EXHIBIT 10.19
[*#*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED
IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 406
OF THE SECURITIES ACT OF 1933, AS AMENDED.
UNIVERSITY TECHNOLOGY CORPORATION
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Agreement, effective the last date signatures are affixed hereto,
by and between the UNIVERSITY TECHNOLOGY CORPORATION a not-for-profit Colorado
corporation having its principal place of business at 0000 Xxxx Xxx., Xxxxx 000,
Xxxxxxx, Xxxxxxxx 00000 X.X.X. (hereinafter referred to as UTC), and
MYOGEN, INC.
a corporation duly organized under the laws of Delaware and having its principal
place of business at Xxxxxxxxxx Xxxx. 000, X.X. Xxx 0000, Xxxxxx, CO 80045-0366
(hereinafter referred to as LICENSEE).
RECITALS
WHEREAS, UTC is the owner of certain University of Colorado
intellectual property, embodied in inventions, patent rights, patents, patent
applications, copyrights or proprietary Know-How (as later defined herein and
referred to collectively as "Intellectual Property Rights"), related to [*#*]:
CASE NO: IR 360, 6077, 7022, 7076, 7077 and 7080
PERTAINING TO: Cardiology
INVENTORS: Xxxxxxx et al.
and has the right to grant licenses for aforementioned intellectual property,
subject only to a [*#*] United States Government, when applicable; and,
WHEREAS, UTC desires to have the intellectual property utilized in the
public interest and is willing to grant a license such thereunder; and,
WHEREAS, LICENSEE has represented to UTC in order to induce UTC to
enter into this Agreement, that LICENSEE shall commit itself to a diligent
program of exploiting such intellectual property commercially so that public
utilization and royalty income to UTC shall result therefrom; and,
WHEREAS, LICENSEE desires to obtain a license under such intellectual
property upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the promises and the mutual
covenants contained herein the parties agree as follows:
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ARTICLE 1 DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall include Licensee; any related company of LICENSEE, the
voting stock of which is directly or indirectly at least fifty percent (50%)
owned or controlled by LICENSEE; an organization which directly or indirectly
controls at least fifty percent (50%) of the voting stock of LICENSEE; and, an
organization, at least fifty percent (50%) of which is directly or indirectly
common to the ownership of LICENSEE.
1.2 "Intellectual Property" shall mean all of the following UTC intellectual
property based on inventions and/or discoveries arising from research, work and
the like conducted by or under the direction or control of the University of
Colorado, including:
(a) the invention disclosures, the United States and foreign patents, and/or
patent applications and/or inventions listed in Appendix A;
(b) the United States and foreign patents issued from applications covering
the disclosures listed in Appendix A and from divisionals and
continuations of these applications;
(c) claims of U.S. and foreign continuation-in-part applications, and of the
resulting patents, which claim priority to (a) and/or (b) above, and
which are directed to subject matter specifically described in or
dominated by the issued or pending claims of U.S. and foreign patent
applications covering the disclosures listed in Appendix A;
(d) claims of all foreign patent applications, and of the resulting patents,
which claim priority to (a) and/or (b) above, and which are directed to
subject matter described in the United States patents and/or patent
applications described in (a), (b), or (c) above; and
(e) any reissues of patents described in (a), (b), (c), or (d) above.
1.3 A "Licensed Product" shall mean any product or substantial part thereof
which:
(a) is based on the Intellectual Property and/or which is covered in whole
or in part by an issued, unexpired claim or a pending claim contained in
the Intellectual Property and Know How in the country in which the
Licensed Product is made, used or sold;
(b) is manufactured using a Licensed Process;
(c) is derived from Intellectual Property and/or Know-How.
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1.4 A "Licensed Process" shall mean:
(a) any process which is covered in whole or in substantial part
by an issued, unexpired claim or a pending claim contained
in the Intellectual Property;
(b) is derived from Intellectual Property Rights and/or
Know-How.
1.5 "Net Sales" of LICENSEE and/or its sublicensee shall mean such
party's receipts of monies on xxxxxxxx for sales of Licensed Products produced
hereunder less the sum of the following:
(a) discounts, rebates and the like allowed in amount customary
in the trade,
(b) sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales;
(c) outbound transportation including packaging, handling and
insurance prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) amounts for promotional, cooperative, and similar discounts.
No deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Products shall be considered
"sold" when billed out or invoiced. In the event that the sale is made to an
affiliate, the Net Sale will not be less than an equivalent sale to a
non-affiliate.
1.6 "Know-How" shall mean any and all technical data, information, or
knowledge and, subject to Section 2.11 below, improvements, developments,
enhancements and the like which relate to the Licensed Product, the Licensed
Process or the manufacture, marketing, registration, purity, quality, potency,
safety, and efficacy of the Licensed Product or Licensed Process and which is
not in the public domain, and so long as maintained by the UTC as a trade
secret.
1.7 "Territory" shall mean worldwide
1.8 "Field of Use" shall mean human heart disease diagnosis, prevention
and therapy
1.9 "Royalty Year" shall mean each consecutive twelve (12) month period
commencing with the Effective Date.
1.10 "Derived From" shall mean products or processes created from
manipulating or modifying the Intellectual Property, and which would not be
possible but for the existence of the Intellectual Property.
ARTICLE 2 GRANT
2.1 UTC hereby grants to LICENSEE the exclusive right and license under
the Intellectual Property and Know How to make, have made, use, lease,
sublicense and sell the Licensed Products, and to practice the Licensed
Processes in the Territory for the Field of Use to the end of the term of the
last of the patents included in the Intellectual Property, to expire or
otherwise terminate, unless sooner terminated according to the terms hereof, and
Know-How for a term of twenty (20) years or until such time that the LICENSEE
can establish that such Know-How is available in the public domain.
2.2 LICENSEE agrees that Licensed Products leased or sold in the United
States shall be manufactured substantially in the United States.
2.3 UTC hereby agrees that it will not grant any other license to make,
have made, use, lease, sublicense and sell Licensed Products or to utilize
Licensed Processes in the Territory for the Field of Use during the period of
time commencing with the Effective Date of this Agreement and terminating with
the expiration of this Agreement.
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2.4 UTC reserves the right to allow the University of Colorado and the
inventors to practice the Know-How and/or Intellectual Property for its or their
own research and educational purposes. It is understood that third parties are
not authorized to commercialize the Intellectual Property during the lifetime of
this Agreement.
2.5 LICENSEE shall have the right to enter into sublicensing agreements
for the rights, privileges and licenses granted hereunder with UTC permission,
such consent not to be unreasonably withheld. LICENSEE shall provide written
notification to UTC of those license negotiations with potential sublicensees
that involve comprehensive and definitive terms.
2.6 LICENSEE hereby agrees that every sublicensing agreement to which
it shall be a party and which shall relate to the rights, privileges and license
granted hereunder shall contain a statement setting forth the time at which
LICENSEE's exclusive rights, privileges and license hereunder shall terminate.
2.7 LICENSEE agrees that any sublicenses granted by it shall provide
that the obligations to UTC of this Agreement shall be binding upon the
sublicensee as if it were a party to this Agreement.
2.8 LICENSEE agrees to forward to UTC a copy of any and all sublicense
agreements within thirty (30) days of the execution of such sublicense
agreements and further agrees to forward to UTC annually a copy of reports
received by LICENSEE from its sublicensees during the preceding twelve (12)
month period under the sublicenses, as shall be pertinent to a royalty
accounting under said sublicense agreements.
2.9 [*#*]
2.10 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by assumption, implication, estoppel or otherwise as to any
technology not specifically set forth herein.
2.11 LICENSEE shall own without restriction [*#*] all improvements to
the Intellectual Property and Know How, if applicable, or related products which
it develops. Improvements made jointly by LICENSEE and UTC, with substantial
contributions by both parties, shall be jointly and equally owned by LICENSEE
and UTC, without accounting.
ARTICLE 3 DUE DILIGENCE
3.1 LICENSEE shall use commercially reasonable efforts to bring one or
more Licensed Products or Licensed Processes to market through a diligent
program for exploitation of the Know-How and/or Intellectual Property to
commercialize Licensed Products and/or Licensed Processes.
