Contract
STANFORD UNIVERSITY * OFFICE OF TECHNOLOGY LICENSING
0000 XX XXXXXX XXXX * XXXX XXXX, XX 00000-1106 (650! 000-0000 * FAX (000) 000-0000
Ally 18,2006
Xxxx Xxxxx
CEO Telmolecular, Inc.
0000 Xxxxxx Xxx. Fair Oaks, CA 95628
Re: Signature copies, Cases S97-099 and S02-231
Dear Xxxx:
Enclosed are two sets of two agreements for the Notch 1 and the Mitofusins technologies. Please sign and return one copy of each agreement to my attention.
Xxxxx X. XXxx Licensing Associate
Sincerely,
xxxx://xxx.xxxxxxxx.xxx EXCLUSIVE AGREEMENT
This Agreement between THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY ("Stanford"), an institution of higher education having powers under the laws of the State of California, and Telomoleeular, Inc. ("Telomolecular"), a corporation having a principal place of business at 0000 Xxxxxx Xxxxxx, Xxxx Xxxx, XX 00000, is effective on the 17 day July 2007 ("Effective Date").
1 BACKGROUND
Stanford has an assignment of an invention that provides a novel class of targets for treatment of degenerative disease. It is entitled " Use of Mitofusins in Mitochondrial Degenerative Diseases/' was invented in the laboratory of Dr.Xxxxxxxx Xxxxxx, and is described in Stanford Docket S97-099. The invention was made in the course of research supported by the NIH. Stanford wants to have the invention perfected and marketed as soon as possible so that resulting products may be available for public use and benefit.
2 DEFINITIONS
2.1 "Exclusive" means that, subject to Articles 3 and 5; Stanford will not grant further licenses under the Licensed Patents in the Licensed Field of Use in the Licensed Territory.
2.2 "Licensed Field of Use" means the any use for therapeutics, ameolation, or prevention of disease and associated internal research and drug screening activities .
2.3 "Licensed Patent" means Stanford's U.S. Patent Application, Serial Number 60/048,961, filed June 6, 1997 and U.S. CIP Patent Application, Serial Number 09/413,285, filed October 6,1999; any foreign patent application corresponding thereto, and any divisional, continuation, or reexamination application, and each patent that issues or reissues from any of these patent applications. Any claim of an unexpired Licensed Patent is presumed to be valid unless it has been held to be invalid by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken. "Licensed Patent" excludes any future continuation-in-part (CIP) patent application or patent except the CIP included above .
2.4 "Licensed Product" means a product or part of a product in the Licensed Field of Use where the making, using, importing or selling of which, absent this license, infringes, induces infringement, or contributes to infringement of a Licensed Patent; or
2.5 "Licensed Territory" means worldwide.
2.6 "Net Sales" means all gross revenue derived by Telomolecular or a sublicensee from Licensed Product. Net Sales excludes the following items (but only as they pertain to the making, using, importing or selling of Licensed Products, are included in gross revenue, and are separately billed):
(A) import, export, excise and sales taxes, and custom duties;
(B) costs of insurance, packing, and transportation from the place of manufacture to the customer's premises or poiot of installation;
(C) cosls of installation at the place of use; and
(D) credit for returns, allowances, or trades.
2.7 "Stanford Indemnitees" means Stanford and Stanford Hospitals and Clinics, and their respective trustees, officers, employees, students, and agents.
3 GRANT
3.1 Grant. Subject to the terms and conditions of this Agreement, Stanford grants Telomolecular an Exclusive license under the Licensed Patent in the Licensed Field of Use to make, have made, use. import, offer to sell and sell Licensed Product in the Licensed Territory.
3.2 Retained Rights. Stanford retains the right, on behalf of itself and all other nonprofit academic research institutions, to practice the Licensed Patent for any nonprofit purpose, including sponsored research and collaborations. Telomolecular agrees that notwithstanding any other provision of this Agreement, it has no right to enforce the Licensed Patent against any such institution. Stanford and any such other institution has the right to publish any information included in the Licensed Patent.
3.3 Specific Exclusion. Stanford does not:
(A) grant to Telomolecular any other licenses, implied or otherwise, to any patents or other rights of Stanford other than those rights granted under Licensed Patent, regardless of whether the patents or other rights are dominant or subordinate to any Licensed Patent, or are required to exploit any Licensed Patent;
(B) commit to Telomolecular to bring suit against third parties for infringement, except as described in Article 13; and
(C) agree to furnish to Telomolecular any technology or technological information or to provide Telomolecular with any assistance.
4 SUBLICENSING
4.1 Permitted Sublicensing. Telomolecular may grant sublicenses in the Licensed Held of Use.
4.2 Required Sublicensing. If Telomolecular is unable or unwilling to serve or develop a potential market or market territory for which there is a company willing to be a sublicense, Telomolecular will, at Stanford's request, negotiate in good faith a sublicense with any such sublicensee.
4.3 Sublicense Requirements. Any sublicense:
(A) is subject to this Agreement;
(B) will reilect that any sublicensee will not further sublicense;
(C) will expressly include the provisions of Articles 8, 9, and 10 for the benefit of Stanford; and
(D) will require the transfer of all obligations, including the payment of royalties specified in the sublicense, to Stanford or its designee, if this Agreement is terminated.
4.4 Copy of Sublicenses. Telomolecular will submit to Stanford a copy of each sublicense,
4.5 Sharing of Sublicensing Income* Telomolecular will pay to Stanford 30% of any upfront payments from a sublicense as additional royalty.
4.6 Royalty-Free Sublicenses. If Telomolecular pays all royalties due Stanford from a sublicensee's Net Sales, Telomolecular may grant that sublicensee a royalty-free or non-cash:
(A) sublicense or
(B) cross-license.
5 GOVERNMENT RIGHTS
This Agreement is subject to Title 35 Sections 200-204 of the United States Code. Among other things, these provisions provide the United States Government with nonexclusive rights in the Licensed Patent. They also impose the obligation that Licensed Product sold or produced in the United States be "manufactured substantially in the United States." Telomolecular will ensure all obligations of these provisions are met.
6 DILIGENCE
6.1 Milestones. Telomolecular will diligently develop, manufacture, and sell Licensed Product and will diligently develop markets for Licensed Product. In addition, Telomolecular will meet the milestones shown in Appendix A, and notify Stanford in writing as each milestone is met,
6.2 Progress Report. By March 1 of each year, Telomolecular will submit a written annual report to Stanford covering the preceding calendar year. The report will include information sufficient to enable Stanford to satisfy reporting requirements of the U.S. Government and for Stanford to ascertain progress by Telomolecular toward meeting this Agreement's diligence requirements. Each report will describe, where relevant: Telomolecular's progress toward commercialization of Licensed Product, including work completed, key scientific discoveries, summary" of work-in-progress, current schedule of anticipated events or milestones, market plans for introduction of Licensed Product, and significant corporate transactions involving Licensed Product.
