OPTION AND LICENSE AGREEMENT
EXHIBIT
10.27
The
University of Chicago, an Illinois not-for-profit corporation with principal
offices at 0000 Xxxxx Xxxxx Xxxxxx, Xxxxxxx, Xxxxxxxx, 00000 (the “University”),
and UR Labs, Inc., a California corporation with principal offices at 00000
Xxxxx Xxxxxx Xxxxx Xxxx, Xx Xxxxx, Xxxxxxxxxx 00000 (“URL”), enter into this
Agreement this ___ day of _________, 1985.
The
University represents that it is the sole owner of the entire right, title
and
interest to [*], and that it has the full authority and right to grant licenses
thereunder and to grant rights thereto to URL as stated herein. The patent
is
based upon research performed by [*]. URL is interested in investigating
the
possibilities of developing, testing and marketing a pharmaceutical utilizing
the invention and, if possible, securing additional patent protection covering
the Compound involved in the invention. The parties have agreed that the
University will provide URL with a four month exclusive option to determine
whether it wishes to license the patent and embark upon a program of development
and marketing.
NOW,
THEREFORE, the parties agree as follows:
Section
1. The
following terms, as used in this Agreement, shall have the meanings here
ascribed to them:
a. “Compound”
shall mean [*] having the chemical structure [*].
b. “Patents”
shall mean U.S. Patent [*] as well as any patent application filed respecting
other uses of the Compound, and corresponding foreign patents.
c. “Net
Selling Price” shall mean invoice price fob factory less expenses incurred in
the course of business, such as, but not limited to handling,
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
packaging,
agents fees and commissions, taxes, freight allowances, cash discounts, volume
or trade discounts and the like.
Section
2. Option.
a. The
University hereby grants URL an exclusive option for the period beginning
on the
date of this Agreement and extending until August 31, 1985 to acquire an
exclusive license to make, use and sell the Compound. URL and the University
may
extend the option by written mutual agreement. URL may exercise the option
at
any time during the option period by so notifying the University in writing,
whereupon the license shall automatically come into force.
b. URL,
at
its expense, will engage patent counsel to prepare and prosecute a domestic
patent application and such foreign applications based thereon as it shall
deem
desirable, covering an additional and supplementary use of the Compound.
Such
application shall be filed in the name of the inventor, [*], and assigned
to the
University. Should URL elect not to exercise the option herein granted, it
shall
assign whatever rights it may have in the patent applications to the University
which may proceed to prosecute the case thereafter at its expense.
c. The
parties shall ascertain what the U.S. Food and Drug Administration will require
to approve a drug based upon the Compound. Any expenses of the University
in
determining this information, including travel and similar expenses of [*]
will
be reimbursed by URL.
d. URL
will
explore sources of capital to undertake the further development, testing
and
marketing of the Compound. Included will be an investigation of possible
support
from the Small Business Innovation Research Program. URL will further
investigate sources of supply of the Compound.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
2
Section
3. Program
for Development and Marketing.
Upon
exercising the option set forth in 2(a) above, URL will develop, in consultation
with [*] and the University, a plan for proceeding with the research,
development, testing and registration of a drug based upon the Compound.
Such
plan shall be modified as circumstances indicate, in consultation with [*]
and
the University. As shall be further agreed between the parties, some portions
of
the clinical or other research to be performed for development and registration
purposes may be performed at the University under such arrangement for
reimbursement of costs as shall be agreed upon between the parties. URL shall
diligently proceed with the research, development, testing and registration
and
shall make every effort to bring a useful product to market as soon as
circumstances permit. URL shall furnish status reports at least once a year,
beginning one year after the exercise of the option, showing its progress
in
this program. It is understood that URL may engage [*] as a consultant on
this
project under terms that shall not conflict with [*] responsibilities as
a
member of the faculty of the University.
Section
4. Exclusive
License Agreement.
x. Xxxxx
of Exclusive License.
1. Upon
exercise of the option granted in Section 2(a), the University grants and
conveys to URL an exclusive license, with the right to sublicense to make,
have
made, use, or sell Compound and/or products incorporating Compound worldwide
under the Patents.
b. Royalty.
1. URL
shall
pay to University a royalty of ______ of the Net Selling Price for Compound
sold
by URL or any sublicensee or assignee.
2. University
shall also receive ______________ of any revenue received by URL from its
sublicensees or assignees in a form other than royalties.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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c. Royalty
Payment Terms and Conditions.
1. Within
60
days following the close of each quarter, URL shall provide University a
written
accounting report for the quarter relating to Compound sold and for which
a
royalty is due hereunder. The report shall set forth units sold and shall
indicate the quarterly amount of royalty due and payable hereunder.
2. Payment
of the quarterly royalty shall accompany the quarterly report. Foreign payments
should be converted to U.S. currency at the prevailing rate at the time of
payment. There shall be deducted from all such payments the amount of any
taxes
which are required to be withheld therefrom by any governmental
authority.
3. URL
shall
keep and shall require its sublicensees to keep full and accurate books and
records in sufficient detail so that royalties payable hereunder can be properly
calculated. URL shall permit and shall require its affiliates and sublicensees
to permit independent accountants designated by University, to whom URL has
no
reasonable objection, to examine said books and records during business hours
for the purpose of verifying the accuracy of written reports submitted by
URL
and the royalties paid or payable.
d. Exclusive
License Conditions.
