Exhibit 10.8
"CONFIDENTIAL TREATMENT REQUESTED BY
ACTIVBIOTICS, INC."
CONFIDENTIAL INFORMATION
EXCLUSIVE LICENSE AGREEMENT
BETWEEN
ACTIVBIOTICS, INC.
AND
UNIVERSITY OF WASHINGTON
THIS EXCLUSIVE LICENSE AGREEMENT ("Agreement") is entered into on May 16, 2003
("Effective Date") by and between ActivBiotics, Inc, a Delaware corporation with
its principal place of business at 000 Xxxxxx Xxxxxx, Xxxxxxxxx, XX ("Licensee")
and the University of Washington, a public institution of higher education and
an agency of the state of Washington, acting through its Office of Technology
Licensing ("OTL"), with administrative offices at 0000 00xx Xxxxxx XX, Xxxxx
000, Xxxxxxx, XX 00000 ("University") (individually the "Party" or collectively
the "Parties").
RECITALS
Whereas, University has developed and owns or is in possession of certain
technology relating to diagnosis and treatment of arterial chlamydial granuloma,
described in OTL# 1168-1291129DL ("UW Technology" as defined below) and
developed by Dr(s) Cho Xxx Xxx, Xxxxx Xxxx, Xxxxxxx X. Xxxxxx, Xxx Xxx Xxxxxxxx
and J Xxxxxx Xxxxxxxx;
Whereas, University and Licensee entered into an Exclusive Option Agreement
dated June 13, 2002 ("Exclusive Option Agreement Between ActivBiotics, Inc. and
the University of Washington" attached hereto as Exhibit A and incorporated
herein by reference), which remains in full force and effect;
Whereas, University desires that UW Technology be used as broadly and as soon as
possible in the public interest, and to this end desires to exclusively license
UW Technology to a company capable of commercially exploiting UW Patent Rights
(as defined below);
Whereas, Licensee wishes to obtain a license to UW Patent Rights and Licensee is
under no contractual or other obligation which encumber, restrict, or limit any
of the rights granted by University under this Agreement, and is committed to
commercially exploiting UW Patent Rights; and
Whereas, University is willing to grant such a license to Licensee in order that
Licensed Product(s) (as defined below) be made available on the commercial
market.
Now Therefore, in consideration of the mutual promises set forth herein, and
other good and valuable consideration, the receipt and sufficiency of which is
hereby expressly acknowledged, the Parties hereto, intending to be legally
bound, hereby agree as follows:
1.0 DEFINITIONS
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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CONFIDENTIAL INFORMATION
1.1 All capitalized terms used in this Agreement have the respective meanings
ascribed to them in this Agreement and, unless indicated otherwise, are intended
to include all derivative forms of the terms.
1.2 "Affiliate" means any entity that directly or indirectly controls, is
controlled by, or is under common control with Licensee. For the purposes of
this Paragraph 1.2 "control" means either the right to exercise more than 50% of
the voting rights of an entity, including but not limited to, a controlled
corporation or limited liability company or the power to direct or cause the
direction of the management or policies of any other controlled entity.
Affiliates shall mean only those companies listed on Exhibit 1.2, attached
hereto and incorporated herein by reference, which may be amended from time to
time only with prior written consent of an authorized representative of the
University.
1.3 "Combination Product" shall mean any subject matter sold at a single price,
including but not limited to, products and processes, containing both a
component that constitutes a Licensed Product and one or more other active
components that do not constitute Licensed Product.
1.4 "Confidential Information" means any information and materials of the
University (biological, chemical, or otherwise) not generally known to the
public. Confidential Information may be conveyed in written, graphic, oral,
physical, or electronic form. Confidential Information shall include, without
limitation, UW Technology Rights. Notwithstanding the foregoing, Licensee shall
have no obligation of confidentiality relating to:
1.4.1 any information of the University that is required to be disclosed by
judicial or legislative action or government regulation;
1.4.2 any information that is or becomes part of the public domain through
no fault of Licensee;
1.4.3 any information that is known to Licensee prior to the disclosure by
University, as evidenced by documentation;
1.4.4 any information that is publicly released as authorized under this
Agreement by University, its employees or agents;
1.4.5 any information that is subsequently obtained by Licensee from a duly
authorized Third Party; or
1.4.6 any information that is independently developed by Licensee without
reliance on any portion of the Confidential Information received from
University and without any breach of this Agreement as evidenced by
documentation.
1.5 "Field of Use" means diagnosis and treatment of arterial chlamydial
granuloma, which includes related arterial and coronary diseases or disorders
caused by or influenced by arterial chlamydia granuloma lesions and infections.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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1.6 "Licensed Product" means a product or service, including but not limited to
products, services and processes, which are covered within UW Patent Rights
and/or UW Technology Rights.
1.7 "Licensed Territory" means worldwide.
1.8 "Net Sales" means the gross billed or invoiced amounts for Licensed
Product(s) or Combination Product(s) less discounts and allowances given and
actually taken and which are customary in Licensee's trade, other than those
which permit a reduction in payment by the customer in exchange for early
payment. Notwithstanding the foregoing, Net Sales will not be less than [***]%
of gross billed or invoiced amounts. In the event that Licensed Product(s) or
Combination Product(s) are sold to an Affiliate, then Net Sales shall be the
price which would have been charged if the Licensed Product(s) or Combination
Product(s) in question had been sold on normal terms and conditions to a
purchaser dealing at arm's length with Licensee. Licensed Product(s) and/or
Combination Product(s) shall be deemed "sold" when billed or invoiced, whichever
occurs first.
1.9 "Semi-Annual Period" means a period of six consecutive calendar months
beginning on the first day of either January or July.
1.10 "Sublicense" means the present, future or contingent transfer by Licensee
to a Third Party of any license, right, option, first right to negotiate or
other right granted under the UW Patent Rights and/or UW Technology Rights, in
whole or in part. Sublicense shall include, without limitation, such transfer to
strategic partners and marketing collaborators.
1.11 "Sublicensee" means a Third Party holding a Sublicense under the UW Patent
Rights and/or UW Technology Rights.
1.12 "Sublicensing Fee" means any license fee or non-royalty consideration,
including equity, received by Licensee from a Sublicensee for the grant of a
license to make, have made, use or distribute Licensed Products or Combination
Products and that is not included in Net Sales.
1.13 "Sublicensing Consideration" means cash or non-cash consideration of any
kind received by Licensee or Affiliate from a Sublicensee(s) for the grant of a
Sublicense under this Agreement, including, but not limited to, upfront fees or
milestone fees and including any premium paid by the Sublicensee(s) over Fair
Market Value (hereinafter defined) for stock of the Licensee or an Affiliate in
consideration for such Sublicense. However, not included in such Sublicensing
Consideration are amounts paid to the Licensee or an Affiliate by the
Sublicensee(s) for earned royalties on Licensed Product(s), product development,
research work, clinical studies, and regulatory approvals performed by or for
the Licensee or Affiliate, or third parties on their behalf pursuant to a
specific agreement including a performance plan and commensurate budget "Fair
Market Value" means the average price that the stock in question is publicly
trading at for twenty (20) days prior to the announcement of its purchase by the
Sublicensee(s), or, if the stock is not publicly traded, the value of such stock
as determined by the most recent private financing through a financial investor
(an entity whose sole interest in the Licensee or Affiliate is financial) of the
Licensee or Affiliate that issue the shares
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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1.14 "Technical Information" means any technical facts, data, or advice, oral or
written (in the form of information contained in patents and patent
applications, reports, letters, drawings, specifications, testing procedures,
training and operational manuals, bills of materials, photographs and related
materials), and/or any tangible material(s), not covered by but reasonably
necessary for practicing UW Patent Rights and developed by UW Researchers before
the Effective Date which is owned by and in possession of University and is not
covered by Third Party rights that would prevent delivery to Licensee.
1.15 "Third Party" means all individuals or entities other than University,
Licensee and Affiliates.
1.16 "UW Researchers" means Dr(s) Cho Xxx Xxx, Xxxxx Xxxx, Xxxxxxx X Xxxxxx, Xxx
Xxx Xxxxxxxx and J. Xxxxxx Xxxxxxxx.
1.17 "UW Patent Rights" shall mean the United States issued patents, United
States or international patent application(s) listed in Exhibit 1.16 and any
corresponding patent issued therefrom, including all reissues, divisionals,
continuations, reexaminations and extensions thereof, together with all
corresponding foreign patents, extensions, supplemental protection certificates
and applications corresponding thereto now issued or issued during the term of
this Agreement and which directly relate to UW Technology. Continuations-in-Part
("CIP") Patent Applications will be included with UW Patent Rights only if
Licensee substantially funds the research that results in the filing of a CIP. A
patent or patent application shall cease to be a UW Patent Right when any of the
following occur: a) it expires; b) it is abandoned; or c) it is held to be
invalid or unenforceable by a court of competent jurisdiction from which no
appeal can be taken.
1.18 "UW Technology" means the technology as developed in the University
laboratories of UW Researchers and as described in OTL File # 1168-1291129DL.
1.19 "UW Technology Rights" means UW Technology and Technical Information all of
which is the proprietary information of the University.
2.0 GRANT OF RIGHTS
2.1 Grant. Subject to Licensee's fulfillment of its obligations under this
Agreement, University hereby grants to Licensee an exclusive, royalty-bearing
license, with the right to Sublicense as further set forth in Article 3.0
(Sublicensing), under the UW Patent Rights and/or UW Technology Rights to
import, make, have made, use, sell, offer for sale and have sold Licensed
Product(s) and Combination Product(s) in the Licensed Territory in the Field of
Use.
2.2 University Reserved Rights. The license granted above is subject to a
reserved non exclusive license by University to make, have made, and use
products, processes, or other subject matter covered by the UW Patent Rights
and/or the UW Technology Rights for research, instructional, and/or other
academic purposes University has the right to use the UW Patent Rights and/or UW
Technology Rights for its own sponsored and collaborative research during the
term of this Agreement and to grant material transfer agreements to Third Party
non-profit
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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entities. University also has the right to publish any information included in
the UW Patent Rights and/or UW Technology Rights or any information that may
result from University's research in this area.
2.3 Federal Government Rights. Licensee acknowledges and understands that UW
Patent Rights may be the result of federal research funding and that such
funding imposes certain obligations on the University. Actions taken by
University to fulfill such obligations shall not be deemed inconsistent with
University's obligations under this Agreement. Licensee acknowledges that such
obligations under federal law include, without limitation, the following: a)
University's granting of a worldwide, non-exclusive, royalty-free license under
any UW Patent Rights by University to the United States government; and b) a
requirement that all United States patents and patent applications within the UW
Patent Rights include a statement of United States government patent rights.
Licensee acknowledges that any and all determinations of federal funding shall
be made solely by University and University's reasonable determination shall be
honored by Licensee. Licensee further acknowledges and agrees that, pursuant to
35 USC 200, the University's grant of an exclusive license to use or sell UW
Patent Rights in the United States are contingent on Licensee's agreement that
any products embodying UW Patent Rights or produced through the use of UW Patent
Rights must be manufactured substantially in the United States, unless Licensee
obtains a waiver from the appropriate federal agency.
3.0 SUBLICENSING
3.1 Right to Sublicense. During the term of this Agreement, Licensee shall have
the right to grant non-exclusive and exclusive Sublicenses to UW Patent Rights
and/or UW Technology Rights within the Field of Use and within the Licensed
Territory at royalty rates and with terms and conditions not less favorable to
University than those required of Licensee by this Agreement.
