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EXHIBIT 10.17
LICENSE AGREEMENT
This Agreement is made and entered into as of the 22nd day of May,
1998, by and between the OKLAHOMA MEDICAL RESEARCH FOUNDATION, an Oklahoma
nonprofit corporation ("OMRF"), 000 X.X. 00xx Xxxxxx, Xxxxxxxx Xxxx, Xxxxxxxx
00000, and ZymeTx, Inc., a corporation duly incorporated under the laws of
Delaware ("Licensee"), and maintaining offices at 000 Xxxxxxxx Xxxxxxx, Xxxxx
000, Xxxxxxxx Xxxx, Xxxxxxxx 00000.
RECITALS
A. OMRF owns rights in and to Technology relating to certain
therapeutic use of xanthene dyes, thiazene dyes and other chemical compounds as
antiviral agents.
B. Licensee desires to obtain the right to utilize Licensed Technology
in order to make, use and sell Licensed Products or Licensed Services (as
defined below).
NOW, THEREFORE, for and in consideration of the foregoing and the
mutual covenants and agreements contained herein, the parties hereto agree as
follows:
1. DEFINITIONS
As used herein:
1.1 "Agreement" means this Agreement including all Exhibits attached to
this Agreement together with any written amendments of any of the foregoing.
1.2 "Effective Date" is defined in Paragraph 11.9.
1.3 "Field of Use" means the use of Licensed Technology, Licensed
Products and/or Licensed Services to treat viral diseases in patients, either
through the delivery of an in vivo therapeutic product or via an extracorporeal
system which uses the Licensed Technology during the treatment.
1.4 "Licensed Patents" means the following United States Patents and
Patent Applications:
(a) [Redacted--Confidential Treatment Requested]
(b) [Redacted--Confidential Treatment Requested]
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(c) [Redacted -- Confidential Treatment Requested]; and
all divisionals, continuations, reissues, extensions and foreign counterparts of
the patents, the patent applications (inclusive of patent applications filed
after the date of this Agreement relating to the Technology) and all patents
which issue thereon.
1.5 "Licensed Process" means any process which is covered in whole or
in part by an issued, unexpired claim or a pending claim contained in the
Licensed Patents in the country in which the process is practiced.
1.6 "Licensed Products" means any product or part of a product which:
(a) is covered in whole or in part by an issued, unexpired claim or a
pending claim contained in the Licensed Patents in the country in which
the product or part of a product is made, used or sold; or
(b) is manufactured using a Licensed Process; or
(c) is used in a Licensed Process and has no substantial use except in
a Licensed Process; or
(d) utilizes in whole or in part Licensed Technology.
1.7 "Licensed Services" means services provided by utilizing a Licensed
Process.
1.8 "Licensed Technology" means the designs, technical information,
know-how, knowledge, data, discoveries, inventions, specifications, test results
and other information relating to the Technology or the Licensed Patents and
known to, or discovered by, OMRF prior to or during the License Term.
1.9 "License Term" means the period of time commencing upon the
Effective Date and continuing until the Termination Date.
1.10 "Licensed Territory" means the world.
1.11 "Licensee's Auditors" means the independent certified or chartered
accountants regularly employed by Licensee to audit its accounts and certify its
financial statements.
1.12 "Net Sales" means for each applicable period, the gross amount
invoiced by Licensee or sublicensee (under subparagraph 2.3) to unrelated third
parties for sales of Licensed Products and Licensed Services, less:
(a) all trade, quantity, case and other discounts;
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(b) all commissions, credits, product returns, refunds, rebates,
chargebacks, retroactive price adjustments and any other
reasonable allowances paid to unrelated third parties;
(c) all taxes imposed on the production, sale, delivery or use of
the Licensed Products or Licensed Services;
(d) that portion of the sales value which Licensee can show is
associated with delivery systems; and
(e) any other similar and customary deductions used to determine
net sales pursuant to generally accepted accounting principles
("GAAP").
If a Licensed Product or Licensed Service is sold in combination with another
active component or components, Net Sales, for purposes of determining royalties
on the combination, will be calculated by multiplying Net Sales of the
combination by the fraction A/(AB), where A is the invoice price of the Licensed
Product or Licensed Service if sold separately and B is the total invoice price
of any other active component or components in the combination if sold
separately. If the Licensed Product or Licensed Service and the other active
component or components in the combination are not sold separately, Net Sales,
for purposes of determining royalties on the combination, will be calculated by
multiplying Net Sales of the combination by the fraction C/(CD), where C is the
direct cost of manufacturing or providing the other active component or
components in the combination. Cost of manufacturing or provision of services
for the purposes of this paragraph will be determined in accordance with
generally accepted accounting principles.
1.13 "Proprietary Information" is defined in Paragraph 7.1 of this
Agreement.
