AMENDED AND RESTATED LICENSE AGREEMENT
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
AMENDED AND RESTATED LICENSE AGREEMENT
THIS
AMENDED AND RESTATED LICENSE AGREEMENT (this “Agreement”), effective as
of September 24, 2014 (the “Effective Date”), is
entered into between Tactic Pharma, LLC, a limited liability
company (“TACTIC”), having offices
at 0000 Xxxxxxxxx Xxxxxx, Xxxxxxxx Xxxx, XX 00000 and XOMA (US)
LLC, a Delaware limited liability company (“XOMA”), having offices at
0000 Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000. Each of XOMA and
TACTIC are sometimes referred to herein separately as a
“Party”
and together as “Parties.”
WHEREAS
TACTIC was formed upon the dissolution of Attenuon, LLC, Xxx Xxxxx,
Xxxxxxxxxx, 00000 (“ATTENUON”), such that TACTIC can be
considered a successor of ATTENUON;
WHEREAS
TACTIC is the successor and rightful owner of certain IP rights
developed by ATTENUON, including, but not limited to,
ATN-658;
WHEREAS
ATTENUON and XOMA had entered into a certain HUMAN
ENGINEERING™ LICENSE AGREEMENT, effective September 29, 2006,
(the “Prior Agreement”) in which, among other things,
Attenuon, LLC obtained a license to certain HUMAN ENGINEERING
PATENT RIGHTS as described in the Prior Agreement for the purposes
of developing and commercializing human engineered
ATN-658;
WHEREAS
for the good and valuable consideration set forth in this
agreement, the Parties agree that all rights, claims, and
obligations under the Prior Agreement between Attenuon, LLC, its
successors, and XOMA are now null and void unless expressly
restated herein. Accordingly, the Parties agree that there are no
outstanding payments, liabilities, or other obligations owed by
TACTIC to XOMA under the Prior Agreement.
For
good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the Parties agree as
follows:
ARTICLE
1
DEFINITIONS
For
purposes of this Agreement, the terms defined in this Article 1
shall have the respective meanings set forth below:
1.1 “Affiliate” shall mean,
with respect to any Person, any other Person which, presently or in
the future, directly or indirectly controls, is controlled by, or
is under common control with, such Person.
1.2 “Antibody” shall mean any
immunoglobulin molecule (such as IgG), whether in monospecific or
any other form, and shall include, without limitation, any
immunoglobulin fragment (such as Fv, Fab, F(ab') or
F(ab')2),
any fusion protein of an immunoglobulin or immunoglobulin fragment
and any single chain antibody (such as scFv), as well as any
derivative of any of the foregoing.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
1.3 “TACTIC Antibody” shall
mean the non-human Antibody directed to the TACTIC Target, referred
to by TACTIC as “ATN-658”
1.4 “TACTIC
Patent Rights” shall have the meaning set forth in
Section 1.6.
1.5 “TACTIC Program
Inventions” shall have the meaning set forth in
Section 1.6.
1.6 “TACTIC
Program Inventions and Patent Rights” shall mean any
and all (a) Program Inventions, whether or not patentable, that (i)
comprise or embody (A) [***], (B) [***], (C) [***], (D) [***], (E)
[***] and (F) any uses of any and all of the foregoing, or (ii) do
not meet the definition of [***] by virtue of the preceding clause
(i) or the definition of [***] by virtue of clause (i) thereof and
were [***] (collectively, the “TACTIC Program
Inventions”); and (b) Patent Rights arising out of the
conduct of activities under the Prior Agreement that claim or cover
such TACTIC Program Inventions (the “TACTIC Patent Rights”).
Notwithstanding the foregoing, TACTIC Program Inventions and Patent
Rights do not include any [***] and Patent Rights; provided that the foregoing shall not
apply to [***] (I) [***] (II) [***] (III) [***] (IV) [***] (V)
[***] and (VI) any uses of any and all of the foregoing, each of
which shall be included in the [***] and [***].
1.7 “TACTIC Target” shall mean
the target antigen known as urokinase-type plasminogen activator
receptor (uPAR).
1.8 “Combination Product”
shall have the meaning set forth in Section 1.22.
1.9 “Composition of Matter”
shall mean any composition of matter or article of
manufacture.
1.10 “Confidential
Information” shall mean any proprietary or
confidential information or material disclosed by a Party to the
other Party pursuant to the Prior Agreement or this Agreement which
is (a) disclosed in tangible form and is designated thereon as
“Confidential” at the time it is delivered to the
receiving Party, or (b) disclosed orally and identified as
confidential or proprietary when disclosed and such disclosure of
confidential information is confirmed in writing within thirty (30)
days by the disclosing Party. Notwithstanding the foregoing,
Confidential Information shall not include information which the
receiving Party can establish by written documentation (i) to have
been publicly known prior to disclosure of such information by the
disclosing Party to the receiving Party, (ii) to have become
publicly known, without fault on the part of the receiving Party,
subsequent to disclosure of such information by the disclosing
Party to the receiving Party, (iii) to have been received by the
receiving Party at any time from a source, other than the
disclosing Party, rightfully having possession of and the right to
disclose such information, other than under an obligation
of
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
confidentiality,
(iv) to have been otherwise rightfully known by the receiving Party
prior to disclosure of such information by the disclosing Party to
the receiving Party, other than under an obligation of
confidentiality, or (v) to have been independently developed by
employees or agents of the receiving Party without access to or use
of such information disclosed by the disclosing Party to the
receiving Party without violating any obligation of confidentiality
or non-use.
1.11 “Control,”
“Controls” and
“Controlled” shall mean,
with respect to a particular item of information or Intellectual
Property Right, that the applicable Party or any of its Affiliates
owns (whether solely or jointly with the other Party or any Third
Party), or has a license to, such item or right and has the ability
to grant to the other Party access to, and a license or sublicense
(as applicable) under, such item or right as provided for herein
without violating the terms of any agreement with any Third
Party.
1.12 “CPR”
shall have the meaning set forth in Section 9.2.
1.13 “Dispute”
shall have the meaning set forth in Section 9.1.
1.14 “Human
Engineer™,” “Human Engineered™”
and “Human
Engineering™” shall mean, for purposes of this
Agreement, with respect to a particular Antibody, resulting from,
or otherwise practicing, the methods of the Human
Engineering™ Patent Rights or any other proprietary protein
engineering methods used by XOMA for modifying non-human Antibodies
with the intended purpose of making them suitable for medical
purposes in humans.
1.15 “Human
Engineered™ TACTIC Antibodies” shall mean the
Human Engineered™ versions of the TACTIC Antibodies provided
by XOMA under the Prior Agreement.
