[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
EXHIBIT 10.9
LICENSE AGREEMENT
The license agreement ("Agreement") is effective as of June 8th, 1999
("Effective Date") between THE UNIVERSITY OF WASHINGTON, a public institution of
higher education having administrative offices in Seattle, Washington ("UW"),
and THESEUS MEDICAL IMAGING, a Delaware corporation having a principal place of
business at 000 Xx. Xxxxxx Xxxxxx, Xxxxx 000 Xxxxx, Xxxxxxxxx, XX 00000
("LICENSEE").
1. BACKGROUND
1.1 UW researcher Xxxxxxxx X. Xxxx ("UW Inventor") has developed, in
conjunction with NeoRX Corporation, "Radiolabelled Annexins" ("Invention"),
as described in UW Docket 1798-10941128DL.
1.2 UW has in its possession certain technical data, biological materials, and
information as herein defined ("Technology") pertaining to Invention.
1.3 UW desires to have the Technology and Invention perfected and marketed at
the earliest possible time in order that products resulting therefrom may
be available for public use and benefit.
1.4 LICENSEE has obtained a license from NeoRx Corporation with respect to
NeoRx's rights in said Technology and Invention. LICENSEE now desires a
license under UW's rights in said Technology and Invention to develop,
manufacture, use, and sell Licensed Product(s) in the field of use of Human
and Veterinary Diagnosis.
1.5 The Technology and Invention were made in the course of research supported
by the National Institutes of Health.
1.6 UW asserts that it has the right to enter into this license agreement.
Now therefore, for good and valuable consideration, the parties agree as
follows:
2. DEFINITIONS
2.1 "Licensed Patent(s) means the United States Patent Application(s)
08/690,184, filed July 26, 1996, and any patents issued from the United
States Patent Application(s), including all reissues, divisionals,
continuations, reexaminations and extensions thereof, and subject matter in
any continuations-in-part on which claims issuing obtain the benefit of a
priority date of any of the foregoing applications, together with all,
corresponding foreign patents, extensions, supplemental protection
certificates and applications corresponding thereto now issued or issued
during the term of this Agreement and which directly relate to the
Invention.
2.2 "Technology" means any existing biological materials, technical facts,
data, or advice, written or oral (in the form of information contained in
patents and patent applications, reports, letters, drawings,
specifications, testing procedures, training and operational manuals, bills
of materials, photographs and the like) directly related to the Invention,
developed in the laboratory of the UW Inventor, owned or in the possession
of UW, and provided to LICENSEE. Certain Technology in existence as of the
Effective, Date are more particularly described in Article 24.
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
2.3 "Licensed Product(s)" 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(s)
directed to the Invention. A claim of an issued, unexpired Licensed
Patent(s) 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;
(b) Is covered by any claim being prosecuted in a pending application
directed to the Invention; or
(c) Incorporates any of the Technology.
2.4 "Licensed Process(es)" means processes which, in the course of being
practiced would, in the absence of this Agreement, infringe one or more
claims of the Licensed Patents.
2.5 "Net Sales" means the gross amounts invoiced by LICENSEE and/or
Sublicensee(s) from sales of Licensed Product(s) or practice of Licensed
Processes, less the following items but only insofar as they actually
pertain to the disposition of such Licensed Product(s) or practice of
Licensed Processes by LICENSEE or Sublicensee(s), are included in such
gross revenue, and are separately billed:
(a) Import, export, excise and sales taxes, and custom duties;
(b) Costs of insurance, packing, and transportation from the place of
manufacture to the customer's premises or point of installation;
(c) Costs of installation at the place of use; and
(d) Credit for returns, allowances, or trades.
2.6 "Licensed Field of Use" means all fields.
2.7 "Licensed Territory" means worldwide.
2.8 "Exclusive" means that, subject to Article 4, UW shall not grant further
licenses in the Licensed Territory in the Licensed Field of Use.
