EXHIBIT 10.98
DEVELOPMENT, LICENCE AND
COLLABORATION AGREEMENT
BETWEEN
(1) ROSLIN INSTITUTE (EDINBURGH), a
company incorporated in Scotland
under the Companies Acts with
registered number 157100 and having
its registered office at ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇ ("Institute");
(2) VIRAGENICS, INC., a company
incorporated under the laws of the
State of Delaware and having its
principal place of business at ▇▇▇▇▇
▇▇▇, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
Plantation, Florida 33324, United
States of America ("ViraGenics");
and
(3) VIRAGEN INC., a company incorporated
under the laws of the State of
Delaware and having its principal
place of business at Suite 100,865
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of
America ("Viragen")
WHEREAS
(A) The Institute and Viragen entered into a development, licence and
collaboration agreement dated 15th November 2000 to collaborate in a
research and development project in the field of therapeutic and
diagnostic protein production in avian species;
(B) By an agreement between the Institute, Viragen and ViraGenics dated
18th March 2002 ("the Transfer Agreement"), ViraGenics took over the
rights, obligations and liabilities of Viragen under the Old DLCA
(subject to Viragen guaranteeing ViraGenics performance);
(C) ViraGenics wishes to fund further development of the research carried
out under the Old DLCA, and the Institute has agreed to undertake such
further development work in order to further its objectives in a manner
consistent with its status as a research and educational institute and
its recognition as a Scottish charity (number SC023592); and
(D) It has therefore been agreed that, as from the Effective Date, the Old
DLCA and the Transfer Agreement will be terminated and a new
development, licence and collaboration agreement be entered into on the
terms and conditions set out herein.
NOW IT IS HEREBY Agreed as follows:-
1. DEFINITIONS AND INTERPRETATION
1.1 In this Agreement, including the Recitals, unless the context
otherwise requires, the following defined terms shall have the
meanings set out opposite them: -
AGREEMENT means this development, licence and
collaboration agreement together
with the Schedule hereto as the same
may be amended, altered, varied or
otherwise modified in accordance
with its terms;
ASSOCIATED COMPANY means a subsidiary or
holding company of ViraGenics, or
any subsidiary of any such holding
company from time to time (the terms
"holding company" and "subsidiary"
having the meanings set out in
sections 736 and 736A of the
Companies Act 1985);
2
EEA shall mean the European Economic
Area as constituted from time to
time;
EFFECTIVE DATE means 1st December 2003
notwithstanding the date or dates of
signing of this Agreement;
FIELD means therapeutic and diagnostic
protein production in avian species;
FINAL REPORT means the final written report
summarising the Results generated
during the Project Period provided
by the Institute to ViraGenics;
FIRST SALE DATE shall mean the date on which
ViraGenics, an Associated Company,
or any sub-licensees first puts a
Product or Service on the market in
the EEA;
FOREGROUND INTELLECTUAL means all and any Intellectual
PROPERTY Property which is conceived, first
reduced to practice or writing or
developed (1) in the course of the
Project (including for the avoidance
of doubt the Results and all
Intellectual Property in the
Results) with the exclusion of the
Previous Results; and (2) under the
Spur Agreement;
INSTITUTE'S BACKGROUND means all and any Intellectual
INTELLECTUAL PROPERTY Property (other than Foreground
Intellectual Property) in the Field
belonging to or used by the
Institute, other than the Previous
Results, and which is necessary in
3
order for ViraGenics or any
Associated Company or any licensee
of the same to sell Products and/or
Services;
INSTITUTE'S PATENT means the Patent, short particulars
of which are set out in Part 1 of
the Schedule;
INTELLECTUAL PROPERTY means all Patents, Know-how or other
know-how, processes, copyright,
design rights, including the right
to apply for any of the same, and
any other intellectual property
rights of a similar nature arising
in any part of the Territory;
KNOW-HOW means technical or other information
which is not in the public domain
including ideas, concepts,
inventions, discoveries, data,
formulae, specifications, drawings,
manuals, information, chemical
compounds and derivatives, analogues
and precursors, methods and
processes of synthesis, procedures
for experiments and tests and
results of experimenting and
testing, results of research and
development including laboratory
records and data analyses derived or
otherwise generated from the Project
by a Party which is secret,
substantial and identified;
LABORATORY BOOKS means the laboratory books
containing any and all Results
generated during the Project Period
which shall be maintained by the
4
Institute in accordance with
standards of current Good Laboratory
Practice applicable from time to
time;
NET INVOICE PRICE means the total price received by
ViraGenics or any Associated Company
on sales of Products and/or Services
invoiced by ViraGenics or any
Associated Company less all
discounts, allowances, and returns
actually granted transportation
costs, packaging costs, insurance
costs, and taxes or duties based on
directly sale (to the extent to
which any of the foregoing are
allowed for or included in the
invoice) PROVIDED THAT in a case
where the Products and/or Services
are:
(a) rented, leased, let out or
hired or otherwise disposed of
to a customer by ViraGenics or
any Associated Company; or
(b) used by ViraGenics or any
Associated Company for its own
commercial purposes; or
(c) incorporated in any larger
equipment or apparatus or
other service and supplied by
ViraGenics or any Associated
Company at a price which is
included in the price for the
larger equipment or apparatus
5
or other service the Net
Invoice Price of each such
Product and/or Service shall
be deemed to be equivalent (i)
in the case of (a) and (b)
above, to the Net Invoice
Price which would have been
applicable under this
Agreement had such Product
and/or Service been
transferred to an independent
arm's length customer and (ii)
in the case of (c) above, to
the relevant proportion of the
Net Invoice Price relating to
such larger equipment or
apparatus or other service;
OLD DLCA means the research and development
agreement between the Institute and
ViraGenics, dated 15 November 2000
which agreement shall terminate on
the execution of this Agreement by
the Parties;
PATENT means any patent or patent
application, author certificate,
inventor certificate and all foreign
counterparts of the same and
including all divisions, renewals,
continuations,
continuations-in-part, extensions,
reissues, substitutions,
confirmations, registrations,
revalidations and additions of or to
any of the same, as well as any
supplemental protection certificate
or any like form of protection and
including the right to apply for any
of the same arising anywhere in the
Territory;
6
PARTY means each of the Institute,
ViraGenics and Viragen and the term
"PARTIES" shall be construed
accordingly;
PMC means the project management
committee consisting of
representatives of the Institute and
representatives of ViraGenics or an
Associated Company established in
accordance with clause 4.1;
PMC CHAIRMAN the chairman of the PMC appointed in
accordance with clause 4.3;
PMC REPRESENTATIVES has the meaning set out in clause
4.2;
PREVIOUS RESULTS means any and all Patents and/or
Know-how and any and all findings,
reports, results, data, formulae,
processes and technical information
generated or otherwise produced by
the Institute during the term of the
Old DLCA and which are owned by
ViraGenics absolutely pursuant to
clause 14.1;
PRODUCTS AND/OR SERVICES means any substance, chemical,
elements, material, composition,
invention, apparatus, method,
service or product within the Field,
the manufacture, use, sale or
provision of which is obtained or
derived directly from or utilising
the ViraGenics' Background
Intellectual Property and/or the
Institute's Background Intellectual
Property and/or ViraGenics' Existing
7
Intellectual Property and/or the
Foreground Intellectual Property
and/or the Institute's Patent;
PROJECT means the research project to be
carried out by the Institute in
accordance with the Project Workplan
during the Project Period;
PROJECT COST means the sum of seven hundred and
nineteen thousand, three hundred and
thirty eight pounds sterling
((pound)719,338) as set out in Part
3 of the Schedule or such greater
amount as may be agreed in
accordance with clause 4.4 or as the
Parties may otherwise agree in
writing;
PROJECT DIRECTOR means ▇▇. ▇▇▇▇▇ ▇▇▇▇ or such other
person as the Parties may agree in
writing;
PROJECT PERIOD means the period of two (2) years
commencing on the Effective Date
(provided the Project is not
terminated earlier in accordance
with either of clauses 5.2 or 7.3)
or such longer period as may be
agreed between the Parties in
accordance with clause 4.4;
PROJECT REPORTS means the quarterly reports provided
to ViraGenics by the Institute
summarising the Results generated
during the preceding three month
8
period and in a format and to the
degree of detail to be agreed by the
PMC;
PROJECT WORKPLAN means the workplan for the Project
which forms Part 4 of the Schedule,
as the same may be amended from time
to time in accordance with clause
4.4;
RESEARCHERS means those employees of the
Biotechnology and Biological
Sciences Research Council ("BBSRC")
based at the Institute, including
the Project Director, who have been
allocated to work on the Project;
RESULTS mean the data and results arising
from the research and development
work generated by the Institute
whilst undertaking the Project which
data and results shall be kept in
Laboratory Books and which shall
include all findings, reports, data,
formulae, processes and technical
information but which shall not
include the Previous Results;
SCHEDULE means the Schedule in 5 parts which
is annexed to and forms part of this
Agreement;
SPUR AGREEMENT means the agreement between Viragen
and the Institute dated 14th
November 2002 relating to the
Institute's obligations to Viragen
under the Spur Programme;
9
SPUR PROGRAMME means the Scottish Executive
initiative under which ViraGenics
has been provided with grant funding
to undertake a research and
technical development project;
SUPPLY means to sell, provide, lend, let
out on hire, lease or any other
disposal or provision and Supplied
shall be construed accordingly;
TERRITORY means the world;
VIRAGENICS' BACKGROUND
INTELLECTUAL PROPERTY means:
(i) ViraGenics' Existing
Intellectual Property;
(ii) all Intellectual Property
licensed to ViraGenics or
Viragen; and
(iii) any other Intellectual
Property (other than
Foreground Intellectual
Property) belonging to or
used by ViraGenics or
Viragen.;
and which it is free to licence to
the Institute;
VIRAGENICS' EXISTING means all Intellectual Property
INTELLECTUAL PROPERTY generated under the Old DLCA and
owned by or licensed to ViraGenics,
as is in existence at the Effective
Date, including but without
limitation to the generality of the
foregoing, ViraGenics' Patents and
the Previous Results; and
10
VIRAGENICS' PATENTS means those Patents in the name of
ViraGenics or an Associated Company
short particulars of which are set
out in Part 5 of the Schedule.
