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EXHIBIT 10.19
LICENSE AGREEMENT
by and between
THE SCRIPPS RESEARCH INSTITUTE,
a California nonprofit
public benefit corporation
and
Sangamo Biosciences, Incorporated
a Delaware corporation
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TABLE OF CONTENTS
DEFINITIONS..................................................... 1
AFFILIATE.................................................... 1
CONFIDENTIAL INFORMATION..................................... 2
FIELD........................................................ 2
LICENSED PRODUCT............................................. 2
NET SALES.................................................... 2
SCRIPPS PATENT RIGHTS........................................ 3
SCRIPPS TECHNOLOGY........................................... 3
LICENSED TSRI PLANT PRODUCT.................................. 3
NADII AGREEMENT.............................................. 3
SUB-LICENSED J&J PRODUCT..................................... 3
SUB-LICENSED AGREEMENT....................................... 3
ZFP AGREEMENTS............................................... 3
LICENSE TERMS AND CONDITIONS.................................... 3
GRANT OF LICENSE............................................. 3
INITIAL LICENSE FEE.......................................... 3
ROYALTIES.................................................... 3
Percentage Royalty........................................ 3
Minimum Royalty........................................... 4
COMBINATION PRODUCTS......................................... 4
Definition of Combination Product......................... 4
Royalty Payable on Combination Products................... 4
QUARTERLY PAYMENTS........................................... 5
Sales by Licensee......................................... 5
Sales by Sublicensees..................................... 5
TERM OF LICENSE.............................................. 5
SUBLICENSE................................................... 5
DURATION OF ROYALTY OBLIGATIONS.............................. 5
REPORTS...................................................... 6
RECORDS...................................................... 6
FOREIGN SALES................................................ 6
FOREIGN TAXES................................................ 6
PATENT MATTERS.................................................. 6
PATENT PROSECUTION AND MAINTENANCE........................... 6
PATENT COSTS................................................. 7
OWNERSHIP.................................................... 7
SCRIPPS RIGHT TO PURSUE PATENT............................... 7
INFRINGEMENT ACTIONS......................................... 7
Prosecution and Defense of Infringements.................. 8
Allocation of Recovery.................................... 8
OBLIGATIONS RELATED TO COMMERCIALIZATION........................ 8
COMMERCIAL DEVELOPMENT OBLIGATION............................ 8
GOVERNMENTAL APPROVALS AND MARKETING OF LICENSED PRODUCTS.... 9
INDEMNITY.................................................... 9
PATENT MARKING............................................... 9
NO USE OF NAME............................................... 9
U.S. MANUFACTURE............................................. 9
FOREIGN REGISTRATION......................................... 9
LIMITED WARRANTY................................................ 9
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INTERESTS IN INTELLECTUAL PROPERTY RIGHTS.......................... 10
PRESERVATION OF TITLE.............................................. 10
Governmental Interest............................................ 10
Reservation of Rights............................................ 10
CONFIDENTIALITY AND PUBLICATION.................................... 10
Treatment of Confidential Information............................ 10
Publications..................................................... 10
Publicity........................................................ 10
TERM AND TERMINATION............................................... 11
Term............................................................. 11
Termination Upon Default......................................... 11
Termination Upon Bankruptcy or Insolvency........................ 11
Rights Upon Expiration........................................... 11
Rights Upon Termination.......................................... 11
Work-in-Progress................................................. 12
ASSIGNMENT; SUCCESSORS............................................. 12
Assignment....................................................... 12
Binding Upon Successors and Assigns.............................. 12
GENERAL PROVISIONS................................................. 12
Independent Contractors.......................................... 12
Arbitration...................................................... 12
Location....................................................... 12
Selection of Arbitrators....................................... 13
Discovery...................................................... 13
Case Management................................................ 13
Remedies....................................................... 13
Expenses....................................................... 13
Confidentiality................................................ 13
Entire Agreement; Modification................................... 14
California Law................................................... 14
Headings......................................................... 14
Severability..................................................... 14
No Waiver........................................................ 14
Name............................................................. 14
Attorneys' Fees.................................................. 14
Notices.......................................................... 15
Compliance with U.S. Laws........................................ 16
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LICENSE AGREEMENT
This License Agreement is entered into and made effective as of this 14th day
of March, 2000, by and between THE SCRIPPS RESEARCH INSTITUTE, a California
nonprofit public benefit corporation ("Scripps") located at 00000 Xxxxx Xxxxxx
Xxxxx Xxxx, Xx Xxxxx, Xxxxxxxxxx 00000, and Sangamo Biosciences, Incorporated,
a Delaware corporation, located at 000 Xxxxx Xxxxxx, Xxxxxxxx, XX 00000
("Licensee"), with respect to the facts set forth below.
RECITALS
A. Scripps has been and is engaged in fundamental scientific biomedical
and biochemical research including research relating to zinc finger proteins
("ZFP's").
B. Licensee has been and is engaged in research and development of ZFP's
for use in various fields.
C. Licensee has previously exclusively sublicensed certain Scripps'
ZFP-related technology from Xxxxxxx & Xxxxxxx in specified fields.
D. Scripps has previously exclusively licensed Norvartis Agricultural
Discovery Institute, Inc. ("NADII") certain Scripps' ZFP-related technology in
other fields, notably plant agricultural products.
E. Scripps has disclosed to Licensee certain technology and Scripps has
the exclusive right to grant a license to the technology, subject to the
above-noted agreements and certain rights of the U.S. Government to use such
technology for its own purposes, resulting from the receipt by Scripps of
certain funding from the U.S. Government.