1.14 "Required Consents" is defined in Paragraph 11.3 of this
Agreement.
1.15 "Technology" means the chemical compounds covered under the
Licensed Patents.
1.16 "Termination Date" means the date of termination under Paragraph
8.2, 8.3 or 8.5.
1.17 "ZymeTx" means ZymeTx, Inc., a Delaware corporation.
2. GRANT OF LICENSE AND TECHNOLOGY DEVELOPMENT
2.1 License. Subject to the license retained by OMRF in Paragraph 2.2
below and the other terms of this Agreement, OMRF hereby grants to Licensee the
exclusive, worldwide right and license during the License Term to use the
Licensed Technology to develop, make, have made, use, lease, sell and otherwise
commercially exploit Licensed Products, to practice the Licensed Processes and
to sell and perform Licensed Services within the Field of Use.
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2.2 Retained License. OMRF retains on behalf of itself the perpetual,
royalty-free right and license to practice the Licensed Technology for
noncommercial research and educational purposes.
2.3 Sublicenses. Provided that written approval of OMRF (expressed by
its President) is obtained in advance, which approval shall not unreasonably be
withheld, Licensee shall have the right to grant sublicenses under this
Agreement.
2.4 Sublicensee Obligations. All sublicenses granted by Licensee shall
provide that the obligations to OMRF of Licensee under Sections 3, 4, 6, 7, 8, 9
and 10 of this Agreement shall be binding upon sublicensee as if it were a party
to this Agreement, and a copy of those sections of this Agreement shall be
attached to all sublicense agreements.
2.5 Sublicense Copies and Reports. Licensee shall provide to OMRF (1) a
copy of all sublicense agreements promptly after execution, and (2) annually,
together with the report required in Paragraph 5.1 of this Agreement, copies of
all reports received by Licensee from its sublicensees during the preceding
twelve (12) month period.
2.6 No Implied License. The license and right granted in this Agreement
shall not be construed to confer any rights upon Licensee by implication,
estoppel or otherwise as to any technology not specifically identified in this
Agreement as "Licensed Technology," nor shall it be construed to confer any
rights outside the Licensed Territory.
2.7 Clinical Trial Support. Licensee shall commit to expend $250,000 in
the first year following the date of this Agreement for the preparation of data
to support the filing of an FDA Investigative New Drug ("IND") submission and
subsequent clinical trial programs as permitted by the IND. Licensee will use
its best efforts to involve OMRF in such date preparation and the conduct of
clinical trials to the greatest extent in which OMRF may be permitted and able
to so participate.
3. PAYMENTS AND OTHER CONSIDERATION
3.1 Amounts. As part of the consideration specified under this
Agreement to be given by Licensee for the right and license granted
in this Agreement, Licensee shall pay, deliver or procure delivery
to OMRF:
(a) an up-front royalty of $150,000 to be paid in cash on the
Effective Date of this Agreement;
(b) reimbursement of 50% of OMRF patent prosecution expenses up
to the date of the License Agreement, not to exceed $28,000,
to be paid upon execution of this Agreement;
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(c) for each Licensed Product or Licensed Service, a milestone
royalty of $1,000,000 at the time of filing by Licensee of a
New Drug Application ("NDA") with the Food & Drug
Administration ("FDA") with respect to such Licensed Product
or Licensed Service;
(d) for each Licensed Product or Licensed Service, a milestone
royalty of $5,000,000, payable in five annual installments
commencing at the time Licensee receives an NDA Letter of
Approval from the FDA with respect to such Licensed Product
or Licensed Service, with each installment amounting to the
greater of $1,000,000 or 50% of net pre-tax profits accruing
from the sale of such Licensed Product or Licensed Service
approved by the FDA, with total payments not exceeding
$5,000,000; and
(e) a royalty equal to 8% of Net Sales of the Licensed Products
or Licensed Services sold by Licensee or its sublicensees, or
sublicense fees paid to the Licensee; further, such royalty
payment shall be offset by the research and development
expenses, if any, incurred by Licensee related to the
Licensed Product or Licensed Process, other than clinical
trial costs.
For the purposes of (d) above, "net pre-tax profits" shall be Net
Sales, less cost of goods sold and direct marketing, personnel and overhead
costs which may be reasonably allocated to the costs of the Licensed Product or
Licensed Service.
3.2 Non-cumulative Royalties. Royalties shall be payable by Licensee
with respect to all of its or sublicensees' Net Sales except for resale of such
products purchased from OMRF. Royalties shall not become payable at the time of
sale, transfer or disposal among Licensee and its sublicensees, but shall become
payable only when Licensee or its sublicensees sell such products to a third
party, except where such sales to a third party are not contemplated, in which
event royalties shall be payable by Licensee when such sale, transfer or
disposal among Licensee and its sublicensees occurs.
