EXHIBIT 10.9
*CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED WITH RESPECT TO THE OMITTED PORTIONS
LICENSE AGREEMENT
Effective as of July 1, 1999 ("Effective Date"), THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers under the laws
of the State of California ("STANFORD"), and Corcept Therapeutics, Inc., a
Delaware corporation having an address at 000 Xxxxxxxxxx Xxxxxx, Xxxx Xxxx,
Xxxxxxxxxx 00000 ("LICENSEE"), agree as follows:
1. BACKGROUND
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1.1 STANFORD has an assignment of the inventions entitled "Mifepristone for
Psychotic Major Depression" and "Mifepristone and Alzheimer's Disease",
from the laboratory of Xx. Xxxx Xxxxxxxxxx ("Invention[s]"), as
described in Stanford Dockets S97-104 and S98-048, and any Licensed
Patent(s), as hereinafter defined, which may issue to such
Invention(s).
1.2 STANFORD has certain technical data and information as hereinafter
defined ("Technology") pertaining to the Invention(s).
1.3 STANFORD desires to have the Technology and Invention(s) perfected and
marketed at the earliest possible time in order that products resulting
therefrom may be available for public use and benefit.
1.4 LICENSEE desires an Exclusive license under said Invention(s) and
Licensed Patent(s) to develop, manufacture, use, sell, offer for sale,
and import Licensed Product(s) in the Licensed Field of Use.
1.5 The Invention(s) were made in the course of research supported by the
National Institutes of Health.
2. DEFINITIONS
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2.1 "Affiliate" means any corporation or other entity that is directly or
indirectly controlling, controlled by, or under common control with
LICENSEE. For the purpose of this definition, "control" means the
direct or indirect beneficial ownership of at least forty-nine percent
(49%) in the income or stock of such corporation or other entity.
2.2 "Exclusive" means that, subject to Article 4, STANFORD shall not grant
further licenses or options to license to the Invention(s), the
Licensed Patent(s), or the Technology, and
shall not use the Invention(s) or the Technology itself except in
accordance with Section 3.3, in the Licensed Field of Use.
2.3 "Licensed Field of Use" means human therapeutics.
2.4 "Licensed Patent(s)" means any Letters Patent issued upon any U.S.
Patent Applications claiming the benefit under 35 U.S.C. 119(e) of
STANFORD's U.S. Provisional Patent Application, Serial Number
60/060,973 filed October 6, 1997 or U.S. Provisional Patent
Application, Serial Number 60/085,703 filed May 15, 1998, any foreign
patents corresponding thereto, and/or any divisions, continuations,
continuations-in-part, reexaminations, or reissues thereof.
2.5 "Licensed Product(s)" means any product or part thereof in the Licensed
Field of Use, the manufacture, use, sale, offer for sale, or
importation of which:
(a) Is covered by a valid, enforceable claim of an issued,
unexpired Licensed Patent(s) directed to the Invention(s). A
claim of an issued, unexpired Licensed Patent(s) shall be
presumed to be valid and enforceable unless and until it has
been held to be invalid or unenforceable by a final judgment
of a court of competent jurisdiction from which no appeal can
be or is taken; or
(b) Is covered by any claim being prosecuted in a foreign pending
application (other than in Japan) within the Licensed
Patent(s), which application has not been pending for more
than seven (7) years, the pendency being measured from the
filing date of the first application in that country
(including the international filing date of a PCT application
designating that country) from which the application claims
priority or benefit; or
(c) Is covered by any claim being prosecuted in a U.S. or Japanese
pending application within the Licensed Patent(s), which
application has not been pending for more than ten (10) years,
the pendency being measured from the filing date of the first
application in that country (including the international
filing date of a PCT application designating that country, but
not including the filing date of any provisional application)
from which the application claims priority or benefit.
2.6 "Net Sales" means the gross revenue derived by LICENSEE or an Affiliate
from sales of Licensed Product(s), less the following items but only
insofar as they actually pertain to the disposition of such Licensed
Product(s) by LICENSEE or an Affiliate, are included in such gross
revenue, and are separately billed:
(a) Import, export, excise and sales taxes, and custom duties;
(b) Costs of insurance, packing, and transportation from the place
of manufacture to the customer's premises or point of
installation;
(c) Costs of installation at the place of use; and
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(d) Credit for returns, allowances, or trades.
