EXHIBIT 10.5
TO
FORM 10-K
FOR THE YEAR ENDED
DECEMBER 31, 1999
"[ * ]" = omitted, confidential material, which material has been separately
filed with the Securities and Exchange Commission pursuant to a grant of
confidential treatment.
NON-EXCLUSIVE PATENT LICENSE AGREEMENT
University of Florida Research Foundation, Inc.
and
Targeted Genetics Corporation
TABLE OF CONTENTS
PREAMBLE
ARTICLES:
I DEFINITIONS
II GRANT
III DUE DILIGENCE
IV ROYALITIES
V REPORTS AND RECORDS
VI PATENT PROSECUTION
VII INFRINGEMENT & PATENT ENFORCEMENT
VIII INDEMNIFICATION AND PRODUCT LIABILITY
IX NEGATION OF WARRANTIES
X EXPORT CONTROLS
XI NON-USE OF NAMES
XII ASSIGNMENT
XIII TERM & TERMINATION
XIV PAYMENTS, NOTICES AND OTHER
COMMUNICATIONS
XV MISCELLANEOUS PROVISIONS
APPENDIX A SUBLICENSE
Agreement is made and entered into this 25/th/ day of December 1993, (the
Effective Date) by and between THE UNIVERSITY OF FLORIDA RESEARCH FOUNDATION,
INC., a not-for-profit corporation duly organized and
existing under the laws of the State of Florida and having its principal office
at 000 Xxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx, 00000-0000, U.S.A. (hereinafter
referred to as UFRFI), and Targeted Genetics Corporation, a corporation duly
organized under the laws of Washington and having its principal office at 0000
Xxxxx Xxx., Xxxxx 000, Xxxxxxx, Xxxxxxxxxx, 00000 (hereinafter referred to as
LICENSEE).
WITNESSETH
WHEREAS, UFRFI warrants that it is the owner of certain "Patent Rights" by
assignment from the University of Florida (hereinafter referred to as
University) relating to UFRFI Case No 0431, U.S. Patent No. 5,139,941, Issued
08/18/92, "AAV Transduction Vectors" invented by Drs. Xxxxxxxx Xxxxxxxx, Xxxxxxx
X. Xxxxx, Xxxxxxx X. Xxxxxxxx & Xxxx X. Xxxxxxxx, and has the right to grant
licenses under said Patent Rights, subject only to a royalty-free, nonexclusive
license heretofore granted to the United States Government;
WHEREAS, UFRFI desires to have the Patent Rights developed and utilized to
the fullest extent so that the benefits can be enjoyed by the general public and
is willing to grant a nonexclusive license thereunder;
WHEREAS, LICENSEE shall commit itself to a thorough, vigorous and diligent
program of exploiting the Patent Rights commercially so that public utilization
and royalty income to UFRFI shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a non-exclusive license under the
Patent Rights upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein the parties hereto agree as follows:
ARTICLE I DEFINITIONS
---------------------
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "LICENSEE" shall mean the following:
(a) a related company of LICENSEE, the voting stock of which is
directly or indirectly at least fifty percent (50%) owned or
controlled by LICENSEE;
(b) an organization which directly or indirectly controls more than
fifty percent (50%) of the voting stock of LICENSEE;
(c) an organization, the majority ownership of which is directly or
indirectly common to the ownership of LICENSEE.
1.2 "Patent Rights" shall mean all of the following UFRFI intellectual
property:
(a) the United States Patents No. 5,139,941, Issued 08/18/92, "AAV
Transduction Vectors" invented by Drs. Xxxxxxxx Xxxxxxxx, Xxxxxxx
X. Xxxxx, Xxxxxxx X. Xxxxxxxx & Xxxx X. Xxxxxxxx;
(b) to the extent that the following contain one or more claims to
the invention or inventions claimed in (a) above: continuations-
in-part of (a) above, all divisions and continuations of these
continuations-in-part, divisions and continuations, and any
reissues, extensions or reexaminations of such patents;
(c) to the extent that the following contain one or more claims to
the invention or inventions claimed in (a) above: all counterpart
foreign applications and patents to (a) and (b) above.
