CERTAIN CONFIDENTIAL INFORMATION MARKED BY [***] HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS BOTH NOT MATERIAL AND IS THE TYPE THAT THE REGISTRANT TREATS AS PRIVATE OR CONFIDENTIAL
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EXHIBIT 10.16
CONSENT TO ASSIGNMENTS, LICENSING AND COMMON OWNERSHIP AND
INVENTION MANAGEMENT AGREEMENT FOR
A PROGRAMMABLE DNA RESTRICTION ENZYME FOR GENOME EDITING
UC Case No: BK-2012-115
CRISPR Reference: CHARPENTIER-2012
Caribou Reference: UC-UV Agreement
This Consent to Assignments, Licensing and Common Ownership and Invention Management Agreement for a Programmable DNA Restriction Enzyme for Genome Editing (the “Invention Management Agreement,” “IMA” or “Agreement”) is effective as of December 15, 2016 (the “Effective Date”), and is by and among the following individual and entities:
Dr. Emmanuelle Charpentier, an individual having an address at the Max Planck Institute for Infection Biology, Department of Regulation in Infection Biology, Chariteplatz 1, 10117 Berlin, Germany, (“Charpentier”);
The Regents of the University of California, a California public corporation, having its statewide administrative offices located at 1111 Franklin Street, Twelfth Floor, Oakland, CA 946075200, United States, acting through its Office of Technology Licensing, at the University of California, Berkeley, 2150 Shattuck Avenue, Suite 510, Berkeley, CA 94704-1347, United States (“Regents”);
University of Vienna, having an address at Universitatsring 1, A-1010 Vienna, Austria, acting through its office of Research Services and Career Development, University of Vienna, Berggasse 7, 2nd floor, 1090 Vienna, Austria (“Vienna”);
CRISPR Therapeutics AG, a Swiss company (Aktiengesellschaft) having an address at Aeschenvorstadt 36, CH-4051 Basel, Switzerland (“CRISPR”);
ERS Genomics Ltd., a limited liability company incorporated in Ireland and having an address at 88 Harcourt Street, Dublin 2, Ireland (“ERS”);
TRACR Hematology Ltd., a limited liability company incorporated in England & Wales and having an address at 85 Tottenham Court Road, London W1T 4TQ, United Kingdom (“TRACR”);
Caribou Biosciences, Inc., a Delaware corporation, having an address at 2929 7th Street, Suite 105, Berkeley, CA 94710, United States (“Caribou”); and
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Intellia Therapeutics, Inc., a Delaware corporation, having an address at 40 Erie Street, Suite 130, Cambridge, MA 02139, United States (“Intellia”); each of the foregoing is individually referred to as a “Party” to this Agreement, and collectively as “Parties” to this Agreement.
Background and Recitals
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WHEREAS, it has been and it remains the mutual desire of the Parties to enter into this Agreement to cooperate regarding development and management of the Patent Rights and to
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facilitate the full commercial exploitation of their rights in the Patent Applications, including by permitting the licensing and sublicensing of the same in order to develop and market products based upon or employing the Inventions both in the United States and in other jurisdictions worldwide;
NOW, THEREFORE, and in consideration of the commitments provided herein, the Parties agree as follows:
CONSENT TO ASSIGNMENTS, LICENSING AND
MAINTENANCE OF COMMON OWNERSHIP INTERESTS
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INVENTION MANAGEMENT ACTIVITIES
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Notwithstanding the foregoing, in the event that a statute, regulation, or other legal provision (such as, for example, the Drug Price Competition and Patent Term Restoration Act (Hatch-Waxman), as amended, the Biologics Price Competition and Innovation Act, amended, or similar laws outside of the United States) require that an infringement or similar action be commenced prior to the [***] period set forth above, the [***] period will be shortened to effectively be [***] prior to the final deadline imposed by the applicable legal requirement. Within [***] days after the Infringement Notice, the Party seeking to shorten the [***] period due to an applicable legal requirement shall inform the other Parties of the need and basis for shortening the time period. A Party will immediately forward to the other Parties any and all notices of infringement received pursuant to such regulatory procedures.
