Exhibit 10.67
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
S96-172:MW
Exclusive License
11/11/98
LICENSE AGREEMENT
Effective as of November 30, 1998 ("Effective Date"), THE BOARD OF TRUSTEESOF
THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers under the
laws of the State of California ("STANFORD"), and Ontogeny, Inc., a Delaware
corporation having a principal place of business at 00 Xxxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000 ("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 STANFORD has an assignment of "Sprouty Family of Proteins" from the
laboratory of Xx. Xxxx Xxxxxxx , as described in Stanford Docket S96-172,
("Invention(s)") and any Licensed Patent(s), as hereinafter defined, which
may issue to such Invention(s).
1.2 STANFORD has certain technical data and information as herein defined
("Technology") pertaining to Invention(s).
1.3 STANFORD desires to have the Technology and Invention(s) perfected and
marketed at the earliest possible time in order that products resulting
therefrom may be available for public use and benefit.
1.4 LICENSEE desires a license under said Technology, Invention(s), and
Licensed Patent(s) to develop, manufacture, use, and sell Licensed
Product(s) in the field of use of human and veterinary therapeutics, drug
discovery and diagnostics.
1.5 The Technology and Invention(s) were made in the course of research
supported by the National Institutes of Health.
2. DEFINITIONS
2.1 "Licensed Patent(s)" means U.S. Patent Application, Serial Number 965,903,
filed 11/7/97, and any divisions, continuations, continuation-in-part
applications (CIPs) which CIPs are ' directed to subject matter
specifically described in the above mentioned patent application
including, but not limited to, the function of sprouty in normal or
pathological conditions in mammals and the mechanism by which sprouty
functions, including proteins with which it directly interacts, with the
understanding that any applications which includes such information shall
be filed as a CIP, and any foreign patent application or equivalent
corresponding thereto and any Letters patent or equivalent thereof issuing
thereon or reissue, reexamination or extension thereof.
2.2 "Technology" means existing technical data and information from Xx. Xxxx
Xxxxxxx'x laboratory, provided by STANFORD to LICENSEE in writing and
listed in Exhibit A hereto, which data and information pertains to the
Invention(s) and is confidential and non-public at the time of first
commercial sale of a Licensed Product which incorporates such data and
information.
2.3 "Licensed Product(s)" means any product or part thereof in the Licensed
Field of Use, the manufacture, use, or sale of which:
(a) Is covered by a valid claim of an issued, unexpired Licensed
Patent(s) directed to the Invention(s) in the country in which
it is made, used or sold. A claim of an issued, unexpired
Licensed Patent(s) shall be presumed to be valid unless and
until it has been held to be invalid by a final judgment of a
court of competent jurisdiction from which no appeal can be or
is taken;
(b) Is covered by any claim being prosecuted in a pending
application of Licensed Patent(s) in the country in which it
is made, used or sold unless such claim has been pending in
such application or an earlier application of Licensed
Patent(s) for greater than five years; or
(c) Incorporates any of the Technology or Licensed Materials.
2.4 "Net Sales" means the gross revenue derived by LICENSEE from Licensed
Product(s), less the following items but only insofar as they actually
pertain to the disposition of such Licensed Product(s) by LICENSEE, are
included in such gross revenue, and are separately billed:
(a) Import, export, excise and sales taxes, and custom duties
(b) Costs of installation at the place of use;
(c) Costs of insurance, packing, and transportation from the place
of manufacture to the customer's premises or point of
installation;
(d) Credit for returns, allowances, or trades; and
(e) Customary trade, quantity or cash discounts.
