EXHIBIT 10.6
CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL TREATMENT REQUESTED UNDER RULE 24(b)(2) OF THE SECURITIES AND
EXCHANGE ACT OF 1934. CONFIDENTIAL TREATMENT REQUESTED IS REQUESTED AND IS NOTED
WITH "[CONFIDENTIAL TREATMENT REQUESTED]." AN UNREDACTED VERSION OF THIS
DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
PATENT AND KNOW-HOW
ASSIGNMENT AND LICENSE
AGREEMENT
BY AND AMONG
DE MONTFORT UNIVERSITY
AND
SOMANTA LIMITED
CONFIDENTIAL TREATMENT REQUESTED
Patent and know-how assignment and licence agreement
THIS AGREEMENT dated March 20, 2003 is between:
(1) DE MONTFORT UNIVERSITY ("De Montfort University") incorporated as an
independent higher education corporation under the 1988 Education
Reform Act and the Further and Higher Education ▇▇▇ ▇▇▇▇ whose
principal address is ▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇; and
(2) SOMANTIS LIMITED ("Somantis") a company incorporated in England and
Wales whose registered office is at ▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇.
RECITALS:
▇. ▇▇ ▇▇▇▇▇▇▇▇ University is the exclusive owner of the Patents and
possesses related Know-how.
▇. ▇▇ ▇▇▇▇▇▇▇▇ University is willing to grant to Somantis and Somantis is
willing to accept, an assignment of the Patents and a licence to use
the Know-how, in accordance with the provisions of this Agreement.
IT IS AGREED as follows:
1. Definitions
In this Agreement, the following words shall have the following meanings:
Affiliate In relation to a Party, means any entity or person which
controls, is controlled by, or is under common control
with that Party. For the purposes of this definition,
"control" shall mean direct or indirect beneficial
ownership of 50% (or, outside a Party's home territory,
such lesser percentage as is the maximum, permitted level
of foreign investment) or more of the share capital, stock
or other participating interest carrying the right to vote
or to distribution of profits of that entity or person, as
the case may be.
Agreement Year A period of 365 days from and including the Commencement
Date, or from and including any anniversary of the
Commencement Date or, in respect of any such period that
includes a 29th February, 366 days.
Commencement Date Such date, if any, as may be notified by Somantis to
De Montfort University in accordance with the provisions
of clause 8.1.
Field The treatment of cancer.
CONFIDENTIAL TREATMENT REQUESTED
Parties De Montfort University and Somantis, and "Party" shall
mean either of them.
Patents Any and all of the patents and patent applications
referred to in Schedule 1, including any continuations,
continuations in part, extensions, reissues, divisions,
and any patents, supplementary protection certificates and
similar rights that are based on or derive priority from
the foregoing.
Royalty-bearing Any and all products in the Field that are manufactured,
Products sold or otherwise supplied by Somantis and are within any
Valid Claim of the Patents.
Territory The World.
Valid Claim A claim of a patent or patent application that has not
expired or been held invalid or unenforceable by a court
of competent jurisdiction in a final and non-appealable
judgment.
2. Grant of rights
2.1 Assignment and Licence. On the Commencement Date subject to the
provisions of this Agreement, De Montfort University hereby:
(a) Agrees to assign the Patents to Somantis; and
(b) Grants Somantis an exclusive licence in the Field to use the
Know-how, with the right to sub-license, to develop,
manufacture, have manufactured, use and sell Royalty-bearing
Products in the Field in the Territory.
2.2 Formal assignments and licences. The Parties shall execute such formal
assignments and licences as may be necessary or appropriate for
registration with Patent Offices and other relevant authorities in
particular territories; and in any event, at Somantis' request, De
Montfort University shall execute an assignment in the form set out in
Schedule 3. In the event of any conflict in meaning between any such
assignment or licence and the provisions of this Agreement, the
provisions of this Agreement shall prevail wherever possible. Prior to
the execution of the formal assignment(s) and licence(s) (if any)
referred to above, the Parties shall so far as possible have the same
rights and obligations towards one another as if such assignment(s) and
licence(s) had been granted. The Parties shall use reasonable
endeavours to ensure that, to the extent permitted by relevant
authorities, this Agreement shall not form part of any public record.