1.16 “Human
Engineering™ Patent Rights” shall mean the
Patent Rights listed on Schedule 1.16 hereto and all
patents issuing on any of the applications so listed, including
extensions, reissues and re-examinations.
1.17 “Indemnitee”
shall have the meaning set forth in Section 8.2.
1.18 “Indemnitor”
shall have the meaning set forth in Section 8.2.
1.19 “Intellectual
Property Rights” shall mean Patent Rights, copyrights,
trademarks, service marks, know-how, trade secrets, and
applications and registrations for the foregoing, in any country,
supranational organization or territory of the world.
1.20 "Joint
Program Inventions" shall mean
any and all Program Inventions, whether or not patentable, that are
invented jointly by employees, agents, consultants or contractors
of both [***], but [***].
1.21 "Major
Market Country" shall mean any of the United States of
America, Japan or any of the top five (5) countries (measured by
pharmaceutical sales for the most recently com pleted
calendar year for which such information is available at the time
of determination) of the European Union.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
1.22 “Milestone
Payment” shall have the meaning set forth in Section
3.1.
1.23 “Net
Sales” shall mean the gross amount invoiced by TACTIC,
its Affiliates, assignees or sublicensees for sales of Products to
Third Parties, less
the following items, as allocable to such Products:
(a) trade discounts,
rebates or allowances actually allowed and taken directly with
respect to such sales;
(b) credits or
allowances additionally granted upon returns, rejections, recalls
or retroactive price reductions;
(c) freight, shipping
and insurance charges;
(d)
[***];
(e) taxes, duties or
other governmental tariffs (other than income taxes);
and
(f) government mandated
rebates.
In the
event that a Product is sold as part of a Combination Product (as
defined below) in any country, the Net Sales of the Product as part
of a Combination Product in that country for the purposes of
determining royalty payments shall be determined by multiplying the
Net Sales of the Combination Product in that country by the
fraction (A/A+B) where A is the average sale price in the relevant
quarterly period of the Product in that country when sold
separately in finished form and B is the average sale price in the
relevant quarterly period of the Other Element (as defined below)
in that country sold separately in finished form. In the event that
the average sale price of the Product in that country can be
determined but the average sale price of the Other Element in that
country cannot be determined, Net Sales of the Product in that
country for the purposes of determining royalty payments shall be
calculated by multiplying the Net Sales of the Combination Product
in that country by the fraction (C/D) where C is the selling
Party's average sales price in the relevant quarterly period of the
Product and D is the average selling price in the relevant
quarterly period of the Combination Product in that country. If the
average sale price of the Other Element in that quarterly period
can be determined but the average price of the Product in that
country cannot be determined, Net Sales of the Combination Product
in that country for the purposes of determining royalty payments
shall be calculated by multiplying the Net Sales of the Combination
Product in that country by the following formula: one (1) minus E/D where E is the average
selling price in the relevant quarterly period of the Other Element
in that country and D is the average selling price of the
Combination Product in that country in the relevant quarterly
period. If the average sale price of both the Product and the Other
Element cannot be deter mined, the Net Sales of the Product
shall be reasonably agreed upon by the Parties. As used herein, the
term "Combination
Product" shall mean a product which contains or comprises a
Product as an active component and at least one other active
compound (an "Other
Element").
Provision
of Products free of charge for clinical trials, for promotional or
sampling purposes or as donations (for example to non-profit
institutions or government agencies for a non-commercial purpose)
at levels not in excess of industry norms, shall not be considered
in determining Net Sales.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
1.24 “Patent
Prosecution” shall mean, with respect to particular
Patent Rights, (a) preparing, filing and prosecuting patent
applications (including, but not limited to, provisional,
non-provisional, reissue, reexamination, continuing, continuation,
continuation-in-part, divisional, and substitute applications and
any foreign counterparts thereof) of such Patent Rights; (b)
maintaining such Patent Rights; and (c) managing or conducting any
interference or opposition or similar proceedings relating to the
foregoing.
1.25 “Patent
Rights” shall mean any of the following, whether
existing now or in the future anywhere in the world:
(a) patents and patent applications; (b) continuations,
continuations-in-part, divisionals and substitute applications with
respect to any such patent application; (c) any patents issued
based on or claiming priority to any such patent applications;
(d) any reissue, reexamination, renewal or extension
(including any supplemental patent certificate) of any such
patents; and (e) any confirmation patent or registration patent or
patent of addition based on any such patents.
1.26 “Person”
shall mean an individual, corporation, partnership, limited
liability company, trust, business trust, association, joint stock
company, joint venture, pool, syndicate, sole proprietorship,
unincorporated organization, governmental authority or any other
form of entity or organization not specifically listed
herein.
1.27 “Product”
shall mean any Composition of Matter
that comprises or contains the Human Engineered™
Tactic Antibodies or any derivatives,
conjugates and/or fragments thereof.
1.28 "Program
Invention" shall mean any invention (whether or not
patentable), discovery, Composition of Matter, improvement,
enhancement, technology, data or information made or conceived in
connection with the conduct of activities pursuant to the Prior
Agreement.
1.29 “PTO”
shall have the meaning set forth in Section 5.4(c).
1.30 “Term”
shall have the meaning set forth in Section 7.1.
1.31 “Third
Party” shall mean any Person other than XOMA or TACTIC
or their Affiliates.
1.32 “Title
XI” shall have the meaning set forth in Section
11.2.
1.33 “Valid
Claim” shall mean (a) a claim of an issued and
unexpired patent which has not been held permanently revoked,
unenforceable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or
unappealed within the time allowed for appeal and that is not
admitted to be invalid or unenforceable through reissue, disclaimer
or otherwise, or (b) a claim (including amendments) of a pending
patent application that has neither (i) been abandoned or finally
rejected without the possibility of appeal or refiling nor (ii)
been pending for more than [***], provided that any claim excluded from
this definition in reliance on this clause (b)(ii) that
subsequently issues shall constitute a Valid Claim so long as it
meets the requirements of clause (a) above.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
1.35 “XOMA
Patent Rights” shall have the meaning set forth in
Section 1.37.
1.36 “XOMA
Program Inventions” shall have the meaning set forth
in Section 1.37.
1.37 “XOMA
Program Inventions and Patent Rights” shall mean any
and all (a) Program Inventions, whether or not patentable, that (i)
comprise or embody (A) [***] (B) methods that are generally
applicable to the [***] or (ii) do not [***] and were invented
solely by employees, agents, consultants or contractors of [***]
(collectively, the “XOMA Program
Inventions”); and (b) all Patent Rights arising out of
the conduct of activities under the Prior Agreement that claim or
cover such XOMA Program Inventions (the “XOMA Patent
Rights”).
