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EXHIBIT 10.17
{*} THE REDACTED PORTIONS INDICATED BY THIS SYMBOL ARE THE SUBJECT OF A
CONFIDENTIAL TREATMENT REQUEST AND HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
EXCLUSIVE LICENSE AGREEMENT
THIS LICENSE AGREEMENT (hereinafter "Agreement"), having an Effective Date of
June 29, 2001, is between AtheroGenics, Inc. ("AGIX"), a corporation of the
State of Georgia, having a principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, and National Jewish Medical Research Center ("NJMRC"), a
non-profit organization having a mailing address at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇, ▇▇
▇▇▇▇▇, each a "Party" and collectively the "Parties."
WHEREAS NJMRC has the exclusive, worldwide right and title to certain US and
foreign patents and patent applications and has related technical information;
WHEREAS, AGIX has established, or intends to establish, by separate agreements,
consulting relationships and other business relationships with certain inventors
of such patents and patent applications;
WHEREAS AGIX wishes to obtain an exclusive right and license to and under
certain US and foreign patents and patent applications and related technical
information to make, use, sell, have made and offer for sale diagnostics and
therapeutics to treat human diseases (herein defined and referred to as the
"Licensed Products") for commercial use in accordance with the terms and
conditions set forth below,
Now, THEREFORE, the Parties agree as follows:
I. DEFINITIONS
A. "AFFILIATE" shall mean any corporation or non-corporate business
entity, which controls, is controlled by, or is under common control with a
Party to this Agreement. A corporation or non-corporate business entity shall be
regarded as in control of another corporation if it owns, or directly or
indirectly controls, at least fifty (50%) percent of the voting stock of the
other corporation, or (i) in the absence of the ownership of at least fifty
(50%) percent of the voting stock of a corporation or (ii) in the case of a
non-corporate business entity, or non-profit corporation, if it possesses,
directly or indirectly, the power to direct or cause the direction of the
management and policies of such corporation or non-corporate business entity, as
applicable.
B "AGIX IMPROVEMENTS" shall mean any and all inventions, discoveries, and
improvements in the Licensed Field, whether patentable or not, that fall within
the scope of any valid claim of any of the Patent Rights or which are developed
using the Related Technology, which are invented, made, discovered, developed,
owned or controlled solely by AGIX, its employees or its agents (excluding ▇▇▇▇▇
▇▇▇▇▇▇▇ M.D.) during the Term of this Agreement.
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C. "COMPETING GENERIC PRODUCT" shall mean a product that is the generic
equivalent of a Licensed Product that is sold or offered for sale in the
Licensed Territory.
D. "CONFIDENTIAL INFORMATION" shall mean all business and technical
information identified by the disclosing party as confidential, whether
disclosed in written, oral, or in any other form, tangible or intangible,
including but not limited to:
(i) Information concerning inventions, discoveries, concepts, ideas,
techniques, processes, samples, data, finances and plans, customer lists,
business plans, contracts, marketing plans, sales data, production plans,
distribution plans, system implementation plans, business concepts, supplier
information, business procedures and business operations and all materials
related thereto;
(ii) All know-how and intellectual property, including specifically and
without limitation the contents of any unpublished patent application; and
(iii) All unpublished copyrightable material including, but not limited to,
trademarks, manuscripts, abstracts and presentations.
Confidential Information does not include any information that a Party can
demonstrate: (a) was in the Party's possession prior to its being furnished to
the Party under the terms of this Agreement, provided the source of that
information was not known by the Party to be bound by a confidentiality
agreement with or other continual, legal or fiduciary obligation of
confidentiality to the other Party; (b) is now, or hereafter becomes, through no
act or failure to act on the part of the Party, generally known to the public;
(c) is rightfully obtained by the Party from a third party, without breach of
any obligation to the other Party; or (d) is independently developed by the
Party without use of or reference to the Confidential Information.
E. "EFFECTIVE DATE" shall mean June 29, 2001.
F. "JOINT IMPROVEMENTS" shall mean any patentable inventions, discoveries,
and improvements in the Licensed Field, that fall within the scope of any valid
claim of any of the Patent Rights or which are developed using the Related
Technology, which are coinvented by AGIX, its employees or its agents and ▇▇▇▇▇
▇▇▇▇▇▇▇ M.D. as long as he is employed by NJMRC during the Term of this
Agreement.
G. "LICENSED FIELD" shall mean diagnosis and treatment of human diseases.
H. "LICENSED PRODUCTS" shall mean any component or final product used to
diagnose or treat human diseases, that is: (a) developed using the Related
Technology or any method, composition, or assay claimed under Patent Rights;
and/or (b) covered by any valid claim of any unexpired patent included in the
Patent Rights or any patents issuing on NJMRC Improvements, including but not
limited to pharmaceuticals, biopharmaceuticals, biologicals, diagnostics or
tools.
I. "LICENSED TERRITORY" shall mean the world.
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J. "NJMRC IMPROVEMENTS" shall mean any and all of NJMRC's rights within
the Licensed Field to any patentable inventions, discoveries, and improvements
pertaining to MEKK Technology, CGRP Technology, IL-10 Technology, and CD40
Technology which are invented, discovered, developed, or made by any employee of
NJMRC, including specifically and without limitation ▇▇▇▇▇ ▇▇▇▇▇▇▇ and any
employees working in his laboratory under his supervision, at any time during
the Term of this Agreement. NJMRC Improvements shall include Covered NJMRC
Improvements and Other NJMRC Improvements, as defined herein.
(i) "COVERED NJMRC IMPROVEMENTS" shall mean any and all patentable
inventions, discoveries, and improvements in the Licensed Field which
are invented, discovered, developed, or made solely by ▇▇▇▇▇ ▇▇▇▇▇▇▇,
M.D. and any NJMRC employees under his supervision working in his
laboratory at NJMRC during the Term of this Agreement.
(ii)."OTHER NJMRC IMPROVEMENTS" shall mean any and all NJMRC
Improvements which are not Covered NJMRC Improvements or Patent Rights
as defined herein.
K. "PATENT RIGHTS" shall mean:
(i) All U.S. patents and patent applications listed in Attachment A, and
any and all continuations, requests for continued examination, continuing
prosecution applications, divisionals, reexaminations, reissues, renewals,
extensions or foreign counterparts of any of the patents and patent applications
of Attachment A; and
(ii) NJMRC's rights in any continuation-in-part applications claiming
priority to the US patents and patent applications listed in Attachment A and 1)
naming ▇▇▇▇▇ ▇▇▇▇▇▇▇ and/or ▇▇▇▇ ▇▇▇▇▇▇▇ as sole named inventors or 2) naming
▇▇▇▇▇ ▇▇▇▇▇▇▇ and other NJMRC employee or consultant working under supervision
and/or direction of ▇▇▇▇▇ ▇▇▇▇▇▇▇ as inventors, provided that the claims of such
continuation-in-part applications would be infringed by the development and
commercialization of products covered under any valid claims of the US patents
and patent applications listed in Attachment A.
