Exhibit 10.10
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TECHNOLOGY LICENSE AGREEMENT
AGREEMENT, dated as of February 1, 1995, by and between ONCOR, INC.,
a Maryland corporation ("Oncor"), with its principal business address at 000
Xxxxx Xxxxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000 and ONCORPHARM, INC., a Delaware
corporation ("OncorPharm"), with its principal business address at 000 Xxxxx
Xxxxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000.
WHEREAS, Oncor develops and markets genetic test systems and related
products for use in cancer and other genetic disease management;
WHEREAS, Oncor has and will continue to develop or license certain
human genome technologies for testing, detection and analysis of
cancer-predisposing genes, for the genetic assessment of risk of an individual
to cancer and for testing and analysis for the purposes of cancer management;
WHEREAS, OncorPharm is a therapeutics company which intends to
develop and commercialize therapeutics for the treatment of cancer and other
human diseases;
WHEREAS, OncorPharm desires an exclusive license to Oncor's
technologies for use in the field of development and commercialization of
therapeutics for cancer and other human diseases, and Oncor is willing to grant
such a license to OncorPharm;
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WHEREAS, OncorPharm may, in the course of the development and
commercialization of its products, discover, invent, develop or otherwise
acquire or license technologies which could be of use and application in Oncor's
business; and
WHEREAS, Oncor desires an exclusive license to OncorPharm's
Technologies in the field of diagnostic products, and OncorPharm is willing to
grant such licenses to Oncor.
NOW THEREFORE, for good and valuable consideration, receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Definitions.
(a) "Additional Oncor Technology" shall mean any and all
Inventions, Know-How or Improvements which during the Term of this Agreement are
either discovered, invented, developed or otherwise acquired by Oncor or
licensed to Oncor with an express right to sublicense, which can or could
potentially be used within the OncorPharm Field (defined below).
(b) "Commercial Terms" for the purposes of this Agreement
shall mean the following terms for a license: (i) royalty rates and/or other
payment terms and (ii) commitments to diligently develop and commercialize the
licensed technology.
(c) "Improvements" shall mean improvement upon any Invention
or Know-How licensed under this Agreement.
(d) "Invention(s)" shall mean any new and useful discovery or
invention first conceived or first actually reduced to practice by one of the
parties to this Agreement. For purposes of this Agreement the terms "first
conceived" and "first
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actually reduced to practice" for any invention shall be governed by the law of
the United States of America. Invention(s) shall include discoveries and
inventions which are not patentable or patented.
(e) "Net Sales" shall mean gross revenues and fees due to a
party or an approved sublicensee, from the sale of a product which is based in
whole or in part on technology licensed hereunder, less any allowances actually
made and taken for returns, refunds or recalls; trade discounts actually allowed
in amounts and for purposes customary in the trade; an allowance for actual bad
debts, not to exceed six percent (6%) of gross revenues and fees; sales, use,
value-added and similar taxes and duties and similar governmental assessments;
transportation, packing and shipping insurance actually paid.
(f) "Know-How" shall mean all discoveries, works of
authorship, trade secrets, information, experience, data (including without
limitation preclinical and clinical test data), formulas, algorithms, computer
programs, technology, know-how, designs, methods, processes, procedures and
results.
(g) "Oncor Field" shall mean research, development, use and
commercial exploitation in the field of genetic test systems and related
products.
(h) "OncorPharm Field" shall mean the development and
commercialization of prophylactics and therapeutics for cancer and/or other
human diseases, including but not limited to gene repair and gene-based drug
delivery methods of treatment.
(i) "Oncor Product" shall mean any genetic test system or
related product for cancer and/or other human diseases made commercially
available by Oncor (including for research
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purposes only), including but not limited to probes, probe kits
and reagents.
(j) "OncorPharm Product" shall mean any prophylactic or
therapeutic product for cancer and/or other human diseases made commercially
available by OncorPharm (including for research purposes only), including but
not limited to any gene repair or gene-based drug delivery method of treatment.
(k) "Oncor Technology" shall mean any and all Inventions and
Know-How existing at the date hereof which are either owned by Oncor or licensed
to Oncor by a third party with an express right to sublicense, which can or
could potentially be used within the OncorPharm Field.
