EXHIBIT 4.30
NON-EXCLUSIVE LICENSE AGREEMENT BETWEEN
THE WASHINGTON RESEARCH FOUNDATION AND
SAVYON DIAGNOSTICS. LTD.
This License Agreement (hereinafter, the "Agreement") is made and is effective
the day of the last of the Parties to sign (hereinafter, the "Agreement Date")
by and between the WASHINGTON RESEARCH FOUNDATION, a not-for-profit Washington
corporation having administrative offices at 0000 X.X. 00xx Xxxxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxxxxx, X.X.X. 00000, (hereinafter, "WRF"), and Savyon Diagnostics,
Ltd., an Israeli company having a principal place of business at Xxxxxx Xxxxxx,
0 Xxxxxxx, Xxxxxx 00000, Xxxxxx (hereinafter, "SAVYON").
WHEREAS, WRF is the owner, by assignment from the University of Washington
(UW) and its employees (Xx. Xxxxxxxx et al), of certain Technology, more fully
defined below, generally characterized as Diagnostic Methods for CHLAMYDIA
PNEUMONIAE, Tech I.D. #07-86-34, which is covered by certain patent and know-how
rights of WRF as defined below;
WHEREAS, WRF desires that the Technology be developed and brought to market
so that its benefits can be enjoyed worldwide by the general public and so that
resulting revenue will be generated for the support of research at the
University of Washington and of further technology transfer;
WHEREAS, the Technology is comprised of three methods and associated
materials for the detection and/or diagnosis of CHLAMYDIA PNEUMONIAE. namely
Monoclonal antibody- based antigen detection, serological antibody detection,
and nucleic acid probe based detection;
WHEREAS, SAVYON desires to obtain certain non-exclusive worldwide rights to
the serological antibody detection portion of the Technology from WRF;
NOW, THEREFORE, in consideration of the obligations expressed herein, the
Parties ascribe to the recitals set forth above and agree as follows:
ARTICLE 1 - DEFINITIONS
1.01 "Field of Use", as used herein, shall mean those portions of the
Technology directly pertaining to methods and materials for the serological
detection of antibodies to CHLAMYDIA PNEUMONIAS - and their use by SAVYON to
develop arid market CHLAMYDIA PNEUMONIAS assays. The Field of Use expressly
excludes the nucleic acid probe and Monoclonal antibody - based detection
materials and methods of detecting CHLAMYDIA PNEUMONIAS and expressly excludes
the right to Sell CHLAMYDIA PNEUMONIAS diagnostic lest results.
1.02 "Patent Rights", as used herein, shall include all of the following
intellectual property rights:
(a) the United States and foreign patents and/or patent applications listed
in Appendix A;
(b) United States and foreign patents issuing from the applications listed
in Appendix A and from divisional and continuations of these applications;
(c) claims of U.S. and foreign continuation-in-part applications, and of
the resulting patents, which are directed to subject matter specifically
described in the U.S. and foreign applications listed in Appendix A;
(d) claims of all foreign patent applications, and of the resulting
patents, which are directed to subject matter specifically described in the
parent U.S. patent and/or patent applications listed in (a), (b), or (c)
above;
(e) any reissues of the U.S. patents described in (a), (b), or (c) above;
1.03 "Territory", as used herein, shall mean worldwide
1.04 "Licensed Know-How", as used herein, shall mean information and/or
materials provided to SAVYON by WRF and/or its assignors which are not generally
available to the public and not covered by Patent Rights, but are within the
knowledge and possession of the WRF and/or its assignors which contribute to the
practice of the Patent Rights and/or the development and marketing of Licensed
Product. Licensed Know-How may include, without limitation:
(a) Bailment (see Articles 5 and 26) covering the use of CHLAMYDIA
PNEUMONIAS hybridoma clones, CHLAMYDIA PNEUMONIAS strain, antigen.
monoclonal antibody, and control sera made in or originating from the
University of Washington labs (see Appendix B). for use in Licensed Product
development.
(b) Information from the WRF including lists of its CHLAMYDIA PNEUMONIAS
biological materials purchasers, reference lab licensees, CHLAMYDIA
PNEUMONIAS researchers, and other potential Licensed Product customers.
