LICENSE AND SUBLICENSE AGREEMENT
Exhibit
10.90
Certain
confidential information contained in this document, marked by brackets
and the
word "REDACTED" ([REDACTED]),
has
been omitted and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
Amended.
THIS
LICENSE AND SUBLICENSE AGREEMENT (“AGREEMENT”) is made this 12th day of
September, 2005 by and between PROMEGA CORPORATION, a corporation organized
and
existing under the laws of the State of Wisconsin and with principal
offices
located at 0000 Xxxxx Xxxxxx Xxxx, Xxxxxxx, Xxxxxxxxx, 00000 ("LICENSOR")
and
Gene Logic Inc., a corporation organized and existing under the laws
of the
State of Delaware with principal offices located at 000 Xxxxxxxxxxxx
Xxxxx,
Xxxxxxxxxxxx, XX 00000 (“LICENSEE”) (each a “Party”, and together the “Parties”
herein).
WHEREAS
LICENSOR is exclusive licensee for a defined “Exclusive Field of Use” as that
term is defined in the License Agreement from the Regents of the University
of
California ("UC Regents") dated June 1, 2003, of specified rights in
United
States Patent Nos. 5,583,024 which issued December 10, 1996; 5,674,713
which
issued October 7, 1997; and 5,700,673 which issued December 23, 1997;
(there
being no foreign patent applications or issued patents corresponding
thereto)
and in the inventions described and claimed therein (collectively, “UC Regents’
Patents”); and
WHEREAS
LICENSOR, by letter agreement with UC Regents dated August 22, 2005 and
in
conjunction with its rights under the June 1, 2003 License Agreement
(such
documents may be referred to collectively hereafter as the “UC REGENTS
AGREEMENT”), is authorized to sublicense UC Regents’ Patents under the terms and
conditions set forth herein;
WHEREAS
LICENSOR is owner by assignment from the inventors of their entire right,
title
and interest in United States Patent Nos. 5,670,356
which issued September 23, 1997; 6,552,179 which issued April 22, 2003;
and
6,387,675 which issued May 14, 2002 and
additional pending patent applications and the foreign patent applications
corresponding thereto (“Promega’s Patents”); and
WHEREAS
LICENSEE wishes to: a) obtain a non-exclusive sublicense in the TERRITORY
under
the FIELD OF USE to practice the UC Regents’ Patents in conjunction with
offering and performing LICENSED SERVICES to third parties, and using
LICENSED
PRODUCTS and LICENSED METHODS in its own internal research; and b) obtain
a
non-exclusive license in the TERRITORY under the FIELD OF USE to practice
the
Promega Patents in conjunction with offering and performing LICENSED
SERVICES to
third parties, and using LICENSED PRODUCTS and LICENSED METHODS in its
own
internal research; and
WHEREAS
LICENSOR wishes to grant such license and sublicense to LICENSEE in accordance
with the terms of the Agreement.
NOW,
THEREFORE in consideration of the foregoing premises, the Parties agree
as
follows:
| 1. |
DEFINITIONS
|
1.1
EFFECTIVE
DATE is the date first set forth above.
1.2
FIELD
OF
USE means research use in LICENSEE’s own facilities in Acellular and Cellular
Luminescent Assays. As used in this definition, “research use” includes
LICENSEE’s performance of LICENSED SERVICES, provided at all times that
specifically excluded from the FIELD OF USE are any and all diagnostic,
entertainment, quality control, and therapeutic uses.
1.3
LICENSED
METHOD means any process, art or method that is covered by methods claims
in the
LICENSED PATENT RIGHTS, or the use or practice of which, but for the
license
granted in this Agreement, would infringe or contribute to the infringement
of
(pursuant to 35 U.S.C. §271(c)), or induce the infringement of (pursuant to 35
U.S.C. §271(b)), any LICENSED PATENT RIGHTS, when used in conjunction with
LICENSED PRODUCTS. LICENSED METHOD does not permit use of the method
claims in
the LICENSED PATENT RIGHTS with luciferases other than those contained
in the
LICENSED PRODUCTS.
1.4
LICENSED
PATENT RIGHTS means the VALID CLAIMS of: (i) to the extent assigned to
or
otherwise obtained by the UC Regents and licensed to LICENSOR, the UC
Regents’
Patents set forth as in Appendix A attached to this Agreement and made
a part
hereof; and (ii) the Promega Patents set forth in Appendix A. Also included
in
this definition are the VALID CLAIMS of any continuations, continuations
in
part, divisionals, reissues, reexaminations, extensions and substitutions.