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MISCELLANEOUS PROVISIONS
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Prof. Dr. Emmanuelle Charpentier
Max Planck Institute for Infection Biology
Department of Regulation in Infection Biology
Chariteplatz 1
10117 Berlin
Germany
(with copies by email to: LEGAL@crisprtx.com and Legalnotices@ersgenomics.com)
CRISPR Therapeutics AG
Aeschenvorstadt 36
CH-4051 Basel
Switzerland
Attention: Chief Legal Officer
(with a copy by email to: LEGAL@crisprtx.com)
ERS Genomics Ltd.
88 Harcourt Street
Dublin 2
Ireland
(with a copy by email to: Legalnotices@ersgenomics.com)
TRACR Hematology Ltd.
85 Tottenham Court Road
London W1T 4TQ
United Kingdom
Attention: Chief Legal Officer
(with a copy by email to: LEGAL@crisprtx.com)
Regents of the University of California
Office of Technology Licensing
2150 Shattuck Avenue, Suite 510
Berkeley, CA 94704-1347
United States
Attention: Director
(Case No. BK-2012-115)
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University of Vienna
Research Services and Career Development
Berggasse 7, 2nd floor
1090 Vienna
Austria
Attention: Vice-Rector for Research and International Affairs
(with a copy by email to: techtransfer@univie.ac.at)
Caribou Biosciences, Inc.
2929 7th Street, Suite 105
Berkeley, CA 94710
United States
Attention: Chief Legal Officer
(with a copy by email to: legalnotices@cariboubio.com)
Intellia Therapeutics, Inc.
40 Erie Street, Suite 130
Cambridge, MA 02139
United States
(with a copy by email to: NTLANOTICE@intelliatx.com)
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[Signature Page Follows]
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The Parties hereto have executed this Agreement as of the Effective Date, as attested by the signatures below of authorized representatives of each Party.
DR. EMMANUELLE CHARPENTIER | THE REGENTS OF THE |
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Signature /s/ Emmanuelle Charpentier | Signature /s/ Javed Afzal |
| Name Javed Afzal |
| Title Associate Director |
Date December 15, 2016 | Date December 6, 2016 |
UNIVERSITY OF VIENNA | CRISPR THERAPEUTICS AG |
Signature /s/ Heinz Fassmann | Signature /s/ Rodger Novak |
Name Heinz Fassmann | Name Rodger Novak |
Title Vice Rector for Research and International Affairs | Title CEO |
Date December 6, 2016 | Date December 13, 2016 |
ERS GENOMICS LTD. | TRACR HEMATOLOGY LTD. |
Signature /s/ Derek O’Reilly | Signature /s/ Tyler Dylan-Hyde |
Name Derek O’Reilly | Name Tyler Dylan-Hyde |
Title Director | Title Chief Legal Officer |
Date December 6, 2016 | Date December 15, 2016 |
CARIBOU BIOSCIENCES, INC. | INTELLIA THERAPEUTICS INC. |
Signature /s/ Rachel E. Haurwitz | Signature /s/ Nessan Bermingham |
Name Rachel E. Haurwitz, Ph.D. | Name Nessan Bermingham |
Title President and CEO | Title CEO and President |
Date December 2, 2016 | Date December 15, 2016 |
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LIST OF EXHIBITS
Exhibit A Patent Applications
Exhibit B ERS Patent Delegation
Exhibit C Definition of SPCs
Exhibit D Inter-Institutional Agreement between The Regents of the University of California and University of Vienna (copy)
Exhibit E Adverse Claimants
Exhibit F Non-U.S. Filings
Exhibit G Cost-Sharing Agreement
Exhibit H Dispute Resolution
Exhibit I Confidential Common Legal Interest and Nondisclosure Agreement (copy)
Exhibit J First Amendment to the Confidential Common Legal Interest and Nondisclosure Agreement
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Exhibit A to
Invention Management Agreement
Patent Applications
Patent Applications refer to any and all of the following:
(i) any of the following U.S. and PCT patent applications:
Patent Application Number | Filing Date | UC Case Number |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
[***] | [***] | [***] |
(ii) any U.S. patent application that claims priority to or common priority with any of the above-referenced patent applications, regardless of inventorship, including but not limited to, any divisions, continuations, or continuations-in-part thereof;
(iii) any non-U.S. patent applications claiming priority to or common priority with any of the above-referenced patent applications, or constituting the national phase counterparts of the above-referenced PCT application, as well as divisionals or continuations of such non-U.S. patent applications;
Invention Management Agreement CONFIDENTIAL
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(iv) any U.S. or non-U.S. patents issued from any of the foregoing applications; and
(v) any reissues, renewals, substitutions, registrations, revalidations, reexaminations, patent term restorations, patent term extensions, patent term adjustments, supplementary protection certificates (“SPCs”) and the like arising from any of the foregoing cases.
