Exhibit 10(a)
NON-EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the 29th day of July, 1997 (the "Effective
Date"), by and between OXIS International, Inc., a corporation organized under
the laws of Delaware ("OXIS") and ENZON, Inc., a corporation organized under the
laws of ('Licensee") having an office located at 00 Xxxxxxxxxxx Xxxx,
Xxxxxxxxxx, Xxx Xxxxxx 00000-0000.
0. BACKGROUND
OXIS is the owner of certain patents as further described herein (the
"OXIS Patents"). Licensee seeks to obtain a non-exclusive license to practice
and use the OXIS Patents, each according to the terms contained herein.
Now, Therefore, in consideration of the foregoing and the covenants
and premises contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
As used herein, capitalized terms will have the meanings set forth
below:
1.1 "AFFILIATE" means any person or entity directly or indirectly
controlling, controlled by or under common control with, either party to this
Agreement. For purposes of the preceding definition, "control" means the direct
or indirect ownership of over fifty percent (50%) of the outstanding voting
securities of a person or entity, or the right to receive over fifty percent
(50%) of the profits or earnings of a person or entity, or the ability to
control decisions of a person or entity.
1.2 "NET SALES" means the amounts actually received for sales of
Licensed Products by or on behalf of Licensee and its Affiliates and
sublicensees of rights with respect to Licensed Products or for otherwise making
such Licensed Products available to others without sale or other disposition,
whether invoiced or not, less (i) any returns and allowances actually granted,
(ii) packing costs, insurance costs and freight out, (iii) taxes (excluding
income taxes) or excise duties imposed on the transaction (if separately
invoiced), and (iv) wholesaler quantity and cash discounts in amounts customary
in the trade. No deductions shall be made for commissions paid to individuals,
whether they be with independent sales agencies or regularly employed, or for
the cost of collections. On sales of such Licensed Products by Licensee to its
Affiliates or on sales
made in other than an arm's-length transaction, which are not intended for
resale to third parties, the value of the Net Sales attributed to such a
transaction shall be that which would have been received in an arm's-length
transaction, based on sales of like quantity and quality products on or about
the time of such transaction.
1.3 "LICENSED PRODUCT(S)" means any low molecular weight
polyethelyene glycol material used for human therapeutics which, in the course
of manufacture, use, or sale would, in the absence of this license, infringe one
or more Valid Claims of one or more OXIS Patents.
1.4 "OXIS PATENTS" means the U.S. patents listed on Exhibit A
hereto, and any reissues, extensions, substitutions, confirmations, re-
registrations, re-examinations, continuations, divisionals or continuations-in-
part patent applications (but excluding any improvements covered thereby) of the
foregoing patents, as well as all foreign counterparts or equivalents, including
patents and pending applications, of the above and any other patents covered by
the warranty stated in Article 9.2.
1.5 "VALID CLAIMS" means a claim of a duly issued patent which has
not lapsed or become abandoned or been invalidated by a final judgment of a
court of competent jurisdiction from which no further appeal has or can be
taken.
2.0 GRANT
2.1 LICENSE. OXIS grants to Licensee a non-exclusive, royalty-
bearing, world-wide license to make, have made, use and sell up to ten (10)
Licensed Products.
2.1 RIGHT TO SUBLICENSE. Licensee shall have the right to grant a
non-exclusive, royalty-bearing, world-wide license to make, have made, use and
sell Licensed Products, provided that Licensee grants only one sublicense per
Licensed Product and that the sublicense is not one of the parties already in
discussions with OXIS listed in Exhibit B. Upon granting a sublicense
hereunder, Licensee shall promptly provide the name and address of sublicensee
and a description of the Licensed Product.
2
3.0 COMPENSATION
3.1 LICENSE FEE. In consideration of the rights granted herein,
Licensee shall pay to OXIS upon execution of this Agreement a non-refundable,
license fee of One Hundred and Fifty Thousand Dollars ($150,000). This fee is
creditable against future royalties earned during the term of this Agreement.
