EXHIBIT 10.3
EXECUTION COPY
AMENDED AND RESTATED LICENSE AGREEMENT
This Amended and Restated License Agreement (this "Agreement") is
made effective as of May 20, 2004 (the "Restated Effective Date") by and between
Ramot at Tel Aviv University Ltd., Company Registration No. 00-000000-0, a
corporation duly organized and existing under the laws of the State of Israel
("Ramot") and Predix Pharmaceuticals Holdings, Inc. a corporation duly organized
and existing under the laws of the State of Delaware (hereinafter
"Predix")(Ramot and Predix are each hereafter referred to individually as a
"Party" and together as the "Parties").
WHEREAS, Ramot is a company formed by Tel-Aviv University ("TAU") for
applied research and industrial development of know-how and inventions developed
or arrived at by scientists of TAU; and
WHEREAS, by operation of law or under the terms of such scientists'
employment or other relationships with TAU or Ramot, and according to agreement
between TAU and Ramot, all rights, title and interest in and to such know-how
and inventions are owned by Ramot; and
WHEREAS, Ramot has the right and authority to enter into agreements
relating to such know-how and inventions; and
WHEREAS, Ramot (formerly Ramot University Authority For Applied Research
and Industrial Development Ltd.) and Predix (by assignment from a predecessor
corporation) are Parties to that certain License Agreement dated September 18,
2000 (the "Effective Date"), pursuant to which Ramot granted to Predix an
exclusive license under intellectual property rights controlled by Ramot and
pertaining to certain drug discovery and development technology (the "Original
Agreement"); and
WHEREAS, Ramot and Predix now desire to amend and restate the Original
Agreement in its entirety as set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
and for other good and valuable consideration, the receipt and adequacy of which
are hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the terms
defined in this Article 1 shall have the meanings specified.
1.1 "AFFILIATE" shall mean, with respect to either Party, any other
person, corporation, company, partnership, joint venture and/or firm which
controls, is controlled by or is under common control with such Party. As used
in this Section 1.1 only, "control" of another person, corporation, company,
partnership, joint venture and/or firm shall mean the possession, directly or
indirectly, of the power to direct or cause the direction of the activities,
management or policies of such person, organization or entity, whether through
the ownership of voting securities, by contract or otherwise. Without limiting
the foregoing, control shall be presumed to
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
exist when a person, corporation, company, partnership, joint venture and/or
firm (a) in the case of corporate entities, directly or indirectly owns at least
twenty percent (20%) of the stock or shares having the right to vote for the
election of directors, and (b) in the case of non-corporate entities, holds the
direct or indirect power to manage, direct or cause the direction of the
management and policies of the non-corporate entity or the power to elect at
least twenty percent (20%) of the members of the governing body of such
non-corporate entity, any corporation, firm, limited liability company,
partnership or other entity that directly controls or is controlled by or is
under common control with a Party to this Agreement.
1.2 "CONFIDENTIAL INFORMATION" shall mean any confidential
scientific, technical, trade or business information relating to the subject
matter of this Agreement disclosed by or on behalf of one party to the other
that is either marked as confidential or if disclosed orally is reduced to a
written summary marked as confidential and delivered to the receiving party
within 30 days of disclosure. Confidential Information does not include
information that (i) is in possession of the receiving Party at the time of
disclosure, as reasonably demonstrated by written records; (ii) is or later
becomes part of the public domain through no fault of the receiving Party; (iii)
is received by a receiving Party from a third Party having no obligation of
confidentiality to the disclosing Party; or (iv) is developed independently by a
receiving Party without use of the disclosing Party's Confidential Information.
1.3 "CONTROL" or "CONTROLLED" shall mean, with respect to
any intellectual property rights, the right and authority of a Party to grant
the rights, licenses and options provided for herein without breaching any
written agreement with any third Party by virtue of such grant.
1.4 "DEVELOPMENT" and "DEVELOP" shall mean, with respect to
any Licensed Product, all activities with respect to such Licensed
Product relating to research and development and in connection with seeking,
obtaining and/or maintaining any Regulatory Approval for such Licensed Product
in the Field in the Territory, including without limitation, all pre-clinical
research and development activities, all human clinical studies, all activities
relating to developing the ability to manufacture any Licensed Product or any
component thereof (including, without limitation, process development work), and
all other activities relating to seeking, obtaining and/or maintaining any
Regulatory Approvals from the FDA and/or any Foreign Regulatory Authority.
1.5 "DERIVATIVE WORK" means any software that is derived
from the Licensed Technology, including without limitation, software that is a
translation (including any translation into other computer languages),
portation, modification, correction, extension, upgrade, improvement,
compilation, abridgment, adaptation or other form of the Licensed Technology.
Derivative Works shall include without limitation any software that would
infringe any of Ramot's copyrights in the Licensed Technology.
1.6 "DERIVED PRODUCT" shall mean a product, compound or
drug candidate that is identified, characterized or developed through the Use of
Licensed Technology and/or a Derivative Work, which is not a Discovered Product,
and that is commercialized by Predix, an Affiliate of Predix or a Sublicensee.
"Derived Products" include, without limitation, those compounds listed on
Exhibit 1.6 attached hereto.
1.7 "DISCOVERED PRODUCT" shall mean a product, compound or
drug candidate that is identified from an in silico library through the Use of
the Licensed Technology and/or a
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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Derivative Work, which is commercialized by Predix, an Affiliate of Predix or a
Sublicensee, without Modification and which had not been Modified by Predix
prior to such identification. For purposes of this Section 1.7, "Modification"
and "Modified" shall mean modification or optimization that increases the
likelihood that the product, compound or drug candidate can be successfully
developed into a drug product, including without limitation, by making
modifications to such product, compound or drug candidate to alter the
pharmacokinetics, bioavailability, toxicity, or efficacy, to improve stability,
to solve or avoid manufacturing issues or to avoid the intellectual property
rights of a Third Party.
1.8 "DISPUTE" shall have the definition set forth in
Section 10.1.
1.9 "DRUG APPROVAL APPLICATION" shall mean any application
for Regulatory Approval (including pricing and reimbursement approvals) required
prior to any commercial sale or use of a Licensed Product in any country or
jurisdiction in the Territory.
1.10 "FIELD" shall mean and include all uses, including
without limitation, all uses relating to the diagnosis, prevention and treatment
of any and all diseases or conditions in humans or animals.
1.11 "FIRST COMMERCIAL SALE" shall mean, on a
country-by-country basis, the date of the first arm's length transaction,
transfer or disposition for value to a Third Party of a Licensed Product by or
on behalf of Predix or any Affiliate of Predix in such country after Regulatory
Approval has been achieved in the country in which such Licensed Product is
sold. Sales for test marketing, sampling and promotional uses, clinical trial
purposes or compassionate or similar use shall not be considered to constitute a
First Commercial Sale.
1.12 "FDA" shall mean the United States Food and Drug
Administration and any successor agency or authority thereto.
1.13 "FOREIGN REGULATORY AUTHORITIES" shall mean any
applicable supranational, national, federal, state or local regulatory agency,
department, bureau or other governmental entity of any country or jurisdiction
in the Territory (other than the FDA in the United States), having
responsibility in such country or jurisdiction for any Regulatory Approvals of
any kind in such country or jurisdiction, and any successor agency or authority
thereto.
1.14 "LICENSED PATENT RIGHTS" shall mean all Patent Rights
owned by Ramot that claim Licensed Technology.
1.15 "LICENSED PRODUCT" shall mean any and all Derived
Products and Discovered Products, taken collectively.
1.16 "LICENSED TECHNOLOGY" shall mean: (a) the inventions
disclosed in Israeli Patent Application IL 137885, including without limitation,
the novel computational method for modeling the three (3) dimensional structure
of G-protein coupled receptors from their one (1) dimensional sequence, (b) the
inventions disclosed in Israeli Patent Application IL 137886, including without
limitation, the novel automated protein design algorithm based on the physical
properties that determine the protein structure stability and that is useful for
predicting protein sequences likely to achieve a desired folding pattern in a
very high computational efficiency.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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1.17 "LICENSED TECHNOLOGY EXCLUSIVITY TERM" shall mean that
period commencing on the Effective Date and continuing until the later of: (a)
the expiration or termination of the last [************] within the Licensed
Patent Rights and (b) the [*******] anniversary of the Effective Date.
1.18 "NET SALES" shall mean the gross invoiced sales price
for all Licensed Products sold by Predix and its Affiliates to Third Parties
throughout the Territory during each calendar quarter, less the following
amounts incurred or paid by Predix or its Affiliates during such calendar
quarter with respect to sales of Licensed Products regardless of the calendar
quarter in which such sales were made:
(a) trade, cash and quantity discounts or rebates actually
allowed or taken, including discounts or rebates to
governmental or managed care organizations;
(b) credits or allowances actually given or made for
rejection of, and for uncollectible amounts on, or return
of previously sold Licensed Products (including Medicare
and similar types of rebates);
(c) any charges for insurance, freight, and other
transportation costs directly related to the delivery of
Licensed Product to the extent included in the gross
invoiced sales price;
(d) any tax, tariff, duty or governmental charge levied on
the sales, transfer, transportation or delivery of a
Licensed Product (including any tax such as a value added
or similar tax or government charge) borne by the seller
thereof, other than franchise or income tax of any kind
whatsoever; and
(e) any import or export duties or their equivalent borne
by the seller;
provided that:
(i) In any transfers of Licensed Products between Predix
and an Affiliate of Predix or between an Affiliate of Predix and an Affiliate of
such Affiliate, Net Sales (subject to the deductions listed above) shall be
equal to the higher of: (x) the fair market value of the Licensed Products so
transferred, assuming an arm's length transaction made in the ordinary course of
business and (y) the total amount invoiced by such Affiliate on resale to an
independent third party purchaser; and
(ii) In the event that Predix, or an Affiliate of Predix,
receives non-monetary consideration for any Licensed Products or in the case of
transactions not at arm's length with a non-Affiliate of Predix or its
Affiliate, Net Sales (subject to the deductions listed above) shall be
calculated based on the fair market value of such consideration or transaction,
assuming an arm's length transaction made in the ordinary course of business.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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Notwithstanding the foregoing, "Net Sales" shall not include sales or transfers
between Predix and its Affiliates, if the Licensed Product is resold by the
Affiliate.
In the event that a Licensed Product under this Agreement is sold in combination
with another active ingredient or component having independent therapeutic
effect or diagnostic utility, then "Net Sales," for purposes of determining
royalty payments on the combination, shall be calculated by multiplying the Net
Sales of the combination by the fraction A/A+B, where A is the gross selling
price, during the royalty paying period in question, of the Licensed Product
sold separately, and B is the gross selling price, during the royalty period in
question, of the other active ingredients or components sold separately.
1.19 "PATENT RIGHTS" shall mean all patent applications and
patents, including Israeli and foreign applications, divisions, continuations,
and continuations-in-part, applications for certificates of invention and
priority rights, certificates of invention, reissues, re-examination
certificates, extensions or other governmental acts that effectively extend the
period of exclusivity by the patent holder, substitutions, renewals,
supplementary protection certificates, confirmations, registrations, validations
and additions.
1.20 "REGULATORY APPROVAL" shall mean any and all final
approvals (including pricing and reimbursement approvals), product and
establishment licenses, registrations or authorizations of any kind of the FDA
or any Foreign Regulatory Authority permitting the commercial sale of a Licensed
Product (or any component thereof) for use in the Field in any country or other
jurisdiction in the Territory.
1.21 "ROYALTY TERM" shall mean with respect to each
Licensed Product, on a country-by-country basis, a period of twelve (12) years
commencing on the First Commercial Sale of such Licensed Product in such
country.
1.22 "SERVICE INCOME" shall mean all amounts and other
consideration received by Predix, or an Affiliate of Predix, for or in
connection with the performance of Services; provided that in the event that
Predix or an Affiliate of Predix receives non-monetary consideration in
connection with any such services or in the case of transactions not at arm's
length, Service Income shall be calculated based on the fair market value of
such consideration or transaction, assuming an arm's length transaction made in
the ordinary course of business.
1.23 "SERVICES" shall mean services performed by Predix, or
an Affiliate of Predix, for the benefit of (a) a Third Party or (b) for the
benefit of a Third Party and Predix and/or an Affiliate of Predix, using the
Licensed Technology.
