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EXHIBIT 10.17
{*} THE REDACTED PORTIONS INDICATED BY THIS SYMBOL ARE THE SUBJECT OF A
CONFIDENTIAL TREATMENT REQUEST AND HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
EXCLUSIVE LICENSE AGREEMENT
THIS LICENSE AGREEMENT (hereinafter "Agreement"), having an Effective Date of
June 29, 2001, is between AtheroGenics, Inc. ("AGIX"), a corporation of the
State of Georgia, having a principal place of business at 0000 Xxxxxxxx Xxxxxxx,
Xxxxxxxxxx, XX 00000, and National Jewish Medical Research Center ("NJMRC"), a
non-profit organization having a mailing address at 0000 Xxxxxxx Xxxxxx, Xxxxxx,
XX 00000, each a "Party" and collectively the "Parties."
WHEREAS, NJMRC has the exclusive, worldwide right and title to certain US and
foreign patents and patent applications and has related technical information;
WHEREAS, AGIX has established, or intends to establish, by separate agreements,
consulting relationships and other business relationships with certain inventors
of such patents and patent applications;
WHEREAS, AGIX wishes to obtain an exclusive right and license to and under
certain US and foreign patents and patent applications and related technical
information to make, use, sell, have made and offer for sale diagnostics and
therapeutics to treat human diseases (herein defined and referred to as the
"Licensed Products") for commercial use in accordance with the terms and
conditions set forth below,
NOW, THEREFORE, the Parties agree as follows:
I. DEFINITIONS
A. "AFFILIATE" shall mean any corporation or non-corporate
business entity, which controls, is controlled by, or is under common control
with a Party to this Agreement. A corporation or non-corporate business entity
shall be regarded as in control of another corporation if it owns, or directly
or indirectly controls, at least fifty (50%) percent of the voting stock of the
other corporation, or (i) in the absence of the ownership of at least fifty
(50%) percent of the voting stock of a corporation or (ii) in the case of a
non-corporate business entity, or non-profit corporation, if it possesses,
directly or indirectly, the power to direct or cause the direction of the
management and policies of such corporation or non-corporate business entity, as
applicable.
B. "AGIX IMPROVEMENTS" shall mean any and all inventions,
discoveries, and improvements in the Licensed Field, whether patentable or not,
that fall within the scope of any valid claim of any of the Patent Rights or
which are developed using the Related Technology,
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which are invented, made, discovered, developed, owned or controlled solely by
AGIX, its employees or its agents (excluding Xxxxx Xxxxxxx M.D.) during the Term
of this Agreement.
C. "COMPETING GENERIC PRODUCT" shall mean a product that is the
generic equivalent of a Licensed Product that is sold or offered for sale in the
Licensed Territory.
D. "CONFIDENTIAL INFORMATION" shall mean all business and
technical information identified by the disclosing party as confidential,
whether disclosed in written, oral, or in any other form, tangible or
intangible, including but not limited to:
(i) Information concerning inventions, discoveries,
concepts, ideas, techniques, processes, samples, data, finances and plans,
customer lists, business plans, contracts, marketing plans, sales data,
production plans, distribution plans, system implementation plans, business
concepts, supplier information, business procedures and business operations and
all materials related thereto;
(ii) All know-how and intellectual property, including
specifically and without limitation the contents of any unpublished patent
application; and
(iii) All unpublished copyrightable material including, but
not limited to, trademarks, manuscripts, abstracts and presentations.
Confidential Information does not include any information that a Party
can demonstrate: (a) was in the Party's possession prior to its being furnished
to the Party under the terms of this Agreement, provided the source of that
information was not known by the Party to be bound by a confidentiality
agreement with or other continual, legal or fiduciary obligation of
confidentiality to the other Party; (b) is now, or hereafter becomes, through no
act or failure to act on the part of the Party, generally known to the public;
(c) is rightfully obtained by the Party from a third party, without breach of
any obligation to the other Party; or (d) is independently developed by the
Party without use of or reference to the Confidential Information.
E. "EFFECTIVE DATE" shall mean June 29, 2001.
F. "JOINT IMPROVEMENTS" shall mean any patentable inventions,
discoveries, and improvements in the Licensed Field, that fall within the scope
of any valid claim of any of the Patent Rights or which are developed using the
Related Technology, which are coinvented by AGIX, its employees or its agents
and Xxxxx Xxxxxxx M.D. as long as he is employed by NJMRC during the Term of
this Agreement.
G. "LICENSED FIELD" shall mean diagnosis and treatment of human
diseases.
H. "LICENSED PRODUCTS" shall mean any component or final product
used to diagnose or treat human diseases, that is: (a) developed using the
Related Technology or any method, composition, or assay claimed under Patent
Rights; and/or (b) covered by any valid claim of any unexpired patent included
in the Patent Rights or any patents issuing on NJMRC Improvements, including but
not limited to pharmaceuticals, biopharmaceuticals, biologicals, diagnostics or
tools.
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I. "LICENSED TERRITORY" shall mean the world.
J. "NJMRC IMPROVEMENTS" shall mean any and all of NJMRC's rights
within the Licensed Field to any patentable inventions, discoveries, and
improvements pertaining to MEKK Technology, CGRP Technology, IL-10 Technology,
and CD40 Technology which are invented, discovered, developed, or made by any
employee of NJMRC, including specifically and without limitation Xxxxx Xxxxxxx
and any employees working in his laboratory under his supervision, at any time
during the Term of this Agreement. NJMRC Improvements shall include Covered
NJMRC Improvements and Other NJMRC Improvements, as defined herein.
(i) "COVERED NJMRC IMPROVEMENTS" shall mean any and all
patentable inventions, discoveries, and improvements in the Licensed Field which
are invented, discovered, developed, or made solely by Xxxxx Xxxxxxx, M.D. and
any NJMRC employees under his supervision working in his laboratory at NJMRC
during the Term of this Agreement.
(ii) "OTHER NJMRC IMPROVEMENTS" shall mean any and all
NJMRC Improvements which are not Covered NJMRC Improvements or Patent Rights as
defined herein.
K. "PATENT RIGHTS" shall mean:
(i) All U.S. patents and patent applications listed in
Attachment A, and any and all continuations, requests for continued examination,
continuing prosecution applications, divisionals, reexaminations, reissues,
renewals, extensions or foreign counterparts of any of the patents and patent
applications of Attachment A; and
(ii) NJMRC's rights in any continuation-in-part
applications claiming priority to the US patents and patent applications listed
in Attachment A and 1) naming Xxxxx Xxxxxxx and/or Xxxx Xxxxxxx as sole named
inventors or 2) naming Xxxxx Xxxxxxx and other NJMRC employee or consultant
working under supervision and/or direction of Xxxxx Xxxxxxx as inventors,
provided that the claims of such continuation-in-part applications would be
infringed by the development and commercialization of products covered under any
valid claims of the US patents and patent applications listed in Attachment A.
L. "RELATED TECHNOLOGY" shall mean the Related Technology of
Attachment B.