6.3 Clinical Trial Notice. Telomolecular will notify' Stanford prior to commencing any clinical trials at Stanford.
7 ROYALTIES
7.1 Issue Royalty. Telomolecular will pay to Stanford a noncreditable, nonrefundable license issue royalty of $75,000 upon signing this Agreement.
7.2 License Maintenance Fee. Beginning August 1,2007 and each August 1st thereafter, Telomolecular will pay Stanford a yearly license maintenance fee as follows:
First anniversary -$50,000
Second anniversary -$60,000
Third anniversary and thereafter-$75,000. Yearly maintenance payments are nonrefundable, but they are creditable each year as described in Section 7.10.
7.3 Milestone Payments. Telomolecular will pay Stanford the following milestone payments:
a) $100,000 upon selection of a lead candidate to begin preclinical testing.
b) $135,000 upon the filing of an IND.
c) $200,000 upon initiation of Phase II.
d) $300,000 upon initiation of Phase III.
e) $500,000 upon the receipt of an NDA.
7.4 Earned Royalty. Telomolecular will pay Stanford earned royalties on Net Sales as follows:
6% of Net Sales of Licensed Product - sales equal to or exceeding S200M;
5% of Net Sales of Licensed Product - sales equal to S100M and less than $200M; and
4% of Net Sales of Licensed Product - sales less than $100M.
7.5 Creditable Payments. The license maintenance fee for a year may be offset against earned royalty payments due on Net Sales occurring in that year. For example:
(A) if Telomolecular pays Stanford a $ 10 maintenance payment for year Y, and according to Section 7.7 $15 in earned royalties are due Stanford for Net Sales in year Y, Telomolecular will only need to pay Stanford an additional $5 for that year's earned royalties.
(B) if Telomolecular pays Stanford a $10 maintenance payment for year Y, and according to Section 7.7 $3 in earned royalties are due Stanford for Net Sales in year Y, Telomolecular will not need to pay Stanford any earned royalty payment for that year. Telomolecular will not be able to offset the remaining $7 against a future year's earned royalties.
7-6 Obligation to Pay Royalties. A royalty is due Stanford under this Agreement for any activity conducted under the licenses granted. For convenience's sake, the amount of that royalty is calculated using Net Sales. Nonetheless, if certain Licensed Products are made, used, imported, or ofiered for sale before the date this Agreement terminates, and those Licensed Products are sold after the termination date, Telomolecular will pay Stanford an earned royalty for its exercise of rights based on the Net Sales of those Licensed Products.
7.7 Currency. Telomolecular will calculate the royalty on sales in currencies other than U.S. Dollars using the appropriate foreign exchange rate for the currency quoted by the Bank of America (San Francisco) foreign exchange desk, on the close of business on the last banking day of each calendar quarter. Telomolecular will make royalty payments to Stanford in U.S. Dollars.
7.8 Non-U.S. Taxes. Telomoleculars will pay all non-U.S. taxes related to royalty payments. These payments are not deductible from any payments due to Stanford.
7.9 Interest. Any payments not made when due will bear interest at the lower of (a) the Prime Rate published in the Wall Street Journal plus 200 basis points or (b) the maximum rate permitted by law.
8 ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
8.1 Quarterly Earned Royalty Payment and Report Beginning with the first sale of a Licensed Product, Telomolecular will submit to Stanford a written report (even if there are no sales) and an earned royalty payment within 30 days after the end of each calendar quarter. This report will be in the form of Appendix B and will state the number, description, and aggregate Net Sales of Licensed Product during the completed calendar quarter. With each report Telomolecular will include any earned royalty payment due Stanford for the completed calendar quarter (as calculated under Section 7.4).
8.2 Termination Report. Telomolecular will pay to Stanford all applicable royalties and submit to Stanford a written report within 90 days after the license terminates. Telomolecular will continue to submit earned royalty payments and reports to Stanford after the license terminates, until all Licensed Products made or imported under the license have been sold.
8.3 Accounting. Telomolecular will maintain records showing manufacture, importation, sale, and use of a Licensed Product for 7 years from the date of sale of that Licensed Product. Records will include general-ledger records showing cash receipts and expenses, and records that include: production records, customers, invoices, serial numbers, and related information in sufficient detail to enable Stanford to determine the royalties payable under this Agreement.
8.4 Audit by Stanford. Telomolecular will allow Stanford or its designee to examine Telomolecular5 s records to verify payments made by Telomolecular under this Agreement.
8.5 Paying for Audit. Stanford will pay for any audit done under Section 8.4. But if the audit reveals an underreporting of earned royalties due Stanford of 5% or more for the period being audited. Telomolecular will pay the audit costs.
8.6 Self-audit. Telomolecular will conduct an independent audit of sales and royalties at least every 2 years if annual sales of Licensed Product are over $5,000,000. The audit will address, at a minimum, the amount of gross sales by or on behalf of Telomolecular during the audit period, the amount of funds owed to Stanford under
this Agreement, and whether the amount owed has been paid to Stanford and is reflected in the records of the Telomolecular. Telomolecular will submit the auditor's report promptly to Stanford upon completion. Telomolecular will pay for the entire cost of the audit
9 EXCLUSIONS AND NEGATION OF WARRANTIES
9.1 Negation of Warranties. Stanford provides Telomolecular the rights granted in tills Agreement AS IS and WITH ALL FAULTS. Stanford makes no representations and extends no warranties of any kind, either express or implied. Among other things, Stanford disclaims any express or implied warranty:
(A) of merchantability, of fitness for a particular purpose,
(B) of non-infringement or
(C) arising out of any course of dealing.
9.2 No Representation of Licensed Patent. Telomolecular also acknowledges that Stanford does not represent or warrant:
(A) the validity or scope of any Licensed Patent, or
(B) that the exploitation of Licensed Patent will be successful.
10 INDEMNITY
10.1 Indemnification. Telomolecular will indemnify, hold harmless, and defend all Stanford Indemnitees against any claim of any kind arising out of or related to the exercise of any rights granted Telomolecular under this Agreement or the breach of this Agreement by Telomolecular.
10.2 No Indirect Liability. Stanford is not liable for any special, consequential, lost profit, expectation, punitive or other indirect damages in connection with any claim arising out of or related to this Agreement, whether grounded in tort (including negligence), strict liability, contract, or otherwise.
10.3 Workers' Compensation. Telomolecular will comply with all statutory workers' compensation and employers' liability requirements for activities performed under this Agreement.
10.4 Insurance. During the term of this Agreement, Telomolecular will maintain Comprehensive General Liability Insurance, including Product Liability Insurance, with a reputable and financially secure insurance carrier to cover the activities of Telomolecular and its sublicensees. The insurance will provide minimum limits of liability of $5,000,000 and will include all Stanford Indemnitees as additional insureds. Insurance must cover claims incurred, discovered, manifested, or made during or after the expiration of this Agreement and must be placed with carriers with ratings of at least A- as rated by A.M. Best. Within 15 days of the Effective Date of this Agreement, Telomolecular will furnish a Certificate of Insurance
evidencing primary coverage and additional insured requirements. Telomolecular will provide to Stanford 30 days prior written notice of cancellation or material change to this insurance coverage. Telomolecular will advise Stanford in writing that it maintains excess liability coverage (following form) over primary insurance for at least the minimum limits set forth above. All insurance of Telomolecular will be primary coverage; insurance of Stanford and Stanford Hospitals and Clinics will be excess and noncontributory.
