EXHIBIT 4.1
Medical Research Council
and
Cambridge Antibody Technology Limited
and
Cambridge Antibody Technology Group plc
Agreement/1/
---------------------
/1/ [***] indicates that text has been deleted, which is subject to a
confidential treatment request. This text has been filed with the SEC on a
supplemental basis.
TABLE OF CONTENTS
-----------------
Clause Page
------ ----
DEFINITIONS AND INTERPRETATION 2
RIGHTS GRANTED 9
DURATION 21
RESEARCH PROGRAMMES 21
PATENTS 21
SUBLICENSING AND SUBCONTRACTING 24
FEES AND ROYALTIES 24
TERMINATION 28
INDEMNITY 32
ASSIGNMENT 32
FORCE MAJEURE 33
SEVERABILITY 33
DELAY 33
CONFIDENTIALITY 34
NO PARTNERSHIP 36
ENTIRE AGREEMENT 37
GOVERNING LAW, JURISDICTION AND SERVICE OF PROCESS 37
COMPLIANCE WITH LAWS AND REGULATIONS 38
VARIATION AND WAIVER 38
APPROVALS AND COMPLIANCE 39
ANNOUNCEMENTS 39
RTPA SUSPENSION OR RESTRICTIONS 40
SCHEDULE 1 Patent Rights 42
SCHEDULE 2 Draft Formal Licence 46
SCHEDULE 3 Third Party Rights 52
SCHEDULE 4 The Libraries 53
SCHEDULE 5 Diabodies Combinations 54
THIS AGREEMENT is made the 7/th/ day of January 1997
BETWEEN:
(1) MEDICAL RESEARCH COUNCIL a public body incorporated under Royal Charter
whose principal office is at 00 Xxxx Xxxxxxxx, Xxxxxx X0X 0XX ("MRC"); and
(2) CAMBRIDGE ANTIBODY TECHNOLOGY LIMITED a company incorporated in England
with registered number 2451177 whose registered office is at Xxx Xxxxxxx
Xxxx, Xxxxxxxx, Xx Xxxxxxx, Xxxxxxxxxxxxxx XX0 0XX, XX ("CAT")
(3) CAMBRIDGE ANTIBODY TECHNOLOGY GROUP PLC a company incorporated in England
with registered number 3234033 whose registered office is at Xxx Xxxxxxx
Xxxx, Xxxxxxxx, Xx Xxxxxxx, Xxxxxxxxxxxxxx XX0 0XX, XX ("CAT Group")
WHEREAS:
(A) Prior to the formation of CAT MRC made certain inventions comprised in the
Technology (as defined herein) and owned certain of the Patent Rights (as
defined herein) relating thereto
(B) Following the formation of CAT both CAT and MRC collaborated to develop the
Technology
(C) MRC is now the owner or co-owner of the Patent Rights in relation to the
Technology.
(D) CAT is a biotech company whose principal objective is to develop, make,
market and sell either itself or in collaboration with pharmaceutical
partners therapeutic antibodies which includes using antibodies to validate
therapeutic targets.
(E) MRC wishes to license and CAT wishes to accept a license to exploit
commercially the Patent Rights and Technology.
(F) MRC and CAT intend that this Agreement shall replace and supersede the
Heads of Agreement (as defined herein) and the Diabodies Agreement (as
defined herein).
(G) CAT is an Affiliate of CAT Group in that CAT Group Controls CAT within the
meaning of clause 1.1 hereafter.
IT IS AGREED as follows:
1. DEFINITIONS AND INTERPRETATION
1.1 In this Agreement the following expressions shall, unless the context
otherwise requires, have the following meanings:
"Affiliate" means any corporation, company, partnership or other entity
(whether or not incorporated) which is established by or which directly or
indirectly Controls, is controlled by or is under common Control of either
party to this Agreement;
"Antibody Isolation Services" means a commercial service for the isolation
of antibodies on behalf of customers, which service is of general
availability and which, for the avoidance of doubt, shall not include
collaborative research and/or development;
"CAT Group" means Cambridge Antibody Technology Group plc.
"CAT libraries" means all those libraries (collections of bacteriophages,
each of which displays an antibody or fragment thereof) produced prior to
the date of execution of this Agreement by CAT details of which are set out
in Schedule 4.
"CAT Licence Conditions" means a licence under the Patent Rights and
Technology including the right to sub-licence on the terms of Clause 6.
"CAT Therapeutic Antibody Licence" means a licence for CAT under any and
all intellectual property and know how claiming or relating to an antibody
target or Product identified or validated by an MRC licensee pursuant to
Clause 2.1.9 or 2.1.10 of this
Agreement as follows:
1) in relation to such a target, an exclusive licence to develop, make,
have made, market and sell only therapeutic antibodies to any such
target; and
2) in relation to such a Product which is an actual or potential
therapeutic antibody an exclusive licence to develop, make, have made,
market and sell only such therapeutic antibody
in both cases, the licence to include the right to sublicence the same and
to be on terms equivalent to Clauses 7.1.2, 7.1.3, 7.2, 7.3 and 7.6 to 7.12
inclusive.
"Catalytic Antibodies" means antibodies which bind to and catalyze the
chemical transformation of a substrate and in which an antibody binding
region is involved in said catalysis.
"Collaborative Centre" means the entity known as MRC Collaborative Centre
company number 2698321 whose principal place of business is currently at 1-
0 Xxxxxxxxxx Xxxx, Xxxx Xxxx, Xxxxxx XX0 0XX;
"Collaborative Centre Conditions" means the right and licence to utilise
the Patent Rights, Technology or MRC Libraries as necessary in connection
with the development, manufacture, use, importation, marketing or sale of
Products and/or the identification and validation of targets, which
Products or targets have been identified using the Patent Rights,
Technology or MRC Libraries. The licence shall include the right to
sublicence only as provided in this Agreement, provided that in no
circumstances shall the Collaborative Centre sub-licence the Patent Rights,
Technology or MRC Libraries as such (as opposed to targets or Products
identified using the same). If applicable, because Products so identified
within the scope of the particular licence are developed, made, used,
imported or sold, either by the Collaborative Centre or by one of its sub-
licensees where so permitted, the Collaborative Centre shall pay to MRC who
in turn shall pay CAT sums calculated by reference to an in accordance with
financial conditions equivalent to those set out in Clauses 7.1.2, 7.1.3,
7.2, 7.3 and 7.6 to 7.12 inclusive.
"Control" means the ownership of more than 50% of the issued share capital
or legal power to direct or cause the direction of the general management
and policies of the Party in question;
"Diabodies Agreement" means the heads of agreement covering the Diabodies
patents signed by MRC and CAT on 19th July 1993;
"Effective Date" means 20th July 1992;
"E Merck" means the company known by that name as at the date of this
Agreement but for the avoidance of doubt should Control of the company be
acquired by a third party or parties acting in concert after the date of
this Agreement then the company shall no longer be treated as E Merck for
the purposes of this Agreement;
"Force Majeure" means in relation to either Party, any circumstances beyond
the reasonable control of that Party including, without prejudice to the
generality of the foregoing, any act of God, war, riot, civil commotion,
fire, explosion, flood, adverse weather, epidemic, or other natural
physical disaster, strike, lockout or other form of industrial action or
any form of Government or supranational authority intervention;
"Heads of Agreement" means the heads of agreement signed by MRC and CAT on
11th December 1992 and the heads of agreement signed by MRC and CAT on 20th
July 1992;
"MRC Libraries" means all those libraries (collections of bacteriophages,
each of which
displays an antibody or fragment thereof) produced prior to the date of
execution of this Agreement by the Cambridge Centre for Protein Engineering
using the Technology details of which are set out in Schedule 4;
"Net Invoice Price" or "NIP" means in relation to a Product sold by a party
or sub-licensee of that Party, the price invoiced by that Party (or sub-
licensee as appropriate) to the relevant purchaser (or in the case of a
sale or other disposal otherwise than at arm's length, the price which
would have been invoiced in a bona fide arm's length contract or sale), but
deducting the costs of packing, transport and insurance, customs duties,
any credits actually given for returned or defective Products, normal trade
discounts actually given, and sales taxes, VAT or other similar tax charged
on and included in the invoice price to the purchaser;
"Offer Mechanics" means that MRC shall offer to CAT in writing a CAT
Therapeutic Antibody Licence promptly following:-
(A) 12 months following completion of any significant inventive step
and reduction to practice in relation to identification or
validation of any target the subject of any such licence or
following invention and reduction to practice of products which
actually or potentially include a therapeutic antibody and in
either case where no patent application is made; or
(B) where a patent filing is made in relation to the same 12 months
after filing a PCT or EPO patent application relating to the
same.
