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EXHIBIT 10.13
LICENSE AGREEMENT
This Agreement, made and entered into as of this 29th day of June 1995
(the "Effective Date") by and between THE XXXXX XXXXXXX UNIVERSITY, a
corporation duly organized and existing under the laws of the State of Maryland
and having its principal place of business at Xxxxxxx and 00xx Xxxxxxx,
Xxxxxxxxx, Xxxxxxxx 00000, X.X.X. (hereinafter referred to as "XXXXX XXXXXXX")
and SANGAMO BIOSCIENCES, INC. a corporation duly organized under the laws of
Delaware and having its principal office at X.X. Xxx 000, Xxxx, Xxxxxxxxxx
00000 (hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, XXXXX XXXXXXX is the owner of certain Patent Rights (as later
defined herein) relating to inventions from its laboratories directed by
Xxxxxxxxxx Xxxxxxxxxxxxxx, Ph.D. concerning custom design and development of
novel DNA-binding proteins for uses, including but not limited to laboratory
reagents, clinical diagnostics and therapeutics and has the right to grant
licenses under said Patent Rights, subject only to certain march-in-rights
retained by the United States Government, including royalty-free, nonexclusive
licenses;
WHEREAS, XXXXX XXXXXXX desires to have the Patent Rights utilized in the
public interest and is willing to grant a license thereunder;
WHEREAS, XXXXX XXXXXXX and LICENSEE are parties to a Research Agreement
having even date herewith (Appendix D);
WHEREAS, XXXXX XXXXXXX is acting herein for itself;
WHEREAS, LICENSEE has represented XXXXX XXXXXXX to induce XXXXX
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XXXXXXX to enter into this Agreement that LICENSEE shall commit itself to a
thorough, vigorous and diligent program of exploiting the Patent Rights so that
public utilization shall result therefrom;
WHEREAS, Xx. Xxxxxxxxxxxxxx will continue to have full academic freedom to
continue his scientific investigations and interactions with his colleagues; and
WHEREAS, LICENSEE desires to obtain a license under the Patent Rights upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, in addition to other terms defined
herein, the following words and phrases shall have the following meanings:
1.1 "LICENSEE" shall mean SANGAMO BIOSCIENCES and any Subsidiary of
SANGAMO BIOSCIENCES.
1.2 "Subsidiary" shall mean any corporation, company or other entity more
than fifty percent (50%) of whose voting stock is owned or controlled directly
or indirectly by SANGAMO BIOSCIENCES; any parent corporation, company or other
entity which owns, directly or indirectly, more than fifty percent (50%) of the
voting stock of SANGAMO BIOSCIENCES; and any corporation, company or other
entity in which such parent corporation, company or other entity owns, directly
or indirectly, more than fifty percent (50%) of the voting stock.
1.3 "Patent Rights" shall mean the inventions disclosed and claimed in
the United States and foreign patents and/or patent applications listed in
Appendix A.
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1.4 A "Licensed Product" shall mean any product or part thereof which:
(a) is covered in whole or in part by an issued, valid, enforceable,
unexpired claim or a pending claim contained in the Patent Rights
in the country in which any Licensed Product is made, used or
sold;
(b) is manufactured by using a process which is covered in whole or
in part by a valid, enforceable, issued, unexpired claim or a
pending claim contained in the Patent Rights in the country in
which any Licensed Process is used or in which the Licensed
Product is used or sold.
1.5 A "Licensed Process" shall mean any process which is covered in whole
or in part by a valid, enforceable, issued, unexpired claim or a pending claim
contained in the Patent Rights.
1.6 "Net Sales" shall mean the invoiced sales price of Licensed Products
to an end-user that is not a Subsidiary or a sublicensee in a country in which
such sales would infringe a valid claim contained in the Patent Rights in such
country after deducting:
(a) Discounts allowed in amounts customary in the trade;
(b) Sales taxes, tariffs, duties, use taxes and/or other
governmental levies directly imposed and with reference to
particular sales;
(c) Outbound transportation prepaid or allowed; and
(d) Amounts allowed or credited on returns.
No deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Products shall be considered
"sold" when billed out or invoiced.
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1.7 "Invention" shall mean custom designed novel DNA-binding proteins.
ARTICLE II - GRANT
2.1 XXXXX XXXXXXX hereby grants to LICENSEE the exclusive worldwide right
and license to make, have made, use, lease and sell the Licensed Products, and
to practice the Licensed Processes, including the right to grant sublicenses,
subject to 35USC200-211 and the regulations promulgated thereunder, to the end
of the term for which the Patent Rights are granted by the applicable
governmental authority, unless sooner terminated as hereinafter provided (the
"Term"). XXXXX XXXXXXX reserves the non-transferable royalty-free right to
practice the subject matter of any claim within the Patent Rights for its own
internal purposes. If Xx. Xxxxxxxxxxxxxx leaves XXXXX XXXXXXX, he shall have
the non-transferable, royalty-free right to practice any claim within the
Patent Rights for his own academic purposes.
2.2 In order to establish a period of exclusivity for LICENSEE, XXXXX
XXXXXXX hereby agrees that it shall not grant any other license to make, have
made, use, lease or sell Licensed Products or to practice Licensed Processes
except for its internal research activities during the period of time (the
"Exclusive Period") commencing with the Effective Date of this Agreement and
terminating with expiration of the last-to-expire patent licensed under this
Agreement, unless converted earlier to a nonexclusive license pursuant to
Paragraph 4.4 hereof or pursuant to a requirement by the United States
Government in accordance with 35USC200-211.