(l) "OncorPharm Technology" shall mean any and all Inventions,
Know-How and Improvements, which during the Term of this Agreement are either
discovered, invented, developed or otherwise acquired by OncorPharm or licensed
to OncorPharm with an express right to sublicense, which can be or could
potentially be used in the Oncor Field.
(m) "Patents" shall mean all United States of America and
foreign patent applications, including any addition, continuation,
continuation-in-part or division thereof or any substitute application therefor;
any patent issued with respect to such patent application, any reissue or
extension of such patent and any confirmation patent or registration patent or
United States and foreign patent or inventor's certificate.
(n) "Proprietary Rights" shall mean any and all Patents,
copyrights, trademarks, service marks, trade secret
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rights and similar rights owned by or licensed to a party to this Agreement.
(o) "Tangible Manifestations" shall mean and include
documents, drawings, specifications, scientific notebooks, processes,
formulations, protocols, devices and biological and chemical materials.
(p) "Technology" shall mean, collectively and individually,
Inventions, Know-how and Improvements
2. Grant.
(a) Subject to all of the terms and conditions of this
Agreement, Oncor hereby grants to OncorPharm an exclusive, worldwide license to
use the Oncor Technology within the OncorPharm Field to develop, make, have
made, use, market and sell any of the OncorPharm Products. The parties hereby
agree that OncorPharm's exclusive license to the Oncor Technology is subject to
the following:
(i) Oncor's continuing right to use the Oncor Technology
for internal, non-commercial research and development purposes
within or outside the OncorPharm Field; and
(ii) Oncor's continuing right to use the Oncor
Technology to develop, make, have made, use, market and sell Oncor
Products.
(b) Subject to all of the terms and conditions of this
Agreement, Oncor also hereby grants to OncorPharm an exclusive, worldwide
license to use any Additional Oncor Technology within the OncorPharm Field to
develop, make, have
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made, use, market and sell OncorPharm Products. The parties hereby agree that
the foregoing exclusive license to any Additional Oncor Technology is subject to
the following:
(i) The parties agreeing, on a case-by-case basis in
accordance with Section 6 hereof, mutually acceptable Commercial
Terms for such license (provided, however, that failure to reach
agreement upon Commercial Terms for any given Additional Oncor
Technology shall not affect OncorPharm's license to any other
Additional Oncor Technology);
(ii) Oncor's right to use the Additional Oncor
Technology for internal, non-commercial research and development
purposes within or outside the OncorPharm Field; and
(iii) Oncor's right to use the Additional Oncor
Technology to develop, make, have made, use, market and sell Oncor
Products.
(c) Subject to all of the terms and conditions of this
Agreement, OncorPharm hereby grants to Oncor an exclusive, worldwide license to
use any OncorPharm Technology within the Oncor Field to develop, make, have
made, use, market and sell Oncor Products. The parties hereby agree that the
foregoing exclusive license to OncorPharm Technology is subject to the
following:
(i) The parties agreeing, on a case-by-case basis in
accordance with Section 6 hereof, mutually acceptable Commercial
Terms for such license (provided, however, that failure to reach
agreement upon Commercial Terms for any given OncorPharm Technology
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shall not affect Oncor's license to any other OncorPharm
Technology);
(ii) OncorPharm's right to use the OncorPharm Technology
for internal, non-commercial research and development purposes
within or outside the Oncor Field; and
(iii) OncorPharm's right to use the OncorPharm
Technology to develop, make, have made, use, market and sell
OncorPharm Products.
(d) Oncor retains all rights in relation to the Oncor
Technology and the Additional Oncor Technology and OncorPharm retains all rights
in relation to the OncorPharm Technology, other than those rights granted under
this Section 2.
3. Rights to Sublicense.
Neither party shall have the right to grant sublicenses to
third parties of any rights licensed to it pursuant to the terms of this
Agreement, except with the prior written approval of the other party, which
approval shall not be unreasonably withheld; provided that in each case the
parties shall agree upon mutually acceptable Commercial Terms for such
sublicense and the party granting the sublicense to the third party shall remain
responsible and liable for the performance of all of such party's obligations
hereunder.
