LICENCE AGREEMENT
(1) UNIVERSITY COLLEGE CARDIFF CONSULTANTS LIMITED
(2) BIOENVISION INC.
THIS AGREEMENT is made the 21 day of June 1999 BETWEEN:
(1) UNIVERSITY COLLEGE CARDIFF CONSULTANTS LIMITED a company incorporated under
the laws of England and Wales (company number 1477909) whose registered
office is at P0 Xxx 000, 00 Xxxx Xxxxx, Xxxxxxx XXX 0XX ("UC3"); and
(2) BIOENVISION INC., a Delaware corporation with its main office at Xxxxxxxxx
Xxxxx, 00 Xxxxxxxx Xxxxx, Xxxxxx XX0X 0XX ("BIOENVISION")
WHEREAS:
(A) UC3 is the sole proprietor of the Applications.
(B) UC3 has the exclusive worldwide right to license the use of the
Applications.
(C) UC3 is the proprietor of the Know-how.
(D) Further research and development work on the application of the
Applications and Know-how in the Field of Use and the production of
Licensed Products is required.
(E) Such further research and development is the responsibility of BIOENVISION
and includes the Project.
(F) BIOENVISION wishes to take a licence under the Applications and a licence
under the Know-how and UC3 has agreed to grant such licences on and subject
to the terms and conditions set out below.
IT IS AGREED as follows:
1. Definitions and Interpretation
In this Agreement, the recitals and the Schedules hereto:
1.1 the following words and expressions shall have the following meanings
unless the context otherwise requires:
"Applications" the patent applications short particulars of
which are set out in the Schedule and also
one patent application to be filed
immediately after execution of this Agreement
by UC3 on each of the subjects of i)
1,2-diphenylethanes and 1,3-diphenylpropanes
and derivatives and ii) benzyl tetralins and
derivatives, together with
any patent applications claiming priority
therefrom anywhere in the Territory; and any
patents granted pursuant thereto or divided
out therefrom anywhere in the Territory and
any extensions or renewals thereof including,
without limitation, supplementary
certificates of protection;
"Approved Sub-Licensee" any person to whom a sub-licence is granted
by BIOENVISION in accordance with the
provisions of clause 2.3 below;
"Cardiff University the University of Wales, Cardiff of XX Xxx 000,
Xxxxxxx XXx 0XX, XX;
"Compound" any chemical compound falling within one or
more claims of the Patents (or any of them)
and/or utilising or incorporating the
Know-how;
"Commencement Date" the date of countersignature of this Licence
Agreement;
"Field of Use" cancer therapy in humans and animals;
"Improvements" all and any results of the Project together
with all and any Intellectual Property Rights
therein or relating thereto and assigned to
UC3 by Cardiff University;
"Improvement Patents" any patent applications filed by UC3 in the
Territory in respect of any Improvements
together with any patent applications
claiming priority therefrom anywhere in the
Territory; and any patents granted pursuant
thereto or divided out therefrom anywhere in
the Territory and any extensions or renewals
thereof including, without limitation,
supplementary certificates of protection;
"Intellectual Property
Rights" all and any rights in or to inventions,
patents, trademarks, registered designs,
applications for any of the foregoing and the
right to apply therefor in any part of the
world; copyrights, database rights,
topography rights, design rights, trade
names, get-up, rights to confidential
information, know-how; any rights under
licences or consents in relation to the
foregoing, and any similar or equivalent
rights arising and/or subsisting anywhere in
the world;
"Know-how" all technical, industrial and commercial
information and techniques relating to the
application of the Applications in the Field
of Use in whatever form and on whatever media
stored which UC3 is free to disclose and to
licence;
"Licensed Products" Products designed, developed, and/or
manufactured for use in the Field of Use;
"Net Receipts" in the case of any sub-licence by BIOENVISION
to an Approved Sub-Licensee at arm's length
the total sums payable to BIOENVISION for or
in connection with the grant of such
sub-licence in whatever form including
without limitation lump sum payments and
royalties after the deduction of
BIOENVISION's reasonable legal costs
necessarily incurred in connection with the
preparation, negotiation and execution of
such sub-licences. In the case of any
sub-licences by BIOENVISION to Approved
Sub-Licensees other than at arm's length the
sum equivalent to the sums for which a
sub-licence at arm's length would have been
granted less BIOENVISION's reasonable legal
costs referred to above;
"Net Sales Value" in the case of sales at arm's length the
invoiced price of each Licensed Product sold
by BIOENVISION after the deduction of any
reasonable discounts and rebates actually
granted and any credits actually given by
BIOENVISION for returned Licensed Products.
