LICENSE AGREEMENT

Exhibit 10.5

This Agreement, made and entered into as of this 29th day of June 1995 (the “Effective Date”) by and between THE XXXXX XXXXXXX UNIVERSITY, a corporation duly organized and existing under the laws of the State of Maryland and having its principal place of business at Xxxxxxx and 00xx Xxxxxxx, Xxxxxxxxx, Xxxxxxxx 00000, X.X.X. (hereinafter referred to as “XXXXX XXXXXXX”) and SANGAMO BIOSCIENCES, INC. a corporation duly organized under the laws of Delaware and having its principal office at X.X. Xxx 000, Xxxx, Xxxxxxxxxx 00000 (hereinafter referred to as “LICENSEE”).

WITNESSETH

WHEREAS, XXXXX XXXXXXX is the owner of certain Patent Rights (as later defined herein) relating to inventions from its laboratories directed by Xxxxxxxxxx Xxxxxxxxxxxxxx, Ph.D. concerning custom design and development of novel DNA-binding proteins for uses, including but not limited to laboratory reagents, clinical diagnostics and therapeutics and has the right to grant licenses under said Patent Rights, subject only to certain march-in-rights retained by the United States Government, including royalty-free, nonexclusive licenses;

WHEREAS, XXXXX XXXXXXX desires to have the Patent Rights utilized in the public interest and is willing to grant a license thereunder;

WHEREAS, XXXXX XXXXXXX and LICENSEE are parties to a Research Agreement having even date herewith (Appendix D);

WHEREAS, XXXXX XXXXXXX is acting herein for itself;

WHEREAS, LICENSEE has represented XXXXX XXXXXXX to induce XXXXX XXXXXXX to enter into this Agreement that LICENSEE shall commit itself to a thorough, vigorous and diligent program of exploiting the Patent Rights so that public utilization shall result therefrom;

WHEREAS, Xx. Xxxxxxxxxxxxxx will continue to have full academic freedom to continue his scientific investigations and interactions with his colleagues; and

WHEREAS, LICENSEE desires to obtain a license under the Patent Rights upon the terms and conditions hereinafter set forth.

NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, the parties hereto agree as follows:

ARTICLE I - DEFINITIONS

For the purposes of this Agreement, in addition to other terms defined herein, the following words and phrases shall have the following meanings:

1.1 “LICENSEE” shall mean SANGAMO BIOSCIENCES and any Subsidiary of SANGAMO BIOSCIENCES.

1.2 “Subsidiary” shall mean any corporation, company or other entity more than fifty percent (50%) of whose voting stock is owned or controlled directly or indirectly by SANGAMO BIOSCIENCES; any parent corporation, company or other entity which owns, directly or indirectly, more than fifty percent (50%) of the voting stock of SANGAMO BIOSCIENCES; and any corporation, company or other entity in which such parent corporation, company or other entity owns, directly or indirectly, more than fifty percent (50%) of the voting stock.

1.3 “Patent Rights” shall mean the inventions disclosed and claimed in the United States and foreign patents and/or patent applications listed in Appendix A.

1.4 A “Licensed Product” shall mean any product or part thereof which:

(a) is covered in whole or in part by an issued, valid, enforceable, unexpired claim or a pending claim contained in the Patent Rights in the country in which any Licensed Product is made, used or sold;

(b) is manufactured by using a process which is covered in whole or in part by a valid, enforceable, issued, unexpired claim or a pending claim contained in the Patent Rights in the country in which any Licensed Process is used or in which the Licensed Product is used or sold.

1.5 A “Licensed Process” shall mean any process which is covered in whole or in part by a valid, enforceable, issued, unexpired claim or a pending claim contained in the Patent Rights.

1.6 “Net Sales” shall mean the invoiced sales price of Licensed Products to an end-user that is not a Subsidiary or a sublicensee in a country in which such sales would infringe a valid claim contained in the Patent Rights in such country after deducting:

(a) Discounts allowed in amounts customary in the trade;

(b) Sales taxes, tariffs, duties, use taxes and/or other governmental levies directly imposed and with reference to particular sales;

(d) Amounts allowed or credited on returns.

No deductions shall be made for commissions paid to individuals whether they be with independent sales agencies or regularly employed by LICENSEE and on its payroll, or for cost of collections. Licensed Products shall be considered “sold” when billed out or invoiced.

1.7 “Invention” shall mean custom designed novel DNA-binding proteins.

ARTICLE II - GRANT

2.1 XXXXX XXXXXXX hereby grants to LICENSEE the exclusive worldwide right and license to make, have made, use, lease and sell the Licensed Products, and to practice the Licensed Processes, including the right to grant sublicenses, subject to 35USC200-211 and the regulations promulgated thereunder, to the end of the term for which the Patent Rights are granted by the applicable governmental authority, unless sooner terminated as hereinafter provided (the “Term”). XXXXX XXXXXXX reserves the non-transferable royalty-free right to practice the subject matter of any claim within the Patent Rights for its own internal purposes. If Xx. Xxxxxxxxxxxxxx leaves XXXXX XXXXXXX, he shall have the non-transferable, royalty-free right to practice any claim within the Patent Rights for his own academic purposes.

2.2 In order to establish a period of exclusivity for LICENSEE, XXXXX XXXXXXX hereby agrees that it shall not grant any other license to make, have made, use, lease or sell Licensed Products or to practice Licensed Processes except for its internal research activities during the period of time (the “Exclusive Period”) commencing with the Effective Date of this Agreement and terminating with expiration of the last-to-expire patent licensed under this Agreement, unless converted earlier to a nonexclusive license pursuant to Paragraph 4.4 hereof or pursuant to a requirement by the United States Government in accordance with 35USC200-211.