ARTICLE
2
INTELLECTUAL PROPERTY RIGHTS
2.1 License Grants to TACTIC. XOMA
hereby grants to TACTIC:
(a) a worldwide,
non-exclusive license, with the right to sublicense in its sole
discretion, under any and all Intellectual Property Rights
Controlled by XOMA at any time during the Term covering, claiming
or relating to Program Inventions, and/or XOMA’s Human
Engineering™ technology utilized in XOMA's performance of work under the
Prior Agreement including, without limitation, the Human
Engineering™ Patent
Rights), to make, have made, use, offer for sale, sell and import
Human Engineered™ TACTIC Antibodies and any
Product.
2.2 Ownership of Intellectual
Property.
2.2.1 Inventorship
for Program Inventions shall be determined in accordance with U.S.
patent laws.
2.2.2 TACTIC
reserves and shall retain all right, title and interest in and to
the TACTIC Antibody and all Intellectual Property Rights
therein.
2.2.3 Subject
to the rights and licenses granted under this Agreement, ownership
of all Program Inventions, irrespective of inventorship, shall be
as follows: (a) TACTIC shall own TACTIC Program Inventions and
Patent Rights; (b) XOMA shall own all XOMA Program Inventions and
Patent Rights; and (c) TACTIC and
XOMA shall jointly own, in equal undivided shares, any Joint
Program Inventions.
[***] = Confidential Information has
been omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
2.2.4 XOMA
hereby assigns, and agrees to assign, to TACTIC all of XOMA’s
right, title and interest in and to any and all TACTIC Program
Inventions and Patent Rights, including, without limitation, the
right to xxx for past, present and future infringement. XOMA
agrees, without further consideration, to execute all documents,
certificates and other instruments, and to do all acts reasonably
necessary to vest and confirm in TACTIC, its successors and
assigns, the legal title to all such Program Inventions and Patent
Rights; provided that, if
such requests require more than de
minimis out-of-pocket expenditures by XOMA, TACTIC will
reimburse XOMA for such expenditures, to the extent previously
approved by TACTIC in writing (which approval shall not be
unreasonably withheld or delayed).
2.2.5 TACTIC
hereby assigns, and agrees to assign, to XOMA all of TACTIC’s
right, title and interest in and to any and all XOMA Program
Inventions and Patent Rights, including, without limitation, the
right to xxx for past, present and future infringement. TACTIC
agrees, without further consideration, to execute all documents,
certificates and other instruments, and to do all acts reasonably
necessary to vest and confirm in XOMA, its successors and assigns,
the legal title to all such Program Inventions and Patent Rights;
provided that, if such
requests require more than de
minimis out-of-pocket expenditures by TACTIC, XOMA will
reimburse TACTIC for such expenditures, to the extent previously
approved by XOMA in writing (which approval shall not be
unreasonably withheld or delayed).
2.3 No Implied Rights. Only the
rights and licenses granted pursuant to the express terms of this
Agreement shall be of any legal force. Without limiting the
foregoing and subject to the license granted by XOMA in Section
2.1, neither the grants provided in Section 2.1 nor the assignment
from XOMA to TACTIC provided in Section 2.2.4 provide TACTIC with
any right to practice the methods of the Human Engineering™
technology (including, without limitation, the Human
Engineering™ Patent Rights)
or, subject to the grants made in Section 2.1, to receive from XOMA
or use information received from XOMA related to its Human
Engineering™ technology, and in no event shall XOMA be
required to disclose such methods or information.
2.4 Sublicenses. Any sublicense
permitted hereunder shall be set forth in a written agreement
containing provisions relating to ownership of intellectual
property that are substantially consistent with, and with respect
to audits and confidentiality that are substantially consistent
with, and at least as stringent as, those contained herein and
shall be subject and subordinate to the terms and conditions of
this Agreement.
ARTICLE
3
FINANCIAL TERMS
3.1 Milestone Payments. In full
consideration of the rights and licenses granted to TACTIC herein,
TACTIC shall pay to XOMA the applicable payments below (each, a
“Milestone
Payment”)
|
Event
|
Payment
|
|
1.
[***]
|
[***]
|
[***] = Confidential Information has
been omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
|
2.
[***]
|
[***]
|
|
3.
[***]
|
[***]
|
|
4.
[***]
|
[***]
|
|
5.
[***]
|
[***]
|
|
6.
[***]
|
[***]
|
Each
Milestone Payment shall be due [***] days from the achievement of
the corresponding milestone event. Each Milestone Payment [***],
and [***] (a) [***] or (b) [***].
3.2 Third Party Payments. TACTIC
will be responsible for all financial obligations due Third
Parties.
3.3 Payments; Currency. All
payments due under this Article 3 shall be paid in United States
dollars in immediately available funds to an account designated by
XOMA.
3.4 Payment Reports and
Timing.
3.4.1 TACTIC
shall make a written report to XOMA within thirty (30) days of the
achievement of each of the milestones set forth in Section 3.1
with respect to Product
3.5 Payment Records and
Audits.
3.5.1 TACTIC
shall, and shall contractually require all Third Parties selling
Products on its behalf to, keep complete and accurate books of
account for, and records of Net Sales of, Product in sufficient
detail to enable the milestone payments payable under this
Agreement to be determined
3.5.2 Upon
the written request of XOMA, TACTIC shall permit an independent
auditor appointed by XOMA and reasonably acceptable to TACTIC to
have access during normal business hours to such of the records of
TACTIC and its Affiliates as may be reasonably necessary to verify
the accuracy of the Net Sales under this Agreement. The auditor
shall only disclose to XOMA whether the Net Sales reported are
correct or incorrect and the amount of any discrepancy. No other
information shall be provided to XOMA without the prior consent of
TACTIC unless disclosure is required by law, regulation or judicial
order. If XOMA determines that disclosure is required by law,
regulation or judicial order, it shall give TACTIC reasonable prior
notice thereof in order for TACTIC to seek a protective order
against or limiting such disclosure. TACTIC is entitled to require
the auditor to execute a reasonable confidentiality agreement prior
to commencing any such audit. Any agreement between TACTIC and/or
any of its Affiliates, on the one hand, and one or more Third
Parties, on the other hand, pursuant to which such Third Party may
market and/or sell Product shall contain provisions for access and
inspection of records substantially similar to the
foregoing.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
3.5.3 Audits
conducted under this Section 3.5 shall be at the expense of XOMA
unless an unpaid amount for the full
period covered by the audit is identified, in which case all
reasonable out-of-pocket costs incurred by the auditor to perform
the audit will be paid promptly by TACTIC. Any unpaid amounts
discovered by such inspections or otherwise will be paid promptly
by TACTIC, with interest on such amounts from the date(s) such
amount(s) were due, at a rate equal to the lesser of the prime rate
reported by the Bank of America plus [***] per annum, or the
highest interest rate permitted under applicable New York
law.