CAT shall have 90 days to consider such offer or any such longer period as
may be agreed between MRC and CAT and if it wishes to be granted a licence
shall give written notice to MRC thereof following which CAT shall be
deemed automatically to have been granted such a licence;
"Patent Agreement" means the agreement dated 1st August 1991 between MRC
and CAT relating to the prosecution of patents as defined therein;
"Parties" means the parties to this Agreement;
"Patent Rights" means:-
(A) the patent applications filed prior to the date of execution of
this Agreement short particulars of which are set out in Schedule
1;
(B) all patents which may be granted pursuant to any of the foregoing
patent applications;
(C) any necessary patents which derive from the patent applications
or any of them and any divisions, renewals, continuations,
continuations-in-part, extensions or reissues or any
supplementary protection certificates granted.
"Products" means any product or formulation whose development, manufacture,
use or sale would, absent a licence, infringe the Patent Rights or utilise
the Technology;
"Rare Cell Population" means a set of cells identified by a specific marker
antigen(s) that is present at less than 1% of a population of cells
extracted from the body;
"Research Products" means solutions, materials or other products ("Kits")
intended for research use in which the work being performed with such Kits
does not involve the development of any product offered or intended for
offer for commercial sale where such commercial product contains antibodies
or antibody derived molecules or involves the use of antibodies at any
stage in its production;
"Royalties" means the payments specified in Clause 7;
"Technology" means the library cloning technology and phage screening
technology as described in the Patent Rights the know how (which know how
CAT shall identify to MRC within 90 days of the date of this Agreement)
relating thereto and the MRC Libraries;
"Termination Date" means the date upon which this Agreement expires or is
terminated; and
"Third Party Rights" means the rights in the Fields already committed by
MRC to third parties as listed in Schedule 3;
"Valid Claim" means a claim of an issued and unexpired patent included
within the Patent Rights which has not been held permanently revoked,
unenforceable or invalid by decision of a court or other governmental
agency of competent jurisdiction, unappealed within the time allowed for
appeal, and which has not been admitted to be invalid or unenforceable
through reissue or disclaimer or otherwise;
1.2 In this Agreement, save where the context otherwise requires;
1.2.1 a reference to a statute or statutory provision shall include a
reference:
(A) to that statute or provision as from time to time
consolidated, modified, re- enacted or replaced by any
statute or statutory provision;
(B) to any repealed statute or statutory provision which it re-
enacts (with or without modification); and
(C) to any subordinate legislation made under the relevant
statute;
1.2.2 words in the singular shall include the plural, and vice
versa;
1.2.3 a reference to a person shall include a reference to a
firm, a body corporate, an unincorporated association or
to a person's executors or administrators;
1.2.4 a reference to a clause, sub-clause or Schedule (other than
to a schedule to a statutory provision) shall be a
reference to a clause, sub-clause or Schedule (as the
case may be) of or to this Agreement;
1.2.5 if a period of time is specified and dates from a given day
or the day of an act or event, it shall be calculated
exclusive of that day;
1.2.6 references to any English legal term for any action,
remedy, method or judicial proceeding, legal document,
legal status, court, official or any legal concept or
thing shall in respect of any jurisdiction other than
England be deemed to include what most nearly
approximates in that jurisdiction to the English legal
term;
1.2.7 the headings in this Agreement are for convenience only and
shall not affect the interpretation of any provision of
this Agreement.
1.3 The designations adopted in the recitals and introductory statements
preceding this clause apply throughout this Agreement and the
Schedules.
2. RIGHTS GRANTED
2.1 Subject to the Third Party Rights MRC hereby grants to CAT during the
continuance of this Agreement the following rights and licences under the
Patent Rights and the Technology on the following conditions:
Exclusive Rights
----------------
2.1.1 the exclusive right and licence under CAT License Conditions to
identify, develop, make, have made, import, market and sell
antibodies for human in vivo use which are not antibodies the
subject of Clause 2.1.7 and for the avoidance of doubt it is
declared and agreed that such exclusive right and licence
includes using an antibody gene as a therapeutic entity in gene
therapy provided always that CAT will subject to the conditions
below grant up to [***] exclusive sub-licences to develop,
make, have made, use, import, market and sell a specific
antibody product directed at a particular antigen (for the
avoidance of doubt it is declared antibodies derived from [***]
would count within this total) to the Collaborative Centre (but
excluding any right of access or licence to use CAT Libraries)
with the right for the Collaborative Centre to sub-sub licence
for royalties payable by the Collaborative Centre to CAT and on
financial terms [***]. The Collaborative Centre may from time
to time submit to CAT a written request asking CAT to state
whether a sub-licence to a specific antigen is available.
Within 30 days of such written request CAT shall respond in
writing in either the affirmative or the negative. CAT shall
respond in the affirmative to the Collaborative Centre provided
that the antigen is not at the time of the Collaborative Centre
request:
[***]
In the event of an affirmative response CAT shall grant no licence or
other interest under its intellectual property which would prevent the
grant of such a sub-licence for a period of [***] from the date of the
Collaborative Centre's original request to CAT. An antigen reserved in
this way shall be called a "Reserved Antigen." The Collaborative
Centre shall be entitled to reserve a maximum of [***] Reserved
Antigens in this way i.e. may replace up to [***] reservations with a
new reservation. The Collaborative Centre shall inform CAT in writing
when it wishes to obtain a sub-licence to a Reserved Antigen (the
"Collaborative Centre Sub-Licence Notice"). CAT shall grant such a
sub-licence to the Collaborative Centre provided that the
Collaborative Centre Sub-Licence Notice is given within [***] of the
Collaborative Centre request or if later than [***] provided that the
antigen is not at the time of the Collaborative Centre Sub-Licence
Notice
[***]
2.1.2 the exclusive right and licence under CAT Licence Conditions to use
antibodies as part of a medical (but not a research) procedure
[***] provided always that to maintain exclusivity in this area
CAT must send to MRC not less than annually on the anniversary of
the execution hereof a written report describing CAT's progress
in this field which shall show that CAT has exercised reasonable
diligence in the exploitation of this field failing which CAT
shall lose such exclusivity on receipt of not less than 6 months
written notice by MRC to CAT.
2.1.3 the exclusive right and licence under CAT Licence Conditions to
provide Antibody Isolation Services for third parties.
2.1.4 the exclusive right and licence under CAT Licence Conditions to use
and exploit commercially in any way whatsoever the inventions the
subject of the patent and its corresponding patents listed in
Schedule 1 as [***] except that nothing in this Agreement shall
confer any right upon CAT and CAT shall not exercise or use the
[***] patent rights in the following fields of use:
(a) biosensors;
(b) therapeutic products which include mammalian retroviruses
encoding [***] as a fusion with viral coat proteins; and
(c) [***] generated from combinations of four specific antibodies set
out in Schedule 5 hereto.