Ongoing referrals are also included here. (See Paragraphs 7.06, 7.07)
1.05 "Licensed Product", as used herein, means any composition of matter
in, product of, article of manufacture of. apparatus in. or component part of a
diagnostic kit or packaged assay, or a diagnostic kit or packaged assay in its
entirety, or any similar item, which uses a process, composition, material,
procedure or method covered by any one or combination of the Patent Rights or
Licensed Know-How within the Field of Use.
1.06 "SAVYON", as used herein shall mean SAVYON, Ltd., an Israeli company
having a principal place of business at Kiryat Xxxxxx. 0 Xxxxxxx, Xxxxxx 00000,
Xxxxxx and expressly excludes Affiliates.
1.07 "Affiliate", as used herein shall mean any corporation, firm,
partnership or other business entity controlled by, controlling, or under common
control with SAVYON. For this purpose, "control" means direct or indirect
beneficial ownership of or the right to vote at least fifty percent (50%) of the
voting stock or at least fifty percent (50%) interest in the income of such
corporation or other business entity.
1.08 "Party", as used herein, shall mean SAVYON or WRF and when used in
plural, shall mean SAVYON and WRF.
1.09 "Third Party", as used herein, shall mean individuals or other
entities other than WRF or SAVYON and its Affiliates.
1.10 "Sale" or "Sales", as used herein, shall mean:
(a) the sale, lease or other transfer by SAVYON to a Third Party or
Affiliate of any right of ownership or use in a Licensed Product;
(b) the sale, lease or transfer by SAVYON to a Third Party or Affiliate of
a product or service which is covered by any of the Patent Rights or which
makes use of Licensed Know-How.
1.11 "Sell" or "Sold", as used herein, shall mean the act of consummating a
Sale. A Sale shall be consummated upon SAVYON's receipt of consideration for the
Sale.
1.12 "Gross Sales", as used herein, shall mean the gross receipts,
royalties, fees or other valuable consideration of any kind, directly or
indirectly received by or credited to the benefit of SAVYON as a direct result
of a Sale. "Gross Sales" shall include interest, late charges, time-price
differentials or any other receipts or credits of a similar or related nature
received by SAVYON as a consequence of a Sale. In no case will a Gross Sale
between SAVYON and an Affiliate be made for less consideration than that
received from Gross Sales between SAVYON and Third Parties.
1.13 "Net Sales", as used herein, shall mean Gross Sales, less the
following deductions, provided, however, that the aggregate value of said
deductions in any royalty payment period shall not exceed 15% of Gross Sales for
that period:
(a) amounts actually repaid by reason of timely rejections or returns; and
(b) Sales taxes charged and received, shipping and shipping insurance
charges paid by SAVYON when Sales shipments are made FOB: Destination.
Net Sales may not be reduced to reflect deductions from royalties due for
foreign or governmental taxes, fees, or charges or withholding, whether now in
effect or later enacted or imposed, which shall be SAVYON's sole responsibility.
1.14 "Proprietary Information", as used herein, shall mean any information
relating directly or indirectly to:
(a) the Technology, and not generally known to the public, provided to
SAVYON by the WRF or its assignors; and
(b) confidential aspects of SAVYON business, provided to WRF by SAVYON: and
(c) conveyed in written. graphic, oral or physical form including but not
limited to scientific knowledge, know-how, processes, inventions.
techniques, formulae, products, business operations, market data, customer
requirements, data. plans or other records, or software. Oral conveyances
shall be summarized in writing, marked as proprietary. and provided to
SAVYON within thirty (30) days of its conveyance.
1.15 "Biological Materials", as used herein, shall mean any and all
biological materials provided SAVYON by WRF. including those listed in Appendix
B.
1.16 "Technology", as used herein, shall mean that owned by WRF, by
assignment from the University of Washington (UW) and its employees (Xx.
Xxxxxxxx et al), of certain technology, generally characterized as Diagnostic
Methods for CHLAMYDIA PNEUMONIAS (TWAR), Tech I.D. #07-86-34, developed at the
University of Washington by Dr. J. Xxxxxx Xxxxxxxx. Dr. San-pin Wang, Xx.
Xxx-xxxx Xxx, and Xx. Xxx Xxx Xxxxxxxx which is covered by certain Patent and
Know-How rights of WRF as defined above.
ARTICLE 2 - GRANT
2.01 WRF hereby grants to SAVYON, subject to the terms and conditions of
this Agreement, a non-exclusive worldwide license to make, have made, market,
distribute (directly or by means of local distributors), and Sell Licensed
Products.