2.3 Reservation of rights. De Montfort University reserves the
non-exclusive right for itself, to use the Know-how and the Patents in
CONFIDENTIAL TREATMENT REQUESTED
the Field for the purposes of academic, non-commercial research,
subject to the confidentiality provisions set out in clause 3 below.
3. Know-how and Confidential Information
3.1 Provision of Know-how. Upon Somantis's reasonable request, De Montfort
University shall supply Somantis with all Know-how in its possession
that De Montfort University is at liberty to disclose and has not
previously been disclosed and which is reasonable necessary or
desirable to enable Somantis to undertake the further development of
the Royalty-bearing Products. The Know-how shall be subject to the
confidentiality provisions of Clause 3.4 and De Montfort University
shall be bound by such provisions as if the Know-how had been developed
by Somantis and disclosed to De Montfort University hereunder. If it is
agreed that any representative of De Montfort University shall travel
to Somantis's premises in connection with such supply, Somantis shall
reimburse all travel (at business class rates), accommodation and
subsistence costs incurred.
3.2 Status of Know-how. Somantis acknowledges that the Know-how is at an
early stage of development. Accordingly, specific results cannot be
guaranteed and any results, materials, information or other items
(together "Delivered Items") provided under this Agreement are provided
"as is" and without any express or implied warranties, representations
or undertakings. As examples, but without limiting the foregoing, De
Montfort University does not give any warranty that Delivered Items are
of merchantable or satisfactory quality, are fit for any particular
purpose, comply with any sample or description, or are viable,
uncontaminated, safe or non-toxic.
3.3 Responsibility for development of Royalty-bearing Products. Somantis
shall be exclusively responsible for the technical and commercial
development and manufacture of Royalty-bearing Products and for
incorporating any modifications or developments thereto that may be
necessary or desirable and for all Royalty-bearing Products sold or
supplied, and accordingly Somantis shall indemnify De Montfort
University in the terms of Clause 7.3.
3.4 Confidentiality obligations. Each Party ("Receiving Party") undertakes:
(a) to maintain as secret and confidential all Know-how and other
technical or commercial information obtained directly or
indirectly from the other Party ("Disclosing Party") in the
course of or in anticipation of this Agreement and to respect
the Disclosing Party's rights therein,
(b) to use the same exclusively for the purposes of this
Agreement, and
(c) to disclose the same only to those of its employees,
contractors and licensees or sublicensees pursuant to this
Agreement (if any) to whom and to the extent that such
disclosure is reasonably necessary for the purposes of this
Agreement.
3.5 Exceptions to obligations. The provisions of Clause 3.4 shall not apply
to Know-how and other information which the Receiving Party can
demonstrate by reasonable, written evidence:
CONFIDENTIAL TREATMENT REQUESTED
(a) was, prior to its receipt by the Receiving Party from the
Disclosing Party, in the possession of the Receiving Party and
at its free disposal; or
(b) is subsequently disclosed to the Receiving Party without any
obligations of confidence by a third party who has not derived
it directly or indirectly from the Disclosing Party; or
(c) is or becomes generally available to the public through no act
or default of the Receiving Party or its agents, employees,
Affiliates or licensees or sub-licensees; or
(d) the Receiving Party is required to disclose to the courts of
any competent jurisdiction, or to any government regulatory
agency or financial authority, provided that the Receiving
Party shall (i) inform the Disclosing Party as soon as is
reasonably practicable, and (ii) at the Disclosing Party's
request seek to persuade the court, agency or authority to
have the information treated in a confidential manner, where
this is possible under the court, agency or authority's
procedures; or
(e) in the case of information disclosed by De Montfort University
to Somantis, is disclosed to actual or potential customers for
Royalty-bearing Products in so far as such disclosure is
reasonably necessary to promote the sale or use of
Royalty-bearing Products, provided that the customers sign a
written confidentiality undertaking at least as restrictive as
Clauses 3.4 and 3.5.