F. Scripps desires to grant to Licensee, and Licensee wishes to acquire
from Scripps, an exclusive worldwide right and license to all remaining
licensable fields useful with the technology and to certain patent rights and
know-how of Scripps with respect thereto, subject to the terms and conditions
set forth herein.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants and conditions
set forth herein, Scripps and Licensee hereby agree as follows:
1. Definitions. Capitalized terms shall have the meaning set forth below.
1.1. Affiliate. The term "Affiliate" shall mean any entity which
directly or indirectly controls, is controlled by or is under common control
with Licensee. The term "control" as used herein means the possession of the
power to direct or cause the direction of the management and the policies of an
entity, whether through the ownership of a majority of the outstanding voting
securities or by contract or otherwise.
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1.2. Confidential Information. The term "Confidential Information"
shall mean any and all proprietary or confidential information of Scripps or
Licensee, which may be exchanged between the parties at any time and from time
to time during the term of this Agreement. Information shall not be considered
confidential to the extent that it:
a. Is publicly disclosed through no fault of any party hereto,
either before or after it becomes known to the receiving party; or
b. Was known to the receiving party prior to the date of this
Agreement, which knowledge was acquired independently and not from
another party hereto (or such party's employees); or
c. Is subsequently disclosed to the receiving party in good faith
by a third party who has a right to make such disclosure; or
d. Has been published by a third party as a matter of right.
1.3. Field. The term "Field" shall mean all fields of use except the
Sublicensed J & J Product as defined in paragraph 1.10 herein or the Licensed
TSRI Plan Product as defined in the NADII Agreement of paragraph 1.9 herein. It
is understood by all Parties to this Agreement that NADII, under the NADII
Agreement referred to in paragraph 1.9 herein, has a license for research tool
use for the Field described in the NADII Agreement.
1.4. Licensed Product. The term "Licensed Product" shall mean any
product that cannot be developed, manufactured, offered to sale, used, sold or
imported without infringing one or more issued claims under Scripps Patent
Rights.
1.5. Net Sales. The term "Net Sales" shall mean the gross amount
invoiced by Licensee, or its Affiliates and sublicensees, or any of them, on all
sales of Licensed Products, less (i) discounts actually allowed, (ii) credits
for claims, allowances, retroactive price reductions or returned goods, (iii)
prepaid freight and (iv) sales taxes or other governmental charges actually paid
in connection with sales of Licensed Products (but excluding what are commonly
known as income taxes and value-added taxes). For purposes of determining Net
Sales, a sale shall be deemed to have occurred when an invoice therefor shall be
generated or the Licensed Product shipped for delivery. Sales of Licensed
Products by Licensee, or an Affiliate or sublicensee of Licensee to any
affiliate or sublicensee which is a reseller thereof shall be excluded, and only
the subsequent sale of such Licensed Products by Affiliates or sublicensees of
Licensee to unrelated parties shall be deemed Net Sales hereunder.
1.6. Scripps Patent Rights. The term "Scripps Patent Rights" shall
mean rights arising out of or resulting from (i) any and all U.S. and foreign
patent applications and patents covering Scripps Technology (a list of which is
attached as Exhibit A), (ii) the patents proceeding from such applications,
(iii) all claims of continuations-in-part directed solely to subject matter
specifically described in Scripps Technology, and (iv) divisionals,
continuations, reissues, reexaminations, and extensions of any patent or
application set forth in (i)-(iii) above, so long as said patents have not been
held invalid and/or unenforceable by a court of competent jurisdiction from
which there is no appeal or, if appealable, from which no appeal has been taken.
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1.7. Scripps Technology. The term "Scripps Technology" shall mean so
much of the technology as is proprietary to Scripps disclosed in PCT 95/00829,
filed 18 January 1995, a copy of which is attached as Exhibit A hereto and
incorporated herein by reference, together with materials, information and
know-how related thereto whether or not the same is eligible for protection
under the patent laws of the United States or elsewhere, and whether or not any
such processes and technology, or information related thereto, would be
enforceable as a trade secret or the copying of which would be enjoined or
restrained by a court as constituting unfair competition.
1.8. Licensed TSRI Plant Product. The term "Licensed TSRI Plant
Product" shall mean any product exclusively licensed by Scripps to NADII under
the NADII Agreement.
1.9. NADII Agreement. The term "NADII Agreement" shall mean the Plant
License Agreement entered into between Scripps and NADII on November 17, 1999; a
redacted copy of which is attached hereto as Exhibit B and incorporated herein
by reference.
1.10. Sub-Licensed J&J Product. The term "Sub-Licensed J&J Product"
shall mean "Licensed Product" as defined in the Sub-License Agreement.
1.11. Sub-License Agreement. The term "Sub-License Agreement" shall
mean the agreement entered into between Xxxxxxx and Xxxxxxx and Licensee on 9
May 1996; a redacted copy of which is attached hereto as Exhibit C and
incorporated herein by reference.
1.12. ZFP Agreements. The term "ZFP Agreements" shall mean
collectively this License Agreement, the NADII Agreement and the Sub-License
Agreement.
2. License Terms and Conditions.
2.1. Grant of License. Scripps hereby grants to Licensee an exclusive,
worldwide license, including the right to sublicense, to Scripps Technology and
under Scripps Patent Rights, to make, to have made, to use, to offer for sale,
to sell, and to import Licensed Products in the Field, subject to the terms of
this Agreement.