M. "NET SALES" shall mean the gross sales of Licensed Products
that are produced, processed or sold by or on behalf of AGIX or its Affiliate(s)
to or for any unaffiliated third party, as and when received by AGIX, less (i)
customer returns and adjustments, (ii) price allowances and trade discounts
actually granted to customers (iii), to the extent separately stated, taxes
levied and/or other governmental charges assessed on the sale, transportation,
delivery or use of any Licensed Product and paid by or on behalf of AGIX, and
(iv) commissions (except those paid to sales representatives of AGIX, its
Affiliates, or Sublicensees), freight, postage, insurance, and other shipping
charges. When a Licensed Product is sold in combination with or as a component
of other components or products, then the computation of Net Sales shall be
calculated by multiplying actual Net Sales of such combination product by the
fraction A/(A+B) where: A is the invoice price of the Licensed Product contained
in the combination product if sold separately by AGIX, AGIX Affiliate or
Sublicensee, and B is the invoice price of any other
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active component or components in the combination product if sold separately by
AGIX, an Affiliate, or Sublicensee. In the event that the Licensed Product is
sold in the form of a combination product containing one or more active
ingredients other than the Licensed Product and one or more such active
ingredients are not sold separately, then the above formula shall be modified
such that A shall be the total cost to AGIX , its Affiliate, or Sublicensee(s)
of the Licensed Product and B shall be the total cost to AGIX , its Affiliate,
or Sublicensee of any other active component or components in the combination.
N. "TERM OF THIS AGREEMENT" shall mean the period of time
commencing on the Effective Date and continuing on a
Licensed-Product-by-Licensed-Product and country-by-country basis until the
later of: (a) the last claim of the last Patent Right covering any License
Product expires or is held to be invalid by any court, agency, or competent
authority within that country; and (b) ten (10) years after the first commercial
sale of a Licensed Product within that country.
O. "SUBLICENSE" shall mean any agreement with a third party,
other than an Affiliate of AGIX, granting such party rights under Patent Rights
to develop, make, have made, import, export, use, distribute, market, promote
the sale of, and sell Licensed Products or to use Related Technology or methods,
compositions, or assays claimed under Patent Rights.
P. "SUBLICENSEE" shall mean any third party with which AGIX
executes a Sublicense as provided in Paragraph II-D of this Agreement.
Q. "MEKK TECHNOLOGY" shall mean any and all patents, patent
applications, reagents, assays, data, inventions, or other discoveries,
including specifically and without limitation any/all of Patent Rights listed in
Section I of Attachment A, related to:
(i) the use or direct modulation of any MEKK molecule; or
(ii) the regulation of cytokine production in
hematopoietic cells lacking an ERK-dependent signaling pathway, by regulating an
MEKK/JNKK-contingent signaling pathway.
R. "CGRP TECHNOLOGY" shall mean any and all patents, patent
applications, reagents, assays, data, inventions, or other discoveries,
including specifically and without limitation any/all of Patent Rights listed in
Section II of Attachment A, related to the use of CGRP or the direct regulation
of CGRP.
S. "IL-10 TECHNOLOGY" shall mean any and all patents, patent
applications, reagents, assays, data, inventions, or other discoveries,
including specifically and without limitation any/all of Patent Rights listed in
Section III of Attachment A, related to the inhibition of IL-10.
T. "CD40 TECHNOLOGY" shall mean any and all patents, patent
applications, reagents, assays, data, inventions, or other discoveries,
including specifically and without limitation any/all of Patent Rights listed in
Section IV of Attachment A, related to the regulation of CD40- or gp39-mediated
signaling of JNK or p38.
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II. GRANT OF LICENSE
A. License. Subject to the terms and conditions of this
Agreement, NJMRC grants to AGIX, as of the Effective Date of this Agreement, an
Exclusive License under the Patent Rights and the Related Technology to develop,
make, have made, import, export, use, distribute, market, promote the sale of,
and sell Licensed Products in the Licensed Territory.
AGIX, at its sole discretion, may extend the rights and licenses
granted under this Agreement to Affiliates of AGIX provided that all rights and
obligations of AGIX hereunder are binding upon the Affiliate, including payment
of royalties by the Affiliates on sale of Licensed Products to or on behalf of
unaffiliated third parties.
B. {*}.
C. Sublicenses. AGIX, at its sole discretion, may grant
Sublicenses of its rights under this Agreement. AGIX shall provide NJMRC with
complete copies of any and all such Sublicenses within thirty (30) days of their
execution. AGIX shall remain responsible to NJMRC for the payment of all
Sublicense Fees due under this Agreement. Should AGIX dissolve or cease to
operate as a business, or if this Agreement is terminated by NJMRC or AGIX in
accordance with Article X of this Agreement, then any such Sublicense shall, at
the discretion of the Sublicensee, survive, provided that: (a) the Sublicensee
is not in default of any obligations under their Sublicense, and (b) the
Sublicensee assumes AGIX's obligations under this Agreement, including
obligations for the milestone payments under Paragraph III D of this Agreement,
and for Royalties under Paragraph III E of this Agreement.
D. No Implied License. The license and rights granted in the
Agreement shall not be construed to confer any rights upon AGIX by implication,
estoppel, or otherwise as to any technology not specifically identified in the
Agreement, except as otherwise implied by law to the extent necessary to
practice the Patent Rights or Related Technology.
E. Government Rights. The licenses granted under this Agreement
are conditioned upon and subject to the U S. Government Licenses, other rights
retained by the United States in inventions developed by nonprofit institutions
with the support of federal funds, and the obligations of NJMRC with respect to
such government licenses and rights. Certain of these rights are set forth in 35
USCA 201 et seq. and 37 CFR 401 et seq., which may be amended from time to time
by the Congress of the United States or through administrative procedures. AGIX
agrees it shall comply with all obligations related to government licenses and
other rights retained by the United States government, including compliance with
laws related to the development, manufacture, sale and distribution of any
Licensed Product hereunder.
F. Retained License. The licenses granted under this Section II
are further conditioned upon and subject to a right and license retained by
NJMRC on behalf of itself and NJMRC's academic research collaborators to use
Related Technology and compositions, methods, and assays claimed under Patent
Rights and NJMRC Improvements for research and educational purposes only. NJMRC
will also have the right to distribute the Related Technology to academic
researchers at other institutions, subject to the execution of appropriate
materials transfer agreements (MTAs) and confidentiality disclosure agreements
(CDAs) to be signed
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between NJMRC and the receiving institutions. Such MTAs and CDAs shall prohibit
the academic research collaborators to use any Related Technology and/or
improvements thereof for any commercial intent or purpose and to further
distribute/transfer the Related Technology and/or Improvements. Within 30 days
of signing any MTA or CDA, NJMRC will send a copy of the MTA or CDA to AGIX.
III. ROYALTIES AND OTHER PAYMENTS
A. License Fee. AGIX shall pay to NJMRC an initial License Fee in
the amount of {*}. This License Fee is due and payable within (10) days of the
Execution Date of this Agreement.
