CERTAIN INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN EXCLUDED PURSUANT TO REGULATIONS-K, ITEM 601(b)(10). SUCH EXCLUDED INFORMATION IS NOT MATERIAL AND WOULD LIKELY CAUSE COMPETITIVE HARM TO THE REGISTRANT IF PUBLICLY DISCLOSED.
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Exhibit 10.9
EXCLUSIVE LICENSE AGREEMENT
ThisEXCLUSIVE LICENSE AGREEMENT (“Agreement”) is made on the 15th day of AUGUST 2016 (“Effective Date”) by and between
NATIONAL UNIVERSITY OF SINGAPORE, (Company Registration Number: 200604346E), a company limited by guarantee incorporated in Singapore, having its registered address at 21 Lower Kent Ridge Road, Singapore 119077 (“NUS”),
And
ST. JUDE CHILDREN’S RESEARCH HOSPITAL, INC., a Tennesseenot-for-profit corporation located at 262 Danny Thomas Place, Memphis, Tennessee 38105, U.S.A. (“St. Jude”),
(Collectively,NUSandSt. Judeshall be referred to as “Licensors”)
And
NKARTA, INC., a Delaware corporation, having its registered address at 5425 Wisconsin Avenue, Suite 800, Chevy Chase, Maryland 20815, U.S.A. (“Licensee”).
(NUS, St. JudeandLicenseeshall hereinafter be referred to individually as a “Party” and collectively as “Parties”)
WHEREAS:
A. | Licensors are, individually or jointly, the owners of certainPatent Rights (as later defined herein) relating to a method for expanding natural killer cells; a chimeric receptor with NKG2D specificity; and a method for supporting autonomous natural killer cell function as described inSchedule 1; and have the right to grant licenses under saidPatent Rights. |
B. | Licenseeis interested in licensing and further developing thePatent Rightsfor commercial applications. |
C. | Licensee is desirous of obtaining an exclusive license underLicensors’ Patent Rights. |
D. | Licensors are desirous of granting such a license toLicensee in accordance with the terms of thisAgreement. |
NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, theParties hereto agree as follows:
1. | DEFINITIONS |
In this Agreement, unless the context otherwise requires, the following expressions have the following respective meanings:
Academic Purposes | - | Academic research, scholarly publications and educational purposes. Sponsored research shall be included provided that such sponsorship arrangements do not require NUS and/or St Jude to grant to any third party any rights that are inconsistent with the rights and licenses granted under this Agreement. |
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Common Stock | - | Duly authorized common stock of the Licensee having a par value of $0.0001. | ||
Confidential Information | - | Any information disclosed by onePartyto the otherPartyin any form, which, if disclosed in tangible form, is marked at the time of disclosure as being confidential or proprietary or with words of similar import, and if disclosed orally or visually or in other intangible form, is described as confidential at the time of such disclosure and confirmed in writing as confidential to the receiving Party [***]. | ||
Consolidated Screening List | - | the United States Government’s Consolidated Screening List of parties for which the United States Government maintains restrictions on certain exports,re-exports or transfers of items, which list can be found as of the Effective Date at the following hyperlink: http://20l6.export.gov/ecr/eg_main_023148.asp | ||
Field of Use | - | All therapeutic uses and applications. | ||
Invention | - | The invention as described inSchedule1. | ||
Investigational New Drug Application | - | A request for authorization from the Food and Drug Administration (FDA), or its equivalent in countries other than the United States, to administer an investigational drug or biological product to humans. | ||
Joint Improvements | - | Any modifications, additions, alterations, enhancements, upgrades or new versions of compositions, methods, processes and/or any other subject matter claimed in thePatent Rights,but which are not claimed under any of thePatentRightsand are made jointly byLicenseewithNUS. | ||
Licensee Improvements | - | Any modifications, additions, alterations, enhancements, upgrades or new versions of the compositions, methods, processes and/or any other subject matter claimed in thePatent Rights,but which are not claimed under any of thePatent Rights and are made by or on behalf or for the benefit ofLicenseeother thanJoint Improvementsor NUS Improvements. | ||
Licensed Product(s) | - | Any product, the manufacture, use, sale, offer for sale or import of which, but for the rights granted hereunder, would constitute an infringement of anyValid Claimin thePatent Rights. |
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NUS Improvements | - | Any modifications, addition, alterations, enhancements, upgrades or new versions of compositions, methods, processes and/or any other subject matter claimed in thePatent Rightsbut that are not claimed under any of thePatent Rights,and are made byNUSwithout assistance from or in collaboration withLicenseewhich meet all of the following criteria:
(i) arise from research performed solely in the laboratory of Dario Campana;
(ii) are available for licensing after satisfaction of any obligations to any governmental granting agencies. | ||
Net Sales | - | The gross amount of monies that is paid toLicensee, and/or itsRelated Company(ies)and/orSub-Licensee(s)for theLicensed Productsby sale or any other mode of transfer, less:
(i) customary and reasonable trade, quantity or cash discounts andnon-affiliated brokers’ or agents’ commissions actually allowed;
(ii) credits, discounts, chargebacks and allowances granted by reason of rejection or return;
(iii) taxes, tariffs, import/export duties, and/or other governmental levies imposed on the sale or transfer, to the extent the same is separately stated on invoices, or other documents of sale or transfer; and
(iv) transportation, freight and insurance charges, to the extent the same is separately stated on invoices, or other documents of sale or transfer. | ||
Net Salesalso includes the fair market value of anynon-cash consideration received byLicenseeitsRelated Company(ies)and/orSub-Licensee(s)for the sale, or other modes of transfer ofLicensedProducts.On sale or any other mode of transfer ofLicensed Productsmade in other thanarm’s-length transactions, the value of theNet Salesattributed to such a transaction shall be that which would have been received in anarm’s-length transaction, based on a like transaction at that time.
In no event shall any particular amount of deduction identified above be deducted more than once in calculatingNet Sales(i.e., no “double counting” of reductions). |
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For purposes of calculatingNet Sales,(a) sales betweenLicensee,itsRelated Company(ies)and/orSub-Licensee(s)for end use by the purchasing entity (but not sales for further resale, or for production of finishedLicensed Productsfor sale, by such purchasing entity) will be treated asNet Sales,and (b)Licensed Productsprovided at or below cost as promotional samples, for indigent care or patient assistance programs, or to be administered in clinical trials ofLicensed Products(except to the extent the recipient is charged for suchLicensed Productsin any post-approval clinical trial) shall be excluded in the calculation ofNet Sales;provided that, for purposes of this Agreement, royalties payable by Licensee to Licensors pursuant to Section 7.2 below shall not be included in the calculation of the cost of a Licensed Product. | ||||
If aLicensed Productis sold in a combination with other active components (“Combination Sale”),NetSaleson theCombination Saleshall be calculated by multiplying theNet Salesof thatCombination Sale by the fraction A/B, where A is the average sale price in the relevant country of theLicensed Product included in theCombination Sale(or similarLicensed Productwith the same dosage and route of administration) when sold separately and B is the average sale price in that country of the combination. If no such separate sales are made byLicensee,itsRelated CompaniesorSub-Licensees,the Parties shall, in good faith, determine an equitable method of determining Net Sales of such combination prior to the end of the accounting period in question, provided the fraction A/B shall under no circumstances fall below [***]. | ||||
Other Patent Rights | Any patent application or issued patent that discloses or claims (a) anNUS Improvementthat is exclusively licensed toLicenseepursuant toSection 3.6(a) or Section 3.6(b)below; (b) any Additional NUS Composition (as defined in Section 3.6) that is exclusively licensed to Licensee pursuant toSection 3.6(c)orSection 3.6(d)below; (c) aJoint Improvementwith respect to whichNUS has granted toLicenseean exclusive license underNUS’interest in suchJoint Improvementpursuant to Section 3.8; and/or (d) solely for the purposes ofSection 9, aNUS Improvement orJointImprovementwith respect to whichLicensee’sImprovement Optionhas not expired or been terminated in accordance withSection 3.7. |
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Patent Rights | - | (a) Rights to NK cell expansion technology under patent [***], and [***], and any patent application from which the foregoing patents issued to the extent such patent application or patent, as applicable, is directed to expansion of NK cells; and (b) applications [***], and [***]; and any patent issued based on any such patent applications. Patent Rights shall further include the following with respect to the patents and/or patent application described insub-clauses (a) and/or (b) above: corresponding foreign patents and patent applications and any reissues, extensions, substitutions, continuations, divisions, andcontinuation-in-part applications (to the extent that the CIP contains claims supported in the specification and entitled to the priority date of the parent application) and any patents issuing from any of the foregoing. | ||
Patent Challenge | Any legal or administrative proceeding to revoke or challenge the validity of any of patent or patent application. | |||
