THE INFORMATION MARKED BY * AND [ ] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTIONS HAVE BEEN SEPARATELY FILED
WITH THE COMMISSION.
EXCLUSIVE LICENSE AGREEMENT AND OPTION
THIS AGREEMENT ("Agreement"), effective as of April 1, 1997 ("Effective
Date"), is entered into by and between THE NATIONAL JEWISH MEDICAL AND RESEARCH
CENTER ("National Jewish"), a non-profit educational and research institution
organized under the laws of Colorado and having principal offices at 0000
Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxx 00000, and PROGENITOR, INC., a Delaware
corporation having principal offices at 0000 Xxxxxxxx Xxxx, Xxxxxxxx, Xxxx
00000-0000 ("Progenitor").
WHEREAS, Progenitor desires to obtain certain rights and license under
intellectual property held or otherwise controlled by National Jewish covering
the EBHX-11 cell line to screen for erythroid and other hematopoietic
factors [***]; and
WHEREAS, National Jewish is willing to grant such certain rights.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, National Jewish and Progenitor agree as follows:
1.- DEFINITIONS
1.1. "EBHX-11 Cell Line" shall mean the immortalized Erythroid Body HOX Cell
Line Number 11 (including any progeny, derivatives, or modifications
thereto), a proprietary cell line developed by Xx. Xxxxxx Xxxxxx, an
employee of National Jewish, and certain colleagues, which is a subject
of [***], and is the subject of the Materials Transfer Agreement signed
by Progenitor on January 25th, 1996.
1.2. "Field of Use" shall mean the use of the EBHX-11 Cell line as an assay
to screen for erythroid or other hematopoietic factors [***].
1.3. "Product" shall mean any compound, formulation or composition whose
utility is identified or confirmed by Progenitor using the EBHX-11 Cell
Line within the Field of Use.
1.4. "Sublicensee" shall mean any third party licensed by Progenitor to use,
manufacture, or sell any Product.
1.5. "Collaborator" shall mean any third party that enters into an agreement
with Progenitor to develop, manufacture, use, or sell any Product.
1.6. "Combination Products" shall mean a combination of a Product with at
least one other active ingredient, such active ingredient being one that
is either proprietary to Progenitor or licensed by Progenitor from a
third party.
1
1.7. "Affiliate" or "Affiliates" shall mean any company or business entity:
(i) in which Progenitor owns or controls at least fifty (50) percent of
the outstanding stock, or any entity over which Progenitor, directly or
indirectly, exercises effective control, or (ii) any individual or
company which owns, directly or indirectly, fifty (50) percent or more
of the outstanding stock of Progenitor, or otherwise exercises, directly
or indirectly, effective control of Progenitor.
2.- GRANT OF RIGHTS
2.1. Subject to the terms and conditions of this Agreement, National Jewish
hereby grants to Progenitor a right and license to use the EBHX-11 Cell
Line within the Field of Use. This right and license shall be exclusive
for one year commencing on the Effective Date and non-exclusive
thereafter.
2.2. The right and license granted to Progenitor shall not include the right
to sublicense the EBHX-11 Cell Line except as part of an agreement with
a Sublicensee or Collaborator and only for the field of use of this
license granted to Progenitor. Terms of this Agreement, or their
substantive equivalents, shall be incorporated into any such agreement
between Progenitor or its Affiliates and any Sublicensees or
Collaborators, as deemed necessary by National Jewish to protect its
rights to the EBHX-11 Cell Line.
2.3. The term of this right and license shall commence upon the Effective
Date and shall end on the third anniversary of the Effective Date.
National Jewish hereby grants Progenitor an option to extend the term of
this right and license on a year-by-year basis for no more than two
additional years by providing written notice thereof to National Jewish
no later than three (3) months prior to the third and fourth anniversary
dates of this Agreement and by paying the Extended Annual Maintenance
Fees specified in Section 3.2 of this Agreement.
3.- CONSIDERATION
3.1. ANNUAL FEES. In partial consideration for the right and license granted
to Progenitor in Section 2, Progenitor shall pay to National Jewish a
fee equal to [***], said fee to be paid in three equal payments of
[***] each. The first such payment shall be made within ten (10) days
after the Effective Date. The second such payment shall be made on the
first anniversary of the Effective Date. The third and final such
payment shall be made on the second anniversary of the Effective Date.
