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CONFIDENTIAL TREATMENT EXHIBIT 10.10
DATED 6 October 1994
(1) THE UNIVERSITY OF OXFORD
(2) THE MEDICAL RESEARCH COUNCIL
(3) LEUKOSITE, INC.
(4) LEUKOSITE LIMITED
AGREEMENT
For the construction and operation of a
Therapeutic Antibody Centre
within the University of Oxford
XXXXXXX, PEEL & XXXXXX
-Solicitors-
0 Xx Xxxxx Xxxxxx XX0 0XX
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THIS AGREEMENT dated 6 October 1994 ("the Effective Date") is made
between:
(1) THE CHANCELLOR MASTERS AND SCHOLARS OF THE UNIVERSITY OF OXFORD whose
administrative offices are at Xxxxxxxxxx Xxxxxx, Xxxxxx XX 0XX, Xxxxxxx
("the University");
(2) THE MEDICAL RESEARCH COUNCIL of 00 Xxxx Xxxxxxxx, Xxxxxx X0 X0XX, Xxxxxxx
("the MRC");
(3) LEUKOSITE, INC., a Delaware Corporation, whose principal place of business
is at 000 Xxxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx XX 00000, XXX
("LeukoSite (US)"); and
(4) LEUKOSITE LIMITED, an English Company which is a wholly-owned subsidiary
of Leukosite (US), and whose registered office is at 00 Xxxxxxxx Xxxxxx,
Xxxxxx XX0X 0XX, Xxxxxxx ("LeukoSite (UK)".)
1 DEFINITIONS
In this Agreement, the following expressions shall have the following
meanings:
1.1 "LeukoSite" means LeukoSite (US) and LeukoSite (UK), jointly and
severally;
1.2 "the TAC" means the Therapeutic Antibody Centre which the University
intends to construct and operate an a site at the Xxxxxxxxx
Hospital, Oxford leased from The Oxford Radcliffe Hospital Trust:
set out in the First Schedule to this Agreement for illustration
purposes are a Site Location Plan and a drawing of possible layouts
for the floors of the Centre: the primary function of the Centre
will be the production of antibodies for use in clinical research;
1.3 "the Mobilization Date" means a date notified by the University to
LeukoSite (UK), being the date on which both the following
conditions are fulfilled:
1.3.1 the University obtains such permissions and consents as in the
reasonable opinion of the University are sufficient to enable
the work of constructing the TAC to begin on site; and
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1.3.2 the University enters into a binding agreement with The Oxford
Radcliffe Hospital Trust for the grant of a lease of the site
for the TAC to the University;
1.4 "the Research" means all research which is conducted in the TAC by
employees of the University, or under their direction and
supervision;
1.5 "Research Information" means data, formulae, process information
or other information developed in the course of the Research;
1.6 "Research Invention" means any process, use, article of manufacture
or composition of matter conceived or first actually or
constructively reduced to practice in the course of the Research;
1.7 "Research Material" means any material or substance which is
discovered, produced or derived in the course of the Research;
1.8 "the Technology Transfer Period" means the period of five (5) years
after the TAC becomes operational;
1.9 "Notified Discoveries" means Research Information, Research
Inventions and Research Material notified by the University to
LeukoSite (UK) under clause 3.2;
1.10 "the Pro Forma License" is set cut in the Second Schedule to this
Agreement;
1.11 "the Option Period" means the period beginning on the date of
notification of a Notified Discovery under clause 3.2 and ending on
whichever is the first to occur of twelve (12) months thereafter or
the service of a counter-notice by LeukoSite (UK) under clause 3.3:
the University will not unreasonably refuse a reasoned request from
LeukoSite (UK) for an extension of the twelve-(12)-month period in
relation to any individual Notified Discovery.
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2 FUNDING FOR THE TAC
2.1 The MRC will contribute * per annum throughout the Technology
Transfer Period towards the costs of staff, consumables, equipment,
indirect costs and other day-to-day running expenses of the TAC, and
* towards the cost of constructing and equipping the TAC. The exact
timing of capital payments within financial years is to be discussed
between the University and the MRC, but the intention is to front-
end load payments to 1995/96 or earlier, subject to written evidence
of expenditure; provided that, subject to written evidence of
expenditure, the entire capital contribution of the MRC will be
paid by the MRC by the end of its 1995/96 fiscal year.
2.2 The University has agreed with other parties for the payment by such
parties of further set sums towards the cost of constructing and
equipping the TAC.
2.3 The contributions by the MRC and the parties referred to in clause
2.2 will be subject to the University's acceptance of certain terms
and conditions of grant, but the University confirms and warrants to
LeukoSite (without prejudice to the second sentence of clause 3.4)
that such terms and conditions will not give either the MRC or the
other parties any claim to the ownership of Notified Discoveries.
2.4 LeukoSite (UK) will contribute the sum of three million United
States dollars (US $3,000,000) towards the cost of constructing and
equipping the TAC. Of this sum, $500,000 will be paid on the
Mobilization Date, and the balance will be paid at six-(6)-monthly
intervals thereafter by means of ten (10) installments, each of
$250,000.
2.5 Whenever a party is obliged to make a payment under the preceding
sub-clauses which attracts value-added, sales, use, excise or other
similar taxes or duties. the party under such obligation shall be
responsible for paying the taxes and duties.
2.6 Except as otherwise provided by the MRC's terms and conditions of
grant or by an agreement signed by or on behalf
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* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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of the University, as between the parties to this Agreement the full
and unencumbered title to all equipment purchased or constructed
using funds provided by the other parties shall vest in the
University.
3 TRANSFER OF TECHNOLOGY TO LEUKOSITE
3.1 Performance by the University of this clause 3 is subject to and
conditional upon:
3.1.1 receipt by the University of the contributions and funds
which are referred to in clauses 2.1, 2.2 and 2.4;
3.1.2 the grant of an appropriate lease of the site for the TAC
by The Oxford Radcliffe Hospital Trust to the University;
and
3.1.3 the obtaining of all permissions and consents required for
the construction of the TAC.
The University will use all reasonable endeavours to secure the
lease, permissions and consents referred to in clauses 3.1.2 and
3.1.3; to procure the construction and equipping of the TAC in an
appropriate and timely manner; and to operate the TAC efficiently
and in accordance with good laboratory practice.
3.2 Throughout the Technology Transfer Period:
3.2.1 a written report shall be submitted by the University to
LeukoSite (UK) within ninety (90) days after the end of each
six (6) months following the date on which the TAC becomes
operational: such report shall itemize the Research
Information and Research Material generated during the
six-(6)-month period: the University may file additional
reports if and whenever the University prefers not to wait for
the end of a six-(6)-month period but instead to start time
running immediately under clause 3.5 with respect to any
particular Research Information or Research Material;
3.2.2 the University will use all reasonable endeavours to report
Research Inventions promptly to LeukoSite
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(UK), as and when such Inventions are made and documented.
3.3 If LeukoSite does not intend to exploit any Notified Discovery
commercially, LeukoSite (UK) shall inform the University promptly by
serving a counter-notice to that effect.
3.4 LeukoSite (US) shall have the right in accordance with clause 3.5 to
take a license over each Notified Discovery, on the terms of the Pro
Forma License, with such modifications (if any) as the parties may
agree. The royalties received by the University under each such
license are to be divided between the University and the MRC in
accordance with formulae which will be established by separate
agreement between those two parties.
