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EXHIBIT 10.10
CONFIDENTIAL TREATMENT
DATED 6 October 1994
(1) THE UNIVERSITY OF OXFORD
(2) THE MEDICAL RESEARCH COUNCIL
(3) LEUKOSITE, INC.
(4) LEUKOSITE LIMITED
AGREEMENT
For the construction and operation of a
Therapeutic Antibody Centre
within the University of Oxford
XXXXXXX, PEEL & XXXXXX
-Solicitors-
0 Xx Xxxxx' Xxxxxx XX0 0XX
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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THIS AGREEMENT dated 6 October 1994 ("the Effective Date") is made
between:
(1) THE CHANCELLOR MASTERS AND SCHOLARS OF THE UNIVERSITY OF OXFORD whose
administrative offices are at Xxxxxxxxxx Xxxxxx, Xxxxxx XX 0XX, Xxxxxxx
("the University");
(2) THE MEDICAL RESEARCH COUNCIL of 00 Xxxx Xxxxxxxx, Xxxxxx X0 X0XX,
Xxxxxxx ("the MRC");
(3) LEUKOSITE, INC., a Delaware Corporation, whose principal place of
business is at 000 Xxxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx XX 00000,
XXX ("LeukoSite (US)"); and
(4) LEUKOSITE LIMITED, an English Company which is a wholly-owned
subsidiary of Leukosite (US), and whose registered office is at 00
Xxxxxxxx Xxxxxx, Xxxxxx XX0X 0XX, Xxxxxxx ("LeukoSite (UK)".)
1 DEFINITIONS
In this Agreement, the following expressions shall have the following
meanings:
1.1 "LeukoSite" means LeukoSite (US) and LeukoSite (UK), jointly
and severally;
1.2 "the TAC" means the Therapeutic Antibody Centre which the
University intends to construct and operate an a site at the
Xxxxxxxxx Hospital, Oxford leased from The Oxford Radcliffe
Hospital Trust: set out in the First Schedule to this
Agreement for illustration purposes are a Site Location Plan
and a drawing of possible layouts for the floors of the
Centre: the primary function of the Centre will be the
production of antibodies for use in clinical research;
1.3 "the Mobilization Date" means a date notified by the
University to LeukoSite (UK), being the date on which both the
following conditions are fulfilled:
1.3.1 the University obtains such permissions and consents
as in the reasonable opinion of the University are
sufficient to enable the work of constructing the TAC
to begin on site; and
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1.3.2 the University enters into a binding agreement with
The Oxford Radcliffe Hospital Trust for the grant of
a lease of the site for the TAC to the University;
1.4 "the Research" means all research which is conducted in the
TAC by employees of the University, or under their direction
and supervision;
1.5 "Research Information" means data, formulae, process
information or other information developed in the course of
the Research;
1.6 "Research Invention" means any process, use, article of
manufacture or composition of matter conceived or first
actually or constructively reduced to practice in the course
of the Research;
1.7 "Research Material" means any material or substance which is
discovered, produced or derived in the course of the Research;
1.8 "the Technology Transfer Period" means the period of five (5)
years after the TAC becomes operational;
1.9 "Notified Discoveries" means Research Information, Research
Inventions and Research Material notified by the University to
LeukoSite (UK) under clause 3.2;
1.10 "the Pro Forma License" is set cut in the Second Schedule to
this Agreement;
1.11 "the Option Period" means the period beginning on the date of
notification of a Notified Discovery under clause 3.2 and
ending on whichever is the first to occur of twelve (12)
months thereafter or the service of a counter-notice by
LeukoSite (UK) under clause 3.3: the University will not
unreasonably refuse a reasoned request from LeukoSite (UK) for
an extension of the twelve-(12)-month period in relation to
any individual Notified Discovery.
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2 FUNDING FOR THE TAC
2.1 The MRC will contribute **************************************
**************************************************************
******************************
towards the costs of staff, consumables, equipment, indirect
costs and other day-to-day running expenses of the TAC, and
*********************** **************************** towards
the cost of constructing and equipping the TAC. The exact
timing of capital payments within financial years is to be
discussed between the University and the MRC, but the
intention is to front-end load payments to 1995/96 or earlier,
subject to written evidence of expenditure; provided that,
subject to written evidence of expenditure, the entire capital
contribution of the MRC will be paid by the MRC by the end of
its 1995/96 fiscal year.