ARTICLE
4
CONFIDENTIALITY
4.1 Confidential Information.
Except as expressly provided herein, the Parties agree that, for
the Term and for [***] thereafter, each of them shall keep
completely confidential and shall not publish or otherwise disclose
and shall not use for any purpose except for the purposes
contemplated by this Agreement any Confidential Information
furnished to it by the other Party. Each Party also agrees to cause
its Affiliates with access to any Confidential Information to
comply with all terms of this Agreement relating to such
Confidential Information and the treatment thereof, and each Party
shall remain primarily liable for any breach of any such provision
by any of its Affiliates.
4.2 Permitted Use and Disclosures.
The receiving Party may use or disclose Confidential Information to
the extent such use or disclosure is reasonably necessary in
complying with any applicable law, regulation or court order or in
conducting clinical trials or in connection with seeking, enforcing
or defending Patent Rights covering Program Inventions;
provided that if the
receiving Party is required to make any such disclosure of
Confidential Information, other than pursuant to a confidentiality
agreement, it will give reasonable advance notice to the disclosing
Party of such disclosure and will use its reasonable efforts to
secure confidential treatment of such Confidential Information
prior to its disclosure (whether through protective orders or
otherwise). Notwithstanding the foregoing, TACTIC may use and
disclose the Confidential Information of XOMA as reasonably
necessary in connection with the exercise of TACTIC’s rights
under Section 2.1(a) and otherwise with respect to the development
or exploitation of TACTIC Program Inventions and Patent Rights,
including, without limitation, to actual or prospective business
partners, investors, contractors, and sublicensees of TACTIC, in
each case, pursuant to a confidentiality agreement with terms
substantially consistent with, and at least as stringent as, those
set forth in this Agreement.
4.3 Confidential
Terms. Except as expressly
provided herein, each Party agrees not to disclose any terms of
this Agreement to any Third Party without the consent of the other
Party; provided
that disclosures may be made as
required by securities or other applicable laws, or as reasonably
necessary to actual or prospective business partners, investors and
Tactic's sublicensees under this Agreement pursuant to a
confidentiality agreement with terms at least as stringent as those
in this Agreement, or to a Party's accountants, attorneys and other
professional advisors owing a contractual or other duty of
confidentiality to such Party. Upon the reasonable written request
of the disclosing Party, the receiving Party shall promptly return
or destroy, and certify the same in writing, all Confidential
Information of the other Party; provided that the receiving Party may retain one (1) copy
of any such Confidential Information in its files for purposes of
maintaining appropriate records of its activities in connection
with this Agreement.
4.4 Use of Name. Neither Party
shall use the name or trademarks of the other Party, except to the
extent that a Party is permitted to use the Confidential
Information of the other Party or required to do so pursuant to
this Article 4, without the prior written consent of such other
Party, such consent not to be unreasonably withheld or
delayed.
4.5 Previous Agreements. The
parties acknowledge and understand that the Prior Agreement is now
void and superseded by this Agreement.
ARTICLE
5
PATENT RIGHTS
5.1 Prosecution and Maintenance of TACTIC
and XOMA Patent Rights. TACTIC shall have sole and exclusive
responsibility for Patent Prosecution of all TACTIC Patent Rights.
XOMA shall have sole and exclusive responsibility for Patent
Prosecution of XOMA Patent Rights. In each such case, the
non-prosecuting Party will provide the prosecuting Party with such
assistance and execute such documents as are reasonably necessary
to permit or continue such Patent Prosecution by the prosecuting
Party. The prosecuting Party shall bear all Patent Prosecution
expenses, including attorneys’ fees, incurred by such Party,
or by the other Party at the request of the prosecuting Party, in
the performance of Patent Prosecution.
5.2 Enforcement of TACTIC and XOMA Patent
Rights.
5.2.1 Notifications.
Each Party shall provide to the other Party copies of (a) any
written notices it receives from any Third Party regarding any
patent nullity action, declaratory judgment action, alleged
invalidity, unenforceability, infringement or non-infringement with
respect to or alleged misappropriation of intellectual property
with respect to Program Inventions, or the TACTIC Patent Rights,
and (b) any written allegations it receives from a Third Party that
the manufacture, use, sale, offer for sale or import of Product
infringes the Intellectual Property Rights of such Third Party, in
each case promptly following receipt thereof.
5.2.2 Infringement
Proceedings Against Third Parties. TACTIC shall have the
sole and exclusive right, but not the obligation, to institute and
direct legal proceedings against any Third Party believed to be
infringing the TACTIC Patent Rights. XOMA shall have the sole and
exclusive right, but not the obligation, to institute and direct
legal proceedings against any Third Party believed to be infringing
any XOMA Patent Rights. Each Party will bear all of its own costs,
including attorneys’ fees, relating to such legal
proceedings; provided that
the Party directing such legal proceedings shall bear the other
Party’s out-of-pocket expenses, including attorneys’
fees, incurred in complying with requests for cooperation made by
the directing Party. Without limiting the foregoing, any recovery
in connection with such suit or proceeding will be retained solely
by the Party directing such suit or proceeding.
5.3 Infringement Proceedings by Third
Parties. In the event that a Party receives written notice
that it or any of its Affiliates have been individually named as a
defendant in a legal proceeding by a Third Party alleging
infringement or misappropriation of a Third Party Intellectual
Property Right as a result of the manufacture, use, sale, offer for
sale or import of a Product or the XOMA Materials, such Party shall
promptly notify the other Party in writing. Such written notice
shall include a copy of any summons or complaint (or the equivalent
thereof) received regarding the foregoing.
5.4 Cooperation. Each Party hereby
agrees:
(a)
to cooperate in the
Patent Prosecution of any inventions within the Program Inventions
;
(b)
to take all
reasonable additional actions and execute such agreements,
instruments and documents as may be reasonably required to perfect
the other Party’s ownership interest in the XOMA Materials
and the Program Inventions in accordance with the intent of this
Agreement;
(c)
to provide comments
and suggestions, as reasonably requested by the other Party, with
respect to copies of drafts of material filings with or other
submissions to the U.S. Patent and Trademark Office or any foreign
counterpart (the “PTO”) relating to Patent
Prosecution, or the court or other tribunal relating to any
infringement claims against Third Parties under the TACTIC Patent
Rights or the defense of infringement or misappropriation claims by
Third Parties relating to Product;
(d)
to cooperate, as
reasonably necessary, with the other Party in gaining patent term
extensions, supplemental protection certificates or their
equivalents wherever applicable to TACTIC Patent
Rights;
5.5 No Other Technology Rights.
Except as otherwise provided in this Agreement, under no
circumstances shall a Party, as a result of this Agreement, obtain
any ownership interest or other right in any invention, discovery,
Composition of Matter or other technology, or in any other
Intellectual Property Right, of the other Party (including without
limitation those owned, controlled or developed by the other Party
at any time pursuant to this Agreement).