3.2 In addition, LICENSEE, shall adhere to the following milestones:
(a) LICENSEE shall deliver to UTC on or before [*#*] a basic
business plan and forecast showing the funds, personnel, and
time budgeted and planned for development of the Licensed
Products and Licensed Processes and
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shall provide similar reports or updates, as the case may
be, to UTC on an annual basis on or before the ninetieth
(90th) day following the close of LICENSEE's fiscal year.
(b) LICENSEE shall permit an in-plant inspection by UTC on or
before [*#*], and thereafter permit in-plant inspections
upon reasonable notice and reasonable times by UTC at
regular intervals with at least six (6) months between each
such inspection.
(c) LICENSEE together with its sublicensees shall have sold a
minimum of Licensed Products according to the following
schedule:
[*#*]
Minimum sales are subject to final negotiations and in-
licensing of Enoximone by Myogen from Hoechst Xxxxxx
Xxxxxxx.
3.3 LICENSEE's failure to perform in accordance with Paragraphs 3.1 and
3.2 above or to pay amounts in lieu thereof shall be grounds for UTC to reduce
the exclusive license under this Agreement to a nonexclusive one, provided that
at least [*#*] of the Net Sales are achieved, and failing that terminate this
Agreement pursuant to Paragraph 13.3 hereof unless both parties renegotiate the
Due Diligence plan and mutually agree to revisions thereto.
ARTICLE 4 MONETARY CONSIDERATION, INCLUDING ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall make payments to UTC in the manner hereinafter provided [*#*] or until
this Agreement shall be terminated as hereinafter provided:
(a) LICENSE ISSUE FEE of [*#*] which shall be deemed earned
and due immediately upon the execution of this Agreement.
(b) LICENSE MAINTENANCE FEES of [*#*] per year payable on
January 1, 1999 and on January 1 of each year thereafter for
the term of this Agreement.
(c) RUNNING ROYALTIES AS FOLLOWS:
(i) [*#*] of Net Sales [*#*] of the Licensed
Products by LICENSEE, [*#*]
(ii) the lesser of (A) [*#*] of Net Sales by
sublicensees of the Licensed Products or (B) [*#*]
of the amount of royalty payments received by
LICENSEE from such Net Sales by sublicensees,
provided that in no event will this amount exceed
[*#*] of sublicensees' Net Sales.
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In the event of extenuating circumstances, royalty rates for any given
technology will be renegotiated in good faith.
(d) In addition to the foregoing, LICENSEE agrees that it will
remit to UTC [*#*] which it may receive from any
sublicensee in relation to Licensed Products and/or Licensed
Processes and/or Know-How.
(e) LICENSEE shall grant to UTC within thirty (30) days of
signing this Agreement shares of LICENSEE's Common Stock in
an amount equal to Two and One Half Percent (2.5%) of the
outstanding Common Stock (on an as-converted basis) of
LICENSEE which will be non-dilutable through and only up to
the issuance of shares of capital stock of LICENSEE in
public or private equity financing in which LICENSEE raises
cumulative gross proceeds of Five Million Dollars
($5,000,000). Such cumulative proceeds shall be calculated
to include all proceeds received by LICENSEE since the
inception of LICENSEE. Such 2.5% shall be determined on only
the Common Stock outstanding (on an as-converted basis) once
the $5,000,000 in cumulative gross proceeds is reached,
notwithstanding any particular financing that may, in the
aggregate, result in cumulative gross proceeds that exceed
such $5,000,000.
4.2 No multiple royalties shall be payable because any Licensed
Product, its manufacture, use, lease or sale are or shall be covered by more
than one Intellectual Property patent application or Intellectual Property
patent licensed under this Agreement.
4.3 LICENSEE shall be entitled to reduce the royalty rates set forth
above in the event that it becomes necessary for the LICENSEE to license
intellectual property rights owned by third parties to develop, discover,
identify, use, make or sell Licensed Products. Such reduction shall be equal to
[*#*] the sum of earned royalties paid to such third parties. However, in no
case shall the royalty paid to UTC be less than [*#*] of the amounts otherwise
due for Licensed Products.