3.5 During the Option Period:
3.5.1 LeukoSite is licensed to use the Notified Discovery for
evaluation purposes. No license is granted for any other
purpose, and LeukoSite will keep the Notified Discovery
confidential by using the same care and discretion to avoid
its disclosure to any third party as LeukoSite uses with
respect to strictly-confidential information of its own which
it does not wish to be disclosed to others; and
3.5.2 the University will not negotiate with or enter into any
agreement or arrangement with any third party for the
commercial exploitation of the Notified Discovery.
Should LeukoSite (UK) during the Option Period give the University
notice of LeukoSite's desire to exercise the right granted in clause
3.4, the parties will complete a license of the Notified Discovery
in the form of the Pro Forma License, utilizing the material
provided by the University in the notification under clause 3.2 in
order to complete the blanks in Paragraphs 1.3, 1.5 and 1.6 and
Appendix B. Should the parties be unable to agree any of the wording
for the blanks in Paragraphs 1.3, 1.5 and 1.6 and Appendix B by the
end of the Option Period, the issue or issues in dispute shall be
settled in London by an arbitrator. The arbitrator shall be a
barrister specializing in intellectual property law, who has no
prior association with either party, or who is otherwise
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acceptable to both parties. He shall be nominated for the purpose by
the then Chairman of the General Council of the Bar. The license
granted to LeukoSite in clause 3.5.1, and the obligation accepted by
the University in clause 3.5.2, will both be extended until the
arbitration is concluded and the license over the Notified Discovery
completed.
3.6 If LeukoSite (UK) serves a counter-notice on the University under
clause 3.3, or if by the end of the Option Period LeukoSite has
given no notice to the University of a wish to exercise the right
granted in clause 3.4:
3.6.1 LeukoSite shall at the University's election either -
3.6.1.1 return all materials and documentation for the
Notified Discovery to the University; or
3.6.1.2 destroy all materials and documentation, in which
event LeukoSite shall provide the University with
written certification of such destruction, signed by
authorized representatives of both LeukoSite (US) and
LeukoSite (UK);
3.6.2 the University shall be free to license the Notified Discovery
to third parties; provided that if the University purposes to
grant such a license to a third party, the University shall
notify LeukoSite; and LeukoSite shall have the right within
the period of thirty (30) days after such notification to
obtain a license on the terms offered to the third party.
4 LIMITATION OF LIABILITY
4.1 The University makes no representation or warranty that advice or
information given by any of its employees, students, agents or
appointees who work in the TAC, or the content or use of any
materials, works or information provided in connection with the
Research, will not constitute or result in infringement of
third-party rights.
4.2 The University accepts no responsibility for any use which may be
made of the results of the Research, nor for any
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reliance which may be placed on such results, nor for advice or
information given in connection with them.
4.3 Without prejudice to any right which the other parties may have to
claim against the University, each of the other parties to this
Agreement undertakes to make no claim against any employee, student,
agent or appointee of the University, being a claim which seeks to
enforce against any of them any liability whatsoever in connection
with this Agreement or its subject-matter.
4.4 The liability of any party for any breach of this Agreement, or
arising in any other way out of the subject-matter of this
Agreement, will not extend to any incidental or consequential
damages or losses including (without limitation) loss of profits.
4.5 The maximum liability of the University to each of the other parties
under or otherwise in connection with this Agreement or its
subject-matter shall not exceed a sum equal to the aggregate of all
moneys received by the University from both LeukoSite and the MRC
under clause 2, together with interest on the balance of such moneys
from time to time outstanding, accruing from day to day at the
Lloyds Bank PLC Base Rate from time to time in force and compounded
annually as at 31 December.
4.5 If any sub-clause of this clause 4 is held to be invalid or
unenforceable under any applicable statute or rule of law then it
shall be deemed to be emitted, and if as a result any party becomes
liable for loss or damage which would otherwise have been excluded
then such liability shall be subject to the remaining sub-clauses of
this clause 4.
5 DURATION AND TERMINATION
5.1 The period of this Agreement shall begin on the Effective Date.
Subject to the following sub-clauses of this clause 5, it shall then
continue throughout the Technology Transfer Period.
5.2 The University may terminate this Agreement by giving not less than
seven (7) days' written notice to all the other parties:
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5.2.1 if LeukoSite (US) makes an assignment for the benefit of its
creditors, files a petition for protection under the US
Bankruptcy Code, is adjudicated insolvent, or applies for a
receiver or trustee of any part of its property;
5.2.2 if any proceeding of a type described in clause 5.2.1 is
commenced against LeukoSite (US) and remains undismissed for a
period of thirty (30) days;
5.2.3 if LeukoSite (US) indicates its consent to any proceeding
of a type described in clause 5.2.1;
5.2.4 if LeukoSite (UK) suffers distress or execution, is the
subject of a petition for a bankruptcy order, goes or is put
into liquidation, has a receiver or administrative receiver
appointed over any substantial part of its business, or seeks
any form of protection against its creditors from any
competent court or tribunal.
Provided that the foregoing shall not be applicable in a case filed
under Chapter 11 of the United States Bankruptcy Code until the case
is converted to a Chapter 7 by a final non-appealable order.
5.3 If the University has not notified a Mobilization Date to LeukoSite
(UK) under clause 1.3 within the period of ninety (90) days after
the Effective Date, LeukoSite (US) and LeukoSite (UK) shall each
have the night to terminate this Agreement by giving not less than
seven (7) days' written notice to all the other parties. These
rights shall become exerciseable on and from the end of the
ninety-(90)-day period: they shall cease to be exerciseable if and
when a Mobilization Date is notified by the University to LeukoSite
(UK) under clause 1.3. Furthermore, if either LeukoSite (US) or
LeukoSite (UK) exercises its right under this subclause but the
University notifies a Mobilization Date during the seven-(7)-day
period of the notice from LeukoSite (US) or LeukoSite (UK), the
notice from LeukoSite (US) or (as the case may be) LeukoSite (UK)
shall be of no effect.
5.4 By giving ninety (90) days' written notice to all the other parties
of the intention to terminate, the University may
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terminate this Agreement for any material breach of this Agreement
by either the MRC or LeukoSite.
5.5 By means of similar notice, the MRC and LeukoSite (US) shall each
have the night to terminate this Agreement for any material breach
by the University.
5.6 Any notice under clauses 5.4 or 5.5 shall include a detailed
statement describing the nature of the breach. If the breach is
capable of being remedied and is remedied within the ninety-(90)-day
notice period, then the termination shall not take effect. If the
breach is of a nature such that it can be fully remedied but not
within the ninety-day notice period, then termination shall also not
be effective if the party involved begins to remedy the breach
within that period, and then continues diligently to remedy the
breach until it is remedied fully. If the breach is incapable of
remedy, then the termination shall take effect at the end of the
ninety day period in any event.
5.7 The expiration of the Technology Transfer Period, or the termination
of this Agreement under the preceding sub-clauses of this clause 5,
shall mean the termination, with effect from the expiry date or (as
the case may be) the effective date of termination, of the
obligations imposed on the parties under clauses 2.1 through 2.5 and
clause 3 (save only in relation to Notified Discoveries which have
been notified by the University to LeukoSite (UK) under clause 3.2
before the expiry date or the effective date of termination). The
remaining clauses shall survive the expiration of the Technology
Transfer Period and the termination of this Agreement, for whatever
reason. The duration of any licenses granted pursuant to clauses 3.4
and 3.5 shall be determined by the provisions for duration and
termination in each such license, and shall not be affected by the
operation of the termination clauses in this Agreement.
6 GENERAL
6.1 Clause headings are inserted in this Agreement for convenience only,
and they shall not be taken into account in the interpretation of
this Agreement.