2.3 LICENSEE shall have the right to sublicense all or any part of this license. LICENSEE agrees that any sublicenses granted by it shall provide that the obligations to XXXXX XXXXXXX of Articles II, VIII, IX, X, XIII, XV, and Paragraphs 5.1 and 5.2 of this Agreement shall be binding upon the sublicensees as if it were a party to this Agreement. LICENSEE further agrees to attach copies of these Articles to sublicense agreements.

2.4 LICENSEE agrees to forward to XXXXX XXXXXXX a copy of any and all fully executed sublicense agreements, and further agrees to forward to XXXXX XXXXXXX, quarterly, pursuant to Paragraph 5.2 a copy of such reports received by LICENSEE from its sublicensees during the preceding twelve (12) month period under the sublicense as shall be pertinent to a royalty accounting under said sublicense agreements.

2.5 Subject to Sections 2.6, 2.7 and 15.7 below, the license granted hereunder shall not be construed to confer any rights upon LICENSEE by implication, estoppel or otherwise as to any technology not specifically set forth in Appendix A, Appendix B, Appendix C, and Appendix D hereof.

2.6 XXXXX XXXXXXX hereby also grants to LICENSEE a right of first negotiation at then commercially reasonable terms, to obtain an exclusive license to any Inventions, as previously defined, developed during the term of this Agreement and any extension thereof and pursuant to any Research Agreement between the parties hereto (Appendix D). XXXXX XXXXXXX shall promptly give LICENSEE written notice of any such Inventions, as defined, and LICENSEE shall have one hundred and twenty (120) days from the date of receipt of such notice to give XXXXX XXXXXXX written notice of its intent to exercise such option and complete negotiations. XXXXX XXXXXXX shall not negotiate with any third party regarding these Inventions during the period of LICENSEE’s right to negotiate. During the term of this Agreement and any extension thereof, Xx. Xxxxxxxxxxxxxx shall be free to pursue any scientific investigations of his choice through collaboration with colleagues. Should any such collaboration involve a Licensed Product or Licensed Process, XXXXX XXXXXXX will take the initiative of promptly communicating with these colleagues for the purpose of using its reasonable best efforts to have such colleagues agree to be bound by the terms of this Agreement with regard to Licensed Products and Licensed Processes.

2.7 Appendix B attached hereto contains ideas conceived by Xx. Xxxxxxxxxxxxxx for developing laboratory reagents, diagnostics, and pharmaceuticals relating to chimeric restriction endonucleases. Xx. Xxxxxxxxxxxxxx shall give written notice of any Invention resulting under the Advanced Technology Program within sixty (60) days of the completion of the funding of such program. Any Invention resulting in whole or in part from said ideas which are made pursuant to an award under the Advanced Technology Program where a grant application was filed on March 29, 1995 (Appendix C) shall be assigned to LICENSEE pursuant to Section 15.7 below and Xx. Xxxxxxxxxxxxxx will be named as sole inventor unless another individual makes a creative input to said Invention. LICENSEE shall have the first right of negotiation, under then commercially reasonable terms, to obtain an exclusive, royalty-bearing license under any Invention resulting from said ideas in Appendix B made by Xx. Xxxxxxxxxxxxxx with funding from a source other than the Advanced Technology Program grant.

ARTICLE III - DUE DILIGENCE

3.1 In order to assure the diligent development of the Licensed Products and Licensed Processes, LICENSEE shall either fulfill the due diligence milestones set forth in Paragraph 3.2 below or make the minimum royalty payments set forth in Paragraph 3.3 below.

3.2 LICENSEE’s due diligence milestones shall be a follows:

(a) Within six (6) months from the date of this Agreement, LICENSEE shall deliver a business plan describing a program for the development of the Patent Rights.

(b) Within four (4) years from the Effective Date of this Agreement, LICENSEE shall have spent or caused to be spent, either directly by LICENSEE or indirectly pursuant to agreements entered into by LICENSEE (including Research Agreement funding and grant funding provided by or associated with LICENSEE to XXXXX XXXXXXX), a total of One Million Dollars ($1,000,000) on activities relating to the research and development, marketing, sale, manufacture, lease and use of Licensed Products and Licensed Processes. All amounts expended on Licensed Products and Licensed Processes shall be credited toward the above indicated amounts, including but not limited to salaries, overhead salaries, overhead, capital, equipment, consulting fees and cost of materials.

(c) Within four (4) years from the Effective Date of this Agreement, LICENSEE shall submit an Experimental Plan for, and begin experimental work on, an appropriate testing program for at least one (1) Licensed Product. Such Experimental Plan shall be sufficiently detailed and comprehensive that, in the good faith opinion of LICENSEE and its counselors, the Plan shall, if successful, be reasonably adequate to support a credible and potentially successful Investigative New Drug (IND) application to the U.S. Food and Drug Administration within seven (7) years from the Effective Date of this Agreement.

(d) Within seven (7) years of the Effective Date of this Agreement, LICENSEE shall have submitted a complete Investigative New Drug application to the U.S. FDA, such IND to be supported with appropriate studies and other toxicity and safety tests as may be required by the FDA.

(e) Within three (3) years of the Effective Date of this Agreement, LICENSEE shall have made a first commercial sale of at least one (1) Licensed Product.