1.2 In this Agreement: -
1.2.1 references to clauses, sub-clauses, Parts and the Schedule are
to clauses, and sub-clauses, Parts and the Schedule to this
Agreement;
1.2.2 headings to Parts, clauses and in the Schedule are for
convenience only and do not affect the interpretation of this
Agreement;
1.2.3 words importing the singular shall include the plural and vice
versa; and
1.2.4 references to any statute or statutory provision includes a
reference to that statute or statutory provision as amended
extended or re-enacted from time to time.
1.3 The Schedule and the Recitals to this Agreement form part of
this Agreement and have the same full force and effect as if
expressly set out in their entirety in the operative part of
this Agreement.
2. COMMENCEMENT AND DURATION
2.1 This Agreement shall commence on the Effective Date and shall,
subject to earlier termination under clauses 24 (Termination)
and 26 (Force Majeure) continue in force during the Project
Period and thereafter, on a country by country basis in the
Territory, as appropriate, until the later of:-
2.1.1 the last to expire in the relevant country in the Territory of
the Institute's Patent, or ViraGenics' Patents or the patents
derived from the Foreground Intellectual Property; or
2.1.2 Know-how, derived from the Foreground Intellectual Property
fifteen (15) years from the Effective Date or (in relation to
countries within the EEA) ten years from the First Sale Date,
whichever is the earlier.
2.2 For the avoidance of doubt, ViraGenics' obligation to pay
royalties to the Institute at the levels set out in clause
19.1 shall survive termination or expiry of this Agreement as
set out in clause 2.1.
11
3. TERMINATION OF OLD DLCA AND TRANSFER AGREEMENT
3.1 The Institute and ViraGenics hereby agree that the Old DLCA
will terminate with effect from the date of execution of this
Agreement. The Institute and ViraGenics each hereby waive,
renounce and discharge any and all claims either the Institute
or ViraGenics may have against the other arising out of or in
connection with the Old DLCA and neither the Institute nor
ViraGenics shall have any further obligation to the other
under the Old DLCA.
3.2 The Institute, ViraGenics and Viragen hereby agree that the
Transfer Agreement will terminate with effect from the date of
execution of this Agreement and each of the Institute and
ViraGenics hereby waives, renounces and discharges any and all
claims any Party may have against any other Party arising our
of or in connection with the Transfer Agreement and none of
the Parties shall have any further obligation to any other
Party under the Transfer Agreement.
4. PROJECT MANAGEMENT COMMITTEE
4.1 The Parties shall, immediately following the Effective Date,
establish the PMC, to oversee and manage the Project. In
particular, the PMC shall:
4.1.1 set the objectives and timetable of the Project Workplan;
4.1.2 monitor progress against any agreed milestones and the
timetable of the Project Workplan;
4.1.3 advise and assist in the resolution of any scientific or
technical difficulties which are experienced by the
Researchers;
4.1.4 review the results of the Project with a view to identifying
patentable inventions;
4.1.5 consider opportunities for patent filings and publications;
4.1.6 consider issues relating to maintenance and prosecution of
patents; and
4.1.7 subject to clause 4.4, propose amendments to the Project and
the Project Workplan as may be necessary or desirable to give
effect to this Agreement.
4.2 The PMC shall comprise such number of members as are agreed
between the Institute and ViraGenics, but shall always
comprise an equal representation from the Institute and
ViraGenics (or an Associated Company). For so long as he or
she remains an employee of BBSRC working at the Institute, the
Project Director shall be one of the Institute's appointees.
The Institute and ViraGenics will each notify the PMC Chairman
in writing of their nominated representatives ("PMC
Representatives"). The Institute and ViraGenics may replace
its respective PMC Representatives by written notice to the
12
PMC Chairman. (Provided that, notwithstanding the
aforementioned provision, a PMC Representative may attend a
meeting of the PMC by way of a nominee).
4.3 At the first meeting of the PMC, the PMC Chairman shall be
appointed by the PMC Representatives. The role of Chairperson
shall rotate between ViraGenics or an Associated Company and
the Institute on a 6 monthly basis.
4.4 At the outset of the Project and during the Project Period,
the PMC will meet at times and places mutually agreed and in
any event at least once in every three (3) months (with the
first such meeting to take place within three (3) months of
the Effective Date) to discuss the progress of the Project and
Results generated to date, as well as the ongoing plans, or
changes therein, of the Project Workplan (including, but
without limitation, extension of the Project Period and
increases/decreases to the Project Costs). ViraGenics shall
pay any travelling, accommodation or other costs reasonably
incurred by the Institute under this clause 4.4 for such
meetings during the Project Period upon production of relevant
invoices.
4.5 The PMC Representatives shall be given reasonable notice of
meetings by the PMC Chairman (which shall be a minimum of
thirty (30) days notice of the date, place and time of the
meeting) unless such notice requirement is unanimously waived
by the PMC Representatives. The quorum for meetings of the PMC
shall be as agreed between the Institute and ViraGenics but as
a minimum must comprise of at least one PMC Representative (or
nominee) of the Institute and at least one PMC Representative
(or nominee) of ViraGenics or an Associated Company.
4.6 Each PMC Representative attending a PMC meeting shall have one
vote and all decisions of the PMC regarding the Project shall
be by unanimous decision, failing which the provisions of
clause 5 shall apply.
4.7 Except as otherwise provided in this clause 4, the procedures
of the PMC, the way in which it is conducted and subject to
clause 4.4 the frequency of its meetings shall be determined
by the PMC.
4.8 All communications between the Parties relating to the conduct
of the Project pursuant to this Agreement shall be made
through the PMC save that the Project Director may continue to
communicate direct with the Chairman and CEO of ViraGenics in
accordance with existing practice.
5. PMC DISPUTE RESOLUTION PROCEDURE
5.1 In the event that the PMC is unable to reach unanimous
decision on any matter in connection with the management of
the Project, including but without limitation those matters
detailed in clause 4.1, then the matter shall be referred by
the PMC Chairman in writing within three (3) days of the date
of the PMC meeting at which the dispute arose to the Institute
Director and the CEO and Chairman of ViraGenics for
resolution.
13
5.2 The Institute Director and the CEO and Chairman of ViraGenics
shall co-operate in good faith and use all reasonable
endeavours to resolve the matter on an amicable basis within
sixty (60) days (or such longer period as may be mutually
agreed) of receipt of notice by the PMC Chairman. If the
Institute Director and the CEO and Chairman of ViraGenics fail
to resolve the dispute in the allotted time, then the dispute
resolution procedure shall be deemed exhausted and the Project
shall automatically terminate on expiry of the aforementioned
allotted time.
5.3 In the event of termination of the Project pursuant to clauses
5.2 and 7.3 the Institute's right to a share of royalties and
other income under clause 19 shall continue and accordingly
the provisions of clause 19 shall remain in full force and
effect. The Foreground Intellectual Property shall be dealt
with in accordance with clause 25.8.
6. LICENCES FOR CARRYING OUT THE PROJECT
6.1 Nothing in this Agreement transfers ownership of ViraGenics'
Background Intellectual Property to the Institute and any
disclosures of ViraGenics' Background Intellectual Property to
the Institute shall be subject to clause 10 (Confidentiality)
and this clause 6.
6.2 ViraGenics shall no later than the Effective Date provide or
disclose to the Institute ViraGenics' Background Intellectual
Property, necessary for the performance of the Project, as is
in or can be rendered into material form and, during the
continuance of this Agreement, ViraGenics shall promptly
disclose to the Institute any further ViraGenics' Background
Intellectual Property necessary for the performance of the
Project.
6.3 ViraGenics hereby grants to the Institute a royalty free,
non-exclusive right and licence to use ViraGenics' Background
Intellectual Property to such extent as is necessary to enable
the Institute to undertake the Project but only insofar as
ViraGenics is free to grant any such licence.
7. PROJECT WORK
7.1 The Institute shall start work on the Project on the Effective
Date and shall perform the Project in accordance with the
terms of this Agreement and the Project Workplan and shall
allocate such Researchers, resources and equipment as are in
the Institute's view necessary for the proper running of the
Project. The PMC may at any time amend the Project Workplan in
accordance with clause 4.4.
7.2 The Institute shall carry out the work on the Project with
reasonable skill and care, to the best of its ability and in
accordance with appropriate quality standards and current best
scientific practice. The Institute shall use all reasonable
endeavours to ensure the accuracy of the work performed, and
the Results generated, by it in connection with the Project.
14
7.3 The Project shall be carried out under the personal direction
of the Project Director, who shall have responsibility for the
day-to-day running, control and management of the Project in
accordance with the Project Workplan which is subject to
review and approval by the PMC from time to time. The Project
Director's duties shall include, but shall not be limited to,
the allocation of work to be undertaken under the Project
Workplan (having regard for the relevant skill and experience
of the Researchers) and the promotion of the performance of
the Project Workplan. In the event that the Project Director
becomes unable to continue the Project, and a mutually
acceptable substitute is not identified within a period of two
hundred and forty (240) days, either the Institute or
ViraGenics shall have the option to terminate the Project by
serving a further sixty (60) days written notice to that
effect on the other Party.
7.4 The Institute and ViraGenics will co-operate with each other
to complete the Project and to cause it to run as smoothly as
possible.
7.5 ViraGenics shall, at its own expense, give such help and
assistance to the Institute during the Project Period as is
reasonably required and requested by the Institute.