Phase I Clinical Trial | - | A human clinical trial, the principal purpose of which is a preliminary determination of safety in healthy individuals or patients as required in 21 C.F.R. §312(a), or a similar clinical study prescribed by the regulatory authorities in a country other than the United States. | ||
Phase II Clinical Trial | - | A study in humans of the safety, dose ranging and efficacy of aLicensed Product,which is prospectively designed to generate sufficient data (if successful) to commence pivotal clinical trials, as further defined in 21 C.F.R. § 312.21(b), or a similar study in a country other than the United States. | ||
Phase III Clinical Trial | - | A controlled study in humans of the efficacy and safety of aLicensed Product,which is prospectively designed to demonstrate statistically whether suchLicensed Productis effective and safe for use in a particular indication in a manner sufficient to file an application to obtain Regulatory Approval to market theLicensed Product,as further defined in 21 C.F.R. § 312.2l (c), or a similar study prescribed by the regulatory authorities in a country other than the United States. | ||
Pre-approved Assignee | A company that (a) has capabilities to develop, manufacture and/or commercialize a bio - pharmaceutical product(s); (b) is not listed on the Consolidated Screening List; and (c) satisfies any of the following criteria during the relevant period described below ending immediately prior to the |
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effective date of the proposed assignment of this Agreement under Section 22.2: (i) has a market capitalization equal to or exceeding [***] for a period of at least [***]; (ii) has (together with its Related Companies) cash on hand equal to or exceeding [***], as reflected in such company’s (or if applicable, its parent company’s) financial statements for [***]; or (iii) whose revenues from the sales of products in the life sciences sector (on a consolidated basis for [***]) was in excess of [***] | ||||
Preferred Stock | Duly authorized preferred stock of the Licensee having a par value of US$0.0001 | |||
Qualified Sub-Licensee | ASub-Licensee that (a) has capabilities to develop, manufacture and/or commercialize a bio - pharmaceutical product(s); (b) is not listed on the Consolidated Screening List; and (c) satisfies any of the following criteria during the relevant period described below ending immediately prior to the effective date of the relevant sub license agreement: (i) has a market capitalization equal to or exceeding [***] for a period of at least [***]; (ii) has (together with its Related Companies) cash on hand and/or assets that, taken together, have a value equal to or exceeding [***], as reflected in such company’s (or if applicable, its parent company’s) financial statements for [***]; or (iii) whose revenues from the sales of products in the life sciences sector (on a consolidated basis for [***] was in excess of [***]. For clarity, a company that satisfies the criteria to be a Pre-approved Assignee also satisfies the foregoing criteria to be a QualifiedSub-Licensee. | |||
Related Company | - | Any person, corporation or other business entity which, directly or indirectly, controls, is controlled by, or is under common control withLicenseeor for the purposes ofSection 4.3,aSub-Licensee,as applicable, includingLicensee’srelated corporations within the meaning of Section 6 of the Singapore Companies Act (Cap. 50). For such purposes, “control” shall mean: (a) to possess, directly or indirectly, the power to affirmatively direct the management and policies of such person, corporation, or other business entity, whether through ownership of |
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voting securities or by contract relating to voting rights or corporate governance; or (b) direct or indirect beneficial ownership of fifty percent (50%) or more of the voting share capital in such person, corporation, or other business entity, or, if applicable, such percentage that is the maximum allowed to be owned by a foreign person or corporation in the relevant jurisdiction. | ||||
Series A Financing | - | A transaction or series of transactions pursuant to which Licensee issues and sells shares of a new series of Preferred Stock to be issued by Licensee with rights, privileges and preferences senior to the Licensee’s Common Stock for aggregate gross proceeds of [***] with the principal purpose of raising capital. | ||
Sublicensing Revenue | - | Any [***].
Sublicensing Revenueexcludes: [***] shall also be excluded fromSublicensing Revenue.For clarity, such exclusions may be part of [***]Patent Rightsis granted, provided that such [***], based on their relative value. |
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Sub-Licensee | - | A third party that obtains a sublicense to commercialize thePatent RightsorLicensedProductsfromLicensee,wherein the third party is not aRelated Company. | ||
Term | - | The period during which this Agreement is in force pursuant toSection 5. | ||
Valid Claim | - | A claim in (a) an issued patent that (i) has not expired; (ii) has not been disclaimed; (iii) has not been cancelled or superseded, or if cancelled or superseded, has been reinstated; and (iv) has not been revoked, held invalid, or otherwise declared unenforceable or not allowable by a tribunal or patent authority of competent jurisdiction over such claim in such country from which no further appeal has or may be taken or (b) a pending patent application. |
2. | INTERPRETATION |
2.1 | In this Agreement: |
(a) | Words importing the singular shall include the plural and vice versa, and words that are gender specific or neuter shall include the other gender and the neuter. |
(b) | References to a person shall be construed as references to an individual, corporation, company, firm, incorporated body of persons of any country, or any agency, thereof. |
(c) | The headings in thisAgreementare for convenience only and shall not affect its interpretation. |
(d) | All references toSectionsandSchedulesrefer, unless the context otherwise requires, toSections andSchedules of thisAgreement. |
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(e) | All references to statutes or statutory provisions shall be taken to be a reference to the statutes or provisions as revised, amended, supplemented orre-enacted from time to time, and shall include any subsidiary legislation made thereunder. |
3. | GRANT OF LICENSE |
3.1 | Licensorshereby grant toLicensee,andLicenseeaccepts, subject to the terms and conditions hereof, and subject toLicensors’rights underSection 3.2and retained governmental rights, including rights retained by the United States Government, if any, in accordance with the Bayh-Dole Act of 1980 (established by P.L.96-517 and amended by P.L.98-620, codified at 25USC § 200 et. seq. and implemented according to 37 CFR Part 401), an exclusive, royalty-bearing worldwide license with rights to grant and authorizeSub-licenseesto make, have made, use, sell, offer for sale and importLicensed Productsand otherwise exploit thePatent Rightsin theField of Useduring theTerm. |
3.2 | Nothing in thisAgreementshall prejudiceLicensors’right to practice itself, and to allownon-profit academic third parties to practice, thePatent RightsforAcademic Purposes. |
3.3 | Licensorsshall not be obliged under this Agreement to render any technical assistance, or support, or provide training toLicensee,for purposes of practicing anyPatent Rights granted hereunder. |
3.4 | Licenseeshall own all rights, title and interests in and to all ofLicensee Improvementsand may use theLicensee Improvementsat its sole discretion. For clarity, improvements, inventions and other intellectual property generated by Dario Campana, alone or in collaboration with other employees or contractors of Licensee, shall beLicenseeImprovementsor otherwise solely owned byLicensee(as between the Parties), if generated by Dario Campana acting in his capacity as a consultant forLicenseeand without the use of any material resources ofLicensors. |
3.5 | Licensee andNUS shall each [***] disclose to each other any Joint Improvements developed or created.NUSandLicensee(to the extentLicenseebecomes aware of anyNUSImprovement)shall [***] disclose to each other anyNUS Improvementsdeveloped or created. |
3.6 | NUShereby grants toLicensee,subject to the same terms and conditions as the practice ofPatent Rightsunder this Agreement as set forth inSection 3.1[***], including but not limited to a clause substantially similar toSection 3.2above in respect ofLicensors’ right to practice forAcademic Purposes: |
(a) | an exclusive license toNUS Improvementsthat are dominated by the claims of thePatent Rights licensed under thisAgreement; |
(b) | an exclusive license, limited to use [***], toNUS Improvementsthat are not dominated by the claims of thePatent Rightslicensed under thisAgreement,but that relate to [***],and that are invented, and/or are disclosed in the first patent application claiming the same that is filed, [***].For clarity, the exclusive license under this Section 3.6(b) includes technology arising from research performed solely in the laboratory of Dario Campana that falls outside the scope of thePatent Rightsbut relates to [***], and is invented or filed [***]; and |
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(c) | An exclusive license, limited to use in connection with natural killer cells, to compositions comprising [***] that were developed, [***], solely in the laboratory of Dario Campana; |
(d) | An exclusive license, limited to use in connection with natural killer cells, to compositions comprising [***] that were developed, [***], solely in the laboratory of Dario Campana. |
The licenses to the compositions described inSection 3.6(c) and (d) above (collectively,“Additional NUS Compositions”)include [***] Additional NUS Compositions. Further, the licenses to a NUS Improvement and/or such Additional NUS Composition, as applicable, in thisSection 3.6includes a license under all Other Patent Rights claiming or disclosing the same.
For the purposes of thisSection 3.6andSection 3.7,inventions that relate to or comprise [***] disclosed in thePatent Rightsshall be deemed to be dominated by the claims of thePatent Rights.For purposes of the preceding sentence, “functional equivalence” shall mean [***].