Where Licensed Products are not sold separately, but are sold in combination
with or as parts of other products, hereinafter such combinations referred to as
a "Combination Product" and the Licensed Product and each such other product
being referred to as a "Component Product"', the Net Sales price to be used for
the purpose of calculating royalties payable in respect of Combination Products
must be determined by multiplying the Net Sales price of the Combination Product
by the percentage value of the Licensed Product comprising a Component Product
contained in the Combination Product, such percentage value being determined by
dividing the current market value of the Licensed Product comprising a Component
Product by a sum of the separate current market values of each of the Component
Products which are contained in the Combination Product. The current market
value of each of the Component Products must be for a quantity comparable to
that contained in the Combination Product and of the same class, purity and
potency. When no current market value is available for a Component Product, a
reasonable hypothetical market value for such Component Product based upon the
allocation of the same proportions of costs, reasonable overhead and profits
(all of which must be determined on the basis of generally accepted accounting
principles) as are or should be allocated to similar Component Products and
having an ascertainable market value.
2.5 "Licensed Field of Use" means human and veterinary therapeutics, drug
discovery and diagnostics.
2.6 "Licensed Territory" means worldwide.
2.7 "Licensed Materials" means any physical embodiment of the Invention
produced by Xx. Xxxx Xxxxxxx'x laboratory including the Invention
embodiments described in Licensed Patents and included in Exhibit B
hereto. STANFORD and LICENSEE will update Exhibit B should additional
materials become available and STANFORD agrees to make these materials
available under this Agreement.
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2.8 "Exclusive" means that, subject to Article 4, STANFORD shall not grant
further licenses in the Licensed Territory in the Licensed Field of Use.
3. GRANT
3.1 STANFORD hereby grants and LICENSEE hereby accepts a license in the
Licensed Field of Use to make, use, and sell Licensed Product(s), to use
Technology and to use Licensed Materials in the Licensed Territory.
3.2 Said license is Exclusive, including the right to sublicense pursuant to
Article 13, in the Licensed Field of Use for a term commencing as of
Effective Date and ending, on a country-by-country basis, 12 years from
the date of first commercial sale of a Licensed Product(s) by LICENSEE or
sublicensee(s) in such country; LICENSEE agrees to promptly inform
STANFORD in writing of the date of first commercial sale. If three months
prior to the expiration of the Exclusive term, LICENSEE can demonstrate to
STANFORD that it has and will continue to effectively exploit the
Inventions and Licensed Patents under this Agreement, then the term of the
Exclusive rights granted may be extended, such extension not to be
unreasonably withheld by STANFORD. Upon expiration of the Exclusive term
of the license, the license shall be nonexclusive until expiration of the
last to expire of Licensed Patent(s).
3.3 Although STANFORD cannot license at third party under the Licensed
Patent(s) in the Licensed Field of Use during the exclusive term of the
Agreement, STANFORD may enter into a third party collaboration, which
includes Technology or Licensed Materials. If Stanford enters into a third
party collaboration which includes Technology or Licensed Materials, the
Exclusive license to Technology or Licensed Materials will automatically
become non-exclusive ("Non-exclusive Materials Period").
3.4 STANFORD shall have the right to practice the Invention(s) and use the
Technology and Licensed Materials for its own bona fide research purposes.
Any Licensed Materials that are to be transferred to third party academic
or not-for-profit research institutions shall be transferred by LICENSEE
under an MTA. During the Non-exclusive Materials Period, Stanford has the
right to transfer Licensed Materials independently. STANFORD shall have
the right to publish any information included in Technology and Licensed
Patent(s).
4. GOVERNMENT RIGHTS
This Agreement is subject to all of the terms and conditions of Xxxxx 00 Xxxxxx
Xxxxxx Code Sections 200 through 204, including an obligation that Licensed
Product(s) sold or produced in the United States be "manufactured substantially
in the United States," and LICENSEE agrees to take all reasonable action
necessary on its part as licensee to enable STANFORD to satisfy its obligation
thereunder, relating to Invention(s).