1.5
LICENSED
PRODUCT means products
that, fall within the scope of the LICENSED PATENT RIGHTS, and: (a) comprise
stand-alone LICENSED TECHNOLOGY; (b) are whole, live cells transiently
transfected with the LICENSED TECHNOLOGY; and/or (c) are whole, live
cells
stably transfected with the LICENSED TECHNOLOGY.
1.6
LICENSED
TECHNOLOGY shall mean LICENSOR’S pGL-2, pSP-luc+NF
Fusion, pGL-3, pGL-4, Rapid Response™ and Chroma-Luc™ Vectors and any derivative
vectors modified by the insertion of cloned eukaryotic gene sequences.
No
modifications of the luciferase gene sequence in any of these vectors
included
within LICENSED TECHNOLOGY is allowed or included. If the LICENSOR makes
improvements to the luciferase genes included within LICENSED TECHNOLOGY
and
these improved genes are sold or licensed to third parties by the LICENSOR,
these improvements may be included within the LICENSED TECHNOLOGY at
the request
of LICENSEE.
1.7
LICENSED
SERVICE means LICENSEE’s use of the LICENSED METHODS or LICENSED PRODUCTS on
behalf of a third party in exchange for monetary or other consideration,
and for
the purpose of the detection or quantitation of luminescence in: (1)
Acellular
Luminescent Assays, where such assays detect or quantitate luciferase
activity
in
vitro
in reaction
mixtures lacking whole cells, and in lysed-cell assays; and/or (2) Cellular
Luminescent Assays, where such assays detect or quantitate luciferase
activity
in
vivo
in whole
cells, including without limitation cells, tissues, organs, or whole
animals.
For the purposes of this Agreement, Acellular Luminescent Assay shall
mean use
involving the imaging or luminescent assay of acellular in
vitro
samples
and lysed cell samples lysed and assayed by the addition of reagents,
and
Cellular Luminescent Assay shall mean use involving the imaging of luminescence
from intact cells, tissues, organs, and rats or mice.
1.8
TERM
shall mean the period from the EFFECTIVE DATE to the date of expiration
or
abandonment of the last of the VALID CLAIMS of LICENSED PATENT
RIGHTS.
1.9
TERRITORY
means worldwide.
1.10
VALID
CLAIM means a claim of a patent that (i) has not expired; (ii) has not
been
disclaimed; (iii) has not been cancelled or superseded, or if cancelled
or
suspended, has been reinstated; (iv) has not been admitted to be invalid
or
unenforceable through reissue or otherwise; and (v) has not been revoked,
held
invalid, or otherwise declared unenforceable or not allowable by a tribunal
or
patent authority of competent jurisdiction over such claim from which
no further
appeal has or may be taken.
| 2. |
LICENSE
GRANT
|
2.1
As
used
in this Section 2.1 and elsewhere in this AGREEMENT, LICENSOR’s grant of a
“license” to LICENSEE is understood to include both a license to part of the
LICENSED PATENT RIGHTS it owns or controls and a sublicense to the extent
that
LICENSOR is sublicensing certain of the LICENSED PATENT RIGHTS. LICENSOR
hereby
grants to LICENSEE, and LICENSEE accepts, subject to the terms and conditions
hereof and in particular the provisions set forth elsewhere in this Article
2
(LICENSE GRANT), a non-exclusive, royalty-bearing license in the TERRITORY
under
LICENSED PATENT RIGHTS to: (i) offer and perform LICENSED SERVICES in
the
TERRITORY, in the FIELD OF USE, during the TERM; (ii) to transmit results
and
data relating to such LICENSED SERVICES to LICENSEE’s contracting customers;
and, (iii) to use LICENSED PRODUCTS and LICENSED METHODS, in the FIELD
OF USE,
in LICENSEE’S own internal research. No other rights are granted, including the
right to: (i) modify, alter or mutate the luciferase gene sequence of
the
LICENSED TECHNOLOGY for incorporation into, or occurring in, any LICENSED
PRODUCT and/or (ii) sell or transfer a LICENSED PRODUCT to any third
parties.
Furthermore, LICENSEE shall have no right to issue sublicenses.
2.2
To
the
extent that certain of the LICENSED PATENT RIGHTS fall under UC REGENTS’ PATENTS
and are being sublicensed by LICENSOR, such sublicense granted hereunder
shall
be subject to the overriding obligations to the U.S. Government set forth
in 35
U.S.C. 200-212 and applicable governmental implementing
regulations.