3.7 | NUShereby grant toLicenseean option to negotiate in good faith for an exclusive license toNUS Improvementsthat are not dominated by the claims of thePatent Rights exclusively licensed under thisAgreement,but that relate to [***];and that are invented, or are disclosed in the first patent application claiming the same that is filed, [***], together with any Other Patent Rights claiming or disclosing suchNUS Improvements(“Improvement Option”).TheImprovement Optionshall be exercisable for a period of [***], unless extended by the mutual written agreement of theParties,from the date on which suchNUSImprovements are disclosed toLicensee byNUS(“Improvement Option Period”).NUS shall provide to Licensee a copy of each invention disclosure received by NUS’ Industry Liaison Office disclosing a NUS Improvement that is subject to Licensee’s Improvement Option, and in any event shall provide each such invention disclosure to Licensee [***] and prior to the time of [***].UponLicensee’s exercise of itsNUS Option, NUSandLicenseewill negotiate in good faith in an attempt to reach a license agreement which shall be subject to the same terms and conditions as the practice ofPatent Rightsunder this Agreement, including but not limited to a clause substantially similar toSection 3.2above in respect ofLicensors’right to practice forAcademic Purpose,but on [***],the negotiation period not to exceed [***], unless extended by the |
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mutual written agreement of theParties,from the date thatLicenseeexercises itsImprovement Option (“Improvement Option Negotiation Period”). NUS and Licensee agree that ifLicenseedoes not exercise itsImprovement Option[***],theImprovement Option(for suchNUS Improvementonly) shall be deemed to have lapsed.NUSandLicenseefurther agree that ifLicenseeexercises itsImprovementOptionwithin theImprovement Option Periodbut [***],NUSandLicenseefail to conclude and execute a binding written license agreement [***],theImprovementOption(for suchNUS Improvementonly) shall be deemed [***]; provided, however, that [***]. The provisions of this Section 3.7 shall also apply, mutatis mutandis, to NUS’s rights under anyJoint Improvements(and anyOther Patent Rightsclaiming or disclosing the same), to the extent not already licensed exclusively to Licensee pursuant to Section 3.8 below. |
3.8 | Licensee andNUS agree that all rights, title and interests in and to allJointImprovementsshall beco-owned byNUSandLicenseeas tenants in common in equal, undivided shares.NUShereby grants an exclusive license toLicenseetoNUS’srights, title and interest and joint share in any suchJoint Improvementsthat are invented and/or disclosed in a patent application having an earliest priority date within [***],together with any Other Patent Rights claiming or disclosing the same, subject to the same terms and conditions as the practice ofPatent Rightsunder thisAgreementas set forth inSection 3.1,including but not limited to a clause substantially similar toSection3.2above in respect of the practice ofJoint ImprovementsforAcademic Purposes,[***]. |
4. | SUB-LICENSING |
4.1 | Licenseeshall have the right to grant written,sub-licenses under all or any of the licenses granted underSection 3.1, 3.6 and 3.8of this Agreement to any person, provided that: |
(a) | Licensee shall be responsible for the payment to Licensors of all amounts payable hereunder with respect to the activities of any Related Company orSub-Licensee; |
(b) | Any sublicense granted to a Related Company shall not grant to such Related Company any rights which are inconsistent with the rights and obligations of Licensee hereunder; and Licensee shall remain responsible to the Licensors hereunder for all activities of its Related Companies to the same extent as if such activities had been undertaken by Licensee itself; |
(c) | Licenseeshall be responsible for itsSub-Licenseesand shall not grant any rights which are inconsistent with the rights and obligations ofLicenseehereunder; |
(d) | any act or omission of aSub-Licenseeor of aRelated Companyunder a sublicense of thePatent Rights,which would be a breach of thisAgreementif performed byLicensee,shall be deemed to be a breach byLicenseeof thisAgreement;it being understood that the Licensors shall not have the right to terminate this Agreement as a result of any such act or omission of aSub-Licensee if such act or omission is capable of remedy and, [***] below, the applicableSub-Licensee or Licensee itself cures such breach; |
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(e) | eachsub-license agreement granted byLicensee to aRelated Company orSub-Licensee shall include a right to audit suchRelated Company orSub-Licensee granted toLicensorsof the same scope as providedin Section 9.l(b)hereof with respect toLicensee; |
(f) | Licenseeshall at all times indemnify and keep indemnifiedLicensorsagainst all or any costs, claims, damages or expenses incurred byLicensors,or for whichLicensorsmay become liable, pursuant to any third party claim or proceedings to the extent the same is a result of the default or negligence of anySub-Licenseeor of aRelated Companyunder a sublicense; and |
(g) | upon the termination of thisAgreementunderSection 18,all sublicenses ofLicensee’srights hereunder granted to (i) a QualifiedSub-Licensee(s) shall survive automatically; and (ii) anySub-Licensee that is not a QualifiedSub-Licensee, shall survive at the Licensors’ option, in each case, with the same field, level of exclusivity and territorial scope as thesub-license under the Patent Rights that had been granted by Licensee to suchSub-Licensee prior to the applicable termination of this Agreement, and Licensors and each suchSub-Licensee shall negotiate in good faith and [***] enter into a direct license agreement between them, [***]. |
4.2 | Licenseeshall, within [***] with aSub-Licensee, provideLicensorwith a certified true copy of thesub-license agreement [***]. |
4.3 | Thesub-licenses granted byLicenseeto aSub-Licensee underLicensee’srights underSection 3.1of this Agreement shall [***], provided that [***], as the case may be. |
4.4 | For the purposes of thisAgreement(including without limitation, Section 6 below), payments made toLicensorsdirectly by aSub-Licensee or Related Company of Licensee and activities ofSub-Licensees,Licensee’s Related Companies and others acting under Licensee’s authority, shall be deemed [***] for purposes of determining [***] under this Agreement. |
5. | COMMENCEMENT DATE AND TERM |
ThisAgreementshall come into effect on theEffective Dateand shall continue in force until the expiration of the last to expire of any patents under the Patent Rights unless terminated earlier in accordance with thisAgreement (“Term”).
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6. | OBLIGATIONS OF LICENSEE |
6.1 | Licenseehereby undertakes and agrees withLicensorsthat it will at all times during theTermobserve and perform the terms and conditions set out in thisAgreementand in particular shall: |
(a) | use [***] to effect introduction of [***] into the commercial market [***];and |
(b) | deliver toLicensorstheLicensee’sannual financial statements, within [***] during theTerm,the first annual financial statements being due toNUS[***]; and |
(c) | deliver toLicensorstheLicensee’stechnical development update including [***], no later than [***]. |
6.2 | Licensee also undertakes to meet the followingPerformance Objectivesby the respective Dates of Achievement: |
Performance Objectives: | Date of Achievement | |
1. [***] | [***] | |
2. [***] | [***] | |
3. [***] | [***] | |
4. [***] | [***] | |
5. [***] | [***] | |
6. [***] | [***] |
6.3 | If Licensee fails to meet, or anticipates that it will fail to meet, any of the Performance Objectives by the applicable Date of Achievement set out in Section 6.2:- |
(a) | the Parties shall, at Licensee’s written request (to be sent no later than [***]), have good faith discussions, for a period of up to [***] from the date of the Licensee’s written request, on the reasons for such failure and any mutually agreeable extension of the then-current Dates of Achievement for any outstanding Performance Objectives. |
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(b) | Licensee may also obtain an extension of any Date of Achievement for a period of [***] in the case of [***] listed in Section 6.2 above and [***] in the case of [***]. In order to obtain such an extension, Licensee shall, [***] for the applicable Performance Objective specified in Section 6.2 above: (i) [***] with respect to a request for an extension of [***] and [***] with respect to a request for an extension of [***], and (ii) provide to Licensors a copy of [***]. Licensee may obtain no more than [***] extensions of the Date for Achievement for each Performance Objective [***]. Following [***], the Date of Achievement of the relevant Performance Objective will be deemed to be amended to incorporate the relevant [***] or [***] extension, as the case may be, and all other outstanding Performance Objectives shall be deemed extended by the same time period. |
(c) | If Licensee fails to satisfy the Performance Objectives on or before the applicable Dates of Achievement (as extended pursuant under Section 6.3(a) or (b) above, if applicable), Licensors shall, at their option, have the right, by notice in writing to Licensee, to: (i) terminate the exclusivity of the license granted under Section 3.1; or (ii) terminate this Agreement pursuant to Section 18.1(a). |
7. | FINANCIAL PROVISIONS |
7.1 | In consideration for the rights granted underSection 3,Licenseeshall pay toSt. Judea non-refundable upfront fee in US dollars equivalent to Singapore Dollars Forty Two Thousand Seven Hundred and Fifty Only (SGD 42,750)(“Upfront Fee”)[***]. |