5. DILIGENCE
5.1 As an inducement to STANFORD to enter into this Agreement, LICENSEE agrees
to use all reasonable efforts and diligence to proceed with the
development, manufacture, and sale of Licensed Product(s) and to
diligently develop markets for the Licensed Product(s). Unless LICENSEE
has a Licensed Product(s) available for commercial sale prior to[**],
LICENSEE agrees that STANFORD may convert this Agreement to a
non-exclusive
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
license Agreement. In addition, LICENSEE agrees to meet the milestones set
forth in Exhibit C. If LICENSEE in good faith fails to meet a milestone
set forth in Exhibit C, then LICENSEE shall have a six month period of
time to reestablish diligence towards its objectives, and if LICENSEE
reestablishes diligence towards its objectives during this six month
period, any prior lack of diligence will be deemed cured. Anytime after
[**] years from the Effective Date, STANFORD may terminate this Agreement
if LICENSEE or a sublicensee(s) has not sold Licensed Product(s) for a
period of one (1) year and is not demonstrably engaged in a research,
development, manufacturing, marketing or licensing program, as
appropriate, directed toward the development and commercialization of the
licensed subject matter.
5.2 Progress Report - On or before September 1 of each year until LICENSEE
markets a Licensed Product(s), LICENSEE shall make a written annual report
to STANFORD covering the preceding year ending June 30, regarding the
progress of LICENSEE toward commercial use of Licensed Product(s). Such
report shall include, as a minimum, information sufficient to enable
STANFORD to satisfy reporting requirements of the U.S. Government and for
STANFORD to ascertain progress by LICENSEE toward meeting the diligence
requirements of this Article 5.
6. ROYALTIES
6.1 LICENSEE agrees to pay to STANFORD a noncreditable, nonrefundable license
issue royalty of [**] upon signing this Agreement.
6.2 Beginning October 1, 1999 and each October 1 thereafter, LICENSEE also
shall pay to STANFORD the following yearly royalty:
Anniversaries 1-5 $[**]
Anniversaries 6 and thereafter $[**]
Upon initiation of Phase III clinical trials, annual payments stop until
first commercial sale of Licensed Product for which royalties are due
hereunder. They resume at the level of 1/3 the previous year's royalties
or $[**], whichever is greater ("Commercial Yearly Royalties") with the
exception of the following: If all of the Licensed Products being
commercially sold fall under Section 2.3 (c) and not Sections 2.3 (a) or
(b), then the yearly royalties due under this section shall resume at 1/5
of such Commercial Yearly Royalties ("'Reduced Yearly Royalties"). If this
Agreement enters the Nonexclusive Materials Period, LICENSEE is no longer
responsible for paying Reduced Yearly Royalties. If this Agreement becomes
non-exclusive, the yearly royalty shall be reduced to an amount equal to
1/n times the yearly royalty in this Section 6.2 owed during the Exclusive
period of the Agreement where n equals the number of licensees in the
Licensed Field of Use of the Licensed Patents, Technology or Licensed
Materials. The first 5 annual payments are nonrefundable and
noncreditable. If an IND has been filed by the 6th anniversary, all future
yearly royalty payments are nonrefundable, but are creditable against
earned royalties to the extent provided in Paragraph 6.5. If no IND has
been filed, the future yearly royalty payment is nonrefundable and
noncreditable until an IND has been filed.
6.3 In addition, LICENSEE shall pay STANFORD earned royalties on Net Sales
during the Exclusive period of the Agreement as follows:
Royalties on Net Sales by LICENSEE:
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
(a) If manufacture, use or sale of Licensed Product is covered by
a valid composition of matter claim of an issued unexpired
Licensed Patent in the country in which it is made, used or
sold : [**]%
(b) If the manufacture, use or sale of Licensed Product is not
covered by a valid composition of matter claim of an issued,
unexpired Licensed Patent in the country in which it is made,
used or sold, but the manufacture, use or sale of Licensed
Product is covered by a valid claim of Licensed Patents in the
country in which it is made, used or sold according to the
following schedule:
On Net Sales up to $[**] [**]%
On Net Sales of $[**] to $[**] [**]%
On Net Sales of $[**] to $[**] [**]%
On Net Sales over $[**] [**]%
(c) If the manufacture, use or sale of Licensed Product is not
covered by a valid composition of matter claim of an issued,
unexpired Licensed Patent or a valid claim of Licensed Patents
in the country in which it is made, used or sold, but the
Licensed Product incorporates Technology or Licensed Materials
and is not included in a third party collaboration, according
to the following schedule:
On Net Sales up to $[**] [**]%
On Net Sales of $[**] to $[**] [**]%
On Net Sales over $[**] [**]%
The royalty will be applied to the sales in the particular range and
not applied to the entire amount should the sales level reach that
level. If this Agreement becomes non-exclusive, the earned royalty
shall be reduced to an amount equal to 1/n times the earned royalty
in this Section 6.3 (a) and 6.3(b) owed during the Exclusive period
of the Agreement where n equals the number of licensees in the
Licensed Field of Use of the Licensed Patent. If this Agreement
enters the Non-exclusive Materials Period, no earned royalties under
6.3(c) will be owed.