To
maintain any exclusive license granted hereunder as of right in a country
where
Compound is covered by Patents, URL must exercise due diligence to obtain
health
registration in each such country, and must commence commercial sale of Compound
within three (3) years of obtaining an approved health registration in that
country.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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Section
5. Enforcement
of Licensed Patents.
In
the
event URL alleges that a third party infringes a Licensed Patent, the
prima facie
determination of infringement shall be made by an Independent Patent Attorney
(IPA) satisfactory to both the University and URL, at their joint cost and
expense.
(a) If
the
IPA finds that there is no prima facie
evidence
of infringement by the alleged infringer, then URL’s obligation to pay royalties
under this Agreement shall continue without abatement.
(b) If
the
IPA finds prima facie
evidence
of the alleged infringement:
1) URL
may
elect to institute an action against such third party, in which
event:
(A) During
the pendency of such action, URL may suspend payment of royalties under the
patent in suit in the country of such action to the extent of any costs actually
incurred in such action; and
(B) If
URL
finally prevails, it shall thereafter resume paying royalties, subject to
URL’s
recovery therefrom of costs of litigation not theretofore recovered and shall
retain all damages which it may collect; and
(C) If
URL
finally loses:
(i) Because
the third party is held not to be infringing, URL shall thereafter resume
paying
royalties and shall, in addition, pay to University such royalty payments
as
were suspended under the terms of Section 5(b)(1)(A) hereof.
(ii) Because
the patent is held invalid, URL shall cease paying royalties in the country
in
which such invalidity has been finally adjudicated, provided
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that
Compound is covered or the use thereof is covered only by claims which have
been
held invalid.
2) If
within
one hundred twenty (120) days after the determination of prima facie
infringement, URL does not elect to institute such an infringement action,
the
University may elect to file such an infringement action, in which
event:
(A) URL
shall
continue to pay royalties during the pendency of the action; and
(B) If
University finally prevails, URL shall continue to pay royalties as set forth
in
Section 4, provided that if University is required to grant a license to
the
infringer, then URL’s royalty rate shall be reduced to the lowest rate granted
to such an infringer;
(C) If
the
University finally loses:
(i) Because
the third party is held not to be infringing, URL will continue to pay royalties
as set forth in Section 4 hereof;
(ii) Because
the patent is held invalid, URL shall cease paying royalties in the country
in
which such invalidity has been finally adjudicated, provided the Compound
is
covered or the use thereof is covered only by claims which have been held
invalid.
(3) URL
shall
not be entitled to recover, as a credit or otherwise, royalties paid before
a
final judgment of invalidity.
(4) If
neither URL nor University elects to institute an infringement action, URL
shall
not be relieved of its obligations to pay royalties hereunder.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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Section
6. Term
of Agreement, Termination.
(a) The
term
of this Agreement shall be from the effective date hereof until the expiration
of the option period specified in section 2(a) and subject to the exercise
of
the option specified in Section 2(a) until the expiration of the last to
expire
of the Licensed Patents.
(b) URL
may
terminate this Agreement, in whole or with respect to any Licensed Patent
upon
thirty (30) days prior written notice.
(c) If
URL
shall at any time default in any obligation under this Agreement, including
but
not limited to failing to make any report, pay any royalties or minimums,
or
permit the inspection of its books and records as hereinabove required, or
fails
for a period of three years from the date the option in Section 2(a) is
exercised to make substantial progress to bring the invention to the market,
and
such default shall not be cured within sixty (60) days after written notice
from
the University to URL specifying the nature of the default, or in the event
URL
pays into escrow, royalties which have accrued hereunder, then URL shall
have
the right to terminate the URL license granted to URL hereunder by giving
written notice to URL and such termination shall be effective on the date
of
such notice.
(d) Any
termination pursuant hereto shall not relieve either party of any obligation
or
liability accrued hereunder prior to such termination, nor rescind or give
rise
to any right to rescind anything done or any payments made or other
consideration given hereunder prior to the time of such
termination.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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Section
7. Warranty.
University warrants and represents that it has the full right and power to
grant
the options and license set forth in this Agreement and that there are no
outstanding agreements, assignments or encumbrances inconsistent with the
provisions of this Agreement. University makes no other representation or
warranty, express or implied, nor does University assume any liability in
respect to any infringement of any patent or other right of third parties
due to
URL’s activities under the License.
Section
8. Indemnity.
URL
agrees to indemnify and hold harmless University and its employees and agents
and [*] from and against any and all claims, damages and liabilities asserted
by
third parties, both government and private, arising from URL’s sale of Compound
to ultimate consumers and their use thereof.
Section
9. General
Conditions.
a. Notices.
Any
payment, notice or other communication required or permitted to be made or
given
to either Party hereto pursuant to this Agreement shall be sufficiently made
or
given on the date of mailing if sent to such Party by certified or registered
mail, postage prepaid, addressed to it at its address set forth or to such
other
address as it shall designate by written notice given to the other Party
as
follows:
In
the
case of University:
Xxxxxx
Xxxxx, Director
Office
of
Sponsored Programs
The
University of Chicago
000
Xxxx
00xx Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
In
the
case of URL:
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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Xxxxxxx
Xxxxx, Ph.D., President
UR
Labs,
Inc.
00000
Xxxxx Xxxxxx Xxxxx Xxxx
Xx
Xxxxx,
Xxxxxxxxxx 00000
b. Governing
Law.
The
validity and interpretation of this Agreement shall be governed by the laws
of
the State of Illinois.
c. Changes
to Agreement.
This
Agreement may not be changed except by an instrument in writing signed by
duly
authorized officers or representatives of both of the parties
hereto.
d. Assignment.