4. Royalties and Fees for Oncor Technology.
(a) On a semi-annual basis, OncorPharm shall pay Oncor, in
respect of each OncorPharm Product, an amount equal to * of that OncorPharm
Product
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during the prior six month period, subject to the following adjustments:
(i) in the event that the OncorPharm Product is based in
whole or in part on Oncor Technology which is licensed by Oncor and
sublicensed to OncorPharm hereunder, OncorPharm shall pay to Oncor
the greater of (A) * of the OncorPharm Product and (B) the amount
of any royalties or fees which Oncor is obligated to pay to the
licensor(s) of such Oncor Technology (the "Third Party Amount")
plus * of the OncorPharm Product;
(ii) in the event that any of the OncorPharm Products
are based in part on technologies licensed directly to OncorPharm by
third parties, then the amount payable to Oncor after the
adjustments set forth in (i) above shall be reduced by the amounts
due to such third parties during the applicable six month period,
but in no event will the payments to Oncor be less than either (A)
the Third Party Amount plus * of the OncorPharm Product or (B) *of
the OncorPharm Product.
(b) The semi-annual periods shall run from January 1 to June
30 and from July 1 to December 31 each year. The payment due to Oncor shall be
made on or before the 60th day after the end of the applicable six month period.
The final payment under this Agreement shall be due on or before the 60th day
after the date of termination of this Agreement. On the date such payments are
due, OncorPharm shall also deliver a written report to Oncor of the amount of
Net Sales for each OncorPharm Product during the applicable period and the
result from the Calculation.
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5. Oncor Technology Transfer and Further Research and Development.
(a) As soon as reasonably practicable after the effective date
of this Agreement, Oncor agrees that it shall disclose and make available to
OncorPharm through their respective Coordinators (defined in Section 6(b)
below), all Oncor Technology including all Tangible Manifestations thereof.
Oncor and its Coordinator shall be responsible for ensuring that sufficient
information and assistance is provided by Oncor and its employees and
consultants to ensure that OncorPharm has a full and complete understanding and
sufficient information in relation to the Oncor Technology.
(b) OncorPharm hereby agrees that it shall use its best
efforts to research, develop and commercialize OncorPharm Products based on the
Oncor Technology, using the highest standards of conduct and with the object of
commercializing OncorPharm Products at the earliest possible time, taking into
consideration factors such as the availability of suitable financing, regulatory
compliance and technological restraints. If at any point during the term of this
Agreement Oncor believes that OncorPharm is not using its best efforts in
accordance with this Section 5(b) it may submit a notice to OncorPharm to such
effect. OncorPharm shall then have 60 days in which to produce a detailed
Development Plan for OncorPharm Products and to deliver the same to Oncor. The
parties shall then negotiate in good faith and agree upon the terms of the
Development Plan which OncorPharm will thereafter have to comply with in order
to avoid being in breach of its obligation to use best efforts under this
Section 5(b). If the parties are unable to reach agreement as to a Development
Plan or OncorPharm breaches the terms of such Development Plan, there shall be a
deemed material breach of this Agreement by OncorPharm and Oncor
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may enforce its rights to terminate the license to the Technology in question or
terminate the whole Agreement, in accordance with the provisions of Section 14
hereof.
6. Additional Oncor Technology and OncorPharm Technology Transfer.
(a) For the duration of this Agreement, the parties hereby
agree that Oncor shall promptly disclose Additional Oncor Technology to
OncorPharm and OncorPharm shall promptly disclose OncorPharm Technology to
Oncor, in accordance
with the terms of this Section 6.
(b) Each party shall appoint a representative who shall have
primary responsibility for, inter alia, coordinating the transfer of technology
between the parties in accordance with the terms of this Agreement (each such
representative referred to herein as a "Coordinator"). The parties may change
their respective Coordinator from time to time, provided that they give written
notice of such change to the other party's Coordinator. Oncor hereby appoints
Xxxxxx Xxxxxx, Ph.D. as its initial Coordinator and OncorPharm appoints Xxx
Xxxxxx, Ph.D. as its initial Coordinator.
(c) Once Additional Oncor Technology or OncorPharm Technology
has been sufficiently developed such that it is in a form which can be safely
and readily used by the other party, the nature of such Additional Oncor
Technology shall be communicated internally within Oncor to Oncor's Coordinator
and the nature of such OncorPharm Technology shall be communicated internally
within OncorPharm to OncorPharm's Coordinator. The Coordinator shall then
arrange for the preparation of a written summary of such Additional Oncor
Technology or OncorPharm
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Technology as applicable, which shall be promptly delivered to the Coordinator
of the other party in the form attached hereto as Exhibit A (the "Disclosure
Statement"). The Additional Oncor Technology or OncorPharm Technology disclosed
in the Disclosure Statement shall not be disclosed or made available to any
third party until the procedures set forth in this Section 6 have been
completed, except that Oncor may make prior disclosure or license such
Additional Oncor Technology if it is required to do so pursuant to the terms of
an agreement existing on the date hereof between Oncor and such third party.