ARTICLE
6
REPRESENTATIONS AND WARRANTIES
6.1 Each Party hereby
represents and warrants to the other Party as follows:
6.1.1 Existence.
Such Party is duly organized, validly existing and in good standing
under the laws of the jurisdiction in which it is
organized.
6.1.2 Authorization
and Enforcement of Obligations. Such Party (a) has the
requisite power and authority and the legal right to enter into
this Agreement and to perform its obligations hereunder, and (b)
has taken all necessary action on its part to authorize the
execution and delivery of this Agreement and the performance of its
obligations hereunder. This Agreement has been duly executed and
delivered on behalf of such Party, and constitutes a legal, valid,
binding obligation, enforceable against such Party in accordance
with its terms.
6.1.3 Consents.
All necessary consents, approvals and authorizations of all
governmental authorities and other Persons required to be obtained
by such Party in connection with this Agreement have been
obtained.
6.1.4 No
Conflict. The execution and delivery of this Agreement and
the performance of such Party’s obligations hereunder (a) do
not conflict with or violate any requirement of applicable laws or
regulations and (b) do not conflict with, or constitute a default
under, any contractual obligation of such Party.
6.1.5 Additional Representations of
TACTIC. TACTIC further represents and warrants that (a)
TACTIC was formed upon the
dissolution of ATTENUON, such that TACTIC can be considered a
lawful successor of ATTENUON; (b) TACTIC is the successor and rightful owner of
certain IP rights developed by ATTENUON, including, but not limited
to, ATN-658; (c) TACTIC will have in place by the start of a
Phase I clinical trial general liability and product liability
insurance with respect to the research, development and
commercialization of the TACTIC Target, the TACTIC Antibody and
Human Engineered™ TACTIC Antibodies in such amounts as are
reasonable and customary in the biopharmaceutical industry and
covenants that it shall maintain appropriate general liability and
product liability insurance with respect thereto in such amounts
for so long as such research, development and commercialization
continues and thereafter for so long as is reasonable and customary
in the biopharmaceutical industry, and (d) TACTIC and its
Affiliates will have in place by the start of a Phase I clinical
trial appropriate policies and procedures intended to assure that
Confidential Information of XOMA, or other material non-public
information of XOMA, delivered or otherwise made available to
TACTIC will not be used by TACTIC or its officers, directors,
employees or agents in connection with any activity that would
constitute a criminal or civil violation of United States
securities laws and/or the regulations of the U.S. Securities and
Exchange Commission and, for so long as any provision of this
Agreement remains in effect, TACTIC covenants that it shall
maintain and enforce such policies and procedures and shall not
disclose any such Confidential Information of XOMA, or other
material non-public information of XOMA, to TACTIC's Affiliates who
do not then maintain and enforce such policies.
6.2 DISCLAIMER
OF WARRANTIES. EXCEPT AS OTHERWISE SET FORTH IN SECTION 6.1
OF THIS AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE ANTIBODIES AND
OTHER INFORMATION DELIVERED OR TO BE DELIVERED PURSUANT TO THE
PRIOR AGREEMENT OR THE PROGRAM INVENTIONS, INCLUDING WITHOUT
LIMITATION ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE OR NON-INFRINGEMENT OF THE PATENT RIGHTS OR
OTHER INTELLECTUAL PROPERTY RIGHTS OF ANY OTHER
PERSON.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
ARTICLE
7
TERM
AND TERMINATION
7.1 Term. Subject to
Sections 7.5 and 7.6 hereof, the term of this Agreement will
commence on the Effective Date and shall remain in full force and
effect until the expiration of all obligations of TACTIC under
Article 3, unless earlier terminated pursuant to 7.2 or 7.3 (the
period from the Effective Date through such expiration or earlier
termination being referred to herein as the “Term”). Upon such
expiration, TACTIC shall be deemed to have a fully paid-up license
to the rights set forth in Section 2.1.
7.2 Termination for Material
Breach. This Agreement may be terminated by the
non-breaching Party if the other Party is in breach of its material
obligations under this Agreement and after receiving notice
describing such breach in reasonable detail and requesting its cure
has not cured such breach within [***] days (in the case of a
payment breach with respect to any amount not being disputed in
good faith) or [***] days (in the case of a non-payment breach).
Notwithstanding the foregoing sentence of this Section 7.2: (a) if
such breach is cured or shown to be non-existent within the
aforesaid [***] days or [***] day period, the notice shall be
deemed automatically withdrawn and of no effect and the notifying
Party shall provide written notice to the breaching Party of the
withdrawal; and (b) without limiting the effects of the following
sentence of this Section 7.2, in the event of a good faith dispute
with respect to the existence of a material breach, the [***] day
or [***] day cure period shall be tolled until such time as the
dispute is resolved pursuant to Article 10. The Parties acknowledge
that any failure by XOMA to provide a Human EngineeredTM
TACTIC Antibody that meets the Success Criteria or that meets any
other technical objectives shall not in and of itself be deemed a
material breach of this Agreement.
7.3 Termination For Convenience.
This Agreement may be terminated without cause at any time upon
sixty (60) days prior written notice by TACTIC to XOMA, at
TACTIC’s discretion.
7.4 Contested Validity.
If TACTIC, a TACTIC successor, a TACTIC sublicensee of the rights
granted hereunder, or a person or entity Controlled by any of the
preceding entities, intends to challenge the validity or
enforceability of any of the XOMA Patent Rights, whether through a
declaratory judgment action, opposition, post-grant proceeding or
otherwise, then such entity shall: (a) [***] and (b)
[***].
7.5 Effect of
Termination.
7.5.1 Termination
of this Agreement shall not release either Party hereto from any
liability (including, without limitation, any payment obligation)
which, at the time of such termination, has already accrued to the
other Party or which is attributable to a period prior to such
termination nor preclude either Party from pursuing any rights and
remedies it may have hereunder or at law or in equity with respect
to any breach of this Agreement.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
7.5.2 Upon
any termination of this Agreement, TACTIC and XOMA shall (a)
promptly return to the other Party all Confidential Information
received from the other Party (except that each Party may retain
one copy for its files solely for the purpose of determining its
rights and obligations hereunder) or (b) destroy all such
Confidential Information with the other Party’s
consent.
