Exhibit 10.21
LICENSE AGREEMENT
THIS LICENSE AGREEMENT is made as of this 21st day of
November, 2000("Effective Date")by and between the University of Delaware, a
nonprofit educational institution organized and existing under the laws of the
State of Delaware ("Delaware"), Thomas Jefferson University ("TJU"), a nonprofit
educational institution organized and existing under the laws of the State of
Pennsylvania, (collectively "Institutions") and NAPRO BIOTHERAPEUTICS, INC., a
corporation organized and existing under the laws of the State of Delaware
("Licensee, or NaPro").
R E C I T A L S
A. WHEREAS, the Institutions are the owners of certain patent
applications and other technology relating to gene repair that has heretofore
resulted from research performed by Dr. Eric Kmiec and others; and
B. WHEREAS, Licensee wishes to acquire certain rights and licenses with
respect to such patent applications and technology from said Institutions in
accordance with the terms and conditions hereinafter set forth,
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, and intending to be legally bound hereby, the parties hereto
agree as follows:
ARTICLE 1
DEFINITIONS
1.1 Unless otherwise provided in this Agreement, the following terms
when used with initial capital letters shall have the meanings set forth below:
"Affiliate" means, when used with reference to Licensee, any
Person directly or indirectly controlling, controlled by or under common control
with Licensee. For purposes of this definition, "control" means the ownership of
at least 50% of the equity of a Person, or the right to control the management
decisions of such Person.
"Bankruptcy Event" means the person in question becomes
insolvent, or voluntary or involuntary proceedings by or against such person are
instituted in bankruptcy or under any insolvency law, or a receiver or custodian
is appointed for such person, or proceedings are instituted by or against such
person for corporate reorganization or the dissolution of such person, which
proceedings, if involuntary, shall not have been dismissed within sixty (60)
days after the date of filing, or such person makes an assignment for the
benefit of creditors, or substantially all of the assets of such person are
seized or attached and not released within sixty (60) days thereafter.
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"Calendar Quarter" means each three-month period, or any
portion thereof, beginning on January 1, April 1, July 1 and October 1.
"Confidential Information" means (i) the Technical
Information, (ii) any other information or material in tangible form that is
marked as confidential or proprietary by the furnishing party at the time it is
delivered to the receiving party, and (iii) information that is furnished orally
if the furnishing party identifies such information as confidential or
proprietary when it is disclosed and promptly confirms such designation in
writing after such disclosure.
"Effective Date" shall have the meaning set forth on page 1 of
this Agreement.
"Federal Government Interest" means the rights of the United
States Government and agencies thereof under Public Laws 96-517, 97-256 and
98-620, codified at 35 U.S.C. "" 200-212, and any regulations issued thereunder,
as such statute or regulations may be amended from time to time hereafter.
"Field" means all uses, including human, plant, animal, and
any other uses.
"Licensed Technology" [THIS PORTION HAS BEEN REDACTED]
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"Net Sales Price" [THIS PORTION HAS BEEN REDACTED]
"Patents" [THIS PORTION HAS BEEN REDACTED]
"Person" means an individual, partnership, corporation, joint
venture, unincorporated association, or other entity, or a government or
department of agency thereof.
"Products" means any article, the making, use, or sale of
which is covered by a Valid Claim of a Patent.
"Project, or Research Project" [THIS PORTION HAS BEEN
REDACTED]
"Technical Information" means and includes all technical
information, trade secrets, developments, discoveries, know-how, methods,
techniques, formulae, processes and other information relating to the Licensed
Technology that the Institutions own or control on the date hereof or owns or
controls in the future, including by way of illustration and not limitation,
designs, data, drawings, documents, models, and other similar information.
"Valid Claim" means a claim of an unexpired issued Patent that
has not been withdrawn, canceled or disclaimed or held invalid by a court or
governmental authority of competent jurisdiction in an unappealed or
unappealable decision.
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ARTICLE 2
GRANT OF LICENSE
2.1 Grant of License.
(a) Subject to the terms and conditions contained in this
Agreement, the Institutions hereby grant to Licensee an exclusive, worldwide,
royalty-bearing right and license to use and practice the Licensed Technology in
the Field. Such license shall include the exclusive right to make, have made,
use, and sell Products.
2.2 Right to Sublicense. Licensee shall have the right to
sublicense to any third party, in whole or in part, its rights under this
Agreement.
2.3 Federal Government Interest. Licensee acknowledges that in
accordance with the Federal Government Interest, the United States Government
and certain agencies thereof retain certain rights in inventions funded in whole
or in part under any contract, grant or similar agreement with a Federal agency.
