Exhibit 10.65
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
EXCLUSIVE LICENSE AGREEMENT
Effective as of November 2, 1998 ("Effective Date"), THE BOARD OF TRUSTEES
OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers
under the laws of the State of California ("STANFORD"), XXXXX XXXXXXX
UNIVERSITY, a Maryland Corporation ("JHU") and Ontogeny, Inc., having a
principal place of business at 00 Xxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000
("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 STANFORD has an assignment of [**] from the laboratory of Xx. Xxxx Xxxxx,
a Xxxxxx Xxxxxx Medical Institute ("HHMI") investigator at STANFORD, as
described in Stanford Docket S96-030 and Xxxxx Xxxxxxx University has an
assignment of [**] from the laboratory of Dr. Xxxxxx Xxxxxxx, an HHMI
investigator at JHU, as described in DM-3250, collectively referred to as
"Invention", and any Licensed Patent, as hereinafter defined, which may
issue to such Invention.
1.2 STANFORD and JHU desire to have the Invention perfected and marketed at
the earliest possible time in order that products resulting therefrom may
be available for public use and benefit.
1.3 LICENSEE desires a license under Invention and Licensed Patent to develop,
manufacture, use, and sell Licensed Product in the field of use of human
and veterinary therapeutics, drug discovery and diagnostics.
1.4 The Invention was made in the course of research supported by the Xxxxxx
Xxxxxx Medical Institute.
2. DEFINITIONS
2.1 "Exclusive" means that, subject to Article 3, STANFORD or JHU shall not
grant further licenses in the Licensed Territory in the Licensed Field of
Use.
2.2 "Licensed Field of Use" means human and veterinary therapeutics, drug
discovery and diagnostics.
2.3 "Licensed Materials" means proprietary materials of JHU or Stanford which
are developed by JH or Stanford as a result of research concerning the
Licensed Invention and identified in Appendix A hereto. Such Appendix to
be periodically updated by reasonable mutual agreement and supplied to
Licensee by Stanford and JHU.
2.4 "Licensed Patent" means U.S. Patent Application, Serial Number 832,340,
filed April 11, 1997, and any divisions, continuations, and continuation
in part patent applications (CIPs) which CIPs are directed to subject
matter specifically described in the above patent application, and any
foreign patent application or equivalent corresponding thereto
and any Letters patent or equivalent thereof issuing thereon or reissue,
reexamination or extension thereof.
2.5 "Licensed Product" means any product or part thereof in the Licensed Field
of Use, the manufacture, use, or sale of which:
(a) Is covered by a valid claim of an issued, unexpired Licensed Patent
directed to the Invention in the country in which it is made, used
or sold. A claim of an issued, unexpired Licensed Patent shall be
presumed to be valid unless and until it has been held to be invalid
by a final judgment of a court of competent jurisdiction from which
no appeal can be or is taken; or
(b) Is covered by any claim being prosecuted in a pending application of
Licensed Patent(s) in the country in which it is made, used or sold
unless such claim has been pending in such application or an earlier
application of Licensed Patent(s) for greater than 5 years; or
(c) Incorporates any of the Licensed Materials.
2.6 "Licensed Territory" means worldwide.
2.7 "Net Sales" means the gross revenue derived by LICENSEE from Licensed
Product, less the following items but only insofar as they actually
pertain to the disposition of such Licensed Product by LICENSEE, are
included in such gross revenue, and are separately billed:
(a) Import, export, excise and sales taxes, and custom duties;
(b) Costs of installation at the place of use;
(c) Credit for returns, allowances, or trades.
(d) Costs of insurance, packing and transportation from the place of
manufacture to the customer's premises or point of installation; and
(e) Customary trade, quantity or cash discounts actually allowed or
taken. Where Licensed Products are not sold separately, but are sold
in combination with or as parts of other products, hereinafter such
combinations referred to as "a Combination Product" and the Licensed
Product and each such other product being referred to as a Component
Product", the Net Sales price to be used for the purpose of
calculating royalties payable in respect of Combination Products
must be determined by multiplying the Net Sales price of the
Combination Product by the percentage value of the Licensed Product
comprising a Component Product contained in the Combination Product,
such percentage value being determined by dividing the current
market value of the Licensed Product comprising a Component Product
by a sum of the separate current market values of each of the
Component Products which are contained in the Combination Product.