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Exhibit B to
Invention Management Agreement
ERS Patent Delegation
ERS has been delegated certain invention management rights by Charpentier (the “ERS Patent Delegation”) within the ERS field. The delegated rights are:
1. Prosecution and maintenance rights for Patent Applications that have applicability or utility exclusively in the ERS field (“ERS-Delegated Patent Applications”) and has comment rights in respect of all other Patent Applications that have applicability or utility in the ERS field.
2. Patent enforcement rights in the ERS field for all Patent Applications including any Patent Applications that have applicability or utility in both the ERS and CRISPR/TRACR fields.
The ERS field is [***]. The CRISPR and TRACR fields means:
Researching, developing, making, using or selling:
(1) Therapeutic Products - [***], or
(2) Diagnostic Products - [***].
Companion Diagnostics means companion diagnostic tools and/or diagnostic assays developed and used to (i) [***], (ii) [***], and/or (iii) [***].
Covered Product means [***].
Covered Animal means an animal [***].
Covered Animal-Derived Product means [***].
Covered Method means any process or method, [***].
Invention means the invention entitled “[***]” as described in the Patent Applications, including all improvements thereto that are disclosed in the Patent Applications.
Technology means the Invention, the Patent Applications and certain know-how.
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Exhibit C to
Invention Management Agreement
Definition of SPCs
“SPCs” refer to Supplementary Protection Certificates that extend patent terms based on regulatory filings for marketing authorization undertaken and approved in the United Kingdom (UK), countries of the European Union (EU) and the European Economic Area (EEA) and certain other countries in Europe including, but not limited to, Switzerland, and equivalents thereto available in other jurisdictions (including, but not limited to, Australia, Canada (effective with the Comprehensive Economic and Trade Agreement (CETA) implementation), Chile, Costa Rica, Israel, Japan, Russia and Commonwealth of Independent States (CIS) countries, Singapore, South Korea and Taiwan), as well as “pediatric extensions” to SPC terms available in the UK, EU/EEA and other countries, and other such patent term extensions currently available or which become available during the Term.
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Exhibit D to
Invention Management Agreement
Inter-Institutional Agreement between The Regents of the University of California and University of Vienna (copy)
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Exhibit E to
Invention Management Agreement
Adverse Claimants
The Adverse Claimants are the applicants and the direct, first-tier exclusive licensees of patent applications and/or issued patents claiming priority to or common priority with the applications identified below, which claim subject matter comprising all or portions of the Patent Rights:
Patent Application Number | Filing Date / Claimed Priority Date | Inventors | Applicant(s) / Direct, First-Tier |
[***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] |
and further including any U.S. patent application that claims priority to or common priority with such patent applications, regardless of inventorship, including but not limited to, any divisions, continuations, or continuations-in-part thereof; any non-U.S. patent applications claiming priority to or common priority with any of the above-referenced U.S. patent applications, or constituting the national phase counterparts of the above-referenced PCT application, as well as divisionals or continuations of such non-U.S. patent applications; and any U.S. or non-U.S. patents issued thereon; as well as reissues, renewals, substitutions, registrations, revalidations, reexaminations, patent term restorations, patent term extensions, patent term adjustments, SPCs arising from any of the preceding cases, and the like.