B. Patent Prosecution Reimbursement. AGIX shall reimburse and pay
NJMRC for all past costs, fees, and expenses (past costs, fees, and expenses as
of January 1, 2001 not to exceed {*}), incurred in connection with the filing,
prosecution, and maintenance of the Patent Rights. NJMRC shall furnish to AGIX
an itemized Debit Note for Patent Prosecution Reimbursement, itemizing by
patent/patent application and date all costs, fees, and expenses incurred by
NJMRC in connection with filing, prosecution, and maintaining the Patent Rights.
This Patent Prosecution reimbursement shall be due and payable within 30 days of
receipt by AGIX of the itemized Debit Note.
C. Stock Warrants. AGIX shall grant to NJMRC Stock Warrants for
40,000 shares of AGIX regular stock, and will bear an exercise price equal to
the closing price of AGIX stock on the Effective Date of this Agreement, unless
that price {*}, as provided in Attachment C. These Stock Warrants will have a
{*}-year vesting schedule, as per Attachment C.
D. Milestone Payments. AGIX shall pay NJMRC milestone payments
("Milestone Payments") in the amounts specified below for each and every
Licensed Product developed by AGIX as it proceeds through the regulatory process
in the U.S. or, alternatively, a foreign country (but not both for the same
Licensed Product), no later than thirty (30) days after the occurrence of the
event designated below triggering payment.
Event Milestone Payment
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(i) Filing Investigational New Drug Application (IND) {*}
(or its equivalent in a foreign country)
(ii) Beginning of Phase II Clinical Trial {*}
(or its equivalent in a foreign country)
(iii) Filing a New Drug Application (NDA) {*}
(or its equivalent in a foreign country)
Should a Licensed Product be abandoned by AGIX for any reason following
the filing of an IND Application (or its equivalent in a foreign country) and
should one or more additional Licensed Products covered by the same technology
(that is, MEKK Technology, CGRP
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Technology, IL10 Technology or CD40 Technology) for the same therapeutic
indication proceed into Clinical Trials (or its equivalent in a foreign
country), then AGIX shall not be required to pay milestone fees to NRMRC for any
milestones already achieved by the abandoned Licensed Product, provided that
milestone fees were paid to NJMRC for said abandoned Licensed Product. AGIX
shall resume Milestone Payments under this Paragraph for the new "replacement"
Licensed Product, beginning with achievement of the event subsequent to the last
event for which a Milestone Payment was paid to NJMRC for the abandoned Licensed
Product.
E. Royalties.
(i) If AGIX or its Affiliate sells Licensed Products to
non-affiliated third parties, AGIX shall pay NJMRC a royalty equal to {*} of the
Net Sales of Licensed Products in any country as long as there is at least one
valid claim in a valid patent under the Patent Rights in that country covering
the Licensed Product.
(ii) If a Licensed Product is not covered by a valid claim
in a valid patent under the Patent Rights in a country, then AGIX shall pay to
NJMRC a reduced royalty of {*} of the Net Sales of Licensed Products in that
country for the use of the Related Technology, unless and until a Competing
Generic Product is sold or offered for sale in that country.
(iii) If and when a Competing Generic Product is offered
for sale in a country in which a corresponding Licensed Product is not covered
by a valid claim in a valid patent under the Patent Rights, AGIX shall have a
royalty-free right to use the Related Technology to make, use or sell that
corresponding Licensed Product in that country.
F. Third Party Licenses. In the event that AGIX's outside patent
counsel determines that patent licenses from third parties are required by AGIX,
its Affiliates, or its Sublicensees in order to discover, develop, make, have
made, import, export, use, distribute, promote, market, offer for sale, or sell
a Licensed Product, AGIX shall provide NJMRC with written notice to that effect
and AGIX shall be solely responsible for acquiring such licenses at AGIX's sole
discretion. If the total combined amount of royalty percentage of Net Sales
payable to third parties and to NJMRC (including consideration of milestones and
other license fees) exceeds {*} of Net Sales of a Licensed Product, AGIX may
reduce any royalty otherwise due NJMRC hereunder by the amount required to
reimburse AGIX for royalties and/or license fees actually paid to such third
parties, provided that the amount of Royalty Percentage of Net Sales paid to
NJMRC shall not be less than {*} of Net Sales of any Licensed Product for which
Royalties are due under Paragraph III-E.
G. Sales or Other Transfers to an Internal Corporate Entity or an
Affiliated Entity. In no event shall Royalties be paid by AGIX on sales or other
transfers of any Licensed Product to an internal corporate entity or Affiliate.
Royalties are due only when Licensed Product is sold to a third party
unaffiliated with AGIX.
H. Sublicense Fees. In respect of any Sublicense granted by AGIX
to a third party under this Agreement, AGIX shall pay to NJMRC those percentage
amounts below-indicated of all {*} made by the Sublicensee (hereinafter,
"Sublicensee Payments") thereunder in consideration for the grant of such
sublicense to it by AGIX:
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(i) Sublicense Agreements executed {*} {*}
(ii) Sublicense Agreements executed {*} {*}
(iii) Sublicense Agreements executed {*} {*}
Any or all of the above Sublicense Fees may be reduced upon prior
mutual agreement, in writing, of both Parties.
I. Sublicensee Payments shall not include any bona fide research
and development funding or any payments received by AGIX from a Third Party in
exchange for issuance of shares of AGIX's capital stock or options to purchase
shares of AGIX's capital stock or other securities convertible into or
exercisable for shares of AGIX's capital stock {*}.
J. {*}.
(i) {*}.
(ii) {*}.
IV. PRODUCT DEVELOPMENT
A. Research Program. AGIX, its Affiliate or a third party
selected by AGIX will conduct a research and discovery program dedicated to the
identification and development of Licensed Products developed using one or more
claims of the Licensed Products.
B. Product Development. AGIX, its Affiliate or a third party
selected by AGIX will be solely responsible for the selection and testing of
Licensed Products that it schedules to advance into IND Application in the U.S.,
or equivalent development programs throughout the world. AGIX, its Affiliate or
a third party selected by AGIX, will be solely responsible for the development
of Licensed Products and for schedule and content of all regulatory documents,
filings, and meetings regarding approvals to market Licensed Products in the
Licensed Territory.
C. Performance Milestones:
(i) If {*} after the Effective Date, AGIX and/or its
Affiliate(s) or third party selected by AGIX has not either filed an IND
Application or equivalent in a foreign country, or signed a sublicensing
agreement sublicensing the rights granted to AGIX herein for the MEKK
Technology, then all Patent Rights listed in section I of Attachment A and
Related Technology with respect to the MEKK Technology licensed to AGIX by NJMRC
will revert to NJMRC.
(ii) If {*} after the Effective Date, AGIX and/or its
Affiliate(s) or third party selected by AGIX has not either filed an IND
Application or equivalent event in a foreign country, or signed a sublicensing
agreement sublicensing the rights granted to AGIX herein for the IL-10
Technology, then all Patent Rights listed in section III of Attachment A and
Related Technology with respect to the IL-10 Technology licensed to AGIX by
NJMRC will revert to NJMRC.