11 MARKING
Before any Licensed Patent issues, Telomolecular will mark Licensed Product with the words "Patent Pending." Otherwise, Telomolecular will mark Licensed Product with the number of any issued Licensed Patent.
12 STANFORD NAMES AND MARKS
Telomolecular will not identify Stanford in any promotional statement, or otherwise use the name of any Stanford faculty member, employee, or student, or any trademark, xxxxxx xxxx, trade name, or symbol of Stanford or Stanford Hospitals and Clinics, including the Stanford name, unless Telomolecular has received Stanford's prior written consent. Permission may be withheld at Stanford's sole discretion.
13 PROSECUTION AND PROTECTION OF PATENTS
13.1 Patent Prosecution. Following the Effective Date and subject to Stanford's approval, Telomolecular will be responsible for preparing, filing, and prosecuting broad patent claims for Stanford's and the VA's benefit in the Licensed Territory7 and for maintaining all Licensed Patents. Telomolecular will notify Stanford before taking any substantive actions in prosecuting the claims, and Stanford will have final approval on how to proceed with any such actions. To aid Telomolecular in this process, Stanford will provide information, execute and deliver documents and do other acts as Telomolecular shall reasonably request from time to time. Telomolecular will reimburse Stanford for Stanford's reasonable costs incurred in complying with such requests. Stanford and Telomolecular agree to the terms detailed in Appendix C and agree to have Appendix C fully executed by the appropriate parties upon execution of this Agreement.
13.2 Patent Costs. Within 30 days after receiving a statement from Stanford, Telomolecular will reimburse Stanford:
(A) For all past expenses that are approximately $20,235.23 to offset Licensed Patent's patenting expenses incurred by Stanford before the Effective Date. First statement to be delivered no earlier than March 7th 2006; and
(B) for all Licensed Patent's patenting expenses incurred by Stanford after the Effective Date.
13.3 Infringement Procedure. Telomolecular will promptly notify Stanford if it believes a third party infringes a Licensed Patent. During the Exclusive term of this Agreement only, Telomolecular may have the right to institute a suit against this third party as provided in Sections 13.4 - 13.8.
;13.4 Stanford Suit. Stanford has the first right to institute suit, and may name Telomolecular as a party for standing purposes. If Stanford decides to institute suit, it will notify Telomolecular in writing. If Telomolecular does not notify Stanford in writing that it desires to jointly prosecute the suit within 15 days after the date of the notice, Telomolecular will assign arid hereby does assign to Stanford all rights, causes of action, and damages resulting from the alleged infringement. Stanford will bear the entire cost of the litigation and will retain the entire amount of any recovery or settlement.
13.5 Joint Suit. If Stanford and Telomolecular so agree, they may institute suit jointly. If so, they will:
(A) Prosecute the suit in both their names;
(B) Bear the out-of-pocket costs equally;
(C) Share any recovery or settlement equally; and
(D) Agree how they will exercise control over the action.
13.6 Telomolecular Suit. If neither Section 13.4 nor 13-5 apply, Telomolecular may institute and prosecute a suit so long as it conforms with the requirements of this Section. Telomolecular will diligently pursue the suit and Telomolecular will bear the entire cost of the litigation, including expenses and counsel fees incurred by Stanford. Telomolecular will keep Stanford reasonably apprised of all developments in the suit, and will seek Stanford's input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. Telomolecular will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects Stanford's interests without Stanford's prior written consent. Stanford may be named as a party only if
(A) Telomolecular's and Stanford's respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(B) Stanford is not the first named party in the action; and
(C) the pleadings and any public statements about the action state that Telomolecular is pursuing the action and that Telomolecular has the right to join Stanford as a party.
13.7 Recovery. If Telomolecular sues under Section 13.6, then any recovery in excess of any unrecovered litigation costs and fees will be shared with Stanford as follows:
(A) Any payment for past sales will be deemed Xet Sales, and Telomolecular will pay Stanford royalties at the rates specified in Section 7.6;
(B) Any payment for future sales will be deemed a payment under a sublicense, and royalties will be shared as specified in Article 4.
(C) Telomolecular and Stanford will negotiate in good faith appropriate compensation to Stanford for any non-cash settlement or non-cash cross-license.
13.8 Abandonment of Suit If either Stanford or Telomolecular commences a suit and then wants to abandon the suit, it will give timely notice to the other party. The other party may continue prosecution of the suit after Stanford and Telomolecular agree on the sharing of expenses and any recovery in the suit.
14 TERMINATION
14.1 Termination by Telomolecular. Ielomolecular may termmate this Agreement by giving Stanford written notice at least 30 days in advance of the effective date of termination selected by Telomolecular.
14.2 Termination by Stanford.
(A) Stanford may also terminate this Agreement if Telomolecular:
(1) is delinquent on any report or payment;
(2) is not diligentiy developing and commercializing Licensed Product;
(3) misses a milestone described in Appendix A;
(4) is in breach of any provision; or
(5) provides any false report.
(B) Termination under this Section 14.2 will take effect 30 days after written notice by Stanford unless Telomolecular remedies the problem in that 30- day period.
14.3 Surviving Provisions. Surviving any termination or expiration are:
(A) Telomolecular's obligation to pay royalties accrued or accruable;
(B) any claim of Telomolecular or Stanford, accrued or to accrue, because of any breach or default by the other party; and
(C) the provisions of Articles 8, 9, and 10 and any other provision that by its nature is intended to survive.
15 ASSIGNMENT
15.1 Permitted Assignment by Telomolecular. Subject to Section 15.3, Telomolecular may assign this Agreement as part of a sale, regardless of whether such a sale
occurs through an asset sale, stock sale, merger or other combination, or any other transfer of:
(A) Telomolecular's entire business; or
(B) that part of Telomolecular's business that exercises all rights granted under this Agreement,
15.2 Any Other Assignment by Telomolecular. Any other attempt to assign this Agreement by Telomolecular is null and void.
15.3 Conditions of Assignment. Prior to any assignment, the following conditions must be met:
(A) Telomolecular must give Stanford 30 days prior written notice of the assignment, including the new assignee's contact information; and
(B) the new assignee must agree in writing to Stanford to be bound by this Agreement; and
(C) Stanford must have received a $50,000 assignment fee,
15.4 After the Assignment. Upon a permitted assignment of this Agreement pursuant to Article 15, Telomolecular will be released of liability under this Agreement and the term 'Telomolecular" in this Agreement will mean the assignee.
16 ARBITRATION
16.1 Dispute Resolution by Arbitration. Any dispute between the parties regarding any payments made or due under this Agreement will be settled by arbitration in accordance with the JAMS Arbitration Rules and Procedures. There parties are not obligated to settle any other dispute that may arise under this Agreement by arbitration.
