EXHIBIT 10.39
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CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
THIS AGREEMENT dated 4 May 2001 (the "EFFECTIVE DATE") is made BETWEEN:
(1) ISIS INNOVATION LIMITED, a company registered in England (No. 02199542),
whose registered office is at University Offices, Xxxxxxxxxx Xxxxxx, Xxxxxx
XX0 0XX, Xxxxxxx ("LICENSOR"); and
(2) V.I. TECHNOLOGIES, INC., a company registered in Delaware, whose principal
office is at 000 Xxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 (the "LICENSEE").
1. SUBJECT MATTER
This Agreement relates to the following intellectual property and know-how
(collectively, the "LICENSED TECHNOLOGY"):
1.1 the inventions (the "INVENTIONS") described in:
(a) [*****]
(b) [*****]
(c) [*****]
(d) [*****]
(together, the "APPLICATIONS") and any divisional, continuation,
continuation-in-part and foreign equivalents thereof, as well as
any United Kingdom and foreign patents issued thereon or
reissues, reexaminations or extensions thereof;
1.2 confidential information so communicated to the Licensee, and
concerned with or related to the Inventions or the practice of the
Inventions; and
1.3 technology so communicated to the Licensee pursuant to clause 3.3 of
this Agreement.
2. GRANT
The Licensor grants to the Licensee an exclusive (subject to the terms of clause
3.2) license (the "LICENSE") to use the Licensed Technology for the term of this
Agreement worldwide in the development, production, sale, leasing and other
commercial exploitation of any products and services (the "LICENSED PRODUCTS",
an expression which shall be taken to mean and include only products and
services entirely or partially produced by means of, with the use of or
comprising the Licensed Technology) in the field of prion diagnostics and ex-
vivo prion removal related products and processes for food, agriculture, human
and veterinary applications (the "FIELD"). The Licensee recognises that this
Agreement confers no rights in relation to products intended or adapted for
other fields.
The License shall extend to all countries in the world apart from those excluded
through the operation of the second last sentence of clause 3.5 and clause 3.6.
3. UNDERTAKINGS BY THE LICENSOR
3.1 The Licensor will not license other undertakings to exploit the
Licensed Technology in the Field. The Licensee recognises that this
degree of exclusivity relates strictly to the Field; thus the
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Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote such omissions.
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Licensor may license other undertakings within other fields
("ADDITIONAL LICENSES"). The Licensor must not, however, enter into
Additional Licenses without first inviting the Licensee to make an
offer in writing in respect of the Additional Licenses. The Licensor
will, however, be free to invite other undertakings to make an offer
in respect of the Additional Licenses if the Licensee:
(a) does not make an offer in writing with respect to the Additional
Licenses within 21 days of the invitation by the Licensor; or
(b) does not conclude negotiations of the terms of any Additional
License for which it makes an offer under this clause within 90
days of the invitation to the Licensee to make an offer in
writing in respect of the Additional License (which negotiations
will be conducted in good faith); or
(c) makes an offer in respect of the Additional Licenses and such
offer is not acceptable to the Licensor in its absolute
discretion (having considered and discussed such offer with the
Licensee in good faith) and the Licensor communicates its
decision to the Licensee in writing within 14 days of receipt of
the Licensee's offer.
In addition to the above, the Licensor shall not accept any third
party offer for Additional Licenses unless it has first notified the
Licensee in writing of the principal terms of such offer to the extent
that it is able under any applicable confidentiality obligations
(which the Licensor shall use all reasonable endeavours to ensure do
not extend to the principal terms of any offer). The Licensee shall
have 30 days to match the principal terms of the third party offer,
failing which, the Licensor shall be free to accept such third party
offer (provided that it is on no less favorable terms).