(d) Upon receipt of a Disclosure Statement, the Coordinators
of each party shall then enter into discussions, in consultation with the
management of their respective company, to agree upon the Commercial Terms upon
which such Additional Oncor Technology or OncorPharm Technology shall be
licensed pursuant to the terms of this Agreement. Such discussions and
Commercial Terms shall be based upon the guidelines set forth in Exhibit B
attached hereto.
(e) If the Coordinators reach agreement over the Commercial
Terms in relation to such Additional Oncor Technology or OncorPharm Technology,
then each of the Coordinators shall execute the Disclosure Statement in
duplicate (bearing the agreed commercial terms) to indicate acceptance of the
terms set forth in the Disclosure Statement. The parties hereby confirm that
their respective Coordinator has full authority to execute such Disclosure
Statement on their behalf and that the other party may rely on Disclosure
Statements executed by such Coordinator which shall be binding upon the party
represented by such Coordinator. Each of the Coordinators shall retain one of
the duplicate originals of each Disclosure Statement and shall maintain a record
of each and every Disclosure Statement. Each Disclosure
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Statement shall form a part of and be incorporated into the terms of this
Agreement.
(f) In the event that the Coordinators cannot reach agreement
as to the Commercial Terms upon which such Additional Oncor Technology or
OncorPharm Technology shall be licensed, the determination of those Commercial
Terms shall first be submitted to the Chief Executive Officers of both parties
for resolution. In the event that the Chief Executive Officers fail to reach
agreement, the determination of the Commercial Terms shall be submitted to an
independent arbitrator in accordance with Section 16 hereof.
(g) Once a Disclosure Statement has been formally accepted by
each Coordinator in accordance with this Section 6, the Coordinator of the party
licensing the technology shall arrange for the preparation and delivery of
Tangible Manifestations of the licensed technology to the extent necessary to
provide the other party with sufficient information about such technology. The
parties respective employees and consultants may correspond and consult with the
employees and consultants of the other party with regard to the Additional Oncor
Technology or OncorPharm Technology disclosed in the Disclosure Statement,
provided that all such communications and consultations (i) are on a
confidential basis, (ii) are kept to the minimum necessary to permit
understanding of the Additional Oncor Technology or OncorPharm Technology, and
(iii) are made at reasonable times and do not unduly interfere with the
activities of the employee or consultant receiving the communication or consult.
7. Proprietary Rights.
(a) During the term of this Agreement, Oncor in relation to
the Oncor Technology and Additional Oncor Technology,
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and OncorPharm in relation to the OncorPharm Technology, will retain the primary
right and discretion to apply for, prosecute, maintain, enforce and defend all
Proprietary Rights therein; provided that, the Coordinators shall keep each
other reasonably informed and appraised of the status of Proprietary Rights in
relation to the Oncor Technology, the Additional Oncor Technology and the
OncorPharm Technology and shall give reasonable consideration to any suggestions
or recommendations of the other Coordinator concerning the preparation, filing,
prosecution, maintenance and defense thereof.
(b) If either party elects during the Term of this Agreement
not to prepare and file patent applications in respect of any potentially
patentable Invention owned by it, such party's Coordinator shall notify the
other party's Coordinator in writing on a confidential basis of such election,
and the other party will then have the right, but not the obligation, for a
period of thirty (30) days from the date of receipt of the notice, to assume
responsibility for preparation and filing of an appropriate patent application
covering such Invention. During said thirty (30) day period neither party shall
make any non-confidential disclosure or non-confidential use of the said
Invention. In the event that the Invention in question is jointly owned with one
or more third parties, the other party shall have the right, but not the
obligation, of assuming the first party's responsibilities for preparation and
filing of an appropriate patent application for such Invention, subject to any
arrangements agreed with the third party joint owner(s) of the Invention.
