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Exhibit 10.8
SUBLICENSE AGREEMENT
AGREEMENT made effective this 9th day of May, 1996
BY AND BETWEEN:
XXXXXXX & XXXXXXX, a company organized under the laws of the State of New
Jersey, U.S.A., and having executive offices at Xxx Xxxxxxx & Xxxxxxx Xxxxx, Xxx
Xxxxxxxxx, Xxx Xxxxxx 00000-0000 (hereinafter called "LICENSOR")
ON THE ONE HAND,
AND:
SANGAMO BIOSCIENCES, INCORPORATED, a company organized under Delaware law,
having an address at 000 Xxxxxx Xxxxxxx Xxxxxxx, Xxxxx 000, Xxxxxxx, XX 00000
(hereinafter called "LICENSEE")
ON THE OTHER HAND,
WITNESSETH:
A. WHEREAS, pursuant to Research and License Agreements dated May 1, 1982 and
January 1, 1987 (hereinafter collectively the "SCRIPPS AGREEMENTS") between
LICENSOR and SCRIPPS CLINIC AND RESEARCH FOUNDATION (hereinafter "SCRIPPS"),
SCRIPPS granted LICENSOR an exclusive option to obtain an exclusive
worldwide license (including the right to grant sublicenses) to certain
technology, including certain technology in the field of Zinc Finger Protein
Derivatives (hereinafter the "INVENTIONS"), and LICENSOR has exercised its
option thereunder;
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B. WHEREAS, patent applications have been filed in the United States and other
territories in the name of SCRIPPS for the granting of letters patent
relating to the said INVENTIONS, further described in Appendix 1 hereto; and
C. WHEREAS, LICENSOR desires that the INVENTIONS be developed and made
available to the public; and
D. WHEREAS, LICENSEE represents that it is presently engaged, or intends to be
engaged in the business of research, development, manufacturing and selling
products in fields related to the INVENTIONS; and
E. WHEREAS, LICENSEE wishes to make use of the INVENTIONS for the research,
development, manufacturing and selling of products and wishes to obtain
certain rights to the INVENTIONS under the terms and conditions hereinafter
set forth;
F. WHEREAS, LICENSOR is willing and able to grant such rights to LICENSEE;
NOW, THEREFORE, in consideration of the premises and the performance of the
covenants herein contained, IT IS AGREED AS FOLLOWS:
1. DEFINITIONS
For the purposes of this agreement (hereinafter called the "SUBLICENSE
AGREEMENT"), and solely for such purposes, the terms hereinafter set forth shall
have the following respective meanings:
(a) "AFFILIATE" or "AFFILIATES" shall mean any corporation(s) or organization(s)
which CONTROLS, is(are) directly or indirectly CONTROLLED by, or under
common control with LICENSEE.
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(b) "CONTROL", "CONTROL(S)" or "CONTROLLED" shall refer to direct or indirect
beneficial ownership of at least fifty percent (50%) of the voting stock
of a corporation or other business entity, or a fifty percent (50%) or
greater interest in the income of such corporation or other business
entity, or the power to direct or cause the direction of the management or
policies of such corporation or other business entity or policies of such
corporation or other business entity whether by ownership of voting
securities by contract or otherwise, or such other relationship as, in
fact, constitutes actual control.
(c) "EFFECTIVE DATE" shall mean the date at the head of this SUBLICENSE
AGREEMENT.
(d) "FDA" shall mean the United States Food and Drug Administration.
(e) "FIELD" shall mean the diagnoses, therapy or preventive treatment of
diseases in humans or animals.
(f) "IND" shall mean an Investigational New Drug Application filed pursuant to
the requirements of the FDA as more fully defined in 21 C.F.R. Section
312.3 or its equivalent in any country of the European Economic Community.
(g) "LICENSED PRODUCT" shall mean any product the manufacture, USE or SALE of
which is covered by a VALID CLAIM of the PATENT RIGHTS or that is SOLD by
LICENSEE or an AFFILIATE under conditions or circumstances which, if
unlicensed, would amount to infringement or contributory infringement or
inducement of infringement of the PATENT RIGHTS.
(h) "NDA" shall mean a New Drug Application filed with the United States Food
and Drug Administration under 21 USC 355(b)(FDCA Section 505(b)) or its
equivalent filed with the Health Regulatory Authorities in other countries
or jurisdictions.