3.6 Disclosure to employees. The Receiving Party shall procure that all of
its employees, contractors and licensees or sub-licensees pursuant to
this Agreement (if any) who have access to any of the Disclosing
Party's information to which Clause 3.4 applies, shall be made aware of
and subject to these obligations and shall have entered into written
undertakings of confidentiality at least as restrictive as Clauses 3.4
and 3.5 and which apply to the Disclosing Party's information.
4. Payments
4.1 Initial consideration. Within 30 days of the Commencement Date,
Somantis shall:
(a) pay De Montfort University the non-refundable, non-deductible
sum of [CONFIDENTIAL TREATMENT REQUESTED]; and
(b) pay De Montfort University an amount equal to those costs
incurred by De Montfort University in entering the
national/regional phase of the prosecution of the Patent
together with all other costs incurred in the prosecution of
the Patent between the date of this Agreement and the
Commencement Date.
4.2 Somantis shall pay De Montfort University [CONFIDENTIAL TREATMENT
REQUESTED] on the first successful completion of Phase I clinical
trials of any of the Royalty-bearing Products (defined as a formal
decision by Somantis or its licensee to commence Phase II trials).
CONFIDENTIAL TREATMENT REQUESTED
4.3 Somantis shall pay De Montfort University [CONFIDENTIAL TREATMENT
REQUESTED] on the first successful completion of Phase II and III
trials (defined as the completion of preparation of a dossier to allow
a formal application for an NDA in the USA, or MAA in the European
Union, to be made) of any of the Royalty-bearing Products.
4.4 Within 60 days of the date of this Agreement, Somantis shall issue to
De Montfort University at nominal cost [CONFIDENTIAL TREATMENT
REQUESTED] such number of fully paid-up ordinary shares in Somantis Ltd
as represents [CONFIDENTIAL TREATMENT REQUESTED] of the authorised
share capital of Somantis at the date of such issue. At the date of
this Agreement, the authorised share capital of Somantis is 100 million
shares each of 0.1p par value.
4.5 All sums due under this Agreement:-
(a) are exclusive of Value Added Tax which where applicable will
be paid by Somantis to De Montfort University in addition;
(b) shall be paid in pounds sterling by cheque or direct credit
transfer made payable to:
De Montfort University
Account No ▇▇▇▇▇▇▇▇
Sort Code 60:60:06
National Westminster Bank Plc
Leicester City Branch
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(c) shall be made without deduction of income tax or other taxes
charges or duties that may be imposed, except insofar as
Somantis is required to deduct the same to comply with
applicable laws. The Parties shall cooperate and take all
steps reasonably and lawfully available to them, at the
expense of De Montfort University, to avoid deducting such
taxes and to obtain double taxation relief. If Somantis is
required to make any such deduction it shall provide De
Montfort University with such certificates or other documents
as it can reasonably obtain to enable De Montfort University
to obtain appropriate relief from double taxation of the
payment in question; and
(d) shall be made by the due date, failing which De Montfort
University may charge interest on any outstanding amount on a
daily basis at a rate equivalent to [CONFIDENTIAL TREATMENT
REQUESTED] above the National Westminster Bank plc base
lending rate then in force.
CONFIDENTIAL TREATMENT REQUESTED
4.7 Records
4.7.1 Somantis shall keep at its normal place of business detailed and up to
date records and accounts showing the stage of development of
Royalty-bearing Products and the quantity, description and value of
Royalty-bearing Products sold by it, and the amount of sublicensing
revenues received by it in respect of Royalty-bearing Products, on a
country by country basis, and being sufficient to ascertain any
payments due under this Agreement.