3.3 No Multiple Royalties. No multiple royalties shall be payable
because any Licensed Product or Licensed Service is covered by more than one
patent within the Licensed Patents.
3.4 Deduction of Taxes. Any income or other tax which Licensee is
required to withhold and pay on behalf of OMRF with respect to the royalties
payable to OMRF under this Agreement shall be deducted from such royalties prior
to remittance to OMRF; provided however, that in regard to any tax so deducted,
Licensee shall give OMRF such assistance as may reasonably be necessary to
enable OMRF to claim exemption therefrom and to obtain for OMRF the most
favorable tax treatment legally possible. In each case Licensee shall furnish
OMRF with proper evidence of the taxes so paid on its behalf.
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3.5 Interest. Royalty and other payments required in this Agreement
shall, if overdue, bear interest until payment at a par annum rate four percent
(4%) above the prime rate in effect at the Chase Manhattan Bank, N.A., New York,
New York, U.S.A., on the due date. The payment of such interest shall not
foreclose OMRF from exercising any other rights it may have because any payment
is late.
3.6 Currency Conversion and Delivery. All payments required in this
Agreement shall be paid in United States dollars, delivered in accordance with
Paragraphs 5.2 and 11.1 of this Agreement or to such other place as OMRF may
reasonably designate consistent with the applicable laws and regulations in any
foreign country. If any currency conversion shall be required in connection with
the payment of royalties hereunder, such conversion shall be made at no expense
to OMRF at the exchange rate prevailing at the Chase Manhattan Bank, N.A., New
York, New York, U.S.A., on the last business day of the calendar quarterly
reporting period to which such payment(s) relate.
3.7 Deduction of Patent Prosecution Costs. Any and all costs incurred
by Licensee in the prosecution and maintenance of patent applications covering
the Technology, filed after the date of this Agreement, shall be deducted from
the royalty payable under subparagraph 3.2(e).
4. RECORDS
4.1 Records of Sales. Licensee shall at all times during the term of
this Agreement and for a period of five (5) years after termination of this
Agreement keep at its principal place of business true and accurate records of
all Net Sales subject to Paragraph 3 of this Agreement in such form and manner
that all royalties owed hereunder to OMRF may be readily and accurately
determined. Such records shall include, but not by way of limitation, all
information necessary for Licensee's Auditors to prepare the reports required by
Section 5 of this Agreement.
4.2 Inspection. OMRF shall have the right, from time to time, at
reasonable times during normal business hours, during the period of this
Agreement and for five (5) years thereafter, to examine the records of Licensee
for the purpose of verifying the amounts owed to OMRF hereunder and the accuracy
of the reports furnished by Licensee and Licensee's Auditors under Section 5 of
this Agreement. OMRF shall maintain the confidentiality of all confidential
information obtained by it from examination of Licensee's records and shall use
such information only for the purposes of this Agreement.
5. REPORTS
5.1 Reports. Licensee will provide OMRF with copies of all financial
reports presented to Licensee's Board of Directors and a copy of Licensee's
Auditors' annual audit report.
5.2 Reportable Information. Licensee will provide OMRF quarterly
payment reports within thirty (30) days of March 31, June 30, September 30, and
December 31. Such reports shall include at least the following:
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(a) the total Net Sales of all Licensed Products and Licensed Services
sold by Licensee and its sublicensees during the preceding three (3)
month period and for the calendar year to date;
(b) the royalties owed to OMRF pursuant to Paragraph 3.1(e) with
respect to the preceding three (3) month period and for the calendar
year to date;
(c) the names and address of all new sublicensees of Licensee since the
previous report.
5.3 Payments. With each such report delivered, Licensee shall pay to
OMRF all amounts due under this Agreement. If no payments are due, Licensee
shall so report.
6. PATENT PROSECUTION AND PATENT INFRINGEMENT
6.1 Patent Prosecution. OMRF shall seek prompt issuance of, and
maintain during the License Term the patents and patent applications, as the
case may be, specifically identified by patent number or application serial
number in Paragraph 1.4 of this Agreement and any other patent applications
relating to the Technology to be filed after the date of this Agreement. The
prosecution and maintenance of all patent applications and patents within the
Licensed Patents, as well as patent applications filed after the date of this
Agreement, shall be the primary responsibility of OMRF, with Licensee bearing
50% of the expense therefor; provided, however, that Licensee (or, at Licensee's
option, its patent counsel ) shall be provided copies of all correspondence
between OMRF's patent counsel and the U. S. Patent and Trademark Office and
foreign associate counsel or other patent offices relating to the Licensed
Patents and shall be afforded reasonable opportunities to advise OMRF, and
Licensee shall cooperate with OMRF in such prosecution. OMRF shall promptly
advise Licensee of the grant, lapse, revocation, surrender, of any threatened
invalidation or of its intention to abandon any such patent or application.