This
Agreement shall not be assignable by URL without the prior written consent
of
URL, which consent will not be unreasonably withheld, except to a successor
in
ownership of all or substantially all of the business assets of URL, and
which
successor shall expressly assume in writing the performance of all the terms
and
conditions of this Agreement to be performed by URL.
e. Prior
Agreements.
This
instrument is the complete and final Agreement between the parties hereunder
with respect to the matters treated herein, and supersedes all previous
negotiations, agreements, commitments, writings and understandings whether
written or oral.
f. Patent
Marking.URL
shall
xxxx and shall require its sublicenses to xxxx the packaging material for
the
Compound with the U.S. Patent number under which the Compound is
licensed.
g. URL
shall
have no right to use the name or other designations of the University in
connection with any sales or promotion of Compound without the express written
consent of the University.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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h. If
any
provision or provisions of this Agreement shall be held to be invalid, illegal
or unenforceable, the validity, legality and enforceability of the remaining
provisions shall not in any way be affected or impaired thereby.
IN
WITNESS WHEREOF, each of the Parties hereto has caused this Agreement to
be
executed by its officers as of the day and year first written.
|
UR
LABS, INC.
By: /s/
Xxxxxxx
Xxxxx
Xxxxxxx Xxxxx
Title:
President
|
THE
UNIVERSITY OF CHICAGO
By: /s/
Xxxxxx
Xxxxx
Xxxxxx
Xxxxx
Title: Director,
Office of Sponsored Programs
|
|
Date: June
4, 1985
|
Date: May
8, 1985
|
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UR
LABS,
INC.
00000
Xxxxx Xxxxxx Xxxxx Xxxx
Xx
Xxxxx,
Xxxxxxxxxx 00000
August
15, 1985
Xxxxxx
Xxxxx, Director
Office
of
Sponsored Programs
University
of Chicago
000
Xxxx
00xx Xxxxxx
Xxxxxxx,
XX 00000
Gentlemen:
In
accordance with Paragraph 2a. of the Option and License agreement dated May
8,
1985, UR Labs, Inc. is hereby exercising its option to acquire an exclusive
license to make, use, and sell [*] and any of its congeners under U.S. Patent
[*]. This is to take effect immediately.
|
UR
Labs, Inc.
By: /s/
Xxxxxxx
Xxxxx
Xxxxxxx
Xxxxx
President
|
Acknowledged,
The
University of Chicago
By: /s/
Xxxxxx
Xxxxx
Xxxxxx
Xxxxx
Director,
Office of Sponsored Programs
|
|
Date: Sept.
9, 1985
|
[*]
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AMENDMENT
TO OPTION
AND
LICENSE AGREEMENT
The
University of Chicago, an Illinois not-for-profit corporation (the “University”)
and U.R. Labs, Inc., a California corporation (“URL”) enter into this agreement
this 17th day of September, 1987 to amend the Agreement dated May 8, 1985
between them. The parties agree to amend Section 4, paragraph b (1) of such
agreement to read as follows:
|
1.
|
URL
shall pay the University a royalty of [*] of the Net Selling Price
for
Compound sold by URL or any sublicensee or assignee under a U.S.
patent.
URL shall pay to the University [*] of any royalties (or income
in lieu of
royalties) received by URL from licensing or assigning rights to
have
made, use, or sell compound and/or products incorporating Compound
under
patents other than a U.S. patent.
|
In
all
other respects the agreement of May 8, 1985 shall remain in effect as previously
agreed upon.
IN
WITNESS WHEREOF, the parties have executed this Agreement as of the day first
written above.
|
UR
LABS, INC.
By: /s/
Xxxxxxx
Xxxxx
Xxxxxxx Xxxxx
Its:
President
|
THE
UNIVERSITY OF CHICAGO
By: /s/
Xxxxxx
Xxxxxxxx
Xxxxxx Xxxxxxxx
Its:
Associate Vice President for
Research
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[*]
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SECOND
AMENDMENT TO OPTION AND LICENSE AGREEMENT
The
University of Chicago, an Illinois not-for-profit corporation (the “University”)
, ARCH Development Corporation, an Illinois not-for-profit corporation (“ARCH”)
and UR Labs, Inc., a California corporation (“URL”) enter into this Agreement
this 3rd day of March, 1989.
The
University and URL entered into an Option and License Agreement (the
“Agreement”) dated May 8, 1985 which granted URL an option, and, if it exercised
the option, a license respecting the development and marketing of a patent
or
patents identified therein (the “patent”), based on research performed by [*].
URL exercised the option in the Agreement and is exclusive licensee of the
patent. On September 17, 1987 the University and URL entered into an amendment
to the Agreement, altering royalty terms of the Agreement. Since then the
University formed ARCH to handle technology arising at the University, and
ARCH
has undertaken to represent the University’s interests with respect to the
Agreement.
ARCH
and
URL have discussed a new patent application to be filed on additional potential
uses of the Compound covered by the patent. It is the purpose of this amendment
to add ARCH as a party, indicate the arrangements concerning the additional
patent application and further modify royalty terms of the
Agreement.
