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Document Preview Exclusive License Agreement |
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Title: |
Exclusive License Agreement |
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Entities: |
Regents of the University of California; Renovis, Inc.; University of California, Berkeley |
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Date: |
2004 |
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Size: |
Preview shows 24KB of 68KB total |
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Price: |
$34 |
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ID: |
#327900 |
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CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY 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.
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UNIVERSITY OF CALIFORNIA, BERKELEY
OFFICE OF TECHNOLOGY LICENSING |
[GRAPHIC] |
EXCLUSIVE LICENSE AGREEMENT
FOR
AXON GROWTH TECHNOLOGIES
| U.C. Case Nos.: |
B94-002 B98-006 B98-031 |
Effective June 1, 2001 (the Effective Date), THE REGENTS OF THE UNIVERSITY OF CALIFORNIA a California corporation, whose legal address is 1111 Franklin Street, 12th Floor, Oakland, California 94607-5200, acting through its Office of Technology Licensing at the University of California, Berkeley, 2150 Shattuck Avenue, Suite 510, Berkeley, CA 94720-1620 (REGENTS), and RENOVIS, INC., a Delaware corporation having a principal place of business at 270 Littlefield Ave. South San Francisco, CA 94080 (LICENSEE), agree to the following terms and conditions of an exclusive license (the AGREEMENT):
| 1. | BACKGROUND |
| 1.1 | (a) REGENTS owns all right, title and interest by assignment from their respective inventors, of the following, collectively referred to as INVENTIONS: |
[*] (U.C. Case No. B94-002); [*] (U.C. Case No. B98-006); [*] (U.C. Case No. B98-031), and the INVENTIONS as it is disclosed and claimed in REGENTS PATENT RIGHTS as defined below, which are directed to the INVENTIONS.
(b) Professor [*] of the Howard Hughes Medical Institute (HHMI) at the University of California, Berkeley campus assigned his rights in the INVENTIONS to HHMI and, pursuant to interinstitutional agreement number 96-18-0017 between REGENTS and HHMI, HHMI has assigned the INVENTIONS to REGENTS.
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Renovis, Inc. B98-031, B98-006, B94-002 |
Page 1 |
CONFIDENTIAL |
LICENSEE entered into a letter agreement relating to U.C. Case Nos. B98-006, B98-030 and B98-031 ([*], COMM, AND [*] LETTER AGREEMENT) with REGENTS effective on March 19, 2001 and terminating on October 5, 2001, and a letter agreement relating to UC Case No. 94-002 ([*] LETTER AGREEMENT) with REGENTS effective on April 11, 2001 and terminating on October 11, 2001, granting LICENSEE an exclusive right to negotiate an exclusive license to the REGENTS PATENT RIGHTS. Pursuant to such [*], COMM, AND [*] LETTER AGREEMENT and such [*] LETTER AGREEMENT, the LICENSEE has reimbursed REGENTS a portion of its costs in obtaining the REGENTS PATENT RIGHTS. LICENSEE also entered into a confidentiality agreement relating to U.C. Case No. B98-031 with REGENTS effective on April 5, 2001 and expiring on April 5, 2006 ([*] CONFIDENTIALITY AGREEMENT) and a confidentiality agreement relating to U.C. Case No. B98-006 ([*] CONFIDENTIALITY AGREEMENT) with REGENTS effective on April 5, 2001 and expiring on April 5, 2006.
| 1.2 | LICENSEE has provided REGENTS with a confidential business plan and business strategy for use in REGENTS evaluation of LICENSEES resources and capabilities. |
| 1.3 | Development of the INVENTIONS was sponsored in part by the National Institutes of Health, and as a consequence, REGENTS elected to retain title to the INVENTIONS subject to the rights of the U.S. Government under 35 USC 200-212 and implementing regulations, including that REGENTS, in turn, has granted back to the U.S. Government a non-exclusive, non-transferable irrevocable, paid-up license to practice or have practiced the INVENTIONS for or on behalf of the U.S. Government throughout the world. |
| 1.4 | In accordance with REGENTS interinstitutional agreement with HHMI, REGENTS has granted to the HHMI a paid up, non-exclusive, irrevocable license to use the INVENTIONS for its non-commercial purposes, but with no right to sublicense. |
| 1.5 | REGENTS and LICENSEE wish to have the INVENTIONS developed and perfected as soon as possible, and to the extent applicable, marketed, so that products resulting therefrom may be available for public use and benefit. |
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Renovis, Inc. B98-031, B98-006, B94-002 |
Page 2 |
CONFIDENTIAL |
| 1.6 | LICENSEE wishes to acquire, and REGENTS wishes to grant to LICENSEE, an exclusive license under the REGENTS PATENT RIGHTS on the terms and conditions set forth herein. |
| 2. | DEFINITIONS |
| 2.1 | REGENTS PATENT RIGHTS means; |