7.6 In the performance of the Project the Institute shall be
deemed to be and shall be an independent contractor. None of
the Parties is authorised to act as agent for any other Party
for any purpose and shall not on behalf of any other Party
enter into any contract, warranty or representation as to any
matter. Save as provided for by the terms of this Agreement,
none of the Parties shall be bound by the acts or conduct of
any other Party.
7.7 Subject to clause 7.1, whilst the Institute will use all
reasonable endeavours to ensure the accuracy of the Results,
the Institute makes no warranty, express or implied, as to the
accuracy of the Results or as to the success of the Project.
The Institute shall not be held responsible for any
consequence arising out of any inaccuracies or omissions, in
the Results or otherwise, unless such inaccuracies or
omissions are the direct result of any negligent act,
deliberate omission or wilful default on the part of the
Institute and the Institute shall not have any liability for
any indirect or consequential loss or damage (including but
without limitation loss of profits or anticipated profits)
incurred by ViraGenics and/or Viragen and/or any third party.
7.8 Within three (3) months of the Effective Date, the Institute
shall produce a final written report which shall contain all
of the Previous Results. ViraGenics shall have a period of
three (3) months following delivery of said final report to
satisfy itself with the accuracy and content of the same and
shall be entitled to request reasonable modifications to the
final written report.
7.9 The Institute undertakes to keep safe and maintain on behalf
of ViraGenics all Previous Results and to allow such employees
or representative of ViraGenics or an Associated Company
reasonable access to said Previous Results on reasonable
notice and further the Institute undertakes not to disclose or
dispose of the Previous Results without first obtaining
ViraGenics' express written consent to do so.
7.10 During the Project Period the Institute:
15
7.10.1 undertakes to keep the Results in separate Laboratory Books;
7.10.2 shall permit duly authorised employees or representatives of
ViraGenics or and Associated Company to confer from time to
time with the Project Director and to visit the Institute's
premises solely for the purpose of facilitating disclosure of
the Results to ViraGenics or an Associated Company, provided
that ViraGenics and their duly authorised employees or
representatives shall, while on the Institute's premises, be
bound by all the Institute's regulations and requirements
which are from time to time applicable to the Institute's
premises.
8. PROJECT REPORTING
8.1 Written Project reports summarizing all of the Results
generated during the previous three (3) month period shall be
provided by the Institute to ViraGenics every three (3)
months, and a Final Report shall be submitted by the Institute
within six (6) months of the completion of the Project or, if
earlier, termination of the Project.
8.2 Subject to the terms of clause 7.1, in the event that the PMC
should consider that an aspect of the research work performed
under the Project does not meet the level of accuracy
anticipated by the Parties or unnecessary errors have been
produced, such work shall be repeated by the Institute at no
extra cost to ViraGenics, together with any corresponding and
necessary alteration to the Project Period.
8.3 The Final Report shall contain all of the Results generated
during the Project Period in a format to be agreed by the PMC.
ViraGenics shall have a period of three (3) months following
receipt of the Final Report to satisfy itself with the
accuracy and content of the Final Report and shall be entitled
to request reasonable modifications to the Final Report.
8.4 The Parties agree that the obligations of the Institute in
relation to the Project shall cease upon the expiry of the
three (3) month referred to in clause 8.3. The Parties further
agree that no liability whatsoever shall rest upon the
Institute for the effects of any Products and/or Services or
any other product or process that may be produced or adopted
by ViraGenics or any other party, unless such liability arises
as a direct consequence of any negligent act, deliberate
omission or wilful default on the part of the Institute in
relation to the generation of the Results notwithstanding that
the formulation of such Products and/or Services or any other
such products or process may be based upon the Results and the
Institute shall not have any liability for any indirect or
consequential loss or damage (including but without limitation
loss of profits or anticipated profits) incurred by ViraGenics
and/or Viragen and/or any third party .
9. PROJECT COST
9.1 To enable the Institute to undertake the Project and to
provide the necessary facilities in connection therewith,
ViraGenics shall pay to the Institute the Project Cost in the
manner set out in clause 9.2 to an account notified in writing
by the Institute to ViraGenics.
16
9.2 Pursuant to clause 9.1 and notwithstanding the terms of Part 3
of the Schedule which is illustrative only, the Project Cost
shall be payable as follows: on signature of this Agreement,
ViraGenics shall pay to the Institute, the sum of five hundred
thousand pounds sterling ((pound)500,000) and thereafter the
balance of the Project Cost shall be payable by ViraGenics to
the Institute in advance in equal monthly instalments with the
first instalment being due six calendar months from the last
date of signature of this Agreement. In the event of any
alteration to the Project Costs, the amounts of the monthly
instalments shall be varied accordingly.
9.3 Within forty two (42) days of the end of each six (6) month
period during the Project Period, the Institute shall
reconcile the payments made by ViraGenics under clause 9.2
with the actual sums spent by the Institute in performance of
the Project during that preceding six month period and provide
ViraGenics with a copy of the reconciliation statement.
9.4 For the avoidance of doubt, ViraGenics' obligation to pay the
Project Cost is in addition to the payments due to the
Institute by ViraGenics under the Spur Agreement.
10. CONFIDENTIALITY AND PUBLICATION IN RELATION TO THE PROJECT
10.1 The Institute agrees that it shall, at all times during and
after the term of this Agreement maintain confidentiality in
relation to Project except to extent that the Institute shall
be entitled to enter into any licence or sub-licence pursuant
to clause 11.2, subject always to the provisions of this
clause 10.
10.2 The Parties undertake and agree that they shall not (and they
shall procure that their respective employees, consultants,
representatives, sub-contractors and agents do not) disclose
or permit to be disclosed to any third party, nor make use of
or permit to be made use of, any trade secrets Know-how or
confidential information relating to the disclosing Party's
technical and proprietary information, business secrets or
business affairs or finances or any other information
designated as confidential by the disclosing Party whether
belonging to the disclosing Party or a third party ("the
Confidential Information") and the recipient Party shall at
all times during the continuance of this Agreement and
thereafter maintain confidentiality in relation to the
Confidential Information which is disclosed to the recipient
Party under this Agreement or any other agreement referred to
herein. The recipient Party shall ensure that its respective
employees, consultants, sub-contractors, agents,
representatives and other third parties with whom it may have
dealings relating to the Confidential Information are made
fully aware of the obligations of confidentiality under this
Agreement and each are bound by conditions of secrecy no less
strict than those set out in this Agreement, which conditions
the disclosing Party hereby agrees to enforce. The recipient
Party shall be responsible to the disclosing Party for
disclosure of any Confidential Information by any such third
party referred to in this clause 10.2.
10.3 The obligations of confidentiality contained in clauses 10.1
and 10.2 shall not extend to the Institute's Background
Intellectual Property or to publication or presentations
permitted in accordance with the provisions of clause 10.4,
nor to any information which:-
17
10.3.1 is, was or has become generally available to the public
otherwise than by reason of breach by the recipient Party of
the provisions of this Agreement; or
10.3.2 is or was known to the recipient Party and is or was at its
free disposal prior to its receipt from the disclosing Party
provided that such prior knowledge can be demonstrated by
written evidence; or
10.3.3 is subsequently disclosed to the recipient Party without
obligations of confidence by a third party owing no such
obligations in respect thereof to the disclosing Party; or
10.3.4 is required to be disclosed to any governmental or other
authority or other regulatory body including, without
limitation, the Ministry of Agriculture Fisheries and Food,
the Biotechnology and Biological Sciences Research Council or
by the rules of any stock exchange, including US securities
regulations, and as may be required under the National Audit
▇▇▇ ▇▇▇▇ or otherwise legally required to be disclosed,
provided always that the recipient Party shall use its best
endeavours to limit any such disclosure to a minimum,
provided that in using such information the recipient Party
shall not take any action which would prevent protection of
any Intellectual Property, any ViraGenics' Existing
Intellectual Property or any Foreground Intellectual Property
contained in such information.
10.4 ViraGenics acknowledges that it is Institute policy that the
results of the Project be published, and any proposals for
publications (including public presentations) containing any
details of work or results generated from the Project shall be
considered for such publication or presentation by the PMC,
who agrees that the Project Director and/or any Researchers
engaged in the Project may present at seminars, symposia,
national or regional professional meetings, and to publish in
journals, theses or dissertations, or otherwise, methods and
results of the Project, provided however that the PMC shall
have been furnished with copies of any proposed publication
and presentation at least two (2) months in advance of the
submission of such proposed publication or presentation to a
journal, editor, or other third party. The PMC shall have one
month after receipt of said copies, to object to such proposed
presentation or proposed publication if in the PMC's
reasonable opinion a delay of publication is necessary in
order to protect its commercial interests, or the commercial
use to ViraGenics of information derived from the Project or
because there is patentable or commercially sensitive subject
matter which needs protection. In the event that the PMC makes
such objection the Project Director or the Researchers shall
refrain from making such publication or presentation unless or
until ViraGenics has obtained satisfactory protection of such
work or results. In the event that the PMC in making such
objection can reasonably demonstrate that certain information
contained in such proposed presentation or publication if
disclosed would have a detrimental effect on ViraGenics'
commercial interest, such information shall be removed from
the proposed presentation or publication such that said
information may not be discerned therefrom and be delayed from
further publication for a period of two (2) years from the end
of the Project. Every publication published in accordance with
the terms of this clause 10.4 shall acknowledge the
contribution of ViraGenics to the Project, the text of such
acknowledgments shall be agreed by the PMC prior to
publication.
18
11. FOREGROUND INTELLECTUAL PROPERTY
11.1 Except as expressly provided elsewhere in this Agreement, as
between the Institute and ViraGenics the Foreground
Intellectual Property shall belong to ViraGenics.