THEREFORE,
PARTIES AGREE AS FOLLOWS:
1. URL,
using patent counsel of its choosing, shall prepare, file and prosecute a
domestic patent application on the new development [*], and will pay all
costs
for such actions. URL shall apply for and prosecute, at its expense, such
foreign applications based on the domestic patent as in its discretion it
deems
wise, which actions shall be at its expense. All such patent application,
domestic and foreign, shall be assigned to ARCH. URL shall advise ARCH of
the
countries in which it will seek patent protection and permit ARCH at its
expense
to apply for patent applications based on the domestic patent application
in any
other countries, provided that the notice shall be early enough such that
ARCH
may make such application. URL shall pay the expense of maintenance of any
such
new patent application, and if it decides
[*]
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to
discontinue payment shall offer to assign the patent or patent application
to
ARCH so that it may continue such patent or patent applications.
2. Section
4, paragraph b as amended is further amended to read as follows:
a. URL
shall
pay to the University [*] of all royalties received by URL from the sublicensing
of any patent covered by this Agreement, based on the Net Selling Price for
Compound sold. Should URL sell any product based upon the patent directly,
or
through a subsidiary, it shall pay the University [*] of the Net Selling
Price
for Compound sold.
b. URL
shall
pay the University [*] of any up-front fees on domestic licensing of the
patent
and [*] of foreign up-front fees on current contracts or future contracts
with
[*]. If ARCH finds a new sublicensee and URL executes a contract with such
licensee, URL will pay the University [*] of any up-front fees, whether on
domestic or foreign sublicenses. If URL initiates any future sublicenses,
URL
will pay [*] of the up-front fees on domestic licenses and [*] of the up-front
fees on foreign licenses on such sublicenses. The arrangements regarding
up-front fees, as delineated herein, will apply also to any revenues received
by
URL from the patent in any form other than royalties. The distribution of
up-front fees does not apply to [*], or fees paid to [*] to sublicense the
compound.
3. In
recognition of ARCH’s role in this Agreement, wherever the word “University” is
used in the Agreement, the words “ARCH” shall be understood to be inserted.
However, all payments hereunder shall be made to the University and the
University and ARCH shall arrange for the appropriate distribution of such
payments between them.
4. Section
9
of the Agreement is amended to change the addressee for notice for the
University and add an address for notice ARCH as follows:
The
University of Chicago
Office
of
Research Administration
000
Xxxx
00xx Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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ARCH
Development Corporation
The
University of Chicago
0000-00
Xxxx 00xx Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
IN
WITNESS WHEREOF, each of the Parties hereto has caused this Agreement to
be
executed by its authorized representatives as of the day and year first
written.
|
UR
LABS, INC.
By: /s/
Xxxxxxx
Xxxxx
Xxxxxxx Xxxxx
Title:
President
|
THE
UNIVERSITY OF CHICAGO
By:
/s/
University of Chicago Representative
|
|
Date: 3/3/89
|
Date: 2/14/89
|
|
ARCH
DEVELOPMENT CORPORATION
By: /s/
ARCH Development Corporation Representative
Date: 2/14/89
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[*]
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AGREEMENT
RELATED TO PROGENICS’ MNTX IN-LICENSE
THIS
AGREEMENT (the
“Agreement”)
is
entered into as of this 22nd
day of
December, 2005 and is effective as of the "Effective
Date"
by and
among the University of Chicago, acting on behalf of itself and its affiliate
ARCH Development Corporation (the “University”),
Progenics Pharmaceuticals, Inc., a corporation of the State of Delaware
(“Progenics”),
Progenics Pharmaceuticals Nevada, Inc. (“ProNev”)and
Wyeth, acting through its Wyeth Pharmaceuticals Division, a corporation of
the
State of Delaware (“Wyeth”).
BACKGROUND
A.
The
University and UR Labs, Inc., a corporation of the State of Nevada
(“UR
Labs”)
entered into an Option and License Agreement dated as of May 8, 1985, as
amended
(the “University
Agreement”),
under
which the University granted UR Labs a license, with the right to sublicense,
under certain patent rights and know-how of the University;
B.
UR
Labs
and Progenics entered into a Sublicense Agreement dated as of September 21,
2001
(the “UR
Labs-Progenics Agreement”),
under
which UR Labs granted Progenics a license, with the right to further sublicense,
under certain patent rights and know-how, including the patent rights, and
know-how licensed by the University to UR Labs under the University
Agreement;
C. On
December 22, 2005, UR Labs assigned the UR Labs-Progenics Agreement together
with all patent rights and know-how licensed thereunder to ProNev, a
wholly-owned subsidiary of Progenics, in connection with the acquisition
of
substantially all of the assets of UR Labs by ProNev;
D.
On
even
date herewith, Progenics and Wyeth are entering into a License and
Co-Development Agreement (the “Progenics-Wyeth
Agreement”)
granting Wyeth a license, with the right to sublicense, under certain patent
rights and know-how, including the patent rights and know-how licensed by
the
University to UR Labs under the University Agreement and the patent rights
and
know-how licensed by ProNev to Progenics under the UR Labs-Progenics
Agreement;
X. Xxxxx
has
requested that the University make certain acknowledgments, consents, waivers,
representations and agreements as a prerequisite to entering into the
Progenics-Wyeth Agreement;
F.
The
University has requested that Progenics and ProNev make certain
acknowledgements, consents, waivers, representations and agreements as set
forth
in this Agreement; and
G. The
University, Progenics, and ProNev will benefit financially and otherwise
from
the Progenics-Wyeth Agreement and therefore desire to make the requested
[*]
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acknowledgments,
consents, waivers, representations and agreements subject to the terms and
conditions set forth below.