1.3 A "Licensed Product" shall mean any tangible product or part thereof
which, in the course of manufacture, use or sale would, in the absence of this
Agreement, infringe one or more claims of the Patent Rights that have not been
held invalid or unenforceable by an unappealed or unappealable judgement of a
court of competent jurisdiction.
1.4 A "Licensed Process" shall mean any process which, in the course of
being practiced, would, in the absence of this Agreement, infringe one or more
claims of the Patent Rights that have not been held invalid or unenforceable by
an unappealed or unappealable judgement of a court of competent jurisdiction.
1.5 "Net Sales" shall mean LICENSEE's (and its sublicensee's) xxxxxxxx for
or revenue received from sales of Licensed Products and Licensed Processes
produced hereunder less the sum of the following:
(a) discounts allowed in amounts customary in the trade,
(b) sales taxes, tariff duties, and/or use taxes which are directly
imposed and are with reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns; and
(e) charges deemed uncollectible under generally
accepted accounting principles.
No deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Products shall be considered
"sold" when billed out or invoiced.
1.6 "Territory" shall mean the United States.
1.7 "Field(s) of Use" shall mean the following:
[*]
1.8 "Optioned Field(s) of Use" shall mean the following:
[*]
Upon written notice to UFRFI of LICENSEE's exercise of the option according to
Article 2.2 below, any Optioned Field of Use shall be redefined as a Field of
Use.
(f) Veterinary; All Uses.
ARTICLE II- GRANT
-----------------
2.1 UFRFI hereby grants to LICENSEE a non-exclusive right and license to
make, have made, use, lease, have sold and sell the Licensed Products, and to
practice the Licensed Processes in the Territory for the Field(s) of Use to the
end of the term for which the Patent Rights are granted unless sooner terminated
according to the terms hereof.
2.2 UFRFI hereby grants to LICENSEE an option to acquire a non-exclusive
right and license to make, have made, use, lease and sell the Licensed Products,
and to practice the Licensed Processes in the Territory for the Optioned
Field(s) of Use, under the same terms and conditions as the agreement for the
Licensed Fields of Use. Such option shall automatically expire three (3) years
from the Effective Date of this Agreement ("Option Period") unless exercised
earlier by LICENSEE upon written notice to UFRFI. During the Option Period,
LICENSEE shall have the right to make, have made, use but not to sell Licensed
Products, and to practice Licensed Processes, for internal research purposes
only.
2.3 LICENSEE agrees that Licensed Products leased or sold in the United
States shall be manufactured substantially in the United States.
2.4 UFRFI reserves the right to practice under the Patent Rights and to
use and
___________________
[ * ] = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a grant of confidential
treatment.
Substitute for Page 4
Targeted Genetics License Agreement, Final 12/6/93
Field 3. Human; Cancer.
1.8 "Optioned Field(s) of Use shall mean the following:
[*]
Upon written notice to UFRFI of LICENSEE's exercise of the option according to
Article 2.2 below, any Optioned Field of Use shall be redefined as a Field of
Use.
__________________
[ * ] = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a grant of confidential
treatment.
ARTICLE II- GRANT
-----------------
2.1 UFRFI hereby grants to LICENSEE a non-exclusive right and license,
subject only to a royalty-free, nonexclusive license hereto fore granted to the
United States Government, to make, have made, use, lease, have sold and sell the
Licensed Products, and to practice the Licensed Processes in the Territory for
the Field(s) of Use to the end of the term for which the Patent Rights are
granted unless sooner terminated according to the terms hereof.
2.2 UFRFI hereby grants to LICENSEE an option to acquire a non-exclusive
right and license to make, have made, use, lease and sell the Licensed Products,
and to practice the Licensed Processes in the Territory for the Optioned
Field(s) of Use, under the same terms and conditions as the agreement for the
Licensed Fields. of Use. Such option shall automatically expire three (3) years
from the Effective Date of this Agreement ("Option Period") unless exercised
earlier by LICENSEE upon written notice to UFRFI. During the Option Period,
LICENSEE shall have the right to make, have made, use but not to sell Licensed
Products, and to practice Licensed Processes, for internal research purposes
only.