3.2 The Licensor will not exploit the Licensed Technology in the Field.
However, the Licensor reserves the right to grant to the University of
Oxford (the "UNIVERSITY") the right for the University and every
employee, student, agent and appointee of the University to use and
publish the Licensed Technology for academic and research purposes
only (irrespective of field, but without the right to grant
sublicenses to the Licensed Technology in the Field), and this will
include the right for the University to use the Licensed Technology as
enabling technology in other research projects (including projects
which benefit from third-party funding, but excluding any such
projects that may require the University to grant licenses to the
Licensed Technology in the Field). The Licensor will ask the
University to submit material intended for publication to the Licensee
in writing not less than sixty (60) days in advance of the submission
for publication. The Licensee may request that submission for
publication be delayed if such delay is necessary in order to protect
the Licensee's rights relating to Licensed Products, including
requesting that a patent application be filed. A delay imposed on
submission for publication as a result of a request made by the
Licensee shall not exceed three (3) months from the date of receipt of
the material by the Licensee, although the Licensee may ask for
additional delay in the rare event that intellectual property rights
would otherwise be lost. The Licensor will ask the University to
delete any Licensee confidential information from the publication upon
request by Licensee. Notification of the request for delay in
submission for publication must be received by the Licensor within
thirty (30) days after the receipt of the material by the Licensee,
failing which the Licensor shall be free to assume that the Licensee
has no objection to the proposed publication. Nothing in this
Agreement shall prevent any registered student of the University from
submitting for a degree of the University a thesis based on the
Licensed Technology, the examination of such a thesis by examiners
appointed by the University, or the deposit of such a thesis in a
library of the University in accordance with the relevant procedures
of the University.
3.3 The Licensor will communicate to the Licensee any improvements which
the University makes to the Licensed Technology of which the Licensor
is aware and which are relevant to the Field. An improvement for this
purpose and for the purpose of clause 4.4 shall be taken to be any
development of the Inventions which, if commercially practised, would
infringe and/or be covered by a claim being prosecuted or requested by
Licensee to be prosecuted in the Applications referred to in clause
1.1, or by a valid claim of an unexpired patent which issues in
response to those Applications.
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3.4 The Licensee will communicate to the Licensor any commercial
opportunity to exploit the Licensed Technology within the Field of
which the Licensee is aware but which the Licensee has determined that
it does not which to exploit. Upon giving notice of the commercial
opportunity to the Licensor, the parties will use their best
endeavours to negotiate and agree the terms of an agreement amending
this License to allow the Licensor to exploit the commercial
opportunity subject to the protection of the Licensee's commercial
position and the Licensor providing a reasonable return to the
Licensee. If the parties do not reach agreement on the terms of the
agreement, the Licensor will refer the dispute for final determination
to an expert agreed by the parties or in default of agreement
appointed by the President of the Law Society of England and Wales.
3.5 The Licensor shall be responsible for filing, prosecuting, renewing
and defending such patent, design, copyright, mask work and other
registrations as may be available for the protection of the Licensed
Technology, using counsel reasonably acceptable to Licensee. Licensor
shall keep Licensee informed regarding the status of all patent
applications and patents comprising the Licensed Technology and
Licensee shall be provided with a reasonable opportunity in the
circumstances to review and comment upon any such patent applications
and all papers and instruments filed therewith in advance of their
filing, provided that the Licensor may take all necessary steps to
file, prosecute, renew and defend such patent, design, copyright, mask
work and other registrations notwithstanding that the Licensee has not
given the Licensor comments on such patent applications or other
papers and instruments. The Licensee will indemnify the Licensor
against all costs (including lawyers' and patent agents' fees and
expenses), claims, demands and liabilities arising out of or
consequent upon such activities. The Licensor will invoice outgoings
of this nature as and when they are incurred, and the Licensee will
settle each invoice within thirty days after receipt.
Well prior to the Applications reaching the national phase, the
parties will consult over the countries to be covered. If the
Licensor believes a patent may be granted in a country but the
Licensee is unwilling to indemnify the Licensor against the cost of
prosecuting the Applications there, the country in question shall be
removed from the scope of this Agreement. If the Licensor determines
on a country-by-country basis that it will not, for any reason, file,
prosecute or maintain any patent application or patent within the
Licensed Technology, it will promptly notify Licensee of its decision
and Licensee shall thereafter have the right but not the obligation to
undertake such filing, prosecution and maintenance at its own expense.
