THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS BRACKETED ON PAGES 2 AND 3 AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
LICENSE AGREEMENT
This agreement ("Agreement") is entered into by and between the University of
Iowa Research Foundation, an Iowa Corporation ("UIRF"), and Apollon, Inc., 0
Xxxxx Xxxxxx Xxxxxxx, Xxxxxxx, XX 00000 ("Company").
WITNESSETH
WHEREAS, UIRF is owner by assignment from Xxxx. Xxxx X. Xxxxxxx, of U.S. Patent
No. 5,168,062 issued December 1, 1992, titled "Transfer Vectors and
Microorganisms containing Human Cytomegalovirus (HCMV) Immediate-Early
Promoter-Regulatory DNA Sequence" and any continuations, continuations-in-part,
divisions, reissues, reexaminations and extensions thereof (no foreign filings
relating to this Patent have been undertaken by the UIRF);
WHEREAS, Company desires a non-exclusive license to the above United States
patent for its use in gene therapy applications;
WHEREAS, UIRF wishes to grant such a license to Company, in accordance with the
terms of this Agreement.
NOW THEREFORE, the parties agree as follows:
ARTICLE I -- DEFINITIONS
1.1 Licensed Patent shall mean U.S. Patent No. 5,168,062 titled "Transfer
Vectors and Microorganisms containing Human Cytomegalovirus (HCMV)
Immediate-Early Promoter-Regulatory DNA Sequence", by Xxxx. Xxxx X. Xxxxxxx,
issued December 1, 1992, or any U.S. patents issuing thereon, including any
continuations, continuations-in-part, divisions, reissues, reexaminations and
extensions thereof and patents corresponding thereto.
1.2 Licensed Products shall mean and include any and all biological materials
and products the making, using or selling of which would otherwise constitute an
infringement of one or more Valid Claims of the Licensed Patent.
1.3 Valid Claim shall mean any claim in an unexpired patent included within
Licensed Patent which claim has not been disclaimed or held invalid or
unenforceable by an unappealed or unappealable decision of a court.
1.4 Licensed Field shall mean the use and/or sale of the Licensed Products for
gene therapy applications, including genetic immunization.
1.5 Net Sales shall mean the gross amount received by Company and/or its
Affiliates from the sale of Licensed Products to third party customers during
the Yearly Accounting Period
less (i) discounts allowed; (ii) credits for claims, allowances or returned
products; (iii) transportation and insurance; and (iv) governmental charges and
taxes imposed with respect to such sales.
1.6 Yearly Accounting Period shall mean an annual period beginning on January I
and ending on December 31 of the same year.
1.7 Effective Date shall mean the date of the last signature appearing at the
end of this Agreement.
1.8 Earned Royalties shall mean royalties paid or payable by Company to UIRF as
determined with respect to Net Sales.
1.9 Licensed Territory shall mean the United States of America.
1.10 Affiliate shall mean any corporation owning or controlling, directly or
indirectly, at least forty nine (49%) of the stock normally entitled to vote for
election of directors of a party.
ARTICLE II -- THE GRANT
2.1 UIRF hereby grants to Company, subject to the terms and conditions hereof,
a non-exclusive license under Licensed Patent to make, have made, use, market or
sell the Licensed Products within the Licensed Field in the Licensed Territory.
ARTICLE III -- PAYMENTS, REPORTS, RECORD-KEEPING
3.1 In consideration of the rights granted to Company pursuant to Article II of
this Agreement, Company agrees to make the following payments to the UIRF:
(a) A non-refundable payment ("License Fee") of [ ] payable as
follows: [
]
(b) Earned Royalties in an amount equal to [ ] of the
Net Sales of Licensed Products to be paid on a quarterly basis.
Company agrees to submit to UIRF within sixty (60) days after December
31, March 31, June 30, and September 30, reports setting forth for the
preceding three (3) month period, the Net Sales of Licensed Products
and royalty due thereon and with each such royalty report to pay the
amount of royalty due.
