1
EXHIBIT 10.27(c)
EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement (the "Agreement") is made as of May
16, 2000 (the "Effective Date") by and between LXR Biotechnology, Inc., a
Delaware corporation, having a place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("LXR") and Introgen Therapeutics, Inc., a Delaware
corporation, having a place of business at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Introgen").
BACKGROUND
A. LXR owns certain Patent Rights and Related Technology (as defined
below) relating to the "bak" gene; and
B. Introgen desires to obtain, and LXR desires to grant, an exclusive
license to Patent Rights and Related Technology (as defined below) subject to
the terms and conditions set forth herein below.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties hereto agree as follows:
1. DEFINITIONS. As used in this Agreement, the following capitalized
terms shall have the meanings indicated:
1.1 "Field" shall mean [*] of the "bak" gene in humans and the
discovery and development of methods, techniques and other subject matter for
[*] of the "bak" gene in humans, and shall include all fragments, derivatives
and splice variants of the "bak" gene; a "derivative" shall mean a nucleotide
sequence directly derived from the "bak" gene claimed in the Existing Patent
Rights as defined in Section 1.5.1, the gene product of which has apoptotic
activity substantially similar to that of the protein encoded by the "bak" gene.
1.2 "Patented Product" shall mean any product containing or
encompassing the "bak" gene, the manufacture, use or sale of which would, but
for the license granted under the License Agreement, infringe a Valid Claim of
the Patent Rights in the country where it is sold.
1.3 "Non-Patented Product" shall mean any product containing
or encompassing the "bak" gene that embodies Related Technology, but the
manufacture, formulation or use thereof is not the subject of any patent
application or patent, or any issued patents covering such product have been
abandoned or declared invalid in a non-appealable order.
1.4 "Licensed Product" shall mean any Patented Product or
Non-Patented Product.
1.5 "Patent Rights" shall mean any and all rights in:
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
1
2
1.5.1 all worldwide patents and patent applications claiming
the subject matter claimed in U.S. Patent Application numbers: [*], and any
foreign counterparts of the foregoing, existing or capable of being revived as
of the Effective Date (the "Existing Patent Rights"); and
1.5.2 all divisions, continuations, continuations-in-part,
foreign counterparts, patents of addition, and substitutions of, and all patents
issuing on any of the foregoing or of any patent application which claim
priority from any Existing Patent Rights, together with all registrations,
reissues, reexaminations, supplementary protection certificates or extensions of
any kind with respect to any of such patents.
1.6 "Related Technology" shall, subject to the provisions of
Section 1.1 (including the exclusions and limitations on the Field set forth
therein), mean all technical information, know-how, processes, procedures,
compositions, methods, techniques, data or other subject matter owned by LXR as
of the Effective Date, and relating to the manufacture, formulation, use or sale
of Licensed Products, and that are necessary or useful for the exercise of the
rights granted under the License Agreement.
1.7 "Valid Claim" shall mean any claim contained in any patent
application or in any issued patent included within the Patent Rights, which has
not been abandoned or declared invalid in a non-appealable order, as the case
may be, and which would be infringed by the manufacture, use, sale, offer for
sale or import of a Licensed Product in the absence of the license granted under
the License Agreement; provided that, in the case of a patent application that
has not issued, not more than ten (10) years has elapsed from the filing date to
which the claim is entitled.
1.8 "Net Sales" shall mean the gross amounts invoiced by
Introgen, its affiliates and sublicensees for the sale of Licensed Products to
unaffiliated third parties, less (i) all trade, cash and quantity discounts or
government rebates actually granted and taken; (ii) refunds, allowances or
credits to customers because of rejections or returns; (iii) prepaid freight,
sales taxes, duties and other governmental taxes (including value added tax);
and (iv) provisions for uncollectable accounts determined in accordance with
reasonable accounting practices, consistently applied to all products of the
selling party.