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Exhibit F to
Invention Management Agreement
Non-U.S. Filings
The “Jointly Elected Jurisdictions” are the following:
[***]
The “Additional Jurisdictions” are the following:
[***]
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Exhibit G to
Invention Management Agreement
Cost-Sharing Agreement
This Cost-Sharing Agreement (“Agreement”), having a date of December __, 2016 (“Effective Date”), is by and between CRISPR Therapeutics AG, having a corporate address at Aeschenvorstadt 36, CH-4051 Basel, Switzerland (“CRISPR”), and Caribou Biosciences, Inc., having a corporate address at 2929 7th Street, Suite 105, Berkeley, CA 94710 USA (“Caribou”). CRISPR and Caribou are each referred to as a “Party,” and jointly as the “Parties.”
WHEREAS, CRISPR and Caribou are parties to a Consent to Assignments, Licensing and Common Ownership and Invention Management Agreement for a Programmable DNA Restriction Enzyme for Genome Editing Agreement (“IMA”), to which this Agreement is attached as Exhibit G thereto and having the same date as this Agreement;
WHEREAS, pursuant to an Exclusive License Agreement, by and among Caribou, University of Vienna (“Vienna”), and The Regents of the University of California (“Regents”), dated April 16, 2013 (“Caribou License”), Caribou has been reimbursing and will continue to reimburse Regents for patent costs and attorney fees for prosecuting and maintaining the Patent Applications (as defined in the IMA), including [***] relating to [***], as set forth in the Caribou License (collectively, “Patent Costs”);
WHEREAS, as of the date of this Agreement, [***] is Regents’ counsel for [***], and [***] is Regents’ counsel for all other Patent Applications (collectively, “Regents’ Counsel”);
WHEREAS, the Parties desire to come to a resolution regarding reimbursement of past and future Patent Costs of Regents’ Counsel; and
NOW, THEREFORE, in consideration of the mutual agreements contained in this Agreement, and for good and valuable consideration, the sufficiency of which is hereby acknowledged, the Parties hereto agree as follows:
1. Within [***] of the Effective Date of this Agreement, CRISPR will reimburse Caribou $[***], as an adjusted settlement of [***] of the Patent Costs invoiced by UC and paid by Caribou during the period [***] through [***]. Caribou will provide wire instructions to CRISPR within [***] of the Effective Date.
2. For all invoices that Caribou received or will receive from UC for Patent Costs that were not paid by Caribou on or before [***], and which are: (i) invoiced by UC to Caribou before [***], for which payment was not due until after [***]; (ii) invoiced by UC to Caribou after [***], but prior to the effective date of the IMA (whether or not payment was or is due before the effective date of the IMA), or (iii) invoiced by UC to Caribou after the effective date of the IMA, Caribou will invoice CRISPR for [***] of the invoiced amount within [***] after Caribou’s payment to Regents, together with a copy of the invoice(s) received from Regents and proof of payment to Regents. Within [***] after receipt of each such Caribou invoice, CRISPR will wire the amount set forth on the invoice to Caribou.
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3. As long as CRISPR has and is making the timely payments as set forth in Sections 1 and 2, Caribou will indemnify and defend CRISPR in any collection actions taken by Regents against CRISPR for Patent Costs.
4. In the event that Caribou is required to take legal action to collect amounts due to it by CRISPR under this Agreement, CRISPR will pay all costs, including attorneys’ fees, incurred in such collection.
