Agreement 1 LION Bioscience AG
--------------------------------------------------------------------------------
SOFTWARE LICENSE AND DISTRIBUTION AGREEMENT
-------------------------------------------
between
THE EUROPEAN MOLECULAR BIOLOGY LABORATORY,
AN INTERGOVERNMENTAL INSTITUTION,
REPRESENTED BY THE DIRECTOR GENERAL PROF. DR. XXXXX XXXXXXX
Xxxxxxxxxxxx(xxxx)x 0, 00000 Xxxxxxxxxx, XxxXXXX
-called "Licensor" hereinafter-
and
LION BIOSCIENCE AKTIENGESELLSCHAFT,
Xxxxxxxxx Xxx.00
00000 Xxxxxxxxxx, Xxxxxxx
represented by its managing board
(Contract Number ATP-0047)
-called "LION" hereinafter-
Agreement 2 LION Bioscience AG
--------------------------------------------------------------------------------
RECITALS
WHEREAS, the parties have entered into an Agreement on September 15, 1998, as
amended by the Annex Agreement, dated July 20, 2001, between the parties, (the
,,SRS Agreement");
WHEREAS, the parties have concluded that certain provisions of the SRS Agreement
should be revised; the parties wish to alter and amend some of the provisions of
the SRS Agreement in particular the provisions concerning the payment of
royalties by LION;
WHEREAS, the parties wish to continue their cooperation concerning SRS with this
Software License and Distribution Agreement (the ,,Contract");
WHEREAS, the parties intend that their cooperation concerning SRS shall from now
on be governed exclusively by this Contract, which shall supersede the SRS
Agreement as provided below;
WHEREAS, Licensor has created and therefore has the right to license certain
products and related documentation; and
WHEREAS, LION is in the business of bioinfomatics and itself owns the right to
certain software products used in connection with its business;
NOW, THEREFOR, LION and Licensor agree that Licensor shall grant to
LION certain licenses and render certain services as defined below.
Agreement 3 LION Bioscience AG
--------------------------------------------------------------------------------
SS. 1 DEFINITIONS
The following terms listed on the left have the exclusive meaning as defined on
the right, if not otherwise stated in this contract:
a) Academic Institution Public funded non-profit organization,
which has research and/or education as
its primary objective, e.g. the
University of Heidelberg. Public
administration authorities such as but
not limited to, e.g. the Police ,TUV, or
the European Patent Office shall not be
considered to be Academic Institutions.
b) Application Any software or hardware or a
combination of the two developed by LION
or any third party by order of LION
which incorporates elements of
Licensor`s Products.
c) Affiliate A corporation or other entity which
controls, is controlled by, or is under
common control of another entity. A
corporation or other entity shall be
deemed to control another corporation or
entity if it owns, directly or
indirectly, more than fifty percent
(50%) of the voting shares or other
interest or has the power to elect more
than half the directors, of such other
corporation or entity.
d) Contract This agreement including EXHIBITS and
formal changes and additions, including
additions to EXHIBITS.
e) Effective Date The date when this Contract has been
executed by both parties.
f) Intellectual Property Rights All patents, patent applications,
trademark applications, copyrights,
trademarks, trade secrets and all other
intellectual property rights recognized
by the law of each applicable
jurisdiction.
g) Licensor The European Molecular Biology
Laboratory as described in the heading
and EMBL's Affiliates.
h) Licensor Products Licensor's software
products as specified in EXHIBIT A., all
versions up to and including version 5.1
of the computer program SRS, and all
associated versions of the programming
Agreement 4 LION Bioscience AG
--------------------------------------------------------------------------------
language IKARUS, and their respective
source code, Updates, Upgrades,
Materials and related documentation,
whether released before or after the
Effective Date of this Contract.
i) LION LION bioscience Aktiengesellschaft and
Affiliates.
j) LION's Products Software products and related
documentation, which are owned or
distributed by LION, including without
limitation derivative works of Licensor
Products
k) Materials All documentation relating to the
Licensor Products, including without
limitation administrator`s
documentation, user documentation,
frequently asked questions and update
history, all programmer notes,
annotations, compilers, and development
documentation l) Non-academic Third
Party Any third party which is not an
Academic Institution
m) SRS Disclosure Letter A letter by Licensor to LION attached
hereto as Exhibit D, setting forth in
reasonable detail the meaning of and
Licensor's underlying intent with
respect to, the provisions concerning
use of Licensor Products set forth in
any README files associated with
Licensor Products.
n) Update Error corrections and bug fixes created
on or after the Effective Date by either
Licensor or any agent of Licensor.
o) Upgrade Any enhancement or addition of
functionalities on or after the
Effective Date created by Licensor or
any agent of Licensor.