1.24 "SOFTWARE PRODUCT" shall mean a software product that
incorporates Licensed Technology. Notwithstanding the foregoing, Software
Products that are also within the definition of "Discovered Product" or "Derived
Product" are hereby deemed to be Software Products only.
1.25 "SUBLICENSE" shall mean a sublicense, assignment or
other grant of rights by Predix or an Affiliate of Predix to a Third Party
(regardless of whether such grant of rights is or is referred to as a
sublicense) of or with respect to: (a) some or all of the rights granted to
Predix under this Agreement; (b) a Software Product; or (c) the right to
Develop, have Developed, make, have made, use, have used, sell, offer for sale,
have sold, import or have imported Licensed Product(s). For avoidance of doubt,
an assignment completed in accordance
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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with Section 11.3 shall not be included within the term "Sublicense".
1.26 "SUBLICENSE INCOME" shall mean all amounts and other
consideration received by Predix or an Affiliate of Predix, in connection with a
Sublicense, excluding loans given at prevailing market conditions, research
funding specifically committed to cover costs actually incurred by Predix in the
research and development of Licensed Products under and in accordance with
detailed budgets and workplans included in bona-fide sublicense agreements with
Sublicensees solely to the extent such funding does not exceed the actual cost
of performing the research (if reimbursement exceeds such costs only the excess
amount will be "Sublicense Income") and equity investments in Predix to the
extent made at fair market value (if the investment exceeds the fair market
value, only the excess amount will be "Sublicense Income"); provided that in the
event that Predix or an Affiliate of Predix receives non-monetary consideration
in connection with any such Sublicense or in the case of transactions not at
arm's length, Sublicense Income shall be calculated based on the fair market
value of such consideration or transaction, assuming an arm's length transaction
made in the ordinary course of business. For purposes of this definition, the
term "fair market value" with respect to Predix equity means the value of Predix
equity as determined in good faith by the Board of Directors of Predix taking
into consideration the value most recently paid by a Third Party for shares of
such equity and any material events that have occurred subsequent to such
purchase.
1.27 "SUBLICENSEE" shall mean any Third Party to whom
Predix grants a Sublicense.
1.28 "TECHNOLOGY" shall mean any and all technical data,
information, processes, designs, ideas, know-how, methods, procedures, trade
secrets, formulae and all other technology, whether tangible or intangible and
whether patented, patentable or otherwise.
1.29 "TERM" shall have the definition set forth in Section
9.1.
1.30 "TERRITORY" shall mean all countries and jurisdictions
of the world.
1.31 "THIRD PARTY" shall mean any person or entity other
than Predix, Ramot and their respective Affiliates.
1.32 "USE" shall mean the use of the Licensed Technology or
a Derivative Work in any stage of the characterization, optimization or
development of a Licensed Product or the characterization of the protein
targeted by the Licensed Product; provided that such use either was made prior
to the Effective Date or is made during the Licensed Technology Exclusivity
Term.
1.33 "VALID CLAIM" shall mean a claim in an unexpired
patent or patent application that: (a) has not been finally cancelled,
withdrawn, abandoned or rejected by any administrative agency or other body of
competent jurisdiction in a final non-appealable or unappealable decision, and
(b) has not been revoked, held invalid, or declared unpatentable in a decision
of a court or other body of competent jurisdiction that is unappealable or
unappealed within the time allowed for appeal.
2. GRANT OF RIGHTS
2.1 LICENSE TO PREDIX.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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2.1.1 Grant of License. Ramot hereby grants to
Predix an exclusive, royalty-bearing license, including the right to grant
sublicenses in accordance with Section 2.1.2, under the Licensed Patent Rights
and Licensed Technology, during the Term, to Develop, have Developed, make, have
made, use, have used, sell, offer for sale, have sold, import and have imported,
Licensed Products in the Territory, for any and all uses within the Field,
subject to the terms and conditions of this Agreement.
2.1.2 Right to Sublicense. Predix shall have the
right to grant sublicenses to any Sublicensee to all or any portion of its
rights under the license granted pursuant to this Article 2, including without
limitation as part of a license to a Software Product; provided, however, that
any and all such sublicenses shall be made for consideration and in arm's length
transactions. Predix shall promptly deliver to Ramot a copy of all sublicenses
and all sublicenses shall be consistent with the material terms and conditions
of this Agreement that impact Ramot.
3. DEVELOPMENT AND COMMERCIALIZATION OF LICENSED PRODUCTS.
3.1 COMMERCIALIZATION.
3.1.1 Responsibility. From and after the
Effective Date, Predix shall have full control and authority over the
Development and commercialization of Licensed Products. All activities relating
to Development and commercialization under this Agreement shall be undertaken at
Predix's sole cost and expense.
3.1.2 Diligence. Predix will exercise
commercially reasonable efforts and diligence in developing and commercializing
Licensed Products in the Field in the Territory, such reasonable efforts and
diligence to be in accordance with the efforts and resources Predix would use
for a product candidate owned by it or to which it has rights, which is of
similar market potential as the applicable Licensed Product, taking into account
the competitiveness of the marketplace, the proprietary position of the Licensed
Product, the relative potential safety and efficacy of the Licensed Product, the
cost of goods and availability of capacity to manufacture and supply the
Licensed Product at commercial scale, the profitability of the applicable
Licensed Product, and other relevant factors including, without limitation,
technical, legal, scientific or medical factors. The collective annual
expenditure by Predix, its Affiliates and Sublicensees of not less than
[*****************] dollars ($[*******]) on the Development of Licensed Products
shall be deemed to satisfy Predix's obligations under this Section 3.1.2 for
such year.
4. PAYMENTS AND ROYALTIES
4.1 LICENSE FEE. In consideration of the grant of the
license described in Section 2.1 hereof, Predix agrees to the payment to Ramot
of an upfront license fee in the amount of forty thousand dollars ($40,000).
Ramot hereby acknowledges the receipt of such payment prior to the Restated
Effective Date.
4.2 SHARING OF SUBLICENSE INCOME. In further consideration
of the grant of the license by Ramot hereunder, and subject to the other terms
of this Agreement (including the remainder of this Article 4), Predix agrees to
pay to Ramot, within thirty (30) days of receipt of any Sublicense Income, an
amount equal to: (a) ten percent (10%) of such Sublicense Income if such
Sublicense Income is attributable to a Sublicense with respect to Discovered
Products or
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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Software Products and (b) five percent (5%) of any and all other Sublicense
Income.
4.3 SERVICE INCOME. In further consideration of the grant
of the license by Ramot hereunder, and subject to the other terms of this
Agreement (including the remainder of this Article 4), Predix agrees to pay to
Ramot, within thirty (30) days of receipt of any Service Income, an amount equal
to: (a) 4% of all cumulative Service Income from $[********] to
$[***************]; (b) [*]% of all cumulative Service Income from $[********]
to $[***********]; and (c) an amount equal to 2% of all cumulative Service
Income above $[***********]. Predix shall not be required to pay Ramot any
amount on the first $[*******] in cumulative Service Income.
4.4 PAYMENT OF ROYALTIES; ROYALTY RATES; MINIMUM AND
MAXIMUM ANNUAL ROYALTIES.
4.4.1 Royalty Payments In further consideration
of the grant of the license by Ramot hereunder, and subject to the other terms
of this Agreement (including the remainder of this Article 4), commencing on the
date of the First Commercial Sale of each Licensed Product and continuing during
the Royalty Term for such Licensed Product, Predix shall pay to Ramot a royalty,
calculated on a Licensed Product-by-Licensed Product basis, and equal to a
percentage of cumulative annual Net Sales of each such Licensed Product sold by
Predix and/or its Affiliates in the Territory, as set forth below:
LICENSED PRODUCT TYPE ANNUAL NET SALES PERCENTAGE OF NET SALES PAYABLE AS ROYALTY
--------------------- ---------------- ------------------------------------------
Discovered Products Up to $[***********] 2.5%
From $[*********] to [**]%
$[*******]
Above $[**********] [**]%
Derived Products Up to $[***********] 1.5%
From $[*********] to [**]%
$[*******]
Above $[**********] [**]%
4.4.2 Minimum Royalties. In further consideration
of the grant of the license by Ramot hereunder, and subject to the other terms
of this Agreement (including the remainder of this Article 4), Predix agrees to
pay to Ramot an annual minimum royalty of ten thousand dollars ($10,000),
payable on December 31, 2005, and on the each subsequent anniversary of that
date during the term of this Agreement. All amounts paid by Predix under Section
4.4.1 shall be fully credited against its obligations under this Section 4.4.2.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
8
4.4.3 Maximum Annual Royalties. Anything herein
to the contrary notwithstanding, the maximum amount Predix shall be obligated to
pay to Ramot under Section 4.4.1 as royalties on Net Sales generated during any
calendar year shall be [**********] dollars ($[*********]).
4.5 PAYMENT TERMS.
4.5.1 Payment. Predix shall make any payments
under Section 4.4 to Ramot in arrears within ninety (90) days from the end of
each quarter in which such payment accrues. Each royalty payment shall be
accompanied by a report for each country in the Territory in which sales of
Licensed Products occurred in the calendar quarter covered by such statement,
specifying: the gross sales and Net Sales in each country's currency; the
applicable royalty rate under this Agreement; the royalties payable in each
country's currency, including an accounting of deductions taken in the
calculation of Net Sales; the applicable exchange rate to convert from each
country's currency to United States Dollars under this Section 4.4; and the
royalties payable in United States Dollars. An officer of Predix shall sign each
such report, on behalf of Predix, certifying its completeness and accuracy.
4.5.2 Accounting. All payments hereunder shall be
made in United States dollars by wire transfer to a bank account designated by
Ramot. Conversion of foreign currency to United States dollars shall be made at
the conversion rate existing in the United States (as reported in The Wall
Street Journal) on the last business day of the applicable calendar quarter. If
The Wall Street Journal ceases to be published, then the rate of exchange to be
used shall be that reported in such other business publication of national
circulation in the United States as the Parties reasonably agree. Such payments
shall be without deduction of exchange, collection, or other charges.
4.5.3 Tax Withholding; Restrictions on Payment.
All payments hereunder shall be made free and clear of any taxes, duties,
levies, fees or charges, except for withholding taxes (to the extent
applicable). If applicable law requires that taxes be withheld from any amounts
due Ramot under this Agreement, Predix shall make any applicable withholding
payments due on behalf of Ramot and shall promptly provide Ramot with a
statement including the amount of tax withheld and justification therefore, and
such other written documentation regarding any such payment as available to
Predix relating to an application by Ramot for a foreign tax credit for such
payment. If by law, regulations or fiscal policy of a particular country in the
Territory, remittance of royalties in United States Dollars is restricted or
forbidden, written notice thereof shall promptly be given to Ramot, and payment
of the royalty shall be made by the deposit thereof in local currency to the
credit of Ramot in a recognized banking institution reasonably designated by
Ramot by written notice to Predix. Ramot shall be responsible for paying all
income taxes attributable to Ramot as a result of its receipt of funds
hereunder, to the extent applicable.
4.5.4 Late Payments. Any payments to be paid
under this Agreement that are not paid on or before the date such payments are
due under this Agreement shall bear interest at an annual interest, compounded
monthly, equal to [*****] percent ([*]%) above the London Interbank Offer Rate
(LIBOR) as determined for each month on the last business day of that month,
assessed from the day payment was initially due until the date of payment.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
9
4.6 REPORTS; RECORDS RETENTION; REVIEW.
4.6.1 Reporting. Predix undertakes to notify
Ramot promptly following the grant of a Sublicense or the execution of an
agreement for the provision of Services. Each such notification shall include a
brief summary of the financial terms of such transaction.
4.6.2 Reports. In addition to the reports under
Section 4.5.1, commencing with the receipt of the first Sublicense Income or
Service Income, Predix shall provide Ramot with quarterly reports setting forth
all Sublicense Income and Service Income received by Predix and its Affiliates.
In addition, within sixty (60) days after the end of each calendar year, Predix
shall furnish Ramot with a written report on the progress of its, its
Affiliate's and Sublicensees' efforts during the prior year to develop and
commercialize Licensed Products, including without limitation research and
development efforts, efforts to obtain Regulatory Approval and marketing
efforts. All reports provided by Predix under Section 4.6.1 and Section 4.6.2
shall be signed by the chief financial officer or chief business officer of
Predix certifying on behalf of Predix the accuracy and completeness of the
information provided therein.
