[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
Exhibit 10.17
EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT made as of September 5th, 2003.
BETWEEN:
MOLECULAR INSIGHT PHARMACEUTICALS, INC. F/K/A BIOSTREAM, INC.
a corporation incorporated under the laws of the State of
Massachusetts, and having a place of business at 000 Xxxxxx Xxxxxx,
Xxxxxxxxx, XX, (the "Licensee")
AND:
THE UNIVERSITY OF WESTERN ONTARIO,
a corporation under the Universities Act (Ontario)
(the "University")
WHEREAS:
A) the University is the owner of certain Technology (as defined herein)
relating to the University's Invention Numbers 01-003 and 02-018 known as:
"Polymer Precursors of Radiolabeled Compounds and Methods of Making and
Using the Same" and "Polymer-Supported Propenyl Mesylates as Precursors
for the Radiolabelling of Amines, Sulfides and Ethers" respectively, and
has the authority and capacity to grant licenses to the Technology;
B) the University wishes to have the Technology developed and commercialized
to benefit the public and is willing to grant a license to any underlying
Patent Rights thereto; and
C) the Licensee wishes to obtain from the University and the University has
agreed to grant a license to the Licensee to commercially exploit the
Technology on the terms set out.
NOW THEREFORE in consideration of the premises and of the mutual covenants set
forth herein, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 For purposes of this Agreement, the following words and phrases shall have
the following meanings:
(a) "Business Day" means every day other than Saturday, Sunday, and
statutory holidays in the Province of Ontario or the Commonwealth of
Massachusetts;
Page 1 of 27
(b) "Confidential Information" means scientific, technical and/or
business information (including written descriptions, drawings,
samples, compositions, formulae, visual demonstrations, prototypes
and other data) which is disclosed by one party (the "Discloser") to
the other party (the "Recipient") and which is in each case marked
or identified (either in writing or orally) as confidential at the
time of disclosure.
(c) "Effective Date" means the date on which this Agreement shall come
into effect, which shall be the 5th day of September, 2003;
(d) "Field of Use" means all uses of the Technology;
(e) "Net Revenue" means all revenues and receipts directly or indirectly
receivable by the Licensee and, where sublicensing is permitted
hereunder, its sub-licensees or payable to the Licensee and its
sub-licensees, from third party use, sale, distribution, leasing or
sublicensing of Licensed Products and/or the use of Licensed
Processes, calculated on the basis of the Licensee's fiscal year, or
part thereof, less the following amounts relating to such sales: (i)
discounts allowed in amounts that are reasonable and customary in
the trade; (ii) actual freight and insurance costs incurred in
transporting Licensed Products to such purchasers; (iii) sales, use,
value-added and other direct taxes incurred in respect of sale of
Licensed Products; (iv) customs duties, surcharges and other
governmental charges incurred in connection with the export or
import of Licensed Products; and (v) amounts credited or allowed on
returns. No deductions shall be made for commissions or fees paid to
persons whether independent sales agents, or are employed by the
Licensee or its sub-licensee, or for other similar costs.
Notwithstanding anything in this Agreement to the contrary, revenues
and receipts shall be considered directly or indirectly receivable
by Licensee when the Licensee receives such amounts owed to it;
provided, however, that the Licensee has exercised commercially
reasonable efforts to collect all amounts owed to it by its
sub-licensees or other third parties in connection with the licenses
granted hereunder in a timely manner. Licensed Products shall be
deemed to have been sold and included in the Net Revenue of the
Licensee and sub-licensee when invoiced, or if not invoiced, when
delivered or paid for, whichever is the first to occur. Under no
circumstances shall Net Revenue include any grant money or other
funding received by the Licensee as re-imbursement of expenses
associated with the research and development of the Technology by
the Licensee.
(f) "Licensee" is the party of the first part and includes any
corporation which controls, is controlled by, or is under common
control with the Licensee; for this purpose, "control" means the
direct or indirect ownership of voting shares carrying more than 50%
of the votes for the election of directors;
(g) "Licensee Improvement" means any technology, whether patentable or
not, that is developed by or under the direction of the Licensee and
whose use would infringe one or more claims or rights under the
Patent Rights or whose development has relied upon the Technology;
Page 2 of 27
(h) "Licensed Process" means any process which relies in whole or in
part upon the Technology or which is covered in whole or in part by
an issued, unexpired claim or pending claim contained in the Patent
Rights;
(i) "Licensed Product" means any product or part thereof which:
(i) relies in whole or in part, upon the Technology, or is
utilized to practise a Licensed Process; or
(ii) is produced or processed by using a Licensed Process; or
(iii) is covered in whole or in part by an issued, unexpired claim
or a pending claim contained in the Patent Rights in the
country in which any such product or part thereof is made,
used or sold.
(j) "Materials" means any substance, product or compound (including all
cell lines, vectors, plasmids, clones, micro organisms, anti-bodies,
antigens, test plates, reagents, chemicals, compounds, physical
samples, models and specimens) delivered by the University to the
Licensee, and the Materials specifically described in Schedule "C",
and all progeny, mutants and derivatives thereof supplied by the
University;
(k) "Milestone Payments" has the meaning set forth in Section 5.2;
(l) "Patent Rights" means any of the following intellectual property of
the University:
(i) patents and/or patent applications listed in Schedule "A";
(ii) patents issued from the applications listed in Schedule "A",
or from divisions or continuations of such applications, or
any re-issues of such patents; or
(iii) such other statutory or common law protection as may be
available to the University in connection with such patents or
patent applications listed on Schedule A.
(m) "Royalty Due Date" means the date 30 days following the last day of
March, June, September and December of each and every year during
which this Agreement remains in full force and effect, commencing on
January 30, 2004;
(n) "Territory" means worldwide;
(o) Technology" means any and all knowledge, know-how, information,
software and/or techniques invented, developed or acquired or being
invented, developed and/or acquired prior to or after the Effective
Date by the University, and any Materials related thereto, all of
which are related to the Patent Rights, University Improvements or
Licensee Improvements as applicable, provided that for the purposes
of determining University
Page 3 of 27
ownership of Technology, Licensee Improvements developed solely by
the Licensee shall be excluded.
(p) "University Improvement" means any technology, whether patentable or
not, that is created by the University under the research program of
Dr. Xxxxxx Xxxxxx or whose use would infringe one or more claims or
rights under the Patent Rights; and
(q) "Trade-marks" means any xxxx, trademark, service xxxx, logo,
insignia, seal, design or other symbol or device used by the
University or Licensee and associated with or referring to either of
the University or Licensee, as the case may be, or any of its
facilities, property or products.
ARTICLE 2 - GRANT OF RIGHTS AND TERM
2.1 LICENSE. Subject to the terms and conditions of this Agreement, the
University hereby grants to the Licensee the right and license, within the
Field of Use and in the Territory, to use, modify, improve, sublicense or
otherwise exploit, for commercial and non-commercial purposes, the
Technology, the Patent Rights, and/or University Improvements as
applicable, and, to make, have made, use, lease, sell, distribute and
import Licensed Products and to use, modify, improve, sublicense and
otherwise exploit, for commercial and non-commercial purposes, the
Licensed Processes, until the end of the earlier of 20 years from the
Effective Date of this Agreement or the term for which a patent or patents
under the Patent Rights are granted, and in the latter instance, on a
country by country basis, unless this Agreement is sooner terminated
according to the terms hereof. Notwithstanding anything to the contrary,
the license granted hereunder shall not be construed to confer any rights
or benefits upon the Licensee by implication, or otherwise, as to any
patents, technology or rights not specifically included in the Technology.