AGREEMENT
In
consideration of the foregoing, and for other good and valuable consideration,
the sufficiency and receipt of which are acknowledged by the parties, the
parties agree as follows:
| 1. |
Definitions
|
Unless
specifically defined in the text of this Agreement, all capitalized terms
used
in this Agreement shall have the meanings ascribed to them below:
Compound. “Compound”
means [*] which is chemically defined as [*],
and its
pharmacologically acceptable salts, together with their solvates, hydrates,
hemihydrates, metabolites, pro-drugs, esters, and if applicable, any isomers
or
racemates thereof, [*]. The “Compound” does not include the Excluded Molecules.
Control
or Controlled.
“Control” or “Controlled” means with respect to any material, item of
information, or intellectual property right, the possession, whether by
ownership or license, of the right to grant a license or other equivalent
right
with respect thereto.
Effective
Date.
“Effective Date” means the date on which all of the following shall have
occurred: (1) this Agreement shall have been duly executed and delivered
by all
of the Parties hereto;and (2) the Progenics-Wyeth Agreement shall have been
duly
executed and delivered by Progenics and Wyeth and shall be in full force
and
effect.
Excluded
Molecules.“Excluded
Molecules” means [*], chemically defined as [*],
and its
pharmacologically acceptable salts, together with their solvates, hydrates,
hemihydrates, metabolites, pro-drugs, esters, and if applicable, any isomers
or
racemates thereof, [*].
[*]
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Patent
Rights.
“Patent
Rights” means any and all (a) U.S. or foreign patents, (b) U.S. or foreign
patent applications, including, without limitation, all provisional
applications, substitutions, continuations, continuations-in-part, divisions,
renewals, and all patents granted thereon, (c) all U.S. or foreign
patents-of-addition, reissues, reexaminations and extensions or restorations
by
existing or future extension or restoration mechanisms, including, without
limitation, supplementary protection certificates or the equivalent thereof,
and
(d) any other form of government-issued right substantially similar to any
of
the foregoing.
Product.
“Product means any product containing the Compound as an active
ingredient.
University
Compound. “University
Compound” means [*],
which,
for clarity, includes the Compound.
University
Patents.“University
Patents” means those patents and patent applications listed on
Schedule
2.10
to this
Agreement; and any other patents and patent applications owned by the University
(whether solely or jointly with others) which claim one or more [*], or
processes for preparing one or more [*], or intermediates for preparing one
or
more [*], or uses of one or more [*], or dosage, packaging or means of delivery
for one or more [*]; as well as all continuations, continuations-in-part,
divisions, patents of addition, reissues, renewals or extensions of any of
the
foregoing, in each case to the extent that they claim the University Compound
or
[*].
University
Know-How. “University
Know-How” means all technology and information, including without limitation
methods, processes, techniques, compounds, drawings, indications, data, results
of tests or studies (including clinical studies previously performed with
respect to the University Compound, expertise and trade secrets, whether
patentable or not, relating to the University Compound or necessary or useful
for the commercialization of Products, existing on the date hereof or at
any
time during the term of this Agreement, which is owned or controlled by
University.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
18
| 2. |
University
Acknowledgments, Consents, Waivers, Representations, Warranties,
and
Agreements
|
2.1. Reservation
of University Rights. In
making
this Agreement, the University reaffirms, and where appropriate each provision
shall be read to be subject to, the University’s reservation to itself, subject
to the rights granted pursuant to the University Agreement, of the worldwide
right to (i) practice the inventions claimed in the University Patents, and
(ii)
make, have made, use, import, offer to sell and sell, transfer and disclose
the
University Compound, the University Patents and the University Know-How in
each
case solely for educational and non-commercial research purposes, which it
may
choose in its own discretion and without payment to any party
therefore.
2.2. Consent
to Progenics-Wyeth Agreement.
The
University acknowledges that it has reviewed the Progenics-Wyeth Agreement
and
hereby consents to Progenics’ grant of the sublicense to Wyeth pursuant to the
Progenics-Wyeth Agreement.
2.3. Scope
of License Under University Agreement.
The
University acknowledges and agrees that subject to the reservation in Section
2.1,
pursuant to the University Agreement, the University granted to UR Labs an
exclusive license under all rights in and to the University Compound, the
University Patents and the Unversity Know-How. The University further
acknowledges that, to the knowledge of the senior management of its technology
transfer office (UCTech), as of this date, it does not own any patent, patent
application, or other intellectual property rights not included in the rights
granted to UR Labs under the University Agreement that would be infringed
(or if
issued or granted would be infringed) by the commercialization of the Compound
as contemplated by the Progenics-Wyeth Agreement.
2.4. University
Agreement in Effect; No Breach.
The
University Agreement is in full force and effect. The University will notify
Progenics and Wyeth of any breach of the University Agreement by ProNev or
other
termination event or termination of which the University has knowledge. The
University acknowledges that, as of the Effective Date of this Agreement,
to its
knowledge UR Labs and ProNev are current in all payment obligations required
by
the University Agreement, and the University irrevocably waives any claims
to
the contrary.
2.5. Waiver
of Claims. The
University irrevocably waives any claims that, prior to the Effective Date,
UR
Labs or ProNev failed to satisfy any of the diligence requirements set forth
in
Section 3 of the University Agreement. The University irrevocably waives
any
claims that, prior to the Effective Date of this Agreement, UR Labs or ProNev
failed to fulfill any of its obligations under the University Agreement or
otherwise failed to comply with the terms and conditions of the University
Agreement.
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
19
2.6. Enforcement
Procedure.