11.2 Subject to provisions of confidentiality contained in clause
10 of this Agreement, ViraGenics hereby grants the Institute a
world wide royalty free licence (with the right to
sub-licence, but with no right to grant sub-sub-licences) of
ViraGenics' Existing Intellectual Property and the Foreground
Intellectual Property for the restricted purposes of academic
research and teaching and for collaboration with other
non-commercial academic parties and non-commercial charitable,
research and other not for profit organisations, provided
always that ViraGenics shall be notified of the collaboration
and/or any such sub-licence. In addition the Institute
undertakes that it shall obtain from any such third party
undertakings of confidentiality on terms no less onerous than
those contained in this Agreement, and that the Institute
shall obtain such undertakings prior to entering into any
discussions or negotiations with such third party.
12. PROTECTION AND EXPLOITATION OF FOREGROUND INTELLECTUAL
PROPERTY
12.1 Pursuant to the terms of clause 11.1, the Institute shall
promptly notify ViraGenics of any and all Foreground
Intellectual Property conceived and/or made or otherwise
generated during the Project Period under the Project.
12.2 ViraGenics shall in its sole discretion, at its own cost and
with the assistance in all material respects of the Institute
use all reasonable endeavours to promptly prepare, file and
prosecute any patent application, or application for other
intellectual property protection, in respect of the
ViraGenics' Existing Intellectual Property and/or Foreground
Intellectual Property in those countries where Viragen
believes there is a reasonable prospect of a commercial
return. While ViraGenics shall be responsible for making
decisions regarding the scope and content of application(s) to
be filed and the prosecution thereof, the Institute shall be
given an opportunity to review and provide input thereto.
ViraGenics shall keep the Institute advised as to all
developments with respect to such applications(s) and shall
promptly supply to the Institute copies of all papers received
and filed in connection with the prosecution thereof in
sufficient time for the Institute to comment thereon.
Thereafter, ViraGenics shall, at its own cost, use all
reasonable endeavours to prosecute and maintain such
applications(s) and the resultant patents for as long as
ViraGenics, in its sole discretion, believes that the
maintenance of such patents is commercially advantageous.
13. GRANT OF LICENCE OF THE INSTITUTE'S PATENT
13.1 The Institute hereby grants to ViraGenics, subject as provided
below, the exclusive right and licence, with a right to grant
such further licences as ViraGenics should deem necessary, of
the Institute's Patent to research, develop, manufacture, have
manufactured, make, market, distribute, sell, have sold and/or
otherwise Supply the Products and/or Services and to
commercialise, exploit, market, import and export and sell the
Products and/or Services in the Field anywhere in the
Territory.
19
13.2 The Institute hereby grants a royalty-free, non-exclusive
licence to ViraGenics (with a right to grant such further
licences as ViraGenics should deem necessary) in the Field
throughout the Territory to any and all Institute Background
Intellectual Property that the Institute is free to licence
for this specific purpose, which ViraGenics deems necessary
for commercialisation of Products and/or Services.
13.3 The licence and rights granted to ViraGenics in clauses 13.1
and 13.2 shall not in any manner prevent the Institute
licensing or using the Institute's Background Intellectual
Property and/or the Institute's Patent (i) for its own
academic research and teaching purposes, (ii) for
non-commercial collaborations with non-commercial third
parties or (iii) from licensing or using as aforesaid the
Institute's Background Intellectual Property and/or the
Institute's Patent outside the Field. ViraGenics undertakes
not to use the rights granted to it under clauses 13.1 and
13.2 outside the Field.
13.4 The Institute shall simultaneously upon the execution of this
Agreement grant and enter with ViraGenics into a licence
agreement in respect of the Institute's Patent in the form or
substantially the form set out in Part 2 of the Schedule which
licence shall be registered by ViraGenics with such Patent
Offices in the Territory as it considers appropriate or, as
the Institute shall require, all at the expense of ViraGenics.
13.5 Nothing in this Agreement shall constitute any representation
that the Institute's Patent (if patent applications) shall
proceed to grant or if granted shall be valid or that the
Products and/or Services do not fall within the scope of any
Intellectual Property other than the Institute's Background
Intellectual Property, the Institute's Patent, the ViraGenics
Existing Intellectual Property or the Foreground Intellectual
Property.
14. ASSIGNATION OF PREVIOUS RESULTS
14.1 In consideration for the payments made by ViraGenics to the
Institute pursuant to the provisions of the Old DLCA, receipt
of which the Institute hereby acknowledges, the Institute
hereby assigns all previous and future right, title and
interest in and to the Previous Results to ViraGenics
absolutely.
15. LICENSING AND SUB-LICENSING
15.1 ViraGenics shall have the right to grant the licences pursuant
to clause 13.1 PROVIDED THAT ViraGenics shall:
15.1.1 ensure that there are included in the terms of any such
licences the applicable like obligations and undertakings on
the part of the licensees as are contained in this Agreement
(except the financial terms set forth in this Agreement) and
shall further ensure that all licensees duly observe and
perform the same; and
15.1.2 at all times indemnify and keep indemnified the Institute
against all or any costs, claims, damages or expenses incurred
by the Institute or for which the Institute may become liable
as a direct result of the default or negligence of its
licensees.
20
15.2 The Institute shall have the right to grant sub-licences
pursuant to clause 11.2 PROVIDED THAT the Institute shall
ensure that there are included in the terms of any sub-licence
the applicable like obligations and undertakings on the part
of the sub-licensee as are contained in this Agreement (except
this clause and the financial terms set forth in this
Agreement) and shall further ensure that all sub-licensees
duly observe and perform the same.
16. VIRAGENICS' OBLIGATIONS UNDER THE LICENCES
16.1 ViraGenics shall use its reasonable endeavours to promote and
expand the Supply of the Products and/or Services throughout
the Territory.
16.2 ViraGenics shall comply in all material respects with the
legal requirements applicable from time to time in relation to
the manufacture and Supply of the Products and/or Services.
16.3 ViraGenics shall in the normal course of reporting progress to
the Institute, advise the Institute of any material regulatory
matters related to the Project and/or the Products and/or
Services.
16.4 Save in the event of any negligent act, omission or wilful
default on behalf of the Institute, ViraGenics shall at all
times indemnify and keep indemnified the Institute against all
or any costs or claims damages or expenses incurred directly
by the Institute or for which the Institute may directly
become liable with respect to any product liability claim with
respect to all Products and/or Services Supplied or put into
use by ViraGenics or any Associated Company or any of its
licensees pursuant to this Agreement. ViraGenics shall not
have any liability for any indirect or consequential loss or
damage (including but without limitation loss of profits or
anticipated profits) incurred by the Institute. In any event,
but save in the event of any claim arising from death or
personal injury due directly to the negligent act, omission or
wilful misconduct of ViraGenics, the total cumulative
liability of ViraGenics arising under this Agreement for any
such product liability claim shall not exceed five million
United States dollars (US$5,000,000).
16.5 ViraGenics shall, prior to any Products being produced, or any
Products and/or Services being Supplied or put into use by
ViraGenics obtain and maintain product liability insurance of
five million United States dollars (US$5,000,000) to meet its
obligations to the Institute pursuant to clause 16.4 and shall
supply the Institute with a copy of such insurance policy on
request.
17. PATENT INFRINGEMENT AND MISUSE OF CONFIDENTIAL INFORMATION
17.1 Upon the occurrence of any infringement or suspected or
threatened infringement of the Institute's Patent, the
Institute and ViraGenics shall immediately consult to decide
what steps shall be taken to prevent or terminate such
infringement in relation to the Field.
21
17.2 The Institute or ViraGenics shall take all steps as may be
agreed by them in pursuance of clause 17.1 including the
institution of legal proceedings where necessary in the name
of one of the parties in order to protect ViraGenics' rights
in the Institute's Patent in the Field.
17.3 If the Institute fails within a reasonable period in the
circumstances to take such steps as may be considered
necessary or appropriate by ViraGenics (unless agreement shall
have been reached in pursuance of clause 17.1) ViraGenics
shall have the right and is hereby authorised by the Institute
to take those steps independently, provided always that the
Institute shall use its reasonable endeavours to ensure that
any other licensees of the Institute's Patent are conjoined in
any such proceedings, under conditions of confidentiality no
less onerous than those contained in this Agreement. In so
doing ViraGenics shall not be taken to be acting as the agent
or in any way on behalf of the Institute but may file any
proceedings in the name of the Institute, as necessary or in
its own name, and the Institute shall give all reasonable
assistance at ViraGenics' expense to facilitate any
proceedings by ViraGenics. ViraGenics shall bear all costs and
ViraGenics shall retain control of any such legal actions
initiated. ViraGenics shall be entitled to retain for its own
absolute benefit any damages, costs or other expenses awarded
or recovered in any such proceedings.
18. MAINTENANCE OF THE INSTITUTE'S PATENT
18.1 Provided always that the Institute shall notify ViraGenics of
all material issues regarding the maintenance, renewal or
otherwise of the Institute's Patent, the Institute shall be
under no obligation to prosecute or maintain in force the
Institute's Patent whether by the payment of any official fee
(including without limitation any renewal fee) or by defending
any action or proceeding in which a claim or counterclaim is
made for the revocation of the Institute's Patent.
18.2 If the Institute in its absolute discretion decides not to
prosecute, maintain or defend any of the Institute's Patent,
ViraGenics shall be entitled to initiate or defend proceedings
in the name of the Institute, as necessary, or in its own
name, and the Institute shall give all reasonable assistance
at ViraGenics' expense to facilitate any proceedings by
ViraGenics. ViraGenics shall retain control of any such legal
actions. ViraGenics shall, alternatively, be entitled to
require the Institute to do so subject to ViraGenics and any
other sub-licensee of the Institute's Patent jointly
indemnifying the Institute and keeping it indemnified to its
satisfaction against all costs and expenses thereby incurred
by the Institute, whether such liability of the Institute
should arise during the term of this Agreement or pursuant to
clause 14.2 of the Old DLCA.