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6.2 This Agreement shall not be assignable by any of the parties without
the prior written consent of all the other pates (which consent
shall not be unreasonably withheld or delayed), except that
LeukoSite without the consent of the other parties may assign this
Agreement to a successor in interest or transferee of all or
substantially all of the portion of the business to which the
Agreement relates.
6.3 Without prejudice to the University's other rights and remedies, if
LeukoSite (UK) fails to perform any of its obligations under this
Agreement, or commits any breach of those obligations, LeukoSite
(US) will indemnify the University against all losses, costs,
claims, demands and liabilities which may be incurred or suffered by
the University as a result of such non-performance or breach,
provided that LeukoSite (US) is promptly notified. LeukoSite (US)
shall then have the right to control the defense, settlement or
compromise of any such claim which is brought by a third party.
6.4 Subject to HM Treasury rules as they apply to Research Councils, if
another party to this Agreement fails to make any payment due to the
University under this Agreement then, without prejudice to the
University's other rights and remedies consequent upon breach of
this Agreement, the University may charge interest on the balance
outstanding, accruing from day to day at the rate of two per cent
(2%) per annum above the Lloyds Bank PLC Base Rate from time to time
in force and compounded annually as at 31 December.
6.5 If the performance by any party of any of its obligations under this
Agreement (other than an obligation to make payment) shall be
prevented by circumstances beyond its reasonable control, then such
party shall be excused from performance of that obligation for the
duration of the relevant event.
6.6 Unless such use is required by law, no party shall use the name of
any other party in any press release or product advertising, or for
any other commercial purpose, without that other party's prior
written consent; provided, however, that:
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6.6.1 publication of the sums received in the University's Annual
Report and similar publications shall not be regarded as a
breach of this clause;
6.6.2 the University will not unreasonably withhold consent to the
use of the University's name by LeukoSite in connection with a
financing.
6.7 Until further notice, the following shall be the parties'
representatives for the purpose of receiving invoices, payments,
statements, requests, notices and other documents under this
Agreement:
in the case of invoices, payments and statements addressed to
the University -.
The Administrator
Xxx Xxxxxxx Xxxx School of Pathology,
University of Oxford
Xxxxx Xxxxx Xxxx
XXXXXX XX0 0XX
Xxxxxxx;
in the case of requests, notices and other documents
addressed to the University -
The Director of the Research Services Office
University of Oxford
University Offices
Xxxxxxxxxx Xxxxxx
XXXXXX XX0 0XX
Xxxxxxx;
in the case of invoices, payments and statements
addressed to the MRC -
Xxxxx Xxxxxxx
Finance Division
The Medical Research Council
00 Xxxx Xxxxxxxx
XXXXXX X0X 0XX
Xxxxxxx;
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in the case of requests, notices and other documents
addressed to the MRC -
The Head of the Technology Transfer Group
The Medical Research Council
00 Xxxx Xxxxxxxx
XXXXXX XXX 0XX
Xxxxxxx;
in the case of LeukoSite (US) -
The President
LeukoSite, Inc.
000 Xxxxxxxxxx Xxxxxx
XXXXXX Xxxxxxxxxxxxx XX 00000 XXX;
in the case of LeukoSite (UK) -
The Managing Director
LeukoSite Limited
c/o Xxxx Xxxxxx esq.
Messrs Xxxxxxx, Xxxx & Xxxxx
00 Xxxxxxxx Xxxxxx
XXXXXX XXX0X XXX Xxxxxxx.
6.3 Nothing in this Agreement shall create, imply or evidence any
partnership or joint venture between the parties or the relationship
between any of them of principal and agent.
6.9 This Agreement and its two (2) Schedules (which are incorporated
into and made a part of this Agreement) constitute the entire
agreement between the parties for the TAC. Any variation of this
Agreement shall be in writing and signed by authorized
representatives of all parties.
6.10 This Agreement shall be governed by English Law.
6.11 If any one or more clauses or sub-clauses of this Agreement would
result in this Agreement being prohibited pursuant to Article 85(l)
of the Treaty of Rome, then it or they shall be deemed to be
omitted. The parties shall uphold the remainder of this Agreement,
and shall negotiate an amendment which, as far as legally feasible,
maintains the economic balance between the parties.
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6.12 In entering into this Agreement the parties recognize that it is
impracticable to make provision for every contingency that may arise
in the course of performance. Accordingly, the parties declare it to
be their intention that this Agreement shall operate between them
with fairness and without detriment to the interests of any of them;
and if in the course of the performance of this Agreement unfairness
to any party is disclosed or anticipated, then all parties shall use
their best endeavors to agree upon such action as may be necessary
and equitable to remove the cause or causes of that unfairness.
AS WITNESS the hands of authorized signatories for the parties on the date
first mentioned above
THE SCHEDULES
1. Illustrative Site Location Plan and Layouts for the TAC
2. The Pro Forma License
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THE FIRST SCHEDULE
ILLUSTRATIVE SITE PLAN AND OTHER MATERIALS FOR THE TAC
(1) Site Location Plan
(2) Proposed Layouts
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THE SECOND SCHEDULE
THE PRO FORMA LICENSE
DATED 19( )
(1) THE UNIVERSITY OF OXFORD
(2) LEUKOSITE, INC.
LICENSE
of
(_______________________________________________________)
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This Agreement is effective ______________, 199(__) ("the EFFECTIVE DATE") by
and between The Chancellor, Masters and Scholars of the University of Oxford,
"UNIVERSITY"), whose administrative offices are at Wellington Square, Oxford,
CX1 2JD, England, and LeukoSite, Inc., a Delaware Corporation whose principal
place of business is at 000 Xxxxxxxxxx Xxxxxx, Xxxxxx, XX 00000, X.X.X.
("LEUKOSITE").
SECTION 1 - DEFINITIONS
The terms used in this Agreement have the following meaning:
1.1 The term "AFFILIATE" as applied to LEUKOSITE shall mean any company or
other legal entity other than LEUKOSITE in whatever country organised,
controlling, or controlled by, LEUKOSITE. The term "control" means
possession, direct and indirect, of the power to direct or cause the
direction of the management and policies whether through the ownership of
voting securities, by contract or otherwise.
1.2 The term "NET SALES PRICE" shall mean the total received by LEUKOSITE or
its AFFILIATES or its SUBLICENSEES from sale of PRODUCT, less
transportation charges and insurance. sales taxes, use taxes, excise
taxes, value added taxes, customs duties or other imposts, normal and
customary quantity and cash discounts, rebates granted, disallowed
reimbursements, and allowances and credit on account of rejection or
return of PRODUCT.
PRODUCT shall be considered "sold" when billed out or invoiced.
1.3 The term "PATENT RIGHT(S)" shall mean (__________________________________
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________)
1.4 The term "PRODUCT" shall mean any article, composition, apparatus,
substance, chemical, material, method, process or service which is,
incorporates or utilises LICENSED MATERIAL and / or LICENSED INFORMATION,
or the manufacture, import, sale or use of which is covered by PATENT
RIGHTS, copyrights, design rights, registered designs, topography (mask
work) rights, extraction rights or other identifiable and enforceable
intellectual property rights.
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1.5 The term "LICENSED INFORMATION" shall mean (_____________________________
________________________________________________________________________).
1.6 The term "LICENSED MATERIAL" shall mean (________________________________
________________________________________________________________________).
1.7 The term "SUBLICENSEE" shall mean any non-AFFILIATE third party licensed
by LEUKOSITE to make, have made, import, use or sell any PRODUCT.
1.8 The term "VALID CLAIM" shall mean a claim of an issued patent which has
not lapsed or become abandoned or been declared invalid or unenforceable
by a court of competent jurisdiction or an administrative agency from
which no appeal can be or is taken.