2.9 "Sublicense" means the present, future or contingent transfer of any
license, right, option, first right to negotiate or other right granted
under the Licensed Patents, in whole or in part. By way of example,
Sublicense may include, without limitation, strategic partnerships,
affiliations, and marketing collaborations.
2.10 "Sublicensee" means a party which is granted a Sublicense.
3. GRANT
3.1 Subject to the terms of this Agreement UW hereby grants and LICENSEE hereby
accepts a license to UW's rights in the Licensed Field of Use to make, use,
and sell Licensed Products(s) in the Licensed Territory and to Practice
Licensed Processes in the Licensed Field of Use.
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[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
3.2 Said license is exclusive with respect to UW's rights in Licensed Patents,
including the right to sublicense pursuant to Article 13, in the Licensed
Field of Use for the term set forth in Article 6.9.
3.3 Said license is non-exclusive with respect to UW's rights in Technology.
3.4 Article 3.2 notwithstanding, UW and UW Inventor shall have the right to
practice the Licensed Patents for its own research or clinical teaching
purposes or in collaboration with third parties. UW shall have the right
to publish any information included in Licensed Patent(s).
4. GOVERNMENT RIGHTS
Article 3.2 notwithstanding, this Agreement is subject to all of the terms and
conditions of Xxxxx 00 Xxxxxx Xxxxxx code Section 200 through 204, including an
obligation that Licensed Product(s) sold or produced in the United States be
"manufactured substantially in the United States" and the granting of a
worldwide nonexclusive, royalty-free license to the, United States Government.
LICENSEE agrees to take all reasonable action necessary on its part as licensee
to enable UW to satisfy its obligations thereunder, relating to Invention. UW's
satisfaction of such obligations shall not be deemed inconsistent with UW's
obligations under this Agreement.
5. DILIGENCE
5.1 As an inducement to UW to enter into this Agreement, LICENSEE agrees to use
all reasonable efforts and diligence to proceed with the development,
manufacture, and sale or lease of Licensed Product(s) and Licensed
Process(es) and to diligently develop a market for the Licensed Product(s)
and Licensed Process(es). LICENSEE shall demonstrate diligence to UW by
achieving the goals outlined in Appendix k. In addition, LICENSEE agrees
that UW may terminate this Agreement if LICENSEE or a Sublicensee(s) has
not sold Licensed Products(s) or practiced Licensed Process(es) for a
period of one (1) year.
5.2 PROGRESS REPORT - On or before September I of each year until LICENSEE
markets a Licensed Product(s), LICENSEE shall make a written annual report
to UW covering the year ending the immediately preceding June 30, regarding
the progress of LICENSEE toward commercial use of Licensed Product(s). Such
report shall include, as a minimum, information sufficient to enable UW to
satisfy reporting requirements of the U.S. Government and for UW to
ascertain progress by LICENSEE toward meeting the diligence requirements of
this Article 5.
6. CASH AND NON-CASH CONSIDERATION
6.1 LICENSEE agrees to pay to UW a noncreditable, nonrefundable license issue
royalty of [*] upon signing this Agreement.
6.2 Upon signing of this Agreement, LICENSEE will also issue to UW common
shares of LICENSEE stock equal to [*] of the total issued stock as of the
Effective Date.
3
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
6.3 LICENSEE also agrees to pay the following minimum annual royalties to UW:
ANNIVERSARY OF EFFECTIVE DATE MINIMUM ANNUAL ROYALTY DUE
First and Second [*]
Third and Fourth [*]
Fifth and Thereafter [*]
These yearly royalty payments are nonrefundable, but are creditable against
earned royalties to the extent provided in Paragraph 6.7.
6.4 In addition, on the fast and second anniversary of the Effective Date of
this Agreement, LICENSEE will issue to UW common shares of LICENSEE stock
equal to [*]. [*] of the total shares issued on the date; if Theseus is
sold prior to these anniversary dates these shares shall be issued
immediately upon closing of such a transaction.