3.2 Sublicense Subject to this Agreement. Any and all proposed Sublicenses in
and to UW Patent Rights and/or UW Technology Rights granted by Licensee shall be
subject to prior approval of University, which shall not be unreasonably denied,
and shall be subject to the terms of this Agreement.
3.3 Copies to University. Licensee shall give the University written
notification and copies of any Sublicense it may grant under this Article 3.0.
Licensee agrees to provide such written notification indicating the effective
date of execution, effective period and operative provisions, within thirty (30)
days of its execution.. Such documents shall be held in confidence by the
University to the extent permitted by law or regulation.
3.4 Licensee agrees to consider in good faith any potential sublicensees that
University may suggest or recommend.
4.0 DELIVERY OF INFORMATION
4.1 UW Patent Rights. University agrees to disclose to Licensee copies of all
existing patents and patent applications comprising UW Patent Rights and
University shall continue
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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throughout the term of this Agreement to keep Licensee informed of all material
patent decisions and of all other patents and patent applications, pursuant to
Paragraph 9.1, that may later fall within the scope of UW Patent Rights.
4.2 Technical Information. University agrees to disclose to Licensee any
Technical Information that is in University's judgment reasonably necessary or
valuable to the commercial exploitation of the UW Patent Rights.
5.0 CONFIDENTIALITY
5.1 Confidentiality. Beginning on the Effective Date and continuing throughout
the term of this Agreement and thereafter for a period of three (3) years
("Confidentiality Period"), Licensee shall not disclose or otherwise make known
or available to any Third Party or Affiliate any Confidential Information,
without the express prior written consent of University. During the
Confidentiality Period, Licensee shall maintain the UW Patent Rights and UW
Technology Rights in confidence and refrain from disclosing information related
to UW Patent Rights or UW Technology Rights to a Third Party. In no event shall
Licensee incorporate or otherwise use UW Patent Rights or UW Technology Rights
in connection with any patent application filed by or on behalf of the Licensee.
Licensee agrees to restrict the use of UW Patent Rights and UW Technology Rights
exclusively to the terms of this Agreement. Licensee shall utilize reasonable
procedures to safeguard the Confidential Information. Licensee agrees that its
confidentiality obligations apply to Affiliates.
5.2 Public Records Act. The University of Washington is an agency of the state
of Washington and is subject to the Washington Public Records Act, RCW 42.17.250
et seq, and no obligation assumed by University under this Agreement shall be
deemed to be inconsistent with University's obligations defined under RCW 42.17.
In the event University receives a request for public records under the Public
Records Act for documents containing Confidential Information, and if University
concludes that the documents are not otherwise exempt from public disclosure,
University will provide Licensee notice of the request before releasing such
documents. Such notice shall be provided in a timely manner to afford Licensee
sufficient time to review such documents and/or seek a protective order, at
Licensee's expense. The responsibility for(1) protecting the Confidential
Information shall reside exclusively with Licensee utilizing the procedures
described in RCW 42.17.330.
6.0 DILIGENCE AND DEVELOPMENT MILESTONES
6.1 Development and Commercialization. During the term of this Agreement,
Licensee shall use, and shall compel its Sublicensee to use, at least the same
level of effort and diligence as Licensee uses or has used in proceeding with
its own product development, testing, manufacturing, sales and, where
applicable, initiating clinical trials and obtaining regulatory approval to
develop and commercialize at least one Licensed Product(s) or Combination
Product(s) Specifically, Licensee shall use such level of effort and diligence
in:
6.1.1 developing Licensed Product(s) or Combination Product(s);
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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6.1.2 filing for or seeking regulatory approvals in accordance with the
business plan; and
6.1.3 marketing and selling Licensed Product(s) or Combination Product(s)
6.2 Milestones. With regard to each of the Licensed Product(s) or Combination
Product(s), Licensee shall use at least the same level of effort and diligence
as Licensee uses or has used in proceeding with its own product development,
testing, manufacturing, sales and, where applicable, initiating clinical trials
and obtaining regulatory approval to meet all of the following diligence
milestones. Licensee agrees to provide, upon University's request, tangible
evidence of achieving the milestones.
6.2.1 Assemble a scientific committee containing a multidisciplinary group
of scientists (including, but not limited to, pathologists, microbiologists
and cardiologists) for the design and oversight of a study that
demonstrates the effective use of an antibacterial drug for the therapy of
arterial chlamydia granuloma ("Study") by July 1st 2004.
6.2.2 Initiate Study by September 30, 2004.
6.2.3 Prepare and send to UW Researchers for review a pre-submission
manuscript prepared by Licensee describing the outcomes of Study by
December 31, 2005.
6.2.4 First publication by Licensee or others in a peer reviewed
international journal of Study by June 31, 2007.
6.2.5 First publication by Licensee or others in a peer reviewed
international journal of a study that demonstrates the effective use of an
antibacterial drug for the therapy of acute or chronic coronary arterial
chlamydia granuloma by December 31, 2009.
6.2.6 First publication by Licensee or others in a peer reviewed
international journal of a study conducted by a multidisciplinary group of
scientists (including, but not limited to, pathologists, microbiologists
and cardiologists) establishing that atherosclerosis is an arterial
chlamydia granuloma or that chlamydia granuloma of the arteries is
associated pathologically with atherosclerosis by December 31, 2006;
6.2.7 Execute a strategic partnership and/or a Sublicense agreement for the
development of Licensed Product(s) or Combination Product(s) with a Third
Party by December 31, 2008.
6.2.8 Filing by Licensee or Sublicensee of an NDA with the U.S. Food and
Drug Administration for the use of antibacterial drugs to treat
atherosclerosis and/or Chlamydia granuloma by December 31, 2010.
6.2.9 Licensee or Sublicensee to apply for regulatory approval for Licensed
Product(s) or Combination Product(s) from the U.S. Food and Drug
Administration or a foreign equivalent governmental authority by December
31, 2011.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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6.2.10 Licensee or Sublicensee to receive regulatory approval from the U.S.
Food and Drug Administration or foreign equivalent governmental authorities
for Licensed Product(s) or Combination Product(s) by December 31, 2012.
6.3 Milestone Payments. Licensee shall pay to University the following
non-creditable, non-cumulative, non-refundable fees within thirty (30) days of
the following milestones:
6.3.1 [***] dollars ($[***] US) upon the second publication by Licensee or
others in a peer reviewed international journal of a study establishing
that atherosclerosis is an arterial Chlamydia granuloma and/or that
Chlamydia granuloma of the arteries is the constant lesion associated
pathologically with atherosclerosis;
6.3.2 [***] dollars ($[***] US) upon Licensee's execution of a strategic
partnership agreement and/or a Sublicense agreement for the development of
antibacterial drugs for use in Chlamydia granuloma indications;
6.3.3 [***] dollars ($[***] US) upon filing by Licensee, strategic partner
or Sublicensee of an NDA with the U.S. Food and Drug Administration for the
use of antibacterial drugs for treating Chlamydia granuloma
6.3.4 [***] dollars ($[***] US) upon first commercial sale of Licensed
Product(s) or Combination Product(s) anywhere in the Licensed Territory;
and
6.3.5 [***] dollars ($[***] US) after Licensee's or Sublicensee(s)'s gross
revenues of Licensed Product(s) or Combination Product(s), reaches [***]
Dollars [***] ($[***]) in any twelve (12)-month period
6.4 Pre-Commercialization Progress Reports. Until Licensee or any Sublicensees
engage in commercial use or sale of Licensed Product(s) or Combination
Product(s), Licensee shall prepare and submit to University within thirty (30)
days of December 31 of each year a report regarding the progress of Licensee and
any Sublicensee in developing the Licensed Product(s) or Combination Product(s)
for commercial exploitation. Such report shall include such particulars as are
necessary to demonstrate compliance with Licensee's diligence obligations set
forth in this Article 6.0
6.5 Failure to Meet Milestones. If Licensee fails to adhere to the diligence
requirements set forth in this Article 6.0 with respect to Licensed Product(s)
or Combination Product(s), University may terminate the license grants of this
Agreement with respect to such Licensed Product(s) or Combination Product(s) in
accordance with Article 18.0 (Term and Termination).
7.0 LICENSING FEES AND ROYALTIES
7.1 License Issue Fee. As partial consideration for the rights, privileges and
licenses granted hereunder, Licensee shall pay to University a one-time
non-refundable non-creditable license issue fee of [***] dollars ($[***] US) due
and payable according to the following schedule:
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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- [***] dollars (USD $[***] US) within fifteen (15) days of the
Effective Date, and
- [***] dollars (USD $[***] US) within one hundred and eighty (180) days
of the Effective Date.
7.2 License Maintenance Fee. Licensee shall pay to University [***] dollars
($[***] US) per year, creditable against milestone payments in the corresponding
year, until Licensee makes its first royalty payment. In years with more than
one milestone payment, the license maintenance fee will be waived for the
subsequent year. This license maintenance fee is due and payable at the end of
the quarter that includes the Effective Date of this Agreement.
7.3 Earned Royalty. Licensee shall pay to University an earned royalty of:
7.3.1 [***] ([***]%) of Net Sales of Licensed Product(s), whether Licensed
Product(s) is/are sold by Licensee or its Sublicensees; due and payable
within thirty (30) days of the end of each calendar quarter during the term
of this Agreement.
7.3.2 Licensee shall pay earned royalties to University on a quarterly
basis within thirty (30) days of each of the following dates: March 31,
June 30, September 30, and December 31 of each year.
7.4 Earned Royalty for Combination Product(s). Where Combination Product(s)
is/are sold, Licensee shall pay an earned royalty based on the following
modification of Net Sales. When the component constituting a Licensed Product(s)
and each component not constituting a Licensed Product(s) have established
market prices in a particular country when sold separately, Net Sales in that
country shall be determined by multiplying the net sales for each such
Combination Product(s) by a fraction, the numerator of which shall be the
established market price for the Licensed Product(s) contained in the
Combination Product(s) and the denominator of which shall be the sum of the
established market price for the Licensed Product(s) plus the established market
price of the other components contained in the Combination Product(s). When such
separate market prices are not established in that particular country, the
Parties shall negotiate in good faith to determine a fair and equitable method
of calculating Net Sales in that country for the Combination Product(s) in
question.
7.5 Minimum Annual Royalties. Regardless of Net Sales, Licensee shall pay
minimum annual royalties to be creditable against earned royalties on a
non-cumulative basis and to be due in full and payable as shown below during the
term of this Agreement according to the following schedule:
- Due the first year in which a sale of Licensed Product occurs: [***]
dollars ($[***] US)
- Due the first quarter of the every year thereafter: [***] dollars
($[***] US).
Nothing contained in this Paragraph 7.5 shall be construed to in any way alter
or reduce Licensee's obligations under Paragraph 7.3.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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7.6 No Duplicative Royalties. Except as set forth in this Article 7.0, no
multiple royalties shall be payable to University where any Licensed Product(s)
or Combination Product(s), its manufacture, use, and/or sale is or will be
covered by more than one patent application or issued patent licensed under this
Agreement as part of UW Patent Rights.
7.7 Third Party Royalties. If Licensee is required to pay royalties to a Third
Party based on Licensee's manufacture, use, or sale of Licensed Product(s)
and/or Combination Product(s) subject to one or more patents of such Third
Party, the royalty rate specified in Paragraphs 7.3 and 7.4 shall be reduced by
an equitable amount to be determined through good faith negotiations between
University and Licensee, provided that use of any Third Party patent is required
in connection with such manufacture, use, or sale of Licensed Product(s) and/or
Combination Product(s), and provided that the royalty to University shall not
fall below fifty percent (50%) of that otherwise payable under this Agreement.