3.2 ANNUAL MAINTENANCE FEES. Following the date of this Agreement
and until this Agreement expires or is terminated under Section 6.2, Licensee
shall pay to OXIS a non-refundable annual maintenance fee of Fifty Thousand
Dollars ($50,000) on or before the first day of each calendar year following
execution of this Agreement. Each annual fee is creditable against royalties
earned during the calendar year following payment of such fee.
3.3 EARNED ROYALTIES. Licensee shall pay to OXIS an earned royalty
equal to two percent (2%) of the Net Sales of Licensed Products sold by
Licensee, its Affiliates or its sublicensees.
3.4 SUBLICENSE FEES. Licensee shall pay to OXIS a fee of One Hundred
and Twenty-Five Thousand Dollars ($125,000) for each sublicense of a Licensed
Product granted hereunder. Such payment is due within twenty (20) days after
execution of the sublicense agreement or the sale of a Licensed Product pursuant
to such sublicense, whichever is sooner. Sublicense fees are not creditable
against earned royalties.
4.0 PAYMENT TERMS
4.1 ACCRUAL; REPORTING. Royalty payments due under this Agreement
shall accrue on a calendar quarter basis and Licensee shall pay to OXIS all such
royalty payments due under this Agreement within sixty (60) days of the end of
each calendar quarter. Each payment shall be accompanied by a report summarizing
the relevant sales of the Products and royalty payment due thereon, including a
description of any offsets or credits deducted, in sufficient detail to permit
confirmation of the accuracy of the payment made. In the event that any payment
due hereunder is not made when due, the payment shall accrue interest beginning
on the first day following the due date at the rate of 1.5% per month or, if
less, the maximum rate permissible under Oregon law.
3
4.2 RECORDS. During the term of this Agreement, Licensee shall keep
full and accurate books and records setting forth, for products on which
payments are due, gross sales, all deductions allowed in arriving at Net Sales
and any other information necessary and in sufficient detail to allow the
calculation of the amounts to be paid hereunder. During the term of this
Agreement and for a period of five (5) years thereafter, Licensee shall permit
OXIS, by independent certified public accountants selected by OXIS, to examine
Licensee's relevant books and records at any reasonable time, within five (5)
years of the payment of such royalties. If it is determined that there was an
underpayment of royalties or other amounts due to OXIS of five percent (5%) or
more, without prejudice to any other rights OXIS may have, Licensee shall
promptly reimburse OXIS for the balance of the royalties or other amounts due
and shall also reimburse OXIS for the cost of such verification examination.
5.0 PATENT MATTERS
5.1 PATENT PROSECUTION AND MAINTENANCE. OXIS shall be solely
responsible for the prosecution and maintenance of the OXIS Patents at its
expense.
5.2 PATENT INFRINGEMENT. If Licensee becomes aware of any actual or
threatened infringement of any OXIS Patent, Licensee will notify OXIS in writing
promptly after learning of such infringement. OXIS shall have the sole right
(but not the obligation) to bring and control, at its own expense, any
infringement action against any person or entity infringing the OXIS Patents.
Licensee will reasonably assist OXIS and cooperate in any litigation at OXIS'
request and expense. This Section 5.2 shall survive the termination of this
Agreement.
6.0 TERM AND TERMINATION.
6.1 TERM. This Agreement will commence as of the Effective Date and,
unless sooner terminated as provided hereunder, will expire on a country-by-
country basis, upon the expiration of the last to expire patent of the OXIS
Patents licensed hereunder in such country.
6.2 TERMINATION.
(a) This Agreement may be terminated by either party upon sixty
(60) days written notice (i) upon the bankruptcy, insolvency, dissolution or
winding up of Licensee (other than dissolution or winding up for the purposes of
reconstruction or amalgamation); or (ii) upon
4
or after the breach of any material provision of this Agreement by Licensee if
Licensee has not cured such breach within the sixty (60) day period following
written notice of termination by OXIS.