1.9 The use herein of the plural shall include the singular, and the use of
the masculine shall include the feminine.
SECTION 2 - LICENSED MATERIALS
2.1 For so long as LICENSED MATERIALS are licensed exclusively to LEUKOSITE
under this Agreement:
(a) UNIVERSITY shall use all reasonable endeavours to prevent the
distribution of LICENSED MATERIALS without LEUKOSITE's prior written
approval to for-profit entities or persons known to be employed
thereby or consulting or performing research therefor;
(b) When transferring LICENSED MATERIALS to not-for-profit entities or
persons known to be affiliated therewith UNIVERSITY shall require
such entities or persons to sign a Materials Transfer Agreement
substantially in the form set out in Appendix A to this Agreement;
and
(c) Prior to any such distribution of any such LICENSED MATERIAL,
UNIVERSITY and LEUKOSITE shall use reasonable efforts to consider
the patentability of such LICENSED MATERIALS and at LEUKOSITE's
expense to co-operate to file, where appropriate, PATENT RIGHTS
protecting such LICENSED MATERIALS prior to their distribution.
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SECTION 3 - GRANT
3.1 (a) UNIVERSITY hereby grants to LEUKOSITE and LEUKOSITE hereby
accepts from UNIVERSITY a world-wide sole and exclusive royalty
bearing right and license under PATENT RIGHTS, and under any and
all UNIVERSITY's copyrights, design rights, registered designs,
topography (mask work) rights, extraction rights and other
identifiable and enforceable intellectual property rights in and
to LICENSED INFORMATION and LICENSED MATERIALS, to make, have
made, use and sell or have sold on its behalf PRODUCT including
the right to sublicense third parties. LEUKOSITE shall have the
right to extend such license to its AFFILIATES.
(b) The license granted to LEUKOSITE excludes the subject-matter set
forth in Appendix 8 to the extent such subject-matter has been
licensed to the entities listed in Appendix B as of the EFFECTIVE
DATE. Furthermore, UNIVERSITY and each employee, student, agent
and appointee of UNIVERSITY in UNIVERSITY's Therapeutic Antibody
Centre shall have the irrevocable, royalty-free right to use the
invention(s) the subject of PATENT RIGHTS and / or other
identifiable and enforceable intellectual property rights, and
all LICENSED INFORMATION and LICENSED MATERIALS for academic and
non-commercial research purposes, and (with the consent of
LEUKOSITE which shall not be withheld unreasonably) for the
purpose of clinical patient care; provided, however, that in the
case of a student leaving UNIVERSITY and wishing to take LICENSED
INFORMATION or LICENSED MATERIALS with him or her, UNIVERSITY
shall use all reasonable endeavors to procure from the student an
agreement protecting the use and security of the LICENSED
INFORMATION and LICENSED MATERIALS, such agreement being
substantially in the form set out in Appendix A to this
Agreement, mutatis mutandis.
3.2 LEUKOSITE agrees to forward promptly to UNIVERSITY a copy of any and all
fully executed sublicense agreements.
3.3 The above licenses to sell any PRODUCT includes the right of LEUKOSITE,
its AFFILIATES. and SUBLICENSEES to grant to the purchaser thereof the
right to use and / or resell such purchased PRODUCT without payment of any
further royalty hereunder.
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3.4 (a) To the extent LEUKOSITE maintains an exclusive license hereunder
and taking into account the complexity, and stage of development
of the PRODUCTS and the science related thereto, LEUKOSITE shall
use reasonable efforts under the circumstances to research,
develop and then commercialise PRODUCTS and shall keep UNIVERSITY
reasonably informed of its efforts in this respect. The efforts
of a SUBLICENSEE and / or an AFFILIATE shall be considered as
efforts of LEUKOSITE.
(b) In the event that UNIVERSITY reasonably believes that LEUKOSITE
is not making reasonable efforts under the circumstances to
research, develop and then commercialise PRODUCTS pursuant to
Paragraph 3.4(a) then UNIVERSITY shall provide written notice to
LEUKOSITE which specifies UNIVERSITY's basis for such belief and
what additional efforts UNIVERSITY believes should be made by
LEUKOSITE. Upon receipt of such written notice, UNIVERSITY and
LEUKOSITE shall enter into good faith negotiations in order to
reach mutual agreement as to what efforts by LEUKOSITE shall
satisfy the requirements of this Paragraph 3.4, and if such
mutual agreement is not reached within ninety (90) days after
receipt of such written notice, then the parties agree to submit
to arbitration pursuant to Paragraph 12.2 to determine the
efforts which should be exerted by LEUKOSITE. In such
arbitration, in determining the efforts which should be exerted,
the arbitrator shall consider efforts exerted by LEUKOSITE up to
the point of arbitration, the current stage of technical
development of the PRODUCT, the resources and manpower available
to LEUKOSITE; the potential market; and regulatory and technical
problems. Thereafter, LEUKOSITE shall exert the efforts
determined by the parties or in such arbitration.
(c) If LEUKOSITE fails to exert the efforts determined by the parties or
in such arbitration, UNIVERSITY's sale and exclusive remedy for
LEUKOSITE's failure to meet such efforts is for the licenses and
rights granted hereunder for the PRODUCT to be converted from an
exclusive right and license to a non-exclusive right and license.
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21
3.5 Subject to Paragraph 3.4, LEUKOSITE shall have sale discretion for making
all decisions relating to the commercialisation and marketing of PRODUCT
by LEUKOSITE.
SECTION 4 - CONFIDENTIALITY
4.1 LEUKOSITE agrees to use all reasonable endeavours to maintain LICENSED
INFORMATION in confidence and not to disclose any LICENSED INFORMATION to
a third party without the prior written consent of UNIVERSITY.
4.2 The obligations of confidentiality in Paragraph 4.1 will not apply to
LICENSED INFORMATION which:
(i) was known to LEUKOSITE or generally known to the public prior to
its disclosure by UNIVERSITY to LEUKOSITE; or
(ii) subsequently becomes known to the public by some means other than a
breach of this Agreement, including publication and / or laying open
to inspection of any patent applications or patents; or
(iii) is subsequently disclosed to LEUKOSITE by a third party in
circumstances where LEUKOSITE has no reason to believe there has
been a breach of an obligation of confidentiality to UNIVERSITY; or
(iv) is independently developed by LEUKOSITE.
SECTION 5 - PATENTS
5.1 (a) LEUKOSITE shall file, prosecute and maintain patent applications
and patents which are PATENT RIGHTS licensed exclusively to
LEUKOSITE with patent Counsel selected by LEUKOSITE and shall
consult with and keep UNIVERSITY advised with respect thereto.
(b) After the EFFECTIVE DATE of this Agreement, LEUKOSITE shall bear the
cost and expense for the filing, prosecution and maintenance of
PATENT RIGHTS for which LEUKOSITE retains an exclusive license.
5.2 The costs incurred by LEUKOSITE pursuant to this Section 5 to secure or
maintain any PATENT RIGHTS shall be fully creditable
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against royalties due under Section 6, but no royalty payment, after
taking into consideration any deduction pursuant to Paragraph 6.2, shall
be reduced under this Paragraph 5.2 by more than fifty percent (50%).