2.3 LICENSEE shall have the right to sublicense all or any part of this
license. LICENSEE agrees that any sublicenses granted by it shall provide that
the obligations to XXXXX XXXXXXX of Articles II, VIII, IX, X, XIII, XV, and
Paragraphs 5.1 and 5.2 of this
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Agreement shall be binding upon the sublicensees as if it were a party to this
Agreement. LICENSEE further agrees to attach copies of these Articles to
sublicense agreements.
2.4 LICENSEE agrees to forward to XXXXX XXXXXXX a copy of any and all
fully executed sublicense agreements, and further agrees to forward to XXXXX
XXXXXXX, quarterly, pursuant to Paragraph 5.2 a copy of such reports received
by LICENSEE from its sublicensees during the preceding twelve (12) month period
under the sublicense as shall be pertinent to a royalty accounting under said
sublicense agreements.
2.5 Subject to Sections 2.6, 2.7 and 15.7 below, the license granted
hereunder shall not be construed to confer any rights upon LICENSEE by
implication, estoppel or otherwise as to any technology not specifically set
forth in Appendix A, Appendix B, Appendix C, and Appendix D hereof.
2.6 XXXXX XXXXXXX hereby also grants to LICENSEE a right of first
negotiation at then commercially reasonable terms, to obtain an exclusive
license to any Inventions, as previously defined, developed during the term of
this Agreement and any extension thereof and pursuant to any Research Agreement
between the parties hereto (Appendix D). XXXXX XXXXXXX shall promptly give
LICENSEE written notice of any such Inventions, as defined, and LICENSEE shall
have one hundred and twenty (120) days from the date of receipt of such notice
to give XXXXX XXXXXXX written notice of its intent to exercise such option and
complete negotiations. XXXXX XXXXXXX shall not negotiate with any third party
regarding these Inventions during the period of LICENSEE's right to negotiate.
During the term of this Agreement and any extension thereof, Xx. Xxxxxxxxxxxxxx
shall be free to pursue any scientific investigations of his choice through
collaboration with colleagues. Should any such collaboration involve a Licensed
Product or Licensed Process, XXXXX XXXXXXX will take the initiative of promptly
communicating
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with these colleagues for the purpose of using its reasonable best efforts to
have such colleagues agree to be bound by the terms of this Agreement with
regard to Licensed Products and Licensed Processes.
2.7 Appendix B attached hereto contains ideas conceived by Xx.
Xxxxxxxxxxxxxx for developing laboratory reagents, diagnostics, and
pharmaceuticals relating to chimeric restriction endonucleases. Xx.
Xxxxxxxxxxxxxx shall give written notice of any Invention resulting under the
Advanced Technology Program within sixty (60) days of the completion of the
funding of such program. Any Invention resulting in whole or in part from said
ideas which are made pursuant to an award under the Advanced Technology Program
where a grant application was filed on March 29, 1995 (Appendix C) shall be
assigned to LICENSEE pursuant to Section 15.7 below and Xx. Xxxxxxxxxxxxxx will
be named as sole inventor unless another individual makes a creative input to
said Invention. LICENSEE shall have the first right of negotiation, under then
commercially reasonable terms, to obtain an exclusive, royalty-bearing license
under any Invention resulting from said ideas in Appendix B made by Xx.
Xxxxxxxxxxxxxx with funding from a source other than the Advanced Technology
Program grant.
ARTICLE III - DUE DILIGENCE
3.1 In order to assure the diligent development of the Licensed Products
and Licensed Processes, LICENSEE shall either fulfill the due diligence
milestones set forth in Paragraph 3.2 below or make the minimum royalty
payments set forth in Paragraph 3.3 below.
3.2 LICENSEE's due diligence milestones shall be a follows:
(a) Within six (6) months from the date of this Agreement, LICENSEE
shall deliver a business plan describing a program for the
development of the Patent Rights.
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(b) Within four (4) years from the Effective Date of this Agreement,
LICENSEE shall have spent or caused to be spent, either directly
by LICENSEE or indirectly pursuant to agreements entered into by
LICENSEE (including Research Agreement funding and grant funding
provided by or associated with LICENSEE to XXXXX XXXXXXX), a
total of One Million Dollars ($1,000,000) on activities relating
to the research and development, marketing, sale, manufacture,
lease and use of Licensed Products and Licensed Processes. All
amounts expended on Licensed Products and Licensed Processes
shall be credited toward the above indicated amounts, including
but not limited to salaries, overhead salaries, overhead,
capital, equipment, consulting fees and cost of materials.
(c) Within four (4) years from the Effective Date of this Agreement,
LICENSEE shall submit an Experimental Plan for, and begin
experimental work on, an appropriate testing program for at least
one (1) Licensed Product. Such Experimental Plan shall be
sufficiently detailed and comprehensive that, in the good faith
opinion of LICENSEE and its counselors, the Plan shall, if
successful, be reasonably adequate to support a credible and
potentially successful Investigative New Drug (IND) application
to the U.S. Food and Drug Administration within seven (7) years
from the Effective Date of this Agreement.
(d) Within seven (7) years of the Effective Date of this Agreement,
LICENSEE shall have submitted a complete Investigative New Drug
application to the U.S. FDA, such IND to be supported with
appropriate studies and other toxicity and safety tests as may be
required by the FDA.