7.8 Currency and Exchange Rate. All payments required under this Agreement shall
be made in United States dollars by check, money order or wire transfer to a
bank account as designated by University. All such payments must include the
University invoice number or the contract number [***] on the check or cover
letter. The royalties on sales in currencies other than United States dollars
shall be calculated using the appropriate foreign exchange rate for such
currency as published in The Wall Street Journal (Western edition) on the last
business day of each calendar quarter in which the sales occurred. All non-U.S.
taxes related to royalty payments shall be paid by Licensee and are not
deductible from the payments due University.
7.9 Wire Transfers. If payment is made by wire transfer, such wire transfer must
contain the following information: [***], Office of Technology Licensing, ATTN:
Financial Manager. The wire transfer should be directed towards [***], ABA#
[***], and University budget number ([***]) Bank of America, University Branch,
0000 Xxxxxxxxxx Xxx XX, Xxxxxxx, XX 00000-0000, and a copy must be sent via fax
to University OTL Financial Manager and a copy to University OTL Technology
Manager at 000-000-0000. International wires must be paid in United States
dollars and must also include the reference "[***]". In the case of payment made
by wire transfer to fulfill any financial obligation of Licensee under this
Agreement any and all requirements of Article 7 must be met.
7.10 Late Fee. Licensee agrees to pay a late fee for any overdue (i.e., more
than thirty (30) days past due) licensing fee, royalty payment or other payment
due to University under terms of this Agreement. The late fee shall be computed
as the United States prime rate plus two percent (2%), compounded monthly, as
set forth by The Wall Street Journal (Western edition) on the date on which such
payment is due, of the outstanding, unpaid balance. The payment of such a late
fee shall not foreclose or limit University from exercising any other rights it
may have as a consequence of the lateness of any payment.
8.0 SUBLICENSING PAYMENTS AND FEES.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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8.1 Sublicense Fees. Within sixty (60) days after the end of each Semi-Annual
Period during the term of this Agreement, Licensee shall pay to University an
amount based on any Sublicensing Consideration received by Licensee during such
Semi-Annual Period as follows:
8.1.1 [***] of any Sublicensing Consideration received from any
Sublicensee for the grant of a Sublicense of UW Patent Rights and/or UW
Technology Rights if the Sublicense is executed before publication by
Licensee or others in a peer reviewed journal of a study that demonstrates
the effective use of an antibacterial drug for the therapy of arterial
Chlamydia granuloma; or
8.1.2 [***] of any Sublicensing Consideration received from any Sublicensee
for the grant of a Sublicense of UW Patent Rights and/or UW Technology
Rights if the Sublicense is executed after a first sale of the Licensed
Product(s) or Combination Product(s) by Licensee.
8.2 Equity.
8.2.1 Publicly Traded Equity. If Licensee receives consideration in the
form of publicly traded equity from a Sublicense, all provisions of Article
8.0 (Sublicensing Payments and Fees) shall apply, except that University
may, at its sole discretion, elect to receive University's share of such
equity as either equity or the Fair Market Cash Value (hereinafter defined)
equivalent of such equity at the time of issuance to Licensee. "Fair Market
Cash Value" means the average price that the stock in question is publicly
trading at for twenty (20) days prior to the transfer of the equity to
Licensee or Affiliate from the Sublicensee.
8.2.2 Non-publicly Traded Equity. If Licensee receives consideration in the
form of equity that is not publicly traded from a Sublicense, all
provisions of Article 8.0 (Sublicensing Payments and Fees) shall apply
University shall have the right to sell such equity at any time after a
public or private market for such equity is created.
8.2.3 If under the provisions of this Paragraph 8.2 University elects to
receive the equity, such equity shall be in the name "University of
Washington".
8.2.4 Notwithstanding the above, it is understood and agreed that
University shall not be entitled to any portion of amounts received by
Licensee from Sublicensee(s) for the purchase of equity in Licensee, debt
financing, research and development, the license or Sublicense(s) of any
intellectual property other than the UW Patent Rights and/or UW Technology
Rights, or reimbursement for patent or other expenses.
9.0 PATENT PROSECUTION AND COST RECOVERY.
9.1 University Control of Prosecution. Subject to Paragraph 18.6 University, or
its designees shall have exclusive control over the filing, prosecution and
maintenance of any and all patent applications included in UW Patent Rights,
whether pending or not yet filed as of the Effective
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Date of this Agreement, and of the maintenance and other management of any and
all issued patents included in UW Patent Rights during the term of this
Agreement.
9.2 Licensee Role in Prosecution. University shall keep Licensee informed of the
status of any and all new patents and/or patent applications that are part of UW
Patent Rights Licensee may provide comments to University on courses of action
with respect to the filing of new patent applications relating to UW Patent
Rights, prosecution of patent applications within UW Patent Rights, and/or
maintenance of patents within UW Patent Rights, provided University has
exclusive authority to prosecute and maintain UW Patent Rights.
9.3 University Cost Recovery from Licensee. Licensee agrees to reimburse
University for all fees and costs for those actions related to the filing,
prosecution and maintenance of patent applications, including, without
limitation, interference, oppositions, and reexaminations, and maintenance and
defense of patents, in UW Patent Rights, whether incurred prior to the execution
of this Agreement or during the term of this Agreement. Such fees and costs
shall not include costs incurred by the University in the use of its own
resources, such as employee time Licensee agrees to pay invoices for such fees
and costs submitted by University upon receipt of any such invoices. In any case
where Licensee fails to pay fees and costs invoiced to Licensee by University
within sixty (60) days of the date of such invoice, University may file,
prosecute and/or maintain a patent application or patent at its own expense and
for its own exclusive benefit. Licensee shall thereupon forfeit any license
related to the filing, prosecution, and maintenance of patent applications under
such patent or patent application.
9.3.1 University Cost Recovery from Licensee for Past Costs. Licensee is
hereby required to pay no later than June 13, 2003 the sum of Twenty
Thousand Four Hundred Twenty Four Dollars and Fifty One Cents ($20,424.51
US) to cover the past fees and costs as described above in Paragraph 9.3
9.3.2 University Cost Recovery from Licensee for Future Costs. Licensee is
hereby required to pay within thirty (30) days of the Effective Date the
sum of One Thousand Seven Hundred Sixty Five dollars ($1,765.00) ("Advanced
Payment") to cover the future fees and costs as described above in
Paragraph 9.3. The Advanced Payment will be placed in a non-interest
bearing account to be deposited in a University Advanced Payment account
University will submit the following documents to Licensee on a quarterly
basis: 1) an invoice which will summarize all costs and fees that have been
paid by University in support of the UW Patent Rights for the immediately
preceding quarter; 2) copies of all legal invoices paid by the University
during the immediately preceding quarter; and 3) either a report
identifying any unused portion of the Advanced Payment to be applied to the
next quarter's fees and costs or, if the Advanced Payment has been
depleted, a request for additional funds to replenish the Advanced Payment
account. The determination of the amount of additional funds necessary for
the Advanced Payment account will be made solely by the University and will
be based on the patent attorney's estimate for the upcoming year's fees and
costs. Upon termination of this Agreement, any unexpended balance of the
Advanced Payment will be held by University to pay outstanding fees and
costs as described in Paragraph 9.3, and the unused portion refunded to
Licensee within ninety (90) days after University's final accounting
University may, at University's sole discretion, apply any such unused
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portion of the Advanced Payment toward the payment of other monies Licensee
owes University under this Agreement. The Parties agree that in
establishing the Advance Payment account no fiduciary relationship between
them is created, and that University's duties with regard to the Advance
Payment are limited to those explicitly stated herein.
10.0 REPORTS
10.1 Quarterly Report. With each payment to University, Licensee shall include a
report setting forth the relevant details of the business conducted by Licensee
and each Sublicensee, if applicable, during the preceding calendar quarter
pursuant to their obligations under Paragraph 7.3 of this Agreement. This
report, for Licensee and each Sublicensee, shall include, at a minimum, the
following:
10.1.1 the number of units of Licensed Product(s) and Combination
Product(s) manufactured, used, or sold and by country within the Licensed
Territory;
10.1.2 the gross amounts invoiced for Licensed Product(s) and Combination
Product(s);
10.1.3 any and all discounts or allowances, and description of same,
granted to Third Parties; and
10.1.4 the calculation of total amounts due University
11.0 RECORD KEEPING
11.1 Records Retained. Licensee shall keep complete and accurate records and
books of account containing all information necessary for the computation and
verification of the amounts to be paid hereunder. Licensee shall keep these
records and books for a period of five (5) years, or longer if required by law,
following the end of the accounting period to which the information pertains.
11.2 Auditing Rights. Licensee agrees, at the request of University, to permit
one or more accountants selected exclusively by the University ("Accountants")
to have access to Licensee's records and books of account pertaining to this
Agreement during ordinary working hours to audit with respect to any payment
period ending prior to such request, the correctness of any report or payment
made under this Agreement, or to obtain information as to the payments due for
any such period in the case of failure of Licensee to report or make payment
pursuant to the terms of this Agreement.
11.3 Scope of Disclosure. The Accountant shall not disclose to University any
information relating to the business of Licensee except that which is necessary
to inform University of:
11.3.1 the accuracy or inaccuracy of Licensee's reports and payments;
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11.3.2 compliance or noncompliance by Licensee with the terms and
conditions of this Agreement; and
11.3.3 the extent of any inaccuracy or noncompliance.
11.4 Accountant Copies. Should the Accountant believe there is an inaccuracy in
any of Licensee's payments or noncompliance by Licensee with any of such terms
and conditions, the Accountant shall have the right to make and retain copies
(including photocopies) of any pertinent portions of the records and books of
account.
11.5 Costs of Audit. In the event that Licensee's royalties calculated for any
quarterly period are under reported by more than three percent (3%), the costs
of any audit and review initiated by University will be borne by Licensee;
otherwise, University shall bear the costs of any audit initiated by University.
12.0 PATENT INFRINGEMENT
12.1 Mutual Notice. Each Party shall promptly inform the other Party of any
alleged infringement of UW Patent Rights by a Third Party of which it becomes
aware, and provide to the other Party with any available evidence thereof
12.2 Licensee First Right to Settle During Term of Exclusivity. During the term
of exclusivity of the license granted hereunder, Licensee shall have the first
right to respond to, defend, and prosecute in its own name actions or suits
relating to UW Patent Rights. Licensee shall not settle any suits or actions in
any manner relating to the UW Patent Rights, however, where the settlement
adversely and materially affects the validity, enforceability, or existence of
UW Patent Rights without obtaining the prior written consent of University,
which consent shall not be unreasonably withheld or delayed. To enjoy said first
right, Licensee must initiate bona fide action to respond to any alleged
infringement within ninety (90) days of learning of said infringement. In the
event that University consents to settlement by Licensee, the proceeds from such
settlement will be distributed as follows: after Licensee has recovered its
reasonable attorneys' fees and other out-of-pocket expenses directly related to
any action, suit, or settlement for infringement of UW Patent Rights in the
Field of Use, University and Licensee shall divide any remaining damages,
awards, or settlement proceeds in the following manner:
University: Twenty Percent (20%)
Licensee: Eighty Percent (80%)
Any payment by an alleged infringer that constitutes consideration for Net
Sales, however, shall be handled according to the payment provisions of Article
7.0 (Licensing Fees and Royalties). Any payment by an alleged infringer that
constitutes consideration for the grant of a Sublicense, however, shall be
handled according to the applicable payment provisions for Sublicenses set forth
in this Agreement.