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(i) "NET SALES VALUE" shall mean that sum determined by deducting from the
gross amount billed and collected by the SELLER (LICENSEE, SUBLICENSEE or
AFFILIATE) in an arms length transaction to customers that are not
AFFILIATES of the SELLER;
(i) transportation charges or allowances, including freight pickup
allowances, and packaging costs, if any;
(ii) trade, quantity or cash discounts, service allowances and independent
broker's or agent's commissions, if any, allowed or paid;
(iii) credits or allowances for the LICENSED PRODUCT, if any, given or made
on account of price adjustments, returns, bad debts, off-invoice
promotional discounts, rebates, chargebacks, any and all federal,
state or local government rebates or discounts whether in existence
now or enacted at any time during the term of this SUBLICENSE
AGREEMENT, volume reimbursements, the gross amount billed and
collected for rejected LICENSED PRODUCT or LICENSED PRODUCT subject
to recall or destruction (voluntarily made or requested or made by an
appropriate government agency, sub-division or department); and
(iv) any tax, excise or other governmental charge upon or measured by the
production, sale, transportation, delivery or use of the LICENSED
PRODUCT;
in each case determined in accordance with generally accepted accounting
practices.
(j) "PATENT RIGHTS" shall mean the patents and patent applications identified
in Appendix 1 hereof, and in respect of such letters patent, and patent
applications, all corresponding national patents and patent applications,
European Patent Convention applications or applications under similar
administrative international conventions, patent applications in the
listed or designated countries, together with any divisional,
continuation, continuation-in-part, substitution, reissue, extension,
supplementary protection certificate or other application based thereon.
(k) "SELLER" shall mean one who SELLS.
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(l) "SOLD", "SALE", "SALES", "SELL", "SELLING", and "SELLS" shall refer to the
act of selling or disposing of for value.
(m) "SUBLICENSEE" shall mean a third party other than an AFFILIATE to whom
LICENSEE has extended a further sublicense in accordance with Article 2(b)
hereunder.
(n) "USE", "USES" and "USED" shall refer to the act of using for any
commercial purposes whatsoever.
(o) "VALID CLAIM" shall mean a claim of an unexpired patent within the PATENT
RIGHTS which has matured into an issued patent or a claim being prosecuted
in a pending application within the PATENT RIGHTS. In each case a claim
shall be presumed to be valid unless and until it has been held to be
invalid by a final judgement of a court of competent jurisdiction from
which no appeal can be or is taken. For the purposes of royalty
determination and payment under Article 4 hereof, any claim being
prosecuted in a pending patent application, including applications
involved in interference or opposition proceedings, shall be deemed to be
the equivalent of a valid claim of an issued, unexpired patent.
2. LICENSE
(a) LICENSOR hereby grants to LICENSEE, and LICENSEE hereby accepts from
LICENSOR, upon the terms and conditions herein specified, a worldwide
exclusive sublicense under the PATENT RIGHTS to make, to have made, to USE
and to SELL LICENSED PRODUCTS in the FIELD.
(b) LICENSEE acknowledges and agrees that the exclusive rights granted
pursuant to this Agreement shall be subject to:
(i) SCRIPPS' rights pursuant to the SCRIPPS AGREEMENT to use the
LICENSED PATENTS for educational and research purposes; and
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(ii) the rights of the United States Government pursuant to 35
U.S.C. 202 et seq. and 37 C.F.R. 401.1 et seq. which may have
arisen or resulted form federal funding of SCRIPPS research
relating to the LICENSED PATENTS, including the non-exclusive
right of the United States Government to practice the
inventions covered by the LICENSED PATENTS. Subject to the
foregoing, J&J intends to grant to LICENSEE the maximum rights
allowable under 35 U.S.C. Sec. 202 et seq. and 37 C.F.R. 401.1
et seq.
(c) Each party hereunder represents and warrants that it will make good
faith efforts to comply in all respects with the applicable
provisions of any applicable law, regulation, or requirement by any
Government relating to the LICENSED PATENTS. Each party agrees that
it will make good faith efforts to ensure that all necessary steps
are taken to comply with the requirements of 35 U.S.C. 202 et seq.
and 37 C.F.R. 401.1 et seq. to retain the maximum rights under the
LICENSED PATENTS allowable by law. LICENSEE agrees that it will
provide SCRIPPS with the necessary reports and information required
for SCRIPPS to comply with 35 U.S.C. Sec. 202 et seq. and 37 C.F.R.
401.1 et seq., including periodic reports on utilization or efforts
at utilization of the inventions covered by the LICENSED PATENTS.
(d) The sublicenses granted hereunder shall include the right to grant
further sub-licenses to AFFILIATES or third party SUBLICENSEES,
provided that LICENSEE agrees to be responsible for the performance
hereunder by its AFFILIATES and SUBLICENSEES to which the license
and rights shall have been extended.
(e) For the purposes of reporting and making payments of earned
royalties under this SUBLICENSE AGREEMENT, the manufacture, SALE or
USE of LICENSED PRODUCTS by any AFFILIATE or SUBLICENSEE to which
the license and rights shall have been extended shall be considered
the manufacture, SALE or USE of such LICENSED PRODUCT by LICENSEE
and any such AFFILIATE or SUBLICENSEE may make the pertinent reports
and royalty payments specified in Article 4 hereof directly to
LICENSOR
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on behalf of LICENSEE; otherwise, such reports and payments on account of
SALES or USE of LICENSED PRODUCTS by each AFFILIATE or SUBLICENSEE shall
be made by LICENSEE; and, in any event, the SALES and USES of LICENSED
PRODUCT by each such AFFILIATE or SUBLICENSEE shall be separately shown in
the reports to LICENSOR if such information is readily available to
LICENSEE.