7.2 | In addition to theUpfront FeeunderSection 7.1, Licenseeshall pay toLicensorsduring theTermof thisAgreement,[***] royalties(“Royalty”)at the rate of 2.5% ofNet Sales. The followingRoyaltyshall be payable [***]; [***] until the [***].TheRoyaltyshall be payable toLicensorsno later than [***].Licensorsrecognize that theLicenseemay need to obtain additional patent rights and licenses to commercializeLicensed Products. IfLicensee,itsRelated CompanyorSub-Licenseeis obligated, with respect to anyLicensed Product,to pay royalties or other amounts to any third party in respect of any intellectual property rights that are reasonably required, or reasonably expected to be required, to make, use or sell anyLicensed Productin such country, thenLicenseeshall have the right to credit [***] against theRoyaltyowing toLicensorsabove for such year with respect toNet Salesof suchLicensed Product[***]; provided, however, thatLicenseeshall not reduce the amount of theRoyaltypaid toLicensorswith respect to suchNet Salesof suchLicensed Productin a particular calendar year [***] to less than [***]% ofNet Salesof suchLicensed Product[***]. [***] royalty shall be due onNetSalesof anyLicensed Product,[***] if suchLicensed Productis covered by multiple patents, patent applications or claims within thePatent Rights, NUS ImprovementsorJoint Improvements. |
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7.3 | In addition to theUpfront FeeunderSection 7.1and in consideration of the rights granted byLicensorsunderSection 3to theLicensee, theLicensee,on behalf of itself and all its stockholders, shall, upon execution of this Agreement, issue toNUSor its nominee, pursuant to the form of Common Stock Issuance Agreement attached hereto asExhibit A,250,000 fullypaid-up common stock in theLicensee (“Common Stock”),which Licensee represents being [***]% ofLicensee’s[***] issued shares and [***] shares issued or reserved for future issuance pursuant to stock option plans or otherwise. The Common Stock shall have [***]. [***]. For purposes of clarity, upon the closing of the Series A Financing, NUS or its nominee shall have no further rights to receive any additional shares of stock in Licensee. |
7.4 | Licenseeshall further pay toLicensorsnon-refundable payments as follows and subject to the terms of this Section 7.4 below: |
(a) | a license maintenance fee within [***] of [***] during the Term of the Agreement commencing with January I, 2017(“License Maintenance Fee”): |
Anniversary Date | Fee | |||
Years1-2 | SGD $ | 25,000 | ||
Years 3+ | SGD $ | 50,000 |
TheLicense Maintenance Feeshall be paid in US dollars and [***];
(b) | [***]; |
(c) | [***]; |
(d) | [***]; |
(e) | [***]; |
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(f) | [***]; |
(g) | [***]; |
(h) | [***]; and |
(i) | [***]. |
Notwithstanding the foregoing, in the event that a milestone stipulated inSections 7.4(c)to(e)and(g) to(i) above is first achieved by Licensee, or its Related Company or Sub -Licensee, as applicable, [***], the Licensee shall [***] and if such milestone is subsequently achieved by Licensee, its Related Company orSub-Licensee, as applicable, [***], then [***]. For the avoidance of doubt, the Parties acknowledge and agree that in no event shall the amounts to be paid to Licensors under Sections 7.4(b) through 7.4(i) [***].
[***] of milestone payments (b)-(i) shall be [***].
7.5 | Licensee shall further pay toLicensors: |
(a) | [***]; |
(b) | [***]; |
(c) | [***]; and |
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(d) | [***]. |
For the sole purpose of supporting research and development or infrastructure ofLicensee,Licensee shall be allowed to defer payment ofLicensors’ share of anySublicense Revenue received [***] for a period of up to [***].
7.6 | All fees, royalties and all other sums payable under thisAgreementshall be paid in US Dollars. All such payments due in a particular accounting period computed in other currencies shall be converted into US dollars at the exchange rate for bank transfers from such currency to US dollars as quoted by the Wall Street Journal on the last day of such accounting period. All fees, royalties and all other sums payable under thisAgreementshall be made payable to “[***]”. Wire transfers may be made using the following information: |
Acct Name: [***]
Acct Number: [***]
Bank Name: [***]
Bank Swift: [***]
Bank ABA #: [***]
Bank Address: [***]
[***] shall be responsible for any and all costs associated with wire transfers and shall include a reference to thisAgreementin any wire transfer payment. Payments made by check should be sent to the following address:
[***]
or in such other manner asLicensorsmay specify from time to time toLicensee.Where any fees, royalties or any other payments payable byLicenseetoLicensorsunder thisAgreement,including, but not limited to royalties, upfront fees and patent costs reimbursements, are subject to goods and services taxes, value added taxes, withholding taxes and other applicable taxes or duties, these taxes and duties shall be borne [***]. Subject to Section 16.2 below,Licenseeagrees to hold harmless from, and indemnifyLicensorsagainst, all liabilities, costs, damages suffered byLicensorsof whatever nature resulting fromLicensee’sfailure duly and timely to pay and discharge its liability for any of the aforementioned taxes or duties.
7.7 | IfLicenseefails to pay in full toLicensorsany undisputed fees, royalties or other sums payable under thisAgreementby their respective due dates, the payment shall accrue interest beginning on the tenth day following the due date thereof, calculated at the rate of [***] the date said payment is due. |
7.8 | For clarity, the payments made byLicensee toSt. Jude, as required underSection 7.6, shall satisfy in fullLicensee’spayment obligations under thisAgreementto bothLicensors for the amounts paid. No duplicative payments shall be due toNUS, andSt. Judeshall be solely responsible for accounting toNUSfor its portion (as determined as between theLicensors)of the amounts paid byLicenseetoSt. Jude. |
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8. | ACCOUNTS |
8.1 | Licenseeshall: |
(a) | provide a statement accompanying all fees, royalties and other payments made under this Agreement, showing all items of account from which such fees, royalties and other payment are calculated, such statements to be certified by an authorized officer ofLicensee as properly reflecting all amounts due toLicensors in accordance with the relevant provisions under thisAgreement; |
(b) | keep true, accurate and complete accounts and records in sufficient detail to enable the amount of royalties and other sums payable under this Agreement to be determinedby Licensors; |
(c) | at the reasonable request ofLicensors [***], and upon not less than [***] prior written notice, allow an independent certified public accounting firm of internationally recognized standing selected byLicensors and reasonably acceptable toLicensee, atLicensors’ expense, duringLicensee’s normal business hours, to inspect, audit and copy those accounts and records pertaining to the items shown on the statements provided underSection 8.l(a) for [***] following the end of the [***] to which they pertain. Such accounting firm will be bound to hold all information in confidence between the Parties except as necessary to communicateLicensee’snon-compliance (if any) with its reporting and payment obligations under thisAgreement toLicensors. |
8.2 | If, following any inspection and audit pursuant toSection 8.l(c), Licensors’independent accounting firm discovers a discrepancy, inLicensors’disfavor, between the amount of fees, royalties and other sums actually paid byLicenseeand those which should have been paid under this Agreement, which is in excess of [***] of those that should have been paid under this Agreement,Licenseeshall, within [***] of the date ofLicensors’ notification thereof, reimburse St. Jude for any such deficiency [***]. |
8.3 | The provisions of thisSection 8shall remain in full force and effect after the termination of thisAgreementfor any reason for a period not to exceed [***] until the settlement of all subsisting claims ofLicensorsunder thisAgreement. |
9. | PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS |
9.1 | Licensee shall [***]. |
9.2 | Licensorsshall, from theEffective Dateof this Agreement, control the management and further prosecution and maintenance of thePatent Rightsand theOther Patent Rights (collectively, the“Prosecuted Patent Rights”).Subject to Section 9.4 below,Licensors shall: |
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(a) | seek and maintain the strongest patent portfolio practicable with respect to theProsecuted Patent Rightsand use patent attorneys (including foreign patent counsel) reasonably acceptable toLicensee,such acceptance not to be unreasonably withheld; |
(b) | instruct such patent attorneys to [***] copyLicenseeon all written correspondence sent to or received from any patent office (including all official actions) and giveLicenseean opportunity and [***] to (i) comment on and advise Licensors with respect to all such correspondence and proposed responses to office actions, and (ii) provide consultation and input on all strategic decisions with respect to the preparation, filing, prosecution and maintenance of all patent applications and patents within theProsecuted Patent Rights;and |
(c) | consider in good faith and reasonably incorporate all such comments, input and advice provided byLicensee and, without limiting the foregoing, Licensors shall file patent applications included theProsecuted Patent Rights in each country requested byLicensee; |
(d) | not abandon or allow to lapse any suchProsecuted Patent Rights,or to amend orre-file the patent specifications of any patent applications within the scope of theProsecuted Patent Rights,without first providing [***] prior written notice toLicensee. |
9.3 | Licenseeshall, [***], execute and do such assurances, acts and things, and execute such documents asLicensorsmay reasonably require to prosecute patent applications within theProsecuted Patent Rightsand to grant and to maintain each of theProsecutedPatent Rightsin force. In addition, upon any Patty’s request, NUS, St Jude and Licensee shall enter into a “commonality of interest” agreement to maintain attorney-client privilege and confidentiality with respect to the parties’ communications hereunder pertaining to the filing and/or prosecution of any of theProsecuted Patent Rights. |
9.4 | It is hereby agreed and understood that, notwithstandingSection 9.2, Licenseeshall, by giving [***] toLicensors,[***].IfLicenseeelects [***]: |
(a) | the license and/or rights granted pursuant to this Agreement in respect of the specificProsecuted Patent Rightsfor whichLicenseehas made the election, shall automatically terminate as of the expiration of [***] and such patent or patent application shall thereafter be deemed to be excluded from the definition of “Patent Rights” or “Other Patent Rights,” as applicable, hereunder. |