12.3 Voluntary Participation by University. In the event Licensee institutes
suit against an alleged infringer during the term of exclusivity as provided in
this Agreement, then University
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may agree to voluntarily participate as a named party at its sole discretion. If
University decides not to voluntarily participate in such suit, then University
agrees to be bound by any final judgment rendered by the court. Further, if
University chooses not to voluntarily participate but the court determines
University is a necessary or indispensable party, then Licensee agrees to pay
all University's reasonable attorneys' fees and other out-of-pocket direct
associated expenses, and University agrees to make reasonable efforts to
cooperate and assist Licensee in connection with the suit.
12.4 University Right to Institute Action. If Licensee fails, within ninety (90)
days of learning of an alleged infringement, to secure cessation of the
infringement, institute suit against the infringer, or provide to University
satisfactory evidence that Licensee is engaged in bona fide negotiation for the
acceptance by infringer of a Sublicense in and to relevant patents in UW Patent
Rights for the Field of Use, University may then, upon written notice to
Licensee, assume full right and responsibility to secure cessation of the
infringement, institute suit against the infringer, or secure acceptance of a
Sublicense from Licensee in and to relevant patents in UW Patent Rights,
approval for which Sublicense Licensee shall not unreasonably withhold. If
University in accordance with the terms and conditions of this Agreement chooses
to institute suit against an alleged infringer, University may bring such suit
in its own name (or, if required by law, in its and Licensee's name) and at its
own expense, and Licensee shall, but at University's expense for Licensee's
direct associated expenses, fully and promptly cooperate and assist University
in connection with any such suit. Any and all damages, awards, or settlement
proceeds arising from such a University initiated action shall be University's.
12.5 No Obligation to Institute Action. Neither Licensee nor University is
obligated under this Agreement to institute a suit against an alleged infringer
of UW Patent Rights.
13.0 PATENT VALIDITY
13.1 Licensee Notice to University of Third Party Actions. If any claim
challenging the validity or enforceability of any of the UW Patent Rights shall
be brought against Licensee, Licensee shall promptly notify University.
University, at its sole discretion, shall have the right, within thirty (30)
days after notification by Licensee of such action, to intervene and take over
the sole defense of the claim at University's expense. If University opts not to
intervene and take over the sole defense of the claim within thirty (30) days
after notification by Licensee, Licensee shall have the right to control the
defense of the claim at its own expense.
13.2 Covenant Not to Challenge UW Patent Rights. Licensee agrees during the term
of this Agreement not to challenge the validity or enforceability of any of the
UW Patent Rights.
14.0 PATENT MARKING. Licensee shall xxxx any and all material forms of Licensed
Product(s), Combination Product(s) or packaging pertaining thereto made and sold
by Licensee in the United States with an appropriate patent marking identifying
the pendency of any US patent application and/or any issued U.S. or foreign
patent forming any part of the UW Patent Rights. All product(s) shipped or sold
in other countries shall be marked in such a manner as to provide
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notice to potential infringers pursuant to the patent law and practice of the
country of manufacture or sale.
15.0 USE OF NAMES. Nothing contained in this Agreement shall be construed as
conferring any right to use in advertising, publicity or other promotional
activities any name, trade name, trademark, or other designation of University
without the express written permission of University, unless such listing is
required under local laws or regulations, provided that Licensee may state the
existence of this Agreement and the fact that both Parties entered into it For
any use other than the foregoing, Licensee hereby expressly agrees not to use
the name "University of Washington" or any contraction, abbreviation, or
simulation thereof without prior written approval from an authorized
representative of University If University or Licensee wishes to issue a press
release or make any other public announcement relating to the Agreement, the
Parties will consult with one another in advance on the content to ensure the
medical and scientific accuracy of the announcement and to ensure that such
press release or other public announcement does not contain Confidential
Information. In any event, no press release or other public announcement shall
be issued without the express written authorization of the Parties, and the
Parties agree to expedite the approval of each other's press releases
16.0 REPRESENTATIONS AND WARRANTIES
16.1 Right to Grant License. University represents and warrants that it has the
right to grant the license in and to the UW Patent Rights and disclose the UW
Technology Rights set forth in this Agreement.
16.2 DISCLAIMER OF WARRANTY. UNIVERSITY EXPRESSLY DISCLAIMS ANY AND ALL
WARRANTIES, WHETHER EXPRESS OR IMPLIED, PERTAINING TO THE MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OF THE UW PATENT RIGHTS, UW TECHNOLOGY RIGHTS,
LICENSED PRODUCT(S), OR ANYTHING ELSE LICENSED, DISCLOSED, OR OTHERWISE PROVIDED
TO LICENSEE UNDER THIS AGREEMENT
Nothing in this Agreement shall be construed as:
16.2.1 A representation or warranty by University as to the patentability,
validity, scope, or usefulness of the UW Patent Rights; or
16.2.2 A representation or warranty by University that anything made, used,
sold, or otherwise disposed of under any license granted in this Agreement
is or will be free from infringement of patents or other proprietary rights
not included in the UW Patent Rights
16.3 LIMITATION OF LIABILITY OF UNIVERSITY. UNIVERSITY'S MAXIMUM LIABILITY UNDER
THIS AGREEMENT IS LIMITED TO THE COSTS AND FEES PAID TO UNIVERSITY UNDER THIS
AGREEMENT. UNIVERSITY WILL NOT BE LIABLE DIRECTLY OR INDIRECTLY FOR ANY PROPERTY
DAMAGE, PERSONAL INJURY
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LOSS OF USE, INTERRUPTION OF BUSINESS, LOSS OF PROFITS, OR OTHER SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, HOWEVER CAUSED, WHETHER FOR BREACH OF
WARRANTY, CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT LIABILITY OR OTHERWISE
16.4 Representations by Licensee, Licensee represents that it has the right and
authority to enter into this Agreement and that it has listed all Affiliates as
of the Effective Date in Exhibit 1.2
17.0 INDEMNIFICATION AND INSURANCE
17.1 Licensee Indemnification of University. Licensee agrees to indemnify, hold
harmless, and defend University, its regents, officers, inventors, employees,
students, and agents ("Indemnified Parties") against any and all claims, causes
of action, lawsuits, or other proceedings ("Claims") and losses, damages, costs,
fees, and expenses ("Costs") filed, instituted, resulting from, or arising out
of the design, process, manufacture, use, possession, or operation by any person
or party (including Sublicensees) of UW Patent Rights, UW Technology Rights, any
products based on or incorporating UW Patent Rights or UW Technology Rights, or
any other embodiment of UW Patent Rights or UW Technology Rights Licensee agrees
to such indemnification even though such Claims or Costs related thereto are
based upon doctrines of strict liability or product liability Such indemnity
shall not, however, apply to Claims arising from the gross negligence or
intentional misconduct of any Indemnified Party This indemnification clause
shall survive the termination of this Agreement
17.2 Licensee Liability Insurance. Licensee shall maintain general liability
insurance including, but not limited to, product liability and contractual
liability coverage at an amount customary to Licensee's business for activities
and/or products of a similar nature that shall be in effect no later than the
date of the first human clinical testing of Licensed Product(s) and/or Combined
Product(s), Licensee's general liability insurance shall name University as an
additional insured Licensee shall declare whether the insurance is provided on a
"claims-made" form and must notify University within three (3) business days if
coverage is canceled
17.3 Human Clinical Trials. Licensee shall provide to University within thirty
(30) days prior to the initiation of human clinical trials with respect to
Licensed Product(s), certificates evidencing the existence and amount of the
insurance required under Article 18.0 (Term and Termination). Licensee shall
issue irrevocable instructions to its insurance agent and to the issuing
insurance company to notify University of any discontinuance or lapse of such
insurance not less than thirty (30) days prior to the time that any such
discontinuance is due to become effective Licensee shall provide University a
copy of such instructions upon their transmittal to the insurance agent and
issuing insurance company Licensee shall further provide University, at least
semi-annually, proof of continued coverage
18.0 TERM AND TERMINATION
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18.1 Term. The term of this Agreement shall commence on the Effective Date and
shall continue until the last of UW Patent Rights expires, unless sooner
terminated in accordance with the provisions set forth under this Article 18.0.
18.2 Material Breach By Licensee. University may terminate this Agreement
effective upon thirty (30) days prior written notice of termination to Licensee,
if Licensee materially breaches this Agreement and does not cure such breach
within sixty (60) days after receiving such notice. Licensee agrees that any and
all commercialization diligence requirements and required payments are material
license terms according to Articles 6.0 (Diligence and Development Milestones),
7.0 (Licensing Fees and Royalties), 8.0 (Sublicensing Payments and Fees) and 9.0
(Patent Prosecution and Cost Recovery). In the event that Licensee has breached
any such obligation with respect to Licensed Product(s) or Combination
Product(s), the University may, in its sole discretion, terminate the license
granted herein with respect to the UW Patent Rights and/or UW Technology Rights
relating to such Licensed Product(s) or Combination Product(s), while retaining
the remainder of this Agreement in full force and effect.
18.3 At-Will Termination By Licensee. Licensee may terminate this Agreement
effective upon sixty (60) days prior written notice if in Licensee's reasonable
opinion it will not commercialize the UW Patent Rights.
18.4 Insolvency. This Agreement, and the license granted to Licensee hereunder,
shall terminate immediately in the event that:
18.4.1 Licensee seeks liquidation, reorganization, dissolution or is
insolvent or evidence exists as to its insolvency or winding up of itself,
or makes any general assignment for the benefit of its creditors;
18.4.2 a petition is filed by or against Licensee, or any proceeding
against Licensee as a debtor, under any bankruptcy or insolvency law,
unless the laws then in effect void the effectiveness of this provision;
18.4.3 a receiver, trustee, or any similar officer, under bankruptcy law,
is appointed to take possession, custody or control of all or part of
Licensee's assets or property; or
18.4.4 Licensee adopts any resolution of its Board of Directors or
stockholders for the purpose of effecting any of the foregoing
18.5 No Further Rights. Upon termination, Licensee shall have no further rights
under either the UW Patent Rights or the UW Technology Rights
18.6 Financial Obligations. Termination by University or Licensee under the
options set forth in this Agreement shall not relieve Licensee from any
financial obligation to University accruing prior to termination or from
performing according to any and all other provisions of this Agreement that
survive termination
18.7 Other Remedies. The provisions under which this Agreement may be terminated
shall be in addition to any and all other legal remedies which either Party may
have for the enforcement
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of any and all terms hereof, and do not in any way limit any other legal remedy
such Party may have
19.0 ASSIGNMENT
19.1 University Consent Required. This Agreement may not be assigned by Licensee
without the express written consent of University except that Licensee may
assign or otherwise transfer this Agreement and the license granted hereby and
the rights acquired by it hereunder so long as such assignment or transfer shall
be accompanied by a sale or other transfer of Licensee's entire business or of
the entirety of that part of Licensee's business to which the license granted
hereby relates, including a change of control Licensee shall give University
thirty (30) days prior notice of such assignment and transfer. Upon such
assignment or transfer, the term "Licensee" as used in this Agreement shall
include such assignee or transferee and this Agreement shall be binding upon
Licensee's permitted successors and assigns
19.2 University Assignment. University may assign or otherwise transfer this
Agreement and the license granted hereby and the rights acquired by it
hereunder. University shall give Licensee thirty (30) days prior notice of such
assignment and transfer. Upon such assignment or transfer by such assignee or
transferee, the term University herein shall include such assignee or transferee
and this Agreement shall be binding upon University's permitted successors and
assigns.