1.9 "Introgen Improvement" shall mean any invention solely
owned by Introgen consisting of compositions of the "bak" gene (i.e., fragments,
derivatives and splice variants of the "bak" gene covered under Patent Rights)
or methods of using the "bak" gene (including fragments, derivatives and splice
variants thereof) and all intellectual property rights (including patent
applications and patents) therein.
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
2
3
2. GRANTS AND OBLIGATIONS
2.1 LXR grants to Introgen an exclusive, worldwide license,
with the right to grant and authorize sublicenses, under the Patent Rights and
Related Technology to make, have made, use and sell Licensed Products, practice
any method, process or procedure and otherwise exploit the Patent Rights and
Related Technology, and to have any of the foregoing performed on its behalf by
a third party, in each case solely for applications within the Field.
2.2 Notwithstanding the foregoing, LXR shall have the right to
approve any sublicense granted by Introgen to a third party (where such third
party has a capitalization of less than [*] as determined by Introgen and such
third party in good faith), which approval shall not be unreasonably withheld;
otherwise, LXR shall have no right to approve sublicenses. In addition, in the
event that Introgen grants a sublicense under the Patent Rights and Related
Technology to any party, it agrees to provide LXR a copy of such agreement
(reasonably redacted).
2.3 Promptly following the execution of the License Agreement
and for the duration of the License Agreement, to the extent LXR may legally do
so, LXR will provide to Introgen all data, materials (including reasonable
samples of biological materials), reports, analyses and other information in its
possession necessary for Introgen to exercise its rights under the license
granted for use in the Field. Introgen may provide such data, materials and
other information, on a need-to-know basis, to those third parties who require
such data, materials or information in order to (i) obtain regulatory approvals
to manufacture and market Licensed Products for use in the Field, or (ii)
commercialize Licensed Products for use in the Field, under binders of
confidentiality no less stringent than those contained in the Agreement. LXR
shall have the right, without restriction, to use any and all such data,
materials, reports, analyses and other information for uses outside the Field.
2.4 Introgen agrees to grant to LXR, without payment of any
consideration, an irrevocable, perpetual, transferable, sublicenseable,
royalty-free, non-exclusive, worldwide license under any Introgen Improvement
solely for purposes of manufacturing, selling, importing and using the "bak"
gene for applications outside of the Field. Notwithstanding the foregoing, if
the License Agreement is terminated (but not upon expiration) pursuant to its
terms, [*].
2.5 To the extent that Introgen has the right to do so,
Introgen agrees to grant to LXR an option to obtain an exclusive, transferable,
sublicenseable, worldwide license under any Introgen Improvement solely for
purposes of manufacturing, selling, importing and using the "bak" gene for
applications outside of the Field; provided, however, if the License Agreement
is terminated (but not upon expiration) pursuant to its terms, [*]. After
receipt of notification from Introgen of such an Introgen Improvement, LXR shall
notify Introgen within 60 days whether it desires to exercise the foregoing
option with respect to the particular invention. If LXR so elects the parties
shall negotiate in good faith for a period of 90 days the terms and conditions
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
3
4
of an agreement including such license, including milestone and royalty payments
to Introgen; provided, however, such royalty to Introgen shall not exceed the
royalty rates set forth in the "Royalty" section below and such rates shall be
subject to reduction to the same extent as provided for in the "Royalty" section
below. [*].
2.6 Introgen will exercise commercially reasonable efforts to
research, develop, manufacture, obtain all necessary governmental approvals for,
and sell Licensed Products throughout the world, first in the United States and
then in other major markets of the world including but not limited to England,
Japan, Italy, France, Germany and Spain.
3. ROYALTY AND PAYMENTS
3.1 Introgen will pay to LXR the following amounts in United
States dollars (which amounts shall be non-refundable) upon accomplishment of
each of the following milestones with respect to the first Licensed Product for
which such milestone is accomplished:
[*] Upon the first successful completion of
[*] for the first Licensed Product.
[*] Upon the first successful completion of
[*] for the first Licensed Product; and
[*] Upon [*] of the first Licensed Product in
the United States.