2.7 "Technology" means technical data and information, including but not
limited to the information contained in the Licensed Patent(s),
pertaining to the Invention(s) and provided to LICENSEE, whether or not
it is of a confidential nature.
3. GRANT
-----
3.1 STANFORD hereby grants and LICENSEE hereby accepts a license in the
Licensed Field of Use under the Invention(s), the Technology, and the
Licensed Patent(s) to make, use, sell, offer for sale, and import
Licensed Product(s).
3.2 Said license is Exclusive, including the right to sublicense pursuant
to Article 13, for a term commencing as of the Effective Date of this
Agreement and ending on the expiration of the last to expire of the
issued Licensed Patent(s), on a country-by-country basis, or if no
patent within the Licensed Patent(s) issues in a country, shall
terminate on the tenth anniversary of the first sale of a Licensed
Product(s) in such country.
3.3 STANFORD shall have the right to practice the Invention(s) and use the
Technology for its own bona fide research, including sponsored research
and collaborations. STANFORD shall have the right to publish any
information included in Technology and Licensed Patent(s).
4. GOVERNMENT RIGHTS
-----------------
This Agreement is subject to all of the terms and conditions of Xxxxx
00 Xxxxxx Xxxxxx Code Sections 200 through 204, including an obligation
that Licensed Product(s) sold in the United States be "manufactured
substantially in the United States," and LICENSEE agrees to take all
reasonable action necessary on its part as licensee to enable STANFORD
to satisfy its obligation thereunder, relating to Invention(s).
STANFORD agrees to assist LICENSEE in obtaining a waiver of the
domestic manufacture requirement if LICENSEE finds that domestic
manufacture of Licensed Product(s) is not commercially feasible.
5. DILIGENCE
---------
5.1 As an inducement to STANFORD to enter into this Agreement, LICENSEE
agrees to use commercially reasonable efforts and diligence to proceed
with the development, manufacture, and sale of Licensed Product(s) and
to diligently develop markets for the Licensed Product(s), either by
itself or through Affiliate(s) or sublicensee(s). Unless LICENSEE shall
have filed an IND for a Licensed Product(s) by ****, LICENSEE agrees
that STANFORD may terminate this Agreement. STANFORD may terminate this
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Agreement if, after final FDA approval of an NDA for a Licensed
Product(s), LICENSEE or an Affiliate(s) or sublicensee(s) has not sold
Licensed Product(s) for a period of ****.
5.2 Progress Report - On or before September 30 of each year until LICENSEE
---------------
or an Affiliate or sublicensee markets a Licensed Product(s), LICENSEE
shall make a written annual report to STANFORD covering the preceding
year ending June 30, regarding the progress of LICENSEE toward
commercialization of Licensed Product(s), either by itself or through
Affiliate(s) or sublicensee(s). Such report shall include, as a
minimum, information sufficient to enable STANFORD to satisfy reporting
requirements of the U.S. Government and for STANFORD to ascertain
progress by LICENSEE toward meeting the diligence requirements of this
Article 5.
6. ROYALTIES
---------
6.1 LICENSEE agrees to pay to STANFORD a noncreditable, nonrefundable
license issue royalty of **** and Ten Thousand (10,000) shares of
LICENSEE's common stock upon signing this Agreement.
6.2 Beginning one year from the Effective Date of this Agreement and on
each anniversary thereafter, LICENSEE also shall pay to STANFORD a
yearly royalty of ****. Said yearly royalty payments are nonrefundable,
but they are creditable against earned royalties as provided in Section
6.6.
6.3 LICENSEE shall also pay to STANFORD the following milestone payments:
(a) **** upon the filing with the FDA by LICENSEE, or an Affiliate
or sublicensee, of the first New Drug Application for a
Licensed Product(s); and
(b) **** upon the first FDA approval to LICENSEE, or an Affiliate
or sublicensee, of a Licensed Product(s).
Said milestone payments are creditable against earned royalties as
provided in Section 6.6.