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(iii) If {*} after the execution of a subsequent mutual
agreement described in Article II, paragraph G, AGIX and/or its Affiliate(s) or
third party selected by AGIX has not either filed an IND Application or
equivalent event in a foreign country, or signed a sublicensing agreement
sublicensing the rights granted to AGIX herein for the CD40 Technology, then all
Patent Rights listed in section IV of Attachment A and Related Technology with
respect to the CD40 Technology licensed to AGIX by NJMRC will revert to NJMRC.
(iv) If {*} after the Effective Date, AGIX and or its
Affiliate or a third party selected by AGIX has not either filed an IND
Application or equivalent event in a foreign country, or signed a sublicensing
agreement sublicensing the rights granted to AGIX herein for the CGRP
Technology, then all Patent Rights listed in section II of Attachment A and
Related Technology with respect to the CGRP Technology licensed to AGIX by NJMRC
will revert to NJMRC.
D. Formulation, Packaging, Marketing and Sales of Licensed
Products. AGIX or AGIX's Affiliate or a third party selected by AGIX will be
solely responsible for the formulation and packaging of Licensed Products for
testing and commercialization in the Licensed Territory. AGIX or a third party
selected by AGIX will be solely responsible for execution and costs of all
marketing and sales activities regarding Licensed Products.
V. INTELLECTUAL PROPERTY
A. Patent Prosecution. AGIX shall manage all patent prosecution
activities on the Patent Rights and patent applications on Joint Improvements in
consultation with NJMRC and take into account all suggestions made by NJMRC
including the addition of new claims. NJMRC shall cooperate fully with AGIX in
the preparation, filing and prosecution of all patent applications pursuant to
this Agreement, which cooperation shall include, but not be limited to,
execution by NJMRC and its faculty and other employees of any and all such
papers and instruments as are necessary or helpful to AGIX in preparing, filing
and prosecuting such patent applications. All approved out-of-pocket cost
incurred for such cooperation will be reimbursed by AGIX. AGIX shall diligently
and in a timely manner provide NJMRC with copies of all documents relating to
the prosecution, maintenance, and validity of the Patent Rights including but
not limited to correspondence with any patent office concerning the Patent
Rights. AGIX shall further provide an opportunity for NJMRC to comment upon such
correspondence and such comments shall be taken into account in prosecution
activities. AGIX shall consult with NJMRC in such prosecution and maintenance,
and shall diligently seek strong and broad claims under the Patent Rights and
shall not abandon prosecution of any patent application or any of the claims of
the Patent Rights without first notifying NJMRC in a timely manner of AGIX's
intention and reason therefore, and providing NJMRC with a reasonable
opportunity to assume responsibility for the prosecution and maintenance of the
Patent Rights.
AGIX shall have the right but not the obligation to seek extensions of
the terms of Patent Rights. At AGIX's request, NJMRC shall either authorize AGIX
to act as NJMRC's agent for the purpose of making any application for any
extensions of the term of Patent Rights and provide reasonable assistance
therefor to AGIX or shall diligently seek to obtain such extensions, in either
event, at AGIX's expense.
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If AGIX decides in any or all of the following major pharmaceutical
market countries (United States, Mexico, Canada, Brazil, Chile, Argentina,
Italy, Spain, France, Germany, United Kingdom, Greece, Denmark, Sweden,
Switzerland, Finland, Norway, Japan, Korea, Australia, China) not to seek patent
protection on and pay for any future costs, fees and expenses associated with
the filing and prosecution of patent or patent application included in the
Patent Rights, or if AGIX decides to discontinue the financial support of the
prosecution or maintenance of any of patent or patent application included in
the Patent Rights in any or all of those major pharmaceutical market countries:
(1) NJMRC shall be free to file, prosecute or maintain any patents covering such
patent or patent application at its own expense, and (2) such patent or patent
application shall be excluded under the Exclusive License granted under Section
II of this Agreement. These NJMRC rights related to patent filing, prosecution,
and maintenance will be only for those major pharmaceutical market countries
where AGIX has no ongoing patent filing, prosecution, and/or maintenance
activities.
B. Rights to AGIX Improvements. AGIX shall own all right, title
and interest in any AGIX Improvements. AGIX shall disclose, or cause to be
disclosed to NJMRC, in a timely manner, any and all AGIX Improvements and shall
make available and grant to NJMRC an irrevocable, nonexclusive, royalty-free,
nontransferable, non-sublicensable license to use the AGIX Improvements
throughout the world for educational and research and development purposes only.
At NJMRC's request, AGIX shall make available or supply to NJMRC such
information or data as is necessary or convenient for the proper understanding
or use of such AGIX Improvements, which information NJMRC shall treat as
Confidential Information under the confidentiality provisions of this Agreement
unless and until NJMRC obtains written permission from AGIX to make such
information public. NJMRC shall not publish any information concerning AGIX
Improvements without prior express written approval from AGIX.
C. Rights to Joint Improvements. AGIX and NJMRC will jointly own
all Joint Improvements.
D. Confidentiality. The Parties acknowledge that this Agreement
may require the disclosure of Confidential Information by either party to the
other party. The receiving party shall at all times regard and preserve such
Confidential Information of the disclosing party as secret and confidential and
shall not publish or disclose any of such Confidential Information in any manner
to any third party without the prior written consent of the disclosing party,
which consent may be withheld for any or no reason whatsoever.
E. Publications. It is the intent of the parties to this
Agreement that NJMRC have the right to publish the findings of its researchers
in accordance with traditional principles of academic freedom, while allowing
for the protection of Confidential Information of AGIX and for the filing of
patents on new intellectual property. Therefore, any manuscript, abstract, or
presentation materials for which Xxxxx Xxxxxxx is the controlling author and
which describes research affecting MEKK-dependent signal transduction, CGRP,
IL-10 antagonists, or CD40-dependent MEKK signal transduction in B lymphocytes
shall be submitted to AGIX for review and comment not less than 30 days before
the manuscript, abstract, or presentation materials are submitted to any journal
or conference organizing body. NJMRC agrees to remove from such materials any
Confidential Information identified by AGIX. Further, should AGIX decide to file
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a patent application (provisional or otherwise) during the 30 day review and
comment period, the submission of manuscripts, abstracts or presentation
materials shall, at AGIX's request, be deferred for up to 60 days following the
expiration of the 30 day review and comment period or until AGIX has filed its
patent application(s), whichever is earlier.
F. Press Releases. AGIX shall provide NJMRC with an accurate copy
of any proposed press release which refer by name to NJMRC at least two business
days before scheduled release. NJMRC shall have the right to review and approve
or edit such proposed press releases which may, at NJMRC's sole discretion,
include the removal of any reference to NJMRC or its employees, provided that
NJMRC shall provide AGIX with either its written approval or editorial changes
within one business day of receiving the proposed press release, and provided
that such approval shall not be unreasonably withheld.
