Exhibit 10.11
AMENDMENT TO AMENDED AND RESTATED EXCLUSIVE LICENSE AGREEMENT
This Amendment to Amended and Restated Exclusive License Agreement
("Amendment"), effective as of March 18, 2002, by and between GenVec, Inc.,
having offices at 00 Xxxx Xxxxxxx Xxxx Xxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000
("LICENSEE"), and Cornell Research Foundation, Inc., having offices at Cornell
Business & Technology Park, 00 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxx Xxxx
00000 (the "FOUNDATION"), amends that certain Amended and Restated Exclusive
License Agreement by and between LICENSEE and FOUNDATION dated April 1, 1993
(the "Restated Agreement").
WHEREAS, the parties desire to amend the Restated Agreement as set forth
herein below.
NOW, THEREFORE, LICENSEE and the FOUNDATION agree as follows:
AMENDMENT. This Amendment hereby amends the Restated Agreement to incorporate
the terms and conditions set forth in this Amendment. The relationship of the
parties shall continue to be governed by the terms and conditions of the
Restated Agreement, as amended herein; and in the event that there is any
conflict between the terms and conditions of the Restated Agreement and this
Amendment, the terms and conditions of this Amendment shall control. As used in
this Amendment, all capitalized terms shall have the meanings defined for such
terms in this Amendment or, if not defined in the Amendment, the meanings
defined in the Restated Agreement.
MODIFICATIONS TO THE AGREEMENT:
1. The Restated Agreement is hereby amended to replace Section 1.14 with a new
Section 1.14 which shall read as follows:
"Valid Claim" shall mean a claim of an issued and unexpired Licensed Patent
or a claim of a Licensed Application which has not been held unpatentable,
invalid or unenforceable by a court or other government agency of competent
jurisdiction and has not been admitted to be invalid or unenforceable through
reissue, re-examination, disclaimer or otherwise; provided, however, that if
any holding of invalidity, unenforceability or unpatentability is later
reversed by a court or agency with overriding authority, the relevant claim
shall be reinstated as a Valid Claim hereunder with respect to sales made
after the date of such reversal. Notwithstanding the foregoing provisions of
this Section 1.14, if a claim in a Licensed Application has not issued as a
claim of an issued patent
[*]=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. OMITTED TEXT IS INDICATED BY A "*".
within * after the date from which such claim takes priority, such pending
claim shall not be a Valid Claim for purposes of this Agreement unless and
until a patent issues including such claim.
2. The Restated Agreement is hereby amended to add the following Section 1.15:
"LICENSED TARGETING PATENT" shall mean (i) any patent listed in Appendix A to
this Amendment, (ii) any patent issuing from a Licensed Targeting
Application, (iii) all extensions, reissues and re-examinations of (i) or
(ii), and (iv) foreign counterparts of any of the foregoing.
3. The Restated Agreement is hereby amended to add the following Section 1.16:
"LICENSED TARGETING APPLICATION" shall mean any patent application listed in
Appendix A to this Amendment, and any continuation, continuation-in-part, or
divisional applications thereof, as well as foreign counterparts thereof.
4. The Restated Agreement is hereby amended to add the following Section 6.12:
Notwithstanding any provisions of this Article VI to the contrary, if a
Licensed Product is covered in the country of manufacture or sale only by a
Valid Claim of a Licensed Targeting Patent or a Licensed Targeting
Application with respect to Licensed Patents or Licensed Applications,
LICENSEE shall not be required to pay a royalty, but shall make payments in
accordance with Section 6.13.
5. The Restated Agreement is hereby amended to add the following Section 6.13:
6.13.1 Following approval for marketing by the Food and Drug Administration
(or any foreign equivalent) of a Licensed Product that is covered by a
Valid Claim of a Licensed Targeting Patent or Licensed Targeting
Application, for each calendar year in which commercial sales of such
Licensed Products occur and the Net Sales Price of such Licensed
Products sold by LICENSEE equals or does not exceed an aggregate total
of * Dollars ($*), LICENSEE shall pay to the FOUNDATION the sum of *
Dollars ($*) within sixty days following the end of such calendar
year.