20.0 NOTICE OR DEMAND
20.1 Written Notice Required. All notices, requests, and other communications
required or permitted under this Agreement shall be in writing, shall refer
specifically to this Agreement and the OTL # 1168-1291129DL, and shall be deemed
delivered upon receipt. If delivered by United States mail, postage should be
prepaid by certified return receipt. If sent by facsimile (provided that a
transmittal sheet indicates confirmation), or other electronic transmission, a
confirmation copy will be forwarded. Any such notices, requests, and other
communications shall be addressed as follows:
LICENSEE: ActivBiotics, Inc.
000 Xxxxxx Xxxxxx
Xxxxxxxxx, XX
Attn : Xxxxxx Xxxxxx, MD Ph.D.
Chief Executive Officer, ActivBiotics Inc
Main: 000-000-0000
Direct: 000-000-0000
Fax: 000-000-0000
UNIVERSITY: University of Washington
Office of Technology Licensing
Attn: Director
0000 00xx Xxxxxx XX, Xxxxx 000
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Xxxxxxx, XX 00000
Fax: 000-000-0000
20.2 Change of Address. Either Party, by notice, may change the address to which
notice will be sent and unless so notified of a change of address all notices
mailed to Licensee or University at the above stated address will be deemed
sufficient
21.0 EXPORT CONTROLS. Licensee acknowledges and agrees that University is
subject to United States laws and regulations controlling the export of
technical data, computer software, laboratory prototypes, and other commodities
(including without limitation the Arms Export Control Act, the Export
Administration Act of 1979 and the U.S., Patriot Act, and including all
amendments thereof), and that its obligations hereunder are contingent on
compliance with applicable United States export laws and regulations. The
transfer of certain technical data and commodities may require a valid export
license from the cognizant agency of the United States Government and/or written
assurances by Licensee that Licensee shall not export data or commodities to
certain foreign countries without prior approval of such agency University does
not represent that an export license shall be required, nor does it represent
that such an export license shall be issued Licensee hereby agrees that Licensee
shall not export or re-export, directly or indirectly, any Licensed Product(s)
and/or UW Patent Rights and/or UW Technology Rights to any country for which the
United States Government or other competent authority at the time of export
requires an export license or other approval, without first obtaining such
license or approval from the appropriate governmental authority; obtaining such
permission will be the sole responsibility of Licensee
22.0 DISPUTE RESOLUTION. The Parties shall attempt to resolve through good faith
discussions any dispute, which arises under this Agreement. Any dispute may, at
the election of either Party, be referred to the Licensee's Chief Executive
Officer and University's Director of Technology Licensing, or their authorized
representatives
23.0 ATTORNEYS' FEES. The substantially prevailing party in arbitration or in
any judicial or administrative action or proceeding arising under or in
connection with this Agreement shall be entitled to reimbursement from the other
party for its reasonable costs and attorneys' fees, including those on appeal,
and including without limitation, the cost at the hourly charges routinely
charged by the person providing the services, the time of legal assistants,
secretarial and clerical overtime, and fees and expenses of experts retained by
counsel
24.0 PROPRIETARY RIGHTS. Licensee will not, by performance under this Agreement,
obtain any ownership interest in the UW Patent Rights and/or UW Technology
Rights or any other proprietary rights or information of University, its
officers, inventors, employees, students, or agents.
25.0 SEVERABILITY. If any provision of this Agreement is determined to be
unenforceable or otherwise unlawful, then such provision will be without effect,
and the remaining terms and conditions of this Agreement will survive, as if
such provision had not been included herein. The
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Parties will promptly meet to agree upon further terms which will, within the
confines of the law, most substantially satisfy the intention of the Parties as
reflected by the ineffective provision
26.0 HEADINGS AND CAPTIONS. The headings and captions of the Articles of this
Agreement are for convenience of reference only and in no way define, limit or
affect the scope or substance of any Article of this Agreement
27.0 SURVIVAL. Article 17.0 (Indemnification and Insurance), Article 23.0
(Attorneys' Fees), and Paragraph 28.1 (Choice of Law/Venue), and other
provisions that by their context would survive, shall survive the termination of
this Agreement.
28.0 MISCELLANEOUS
28.1 Choice of Law/Venue. Because University is a public institution with its
central administrative offices in Seattle, Washington, and because of the
critical role played by University in administrating terms of this Agreement,
the Parties agree this Agreement shall be governed by and interpreted in
accordance with the laws of the state of Washington, regardless of its conflict
of law provisions. The Parties further agree that any claim related in any
manner to the Agreement shall be instituted and commenced in, and venue shall be
either King County, Washington or the United Stated District Court for the
Western District of Washington
28.2 Successors and Assigns. This Agreement shall be binding upon and inure to
the benefit of both Parties and their respective successors and assigns,
including any corporation or entity with which or into which either Party may be
merged or which may succeed to its assets or business
28.3 Non-Agency. With respect to the subject matter of this Agreement, Licensee
and University are independent contractors and neither shall be deemed to be an
agent, employee, partner, nor joint-venturer of the other for any purpose
28.4 Waiver. No delay or omission by either Party in exercising any right under
this Agreement shall operate as a waiver of that or any other right. A waiver or
consent given by either Party on any one occasion is effective only in that
instance and shall not be construed as a bar to or waiver of any right on any
other occasion
28.5 Entire Agreement. The Parties hereto acknowledge that this Agreement,
together with the Exclusive Option Agreement Between ActivBiotics, Inc. and the
University of Washington, dated June 13, 2002, sets forth the entire Agreement
and understanding of the Parties hereto as to the subject matter hereof,
supersedes any and all prior written and oral agreements, understandings or
offers. This Agreement shall be operative in the event of inconsistencies with
any other agreement. This Agreement may not be modified, changed or discharged
in whole or in part, except by an agreement in writing signed by authorized
representatives of both Licensee and University
IN WITNESS WHEREOF, THE PARTIES HAVE EACH READ AND BY SIGNATURE OF THIS
AGREEMENT AGREE TO BE LEGALLY BOUND BY ALL OF THE ATTACHED
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21
TERMS AND CONDITIONS, ALL OF WHICH ARE INCORPORATED FULLY INTO THIS AGREEMENT,
AND HAVE CAUSED THIS AGREEMENT TO BE EXECUTED BY THEIR DULY AUTHORIZED
REPRESENTATIVES.
ACTIVBIOTICS INC. UNIVERSITY OF WASHINGTON
By: /s/ Xxxxxx X. Xxxxxx By: /s/ Xxxxx X. Xxxxxxxx
--------------------------------- ------------------------------------
Name: Xxxxxx X. Xxxxxx, M.D., Ph.D. Name: Xxxxx X. Xxxxxxxx
Title: CEO Title: Vice Xxxxxxx, Intellectual
Property and Technology Transfer
Date: June 2, 2003 Date: May 19, 2003
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22
EXHIBIT A
Exclusive Option Agreement Between ActivBiotics, Inc. and the
University of Washington
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23
EXCLUSIVE OPTION AGREEMENT
BETWEEN
ACTIVBIOTICS, INC. AND THE UNIVERSITY OF WASHINGTON
THIS EXCLUSIVE OPTION AGREEMENT ("Agreement") is entered into on June 13th, 2002
("Effective Date") by and between ActivBiotics, Inc., a Delaware corporation
with its principal place of business at Xxxxxxxx Xxxxxx 000, Xxxxxxxxx, XX
00000 ("Company") and the University of Washington, a public institution of
higher education and an agency of the state of Washington acting through its
Office of Technology Licensing, with administrative offices at 0000 XX 00xx
Xxxxxx, Xxxxx 000, Xxxxxxx, XX 00000 ("University").
1. Recitals.
1.1 Whereas, University has developed and owns or is in possession of certain
technology ("UW Technology" defined below) relating to Diagnosis and Treatment
of Arterial Chlamydial Granuloma;
1.2 Whereas, Company is an early stage pharmaceutical company focusing on the
development of cures for chronic and infectious diseases;
1.3 Whereas, Company is willing to support the preparation, filing, prosecution
and maintenance of certain patent applications or issued patents covering all or
part of UW Technology and is willing to devote corporate resources directed
towards the support and development of UW Technology;
1.4 Whereas, University is willing to grant Company an option to obtain an
exclusive, worldwide, royalty bearing license to UW Patent Rights in the Field
of Use under the terms and conditions of this Agreement;
Now, therefore, in consideration of the mutual promises set forth herein, and
other good and valuable consideration, the receipt and sufficiency of which is
hereby expressly acknowledged, the University and Company (collectively "the
Parties") hereby agree as follows:
2. Definitions.
2.1 "UW Technology" shall mean technology related to Diagnosis and Treatment of
Arterial Chlamydial Granuloma as developed in the University laboratory by Dr(s)
Cho Xxx Xxx, Xxxxx Xxxx, Xxxxxxx X. Xxxxxx, Xxx Xxx Xxxxxxxx and I Xxxxxx
Xxxxxxxx and as recorded in OTL file # 1169-1291129DL
2.2 "UW Inventors" shall mean Drs Cho Chuo Kuo and Xx Xxxxx Xxxx.
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SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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2.3 "UW Patent Rights" shall mean the United States Patents listed below and any
corresponding US patent issued therefrom, including all reissues, divisionals,
continuations, reexaminations and extensions thereof, together with all
corresponding foreign patents, extensions, supplemental protection certificates
and applications corresponding thereto now issued or issued during the term of
the license agreement and which directly relate to UW Technology. A patent or
patent application shall cease to be a UW Patent Right when any of the following
occur: a) it expires; b) it is abandoned; or c) it is held to be unenforceable
by a court of competent jurisdiction from which no appeal can be taken. Issued
patents as of the Effective Date are:
United States Patent Number: US6,043,225
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 3/28/2000
Assignee: Xxxxxxxxxx xx Xxxxxxxxxx xxx Xxxxx Xxxx*
Xxxxxx Xxxxxx Patent Number: US5,830,874
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 11/3/1998
Assignee: Xxxxxxxxxx xx Xxxxxxxxxx xxx Xxxxx Xxxx*
Xxxxxx Xxxxxx Patent Number: US5,424,187
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 6/13/1995
Assignee: University of Washington and Xxxxx Xxxx*
* Exclusively controlled by University of Washington under separate agreement
with Shor evidence of which is given in Appendix B.
2.4 "Technical Information" shall mean any technical facts, data, or advice,
written or oral (in the form of information contained in patents and patent
applications, reports, letters, drawings, specifications, testing procedures,
training and operational manuals, bills of materials, photographs and other
materials) directly related to UW Technology and which is owned or in the
possession of University, delivered to Company by University and not subject to
third party rights.
2.5 "Field of Use" shall mean Diagnosis and Treatment of Arterial Chlamydial
Granuloma, which includes related arterial and coronary diseases or disorders
caused or influenced by chlamydial infections.
3. Grant of Option, Exercise of Option, and Option Period.
3.1 Grant. Provided that Company complies with obligations set forth under this
Agreement, University hereby grants to Company a time-limited option to
negotiate a royalty-bearing,
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limited-term, worldwide exclusive license on commercially reasonable terms under
the UW Patent Rights in the Field of Use to make, have made, use, sell, and
offer to sell products that use or are derived from the UW Patent Rights in the
Field of Use.
3.1.1 The option granted above, and any license granted pursuant thereto,
is subject to a reserved right by the University, with the right to
non-exclusively sublicense to non-profit institutions, to make, have made, and
use products, processes, or other subject matter covered by the UW Patent
Rights, UW Technology or Technical Information for internal research,
instructional and/or other academic purposes. University shall have the right to
use the UW Patent Rights, UW Technology or Technical Information for its own
internal, research, including sponsored research and academic collaborations
during the term of this Agreement. University shall also have the right to
publish any information included in the UW Patent Rights, UW Technology or
Technical Information or any information that may result from their research in
this area.
