EXECUTION ORIGINAL
P&O TECHNOLOGY LICENSE AGREEMENT
This P&O Technology License Agreement (this "Agreement") is made as of
November 30, 2001, by and between Biotherapies Incorporated, a Michigan
corporation ("BIOTHERAPIES"), and GENESIS BIOVENTURES, INC., a New York
corporation ("GBI").
W I T N E S S E T H:
WHEREAS, BIOTHERAPIES is the owner of certain prostate and ovarian
diagnostic technology and related Know-How (as defined below); and
WHEREAS, GBI desires to license exclusive rights to the P&O Technology and
BIOTHERAPIES is willing to license such rights under the terms and conditions
hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual promises and undertakings
hereinafter set forth, the parties hereto agree as follows.
ARTICLE I
DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1 "AFFILIATE" shall mean any individual, corporation, partnership,
proprietorship or other entity controlled by, controlling, or under common
control with a party through equity ownership, ability to elect directors, or by
virtue of a majority of overlapping directors, and shall include any individual,
corporation, partnership, proprietorship or other entity directly or indirectly
owning, owned by or under common ownership with such party to the extent of
fifty percent (50%) or more of the voting shares, including shares owned
beneficially by such party. For purposes of this Agreement, GBI shall not be
deemed to be an Affiliate of BIOTHERAPIES, and BIOTHERAPIES shall not be deemed
to be an Affiliate of GBI.
1.2 "GROSS SALES" shall mean the sum of all amounts received and all
other consideration received (or, when in a form other than cash or its
equivalent, the fair market value thereof when received) by GBI, its
Affiliates and sublicensees from persons or entities due to or by reason of
the sale, distribution or use of Licensed Products, including without
limitation from the administration of diagnostic tests and the provision of
related services.
1.3 "IMPROVEMENT" shall mean (1) any alteration, modification or
enhancement to an invention which improves the effectiveness, efficiency,
performance or other attribute of, or related to, an invention, or any element
thereof, and (2) any new product or material which performs substantially the
same function as the invention, but does so through a different method or
process, regardless of whether the new product or material is independently
patentable or was created based on the invention.
1.4 "KNOW HOW" shall mean all technical information, experimental data
and other expert knowledge possessed by BIOTHERAPIES, regarding the
formulation, manufacture and/or use of, or required to implement, the P&O
Technology, to the extent BIOTHERAPIES, either now or in the future, has
control or access, and to which BIOTHERAPIES has the right to license.
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1.5 "LICENSED PRODUCTS" shall mean any article, composition, apparatus,
substance, chemical, or any other material and/or service that is based upon,
derived from, incorporates and/or utilizes P&O Technology, or whose manufacture,
use or sale would constitute an infringement of any Valid Claim within the P&O
Technology.
1.6 "NET SALES" shall mean Gross Sales, less:
(a) the following deductions and offsets, but only to the extent such
sums were first included in the computation of Gross Sales, or are paid by GBI
and not otherwise reimbursed: refunds, rebates, replacements or credits actually
allowed and taken by purchasers for return of P&O Technology and/or Licensed
Products; customary trade, quantity and cash discounts actually allowed and
taken;
(b) the following items, but only to the extent such sums were
actually paid by GBI, its Affiliates or sublicensees and not otherwise
reimbursed: excise, value-added, and sales taxes actually paid by GBI, its
Affiliates or sublicensees for P&O Technology and/or Licensed Products; and
shipping and handling charges actually paid by GBI, its Affiliates or
sublicensees for test samples.
1.7 "PATENTS" shall mean all patents and patent applications, as well as
all foreign equivalent patent applications and Patent Cooperation Treaty
filings, and all patents issuing therefrom, in which BIOTHERAPIES has or
acquires a property interest, (i) which cover an invention included in the P&O
Technology, and (ii) which BIOTHERAPIES has the right to sublicense and/or
license.
1.8 "P&O TECHNOLOGY" shall mean any assay developed by BIOTHERAPIES, or
any other agent that BIOTHERAPIES co-operates with that utilizes antibodies
against other epithelial cell growth inhibitors of the Mammastatin family of
proteins for detection or measurement of a protein that has diagnostic relevance
for Prostate and Ovarian Cancer. These diagnostic assays also include any assay
developed by BIOTHERAPIES, or any other agent that BIOTHERAPIES cooperates with,
that utilizes DNA sequences homologous to the Mammastatin family, and any
Know-How that was possessed by BIOTHERAPIES at the time of this Agreement, to
measure a biological marker for diagnosis of Prostate or Ovarian Cancer or
measuring the risk assessment values of a subject's developing Prostate or
Ovarian Cancer.
1.9 "ROYALTY QUARTER" shall mean the three-month periods ending on the
last day of March, June, September and December of each year.
1.10 "TERM" shall have the meaning set forth in Section 13.4 below.
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1.11 "VALID CLAIM" shall mean any claim in an unexpired patent or pending
in a patent application included within the Patents which has not been held
unenforceable, unpatentable, or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and which has not bee admitted to be invalid or
unenforceable through the reissue or disclaimer. If in any country there should
be two or more such decisions conflicting with respect to the validity of the
same claim, the decision of the higher or highest tribunal shall thereafter
control; however, should the tribunals be of equal rank, then the decision or
decisions upholding the claim shall prevail when the conflicting decisions are
equal in number, and the majority of decisions shall prevail when the
conflicting decisions are unequal in number.