4.7.2 Somantis shall make such records and accounts available, on reasonable
notice, for inspection during business hours by an independent
chartered accountant nominated by De Montfort University for the
purpose of verifying the accuracy of any statement or report given by
Somantis to De Montfort University under this clause 4. The accountant
shall be required to keep confidential all information learnt during
any such inspection, and to disclose to De Montfort University only
such details as may be necessary to report on the accuracy of
Somantis's statement or report. De Montfort University shall be
responsible for the accountant's charges.
4.7.3 Somantis shall ensure that De Montfort University has the same rights
as those set out in this Clause 4.7 in respect of any licensee or
licence or sublicencee of Somantis that is licensed or sub-licensed
under the Patents and/or Know-how pursuant to this Agreement.
5. Commercialisation
5.1 Somantis shall use commercially best efforts to develop and
commercially exploit Royalty-bearing Products.
5.2 Without prejudice to the generality of Somantis's obligations under
Clause 5.1, Somantis shall provide at least annually to De Montfort
University an updated, written development plan, showing all past,
current and projected activities taken or to be taken by Somantis to
bring Royalty-bearing Products to market and sell Royalty-bearing
Products worldwide.
6. Intellectual property
6.1 Obtain and maintain the Patents. Somantis shall at his own cost and
expense:
(a) co-operate with De Montfort University and endeavour to obtain
and maintain valid patents in the name of Somantis pursuant to
each of the patent applications listed in Schedule 1 so as to
secure the broadest monopoly reasonably available; and
(b) pay all renewal fees in respect of the Patents as and when
due;
provided that if Somantis wishes to abandon any such application or not
to maintain any such Patent (or to cease funding such application or
Patent) it shall give 6 months' prior written notice to De Montfort
University and on the expiry of such notice period Somantis shall
assign back to De Montfort University without charge the patent
application or patent identified in the notice.
CONFIDENTIAL TREATMENT REQUESTED
6.2 Infringement of the Patents
6.2.1 Each Party shall inform the other Party promptly if it becomes aware of
any infringement or potential infringement of any of the Patents in the
Field, and the Parties shall consult with each other to decide the best
way to respond to such infringement.
6.2.2 If the Parties fail to agree on a joint programme of action, including
how the costs of any such action are to be borne and how any damages or
other sums received from such action are to be distributed, then
Somantis shall be entitled to take action against the third party at
its sole expense and it shall be entitled to all damages or other sums
received from such action, after reimbursing De Montfort University for
any reasonable expenses incurred in assisting it in such action. De
Montfort University shall agree to be joined in any suit to enforce
such rights subject to being indemnified and secured in a reasonable
manner as to any costs, damages, expenses or other liability and shall
have the right to be separately represented by its own counsel at its
own expense. If the alleged infringement is both within and outside the
Field, the Parties shall also co-operate with De Montfort University's
other licensees (if any) in relation to any such action.
6.3 Infringement of third party rights
6.3.1 If any warning letter or other notice of infringement is received by a
Party, or legal suit or other action is brought against a Party,
alleging infringement of third party rights in the manufacture, use or
sale of any Assigned Product or use of any Patents, that Party shall
promptly provide full details to the other Party, and the Parties shall
discuss the best way to respond.
6.3.2 Somantis shall have the right but not the obligation to defend such
suit to the extent that it relates to the Field, and shall have the
right to settle with such third party, provided that if any action or
proposed settlement involves the making of any statement, express or
implied, concerning the validity of any Patent, the consent of De
Montfort University must be obtained before taking such action or
making such settlement.
6.3.3 Somantis shall be entitled to deduct from monies payable under this
Agreement any sums paid to third parties (including without limitation
damages, payments in settlement of litigation) and costs and expenses
incurred in relation to any alleged or actual infringement of third
party rights in the manufacture, use or sale of any Royalty Bearing
Products.
7. Warranties and liability
7.1 Warranties by Owner. De Montfort University warrants, represents and
undertakes as follows:
(a) subject to Clause 7.3, it is entitled to assign the Patents
and license the Know-how to Somantis as provided for in this
Agreement.
