Amendment to License Agreement
This Amendment to License Agreement (hereinafter AMENDMENT) is made and
entered into between the President and Fellows of Harvard College (hereinafter
COLLEGE) having offices at the Committee on Patents and Copyrights, ▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, and Seragen,
Inc. (hereinafter LICENSE), a corporation at ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇.
WHEREAS, COLLEGE and LICENSEE have previously entered into a License
Agreement on November 29, 1983 with respect to the making, using and selling
the inventions disclosed and claimed in COLLEGE's U.S. Patent Application No.
377,386, filed May 13, 1982, entitled "Hybrid Proteins" (now U.S. Patent No.
4,675,382), and the foreign patent applications corresponding thereto
(hereinafter referred to as the PRIOR LICENSE AGREEMENT); and
WHEREAS, COLLEGE and LICENSEE desire to amend various provisions of the
PRIOR LICENSE AGREEMENT.
NOW, THEREFORE, in consideration of the mutual covenants set forth below
and in the PRIOR LICENSE AGREEMENT,
IT IS MUTUALLY COVENANTED AND AGREED AS FOLLOWS:
1. Section 2.1 - This paragraph is amended to read as follows:
COLLEGE hereby grants to LICENSEE and LICENSEE accepts, subject to
the terms and conditions hereof, a worldwide exclusive commercial
license, under PATENT RIGHTS to make and have made, to use and
have used, to sell and have sold the LICENSED PRODUCTS, and to
practice the LICENSED PROCESSES, for the life of PATENT RIGHTS.
LICENSEE agrees that during the period of exclusivity of this
license in the United States that any products produced through
the use of the LICENSED PROCESSES for sale in the United States
will be manufactured substantially in the United States unless a
waiver is obtained from the Federal government as provided in the
regulations implementing Public Law 96-517.
2. Paragraph 2.2(c) - The following is added to the end of paragraph
2.2(c):
LICENSEE affirms that as of the date of this amendment LICENSEE
has taken such reasonable efforts.
3. Paragraph 2.2(d) -- This paragraph is amended to read as follows:
COLLEGE shall have the right ninety days after the completion of a
fiscal year to terminate the exclusivity of the license granted in
2.1 if LICENSEE within ninety days after written notice from
COLLEGE of such intended termination of exclusivity, fails to
respond in writing by providing a letter indicating either that
(i) LICENSEE and SUB-LICENSEES together have expended at least $2
million over the previous two fiscal years on research,
development, manufacturing, sales or marketing of products which
are currently eligible for royalties under the agreement or may be
subject to royalties upon completion of development and
commercialization or (ii) that sales of products subject to
royalties are in excess of $2,000,000 over the previous two fiscal
years.
4. Paragraph 2.3 - This paragraph is deleted.
5. Paragraph 2.5 - The reference to paragraph 2.3 within this paragraph
shall be deleted.
6. Paragraph 3.3 -- This paragraph is amended to read as follows:
All sublicenses will be granted under the terms that are in
accordance with Public Law 96-517 and that are reasonable and
customary in the trade. Sublicense terms and conditions may
provide that a sublicensee may further sublicense provided that
all sublicensees at any tier shall be required to abide by
LICENSEE'S non-financial obligations to COLLEGE as provided in
section 2.2(f), 5.2, 6.1 and 10.3 of this license agreement. Any
sublicense agreement shall provide for the transfer of all
sublicensee obligations, including the payment of royalties
specified in such sublicenses, to COLLEGE or its designee in the
event that this Agreement is terminated.
7. Paragraph 3.4 -- This paragraph is amended to read as follows:
LICENSEE shall annually submit a written report summarizing the
results of the prior year's licensing program, and modifying and
updating the program's agenda for the year to come. In the event
COLLEGE identifies a potential sublicensee for LICENSED PRODUCTS
not currently under development by LICENSEE or one of its
sublicensees, LICENSEE agrees to enter into good faith negotiation
of a sublicense agreement with such party, however, such provision
shall not apply to restenosis for cardiovascular applications.