2.2. Initial License Fee. In partial consideration for the exclusive
license granted pursuant to Section 2.1 hereof, Licensee shall pay to Scripps a
non-refundable license fee upon execution of this Agreement in the amount of
70,000 shares of Licensee common stock as specified in Exhibit D. The license
fee described in this Section is consideration for the grant and continuation of
the license hereunder, and Scripps shall have no obligation to return any
portion of such license fee, notwithstanding any failure by Licensee to develop
any Licensed Product or market any Licensed Product commercially, and
notwithstanding the volume of sales of any such Licensed Product.
2.3. Royalties.
2.3.1. Percentage Royalty. As additional consideration for the
exclusive license granted pursuant to Section 2.1 hereof, Licensee shall pay to
Scripps a continuing royalty on a country-by-country basis in the amount of (i)
two percent (2%) of Net Sales of Licensed Products which cannot be made, used
or sold in such country without utilizing one or more valid
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claims under Scripps Patent Rights. Only single royalty on any Licensed Product
shall be payable to Scripps under the ZPF Agreements.
2.3.2. Minimum Royalty. From and after 1 January, 2001, in order to
maintain the license granted hereunder in force, Licensee shall pay to Scripps
no later than 90 days after commencement of January 1 of each year, a minimum
annual royalty. The minimum annual royalty for the twelve (12) month period
beginning with such date shall be Fifty Thousand Dollars ($50,000), and the
amount of the minimum annual royalty payable for each subsequent twelve (12)
month period during the term hereof shall be the greater of Fifty Thousand
Dollars ($50,000) or two percent (2%) of the total royalties payable under this
Agreement during the immediately preceding twelve (12) month period. Any
percentage royalties earned and paid to Scripps pursuant to Section 2.3.1 hereof
for any twelve (12) month period shall be credited against the minimum royalty
payable for such period, and the payment of any shortfall between actual
royalties paid and the minimum annual royalty applicable to such twelve (12)
month period shall be payable to Scripps within sixty (60) days after the last
day of such twelve (12) month period.
2.4 Combination Products.
2.4.1. Definition of Combination Product. As used herein, the term
"Combination Product" shall mean a Licensed Product which cannot be
manufactured, offered to sell, used or sold without infringing Scripps Patent
Rights, utilizing Scripps Technology licensed hereunder, infringing or
utilizing one or more patents or proprietary technology or know-how of (i)
Licensee, (ii) a third party licensed pursuant to an agreement between Licensee
and such third party, or (iii) Scripps under a license agreement other than
this Agreement (referred to herein as "other licensed rights").
2.4.2. Royalty Payable on Combination Products. The royalty payable
on Combination Products shall be the royalty rate set forth in Section 2.3.1
above based on a pro rata portion of Net Sales of Combination Products in
accordance with the following formula:
X = A/B, where
X = the pro rata portion of Net Sales attributable to
Scripps Patent Rights or other Scripps Technology
licensed herein (expressed as a percentage), and
A = the fair market value of the component in the
Combination Product utilizing Scripps Technology
licensed hereunder, and
B = A plus the fair market value of all other
components in the Combination Product using other
licensed rights.
The fair market values described above shall be determined by the parties
hereto in good faith. In the absence of agreement as to the fair market value
of all of the components contained in a
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2.9. Reports. Licensee shall furnish to Scripps at the same time as
each royalty payment is made by Licensee, a detailed written report of Net
Sales of the Licensed Products and the royalty due and payable thereon,
including a description of any offsets or credits deducted therefrom, on a
product-by-product and country-by-country basis, for the calendar quarter upon
which the royalty payment is based.
2.10. Records. Licensee shall keep, and cause its Affiliates and
sublicensees to keep, full, complete and proper records and accounts of all
sales of Licensed Products in sufficient detail to enable the royalties payable
on Net Sales of each Licensed Product to be determined. Scripps shall have the
right to appoint an independent certified public accounting firm approved by
Licensee, which approval shall not be unreasonably withheld, to audit the
records of Licensee, its Affiliates and sublicensees as necessary to verify the
royalties payable pursuant to this Agreement. Licensee, its Affiliates and
sublicensees shall pay to Scripps an amount equal to any additional royalties to
which Scripps is entitled as disclosed by the audit, plus interest thereon at
the rate of one-half percent (0.5%) per month. Such audit shall be at Scripps'
expense; provided, however, that if the audit discloses that Scripps was
underpaid royalties with respect to any Licensed Product by at least five
percent (5%) for any calendar quarter, then Licensee, its Affiliates or
sublicensee, as the case may be shall reimburse Scripps for any such audit
costs. Scripps may exercise its right of audit as to each of Licensee, its
Affiliates or sublicensees no more frequently than once in any calendar year.
The accounting firm shall disclose to Scripps only information relating to the
accuracy of the royalty payments. Licensee, its Affiliates and sublicensees
shall preserve and maintain all such records required for audit for a period of
three (3) years after the calendar quarter to which the record applies.
2.11. Foreign Sales. The remittance of royalties payable on sales
outside the United States shall be payable to Scripps in United States Dollar
equivalents at the official rate of exchange of the currency of the country from
which the royalties are payable, as quoted in the Wall Street Journal for the
last business day of the calendar quarter in which the royalties are payable. If
the transfer of or the conversion into the United States Dollar equivalents of
any such remittance in any such instance is not lawful or possible, the payment
of such part of the royalties as is necessary shall be made by the deposit
thereof, in the currency of the country where the sale was made on which the
royalty was based to the credit and account of Scripps or its nominee in any
commercial bank or trust company of Scripps' choice located in that country,
prompt written notice of which shall be given by Licensee to Scripps.
