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EXHIBIT 10.12
LICENSE AGREEMENT
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This License Agreement (the "Agreement") is entered into and made effective
this 12th day of April, 1999, (the "Effective Date") between UNIVERSITY OF MIAMI
and its School of Medicine, whose principal place of business is at 0000 X.X.
00xx Xxxxxx, Xxxxx, Xxxxxxx 00000 (hereinafter referred to as "LICENSOR") and
ANTIGENICS LLC, a Delaware limited liability company, whose principal place of
business is at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx (hereinafter referred to as
"LICENSEE").
WITNESSETH
WHEREAS, LICENSOR is the sole owner of the Inventions described and
claimed in U.S. patent application serial number [
]*; and,
WHEREAS, LICENSOR wishes to obtain United States patents, and foreign
counterparts, and to have the Inventions commercially marketed; and,
WHEREAS, LICENSOR warrants that it possesses the right to license the
aforestated patents to be obtained and the right to market the Products; and,
WHEREAS, LICENSOR wishes the LICENSEE to obtain the subject patent and
to market the Products; and,
WHEREAS, LICENSEE desires to acquire the exclusive license in the
Territory, with the right to sublicense, under the Patent Rights (as defined in
Paragraph 1.3 below) for the purposes of making, having made, using, selling,
importing and offering for sale the Products and practicing the Inventions
disclosed and claimed in the Patent Rights;
NOW THEREFORE, For these and other valuable considerations, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. DEFINITIONS:
1.1 "Affiliate" shall mean any corporation or other business entity
controlled by, controlling or under common control with LICENSOR or LICENSEE.
For this purpose, "control" shall mean direct or indirect beneficial ownership
of at least a fifty percent (50%) of the voting stock of, or at least a fifty
percent (50%) interest in the income of such corporation or other business
entity, or such other relationship as in fact, constitutes actual control.
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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1.2 "Sublicensee" as used in this Agreement shall mean any third
party to whom LICENSEE has granted a license to make, have made, use, sell,
import or offer for sale the Product under the Patent Rights, provided said
third party has agreed in writing with LICENSEE to accept the conditions and
restrictions agreed to by LICENSEE in Sections 6 (Indemnification), 13 (Marking
and Standards) and 17 (Certificate of Insurance) of this Agreement.
1.3 "Patent Rights" shall mean and collectively include United States
patent application serial number[
]* and United States patent application serial
number [ ]*
and the inventions therein; and all applications claiming priority to any of the
foregoing applications under 35 U.S.C. ss. 119(e), and all continuations,
continuations-in-part, divisions and renewals of any of such applications; all
foreign counterparts of the foregoing; and all United States and foreign patents
which may be granted thereon, and all reissues and extensions thereof.
1.4 "Products" shall mean and collectively include any product which:
(a) is covered by an issued, unexpired claim or a pending claim
contained in the Patent Rights;
(b) is manufactured by using a process which is covered by an
issued, unexpired claim or a pending claim contained in the
Patent Rights.
1.5 "Processes" shall mean and collectively include any process which
is covered by an issued, unexpired claim or pending claim contained in the
Patent Rights.
1.6 "Net Sales" shall mean the sum of all amounts invoiced on account
of sale of Products by LICENSEE and its Affiliates to non-affiliated third party
purchasers of Products, if invoiced separately, (a) cash discounts to purchasers
allowed in amounts customary in the trade, (b) amounts for transportation or
shipping charges to purchasers, (c) credits for returns, allowances or trades,
and (d) taxes and duties levied on the sale of Products, whether absorbed by
Licensee or pa d by the purchaser. In the event a Product is sold in combination
with another active component(s), Net Sales, for purposes of determining
royalties on the combination will be calculated by multiplying Net Sales of the
combination by the fraction A/(A+B), in which A is the invoiced price of the
Product if sold separately, and B is the invoiced price of the other active
component(s) in the combination if sold separately. If the Products and the
other active component(s) in the combination are not sold separately, then
royalties on the combination will be calculated by the same method, in which A
is the direct cost of manufacturing the Product and B
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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is the direct cost of manufacturing the other active component(s). However, in
no case shall the calculated fraction A/(A+B) be less than [ ]*.