The current market value of each of the Component Products must be
for a quantity
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
comparable to that contained in the Combination Product and of the
same class, purity and potency. When no current market value is
available for a Component Product, a reasonable hypothetical market
value for such Component Product based upon the allocation of the
same proportions of costs, reasonable overhead and profits (all of
which must be determined on the basis of generally accepted
accounting principles) as are or should be allocated to similar
Component Products and having an ascertainable market value.
3. GRANT
3.1 (a) STANFORD and JHU hereby grants and LICENSEE hereby accepts a license
in the Licensed Field of Use to make, use, and sell Licensed Product
in the Licensed Territory and to use Invention and Licensed
Materials.
(b) LICENSEE acknowledges that STANFORD and JHU have granted to HHMI a
royalty-free, non-exclusive, non-transferable license with respect
to the Invention, the Licensed Materials, and the Licensed Patents
solely for HHMI's research and other noncommercial purposes.
3.2 Said license set forth in Section 3.1(a) above is Exclusive, including the
right to sublicense pursuant to Article 12, in the Licensed Field of Use
for a term commencing as of the Effective Date and ending, on a
country-by-country basis, [**] from the date of first commercial sale of a
Licensed Product by LICENSEE or sublicensee(s) in such country. LICENSEE
agrees to promptly inform STANFORD in writing of the date of first
commercial sale. If three months prior to the expiration of the exclusive
term, LICENSEE can demonstrate to STANFORD that it has and will continue
to effectively exploit the Inventions, Licensed Patents and Licensed
Materials under this Agreement, then the term of the exclusive rights
granted may be extended, such extension not to be unreasonably withheld by
STANFORD. Upon expiration of the exclusive term of the license, said
license shall be nonexclusive until expiration of the last to expire of
Licensed Patents.
3.3 STANFORD and JHU shall have the right to practice the Invention and use
the Licensed Materials for their own research and other noncommercial
purposes or in non-commercial research collaborations with third party
academic or not-for-profit research institutions, including STANFORD's and
JHU's right to make Licensed Materials available to colleagues at academic
and not-for-profit institutions. Any Licensed Materials that are
transferred to a third party academic or not-for-profit institution by
STANFORD or JHU shall be sent by Ontogeny tinder an MTA. STANFORD and JHU
shall have the right to publish any information included in Licensed
Patents.
4. DILIGENCE
4.1 As an inducement to STANFORD and to JHU to enter into this Agreement,
LICENSEE agrees to use reasonable efforts and diligence to proceed with
the development, manufacture, and sale or lease of Licensed Product and to
diligently develop markets for
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
the Licensed Product. Unless LICENSEE has a Licensed Product available for
commercial sale prior to [**], LICENSEE agrees that STANFORD may terminate
this Agreement. Anytime after [**] years from the date of license,
STANFORD may terminate this Agreement if ONTOGENY or a sublicensee has not
sold a Licensed Product for a period of 1 year and is not demonstrably
engaged in a research, development, manufacturing, marketing or licensing
program, as appropriate, directed toward the development and
commercialization of the licensed subject matter.
4.2 Progress Report - On or before September 1 of each year until LICENSEE
markets a Licensed Product, STANFORD may request in writing that LICENSEE
shall submit a written annual report to STANFORD covering the preceding
year ending June 30, regarding the progress of LICENSEE toward commercial
use of Licensed Product. Such report shall include, as a minimum,
information sufficient to enable STANFORD and JHU to satisfy reporting
requirements of HHMI and for STANFORD to ascertain progress by LICENSEE
toward meeting the diligence requirements of this Article 4.