2.2 The University has agreed with other parties for the payment
by such parties of further set sums towards the cost of
constructing and equipping the TAC.
2.3 The contributions by the MRC and the parties referred to in
clause 2.2 will be subject to the University's acceptance of
certain terms and conditions of grant, but the University
confirms and warrants to LeukoSite (without prejudice to the
second sentence of clause 3.4) that such terms and conditions
will not give either the MRC or the other parties any claim to
the ownership of Notified Discoveries.
2.4 LeukoSite (UK) will contribute the sum of ********************
cost of constructing and equipping the TAC. Of this sum, ****
**************************************************************
**************************************************************
*********************
2.5 Whenever a party is obliged to make a payment under the
preceding sub-clauses which attracts value-added, sales, use,
excise or other similar taxes or duties. The party under such
obligation shall be responsible for paying the taxes and
duties.
2.6 Except as otherwise provided by the MRC's terms and conditions
of grant or by an agreement signed by or on behalf
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of the University, as between the parties to this Agreement
the full and unencumbered title to all equipment purchased or
constructed using funds provided by the other parties shall
vest in the University.
3 TRANSFER OF TECHNOLOGY TO LEUKOSITE
3.1 Performance by the University of this clause 3 is subject to
and conditional upon:
3.1.1 receipt by the University of the contributions and
funds which are referred to in clauses 2.1, 2.2 and
2.4;
3.1.2 the grant of an appropriate lease of the site for the
TAC by The Oxford Radcliffe Hospital Trust to the
University; and
3.1.3 the obtaining of all permissions and consents
required for the construction of the TAC.
The University will use all reasonable endeavours to secure
the lease, permissions and consents referred to in clauses
3.1.2 and 3.1.3; to procure the construction and equipping of
the TAC in an appropriate and timely manner; and to operate
the TAC efficiently and in accordance with good laboratory
practice.
3.2 Throughout the Technology Transfer Period:
3.2.1 a written report shall be submitted by the University
to LeukoSite (UK) within ninety (90) days after the
end of each six (6) months following the date on
which the TAC becomes operational: such report shall
itemize the Research Information and Research
Material generated during the six-(6)-month period:
the University may file additional reports if and
whenever the University prefers not to wait for the
end of a six-(6)-month period but instead to start
time running immediately under clause 3.5 with
respect to any particular Research Information or
Research Material;
3.2.2 the University will use all reasonable endeavours to
report Research Inventions promptly to LeukoSite
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(UK), as and when such Inventions are made and
documented.
3.3 If LeukoSite does not intend to exploit any Notified Discovery
commercially, LeukoSite (UK) shall inform the University
promptly by serving a counter-notice to that effect.
3.4 LeukoSite (US) shall have the right in accordance with clause
3.5 to take a license over each Notified Discovery, on the
terms of the Pro Forma License, with such modifications (if
any) as the parties may agree. The royalties received by the
University under each such license are to be divided between
the University and the MRC in accordance with formulae which
will be established by separate agreement between those two
parties.
3.5 During the Option Period:
3.5.1 LeukoSite is licensed to use the Notified Discovery
for evaluation purposes. No license is granted for
any other purpose, and LeukoSite will keep the
Notified Discovery confidential by using the same
care and discretion to avoid its disclosure to any
third party as LeukoSite uses with respect to
strictly-confidential information of its own which it
does not wish to be disclosed to others; and
3.5.2 the University will not negotiate with or enter into
any agreement or arrangement with any third party for
the commercial exploitation of the Notified
Discovery.
Should LeukoSite (UK) during the Option Period give the
University notice of LeukoSite's desire to exercise the right
granted in clause 3.4, the parties will complete a license of
the Notified Discovery in the form of the Pro Forma License,
utilizing the material provided by the University in the
notification under clause 3.2 in order to complete the blanks
in Paragraphs 1.3, 1.5 and 1.6 and Appendix B. Should the
parties be unable to agree any of the wording for the blanks
in Paragraphs 1.3, 1.5 and 1.6 and Appendix B by the end of
the Option Period, the issue or issues in dispute shall be
settled in London by an arbitrator. The arbitrator shall be a
barrister specializing in intellectual property law, who has
no prior association with either party, or who is otherwise
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acceptable to both parties. He shall be nominated for the
purpose by the then Chairman of the General Council of the
Bar. The license granted to LeukoSite in clause 3.5.1, and the
obligation accepted by the University in clause 3.5.2, will
both be extended until the arbitration is concluded and the
license over the Notified Discovery completed.