Licensee shall reimburse OMRF for 50% of all out-of-pocket fees, costs and
expenses, if any, paid or incurred by OMRF in maintaining the Licensed Patents
during the License Term. Licensee shall deliver such reimbursement to OMRF (or,
if OMRF requests, directly to OMRF's patent counsel) within thirty (30) days
after OMRF notifies Licensee from time to time of the amount of such fees, costs
and expenses which have been paid or incurred by OMRF.
6.2 Notice of Infringement. Licensee shall promptly notify OMRF of any
alleged infringement of the Licensed Patents and of any available evidence of
such infringement.
6.3 Suit By Licensee. Licensee shall have the initial right, but shall
not be obligated, to commence suit for any infringement of the Licensed Patents.
The total cost of any such infringement action commenced solely by Licensee
shall be borne by Licensee, and Licensee shall retain any recovery or damages
awarded in such action.
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6.4 Suit By OMRF. In the event that, after sixty (60) days from
notification by Licensee of infringement of the Licensed Patents, Licensee has
not notified OMRF of its intention to commence an action against the infringer
of said Licensed Patents, OMRF shall have the right to commence an action in its
own name and OMRF shall notify Licensee of such commencement. In the event OMRF
commences an action against the infringer of said Licensed Patents, Licensee
shall have the right to be joined as a party in said litigation and to be
represented by counsel of choice, provided that Licensee bear the fees of its
counsel. In the event of any recovery, through settlement or otherwise, each of
the parties shall be entitled to such portion of the proceeds realized therefrom
in an amount equal to the portion of the recovery that is commensurate with such
party's contribution to the costs of prosecuting said action (inclusive of such
party's attorney fees).
6.5 Defense. In the event that a declaratory judgment action alleging
invalidity, unenforceability or noninfringement of any of the Licensed Patents
shall be brought against OMRF, OMRF shall not have any obligation to defend such
action; provided, however, that if OMRF determines at any time that it does not
desire to defend such action, OMRF shall promptly so advise Licensee, and
Licensee shall then have the right to defend such action on OMRF's behalf at
Licensee's expense, in which event Licensee shall indemnify OMRF against any
order for costs or award of sanctions that may be made or entered against OMRF
in such proceedings. In the event that a declaratory judgment action alleging
invalidity, unenforceability or noninfringement of any of the Licensed Patents
shall be brought against Licensee, OMRF, at its option, shall have the right,
but shall not be obligated, within ninety (90) days after commencement of such
action, to be joined as a defendant in such action at its own expense.
6.6 Cooperation. In any suit either party may commence or defend
pursuant to its rights under this Agreement in order to enforce or defend the
validity or enforceability of the Licensed Patents, the other party shall, at
the request and expense of the party initiating or defending such suit,
cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers, information,
samples, specimens and the like.
7. CONFIDENTIALITY
7.1 Maintenance of Confidentiality. Licensee will not, without the
express written consent of OMRF in advance, for any reason or at any time either
during or for a period of three (3) years subsequent to the License Term except
as otherwise provided in this paragraph, use (except in the course of practicing
the licenses granted in this Agreement) or disclose (except as is necessary in
the course of marketing and selling Licensed Products or Licensed Services, or
obtaining governmental approval to do so, as contemplated in this Agreement) to
any person (including without limitation any director, officer or employee of
Licensee who is not under an obligation of confidentiality substantially similar
to the obligation contained herein) the Licensed Technology or any other
information relating to the Licensed Products or the Licensed Services
(hereinafter referred to as the "Proprietary Information"). This obligation of
non-use and non-disclosure shall not extend to Proprietary Information:
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(a) which can be demonstrated by Licensee to have been within its
legitimate possession prior to the time of disclosure by OMRF;
(b) which was in the public domain prior to disclosure by OMRF, as
evidenced by documents which were generally published prior to such
disclosure;
(c) which, after disclosure by OMRF, comes into the public domain
through no fault of Licensee;
(d) which is disclosed to Licensee by a third party having legitimate
possession thereof and the unrestricted right to make such disclosure;
or
(e) which is disclosed by Licensee to a third party in connection with
a valid business purpose and the third party executes a confidentiality
agreement with Licensee containing obligations of confidentiality
substantially similar to the obligation contained herein, but
prohibiting further disclosures.
7.2 Prior Agreements. The provisions of this Agreement supersede and
shall be substituted for any terms of any prior confidentiality agreement
between Licensee and OMRF which are not consistent with this Agreement.
8. TERM AND TERMINATION
8.1 Duration. This Agreement shall commence upon the Effective Date
hereof, and shall continue until the Termination Date.