In all other cases (including but not limited
to commercial uses of the Licensed Products
which are not invoiced by BIOENVISION) the
sum equivalent to the invoiced price of the
Licensed Products at which a sale at arm's
length would have been made less the
deductions referred to above:
"Patents" together the Applications and any Improvement
Patents;
"Products" together Compounds and any medical products
comprising one or more Compounds as an active
ingredient; and each a Product,
"Project" the Research Agreement of even date herewith
between BIOENVISION and Cardiff University
for the provision by Cardiff University of
research and development services on and
subject to the terms and conditions therein
contained;
"Term" the period during which this Agreement is in
force in accordance with the provisions of
clause 14.1 below;
"Territory" the Field of Use anywhere in the world,
including countries where there are no
Patents;
"Year" each calendar year during the Term or part
thereof in the case of the first and last
calendar years of the Term;
1.2 words and expressions (including words and expressions defined in clause
1.1 above) in the singular shall include the plural and vice versa;
references to a "party" or the "parties" shall mean a party or the parties
to this Agreement; words importing any gender shall include every gender;
references to a person shall include bodies corporate, unincorporated
associations, partnerships, trusts and individuals;
1.3 headings are for convenience only and shall not affect the construction
interpretation or of this Agreement; references to sub-clauses are to
sub-clauses of the clause in which the reference appears and references to
clauses are to clauses of this Agreement;
1.4 the recitals and the Schedules to this Agreement shall form part of this
Agreement as if set out in the body of this Agreement and references to
this Agreement shall include the recitals and the Schedules;
1.5 references to sales of Licensed Products shall include all sales and other
disposals of or dealings with the Licensed Products by or on behalf of or
with the consent of BIOENVISION.
2. Licence
2.1 In consideration of and conditional upon BIOENVISION:
(a) meeting is obligations under clauses 6 and 8 below; and
(b) paying to UC3 is costs and expenses pursuant to clauses 6 and 8.2 (d)
below (save to the extent of any notice given under clause 8.2 (e)
below); and
(c) performing its other obligations hereunder
UC3 hereby grants to BIOENVISION with effect from the Commencement Date and
during the Term and subject always to the provisions of clauses 2.3, 2.4
and 2.5 below:
(i) an exclusive licence under the Applications; and
(ii) a non-exclusive licence under the Know-how
to develop, manufacture, use, sell, offer for sale or otherwise deal in or
with Licensed Products in the Territory together with the right to grant
sub-licences thereunder to Approved Sub-Licensees on and subject to the
terms and conditions herein contained.
2.2 Nothing contained in this Agreement shall be interpreted or construed as in
any way granting any rights or permission to BIOENVISION to utilise the
Patents, the Know-how, the Improvements and/or the Compounds or any part
thereof and/or to manufacture, use, sell or otherwise deal in or with
Products for any purpose or application other than in the Field of Use.
2.3 BIOENVISION shall have the right to grant sub-licences hereunder PROVIDED
THAT:
(a) all sub-licences shall be expressly restricted to the Field of Use;
(b) all such sub-licences shall determine when and to the same extent that
this Agreement determines howsoever arising;
(c) all sub-licences shall be at arm's length terms unless otherwise
agreed in writing by UG3;
(d) BIOENVISION shall provide UC3 with the name, registered office and
trading address of any sub-licensee prior to such sub-licence being
granted; and
(e) UC3 shall be provided by BIOENVISION with a copy of any sub-licence
within thirty (30) days of such sub-licence being entered into.