4.6.3 Records. Commencing as of the date of the
receipt of the first Net Sales, Sublicense Income or Service Income hereunder,
Predix and its Affiliates shall keep for at least three (3) years from the end
of the calendar year to which they pertain complete and accurate records of
sales by Predix or its Affiliates, as the case may be, of each Licensed Product
and of Sublicense Income and Service Income received, in sufficient detail to
allow the accuracy of the payments hereunder to be confirmed.
4.6.4 Review. Subject to the other terms of this
Section 4.6.4, at the request of Ramot, which shall not be made more frequently
than [*****************] during the Term, upon reasonable prior notice from
Ramot, and at the expense of Ramot, except as otherwise provided herein, Predix
and its Affiliates shall permit an independent certified public accountant
selected by Ramot and reasonably acceptable to Predix to inspect, during regular
business hours, the relevant records required to be maintained by Predix and its
Affiliates under this Section 4.6. In every case the accountant must have
previously entered into a confidentiality agreement with both Parties
substantially similar to the provisions of Article 5 and limiting the disclosure
and use of such information by such accountant to authorized representatives of
the Parties and the purposes germane to this Section 4.6. Results of any such
review shall be binding on both Parties absent manifest error. Ramot agrees to
treat the results of any such accountant's review as Confidential Information of
Predix subject to the terms of Article 5. If any review reveals a deficiency in
the calculation and/or payment of royalties by Predix, then Predix shall
promptly pay Ramot the amount remaining to be paid, and if such underpayment is
by [*****] percent ([*]%) or more of the amount payable during the period under
audit, Predix shall [**********************************************************]
in connection with the review.
5. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICATION
5.1 Confidentiality. Commencing on the Effective Date and
continuing until the [*****************] of the expiration or earlier
termination hereof, each Party shall maintain in confidence the Confidential
Information of the other Party, shall not use or grant the use of the
Confidential Information of the other Party except as expressly permitted
hereby, and
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
10
shall not disclose the Confidential Information of the other Party except on a
need-to-know basis to such Party's directors, officers and employees, and to
such Party's consultants, to the extent such disclosure is necessary in
connection with such Party's activities as expressly authorized by this
Agreement. In addition to the foregoing, Predix may disclose Confidential
Information of Ramot to any Sublicensees that are bound by restrictions on
disclosure that are at least as stringent as those set forth herein. To the
extent that disclosure to any person is authorized by this Agreement, prior to
disclosure, a Party shall obtain, or shall have obtained prior to the date of
this Agreement, written agreement of such person pursuant to which such person
is bound to hold in confidence and not disclose, use or grant the use of the
Confidential Information of the other Party except as expressly permitted under
this Agreement. Each Party shall notify the other Party promptly upon discovery
of any unauthorized use or disclosure of the other Party's Confidential
Information.
5.2 Terms of Agreement. Neither Party shall disclose any
terms or conditions of this Agreement to any Third Party without the prior
consent of the other Party; provided, however, that a Party may disclose the
terms or conditions of this Agreement: (a) on a need-to-know basis to its legal
and financial advisors to the extent such disclosure is reasonably necessary in
connection with such Party's activities as expressly permitted by this
Agreement, and (b) to a Third Party who is subject to confidentiality
obligations similar to those set forth herein in connection with: (i) an equity
investment in or by such Party, (ii) a merger, consolidation or similar
transaction involving such Party, (iii) the negotiation of a sublicense of
rights granted hereunder or (iv) the sale of all or substantially all of the
assets of such Party. Notwithstanding the foregoing, prior to execution of this
Agreement, the Parties have agreed upon the text of one or more press releases
that describe the terms and conditions of this transaction, and each Party may
disclose such information, as modified by mutual written agreement the Parties,
without the consent of the other Party.
5.3 Permitted Disclosures. The confidentiality obligations
under this Article 5 shall not apply to the extent that a Party is required to
disclose information by applicable law, regulation or order of a governmental
agency or a court of competent jurisdiction; provided, however, that such Party
shall provide written notice thereof to the other Party, consult with the other
Party with respect to such disclosure and provide the other Party sufficient
opportunity to object to any such disclosure or to request confidential
treatment thereof.
6. OWNERSHIP OF TECHNOLOGY AND INVENTIONS; FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
6.1 OWNERSHIP OF TECHNOLOGY. Subject to the terms and
conditions set forth herein, including without limitation the license granted in
Section 2.1, Ramot shall own all right, title and interest in and to any and all
Licensed Technology. No rights or licenses in or to any Technology are conveyed
hereunder by implication or estoppel or by any means other than express grant.
6.2 OWNERSHIP OF LICENSED PRODUCTS. Predix shall own all
right, title and interest in and to any and all Licensed Products, subject to
Ramot's ownership of the underlying Licensed Technology, the terms of the
license granted herein and Predix's obligations herein, including the obligation
to pay royalties as set forth above.
6.3 PATENT FILING, PROSECUTION AND MAINTENANCE.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
11
6.3.1 Licensed Patent Rights. Ramot and Predix
shall consult each other regarding the preparation, filing and prosecution of
all patent applications, and the maintenance of all patents, included within the
Licensed Patent Rights, including, without limitation, the content, timing and
jurisdiction of the filing of such patent applications and their prosecution,
and other details. Predix shall be responsible for preparing, filing,
prosecuting, obtaining and maintaining, at its sole cost and expense, using
patent counsel reasonably acceptable to Ramot, all Licensed Patent Rights, in
the name of Ramot, with the goal of obtaining and maintaining the Licensed
Patents in a manner that will provide the maximum economic advantage and return
to the Parties under this Agreement. Predix: (i) will provide Ramot with a copy
of any proposed patent application within such Licensed Patent Rights for review
and comment reasonably in advance of filing, and (ii) will keep Ramot informed
of the status of such filing, prosecution and maintenance, including, without
limitation, by providing Ramot with copies of all communications received from
or filed in patent office(s) with respect to such filing, and by providing
Ramot, a reasonable time prior to taking or failing to take any action that
would affect the scope or validity of any such filing (including the
substantially narrowing, cancellation or abandonment of any claim(s) without
retaining the right to pursue such subject matter in a separate application, or
the failure to file or perfect the filing of any claim(s) in any country), with
prior written notice of such proposed action or inaction so that Ramot has a
reasonable opportunity to review and comment. Predix shall not take any such
action that would affect the scope of validity or any such filing without the
prior written consent of Ramot. If Predix fails to undertake the filing(s),
prosecution, protection and/or maintenance of any patent application, patent or
submission within the Licensed Patent Rights, without the prior consent of
Ramot, all claims included in such patent applications, patents and/or
submissions shall be deemed Valid Claims within the Licensed Patent Rights for
purposes of Section 1.17 until such times as the relevant patents would have
expired had they continued to their fullest term.
6.3.2 Other Patent Rights. Except as set forth in
Section 6.3.1, each Party shall be responsible for preparing, filing,
prosecuting, obtaining and maintaining, at its sole cost, expense and
discretion, all of its own Patent Rights. Predix undertakes to notify Ramot, on
an annual basis, of the filing by or on behalf of Predix or any of its
Affiliates of any priority patent application relating to or covering an actual
or potential Licensed Product. Each such notification shall include a brief
summary of the invention disclosed in such application.
6.4 NOTICE OF INFRINGEMENT. If, during the Term, either
Party learns of any actual, alleged or threatened infringement by a Third Party
of any Licensed Patent Rights, such Party shall promptly notify the other Party
and shall provide such other Party with available evidence of such infringement.
6.5 INFRINGEMENT OF PATENT RIGHTS. Predix, after
consultation with Ramot, shall have the first right, but not the obligation and
with legal counsel of its own choice, to bring suit, or take other appropriate
legal action, against any actual, alleged or threatened infringement of the
Licensed Patent Rights. If Ramot is joined as a party plaintiff in any such
suit, Ramot shall have the right to approve or disapprove of the counsel
selected by Predix to represent Predix and Ramot, such approval not to be
unreasonably withheld. The expenses of such suit or suits that Predix elects to
bring, including any expenses of Ramot incurred in conjunction with the
prosecution of such suits or the settlement thereof, shall be paid for entirely
by Predix and Predix shall hold Ramot free, clear and harmless from and against
any and all costs of such litigation, including attorney's fees. Predix shall
not compromise or settle such litigation without
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THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
12
the prior written consent of Ramot, which consent shall not be unreasonably
withheld or delayed. Ramot shall have the right, at its own expense, to be
represented in any such action by Predix by counsel of Ramot's own choice. If
Predix does not file any action or proceeding against any such infringement
within three (3) months after the earlier of: (i) Predix's notice to Ramot under
Section 6.4 above, (ii) Ramot's notice to Predix under Section 6.2 above, or
(iii) a written request from Ramot to take action with respect to such
infringement, then Ramot shall have the right, but not the obligation, at its
own expense, to bring suit, or take other appropriate legal action, against such
actual, alleged or threatened infringement, with legal counsel of its own
choice, but shall not be permitted to settle any such suit without the prior
consent of Predix, which consent shall not be unreasonably withheld. Any
damages, monetary awards or other amounts recovered, whether by judgment or
settlement, pursuant to any suit, proceeding or other legal action taken under
this Section 6.3, shall be applied as follows:
(a) First, to reimburse the Parties for their
respective costs and expenses (including reasonable attorneys' fees and costs)
incurred in prosecuting such enforcement action; and
(b) Second, any amounts remaining shall be
allocated as follows: (a) if Ramot is the Party bringing such suit or proceeding
or taking such other legal action, [***********] percent ([****]%)
[*********************], (b) if Predix is the Party bringing such suit or
proceeding or taking such other legal action, [**********] percent ([****]%)
[******************], and (c) if the suit is brought jointly, [*****] percent
([***]%) [********************].
If a Party brings any such action or proceeding hereunder, the other Party
agrees to be joined as Party plaintiff if necessary to prosecute such action or
proceeding, and to give the Party bringing such action or proceeding reasonable
assistance and authority to file and prosecute the suit; provided, however, that
neither Party shall be required to transfer any right, title or interest in or
to any property to the other Party or any Third Party to confer standing on a
Party hereunder.
7. REPRESENTATIONS AND WARRANTIES
7.1 RAMOT REPRESENTATIONS. Ramot represents and warrants to
Predix that:
(a) the execution and delivery of this Agreement and the
performance of the transactions contemplated hereby have been duly authorized by
all appropriate Ramot corporate action;
(b) this Agreement is a legal and valid obligation binding
upon Ramot and enforceable in accordance with its terms, and the execution,
delivery and performance of this Agreement by the Parties does not conflict with
any agreement, instrument or understanding to which Ramot is a Party or by which
it is bound;
(c) Ramot has the full right and legal capacity to grant
the rights granted to Predix hereunder;
(d) To the best of Ramot's knowledge, the Licensed Patent
Rights have been properly filed and prosecuted and Ramot is the sole owner of
the Licensed Patent Rights;
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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(e) Ramot has no actual knowledge as of the date hereof of
any legal suit or proceeding by a third party (whether threatened or filed)
against Ramot or TAU contesting the ownership or validity of the Licensed Patent
Rights, or claiming that the practice of the Licensed Patent Rights in the
manner contemplated by this Agreement would infringe the rights of such third
party;
(f) Ramot will not grant or convey any rights or licenses
to the Licensed Technology that may limit Predix's ability to exercise the
rights and licenses granted herein to their fullest extent; and
(g) No member of Ramot's legal staff has received notice of
any infringement or misappropriation by a Third Party of the Licensed
Technology.
7.2 PREDIX REPRESENTATIONS. Predix represents and warrants
to Ramot that:
(a) the execution and delivery of this Agreement and the
performance of the transactions contemplated hereby have been duly authorized by
all appropriate Predix corporate action; and
(b) this Agreement is a legal and valid obligation binding
upon Predix and enforceable in accordance with its terms, and the execution,
delivery and performance of this Agreement by the Parties does not conflict with
any agreement, instrument or understanding to which Predix is a Party of or by
which it is bound.
(c) Predix will comply with, and shall ensure that its
Affiliates and Sublicensees undertake to comply with, all local, state, federal,
and international laws and regulations relating to the use of the Licensed
Technology and the development, manufacture, use, license and sale of Licensed
Products.