1.7 "Territory" shall mean the entire world.
1.8 "Inventions" shall mean the inventions disclosed and claimed in
United States patent application serial number [
]* and U.S. patent application serial number [
]*.
1.9 "Confidential Information" shall mean all information related to
the Patent Rights or to the business, plans and/or technology of LICENSEE which
is disclosed by one party to the other, to the extent that such information, as
of the date of disclosure, is not (a) known to the receiving party; (b)
disclosed in published literature; (c) generally available to industry; or (d)
obtained by the receiving party from a third party without binder of secrecy,
PROVIDED, HOWEVER, that such third party has no confidentiality obligations to
the disclosing party or to any of its Affiliates relating to the disclosed
information.
1.10 "Net Royalties" shall mean the net royalties on all Net Sales of
Products actually received by LICENSEE or its Affiliate(s), including the
receipt of lump sums as advances against royalties, from non-affiliated
licensees in connection with the licensing of any Patent Rights.
2. GRANT:
2.1 In consideration for payment of royalties and other good and
valuable consideration, LICENSOR hereby grants to LICENSEE and its Affiliates
the exclusive license in the Territory with the right to grant sublicenses to
others, under the Patent Rights, to make, have made, use, sell, import and offer
for sale Products and to practice Processes.
2.2 LICENSOR grants to the LICENSEE the authority to make application
for Patents, in the name of the LICENSOR; all expenses of obtaining and
maintaining said patents obtained and maintained by LICENSEE shall be paid by
LICENSEE.
2.3 LICENSOR retains the non-exclusive right to use the Inventions
solely for its own internal, non-commercial research purposes. LICENSOR shall be
permitted to transfer Products only to academic researchers at non-profit
institutions pursuant to a written Material Transfer Agreement whereby the
researcher and his institution agree: (a) to use the transferred Product only
for the researcher's own, noncommercial research purposes and not for research
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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sponsored by a third party to whom an obligation to grant commercial rights
exists, and (b) not to further transfer the Product.
3. TERM:
The term of this Agreement shall be until the later of (a) 15 years
from the Effective Date of this Agreement, and (b) the expiration of the last to
expire of all patents within the Patent Rights.
4. UNITED STATES LAWS:
4.1 This Agreement is subject to all of the terms and conditions of
Public Law 96-517 as amended, and LICENSEE agrees to take all action necessary
on its part as LICENSEE to enable LICENSOR to satisfy its obligation thereunder,
relating to Inventions.
4.2 It is understood that LICENSOR is subject to United States laws
and regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 199), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. LICENSOR neither represents that a license shall not be required nor
that, if required, it shall be issued.
5. PATENT PROTECTION AND INFRINGEMENT:
5.1 LICENSEE, during the term of this Agreement, is responsible for
the filing, payment and the prosecution of all patents and applications and
maintenance fees covered by this Agreement. If LICENSEE elects not to file or
prosecute such an application (except where such application is abandoned in
favor of prosecuting the invention claimed therein in a related application) or
maintain such patent, LICENSEE shall so notify the LICENSOR at least forty-five
(45) days in advance of the relevant deadline, in which event the LICENSOR shall
have the right to file or prosecute such applications and to maintain such
patent entirely at its own expense and such application or patent shall no
longer be deemed included within the Patent Rights.
5.2 Each party shall promptly notify the other party in writing of
any third party claim of patent infringement of which it has received notice and
which may be asserted against LICENSEE or LICENSOR, its Affiliates and any
Sublicensees because of the manufacture, use, promotion and sale of Product by
LICENSEE, its Affiliates or Sublicensees.
5.3 LICENSEE will defend, indemnify and hold harmless LICENSOR, its
Trustees, officers, directors, employees and its Affiliates against any and all
judgments and damages arising from any and all third party claims of patent
infringement which may be asserted against LICENSOR, and its Affiliates because
of the manufacture, use, promotion and sale of Products by LICENSEE or its
Affiliates or Sublicensees. Except as provided herein below, LICENSEE will bear
all costs and expenses incurred in connection with the defense of any such
claims or as a result of any settlement made or judgment rendered on the basis
of such claims.