ARTICLE II
GRANTS
2.1 LICENSE GRANT. BIOTHERAPIES grants, subject to the terms of this
Agreement, to GBI a worldwide, perpetual and exclusive license to make, have
made, use and create improvements to the P&O Technology, Know-How and
Improvements thereto to make, have made, use, market and sell Licensed Products.
2.2 AMENDMENT OF INVESTMENT AGREEMENT. All of the rights and privileges
granted to GBI, and all of the duties and obligations of BIOTHERAPIES, under the
Investment Agreement between GBI and BIOTHERAPIES, dated July 7, 2000, a copy of
which is attached hereto as EXHIBIT A, as they relate in any manner to the P&O
Technology are hereby made void and of no further effect from and after the date
of this Agreement, including, without limitation, the terms and conditions of
Sections 2.1, 3.1 and 5 of the Investment Agreement as they relate to the P&O
Technology.
2.3 SUBLICENSES.
(a) GBI shall have the right to grant sublicenses under the license
granted herein. GBI shall notify BIOTHERAPIES of every sublicense agreement and
each amendment thereto, within thirty (30) days after their execution and shall
provide to BIOTHERAPIES a copy of each such agreement and amendment (subject to
the redaction of confidential information of GBI or its sublicensees, which
redaction shall not include financial terms, the name of the sublicensee, the
territory of the sublicense or the scope of the sublicense).
(b) Any sublicense granted by GBI shall provide for its termination
upon termination of this Agreement; provided, however, that a sublicense granted
may, by written notice to BIOTHERAPIES within sixty (60) days of the
sublicensee's receipt of written notice of such termination, elect to continue
the sublicense. No such election will be valid unless (1) the sublicense
conforms to the requirements of this Section 2, and (2) the sublicensee agrees
in writing at the time of election to assume in respect to BIOTHERAPIES all of
the obligations (including obligations for payment) contained in its sublicense
agreement with GBI.
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(c) All sublicenses shall be consistent with the terms and conditions
of this Agreement, and shall contain acknowledgements by the sublicensee of
BIOTHERAPIES rights in the P&O Technology and Know How, and the disclaimer of
warranty and limitation on BIOTHERAPIES liability as provided in this Agreement.
All sublicenses shall also contain provisions under which the sublicensee
accepts duties to keep records; to avoid improper representations and
responsibilities; to defend, hold harmless, and indemnify BIOTHERAPIES
consistent with the indemnification obligations of GBI hereunder; to control
export; to restrict the use of BIOTHERAPIES' name; and to properly xxxx the P&O
Technology and Know How with copyright and/or patent notices; which duties shall
be at least equivalent to those set forth in this Agreement.
(d) All sublicenses shall provide for each sublicensee to pay taxes
due, if any, in the same manner as set forth in this Agreement, or shall provide
that the sublicensee will be responsible for such taxes should the sublicense be
assigned to BIOTHERAPIES.
(e) All sublicenses shall provide the right for GBI to assign its
rights under the sublicense to BIOTHERAPIES.
2.4 COMMERCIALIZATION EFFORTS.
(a) GBI has the responsibility to do all that is necessary after the
date hereof for any governmental approvals to manufacture and/or sell the
Licensed Products and the P&O Technology, except as otherwise specifically
provided herein with regard to the Patents. GBI agrees to use its best efforts
to manufacture and sell the Licensed Products and the P&O Technology, to obtain
any government approvals necessary therefor, and to exploit, market and
manufacture the Licensed Products in sufficient quantities to meet GBI's
reasonably anticipated customer demand and to make the benefits of the P&O
Technology reasonably available to the public.
(b) Within fifteen (15) days after (i) the first sale of the Licensed
Products by GBI or its Affiliates and sublicensees in the United States after
the date hereof, or (ii) the first sale of any of the Licensed Products by GBI
or its Affiliates and sublicensees in each other country after the date hereof
following approval of its marketing by the appropriate governmental agency for
the country in which the sale is to be made or, where governmental approval is
not required, the first sale in that country after the date hereof, GBI shall
report by written letter to BIOTHERAPIES the date and general terms of that
sale.
(c) Subject to the foregoing, GBI shall have the sole discretion for
making all decisions as to how to develop, commercialize, market and sell the
Licensed Products.
2.5 PUBLICATIONS. BIOTHERAPIES shall not, and shall not permit its
employees and investigators to, submit for publication, or publicly present, any
information regarding the P&O Technology, or the use thereof, unless such
proposed publication or presentation has been reviewed by GBI to allow GBI to
identify and protect its proprietary and confidential information. BIOTHERAPIES
shall provide GBI a copy of such proposed publication or presentation thirty
(30) days prior to its submission for publication or it presentation. In the
event GBI determines that a delay in publication or presentation is necessary
for GBI to protect or perfect its proprietary rights, BIOTHERAPIES shall delay
such publication or presentation for a period of up to three (3) months in order
to allow such protection to be put in place.
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2.6 RESERVATION OF RIGHTS. All rights not expressly granted to GBI are
reserved by BIOTHERAPIES, and GBI may not use the P&O Technology and/or the Know
How except as expressly authorized herein.
2.7 PRODUCT MARKING. GBI shall xxxx, and require its Affiliates and
sublicensees to xxxx, the Licensed Products and the P&O Technology with the
appropriate patent and copyright notices as approved by BIOTHERAPIES (when
appropriate), such approval not to be unreasonably withheld.