Notwithstanding the survival of Article 2 as set
forth in Section 7.6 below, (a) the rights and licenses of TACTIC
under Section 2.1 shall terminate and be of no further force or
effect, and (b) TACTIC (on behalf of itself, its Affiliates, and
its successors and assigns) shall not (i) practice or exercise any
invention claimed in, or license, authorize or otherwise allow any
Third Party to practice or exercise such invention claimed in, any
XOMA Patent Rights or (ii) except as reasonably necessary to comply
with applicable law, regulation or court order as provided in
Section 4.2, use or disclose, or authorize or otherwise
allow the use or disclosure of, the XOMA Deliverables, upon (A)
termination of this Agreement by TACTIC pursuant to Section 7.3;
(B) termination of this Agreement by XOMA pursuant to Section 7.2
based on TACTIC 's failure to pay any amount due under Article 3
hereof and not being disputed in good faith; or (C) TACTIC 's
failure to pay a sum that had been disputed in good faith by the
Parties (together with all accrued interest due thereon under this
Agreement) within [***] days after a final determination by an
arbitrator pursuant to Section 9.3 that such amount is due under
this Agreement..
7.5.3 Nothing
herein shall in any way limit or restrict XOMA’s ability to
seek and obtain money damages, injunctive relief or any other
remedy, whether at law or in equity, that may be available from or
awarded by a court of competent jurisdiction based on, arising out
of or relating to any breach of this Agreement by
TACTIC.
7.5.4 Notwithstanding
anything to the contrary herein, XOMA shall not, at any time during
the Term or thereafter, use, or authorize or otherwise allow the
use of any Human Engineered™ TACTIC Antibody.
7.6 Survival. Sections 3.5, 7.5 and
7.6, and Articles 1, 2 (including, subject to Section 7.5.2, all
rights and licenses therein), 4, 5, 6, 8, 9, 10 and 11 of this
Agreement shall survive any termination hereof.
ARTICLE
8
INDEMNITY
8.1 Indemnity.
8.1.1 By
XOMA. XOMA shall indemnify and hold TACTIC harmless, and
hereby forever releases and discharges TACTIC, from and against all
losses, liabilities, damages and expenses (including reasonable
attorneys’ fees and costs) resulting from all claims,
demands, actions and other
proceedings by any Third Party to the extent arising from (a) the
breach of any representation, warranty or covenant
of XOMA under this or the Prior Agreement, (b) a claim that the processes or
technologies used by XOMA in the performance of its activities
under the Prior Agreement (other than any such claim with respect
to the CMV promoter), including, without limitation, Human
Engineering™ activities, infringe the Intellectual Property
Rights of such Third Party (other than Intellectual Property Rights
to the TACTIC Target, any Antibody to the TACTIC Target (including
any Product), or (c) the gross negligence or willful
misconduct of XOMA, its Affiliates or sublicensees in the performance of its obligations, and its
permitted activities, under this or the Prior Agreement; in each case except to the
extent arising from the gross negligence or willful misconduct of
ATTENUON or TACTIC
8.1.2 By
TACTIC. TACTIC shall indemnify and hold XOMA harmless, and
hereby forever releases and discharges XOMA, from and against all
losses, liabilities, damages and expenses (including reasonable
attorneys’ fees and costs) resulting from all claims,
demands, actions and other proceedings by any Third Party to the
extent arising from (a) the breach of any representation, warranty
or covenant of ATTENUON or TACTIC under this or the Prior
Agreement, (b) excluding losses,
liabilities, damages and expenses covered by XOMA pursuant to
Section 8.1.1(b), the making, having made, using, offering
for sale, selling or importing of any Antibody to the TACTIC Target
(including without limitation any Human Engineered™ TACTIC
Antibody or Product) by ATTENUON, TACTIC, its Affiliates or
licensees or by XOMA pursuant to the terms of this Agreement, (c)
the use of the TACTIC Target or the
ATTENUON Deliverables by XOMA pursuant to the terms of the Prior
Agreement or (d) the gross negligence or willful misconduct
of ATTENUON, TACTIC, their Affiliates or licensees in the
performance of its obligations, and its permitted activities, under
this or the Prior Agreement; in each case except to the extent
arising from (i) a claim that the
processes used by XOMA in the performance of Human
Engineering™ infringe the Intellectual Property Rights of
such Third Party (other than Intellectual Property Rights to the
TACTIC Target, any Antibody to the TACTIC Target, or (ii)
the gross negligence or willful misconduct of XOMA.
8.2 Procedure. A Party (the
“Indemnitee”) that intends
to claim indemnification under this Article 8 shall promptly notify
the other Party (the “Indemnitor”) of any
claim, demand, action or other proceeding for which the Indemnitee
intends to claim such indemnification. The Indemnitor shall have
the right to participate in, and to the extent the Indemnitor so
desires, to assume the defense thereof with counsel selected by the
Indemnitor; provided,
however, that the Indemnitee shall have the right to retain
its own counsel, with the fees and expenses to be paid by the
Indemnitor, if representation of the Indemnitee by the counsel
retained by the Indemnitor would be inappropriate due to actual or
potential differing interests between the Indemnitee and any other
Party represented by such counsel in such proceeding. The indemnity
obligations under this Article 8 shall not apply to amounts paid in
settlement of any claim, demand, action or other proceeding if such
settlement is effected without the prior express written consent of
the Indemnitor, which consent shall not be unreasonably withheld or
delayed. The failure to deliver notice to the Indemnitor within a
reasonable time after notice of any such claim or demand, or the
commencement of any such action or other proceeding, if prejudicial
to its ability to defend such claim, demand, action or other
proceeding, shall relieve such Indemnitor of any liability to the
Indemnitee under this Article 8 with respect thereto, but the
omission so to deliver notice to the Indemnitor shall not relieve
it of any liability that it may have to the Indemnitee otherwise
than under this Article 8. The Indemnitor may not settle or
otherwise consent to an adverse judgment in any such claim, demand,
action or other proceeding that diminishes the rights or interests
of the Indemnitee without the prior express written consent of the
Indemnitee, which consent shall not be unreasonably withheld or
delayed. The Indemnitee, its employees and agents shall reasonably
cooperate with the Indemnitor and its legal representatives in the
investigation and defense of any claim, demand, action or other
proceeding covered by this Article 8.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
ARTICLE
9
DISPUTE RESOLUTION
9.1 Attempts to Amicably Resolve
Disputes. If any dispute, controversy or claim is initiated
by either Party arising out of, resulting from or relating in any
way to this Agreement, the performance by either Party of its
obligations under this Agreement or the subject matter of this
Agreement (a “Dispute”), then the
Parties shall attempt to resolve such Dispute as follows. The Party
initiating the Dispute shall give written notice to the other
Party specifying in
reasonably specific detail the basis for such Dispute. Following
receipt of such notice, the Parties shall refer the Dispute to
their respective chief executive officers (or their designees) for
resolution. The Parties’ respective chief executive officers
(or their designees) shall meet (in person, by videoconference or
by telephone as mutually agreed upon by the Parties) to attempt to
reach a mutually acceptable resolution of the Dispute.