6.4 In addition, LICENSEE shall pay STANFORD earned royalties of **** on
Net Sales. If LICENSEE is obligated to pay royalties to a
non-Affiliated other entity(ies) based on Net Sales, the earned
royalties LICENSEE is obligated to pay to STANFORD on Net Sales shall
be reduced as follows: for the first **** of royalties paid to the
other entity(ies), the earned royalty payable to STANFORD shall be
reduced by **** of the percentage royalties paid to the other
entity(ies); and for the next **** of royalties paid to the other
entity(ies), the earned royalty payable to STANFORD shall be further
reduced by **** of the percentage royalties in excess of **** paid to
the other entity(ies); to a minimum of **** earned royalty payable to
STANFORD for royalties paid to the other entity(ies) of
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**** or more. For example, if LICENSEE was paying royalties to
non-Affiliated other entities of ****, STANFORD would receive ****
earned royalties; and if LICENSEE was paying royalties to
non-Affiliated other entities of ****, STANFORD would receive ****
earned royalties.
6.5 In addition, LICENSEE shall pay STANFORD, as earned royalties, **** of
the net amount received as royalties or license fees (including license
issue fees) from non-Affiliated sublicensee(s) for sales of Licensed
Product(s). The term "net amount", with respect to any sublicensee,
shall mean the amount actually received by LICENSEE from the
sublicensee less any payments (such as royalties or license fees) made
by LICENSEE to non-Affiliated other entities for sales of Licensed
Product(s) by the sublicensee.
6.6 Creditable payments under this Agreement shall be an offset to LICENSEE
against up to **** of each payment which LICENSEE would be required to
pay pursuant to Sections 6.4 and 6.5 until the entire credit is
exhausted.
6.7 If this Agreement is not terminated in accordance with other provisions
hereof,
(a) LICENSEE shall be obligated to pay royalties hereunder for so
long as LICENSEE, by its activities in any country would, but
for the license granted herein, infringe a valid, enforceable
claim of an unexpired Licensed Patent(s) of STANFORD covering
said activity in such country. LICENSEE's obligation to pay
royalties on Net Sales shall terminate on a country-by-country
basis upon the expiration of the last to expire of any issued
Licensed Patent(s) in each country. If in any country all the
claims of the issued patents within the Licensed Patent(s)
that cover Licensed Product(s) are held invalid or
unenforceable, then LICENSEE's obligation to pay royalties on
Net Sales shall terminate in such country.
(b) If no patent within the Licensed Patent(s) issues in a country
outside the U.S. or Japan on or before the seventh anniversary
of the filing date of the first patent application within the
Licensed Patent(s) filed in such country (including the
international filing date of a PCT application designating
such country), LICENSEE's obligation to pay royalties on Net
Sales in such country shall terminate on the anniversary date;
provided, however, that if a Licensed Patent subsequently
issues in that country, LICENSEE's obligation to pay royalties
under Section 6.4 shall resume for the term of such Licensed
Patent.
(c) If no patent within the Licensed Patent(s) issues in the U.S.
or Japan on or before the tenth anniversary of the filing date
of the first patent application within the Licensed Patent(s)
filed in that country (including the international filing date
of a PCT application designating that country, but not
including the filing date of any provisional application),
LICENSEE's obligation to pay royalties on Net Sales in the
U.S. shall terminate on the anniversary date; provided,
however, that if a
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Licensed Patent subsequently issues in the U.S. or Japan,
LICENSEE's obligation to pay royalties under Section 6.4 shall
resume for the term of such Licensed Patent.
6.8 The royalty on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such
currency quoted by the Bank of America (San Francisco) foreign exchange
desk, on the close of business on the last banking day of each calendar
quarter. Royalty payments to STANFORD shall be in U.S. Dollars. If
LICENSEE is blocked by law or regulation in any country from remitting
U.S. Dollars from such country, LICENSEE's obligation to make payments
based on Net Sales in that country shall be suspended until such
blockage is lifted or unless STANFORD shall accept royalty payments in
such country in local currency. All non-U.S. taxes related to royalty
payments shall be paid by LICENSEE and are not deductible from the
payments due STANFORD.
7. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
-----------------------------------------
7.1 Quarterly Earned Royalty Payment and Report - Beginning with the first
-------------------------------------------
sale of a Licensed Product(s), LICENSEE shall make written reports
(even if there are no sales) and earned royalty payments to STANFORD
within thirty (30) days after the end of each calendar quarter. This
report shall be in the form of the report of Appendix A and shall state
the number, description, and aggregate Net Sales of Licensed Product(s)
during such completed calendar quarter, and resulting calculation
pursuant to Paragraph 6.3 of earned royalty payment due STANFORD for
such completed calendar quarter. Concurrent with the making of each
such report, LICENSEE shall include payment due STANFORD of royalties
for the calendar quarter covered by such report. LICENSEE also agrees
to make a written report to STANFORD and earned royalty payment within
ninety (90) days after the expiration of the license pursuant to
Section 3.2, and shall continue to make quarterly written reports and
royalty payments until such time as all Licensed Product(s) produced
under the Agreement have been sold or destroyed.
7.2 Accounting - LICENSEE agrees to keep and maintain records for a period
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of three (3) years showing the manufacture, sale, use, and other
disposition of products sold or otherwise disposed of under the license
herein granted. Such records will include general ledger records
showing cash receipts and expenses, and records with include production
records, customers, serial numbers, and related information in
sufficient detail to enable the royalties payable hereunder by LICENSEE
to be determined. LICENSEE further agrees to permit its books and
records to be examined by an independent public accountant selected by
STANFORD and acceptable to LICENSEE not more often than once per
calendar year to the extent necessary to verify reports provided for in
Section 7.1. Such examination is to be made at LICENSEE's place of
business during ordinary business hours with at least thirty (30) days
prior written notice. The accountant shall report to STANFORD only
whether there has been a royalty underpayment and, if so, the amount of
underpayment. Such examination is to be at the expense of STANFORD,
except in the event that the results of the examination reveal and
underreporting of
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royalties due STANFORD of five percent (5%) or more, then the
examination costs shall be paid by LICENSEE.
8. WARRANTIES AND NEGATION OF WARRANTIES
-------------------------------------
8.1 STANFORD represents and warrants that:
(a) It has the power to enter into this Agreement and to grant the
rights granted herein to LICENSEE; and
(b) It has not granted any license(s), option(s) to license, or
other rights to the Invention(s), the Technology, and the
Licensed Patent(s) to any other party.
8.2 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by STANFORD as to the validity or
scope of any Licensed Patent(s);
(b) A warranty or representation that anything made, used, sold,
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties;
(c) An obligation to bring or prosecute actions or suits against
third parties for infringement, except to the extent and in
the circumstances described in Article 12;
(d) Granting by implication, estoppel, or otherwise any licenses
or rights under patents or other rights of STANFORD or other
persons other than Licensed Patent(s); or
(e) An obligation to furnish any technology or technological
information other than the Technology.
8.3 Except as expressly set forth in this Agreement, STANFORD MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF
THE LICENSED PRODUCT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
8.4 LICENSEE agrees that nothing in this Agreement grants LICENSEE any
express or implied license or right under or to U.S. Patent 4,656,134
`Amplification of Eucaryotic Genes' or any patent application
corresponding thereto.
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9. INDEMNITY
---------
9.1 LICENSEE agrees to indemnify, hold harmless, and defend STANFORD,
UCSF-Stanford Health Care and Stanford Health Services and their
respective trustees, officers, employees, students, and agents against
any and all claims for death, illness, personal injury, property
damage, and improper business practices arising out of the manufacture,
use, sale, or other disposition of Invention(s), Licensed Patent(s),
Licensed Product(s), or Technology by LICENSEE or its Affiliate(s) or
sublicensee(s), or their customers.
9.2 STANFORD shall not be liable for any indirect, special, consequential
or other damages whatsoever, whether grounded in tort (including
negligence), strict liability, contract or otherwise. STANFORD shall
not have any responsibilities or liabilities whatsoever with respect to
Licensed Product(s).
9.3 LICENSEE shall at all times comply, through insurance or
self-insurance, with all statutory workers' compensation and employers'
liability requirements covering any and all employees with respect to
activities performed under this Agreement.