18.3 The Institute will provide ViraGenics, upon request, evidence
of renewal of the Institute's Patent or other specific
documentation regarding the Institute's Patent as ViraGenics
may reasonably require from time to time.
18.4 The Institute hereby acknowledges and agrees that ViraGenics
shall have no further liability for any fees relating to the
filing, prosecution, renewal and maintenance of PCT/GB98/02517
22
("Mariner", or any Patents claiming priority from the same)
nor for any actions or any other costs or expenses relating to
the same, howsoever incurred.
19. ROYALTIES
19.1 In consideration of the rights granted under this Agreement,
ViraGenics shall during the term of this Agreement and
thereafter:
19.1.1 pay to the Institute a royalty with respect to each Product
and/or Services Supplied of three and one half percent (3.5%)
of the Net Invoice Price of each Product and/or Service
Supplied;
19.1.2 pay to the Institute a royalty of seventeen and one half
percent (17.5%) of the gross amounts received by ViraGenics or
any Associated Company at any time from any third party in
consideration of the grant of any licence (including for the
avoidance of doubt any sub-licences and any sub-sub-licences)
under all or any part of ViraGenics' rights under this
Agreement (including, without limitation, all royalties, any
up front licence fee and any other consideration (including
equity or other stock) received by ViraGenics or any
Associated Company from any third party which can reasonably
be regarded as being payable in relation to the grant of a
licence); and
19.1.3 pay to the Institute seventeen and one half percent (17.5%)
of:
19.1.3.1 the consideration received by ViraGenics or any Associated
Company from the assignation, transfer, sale or disposal of
all or any part of the Existing Intellectual Property and/or
Foreground Intellectual Property where the Existing
Intellectual Property and/or Foreground Intellectual Property
is being sold in isolation; or
19.1.3.2 the relevant proportion of the consideration received by
ViraGenics or any Associated Company from the assignation,
transfer, sale or disposal of all or any part of the Existing
Intellectual Property and/or Foreground Intellectual Property
where the disposal or sale of the Existing Intellectual
Property and/or Foreground Intellectual Property is part of a
larger commercial transaction and/or asset sale.
19.2 For the avoidance of doubt, royalties shall become payable by
ViraGenics under clause 19.1 of this Agreement in respect of
each Product and/or Service:
19.2.1 sold - when ViraGenics or any Associated Company has received
payment;
19.2.2 lent, leased, let or hired or sold on hire purchase - when
ViraGenics or any Associated Company has received payment from
the borrower, lessor, lessee or hirer, as the case may be;
19.2.3 disposed of by ViraGenics or any Associated Company to any
person otherwise than in accordance with sub-clauses 19.2.1
and 19.2.2, when ViraGenics or any Associated Company has
received payment from such person; and
23
19.2.4 put into use by ViraGenics or an Associated Company on behalf
of a third party for value - immediately on receipt of such
value.
19.3 In the event that ViraGenics should be in receipt of funds
pursuant to clause 19.1 but shall have failed to make payment
of the royalties referred to in clause 19.1 in accordance with
the provisions of clause 21.1 then, notwithstanding
ViraGenics' failure to pay, the Institute shall have the
rights described under clause 19.4 and 19.5 and elsewhere in
this Agreement (in addition to any other remedies available
under contract or in law) and the Agreement shall remain in
full force and effect.
19.4 At such time, if any, that ViraGenics defaults under clause
21.1 in the payment of its royalty obligations to the
Institute under clauses 19.1.1, 19.1.2 and/or 19.1.3 :-
19.4.1 ViraGenics shall deposit (i) 100% of the Net Invoice Price
received by ViraGenics or any Associated Company in connection
with which the Institute is entitled to a royalty payment
under clause 19.1.1 and (ii) the gross amount received by
ViraGenics or any Associated Company in connection with which
the Institute is entitled to a royalty payment under clause
19.1.2 and (iii) 100% of the consideration received by
ViraGenics or any Associated Company in connection with which
the Institute is entitled to a royalty payment under clause
19.1.3, into a bank account in the name of the Institute
notified by the Institute to Viragenics ("the Institute
Account") until such time as the amount of all royalty
payments due to the Institute under clause 19.1(together with
any interest due in terms of clause 20.3) has been paid in
full ; and
19.4.2 ViraGenics, or the Institute as authorised representative of
ViraGenics, shall contact customers and/or licensees of
ViraGenics or any Associated Company to ensure payments due to
ViraGenics or any Associated Company by such customers and/or
licensees are made into the Institute Account.
19.5 For the avoidance of doubt, the provisions of this clause 19.4
shall apply to any subsequent defaults by ViraGenics in the
payment of its royalty obligations to the Institute under
clauses 19.1.1, 19.1.2 and/or 19.1.3.
19.6 ViraGenics and the Institute agree to take any and all further
required actions, and enter into such further documents as may
be necessary in order to effectuate the intent of clause 19.4.
20. TAXATION
20.1 All sums due under this Agreement:
20.1.1 are exclusive of any value added tax (or similar sales tax)
which shall be payable in addition by ViraGenics on the
rendering by the Institute of any appropriate value added tax
or other invoice and, provided always that the Institute has
promptly provided ViraGenics with all relevant invoices,
ViraGenics shall pay any costs, interest and penalties due by
reason of late payment of any such value added tax (or similar
sales tax);
24
20.1.2 shall be made in full without deduction of taxes charges and
other duties (including any withholding or other income taxes)
that may be imposed except where ViraGenics is required by law
to make such deduction or withholding, in which event
ViraGenics shall:
20.1.2.1 ensure that the deduction or withholding does not exceed the
minimum amount legally required;
20.1.2.2 forthwith pay to the Institute such additional amount as shall
result in the net amount received by the Institute being equal
to the amount which would have been received by the Institute
had no such deduction or withholding been made ;
20.1.2.3 pay to the applicable taxation or other authorities within the
period for payment permitted by law the full amount of the
deduction or withholding (including, but without prejudice to
the generality of the foregoing, the full amount of any
deduction or withholding from any additional amount paid
pursuant to this sub-clause);
20.1.2.4 furnish to the Institute, within the period for payment
permitted by law, either (a) an official receipt of the
applicable taxation or other authorities for all amounts
deducted or withheld as aforesaid or (b) if such receipts are
not issued by the taxation or other authorities concerned on
payment to them of amounts so deducted or withheld, a
certificate of deduction or equivalent evidence of the
relevant deduction or withholding; and
20.1.2.5 co-operate in all respects necessary to permit the Institute
to take advantage of such double taxation agreements as may be
available.
20.2 If any stamp taxes, registration taxes, turnover taxes, or
other taxes, duties or governmental charges are levied on this
Agreement by reason of its execution or performance, other
than those identified in clause 20.1 above, it shall be the
responsibility of ViraGenics to pay all such taxes when due,
provided always that the Institute shall provide ViraGenics
with all reasonable assistance in relation to the same. Such
taxes shall be in addition to other amounts payable by
ViraGenics and shall not be set off against any of the amounts
due to the Institute under this Agreement.
20.3 ViraGenics agrees to release and indemnify the Institute from
and against all liability of whatever nature arising directly
out of ViraGenics' failure duly and timeously to pay and
discharge any of the above-mentioned taxes. The Institute
shall notify ViraGenics of any such claim and ViraGenics shall
control any defence arising from any such claim, provided
always that the Institute has provided ViraGenics with
assistance in all material respects.
25
21. OTHER PROVISIONS RELATING TO PAYMENT
21.1 Royalties arising under this Agreement shall be paid in
sterling within thirty (30) days of the end of each successive
quarterly period of three months commencing on 1 March, 1
June, 1 September, and 1 December in every year to the credit
of a bank account to be designated in writing by the
Institute.
21.2 In the event of any delay in effecting payments due under this
Agreement by the due date specified ViraGenics shall pay to
the Institute interest (calculated on a daily basis) on the
overdue payment from the date such payment was due to the date
of actual payment at a rate of three per cent (3%) above the
base lending rate of Bank of Scotland from time to time.
21.3 At the same time as payment of any royalties under this
Agreement falls due ViraGenics shall submit or cause to be
submitted to the Institute a statement in writing recording
the calculation of royalty payable under this Agreement; in
particular:
21.3.1 the number of Products and/or Services which have been
Supplied during the previous quarter;
21.3.2 the Net Invoice Price of each Product and/or Service Supplied
during the previous quarter;
21.3.3 the gross income received by ViraGenics from any licences
granted in accordance with clause 13; and
21.3.4 the amount of royalties due and payable and the amount of any
tax deductible or due to be deducted.
21.4 ViraGenics shall keep proper records and books of account
showing the description and price of Products and/or Services
Supplied under this Agreement and of the amounts received from
any licensees appointed in accordance with this Agreement and
such records shall, upon receipt by ViraGenics of reasonable
notice from the Institute, be open to inspection by the
Institute or its duly authorised agent or representative who
shall be entitled to take copies of or extracts from the same.
In the event that such inspection or audit should reveal an
underpayment in the royalties paid from those payable under
this Agreement, ViraGenics shall immediately make up any
shortfall and in the event the examination determines an
underpayment of 3% or more relative to payments due the
Institute, then all costs of the examination shall be paid by
ViraGenics otherwise the Institute shall bear its own costs.
In the event of any dispute arising in relation to such audit,
the matter shall be referred to an independent auditor, chosen
by agreement between the Parties or, failing such agreement
within twenty one (21) days at the request of either Party,
nominated by the President from time to time of the Institute
of Chartered Accountants in Scotland, whose decision shall be
final. If a dispute shall arise in relation to an audit, the
costs of the independent audit shall be borne by the Party who
falsely asserts that the royalty payments are
correct/incorrect. In any event, the number of audits shall be
restricted to one audit per annum.