2.4 If at any time during the Term either:
(a) BIOENVISION Is to make payment to UC3 in accordance with the
provisions of clause 8.2 (d) below in respect of any Patents; or
(b) BIOENVISION determines its payment obligations under clause 8.2 (d)
below in accordance with the provisions of clause 8.2 (e) below
UC3 shall in its sole discretion have the option to terminate BIOENVISION's
licence pursuant to clause 2.1 above in that part of the Territory to which
the relevant costs and/or expenses relate immediately on giving BIOENVISION
written notice.
2.5 Nothing contained in this Agreement or in clause 2.1 above shall be
interpreted or construed as in any way precluding or restricting Cardiff
University and UC3 from undertaking or continuing with any research and
development work in the Territory utilising the Patents, the Know-how, the
Improvements and/or any Compounds.
3. Disclosure of Know-how
As soon as reasonably practicable following execution of this Agreement UC3
shall to the extent that:
(a) it has not already done so; and
(b) such Know-how is reasonably necessary for BIOENVISION to exercise its
rights granted hereunder
disclose to BIOENVISION the Know-how.
4. Improvements
4.1 UC3 shall disclose to BIOENVISION any Improvements as soon as reasonably
practicable but, in any event, no more than one (1) month from the date
that UC3 is made aware of such Improvements.
4.2 UC3 grants to BIOENVISION with effect from the date of disclosure to
BIOENVISION of the Improvements (if any) and during the Term on and subject
to the terms and conditions contained herein an exclusive licence under the
Improvements (if any) to use such Improvements in the development,
manufacture, use, sale and offer for sale of Licensed Products in the
Territory together with the right subject always to the provisions of
clause 2.3 above to grant sub-licences thereunder to Approved Sub-Licenses.
5. Confidential Information
5.1 For the purposes of this clause 5 "Confidential Information" shall mean all
information of a confidential nature whether oral or written comprising or
relating to:
(a) the Compounds;
(b) the Products;
(c) the Licensed Products;
(d) the terms of this Agreement;
(e) the Patents;
(f) the Know-how;
(g) the Improvements; and
(h) any other information of a confidential nature relating to the
business of either party
disclosed or made available by either party to the other party pursuant to
the terms of this Agreement whether prior to the Commencement Date or
subsequent thereto.
5.2 Subject to the provisions of clauses 5.3, 5.4 and 5.5 below neither party
(the "Recipient") shall in respect of Confidential Information belonging to
and provided or disclosed by the other party (the "Disclosing Party"):
(a) disclose such Confidential Information or any part thereof to any
person;
(b) use such Confidential Information or any part thereof otherwise than
in accordance with and for the purposes of this Agreement;
(c) copy such Confidential Information or any part thereof other than to
the extent necessary to exercise its rights or to perform its
obligations under this Agreement.
5.3 The Recipient shall be permitted to disclose Confidential Information
belonging to the Disclosing Party (and all or any part thereof) in
confidence to those of its professional advisers, officers and employees
who need to know the same in order to perform their duties in connection
herewith or, in the case of professional advisers, to provide advice in
respect hereof.
5.4 BIOENVISION shall be permitted to disclose Confidential Information
belonging in UC3 (and all or any part thereof):
(a) to customers who purchase Licensed Products to the extent necessary to
enable such customers to use the Licensed Products;
(b) in confidence to Approved Sub-Licensees on the same terms and
conditions as are contained in this clause 5;
(c) in confidence to approved financial institutions and potential
investors in BIOENVISION, to the extent necessary to enable
BIOIENVISION to attract investment;
(d) to such governmental agencies, bodies and/or other organisations
anywhere in the Territory as may be necessary in order to apply for,
obtain and/or maintain in force any medical and/or any governmental
approvals, licences and/or consents as may from time to time be
required in connection with the manufacture, use and/or sale of
Licensed Products in the Territory;
(e) in confidence to potential Approved Sub-Licensees but only to the
extent strictly necessary to enable such persons to evaluate whether
in the case of potential Approved Sub-Licensees they wish to become
Approved Sub-Licensees or in the case of potential investors they wish
to invest in BIOENVISION.