9.4 In addition to the foregoing, LICENSEE shall maintain, from the
commencement of the first human clinical trial by LICENSEE and
thereafter during the term of this Agreement, Comprehensive General
Liability Insurance, including Products Liability Insurance, with
reputable and financially secure insurance carrier(s) to cover the
activities of LICENSEE and its Affiliate(s) and sublicensee(s). Such
insurance shall provide minimum limits of liability of $5 Million and
shall include STANFORD, UCSF-Stanford Health Care, Stanford Health
Services, their trustees, directors, officers, employees, students, and
agents as additional insureds. Such insurance shall be written to cover
claims incurred, discovered, manifested, or made during the term of
this Agreement and should be placed with carriers with ratings of at
least A- as rated by A.M. Best. Prior to the commencement of any human
clinical trial by LICENSEE, LICENSEE shall furnish a Certificate of
Insurance evidencing primary coverage and additional insured
requirements and requiring thirty (30) days prior written notice of
cancellation or material change to STANFORD. LICENSEE shall advise
STANFORD, in writing, that it maintains excess liability coverage
(following form) over primary insurance for at least the minimum limits
set forth above. All such insurance of LICENSEE shall be primary
coverage; insurance of STANFORD, UCSF-Stanford Health Care, Stanford
Health Services shall be excess and noncontributory.
10. MARKING
-------
Prior to the issuance of patents on the Invention(s), LICENSEE agrees
to xxxx Licensed Product(s) (or their containers or labels) made, sold,
or otherwise disposed of by it under the license granted in this
Agreement with the words "Patent Pending," and following the
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issuance of one or more patents, with the numbers of the Licensed
Patent(s), to the extent permitted by law or regulation in any country.
11. STANFORD NAMES AND MARKS
------------------------
11.1 LICENSEE agrees not to identify STANFORD in any promotional advertising
or other promotional materials to be disseminated to the public or any
portion thereof or to use the name of any STANFORD faculty member,
employee, or student or any trademark, service xxxx, trade name, or
symbol of STANFORD, Stanford Health Services, or UCSF-Stanford Health
Care, or that is associated with any of them, without STANFORD's prior
written consent, which consent shall not be unreasonably withheld.
11.2 Notwithstanding Section 11.1, LICENSEE may issue press release(s)
containing mention of STANFORD and any STANFORD faculty member or
employee associated with the Invention(s), the Technology, or the
Licensed Patent(s), subject to STANFORD's prior written consent, which
consent shall not be unreasonably withheld. LICENSEE may subsequently
issue press releases containing information previously approved for
release by STANFORD.
11.3 STANFORD and LICENSEE agree that reports in scientific literature and
presentations of research and development work at scientific
conferences and investment conferences and any disclosures required by
any law or regulation or the rules of any stock exchange are not
promotional materials.
12. PATENT PROSECUTION AND INFRINGEMENT
-----------------------------------
12.1 After the Effective Date of this Agreement, LICENSEE shall have the
primary responsibility for the filing, prosecution, and maintenance of
all Licensed Patent(s), including the conduct of all interference,
opposition, nullity, and revocation proceedings, using counsel of its
choice reasonably acceptable to STANFORD; provided, however, that
STANFORD shall have reasonable opportunity to advise and consult with
LICENSEE on such matters and may instruct LICENSEE to take such action
as STANFORD believes reasonably necessary to protect the Licensed
Patent(s). Counsel shall provide both LICENSEE and STANFORD with copies
of all material correspondence related to filing, prosecution, and
maintenance of the Licensed Patent(s). Invoices for legal services
shall be sent directly to LICENSEE with a copy directed to STANFORD. If
LICENSEE decides to abandon any patent or patent application within the
Licensed Patent(s), it shall give timely notice to STANFORD, which may
continue prosecution or maintenance at its sole expense; and any such
abandoned patent or patent application shall cease to be a Licensed
Patent(s) as of the date of such notice.
12.2 Payment of all reasonable fees and costs relating to the filing,
prosecution, and maintenance of the Licensed Patent(s) after the
Effective Date of this Agreement shall be the responsibility of
LICENSEE.