5. ROYALTIES
5.1 In connection with a Letter of Intent signed by the parties on August 28,
1998, LICENSEE has paid to STANFORD a noncreditable, nonrefundable license
issue royalty of [**], which money was to be held in escrow until the
execution of this Agreement.
5.2 Beginning October 1, 1999 and each October 1 thereafter, LICENSEE also
shall pay to STANFORD the following yearly royalty:
Anniversaries 1-5 [**]
Anniversary 6 and thereafter [**].
If this agreement becomes non-exclusive, the yearly royalty shall be
reduced to an amount equal to 1/n times the yearly royalty in this Section
5.2 owed during the exclusive period of the Agreement where n equals that
number of licensees of the Licensed Patent.
Said yearly royalty payments are nonrefundable, but they are creditable
against earned royalties to the extent provided in Paragraph 5.5.
5.3 In addition, LICENSEE shall pay STANFORD earned royalties on Net Sales as
follows:
Royalties on Net Sales by Ontogeny:
(a) If gene product claimed in Licensed Patent is the drug and Licensed
Patent is the sole patent/patent application covering sale of such
Licensed Product: [**]
(b) If Licensed Patent is the key, but not sole, patent/patent
application having claim(s) covering sale of Licensed Product: [**]
(c) If patent claim of Licensed Patent covers sale of Licensed Product,
but is not key patent/patent application covering sale of Licensed
Product: [**]
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
(d) If product commercialized by LICENSEE is not covered by a claim of
Licensed Patents, but such product is identified or discovered in
material part through the use of a Licensed Product:
on Net Sales in the United States up to [**] [**]
on Net Sales in the United States over [**] [**]
If this agreement becomes non-exclusive, the royalty shall be reduced to
an amount equal to 1/n times the earned royalty in this Section 5.3 owed
during the exclusive period of the Agreement where n equals the number of
licensees of the Licensed Patent.
5.4 LICENSEE also agrees to make the following milestone payments for the
first Licensed Product to attain such a milestone:
Upon IND filing [**]
Initiation of Phase III clinical trials [**]
Upon NDA filing [**]
Said milestone payments are nonrefundable, but they are creditable against
earned royalties in the manner set forth in Section 5.5.
5.5 Creditable payments under Sections 5.2 and 5.4 of this Agreement shall be
an offset to LICENSEE against up to fifty percent (50%) of each earned
royalty payment which LICENSEE would be required to pay pursuant to
Paragraph 5.3 until the entire credit is exhausted.
5.6 If this Agreement is not terminated in accordance with other provisions
hereof, LICENSEE's obligation to pay royalties hereunder shall continue
for so long as LICENSEE, by its activities would, but for the license
granted herein, infringe a valid claim of an unexpired Licensed Patent of
STANFORD covering said activity or, with regard to a product set forth in
Paragraph 5.3(d) which is not covered by a claim of Licensed Patent, until
6 years after first commercial sale of a product set forth in Paragraph
5.3 (d).
5.7 The royalty on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such currency
quoted by the Bank of America (San Francisco) foreign exchange desk, on
the close of business on the last banking day of each calendar quarter.
Royalty payments to STANFORD shall be in U.S. Dollars. All non-U.S. taxes
related to royalty payments shall be paid by LICENSEE and are not
deductible from the payments due STANFORD. In the event that LICENSEE is
required to withhold taxes imposed upon STANFORD for any payment under
this Agreement by virtue of the statutes, laws, codes or governmental
regulations of a foreign country in which Licensed Products are sold, then
such payments will be made by LICENSEE without deduction from the payment
due STANFORD. STANFORD shall assist LICENSEE as reasonably requested by
LICENSEE and at LICENSEE's expense, in recovering such taxes to the extent
possible tinder applicable tax laws and treaties.