SS. 2 SUBJECT OF THE CONTRACT
(1) Subject of this Contract are Licensor Products, including in particular
all versions of the computer program SRS of Licensor up to and
including version 5.1, as listed in EXHIBIT A, and all exploitation
rights for Licensor Products, in particular this computer program, as
granted to LION pursuant to xx.xx. 3 et seq. of this Contract
(2) Licensor Products comprise a data integration and retrieval system
allowing the user to search different public domain and commercial
databases as well as internal databases using a single search query and
navigation interface, together with its own programming language called
IKARUS, and serve primarily the biotechnology and pharmaceutical
sectors for a wide range of database search and IT integration
purposes. Further information concerning the Licensor Products are
provided in the specifications attached in the form of EXHIBIT A.
(3) The license grant to LION includes the use of the Materials:
o
All of the Materials developed through the Effective Date of this
Contract have already been disclosed and delivered to LION.
SS. 3 LICENSE GRANT
(1) From the Effective Date, Licensor hereby grants to LION an exclusive,
irrevocable license to use and exploit the Licensor Products, the
Materials , and all Intellectual Property Rights pertaining to the
Licensor Products in all fields, with no restrictions or limitations
regarding the subject matter, for the worldwide territory and for the
duration of the entire term of protection. LION shall in particular be
free in its communications with third parties and in particular with
entities active in the broader life sciences industry, to hold itself
out as having the exclusive right to exploit all Intellectual Property
Rights pertaining to the Licensor Products. Subject to the rights
retained by Licensor pursuant to ss. 3(8), the use and exploitation
rights granted to LION include but are not limited to the exclusive
rights for any and all commercial and non-commercial purposes, to:
(a) permanently or temporarily, directly or indirectly, reproduce
in whole or in part by any means and in any form whatsoever
(including reproduction to the extent necessary for
downloading, display, running, transfer or storage of the
programs) Licensor Products;
(b) distribute Licensor Products and the work embodied therein in
their original form or reproduced in sections, including for
hire, for all tasks and editions and without any limitations
on the quantities involved, either in whole or in part, and
for all languages;
c) disseminate and distribute Licensor Products to the public,
including the right to:
- record Licensor Products onto machinery or readable
data media such as CD-ROM, CDI, CD-Erasable, DVD,
microfilm, microfiche and others;
- exploit Licensor Products online using systems such as
the internet, intranet, push and pull technologies or
online services, or application service providing;
- disseminate Licensor Products to the public by wire or
wireless means, including making Licensor Products
available to the public in such a way that members of
the public may access them at a place and at a time
individually chosen by them;
(d) modify and/or combine Licensor Products in whole or in part
and to use the modification(s) in any manner whatsoever as
referenced above, including the right to combine Licensor
Products in whole or in part with other Applications or any
programs and exploit these new Applications and/or programs
exclusively in any manner as referenced above. Such
modifications may in particular apply to:
- the processing rights, in particular for the purpose
of utilization in new media such as view data,
teletext, databases, online exploitation, internet,
intranet for translation and engagement;
- modifications of text and screen masks;
- reworking of software, for example through translation
into other programming languages, set-ups for
bypassing software, expansion or reduction,
eliminating faults, continued development including
new functions;
- development of other computer programs derived from
Licensor Products.
(e) directly or indirectly, (i) modify, port, translate,
transform, localize, or create derivative works of the
Licensor Products, or any portion thereof, including without
limitation the creation of any computer software application
or database for resale or external distribution; (ii)
decompile, disassemble, reverse engineer or assemble or
reconstruct, identify or discover any source code, the
structure, sequence or organization of source code underlying
ideas, underlying user interface techniques, algorithms,
databases, data sets or data of the Licensor Products by any
means whatsoever, or disclose any of the foregoing; (iii)
sell, lease, license, sublicense, copy, reproduce, market or
distribute the Licensor Products; (iv) provide training or
consulting to third parties in the use of the Licensor
Products; (v) remove any product identification, trademark,
copyright or other notices contained in or on the Licensor
Products; (vi) incorporate the Licensor Products into or with
other software.