5.5 The obligations as to confidentiality contained in clause 5.1 above shall
not apply to any Confidential Information:
(a) which is in the public domain at the date of disclosure or which
subsequently enters the public domain through no act or failure to act
on the part of the Recipient, its professional advisers, officers or
employees or on the part of Approved Sub-Licensees or its officers or
employees; or
(b) which was lawfully and properly in the possession of the Recipient at
the date of disclosure; or
(c) which the Recipient subsequently obtains otherwise than in confidence
from a person in good faith who did not derive the same whether
directly or indirectly in confidence from the Disclosing Party or from
any person to whom the Disclosing Party disclosed the same in
confidence; or
(d) the disclosure of which is required by any applicable law or by any
supervisory or regulatory body to whose rules the Recipient is subject
or with whose rules it is necessary for the Recipient to comply.
5.6 The provisions of this clause 5 shall survive the expiry or termination of
this Agreement howsoever arising.
6. Consideration
6.1 In part consideration of the licence and rights hereby granted to
BIOENVISION, BIOENVISION undertakes to pay to UC3:
(a) royalties calculated at a rate of five per cent (5%) of the Net Sales
Value of each Licensed Product sold by or on behalf of BIOENVISION in
the Territory each Year during the Term; and
(b) royalties calculated at a rate of: thirty five per cent (35%) of Net
Receipts from sub-licences granted by BIOENVISION and relating to the
grant and exercise of such sub-licences and/or sale of Licensed
Products in the Territory.
6.2 All sums to be paid to UC3 hereunder shall be paid in pounds sterling and
shall be exclusive of value added tax which shall be payable (if
applicable) in addition by BIOENVISION and where applicable shall be paid
at the rate of exchange in force at Barclays Bank plc, PO Box 522, Xxxxxxxx
House, Xx Xxxx Avenue, Llanishen, Cardiff CF4 5ZY on the date for payment
thereof (or if such date is not a day when the banks are open for business
the next business day when the banks are so open) PROVIDED ALWAYS THAT
where any payment is made after the date provided for herein conversion
shall be made at UC3's option at the rate of exchange in force on the day
payment is in fact made if this is more favourable to UC3.
6.3 BIOENVISION shall and shall procure that all Approved Sub-Licensees shall
during the Term and for a period of six (6) years thereafter maintain
complete and accurate records of all matters connected with the
manufacture, use and sale and other disposal of Licensed Products in the
Territory showing separately in the case of BIOENVISION the number of
sub-licences granted and in the case of both BIOENVISION and Approved
Sub-Licensees, the quantity of all Licensed Products manufactured, used,
sold or otherwise disposed of in the Territory showing the Net Receipts
and/or Net Sales Values therefor (as applicable).
6.4 BIOENVISION shall submit to UC3 within thirty (30) days after March 31,
June 30, September 30 and December 31 in each Year a report showing on a
country by country basis:
(a) the Net Receipts received by BIOENVISION in the preceding calendar
quarter; and
(b) the total number of Licensed Products manufactured, used, sold and
otherwise disposed of by BIOENVISION in the preceding calendar quarter
and the Net Sales Values therefor.
6.5 At the time of delivery of each such report pursuant to clause 6.4 above
BIOENVISION shall pay to UC3 the full amount of all sums due and payable to
UC3 in respect of that calendar quarter pursuant to the provisions of
clause 6.1 above.
6.6 All sums due to UC3 hereunder shall be paid free and clear of all
deductions or withholdings whatsoever save that BIOENVISION shall be
entitled to deduct and to
pay over to the relevant revenue authorities such taxes and duties as
BIOENVISION is required by law to deduct on remittance of such payments to
UC3. BIOENVISION shall provide UC3 with such documentary evidence as UC3
may reasonably require regarding the amounts so deducted and such evidence
of payment to such revenue authorities as UC3 may reasonably require for
the purposes of seeking to recover such taxes (or any part thereof) under
any applicable legislation or to enable the appropriate provisions of any
double tax agreement to operate in respect of any such payments.