2.12. Foreign Taxes. Any tax required to be withheld by Licensee
under the laws of any foreign country for the accounts of Scripps shall be
promptly paid by Licensee for and on behalf of Scripps to the appropriate
governmental authority, and Licensee shall use its best efforts to furnish
Scripps with proof of payment of such tax together with official or other
appropriate evidence issued by the applicable governmental authority. Any such
tax actually paid on Scripps' behalf shall be deducted from royalty payments due
Scripps.
3. Patent Matters.
3.1. Patent Prosecution and Maintenance. From and after the date of
this Agreement, the provisions of this Section 3 shall control the prosecution
and maintenance of any patent included within Scripps Patent Rights. Subject to
the requirements, limitations and
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conditions set forth in this Agreement, Scripps shall direct and control (i)
the preparation, filing and prosecution of the United States and foreign patent
applications within Scripps Patent Rights (including any interferences and
foreign oppositions) and (ii) maintain the patents issuing therefrom. Scripps
shall select the patent attorney, subject to Licensee's written approval, which
approval shall not be unreasonably withheld. Both parties hereto agree that
Scripps may, at its sole discretion, utilize Scripps' Office of Patent Counsel
in lieu of independent counsel for patent prosecution and maintenance described
herein, and the fees and expenses incurred by Scripps with respect to work done
by such Office of Patent Counsel shall be paid as set forth below. Licensee
shall have full rights of consultation with the patent attorney so selected on
all matters relating to Scripps Patent Rights. Scripps shall use its best
efforts to implement all reasonable requests made by Licensee with regard to the
preparation, filing, prosecution and/or maintenance of the patent applications
and/or patents within Scripps Patent Rights. Scripps shall keep Licensee
informed with regard to the patent application and maintenance processes.
Scripps shall deliver to Licensee copies of all patent applications,
amendments, related correspondence, and other related matters.
3.2. Patent Costs. Licensee acknowledges and agrees that Scripps does not
have independent funding to cover patent costs, and that the license granted
hereunder is in part in consideration for Licensee's assumption of a pro rata
share of the patent costs and expenses as described herein subject to other
licensee's patent prosecution payment obligations under the ZFP Agreements,
sublicenses thereunder, or other such agreements. Licensee shall pay a pro rata
share of all future reasonable expenses incurred by Scripps pursuant to Section
3.1 hereof. The pro rata share of Patent Costs shall be determined by the number
of licensees. In the event one of the Licensees defaults under their license
and those rights revert to Scripps, the other licensees shall have the right to
bid on obtaining a license to those rights. Licensee agrees to pay all such
future patent expenses directly or to reimburse Scripps for the payment of such
expenses within sixty (60) days after Licensee receives an itemized invoice
therefor. In the event Licensee elects to discontinue payment for the filing,
prosecution and/or maintenance of any patent application and/or patent within
Scripps Patent Rights, any such patent application or patent shall be excluded
from the definition of Scripps Patent Rights and from the scope of the license
granted under this Agreement, and all rights relating thereto shall revert to
Scripps and may be freely licensed by Scripps. Licensee shall give Scripps at
least sixty (60) days' prior written notice of such election. No such notice
shall have any effect on Licensee's obligations to pay expenses incurred up to
the effective date of such election.
3.3 Ownership. The patent applications filed and the patents obtained by
Scripps pursuant to Section 3.1 hereof shall be owned solely by Scripps,
assigned to Scripps and deemed a part of Scripps Patent Rights.
3.4 Scripps Right to Pursue Patent. If at any time during the term of
this Agreement, Licensee's rights with respect to Scripps Patent Rights are
terminated, Scripps shall have the right to take whatever action Scripps deems
appropriate to obtain or maintain the corresponding patent protection at its
own expense. If Scripps pursues patents under this Section 3.5, Licensee agrees
to cooperate fully, including by providing, at no charge to Scripps, all
appropriate technical data and executing all necessary legal documents.
3.5 Infringement Actions.
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3.5.1. Prosecution and Defense of Infringements. In order to
maintain the license granted hereunder in force, Licensee shall use reasonable
business judgement to prosecute infringements in the Field of any Scripps
Patent Rights and shall defend all charges of infringement arising as a result
of the exercise of Scripps Patent Rights by Licensee, its Affiliates or
sublicensees, unless otherwise agreed to between Scripps and Licensee. Licensee
may enter into settlements, stipulated judgments or other arrangements
respecting such infringement, at its own expense, but only with the prior
written consent of Scripps, which consent shall not be unreasonably withheld.
Scripps shall permit any action to be brought in its name if required by law,
and Licensee shall hold Scripps harmless from any costs, expenses or liability
respecting all such infringements or charges of infringement. Scripps agrees to
provide reasonable assistance of a technical nature which Licensee may require
in any litigation arising in accordance with the provisions of this Section
3.1, for which Licensee shall pay to Scripps a reasonable hourly rate of
compensation. In the event Licensee fails to prosecute any such infringement,
Licensee shall notify Scripps in writing promptly and Scripps shall have the
right to prosecute such infringement on its own behalf. Failure on the part of
Licensee to prosecute any such infringement shall be grounds for termination of
the license granted to Licensee hereunder, with respect to the country in which
such infringement occurs, at the option of Scripps.
3.5.2. Allocation of Recovery. Any damages or other recovery from
an infringement action undertaken by Licensee pursuant to Section 3.5.1 shall
first be used to reimburse the parties for the costs and expenses incurred in
such action, and shall thereafter be allocated between the parties as follows:
(i) thirty percent (30%) to Scripps and (ii) seventy percent (70%) to Licensee.