2.1.5 the exclusive right and licence under CAT Licence Conditions to use
molecules isolated by the Technology for use in the manufacturing
process of pharmaceutical products or intermediates
2.1.6 the exclusive right and licence under CAT Licence Conditions to
develop, make, have made, use, import, market and sell Catalytic
Antibodies or Research Products
Co-exclusive rights
-------------------
In this Agreement "co-exclusive" means an exclusive licence for both CAT
and the Collaborative Centre under a licence from MRC on the specific terms
and on a case by case basis as set out below in sub-clauses 2.1.7 and
2.1.8. For the avoidance of doubt it is agreed that the MRC shall not grant
any other licences to any parties other than CAT or the Collaborative
Centre in the fields covered by Clauses 2.1.7 and 2.1.8;
2.1.7 the co-exclusive right and licence for CAT under CAT Licence
Conditions to improve, develop, make, have made, import, market
and sell antibodies
originally isolated by hybridoma derived methods from non-primate
sources (including non- primate antibody genes) which have been
humanised using CDR grafting techniques the subject of the patent
known as [***] derived from the UK Patent application [***]
(which for the avoidance of doubt is not being licensed pursuant
to this Agreement) provided always that MRC shall have the right
to grant a co-exclusive licence to Collaborative Centre on the
same terms but subject to the Collaborative Centre Conditions
with the right for the collaborative Centre to collaborate with
academic or commercial third parties in relation thereto and to
sub-licence such third parties to use and exploit improved
antibodies including any Products and libraries derived from
mutagenesis of the original antibody and specifically created
subject to any such collaboration with the Collaborative Centre
provided that in these circumstances the term of the
Collaborative Centre Conditions equivalent to Clause 7.1.3(a)
hereto shall be varied so that the 3 stated percentages read
[***] respectively and the term of the Collaborative Centre
Conditions equivalent to Clause 7.1.3(b) hereof shall be varied
so that the second stated percentage reads [***] instead of
[***].
2.1.8 the co-exclusive right and licence for CAT under CAT Licence
Conditions to use antibody structural information to design non-
antibody drug candidates provided always that MRC shall have the
right to grant a co-exclusive licence to Collaborative Centre on
the same terms subject to the Collaborative Centre Conditions
with the right for the Collaborative Centre to collaborate with
academic or commercial third parties in relation thereto and to
sub-licence such third parties to use and exploit Products
identified subject to any such collaboration with Collaborative
Centre.
Gene-sequencing and analysis rights
-----------------------------------
2.1.9 the exclusive right and license under CAT License Conditions to use
antibody repertoires and libraries and antibodies isolated from
them in the identification, analysis and validation of targets
for therapeutic, diagnostic or prophylactic entities arising from
gene sequencing data and analysis provided always that MRC shall
have the right (which for the avoidance of doubt it is declared
and agreed does not include any right of access to or licence to
use the CAT Libraries) to grant the following licences provided
always that) (save in the case of Collaborative Centre
collaborations with [***] but only for so long as Collaborative
Centre and [***] have ongoing collaborative work together) if it
does so MRC shall if required grant CAT a CAT Therapeutic
Antibody Licence which licence shall be offered by MRC to CAT on
the terms of the Offer Mechanics:-
Collaborative Centre License
2.1.9.1 a non-exclusive licence to the Collaborative Centre to work under
and use the Patent Rights and Technology for the same
purpose subject to the Collaborative Centre Conditions and
which shall include the following terms (save in relation to
Collaborative Centre collaborations with [***] in which case
the licence shall not include that part of condition (b)
below which requires MRC to place itself in a position where
it can grant CAT a CAT Therapeutic Antibody Licence, for the
avoidance of doubt however the remainder of condition (b)
below shall apply in respect of [***]):
(a) the Collaborative Centre shall be permitted to collaborate
with academic and commercial third parties for this purpose
including sending to them clones isolated and/or
characterised during such process.
(b) if it is appropriate and it is decided to make patent
applications for any targets or products identified or
validated by the Collaborative Centre or its third party
collaborators pursuant to the licence these shall be made
promptly and MRC shall ensure that it secures all rights
necessary under any such intellectual property to place it
in a position where it can grant CAT a CAT Therapeutic
Antibody Licence provided always that in this case the Offer
Mechanics may be varied so that when making the offer to CAT
MRC shall be entitled to indicate on behalf of the
Collaborative Centre that it is the subject of an "antigen
override" which means that no licence is available to CAT
and Collaborative Centre is deemed to have exercised one of
its antigen specific licences under Clause 2.1.1. For the
avoidance of doubt it is agreed that the exercise of the
antigen override is subject to the same mechanism for
selecting and reserving antigens as described in Clause
2.1.1 and the conditions covered by the Collaborative Centre
Sub-Licence Notice.
(c) subject to the CAT Therapeutic Antibody Licence (save in the
case of E Merck, Collaborative Centre Collaborations with
which are not subject to the CAT Therapeutic Antibody
Licence provisions), the Collaborative Centre or its third
party collaborators may exploit such targets and develop,
make, have made, use, import, market and sell products
directed at such targets subject always to the Collaborative
Centre Conditions. For the avoidance of doubt it is declared
and agreed that royalties shall only be payable to CAT via
MRC under terms equivalent to those set out in clauses
7.1.2, 7.1.3, 7.2, 7.3 and 7.6 to 7.12 inclusive on sales of
Products.
Third Party Licence
2.1.9.2 a non-exclusive licence to third party companies who are licensed
by MRC to use and exploit other MRC pending or granted
patent rights or technology which third parties' focus and
which other MRC rights are not principally in the field of
therapeutic antibodies, as follows:
(i) in relation to those companies in which at any time since the
Effective Date MRC has had or will have a founder shareholding or
has played or will play a significant part in their
establishment, from the date of this Agreement; and
(ii) in relation to other companies not before [***] years from the
date of this Agreement unless the prior written consent of CAT is
obtained, such consent not to be unreasonably withheld and CAT's
decision to be provided within 90 days of the formal request
being made of CAT
such licence to permit such third party companies to work under and
use the Patent Rights and Technology for the same purpose as in 2.1.9
on conditions the same as the Collaborative Centre Conditions and
including the following terms:
(a) such third party shall pay MRC an up front fee and MRC shall pay
CAT [***] of such up front fee such payment to CAT to be not less
than [***] MRC and CAT shall agree the size of this payment to
apply in each calendar year of this agreement no later than 15
days prior to expiry of the previous calendar year. For the
calendar year 1997 this shall be [***] and it shall not be less
than this fee in future years. For the avoidance of doubt it is
agreed that if MRC does not grant any licences to any third party
no fee or any percentage of any fee shall be payable to CAT by
MRC.
(b) if it is appropriate and it is decided to make patent
applications for any targets or products identified or validated
by the third party pursuant to the licence these shall be made
promptly and MRC shall ensure that it secures all rights
necessary under any such intellectual property to place it in a
position where it can grant CAT a CAT Therapeutic Antibody
Licence.
(c) subject to the aforesaid CAT Therapeutic Antibody Licence and to
terms the same as Collaborative Centre Conditions the third party
may freely develop, make, have made, use, import, market and sell
products directed at such targets. For the avoidance of doubt it
is declared and agreed that royalties shall only be payable to
CAT via MRC under terms equivalent to those set out in Clauses
7.1.2, 7.1.3, 7.2, 7.3. and 7.6 to 7.12 inclusive on sales of
Products.
N.B. The parties hereby agree that after signature of this
Agreement (if necessary) they will meet and negotiate in good
faith in order to seek to secure CAT consent for MRC to licence a
third party company or companies to work under and use the Patent
Rights and the Technology in conjunction with [***].