26
21.5 The provisions of this clause 21 shall continue to apply
notwithstanding termination or expiry of this Agreement until
the settlement of all subsisting claims of the Institute.
21.6 A certificate signed by an independent auditor shall be
sufficient to fix and ascertain any sums due by ViraGenics
under this Agreement and shall be conclusive of the amount
due, subject to the dispute resolution mechanism in clause
21.4.
22. WARRANTIES
22.1 Each Party represents and warrants to the other Party that as
at the Effective Date:-
22.1.1 it has the power and authority to enter into and perform its
obligations under this Agreement and that this Agreement
constitutes a legally valid, binding and enforceable
obligation (subject to remedies provided by law) of the
Parties;
22.1.2 this Agreement does not and will not:-
(a) contravene any of its law or regulation, directive or
judgement; or
(b) result in any actual or potential breach of or
default under any obligation, agreement or instrument
to which it is a Party or by which it is bound or
which it requires to carry on business; or
(c) contravene any provision of its Party's memorandum
and articles of association and/or statutes and/or
constitutional documents.
22.1.3 there is no event which with the giving of notice or lapse of
time may constitute a breach of this Agreement;
22.1.4 no order has been made, petition presented or resolution
passed for the its winding up and no meeting has been convened
for the purpose of its winding up, no steps have been taken
for the appointment of an administrator or receiver (including
an administrative receiver) of all or any part of its assets;
it has not made or proposed any arrangement or composition
with its creditors or any class of its creditors; it is not
insolvent, unable to pay its debts within the meaning of the
insolvency legislation applicable it and it has not stopped
paying its debts as they fall due; no unsatisfied judgement is
outstanding against it and no event analogous to any of the
foregoing has occurred in any jurisdiction;
22.1.5 there are no pending, or to its knowledge (after due and
careful enquiry), threatened actions or legal proceedings
affecting either Party which may have a material adverse
effect on its business, assets or financial condition;
22.1.6 it is not in breach of or in default under any agreement or
obligation relating to financial indebtedness.
27
22.2 Viragen undertakes to the Institute that:-
22.2.1 so long as any sums or obligations are outstanding due to late
payment under this Agreement, Viragen will, subject always to
the confidentiality provisions set out in clause 10, provide
the Institute with such financial and other reasonable
information concerning Viragen's business, assets and affairs
as the Institute may reasonably require and not available to
the Institute as disclosed in Viragen's audited accounts
including, but without limitation, quarterly management
accounts which will be delivered to the Institute promptly and
in any event not later than 10 days after the date of filing
of reports with the Securities and Exchange Commission for
each financial quarter of Viragen and annual audited accounts
to be delivered to the Institute not later than sixty days
after the financial year end of Viragen; and
22.2.2 all current and future mortgages, charges, securities or other
encumbrances or security arrangements of Viragen are or shall
be contained in the annual audited accounts of Viragen.
22.3 The Institute warrants to ViraGenics that as at the Effective
Date:-
22.3.1 there is no actual or, to the best of its knowledge or belief,
threatened infringement of, or other proceedings relating to,
the Institute's Background Intellectual Property or the
Institute's Patent;
22.3.2 the Institute's Background Intellectual Property does not, to
the best of its knowledge and belief, infringe the rights of
any third party;
22.3.3 it has not made any disclosure of any Confidential Information
to any third party; and
22.3.4 no publications, other than those specifically agreed to by
ViraGenics prior to the Effective Date have been made.
22.4 ViraGenics warrants to the Institute that as at the Effective
Date:-
22.4.1 ViraGenics' Background Intellectual Property does not, to the
best of its knowledge and belief, infringe the rights of any
third party; and
22.4.2 there is no actual or, to the best of its knowledge or belief,
threatened infringement of, or other proceedings relating to,
ViraGenics' Background Intellectual Property.
22.5 Each Party warrants to the other Parties that it has the full
power and authority to grant the various licences to the
relevant Party or Parties as the case may be under this
Agreement.
28
23. GUARANTEE
23.1 Viragen hereby:-
23.1.1 guarantees to the Institute the due and punctual performance
by ViraGenics of all its obligations contained in this
Agreement; and
23.1.2 undertakes to indemnify and keep the Institute indemnified
from and against any loss, damage, liability, losses, claims,
demands and expenses (including without limitation, all legal
and other professional fees and expenses), which may be
sustained or suffered by the Institute as a direct result of
any failure of ViraGenics to perform its obligations under
this Agreement.
23.2 The liability of Viragen hereunder shall be as principal
obligant and not merely as guarantor and shall not be
affected, impaired or discharged by reason of any act,
omission, matter or thing which but for this provision might
operate to release or otherwise exonerate Viragen from its
obligations under this Agreement, including without
limitation, any time, indulgence, waiver or concession granted
by the Institute to ViraGenics.
24. TERMINATION
24.1 This Agreement may be terminated by the Institute, by serving
upon ViraGenics ninety (90) days prior written notice of its
intention so to terminate, in the event of a failure by
ViraGenics to meet its payment obligations in respect of the
Project Costs.
24.2 Subject to clause 25.3 and save in relation to clauses 0 and
24.1, this Agreement may be terminated by the Institute by
serving written notice on ViraGenics in the event that
ViraGenics fails to observe or perform any terms or conditions
on its part under this Agreement which failure is not remedied
within ninety (90) days.
24.3 If the Institute fails to observe or perform any terms or
conditions on its part under this Agreement ViraGenics may, if
such failure to observe or perform shall not be remedied
within ninety (90) days terminate the Project, in which event
ViraGenics shall own the Foreground Intellectual Property and
the Agreement shall remain in full force and effect.
24.4 This Agreement may be terminated immediately by the Institute
by serving written notice upon ViraGenics in the event that:-
24.4.1 an order is made or a resolution is passed for the winding-up
of Viragen except in the case of a voluntary winding-up for
the purposes of a scheme of reconstruction or amalgamation; or
24.4.2 an administration order is made, or a petition for such an
order is presented, in respect of Viragen; or
29
24.4.3 a receiver (or administrative receiver) is appointed in
respect of Viragen over all of its assets; or
24.4.4 Viragen ceases to carry on business; or
24.4.5 any voluntary arrangement is proposed under section 1 of the
Insolvency ▇▇▇ ▇▇▇▇ or US equivalent in respect of Viragen; or
24.4.6 ViraGenics challenges the validity or contests the ownership
of the Institute's Patents or the Institute's Background
Intellectual Property.
24.5 This Agreement may be terminated immediately by ViraGenics by
serving written notice upon the Institute in the event that:-
24.5.1 an order is made or a resolution is passed for the winding-up
of the Institute except in the case of a voluntary winding-up
for the purposes of a scheme of reconstruction or amalgamation
the terms of which have been previously approved in writing by
both Parties; or
24.5.2 an administration order is made, or a petition for such an
order is presented, in respect of the Institute; or
24.5.3 a receiver (or administrative receiver) is appointed in
respect of the Institute over all of its assets; or
24.5.4 the Institute ceases to carry on business; or
24.5.5 any voluntary arrangement is proposed under section 1 of the
Insolvency ▇▇▇ ▇▇▇▇ in respect of the Institute; or
24.5.6 the Institute challenging the validity or contesting the
ownership of ViraGenics' Background Intellectual Property or
the Foreground Intellectual Property.
24.6 This Agreement may be terminated immediately by the agreement
of all of the Parties to this Agreement in the event that such
Parties, acting reasonably and in good faith, agree that the
Project is unviable and subject to the Parties having reached
agreement as to the consequences of termination.
25. CONSEQUENCES OF TERMINATION OF THE AGREEMENT
25.1 In the event of receipt by ViraGenics of the notice referred
to in clause 24.1, the Foreground Intellectual Property shall
be owned by ViraGenics and the licences of the Institute's
Patent and the Institute's Background Intellectual Property
granted by the Institute to ViraGenics pursuant to clauses
13.1 and 13.2 shall remain in full force and effect until
expiry of the ninety (90) day notice period.
30
25.2 If following expiry of the notice period referred to in clause
24.1, ViraGenics:
25.2.1 has failed to pay to the Institute the remainder of the
Project Costs outstanding at the date of service of said
notice then the Institute shall own the Foreground
Intellectual Property, the Agreement shall terminate and the
provisions of clause 25.7 shall apply; or
25.2.2 has made payment to the Institute of the remainder of the
Project Costs:
(a) ViraGenics shall own the Foreground Intellectual
Property; and
(b) the Agreement shall remain in full force and effect.
25.3 In the event of termination of the Agreement by the Institute
pursuant to clause 24.2:
25.3.1 during the Project Period, the Institute shall own the
Foreground Intellectual Property, and provided that ViraGenics
pays to the Institute the remainder of the Project Costs
outstanding at the date of such termination, the licences of
the Institute's Patent and the Institute's Background
Intellectual Property granted by the Institute to ViraGenics
pursuant to clauses 13.1 and 13.2 shall remain in full force
and effect and in addition clause 1 (Interpretation), clause
2.2 (Royalties), clause 7.7 (Project Work), clause 8.4
(Project Reporting), clause 10 (Confidentiality), clause 15
(Licensing and Sub-licensing), clause 16 (ViraGenics'
obligations under the licences), clause 17 (Patent
Infringement), clause 18 (Maintenance of Institute Patent),
clause 19 (Royalties, except that section of clause 0 which
provides that the Agreement shall continue in full force and
effect), clause 20 (Taxation), clause 21 (Other provisions
relating to payment), clause 23 (Guarantee), clause 27
(Notices), clause 36.1 (Further Assurances) and clause 41
(Governing Law) shall also remain in full force and effect; or
25.3.2 following expiry of the Project Period and subject to breach
by ViraGenics of clauses 30.1.2 and 31.1.2, the Foreground
Intellectual Property shall belong to ViraGenics but for the
avoidance of doubt the licences of the Institute's Patent and
the Institute's Background Intellectual Property granted by
the Institute to ViraGenics pursuant to clauses 13.1 and 13.2
shall remain in full force and effect and in addition clause 1
(Interpretation), clause 2.2 (Royalties), clause 7.7 (Project
Work), clause 8.4 (Project Reporting), clause 10
(Confidentiality), clause 15 (Licensing and Sub-licensing),
clause 16 (ViraGenics' obligations under the licences), clause
17 (Patent Infringement), clause 18 (Maintenance of Institute
Patent), clause (Royalties, except that section of clause 0
which provides that the Agreement shall continue in full force
and effect), clause 20 (Taxation), clause 21 (Other provisions
relating to payment), clause 23 (Guarantee), clause 27
(Notices), clause 36.1 (Further Assurances) and clause 41
(Governing Law) shall also remain in full force and effect.
