1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Xxxx"). This Exhibit has been filed separately with the
Secretary of the Commission without the Xxxx pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.19
EXCLUSIVE LICENSE AGREEMENT
BETWEEN
THE UNIVERSITY OF OREGON
AND
AURORA BIOSCIENCES CORPORATION
FOR
LONG WAVELENGTH ENGINEERED FLUORESCENT PROTEINS
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LICENSE AGREEMENT
This Agreement is made this 4th day of October, 1996, by and between the State
of Oregon, acting by and through the State Board of Higher Education on behalf
of the University of Oregon, an institute of higher education located in
Eugene, Oregon ("OREGON"), and Aurora Biosciences Corporation ("LICENSEE"), a
Delaware corporation with principal offices at 00000 Xxxxx Xxxxxx Xxxxx Xxxx,
Xx Xxxxx, XX 00000 to license certain technology.
RECITALS
WHEREAS, OREGON and LICENSEE seek commercialization of certain inventions,
technology, and intellectual property owned by OREGON and LICENSEE which form
the basis of U.S. Patent Application; *** and
WHEREAS, LICENSEE is well-positioned in the Biotechnology industry and intends
to use its best efforts to utilize the licensed technology; and
WHEREAS, UNIVERSITY wishes to grant LICENSEE and LICENSEE wishes to accept from
UNIVERSITY a license under any and all inventions embodied in the patent
application(s).
The parties do agree as follows:
1.0 DEFINITIONS
1.1 The term "INVENTIONS" means the novel useful ideas, reduced to
practice, which form the basis of U.S. Patent Application ***, filed
on ***, any follow-on patent applications, patents issuing worldwide,
and patents claiming priority based thereon.
1.2 "Licensed Product" means ***
1.3 The term "Field of Use" means ***
*** CONFIDENTIAL TREATMENT REQUESTED
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applications, domestically and internationally, to which the
INVENTIONS may be put.
1.5 "Affiliate" or "Affiliated Company" means any corporation or
other business entity controlled by or in common control of LICENSEE.
Control as used herein means the ownership directly or indirectly of
fifty percent (50%) or the maximum interest permitted by local law of
the voting stock of the corporation or fifty percent (50%) or greater
interest in the income of such corporation or other business entity or
the ability otherwise of LICENSEE to secure that the affairs of such
corporation or other business entity are managed in accordance with
LICENSEE's wishes.
2.0 LICENSE
2.1 Grant. OREGON grants ***
2.2 Royalties. Royalties shall be payable as follows:
2.2.1 An up-front fee of *** .
Payments due under this paragraph shall be paid to OREGON in
addition to any other royalty payments arising under this
Agreement and may not be credited toward, or made in lieu of,
any other such payments.
2.2.2 An *** until
*** the first such payment being due on
*** . Upon *** , an
*** of *** payable ***
2.2.3 Upon *** LICENSEE grants OREGON the rights to
*** shares of common stock in LICENSEE. LICENSEE will issue these shares at
OREGON's direction to OREGON's
*** CONFIDENTIAL TREATMENT REQUESTED
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institution foundation for the benefit of OREGON, or to such other person or
entity as OREGON may designate. LICENSEE may require OREGON's designee to sign
such representations as will demonstrate compliance with securities laws.
2.3 Due Diligence. LICENSEE shall use reasonable efforts to bring
Licensed Products to market or provide services using the Licensed
Products in an expedient and timely fashion (in the context of
necessary regulatory approvals) or to sublicense entities which will
use their reasonable efforts to bring Licensed Products to market on
the same timely basis, and to provide Licensed Products in quantities
sufficient to meet the market demands therefor.
2.3.1 At least annually, beginning one year after the date
this Agreement is signed, LICENSEE shall report to OREGON
concerning the commercialization of Licensed Products. All
reports given by LICENSEE to OREGON shall be regarded as
Confidential Information hereunder.