8.2 Termination. OMRF shall have the right to terminate this Agreement
on the occurrence of any one or more of the following events:
(a) default by Licensee on any payment required pursuant to royalties
on the sales of Licensed Products and Licensed Services provided for in
paragraph 3.1(e);
(b) failure of Licensee to render reports to OMRF as required by this
Agreement;
(c) any assignment by Licensee of substantially all of its assets for
the benefit of creditors;
(d) placement of Licensee's assets in the hands of a receiver unless
the receivership is dissolved within thirty (30) days thereafter; or
(e) the material breach by Licensee of any other term of this
Agreement.
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8.3 Exercise. OMRF may exercise its right of termination by giving
Licensee, its trustees or receivers or assigns, thirty (30) days prior written
notice in the cases of Paragraph 8.2 of OMRF's election to terminate. Upon the
expiration of such period, this Agreement shall automatically terminate unless
the other party has previously cured the breach or condition permitting
termination under the preceding paragraph, in which case this Agreement shall
not terminate. Such notice and termination shall not prejudice OMRF's rights to
any royalties and other sums due hereunder and shall not prejudice any cause of
action or claim of OMRF accrued or to accrue on account of any breach or default
by Licensee.
8.4 Failure to Enforce. The failure of OMRF at any time, or for any
period of time, to enforce any of the provisions of this Agreement shall not be
construed as a waiver of such provisions or the right of OMRF thereafter to
enforce each and every such provision.
8.5 Termination by Licensee. Licensee may terminate this Agreement at
any time by giving OMRF six (6) months prior written notice of Licensee's
election to terminate. In such event, the responsibility of Licensee for any
installment payment required by Paragraph 3.1(d) shall expire if the notice of
termination is made by Licensee no later than six (6) months prior to the time
when such installment payment is due. If all of the Licensed Patents are
invalidated as a consequence of challenge by a party other than Licensee, then
the obligation of Licensee to pay any payments under Paragraph 3 shall terminate
immediately at such time as all of such Licensed Patents have been invalidated.
8.6 Effect. In the event this Agreement is terminated for any reason
whatsoever, Licensee shall not have any right to return of any payments of any
kind theretofore made by it to OMRF pursuant to this Agreement, Licensee shall
return, or at OMRF's direction destroy, all plans, drawings, papers, notes,
writings and other documents, samples, organisms, biological materials and
models pertaining to the Licensed Technology, retaining no copies, and Licensee
shall refrain from using or publishing any portion of the Licensed Technology as
provided in Paragraph 7 of this Agreement. Upon the Termination Date, Licensee
shall cease manufacturing, processing, producing, using, selling or distributing
Licensed Products and Licensed Services; provided, however, that Licensee may
continue to sell in the ordinary course of business for a period of ninety (90)
days reasonable quantities of Licensed Products which are fully manufactured and
in Licensee's normal inventory at the Termination Date if:
(a) all monetary obligations of Licensee to OMRF have been satisfied
and
(b) royalties on such sales are paid to OMRF in the amounts and in the
manner provided in this Agreement.
The provisions of Paragraphs 7, 9, and 10 of this Agreement shall remain in full
force and effect notwithstanding any termination of this Agreement.
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8.7 This Agreement shall terminate should Licensee fail, for whatever
reason, to file an IND for a Licensed Product with the FDA within
three (3) years of the Effective Date, or the Licensee must pay One
Hundred Thousand Dollars ($100,000).
9. INDEMNIFICATION AND INSURANCE
9.1 Indemnification. Licensee shall defend, indemnify, and hold
harmless OMRF and its officers, directors, trustees and employees and all of its
heirs, executors, administrators and legal representatives ("Indemnitees") from
and against any and all claims, demands, loss, liability, expense or damage
(including investigative costs, court costs and attorneys' fees) Indemnitees may
suffer, pay or incur as a result of claims, demands or actions against any of
the Indemnitees arising or alleged to arise by reason of or in connection with
any and all personal injury, economic loss and property damage caused or alleged
to be caused or contributed to in whole or in part by the manufacture, use,
lease, sale or sublicense of Licensed Products or Licensed Services by Licensee,
whether asserted under a tort or contractual theory or any other legal theory.
Licensee's obligations under this paragraph shall survive the Termination Date.
9.2 Insurance. Without limiting Licensee's indemnity obligations under
the preceding paragraph, Licensee represents that before any Licensed Product or
Licensed Service is sold, there will be a liability insurance policy in force
and agrees that Licensee shall maintain throughout the License Term and for at
least ten (10) years after the Termination Date such policy which:
(a) insures Indemnitees for all claims, demands and actions mentioned
in the preceding paragraph of this agreement;
(b) includes a contractual endorsement providing coverage for all
liability which may be incurred by Indemnitees in connection with this
Agreement;
(c) requires the insurance carrier to provide OMRF with no less than
thirty (30) days written notice of any change in the terms or coverage
of the policy or its cancellation; and
(d) provides Indemnitees product liability coverage in an amount not
less than Ten Million Dollars ($10,000,000) combined single limit for
bodily injury and property damage liability, subject to a deductible of
not more than One Hundred Thousand Dollars ($100,000) per occurrence.