[*]
3.2 Introgen will be responsible for all costs and expenses of
developing, testing and registering Licensed Products and for obtaining and
maintaining regulatory approvals therefor, and for all costs of manufacturing,
promoting, marketing and selling Licensed Products.
3.3 In the case of Patented Products, Introgen will pay to LXR
royalties at the rate of [*] of Net Sales by Introgen, its affiliates and
sublicensees of Patented Products to unaffiliated third parties, such royalties
to be paid quarterly. Such [*] royalty rate shall apply even if the Patented
Product includes the "bak" gene and one or more other products and/or
technologies (including without limitation delivery systems therefor). Such [*]
royalty payment shall continue on a country-by-country basis until last to
expire of any Valid Claim under the Patent Rights in such country.
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
4
5
3.4 In the case of Non-Patented Products, Introgen will pay to
LXR royalties at the rate of [*] of Net Sales of Non-Patented Products by
Introgen, its affiliates and sublicensees to unaffiliated third parties, such
royalties to be paid quarterly. Such [*] royalty rate shall apply even if the
Non-Patented Product includes the "bak" gene and one or more other products
and/or technologies (including without limitation delivery systems therefor).
Such [*] royalty payment for know-how shall continue on a country-by-country
basis until ten (10) years from the first commercial sale of a Non-Patented
Product in a particular country. Notwithstanding the foregoing, if during such
ten (10) year period, a patent application covering the manufacture, formulation
or use of a Non-Patented Product is filed in such country, then the royalty rate
shall increase to [*] from the date such patent application is filed, and such
[*] royalty payment shall continue in such country until the last to expire of
any Valid Claim under the Patent Rights in such country.
3.5 In the event a third party claims that the "bak" gene
alone, or its use alone infringes such third party's patent rights, and
Introgen; or an affiliate or sublicensee becomes obligated to make payments of
any kind to such third party solely with respect to such third party's patent
rights covering the "bak" gene or use thereof, provided Introgen's use of the
"bak" gene is within the Field, Introgen may deduct [*] of the amounts owing to
such third party from the royalty payments owing to LXR under the License
Agreement; provided, however, that no royalty payment to be made by Introgen to
LXR under the License Agreement shall be reduced by more than [*] of the royalty
payment that is otherwise due to LXR under the License Agreement.
4. INTELLECTUAL PROPERTY
4.1 LXR will have the right to control prosecution of the
Patent Rights. Introgen shall reimburse LXR for the out-of-pocket fees and
expenses incurred after the execution of the License Agreement for any and all
filing, prosecution and maintenance of patents and patent applications included
within the Patent Rights. LXR agrees to confer with Introgen regarding the
prosecution of patent applications and patents within Patent Rights, and to take
into consideration recommendations made by Introgen with respect to the handling
of such prosecution. If Introgen decides not to proceed with the prosecution of
one or more patents or applications within Patent Rights, any such patent or
application shall be excluded from the scope of Patent Rights, and Introgen's
continuing obligation of with respect to such patent or application shall cease.
If LXR elects not to prosecute any patent application or maintain any patent in
the Patent Rights, or fails to do so, LXR will notify Introgen and Introgen will
have the right to pursue such prosecution or maintenance at Introgen's sole
expense. Introgen shall be permitted to deduct [*] of any reimbursement by
Introgen to LXR under this subsection [*] from any milestone payments made by
Introgen under subsection 3.1 hereof, however, in the event that LXR grants a
license to practice Patent Rights outside of the Field to any third party, or if
LXR itself seeks to commercialize products or processes covered under Patent
Rights outside of the Field, LXR shall refund to Introgen any portion of the [*]
that has not been as of that time deducted from any milestone payment.
4.2 LXR agrees to provide Introgen with copies of all patents,
patent applications and
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
5
6
prosecution files of patents and applications within Patent Rights, and,
further, agrees to provide Introgen in a timely fashion with copies of all
prosecution documents that it receives with respect to patents and applications
within Patent Rights in the future. LXR agrees to consult with Introgen in a
timely fashion with respect to the prosecution of the Patent Rights and to
consider recommendations made by Introgen with respect thereto.