L. "RELATED TECHNOLOGY" shall mean the Related Technology of Attachment B.
M. "NET SALES" shall mean the gross sales of Licensed Products that are
produced, processed or sold by or on behalf of AGIX or its Affiliate(s) to or
for any unaffiliated third party, as and when received by AGIX, less (i)
customer returns and adjustments, (ii) price allowances and trade discounts
actually granted to customers (iii), to the extent separately stated, taxes
levied and/or other governmental charges assessed on the sale, transportation,
delivery or use of any Licensed Product and paid by or on behalf of AGIX, and
(iv) commissions (except those paid to sales representatives of AGIX, its
Affiliates, or Sublicensees), freight, postage, insurance, and other shipping
charges. When a Licensed Product is sold in combination with or as a component
of other components or products, then the computation of Net Sales shall be
calculated by multiplying actual Net Sales of such combination product by the
fraction A/(A+B) where: A is the invoice price of the Licensed Product contained
in the combination product if sold separately by AGIX, AGIX Affiliate or
Sublicensee, and B is the invoice price of any other active component or
components in the combination product if sold separately by AGIX, an Affiliate,
or Sublicensee. In the event that the Licensed Product is sold in the form of a
combination
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product containing one or more active ingredients other than the Licensed
Product and one or more such active ingredients are not sold separately, then
the above formula shall be modified such that A shall be the total cost to AGIX,
its Affiliate, or Sublicensee(s) of the Licensed Product and B shall be the
total cost to AGIX , its Affiliate, or Sublicensee of any other active component
or components in the combination.
N. "TERM OF THIS AGREEMENT" shall mean the period of time commencing on
the Effective Date and continuing on a Licensed-Product-by-Licensed-Product and
country-by-country basis until the later of: (a) the last claim of the last
Patent Right covering any License Product expires or is held to be invalid by
any court, agency, or competent authority within that country; and (b) ten (10)
years after the first commercial sale of a Licensed Product within that country.
O. "SUBLICENSE" shall mean any agreement with a third party, other than an
Affiliate of AGIX, granting such party rights under Patent Rights to develop,
make, have made, import, export, use, distribute, market, promote the sale of,
and sell Licensed Products or to use Related Technology or methods,
compositions, or assays claimed under Patent Rights.
P. "SUBLICENSEE" shall mean any third party with which AGIX executes a
Sublicense as provided in Paragraph II. D of this Agreement.
Q. "MEKK TECHNOLOGY" shall mean any and all patents, patent applications,
reagents, assays, data, inventions, or other discoveries, including specifically
and without limitation any/all of Patent Rights listed in Section I of
Attachment A, related to:
(i) the use or direct modulation of any MEKK molecule; or
(ii) the regulation of cytokine production in hematopoietic cells
lacking an ERK-dependent signaling pathway, by regulating an
MEKK/JNKK-contingent signaling pathway.
R. "CGRP TECHNOLOGY" shall mean any and all patents, patent applications,
reagents, assays, data, inventions, or other discoveries, including specifically
and without limitation any/all of Patent Rights listed in Section II of
Attachment A, related to the use of CGRP or the direct regulation of CGRP.
S. "IL-10 TECHNOLOGY" shall mean any and all patents, patent applications,
reagents, assays, data, inventions, or other discoveries, including specifically
and without limitation any/all of Patent Rights listed in Section III of
Attachment A, related to the inhibition of IL-10.
T. "CD40 TECHNOLOGY" shall mean any and all patents, patent applications,
reagents, assays, data, inventions, or other discoveries, including specifically
and without limitation any/all of Patent Rights listed in Section IV of
Attachment A, related to the regulation of CD40- or gp39-mediated signaling of
JNK or p38.
II. GRANT OF LICENSE
A. License. Subject to the terms and conditions of this Agreement, NJMRC
grants to AGIX, as of the Effective Date of this Agreement, an
Exclusive License under the Patent Rights and the Related Technology to
develop, make, have made, import, export, use, distribute, market,
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promote the sale of, and sell Licensed Products in the Licensed
Territory.
AGIX, at its sole discretion, may extend the rights and licenses
granted under this Agreement to Affiliates of AGIX provided that all
rights and obligations of AGIX hereunder are binding upon the
Affiliate, including payment of royalties by the Affiliates on sale of
Licensed Products to or on behalf of unaffiliated third parties.
B. Right of First Refusal. NJMRC shall notify AGIX within {*} of
identifying any Covered NJMRC Improvements. During the Term of
Agreement and for {*} thereafter, NJMRC grants to AGIX a Right of First
Refusal for; (i) any Covered NJMRC Improvements (Section I Paragraph
J(i)); and (ii) NJMRC's co-owned portion of Joint Improvements (Section
I, Paragraph F). Pursuant to this Right of First Refusal, AGIX shall
have an Exclusive Negotiation Period of {*} from the date that it
receives notification in writing of any Covered NJMRC Improvement(s),
or from the date that AGIX identifies any Joint Improvements to
finalize an exclusive license agreement for such Covered NJMRC
Improvements or NJMRC's co-owned portion of such Joint Improvements. If
AGIX and NJMRC do not finalize an exclusive license agreement during
the Exclusive Negotiation Period, NJMRC shall be free to enter into a
license with any third party, provided that the terms and conditions
for granting rights and license to such third party shall not be more
favorable to the third party than the terms and conditions last offered
to AGIX in the Exclusive Negotiation Period without first offering such
more favorable terms and conditions to AGIX for a {*} period for AGIX's
consideration and possible acceptance. If AGIX and NJMRC do not execute
a license agreement on those more favorable terms within said {*}
period, then NJMRC shall be free to execute a license with the third
party on those terms.
C. Sublicenses. AGIX, at its sole discretion, may grant Sublicenses of its
rights under this Agreement. AGIX shall provide NJMRC with complete
copies of any and all such Sublicenses within thirty (30) days of their
execution. AGIX shall remain responsible to NJMRC for the payment of
all Sublicense Fees due under this Agreement. Should AGIX dissolve or
cease to operate as a business, or if this Agreement is terminated by
NJMRC or AGIX in accordance with Article X of this Agreement, then any
such Sublicense shall, at the discretion of the Sublicensee, survive,
provided that: (a) the Sublicensee is not in default of any obligations
under their Sublicense, and (b) the Sublicensee assumes AGIX's
obligations under this Agreement, including obligations for the
milestone payments under Paragraph III D of this Agreement, and for
Royalties under Paragraph III E of this Agreement.
D. No Implied License. The license and rights granted in the Agreement
shall not be construed to confer any rights upon AGIX by implication,
estoppel, or otherwise as to any technology not specifically identified
in the Agreement, except as otherwise implied by law to the extent
necessary to practice the Patent Rights or Related Technology.
E. Government Rights. The licenses granted under this Agreement are
conditioned upon and subject to the U.S. Government Licenses, other
rights retained by the United States in inventions developed by
nonprofit institutions with the support of federal funds, and the
obligations of NJMRC with respect to such government licenses and
rights. Certain of these rights are set forth in 35 USCA 201 et seq.
and 37 CFR 401 et seq., which may be amended from time to time by the
Congress of the United States or through administrative procedures.
AGIX agrees it shall
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comply with all obligations related to government licenses and other
rights retained by the United States government, including compliance
with laws related to the development, manufacture, sale and
distribution of any Licensed Product hereunder.
F. Retained License. The licenses granted under this Section II are
further conditioned upon and subject to a right and license retained by
NJMRC on behalf of itself and NJMRC's academic research collaborators
to use Related Technology and compositions, methods, and assays claimed
under Patent Rights and NJMRC Improvements for research and educational
purposes only. NJMRC will also have the right to distribute the Related
Technology to academic researchers at other institutions, subject to
the execution of appropriate materials transfer agreements (MTAs) and
confidentiality disclosure agreements (CDAs) to be signed between NJMRC
and the receiving institutions. Such MTAs and CDAs shall prohibit the
academic research collaborators to use any Related Technology and/or
improvements thereof for any commercial intent or purpose and to
further distribute/transfer the Related Technology and/or Improvements.
