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EXHIBIT 10.26
AMENDED AND RESTATED RESEARCH SERVICES AND
INTELLECTUAL PROPERTY AGREEMENT
This Amended and Restated Services and Intellectual Property
Agreement (this "Agreement") is effective as of January 1, 1997 (the "Effective
Date") by and between Corixa Corporation ("Corixa"), a Delaware corporation, and
Infectious Disease Research Institute ("IDRI"), a Washington not-for-profit
corporation.
WHEREAS, Corixa and IDRI are parties to that certain Research
Services and Intellectual Property Agreement dated as of September 29, 1994 (the
"Prior Agreement");
WHEREAS, IDRI has been established as an independent institute
for the purposes of engaging in research related to infectious disease and such
other research as may be determined by IDRI pursuant to the direction of its
independent Management Board; and
WHEREAS, Corixa desires to continue to sponsor certain
research of IDRI and enjoy all ownership and similar rights in and to certain
Inventions (as defined below) that result from the continued performance of IDRI
research (except as limited herein), and IDRI continues to desire to receive
funding in exchange for the performance of such research and the enjoyment of
such rights.
WHEREAS, Corixa and IDRI each, desire to terminate the Prior
Agreement in its entirety and accept the rights and obligations created pursuant
hereto in lieu of the rights and obligations under the Prior Agreement.
NOW, THEREFORE, in consideration of the mutual promises set
forth herein and other good and valuable consideration, the parties agree as
follows:
1. DEFINITIONS
As used in this Agreement, the following terms shall have the
meanings indicated:
1.1 "Affiliate" as applied to Corixa shall mean any company,
partnership, joint venture, trust or other legal entity or organization in
whatever country organized, that controls, is controlled by or is under common
control with Corixa. The term "control" means possession, direct or indirect, of
the power to direct or cause the direction of management and policies whether
through the ownership of voting securities, by contract or otherwise.
1.2 "Agreement Year" shall mean the twelve (12) month period
beginning on January 1, 1997, and each subsequent twelve (12) month period
thereafter.
1.3 "Course of Work for IDRI" shall mean (i) in the
performance of scientific or technological work for or on behalf of IDRI, or
(ii) using the time, materials or facilities of IDRI or Corixa.
1.4 "Field of Research" shall mean scientific research
produced in the Course of Work for IDRI relating to antigen discovery for use in
infectious disease vaccines and diagnostics.
1.5 "IDRI Material" shall mean any substance, composition,
biological material or other material that is discovered, conceived, reduced to
practice, produced, developed or derived by an Investigator in the Course of
Work for IDRI.
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1.6 "Information" shall mean any data, formulas, know-how,
technical information, process information or other information that is produced
by an Investigator in the Course of Work for IDRI.
1.7 "Invention(s)" shall mean any process, use, article of
manufacture, composition of matter or apparatus, whether or not patentable, that
is made, developed, conceived or first actually or constructively reduced to
practice (in whole or in part) by an Investigator (either alone or jointly with
others) in the Course of Work for IDRI.
1.8 "Investigator" means (i) any member of IDRI's professional
staff or any IDRI employee who is involved in scientific or technological work
or who may be reasonably expected to develop Information, Inventions or IDRI
Material, or (ii) a person who works at IDRI and is involved in scientific or
technological work or is reasonably expected to develop Information, Inventions
or IDRI Material, or (iii) any person who performs scientific or technological
work for or on behalf of IDRI.
1.9 "Net Sales" of a product shall mean all revenues actually
received by Corixa or any Affiliate with respect to transfer of the product to a
person or entity that is not an Affiliate, less (i) any allowances actually made
and taken for returns; shipping and insurance costs actually paid; cash
discounts actually allowed in amounts and for purposes customary in the trade;
sales, use, value-added and similar taxes and duties and similar governmental
assessments (on products as shipped); provided such amounts would otherwise have
been included in "Net Sales."
1.10 "Patent Right(s)" shall mean all United States patent
applications, including all divisions, continuations and continuations-in-part
thereof, and all foreign patent applications or the equivalent thereof, and all
Letters Patent or the equivalent thereof issuing thereon, and all reissues,
re-examinations and extensions thereof, insofar as they contain, represent or
assert one or more claims to an Invention.
1.11 "Director of IDRI" shall mean that person appointed by
the IDRI Management Board as Executive Director of IDRI, and such person's
successors as appointed from time to time by the IDRI Management Board.
1.12 "Research Services" shall mean any research conducted by
an Investigator in the Field of Research that is funded by Corixa pursuant to
Section 5 below, whether or not such research is conducted during normal
business hours or on the premises of IDRI.
1.13 The use herein of the plural shall include the singular,
and the use of the masculine shall include the feminine.
2. TERM; RENEWAL
2.1 Initial Term. The initial term of this Agreement shall be
from the Effective Date until December 31, 1999, unless this Agreement is
earlier terminated pursuant to Section 16 hereof.
2.2 Renewal. Upon the expiration of the initial term described
in Section 2.1 above, this Agreement may be renewed at the sole discretion of
Corixa for one or more additional three (3) year terms.