4.4 If any Licensed Product is sold in combination with other products
which are not within the scope of the Intellectual Property, the royalties due
to UTC will be based on [*#*]
4.5 If this Agreement is not terminated in accordance with other
provision hereof, LICENSEE's obligation to pay earned royalties hereunder shall
continue until the term of Agreement for so long as LICENSEE by its activities
would, but for the license granted herein, infringe a valid claim of an
unexpired patent within the Intellectual Property, on a country by country
basis, covering said activity. Thereafter, LICENSEE shall have no obligation
with respect to royalties, unless and to the extent any substantial Know How
remains, in which case all royalty amounts shall be reduced by [*#*] for a
period of [*#*], or such earlier time if such Know How enters the public domain
or becomes substantially of no value, after which time all royalty obligations
shall cease entirely.
4.6 Royalty payments shall be paid in United States dollars in Boulder,
Colorado or at such other place as UTC may reasonably designate consistent with
the laws and regulations controlling in any foreign country. If any currency
conversion shall be required in connection with the payment of royalties
hereunder, such conversion shall be made by [*#*].
ARTICLE 5 OPTIONS
Minimum Research Support payments, at LICENSEE's discretion of [***]
per year, in order to secure, under terms and conditions similar to those of
this Agreement, a first option on new inventions in the Field of Use (in the
absence of any third-party obligations to the contrary) arising from a specific
laboratory, which includes the UCHSC heart tissue bank (the "Tissue Bank")
directed by a University of Colorado faculty member. It is understood that
LICENSEE commits to at least one year of research support at the Tissue Bank
pursuant to the Materials Transfer Agreement between LICENSEE and UCHSC, and
that the $59,000 reimbursement under that agreement satisfies the first year of
research support under this section Article V of this Agreement. Royalty rates
for such licensed acquisitions will be
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identical to those listed herein, plus a one-time Technology Acquisition Fee of
five thousand dollars ($5,000).
ARTICLE 6 REPORTS AND RECORDS
6.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to UTC hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for three (3) years
following the end of the calendar year to which they pertain, to the inspection
of UTC or its agents for the purpose of verifying LICENSEE's royalty statement
or compliance in other respects with this Agreement.
6.2 LICENSEE, within forty-five (45) days after March 31, June 30,
September 30 and December 31, of each year, shall deliver to UTC true and
accurate reports, giving such particulars of the business conducted by LICENSEE
during the preceding three-month period under the Agreement as shall be
pertinent to a royalty accounting hereunder. These shall include at least the
following:
[*#*]
6.3 With each such report submitted, LICENSEE shall pay to UTC the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
6.4 During the period this Agreement is in effect, on or before the
ninetieth (90th) day following the close of LICENSEE's fiscal year, LICENSEE
shall provide UTC with LICENSEE's certified financial statements for the
preceding fiscal year including, at a minimum, a Balance Sheet and an Operating
Statement.
6.5 The royalty payments set forth in this Agreement shall, if overdue,
bear interest until payment at the monthly rate of [*#*]. The payment of such
interest shall not foreclose UTC from exercising any other rights it may have as
a consequence of the lateness of any payment.
ARTICLE 7 PATENT PROSECUTION
7.1 LICENSEE, in its sole discretion, shall apply for, seek issuance
of, and maintain during the term of this Agreement the Intellectual Property
Rights in the United States and in the foreign countries it so chooses. The
prosecution, filing and maintenance of all Intellectual Property patents and
applications shall be the primary responsibility of LICENSEE. However, UTC shall
have reasonable opportunities to advise LICENSEE and shall cooperate with
LICENSEE in such prosecution, filing and maintenance. In the event LICENSEE
abandons efforts in this regard, UTC may assume such responsibilities at its own
expense.
7.2 Payment of all fees & costs relating to the filing, prosecution,
& maintenance of the Intellectual Property shall be the responsibility of
Licensee, as long as the license under this Agreement remains exclusive.
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ARTICLE 8 INFRINGEMENT
8.1 Either party shall inform the other promptly in writing of any
alleged infringement of the Intellectual Property Rights by a third party and of
any available evidence thereof.
8.2 During the term of this Agreement, UTC shall have the right, but
shall not be obligated, to prosecute at its own expense any such infringements
of the Intellectual Property Rights. If UTC prosecutes any such infringement,
UTC agrees that LICENSEE may join UTC as a party plaintiff in any such suit,
without expense to LICENSEE. The total cost of any such infringement action
commenced or defended solely by UTC shall be borne by UTC and UTC shall keep any
recovery or damages for past infringement derived therefrom.