SECTION 6 - ROYALTIES
6.1 (a) For each PRODUCT sold by LEUKOSITE or its AFFILIATES LEUKOSITE
shall pay UNIVERSITY one of the following royalties:
(1) a royalty of * of the NET SALES PRICE of PRODUCTS so long as
in each case the PRODUCT, where sold. shall infringe a VALID
CLAIM of any PATENT RIGHT which is licensed exclusively to
LEUKOSITE in such country: or
(2) a royalty of * of the NET SALES PRICE of other PRODUCTS sold
in countries where LEUKOSITE has an exclusive license pursuant
to this Agreement, so long as in each case the sale of the
PRODUCT without the consent of UNIVERSITY (or of LEUKOSITE as
UNIVERSITY's licensee) would infringe a copyright, design
right, registered design, topography (mask work) night,
extraction night or other identifiable intellectual property
right which is enforceable in the country of sale; or
(3) in the event PATENT RIGHTS are licensed non-exclusively to
LEUKOSITE a royalty of * of the NET SALES PRICE of PRODUCTS so
long as in each case the PRODUCT, where sold, shall infringe a
VALID CLAIM of any PATENT RIGHT which is licensed
non-exclusively to LEUKOSITE in such country; or
(4) a royalty of * of the NET SALES PRICE of other PRODUCTS sold
in countries where LEUKOSITE has a non-exclusive license
pursuant to this Agreement, so long as in each case the sale
of the PRODUCT without the consent of UNIVERSITY (or of
LEUKOSITE as UNIVERSITY's licensee) would infringe a
copyright, design right, registered design, topography (mask
work) right,
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* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
23
extraction right or other identifiable intellectual property
right which is enforceable in the country of sale; or
(b) LEUKOSITE shall pay UNIVERSITY * of all royalties received by
LEUKOSITE and its AFFILIATES from all SUBLICENSEES, based on
the sale or distribution of PRODUCTS by the SUBLICENSEES.
(c) In the event that a PRODUCT includes both component(s) covered
by a VALID CLAIM of a PATENT RIGHT and active component(s) not
covered by a VALID CLAIM of a PATENT RIGHT (such PRODUCT being
a "Combined Product"), then the royalty due to UNIVERSITY on
the NET SALES PRICE of the Combined Product shall be either *
where the license enjoyed by LEUKOSITE is exclusive, or *
where the license is non-exclusive.
6.2 (a) In the event that royalties are to be paid by LEUKOSITE to a party who
is not an AFFILIATE of LEUKOSITE for PRODUCT for which royalties are also due to
UNIVERSITY pursuant to Paragraph 6.1 ("Other Royalties"), then the royalties to
be paid to UNIVERSITY by LEUKOSITE pursuant to Paragraph 6.1 shall be reduced by
one-half of the amount of such Other Royalties, but in no event shall any
royalties under Paragraph 6.1 be reduced by more than *.
(b) In addition to Paragraph 6.2(a), in the event that the royalty
paid to UNIVERSITY is a significant factor in the return realised
by LEUKOSITE so as to diminish LEUKOSITE's capability to respond
to competitive pressures in the market, UNIVERSITY agrees to
consider a reasonable reduction in the royalty paid to UNIVERSITY
as to each such PRODUCT for the period during which such market
condition exists. Factors determining the size of the reduction
will include profit margin on PRODUCT and on analogous products,
prices of competitive products, and LEUKOSITE's expenditures in
PRODUCT development. In no event shall such reduction exceed *.
6.3 LEUKOSITE shall keep, and shall cause each of its AFFILIATES and
SUBLICENSEES to keep, full and accurate books of account
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* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
24
containing a particulars that may be necessary for the purpose of
calculating all royalties payable to UNIVERSITY. Such books of account
shall be kept at their principal place of business and, with all necessary
supporting data shall, for three (3) years next following the end of the
calendar year to which each shall pertain be open for inspection by
UNIVERSITY or its designee upon reasonable notice during normal business
hours for the sole purpose of verifying royalty statements or compliance
with this Agreement, but in no event more than once in each calendar year.
All information and data offered shall be used only for the purpose of
verifying royalties and UNIVERSITY agrees to use all reasonable endeavours
to maintain such information and data in confidence, and not to disclose
such information and data to a third party without the prior written
consent of LEUKOSITE. In the event that such inspection uncovers an
underpayment of royalties of ten percent (10%) or more for any
one-(1)-year period, LEUKOSITE shall bear the cost of such inspection.
6.4 With each semi-annual payment, LEUKOSITE shall deliver to UNIVERSITY a
full and accurate accounting to include at least the following
information:
(a) quantity of each PRODUCT subject to royalty sold (by country) by
LEUKOSITE, and its AFFILIATES;
(b) total receipts for each PRODUCT subject to royalty (by country);
(c) royalties received by LEUKOSITE and its AFFILIATES from
SUBLICENSEES;
(d) total royalties payable to UNIVERSITY.
6.5 In each year the amount of royalty due shall be calculated semi-annually
as of June 30 and December 31 (each being the last day of an "ACCOUNTING
PERIOD") and shall be paid semiannually within the sixty (60) days next
following such date. Every such payment shall be supported by the
accounting prescribed in Paragraph 6.4 and shall be made in United States
currency. Whenever for the purpose of calculating royalties conversion
from any foreign currency shall be required, such conversion shall be at
the rate of exchange thereafter published in the Wall Street Journal for
the last business day of the applicable ACCOUNTING PERIOD, as the case may
be.
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6.6 If the transfer of or the conversion into United States Dollar equivalent
of any remittance due hereunder is not lawful or possible in any country,
such remittance shall be made by the deposit thereof in the currency of
the country to the credit and account of UNIVERSITY or its nominee in any
commercial bank or trust company located in that country, prompt notice of
which shall be given to UNIVERSITY. UNIVERSITY shall be advised in writing
in advance by LEUKOSITE and provide to LEUKOSITE a nominee, if so desired.
6.7 Any tax required to be withheld by LEUKOSITE under the laws of any foreign
country for the account of UNIVERSITY, shall be promptly paid by LEUKOSITE
for and on behalf of UNIVERSITY to the appropriate governmental authority,
and LEUKOSITE shall use its best, efforts to furnish UNIVERSITY with proof
of payment of such tax. Any such tax actually paid on UNIVERSITY's behalf
shall be deducted from royalty payment due UNIVERSITY.
6.8 Only one royalty shall be due and payable to UNIVERSITY for the
manufacture, use and sale of a PRODUCT irrespective of the number of
patents (or claims thereof or other identifiable and enforceable
intellectual property rights which cover the manufacture, use and sale of
such PRODUCT.
6.9 Various Paragraphs of this Agreement (as for example Paragraphs 5.2,
6.2(a), 6.2(b), 7.1(b), 7.3 and 7.4) allow LEUKOSITE to reduce or withhold
a portion of the royalties due to UNIVERSITY under this Agreement. Where
more than one such Paragraph applies, the cumulative effect shall be
restricted and limited so that the actual entitlement of UNIVERSITY to any
royalty payment under this Agreement is never less than fifty per cent
(50%) of UNIVERSITY's gross entitlement, before any reduction or
withholding.
SECTION 7 - INFRINGEMENT AND NONASSERTION
7.1 (a) If any of the PATENT RIGHTS or other identifiable and enforceable
intellectual property rights under which LEUKOSITE is the exclusive
licensee is infringed by a third party, LEUKOSITE shall have the
right and option but not the obligation to bring an action for
infringement, at its expense, against such third party in the name
of LEUKOSITE and / or (with the consent of UNIVERSITY) in the name
of UNIVERSITY, and with the consent of
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26
UNIVERSITY to join UNIVERSITY as a party Plaintiff it required.