During
the term of the Progenics-Wyeth Agreement, the University irrevocably waives
compliance with the first paragraph of Section 5 of the University Agreement
that requires an Independent Patent Attorney to make a prima
facie
determination in the event of alleged third party infringement. Rather, the
University hereby agrees that during the term of the Progenics-Wyeth Agreement,
Wyeth shall have the right to enforce the University Patents to the same
extent,
and following the same procedure as set forth, in the Progenics-Wyeth Agreement
with respect to the Progenics Patent Rights.
2.7. Access
to University Information. The
University hereby consents to Progenics sharing with Wyeth and any of its
Affiliates and Sublicensees (as such terms are defined in the Progenics-Wyeth
Agreement) all information provided by the University to Progenics under
Section
7(a) of the letter agreement dated as of September 20, 2001 (the “2001
Letter Agreement”)
between the University and Progenics.
2.8. Right
of First Negotiation.
With
respect to inventions Controlled by the University that relate to [*] arising
after this date during the term of the Progenics-Wyeth Agreement, if the
University has not licensed such invention(s) to UR Labs, ProNev or Progenics,
the University grants Wyeth a right of first refusal to negotiate a license
to
such invention(s) provided it is not obligated to license, or offer a right
of
first refusal to, such invention(s) to any third party. Wyeth acknowledges
that
Progenics has a right of first refusal in Section 3 of the 2001 Letter Agreement
which takes precedent over the right granted to Wyeth in the preceding sentence.
If a license is not executed [*], then such right of first refusal expires
and
University shall be free to license said invention(s) to any third party(s).
With respect to any invention conceived or first reduced to practice in the
performance of a federal grant, contract, or cooperative agreements: such
invention shall be subject to the requirements of 35 U.S.C. Section 200 et.
seq., as amended, and the implementing regulations and policies pertaining
thereto.
2.9. Third
Party Agreements.
University hereby represents, warrants and covenants that it has not, and
prior
to the expiration or termination of the Progenics-Wyeth Agreement will not,
enter into any agreement or arrangement which conflicts with its obligations
under the University Agreement or that restricts, impairs or renders conditional
the rights granted to UR Labs under the University Agreement (except as
permitted pursuant to Section 5.1).
University hereby agrees that, if requested by ProNev or a third party, it
will
not without Wyeth’s written permission consent to any assignment of the
University Agreement from ProNev to such third party if such assignment would
modify or alter (a) any of the rights obtained by Progenics under the UR
Labs-Progenics Agreement or by Wyeth under the Progenics-Wyeth Agreement
or (b)
any of the limitations placed on ProNev (and consequently placed on such
third
party) as a consequence of the UR Labs-Progenics Agreement.
2.10. University
Patents.
The
University represents and warrants that, to its knowledge, Schedule
2.10-A
identifies all University Patents owned solely by the
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
20
University
(the “Solely
Owned University Patents”),
and
Schedule
2.10-B identifies
all University Patents owned jointly with UR Labs or ProNev (the “Jointly
Owned University Patents”),
in
each case along with the following information with respect to each identified
Patent Right, as applicable: (i) country, (ii) title, (iii) application number,
(iv) application filing date, (v) patent number, (vi) patent issue date,
(vii)
listed inventor(s), and (viii) current owner. The Solely Owned University
Patents and the Jointly Owned University Patents identified on Schedule
2.10 (meaning
both 2.10-A and 2.10-B) constitute all of the University Patents as of the
Effective Date.
2.11. University
Employees.
To
University’s knowledge, all University employees who contributed to the
development of the University Know-How and University Patents were obligated
under University policies to assign all of their rights in such know-how
and
Patent Rights to the University.
2.12. Consent
to Assignment of University Agreement to ProNev.
The
University hereby consents to the assignment by UR Labs of all of its rights,
title and interests in the University Agreement to ProNev and ProNev’s
assumption of the same from UR Labs pursuant to the Agreement and Plan of
Reorganization dated as of December 21, 2005 by and among Progenics, ProNev,
UR
Labs, and the shareholders of UR Labs, pursuant to which ProNev expressly
assumed the performance of all the terms and conditions of the University
Agreement to be performed by UR Labs from and after December 21,
2005.
| 3. |
Progenics
and ProNev Acknowledgments and
Agreements
|
3.1. University
Payments.
University
Payments.
As a
result of the UR Labs Acquisition and in accordance with Section 6.2.4 of
the
Progenics-Wyeth Agreement, Progenics and ProNev (collectively, the “Progenics
Parties”) hereby acknowledge and agree that they are responsible for the ongoing
payment to University of all University Payments. The “University Payments” are
equal to the amounts that, [*].
3.2. University
Payments and the Wyeth Agreement.
Without
limiting the generality of the definition of University Payments in Sections
3.1, the Progenics Parties and University hereby acknowledge and agree that,
pursuant to compromises reached between Progenics Parties and University
as to
the amounts due to University as a result of the application of the provisions
of the University Agreement
and
the UR
Labs-Progenics Agreement to amounts payable with respect to the Progenics-Wyeth
Agreement,
the
University Payments due to the University related to the Progenics-Wyeth
Agreement include the following:
3.2.1. Reimbursement
of [*].
University agrees [*].
[*]
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21
3.2.2. [*].
University and Progenics Parties agree that [*], the following shall be due
to
University as University Payments: (i) with respect to [*], and (ii) with
respect to [*].
3.2.3. [*].
University and Progenics Parties agree that [*], the University Payments
shall
be calculated as follows: [*].
3.2.4. Royalties.
Pursuant
to [*].
3.3. Guarantee
by Progenics.