3.6 Each party will inform the other party of any misappropriation or
infringement of the Licensed Technology in the Field of which such
party becomes aware. Licensee shall have the first right, but not the
obligation, to take legal action, at Licensee's expense, against any
misappropriation or infringements of the Licensed Technology of which
either party becomes aware, provided that the Licensee shall first:
(a) provide the Licensor with an indemnity in terms satisfactory to
the Licensor against all costs (including lawyers' and patent agents'
fees and expenses), claims, demands and liabilities arising out of or
consequent upon such activities; and (b) agree with the Licensor the
terms on which any damages or other recovery are to be shared with the
Licensor. Licensee may include Licensor as a party in such legal
action.
In the event Licensee declines to commence legal action against any
misappropriation or infringement of the Licensed Technology, Licensor
shall have the right, but shall not the obligation, to take legal
action, at Licensor's expenses. If the Licensor takes such legal
action, the country or countries where the infringement or
misappropriation allegedly occurred and the country or countries where
the Licensee incurs any substantial loss or damage as a result of the
infringement or misappropriation, whether on sales or otherwise, shall
be removed from the scope of this Agreement, unless:
(i) there is no reasonable evidence to demonstrate that the alleged
infringement or misappropriation is (or would do so, if allowed
to continue) substantially prejudices sales of the Licensed
Products in any country worldwide; or
(ii) in the opinion of independent legal counsel with experience in
this general area of technology, there is no reasonable prospect
of being successful in any legal action in respect of such
alleged infringement or misappropriation.
In any legal action instituted by either party under this clause 3.6,
the other party shall, at the request and expense of the party
initiating such suit, cooperate in all respects and, to the extent
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possible, have its employees testify when requested and make available
relevant records, papers, information, samples, specimens, and the
like.
3.7 The Licensor represents and warrants, to the best of its knowledge,
that (a) it has the full power to enter into this Agreement, to carry
out its obligations under this Agreement and to grant the exclusive
rights and licenses to Licensee herein; and (b) it has not previously
granted and shall not grant to any third party any rights which are
inconsistent with the rights granted to Licensee herein.
4. UNDERTAKINGS BY THE LICENSEE
4.1 Subject to clause 4.2, the Licensee will use its best endeavours not
to divulge to third parties such of the know-how communicated by the
Licensor pursuant to this Agreement as has not become publicly known
without the fault of the Licensee or as a result of any act or
omission of a third party who received such know-how directly or
indirectly from the Licensee or its sub-licensees or is not disclosed
in a patent or published patent application included in the Licensed
Technology (the "CONFIDENTIAL TECHNOLOGY").
4.2 Except as set forth in clause 10.2, the Licensee will not assign the
License but may grant sub-licenses, and may disclose to sub-licensees
such of the Confidential Technology as it necessary for the exercise
of the rights sub-licensed. No sub-license will carry any right to
sub-sub-license. Immediately following the grant of each sub-license,
the Licensee will forward to the Licensor in writing a note of the
name and address of the sub-licensee, a description of the technology
sub-licensed and its intended applications, and confirmation of the
duration of the sub-license. By controlling the wording of its
contracts with sub-licensees, the Licensee will ensure that
obligations and conditions which are substantially similar to those
recorded in this Agreement, and sufficient to protect the security of
the Confidential Technology, the intellectual property rights in the
Licensed Technology, and the interests of the Licensor, are imposed on
every sub-licensee; and that in no circumstances do the terms of any
sub-license in force from time to time conflict with the terms of this
Agreement.
4.3 The Licensee will not exploit the Licensed Technology after the
expiration or termination of this Agreement, insofar as the Licensed
Technology is still patented or secret; provided that this sub-clause
shall not prevent the Licensee from working an expired patent which
can be worked by all other manufacturers.
4.4 The Licensee shall grant the University and every employee, student,
agent and appointee of the University the right to use and publish, on
a royalty-free basis, any improvement to or new application of the
Licensed Technology made or devised by Licensee and claimed in an
issued patent or published patent application, for internal academic
and research purposes only. The Licensee will communicate any such
improvement or new application to Licensor in writing and the
provisions of clause 3.2 shall also apply to the information disclosed
by the Licensee under this clause.