Notwithstanding the above, in the event that Progenitor terminates this
Agreement pursuant to Section 6.2 prior to the second anniversary of the
Effective Date, the payment due date for any unpaid fees under this
Section 3.1 shall be the effective date of termination and Progenitor
shall pay to National Jewish any such unpaid fees on the effective date
of such termination.
3.2. EXTENSION FEES. In the event that Progenitor chooses to exercise the
option granted by National Jewish pursuant to Section 2.3 and thereby
extend the term of this Agreement, Progenitor shall pay to National
Jewish an extension fee equal to [***] for each one year extension.
Such payment shall be due and payable, and Progenitor shall pay such
2
fee, on or before the anniversary of the Effective Date which
corresponds to the first day of the year of the one year extension.
3.3. ADDITIONAL FEES. Progenitor shall pay National Jewish Additional Fees
for each and every agreement made between Progenitor or its Affiliates
and Sublicensees or Collaborators that includes the purpose of further
research and/or development of any and all Products or Combination
Products. The amount of the Additional Fees shall be the greater of
[***] or [***] of the value of any Cash Considerations received by
Progenitor or its Affiliates from said Sublicensees or Collaborators.
For the purposes of this Agreement, "Cash Considerations" shall include
any initial or upfront fee, but will not include the value of any
milestone fees or equity or royalty payments on sales of any Product
or Combination Product. Payment of Additional Fees shall be delivered
to National Jewish by Progenitor no later than 30 days after the
effective date of any agreements with Sublicensees or Collaborators.
3.4. PAYMENTS AND RECORDS. Progenitor shall make available to National
Jewish, on a confidential basis, copies of any agreements between
Progenitor or its Affiliates and any Sublicensees or Collaborators.
Copies provided may be redacted to protect confidential information, but
must contain information necessary and sufficient for the purpose of
validating Additional Fees owed to National Jewish. Upon National
Jewish's request and at National Jewish's sole expense, Progenitor and
its Affiliates shall permit an independent Certified Public Accountant
selected by National Jewish (except one to whom Progenitor has
reasonable objections) to have access during ordinary business hours to
such of Progenitor's and its Affiliates' records as may be necessary to
determine, in respect of any year ending not more than three (3) years
prior to the date of such request, the correctness of any payment made
by Progenitor to National Jewish under this Agreement. Progenitor shall
remain responsible for all payments due hereunder by any Affiliate. If
a discrepancy in payments favoring Progenitor or its Affiliates is
discovered, Progenitor shall remit the past due amount to National
Jewish. If a discrepancy is discovered which is greater than five (5)
percent of the amount paid National Jewish, Progenitor shall pay for the
cost of the audit.
3.5. INTEREST ON PAST DUE AMOUNTS. Progenitor shall pay National Jewish
interest on all payments and royalties past due, at an annual rate equal
to the lesser of ten (10) percent, or the highest rate permitted under
applicable law, compounded on each anniversary of the payment due date.
Any such payments made by Progenitor under this Section 3.5 shall not be
construed to cure any breach of this Agreement.
3.6. TAXES WITHHELD. Any income or other tax that Progenitor or its
Affiliates are required to withhold on behalf of National Jewish with
respect to the payments made to National Jewish under this Agreement
shall be deducted from said payments prior to remittance to National
Jewish; provided, however, that in regard to any tax so deducted,
Progenitor or its Affiliates shall give or cause to be given to National
Jewish such assistance as may reasonably be necessary to enable National
Jewish to claim exemption therefrom or credit
3
therefor, and in each case shall furnish National Jewish proper evidence
of the taxes paid on its behalf.
4.- INTELLECTUAL PROPERTY RIGHTS
4.1. OWNERSHIP. Rights to inventions and discoveries, whether or not
patentable or copyrightable, relating to Products or Combination
Products identified through the use of the EBHX-11 Cell Line within the
Field of Use under the terms of Section 2 of this Agreement which are
conceived and reduced to practice by employees of Progenitor shall be
owned by Progenitor.