2.3
LICENSEE
is hereby informed that the UC Regents expressly has reserved the right
to make
and to use the inventions licensed by it to LICENSOR under the LICENSED
PATENT
RIGHTS for educational and research purposes, but not sale in the FIELD
OF
USE.
2.4
Notwithstanding
any provision of Article 13 to the contrary, LICENSOR is obligated and
is hereby
expressly permitted to provide UC Regents with a copy of this
Agreement.
2.5
Pursuant
to the UC REGENTS AGREEMENT, upon termination of the UC REGENTS AGREEMENT
for
any reason other than as a result of expiration of the underlying UC
Regents’
Patents, this Agreement shall automatically be terminated. LICENSOR shall
use
its best efforts to provide no less than ninety (90) days prior written
notice
of any such termination so as to allow LICENSEE to obtain separate licenses
from
LICENSOR and UC Regents as necessary. In the event the termination of
the UC
REGENTS AGREEMENT is due to a breach by LICENSOR and not directly caused
by any
improper act or omission of LICENSEE, LICENSOR shall use its best efforts
to
offer to LICENSEE a license for the PROMEGA PATENTS that reflects:
| (a) |
commercial
terms generally consistent with the terms herein as they relate
to the
Promega patents, and
|
| (b) |
LICENSEE’s
actual costs in obtaining and maintaining rights to the UC REGENTS
PATENTS,
|
such
that
LICENSEE shall not be materially and negatively impacted (i.e. worse
off) by
having two separate licenses when compared to the terms of this
AGREEMENT
| 3. |
ROYALTIES
AND OTHER CONSIDERATION
|
3.1
In
consideration for the license granted herein, LICENSEE shall pay to LICENSOR
a
license issue fee of [REDACTED] dollars ($[REDACTED] U.S.) within thirty
(30)
days of the EFFECTIVE DATE of the Agreement. Such payment shall cover
the first
year’s Annual License Maintenance Fee under the Agreement required to be paid
under Section 3.2 below. This license issue fee is non-refundable and
non-cancelable.
3.2
LICENSEE
shall pay to LICENSOR an Annual License Maintenance Fee of [REDACTED]
dollars
($[REDACTED] U.S.) beginning on or before each corresponding anniversary
of the
Agreement. Such payment is non-refundable and non-cancelable.
3.3
LICENSEE
shall pay to LICENSOR non-creditable royalties for LICENSEE’s Acellular and
Cellular Luminescent Assays under the following circumstances: In the
event
LICENSEE uses Luminescent Assay Reagents not purchased by LICENSEE from
LICENSOR
or its authorized distributor, LICENSEE shall pay [REDACTED] for each
attempted
light-yielding determination of the presence or activity of luminescent
proteins
of the LICENSED TECHNOLOGY made by LICENSEE. For clarity, the phrase
“Luminescent Assay Reagents” means the solutions (including substrates, buffers
and all other reagents) which, when added to luminescent proteins, provide
the
necessary environment, or enhance the existing environment, in which
said
luminescent proteins will give off luminescence. However, LICENSEE shall
make no
royalty payment to LICENSEE for each attempted light-yielding determination
of
the presence or activity of luminescent proteins of the LICENSED TECHNOLOGY
made
by LICENSEE when using Luminescent Assay Reagents purchased from LICENSOR
or its
authorized distributor.
3.4 In
the
event that any patent or claim thereof included within the LICENSED PATENT
RIGHTS is held invalid in a final decision by a court of competent jurisdiction
and last resort and from which no appeal has or can be taken, then all
obligation to pay royalties based on that patent or claim or any claim
patentably indistinct therefrom will cease as of the date of final decision.
The
LICENSEE will not, however, be relieved from paying any royalties that
accrued
before such final decision, except as the court may otherwise direct,
and the
LICENSEE shall be obligated to pay the full amount of royalties due hereunder
to
the extent that a LICENSED SERVICE is covered by one or more remaining
VALID
CLAIMS within the LICENSED PATENT RIGHTS.
| 4. |
PAYMENTS
AND REPORTS
|
4.1
LICENSEE
shall make annual royalty reports to LICENSOR on or before September
1 of each
calendar year. Each such royalty report will cover LICENSEE's most recently
completed year and will, at a minimum, show the number of light-yielding
determinations of the presence or activity of the luminescent proteins
of the
LICENSED TECHNOLOGY attempted by LICENSEE using Luminescent Assay Reagents
not
purchased from LICENSOR. Such report shall be accompanied by a calculation
of
the royalties owed pursuant to Paragraphs 3.2 and 3.3 and payment of
said
calculated royalties.