3.3 In the event that LICENSEE has failed to meet any particular due diligence milestone set forth in Paragraph 3.2 above on or before the date set forth therein with respect to each such milestone, XXXXX XXXXXXX shall notify LICENSEE thereof and LICENSEE shall have ninety (90) days following such notification either to establish to the reasonable satisfaction of XXXXX XXXXXXX that it has met such milestone or to make the initial penalty payment referred to in Paragraph 3.4 below.

3.4 In the event that LICENSEE shall have failed to establish its achievement of any particular milestone to the reasonable satisfaction of XXXXX XXXXXXX as set forth in Paragraph 3.3 above, XXXXX XXXXXXX shall have the right to terminate this Agreement, unless LICENSEE shall make to XXXXX XXXXXXX the following penalty payments:

(a) To maintain the exclusive rights granted herein on an exclusive basis as set forth in Paragraph 2.2, the amount of Fifty Thousand Dollars ($50,000) in the year of the breach and Fifty Thousand Dollars ($50,000) annually thereafter until the breach is cured; with such amount increasing to One Hundred Thousand Dollars ($100,000) annually commencing the eighth year following the Effective Date of this Agreement.

(b) To maintain its rights granted herein without the exclusivity provisions of Paragraph 2.2, the sum of Twenty-Five Thousand Dollars ($25,000) in the year of the breach and Twenty-Five Thousand Dollars ($25,000) per year thereafter until cured.

The penalty payments described in (a) and (b) above shall only be due within thirty (30) days following the failure of LICENSEE to achieve a milestone or cure such failure within the ninety (90) days set forth in Paragraph 3.3 above. LICENSEE’s obligation to make such penalty payments shall terminate when the applicable milestone has been met.

ARTICLE IV - ROYALTIES

4.1 For the rights, privileges and license granted hereunder, LICENSEE shall pay to XXXXX XXXXXXX in the manner hereinafter provided for so long as LICENSEE by its activities would, but for the licenses granted herein, infringe a valid, enforceable claim of an unexpired Patent Right or until this Agreement shall be terminated as hereinafter provided:

(a) At the time that LICENSEE closes financing equal to a total cumulative equity investment of at least Five Hundred Thousand Dollars ($500,000) (“Initial Financing”), LICENSEE shall issue to XXXXX XXXXXXX that number of common units equal to that portion of the total number of common and preferred units issued with respect to the first Five Hundred Thousand Dollars ($500,000) in equity capital invested in the LICENSEE multiplied by 0.075. If the preferred units issued in any financing have antidilution protection, XXXXX XXXXXXX shall be entitled to equivalent protection for its common units. XXXXX XXXXXXX shall also be entitled, at its sole option, to invest its own funds in the second and any subsequent round of investment funding at a price per unit which is the same price as is offered to other second round investors, for up to a total number of shares such that XXXXX XXXXXXX’ share of equity in the Company would remain at seven-and-one-half percent (7.5%).

(b) At the time that the cumulative equity capital invested in the Company is equal to Two Million Dollars ($2,000,000), LICENSEE shall pay to XXXXX XXXXXXX:

(i) a License Issue Fee of Fifty Thousand Dollars ($50,000) (Ten Thousand Dollars ($10,000) of said License Issue Fee shall be considered an Administrative Signing Fee); and

(ii) shall commence annual maintenance fees of Five Thousand Dollars ($5,000) due on January 1 of each year following the financing date.

(c) LICENSEE shall also pay to XXXXX XXXXXXX a running royalty on Licensed Products during the Exclusive Period for such products as follows:

(i) For sales by LICENSEE and it Subsidiaries:

(1) for reagent products, 3% of the first Ten Million Dollars ($10,000,000) of Net Sales; 2% of the next Twenty Million Dollars ($20,000,000) of Net Sales; and 1% of the Net Sales in excess of Thirty Million Dollars ($30,000,000);

(2) for diagnostic products, 4% of the first Ten Million Dollars ($10,000,000) of Net Sales; 3% of the next Twenty Million Dollars ($20,000,000) of Net Sales; and 2% of Net Sales in excess of Thirty Million Dollars ($30,000,000) ; and

(3) for therapeutic products, 5% of the first Ten Million Dollars ($10,000,000) of Net Sales; 4% of the next Twenty Million Dollars ($20,000,000) of Net Sales; and 3% of Net Sales in excess of Thirty Million Dollars ($30,000,000).

(ii) for sales by sublicensees:

(1) for reagents products, the greater of 2% of Net Sales or thirty percent (30%) of sublicense royalties received by LICENSEE;

(2) for diagnostic products, the greater of 3% of Net Sales or twenty-five (25%) of sublicense royalties received by LICENSEE; and

(3) for therapeutic products, the greater of 4% of Net Sales or twenty percent (20%) of sublicense royalties received by LICENSEE.

(d) LICENSEE shall pay to XXXXX XXXXXXX 2% of initial License Fees (excluding all other forms of payment including, but not limited to, research funding) LICENSEE receives from all sublicensees.

(e) During the nonexclusive period for any Licensed Product, LICENSEE shall pay to XXXXX XXXXXXX a running royalty on the Net Sales of such Licensed Products sold by LICENSEE, its Subsidiaries and its sublicensees equal to one-half (1/2) of the royalty set forth in (c) above for sales during the Exclusive Period.