(f) The LICENSEE shall be responsible to the LICENSOR for the enforcement of
the terms of the sub-license and for inspecting the accounts and records
kept by the SUBLICENSEE. The LICENSEE shall at the request of the LICENSOR
appoint a qualified person jointly with the LICENSOR to inspect the records
of the SUBLICENSEE on behalf of both and both shall be entitled to a full
report thereon.
(g) No other, further or different license or right and, except as expressly
provided in Article 2 hereof, is hereby granted or implied.
3. LICENSE FEES
(a) In consideration of the Licenses granted hereunder, LICENSEE shall pay to
LICENSOR License Fees of * * * * * at times and
amounts as follows:
(i) * * * * * within ten days of execution of
this LICENSE AGREEMENT by both parties;
(ii) * * * * * per year for * years, due on
each of the first * anniversary dates of the EFFECTIVE DATE.
The obligation to pay the foregoing License Fees shall be a non-cancelable
commitment by LICENSEE and such payments shall be due and payable at the
times specified regardless of whether this LICENSE AGREEMENT is still in
effect.
(b) In addition, LICENSEE shall pay LICENSOR the following Milestone License
Fees at times and amounts as follows as long as this LICENSE AGREEMENT is
still in effect:
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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(i) * upon *
* for a LICENSED PRODUCT, due thirty (30) calendar days
after said event; and
(ii) * upon *
* for a LICENSED PRODUCT, due thirty (30) calendar days
after said event.
4. ROYALTIES, RECORDS AND REPORTS
(a) For the rights and privileges granted under this SUBLICENSE AGREEMENT,
LICENSEE shall pay to LICENSOR earned royalties equal to *
of the NET SALES VALUE of LICENSED PRODUCT sold by LICENSEE, AFFILIATES or
SUBLICENSEES.
(b) Earned royalty shall be paid in the manner provided herein, to the end of
the term or terms of the last to expire of the issued patents within the
PATENT RIGHTS, or until this SUBLICENSE AGREEMENT is terminated as
hereinafter provided. Earned royalty shall be paid in respect of pending
patent applications within the PATENT RIGHTS during such time as the
application is actively being prosecuted and has not been abandoned or
finally rejected and appellate procedures are unsuccessfully exhausted or
the time for perfecting any further appeals has expired.
(c) Earned royalty shall be paid pursuant to Article 4(a) hereof on all
LICENSED PRODUCTS SOLD under this SUBLICENSE AGREEMENT; however, earned
royalty shall be payable hereunder as to a given LICENSED PRODUCT only when
a license or an immunity granted under Article 2 hereof is utilized in the
manufacture or SALE thereof, and the earned royalty payable on a given
LICENSED PRODUCT made hereunder shall not become due and owing until such
LICENSED PRODUCT is SOLD.
Any LICENSED PRODUCT made under a license granted pursuant to this
SUBLICENSE AGREEMENT prior to the termination or expiration of the
applicable PATENT RIGHTS and not SOLD prior to the termination or
expiration of such PATENT RIGHTS shall be
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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subject to the payment of royalties hereunder when SOLD, even though
such SALE occurs after the termination or expiration of all
pertinent licenses or rights granted hereunder.
The earned royalty for any particular LICENSED PRODUCT shall be due
upon the first bona fide arm's length SALE thereof by LICENSEE,
AFFILIATE or SUBLICENSEE, and any subsequent SALE of such LICENSED
PRODUCT by other than LICENSEE, AFFILIATE, or SUBLICENSEE shall be
royalty free.
(d) Notwithstanding the provisions of Article 4(b) hereof, in the case
of transfers or SALES of any LICENSED PRODUCT between LICENSEE and
an AFFILIATE, between AFFILIATES, or between LICENSEE or AFFILIATE
and SUBLICENSEES, one and only one royalty shall be payable thereon
and such royalty shall become payable upon the final SALE thereof
to a third party other than LICENSEE, AFFILIATE or SUBLICENSEE.
(e) LICENSEE shall keep full, true and accurate books of account
containing all particulars which may be necessary for the purpose
of showing the amount payable to LICENSOR by way of royalty as
aforesaid or by way of any other provision hereunder. Said books of
account shall be kept at LICENSEE's principal place of business.
Said books and the supporting data shall be maintained and kept
open at all reasonable times, for three (3) years following the end
of the calendar year to which they pertain (and access shall not be
denied thereafter, if reasonably available), to the inspection of
an independent certified public accountant retained by LICENSOR and
reasonably acceptable to LICENSEE for the purpose of verifying
LICENSEE's royalty statements, or LICENSEE's compliance in other
respects with this SUBLICENSE AGREEMENT. Names of customers and
other confidential information shall not be disclosed to LICENSOR
by such independent accountant. Such accountant shall be retained
at LICENSOR's sole expense, unless during any such inspection a
deficiency in payments to LICENSOR of one percent (1%) or more is
determined to exist in which event LICENSEE shall within thirty
(30) days reimburse LICENSOR for the full expense of retaining such
accountant, including but not limited to professional and
administrative fees, travel and subsistence costs.