(b) | [***] of such notice pursuant toSection 9.4, Licensorsmay continue to file for, prosecute and/or maintain such specificProsecuted Patent Rightsin such country or countries in respect of whichLicenseehas made the election, [***], and notwithstandingSection 3,to thereafter deal with the same with respect to such specificProsecuted Patent Rights(or, if applicable, Licensors’ interest therein) in that country or countries asLicensorsdeem fit, without having to account toLicenseetherefor; and |
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(c) | [***], Licensee shall have no further obligation [***]; |
(d) | For the avoidance of doubt, Licensors shall have and continue to retain their respective proprietary interests in anyPatentobtained pursuant toSection 9.4(b). |
9.5 | Subject toSection 9.4above and the terms of thisSection 9.5below, Licensee shall reimburse Licensors for (a) [***] incurred by Licensors with respect to the preparation, filing, prosecution and maintenance of theProsecuted Patent Rights (“Patent Costs”)[***], and (b) [***] incurred by Licensors with respect to the preparation, filing, prosecution and maintenance of thePatent Rights[***]. |
9.6 | [***], Licensee shall further pay to the Licensors an administrative charge of [***] of the [***] incurred by NUS(“Administrative Fee”). |
9.7 | Licensors shall provide to Licensee a detailed and itemized statement of the Patents Costs and Administrative Fee incurred after the Effective Date on a [***] basis (but in no event less than [***] and Licensee’s payment of the undisputed Patent Costs and Administrative Fee reflected in each such statement shall be due within [***] after Licensee’s [***]. |
9.8 | To facilitate the smooth prosecution, processing and maintenance ofPatent RightsbyLicensors, Licensee’sappointed representative for all patent matters shall be: |
Name: [***]
[***]
Email Add.: [***]
Phone No.: [***]
Fax No.: [***]
10. | FORMAL LICENSE FOR REGISTRATION |
10.1 | Within [***] of a patent withinPatent RightsorOther Patent Rights,each of thePartiesshall execute a separate formal license in respect of such patent for registration in all or any competent registries within such countries as may be determined by Licensee, each such license to be in the form set out inSchedule3 or as nearly in such form as may be required under the laws of such country in which it is to be registered. |
10.2 | Each of such formal licenses shall operate subject to and with the benefit of all the terms of thisAgreement,the terms of which shall be deemed to be incorporated in their entirety into each of such formal licenses. In the event of any conflict in meaning between any such formal license and the provisions of thisAgreement,the provisions of thisAgreementshall prevail. |
10.3 | ThePartiesshall [***] to ensure that, to the extent permitted or required by relevant authorities (e.g., governmental or financial authorities), thisAgreementshall not form part of any public record. |
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10.4 | Each of thePartiesshall, at the request of the otherParty,execute any further document that may be necessary to: |
(a) | give effect to thisAgreement;or |
(b) | procure or protect in any country the rights of the otherParty under thisAgreement and/or in relation to thePatent RightsorOther Patent Rights. |
11. | INFRINGEMENT OF PATENTS |
11.1 | Licenseeshall forthwith notifyLicensorsin writing of any infringement, or suspected or threatened infringement, of any of thePatent RightsorOther Patent Rightsby any third party that shall at any time come to its knowledge. EachLicensorshall [***] notifyLicenseeand the otherLicensorin writing of any infringement, or suspected or threatened infringement, of any of thePatent RightsorOther Patent Rightsby any third party that shall at any time come to its knowledge. |
11.2 | Licensee(or, to the extent designated by Licensee, its Related Company or any Qualified Sublicensee) shall have the [***], to enforce thePatent Rightsand/orOther PatentRightsand/or to defend thePatent Rightsand/orOther Patent Rights(e.g., in any declaratory judgment, opposition, post grant challenge, inter partes review or biosimilar challenge) with respect to the same. |
11.3 | In the event that any claims or counter-claims are issued or made by a third party againstLicensorsas a result of such action taken byLicensee(or its designee described in Section 11.2 above) underSection 11.2, Licensee(or such designee) shall have control over, and shall take steps to defendLicensorsagainst such claims and/or counterclaims and shall have control over, and shall conduct [***], the defense of theLicensorsin consultation with theLicensors. Licenseeshall indemnifyLicensorsagainst all Liabilities (as defined in Section 16.1 below) arising from such claims and counter-claims issued or made by a third party; provided that the indemnification procedures and other terms set out in Section 16.2 shall be deemed to applymutatis mutandis(and any references in Section 16.2 below to Section 16.1 shall be deemed to be replaced by Section 11.3 for such purposes). |
11.4 | Licensorsshall reasonably cooperate, [***] and at Licensee’s [***] request, in taking such steps, including joining in any such action and cooperating withLicensee(or such designee described in Section 11.2 above) in connection therewith. |
11.5 | Any recoveries pursuant toSection 11.2shall be used [***]Licensee(and/or its designee described in Section 11.2 above) [***], and any remainder shall be [***].For clarity, [***] provision. |
11.6 | IfLicensee(or its designee described in Section 11.2 above) decides not to or fails, within [***] pursuant toSection 11.1,to take steps to prevent or restrain any infringement by any third party of any of thePatent Rights,thenLicensorsshall be entitled to take action to prevent or restrain such infringement. In the event thatLicensorsdecides to take action under this Section: |
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(a) | Licensorsshall have control over, and shall conduct [***], any such action as it deems fit; provided that Licensors shall not initiate any legal. |
proceedings with respect to any such infringement unless such infringement is, in the reasonable opinion of the Licensors, commercially significant and Licensors have first consulted with Licensee in good faith regarding whether to initiate such infringement proceedings;
(b) | Licenseeshall, [***], provide or procure the provision of such assistance asNUS shall reasonably require in taking such action; and |
(c) | Licensors shall be entitled to [***] as a result of any such action [***] being taken byLicensors. |
12. | INFRINGEMENT OF THIRD PARTY RIGHTS |
12.1 | lf any proceedings are brought againstLicenseeon grounds that the use or exploitation byLicenseeof any of thePatent Rightsinfringes the rights of any third party,Licenseeshall [***] notifyLicensorsof the same.Licenseeshall have the exclusive control of the defense of such proceedings |
12.2 | With respect of such proceedings as described inSection 12.1, Licensorsshall reasonably cooperate withLicensee(or to the extent designated by Licensee, its Related Company or any Qualified Sublicensee), atLicensee’s(or such designee’s) [***]. |
13. | TRADE MARKS |
13.1 | Licensee shall have the absolute right and discretion to make, have made, use, sell, offer for sale and importLicensed Products under any trade marks designated byLicensee (“Licensee’s Trade Marks”) provided that theLicensee’s Trade Marks shall be readily distinguishable from, and not confusingly similar to, any trade mark or trade name, whether registered or not, ofLicensors. |
13.2 | Licensorshereby agrees that it shall have no claim, right, title or interest in or to theLicensee’s Trade Marks(except where any of suchLicensee’s Trade Marksis not readily distinguishable from, or is confusingly similar to, any trade mark or trade name ofLicensors),and that all goodwill accruing thereto shall belong toLicenseeabsolutely. |
13.3 | Licensee shall have the sole conduct of all proceedings relating to theLicensee’s Trade Marks. |
13.4 | Licensee shall have the sole right to decide what action, if any, to take in respect of any infringement or alleged infringement of theLicensee’s Trade Marks or any other claim or counterclaim brought or threatened in respect of the use or registration of any of theLicensee’s Trade Marks. |
13.5 | Licensee shall not be obliged to bring or defend any proceedings in relation to theLicensee’s Trade Marks. |
13.6 | Licensors shall not be entitled to bring any proceedings in respect of any infringement or alleged infringement of any of theLicensee’s Trade Marks. |
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14. | CONFIDENTIALITY |
14.1 | EachPartyhereby agrees to use all reasonable efforts to maintain the secrecy of any and allConfidential Informationdisclosed to it by the otherPartyunder the terms of thisAgreement,or developed pursuant to thisAgreement,and not to disclose, without the express, written consent of the disclosingParty,suchConfidential Informationof anotherPartyto any third party. |
14.2 | The receivingParty agrees to maintain the Confidential information of the disclosingParty in confidence with the same degree of care as it holds its own confidential and proprietary information and in any event with no less than a reasonable standard of care. The receivingParty will use suchConfidential Information for the performance of thisAgreement only (including the exercise of suchParty’s rights hereunder). The receivingParty may disclose suchConfidential Information on aneed-to-know basis only to its directors, officers, employees, contractors (including sublicensees and other collaboration partners or contractors), consultants, advisors, authorized representatives or agents (each a “Representative”, and collectively “Representatives”) who have undertaken obligations of confidentiality for the benefit of receivingParty which are substantially similar to those contained in this Section 14 and will not disclose suchConfidential Information to any third party, or use theConfidential Information for any other purpose. The receivingParty undertakes that itsRepresentatives shall make use of suchConfidential Information only for the performance of thisAgreement and receivingParty shall be responsible for any unauthorized use or disclosure of disclosingParty’s Confidential Information by itsRepresentatives. |