Non-exclusive rights
---------------------
2.1. 10 the non exclusive right and licence under CAT Licence Conditions
for all purposes other than those set out in sub-clause 2.1.1 to
2.1.9 inclusive. Subject always to the provisions of Clause 2.2
in the event that MRC grants any other non-exclusive licences to
third parties (which for the avoidance of doubt it is declared
and agreed shall not include any right of access to or licence to
use the CAT Libraries) MRC shall do so only on the condition that
it shall if required grant CAT a CAT Therapeutic Antibody Licence
which shall be offered by MRC to CAT on the terms of the Offer
Mechanics and further MRC shall ensure that in any such non-
exclusive licence to a third party there shall be set out in
detail all the areas in which CAT has been granted exclusive or
co-exclusive rights and from which the licensee is excluded and
it shall be subject to terms equivalent to the Collaborative
Centre Conditions and to the following terms:-
(a) such third party shall pay MRC an up front fee and MRC shall pay
CAT [***] of such up front fee.
(b) if it is appropriate and it is decided to make patent
applications for any targets or products identified or validated
by the third party pursuant to the licence these shall be made
promptly and MRC shall ensure that it secures all rights
necessary under any such intellectual property to place it in a
position where it can grant CAT a Therapeutic Antibody Licence.
(c) subject to the aforesaid CAT Therapeutic Antibody Licence and
terms same as Collaborative Centre Conditions the third party may
freely develop, make, have made, use, import, market and sell
Products directed as such targets or products identified pursuant
to the non-exclusive licence.
For the avoidance of doubt it is declared and agreed that
royalties shall only be payable to CAT via MRC under terms
equivalent to those set out in Clauses 7.1.2, 7.1.3, 7.2, 7.3 and
7.6 to 7.12 inclusive on sales of Products.
2.2 When MRC receives an application for or is negotiating with a third party
for a licence under Clause 2.1 and MRC is aware that such third party owns
or is able to licence intellectual property or technology which is
competitive with the Patent Rights and Technology MRC shall hand over the
negotiations and drafting of such a licence to CAT who shall deal with the
matter as in its sole discretion considers fit.
2.3 Nothing in this Agreement shall confer any right upon CAT and CAT shall not
exercise or use the Technology or Patent Rights in the commercial sale or
sublicence of [***].
2.4 All MRC rights not specifically and expressly granted to CAT in this
Agreement are reserved to MRC. For the avoidance of doubt MRC retains the
right to work under the Patent Rights and the Technology for research
purposes. Research purposes include
situations where part of the funding for the research is provided by a
commercial third party but the commercial third party shall not itself
acquire any licence under the Patent Rights and the Technology under the
provisions of this sub-clause. Research purposes does not include contract
research undertaken by MRC for commercial third parties.
2.5 Without prejudice to Clause 7 hereof, in consideration of the rights
guaranteed hereunder and in the Diabodies Agreement, CAT Group shall within
21 days of the date hereof, pay to MRC the sum of $US 4,950,000 (the "Cash
Consideration") and, provided the MRC Option or CAT Option has been
exercised under Clause 2.6 below, MRC shall be entitled to nominate a
Director to the board of Directors of CAT Group whose identity shall be
subject to the approval of the CAT Group board (and if any nominated
director is not so approved MRC shall be entitled to nominate a different
person), provided that MRC shall lose the right to nominate a Director if:-
2.5.1 MRC's shareholding in CAT Group at any time falls below 200,000
shares; or
2.5.2 after a period of 2 years from the date of this Agreement MRC's
shareholding in CAT Group falls below 5% of the issued share capital
of CAT Group;
and in such circumstances if requested by CAT MRC shall use its reasonable
endeavours to ensure that its nominated director resigns. The board and
shareholders of CAT Group shall be entitled to dismiss or remove MRC
nominated director on the normal grounds for dismissal or removal of
directors provided always that in such circumstances MRC shall be entitled
to nominate a replacement.
2.6 At any time prior to the payment of Cash Consideration:-
2.6.1 MRC may, by notice in writing to CAT Group, require CAT Group to
allot to MRC 150,000 ordinary shares of 50 xxxxx each in CAT Group
in consideration of the release by MRC of CAT Group's liability to
pay the Cash Consideration ("MRC Option"); or
2.6.2 CAT Group may, by notice in writing serve on MRC a notice requiring
MRC to subscribe (and MRC shall so subscribe) for 150,000 ordinary
shares of 50 xxxxx each in CAT Group, the consideration for the
allotment of such shares being the release by MRC of CAT Group's
liability to pay the Cash Consideration, and such release shall be
deemed to take effect on such allotment (the "CAT Option").
2.7 Where CAT Group elects or is required to use ordinary shares pursuant to
the exercise of the CAT Option or the MRC Option, such issue will take
effect within 21 days of the date hereof and such share shall be issued
credited as fully paid and shall be deemed to have been issued at a price
of US$ 33 per share.
2.8 On execution of this Agreement MRC and CAT may execute a formal licence
agreement or agreements (as advised) based on the form set out in Schedule
2 and CAT shall at its own expense register or procure the registration of
such a licence agreement with the UK Patent Office.
3. DURATION
3.1 This Agreement shall be deemed to have commenced on the Effective Date and
shall continue unless terminated pursuant to clause 8 until the expiry of
CAT's obligations to make payments to MRC pursuant to clause 7.3 and MRC's
obligations to make payments to CAT pursuant to clause 2.1.
4. RESEARCH PROGRAMMES
CAT shall undertake research programmes (involving third party
collaboration where appropriate) relating to the exploitation of the
Technology and shall use reasonable endeavours to exploit the Technology
----------
commercially.
5. PATENTS
5.1 All and any expenses, outgoings, fees and other payments made or incurred
by MRC and/or CAT as at the date hereof in relation to the filing and
prosecution of the Patent Rights shall be borne by the Party which has made
or incurred them without right of recovery from the other Party.
5.2 The Parties acknowledge that the Patent Agreement has terminated and agree
that this Agreement supersedes the Patent Agreement.
5.3 CAT shall at its own cost and expense but in the name of MRC (or in the
case of jointly owned Patent Rights in the joint names of MRC and CAT) use
its reasonable endeavours to prosecute to grant with the broadest possible
claims all subsisting patent applications within the Patent Rights and
shall use its reasonable endeavours to maintain (including taking or
participating in any necessary or desirable interference, opposition or
similar proceedings) such Patent Rights in force for the full term thereof.
MRC shall provide to CAT at CAT's cost and expense all reasonable
assistance as CAT may require from time to time in connection with its
obligations under this clause 5.3. CAT shall keep MRC fully informed of all
material developments in relation to CAT's obligations under this clause.
5.4 If at any time CAT decides to abandon the prosecution or maintenance of any
Patent Rights, it shall first notify MRC and give MRC the opportunity to
take over the prosecution and maintenance at its own expense of such Patent
Rights and CAT shall assign to MRC all its interest in such Patent Rights
as are jointly owned by CAT and MRC. CAT shall provide to MRC at MRC's cost
and expense all reasonable assistance as MRC may require from time to time
in connection with any Patent Rights, the prosecution and maintenance of
which MRC has taken over.
5.5 MRC gives no warranty and does not make any representation that the Patent
Rights are or will be valid or that the exercise of the rights granted or
to be granted to CAT hereunder will not result in the infringement of valid
patents of third parties.
5.6 Each of the Parties shall notify the other promptly of any proceedings or
application for revocation of any of the Patent Rights emanating from a
third party that comes to its notice or if a third party takes or threatens
to take any proceedings for infringement of any patents of that third party
by reason of CAT's use or operation of the Technology, Patent Rights (or
manufacture, use or sale of the Products). Each Party shall notify the
other promptly of any infringement of the Patent Rights and Technology by a
third party which may come to its attention during the term of this
Agreement.