Progenics shall guarantee the full payment by ProNev of all University Payments
pursuant to the guarantee attached hereto as Exhibit A.
| 4. |
Wyeth
Indemnity of University
|
4.1. Wyeth
will indemnify, defend and hold harmless the University and each of its
employees, officers, trustees, agents, and each person identified as a student
of the University or as an inventor of a patent or patent application which
is
part of the rights being granted to Wyeth and its Affiliates pursuant to
the
Progenics-Wyeth Agreement (each, a “University
Indemnified Party”)
from
and against any and all liability, loss, damage, expense (including attorneys’
fees and expenses) and cost (collectively, a “Liability”)
that
the University Indemnified Party may be required to pay to one or more Third
Parties resulting from or arising out of: (a) any [*] on the part of Wyeth
or
its Affiliates in performing any activity contemplated by this Agreement;
(b)
[*]; or (c) the material breach by Wyeth of any of its representations,
warranties or covenants set forth in the Progenics-Wyeth Agreement; except,
in
each case, to the extent caused by [*].
| 5. |
Termination
of the University Agreement
|
5.1. Termination
Not Caused by Progenics Default
| 5.1.1. |
Direct
License to Progenics. During
the term of the Progenics-Wyeth Agreement and solely for the purpose
of
maintaining the continuity of the license granted by ProNev to Progenics
of the UR Labs-Progenics Agreement, in the event that the University
License Agreement is terminated for any reason other than as a result
of
Progenics’ uncured material breach of the UR Labs-Progenics Agreement (a
“Progenics
Non-Defaulting Termination”),
subject to the occurrence of the Progenics Non-Defaulting Termination,
the
University hereby grants and agrees to grant to Progenics a direct
license
under the University Patents and University Know-How, which license
shall
be on the terms and conditions of the University Agreement (as amended)
and this Agreement. Furthermore, in such event, the license granted
by the
University to Progenics under this
|
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
22
Section
5.1.1 shall remain in effect for the duration of the license granted by
Progenics to Wyeth under the Progenics-Wyeth Agreement. ProNev and Progenics
hereby consent to the University’s grant of such a license to Progenics. For
purposes of this Section, the University Agreement shall be deemed terminated
on
either (i) the date of termination pursuant to the University Agreement after
giving effect to any cure or grace periods, or (ii) in the event ProNev
initiates litigation or arbitration challenging the existence of a termination
event, the date of a final determination of termination by a court of competent
jurisdiction or binding arbitration panel.
| 5.1.2. |
Termination
of Direct License to Progenics. In
the event that the sublicense granted by ProNev to Progenics under
the UR
Labs-Progenics Agreement is terminated, in whole or in part, for
an
uncured material breach thereof caused by Progenics, the license
granted
by the University to Progenics under Section 5.1.1 shall likewise
be
automatically terminated to the same
extent.
|
| 5.1.3. |
Payments
in the Event of Progenics Non-Defaulting Termination.
In
consideration of the direct license granted by the University to
Progenics
under Section 5.1.1, in the event of a Progenics Non-Defaulting
Termination of the University Agreement, Progenics shall pay to the
University any payments which ProNev would have been required to
pay to
the University under the University Agreement (had the University
Agreement remained in effect) in connection with the sublicense of
the
University Patents and University Know-How under the Progenics-Wyeth
Agreement at such times such payments would have otherwise become
due
under the University Agreement. Progenics shall be entitled to deduct
any
amount paid to the University under this Section
5.1.2 from any amounts that Progenics owes to ProNev under the UR
Labs-Progenics Agreement.
|
| 5.1.4. |
Restatement
of License Agreement. In
the event of a Progenics Non-Defaulting Termination of the University
Agreement, at Progenics’ or the University’s request, Progenics and the
University shall enter into an agreement memorializing and restating
the
direct license granted to by the University to Progenics under Section
5.1
on the terms and conditions provided for in this
Agreement.
|
5.2. Termination
Caused by Progenics.
| 5.2.1. |
Direct
License To Wyeth. Solely
for the purpose of maintaining the continuity of the license granted
by
Progenics to Wyeth pursuant to the
|
[*]
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23
Progenics-Wyeth
Agreement, in the event that (a) the University License Agreement is terminated
as a result of Progenics’ uncured material breach of the UR Labs-Progenics
Agreement that was not, in turn, caused by Wyeth’s uncured material breach of
the Progenics-Wyeth Agreement or (b) there has been a Progenics Non-Defaulting
Termination of the University Agreement but the license granted in Section
5.1.1
above is subsequently terminated for any reason other than as a result of
Wyeth’s uncured breach of the Progenics-Wyeth Agreement (each of (a) and (b) a
“Wyeth
Non-Defaulting Termination”),
subject to the occurrence of the Wyeth Non-Defaulting Termination, the
University hereby grants and agrees to grant to Wyeth a direct license under
the
University Patents and University Know-How on the terms and conditions of
the
University Agreement (as amended) and this Agreement. Furthermore, in such
event, the licenses granted by the University to Wyeth under this Section
5.2.1
shall remain in effect for the duration of the license granted by Progenics
to
Wyeth under the Progenics-Wyeth Agreement. UR Labs and Progenics hereby consents
to the University’s grant of such a license to Wyeth. For purposes of this
Section, the University Agreement or the license granted in Section 5.2 shall
be
deemed terminated on either (i) the date of termination pursuant to the relevant
agreement after giving effect to any cure or grace periods, or (ii) in the
event
the Progenics initiates litigation or arbitration challenging the existence
of a
termination event, the date of a final determination of termination by a
court
of competent jurisdiction or binding arbitration panel.
