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EXHIBIT 10.14
PROSTATE CANCER COLLABORATION AND
LICENSE AGREEMENT
BETWEEN
CORIXA CORPORATION
AND
SMITHKLINE XXXXXXX BIOLOGICALS MANUFACTURING S.A.
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TABLE OF CONTENTS
1. DEFINITIONS 3
2. SCOPE OF RESEARCH PROGRAM 8
3. RESEARCH PROGRAM TERM AND TERMINATION 8
4. LICENSE GRANT 9
5. LICENSE PAYMENTS 10
6. ROYALTIES 12
7. OTHER TERMS 15
8. JOINT RESEARCH TEAM 15
9. INVENTIONS 16
10. PATENTS; PROSECUTION AND LITIGATION 16
11. CONFIDENTIALITY; PUBLICITY; PUBLICATIONS 18
12. GOVERNING LAW; ARBITRATION 20
13. MISCELLANEOUS 21
14. NOTICES 22
15. ASSIGNMENT 22
16. WARRANTIES AND REPRESENTATIONS 23
17. TERM AND XXXXXXXXXXX 00
00. RIGHTS AND DUTIES UPON TERMINATION 25
19. INDEMNIFICATION 25
EXHIBIT A 27
EXHIBIT B 28
EXHIBIT C 30
EXHIBIT D 31
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PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT
This PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT (together, with the
attachments hereto, the "Agreement") is entered into the ______ day of March,
1997 (the "Effective Date") by and between CORIXA CORPORATION, a Delaware
corporation with its principal place of business located at 0000 Xxxxxxxx
Xxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000 ("Corixa") and SmithKline Xxxxxxx
Biologicals Manufacturing S.A., a Belgian corporation with its principal place
of business at Xxx xx x'Xxxxxxxx 00, X-0000 Xxxxxxxxx, Xxxxxxx ("SB").
W I T N E S S E T H:
WHEREAS, Corixa and SB desire to collaborate in the research and
development of antigens for the development of Vaccine product(s) for the
prevention and/or treatment of any form of prostate cancer and wish to
memorialize their agreement with respect to such collaboration in this
Agreement;
WHEREAS, Corixa has agreed to license certain intellectual property
rights related to the subject matter of the collaboration subject to the terms
and conditions of this Agreement;
NOW, THEREFORE, for and in consideration of the mutual observance of
the covenants hereinafter set forth and other good and valuable consideration,
the receipt of which is hereby acknowledged, the parties hereto agree as
follows:
1. DEFINITIONS
(a) "Affiliate" shall mean any entity owned, owning or under
common ownership with a party to this Agreement to the extent
of at least fifty percent (50%) of the equity (or such lesser
percentage which is the maximum allowed to be owned by a
foreign corporation in a particular jurisdiction) having the
power to vote on or direct the affairs of the entity and any
person, firm, partnership, corporation or other entity
actually controlled by, controlling or under common control
with a party to this Agreement.
(b) "Antigens" shall mean [***]
(c) "PC" shall mean prostate cancer.
(d) "PC Field" shall mean any and all in vivo administered
prophylactic and/or therapeutic prostate cancer Vaccines for
use in humans.
(e) "Blocking Patents" shall mean any patents and/or patent
applications owned and/or controlled by Third Parties having
claims which would be infringed by SB making, having made,
using, having used, offering for sale, selling or having sold
all or part of
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Product and which would prevent SB from using the intellectual
property rights granted to SB by Corixa hereunder.
(f) "Competition" shall mean a product which would otherwise
infringe Corixa Patents or Joint Research Program Patents.
(g) "Corixa" shall mean Corixa Corporation and its Affiliates.
(h) "Corixa Antigens" shall mean (i) those Antigens identified on
Exhibit A attached hereto and/or (ii) those Antigens solely
discovered by Corixa during the Research Program Term as may
be extended in connection with and as a result of the Research
Program and/or (iii) those Antigens discovered by Corixa as a
result of research directed to PC during the Research Program
Term as may be extended but not in connection with and not as
a result of the Research Program and, subject to SB's exercize
of the option set forth in Paragraph 4(d) below, during a
period of two (2) years after the Research Program Term as may
be extended and/or (iv) subject to SB's compliance with the
terms and conditions of Paragraph 4(c) below, those Antigens
in the PC Field licensed-in or otherwise acquired by Corixa
during the Research Program Term as may be extended and,
subject to Paragraph 4(d) below, during a period of two (2)
years thereafter. As used herein, Corixa Antigens shall not
include Research Program Antigens nor SB Antigens.