2.2 PERIOD OF EXCLUSIVITY. In order to establish a period of exclusivity for
the Licensee, the University hereby agrees that it shall not grant any
other license to make, have made, use, lease, sell and distribute the
Technology, the Patent Rights, the University Improvements or the Licensed
Products or to utilize Licensed Processes in the Territory for the Field
of Use during the period of time commencing the Effective Date and
terminating upon expiration of any patent issued on a country by country
basis.
2.3 RIGHTS RETAINED BY UNIVERSITY. Nothing in this Agreement shall affect the
University's right to use the Technology or to use and distribute the
Materials to third parties for research, teaching and other non-commercial
uses and the Licensee hereby grants back to the University rights to use
the Patent Rights, whether for the University's own purposes or in
conjunction with other similar research institutions, for research,
teaching and other non-commercial applications, including technical
services and industrially sponsored research. This grant to the University
expressly excludes any rights to use the Patent Rights alone or in
conjunction with others, for commercial purposes.
Page 4 of 27
2.4 OWNERSHIP, IMPROVEMENTS. The parties acknowledge that the University shall
retain ownership of the Technology excluding all Licensee Improvements.
The Licensee shall own all Licensee Improvements, provided that the
Licensee hereby grants to the University a perpetual, non-exclusive
royalty-free right to use all Licensee Improvements solely for research,
teaching and other non-commercial uses in accordance with the rights
granted under Section 2.3.
2.5 REPORT OF IMPROVEMENTS. From time to time and in any event at least
annually:
(a) the Licensee shall disclose in writing to the University the details
of all Licensee Improvements; and
(b) the University shall disclose in writing to the Licensee the details
of all University Improvements, for the purposes of causing same to
be part of the grant of rights in the Technology hereunder.
2.6 RESTRICTION ON DISCLOSURE; USE OF TRADE-MARKS. Neither party shall
disclose any of the financial terms and conditions of this Agreement but
shall be entitled to reveal the parties and the nature of the license
granted. Neither Party shall use any of the other's Trade-marks or make
reference to the other for any advertising or publicity purposes, without
the prior written consent of that party. Notwithstanding the foregoing,
the parties (and their representatives) may disclose to any person or
entity the tax treatment and tax structure of the transactions
contemplated by this Agreement and any materials (including opinions and
other tax analyses) provided to them relating to the tax treatment and tax
structure of the transactions contemplated herein.
ARTICLE 3 - SUBLICENSES
3.1 SUBLICENSES. The Licensee shall have the right to grant sublicenses of the
rights, privileges and licenses granted hereunder within the Territory
during the exclusive period of this Agreement in accordance with the
provisions of Section 3.2. Upon any termination of this Agreement, and at
the election of the University, any sub-licensees' rights shall also
terminate.
3.2 COVENANTS OF SUB-LICENSEES.
(a) Licensee covenants and agrees that it shall cause any sublicense
agreement entered into by it to contain, on the part of such
sub-licensee, covenants in favour of the University with respect to
the obligations set forth in Sections 3.1, 6.1 and Articles 10 and
12 herein, and that to the extent there exists an inconsistency
between the sublicense agreement and this Agreement, any such
inconsistency or conflict will be resolved in favour of this
Agreement. In granting any sublicense hereunder, the Licensee
undertakes to observe and perform any obligations of the
sub-licensee, to intent that none of the rights, entitlements or
remedies of the University are impaired by the granting of such
sublicense. The Licensee shall deliver to the University a true copy
of such sublicense agreement upon execution.
Page 5 of 27
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
(b) In addition, all sublicenses shall be subject to the following
conditions:
(i) in no event will a sub-licensee be permitted to further
sublicense or to assign or transfer any rights which have been
granted to it by the Licensee (except to the extent that such
assignment is in connection with the sale of all or
substantially all of the assets or stock of such sub-licensee
or in connection with the merger or similar transaction
between such sub-licensee and a third party and University is
notified of such assignment); and
(ii) the Licensee shall not be entitled to receive from any
sub-licensee any consideration or matter of value in lieu of
cash payments not otherwise part of Net Revenue, in
consideration for any sublicense under this Agreement, without
the express prior written consent of the University.
ARTICLE 4 - LICENSEE'S PERFORMANCE OBLIGATIONS
4.1 LICENSEE'S COMMERCIALIZATION DUE DILIGENCE; MILESTONE OBLIGATIONS. The
Licensee shall use commercially reasonable efforts to bring one or more
Licensed Products or Licensed Processes to market through a thorough,
concerted and diligent program for exploitation of the Technology and to
continue active, diligent marketing efforts for one or more Licensed
Products or Licensed Processes during the entire period that this
Agreement is in effect, in order to meet the milestones set out on
Schedule "D" from time to time.
4.2 ACKNOWLEDGEMENT OF EXPERTISE BY LICENSEE. The Licensee covenants and
agrees that it has the expertise necessary to handle the Technology,
Materials, the Licensed Products and the Licensed Processes with care and
without danger to the Licensee, its employees, agents, or the public, and
to observe and perform the covenants and obligations set out herein.
4.3 COMPLIANCE BY LICENSEE WITH LAWS. The Licensee covenants and agrees that
it will comply with all laws, regulations and ordinances, whether federal,
provincial, state, municipal or otherwise, as appropriate, with respect to
the Materials, the Technology, the Licensed Products, the Licensed
Processes and this Agreement.
4.4 FAILURE TO MEET PERFORMANCE REQUIREMENTS. In the event the Licensee fails
to meet any of the milestones or performance criteria set forth in
Schedule D, or observe and perform the obligations set forth under any of
Sections 4.1 or 4.3, such shall constitute a default under this Agreement
pursuant to Section 13.2 hereof.
4.5 NO PRIOR SECURITY INTERESTS. The Licensee covenants that it will not grant
a security interest in or to the Technology.
ARTICLE 5 - FEES, ROYALTIES AND PAYMENTS
5.1 INITIAL LICENSE FEE. The Licensee shall pay to the University, an initial
license fee with respect to the issuance of the license, of Canadian
$[******]. The said sum shall
Page 6 of 27
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
be deemed earned and due immediately upon the Effective Date, and shall
not be refundable to the Licensee in whole or in part under any
circumstances.