2.5 Residual Rights. Notwithstanding any grant provision to the
contrary in this Agreement, OREGON retains the non-transferable right
to use the INVENTIONS for its instructional and noncommercial research
purposes.
2.6 Infringement
2.6.1 Should a third party appear to infringe any of the
intellectual property rights embodied in the INVENTIONS
licensed herein, LICENSEE shall have the right, fully at its
expense, to challenge such infringement, and may use OREGON's
name if required by applicable law, and may retain the
proceeds recovered thereby. However, that should LICENSEE fail
to challenge a commercially significant instance of alleged
infringement within six (6) months from its initial discovery
by or disclosure to LICENSEE, OREGON shall have the right to
challenge such infringement and
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retain all proceeds recovered thereby; provided further that
the parties can agree to proceed jointly against such an
infringer on terms to be negotiated.
2.6.2 Should a third party claim that any patents, know-how,
or intellectual property licensed to LICENSEE under or as a
result of the terms of this Agreement infringes its
intellectual property rights, at Licensee's request LICENSEE
and OREGON shall (i) engage in negotiations for a settlement
and license, (ii) use their best efforts to obtain for
LICENSEE all rights necessary for it to continue using the
INVENTIONS and licensed patent rights, and (iii) otherwise
assist each other in resolving reasonably any such dispute.
LICENSEE shall pay all reasonable out-of-pocket expenses
related to these endeavors including related license fees.
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2.7 Warranty Disclosure and Limitation of Liability
2.7.1 OREGON MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AND
HEREBY DISCLAIMS ALL SUCH WARRANTIES, AS TO ANY MATTER
WHATSOEVER, INCLUDING, WITHOUT LIMITATION, ANY INVENTION(S) OR
LICENSED PRODUCTS, WHETHER TANGIBLE OR INTANGIBLE, SUBJECT TO
THIS AGREEMENT AND INCLUDING THE OWNERSHIP, MERCHANTABILITY,
OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR ANY
SUCH INVENTION OR PRODUCT OR THAT THE USE OF LICENSED PRODUCT
WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER
RIGHTS. OREGON SHALL NOT BE LIABLE FOR ANY DIRECT,
CONSEQUENTIAL OR OTHER DAMAGES SUFFERED BY ANY LICENSEE,
INCLUDING SUBLICENSEE, OR ANY THIRD PARTIES TO THE EXTENT THAT
THEY RESULT FROM THE USE OF THE INVENTION AND DISCOVERY,
PROVIDED THAT THE INVENTION AND DISCOVERY WAS NOT PROVIDED TO
THE THIRD PARTY BY OREGON. NEITHER PARTY SHALL BE LIABLE TO
THE OTHER PARTY FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL OR
INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT.
2.7.2 The provisions of this paragraph shall survive the
termination of this Agreement.
2.7.3 At the time of the execution of this Agreement,
LICENSEE represents and warrants to OREGON as follows:
2.7.3.1 LICENSEE is a corporation duly organized,
validly existing and in good standing under the laws
of the State of Delaware. LICENSEE has all requisite
corporate power and authority to carry on business,
to execute and deliver this Agreement, and to perform
its obligations hereunder. The execution and
delivery of this Agreement by LICENSEE and the
consummation by it of the transactions contemplated
hereby have been duly authorized by all necessary
corporate action on the part of LICENSEE, and this
Agreement constitutes a valid and legally binding
obligation of LICENSEE enforceable against it in
accordance with its respective terms.
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2.7.4 OREGON represents and warrants that: (i)it owns all
rights, title, and interest in and to the INVENTIONS, except
as for such right, title, and interest as may be owned by
LICENSEE and the University of California, (ii) it has not
granted and during the term of this Agreement will not grant
any right or interest in any of the Licensed Products that is
inconsistent with the rights granted to LICENSEE herein; (iii)
the execution, delivery, and performance of this Agreement
have been duly authorized by all necessary corporate action on
the part of OREGON; (iv) it is the sole and exclusive owner of
all right, title, and interest therein as may be owned by
LICENSEE and the University of California; (v) it has the
right to grant the rights and licenses granted herein, and the
Licensed Products is free and clear of any lien, encumbrance,
security interest, or restriction on license; and (vi) there
are no threatened or pending actions, suits, investigations,
claims, or proceedings in any way relating to the Licensed
Products.