3.1.2 Article 3.1 notwithstanding, Company acknowledges that UW Patent
Rights involve federal research funding. Company acknowledges that University
has obligations ("Obligations") under federal law, and actions taken by
University to fulfill such obligations shall not be deemed inconsistent with
University's obligations under this Agreement nor any license agreement granted
pursuant thereto. Company acknowledges that Obligations include, without
limitation, the granting of a worldwide non-exclusive, royalty-free license for
any such UW Patent Rights, by University to the United States Government, and a
statement of United States Government patent rights on all the patents and
patent applications within the UW Patent Rights. Company acknowledges that any
and all determinations of federal funding involvement shall be made solely by
University and University's determination shall be honored by Company.
3.2 Option Period/Option Period Extension. The option shall expire on the
earlier of either (a) execution of a license or (b) 1 year from the Effective
Date of the Agreement. If at the one (1) year anniversary of the Effective
Date of the Agreement the option has not been exercised, the Company shall
have the right to extend the option period ("Option Period Extension") for a
fee of [***] dollars ([***]USD) for an additional year. The Option Period
Extension shall expire the earlier of either (a) execution of a license or
(b) one (1) years from the Effective Date of the extension.
3.3 Commercialization Prohibited During the term of this Agreement. Company
shall have the right to use the UW Patent Rights and Technical Information for
research only. Company is expressly prohibited from selling any products or
services or developing any salable product or service based on the UW Patent
Rights or Technical Information until such time as a license agreement has been
fully executed between the parties.
3.4 Mutual Confidentiality. During the Option Period, Company shall maintain the
UW Technology, UW Patent Rights and Technical Information in confidence and
refrain from disclosing information related to UW Technology, UW Patent Rights
or Technical Information to a third party. In no event shall Company disclose,
or otherwise use UW Technology, UW Patent Rights or Technical Information in
connection with any patent application filed or on behalf of the Company.
Company agrees to restrict the use of UW Technology, UW Patent Rights and
Technical Information exclusively to the terms of this Agreement, provided that
such restriction does not include information that is in the public domain or
which company can show as derived prior to or independently from information
received from University. University's OTL (Office
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Technology of Licensing) shall maintain in confidence and refrain from
disclosing proprietary Company information, including strategic business plans,
information regarding research, research plans, experimental results or other
proprietary information regarding the business of the Company to the extent
permitted by law. The University of Washington is a governmental agency of the
state of Washington and is subject to the Washington Public records Act, RCW
42.17.250 et seq., and no obligation assumed by University under this Agreement
shall be deemed to be inconsistent with University's obligations defined under
RCW 42.17. University shall provide notice to Company in a timely manner such
that Company is afforded sufficient time to review such documents and/or seek a
protective order, at Company's expense. The responsibility for protecting the
Confidential Information shall reside exclusively with Company utilizing the
procedures described in RCW 42.17.330
3.5 Exercise of Option. If Company wants to exercise the option hereunder it
must provide written notice to University within the term of this Agreement and
provide the University with an acceptable development plan that is similar in
scope and substance to that outlined in Exhibit A attached hereto. The Parties
agree to negotiate the terms of a license in good faith.
4. Option Fee and Payments.
4.1 Fee. As consideration for the option granted by University to Company for
the Option Period, Company agrees to pay to University a non-refundable,
non-creditable option fee of [***] Dollars (US$[***]), due within thirty (30)
days of the Effective Date of this Agreement.
4.2 Patent Prosecution and Cost Recovery
4.2.1 During the Option Period, University, or its designee, shall have
sole control over the filing, prosecution and maintenance of any and all patent
applications included in UW Patent Rights, whether pending or not yet filed as
of the Effective Date of this Agreement, and of the maintenance and other
management of any and all issued patents included in UW Patent Rights
4.2.2 During the Option Period, University shall keep Company informed of
the status of any and all new patents and/or patent applications that are part
of UW Patent Rights Company may provide comments to University on courses of
action with respect to the filing of new patent applications relating to UW
Technology, prosecution of patent applications, and/or management of patents in
UW Patent Rights, provided University shall have exclusive authority to
prosecute and maintain UW Patent Rights
4.2.3 Company agrees to reimburse University for all fees and costs related
to the filing, prosecution and maintenance of patent applications, including,
without limitation, interference, oppositions, and reexaminations, and
maintenance and defense of patents, in patent fees and costs relating to UW
Patent Rights, whether incurred prior to the execution of this Agreement or
during the term of this Agreement. Such fees and costs shall not include costs
incurred by the University in the use of its own resources, such as employee
time, and shall not extend to patenting fees and costs incurred by University
after termination of this Agreement. Company agrees to pay invoices for
previously incurred fees and costs submitted by University in the amount of
Forty Thousand Eight Hundred and Forty-nine Dollars and Two cents
($40,849.02USD) according to the following schedule:
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- Six (6) Months after the Effective date of this
Agreement: Twenty Thousand Four Hundred and Twenty-five
Dollars and Fifty-two Cents ($20,425 52USD);
- Twelve (12) Months after the Effective Date of this
Agreement: Twenty Thousand Four Hundred and Twenty-five
Dollars and Fifty-two Cents ($20,425 52USD)
5. Termination
5.1 Termination by Company. Company has the right to terminate this Agreement
provided that Company gives University sixty (60) days prior written notice of
termination. Termination will be effective sixty (60) days from the date
University receives such notice.
5.2 Termination by University. University shall have the right to terminate this
Agreement, including the option granted to Company in Article 3.1, effective
immediately upon written notice of termination to Company in the event that
Company fails to meet the obligations of Articles 3.3, 3.4, 4.1, or 4.2.3 under
this Agreement and such failure or breach continues unremedied for a period of
sixty (60) days after receipt by Company of written notice thereof from
University. Termination will be effective sixty (60) days after the date Company
receives such notice and only in the event that Company does not cure the
failure or breach within that sixty (60) day period;
5.3 Automatic Termination. This Agreement, and the option granted to Company
hereinabove, shall terminate immediately in the event that (a) Company seeks
liquidation, reorganization, dissolution or winding-up of itself, is insolvent
or evidence exists as to its insolvency, or Company makes any general assignment
for the benefit of its creditors; (b) a petition is filed by or against Company,
or any proceeding is initiated by or against Company, or any proceeding is
initiated against Company as debtor, under any bankruptcy or insolvency law; or
(c) receiver, trustee, or any similar officer is appointed to take possession,
custody, or control of all or any part of Company's assets or property.
6. License Terms.
Upon University's receipt of notice and a development plan reasonably acceptable
to University pursuant to Article 3.5, University and Company shall enter into
good faith negotiations regarding the terms of a license agreement.
7. Miscellaneous Provisions.
7.1 Limitation of Liability of University. No term or provision of this
Agreement shall be construed as a warranty or representation by University
concerning the validity, scope or value of UW Technology, UW Patent Rights or
Technical Information. With respect to the subject matter of this Agreement,
Company and University are independent contractors and neither shall be deemed
to be an agent, employee, partner, nor joint-venturer of the other for any
purpose.
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SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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7.2 Indemnification. Company agrees to indemnify, hold harmless and defend
University, its regents, officers, inventors, employees, students, and agents
("Indemnified Parties") against any and all claims, causes of action, lawsuits,
or other proceedings ("Claims") and losses, damages, costs, fees and expenses
("Costs") filed, instituted, resulting from or arising out of the design,
process, manufacture or use by any person or party, of any Company Products
based on UW Patent Rights, UW Technology or Technical Information. Company
agrees to such indemnification even though such Claims or Costs related thereto
result in whole or in part from the negligence of any of the Indemnified Parties
or are based upon doctrines of strict liability or products liability. Such
indemnity shall not, however, apply to Claims arising from the gross negligence
or intentional misconduct of any Indemnified Party. This indemnification clause
shall survive the termination of this Agreement.
7.3 Entire Agreement. The Parties hereto acknowledge that this Agreement sets
forth the entire Agreement and understanding of the Parties hereto as to the
subject matter hereof and supersedes any and all prior written and oral
agreements, understandings or offers. This Agreement may not be modified,
changed or discharged in whole or in part, except by an agreement in writing
signed by authorized representatives of both Company and University.
7.4 Choice of Law/Venue. Because University is an agency of the state of
Washington, the Parties agree that this Agreement shall be governed by and
interpreted in accordance with the laws of the state of Washington, regardless
of choice of law provisions. The parties further agree that any claim related in
any manner to the Agreement shall be instituted and commenced in, and venue
shall be King County, Washington or the United States District Court for the
Western District of Washington.
7.5 Severability. Should any provision of this Agreement be determined to be
unenforceable or otherwise unlawful, then such provision shall be without
effect, and the remaining terms of this Agreement will survive, as if such
provision had not been included herein; and the Parties shall promptly meet to
agree upon further terms which shall, within the confines of the law, most
substantially satisfy the intention of the Parties as reflected by the
ineffective provision.
7.6 Waiver. No delay or omission by either Party in exercising any right under
this Agreement shall operate as a waiver of that or any other right. A waiver or
consent given by either Party on any one occasion is effective only in that
instance and shall not be construed as a bar to or waiver of any right on any
other occasion.
7.7 Notices and Reports. All notices, requests and other communications to
Company or University hereunder shall be in writing (including fax only if
transmittal sheet indicates confirmation), shall refer specifically to this
Agreement and shall be personally delivered or sent by fax or other electronic
transmission or by registered mail, or certified mail, return receipt requested,
postage prepaid, in each case to the respective addresses listed below (or to
such address as may be specified in writing to the other party hereto):
If to Company:
Active Biotics, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attn: Chief Executive Officer
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SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
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Fax: 0-000-000-0000
If to University:
University of Washington
Office of Technology Licensing
0000 XX 00xx Xx. Xxxxx 000
Xxxxxxx, XX 00000
Attn: Director
Fax: (000)000-0000
7.8 Attorney's Fees. If any dispute shall arise under this Agreement, the
prevailing party shall be entitled to its reasonable attorneys' fees and costs
of litigation from the other party.
7.9 No License. This Agreement does not grant Company a license to UW
Technology, UW Patent Rights or Technical Information.
7.10 Use of Names, Trade Names and Trademarks. Nothing in this Agreement confers
the right upon a party to use the trade name, trademark, or name of the other
party in any advertising, publicity or other promotional activities, unless the
express, written permission of the other party has been obtained. The use of the
name "University of Washington," or any contraction, abbreviation, or simulation
thereof, by Company is expressly prohibited without prior written approval.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed and delivered as of the Effective Date.
Company:
By: /s/ Xxxxxx Xxxxxx
------------------------------
Name: Xxxxxx Xxxxxx, M.D, Ph.D
Title: CEO
Date: June 13th, 2002
University of Washington:
By: /s/ Xxxxxxx Xxxxxxxxx
------------------------------
Name: Xxxxxxx Xxxxxxxxx
Title: Director OTL
Date: June 17, 2002
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EXHIBIT A
DEVELOPMENT PLAN
A Development Plan of the scope outlined below shall be submitted to the
University of Washington ("University") within thirty (30) days of the execution
of this Agreement. In general, the Development Plan should provide the
University with a summary overview of the activities that Company believes are
necessary to bring products based on either UW Technology or UW Patent Rights to
the marketplace.
Development Program
Development Activities to be Undertaken
(please break activities into sub-units where appropriate with the anticipated
date of completion of major milestones.)