LEUKOSITE shall promptly notify UNIVERSITY of any such
infringement and shall keep UNIVERSITY informed as to the
prosecution of any action for such infringement. No settlement,
consent judgment or other voluntary final disposition of the suit
which adversely affects the PATENT RIGHTS or other identifiable
and enforceable intellectual property rights may be entered into
without the consent of UNIVERSITY. The consents referred to in
this Paragraph 7.1(a) shall not unreasonably be withheld or
delayed: furthermore, consent shall be given if and whenever
LEUKOSITE can demonstrate to UNIVERSITY that such an action
cannot be brought unless UNIVERSITY's name is used or (as the
case may be) UNIVERSITY is joined as a party to the action.
(b) In the event that LEUKOSITE shall undertake the enforcement
and/or defense of the PATENT RIGHTS or other identifiable and
enforceable intellectual property rights by litigation, LEUKOSITE
may withhold up to fifty percent (50%) of the royalties otherwise
thereafter due UNIVERSITY hereunder and apply the same toward
reimbursement of its expenses, including reasonable attorneys'
fees, in connection therewith. Any recovery of damages by
LEUKOSITE for any such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of
LEUKOSITE relating to the suit, and next toward reimbursement of
UNIVERSITY for any royalties withheld and applied pursuant to
this Section 7. The balance remaining from any such recovery
shall be considered NET SALES PRICE for which a royalty shall be
paid to UNIVERSITY pursuant to Paragraph 6.1.
7.2 In the event that LEUKOSITE is not an exclusive licensee or as an
exclusive licensee elects not to pursue an action for infringement, upon
written notice to UNIVERSITY by LEUKOSITE that an unlicensed third party
is an infringer of a VALID CLAIM of PATENT RIGHTS licensed to LEUKOSITE or
an infringer of other identifiable and enforceable intellectual property
rights licensed to LEUKOSITE, UNIVERSITY shall have the right and option,
but not the obligation, at its cost and expense to initiate infringement
litigation and to retain any recovered damages.
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7.3 In the event that litigation against LEUKOSITE is initiated by a third
party charging LEUKOSITE with infringement of a patent or other
identifiable and enforceable intellectual property right of the third
party as a result of the manufacture, use or sale by LEUKOSITE of PRODUCT
covered by PATENT RIGHTS or other identifiable and enforceable
intellectual property rights, LEUKOSITE shall promptly notify UNIVERSITY
in writing thereof. LEUKOSITE's costs as to any such defense shall be
creditable against any and all payments due and payable to UNIVERSITY
under Paragraph 6.1 of this Agreement but no royalty payment after taking
into consideration any such credit under this Paragraph 7.3 shall be
reduced by more than fifty percent (50%).
7.4 In the event of a judgment in any suit in which a court of competent
jurisdiction rules that the manufacture, use or sale by LEUKOSITE of
PRODUCT covered by a PATENT RIGHT or other identifiable and enforceable
intellectual property right has infringed on a third party's patent or
other identifiable and enforceable intellectual property right requiring
LEUKOSITE to pay damages or a royalty to said third party, or in the event
of a settlement of such suit requiring damages or royalty payments to be
made, payments due to UNIVERSITY under Paragraph 6.1 of this Agreement
arising from the applicable PRODUCT shall be correspondingly reduced by
one-half of the amounts due under the requirement of such judgment or
under the terms of such settlement. In no case, however, shall the royalty
payment after taking into consideration any such reduction under this
Paragraph 7.4 be reduced by more than fifty percent (50%).
7.5 UNIVERSITY or any person or entity licensed by UNIVERSITY shall not assert
a patent or patent application of UNIVERSITY against LEUKOSITE or its
AFFILIATES or SUBLICENSEES or their customers with respect to any PRODUCT
for which royalties are payable under the Agreement.
7.6 In any infringement suit either party may institute to enforce the PATENT
RIGHTS or other identifiable and enforceable intellectual property rights
pursuant to this Agreement, the other party hereto shall, at the request
of the party initiating such suit, co-operate 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. All reasonable out-of-pocket costs of UNIVERSITY incurred in
connection with
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rendering cooperation requested by LEUKOSITE shall be paid by LEUKOSITE.
SECTION 8 - WARRANTIES
8.1 Each of UNIVERSITY and LEUKOSITE warrants and represents to the other that
it has the full right and authority to enter in to this Agreement, and
that it is not aware of any impediment which would inhibit its ability to
perform the terms and conditions imposed on it by this Agreement.
8.2 UNIVERSITY warrants and represents that to the best of its knowledge and
belief (having made reasonable enquiries in accordance with UNIVERSITY's
standard procedures) it will own all right, title and interest in and to
PATENT RIGHTS and in and to the other identifiable and enforceable
intellectual property rights which are referred to in Paragraph 3.1(a) of
this Agreement; it has the right to grant the rights granted hereunder;
the granting of such rights does not require the consent of a third party;
and there are and will be no outstanding agreements, assignments or
encumbrances inconsistent with the provisions of the Agreement.
SECTION 9 - INDEMNIFICATION AND LIMITATION OF LIABILITY
9.1 Each party shall notify the other of any claim, lawsuit or other
proceeding related to PRODUCT, LICENSED MATERIALS or LICENSED INFORMATION.
LEUKOSITE agrees that it will defend, indemnify and hold harmless
UNIVERSITY and its faculty members, researchers, employees, officers,
students, agents and appointees and each of them (the "Indemnified
Parties") from and against any and all third party claims, causes of
action and costs (including attorney's fees) of any nature made or
lawsuits or other proceedings filed or otherwise instituted against the
Indemnified Parties arising out of the design, manufacture, sale or use of
PRODUCT by LEUKOSITE or its AFFILIATES or SUBLICENSEES, except to the
extent of the negligence or wilful misconduct of an Indemnified Party.
LEUKOSITE will also assume responsibility for all costs and expenses
related to such claims and lawsuits for which it is obligated to indemnify
the Indemnified Parties pursuant to this Paragraph 9.1 including, but not
limited to, the payment of all attorney's fees and costs of litigation or
other defenses. LEUKOSITE shall have the right to control the defense,
settlement or compromise of any such claim.
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9.2 UNIVERSITY accepts no responsibility for any use which may be made of
LICENSED MATERIALS and LICENSED INFORMATION; nor for any reliance which
may be placed on them; nor for advice or information given in connection
with them.
9.3 Without prejudice to any right which LEUKOSITE may have to claim against
UNIVERSITY, LEUKOSITE undertakes to make no claim against any of the other
Indemnified Parties personally, being a claim which seeks to enforce
against any of them any liability whatsoever in connection with this
Agreement or its subject-matter.
9.4 The liability of either party for any breach of this Agreement, or arising
in any other way out of the subject-matter of this Agreement, will not
extend to any incidental or consequential damages or losses including
(without limitation) loss of profits.
9.5 The maximum liability of UNIVERSITY to LEUKOSITE under or otherwise in
connection with this Agreement or its subject-matter shall not exceed a
sum equal to the aggregate of all moneys received by UNIVERSITY under
Paragraph 6.5, together with interest an the balance of such moneys from
time to time outstanding, accruing from day to day at the Lloyds Bank PLC
Base Rate from time to time in force and compounded annually as at 31
December.
9.6 If any paragraph of this Section 9 is held to be invalid or unenforceable
under any applicable statute or rule of law then it shall be deemed to be
omitted, and if as a result any party becomes liable for loss or damage
which would otherwise have been excluded then such liability shall be
subject to the remaining paragraphs of this Section 9.
SECTION 10 - ASSIGNMENT; SUCCESSORS
10.1 This Agreement shall not be assignable by either of the parties without
the prior written consent of the other party (which consent shall not be
unreasonably withheld or delayed), except that LEUKOSITE without the
consent of UNIVERSITY may assign this Agreement to an AFFILIATE or to a
successor in interest or transferee of all or substantially all of the
portion of the business to which the Agreement relates.