2.8 Indemnification and Insurance
2.8.1 LICENSEE shall indemnify and hold OREGON and its
officers, employees and agents harmless against all costs,
damages, judgments, attorney fees, license fees, settlement
costs, and other defense expenses incurred, arising out of
claims brought by third parties, including, but not limited
to, personal injury, property damage, intellectual property
infringement, dilution, or misappropriation, due to LICENSEE'S
development, manufacture, use, clinical trials, testing,
marketing or sale of Licensed Products, or sublicensing of
INVENTIONS.
2.8.2 In the event any third-party claim is made or lawsuit
is initiated, the party against whom such lawsuit is brought
or claim is made shall promptly notify the other party hereto
in writing, and shall cooperate fully in the defense of such
lawsuit.
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2.8.3 During the term of this Agreement, LICENSEE shall
maintain in effect commercial general liability insurance and
(in any period when LICENSEE is commercially transferring
Licensed Products to third parties) products liability
insurance in the combined amount of One Million Dollars
($1,000,000) per occurrence, or such greater amount as may be
usual and customary for companies selling or testing similar
products. The general liability insurance required hereunder
shall cover contractual liability and bodily injury, death and
property damage against any claims, demands, or causes of
action or damages, including reasonable attorney fees. The
products liability insurance shall cover similar claims and
forms of damage arising out of negligent design or
manufacture, including without limitation failure to warn,
deficient use instruction or any alleged defects in Licensed
Products or the use or possession of Licensed Products. The
policy(ies) shall name OREGON as a co-insured, and provide
that notice shall be given to OREGON at least thirty (30) days
prior to cancellation, non-renewal or material change in the
form of such policy(ies). If any of the required liability
insurance is arranged on a "claims made" basis, "tail"
coverage will be required at the completion of that insurance
contract for a duration of 24 months or the maximum time
period the insurer will provide if less than 24 months.
2.8.4 The provisions of this section shall survive the
termination of this Agreement.
2.9 Protection and Maintenance of Patent Rights
2.9.1 LICENSEE shall use all reasonable efforts to continue to
prosecute Patent Application ***, to file continuations-in-part
("CIP's") based upon that Application, and to pay all
maintenance fees necessary to protect the INVENTIONS where
patents have issued.
2.9.2 LICENSEE shall control the prosecution of all patent
applications related to the Inventions. OREGON may provide
the Licensee with comments on the
*** CONFIDENTIAL TREATMENT REQUESTED
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prosecution of the patent applications.
2.9.3 LICENSEE agrees to keep OREGON informed in a timely
manner of the contents, status and progress of all amended
patent applications and CIP's filed by LICENSEE. LICENSEE
agrees to notify OREGON in writing in a timely manner that it
does not desire to support the continued prosecution or
appeals or maintenance of such amended application, CIP or
patent. In the event LICENSEE declines to provide, or is
delinquent in providing, support for filing, prosecution, and
maintenance of any Patent Rights in any country other than the
U.S.A., LICENSEE forfeits its associated licensing rights and
OREGON shall have the right, but not an obligation, to file
for, prosecute and maintain such patent rights at Oregon's
expense.
2.10 Sublicenses. Any sublicenses shall not be inconsistent with the
terms of this license (including, but not limited to, OREGON's
disclaimers and rights to terminate) and in case of conflict, the
rights of OREGON as against any sublicensee shall be governed by this
license. Any sublicenses granted by LICENSEE shall survive the
expiration of this agreement and be assigned to OREGON.