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3. SERVICES PROVIDED BY CORIXA TO IDRI
Subject to the provisions of this Agreement, and upon IDRI's
reasonable request, Corixa agrees to perform for IDRI the following services
(collectively, "IDRI Services"):
3.1 Medical Benefits. Corixa shall provide the employees of
IDRI medical (including vision) insurance benefits substantially similar to
those benefits offered, from time to time, by Corixa to Corixa's own employees;
it being understood that IDRI shall be responsible for payment in full for such
benefits. Corixa's monthly costs of providing such medical insurance benefits
and therefore the amounts to be billed to IDRI shall be in accordance with
Schedule 3 as amended from time to time and shall include all costs incurred in
setting up such medical benefits and all costs incurred by Corixa in maintaining
such medical benefits, including but not limited to the payment of any premiums
required.
3.2 Other Employee Benefits. Corixa shall, at IDRI's option,
provide to the employees of IDRI dental insurance benefits, disability benefits,
and benefits under any life and accidental death and dismemberment plan, and
occupational health services plan, substantially similar to the benefits
provided, from time to time, by Corixa to Corixa's own employees; it being
understood that IDRI shall be responsible for payment in full for such benefits
in accordance with Schedule 3 as amended from time to time. IDRI employees shall
not participate in Corixa's 401(k) benefits plan, IRC Section 125 flexible
benefit plan, profit sharing, key person, executive bonus, or any other employee
benefit programs.
3.3 Biomedical Research Facilities. Corixa shall provide to
IDRI reasonable biomedical research space at Corixa's facilities leased from
Health Science Properties, Inc., 0000 Xxxxxxxx Xxxxxx, Xxxxx 000,
Xxxxxxx,Xxxxxxxxxx 00000 (the "Research Space"). Corixa shall xxxx IDRI in
accordance with Schedule 3 for such Research Space, which amount shall be
adjusted by Corixa and IDRI from time to time pro rata to reflect future changes
in the percentage and cost to Corixa of Corixa's facilities at 0000 Xxxxxxxx
Xxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000 used by IDRI.
3.4 Biomedical Research Facility Services. Corixa shall
provide to IDRI facility services at Corixa's facilities from Health Science
Properties, Inc., in 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000
including: utilities; use of copiers, telephones and facsimile machines; library
services; and mail room services. All services provided to IDRI pursuant to this
Section 3.4 shall be charged to IDRI in accordance with Schedule 3 as amended
from time to time which charges shall be at the same rate charged to Corixa by
the facility or third party service providers.
3.5 Equipment Sharing. Each of IDRI and Corixa shall allow the
other the reasonable use of certain scientific and computer equipment from time
to time as reasonably requested, subject in all cases to each party's right to
limit access based upon its own demand for such equipment. Corixa and IDRI agree
that the vast majority equipment provided by Corixa and any use of IDRI's
equipment by Corixa is minor. IDRI shall pay Corixa for the maintenance and cost
of the equipment as provided for in Schedule 3 as amended from time to time.
3.6 Insurance. IDRI shall be covered by Corixa's casualty and
property insurance and shall pay a pro rata portion of Corixa's direct charges
for premiums based on the percentage of Corixa's facilities utilized by IDRI.
IDRI's charge for such premiums shall be in accordance with Schedule 3 and shall
be adjusted by Corixa and IDRI from time to time in accordance with changes in
Corixa's premiums and the amount of research space occupied by IDRI. IDRI made
an initial payment of $1,320 upon execution of the Prior Agreement.
3.7 Other Services and Supplies. Corixa may also provide to
IDRI, at Corixa's sole discretion, other services requested from time to time by
IDRI, including reasonable secretarial, administrative, and laboratory and
facility support services, including IDRI's allocated share of any directly
consumed supplies. IDRI's charge for such services and supplies shall be in
accordance with Schedule 3 as amended from time to time Corixa shall determine
the method of determining Corixa's costs for such other services which in no
event shall be more than the fair market value of such services from third party
service providers.
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3.8 Services Period. Corixa provided the IDRI Services
throughout the term of the Prior Agreement. Corixa shall continue to provide the
IDRI Services, commencing January 1, 1997 and ending on December 31, 1999 (the
"IDRI Services Period"). The IDRI Services Period shall automatically be renewed
and extended for periods of one (1) year, unless either Corixa or IDRI gives at
least one (1) month prior written notice to such other party to terminate the
provision by Corixa of all or any part of the IDRI Services, in which case the
IDRI Services Period shall be renewed and extended only with respect to the IDRI
Services that are not so terminated.
4. PAYMENT FOR IDRI SERVICES
4.1 Payments.
(a) IDRI paid to Corixa [***] upon execution of the Prior
Agreement, which amount was allocated as follows: [***] to payment of rent on
the Research Space for the period ending on December 31, 1994; [***] for the
then applicable insurance premium payment pursuant to Section 3.6 and the
remaining [***] was credited against future amounts payable by IDRI for IDRI
Services.
(b) Before the end of each calendar quarter, Corixa and IDRI
shall agree upon the amounts to be paid to Corixa for IDRI Services to be
performed during the subsequent calendar quarter, which shall include a pro rata
adjustment for any additional research space to be leased by IDRI. A description
of the amounts of such payments for each subsequent calendar quarter shall be
attached as Schedule 3 to this Agreement which Schedule may be amended from time
to time by prior written agreement of the parties.