Within 30 days of signing any MTA or CDA, NJMRC will send a copy of the
MTA or CDA to AGIX.
III. ROYALTIES AND OTHER PAYMENTS
A. License Fee. AGIX shall pay to NJMRC an initial License Fee in the
amount of {*}. This License Fee is due and payable within (10) days of
the Execution Date of this Agreement.
B. Patent Prosecution Reimbursement. AGIX shall reimburse and pay NJMRC
for all past costs, fees, and expenses (past costs, fees, and expenses
as of January 1, 2001 not to exceed {*}), incurred in connection with
the filing, prosecution, and maintenance of the Patent Rights. NJMRC
shall furnish to AGIX an itemized Debit Note for Patent Prosecution
Reimbursement, itemizing by patent/patent application and date all
costs, fees, and expenses incurred by NJMRC in connection with filing,
prosecution, and maintaining the Patent Rights. This Patent Prosecution
reimbursement shall be due and payable within 30 days of receipt by
AGIX of the itemized Debit Note.
C. Stock Warrants. AGIX shall grant to NJMRC Stock Warrants for 40,000
shares of AGIX regular stock, and will bear an exercise price equal to
the closing price of AGIX stock on the Effective Date of this
Agreement, unless that price {*}, as provided in Attachment C. These
Stock Warrants will have a 5-year vesting schedule, as per Attachment
C.
D. Milestone Payments. AGIX shall pay NJMRC milestone payments ("Milestone
Payments") in the amounts specified below for each and every Licensed
Product developed by AGIX as it proceeds through the regulatory process
in the U.S. or, alternatively, a foreign country (but not both for the
same Licensed Product), no later than thirty (30) days after the
occurrence of the event designated below triggering payment.
Event Milestone Payment
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(i) Filing Investigational New Drug Application (IND) {*}
(or its equivalent in a foreign country)
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(ii) Beginning of Phase II Clinical Trial {*}
(or its equivalent in a foreign country)
(iii) Filing a New Drug Application (NDA) {*}
(or its equivalent in a foreign country)
Should a Licensed Product be abandoned by AGIX for any reason following the
filing of an IND Application (or its equivalent in a foreign country) and should
one or more additional Licensed Products covered by the same technology ( that
is, MEKK Technology, CGRP Technology, IL10 Technology or CD40 Technology) for
the same therapeutic indication proceed into Clinical Trials (or its equivalent
in a foreign country), then AGIX shall not be required to pay milestone fees to
NRMRC for any milestones already achieved by the abandoned Licensed Product,
provided that milestone fees were paid to NJMRC for said abandoned Licensed
Product. AGIX shall resume Milestone Payments under this Paragraph for the new
"replacement" Licensed Product, beginning with achievement of the event
subsequent to the last event for which a Milestone Payment was paid to NJMRC for
the abandoned Licensed Product.
E. Royalties.
(i) If AGIX or its Affiliate sells Licensed Products to
non-affiliated third parties, AGIX shall pay NJMRC a royalty
equal to {*} of the Net Sales of Licensed Products in any
country as long as there is at least one valid claim in a
valid patent under the Patent Rights in that country covering
the Licensed Product.
(ii) If a Licensed Product is not covered by a valid claim in a
valid patent under the Patent Rights in a country, then AGIX
shall pay to NJMRC a reduced royalty of {*} of the Net Sales
of Licensed Products in that country for the use of the
Related Technology, unless and until a Competing Generic
Product is sold or offered for sale in that country.
(iii) If and when a Competing Generic Product is offered for sale in
a country in which a corresponding Licensed Product is not
covered by a valid claim in a valid patent under the Patent
Rights, AGIX shall have a royalty-free right to use the
Related Technology to make, use or sell that corresponding
Licensed Product in that country.
F. Third Party Licenses. In the event that AGIX's outside patent counsel
determines that patent licenses from third parties are required by
AGIX, its Affiliates, or its Sublicensees in order to discover,
develop, make, have made, import, export, use, distribute, promote,
market, offer for sale, or sell a Licensed Product, AGIX shall provide
NJMRC with written notice to that effect and AGIX shall be solely
responsible for acquiring such licenses at AGIX's sole discretion. If
the total combined amount of royalty percentage of Net Sales payable to
third parties and to NJMRC (including consideration of milestones and
other license fees) exceeds {*} of Net Sales of a Licensed Product,
AGIX may reduce any royalty otherwise due NJMRC hereunder by the amount
required to reimburse AGIX for royalties and/or license fees actually
paid to such third parties, provided that the amount of Royalty
Percentage of Net Sales paid to NJMRC shall not be less than {*} of Net
Sales of any Licensed Product for which Royalties are due under
Paragraph III-E.
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G. Sales or Other Transfers to an Internal Corporate Entity or an
Affiliated Entity. In no event shall Royalties be paid by AGIX on sales
or other transfers of any Licensed Product to an internal corporate
entity or Affiliate. Royalties are due only when Licensed Product is
sold to a third party unaffiliated with AGIX.
H. Sublicense Fees. In respect of any Sublicense granted by AGIX to a
third party under this Agreement, AGIX shall pay to NJMRC those
percentage amounts below-indicated of all license payments, milestone
payments, royalties, investments in AGIX equity (as provided in
Paragraph III-I, below), and equity or non-cash payments calculated
according to Paragraph III-J below made by the Sublicensee
(hereinafter, "Sublicensee Payments") thereunder in consideration for
the grant of such sublicense to it by AGIX:
(i) Sublicense Agreements executed in the First Year {*}
(ii) Sublicense Agreements executed in the Second Year {*}
(iii) Sublicense Agreements executed on or after the Third Year {*}
Any or all of the above Sublicense Fees may be reduced upon prior
mutual agreement, in writing, of both Parties.
I. Sublicensee Payments shall not include any bona fide research and
development funding or any payments received by AGIX from a Third Party
in exchange for issuance of shares of AGIX's capital stock or options
to purchase shares of AGIX's capital stock or other securities
convertible into or exercisable for shares of AGIX's capital stock,
provided that {*} of any such payments for stock or options in excess
of {*} for such stock or options at the time such stock is issued or
such options are granted shall be included in Sublicensee Payments if
the payments are part of an agreement for a third party related to
Sublicense of Patent Rights, Related Technology, or research or
development of Licensed Products.
J. Calculations Concerning Equity or Non-Cash Consideration.
(i) Divisible Consideration: In the event that equity or non-cash
consideration received by AGIX is readily divisible, then AGIX
shall pay to NJMRC the applicable percentage of equity or
non-cash consideration received by AGIX as specified in
Paragraph H of this Section.
(ii) Non-Divisible Consideration: In the event that equity or
non-cash payment received by AGIX is not readily divisible
(e.g. a royalty-free cross-license) or AGIX does not convert
the applicable percentage of readily divisible equity or
non-cash consideration, then AGIX shall pay to NJMRC the
applicable percentage of equity or non-cash consideration
received by AGIX as specified in Paragraph H of this Section
whenever non-cash consideration is converted to cash.