2.8 TRANSFER. Within fifteen (15) days of the date hereof, BIOTHERAPIES
shall provide GBI with the information and materials in its possession relating
to the P&O Technology and Know How reasonably necessary or useful to enable GBI
to develop, design, manufacture, have manufactured, use and sell the P&O
Technology in accordance with this Agreement. Thereafter, BIOTHERAPIES shall
supply such assistance as is reasonably requested by GBI, subject to the
parties' agreement regarding payment therefor; GBI shall not pay BIOTHERAPIES
for remedial work relating to errors or omissions in the transfer of technology
described herein.
ARTICLE III
ROYALTY AND OTHER PAYMENT OBLIGATIONS
3.1 ROYALTY.
(a) Subject to all the terms and conditions of this Agreement, during
the term of this Agreement set forth in Section 13.4, GBI shall pay to
BIOTHERAPIES a royalty equal to the percentage set forth below of the Net Sales
of GBI, its Affiliates and its sublicensees during such calendar year. This
royalty shall be calculated quarterly.
CUMULATIVE NET SALES OF LICENSED
PRODUCTS IN THE CALENDAR YEAR ROYALTY
-------------------------------- -------
Up to $100 million 10%
$100 million to $300 million 15%
Greater than $300 million 20%
(b) The amount of the royalties payable to BIOTHERAPIES for each
calendar year of the Term will in no event be less than eight percent (8%) of
Gross Sales during a calendar year. If at the end of a calendar year, the amount
of royalties payable to BIOTHERAPIES pursuant to Section 3.1(a) is less than
eight percent (8%) of Gross Sales, GBI shall pay to BIOTHERAPIES the amount
equal to eight percent (8%) of Gross Sales, minus the amount of total royalties
already paid for such calendar year.
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3.2 ADDITIONAL PAYMENTS AND ROYALTY ADJUSTMENTS.
(a) As part of this Agreement, the parties agree that protein analogs
to Mammastatin from prostate cells and from ovarian cells will be needed to
develop the P&O Technology and/or Licensed Products. Since BIOTHERAPIES has yet
to isolate the prostate or ovarian analogs to Mammastatin, it is not yet
possible to provide those proteins as part of the P&O Technology. As such,
BIOTHERAPIES agrees to supply protein to GBI in sufficient quantity and purity
for the purposes of (1) immunizing animals with the prostate and ovarian analogs
to Mammastatin for the purpose of raising monoclonal antibodies, and (2)
developing a standard for an immunoassay. Such supply shall continue until
specific monoclonal antibodies have been developed by GBI or by BIOTHERAPIES,
and, if developed by BIOTHERAPIES, then BIOTHERAPIES may supply such monoclonal
antibodies instead of the protein.
(b) GBI shall pay to BIOTHERAPIES One Hundred Thousand Dollars
($100,000 USD) upon delivery by BIOTHERAPIES of the first lot of one hundred
(100) micrograms of each protein that is greater than ninety percent (90%)
pure protein, provided such delivery occurs within twenty four (24) months of
the date of this Agreement. If BIOTHERAPIES has supplied protein of lesser
amounts or lesser purity, GBI will still pay BIOTHERAPIES the amount of One
Hundred Thousand Dollars ($100,000 USD) if specific monoclonal antibodies can
be identified within the same twenty four (24) month period.
(c) In the event that, within twenty four (24) months of the date of
this Agreement: (1) BIOTHERAPIES does not supply protein of sufficient quantity
or purity; (2) BIOTHERAPIES does not in the alternative provide to GBI
monoclonal antibodies specific to the prostate and ovarian analogs of
Mammastatin; or (3) GBI is unable to develop monoclonal antibodies specific to
the prostate and ovarian analogs of Mammastatin with the protein that
BIOTHERAPIES does supply; then GBI shall be relieved of its obligation to pay
BIOTHERAPIES the One Hundred Thousand Dollars ($100,000 USD) described above,
and the royalty described in Section 3.1 shall be reduced by one percent (1%)
during the third year of the Term and shall be reduced by an additional one
percent (1%) for each year of the Term thereafter in which BIOTHERAPIES fails to
provide GBI with such proteins and/or monoclonal antibodies. However, in no case
shall the royalties payable under Section 3.1 be reduced to less than six
percent (6%) of Net Sales for a calendar year.
3.3 CURRENCY OF PAYMENTS. All payments under this Agreement shall be made
in U.S. Dollars by wire transfer to such bank account as BIOTHERAPIES may
designate from time to time. Any payments due hereunder on Net Sales outside of
the United States shall be payable in U.S. Dollars at the average of the rate of
exchange of the currency of the country in which the Net Sales are made as
reported in the New York edition of The Wall Street Journal, for the last three
(3) business days of the quarter for which the royalties are payable.
3.4 TAX WITHHOLDING. If laws or regulations require the withholding of
income taxes owed by BIOTHERAPIES on account of royalties accruing under this
Agreement, such taxes shall be deducted on a country-by-country basis by GBI
from such remittable royalty and will be paid by it to the proper taxing
authority. Proof of payment shall be secured and sent to BIOTHERAPIES as
evidence of such payment.
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3.5 OBLIGATION TO PAY ROYALTIES. The obligation to pay a royalty under
this Section 3 is imposed only once with respect to the same unit of Licensed
Products or P&O Technology. However, for purposes of determination of
payments due hereunder, whenever the term Licensed Products or P&O Technology
may apply to a property during various stages of manufacture, use or sale,
Net Sales, as otherwise defined, shall be derived from the sale, distribution
or use of such Licensed Products or P&O Technology by GBI, its Affiliates
and/or sublicensees at the stage of its highest invoiced value to unrelated
third parties.