If Licensee fails to prosecute any such action to completion, then any damages
or other recovery net of the parties' costs and expenses incurred in such
infringement action shall be the sole property of Scripps.
4. Obligations Related in Commercialization.
4.1. Commercial Development Obligation. In order to maintain the
license granted hereunder in force, Licensee shall use reasonable efforts and
due diligence to develop Scripps Technology and Scripps Patent Rights which are
licensed hereunder into commercially viable Licensed Products, as promptly as
is reasonably and commercially feasible, and thereafter to produce and sell
reasonable quantities of Licensed Products. Licensee shall keep Scripps
generally informed as to Licensee's progress in such development, production
and sale, including its efforts, if any, to sublicense Scripps Technology and
Scripps Patent Rights, and Licensee shall deliver to Scripps an annual written
report and such other reports as Scripps may reasonably request. In the event
Scripps has a reasonable basis to believe that Licensee is not using reasonable
efforts and due diligence as required hereunder, upon notice by Scripps to
Licensee which specifies the basis for such belief, Scripps and Licensee shall
negotiate in good faith to attempt to mutually resolve the issue. In the event
Scripps and Licensee cannot agree upon any matter related to Licensee's
commercial development obligations, the parties agree to utilize arbitration
pursuant to Section 10.2 hereof in order to resolve the matter. If the
arbitrator determines that Licensee has not complied with its obligations
hereunder, and such default is not fully cured within sixty (60) days after the
arbitrator's decision, Scripps may terminate Licensee's rights under this
Agreement.
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4.2. Governmental Approvals and Marketing of Licensed Products.
Licensee shall be responsible for obtaining all necessary governmental approvals
for the development, production, distribution, sale and use of any Licensed
Product, at Licensee's expense, including, without limitation, any safety
studies. Licensee shall have sole responsibility for any warning labels,
packaging and instructions as to the use of Licensed Products and for the
quality control for any Licensed Product.
4.3. Indemnity. Licensee hereby agrees to indemnify, defend and hold
harmless Scripps and any parent, subsidiary or other affiliated entity and their
trustees, officers, employees, scientists and agents from and against any
liability or expense arising from any product liability claim asserted by any
party as to any Licensed Product or any claims arising from the use of any
Scripps Patent Rights or Scripps Technology pursuant to this Agreement. Such
indemnity and defense obligation shall apply to any product liability or other
claims, including without limitation, personal injury, death or property damage,
made by employees, subcontractors, sublicensees, or agents of Licensee, as well
as any member of the general public Licensee shall use its best efforts to have
Scripps and any parent, subsidiary or other affiliated entity and their
trustees, officers, employees, scientists and agents named as additional insured
parties on any product liability insurance policies maintained by Licensee, its
Affiliates and sublicensees applicable to Licensed Products.
4.4. Patent Marking. To the extent required by applicable law,
Licensee shall xxxx all Licensed Products or their containers in accordance with
the applicable patent marking laws.
4.5. No Use of Name. The use of the name "The Scripps Research
Institute", "Scripps", or any variation thereof in connection with the
advertising or sale of Licensed Products is expressly prohibited.
4.6. U.S. Manufacture. To the extent required by applicable United
States laws, if at all, Licensee agrees that Licensed Products will be
manufactured in the United States, or its territories, subject to such waivers
as may be required, or obtained, if at all, from the United States Department of
Health and Human Services, or its designee.
4.7. Foreign Registration. Licensee agrees to register this Agreement
with any foreign governmental agency which requires such registration, and
Licensee shall pay all costs and legal fees in connection therewith. In
addition, Licensee shall assure that all foreign laws affecting this Agreement
or the sale of Licensed Products are fully satisfied.
5. Limited Warranty. Scripps hereby represents and warrants that it has
full right and power to enter into this Agreement. SCRIPPS MAKES NO OTHER
WARRANTIES CONCERNING SCRIPPS PATENT RIGHTS OR SCRIPPS TECHNOLOGY COVERED BY
THIS AGREEMENT, INCLUDING WITHOUT LIMITATION, ANY EXPRESS OR IMPLIED WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AS TO SCRIPPS PATENT
RIGHTS, SCRIPPS TECHNOLOGY OR ANY LICENSED PRODUCT. SCRIPPS MAKES NO WARRANTY
OR REPRESENTATION AS TO THE VALIDITY OR SCOPE OF SCRIPPS PATENT RIGHTS, OR THAT
ANY LICENSED PRODUCT WILL BE FREE FROM AN INFRINGEMENT ON PATENTS OR OTHER
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INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES, OR THAT NO THIRD PARTIES ARE IN
ANY WAY INFRINGING SCRIPPS PATENT RIGHTS OR SCRIPPS TECHNOLOGY COVERED BY THIS
AGREEMENT.
6. Interests in Intellectual Property Rights.
6.1 Preservation of Title. Scripps shall retain full ownership and
title to Scripps Technology, and Scripps Patent Rights licensed hereunder and
shall use its reasonable best efforts to preserve and maintain such full
ownership and title, subject to Licensee fully performing all of its
obligations under this Agreement.
6.2 Governmental Interest. Licensee and Scripps acknowledge that
Scripps has received, and expects to continue to receive, funding from the
United States Government in support of Scripps' research activities. Licensee
and Scripps acknowledge and agree that their respective rights and obligations
pursuant to this Agreement shall be subject to Scripps' obligations and the
rights of the United States Government, if any, which arise or result from
Scripps' receipt of research support from the United States Government,
including without limitation, the grant by Scripps to the United States a
non-exclusive, irrevocable, royalty-free license to Scripps Technology and
Scripps Patent Rights licensed hereunder for governmental purposes.