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(f) LICENSEE, within sixty (60) days after the first day of January,
April, July and October of each year (the "Reporting Date"), shall
deliver to LICENSOR a true and accurate report, giving such
particulars of the LICENSED PRODUCTS SOLD by LICENSEE, AFFILIATES and
SUBLICENSEES during the preceding three (3) months ("Accounting
Period") under this SUBLICENSE AGREEMENT as are pertinent to an
accounting for royalty under this SUBLICENSE AGREEMENT. These shall
include at least the following, separately stated as to the LICENSED
PRODUCTS:
(i) the quantity of LICENSED PRODUCTS invoiced by LICENSEE,
AFFILIATES and SUBLICENSEES during those three (3) months and
the xxxxxxxx therefor;
(ii) the allowable deductions therefrom;
(iii) the calculation of royalties thereon;
Simultaneously with the delivery of each such report, LICENSEE shall
pay to LICENSOR the royalty and any other payments due under this
SUBLICENSE AGREEMENT for the period covered by such report. If no
royalties are due, it shall be so reported. Royalties shall be paid
to LICENSOR in United States Dollars at LICENSOR's office specified
for the purposes of giving notice in Article 14(b) hereof.
(g) All amounts payable hereunder by LICENSEE to LICENSOR shall be
payable in United States Dollars. In the event any LICENSED PRODUCT
shall be SOLD by LICENSEE, SUBLICENSEE or an AFFILIATE for currency
other than United States Dollars, the earned royalty payable as to
such LICENSED PRODUCT under Article 4(a) hereof shall first be
determined in the currency for which the LICENSED PRODUCT was SOLD
and then converted into its equivalent in United States Dollars at
the official rate of exchange of the currency of the country from
which royalties are payable as quoted by the Wall Street Journal, New
York Edition, for the last business day prior to the Reporting Date
for which the royalty payment is made.
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(h) In the event that any taxes, withholding or otherwise, are levied by
any taking authority in connection with accrual or payment of any
royalties payable to LICENSOR under this SUBLICENSE AGREEMENT,
LICENSEE or its AFFILIATES and/or SUBLICENSEES shall have the right
to pay such taxes to the local tax authorities on behalf of LICENSOR
(or, in the case of SUBLICENSEE SALES, on behalf of LICENSEE), and
the payment to LICENSOR of the net amount due after reduction by the
amount of such taxes, together with evidence of payment of such
taxes, shall fully satisfy LICENSEE's royalty obligations under this
SUBLICENSE AGREEMENT. LICENSEE agrees to make a good faith effort to
obtain a refund of any such taxes for LICENSOR if LICENSOR informs
LICENSEE that it believes such taxes have been improperly levied.
(i) In the event that any payment required under this SUBLICENSE
AGREEMENT shall be overdue, LICENSEE shall pay interest thereon at an
annual rate of * over the United States Clearing Bank
Base Lending Rate computed from the date when the payment became due;
provided that if such rate shall be in excess of that allowed by
applicable law, then the highest rate allowable shall apply. Payment
shall be deemed to have been made when received by LICENSOR.
5. CONFIDENTIALITY
Disclosures of confidential and proprietary information hereunder by
either party to the other shall be made in writing (or promptly
confirmed in writing if made in another form), and shall be clearly
marked "Confidential". Such confidential information shall be
safeguarded by the recipient, shall not be disclosed to third parties
and shall be made available only to recipient's employees or
independent contractors who agree in writing to equivalent conditions
and who have a need to know the information for the purposes
specified under this Agreement. All confidential information shall
remain the property of and be returned to the disclosing party within
thirty (30) days of receipt of a written request by the disclosing
party, or within thirty (30) days of termination of this Agreement.
These mutual obligations of confidentiality shall apply for a period
of 3 (three) years after the termination of this Agreement, but such
obligations shall not apply to any information that:
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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(i) is or hereafter becomes generally available to the public other than
by reason of any default with respect to a confidentiality obligation
under this Agreement; or
(ii) was already known to the recipient as evidenced by prior written
documents in its possession; or
(iii) is disclosed to the recipient by a third party who is not in default
of any confidentiality obligation to the disclosing party hereunder;
or
(iv) is developed by or on behalf of the receiving party, without reliance
on confidential information received hereunder; or
(v) is provided to third parties under appropriate terms and conditions
including confidentiality provisions equivalent to those in this
Agreement for consulting, manufacturing development, manufacturing,
external testing and marketing trials with respect to the products
covered by this Agreement; or
(vi) is used with the consent of the disclosing party (which consent shall
not be reasonably withheld) in applications for patents or copyrights
under the terms of this Agreement; or
(vii) has been approved in writing for publication by each of the parties;
or
(viii) is required to be disclosed in compliance with applicable laws or
regulations in connection with the manufacture or sale of products
covered by this Agreement; or
(ix) is otherwise required to be disclosed in compliance with applicable
laws or regulations or order by a court or other regulatory body
having competent jurisdiction; or
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(x) is product-related information which is reasonably required to be disclosed
in connection with marketing of products covered by this Agreement.