5.7 Upon the occurrence of any event described in clause 5.6 CAT shall:
5.7.1 at its own cost defend or bring such proceedings if and to the extent
that CAT
considers it reasonable so to do and in such manner as it shall
consider necessary in order to protect the Patent Rights and
interests of MRC and CAT under this agreement;
5.7.2 keep MRC reasonably informed of the progress of such defences or
proceedings;
5.7.3 be entitled if such defense or proceedings are successful whether at
trial or by way of settlement to retain the whole of any award of
costs and damages made in such proceedings or settlement.
5.8 MRC shall:
5.8.1 at CAT's expense, render such assistance to CAT as CAT may reasonably
require in respect of such defence or proceedings;
5.8.2 not be prevented in circumstance where CAT fails to do so under
Clause 5.7 from defending any action for an injunction, damages or
other relief or remedy brought by a third party against MRC for
patent infringement provided that MRC has first notified CAT that it
regards CAT's defense of MRC's position as inadequate and CAT has
failed to remedy the same within 30 days of MRC's notice.
5.9 If at any time during this Agreement CAT directly or indirectly opposes or
assists any third party to oppose the grant of letters patent or any patent
application within the Patent Rights, or disputes or directly or indirectly
assists any third party to dispute the validity of any patent within the
Patent Rights or any of the claim thereof then and in such event MRC may at
any time thereafter give notice under clause 8 to terminate this Agreement.
CAT shall use its reasonable endeavours to include a clause similar to this
clause 5.9 in its agreements with sub-licensees of the Patent Rights.
6. SUB-LICENSING AND SUB-CONTRACTING
6.1 CAT may sub-license its rights under clause 2 for any purpose whatsoever
provided always that CAT shall not have the right to sub-license the rights
granted hereunder in their entirety to any third party and CAT shall remain
responsible for all acts and omissions of such sub- licensees or
sub-contractors as though they were CAT.
6.2 CAT shall forthwith notify MRC of any sub-licence granted pursuant to this
clause and of the identity of any sub-licensee.
6.3 CAT undertakes with MRC:
6.3.1 such sub-licence shall be granted on and shall contain substantially
similar terms and conditions as the clauses hereof save that it shall
provide for automatic termination upon the termination of this
Agreement;
6.3.2 CAT shall procure and be responsible to MRC for the performance and
observance by the sub-licensee of the terms and undertakings
contained in such sub-licence and on its part to be observed and
performed.
7. FEES AND ROYALTIES
7.1 CAT shall pay MRC in consideration of the grant made in this Agreement the
following sums (exclusive of VAT thereon);
7.1.1 the sum of [***] payable in [***] equal installments, the first
payment of [***] being payable on the date of execution of this
Agreement and thereafter a payment of [***] being payable on each of
the first 4 anniversaries thereof;
7.1.2 Subject always to the provisions of Clause 7.2 a Royalty of [***] of
the Net Invoice Price on each sale of the Products by CAT or its
Affiliates;
7.1.3 Subject always to the provisions of Clause 7.2 a Royalty calculated
in respect of the Net Invoice Price ("NIP") of each sale of the
Products by CAT's sub-licensees, such Royalty to be calculated as
follows:-
(a) MRC to receive from CAT [***] of the royalty percentage
calculated by reference to NIP payable to CAT by any sub-licensee
up to a maximum of [***] of the NIP of CAT's sub-licensee's sale
of Products provided always that MRC shall not on any occasion
receive payments which represent less than [***] of the NIP of
CAT's sub-licensees sale of Products; and
(b) MRC to receive from CAT [***] of any additional royalty
percentage calculated by reference to NIP payable to CAT by any
sub-licensee in excess of [***] and up to [***] of the NIP of
CAT's sub-licensee's sale of Products
7.2 There are 2 circumstances in which there will be a reduction to the
royalties payable by CAT under Clauses 7.1.2 and 7.1.3 as follows:
7.2.1 If CAT or its sub-licensees are required to licence any third party
dominating patents in order to be able to exercise the rights granted
to it hereunder involving use of the inventions disclosed in the
patents and the corresponding patents listed in Schedule 1 as number
[***] and number [***] and numbers [***] CAT may deduct from the sums
due to MRC all such sums payable to such third parties up to a
maximum of [***] of the sums due to MRC provided that such a
reduction shall not be made where a reduction has already been or is
to be made under Clause 7.5 below
7.2.2 Where Products infringe only those of the Patent Rights which deal
with [***] being those patents referred to in Schedule 1 as number
[***] royalties shall be payable at [***] of the normal rate
7.3 Royalties due to MRC pursuant to clause 7.1 shall be payable in any country
in respect of any Product covered by Valid Claim of the Patent Rights in
the country or ten years from first commercial sale for use or consumption
by the general public of that Product in that country, whichever is the
later.
7.4 Save as otherwise provided in this Agreement no licence fee or royalty is
due by CAT to
MRC in respect of any exploitation of the CAT Libraries as research tools
including rights to Patent Rights and/or Technology as appropriate.
7.5 Royalties on Products paid by CAT to MRC under prior existing agreements
between MRC and CAT shall be creditable against a maximum of [***] on
Royalties payable on the same Products by CAT under clauses 7.1.2 and 7.1.3
7.6 CAT shall within 60 days of the end of each half year commencing on 2
January and 1 July;
7.6.1 prepare and deliver to MRC, a detailed statement confirming;
(A) the quantity of the Products sale by CAT and sub-licensees during
that half year;
(B) whether the Product sold was by way of sale, hire, lease or other
disposal;
(C) the Net Invoice Price of each Product so sold; and
(D) the amount of Royalties due; and
7.6.2 pay to MRC the amount of Royalties due in respect of that half year.
7.7 If MRC shall within 90 days of the receipt of any such statement give to
CAT notice that it does not accept the same, such statement shall be
certified by an independent chartered accountant appointed by agreement
between the Parties or, in default of agreement within 14 days, by the
President for the time being of the Institute of Chartered Accountants of
England and Wales in London. CAT shall make available all books and records
required for the purpose of such certification at reasonable times during
normal business hours and the statement so certified shall be binding
between the parties. The costs of such certification shall be the
responsibility of MRC unless the certificate shows that Royalties in excess
of 5 per cent. of those stated in the original statement are payable in
which case they shall be the responsibility of CAT. Following any such
certification of the Parties shall make any adjustments necessary in
respect of the Royalties already paid to MRC.
7.8 CAT shall keep separate and detailed true and accurate books and records
containing all information necessary for the calculation of the Royalties.
MRC shall be entitled at its expense to inspect the same by its authorized
representative or representatives on reasonable notice during business
hours and to take copies of or extracts from such books and records.
7.9 All sums payable hereunder are exclusive of value added tax (VAT), which
shall where appropriate be paid in addition. MRC shall deliver to CAT a VAT
invoice in respect of every payment affected by VAT.
7.10 All payments hereunder shall be made in Sterling. Any Net Invoice Price
expressed in a currency other than Sterling shall be converted in Sterling
by reference to the average of the relevant buying and selling rates of
National Westminster Bank plc ruling at the end of the month in which the
payment of Royalties pursuant to clause 7.3 is due or is made, whichever is
the earlier.
7.11 If CAT defaults in the payment of any sum due to MRC, such sum shall bear
interest or
from the end of the half year in which payment was due until payment is
made (irrespective of whether the date of payment is before or after any
judgment or award in respect of the same) at a rate per annum equal to 4
per cent over the base rate from time to time of National Westminster Bank
plc, such interest accruing daily but not itself bearing interest.
