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Title: |
Exclusive License Agreement |
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Entities: |
Dynavax Technologies Corp.; Regents of the University of California; University of California, San Diego |
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2003 |
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99KB total |
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$40 |
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#302861 |
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EXCLUSIVE LICENSE AGREEMENT
between
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
and
DYNAVAX TECHNOLOGIES CORPORATION
for
UC Case Nos. 92-296 and 97-138
Method, Compositions and Devices For Administration of Naked Nucleotides Which
Express Biologically Active Peptides,
and
Immunostimulatory Oligonucleotide Conjugates
{PAGE}
TABLE OF CONTENTS
{TABLE}
{CAPTION}
Article No./Title Page
----------------- ----
{S} {C}
BACKGROUND ............................................................................................... 1
1. DEFINITIONS ........................................................................................... 2
2. LIFE OF PATENT EXCLUSIVE GRANT ........................................................................ 5
3. SUBLICENSES ........................................................................................... 5
4. PAYMENT TERMS ......................................................................................... 6
5. LICENSE-ISSUE FEE ..................................................................................... 8
6. LICENSE MAINTENANCE FEE ............................................................................... 8
7. EARNED ROYALTIES AND MINIMUM ANNUAL ROYALTIES ......................................................... 9
8. ADDITIONAL PAYMENTS ................................................................................... 9
9. DUE DILIGENCE ......................................................................................... 10
10. OPTION ON FUTURE TECHNOLOGY .......................................................................... 12
11. PROGRESS AND ROYALTY REPORTS ......................................................................... 12
12. BOOKS AND RECORDS .................................................................................... 13
13. LIFE OF THE AGREEMENT ................................................................................ 14
14. TERMINATION BY THE REGENTS ........................................................................... 14
15. TERMINATION BY THE LICENSEE .......................................................................... 15
16. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION ............................................ 15
17. USE OF NAMES AND TRADEMARKS .......................................................................... 15
18. LIMITED WARRANTY ..................................................................................... 15
19. PATENT PROSECUTION AND MAINTENANCE ................................................................... 16
20. PATENT MARKING ....................................................................................... 19
21. PATENT INFRINGMENT ................................................................................... 19
22. INDEMNIFICATION ...................................................................................... 20
23. NOTICES .............................................................................................. 21
24. ASSIGNABILITY ........................................................................................ 22
25. NO WAIVER ............................................................................................ 22
26. GOVERNING LAWS ....................................................................................... 22
27. PREFERENCE FOR UNITED STATES INDUSTRY ................................................................ 23
28. GOVERNMENT APPROVAL OR REGISTRATION .................................................................. 23
29. EXPORT CONTROL LAWS .................................................................................. 23
30. SECRECY .............................................................................................. 23
31. MISCELLANEOUS ........................................................................................ 25
{/TABLE}
{PAGE}
CASE NOS. 92-296 & 97-138
EXCLUSIVE LICENSE AGREEMENT
for
Method, Compositions and Devices For Administration of Naked Nucleotides Which
Express Biologically Active Peptides
and
Immunostimulatory Oligonucleotide Conjugates
This license agreement (the "Agreement") is made effective this 26th
day of March, 1997 (the "Effective Date") between THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA, a California corporation having its statewide administrative
offices at 300 Lakeside Drive, 22nd Floor, Oakland, California 94612-3550, ("The
Regents"), and Dynavax Technologies Corporation, a California corporation having
a principal place of business at Alta Partners, One Embarcadero Center, San
Francisco, CA 94111, (the "Licensee").
BACKGROUND
A. Certain inventions, generally characterized in the patent
applications entitled "Method, Compositions and Devices For Administration of
Naked Nucleotides Which Express Biologically Active Peptides" UC Case No. 92-296
and "Immunostimulatory Nucleotide Sequences" UC Case No. 97-138 (collectively
the "Invention"), were made in the course of research at the University of
California, San Diego by Drs. Dennis A. Carson, Eyal Raz and Meredith Howell and
are covered by Regents' Patent Rights as defined below;
1
{PAGE}
B. The development of the Invention was sponsored in part by the
National Institutes of Health and as a consequence this license is subject to
overriding obligations to the Federal Government under 35 U.S.C. Sections
200-212 and applicable regulations;
C. The development of the Invention was sponsored also in part by
Ciba-Geigy Ltd., which has waived its rights to the Invention in a letter to The
Regents dated May 14, 1996;
D. The Licensee has evaluated the Invention under a Secrecy
Agreement with The Regents dated July 15, 1996 (U.C. Control No. 97-20-0023);
E. The Licensee wished to obtain rights from The Regents for the
commercial development, use, and sale of products from the Invention, and The
Regents is willing to grant those rights so that the Invention may be developed
to its fullest and the benefits enjoyed by the general public;
F. The Licensee is a "`small business concern" as defined
pursuant to 15 U.S.C. Section 632; and
G. Both parties recognize and agree that royalties due under this
Agreement will be paid on both pending patent applications and issued patents.