6.7 Without prejudice to any other rights or remedies to which UC3 may be
entitled whether hereunder or at law, UC3 shall be entitled to charge
interest at the rate of two per cent (2%) above the base lending rate of
Barclays Bank plc from time to time in force on all overdue sums owing to
UC3 hereunder (before as well as after judgement).
6.8 BIOENVISION shall and shall procure that all Approved Sub-Licensees shall
whenever required by UC3 allow an independent accountant upon reasonable
notice and during normal business hours to verify the accuracy of the
reports required to be furnished under the provisions of clause 6.4 above
by inspecting and taking copies of BIOENVISION and any Approved
Sub-Licensee's records and accounts PROVIDED ALWAYS THAT such inspection
shall not take place more than once in every two (2) years. The costs of
any such inspection shall be borne by UC3 unless an underpayment of monies
due to UC3 hereunder of more than five percent (5%) is found in which case
all costs incurred shall be borne by BIOENVISION or if already incurred by
UC3 reimbursed by BIOENVISION immediately upon written demand by UC3 for
payment of the same.
7. Obligations of UC3
Subject always to the provisions of clause 8 below UC3 shall during the
Term:
(a) diligently prosecute to grant the patent Applications listed in the
Schedule;
(b) maintain in force any granted patents included within the Patents;
(c) use its reasonable efforts to amend any patent Applications listed in
the Schedule and /or any other patent Applications contained within
the Patents to include any additional claims reasonably requested by
BIOENVISION; and
(d) keep BIOENVISION regularly informed of the status and progress of the
patent Application included in the Schedule and discuss with
BIOENVISION the content of any and all amendments to patent
Applications before submission.
8. Obligations of BIOENVISION
8.1 BIOENVISION shall use its best efforts to commercialise the Compounds.
Specifically, in the first instance BIOENVISION shall undertake clinical
development of Compounds or Licensed Products for the purposes of preparing
such Compounds or Licensed Products for market. BIOENVISION shall use its
best efforts to commence Phase 1 clinical trials of one or more Compounds
within four (4) years of execution of this Agreement.
8.2 During the Term BIOENVISION shall:
(a) be responsible for obtaining and maintaining in force all such
licences, consents and approvals of any government or regulatory
authority in the Territory as may be required from time to time in
connection with the manufacture, use, sale, import, export,
advertisement, storage or use of Licensed Products anywhere in the
Territory;
(b) attend meetings with UC3 at regular intervals and in any event at
least twice in any Year to discuss without limitation BIOENVISION's
development and exploitation of the Patents, the Know-how and the
Licensed Products in the Territory;
(c) not act as agent of UC3 and not give any indication that it is acting
otherwise than as a principal and not make any representation or give
any warranty on behalf of UC3;
(d) subject always to the provisions of clauses 8.2 (e) and 8.3 below
within thirty (30) days of receipt of an invoice from UC3 in respect
thereof, reimburse UC3 for all costs and expenses incurred by UC3 in:
(i) prosecuting to grant the patent Applications listed in the
Schedule and any other patent Applications contained within
the Patents from time to time; and/or
(ii) maintaining in force any granted patents included within the
Patents; and/or
(iii) amending any patent Applications listed in the Schedule
and/or any other patent Applications contained within the
Patents to include any additional claims reasonably
requested by BIOENVISION;
(e) BIOENVISION shall be entitled at any time on giving to UC3 three (3)
months notice in writing to determine its payment obligations pursuant
to clause 8.2 (d) above in respect of any or all of the Patents within
any part of the Territory.
8.3 If at any time during the Term UC3 grants to any person a licence and
sub-licence under the Patents and Know-how in a field of use other than the
Field of Use, UC3
and BIOENVISION shall re-negotiate the level of costs and expenses to be
borne by BIOENVISION pursuant to the provisions of clause 8.2 (d) above.