16.2 Request for Arbitration. Either party may request such arbitration. Stanford and Telomolecular will mutually agree in writing on a third party arbitrator within 30 days of the arbitration request. The arbitrator's decision will be final and nonappealable and may be entered in any court having jurisdiction.
16.3 Discovery. The parties will be entitled to discovery as if the arbitration were a civil suit in the California Superior Court. The arbitrator may limit the scope, time, and issues involved in discovery.
16.4 Place of Arbitration. The arbitration will be held in Stanford, California unless the parties mutually agree in writing to another place.
17 NOTICES
All notices under this Agreement are deemed fully given when written, addressed, and sent as follows:
All general notices to Telomolecular are mailed to:
Telomolecular
0000 Xxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Art. Xxxx Xxxxx
All financial invoices to Telomolecular (i.e., accounting contact) are e-mailed to:
Telomolecular
0000 Xxxxxx Xxxxxx
Xxxx, Xxxx, XX 00000
All progress report invoices to Telomolecular (i.e., technical contact) are e-mailed to:
xxxxxx@Xxxxxxxxxxxxx.xxx
xxxxxx@000xxxx.xxx
xxxxxxx@xxxxxxxxxxxx.xxx
All general notices to Stanford are e-mailed or mailed to:
Office of Technology Licensing
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-1106
xxxx@X0xxxxxx.Xxxxxxxx.xxx
All payments to Stanford are mailed to:
Stanford University
Office of Technology Licensing
Department #44439
P.O. Box 44000
San Francisco, CA 94144-4439
All progress reports to Stanford are e-mailed or mailed to:
Office of Technology Licensing
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000 xxxx@xxxxxxx.Xxxxxxxx.xxx
Eitlier party may change its address with written notice to the other party.
18 MISCELLANEOUS
18.1 Waiver. No term of this Agreement can be waived except by the written consent of the party waiving compliance.
18.2 Choice of Law. This Agreement and any dispute arising under it is governed by the laws of the State of California, United States of America, applicable to agreements negotiated, executed, and performed within California.
18.3 Exclusive Forum. The state and federal courts having jurisdiction over Stanford, California, United States of America, provide the exclusive forum for any court action between the parties relating to this Agreement. Telomolecular submits to the jurisdiction of such courts, and waives any claim that such a court lacks jurisdiction over Telomolecular or constitutes an inconvenient or improper forum.
18.4 Headings. No headings in this Agreement affect its interpretation.
18.5 Electronic Copy. The parties to this document agree that a copy of the original signature (including an electronic copy) may be used for any and all purposes for which the original signature may have been used. The parties further waive any right to challenge the admissibility or authenticity of this document in a court of law based solely on the absence of an original signature
The parties execute this Agreement in duplicate originals by their duly authorized officers or representatives.
THE BOARD OF DIVERSITY TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY
Signature _
Name Xxxxxxxxx Xx
Title Director, Office of Technology Licensing
Date jLdtj H. 20OC
TELOMOLECULAR, Inc.
Signature
Name
Title
Date
APPENDIX A
Stanford may either terminate or modify the sublicense agreement to nonexclusive if Telomolecular fails to achieve the following milestones (the "Milestones"):
a) Transfer the technology - by end of year 1;
b) Validate targets and begin drug screens - by end of year 2;
c) Develop lead compounds and being preclinical testing - by end of year 3;
d) Complete preclinical tests on lead - by end of Year 4
e) Prepare and file an IND - by end of year 5
f) Complete Phase I - by end of year 6
g) Complete Phase II - by end of year 8
h) Complete Phase III - by end of year 10
i) Submit an NDA - by end of year 11
j) First commercial sale - by end of year 12
APPENDIX B
SAMPLE REPORTING FORM
Stanford Docket No. S -
This report is provided pursuant to the license agreement between Stanford University and (Telomolecular Name) License Agreement Effective Date:
Report Covering Period
Yearly Maintenance Fee
$
Number of Sublicenses Executed
Net Sales
$
Royalty Calculation
Royalty Subtotal
$
Credit
$
Royalty Due
$
Comments:
APPENDIX C
CLIENT AND BILLING AGREEMENT THE BOARD OF TRUSTEES OF THE XXXXXXXX XXXXXX IUNIOR UNIVERSITY ("STANFORD"); AND , A CORPORATION OF THE STATE OF , WITH A PRINCIPAL PLACE OF BUSINESS AT , ("COMPANY"); HAVE AGREED TO USE THE LAW FIRM OF ("FIRM") TO PREPARE, FILE AND PROSECUTE THE PENDING PATENT APPLICATIONS LISTED IN EXHIBIT A ATTACHED HERETO AND MAINTAIN THE PATENTS THAT ISSUE THEREON ("PATENTS"). WHEREAS, FIRM DESIRES TO PERFORM THE LEGAL SERVICES RELATED TO OBTAINING AND MAINTAINING THE PATENTS; AND WHEREAS, STANFORD REMAINS THE CLIENT OF THE FIRM; AND WHEREAS, COMPANY IS THE TELOMOLECULAR OF STANFORD'S INTEREST IN THE PATENTS, NOW THEREFORE. IN CONSIDERATION OF THE PREMISES AND THE FAITHFUL PERFORMANCE OF THE CONVENANTS HEREIN CONTAINED, IT IS AGREED:
I. FIRM CAN INTERACT DIRECTLY WITH COMPANY ON ALL PATENT PROSECUTION MATTERS RELATED TO THE PATENTS AND WILL COPY STANFORD AND THE U.S. DEPARTMENT OF VETERANS AFFAIRS ("VA") ON ALL CORRESPONDENCE. STANFORD WILL BE NOTIFIED BY FIRM PRIOR TO ANY SUBSTANTIVE ACTIONS AND WILL HAVE FINAL APPROVAL ON PROCEEDING WITH SUCH ACTIONS.
2. COMPANY IS RESPONSIBLE FOR THE PAYMENT OF ALL CHARGES AND FEES BY FIRM RELATED TO THE PROSECUTION AND MAINTENANCE OF THE PATENTS. FIRM WILL INVOICE COMPANY AND MUST COPY STANFORD ON ALL INVOICES. COMPANY MUST PAY FIRM DIRECTLY FOR ALL CHARGES AND MUST COPY STANFORD ON EACH PAYMENT.
3. NOTICES AND COPIES OF ALL CORRESPONDENCE SHOULD BE SENT TO THE FOLLOWING:
To COMPANY:
Name, Title Company Name Address
To STANFORD:
Name
Office of Technology Licensing
Stanford University
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000
To FIRM:
Attorney Name Law Firm Address
To VA:
Director (122)
Technology Transfer Program Office of Research and Development U.S. Department of Veterans Affairs 0 00 Xxxxxxx Xxxxxx X. X. Washington, D.C, 20420
ACCEPTED AND AGREED TO: STANFORD
By:
Name: Xxxxxxxxx Xx Title: Director
Date:
Company Name
By: _ Name: Title:
Date:
Law Firm Name
By: _ Name:
Title:
Date:
0000 XX XXXXXX XXXX * XXXX XXXX, XX 00000-1106 (650! 000-0000 * FAX (000) 000-0000
Ally 18,2006
Xxxx Xxxxx
CEO Telmolecular, Inc.