(i) "Corixa Patents" shall mean all patents and patent applications
(including those arising from the Research Program) which are
now or become owned and/or controlled by Corixa during the
Research Program Term as may be extended and, subject to
Paragraph 4(d) below, during a period of two (2) years
thereafter and/or under which Corixa otherwise has, now or in
the future, the right to grant licenses, which generically or
specifically claim all or part of Product(s), a process for
manufacturing Product(s), intermediates used in such process or
a use of Product and any and all technology(ies) generated
solely by Corixa in connection with Corixa's performance under
this Agreement during the Research Program Term as may be
extended and, subject to Paragraph 4(d) below, during a period
of two (2) years thereafter. Included with the definition of
Corixa Patents are any continuations, continuations-in-part,
divisions, patents of addition, reissues, renewals or
extensions thereof. Also included within the definition of
Corixa Patents are any patent applications which generically or
specifically claim any improvements on Product or intermediates
or manufacturing processes required or useful for production of
Product which are developed by Corixa, or which Corixa
otherwise has the right to grant licenses, now or in the future
during the Research Program Term as may be extended and,
subject to Paragraph 4(d) below, during a period of two (2)
years thereafter. Corixa Patents shall specifically not include
SB Patents. Corixa Patents in existence as of the Effective
Date are set forth on Exhibit B attached hereto. Exhibit B
also sets forth a list of patents owned and/or controlled by
Corixa which are specifically excluded from the scope of Corixa
Patents and shall not be considered Corixa Patents for the
purpose of this Agreement and to which SB shall have no rights
except as separately agreed by the parties in a written
separate agreement.
(j) "Identified" shall mean that the Know-How is described or
recorded in such a manner as to make it possible to verify
that it fulfills the criteria of secrecy and substantiality
and to
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ensure that SB is not unduly restricted in its exploitation of
its own technology. To be Identified the Know-How can either
be set out in this Agreement or in a separate document or
recorded in any other appropriate form at the latest when the
Know-How is transferred or shortly thereafter, provided that
the separate document or other record can be made available if
the need arises.
(k) "Joint Inventions" shall have the meaning set forth in Section
(l) "Joint Research Program Patents" shall mean all patents and
patent applications which cover Joint Inventions and which
generically or specifically claim Product, a process for
manufacturing Product, and intermediates used in such process
or a use of Product and any and all technology(ies) generated
during the Research Program Term as may be extended. Included
with the definition of Joint Research Program Patents are any
continuations, continuations-in-part, divisions, patents of
addition, reissues, renewals or extensions thereof. Also
included within the definition of Joint Research Program
Patents are any patent applications which cover Joint
Inventions and which generically or specifically claim any
improvements on Product or intermediates or manufacturing
processes required or useful for production of Product. In no
event shall Joint Research Program Patents be deemed to
include Corixa Patents or SB Patents.
(m) "Joint Research Team" shall have the meaning set forth in
Paragraph 8(a).
(n) "Know-How" shall mean all technical information, materials and
know-how owned and/or controlled by Corixa now and/or during
the term of the Research Program Term as may be extended and,
subject to SB's exercize of the option set forth in Paragraph
4(d) below, during a period of two (2) years thereafter, which
directly relates to Product and shall include, without
limitation, all chemical, pharmacological, toxicological,
clinical, assay, control and manufacturing data and any other
information relating to Products and useful for the
development and commercialization of Products and strains,
samples, analytical tools, libraries, clones, etc.
(o) "Licensed Field" shall mean any and all in vivo administered
[***] cancer Vaccines for use [***] and shall [***] adoptive
immunotherapy.
(p) "Milestone" shall mean the technical milestone set forth in
Exhibit C attached hereto, the satisfaction of which shall be
reasonably determined by the Joint Research Team within ten
(10) days of submission of the relevant information and data
by Corixa to the Joint Research Team.