(2) The parties fully intend by this Contract that LION have standing as an
"exclusive licensee" to xxx commercial infringers under United States
copyright law in its own name. In the event such standing is rejected,
then the rights retained by Licensor in Section 3(8) will automatically
be converted to a sublicense from LION to Licensor on the same terms
and conditions, and the parties will promptly negotiate in good faith
to reform any other aspects of the Contract to the extent necessary to
convey such status to LION. In the event that due to the provisions of
any applicable law the grant of rights contained herein can not be
recognized as all-encompassing and comprehensive of all of Licensor's
rights in the Licensor Products and the Intellectual Property Rights
pertaining thereto, Licensor hereby grants LION the irrevocable right
of first negotiation with respect to negotiating and entering into an
exclusive licensing agreement for the exclusive right and license by
LION to exploit such rights, and in particular with respect to any and
all as yet unknown forms of use. If the parties are unable to come to
an agreement about the terms and conditions for such a license
agreement within a reasonable period of time, Licensor may commence and
pursue negotiations with third parties about such terms and conditions.
Prior to entering into any licensing agreement with any such third
party, Licensor shall grant LION a right of first refusal as follows:
Licensor shall notify LION in writing about the outcome of such
negotiations and shall offer the same terms and conditions to LION that
Licensor is willing to agree to with any such third party and LION
shall be entitled to accept such terms and conditions
and enter into an exclusive license agreement with Licensor upon such
terms and conditions no later than two (2) weeks from delivery of such
notice.
(3) LION shall be free to grant exclusive and non-exclusive exploitation
rights and licenses or sublicenses with respect to Licensor Products to
third parties or any Affiliate, either in part or in full, to third
parties or to any Affiliate, without Licensor's prior approval or
consent, with regard to individual utilization rights or all
utilization rights granted with respect to Licensor Products.
(4) LION shall be entitled to market, reproduce, distribute and sublicense
Licensor Products under LION's trademarks.Nothing in this Contract
confers upon Licensor any right to use LION's trademarks, trade names
or service marks in connection with any product, service, promotion or
publication, without the prior written approval of LION. EMBL will be
permitted to use LION's trademarks, tradenames or service marks in
connection with the Licensor's Product and/or upgrades and updates made
publicly available on the EMBL/EBI server.
(5) Nothing in this Contract confers upon LION any right to use Licensor's
trademarks, trade names or service marks in connection with any
product, service, promotion or publication, without the prior written
approval of Licensor.
(6) Licensor is prepared to grant to LION a worldwide non-exclusive license
to any and all further Intellectual Property Rights as may be useful or
desirable in the use of Licensor Products in accordance with this
Contract under reasonable conditions still to be negotiated.
(7) Prior to the Effective Date, Licensor has granted rights in Licensor
Products to third parties, some of which that are listed in Appendix II
of the SRS-Agreement. The parties acknowledge that other third parties
may claim to have acquired rights in the Licensor Products, either as a
result of downloading the software or as a result of the README file
attached as Appendix 2A, which was included in some downloads of the
Licensor Products. Licensor herewith exclusively authorizes LION to
enforce on Licensor's behalf all rights of Licensor arising from
Non-academic third party license agreements of the SRS-Agreement,
express or implied in particular the right to terminate each third
party license on behalf of Licensor, where permitted under applicable
law. Additionally, Licensor herewith assigns all monetary claims it may
have arising from violation of any of the terms of the aforementioned
third party license agreements. Licensor makes no representation or
warranty regarding whether any or all of the third party licenses can
be terminated, or the procedural prerequisites for termination.
(8) Licensor retains the following rights: (i) the right to use Licensor
Products including Materials for Licensor's own (including but not
limited to EBI, Hinxton, UK) scientific, internal non-commercial
purposes; (ii) to incorporate Licensor Products in a public EMBL/EBI
server until September 15, 2004; Licensor shall ensure, e.g. by
appropriate technical means, that no downloading of Licensor Products
from the EMBL/EBI server by any third party can occur; (iii) to
incorporate Updates and Upgrades of SRS in a public EMBL/EBI server
until September 15, 2004, whereby Licensor as well ensures, e.g. by
appropriate technical means, that no downloading of such Updates and
Upgrades of SRS from the EMBL/EBI server by any third party can occur.