(e) Within three (3) years of the Effective Date of this Agreement,
LICENSEE shall have made a first commercial sale of at least one
(1) Licensed Product.
3.3 In the event that LICENSEE has failed to meet any particular due
diligence milestone set forth in Paragraph 3.2 above on or before the date set
forth therein with respect to each such milestone, XXXXX XXXXXXX shall notify
LICENSEE thereof and LICENSEE shall have ninety (90) days following such
notification either to establish to the
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reasonable satisfaction of XXXXX XXXXXXX that it has met such milestone or to
make the initial penalty payment referred to in Paragraph 3.4 below.
3.4 In the event that LICENSEE shall have failed to establish its
achievement of any particular milestone to the reasonable satisfaction of XXXXX
XXXXXXX as set forth in Paragraph 3.3 above, XXXXX XXXXXXX shall have the right
to terminate this Agreement, unless LICENSEE shall make to XXXXX XXXXXXX the
following penalty payments:
(a) To maintain the exclusive rights granted herein on an exclusive
basis as set forth in Paragraph 2.2, the amount of *
in the year of the breach and *
annually thereafter until the breach is cured;
with such amount increasing to *
annually commencing the eighth year following the
Effective Date of this Agreement.
(b) To maintain its rights granted herein without the exclusivity
provisions of Paragraph 2.2, the sum of *
in the year of the breach and *
per year thereafter until cured.
The penalty payments described in (a) and (b) above shall only be due
within thirty (30) days following the failure of LICENSEE to achieve a
milestone or cure such failure within the ninety (90) days set forth in
Paragraph 3.3 above. LICENSEE's obligation to make such penalty payments shall
terminate when the applicable milestone has been met.
ARTICLE IV - ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay to XXXXX XXXXXXX in the manner hereinafter provided for so long as
LICENSEE by its activities would, but for the licenses granted herein, infringe
a valid, enforceable claim of an unexpired Patent Right or until this Agreement
shall be terminated as hereinafter
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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provided:
(a) At the time that LICENSEE closes financing equal to a total
cumulative equity investment of at least Five Hundred Thousand
Dollars ($500,000) ("Initial Financing"), LICENSEE shall issue to
XXXXX XXXXXXX that number of common units equal to that portion
of the total number of common and preferred units issued with
respect to the first Five Hundred Thousand Dollars ($500,000) in
equity capital invested in the LICENSEE multiplied by 0.075. If
the preferred units issued in any financing have antidilution
protection, XXXXX XXXXXXX shall be entitled to equivalent
protection for its common units. XXXXX XXXXXXX shall also be
entitled, at its sole option, to invest its own funds in the
second and any subsequent round of investment funding at a price
per unit which is the same price as is offered to other second
round investors, for up to a total number of shares such that
XXXXX XXXXXXX' share of equity in the Company would remain at
seven-and-one-half percent (7.5%).
(b) At the time that the cumulative equity capital invested in the
Company is equal to Two Million Dollars ($2,000,000), LICENSEE
shall pay to XXXXX XXXXXXX:
(i) a License Issue Fee of *
* of said License Issue Fee
shall be considered an Administrative Signing Fee); and
(ii) shall commence annual maintenance fees of *
* due on January 1 of each year following the
financing date.
(c) LICENSEE shall also pay to XXXXX XXXXXXX a running royalty on
Licensed Products during the Exclusive Period for such products
as follows:
(i) For sales by LICENSEE and it Subsidiaries:
(1) for reagent products, *
* of Net Sales; *
* of Net Sales; and
*
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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* ;
(2) for diagnostic products, * of Net Sales;
* of Net Sales; and *
* of Net Sales in excess of *
* ; and
(3) for therapeutic products, *
* of Net Sales; * of Net Sales; and
* of Net Sales in excess of *
* .
(ii) for sales by sublicensees:
(1) for reagents products, the greater of * of Net Sales
or * sublicense royalties received by
LICENSEE;
(2) for diagnostic products, the greater of * of Net
Sales or * of * sublicense
royalties received by LICENSEE; and
(3) for therapeutic products, the greater of * of Net
Sales or * of sublicense royalties received
by LICENSEE.
(d) LICENSEE shall pay to XXXXX XXXXXXX * of initial License Fees
(excluding all other forms of payment including, but not limited
to, research funding) LICENSEE receives from all sublicensees.
(e) During the nonexclusive period for any Licensed Product, LICENSEE
shall pay to XXXXX XXXXXXX a running royalty on the Net Sales of
such Licensed Products sold by LICENSEE, its Subsidiaries and its
sublicensees equal to * the royalty set forth in (c)
above for sales during the Exclusive Period.
4.2 No multiple royalties shall be payable because any Licensed Product,
its
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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manufacture, lease or sale are or shall be covered by more than one patent
application or patent licensed under this Agreement or acquired under a license
pursuant to Paragraph 2.6 or 2.7. If a Licensed Product is covered by this
Agreement and a License Agreement pursuant to Paragraph 2.6 and/or 2.7 the
highest applicable royalty rate will apply. If, as to any Licensed Product,
LICENSEE is required to pay a royalty to any third party, the royalty rates set
forth in Paragraph 4.1 shall be reduced by * of the royalty rates
paid to the third party, but in no event shall the rates in Paragraph 4.1 be
reduced by more than * .