7.3 NO WARRANTIES.
7.3.1 Nothing in this Agreement is or shall be
construed as:
(a) a warranty or representation by
either Party as to the validity or scope of any patent application or patent
licensed hereunder;
(b) a warranty or representation that
the Licensed Technology or anything made, used, sold or otherwise disposed of
under any license granted pursuant to this Agreement is or will be free from
infringement of patents, copyrights, and other rights of third Parties.
7.3.2 Except as expressly set forth in this
Agreement, NEITHER PARTY MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR OF NON-INFRINGEMENT
OF ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OF THIRD PARTIES, OR ANY
OTHER EXPRESS OR IMPLIED WARRANTIES.
8. INDEMNIFICATION; INSURANCE
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
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8.1 INDEMNIFICATION. Predix shall indemnify, defend and
hold harmless Ramot, its Affiliates and their respective governors, directors,
officers, employees, stockholders and agents and their respective successors,
heirs and assigns (the "Ramot Indemnitees") from and against any liability,
damage, loss or expense (including reasonable attorneys' fees and expenses of
litigation) incurred by or imposed upon such Ramot Indemnitees, or any of them,
in connection with any Third Party claims, suits, actions, demands or judgments,
including, without limitation, personal injury and product liability matters, to
the extent arising out of: (a) the development, testing, production,
manufacture, supply, promotion, import, sale or use by any person of any
Software Product or Licensed Product (or any component thereof) manufactured or
sold by Predix or any Affiliate or Sublicensee under this Agreement, (b) the use
of the Licensed Technology or practice of the Licensed Patent Rights by Predix,
any of its Affiliates or any Sublicensees, (c) any material breach of this
Agreement by Predix, (d) any breach by a Sublicensee of a Sublicense, or (e) the
gross negligence or willful misconduct on the part of Predix or any Affiliate or
Sublicensee, in any such case under this Section 8.1.1, except to the extent any
of the foregoing is caused by the negligence or willful misconduct of Ramot or a
breach of this Agreement by Ramot.
8.2 INDEMNIFICATION PROCEDURES. In the event that any
Indemnitee is seeking indemnification under Section 8.1 above from Predix, Ramot
shall notify Predix of such claim with respect to such Indemnitee as soon as
reasonably practicable after the Ramot Indemnitee receives notice of the claim,
and Ramot (on behalf of itself and such Ramot Indemnitee) shall permit the
Predix to assume direction and control of the defense of the claim (including
the right to settle the claim solely for monetary consideration, provided that
no settlement shall be made without the consent of Ramot, which consent shall
not be unreasonably withheld) and shall cooperate as requested (at the expense
of Predix) in the defense of the claim. The indemnification obligations under
Article 8 shall not apply to any harm suffered as a direct result of any delay
in notice to Predix hereunder or to amounts paid in settlement of any claim,
demand, action or other proceeding if such settlement is effected without the
consent of Predix, which consent shall not be withheld or delayed unreasonably.
The Indemnitee, its employees and agents, shall reasonably cooperate with Predix
and its legal representatives in the investigation of any claim, demand, action
or other proceeding covered by Section 8.1.
8.3 INSURANCE. Predix shall, at its sole cost and expense,
procure and maintain product liability insurance with respect to Licensed
Products commencing upon the First Commercial Sale of the first Licensed Product
and continuing until the termination of this Agreement. Such insurance coverage
shall be on terms that are in keeping with industry standards within the
bio-pharmaceutical industry. The insurance shall be underwritten by a reputable
insurance carrier. Ramot shall be named as an additional insured on such policy
and shall be entitled to advance notice of cancellation or expiration of such
policy. Predix shall comply with the requirements and restrictions imposed by
such insurance policy including with respect to the full and timely payment of
all premiums due thereon. Predix shall provide a copy of such insurance policy
to Ramot upon request.
9. TERM AND TERMINATION
9.1 TERM; EXPIRATION. The term of this Agreement shall,
unless sooner terminated in accordance with this Section 9, expire upon the
expiration of the final payment obligation under Article 4 above (the "Term").
Upon the expiration of the Term of this Agreement, Predix shall have a fully
paid-up, irrevocable, freely transferable and sublicensable
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THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
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15
exclusive license in the Territory under the Licensed Patent Rights and Licensed
Technology, to Develop, have Developed, make, have made, use, have used, sell,
offer for sale, have sold, import and have imported any and all Licensed
Products in the Territory for any and all uses within the Field.
9.2 TERMINATION RIGHTS FOR BREACH.
Subject to the other terms of this Agreement,
this Agreement and the rights and options granted herein may be terminated
by either Party upon any material breach by the other Party of any material
obligation or condition, effective thirty (30) days after giving written notice
to the breaching Party of such termination in the case of a payment breach and
ninety (90) days after giving written notice to the breaching Party of such
termination in the case of any other breach, which notice shall describe such
breach in reasonable detail. The foregoing notwithstanding, if such default or
breach is cured or remedied or shown to be non-existent within the aforesaid
thirty (30) or ninety (90) day period, the notice shall be automatically
withdrawn and of no effect. However, prior to giving any notice of termination
for breach, the Parties shall first attempt to resolve any disputes as to the
existence of any breach as set forth in Article 10.
9.3 TERMINATION FOR BANKRUPTCY. In the event that either
Party files for protection under bankruptcy laws, makes an assignment for the
benefit of creditors, appoints or suffers appointment of a receiver or trustee
over its property, files a petition under any bankruptcy or insolvency act or
has any such petition filed against it which is not discharged within sixty (60)
days of the filing thereof, then the other Party may terminate this Agreement
effective immediately upon written notice to such Party.
9.4 EFFECTS OF TERMINATION.
9.4.1 Termination for Predix Breach. Upon any
termination of this Agreement by Ramot under Section 9.2, as of the effective
date of such termination all relevant licenses and sublicenses granted by Ramot
to Predix hereunder shall terminate automatically. Notwithstanding the
foregoing: (a) no such termination of this Agreement shall be construed as a
termination of any valid sublicense of any Sublicensee hereunder, and thereafter
each such Sublicensee shall be considered a direct licensee of Ramot, provided
that (i) such Sublicensee is then in full compliance with all terms and
conditions of its sublicense, (ii) all accrued payments obligations to Ramot
have been paid, and (iii) such Sublicensee agrees in writing to assume all
applicable obligations of Predix under this Agreement, and (b) Predix and its
Affiliates and Sublicensees shall have the right, for six (6) months or such
longer time period (if any) on which the Parties mutually agree in writing, to
sell or otherwise dispose of all Licensed Products then on hand, with royalties
to be paid to Ramot on all Net Sales of such Licensed Products as provided for
in this Agreement.
9.4.2 Termination for Ramot Breach. Upon any
termination of this Agreement by Predix under Section 9.2, as of the effective
date of such termination, Predix thereafter automatically shall have a fully
sublicensable and transferable, fully paid up (subject to the remainder of this
Section 9.4), exclusive license in the Territory under the Licensed Patent
Rights and Licensed Technology, to Develop, have Developed, make, have made,
use, have used, sell, offer for sale, have sold, import and have imported any
and all Licensed Products in the Territory for any and all uses within the
Field, provided that Predix shall pay, for the remainder of the relevant Royalty
Term under Section 4.4 above and as long as it receives
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16
Sublicense Income or Service Income, in lieu of any payments including
milestones or royalties it would otherwise owe to Ramot under this Agreement, a
royalty equal to [*****] percent ([**]%) of the royalty rates that would
otherwise apply with respect to Net Sales, Sublicense Income and Service Income
under Section 4 of this Agreement.
9.5 REMEDIES. Except as otherwise expressly set forth in
this Agreement, the termination provisions of this Article 9 are in addition to
any other relief and remedies available to either Party at law.
9.6 SURVIVING PROVISIONS. Notwithstanding any provision
herein to the contrary, the rights and obligations of the Parties set forth in
Articles 5, 7, 8 and 10 and Sections 6.1, 6.2, 9.1, 9.4, 9.5, 9.6, 11.1, 11.8,
and 11.11 as well as any rights or obligations otherwise accrued hereunder
(including any accrued payment obligations), shall survive the expiration or
termination of the Term.
10. DISPUTE RESOLUTIONS
10.1 DISPUTE RESOLUTION. Prior to engaging in any formal dispute
resolution with respect to any dispute, controversy or claim arising out of or
in relation to this Agreement, or the breach, termination or invalidity hereof
(each, a "Dispute"), the Chief Executive Officers of the Parties shall attempt
over a period of not less than thirty (30) days to resolve such Dispute.
11. MISCELLANEOUS
11.1 GOVERNING LAW. Except as otherwise provided herein, this
Agreement shall be governed by, interpreted and construed in accordance with the
laws of the State of Israel, without regard to the conflicts of law principles
thereof, and sole jurisdiction is granted to the competent courts in Tel Aviv,
Israel.
11.2 WAIVER. No waiver by a Party hereto of any breach or default of
any of the covenants or agreements herein set forth shall be effective unless
set forth in a writing signed by the waiving Party or shall be deemed a waiver
as to any subsequent and/or similar breach or default.
11.3 ASSIGNMENT. Neither this Agreement nor any right or obligation
hereunder may be assigned or delegated, in whole or part, by either Party
without the prior express written consent of the other; provided, however, that
either Party may, without the written consent of the other, assign this
Agreement and its rights and delegate its obligations hereunder in connection
with the transfer or sale of all or substantially all of its business, or in the
event of its merger, consolidation, change in control or similar transaction.
Any permitted assignee shall assume all obligations of its assignor under this
Agreement. Any purported assignment in violation of this Section 11.3 shall be
void.
11.4 INDEPENDENT CONTRACTORS. The relationship of the Parties hereto
is that of independent contractors. Neither Party hereto shall be deemed to be
the agent, partner or joint venturer of the other for any purpose as a result of
this Agreement or the transactions contemplated thereby.
11.5 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further documents and instruments and to perform all such other
acts as may be necessary or
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
17
appropriate in order to carry out the purposes and intent of this Agreement.
11.6 NOTICES. All requests and notices required or permitted to be
given to the Parties hereto shall be given in writing, shall expressly reference
the section(s) of this Agreement to which they pertain, and shall be delivered
to the other Party, effective on receipt, at the appropriate address as set
forth below or to such other addresses as may be designated in writing by the
Parties from time to time during the term of this Agreement.
If to Ramot:
Ramot at Tel Aviv University Ltd.
32 Xxxx Xxxxxxx Street
POB 39296
Xxx Xxxx 00000
XXXXXX
Attn: CEO
If to Predix:
Predix Pharmaceuticals
10K Xxxx Xxxxxx
Xxxxxx, XX 00000
XXX
Attn: Chief Executive Officer
Copy to:
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
XXX
Attn: Xxxxxxxxxxx X. Xxxx, Esq.
11.7 FORCE MAJEURE. Nonperformance of a Party (other than for the
payment of money) shall be excused to the extent that performance is rendered
impossible by strike, fire, earthquake, flood, governmental acts or orders or
restrictions, failure of suppliers, or any other reason where failure to perform
is beyond the reasonable control and not caused by the negligence, intentional
conduct or misconduct of the nonperforming Party; provided, however, that the
nonperforming Party shall use commercially reasonable efforts to resume
performance as soon as reasonably practicable.
11.8 NO CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL A PARTY BE LIABLE
FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT
OR THE EXERCISE OF ITS RIGHTS HEREUNDER, INCLUDING WITHOUT LIMITATION LOST
PROFITS ARISING FROM OR RELATING TO ANY BREACH OF THIS AGREEMENT, REGARDLESS OF
ANY NOTICE OF SUCH DAMAGES.
11.9 COMPLETE AGREEMENT. This Agreement constitutes the entire
agreement between
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the Parties regarding the subject matter hereof, and all prior representations,
understandings and agreements regarding the subject matter hereof, either
written or oral, expressed or implied, are superseded and shall be and of no
effect.
11.10 HEADINGS. The captions to the several sections hereof are not a
part of this Agreement, but are included merely for convenience of reference
only and shall not affect its meaning or interpretation.
11.11 SECTION 365(N). All licenses granted under this Agreement are
deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy Code,
licenses of right to "intellectual property" as defined in Section 101 of such
Code.
11.12 FURTHER ASSURANCES. Each Party agrees to execute, acknowledge
and deliver such further instructions, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
11.13 COUNTERPARTS. This Agreement may be executed simultaneously in
one or more counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
11.14 TERMINATION OF ORIGINAL AGREEMENT. The Parties acknowledge and
agree that: (i) the Original Agreement is hereby terminated as of the Restated
Effective Date and (ii) except as provided herein, all rights, obligations and
licenses provided for under the Original Agreement shall terminate and shall be
of no further force or effect on and after the Restated Effective Date.