ARTICLE IV
RECORDS, REPORTS, PAYMENTS
4.1 REPORTS AND PAYMENTS. Within thirty (30) days after the close of
each Royalty Quarter during the term of this Agreement (including the close
of any Royalty Quarter immediately following any termination of this
Agreement), GBI shall report to BIOTHERAPIES all royalties accruing to
BIOTHERAPIES during such Royalty Quarter. On or before February 15 of each
calendar year, GBI shall submit a final report to BIOTHERAPIES detailing the
royalties payable to BIOTHERAPIES for the prior year, and include therewith
payment of all royalties owed to BIOTHERAPIES in accordance with Section
3.1(b) and 3.1(c), less the total of any monthly minimum royalty payments
actually received by BIOTHERAPIES during the applicable calendar year in
accordance with Section 3.2.
4.2 INFORMATION. Each quarterly report, and the final report, shall
indicate for each Royalty Quarter all Gross Sales during such Royalty Quarter
and the Net Sales during the Royalty Quarter, and the amount of the
corresponding royalty payments to be made, as well as the various calculations
used to arrive at said amounts, including the quantity, description of item sold
or services provided, country of manufacture and country of sale. In case no
royalty has accrued for any Royalty Quarter, GBI shall so report.
4.3 NOMENCLATURE. GBI covenants that it will promptly establish and
consistently employ a system of specific nomenclature and type designations for
the Licensed Products and P&O Technology so that various types can be identified
and segregated, where necessary; GBI, its Affiliates and sublicensees shall
consistently employ such system when rendering invoices thereon and henceforth
agree to inform BIOTHERAPIES, or its auditors, when requested as to the details
concerning such nomenclature system as well as to all additional thereto and
changes therein.
4.4 BOOKS AND RECORDS. GBI shall keep, and shall require its Affiliates
and sublicensees to keep, true and accurate records and books of account
containing data reasonably required for the computation and verification of
payments to be made as provided by this Agreement, which records and books
shall be open for inspection upon reasonable notice during business hours by
either BIOTHERAPIES and/or its auditor(s) or an independent certified
accountant selected by BIOTHERAPIES, for the purpose of verifying the amount
of payments due and payable. Said right of inspection will exist for six (6)
years from the date of filing of the report for the Royalty Quarter to which
such records and books of account relate in support thereof, and this
requirement and right of inspection shall survive any termination of this
Agreement. BIOTHERAPIES shall be responsible for all expenses of such
inspection, except that if such inspection reveals an underpayment of
royalties to BIOTHERAPIES in excess of ten percent (10%), then said
inspection shall be at GBI's expense and such underpayment shall become
immediately due and payable to BIOTHERAPIES.
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4.5 CERTIFICATION. The reports provided for hereunder shall be
certified by an authorized representative of GBI to be correct to the best of
GBI's knowledge and information.
ARTICLE V
PATENT PROSECUTION
5.1 PATENT PROSECUTION. The prosecution, filing and maintenance of all
Patents shall be the right and responsibility of BIOTHERAPIES. Payment of all
fees and costs relating to the filing, prosecution, and maintenance, including
re-examinations, interferences, and inter-parties proceedings of the Patents
shall be the responsibility of BIOTHERAPIES.
5.2 ABANDONMENT. In the event that BIOTHERAPIES determines to refrain from
or to cease prosecuting or maintaining any of the Patents, BIOTHERAPIES will
notify GBI and the parties will discuss the terms under which GBI shall receive
the rights to prosecute and/or maintain such Patents; provided, however, that
the granting of such rights will be solely within the discretion of
BIOTHERAPIES.
ARTICLE VI
INFRINGEMENT/ENFORCEMENT
6.1 INFRINGEMENT BY THIRD PARTIES. If, during the Term, the P&O
Technology, or any item thereof, is or appears to be infringed by a third
party, then the party having knowledge thereof shall notify the other party
and the two parties shall consult to consider what, if any, action should be
taken.
6.2 RIGHT TO POLICE. GBI acknowledges and agrees that BIOTHERAPIES
shall have the first right to police the P&O Technology against infringement
by third parties. This right to police includes defending any action for
declaratory judgment of noninfringement or invalidity; and prosecuting,
defending or settling all infringement and declaratory judgment actions at
its expense and through counsel of its selection. GBI shall provide
reasonable assistance to BIOTHERAPIES with respect to such actions, provided
BIOTHERAPIES shall reimburse GBI for out-of-pocket expenses incurred in
connection with any such assistance rendered at BIOTHERAPIES' request. In the
event BIOTHERAPIES elects to institute any such action or suit, GBI agrees to
be named as a nominal party therein.
6.3 GBI'S RIGHTS OF ENFORCEMENT. In the event that BIOTHERAPIES does
not take any action pursuant to this Section 6 within one hundred twenty
(120) days of a written request by GBI to do so, then GBI shall have the
right to take such action at its expense and BIOTHERAPIES shall use
reasonable efforts to cooperate in such action at GBI's expense. GBI shall
have and retain control of such action, but may not settle any such action
without the prior express written consent of BIOTHERAPIES, which shall not be
unreasonably withheld.
6.4 EXPENSES AND AWARDS. If legal proceedings are commenced pursuant to
Sections 6.1 or 6.2 above, all fees and costs incurred therein shall be borne
by the prosecuting party(ies). Such parties shall be reimbursed for such
costs and expenses from any damages and awards recovered. The remaining
damages and awards shall be deemed Net Sales to GBI and shall be included in
the royalty calculation under Section 3.1.