4.3 Introgen shall have the first right to enforce the Patent
Rights with respect to infringements within the Field; provided, however if
Introgen fails to bring an action to enforce the Patent Right within 6 months
after LXR has provided Introgen with reasonable evidence of a substantial
infringement, LXR shall have the right to bring such action. In either case the
non-controlling party will cooperate in such action at the other's expense. The
party initiating any such action will keep the other party reasonably informed
of the progress thereof, and such other party will have the right to participate
with counsel of its own choice. All awards from such enforcement actions (after
reimbursing the parties' costs and expenses related thereto) shall be treated as
follows: (i) if Introgen brings such action, Introgen shall [*], and (ii) if LXR
brings such action, LXR shall [*].
4.4 If the production, sale or use of any Licensed Product
within the Field results in a claim, suit or proceeding alleging patent
infringement against Introgen, its affiliates or sublicensees, Introgen will
have the exclusive right to defend and control the defense of any such action
using counsel of its own choice at its expense; provided, however, that LXR may
participate in the defense and/or settlement thereof at its own expense with
counsel of its choice. Except as agreed in writing by LXR, Introgen will not
enter into any settlement relating to a Licensed Product, if such settlement
admits the invalidity or unenforceability of any patent within the Patent
Rights. Introgen agrees to keep the LXR reasonably informed of all material
developments in connection with any such action. [*].
4.5 Notwithstanding the foregoing, in the event such claim of
infringement does not involve allegations that the manufacture, use or sale of
the "bak" gene infringes a third party patent, then Introgen shall defend,
indemnify and hold harmless LXR and its affiliates and their respective
directors, officers, agents, employees, successors and assigns from and against
such claim and any and all liabilities, damages, losses, costs and expenses
(including without limitation attorney's fees and costs of litigation,
regardless of outcome) arising therefrom, subject to standard indemnification
procedure and provided that LXR shall have the right to participate in any such
action with counsel of its own choosing at its own expense. [*].
LXR LICENSE AGREEMENT
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
6
7
5. CONFIDENTIALITY.
5.1 Confidential Information. Except as provided herein, each
party shall maintain in confidence, and shall not disclose to any third party,
any information, data or materials (whether of a business or technical nature
and in whatever form) disclosed by the other party in writing and marked
"Confidential" or that is disclosed orally and confirmed in writing as
confidential within forty-five (45) days following such disclosure
(collectively, "Confidential Information"). Except as provided for herein, it is
agreed that the furnishing of Confidential Information by one party to the other
party hereunder does not and shall not constitute any grant, option or license
to the receiving party under any patent or other rights now or hereafter held by
the disclosing party with respect to such Confidential Information. Confidential
Information shall not include any information that is: (i) already known to the
receiving party at the time of disclosure hereunder (other than from the other
party hereto) as demonstrated by its written records, (ii) now or hereafter
becomes publicly known other than through acts or omissions of the receiving
party, or anyone to whom the receiving party disclosed such information, (iii)
disclosed to the receiving party by a third party under no obligation of
confidentiality to the disclosing party or any other party, or (iv)
independently developed by the receiving party without reliance on the
Confidential Information of the disclosing party as shown by its written
records.
5.2 Permitted Usage. The receiving party may use or disclose
Confidential Information of the disclosing party to the extent necessary to
exercise its rights hereunder or in filing for, prosecuting or maintaining any
proprietary rights (including patents), prosecuting or defending litigation, or
complying with applicable governmental regulations; provided however, if the
receiving party is required by law or a court of competent jurisdiction to make
any public disclosures of Confidential Information of the disclosing party, to
the extent it may legally do so, it will give reasonable advance notice to the
disclosing party of such disclosure and will use its reasonable good faith
efforts, or, at the option of the disclosing party, enable the disclosing party,
to secure confidential treatment of Confidential Information prior to its
disclosure (whether through protective orders or otherwise).