4.3 Royalty payments shall be paid in United States dollars in Baltimore,
Maryland, at the time and in the manner provided in Article V below. If any
currency conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made by using the exchange rate
prevailing at the Bank of America Corporation on the last business day of the
calendar quarterly reporting period to which such royalty payments relate.
4.4 At the end of the first calendar year beginning after the first
commercial sale of a Licensed Product by LICENSEE, a subsidiary, or a
* , and each calendar year thereafter (hereinafter "Royalty Year"),
LICENSEE shall pay XXXXX XXXXXXX the greater of royalties payable pursuant to
Paragraph 4.1(c) or a minimum annual royalty according to the following
schedule:
At the End of the First Royalty Year - *
At the End of the Second Royalty Year - *
At the End of the Third and Through
the Ninth Royalty Year - *
At the End of the Tenth and Each
Subsequent Royalty Years - *
Said minimum annual royalty shall be paid to XXXXX XXXXXXX within thirty (30)
days of
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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the end of each Royalty Year. Failure by LICENSEE to pay the minimum annual
royalty required by this Paragraph 4.4 shall give XXXXX XXXXXXX the right to
convert the exclusive license granted by this Agreement to a nonexclusive
license.
ARTICLE V - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to XXXXX XXXXXXX hereunder. Said books of account shall be kept
at LICENSEE's principal place of business or the principal place of business of
the appropriate Division of LICENSEE to which this Agreement relates. Said
books and the supporting data shall be open at all reasonable times for five
(5) years following the end of the calendar year to which they pertain, to the
inspection of XXXXX XXXXXXX or its agents for the purpose of verifying
LICENSEE's royalty statement or compliance in other respects with this
Agreement.
5.2 Commencing with the first commercial sale of a Licensed Product,
LICENSEE, within sixty (60) days after March 31, June 30, September 30 and
December 31, of each year, shall deliver to XXXXX XXXXXXX true and accurate
reports, giving such particulars of the business conducted by LICENSEE, its
Subsidiaries and its sublicensees during the preceding three-month period under
this Agreement as shall be pertinent to a royalty accounting hereunder. These
shall include at least the following:
(a) All Licensed Products manufactured and sold.
(b) Total xxxxxxxx for Licensed Products sold.
(c) Accounting for all Licensed Processes used or sold.
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(d) Deductions applicable as provided in Paragraph 1.6.
(e) Total royalties due.
(f) Names and addresses of all sublicensees of LICENSEE.
Where reasonably practical, LICENSEE shall, to the best of its knowledge,
subcategorize the Licensed Products sold so as to assign the royalties paid to
individual patent(s) of Appendix A. Such subcategorization shall be for XXXXX
XXXXXXX administrative purposes only and shall in no way affect any obligations
of any part or the amounts of royalties to be paid under this Agreement. Until
there has been a first commercial sale of a Licensed Product, the LICENSEE
shall give an annual report of LICENSEE's efforts to achieve a first commercial
sale.
5.3 With each such report submitted, LICENSEE shall pay to XXXXX XXXXXXX
the royalties due and payable under this Agreement. If no royalties shall be
due, LICENSEE shall so report.
5.4 The royalty payments set forth in this Agreement shall, if overdue,
bear interest until payment at a per annum rate * the
prime rate in effect at Bank of America on the due date. The payment of such
interest shall not foreclose XXXXX XXXXXXX from exercising any other rights it
may have as a consequence of the lateness of any payments.
ARTICLE VI - PATENT PROSECUTION
6.1 XXXXX XXXXXXX represents that Appendix A, as amended from
time-to-time, contains an accurate and complete listing of the patent
applications and issued patents included within the Patent Rights. XXXXX
XXXXXXX agrees to promptly amend Appendix A within thirty (30) days of any new
Invention made pursuant to the ATP.
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* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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6.2 XXXXX XXXXXXX warrants that it has the right to grant the rights and
licenses granted herein to LICENSEE free and clear of all liens and
encumbrances, except to the extent set forth in Article XII.
6.3 Within ninety (90) days of the completion of the financing set forth
in Paragraph 4.1(b), LICENSEE shall reimburse XXXXX XXXXXXX for
previously-incurred as well as future expenses paid to third parties relating
to drafting, filing, prosecuting and maintaining U.S. and foreign patent
applications and patents included in the Patent Rights; provided, however, if
such reimbursement amount exceeds Fifty Thousand Dollars ($50,000), then the
amount above $50,000 shall be due twenty-four (24) months from the date of the
initial payment, XXXXX XXXXXXX shall, on LICENSEE's request and expense, file,
prosecute, and maintain appropriate additional foreign patent applications and
patents directed to the inventions which will be included in the Patent Rights
and LICENSEE shall be licensed thereunder. If LICENSEE elects not to pay
expenses associated with filing, prosecuting, and maintaining U.S. and foreign
patent applications and patents directed to the inventions, XXXXX XXXXXXX may
file, prosecute, and maintain such U.S. and foreign patent applications and
patents at its own expense and LICENSEE shall not be licensed thereunder.
6.4 With regard to substantive correspondence, patent applications and
patents included in the Patent Rights, XXXXX XXXXXXX shall in a timely manner
send LICENSEE (a) copies of all proposed patent applications and correspondence
to the respective patent office, give LICENSEE an opportunity to comment
thereon, and incorporate such changes as reasonably requested by LICENSEE; and
(b) copies of correspondence from the patent office.