9.3 Notice of Claims. Licensee will promptly notify OMRF of all claims
involving Licensed Products and will advise OMRF of the policy amounts that
might be needed to defend and pay any such claims. In the event OMRF believes
the sum of such policy amounts may exceed Licensee's total insurance coverage,
OMRF may request and Licensee shall acquire additional coverage, not to exceed
the amounts set forth in the preceding subparagraph of this Agreement, in order
fully to protect OMRF as set forth above.
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9.4 Insurance After Termination. Licensee hereafter shall, during the
License Term and for a period of ten (10) years after the Termination Date,
provide OMRF copies of liability policies which comply fully with this
Agreement. If Licensee fails at any time to maintain insurance as required in
this Agreement, OMRF may (but shall be under no obligation to) purchase its own
policy providing all or any of the coverage and recover from Licensee the cost
thereof, which shall be payable on demand.
9.5 Indemnification by Licensee. Licensee shall indemnify and hold
harmless Indemnitees against and with respect to all losses, damages, claims,
liabilities or expenses (including reasonable attorneys' fees and expenses)
incurred or sustained by any of them as a result of, or arising out of, any
violation, breach or nonfulfillment on the part of Licensee of any
representation, warranty, covenant or agreement made by Licensee pursuant to
this Agreement. OMRF or other indemnified party hereunder shall notify Licensee
in writing, promptly after it or they acquire actual knowledge of any action or
claim against it or them hereunder which may give rise to liability of Licensee
pursuant to this Paragraph. Licensee may, at its own expense, through legal
counsel approved by OMRF, defend or settle any such claim or action, provided
that Licensee posts security that is adequate in the reasonable discretion of
OMRF to protect OMRF or the other indemnified party or parties and provided OMRF
is notified in writing of Licensee's intent to so defend within ten (10) days
after Licensee has been notified by OMRF or such other indemnified party of such
claim or action.
9.6 Contribution by Licensee. If the indemnification provided for in
the immediately preceding Paragraph is unavailable or insufficient to hold
harmless an indemnified party in respect of any of the losses, claims, damages
or liabilities (or actions in respect thereof) referred to above, then Licensee
shall contribute to the amount paid or payable by each such indemnified party as
a result of such losses, claims, damages or liabilities (or actions in respect
thereof) in such proportion as is appropriate to reflect the relative benefits
received by Licensee on the one hand and OMRF and any other indemnified parties
on the other from the activities from which such losses, claims, damages or
liabilities arose, as well as the relative fault of Licensee on the one hand and
OMRF on the other in connection with the actions or inactions which resulted in
such losses, claims, damages or liabilities (or actions in respect thereof), as
well as any other relevant equitable considerations.
10. MERCHANTABILITY, EXCLUSION OF WARRANTIES, LIMITATION OF LIABILITY AND
LICENSEE'S WARRANTIES
10.1 Warranty. Licensee possesses the expertise and skill in the
technical areas in which the Licensed Products and Licensed Processes are
involved necessary to make, and has made, its own evaluation of the
capabilities, safety, utility and commercial application of the Licensed
Technology, Licensed Products and Licensed Processes.
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ACCORDINGLY, OMRF MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND WITH
RESPECT TO THE LICENSED TECHNOLOGY, LICENSED PRODUCTS, LICENSED
PROCESSES OR LICENSED SERVICES AND EXPRESSLY DISCLAIMS ANY WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AND ANY OTHER
IMPLIED WARRANTIES WITH RESPECT TO THE CAPABILITIES, SAFETY, UTILITY OR
COMMERCIAL APPLICATION OF LICENSED TECHNOLOGY, LICENSED PRODUCTS,
LICENSED PROCESSES AND LICENSED SERVICES.
10.2 Limitation of Liability.
OMRF SHALL NOT BE LIABLE FOR ANY DIRECT, CONSEQUENTIAL OR OTHER DAMAGES
SUFFERED BY LICENSEE OR ANY OTHERS RESULTING FROM THE USE OF THE
LICENSED TECHNOLOGY, LICENSED PRODUCTS, LICENSED PROCESSES OR LICENSED
SERVICES.
10.3 Representations and Warranties of Licensee. Licensee hereby makes
the following representations and warranties to OMRF, which representations and
warranties, together with all other representations and warranties of Licensee
in this Agreement, are true and correct on the date hereof:
(a) Licensee is a corporation duly organized, validly existing and in
good standing under the laws of the State of Delaware and has all
requisite corporate power and authority to enter into this Agreement
and perform its obligations hereunder.