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ARTICLE VII
INDEMNIFICATION
7.1 GBI INDEMNIFICATION.
(a) GBI shall defend, indemnify and hold harmless and shall require
its Affiliates and sublicensees to defend, indemnify and hold harmless
BIOTHERAPIES and its Affiliates for and against any and all claims, demands,
damages, losses, and expenses of any nature (including attorneys' fees and other
litigation expenses), resulting directly or indirectly from, but not limited to,
death, personal injury, illness, property damage, economic loss or products
liability arising from or in connection with, any of the following:
(i) any manufacture, use, sale or other disposition by GBI, its
Affiliates and/or sublicensees or transferees of any Licensed Products or P&O
Technology;
(ii) the direct or indirect use by any person of Licensed
Products or P&O Technology made, used, sold or otherwise distributed by GBI, its
Affiliates or sublicensees;
(iii) the use by GBI, its Affiliates or its sublicensees of any
invention or computer software related to the P&O Technology, Patents and/or
Licensed Products.
(b) BIOTHERAPIES shall be entitled to participate at its option and
expense through counsel of its own selection, and may join in any legal actions
related to any such claims, demands, damages, losses and expenses under Section
7.1(a) above.
7.2 DISCLAIMERS. IN ADDITION TO THE DISCLAIMERS CONTAINED IN SECTION 11.2
BELOW, NEITHER BIOTHERAPIES AND ITS AFFILIATES, AND THE DIRECTORS, OFFICERS,
STAFF, EMPLOYEES OF ALL TYPES, NOR AGENTS, OF ANY AND ALL OF THOSE ENTITIES MAKE
ANY REPRESENTATION OR WARRANTY OF ANY KIND WITH RESPECT TO THE P&O TECHNOLOGY
AND THEY EXPRESSLY DISCLAIM ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE AND ANY OTHER IMPLIED WARRANTIES WITH RESPECT TO THE
VALIDITY, CAPABILITIES, SAFETY, UTILITY, OR COMMERCIAL APPLICATION OF THE P&O
TECHNOLOGY.
7.3 BIOTHERAPIES INDEMNIFICATION.
(a) BIOTHERAPIES agrees to defend GBI and its Affiliates against any
third party claims, demands or suits ("Claim") alleging that such parties'
authorized use of the P&O Technology, or any element thereof, infringes a third
party's copyright, trade secret, patent or other intellectual property rights.
BIOTHERAPIES shall indemnify and hold GBI and its Affiliates harmless from any
and all damages, fines, penalties, costs, expenses and fees (including
reasonable attorneys' fees) awarded or assessed against them as a result of such
Claim, or reached through a negotiated settlement of the Claim.
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(b) This indemnification extends only to the P&O Technology delivered
by BIOTHERAPIES and does not extend (i) to any modifications or Improvements
created by or at the direction of GBI or its Affiliates; or (ii) to any Claim
arising out of the combination of the P&O Technology and any other code,
software, hardware or any other products, provided that such infringement would
not have occurred but for such combination.
(c) In order to receive the indemnification in this Section, the Claim
must take place in the United States or in any country where BIOTHERAPIES is
conducting business and in which BIOTHERAPIES has obtained an issued patent
covering the Licensed Technology; GBI must promptly notify BIOTHERAPIES of the
assertion of the Claim; allow BIOTHERAPIES to retain sole and exclusive control
over the defense and/or settlement of the Claim; and cooperate with
BIOTHERAPIES, at BIOTHERAPIES' expense, in the defense and/or settlement of the
Claim.
(d) This Section sets forth BIOTHERAPIES' sole and exclusive
obligations, and the sole and exclusive remedies of GBI, its Affiliates and
sublicensees, with respect to indemnification of GBI, its Affiliates and
sublicensees, and any liability, under any other theory, arising out of a Claim
described above.
ARTICLE VIII
EXPORT CONTROLS
This Agreement shall be subject to all United States laws and regulations
now or hereafter applicable to the subject matter of this Agreement. GBI shall
comply, and shall require all of its Affiliates and sublicensees to comply, with
all provisions of any applicable laws, regulations, rules and orders relating to
the license herein granted and to the testing, production, transportation,
export, packaging, labeling, sale or use of the P&O Technology and/or the
Licensed Products, or otherwise applicable to GBI's or its Affiliates' or
sublicensees' activities hereunder. GBI shall obtain, and shall require its
Affiliates and sublicensees to obtain, such written assurances regarding export
and re-export of technical data (including products made by use of technical
data) as may be required by the Office of Export Administration Regulations, and
GBI hereby gives such written assurances as may be required under those
regulations to BIOTHERAPIES.
ARTICLE IX
NON-USE OF NAMES
GBI agrees to refrain from using and to require its Affiliates and
sublicensees to refrain from using the name of BIOTHERAPIES in publicity or
advertising without the prior written approval of BIOTHERAPIES. Reports in
scientific literature and presentations of joint research and development work
are not considered publicity. In addition, each party agrees that it shall not
use the names of the other party or such other party's Affiliates or any of
their employees, or any adaptation thereof, in any advertising, promotional or
sales literature without written consent of such other party, except that GBI
may state that it is licensed by BIOTHERAPIES under one or more Patents.
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ARTICLE X
ASSIGNMENT
Due to the unique relationship between the parties, this Agreement shall
not be assignable by either party without the prior express written consent of
the other party. Any attempt to assign this Agreement without such consent shall
be void from the beginning. Neither party shall unreasonably withhold consent
for the other party to assign this Agreement to a purchaser of all or
substantially all of that party's assets or business. No assignment shall be
effective unless and until the intended assignee agrees in writing to accept all
of the terms and conditions of this Agreement. Further, GBI shall refrain from
pledging any of the license rights granted in this Agreement as security for any
creditor.