8.4 BIOENVISION shall and shall procure that all Approved Sub-Licensees shall,
to the extent reasonably practicable:
(a) xxxx the packaging for all Licensed Products with the applicable
patent application number in the relevant country in the Territory or,
where patents have been granted in respect of the Licensed Products in
such countries, the relevant patent number; and
(b) include a statement in a form approved by UC3 making it clear that the
Licensed Products are manufactured under licence from UC3.
9. Intellectual Property Rights
The Improvements and all Intellectual Property Rights in or relating to the
manufacture and use of Compounds, the Know-how and the Patents shall belong
to UC3 absolutely and save as expressly provided herein no rights or
licences in respect thereof are or shall be granted to BIOENVISION.
10. Infringement of Patents and/or Licensed Know-how
10.1 Each party shall immediately inform the other party of any infringement of
the Patents, Improvements, Know-how and/or any part thereof by any person
which comes to its attention during the Term.
10.2 BIOENVISION shall at the request and expense of UC3 take or join with UC3
in taking all such action as UC3 may in its sole discretion decide and
require for the purpose of protecting the Patents, Improvements, Know-how
and/or any part thereof.
10.3 Nothing contained in this clause 10 shall be interpreted or construed as
imposing any obligation on UC3 to take any action or proceedings against
any person who infringes or is alleged to infringe the Patents,
Improvements, Know-how or any part thereof. If UC3 decides not to take any
action for infringement BIOENVISION shall be entitled to do so and UC3
shall SUBJECT ALWAYS to BIOENVISION agreeing to indemnify UC3 to its
reasonable satisfaction in respect of any costs, damages, expenses or other
loss incurred or suffered by UC3 in any such action at the request and
expense of BIOENVISION join with BIOENVISION in any such action and provide
such assistance in connection therewith as BIOENVISION may reasonably
require.
11. UC3 Warranties and Limitations of Liability
11.1 UC3 warrants that:
(a) it has the right to enter into this Agreement and to grant the
licenses hereby granted;
(b) so far as UC3 is aware not having made an exhaustive search the
practice in the Field of Use of any of the inventions included in the
Applications does not infringe any person's Intellectual Property
Rights;
(c) UC3 has no notice of any reason why any of the patent Applications
listed in the Schedule should not proceed to grant.
11.2 Save as set out in clause 11.1 above UC3 makes no warranties or
representations whether express or implied regarding the Patents, Know-how,
the Improvements, Licensed Products and/or the adequacy or accuracy of the
Know-how and/or the Patents and in particular (without limitation) UC3 does
not warrant nor provide any representation that the manufacture, use and/or
sale of Licensed Products and/or use of the Patents and/or Know-how and/or
Improvements will not infringe any person's Intellectual Property Rights
and all or any warranties or representations implied by law or statute are
hereby expressly excluded.
12. BIOENVISION Warranty
BIOENVISION warrants that it has the right to enter into this Agreement and
to perform its obligations hereunder.
13. Indemnity
13.1 UC3 shall not be responsible for and BIOENVISION shall indemnify and hold
UC3 harmless from and against all or any loss, costs, claims, proceedings,
expenses (including without limitation legal costs) and damages howsoever
suffered or incurred by UC3 as a result of or in connection with the use by
BIOENVISION and/or any Approved Sub-Licensees of the Patents and/or
Know-how and/or Improvements including without limitation any manufacture,
use and/or sale of Licensed Products.
13.2 The indemnity contained in clause 13.1 above shall not apply to any loss,
costs, claims, proceedings, expenses and damages to the extent that they
are suffered or incurred by UC3 as a result of any breach by UC3 of any of
the provisions of this Agreement on its part to be performed.
14. Term and Termination
14.1 This Agreement shall be deemed to have come into force on the Commencement
Date and unless earlier determined in accordance with the provisions of
clause 2.4 above and clauses 14.2, 14.3, 14.4, 14.5 and/or 18.3 below shall
continue until expiry of the last of the Patents to expire or if none of
the patent Applications contained within the Patents proceed to grant until
the tenth (10th) anniversary date of the Commencement Date.