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LICENSOR shall have no further liability to LICENSEE for any loss or damages
LICENSEE may incur as a result of any invalidity of LICENSOR'S Patent Rights
except where due to gross negligence or intentional misconduct of LICENSOR.
LICENSEE shall defend and control negotiation of settlement of any such claim
with counsel of LICENSEE'S choosing. LICENSOR agrees to cooperate fully in the
defense of any such claim and may participate in the defense with counsel of
LICENSOR'S choosing, such separate counsel to be at LICENSOR'S expense. LICENSEE
shall have no liability to defend any such claim unless it receives written
notification of such claim by LICENSOR promptly after LICENSOR has actual
knowledge of such claim, is given exclusive control of the defense and
settlement thereof, and is provided with all reasonable assistance in connection
therewith by LICENSOR. Notwithstanding the foregoing, any such settlement that
adversely affects the validity or scope of the Patent Rights will require the
approval of LICENSOR, which approval will not be unreasonably withheld.
5.4 Upon learning of any infringement of Patent Rights by third
parties in any country, LICENSEE and LICENSOR will promptly inform each other,
as the case may be, in writing of that fact and will supply the other with any
available evidence pertaining to the infringement. LICENSEE at its own expense
shall have the right but not the obligation to take whatever steps are necessary
to stop the infringement at its expense and recover damages therefore, and will
be entitled to retain all damages so recovered and LICENSOR will cooperate fully
in connection therewith. In the event that LICENSEE elects not to take whatever
steps are necessary to stop the infringement, LICENSEE will so notify LICENSOR,
and upon such notification and in the event that LICENSEE is not at the time a
party to a litigation involving a claim of infringement of the Patent Rights,
LICENSOR shall have the right to bring suit against the infringer, and LICENSEE
will cooperate fully in connection therewith. In the event that LICENSOR and
LICENSEE mutually agree to bring suit, costs and expenses shall be shared
equally and any recovery in excess of expenses shall be shared equally; the
parties agree to cooperate fully with each other in connection therewith.
5.4.1 ROYALTY PAYMENTS DURING ENFORCEMENT OF PATENT RIGHTS. In
the event that LICENSEE shall undertake the enforcement and/or defense
of the Patent Rights by litigator either solely or jointly with the
LICENSOR as provided above, LICENSEE may withhold up to[ ]* of the
royalties otherwise thereafter due LICENSOR hereunder and apply the
same toward reimbursement of its expenses, including reasonable
attorneys' fees, in connection therewith, PROVIDED, HOWEVER that
royalties due LICENSOR pursuant to Section 8.1(a) hereof shall not be
reduced to less than [ ]* on Net Sales. Any recovery of damages by
LICENSEE for any such suit, as provided above, shall be applied first
in satisfaction of any unreimbursed expenses and legal fees of
LICENSEE relating to the suit, and next toward the reimbursement of
LICENSOR for any royalties past due or withheld. The balance remaining
from any such recovery shall be retained
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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in its entirety by LICENSEE except where as provided hereinabove,
LICENSOR and LICENSEE have mutually brought suit.
5.5 LICENSOR shall have no responsibility with respect to LICENSEE'S
own trademarks and tradename.
6. INDEMNIFICATION:
6.1 Except as provided in Paragraphs 5.4 and 5.4.1, LICENSEE agrees
to release, indemnify and hold harmless the LICENSOR, its Trustees, officers,
faculty, employees and students against any and all losses, expenses, claims,
actions, lawsuits and judgments thereon (including attorney's fees through the
appellate levels) which may be brought against LICENSOR, its Trustees, officers,
faculty, employees or students as a result of or arising out of any act of
negligence or willful misconduct of LICENSEE, its agents, or employees relating
to this Agreement, or arising out of the use, production, manufacture, sale,
lease, consumption or advertisement by LICENSEE of Products. LICENSEE shall
defend and control negotiation of settlement of any such claim with counsel of
LICENSEE'S choosing. LICENSOR agrees to cooperate fully in the defense of any
such clam and may participate in the defense with counsel of LICENSOR'S
choosing, such separate counsel to e at LICENSOR'S expense. LICENSEE shall have
no liability to defend any such claim unless it receives written notification of
such claim by LICENSOR promptly after LICENSOR has actual knowledge of such
claim, is given exclusive control of the defense and settlement thereof, and is
provided with all reasonable assistance in connection therewith by LICENSOR.