CONFIDENTIAL TREATMENT REQUESTED
(b) it has not done, and will not do nor agree to do during the
continuation of this Agreement, any of the following things in
the Field, if to do so would be inconsistent with the exercise
by Somantis of the rights granted to it under this Agreement,
namely:
(i) grant or agree to grant any right, title or interest
in the Patents or the Know-how or any improvements
thereto; or
(ii) assign, mortgage, charge or otherwise transfer any of
the Patents or Know-how or (subject to clause 9.3
below) any of its rights or obligations under this
Agreement.
7.2 No other warranties
7.2.1 Each of Somantis and De Montfort University acknowledges that, in
entering into this Agreement, it does not do so in reliance on any
representation, warranty or other provision except as expressly
provided in this Agreement, and any conditions, warranties or other
terms implied by statute or common law are excluded from this Agreement
to the fullest extent permitted by law.
7.2.2 Without limiting the scope of Clause 7.2.1, De Montfort University does
not give any warranty, representation or undertaking:-
(a) as to the efficacy or usefulness of the Patents or Know-how;
or
(b) that any of the Patents is or will be valid or subsisting or
(in the case of an application) will proceed to grant; or
(c) that the use of any of the Patents or Know-how, the
manufacture, sale or use of the Royalty-bearing Products or
the exercise of any of the rights granted under this Agreement
will not infringe any other intellectual property or other
rights of any other person; or
(d) that the Know-how or any other information communicated by De
Montfort University to Somantis under or in connection with
this Agreement will produce Royalty-bearing Products of
satisfactory quality or fit for the purpose for which Somantis
intended; or
(e) as imposing any obligation on De Montfort University to bring
or prosecute actions or proceedings against third parties for
infringement or to defend any action or proceedings for
revocation of any of the Patents; or
(f) as imposing any liability on De Montfort University in the
event that any third party supplies Royalty-bearing Products
to customers located in the Territory.
7.3 Indemnity. Somantis shall indemnify De Montfort University against any
loss, damages, costs or expenses which are awarded against or incurred
by De Montfort University as a result of any claim or threatened claim
concerning the use by Somantis or any of its licensees or sublicencees
of the Patents or Know-how or otherwise in connection with the
CONFIDENTIAL TREATMENT REQUESTED
manufacture, use or sale of or any other dealing in any of the
Royalty-bearing Products by Somantis or its Affiliates any of its
licensees or sublicencees.
7.4 Liability. Notwithstanding any other provision of this Agreement, no
Party shall be liable to any other Party to this Agreement in contract,
tort, negligence, breach of statutory duty or otherwise for any loss,
damage, costs or expenses of any nature whatsoever incurred or suffered
by that other party or its Affiliates of an indirect or consequential
nature including without limitation any economic loss or other loss of
turnover, profits, business or goodwill.
8. Duration and Termination
8.1 Commencement and Conditions
8.1.1 This Agreement, including the assignment and licence granted hereunder
to Somantis, shall come into effect on such date (if any) as Somantis
shall notify to De Montfort University in accordance with this clause
8.1 (the "Commencement Date"). Such notification may be given at any
time on or before 1 September 2002, but may only be given if Somantis
shall have received at least (pound)1,000,000 (one million pounds
sterling) by way of proceeds from a subscription for shares in
Somantis.
8.1.2 During the period between the date of this Agreement and the earlier of
(a) the Commencement Date and (b) 1 December 2004, De Montfort
University shall not enter into any agreement or discussions with any
other person in relation to the assignment or licensing of any or all
of the Patents and the Know-how.
8.1.3
8.2 Termination by expiry. Unless terminated earlier in accordance with
this Clause 8, this Agreement and the licence or sub-licences granted
hereunder shall continue in force until the date on which all the
Patents have expired or been revoked without a right of further appeal,
and on such date this Agreement and the licences granted hereunder
shall terminate automatically by expiry.