4.2 Timing of Payments. The amounts required to be paid to
Corixa for IDRI Services in accordance with Schedule 3 shall be invoiced by
Corixa at the end of each month. IDRI shall pay each such invoice no later than
twenty (20) days after its receipt. IDRI shall pay Corixa interest at a rate of
one percent (1%) per month (calculated pro-rata for any portion of a month) on
any amounts not paid within such time.
5. FUNDING FOR RESEARCH SERVICES
5.1 Payments. In return for Research Services and the
ownership of certain intellectual property rights provided in this Agreement,
Corixa shall pay to IDRI the following amounts at the times set forth in Section
5.2 below:
(a) During the first Agreement Year, subject to the deferral
provisions set forth in Section 5.3 below, Corixa shall pay to IDRI the amount
set forth on Schedule 5.1 (a) hereto, as amended by prior written agreement of
the parties from time to time, to reflect the amount and terms of payment agreed
to by the parties in connection with Section 5.1(b) for Research Services to be
provided during such period.
(b) No later than thirty (30) days prior to the end of any
Agreement Year, a committee composed of the Director of IDRI, a member of the
Management Board of IDRI, the Chief Executive Officer of Corixa and the Director
of Antigen Discovery of Corixa shall create an annual research plan (each, a
"Research Plan") with respect to Research Services to be provided during the
subsequent Agreement Year. Each such Research Plan shall include a description
of the amounts and the terms of payments for Research Services for each
subsequent Agreement Year as well as the scope and focus of the Research
Services to be provided and shall be subject to the review and approval of
senior management of Corixa. Each Research Plan shall be attached as an addendum
to this Agreement. The initial Research Plan is attached hereto.
5.2 Timing of Payments. The amount required to be paid to IDRI
in any Agreement Year as provided in Section 5.1 above shall be paid in four (4)
equal quarterly installments on
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January 31, April 30, July 31 and October 31 of such Agreement Year, unless such
date shall not be a business day, in which case payment shall be made on the
first business day after such date. The first installment shall be paid on
January 31.
5.3 Deferral of Payments. Corixa shall defer all or part of
any quarterly or annual payment otherwise required to be made pursuant to
Section 5.1 above to any future quarter or year as shall be specified by IDRI,
upon submission by IDRI of a written request for such deferral prior to the date
on which IDRI is entitled to such payment.
5.4 Other Funding Sources. IDRI shall have the right to
conduct research in any area, whether or not related to Research Services, in
addition to Research Services and, subject to the terms of Section 7 hereof,
IDRI shall own all patent rights and other ownership rights with respect to any
intellectual property arising from such research. Any additional funding
obtained by IDRI pursuant to this Section 5.4 shall not reduce Corixa's
obligation to make the funding payments provided under Section 5.1 hereof.
6. PATENTS, INVENTIONS, INFORMATION AND IDRI MATERIAL
6.1 Assignment of Rights.
(a) IDRI agrees to assign and hereby assigns all of its
rights, title and interest in and to any Invention(s) and Patent Rights to
Corixa.
(b) IDRI shall cooperate with Corixa in the preparation,
filing, prosecution, maintenance, assignment and enforcement of any Invention(s)
and Patent Rights, and shall perform all necessary acts relating thereto,
including without limitation, executing, acknowledging and delivering any and
all papers, documents and instruments required for effecting such prosecution,
maintenance assignment and enforcement; provided, however, that Corixa shall pay
all costs incurred by IDRI in complying with the requirements of this Section
6.1(b).
6.2 Patent Rights Policy. An overall policy with respect to
the filing of Patent Rights for presentation to the senior management of Corixa
shall be created by a committee composed of the Director of IDRI, the Chief
Executive Officer of Corixa and the Director of Antigen Discovery of Corixa.
Corixa shall pay all of the costs for prosecution and maintenance of such Patent
Rights using patent counsel of its choice.
6.3 Development Policy.
(a) Corixa undertakes, consistent with its business plans, to
use Inventions, Information, IDRI Material and Patent Rights diligently for the
benefit of society, licensing to others those Patent Rights under which it
cannot develop a commercial product or service within a reasonable period of
time or which fall outside its areas of interest. Corixa may waive these
guidelines at the request of IDRI when, in their combined judgment, there is a
compelling benefit to society in doing so. As a general policy, Corixa believes
society is best served by rapidly identifying and protecting Inventions, but
Corixa shall undertake to judge each case individually in consultation with
IDRI.
(b) In the event that IDRI believes that there are certain
Patent Rights (i) that fall outside Corixa's areas of interest, (ii) that
concern technology that is not currently, or in the future likely to be,
competitive with the business or products of the Company and (iii) with respect
to which a third party has expressed or may express interest in
commercialization, then, in further consideration of the License granted in
Section 7.2, IDRI shall have the right to request Corixa to review in good faith
its intentions with respect to the development of a product or products related
to such Patent Rights for a period of ninety (90) days. If after such ninety
(90) day period, Corixa reasonably concludes that it does not intend to proceed
with the development of a product or products or service or services related to
such Patent Rights, then Corixa shall enter into an agreement with IDRI
relinquishing its rights to such Patent Rights (in whole or in part) as Corixa,
in its sole discretion, deems appropriate in light of the combined interest of
society, IDRI and Corixa. This Section 6.3(b) shall not apply to any Patent
Rights arising from
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or related to the Research Services and shall not require Corixa to take any
action which it in good faith believes would undermine its competitive position.