5.2 ROYALTY FOR DISCOVERY, RESEARCH AND DEVELOPMENT USES.
(a) The Licensee shall pay to the University, in advance, an annual fee
of Canadian $[******] ([***************] dollars) per year for seven
years commencing on the anniversary of the Effective Date beginning
one year after the Effective Date, and thereafter on each successive
anniversary of the Effective Date. The parties are agreed that no
payment shall be required for that period from the Effective Date to
the first anniversary thereof; and
(b) As further consideration for the value of the Technology for
application as a discovery tool and use as a research and
development platform by the Licensee ("Research Uses"):
(i) Licensee shall pay to the University a royalty of [********]
percent ([***]%) of the Net Revenue receivable by the Licensee
that is attributable to products sold, made, or distributed
directly by Licensee to third parties where such products rely
upon such Research Uses and which no longer are relying upon
the Technology directly;
(ii) Where Licensee provides Research Uses to third parties on a
fee-for-service basis, Licensee shall pay a royalty to the
University of [**************] percent ([***]%) of the Net
Revenue receivable by the Licensee in connection with such
fee-for-service work which relies upon such Research Uses; and
(iii) Where the Licensee has previously provided to third parties
Research Uses on a fee-for-service basis and such third party
thereafter sells, makes or distributes a product that relies
on such Research Uses, the Licensee shall pay to the
University a royalty of [********************] ([***]%) of the
Net Revenue receivable by the Licensee as a royalty payment
from such third party in connection with products which rely
upon such Research Uses and which do not require a sublicense
of the Technology.
5.3 MILESTONE PAYMENTS. The Licensee shall pay to the University milestone
product development payments with respect to achievement of each of the
enumerated events arising from the development of each of the Licensed
Products and/or Licensed Processes, all as set forth in the table below,
with each payment becoming due and payable on the first date of completion
for each element of every Class ("Class" means any of Cardiology,
Oncology, Central Nervous System, Infection, and Vascular Disease) of
Licensed Product and/or Licensed Process of such milestone, regardless of
the country in which achievement of such milestone first occurs:
Milestone Payment
--------- -------
Initiation of Phase I Clinical Trial Canadian $[******]
Completion of Phase II Clinical Trial Canadian $[******]
Completion of Phase III Clinical Trial Canadian $[******]
Grant of Regulatory Approval Canadian $[******]
Page 7 of 27
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
For certainty with respect to milestone product development payments,
there are four (4) milestones anticipated for each of the five (5)
Classes.
5.4 ANNUAL ROYALTIES AND PAYMENTS. In consideration of the license granted
hereunder, the Licensee shall pay to the University subject to Section 5.6
below:
(a) a royalty of [**************] percent ([***]%) of Net Revenue; For
greater clarification, on sales between Licensee, and/or its
Affiliates, sub-licensees or agents for resale purposes, the royalty
shall be paid only on the resale value by such Affiliate,
sublicense, or agent. Such royalties shall become due and payable on
each Royalty Due Date, and shall be calculated with respect to Net
Revenue for the calendar quarter immediately preceding the month in
which the applicable Royalty Due Date occurs; and
(b) in addition to such annual royalties in subsection (a) hereof, [****
***********] percent ([***]%) of:
(i) initial up-front fees, or other consideration (including
equity or other participation), or in-kind or non-monetary
contribution, if any, receivable by Licensee upon its
execution of or pursuant to the terms of any sub-license
agreement related to the use of the Technology, Materials,
Licensed Products or Licensed Processes; and
(ii) any payments or other consideration (including equity or other
participation), or in-kind or non-monetary contribution
receivable by Licensee upon the successful achievement of
milestones set forth in, and pursuant to the terms of, any
sublicense agreement related to the use of the Technology,
Materials, Licensed Products or Licensed Processes. The
Licensee shall be entitled to deduct from any of the foregoing
consideration received that portion which is a reimbursement
of its direct, out-of-pocket costs for research projects
funded on behalf of the sub-licensee relating to the
Licensee's Improvements after the effective date of the
sub-license agreement.
Any payments under this subsection (b) shall be following receipt by the
Licensee of the fees, consideration, or in-kind or non-monetary
contribution, provided Licensee has exercised commercially reasonable
efforts to collect such amount or entitlement owing.
Notwithstanding anything herein to the contrary, the University
acknowledges and agrees, that it is not entitled to any compensation,
royalty or payment whatsoever in connection with any payments or other
consideration (including equity or other participation), with respect to
third party equity investments in the Licensee which are not directly
attributable to the sub-licensing of any of the Technology, Materials,
Licensed Products or Licensed Processes.
Page 8 of 27
5.5 CURRENCY AND PLACE OF PAYMENTS. All payments to be made by the Licensee to
the University hereunder shall be made in Canadian dollars at London,
Ontario without deduction of taxes or other fees of any other kind
whatsoever, which may be imposed by any government, and which taxes or
fees shall be paid by the Licensee. Where any payment or amount is
denominated in a currency other than Canadian dollars, it shall be
converted to the equivalent in Canadian dollars at the rate of exchange
set by the Bank of Montreal in Toronto, Canada for converting the currency
of such amount into Canadian dollars, on the last Business Day of the
reporting period to which such payment relates.
5.6 NO DUPLICATION OF PAYMENTS. For clarification, the royalties owed pursuant
to clauses (b)(i), or (b)(iii) of Section 5.2 and clause (a) of Section
5.4 are to be independent of each other.
ARTICLE 6 - RECORDS AND REPORTING
6.1 ACCOUNTING RECORDS. The Licensee shall maintain at its principal place of
business, separate accounts and records of transactions arising pursuant
to this Agreement, such accounts and records to be in sufficient detail to
enable proper returns to be made under this Agreement, and the Licensee
shall include a similar requirement of its sub-licensees in any sublicense
agreement.
6.2 REPORTS. The Licensee shall deliver to the University by no later than
each Royalty Due Date, together with the royalty payment required, a
report (the "Accounting") setting out particulars of the sale,
distribution, leasing or sublicensing of the Licensed Products and/or
Licensed Processes as shall be requisite for the payment of royalties,
including the following:
(a) the number of Licensed Products sold by Licensee and all
sub-licensees in each country during the applicable royalty period;
(b) the gross revenue for Licensed Products charged by Licensee and all
sub-licensees during the applicable royalty period;
(c) an accounting for all Licensed Processes used, sold, leased, or, if
applicable, licensed by the Licensee and all sub-licensees;
(d) a calculation of Net Revenue in each country including a listing of
applicable deductions and evidence of the Licensee's payment of
withholding taxes;
(e) a listing of additional payments or consideration from sub-licensees
under Section 5.4(b); and
(f) total royalties payable on Net Revenue in Canadian dollars, together
with the exchange rates used for any currency conversion in
accordance with Section 5.5.
The Licensee shall also provide to the University periodic reports at all
significant stages and milestones in the development, manufacture and
sale, distribution,
Page 9 of 27
leasing or sublicensing of the Licensed Products and/or Licensed
Processes, including but not limited to, the milestones described in
Sections 4.1, 4.4 and 5.2, by no later than thirty (30) days following the
completion of such stage or milestone; such reports shall be in sufficient
detail to enable the University to assess the status of all required
regulatory approvals relating to the Licensed Products, and whether the
Licensee is meeting its obligations under Sections 4.1, 4.4 and 5.2 during
the term of this Agreement.
6.3 GENERALLY ACCEPTED ACCOUNTING PRINCIPLES (GAAP). The calculation of
royalties shall be made in accordance with generally accepted accounting
principles from time to time approved by the Federal Bureau of Accounting
Standards applied on a consistent basis with the Licensee's past
practices. Licensee certifies that its accounting practices comply with
the Federal Bureau of Accounting Standards.
