------------- -------------------------
Signature Signature
Name Xxxx X. Xxxxxx, M.D., Ph.D. Name Xxxxxxxx X. Xxxxxx
--------------------------
Title Chairman and CEO Title Licensing Associate
----------------
Date September 10, 1996 Date 9-6-96
------------------
THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
By /s/ XXXXX X. XXXXXXX
--------------------
Signature
Name Xxxxx X. Xxxxxxx
Title Licensing Associate
Date 9-6-96
Approval as to legal form: /s/ XXXXXX X. XXXXXXXXX 9/9/96
----------------------- -------
Xxxxxx X. Xxxxxxxxx Date
Assistant Resident Counsel
Office of Technology Transfer
University of California
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