9.2 Mediation. Subject to Section
9.4, if a Dispute is not resolved in the manner set forth in
Section 9.1 within [***]
days after receipt of notice under Section 9.1, the Parties agree
to try in good faith to resolve such dispute in an expeditious
manner by mediation administered by the CPR Institute for Dispute
Resolution or its successor organization (“CPR”) in accordance with
its mediation procedure. The mediation proceeding shall be
conducted at the location of the Party not originally requesting
the resolution of the Dispute. The Parties agree that they shall
share equally the cost of the mediation filing and hearing fees and
the cost of the mediator. Each Party must bear its own
attorney’s fees and associated costs and expenses. For the
avoidance of doubt, nothing in connection with such mediation shall
be binding on either Party, except for the provisions regarding
sharing of costs set forth in this Section 9.2.
9.3 Arbitration.
9.3.1 Subject
to Section 9.4, any Dispute that is not resolved in the manner set
forth in Section 9.2 within [***] days after referral to
mediation under Section 9.2 shall be finally resolved by binding
arbitration, as set forth in this Section 9.3.
9.3.2 Whenever
a Party shall decide to institute arbitration proceedings, it shall
give written notice to that effect to the other Party. Any such
arbitration shall be conducted under the Commercial Arbitration
Rules of the American Arbitration Association by a panel of one (1)
arbitrator appointed in accordance with such rules to be appointed
within [***] days of such notice. Such arbitrator shall have no
less than [***] of experience directly in the field of
biotechnology licensing, and shall be available to serve under the
geographic and time constraints set forth herein and in Section
9.3.3. Any such arbitration shall be held in New York, New
York.
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
9.3.3 The
arbitrator shall be jointly instructed by the Parties in writing to
set a schedule that will enable them to complete all proceedings
and render their award within [***] days from the date of
appointment of the arbitrator in accordance with Section 9.3.2. For
good cause shown, the arbitrator may extend this schedule for up
to, but in no event more than, [***] additional days. The failure
of the arbitrator to render a final award within the foregoing time
frame shall not give rise to a jurisdictional defect, but this fact
shall not be disclosed to the arbitrators until after the
expiration of such [***] day period. The arbitrator shall have the
authority to grant specific performance in such equitable manner as
they determine. The prevailing Party in any such arbitration (as
determined by the arbitrator) shall be entitled to recover its
reasonable attorneys’ fees and expenses incurred in
connection with such arbitration. Judgment upon the award so
rendered may be entered in any court having jurisdiction as
provided in Section 9.5 or application may be made to such court
for judicial acceptance of any award and an order of enforcement,
as the case may be.
9.3.4 In
no event shall a demand for arbitration be made after the date when
institution of a legal or equitable proceeding based upon such
claim, dispute or other matter in question would be barred by the
applicable statute of limitations.
9.3.5 Notwithstanding
the foregoing, either Party shall have the right, without waiving
any right or remedy available to such Party under this Agreement or
otherwise, to seek and obtain from any court of competent
jurisdiction any interim or provisional relief that is necessary or
desirable to protect the rights or property of such Party, pending,
the selection of the arbitrators hereunder or pending the
arbitrators’ determination of any dispute, controversy or
claim hereunder.
9.4 Disputes Regarding Patents.
Notwithstanding any provision hereof to the contrary, any Dispute
relating to the determination of ownership, validity,
enforceability or infringement by the other Party of a
Party’s patents shall, if not resolved in the manner set
forth in Section 9.1 within [***] days after receipt of
notice under Section 9.1, be submitted exclusively to the federal
courts located in New York, New York , and the Parties hereby
consent to the jurisdiction and venue of such court.
9.5 Venue;
Jurisdiction.
9.5.1 Any
action or proceeding brought by either Party seeking to enforce any
provision of, or based on any right arising out of, this Agreement
must be brought against either Party in the courts of the State of
New York. Each Party (i) hereby irrevocably submits to the
jurisdiction of the state courts of the State of New York and to
the jurisdiction of any United States District Court in the State
of New York , for the purpose of any suit, action, or other
proceeding arising out of or based upon this Agreement or the
subject matter hereof brought by any Party or its successors or
assigns, (ii) hereby waives, and agrees not to assert, by way of
motion, as a defense, or otherwise, in any such suit, action, or
proceeding, any claim that it is not subject personally to the
jurisdiction of the above-named courts, that its property is exempt
or immune from attachment or execution, that the suit, action or
proceeding is brought in an inconvenient forum, that the venue of
the suit, action, or proceeding is improper or that this Agreement
or the subject matter hereof may not be enforced in or by such
court, and (iii) hereby waives and agrees not to seek any review by
any court of any other jurisdiction that may be called upon to
grant an enforcement of the judgment of any such Illinois state or
federal court.
9.5.2 Process
in any action or proceeding seeking to enforce any provision of, or
based on any right arising out of, this Agreement may be served on
any Party anywhere in the world. Each Party consents to service of
process by registered mail at the address to which notices are to
be given pursuant to Section 11.4. Nothing herein shall affect the
right of a Party to serve process in any other manner permitted by
applicable law. Each Party further agrees that final judgment
against it in any such action or proceeding arising out of or
relating to this Agreement shall be conclusive and may be enforced
in any other jurisdiction within or outside the United States of
America by suit on the judgment, a certified or exemplified copy of
which shall be conclusive evidence of the fact and of the amount of
its liability.
9.5.3 Each
Party agrees that it shall not, and that it shall instruct those in
its control not to, take any action to frustrate or prevent the
enforcement of any writ, decree, final judgment, award (arbitral or
otherwise) or order entered against it with respect to this
Agreement, and shall agree to be bound thereby as if issued or
executed by a competent judicial tribunal having personal
jurisdiction situated in its country of residence or
domicile.
ARTICLE
10
SUCCESSORS AND ASSIGNS
10.1 Limited
Right to Assign. Neither TACTIC nor XOMA may transfer or
assign this Agreement or any of its rights hereunder without the
written consent of the other;
provided,
however, that (a) XOMA may,
without such consent, assign this Agreement and its rights and
obligations hereunder to a Third Party only in connection with the
transfer or sale of all or substantially all of its business
relating to Human Engineering™, or in the event of a merger,
consolidation or other transaction resulting in a change in control
of XOMA, and (b) TACTIC may, without such consent, assign this
Agreement and its rights and obligations hereunder to a Third Party
only in connection with the transfer or sale of a Human
Engineered™ version of a TACTIC Antibody or all or
substantially all of its assets relating to its anti-uPAR
monoclonal antibodies or in the event of a merger, consolidation or
other transaction resulting in a change in control of TACTIC. Any
attempted transfer or assignment in violation of this Section 10.1
shall be void. Nothing herein shall prohibit any transfer or
assignment by either TACTIC or XOMA to or among any of their
respective Affiliates.