6.5 XXXXX XXXXXXX shall reasonably respond to LICENSEE's request for
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change in outside patent counsel.
ARTICLE VII - INFRINGEMENT
7.1 Each party to this Agreement shall promptly notify the other party in
writing of any alleged infringement and of any available evidence of
infringement by a third party of any patents within the Patent Rights of which
it becomes aware.
7.2 During the term of this Agreement, LICENSEE shall have the right, but
shall not be obligated, to prosecute at its own expense any such infringements
of the Patent Rights and, in furtherance of such right, LICENSEE hereby agrees
that XXXXX XXXXXXX may join LICENSEE as a party plaintiff in any such suit,
without expense to XXXXX XXXXXXX, provided, however, that such right to bring
an infringement action shall remain in effect only for so long as the license
granted herein remains exclusive. No settlement, consent judgment or other
voluntary final disposition of the suit may be entered into without the consent
of XXXXX XXXXXXX, which consent shall not unreasonably be withheld. LICENSEE
shall indemnify XXXXX XXXXXXX against any order for costs or other expenses
that may be made against XXXXX XXXXXXX in such proceedings. The total cost of
any such infringement action commenced or defended solely by LICENSEE shall be
borne by LICENSEE, and LICENSEE shall keep any recovery damages for past
infringement derived therefrom, after payments to XXXXX XXXXXXX of the royalty
rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery,
damages or any other amount received in any form of disputation and/or in
settlement of any infringement or alleged infringement of the Patent Rights
remaining after LICENSEE has reimbursed itself for all costs, including legal
costs, associated with the prosecution.
7.3 If within six (6) months after having been notified of any alleged
infringement,
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LICENSEE shall have been unsuccessful in persuading the alleged infringer to
desist and shall not have brought and shall not be diligently prosecuting any
infringement action, or if LICENSEE shall notify XXXXX XXXXXXX at any time
prior thereto of its intention not to bring suit against any alleged
infringer, then, XXXXX XXXXXXX shall have the right, but shall not be obligated
to prosecute at its own expense any infringement of the Patent Rights, and
XXXXX XXXXXXX may, for such purposes, use the name of LICENSEE as party
plaintiff without expense to LICENSEE, and XXXXX XXXXXXX shall keep any
recovery or damages derived therefrom.
7.4 In the event that a declaratory judgment action alleging invalidity
or noninfringement of any of the Patent Rights shall be brought against
LICENSEE, XXXXX XXXXXXX at its option, shall have the right, within thirty (30)
days after commencement of such action, to intervene and participate in the
defense of the action at their own expense.
7.5 In any infringement suit that any party hereto may institute to
enforce the Patent Rights pursuant to this Agreement, the other party hereto
shall, at the request and expense of the party initiating 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.
7.6 LICENSEE, during the Exclusive Period of this Agreement, shall have
the sole right in accordance with the terms and conditions herein to sublicense
any alleged infringer under the Patent Rights to avoid future infringements.
Amounts received from any such sublicensee constituting retroactive royalties
shall be considered amounts received in settlement and accounted for under
Paragraph 7.2 above. Otherwise, amounts received from such sublicensee shall be
treated in accordance with Paragraph
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4.1(c) above.
ARTICLE VIII - LIABILITY
8.1 Inasmuch as XXXXX XXXXXXX will not, under the provisions of this
Agreement or otherwise, have control over the manner in which LICENSEE, or its
Subsidiaries or its agents or its sublicensees or those operating for its
account, or third parties who purchase Licensed Products from any of the
foregoing entities, practice any invention encompassed by the license granted
herein, LICENSEE shall defend and hold XXXXX XXXXXXX, it trustees, officers,
employees, students, and affiliates harmless as against any judgments, fees,
expenses or other costs (including reasonable attorneys' fees) arising from or
incidental to any product liability or other lawsuit brought as a consequence
of the practice of said invention by any of the foregoing entities, whether or
not XXXXX XXXXXXX is named as party defendant in any such lawsuit. LICENSEE
shall have the right to defend such a product liability lawsuit with counsel of
its own choosing and XXXXX XXXXXXX will cooperate in the defense of such action
at LICENSEE's expense. Practice of the Invention encompassed by the license
granted herein by a Subsidiary or an agent or a sublicensee, or a third party
on behalf of or for the account of LICENSEE or by a third party who purchases
Licensed Products from any of the foregoing shall be considered LICENSEE's
practice of said invention for purposes of this Paragraph 8.1. The provisions
of this Paragraph 8.1 shall survive termination of this Agreement.
8.2 LICENSEE shall maintain or cause to be maintained, prior to the first
planned use of Licensed Products or Licensed Processes in humans, product
liability insurance or other protection reasonably acceptable to XXXXX XXXXXXX
which shall
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protect LICENSEE and XXXXX XXXXXXX in regard to events covered by Paragraph 8.1
above. LICENSEE will disclose to XXXXX XXXXXXX the amount and kind of product
liability insurance it obtains, will give XXXXX XXXXXXX a copy of the
certificate of insurance, and will increase or change the kind of insurance at
the reasonable request of XXXXX XXXXXXX, provided such insurance is available
to LICENSEE at commercially reasonable rates.
8.3 Except as otherwise expressly set forth in this Agreement, XXXXX
XXXXXXX makes no representations and extend no warranties of any kind, either
express or implied, including but not limited to warranties of merchantability,
fitness for a particular purpose, and validity of Patent Rights claims, issued
or pending.