6. DEVELOPMENT and COMMERCIALIZATION
(a) LICENSEE agrees to diligently attempt to exploit the LICENSED PATENTS and
will diligently exert efforts to create a demand for the LICENSED PRODUCTS
in at least those countries where PATENT RIGHTS exist. Within sixty (60)
days after the end of each semi-annual period (June 30 and December 31)
prior to first commercial sale of LICENSED PRODUCT, LICENSEE shall submit a
summary report to LICENSOR reporting the progress it, or its SUBLICENSEES,
have made towards commercialization in the preceding semi-annual period.
This report will include a summary of the work done in the development of
LICENSED PRODUCTS. Non-performance of this Article 7 shall be a breach or
default under this SUBLICENSE AGREEMENT, entitling the LICENSOR, in addition
to other remedies LICENSOR may have, to terminate this SUBLICENSE AGREEMENT
under Article 7(c) hereunder.
(b) Promptly following Health Regulatory Approval to market LICENSED PRODUCTS in
such countries where approval is sought, LICENSEE agrees to use diligent
efforts to promote and sell LICENSED PRODUCTS at a level which is consistent
with those marketing efforts normally used for similar products in the
pharmaceutical industry.
7. TERMINATION
(a) LICENSEE may terminate this LICENSE AGREEMENT at any time upon sixty (60)
days written notice to LICENSOR, but such termination shall not relieve
LICENSEE of its obligation to pay the license fees due under Article 3(a)
hereunder.
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(b) If LICENSEE shall become bankrupt or insolvent and/or if the business of
LICENSEE shall be place in the hands of a Receiver, Assignee, or Trustee,
whether by the voluntary act of LICENSEE or otherwise, this SUBLICENSE
AGREEMENT shall immediately terminate.
(c) Upon any breach of or default under this SUBLICENSE AGREEMENT by LICENSEE,
LICENSOR may terminate this SUBLICENSE AGREEMENT by forty-five (45) days
written notice to LICENSEE. Said notice shall become effective at the end of
said period, unless during said period LICENSEE shall cure such breach or
default.
(d) Upon termination of this SUBLICENSE AGREEMENT for any reason, other then by
expiry of the PATENT RIGHTS, all rights granted hereunder shall revert to
LICENSOR for the benefit of LICENSOR.
(e) LICENSEE's obligations to report to LICENSOR and to pay royalties to
LICENSOR as to any LICENSED PRODUCT made or USED under a license or an
immunity granted pursuant to this SUBLICENSE AGREEMENT prior to termination
or expiration of this SUBLICENSE AGREEMENT shall survive such termination or
expiration and any termination of this SUBLICENSE AGREEMENT shall be subject
to this Article 7(d).
(f) Upon any termination of this SUBLICENSE AGREEMENT its provisions shall
continue in force and effect to the extent necessary to effectuate any
provision which by its terms clearly shall continue beyond such termination.
(g) Upon termination of this SUBLICENSE AGREEMENT other than by expiry of the
PATENT RIGHTS, LICENSEE shall have no right under the PATENT RIGHTS to
make, have made, USE or SELL LICENSED PRODUCTS.
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8. ASSIGNMENT
This Agreement or any interest herein shall not be assigned or transferred,
in whole of in part, by either party hereto without the prior written
consent of the other party hereto. However, without securing such prior
written consent, either party may assign this Agreement to an AFFILIATE or
a successor of all or substantially all of its business to which this
Agreement relates (except a successor under a reorganization pursuant to 11
U.S.C. Sec. 365) provided, that no such assignment shall be binding and
valid until and unless the assignee shall have assumed in a writing,
delivered to the non-assigning party, all of the duties and obligations of
the assignor, and, provided, further, that the assignor shall remain liable
and responsible to the non-assigning party hereto for the performance and
observance of all such duties and obligations.
9. INFRINGEMENT
(a) LICENSOR agrees to enforce its patents within the PATENT RIGHTS from
infringement and xxx infringers when in its sole judgement such action may
be reasonably necessary, proper and justified.