10.2 Permitted
Successors and Assigns. This Agreement shall be binding upon
and inure to the benefit of the Parties and their successors and
assigns as permitted in Section 10.1.
ARTICLE
11
MISCELLANEOUS
11.1 Governing
Law. This Agreement and any dispute arising from the
performance or breach hereof shall be governed by and construed and
enforced in accordance with the laws of the State of New York,
without reference to conflicts of laws principles.
[***] = Confidential Information has
been omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
11.2 Bankruptcy.
All rights and licenses granted under or pursuant to this Agreement
by one Party to the other are, for all purposes of Section 365(n)
of Title XI of the United States Code (“Title XI”), licenses of
rights to “intellectual property” as defined in Title
XI. During the Term each Party shall create and maintain current
copies to the extent practicable of all such intellectual property.
If a bankruptcy proceeding is commenced by or against one Party
under Title XI, the other Party shall be entitled to a copy of any
and all such intellectual property and all embodiments of such
intellectual property, and the same, if not in the possession of
such other Party, shall be promptly delivered to it (a) upon such
Party’s written request following the commencement of such
bankruptcy proceeding, unless the Party subject to such bankruptcy
proceeding, or its trustee or receiver, elects within [***] days to
continue to perform all of its obligations under this Agreement, or
(b) if not delivered as provided under clause (a) above, upon such
other Party’s request following the rejection of this
Agreement by or on behalf of the Party subject to such bankruptcy
proceeding. If a Party has taken possession of all applicable
embodiments of the intellectual property of the other Party
pursuant to this Section 11.2 and the trustee in bankruptcy of the
other Party does not reject this Agreement, the Party in possession
of such intellectual property shall return such embodiments upon
request. If a Party seeks or involuntarily is placed under Title XI
and the trustee rejects this Agreement as contemplated under 11
U.S.C. 365(n)(1), the other Party hereby elects, pursuant to
Section 365(n) of Title XI, to retain all rights granted to it
under this Agreement to the extent permitted by law.
11.3 Waiver.
No waiver of any rights shall be effective unless consented to in
writing by the Party to be charged and the waiver of any breach or
default shall not constitute a waiver of any other right hereunder
or any subsequent breach or default.
11.4 Notices.
All invoices, notices, requests and other communications hereunder
shall be in writing and shall be delivered or sent in each case to
the respective address specified below, or such other address as
may be specified in writing to the other Party hereto, and shall be
effective on receipt.
If to
TACTIC:
Tactic Pharma,
LLC
[***]
Attention: Xxxxxx Xxxxx,
CSO.
With a copy
to:
Xxxxx &
Xxxxxxxxx, LLP 0000 Xxxx Xxxxxx
Xxxx
Xxxxxx – 00xx Xxxxx
Xxxxxxxxxxxx, XX
00000
Attention: Tactic
Pharma Legal Counsel, Xx. Xxxxxxx X. Rosedale
If to
XOMA:
XOMA (US)
LLC
0000 Xxxxxxx
Xxxxxx
Xxxxxxxx, Xxxxxxxxxx
00000
Attention: Legal
Department
with a copy
to:
XOMA (US)
LLC
0000 Xxxxxxx
Xxxxxx
Xxxxxxxx, Xxxxxxxxxx
00000
Attention: Legal
Department
11.5 Independent
Contractors. The Parties are independent contractors under
this Agreement. Nothing contained in this Agreement is intended nor
is to be construed so as to constitute TACTIC or XOMA as partners
or joint venturers with respect to this Agreement. Except as
expressly provided for by this Agreement, no Party shall have any
express or implied right or authority to assume or create any
obligations on behalf of or in the name of any other Party or to
bind any other Party to any other contract, agreement or
undertaking with any Third Party.
11.6 Force
Majeure. A Party shall neither be held liable or responsible
to the other Party, nor be deemed to have defaulted under or
breached this Agreement, for failure or delay in fulfilling or
performing any obligation under this Agreement (other than an
obligation for the payment of money) to the extent, and for so long
as, such failure or delay is caused by or results from causes
beyond the reasonable control of such Party, including but not
limited to fire, floods, embargoes, war, acts of war (whether war
be declared or not), insurrections, riots, civil commotions,
strikes, lockouts or other labor disturbances, acts of God or acts,
omissions or delays in acting by any governmental authority or
other Party.
11.7 Other
Activities. Except as otherwise expressly provided in this
Agreement, nothing in this Agreement shall preclude either Party
from conducting other programs (either for its own benefit or with
or for the benefit of any other Person) to conduct research, or to
develop or commercialize products or services, for use in any
field.
11.8 Headings.
The captions to the several sections hereof are not a part of this
Agreement, but are included merely for convenience of reference
only and shall not affect its meaning or
interpretation.
11.9 Entire
Agreement; Amendment.
11.9.1 This
Agreement constitutes the entire and exclusive agreement between
the Parties with respect to the subject matter hereof and
supersedes and cancels all previous discussions, agreements,
representations, commitments and writing in respect
thereof.
11.9.2 No
amendment or addition to this Agreement shall be effective unless
reduced to writing and executed by the authorized representatives
of the Parties.
11.10 Illegality;
Unenforceability. In the event that any provision of this
Agreement shall be determined to be illegal or unenforceable, that
provision will be limited or eliminated to the minimum extent
necessary so that this Agreement shall otherwise remain in full
force and effect and enforceable.
11.11 Counterparts.
This Agreement may be executed in counterparts, each of which shall
be deemed to be an original and together shall be deemed to be one
and the same agreement.
[SIGNATURE PAGE
FOLLOWS ]
IN
WITNESS WHEREOF, the Parties have executed this Agreement as of the
date first set forth above.
|
TACTIC PHARMA,
LLC
By: /s/ Xxxxxx
Xxxxx
Xxxxxx
Xxxxx
Chief Scientific Officer
|
XOMA
(US) LLC
By: /s/ Xxxxx
Xxxx
Xxxxx X. Xxxx
VP, Business Development & Program
Leadership
|
[***] = Confidential Information has been
omitted and filed separately with the Securities and Exchange
Commission.
Confidential
treatment has been approved with respect to the omitted
information, pursuant to an Order dated January 8,
2018.
Schedule
1.16
Human Engineering™ Patent Rights
Title:
[***]
Inventors: Studnicka,
Little, Fishwild, Xxxx
Based
on [***].
|
COUNTRY
|
SERIAL NO.
|
PATENT NO.
|
EXPIRES
|
|
[***]
|
[***]
|
[***]
|
[***]
|
[***]
-1-