- - oo 0 oo - -
In view of the foregoing, the parties agree:
1. DEFINITIONS
1.1 "Regent's Patent Rights" means any subject matter claimed or
disclosed in any of the following:
{TABLE}
{CAPTION}
CASE NUMBER U.S. PATENT APPLICATION FILING DATE
SERIAL NUMBER
--------------------------------------------------------------------------------
{S} {C} {C}
92-296-1 08/112,440 August 26, 1993 - (now
abandoned)
92-296-2 08/464,878 June 7, 1995
{/TABLE}
2
{PAGE}
{TABLE}
{S} {C} {C}
92-296-3 08/333,068 November 1, 1994
92-296-4 08/334,260 November 3, 1994
92-296-5 [***] [***]
92-296-6 [***] [***]
92-296-7 [***] [***]
92-296-8 [***] [***]
92-296-9 [***] [***]
92-296-A 08/593,554 January 30, 1996
92-296-B 08/725,968 October 4, 1996
97-138-1 60/028,118 October 11, 1996
{/TABLE}
by Drs. Dennis A. Carson, Eyal Raz and Meredith Howell and assigned to
The Regents; and continuation applications thereof, and divisions,
substitutions, and continuation-in-part applications, but only to the extent
claims in any such continuation-in-part application contain subject matter
included in the foregoing listed applications as originally filed in the U.S.
Patent and Trademark Office ("USPTO"); any patents issuing on said applications
including reissues, reexaminations and extensions; and any corresponding foreign
applications or patents (including inventor's certificates).
1.2 "Licensed Product" means any machine, manufacture or
composition of matter that is either claimed or disclosed in Regents' Patent
Rights, or that is produced by the Licensed Method or, the use of which would
constitute, but for the license granted to the Licensee under this Agreement, an
infringement of any pending or issued claim within Regents' Patent Rights.
1.3 "Licensed Method" means any method that is claimed or
disclosed in Regents' Patent Rights, the use of which would constitute, but for
the license granted to the Licensee under this Agreement, an infringement of any
pending or issued claim within Regents' Patent Rights.
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
3
{PAGE}
1.4 "Net Sales" means the total of the gross invoice prices of
Licensed Products sold or Licensed Methods performed by the Licensee, or an
Affiliate or a sublicensee of Licensee, less the sum of the following actual and
customary deductions where applicable: cash, trade, or quantity discounts;
sales, use, tariff, import/export duties or other excise taxes imposed on
particular sales; transportation charges and allowances; credits to customers
because of rejections or returns or discounts actually allowed. For purposes of
calculating Net Sales, transfers to an Affiliate or sublicensee for end use for
purposes other than performing research and development of Licensed Products by
the Affiliate or sublicensee will be treated as sales at list price.
1.5 "Affiliate" means any corporation or other business entity
which the Licensee owns or controls, directly or indirectly, at least fifty
percent (50%) of the outstanding stock or other voting rights entitled to elect
directors, or by which the Licensee is owned or controlled directly or
indirectly by at least fifty percent (50%) of the outstanding stock or other
voting rights entitled to elect directors; but in any country where the local
law does not permit foreign equity participation of at least fifty percent
(50%), then an "Affiliate" includes any company in which the Licensee owns or
controls or is owned or controlled by, directly or indirectly, the maximum
percentage of outstanding stock or voting rights permitted by local law.