VI. PAYMENT TERMS
A. Reports: Payment of Royalty: Payment Exchange Rate and
Currency Conversions.
(i) Royalties Paid Quarterly. Within sixty (60) calendar
days following the close of each calendar quarter, following the first
commercial sale of a Licensed Product, AGIX shall furnish to NJMRC a written
report for the calendar quarter showing the Net Sales of Licensed Product(s)
sold by AGIX, its Affiliates and its sublicensees in the Territory during such
calendar quarter and the Royalties and Sublicense Fees payable under Paragraphs
III-E, H and I of this Agreement for such calendar quarter. Simultaneously with
the submission of the written report, AGIX shall pay to NJMRC, for the account
of AGIX or the applicable Affiliate or Sublicensee, as the case may be, a sum
equal to the aggregate Royalty and Sublicense Fee, if any, due for such calendar
quarter calculated in accordance with this Agreement (reconciled for any
previous overpayments or underpayments),
(ii) {*}.
(iii) Method of Payment. Payments to be made by AGIX to
NJMRC under this Agreement shall be paid by bank wire transfer in immediately
available funds to such bank account as is designated in writing by NJMRC from
time to time. AGIX shall provide advance notice to NJMRC of the timing and
amount of such transfers so that NJMRC may efficiently ensure the appropriate
internal accounting for such funds. Royalties shall be deemed payable by the
entity making the Net Sales from the country in which earned in local currency
and subject to foreign exchange regulations prevailing as of the date of
payment. Royalty payments shall be made in United States dollars to the extent
that free conversions to United States dollars is permitted. The rate of
exchange to be used in any such conversion from the currency in the country
where such Net Sales are made shall be the rate of exchange used by AGIX for
reporting such sales for United States financial statement purposes. If, due to
restrictions or prohibitions imposed by national or international authority,
payments cannot be made as set forth above, the Parties shall consult in good
faith with a view to finding a prompt and acceptable solution, and AGIX will
deal with such monies as NJMRC may lawfully direct at no additional out-of
pocket expense to AGIX. Notwithstanding the foregoing, if royalties in any
country cannot be remitted
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to NJMRC for any reason within six (6) months after the end of the Calendar
Quarter during which they are earned, then AGIX shall be obligated to deposit
the royalties in a bank account in such country in the name of NJMRC.
B. Maintenance of Records; Audits.
(i) Record Keeping by AGIX. AGIX and its Affiliates shall
keep complete and accurate records in sufficient detail to enable the royalties
payable hereunder to be determined. Upon forty-five (45) days prior written
notice from NJMRC, AGIX shall permit an independent certified public accounting
firm of nationally recognized standing selected by NJMRC, at NJMRC's expense, to
have access during normal business hours to examine pertinent books and records
of AGIX and/or its Affiliates as may be reasonably necessary to verify the
accuracy of the royalty reports hereunder. The examination shall be limited to
pertinent books and records for any year ending not more than twenty four (24)
months prior to the date of such request. An examination under this Paragraph
IV-B of this Agreement shall not occur more than once in any calendar year. AGIX
may designate competitively sensitive information, which such auditor may not
disclose to NJMRC; provided however, that such designation shall not include the
auditor's conclusions.
(ii) Limited Disclosure. The accounting firm shall
disclose to NJMRC only whether the royalty reports are correct or incorrect and
the specific details concerning any discrepancies. No other information shall be
provided to NJMRC. All such accounting firms shall sign a confidentiality
agreement (in form and substance reasonably acceptable to AGIX) as to any of
AGIX's or its Affiliate's Confidential Information which they are provided, or
to which they have access, while conducting any audit.
(iii) Underpayments/Overpayments. If such accounting firm
correctly concludes that additional royalties were owed during such period, AGIX
shall pay the additional royalties within thirty (30) days of the date NJMRC
delivers to AGIX such accounting firm's written report so correctly concluding.
If such underpayment exceeds either: (a) five percent (5%), or (b) $50,000 of
the royalty correctly due to NJMRC, then the fees charged by such accounting
firm for the work associated with the underpayment audit shall be paid by AGIX.
Any overpayments by AGIX will be credited against future royalty obligations.
(iv) Record Keeping by Sublicensees. AGIX shall include in
each Sublicense granted by it pursuant to this Agreement a provision requiring
the Sublicensee to make reports to AGIX, to keep and maintain records of sales
made pursuant to such sublicensee and to grant access to such records by NJMRC's
independent accountant to the same extent required of AGIX under this Agreement.
(v) Confidentiality of Financial Information. NJMRC shall
treat all financial information subject to review under this License Agreement,
or under any sublicensee agreement, as Confidential Information in accordance
with the confidentiality provisions of this Agreement, and shall cause its
accounting firm to enter into an acceptable confidentiality agreement with AGIX
obligating it to retain all such financial information in confidence pursuant to
such confidentiality agreement.
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(vi) Binding Records. Upon the expiration of twenty-four
(24) months following the end of any Calendar Year, the calculation of royalties
payable under this Agreement with respect to such year shall be binding and
conclusive upon the Parties, and AGIX, its Affiliates and its Sublicensee shall
be released from any liability or accountability with respect to royalties for
such Calendar Year.
C. Overdue Payments. All payments set forth in this Agreement
shall, if overdue, bear interest until payment at a per annum rate of two
percent (2%) above the prime interest rate in effect at the Xxxxx Fargo Bank
(Denver branch) on the due date, unless there is a good-faith dispute between
the Parties regarding whether any payment or amount is due or payable. If there
is a good-faith dispute between the Parties regarding whether any payment or
amount is due or payable, then no interest shall accrue with respect to such
disputed payment or amount until and unless such disputed payment or amount is
agreed by both Parties to be due and payable, or until such disputed payment or
amount is finally determined to be due and payable pursuant to Article XX of
this Agreement. The payment of such interest shall not foreclose NJMRC from
exercising any other rights it may have as a consequence of the lateness of any
payment.
VII. PATENT LITIGATION
A. Defense. In the event of the institution of any suit by a
third party against NJMRC, AGIX or its sublicensees or distributors for patent
infringement involving the manufacture, use, sale, distribution or marketing of
Licensed Products anywhere in the Territory, the Party sued shall promptly
notify the other Party in writing. AGIX shall have the right, but not the
obligation, to defend such suit at its own expense. NJMRC and AGIX shall assist
one another and cooperate in any such litigation at the other's request, at the
expense of the requesting Party.
B. Right to Take Action. In the event that NJMRC or AGIX becomes
aware of actual or threatened infringement of any Patent Rights anywhere in the
Licensed Territory, that Party shall promptly notify the other Party in writing.
AGIX shall have the first right, but not the obligation, to bring, at its sole
expense with no expense to NJMRC, an infringement action against any third
party. AGIX can use NJMRC's name in connection therewith and to name NJMRC as a
party thereto if necessary. If AGIX does not commence a particular infringement
action within ninety (90) days of receipt of the notice of infringement, then
NJMRC, after notifying AGIX in writing, shall be entitled to bring such
infringement action at its own expense. The Party conducting such action shall
have full control over its conduct, including settlement of the infringement
action. In any event, NJMRC and AGIX shall assist one another and cooperate in
any such litigation at the other's request at the expense of the requesting
Party.