6.3 Reservation of Rights. Scripps reserves the right to use for any
non-commercial research purposes and the right to allow other nonprofit
institutions to use for any non-commercial research purposes any Scripps
Technology and Scripps Patent Rights licensed hereunder, without Scripps or
such other institutions being obligated to pay Licensee any royalties or other
compensation.
7. Confidentiality and Publication.
7.1 Treatment of Confidential Information. The parties agree that
during the term of this Agreement, and for a period of three (3) years after
this Agreement terminates, a party receiving Confidential Information of the
other party will (i) maintain in confidence such Confidential Information to
the same extent such party maintains its own proprietary industrial
information, (ii) not disclose such Confidential Information to any third party
without prior written consent of the other party and (iii) not use such
Confidential Information for any purpose except those permitted by this
Agreement.
7.2 Publications. Licensee agrees that Scripps shall have a right to
publish in accordance with its general policies.
7.3 Publicity. Except as otherwise provided herein or required by law,
no party shall originate any publication, news release or other public
announcement, written or oral, whether in the public press, stockholders'
reports, or otherwise, relating to this Agreement or to any sublicense
hereunder, or to the performance hereunder or any such agreements, without the
prior written approval of the other party, which approval shall not be
unreasonably withheld. Scientific publications published in accordance with
Section 7.2 of this Agreement shall not be construed as publicity governed by
this Section 7.3.
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8. Term and Termination.
8.1. Term. Unless terminated sooner in accordance with the terms set
forth herein, this Agreement, and the license granted hereunder, shall
terminate as provided in Section 2.6 hereof.
8.2. Termination Upon Default. Any one or more of the following events
shall constitute an event of default hereunder: (i) the failure of a party to
pay any amounts when due hereunder and the expiration of fifteen (15) days
after receipt of a written notice requesting the payment of such amount; (ii)
the failure of a party to perform any obligation required of it to be
performed hereunder, and the failure to cure within sixty (60) days after
receipt of notice from the other party specifying in reasonable detail the
nature of such default. Upon the occurrence of any event of default, the
non-defaulting party may deliver to the defaulting party written notice of
intent to terminate, such termination to be effective upon the date set forth
in such notice.
Such termination rights shall be in addition to and not in
substitution for any other remedies that may be available to the non-defaulting
party. Termination pursuant to this Section 8.2 shall not relieve the
defaulting party from liability and damages to the other party for breach of
this Agreement. Waiver by either party of a single default or a succession of
defaults shall not deprive such party of any right to terminate this Agreement
arising by reason of any subsequent default.
8.3. Termination Upon Bankruptcy or Insolvency. This Agreement may be
terminated by Scripps giving written notice of termination to Licensee upon the
filing of bankruptcy or bankruptcy of Licensee or the appointment of a receiver
of any of Licensee's assets, or the making by Licensee of any assignment for
the benefit of creditors, or the institution of any proceedings against
Licensee under any bankruptcy law. Termination shall be effective upon the date
specified in such notice.
8.4. Rights Upon Expiration. Neither party shall have any further rights
or obligations upon the expiration of this Agreement upon its regularly
scheduled expiration date with respect to this Agreement, other than the
obligation of Licensee to make any and all reports and payments for the final
quarter period. Provided, however, that upon such expiration, each party shall
be required to continue to abide by its non-disclosure obligations as described
in Section 7.1, and Licensee shall continue to abide by its obligation to
indemnify Scripps as described in Section 4.3.
8.5 Rights Upon Termination. Notwithstanding any other provision of
this Agreement, upon any termination of this Agreement prior to the regularly
scheduled expiration date of this Agreement, the license granted hereunder
shall terminate. Except as otherwise provided in Section 8.6 of this Agreement
with respect to work-in-progress, upon such termination, Licensee shall have no
further right to develop, manufacture or market any Licensed Product, or to
otherwise use any Scripps Patent Rights or any Scripps Technology not otherwise
includable therein. Upon any such termination, Licensee shall promptly return
all materials, samples, documents, information and other materials which embody
or disclose Scripps Patent Rights or any Scripps Technology not otherwise
includable therein; provided, however, that Licensee shall not be obligated to
provide Scripps with proprietary information which Licensee
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can show that it independently developed. Any such termination shall not
relieve either party from any obligations accrued to the date of such
termination. Upon such termination, each party shall be required to abide by
its nondisclosure obligations as described in Section 7.1, and Licensee shall
continue to abide by its obligations to indemnify Scripps as described in
Section 4.3.
8.6. Work-in-Progress. Upon any such early termination of the license
granted hereunder in accordance with this Agreement, Licensee shall be entitled
to finish any work-in-progress and to sell any completed inventory of a Licensed
Product covered by such license which remain on hand as of the date of the
termination, so long as Licensee pays to Scripps the royalties applicable to
said subsequent sales in accordance with the terms and conditions as set forth
in this Agreement, provided that no such sales shall be permitted after the
expiration of six (6) months after the date of termination.
9. Assignment; Successors.
9.1. Assignment. Neither this Agreement nor any rights granted
hereunder may be assigned or transferred by Licensee except (i) to an Affiliate
of Licensee or a successor in interest to all or substantially all of the
business assets of Licensee, whether by way of merger, consolidation, sale of
all or substantially all of Licensee's assets, change of control or a similar
transaction, or (ii) as expressly permitted hereunder, without the prior
written consent of Scripps (which consent shall not be unreasonably withheld).