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(c) A payment of [ ] for each of the
[ ]. Such payment shall accrue for each
[ ] and shall be payable within thirty (30) days
of accrual.
(d) A payment of [ ] for each of the
[ ]. Such a payment for each
[ ] and shall be payable within thirty (30)
days of accrual.
(e) A payment of [ ] for each of the
[ ]. Such a payment for each
[ ] and shall be payable within thirty (30)
days of accrual.
(f) A yearly payment ("License Maintenance Fee") of [ ].
The License Maintenance Fees shall accrue yearly
commencing on the first year anniversary of the Effective Date of this
Agreement and shall be payable within sixty (60) days of accrual. The
obligation to pay the License Maintenance Fee shall terminate accrual
in the year that the first [ ] payment
accrues pursuant to section (c) of this Paragraph. Aggregate License
Maintenance Fees up to a maximum total of [ ]
shall be [ ] creditable against any and all Earned Royalties;
however, in any given Yearly Accounting Period, Earned
Royalties shall not be reduced by more than [ ] by
such credit.
3.2 Company's royalty obligations shall commence upon the execution of this
Agreement and shall continue until the expiration of the Licensed Patent.
3.3 In the event that Company becomes obligated at any time or from time to
time during the term of this Agreement to pay royalties to any third party for
the practice of any method or use of any composition of matter covered by any
claim of the Licensed Patents, or for the sale of any Licensed Products,
Company's royalty obligation to the UIRF shall be reduced by an amount equal to
its royalty obligation to such third party; provided, however, that Company's
royalty obligation shall not be reduced by more than [ ] for any
one calendar quarter.
3.4 Company's obligation to pay royalties hereunder shall be suspended during
any period of time that Company is enjoined, or reasonably believes it may be
enjoined, from exercising any of its rights hereunder with respect to the
Licensed Patents or any Licensed Products. Upon resolution of any such matter,
Company shall promptly pay to UIRF all amounts
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previously withheld with respect to such matter, less (i) any reduction which
may be applicable pursuant to the paragraph above, and (ii) expenses incurred in
the resolution thereof.
3.5 Company shall report every six (6) months on its efforts and progress made
towards commercialization of the technology.
3.6 Company shall keep accurate and correct records of Licensed Products made,
used or sold under this Agreement. Such records shall be retained for at least
three (3) years following a given reporting period. UIRF is hereby granted by
Company the right, upon reasonable written notice to Company, to retain an
independent certified public accountant reasonably acceptable to Company to
audit Company's records solely to verify sales of the Licensed Products. UIRF
may designate an agent for purposes of this verification and this verification
shall be upon reasonable notice to Company.
3.7 Late payments shall be subject to an interest charge of one and one half
percent (1 1/2%) per month.
ARTICLE IV -- TERM AND TERMINATION
4.1 Unless terminated earlier in accordance with this Agreement, the term of
the license granted hereunder shall expire upon the termination of Company's
royalty obligations to the UIRF.
4.2 In the event Company fails to make payments due hereunder, UIRF shall have
the right to terminate this Agreement upon ninety (90) days written notice,
unless Company makes such payments plus interest within the ninety (90) day
notice period.
4.3 In the event that Company shall become insolvent, shall make an assignment
for the benefit of its creditors, or shall have a petition in bankruptcy filed
for or against it and such petition shall not have been discharged within ninety
(90) days, UIRF may, at its option, terminate this license upon thirty (30) days
written notice.
4.4 Company shall have the right during a period of six (6) months following
the effective date of such termination to sell or otherwise dispose of the
Licensed Products existing at the time of such termination, and shall make a
final report and payment of all royalties related thereto within sixty (60) days
following the end of such period or the date of the final disposition of such
inventory, whichever first occurs.
ARTICLE V - MARKING
5.1 Company agrees to comply with marking provisions of Title 35, U.S. Code,
Section 287, if required, or any future equivalent provisions of the United
States relating to the
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marking of patented devices, or with marking complying with the law of the
country where the Licensed Products are shipped, used or sold.
