Exhibit 10.13
CERTAIN INFORMATION HAS BEEN DELETED FROM THIS EXHIBIT AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT UNDER RULE 24b-2.
LICENSE AGREEMENT
regarding
US PATENTS ON TRANSPEPTIDATION
between
PolyPeptide Laboratories A/S
Xxxxxxxxxxxx 0
0000 Xxxxxxxx
Xxxxxxx
and
BioNebraska, Inc.
0000 XX 00xx Xxxxxx
Xxxxxxx
Xxxxxxxx 00000
XXX
LICENSE AGREEMENT
(Transpeptidation)
THIS AGREEMENT is entered in to on the 17th day of February 1997, between:
(1) PolyPeptide Laboratories A/S, a Danish company incorporated under the
laws of Denmark, with its registered offices at Xxxxxxxxxxxx 0, 0000
Xxxxxxxx, Xxxxxxx, hereinafter referred to as "the Licensor" and
(2) BioNebraska, Inc., a company incorporated under the laws of the United
States, with its registered offices at 0000 XX 00xx Xxxxxx, Xxxxxxx,
Xxxxxxxx 00000, XXX, hereinafter referred to as "the Licensee".
WHEREAS:
A. The Licensor has developed a patented invention on Transpeptidation
relating to the manufacture and testing of pharmaceutical peptides;
B. The parties wish to enter this Agreement for the purpose of licensing
the use of the US Transpeptidation patents upon the terms and
conditions hereafter contained.
The parties agree as follows:
1. DEFINITIONS
In this Agreement:
1.1 "the Patents" shall mean the US Patent No. 4,339,534 expiring July 13,
1999 and US Patent No. 4,806,473 expiring February 21, 2006, both
registered in the name of the Licensor, and all divisions,
continuations, continuations in part, re-issues, renewals, extensions
or editions to any such Patent.
1.2 "the Territory" shall mean United States of America
1.3 "the Patented Technology" shall mean the technology for the production
and use of peptides and proteins produced with DNA recombinant
technology as covered by the Patents and includes all matters required
to be confidential according to Article 6.
1.4 "a Product" shall mean any pharmaceutical product comprised in whole or
in part of peptides or proteins produced with the use of the Patented
Technology.
1.5 "controlling interest" shall mean with reference to a party hereto or
an assignee the interest in that body of a person, firm, or
corporation who or which:
(i) is able to exercise or is entitled to acquire control (whether
direct or indirect) over the body's affairs and in particular
(but without prejudice to the generality of the preceding words)
if he or it possesses or is entitled to acquire the greater part
of the issued share capital or voting power in the body or
(ii) in the event of the dissolution or liquidation of the body would
be entitled to the greater part of the assets available for
distribution among its shareholders.
1.6 "Net Sales" shall mean gross proceeds resulting from sales of a
Product in the Territory by Licensee less:
(i) trade and/or cash discounts actually allowed and taken,
(ii) forwarding expenses, freight, postage and duties actually paid
or allowed and taxes imposed on the seller with respect to such
sales, and
(iii) credits for goods returned and any credit given for reduction in
price.
1.7 Where the context so admits the singular includes the plural and vice
versa.
1.8 The clause headings shall not form part hereof for the purpose of
construction.
2. GRANT OF RIGHTS
In consideration of the fees and royalty payments hereinafter referred
to, the Licensor hereby grants to the Licensee under the Patents, the
Patented Technology and all other rights held by the Licensor an
exclusive license to a restricted use of the Patented Technology,
namely for the production and use of peptides and proteins produced
with DNA recombinant technologies in the Territory. The Licensee shall
not directly or indirectly use the Patents or Patented Technology for
any purpose other than expressly granted hereunder, whereas the
licensor retains its right to make use of the patents within the
Territory for non-recombinant use.
3. PAYMENTS
3.1 Fees
Upon signing this Agreement, the Licensee will pay the Licensor a fee of
[CONFIDENTIAL TREATMENT REQUESTED] for obtaining the exclusive license
as described in Article 2. One year after having received the first
regulatory approval for the marketing of a Product,
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the Licensee shall pay to the Licensor a further fee of [CONFIDENTIAL
TREATMENT REQUESTED].
3.2 Royalty
The Licensee agrees to pay to the Licensor royalties for the rights
granted to it hereunder at the rate of [CONFIDENTIAL TREATMENT
REQUESTED] of the Net Sales by the Licensee of a Product until the last
of the Patents expires. Forty five (45) days after the end of each
calendar quarter, the Licensee shall furnish to the Licensor a
calculation of Net Sales and the royalties payable hereunder for such
calendar quarter and shall accompany each such report with the payment
of royalties then due. Calendar quarters shall be the periods ending on
March 31, June 30, September 30 and December 31. The Licensor shall
have the right, through its duly authorised representatives, and at its
expense, to examine the books and records of the Licensee during
reasonable business hours for the purpose of verifying the correctness
of the calculation of Net Sales and royalties payable.