7.12 CAT shall make all payments of sums payable to MRC without any deduction or
set-off other than such amount (if any) as it is required to deduct by law.
If CAT is required to make such deduction, it shall do all things in its
power which may be reasonably necessary to enable or assist MRC to claim
exemption therefrom under any double taxation or similar agreement from
time to time in force and shall from time to time give to MRC proper
evidence as to the deduction and payment over of the tax or sums withheld.
8. TERMINATION
8.1 Either Party (referred to in this clause as the "terminating Party") may
terminate this Agreement forthwith by notice in writing to the other
(referred to in this clause as the "other Party") upon the happening of one
or more of the following events:
8.1.1 if the other Party shall fail to pay any sum due to the terminating
party within 30 days after the due date and the Party has failed to
remedy such breach within 30 days after written notice has been given
to it by the terminating Party, specifying the breach;
8.1.2 if the other Party shall commit any other material breach of its
obligations hereunder and (in the case of a breach capable of being
remedied) shall fail to remedy such breach within 30 days after
written notice has been given to it by the terminating Party
specifying the breach;
8.1.3 if an order is made, or a petition presented, or an effective
resolution is passed for the winding up of the other Party (except
for the purpose of an amalgamation or reconstruction, the terms of
which have been previously been notified to and approved by the
terminating Party;
8.1.4 if an administration order is made, or a petition for such an order
is presented, in respect of the other Party;
8.1.5 if a voluntary arrangement under section 1 of the Insolvency Act 1986
is proposed in respect of the other Party;
8.1.6 if the other Party convenes a meeting of or proposes or enters into
any arrangement or composition with its creditors;
8.1.7 if any distress, execution, sequestration or other process is
levied or enforced or sued out of upon or against any of the assets
of the other Party and the same is not discharged within 14 days;
8.1.8 if an encumbrancer takes possession or an administrative or other
receiver or
manager is appointed of the whole or any part of the assets of the
Party in breach;
8.1.9 if the other Party is unable to pay its debts within the meaning of
Section 123 of the Insolvency Xxx 0000;
8.1.10 if the other Party shall stop or threaten to stop payment of its
debts generally or cease or threaten to cease to carry on its
business;
8.1.11 if any event occurs in respect of the other Party in any
jurisdiction outside England which is analogous to any of the events
referred to in the foregoing paragraphs.
8.2 Without prejudice to clause 5.9 MRC may terminate this Agreement forthwith
by notice in writing in any of the following circumstances:
8.2.1 if CAT is consistently late in paying Royalties to MRC, and for the
purpose of this clause CAT shall be deemed to be consistently late
if it has failed for [***] to render statements and pay royalties
within the due time; or
8.2.2 if in any period of [***] there shall have been any delay or failure
in performance under this Agreement on the part of CAT resulting
from any occurrence of any event or events of Force Majeure which
delay or failure shall have continued for an aggregate period of
[***].
8.2.3 if MRC shall have served on CAT notice requiring within [***] remedy
of a delay or failure in performance under this Agreement on the
part of CAT and such delay or failure by CAT has not been remedied
by CAT within the time stated.
8.3 Upon the termination of this Agreement by MRC for whatever reason CAT shall
forthwith cease to make any use of the Patent Rights save that if CAT has a
stock of Products existing or in the course of manufacture or unfulfilled
orders on hand at the Termination Date CAT may, but only with MRC's
specific permissions not to be unreasonably withheld, sell such stock on
the terms hereof.
8.4 Upon any termination of this Agreement by MRC, other than for breach by a
CAT sub- licensee appointed pursuant to clause 6.1 MRC shall be made a
party to any agreement between CAT and a sub-licensee of CAT's rights
hereunder for the purpose of ensuring that CAT's sub-licensee hereunder may
continue to exploit the Patent Rights and Technology sub-licensed to it by
CAT.
8.5 It is expressly agreed that MRC shall not be liable to pay any severance
payment or compensation to CAT for loss of profits or loss of goodwill or
for any other loss or damage howsoever arising as a result of the expiry or
termination, for whatever reason, of this Agreement.
8.6 For the avoidance of doubt, (and without prejudice to the generality of
clauses 8.3 to 8.5), in relation to those of the Patent Rights in respect
of which CAT is joint registered
proprietor with MRC (if any), upon expiry or termination of this Agreement
for whatever reason, MRC and CAT shall both be entitled to use those
rights, but shall not individually be entitled to assign those rights or to
licence third parties under those rights without the prior written consent
of the other Party not to be unreasonably withheld.
8.7 In the event of a breach by MRC of its obligations under Clauses 2.1.1,
2.1.2, 2.1.4 or 2.1.10 and if CAT shall have served on MRC notice requiring
within [***] remedy of a delay or failure in performance under this
Agreement on the part of MRC or any other licensees of MRC and such delay
or failure has not been remedied within the time stated CAT shall have the
right on written notice to MRC forthwith to terminate the rights of MRC
thereunder. Upon any such termination other than for breach by an MRC
licensee CAT shall be made a party to any agreement between MRC and a
licensee of MRC for the purpose of ensuring that MRC's licensee may
continue to exploit the Patent Rights and Technology licensed to it by MRC.
8.8 Clauses 5, 7, 9, 18 and 22 and all accrued rights and liabilities of the
Parties hereto shall survive the termination, for whatever reason, of this
Agreement.
9. INDEMNITY
9.1 CAT shall be liable for and will indemnify MRC (together with its officers,
servants and agents) against any and all liability, loss, damages, costs,
legal costs, professional and other expenses of any nature whatsoever
incurred or suffered by MRC whether direct or consequential arising out of
any dispute or contractual tortious or other claims or proceedings brought
against MRC by a third party claiming relief against MRC by reason of the
exercise and use of the Technology or the Patent Rights or manufacture, use
or sale of any Products by CAT.
9.2 MRC shall be liable for and will indemnify CAT (together with its officers,
servants and agents) against any and all liability, loss, damages, costs,
legal costs, professional and other expenses of any nature whatsoever
incurred or suffered by CAT whether direct or consequential arising out of
any dispute or contractual tortious or other claims or proceedings brought
against CAT as a third party claiming relief against CAT by reason of the
exercise and use of the Technology or the Patent Rights or manufacture, use
or sale of any Products by MRC or the Collaborative Centre.
10. ASSIGNMENT
10.1 Save as otherwise provided in this Agreement neither Party shall without
the prior written consent of the other assign the benefit and/or burden of
this Agreement except to an Affiliate of CAT or a third party acquiring all
of the business of CAT and then only provided that such Affiliate or third
party undertakes to MRC to be bound by the terms of this Agreement.
10.2 This Agreement shall be binding on and enure for the benefit of the
successors and agreed assigns of the Parties.
11. FORCE MAJEURE
11.1 Neither Party to this Agreement shall have any liability whatsoever or
(without prejudice to any payments of monies due) be deemed to be in
default for any delays or failures in performance of any of its obligations
under this Agreement resulting from any occurrence of an event of Force
Majeure provided that this shall not apply to relieve CAT of any payment
obligation where the occurrence or event consists of non-payment or late
payment by a customer or otherwise consists of a shortage of funds.
11.2 The occurrence or existence of any event of Force Majeure shall be
immediately notified by the party affected thereby to the other. The
affected party shall use all reasonable endeavours to remedy the event or
limit the effects of the said event of Force Majeure upon the other party
as quickly as possible.
12. SEVERABILITY
If any term or provision of this Agreement shall be found by a court of
competent jurisdiction to be invalid, illegal or otherwise unenforceable,
the same shall not affect the other terms or provisions hereof or the whole
of this Agreement, but such term or provision shall be deemed modified to
the extent necessary in the court's opinion to render such term or
provision enforceable, and the rights and obligations of the Parties shall
be construed and enforced accordingly, preserving to the fullest
permissible extent the intent and agreements of the Parties in this
Agreement.