The rights retained under ii) and iii) shall expire on 15. Sept. 2004
(resolutory condition -"auflosende Bedingung"). The rights retained by
Licensor may not be assigned or sublicensed or otherwise transferred to
any third party. Licensor shall not, under any circumstances, grant
consciously and active any rights in Licensor Products or Materials to
any third party after the Effective Date of this Contract. For the
avoidance of doubt: Any use of Licensor Products through EBI is
regarded as use by Licensor itself. Within the rights retained,
Licensor shall not itself, or allow any parent, subsidiary, affiliate,
agent, employee, consultant or other third party to: (a) sell, lease,
license, sub-license, copy or reproduce for use by a third party,
market or distribute, including without limitation by way of
downloading from any Internet web site or FTP server in its possession
or under its control, the Licensor Products, including any source code,
or any modification, derivative work, translation of any of the
Licensor Products, or any portion thereof or any program or derivative
work of any Intellectual Property Rights relating to the Licensor
Products; (b) provide training or consulting, whose primary focus is
the use of any of the Licensor Products, to any Non-academic Third
Party, which has not taken a license for SRS from Lion, or enter into
time-sharing arrangements for use of any of the Licensor Products with
any Non-academic Third Party, which has not taken a license for SRS
from Lion; (c) encumber or suffer to exist any lien or security
interest on any of the Licensor Products; (d) remove any product
identification, trademark, copyright or other notices contained in or
on any of the Licensor Products; (e) take any action that would cause
any of the Licensor Products to be placed in the public domain; and (f)
incorporate any of the Licensor Products, or any portion thereof, into
or with other software.
(9) LION herewith grants Licensor a royalty-free, non-exclusive right to
use, only for scientific internal non-commercial purposes according to
LION's current standard non-exclusive license agreement in the form
attached hereto as EXHIBIT B, a license to updates and upgrades of the
Licensor Products made by LION beginning no later than the date on
which such items are made available to any third party by LION. In case
of discrepancies and contradictions between EXHIBIT B and this
Contract, the provisions of this Contract shall prevail. The license
granted to Licensor by LION may not be assigned or sublicensed, and it
expires on September 15, 2004 (resolutory condition - "auflosende
Bedingung"). LION may terminate this license under no circumstances
before September 15, 2004 other then Licensor breaches the Agreement by
gross negligence or willful misconduct. For the avoidance of doubt: Any
use through EBI shall be treated as use through Licensor itself. The
license granted by LION comprises the right of Licensor to install the
Updates and Upgrades and upgrades and updates created by LION of the
Licensor Products on one public EMBL/EBI server for use and access by
any third party (for the avoidance of doubt: academic and commercial
parties), through the publicly available internet, until the expiration
date (September 15, 2004), whereby Licensor shall ensure, e.g. by
appropriate technical means, that no downloading of such Updates and
Upgrades and updates and upgrades created by LION of the Licensor
Product from the EMBL/EBI server by any third party can occur.
(10) Upon request by Licensor and from the Effective Date until 15 Sept.
2004, LION further agrees, with respect to the Licensor Products as
well as Updates and Upgrades created by LION to enter into LION's
current standard non-exclusive academic license agreement according to
EXHIBIT B with Academic Institutions pursuant to which LION grants
internal use rights to SRS to Academic Institutions. This Academic
License shall have a term starting with the Effective Date and ending
not before 15. Sept. 2004, provided Licensor is and continues to be in
compliance with the terms of this Contract, in particular its
obligations to cooperate with LION.
(11) After 15. Sept. 2004 and upon request by Licensor LION agrees, with
respect to (i) Licensor Products and Upgrades and Updates to grant EMBL
a free, perpetual license according to LION's then current standard
non-exclusive academic license agreement; (ii) updates and/or upgrades
created by LION to enter into LION's then current standard
non-exclusive academic license agreement which governs the use of and
availability of LION's products for Academic Institutions, provided
Licensor is and continues to be in compliance with the terms of this
Contract, in particular its obligations to cooperate with LION. EMBL
shall get granted these license on upgrades and updates created by Lion
not later then and to comparable conditions as other Academic
Institutions.