3.3 Currency
Fees and Royalties accrued pursuant to this Agreement shall be payable
to the Licensor in US Dollars. If direct remittance to the Licensor in
US Dollars of such fees and royalties is not lawful or practicable,
payment thereof shall be made by deposit, within the period provided
for in Section 3.1, - upon execution of the Agreement and 1 year after
occurrence of the first regulatory approval - and Section 3.2 - 45 days
after the end of each calendar quarter.
4. TRANSFER OF PATENTED TECHNOLOGY
The Licensor shall promptly disclose to the Licensee all particulars
and details of the Patented Technology sufficient for the Licensee to
use it for the production and use of peptides and proteins produced
with DNA recombinant technology.
5. CONFIDENTIAL INFORMATION
During the continuance of this Agreement and at all times thereafter
the Licensee shall (except to fulfil the purposes of this Agreement)
keep confidential the Patented Technology, the improvements and
information related thereto and shall not disclose or use any part of
it and the Licensee shall (except to fulfil the purposes of this
Agreement) keep confidential and shall not disclose or use any
information received by it from the Licensor whether under this
Agreement or otherwise (except to the extent that such information is
published by the Licensor or is contained in a published patent
specification or is generally known otherwise than by a breach of this
Agreement) and shall ensure by securing and enforcing suitable
contractual provisions that its employees and all other persons or
companies to whom such information is communicated shall be similarly
bound.
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6. PATENT INFRINGEMENTS
(a) If either of the parties hereto shall come to know of any infringement
or threatened infringement of the Patents then it shall immediately
inform the other party thereof and both parties shall discuss what
action shall be taken.
(b) Should either party decide for any reason that it is not willing to
take legal proceedings in respect of such infringement then the other
party may at its own expense take any such action as it considers
desirable and the inactive party shall on reimbursement of its expenses
lend its name and give the party taking such action all such assistance
whether legal or technical as such other party requests of it.
7. ASSIGNMENT
Neither the Licensor nor the Licensee may assign this Agreement except:
(a) to an assignee in which that party has a controlling interest; or
(b) with the consent of the other party which consent shall not be
unreasonably withheld.
8. WARRANTIES
8.1 Exclusivity
The Licensor warrants to the Licensee that the Licensor will not use
the Patented Technology for the production and use of peptides and
proteins produced by nonrecombinant technologies in the Territory, nor
that the Licensor has granted or will grant any other license for the
herein described use of the Patented Technology during the term of this
Agreement.
8.2 Restricted Use
The Licensee warrants to the Licensor that the Licensee will not use
the Patented Technologies for any other purpose than for peptides and
proteins produced with DNA recombinant technologies, and especially
will not use the Patented Technologies for the product Calcitonin.
9. PERIOD OF AGREEMENT
Subject to the provisions of Clause 10 hereof, this Agreement shall
continue for the life of the last Patent to expire.
10. TERMINATION
This Agreement may be terminated at any time in any of the following
ways:
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(a) if either of the parties shall become insolvent or shall have a
receiver or trustee appointed in charge of the whole or any part
of its assets or shall enter into liquidation (other than for the
purposes of reorganisation), then the other party may by notice in
writing served upon it terminate this Agreement with immediate
effect.
(b) if either of the parties shall commit a material breach of its
obligations under this Agreement, the other may send to it notice
in writing specifying the breach complained of and calling upon
it to remedy the same within a specified period of not less than
ninety days, and if the party in default shall not have remedied
the breach within the said period, then the party serving the
notice may terminate this Agreement by a further 14 days' notice
in writing served upon the party in default.
11. NOTICES
Any notice or other communication authorised or required to be given
hereunder or for the purposes hereof shall be deemed to be sufficiently
given to either party if left at or forwarded by registered post,
recorded delivery service, or facsimile addressed to such party at its
last known address or its registered office and every notice or other
such communication shall be deemed to have been received and given at
the time when in the ordinary course of transmission it would have been
delivered at the address to which it was sent.
12. LAW
This Agreement shall in all respects be governed by the laws of
England.
13. ARBITRATION
All disputes between the parties relating to this Agreement, including
its interpretation that cannot be settled amicably by the parties,
shall be referred to and finally resolved by arbitration under the
Rules of the London Court of International Arbitration in England,
which Rules are deemed to be incorporated by reference to this Article.
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PolyPeptide Laboratories, A/S BioNebraska, Inc.
/s/ Xxxx Xxxxxxxxx /s/ Xxxxxx X. Xxxxxxxx
--------------------------------- -------------------------------
Hillerod, February 17, 1997 Falls Village, 2/27 1997
General Manager Chairman of the Board and CEO
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