6.4 LICENSEE also agrees to make the following milestone payments for the
first Licensed Product to attain such a milestone:
Upon IND Filing: $[**]
Upon Initiation of Phase III Human Clinical Trials $[**]
Upon Filing of an NDA (or equivalent) in US: $[**]
Upon Approval of an NDA (or equivalent) in US: $[**];
provided, however, that if the first Licensed Product for which the
milestone is obtained falls under Section 2.3 (c) and not Sections 2.3 (a)
or (b), then the milestone payments to be made hereunder shall be at 1/5
of the milestones payments set forth in this Section 6.4 unless the
Agreement has entered the Non-exclusive Materials Period, in which case no
milestone payment will be due. If a subsequent Licensed Product attains a
milestone set forth in this Section 6.4 and such Licensed Product falls
under Sections 2.3 (a) or (b), then LICENSEE agrees to pay STANFORD the
difference between the milestone payments set forth in this Section 6.4
and the amount which has been previously paid by LICENSEE . Said milestone
payments are nonrefundable, but they are creditable against earned
royalties in the manner set forth in Section 6.5.
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6.5 Creditable payments under Sections 6.2 and 6.4 of this Agreement shall be
an offset to LICENSEE against up to fifty percent (50%) of each earned
royalty payment which LICENSEE would be required to pay pursuant to
Paragraph 6.3 until the entire credit is exhausted.
6.6 If this Agreement is not terminated in accordance with other provisions
hereof, LICENSEE shall be obligated to pay royalties hereunder until the
latter of:
(a) If the Licensed Product is covered by a claim of a Licensed
Patent that has not issued, for a period of five years from
the date the claim has been pending in the country in which
the Licensed Product is made, used or sold; or
(b) For so long as LICENSEE, by its activities would, but for the
license granted herein, infringe a valid claim of an issued,
unexpired Licensed Patent(s) of STANFORD covering said
activity. LICENSEE shall be obligated to pay royalties on all
Licensed Product(s) that are either sold or produced during
the term of this Agreement under the license granted in
Article 3, regardless of whether such Licensed Product(s) are
produced prior to the Effective Date of this Agreement or sold
after the expiration of the Licensed Patent(s).
6.7 The royalty on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such currency
quoted by the Bank of America (San Francisco) foreign exchange desk, on
the close of business on the last banking day of each calendar quarter.
Royalty payments to STANFORD shall be in U.S. Dollars. All non-U.S. taxes
related to royalty payments shall be paid by LICENSEE and are not
deductible from the payments due STANFORD. In the event that LICENSEE is
required to withhold taxes imposed upon STANFORD for any payment under
this Agreement by virtue of the statutes, laws, codes or governmental
regulations of a foreign country in which Licensed Products are sold, then
such payments will be made by LICENSEE without deduction from the payment
due STANFORD. STANFORD shall assist LICENSEE as reasonably requested by
LICENSEE and at LICENSEE's expense, in recovering such taxes to the extent
possible under applicable tax laws and treaties.