6.5 LICENSEE will also pay UW earned royalties at a rate of [*] of Net Sales.
in the event that a royalty is paid to a third party for use of technology
required to be licensed from such third Party in order to practice UW
technology, if the royalty due the third party plus royalty payable to UW
for any Licensed Product exceeds two times the royalty due UW, then the
royalty due will be reduced by one-half of the excess above two times the
royalty stated above.
6.6 LICENSEE also agrees to, pay to UW within [*] days of the occurrence of the
following events, the following amounts:
EVENT MILESTONES
----- ----------
Upon the earlier of filing of a FLA in the-United States
or 5 1/2 years after the Effective Date [*]
Upon first Licensed Patent issuance [*]
Upon filing of the first Marketing Application in the E.U. [*]
Upon filing of a marketing application in Japan [*]
Upon issuance of a marketing approval in the United States [*]
Upon issuance of first marketing approval in the E.U. [*]
Upon issuance of marketing approval in Japan [*]
6.7 Creditable payments under this Agreement shall be an offset to LICENSEE
against up to [*] of each earned royalty payment which LICENSEE would be
required to pay pursuant to Paragraph 6.5 until the entire credit is
exhausted.
6.8 LICENSEE will pay to UW [*] of all non-royalty payments received from
Sublicensees in addition to earned royalty income received by LICENSEE from
its Sublicensee(s).
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[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
6.9 If this Agreement is not terminated in accordance with other provisions
hereof, LICENSEE's obligation to make payments hereunder shall continue
until the latter of:
(a) [*] years, if no Licensed Patent(s) issues; or
(b) 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 UW covering said activity.
6.10 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 Wall Street Journal on the last banking day of each calendar
quarter. Royalty payments to UW 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 UW.
6.11 Within thirty (30) days after receipt of a statement from UW, LICENSEE
shall reimburse UW for all fees and costs relating to the filing,
prosecution and maintenance of patent applications, including, without
limitation, interferences, oppositions, and reexaminations, and maintenance
and defense of patents, in Licensed Patents, whether incurred prior to the
execution of this Agreement or during the term of this Agreement. Such fees
and costs shall not include costs incurred by the UW in the use of its own
resources, such as employee time, and shall not extend to patenting fees
and costs incurred by UW after termination of this Agreement. LICENSEE
agrees to pay invoices for such fees and costs submitted by UW upon receipt
of any such invoice. Alternatively, UW may instruct its legal counsel to
send copies of all invoices related to the Licensed Patents directly to
LICENSEE, and LICENSEE shall reimburse the invoicer directly as if that
invoicer were UW. UW shall further instruct its legal counsel to notify UW
should any such invoice remain unreimbursed for a period of more than
thirty days from the date of invoice. In any country where LICENSEE fails
to pay fees and costs invoiced to LICENSEE by UW within thirty (30) days of
the date of such invoice, UW may file, prosecute and/or maintain a patent
application or patent at its own expense and for its own exclusive benefit
and LICENSEE thereafter shall not be licensed under such patent or patent
application.
7. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
7.1 QUARTERLY ROYALTY PAYMENTS AND REPORTS - Beginning with the first sale of a
Licensed Product(s), LICENSEE shall make written reports (even if there are
no sales) and earned royalty payments to UW within thirty (30) days after
the end of each calendar quarter. This report will state at a minimum the
number, description, and aggregate Not Sales of Licensed Product(s) during
such completed calendar quarter, the amount of non-royalty income from
Sublicensees, and resulting calculation pursuant to Paragraph 6.5 and 6.8
of payments due UW for such completed calendar quarter. Concurrent with the
making of each such report, LICENSEE shall include payments due UW for the
calendar quarter covered by such report.
7.2 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
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 UW from time to
time to the extent necessary to verify reports provided for in Paragraph
7.1. Such examination is to be made by UW or its designee, at the expense
of UW, except in the event that the results of the audit reveal an
underreporting of royalties due UW of five percent (5%) or more, then the
audit costs shall be paid by LICENSEE.