3.6 If LeukoSite (UK) serves a counter-notice on the University
under clause 3.3, or if by the end of the Option Period
LeukoSite has given no notice to the University of a wish to
exercise the right granted in clause 3.4:
3.6.1 LeukoSite shall at the University's election either -
3.6.1.1 return all materials and documentation for
the Notified Discovery to the University; or
3.6.1.2 destroy all materials and documentation,
in which event LeukoSite shall provide the
University with written certification of
such destruction, signed by authorized
representatives of both LeukoSite (US) and
LeukoSite (UK);
3.6.2 the University shall be free to license the Notified
Discovery to third parties; provided that if the
University purposes to grant such a license to a
third party, the University shall notify LeukoSite;
and LeukoSite shall have the right within the period
of thirty (30) days after such notification to obtain
a license on the terms offered to the third party.
4 LIMITATION OF LIABILITY
4.1 The University makes no representation or warranty that advice
or information given by any of its employees, students, agents
or appointees who work in the TAC, or the content or use of
any materials, works or information provided in connection
with the Research, will not constitute or result in
infringement of third-party rights.
4.2 The University accepts no responsibility for any use which may
be made of the results of the Research, nor for any
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reliance which may be placed on such results, nor for advice
or information given in connection with them.
4.3 Without prejudice to any right which the other parties may
have to claim against the University, each of the other
parties to this Agreement undertakes to make no claim against
any employee, student, agent or appointee of the University,
being a claim which seeks to enforce against any of them any
liability whatsoever in connection with this Agreement or its
subject-matter.
4.4 The liability of any party for any breach of this Agreement,
or arising in any other way out of the subject-matter of this
Agreement, will not extend to any incidental or consequential
damages or losses including (without limitation) loss of
profits.
4.5 The maximum liability of the University to each of the other
parties under or otherwise in connection with this Agreement
or its subject-matter shall not exceed a sum equal to the
aggregate of all moneys received by the University from both
LeukoSite and the MRC under clause 2, together with interest
on the balance of such moneys from time to time outstanding,
accruing from day to day at the Lloyds Bank PLC Base Rate from
time to time in force and compounded annually as at 31
December.
4.5 If any sub-clause of this clause 4 is held to be invalid or
unenforceable under any applicable statute or rule of law then
it shall be deemed to be emitted, and if as a result any party
becomes liable for loss or damage which would otherwise have
been excluded then such liability shall be subject to the
remaining sub-clauses of this clause 4.
5 DURATION AND TERMINATION
5.1 The period of this Agreement shall begin on the Effective
Date. Subject to the following sub-clauses of this clause 5,
it shall then continue throughout the Technology Transfer
Period.
5.2 The University may terminate this Agreement by giving not less
than seven (7) days' written notice to all the other parties:
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5.2.1 if LeukoSite (US) makes an assignment for the benefit
of its creditors, files a petition for protection
under the US Bankruptcy Code, is adjudicated
insolvent, or applies for a receiver or trustee of
any part of its property;
5.2.2 if any proceeding of a type described in clause 5.2.1
is commenced against LeukoSite (US) and remains
undismissed for a period of thirty (30) days;
5.2.3 if LeukoSite (US) indicates its consent to any
proceeding of a type described in clause 5.2.1;
5.2.4 if LeukoSite (UK) suffers distress or execution, is
the subject of a petition for a bankruptcy order,
goes or is put into liquidation, has a receiver or
administrative receiver appointed over any
substantial part of its business, or seeks any form
of protection against its creditors from any
competent court or tribunal.
Provided that the foregoing shall not be applicable in a case
filed under Chapter 11 of the United States Bankruptcy Code
until the case is converted to a Chapter 7 by a final
non-appealable order.