5.3 Prohibited Actions. Subject to Section 5.1 above, Introgen
hereby agrees to consult with LXR prior to filing any patent application
containing any claim the subject matter of which contains, is based upon, or is
derived from the Confidential Information of LXR. In addition, the parties agree
to consult with respect to the filing and prosecution of patent applications
claiming inventions that are jointly owned. Moreover, Introgen shall not use
Confidential Information of LXR for any purpose or in any manner which would
constitute a violation of any laws or regulations of the United States.
5.4 Injunctive Relief. The parties recognize that any breach
of this Article 5 would irreparably harm the disclosing party, and that the
disclosing party is thereby entitled to equitable relief (including without
limitation, injunctions) with respect to any such breach or potential breach by
the receiving party, in addition to any other remedies.
5.5 Retroactive Effect. This Article 5 shall be made
retroactive to March 7, 1998, the date on which the parties commenced their
discussions regarding the subject matter of this Agreement.
LXR LICENSE AGREEMENT 7
8
6. WARRANTIES.
6.1 LXR. LXR hereby represents and warrants to Introgen that
as of the Effective Date: (i) LXR has the right to enter into the License
Agreement and grant the rights granted therein; (ii) LXR has not granted and
will not grant during the term of the License Agreement, rights in or to the
Licensed Products or Related Technology that are inconsistent with the rights
granted to Introgen under the License Agreement, (iii) to the best of its
knowledge there are no claims of third parties challenging the right of LXR to
grant to Introgen the rights under the License Agreement and (iv) except for the
Patent Rights, LXR does not own or control any patents or patent applications
the claims of which would dominate any practice of the Patent Rights by Introgen
under the License Agreement.
6.2 Introgen. Introgen hereby represents and warrants to LXR
that as of the Effective Date: (i) Introgen has the right to enter into this
Agreement, (ii) to its knowledge, there are no claims of third parties that
would prohibit or restrict Introgen's ability to perform its obligations under
this Agreement, and (iii) Introgen will endeavor to conduct its research,
development, manufacture and sale of Licensed Products in accordance with all
applicable laws and regulations.
6.3 Disclaimer of Warranties and Limitation of Liability.
EXCEPT AS PROVIDED IN THIS ARTICLE 7, NEITHER PARTY MAKES ANY WARRANTIES OR
REPRESENTATIONS (EXPRESS, IMPLIED, STATUTORY OR OTHERWISE) WITH RESPECT TO THE
SUBJECT MATTER HEREOF INCLUDING, BUT NOT LIMITED TO ANY PATENT, TRADEMARK,
SOFTWARE, NON-PUBLIC OR OTHER DATA OR INFORMATION, OR TANGIBLE RESEARCH PROPERTY
INCLUDING SAMPLES. LXR SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OR
REPRESENTATIONS OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. NOTHING
IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN
BY LXR; WITH REGARD TO THE UTILITY OF ANY SAMPLES; THE SCOPE, VALIDITY OR
ENFORCEABILITY OF THE PATENT RIGHTS; THAT ANY PATENT WILL ISSUE BASED UPON ANY
PENDING PATENT APPLICATION INCLUDED IN THE PATENT RIGHTS; OR THAT THE EXERCISE
OF THE PATENT RIGHTS OR USE OF THE RELATED TECHNOLOGY WILL NOT INFRINGE THE
PATENT OR PROPRIETARY RIGHTS OF ANY OTHER THIRD PARTY. TO THE EXTENT SAMPLES ARE
FURNISHED HEREUNDER, LXR MAKES NO REPRESENTATION THAT SUCH SAMPLES OR THE
METHODS USED IN MAKING OR USING SUCH SAMPLES ARE FREE FROM LIABILITY FOR PATENT
INFRINGEMENT. EXCEPT AS EXPRESSLY PROVIDED FOR HEREUNDER, LXR SHALL HAVE NO
LIABILITY OF ANY KIND WHATSOEVER TO INTROGEN RESULTING FROM THE EXERCISE OF
RIGHTS HEREUNDER, WHETHER SUCH LIABILITY ARISES IN CONTRACT, TORT OR STRICT
LIABILITY, WITH THE EXCEPTION OF THE PARTIES' DEFEND, INDEMNIFY AND HOLD
HARMLESS OBLIGATIONS UNDER SECTION 8, IN NO EVENT WILL EITHER PARTY BE LIABLE
FOR ANY INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM
THE LICENSE HEREUNDER (INCLUDING THE USE OF THE PATENT RIGHTS, RELATED
TECHNOLOGY OR SAMPLES), EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY
OF SUCH DAMAGES.