6.4 Investigator Agreements. As a condition to engaging or
employing an Investigator, IDRI shall enter into a written agreement with each
Investigator that shall provide the Investigator shall: (i) promptly report to
IDRI any Invention made by the Investigator (either alone or jointly with
others); (ii) assign all his/her rights, title and interest in and to Inventions
and Patent Rights to IDRI; (iii) cooperate with IDRI and Corixa in the
preparation, filing, prosecution, maintenance, assignment and enforcement of any
Invention or Patent Right; (iv) comply with the obligations set forth in Section
8.4 below; and (v) perform all acts and sign, execute, acknowledge and deliver
any and all papers, documents and instruments required for effecting the
obligations and purposes of this Agreement.
6.5 Right to Use Information and IDRI Material. IDRI grants to
Corixa a fully paid-up, royalty-free, worldwide, perpetual, noncancellable
exclusive right and license to use and to sublicense or transfer to third
parties Information and IDRI Material.
7. INTELLECTUAL PROPERTY NOT RELATED TO RESEARCH SERVICES
7.1 Funding from U.S. Government and Non-Profit Organizations.
Subject to the obligation of Section 7.2, IDRI shall be permitted to enter into
agreements with agencies, departments or instrumentalities of the United States
government and non-profit organizations, foundations and similar organizations
(including but not limited to the National Institutes of Health, the World
Health Organization and the National Institute of Allergy and Infectious Disease
and similar organizations) ("Organizations") for funding of research at IDRI
which prevents IDRI from assigning all rights, title and interest to Corixa in
and to inventions and patent rights which result from such funding (each
agreement an "Organization Agreement" and each such invention and patent right
an "Organization Invention" and "Organization Patent Right," respectively).
7.2 Exclusive License.
(a) IDRI hereby grants to Corixa and Corixa hereby accepts
from IDRI a worldwide, perpetual, noncancellable right and license to make, have
made, use and sell or have sold on its behalf any product, service, process,
machine, apparatus or article of manufacture or composition, including the right
to sublicense to third parties, pursuant to the terms and conditions of this
Agreement, under any Organization Invention or Organization Patent Right in
which ownership must be retained by IDRI or in which the Organization does not
permit ownership to be retained by Corixa pursuant to any Organization
Agreement. This license is granted to the extent permitted under United States
law and is exclusive except as to the United States government or other
Organization, which may retain a non-exclusive royalty-free license under such
Organization Inventions and Organization Patent Rights. Corixa at its cost and
expense shall file, prosecute and maintain Organization Patent Rights licensed
under this Section 7.2 using patent counsel of its choice.
(b) With respect to the Organization Patent Rights licensed to
Corixa under Section 7.2(a), Corixa shall pay to IDRI a running royalty of
[***]% of net sales of any product sold by Corixa which is covered by an
unexpired, valid claim of an Organization Patent Right in the country in which
such product is made, used or sold; provided, however, that with respect to any
antigen licensed hereunder, such royalty shall be payable only with respect to
the first Corixa product incorporating such antigen.
(c) In the event that Corixa is obligated to pay a royalty for
a product to a party other than an Affiliate ("Other Party Royalty") for which
product a royalty is owed to IDRI, then [***] of such Other Party Royalty shall
be fully creditable against the royalty owed to IDRI under this Section 7.2 of
this Agreement.
(d) No royalty shall be due or payable under this Section 7.2
with respect to any product for which a royalty is paid under Section 16.4 of
this Agreement.
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8. OBLIGATIONS OF IDRI
8.1 Conduct of Research. IDRI shall use directly or indirectly the funds paid by
Corixa pursuant to Section 5 hereof to perform research in the Field of Research
and may apply the funds for and in such amounts and at such times and such
specific purposes and for such uses as it shall deem necessary or appropriate to
further such research, including without limitation to pay salaries, purchase
equipment and to pay other direct and indirect costs associated with such
research.
8.2 Disclosure. During the term of this Agreement, and thereafter while IDRI is
conducting Research Services, IDRI shall:
(a) promptly and systematically disclose to Corixa significant
developments relating to the discovery of Information, Inventions and IDRI
Material;
(b) for the purpose of facilitating disclosure to Corixa of
Information, Inventions and IDRI Material, permit duly authorized employees or
representatives of Corixa to visit Investigators' laboratories at IDRI or other
IDRI facilities, at reasonable times and with reasonable notice; and
(c) at Corixa's reasonable request, provide Corixa with reasonable
quantities of IDRI Material.
8.3 Periodic Reporting. IDRI shall, on a continuing basis, advise Corixa of the
results of research being performed at IDRI, and at least once every three (3)
months provide Corixa with a written progress report concerning such research.