5. Reimbursed Patent Costs shall not include fees or costs of attorneys retained by and/or representing CRISPR, Caribou, or any third party (including but not limited to Emmanuelle Charpentier and ERS Genomics Ltd.). As of the Effective Date of this Agreement, Patent Costs include those of [***], [***], and all foreign associates prosecuting the Patent Applications under the instruction of, and invoiced by, [***] (collectively and individually, the “Foreign Associates”), in accordance with Section C of the IMA. CRISPR acknowledges that Regents may, at its sole discretion, replace [***], [***], or any of the Foreign Associates as Regents’ Counsel, and that, in such event, CRISPR’s obligations with respect to the Patent Costs associated with replacement Regents’ Counsel (including Foreign Associates) shall be subject to this Agreement.
6. This Agreement shall be governed in accordance with the Governing Laws and Dispute Resolution procedures as provided in Section D of the IMA.
7. This Agreement may be executed in any number of counterparts, including facsimile or scanned PDF documents. Each such counterpart, facsimile, or scanned PDF document shall be deemed an original instrument and all of which together shall constitute one and the same Agreement.
IN WITNESS WHEREOF, the Parties have caused this Cost-Sharing Agreement to be executed by their respective authorized representations as of the Effective Date.
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CRISPR Therapeutics AG | Caribou Biosciences, Inc. |
By: /s/ Rodger Novak | By: /s/ Rachel E. Haurwitz |
Rodger Novak | Rachel E. Haurwitz, Ph.D. |
Chief Executive Officer | President & Chief Executive Officer |
Date: December 13, 2016 | Date: December 2, 2016 |
Copies of Invoices to be delivered to: Legal@crisprtx.com | Copies of remittance statements to be delivered to: |
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Address for Notice: | Address for Notice: |
CRISPR Therapeutics Limited | Caribou Biosciences, Inc. |
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With a copy (which shall not constitute notice) to: Legal@crisprtx.com | With a copy (which shall not constitute notice) to: legalnotices@cariboubio.com |
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Exhibit H to
Invention Management Agreement
Dispute Resolution
Disputes of any nature between the Parties arising under this Agreement (a “Dispute”) will be resolved exclusively through mediation and binding arbitration as set forth in this Exhibit H (“Mediation/Arbitration”), including without limitation the determination of the scope or applicability of this Agreement to arbitrate. The Parties agree and acknowledge that any good faith dispute in Mediation/Arbitration will not be deemed to be a material breach of this Agreement. For the purposes of provisions (b) through (j), the term “Parties” shall mean the Parties involved in the Dispute.
(a) The Mediation/Arbitration will be conducted in [***] and shall be administered by JAMS (formerly Judicial Arbitration and Mediation Services, Inc.) strictly in accordance with the below-described process.
(b) The Parties will appoint a single mediator and a single arbitrator to be selected by mutual agreement or, if the Parties are unable to agree on an arbitrator within [***] after such matter is referred to Mediation/Arbitration (all days being calendar days unless otherwise specifically provided herein), the Parties will request that JAMS select the arbitrator, in each case satisfying the criteria set forth below to the maximum extent possible.
(c) In all cases:
1. involving a disagreement over patent matters (including without limitation the conduct of the Patent Activities), the arbitrator should be a patent attorney registered to practice by the U.S. Patent & Trademark Office with [***];
2. not involving patent matters patent matters, the arbitrator should be an attorney with [***].
Under no circumstances shall the arbitrator be a current or former employee or consultant of any of the Parties, an affiliated company that controls or is controlled by or is under common control with any of the Parties, an exclusive licensee of any of the Parties, or a non-exclusive licensee of any of the Parties that is involved in the dispute or has a direct interest in its outcome. In all cases, the arbitrator shall be fluent in the English language.