LXR LICENSE AGREEMENT 8
9
7. TERM/TERMINATION.
7.1 Term. The term of this Agreement shall commence on the
Effective Date and shall continue in full force and effect until expiration of
the later of ten (10) years from the first commercial sale of a Patented Product
in a particular country, or the last to expire of any Valid Claim under the
Patent Rights in such country.
7.2 Termination. Introgen shall have the right to terminate
this Agreement for any reason upon written notice to LXR at any time. This
Agreement shall automatically terminate if Introgen commits a material breach or
defaults in the performance of a material obligation hereunder, and fails to
remedy or cure such breach or default within thirty (30) days after being called
upon in writing to do so by LXR.
7.3 Effect of Termination. Upon expiration or termination of
this Agreement for any reason, Introgen shall return to LXR and shall cease all
use of all Confidential Information of LXR including without limitation, all
information, data, materials, samples and documents provided by LXR under this
Agreement, except that Introgen may retain one (1) copy of such information,
data and documents in the files of its legal counsel solely for the purposes of
complying with its ongoing confidentiality obligations hereunder.
7.4 Survival. Sections 7.3, and Articles 5, 6, 8 and 9 shall
survive the expiration or termination of this Agreement.
8. INDEMNIFICATION.
8.1 Except as otherwise specified in Section 4.5 above,
Introgen shall indemnify, defend and hold harmless LXR, its affiliates, and
their respective directors, officers, employees, agents, successors and assigns
against any liability, damage, loss, cost or expense (including reasonable
attorneys' fees and expenses of litigation, regardless of outcome) incurred by
or imposed upon the indemnitees, or any one of them, in connection with any
third party claims, suits, actions demands or judgments arising out of any acts
or omissions by or on behalf of Introgen pursuant to this Agreement, or any
negligence, misconduct or breach of this Agreement by Introgen or its employees,
agents or contractors; provided that an indemnitee that intends to claim
indemnification under this Section 8 shall: (i) promptly notify Introgen in
writing of such claim, suit or action with respect to which indemnitee intends
to claim such indemnification, (ii) subject to Section 8.4., give Introgen sole
control of the defense and/or settlement thereof, (iii) provide Introgen, at
Introgen's expense, with reasonable assistance and full information with respect
thereto. Notwithstanding the foregoing, Introgen shall have no obligations for
any claim if the indemnitee seeking indemnification makes any admission or
settlement regarding such claim without the prior written consent of Introgen,
which consent shall not be unreasonably withheld.
8.2 Exception. The indemnification under Section 8.1 shall not
apply to any liability, damage, loss, cost or expense to the extent attributable
to the gross negligence or intentional misconduct of the indemnitees.
LXR LICENSE AGREEMENT 9
10
8.3 Attorneys. The indemnifying party agrees, at that party's
sole expense, to provide counsel reasonably acceptable to the indemnitee party
to defend against any actions brought or filed against any indemnitee with
respect to any indemnification obligation herein, whether or not such actions
are rightfully brought. The indemnitee shall have the right to participate with
counsel of its own choosing at its own expense.
9. MISCELLANEOUS.
9.1 Independent Contractors. The relationship of LXR and
Introgen established by this Agreement is that of independent contractors.