4.2 No multiple royalties shall be payable because any Licensed Product, its manufacture, lease or sale are or shall be covered by more than one patent application or patent licensed under this Agreement or acquired under a license pursuant to Paragraph 2.6 or 2.7. If a Licensed Product is covered by this Agreement and a License Agreement pursuant to Paragraph 2.6 and/or 2.7 the highest applicable royalty rate will apply. If, as to any Licensed Product, LICENSEE is required to pay a royalty to any third party, the royalty rates set forth in Paragraph 4.1 shall be reduced by one-half (1/2) of the royalty rates paid to the third party, but in no event shall the rates in Paragraph 4.1 be reduced by more than fifty percent (50%).

4.3 Royalty payments shall be paid in United States dollars in Baltimore, Maryland, at the time and in the manner provided in Article V below. If any currency conversion shall be required in connection with the payment of royalties hereunder, such conversion shall be made by using the exchange rate prevailing at the Bank of America Corporation on the last business day of the calendar quarterly reporting period to which such royalty payments relate.

4.4 At the end of the first calendar year beginning after the first commercial sale of a Licensed Product by LICENSEE, a subsidiary, or a sublicensee, and each calendar year thereafter (hereinafter “Royalty Year”), LICENSEE shall pay XXXXX XXXXXXX the greater of royalties payable pursuant to Paragraph 4.1(c) or a minimum annual royalty according to the following schedule:


At the End of the First Royalty Year		- $5,000 (Five Thousand Dollars
At the End of the Second Royalty Year		- $10,000 (Ten Thousand Dollars)
At the End of the Third and Through the Ninth Royalty Year		- $20,000 (Twenty Thousand Dollars)
At the End of the Tenth and Each Subsequent Royalty Years		- $25,000 (Twenty-Five Thousand Dollars)

Said minimum annual royalty shall be paid to XXXXX XXXXXXX within thirty (30) days of the end of each Royalty Year. Failure by LICENSEE to pay the minimum annual royalty required by this Paragraph 4.4 shall give XXXXX XXXXXXX the right to convert the exclusive license granted by this Agreement to a nonexclusive license.

ARTICLE V - REPORTS AND RECORDS

5.1 LICENSEE shall keep full, true and accurate books of account containing all particulars that may be necessary for the purpose of showing the amounts payable to XXXXX XXXXXXX hereunder. Said books of account shall be kept at LICENSEE’s principal place of business or the principal place of business of the appropriate Division of LICENSEE to which this Agreement relates. Said books and the supporting data shall be open at all reasonable times for five (5) years following the end of the calendar year to which they pertain, to the inspection of XXXXX XXXXXXX or its agents for the purpose of verifying LICENSEE’s royalty statement or compliance in other respects with this Agreement.

5.2 Commencing with the first commercial sale of a Licensed Product, LICENSEE, within sixty (60) days after March 31, June 30, September 30 and December 31, of each year, shall deliver to XXXXX XXXXXXX true and accurate reports, giving such particulars of the business conducted by LICENSEE, its Subsidiaries and its sublicensees during the preceding three-month period under this Agreement as shall be pertinent to a royalty accounting hereunder. These shall include at least the following:

(a) All Licensed Products manufactured and sold.

(b) Total xxxxxxxx for Licensed Products sold.

(d) Deductions applicable as provided in Paragraph 1.6.

(e) Total royalties due.

(f) Names and addresses of all sublicensees of LICENSEE.

Where reasonably practical, LICENSEE shall, to the best of its knowledge, subcategorize the Licensed Products sold so as to assign the royalties paid to individual patent(s) of Appendix A. Such subcategorization shall be for XXXXX XXXXXXX administrative purposes only and shall in no way affect any obligations of any part or the amounts of royalties to be paid under this Agreement. Until there has been a first commercial sale of a Licensed Product, the LICENSEE shall give an annual report of LICENSEE’s efforts to achieve a first commercial sale.

5.3 With each such report submitted, LICENSEE shall pay to XXXXX XXXXXXX the royalties due and payable under this Agreement. If no royalties shall be due, LICENSEE shall so report.

5.4 The royalty payments set forth in this Agreement shall, if overdue, bear interest until payment at a per annum rate two percent (2%) above the prime rate in effect at Bank of America on the due date. The payment of such interest shall not foreclose XXXXX XXXXXXX from exercising any other rights it may have as a consequence of the lateness of any payments.

ARTICLE VI - PATENT PROSECUTION

6.1 XXXXX XXXXXXX represents that Appendix A, as amended from time-to-time, contains an accurate and complete listing of the patent applications and issued patents included within the Patent Rights. XXXXX XXXXXXX agrees to promptly amend Appendix A within thirty (30) days of any new Invention made pursuant to the ATP.

6.2 XXXXX XXXXXXX warrants that it has the right to grant the rights and licenses granted herein to LICENSEE free and clear of all liens and encumbrances, except to the extent set forth in Article XII.

6.3 Within ninety (90) days of the completion of the financing set forth in Paragraph 4.1(b), LICENSEE shall reimburse XXXXX XXXXXXX for previously-incurred as well as future expenses paid to third parties relating to drafting, filing, prosecuting and maintaining U.S. and foreign patent applications and patents included in the Patent Rights; provided, however, if such reimbursement amount exceeds Fifty Thousand Dollars ($50,000), then the amount above $50,000 shall be due twenty-four (24) months from the date of the initial payment, XXXXX XXXXXXX shall, on LICENSEE’s request and expense, file, prosecute, and maintain appropriate additional foreign patent applications and patents directed to the inventions which will be included in the Patent Rights and LICENSEE shall be licensed thereunder. If LICENSEE elects not to pay expenses associated with filing, prosecuting, and maintaining U.S. and foreign patent applications and patents directed to the inventions, XXXXX XXXXXXX may file, prosecute, and maintain such U.S. and foreign patent applications and patents at its own expense and LICENSEE shall not be licensed thereunder.