6.4 RETENTION OF ACCOUNTS AND RECORDS. The Licensee shall retain the accounts
and records referred to in Section 6.1 for at least three (3) years after
the date upon which they were made.
6.5 AUDIT RIGHT. During the term of this Agreement and for one (1) year
thereafter, the University may at its cost and expense audit or cause to
be audited, no more than once in any twelve month period, the applicable
books, records of other relevant materials of the Licensee referable
hereto, to verify any report rendered hereunder. The audit must be on
reasonable advance, written notice, and be conducted during normal
business hours of the Licensee. The Licensee shall furnish such reasonable
evidence as such representative will deem necessary to verify the
Accounting and may permit such representative to make copies of or
extracts from such accounts, records and agreements at the University's
expense. If the audit reveals an underpayment by the Licensee of three (3)
percent or more of royalties payable in any fiscal year of the Licensee,
the Licensee shall pay to the University such deficiency within fifteen
(15) days of the determination thereof, together with interest thereon
from the date such amount was due to the date of payment, and shall
further reimburse the University for its full and reasonable out-of-pocket
costs of the audit. In any other instance of overpayment or underpayment
by the Licensee, the appropriate payment of such deficiency or refund
shall be made within fifteen (15) days following the determination
thereof, together with interest thereon and the University shall bear its
own costs of the audit.
6.6 POWER OF ENTRY. The Licensee shall permit any duly authorized
representative of the University during normal business hours and at the
University's sole risk and expense to enter upon and into any premises of
the Licensee for the purpose of inspecting the Products and the manner of
their manufacture, and the use of the Materials, the Technology and the
Licensed Processes; and generally ascertaining whether or not the
provisions of this Agreement have been and, are being complied with by the
Licensee.
6.7 SURVIVAL OF THIS ARTICLE AFTER TERMINATION. Notwithstanding the
termination of this Agreement, this Article 6 shall remain in full force
and effect until:
Page 10 of 27
(a) all payments and royalties required to be made by the Licensee to
the University under this Agreement have been made by the Licensee
to the University; and
(b) any other claims of any nature or kind whatsoever of the University
against the Licensee arising out of the termination have been
settled.
ARTICLE 7 - REPRESENTATIONS AND WARRANTIES
7.1 Each of the University and the Licensee warrants and represents to the
other, and acknowledges that the other has relied upon the completeness
and accuracy of such representations and warranties in entering into this
Agreement, namely:
i) it has the corporate capacity to enter into this Agreement and to
perform each of its obligations hereunder; and
ii) it has duly authorized, executed and delivered the Agreement, and
the Agreement constitutes a legal, valid and binding obligation of
it, enforceable against it in accordance with its terms, except only
as such enforcement may be limited by applicable bankruptcy,
insolvency and other laws of general application affecting the
enforcement of creditors' rights and subject to general equitable
principles.
7.2 The University warrants and represents to the Licensee, and acknowledges
that the Licensee has relied upon the completeness and accuracy of such
representation and warranties in entering into this Agreement, namely:
i) as at the date hereof, it has all right, title and interest in and
to the Technology and the Patent Rights, free and clear of any
security interests, liens or other similar encumbrances and
possesses all rights necessary to grant the license set forth
herein;
ii) as at the date hereof, there is no litigation or other claim pending
or threatened involving the Technology or the Patent Rights;
iii) as of the date hereof, there is no claim pending or, to the
University's knowledge, threatened by a third party alleging that
the Technology or Patent Rights infringes the intellectual property
rights of such third party and the University has no reason to
believe that there is a basis for such claim; and
iv) it has not entered into any options, licenses or other agreements
with third parties relating to the Technology or Patent Rights which
would conflict with the rights and licenses granted to the Licensee
herein.
ARTICLE 8 - PATENT PROSECUTION
8.1 PATENT RIGHTS. The Licensee hereby recognizes and acknowledges the
ownership rights of the University to the Technology, as applicable, the
validity of the Patent Rights licensed hereunder, and agrees not to
contest the ownership of the Technology or the validity of the Patent
Rights, either directly or indirectly by assisting other parties, nor to
initiate or participate with an interference application in connection
with Patent Rights.
Page 11 of 27
8.2 PATENT PROSECUTION AND PATENT COSTS. The Licensee shall pay for all
reasonable fees and costs relating to the filing, prosecution and
maintenance of the Patent Rights incurred after the Effective Date and
during the term of the Agreement on behalf of the University: provided,
however, that, subject to Section 8.4 below, the Licensee shall control
the process of, and select counsel of its choosing for, such filing,
prosecution and maintenance. The Licensee shall have primary
responsibility for the filing, prosecution and maintenance of patents
and/or patent applications worldwide for those inventions within the
Patent Rights, at the Licensee's expense, provided that the Licensee shall
consult with the University as to the prosecution and maintenance of all
such patent applications within the Patent Rights prior to any substantive
deadline or action, and shall not substantially limit the scope of patent
protection without the University's consent, which consent shall not be
unreasonably withheld or delayed. The Licensee shall furnish the
University with copies of all relevant documents upon filing the same with
the patent office of any country. Subject to Section 8.4 below, the
University shall not take any action with respect to such patents or
patent applications without the Licensee's prior written consent.
8.3 COPIES OF PATENT RELATED MATERIALS. The University shall provide the
Licensee with copies of the patent applications and all official
correspondence with the respective patent and trademarks office(s)
relating to the Patent Rights which exist as of the Effective Date. In
addition, the Licensee shall provide to the University copies of all
patent applications, maintenance therefor and all official correspondence
with the respective Patent and Trademark Office relating to the Patent
Rights from and after the Effective Date, in accordance with its
obligations under Section 8.2 hereof, in order that the University is
advised sufficiently in advance of any deadlines for patent prosecution or
maintenance in connection with the Patent Rights.
8.4 UNIVERSITY PATENT PROSECUTION. In the event that the University has
notified the Licensee in writing that it desires to file for patent
protection in a country or countries and the Licensee declines to do so in
writing, the university shall notify the Licensee in writing of its
intention to file for such patent protection in such country or countries
(the "Patent Notice", which Patent Notice must specifically state the
country and scope of the patent protection desired) and, if the Licensee
has not responded within ten (10) business days after its receipt of the
Patent Notice that the Licensee will seek such patent protection pursuant
to this Section 8, the University may file for, prosecute and maintain
such patent (as set forth in the Patent Notice) with counsel of its
choosing. The University will provide copies of all documents related
thereto to the Licensee. Notwithstanding the foregoing, the University
must have a good faith business reason for seeking such patent protection
pursuant to this Section 8.4 prior to delivering the Patent Notice to the
Licensee.
8.5 UNIVERSITY RIGHTS RE PROSECUTION. In the event that the Licensee fails to
prosecute any application or maintain the existence of Patent Rights for
which the Licensee is responsible hereunder, the University shall be
entitled to assume the obligations of the Licensee, as contemplated by
Section 8.2 hereof, and may elect that the Licensee's failure to
diligently prosecute and/or maintain such Patent Rights is a default of
the Licensee for which termination rights by the University are
exercisable in accordance with Article 13. Notwithstanding anything herein
to the contrary, the University's termination rights set forth in this
Section 8.5 shall not be applicable with
Page 12 of 27
respect to any patents which the Licensee has declined to pursue pursuant
to Section 8.4 or for which the patent process has not been initiated by
either party in such country or countries.