Notwithstanding the foregoing, any such settlement that adversely affects the
validity or scope of the Patent Rights will require the approval of LICENSOR,
which approval will not be unreasonably withheld.
7. WARRANTIES:
EXCEPT AS EXPRESSLY SET FORTH HEREIN LICENSOR MAKES NO WARRANTIES,
EXPRESS OR IMPLIED, AND HEREBY DISCLAIMS ALL SUCH WARRANTIES, AS TO ANY MATTER
WHATSOEVER, INCLUDING, WITHOUT LIMITATION, THE CONDITION OF ANY INVENTIONS OR
PRODUCTS, WHETHER TANGIBLE OR INTANGIBLE, LICENSED UNDER THIS AGREEMENT; OR THE
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE INVENTIONS OR
PRODUCTS; OR THAT THE USE OF THE PRODUCTS WILL NOT INFRINGE ANY PATENT,
COPYRIGHTS, TRADEMARKS, OR OTHER RIGHTS. LICENSOR SHALL NOT BE LIABLE FOR ANY
DIRECT, CONSEQUENTIAL, OR OTHER DAMAGES SUFFERED BY ANY LICENSEE OR ANY THIRD
PARTIES RESULTING FROM THE USE, PRODUCTION, MANUFACTURE, SALE, LEASE,
CONSUMPTION, OR ADVERTISEMENT OF THE PRODUCTS BY LICENSEE.
The provisions of this Section shall continue beyond the termination
of this Agreement.
8. ROYALTIES:
8.1 In consideration of the license herein granted, LICENSEE shall
pay royalties to LICENSOR as follows:
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(a) For the rights and privileges granted under this Agreement,
LICENSEE shall pay to LICENSOR a royalty of [ ]*on Net
Sales of Products which at the time and place of
manufacture, embody or are made in accordance with one or
more claims of any valid, issued, unexpired patent or
pending patent application within the Patent Rights, subject
to any credits permitted hereunder. Notwithstanding the
foregoing, in the event that claim(s) in such pending
application do not issue in a patent in the respective
country within five (5) years after the filing date of such
pending application in such country, LICENSEE'S obligation
to pay LICENSOR such royalties on account of such claim(s)
shall cease, until such time as such claim(s) issue.
(b) SHARE OF NET ROYALTY INCOME. In the event that LICENSEE
grants licenses to any non-affiliated third parties under
the Patent Rights at any time during the term of this
Agreement, then for each sublicense LICENSEE agrees to pay
LICENSOR additional royalties at the rate of [ ]* on
all Net Royalties collected by LICENSEE and its Affiliate(s)
(including dollar equivalents in foreign funds), subject to
any credits permitted hereunder.
8.1.1 Offset Against Royalties.
(a) In the event that LICENSEE or its Affiliate(s) either:
(i) manufactures, uses, or sells a Product which
contains or is combined with another product which is
covered by inventions or technology duly licensed to
LICENSEE by a third party, or
(ii) cannot manufacture or sell a particular Product
without infringing the patent of a third party, LICENSEE
shall have tee right to negotiate with the third party for a
license under the third party's patent rights; and
then LICENSEE shall have the right to reduce LICENSEE'S
royalty payments to LICENSOR by the amount which LICENSEE is
obligated to pay such third party for such patent license,
PROVIDED, HOWEVER, that such reduction does not reduce the
royalties to an
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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amount less than [ ]* the amount which would otherwise
be due LICENSOR pursuant to the provisions of Section 8.1
hereof.
(b) LICENSEE shall have the right to credit its expense for the
filing, prosecution and defense of applications and
maintenance of patents within Patent Rights against
royalties otherwise due LICENSOR pursuant to Section 8.1.