9.2. Binding Upon Successors and Assigns. Subject to the limitations
on assignment herein, this Agreement shall be binding upon and inure to the
benefit of any successors in interest and assigns of Scripps and Licensee. Any
such successor or assignee of Licensee's interest shall expressly assume in
writing the performance of all the terms and conditions of this Agreement to be
performed by Licensee.
10. General Provisions.
10.1. Independent Contractors. The relationship between Scripps and
Licensee is that of independent contractors. Scripps and Licensee are not joint
venturers, partners, principal and agent, master and servant, employer or
employee, and have no other relationship other than independent contracting
parties. Scripps and Licensee shall have no power to bind or obligate each
other in any manner, other than as is expressly set forth in this Agreement.
10.2. Arbitration. Any controversy or claim arising out of or
relating to this Agreement, or the breach thereof, shall be settled by binding
arbitration in accordance with the Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), and the procedures set forth below. In the
event of any inconsistency between the Rules of AAA and the procedures set
forth below, the procedures set forth below shall control. Judgment upon the
award rendered by the arbitrators may be enforced in any court having
jurisdiction thereof.
10.2.1. Location. The location of the arbitration shall be in
the County of San Diego.
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10.2.2. Selection of Arbitrators. The arbitration shall be
conducted by a panel of three neutral arbitrators who are independent and
disinterested with respect to the parties, this Agreement, and the outcome of
the arbitration. Each party shall appoint one neutral arbitrator, and these two
arbitrators so selected by the parties shall then select the third arbitrator.
If one party has given written notice to the other party as to the identity of
the arbitrator appointed by the party, and the party thereafter makes a written
demand on the other party to appoint its designated arbitrator within the next
ten days, and the other party fails to appoint its designated arbitrator within
ten days after receiving said written demand, then the arbitrator who has
already been designated shall appoint the other two arbitrators.
10.2.3. Discovery. Unless the parties mutually agree in writing
to some additional and specific pre-hearing discovery, the only pre-hearing
discovery shall be (a) reasonably limited production of relevant and
non-privileged documents, and (b) the identification of witnesses to be called
at the hearing, which identification shall give the witness's name, general
qualifications and position, and a brief statement as to the general scope of
the testimony to be given by the witness. The arbitrators shall decide any
disputes and shall control the process concerning these pre-hearing discovery
matters. Pursuant to the Rules of AAA, the parties may subpoena witnesses and
documents for presentation at the hearing.
10.2.4. Case Management. Prompt resolution of any dispute is
important to both parties; and the parties agree that the arbitration of any
dispute shall be conducted expeditiously. The arbitrators are instructed and
directed to assume case management initiative and control over the arbitration
process (including scheduling of events, pre-hearing discovery and activities,
and the conduct of the hearing), in order to complete the arbitration as
expeditiously as is reasonably practical for obtaining a just resolution of the
dispute.
10.2.5. Remedies. The arbitrators may grant any legal or
equitable remedy or relief that the arbitrators deem just and equitable, to the
same extent that remedies or relief could be granted by a state or federal
court, provided however, that no punitive damages may be awarded. No court
action may be maintained seeking punitive damages. The decision of any two of
the three arbitrators appointed shall be binding upon the parties.
10.2.6. Expenses. The expenses of the arbitration, including the
arbitrators' fees, expert witness fees, and attorneys' fees, may be awarded to
the prevailing party, in the discretion of the arbitrators, or may be
apportioned between the parties in any manner deemed appropriate by the
arbitrators. Unless and until the arbitrators decide that one party is to pay
for all (or a share) of such expenses, both parties shall share equally in the
payment of the arbitrators' fees as and when billed by the arbitrators.
10.2.7. Confidentiality. Except as set forth below, the parties
shall keep confidential the fact of the arbitration, the dispute being
arbitrated, and the decision of the arbitrators. Notwithstanding the foregoing,
the parties may disclose information about the arbitration to persons who have a
need to know, such as directors, trustees, management employees, witnesses,
experts, investors, attorneys, lenders, insurers, and others who may be directly
affected. Additionally, if a party has stock which is publicly traded, the party
may make such disclosures as are required by applicable securities laws.
Further, if a party is expressly asked by a third party about the dispute or the
arbitration, the party may disclose and
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acknowledge in general and limited terms that there is a dispute with the other
party which is being (or has been) arbitrated. Once the arbitration award has
become final, if the arbitration award is not promptly satisfied, then these
confidentiality provisions shall no longer be applicable.
10.3. Entire Agreement; Modification. This Agreement sets forth the
entire agreement and understanding between the parties as 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.
10.4. California Law. This Agreement shall be construed and
enforced in accordance with the laws of the State of California without regard
to the conflicts of laws principles thereof.
10.5. Headings. The headings for each article and section in this
Agreement have been inserted for convenience of reference only and are not
intended to limit or expand on the meaning of the language contained in the
particular article or section.
10.6. Severability. Should any one or more of the provisions of
this Agreement be held invalid or unenforceable by a court of competent
jurisdiction, it shall be considered severed from this Agreeement and shall not
serve to invalidate the remaining provisions thereof. The parties shall make a
good faith effort to replace any invalid or unenforceable provision with a
valid and enforceable one such that the objectives contemplated by them when
entering this Agreement may be realized.
10.7. No 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 rights to the future enforcement of its
rights under this Agreement, excepting only as to an express written and signed
waiver as to a particular matter for a particular period of time.
10.8. Name. Whenever there has been an assignment or a sublicense
by Licensee as permitted by this Agreement, the term "Licensee" as used in this
Agreement shall also include and refer to, if appropriate, such assignee or
sublicensee.