4.2
LICENSEE’s
written annual report provided under Paragraph 4.1 shall in each instance
indicate whether LICENSEE is using Luminescent Assay Reagents purchased
from
LICENSOR pursuant to Paragraph 3.3, in which case the report shall indicate
that
no royalty payments are owed to LICENSOR. In the event that LICENSEE
has
purchased its requirements for Luminescent Assay Reagents from LICENSOR
for
LICENSEE’s attempted light-yielding determinations of the presence or activity
of luminescent proteins under the Agreement during said preceding calendar
year,
LICENSEE shall have no royalty payment obligation and LICENSEE’s report required
under Section 4.1 shall so state.
4.3
Each
royalty report under this Article 4 shall be accompanied by LICENSEE’s payments
due to LICENSOR pursuant to Paragraphs 3.2 and 3.3 above, if required.
All
payments due hereunder shall be payable in United States Dollars. Conversion
of
foreign currency to U.S. Dollars shall be made at the conversion rate
existing
in the United States as reported in the Wall
Street Journal
on the
last working day of each royalty reporting period.
4.5
LICENSEE
shall maintain at its principal office usual books of account and records
showing its actions under this Agreement. Such books and records shall
be open
to inspection and copying, upon reasonable notice during usual business
hours by
an independent certified public accountant reasonably acceptable to LICENSEE
for
three (3) years after the calendar year to which they pertain, for purposes
of
verifying the accuracy of the royalties paid by LICENSEE under this Agreement.
The fees and expenses of LICENSOR’s representatives performing such examination
shall be borne by LICENSOR. However, if an error in the reporting of
expenses or
proceeds of more than five percent (5%) for any annual reporting period
is
discovered, then the fees and expenses of these representatives shall
be borne
by LICENSEE. LICENSOR and any such independent certified public accountant
shall
treat LICENSEE's books and records as confidential.
4.6
In
the
event that payments made by LICENSEE to LICENSOR are late, LICENSEE shall
pay to
LICENSOR interest charges at a rate of [REDACTED] percent ([REDACTED]%)
per
month. Such interest will be calculated from the date payment was due
until
actually received by LICENSOR.
| 5. |
PRODUCT
MARKING
|
LICENSEE
shall xxxx on marketing brochures and its website specifically identifying
the
LICENSED PRODUCTS used in LICENSED SERVICES sold under the terms of this
Agreement with the following language:
Luciferase
Technology licensed from Promega Corporation under U.S. Xxx. Nos. 5,670,356,
6,552,179, 6,387,675 and related patents and patent applications.
| 6. |
Infringement
|
LICENSOR
is under no obligation whatsoever to enforce its rights under the LICENSED
PATENT RIGHTS and shall have the right to do so at its sole discretion.
| 7. |
LIFE
OF THE AGREEMENT
|
7.1 Unless
otherwise terminated by an operation of law or by acts of the parties
in
accordance with the terms of this Agreement, this Agreement shall be
in force
during the TERM hereof.
7.2 If
either
party to this Agreement fails to perform or violates any term or covenant
of
this Agreement, then the other party may give written notice of such
default
(“Notice of Default”). If the party receiving such Notice of Default fails to
repair such default within sixty (60) days after the effective date of
such
notice, then the other party will have the right to immediately terminate
this
Agreement by providing a written notice of termination (“Notice of Termination”)
to the other party. Notwithstanding the foregoing, LICENSEE has the right
at any
time to terminate this Agreement by providing a Notice of Termination
to
LICENSOR. Termination of this Agreement will be effective sixty (60)
days from
the date of such notice.
7.3
Termination
of this Agreement for any reason whatsoever shall not excuse LICENSEE
from
paying to LICENSOR any required royalties or payments pursuant to Article
3
(ROYALTIES AND OTHER CONSIDERATION) herein prior to the effective date
of such
termination and all royalties and payments thus earned, but unpaid, shall
immediately become due and payable.
7.4
This
Agreement will automatically terminate without the obligation to provide
sixty
(60) days notice as set forth in Paragraph 7.2 upon the filing of a petition
for
relief under the United States Bankruptcy Code by or against the LICENSEE
as a
debtor or alleged debtor.