0000 Xxxxxx Xxx. Fair Oaks, CA 95628
Re: Signature copies, Cases S97-099 and S02-231
Dear Xxxx:
Enclosed are two sets of two agreements for the Notch 1 and the Mitofusins technologies. Please sign and return one copy of each agreement to my attention.
Xxxxx X. XXxx Licensing Associate
Sincerely,
xxxx://xxx.xxxxxxxx.xxx EXCLUSIVE AGREEMENT
This Agreement between THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY ("Stanford"), an institution of higher education having powers under the laws of the State of California, and Telomoleeular, Inc. ("Telomolecular"), a corporation having a principal place of business at 0000 Xxxxxx Xxxxxx, Xxxx Xxxx, XX 00000, is effective on the 17 day July 2007 ("Effective Date").
1 BACKGROUND
Stanford has an assignment of an invention that provides a novel class of targets for treatment of degenerative disease. It is entitled " Use of Mitofusins in Mitochondrial Degenerative Diseases/' was invented in the laboratory of Dr.Xxxxxxxx Xxxxxx, and is described in Stanford Docket S97-099. The invention was made in the course of research supported by the NIH. Stanford wants to have the invention perfected and marketed as soon as possible so that resulting products may be available for public use and benefit.
2 DEFINITIONS
2.1 "Exclusive" means that, subject to Articles 3 and 5; Stanford will not grant further licenses under the Licensed Patents in the Licensed Field of Use in the Licensed Territory.
2.2 "Licensed Field of Use" means the any use for therapeutics, ameolation, or prevention of disease and associated internal research and drug screening activities .
2.3 "Licensed Patent" means Stanford's U.S. Patent Application, Serial Number 60/048,961, filed June 6, 1997 and U.S. CIP Patent Application, Serial Number 09/413,285, filed October 6,1999; any foreign patent application corresponding thereto, and any divisional, continuation, or reexamination application, and each patent that issues or reissues from any of these patent applications. Any claim of an unexpired Licensed Patent is presumed to be valid unless it has been held to be invalid by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken. "Licensed Patent" excludes any future continuation-in-part (CIP) patent application or patent except the CIP included above .
2.4 "Licensed Product" means a product or part of a product in the Licensed Field of Use where the making, using, importing or selling of which, absent this license, infringes, induces infringement, or contributes to infringement of a Licensed Patent; or
2.5 "Licensed Territory" means worldwide.
Page. 1 of 20
2.6 "Net Sales" means all gross revenue derived by Telomolecular or a sublicensee from Licensed Product. Net Sales excludes the following items (but only as they pertain to the making, using, importing or selling of Licensed Products, are included in gross revenue, and are separately billed):
(A) import, export, excise and sales taxes, and custom duties;
(B) costs of insurance, packing, and transportation from the place of manufacture to the customer's premises or poiot of installation;
(C) cosls of installation at the place of use; and
(D) credit for returns, allowances, or trades.
2.7 "Stanford Indemnitees" means Stanford and Stanford Hospitals and Clinics, and their respective trustees, officers, employees, students, and agents.
3 GRANT
3.1 Grant. Subject to the terms and conditions of this Agreement, Stanford grants Telomolecular an Exclusive license under the Licensed Patent in the Licensed Field of Use to make, have made, use. import, offer to sell and sell Licensed Product in the Licensed Territory.
3.2 Retained Rights. Stanford retains the right, on behalf of itself and all other nonprofit academic research institutions, to practice the Licensed Patent for any nonprofit purpose, including sponsored research and collaborations. Telomolecular agrees that notwithstanding any other provision of this Agreement, it has no right to enforce the Licensed Patent against any such institution. Stanford and any such other institution has the right to publish any information included in the Licensed Patent.
3.3 Specific Exclusion. Stanford does not:
(A) grant to Telomolecular any other licenses, implied or otherwise, to any patents or other rights of Stanford other than those rights granted under Licensed Patent, regardless of whether the patents or other rights are dominant or subordinate to any Licensed Patent, or are required to exploit any Licensed Patent;
(B) commit to Telomolecular to bring suit against third parties for infringement, except as described in Article 13; and
(C) agree to furnish to Telomolecular any technology or technological information or to provide Telomolecular with any assistance.
4 SUBLICENSING
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4.1 Permitted Sublicensing. Telomolecular may grant sublicenses in the Licensed Held of Use.
4.2 Required Sublicensing. If Telomolecular is unable or unwilling to serve or develop a potential market or market territory for which there is a company willing to be a sublicense, Telomolecular will, at Stanford's request, negotiate in good faith a sublicense with any such sublicensee.
4.3 Sublicense Requirements. Any sublicense:
(A) is subject to this Agreement;
(B) will reilect that any sublicensee will not further sublicense;
(C) will expressly include the provisions of Articles 8, 9, and 10 for the benefit of Stanford; and
(D) will require the transfer of all obligations, including the payment of royalties specified in the sublicense, to Stanford or its designee, if this Agreement is terminated.
4.4 Copy of Sublicenses. Telomolecular will submit to Stanford a copy of each sublicense,
4.5 Sharing of Sublicensing Income* Telomolecular will pay to Stanford 30% of any upfront payments from a sublicense as additional royalty.
4.6 Royalty-Free Sublicenses. If Telomolecular pays all royalties due Stanford from a sublicensee's Net Sales, Telomolecular may grant that sublicensee a royalty-free or non-cash:
(A) sublicense or
(B) cross-license.
5 GOVERNMENT RIGHTS
This Agreement is subject to Title 35 Sections 200-204 of the United States Code. Among other things, these provisions provide the United States Government with nonexclusive rights in the Licensed Patent. They also impose the obligation that Licensed Product sold or produced in the United States be "manufactured substantially in the United States." Telomolecular will ensure all obligations of these provisions are met.
6 DILIGENCE
6.1 Milestones. Telomolecular will diligently develop, manufacture, and sell Licensed Product and will diligently develop markets for Licensed Product. In addition, Telomolecular will meet the milestones shown in Appendix A, and notify Stanford in writing as each milestone is met,
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6.2 Progress Report. By March 1 of each year, Telomolecular will submit a written annual report to Stanford covering the preceding calendar year. The report will include information sufficient to enable Stanford to satisfy reporting requirements of the U.S. Government and for Stanford to ascertain progress by Telomolecular toward meeting this Agreement's diligence requirements. Each report will describe, where relevant: Telomolecular's progress toward commercialization of Licensed Product, including work completed, key scientific discoveries, summary" of work-in-progress, current schedule of anticipated events or milestones, market plans for introduction of Licensed Product, and significant corporate transactions involving Licensed Product.
6.3 Clinical Trial Notice. Telomolecular will notify' Stanford prior to commencing any clinical trials at Stanford.
7 ROYALTIES
7.1 Issue Royalty. Telomolecular will pay to Stanford a noncreditable, nonrefundable license issue royalty of $75,000 upon signing this Agreement.