2.3 LICENSEE agrees that Licensed Products leased or sold in the United
States shall be manufactured substantially in the United States.
2.4 UFRFI reserves the right to practice under the Patent Rights and to
use and distribute to third parties the Tangible Property for its own
noncommercial research purposes.
distribute to third parties the Tangible Property for its own noncommercial
research purposes.
2.5 UFRFI reserves the right to grant other licenses under the Patent
Rights.
2.6
UFRFI hereby grants to LICENSEE the right to sublicense as defined in Appendix
A.
2.7 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any
technology not specifically set forth herein.
2.8 The Patent Rights covered by this Agreement are subject to the
rights and limitations of U.S. Code, Title 35, Chapter 38, and implementing
regulations thereof, and the grant under this Article II is subject to such
rights and limitations.
ARTICLE III - DUE DILIGENCE
---------------------------
3.1 LICENSEE shall use its best efforts to bring one or more Licensed
Products or Licensed Processes to market through a thorough, vigorous and
diligent program for exploitation of the Patent Rights to attain maximum
commercialization of Licensed Products or Licensed Processes.
3.2 LICENSEE's failure to perform in accordance with Paragraph 3.1 above
shall be grounds for UFRFI to terminate this Agreement pursuant to Article 13.3
hereof.
3.3 LICENSEE agrees to keep UFRFI fully and promptly informed of its
progress on the commercial exploitation of Licensed Products and/or Licensed
Processes. Beginning December 31, 1994 and continuing annually thereafter until
first Net Sale, LICENSEE shall submit to UFRFI within 60 days of the end of each
calendar year a written report with respect to progress made toward
commercialization of a Licensed Product and/or use of a Licensed Process during
the 12 months preceding.
ARTICLE IV - ROYALTIES
----------------------
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay royalties to UFRFI in the manner hereinafter provided to the end of
the term of the Patent Rights or until this Agreement shall be terminated as
hereinafter provided:
(a) [*], which said License Issue Fee shall be deemed earned and due
---
immediately upon the execution of this Agreement. [*] shall be
payable on the Effective Date and [*] shall be payable one (1) year
from the Effective Date.
(b) License Maintenance Fees of are payable beginning January 1,1996
and on January 1 of each year thereafter and are a function of the
number of Fields under Paragraphs 1.7 and 1.8 that are licensed by
LICENSEE as of the date that a License Maintenance Fee is due, as
provided in the following table:
Fields of Use Licensed Annual License Maintenance
---------------------- --------------------------
1 [*]
2 [*]
3 [*]
4 [*]
5 [*]
6 [*]
The License Maintenance Fee for a given year shall be creditable against
any Running Royalties subsequently due during said year under Articles
4.1(e) and 4.1(f) below.
(c) Option Issue Fee of [*] which said Option Issue Fee shall be deemed earned
and due immediately upon the execution of this Agreement. [*] shall be
payable on the Effective Date and [*] shall be payable one (1) year from
the Effective Date.
(d) Regulatory Milestone Fees for the first Licensed Product within the each
Field of Use, as follows:
(i) [*] upon filing of the Investigational New Drug Application (IND) or
other governmental regulatory approval whichever comes first.
__________________
[ * ] = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a grant of confidential
treatment.
(ii) [*] upon entering Phase 2 clinical trials, "Phase 2" as defined by 21
Code of Federal Regulations, Chapter 1;
(iii) [*] upon entering Phase 3 clinical trials, "Phase 3" as defined by 21
Code of Federal Regulations, Chapter 1;
(iv) [*] upon filing the New Drug Application ("NDA") or Product License
Application ("PLA") as defined by 21 Code of Federal Regulations,
Chapter 1;
(v) [*] upon NDA or PLA approval.