[Remainder of page intentionally left blank]
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representative in two (2) originals.
PREDIX PHARMACEUTICALS
HOLDINGS, INC. RAMOT AT TEL AVIV UNIVERSITY LTD.
By: /s/ XXXXXXX X. XXXXXXXX By: /s/ XXXXX X. XXXXXXXX
--------------------------- -------------------------------
Name: Xxxxxxx Xxxxxxxx Chen Shor Name: Xxxxx X. Xxxxxxxx Xxxxxxx Xxx
--------------------------- -------------------------------
Title: President and CEO CBO Title: Chief Executive Officer
--------------------------- -------------------------------
Chief Operating Officer
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UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
20
EXHIBIT 1.6
DERIVED PRODUCTS
NAMED PATENT FILING
PREDIX COMPOUNDS TARGET XXXXX XXXXX DOCKET NO. COUNTRY TITLE INVENTOR(S) APPLICATION NO. NO. DATE
---------------- ------ ----------- ---------- ------- ----- ----------- --------------- --- ----
[****************** [**] 24591 501 US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 501-061 US [***********] [************] [*************] -- [******]
*******************
******************* [**] 24591 501 PRO US [***********] [************] [*********] -- [*****]
*******************
******************* [**] 24591 501 PRO B US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 501 PRO C US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 502-061 US [***********] [************] [*************] -- [******]
*******************
******************* [**] 24591 502 PRO US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 503 PRO US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 504 PRO US [***********] [************] [*********] -- [******]
*******************
******************* [**] 24591 505 PRO US [***********] [************] [*********] -- [******]
*******************
*******************
*******************
*******]
[****************** 5-HT1A 24591 506 US [***********] [************] [*********] -- [******]
*******************
******************* 5-HT1A 24591 506-061 US [***********] [************] [*********] -- [******]
*******************
******************* 5-HT1A 24591 506 PRO US [***********] [************] [*********] -- [******]
*******************
******************* 5-HT1A 24591 506 PRO B US [***********] [************] [*********] -- [******]
****************]
5-HT1A 24591 506 PRO C US [***********] [************] [*********] -- [******]
5-HT1A 24591 507-061 US [***********] [************] [*] -- [*****]
5-HT1A 24591 507 PRO US [***********] [************] [*********] -- [*****]
5-HT1A 24591 508 PRO US [***********] [************] [*********] -- [*****]
5-HT1A 24591 509 PRO US [***********] [************] [*********] -- [*****]
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
[****************** 5-HT2B 24591 510 PRO US [***********] [************] [*********] -- [******]
*******************
******************* 5-HT2B 24591 510 US [***********] [************] [*********] -- [******]
*******************
******************* 5-HT2B 24591 510-061 PCT [***********] [************] [*********] -- [******]
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
**********]
[****************** 5-HT4 24591 511 PRO US [***********] [************] [*********] -- [******]
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
*******************
**********]
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO
THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT
UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS.
2
exist when a person, corporation, company, partnership, joint venture and/or
firm (a) in the case of corporate entities, directly or indirectly owns at least
twenty percent (20%) of the stock or shares having the right to vote for the
election of directors, and (b) in the case of non-corporate entities, holds the
direct or indirect power to manage, direct or cause the direction of the
management and policies of the non-corporate entity or the power to elect at
least twenty percent (20%) of the members of the governing body of such
non-corporate entity, any corporation, firm, limited liability company,
partnership or other entity that directly controls or is controlled by or is
under common control with a Party to this Agreement.
1.2 "CONFIDENTIAL INFORMATION" shall mean any confidential
scientific, technical, trade or business information relating to the subject
matter of this Agreement disclosed by or on behalf of one party to the other
that is either marked as confidential or if disclosed orally is reduced to a
written summary marked as confidential and delivered to the receiving party
within 30 days of disclosure. Confidential Information does not include
information that (i) is in possession of the receiving Party at the time of
disclosure, as reasonably demonstrated by written records; (ii) is or later
becomes part of the public domain through no fault of the receiving Party; (iii)
is received by a receiving Party from a third Party having no obligation of
confidentiality to the disclosing Party; or (iv) is developed independently by a
receiving Party without use of the disclosing Party's Confidential Information.
1.3 "CONTROL" or "CONTROLLED" shall mean, with respect to any
intellectual property rights, the right and authority of a Party to grant the
rights, licenses and options provided for herein without breaching any written
agreement with any third Party by virtue of such grant.
1.4 "DEVELOPMENT" and "DEVELOP" shall mean, with respect to any
Licensed Product, all activities with respect to such Licensed Product relating
to research and development and in connection with seeking, obtaining and/or
maintaining any Regulatory Approval for such Licensed Product in the Field in
the Territory, including without limitation, all pre-clinical research and
development activities, all human clinical studies, all activities relating to
developing the ability to manufacture any Licensed Product or any component
thereof (including, without limitation, process development work), and all other
activities relating to seeking, obtaining and/or maintaining any Regulatory
Approvals from the FDA and/or any Foreign Regulatory Authority.
1.5 "DERIVATIVE WORK" means any software that is derived from the
Licensed Technology, including without limitation, software that is a
translation (including any translation into other computer languages),
portation, modification, correction, extension, upgrade, improvement,
compilation, abridgment, adaptation or other form of the Licensed Technology.
Derivative Works shall include without limitation any software that would
infringe any of Ramot's copyrights in the Licensed Technology.
1.6 "DERIVED PRODUCT" shall mean a product, compound or drug
candidate that is identified, characterized or developed through the Use of
Licensed Technology and/or a Derivative Work, which is not a Discovered Product,
and that is commercialized by Predix, an Affiliate of Predix or a Sublicensee.
"Derived Products" include, without limitation, those compounds listed on
Exhibit 1.6 attached hereto.
1.7 "DISCOVERED PRODUCT" shall mean a product, compound or drug
candidate that is identified from an in silico library through the Use of the
Licensed Technology and/or a
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
2
Derivative Work, which is commercialized by Predix, an Affiliate of Predix or
a Sublicensee, without Modification and which had not been Modified by Predix
prior to such identification. For purposes of this Section 1.7, "Modification"
and "Modified" shall mean modification or optimization that increases the
likelihood that the product, compound or drug candidate can be successfully
developed into a drug product, including without limitation, by making
modifications to such product, compound or drug candidate to alter the
pharmacokinetics, bioavailability, toxicity, or efficacy, to improve stability,
to solve or avoid manufacturing issues or to avoid the intellectual property
rights of a Third Party.
1.8 "DISPUTE" shall have the definition set forth in Section 10.1.
1.9 "DRUG APPROVAL APPLICATION" shall mean any application for
Regulatory Approval (including pricing and reimbursement approvals) required
prior to any commercial sale or use of a Licensed Product in any country or
jurisdiction in the Territory.
1.10 "FIELD" shall mean and include all uses, including without
limitation, all uses relating to the diagnosis, prevention and treatment of any
and all diseases or conditions in humans or animals.
1.11 "FIRST COMMERCIAL SALE" shall mean, on a country-by-country
basis, the date of the first arm's length transaction, transfer or disposition
for value to a Third Party of a Licensed Product by or on behalf of Predix or
any Affiliate of Predix in such country after Regulatory Approval has been
achieved in the country in which such Licensed Product is sold. Sales for test
marketing, sampling and promotional uses, clinical trial purposes or
compassionate or similar use shall not be considered to constitute a First
Commercial Sale.
1.12 "FDA" shall mean the United States Food and Drug Administration
and any successor agency or authority thereto.
1.13 "FOREIGN REGULATORY AUTHORITIES" shall mean any applicable
supranational, national, federal, state or local regulatory agency, department,
bureau or other governmental entity of any country or jurisdiction in the
Territory (other than the FDA in the United States), having responsibility in
such country or jurisdiction for any Regulatory Approvals of any kind in such
country or jurisdiction, and any successor agency or authority thereto.
1.14 "LICENSED PATENT RIGHTS" shall mean all Patent Rights owned by
Ramot that claim Licensed Technology.
1.15 "LICENSED PRODUCT" shall mean any and all Derived Products and
Discovered Products, taken collectively.
1.16 "LICENSED TECHNOLOGY" shall mean: (a) the inventions disclosed
in Israeli Patent Application IL 137885, including without limitation, the novel
computational method for modeling the three (3) dimensional structure of
G-protein coupled receptors from their one (1) dimensional sequence, (b) the
inventions disclosed in Israeli Patent Application IL 137886, including without
limitation, the novel automated protein design algorithm based on the physical
properties that determine the protein structure stability and that is useful for
predicting protein sequences likely to achieve a desired folding pattern in a
very high computational efficiency.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
3
1.17 "LICENSED TECHNOLOGY EXCLUSIVITY TERM" shall mean that period
commencing on the Effective Date and continuing until the later of: (a) the
expiration or termination of the last [************] within the Licensed Patent
Rights and (b) the [*******] anniversary of the Effective Date.
1.18 "NET SALES" shall mean the gross invoiced sales price for all
Licensed Products sold by Predix and its Affiliates to Third Parties throughout
the Territory during each calendar quarter, less the following amounts incurred
or paid by Predix or its Affiliates during such calendar quarter with respect to
sales of Licensed Products regardless of the calendar quarter in which such
sales were made:
(a) trade, cash and quantity discounts or rebates actually allowed
or taken, including discounts or rebates to governmental or managed
care organizations;
(b) credits or allowances actually given or made for rejection of,
and for uncollectible amounts on, or return of previously sold
Licensed Products (including Medicare and similar types of rebates);
(c) any charges for insurance, freight, and other transportation
costs directly related to the delivery of Licensed Product to the
extent included in the gross invoiced sales price;
(d) any tax, tariff, duty or governmental charge levied on the
sales, transfer, transportation or delivery of a Licensed Product
(including any tax such as a value added or similar tax or
government charge) borne by the seller thereof, other than franchise
or income tax of any kind whatsoever; and
(e) any import or export duties or their equivalent borne by the
seller;
provided that:
(i) In any transfers of Licensed Products between Predix and an
Affiliate of Predix or between an Affiliate of Predix and an Affiliate of such
Affiliate, Net Sales (subject to the deductions listed above) shall be equal to
the higher of: (x) the [**************] of the Licensed Products so transferred,
assuming [********************************************************] and (y) the
total amount invoiced by such Affiliate on resale to an independent third party
purchaser; and
(ii) In the event that Predix, or an Affiliate of Predix, receives
non-monetary consideration for any Licensed Products or in the case of
transactions not at arm's length with a non-Affiliate of Predix or its
Affiliate, Net Sales (subject to the deductions listed above) shall be
calculated based on the fair market value of such consideration or transaction,
assuming an arm's length transaction made in the ordinary course of business.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
4
Notwithstanding the foregoing, "Net Sales" shall not include sales or transfers
between Predix and its Affiliates, if the Licensed Product is resold by the
Affiliate.
In the event that a Licensed Product under this Agreement is sold in combination
with another active ingredient or component having independent therapeutic
effect or diagnostic utility, then "Net Sales," for purposes of determining
royalty payments on the combination, shall be calculated by [******************
******************************************************************************
***********]. 1.19 "PATENT RIGHTS" shall mean all patent applications and
patents, including Israeli and foreign applications, divisions, continuations,
and continuations-in-part, applications for certificates of invention and
priority rights, certificates of invention, reissues, re-examination
certificates, extensions or other governmental acts that effectively extend the
period of exclusivity by the patent holder, substitutions, renewals,
supplementary protection certificates, confirmations, registrations, validations
and additions.
1.20 "REGULATORY APPROVAL" shall mean any and all final approvals
(including pricing and reimbursement approvals), product and establishment
licenses, registrations or authorizations of any kind of the FDA or any Foreign
Regulatory Authority permitting the commercial sale of a Licensed Product (or
any component thereof) for use in the Field in any country or other jurisdiction
in the Territory.
1.21 "ROYALTY TERM" shall mean with respect to each Licensed
Product, on a country-by-country basis, a period of twelve (12) years commencing
on the First Commercial Sale of such Licensed Product in such country.