(c) If either party elects during the Term of this Agreement
to allow any Patent or patent application covering an Invention within the Oncor
Technology, the Additional Oncor Technology or the OncorPharm Technology to
lapse or become
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abandoned without first having filed a substitute, such party's Coordinator
shall notify the other party's Coordinator of such election at least thirty (30)
days prior to the date upon which such Patent or patent application shall lapse
or become abandoned, and the other party shall thereupon have the right, but not
the obligation, to assume responsibility for the prosecution, maintenance and
defense thereof. In the event that the Patent of patent application in question
is jointly owned with one or more third parties, the other party shall have the
right, but not the obligation, of assuming the first party's responsibilities
for the prosecution, maintenance and defense thereof, subject to any
arrangements agreed with the third party joint owner(s) of the Patent or patent
application. If a party elects to assume responsibility for any Patent or patent
application pursuant to this Section 7(c), then such party may become the owner
of all of the other party's rights in such Patent or patent application and may
require the other party to assign all of its right, title and interest to such
Patent or patent application to such party.
(d) Each party shall use reasonable efforts to cooperate with
the other in connection with the preparation, filing, prosecution, maintenance
and defense of the Proprietary Rights of the other relating to the Oncor
Technology, the Additional Oncor Technology or the OncorPharm Technology. The
party that is primarily responsible for preparation, filing, prosecution,
maintenance and defense of a given Proprietary Right shall bear all expenses
associated therewith and shall reimburse the reasonable out-of-pocket expenses
incurred by the other party in cooperating therewith.
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8. Enforcement.
(a) Each party will notify the other promptly in writing if it
discovers any infringement by a third party of any of the Proprietary Rights to
either the Oncor Technology, the Additional Oncor Technology or the OncorPharm
Technology.
(b) Oncor shall have the sole right in relation to Oncor
Technology and Additional Oncor Technology, and OncorPharm shall the sole right
in relation to OncorPharm Technology, to enforce any Proprietary Right to such
technology against any infringer or alleged infringer thereof, but shall at all
times keep the other party's Coordinator informed as to the status thereof.
Oncor in respect of Oncor Technology and Additional Oncor Technology, and
OncorPharm in respect of OncorPharm Technology, may institute suit against any
such infringer or alleged infringer and control, settle, and defend such suit in
a manner consistent with the terms and provisions hereof and recover, for its
account, any damages, awards or settlements resulting therefrom. This right to
xxx for infringement shall not be used in an arbitrary or capricious manner. The
party that has the right to institute suit against an infringer shall bear all
expenses incurred in connection therewith. The other party shall reasonably
cooperate with any such litigation at the expense of the party instituting the
litigation.
(c) If a party elects not to enforce any Proprietary Right it
holds in relation to either the Oncor Technology, the Additional Oncor
Technology or the OncorPharm Technology, it shall so notify the other party in
writing within sixty (60) days of receiving notice that an infringement exists,
and the other party may, in its sole judgement and at its own expense, do so and
control, settle, and defend such suit in a
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manner consistent with the terms and provisions hereof, and recover, for its own
account, any damages, awards or settlements resulting therefrom. The party that
holds such Proprietary Right shall reasonably cooperate with such litigation at
the expense of the party instituting the litigation.
9. Publications.
(a) Neither party shall make any publication, public
announcement, press release or other disclosure which incorporates or makes
reference to the other party's Technology, either directly or indirectly, except
as may be legally required, without first obtaining the approval of the other
party upon the nature and text of such announcement or disclosure, which
approval shall not be unreasonably withheld. This restriction does not apply to
the dissemination of information that has previously been approved and released
in accordance with this Section 9(a). Each party shall use its best efforts to
inform the other party of any proposed announcement or disclosure in sufficient
time prior to public release, and shall use its best efforts to provide the
other party with a written copy thereof, in order to allow the other party to
comment upon such announcement or disclosure.
(b) Neither party may submit to a publisher any manuscript or
abstract containing information relating to the other party's Technology for the
purposes of publication, without first obtaining the written consent of the
other party, which consent shall not be unreasonably withheld. If the other
party, consents to such submission, then simultaneously with submission to the
publisher, copies of the manuscript or abstract shall also be sent to the other
party.
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10. Confidentiality.
(a) Oncor and OncorPharm each agree that all Technology, as
well as other business, marketing and financial information of the other party
which is not generally known to the public and which the other party treats as
confidential (the "Proprietary Information") are the confidential property of
the disclosing party. Except as expressly and unambiguously authorized
hereunder, each party shall hold in confidence and not disclose or use any
Proprietary Information received from the other party and shall similarly
require its employees and contractors to sign written agreements with
confidentiality and non-use provisions substantially similar to this Section 10.