8.3 If within six (6) months after having been notified of any alleged
infringement or such shorter time prescribed by law, UTC shall have been
unsuccessful in persuading the alleged infringer to desist and shall not have
brought and shall not be diligently prosecuting an infringement action, or if
UTC shall notify LICENSEE at any time prior thereto of its intention not to
bring suit against any alleged infringer, then, and in those events only,
LICENSEE shall have the right, but shall not be obligated, to prosecute [*#*]
any infringement of the Intellectual Property, and LICENSEE may, for such
purposes, use the name of UTC as party plaintiff; provided, however, that such
right to bring an infringement action shall remain in effect only for so long as
the license granted herein remains exclusive. No settlement, consent judgment or
other voluntary final disposition of the suit may be entered into without the
consent of UTC, which consent shall not unreasonably be withheld. LICENSEE shall
indemnify UTC against any expenses, including attorney's fees, incurred by UTC
in such proceedings commenced by LICENSEE, and LICENSEE shall keep any recovery
or damages for past infringement derived therefrom when the cost of such action
is borne solely by LICENSEE.
8.4 In the event that LICENSEE and UTC jointly shall undertake the
enforcement and/or defense of the Intellectual Property by litigation, then all
costs and judgments shall [*#*].
8.5 In the event that a declaratory judgment action alleging invalidity
or noninfringement of any of the Intellectual Property shall be brought against
LICENSEE, UTC at its option, shall have the right, within thirty (30) days after
commencement of such action, to intervene and take over the sole defense of the
action at its own expense.
8.6 In any infringement suit as either party may institute to enforce
the Intellectual Property Rights pursuant to this Agreement, the other party
hereto shall, at the request and expense of the party initiating such suit,
cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers, information,
samples, specimens, and the like.
8.7 In the event of any infringement or likely infringement by
LICENSEE's use, manufacture or sale of any of the Intellectual Property, Know
How, Licensed Product, or Licensed Process of any third party's intellectual
property (collectively, "Infringing Rights"), UTC shall, together with LICENSEE,
cooperate in good faith and on a mutual and reasonable basis, with each party
responsible for its respective expenses:
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(a) To negotiate and settle any dispute with any such third
party concerning the Infringing Rights, and otherwise
resolve any such infringement and secure LICENSEE's
continued rights to the Infringing Rights; and
(b) To make a reasonable and equitable adjustment, if any, to
the royalties paid or otherwise due under this Agreement in
respect of licenses or other rights obtained by LICENSEE
from third parties under such Infringing Rights in order for
LICENSEE to continue to exercise rights granted under this
Agreement.
8.8 In no event shall any party to this Agreement be liable for
indirect, consequential or similar damages, even if advised of the possibility
of such liability.
ARTICLE 9 PRODUCT LIABILITY
9.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UTC, its trustees, board members,
officers, employees and affiliates, as well as those of the University of
Colorado harmless against all claims and expenses, including legal expenses and
reasonable attorney's fees, arising out of the death of or injury to any person
or persons or out of any damage to property and against any other claim,
proceeding, demand, expense and liability of any kind whatsoever resulting from
the production, manufacture, sale, use, lease, consumption or advertisement of
the Licensed Products and/or Licensed Processes by LICENSEE pursuant to this
Agreement.
9.2 LICENSEE shall obtain and carry in full force and effect liability
insurance which shall protect LICENSEE and UTC in regard to events covered by
Paragraph 9.1 above.
9.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UTC
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIM[ITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, AND VALIDITY OF INTELLECTUAL PROPERTY RIGHTS CLAIMS,
ISSUED OR PENDING.
ARTICLE 10 EXPORT CONTROLS
It is understood that UTC is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. UTC neither represents that a license shall not be required nor that, if
required, it shall be issued.
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ARTICLE 11 NON-USE OF NAMES
LICENSEE shall not use the names of UTC and/or the University of
Colorado nor any of their employee's, nor any adaptation thereof, in any press
release, advertising, promotional or sales literature without prior written
consent obtained from UTC in each case, not to be unreasonably withheld or
delayed, except that LICENSEE may state that it is licensed by UTC and the
University of Colorado under one or more of the patents and/or applications
comprising the Intellectual Property Rights. UTC has the right to state the
existence of this license, the subject matter, and the LICENSEE, though any
terms and details cannot be a released to the public without the written consent
of LICENSEE.