4.2. GRANT OF RIGHTS TO NATIONAL JEWISH. In the event that an employee or
paid contractor of Progenitor or its Affiliates conceives or reduces to
practice any invention or discovery which is a significant improvement
to the EBHX-11 cell line or a use thereof, such invention or discovery
shall be considered outside the scope of this agreement and Progenitor
shall immediately provide notice to National Jewish of any such
discovery or invention. Such discoveries or inventions shall be
considered the joint property of Progenitor and National Jewish, and
Progenitor and National Jewish jointly agree to negotiate an agreement
relating to the protection and commercialization of such discoveries or
inventions.
4.3. Nothing in the foregoing sections 4.1 and 4.2 shall be interpreted in
any way to supersede the provisions related to the ownership of
intellectual property contained in the Sponsored Research Agreement
between Progenitor and National Jewish dated September 18, 1996.
4.4. Notwithstanding any other provision of this Agreement, National Jewish
hereby reserves, during the period of exclusivity of this Agreement, the
perpetual, royalty-free right to conduct research and other academic,
non-commercial activities with respect to the use of EBHX-11 Cell Line
licensed to Progenitor hereunder. It is the intent of the parties that
National Jewish shall be entitled to use the cell line to the fullest
extent, including the right of National Jewish to contract with third
parties to obtain funding for further research and development, provided
that such parties are not granted any rights or licenses or options to
the EBHX-11 Cell Line which are inconsistent with the right and license
granted to Progenitor under this Agreement.
4.5. GOVERNMENT RIGHTS. This Agreement is subject to all of the terms and
conditions of Public Law 96-517, as amended, and Progenitor agrees to to
take all action necessary on its part to enable National Jewish to
satisfy its obligation thereunder related to the EBHX-11 Cell Line.
5.- REPRESENTATIONS AND WARRANTIES
5.1. REPRESENTATIONS AND WARRANTIES BY NATIONAL JEWISH. National Jewish
represents and warrants that: (i) to the best of its knowledge, National
Jewish is the owner of the entire right, title and interest in and to
the EBHX-11 Cell Line, (ii) to the best of its knowledge,
4
National Jewish is the owner of the entire right, title and interest in
and to any and all intellectual property, including without limitation
patent applications and patents, covering the EBHX-11 Cell Line, (iii)
National Jewish has the full power, right and authority to grant the
right and license granted to Progenitor hereunder, (iv) National Jewish
has the full power, right, and authority to enter into this Agreement
and to carry out its obligations hereunder, (v) National Jewish has not
granted and will not grant any right or license to any third party that
is inconsistent with the right and license granted to Progenitor herein.
5.2. REPRESENTATION AND WARRANTY BY PROGENITOR. Progenitor represents and
warrants that Progenitor has the full power, right, and authority to
enter into this Agreement and to carry out its obligations hereunder.
5.3. LIMITATION OF WARRANTY. EXCEPT FOR THE EXPRESS WARRANTEES SET FORTH IN
SECTIONS 5.1 AND 5.2, NATIONAL JEWISH AND PROGENITOR GRANT NO
WARRANTEES, EXPRESS OR IMPLIED, EITHER IN FACT OF BY OPERATION OF LAW,
BY STATUTE OR OTHERWISE, AND NATIONAL JEWISH AND PROGENITOR EACH
SPECIFICALLY DISCLAIM ANY IMPLIED WARRANTY OF QUALITY, WARRANTY OF
MERCHANTABILITY, WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE OR
WARRANTY OF NONINFRINGEMENT.
6.- TERM AND TERMINATION
6.1. TERM. Unless terminated in accordance with the provisions of this
Section 6, the term of this Agreement shall commence on the Effective
Date and continue in full force and effect for an initial period of
three years and thereafter, subject to Progenitor's exercise of the
option granted by National Jewish under Section 2.3 and payment of
applicable extension fees pursuant to Section 3.2, on a year to year
basis until the fifth anniversary of the Effective Date.