10.2 Subject to the limitations on assignment herein, this Agreement shall be
binding upon and inure to the benefit of said successors in interest and
assigns of LEUKOSITE and UNIVERSITY. Any such
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successor or assignee of a party's interest shall expressly assume in
writing the performance of all the terms and conditions of this Agreement
to be performed by said party.
SECTION 11 - TERMINATION
11.1 The period of this Agreement shall begin on the EFFECTIVE DATE and, except
as otherwise specifically provided herein and unless this Agreement is
terminated sooner pursuant to Paragraphs 11.2 or 11.3, shall remain in
full force and effect until (in the case of PRODUCTS protected by PATENT
RIGHTS) the expiration of the last to expire of the PATENT RIGHTS to which
they relate or (in the case of PRODUCTS) protected by other intellectual
property rights as described in Paragraph 6.1(a)(2)) the expiration of
fifteen (15) years from the date of first sale; following which LEUKOSITE
shall have fully paid-up non-exclusive, non-cancellable licenses.
11.2 Subject to Paragraph 11.7, LEUKOSITE shall have the right to terminate
this Agreement in one or more countries upon sixty (60) days' prior
written notice.
11.3 (a) Subject to Paragraph 11.3(b), upon breach of any provision of
this Agreement by either party to this Agreement, in the event
the breach is not cured within sixty (60) days after written
notice to the breaching party by the other party, in addition to
any other remedy it may have, the other party at its sole option
may terminate this Agreement, provided that such other party is
not then in material breach of this Agreement. In the event that
a party in breach disputes such termination and institutes legal
action with respect thereto, the Agreement shall not be
terminated until there is a final court decision in this respect
from which no appeal can be or is taken.
(b) In the event that UNIVERSITY is in material breach of any
material provision of this Agreement, in the event that the
breach is not cured within sixty (60) days of written notice to
UNIVERSITY by LEUKOSITE, in addition to any other remedy it may
have, LEUKOSITE may withhold any payment due to UNIVERSITY under
this Agreement until such breach is cured. Such withholding of
payments by LEUKOSITE shall not constitute a breach of this
Agreement.
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(c) UNIVERSITY may terminate this Agreement by giving not less than
seven (7) days' written notice to LEUKOSITE (i) it LEUKOSITE
makes an assignment for the benefit of its creditors, files a
petition for protection under the US Bankruptcy Code, is
adjudicated insolvent, or applies for a receiver or trustee of
any part of its property, (ii) if any proceeding of a type
described in (i) is commenced against LEUKOSITE and remains
undismissed for a period of thirty (30) days, or (iii) if
LEUKOSITE indicates its consent to any proceeding of a type
described in (i); Provided that the foregoing shall not be
applicable in a case filed under Chapter 11 of the United States
Bankruptcy Code until the case is converted to a Chapter 7 by a
final non-appealable order.
11.4 Upon any termination of this Agreement LEUKOSITE shall have the option but
not the obligation to finish any work-in-progress and to sell any
completed inventory of a PRODUCT which remains on hand as of the date of
the termination, so long as LEUKOSITE pays to UNIVERSITY the royalties
applicable to said subsequent sales in accordance with the same terms and
conditions as set forth in this Agreement.
11.5 In the event that this Agreement is terminated, any sublicenses granted by
LEUKOSITE shall remain in full force and effect, provided that the
SUBLICENSEE is not then in breach of its sublicense agreement and the
SUBLICENSEE agrees to be bound to UNIVERSITY as a licensor under the terms
and conditions of the sublicense agreement. UNIVERSITY, if requested,
shall acknowledge to a SUBLICENSEE the applicability of this provision to
such SUBLICENSEE.
11.6 The obligations of Sections 3.1(b), 4, 8, 9, 11.4, 11.5 and 12 shall
survive the expiration and any termination of this Agreement.
11.7 Upon termination of this Agreement for any reason, nothing herein shall be
construed to release either party from any obligation that matured prior
to the effective date of such termination.
SECTION 12 - GENERAL PROVISIONS
12.1 The relationship between UNIVERSITY and LEUKOSITE is that of independent
contractors. UNIVERSITY and LEUKOSITE are not joint venturers, partners,
principal and agent, master and servant, employer or employee, and have no
relationship other than as
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independent contracting parties. UNIVERSITY shall have no power to bind or
obligate LEUKOSITE in any manner. Likewise, LEUKOSITE shall have no power
to bind or obligate UNIVERSITY in any manner.
12.2 Any matter or disagreement under Paragraph 3.4 which this Agreement
specifically specifies is to be resolved by arbitration shall be submitted
to a mutually selected single arbitrator to so decide any such matter or
disagreement. The arbitrator shall conduct the arbitration in accordance
with the Rules of the International Chamber of Commerce, unless the
Parties agree otherwise. If the parties are unable to mutually select an
arbitrator, the arbitrator shall be selected in accordance with the
procedures of the International Chamber of Commerce. The decision and
award rendered by the arbitrator shall be final and binding. Judgment upon
the award may be entered in any court having jurisdiction thereof. Any
arbitration requested by UNIVERSITY pursuant to this section shall be held
in Boston, Massachusetts, USA, and any arbitration pursuant to this
Section requested by LEUKOSITE shall be held in London, England; or (in
either case) such other place as may be mutually agreed upon in wrong by
the parties.
12.3 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter thereof and supersedes all poor
agreements in this respect. There shall be no amendments or modifications
to this Agreement, except by a written document which is signed by both
parties.
12.4 This Agreement shall be governed by English law.
12.5 The headings in this Agreement have been inserted for the convenience of
reference only and are not intended to limit or expand on the meaning of
the language contained in the particular article or section.
12.6 Where LEUKOSITE is obliged to make a payment to UNIVERSITY under this
Agreement which attracts value-added, sales. use, excise or other similar
taxes or duties, LEUKOSITE shall be responsible for paying such taxes and
duties.
12.7 If LEUKOSITE fails to make any payment due to UNIVERSITY under this
Agreement then, without prejudice to UNIVERSITY's other rights and
remedies consequent upon breach of this
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Agreement, UNIVERSITY may charge interest on the balance outstanding,
accruing from day to day at the rate of two percent (21%) per annum above
the Lloyds Bank PLC Base Rate from time to time in force and compounded
annually as at 31 December.
12.8 If the performance by either party of any of its obligations under this
Agreement (other than an obligation to make payment) shall be prevented by
circumstances beyond its reasonable control, then such party shall be
excused from performance of that obligation for the duration of the
relevant event.
12.9 Any delay in enforcing a party's rights under this Agreement or any waiver
as to a particular default or other matter shall not constitute a waiver
of a party's right to the future enforcement of its rights under this
Agreement, excepting only as to an expressed written and signed waiver as
to a particular matter for a particular period of time.
12.10 Notices: Any notices given pursuant to this Agreement shall be in writing
and shall be deemed delivered upon the earlier of (i) when received at the
address set forth below, or (ii) seven (7) business days after mailed by
certified or registered airmail postage prepaid and properly addressed,
with return receipt requested, or (iii) by facsimile as confirmed by
certified or registered airmail. Notices shall be delivered to the
respective parties as indicated or any other address designated by a party
to the other party in writing under the notice provisions of this
Paragraph 12.10:
To LEUKOSITE: LeukoSite, Inc.
000 Xxxxxxxxxx Xxxxxx
XXXXXX, XX 00000, X.X.X.
Copy to: Xxxxxx X. Xxxxxxx, Esq.
Carella, Byrne, Bain, Gilfillan,
Xxxxxx, Xxxxxxx & Olstein
0 Xxxxxx Xxxx Xxxx
XXXXXXXX, X.X. 00000, X.X.X.