2.11 Termination
2.11.1 This Agreement shall be continued on a country by
country basis, unless sooner terminated as provided in this
Section 2.11, until the last expiration date of all patents
licensed under this Agreement.
2.11.2 If LICENSEE materially breaches any term, condition or
agreement hereof, or if LICENSEE fails to pay the minimum
royalties due under clause 2.3.1, OREGON may serve written
notice of a breach upon LICENSEE and unless such breach is
fully cured within ninety (90) days from the receipt of notice
by LICENSEE, OREGON may thereupon, at its option, serve notice
of cancellation on LICENSEE, whereupon this Agreement shall
immediately terminate.
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2.11.3 Termination of this Agreement for any reason
whatsoever shall not excuse LICENSEE from paying to OREGON all
royalties earned and all patent costs incurred prior to the
date of such termination, and all royalties thus earned, but
unpaid, shall immediately become due and payable. LICENSEE may
terminate at will with respect to any country or patent with
sixty (60) days notice OREGON.
2.11.4 Upon expiration of this license or termination as
outlined in this 2.11, OREGON shall be free to license its
INVENTIONS to any other party.
3.0 MISCELLANEOUS
3.1 Merger Clause. This Agreement constitutes the entire
understanding between the parties with respect to the subject matter
within and supersedes all previous agreements, whether written or
oral, relating to the subject matter herein. Amendments to this
Agreement shall be effective only if in writing and signed by an
authorized representative of both OREGON and LICENSEE.
3.2 Assignment. This Agreement shall not be assignable by either
party without the prior written consent of the other party, except
that LICENSEE may assign this Agreement to an Affiliate or any
successor to substantially all the assets and business of LICENSEE,
whether by sale, merger or otherwise.
3.3 Relationship of the Parties. For the purposes of this Agreement,
the parties shall be deemed to be independent contractors and not
agents or employees of the other party. Neither party shall have
authority to make any representations or commitments of any kind or to
take any action which shall be binding on the other party, except as
may be explicitly provided for herein or authorized by the other party
in writing and except as required by law.
3.4 Manufacturing. LICENSEE agrees that, to the extent required
by Federal laws or regulations then in effect and
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to the extent Licensed Products are sold within the United States, if
such Licensed Products are based upon INVENTIONS developed through
research supported by a Federal Agency, such Licensed Products will be
manufactured substantially in the United States.
3.5 Exporting. LICENSEE assures OREGON it does not intend and
will not knowingly, without prior written consent and approvals (if
required) of the Office of Export Administration of the U.S.
Department of Commerce, transmit, transfer, sell, give, or deliver
directly or indirectly any INVENTIONS or Licensed Products to any
foreign government, or to any company or entity operating under the
aegis of, or on behalf of, any foreign government, or to any other
entity whose purpose is to facilitate the transfer of INVENTIONS or
Licensed Products to any foreign government, in any manner contrary to
or in violation of the Export Administration Regulations of the U.S.
Department of Commerce or the International Traffic in Arms
Regulations of the U.S. Department of Defense or the U.S. State
Department. The obligations under this clause shall survive
notwithstanding termination of this Agreement.
3.6 Effect of Waiver. No waiver of any default, condition,
provisions or breach of this Agreement shall be deemed to imply or
constitute a waiver of any other like default, condition, provision or
breach of this Agreement.
3.7 Confidential Information. To the extent permitted by law, each
party shall use the same degree of care as it employs in protecting
its own confidential information to maintain in confidence and not use
or disclose, other than for purposes in accordance with this
Agreement, all information provided by the other party that are
identified in writing as confidential and acknowledged to be
confidential, except to the extent the party receiving the information
establishes that such information or materials (a) are already in the
public domain or (b) otherwise became known to the receiving party
from a third party who has the right to disclose such information.
The foregoing obligations of the parties with respect to any
confidential information shall survive any termination of this
Agreement
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and shall continue for a period of three (3) years from the date such
confidential information was disclosed hereunder.