6.8 Within forty-five (45) days after receipt of a statement from STANFORD,
LICENSEE shall reimburse STANFORD for all costs incurred by STANFORD,
prior to the Effective Date which shall not exceed $24,000, in connection
with the preparation, filing, and prosecution of all patent applications
and maintenance of patents corresponding to the Invention. After the
Effective Date, and during the Exclusive term of the license, LICENSEE
will be responsible for the filing, prosecution and maintenance of the
Licensed Patent(s) and the costs incurred by LICENSEE related to such
filing, prosecution and maintenance. Licensee may use patent counsel of
its own choosing, reasonably acceptable to STANFORD, provided that
STANFORD shall be kept informed of and shall receive copies of all
documentation and substantive actions pertaining to the filing,
prosecution and maintenance of Licensed Patent(s). STANFORD shall have
reasonable opportunities to participate in decision making and LICENSEE
will use diligent efforts to incorporate Stanford's reasonable
suggestions. If LICENSEE elects not to continue to seek or maintain patent
protection on any Licensed Patent in any country during the Exclusive term
of the license, STANFORD shall have the right, at its
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expense, to procure, maintain and enforce in any country such Licensed
Patent(s) and LICENSEE shall have no further rights under the Licensed
Patent(s) in such country.
6.9 Only one royalty is due on each Licensed Product sold by LICENSEE
regardless of whether its manufacture, use or sale are or shall be covered
by more than one patent or patent application included in Licensed Patent
(s) licensed under this Agreement, and no further royalties will be due
for use of such Licensed Product by LICENSEES customers.
7. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
7.1 Quarterly Earned Royalty Payment and Report - Beginning with the first
sale of a Licensed Product(s), LICENSEE shall make written reports (even
if there are no sales) and earned royalty payments to STANFORD within
forty-five (45) days after the end of each calendar quarter. This report
shall state the number, description, and aggregate Net Sales of Licensed
Product(s) during such completed calendar quarter, and resulting
calculation pursuant to Paragraph 6.3 of earned royalty payment due
STANFORD for such completed calendar quarter. Concurrent with the making
of each such report, LICENSEE shall include payment due STANFORD of
royalties for the calendar quarter covered by such report.
7.2 LICENSEE also agrees to make a written report to STANFORD within ninety
(90) days after the expiration of the license pursuant to Section 3.2.
LICENSEE shall continue to make reports pursuant to the provisions of this
Section 7.2 concerning royalties payable in accordance with Section 6.6(b)
in connection with the sale of Licensed Product(s) after expiration of the
license, until such time as all such Licensed Product(s) produced under
the license have been sold or destroyed. Concurrent with the submittal of
each post-termination report, LICENSEE shall pay STANFORD all applicable
royalties.
7.3 Accounting - LICENSEE agrees to keep and maintain records for a period of
three (3) years showing the manufacture, sale, use, and other disposition
of products sold or otherwise disposed of under the license herein
granted. Such records will include general ledger records showing cash
receipts and expenses, and records which include production records,
customers, serial numbers, and related information in sufficient detail to
enable the royalties payable hereunder by LICENSEE to be determined.
LICENSEE further agrees to permit its books and records to be examined by
an independent certified public accountant selected by STANFORD from time
to time to the extent necessary to verify reports provided for in
Paragraph 7.1 and 7.2. Such examination. is to be made by STANFORD or its
designee, at the expense of STANFORD, except in the event that the results
of the audit reveal an underreporting of royalties due STANFORD of five
percent (5%) or more, then the audit costs shall be paid by LICENSEE.
8. NEGATION OF WARRANTIES
8.1 To the best of STANFORDS OTL's knowledge, STANFORD is the sole owner of
U.S. patent application Serial No. 965, 903 filed 11/7/97 and U.S.
provisional patent application Serial No. 60/030,232 filed 11/7/96.
8.2 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by STANFORD as to the validity or
scope of any Licensed Patent(s);
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(b) A warranty or representation that anything made, used, sold,
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties; however,
STANFORD does represent that it has not received notice of any
assertion that any of the patents/patent applications or
subject inventions infringe upon any third party's know-how,
patent or other intellectual property rights as of the
Effective Date;
(c) An obligation to bring or prosecute actions or suits against
third parties for infringement, except to the extent and in
the circumstances described in Article 12; or
(d) Granting by implication, estoppel, or otherwise any licenses
or rights under patents or other rights of STANFORD or other
persons other than Licensed Patent(s), regardless of whether
such patents or other rights are dominant or subordinate to
any Licensed Patent(s).