6.4 With regard to substantive correspondence, patent applications and patents included in the Patent Rights, XXXXX XXXXXXX shall in a timely manner send LICENSEE (a) copies of all proposed patent applications and correspondence to the respective patent office, give LICENSEE an opportunity to comment thereon, and incorporate such changes as reasonably requested by LICENSEE; and copies of correspondence from the patent office.

6.5 XXXXX XXXXXXX shall reasonably respond to LICENSEE’s request for change in outside patent counsel.

ARTICLE VII - INFRINGEMENT

7.1 Each party to this Agreement shall promptly notify the other party in writing of any alleged infringement and of any available evidence of infringement by a third party of any patents within the Patent Rights of which it becomes aware.

7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, LICENSEE hereby agrees that XXXXX XXXXXXX may join LICENSEE as a party plaintiff in any such suit, without expense to XXXXX XXXXXXX, provided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of XXXXX XXXXXXX, which consent shall not unreasonably be withheld. LICENSEE shall indemnify XXXXX XXXXXXX against any order for costs or other expenses that may be made against XXXXX XXXXXXX in such proceedings. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery damages for past infringement derived therefrom, after payments to XXXXX XXXXXXX of the royalty rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery, damages or any other amount received in any form of disputation and/or in settlement of any infringement or alleged infringement of the Patent Rights remaining after LICENSEE has reimbursed itself for all costs, including legal costs, associated with the prosecution.

7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting any infringement action, or if LICENSEE shall notify XXXXX XXXXXXX at any time prior thereto of its intention not to bring suit against any alleged infringer, then, XXXXX XXXXXXX shall have the right, but shall not be obligated to prosecute at its own expense any infringement of the Patent Rights, and XXXXX XXXXXXX may, for such purposes, use the name of LICENSEE as party plaintiff without expense to LICENSEE, and XXXXX XXXXXXX shall keep any recovery or damages derived therefrom.

7.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against LICENSEE, XXXXX XXXXXXX at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and participate in the defense of the action at their own expense.

7.5 In any infringement suit that any party hereto may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.

7.6 LICENSEE, during the Exclusive Period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer under the Patent Rights to avoid future infringements. Amounts received from any such sublicensee constituting retroactive royalties shall be considered amounts received in settlement and accounted for under Paragraph 7.2 above. Otherwise, amounts received from such sublicensee shall be treated in accordance with Paragraph 4.1(c) above.

ARTICLE VIII - LIABILITY

8.1 Inasmuch as XXXXX XXXXXXX will not, under the provisions of this Agreement or otherwise, have control over the manner in which LICENSEE, or its Subsidiaries or its agents or its sublicensees or those operating for its account, or third parties who purchase Licensed Products from any of the foregoing entities, practice any invention encompassed by the license granted herein, LICENSEE shall defend and hold XXXXX XXXXXXX, it trustees, officers, employees, students, and affiliates harmless as against any judgments, fees, expenses or other costs (including reasonable attorneys’ fees) arising from or incidental to any product liability or other lawsuit brought as a consequence of the practice of said invention by any of the foregoing entities, whether or not XXXXX XXXXXXX is named as party defendant in any such lawsuit. LICENSEE shall have the right to defend such a product liability lawsuit with counsel of its own choosing and XXXXX XXXXXXX will cooperate in the defense of such action at LICENSEE’s expense. Practice of the Invention encompassed by the license granted herein by a Subsidiary or an agent or a sublicensee, or a third party on behalf of or for the account of LICENSEE or by a third party who purchases Licensed Products from any of the foregoing shall be considered LICENSEE’s practice of said invention for purposes of this Paragraph 8.1. The provisions of this Paragraph 8.1 shall survive termination of this Agreement.

8.2 LICENSEE shall maintain or cause to be maintained, prior to the first planned use of Licensed Products or Licensed Processes in humans, product liability insurance or other protection reasonably acceptable to XXXXX XXXXXXX which shall protect LICENSEE and XXXXX XXXXXXX in regard to events covered by Paragraph 8.1 above. LICENSEE will disclose to XXXXX XXXXXXX the amount and kind of product liability insurance it obtains, will give XXXXX XXXXXXX a copy of the certificate of insurance, and will increase or change the kind of insurance at the reasonable request of XXXXX XXXXXXX, provided such insurance is available to LICENSEE at commercially reasonable rates.

8.3 Except as otherwise expressly set forth in this Agreement, XXXXX XXXXXXX makes no representations and extend no warranties of any kind, either express or implied, including but not limited to warranties of merchantability, fitness for a particular purpose, and validity of Patent Rights claims, issued or pending.

8.4 No liability under this Agreement shall result to a party from delay in performance caused by force majeure, that is, circumstances beyond the reasonable control of the party affected thereby, including, without limitation, acts of God, earthquake, fire, flood, war, government regulations, labor unrest, or shortage of or an inability to obtain material or equipment.

ARTICLE IX - EXPORT CONTROLS

It is understood that XXXXX XXXXXXX is subject to United States laws and regulations controlling the export of technical data, computer software, laboratory prototypes and other commodities (including the Arms Export Control Act, as amended and the Export Administration Act of 1979), and that their obligations hereunder are contingent on compliance with applicable United States export laws and regulations. The transfer of certain technical data and commodities may require a license from the cognizant agency of the United States Government and/or written assurances by LICENSEE that LICENSEE shall not export data or commodities to certain foreign countries without prior approval of such agency. XXXXX XXXXXXX neither represents that a license shall not be required nor that, if required, it shall be issued.