7.2 License Maintenance Fee. Beginning August 1,2007 and each August 1st thereafter, Telomolecular will pay Stanford a yearly license maintenance fee as follows:
First anniversary -$50,000
Second anniversary -$60,000
Third anniversary and thereafter-$75,000. Yearly maintenance payments are nonrefundable, but they are creditable each year as described in Section 7.10.
7.3 Milestone Payments. Telomolecular will pay Stanford the following milestone payments:
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a) $100,000 upon selection of a lead candidate to begin preclinical testing.
b) $135,000 upon the filing of an IND.
c) $200,000 upon initiation of Phase II.
d) $300,000 upon initiation of Phase III.
e) $500,000 upon the receipt of an NDA.
7.4 Earned Royalty. Telomolecular will pay Stanford earned royalties on Net Sales as follows:
6% of Net Sales of Licensed Product - sales equal to or exceeding S200M;
5% of Net Sales of Licensed Product - sales equal to S100M and less than $200M; and
4% of Net Sales of Licensed Product - sales less than $100M.
7.5 Creditable Payments. The license maintenance fee for a year may be offset against earned royalty payments due on Net Sales occurring in that year. For example:
(A) if Telomolecular pays Stanford a $ 10 maintenance payment for year Y, and according to Section 7.7 $15 in earned royalties are due Stanford for Net Sales in year Y, Telomolecular will only need to pay Stanford an additional $5 for that year's earned royalties.
(B) if Telomolecular pays Stanford a $10 maintenance payment for year Y, and according to Section 7.7 $3 in earned royalties are due Stanford for Net Sales in year Y, Telomolecular will not need to pay Stanford any earned royalty payment for that year. Telomolecular will not be able to offset the remaining $7 against a future year's earned royalties.
7-6 Obligation to Pay Royalties. A royalty is due Stanford under this Agreement for any activity conducted under the licenses granted. For convenience's sake, the amount of that royalty is calculated using Net Sales. Nonetheless, if certain Licensed Products are made, used, imported, or ofiered for sale before the date this Agreement terminates, and those Licensed Products are sold after the termination date, Telomolecular will pay Stanford an earned royalty for its exercise of rights based on the Net Sales of those Licensed Products.
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7.7 Currency. Telomolecular will calculate the royalty on sales in currencies other than U.S. Dollars using the appropriate foreign exchange rate for the currency quoted by the Bank of America (San Francisco) foreign exchange desk, on the close of business on the last banking day of each calendar quarter. Telomolecular will make royalty payments to Stanford in U.S. Dollars.
7.8 Non-U.S. Taxes. Telomoleculars will pay all non-U.S. taxes related to royalty payments. These payments are not deductible from any payments due to Stanford.
7.9 Interest. Any payments not made when due will bear interest at the lower of (a) the Prime Rate published in the Wall Street Journal plus 200 basis points or (b) the maximum rate permitted by law.
8 ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
8.1 Quarterly Earned Royalty Payment and Report Beginning with the first sale of a Licensed Product, Telomolecular will submit to Stanford a written report (even if there are no sales) and an earned royalty payment within 30 days after the end of each calendar quarter. This report will be in the form of Appendix B and will state the number, description, and aggregate Net Sales of Licensed Product during the completed calendar quarter. With each report Telomolecular will include any earned royalty payment due Stanford for the completed calendar quarter (as calculated under Section 7.4).
8.2 Termination Report. Telomolecular will pay to Stanford all applicable royalties and submit to Stanford a written report within 90 days after the license terminates. Telomolecular will continue to submit earned royalty payments and reports to Stanford after the license terminates, until all Licensed Products made or imported under the license have been sold.
8.3 Accounting. Telomolecular will maintain records showing manufacture, importation, sale, and use of a Licensed Product for 7 years from the date of sale of that Licensed Product. Records will include general-ledger records showing cash receipts and expenses, and records that include: production records, customers, invoices, serial numbers, and related information in sufficient detail to enable Stanford to determine the royalties payable under this Agreement.
8.4 Audit by Stanford. Telomolecular will allow Stanford or its designee to examine Telomolecular5 s records to verify payments made by Telomolecular under this Agreement.
8.5 Paying for Audit. Stanford will pay for any audit done under Section 8.4. But if the audit reveals an underreporting of earned royalties due Stanford of 5% or more for the period being audited. Telomolecular will pay the audit costs.
8.6 Self-audit. Telomolecular will conduct an independent audit of sales and royalties at least every 2 years if annual sales of Licensed Product are over $5,000,000. The audit will address, at a minimum, the amount of gross sales by or on behalf of Telomolecular during the audit period, the amount of funds owed to Stanford under
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this Agreement, and whether the amount owed has been paid to Stanford and is reflected in the records of the Telomolecular. Telomolecular will submit the auditor's report promptly to Stanford upon completion. Telomolecular will pay for the entire cost of the audit
9 EXCLUSIONS AND NEGATION OF WARRANTIES
9.1 Negation of Warranties. Stanford provides Telomolecular the rights granted in tills Agreement AS IS and WITH ALL FAULTS. Stanford makes no representations and extends no warranties of any kind, either express or implied. Among other things, Stanford disclaims any express or implied warranty:
(A) of merchantability, of fitness for a particular purpose,
(B) of non-infringement or
(C) arising out of any course of dealing.
9.2 No Representation of Licensed Patent. Telomolecular also acknowledges that Stanford does not represent or warrant:
(A) the validity or scope of any Licensed Patent, or
(B) that the exploitation of Licensed Patent will be successful.
10 INDEMNITY
10.1 Indemnification. Telomolecular will indemnify, hold harmless, and defend all Stanford Indemnitees against any claim of any kind arising out of or related to the exercise of any rights granted Telomolecular under this Agreement or the breach of this Agreement by Telomolecular.
10.2 No Indirect Liability. Stanford is not liable for any special, consequential, lost profit, expectation, punitive or other indirect damages in connection with any claim arising out of or related to this Agreement, whether grounded in tort (including negligence), strict liability, contract, or otherwise.
10.3 Workers' Compensation. Telomolecular will comply with all statutory workers' compensation and employers' liability requirements for activities performed under this Agreement.
10.4 Insurance. During the term of this Agreement, Telomolecular will maintain Comprehensive General Liability Insurance, including Product Liability Insurance, with a reputable and financially secure insurance carrier to cover the activities of Telomolecular and its sublicensees. The insurance will provide minimum limits of liability of $5,000,000 and will include all Stanford Indemnitees as additional insureds. Insurance must cover claims incurred, discovered, manifested, or made during or after the expiration of this Agreement and must be placed with carriers with ratings of at least A- as rated by A.M. Best. Within 15 days of the Effective Date of this Agreement, Telomolecular will furnish a Certificate of Insurance
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evidencing primary coverage and additional insured requirements. Telomolecular will provide to Stanford 30 days prior written notice of cancellation or material change to this insurance coverage. Telomolecular will advise Stanford in writing that it maintains excess liability coverage (following form) over primary insurance for at least the minimum limits set forth above. All insurance of Telomolecular will be primary coverage; insurance of Stanford and Stanford Hospitals and Clinics will be excess and noncontributory.