10.9. Attorneys' Fees. In the event of a dispute between the
parties hereto or in the event of any default hereunder, the party prevailing
in the resolution of any such dispute or default shall be entitled to recover
its reasonable attorneys' fees and other costs incurred in connection with
resolving such dispute or default.
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10.10.
10.11. Notices. Any notices required by this Agreement shall be in writing,
shall specifically refer to this Agreement and shall be sent by registered or
certified airmail, postage prepaid, or by telefax, telex or cable, charges
prepaid, or by overnight courier, postage prepaid and shall be forwarded to the
respective addresses set forth below unless subsequently changed by written
notice to the other party:
For Scripps: The Scripps Research Institute
00000 Xxxxx Xxxxxx Xxxxx Xxxx, XXX-0
Xx Xxxxx, Xxxxxxxxxx 00000
Attention: Director, Technology Development
Fax No.: (000) 000-0000
and a copy to: The Scripps Research Institute
00000 Xxxxx Xxxxxx Xxxxx Xxxx, XXX-0
Xx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax No.: (000) 000-0000
For Licensee: Sangamo Biosciences Incorporated
Point Richmond Tech Center
000 Xxxxx Xxxx., Xxxxx X000
Xxxxxxxx, XX 00000
Attention: President
Fax No.: (000) 000-0000
Notice shall be deemed delivered upon the earlier of (i) when
received, (ii) three (3) days after deposit into the mail, or (iii) the date
notice is sent via telefax, telex or cable, (iv) the day immediately following
delivery to overnight courier (except Sunday and holidays).
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10.12. Compliance with U.S. Laws. Nothing contained in this
Agreement shall require or permit Scripps or Licensee to do any act
inconsistent with the requirements of any United States law, regulation or
executive order as the same may be in effect from time to time.
IN WITNESS WHEREOF, the parties have executed this Agreement by their
duly authorized representatives as of the date set forth above.
SCRIPPS: LICENSEE:
THE SCRIPPS RESEARCH INSTITUTE SANGAMO BIOSCIENCES INCORPORATED
By: /s/ XXXXXX XXXXXXXXX By: /s/ XXXXX XXXXXXX
------------------------------- -------------------------------------
Xxxxxx XxXxxxxxx Xxxxx Xxxxxxx
Title: Executive Vice President Title: VP, Corporate Development
---------------------------- ----------------------------------
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EXHIBIT B
NADII AGREEMENT
"Field" means use as a Licensed Bioremediation Product or Licensed
Plant Product.
"Licensed Bioremediation Product(s)" means any Bioremediation Product
that cannot be made, used, sold, offered for sale or imported without
infringing TRSI Plan Patent Rights or which embodies or is produced using TSRI
Proprietary Property.
"Licensed Plant Product(s)" means any Plant Product which cannot be
made, used, sold, offered for sale or imported without infringing TSRI Plant
Patent Rights or TSRI Plant Variety Protection Rights or which embodies or is
produced using TSRI Proprietary Property.
"Licensed TSRI Plant Product(s)" means any one or more Licensed Plant
Product and/or Licensed Bioremediation Product.
"Plant Products": As used in this Agreement, the term "Plant Product,"
individually, or "Plant Products," collectively, shall mean any one or more
plant composition product, device, method, procedure, software, computer
program, material, or element to be utilized by the agricultural and farming
industry for the purpose of improving, restricting or otherwise modifying
growth or productivity of plants; or preventing or treating disease or insect
or fungal infestation in plants; or controlling or modifying certain traits of
plants or producing improved or modified seeds and plants.
"Proprietary Property" means, with respect to any party hereto, any and
all (i) technology or information, now existing or hereafter arising, in which
such party shall have an exclusive proprietary interest, including, without
limitation, any idea, data, compound, molecule, animal, virus, genome, genetic
element, cell line, material, replicable biological material, know-how,
technique, product, device, method, process, use, composition, skill, invention,
discovery, trade secret, software, computer program, configuration or technology
of any kind, whether or not any such information or technology would be
enforceable as a trade secret, the copying of which would be enjoined or
restrained by a court of competent jurisdiction as constituting copyright
infringement or unfair competition, or the information or technology would be
eligible for protection under the patent, trade secret or copyright laws of the
United States or elsewhere and which has not been publicly disclosed and (ii)
TSRI Plant Patent Rights, and (iii) TSRI Plant Variety Protection Rights.
"TSRI Plant Patent Rights" means the rights arising out of or
resulting from (i) any and all U.S. and foreign patents covering TSRI Plant
Technology and (ii) to the extent they cover TSRI Plant Technology, all
continuations, divisions, continuations-in-part, reissues, reexaminations, and
extentions thereof, so long as such patents have not been held invalid and/or
unenforceable by a court of competent jurisdiction from which there is no
appeal or, if appealable, from which no appeal has been taken.
"TSRI Plant Product(s)" means any one or more Plant Product or
Bioremediation Product.
"TSRI Plant Technology" means any TSRI Proprietary Property
disclosed in the United States Patent Applications set forth on Exhibit A
hereto, and to the extent they cover TSRI Plant Technology, all continuations,
divisions, continuations-in-part, reissues, reexaminations, and extentions
thereof;
"TSRI Plant Variety Protection Rights" means the rights arising
out of or resulting from any and all U.S. and foreign plant variety protection
laws covering TSRI Plant Technology.
"TSRI Proprietary Property" means Proprietary Property in which
TSRI has a proprietary interest.