1.6 "Attributed Income" means the following types of income
received by Licensee which is attributable to the Invention licensed hereunder:
upfront licensing fees paid to Licensee by third parties (e.g. corporate
partners and sublicensees of Licensee) and licensing and/or research and
development (R&D) milestone payments made to Licensee for the development of
Licensed Products which milestone payments are payable prior to (but not after)
the commencement of clinical trials for a Licensed Product to which the income
is attributable. Attributed Income does not include amounts received by Licensee
from third parties for the purchase of an equity interest in Licensee (except
amounts in excess of the fair market value of Licensee's stock at the time such
purchase is made), amounts received to fund Licensee's research and development
efforts (charged at cost), amounts received by Licensee
4
{PAGE}
as a loan subject to repayment, or reimbursement of patent costs, or amounts
received by Licensee for research and development and/or licensing of technology
not covered by Regents' Patent Rights.
2. LIFE OF PATENT EXCLUSIVE GRANT
2.1 Subject to the limitations set forth in this Agreement, The
Regents grants to the Licensee a world-wide license under Regents' Patent Rights
to make, have made, use and sell Licensed Product and to practice Licensed
Method.
2.2 Except as otherwise provided in this Agreement, the license
granted in Paragraph 2.1 is exclusive for the life of this Agreement.
2.3 The license granted in Paragraphs 2.1 and 2.2 is subject to
all the applicable provisions of any license to the United States Government
executed by The Regents and is subject to the overriding obligations to the U.S.
Government under 35 U.S.C. section 200-212 and applicable governmental
implementing regulations.
2.4 The Regents reserves the right to use the Invention and
associated technology for its own noncommercial educational and research
purposes.
3. SUBLICENSES
3.1 The Regents also grants to the Licensee the right to issue
sublicenses to third parties to make, have made, use and sell Licensed Product
and to practice Licensed Method, as long as the Licensee has current exclusive
rights thereto under this Agreement. To the extent applicable, sublicenses must
include all of the rights of and obligations due to The Regents (and, if
applicable, the United States Government) contained in this Agreement.
3.2 The Licensee shall promptly provide The Regents with a copy of
each sublicense issued; collect and guarantee payment of all payments due The
Regents from sublicensees; and summarize and deliver all reports due The Regents
from sublicensees. All information provided pursuant to this Paragraph 3.2 shall
be deemed Confidential Information of Licensee for the purposes of Article 30
(Secrecy).
5
{PAGE}
3.3 Upon termination of this Agreement for any reason, The Regents
shall allow sublicensees to become direct licensees of the rights granted
herein, to the extent that it is not unreasonable for The Regents to do so as a
public entity and provided that:
3.3.1 The Licensee was not in breach of this Agreement when
entering into the sublicense;
3.3.2 The sublicensee is not in breach of its sublicense
agreement at the time of termination of this
Agreement; and
3.3.3 The sublicensee acquires no rights from or
obligations on the part of The Regents other than
those that are specifically granted in this
Agreement, and the sublicensee assumes all
obligations to The Regents required of Licensee by
this Agreement, including past due obligations
existing at the time of assumption of this
sublicense, as well as any additional payments
required by the sublicense.
4. PAYMENT TERMS
4.1 Paragraphs 1.1, 1.2, and 1.3 define Regents' Patent Rights,
Licensed Products and Licensed Methods so that royalties are payable on products
and methods covered by both pending patent applications and issued patents.
However, if no patent has issued on a particular U.S. or national-phase filed
foreign patent application within [***] after such application was so filed,
then all obligation to pay royalties on sales of Licensed Products which are
solely claimed by that patent application will be suspended until the patent has
issued. When such patent does issue, Licensee shall resume paying royalties
based on the issued patent as of the date of issuance. Licensee shall also pay
to The Regents, within sixty (60) days of issuance all back royalties which
accrued during the period of suspended royalties. Royalties will accrue in each
country for the duration of Regents' Patent Rights in that country and are
payable to The Regents when Licensed Products are invoiced, or if not invoiced,
when delivered to a third party.
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
6
{PAGE}
4.2 Licensee shall pay earned royalties quarterly within sixty
(60) days after each calendar quarter. Each payment will be for earned royalties
accrued within the Licensee's most recently completed calendar quarter.
4.3 All monies due The Regents are payable in United States
dollars. When Licensed Products are sold for monies other than United States
dollars, the Licensee shall first determine the earned royalty in the currency
of the country in which Licensed Products were sold and then convert the amount
into equivalent United States funds, using the exchange rate quoted in the Wall
Street Journal on the last business day of the reporting period.