C. Recovery. NJMRC and AGIX shall recover their respective actual
and reasonable out-of-pocket expenses, or equitable proportions thereof,
associated with any litigation or settlement of the infringement action from any
recovery made by any Party. Any excess amount shall be shared equally between
AGIX and NJMRC, provided in no event shall NJMRC's share of the excess amount
exceed the royalties which would otherwise be due NJMRC under this Agreement.
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D. Cooperation. The Parties shall keep one another informed of
the status of and of their respective activities regarding any litigation or
settlement of any infringement action concerning Licensed Products or Patent
Rights.
E. Royalty Payment Reductions During Litigation.
(i) In the event that a third party sues AGIX, its
Affiliate, or its Sublicensee, in any court or agency, alleging that any action
such as manufacture, use, sale, offer for sale, exportation, importation,
marketing, or promotion of a Licensed Product infringes or will infringe the
third party's patents anywhere in the Licensed Territory, and provided that the
complaint of said third party specifically alleges in writing that the practice
of Patent Rights or Related Technology constituted or otherwise directly caused
such alleged infringement, then, during the pendency of such litigation, AGIX
and its Affiliate may withhold royalty payments and sublicense fees which it
pays to NJMRC under Section III of this Agreement to cover costs and expenses
associated with such litigation, including specifically and without limitations,
any and all attorney's fees, court costs, expert witness fees, and travel costs.
In no case shall the amount withheld be more than 50% of the royalties and
sublicense fees specified under Section III.
AGIX shall deposit all such withheld royalty payments and
sublicense fees under this subparagraph (i) into an interest-bearing escrow
account pending the final resolution of such litigation. In the event that a
court of competent jurisdiction finally determines that AGIX', its Affiliate's,
or its Sublicensee's manufacture, use, sale, offer for sale, exportation,
importation, marketing, or promotion of a Licensed Product infringes, or will
infringe, the third party's patents anywhere in the Licensed Territory, where
such infringement is based on the use of Patent Rights or Related Technology,
then all moneys in the escrow account at the time of such final determination
shall belong to and shall be promptly refunded to AGIX or its Affiliate.
Otherwise, upon a final resolution of the litigation, all moneys in the escrow
account shall belong to and shall be promptly paid to NJMRC.
(ii) In the event that AGIX or its Affiliate, brings any
infringement action against any third party, in any court or agency, alleging
that that the third party's manufacture, use, sale, offer for sale, exportation,
importation, marketing, or promotion of any method of product infringes or will
infringe the Licensed Patents anywhere in the Licensed Territory, then, during
the pendency of such litigation, AGIX and its Affiliate may withhold royalty
payments and sublicense fees which it pays to NJMRC under Section III of this
Agreement to cover costs and expenses associated with such litigation, including
specifically and without limitations, any and all attorney's fees, court costs,
expert witness fees, and travel costs. In no case shall the amount withheld be
more than 50% of the royalties and sublicense fees specified under Section III.
AGIX shall deposit all such withheld royalty payments and
sublicense fees under this subparagraph (ii) into an interest-bearing escrow
account pending the final resolution of such litigation. In the event that a
court of competent jurisdiction finally determines that the third party's
manufacture, use, sale, offer for sale, exportation, importation,
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marketing, or promotion of any method of product infringes or will infringe any
valid Licensed Patent anywhere in the Licensed Territory, then the moneys in
the escrow account shall be belong to and shall be promptly paid to AGIX or its
Affiliate, except for an offset amount equal to any damages awarded to and
collected by AGIX or its Affiliate, which offset amount (not to exceed the
total amount of moneys in the escrow account) shall be paid to NJMRC. In the
event that a court of competent jurisdiction finally determines that the third
party does not infringe any valid Licensed Patent anywhere in the Licensed
Territory, then all moneys in the escrow account shall belong to and shall be
promptly paid to AGIX or its Affiliate.
VIII. WARRANTIES AND REPRESENTATIONS
A. Warranty of Title. NJMRC warrants and represents that, as of
the Effective Date, it owns the entire right, title and interest in the Patent
Rights, and Related Technology provided to AGIX under this Agreement, and that
it otherwise has the right to enter into this Agreement. NJMRC further warrants
and represents that it will not encumber any such Patent Rights and Related
Technology with liens, mortgages, security interests or otherwise. NJMRC further
warrants that any employee who worked on the inventions disclosed and claimed in
the Patent Rights or Related Technology was under an obligation to assign his or
her entire right, title and interest in any and all inventions to NJMRC. NJMRC
further warrants and represents that there is nothing in any third party
agreement NJMRC has entered into as of the Effective Date which, in any way,
will limit NJMRC's ability to perform all of the obligations undertaken by NJMRC
hereunder, and that it will not enter into any agreement after the Effective
Date under which NJMRC would incur any such limitations.
B. Warranty of Rights Granted. NJMRC warrants and represents
that, as of the Effective Date, no other person or organization presently has
any effective assignment, option, license, sublicense or any other similar
rights granted directly or indirectly by NJMRC under Patent Rights or Related
Technology to the extent that such relate to the making, having made, use,
marketing, distributing or sale of Licensed Product within the Territory which
would affect AGIX's rights and licenses to Patent Rights and Related Technology
granted under this Agreement, except as may otherwise be permitted by this
Agreement.
C. Warranty of Complete Rights. NJMRC warrants and represents
that, to the best of its knowledge, the Patent Rights and the Related Technology
of Attachment B represent all of the rights and intellectual property which it
owns or controls pertaining to MEKK Technology, CGRP Technology, IL-10
Technology, and CD40 technology as of the Effective Date, and further covenants
that should it discover any additional rights or intellectual property
pertaining to these Patent Rights which it owned or controlled as of the
Effective Date, it shall promptly notify AGIX of such rights or intellectual
property and cause the same to be included and incorporated into the Patent
Rights and Related Technology licensed to AGIX under this Agreement without any
additional consideration required by AGIX.
D. Except as expressly set forth in this Agreement, NJMRC, ITS
TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO REPRESENTATIONS
AND EXTEND NO WARRANTIES OF ANY KIND, EITHER
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EXPRESS OR IMPLIED INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OR PATENTABILITY OF ANY CLAIMS UNDER
PATENT RIGHT(S) -, WHETHER ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER
DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE
CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY NJMRC THAT THE PRACTICE
BY AGIX OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF
ANY THIRD PARTY. IN NO EVENT SHALL NJMRC, ITS TRUSTEES, DIRECTORS, OFFICERS,
EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF
ANY KIND RESULTING FROM AGIX'S EXERCISE OF THE RIGHTS GRANTED HEREIN, INCLUDING
ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER
NJMRC SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW
OF THE POSSIBILITY.