SS. 4 DELIVERY
(1) Licensor has already delivered the Licensor Products and all of the
Materials to LION.
(2) Licensor shall deliver all Updates and Upgrades of Licensor Products
and documentation Materials related thereto to LION by the same means
promptly upon their preparation or development. Updates, Upgrades and
improvements and the related documentation which are the subject of
ss.3(9) of this Contract, made, obtained or acquired by LION shall be
delivered to Licensor promptly upon their preparation or development.
SS. 5 PRICING AND PAYMENTS
(1) LION is and shall remain entirely free to determine, in its sole
discretion, all prices, fees and other consideration for licenses
granted by LION with respect to the use of Licensor Products, including
end user prices and fees.
(2) In consideration for the rights granted in this Contract as well as for
any services under this Contract to be provided by Licensor, LION
agrees to pay Licensor the following license fees, so long as Licensor
continues to be in compliance with the terms of this Contract, in
particular its obligations to cooperate with LION:
DM 85.000 (seventy five thousand), due on January 1, 2002;
DM 75.000 (sixty five thousand), due on January 1, 2003;
DM 60.000 (fifty thousand), due on January 1, 2004.
The above fees shall constitute the entire consideration to be given by
LION under this Contract. Licensor shall not be entitled to, and shall
not claim, any other fees, payment or consideration under this Contract
or the SRS Agreement. No remuneration or paying back of any payment or
any other consideration made by LION to Licensor prior to the Effective
Date, in particular under the previous SRS Agreement dated September
15, 1998, or the Annex Agreement to the SRS-Agreement of July 20, 2001,
like but not limited to, license fees or an acquisition or issuance of
shares of stock of LION shall occur. Such payments and consideration
shall not be affected. All amounts payable under this Contract are net
and exclusive of any sales or V.A.T. taxes.
SS. 6 CONFIDENTIALITY
(1) Except as expressly authorized herein, the parties shall keep
confidential any and all information of a technical or non-technical
nature concerning Licensor Products and any of LION's products,
including the source code of Licensor Products, or concerning trade
secrets, whether in oral, written, graphic, via electronic or in other
form, received from the other party. Except as expressly authorized
herein or authorized in writing by the disclosing party, such
confidential information shall not be made available to any third party
(other than an Affiliate of either party) in a direct or indirect way.
The confidentiality obligations in this ss. 6 shall continue to be in
force and effect throughout the term of this Contract and for a period
of five (5) years after termination of this Contract.
(2) The parties shall require their agents and sub-contractors to comply
with the confidentiality obligations set forth herein. The
confidentiality obligations set forth herein apply to all copies of any
materials received from the other party.
(3) The confidentiality obligations herein shall not apply to information
that:
- is or becomes generally available to the public through no
fault of the receiving party;
- is learned by the receiving party from a third party entitled
to disclose it;
- was already known to the receiving party prior to its
disclosure by the disclosing party, as shown by the receiving
party's prior written records;
- was developed independently by the receiving party, as shown
by the receiving party's prior written records; or
- is required to be disclosed by legal or regulatory
requirements beyond the reasonable control of the disclosing
party, provided that any such disclosure is limited to the
extent reasonably necessary to comply with such requirements
and, to the extent reasonably predictable, is not made until
after the other party has been notified and given an
opportunity to obtain a protective order from a court of
competent jurisdiction to protect the confidentiality of such
information.
(4) LION shall be entitled to disclose the following information
to any third party:
- the terms of this Contract and the exhibits attached thereto,
including without limitation in connection with LION's efforts
to protect and enforce its rights to Licensor Products and
LION's products and in connection with any filings with the
U.S. Securities and Exchange Commission or any other
governmental agency or with any stock market;
- The SRS Disclosure Letter as well as the Annex II of the
"Annex Agreement to the SRS Agreement of September 15, 1998"
in connection with LION's efforts to protect and enforce its
rights to Licensor Products
- Any other materials the disclosure of which is, in LION's
judgment, necessary or warranted in connection with LION's
efforts to protect and enforce its rights to Licensor
Products.