2.02 No rights are granted hereby allowing SAVYON to grant sublicenses.
ARTICLE 3 - COLLABORATIVE RESEARCH & INVENTION RIGHTS
3.01 No research or development collaboration is contemplated between
SAVYON and the WRF or its assignors herein.
ARTICLE 4 - PAYMENTS & ROYALTIES
4.01 For the license granted to SAVYON under this Agreement, SAVYON will
pay to WRF a non-refundable license fee of Forty Thousand Dollars (US$ 40,000),
payable as follows:
(a) $30.000 within ten (10) days of the Agreement Date
(b) $10.000 on or before the first anniversary of the Agreement Date. Such
payment shall be creditable against future earned royalties payable to WRF
based upon Sales made prior to January 1. 1997.
4.02 For the license granted to SAVYON under this Agreement. SAVYON will
pay to WRF an earned royally equal to seven percent (7.0%} of Net Sales made in
the Territory.
4.03 Royalties shall be paid to WRF twice per year and shall reflect Net
Sales made during each calendar half-year. Royalties snail be payable within 60
days of the expiration of each calendar half-year.
4.04 For the license granted to SAVYON under this Agreement. SAVYON will
pay to WRF a non-refundable annual license administration fee of Three thousand
five hundred Dollars (US$ 3,500), first due and payable on the first anniversary
of the Agreement Date and annually thereafter on each anniversary of the
Agreement Date.
4.05 All monies due WRF under this Agreement shall be paid in United States
Dollars. The rate of exchange to be used in computing the amount of any foreign
currency payments equivalent to United Slates Dollars shall be made at the rate
of exchange in effect at the Chase Manhattan Bank on the last business day of
the calendar half-year that the royalty payment accrues.
4.06 All fees and royalties due WRF under this Agreement not received when
due will be subject to interest charged at 19.0% per annum compounded monthly at
the first of each calendar month. Payments received by the WRF will be applied
first to the outstanding interest due and then to the outstanding principal due.
Payment of such interest shall not limit WRF from exercising any other rights it
may have as a consequence of the lateness of any payment.
ARTICLE 5 - BIOLOGICAL MATERIALS
5.01 At SAVYON's option, Biological Materials are available to it from the
WRF for Licensed Product development and testing purposes. SAVYON acknowledges
that it must make a provision for the supply of CHLAMYDIA PNEUMONIAS reagents
for its use in producing Licensed Products for Sale. The following conditions
apply to all Biological Materials received by SAVYON:
(a) The non-distribution conditions set forth in Article 26.
(b) SAVYON acknowledges that supply of Biological Materials in no way
conveys, in and of itself, a license to commercially use, develop, or sell
the Technology.
(c) Payment of transfer tees in accordance with Appendix B.
5.02 SAVYON shall have sole responsibility and liability for assuring the
quality of Biological Materials supplied it by WRF.
ARTICLE 6 - SUBLICENSES
6.01 SAVYON shall have no right to sublicense Affiliates or Third parties.
ARTICLE 7 - REPORTS & REMITTANCES
7.01 SAVYON shall keep complete and accurate business records and records
of all Gross Sales and Net Sales of Licensed Product under the license granted
herein. WRF shall have the right, through a certified public accountant
acceptable to SAVYON. to examine such records at SAVYON's place(s) of business
during regular business hours at least once per year during the life of this
Agreement and for two (2) years after its termination. In the event that
SAVYON's royalties, calculated for any period, are in error by more than minus
three percent (-3%), or USS 2.500, whichever is less, the cost of the audit and
review shall be borne by SAVYON; otherwise, WRF shall bear the costs.
7.02 By August 31 and February 28 of each year, SAVYON shall deliver to WRF
a report detailing its progress in the commercialization of Licensed Products.
Such report shall include information regarding product development, regulatory
approval, marketing, and such other information as WRF may reasonably request in
order to determine SAVYON's compliance with the diligence obligations under this
Agreement.
7.03 By August 31 and February 28 of each year during the term of this
Agreement, SAVYON shall deliver to WRF a true accounting of all Sales and Net
Sales of Licensed Product made by SAVYON during the preceding calendar half
year, and at the same time shall pay all royalties due. Such accounting shall
show Licensed Product pricing, Sales, Gross Sales, itemized deductions as
allowed herein, and Net Sales on a country-by- country, Licensed
Product-by-Licensed Product basis and shall promptly supplement said reports
with such additional information as WRF may reasonably request. WRF agrees to
keep this information and documentation confidential as provided in Article 25.
