Agreement



Effective as of September 26, 1996 ("Effective Date"), The Johns Hopkins

University, a body having corporate powers under the laws of the State of

Maryland ("JOHNS HOPKINS"), the University of Washington (the "UNIVERSITY OF

WASHINGTON"), a body having corporate powers under the laws of the State of

Washington, and Ontogeny Inc., a Delaware corporation having a principal place

of business at 45 Moulton Street, Cambridge, MA 02138 ("ONTOGENY"), agree as

follows:



                                   Article 1

                                   Background



1.1   JOHNS HOPKINS represents and warrants that it is Owner by assignment from

      Philip A. Beachy and Jeffrey Porter (both investigators employed by Howard

      Hughes Medical Institute ("HHMI")) and HHMI, and that the UNIVERSITY OF

      WASHINGTON represents and warrants that it is the Owner by assignment from

      Randall T. Moon (also an investigator employed by HHMI) and HHMI of the

      entire right, title and interest in the United States and Foreign Patent

      Applications ("Hedgehog Patent Applications") set forth in Appendix A, and

      in the inventions described and claimed therein ("Invention"), and any

      Licensed Patent, defined in Article 2, which may issue to the Invention,

      and that JOHNS HOPKINS and the UNIVERSITY OF WASHINGTON have the sole

      authority to grant the licenses granted hereunder.



1.2   JOHNS HOPKINS and the UNIVERSITY OF WASHINGTON have certain technical data

      and information ("Technology") pertaining to Invention.



1.3   JOHNS HOPKINS and the UNIVERSITY OF WASHINGTON want the Technology and

      Invention perfected and marketed in a reasonable period of time in order

      that resulting products will be available for public use and benefit.



1.4   ONTOGENY would like to practice the Invention and related Technology, and

      is therefore desirous of obtaining a license under Licensed Patent to

      develop, manufacture, use, and sell Licensed Product in the area of

      therapeutics, diagnostics and research reagents.





                                     - 1 -

{PAGE}



1.5   The Technology and Invention were developed in the course of research

      supported by the HHMI in affiliation with each of JOHNS HOPKINS and the

      UNIVERSITY OF WASHINGTON.



1.6   JOHNS HOPKINS and the UNIVERSITY OF WASHINGTON agree that all

      notifications and payments by ONTOGENY pursuant to this Agreement will be

      made to, and accepted by, JOHNS HOPKINS for the benefit of both JOHNS

      HOPKINS and the UNIVERSITY OF WASHINGTON.



                                    Article 2

                                   Definitions



2.1   "Licensed Patent(s)" means any U.S. Letters Patent issued upon the

      Hedgehog Patent Applications, or upon any divisions, continuations,

      reissues, reexamines, extensions, and any claims in continuations-in-part

      (CIPs) applications; and any and all foreign patents, extensions and

      supplemental protection certificates or patent applications corresponding

      thereto. All such divisions, continuations, reissues, reexaminations, CIPs

      and foreign applications and patents issuing thereon will be automatically

      incorporated in and added to this Agreement. CIP applications shall only

      be filed for new matter which supports claims to inventions described in

      the Hedgehog Patent Applications and could not be filed in a stand alone,

      original patent application.



2.2   "Licensed Materials" means those proprietary materials which are

      enumerated in Appendix B, and transferred from JOHNS HOPKINS through

      Philip A. Beachy to ONTOGENY pursuant to the terms of this Agreement.



2.3   "Licensed Product" means any product or process in the Licensed Field of

      Use, the importation, manufacture, use, offer for sale, or sale of which:



      (a)   is covered by a valid claim of an issued, unexpired Licensed Patent;

            a claim of an issued, unexpired Licensed Patent will be presumed to

            be valid unless it has been held to be invalid by a final judgment

            of a court of competent jurisdiction where no appeal can be or is

            taken; or





                                     - 2 -

{PAGE}



      (b)   is covered by any claim being prosecuted in a pending application in

            Licensed Patents, provided the claim has not been pending for more

            than 7 years; or



      (c)   clauses (a) and (b) notwithstanding, is covered by any pending or

            issued claim to bioactive Hedgehog polypeptides issuing from Harvard

            University Patents/Applications or Columbia University

            Patents/Applications (defined infra); or



      (d)   incorporates, uses or could not have been manufactured or discovered

            but for the use of Licensed Materials or materials covered by

            Licensed Patents (including expression products thereof and

            antibodies to such polypeptides).



2.4   "Net Sales" means the gross revenue derived by ONTOGENY or affiliate from

      sale(s) of Licensed Product to unrelated third parties, less the following

      items but only as they actually pertain to the disposition of the Licensed

      Product by ONTOGENY or affiliate, are included in the gross revenue, and

      are separately billed:



      (a)   Taxes levied on and/or other governmental charges made as to

            production, sales, transportation, delivery or use and paid by or on

            behalf of ONTOGENY;



      (b)   Costs of insurance, packing, and transportation, where separately

            invoiced and not paid by the customer, from the place of manufacture

            to the customer's premises or point of installation;



      (c)   Credit for returns, allowances, or trades; and



      (d)   Trade, quantity or cash discounts and non-affiliated brokers' or

            agents' commissions allowed and actually taken.



2.5   "Licensed Field of Use" means (i) human therapeutics for cancer, (ii)

      human therapeutics for neurobiology, (iii) human therapeutics for

      skeletal, (iv) human therapeutics for all other areas, (v) veterinary

      therapeutics, (vi) drug discovery, (vii) in vivo diagnostics, (viii) in

Home        Intelligence        Services        Subscriptions        News        About Us

Contact Us       Terms of Use       Resend Documents       Shopping Cart

Copyright © 2008 The Consus Group LLC