ARTICLE XI
REPRESENTATIONS, WARRANTIES AND RELATED COVENANTS
11.1 BIOTHERAPIES INTELLECTUAL PROPERTY. BIOTHERAPIES represents and
warrants that as of the date of this Agreement:
(a) it owns the P&O Technology and Know How free and clear of all
liens or claims;
(b) it has the rights to grant the licenses to the P&O Technology and
Know How hereunder;
(c) that no other licenses have been granted to the P&O Technology
under any Patent; and
(d) to BIOTHERAPIES' actual knowledge, neither the P&O Technology nor
the Know How infringes on the intellectual property rights of any third party.
Additionally, BIOTHERAPIES covenants not to grant any other license(s)
under the P&O Technology and Know How in violation of the licenses granted to
GBI herein.
11.2 BIOTHERAPIES DISCLAIMERS AND LIMITATIONS. Nothing in this Agreement
shall be construed as:
(a) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents of third parties (except as provided in
Section 11.1 above);
(b) an obligation to bring or prosecute actions or suits against third
parties for patent infringement (except as provided in Section 6.1 above); or
(c) conferring by implication, estoppel or otherwise any license or
rights under any patents of BIOTHERAPIES other than Patents as defined herein,
regardless of whether such patents are dominant or subordinate to the Patents.
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(d) EXCEPT AS PROVIDED IN SECTION 11.1, THE P&O TECHNOLOGY AND KNOW
HOW ARE LICENSED UNDER THIS AGREEMENT "AS IS" WITHOUT ANY REPRESENTATIONS OR
WARRANTIES OF ANY KIND OR NATURE. WITHOUT LIMITING THE GENERALITY OF THE
FOREGOING, BIOTHERAPIES DOES NOT WARRANT THE PERFORMANCE, COMPLETENESS OR
ACCURACY OF THE P&O TECHNOLOGY AND/OR KNOW HOW, OR ANY RESULTS OR SUCCESS TO BE
ACHIEVED THROUGH THE MANUFACTURE, SALE, DISTRIBUTION OR USE OF LICENSED
PRODUCTS. BIOTHERAPIES DISCLAIMS, AND GBI EXPRESSLY WAIVES, ALL WARRANTIES,
WHETHER EXPRESS, IMPLIED AND/OR STATUTORY, INCLUDING, WITHOUT LIMITATION ANY
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
11.3 BIOTHERAPIES LIMITATION OF LIABILITY. Except as in association with
BIOTHERAPIES' indemnification obligations under this Agreement, in no event
shall BIOTHERAPIES be liable or responsible to GBI, its Affiliates and/or
sublicensees, regardless of the form of action or theory of recovery, in
association with this Agreement and/or the P&O Technology and/or Know How, for
any (a) indirect, special, exemplary, consequential, incidental or punitive
damages, even if BIOTHERAPIES has been advised of the possibility of such
damages; (b) lost profits, lost revenue, lost business expectancy, benefit of
the bargain damages, business interruption losses or loss of data; or (c) direct
damages in an amount in excess of all of the royalty fees paid to BIOTHERAPIES
under this Agreement during the twelve (12) month period immediately preceding
the event giving rise to the claim against BIOTHERAPIES.
ARTICLE XII
INSURANCE
Prior to any distribution of any Licensed Products or P&O Technology by GBI
or any Affiliate, GBI shall purchase and maintain in effect a policy of product
liability insurance. Prior to any distribution of any Licensed Products or P&O
Technology by a sublicensee of GBI, GBI shall require that the sublicensee shall
purchase and maintain in effect a policy of product liability insurance. Each
such insurance policy shall provide reasonable coverage for all claims with
respect to any Licensed Products P&O Technology manufactured, sold, licensed or
otherwise distributed by GBI and its Affiliates --- or, in the case of a
sublicensee's policy, by said sublicensee --- and shall specify BIOTHERAPIES and
its Affiliates including their directors, officers, and employees, as an
additional insured. GBI shall furnish certificates of such insurance to
BIOTHERAPIES upon request.
ARTICLE XIII
TERMINATION
13.1 TERMINATION BY BIOTHERAPIES. If GBI shall:
(a) fail to meet its funding obligation under Section 5.15 of the
Purchase Agreement dated the same date as this Agreement, between GBI and
BIOTHERAPIES;
(b) fail to make any royalty payment when due pursuant to Section 3.1,
and such payment default shall not be cured within sixty (60) days from the date
the royalty payment is due; or
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EXECUTION ORIGINAL
(c) materially breach this Agreement;
then BIOTHERAPIES shall have the right to declare this Agreement in default by
written notice to GBI. GBI may cure such default if: (i) GBI rectifies the
default condition, and (ii) pays a twenty percent (20%) penalty on any royalty
or payments due to BIOTHERAPIES under this Agreement. If the default is not so
cured within six (6) months of the date of the above described default notice,
then this Agreement may be terminated at the option of BIOTHERAPIES by written
notice to that effect. During the period between the event of a default
described above and the expiration of the applicable cure period, GBI shall have
the right to continue to sell and otherwise use the P&O Technology, but shall
not be permitted to assign or sublicense the P&O Technology.
13.2 TERMINATION BY GBI. GBI shall have the right to terminate this
Agreement at any time by giving notice in writing to BIOTHERAPIES of its intent
to do so at least sixty (60) days prior to a termination date designated in said
notice.