13. DELAY
No failure or delay or other indulgence on the part of either Party to
exercise any right or remedy under this Agreement shall be construed or
operate as a waiver thereof nor shall any single or partial exercise of any
right or remedy preclude the further exercise or such right or remedy as
the case may be. The rights and remedies provided in this Agreement are
cumulative and are not exclusive of any rights or remedies by law.
14. CONFIDENTIALITY
14.1 Subject to clause 14.2 below, each Party shall keep secret and confidential
all technical or financial information which may be disclosed to it by the
other Party pursuant to this Agreement including, without limitation, any
financial information which may be disclosed pursuant to clause 7.6 and may
not disclose such information to any person except to those of its
employees who have a need to know such information
14.2 The obligations of confidence referred to in clause 14.1 shall not extend
to any information which:
14.2.1 was already known to the recipient Party prior to its receipt
from the disclosing party;
14.2.2 is subsequently disclosed to the recipient lawfully by a
third party owing no obligation of confidence in
respect of such information.
14.2.3 is or shall be generally available to the public otherwise
than by reason of breach of clause 14.1 by the
recipient Party;
14.2.4 is required by law to be disclosed and then only when prompt
written notice of this requirements has been given to
the disclosing Party so that such Party may seek
appropriate relief to prevent such disclosure
15. NOTICES
15.1 A notice, approval, consent, or other communication given under or in
connection with this Agreement (in this Clause known as a "Notice"):
15.1.1 must be in writing in the English language;
15.1.2 must be left at the address of the addressee or sent by pre-paid
first class post to the address of the addressee or sent by
facsimile to the facsimile number of the addressee in each case
which is specified in this clause, and marked for the attention
of the person so specified, or to such other address or facsimile
number and/or marked for the attention of such other person as
the relevant party may from time to time specify by Notice given
in accordance with this clause.
The relevant details for each Party at the date of this Agreement
are:
MRC
Address:- 00 Xxxx Xxxxxxxx, Xxxxxx X0X 0XX
Facsimile: 0171 323 1331
Attention: Head of Technology Transfer Group
CAT
Address:- Xxx Xxxxxxx Xxxx, Xxxxxxxx, Xx Xxxxxxx,
Xxxxxxxxxxxxxx, XX0 0XX, XX
Facsimile: 01763 263413
Attention: Company Secretary
15.2 In the absence of evidence of earlier receipt, any Notice shall take effect
from the time that it is deemed to be received in accordance with
sub-clause 3 below.
15.3 Subject to sub-clause 4 below, a Notice is deemed to be received:
15.3.1 in the case of a notice left at the addressee, upon delivery
at that address;
15.3.2 in the case of a posted letter, on the third day after
posting;
15.3.3 in the case of a facsimile, on production of a transmission
report from the machine from which the facsimile was
sent which indicates that the facsimile was sent in
its entirety to the facsimile number of the recipient
provided that a confirmatory copy of such facsimile
shall have been sent by post in accordance with sub-
clause 1 within 24 hours of such transmission.
15.4 A Notice received or deemed to be received in accordance with sub-clause 3
above on a day which is not a Business day or after 5 p.m., on any Business
Day, shall be deemed to be received on the next following Business Day.
15.5 For the purposes of this clause, "Business Day" shall mean a day not being
a Saturday on which trading banks are generally open for business in the
City of London.
16. NO PARTNERSHIP
Nothing in this Agreement or in any document referred to in it or any
arrangement contemplated by it shall constitute either Party a partner of
the other nor shall the execution, completion and implementation of this
Agreement confer on any Party any
power to bind or impose any obligations to any third parties on the other
Party or to pledge the credit of the Party.
17. ENTIRE AGREEMENT
17.1 This Agreement represents the entire understanding, and constitutes the
whole agreement, in relation to its subject matter and supersedes any
previous agreement between the Parties with respect thereto and without
prejudice to the generality of the foregoing excludes any warranty,
condition or other undertaking implied at law or by custom.
17.2 Each Party confirms that, except as provided in this Agreement and without
prejudice to any liability for fraudulent misrepresentation, no Party has
relied on any representation or warranty or undertaking which is not
contained in the Agreement (or which was made by a party who is not a party
to this Agreement), and neither Party shall have any remedy in respect of
misrepresentation or untrue statement made by the other Party unless and to
the extent that a claim lies under the Agreement.
17.3 In the event that any provision of this Agreement shall be void or
unenforceable by reason of any applicable law, it shall be deleted and the
remaining provisions hereof shall continue in full force and effect and if
necessary, be so amended as shall be necessary to give effect to the spirit
of this Agreement so far as possible.
18. GOVERNING LAW, JURISDICTION AND SERVICE OF PROCESS
18.1 This Agreement shall be governed by, and construed in accordance with
English law.
18.2 The Parties agree that the Courts of England shall have exclusive
jurisdiction in relation to any claim, dispute or difference concerning
this Agreement and any matter arising therefrom.
18.3 Each Party agrees that without preventing any other mode of service, any
document in an action (including, but not limited to, any writ of summons
or other originating process of any third or other party notice) may be
served on the other Party by being delivered to or left for that Party at
its address for service of notices under clause 15 and each Party
undertakes to maintain such an address at all times in the United Kingdom
and to notify the other Party in advance of any change from time to time of
the details of such address in accordance with the manner prescribed for
service of notices under clause 15.
19. COMPLIANCE WITH LAWS AND REGULATIONS
Each Party shall observe and abide by and shall require its sub-contractors
to observe and abide by all laws, regulations and by laws as may apply in
relation to the matters contemplated by this Agreement. Neither Party shall
do anything or omit to do anything which will cause the other to be in
breach of any applicable laws or regulations which have been notified by
the other Party.
20. VARIATION AND WAIVER
20.1 No variation of this Agreement shall be effective unless it is in writing
signed by the Parties.
20.2 No waiver of any term, provision or condition of this Agreement shall be
effective unless it is in writing and signed by the waiving Party.
20.3 Without prejudice to clause 14 no failure to exercise nor any delay in
exercising any right or remedy hereunder shall operate as a waiver thereof
or of any other right or remedy
hereunder, nor shall any single or partial exercise of any right or remedy
prevent any further or other exercise thereof or the exercise of any other
right or remedy.
21. APPROVALS AND COMPLIANCE
21.1 Without prejudice to clause 19, CAT shall obtain any authorisation or
approvals by the relevant authorities within the Territory as may be
required for or as a result of this Agreement on for the use or sale of any
Products and shall ensure that the validity of the same is maintained
during the term of this Agreement.
21.2 CAT shall be responsible for ensuring that any Products and its packaging
and labelling comply with all legislation, regulations, standards and codes
of practice in the Territory.
22. ANNOUNCEMENTS
22.1 Except as required by law or for the purpose of litigation or to the extent
necessary to comply with the requirements of the Securities and Exchange
Commission, the London Stock Exchange Limited and any other equivalent
entity in another jurisdiction and then, so far as permitted and
practicable, only when prompt written notice of this requirement has been
given to the other Party:
22.1.1 all press releases to be issued which relate to this Agreement shall
be agreed between the Parties;
22.1.2 no announcement shall be issued or publicly given concerning the
financial terms set out in Clause 7 of this Agreement unless in a
form agreed to by MRC and CAT; and
22.1.3 neither MRC nor CAT shall disclose to any third party other than
their respective professional advisers any of the financial terms
of the Agreement.