8. Paragraph 4.1 - See amendment to Appendix C.
9. Paragraph 4.2 - This paragraph is deleted.
10. Paragraph 4.3 - This paragraph is amended to read as follows:
LICENSEE shall pay COLLEGE, during the term of the license of
paragraph 2.1, a royalty of 2.0 percent of NET SALES of all
LICENSED PRODUCTS sold by LICENSEE and its AFFILIATES. This
royalty shall be reduced to 1.0 percent for any term during which
the license is non-exclusive except as provided in paragraph 4.4
below. On sales between LICENSEE and its AFFILIATES for resale,
the royalty shall be paid on the resale. LICENSEE shall pay
COLLEGE 10.0 percent of royalties collected from sublicensees
hereunder; provided, however, that where LICENSEE sells LICENSED
PRODUCT to a purchaser and also sub-licenses use of the LICENSED
PROCESS for such LICENSED PRODUCT to the same purchaser, LICENSEE
shall only pay the royalty due on LICENSED PRODUCT. Said royalty
rates may vary, as mutually agreed upon by the parties, in cases
where LICENSED PROCESS constitutes only a small percentage of
licensed processes necessary in the manufacture of LICENSED
PRODUCTS.
11. Paragraph 4.4 -The last sentence is amended to read as follows:
. . . LICENSEE shall continue to pay the royalty specified in
paragraph 4.3 until another such license has been granted to a
third party by COLLEGE.
12. Paragraph 4.7 - The reference to paragraph 4.2 and 8.1 is deleted from
the offsets in this paragraph.
13. Paragraph 8.1 - The following language replaces the last two sentences
of the second paragraph and the third paragraph:
Recoveries or reimbursements from such action shall first be
applied to reimburse LICENSEE and COLLEGE for litigation costs not
paid from royalties and then to reimburse COLLEGE for royalties
withheld. Any remaining recoveries or reimbursements shall be
divided between the parties as follows:
(i) If the amount is lost profits, LICENSEE shall receive an
amount equal to the damages the court determines LICENSEE has
suffered as a result of the infringement less the amount of any
royalties that would have been due COLLEGE on the sales of
LICENSED PRODUCTS which would have generated such lost profits and
COLLEGE shall receive the amount equal to such royalties.
(ii) If the amount is other than lost profits, LICENSEE and
COLLEGE shall share in a manner that approximates (i) above. If
LICENSEE and COLLEGE cannot agree, they shall submit the matter to
arbitration as provided in paragraph 10.8.
In the event that LICENSEE and its sublicensee, if any, elect not
to exercise their right to prosecute an infringement of the PATENT
RIGHTS pursuant to the above paragraphs, COLLEGE may do so at its
own expense, controlling such action and paying LICENSEE fifty
percent (50%) of net returns (after reimbursement of all COLLEGE'S
expenses)."
14. Paragraph 9.4 - This paragraph is deleted.
15. Paragraph 9.5 - This paragraph is amended to read as follows:
Sublicenses granted by LICENSEE under this Agreement may provide
for assignment to COLLEGE of LICENSEE's interest therein upon
termination of this Agreement. However, such assignment shall not
bind COLLEGE to any obligations greater than those COLLEGE has to
LICENSEE under this agreement.
16. Paragraph 10.6 - The address and contact of Seragen is updated as:
Seragen, Inc.
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Attn: President
17. Appendix C is amended to read as follows:
LICENSEE shall pay the following amounts as minimum royalty,
within sixty (60) days of the end of each annual accounting period
following the receipt of regulatory approval from the FDA to
commence marketing of a Licensed Product for use by the public:
$10,000 per year until such time as earned royalties for an
annual accounting period exceed $50,000 at which time the
minimum royalty shall increase to $20,000 per year until
such time as earned royalties for an annual accounting
period exceed $100,000 at which time the minimum royalty
shall increase to $40,000 per year.
Royalties earned and paid during the annual accounting period
shall be creditable against the minimum royalty but if earned
royalties paid for the accounting period do not equal or exceed
the minimum royalty, the difference shall be paid within sixty
(60) days of the end of the annual accounting period.
18. All other terms of the PRIOR LICENSE AGREEMENT remain in full-force and
are hereby incorporated herein in this amendment.
IN WITNESS THEREOF, the parties hereto have each caused this AMENDMENT
to be duly executed by their duly authorized representatives.
The effective date of this Amendment is August 6, 1997.
PRESIDENT AND FELLOWS OF HARVARD COLLEGE
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
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Attest:
________________________________________________
Seragen, Inc.
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇
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President and Chief Technology Officer