8.2 All payments shall be made hereunder in U.S. dollars; provided
however, that if the proceeds of the sales upon which such royalty payments are
based are received by the LICENSEE in a foreign currency or other form that is
not convertible or exportable in dollars, and the LICENSEE does not have ongoing
business operations or bank accounts in the country in which the currency is not
convertible or exportable, the LICENSEE shall pay such royalties in the currency
of the country in which such sales were made by depositing such royalties in
LICENSOR'S name in a bank designated by LICENSOR in such country. Royalties in
dollars shall be computed by converting the royalty in the currency of the
country in which the sales were made at the exchange rate for dollars prevailing
at the close of the business day of the LICENSEE'S quarter for which royalties
are being calculated as published the following day in the Wall Street Journal
(or, if it ceases to be published, a comparable publication to be agreed upon
from time to time by the parties), and with respect to those countries for which
rates are not published in the Wall Street Journal, the exchange rate fixed for
such date by the appropriate United States governmental agency.
8.3 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular country,
the royalty payable for sales in such country shall be equal to the maximum
permitted royalty under such law or regulation.
8.4 In the event that any taxes, withholding or otherwise, are levied
by any taxing authority in connection with accrual or payment of any royalties
payable to LICENSOR under this Agreement, the LICENSEE shall have the right to
pay such taxes to the local tax authorities on behalf of LICENSOR and the
payment to LICENSOR of the net amount due after reduction by the amount of such
taxes, shall fully satisfy the LICENSEE'S royalty obligations under this
Agreement.
9. BEST EFFORTS:
9.1 Subject to the exercise of LICENSEE'S reasonable business
judgment, LICENSEE will use its best efforts to manufacture, market and sell the
Products in the Territory and will exert its best efforts to create a demand for
the Products.
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* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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9.2 LICENSEE agrees to submit reports, upon LICENSOR'S request not
more than once annually following the Effective Date, as to its efforts to
develop markets for the Products. Such reports shall include assurance by
LICENSEE of its intent to actively develop commercial embodiments of the
inventions of the Patent Rights subject to the exercise of LICENSEE'S reasonable
business judgment, and a summary of its efforts in this regard.
10. REPORTS AND RECORDS:
10.1 Commencing one (1) year after the first sale, the LICENSEE shall
furnish to LICENSOR a report in writing specifying during the preceding calendar
quarter (a) the number or amount of Products sold hereunder by LICENSEE, and/or
its Affiliates or Sublicensees, (b) the total xxxxxxxx for all Products sold,
(c) deductions as applicable in Paragraph 1.6, (d) amount of Net Royalties
collected, (e) total royalties due, and (f) names and addresses of all
Sublicensees. Such reports shall be due within forty-five (45) days following
the last day of each calendar quarter in each year during the term of this
Agreement. Each such report shall be accompanied by payment in full of the
amount due LICENSOR in United States dollars calculated in accordance with
Paragraph 8.1 hereof.
10.2 For a period of three (3) years from the date of each report
pursuant to Paragraph 10.2, LICENSEE shall keep records adequate to verify each
such report and accompanying payment made to LICENSOR under this Agreement, and
an independent Certified Public Accountant or Accounting Firm selected by
LICENSOR and acceptable to LICENSEE may have access, on reasonable notice during
regular business hours, not to exceed once per year, to such records to verify
such reports and payments. Such Accountant or Accounting Firm shall not disclose
to LICENSOR any information other than that information relating solely to the
accuracy of, or necessity for, the reports and payments made hereunder The fees
and expense of the Certified Public Accountant or Accounting Firm performing
such verification shall be borne by LICENSOR unless in the event that the audit
reveals an underpayment of royalty by more than ten percent (10%), in which case
the cost of the audit shall be paid by LICENSEE.
11. REPRESENTATIONS AND WARRANTIES: The following provisions relate
to representations and warranties by the parties.
11.1 BY LICENSEE. LICENSEE represents and warrants to LICENSOR as
follows:
11.1.1 CORPORATE POWER. LICENSEE has all necessary corporate
power to enter into and perform its obligations under this Agreement
and as taken all necessary action under the laws of the State of
Delaware and its articles of organization and operating agreement to
authorize the execution and consummation of this Agreement.
11.2 BY LICENSOR. LICENSOR represents and warrants to LICENSEE as
follows:
11.2.1 CORPORATE POWER. LICENSOR has all necessary corporate
power to enter into and perform its obligations under this agreement
and has taken all
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necessary corporate action under the laws of the State of Florida and
its charter and by-laws to authorize the execution and consummation of
this Agreement.