5
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
7.3 On or before the ninetieth (90th) day following the close of LICENSEE's
fiscal year, LICENSEE shall provide UW with LICENSEE's certified financial
statements for the preceding fiscal year, including, at a minimum, a
Balance Sheet and an Operating Statement.
7.4 LICENSEE agrees to pay a late fee for any overdue licensing fee or royalty
payment due UW under terms of this Agreement. The late fee shall be
computed as the prime rate plus Two Percent (2%), as set forth by the
Wall Street Journal on the date on which such payment is due, of the
outstanding, unpaid balance. The payment of such a late fee shall not
foreclose or limit UW from exercising any other fights it may have as a
consequence of the lateness of any payment.
8. NEGATION OF WARRANTIES
8.1 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by UW as to the patentability, validity
or scope of any Licensed Patent(s);
(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, or other
rights not included in Licensed Patent(s);
(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 12;
(d) Granting by implication, estoppel, or otherwise any licenses or rights
under patents or other rights of UW or other persons other than
Licensed Patent(s), regardless of whether such patents or other rights
are dominant or subordinate to any Licensed Patent(s); or
(e) An obligation to furnish any technology or technological information
other than the Technology.
8.2 Except as expressly set forth in this Agreement, UW MAKES 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 LICENSED
PRODUCT(S) OR TECHNOLOGY WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK
OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES. UW'S TOTAL
LIABILITY UNDER THIS AGREEMENT IS LIMITED TO THE COSTS AND FEES PAID TO UW
UNDER THIS AGREEMENT.
9. INDEMNITY
9.1 LICENSEE agrees to indemnify, hold harmless, and defend UW and its
respective regents, officers, inventors, employees, students, and agents
against any and all claims suits, losses, damages, costs, fees, and
expenses resulting from or arising out of exercise of this agreement,
including but not limited to any damages, losses or liabilities whatsoever
with respect to death, illness, personal injury, property damage, and
improper business practices arising out of the manufacture, use, sale, or
other disposition of Invention, Licensed Patent(s), Licensed Product(s),
Licensed Process(es) or Technology by LICENSEE or Sublicensee(s), or their
customers.
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[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
9.2 UW shall not be liable for any indirect; special, consequential or other
damages whatsoever, whether grounded in tort (including negligence), strict
liability, contract or otherwise. UW shall not have any responsibilities or
liabilities whatsoever with respect to Licensed Products(s).
9.3 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.
9.4 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). Such insurance. shall provide minimum limits of liability
of $5 Million and shall include UW, its regents, officers, inventors,
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 and should be placed with
carriers with ratings of at least A- as rated by A.M. Best Within 15 days
of the Effective Date of this Agreement LICENSEE shall furnish a
Certificate of Insurance evidencing primary coverage and additional
insured requirements and requiring thirty (30) days prior written notice of
cancellation or material change to UW. LICENSEE shall advise UW, 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 UW shall be
excess and noncontributory.
10. 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(s).
11. UW NAMES AND MARKS
LICENSEE agrees not to identify UW 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 UW faculty member, employee, or student or any trademark,
service xxxx, trade name, or symbol of UW without UW's prior written consent.
12. INFRINGEMENT BY OTHERS; PROTECTION OF PATENTS
12.1 Each party shall promptly inform the other party of any alleged
infringement of Licensed Patents by a third party, and provide any
available evidence thereof.
12.2 During the term of exclusivity of the license granted hereunder, LICENSEE
shall have the first right to settle any alleged infringement of Licensed
Patents by securing cessation of the infringement instituting suit against
the infringer, or entering into a sublicensing agreement in and to relevant
patents in Licensed Patents. To enjoy said first right LICENSEE must
initiate bona fide action to settle any alleged infringement within ninety
(90) days of learning of said infringement. After LICENSEE has recovered
its reasonable attorney's fees and other out-of-pocket expenses directly
related to any action, suit, or settlement for infringement of Licensed
Patents, UW and LICENSEE shall divide any remaining damages, awards, or
settlement proceeds in the following manner:
1. An payment for past, sales will be deemed to be Net Sales and LICENSEE
will pay UW royalties thereon at the rates specified in Paragraph
6.6; and
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[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
2. Any payment which covers future sales will be deemed a sublicense and
royalties will be shared as specified in Article 13.