8.3 Early termination
8.3.1 Somantis may terminate this Agreement at any time on 90 days notice in
writing to De Montfort University.
8.3.2 Without prejudice to any other right or remedy, either Party may
terminate this Agreement at any time by notice in writing to the other
Party ("Other Party"), such notice to take effect as specified in the
notice:-
(a) if the Other Party is in breach of this Agreement and, in the
case of a breach capable of remedy within 90 days, the breach
is not remedied within 90 days of the Other Party receiving
notice specifying the breach and requiring its remedy; or
(b) if the Other Party becomes insolvent, or if an order is made
or a resolution is passed for the winding up of the Other
Party (other than voluntarily for the purpose of solvent
CONFIDENTIAL TREATMENT REQUESTED
amalgamation or reconstruction), or if an administrator,
administrative receiver or receiver is appointed in respect of
the whole or any part of the Other Party's assets or business,
or if the Other Party makes any composition with its creditors
or takes or suffers any similar or analogous action in
consequence of debt.
8.3.3 De Montfort University may forthwith terminate this Agreement by giving
written notice to Somantis if Somantis or its Affiliate or licensee or
sub-licensee commences legal proceedings, or assists any third party to
commence legal proceedings, to challenge the validity of any of the
Patents.
8.3.4 De Montfort University may terminate the Agreement forthwith if any of
the payments due and payable under clause 4 of the Agreement are not
made within 60 days of Somantis receiving from De Montfort University
notice of default in making such a payment, such notice to refer to
this clause 8.3.4 and to De Montfort University's intention to
terminate this Agreement if the payment is not made; and in the event
of such termination Somantis shall re-assign all Patent Applications to
De Montfort obligation-free and without charge.
8.3.5 Either party may on giving to the other Party of not less than 10 days'
written notice prior to 1st December 2004 terminate the Agreement as at
the 1st December 2004 if the Parties agree (such agreement to be
entirely at each Party's discretion) that:
(a) Royalty-bearing Products are unlikely to arise from pursuance
of the Agreement; or
(b) it is unlikely that such Royalty-bearing Products will enter
Clinical Trials prescribed for under clause 4 above; or
(c) for any other reason the objects of this Agreement cannot be
commercially achieve;
in which event the Parties shall have no further obligations to one
another under this Agreement other than their continuing obligations
under clauses 3.4 to 3.6 in respect of information disclosed prior to
the date of termination.
8.4 Consequences of termination
8.4.1 Upon termination of this Agreement by expiry under clause 8.2 above,
Somantis shall have the non-exclusive right to use the Know-how without
charge or other obligation to De Montfort University.
8.4.2 Upon termination of this Agreement for any reason otherwise than in
accordance with Clause 8.2 or 8.3.5:
(a) Somantis and its licensee sub-licencees shall be entitled to
sell, use or otherwise dispose of any unsold or unused stocks
of the Royalty-bearing Products;
(b) subject to paragraph (a) above, Somantis shall no longer be
entitled as assignee or licensee to use or otherwise exploit
in any way, either directly or indirectly, the Patents, in so
CONFIDENTIAL TREATMENT REQUESTED
far and for as long as any of the Patents remains in force, or
the Know-how, and any licence or sub-licences granted by
Somantis shall automatically terminate;
(c) subject to paragraph (a) above, Somantis shall re-assign the
Patents to De Montfort University;
(d) the provisions of clauses 3.4 to 3.6 (in respect of
information disclosed prior to termination), 4 (in respect of
payments becoming due prior to termination), 7 and 9 shall
continue in force; and
(e) subject as provided in this Clause 8.3.2 and 8.3.3 and 8.3.4,
and except in respect of any accrued rights, neither party
shall be under any further obligation to the other.