6.13.2 Following approval for marketing by the Food and Drug Administration
(or any foreign equivalent) of a Licensed Product that is covered by a
Valid Claim of a Licensed Targeting Patent or Licensed Targeting
Application, for each calendar year in which commercial sales of such
Licensed Products occur and the Net Sales Price of such Licensed
Products sold by LICENSEE exceeds an aggregate total of * Dollars
($*), LICENSEE shall pay to the FOUNDATION the sum of * Dollars ($*)
within sixty days following the end of such calendar year.
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6. The parties acknowledge that, as of the effective date of this Amendment, *
is * a * with * with respect to the *. The parties also acknowledge that *
has * with* and * concerning *, and that * might have other such * in the
future. * hereby warrants and represents to * that there is * that, in return
for the execution of this Amendment, LICENSEE will * described in this
Paragraph 6.
7. Notwithstanding the provisions of Paragraph 6, in the event that LICENSEE
undergoes a Bankruptcy Event (as hereinafter defined) any sublicense granted
by LICENSEE under the Restated Agreement with respect to the Licensed
Targeting Patent or Licensed Targeting Application may, at the election of
such sublicensee communicated in writing to FOUNDATION, remain in effect in
the event of any termination of the Restated Agreement and shall provide for
the assignment of such sublicense to FOUNDATION or its designee, in the event
that the Restated Agreement is terminated; provided that, in the event any
sublicensee agrees to such assignment, the financial obligations of the
sublicensee to FOUNDATION shall be limited to an amount equal to a pro rata
share (based on the total number of sublicensees under the Restated Agreement
remaining in effect after such termination) of the amount that LICENSEE would
have been obligated to pay to FOUNDATION for the activities of such
sublicensee pursuant to the Restated Agreement. If the sublicensee does not
elect to have FOUNDATION assume such sublicense at such payment terms,
FOUNDATION agrees that the sublicensee and FOUNDATION shall, upon
sublicensee's written request, negotiate in good faith alternative payment
terms for such sublicense.
8. The Restated Agreement is hereby amended to add the following Section 13.4:
In the event that LICENSEE shall be declared insolvent or go into
liquidation, a receiver or a trustee be appointed for substantially all of
the property or estate of LICENSEE and said receiver or trustee is not
removed within sixty (60) days, or LICENSEE makes a general assignment for
the benefit of creditors (collectively, a "Bankruptcy Event"), and whether
any of the aforesaid Bankruptcy Events be the outcome of the voluntary act of
LICENSEE, or otherwise, FOUNDATION shall be entitled to terminate LICENSEE's
rights under Article II of this Restated Agreement. LICENSEE agrees (to the
extent it may lawfully do so) that it will not at any time insist upon, or
plead, or in any manner whatsoever claim to take the benefit or advantage of,
any stay or extension law or any other law wherever enacted, now or at any
time hereafter in force, which would prohibit the termination of this
Restated Agreement or in any way modify the effects thereof as provided
herein, and LICENSEE (to the extent it may lawfully do so or to the extent
that any bankruptcy trustee agrees to do so) hereby expressly waives all
benefit or advantage of any such law, and covenants that it will not hinder,
delay, or impede the execution of any power herein granted to FOUNDATION, but
will suffer and permit the execution of every power as though no such law had
been enacted.