(b) Neither the execution or delivery of this Agreement, nor the
consummation of the transactions contemplated herein, will (a) violate
or conflict with any provision of the Certificate of Incorporation or
By-laws of Licensee, as each may have been amended, (b) with or without
the giving of notice or the lapse of time or both (i) result in a
breach of, or violate, or be in conflict with or constitute a default
under, or result in the termination or cancellation of, or accelerate
the performance required under, any security instrument, mortgage,
note, debenture, indenture, loan, lease, contract, agreement or other
instrument, to which Licensee is a party or by which it or any of its
properties or assets may be bound or affected, or (ii) result in the
loss or adverse modification of any lease, franchise, license or other
contractual right or other authorization granted to or otherwise held
by Licensee, (c) require the consent of any party to any such agreement
or commitment to which Licensee is a party or by which any of its
properties or assets are bound, (d) result in the creation or
imposition of any lien, claim or encumbrance upon any property or
assets of Licensee, (e) require any consent, approval, authorization,
order, filing, registration or qualification of or with any court or
governmental authority or arbitrator to which Licensee is subject or by
which any of its properties or assets may be bound or affected.
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(c) All action to authorize the execution and delivery of this
Agreement and the consummation of the transactions contemplated herein
have been duly taken, and this Agreement constitutes the valid and
binding obligation of Licensee enforceable in accordance with its
terms.
(d) There are no claims (relating to patent infringement or any other
matters), actions, suits, proceedings, arbitrations or investigations
pending or, to the best of Licensee's knowledge, threatened, against
Licensee which if adversely determined would adversely affect the
Licensed Technology (or the patentability thereof) or other technology
practiced by Licensee, or Licensee's ability to enter into or carry out
this Agreement or use or license Licensed Technology.
11. MISCELLANEOUS AND GENERAL
11.1 Export Controls. Licensee acknowledges that OMRF is subject to
United States laws and regulations controlling the export of technical data,
computer software, laboratory prototypes and other commodities and that its
obligations hereunder are contingent on compliance with all applicable United
States export and other 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. OMRF neither represents that a license shall not be
required nor that, if required, it shall be issued.
11.2 Legal Compliance. Licensee agrees that it will comply with all
applicable laws and regulations relating to its manufacture, processing,
production, use, advertisement, marketing, sale and distribution of Licensed
Products and Licensed Services and that it will not at any time take any action
which would cause OMRF or Licensee to be in violation of any of such applicable
laws and regulations.
11.3 Required Consents. Licensee shall obtain any and all licenses,
permits, approvals or authorizations ("Required Consents") required by any
governmental entity or agency having jurisdiction over the transactions
contemplated by this Agreement. OMRF shall cooperate with, and provide
reasonable assistance to, Licensee in obtaining the Required Consents; provided,
however, that Licensee shall reimburse OMRF for all of OMRF's out-of-pocket
expenses incurred in providing such assistance.
11.4 Independent Contractor. Licensee's relationship to OMRF hereunder
shall be that of a licensee only. Licensee shall not be the agent of OMRF and
shall have no authority to act for or on behalf of OMRF in any matter. Persons
retained by Licensee as employees or agents shall not by reason thereof be
deemed to be employees or agents of OMRF.
11.5 Patent Marking. Licensee agrees to xxxx the Licensed Products sold
in the United States and, to the extent practical, identify all Licensed
Services with all applicable United States patent numbers. All Licensed Products
shipped to or sold in other countries shall be to the extent
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practical marked in such a manner as to conform with the patent laws and
practice of the country of manufacture or sale.
11.6 Use of Names. None of the names of OMRF or any officers, trustees,
directors or employees of either may be used by Licensee in any manner for
announcing, advertising, promoting or marketing of Licensed Products, Licensed
Services, Licensed Processes or securities of Licensee unless the written
permission of OMRF, or the individual, as the case may be, is obtained in
advance.
11.7 Interpretation. The parties are equally responsible for the
preparation of this Agreement, and in any judicial proceeding the terms hereof
shall not be more strictly construed against one party than the other.
11.8 Place of Execution. This Agreement and any subsequent
modifications or amendments hereto shall be deemed to have been executed in the
State of Oklahoma, U.S.A.
11.9 Effectiveness. This Agreement shall not become effective or
binding upon either party until such time (the "Effective Date") as the
respective Boards of Directors of the parties have approved this Agreement and
the respective Presidents of both parties have executed this Agreement.
11.10 Governing Law. This Agreement and all amendments, modifications,
alterations, or supplements hereto, and the rights of the parties hereunder,
shall be construed under and governed by the laws of the State of Oklahoma and
the United States of America.