(b) Notwithstanding the provisions of Article 9(a) above, provided LICENSEE
shall have supplied LICENSOR with evidence comprising a prima facie case of
infringement of the PATENT RIGHTS by a third party hereto SELLING
significant quantities of products in competition with LICENSEE's, an
AFFILIATE's, or SUBLICENSEE's SALE of LICENSED PRODUCTS hereunder, LICENSEE
shall be entitled to notify LICENSOR in writing requesting LICENSOR to take
steps to enforce the PATENT RIGHTS and LICENSOR shall within three (3)
months of the receipt of such written request either:
(i) cause said infringement to terminate (including termination for
whatever cause); or
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(ii) initiate legal proceedings against the infringer; or
(iii) grant LICENSEE the right, at LICENSEE's sole expense, to bring suit
against the infringer for infringement of the PATENT RIGHTS.
(c) In no event shall LICENSEE be entitled to invoke Article 9(b) above with
respect to more than one alleged infringer in any one country listed with
the PATENT RIGHTS at any given time even though there be more than one such
infringer in such country and the provisions of Article 9(b) hereof shall
not come into effect or continue in effect as to such country while
LICENSOR is carrying on any such legal proceeding therein.
(d) In the event either party hereto shall initiate or carry on legal
proceedings to enforce the PATENT RIGHTS against an alleged infringer, as
provided herein, the other party hereto shall fully co-operate with the
party initiating or carrying on such proceedings.
(e) In the event LICENSOR shall institute suit or other legal proceedings to
enforce the PATENT RIGHTS, it shall have sole control of such suit.
(f) In the event LICENSEE shall institute suite or other legal proceedings
under Article 9(b) above to enforce the PATENT RIGHTS, LICENSOR shall be
entitled to be represented by counsel of its choosing, at its sole expense,
and LICENSEE shall be entitled to retain for it as damages, an amount
corresponding to its actual out-of-pocket legal expenses paid to third
parties for conducting such suit or other legal proceedings and shall pay
to LICENSOR TWENTY-FIVE PERCENT (25%) of the balance of such recovery.
LICENSEE shall not discontinue or settle any such proceedings brought by it
without obtaining the concurrence of LICENSOR and giving LICENSOR a timely
opportunity to continue such proceedings in its own name, under its sole
control, and at its sole expense. In the event LICENSOR does not concur in
such settlement, it must continue such proceeding in its own name, under
its sole control and expense
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within three (3) months of being given notice by LICENSEE of its desire to
settle or LICENSEE shall be entitled to settle without LICENSOR's
concurrence.
10. STATUS OF THE PATENT RIGHTS
(a) Pursuant to the SCRIPPS AGREEMENT, SCRIPPS agreed, with the advice of
LICENSOR, to diligently prepare, file and prosecute the patent applications
filed within the PATENT RIGHTS and LICENSOR agreed to reimburse SCRIPPS for
the reasonable expenses associated therewith. Upon execution of this
SUBLICENSE AGREEMENT, LICENSEE agrees to assume LICENSOR's obligation to
reimburse SCRIPPS for patent expenses under the SCRIPPS AGREEMENT for
patent expenses incurred after the EFFECTIVE DATE. LICENSOR shall instruct
SCRIPPS to forward invoices for such patent expenses directly to LICENSEE
and LICENSEE agrees to promptly pay such expenses. LICENSOR agrees to
assure that SCRIPPS performs its obligations to maintain and prosecute the
PATENT RIGHTS under the SCRIPPS AGREEMENT and LICENSOR agrees to enforce
its rights vis-a-vis SCRIPPS in this regard on LICENSEE's behalf if
necessary. LICENSOR does not however represent or warrant that any patent
within the PATENT RIGHTS will be obtained or that any such patent so
obtained will be valid and enforceable.
(b) LICENSEE shall also be responsible for expenses associated with maintaining
the patents obtained on the patent applications referred to in Article
10(a) hereof.
(c) Upon request by LICENSEE, LICENSOR will advise, or ensure that SCRIPPS
advises, LICENSEE of the status of all patent applications and patents
within the PATENT RIGHTS.
(d) Should LICENSEE elect not to continue paying the expenses for the
maintenance or prosecution of any patent or patent application under the
PATENT RIGHTS, it shall give LICENSOR thirty (30) days written notice
thereof and LICENSOR may thereafter
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assume payment of such expenses at its own cost. In the event LICENSEE
ceases to pay the expenses of prosecution of maintenance of any particular
patent application or patent, then LICENSEE shall cease to have license
rights with respect to such patent application or patent and LICENSOR
shall be free to license such rights to a third party.
11. NON-USE OF NAMES
(a) LICENSEE shall not use the name of any inventor of the PATENT RIGHTS, or
of any institution with which he has been or is connected, or of LICENSOR,
or any adaptation of any of them, in any advertising, promotional or sales
literature, without prior written consent obtained from LICENSOR in each
case. LICENSEE shall require its AFFILIATES to comply with this Article 11
to the same extent that it applies to LICENSEE.
(b) LICENSOR shall not use the name of LICENSEE or its AFFILIATES or any
adaptation thereof, in any advertising, promotional or sales literature or
in any press release without prior written consent of LICENSEE in each
case.