(e) Running Royalty in an amount equal to [*] of the Net Sales of the Licensed
Products or Licensed Processes manufactured used, leased or
sold by or for LICENSEE or its sublicensees in the United
States, except, however that the foregoing royalty rate may be
reduced by one half the amount of third party royalties
payable on licenses required to make, use or sell Licensed
Products or to practice a Licensed Process but in no case
shall the Running Royalty be less than [*] of Net Sales.
(f) Running Royalty in an amount equal to [*] of the Net Sales of
the Licensed Products or Licensed Processes manufactured by or
for LICENSEE or its sublicensees in the United States, but
sold outside the United States, except, however that the
foregoing royalty rate may be reduced by one half the amount
of third party royalties payable on licenses required to make,
us or sell Licensed Products or to practice a Licensed but
case shall the Running Royalty be less than [*] of Net Sales.
_____________________
[ * ] = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a grant of confidential
treatment.
4.2 For the rights, privileges and license granted hereunder upon exercise of
the Option Agreement, LICENSEE shall pay royalties to UFRFI in
the manner hereinafter provided until the last to expire of the
Patent Rights or until this Agreement shall be terminated as
provided in Article 13, below:
(a) License Issue Fee of [*] for the first Optioned Field of Us,
which said License Issue Fee shall be deemed earned and due
immediately upon the execution of the Option Agreement.
(b) License Issue Fee of [*] for each subsequent Optioned Field of
Use, which said License Issue Fee shall be deemed earned and due
immediately upon the execution of the Option Agreement.
(c) Regulatory Milestone Fees as defined in Article 4.1(d) above and
Running Royalties as defined in Article 4.1(e) and 4.1(f) above.
4.3 No multiple royalties shall be payable because any Licensed Product,
its manufacture, use, lease or sale are or shall be covered by multiple claims
or more than one Patent Rights patent licensed under this Agreement.
4.4 Royalty payments shall be paid in United States dollars in Gainesville,
Florida or at such other place as UFRFI may reasonably designate consistent with
the laws and regulations controlling in any foreign country. If any currency
conversion shall be required in connection with the payment of royalties
hereunder, such conversion shall be made by using the exchange rate prevailing
at the Chase Manhattan Bank (N.A.) on the last business day of the calendar
quarterly reporting period to which such royalty payments relate.
__________________
[ * ] = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a grant of confidential
treatment.
4.5 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular
country, the royalty payable for sales in such country shall be equal
to the maximum permitted royalty under such law or regulations. Notice
of said event shall be provided to UFRFI. An authorized representative
of LICENSEE shall notify UFRFI, in writing, within thirty (30) days of
discovering that such royalties are approaching or have reached the
maximum amount, and shall provide UFRFI with written documentation
regarding the laws or regulations establishing such maximum.
4.6 In the event that any taxes, withholding or otherwise, are levied by
any taxing authority in connection with accrual or payment of any royalties
payable by LICENSEE under this Agreement, and LICENSEE determines in good faith
that it must pay such taxes, LICENSEE shall have the right to pay such taxes to
the local tax authorities on behalf of UFRFI and payment of the net amount due
after reduction by the amount of such taxes, shall fully satisfy LICENSEE's
royalty obligations under this Agreement. LICENSEE shall provide UFRFI with
appropriate receipts or other documentation supporting such payment. LICENSEE
shall inform UFRFI in writing, within thirty (30) days of notification that
taxes will or have been levied by a taxing authority.
ARTICLE V - REPORTS AND RECORDS
-------------------------------
5.1 LICENSEE shall keep full, true and accurate books of account containing
all particulars that may be necessary for the purpose of showing the amounts
payable to UFRFI hereunder. Said books of account shall be kept at LICENSEE's
principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for three (3) years
following the end of the calendar year to which they pertain, to the inspection
of an independent auditor mutually acceptable to the parties, for the purpose of
verifying LICENSEE's royalty statement or compliance in other respects with this
Agreement.
5.2 Beginning with the first Net Sale, LICENSEE, within forty-five (45)
days after March 31, June 30, September 30 and December 31, of each year, shall
deliver to UFRFI true and accurate reports, giving such particulars of the
business conducted by LICENSEE and its sublicensee(s) during the preceding
three-month period under this Agreement as shall be pertinent to a royalty
accounting hereunder. These shall include at least the following:
(a) number of Licensed Products manufactured and sold
(b) total xxxxxxxx for Licensed Products sold.