(d) Within [***] after such matter is referred to Mediation/Arbitration, each Party will provide the arbitrator with its one proposed resolution and a written memorandum in support of its position regarding the Dispute and its proposed resolution (each an “Opening Brief), which shall not exceed thirty (30) pages in total. In connection with the submission of an Opening Brief, a Party may also submit documentary evidence in support thereof which had both (x) existed prior to commencement of such Mediation/Arbitration and (y) been shared with the other Parties at least [***] prior to the date for submission of the Opening Brief. The arbitrator will provide each Party’s Opening Brief, along with copies of any supporting documentation, to the other Parties after he or she has received an Opening Briefs from all
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Parties. The arbitrator shall not consider any untimely Opening Brief(s) received after the arbitrator has provided copies of the Opening Briefs received to the other Party(ies).
(e) Within [***] after a Party receives another Party’s Opening Brief from the arbitrator, such receiving Party will have the right to submit to the arbitrator a response to the other Party’s Opening Brief (each, a “Response Brief), which shall not exceed twenty (20) pages in total. In connection with the submission of a Response Brief, a Party may also submit documentary evidence in support thereof which had both (x) existed prior to commencement of such Mediation/Arbitration and (y) been shared with the other Parties at least [***] prior to the date for submission of the Response Brief. The arbitrator will provide each Party’s Response Brief, along with copies of any supporting documentation, if any, to the other Parties after he or she has received a Response Brief from all Parties (or at the expiration of such [***] period if any Party fails to submit a Response Brief).
(f) Within [***] of the timely receipt by the arbitrator of each Party’s Response Brief (or expiration of such [***] period if any Party fails to submit a Response Brief), the mediator will conduct a single [***] meeting during which each Party will have present, in addition to its counsel, a person with authority to reach a binding agreement resolving the dispute.
(g) If the dispute is not resolved by mediation within [***] following the meeting referred to in (f) above, the arbitrator will conduct a single [***] hearing during which each Party will have [***] to present its position. At the hearing, each Party will have the right to call up to [***] witnesses, [***] of whom may be an employee, consultant or other advisor to another Party. Each Party will notify the other Parties and the arbitrator of the identity of the witnesses it intends to call at least [***] in advance of the hearing. Notwithstanding the foregoing, the time periods and other aspects of this provision may be modified if (x) the Parties agree to such modification, (y) the arbitrator determines that such modification is reasonably necessary in view of the factual circumstances of the matter to be decided, or (z) if more than two Parties are participating in the Dispute and the arbitrator determines that more than two of the Parties (or sets of Parties) are in good faith seeking different resolutions.
(h) The Parties shall submit Opening Briefs and Response Briefs, as well as any documentary evidence, to the arbitrator in electronic form by midnight Eastern Standard/Daylight Time of the applicable deadline and, if the arbitrator so requests, will also submit a hard copy to the arbitrator.
(i) There shall be no discovery in the Mediation/Arbitration (e.g., document requests, interrogatories, depositions, etc.), except as follows:
1. Opposing Parties may take a deposition of any declarant of the other Party and obtain copies of all documents on which each declarant relies upon in his or her declaration; provided that the Party(ies) taking such deposition must complete questioning of the declarant within [***];
2. As may be ordered by the arbitrator following request(s) of a Party; provided, however, that the arbitrator’s decision to grant any discovery shall be subject to the
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following conditions: (a) the arbitrator must conclude that the requested discovery will result in information that is necessary and essential under applicable laws to reach a fair and equitable decision; no interrogatories or requests to admit shall be allowed under any circumstances; no more than [***] depositions of non-declarants or non-witnesses shall be permitted and the Party seeking
3. the deposition must complete questioning within [***] for each deponent; and no more than [***] document requests shall be allowed, and each request must identify the document(s) sought with particularity (e.g., a Party may request a particular email sent from one individual to another on a certain date, but cannot request all emails sent by a particular individual).
All discovery must be completed prior to [***] in advance of the hearing. If a Party refuses or cannot provide the requested discovery in a timely manner (the “Refusing Party”), such Refusing Party shall lose its right to take discovery (or, if such Refusing Party already took discovery, shall lose its right to present the discovery obtained to the arbitrator) and the arbitrator shall not consider discovery evidence presented by the Refusing Party during the hearing to reach a decision.