SS. 7 WARRANTIES; RELEASE; INDEMNIFICATION
(1) Licensor represents and warrants that (i)Licensor has full and
sufficient right and title to grant the rights and/or licenses granted
to LION under this Contract; (ii) all statements by Licensor in the SRS
Disclosure Letter (EXHIBIT D) are true and correct.
(2) LION agrees to waive any and all claims against Licensor arising from
any breach or violation by Licensor or its employees of the warranties
or any other provision or regulation set forth in the SRS Agreement and
the Annex Agreement to the SRS-Agreement. Licensor has taken
appropriate effort to eliminate the risk of distribution by mirror
sites. Additionally, Licensor shall inform third parties on his
internet pages that SRS can only be obtained through LION and that any
use, reproduction, copying or other use of SRS is no longer permitted.
SS. 8 GENERAL OBLIGATION TO COOPERATE
(1) Licensor shall provide any information gained from further development
work on Licensor Products.
(2) Upon request of LION, Licensor shall undertake in good faith to provide
assistance and cooperation to LION, upon request for LION to protect
and enforce LION's rights concerning Licensor Products under this
Contract, including without limitation (i) enforcement or termination
of any licenses for the Licensor Products; (ii) providing evidence in
support of any infringement or enforcement action brought by LION
against any third party regarding the Licensor Products, both
informally and in connection with litigation; and (iii) providing
active assistance in LION's efforts to persuade or judicially enjoin
third parties from distributing or offering Licensor Products for
download from Internet web sites or FTP servers.
(3) Licensor hereby grants to LION the right, power and capacity to
commence and pursue legal action, including in particular infringement
actions, actions to enforce licenses or agreements to which Licensor or
an Affiliate of Licensor is a party concerning Licensor Products
licensed to Non-Academic Third Parties, in its own name without joining
Licensor as a party in the action and Licensor hereby assigns its
rights in action (Proze(beta)standschaft) for all such claims or
actions in connection with Licensor Products licensed to Non-Academic
Third Parties
(4) Licensor hereby grants to LION the exclusive right to register the
copyright of any Licensor Products in LION's own name in any
jurisdiction. For the purpose of the territory of the United Sates of
America Licensor grants LION the right to claim legal title to the
copyright in an application for copyright registration (37 CFR
202.3(a)(1) whereby LION may appear as the copyright claimant or
registrant.
(5) From time to time and upon LION's request, Licensor shall confirm such
right by written instrument as LION may reasonably request. Licensor
shall provide LION with all reasonable assistance with respect to
LION's efforts to register the copyright of any Licensor Products,
including without limitation providing or preparing such information or
materials and executing such written instruments as LION may reasonably
request. Solely upon LION's written request, Licensor shall also
register the copyright of any Licensor Products in Licensor's name in
any jurisdiction if such registration is to the benefit of LION and or
if said jurisdiction requires that the copyright holder perform the
registration, in protecting and enforcing LION's exclusive rights to
Licensor Products or LION's products in that jurisdiction, provided
that LION shall bear all costs and expenses of Licensor incurred in
such registration or its preparation. Licensor will cooperate with LION
to an extend considered to be in compliance with its reputation in
attempting to persuade any Academic Institution that is currently
making SRS software version 5.1 or earlier available for download from
the Internet to remove that version of the SRS software from all
installed locations and, if the institution is willing to enter into a
standard non-exclusive academic license with LION, to install a newer
version of the SRS software for internal academic use.
(6) Upon request by LION, Licensor shall inform each Non-academic Third
Party specified by LION that has been granted or that has asserted a
license or use rights to one or more Licensor Products (other than
those listed in Appendix II of the SRS Agreement), each Non-academic
Third Party specified by LION that has downloaded one or more Licensor
Products from a web site or ftp server in Licensor's possession or
under its control, that
- LION has held the worldwide exclusive rights to the commercial
use and exploitation of Licensor Products since September
1998, for SRS version 5.1, and since July, 2001 for earlier
versions;
- Any Non-academic Third Party licenses or use rights (other
than those listed in Appendix II of the SRS Agreement) for the
use of Licensor Products that have been granted by Licensor
are terminated effective immediately;
- Such Non-academic Third Party that has downloaded or obtained
or intends to download or obtain Licensor Products from any
Internet web site or ftp server after the effective date of
the SRS Agreement has no right to use such Licensor Products,
irrespective of any provisions in any associated README file
and infringes upon LION's rights, as LION has held the
exclusive commercial use and exploitation rights to Licensor
Products since such time;
- Non-academic users of Licensor Products should obtain a
license for their use from LION.