ARTICLE 9 - INFRINGEMENT
9.1 Enforcement of Rights Against Third Parties.
(a) In the event of an alleged infringement of the Patent Rights or an
unauthorized use of the Technology by a third party in the Territory
for the Field of Use after the Effective Date, the Licensee shall
have the obligation to prosecute, at its own expense, any such
alleged infringement, upon receipt of prior written notice of such
claim from the University. The University agrees to co-operate to
the extent of executing all necessary documents to vest in the
Licensee the right to institute any such suits, and the right to use
the University's name as a party plaintiff. No settlement, consent,
judgment or other voluntary final disposition of the suit may be
entered into without the consent of the University, which consent
shall not unreasonably be withheld or delayed. At any time during
the prosecution of the action by the Licensee, the University may
participate, at its own expense, in the prosecution of such action.
The Licensee shall indemnify the University against any order for
costs that may be made against the University in such proceedings.
(b) In the event that the Licensee undertakes assertion of rights with
respect to the Technology or the enforcement of the Patent Rights by
litigation, the Licensee may withhold up to fifty percent (50%) of
the payments otherwise thereafter due to the University under
Article 5 hereunder and apply such withheld amounts toward
reimbursement of up to fifty percent (50%) of Licensee's expenses,
including reasonable attorneys' fees, in connection therewith. Any
recovery of damages by Licensee for each such suit shall be issued
in the name of the Licensee and the University jointly, and shall be
applied first in satisfaction of all of any unreimbursed expenses
and legal fees of Licensee relating to such suit, and next applied
for all payments to the University under Article 5 past due or
withheld pursuant to this Article 9. The balance remaining
thereafter from any such recovery shall be divided equally between
the Licensee and the University. The Licensee shall provide to the
University an accounting for all costs, expenses and disbursements
incurred with respect to the defence or enforcement of the action.
In the event that the enforcement of the Patent Rights by the
Licensee is not successful, or the Licensee does not recover 50% of
its legal fees and expenses from the withheld royalty amounts, the
Licensee surrenders and foregoes any further entitlement to offset
any amounts against the royalty payments otherwise payable under
Article 5.
(c) In the event that the enforcement of the Patent Rights by the
Licensee or the University is not successful, the Licensee shall
have the right to terminate this Agreement upon sixty (60) days
written notice to the University, provided that the obligations of
the Licensee for payment under Section 9.1 (b) have been fulfilled.
Alternatively, the Licensee and the University may enter
Page 13 of 27
renegotiations of a new royalty rate, having regard to the nature
and extent of the Technology and/or Patent Rights as are available
to be licensed to the Licensee, pursuant to a revised agreement.
(d) Notwithstanding the foregoing, the University shall have the right
to enter into a contract with the successful third party with
respect to licensing of rights from it in order to permit the
continued use of the License hereunder for the Technology, and in
such case, the terms of this Agreement shall continue in full force
and effect.
9.2 CO-OPERATION BETWEEN THE PARTIES. In any infringement suit to enforce the
Patent Rights pursuant to this Agreement, the University shall, at the
request and expense of the Licensee, 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.
9.3 RIGHT TO SUBLICENSE ALLEGED INFRINGER. The Licensee shall have the right,
in accordance with the terms and conditions herein, including without
limitation Article 5, to sublicense any alleged infringer in the Territory
for the Field of Use for future use of the Technology or the Patent
Rights, as the case may be.
9.4 INFRINGEMENT ACTIONS BY THIRD PARTIES. In the event that a complaint
alleging infringement or violation of any patent or other proprietary
rights is made against the Licensee with respect to the use of the
Technology or the Patent Rights after the Effective Date, the following
procedure shall be adopted:
(a) the Licensee shall promptly notify the University upon receipt of
any such complaint and shall keep the University fully informed of
the actions and positions taken by the complainant and taken or
proposed to be taken by the Licensee;
(b) subject to this section, all costs and expenses incurred by the
Licensee in investigating, resisting, litigating and settling such a
complaint, including the payment of any award of damages and/or
costs to any third party, shall be borne by the Licensee;
(c) no settlement or compromise of the complaint shall be taken without
full consultation with and approval by the University, which
approval shall not be unreasonably withheld or delayed;
(d) the University may elect to participate formally in any litigation
involving the complaint, to the extent that the court may permit,
but any additional expenses generated by such formal participation
shall be borne entirely by the University (subject to the
possibility of recovery of some or all of such additional expenses
from the complainant); and
(e) if the complainant is willing to accept an offer of settlement and
one of the parties to this Agreement is willing to make or accept
such offer and the other is not, then the unwilling party shall
conduct all further proceedings at its own expense, and shall be
responsible for the full amount of any damages, costs, accounting of
Page 14 of 27
profits and settlement costs in excess of those provided in such
offer, but shall be entitled to retain unto itself the benefit of
any litigated or settled result entailing a lower payment of costs,
damages, accounting of profits and settlement costs than that
provided in such offer.
9.5 UNIVERSITY INDEMNIFICATION. Notwithstanding anything herein to the
contrary, the University shall indemnify and hold harmless the Licensee
for any breach of representations and warranties set forth in Article 7
herein. In the event of a claim for indemnification by the Licensee
pursuant to this Section 9.5, the Licensee shall provide written notice of
such claim to the University and the University, in the case such claim
involves a third party, shall assume the defense and/or settlement of such
claim at its sole cost and expense; provided, however, that the University
may not settle or otherwise compromise such claim without the prior
written consent of the Licensee, which consent shall not be unreasonably
withheld or delayed and which consent shall not be required if such
settlement or compromise includes a full release of the Licensee and the
ability of the Licensee to continue to use and exploit the license and
other rights granted herein.
ARTICLE 10 - CONFIDENTIALITY
10.1 MUTUAL OBLIGATION OF CONFIDENTIALITY. Each party shall treat all
Confidential Information in respect of which it is the Recipient as
confidential and shall not disclose any Confidential Information to any
third party or use the Confidential Information for any purpose other than
for the purposes of fulfilling its obligations under this Agreement. The
Recipient shall use at least the same standard of care in protecting the
Confidential Information as it uses in protecting its own information of a
similar nature but, in any event, no less than a reasonable standard of
care. Without limiting the generality of the foregoing, the Licensee shall
not, both during the term of this Agreement and at all times thereafter,
disclose any of the University's Confidential Information to any person
other than a prospective permitted sublicensee or an employee of or
consultant to the Licensee who shall have entered into a confidential
disclosure agreement in form and substance satisfactory to the University.
Any Confidential Information will be disclosed within the Recipient only
on a "need to know" basis.