| 5.2.2. |
Termination
of Direct License to Wyeth. In
the event that the sublicense granted by Progenics to Wyeth under
the
Progenics-Wyeth Agreement is terminated in whole or in part, for
an
uncured material breach thereof caused by Wyeth, the license granted
by
the University to Wyeth under Section 5.2.1 shall likewise be
automatically terminated to the same
extent.
|
| 5.2.3. |
Payments
in the Event of Wyeth Non-Defaulting Termination. In
consideration of the direct license granted by University to Wyeth
under
Section 5.2.1,
in the event of a Wyeth Non-Defaulting Termination of the University
Agreement or the license granted under Section 5.1.1,
Wyeth shall pay to the University any and all payments which ProNev
would
have been required to pay to the University under the University
Agreement
(had the University Agreement remained in effect) in connection with
the
sublicense of the University Patents and University Know-How under
the
Progenics-Wyeth Agreement at such times as such payments would have
otherwise become due under the University Agreement. Wyeth shall
be
entitled to deduct any amount paid to the University under this Section
5.2.3
from any amounts that Wyeth owes to Progenics under the Progenics-Wyeth
Agreement.
|
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
24
| 5.2.4. |
Restatement
of License Agreement. In
the event of a Wyeth Non-Defaulting Termination of the University
Agreement or the license granted under Section 5.1.1,
at Wyeth’s request, Wyeth and the University shall enter into an agreement
memorializing and restating the direct license granted to by the
University to Wyeth under Section 5.2
on
the terms and conditions provided for in this Agreement.
|
| 6. |
Miscellaneous
Provisions
|
6.1. Prior
Agreements.
In the
event of a conflict between this Agreement and any provision of the University
Agreement, the UR Labs-Progenics Agreement, or the 2001 Letter Agreement
(collectively the “Prior
Agreements”),
then
this Agreement will control. To the extent the provisions in this Agreement
conflict with a provision of any Prior Agreement, then such prior agreement
shall be and hereby is amended to render it consistent with this Agreement.
However, except as set forth in this Agreement, the Prior Agreements remain
in
full force and effect.
6.2. Further
Assurances. At
the
request and expense of any other party hereto, each party hereto will cooperate
in any reasonable effort to carry out the intentions of this Agreement,
including, without limitation, providing such further assurances, and executing
such further consents, agreements, and releases, as are reasonably required
by
the requesting party to allow it to fully enjoy the benefits of this
Agreement.
6.3. Successors
and Assigns. This
Agreement shall be binding upon and inure to the benefit of the parties hereto,
their successors and permitted assigns.
6.4. Amendments.
This
Agreement may be amended or modified at any time or from time to time only
by an
express written agreement, signed by all parties to this Agreement, and which
expressly refers to this Agreement.
6.5. Waivers.
The
failure of any party to require performance by another party of any provision
hereof, or to enforce any remedies it may have against such other party,
shall
in no way affect the right thereafter to enforce this Agreement and require
full
performance by any other party. The waiver by a party of any breach of any
provision of this Agreement shall not constitute a waiver of any succeeding
breach of that provision or of any other provision.
6.6. Severability.
If
any
provision of this Agreement shall be adjudicated to be invalid or unenforceable
in any action or proceeding for any reason, whether in its entirety or in
any
portion, then such part shall be deemed amended, if possible, or
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25
deleted,
as the case may be, from this Agreement in order to render the remainder
of this
Agreement and any provision hereof both valid and enforceable.
6.7. Entire
Agreement. This
Agreement, together with the University Agreement, the UR Labs-Progenics
Agreement and the Progenics-Wyeth Agreement, constitutes the entire agreement
between the parties with respect to the subject matter hereof.
6.8. Counterparts.
This
Agreement may be executed in any number of counterparts which taken together
shall constitute one and the same instrument.
6.9. Governing
Law. All
matters affecting the interpretation, validity and performance of this Agreement
shall be governed by the laws the
state
of New York.
6.10. Independent
Contractors. In
the
performance of this Agreement no party is authorized or empowered to act
as
agent for any other party for any purpose and shall not on behalf of any
other
party enter into any contract, warranty, or other representation as to any
matter. No party shall be bound by the acts, conduct, obligations,
representations or warranties of any other party.
[Signature
page follows.]
[*]
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IN
WITNESS WHEREOF, the
parties hereto have caused this Agreement to be executed by their duly
authorized officers.
The
University of Chicago Wyeth,
acting through
its
Wyeth
On
Behalf
of itself and its Affiliate, Pharmaceuticals
Division
ARCH
Development Corporation
By:_/s/
AEP
Thomas________________ By:_/s/
Xxxx
X. Lee__________
Name: _AEP
Thomas_______________ Name: _Mark
L. Lee_________
Title: _Director,
Office of Technology& Title: _Senior
Vice President-Global
Intellectual
Property_______ Business
Development______
Progenics
Pharmaceuticals Nevada, Inc. Progenics
Pharmaceuticals, Inc.
By:_/s/
Xxxx
X. Baker_______ By:_/s/
Xxxx
X. Baker________
Name: _Mark
R. Baker________ Name: _Mark
R. Baker_________
Title: _Secretary_____________ Title: _Senior
Vice President &
General
Counsel_______
[*]
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27
SCHEDULE
2.10
UNIVERSITY
PATENTS
[*]
[*]
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28
EXHIBIT
A
PROGENICS
GUARANTEE
[*]
[*]
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PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