Estimated Total Development Time
Governmental Approval (if applicable)
Types of submissions required
Government Agency (e.g. FDA, EPA, etc)
Proposed Market Research
Competitive Information
Potential Competitors
Potential Competitive Devices/Compositions
Known Competitor's plans, developments, technical achievements
D. Perceived Advantage Over Competitors
Anticipated Date of Product Launch
Total Length: approximately 2-3 pages.
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EXHIBIT B
AGREEMENT BETWEEN UNIVERSITY OF WASHINGTON AND A SHOR
COMMERCIALIZATION AGREEMENT
This Commercialization Agreement ("Commercialization Agreement") is entered into
on 5-13-03 ("Effective Date") by and between the University of Washington, a
public institution of higher education and an agency of the state of Washington,
acting through its Office of Technology Licensing ("OTL"), with administrative
offices at 0000 XX 00xx Xxxxxx, Xxxxx 000, Xxxxxxx, XX 00000, ("University"),
and Xx. Xxxxx Xxxx, having residency at 170 Xxxxxxxxx, 0 Xxxxxx Xxxxxx,
Xxxxxxx, 0000 ("XXXX") (collectively the "Parties").
1. BACKGROUND
1.1 SHOR conceived of certain technology relating to the detection of bacteria
in the cornoratry artery atheroma plaque and South African patent applications
were filed in respect of this technology by SHOR (SA 91/4565 and SA 92/3699).
SHOR made the technology available to University for further research and
development and, together with Drs. Kuo, Patton, Grayston and Xxxxxxxx
("Developers"), the technology was developed, culminating in the filing of a
patent application, entitled "Detection of Bacteria in Cornatory Artery Atheroma
Plaque", which was subsequently granted as US 5,424,187 ("Invention"), and as
described in University docket 1168-1291129DL.
1.2 The Inventions were made in the course of research supported by the National
Cancer Institute (Grant#: NIH AI21885). Pursuant to 00 XXX Xxxxxxx 000, xxx
Xxxxxx Xxxxxx Government shall have rights to the Inventions by virtue of
funding provided to Drs. Kuo, Patton, Grayston, and Xxxxxxxx as described above.
1.3 University and SHOR entered into an Inter Institutional Agreement on May 15,
1996 ("Management Agreement"), attached hereto as Exhibit 1, for the Invention
and the technology described in University docket 1168-1291129DL;
1.4 Subsequently, two divisional patent applications were filed, with SHOR and
University recorded as assignees. However, University declined any interest in
pursuing the divisional applications to grant. SHOR prosecuted these
applications at his own cost and they were subsequently granted as US 5,830,874
and US 6,043,225. University offered its undivided rights and interest in the
patents US 5,830,874 and US 6,043,225 back to the National Institute of Health
("NIH").
1.5 University, with the assistance of Developers, petitioned the NIH for the
return of these rights to University. NIH returned these rights to University in
May 2002.
1.6 The Parties now wish to terminate the Management Agreement and thereby
assign the rights acquired by University in the Management Agreement in and to
US 5,424,187 back to SHOR.
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PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
1
1.7 The Parties further wish to replace in its entirety, the Management
Agreement with this Commercialization Agreement.
1.8 In addition University and SHOR desire that their respective undivided
interests in the said Invention(s) be administered by University.
1.9 To give effect to this intention, SHOR further desires to license his
undivided interest in the Patent Rights to University on an exclusive basis.
Now Therefore, in consideration of the mutual promises set forth herein, and
other good and valuable consideration, the receipt and sufficiency of which is
hereby expressly acknowledged, the Parties hereto, intending to be legally
bound, agree as follows:
2. DEFINITIONS
2.1 All capitalized terms used in this Commercialization Agreement have the
respective meanings ascribed to them in this Commercialization Agreement and,
unless indicated otherwise, are intended to include all derivative forms of the
terms.
2.2 "Confidential Information" means information that is/are clearly marked
"Confidential Information" or if transmitted orally, that is reduced to writing
within thirty (30) days and clearly marked "Confidential Information."
Confidential Information shall include, without limitation, Invention and
license agreements and business information related to Invention(s) exchanged
between Parties. Notwithstanding the foregoing, the receiving party shall have
no obligation of confidentiality relating to:
2.2.1 any information of the disclosing party that is required to be
disclosed by judicial or legislative action or government regulation;
2.2.2 any information that is or becomes part of the public domain through
no fault of the receiving party;
2.2.3 any information that is known to the receiving party prior to the
disclosure by the disclosing party, as evidenced by documentation;
2.2.4 any information that is publicly released as authorized under this
Commercialization Agreement by the disclosing party, its employees or
agents;
2.2.5 any information that is subsequently obtained by the receiving party
from a duly authorized third party; or
2.2.6 any information that is independently developed by the receiving
party without any breach of this Commercialization Agreement as evidenced
by documentation.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
2
2.3 "Expenses" mean:
2.3.1 all reasonable and actual out-of-pocket costs incurred by SHOR and
University, for the preparation, filing, prosecution and maintenance of
patent applications, including, without limitation, interferences,
oppositions, and reexaminations, and maintenance and defense of patents and
litigation (except those litigation costs covered by Article 9), and the
maintenance of resulting patents;
2.3.2 all reasonable and actual out-of-pocket legal costs incurred by SHOR
and University for negotiating and managing assignments, waivers, licenses;
2.3.3 any other reasonable direct cost incurred by SHOR and University and
reasonably associated with obtaining and maintaining patent or other legal
protection for the Inventions, or negotiating and managing assignments,
waivers, licenses and other contracts associated with acquiring and
transferring the Inventions; and
2.3.4 Expenses includes all costs accrued after the Effective Date by
University and/or SHOR for the filing, prosecution and maintenance of the
Patent Rights.
2.3.5 Costs 2.3.1, 2.3.2 and 2.3.3 shall be exclusive of any salaries,
administrative, management fees related to the invention paid to a third
party technology firm or other indirect costs.
2.4 "Invention" shall mean the technology as developed by SHOR and Xx. Xxx and
as recorded in University docket 1168-1291129DL.
2.5 "Inventors" shall mean Xx. Xxx, who was an employee of University at the
time of development the Invention and SHOR.
2.6 "Net Revenues" shall mean gross proceeds including equity and other cash or
non-cash considerations received by University from the licensing of said
Invention(s) pursuant to this Commercialization Agreement, less:
2.6.1 [***] of such proceeds for the management of the technologies;
2.6.2 Pro rata reimbursement of unreimbursed Expenses as defined above and
including all costs accrued prior to the Effective Date by University and
SHOR for the filing, prosecution and maintenance of the Patent Rights.
2.7 "Patent Rights" shall mean any and all matter claimed in or disclosed by
U.S. Patents listed below, including all patents, reissues, divisionals,
continuations, reexaminations, substitutions and extensions thereof, subject
matter claimed in any continuation-in-part on which claims issuing obtain the
benefit of a priority date of any of the foregoing applications, and all
corresponding foreign patent applications, extensions, supplemental protection
certificates and patents corresponding thereto issued during the terms of this
Commercialization Agreement.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
3
Issued patents as of the Effective Date are:
------------------------------------------------------------------------------
United States Patent Number: US6,043,225
------------------------------------------------------------------------------
Title: Diagnosis and Treatment of Arterial
Chlamydial Granuloma
------------------------------------------------------------------------------
Application Date: 3/28/2000
------------------------------------------------------------------------------
Assignee: University of Washington and Xxxxx Xxxx
------------------------------------------------------------------------------
------------------------------------------------------------------------------
United States Patent Number: US5,830,874
------------------------------------------------------------------------------
Title: Diagnosis and Treatment of Arterial
Chlamydial Granuloma
------------------------------------------------------------------------------
Application Date: 11/3/1998
------------------------------------------------------------------------------
Assignee: University of Washington and Xxxxx Xxxx
------------------------------------------------------------------------------
------------------------------------------------------------------------------
United States Patent Number: US5,424,187
------------------------------------------------------------------------------
Title: Diagnosis and Treatment of Arterial
Chlamydial Granuloma
------------------------------------------------------------------------------
Application Date: 6/13/1995
------------------------------------------------------------------------------
Assignee: University of Washington and Xxxxx Xxxx
------------------------------------------------------------------------------
2.9 "Royalties" mean proceeds received from separate licensing arrangements
for Inventions entered into after either party has terminated this
Commercialization Agreement pursuant to Article 14.
3. TERMINATION OF MANAGEMENT AGREEMENT AND ASSIGNMENT BACK TO SHOR
3.1 By entering into this Commercialization Agreement, the Parties hereby
agree to terminate the Management Agreement and replace it with this
Commercialization Agreement as of the Effective Date;
3.2 University hereby assigns back to SHOR all the patent rights acquired by
University in and to US 5,424,187 as provided in the Management Agreement.
4. LICENSE TO UNIVERSITY
SHOR hereby grants to University an exclusive license to use his
undivided interest in the Patent Rights for the purpose of commercializing
the Inventions.
5. PATENT PROSECUTION AND PROTECTION
5.1 University shall maintain and otherwise protect the Patent Rights and
shall keep SHOR apprised of the status of the Patent Rights. University shall
be responsible for all Expenses
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
4
associated with the Patent Rights incurred after the Effective Date of this
Commercialization Agreement.
5.2 University agrees that all actions regarding Patent Rights require the
written approval of SHOR being the co-owner of the Patent Rights, which approval
will not be unreasonably withheld.
5.3 University agrees to copy SHOR on all correspondence between University and
patent counsel regarding Patent Rights and to forward to University any
decisions regarding Patent Rights. University will notify the SHOR of all patent
management matters within fifteen (15) business days of University's receipt of
such notifications.
5.4 University acknowledges and agrees that it will confer in good faith with
SHOR regarding any decisions regarding patent prosecution or maintenance.
5.5 University agrees that all actions regarding Patent Rights require the
written approval of SHOR, which will not be unreasonably withheld. SHOR will
submit to University such written approval within ten (10) business days after
receiving University's notification of patent management matters.
6. LICENSING: DISTRIBUTION OF NET REVENUES
6.1 University shall have sole responsibility to seek licensee(s) and execute
licenses for the commercial development of said Inventions and the Patent
Rights, and shall administer the Inventions and the Patent Rights for the mutual
benefit of the parties and in the best public interest. SHOR shall have the
opportunity to approve all license agreements prior to final execution, which
approval shall not be unreasonably withheld or delayed and SHOR will submit to
University any comments within ten (10) business days after receiving the
agreements, and University will promptly respond to SHOR's comments. If no
comments are received within the ten (10) business days time period, approval of
the proposed license agreement will be implied, and University shall proceed
with execution of the license agreement.
6.2 University agrees to confer with SHOR regarding licensing strategies and
milestones in any negotiations concerning potential licensing of Patent Rights,
and to seek from a licensee reimbursement of all Expenses associate with Patent
Rights including costs accrued prior to the Effective Date of this
Commercialization Agreement.
6.3 University shall provide SHOR copies of all licenses conveying rights in
respect of the Patent Rights.
6.4 University agrees to consider in good faith any potential licensees that
SHOR may suggest or recommend.
6.5 University shall not assign the licenses to the Patent Rights to any third
party, notwithstanding any other provision of this Commercialization Agreement
or governmental consent, without the prior written consent of SHOR.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
5
6.6 University shall make reasonable efforts to recover Expenses incurred by
both Shor and University prior to the Effective Date of this
Commercialization Agreement.
6.7 University shall distribute Net Revenues concurrently with distributions
it makes under University's patent policy, but in any case not later than six
months following the close of the preceding fiscal year, on the following
basis:
(a) [***] of the Net Revenues to University; and
(b) [***] of the Net Revenues to SHOR.