8.4 Publishing Limitations. At any time during or after the term of this
Agreement, IDRI may publish, submit for publication or otherwise provide to or
exchange with any person or entity any previously unpublished Information,
Inventions or IDRI Material; provided, however, that IDRI agrees, and shall
cause each Investigator to agree prior to his/her becoming an Investigator, not
to publish, submit for publication or otherwise exchange any previously
unpublished Information, Inventions or IDRI Material without the express written
consent of Corixa (which consent shall not be unreasonably denied), until the
earlier of (i) thirty (30) after IDRI has satisfied its obligation under Section
8.2(a) above with respect to such Information, Invention or IDRI Material or
(ii) Corixa having filed for patent protection with respect thereto.
Notwithstanding the foregoing, if requested in writing by Corixa, IDRI agrees
not to publish, submit for publication or otherwise exchange any previously
unpublished Information, Invention or IDRI Material specifically designated by
Corixa for a period of up to three (3) months after disclosure thereof to Corixa
pursuant to Section 8.2(a) above provided that such Information, Invention or
IDRI Material is potentially useful for discovering a cure or treatment for a
disease if such additional time is for the purpose of (a) completing filing of
patent applications relating thereto, or confirming biological activity of a
material encompassed thereby, or (b) completing sequencing of a material
encompassed thereby, or expressing a protein encompassed thereby; provided
further that, such three (3) month period may be extended to six (6) months,
(i.e., an additional three (3) months) if such Invention, Information or IDRI
Material otherwise meets the requirements for extension to six (6) months and
relates to a product which Corixa or its licensee(s) intends to commercially
develop.
8.5 Intellectual Property Safeguards. Within thirty (30) days of the execution
of the Prior Agreement, IDRI established appropriate policies with respect to
the safeguarding of intellectual property, including but not limited to
Information, Inventions, IDRI Materials and other data, formulas, know-how,
biological materials and/or other information related to the research being
conducted by IDRI. Such policies shall continue to be subject to the reasonable
review and approval of Corixa, and shall continue to include an obligation that
each Investigator, employee or consultant of IDRI enter into an appropriate
agreement with IDRI with respect to such safeguarding of intellectual property.
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9. OBLIGATIONS OF CORIXA
9.1 Grant of License. Notwithstanding any other provision in
this Agreement, Corixa hereby grants to IDRI a worldwide, perpetual,
noncancellable, nonexclusive, royalty-free right and license under all
Inventions and Patent Rights only for the purpose of conducting non-commercial
research; provided, however, that IDRI shall not assign, sublicense or otherwise
transfer any or all of its interest in such license to any other person or
entity without the prior written consent of Corixa. Any assignment, sublicense
or other transfer by IDRI in violation of this Section 9.1 shall be void and
without effect.
9.2 Limitation on Assignment of Patent Rights. Corixa shall
not assign ownership to Patent Rights obtained from IDRI under this Agreement to
another entity without the written consent of IDRI, which consent shall not be
unreasonably withheld or delayed, except such consent shall not be required: (i)
where such assignment is in conjunction with a transfer of all or substantially
all of the business, stock or assets of Corixa to an entity that is not an
Affiliate of Corixa; or (ii) where such assignment is to an Affiliate that is a
majority-owned subsidiary of Corixa. For the purposes of this Section 9.2, the
granting of a non-exclusive or exclusive license under Patent Rights shall not
be an assignment.
10. REDUCTIONS IN ROYALTIES
10.1 Reduction Based on Multiple Antigens. If it is necessary
for Corixa to obtain licenses to antigens from third parties that are used in
any particular product in combination with antigens licensed under this
Agreement, then the percentage royalty rate on Net Sales of such product under
Sections 7.2 and 16.4 shall be reduced on a pro rata basis along with royalties
to be paid to such third parties with respect to such product based on the
number of antigens so used; provided, however, that, except as otherwise set
forth in the provisionsto Sections 7.2(b) and 16.4(c) respectively, in no event
shall IDRI be entitled to royalties consisting of less than [***]% of Net Sales
for any such product; and provided further, that in no event shall IDRI be
entitled to royalties on any product consisting of more than [***]% of Net Sales
for any such product.
10.2 Reduction in the Event of Infringement. During the term
of an infringement action relating to the Patent Rights, royalties under
Sections 7.2 and 16.4 shall accrue, but shall not be payable by Corixa until the
final dispensation of such action, either by settlement or final adjudication.
In the event of a settlement pursuant to which Corixa is required to pay a third
party as a result of infringement, Corixa shall have the right to offset such
deferred royalties to pay such settlement and in addition shall have the right
to reduce by [***]% future royalties payable under Sections 7.2 and 16.4 until
such settlement is paid in full.