1.22 "SERVICE INCOME" shall mean all amounts and other consideration
received by Predix, or an Affiliate of Predix, for or in connection with the
performance of Services; provided that in the event that Predix or an Affiliate
of Predix receives non-monetary consideration in connection with any such
services or in the case of transactions not at arm's length, Service Income
shall be calculated based on the fair market value of such consideration or
transaction, assuming an arm's length transaction made in the ordinary course of
business.
1.23 "SERVICES" shall mean services performed by Predix, or an
Affiliate of Predix, for the benefit of (a) a Third Party or (b) for the benefit
of a Third Party and Predix and/or an Affiliate of Predix, using the Licensed
Technology.
1.24 "SOFTWARE PRODUCT" shall mean a software product that
incorporates Licensed Technology. Notwithstanding the foregoing, Software
Products that are also within the definition of "Discovered Product" or "Derived
Product" are hereby deemed to be Software Products only.
1.25 "SUBLICENSE" shall mean a sublicense, assignment or other grant
of rights by Predix or an Affiliate of Predix to a Third Party (regardless of
whether such grant of rights is or is referred to as a sublicense) of or with
respect to: (a) some or all of the rights granted to Predix under this
Agreement; (b) a Software Product; or (c) the right to Develop, have Developed,
make, have made, use, have used, sell, offer for sale, have sold, import or have
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
5
imported Licensed Product(s). For avoidance of doubt, an assignment completed in
accordance with Section 11.3 shall not be included within the term "Sublicense".
1.26 "SUBLICENSE INCOME" shall mean all amounts and other
consideration received by Predix or an Affiliate of Predix, in connection with a
Sublicense, excluding loans given at prevailing market conditions, research
funding specifically committed to cover costs [******] incurred by Predix in the
research and development of Licensed Products under and in accordance with
[**********************************] bona-fide sublicense agreements with
Sublicensees [*************************************************************
*******] and equity investments in Predix [**********************************];
provided that in the event that Predix or an Affiliate of Predix receives
non-monetary consideration in connection with any such Sublicense or in the case
of transactions not at arm's length, Sublicense Income shall be calculated based
on the fair market value of such consideration or transaction, assuming an arm's
length transaction made in the ordinary course of business. [*******************
*****************************************************************************].
1.27 "SUBLICENSEE" shall mean any Third Party to whom Predix grants
a Sublicense.
1.28 "TECHNOLOGY" shall mean any and all technical data,
information, processes, designs, ideas, know-how, methods, procedures, trade
secrets, formulae and all other technology, whether tangible or intangible and
whether patented, patentable or otherwise.
1.29 "TERM" shall have the definition set forth in Section 9.1.
1.30 "TERRITORY" shall mean all countries and jurisdictions of the
world.
1.31 "THIRD PARTY" shall mean any person or entity other than
Predix, Ramot and their respective Affiliates.
1.32 "USE" shall mean the use of the Licensed Technology or a
Derivative Work in any stage of the characterization, optimization or
development of a Licensed Product or the characterization of the protein
targeted by the Licensed Product; provided that such use either was made prior
to the Effective Date or is made during the Licensed Technology Exclusivity
Term.
1.33 "VALID CLAIM" shall mean a claim in an unexpired patent or
patent application that: (a) has not been finally cancelled, withdrawn,
abandoned or rejected by any administrative agency or other body of competent
jurisdiction in a final non-appealable or unappealable decision, and (b) has not
been revoked, held invalid, or declared unpatentable in a decision of a court or
other body of competent jurisdiction that is unappealable or unappealed within
the time allowed for appeal.
2. GRANT OF RIGHTS
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
6
2.1 LICENSE TO PREDIX.
2.1.1 Grant of License. Ramot hereby grants to Predix an exclusive,
royalty-bearing license, including the right to grant sublicenses in accordance
with Section 2.1.2, under the Licensed Patent Rights and Licensed Technology,
during the Term, to Develop, have Developed, make, have made, use, have used,
sell, offer for sale, have sold, import and have imported, Licensed Products in
the Territory, for any and all uses within the Field, subject to the terms and
conditions of this Agreement.
2.1.2 Right to Sublicense. Predix shall have the right to grant
sublicenses to any Sublicensee to all or any portion of its rights under the
license granted pursuant to this Article 2, including without limitation as part
of a license to a Software Product; provided, however, that any and all such
sublicenses shall be made for consideration and in arm's length transactions.
Predix shall promptly deliver to Ramot a copy of all sublicenses and all
sublicenses shall be consistent with the material terms and conditions of this
Agreement that impact Ramot.
3. DEVELOPMENT AND COMMERCIALIZATION OF LICENSED PRODUCTS.
3.1 COMMERCIALIZATION.
3.1.1 Responsibility. From and after the Effective Date,
Predix shall have full control and authority over the Development and
commercialization of Licensed Products. All activities relating to Development
and commercialization under this Agreement shall be undertaken at Predix's sole
cost and expense.
3.1.2 Diligence. Predix will exercise [***********************
********] in developing and commercializing Licensed Products in the Field in
the Territory, such [*********************] to be in accordance [************
*****************************************************************************].
The collective annual expenditure by Predix, its Affiliates and Sublicensees of
not less than [*******************************] on the Development of Licensed
Products shall be deemed to satisfy Predix's obligations under this Section
3.1.2 for such year.
4. PAYMENTS AND ROYALTIES
4.1 LICENSE FEE. In consideration of the grant of the license
described in Section 2.1 hereof, Predix agrees to the payment to Ramot of an
upfront license fee in the amount of forty thousand dollars ($40,000). Ramot
hereby acknowledges the receipt of such payment prior to the Restated Effective
Date.
4.2 SHARING OF SUBLICENSE INCOME. In further consideration of the
grant of the license by Ramot hereunder, and subject to the other terms of this
Agreement (including the remainder of this Article 4), Predix agrees to pay to
Ramot, within [***********] of receipt of
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
7
any Sublicense Income, an amount equal to: (a) ten percent (10%) of such
Sublicense Income if such Sublicense Income is attributable to a Sublicense
with respect to Discovered Products or Software Products and (b) five percent
(5%) of any and all other Sublicense Income.
4.3 SERVICE INCOME. In further consideration of the grant of the
license by Ramot hereunder, and subject to the other terms of this Agreement
(including the remainder of this Article 4), Predix agrees to pay to Ramot,
within [***********] of receipt of any Service Income, an amount equal to: (a)
[**] of all cumulative Service Income from [*********] to [*****************];
(b) [**] of all cumulative Service Income from [*********] to [************];
and (c) an amount equal to [**] of all cumulative Service Income above [****
*******]. Predix shall not be required to pay Ramot any amount on the first
[********] in cumulative Service Income.
4.4 PAYMENT OF ROYALTIES; ROYALTY RATES; MINIMUM AND MAXIMUM ANNUAL
ROYALTIES.
4.4.1 Royalty Payments In further consideration of the grant
of the license by Ramot hereunder, and subject to the other terms of this
Agreement (including the remainder of this Article 4), commencing on the date
of the First Commercial Sale of each Licensed Product and continuing during the
Royalty Term for such Licensed Product, Predix shall pay to Ramot a royalty,
calculated on a Licensed Product-by-Licensed Product basis, and equal to a
percentage of cumulative annual Net Sales of each such Licensed Product sold by
Predix and/or its Affiliates in the Territory, as set forth below:
PERCENTAGE OF NET SALES
LICENSED PRODUCT TYPE ANNUAL NET SALES PAYABLE AS ROYALTY
--------------------- ----------------- ----------------------
Discovered Products [***************] 2.5%
[***************] [***]
[********]
[***************] [***]
Derived Products [***************] 1.5%
[***************] [***]
[********]
[***************] [***]
4.4.2 Minimum Royalties. In further consideration of the grant
of the license by Ramot hereunder, and subject to the other terms of this
Agreement (including the remainder of this Article 4), Predix agrees to pay to
Ramot an annual minimum royalty of ten thousand dollars ($10,000), payable on
December 31, 2005, and on the each subsequent anniversary of that date during
the term of this Agreement.
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
8
All amounts paid by Predix under Section 4.4.1 shall be fully credited
against its obligations under this Section 4.4.2.
4.4.3 Maximum Annual Royalties. Anything herein to the
contrary notwithstanding, the maximum amount Predix shall be obligated to pay to
Ramot under Section 4.4.1 as royalties on Net Sales generated during any
calendar year shall be [*****************************].
4.5 PAYMENT TERMS.
4.5.1 Payment. Predix shall make any payments under Section
4.4 to Ramot in arrears within [**************] from the end of each quarter in
which such payment accrues. Each royalty payment shall be accompanied by a
report for each country in the Territory in which sales of Licensed Products
occurred in the calendar quarter covered by such statement, specifying: the
gross sales and Net Sales in each country's currency; the applicable royalty
rate under this Agreement; the royalties payable in each country's currency,
including an accounting of deductions taken in the calculation of Net Sales; the
applicable exchange rate to convert from each country's currency to United
States Dollars under this Section 4.4; and the royalties payable in United
States Dollars. [***************************************************************
**********************************************].
4.5.2 Accounting. All payments hereunder shall be made in
United States dollars by wire transfer to a bank account designated by Ramot.
Conversion of foreign currency to United States dollars shall be made at the
conversion rate existing in the United States [*********************************
************************************************************************
**********************************************], then the rate of exchange to be
used shall be [****************************************************************]
as the Parties reasonably agree. Such payments shall be without deduction of
exchange, collection, or other charges.
4.5.3 Tax Withholding; Restrictions on Payment. All payments
hereunder shall be made free and clear of any taxes, duties, levies, fees or
charges, except for withholding taxes (to the extent applicable). If applicable
law requires that taxes be withheld from any amounts due Ramot under this
Agreement, Predix shall make any applicable withholding payments due on behalf
of Ramot and shall promptly provide Ramot with a statement including the amount
of tax withheld and justification therefore, and such other written
documentation regarding any such payment as available to Predix relating to an
application by Ramot for a foreign tax credit for such payment. If by law,
regulations or fiscal policy of a particular country in the Territory,
remittance of royalties in United States Dollars is restricted or forbidden,
written notice thereof shall promptly be given to Ramot, and payment of the
royalty shall be made by the deposit thereof in local currency to the credit of
Ramot in a recognized banking institution reasonably designated by Ramot by
written notice to Predix. Ramot shall be responsible for paying all income taxes
attributable to Ramot as a result of its receipt of funds hereunder, to the
extent applicable.
4.5.4 Late Payments. Any payments to be paid under this
Agreement that are not paid on or before the date such payments are due under
this Agreement [**************************************************************
**********************************************************************].
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
9
4.6 REPORTS; RECORDS RETENTION; REVIEW.
4.6.1 Reporting. Predix undertakes to notify Ramot promptly
following the grant of a Sublicense or the execution of an agreement for the
provision of Services. Each such notification shall include a brief summary of
the financial terms of such transaction.
4.6.2 Reports. In addition to the reports under Section 4.5.1,
commencing with the receipt of the first Sublicense Income or Service Income,
Predix shall provide Ramot with quarterly reports setting forth all Sublicense
Income and Service Income received by Predix and its Affiliates. In addition,
within [***********] after the end of each calendar year, Predix shall furnish
Ramot with a written report on the progress of its, its Affiliate's and
Sublicensees' efforts during the prior year to develop and commercialize
Licensed Products, including without limitation research and development
efforts, efforts to obtain Regulatory Approval and marketing efforts. All
reports provided by Predix under Section 4.6.1 and Section 4.6.2 shall
[********************************************************************].
4.6.3 Records. Commencing as of the date of the receipt of the
first Net Sales, Sublicense Income or Service Income hereunder, Predix and its
Affiliates shall keep for at least [***********] from the end of the calendar
year to which they pertain complete and accurate records of sales by Predix or
its Affiliates, as the case may be, of each Licensed Product and of Sublicense
Income and Service Income received, in sufficient detail to allow the accuracy
of the payments hereunder to be confirmed.