(c) accounting for all Licensed Processes used or sold.
(d) deductions applicable as provided in Paragraph 1.5.
(e) total royalty due.
(f) names and addresses of all sublicensees of LICENSEE.
5.3 With each such report submitted, LICENSEE shall pay to UFRFI the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report. If royalties are reduced according to Article 7.4,
LICENSEE shall submit written evidence from a credible source validating the
extent of the reduction.
5.4 The license fees and royalty payments set forth in this Agreement
shall, if overdue, bear interest until payment at the monthly rate of one
percent (1%). The payment of such interest shall not foreclose UFRFI from
exercising any other rights it may have as a consequence of the lateness of any
payment.
ARTICLE VI- PATENT PROSECUTION
------------------------------
6.1 UFRFI shall maintain during the term of this Agreement the Patent
Rights in the United States. The maintenance of all Patent Rights patents shall
be the primary responsibility of UFRFI; provided, however, LICENSEE shall assist
UFRFI in obtaining patent extension pursuant to U.S. Code, Title 35, Section
156.
6.2 Payment of all fees and costs relating to the maintenance and
extension of the Patent Rights shall be the responsibility of UFRFI.
ARTICLE VII- INFRINGEMENT & PATENT ENFORCEMENT
----------------------------------------------
7.1 LICENSEE shall inform XXXXX promptly in writing of any alleged
infringement or possible infringement of the Patent Rights by a Third Party and
of any available evidence thereof, as well as any facts which may affect the
validity, scope or enforceability of the Patent Rights.
7.2 UFRFI shall, at its discretion, use diligence to cause infringement
to cease by the grant of a license or other remedy or use diligence in bringing
an infringement action against the Third Party. UFRFI reserves the right to
identify LICENSEE in such suit as having rights under Patent Rights. UFRFI shall
not name LICENSEE as a co-party in such suit without an express written request
from LICENSEE.
7.3 In a case in which UFRFI brings an infringement action against a
Third Party, this action shall be at no cost to LICENSEE unless LICENSEE joins
the suit as a co-party. LICENSEE is under no obligation to join any such suit
and UFRFI must approve, at its sole discretion, the addition of LICENSEE as a
co-party.
7.4 Nothing in this Agreement shall be construed as an Agreement by UFRFI
to bring or prosecute actions or suits against Third Parties for infringement of
Patent Rights. However, if UFRFI and/or any other party granted the right to
bring or prosecute actions or suits against Third Parties for infringement of
Patent Rights opts not to prosecute an Infringer and LICENSEE's sales suffer
from competition by the Infringer, LICENSEE shall be entitled to reduce the
royalty in proportion to the percent decrease in LICENSEE's Net Sales of a
Licensed Product or Licensed Process, based on credible written evidence
submitted to UFRFI before any reduction is taken. Such reduction shall remain in
effect until such time as such infringement ends. LICENSEE shall report its
reductions in royalties according to
Article 5.
7.5 In the event that a declaratory judgement or action alleging
invalidity of any of the Patent Rights shall be brought against UFRFI, UFRFI
agrees to notify LICENSEE that an action alleging invalidity has been brought.
UFRFI does not represent that it will commence legal action against a
declaratory action alleging invalidity.
ARTICLE VIII- INDEMNIFICATION & PRODUCT LIABILITY
-------------------------------------------------
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UFRFI and the University, their trustees,
officers, employees and affiliates, harmless against all claims and expenses,
including legal expenses and reasonable attorneys' fees, arising out of the
death of or injury to any person or persons or out of any damage to property or
the environment, and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from the production, manufacture,
sale, use, lease, consumption or advertisement by LICENSEE of the Licensed
Product(s) and/or Licensed Process(es) or arising from any obligation of
LICENSEE hereunder.
8.2 LICENSEE shall obtain and carry in full force and effect liability
insurance which shall protect LICENSEE and UFRFI in regard to events covered by
Article 8.1 above.