25.4 In the event of termination of this Agreement by the
Institute, in the event of breach by ViraGenics of either of
clauses 30.1.2 or 31.1.2 referred to in clause 25.3.2, the
Foreground Intellectual Property shall belong to the Institute
but for the avoidance of doubt the licences of the Institute's
Patent and the Institute's Background Intellectual Property
granted by the Institute to ViraGenics pursuant to clauses
31
13.1 and 13.2 shall remain in full force and effect and in
addition clause 1 (Interpretation), clause 2.2 (Royalties),
clause 7.7 (Project Work), clause 8.4 (Project Reporting),
clause 10 (Confidentiality), clause 15 (Licensing and
Sub-licensing), clause 16 (ViraGenics' obligations under the
licences), clause 17 (Patent Infringement), clause 18
(Maintenance of Institute Patent), clause 19 (Royalties,
except that section of clause 0 which provides that the
Agreement shall continue in full force and effect), clause 20
(Taxation), clause 21 (Other provisions relating to payment),
clause 23 (Guarantee), clause 27 (Notices), clause 36.1
(Further Assurances) and clause 41 (Governing Law) shall also
remain in full force and effect.
25.5 In the event of termination of the Agreement by the Institute
pursuant to clause 24.4 :
25.5.1 if termination occurs during the Project Period, then provided
always that ViraGenics pays to the Institute the remainder of
the Project Costs outstanding at the date of such termination,
ViraGenics shall own the Foreground Intellectual Property; or
25.5.2 if termination occurs following expiry of the Project Period,
ViraGenics shall own the Foreground Intellectual Property;
25.5.3 clause 19 (Royalties, except that section of clause 19.3 which
provides the Agreement shall continue in full force and
effect) shall remain in full force and effect; and
25.5.4 the provisions of clause 25.7 shall apply.
25.6 In the event of termination of the Agreement by ViraGenics
pursuant to clause 24.5 both prior to or following expiry of
the Project Period:
25.6.1 the Foreground Intellectual Property shall belong to
ViraGenics; and
25.6.2 the licences of the Institute's Patent and the Institute's
Background Intellectual Property granted by the Institute to
ViraGenics pursuant to clauses 13.1 and 13.2 shall remain in
full force and effect and in addition clause 1
(Interpretation), clause 10 (Confidentiality), clause 15
(Licensing and Sub-licensing), clause 16 (ViraGenics'
obligations under the licences), clause 17 (Patent
Infringement), clause 18 (Maintenance of Institute Patent)
clause 19 (Royalties, except that section of clause 19.3 which
provides the Agreement shall continue in full force and
effect), clause 20 (Taxation) clause 21 (Other Provisions
relating to payment), clause 23 (Guarantee) , clause 27
(Notices), clause 36.1 (Further Assurances) and clause 41
(Governing Law) shall also remain in full force and effect.
25.7 In the event of termination of this Agreement whereby
ViraGenics no longer has a licence to the Institute's Patent
and the Institute's Background Intellectual Property:
25.7.1 ViraGenics shall be entitled to Supply any stock of the
Products manufactured, or provide any Services requested,
prior to the date of termination, but shall not be entitled to
manufacture any further Products utilising the Institute's
Background Intellectual Property and/or the Institute's
Patent;
32
25.7.2 Any outstanding sums due to the Institute shall immediately
become due and payable and ViraGenics shall also remain due to
pay to the Institute any sums which subsequently accrue as a
consequence of clause 25.7.1;
25.7.3 each Party shall return to the other Parties any Confidential
Information received from any other Party in the course of
this Agreement and all copies of such material to the extent
such remains confidential;
25.7.4 any sub-licences of the Foreground Intellectual Property
granted by the Institute pursuant to clause 11.2 shall
automatically terminate;
25.7.5 all rights and licences granted in favour of the Institute or
ViraGenics under this Agreement shall cease except and to the
extent expressly provided otherwise under the terms of this
Agreement;
25.7.6 ViraGenics shall co-operate with the Institute in the
cancellation of all or any licences registered with the
relevant Patent Offices pursuant to this Agreement, and shall
execute any and all such documents and do acts and things as
may be reasonably required in such connection; and
25.7.7 clause 1 (Interpretation), clause 10 (Confidentiality), clause
15.1.2, clause 16.4, clause 20 (Taxation), clause 21 (Other
provisions relating to payment), this clause 25.7 and clause
41 (Governing Law) shall remain in full force effect
notwithstanding termination of the Agreement.
25.8 In the event of termination of the Project pursuant to clauses
5.2 or 7.3 the Foreground Intellectual Property shall belong
to ViraGenics and the Agreement shall remain in full force and
effect.
25.9 Where the resultant effect of the provisions of clause 25 is
that the Institute is the owner of the Foreground Intellectual
Property, ViraGenics shall, at the Institute's reasonable
request, execute all such documents and do such acts as may be
necessary to prove, give effect to or confirm the title of the
Institute to the Foreground Intellectual Property.
25.10 Termination of this Agreement shall not affect any rights or
obligations of either Party which have accrued prior to the
date of termination and all provisions which are expressed to
or by implication survive the termination of this Agreement
shall remain in full force and effect.
26. FORCE MAJEURE
26.1 No Party shall be liable for any delay in performing or for
failure to perform its obligations hereunder if the delay or
failure results from any cause or circumstance occasioned by
any act of God, fire, act of government or state, war, civil
commotion, insurrection, embargo or other cause beyond the
control of that Party ("an event of force majeure"), provided
the same arises without fault, omission or negligence of such
Party. If in the event force majeure occurs, the date(s) for
performance of the obligation affected shall be postponed for
33
as long as is made necessary by the event of force majeure,
provided that if any event of force majeure continues for a
period of or exceeding six (6) months, the aggrieved Party
shall have the right in its sole discretion to terminate this
Agreement forthwith by written notice to the other Party. Each
Party shall use its reasonable endeavours to minimise the
effects of an event of force majeure.
26.2 In the event that the aggrieved Party referred to in clause
26.1 is ViraGenics:
26.2.1 the licences of the Institute's Patent and the Institute's
Background Intellectual Property granted by the Institute to
ViraGenics pursuant to clauses 13.1 and 13.2 shall remain in
full force and effect;
26.2.2 all Foreground Intellectual Property generated to the date of
said termination shall belong to ViraGenics;
26.2.3 ViraGenics shall observe its payment obligations pursuant to
clause 19; and
26.2.4 clause 1 (Interpretation), clause 2.2, clause 7.7 (Project
work), clause 8.4 (Project Reporting), clause 10
(Confidentiality), clause 15 (Licensing and sub-licensing),
clause 16 (ViraGenics' Obligations under the licence), clause
17 (Patent Infringement), clause 18 (Maintenance of Institute
Patent), clause 20 (Taxation), clause 21 (Other Provisions
relating to Payment), clause 23 (Guarantee), clause 27
(Notices), clause 36.1 (Further Assurances) and clause 41
(Governing Law) shall also remain in full force and effect.
26.3 In the event that the aggrieved Party referred to in clause
26.1 is the Institute:
26.3.1 ViraGenics shall have a period of twelve (12) months from the
date the event of force majeure occurs in which to find a
commercial third party to fulfil its obligations to the
Institute pursuant to the provisions of this Agreement.
26.4 If ViraGenics should fail to find a commercial third party as
set out in clause 26.3.1, ViraGenics shall grant to the
Institute licences of the Foreground Intellectual Property and
the ViraGenics' Background Intellectual Property provided
always that should the Institute itself or through any
licensee receive income from any such licences, the Institute
undertakes to pay to ViraGenics royalties equivalent to those
as set out in Clause 19.
27. NOTICES
27.1 Notice under this Agreement shall be given by delivery by hand
(upon verification of receipt), pre-paid air mail post,
courier or transmitted by facsimile and addressed as follows:-
In the case of Institute:
34
Roslin Institute (Edinburgh)
▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇
For the attention of: Assistant Director (Company Secretary)
In the case of ViraGenics:
ViraGenics, Inc.
C/o Viragen (Scotland) Limited
Pentlands Science Park
▇▇▇▇ Loan
Penicuik
Midlothian
EH26 0PZ
For the attention of: ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
In the case of Viragen:
Viragen, Inc.
C/o Viragen (Scotland) Limited
Pentlands Science Park
▇▇▇▇ Loan
Penicuik
Midlothian
EH26 0PZ
For the attention of: ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
27.2 If a Party changes its address for notification purposes, then
it shall give the other Parties prior written notice of the
new address and the date on which it shall become effective.
27.3 Any notice will be deemed to be delivered if sent by personal
delivery or courier upon delivery at the address of the
relevant Party if sent by pre-paid airmail post fourteen (14)
days after the date of posting and if sent by facsimile upon
confirmation of transmission.
28. VARIATIONS
28.1 No variation of or amendment to this Agreement shall bind any
Party unless made in writing and signed by all the Parties
hereto. The Parties shall at all times remain willing to
discuss possible contractual variations that have been
prompted by technical or other factors although no Party shall
have any obligation to agree to any such variation proposed.