14.3 | The receivingParty shall take all reasonable steps, including, but not limited to, those steps taken to protects its own information, data or other tangible or intangible property that it regards as proprietary or confidential, to ensure that theConfidential Information of the other Party is not disclosed or duplicated for the use of any third party, and shall take all reasonable steps to prevent itsRepresentatives having access to theConfidential Information, from disclosing or making unauthorized use of anyConfidential Information, or from committing any acts or omissions that may result in a violation of thisAgreement. |
14.4 | The preceding obligations ofnon-disclosure and the limitation on the right to use theConfidential Information shall not apply to the extent that the receivingParty can demonstrate that theConfidential Information: |
(a) | was already in the possession or control of the receivingPartyprior to the time of disclosure by disclosingParty,as evidenced by written records; or |
(b) | was at the time of disclosure by the disclosingPartyor thereafter becomes public knowledge through no fault or omission of the receivingParty;or |
(c) | is lawfully obtained by the receivingPartyfrom a third party under no obligation of confidentiality to the disclosingParty;or |
(d) | is developed by the receivingPartyindependently of theConfidential Information,as evidenced by written records; or |
(e) | is required to be disclosed by court rule or governmental law or regulation, including, without limitation, any rules and regulations promulgated by the United States Securities and Exchange Commission, provided that the receivingParty gives the disclosingPartyprompt notice of any such requirement and cooperated with the disclosingPartyin attempting to limit such disclosure; or |
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(f) | was disclosed by the receivingPartywith the disclosingParty’sprior written approval. |
14.5 | Title to, and all rights emanating from the ownership of, allConfidential Information disclosed under thisAgreementshall remain vested in the disclosingParty.Nothing herein shall be construed as granting any license or other right to use theConfidential Information of the otherPartyother than as specifically agreed upon by theParties. |
14.6 | [***],the receivingPartyshall [***] return to the disclosingPartyall written materials and documents, as well as other media, made available or supplied by the disclosingPartyto the receivingPartythat containsConfidential Information,together with any copies thereof, except that the receivingPartymay retain one copy each of such document or other media for archival purposes, subject to protection and nondisclosure in accordance with the terms of thisAgreement. |
14.7 | Notwithstanding anything to the contrary in thisSection 14,eachPartymay disclose theConfidential Informationof the otherPartyto the extent such disclosure is reasonably necessary to prosecute or defend litigation. In addition,Licenseemay disclose theConfidential InformationofLicensorsto the extent such disclosure is reasonably necessary to facilitate discussions with prospective investors or acquirers or to prospectiveSub-Licensees,provided thatLicenseehas procured that such prospective investors or acquirers or prospectiveSub-Licenseesundertake obligations of confidentiality which are substantially similar to those contained in this Section 14 and will not disclose suchConfidential Informationto any third party, or use theConfidential Informationfor any purpose other than discussions withLicensee. |
15. | WARRANTIES; DISCLAIMER OF WARRANTIES |
15.1 | NeitherLicensors nor any of their trustees, directors, employees, or agents assumes any responsibility for the manufacture, production, specifications, sale or use of theInvention orLicensed Products, byLicensee or anySub-licensees. |
15.2 | Except as provided inSection 15.5, Licensorsmake no representations, and provide no warranties, express or implied, including, but not limited to, warranties of fitness for purpose or merchantability or satisfactory quality or compliance with any description, or any implied warranty arising from course of performance, course of dealing, usage of trade or otherwise, regarding or with respect to theInventionorLicensed Products,and to the fullest extent permitted by law, all such warranties and representations are hereby excluded. |
15.3 | Licensorsmake no representations, and provide no warranties, express or implied, on the patentability of theInventionorLicensed Productsor of the enforceability of anyPatent Rights,if any, and to the fullest extent permitted by law, all such warranties and representations are hereby excluded. |
15.4 | Licensorsmake no representations, and provide no warranties, express or implied, that theInventionorLicensed Productsare or shall be free from infringement of any patent or other rights of third parties or of St. Jude’s rights to chimeric antigen receptors containing [***], and to the fullest extent permitted by law, all such warranties and representations are hereby excluded. |
15.5 | St. Juderepresents that no third party (i) has rights to [***] and [***] or (ii) eights to any continuing pending applications to the extent that such pending applications |
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issue with only claims directed to [***].NUSrepresents thatNUShas not entered into any agreement [***],nor is it otherwise bound by any obligations that would, limit Licensee’s licenses to any NUS Inventions, Additional NUS Compositions and/or to NUS’ rights in any Joint Inventions pursuant to Sections 3.6 and/or 3.8, as applicable, nor to Licensee’s Improvement Option pursuant to Section 3.7, at least with respect to any NUS Improvement or Joint Improvement, as applicable, that relates to natural killer cell technology; and NUS agrees that it shall not enter into any such agreement, or otherwise become bound by any such obligations, during the term of this Agreement or, in the case of NUS Improvements or Joint Improvements, as applicable, to which Licensee’s Improvement Option applies pursuant to Section 3.7, until Licensee’s rights with respect to each NUS Improvement or Joint Improvement, as applicable, that is subject to such Improvement Option terminate or expire in their entirety in accordance with Section 3.7 above.Licensorsrepresent and warrant thatLicensorshave the full power and authority to grant the rights and licenses granted herein. |
16. | INDEMNITIES; INSURANCE; LIMITATION OF LIABILITY |
16.1 | Licenseehereby indemnifies, holds harmless and defendsLicensorsfrom and against any and all losses, damages, costs (including, without limitation, reasonable attorneys’ fees and other legal costs (subject to Section 16.2 below)), expenses and liabilities (collectively, “Liabilities”) whatsoever whichLicensorsmay incur or suffer from any actions brought by a third party or, solely with respect to Section 16.1(e) below, any claims or demands, in each case, to the extent arising from: |
(a) | the manufacture, marketing, distribution and sale of theLicensed ProductsbyLicenseeor through any of its Related Companies orSub-Licensees;or |
(b) | the use or exploitation of any of the Patent Rights by Licensee or itsSub-Licensees or Related Company(ies) infringes the rights of any third party; |
(c) | any other agreements entered into byLicenseeor any of its Related Companies orSub-licenseesrelating to theLicensed ProductsandInventionor the performance ornon-performance of the terms of such agreements or any representations or statements made byLicenseeor any of its Related Companies orSub-Licenseesrelating to theInventionorLicensed Products;or |
(d) | any claim that a use of any Licensee Improvement or Joint Improvement or any other modification(s) made by or on behalf ofLicenseeor any of itsSub-Licenseesor Related Companies to an invention claimed in the Patents Rights or Other Patent Rights as of the Effective Date infringes any trademark, trade secret, confidential information, copyright or patent or any other proprietary rights of any third party; or |
(e) | all taxes of any kind (except income tax in respect of consideration received byLicensorsunder this Agreement), payments in lieu of taxes, import duties, assessments, fees, charges and withholdings of any nature whatsoever, and all penalties, fines, additions to tax or interest thereon, however imposed, whether levied or asserted againstLicensorsby any tax authority of any country to the extent based solely on any activities of Licensee or its Related Company(ies) in accordance with this Agreement; or |
(f) | all charges, fines or any liability arising from any default or failure byLicenseeor any of its Related Companies orSub-Licenseesto comply with and observe all laws and regulations referred to inSection 17;or |
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(g) | any action or omission ofLicensee or any of its Related Companies orSub-Licensees, or any of their employees, agents or contractors in the performance of its obligations or the exercise of any of its rights under thisAgreement. |
16.2 | In the event that a Licensor intends to claim indemnification under Section 16.1 above, such Licensor shall [***] notify Licensee in writing of the alleged Liabilities. Licensee shall have the right to control the defense and/or settlement thereof with counsel of its choice as long as such counsel is reasonably acceptable to the applicable Licensor(s); provided, however, that each Licensor shall have the right to retain its own counsel for any reason, provided further that the costs of such counsel retained by a Licensor shall [***]. Licensors shall cooperate with Licensee and its legal representatives in the investigation of any Liability covered by Section 16.1 above. A Licensor shall not, except with the written consent of Licensee, such consent not to be unreasonably withheld, voluntarily make any payment or otherwise settle or compromise any third party claim for which a Licensor wishes to claim indemnification under this Section 16. For the avoidance of doubt, circumstances in which Licensee may reasonably withhold its consent shall include, but shall not be limited to, payment, settlement or compromise that [***]. In addition, notwithstanding Section 16.1 above, Licensee shall have no obligation to indemnify or hold harmless any Licensor from any Liabilities to the extent that such Liabilities arise directly from the acts or omissions of that Licensor ( or its employees, agents and/or representatives) or from any breach of any representation, warranty or other term of this Agreement by that Licensor. |