SAVYON shall also provide with their semi-annual reports, the latest copies of
non-confidential promotional or explanatory literature listing Licensed Products
and copies of Licensed Product package inserts.
7.04 SAVYON agrees to report to WRF the first date of Sale of the first
Licensed Product within sixty (60) days of its occurrence.
7.05 WRF will provide to SAVYON, within thirty (30) days of the Agreement
Date, its BMDC customer list of those institutions which have purchased
Biological Materials from the WRF. The WRF will also diligently refer potential
customers to SAVYON as they are identified. SAVYON agrees to keep this
information and documentation confidential as provided in Article 25
7.06 WRF will provide SAVYON, within thirty (30) days of the Agreement
Date, a list of purchasers of CHLAMYDIA PNEUMONIAS strain from the American Type
Culture Collection, effective from September 1, 1990, to the present. SAVYON
agrees to keep this information and documentation confidential as provided in
Article 25.
7.07 As it is able, and at its sole discretion, WRF will also provide
SAVYON with other Proprietary Information which may be of value to its Licensed
Product development and marketing efforts such as potential biological material
subcontractor producers, the names and affiliations of scientists performing
CHLAMYDIA PNEUMONIAS research, and the like.
7.08 The SAVYON contact person responsible for communicating with the WRF
under the reporting requirements of this Agreement shall be the same as is given
in Article 21 (NOTICES), unless SAVYON designates otherwise to WRF in writing.
ARTICLE S - PATENT PROSECUTION & MAINTENANCE
8.01 Subject to the provisions herein, WRF shall prosecute and maintain the
Patent Rights, using counsel of its choice, and be solely responsible for
payment of direct costs associated therewith.
8.02 SAVYON may request from WRF and the WRF is then obligated to provide
SAVYON, with updates concerning prosecution and maintenance of the Patent Rights
so that SAVYON may be informed and apprised of the continuing status of the
pending applications and issued patents. SAVYON agrees to keep this information
and documentation confidential as provided in Article 25.
ARTICLE 9 - PATENT INFRINGEMENT
9.01 In the event that SAVYON becomes aware of actual infringement of
Patent Rights by a Third Party, SAVYON shall promptly notify WRF in writing.
Except as provided for in Paragraph 9.02, and if the potential infringement is
within the Field of Use, WRF shall, at its discretion, use diligence to cause
infringement to cease by the grant of a license or other remedy or use diligence
in bringing an infringement action against the Third Party. WRF reserves the
right to identify SAVYON in such suit as having rights under Licensed Patents.
WRF shall not name SAVYON as a co-party in such suit without an express written
request from SAVYON.
9.02 In the event that SAVYON becomes aware of actual infringement of
Patent Rights in the Field of Use by a Third Party in a Territory or Pending
Territory where SAVYON is actively Selling Licensed Product, and where SAVYON
can demonstrate to WRF that for at least two (2) consecutive quarters the Third
Party has captured no less than ten percent (10%) of the market for Licensed
Products, SAVYON shall promptly notify WRF in writing. WRF shall use diligence
to cause infringement to cease by the grant of a license or other remedy or use
diligence in bringing an infringement action against the Third Party. WRF
reserves the right to identify SAVYON in such suit as having rights under
Licensed Patents. WRF shall not name SAVYON as a co-party in such suit without
an express w'-xxxxxx request from SAVYON.
9.03 In a case in which WRF brings an infringement action against a Third
Party, this action shall be at no cost to SAVYON unless SAVYON joins the suit as
a co-party. SAVYON is under no obligation to join such suit and WRF must
approve, at its1 sole discretion, the addition of SAVYON as a co-party,
9.04 SAVYON shall not make Sales which are covered by the Patent Rights but
which are beyond the scope of the Grant of rights provided by this Agreement.
9.05 SAVYON shall include on or with its Licensed Product package insert a
list of al; issued or granted Licensed Patents and the phrase. "Other patents
pending", if in fact there are Licensed Patents pending.
ARTICLE 10 - DEFENSE OF PATENT RIGHTS
10.01 In the event of the initiation of any suit by a Third Party against
WRF or SAVYON for patent infringement involving the manufacture, use, sale,
distribution, marketing or other utilization of Licensed Product, the Party sued
shall promptly notify the other Party in writing. Except in the case of a
conflict of interest. SAVYON and WRF shall assist one another and cooperate in
any such litigation at the other's request without expense to the requesting
Party.