(q) "Net Sales"
(i) For purposes of this Agreement, Net Sales shall be
defined to mean the aggregate amounts invoiced by SB
or its Affiliates, licensees or sublicensees to
non-Affiliate Third Parties from sales of Product
less (i) normal customary trade discounts allowed and
taken; (ii) rebates to wholesalers; (iii) returns;
(iv) amounts for including insurance; (v) shipping
charges to purchasers if invoiced separately; (vi)
taxes (not including any income taxes), and duties
levied on sales;
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transportation(vii) deduction allowed for
government-mandated vaccine insurance premiums, such
as the National Childhood Vaccine Injury Act in the
U.S.; (viii) a deduction, at standard cost, for
special administration devices and the packaging and
filling thereof, such as pre-filled syringes;
provided, in no event shall the total of items (iii)
through (vi) exceed [***] of Net Sales. Any
commercial use of a Product by SB (including its
Affiliates, licensees and sub licensees) shall be
considered a sale hereunder for accounting and royalty
purposes.
(ii) In determining royalty payments hereunder, Net Sales
of Product shall be multiplied by [***].
(iii) In the event of a product incorporating a Product and
one or more non-prostate cancer Vaccines (a
"Combination Product"), Net Sales shall exclude [***].
(r) "Product" shall mean any product comprised at least of one (1)
or more Corixa Antigens and/or Research Program Antigens,
including any combination thereof. In addition to Corixa
Antigens and/or Research Program Antigens Product may also
include SB Antigen(s).
(s) "Research Program" shall have the meaning set forth in
Paragraph 2(a).
(t) "Research Program Antigens" shall mean Antigens discovered by
Corixa and SB during the Research Program Term, as may be
extended, in connection with and as a result of the conduct of
the Research Program.
(u) "Research Program Term" shall have the meaning set forth in
Paragraph 3(a).
(v) "SB" shall mean SmithKline Xxxxxxx Biologicals Manufacturing
S.A. and its Affiliates.
(w) "SB Antigens" shall mean Antigens discovered and/or
in-licensed by SB and related physical forms based on such
Antigens including peptides, proteins and nucleic acids other
than Research Program Antigens.
(x) "SB Patents" shall mean all patents and patent applications
which are now or become owned and/or controlled by SB (other
than jointly with Corixa) and/or under which SB
otherwise has, now or in the future, the right to grant
licenses, which generically or specifically claim any Antigen
and/or adjuvant included in Product. Included with the
definition of SB Patents are any continuations,
continuations-in-part, divisions, patents of
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addition, reissues, renewals or extensions thereof. In no
event shall SB Patents be deemed to include either Corixa
Patents or Joint Research Program Patents.
(y) "Secret" shall mean that the Know-How as a body or in the
precise configuration and assembly of its components is not
generally known or easily accessible, so that part of its
value consists in the lead-time SB gains when it is
communicated to it; Know-How is not limited to the narrow
sense that each individual component of the Know-How should be
totally unknown or unobtainable outside the Corixa's business.
(z) "SPC" shall mean all Supplementary Protection Certificates for
medicinal products and their equivalents provided under the
Council Regulation (EEC) N# 1768/92 of June 18, 1992.
(aa) "Substantial" shall mean that the Know-How includes
information which is of importance for the whole or a
significant part of (i) a manufacturing process or (ii) a
product or service, or (iii) for the development thereof and
excludes information which is trivial. Such Know-How must
thus be useful, i.e., can reasonably be expected at the date
of conclusion of the Agreement to be capable of improving the
competitive position of SB, for example by helping SB to enter
a new market or giving SB an advantage in competition with
other manufacturers or providers of services who do not have
access to the licensed Secret Know- How or other comparable
Secret know-how;
(bb) "Territory" shall mean all the countries of the world.
(cc) "Third Party(ies) shall mean any party other than a party to
this Agreement or an Affiliate.
(dd) "Vaccines" shall mean the administration of [***] any
formulation or configuration, for the primary purpose and
effect of eliciting a [***] or [***] immune response directed
directly or indirectly to such [***] contained therein.
[***]
"Interpretive Rules". For purposes of this Agreement, except as
otherwise expressly provided herein or unless the context otherwise
requires : (a) defined terms include the plural as well as the singular
and the use of any gender shall be deemed to include the other gender;
(b) references to "Articles", "Sections" and other subdivisions and to
"Schedules" and "Exhibits" without reference to a document, are to
designated Articles, Sections and other subdivisions of, and to
Schedules and Exhibits to, this Agreement; (c) the use of the term
"including" means "including but not limited to"; and (d) the words
"herein", "hereof", "hereunder" and other words of similar import refer
to this Agreement as a whole and not to any particular provision.
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