4.6.4 Review. Subject to the other terms of this Section
4.6.4, at the request of Ramot, which shall not be made more frequently than
[*****************] during the Term, upon reasonable prior notice from Ramot,
and at the expense of Ramot, except as otherwise provided herein, Predix and its
Affiliates shall permit an independent certified public accountant selected by
Ramot and reasonably acceptable to Predix to inspect, during regular business
hours, the relevant records required to be maintained by Predix and its
Affiliates under this Section 4.6. In every case the accountant must have
previously entered into a confidentiality agreement with both Parties
substantially similar to the provisions of Article 5 and limiting the disclosure
and use of such information by such accountant to authorized representatives of
the Parties and the purposes germane to this Section 4.6. Results of any such
review shall be binding on both Parties absent manifest error. Ramot agrees to
treat the results of any such accountant's review as Confidential Information of
Predix subject to the terms of Article 5. If any review reveals a deficiency in
the calculation and/or payment of royalties by Predix, then Predix shall
promptly pay Ramot the amount remaining to be paid, and if such underpayment is
by [*******************] of the amount payable during the period under audit,
Predix shall [**********************************************************] in
connection with the review.
5. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICATION
5.1 Confidentiality. Commencing on the Effective Date and continuing
until the [*****************] of the expiration or earlier termination hereof,
each Party shall maintain in confidence the Confidential Information of the
other Party, shall not use or grant the use of the Confidential Information of
the other Party except as expressly permitted hereby, and
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10
shall not disclose the Confidential Information of the other Party except on a
need-to-know basis to such Party's directors, officers and employees, and to
such Party's consultants, to the extent such disclosure is necessary in
connection with such Party's activities as expressly authorized by this
Agreement. In addition to the foregoing, Predix may disclose Confidential
Information of Ramot to any Sublicensees that are bound by restrictions on
disclosure that are at least as stringent as those set forth herein. To the
extent that disclosure to any person is authorized by this Agreement, prior to
disclosure, a Party shall obtain, or shall have obtained prior to the date of
this Agreement, written agreement of such person pursuant to which such person
is bound to hold in confidence and not disclose, use or grant the use of the
Confidential Information of the other Party except as expressly permitted under
this Agreement. Each Party shall notify the other Party promptly upon discovery
of any unauthorized use or disclosure of the other Party's Confidential
Information.
5.2 Terms of Agreement. Neither Party shall disclose any terms or
conditions of this Agreement to any Third Party without the prior consent of the
other Party; provided, however, that a Party may disclose the terms or
conditions of this Agreement: (a) on a need-to-know basis to its legal and
financial advisors to the extent such disclosure is reasonably necessary in
connection with such Party's activities as expressly permitted by this
Agreement, and (b) to a Third Party who is subject to confidentiality
obligations similar to those set forth herein in connection with: (i) an equity
investment in or by such Party, (ii) a merger, consolidation or similar
transaction involving such Party, (iii) the negotiation of a sublicense of
rights granted hereunder or (iv) the sale of all or substantially all of the
assets of such Party. Notwithstanding the foregoing, prior to execution of this
Agreement, the Parties have agreed upon the text of one or more press releases
that describe the terms and conditions of this transaction, and each Party may
disclose such information, as modified by mutual written agreement the Parties,
without the consent of the other Party.
5.3 Permitted Disclosures. The confidentiality obligations under
this Article 5 shall not apply to the extent that a Party is required to
disclose information by applicable law, regulation or order of a governmental
agency or a court of competent jurisdiction; provided, however, that such Party
shall provide written notice thereof to the other Party, consult with the other
Party with respect to such disclosure and provide the other Party sufficient
opportunity to object to any such disclosure or to request confidential
treatment thereof.
6. OWNERSHIP OF TECHNOLOGY AND INVENTIONS; FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
6.1 OWNERSHIP OF TECHNOLOGY. Subject to the terms and conditions set
forth herein, including without limitation the license granted in Section 2.1,
Ramot shall own all right, title and interest in and to any and all Licensed
Technology. No rights or licenses in or to any Technology are conveyed hereunder
by implication or estoppel or by any means other than express grant.
6.2 OWNERSHIP OF LICENSED PRODUCTS. Predix shall own all right,
title and interest in and to any and all Licensed Products, subject to Ramot's
ownership of the underlying Licensed Technology, the terms of the license
granted herein and Predix's obligations herein, including the obligation to pay
royalties as set forth above.
6.3 PATENT FILING, PROSECUTION AND MAINTENANCE.
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11
6.3.1 Licensed Patent Rights. Ramot and Predix shall consult
each other regarding the preparation, filing and prosecution of all patent
applications, and the maintenance of all patents, included within the Licensed
Patent Rights, including, without limitation, the content, timing and
jurisdiction of the filing of such patent applications and their prosecution,
and other details. Predix shall be responsible for preparing, filing,
prosecuting, obtaining and maintaining, at its sole cost and expense, using
patent counsel reasonably acceptable to Ramot, all Licensed Patent Rights, in
the name of Ramot, with the goal of obtaining and maintaining the Licensed
Patents in a manner that will provide the maximum economic advantage and return
to the Parties under this Agreement. Predix: (i) will provide Ramot with a copy
of any proposed patent application within such Licensed Patent Rights for review
and comment reasonably in advance of filing, and (ii) will keep Ramot informed
of the status of such filing, prosecution and maintenance, including, without
limitation, by providing Ramot with copies of all communications received from
or filed in patent office(s) with respect to such filing, and by providing
Ramot, a reasonable time prior to taking or failing to take any action that
would affect the scope or validity of any such filing (including the
substantially narrowing, cancellation or abandonment of any claim(s) without
retaining the right to pursue such subject matter in a separate application, or
the failure to file or perfect the filing of any claim(s) in any country), with
prior written notice of such proposed action or inaction so that Ramot has a
reasonable opportunity to review and comment. Predix shall not take any such
action that would affect the scope of validity or any such filing without the
prior written consent of Ramot. If Predix fails to undertake the filing(s),
prosecution, protection and/or maintenance of any patent application, patent or
submission within the Licensed Patent Rights, without the prior consent of
Ramot, all claims included in such patent applications, patents and/or
submissions shall be deemed Valid Claims within the Licensed Patent Rights for
purposes of Section 1.17 until such times as the relevant patents would have
expired had they continued to their fullest term.
6.3.2 Other Patent Rights. Except as set forth in Section
6.3.1, each Party shall be responsible for preparing, filing, prosecuting,
obtaining and maintaining, at its sole cost, expense and discretion, all of its
own Patent Rights. Predix undertakes to notify Ramot, on an annual basis, of the
filing by or on behalf of Predix or any of its AFFILIATES of any priority patent
application relating to or covering an actual or potential Licensed Product.
Each such notification shall include a brief summary of the invention disclosed
in such application.
6.4 NOTICE OF INFRINGEMENT. If, during the Term, either Party learns
of any actual, alleged or threatened infringement by a Third Party of any
Licensed Patent Rights, such Party shall promptly notify the other Party and
shall provide such other Party with available evidence of such infringement.
6.5 INFRINGEMENT OF PATENT RIGHTS. Predix, after consultation with
Ramot, shall have the first right, but not the obligation and with legal counsel
of its own choice, to bring suit, or take other appropriate legal action,
against any actual, alleged or threatened infringement of the Licensed Patent
Rights. If Ramot is joined as a party plaintiff in any such suit, Ramot shall
have the right to approve or disapprove of the counsel selected by Predix to
represent Predix and Ramot, such approval not to be unreasonably withheld. The
expenses of such suit or suits that Predix elects to bring, including any
expenses of Ramot incurred in conjunction with the prosecution of such suits or
the settlement thereof, shall be paid for entirely by Predix and Predix shall
hold Ramot free, clear and harmless from and against any and all costs of such
litigation, including attorney's fees. Predix shall not compromise or settle
such litigation without
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the prior written consent of Ramot, which consent shall not be unreasonably
withheld or delayed. Ramot shall have the right, at its own expense, to be
represented in any such action by Predix by counsel of Ramot's own choice. If
Predix does not file any action or proceeding against any such infringement
within three (3) months after the earlier of: (i) Predix's notice to Ramot under
Section 6.4 above, (ii) Ramot's notice to Predix under Section 6.2 above, or
(iii) a written request from Ramot to take action with respect to such
infringement, then Ramot shall have the right, but not the obligation, at its
own expense, to bring suit, or take other appropriate legal action, against such
actual, alleged or threatened infringement, with legal counsel of its own
choice, but shall not be permitted to settle any such suit without the prior
consent of Predix, which consent shall not be unreasonably withheld. Any
damages, monetary awards or other amounts recovered, whether by judgment or
settlement, pursuant to any suit, proceeding or other legal action taken under
this Section 6.3, shall be applied as follows:
(a) First, to reimburse the Parties for their respective costs
and expenses (including reasonable attorneys' fees and costs) incurred in
prosecuting such enforcement action; and
(b) Second, any amounts remaining shall be allocated as
follows: (a) if Ramot is the Party bringing such suit or proceeding or taking
such other legal action, [********************************], (b) if Predix is
the Party bringing such suit or proceeding or taking such other legal action,
[****************************], and (c) if the suit is brought jointly,
[*************************].
If a Party brings any such action or proceeding hereunder, the other Party
agrees to be joined as Party plaintiff if necessary to prosecute such action or
proceeding, and to give the Party bringing such action or proceeding reasonable
assistance and authority to file and prosecute the suit; provided, however, that
neither Party shall be required to transfer any right, title or interest in or
to any property to the other Party or any Third Party to confer standing on a
Party hereunder.
7. REPRESENTATIONS AND WARRANTIES
7.1 RAMOT REPRESENTATIONS. Ramot represents and warrants to Predix
that:
(a) the execution and delivery of this Agreement and the performance
of the transactions contemplated hereby have been duly authorized by all
appropriate Ramot corporate action;
(b) this Agreement is a legal and valid obligation binding upon
Ramot and enforceable in accordance with its terms, and the execution, delivery
and performance of this Agreement by the Parties does not conflict with any
agreement, instrument or understanding to which Ramot is a Party or by which it
is bound;
(c) Ramot has the full right and legal capacity to grant the rights
granted to Predix hereunder;
(d) To the best of Ramot's knowledge, the Licensed Patent Rights
have been properly filed and prosecuted and Ramot is the sole owner of the
Licensed Patent Rights;
(e) Ramot has no actual knowledge as of the date hereof of any legal
suit or proceeding by a third party (whether threatened or filed) against Ramot
or TAU contesting the
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ownership or validity of the Licensed Patent Rights, or claiming that the
practice of the Licensed Patent Rights in the manner contemplated by this
Agreement would infringe the rights of such third party;
(f) Ramot will not grant or convey any rights or licenses to the
Licensed Technology that may limit Predix's ability to exercise the rights and
licenses granted herein to their fullest extent; and
(g) No member of Ramot's legal staff has received notice of any
infringement or misappropriation by a Third Party of the Licensed Technology.
7.2 PREDIX REPRESENTATIONS. Predix represents and warrants to Ramot
that:
(a) the execution and delivery of this Agreement and the performance
of the transactions contemplated hereby have been duly authorized by all
appropriate Predix corporate action; and
(b) this Agreement is a legal and valid obligation binding upon
Predix and enforceable in accordance with its terms, and the execution, delivery
and performance of this Agreement by the Parties does not conflict with any
agreement, instrument or understanding to which Predix is a Party of or by which
it is bound.
(c) Predix will comply with, and shall ensure that its Affiliates
and Sublicensees undertake to comply with, all local, state, federal, and
international laws and regulations relating to the use of the Licensed
Technology and the development, manufacture, use, license and sale of Licensed
Products.
7.3 NO WARRANTIES.
7.3.1 Nothing in this Agreement is or shall be construed as:
(a) a warranty or representation by either Party as to
the validity or scope of any patent application or patent licensed hereunder;
(b) a warranty or representation that the Licensed
Technology or anything made, used, sold or otherwise disposed of under any
license granted pursuant to this Agreement is or will be free from infringement
of patents, copyrights, and other rights of third Parties.
7.3.2 Except as expressly set forth in this Agreement, NEITHER
PARTY MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR OF NON-INFRINGEMENT OF
ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OF THIRD PARTIES, OR ANY OTHER
EXPRESS OR IMPLIED WARRANTIES.