12. WARRANTIES AND REPRESENTATIONS
(a) LICENSOR warrants that it has exclusive rights by agreement, assignment or
license to the PATENT RIGHTS, except with respect to the United States
Government, and that it has full power and authority to execute, deliver
and perform this SUBLICENSE AGREEMENT and the obligations hereunder.
(b) Each party hereby warrants that the execution, delivery and performance of
this SUBLICENSE AGREEMENT has been duly approved and authorized by all
necessary corporate actions of both parties; do not require any
shareholder approval which has not been obtained or the approval and
consent of any trustee or the holders of any
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indebtedness of either party; do not contravene any law, regulation, rules
or order binding on either Party, and do not contravene the provisions of
or constitute a default under any indenture, mortgage contract or other
agreement or instrument to which either party is a signatory.
(c) Nothing in this SUBLICENSE AGREEMENT shall be construed as a
representation or a warranty by LICENSOR as to the validity or scope of
any patent within the PATENT RIGHTS or that any process practiced or
anything made, USED or SOLD under any license or immunity granted under
this SUBLICENSE AGREEMENT is or will be free from infringement of patents
of third parties.
13. INDEMNITY
LICENSEE agrees to indemnify and hold harmless INVENTORS, SCRIPPS,
LICENSOR, its AFFILIATES and their respective officers, directors,
employees and agents from and against any and all claims, damages and
liabilities, including reasonable attorney's fees and expenses, asserted
by third parties, both government and private, arising from LICENSEE's and
AFFILIATES' manufacture, USE or SALE of LICENSED PRODUCTS or the USE
thereof by others including ultimate consumers. LICENSEE hereby agrees to
maintain in full force and effect general liability and product liability
insurance with a commercial insurance carrier, which policy shall have
individual and aggregate limits appropriate to the conduct of LICENSEE's
business covering the sale and distribution of LICENSED PRODUCTS. LICENSOR
shall be named as an additional insured in such insurance policy. LICENSEE
shall provide a certificate of insurance to LICENSOR evidencing such
insurance policy and providing that such insurance will not be cancelled,
modified or subject to non-renewal without thirty (30) days' written
notice to LICENSOR. This insurance will remain in effect until three (3)
years from termination of this Agreement.
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14. GENERAL
(a) This SUBLICENSE AGREEMENT, including the Appendix hereto attached,
constitutes the entire agreement and understanding between the parties as
to the PATENT RIGHTS. All prior negotiations, representations, agreements,
contracts, offers and earlier understandings of whatsoever kind, whether
written or oral between LICENSOR and LICENSEE in respect of the PATENT
RIGHTS, are superseded by, merged into, extinguished by and completely
expressed by this SUBLICENSE AGREEMENT.
No aspect, part or wording of this SUBLICENSE AGREEMENT may be modified
except by mutual agreement between the LICENSOR and LICENSEE taking the
form of an instrument in writing signed and dated by duly authorized
representatives of both LICENSOR and LICENSEE.
(b) Any notice required or permitted to be given by this SUBLICENSE AGREEMENT
shall be given by post-paid, first class, registered or certified mail
addressed to:
General Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx, Xxx Xxxxxx 00000-0000
and
Chairman
X.X. Xxxxxxx Pharmaceutical Research Institute
Xxxxx 000
Xxxxxxx, Xxx Xxxxxx 00000
or
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SANGAMO BIOSCIENCES, INCORPORATED
000 XXXXXX XXXXXXX XXXXXXX
XXXXX 000
XXXXXXX, XX 00000
Such addresses may be altered by notice so given. If no time limit is
specified for a notice required or permitted to be given by this
SUBLICENSE AGREEMENT, the time limit therefor shall be ten (10) full
business days, not including the day of mailing. Notice shall be
considered made as of the date of deposit with the United States Post
Office.
(c) This SUBLICENSE AGREEMENT and its effect are subject to and shall be
construed and enforced in accordance with the laws of the State of New
Jersey, United States, except as to any issue which depends upon the
validity, scope or enforceability of any patent within the PATENT RIGHTS,
which issue shall be determined in accordance with the applicable patent
laws of the country of such patent.
(d) Any controversy or claim arising out of or relating to this Agreement, or
the breach thereof, including any dispute relating to patent validity or
infringement arising under this agreement, shall be settled by
arbitration. Such arbitration shall be conducted at New York, New York, in
accordance with the rules then pertaining to the American Arbitration
Association with a panel of three (3) arbitrators. One arbitrator shall be
appointed by LICENSOR; one shall be appointed by LICENSEE; and the third
shall be appointed by the American Arbitration Association. The law of the
State of New York shall apply to the arbitration proceedings. The
arbitrators shall have the authority to grant specific performance. The
judgment and award of the arbitrators shall be final and binding and may be
entered in any court having jurisdiction thereof, or application may be
made to such court for judicial acceptance of any award or an order of
enforcement, as the case may be. Each party shall bear its own costs and
expenses, including attorney's fees and fees and expenses of the
arbitrator it selects, and shall
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share equally the fees and expenses of the arbitrator selected by the
American Arbitration Association.