11.2.2 OWNERSHIP. Subject to (a) any statutory rights of the
United States Government under 35 U.S.C. Sections 200 et seq.,
LICENSOR acknowledges that LICENSOR either legally and/or beneficially
owns and controls the entire right, title and interest in and to the
Patent Rights including the right to preclude the unauthorized
disclosure or use of the foregoing.
11.2.3 NO OPTIONS. There are no outstanding options or rights in
any third party to any of the Patent Rights or to acquire any rights
or licenses to any of the Patent Rights.
11.2.4 NO LITIGATION. To the best of LICENSOR'S knowledge, there
is no action, suit, claim, proceeding or governmental investigation
pending or threatened against LICENSOR with respect to any of the
Patent Rights either at law or in equity, before any court or
administrative agency or before any governmental department,
commission, board, bureau, agency or instrumentality, whether United
States or foreign.
12. CONFIDENTIAL INFORMATION. The following provisions relate to
restrictions on the disclosure and use of Confidential Information by the
parties:
12.1 Confidential Information shall be marked confidential, or, if
disclosed orally, shall be summarized in a writing marked confidential by the
disclosing party and such summary shall be given to the receiving party within
thirty (30) days after oral disclosure.
12.2 CONFIDENTIALITY. Until the later of (a) five years from the
Effective Date of this Agreement, or (b) two years from the effective date of
termination, LICENSEE and LICENSOR each agrees
(a) to treat as confidential and not disclose to any third pan
all Confidential Information disclosed to it by the other
party; and
(b) not to use such Confidential Information;
except as authorized by this Agreement.
12.3 RELEASE FROM RESTRICTIONS. All information which is characterized
as Confidential Information shall cease to be confidential and LICENSEE and/or
LICENSOR shall be released from their respective obligations under Paragraph
12.2 hereof on the date when, through no fault or omission of the party seeking
such release, such information becomes (a) disclosed in published literature; or
(b) generally available to industry; or (c) obtained by the party seeking such
release from a third party without binder of secrecy, PROVIDED, HOWEVER, that
such third party has no confidentiality obligations to the other party.
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12.4 CONFLICT. In the event of any conflict between this Agreement and
the terms of the Confidentiality Non-Disclosure Agreement dated December 29,
1997 between the parties, the terms of this Agreement shall govern.
13. MARKING AND STANDARDS:
13.1 In accordance with applicable law, LICENSEE agrees to xxxx and
obligate Sublicensees to xxxx Products (or their containers or labels) sold in
the United States with proper patent notice as specified under the patent laws
of the United States and will also satisfy the marking standards of each foreign
country in which patent protection is sought and products are sold.
13.2 LICENSEE further agrees to maintain satisfactory standards in
respect to the nature of the Products manufactured and/or sold by LICENSEE.
LICENSEE agrees that all Products manufactured and/or sold by it shall be of a
quality which is appropriate to products of the type here involved LICENSEE
agrees that similar provisions shall be included in its sublicenses under the
Patent Rights.
14. ASSIGNMENT:
14.1 This Agreement is not assignable by LICENSEE without the prior
written consent of LICENSOR at its sole discretion, except that LICENSEE may
freely assign this Agreement to an Affiliate or to a party assuming
substantially all of LICENSEE's business to which Products relate. Notice to
LICENSOR shall be given within thirty (30) days after such an assignment in
order to allow LICENSOR to comply with its affected obligations under this
Agreement.
14.2 This Agreement shall extend to and be binding upon the successors
and legal representatives and permitted assigns of LICENSOR and LICENSEE.
15. NOTICE:
Any notice, payment, report or other correspondence (hereinafter
collectively referred to as "Correspondence") required or permitted to be given
hereunder shall be mailed by certified mail or delivered by hand to the party to
whom such Correspondence is required or permitted to be given hereunder. If
mailed, any such notice shall be deemed to have been given when mailed as
evidenced by the postmark at point of mailing. If delivered by hand, any such
Correspondence shall be deemed to have been given when received by the party to
whom such Correspondence is given, as evidenced by written and dated receipt of
the receiving party.