8. INDEMNIFICATION; INSURANCE
8.1 INDEMNIFICATION. Predix shall indemnify, defend and hold
harmless Ramot, its Affiliates and their respective governors, directors,
officers, employees, stockholders
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14
and agents and their respective successors, heirs and assigns (the "Ramot
Indemnitees") from and against any liability, damage, loss or expense (including
reasonable attorneys' fees and expenses of litigation) incurred by or imposed
upon such Ramot Indemnitees, or any of them, in connection with any Third Party
claims, suits, actions, demands or judgments, including, without limitation,
personal injury and product liability matters, to the extent arising out of: (a)
the development, testing, production, manufacture, supply, promotion, import,
sale or use by any person of any Software Product or Licensed Product (or any
component thereof) manufactured or sold by Predix or any Affiliate or
Sublicensee under this Agreement, (b) the use of the Licensed Technology or
practice of the Licensed Patent Rights by Predix, any of its Affiliates or any
Sublicensees, (c) any material breach of this Agreement by Predix, (d) any
breach by a Sublicensee of a Sublicense, or (e) the gross negligence or willful
misconduct on the part of Predix or any Affiliate or Sublicensee, in any such
case under this Section 8.1.1, except to the extent any of the foregoing is
caused by the negligence or willful misconduct of Ramot or a breach of this
Agreement by Ramot.
8.2 INDEMNIFICATION PROCEDURES. In the event that any Indemnitee is
seeking indemnification under Section 8.1 above from Predix, Ramot shall notify
Predix of such claim with respect to such Indemnitee as soon as reasonably
practicable after the Ramot Indemnitee receives notice of the claim, and Ramot
(on behalf of itself and such Ramot Indemnitee) shall permit the Predix to
assume direction and control of the defense of the claim (including the right to
settle the claim solely for monetary consideration, provided that no settlement
shall be made without the consent of Ramot, which consent shall not be
unreasonably withheld) and shall cooperate as requested (at the expense of
Predix) in the defense of the claim. The indemnification obligations under
Article 8 shall not apply to any harm suffered as a direct result of any delay
in notice to Predix hereunder or to amounts paid in settlement of any claim,
demand, action or other proceeding if such settlement is effected without the
consent of Predix, which consent shall not be withheld or delayed unreasonably.
The Indemnitee, its employees and agents, shall reasonably cooperate with Predix
and its legal representatives in the investigation of any claim, demand, action
or other proceeding covered by Section 8.1.
8.3 INSURANCE. Predix shall, at its sole cost and expense, procure
and maintain product liability insurance with respect to Licensed Products
commencing upon the First Commercial Sale of the first Licensed Product and
continuing until the termination of this Agreement. Such insurance coverage
shall be on terms that are in keeping with industry standards within the
bio-pharmaceutical industry. The insurance shall be underwritten by a reputable
insurance carrier. Ramot shall be named as an additional insured on such policy
and shall be entitled to advance notice of cancellation or expiration of such
policy. Predix shall comply with the requirements and restrictions imposed by
such insurance policy including with respect to the full and timely payment of
all premiums due thereon. Predix shall provide a copy of such insurance policy
to Ramot upon request.
9. TERM AND TERMINATION
9.1 TERM; EXPIRATION. The term of this Agreement shall, unless
sooner terminated in accordance with this Section 9, expire upon the expiration
of the final payment obligation under Article 4 above (the "Term"). Upon the
expiration of the Term of this Agreement, Predix shall have a fully paid-up,
irrevocable, freely transferable and sublicensable exclusive license in the
Territory under the Licensed Patent Rights and Licensed Technology, to Develop,
have Developed, make, have made, use, have used, sell, offer for sale, have
sold,
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15
import and have imported any and all Licensed Products in the Territory for any
and all uses within the Field.
9.2 TERMINATION RIGHTS FOR BREACH.
Subject to the other terms of this Agreement, this Agreement
and the rights and options granted herein may be terminated by either Party upon
any material breach by the other Party of any material obligation or condition,
effective thirty (30) days after giving written notice to the breaching Party of
such termination in the case of a payment breach and ninety (90) days after
giving written notice to the breaching Party of such termination in the case of
any other breach, which notice shall describe such breach in reasonable detail.
The foregoing notwithstanding, if such default or breach is cured or remedied or
shown to be non-existent within the aforesaid thirty (30) or ninety (90) day
period, the notice shall be automatically withdrawn and of no effect. However,
prior to giving any notice of termination for breach, the Parties shall first
attempt to resolve any disputes as to the existence of any breach as set forth
in Article 10.
9.3 TERMINATION FOR BANKRUPTCY. In the event that either Party files
for protection under bankruptcy laws, makes an assignment for the benefit of
creditors, appoints or suffers appointment of a receiver or trustee over its
property, files a petition under any bankruptcy or insolvency act or has any
such petition filed against it which is not discharged within sixty (60) days of
the filing thereof, then the other Party may terminate this Agreement effective
immediately upon written notice to such Party.
9.4 EFFECTS OF TERMINATION.
9.4.1 Termination for Predix Breach. Upon any termination of
this Agreement by Ramot under Section 9.2, as of the effective date of such
termination all relevant licenses and sublicenses granted by Ramot to Predix
hereunder shall terminate automatically. Notwithstanding the foregoing: (a) no
such termination of this Agreement shall be construed as a termination of any
valid sublicense of any Sublicensee hereunder, and thereafter each such
Sublicensee shall be considered a direct licensee of Ramot, provided that (i)
such Sublicensee is then in full compliance with all terms and conditions of its
sublicense, (ii) all accrued payments obligations to Ramot have been paid, and
(iii) such Sublicensee agrees in writing to assume all applicable obligations of
Predix under this Agreement, and (b) Predix and its Affiliates and Sublicensees
shall have the right, for [**********] or such longer time period (if any) on
which the Parties mutually agree in writing, to sell or otherwise dispose of all
Licensed Products then on hand, with royalties to be paid to Ramot on all Net
Sales of such Licensed Products as provided for in this Agreement.
9.4.2 Termination for Ramot Breach. Upon any termination of
this Agreement by Predix under Section 9.2, as of the effective date of such
termination, Predix thereafter automatically shall have a fully sublicensable
and transferable, fully paid up (subject to the remainder of this Section 9.4),
exclusive license in the Territory under the Licensed Patent Rights and Licensed
Technology, to Develop, have Developed, make, have made, use, have used, sell,
offer for sale, have sold, import and have imported any and all Licensed
Products in the Territory for any and all uses within the Field, provided that
Predix shall pay, [***************************************************
********************************************************************************
********************************************************************************
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16
********] that would otherwise apply with respect to Net Sales, Sublicense
Income and Service Income under Section 4 of this Agreement.
9.5 REMEDIES. Except as otherwise expressly set forth in this
Agreement, the termination provisions of this Article 9 are in addition to any
other relief and remedies available to either Party at law.
9.6 SURVIVING PROVISIONS. Notwithstanding any provision herein to
the contrary, the rights and obligations of the Parties set forth in Articles 5,
7, 8 and 10 and Sections 6.1, 6.2, 9.1, 9.4, 9.5, 9.6, 11.1, 11.8, and 11.11 as
well as any rights or obligations otherwise accrued hereunder (including any
accrued payment obligations), shall survive the expiration or termination of the
Term.
10. DISPUTE RESOLUTIONS
10.1 DISPUTE RESOLUTION. Prior to engaging in any formal dispute
resolution with respect to any dispute, controversy or claim arising out of or
in relation to this Agreement, or the breach, termination or invalidity hereof
(each, a "Dispute"), the Chief Executive Officers of the Parties shall attempt
over a period of not less than [***********] to resolve such Dispute.
11. MISCELLANEOUS
11.1 GOVERNING LAW. Except as otherwise provided herein, this Agreement
shall be governed by, interpreted and construed in accordance with the laws of
the State of Israel, without regard to the conflicts of law principles thereof,
and sole jurisdiction is granted to the competent courts in Tel Aviv, Israel.
11.2 WAIVER. No waiver by a Party hereto of any breach or default of any
of the covenants or agreements herein set forth shall be effective unless set
forth in a writing signed by the waiving Party or shall be deemed a waiver as to
any subsequent and/or similar breach or default.
11.3 ASSIGNMENT. Neither this Agreement nor any right or obligation
hereunder may be assigned or delegated, in whole or part, by either Party
without the prior express written consent of the other; provided, however, that
either Party may, without the written consent of the other, assign this
Agreement and its rights and delegate its obligations hereunder in connection
with the transfer or sale of all or substantially all of its business, or in the
event of its merger, consolidation, change in control or similar transaction.
Any permitted assignee shall assume all obligations of its assignor under this
Agreement. Any purported assignment in violation of this Section 11.3 shall be
void.
11.4 INDEPENDENT CONTRACTORS. The relationship of the Parties hereto is
that of independent contractors. Neither Party hereto shall be deemed to be the
agent, partner or joint venturer of the other for any purpose as a result of
this Agreement or the transactions contemplated thereby.
11.5 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further documents and instruments and to perform all such other
acts as may be necessary or appropriate in order to carry out the purposes and
intent of this Agreement.
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11.6 NOTICES. All requests and notices required or permitted to be given
to the Parties hereto shall be given in writing, shall expressly reference the
section(s) of this Agreement to which they pertain, and shall be delivered to
the other Party, effective on receipt, at the appropriate address as set forth
below or to such other addresses as may be designated in writing by the Parties
from time to time during the term of this Agreement.
If to Ramot:
Ramot at Tel Aviv University Ltd.
32 Xxxx Xxxxxxx Street
POB 39296
Xxx Xxxx 00000
XXXXXX
Attn: CEO
If to Predix:
Predix Pharmaceuticals
10K Xxxx Xxxxxx
Xxxxxx, XX 00000
XXX
Attn: Chief Executive Officer
Copy to:
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
XXX
Attn: Xxxxxxxxxxx X. Xxxx, Esq.
11.7 FORCE MAJEURE. Nonperformance of a Party (other than for the payment
of money) shall be excused to the extent that performance is rendered impossible
by strike, fire, earthquake, flood, governmental acts or orders or restrictions,
failure of suppliers, or any other reason where failure to perform is beyond the
reasonable control and not caused by the negligence, intentional conduct or
misconduct of the nonperforming Party; provided, however, that the nonperforming
Party shall use commercially reasonable efforts to resume performance as soon as
reasonably practicable.
11.8 NO CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL A PARTY BE LIABLE FOR
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT OR
THE EXERCISE OF ITS RIGHTS HEREUNDER, INCLUDING WITHOUT LIMITATION LOST PROFITS
ARISING FROM OR RELATING TO ANY BREACH OF THIS AGREEMENT, REGARDLESS OF ANY
NOTICE OF SUCH DAMAGES.
11.9 COMPLETE AGREEMENT. This Agreement constitutes the entire agreement
between the Parties regarding the subject matter hereof, and all prior
representations, understandings and agreements regarding the subject matter
hereof, either written or oral, expressed or implied, are
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superseded and shall be and of no effect.
11.10 HEADINGS. The captions to the several sections hereof are not a part
of this Agreement, but are included merely for convenience of reference only and
shall not affect its meaning or interpretation.
11.11 SECTION 365(n). All licenses granted under this Agreement are deemed
to be, for purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of
right to "intellectual property" as defined in Section 101 of such Code.
11.12 FURTHER ASSURANCES. Each Party agrees to execute, acknowledge and
deliver such further instructions, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
11.13 COUNTERPARTS. This Agreement may be executed simultaneously in one
or more counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
11.14 TERMINATION OF ORIGINAL AGREEMENT. The Parties acknowledge and agree
that: (i) the Original Agreement is hereby terminated as of the Restated
Effective Date and (ii) except as provided herein, all rights, obligations and
licenses provided for under the Original Agreement shall terminate and shall be
of no further force or effect on and after the Restated Effective Date.
[Remainder of page intentionally left blank]
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representative in two (2) originals.
PREDIX PHARMACEUTICALS
HOLDINGS, INC. RAMOT AT TEL AVIV UNIVERSITY LTD.
By: /s/ XXXXXXX X. XXXXXXXX /s/ CHEN XXXXX By: /s/ XXXXX X. XXXXXXXX /s/ XXXXXXX XXX
------------------------------------------- --------------------------------------------
Name: Xxxxxxx Xxxxxxxx Chen Xxxxx Name: Xxxxx X. Xxxxxxxx Xxxxxxx Xxx
Title: President and CEO CBO Title: Chief Executive Officer Chief
Operating Officer
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EXHIBIT 1.6
DERIVED PRODUCTS
PREDIX COMPOUNDS TARGET XXXXX XXXXX DOCKET NO. COUNTRY TITLE NAMED INVENTOR(S) APPLICATION NO. PATENT NO. FILING DATE
[ * * * * * * * Exhibit 1.6 contains confidential material and has been omitted
in its entirety. * * * * * * * * * *]
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OMISSIONS.