ARTICLE 11 - BEST EFFORTS
11.01 SAVYON shall use its best efforts in proceeding with the development
and Sale of Licensed Products and in creating a supply and demand for same.
SAVYON shall be entitled ;o exercise prudent business judgement in meeting its
reasonable diligence obligations hereunder.
ARTICLE 12 - COMPULSORY LICENSES
12.01 The Parties understand and agree that inventions covered by this
Agreement may be subject to the rights and limitations of United States Public
Law (PL) 96-517 and implementing regulations prescribed by the Federal Office of
Management and Budget. PL 96- 517, enacted in December 1980, enabled nonprofit
organizations and small business firms to own and commercialize inventions
arising from federally supported research and/or development, provided the
Government be granted a world-wide, non-exclusive, royalty-free license for the
Technology.
12.02 In the event that WRF receives notice from any governmental agency in
any country or territory having valid authority and jurisdiction that a
royalty-free compulsory license regarding all or any portion of the Patent
Rights has been or must be granted, WRF shall immediately give notice to SAVYON
of such action.
ARTICLE 13 - TERM
13.01 This Agreement shall be in full force and effect from the Agreement
Date and shall remain in effect for seventeen (17) years or until the last
remaining Patent Rights expire. whichever is later, unless otherwise terminated
by operation of law or pursuant to the terms and conditions of this Agreement.
13.02 Expiration of the last remaining Patent Rights shall not preclude
SAVYON from continuing to utilize the Patent Rights and without further royalty
or other payment to the WRF.
13.03 Expiration, abandonment, or invalidation of the last remaining Patent
Rights shall not preclude SAVYON from continuing to utilize the Licensed
Know-How incorporated into Licensed Products, subject to the payment of
royalties as set forth in Paragraph 4.02.
ARTICLE 14 - TERMINATION
14.01 WRF may terminate this Agreement if. at any time. SAVYON shall file
in any court pursuant to any statute of the United States or of any individual
state or foreign country, a petition in bankruptcy or insolvency or for
reorganization or for an arrangement for the appointment of a receiver or
trustee of SAVYON or of its assets.
14.02 If either Party is in breach of any of the provisions of this
Agreement, including but not limited to. insufficient best efforts, nonpayment
of monies due, or non completion of the required reports, the citing Party will
submit to the responding Party a written notification of such breach. The
responding Party shall have ninety (90) days from the date of notification to
remedy the breach. If the breach is not corrected within this period, the citing
Party shall have the right to terminate this Agreement in its entirety upon
delivery of notice to the responding Party. Upon receipt by the responding Party
of such notice, the license granted hereunder shall be deemed terminated.
14.03 SAVYON shall have the right, subject to the terms and conditions of
this Agreement, to terminate this Agreement upon sixty (60) days written notice
to WRF.
ARTICLE 15 - RIGHTS & DUTIES UPON TERMINATION
15.01 Upon termination of this Agreement, WRF shall have the right to
retain any sums already paid by SAVYON hereunder, and SAVYON shall pay all sums
accrued or due hereunder.
15.02 Upon the termination of this Agreement pursuant to Article 14, SAVYON
shall have not more than six months from the date of termination to dispose of
all Licensed Products on hand at the time of such termination, provided that
SAVYON shall be obliged to pay WRF a royalty on such Net Sales as set forth in
this Agreement.
15.03 Upon the termination of this Agreement pursuant to Article 14, SAVYON
shall return any confidential documentation, information, compositions, or
biological materials stored by any method, in its possession that were
transferred it by the WRF, without retaining copies or samples thereof.
15.04 Termination of this Agreement shall terminate all outstanding grants,
obligations and liabilities between the Parties arising from this Agreement,
except those described in Articles 1 (DEFINITIONS), 7 (REPORTING and AUDITS). 15
(RIGHTS AND DUTIES UPON, TERMINATION), 23 (ARBITRATION), 24 (ATTORNEY'S FEES),
25 (CONFIDENTIALITY), 26 (NON-DISTRIBUTION), and Paragraphs 4.06 (Interest on
payments due). 20.01 (Indemnity), 22.01 (Governing Laws), and 27.01 (Insurance).
15.05 Except to the extent provided in Section 15.02 concerning Licensed
Product on hand at Termination, the grant under Article 2 of this Agreement
shall cease as of the date of termination.