16.3 | Prior to the first use of aLicensed Productin a human being,Licenseeshall obtain and shall thereafter maintain adequate product liability insurance and shall ensure thatLicensorsare named as an additional insured on the policy.Licenseeshall supplyLicensorswith a copy of such insurance policy upon written request. |
16.4 | Licensorsshall not have any liability toLicenseefor any indirect, consequential, special or incidental loss, damage, expense or liability (including lost profit and loss of goodwill, opportunity costs, loss of business, damage to reputation, claims by third patties or customers), or any exemplary or punitive damages, regardless of the form of action, whether in contract or tort (including negligence), arising under or relating to this Agreement, including from the Licensee’s use or exploitation of thePatent RightsorInvention;provided however that nothing in this Section I 6.4 shall be deemed to limit the indemnification obligations of Licensee under Section 7.6, Section 11.3 or Section 16.1 above to the extent a third patty recovers any such indirect, consequential, special or incidental loss, damage, expense or liability, or any such exemplary or punitive damages with respect to a claim for which Licensee is obligated to indemnify the Licensors thereunder.Licensors’liability to theLicenseefor direct damages or losses for any cause arising from the acts or omission ofNUSand/orSt. Judein the performance of thisAgreementshall be limited [***]. |
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17. | COMPLIANCE WITH LAW |
17.1 | Licensee shall observe, and shall require that its Related Companies andSub-Licensees observe, all applicable laws and regulations, and obtain all necessary licenses, consents and permissions required, in respect of the manufacture, storage, marketing, distribution, sale (including export), and importation of theLicensed Products. |
18. | TERMINATION |
18.1 | Licensorsshall be entitled forthwith to terminate thisAgreement[***] by notice in writing if: |
(a) | Licenseefails, or refuses, to perform or comply with any one or more of its material obligations under this Agreement, andLicenseefails to remedy such default within [***] byLicenseefromLicensors; |
(b) | Licenseeceases to carry on its business; |
(c) | Licenseeis declared insolvent by a court of competent jurisdiction or is unable to pay its debts as they fall due or suspends making payments with respect to all or any class of its debts or enters into any composition or arrangement with its creditors or makes a general assignment for the benefit of its creditors; |
(d) | Licenseegoes into liquidation or if an order is made or a resolution is passed for the winding up ofLicenseewhether voluntarily or compulsorily (except for the purpose of a bona fide reconstruction or amalgamation); or |
(e) | Licenseehas a receiver or receiver and manager or judicial manager appointed over any part of its assets or undertaking. |
18.2 | Licenseemay terminate this Agreement by giving [***] advance written notice of termination toLicensors. |
18.3 | Termination or expiration of thisAgreementhowsoever caused shall not prejudice any other obligation, right or remedy of theParties,that at the time of such termination or expiration, has already accrued to another Party or that is attributable to a period prior to such termination or expiration, including without limitation in respect of any antecedent breach. |
18.4 | Upon the termination of thisAgreement: |
(a) | Licenseeshall be entitled to continue to exercise the rights granted to it under this Agreement to such extent and for such further period, not exceeding [***] from the date of termination, [***] to enableLicenseeto satisfy any orders placed prior to such termination date or scheduled for delivery within such [***] period; |
(b) | subject toSections 4.1(g) and 18.4(a)above,Licenseeshall [***] cease to manufacture, market, distribute, sell, import or use, either directly or indirectly, theInvention orLicensed Products; |
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(c) | subject toSections 4.l(g) and 18.4(a) above, eachParty shall [***] return or destroy allConfidential Information pursuant toSection 14.6; |
(d) | Licenseeshall [***] pay all amounts due under thisAgreementtoLicensors and shall submit a declaration in writing signed by a duly authorized officer that it has complied with such payment obligations, along with a copy of all materials [***] to support such declaration. |
(e) | if termination occurs within [***], Licenseeshall, in consideration of Licensors’forbearance to claim damages againstLicenseefor lost opportunity cost, provide [***]; |
(f) | if termination occurs within [***], Licenseeshall, in considerationof Licensors’forbearance to claim damages againstLicenseefor lost opportunity cost, provide [***];and |
(g) | if termination occurs within [***] and ifLicenseehas filed patent applications or obtained patents to any Licensee Improvements toLicensed Product(s)within the scope of thePatent Rights, Licenseeagrees upon request to enter into good faith negotiations withLicensorsorLicensors’future licensee(s) for the purpose of granting licensing rights to said patent applications and/or patents to the extent controlled by Licensee [***] and under [***]; provided that such request to negotiate a license must be made by Licensors, if at all, [***]. |
18.5 | Notwithstanding termination of this Agreement under any of its provision, Sections 3.4, 3.8 (first sentence only), 4.1(g), 7.8, 8 (for the applicable periods specified in such section), 14, 15, 16.1, 16.2, 16.4, 18.3, 18.4, 19, 20, 21 through to and including 28 shall survive the Term or the termination of this Agreement and shall be deemed to remain in full force and effect. |
19. | USE OF LICENSORS’ NAME |
Licenseeagrees that it shall not use in any press release or other announcement made to the general public the name of NUSand/orSt. Judeand/or the name of an affiliate, a current or former staff member, employee, student of affiliated physician or faculty ofSt. Judeor any logotypes or symbols associated withNUSand/orSt. Judeor the names of any directors or employees ofNUSand/orSt. Judewithout the prior written consent ofNUSand/orSt. Jude;provided that, for the avoidance of doubt, nothing in this Section 19 shall be deemed to prevent Licensee from making factual statements regarding (a) the existence of this Agreement to existing or potential investors, (sub) licensees, collaboration partners, subcontractors, consultants, advisers, regulatory authorities and/or other governmental authorities and/or (b) with respect to Dr. Dario Campana’s position as a scientific advisor to Licensee; provided further that no reference is made to Dr Dario Campana’s previous affiliation with St. Jude without St. Jude’s consent or to Dr Dario Campana’s affiliation with NUS without NUS’s consent.
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20. | FORCE MAJEURE EVENTS |
Notwithstanding anything else in thisAgreement,no default, delay or failure to perform its obligations under theAgreementon the part of eitherPartyshall be construed a breach of thisAgreementto the extent such default delay or failure to perform is shown to be due to causes beyond the control of thePartycharged with a default, delay or failure to perform, including but not limited to, causes such as strikes, lockouts or other labor disputes to perform, including, without limitation, riots, civil disturbances, actions or inaction of governmental authorities, epidemics, war, embargoes, severe weather, fire, earthquakes, acts or God or the public enemy and nuclear disasters (each a “Force Majeure Event”).
21. | NO PARTNERSHIP OR AGENCY |
No agency, partnership or joint venture is created hereby.Licenseedoes not have any authority of any kind to bindLicensorsin any respect whatsoever.
22. | ASSIGNMENT |
22.1 | Except as provided in Section 22.2 below, noPartyshall assign any of its rights under this Agreement, or novate its rights and obligations hereunder to any third party, without the prior consent in writing of the otherPartieson terms to be agreed by theParties.Where such consent is given, theParty,which is the assignor, shall procure that such third party assignee covenants with the otherPartiesto be bound by the terms of thisAgreementas if it had been a party hereto in place of the assignor. |
22.2 | NotwithstandingSection 22.1, Licensee may assign this Agreement and/or its rights and/or obligations hereunder, without the consent of Licensors, to (a) a Related Company or (b) aPre-approved Assignee; provided that such assignment is in connection with a restructuring or other corporate reorganization or merger or sale of Licensee or any business or assets or similar transaction. [***] and subject to the terms of Section 7 .5, if applicable. No assignment fee or other amounts shall be due hereunder with respect to any consideration received by Licensee and/or its shareholders in connection with any of theExcluded Activities and/or an assignment of this Agreement and/or Licensee’s rights and/or obligations under this Agreement in connection with any of theExcluded Activities. |
22.3 | [***]. |
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23. | NO WAIVER |
The failure or delay by aPartyin enforcing an obligation, or exercising a right or remedy under thisAgreementshall not be construed or deemed to be a waiver of that obligation, right or remedy. A waiver of a breach of a term under thisAgreementshall not amount to a waiver of a breach of any other term in thisAgreementand a waiver of a particular obligation in one circumstance will not prevent aPartyfrom subsequently requiring compliance with the obligation on other occasions. Any waiver by aPartyof any right under thisAgreementshall be made in writing and signed by the authorized representative of suchParty.