4.4 Royalties earned on sales occurring in any country outside the
United States may not be reduced by any taxes, fees, or other charges imposed by
the government of such country on the payment of royalty income. The Licensee is
also responsible for all bank transfer charges. Notwithstanding this, all
payments made by the Licensee in fulfillment of The Regents' tax liability in
any particular country will be credited against earned royalties or fees due The
Regents for that country.
4.5 If legal restrictions prevent the prompt remittance of
royalties by the Licensee from any country where a Licensed Product is sold, the
Licensee shall deposit the amount owed to The Regents into an interest bearing
account in the applicable country in the name of The Regents until the
restrictions are removed. However, if these restrictions persist for longer than
a year, the Licensee shall calculate the amount owed United States funds and
shall pay The Regents that amount and all subsequent royalties owed to The
Regents directly from its U.S. source of funds.
4.6 If any patent or patent claim within Regents' Patent Rights is
held invalid in a final decision by a court of competent jurisdiction and last
resort and from which no appeal has or can be taken, all obligation to pay
royalties based on that patent or claim or any claim patentably indistinct
therefrom will cease as of the date of final decision. The Licensee will not,
however, be relieved from paying any royalties that accrued before the final
decision or that are based on another patent or claim not involved in the final
decision.
7
{PAGE}
4.7 No royalties may be collected or paid on Licensed Products
sold to the account of the U.S. Government, any agency thereof, state or
domestic municipal government as provided for in the License to the Government.
In the event payments, rebillings or fees are not received by The
Regents when due, the Licensee shall pay to The Regents interest charges at a
rate of [***]. Interest is calculated from the date payment was due until the
day payment is actually received by The Regents.
5. LICENSE-ISSUE FEE
The Licensee shall pay to The Regents a license issue fee of [***] in
two installments as follows: the first payment of [***] shall be paid within
seven (7) days of the Effective Date and the second payment of [***] shall be
paid on the first anniversary of the Effective Date. The license issue fee is
non-refundable, non-cancelable and is not an advance against royalties.
6. LICENSE MAINTENANCE FEE
The Licensee shall also pay to The Regents a license maintenance fee of
[***] beginning on the second anniversary of the Effective Date and continuing
annually on each anniversary of the Effective Date, provided, however, that the
maintenance fee is not due on any anniversary of this Agreement if on that date
the Licensee is commercially selling a Licensed Product and paying an earned
royalty or a minimum annual royalty to The Regents on the sales of that Licensed
Product exceeding such maintenance fee amount of [***] for the preceding year.
License maintenance fees are non-refundable and are not an advance against
earned royalties.
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
8
{PAGE}
7. EARNED ROYALTIES AND MINIMUM ANNUAL ROYALTIES
7.1 The Licensee shall also pay to The Regents an earned royalty
of [***] of the Net Sales of any Licensed Product by the Licensee or any
sublicensee. Licensee shall pay such earned royalty at the time it submits the
relevant quarterly royalty report pursuant to Paragraph 11.5.
7.2 The Licensee shall pay to The Regents a minimum annual royalty
of [***] per year for human therapeutic Licensed Products, and [***] per year
for all other Licensed Products for the term of Regents' Patent Rights,
beginning with the year of the first year of commercial sales for each Licensed
Product. For the first year of commercial sales, the Licensee's obligation to
pay the minimum annual royalty will be pro-rated for the number of months
remaining in that calendar year when commercial sales commence, and the minimum
annual royalty will be due the following February 28, to allow for crediting of
the pro-rated year's earned royalties. For subsequent years, the minimum annual
royalty will be paid to The Regents by February 28 of each year and will be
credited against the earned royalty due for the calendar year in which the
minimum payment was made.
8. ADDITIONAL PAYMENTS
8.1 Clinical Milestone Payment: Licensee shall pay to The Regents
[***] within thirty (30) days of the commencement of a clinical [***]. Such
payment shall be made for [***]. Additionally, Licensee shall pay to The Regents
[***] within thirty (30) days after [***], and [***] within thirty (30) days
after [***].
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
9
{PAGE}
8.2 Patent Milestone Payment: Within thirty (30) days of
notification by the USPTO of the allowance of any claim included within Regents'
Patent Rights claiming any one of the following technologies: [***], the
Licensee shall pay The Regents a one-time cash payment of [***].