7.5
If
applicable LICENSED PATENT RIGHTS exist at the time of any provision,
sale,
offer for sale, or import of a LICENSED SERVICE, then pursuant to the
terms of
Section 3.3, any required royalties shall be paid at the times provided
herein
and pursuant to Section 4.1, any required royalty reports shall be rendered
in
connection therewith, notwithstanding the absence of applicable LICENSED
PATENT
RIGHTS with respect to such LICENSED SERVICES at any later time. Otherwise,
no
royalties shall be paid on such LICENSED SERVICE.
7.7
Upon
termination of this Agreement, the following provisions shall survive
the
termination of this Agreement: 4 (PAYMENTS AND REPORTS), 7 (LIFE OF THE
AGREEMENT), 9 (LIMITED WARRANTY), 10 (COMPLIANCE WITH GOVERNMENTAL OBLIGATIONS),
12 (NOTICE), 13 (CONFIDENTIALITY), 15 (INDEMNIFICATION) and 16 (MISCELLANEOUS)
herein.
| 8. |
BREACH
AND CURE
|
8.1
In
addition to applicable legal standards, LICENSEE shall be in material breach
of
this Agreement for failure to pay required royalties pursuant to Article
3
(ROYALTIES AND OTHER CONSIDERATION).
8.2
Either
party shall have the right to cure its material breach. The cure shall
be
effected within a reasonable time but in no event later than sixty (60)
days
after written notice of breach as set forth in Paragraph 7.2.
8.3
LICENSOR
or UC Regents (to the extent that it is a third party beneficiary of this
Agreement) have the right, individually or together, to pursue action for
any
breach by LICENSEE of this Agreement, provided however that UC Regents’ rights
shall not extend beyond benefits conferred upon it herein.
| 9. | LIMITED WARRANTY |
9.1
LICENSOR
represents and warrants that it has the lawful right to grant this
license.
9.2
THIS
LICENSE AND
LICENSED
PATENT RIGHTS ARE
PROVIDED
WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY
OTHER
WARRANTY, EXPRESS OR IMPLIED. LICENSOR MAKES NO REPRESENTATION OR WARRANTY
THAT
THE LICENSED PRODUCT, LICENSED SERVICE OR LICENSED METHOD WILL NOT INFRINGE
ANY
PATENT (OR OTHER PROPRIETARY RIGHT OF ANY THIRD PARTY).
9.3
IN
NO
EVENT WILL LICENSOR BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL
DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF THE INVENTION
OR
LICENSED PRODUCT.
9.4
Nothing
in this Agreement shall be construed as:
| (a) |
a
warranty or representation, express or implied, by LICENSOR as
to the
validity, enforceability, or scope of the LICENSED PATENT RIGHTS;
or
|
| (b) |
a
warranty or representation, express or implied, that anything
made, used,
sold or otherwise disposed of under any license granted in this
Agreement
is or will be free from infringement of patents of third parties;
or
|
| (c) |
an
obligation to bring or prosecute actions or suits against third
parties
for patent infringement; or
|
| (d) |
conferring
by implication, estoppel or otherwise any license or rights under
any
patents of LICENSOR other than the LICENSED PATENT RIGHTS as
defined
herein, regardless of whether such patents are dominant or subordinate
to
the LICENSED PATENT RIGHTS; or
|
| (e) |
an
obligation by LICENSOR to furnish know-how, technology or information
other than that provided in the LICENSED PATENT RIGHTS
|
| 10. | COMPLIANCE WITH GOVERNMENTAL OBLIGATIONS |
LICENSEE
shall comply with all governmental requests directed to it relating to
LICENSED
SERVICES and will provide all information and assistance necessary to comply
with the governmental requests. Failure to take necessary action and to
comply
with said requests shall be considered a material breach of this Agreement,
LICENSOR disclaims any obligations or liabilities arising under the license
provisions of this Agreement if LICENSEE is charged in a governmental action
for
not complying with or fails to comply with any governmental
regulations.
| 11. | PUBLICITY |
11.1 Any
public announcements regarding the existence or terms of this Agreement
shall be
coordinated between LICENSOR and LICENSEE and shall be made only by mutual
written agreement.