(b) This Agreement may be terminated by Licensee upon ninety (90) days
written notice to OXIS.
(c) Upon termination of the Agreement under this Section 6.2,
royalties due pursuant to Section 3.3 on any sales of Products discovered prior
to the date of such termination or deletion (and the payment terms with respect
thereto under Article 4) will survive the termination of this Agreement.
6.3 OBLIGATIONS UPON TERMINATION. Upon any termination of this
Agreement, all rights granted by OXIS to Licensee hereunder shall terminate and
revert to OXIS. Without limiting any remedies otherwise available to the
terminating party, termination of this Agreement pursuant to this Article 6 will
not relieve Licensee from any amounts owing to OXIS at the time of termination
and will not terminate any rights or obligations arising and existing prior to
or upon termination of this Agreement.
7.0 INDEMNIFICATION
7.1 INDEMNIFICATION. Licensee agrees to indemnify, hold harmless and
defend OXIS, its officers, directors, employees and agents, from and against any
and all claims, suits, losses, damages, costs, fees and expenses (collectively,
"Claims") resulting from or arising out of the development, manufacture,
storage, sale or other distribution or use of Licensed Products, the exercise of
rights granted hereunder, or the negligence or willful misconduct of Licensee in
its performance of its obligations under this Agreement.
7.2 SURVIVAL. This Article 7 shall survive the termination or
expiration of this Agreement .
8.0 LIMITATION OF LIABILITY
8.1 WAIVER OF CONSEQUENTIAL DAMAGES. IN NO EVENT WILL OXIS BE LIABLE
TO LICENSEE OR ITS AFFILIATES OR ANY SUBLICENSEE OF RIGHTS TO ANY
5
PROFITS, LOST SAVINGS, OR OTHER INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES OR
FOR ANY CLAIM BY ANY OTHER PARTY.
8.2 DISCLAIMER OF WARRANTIES. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, OXIS MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND. OXIS HEREBY
EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND OR NATURE, WHETHER
EXPRESS OR IMPLIED, RELATING TO THE OXIS PATENTS, INCLUDING ANY EXPRESS OR
IMPLIED WARRANTIES OR MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR
THAT THE PRACTICE OF THE OXIS PATENTS, OR THE MANUFACTURE, USE OR SALE OF A
PRODUCT DISCOVERED OR IDENTIFIED THROUGH THE USE OF THE OXIS PATENTS, WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OF THIRD PARTIES.
WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, OXIS EXPRESSLY DOES NOT
WARRANT THE ACCURACY, SAFETY, OR USEFULNESS FOR ANY PURPOSE, OR THE TECHNOLOGY
COVERED UNDER THE OXIS PATENTS. NOTHING CONTAINED IN THIS AGREEMENT SHALL BE
CONSTRUED AS EITHER A WARRANTY OF REPRESENTATION BY OXIS AS TO THE VALIDITY OR
SCOPE OF ANY OXIS PATENTS. OXIS DOES NOT ASSUME ANY LIABILITY IN RESPECT OF ANY
INFRINGEMENT OF ANY PATENT OR OTHER RIGHT OF THIRD PARTIES DUE TO THE ACTIVITIES
OF LICENSEE UNDER THIS AGREEMENT.
8.3 SURVIVAL. This Article 8 shall survive the termination or expiration
of this Agreement.
9.0 REPRESENTATIONS AND WARRANTIES
9.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each party hereby represents
and warrants:
9.1.1 CORPORATE POWER. Such party is duly organized and validly
existing and in good standing under the laws of the state of its
incorporation and has all requisite corporate power and authority to enter
into this Agreement and to carry out the provisions hereof.
6
9.1.2. DUE AUTHORIZATION. Such party is duly authorized to execute
and deliver this Agreement and to perform its obligations hereunder.