E. AGIX represents and warrants to NJMRC that:
(i) The execution, delivery and performance of this
Agreement by AGIX does not conflict with any agreement, instrument or
understanding, oral or written, to which it is a party or by which it may be
bound. AGIX is not currently a party to, and during the Term of this Agreement
will not enter into any agreements, oral or written, that are inconsistent with
its obligations under this Agreement.
(ii) AGIX is validly existing and in good standing under
the laws of the country of its incorporation and has the corporate power and
authority to enter into this Agreement. This Agreement has been duly executed
and delivered by AGIX and constitutes the valid and binding obligation of AGIX,
enforceable against it in accordance with the terms. The execution, delivery and
performance of this Agreement have been duly authorized by all necessary action
on the part of AGIX, its officers and directors.
F. NJMRC represents and warrants to AGIX that:
(i) To the best of its knowledge, the execution, delivery
and performance of this Agreement by NJMRC does not conflict with any agreement,
instrument or understanding, oral or written, to which it is a party or by which
it may be bound. NJMRC is not currently a party to, and during the Term of this
Agreement will not enter into any agreements, oral or written, that are
inconsistent with its obligations under this Agreement.
(ii) NJMRC is validly existing and in good standing under
the laws of the country of its incorporation and has the corporate power and
authority to enter into this Agreement. This Agreement has been duly executed
and delivered by NJMRC and constitutes the valid and binding obligation of
NJMRC, enforceable against it in accordance with the terms. The execution,
delivery and performance of this Agreement have been duly authorized by all
necessary action on the part of NJMRC, its officers and directors.
G. Notwithstanding any other representation or warranty of NJMRC
under this Agreement, NJRMC and AGIX acknowledge that NJMRC may have obligations
to the third
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parties under certain agreements existing as of the Effective Date that may or
may not take precedence over the rights in CD40 Technology, including U.S.
Patent No. 6,132,978 and {*}, granted to AGIX by NJMRC hereunder.
IX. INDEMNIFICATION
A. AGIX agrees to indemnify, hold harmless, and defend NJMRC
against any and all claims for death, illness, personal injury, property damage,
patent infringement, and improper business practices arising out of AGIX'S
exercise of its rights under this Agreement, including the manufacture, use,
sale, or other disposition of Patent Rights or Licensed Products by AGIX or its
Affiliates, Sublicensees, or customers, except where such claims are due to
NJMRC's gross negligence or willful misconduct. Upon receipt of any notice,
demand, or service of process involving any of the matters for which AGIX has
agreed to hold NJMRC harmless, NJMRC shall promptly notify AGIX in writing of
same. AGIX, at its election, shall have the right to take over or participate in
the defense of any claim to which its indemnity attaches.
B. AGIX shall at all times comply, through insurance or
self-insurance, with all statutory workers' compensation and employers'
liability requirements covering any and all employees with respect to activities
performed under this Agreement.
C. AGIX shall obtain and carry in full force and effect
commercial product liability insurance which shall protect AGIX and NJMRC with
respect to events covered in Paragraph IX.A. Such insurance shall be written by
a reputable insurance company and shall require thirty (30) days written notice
to be given to NJMRC prior to any cancellation or material change thereof. The
limits of such insurance shall be such amounts as are customary in the industry.
AGIX shall provide NJMRC, upon its request, with Certificates of Insurance
evidencing the foregoing.
X. TERMINATION
A. With a 90 day prior written notice, AGIX may terminate this
Agreement anytime with or without cause, solely at its own discretion. Should
AGIX exercise this termination option, then all rights related to Patent Rights
and Related Technology will revert to NJMRC. Any Stock Warrants unvested at the
date of termination according to the schedule in Attachment C will expire.
B. Either Party may terminate this entire Agreement (a) for
breach by the other Party, upon sixty (60) days' prior notice to the breaching
Party of such breach, provided the breach is not cured within such sixty (60)
day period, or (b) upon fifteen (15) days' prior written notice, if the other
Party becomes insolvent ceases to conduct its business or a receiver is
appointed for its business or properties, or if a petition is filed by or
against such Party under any provisions of any bankruptcy, insolvency or similar
laws.
C. Termination of this Agreement shall not relieve AGIX of its
obligations to (i) pay NJMRC Royalties and Consideration for Related Technology
due and unpaid at the time of
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termination, (ii) make available its books and records for inspection and/or
audit by a certified accounting firm selected by NJMRC, and (iii) retain in
confidence all Confidential Information for a period of three (3) years
following termination of this Agreement except as otherwise provided in this
Agreement.
D. Any termination of this Agreement under this Section X shall
be without prejudice as to any right of either Party under this Agreement with
respect to any obligation of the other Party which has accrued on or prior to
the effective date of such termination.
XI. FORCE MAJUERE
If the performance of any part of this Agreement by either Party, or of
any obligation under this Agreement, is prevented, restricted, interfered with
or delayed by reason of any cause beyond the reasonable control of the Party
liable to perform, unless conclusive evidence to the contrary is provided, the
Party so affected shall, upon giving written notice to the other Party, be
excused from such performance to the extent of such prevention, restriction,
interference or delay, provided that the affected Party shall use its reasonable
best efforts to avoid or remove such causes of non-performance and shall
continue performance with the utmost dispatch whenever such causes are removed.
When such circumstances arise, the Parties shall discuss what, if any,
modification of the terms of this Agreement may be required in order to arrive
at an equitable solution.
XII. GOVERNING LAW
This Agreement shall be deemed to have been made in the State of
Georgia, U.S.A. and its form, execution, validity, construction and effect shall
be determined in accordance with the laws of the State of Georgia, U.S.A.
XIII. WAIVER OF BREACH
The failure of either Party at any time or times to require performance
of any provision of this Agreement shall in no manner affect its rights at a
later time to enforce the same. No waiver by either Party of any condition or
term in any one or more instances shall be construed as a further or continuing
waiver of such condition or term or of another condition or term.
XIV. SEPARABILITY
In the event any portion of this Agreement shall be held illegal, void
or ineffective, the remaining portions of this Agreement shall remain in full
force and effect.
If any of the terms or provisions of this Agreement are in conflict
with any applicable statute or rule of law, then such terms or provisions shall
be deemed inoperative to the extent that they may conflict therewith and shall
be deemed to be modified to conform to such statute or rule of law.
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In the event that the terms and conditions of this Agreement are
materially altered as a result of this Section XIII of this Agreement, the
Parties will renegotiate the terms and conditions of this Agreement to resolve
any inequities.
XV. ENTIRE AGREEMENT
This Agreement, entered into as of the date written above, constitutes
the entire agreement between the Parties relating to the subject matter of this
Agreement and supersedes all previous writings and understandings. No terms or
provisions of this Agreement shall be varied or modified by any prior or
subsequent statement, conduct or act of either of the Parties, except that the
Parties may amend this Agreement by written instruments specifically referring
to and executed in the same manner as this Agreement. The captions and section
numbers used in this Agreement are inserted only as a matter of convenience and
do not define, limit, explain or modify the scope or intent of such sections or
otherwise affect this Agreement.