11.2 Except
as
required in Article 5 herein, nothing contained in this Agreement shall
be
construed as conferring any right to use in advertising, publicity, or
other
promotional activities any name, trade name, trademark, or other designation
of
the Parties hereto, including the UC Regents (including contraction,
abbreviation or simulation of any of the foregoing). Unless required by
law, the
use by LICENSEE of the name, “The Regents of the University of California” or
the name of any campus of the University of California is expressly
prohibited.
| 12. |
NOTICE
|
Any
notices given under this Agreement shall be in writing and sent to the
respective party at such party’s address as follows:
|
if
to LICENSOR, to:
|
Attention: General Counsel
Promega
Corporation
0000
Xxxxx Xxxxxx Xxxx
Xxxxxxx,
Xxxxxxxxx 00000-0000
|
| if to LICENSEE, to: | Attention: General Counsel
000
Xxxxxxxxxxxx Xxxxx
Xxxxxxxxxxxx,
Xxxxxxxx 00000
|
Any
notice shall be deemed to have been given (i) when delivered in person,
(ii) one
business day after deposit with a nationally recognized overnight courier
service, (iii) five (5) business days after being deposited in the United
States
mail postage prepaid, first class, registered or certified mail or (iv)
the
business day on which it is sent and received by facsimile
transmission.
| 13. |
CONFIDENTIALITY
AND TRANSFER OF MATERIAL
|
Each
Party may have or will receive confidential information from the other
Party.
Each Party shall not disclose, or otherwise make available to any third
party,
confidential information received from the other Party without the prior
written
permission of the disclosing Party; provided, however, that the obligations
of
confidentiality hereunder shall apply only to information which has been
designated in writing as "confidential" or, if orally disclosed, reduced
to
writing within thirty (30) days from the date of disclosure and designated
as
"confidential." Further, the obligations of confidentiality hereunder shall
not
apply to any information which can be demonstrated to:
|
(i)
|
have
been known to the Party receiving the information prior to
receipt thereof
from the other Party;
|
|
(ii)
|
have
been or have become a matter of public information or publicly
available
through no act or failure to act on the part of the Party receiving
the
information;
|
|
(iii)
|
have
been acquired by the Party receiving the information from a
third party
entitled to disclose the information to it;
|
|
(iv)
|
have
been developed by the Party receiving the information without
reference to
the information; or
|
|
(v)
|
be
required to be disclosed by law or court or governmental order,
provided
that the party required to disclose the other party’s information shall
notify such other party and cooperate with any effort of the
other party
to limit disclosure to the extent
permitted.
|
| 14. |
FORCE
MAJEURE
|
14.1 The
parties to this Agreement shall be excused from any performance
required
hereunder if such performance is rendered impossible or unfeasible
due to any
catastrophes or other major events beyond their reasonable control,
including,
without limitation, terrorism, war, riot, and insurrection; laws,
proclamations,
edicts, ordinances or regulations; strikes, lock-outs or other
serious labor
disputes; and floods, fires, explosions, or other natural disaster.
When such
events have abated, the parties’ respective obligations hereunder shall
resume.
14.2 Either
party to this Agreement, however, will have the right to terminate this
Agreement upon thirty (30) days’ prior written notice if either party is unable
to fulfill its obligations under this Agreement due to any of the causes
specified in Paragraph 14.1 for a period of one (1) year.
|
15.
|
INDEMNIFICATION
|
15.1 LICENSEE
agrees to indemnify, hold harmless and defend LICENSOR, the UC Regents,
and
their respective officers, employees and agents; the sponsors of the research
that led to the Invention; and the inventors of patents and patent applications
in the LICENSED PATENT RIGHTS and their employers, against any and all
claims,
suits, losses, damage, costs, fees, and expenses resulting from or arising
out
of exercise of this license by LICENSEE. This indemnification will include,
but
will not be limited to, any product liability claims.
15.2 LICENSOR
promptly shall notify LICENSEE in writing of any liability or action in
respect
of which LICENSOR intends to claim such indemnification, and LICENSEE shall
have
the right to participate in, and, to the extent LICENSEE so desires, jointly
with any other indemnitor similarly noticed, to assume the defense thereof
with
counsel selected by LICENSEE; provided, however, that LICENSOR shall have
the
right to retain its own counsel, at its sole expense, if representation
of
LICENSOR by the counsel retained by LICENSEE would be inappropriate due
to
actual or potential differing interests between LICENSOR and any other
party
represented by such counsel in such proceedings. The indemnity agreement
in this
Article 15 shall not apply to amounts paid in settlement of any loss, claim,
damage, liability or action if such settlement is effected without the
consent
of LICENSEE, which consent shall not be withheld unreasonably. The failure
to
deliver notice to LICENSEE within a reasonable time after the commencement
of
any such action, if prejudicial to its ability to defend such action, shall
relieve LICENSEE of any liability to LICENSOR directly attributable to
such
failure to deliver notice. LICENSOR’s omission to deliver notice to LICENSEE
will not relieve it of liability that it may have to LICENSOR otherwise
than
under this Article 15. LICENSOR, its employees and agents, shall cooperate
fully
with LICENSEE and its legal representatives in the investigation and defense
of
any action, claim or liability covered by this indemnification.