10.2 EXCLUSIONS FROM CONFIDENTIALITY. Notwithstanding Section 10.1, the
obligations regarding confidentiality shall not apply to information
which:
(a) was in Recipient's possession before receipt from the Disclosing
Party, as established by documentary evidence; or
(b) is or becomes a matter of public knowledge without breach of this
Agreement by Recipient; or
(c) is received by Recipient from a third party which had no duty of
confidentiality with respect to it; or
(d) is independently developed by the Recipient as established by
documentary evidence; or
Page 15 of 27
(e) is made subject to an order by judicial or administrative process
requiring Recipient to disclose any or all of the information,
provided that the Recipient shall use reasonable efforts in the
circumstances to promptly notify the Disclosing Party of such
requirement to enable the Disclosing Party to oppose such process,
before disclosure occurs; or
(f) is disclosed by Recipient with the Disclosing Party's prior written
approval.
10.3 INJUNCTION. The parties acknowledge that if a party breaches the
provisions of this Article 10, there may not be an adequate remedy at law
through damages. Accordingly, the parties agree that a non-defaulting
party shall have the right to seek and obtain temporary and permanent
injunctive relief to restrain a violation of this Article 10. The parties
acknowledge that the provisions herein are reasonable, and are fully
required to protect the legitimate interests of the affected party.
ARTICLE 11 - DISCLAIMER OF WARRANTIES BY UNIVERSITY AND LIMITATION OF LIABILITY
11.1 DISCLAIMER OF WARRANTIES BY THE UNIVERSITY. Except as expressly set forth
in this Agreement, the University, its trustees, officers, employees,
students and agents make no representations or warranties of any kind,
either express or implied, and there are no conditions, either express or
implied. Without limiting the generality of the foregoing, there are no
express or implied warranties of merchantability or fitness for a
particular purpose, or the absence of latent or other defects. The
Licensee acknowledges that it has been advised by the University to
undertake its own due diligence, including independent legal advice, with
respect to the Technology and the terms of this Agreement.
11.2 LIMITATION OF THE UNIVERSITY'S LIABILITY. Except for claims for
indemnification pursuant to Section 9.5 herein, the aggregate damages for
which the University shall be liable shall not exceed the amount of
royalties paid by the Licensee to the University for the year in which the
cause of action giving rise to the damages occurred. In no event shall the
University, its trustees, officers, students, employees or agents be
liable for any indirect, consequential, incidental, or special damages of
any kind whatsoever, including, but not limited to, economic damage or
injury to property or lost profits, even if the University has been
advised of or knows of the possibility of such damages.
11.3 LIMITATION OF THE LICENSEE'S LIABILITY. In no event shall the Licensee,
its officers, directors, consultants, employees or agents be liable for
any indirect, consequential, incidental, or special damages of any kind
whatsoever, including but not limited to, economic damage or injury to
property or lost profits, even if the Licensee has been advised of or
knows of the possibility of such damages.
11.4 ADDITIONAL DISCLAIMERS. Nothing in this Agreement shall be construed as:
Page 16 of 27
(a) an obligation by the University to bring or prosecute actions or
suit against third parties for infringement of copyrights,
trade-marks, registered design or other intellectual property or
contractual rights, or
(b) the conferring by either party of any right to use in advertising,
publicity or otherwise the Trade-marks or the name of the other
party.
ARTICLE 12 - LICENSEE INDEMNITY AND INSURANCE
12.1 LICENSEE'S INDEMNITY. The Licensee shall at all times during the term of
this Agreement and thereafter, indemnify, defend and hold harmless the
University, its trustees, directors, officers, employees, students and
agents, against all claims, proceedings, demands and liabilities of any
kind whatsoever (including but not limited to reasonable legal fees and
disbursements) incurred in connection with the Licensee's use of the
Technology or the Materials, or from the Licensee's production,
manufacture, sale, use, lease, consumption or advertisement of the
Licensed Product(s) and/or Licensed Process(es), or arising from any right
or obligation of the Licensee hereunder, excepting only claims that the
Patent Rights infringe intellectual property rights of third parties.
12.2 INSURANCE REQUIRED FOR LICENSEE. Prior to the first sale of a Licensed
Product or use of a Licensed Process, the Licensee will give notice to the
University of the terms and amount of the comprehensive public liability
and product liability insurance which it has placed in respect of the
same, together with a certificate therefor. Such insurance shall be no
less than the insurance which a reasonable and prudent corporation
carrying on a similar business would acquire. This insurance shall be
placed with a reputable and financially secure insurance carrier, shall
include the University, as an additional insured, shall contain a waiver
of subrogation against the University, and shall provide that the policy
shall not be cancelled or materially amended except upon at least thirty
(30) days' written notice to the University. The Licensee covenants not to
sell any Licensed Product nor use any Licensed Process before such
insurance is effective. The Licensee shall require that each sub-licensee
under this Agreement shall procure and maintain equivalent insurance
coverages.
12.3 INSURANCE NOT TO AFFECT INDEMNITIES. The existence of any insurance
policies will not relieve the Licensee from its obligations under the
indemnification provisions contained in this Agreement.
ARTICLE 13 - TERMINATION
13.1 TERMINATION BY THE UNIVERSITY. The University may, at its option and in
its sole discretion, terminate this Agreement immediately on the happening
of any one or more of the following events by delivering notice in writing
to that effect to the Licensee:
(a) if the Licensee is more than thirty (30) days in arrears of fees,
royalties or payments due under this Agreement, which is not cured
within ten (10) business days after written notice thereof;
Page 17 of 27
(b) if the Licensee fails to observe or perform any other obligations
required hereunder, including the failure to meet milestones as
provided under Section 4.4, and such failure continues for a period
in excess of thirty (30) days following written notice;
(c) if the Licensee grants a security interest in any of the rights
under or in this Agreement in priority to any interest claimed by
the University;
(d) if the Licensee seeks creditor protection; or if any execution,
sequestration, or any another process of any court becomes
enforceable against the Licensee; or if any such process is levied
on the rights under this Agreement or upon any of the monies due to
the University and is not released or satisfied by the Licensee
within sixty (60) days thereafter;
(e) if any resolution is passed or order made or other steps taken for
the winding up, liquidation or other termination of the existence of
the Licensee, or if the Licensee ceases or threatens to cease to
carry on its business.
13.2 TERMINATION BY EITHER PARTY. In addition to Section 13.1, if either party
shall be in default under or shall fail to comply with the terms of this
Agreement and if such default is not cured within thirty (30) days after
written notice of such default, or such default is not cured within such
further reasonable period of time as may be necessary, provided that the
defaulting party is diligently seeking to remedy such default, then the
non-defaulting party shall have the right to terminate this Agreement
immediately by giving written notice to that effect to the party in
default
13.3 RIGHTS UPON TERMINATION. If this Agreement is terminated pursuant to
Section 13.1 or 13.2 hereof;
(a) all Confidential Information of the University and all remaining
Materials shall be returned to the University;
(b) all Confidential Information of the Licensee shall be returned to
the Licensee;
(c) all rights to the Technology, other than Licensee Improvements, and
including, without limitation any rights to Patent Rights, Materials
or use of Licensed Products or Licensed Processes and any other
rights granted hereunder shall revert to the University; and
(d) The Licensee and any sub-licensee thereof may sell all Licensed
Products remaining in inventory or stock on the effective date of
the termination of this Agreement (the "Effective Date of
Termination") and may complete any Licensed Products in the process
of manufacture on the Effective Date of Termination, provided that
the Licensee shall otherwise cease to use the Licensed Processes or
to manufacture the Licensed Products or to practise the Technology
in any manner whatsoever. The Licensee shall then deliver or cause
to be delivered to the University a complete final accounting of all
Net Revenue and of all other amounts payable to the Licensee in
respect of the sublicensing of the Technology and/or the sale or
distribution of Licensed
Page 18 of 27
Products and/or Licensed Processes, and shall make payments to the
University required by Article 5 hereof, all within ninety (90) days
following the Effective Date of Termination.