ARTICLE 16 - USE OF TRADEMARKS & TRADENAMES
16.01 Nothing contained in this Agreement shall be construed as conferring
any right to use, in advertising, publicity or other promotional activities with
respect to the Technology or Licensed Product, any name, trade name trademark or
other designation of either Parry hereto, including any contraction,
abbreviation or simulation of any of the foregoing, unless the express written
permission of the other Party has been obtained, which permission shall not be
unreasonably withheld. The use of the University of Washington inventors' names
or the names "Washington Research Foundation" or "University of Washington" by
SAVYON in connection with such marketing is expressly prohibited unless express
written permission is obtained in each case.
16.02 SAVYON, at its sole expense, shall be responsible for the selection,
registration and maintenance of all trademarks and trade names which it employs
in connection with any Licensed Product and shall own and control such
trademarks and trade names during the life of this Agreement as well as after
its termination or expiration. The terms "trademark" and "trade name" shall
include, without limitation, the name or names of any Licensed Product, the
design of me packaging of any Licensed Product, and the appearance of and
Licensed Product.
ARTICLE 17 - PUBLICATION OF RESEARCH RESULTS
17.01 The freedom of University of Washington faculty members to publish
shall not be inhibited by SAVYON.
ARTICLE 18 - WARRANTIES
18.01 WRF warrants that it is the owner of the Patent Rights and that it
has the lawful right to grant the license set forth herein, and that no consent,
license or other conveyance is required by SAVYON from the University of
Washington to effectively convey the Technology or otherwise to grant the
license set forth herein.
18.02 WRF MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS OF THE LICENSED PRODUCTS FOR A PARTICULAR PURPOSE.
18.03 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by WRF as to the validity or scope of
any of the Patent Rights;
(b) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is
or shall be free from infringement of patents or proprietary rights of
Third Parties: or
(c) an obligation to bring or prosecute actions or suits against Third
Parties for infringement.
18.04 WRF warrants that the Biological Materials transferred to SAVYON
under the terms of this Agreement will be produced in the laboratories of Dr. J.
Xxxxxx Xxxxxxxx at the University of Washington. The maximum extent of WRF's
liability regarding this transfer shall be limited to either the replacement of
any Biological Material sold to SAVYON and shown to be defective or a refund of
the purchase price paid by SAVYON for the Biological Material shown to be
defective.
18.05 Except as expressly set forth in this Agreement, WRF MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESSED OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. OF THE Biological Materials PROVIDED SAVYON.
OF VALIDITY OF THE PATENT RIGHTS. OR THAT USE OF THE INVENTION WILL NOT INFRINGE
ANY PATENT OR OTHER RIGHTS.
ARTICLE 19 - ASSIGNABILITY
19.01 WRF shall have the right to assign this Agreement without consent or
SAVYON.
19.02 SAVYON shall ha\e the right to assign its rights under this
Agreement, provided that written permission is received from WRF. Said
permission will not be unreasonably withheld if SAVYON and its assignee
guarantee that the assignee will comply with all of the terms and conditions of
this Agreement and that the assignee will cure any existing defaults or' the
Agreement by SAVYON. No partial or split assignments are permitted.
ARTICLE 20 - INDEMNITY
20.01 SAVYON shall indemnify and hold WRF, the University of Washington,
its officers, employees, and agents from any liability, loss, damage or expense
arising from a claim of personal injury or property damage or a claim of
infringement of any third party's patent, trademark or other industry rights by
SAVYON which may result from the use of Biological Materials or the manufacture,
use, distribution, or sale of Licensed Products by SAVYON.
ARTICLE 21 - NOTICES
21.01 Any payment, notice or other communication required or permitted to
be given to either Party hereto shall be deemed to have been properly given,
received, and be effective on the date mailed to the respective address given
below, or to such other address as either Party shall designate by written
notice given to the other Party, or if hand delivered to the following
addresses:
In the case of SAVYON: Savyon Diagnostics,
Ltd. Kiryat Minrav
3 Habosem
Ashdod 77101
Attention: President
In the case of WRF: Washington Research Foundation
0000 X.X. 00xx Xxxxxx
Xxxxx 000
Xxxxxxx. Xxxxxxxxxx X.X.X. 00000
Attention: President
ARTICLE 22 - GOVERNING LAW'-S
22.01 Except where United States Federal law prevails, this Agreement shall
be interpreted and construed in accordance with the laws of the State of
Washington.