8.4 No liability under this Agreement shall result to a party from delay
in performance caused by force majeure, that is, circumstances beyond the
reasonable control of the party affected thereby, including, without
limitation, acts of God, earthquake, fire, flood, war, government regulations,
labor unrest, or shortage of or an inability to obtain material or equipment.
ARTICLE IX - EXPORT CONTROLS
It is understood that XXXXX XXXXXXX 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 1979), and that their
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
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LICENSEE that LICENSEE shall not export data or commodities to certain foreign
countries without prior approval of such agency. XXXXX XXXXXXX neither
represents that a license shall not be required nor that, if required, it shall
be issued.
ARTICLE X - NON-USE OF NAMES
LICENSEE shall not use the name of XXXXX XXXXXXX, nor any of its
employees, or any adaptation thereof, in any advertising, promotional or sales
literature without prior written consent obtained from XXXXX XXXXXXX in each
case, except that LICENSEE may state that it is licensed by XXXXX XXXXXXX under
one or more of the patents and/or applications comprising the Patent Rights.
ARTICLE XI - ASSIGNMENT
This Agreement may not be assigned, in whole or in part, except in
conjunction with the sale of the entire business, or an operating business
division, of LICENSEE to which the Patent Rights relate, without the prior
consent of XXXXX XXXXXXX, which consent shall not be unreasonably withheld.
ARTICLE XII - GOVERNMENT RIGHTS
12.1 Pursuant to 35USC202, XXXXX XXXXXXX has elected to take all rights,
title and interest in the inventions forming the basis of the Patent Rights.
12.2 LICENSEE hereby specifically agrees to cooperate with XXXXX XXXXXXX
in abiding by the terms and conditions imposed on XXXXX XXXXXXX pursuant to
35USC200-211 and the regulations promulgated thereunder.
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12.3 XXXXX XXXXXXX warrants that it has compiled with and will continue
to comply with all duties and obligations running from XXXXX XXXXXXX to the
Government pursuant to 35USC200-211 and the regulations promulgated thereunder.
12.4 LICENSEE agrees to manufacture in the United States those Licensed
Products which are sold and used in the United States.
ARTICLE XIII - TERMINATION
13.1 This Agreement shall terminate if LICENSEE dissolves, unless this
Agreement has been assigned prior to the date of dissolution.
13.2 Should LICENSEE fail to pay XXXXX XXXXXXX royalties due and payable
hereunder, XXXXX XXXXXXX shall have the right to terminate this Agreement on
sixty (60) days' written notice, unless LICENSEE shall pay XXXXX XXXXXXX within
the sixty (60) day period, all such royalties and interest due and payable.
Upon the expiration of the sixty (60) day period, if LICENSEE shall not have
paid all such royalties and interest due and payable, the rights, privileges
and license granted hereunder shall terminate.
13.3 Upon any material breach or default of this Agreement by LICENSEE
other than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove,
which shall always take precedence in that order over any material breach or
default referred to in this Paragraph 13.3, XXXXX XXXXXXX shall have the right
to terminate this Agreement and the rights, privileges and license granted
hereunder by giving ninety (90) days' notice to LICENSEE. Such termination
shall become effective unless LICENSEE shall have cured any such breach or
default prior to the expiration of the ninety (90) day period.
13.4 LICENSEE shall have the right to terminate this Agreement at any
time on six (6) months' notice to XXXXX XXXXXXX and upon payment of all amounts
due XXXXX
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XXXXXXX.
13.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. LICENSEE and any Subsidiary
and sublicensee thereof may, however, after the effective date of such
termination, sell all Licensed Products, and complete Licensed Products in the
process of manufacture at the time of such termination and sell the same,
provided that LICENSEE shall pay to XXXXX XXXXXXX the royalties thereon as
required by Article IV of this Agreement and shall submit the reports required
by Article V hereof on the sales of Licensed Products.
13.6 Upon termination of this Agreement for any reason during the
Exclusive Period, any sublicensee not then in default shall have the right to
seek a license from XXXXX XXXXXXX under the same terms and conditions as set
forth hereunder.
13.7 The provisions of Paragraph 8.1, Article IX, and Article X shall
survive termination of this Agreement.
ARTICLE XIV - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such
party by certified first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
In the case of XXXXX XXXXXXX:
Xxxxx Xxxxxxx University
000 Xxxxxxxxx Xxxx
Xxxxxxx and 00xx Xxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxx X. Xxxxx, Ph.D.
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[Blank]
22
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With a copy to:
Associate Xxxx for Corporate Affairs
Xxxxx Xxxxxxx University
School of Hygiene and Public Health
000 Xxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxx X. Xxxxxxxx, Ph.D.
In the case of LICENSEE:
Xxxxxx Xxxxxxxx
Sangamo BioSciences, Inc.
X.X. Xxx 000
Xxxx, Xxxxxxxxxx 00000
With a copy to:
Xxxxxxx Xxxxxxxxx, Esq.
Xxxxxxx, Phleger & Xxxxxxxx
Two Embarcadero Place
0000 Xxxx Xxxx
Xxxx Xxxx, Xxxxxxxxxx 00000
ARTICLE XV - MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the State of Maryland, U.S.A., except that
questions affecting the validity, construction and effect of any patent
licensed hereunder, shall be determined by the law of the country in which the
patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
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15.3 The provisions of this Agreement are severable, and in the event that
any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 LICENSEE agrees to xxxx the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed Products
shipped to or sold in other countries shall be marked in such a manner as to
conform with the patent laws and practice of the country of manufacture or sale.