To UNIVERSITY: The Director of the Research Services
Office University of Oxford
University Offices
Xxxxxxxxxx Xxxxxx
XXXXXX XX0 0XX, Xxxxxxx
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Copy to: The Administrator
Xxx Xxxxxxx Xxxx School of Pathology
University of Xxxxxx
Xxxxx Xxxxx Xxxx
XXXXXX XX0 0XX, Xxxxxxx.
12.11 LEUKOSITE shall not use the name of the UNIVERSITY or of any UNIVERSITY
staff member, employee, student or any adaption thereof in any
advertising, promotional or sales literature without the prior written
approval of UNIVERSITY.
12.12 In the event a court 6r governmental agency of competent jurisdiction
holds any provision. of this Agreement to be invalid, such holding shall
have no effect on the remaining provisions of this Agreement, and they
shall continue in full force and effect. Upon such holding, the parties
shall, within a reasonable period of time, determine whether the severed
provision(s) detrimentally and materially affect the obligations or
performance of either or both parties. If so affected, the parties shall,
within a reasonable period of time, negotiate in good faith to modify this
Agreement to relieve such effects. If such negotiations do not result in
mutually agreeable modification to this Agreement, either effected party
may terminate this Agreement upon providing the other party with thirty
(30) days written notice of such termination.
12.13 This Agreement shall not create any rights including without limitation
third party beneficiary rights, in any person or entity not a party to
this Agreement.
12.14 This Agreement may be signed in two or more counterparts, each such
counterpart shall be deemed an original and together shall constitute one
and the same Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement in two or more
counterparts, each as an original and all together as one instrument as of the
date set forth above.
UNIVERSITY: OXFORD UNIVERSITY
By:_______________________________
Name:_____________________________
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Title:_____________________________
LEUKOSITE: LEUKOSITE, INC.
By:_______________________________
Name:_____________________________
Title:____________________________
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APPENDIX A
FORM OF MATERIALS TRANSFER AGREEMENT
This AGREEMENT entered the ___________ day of __________________ 19__, by and
between The University of Oxford ("OXFORD") and ______________________
("Recipient").
1. Subject to availability OXFORD agrees to provide the following material to
Recipient:____________________. Such material and any related biological
material or associated know-how and data that will be received by
Recipient from OXFORD; and any substance that is replicated or derived
therefor; are covered by this Agreement. All such materials shall
hereinafter be referred to as "the Material(s)".
2. The Materials will be used by Recipient in connection with the research
described in Appendix I and only for noncommercial purposes. The Materials
shall not be used in research that is subject to consulting or licensing
obligations to another institution, corporation or business entity, unless
written permission is obtained in advance from OXFORD.
3. Recipient shall not distribute, release or disclose the Materials to any
other person or entity and shall take all reasonably practicable steps
with a view to ensuring that no-one will be allowed to take or send the
Materials to any other location, unless written permission is obtained in
advance from OXFORD. Recipient agrees to maintain the confidentiality of
any proprietary information of OXFORD regarding the Materials.
4. The Materials are supplied solely for scientific research purposes, for
use in animals and / or in vitro. THE MATERIALS SHALL NOT BE USED IN
HUMANS.
5. No right or license is granted under the Agreement either expressly or by
implication. It is understood that any and all proprietary rights,
including but not limited to patent rights, in and to the Materials shall
be and remain in OXFORD.
6. Recipient agrees to provide OXFORD with an advance copy at least thirty
(30) days in advance of any written submission (abstract or paper) or
oral presentation that makes reference to the Materials.
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If in the opinion of OXFORD any such publication describes a patentable
development, OXFORD shall have an opportunity to request that Recipient
delay the submission or public presentation until after a patent
application has been filed. In no event shall the delay be unreasonable.
If a publication does result from work using the Materials, Recipient
agrees to acknowledge OXFORD and / or give credit to OXFORD scientists, as
scientifically appropriate, based on any direct contribution they may have
made to the work.
7. Recipient agrees not to sequence or clone any Material provided by
OXFORD without the written permission of OXFORD.
8. In the event that use of the Material results in an invention,
improvement, substance, or information whether or not patentable and
patents, if any, which result therefrom ("Developed Technology"),
Recipient agrees to disclose promptly to OXFORD all such inventions.
improvements, substances or information.
9. Recipient shall assign all right, title and interest in and to Developed
Technology to OXFORD. Recipient agrees to co-operate and assist OXFORD in
obtaining patent protection for Developed Technology.
10. Recipient agrees to execute, acknowledge and deliver all such further
papers as may be necessary to perform its obligation under this Agreement.
11. Recipient acknowledges that the Materials are provided WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY,
EXPRESS OR IMPLIED. OXFORD MAKES NO REPRESENTATION THAT THE USE OF THE
MATERIALS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER
PROPRIETARY RIGHT.
12. In no event shall OXFORD be liable for any use of the Materials by
Recipient. Recipient hereby agrees to defend, indemnify and hold harmless
OXFORD, its officers, employees, students and agents from any loss, claim,
damage, expense or liability, of whatsoever kind or nature (including
legal fees), which may arise from or in connection with this Agreement or
the use, handling or storage of the Materials.
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13. Recipient shall report to OXFORD at least once every twelve (12) months a
summary of the results of Recipient's work utilizing the Materials.
14. Upon the request of OXFORD, Recipient shall promptly return to OXFORD the
Materials furnished to Recipient under this Agreement.
15. Recipient agrees to comply with all government regulations and
guidelines which are applicable to the Recipient's use of the Materials.
16. This Agreement is not assignable, whether by operation of law or
otherwise, without the prior written consent of OXFORD.
17. This Agreement shall be governed by English law, and the English Courts
shall have exclusive jurisdiction to deal with any dispute which may arise
out of or in connection with this Agreement.
IN WITNESS of which the parties, intending to be legally bound, have caused this
Agreement to be executed by their respective duly-authorized representatives.
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APPENDIX I
[Description of the Recipient's Research Activity]
THE UNIVERSITY OF OXFORD RECIPIENT
By: By:
________________________________ ______________________________________
________________________________ ______________________________________
(Typed Name) (Typed Name)
________________________________ ______________________________________
(Title) (Title)
AUTHORIZED INSTITUTIONAL REPRESENTATIVE
By:
______________________________________
______________________________________
(Typed Name)
______________________________________
(Title)
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00
XXXXXXXX X
SUBJECT-MATTER OF OTHER LICENSES
Subject-Matter Licensee
-------------- --------
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SIGNED for and on behalf of SIGNED for and on behalf of
THE CHANCELLOR MASTERS THE MEDICAL RESEARCH COUNCIL
AND SCHOLARS OF THE
UNIVERSITY OF OXFORD
Name:/s/ X. Xxxxx Name:/s/ Xxxxxx X. Xxxx Ph.D.
------------------------------ ---------------------------------
Head of Technology Transfer Group
Position: Position:
-------------------------- ------------------------------
Signature:/s/ X. Xxxxx Signature:/s/ Xxxxxx X. Xxxx
------------------------- -----------------------------
SIGNED for and on behalf of SIGNED for and on behalf of
LEUKOSITE, INC. LEUKOSITE, INC.
Name:/s/ Xxxxxxxxxxx X. Xxxxxxxxx Name:/s/ Xxxxxxxxxxx X. Xxxxxxxxx
------------------------------ ----------------------------------
Position: Position:
-------------------------- ------------------------------
Signature:/s/ X.X. Xxxxxxxxx Signature:/s/ X.X. Xxxxxxxxx
------------------------- -----------------------------
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