ARTICLE VI -- ASSIGNMENT
6.1 This Agreement may be assigned by Company as part of a transfer of all, or
substantially all, of the business to which this Agreement relates. This
Agreement shall be binding upon and inure to the benefit of successors in
interest and assigns of Company. Company agrees to inform UIRF of such transfer
promptly.
ARTICLE VII -- REPRESENTATIONS AND WARRANTIES: LIMITATIONS
7.1 Nothing in this agreement shall be construed as:
(a) A warranty or representation by UIRF as to the validity or scope of
any Licensed Patent; or
(b) A warranty or representation that anything made, used, sold or
otherwise commercialized under the license granted in this agreement
is or will be free from infringement of patents owned by third
parties; or
(c) Conferring a right to use in advertising, publicity or otherwise the
name of the University of Iowa ("UI") or UIRF, unless UIRF has
specifically approved the same in writing.
7.2 UIRF expressly disclaims any and all implied or express warranties and
makes no express or implied warranties of merchantability or fitness for any
particular purpose of the Licensed Patent, biological materials or processes or
Licensed Products contemplated by this Agreement.
ARTICLE VIII -- GENERAL
8.1 Company shall not distribute or resell the Licensed Products to others
except in accordance with this Agreement. Company agrees to comply with all
applicable laws and regulations.
8.2 UIRF shall have no obligation to defend any action for infringement brought
against Company by a third party.
8.3 The relationship between UIRF and Company shall be that of independent
contractors. UIRF and Company shall have no other relationship other than as
independent contracting parties. UIRF shall have no power to bind or obligate
Company in any manner, except as is expressly set forth in this Agreement.
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8.4 Company shall indemnify and hold harmless UIRF and UI and their employees
and officers and their respective successors, heirs and assigns, from any
action, claim or liability, including, without limitation, liability for death,
personal injury, or property damages arising directly or indirectly from
Company's possession, distribution or other use of Licensed products under this
Agreement and/or from Company's publication or distribution of test reports,
data and other information relating to Licensed products.
8.5 If any provision of this Agreement is ultimately held to be invalid,
illegal or unenforceable, the validity, legality and enforceability of the
remaining provisions shall not in any way be affected or impaired thereby.
8.6 Any delay in enforcing a party's rights under this Agreement or any waiver
as to a particular default or other matter shall not constitute a waiver of a
party's right to the future enforcement of its rights under this Agreement,
except in the event of written and signed waiver.
ARTICLE IX -- NOTICES; APPLICABLE LAW
9.1 Any notice, report or payment provided for in this Agreement shall be
deemed sufficiently given when sent by certified or registered mail addressed to
the party for whom intended at the following addresses, or to such address as
either party may hereafter designate in writing to the other:
For UIRF:
University of Iowa Research Foundation
Attn: Xx. Xxxx X. Xxxxxxxxxxxx, Associate Director
000 Xxxxxxxxxx Xxxxxxxxxx Xxxxxx, Xxxx Xxxx, XX 00000-0000
For Company:
Apollon, Inc., Attn: Xx. Xxxxxxx Xxxxxxx
I Xxxxx Xxxxxx Xxxxxxx, Xxxxxxx, XX 00000
9.2 This agreement shall be interpreted in accordance with the laws of the
State of Iowa, without regard for its principles of conflicts of law.
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ARTICLE X -- INTEGRATION
10.1 This Agreement contains the entire agreement of the parties with
respect to the subject matter hereof, all prior understandings relating
thereto being merged herein. This Agreement cannot be changed or terminated
orally, but only in writing and if signed by both parties. This Agreement
shall be binding on the heirs, successors, and assigns of the parties hereto.
AGREED to on the dates set forth below.
LICENSOR LICENSEE
University of Iowa, Research Foundation Company
By /s/ W. Xxxxx Xxxxxxx By /s/ Xxxxxxx X. Xxxxxxx
----------------------------- ------------------------------
Date: 9/5/95 Date 9/13/95
Name: W. Xxxxx Xxxxxxx, Ph.D. Name: Xxxxxxx X. Xxxxxxx
Title: Executive Director Title: Vice President
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