Nothing in this Agreement shall be construed to create any other relationship
between LXR and Introgen. Neither party shall have any right, power or authority
to assume, create or incur any expense, liability or obligation, expressed or
implied, on behalf of the other.
9.2 Confidential Terms. Except as expressly provided herein,
each party agrees not to disclose any terms of this Agreement to any third party
without the prior written consent of the other party, except as required by
securities or other applicable laws, or such party's accountants, attorneys and
other professional advisors, potential investors and partners, under binders of
confidentiality no less stringent than those contained herein.
9.3 Assignment. This Agreement shall not be assignable by
either party to any third party without the prior written consent of the other
party hereto. Notwithstanding the foregoing, either party may assign this
Agreement without the consent of the other party to a party that is an affiliate
of the assigning party at the time of the assignment, or to an entity that
acquires substantially all of the business or assets of such party whether by
merger, acquisition, sale or otherwise, provided that in either case, such
assignee agrees in writing to be bound by the terms and conditions of this
Agreement. Notwithstanding the foregoing, LXR may assign this Agreement without
the consent of Introgen to an entity that acquires substantially all of the
Patent Rights, provided such assignee agrees in writing to be bound by the terms
and conditions of this Agreement. In the event of any such assignment all
references to the assigning party shall be deemed to be references to the
assignee. Any purported assignment in violation of this section shall be null
and void. For the purposes hereof, an "affiliate" of a party shall mean any
corporation or other business entity that controls, is controlled by or under
common control with such party.
9.4 Notices. Any notice or other communication required by
this Agreement shall be made in writing and given by prepaid, first class,
certified mail, return receipt requested, and shall be deemed to have been
served on the date received by the addressee at the following address or such
other address as may from time to time be designated by the other party in
writing:
If to LXR: LXR Biotechnology, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
LXR LICENSE AGREEMENT 10
11
If to Introgen: Introgen Therapeutics, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇ ▇▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
9.5 Compliance with Law. Each party shall comply with all
applicable federal, state and local laws and regulations in connection with its
activities pursuant to this Agreement. Each party hereby acknowledges that its
rights and obligations under this Agreement are subject to the laws and
regulations of the United States relating to the export of products and
technical information. Without limitation, each party shall comply with all such
laws and regulations.
9.6 Governing Law. This Agreement shall be governed by, and
construed and interpreted in accordance with, the laws of the State of
California, without reference to its or any other jurisdiction's principles of
conflicts of law.
9.7 No Waiver. A waiver express or implied, by either LXR or
Introgen of any right under this Agreement or of any failure to perform or
breach hereof by the other party hereto shall not constitute or be deemed to be
a waiver of any other right hereunder or of any other failure to perform or
breach hereof by such other party, whether of a similar or dissimilar nature
thereto.
9.8 Severability. If any provision of this Agreement shall be
found by a court to be void, invalid or unenforceable, the same shall be
conformed to comply with applicable law or stricken if not so conformable, so as
not to affect the validity or enforceability of the remainder of this Agreement.
9.9 Entire Agreement. This Agreement constitutes the entire
understanding of the agreement between the parties with respect to the subject
matter hereof and supersede any and all prior negotiations, representations,
agreements and understandings, written or oral, that the parties may have
reached with respect to the subject matter hereof. No agreements altering or
supplementing the terms hereof may be made except by means of a written document
signed by the duly authorized representatives of each of the parties hereto.
9.10 Counterparts. This Agreement shall be executed in two
counterparts, each of which shall be deemed an original, but both of which
together shall constitute one and the same instrument.
LXR LICENSE AGREEMENT 11
12
IN WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement.
LXR BIOTECHNOLOGY, INC. INTROGEN THERAPEUTICS, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇
------------------------------ -------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇▇▇▇▇▇
---------------------------- -----------------------------
Title: Director Title: V.P. Intellectual Property
--------------------------- ----------------------------
LXR LICENSE AGREEMENT 12