8.3 Except as expressly set forth in this Agreement, STANFORD MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED
PRODUCT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER
RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
8.4 LICENSEE agrees that nothing in this Agreement grants LICENSEE any express
or implied license or right under or to U.S. Patent 4,656,134
'Amplification of Eucaryotic Genes' or any patent application
corresponding thereto.
9. INDEMNITY
9.1 LICENSEE agrees to indemnify, hold harmless, and defend STANFORD,
UCSF-Stanford Health Care and Stanford Health Services and their
respective trustees, officers, employees, students, and agents against any
and all claims for death, illness, personal injury, property damage, and
improper business practices arising out of the manufacture, use, sale, or
other disposition of Invention(s), Licensed Patent(s), Licensed
Product(s), or Technology by LICENSEE or sublicensee(s), except if such
claims are due to the gross negligence of willful acts of STANFORD.
STANFORD agrees to promptly notify LICENSEE in writing of any such claim
and LICENSEE shall manage and control, at its own expense, the defense of
such claim and its settlement, utilizing attorney's reasonably acceptable
to STANFORD. LICENSEE agrees not to settle any such claim against STANFORD
without STANFORD's, written consent where such settlement would include
any admission of liability on the part of STANFORD, where the settlement
would impose any restriction on the conduct by STANFORD of any of its
activities, or where the settlement would not include an unconditional
release of STANFORD from all liability for claims that are the subject
matter of such claim. STANFORD shall not settle any claim covered by the
indemnity without the prior written consent of LICENSEE which consent
shall not be unreasonably withheld or delayed. This section 9.1 will
survive termination of this Agreement.
9.2 STANFORD shall not be liable for any indirect, special, consequential or
other damages whatsoever, unless due to the gross negligence or willful
misconduct of STANFORD.
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STANFORD shall not have any responsibilities or liabilities whatsoever
with respect to Licensed Products(s).
9.3 LICENSEE shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
9.4 In addition to the foregoing, LICENSEE shall maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier(s) to cover the activities of LICENSEE. Upon initiation
of clinical trials of the Licensed Product such insurance shall provide
minimum limits of liability of $5 Million and shall include STANFORD,
UCSF-Stanford Health Care, Stanford Health Services, their trustees,
directors, officers, employees, students, and agents as additional
insureds. Such insurance shall be written to cover claims incurred,
discovered, manifested, or made during or after the expiration of this
Agreement up to a limit of seven years after the product is no longer sold
and should be placed with carriers with ratings of at least A- as rated by
A.M. Best. At Stanford's request, LICENSEE shall furnish a Certificate of
Insurance evidencing primary coverage and additional insured requirements
and requiring thirty (30) days prior written notice of cancellation or
material change to STANFORD. LICENSEE shall advise STANFORD, in writing,
that it maintains excess liability coverage (following form) over primary
insurance for at least the minimum limits set forth above. All such
insurance of LICENSEE shall be primary coverage; insurance of STANFORD,
UCSF-Stanford Health Care, and Stanford Health Services shall be excess
and noncontributory.
10. MARKING
Prior to the issuance of patents on the Invention(s), LICENSEE agrees to xxxx
Licensed Products (or their containers or labels) made, sold, or otherwise
disposed of by it under the license granted in this Agreement with the words
"Patent Pending," and following the issuance of one or more patents, with the
numbers of the Licensed Patent(s).
11. STANFORD NAMES AND MARKS
LICENSEE agrees not to identify STANFORD in any promotional advertising or other
promotional materials to be disseminated to the public or any portion thereof or
to use the name of any STANFORD faculty member, employee, or student or any
trademark, service xxxx, trade name, or symbol of STANFORD, Stanford Health
Services or UCSF-Stanford Health Care, or that is associated with any of them,
Without STANFORD's prior written consent, which shall not be unreasonably
withheld.
12. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
12.1 LICENSEE and STANFORD shall promptly inform the other party of any
suspected infringement of any Licensed Patent(s) by a third party. During
the Exclusive period of this Agreement, STANFORD and LICENSEE each shall
have the right to institute an action for infringement of the Licensed
Patent(s) against such third party in accordance with the following:
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(a) Within 30 days of notification, if STANFORD and LICENSEE agree
to institute suit jointly, the suit shall be brought in both
their names, the out-of-pocket costs thereof shall be borne
equally, and any recovery or settlement shall be shared
equally. LICENSEE and STANFORD shall agree to the manner in
which they shall exercise control over such action. Each party
may, if it so desires, also be represented by separate counsel
of its own selection, the fees for which counsel shall be paid
by such party.;
(b) If STANFORD and LICENSEE do not institute suit jointly within
30 days of notification as set forth in 12.1(a), LICENSEE
shall be empowered to bring suit in its own name to enjoin
such infringement. LICENSEE shall bear the entire cost of such
litigation and shall be entitled to retain the entire amount
of any recovery or settlement. However, any recovery in excess
of litigation costs will be considered Net Sales, and LICENSEE
will pay STANFORD royalties as indicated in Section 6.3.
STANFORD shall provide reasonable assistance, at LICENSEE"s
cost, to LICENSEE in the prosecution of any such suit brought
by LICENSEE.
(c) In the event that LICENSEE does not terminate such
infringement or initiate steps to do so within six months of
learning of such infringement, STANFORD may bring suit against
infringer at its sole expense and shall be entitled to retain
the entire amount of any recovery or settlement. LICENSEE will
give reasonable assistance to STANFORD in the prosecution of
any such suit brought by STANFORD.
12.2 Should either STANFORD or LICENSEE commence a suit under the provisions of
Paragraph 12.1 and thereafter elect to abandon the same, it shall give
timely notice to the other party who may, if it so desires, continue
prosecution of such suit, provided, however, that the sharing of expenses
and any recovery in such suit shall be as agreed upon between STANFORD and
LICENSEE.
13. SUBLICENSE(S)
13.1 LICENSEE may grant sublicense(s) to Licensed Patents, Technology and/or
Licensed Materials during the term of this Agreement.
13.2 If LICENSEE is unable or unwilling to serve or develop a potential market
or market territory for which there is a willing sublicensee(s), LICENSEE
will, at STANFORD's request, negotiate in good faith a sublicense(s)
hereunder. Bona fide business concerns of LICENSEE will be considered in
any good faith negotiations for a sublicense under this Agreement.
13.3 Any sublicense(s) granted by LICENSEE under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement, except:
(a) Sublicense terms and conditions shall reflect that any
sublicensee(s) may further sublicense any rights under
Licensed Patents, Technology or Materials only as: (a) needed
or implied in the course of distribution, installation or
performance of service as required for the sale to an end-user
of Licensed Products or Licensed Materials, or (b) not
specifically rejected in writing by STANFORD within thirty
(30) days of written notification of subsublicensee by
LICENSEE, any such rejection not being unreasonably made by
STANFORD; and
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
(b) The earned royalty rate specified in the sublicense(s) may be
at higher rates than the rates in this Agreement. Any such
sublicense(s) also shall expressly include the provisions of
Articles 7, 8, and 9 for the benefit of STANFORD and provide,
at LICENSEE'S option, for the transfer of all obligations,
including the payment of royalties specified in such
sublicense(s), to STANFORD or its designee, in the event that
this Agreement is terminated.
13.4 LICENSEE agrees to provide STANFORD in confidence with a copy of the
relevant portions of any sublicense granted pursuant to this Article 13.
13.5 LICENSEE will pay to STANFORD [**] of all upfront payments received from
a sublicensee in consideration for the sublicensing of Licensed Patents as
well as [**] of any royalties, fees or other amounts received by LICENSEE
as a result of the sublicensee's sale of Licensed Products, excluding but
not limited to equity payments, milestone payments, amounts paid to fund
research and development activities conducted by LICENSEE, and
reimbursement of patent costs. If LICENSEE is required to pay royalties to
an additional party, STANFORD agrees in good faith to consider a reduction
in royalties under this section by LICENSEE.