8.4.3 Upon termination of this Agreement for any reason and at De Montfort
University's request, the Parties shall negotiate in good faith the
terms of an agreement between them on reasonable commercial terms under
which Somantis would:
(a) transfer to De Montfort University exclusively all clinical
and other data relating to the development of Royalty-bearing
Products;
(b) to the extent possible, seek to have any product licences,
pricing approvals and other permits and applications
transferred into the name of De Montfort University or its
nominee;
(c) ▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇ University an exclusive, worldwide licence,
with the rights to grant licence or sub-licences, under any
improvements and other intellectual property owned or
controlled by Somantis relating to the Royalty-bearing
Products; and
(d) ▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇ University or its nominee the right to
continue to use any product name that had been applied to the
Royalty-bearing Products prior to termination of this
Agreement.
8.4.4 If the Parties are unable to agree the terms of an agreement as
described in Clause 8.4.3 within 90 days of De Montfort University
requesting the negotiation of such an agreement, either Party may refer
the terms for settlement by an independent expert who shall be
appointed in accordance with the provisions of Schedule 2 and whose
decision shall be final and binding on the Parties. The Parties shall
promptly execute an agreement on the terms agreed between them or
settled by the expert.
9. General
9.1 Force majeure. Neither Party shall have any liability or be deemed to
be in breach of this Agreement for any delays or failures in
performance of this Agreement which result from circumstances beyond
the reasonable control of that Party, including without limitation
CONFIDENTIAL TREATMENT REQUESTED
labour disputes involving that Party. The Party affected by such
circumstances shall promptly notify the other Party in writing when
such circumstances cause a delay or failure in performance and when
they cease to do so.
9.2 Amendment. This Agreement may only be amended in writing signed by duly
authorised representatives of De Montfort University and Somantis.
9.3 Assignment and third party rights.
9.3.1 Except as provided in clause 9.3.2, neither Party may assign or
transfer any or all of its rights and obligations hereunder.
9.3.2 Either Party may assign all its rights and obligations under this
Agreement together with its rights in the Patents and the Know-how to
any company to which it transfers all or part of its assets or
business, PROVIDED that the assignee undertakes to the other Party to
be bound by and perform the obligations of the assignor under this
Agreement.
9.4 Waiver. No failure or delay on the part of either Party to exercise any
right or remedy under this Agreement shall be construed or operate as a
waiver thereof, nor shall any single or partial exercise of any right
or remedy preclude the further exercise of such right or remedy.
9.5 Invalid clauses. If any provision or part of this Agreement is held to
be invalid, amendments to this Agreement may be made by the addition or
deletion of wording as appropriate to remove the invalid part or
provision but other wise retain the provision and the other provisions
of this Agreement to the maximum extent permissible under applicable
law.
9.6 No Agency. Neither Party shall act or describe itself as the agent of
the other, nor shall it make or represent that it has authority to make
any commitments on the other's behalf.
9.7 Interpretation. In this Agreement:
(a) the headings are used for convenience only and shall not
affect its interpretation;
(b) references to persons shall include incorporated and
unincorporated persons; references to the singular include the
plural and vice versa; and references to the masculine include
the feminine;
(c) references to Clauses and Schedules mean clauses of, and
schedules to, this Agreement; and
(d) references to the grant of "exclusive" rights shall mean that
the person granting the rights shall neither grant the same
rights (in the same Field and Territory) to any other person,
nor exercise those rights directly to the extent that and for
as long as the Royalty-bearing Products are within Valid
Claims of unexpired Patents.
9.8 Notices
CONFIDENTIAL TREATMENT REQUESTED
9.8.1 Any notice to be given under this Agreement shall be in writing and
shall be sent by first class mail or air mail, or by fax (confirmed by
first class mail or air mail) to the address of the relevant Party set
out at the head of this Agreement, or to the relevant fax number set
out below, or such other address or fax number as that Party may from
time to time notify to the other Party in accordance with this Clause
9.8. The fax numbers of the Parties are as follows: De Montfort
University - 0116 257 7142; Somantis - 0207 299 9482 .