3.7.1 If the inventor or OREGON desires to disclose any
confidential information received from LICENSEE in
publications or presentations at scientific meetings, the
inventor or OREGON shall provide LICENSEE a copy of such
manuscript to be published or presented. Upon receipt of the
manuscript, LICENSEE shall have thirty (30) days to review and
determine whether or not to seek a patent therefor. If
LICENSEE determines that it does wish to seek a patent, it may
require delay in publication or presentation to permit filing
of the patent, provided that such delay will not exceed thirty
days after notifying OREGON of its desire to patent the
disclosed invention. LICENSEE will work with OREGON in good
faith to accommodate shorter deadlines, if needed by OREGON
and reasonably possible for LICENSEE.
3.8 Notices. All Notices under this Agreement shall be given in
writing and shall be addressed to the parties at the following
addresses:
For OREGON:
Director, Technology Transfer
1238 University of Oregon
Xxxxxx, XX 00000-0000
For LICENSEE:
Director, Business Development
00000 Xxxxx Xxxxxx Xxxxx Xxxx
Xx Xxxxx Xxxxxxxxxx
3.8.1 Notices shall be in writing and shall be deemed
delivered when received, if delivered by a courier, or
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on the second business day following mailing, if sent by
first-class certified or registered mail, postage prepaid.
3.9 Governing Law. This Agreement shall be governed by the laws
of the state of OREGON.
3.10 Use of Names. LICENSEE shall not use OREGON'S name in any
advertising, promotional or sales literature without the prior written
assent to such use by OREGON.
3.11 Severability. In the event that any provision hereof is found
to be invalid or unenforceable pursuant to a final judgment or decree,
the remainder of this Agreement shall remain valid and enforceable
according to its terms.
3.12 OREGON and LICENSEE agree that any dispute or controversy
arising out of, in relation to, or in connection with this Agreement,
or the validity, enforceability, construction, performance or breach
hereof, shall be settled by binding arbitration under the then-
current American Arbitration Association by one (1) arbitrator
appointed in accordance with such Rules. The arbitrator shall permit
such discovery as he/she deems necessary to achieve an equitable
resolution of this dispute. The decision and/or award rendered by the
abritrator shall be written, final, and non-appealable and may be
entered in any court of competent jurisdiction. The parties agree
that, any provision of applicable law notwithstanding, they will not
request, and the arbitrator shall have no authority to award, punitive
or exemplary damages against any party. The cost of any arbitration,
including administrative fees and fees of the arbitrator, shall be
shared equally by the parties. Each party shall bear the cost of its
own attorney's fees and expert fees.
3.13 NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTIAL, OR INDIRECT DAMAGES ARISING OUT OF THIS
AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
3.14 Neither party shall lose any rights hereunder or be
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liable to the other party for damages or losses (except for payment
obligations) on account of failure of performance by the defaulting
party if the failure is occasioned by war, strike, fire, Act of God
earthquake, flood, lockout, embargo, 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 or intentional conduct or misconduct of the nonperforming
party, and such party has exerted all reasonable efforts to avoid or
remedy such force majeure; provided, however, that in no event shall a
party be required to settle any labor dispute or disturbance. IN
WITNESS WHEREOF, the parties have executed this Agreement.
By:__________________________
Xxxxxxx X. Xxxx
President, CEO and Chairman
Aurora Bioscience Corporation
Date:________________________
STATE OF OREGON, ACTING BY
AND THROUGH THE OREGON STATE
BOARD OF HIGHER EDUCATION ON
BEHALF OF THE UNIVERSITY OF
OREGON
By:___________________________
Xxxxxxx Xxxxx
OSSHE Contracts Officer
Date:________________________
By:___________________________
Xxxxxxxx Xxxxx
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Vice Xxxxxxx for Research
and Graduate Education
Date:__________________________
15