5.3 If the University has not notified a Mobilization Date to
LeukoSite (UK) under clause 1.3 within the period of ninety
(90) days after the Effective Date, LeukoSite (US) and
LeukoSite (UK) shall each have the night to terminate this
Agreement by giving not less than seven (7) days' written
notice to all the other parties. These rights shall become
exerciseable on and from the end of the ninety-(90)-day
period: they shall cease to be exerciseable if and when a
Mobilization Date is notified by the University to LeukoSite
(UK) under clause 1.3. Furthermore, if either LeukoSite (US)
or LeukoSite (UK) exercises its right under this subclause but
the University notifies a Mobilization Date during the
seven(7)-day period of the notice from LeukoSite (US) or
LeukoSite (UK), the notice from LeukoSite (US) or (as the case
may be) LeukoSite (UK) shall be of no effect.
5.4 By giving ninety (90) days' written notice to all the other
parties of the intention to terminate, the University may
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terminate this Agreement for any material breach of this
Agreement by either the MRC or LeukoSite.
5.5 By means of similar notice, the MRC and LeukoSite (US) shall
each have the night to terminate this Agreement for any
material breach by the University.
5.6 Any notice under clauses 5.4 or 5.5 shall include a detailed
statement describing the nature of the breach. If the breach
is capable of being remedied and is remedied within the
ninety-(90)-day notice period, then the termination shall not
take effect. If the breach is of a nature such that it can be
fully remedied but not within the ninety-day notice period,
then termination shall also not be effective if the party
involved begins to remedy the breach within that period, and
then continues diligently to remedy the breach until it is
remedied fully. If the breach is incapable of remedy, then the
termination shall take effect at the end of the ninety day
period in any event.
5.7 The expiration of the Technology Transfer Period, or the
termination of this Agreement under the preceding sub-clauses
of this clause 5, shall mean the termination, with effect from
the expiry date or (as the case may be) the effective date of
termination, of the obligations imposed on the parties under
clauses 2.1 through 2.5 and clause 3 (save only in relation to
Notified Discoveries which have been notified by the
University to LeukoSite (UK) under clause 3.2 before the
expiry date or the effective date of termination). The
remaining clauses shall survive the expiration of the
Technology Transfer Period and the termination of this
Agreement, for whatever reason. The duration of any licenses
granted pursuant to clauses 3.4 and 3.5 shall be determined by
the provisions for duration and termination in each such
license, and shall not be affected by the operation of the
termination clauses in this Agreement.
6 GENERAL
6.1 Clause headings are inserted in this Agreement for convenience
only, and they shall not be taken into account in the
interpretation of this Agreement.
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6.2 This Agreement shall not be assignable by any of the parties
without the prior written consent of all the other pates
(which consent shall not be unreasonably withheld or delayed),
except that LeukoSite without the consent of the other parties
may assign this Agreement to a successor in interest or
transferee of all or substantially all of the portion of the
business to which the Agreement relates.
6.3 Without prejudice to the University's other rights and
remedies, if LeukoSite (UK) fails to perform any of its
obligations under this Agreement, or commits any breach of
those obligations, LeukoSite (US) will indemnify the
University against all losses, costs, claims, demands and
liabilities which may be incurred or suffered by the
University as a result of such non-performance or breach,
provided that LeukoSite (US) is promptly notified. LeukoSite
(US) shall then have the right to control the defense,
settlement or compromise of any such claim which is brought by
a third party.
6.4 Subject to HM Treasury rules as they apply to Research
Councils, if another party to this Agreement fails to make any
payment due to the University under this Agreement then,
without prejudice to the University's other rights and
remedies consequent upon breach of this Agreement, the
University may charge interest on the balance outstanding,
accruing from day to day at the rate of two per cent (2%) per
annum above the Lloyds Bank PLC Base Rate from time to time in
force and compounded annually as at 31 December.
6.5 If the performance by any party of any of its obligations
under this Agreement (other than an obligation to make
payment) shall be prevented by circumstances beyond its
reasonable control, then such party shall be excused from
performance of that obligation for the duration of the
relevant event.
6.6 Unless such use is required by law, no party shall use the
name of any other party in any press release or product
advertising, or for any other commercial purpose, without that
other party's prior written consent; provided, however, that:
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6.6.1 publication of the sums received in the University's
Annual Report and similar publications shall not be
regarded as a breach of this clause;
6.6.2 the University will not unreasonably withhold consent
to the use of the University's name by LeukoSite in
connection with a financing.