LICENSEE and UW agree to negotiate in good faith an appropriate
compensation to UW for any non-cash settlement or non-cash
cross-license. UW will not share in the portion of the recovery, if
any, that is payment for "willful infringement."
12.3 In the event LICENSEE institutes suit against an alleged infringer during
the term of exclusivity as provided in this Agreement, then the UW may
agree to voluntarily participate as a named party it its sole discretion.
Otherwise, the UW shall participate as an involuntary plaintiff only if the
UW is determined by a court to be a necessary or indispensable party, in
which case the UW agrees to be bound by any final judgment rendered by the
court though the UW reserves the right to intervene in such suit. Unless
the UW intervenes, the UW's participation in any such suit shall be at
LICENSEE's sole expense, and UW shall, but at LICENSEE's expense for UW's
direct associated expenses, fully and promptly cooperate and assist
LICENSEE in connection with any such suit.
12.4 If LICENSEE fails, within ninety (90) days of learning of an alleged
infringement, to secure cessation of the infringement, institute suit
against the infringer, or provide to UW satisfactory evidence that LICENSEE
is engaged in bona fide negotiation for the acceptance by infringer of a
Sublicense in and to relevant patents in Licensed Patents, UW may then,
upon written notice to LICENSEE, assume full right and responsibility to
secure cessation of the infringement, institute suit against the infringer,
or secure acceptance of a Sublicense from LICENSEE in and to relevant
patents in Licensed Patents, approval for which Sublicense LICENSEE shall
not unreasonably withhold.
12.5 If UW in accordance with the terms and conditions of this Agreement chooses
to institute suit against an alleged infringer, UW may bring such suit in
its own name (or, if required by law, in its and LICENSEE's name) and at
its own expense, and LICENSEE shall, but at UW's expense for LICENSEE's
direct associated expenses, fully and promptly cooperate and assist UW in
connection with any such suit Any and all damages, awards, or settlement
proceeds arising from such a UW-initiated action shall be UW's. 12.6 Should
either UW or LICENSEE commence a suit under the provisions of Paragraph
12.2 or 12.4 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 of and any
recovery in such suit shall be as agreed upon between UW and LICENSEE.
12.7 UW or its designee shall have control over the filing, prosecution and
maintenance of any and all patent applications, whether pending or not yet
filed as of the Effective Date of this Agreement, in Licensed Patents, and
of the maintenance and other management of any and all issued patents in
Licensed Patents.
12.8 LICENSEE shall have the opportunity from time to time to advise UW on
courses of action respecting tile filing and prosecution of patent
applications, and management of patents in Licensed Patents, provided UW or
its designee shall have role authority to prosecute and maintain Licensed
Patents.
8
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
12.9 LICENSEE agrees to reimburse UW for all of its fees and costs relating to
the filing, prosecution and maintenance of patent applications, including,
without limitation, interferences, oppositions, and reexaminations, and
maintenance and defense of patents, in Licensed Patents, whether incurred
prior to the execution of this Agreement or during the term of this
Agreement. Such fees and costs shall not include costs incurred by the UW
in the use of its own resources, such as employee time, and shall not
extend to patenting fees and costs incurred by UW after termination of this
Agreement. As of the Effective Date, UW has not incurred any such fees and
costs. LICENSEE agrees to pay invoices for such fees and costs submitted by
UW upon receipt of any such invoice. Alternatively, UW may instruct its
legal counsel to send copies of all invoices related to the Licensed
Patents directly to LICENSEE, and LICENSEE shall reimburse the invoicer
directly as if that invoicer were UW. UW shall further instruct its legal
counsel to notify UW should any such invoice remain unreimbursed for a
period of more than thirty days from the date of invoice. In any country
where LICENSEE fails to pay fees and costs invoiced to LICENSEE by UW
within thirty (30) days of the date of such invoice, UW may file, prosecute
and/or maintain a patent application or patent at its own expense and for
its own exclusive benefit, and LICENSEE thereafter shall not be licensed
under such patent or patent application.