6.8 In the event of any litigation, actual or imminent, or any other action
to protect the Patent Rights, University may withhold all distribution and
impound Net Revenues and/or Royalties until resolution of the matter,
provided that University shall not withhold in total a greater amount
received by it than can reasonably be expected to compensate University for
its legal costs and damages arising out of such action.
6.9 SHOR agrees that any licensing of such rights is subject to any
and all rights of the U.S. government under Xxxx Xxxx (35 USC 200 et seq. and
37 CFR S. 401 et seq.) arising from federal funding of the Inventors' research
which led to the creation or discovery of the Inventions.
7. CONFIDENTIALITY
7.1 COMMERCIALIZATION AGREEMENT. Beginning on the Effective Date and
continuing throughout the term of this Commercialization Agreement and
thereafter for a period of Five (5) Years, neither party shall at any time,
without the express prior written consent of the other, disclose or otherwise
make known or available to any third party, any Confidential Information of
the other party. The receiving party shall utilize reasonable procedures to
safeguard the Confidential Information of the disclosing party, including
releasing such Confidential Information only on a "need-to-know" basis.
7.2 PUBLIC DISCLOSURE ACT. The University of Washington is a governmental
agency of the state of Washington and is subject to the Washington Public
Records Act, RCW 42.17 et seq., and no obligation assumed by University under
this Commercialization Agreement shall be deemed to be inconsistent with
University's obligations defined under RCW 42.17. In the event University
receives a request for public records under the Public Records Act for
documents containing Confidential Information, and if University concludes
that the documents are not otherwise exempt from public disclosure,
University will provide SHOR notice of the request before releasing such
documents. The responsibility for protecting the Confidential Information
shall reside exclusively with SHOR utilizing the procedures described in RCW
42.17.330.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
6
8. RECORDS AND REPORTS
University shall keep complete true and accurate accounts of all Expenses
and of all proceeds received by it from each licensee of the Inventions and/or
Patent Rights, and shall permit SHOR to allow a certified public accounting
firm, reasonably acceptable to University, to examine University's books and
records in order to verify the accuracy of any reports or payments due or owing
under this Commercialization Agreement.
9. PATENT INFRINGEMENT
9.1 If SHOR or University shall learn of the substantial infringement of the
Patent Rights, the party who learned of the infringement shall promptly call the
other party's attention thereto in writing and shall provide the other party
with evidence of such infringement. University, in cooperation with SHOR, shall
use its reasonable best efforts to terminate such infringement without
litigation. If the efforts of the parties are not successful in abating the
infringement within ninety (90) days after the infringer has been formally
notified of the infringement by University after consulting with SHOR,
University shall have the right to:
9.1.1 Permit its licensee(s) to bring suit on its own account;
9.1.2 Commence a patent infringement suit on it own account after giving
SHOR the opportunity to participate in the suit;
9.1.3 Join with SHOR in such suit;
9.1.4 Join with SHOR and any licensee in such suit; or
9.1.5 Refuse to participate in such suit, and University shall give written
notice to SHOR within thirty (30) days after such ninety (90)-day period of
its election.
9.2 The parties agree that if one party to this Commercialization Agreement
brings a patent infringement action pursuant to Paragraph 8.1, then:
9.2.1 only the party bringing the action shall be entitled to whatever
damages may he recovered in such action;
9.2.2 the party bringing the action, and that party alone, shall bear all
costs and expenses associated with the action; and
9.2.3 the party bringing the action shall indemnify and hold harmless the
non-participating party from all costs, expenses, claims, causes of
action, and damages arising from or in any way related to such action.
9.3 If the parties jointly prosecute a patent infringement action, then the
action shall be at the joint expense of the parties (in shares to be mutually
agreed upon) and all recoveries shall be shared jointly by them in direct
proportion to the share of expenses paid by each party.
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TREATMENT HAS BEEN REQUESTED ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
7
9.4 Each party agrees to cooperate with the other in litigation proceedings
instituted hereunder but at the expense of the party on account of whom suit is
brought if brought solely for one party's account. Such litigation (including
the settlement thereof) shall be controlled by the party bringing the suit,
except that University shall control the suit if brought jointly, unless
University joins only as nominal party plaintiff. SHOR may be represented at his
expense by counsel of his choice in any suit brought solely by SHOR.
9.5 If the parties agree that SHOR shall commence suit on his own behalf or join
with University or any of its licensees in any legal action pursuant to this
Article 9 while SHOR maintains title to any patents contemplated by this
Commercialization Agreement, SHOR shall execute whatever papers are necessary to
permit such suit.
10. GOVERNING LAWS AND VENUE
Choice of Law/Venue. The Parties agree this Commercialization Agreement shall be
governed by and interpreted in accordance with the laws of the State of
Washington, regardless of its choice of law provisions. The Parties further
agree that any claim related in any manner to the Commercialization Agreement
shall be instituted and commenced in, and venue shall be, either King or
Xxxxxxxx County, Washington or the United Stated District Court for the Western
District of Washington.
11. NOTICES AND PAYMENTS
Any notice and/or payment required or permitted to be given to the parties
hereto shall be deemed to have been properly given if delivered, in writing, in
person or mailed by first-class certified mail to the following addresses, or
such other addresses as may designated in writing by the parties from time to
time during the term of this Commercialization Agreement:
To University: Office of Technology Licensing
University of Washington
0000 XX 00xx Xx, Xxxxx 000
Xxxxxxx, XX 00000-0000
Attention: Health Sciences Manager
To SHOR: Xxxxx Xxxx
170 Xxxxxxxxx
0 Xxxxxx Xxxxxx
Xxxxxxx
0000
XX Xxx 00000
Xxxxxxxxxxx 0000
Xxxxx Xxxxxx
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
8
12. WAIVER
It is agreed that no waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be
deemed a waiver as to any subsequent and/or similar breach or default.
13. ASSIGNABILITY
This Commercialization Agreement may not be assigned by either party
without the prior written consent of the other party and consent of the
government, to the extent consent of the latter may be required.
14. LIFE OF AGREEMENT
This Commercialization Agreement shall be in full force and effect from
the Effective Date and shall remain in effect for the life of the last to
expire of patents contemplated by this Commercialization Agreement, unless
otherwise terminated by operation of law or by acts of the parties in
accordance with the terms of this Commercialization Agreement or Sponsor's
requirements.
15. TERMINATION
15.1 Either party may terminate this Commercialization Agreement
("Terminating Party") upon sixty (60) days written notice to the other party
("Non-terminating Party") but not less than sixty (60) days before any
pending Patent Office actions necessary to preserve patent rights.
15.2 The termination of this Commercialization Agreement will not affect any
of the rights granted to any licensee prior to termination.
15.3 The Non-terminating party may elect to request assignment of any or all
licenses issued by Terminating Party and will administer existing licenses
without accounting to the Terminating Party, except that Non-terminating
Party shall:
(a) Retain [***] of future gross proceeds for administrative overhead
provided for in Paragraph 2.6 hereof; and
(b) Distribute to Terminating Party in accordance with Paragraph 2.6 Net
Revenues accruing under continuing licenses negotiated prior to termination,
but such distribution shall be made in accordance with Non-terminating
Party's policy.
15.4 Non-terminating Party shall make its election and shall advise
Terminating Party in writing within thirty (30) days after receipt of notice
of termination, and Terminating Party shall
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
9
thereupon convey to Non-terminating Party assignment of the licenses and shall
do all things necessary to transfer all files related to such licenses to
Non-terminating Party or its designee.
15.5 After termination, each party will have the right to license their
respective rights in the Inventions without accounting to the other party,
subject to any rights previously granted in license agreements entered into
prior to termination.
15.6 Upon termination of this Commercialization Agreement by either party
(Terminating Party), the Terminating Party will still be responsible for its
portion of Recoverable Costs incurred prior to termination.
16. SEVERABILITY
If any provision of this Commercialization Agreement or the application thereof
to any person or circumstance shall be invalid, illegal or unenforceable to any
extent, the remainder of this Commercialization Agreement and the application
thereof shall not be affected and shall be enforceable to the fullest extent
permitted by law.
17. HEIRS, SUCCESSORS, AND ASSIGNS
Each of the terms, provisions and agreements herein contained shall be binding
upon and inure to the benefit of the parties hereto and, to the extent permitted
by this Commercialization Agreement, their respective heirs, legal
representatives, successors and assigns.
18. AMENDMENTS
This Commercialization Agreement may not be amended except by the unanimous
written agreement of both of the parties.
19. COMPLETE AGREEMENT
It is understood and agreed between SHOR and University that this
Commercialization Agreement constitutes the entire agreement, both written and
oral, between the parties, and that all prior agreements respecting the subject
matter hereof, either written or oral, expressed or implied, shall be abrogated,
cancelled, and are null and void and of no effect.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
10
In WITNESS WHEREOF, the parties hereto have executed this Commercialization
Agreement in duplicate originals by their duly authorized officers or
representatives.
UNIVERSITY OF WASHINGTON XX. XXXXX XXXX
By /s/ Xxxxxxx Xxxxxxxxx By /s/ Xxxxx Xxxx
------------------------------------- ----------------------------------
Date 5-13-2002 Date 5-20-2002
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934 AS AMENDED
11
[UNIVERSITY OF WASHINGTON LOGO]
UNIVERSITY OF WASHINGT0N
OFFICE OF TECHNOLOGY LICENSING
June 18, 2002 SENT XXX XXX XXXXXXXXXXXXX
Xx. Xxxxx Xxxx
000 Xxxxxxxxx
0 Xxxxxx Xxxxxx
Xxxxxxx
0000 Xxxxx Xxxxxx
Re: Commercialization Agreement between University of Washington
and Xx. Xxxxx Xxxx
UW OTL 1168-1291129-I2167CA
Relating to Issued US Patents: 6,043,225; 5,830,874 and 5,424,187
Dear Xxxxx,
It has come to our attention that the effective date for the above referenced
Commercialization Agreement was incorrectly listed as May 13, 2003 on the
originals sent to you for execution.
It was our mutual intention that the effective date for the Commercialization
Agreement be May 13, 2002. Please attach this letter to your copy of the
Agreement to confirm our intention. If you could also draft a similar letter and
return it to us confirming your intention that the Agreement's effective date is
May 13, 2002 it would be most helpful.
We are grateful for Xxxxxxx Xxxxxx'x help and advice in this matter. Please do
not hesitate to contact us if you require further information.
Sincerely,
/s/ Xxxxxxx Xxxxxxx
-------------------------------------
Xxxxxxx Xxxxxxx, PhD
Manager of Technology Licensing
Office of Technology Licensing
CC: Xxxxxxx Xxxxxx, Xxxxx & Xxxxxx Johannesburg
AK/1gm
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
EXHIBIT 1.2
Affiliates
As of the Effective Date, there are no Affiliates.
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
EXHIBIT 1.17
Issued patents as of the Effective Date
United States Patent Number: 6,043,225
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 3/28/2000
Assignee: Xxxxxxxxxx xx Xxxxxxxxxx xxx Xxxxx Xxxx*
Xxxxxx Xxxxxx Patent Number: 5,830,874
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 11/3/1998
Assignee: Xxxxxxxxxx xx Xxxxxxxxxx xxx Xxxxx Xxxx*
Xxxxxx Xxxxxx Patent Number: 5,424,187
Title: Diagnosis and Treatment of Arterial Chlamydial
Granuloma
Application Date: 6/13/1995
Assignee: University of Washington and Xxxxx Xxxx*
* Exclusively controlled by University of Washington under separate agreement
with Xxxxx Xxxx
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TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED