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5.8 Within forty-five (45) days after receipt of a statement from STANFORD,
LICENSEE shall reimburse STANFORD for all costs incurred by STANFORD,
prior to the Effective Date which shall not exceed $12,000, in connection
with the preparation, filing, and prosecution of all patent applications
and maintenance of patents corresponding to the Invention. After the
Effective Date, and during the exclusive term of the license, LICENSEE
will be responsible for the filing, prosecution and maintenance of the
Licensed Patent (s) and the costs incurred by LICENSEE related to such
filing, prosecution and maintenance. Licensee may use patent counsel of
its own choosing, reasonably acceptable to STANFORD and JHU, provided that
STANFORD and JHU shall be kept informed of and shall receive copies of all
documentation and substantive actions pertaining to the filing,
prosecution and maintenance of Licensed Patent(s). STANFORD and JHU shall
have reasonable opportunities to participate in decision making and
LICENSEE will use diligent efforts to incorporate STANFORD's and JHU's
reasonable suggestions. If LICENSEE elects not to continue to seek or
maintain patent protection on any Licensed Patent in any country during
the exclusive term of the license, STANFORD and JHU shall have the right,
at its expense, to procure, maintain and enforce in any country such
Licensed Patent(s) and LICENSEE shall have no further rights under the
Licensed Patent(s) in such country.
5.9 Only one royalty is due on each Licensed Product sold by LICENSEE
regardless of whether its manufacture, use or sale are or shall be covered
by more than one patent or patent application included in Licensed Patent
(s) licensed under this Agreement, and no further royalties will be due
for use of such Licensed Product by LICENSEES customers.
5.10 STANFORD and JHU shall work out a mutually agreeable arrangement for the
sharing of revenue underneath this Exclusive License Agreement.
6. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
6.1 Quarterly Earned Royalty Payment and Report - Beginning with the first
sale of a Licensed Product, LICENSEE shall make written reports (even if
there are no sales) and earned royalty payments to STANFORD within
forty-five (45) days after the end of each calendar quarter. This report
shall state the number, description, and aggregate Net Sales of Licensed
Product during such completed calendar quarter, and resulting calculation
pursuant to Paragraph 5.3 of earned royalty payment due STANFORD for such
completed calendar quarter. Concurrent with the making of each such
report, LICENSEE shall include payment due STANFORD of royalties for the
calendar quarter covered by such report.
6.2 Accounting - LICENSEE agrees to keep and maintain records for a period of
three (3) years showing the manufacture, sale, use, and other disposition
of products sold or otherwise disposed of under the license herein
granted. Such records will include general ledger records showing cash
receipts and expenses, and records which include production records,
customers, serial numbers, and related information in sufficient detail to
enable the royalties payable hereunder by LICENSEE to be determined.
LICENSEE further agrees to permit its books and records to be examined by
an independent certified public accountant selected by STANFORD and
acceptable to LICENSEE from time to time to
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the extent necessary to verify reports provided for in Paragraph 6.1. Such
examination is to be made at the expense of STANFORD, except in the event
that the results of the audit reveal an underreporting of royalties due
STANFORD of five percent (5%) or more, then the audit costs shall be paid
by LICENSEE.
7. WARRANTIES
7.1 To the best of STANFORD's OTL and JHU's OTL knowledge, STANFORD and JHU
are sole owners of U.S. Patent Application, Serial No. 832,340, filed
April 11, 1997.
7.2 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by STANFORD or JHU as to the validity
or scope of any Licensed Patent;
(b) A warranty or representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is
or will be free from infringement of patents, copyrights, and other
rights of third parties; however, STANFORD does represent that
neither it nor JHU has received notice of any assertion that any of
the patents or subject inventions infringe upon any third party's
know-how, patent or other intellectual property rights as of the
Effective Date.
(c) An obligation to bring or prosecute actions or suits against third
parties for infringement, except to the extent and in the
circumstances described in Article 11;
(d) Granting by implication, estoppel, or otherwise any licenses or
rights under patents or other rights of STANFORD or JHU or other
persons other than Licensed Patent, regardless of whether such
patents or other rights are dominant or subordinate to any Licensed
Patent; or
(e) A warranty or representation by STANFORD or JHU that any Letters
Patent will issue with respect to Licensed Patent.
7.3 Except as expressly set forth in this Agreement, STANFORD or JHU MAKE NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE INVENTION, THE
LICENSED PATENT, OR THE LICENSED PRODUCT WILL NOT INFRINGE ANY PATENT,
COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED
WARRANTIES.
7.4 LICENSEE agrees that nothing in this Agreement grants LICENSEE any express
or implied license or right under or to U.S. Patent 4,656,134
'Amplification of Eucaryotic Genes' or any patent application
corresponding thereto.
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8. INDEMNITY
8.1 LICENSEE agrees on behalf of itself and each Affiliate to indemnify, hold
harmless, and defend STANFORD, JHU, and Stanford Health Services, JHU,
HHMI and UCSF Stanford Health Care and their respective trustees,
officers, employees, students, and agents against any and all claims,
actions, demands, suits or causes of action for damages, whether arising
from death, illness, personal injury, property damage, and improper
business practices, or otherwise, arising out of (a) any breach or alleged
breach of this Agreement by LICENSEE and to the extent that the LICENSEE
may be responsible for payment to a third party under this indemnity, or
any of its Affiliates or any company that has a controlling interest in
LICENSEE, or (b) any manufacture, use, sale, or other disposition of
Invention, Licensed Patent, Licensed Material, or Licensed Product, by
LICENSEE or its affiliates except if such claims are due to the gross
negligence or willful acts of STANFORD and JHU. STANFORD agrees to
promptly notify LICENSEE in writing of any such claim, other than any
claim for breach of this Agreement by LICENSEE, LICENSEE shall manage and
control, at its own expense, the defense of such claim and its settlement,
utilizing attorney's reasonably acceptable to STANFORD, JHU and HHMI.
LICENSEE agrees not to settle any such claim against any Indemnitee
without STANFORD's, JHU's and HHMI's written consent where such settlement
would include any admission of liability on the part of any Indemnitee,
where the settlement would impose any restriction on the conduct by the
Indemnitee of any of its activities, or where the settlement would not
include an unconditional release of such Indemnitee from all liability for
claims that are the subject matter of such claim. STANFORD, HHMI and JHU
shall not settle any claim covered by the indemnity without the prior
written consent of LICENSEE which consent shall not be unreasonably
withheld or delayed. This section 8.1 will survive termination of this
Agreement.
8.2 Without limiting Section 8.1, STANFORD shall not be liable for any
indirect, special, or consequential damages whatsoever unless due to the
gross negligence or willful misconduct of STANFORD or JHU. STANFORD and
JHU shall have no responsibilities or liabilities whatsoever with respect
to Licensed Products.
8.3 LICENSEE shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
8.4 In addition to the foregoing, LICENSEE shall maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier(s) to cover the activities of LICENSEE and its
sublicensee(s). Upon initiation of clinical trials of the Licensed
Product, such insurance shall provide minimum limits of liability of
$5,000,000 and shall expressly include STANFORD, Stanford Health Services,
HHMI, JHU, their respective trustees, directors, officers, employees,
students, and agents as additional insureds. Such insurance shall be
written to cover claims incurred, discovered, manifested, or made during
or after the expiration of this Agreement up to a limit of 7 years after
the product
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is no longer sold and should be placed with carriers with ratings of at
least A- as rated by A.M. Best. At STANFORD's request, LICENSEE shall
furnish a Certificate of Insurance evidencing primary coverage and
requiring thirty (30) days prior written notice of cancellation or
material change to STANFORD. LICENSEE shall advise STANFORD, in writing,
that it maintains excess liability coverage (following form) over primary
insurance for at least the minimum limits set forth above. All such
insurance of LICENSEE shall be primary coverage; insurance of STANFORD,
HHMI, JHU or Stanford Health Services shall be excess and noncontributory.
9. MARKING
Prior to the issuance of patents on the Invention, LICENSEE agrees to xxxx
Licensed Products (or their containers or labels) made, sold, or otherwise
disposed of by it under the license granted in this Agreement with the
words "Patent Pending," and following the issuance of one or more patents,
with the numbers of the Licensed Patent.