ARTICLE 23 - ARBITRATION & JURISDICTION
23.01 At the request of either Party, any controversy, claim, or dispute
arising out of or relating to any provision of this Agreement shall be settled
by arbitration to be conducted in Seattle, Washington. Such arbitration shall be
in accordance with the rules applied by the American Arbitration Association as
of the date the arbitration is filed. Judgment upon any award rendered through
arbitration may be entered into any court of competent jurisdiction.
23.02 SAVYON and WRF shall submit to jurisdiction in Seattle. Washington.
U.S.A.
ARTICLE 24 - ATTORNEYS FEES
24.01 In the event of any arbitration or legal action between the Parties
hereto arising from this Agreement the prevailing Party shall be entitled to
reimbursement from the other party of all costs and legal fees associated with
such arbitration or legal action.
ARTICLE 25 - CONFIDENTIALITY
25.01 Except to the extent expressly authorized in this Agreement, SAVYON
and WRF agree that, for the term of this Agreement and for five (5) years
thereafter, the receiving Party of Licensed Know-How and Proprietary Information
by the providing Party shall keep same completely confidential and shall not
publish or otherwise disclose such information except to the extent that it can
be established by the receiving Party by competent proof that such information;
(a) was already known to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the
disclosing Party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of the
public domain after its disclosure and other than through any act or
omission of the receiving Party in breach of this Agreement;
(d) was subsequently lawfully disclosed to the receiving Party by a
Third Party.
25.02 Each Party may disclose the other Party's Proprietary Information to
the extent such disclosure is reasonably necessary in prosecuting or defending
litigation, complying with applicable governmental regulations, or conducting
clinical trials, subject to thirty (30) days' prior written notification to the
other Party.
25.03 SAVYON and WRF may use each other's Proprietary Information only
under the following restrictions:
(a) The Parties may duplicate or reproduce the disclosed proprietary
information; if duplicated or reproduced in whole or in pan. the
disclosed information must carry a proprietary notice similar to that
with which it was submitted to the receiving Party.
(b) any person employed by the receiving Party and utilizing the
confidential information will be advised of, and is subject to. the
conditions in this Agreement.
25.04 The Parties agree to protect each other's Proprietary Information
from further disclosure by taking equivalent precautions used to protect
confidential information of their own.
ARTICLE 26 - NON-DISTRIBUTION OF BIOLOGICAL MATERIALS
26.01 The Biological Materials provided SAVYON are transferred on a
nonexclusive basis. The transfer, distribution, or sale of the Biological
Materials by SAVYON to Third Parties is expressly forbidden without prior
written consent of the WRF. SAVYON agrees that any person employed by SAVYON and
utilizing the Biological Materials will be advised of. and is subject to, the
conditions in this agreement.
26.02 SAVYON agrees that it will comply with all applicable governmental or
local regulatory and statutory requirements regarding use of the Biological
Materials.
26.03 SAVYON agrees to use the Biological Materials solely for the
development of Licensed Product and for no other commercial purpose. This
includes, but is not limited to:
(a) the diagnosis of patient samples for consideration; or
(b) the manufacture of Licensed Product; or
(c) the testing of Third Parties' diagnostic kits, assays or assay
components in return for compensation.
26.04 The Biological Materials transferred to SAVYON are experimental in
nature. THE WRF MAKES NO WARRANTIES, REPRESENTATION OR UNDERTAKING WITH RESPECT
TO THEIR UTILITY, EFFICACY, NONTOXICITY, SAFETY OR APPROPRIATENESS FOR A
PARTICULAR PURPOSE.
26.05 Upon termination of this Agreement, the WRF reserves the right, at
its sole discretion, to require the return by SAVYON of any Biological Materials
in its possession.
ARTICLE 27 - INSURANCE REQUIREMENTS
27.01 SAVYON shall maintain general liability insurance including product
liability and contractual liability coverage within the limits tied to the risks
inherent in producing and selling Licensed Product. SAVYON must declare whether
the insurance is provided on a "claims-made" form and must notify WRF if
coverage is cancelled. If coverage is maintained by SAVYON on Licensed Products
after termination of this Agreement, such coverage must continue to name the
WRF.