6.2. TERMINATION BY PROGENITOR. Progenitor may terminate this Agreement at
any time for any reason, such termination to be effective sixty (60)
days after the date of receipt by National Jewish of Progenitor's
written notice of termination. Such termination, however, shall not
relieve Progenitor of any obligations under Section 3 of this Agreement
if this Agreement is terminated prior to the third anniversary of the
Effective Date; provided, however, that Progenitor shall have no
obligations under Section 3.2 as a result of termination pursuant to
this Section 6.2.
6.3. TERMINATION FOR BREACH OR DEFAULT. In the event that either party to
this Agreement shall be in breach or default of an obligation under this
agreement and shall fail to remedy such breach or default within sixty
(60) days after receipt of written notice thereof by the other party,
where such notice will contain a full description of the event or
occurrence constituting a breach of the Agreement, the nonbreaching
party to this Agreement shall be entitled to terminate this Agreement
upon written notice to the party in breach or default at any time after
such sixty (60) day period. Either party may immediately terminate this
agreement for fraud, willful misconduct or illegal conduct of the other
party upon written
5
notice of same to the other party. Termination by National Jewish for
breach or default shall not relieve Progenitor of its obligations under
Section 3 of this Agreement if this Agreement is terminated prior to the
third anniversary of the Effective Date; provided, however, that
Progenitor shall have no obligations under Section 3.2 as a result of
termination pursuant to this Section 6.3.
6.4. TERMINATION UPON BANKRUPTCY. If, during the term of this Agreement,
Progenitor shall become bankrupt or insolvent or if the business of
Progenitor shall be placed in the hands of a receiver or trustee,
whether by voluntary act of Progenitor or otherwise, or if Progenitor
shall cease to exist as an active business, this Agreement shall, to the
extent permitted by law, immediately terminate.
6.5. CONSEQUENCES OF TERMINATION. Termination of this Agreement shall not
affect the rights and obligations of the parties which have accrued
prior to the effective date of termination. In particular, termination
of this Agreement shall not relieve Progenitor of the obligations under
Section 3 of this Agreement if this Agreement is terminated prior to the
third anniversary of the Effective Date; provided, however, that
Progenitor shall have no obligations under Section 3.2 as a result of
termination pursuant to this Section 6.5.
6.6. SURVIVAL. The following sections of this Agreement shall survive
termination of this Agreement for any reason: Sections 3.1, 3.3, 3.4,
3.5, 3.6, 4, 5.3, 6.5, 6.6, 7, and 8.
7.- MISCELLANEOUS
7.1. NOTICES. It shall be a sufficient giving of any notice, request,
report, statement disclosure, or other communication hereunder, if the
party giving the same shall deposit a copy thereof in the United States
Post Office in certified mail, postage prepaid, addressed to the other
party at its address hereinafter set forth or at any other address as
the other party shall have theretofore in writing designated:
NATIONAL JEWISH:
Xxxxxx Xxxxxxx
Director of Research Administration and Technology Transfer
National Jewish Medical and Research Center
Room F204
0000 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000
PROGENITOR:
Xxxxx Xxxxxxxx
Progenitor, Inc.
0000 Xxxxxxxx Xxxx
Xxxxxxxx, Xxxx 00000-0000
6
The date of giving any such notice, request, report, statement,
disclosure, or other communications, and the date of making any payment
hereunder required (provided such payment is received), shall be the
U.S. postmark of such envelope, if marked, or the actual date of receipt
if delivered otherwise.
7.2. INDEMNITY. Progenitor agrees to indemnify, hold harmless and defend
National Jewish, its trustees, officers, employees and agents against
any and all claims, suits, losses, damages, costs, fees and expenses,
including attorney fees, resulting from or arising out of the exercise
of this license. Progenitor shall not be responsible for the negligence
or intentional wrongdoing of National Jewish. However, National Jewish
does warrant that it has complied with the duty of disclosure to the
U.S. Patent and Trademark Office.
7.3. STATUS OF PARTIES. Neither party hereto is an agent of the other party
for any purpose whatsoever.
7.4. USE OF NAMES. Neither party will, without the prior written consent of
the other party, use in advertising, publicity or otherwise, any trade
name, trademark, trade device, service xxxx, symbol, or any
abbreviation, contraction or simulation thereof owned by the other
party, use the name of any employee or agent of the other party in any
publication, publicity, advertising or otherwise, or represent, either
directly or indirectly, that any product or service of the other party
is a product or service of the representing party, or that it is made in
accordance with or utilizes information or documents of the other party.
However, each party may acknowledge the existence of this Agreement and
the parties hereto, publicly or privately, as necessary for carrying out
its business or as required by law. Progenitor shall allow National
Jewish to review all relevant portions of any documents filed with the
U.S. Securities and Exchange Commission that contain references to
National Jewish Medical and Research Center or this Agreement, such
review to be conducted in a timely manner so as not to unreasonably
delay such filings.
7.5. ENTIRE AGREEMENT. This Agreement, including any schedules or other
attachments which are incorporated herein by reference, contain the
entire agreement between the parties as to its subject matter. This
Agreement merges all prior discussions between the parties and neither
party chall be bound by conditions, definitions, warranties,
understandings or representations concerning such subject matter except
as provided in this Agreement or as may be specified later in writing
and signed by the properly authorized representatives of the parties.
This Agreement can be modified or amended only by written agreement duly
signed by persons authorized to such agreements on behalf of the
parties.
7.6. WAIVER. The failure of a party in any instance to insist upon the
strict performance of the terms of this Agreement shall not be construed
to be a waiver or relinquishment of any of the terms of this Agreement,
either at the time of the party's failure to insist upon strict
performance or at any time in the future, and such term or terms shall
continue in full force and effect.
7
7.7. TITLES. All titles and article headings contained in this Agreement are
inserted only as a matter of convenienece and reference. They do not
define, limit, extend, or describe the scope of this Agreement or the
intent of any of its provisions.
7.8. CONFIDENTIALITY. All information concerning the subject matter of this
Agreement disclosed to one party by the other orally or in written form
shall be maintained in confidence by the other party and shall not be
disclosed to any other person, firm or agency, governmental or private,
or used for purposes other than those set forth in this Agreement,
without the prior written consent of the other party, except to the
extent such information:
(i) is known at the time of its receipt by the receiving party as
documented by written records dated prior to such disclosure; or
(ii) is in the public domain other than through the fault of the
receiving party; or
(iii) is subsequently disclosed to the receiving party by a third party
who may lawfully do so and who is not under an obligation of
confidentiality to the supplying party; or
(iv) is disclosed to the Securities and Exchange Commission in filings
by Progenitor therewith or to other governmental agencies to facilitate
the issuance of marketing approvals for Products; or
(v) is disclosed by Progenitor to potential Sublicensees or
Collaborators within the terms of this Agreement, which Sublicensees or
Collaborators shall first agree to be bound by the confidentiality
obligations contained in this Agreement; or
(vi) is required to be disclosed in a judicial or administrative
proceeding after legal remedies for maintaining the subject matter in
confidence have been exhausted.
7.9. FINANCIAL TERMS. Neither party shall disclose the financial terms of
this Agreement to any third party (other than the employees of either
party) without the prior written consent of the other party, unless such
disclosure is otherwise required by law or applicable regulation.
7.10. PUBLICATIONS. Progenitor agrees to supply National Jewish with copies
of all written documents or presentation materials at least thirty (30)
days prior to any publication or oral presentation of those materials,
in order to allow the National Jewish to review those materials and take
any actions necessary to protect intellectual property related to the
EBHX-11 Cell Line or to ensure compliance with Section 7.8 of this
Agreement.
7.11. FORCE MAJEURE. No failure or omission by the parties hereto in the
performance of any obligation of this Agreementshall be deemed a breach
of this Agreement or create any liability if the same shall arise from
any cause or causes beyond the control of the parties, including, but
not limited to, the following: act of God, acts or omissions of any
government; any rules, regulations or orders issued by any governmental
authority or by
8
any officer, department, agency or instrumentality thereof; fire; storm;
flood; earthquake; accident; war; rebellion; insurrection; riot;
invasion; strike; and lockouts; and provided that such failure or
omission resulting from one of the above causes is cured as soon as is
practicable after the occurrence of one or more of the above-mentioned
causes.