13.3 BANKRUPTCY. If, at any time, either party shall file in any court
pursuant to any statute of any individual state or country, a petition in
bankruptcy, insolvency or for reorganization or for an agreement among creditors
or for the appointment of a receiver or trustee of the party or of its assets,
or if either party proposes a written agreement of composition or extension of
its debts, or if either party shall be served with an involuntary petition
against it filed in any insolvency proceeding, and such petition shall not be
dismissed within sixty (60) days after the filing thereof, or if either party
shall make an assignment for the benefit of creditors, then, in the event of any
of the above, the other party shall have the right to terminate this Agreement.
13.4 GBI'S SUBLICENSES. In the event of any termination under this Article,
GBI shall assign its rights under any sublicense agreement hereunder to
BIOTHERAPIES and BIOTHERAPIES shall accept such sublicense, subject to Section
2.2 above. For the purposes of any such sublicensee assuming the position of GBI
in the event of termination of this Agreement, the date of this Agreement for
computation of obligations of the sublicensee shall be the date of this
Agreement.
13.5 TERM. Unless otherwise terminated as provided herein, this Agreement
shall remain in full force and effect for twenty (20) years from the date of
this Agreement.
13.6 OBLIGATIONS UPON TERMINATION. Upon the expiration or termination of
this Agreement for any reason: (a) all of GBI's license rights shall immediately
cease and neither GBI, its Affiliates or sublicensees shall have any right to
continue making, having made, using, selling and/or creating Improvements to the
P&O Technology, Know How and/or Licensed Products; (b) GBI shall return to
BIOTHERAPIES all P&O Technology, Know How and Licensed Products in its
possession, and all copies thereof; (c) GBI shall pay to BIOTHERAPIES all
royalties and other amounts that have accrued through the effective date of any
such expiration and termination (and shall timely pay all royalties and other
amounts accruing or discovered after the effective date of any such expiration
and termination); (d) each party shall return the other party's Confidential
Information (defined below), and all copies thereof; and (e) except in the event
of early termination by GBI pursuant to Section 13.3 or Section 13.4, GBI shall
provide and assign to BIOTHERAPIES all GBI Technology, including all of GBI's
rights, title and interests relating thereto.
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EXECUTION ORIGINAL
13.7 SURVIVAL. In addition to any provisions of this Agreement which
specifically provide for survival, the following provisions shall survive any
termination of this Agreement: Articles I, III, IV, VII, VIII, IX, XI, XIII,
XIV, XV, XVI, XVII and XVIII.
ARTICLE XIV
OWNERSHIP
14.1 BIOTHERAPIES TECHNOLOGY. GBI acknowledges and agrees that BIOTHERAPIES
has and shall retain all rights, title and interests, including all intellectual
property rights, in and to the P&O Technology and Know How and all other
materials provided by BIOTHERAPIES to GBI under this Agreement (collectively,
the "BIOTHERAPIES Technology"). Nothing in this Agreement shall be deemed to
transfer any such interests, in whole or in part, to GBI, except for the
licenses granted herein.
14.2 GBI TECHNOLOGY. GBI shall have and retain all rights, title and
interests, including all intellectual property rights, in and to all Licensed
Products and/or Improvements to the BIOTHERAPIES Technology made by or on behalf
of GBI during the term of this Agreement. GBI's rights in the Licensed Products
and/or Improvements to the BIOTHERAPIES Technology are exclusive of
BIOTHERAPIES' rights in its Technology.
ARTICLE XV
CONFIDENTIALITY
15.1 CONFIDENTIAL INFORMATION. During this Agreement, each party may have
access to information that is considered confidential by the other. This
information includes, but is not limited to, the P&O Technology, Know How,
technical know-how, technical specifications, software object code and source
code, protocols, strategic business plans, results of testing, systems,
financial information, product information, methods of operation, customer
information, supplier information, and compilations of data ("Confidential
Information").
15.2 USE. Each party shall use the other party's Confidential Information
only for the purposes of this Agreement. Each party shall maintain the
confidentiality of the other party's Confidential Information in the same manner
in which it protects its own Confidential Information of like kind, but in no
event shall either party take less than reasonable precautions to prevent the
unauthorized disclosure or use of the other party's Confidential Information.
15.3 DISCLOSURE. Each party is permitted to disclose the other party's
Confidential Information to its employees and contractors on a need to know
basis only, provided that such employees and contractors have written
confidentiality obligations to that party no less stringent than those contained
in this Agreement.
15.4 EXCEPTIONS. The confidentiality provisions of this Agreement do not
apply to information that is or becomes entirely in the public domain through no
fault of the receiving party; was received lawfully from a third party through
no breach of any obligation of confidentiality owed to the disclosing party; or
created by a party independently of its access to or use of the other party's
Confidential Information. In addition, nothing contained in this Agreement shall
be construed to prevent GBI from complying with its disclosure obligations
pursuant to U.S. securities laws.
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EXECUTION ORIGINAL
15.5 TERMINATION AND SURVIVAL. Upon termination or expiration of this
Agreement, each party shall return the other party's Confidential Information
and shall not use the other party's Confidential Information for its own, or any
third party's, benefit. The provisions of this Section shall survive termination
of this Agreement for so long as the Confidential Information remains
confidential.