27.02 Starting with the market introduction of a Licensed Product and
continuing uninterrupted thereafter. SAVYON must maintain such continual
insurance coverage and provide WRF with annual proof of such coverage with at
least one semi-annual report due pursuant to Paragraph 7.03.
ARTICLE 28 - WAIVER
28.01 No omission or delay of either Party in requiring due and punctual
fulfillment of the obligations of any other Party shall be deemed to constitute
a waiver by such Party of its rights to require such due and punctual
fulfillment, or any other of its remedies hereunder.
ARTICLE 29 - SEPARABILITY
29.01 In the event that any pan of this Agreement shall be held illegal,
void or ineffective, the remaining portions hereof shall remain in full force
and effect.
29.02 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 only to the extent that they may conflict therewith and
shall be deemed to be modified to conform with such statute or rule of law.
29.03 In the event that the terms and conditions of this Agreement are
materially altered as a result of Paragraphs 29.01 or 29.02, the Parties will
renegotiate the terms and conditions of this Agreement to resolve any
inequities.
ARTICLE 30 - MISCELLANEOUS
30.01 The headings of the several sections are inserted for convenience and
reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
30.02 This Agreement shall not be binding upon the Parties until it has
been signed by or on behalf of each Party, in which event, it shall be effective
as of the Agreement Date.
30.03 No amendment or modification hereof shall be valid or binding upon
the Parties unless made in writing and signed.
30.04 This Agreement embodies the entire understanding of the Parties and
shall supersede all previous communications, representations or understandings,
either oral or written, between the Panics relating to the subject matter
hereof.
IN WITNESS WHEREOF, both WRF and SAVYON have executed this Agreement, in
duplicate originals by their respective officers hereunto duly authorized, on
the day and year hereinafter written.
SAVYON WRF
By: _______________ By: ______________
Name: _______________ Name: ______________
Title: _______________ Title: ______________
Date: _______________ Date: ______________
SUMMARY TABLE
DESCRIPTION AMOUNT PARAGRAPH DATE DUE
PAYMENTS FROM SAVYON
Upfront $40,000 4.01 $30,000 on Agreement Date
$10.000 on First Anniversary
Royalties 7% 4.02 February 28 and August 31
License Admin. Fee $3,500 4.04 First Anniversary and annually
thereafter.
REPORTS FROM SAVYON
Commercialization Effort 7.02 August 31 and February 28
Sales of Licensed Product 7.03 August 31 and February 28
Date of First Sale of Licensed 7.04 60 days from occurrence
Product
Proof of Insurance 27.02 At least one semi-annual
report due under 7.03
WRITTEN NOTIFICATION FROM WRF
List of Chlamydia pneumonias BMDC 7.05. 7.06 Within 30 days of ;he
research customers and ATCC Chlamydia pneumonias Agreement Date
strain recipients
Patent prosecution & maintenance 8.02 Upon written request
reports
APPENDIX A
LISTING OF WRF PATENTS AND PATENT APPLICATIONS COMPRISING PATENT RIGHTS
COUNTRY TYPE STATUS REFERENCE#
U.S.A. Parent Issued 5,008,186
U.S.A. CIP Issued 5,281,518
U.S.A CIP Issued 5,350,673
Australia Issued 605,485
Spain Issued 2,005,569
Europe* Granted 0264434
Europe* Pending 939110955.7
Canada Pending 3/536,215
Japan Pending request
for examination 62-502.959
* designated states: Austria, Belgium, Switzerland. Germany. France. United
Kingdom, Italy, Luxembours, Netherlands. Sweden.
APPENDIX B
PRICING SCHEDULE FOR BIOLOGICAL MATERIALS AVAILABLE TO SAVYON FROM THE WRF
BIOLOGICAL MATERIALS DISTRIBUTION CENTER.
ITEM U/M TRANSFER FEE
Chlamydia pneumoniae-Specific MAb (RR402) (ascites) 1 ml US$ 1,000
Chlamydia pneumoniae Antigen 1 ml US$ 800
Normal Yolk Sac 1 ml US$ 100
Chlamydia pneumoniae Strains (TW-183, AR-39) 1 ml US$ 500
Chlamydia pneumoniae positive control sera 1 ml US$ 500
F.O.B.: Origin '
Shipment Via: Federal Express
Shipment: All BMDC shipments are made once a week on Mondays for
orders received by Thursday or the preceding week.
TERMS: NET 50
Pricing adjustments may occur with 30 days written notice SAVYON from WRF.