9.8.2 Notices sent as above shall be deemed to have been received three
working days after the day of posting (in the case of inland first
class mail), or seven working days after the date of posting (in the
case of air mail), or on the next working day after transmission (in
the case of fax messages, but only if a transmission report is
generated by the sender's fax machine recording a message from the
recipient's fax machine, confirming that the fax was sent to the number
indicated above and confirming that all pages were successfully
transmitted).
9.9 Law and Jurisdiction. The validity, construction and performance of
this Agreement shall be governed by English law and shall be subject to
the exclusive jurisdiction of the English courts to which the parties
hereby submit, except that a Party may seek an interim injunction in
any court of competent jurisdiction.
9.10 Further action. Each Party agrees to execute, acknowledge and deliver
such further instruments, and do all further similar acts, as may be
necessary or appropriate to carry out the purposes and intent of this
Agreement.
9.11 Announcements. Neither Party shall make any press or other public
announcement concerning any aspect of this Agreement, or make any use
of the name of the other Party in connection with or in consequence of
this Agreement, without the prior written consent of the other Party.
9.12 Entire agreement. This Agreement, including its Schedules, sets out the
entire agreement between the Parties relating to its subject matter and
supersedes all prior oral or written agreements, arrangements or
understandings between them relating to such subject matter. The
Parties acknowledge that they are not relying on any representation,
agreement, term or condition which is not set out in this Agreement.
AGREED by the parties through their authorised signatories:-
For and on behalf of For and on behalf of
DE MONTFORT UNIVERSITY SOMANTIS LIMITED
/s/ ▇. ▇▇▇▇▇▇ /s/ AGAMEMNON ▇. ▇▇▇▇▇▇▇▇
------------------------------------ --------------------------------------
signed signed
▇. ▇▇▇▇▇▇ Agamemnon ▇. ▇▇▇▇▇▇▇▇
------------------------------------ --------------------------------------
print name print name
CEO
------------------------------------ --------------------------------------
title title
20/3/03 20/3/03
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date date
CONFIDENTIAL TREATMENT REQUESTED
Schedule 1
The Patents
International Patent Classification [CONFIDENTIAL TREATMENT REQUESTED]
International Filing Date [CONFIDENTIAL TREATMENT REQUESTED]
Priority Date: [CONFIDENTIAL TREATMENT REQUESTED]
Applicant: De Montfort University , Leicester
Title: [CONFIDENTIAL TREATMENT REQUESTED]
International Publication Number: [CONFIDENTIAL TREATMENT REQUESTED]
International Publication Date: [CONFIDENTIAL TREATMENT REQUESTED]]
CONFIDENTIAL TREATMENT REQUESTED
Schedule 2
Appointment of expert
1. Pursuant to Clause 8.4.4, De Montfort University may serve notice on
Somantis ("Referral Notice") that it wishes to refer to an expert (the "Expert")
the questions set out in Clause 8.4.4.
2. The parties shall agree the identity of a single independent, impartial
expert to determine such questions. In the absence of such agreement within 30
days of the Referral Notice, the questions shall be referred to an expert
appointed by the President of Law Society of England and Wales.
3. 60 days after the giving of a Referral Notice, both parties shall
exchange simultaneously statements of case in no more than 10,000 words, in
total, and each side shall simultaneously send a copy of its statement of case
to the Expert.
4. Each party may, within 30 days of the date of exchange of statement of
case pursuant to paragraph 3 above, serve a reply to the other side's statement
of case of not more than 10,000 words. A copy of any such reply shall be
simultaneously sent to the Expert.
5. The Expert shall make his decision on the said questions on the basis
of written statements and supporting documentation only and there shall be no
oral hearing. The Expert shall issue his decision in writing within 30 days of
the date of service of the last reply pursuant to paragraph 4 above or, in the
absence of receipt of any replies, within 60 days of the date of exchange
pursuant to paragraph 3 above.
6. The Expert's decision shall be final and binding on the parties.
7. The Expert's charges shall be borne equally by the parties.