ARTICLE XVI
NOTICES AND OTHER COMMUNICATIONS
Any notice, request, instruction or other document to be given hereunder by
any party to another party will be in writing and will be deemed given when
delivered personally, upon receipt of a transmission confirmation (with a
confirming copy sent by overnight courier) if sent by facsimile or like
transmission, and on the next business day when sent by Federal Express, United
Parcel Service, Express Mail, or other reputable overnight courier. All notices
will be sent to the following addresses:
If to GBI, then to:
Genesis BioVentures, Inc.
Xxxxx 0X
0000 Xxxx Xxxxxx Xxxxxxx
Xxxxxx, Xxxxxxx Xxxxxxxx
Xxxxxx X0X 0X0
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
Attention: E. Xxxx XxXxxxxxx, Chairman, President and
Chief Executive Officer
with a copy to:
Xxxxxxxxx Xxxxx Xxxxxxx & Xxxxx
000 Xxxxxxx Xxxxxx Xxxxx
Xxxxxxx Xxxxx, Xxxxxxxxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
Attn: Xxxxx X. Xxxxxx, Esq.
If to BIOTHERAPIES, then to:
Biotherapies Incorporated
0000 Xxxxxxxx Xxxx
Xxx Xxxxx, Xxxxxxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
Attention: Xx. Xxxx X. Xxxxx, Xx., Chief Executive Officer
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EXECUTION ORIGINAL
with a copy to:
Xxxxxx, Xxxxxxx & Xxxxxxx LLP
000 Xxxxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
Attn: Xxxxxxx Xxxxxxxxxxx, Esq.
or to such other persons or addresses as may be designated in writing by the
party to receive such notice. Nothing in this section will be deemed to
constitute consent to the manner and address for service of process in
connection with any legal proceeding (including litigation arising out of or in
connection with this Agreement), which service will be effected as required by
applicable law.
ARTICLE XVII
REGISTRATION AND RECORDATION
17.1 REGISTRATION. If the terms of this Agreement, or any assignment or
license under this Agreement are or become such as to require that the Agreement
or license or any part thereof be registered with or reported to a national or
supranational agency of any area in which GBI, its Affiliates or sublicensees
would do business, GBI will, at its expense, undertake such registration or
report. Prompt notice and appropriate verification of the act of registration or
report or any agency ruling resulting from it will be supplied by GBI to
BIOTHERAPIES.
17.2 RECORDATION. Any formal recordation of this Agreement or any license
herein granted which is required by the law of any country, as a prerequisite to
enforceability of the Agreement or license in the courts of any such country or
for other reasons, shall also be carried out by GBI at its expense, and
appropriately verified proof of recordation shall be promptly furnished to
BIOTHERAPIES.
ARTICLE XVIII
MISCELLANEOUS
18.1 WAIVER. Any waiver by a party of a right or remedy under this
Agreement must be in writing and signed by that party to be effective. No waiver
shall be implied by a failure of a party to enforce a right or remedy. It is
agreed that no waiver by either party hereto of any breach or default of any of
the covenants or agreements herein set forth shall be deemed a waiver as to any
subsequent and/or similar breach or default.
18.2 ENTIRE AGREEMENT. This Agreement and all Exhibits hereto contain the
entire understanding of the parties with respect to the subject matter contained
herein, and replaces and supercedes all prior agreements, understandings and
promises related thereto.
18.3 ATTORNEYS' FEES. In the event of a failure of performance due under
the terms of this Agreement and if it becomes necessary for either party to
undertake legal action against the other on account thereof, then the prevailing
party shall be entitled to reasonable attorney's fees in addition to costs and
necessary disbursements.
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18.4 HEADINGS. 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.
18.5 AMENDMENTS AND WAIVERS. Neither this Agreement nor any term hereof may
be changed or amended, except through a writing signed by both parties.
18.6 SEVERABILITY. In the event that any term, provision, or covenant of
this Agreement shall be determined by a court of competent jurisdiction to be
invalid, illegal or unenforceable, that term will be curtailed, limited or
deleted, but only to the extent necessary to remove such invalidity, illegality
or unenforceability, and the remaining terms, provisions and covenants shall not
in any way be affected or impaired thereby.
18.7 COUNTERPARTS. For the convenience of the parties hereto, this
Agreement may be executed in any number of counterparts, each such counterpart
being deemed to be an original instrument, and all such counterparts together
constituting the same agreement.
18.8 GOVERNING LAW. This Agreement and the relationships between the
parties shall be governed in all respects by the law of the State of Michigan
(notwithstanding any provisions governing conflict of laws under such Michigan
law to the contrary), except that questions affecting the construction and
effect of any patent shall be determined by the law of the country in which the
patent has been granted.
18.9 JURISDICTION AND FORUM. The parties hereby consent to the jurisdiction
of the courts of the State of Michigan over any dispute concerning this
Agreement or the relationship between the parties.
END OF AGREEMENT - SIGNATURE PAGE APPEARS ON NEXT PAGE.
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EXECUTION ORIGINAL
SIGNATURE PAGE TO THE P&O TECHNOLOGY LICENSE AGREEMENT,
DATED ______, 2001, BETWEEN BIOTHERAPIES INCORPORATED
AND GENESIS BIOVENTURES, INC.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first written above.
GBI:
GENESIS BIOVENTURES, INC.
By: _______________________________________________
E. Xxxx XxXxxxxxx
Chairman, President and Chief Executive Officer
BIOTHERAPIES:
BIOTHERAPIES INCORPORATED
By: _______________________________________________
Xx. Xxxx X. Xxxxx, Xx.
Chief Executive Officer
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EXHIBIT A
INVESTMENT AGREEMENT