11 MARKING
Before any Licensed Patent issues, Telomolecular will mark Licensed Product with the words "Patent Pending." Otherwise, Telomolecular will mark Licensed Product with the number of any issued Licensed Patent.
12 STANFORD NAMES AND MARKS
Telomolecular will not identify Stanford in any promotional statement, or otherwise use the name of any Stanford faculty member, employee, or student, or any trademark, xxxxxx xxxx, trade name, or symbol of Stanford or Stanford Hospitals and Clinics, including the Stanford name, unless Telomolecular has received Stanford's prior written consent. Permission may be withheld at Stanford's sole discretion.
13 PROSECUTION AND PROTECTION OF PATENTS
13.1 Patent Prosecution. Following the Effective Date and subject to Stanford's approval, Telomolecular will be responsible for preparing, filing, and prosecuting broad patent claims for Stanford's and the VA's benefit in the Licensed Territory7 and for maintaining all Licensed Patents. Telomolecular will notify Stanford before taking any substantive actions in prosecuting the claims, and Stanford will have final approval on how to proceed with any such actions. To aid Telomolecular in this process, Stanford will provide information, execute and deliver documents and do other acts as Telomolecular shall reasonably request from time to time. Telomolecular will reimburse Stanford for Stanford's reasonable costs incurred in complying with such requests. Stanford and Telomolecular agree to the terms detailed in Appendix C and agree to have Appendix C fully executed by the appropriate parties upon execution of this Agreement.
13.2 Patent Costs. Within 30 days after receiving a statement from Stanford, Telomolecular will reimburse Stanford:
(A) For all past expenses that are approximately $20,235.23 to offset Licensed Patent's patenting expenses incurred by Stanford before the Effective Date. First statement to be delivered no earlier than March 7th 2006; and
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(B) for all Licensed Patent's patenting expenses incurred by Stanford after the Effective Date.
13.3 Infringement Procedure. Telomolecular will promptly notify Stanford if it believes a third party infringes a Licensed Patent. During the Exclusive term of this Agreement only, Telomolecular may have the right to institute a suit against this third party as provided in Sections 13.4 - 13.8.
;13.4 Stanford Suit. Stanford has the first right to institute suit, and may name Telomolecular as a party for standing purposes. If Stanford decides to institute suit, it will notify Telomolecular in writing. If Telomolecular does not notify Stanford in writing that it desires to jointly prosecute the suit within 15 days after the date of the notice, Telomolecular will assign arid hereby does assign to Stanford all rights, causes of action, and damages resulting from the alleged infringement. Stanford will bear the entire cost of the litigation and will retain the entire amount of any recovery or settlement.
13.5 Joint Suit. If Stanford and Telomolecular so agree, they may institute suit jointly. If so, they will:
(A) Prosecute the suit in both their names;
(B) Bear the out-of-pocket costs equally;
(C) Share any recovery or settlement equally; and
(D) Agree how they will exercise control over the action.
13.6 Telomolecular Suit. If neither Section 13.4 nor 13-5 apply, Telomolecular may institute and prosecute a suit so long as it conforms with the requirements of this Section. Telomolecular will diligently pursue the suit and Telomolecular will bear the entire cost of the litigation, including expenses and counsel fees incurred by Stanford. Telomolecular will keep Stanford reasonably apprised of all developments in the suit, and will seek Stanford's input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. Telomolecular will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects Stanford's interests without Stanford's prior written consent. Stanford may be named as a party only if
(A) Telomolecular's and Stanford's respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(B) Stanford is not the first named party in the action; and
(C) the pleadings and any public statements about the action state that Telomolecular is pursuing the action and that Telomolecular has the right to join Stanford as a party.
13.7 Recovery. If Telomolecular sues under Section 13.6, then any recovery in excess of any unrecovered litigation costs and fees will be shared with Stanford as follows:
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(A) Any payment for past sales will be deemed Xet Sales, and Telomolecular will pay Stanford royalties at the rates specified in Section 7.6;
(B) Any payment for future sales will be deemed a payment under a sublicense, and royalties will be shared as specified in Article 4.
(C) Telomolecular and Stanford will negotiate in good faith appropriate compensation to Stanford for any non-cash settlement or non-cash cross-license.
13.8 Abandonment of Suit If either Stanford or Telomolecular commences a suit and then wants to abandon the suit, it will give timely notice to the other party. The other party may continue prosecution of the suit after Stanford and Telomolecular agree on the sharing of expenses and any recovery in the suit.
14 TERMINATION
14.1 Termination by Telomolecular. Ielomolecular may termmate this Agreement by giving Stanford written notice at least 30 days in advance of the effective date of termination selected by Telomolecular.
14.2 Termination by Stanford.
(A) Stanford may also terminate this Agreement if Telomolecular:
(1) is delinquent on any report or payment;
(2) is not diligentiy developing and commercializing Licensed Product;
(3) misses a milestone described in Appendix A;
(4) is in breach of any provision; or
(5) provides any false report.
(B) Termination under this Section 14.2 will take effect 30 days after written notice by Stanford unless Telomolecular remedies the problem in that 30- day period.
14.3 Surviving Provisions. Surviving any termination or expiration are:
(A) Telomolecular's obligation to pay royalties accrued or accruable;
(B) any claim of Telomolecular or Stanford, accrued or to accrue, because of any breach or default by the other party; and
(C) the provisions of Articles 8, 9, and 10 and any other provision that by its nature is intended to survive.
15 ASSIGNMENT
15.1 Permitted Assignment by Telomolecular. Subject to Section 15.3, Telomolecular may assign this Agreement as part of a sale, regardless of whether such a sale
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occurs through an asset sale, stock sale, merger or other combination, or any other transfer of:
(A) Telomolecular's entire business; or
(B) that part of Telomolecular's business that exercises all rights granted under this Agreement,
15.2 Any Other Assignment by Telomolecular. Any other attempt to assign this Agreement by Telomolecular is null and void.
15.3 Conditions of Assignment. Prior to any assignment, the following conditions must be met:
(A) Telomolecular must give Stanford 30 days prior written notice of the assignment, including the new assignee's contact information; and
(B) the new assignee must agree in writing to Stanford to be bound by this Agreement; and
(C) Stanford must have received a $50,000 assignment fee,
15.4 After the Assignment. Upon a permitted assignment of this Agreement pursuant to Article 15, Telomolecular will be released of liability under this Agreement and the term 'Telomolecular" in this Agreement will mean the assignee.
16 ARBITRATION
16.1 Dispute Resolution by Arbitration. Any dispute between the parties regarding any payments made or due under this Agreement will be settled by arbitration in accordance with the JAMS Arbitration Rules and Procedures. There parties are not obligated to settle any other dispute that may arise under this Agreement by arbitration.