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12.3 STANFORD shall promptly inform LICENSEE of any suspected infringement
of any Licensed Patent(s) by a third party. LICENSEE shall have the
right at its expense to initiate and control any proceeding relating to
any infringement by a third party or any Licensed Patent(s), any
declaratory action alleging invalidity or noninfringement of any
Licensed Patent(s), or any interference, opposition, nullity or
revocation proceeding relating to any Licensed Patent(s) ("Protective
Action"). In pursuing such Protective Action, LICENSEE shall provide
STANFORD with material information related to the Protective Action and
shall have the right, but not the obligation, to join STANFORD as a
party to the Protective Action at LICENSEE's expense. STANFORD shall
have the right to participate in the Protective Action with its own
counsel at its own expense. If LICENSEE brings a Protective Action, it
may enter into a settlement, consent judgment, or other voluntary final
disposition of such Protective Action at its sole option. Any damages
recovered by a Protective Action shall be used first to reimburse
LICENSEE for the costs (including attorneys' and expert fees) of such
Protective Action actually paid by LICENSEE; and the remainder, if any
shall be retained by LICENSEE, except that LICENSEE shall pay STANFORD
**** of said remainder.
12.4 If LICENSEE decides not to bring a Protective Action after LICENSEE
receives notice from STANFORD under Section 12.3, LICENSEE shall inform
STANFORD and STANFORD may institute a Protective Action. In such event,
STANFORD shall control such Protective Action, including any
settlement, consent judgment or other voluntary final disposition
thereof at its sole option, shall bear the entire cost of such
Protective Action, and shall be entitled to retain the entire amount of
any recovery or settlement. STANFORD may, at its expense, join LICENSEE
as a party to such Protective Action.
12.5 Should either STANFORD or LICENSEE commence a Protective Action under
this Article 12 and thereafter elect to abandon the same, it shall give
timely notice to the other party who may, if it so desires, continue
prosecution of such Protective Action, provided, however, that the
sharing of past and future expenses and any recovery in such Protective
Action shall be as agreed upon between STANFORD and LICENSEE.
12.6 In any Protective Action initiated by a party under this Article 12,
the other party hereto shall, at the request and expense of the party
initiating such Protective Action, cooperate in all respects and make
available relevant records, papers, information, samples, and the like.
13. SUBLICENSE(S)
-------------
13.1 LICENSEE may grant sublicense(s) under the Invention(s), the
Technology, and the Licensed Patent(s) to make, have made, use, sell,
offer for sale, and import Licensed Product(s).
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13.2 If LICENSEE is unable or unwilling to serve or develop a potential
market or market territory, either by itself or through an Affiliate or
a sublicensee of LICENSEE's choice, for which there is a willing
sublicensee(s), LICENSEE will, at STANFORD's request, negotiate in good
faith a sublicense(s) hereunder.
13.3 Any sublicense(s) granted by LICENSEE under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement,
except:
(a) Sublicense terms and conditions shall reflect that any
sublicensee(s) shall not further sublicense without the
written consent of STANFORD, which consent shall not be
unreasonably withheld;
(b) The earned royalty rate specified in the sublicense(s) may be
at higher rates than the rates in this Agreement; and
(c) All reports required by sublicensee(s) shall be made to
LICENSEE.
Any such sublicense(s) also shall expressly include the provisions of
Articles 8 and 9 for the benefit of STANFORD and provide for the
transfer of all obligations, including the payment of royalties
specified in such sublicense(s), to STANFORD or its designee, in the
event that this Agreement is terminated.
13.4 LICENSEE agrees to provide STANFORD a copy of that portion of any
sublicense granted pursuant to this Article 13 that relates to royalty
reporting and the warranty and indemnification provisions of Articles 8
and 9 of this Agreement.
13.5 LICENSEE may grant royalty-free sublicensees or cross-licenses provided
LICENSEE pays all royalties due STANFORD from sublicensee's Net Sales
as if such sales were made by LICENSEE or an Affiliate.
14. TERMINATION
-----------
14.1 LICENSEE may terminate this Agreement by giving STANFORD notice in
writing at least thirty (30) days in advance of the effective date of
termination selected by LICENSEE.