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IV. PRODUCT DEVELOPMENT
A. Research Program. AGIX, its Affiliate or a third party selected by AGIX
will conduct a research and discovery program dedicated to the
identification and development of Licensed Products developed using one
or more claims of the Licensed Products.
B. Product Development. AGIX, its Affiliate or a third party selected by
AGIX will be solely responsible for the selection and testing of
Licensed Products that it schedules to advance into IND Application in
the U.S., or equivalent development programs throughout the world.
AGIX, its Affiliate or a third party selected by AGIX, will be solely
responsible for the development of Licensed Products and for schedule
and content of all regulatory documents, filings, and meetings
regarding approvals to market Licensed Products in the Licensed
Territory.
C. Performance Milestones:
(i) If seven (7) years after the Effective Date, AGIX and/or its
Affiliate(s) or third party selected by AGIX has not either
filed an IND Application or equivalent in a foreign country,
or signed a sublicensing agreement sublicensing the rights
granted to AGIX herein for the MEKK Technology, then all
Patent Rights listed in section I of Attachment A and Related
Technology with respect to the MEKK Technology licensed to
AGIX by NJMRC will revert to NJMRC.
(ii) If five (5) years after the Effective Date, AGIX and/or its
Affiliate(s) or third party selected by AGIX has not either
filed an IND Application or equivalent event in a foreign
country, or signed a sublicensing agreement sublicensing the
rights granted to AGIX herein for the IL-10 Technology, then
all Patent Rights listed in section III of Attachment A and
Related Technology with respect to the IL-10 Technology
licensed to AGIX by NJMRC will revert to NJMRC.
(iii) If five (5) years after the execution of a subsequent mutual
agreement described in Article II, paragraph G, AGIX and/or
its Affiliate(s) or third party selected by AGIX has not
either filed an IND Application or equivalent event in a
foreign country, or signed a sublicensing agreement
sublicensing the rights granted to AGIX herein for the CD40
Technology, then all Patent Rights listed in section IV of
Attachment A and Related Technology with respect to the CD40
Technology licensed to AGIX by NJMRC will revert to NJMRC.
(iv) If four (4) years after the Effective Date, AGIX and or its
Affiliate or a third party selected by AGIX has not either
filed an IND Application or equivalent event in a foreign
country, or signed a sublicensing agreement sublicensing the
rights granted to AGIX herein for the CGRP Technology, then
all Patent Rights listed in section II of Attachment A and
Related Technology with respect to the CGRP Technology
licensed to AGIX by NJMRC will revert to NJMRC.
D. Formulation, Packaging, Marketing and Sales of Licensed Products. AGIX
or AGIX's Affiliate or a third party selected by AGIX will be solely
responsible for the formulation and
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packaging of Licensed Products for testing and commercialization in the
Licensed Territory. AGIX or a third party selected by AGIX will be
solely responsible for execution and costs of all marketing and sales
activities regarding Licensed Products.
V. INTELLECTUAL PROPERTY
A. Patent Prosecution. AGIX shall manage all patent prosecution
activities on the Patent Rights and patent applications on Joint
Improvements in consultation with NJMRC and take into account all
suggestions made by NJMRC including the addition of new claims. NJMRC
shall cooperate fully with AGIX in the preparation, filing and
prosecution of all patent applications pursuant to this Agreement,
which cooperation shall include, but not be limited to, execution by
NJMRC and its faculty and other employees of any and all such papers
and instruments as are necessary or helpful to AGIX in preparing,
filing and prosecuting such patent applications. All approved
out-of-pocket cost incurred for such cooperation will be reimbursed by
AGIX. AGIX shall diligently and in a timely manner provide NJMRC with
copies of all documents relating to the prosecution, maintenance, and
validity of the Patent Rights including but not limited to
correspondence with any patent office concerning the Patent Rights.
AGIX shall further provide an opportunity for NJMRC to comment upon
such correspondence and such comments shall be taken into account in
prosecution activities. AGIX shall consult with NJMRC in such
prosecution and maintenance, and shall diligently seek strong and broad
claims under the Patent Rights and shall not abandon prosecution of any
patent application or any of the claims of the Patent Rights without
first notifying NJMRC in a timely manner of AGIX's intention and reason
therefore, and providing NJMRC with a reasonable opportunity to assume
responsibility for the prosecution and maintenance of the Patent
Rights.
AGIX shall have the right but not the obligation to seek extensions of
the terms of Patent Rights. At AGIX's request, NJMRC shall either
authorize AGIX to act as NJMRC's agent for the purpose of making any
application for any extensions of the term of Patent Rights and provide
reasonable assistance therefor to AGIX or shall diligently seek to
obtain such extensions, in either event, at AGIX's expense.
If AGIX decides in any or all of the following major pharmaceutical
market countries (United States, Mexico, Canada, Brazil, Chile,
Argentina, Italy, Spain, France, Germany, United Kingdom, Greece,
Denmark, Sweden, Switzerland, Finland, Norway, Japan, Korea, Australia,
China) not to seek patent protection on and pay for any future costs,
fees and expenses associated with the filing and prosecution of patent
or patent application included in the Patent Rights, or if AGIX decides
to discontinue the financial support of the prosecution or maintenance
of any of patent or patent application included in the Patent Rights in
any or all of those major pharmaceutical market countries: (1) NJMRC
shall be free to file, prosecute or maintain any patents covering such
patent or patent application at its own expense, and (2) such patent or
patent application shall be excluded under the Exclusive License
granted under Section II of this Agreement. These NJMRC rights related
to patent filing, prosecution, and maintenance will be only for those
major pharmaceutical market countries where AGIX has no ongoing patent
filing, prosecution, and/or maintenance activities.
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B. Rights to AGIX Improvements. AGIX shall own all right, title and
interest in any AGIX Improvements. AGIX shall disclose, or cause to be
disclosed to NJMRC, in a timely manner, any and all AGIX Improvements
and shall make available and grant to NJMRC an irrevocable,
nonexclusive, royalty-free, nontransferable, non-sublicensable license
to use the AGIX Improvements throughout the world for educational and
research and development purposes only. At NJMRC's request, AGIX shall
make available or supply to NJMRC such information or data as is
necessary or convenient for the proper understanding or use of such
AGIX Improvements, which information NJMRC shall treat as Confidential
Information under the confidentiality provisions of this Agreement
unless and until NJMRC obtains written permission from AGIX to make
such information public. NJMRC shall not publish any information
concerning AGIX Improvements without prior express written approval
from AGIX.
C. Rights to Joint Improvements. AGIX and NJMRC will jointly own all Joint
Improvements.
D. Confidentiality. The Parties acknowledge that this Agreement may
require the disclosure of Confidential Information by either party to
the other party. The receiving party shall at all times regard and
preserve such Confidential Information of the disclosing party as
secret and confidential and shall not publish or disclose any of such
Confidential Information in any manner to any third party without the
prior written consent of the disclosing party , which consent may be
withheld for any or no reason whatsoever.
E. Publications. It is the intent of the parties to this Agreement that
NJMRC have the right to publish the findings of its researchers in
accordance with traditional principles of academic freedom, while
allowing for the protection of Confidential Information of AGIX and for
the filing of patents on new intellectual property. Therefore, any
manuscript, abstract, or presentation materials for which ▇▇▇▇▇ ▇▇▇▇▇▇▇
is the controlling author and which describes research affecting
MEKK-dependent signal transduction, CGRP, IL-10 antagonists, or
CD40-dependent MEKK signal transduction in B lymphocytes shall be
submitted to AGIX for review and comment not less than 30 days before
the manuscript, abstract, or presentation materials are submitted to
any journal or conference organizing body. NJMRC agrees to remove from
such materials any Confidential Information identified by AGIX.