XVI. NOTICES
Any notice, consent or approval permitted or required under this
Agreement shall be in writing, shall specifically refer to this Agreement, and
shall be effective on receipt, as evidenced in writing, when given by registered
airmail or certified mail, postage prepaid, or overnight courier, and addressed,
unless otherwise specified in writing, to the addresses of the Parties described
below:
For NJMRC: Manager of Intellectual Property and Technology
Commercialization
National Jewish Medical and Research Center
0000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
with a copy to the Executive Vice President and Chief Administrative Officer at
NJMRC at the same address.
For AGIX: Vice President of Business & Corporate Development
AtheroGenics, Inc.
0000 Xxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX 00000
with a copy to: Xxxxxxx X. Xxxxxxxxxxx, Esq.
Long Xxxxxxxx & Xxxxxx LLP
000 Xxxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx, XX 00000
XVII. ASSIGNMENT
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This Agreement and the licenses herein granted shall be binding upon
and inure to the benefit of the successors in interest of the respective
Parties. Neither this Agreement nor any interest hereunder shall be assignable
by either Party without the written consent of the other Party, except that (i)
in the event of the sale or transfer by other means any or all of AGIX's entire
business in the Licensed Field to another owner, or the reorganization of AGIX
into another entity having the same or similar function, or transfer of some or
all of the rights hereunder to an Affiliate, or joint venture, no such consent
is required and all rights and obligations of this Agreement shall accrue to the
new owner or entity, and (ii) NJMRC may assign its rights to receive royalties
without such consent.
XVIII. RECORDING
AGIX shall have the right, at any time, to record, register, or
otherwise notify this Agreement in appropriate governmental or regulatory
offices anywhere in the Territory, and NJMRC shall provide reasonable assistance
to AGIX in effecting such recording, registering or notifying.
XIX. MISCELLANEOUS
A. NJMRC does not grant to AGIX and shall not grant to any third
Party the right, license or privilege to use NJMRC's name and likeness worldwide
on or in connection with the marketing and sale of the Licensed Products or as a
trademark thereon. AGIX shall have the right to market and advertise the
Licensed Products under AGIX's name, trademarks, trade names, labels and other
designations which shall remain and be the sole property of AGIX.
B. To protect the Patent Rights, NJMRC and AGIX shall include a
reference in all publications or product literature covered by Patent Rights
mentioning that those products are covered by pending or issued patents.
C. The rights and privileges granted hereunder to the parties
shall inure to the benefit of the parties and their Affiliates.
D. No modification or waiver of any portion of this Agreement
shall be made without the written consent of both Parties unless such portion is
in violation of any laws.
E. This Agreement shall not be construed as creating the
relationship of master and servant, principal and agent, or a co-partnership or
joint venture between the parties.
XX. ARBITRATION
All disputes under this Agreement shall be submitted to an arbitration
panel of three by either Party, and if so submitted by either Party, shall be
finally settled by arbitration conducted in accordance with the applicable rules
of the American Arbitration Association in effect on the date of this Agreement.
Such arbitration shall take place at a location to be mutually agreed to
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by the Parties. The arbitrator shall have substantial experience in the drafting
and negotiation of license and technology agreements, and shall apply the laws
of the State of Georgia. The decision by the arbitrator shall be binding and
conclusive upon the Parties, their successors, and assigns and they shall comply
with such decision in good faith, and each Party hereby submits itself to the
jurisdiction of the courts of the place where the arbitration is held, but only
for the entry of judgment with respect to the decision of the arbitrator
hereunder. Notwithstanding the foregoing, judgment upon the award may be entered
in any court where the arbitration takes place, or any court having jurisdiction
The Parties shall bear the costs of arbitration equally.
XXI. EXECUTION IN COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of
which shall be deemed an original but all of which together shall constitute one
and the same instrument.
THE PARTIES, THROUGH THEIR AUTHORIZED OFFICERS, HAVE EXECUTED THIS AGREEMENT AS
OF THE DATE THE LAST REQUIRED SIGNATURE IS OBTAINED:
NATIONAL JEWISH MEDICAL RESEARCH CENTER ATHEROGENICS, INC.
BY: /s/ Xxxxx X. Xxxxx BY: /s/ Xxxxxxx X. Xxxxxxx
--------------------------------- -------------------------------
Xxxxx X. Xxxxx, M.D. Xxxxxxx X. Xxxxxxx, M.D., Ph.D.
TITLE: Executive VP for Academic Affairs TITLE: President & Chief Executive
Officer
DATE: 22 June 2001 DATE: 26 June 2001
--------------------------------- -------------------------------
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ATTACHMENT A
PATENTS AND PATENT APPLICATIONS
I. MEKK
- Patent # 5,405,941, "MEKK Protein, Capable of Phosphorylating
MEK"
- Patent # 5,753,446, "Mitogen ERK Kinase Kinase (MEKK) Assay"
- Patent # 5,854,043, "MEKK-Related Signal Transduction Kinases"
- Patent # 5,910,417, "Regulation of Cytokine Production in a
Hematopoietic Cell"
- Patent # 5,981,265, "Methods for Regulating MEKK Protein
Activity
- Patent # 6,074,861, "MEKK Proteins"
- {*}
- {*}
- {*}
- {*}
- {*}
- {*}
- {*}
II. CGRP
- {*}
III. IL-10
- {*}
IV. CD-40
- Patent # 6,132,978, "Method to Regulate CD40 Signaling"
- {*}
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ATTACHMENT B
RELATED TECHNOLOGY
All genetic constructs and cellular and animal research tools and reagents
developed by or under the direction of Xxxx Xxxxxxx, Ph.D. during his employment
at NJMRC from 01SEPT88 through 01FEB00:
(1) directly relating to the research and development of products related
to Patent Rights; and
(2) containing modifications of genetic elements (including either
deletions or additions) claimed in Patent Rights.
Related Technology shall specifically include:
- ES cell knockouts and knockout mice with deletions to MEKK 1, 2, or 3.
- Plasmids containing sequences that encode MEKK 1, 2, 3, or 4.
- Transgenic cells and mice over-expressing MEKK 1, 2, 3, or 4.
Related technology shall also include data and information generated using the
above research tools and reagents to the extent such data and information is
necessary or desired for the manufacture, use, importation, offer for sale or
sale, sublicense of any compounds, products, targets, or technology claimed or
described under Patent Rights.
* * *
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ATTACHMENT C
STOCK WARRANT PRICING & VESTING
NJMRC will receive a stock Warrant grant of 40,000 shares on the Effective Date
of the Agreement. The exercise price will equal the closing price of the stock
on the Effective Date. If AGIX stock price {*} on the Effective Date, NJMRC will
have the right to renegotiate the Warrant grant. {*} of the Warrants shall vest
on each anniversary of the Effective Date for {*} years. Should AGIX terminate
the Agreement, any unvested Warrants at date of termination will expire.
{*}.
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