4.5 In the event of the Confidential Technology becoming publicly known as
a result of action by the Licensee or as a result of any act or
omission of a third party who received the Confidential Technology
directly or indirectly from the Licensee or its sub-licensees, the
Licensee will continue paying royalties under clause 5, until the end
of this Agreement, without prejudice to the payment of any additional
damages in the event of the Confidential Technology becoming publicly
known as a result of breach of this Agreement.
4.6 The Licensee will be responsible for the design and construction of
the Licensed Products and the Licensor shall have no responsibility or
liability in that respect.
4.7 The Licensee will ensure that the Licensed Products and the packages
associated with them are marked suitably with any relevant patent or
patent application numbers to satisfy the laws of each of the
countries in which the Licensed Products are sold or supplied and in
which they are covered by the claims of any patent or patent
application.
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5. ROYALTIES
5.1 The Licensee agrees to pay to the Licensor:
(a) on the signature of this Agreement, the sum of [*****];
(b) on the first anniversary of the Effective Date, the sum of
[*****];
(c) on the second anniversary of the Effective Date and each
subsequent anniversary of the Effective Date until the Licensee
has filed an Investigation New Drug application (or any foreign
equivalent) or, where such an application is no longer available,
its equivalent application, for the first Licensed Product, the
sum of [*****].
5.2 For so long as any Licensed Products are used or marketed by the
Licensee, the Licensee will pay to the Licensor a royalty equal to the
percentage prescribed in the following table of gross revenue of the
Licensee in respect of Licensed Products for the range of gross profit
margins achieved by the Licensee of all such Licensed Products in each
year of this agreement ("LICENSE YEAR"):
Range of gross profit margins % gross revenue
Less than 50% [*****]
Between 50% and up to 70% [*****]
Above 70% [*****]
Where a Licensed Product is marketed in combination with other
products or materials, the relative proportion of the gross revenues
of the Licensed Product contained in the combination product shall be
agreed upon in advance of the combination product launch by the
Licensee by negotiations in good faith between the parties. The
parties agree to determine the appropriate proportion of the gross
revenues within thirty (30) days after the Licensee notifies the
Licensor in writing of the intent to launch a new combination product
so as not to delay the first sale of such combination product. Should
the parties fail to agree on the appropriate proportion of gross
revenues, the dispute shall be settled in London by an arbitrator.
The arbitrator will have no prior association with either the Licensor
or the Licensee and/or be otherwise acceptable to both such parties.
5.3 For so long as the Licensee sub-licenses the Licensed Technology, the
Licensee will pay royalties equal to [*****] of gross revenues
(including up-front and milestone payments) received by the Licensee
from its sub-licensee's in respect of each sub-license.
5.4 The Licensee agrees to pay to the Licensor (the "MILESTONE PAYMENT")
the amount prescribed in the following table (the "MILESTONE AMOUNT")
within 30 days of the date on which each of the milestones set out in
the following table occur or is first achieved by the Licensee or any
of the Licensee's sub-licensees (the "MILESTONES"):
Milestone Amount
Each Investigational New Drug application (or where [*****]
such an application is not available, its equivalent)
filed for each Licensed Product (payable once per
Licensed Product regardless of the number of
applications filed worldwide)
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Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote such omissions.
5
Milestone Amount
Each regulatory approval for commercial use of each [*****]
Licensed Product (payable once per Licensed Product
regardless of the number of approvals worldwide)
5.5 The Licensee shall provide the Licensor with a royalty report within
thirty (30) days after the close of each License Year for each
Licensed Product marketed commencing in the first License Year in
which the Licensed Products are marketed, and for each Licensed
Product brought into use by or within the groups of the License. Each
report shall state the gross profits and gross revenues received and
provide a calculation of the royalties due, and shall be accompanied
by payment to the Licensor of the royalties due.
5.6 In marketing the Licensed Products, the Licensee will not accept or
solicit any non-monetary consideration without the prior written
consent of the Licensor. The use by the Licensee of a commercially
reasonable quantity of Licensed Products for promotional sampling
shall not violate this prohibition.