ARTICLE X - NON-USE OF NAMES

LICENSEE shall not use the name of XXXXX XXXXXXX, nor any of its employees, or any adaptation thereof, in any advertising, promotional or sales literature without prior written consent obtained from XXXXX XXXXXXX in each case, except that LICENSEE may state that it is licensed by XXXXX XXXXXXX under one or more of the patents and/or applications comprising the Patent Rights.

ARTICLE XI - ASSIGNMENT

This Agreement may not be assigned, in whole or in part, except in conjunction with the sale of the entire business, or an operating business division, of LICENSEE to which the Patent Rights relate, without the prior consent of XXXXX XXXXXXX, which consent shall not be unreasonably withheld.

ARTICLE XII - GOVERNMENT RIGHTS

12.1 Pursuant to 35USC202, XXXXX XXXXXXX has elected to take all rights, title and interest in the inventions forming the basis of the Patent Rights.

12.2 LICENSEE hereby specifically agrees to cooperate with XXXXX XXXXXXX in abiding by the terms and conditions imposed on XXXXX XXXXXXX pursuant to 35USC200-211 and the regulations promulgated thereunder.

12.3 XXXXX XXXXXXX warrants that it has compiled with and will continue to comply with all duties and obligations running from XXXXX XXXXXXX to the Government pursuant to 35USC200-211 and the regulations promulgated thereunder.

12.4 LICENSEE agrees to manufacture in the United States those Licensed Products which are sold and used in the United States.

ARTICLE XIII - TERMINATION

13.1 This Agreement shall terminate if LICENSEE dissolves, unless this Agreement has been assigned prior to the date of dissolution.

13.2 Should LICENSEE fail to pay XXXXX XXXXXXX royalties due and payable hereunder, XXXXX XXXXXXX shall have the right to terminate this Agreement on sixty (60) days’ written notice, unless LICENSEE shall pay XXXXX XXXXXXX within the sixty (60) day period, all such royalties and interest due and payable. Upon the expiration of the sixty (60) day period, if LICENSEE shall not have paid all such royalties and interest due and payable, the rights, privileges and license granted hereunder shall terminate.

13.3 Upon any material breach or default of this Agreement by LICENSEE other than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove, which shall always take precedence in that order over any material breach or default referred to in this Paragraph 13.3, XXXXX XXXXXXX shall have the right to terminate this Agreement and the rights, privileges and license granted hereunder by giving ninety (90) days’ notice to LICENSEE. Such termination shall become effective unless LICENSEE shall have cured any such breach or default prior to the expiration of the ninety (90) day period.

13.4 LICENSEE shall have the right to terminate this Agreement at any time on six (6) months’ notice to XXXXX XXXXXXX and upon payment of all amounts due XXXXX XXXXXXX.

13.5 Upon termination of this Agreement for any reason, nothing herein shall be construed to release either party from any obligation that matured prior to the effective date of such termination. LICENSEE and any Subsidiary and sublicensee thereof may, however, after the effective date of such termination, sell all Licensed Products, and complete Licensed Products in the process of manufacture at the time of such termination and sell the same, provided that LICENSEE shall pay to XXXXX XXXXXXX the royalties thereon as required by Article IV of this Agreement and shall submit the reports required by Article V hereof on the sales of Licensed Products.

13.6 Upon termination of this Agreement for any reason during the Exclusive Period, any sublicensee not then in default shall have the right to seek a license from XXXXX XXXXXXX under the same terms and conditions as set forth hereunder.

13.7 The provisions of Paragraph 8.1, Article IX, and Article X shall survive termination of this Agreement.

ARTICLE XIV - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS

14.1 Any payment, notice or other communication pursuant to this Agreement shall be sufficiently made or given on the date of mailing if sent to such party by certified first class mail, postage prepaid, addressed to it at its address below or as it shall designate by written notice given to the other party:

In the case of XXXXX XXXXXXX:

Xxxxx Xxxxxxx University

000 Xxxxxxxxx Xxxx

Xxxxxxx and 00xx Xxxxxxx

Xxxxxxxxx, Xxxxxxxx 00000

Attention: Xxxxx X. Xxxxx, Ph.D.

With a copy to:

Associate Xxxx for Corporate Affairs

Xxxxx Xxxxxxx University

School of Hygiene and Public Health

000 Xxxxxx Xxxxx, Xxxxx 000

Xxxxxxxxx, Xxxxxxxx 00000-0000

Attention: Xxxx X. Xxxxxxxx, Ph.D.

In the case of LICENSEE:

Xxxxxx Xxxxxxxx

Sangamo BioSciences, Inc.

X.X. Xxx 000

Xxxx, Xxxxxxxxxx 00000

With a copy to:

Xxxxxxx Xxxxxxxxx, Esq.

Xxxxxxx, Phleger & Xxxxxxxx

Two Embarcadero Place

0000 Xxxx Xxxx

Xxxx Xxxx, Xxxxxxxxxx 00000

ARTICLE XV - MISCELLANEOUS PROVISIONS

15.1 This Agreement shall be construed, governed, interpreted and applied in accordance with the laws of the State of Maryland, U.S.A., except that questions affecting the validity, construction and effect of any patent licensed hereunder, shall be determined by the law of the country in which the patent was granted.

15.2 The parties hereto acknowledge that this Agreement sets forth the entire Agreement and understanding of the parties hereto as to the subject matter hereof, and shall not be subject to any change or modification except by the execution of a written instrument subscribed to by the parties hereto.