14.2 Either party shall be entitled to terminate this Agreement on three (3)
calendar months written notice to the other party
14.3 UC3 shall be entitled to terminate this Agreement immediately on written
notice to BIOENVISION if:
(a) at any time later than four (4) years after the date of execution of
this Licence Agreement BIOENVISION fails to demonstrate to UC3's
satisfaction that BIOENVISION has complied with the provisions of
clause 8.1 above or
(b) BIOENVISION challenges or assists any person to challenge the validity
of the Patents and/or the Know-how or any part thereof.
14.4 Without prejudice to any other right or remedy either party may immediately
by notice in writing to the other party terminate this Agreement at any
time if:
(a) the other party shall commit a breach of any of the provisions of this
Agreement and shall not within thirty (30) days of notice of such
breach remedy the same (if capable of remedy). For the avoidance of
doubt and without prejudice to the provisions of clause 14.3 above
failure to achieve any milestone by the date set out therefor in
clause 8.1 shall not be considered to be a breach by BIOENVISION of
the provisions of this Agreement; or
(b) the other party has a petition for winding-up presented against it
and/or a petition presented against it for the appointment of an
administrator of its undertaking or an application for an interim
order under Part VIII of the Insolvency Xxx 0000 or if the other party
has an administrator, receiver or administrative receiver appointed
over any of its assets or undertaking or if the other party resolves
to or goes into voluntary liquidation (other than for the purposes of
a bona fide reconstruction or amalgamation of a solvent company) or if
the other party proposes or makes any voluntary arrangement with its
creditors or if the other party ceases to carry on business or if the
other party is unable to pay its debts within the meaning of Sections
123 or 236 of the Insolvency Xxx 0000 or upon the happening of any
equivalent event under the laws of any relevant jurisdiction.
14.5 BIOENVISION shall be entitled to terminate its rights in any country within
the Territory at the end of any Year on giving not less than three (3)
months notice in writing to UC3 such notice to expire at the end of a Year.
15. Effects of Expiry and Termination
15.1 In the event of the expiry of this Agreement by effluxion of time and
PROVIDED ALWAYS that where such expiry occurs upon the tenth (10th)
anniversary of the Commencement Date the Know-how and/or any Improvements
do not at that date
remain secret and substantial BIOENVISION shall be entitled to an
irrevocable, royalty free, non-exclusive licence to use the Know-how and
the Improvements in the development, manufacture, use, sale and offer for
sale of Licensed Products in the Territory together with the right to grant
sub-licences thereunder.
15.2 In the event of termination of this Agreement pursuant to the provisions of
clause 2.4, 14.2, 14.3, sub-clauses 14.4 (a) or (b) or clause 14.5 above or
clause 18.3 below all rights and licences hereunder shall cease. In the
event of BIOENVISION exercising its rights to terminate its rights in any
country within the Territory in accordance with the provisions of clause
14.5 above but not the entire Agreement all rights and licences in respect
of such country shall cease.
15.3 Nothing in this Agreement shall be construed as preventing BIOENVISION
after termination of this Agreement from developing, manufacturing, using,
selling, offering for sale or otherwise dealing with Licensed Products in
countries where no patents granted pursuant to the Patents are in force but
only if and to the extent that the Licensed Products do not:
(a) utilise or incorporate any Know-how and/or Improvements which are
secret and not in the public domain or are in the public domain but
only as a result of a breach by BIOENVISION and/or any Approved
Sub-Licensee and/or any of its employees or agents of any of its
confidentiality obligations hereunder or under any sub-licence.
15.4 BIOENVISION shall within thirty (30) days of the date of termination or
expiry of this Agreement howsoever arising render to UC3 a written report
in the form referred to in clause 6.4 above in respect of the calendar
quarter or part thereof up to and including the said date of expiry or
termination and shall at the same time pay to UC3 the full amount of all
sums due and payable pursuant to clause 6 above in respect of all Licensed
Products sold by BIOENVISION and/or Net Receipts received by BIOENVISION
during the calendar quarter or part thereof up to and including the said
date of expiry or termination. Subsequent to termination of this Licence
Agreement BIOENVISION shall pay to UC3 royalties as defined in clause 6
above on Licensed Products manufactured but unsold at the effective date of
termination.