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All Correspondence to LICENSEE shall be addressed as follows:
Antigenics LLC
000 Xxxxx Xxxxxx, Xxxxx 0000
Xxx Xxxx, XX 00000
Attn: Xxxx Xxxxx, Chief Executive Officer
All Correspondence to LICENSOR shall be addressed, in duplicate, as
follows:
FOR NOTICE: University of Miami
School of Medicine
Research and Graduate Studies
P.O. Box 016960 (R64)
0000 X.X. 00xx Xxxxxx
Xxxxx, Xxxxxxx 00000
Attention: Xx. Xxxxxx X. Xxxxxx
Assistant Vice President
Business Affairs
327 Xxx Xxxxxxx Building
0000 Xxxxxxx Xxxxxx
Xxxxx Xxxxxx, Xxxxxxx 00000-0000
Attention: Xx. Xxxx X. Xxxx
FOR NOTICE AND PAYMENT:
Director
Office of Technology Transfer
P.O. Box 016960 (M811)
Xxxxx, XX 00000
Attention: Xx. Xxxx X. Xxxxxxxx
Either party may change the address to which Correspondence to it is to be
addressed by notification as provided herein in this paragraph.
16. TERMINATION:
16.1 LICENSOR and LICENSEE shall each have the right to terminate this
Agreement if the other party commits a material breach of an obligation under
this Agreement or provides an intentionally false report and continues in
default for more than two (2) months after receiving written notice of such
default or intentionally false report. Such termination shall be effective upon
further written notice to the breaching party after failure by the breaching
party to cure such default. If LICENSOR commits a material breach or defaults,
then LICENSEE has no duty to continue the payment of royalties as set forth in
Section 8 of this Agreement.
16.2 The license and rights granted in this Agreement have been
granted on the basis of the special capability of LICENSEE to perform research
and development work leading to the manufacture and marketing of the Products.
Accordingly, to the extent enforceable under
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law, LICENSEE covenants and agrees that in the event any proceedings under the
Bankruptcy Act or any amendment thereto, be commenced by or against LICENSEE,
and, if against LICENSEE, said proceedings shall no be dismissed with prejudice
before either an adjudication in bankruptcy or the confirmation of a composition
arrangement, or plan of reorganization, or in the event LICENSEE shall be
adjudged insolvent or make an assignment for the benefit of its creditors, or if
a writ of attachment or execution be levied upon the license hereby created and
not be released or satisfied within ten (10) days thereafter, or if a receiver
be appointed in any proceeding or action to which LICENSEE is a party with
authority to exercise any of the rights or privileges granted hereunder, any
such event shall be deemed to constitute a breach of this Agreement by LICENSEE,
and LICENSOR, at the election of LICENSOR, but not otherwise, ipso facto, and
without notice or other action by LICENSOR, shall have the right to terminate
this Agreement.
16.3 LICENSEE shall have the right to terminate this Agreement in
whole or in part with respect to any patent or application within Patent Rights
upon sixty (60) days notice.
16.4 Any termination of this Agreement shall be without prejudice to
LICENSOR'S right to recover all amounts accruing to LICENSOR prior to such
termination and cancellation. Except as otherwise provided, should this
Agreement be terminated for any reason, LICENSEE shall retain no rights, express
or implied, under the Patent Rights, nor have the right to recover any royalties
paid LICENSOR hereunder. Upon termination, LICENSEE shall have the surviving
right under this Agreement to dispose of Products then in its possession and to
complete existing contracts for such products, so long as contracts are
completed within six (6) months from the date of termination, subject to the
payment of royalties to LICENSOR as provided in Section 8 hereof.
17. CERTIFICATE OF INSURANCE:
17.1 LICENSEE and LICENSOR each agree to carry and keep in force, each
at its expense, general liability insurance with limits not less than one
million dollars ($1,000,000) per person and three million dollars ($3,000,000)
aggregate to cover liability for damages on account of bodily or personal injury
or for any cause. Such insurance shall not be canceled for any cause without at
least thirty (30) days prior written notice to the other party. LICENSEE'S
insurance shall contain an endorsement naming LICENSOR as an additional insured
with respect to this Agreement. LICENSEE shall provide a certificate of
insurance stating the limits of coverage. Such insurance shall be written to
cover claims during the term of this Agreement. The insurance certificate shall
be sent to the University of Miami, attention Xx. Xxxxxxx Xxxxxx, 333 Xxx
Xxxxxxx Building, 0000 Xxxxxxx Xxxxxx, Xxxxx Xxxxxx, Xxxxxxx 00000-0000.