ARTICLE 12 ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be
void; provided, however, that either party may assign this Agreement to any
party acquiring all or substantially all of the assets and business of such
party.
ARTICLE 13 TERMINATION
13.1 If LICENSEE shall cease to carry on its business or initiate or
conduct actions in order to declare a state of bankruptcy, this Agreement shall
terminate upon notice by UTC.
13.2 Should LICENSEE fail to pay UTC royalties due and payable
hereunder, UTC shall have the right to terminate this Agreement on thirty (30)
days' notice, unless LICENSEE shall pay UTC within the thirty (30) day period,
all such royalties and interest due and payable. Upon the expiration of the
thirty (30) days period, if LICENSEE shall not have paid all such royalties and
interest due and payable, the rights, privileges and license granted hereunder
shall terminate.
13.3 Upon any material breach or default of this Agreement by LICENSEE,
other than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove,
which shall always take precedence in that order over any material breach or
default referred to in this Paragraph 13.3, UTC shall have the right to
terminate this Agreement and the rights, privileges and license granted
hereunder by ninety (90) days' notice to LICENSEE. Such termination shall become
effective unless LICENSEE shall have cured any such breach or default prior to
the expiration of the ninety (90) day period.
13.4 LICENSEE shall have the right to terminate this Agreement at any
time on six (6) months' notice to UTC, [*#*].
13.5 UTC may terminate this Agreement upon the occurrence of the third
separate instance of LICENSEE's failure to pay royalties when due within any
consecutive three (3) year period.
13.6 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. LICENSEE and any sublicensee
thereof may, however, after the effective date
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of such termination, sell all Licensed Products, and complete Licensed Products
in the process of manufacture at the time of such termination and sell the same,
provided that LICENSEE shall pay to UTC the royalties thereon as required by
Article IV of this Agreement and shall submit the reports required by Article VI
hereof on the sales of Licensed Products.
13.7 Upon termination of this Agreement for any reason, any sublicensee
not then in default shall have the right to seek a license from UTC.
ARTICLE 14 PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
In the case UTC: UNIVERSITY TECHNOLOGY CORPORATION:
0000 Xxxx Xxx., Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxxxx, Ph.D., President
and CEO
In the case of LICENSEE: MYOGEN, INC.:
Xxxxxxxxxx Xxxx. 000, X.X. Xxx 0000
Xxxxxx, XX 00000-0000
Attn: J. Xxxxxxx Xxxxxxx, President
ARTICLE 15 PUBLICATIONS ARISING FROM LICENSEE R & D SUPPORT
15.1 LICENSEE recognizes that UTC's relationship with the University of
Colorado requires that the results of University of Colorado's research must be
publishable and agrees that University of Colorado personnel engaged in research
pertinent to Know-How and/or Intellectual Property shall be permitted to present
at symposia, national or regional professional meetings and to publish in
journals, theses or dissertations, or otherwise of their own choosing, methods
and results of research, provided, however, that LICENSEE shall have been
furnished copies of any proposed publication or presentation at least forty-five
(45) days in advance of the submission of such proposed publication or
presentation to a journal, editor or other third party when LICENSEE has
provided the majority of the research funding which lead to the results
presented in manuscript form.
15.2 LICENSEE shall have thirty (30) days, after receipt of said
copies, to object to such proposed presentation or proposed publication pursuant
to Article 15.1 above, either because there is patentable subject matter which
needs protection and/or there is confidential information of LICENSEE contained
in the proposed publication or presentation. In the event that LICENSEE makes
such objection, the University of Colorado personnel shall refrain from making
such publication or presentation for a maximum of three (3) months in order for
the LICENSEE to file patent applications with the United States Patent and
Trademark Office and/or foreign patent office(s) directed to the Patentable
subject matter contained in the proposed publication or presentation.
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ARTICLE 16 MISCELLANEOUS
16.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Colorado, USA, except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
16.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
16.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
16.4 LICENSEE agrees to xxxx or otherwise identify the Licensed
Products sold in the United States with all applicable United States patent
numbers. All Licensed Products shipped to or sold in other countries shall be
marked in such a manner as to conform with the patent laws and practice of the
country of manufacture or sale.