9. The Restated Agreement is hereby amended to add the following Whereas clause:
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WHEREAS, The Hospital for Special Surgery, a not-for-profit corporation
organized and existing under the laws of the State of New York, and having a
place of business located at 000 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000
(hereinafter "HSS") jointly owns with FOUNDATION U.S. patent application
09/182,567, entitled "A Method for Inhibiting Immune Response to a
Recombinant Vector" (CRF D-1980; HSS-0027); and U.S. patent application
09/629,074, entitled "A Method of Enhancing Xxxx Xxxxxxx" (XXX X-0000;
HSS-0063), to each of which LICENSEE has a license under FOUNDATION's rights
under the Restated Agreement; and LICENSEE and FOUNDATION have agreed that
LICENSEE shall be granted a license by the FOUNDATION under the Restated
Agreement to HSS's ownership rights by means of a Joint Ownership Agreement
between HSS and FOUNDATION; and FOUNDATION and HSS shall execute such a Joint
Ownership Agreement promptly after the effective date of this Amendment;
Section 16.6 of the Restated Agreement hereby is amended in its entirety so
that, as amended, said Section 16.6 shall read as follows:
16.6 LICENSEE agrees to defend, indemnify and hold FOUNDATION and HSS
harmless from and against all liability, damages, expenses or losses for
death, personal injury, illness or property damage (including reasonable
attorney's fees) resulting from a claim, suit or proceeding brought by a
third party against FOUNDATION and HSS and arising (a) out of use by LICENSEE
or its sublicensees of inventions licensed or information furnished under
this Restated Agreement, or (b) out of any use, sale or other disposition by
LICENSEE or its sublicensees of Licensed Products made by use of such
inventions or information; provided that any indemnitee that intends to claim
indemnification under this Article XVI shall: (i) promptly notify LICENSEE in
writing of any claim with respect to which the indemnitee intends to claim
such indemnification, (ii) give LICENSEE sole control of the defense and
settlement thereof, and (iii) provide LICENSEE, at LICENSEE's expense, with
reasonable assistance and full information with respect to such claim.
LICENSEE shall have no obligation for any claim if the indemnitee seeking
indemnification makes any admission, settlement, or other communication
regarding such claim without the prior consent of LICENSEE, which consent
will not be unreasonably withheld. As used in this clause, FOUNDATION and HSS
includes their respective trustees, officers, agents and employees, and those
of Cornell University (including CUMC) and affiliated hospitals, clinics, or
other institutions affiliated with CUMC, and "LICENSEE" includes its
Affiliates, contractors and sub-contractors. In discharge of the above,
LICENSEE will maintain general liability insurance in the amount of at least
one million ($1,000,000) per occurrence with a deductible of more than
$10,000 per occurrence against damage to or destruction of property and
injury to or death of individuals and against such other risks as FOUNDATION
and HSS may reasonably request arising out of or in connection with any of
the Licensed Products. FOUNDATION, HSS and LICENSEE and their respective
officers, trustees, members of their governing boards, and employees will be
named insureds under all such insurance. Such insurance will also provide
that FOUNDATION and HSS will be given notice of any material modification
thereof which would reduce insurance coverage of LICENSEE, and at least
thirty (30) days prior written notice of cancellation or termination and
reason
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therefor. LICENSEE will furnish FOUNDATION and HSS upon request, and in any
event on execution of this Restated Agreement and on each anniversary of the
Effective Date of this Restated Agreement, written confirmation issued by the
insurer or an independent insurance agent confirming that insurance is
maintained in accordance with the above requirements.
ENTIRE AGREEMENT. Together the Restated Agreement and this Amendment constitute
the entire agreement between the Parties in connection with the subject matter
thereof and supersede all prior and contemporaneous agreements, understandings,
negotiations and discussions, whether oral or written, of the Parties. No
provision of this Amendment may be modified or amended except expressly in a
writing signed by both parties nor shall any terms be waived except expressly in
a writing signed by the party charged therewith. This Amendment shall be
governed in accordance with the laws of the State of New York, without regard to
principles of conflicts of laws.
IN WITNESS WHEREOF, the parties have executed this Amendment.
GENVEC, INC. CORNELL RESEARCH FOUNDATION, INC.
By: /s/ Xxxxxx X. Xxxxx By: /s/ Xxxxx Xxxxx
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Title: Sr. Vice President Title: Vice President
Corporate Development ------------------------
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Date: March 18, 2002 Date: March 18, 2002
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Appendix A to the Amendment To Amended And Restated Exclusive License Agreement
*
Exhibit A
Amended and Restated Exclusive License Agreement
[Previously filed as Exhibit 10.13 to the Company's Form S-1,
File Number 333-51475.]