15.3 The provisions of this Agreement are severable, and in the event that any provisions of this Agreement shall be determined to be invalid or unenforceable under any controlling body of the law, such invalidity or unenforceability shall not in any way affect the validity or enforceability of the remaining provisions hereof.

15.4 LICENSEE agrees to xxxx the Licensed Products sold in the United States with all applicable United States patent numbers. All Licensed Products shipped to or sold in other countries shall be marked in such a manner as to conform with the patent laws and practice of the country of manufacture or sale.

15.5 The failure of any party to assert a right hereunder or to insist upon compliance with any term or condition of this Agreement shall not constitute a waiver of that right or excuse a similar subsequent failure to perform any such term or condition by the other party.

15.6 Claims, disputes, or controversies concerning the validity, construction, or effect of any patent licensed hereunder shall be resolved in any court having jurisdiction thereof.

15.7 A grant application under the Advanced Technology Program was filed on Xxxxx 00, 0000 (Xxxxxxxx X). If a grant is awarded, any Invention made pursuant thereto where an investigator at XXXXX XXXXXXX is the sole inventor or a coinventor shall be assigned to LICENSEE. Such Invention shall be assigned hereunder and shall thereafter fall within the definition of Patent Rights and therefore shall be subject to Sections 3.2, 3.3 and 3.4 hereof and to the royalty payments required by Sections 4.1(c)(i), 4.1(d) and 4.4 hereof as part of the rights licensed hereunder.

IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and duly executed this Agreement the day and year set forth below.


XXXXX XXXXXXX UNIVERSITY

By:
		Xxxxxxx X. Xxxxxx, Xx., MBA, CPA
		Senior Associate Xxxx, Finance and Administration

Date:


OR

By:		/s/ Xxxx X. Xxxxxxxx
		Xxxx X. Xxxxxxxx, Ph.D.
		Associate Xxxx, Corporate Affairs

Date:		July 10, 1995

AND

By:		/s/ Xxxx Xxxxxxxx
		Xxxx Xxxxxxxx, Ph.D.
		Chairman, Environmental Health Sciences

Date:		7/10/95

SANGAMO BIOSCIENCES, INC.

By:		/s/ Xxxxxx X. Xxxxxxxx XX
		Xxxxxx X. Xxxxxxxx XX
		President

Date:		June 30, 1995

APPENDIX A

PATENTS:

APPENDIX B

INVENTION DISCLOSURES:

APPENDIX C

ADVANCED TECHNOLOGY PROGRAM GRANT PROPOSAL:

APPENDIX D

RESEARCH AGREEMENT:

THE XXXXX XXXXXXX UNIVERSITY

BALTIMORE, MD 21218-2696

Xxxx X. Xxxxxxx, C.F.A.

Office of Technology Transfer Director

708 N Xxxxx Xxxx Center

0000 X. Xxxxxxx Xxxxxx

(000) 000-0000

Fax (000) 000-0000

AMENDMENT NO. 1

TO THE LICENSE AGREEMENT

between Xxxxx Xxxxxxx University and Sangamo Biosciences, Inc.

This Amendment No. 1, dated June 1, 1998 (“Effective Date”) to the License Agreement dated June 29, 1995 concerning the licensing and other matters of patent properties referred to in the License Agreement as “Functional Domains in Flavobacterium Okeanokoites (FOK1) Restriction Endonuclease”, US Patent Application Serial Number 07/862,831, filed April 3, 1992, JHU Reference C-1191, (Xx. Xxxxxxxxxx Xxxxxxxxxxxxxx, Inventor) and other Patent Rights, is entered into between Xxxxx Xxxxxxx University, a not-for-profit educational institution having an address at 0000 X. Xxxxxxx Xxxxxx, Xxxxxxxxx, XX (“XXXXX XXXXXXX” or “JHU”) and Sangamo Biosciences, Inc., a corporation of the State of Delaware and having a principal place of business at Point Richmond Tech Center, 000 Xxxxx Xxxx, Xxxxx X-000, Xxxxxxxx, XX (“LICENSEE”).

This document amends the License Agreement by the following:

1. In Paragraph 4.1, delete in its entirety paragraph 4.1.(c). Replace with new Paragraph 4.1.(c):

4.1.(c) LICENSEE shall also pay to XXXXX XXXXXXX a running royalty on Licensed Products as follows:

(i) for therapeutic products, Two Percent (2%) of Net Sales

(ii) for diagnostic products, One Percent (1%) of Net Sales

(iii) for reagent products, One Half Percent (0.5%) of Net Sales

2. Delete in its entirety Paragraph 4.4, and replace with the following new Paragraph 4.4:

4.4 LICENSEE shall pay to XXXXX XXXXXXX a minimum annual royalty according to the following schedule and within thirty (30) days of the end of the calendar year:


1999,2000		$20,000 per year
2001-2005		$15,000 per year
2006 and until termination		$25,000 per year

Amendment No. 1

Sangamo License Agreement

Page 2

Failure by LICENSEE to pay the minimum annual royalty required by this Paragraph 4.4 shall give XXXXX XXXXXXX the right to convert the exclusive license granted by this Agreement to a nonexclusive license.

3. Add new Paragraph 4.5 as follows:

4.5 For the rights, privileges and license granted by Amendment No. 1, dated , LICENSEE agrees to pay to XXXXX XXXXXXX the sum of One Hundred and Twenty Thousand Dollars ($120,000) , payable in equal installments within eighteen months of the Effective Date of Amendment No. 1.