Further, should AGIX decide to file a patent application (provisional
or otherwise) during the 30 day review and comment period, the
submission of manuscripts, abstracts or presentation materials shall,
at AGIX's request, be deferred for up to 60 days following the
expiration of the 30 day review and comment period or until AGIX has
filed its patent application(s), whichever is earlier.
F. Press Releases. AGIX shall provide NJMRC with an accurate copy of any
proposed press release which refer by name to NJMRC at least two
business days before scheduled release. NJMRC shall have the right to
review and approve or edit such proposed press releases which may, at
NJMRC's sole discretion, include the removal of any reference to NJMRC
or its employees, provided that NJMRC shall provide AGIX with either
its written approval or editorial changes within one business day of
receiving the proposed press release, and provided that such approval
shall not be unreasonably withheld.
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VI. PAYMENT TERMS
A. Reports: Payment of Royalty: Payment Exchange Rate and Currency
Conversions.
(i) Royalties Paid Quarterly. Within sixty (60) calendar days
following the close of each calendar quarter, following the
first commercial sale of a Licensed Product, AGIX shall
furnish to NJMRC a written report for the calendar quarter
showing the Net Sales of Licensed Product(s) sold by AGIX, its
Affiliates and its sublicensees in the Territory during such
calendar quarter and the Royalties and Sublicense Fees payable
under Paragraphs III-E, H and I of this Agreement for such
calendar quarter. Simultaneously with the submission of the
written report, AGIX shall pay to NJMRC, for the account of
AGIX or the applicable Affiliate or Sublicensee, as the case
may be, a sum equal to the aggregate Royalty and Sublicense
Fee, if any, due for such calendar quarter calculated in
accordance with this Agreement (reconciled for any previous
overpayments or underpayments),
(ii) Equity or Non-Cash Consideration. In the event that equity
consideration is received as Sublicense Fees by AGIX, then
AGIX will provide to NJMRC the applicable percentage of equity
consideration specified in Paragraph H of Section III within
thirty (30) days from the receipt of the equity by AGIX. In
the event that equity or non-cash payment received as
Sublicense Fees by AGIX is not readily divisible, then AGIX
will pay to NJMRC the applicable percentage of equity or
non-cash consideration as specified in Paragraph H of this
Section III within 30 days from the day when such equity or
non-cash consideration is converted to cash by AGIX.
(iii) Method of Payment. Payments to be made by AGIX to NJMRC under
this Agreement shall be paid by bank wire transfer in
immediately available funds to such bank account as is
designated in writing by NJMRC from time to time. AGIX shall
provide advance notice to NJMRC of the timing and amount of
such transfers so that NJMRC may efficiently ensure the
appropriate internal accounting for such funds. Royalties
shall be deemed payable by the entity making the Net Sales
from the country in which earned in local currency and subject
to foreign exchange regulations prevailing as of the date of
payment. Royalty payments shall be made in United States
dollars to the extent that free conversions to United States
dollars is permitted. The rate of exchange to be used in any
such conversion from the currency in the country where such
Net Sales are made shall be the rate of exchange used by AGIX
for reporting such sales for United States financial statement
purposes. If, due to restrictions or prohibitions imposed by
national or international authority, payments cannot be made
as set forth above, the Parties shall consult in good faith
with a view to finding a prompt and acceptable solution, and
AGIX will deal with such monies as NJMRC may lawfully direct
at no additional out-of pocket expense to AGIX.
Notwithstanding the foregoing, if royalties in any country
cannot be remitted to NJMRC for any reason within six (6)
months after the end of the Calendar Quarter during which they
are earned, then AGIX shall be obligated to deposit the
royalties in a bank account in such country in the name of
NJMRC.
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B. Maintenance of Records; Audits.
(i) Record Keeping by AGIX. AGIX and its Affiliates shall keep
complete and accurate records in sufficient detail to enable
the royalties payable hereunder to be determined. Upon
forty-five (45) days prior written notice from NJMRC, AGIX
shall permit an independent certified public accounting firm
of nationally recognized standing selected by NJMRC, at
NJMRC's expense, to have access during normal business hours
to examine pertinent books and records of AGIX and/or its
Affiliates as may be reasonably necessary to verify the
accuracy of the royalty reports hereunder. The examination
shall be limited to pertinent books and records for any year
ending not more than twenty four (24) months prior to the date
of such request. An examination under this Paragraph IV-B of
this Agreement shall not occur more than once in any calendar
year. AGIX may designate competitively sensitive information,
which such auditor may not disclose to NJMRC; provided
however, that such designation shall -------- ------- not
include the auditor's conclusions.
(ii) Limited Disclosure. The accounting firm shall disclose to
NJMRC only whether the royalty reports are correct or
incorrect and the specific details concerning any
discrepancies. No other information shall be provided to
NJMRC. All such accounting firms shall sign a confidentiality
agreement (in form and substance reasonably acceptable to
AGIX) as to any of AGIX's or its Affiliate's Confidential
Information which they are provided, or to which they have
access, while conducting any audit.
(iii) Underpayments/Overpayments. If such accounting firm correctly
concludes that additional royalties were owed during such
period, AGIX shall pay the additional royalties within thirty
(30) days of the date NJMRC delivers to AGIX such accounting
firm's written report so correctly concluding. If such
underpayment exceeds either: (a) five percent (5%), or (b)
$50,000 of the royalty correctly due to NJMRC, then the fees
charged by such accounting firm for the work associated with
the underpayment audit shall be paid by AGIX. Any overpayments
by AGIX will be credited against future royalty obligations.
(iv) Record Keeping by Sublicensees. AGIX shall include in each
Sublicense granted by it pursuant to this Agreement a
provision requiring the Sublicensee to make reports to AGIX,
to keep and maintain records of sales made pursuant to such
sublicensee and to grant access to such records by NJMRC's
independent accountant to the same extent required of AGIX
under this Agreement.
(v) Confidentiality of Financial Information. NJMRC shall treat
all financial information subject to review under this License
Agreement, or under any sublicensee agreement, as Confidential
Information in accordance with the confidentiality provisions
of this Agreement, and shall cause its accounting firm to
enter into an acceptable confidentiality agreement with AGIX
obligating it to retain all such financial information in
confidence pursuant to such confidentiality agreement.
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(vi) Binding Records. Upon the expiration of twenty-four (24)
months following the end of any Calendar Year, the calculation
of royalties payable under this Agreement with respect to such
year shall be binding and conclusive upon the Parties, and
AGIX, its Affiliates and its Sublicensee shall be released
from any liability or accountability with respect to royalties
for such Calendar Year.
C. Overdue Payments. All payments set forth in this Agreement shall, if
overdue, bear interest until payment at a per annum rate of two percent
(2%) above the prime interest rate in effect at the ▇▇▇▇▇ Fargo Bank
(Denver branch) on the due date, unless there is a good-faith dispute
between the Parties regarding whether any payment or amount is due or
payable. If there is a good-faith dispute between the Parties regarding
whether any payment or amount is due or payable, then no interest shall
accrue with respect to such disputed payment or amount until and unless
such disputed payment or amount is agreed by both Parties to be due and
payable, or until such disputed payment or amount is finally determined
to be due and payable pursuant to Article XX of this Agreement. The
payment of such interest shall not foreclose NJMRC from exercising any
other rights it may have as a consequence of the lateness of any
payment.