6.7 Until further notice, the following shall be the parties'
representatives for the purpose of receiving invoices,
payments, statements, requests, notices and other documents
under this Agreement:
in the case of invoices, payments and statements
addressed to the University -.
The Administrator
Xxx Xxxxxxx Xxxx School of Pathology,
University of Oxford
Xxxxx Xxxxx Xxxx
XXXXXX XX0 0XX
Xxxxxxx;
in the case of requests, notices and other
documents addressed to the University -
The Director of the Research Services Office
University of Oxford
University Offices
Xxxxxxxxxx Xxxxxx
XXXXXX XX0 0XX
Xxxxxxx;
in the case of invoices, payments and statements
addressed to the MRC -
Xxxxx Xxxxxxx
Finance Division
The Medical Research Council
00 Xxxx Xxxxxxxx
XXXXXX X0X 0XX
Xxxxxxx;
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in the case of requests, notices and other
documents addressed to the MRC -
The Head of the Technology Transfer Group
The Medical Research Council
00 Xxxx Xxxxxxxx
XXXXXX XXX 0XX
Xxxxxxx;
in the case of LeukoSite (US) -
The President
LeukoSite, Inc.
000 Xxxxxxxxxx Xxxxxx
XXXXXX Xxxxxxxxxxxxx XX 00000 XXX;
in the case of LeukoSite (UK) -
The Managing Director
LeukoSite Limited
c/o Xxxx Xxxxxx esq.
Messrs Xxxxxxx, Xxxx & Xxxxx
00 Xxxxxxxx Xxxxxx
XXXXXX XXX0X XXX Xxxxxxx.
6.3 Nothing in this Agreement shall create, imply or evidence any
partnership or joint venture between the parties or the
relationship between any of them of principal and agent.
6.9 This Agreement and its two (2) Schedules (which are
incorporated into and made a part of this Agreement)
constitute the entire agreement between the parties for the
TAC. Any variation of this Agreement shall be in writing and
signed by authorized representatives of all parties.
6.10 This Agreement shall be governed by English Law.
6.11 If any one or more clauses or sub-clauses of this Agreement
would result in this Agreement being prohibited pursuant to
Article 85(l) of the Treaty of Rome, then it or they shall be
deemed to be omitted. The parties shall uphold the remainder
of this Agreement, and shall negotiate an amendment which, as
far as legally feasible, maintains the economic balance
between the parties.
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6.12 In entering into this Agreement the parties recognize that it
is impracticable to make provision for every contingency that
may arise in the course of performance. Accordingly, the
parties declare it to be their intention that this Agreement
shall operate between them with fairness and without detriment
to the interests of any of them; and if in the course of the
performance of this Agreement unfairness to any party is
disclosed or anticipated, then all parties shall use their
best endeavors to agree upon such action as may be necessary
and equitable to remove the cause or causes of that
unfairness.
AS WITNESS the hands of authorized signatories for the parties on the date first
mentioned above
THE SCHEDULES
1. Illustrative Site Location Plan and Layouts for the TAC
2. The Pro Forma License
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THE FIRST SCHEDULE
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THE SECOND SCHEDULE
THE PRO FORMA LICENSE
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SIGNED for and on behalf of SIGNED for and on behalf of
THE CHANCELLOR MASTERS THE MEDICAL RESEARCH COUNCIL
AND SCHOLARS OF THE
UNIVERSITY OF OXFORD
Name:/s/ X. Xxxxx Name:/s/ Xxxxxx X. Xxxx Ph.D.
Head of Technology Transfer Group
Position: Position:
Signature:/s/ X. Xxxxx Signature:/s/ Xxxxxx X. Xxxx
SIGNED for and on behalf of SIGNED for and on behalf of
LEUKOSITE, INC. LEUKOSITE, INC.
Name:/s/ Xxxxxxxxxxx X. Xxxxxxxxx Name:/s/ Xxxxxxxxxxx X. Xxxxxxxxx
Position: Position:
Signature:/s/ X.X. Xxxxxxxxx Signature:/s/ X.X. Xxxxxxxxx
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