10. STANFORD NAMES AND MARKS
LICENSEE agrees not to identify STANFORD, JHU or HHMI in any promotional
advertising or other promotional materials to be disseminated to the
public or any portion thereof or to use the name of any STANFORD, JHU or
HHMI faculty member, employee, or student or any trademark, service xxxx,
trade name, or symbol of STANFORD, JHU or HHMI or the Stanford Health
Services, or that is associated with any or either of them, without
STANFORD's, JHU's or HHMI's prior written consent.
11. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
11.1 LICENSEE, STANFORD and JHU shall promptly inform the other party of any
suspected infringement of any Licensed Patent by a third party. During the
exclusive period of this Agreement, STANFORD and LICENSEE each shall have
the right to institute an action for infringement of the Licensed
Patent(s) against such third party in accordance with the following:
(a) Within 30 days of notification, if STANFORD and LICENSEE agree to
institute suit jointly, the suit shall be brought in both their
names, the out-of-pocket costs thereof shall be borne equally, and
any recovery or settlement shall be shared equally. LICENSEE and
STANFORD shall agree to the manner in which they shall exercise
control over such action. Each party may, if it so desires, also be
represented by separate counsel of its own selection, the fees for
which counsel shall be paid by such party.
(b) If STANFORD and LICENSEE do not institute suit jointly within 30
days of notification as set forth in 11.1(a), LICENSEE shall be
empowered to bring suit in its own name to enjoin such infringement.
Licensee shall bear the entire cost of such litigation and shall be
entitled to retain the entire amount of any recovery or
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settlement. However, any recovery in excess of litigation costs will
be considered Net Sales, and LICENSEE will pay STANFORD royalties as
indicated in Section 5.3. STANFORD shall provide reasonable
assistance to LICENSEE in the prosecution of any such suit brought
by LICENSEE.
(c) In the event that LICENSEE does not terminate such infringement or
initiate steps to do so within six months of learning of such
infringement, STANFORD may bring suit against infringer at its sole
expense and shall be entitled to retain the entire amount of any
recovery or settlement. LICENSEE will give reasonable assistance to
STANFORD in the prosecution of any such suit brought by STANFORD.
This Paragraph 11.1 shall survive termination of this Agreement.
11.2 Should either STANFORD or LICENSEE commence a suit under the provisions of
Paragraph 11.1 and thereafter elect to abandon the same, it shall give
timely notice to the other party who may, if it so desires, continue
prosecution of such suit, provided, however, that the sharing of expenses
and any recovery in such suit shall be as agreed upon between STANFORD and
LICENSEE.
12. SUBLICENSE(S)
12.1 LICENSEE may grant sublicense(s) to Licensed Patents and Licensed
Materials during the term of this Agreement.
12.2 If LICENSEE is unable or unwilling to serve or develop a potential market
or market territory for which there is a willing sublicensee(s), LICENSEE
will, at STANFORD's request, negotiate in good faith a sublicense(s)
hereunder. Bona fide business concerns of LICENSEE will be considered in
any good faith negotiations for a sublicense under this Agreement.
12.3 Any sublicense(s) granted by LICENSEE under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement, except
that the earned royalty rate specified in the sublicense(s) may be at
higher rates than the rates in this Agreement and the sublicensee may
further sublicense any rights under Licensed Patents or Licensed Materials
only as: (a) needed or implied in the course of distribution, installation
or performance of service as required for the sale to an end user of
Licensed Products or Licensed Materials, or (b) not specifically rejected
in writing by STANFORD within thirty (30) days of written notification of
sub-sublicensee by LICENSEE, any such rejection not being unreasonably
made by STANFORD. Without limiting the foregoing, any such sublicense(s)
also shall expressly include the provisions of Articles 6, 7, 8, 10 and 15
for the benefit of STANFORD, JHU and/or HHMI, as the case may be, and
provide, at LICENSEE'S option, for the transfer of all obligations,
including the payment of royalties specified in such sublicense(s), to
STANFORD or its designee, in the event that this Agreement is terminated.