13. SUBLICENSE(S)
13.1 LICENSEE may grant Sublicense(s) during the Exclusive period. Any and all
Sublicenses granted by LICENSEE shall be subject to prior approval of UW.
LICENSEE shall not grant any sublicense of NeoRx's rights in Licensed
Patents that does not also include a Sublicense of UW's rights in the same
Licensed Patents.
13.2 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 UW's request, negotiate in good faith a Sublicense(s) hereunder.
13.3 Any Sublicense(s) granted by LICENSEE under this Agreement shall be subject
and subordinate to terms and conditions of this Agreement, except:
(a) Sublicense terms and conditions shall reflect that any Sublicensee(s)
shall not further sublicense; and
(b) The earned royalty rate specified in the Sublicense(s) may be at
higher rates than the rates in this Agreement.
Any such Sublicense(s) shall also expressly include the provisions of Articles
7, 8, and 9 for, the benefit of UW and provide for the transfer of all of
Sublicensee's obligations, including the payment of royalties specified in such
Sublicense(s), to UW or its designee, in the event that this Agreement is
terminated.
13.4 LICENSEE agrees to provide UW a copy of any Sublicense granted pursuant to
this Article 13 within thirty (30) days of execution.
14. TERMINATION
14.1 LICENSEE may terminate this Agreement by giving UW notice in writing at
least thirty (30) days in advance of the effective date of termination
selected by LICENSEE.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
14.2 UW may terminate this Agreement if LICENSEE:
(a) Is in default in payment of royalty, other payments, 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, branch, or false report
within thirty (30) days after written notice thereof by UW.
14.3 Surviving any termination are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of LICENSEE or UW, accrued or to accrue,
because of my beach or default by the other party;
(c) The provisions of Articles 7, 8 and 9; and
(d) Any other provision which by its terms should survive.
15. ASSIGNMENT
This Agreement and any rights or obligations hereunder may be assigned by the UW
but shall not be assigned, transferred or delegated in whole or in part by
LICENSEE, whether by a merger, a sale of assets, or in any other manner, except
with the UW's express written approval, such approval not to be unreasonably
withheld. Any attempted assignment, transfer or delegation in breach of this
provision shall be deemed to be void and of no effect, and shall entitle the UW
to terminate this Agreement upon written notice to LICENSEE. Except as otherwise
provided, this Agreement shall be binding upon and inure to the benefit of the
parties' successors and lawful assigns.
16. DISPUTE RESOLUTION
16.1 The parties shall attempt to resolve through good faith discussions any
dispute which arises under this Agreement. Any dispute may, at the election
of either party, be referred to the chief executive officer and director of
technology transfer, or their authorized representatives. If they are
unable to resolve the dispute, except one having to do with the scope,
enforceability, infringement or validity of a patent, within thirty (30)
days after delivery of written notice of the dispute from one party to the
other, either party may seek to resolve it by initiating Alternative
Dispute Resolution ("ADR") in which the Judicial Arbitration and Mediation
Services ("JAMS"), Seattle, Washington shall select the arbitrator (the
"Arbitrator"), as provided herein. If JAMS is not in existence at the time
of such dispute, the American Arbitration Association, Seattle, Washington
shall be substituted.
16.2 Arbitration will be by a third party arbitrator mutually agreed upon in
writing by LICENSEE and UW 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.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
16.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the Washington Superior Court. The
Arbitrator may limit the scope, time and/or issues involved in discovery.