The receiving party shall not be obligated under this Section 10 with respect to
information the receiving party can document:
(i) is or has become published or otherwise readily
available to the public without restriction through no fault of the
receiving party or its employees or agents; or
(ii) is received without restriction from a third party
lawfully in possession of such information and lawfully empowered to
disclose such information; or
(iii) was rightfully in the possession of the receiving
party without restriction prior to its disclosure by the disclosing
party; or
(iv) is independently developed by the receiving party
by employees without access to the other party's similar Proprietary
Information.
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(b) The four above exceptions to the confidentiality
provisions of this Agreement do not, and should not be interpreted to, confer
any license or other rights to the receiving party in any of the information
referred to in said four exceptions. Nothing herein shall permit the receiving
party to disclose or use, except as explicitly permitted elsewhere in this
Agreement, Proprietary Information of the disclosing party and then only on an
"as-needed" basis for purposes of this Agreement. Each party shall notify the
other party promptly upon discovery of any unauthorized use of disclosure of the
other's Proprietary Information. The obligations of this Section 10 shall
survive any termination or expiration of the Agreement for a period of five (5)
years after the disclosure of any such Proprietary Information.
(c) Upon any termination of this Agreement, each party will
promptly return or destroy any Proprietary Information of the other and any
copies, extracts and derivatives thereof, except as otherwise set forth in this
Agreement.
(d) Each party acknowledges that its breach of this Section 10
would cause irreparable injury to the other for which monetary damages are not
an adequate remedy. Accordingly, a party will be entitled to seek injunctions
and other equitable remedies in the event of such a breach by the other.
(e) In the event that either of the parties receives a request
or demand to disclose all or any part of the Proprietary Information or the
existence of this Agreement under the terms of a subpoena or order issued by a
court of competent jurisdiction or otherwise, the recipient party agrees to (i)
immediately notify the other party of the existence, terms and circumstances
surrounding such a request so that the other party may seek a protective order
or other appropriate relief or remedy
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or waive compliance with this Section 10, (ii) consult with the other party on
the advisability of taking steps to resist or narrow such request, and (iii) if
disclosure is required, disclose such information and, subject to reimbursement
by the other party of reasonable expenses, exercise best efforts to obtain an
order or other reliable assurance that confidential treatment will be accorded
to such disclosed information.
11. Representations, warranties and covenants of Oncor.
Oncor hereby represents, warrants and covenants to OncorPharm
as follows:
(a) Except to the extent that Oncor has licensed Oncor
Technology and may license Additional Oncor Technology from third parties, Oncor
is the legal and equitable owner of the Oncor Technology at the date hereof and
shall be the legal and equitable owner of the Additional Oncor Technology
licensed to OncorPharm pursuant to the terms of this Agreement.
(b) As of the date hereof, all licenses from third parties to
Oncor in respect of parts of the Oncor Technology are in full force and effect
and Oncor is in compliance in all material respects with all of its material
obligations thereunder; Oncor has heretofore delivered to OncorPharm a true and
complete copy of each of such licenses and there have been no amendments or
modifications thereof, otherwise than has been disclosed to OncorPharm.
(c) Oncor has no knowledge without independent investigation
as of the date of this Agreement (i) of any material information, not heretofore
disclosed to OncorPharm, relating to the potential safety or efficacy of the
Oncor Technology, or (ii) that the actual and proposed use of the Oncor
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Technology licensed or sublicensed to OncorPharm hereunder, will infringe upon
any rights of any third party.
(d) During the Term of this Agreement Oncor shall promptly
disclose to OncorPharm any material information, not disclosed to OncorPharm,
relating to the potential safety or efficacy of the Oncor Technology or
Additional Oncor Technology.
(e) Oncor has the corporate power and authority to execute and
deliver this Agreement and perform its obligations hereunder, and the execution,
delivery and performance of this Agreement have been duly and validly authorized
and upon execution and delivery by Oncor will constitute a valid and binding
agreement of Oncor enforceable against it in accordance with its terms.
12. Representations, warranties and covenants of
OncorPharm.
OncorPharm hereby represents, warrants and covenants to Oncor,
both at the date hereof and at all times during the Term of this Agreement, as
follows:
(a) Except to the extent that OncorPharm may license
OncorPharm Technology from third parties, OncorPharm is or shall be the legal
and equitable owner of the OncorPharm Technology licensed to Oncor, in
accordance with the terms of this Agreement.