The arbitrator will also have the right to perform independent research and analysis and to request any Party to provide additional documentary evidence that existed and was controlled by such Party prior to the arbitrator making such request.
(j) Within [***] of such hearing, or within such other time to which the Parties and the arbitrator agree or the arbitrator determines is reasonably necessary in view of the factual circumstances of the matter to be decided, the arbitrator will deliver his/her decision regarding the Dispute in writing. The arbitrator may but shall not be required to select the resolution or position proposed by one of the Parties. As part of any such decision, the arbitrator may also mandate that the Party or Parties whose proposed resolution is further from the resolution determined by the arbitrator to pay some or all of the other Party’s or Parties’ reasonable attorneys’ fees and expenses in connection with the Mediation/Arbitration, as well as the costs and expenses of such Mediation/Arbitration (“Costs”).
(k) Each of the Parties irrevocably and unconditionally submits to the exclusive jurisdiction of the [***] (and, if such federal court rejects jurisdiction for any reason, then solely and exclusively in the state courts of the [***]) solely and specifically for the purposes of compelling arbitration or enforcing the decision in any Mediation/Arbitration, with the proportioning of Costs of any court proceeding to enforce the decision in any Mediation/Arbitration to be established by the arbitrator in connection with the decision of the arbitrator.
Nothing set forth herein shall be deemed to preclude either Party from seeking appropriate judicial injunctive relief from any court of competent jurisdiction in order to prevent immediate and irreparable injury, loss, or damage on a provisional basis, pending a decision on the ultimate merits of any dispute.
ACTIVE/115160038.2
[***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL 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
ACTIVE/115160038.2
[***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL 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 I to
Invention Management Agreement
Confidential Common Legal Interest and Nondisclosure Agreement (copy)
ACTIVE/115160038.2
[***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL 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 J to
Invention Management Agreement
First Amendment to the Confidential Common Legal Interest and
Nondisclosure Agreement
This First Amendment to the Confidential Common Legal Interest and Nondisclosure Agreement (“First Amendment”), is entered into as of December __, 2016 (the “First Amendment Effective Date”), [***].
RECITALS
WHEREAS, The Original Parties are parties to that certain Confidential Common Legal Interest and Nondisclosure Agreement (the “CLIA”), dated as of [***]; and
WHEREAS, pursuant to Section D-4.1 of the Consent to Assignments, Licensing and Common Ownership and Invention Management Agreement for a Programmable DNA Restriction Enzyme for Genome Engineering, by and among The Regents, Caribou, TRACR, CRISPR, ERS, Vienna, Charpentier, and Intellia, (“IMA”), [***] and having the same date as this First Amendment, [***] has the right to become part of the CLIA under the terms and conditions set forth in the IMA, the CLIA, and this First Amendment;
NOW, THEREFORE, in consideration of the covenants and agreements contained in this First Amendment, the Parties hereby agree as follows:
1. [***].
2. The Original Parties hereby accept [***] as a Party to the CLIA.
3. Each Original Party acknowledges that the CLIA is in full force and effect and that each such Original Party has no claims, causes of action, defenses, or rights of offset with respect to its obligations under the CLIA.
4. Except as explicitly set forth in this First Amendment, all terms and conditions of the CLIA shall remain in full force and effect, and the CLIA, as modified by this First Amendment, is ratified and confirmed in all respects.
5. This First Amendment may be executed in counterparts (whether delivered by facsimile, electronically by image or PDF or otherwise) with the same effect as if each Party had executed the same physical document. All such counterparts shall be deemed an original, shall be construed together and shall constitute one and the same instrument.
IN WITNESS WHEREOF, the Parties, through their authorized representatives, have executed this First Amendment to the Confidential Common Legal Interest and Nondisclosure Agreement as of the First Amendment Effective Date.
ACTIVE/115160038.2
[***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL 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
[Signatures set forth on the following page]
ACTIVE/115160038.2
[***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL 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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ACTIVE/115160038.2