8.3 Indexed Milestone Payment: Within sixty (60) days of either
(a) the closing of a public offering of the common stock pursuant to a
registration statement filed with the Securities and Exchange Commission or (b)
any consolidation or merger of Licensee with any other entity, or any other
corporate reorganization following which the shareholders of Licensee
immediately prior thereto own less than sixty percent (60%) of Licensee's voting
power, or any transaction or series of transactions in which greater than forty
percent (40%) of Licensee's voting power is transferred to a third party not
previously a share holder of Licensee; Licensee shall make to The Regents a cash
payment equal to [***].
8.4 Income: Within sixty (60) days of Licensee's receipt of
Attributed Income, Licensee shall pay to The Regents [***]. These payments by
Licensee shall continue until the earlier to occur of (i) an aggregate of [***]
has been paid under this Paragraph 8.4, or (ii) [***].
9. DUE DILIGENCE
9.1 The Licensee shall sponsor research in the laboratory of Dr.
Augusto Lois at the University of California San Diego, and such sponsored
research will be for a two (2) year period of not less than [***], pursuant to
the research agreement between The Regents of the University
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
10
{PAGE}
of California and Licensee dated November 22, 1996, which is attached as Exhibit
"A" ("Research Agreement").
9.2 The Licensee must make commercially reasonable efforts to
execute at least one agreement with a corporate partner within [***].
9.3 Furthermore, within one hundred eighty (180) days of the
Effective Date, the Licensee must submit a formal business plan outlining the
full operations including recruitment of key staff and implementation of the
research and development plan. This plan must include a clear strategy for
financing the Licensee until (1) the Licensee concludes a successful initial
public offering, or (2) the Licensee is acquired by another corporate entity.
9.4 The Licensee, on execution of this Agreement, shall diligently
proceed with the development, manufacture and sale of Licensed Products, either
on its own or with a sublicensee, and shall diligently endeavor to market the
same within a commercially reasonable time after execution of this Agreement.
9.5 The Licensee or its sublicensee shall:
9.5.1 submit an IND covering Licensed Products to the
United States FDA [***];
9.5.2 demonstrate the efficacy of a Licensed Product in a
scientifically valid animal model [***];
9.5.3 market Licensed Products [***];
9.5.4 market Licensed Products in the United States [***];
and reasonably fill the market demand for Licensed
Products following commencement of marketing at any
time during the exclusive period of this Agreement.
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
11
{PAGE}
If the Licensee is unable to perform any of the provisions in this
Article 9, then The Regents has the right and option either to terminate this
Agreement or convert the exclusive license granted to Licensee in Paragraphs 2.1
and 2.2 to a nonexclusive license.
10. OPTION ON FUTURE TECHNOLOGY
Subject to the terms of the Research Agreement, attached hereto as
Exhibit "A," the Licensee shall have an option to obtain an exclusive license to
The Regents' rights in inventions conceived and reduced to practice during the
term of the Research Agreement and as a result of research fully funded by the
Licensee in the laboratory of Dr. Augusto Lois at the University of California,
San Diego. The terms of such license shall be agreed upon by the parties
pursuant to good faith negotiations conducted within a reasonable time after any
invention is disclosed to Licensee, as provided for in the terms of the Research
Agreement.
11. PROGRESS AND ROYALTY REPORTS
11.1 Beginning August 28, 1997 and semi-annually thereafter, the
Licensee shall submit to The Regents a written progress report covering the
Licensee's (and any Affiliate or sublicensee's) activities related to the
development and testing of all Licensed Products and the obtaining of the
governmental approvals necessary for marketing. Progress reports are required
for each Licensed Product until the first commercial sale of that Licensed
Product occurs in the United States and shall be again required if commercial
sales of such Licensed Product are suspended or discontinued.
11.2 Progress reports submitted under Paragraph 11.1 shall include,
but are not limited to, the following topics:
- summary of work completed
- key scientific discoveries
- summary of work in progress
- current schedule of anticipated events or milestones
12
{PAGE}
- market plans for introduction of Licensed Products,
and
- a summary of resources (dollar value) spent in the
reporting period.
11.3 The Licensee has a continuing responsibility to keep The
Regents informed of the large/small business entity status (as defined by the
USPTO) of itself and its sublicensees and Affiliates.
11.4 The Licensee shall promptly report to The Regents in its
progress report the date of first commercial sale of a Licensed Product in each
country.