5.7 If the Licensee is obliged to pay royalties to third parties (other
than the Licensee's parent, subsidiary, associated or affiliated
companies), for the right to develop, make, use, sell or import a
Licensed Product, then the Licensee shall be entitled to deduct from
the royalty payment due to the Licensor the royalty payment actually
made to such third party, up to a maximum of [*****] of the royalty
payment due to the Licensor provided that the minimum royalty to be
received by the Licensor under clause 5.2 will be the greater of
[*****] of gross revenues of the Licensor or one half of the
percentage of gross revenues payable in respect of each range of gross
profit margins set out in clause 5.2.
5.8 All payments provided for under this clause 5 shall be made to the
Licensor in pounds sterling without any deductions apart from any tax
which is required to be withheld under applicable local law. Any
change of currency made to calculate sales for the purpose of this
clause 5 shall be determined as at the last business day of each
quarter, using the average of the average daily buying and selling
rates quoted by Barclays Bank plc during that quarter. Where the
Licensee is required to withhold tax under applicable local law, the
Licensee shall deduct such tax, pay it to the relevant taxing
authority, and supply the Licensor with a Certificate of Tax Deduction
at the time of payment to the Licensor. The parties shall co-operate
under any applicable Double Taxation Treaty so that, if possible,
payments are made gross or, if payment gross is not possible, the
Licensor obtains appropriate relief under the Treaty.
5.9 Where the Licensee is obliged to make a payment to the Licensor under
this Agreement which attracts value-added, sales, use, excise or other
similar taxes or duties, the Licensee shall be responsible for paying
such taxes and duties.
5.10 In the event that full payment of any amount due from the Licensee to
the Licensor under this Agreement is not made by any of the dates
stipulated, the Licensee shall be liable to pay interest on the amount
unpaid at the rate of three percent (3%) over the base rate for the
time being of Barclays Bank plc, from the date when payment was due
until the date of actual payment.
5.11 The Licensee and the Licensee's sub-licensees shall keep complete and
accurate accounts of all Licensed Products used and marketed; and will
permit the Licensor or its agents to audit such accounts, upon
reasonable prior notice and no more frequently than annually, solely
for the purpose of determining the accuracy of the royalty reports and
payments. The Licensee's obligation and that of the Licensee's sub-
licensees concerning audit of their accounts shall terminate as to any
report six (6) years after the date of that report.
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Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote such omissions.
6
5.12 The License acknowledges that the Milestone Amounts will be indexed to
the CPI-U (Consumer Price Index--All Urban Consumers) and will be
adjusted at the end of each License Year to take account of increases
in the CPI-U in the preceding year. The Licensor will notify the
Licensee of any increase in the Milestone Amounts as a result of an
increase in the CPI-U in writing at least 30 days before the end of
each License Year.
6. DURATION AND TERMINATION
6.1 This Agreement shall take effect on the Effective Date and (subject to
the remaining sub-clauses of this clause) shall continue in force
until the expiration, on a country-by-country basis, of the period of
ten (10) years from the date on which a Licensed Product is first put
on the market by the Licensee or one of its sub-licensees.
6.2 Insofar as the rights and obligations in this Agreement concern
territories in which the commercial practice of the Licensed
Technology is covered by a claim being prosecuted in the Applications
referred to in clause 1.1, or by a valid claim of an unexpired patent
which issues in response to those Applications, those rights and
obligations shall extend for those territories beyond the period
defined in clause 6.1 if and for so long as the commercial practice of
the Licensed Technology is so covered in those territories.
6.3 If either party commits a material breach of this Agreement
(including, without limitation, a failure of the Licensee to make any
of the payments required by clause 5.1), and the breach is not
remedied (where remediable) within the period allowed by notice given
by the other party in writing calling on the party in breach to effect
such remedy (such period being not less than thirty (30) days except
as provided below), the other party may be further written notice
terminate this Agreement immediately.
6.4 The Licensee will use reasonable endeavours to develop and exploit the
Licensed Technology, in order to maximize the financial return for
both parties consistent with projects of similar commercial value.