23. RTPA SUSPENSION OR RESTRICTIONS
If a provision contained in this Agreement or in any arrangement of which
this Agreement forms part makes this Agreement or any such arrangement
registrable under the Restrictive Trade Practices Act 1976 that provision
shall not come into effect until the day after the date on which full
particulars of this Agreement and of any such arrangement have been
furnished to the Office of Fair Trading pursuant to Section 24 of the
Restrictive Trade Practices Xxx 0000.
IN WITNESS
its duly authorised representatives the day and year first above written.
For and behalf of MRC
Signed: ____________________________
Printed: ___________________________
Title: _____________________________
Date: ______________________________
For and behalf of CAT
Signed: ____________________________
Printed: ___________________________
Title: _____________________________
Date: ______________________________
For and behalf of CAT GROUP
Signed: ____________________________
Printed: ___________________________
Title: _____________________________
Date: ______________________________
SCHEDULE 1
----------
Patent Rights
-------------
CAT/MRC PATENTS AND APPLICATIONS
Number PCT/GB89/01344
Inventor Winter et al (Winter 2)
Title Cloning Immunoglobulin Variable Domain Sequences
Subject Antibody PCR
Applicant MRC
Status Granted in Europe (EPO 368 684B1), Australia, application
elsewhere
Number PCT/GB91/01134
Inventor XxXxxxxxxx et al
Title Methods for producing members of specific binding pairs
Subject Gene 3 protein antibody display (and display of other proteins)
Applicant MRC/CAT
Status Granted Australia, Europe (EPO 589 877B1), Divisional field,
Application elsewhere
Number PCT/GB92/01755
Inventors Xxxxxxxxxx et al
Title Production of chimaeric antibodies, a combinational approach
Subject Humanisation of antibodies by chain shuffling (Epitope Imprinted
Selection)
Applicant MRC/CAT
Status Granted Australia, Granted US 15.10.96, Application elsewhere
Number PCT/GB92/02240 (W093/11236)
Inventors Xxxxxxxxx et al
Title Production of anti-self antibodies from antibody segment
repertoires and displayed on phage
Subject Anti-self antibodies
Applicant MRC/CAT
Status Granted Australia, Application elsewhere
Number PCT/GB92/00883 (WO92/20791)
Inventors Winter et al
Title Methods for producing members of specific binding pairs
Subject Dual combinatorial libraries
Applicant MRC/CAT
Status Granted Australia, notice of allowance US, Application elsewhere
Number PCT/GB93/00605
Inventors Winter et al
Title Methods for producing members of specific binding pairs
Subject Site specific recombination e.g. lox P
Applicant MRC/CAT
Status Application
Number US CIP 08/350260
Inventors Xxxxxxxxx et al
Title Methods for producing Members of Specific Binding Pairs
Subject Site specific recombination e.g. lox P, continuation in part (US)
Applicant MRC/CAT
Status Application
Number PCT/GB94/01422
Inventors Jespers et al
Title SBP members with a chemical moiety covalently bound within the
binding site production and selection thereof
Subject Chemosynthetic libraries
Applicant MRC
Status Application
Number PCT/GB94/02662
Inventors Xxxxxxxxx et al
Title Recombinant Binding Proteins and Peptides
Subject loxP/self splicing introns in antibody and peptide library
construction
Applicant MRC
Status Application
Number PCT/GB92/01483
Inventors Winter et al
Title Treatment of cell populations
Subject In cell PCR
Applicant MRC
Status Granted Australia, application elsewhere
[***]
SCHEDULE 2
----------
Draft Formal Licence
--------------------
THIS LICENCE is made the __________day of ____________ 1997
(1) MEDICAL RESEARCH COUNCIL a public body incorporated under Royal Charter,
whose principal office is at [________________________] (the "Licensor");
and
(2) CAMBRIDGE ANTIBODY TECHNOLOGY LIMITED a company incorporated in England and
Wales with registered number [_________], whose registered office is at
[__________________] (the "Licensee").
WHEREAS:
(A) MRC is the registered proprietor or joint registered proprietor with the
Licensee of the patents listed in Schedule A (hereinafter called the
"Patents")
(B) By an Agreement dated ________________ 1997 between the parties hereto (the
"Agreement") MRC, amongst other things, agreed to grant CAT an exclusive
licence under the Patents in certain fields and the parties wish formally
to record that licence.
NOW IT IS HEREBY AGREED AND CONFIRMED:
1. Pursuant to the Agreement MRC HEREBY GRANTS to CAT an exclusive licence
under the Patents in certain fields on the terms and conditions of the
Agreement.
IN WITNESS WHEREOF MRC has granted this licence the day and year first above
written.
SIGNED BY: )
for and on behalf of )
MEDICAL RESEARCH COUNCIL )
in the presence of )
Name )
SIGNED BY: )
for and on behalf of )
CAMBRIDGE ANTIBODY )
TECHNOLOGY LIMITED )
in the presence of )
Name )
SCHEDULE A
----------
Patent Rights
-------------
CAT/MRC PATENTS AND APPLICATIONS
Number PCT/GB89/01344
Inventor Winter et al (Winter 2)
Title Cloning Immunoglobulin Variable Domain Sequences
Subject Antibody PCR
Applicant MRC
Status Granted in Europe (EPO 368 684B1), Australia, application elsewhere
Number PCT/GB91/01134
Inventor XxXxxxxxxx et al
Title Methods for producing members of specific binding pairs
Subject Gene 3 protein antibody display (and display of other proteins)
Applicant MRC/CAT
Status Granted Australia, Europe (EPO 589 877B1), Divisional field,
Application elsewhere
Number PCT/GB92/01755
Inventors Xxxxxxxxxx et al
Title Production of chimaeric antibodies, a combinational approach
Subject Humanisation of antibodies by chain shuffling (Epitope Imprinted
Selection)
Applicant MRC/CAT
Status Granted Australia, Granted US 15.10.96, Application elsewhere
Number PCT/GB92/02240 (W093/11236)
Inventors Xxxxxxxxx et al
Title Production of anti-self antibodies from antibody segment repertoires
and displayed on phage
Subject Anti-self antibodies
Applicant MRC/CAT
Status Granted Australia, Application elsewhere
Number PCT/GB92/00883 (WO92/20791)
Inventors Winter et al
Title Methods for producing members of specific binding pairs
Subject Dual combinatorial libraries
Applicant MRC/CAT
Status Granted Australia, notice of allowance US, Application elsewhere
Number PCT/GB93/00605
Inventors Winter et al
Title Methods for producing Members of Specific Binding Pairs
Subject Site specific recombination e.g. lox P
Applicant MRC/CAT
Status Application
Number US CIP 08/350260
Inventors Xxxxxxxxx et al
Title Methods for producing Members of Specific Binding Pairs
Subject Site specific recombination e.g. lox P, continuation in part (US)
Applicant MRC/CAT
Status Application
Number PCT/GB94/01422
Inventors Jespers et al
Title SBP members with a chemical moiety covalently bound within the
binding site production and selection thereof
Subject Chemosynthetic libraries
Applicant MRC
Status Application
Number PCT/GB94/02662
Inventors Xxxxxxxxx et al
Title Recombinant Binding Proteins and Peptides
Subject loxP/self splicing introns in antibody and peptide library
construction
Applicant MRC
Status Application
Number PCT/GB92/01483
Inventors Winter et al
Title Treatment of cell populations
Subject In cell PCR
Applicant MRC
Status Granted Australia, application elsewhere
[***]
SCHEDULE 3
----------
Third Party Rights
------------------
[***]
SCHEDULE 4
----------
The Libraries
-------------
[***]
SCHEDULE 5
----------
[***]
Excluded Antibodies
-------------------
The following combinations of antibodies fall outside the scope of the licence:-
1/ [***] indicates that text has been deleted, which is subject to a
-
confidential treatment request. This text has been filed with the SEC on a
supplemental basis.