35
29. WAIVERS
29.1 Failure by a Party to enforce or exercise, at any time or for
any period, any term of this Agreement, does not constitute,
and shall not be construed as, a waiver of such term and shall
not affect the right later to enforce such term or any other
term herein contained.
30. ASSIGNATION
30.1 No Party may assign, transfer, sub-contract or otherwise
dispose of the benefit or burden of this Agreement to a third
party without the prior consent of the other Parties such
consent not to be unreasonably withheld or delayed save that:-
30.1.1 the Institute may assign the benefit and burden of this
Agreement to any wholly owned subsidiary of the Institute
provided always that the Institute undertakes to guarantee the
complete performance of the Institute's obligations pursuant
to this Agreement by any such wholly owned subsidiary of the
Institute; and
30.1.2 ViraGenics and/or Viragen may assign the benefit and burden of
this Agreement in connection with the disposal of all its
assets whether by way of sale, merger or other corporate
re-organisation provided in so doing ViraGenics or Viragen as
the case may be shall impose at the date of such disposal and
provide to the Institute a binding and effective continuing
contractual obligation on the assignee in favour of ViraGenics
or Viragen and the Institute to prohibit the assignee from
using the Institute's Background Intellectual Property,
ViraGenics' Existing Intellectual Property, the Foreground
Intellectual Property and/or the Institute's Patent to provide
any Products and/or Services or carry out experiments or
research using the same in any country within the Territory
which are illegal under the laws of the United States of
America and/or the United Kingdom of Great Britain and
Northern Ireland as at the date on which the Products and/or
Services are provided or which the experiments are carried out
or the research is conducted. Receipt by the Institute from
ViraGenics or Viragen as the case may be of confirmation in
terms satisfactory to the Institute pursuant to this clause
30.1.2 shall discharge ViraGenics or Viragen as the case may
be from any further obligation in respect of this clause.
31. CHANGE OF CONTROL
31.1 If at any time control (as defined in Section 840 of the
Income and Corporation Taxes Act 1988) of ViraGenics is
acquired by any person or group of connected persons not
having control of ViraGenics at the date of this Agreement,
ViraGenics shall:
31.1.1 give immediate notice to the Institute identifying that person
or group of connected persons; and
31.1.2 following said change of control, undertake not to use the
Institute's Background Intellectual Property, ViraGenics'
Existing Intellectual Property, the Foreground Intellectual
Property and/or the Institute's Patent to provide any Products
36
and/or Services or carry out experiments or research using the
same in any country within the Territory which are illegal
under the laws of the United States and/or the United Kingdom
of Great Britain and Northern Ireland as at the date on which
the Products and/or Services are provided or which the
experiments are carried out or the research is conducted.
Receipt by the Institute from ViraGenics of such an
undertaking in terms satisfactory to the Institute pursuant to
this clause 31.1.2 shall discharge Viragen from any further
obligation in respect of this clause.
31.2 Notwithstanding termination of this Agreement pursuant to
clause 24.2, the licence, rights and obligations referred to
in clause 11.2 of this Agreement shall remain in full force
and effect.
31.3 If the Institute should:-
31.3.1 agree to the change of control referred to in clause 31.1; and
31.3.2 receive an undertaking referred to in clause 31.1.2,
the rights conferred on and the indemnity given to the
Institute by Viragen, and the obligations and liabilities of
Viragen, pursuant to clause 23 shall terminate with effect
from the date of change of control save for any loss suffered
by the Institute after the date of change of control but
relating to any failure of ViraGenics to perform its
obligations under this Agreement prior to the date of change
of control which shall continue to be guaranteed and
indemnified by Viragen under clause 23.
32. ENTIRE AGREEMENT
32.1 This Agreement together with the Spur Agreement constitutes
the entire Agreement and understanding between the Parties
with respect to the subject matter hereof and supersedes the
Old DLCA, the Transfer Agreement and any other prior
agreement, understanding or arrangement between the Parties,
whether oral or in writing. No representation, undertaking or
promise shall be taken to have been given or be implied from
anything said or written in negotiations between the Parties
prior to this Agreement except as expressly stated in this
Agreement. No Party shall have any remedy in respect of any
untrue statement made to it upon which it has relied in
entering into this Agreement (unless such untrue statement was
made fraudulently) and that Party's only remedy shall be for
breach of contract as provided in this Agreement.
32.2 It is agreed by the Parties that :
32.2.1 the terms of this Agreement shall modify and supplement the
terms of the Spur Agreement and that the entire agreement
among the Parties for the purposes of clause 7 of the Spur
Agreement shall comprise this Agreement and the Spur
Agreement; and
32.2.2 the amendments to the Spur Agreement contained in this
Agreement are effective for the purposes of clause 6.3.1 of
the Spur Agreement, otherwise the Spur Agreement shall remain
37
in full force and effect in accordance with its terms. In the
event of any conflict between this Agreement and the Spur
Agreement, this Agreement shall prevail.
33. SEVERABILITY
33.1 The invalidity or unenforceability of any term of or any right
arising pursuant to this Agreement shall not adversely affect
the validity or enforceability of the remaining terms and
rights.
34. SURVIVAL
34.1 Provisions of this Agreement which either are expressed to
survive its termination or from their nature or context it is
contemplated that they are to survive such termination shall
remain in full force and effect notwithstanding such
termination. Any successor or assignee of a Party's interest
shall expressly assume in writing the performance of all the
terms and conditions of the Agreement to be performed by said
Party and such assignation shall not relieve the assignor of
any of its obligations under this Agreement.
35. ENTICEMENT
35.1 The parties undertake that they shall not without the other
parties' prior written consent either during or after expiry
or termination of this Agreement for any reason engage, employ
or otherwise solicit for employment any person who during the
continuance of this Agreement was an employee or engaged by or
on behalf of the other Parties.
36. FURTHER ASSURANCES
36.1 The Parties shall do and execute all such further acts and
things as are reasonably required to give full effect to the
rights given and the transactions contemplated by this
Agreement.
36.2 The Institute shall use its reasonable endeavours to cooperate
with ViraGenics to obtain any additional licences from Geron
Corporation required to exploit the Products and/or Services
in the Field.
37. ANNOUNCEMENTS
37.1 The Parties agree that upon entering this Agreement they shall
issue a joint press release concerning this Agreement the
timing, content, wording and distribution of which shall be
agreed in writing by the Parties. ViraGenics shall in advance
of any disclosure of any document or the like falling with the
exceptions of clause 10.3.4, and in particular, before filing
any document or the like in connection with this Agreement
with the Securities and Exchange Commission, provide a copy
thereof to the Institute and take into account the Institute's
reasonable comments thereon.
38
37.2 The Institute shall, at ViraGenics' cost, provide all
reasonable assistance and co-operation to ViraGenics on
scientific issues relating to all investor and public
relations undertaken by ViraGenics in relation to the Project
including, but not limited to, interviews, press releases and
scientific meetings but subject always to the availability of
representatives of the Institute.
38. PUBLICITY
38.1 ViraGenics will not use the name of the Institute, or any
member of the Institute's Project staff, including the Project
Director, in any publicity, advertising or news release
without the prior written approval of the Institute and for
such purposes, amongst others, the Project Director may give
such approval. The Institute will not use the name of
ViraGenics, or any employee of ViraGenics, in any publicity
without the prior written approval of ViraGenics. The Parties
shall agree the wording of any publicity, advertising or news
release.
39. COSTS
39.1 ViraGenics shall meet the Institute's reasonable costs
(including legal fees and expenses) associated with the
Parties entering into this Agreement up to a limit of
(pound)1,400 plus VAT.
40. POULTRY FACILITY
40.1 If ViraGenics or any Associated Company plans to construct a
new biopharmaceutical facility for CGMP poultry production ("a
Poultry Facility") then the Institute shall be notified
accordingly and the Institute shall be invited to tender for
the Poultry Facility to be located at the Institute's
premises. Alternatively, if ViraGenics or any Associated
Company becomes aware that a third party with whom it has
dealings is intending to construct a Poultry Facility then
ViraGenics shall use all reasonable endeavours to ensure that
the Institute is invited to tender for the Poultry Facility to
be located at the Institute's premises.
39
41. GOVERNING LAW
41.1 This Agreement shall be governed by and construed in
accordance with the law of Scotland and the Parties hereby
submit to the non exclusive jurisdiction of the Scottish
courts provided that the grant of the security interest in
clause 19.4, and the perfection, performance, rights and
remedies thereunder shall be additionally governed by the
appropriate state and federal law of the United States:
IN WITNESS WHEREOF these presents consisting of this and preceding 39 pages
together with the Schedule in five parts are executed as follows:-
Subscribed for and on behalf of Subscribed for and on behalf of
ROSLIN INSTITUTE (EDINBURGH) VIRAGENICS INC
at Roslin at ▇▇▇ ▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇▇
on March 4, 2004 on March 2, 2004
------------- -------------
by /s/ ▇▇▇▇ ▇▇▇▇▇▇▇ by /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------ --------------------
Company Secretary DIRECTOR
----------------- --------
Title Title
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------- ------------------
Full Name Full Name
before the following witness:- before the following witness:-
/s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ /s/ ▇▇▇▇▇▇▇▇▇ ▇. Parenti
---------------------- ------------------------
Witness Witness
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇. Parenti
---------------------- --------------------
Full Name Full Name
40
Subscribed for and on behalf of
VIRAGEN INC
at ▇▇▇ ▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇▇
on March 2, 2004
-------------
by /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------------
Chief Financial Officer
-----------------------
Title
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
----------------
Full Name
before the following witness:-
/s/ ▇▇▇▇▇▇▇▇▇ ▇. Parenti
------------------------
Witness
▇▇▇▇▇▇▇▇▇ ▇. Parenti
--------------------
Full Name
41