11. CONFIDENTIALITY
11.1 Nondisclosure. During the term of this Agreement, it is contemplated that
Corixa shall disclose to IDRI and Investigators proprietary and confidential
technology, inventions, technical information, biological materials, business
information, product development information and the like which are owned or
controlled by Corixa or which Corixa is obligated to maintain in confidence and
which are designated by Corixa as confidential ("Corixa Confidential
Information"). Except as otherwise provided in this Agreement, IDRI agrees to
retain such Corixa Confidential Information in confidence and not to use (except
as provided in this Agreement) or disclose any such Corixa Confidential
Information to a third party without the prior written consent of Corixa. For
purposes of this Section 11 and without limiting the generality of the
foregoing, Corixa Confidential Information shall include all information
relating to the lease agreements each party hereto entered into with the Xxxx
Xxxxxxxxxx Cancer Research Center, and Corixa and IDRI each agree to maintain in
confidence and not disclose the terms and conditions of such lease agreements.
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11.2 Exceptions. The obligations of IDRI pursuant to Section 11.1 hereof shall
not apply to Corixa Confidential Information that:
(a) is known to IDRI or generally known to the public prior to its
disclosure hereunder; or
(b) becomes known to the public by some means other than a breach of this
Agreement, including publication and/or laying open to inspection of any patent
applications or patents; or
(c) is disclosed to IDRI by a third party having a lawful right to make
such disclosure, and who is not under any obligation of confidentiality to
Corixa; or
(d) is required to be disclosed to a governmental entity or agency or
pursuant to the lawful requirement or request of a governmental entity or
agency.
11.3 IDRI Information. Corixa agrees not to disclose to a third party
Information, Inventions and IDRI Material disclosed to Corixa by IDRI or an
Investigator, except under an obligation of confidentiality. Corixa's obligation
under this Section 11.3 with respect to any Information, Inventions or IDRI
Material shall terminate one (1) year after disclosure thereof to Corixa
(provided that such period shall be extended to eighteen (18) months in the case
of any Information, Inventions or IDRI Material which IDRI is prevented from
publishing pursuant to Section 8.4 above). The foregoing obligation shall not
apply to any Information, IDRI Material or Invention which:
(a) is known to Corixa or generally known to the public prior to its disclosure
hereunder; or
(b) becomes known to the public by some means other than a breach of this
Agreement, including publication and/or laying open to inspection of any patent
applications or patents; or
(c) is disclosed to Corixa by a third party having a lawful right to make such
disclosure, and who is not under any obligation of confidentiality to IDRI; or
(d) is required to be disclosed to a governmental entity or agency or pursuant
to the lawful requirement or request of a governmental entity or agency.
12. WARRANTIES
12.1 Authority. Each of IDRI and Corixa hereby warrants and
represents to the other that it has the full right and authority to enter into
this Agreement.
13. INDEMNIFICATION
13.1 Obligation of Corixa to Indemnify. Each party shall
promptly notify the other upon receiving notice of any claim, lawsuit or other
proceeding relating to a product or process that incorporates or is manufactured
by use of any Invention, Information, IDRI Material or Patent Right. Corixa
agrees that it shall indemnify and hold harmless IDRI and all Investigators, and
other members, researchers, employees, officers and trustees of IDRI, and each
of them (each an "Indemnified Party") from and against any and all third party
claims, causes of action and costs (including reasonable attorney's fees and
costs of appearing as witnesses or otherwise preparing to defend any such claim
or cause of action) of any nature made or lawsuits or other proceedings filed or
otherwise instituted against any Indemnified Party or Parties arising out of
Corixa's design, manufacture, sale or use of any such product or process;
provided, however, that Corixa shall not indemnify any Indemnified Party from or
against any claims, causes of action or costs that result from the recklessness,
gross negligence or willful misconduct of such Indemnified Party (except to the
extent that any act of patent infringement is by its terms considered willful,
in which case Corixa shall indemnify any Indemnified Party); provided, further,
that Corixa shall not provide indemnification to any Indemnified Party for any
amount exceeding in the aggregate the coverage limitations of Corixa's then
existing applicable insurance policy. IDRI shall
10
promptly notify Corixa of any such claim. Corixa may elect to assume the defense
of any claim, lawsuit, or other proceeding identified in this Section3, but IDRI
and/or any Indemnified Party may retain additional counsel and assume the
defense of such suit if (i) Corixa specifically authorizes the retaining of such
counsel and assumption of such defense or (ii) IDRI or any Indemnified Party has
been advised by counsel that one or more legal defenses may be available to it
which may not be available to Corixa, in which case Corixa shall not be entitled
to assume the defense of such suit, notwithstanding its obligation to bear the
reasonable fees and expenses of counsel to IDRI or any Indemnified Party. In the
event that any Indemnified Party elects to assume the defense of any suit and
retain counsel as permitted herein, in no event shall Corixa be responsible for
the fees and expenses of more than one (1) additional counsel for each such
Indemnified Party or for any settlement or compromise that Corixa has not
approved in writing. Subject to the foregoing, Corixa shall have the right to
control the defense, settlement or compromise of any claim which is indemnified
hereunder.
14. ASSIGNMENT; SUCCESSORS
14.1 Written Consent Required. Subject to Section 9.2 above,
this Agreement shall not be assignable by either of the parties without the
prior written consent of the other party, which consent shall not be
unreasonably withheld or delayed; provided, however, that Corixa may assign this
Agreement without the consent of IDRI (i) pursuant to a transfer or sale to an
entity other than an Affiliate of all or substantially all of Corixa's stock
business or assets to which this Agreement relates, or a consolidation or merger
of Corixa with or into any other entity, or any other corporate reorganization
in which Corixa is not the continuing or surviving entity of such consolidation,
merger or reorganization, or any transaction or series of related transactions
by Corixa in which in excess of fifty percent (50%) of Corixa's voting power is
transferred, or (ii) to a wholly-owned subsidiary. Any assignment in violation
of this Section 14.1 shall be void and without effect.