15.5 The failure of any party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not constitute a
waiver of that right or excuse a similar subsequent failure to perform any such
term or condition by the other party.
15.6 Claims, disputes, or controversies concerning the validity,
construction, or effect of any patent licensed hereunder shall be resolved in
any court having jurisdiction thereof.
15.7 A grant application under the Advanced Technology Program was filed on
Xxxxx 00, 0000 (Xxxxxxxx X). If a grant is awarded, any Invention made pursuant
thereto where an investigator at XXXXX XXXXXXX is the sole inventor or a
coinventor shall be assigned to LICENSEE. Such Invention shall be assigned
hereunder and shall thereafter fall within the definition of Patent Rights and
therefore shall be subject to Sections 3.2, 3.3 and 3.4 hereof and to the
royalty payments required by Sections 4.1(c)(i), 4.1(d) and 4.4 hereof as part
of the rights licensed hereunder.
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IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement the day and year set forth below.
XXXXX XXXXXXX UNIVERSITY
By:
-------------------------------------------------------
Xxxxxxx X. Xxxxxx, Xx., MBA, CPA
Senior Associate Xxxx, Finance and Administration
Date:
----------------------------------
OR
By: /s/ Xxxx X. Xxxxxxxx
-------------------------------------------------------
Xxxx X. Xxxxxxxx, Ph.D.
Associate Xxxx, Corporate Affairs
Date: July 10th, 1995
----------------------------------
AND
By: /s/ Xxxx Xxxxxxxx
-------------------------------------------------------
Xxxx Xxxxxxxx, Ph.D.
Chairman, Environmental Health Sciences
Date: 7/10/95
----------------------------------
SANGAMO BIOSCIENCES, INC.
By: /s/ Xxxxxx X. Xxxxxxxx XX
-------------------------------------------------------
Xxxxxx X. Xxxxxxxx XX
President
Date: June 30, 1995
----------------------------------
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APPENDIX A
PATENTS:
APPENDIX B
INVENTION DISCLOSURES:
APPENDIX C
ADVANCED TECHNOLOGY PROGRAM GRANT PROPOSAL:
APPENDIX D
RESEARCH AGREEMENT:
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THE XXXXX XXXXXXX UNIVERSITY
BALTIMORE, MD 21218-2696
Xxxx X. Xxxxxxx, C.F.A. Office of Technology Transfer
Director 708 N Xxxxx Xxxx Center
0000 X. Xxxxxxx Xxxxxx
(000) 000-0000
Fax (000) 000-0000
AMENDMENT NO. 1
TO THE LICENSE AGREEMENT between
Xxxxx Xxxxxxx University and Sangamo Biosciences, Inc.
This Amendment No. 1, dated June 1, 1998 ("Effective Date") to the License
Agreement dated June 29, 1995 concerning the licensing and other matters of
patent properties referred to in the License Agreement as "Functional Domains in
Flavobacterium Okeanokoites (FOK1) Restriction Endonuclease", US Patent
Application Serial Number 07/862,831, filed April 3, 1992, JHU Reference C-1191,
(Xx. Xxxxxxxxxx Xxxxxxxxxxxxxx, Inventor) and other Patent Rights, is entered
into between Xxxxx Xxxxxxx University, a not-for-profit educational institution
having an address at 0000 X. Xxxxxxx Xxxxxx, Xxxxxxxxx, XX ("XXXXX XXXXXXX" or
"JHU") and Sangamo Biosciences, Inc., a corporation of the State of Delaware and
having a principal place of business at Point Richmond Tech Center, 000 Xxxxx
Xxxx, Xxxxx X-000, Xxxxxxxx, XX ("LICENSEE").
This document amends the License Agreement by the following:
1. In Paragraph 4.1, delete in its entirety paragraph 4.1.(c). Replace with
new Paragraph 4.1.(c):
4.1.(c) LICENSEE shall also pay to XXXXX XXXXXXX a running
royalty on Licensed Products as follows:
(i) for therapeutic products, * of Net
Sales
(ii) for diagnostic products, * of Net
Sales
(iii) for reagent products, * of
Net Sales
2. Delete in its entirety Paragraph 4.4, and replace with the following new
Paragraph 4.4:
4.4 LICENSEE shall pay to XXXXX XXXXXXX a minimum annual royalty
according to the following schedule and within thirty (30) days
of the end of the calendar year:
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
28
Amendment No. 1
Sangamo License Agreement
page 2
1999,2000 * per year
2001-2005 * per year
2006 and until termination * per year
Failure by LICENSEE to pay the minimum annual royalty required by
this Paragraph 4.4 shall give XXXXX XXXXXXX the right to convert
the exclusive license granted by this Agreement to a nonexclusive
license.
3. Add new Paragraph 4.5 as follows:
4.5 For the rights, privileges and license granted by Amendment
No. 1, dated ______, LICENSEE agrees to pay to XXXXX XXXXXXX the
sum of * ,
payable in equal installments within eighteen months of the
Effective Date of Amendment No. 1.