16.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
16.6 This Agreement may be executed in counterpart, and may be executed
and delivered by facsimile.
*#*CONFIDENTIAL TREATMENT REQUESTED
License Agreement
Page 13
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement the day and year set forth below, effective the
later of the dates below.
UNIVERSITY TECHNOLOGY CORPORATION
By: /s/ Xxxxxxx X. Xxxxxxxx
--------------------------------------------
Xxxxxxx X. Xxxxxxxx, Ph.D.
President and CEO
Date: Sept 1, 1998
--------------------------------------------
MYOGEN, INC.
By: /s/ J. Xxxxxxx Xxxxxxx
--------------------------------------------
J. Xxxxxxx Xxxxxxx
President
Date: 01-Sep '98
--------------------------------------------
*#*CONFIDENTIAL TREATMENT REQUESTED
License Agreement
Page 14
APPENDIX A
UNIVERSITY Case No.:
UTC DISCLOSURE
ITEM NUMBER INVENTORS TITLE
--------------- ---------------------- ----------------------------- ---------------------------------------------------
1 IR 360 Raynolds/Xxxxxxxx Angiotention-Converting Enzyme Genetic Variant
Screen
--------------- ---------------------- ----------------------------- ---------------------------------------------------
2 6077 Port/Xxxxxxx Transgenic Mouse Over-Expressing the Human Beta-1
Adrenergic Receptor: A Screening Tool for New
Heart Failure Therapeutic Agents.
--------------- ---------------------- ----------------------------- ---------------------------------------------------
3 7022 Leinwand/Vikstrorn Transgenic Model for Heart Failure
--------------- ---------------------- ----------------------------- ---------------------------------------------------
4 7076 Xxxxxxx/Port Method for Identifyiing Adrenergic Receptor
Antagonists Having Good Tolerability
--------------- ---------------------- ----------------------------- ---------------------------------------------------
5 7077 Xxxxxxx/Leinwand/Minobe/Nakao Diagnosis and Treatment of Myocardial Failure
--------------- ---------------------- ----------------------------- ---------------------------------------------------
6 0000 Xxxxxxx Xxxxxx of Treating Heart Failure Using Enoximone
and Metoprolol
--------------- ---------------------- ----------------------------- ---------------------------------------------------
UNIVERSITY TECHNOLOGY CORPORATION
AMENDMENT TO
INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS AMENDMENT dated effective as of January 26, 2001 ("Effective
Date"), is to that certain
Intellectual Property License Agreement ("License
Agreement") executed September 1, 1998, between UNIVERSITY TECHNOLOGY
CORPORATION, a Colorado nonprofit corporation ("UTC") and MYOGEN, INC.
("Myogen"), a Delaware corporation, having its principal place of business at
0000 X. 000xx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxx. Unless otherwise provided, the
capitalized terms used herein have the same meaning as attributed to them in the
License Agreement.
WHEREAS, under the License Agreement, UTC licensed certain Intellectual
Property on an exclusive basis to Myogen, and
WHEREAS, J. David Port, Ph.D.("Dr. Port") is an employee of the
University of Colorado ("CU") and one of the inventors of the Intellectual
Property relating to [*#*] (the "Subject Technology"), and
WHEREAS, Dr. Port desires to conduct research using the Subject
Technology under a sponsored research agreement entitled, [*#*] (the "Sponsored
Research Agreement") sponsored by a third-party corporate entity (the
"Sponsor"), and
WHEREAS, Myogen believes that research under the Sponsored Research
Agreement has the potential to further validate the utility of the Subject
Technology,
NOW THEREFORE, in consideration of the mutual covenants and agreements
by the parties, the parties agree as follows:
1. Amendment to License Agreement. The parties agree that as of the
Effective Date, the Subject Technology may be used by Dr. Port in his work under
the Sponsored Research Agreement.
2. Commercialization. The parties agree that notwithstanding Section
2.4 of the License Agreement, the Sponsor may exploit and commercialize the data
or results of the Sponsored Research Agreement in the laboratories of Dr. Port
as it may determine in its sole discretion [*#*].