(b) OncorPharm shall promptly disclose to Oncor any material
information, not previously disclosed to Oncor, relating to the potential safety
or efficacy of the Oncor Technology, the Additional Oncor Technology or the
OncorPharm
Technology.
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(c) OncorPharm has the corporate power and authority to
execute and deliver this Agreement and perform its obligations hereunder, and
the execution, delivery and performance of this Agreement have been duly and
validly authorized and upon execution and delivery by OncorPharm will constitute
a valid and binding agreement of OncorPharm enforceable against it in accordance
with its terms.
13. Regulatory matters.
(a) Each party agrees that its conduct in performing its
obligations under this Agreement shall conform in all material respects to all
applicable laws and regulations of the United States of America and foreign
governments (and political subdivisions thereof).
14. Term and Termination.
(a) This Agreement shall be effective as of the date first
written above and remain in effect for a period of five (5) years or until
earlier terminated by mutual agreement of the parties hereto (the "Initial
Term"). The Initial Term of this Agreement is automatically renewable for
additional one (1) year periods unless either party hereto notifies the other
party of its desire to terminate this Agreement at least sixty (60) days prior
to the end of the Initial Term of this Agreement or any extension thereof (the
Initial Term and any extensions thereof collectively, the "Term"). This
Agreement shall automatically terminate if either party shall become bankrupt or
insolvent, or if the business of either party shall be placed in the hands of a
receiver, assignee or trustee for the benefit of creditors, whether voluntary or
involuntary.
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(b) Upon any breach or default of any of the representations,
warranties or covenants set forth in this Agreement, the breaching or defaulting
party shall be given notice of such breach or default in writing and a period of
ninety (90) days after receipt of such notice to correct the breach or default.
If (i) the default or breach (A) is material to this Agreement and (B) is not
corrected within said ninety (90) day period and the breaching or defaulting
party has not taken reasonable steps to cure the same, and (ii) the party not in
breach or default has fully complied with all of its obligations under this
Agreement, the party not in breach or default shall have the right to terminate
the license to the Technology in question or terminate the whole Agreement.
15. Effects of Termination.
(a) In the event of a termination of this Agreement for any
reason whatsoever:
(i) OncorPharm shall have the right and license to
continue to use the Oncor Technology and/or Additional Oncor
Technology previously licensed to it hereunder, upon the same terms,
until such time as OncorPharm ceases to market the OncorPharm
Product which uses or incorporates such Technology; and
(ii) Oncor shall have the right and license to continue
to use the OncorPharm Technology previously licensed to it
hereunder, upon the same terms, until such time as Oncor ceases to
market the Oncor Product which uses or incorporates such Technology.
(b) Sections 4, 10 and 16, shall survive termination.
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16. Arbitration.
In the event of any dispute arising in relation to any aspect of
this Agreement, and the Coordinators being unable to reach a settlement of such
a dispute, then the determination of such dispute shall first be submitted to
the Chief Executive Officers of both parties for resolution. In the event that
the Chief Executive Officers fail to reach agreement, then such dispute shall be
submitted to The American Arbitration Association in Washington, D.C. for final
and binding resolution of such dispute. The arbitration shall be conducted in
accordance with the then prevailing commercial arbitration rules of The American
Arbitration Association. The parties agree to abide by all decisions and any
award rendered in such proceedings. Such decisions and awards rendered by the
arbitrator shall be final and conclusive and may be entered in any court having
competent jurisdiction as a basis of judgment and of orders for enforcement
thereof. All such controversies, claims or disputes in connection with this
Agreement shall be settled in this manner in lieu of any action at law or
equity. The parties shall keep confidential the existence and determination of
any claim, controversy or dispute between them in connection with this
Agreement, unless otherwise required by law.
17. Miscellaneous.
(a) Notices under this Agreement shall be sufficient only if
personally delivered, delivered by a major commercial rapid delivery courier
service, mailed by certified or registered mail, return receipt requested,
postage prepaid, or sent via facsimile to a party at its address specified
below, or such other address as is provided by the other party in accordance
with this Section.
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If to Oncor:
Oncor, Inc.