VII. PATENT LITIGATION
A. Defense. In the event of the institution of any suit by a third party
against NJMRC, AGIX or its sublicensees or distributors for patent
infringement involving the manufacture, use, sale, distribution or
marketing of Licensed Products anywhere in the Territory, the Party
sued shall promptly notify the other Party in writing. AGIX shall have
the right, but not the obligation, to defend such suit at its own
expense. NJMRC and AGIX shall assist one another and cooperate in any
such litigation at the other's request, at the expense of the
requesting Party.
B. Right to Take Action. In the event that NJMRC or AGIX becomes aware of
actual or threatened infringement of any Patent Rights anywhere in the
Licensed Territory, that Party shall promptly notify the other Party in
writing. AGIX shall have the first right, but not the obligation, to
bring, at its sole expense with no expense to NJMRC, an infringement
action against any third party. AGIX can use NJMRC's name in connection
therewith and to name NJMRC as a party thereto if necessary. If AGIX
does not commence a particular infringement action within ninety (90)
days of receipt of the notice of infringement, then NJMRC, after
notifying AGIX in writing, shall be entitled to bring such infringement
action at its own expense. The Party conducting such action shall have
full control over its conduct, including settlement of the infringement
action. In any event, NJMRC and AGIX shall assist one another and
cooperate in any such litigation at the other's request at the expense
of the requesting Party.
C. Recovery. NJMRC and AGIX shall recover their respective actual and
reasonable out-of-pocket expenses, or equitable proportions thereof,
associated with any litigation or settlement of the infringement action
from any recovery made by any Party. Any excess amount shall be shared
equally between AGIX and NJMRC, provided in no event shall NJMRC's
share of the excess amount exceed the royalties which would otherwise
be due NJMRC under this Agreement.
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D. Cooperation. The Parties shall keep one another informed of the status
of and of their respective activities regarding any litigation or
settlement of any infringement action concerning Licensed Products or
Patent Rights.
E. Royalty Payment Reductions During Litigation.
(i) In the event that a third party sues AGIX, its Affiliate, or
its Sublicensee, in any court or agency, alleging that any action such
as manufacture, use, sale, offer for sale, exportation, importation,
marketing, or promotion of a Licensed Product infringes or will
infringe the third party's patents anywhere in the Licensed Territory,
and provided that the complaint of said third party specifically
alleges in writing that the practice of Patent Rights or Related
Technology constituted or otherwise directly caused such alleged
infringement, then, during the pendency of such litigation, AGIX and
its Affiliate may withhold royalty payments and sublicense fees which
it pays to NJMRC under Section III of this Agreement to cover costs and
expenses associated with such litigation, including specifically and
without limitations, any and all attorney's fees, court costs, expert
witness fees, and travel costs. In no case shall the amount withheld be
more than 50% of the royalties and sublicense fees specified under
Section III.
AGIX shall deposit all such withheld royalty payments and sublicense
fees under this subparagraph (i) into an interest-bearing escrow
account pending the final resolution of such litigation. In the event
that a court of competent jurisdiction finally determines that AGIX',
its Affiliate's, or its Sublicensee's manufacture, use, sale, offer for
sale, exportation, importation, marketing, or promotion of a Licensed
Product infringes, or will infringe, the third party's patents anywhere
in the Licensed Territory, where such infringement is based on the use
of Patent Rights or Related Technology, then all moneys in the escrow
account at the time of such final determination shall belong to
and shall be promptly refunded to AGIX or its Affiliate. Otherwise,
upon a final resolution of the litigation, all moneys in the escrow
account shall belong to and shall be promptly paid to NJMRC.
(ii) In the event that AGIX or its Affiliate, brings any
infringement action against any third party, in any court or agency,
alleging that that the third party's manufacture, use, sale, offer for
sale, exportation, importation, marketing, or promotion of any method
of product infringes or will infringe the Licensed Patents anywhere in
the Licensed Territory, then, during the pendency of such litigation,
AGIX and its Affiliate may withhold royalty payments and sublicense
fees which it pays to NJMRC under Section III of this Agreement to
cover costs and expenses associated with such litigation, including
specifically and without limitations, any and all attorney's fees,
court costs, expert witness fees, and travel costs. In no case shall
the amount withheld be more than 50% of the royalties and sublicense
fees specified under Section III.
AGIX shall deposit all such withheld royalty payments and sublicense
fees under this subparagraph (ii) into an interest-bearing escrow
account pending the final resolution of such litigation. In the event
that a court of competent jurisdiction finally determines that the
third party's manufacture, use, sale, offer for sale, exportation,
importation, marketing, or promotion of any method of product infringes
or will infringe any valid Licensed Patent anywhere in the Licensed
Territory, then the moneys in the escrow account shall be belong to
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and shall be promptly paid to AGIX or its Affiliate, except for an
offset amount equal to any damages awarded to and collected by AGIX or
its Affiliate, which offset amount (not to exceed the total amount of
moneys in the escrow account) shall be paid to NJMRC. In the event that
a court of competent jurisdiction finally determines that the third
party does not infringe any valid Licensed Patent anywhere in the
Licensed Territory, then all moneys in the escrow account shall belong
to and shall be promptly paid to AGIX or its Affiliate.
VIII. WARRANTIES AND REPRESENTATIONS
A. Warranty of Title. NJMRC warrants and represents that, as of the
Effective Date, it owns the entire right, title and interest in the
Patent Rights, and Related Technology provided to AGIX under this
Agreement, and that it otherwise has the right to enter into this
Agreement. NJMRC further warrants and represents that it will not
encumber any such Patent Rights and Related Technology with liens,
mortgages, security interests or otherwise. NJMRC further warrants that
any employee who worked on the inventions disclosed and claimed in the
Patent Rights or Related Technology was under an obligation to assign
his or her entire right, title and interest in any and all inventions
to NJMRC. NJMRC further warrants and represents that there is nothing
in any third party agreement NJMRC has entered into as of the Effective
Date which, in any way, will limit NJMRC's ability to perform all of
the obligations undertaken by NJMRC hereunder, and that it will not
enter into any agreement after the Effective Date under which NJMRC
would incur any such limitations.
B. Warranty of Rights Granted. NJMRC warrants and represents that, as of
the Effective Date, no other person or organization presently has any
effective assignment, option, license, sublicense or any other similar
rights granted directly or indirectly by NJMRC under Patent Rights or
Related Technology to the extent that such relate to the making, having
made, use, marketing, distributing or sale of Licensed Product within
the Territory which would affect AGIX's rights and licenses to Patent
Rights and Related Technology granted under this Agreement, except as
may otherwise be permitted by this Agreement.
C. Warranty of Complete Rights. NJMRC warrants and represents that, to the
best of its knowledge, the Patent Rights and the Related Technology of
Attachment B represent all of the rights and intellectual property
which it owns or controls pertaining to MEKK Technology, CGRP
Technology, IL-10 Technology, and CD40 technology as of the Effective
Date, and further covenants that should it discover any additional
rights or intellectual property pertaining to these Patent Rights which
it owned or controlled as of the Effective Date, it shall promptly
notify AGIX of such rights or intellectual property and cause the same
to be included and incorporated into the Patent Rights and Related
Technology licensed to AGIX under this Agreement without any additional
consideration required by AGIX.