15.3 It
is
acknowledged that LICENSEE has been performing certain activities prior
to the
EFFECTIVE DATE. LICENSOR, on behalf of itself and UC Regents, agrees to
hold
LICENSEE harmless from and against any and all liabilities arising from
such
activities infringing rights owned or otherwise controlled by LICENSOR
or the UC
REGENTS to the extent that LICENSEE’s activities would be constituted LICENSED
METHODS or LICENSED PRODUCTS or LICENSED SERVICES or otherwise employed
LICENSED
TECHNOLOGY in the FIELD OF USE prior to the EFFECTIVE DATE.
15.4 During
the term of this Agreement and for three (3) years following its termination
or
expiration, LICENSEE, at its sole cost and expense will obtain and maintain
the
following insurance (or an equivalent program of self insurance):
15.4.1 Commercial
Form General Liability Insurance with limits as follows: [REDACTED]
15.4.2 The
coverage and limits referred to in Paragraph 15.4.1 above will not in any
way
limit the liability of LICENSEE. Upon LICENSOR’s reasonable request, LICENSEE
will furnish LICENSOR with certificates of insurance evidencing compliance
with
all requirements.
15.5 LICENSOR
will promptly notify LICENSEE in writing of any claim or suit brought against
LICENSOR or the UC REGENTS for which LICENSOR or the UC REGENTS intends
to
invoke the provisions of this Article 15 (INDEMNIFICATION). LICENSEE will
keep
LICENSOR or the UC REGENTS informed of its defense of any claims pursuant
to
this Article 15 (INDEMNIFICATION).
| 16. |
MISCELLANEOUS
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16.1 The
headings of the several sections of this Agreement are inserted for convenience
of reference only and are not intended to be a part of or to affect the
meaning
or interpretation of this Agreement.
16.2
This
Agreement sets forth the entire agreement between the parties concerning
the
subject matter hereof and supersedes all previous agreements, written or
oral.
No amendment or modification hereof shall be valid or binding upon the
parties
unless made in writing and signed on behalf of each party by an authorized
representative.
16.3
This
Agreement, including the performance and enforceability hereof, shall be
governed by and construed in accordance with the laws of the State of
California.
16.4
This
Agreement shall be binding on the parties hereto and upon their respective
heirs, administrators, successors and assigns.
16.5
This
Agreement is personal to the LICENSEE. LICENSEE may not assign or transfer
this
Agreement,
including by operation of law,
without
LICENSOR’s prior written consent, which consent shall not be unreasonably
withheld. Any attempted assignment by the LICENSEE without the written
consent
of LICENSOR will be null and void. This Agreement is binding upon and will
inure
to the benefit of LICENSOR, its successors and assigns. Notwithstanding
the
foregoing, in the event that all or substantially all of LICENSEE’s assets used
in its drug repositioning business are acquired by a third party, then
this
agreement shall be fully assumable and transferable to that third party
and
shall inure to the benefit of that third party
16.6 This
Agreement shall not be binding upon the parties until it has been signed
below
on behalf of each party by an authorized representative, in which event,
it
shall be effective as of the EFFECTIVE DATE.
16.7 Should
any provision of this Agreement be held invalid, illegal or unenforceable
by a
court or other entity of competent jurisdiction, such provision shall be
considered void. All other provisions, rights and obligations shall continue
without regard to such provision.
16.8 No
failure or delay by either Party in exercising any of its rights or remedies
hereunder shall operate as a waiver thereof, nor shall any single or partial
exercise of any such right or remedy preclude any other or further exercise
thereof of any other right or remedy. The rights and remedies of the Parties
provided in this Agreement are cumulative and not exclusive of any rights
or
remedies provided by law.