13.4 PRESERVATION OF ALL REMEDIES AND RIGHTS. Upon any termination of this
Agreement, the non-defaulting party shall have the right to enforce one or
more remedies successively or concurrently in accordance with applicable
law and retains all rights and remedies against the defaulting party. The
University may proceed to enforce payment of all debts owed to the
University and to exercise any or all of the rights and remedies contained
herein or otherwise available to the University by law or in equity.
13.5 NON-WAIVER. No condoning, excusing or overlooking by any party of any
default, breach or non-observance by any other party at any time or times
in respect of any covenants, provisos, or conditions of this Agreement
shall operate as a waiver of such party's rights under this Agreement in
respect of any continuing or subsequent default, breach or non-observance,
so as to defeat in any way the rights of such party in respect of any such
continuing or subsequent default or breach and no waiver shall be inferred
from or implied by anything done or omitted by such party, save only an
express waiver in writing.
No exercise of a specific right or remedy by any party precludes it from
or prejudices it in exercising another right or pursuing another remedy or
maintaining an action to which it may otherwise be entitled either at law
or in equity.
ARTICLE 14 - GENERAL
14.1 RELATIONSHIP. Nothing contained herein shall be deemed or construed to
create between the parties hereto a partnership, joint venture or
employment relationship. No party shall have the authority to act on
behalf of the other party, or to commit the other party in any manner or
cause whatsoever or to use the other party's name in any way not
specifically authorized by this Agreement. Neither party shall be liable
for any act, omission, representation, obligation or debt of the other
party, even if informed of such act, omission, representation, obligation
or debt.
14.2 GOVERNING LAW. This Agreement shall be governed by and construed and
applied in accordance with the laws of the Province of Ontario and the
laws of Canada applicable in such Province, except that questions
regarding the construction and effect of any patent shall be determined by
the laws of the country in which the patent was granted.
14.3 DISPUTE RESOLUTION. In the event of a dispute between the parties arising
out of or in connection with this Agreement or regarding the
interpretation of the provisions hereof other than in connection with
whether an event of default has occurred, the procedure set forth in
Schedule "B" shall apply.
14.4 ENUREMENT, SURVIVAL OF COVENANTS. Subject to the limitations hereinbefore
expressed, this Agreement shall enure to the benefit of and be binding
upon the parties, and their respective successors and permitted assigns.
The terms and
Page 19 of 27
provisions, covenants and conditions contained in this Agreement which by
the terms hereof require their performance by the parties hereto after the
expiration or termination of this Agreement shall be and remain in force
notwithstanding such expiration or other termination of this Agreement for
any reason whatsoever.
14.5 NO ASSIGNMENT. Neither the Licensee nor the University shall be entitled
to assign, transfer, mortgage, charge or otherwise dispose of this
Agreement or any interest therein, or of any of the rights, duties or
obligations granted hereunder (any of the foregoing being an
"Assignment"), without the express written consent of the other, such
consent not to be unreasonably withheld or delayed, and any attempt to
effect such Assignment shall cause such Assignment to be void. Assignment
shall not include any assignment by operation of law, or any change in
shareholder control of the Licensee, if a corporation, it being agreed
that the Licensee may assign the Agreement, and its rights hereunder,
without the University's prior consent upon the sale of all or
substantially all of the Licensee's stock or assets to a third party or
upon the consummation of a merger or similar transaction by the Licensee
with a third party. Within thirty (30) days, Licensee will provide written
notice of such assignment.
14.6 ENTIRE AGREEMENT; SEVERABILITY. This Agreement sets forth the entire
understanding between the parties and no modifications hereof shall be
binding unless set forth in a written agreement or other document executed
by the parties hereto. In the event that any part, section, clause,
paragraph or subparagraph of this Agreement shall be held to be invalid,
illegal or otherwise unenforceable, the entire agreement shall not fail on
account thereof, and the balance of this Agreement shall continue in full
force and effect.
14.7 HEADINGS, NUMBER, GENDER. Marginal headings as used in this Agreement are
for the convenience of reference only and do not form a part of this
Agreement and are not be used in the interpretation hereof. Whenever the
singular or masculine or neuter is used throughout this Agreement the same
shall be construed as meaning the plural or feminine or body corporate
when the context of the parties hereto may require.
14.8 NOTICES. All notices, requests, directions or other communications
("Notices") required or permitted herein will be in writing and will be
delivered to the parties hereto respectively as follows:
IF TO THE LICENSEE:
Molecular InSight Pharmaceutical, Inc. f/k/a Biostream, Inc.
000 Xxxxxx Xxxxxx
Xxxxxxxxx, XX
XXX 00000
Attention: Xxxx X. XxXxxx, COO
Facsimile No: 000-000-0000
Page 20 of 27
With a copy to:
Xxxxx Xxxxx, Esq.
Xxxxxxx Xxxxxx & Green, P.C.
000 Xxxxxxxxxx Xxxxxx
Xxxxxx, XX
XXX 00000
Facsimile No.: 617-342-4001
IF TO THE UNIVERSITY:
Respecting administrative and financial matters, amendment or termination
of this Agreement:
Office of Industry Liaison
Xxxxxxxxx-Xxxxxx Building
Room 319
The University of Western Ontario
Xxxxxx, Xxxxxxx X0X 0X0
Attention: Director
Facsimile No: 000-000-0000
Respecting scientific and technical matters:
Department of Chemistry
Faculty of Science
The University of Western Ontario
Xxxxxx, Xxxxxxx
X0X 0X0
Attention: Dr. Xxxxxx Xxxxxx
Facsimile No: 000-000-0000
In order for any notice, request, direction, or other communication to be
effective, it will be delivered by courier or sent by facsimile (followed
by hard copy) addressed to the party for whom the Notice is intended at
the above-mentioned address and will be deemed to have been received on
the date of delivery if delivered by courier, and if sent by facsimile, on
the next business day following electronic confirmation of the successful
transmission of the facsimile. The address of either party may be changed
by notice in the manner set out in this provision.
14.9 TIME OF THE ESSENCE. Time shall be of the essence of this Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
date first written above.
Page 21 of 00
XXX XXXXXXXXXX XX XXXXXXX XXXXXXX
By: /s/ Xxxxxxx X. Xxxx
-----------------------------------
Xxxx Xxxx
Director, Office of Industry Liaison
I have authority to bind the University.
MOLECULAR INSIGHT PHARMACEUTICAL, INC.
f/k/a Biostream, Inc.