000 Xxxxx Xxxxxxx
Xxxxxxxxxxxx, XX 00000
For the attention of: Mr. Xxxxxxx Xxxxxx
Fax: 000-000-0000
Tel: 000-000-0000
If to OncorPharm:
000 Xxxxx Xxxxxxx
Xxxxxxxxxxxx, XX 00000
For the attention of: Xx. Xxxxxxx X. Xxxx
Fax: 000-000-0000
Tel: 000-000-0000
(b) This Agreement is executed with the understanding that it,
together with any agreed and accepted Disclosure Statements, embodies the entire
agreement with respect to the subject matter hereof between the parties, that
this Agreement supersedes all previous agreements and arrangements with respect
to the subject matter hereof and that there are no prior representations,
warranties or agreements relating thereto. This Agreement may be modified only
by a duly executed writing executed on behalf of the parties hereto.
(c) A delay or failure to exercise any right shall not be
deemed to be a waiver. Any waiver of any right or condition shall not apply to
any other time or right.
(d) This Agreement does not create any agency relationship
between either of the parties and neither party shall hold itself out as being
an agent for the other.
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(e) Neither party shall be liable for failures and delays in
performance due to matters and circumstances beyond its reasonable control.
(f) The prevailing party in any legal action brought to
enforce this Agreement shall be entitled to legal fees and costs. If any
provision of this Agreement is held by a court of competent jurisdiction to be
invalid, illegal or unenforceable, that provision shall be limited or eliminated
to the minimum extent necessary so that this Agreement shall otherwise remain in
full force and effect and enforceable.
(g) This Agreement shall be governed and construed in
accordance with the laws of the State of Maryland and the United States without
regard to the conflicts of laws provisions thereof.
(h) This Agreement may be executed simultaneously in one or
more counterparts, each of which will be deemed an original.
(i) This Agreement and the rights hereunder may not be
assigned without the prior written consent of each party and shall be binding
upon and inure to the benefit of and be enforceable by any permitted successors
and assigns of the parties hereto.
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IN WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement as of the date set first set forth
above.
ONCOR, INC.,
a Maryland corporation
By: /s/ Xxxxxxx Xxxxxx
----------------------------
Name: Mr. Xxxxxxx Xxxxxx
Title: Chairman & CEO
ONCORPHARM, INC.,
a Delaware corporation
By: /s/ Xxxxxxx X. Xxxx, Xx.
----------------------------
Name: Xx. Xxxxxxx X. Xxxx, Xx.
Title: President & CEO
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Exhibit A
Form of Disclosure Statement
CONFIDENTIAL
To: [Coordinator of other party]
From:
Pursuant to the terms of that certain Technology License Agreement
(the "License Agreement") dated as of February 1, 1995, by and between Oncor,
Inc. and OncorPharm, Inc., I hereby give you notice of the following:
[insert summary description of either Additional Oncor Technology or OncorPharm
Technology, as appropriate]
Signed: ________________________________
------------------------------------------------------------------------------
ACCEPTED:
Terms for inclusion of the above within the License Agreement:
Signed:____________________ Signed:_______________________
Name:____________________ Name:_______________________
Title:____________________ Title:_______________________
Date:____________________ Date:_______________________
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Exhibit B
Guidelines for Commercial Terms
The Parties agree that in determining the Commercial Terms for a
license from OncorPharm to Oncor in respect of Additional Oncor Technology, or
from Oncor to OncorPharm in respect of OncorPharm Technology, the following
factors shall be considered:
For Additional Oncor Technology
Royalty rates and/or other payment arrangements shall be determined
by taking into consideration the following factors:
*
The parties shall also agree upon commitments from OncorPharm to
diligently develop and commercialize the Additional Oncor Technology within the
OncorPharm Field. Such commitments may include any or all of the following or
other commitments or arrangements as the parties shall mutually agree:
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* CONFIDENTIAL TREATMENT REQUESTED
EXECUTION COPY
*
For OncorPharm Technology.
Royalty rates and/or other payment arrangements shall be determined
by taking into consideration the following factors:
*
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* CONFIDENTIAL TREATMENT REQUESTED
EXECUTION COPY
*
The parties shall also agree upon commitments from Oncor to
diligently develop and commercialize the OncorPharm Technology within the Oncor
Field. Such commitments may include any or all of the following or other
commitments or arrangements as the parties shall mutually agree:
*
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* CONFIDENTIAL TREATMENT REQUESTED