ARTICLE IX NEGATION OF WARRANTIES
---------------------------------
9.1 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UFRFI MAKES
NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLANS, ISSUED OR PENDING.
NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR
WARRANTY GIVEN BY UFRFI THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED
HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OR OTHER INTELLECTUAL PROPERTY
RIGHTS OF ANY THIRD PARTY.
9.2 UFRFI does not warrant the validity of the Patent Rights, and makes no
representations whatsoever with regard to the scope of the Patent Rights.
ARTICLE X -EXPORT CONTROLS
--------------------------
LICENSEE hereby agrees that it shall not sell, transfer, export or reexport
any Licensed Products or Licensed Processes or related
information in any form, or any direct products of such information, except in
compliance with all applicable laws, including the export laws of any U.S.
government agency and any regulations thereunder, and will not sell, transfer,
export or reexport any such Licensed Products or Licensed Processes or
information to any persons or any entities with regard to which there exist
grounds to suspect or believe that they are violating such laws. LICENSEE shall
be solely responsible for obtaining all licenses, permits or authorizations
required from the U.S. and any other government for any such export or reexport.
To the extent not inconsistent with this Agreement, UFRFI agrees to provide
LICENSEE with such assistance as it may reasonably request in obtaining such
licenses, permits or authorization.
ARTICLE XI- NON-USE OF NAMES
----------------------------
LICENSEE shall not use the names of the University of Florida or University
of Florida Research Foundation, Inc. nor of any of either institution's
employees, nor any adaptation thereof, in any advertising, promotional or sales
literature without prior written consent obtained from UFRFI in each case,
except that LICENSEE may state that it is licensed by UFRFI under the patent
comprising the Patent Rights.
ARTICLE XII - ASSIGNMENT
------------------------
This Agreement is not assignable and any attempt to do so shall be void,
except that LICENSEE may assign this Agreement to a successor by merger or sale
of all of LICENSEE's business related to Licensed Products and Licensed
Processes. The assignor shall remain liable and responsible for the performance
and observance of all its duties and obligations under this Agreement.
ARTICLE XIII TERM & TERMINATION
-------------------------------
13.1 This Agreement is effective when signed by all parties and shall
extend to the last to expire of the Patent Rights unless sooner terminated as
provided in Article 13 herein.
13.2 If LICENSEE shall cease to carry on its business, this Agreement
shall terminate upon notice by UFRFI.
13.3 Should LICENSEE fail to pay UFRFI royalties due and payable
hereunder, UFRFI shall have the right to terminate this Agreement on thirty (30)
days' notice, unless LICENSEE shall pay UFRFI within the thirty (30) day period,
all such royalties and interest due and payable. Upon the expiration of the
thirty (30) days period, if
LICENSEE shall not have paid all such royalties and interest due and payable,
the rights, privileges and license granted hereunder shall terminate.
13.4 Upon any material breach or default of this Agreement by LICENSEE,
other than those occurrences set out in Paragraphs 12.1, 12.2 and 12.3
hereinabove, which shall always take precedence in that order over any material
breach or default referred to in this Paragraph 12.4, UFRFI shall have the right
to terminate this Agreement and the rights, privileges and license granted
hereunder by ninety (90) days' notice to LICENSEE. Such termination shall become
effective unless LICENSEE shall have cured any such breach or default prior to
the expiration of the ninety (90) day period.
13.5 LICENSEE shall have the right to terminate this Agreement at any time
on three (3) months' written notice to UFRFI, and upon payment of all amounts
due UFRFI through the effective date of the termination.
13.6 UFRFI may terminate this Agreement upon the occurrence of the third
separate default by LICENSEE within any consecutive three (3) year period for
failure to pay royalties when due.
13.7 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. LICENSEE and any sublicensee
thereof may, however, after the effective date of such termination, sell all
Licensed Products, and complete Licensed Products in the process of manufacture
at the time of such termination and sell the same, provided that LICENSEE shall
pay to UFRFI the royalties thereon as required by Article IV of this Agreement
and shall submit the reports required by Article V hereof on the sales of
Licensed Products.