17.2 LICENSEE shall keep in force product liability insurance with
limits not less than five million dollars ($5,000,000) in the event of human
subject testing of a Product. Such insurance shall not be canceled for any cause
without at least thirty (30) days prior written notice to the other party
LICENSEE'S insurance shall contain an endorsement naming LICENSOR as an
additional insured with respect to this Agreement. LICENSEE shall provide a
certificate of insurance stating the limits of coverage. Such insurance shall be
written to cover claims incurred, discovered, manifested or made during or after
the expiration of this Agreement. The insurance certificate shall be sent to the
University of Miami, attention Xx. Xxxxxxx Xxxxxx, 333 Xxx Xxxxxxx Building,
0000 Xxxxxxx Xxxxxx, Xxxxx Xxxxxx, Xxxxxxx 00000-0000.
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18. USE OF NAME:
Except as may be required by law, LICENSEE shall not use the name of
the University of Miami, or any of its employees, or any adaptation thereof, in
any publication, including advertising, promotional or sales literature without
the prior written consent of Xx. Xxxx X. Xxxx, Assistant Vice President of
Business Services, 327 Xxx Xxxxxxx Bldg., 0000 Xxxxxxx Xxxxxx, Xxxxx Xxxxxx, XX
00000-0000. Except as may be required by law, LICENSOR shall not use the name of
Antigenics LLC, or any of its employees, or any adaptation thereof, in any
publication, including advertising, promotional or sales literature without the
prior written consent of the Chief Executive Officer of Antigenics LLC, 000
Xxxxx Xxxxxx, Xxxxx 0000, Xxx Xxxx, XX 00000.
19. GOVERNING LAW:
This Agreement shall be governed by and interpreted in accordance with
the laws of the State of Florida.
20. CAPTIONS:
The captions and Paragraph/Section headings of this Agreement are
solely for the convenience of reference and shall not affect its interpretation.
21. SEVERABILITY:
Should any part or provision of this Agreement be held unenforceable
or in conflict with the applicable laws or regulations of any jurisdiction, the
invalid or unenforceable part or provision shall be replaced with a provision
which accomplishes, to the extent possible, the original business purpose of
such part or provision in valid and enforceable manner, and the remainder of the
Agreement shall remain binding upon the parties hereto.
22. SURVIVAL:
22.1 The provisions of Sections 5.3, 6, 7 and 12 shall survive the
termination or expiration of this Agreement and shall remain in full force and
effect.
22.2 The provisions of this Agreement which do not survive termination
or expiration hereof (as the case may be) shall, nonetheless, be controlling on,
and shall be used in construing and interpreting, the rights and obligations of
the parties hereto with regard to any dispute, controversy or claim which may
arise under, out of, in connection with, or relating to this Agreement.
23. AMENDMENT:
No amendment or modification of the terms of this Agreement shall be
binding on either party unless in a prior writing signed by an authorized
officer of each party.
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24. WAIVER:
No failure or delay on the part of a party in exercising any right
hereunder will operate as a waiver of, or impair, any such right. No single or
partial exercise of any such right will preclude any other or further exercise
thereof or the exercise of any other right. No waiver of any such right will be
deemed a waiver of any other right hereunder.
25. ENTIRE AGREEMENT:
This Agreement constitutes the entire agreement between the parties
hereto respecting the subject matter hereof, and supercedes and terminates all
prior agreements respecting the subject matter hereof, whether written or oral,
and may be amended only by an instrument in writing executed by both parties
hereto.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed by their respective officers thereunto duly authorized to be
effective as of the Effective Date.
ANTIGENICS LLC
Date: ____________________ By: /s/ Xxxx X. Xxxxx
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Xxxx X. Xxxxx
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Name
Chairman and Chief Executive Officer
-------------------------------------
Title
UNIVERSITY OF MIAMI
Date: 4/19/99 By: /s/ Xxxx X. Xxxx
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Xxxx X. Xxxx
-------------------------------------
Name
Asst. Vice President Business Services
--------------------------------------
Title
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