14.2 Successors and Assigns. Subject to the limitations on
assignment set forth herein, this Agreement shall be binding upon and inure to
the benefit of said successors in interest and assigns of Corixa and IDRI. Any
such successor or assignee of a party's interest shall expressly assume in
writing the performance of all the terms and conditions of this Agreement to be
performed by said party.
15. SUSPENSION OF FUNDING AND RESEARCH SERVICES
15.1 Upon Material Breach by IDRI. Upon material breach of any
material provision of this Agreement by IDRI, in the event the breach is not
cured within sixty (60) days after written notice to IDRI by Corixa, in addition
to any other remedy it may have, Corixa may suspend further funding under this
Agreement until the breach is cured. Suspension of payments by Corixa as
permitted by this Section 15.1 shall not permit IDRI to terminate this Agreement
under Section 16.1 below.
15.2 Upon Material Breach by Corixa. Upon material breach of
any material provision of this Agreement by Corixa, in the event the breach is
not cured within sixty (60) days after written notice to Corixa by IDRI, in
addition to any other remedy it may have, IDRI may suspend the research work on
behalf of Corixa in the Field of Research of this Agreement until such breach is
cured; provided that such suspension shall not affect assignment or rights by
operation of this Agreement. Suspension of research work in the Field of
Research by IDRI as permitted by this Section 15.2 shall not permit Corixa to
terminate this Agreement under Section 16.2 below.
16. TERMINATION
16.1 IDRI's Right to Terminate.
(a) Subject to Section 15.1 hereof, IDRI may terminate this
Agreement upon sixty (60) days written notice to Corixa if Corixa fails to make
a payment required hereunder; provided,
11
however, that such termination shall not take effect if Corixa makes the payment
prior to expiration of such sixty (60) day period.
(b) IDRI may terminate this Agreement immediately, upon
written notice to Corixa, if Corixa materially breaches any other provision
hereof, and fails to cure such breach within sixty (60) days after receiving
written notice from IDRI specifying the precise nature of the breach.
(c) IDRI may terminate this Agreement, upon thirty (30) days
prior written notice to Corixa, in the event that Corixa becomes insolvent,
voluntarily files for bankruptcy or reorganization, or makes a general
assignment in favor of creditors, or if bankruptcy proceedings are commenced
against Corixa (and not dismissed within ninety (90) days).
(d) IDRI's ability to terminate this Agreement pursuant to
this Section 16.1 shall not be its exclusive remedy, but shall be in addition to
any other remedy available to it at law or in equity.
16.2 Corixa's Right to Terminate.
(a) In the event the Director of IDRI is no longer available,
willing or able to continue directing research at IDRI, IDRI shall promptly
notify Corixa and may nominate a replacement reasonably satisfactory to Corixa;
provided, however, if IDRI does not nominate a replacement who is reasonably
satisfactory to Corixa within sixty (60) days of such notice, Corixa may
terminate this Agreement upon three (3) months written notice to IDRI.
(b) Corixa may at its sole option terminate this Agreement
upon three (3) months written notice to IDRI if the aggregate funding obtained
by IDRI from sources other than Corixa is an amount less than [***] for any one
Agreement Year.
(c) Subject to Section 15.2 above, Corixa may terminate this
Agreement immediately, upon written notice to IDRI, if IDRI materially breaches
any provision hereof, and fails to cure such breach within sixty (60) days after
receiving written notice from Corixa specifying the precise nature of the
breach.
16.3 Survival. The rights and obligations of the parties set
forth in Sections 6 through 11,13 16.4 and in this Section 16.3, shall survive
the expiration or termination of this Agreement for any reason, and shall
continue in effect until by their terms they are no longer applicable.
16.4 Invention and Patent Rights After Termination.
(a) In the event this Agreement is terminated for any reason
whatsoever, including but not limited to expiration of the term of this
Agreement, IDRI shall not be obligated to assign to Corixa an Invention and
corresponding Patent Rights that were not conceived or actually or
constructively reduced to practice prior to such termination, unless such
Invention is conceived or actually or constructively reduced to practice within
six (6) months after such termination.
(b) Subject to Section 16.4(a) above, termination of this
Agreement for any reason whatsoever shall not affect Corixa's ownership interest
in Inventions and corresponding Patent Rights which Inventions are conceived or
actually or constructively reduced to practice prior to termination.
(c) In the event that this Agreement is terminated by IDRI
under the provisions of Section 16.1(a) above, then with respect to Patent
Rights to which Corixa retains an ownership interest under this Agreement,
Corixa shall pay IDRI a running royalty of [***] of net sales of any product
sold by Corixa or a sublicensee which is covered by an unexpired valid claim of
such a Patent Right in the country in which such product is made, used or sold;
provided, however, that with
12
respect to any antigen licensed hereunder, such royalty shall be payable only
with respect to the first Corixa product incorporating such antigen.