13.8 In the event either party files for bankruptcy or a receiver is
appointed, this Agreement may immediately thereafter be terminated at the option
of the other party.
13.9 LICENSEE shall have the right to terminate its license to a Field of
Use upon thirty (30) days written notice to UFRFI without effect to its rights
or obligations to any other Fields of Use licensed or any Optioned Fields of
Use. Termination of a license to a Field of Use shall not release either party
from any obligation that matured prior to the effective date of such
termination.
ARTICLE XIV - PAYMENTS, NOTICES AND OTHER COMMUNICATION
-------------------------------------------------------
Any payment, notice or other communication pursuant to this Agreement shall
be sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
In the case of UFRFI:
President
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000-0000
With a copy to:
Director
Office of Patent, Copyright and Technology Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000-0000
All payments to:
Director
Office of Patent, Copyright and Technology Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000-0000
PLEASE MAKE ALL CHECKS PAYABLE TO:
University of Florida Research Foundation, Inc.
In the case of LICENSEE:
President
Targeted Genetics Corporation
0000 Xxxxx Xxx, Xxxxx 000
Xxxxxxx, XX 00000
ARTICLE XV - MISCELLANEOUS PROVISIONS
-------------------------------------
15.1 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the State of Florida, U.S.A., except
that questions affecting the construction and effect of any patent
shall be determined by the law of the country in which the patent was
granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the
subject matter hereof, and shall not be subject to any change or
modification except by the execution of a written instrument
subscribed to by the parties hereto.
15.3 The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement shall be determined to be
invalid or unenforceable under any controlling body of the law, such
invalidity or unenforceability shall not in any way affect the
validity or enforceability of the remaining provisions hereof.
15.4 LICENSEE agrees to mark the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed
Products shipped to or sold in other countries shall be marked in
such a manner as to conform with the patent laws and practice of the
country of manufacture or sale.
15.5 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall
not constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition by the other party.
15.6 If UFRFI grants a license under the Patent Rights to any third party
that requires a royalty rate lower than that required of LICENSEE
under this Agreement, then UFRFI shall offer those terms to LICENSEE,
to be effective as of the effective date of the license to such third
party.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and
duly
executed this Agreement the day and year set forth below.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
By /s/ Xxxxx X. Xxxxxxxx
Name Xxxxx X. Xxxxxxxx
Title President
Date 12/25/93
TARGETED GENETICS CORPORATION
By /s/ X. Xxxxxxx Xxxxxx
Name X. Xxxxxxx Xxxxxx
Title President and CEO
Date December 16, 1993
APPENDIX A - SUBLICENSE
LICENSEE shall have the right to enter into one sublicensing agreement per
Field of Use for the rights, privileges and licenses granted under Article II
However. LICENSEE shall notify UFRFI in writing of the initiation of license
negotiations with all potential sublicensees.
LICENSEE hereby agrees that every sublicensing agreement to which it shall
be a party and which shall relate to the rights. privileges and license granted
hereunder shall contain a statement setting forth the date upon which LICENSEE's
rights. privileges and license hereunder shall terminate.
LICENSEE agrees that any sublicenses granted by it shall provide that the
obligations to UFRFI of this Agreement shall be binding upon the sublicensee as
if it were a party to this Agreement. LICENSEE further agrees to attach copies
of this Agreement to sublicensee agreements.
XXXXXXXX agrees to forward to UFRFI a copy of any and all sublicense
agreements within thirty (30) days of the execution of such sublicense
agreements and further agrees to forward to UFRFI annually a copy of such
reports received by LICENSEE from its sublicensees during the preceding twelve
(12) month period under the sublicenses as shall be pertinent to a royalty
accounting under said sublicense agreements.
LICENSEE shall not receive from sublicensees anything of value in lieu of
cash payments in consideration for any sublicense under this Agreement, without
the express prior written permission of UFRFI.
Upon termination of this Agreement for any reason, any sublicensee not then
in default shall have the right to seek a license from UFRFI.