3. No Other Amendment. Except as amended herein, the terms of the
License Agreement remain in full force and effect.
1.
*** CONFIDENTIAL TREATMENT REQUESTED
IN WITNESS WHEREOF, the parties have duly executed this Amendment as of
the Effective Date.
UNIVERSITY TECHNOLOGY MYOGEN, INC
CORPORATION
By: /s/ Xxxxx Xxxxxxx By: /s/ J. Xxxxxxx Xxxxxxx
-------------------------------- --------------------------------------
Xxxxx Xxxxxxx, President J. Xxxxxxx Xxxxxxx, Ph.D., President
2.
[*#*] CONFIDENTIAL TREATMENT REQUESTED
UNIVERSITY LICENSING AND EQUITY HOLDINGS, INC.
SECOND AMENDMENT TO
INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS SECOND AMENDMENT (the "Second Amendment") to that certain
Intellectual Property License Agreement entered into between UNIVERSITY
LICENSING AND EQUITY HOLDINGS, INC., formerly UNIVERSITY TECHNOLOGY CORPORATION
("ULEHI") and MYOGEN, INC. ("Licensee") on September 1, 1998 and amended January
26, 2002 (the "License Agreement"), is entered into as of November 12, 2002 (the
"Second Amendment Effective Date"). All capitalized terms used herein and not
otherwise defined shall have the same meaning as attributed to them in the
License Agreement.
WHEREAS, under the License Agreement, ULEHI licensed certain
Intellectual Property on an exclusive basis to LICENSEE,
WHEREAS, a new invention has arisen from research, work and the like
conducted by or under the direction or control of the University of Colorado;
WHEREAS, pursuant to Article V of the License Agreement, LICENSEE
desires to obtain a license to such invention, upon the terms and conditions
hereinafter set forth; and
WHEREAS, the parties desire to amend the License Agreement as set forth
herein, to include such new invention within the licenses granted to LICENSEE
therein.
NOW, THEREFORE, in consideration of the mutual covenants and agreements
by the parties, the parties agree as follows:
1. The first recital of the License Agreement shall be amended to read
in its entirety as follows:
"WHEREAS, ULEHI is the owner of certain University of Colorado
intellectual property, embodied in inventions, patent rights, patents, patent
applications, copyrights or proprietary Know-How (as later defined herein and
referred to collectively as "Intellectual Property Rights"), related to seven
separate invention disclosures:
Case No: IR 360, 6077, 7022, 7076, 7077, 7080 and
2002.054 H
Pertaining to: Cardiology
Inventors: Xxxxxxx et al.
and has the right to grant licenses for aforementioned intellectual
property, subject only to a royalty-free, non-exclusive license granted to the
United States Government, when applicable; and"
[/\#/\]CONFIDENTIAL TREATMENT REQUESTED
1.
2. Appendix A of the License Agreement shall be amended to add the
following intellectual property:
ULEHI
Disclosure
Item Number Investors Title
--------- ----------------- --------------------- ---------------------------
7 IR 2002.054H Long, Bristow, Xxxxx Inhibition of Histone
& McKinsey Deacetylase as a Treatment
for Cardiac Hypertrophy
3. Pursuant to Article V of the License Agreement, LICENSEE shall pay
ULEHI a one-time technology acquisition fee equal to [/\#/\], due and payable
upon the Second Amendment Effective Date.
4. Pursuant to Section 7.2 of the License Agreement, LICENSEE shall
reimburse ULEHI for [/\#/\] in costs incurred by ULEHI in connection with the
filing and prosecution of the United States patent application covering the new
invention described in Section 2 above, such amount to be due and payable upon
the Second Amendment Effective Date.
5. Except as amended herein, the terms of the License Agreement remain
in full force and effect.
IN WITNESS WHEREOF, the parties have duly executed this Second
Amendment as of the Second Amendment Effective Date.
UNIVERSITY LICENSING MYOGEN, INC.
AND EQUITY HOLDINGS, INC.
By: /s/ Xxxxx Xxxxxxx, President By: /s/ J. Xxxxxxx Xxxxxxx
------------------------------- ------------------------------------
J. Xxxxxxx Xxxxxxx, Ph.D., President
[/\#/\]CONFIDENTIAL TREATMENT REQUESTED
2.