4. Add new Paragraph 6.6 as follows:
6.6 LICENSEE shall have the right, but not the obligation, to
assume primary responsibility for patent prosecution. XXXXX
XXXXXXX hereby agrees to reasonably cooperate with the transfer
of case files, execution of appropriate documents and any other
matters needed for LICENSEE to assume such responsibility. In
such case, LICENSEE shall provide to JHU copies of all
correspondence from and to the US PTO and international
equivalents with sufficient time to allow for comment by JHU.
LICENSEE shall endeavor to accommodate JHU's comments into a
reasonable patent prosecution strategy. In no case shall LICENSEE
abandon any application or patent in any country without prior
approval from JHU. In any country where the LICENSEE elects not
to have a patent application filed or to pay expenses associated
with filing, prosecuting, or maintaining a patent application or
patent, LICENSEE shall notify JHU allowing at least thirty (30)
days for JHU to assume such responsibilities. JHU may file,
prosecute, and/or maintain a patent application or patent at its
own expense and for its own exclusive benefit and the LICENSEE
thereafter shall not be licensed under such patent or patent
application. Upon termination of this Agreement, LICENSEE shall
immediately transfer all case files, execute any appropriate
documents related to patent matters and cooperate in any other
matters needed for JHU to assume responsibility for patent
prosecution.
2
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
29
Amendment No. 1
Sangamo License Agreement
page 3
5. In Paragraph 13.7, add after "Article X", insert, "Paragraph 4.5 and
Paragraph 6.6".
6. Add new Paragraph 15.8 as follows:
15.8 With respect to "Methods for Inactivating Target DNA and
For Detecting Conformation Change in a Nucleic Acid", Inventor,
Xxxxxxxxxx Xxxxxxxxxxxxxx, US Patent Application SN 08/647,449,
Filed 5/7/96 (JHU Docket: C-1288), LICENSEE hereby acknowledges
and agrees that Xx. Xxxxxxxxxxxxxx is the sole inventor of this
property.
7. In Appendix A, add:
5. "General Method to Clone Hybrid Restriction Endonucleases
Using lig Gene"
Xxxxxxxxxx Xxxxxxxxxxxxxx,
US Patent Application SN 08/575,361 Filed 12/24/95
JHU Docket: C-1274
6. "Methods for Inactivating Target DNA and For Detecting
Conformation Change in a Nucleic Acid"
Xxxxxxxxxx Xxxxxxxxxxxxxx,
US Patent Application SN 08/647,449 Filed 5/7/96
JHU Docket: C-1288
8. Except as expressly modified by this Amendment No. 1, the License Agreement
shall remain in full force and effect.
9. In Paragraph 3.2(e) change it to read, "Within seven (7) years of the
Effective Date of this Agreement, LICENSEE shall have made a commercial
sale of at least one (1) Licensed Product."
3
30
Amendment No. 1
Sangamo License Agreement
page 4
IN WITNESS WHEREOF, the parties have caused this Amendment to be duly
executed and delivered as of the date first written above.
For Sangamo Biosciences, Inc.:
/s/ Xxxxxx X. Xxxxxxxx XX 7/16/98
-------------------------------------- ---------------
Xxxxxx X. Xxxxxxxx XX Date
President
For Xxxxx Xxxxxxx University:
/s/ Xxxxxxx X. Xxxxxx, J. 7/8/98
-------------------------------------- ---------------
Xxxxxxx X. Xxxxxx, J., MBA, CPA Date
Senior Associate Xxxx, Finance and
Administration
Sangamo Amendment #1 (6/29/98)
4
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Xx. Xxxx X. Xxxxxxx
Director, Office of Technology Transfer
Xxxxx Xxxxxxx University
708N Xxxxx Xxxx Center
0000 X. Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Dear Nina:
As you know, the License Agreement between Xxxxx Xxxxxxx
University ("JHU") and Sangamo BioSciences, Inc. dated June 29, 1995, in Article
IV(a) at page 9, grants JHU certain rights to invest its own funds in investment
funding of Sangamo.
Sangamo has filed a Registration Statement with the SEC for an
initial public offering ("IPO") which we expect will take place in late March or
April 2000. While we understand that Article IV(a) was intended to apply to
private financings prior to our IPO, Xxxxxx Bros., our lead underwriter, has
asked us to have you confirm that paragraph (a) of Article IV will terminate
upon our IPO. In accordance with our telephone conversation on March 9, 2000, in
order to make it completely clear that Article IV(a) will not apply to our IPO
and thereafter Sangamo will pay JHU $25,000 upon receipt of a signed copy of
this letter and an additional $25,000 on September 15, 2000 in consideration for
the following amendment to the License Agreement and Agreement:
Article IV(a) is hereby amended by adding the following sentence
at the end of paragraph (a): "THE PROVISIONS OF THIS PARAGRAPH
(a) WILL TERMINATE UPON THE SALE BY THE COMPANY OF ITS COMMON
STOCK IN ITS INITIAL PUBLIC OFFERING MADE PURSUANT TO A
REGISTRATION STATEMENT DECLARED EFFECTIVE BY THE SECURITIES AND
EXCHANGE COMMISSION."
JHU acknowledges that Sangamo has complied with all of the provisions of Article
IV(a).
Please sign a copy of this letter and return it to me at your
earliest convenience. We appreciate your cooperation in helping us become a
public company.
Sincerely,
Xxxxxx Xxxxxxxx
THE FOREGOING IS AGREED TO:
XXXXX XXXXXXX UNIVERSITY
By:
--------------------------------
Dated: , 2000
----------------------