15.5 The expiry or termination of this Agreement howsoever arising shall not
release either party from any obligations arising hereunder prior to the
date of termination.
15.6 The provisions of clauses 5, 6, 9, 11.2, 13, 16, 18 and this clause 15
shall survive the expiry or termination of this Agreement howsoever
arising.
15.7 References in clauses 15.3, 15.4, 15.5 and 15.6 above to termination of
this Agreement shall be deemed to include termination of BIOENVISION's
rights and licences in any country within the Territory.
16 Notices
Any notice required or authorised to be given hereunder shall be in writing
and served personally or sent by post or facsimile addressed to the
relevant party as follows:
XX0 XX Xxx 000
00 Xxxx Xxxxx
Xxxxxxx
XX0 0XX
For the attention of: Dr. Xxxx Xxxxxx
Facsimile Number: 01222 874189
BIOENVISION Xxxxxxxxx Xxxxx
00 Xxxxxxxx Xxxxx
Xxxxxx XX0X 0XX
For the attention of: Mr. Xxxxx Xxxx
Facsimile Number: 0171 8397570
or to such other address or facsimile number as may from time to time be
notified to the other party hereto in writing for this purpose. Any notice
served personally shall be deemed to have been given upon such service. Any
notice sent by post shall be deemed to have been served two (2) days after
the same shall have been posted and any notice sent by facsimile shall be
deemed to have been served upon transmission and in proving such service it
shall be sufficient to prove that the letter or facsimile was properly
addressed and as the case may be posted or transmitted.
17. Assignment
BIOENVISION shall be entitled to assign any or all of its rights or
obligations arising hereunder to any person subject always to:
(a) the assignee entering into a novation of this Agreement with
BIOENVISION and UC3 in such form as UC3 shall reasonably require; and
(b) BIOENVISION reimbursing UC3 for all costs and expenses incurred by UC3
in connection with any such novation; and
(c) all payments due to UC3 prior to the effective date of such assignment
having been paid in full.
18. Miscellaneous
18.1 Any reasonable forbearance or delay on the part of either party in
enforcing the provisions of this Agreement or any of its rights hereunder
shall not be construed as a waiver of such provisions or any of its rights
thereafter to enforce the same.
18.2 This Agreement embodies the entire understanding of the parties hereto
relating to the subject matter hereof and supersedes all representations,
understandings, documents and agreements made or exchanged by the parties
prior to the date hereof.
18.3 If either party shall by reason of events or circumstances beyond its
control including without limitation acts of God, political intervention,
fire, flood, legislation or industrial dispute be prevented from or delayed
in performing its obligations hereunder and shall promptly give notice of
such event or circumstance to the other party the parties' obligations
hereunder shall from the date of such notice and without prejudice to any
rights or remedies accrued or arising prior to such date be suspended. If
such event shall continue for a period of more than three (3) consecutive
calendar months either party shall be entitled to terminate this Agreement
in which event the provisions of clause 15 above shall apply. Nothing
contained in this clause 18.3 shall be interpreted or construed as
releasing BIOENVISION from its obligation to pay the royalties in
accordance with the provisions of clause 6 above.
18.4 The parties shall execute such further documents and do all such things as
may be necessary to carry the provisions of this Agreement into full force
and effect.
18.5 This Agreement shall be governed by and construed in all respects in
accordance with the laws of England and Wales.
18.6 This Agreement may be executed in duplicate each of which shall be an
original and shall constitute one and the same instrument.
IN WITNESS whereof the parties hereto have caused this Agreement to be executed
the day and year first before written.
THE SCHEDULE
Patent Applications
Country Application Number Date of Filing
UK
SIGNED by /s/ X.X. Xxxxxx
Xx. XX Xxxxxx, Director
duly authorised representative
for and on behalf of
UNIVERSITY COLLEGE CARDIFF
CONSULTANTS LIMITED
SIGNED by /s/ [ILLEGIBLE]
Dr. [ILLEGIBLE]
duly authorised representative
for and on behalf of
BIOENVISION INC.