Within sixty (60) days after the end of each calendar year, the
Licensee shall provide the Licensor with a report detailing the
progress made and steps taken during the calendar year in:
(a) taking legal action against any misappropriation or infringement
of the Licensed Technology in the Field of which the Licensee
becomes or is made aware (save to the extent that these actions
are taken by the Licensor pursuant to an agreement under clause
3.6);
(b) developing the Licensed Technology in order to facilitate its
commercial exploitation; and
(c) promoting and marketing Licensed Products.
Any failure by the Licensee to provide the Licensor with such a report
during the sixty (60) day period shall be regarded as a material
breach of the provisions of this Agreement, for the purpose of clause
6.3. In the event that the Licensor reasonably believes that Licensee
is not making reasonable commercial efforts under the circumstances to
research, develop, promote and then commercialize the Licensed
Technology pursuant to this clause, then the Licensor shall provide
written notice to the Licensee which specifies the Licensor's basis
for such belief and what additional efforts the Licensor believes
should be made by the Licensee. Upon receipt of such written notice,
the Licensor and the Licensee shall enter into good faith negotiations
in order to reach mutual agreement as to what efforts by the Licensee
shall satisfy the requirements of this clause and if such mutual
agreement is not reached within sixty (60) days after receipt of such
written notice, then the parties agree to submit to arbitration
pursuant to clause 10.8 to determine the efforts which should be
exerted by the Licensee. Thereafter, the Licensee shall exert the
efforts determined by the parties or in such arbitration.
6.5 The Licensee may terminate this Agreement by six (6) months' written
notice at any time; whereupon the Licensee shall bring all sub-
licences to an end on the same date. Any such
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termination shall not absolve the Licensee of its obligation to accrue
and pay royalties under the provisions of clause 5 of this Agreement.
6.6 The Licensor shall have the right to terminate this Agreement by
serving written notice on the Licensee in the event that:
(a) the Licensee has a petition presented for its winding-up, or
passes a resolution for voluntary winding-up otherwise than for
the purposes of a bona fide amalgamation or reconstruction, or
compounds with its creditors, or has a receiver or administrative
receiver appointed of all or any part of its assets, or enters
into any arrangements with creditors, or takes or suffers any
similar action in consequence of debts;
(b) the Licensee challenges the validity of any patent contained
within the Licensed Technology.
Such notice may terminate this Agreement either immediately or at the
end of such period as the Licensor shall select.
6.7 The Licensor shall have the right by serving written notice on the
Licensee to require the Licensee to prove that the Licensed Technology
is not being used for the production of products or the provision of
services other than those licensed.
6.8 Clauses 4.1, 4.3, 4.4, 6.8, 7, 9, 10.5 and 10.8 shall survive the
termination or expiration of this Agreement, for whatever reason.
7. LIABILITY
7.1 The Licensee agrees to indemnify the Licensor and hold the Licensor
harmless from and against any and all claims, damages and liabilities
asserted by third parties (including claims for negligence) which
arise directly or indirectly from the use of the Licensed Technology
or the sale of Licensed Products by the Licensee and its sub-
licensees.
7.2 The Licensor makes no representation or warranty that advice given to
the Licensee pursuant to this Agreement by any employee, student,
agent or appointee of the Licensor or of the University of Oxford, or
the use of any works, designs or information which they, the Licensor
or the University provide in connection with this Agreement, will not
result in infringement of third-party rights.
7.3 The Licensee undertakes to make no claim against any employee,
student, agent or appointee of the Licensor or the University, being a
claim which seeks to enforce against any of them any liability
whatsoever in connection with this Agreement or its subject-matter.
7.4 The liability of either party for any breach of this Agreement, or
arising in any other way out of the subject-matter of this Agreement,
will not extend to any incidental or consequential damages or losses
or to any loss of profits.
7.5 In any event, the maximum liability of the Licensor to the Licensee
under or otherwise in connection with this Agreement or its subject-
matter shall not exceed the return of all royalties paid by the
Licensee under this Agreement, together with interest on the balance
of such moneys from time to time outstanding, accruing from day to day
at the Barclays Bank plc base rate from time to time in force and
compounded annually as at 31 December.
7.6 If any sub-clause of this clause 7 is held to be invalid or
unenforceable under any applicable statute or rule of law, then it
shall be deemed to be omitted, and if as a result any party becomes
liable for loss or damage which would otherwise have been excluded,
then such liability shall be subject to the remaining sub-clauses of
this clause 7.