4. Add new Paragraph 6.6 as follows:

6.6 LICENSEE shall have the right, but not the obligation, to assume primary responsibility for patent prosecution. XXXXX XXXXXXX hereby agrees to reasonably cooperate with the transfer of case files, execution of appropriate documents and any other matters needed for LICENSEE to assume such responsibility. In such case, LICENSEE shall provide to JHU copies of all correspondence from and to the US PTO and international equivalents with sufficient time to allow for comment by JHU.

LICENSEE shall endeavor to accommodate JHU’s comments into a reasonable patent prosecution strategy. In no case shall LICENSEE abandon any application or patent in any country without prior approval from JHU. In any country where the LICENSEE elects not to have a patent application filed or to pay expenses associated with filing, prosecuting, or maintaining a patent application or patent, LICENSEE shall notify JHU allowing at least thirty (30) days for JHU to assume such responsibilities. JHU may file, prosecute, and/or maintain a patent application or patent at its own expense and for its own exclusive benefit and the LICENSEE thereafter shall not be licensed under such patent or patent application. Upon termination of this Agreement, LICENSEE shall immediately transfer all case files, execute any appropriate documents related to patent matters and cooperate in any other matters needed for JHU to assume responsibility for patent prosecution.

5. In Paragraph 13.7, add after “Article X”, insert, “Paragraph 4.5 and Paragraph 6.6”.

Amendment No. 1

Sangamo License Agreement

Page 3

6. Add new Paragraph 15.8 as follows:

15.8 With respect to “Methods for Inactivating Target DNA and For Detecting Conformation Change in a Nucleic Acid”, Inventor, Xxxxxxxxxx Xxxxxxxxxxxxxx, US Patent Application SN 08/647,449, Filed 5/7/96 (JHU Docket: C-1288), LICENSEE hereby acknowledges and agrees that Xx. Xxxxxxxxxxxxxx is the sole inventor of this property.

7. In Appendix A, add:

5. “General Method to Clone Hybrid Restriction Endonucleases Using lig Gene” Xxxxxxxxxx Xxxxxxxxxxxxxx, US Patent Application SN 08/575,361 Filed 12/24/95 JHU Docket: C-1274

6. “Methods for Inactivating Target DNA and For Detecting Conformation Change in a Nucleic Acid”

Xxxxxxxxxx Xxxxxxxxxxxxxx,

US Patent Application SN 08/647,449 Filed 5/7/96 JHU Docket: C-1288

8. Except as expressly modified by this Amendment No. 1, the License Agreement shall remain in full force and effect.

9. In Paragraph 3.2(e) change it to read, “Within seven (7) years of the Effective Date of this Agreement, LICENSEE shall have made a commercial sale of at least one (1) Licensed Product.”

IN WITNESS WHEREOF, the parties have caused this Amendment to be duly executed and delivered as of the date first written above.


For Sangamo Biosciences, Inc.:

/s/ Xxxxxx X. Xxxxxxxx XX				7/16/98
Xxxxxx X. Xxxxxxxx XX				Date
President

For Xxxxx Xxxxxxx University:

/s/ Xxxxxxx X. Xxxxxx, J.				7/8/98
Xxxxxxx X. Xxxxxx, J., MBA, CPA				Date
Senior Associate Xxxx, Finance and Administration

Sangamo Amendment #1 (6/29/98)

Amendment No. 1

Sangamo License Agreement

Page 4

Xx. Xxxx X. Xxxxxxx

Director, Office of Technology Transfer

Xxxxx Xxxxxxx University

708N Xxxxx Xxxx Center

0000 X. Xxxxxxx Xxxxxx

Xxxxxxxxx, XX 00000-0000

Dear Nina:

As you know, the License Agreement between Xxxxx Xxxxxxx University (“JHU”) and Sangamo BioSciences, Inc. dated June 29, 1995, in Article IV(a) at page 9, grants JHU certain rights to invest its own funds in investment funding of Sangamo.

Sangamo has filed a Registration Statement with the SEC for an initial public offering (“IPO”) which we expect will take place in late March or April 2000. While we understand that Article IV(a) was intended to apply to private financings prior to our IPO, Xxxxxx Bros., our lead underwriter, has asked us to have you confirm that paragraph (a) of Article IV will terminate upon our IPO. In accordance with our telephone conversation on March 9, 2000, in order to make it completely clear that Article IV(a) will not apply to our IPO and thereafter Sangamo will pay JHU $25,000 upon receipt of a signed copy of this letter and an additional $25,000 on September 15, 2000 in consideration for the following amendment to the License Agreement and Agreement:

Article IV(a) is hereby amended by adding the following sentence at the end of paragraph (a): “THE PROVISIONS OF THIS PARAGRAPH WILL TERMINATE UPON THE SALE BY THE COMPANY OF ITS COMMON STOCK IN ITS INITIAL PUBLIC OFFERING MADE PURSUANT TO A REGISTRATION STATEMENT DECLARED EFFECTIVE BY THE SECURITIES AND EXCHANGE COMMISSION.”

JHU acknowledges that Sangamo has complied with all of the provisions of Article IV(a).

Please sign a copy of this letter and return it to me at your earliest convenience. We appreciate your cooperation in helping us become a public company.

Sincerely,

Xxxxxx Xxxxxxxx

Amendment No. 1

Sangamo License Agreement

Page 5


THE FOREGOING IS AGREED TO:

XXXXX XXXXXXX UNIVERSITY

By:

Dated:		, 2000

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