| a) | REGENTS U. S. Patent No. [*] (U.C. Case No. B94-002-1), U. S. Patent No. [*] (U.C. Case No. B94-002-4), U. S. Patent No. [*] (U.C. Case No. B94-002-5), U.S. Patent No. [*] (U.C. Case No. B94-002-6) and U.S. patent application Serial No. [*], filed on [*] (U.C. Case No. B94-002-7), PCT patent application serial no. [*], European patent application [*], Japanese patent application [*], Canadian patent application [*], and Australian patent application [*], all entitled [*] and assigned to REGENTS; and claims of any patents corresponding thereto and issuing any where in the world directed to subject matter specifically described in the foregoing patents and/or applications; |
| b) | REGENTS U.S. patent application serial number [*] filed on [*] (UC Case No. B98-006) entitled [*] and assigned to REGENTS (and claiming priority to U.S. provisional patent application serial number [*], filed on [*]); and claims of any patents corresponding thereto and issuing any where in the world directed to subject matter specifically described in the foregoing patent application(s); |
| c) | REGENTS U.S. patent [*] (UC Case No. B98-031), issued on [*], entitled [*] from U.S. patent application [*] (and claiming priority to U.S. provisional patent application serial number [*], filed on [*], and to provisional patent application serial number [*], filed on [*]); and claims of any patents corresponding thereto and issuing any where in the world directed to subject matter specifically described in the foregoing patent; and |
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Renovis, Inc. B98-031, B98-006, B94-002 |
Page 3 |
CONFIDENTIAL |
| d) | For any patent or patent application in Article 2.1 (a) - (c) above in existence as of the Effective Date and specifically identified by patent number or patent application number above, any continuing applications, divisions, substitutions, extensions, reissues, or reexaminations thereof, but not continuations-in-part except for claims in continuation-in-part applications directed to subject matter specifically described in such patent and/or patent application and entitled to the priority filing date of the United States application in Article 2.1(a) through (c) above, on which it is based, and any patents resulting therefrom. |
| 2.2 | LICENSED PRODUCT(S) means any material or product that, but for the license granted in this AGREEMENT, would infringe a VALID CLAIM in REGENTS PATENT RIGHTS in that country in which such material or product is made, used, offered for sale, sold, or imported. For purposes of this AGREEMENT, VALID CLAIM means: |
| (a) | a claim of an issued, unexpired patent under REGENTS PATENT RIGHTS, which has not been abandoned or disclaimed, provided that a claim of an issued, unexpired patent under REGENTS PATENT RIGHTS will be presumed to be valid unless and until it has been held to be invalid or unenforceable by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken, or |
| (b) | a pending claim being prosecuted in a pending patent application under REGENTS PATENT RIGHTS, provided that if such pending claim has not issued as a claim of an issued patent within five (5) years after the filing date from which such patent application takes priority, such pending claim shall not be a VALID CLAIM for the purposes of this AGREEMENT unless and until, subsequent to such five (5) year period, such pending claim is issued as a claim of an issued and unexpired patent. |
| 2.3 | LICENSED METHOD(S) means any process or method that is covered by REGENTS PATENT RIGHTS in the country in which such process or method is used to make LICENSED PRODUCT(S) or the use or practice of which would constitute, but for the license granted to the LICENSEE pursuant to this AGREEMENT, an infringement of any VALID CLAIM within REGENTS PATENT RIGHTS in that country in which the LICENSED METHOD is used or practiced. |
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Renovis, Inc. B98-031, B98-006, B94-002 |
Page 4 |
CONFIDENTIAL |
| 2.4 | NET ROYALTIES shall mean royalty payments actually received by LICENSEE on sublicensees sales of LICENSED PRODUCTS or LICENSED METHODS. |
| 2.5 | NET SALES shall mean LICENSEEs or AFFILIATEs billings for sales of LICENSED PRODUCTS or LICENSED METHODS produced hereunder less: returns, recalls, rejections and allowances actually granted, packing, insurance, postage, freight out, taxes or excise duties and/or any other tariffs, customs duties or taxes imposed on the transactions (if included in the gross amount received by LICENSEE or AFFILIATE), wholesaler discounts and cash discounts. No deductions shall be made for commissions paid to individuals whether they be with independent sales agencies or regularly employed by LICENSEE or AFFILIATE and on its payroll, or for cost of collections. LICENSED PRODUCTS and LICENSED METHODS shall be considered sold when billed or invoiced, provided, however, that LICENSED PRODUCTS and LICENSED METHODS used in testing, clinical trials, or as marketing samples to develop or promote the LICENSED PRODUCTS and/or LICENSED METHODS shall not be included as sold under the definition of NET SALES. For purposes of this definition, except when AFFILIATES are the end users of LICENSED PRODUCTS or LICENSED METHODS, LICENSED PRODUCTS shall be considered sold when billed out to a customer other than LICENSEEs or AFFILIATEs. |
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