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8. FORCE MAJEURE
If the performance by either party of any of its obligations under this
Agreement (other than an obligation to make payment) shall be prevented by
circumstances beyond its reasonable control, then such party shall be excused
from the performance of that obligation for the duration of the relevant event.
9. NOTICES
The Licensor's representative for the purpose of receiving payments and notices
shall until further notice be:
The Managing Director
Isis Innovation Limited
Xxxxx Xxxxx, Xxxxx Xxxxx
Xxxxxxxxxx
XXXXXX 0X0 0XX
Xxxxxxx
The Licensee's representative for the purpose of receiving notices shall until
further notice be:
V.I. Technologies, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
XXX
10. GENERAL
10.1 Clause headings are inserted in this Agreement for convenience only,
and they shall not be taken into account in the interpretation of this
Agreement.
10.2 This Agreement may not be assigned or otherwise transferred by either
party without the written consent of the other party, except the
Licensee may assign this Agreement without the consent of the Licensor
to any person, corporation or other business entity which, directly
controls, is controlled by, or is under common control with the
Licensee. "Control" for these purposes means (a) direct or indirect
beneficial ownership of at least fifty percent (50%) of the voting
stock of a corporation; or (b) possession of the power to direct or
cause the direction of the management and policies of such corporation
or other business entity, whether through the ownership of the
outstanding voting securities or by contract. Any purported assignment
in violation of this clause shall be void. Any permitted assignee
shall assume all obligations of its assignor under this Agreement in
writing.
10.3 Nothing in this Agreement shall create, imply or evidence any
partnership or joint venture between the Licensor and the Licensee or
the relationship between them of principal and agent.
10.4 This Agreement constitutes the entire agreement between the parties
with regard to the Licence. Specifically, but without limitation, this
Agreement does not impose or imply any obligation on the Licensor or
the University or Oxford to conduct development work: any arrangements
for such work shall be the subject of a separate agreement between the
University and the Licensee. Any variation of this Agreement shall be
in writing and signed by authorised signatories for both parties.
10.5 This Agreement shall be governed by English Law.
10.6 If any one or more clauses or sub-clauses of this Agreement would
result in this Agreement being prohibited pursuant to any competition
law, then it or they shall be deemed to be omitted. The parties shall
uphold the remainder or this Agreement, and shall negotiate an
amendment which, as far as legally feasible, maintains the economic
balance between the parties.
10.7 The parties to this Agreement intend that by virtue of the Contracts
(Rights of Third Parties) Xxx 0000 the University of Oxford and the
people referred to in clause 7.3 will be able to enforce the terms of
clause 7.3 of this Agreement as if the University of Oxford and the
people referred to in clause 7.3 were a party to it.
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10.8 Any dispute, controversy or claim arising under, out of or relating to
this Agreement and any subsequent amendments of this Agreement,
including, without limitation, its formation, validity, binding
effect, interpretation, performance, breach or termination, as well as
non-contractual claims, will be submitted to mediation in accordance
with the WIPO Mediation Rules. The place of mediation will be Oxford.
The language to be used in the mediation will be English. If, and to
the extent that, any such dispute, controversy or claim has not been
settled pursuant to the mediation within 60 days of the commencement
of the mediation, it will, upon the filing of a request for
arbitration by either party, be referred to and finally determined by
arbitration in accordance with the WIPO Arbitration Rules. The
arbitral tribunal will consist of a sole arbitrator. The place of
arbitration will be Oxford. The language used in the arbitral
proceedings will be English.
AS WITNESS the hands of authorized signatories for the parties on the date first
mentioned above
SIGNED FOR AND ON BEHALF OF
ISIS INNOVATION LIMITED:
NAME: Xx. X. Xxxx
POSITION: Managing Director
SIGNATURE: /s/ Xx. X. Xxxx
SIGNED for and on behalf of
V.I. TECHNOLOGIES, INC.:
NAME: Xxxx X. Xxxx
POSITION: President and CEO
SIGNATURE: /s/ Xxxx X. Xxxx
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