(d) In the event that Corixa is obligated to pay a royalty for
a product to a party other than an Affiliate ("Other Party Royalty") for which
product a royalty is also owed to IDRI, then [***] of such Other Party Royalty
shall be fully creditable against the royalty owed to IDRI under Section 16.4(c)
of this Agreement. In the event that ownership in any such Patent Right is
assigned by Corixa to another entity, Corixa shall obligate such entity to the
payment provisions of Section 16.4(c).
17. MISCELLANEOUS
17.1 Relationship of IDRI and Corixa. The relationship between
IDRI and Corixa is that of independent contractors. Except as otherwise provided
herein, IDRI and Corixa are not joint venturers, partners, principal and agent,
master and servant or employer and employee, and have no relationship other than
as independent contracting parties. Except as otherwise provided herein, IDRI
shall have no power to bind or obligate Corixa in any manner, and Corixa shall
have no power to bind or obligate IDRI in any manner. Notwithstanding any other
provision in this Agreement to the contrary, IDRI is and shall remain an
independent entity, operated under the supervision and direction solely of its
Management Board. This Agreement may be terminated by IDRI or Corixa at any time
pursuant to the terms of this Agreement and, except as otherwise provided
herein, IDRI and Corixa shall have no further obligation to each other.
17.2 Governing Law. This Agreement shall be governed by and
construed under the laws of the State of Washington as applied to agreements
among Washington residents entered into and to be performed entirely within the
State of Washington.
17.3 Entire Agreement. Except as provided in the next
sentence, this Agreement sets forth the entire agreement and understanding
between the parties as to the subject matter hereof and supersedes all prior
written or oral agreements relating to the subject matter hereof. There shall be
no amendments or modifications to this Agreement, except by a written document
which is signed by both parties.
17.4 Headings. The headings in this Agreement have been
inserted for the convenience of reference only and are not intended to limit or
expand the meaning of the language contained in any section hereof.
17.5 Delay or Waiver. Any delay in enforcing a party's rights
under this Agreement or any waiver as to a particular default or other matter
shall not constitute a waiver of such party's right to the future enforcement of
its rights under this Agreement, except as set forth in a written and signed
waiver as to a particular matter for a particular period of time.
17.6 Notices. Any notices given pursuant to this Agreement
shall be in writing and shall be deemed delivered upon (i) the date of delivery,
if personally delivered, (ii) three (3) business days after being mailed by
certified or registered mail, postage prepaid and properly addressed, with
return receipt requested, or (iii) the date of facsimile report, if sent by
facsimile and confirmed by certified or registered mail. Notices shall be
delivered to the respective parties as indicated below, or any other address
designated by a party to the other party in writing under the notice provisions
of this Section 17.6:
To Corixa: Corixa Corporation
0000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxx, XX 00000
Attn: Xxxx XxXxxx
Chief Operating Officer
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To IDRI: Infectious Disease Research Institute
0000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxx, XX 00000
Attn: Director
17.7 Severability. If any provision of this Agreement is held
to be illegal or unenforceable, that provision shall be limited or eliminated to
the minimum extent necessary so that this Agreement shall otherwise remain in
full force and effect and enforceable.
17.8 Counterparts. This Agreement may be executed in one or
more counterparts, each of which shall be deemed an original, but all of which
taken together shall constitute one and the same instrument.
14
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed on its behalf, effective as of the date set forth above.
CORIXA CORPORATION
By: /s/ XXXX XxXXXX
---------------------------------------------
Name: Xxxx XxXxxx
-------------------------------------------
Title: Chief Operating Officer
------------------------------------------
INFECTIOUS DISEASE RESEARCH INSTITUTE
By: /s/ XXXXX X. XXXXXXX
---------------------------------------------
Name: Xxxxx X. Xxxxxxx
-------------------------------------------
Title: Executive Director
------------------------------------------
15
Schedule 3
Medical benefits and other employee benefits will be billed to IDRI in the
amount charged to Corixa by Group Data, Inc., including any adjustments.
Rent will be billed based on the number of square feet directly occupied by
IDRI, plus prorata share of the designated common areas. Rent will be based on
the base rent charged to Corixa plus additional rent amounts charged to Corixa
in accordance with their lease, plus charges for overhead items such as
utilities, copiers, telephone and fax services, library services, mailroom and
other overhead items.
The insurance premiums paid by Corixa will be charged to IDRI based on the
number of square feet calculated for rental of space.
IDRI will pay Corixa for its share of usage of equipment and maintenance by
paying a percentage of the depreciation expense and maintenance of Corixa based
on the relative headcounts of each company.
Other support services include administrative support, laboratory and facilities
support and direct supplies consumed by IDRI. Administrative, laboratory and
facilities support will billed as a headcount percentage of the overhead amount
incurred by Corixa no billed under a category defined above for Corixa'
non-scientific departments. Direct supplies will be billed as a percentage based
on the relative scientific headcount of both companies of the supplies expenses
in the research and development departments.
16
Schedule 5.1(a)
1997 Payment Schedule:
[***] payable in equal quarterly installments of [***]