(e) Nothing in this SUBLICENSE AGREEMENT shall be construed so as to require
the commission of any act contrary to law, and wherever there is any
conflict between any provision of this SUBLICENSE AGREEMENT or concerning
the legal right of the parties to contract and any statute, law, ordinance
or treaty, the latter shall prevail, but in such event the affected
provisions of this SUBLICENSE AGREEMENT shall be curtailed and limited
only to the extent necessary to bring it within the applicable legal
requirements.
(f) LICENSEE shall take all reasonable and necessary steps to register this
SUBLICENSE AGREEMENT in any country where such is required to permit the
transfer of funds and/or payment of royalties to LICENSOR hereunder or is
otherwise required by the government or law of such country to effectuate
or carry out this SUBLICENSE AGREEMENT. Notwithstanding anything contained
herein, but subject to Article 13(e) hereof, LICENSEE shall not be
relieved of any of its obligations under this SUBLICENSE AGREEMENT by any
failure to register this SUBLICENSE AGREEMENT in any country, and,
specifically, LICENSEE shall not be relieved of its obligation to make any
payment due to LICENSOR hereunder at LICENSOR's address specified in
Article 14(b) hereof, where such payment is blocked due to any failure to
register this SUBLICENSE AGREEMENT.
(g) As used in this SUBLICENSE AGREEMENT, singular includes the plural and
plural includes the singular, wherever so required by the context. The
headings appearing at the beginning of the numbered Articles hereof have
been inserted for convenience only and do not constitute a part of this
SUBLICENSE AGREEMENT.
(h) Nothing herein shall be deemed to create an agency, joint venture or
partnership between the parties hereto.
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(i) Notwithstanding any other provisions of this SUBLICENSE AGREEMENT, neither
of the parties hereto shall be liable in damages or have the right to
terminate this SUBLICENSE AGREEMENT for any delay or default in
performing hereunder if such delay or default is caused by conditions
beyond its control including, but not limited to acts of God,
governmental restrictions, wars, or insurrections, strikes, floods, work
stoppages and/or lack of materials; provided, however, that the party
suffering such delay or default shall notify the other party in writing
of the reasons for the delay or default. If such reasons for delay or
default continuously exist for six (6) months, this SUBLICENSE AGREEMENT
may be terminated by either party.
15. EFFECTIVE DATE AND TERM
This SUBLICENSE AGREEMENT shall become effective on the day and year
first above written and shall, unless terminated earlier by one of the
parties in accord with its terms, expire concurrently with the
expiration, invalidation or lapsing of all issued patents within the
PATENT RIGHTS and/or the abandonment of all pending patent applications
within the PATENT RIGHTS.
16. GOVERNMENT RIGHTS
(a) LICENSEE acknowledges and agrees that its respective rights and
obligations pursuant to this SUBLICENSE AGREEMENT shall be subject to
SCRIPPS' rights and SCRIPPS' obligations and the rights of the United
States Government, if any, which arose or resulted from SCRIPPS' receipt
of research support from the United States Government.
(b) LICENSEE shall comply in all respects with the applicable provisions of
any applicable law, requirement, regulation or determination by any
Government relating to the PATENT RIGHTS and shall provide LICENSOR with
any information or report required to comply with any such law,
requirement, regulation or determination.
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(c) Any inconsistency between this SUBLICENSE AGREEMENT and the pertinent
provisions of any law, requirement, regulation or determination by a
Government shall be resolved by conforming this SUBLICENSE AGREEMENT to
such provisions of any such law, requirement, regulation or determination.
(d) Any agreement or arrangement relating to the PATENT RIGHTS between
LICENSEE and any third party hereto shall be made expressly subject to
the terms and conditions of this Article 16 and LICENSEE shall require
such other party to comply therewith to the same extent that LICENSEE is
required to comply.
(e) Any license or other right granted or to be granted pursuant to this
SUBLICENSE AGREEMENT shall be subject to any and all applicable
governmental laws and regulations relating to compulsory licensing.
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IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and duly
executed this SUBLICENSE AGREEMENT on the date(s) indicated below, to be
effective the day and year first above written.
For and on Behalf of LICENSOR, XXXXXXX & XXXXXXX
By: /s/ XXXXXX X. XXXXXXX
---------------------------------------------
Name: Xxxxxx X. Xxxxxxx
---------------------------------------------
Title: Worldwide Chairman
---------------------------------------------
Pharmaceuticals & Diagnostics Group
Date: April 15, 1996
---------------------------------------------
For and on Behalf of LICENSEE, SANGAMO BIOSCIENCES, INCORPORATED
By: /s/ XXXXXX XXXXXXXX
----------------------------------------------
Name: Xxxxxx Xxxxxxxx
----------------------------------------------
Title: President
----------------------------------------------
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