11.11 Arbitration. Any controversy or claim arising out of or relating
to this Agreement of the breach thereof will be settled by arbitration in
Oklahoma City, Oklahoma, before and in accordance with the Commercial
Arbitration Rules of the American Arbitration Association. The award rendered in
that arbitration will be binding on the parties hereto, and judgement upon the
award can be entered by any court having jurisdiction thereof. Without
detracting from the generality of the foregoing, the following specific
provisions also will apply:
(a) the proceedings will be held by a panel of three arbitrators, each
party having the right to select one arbitrator, with the third to be
selected in accordance with the Rules of the American Arbitration
Association;
(b) the parties, by mutual agreement, can also provide that all or part
of the arbitration proceedings be held outside of Oklahoma City,
Oklahoma; in this event, the parties will equally bear any specific
expenses resulting from that decision;
(c) before rendering their final decisions, the arbitrators will first
act as friendly, disinterested parties for the purpose of helping the
parties reach compromise settlements on the points in dispute; and
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(d) the costs of the arbitration will be in the discretion of the
arbitrators, provided, however, that no party is obliged to pay more
than its own costs, the costs of the arbitrator it has nominated, and
the cost of the third arbitrator.
11.12 Notices. All notices, statements and reports required or
contemplated herein by one party to the other shall be in writing and shall be
deemed to have been given upon delivery in person or upon the expiration of five
(5) days after deposit in a lawful mail depository in the country of residence
of the party giving the notice, registered or certified airmail postage prepaid,
and addressed as follows:
If to OMRF: Attention: President
Oklahoma Medical Research Foundation
000 X. X. 00xx Xxxxxx
Xxxxxxxx Xxxx, Xxxxxxxx 00000
Facsimile: (000) 000-0000
With a copy to: Xxxx X. Xxxxx, Esq.
Xxxxxxxxxx Xxxxxxxx, LLC
0000 Xxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Facsimile: (000) 000-0000
If to Licensee: Attention: President
ZymeTx, Inc.
000 Xxxxxxxx Xxxxxxx, Xxxxx 000
Xxxxxxxx Xxxx, Xxxxxxxx 00000
Facsimile: (000) 000-0000
With a copy to: Xxxxxxx X. Xxxxxx, Esq.
Xxxxxxxx XxXxxx XxXxxxxxx XxXxx & Xxxxxx, P.C.
Twelfth Floor
One Leadership Square
000 X. Xxxxxxxx
Xxxxxxxx Xxxx, Xxxxxxxx 00000
Facsimile: (000) 000-0000
Either party hereto may change the address to which notices to such
party are to be sent by giving notice to the other party at the address and in
the manner provided above. Any notice herein required or permitted to be given
may be given, in addition to the manner set forth above, by telex, facsimile or
cable, provided that the party giving such notice obtains acknowledgement by
telex, facsimile or cable that such notice has been received by the party to be
notified. Notice made in this manner shall be deemed to have been given when
such acknowledgement has been transmitted.
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11.13 Assignments and Inurement. Licensee shall not grant, transfer,
convey, sublicense or otherwise assign any of its rights or delegate any of its
obligations under this Agreement without the prior written consent of OMRF
except as explicitly permitted in this Agreement, and any attempt to do so shall
be of no effect; however, this Agreement shall be assignable by OMRF. This
Agreement shall be binding upon and inure to the benefit of the successors and
permitted assigns of the parties hereto.
11.14 Entire Agreement. This Agreement constitutes the entire agreement
between OMRF and Licensee with respect to the subject matter hereof and shall
not be modified, amended or terminated except as herein provided or except by
another agreement in writing executed by the parties hereto.
11.15 Headings. The section and paragraph headings are for convenience
only and are not a part of this Agreement.
11.16 Severability. All rights and restrictions contained herein may be
exercised and shall be applicable and binding only to the extent that they do
not violate any applicable laws and are intended to be limited to the extent
necessary so that they will not render this Agreement illegal, invalid or
unenforceable. If any provision or portion of any provision of this Agreement
not essential to the commercial purpose of this Agreement shall be held to be
illegal, invalid or unenforceable by a court of competent jurisdiction, it is
the intention of the parties that the remaining provisions or portions thereof
shall constitute their agreement with respect to the subject matter hereof, and
all such remaining provisions or portions thereof shall remain in full force and
effect. To the extent legally permissible, any illegal, invalid or unenforceable
provision of this Agreement shall be replaced by a valid provision which will
implement the commercial purpose of the illegal, invalid or unenforceable
provision. In the event that any provision essential to the commercial purpose
of this Agreement is held to be illegal, invalid or unenforceable and cannot be
replaced by a valid provision which will implement the commercial purpose of
this Agreement, this Agreement and the rights granted herein shall terminate.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
above written.
OMRF: OKLAHOMA MEDICAL RESEARCH FOUNDATION
By:
------------------------------------
J. Xxxxxx Xxxxx, M.D.
President & Chief Scientific Officer
LICENSEE: ZYMETX, INC
By:
------------------------------------
Xxxxx X. Xxxxxxxxxx
President and Chief Executive Officer
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