11.5 After the first commercial sale of a Licensed Product anywhere
in the world, the Licensee shall make quarterly royalty reports to The Regents
within sixty (60) days after each calendar quarter of each year. Each royalty
report will cover the Licensee's most recently completed calendar quarter and
will show (a) the gross sales and Net Sales of Licensed Products sold during the
most recently completed calendar quarter; (b) the number of each type of
Licensed Product sold; (c) the royalties, in U.S. dollars, payable with respect
to sales of Licensed Products; (d) the method used to calculate the royalty; and
(e) the exchange rates used.
11.6 If no sales of Licensed Products have been made during any
reporting period, the royalty report shall include a statement to this effect.
12. BOOKS AND RECORDS
12.1 The Licensee shall keep accurate books and records showing all
Licensed Products manufactured, used, and/or sold under the terms of this
Agreement. Books and records must be preserved for at least five (5) years from
the date of the royalty payment to which they pertain.
12.2 Books and records must be open to inspection by
representatives or agents of The Regents at reasonable times. The Regents shall
bear the fees and expenses of examination but if an error in royalties of more
than [***] is discovered in any examination then the Licensee shall bear the
fees and expenses of that examination.
[***]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED WITH
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
13
{PAGE}
13. LIFE OF THE AGREEMENT
13.1 Unless otherwise terminated by operation of law or by acts of
the parties in accordance with the terms of this Agreement, this Agreement will
be in force from the Effective Date until either the expiration date of the
last-to-expire patent licensed under this Agreement, or if no patent included in
Regents' Patent Rights has issued, until the date upon which the last patent
application licensed under this Agreement is abandoned.
13.2 Any termination of this Agreement will not affect the rights
and obligations set forth in the following Articles:
{TABLE}
{S} {C}
Paragraph 8.3 Indexed Milestone Payment
Article 12 Books and Records
Article 16 Disposition of Licensed Products on Hand on Termination
Article 17 Use of Names and Trademarks
Article 22 Indemnification
Article 30 Secrecy
{/TABLE}
14. TERMINATION BY THE REGENTS
If the Licensee fails to perform or violates any term of this
Agreement, including failure to sponsor research for at least two (2) years
pursuant to the Research Agreement attached hereto as Exhibit "A" (as provided
for in Article 10), then The Regents may give written notice of default (Notice
of Default) to the Licensee. If the Licensee fails to repair the default within
sixty (60) days of the effective date of Notice of Default, The Regents may
terminate this Agreement and its licenses by a second written notice (Notice of
Termination). If a Notice of Termination is sent to the Licensee, this Agreement
will automatically terminate on the effective date of that notice. Termination
will not relieve the Licensee of its obligation to pay any fees owing at the
time of termination and will not impair any accrued right of The Regents. These
notices are subject to Article 23 (Notices).
14
{PAGE}
15. TERMINATION BY LICENSEE
15.1 The Licensee has the right at any time to terminate this
Agreement in whole or as to any portion of Regents' Patent Rights by giving
notice in writing to The Regents. Notice of termination will be subject to
Article 23 (Notices) and termination of this Agreement will be effective sixty
(60) days from the date such notice is received by The Regents.
15.2 Any termination under the above Paragraph does not relieve the
Licensee of any obligation or liability accrued under this Agreement prior to
termination or rescind any payment made to The Regents or anything done by
Licensee prior to the time termination becomes effective. Termination does not
affect in any manner any rights of The Regents arising under this Agreement
prior to termination.
16. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
Upon termination of this Agreement the Licensee is entitled to dispose
of all previously made or partially made Licensed Products, but no more, within
a period of one hundred and twenty (120) days provided that the sale of those
Licensed Products is subject to the terms of this Agreement, including but not
limited to the rendering of reports and payment of royalties required under this
Agreement.
17. USE OF NAMES AND TRADEMARKS
Nothing contained in this Agreement confers any right to use in
advertising, publicity, or other promotional activities any name, trade name,
trademark, or other designation of either party hereto (including contraction,
abbreviation or simulation of any of the foregoing). Unless required by law, the
use by the Licensee of the name "The Regents of the University of California" or
the name of any campus of the University of California is prohibited.
18. LIMITED WARRANTY
18.1 The Regents warrants to the Licensee that it has the lawful
right to grant the rights The Regents purports to grant to Licensee under this
license.
15
{PAGE}
18.2 This license and the associated Invention are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR WARRANTY
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