D. Except as expressly set forth in this Agreement, NJMRC, ITS TRUSTEES,
DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO REPRESENTATIONS
AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, VALIDITY OR PATENTABILITY OF ANY
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CLAIMS UNDER PATENT RIGHT(S) -, WHETHER ISSUED OR PENDING, AND THE
ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE.
NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE
OR WARRANTY GIVEN BY NJMRC THAT THE PRACTICE BY AGIX OF THE LICENSE
GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD
PARTY. IN NO EVENT SHALL NJMRC, ITS TRUSTEES, DIRECTORS, OFFICERS,
EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL
DAMAGES OF ANY KIND RESULTING FROM AGIX'S EXERCISE OF THE RIGHTS
GRANTED HEREIN, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND
LOST PROFITS, REGARDLESS OF WHETHER NJMRC SHALL BE ADVISED, SHALL HAVE
OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.
E. AGIX represents and warrants to NJMRC that:
(i) The execution, delivery and performance of this Agreement by
AGIX does not conflict with any agreement, instrument or understanding,
oral or written, to which it is a party or by which it may be bound.
AGIX is not currently a party to, and during the Term of this Agreement
will not enter into any agreements, oral or written, that are
inconsistent with its obligations under this Agreement.
(ii) AGIX is validly existing and in good standing under the laws
of the country of its incorporation and has the corporate power and
authority to enter into this Agreement. This Agreement has been duly
executed and delivered by AGIX and constitutes the valid and binding
obligation of AGIX, enforceable against it in accordance with the
terms. The execution, delivery and performance of this Agreement have
been duly authorized by all necessary action on the part of AGIX, its
officers and directors.
F. NJMRC represents and warrants to AGIX that:
(i) To the best of its knowledge, the execution, delivery and
performance of this Agreement by NJMRC does not conflict with any
agreement, instrument or understanding, oral or written, to which it is
a party or by which it may be bound. NJMRC is not currently a party to,
and during the Term of this Agreement will not enter into any
agreements, oral or written, that are inconsistent with its obligations
under this Agreement.
(ii) NJMRC is validly existing and in good standing under the laws
of the country of its incorporation and has the corporate power and
authority to enter into this Agreement. This Agreement has been duly
executed and delivered by NJMRC and constitutes the valid and binding
obligation of NJMRC, enforceable against it in accordance with the
terms. The execution, delivery and performance of this Agreement have
been duly authorized by all necessary action on the part of NJMRC, its
officers and directors.
G. Notwithstanding any other representation or warranty of NJMRC under
this Agreement, NJRMC and AGIX acknowledge that NJMRC may have
obligations to the third parties under certain agreements existing as
of the Effective Date that may or may not take
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precedence over the rights in CD40 Technology, including U.S. Patent
No. 6,132,978 and {*}, granted to AGIX by NJMRC hereunder.
IX. INDEMNIFICATION
A. AGIX agrees to indemnify, hold harmless, and defend NJMRC against any
and all claims for death, illness, personal injury, property damage,
patent infringement, and improper business practices arising out of
AGIX'S exercise of its rights under this Agreement, including the
manufacture, use, sale, or other disposition of Patent Rights or
Licensed Products by AGIX or its Affiliates, Sublicensees, or
customers, except where such claims are due to NJMRC's gross negligence
or willful misconduct. Upon receipt of any notice, demand, or service
of process involving any of the matters for which AGIX has agreed to
hold NJMRC harmless, NJMRC shall promptly notify AGIX in writing of
same. AGIX, at its election, shall have the right to take over or
participate in the defense of any claim to which its indemnity
attaches.
B. AGIX shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
C. AGIX shall obtain and carry in full force and effect commercial product
liability insurance which shall protect AGIX and NJMRC with respect to
events covered in Paragraph IX.A. Such insurance shall be written by a
reputable insurance company and shall require thirty (30) days written
notice to be given to NJMRC prior to any cancellation or material
change thereof. The limits of such insurance shall be such amounts as
are customary in the industry. AGIX shall provide NJMRC, upon its
request, with Certificates of Insurance evidencing the foregoing.
X. TERMINATION
A. With a 90 day prior written notice, AGIX may terminate this Agreement
anytime with or without cause, solely at its own discretion. Should
AGIX exercise this termination option, then all rights related to
Patent Rights and Related Technology will revert to NJMRC. Any Stock
Warrants unvested at the date of termination according to the schedule
in Attachment C will expire.
B. Either Party may terminate this entire Agreement (a) for breach by the
other Party, upon sixty (60) days' prior notice to the breaching Party
of such breach, provided the breach is not cured within such sixty (60)
day period, or (b) upon fifteen (15) days' prior written notice, if the
other Party becomes insolvent ceases to conduct its business or a
receiver is appointed for its business or properties, or if a petition
is filed by or against such Party under any provisions of any
bankruptcy, insolvency or similar laws.
C. Termination of this Agreement shall not relieve AGIX of its obligations
to (i) pay NJMRC Royalties and Consideration for Related Technology due
and unpaid at the time of termination, (ii) make available its books
and records for inspection and/or audit by a certified accounting firm
selected by NJMRC, and (iii) retain in confidence all Confidential
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Information for a period of three (3) years following termination of
this Agreement except as otherwise provided in this Agreement.
D. Any termination of this Agreement under this Section X shall be without
prejudice as to any right of either Party under this Agreement with
respect to any obligation of the other Party which has accrued on or
prior to the effective date of such termination.
XI. FORCE MAJUERE
If the performance of any part of this Agreement by either Party, or of any
obligation under this Agreement, is prevented, restricted, interfered with or
delayed by reason of any cause beyond the reasonable control of the Party liable
to perform, unless conclusive evidence to the contrary is provided, the Party so
affected shall, upon giving written notice to the other Party, be excused from
such performance to the extent of such prevention, restriction, interference or
delay, provided that the affected Party shall use its reasonable best efforts to
avoid or remove such causes of non-performance and shall continue performance
with the utmost dispatch whenever such causes are removed. When such
circumstances arise, the Parties shall discuss what, if any, modification of the
terms of this Agreement may be required in order to arrive at an equitable
solution.
XII. GOVERNING LAW
This Agreement shall be deemed to have been made in the State of Georgia, U.S.A.
and its form, execution, validity, construction and effect shall be determined
in accordance with the laws of the State of Georgia, U.S.A.
XIII. WAIVER OF BREACH
The failure of either Party at any time or times to require performance of any
provision of this Agreement shall in no manner affect its rights at a later time
to enforce the same. No waiver by either Party of any condition or term in any
one or more instances shall be construed as a further or continuing waiver of
such condition or term or of another condition or term.
XIV. SEPARABILITY
In the event any portion of this Agreement shall be held illegal, void or
ineffective, the remaining portions of this Agreement shall remain in full force
and effect.
If any of the terms or provisions of this Agreement are in conflict with any
applicable statute or rule of law, then such terms or provisions shall be deemed
inoperative to the extent that they may conflict therewith and shall be deemed
to be modified to conform to such statute or rule of law.
In the event that the terms and conditions of this Agreement are materially
altered as a result of this Section XIII of this Agreement, the Parties will
renegotiate the terms and conditions of this Agreement to resolve any
inequities.