16.9 The
relationship of LICENSEE and LICENSOR established by this Agreement is
that of
independent contractors, and nothing contained in this Agreement will be
construed to constitute the parties as partners, joint ventures, co-owners
or
otherwise as participants in a joint or common undertaking.
16.10 This
Agreement may be executed in counterparts, each of which shall be an original
and all of which together shall constitute one and the same
instrument.
16.11 If
this
Agreement or any associated transaction is required by the law of any nation
to
be either approved or registered with any governmental agency, LICENSEE
will
assume all legal obligations to do so. LICENSEE will notify LICENSOR if
it
becomes aware that this Agreement is subject to a United States or foreign
government reporting or approval requirement. LICENSEE will make all necessary
filings and pay all costs including fees, penalties and all other out-of-pocket
costs associated with such reporting or approval process.
16.12 LICENSEE
shall comply with all applicable international, national, state, regional
and
local laws and regulations in performing its obligations hereunder and
in its
use, manufacture, sale or import of the LICENSED PRODUCTS, LICENSED SERVICES
or
practice of the LICENSED METHOD. LICENSEE will observe all applicable United
States and foreign laws with respect to the transfer of LICENSED PRODUCTS
and
related technical data and the provision of LICENSED SERVICES to foreign
countries, including, without limitation, the International Traffic in
Arms
Regulations (ITAR) and the Export Administration Regulations. LICENSEE
shall
manufacture LICENSED PRODUCTS and practice the LICENSED METHOD in compliance
with applicable government importation laws and regulations of a particular
country for LICENSED PRODUCTS made outside the particular country in which
such
LICENSED PRODUCTS are used, sold or otherwise exploited.
|
16.13
|
This
Agreement includes the attached Appendix
A.
|
[The
Remainder of this page is intentionally left blank]
IN
WITNESS WHEREOF, the LICENSOR and LICENSEE have executed this Agreement
as of
the EFFECTIVE DATE.
|
LICENSOR:
PROMEGA CORPORATION
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|
|
By:
|
|
|
Name:
|
|
|
Title:
|
|
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LICENSEE:
GENE LOGIC INC.
|
|
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By:
|
|
|
Name:
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|
|
Title:
|
|
APPENDIX
A
LICENSED
PATENT RIGHTS
UC
Regents’ Patents
|
1.
|
US
Patent 5,583,024 “Recombinant expression of Coleoptera luciferase,”
XxXxxxx et al inventors, issued December 10, 1996, assigned
to the Regents
of the University of California and licensed exclusively
to Promega
Corporation.
|
|
2.
|
US
Patent 5,674,713 “DNA sequences encoding Coleoptera luciferase activity,”
XxXxxxx et al inventors, issued October 7, 1997, assigned
to the Regents
of the University of California and licensed exclusively
to Promega
Corporation.
|
|
3.
|
US
Patent 5,700,673 “Recombinantly produced Coleoptera luciferase and fusion
proteins thereof” XxXxxxx et al inventors, issued December 23, 1997,
assigned to the Regents of the University of California and
licensed
exclusively to Promega
Corporation.
|
There
are
no related pending applications thereof including divisionals, substitutions,
and continuation-in-part applications; nor are there any corresponding
foreign
applications or patents.
Promega
Patents
| 1. |
US
Patent 5,670,356 “Modified Luciferase,” Xxxxx et
al
inventors, issued September 23, 1997, assigned to Promega
Corporation.
|
| 2. |
US
Patent 6,552,179 “Mutant Luciferases” Wood et
al inventors,
issued April 22, 2003, assigned to Promega Corporation.
|
| 3. |
US
Patent 6,387,675 “Mutant Luciferases” Wood et
al inventors,
issued May 14, 2002, assigned to Promega Corporation.
|
| 4. |
US
Patent Application No. 10/664,341 “Rapidly Degraded Reporter Fusion
Proteins” Zdanovsky et
al
inventors, filed September 16, 2003, assigned to Promega
Corporation.
|
| 5. |
US
Patent Application No. 10/943,508 “Synthetic Nucleic Acid Molecule
Compositions and Methods of Preparation” Wood et
al inventors,
filed September 17, 2004, assigned to Promega Corporation.
|
| 6. |
US
Patent Application No. 09/645,706 “Synthetic Nucleic Acid Molecule
Compositions and Methods of Preparation” Wood et
al
inventors, filed August 24, 2000, assigned to Promega Corporation.
|
And
any
divisionals, substitutions, continuations-in-part or corresponding foreign
applications that may now be pending or may in the future be filed.