14.2 STANFORD may terminate this Agreement if LICENSEE:
(a) Is in default in payment of royalty or providing of reports;
(b) Is in material breach of any provision hereof; or
(c) Provides any materially incorrect report;
and LICENSEE fails to remedy any such default, material breach, or
materially incorrect report within thirty (30) days after written
notice thereof by STANFORD.
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14.3 Surviving any termination or expiration are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of LICENSEE or STANFORD, accrued
because of any breach or default by the other party; and
(c) The provisions of Articles 7, 8, and 9 and any other
provisions that by their nature are intended to survive.
15. ASSIGNMENT
----------
LICENSEE may assign this Agreement to an Affiliate or to a successor in
interest to all or substantially all the business of LICENSEE relating
to Licensed Product(s) without STANFORD's consent provided that such
Affiliate or successor in interest assumes all obligations under the
License; and LICENSEE shall provide STANFORD notice of any such
assignment. Except for the foregoing, neither party may assign this
Agreement or any portion thereof without the express written consent of
the other, which consent shall not be unreasonably withheld.
16. ARBITRATION
-----------
16.1 Any controversy arising under or related to this Agreement, and any
disputed claim by either party against the other under this Agreement
excluding any dispute relating to patent validity or infringement
arising under this Agreement, shall be settled by arbitration in
accordance with the Licensing Agreement Arbitration Rules of the
American Arbitration Association.
16.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and STANFORD
within thirty (30) days of such arbitration request. Judgment upon the
award rendered by the arbitrator shall be final and nonappealable and
may be entered in any court having jurisdiction thereof. The parties
agree that, notwithstanding any provision of applicable law, they will
not request and the arbitrator shall have no authority to award
punitive or exemplary damages against any party. The costs of the
arbitration shall be shared equally by the parties, and each party
shall bear the costs of its own attorneys' fees and expert fees.
16.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court. The
arbitrator may limit the scope, time and/or issues involved in
discovery.
16.4 Any arbitration shall be held in Stanford, California, unless the
parties hereto mutually agree in writing to another place.
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17. NOTICES
-------
All notices under this Agreement shall be deemed to have been fully
given when done in writing and deposited in the United States mail,
registered or certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
000 Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Director
To LICENSEE: Corcept Therapeutics, Inc.
000 Xxxxxxxxxx Xxxxxx, 00xx Xxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xx. Xxxxx X. Xxxxxx
Either party may change its address upon written notice to the other
party.
18. CONFIDENTIALITY
---------------
STANFORD shall maintain the reports and information provided by
LICENSEE to STANFORD under Sections 5.2, 7.1, 7.2, and 13.4 in
confidence, and not disclose such reports to any third party, except as
required by STANFORD's normal reporting requirements, for the purposes
of this Agreement, or as required by law or regulation. STANFORD's
obligation of confidentiality hereunder shall be fulfilled by using at
least the same degree of care with LICENSEE's reports and information
as it uses to protect its own confidential information.
19. WAIVER
------
None of the terms of this Agreement can be waived except by the written
consent of the party waiving compliance.
20. APPLICABLE LAW
--------------
This Agreement shall be governed by the law of the State of California
applicable to agreements negotiated, executed and performed wholly
within California.
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21. SEVERABILITY
------------
If any portion of this Agreement shall be held to be invalid or
unenforceable under the law or regulation of any jurisdiction, such
holding of invalidity or unenforceability shall not affect the
remainder of the Agreement, which shall continue in full force and
effect.
22. ENTIRE AGREEMENT
----------------
This Agreement constitutes the entire agreement between LICENSEE and
STANFORD and supersedes all prior communications, understandings, and
agreements with respect to the subject matter of this Agreement. This
Agreement may not be amended except by a written agreement signed by
both LICENSEE and STANFORD.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
Signature: /s/ Xxxxxxxxx Xx
Name: Xxxxxxxxx Xx
Title: Director, Technology Licensing
Date: June 30, 1999
LICENSEE
Signature: /s/ Xxxxxx X. Xxxxxxxx
Name: Xxxxxx X. Xxxxxxxx
Title: Chief Executive Officer
Date: 6/15/99
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