7.12. GOVERNING LAW. This Agreement shall be construed as having been entered
into in the State of Colorado and shall be interepreted in accordance
with and its performance governed by the laws of the State of Colorado.
7.13. ASSIGNABILITY. This Agreement shall be binding upon and inure to the
benefit of respective successors and assigns of the parties hereto,
however, a party may only assign its rights hereunder with the prior
written consent of the other party, such consent not to be unreasonably
withheld or delayed. In order to obtain the other party's written
consent, the assigning party shall advise the other party in writing as
to the entity to which it wishes to assign this Agreement. The other
party shall respond to the assigning party's request within ten (10)
days of receipt of the assigning party's notice. If the other party
shall refuse to provide its consent, it shall provide its reasons in
writing. Failure by the other party to respond within said ten (10) day
period shall be deemed consent to the assigning party's request.
Notwithstanding the foregoing, Progenitor shall have the right to Assign
this Agreement without the prior written consent of National Jewish in
connection with the sale of all or substantially all of its assets,
provided that Progenitor is not in breach and that the assignee agrees
in writing to the terms of this Agreement.
7.14. SEVERANCE. Each clause of this Agreement is a distinct and severable
clause and if any clause is deemed illegal, void, or unenforceable, the
validity, legality, or enforceability of any other clause or portion of
this Agreement will not be affected thereby.
8.- DISPUTE RESOLUTION
8.1. DISPUTE RESOLUTION. If one of the parties hereto declares that a
dispute between the parties has arisen related to this Agreement, such
dispute shall, in the first instance, be the subject of good faith
negotiations between the parties to resolve such dispute. Meetings to
resolve disputes shall be held in the jurisdiction of the party that did
not first allege the existence of a dispute, unless another location is
slected that is mutually acceptable to the parties. Should the
negotiations not lead to a settlement of the dispute within thirty (30)
days of the date of the meeting, the parties shall refer the dispute to
a mutually acceptable mediation service to resolve the dispute. The
mediation shall be attended by individuals from within each party who
have decision making authority with respect to the matter in question.
If the mediation does not lead to a settlement of the dispute within
forty-five (45) days of the date of the meeting, then the parties shall
submit the issue to arbitration before a panel of arbitrators under the
rules of the American Arbitration Association. Unless the parties
otherwise agree, arbitration will be held in the jurisdiction of the
party that did not first allege the existence of the dispute. The panel
of arbitrators shall consist of three parties: one selected by each
party, as well as a disinterested third party that the two arbitrators
shall name. The third arbitrator shall be a person who has had
experience
9
in the business of biotechnology or pharmaceutical licensing. If a
qualified person in this field cannot be found and agreed upon, the two
arbitrators shall use their own discretion and select a third arbitrator
with qualifications as they deem appropriate. The three arbitrators
shall be given full power to hear and finally determine and dispose of
all disputes between the parties that may arise from or that are related
to this Agreement. The parties agree that, any provision of applicable
law notwithstanding, they will not request, and the arbitrators shall
have no authority to award, punitive or exemplary damages against any
party. The arbitrators shall make their ruling in writing no later than
thirty (30) days after the hearing. The decision of two of the three
arbitrators shall be binding on the parties. No party has the right to
appeal the ruling, to any court or otherwise. Judgment upon the
decision rendered may be entered in any courthaving jurisdiction or
application may be made to such court of a judicial acceptance of the
award and an order of enforcement, as the case may be. All fees and
expenses payable with respect to the mediation and arbitration
proceedings shall be shared by both parties during the course of the
mediation and arbitration proceedings, but, in the case of the
arbitration, shall be reimbursed in favor of the prevailing party after
the arbitration ruling is rendered.
IN WITNESS THEREOF, the parties hereto have executed this Agreement as of the
day and year first written above.
National Jewish Medical and Research Center
By: /s/ Xxxxxx Xxxxxxx
Xxxxxx Xxxxxxx
Director of Research Administration and Technology Transfer
Date: 3/26/97
Progenitor, Inc
By: /s/ Xxxxxxx X. Xxxxxxxx
V.P. - Corporate Development
Date: March 31, 1997
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