9.1.3. BINDING AGREEMENT. This Agreement is a legal and valid
obligation binding upon it and enforceable in accordance with its terms.
The execution, delivery and performance of this Agreement by such party
does not conflict with any agreement, instrument or understanding, oral or
written, to which it is a party or by which is may be bound, not violate
any law or regulation of any court, governmental body or administrative or
other agency having jurisdiction over it.
9.2 OXIS PATENTS. OXIS represents and warrants that the OXIS Patents
listed in Exhibit A are all the U.S. patents OXIS owns or has rights to as of
the Effective Date of this Agreement, that, but for this Agreement would be
infringed by the making, using or selling of Licensed Products. OXIS further
represents and warrants that it will update Exhibit A to include any reissues,
extensions, substitutions, confirmations, re-registrations, re-examinations,
continuations, divisionals or continuations-in-part patent applications of the
foregoing patents which issue during the terms of this Agreement after the
Effective Date.
10. GENERAL PROVISIONS
10.1 RELATIONSHIP OF THE PARTIES. Neither party is, nor will be deemed to
be, an agent or legal representative of the other party for any purpose.
Neither party will be entitled to enter into any contracts, incur any debts or
make any commitments in the name of or on behalf of the other party, and neither
party will be entitled to pledge the credit of the other party in any way or
hold itself out as having authority to do so.
10.2 COMPLIANCE WITH LAWS. Licensee shall use its best efforts to comply
with all applicable laws, rules and regulations pertaining to the development,
testing, manufacture, marketing and import or export of the Licensed Products.
10.3 NON-ASSIGNMENT. Licensee shall not assign this Agreement, in whole or
in part, without the prior written consent of OXIS, except such consent shall
not required in connection with Licensee's sale of the entire business to which
this Agreement pertains.
10.4 DIVISIBILITY. If any provision of this Agreement is found to be
prohibited by law and invalid, or for any other reason if any provision is held
to be unenforceable, in whole or in
7
part, such provision shall be ineffective to the extent of the prohibition or
unenforceability without invalidating or having any other adverse effect upon
any other provision of this Agreement.
10.5 ENTIRE AGREEMENT. This Agreement, including the documents and the
instruments referred to herein, constitutes the entire agreement between the
parties relating to its subject matter and supersedes all prior or
contemporaneous negotiations or agreements, whether oral or written, relating to
the subject matter hereof. No extension, modification or amendment of this
Agreement shall be binding upon a party unless such extension, modification or
amendment is set forth in a written instrument, which is executed and delivered
on behalf of such party.
10.6 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the substantive law of the State of Oregon, without giving
effect to any conflicts or choice of laws principles which otherwise might be
applicable.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement,
including the Exhibits attached hereto and incorporated herein by reference, as
of the date first written above.
OXIS INTERNATIONAL, INC. ENZON, INC.
By: ________________________ By: _________________________
Name: ______________________ Name: _______________________
Title: _______________________ Title: ________________________
8
EXHIBIT A
OXIS PATENTS
. U.S Patent No. 5,468,478, entitled "Conjugates of Superoxide Dismutase
Coupled to High Molecular Weight Polyalkylene Glycols, issued November 21,
1995.
. U.S Patent No. 5,283,317, entitled "Intermediates for Conjugation of
Polypeptides With High Molecular Weight Polyalkylene Glycols, issued February
1, 1994.
. U.S Patent No. 5,080,891, entitled "Conjugates of Superoxide Dismutase
Coupled to High Molecular Weight Polyalkylene Glycols, issued January 14,
1992.
. U.S Patent No. 5,006,333, entitled "Conjugates of Superoxide Dismutase
Coupled to High Molecular Weight Polyalkylene Glycols, issued April 9, 1991.
9
EXHIBIT B
. Amgen, Inc., Thousand Oaks, California
. Mountain View Pharmaceuticals, Inc., Mountain View, California
. Centorcor, Inc., Malvern, Pennsylvania
10