17. NOTICES
All notices under this Agreement shall be deemed to have been My given when done
in writing and deposited in the United States mail, registered or certified, and
addressed as follows:
To UW: Office of Technology Transfer
University of Washington
1107 N.E. 45th Street, Suite 200
Box 354810
Xxxxxxx, Xxxxxxxxxx 00000
Attention: Director
To LICENSEE: Theseus Medical Imaging
000 Xx. Xxxxxx Xxxxxx
Xxxxx 000 Xxxxx
Xxxxxxxxx, XX 00000
Attention: President
Either party may change its address upon written notice to the other party.
18. WAIVER
None of the terms of this Agreement can be waived except by the written consent
of the party waiving compliance.
19. APPLICABLE LAW; VENUE; JURISDICTION
This Agreement shall be governed by the laws of the State of Washington, without
regard to its conflict of laws principles. Any suit, action, or proceeding
arising out of or relating to this Agreement shall take place in King or
Xxxxxxxx County, Washington. The parties hereby submit to jurisdiction in such
counties.
20. CONFIDENTIALITY
Information in this contract or provided by LICENSEE to UW may be subject to
public disclosure under the Washington State Public Disclosure Act RCW 42.17.
Except as required by law, UW agrees to maintain in confidence all information
designated in writing by LICENSEE as proprietary and confidential. In the event
of a request for such information, UW agrees to inform LICENSEE of such request
and cooperate fully to protect such confidential information; PROVIDED HOWEVER,
that LICENSEE shall bear the burden of resisting disclosure under RCW 42.17.
21. SEVERABILITY
If any provision of this Agreement shall be held to be invalid, illegal or
unenforceable, the validity, legality and enforceability of the remaining
provisions shall not be in any way affected or impaired thereby.
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[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
22. AMENDMENTS AND MODIFICATIONS
No amendment or modification hereof shall be valid or binding upon the parties
unless it is made in writing, cites this Agreement, and signed by duly
authorized representatives of UW and LICENSEE.
23. INTEGRATION
This Agreement embodies the entire understanding of the parties and supersedes
all previous communications, representations, or understandings, either oral or
written, between the parties relating to the subject matter hereof.
24. TRANSFER OF TECHNOLOGY
24.1 The parties entered into a materials transfer agreement dated November 28,
1998, hereby incorporated by reference "MTA"). Pursuant to the MTA, UW has
provided LICENSEE with (1) plasmid pET12a-PAP1 encoding the human protein
annexin V and resistance to penicillin, and (2) purified recombinant human
annexin V protein ("MATERIAL"). The MTA is hereby modified to allow
LICENSEE the right to use the MATERIAL in commercial development. Such
MATERIAL shall be considered Technology under this Agreement.
24.2 UW has in its custody a plasmid designated pJ110, which encodes a modified
form of annexin V with the structure NH2,-Ala-Cys-Asp-His-Ser-(annexin V
amino acids 1-320, with Cys-316 mutated to Ser-316) described by Tanaka K
et al. (Biochemistry 1996; vol. 35; pp. 922-929). LICENSEE may at its
option request transfer of such plasmid from UW for use in its research and
commercial activities under this Agreement Upon such request and subject to
the plasmid being available, the parties will enter into a materials
transfer agreement with terms substantially similar to the materials
transfer agreement referenced in section 24.1. UW will follow the customary
practices of a research institution in maintaining stocks the plasmid, but
does not guarantee that it will continue to be available for transfer to
LICENSEE throughout the entire term of this Agreement, Upon transfer to
LICENSEE, such plasmid shall be considered Technology under this Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
UNIVERSITY OF WASHINGTON
Signature /s/ XXXXXX XXXXXX
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Name Xxxxxx X. Xxxxxx
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Title Director Office of Technology Transfer and
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Associate Vice Xxxxxxx Research
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Date
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THESEUS MEDICAL IMAGING
Signature /s/ XXXXXX XXXXXX
----------------------------------------
Name Xxxxxx Xxxxxx
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Title Vice President
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Date 8 June, 1999
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