14. TERMINATION
14.1 LICENSEE may terminate this Agreement by giving STANFORD notice in writing
at least thirty (30) days in advance of the effective date of termination
selected by LICENSEE.
14.2 Subject to Section 5.1 of this Agreement, STANFORD may terminate this
Agreement if LICENSEE:
(a) Is in default in payment of royalty or providing of reports;
(b) Is in material breach of any provision hereof; or
(c) Provides any false report;
and LICENSEE fails to remedy any such default, breach, or false report within
thirty (30) days after written notice thereof by STANFORD.
14.3 Surviving any termination or expiration are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of LICENSEE or STANFORD, accrued
or to accrue, because of any breach or default by the other
party; and
(c) The provisions of Section 6-6(b), Articles 7, 8, and 9 and any
other provisions that by their nature are intended to survive.
15. ASSIGNMENT
This Agreement may not be assigned except that LICENSEE may assign this
Agreement to a party which acquires all or substantially all of that portion of
LICENSEE's business to which this Agreement pertains, whether by merger, sale of
assets or otherwise.
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16. ARBITRATION
16.1 Any controversy arising under or related to this Agreement, and any
disputed claim by either party against the other under this Agreement
excluding any dispute relating to patent validity or infringement arising
under this Agreement, shall be settled by arbitration in accordance with
the Licensing Agreement Arbitration Rules of the American Arbitration
Association.
16.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and STANFORD within
thirty (30) days of such arbitration request. Judgement upon the award
rendered by the arbitrator shall be final and nonappealable and may be
entered in any court having jurisdiction thereof.
16.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court. The
Arbitrator may limit the scope, time and/or issues involved in discovery.
17. NOTICES
All notices under this Agreement shall be deemed to have been fully given when
done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
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To STANFORD:
Office of Technology Licensing
Stanford University
000 Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, XX 00000-0000
Attention: Director
To LICENSEE:
Ontogeny, Inc.
00 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: President and CEO
Either party may change its address upon written notice to the other party.
18. WAIVER
None of the terms of this Agreement can be waived except by the written consent
of the party waiving compliance.
19. APPLICABLE LAW
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
20. CONFIDENTIALITY
STANFORD agrees that reasonable effort shall be used to maintain the
confidentiality of reports or documents received from LICENSEE by STANFORD
pursuant to this Agreement, provided that such reports or documents are marked
as confidential.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
Signature /s/ Xxxxxxxxx Xx
-------------------------------------
Name Xxxxxxxxx Xx
-------------------------------------
Title Director
-------------------------------------
Date 11/10/98
-------------------------------------
ONTOGENY, INC.
Signature /s/ Xxxx Xxxxxxxxx
-------------------------------------
Name Xxxx Xxxxxxxxx
-------------------------------------
Title Vice President Business Development
-------------------------------------
Date 11/30/98
-------------------------------------
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EXHIBIT A
LICENSED MATERIALS
None as of the Effective Date
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EXHIBIT B
TECHNOLOGY
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EXHIBIT C
DILIGENCE MILESTONES
1. Observations and Reagents
a. Complete full length cDNA cloning and Q4,1999
sequencing of sprouty genes
b. Search for new sprouty genes in mouse and Q4, 1999
human genomes
c. Attempt to generate antibodies to sprouty Q4, 1999
proteins
2. Conduct expression experiments in tumor
tissues and in developing and adult organ
systems Q4, 2000
3. Conduct mechanism of action studies including
establishing FGF-based cell culture assays Q4,2001
4. Using functional assays define appropriate
screens to find small molecules, antibodies or
other proteins which interact with the sprouty
pathway Q4, 2003
5. Define clinical candidate Q4, 2005
6. File IND or other initial regulatory filing Q4, 2007
STANFORD and LICENSEE agree to discuss potential updates to the above milestones
if indicated.
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