12.4 LICENSEE agrees to promptly provide STANFORD in confidence with a copy of
the relevant portions of any sublicense granted pursuant to this Article
12.
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
12.5 LICENSEE will pay to STANFORD [**] of all payments received from a
sublicensee in consideration for the sublicensing of Licensed Patents as
well as [**] of any royalties, fees or other amounts received by LICENSEE
as a result of the sublicensee's sale of Licensed Products, excluding
equity payments, milestone payments, amounts paid to fund research and
development activities conducted by LICENSEE, and
12.6 reimbursement of patent costs. If LICENSEE is required to pay royalties to
an additional party, STANFORD agrees in good faith to consider negotiating
a reduction in royalties under this section.
13. TERMINATION
13.1 LICENSEE may terminate this Agreement by giving STANFORD notice in writing
at least thirty (30) days in advance of the effective date of termination
selected by LICENSEE.
13.2 STANFORD and JHU may terminate this Agreement if LICENSEE:
(a) Is in default in payment of royalty or providing of reports;
(b) Is in breach of any provision hereof; or
(c) Provides any false report; and LICENSEE fails to remedy any such
default, breach, or false report within thirty (30) days after
written notice thereof by STANFORD.
13.3 Surviving any termination are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of LICENSEE or STANFORD, accrued or to
accrue, because of any breach or default by the other party; and
(c) The provisions of Articles 6, 7, and 8;
(d) The obligation to pay earned royalties under Paragraph 53(d) shall
survive any termination until 6 years after first commercial sale of
such product..
14. ASSIGNMENT
This Agreement may not be assigned except that LICENSEE may assign this
Agreement to a party which acquires all or substantially all of that
portion of LICENSEE's business to which this Agreement pertains, ,whether
by merger, sale of assets or otherwise
15. ARBITRATION
15.1 Apart from any controversy or claim pertaining to HHMI's rights under
Article 8 or otherwise under this Agreement, any controversy arising under
or related to this
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Agreement, and any disputed claim by either 0 party against the other
under this Agreement excluding any dispute relating to patent validity or
infringement arising under this Agreement, shall be settled by arbitration
in accordance with the Licensing Agreement Arbitration Rules of the
American Arbitration Association.
15.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and STANFORD within
thirty (30) days of such arbitration request. Judgment upon the award
rendered by the arbitrator shall be final and nonappealable and may be
entered in any court having jurisdiction thereof.
15.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court. The
Arbitrator may limit the scope, time and/or issues involved in discovery.
16. NOTICES
All notices under this Agreement shall be deemed to have been fully given
when done in writing and deposited in the United States mail, registered
or certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
000 Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, XX 00000-0000
Attention: Director
To LICENSEE: Ontogeny, Inc.
00 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Attention: President and CEO
Either party may change its address upon written notice to the other
party.
17. WAIVER
None of the terms of this Agreement can be waived except by the written
consent of the party waiving compliance.
18. APPLICABLELAW
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
19. CONFIDENTIALITY
STANFORD and JHU agree that reasonable effort shall be used to maintain
the confidentiality of reports or documents received from LICENSEE by
STANFORD
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pursuant to this Agreement, provided that such reports or documents are
marked as confidential.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIQR
UNIVERSITY
Signature: /s/ Xxxxxxxxx Xx
----------------------------------------------
Name: Xxxxxxxxx Xx
Title: Director Oncology Licensing
Date: November 5, 1998
XXXX XXXXXXX UNIVERSITY
Signature: /s/ Xxxx Xxxxxxx
----------------------------------------------
Name: Xxxx Xxxxxxx, M.D.
Title: Vice Xxxx for Research and Technology
Date: November 16, 1998
ONTOGENY, ICN.
Signature: /s/ Xxxx Xxxxxxxxx
----------------------------------------------
Name: Xxxx Xxxxxxxxx
Title: Vice President, Business Development
Date: December 1, 1998
- 13 -
APPENDIX A - LICENSED MATERIALS
(NONE)