The specific contents of such notice shall be as outlined in the SRS
Disclosure Letter (EXHIBIT D) which is explicitly excluded from the
confidentiality obligation under ss. 6 and may as deemed necessary by
LION be passed on in copy to third parties.
(7) Licensor shall deliver to LION the SRS Disclosure Letter on Licensor
letterhead and signed by the Director General of Licensor no later than
the Effective Date.
SS. 9 TERM AND TERMINATION
(1) The term of this Contract is the term of copyright protection of
Licensor Products. This Contract may only be terminated by LION for
good cause. Such good cause shall exist if:
- Licensor breaches any material term or condition of this
Contract and fails to cure such breach within sixty (60) days
after written notice;
- Licensor becomes the subject of a voluntary or involuntary
petition in bankruptcy or any proceeding relating to
insolvency, liquidation or composition for the benefit of
creditors.
(2) Upon termination of this Contract,
a) all sublicenses granted by LION prior to the
effective date of any such termination shall
survive;
b) each party shall (except as specified in
subsections c) and d), below) immediately
return to the other party or (at such other
party's request) destroy all confidential
information disclosed by the other party that
is in its possession or under its control,
and will provide the disclosing party with
any affidavit as to the return or destruction
of such confidential 0information.
c) LION shall have no right to retain Licensor
Products, all data, source code, object-code,
documentation and other materials related to
Licensor Products.
d) LION shall have no right to retain and use
without restriction all of LION's
Applications, Intellectual Property Rights,
developments and improvements relating to
Licensor Products, data, source-code,
object-code, documentation and other
materials related to Licensor Products.
e) the licenses granted to LION herein shall
remain in full force and effect.
(3) The exercise by either party of any remedy under this Contract shall be
without prejudice to its other remedies under this Contract or
otherwise.
SS. 10 GENERAL PROVISIONS
(1) If any provision of this Contract is found invalid or unenforceable,
that provision shall be enforced to the maximum extent permissible, and
the other provisions of this Contract shall remain in force.
(2) Neither party shall be responsible for any failure to perform due to
causes beyond its reasonable control, including, but not limited to,
acts of God, war, riot, embargoes, acts of civil or military
authorities, denial of or delays in processing of export license
applications, fire, floods, earthquakes, accidents, strikes, or fuel
crises, provided that such party gives prompt written notice thereof to
the other party.
(2) All notices under this Contract will be deemed given when delivered
personally, sent by confirmed facsimile transmission, or sent by
certified or registered mail or internationally recognized express
courier, return receipt requested, to the address shown herein. Either
party may change its address for notices under this Contract by giving
written notice to the other party by the means specified in this
Section. Addresses for notification purposes are:
(3)
LION: Licensor:
Att: Director IP and Licensing European Molecular Biology Laboratory
LION bioscience AG Xxxxxxxxxxxx(xxxx)x 0
Xxxxxxxxx Xxx. 00 Postfach 10.2209
69123 Xxxxxxxxxx 00000 Xxxxxxxxxx
Xxxxxxx Fax: x00 0000 000000
Fax: x00 0000 0000000
With a copy to LION's general counsel at the
same address
(4) This Contract, and its formation, interpretation, validity and
enforcement, as well as all rights of use, or rights derived from a
right of use, also if the Contract is executed outside the Federal
Republic of Germany or a sub-license is granted for the use outside the
Federal Republic of Germany, shall be governed by the laws of the
Federal Republic of Germany, provided however that application of the
provisions of the United Nation Convention on Contracts for the
International Sale of Goods shall be excluded and provided further that
any assignment of claims arising from third party licenses concerning
Licensor Products provided for in ss. 3(7) of this Contract shall be
governed by the applicable laws of the jurisdiction which governs the
interpretation and enforcement of such third party licenses.