24. | NOTICES |
24.1 | All notices, demands or other communications required or permitted to be given or made hereunder shall be in writing and delivered personally, sent by internationally recognized priority carrier (e.g., FedEx), email correspondence (delivery receipt confirmed) or by telefax, addressed to the intended recipient thereof at its address or telefax number as set out below (or to such other address or telefax number as anyPartymay from time to time notify the otherParty).Any such notice, demand or communication shall be deemed to have been duly served on and received by the addressee: |
(a) | if delivered by hand, at the time of delivery; |
(b) | if sent by priority carrier, within 3 business days of dispatch; or |
(c) | if sent by email at the time of delivery as shown by delivery and read receipts, or on the next business day if received after the recipient’s normal business hours; or |
(d) | if transmitted by way of telefax, at the time of transmission, or on the next business day if received after the recipient’s normal business hours. |
24.2 | In proving the giving of a notice or other communication, it shall be sufficient to show: |
(a) | in the case of communication via priority carrier, that the notice or other communication was contained in an envelope which was duly addressed, sufficient carrier fees paid and posted; or |
(b) | in the case of telefax that the telefax transmission was duly transmitted from the dispatching terminal as evidenced by a transmission report generated by the transmitting equipment. |
NUS: | Licensee: | |
[***] | [***] | |
[***] | [***] | |
Fax: [***] | Email: [***] | |
Email:[***] | Fax: [***] |
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St. Jude | ||
[***] | ||
St. Jude Children’s Research Hospital 262 Danny Thomas Place | ||
Memphis, TN 38105 Email: [***] | ||
Fax:[***] |
25. | ENTIRE AGREEMENT |
ThisAgreementcontains the entire agreement between thePartieshereto regarding the subject matter hereof, and supersedes all prior agreements, understandings and negotiations regarding the same. No modification, variation or amendment shall be made to thisAgreementunless made in writing, specifically referring to thisAgreementand signed by the authorized representatives of all of theParties.
26. | SEVERABILITY |
Should any one or more of the provisions of thisAgreementbe held to be invalid or unenforceable by a court of competent jurisdiction, it shall be considered severed from thisAgreementand shall not serve to invalidate the remaining provisions hereof. ThePartiesshall make a good faith effort to replace any invalid or unenforceable provision with a valid and enforceable one such that the objectives contemplated by them when entering into thisAgreementmay be realized.
27. | DISPUTE RESOLUTION |
27.1 | Informal Resolution |
Any dispute, controversy or claim arising out of or in connection with thisAgreementshall be resolved in the following manner:
(a) | the aggrievedParty(“Claimant”) shall notify the respondingParty(“Respondent”) in writing(“Resolution Notice”) (and provide a copy of such notice to the other Party to this Agreement), setting forth in detail the nature of its dispute, controversy or claim(“Claim”) and requesting a meeting(“Resolution Meeting”) of a senior representative from eachParty to be held on a date not less than [***] nor more than [***](“Resolution Period”) for the purpose of resolving suchClaim; |
(b) | theRespondentshall issue and deliver a written response toClaimant(and provide a copy of such response to the other Party to this Agreement) not later than [***],setting forth in detail its response to suchClaim,failing which theResolution Meetingshall not proceed and theClaimantshall be entitled to submit the dispute to arbitration as provided underSection 27.2below; |
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(c) | the senior representative from each Party shall meet to seek to resolve suchClaim amicably between theClaimantand theRespondentin good faith; and |
(d) | if suchClaimis not resolved by the end of [***], then eitherClaimantorRespondentshall be entitled to submit the dispute to arbitration, as provided underSection 27.2below. |
27.2 | Arbitration |
(a) | If, and to the extent that, any dispute has not been settled pursuant toSection 27.1above, then, upon written notice by any Party to the other Party(ies), any dispute with respect to the breach, performance or interpretation of this Agreement shall be referred to and finally resolved by binding arbitration conducted by the Judicial Arbitration and Mediation Services International, Inc. (or any successor entity thereto)(“JAMS”)under the JAMS lnternational Arbitration Rules then in effect, except as modified in this Agreement. The arbitration shall be conducted in the English language, by a panel of three (3) arbitrators, who shall be selected as described in this Section 27.2(a) below and the each of whom meet the qualifications described in this Section 27.2(a). One of the arbitrators shall be selected by Licensee, one of the arbitrators shall be selected by the Licensors jointly, and the third (3rd) arbitrator shall be jointly selected by the two (2) Party-appointed arbitrators. Each of the arbitrators shall be a lawyer admitted to practice in the United Kingdom with at least fifteen (15) years’ experience handling commercial contract disputes with respect to agreements governed by the law of England and Wales. The arbitration panel may also engage an independent expert with experience in the subject matter of the Dispute and at least ten (10) years’ experience at a senior executive level in a pharmaceutical or biotechnology company, or in an academic technology transfer office, to advise the arbitration panel. |
(b) | The Parties and the arbitration panel shall use [***] to complete any such arbitration within [***]. The arbitration panel shall determine what discovery will be permitted, consistent with the goal of limiting the cost and time which the Patties must expend for discovery; provided that the arbitration panel shall permit such discovery as they deem necessary to permit an equitable resolution of the dispute and shall [***] for the completion of discovery, which time period shall be determined by the arbitration panel based on the issues in dispute, the discovery requested by each of the Parities and the overall goal of the Parties to complete any arbitration within [***]. |
(c) | The Parties agree that the decision of the arbitration panel shall be the sole, exclusive and binding remedy between them regarding the dispute presented to the arbitration panel. Any decision of the arbitration panel may be entered in a court of competent jurisdiction for judicial recognition of the decision and an order of enforcement. The arbitration proceedings and the decision of the arbitration panel shall not be made public without the joint consent of the Parties and each Party shall maintain the confidentiality of such proceedings and decision unless each Patty otherwise agrees in writing; provided that either Party may make such disclosures as are permitted for Confidential Information of another Party under Section 14 above. |
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(d) | Unless otherwise mutually agreed upon by the Parties, the arbitration proceedings shall be conducted in San Francisco, CA, U.S.A. The Parties agree that they [***]. |
(e) | Pending the selection of the arbitration panel or pending the arbitration panel’s determination of the merits of any dispute, any Party may seek appropriate interim or provisional relief from any court of competent jurisdiction as necessary to protect the rights or property of that Party. |
28. | GOVERNING LAW |
ThisAgreementshall be governed by, interpreted and construed in accordance with the laws of England and Wales.
29. | GENERAL |
29.1 | Stamp duty or fees, if any, payable in respect of thisAgreement shall be [***]. |
29.2 | EachPartyshall from time to time do all acts and execute all documents as may be reasonable necessary in order to give effect to the provisions of thisAgreement. |
29.3 | Except as otherwise provided in thisAgreement,thePartiesshall [***] of thisAgreement. |
29.4 | ThisAgreementmay be executed in one or more counterparts by thePartiesby signature of a person having authority to bind theParty,each of which when executed and delivered, by facsimile transmission or other electronic modes of delivery, will be an original and all of which will constitute but one and the sameAgreement. |
AS WITNESS the hands of thePartieshereto the day and year first above written.
SIGNED by for and on behalf of | ) | SIGNED by for and on behalf of | ||||
NATIONAL UNIVERSITY OF | ) | NKARTA, INC. | ||||
SINGAPORE | ) | |||||
/s/ Lily CHAN | /s/ Ali Behbahani | |||||
Lily CHAN | ) | Ali Behbahani | ||||
CEO, NUS Enterprise | ) | President, Nkarta | ||||
SIGNED by for and on behalf of | ) | |||||
ST. JUDE CHILDREN’S RESEARCH | ) | |||||
HOSPITAL, INC. | ) | |||||
/s/ J. Scott Elmer | ||||||
J. Scott Elmer | ) | |||||
Director of Technology Licensing | ) |
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SCHEDULE 1
TheInventioncovers:
[***]
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SCHEDULE 3
FORMAL LICENSE
PATENT LICENSE FOR REGISTRATION
[***]
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Exhibit A
Form of Common Stock Issuance Agreement
(See attached.)
[***]
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