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XV. ENTIRE AGREEMENT
This Agreement, entered into as of the date written above, constitutes the
entire agreement between the Parties relating to the subject matter of this
Agreement and supersedes all previous writings and understandings. No terms or
provisions of this Agreement shall be varied or modified by any prior or
subsequent statement, conduct or act of either of the Parties, except that the
Parties may amend this Agreement by written instruments specifically referring
to and executed in the same manner as this Agreement. The captions and section
numbers used in this Agreement are inserted only as a matter of convenience and
do not define, limit, explain or modify the scope or intent of such sections or
otherwise affect this Agreement.
XVI. Notices
Any notice, consent or approval permitted or required under this Agreement shall
be in writing, shall specifically refer to this Agreement, and shall be
effective on receipt, as evidenced in writing, when given by registered airmail
or certified mail, postage prepaid, or overnight courier, and addressed, unless
otherwise specified in writing, to the addresses of the Parties described below:
For NJMRC: Manager of Intellectual Property and Technology
Commercialization
National Jewish Medical and Research Center
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇.
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
with a copy to the Executive Vice President and Chief Administrative Officer at
NJMRC at the same address.
For AGIX: Vice President of Business & Corporate Development
AtheroGenics, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
with a copy to: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇, Esq.
Long ▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
XVII. ASSIGNMENT
This Agreement and the licenses herein granted shall be binding upon and inure
to the benefit of the successors in interest of the respective Parties. Neither
this Agreement nor any interest hereunder shall be assignable by either Party
without the written consent of the other Party, except that (i) in the event of
the sale or transfer by other means any or all of AGIX's entire business in the
Licensed Field to another owner, or the reorganization of AGIX into another
entity having the same or similar function, or transfer of some or all of the
rights hereunder to an Affiliate, or joint venture, no such consent is required
and all rights and obligations of this
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Agreement shall accrue to the new owner or entity, and (ii) NJMRC may assign its
rights to receive royalties without such consent.
XVIII. RECORDING
AGIX shall have the right, at any time, to record, register, or otherwise notify
this Agreement in appropriate governmental or regulatory offices anywhere in the
Territory, and NJMRC shall provide reasonable assistance to AGIX in effecting
such recording, registering or notifying.
XIX. MISCELLANEOUS
A. NJMRC does not grant to AGIX and shall not grant to any third Party the
right, license or privilege to use NJMRC's name and likeness worldwide on or in
connection with the marketing and sale of the Licensed Products or as a
trademark thereon. AGIX shall have the right to market and advertise the
Licensed Products under AGIX's name, trademarks, trade names, labels and other
designations which shall remain and be the sole property of AGIX.
B. To protect the Patent Rights, NJMRC and AGIX shall include a reference
in all publications or product literature covered by Patent Rights mentioning
that those products are covered by pending or issued patents.
C. The rights and privileges granted hereunder to the parties shall inure
to the benefit of the parties and their Affiliates.
D. No modification or waiver of any portion of this Agreement shall be
made without the written consent of both Parties unless such portion is in
violation of any laws.
E. This Agreement shall not be construed as creating the relationship of
master and servant, principal and agent, or a co-partnership or joint venture
between the parties.
XX. ARBITRATION
All disputes under this Agreement shall be submitted to an arbitration panel of
three by either Party, and if so submitted by either Party, shall be finally
settled by arbitration conducted in accordance with the applicable rules of the
American Arbitration Association in effect on the date of this Agreement. Such
arbitration shall take place at a location to be mutually agreed to by the
Parties. The arbitrator shall have substantial experience in the drafting and
negotiation of license and technology agreements, and shall apply the laws of
the State of Georgia. The decision by the arbitrator shall be binding and
conclusive upon the Parties, their successors, and assigns and they shall comply
with such decision in good faith, and each Party hereby submits itself to the
jurisdiction of the courts of the place where the arbitration is held, but only
for the entry of judgment with respect to the decision of the arbitrator
hereunder. Notwithstanding the foregoing, judgment upon the award may be entered
in any court where the arbitration takes place, or any court having
jurisdiction. The Parties shall bear the costs of arbitration equally.
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XXI. EXECUTION IN COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original but all of which together shall constitute one and
the same instrument.
THE PARTIES, THROUGH THEIR AUTHORIZED OFFICERS, HAVE EXECUTED THIS AGREEMENT AS
OF THE DATE THE LAST REQUIRED SIGNATURE IS OBTAINED:
NATIONAL JEWISH MEDICAL RESEARCH CENTER ATHEROGENICS, INC.
BY: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇ BY: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
------------------------ -----------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇, M.D. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, M.D., Ph.D.
TITLE: Executive VP for TITLE: President & Chief
Academic Affairs Executive Officer
DATE: 22 June 2001 DATE: 26 June 2001
------------------------ -----------------------------
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ATTACHMENT A
PATENTS AND PATENT APPLICATIONS
I. MEKK
- Patent # 5,405,941, "MEKK Protein, Capable of Phosphorylating MEK"
- Patent # 5,753,446, "Mitogen ERK Kinase Kinase (MEKK) Assay"
- Patent # 5,854,043, "MEKK-Related Signal Transduction Kinases"
- Patent # 5,910,417, "Regulation of Cytokine Production in a Hematopoietic
Cell"
- Patent # 5,981,265, "Methods for Regulating MEKK Protein Activity
- Patent # 6,074,861, "MEKK Proteins"
- {*}
- {*}
- {*}
- {*}
- {*}
- {*}
- {*}
II. CGRP
- {*}
III. IL-10
- {*}
IV. CD-40
- Patent # 6,132,978, "Method to Regulate CD40 Signaling"
- {*}
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ATTACHMENT B
RELATED TECHNOLOGY
All genetic constructs and cellular and animal research tools and reagents
developed by or under the direction of ▇▇▇▇ ▇▇▇▇▇▇▇, Ph.D. during his employment
at NJMRC from 01SEPT88 through 01FEB00:
(1) directly relating to the research and development of products related
to Patent Rights; and
(2) containing modifications of genetic elements (including either
deletions or additions) claimed in Patent Rights.
Related Technology shall specifically include:
- ES cell knockouts and knockout mice with deletions to MEKK1, 2, or 3
- Plasmids containing sequences that encode MEKK1, 2, 3, or 4.
- Transgenic cells and mice over-expressing MEKK 1, 2, 3, or 4.
Related technology shall also include data and information generated using the
above research tools and reagents to the extent such data and information is
necessary or desired for the manufacture, use, importation, offer for sale or
sale, sublicense of any compounds, products, targets, or technology claimed or
described under Patent Rights.
* * *
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Attachment C
Stock Warrant Pricing & Vesting
NJMRC will receive a stock Warrant grant of 40,000 shares on the Effective Date
of the Agreement. The exercise price will equal the closing price of the stock
on the Effective Date. If AGIX stock price {*} on the Effective Date, NJMRC will
have the right to renegotiate the Warrant grant. One-fifth (8,000 shares) of the
Warrants shall vest on each anniversary of the Effective Date for 5 years.
Should AGIX terminate the Agreement, any unvested Warrants at date of
termination will expire. Should AGIX terminate the agreement during any year, a
prorata number of the next year's Warrants will vest based on the following
fraction: the numerator shall be the number of full months since the previous
anniversary of the Effective Date and the denominator shall be 12.
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