(5) The parties hereto shall endeavor to settle all disputes, controversies
or differences that may arise between them out of or in relation to or
in completion with this Contract amicably by mutual consultation. If a
dispute arises from or relates to this Contract, the parties will try
to settle the dispute in good faith within 30 days of a written request
by either party to do so. Senior managers from each party shall
participate in direct discussions during this time period to attempt to
reach agreement. If the parties are unable to settle the dispute
through these direct discussions, the parties shall attempt to settle
the dispute through mediation administered by the World Intellectual
Property Organization Arbitration and Mediation Center (the
"Administrator"). The applicable Administrator's mediation rules that
apply to commercial mediations shall govern the mediation. If all or
any portion of a dispute is not resolved through this mediation process
within 90 days, such dispute shall be resolved by binding arbitration
administered by the applicable Administrator under its arbitration
rules that apply to commercial disputes. Such dispute shall be heard
and decided by an arbitration committee consisting of three
arbitrators, one being appointed by each of the parties. The appointed
arbitrators then designate the third arbitrator who will act as
president of the arbitration committee. The third arbitrator must be
shown to have sufficient knowledge of German Law. If both parties
agree, the mediator involved in the parties' mediation shall serve as
the third arbitrator on this arbitration committee. Place of
arbitration shall be Geneva, Switzerland. The arbitration committee
shall decide the dispute by majority vote by issuing a binding ruling
that may include an award of damages or injunctive relief and that
shall be final and binding on the parties. The arbitration committee's
rulings shall not be subject to appeal to any court, and shall be
executed without exequatur by any court of competent jurisdiction. The
party executing on such rulings shall be entitled seek assistance from
the competent court(s) for an exequatur if the other party fails to
comply with the arbitration committee's rulings within sixty (60) days
from issuance of the order. The arbitration committee shall apply the
substantive law as specified in this Contract and the terms and
conditions of this Contract in its rulings, including the final
arbitration decision and ruling. The arbitration committee shall only
award remedies or relief that is allowed by this Contract and that
could be granted by a competent court within the Federal Republic of
Germany. The final decision and ruling by the arbitration committee
shall be in writing, and shall specify the factual and legal bases
therefor.
(6) This Contract may be executed in counterparts, each of which will be
deemed an original, but both of which together will constitute one and
the same instrument.
(8) Except as provided in Section 11(1) below, this Contract and its
exhibits comprise the complete and exclusive agreement between the
parties with respect to the subject matter hereof, superseding and
replacing any and all prior agreements, communications, and
understandings (both written and oral) regarding such subject matter,
including without limitation the SRS Agreement. This Contract may only
be modified, or any rights under it waived, by a written document
executed by both parties.
(8) The rights and obligations under this Contract shall be applicable to
Licensor's Affiliates, including without limitation EBI. Licensor
agrees that it is fully responsible for the actions of its Affiliates
and each of its employees, agents and independent contractors and those
of its Affiliates with respect to the performance of this Contract and
compliance with the terms and obligations of this Contract.
SS. 11 SURVIVING PROVISION/NO PROSECUTION
(1) Except as to any rights that have accrued under the SRS Agreement as of
the Effective Date, whereby actual or potential damages claims of LION
against Licensor arising from a breach or a violation of the SRS
Agreement or the Annex Agreement to the SRS-Agreement shall not
survive, this Contract shall, on the Effective Date, supersede and
replace the SRS Agreement, and on the Effective Date, the SRS Agreement
shall automatically terminate by mutual consent of the parties,
provided that the provisions of the SRS Agreement set forth in EXHIBIT
C hereto shall be incorporated in this Contract by reference and shall
survive such termination of the SRS Agreement. Royalty payments and any
other consideration including but not limited to equity in LION
obtained by Licensor under the SRS Agreement dated September 15, 1998,
or the Annex Agreement to the SRS Agreement of July 20, 2001, are not
to be paid back or reimbursed. This Contract also supersedes and
replaces any and all other agreements or licenses the parties may have
entered into previously concerning Licensor Products or the SRS
software, which are hereby terminated.
(2) The confidentiality obligations of this Contract shall survive
termination of this Contract and shall remain in full force and effect
for a period of five (5) years from termination of this Contract.
The parties have caused this Contract to be executed by their duly-authorized
representatives as of the Effective Date.
Executed by and on behalf of LION
Heidelberg, January 21, 2002
-------------------------------
Xx. Xxxxxxxxx xxx Xxxxxx, CEO
Executed by and on behalf of Licensor
Heidelberg, January 18, 2002
--------------------------------------
Licensor - Prof. Dr. Xxxxx Xxxxxxx, Director General EMBL