By: /s/ Xxxx X. Xxxxxx
-----------------------------------
Xxxx X. Xxxxxx
President
I have authority to bind the Corporation.
Page 22 of 27
SCHEDULE A
United States Patent Applications and Foreign Patent Applications:
"Polymer Precursors of Radiolabeled Compounds and Methods of Making and
Using the Same"
PCT PCT/IB02/01958 and US filed 03/04/2002
Inventors: Xxxxxx Xxxxxx and Xxxxxxx Xxxxxx
Derived from US Provisionals 60/272,324 (filed 03/02/2001) and 60/280,225
(filed 03/30/2001) (our ref 01-003).
United States Provisional Patent Application:
"Prosthetic Groups Useful in the Synthesis of Radiopharmaceuticals"
Serial No. 60/467,752, filed May 2, 2003
Inventors: Xxxxxx Xxxxxx and Xxxxx Xxxxxx
(our ref. 02-018).
Page 23 of 27
SCHEDULE B
DISPUTE RESOLUTION
In the event a dispute or disagreement (hereinafter called "Dispute") arises
between the parties in connection with the interpretation of any provision of
this Agreement or the compliance or non-compliance therewith, or the validity or
enforceability thereof, or the performance or non-performance of either party to
the Agreement, the following Dispute resolution process shall be followed by the
parties:
i. A Dispute will be deemed to have arisen upon the delivery of a written
notice by one party to the other describing the Dispute (herein called the
"Dispute Notice"). Upon delivery of the Dispute Notice, the parties agree
to attempt to resolve the Dispute in a prompt and expeditious manner.
Except for the Dispute Notice, all communications between the parties will
be on a without prejudice basis.
ii. If the parties have not been able to resolve the dispute in a prompt and
expeditious manner after delivery of the Dispute Notice, which time period
shall not exceed thirty (30) days after such notice, either party may at
any time thereafter request by written notice to the other party that the
Dispute be escalated to Senior Management.
iii. In the event such a request with written notice is made, each party shall
make available the senior executives specified in the following subsection
("Senior Management") who shall meet within fifteen (15) Business Days
after such request is made at the offices of the party which received the
request to attempt to resolve the Dispute.
iv. The Senior Management appointee for each party is as follows:
Licensee: Xxxx X. Xxxxxx, President
University: Vice-President, Research
Either party may change its Senior Management appointee upon prior written
notice to the other.
In case such Dispute is not settled amicably by Senior Management within thirty
(30) days of escalation to Senior Management, such Dispute shall be arbitrated
by a single arbitrator acting in accordance with the provisions of the
Arbitration Act, 1991 (Ontario), whose decision shall be final and binding upon
the parties. The arbitrator shall be the person that the parties may agree on
and in default of agreement within twenty (20) days following the expiration of
the above-mentioned thirty (30) day period, then either party may apply to a
Judge of a court having jurisdiction to appoint the single arbitrator who shall
be unconditionally accepted by both parties. The place of arbitration for
disputes for which arbitration is initiated by either party shall be London,
Ontario. The arbitrator as selected or appointed shall have knowledge of and
experience in the pharmaceutical industry. The language of any arbitration will
be English.
Page 24 of 27
The arbitration hearing shall commence within sixty (60) days after appointment
of the arbitrator is done and shall be completed and a binding award rendered in
writing within sixty (60) days after commencement of the hearing unless
exceptional circumstances warrant delay. The decision of the arbitrator may be
entered in any court of competent jurisdiction and execution entered thereupon
forthwith. The law specified in Section 14.2 of this Agreement shall apply.
Each party shall bear the cost of preparing its own case. The arbitrator shall
have the right to include in the award the prevailing party's costs of
arbitration and reasonable fees of attorneys, accountants, engineers and other
professionals incurred by it in connection with the arbitration. Failing a
specific award, the parties shall share equally the costs of the arbitrator and
arbitration proceedings.
Notwithstanding the provisions of this Schedule, the parties recognize that a
party may desire to seek emergency, provisional, or summary relief (including
temporary injunctive relief) to enforce the provisions of this Agreement
relating to protection of intellectual property and/or Confidential Information.
A party may seek such relief, provided, however, that immediately following the
issuance of any emergency, provisional, temporary injunctive or summary relief,
any such judicial proceedings shall be stayed (and each party shall consent to
such stay) pending resolution of any related underlying claims between the
parties.
Page 25 of 27
SCHEDULE C
DESCRIPTION OF MATERIALS
Intentionally left blank.
Page 26 of 27
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
SCHEDULE D
COMMERCIALIZATION DUE DILIGENCE REQUIREMENTS
AND MILESTONES
A. Licensee shall support contract research in the laboratory of Dr. Xxxxxx
Xxxxxx in the amount of Canadian $[******] for the period May 1, 2003 to
September 30, 2004. Licensee shall commit resources internally at a level
not less than Canadian $[******] for the period from October 1, 2004 to
September 30, 2005.
B. Commencing August 1, 2005 for a period not to exceed thirty (30) days,
Licensee and University shall negotiate in good faith further
commercialization due diligence requirements and milestones to be
incorporated into this Schedule D. Such negotiation will consider the
commercial readiness of the Technology and Licensee's commercialization
plans. It is anticipated such further commercialization due diligence
requirements and milestones will include for example levels of research
support, anticipated timelines for identification of lead compounds,
advancement through clinical trial phases and ultimate commercial sales.
Page 27 of 00
XXXXXXXX XXXXXXX
Xxx Xxxxxxxxxx xx Xxxxxxx Xxxxxxx
[Research Western Logo] 0000 Xxxxxxxx Xx. X. - Xxxxxxxxx-Xxxxxx Building, Room 000
Xxxxxx, Xxxxxxx - Xxxxxx - X0X 0X0
Tel: 000-000-0000 or 000-000-0000 - Fax: 000-000-0000
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AMENDMENT TO THE LICENSE MADE SEPTEMBER 5, 2003 FOR TECH IDS 01-003 AND 02-018
POLYMER SUPPORTED ALDEHYDES, ACIDS AND ACTIVATED ESTERS AS PRECURSORS FOR RADIO
LABELLING OF AMINE BEARING COMPOUNDS.- TECH ID 01-003
POLYMER SUPPORTED PROPENYL MESYLATES AS PRECURSORS FOR THE RADIO LABELLING OF
AMINES, SULFIDES AND ETHERS.- TECH ID 02-018
Hereby we agree to add Article 5.4(c):
The University of Western
Ontario will provide
Molecular Insight
Pharmaceuticals, Inc. with administrative support for and monitoring of
prosecution done by a single Patent Agent Firm.
The service fee of Canadian $2000.00 is payable annually on April 30th
starting in 2005.
Molecular Insight Pharmaceuticals, Inc. The University of Western Ontario
/s/ Xx. Xxxx Xxxxxx /s/ Xx. Xxxx Xxxxxxx
--------------------------------------- ------------------------------
Xx. Xxxx Xxxxxx Xx. Xxxx Xxxxxxx, Ph.D. M.B.A.
President and CSO Director, Industry Liaison
Date: Date:
I have the authority to bind the Company I have the authority to bind the
University.
AN/ch