16.2 Request for Arbitration. Either party may request such arbitration. Stanford and Telomolecular will mutually agree in writing on a third party arbitrator within 30 days of the arbitration request. The arbitrator's decision will be final and nonappealable and may be entered in any court having jurisdiction.
16.3 Discovery. The parties will be entitled to discovery as if the arbitration were a civil suit in the California Superior Court. The arbitrator may limit the scope, time, and issues involved in discovery.
16.4 Place of Arbitration. The arbitration will be held in Stanford, California unless the parties mutually agree in writing to another place.
17 NOTICES
All notices under this Agreement are deemed fully given when written, addressed, and sent as follows:
All general notices to Telomolecular are mailed to:
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Telomolecular
0000 Xxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Art. Xxxx Xxxxx
All financial invoices to Telomolecular (i.e., accounting contact) are e-mailed to:
Telomolecular
0000 Xxxxxx Xxxxxx
Xxxx, Xxxx, XX 00000
All progress report invoices to Telomolecular (i.e., technical contact) are e-mailed to:
xxxxxx@Xxxxxxxxxxxxx.xxx
xxxxxx@000xxxx.xxx
xxxxxxx@xxxxxxxxxxxx.xxx
All general notices to Stanford are e-mailed or mailed to:
Office of Technology Licensing
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-1106
xxxx@X0xxxxxx.Xxxxxxxx.xxx
All payments to Stanford are mailed to:
Stanford University
Office of Technology Licensing
Department #44439
P.O. Box 44000
San Francisco, CA 94144-4439
All progress reports to Stanford are e-mailed or mailed to:
Office of Technology Licensing
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000 xxxx@xxxxxxx.Xxxxxxxx.xxx
Eitlier party may change its address with written notice to the other party.
18 MISCELLANEOUS
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18.1 Waiver. No term of this Agreement can be waived except by the written consent of the party waiving compliance.
18.2 Choice of Law. This Agreement and any dispute arising under it is governed by the laws of the State of California, United States of America, applicable to agreements negotiated, executed, and performed within California.
18.3 Exclusive Forum. The state and federal courts having jurisdiction over Stanford, California, United States of America, provide the exclusive forum for any court action between the parties relating to this Agreement. Telomolecular submits to the jurisdiction of such courts, and waives any claim that such a court lacks jurisdiction over Telomolecular or constitutes an inconvenient or improper forum.
18.4 Headings. No headings in this Agreement affect its interpretation.
18.5 Electronic Copy. The parties to this document agree that a copy of the original signature (including an electronic copy) may be used for any and all purposes for which the original signature may have been used. The parties further waive any right to challenge the admissibility or authenticity of this document in a court of law based solely on the absence of an original signature
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The parties execute this Agreement in duplicate originals by their duly authorized officers or representatives.
THE BOARD OF DIVERSITY TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY
Signature _
Name Xxxxxxxxx Xx
Title Director, Office of Technology Licensing
Date jLdtj H. 20OC
TELOMOLECULAR, Inc.
Signature
Name
Title
Date
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APPENDIX A
Stanford may either terminate or modify the sublicense agreement to nonexclusive if Telomolecular fails to achieve the following milestones (the "Milestones"):
a) Transfer the technology - by end of year 1;
b) Validate targets and begin drug screens - by end of year 2;
c) Develop lead compounds and being preclinical testing - by end of year 3;
d) Complete preclinical tests on lead - by end of Year 4
e) Prepare and file an IND - by end of year 5
f) Complete Phase I - by end of year 6
g) Complete Phase II - by end of year 8
h) Complete Phase III - by end of year 10
i) Submit an NDA - by end of year 11
j) First commercial sale - by end of year 12
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APPENDIX B
SAMPLE REPORTING FORM
Stanford Docket No. S -
This report is provided pursuant to the license agreement between Stanford University and (Telomolecular Name) License Agreement Effective Date:
Report Covering Period
Yearly Maintenance Fee
$
Number of Sublicenses Executed
Net Sales
$
Royalty Calculation
Royalty Subtotal
$
Credit
$
Royalty Due
$
Comments:
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APPENDIX C
CLIENT AND BILLING AGREEMENT THE BOARD OF TRUSTEES OF THE XXXXXXXX XXXXXX IUNIOR UNIVERSITY ("STANFORD"); AND , A CORPORATION OF THE STATE OF , WITH A PRINCIPAL PLACE OF BUSINESS AT , ("COMPANY"); HAVE AGREED TO USE THE LAW FIRM OF ("FIRM") TO PREPARE, FILE AND PROSECUTE THE PENDING PATENT APPLICATIONS LISTED IN EXHIBIT A ATTACHED HERETO AND MAINTAIN THE PATENTS THAT ISSUE THEREON ("PATENTS"). WHEREAS, FIRM DESIRES TO PERFORM THE LEGAL SERVICES RELATED TO OBTAINING AND MAINTAINING THE PATENTS; AND WHEREAS, STANFORD REMAINS THE CLIENT OF THE FIRM; AND WHEREAS, COMPANY IS THE TELOMOLECULAR OF STANFORD'S INTEREST IN THE PATENTS, NOW THEREFORE. IN CONSIDERATION OF THE PREMISES AND THE FAITHFUL PERFORMANCE OF THE CONVENANTS HEREIN CONTAINED, IT IS AGREED:
I. FIRM CAN INTERACT DIRECTLY WITH COMPANY ON ALL PATENT PROSECUTION MATTERS RELATED TO THE PATENTS AND WILL COPY STANFORD AND THE U.S. DEPARTMENT OF VETERANS AFFAIRS ("VA") ON ALL CORRESPONDENCE. STANFORD WILL BE NOTIFIED BY FIRM PRIOR TO ANY SUBSTANTIVE ACTIONS AND WILL HAVE FINAL APPROVAL ON PROCEEDING WITH SUCH ACTIONS.
2. COMPANY IS RESPONSIBLE FOR THE PAYMENT OF ALL CHARGES AND FEES BY FIRM RELATED TO THE PROSECUTION AND MAINTENANCE OF THE PATENTS. FIRM WILL INVOICE COMPANY AND MUST COPY STANFORD ON ALL INVOICES. COMPANY MUST PAY FIRM DIRECTLY FOR ALL CHARGES AND MUST COPY STANFORD ON EACH PAYMENT.
3. NOTICES AND COPIES OF ALL CORRESPONDENCE SHOULD BE SENT TO THE FOLLOWING:
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To COMPANY:
Name, Title Company Name Address
To STANFORD:
Name
Office of Technology Licensing
Stanford University
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000
To FIRM:
Attorney Name Law Firm Address
To VA:
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Director (122)
Technology Transfer Program Office of Research and Development U.S. Department of Veterans Affairs 0 00 Xxxxxxx Xxxxxx X. X. Washington, D.C, 20420
ACCEPTED AND AGREED TO: STANFORD
By:
Name: Xxxxxxxxx Xx Title: Director
Date:
Company Name
By: _ Name: Title:
Date:
Law Firm Name
By: _ Name:
Title:
Date:
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