The license granted to Licensee under this Article 2 is expressly subject to all
of such rights.
2.4 Retained right for research use. The Institutions retain the
non-assignable, non-transferrable right for employees of the Institutions to
practice the Licensed Technology for academic, non-commercial research purposes,
and to publish thereon if the publication is outside the scope of this
agreement.
ARTICLE 3
RESEARCH PROJECT
3.1 Research Work Licensee has agreed to fund a certain research
project (the "Project") relating to the Licensed Technology. Delaware shall use
reasonable efforts to perform the research plan substantially in accordance with
the Project Description set forth in Exhibit B hereof. Licensee and Delaware may
at any time amend the Project by mutual written agreement. Delaware shall not
permit any person to work on the Project unless such person has agreed to assign
all intellectual property rights arising out of his/her work on such Project to
the University of Delaware.
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3.2 Costs and Payments Funding for the Project shall be made [THIS
PORTION HAS BEEN REDACTED]and made a part hereof. Licensee shall be obligated to
fund such project for a minimum of three years, at a level of [THIS PORTION HAS
BEEN REDACTED], provided that [THIS PORTION HAS BEEN REDACTED].
3.3 Reports and Conferences Delaware, through Dr. Kmiec, shall make
available to Licensee a final report including research findings according to
Exhibit B within sixty (60) days of the conclusion of the Project period. Dr.
Kmiec will also provide interim reports once every three (3) months from the
Effective Date for the duration of the Project period. Research deliverables
including the final report, interim reports, and all other data including raw
data and notes shall be made available to the Licensee as requested.
3. 4 Intellectual Property "Project Intellectual Property" shall mean
individually and collectively all products and processes of inventions,
improvements and discoveries, whether patentable or unpatentable, which are
related to new or improved compositions, products, articles of manufacture
(including kits), methods, processes, and uses pertaining to [THIS PORTION HAS
BEEN REDACTED]for all uses and which are conceived or reduced to practice by
persons who are involved in the Project during the Project period. All such
Project Intellectual Property shall be subject to, and made part of, the rights
granted to Licensee in this Agreement between the parties and shall be
considered Licensed Technology. Delaware will promptly furnish Licensee a
disclosure of any Project Intellectual Property conceived and/or reduced to
practice during the course of the Project.
3.5 Other Research Licensee and University acknowledge that Dr. Eric
Kmiec is conducting research at the University of Delaware independent of the
Project. Dr. Kmiec shall have the right to conduct such independent research,
and enter into other funding arrangements with third parties relating to such
other research. If Dr. Kmiec or those working under his direction or with his
assistance conceive or reduce to practice any discoveries, inventions, or other
intellectual property which relate to Licensed Technology (including any
improvements to the Licensed Technology) during the term of the Project, then
such intellectual property shall be assigned to the University of Delaware and
shall be subject to, and made a part of, the rights granted to Licensee in this
Agreement.
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ARTICLE 4
ROYALTIES AND OTHER PAYMENTS
4.1 Restricted Stock. In consideration of the license granted
hereunder, Licensee shall issue to the Institutions a total of [THIS PORTION HAS
BEEN REDACTED]. Such stock issuance shall be subject to vesting pursuant to the
vesting schedule set forth below. At NaPro"s option, such vesting may be
accelerated so as to allow early vesting of any or all of the unvested stock.
Stock certificates shall be issued to the persons [THIS PORTION HAS BEEN
REDACTED] and shall be delivered to Delaware promptly following vesting. Such
certificates shall contain a restrictive legend as set forth on [THIS PORTION
HAS BEEN REDACTED].
Vesting Schedule:
Stock at execution of Agreement: 100,000 shares
[THIS PORTION HAS BEEN REDACTED]
4.2 Royalties. In further consideration of the rights and licenses
granted hereunder, Licensee shall pay royalties as follows: [THIS PORTION HAS
BEEN REDACTED].
For the purposes of this paragraph 4.2, the term "sublicensing fees" shall mean
[THIS PORTION HAS BEEN REDACTED]. Sublicensing fees shall not include [THIS
PORTION HAS BEEN REDACTED].
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4.3 Single Royalty Obligation. No Multiple Royalties on Same Product.
For any Product sold, only one royalty payment shall be due pursuant to Article
4.2, regardless of how many times such Product is re sold. If NaPro sells a
Product to a third party who is not a sublicensee, then the Net Sales Price
shall be calculated on NaPro's sale price of such Product, and additional
royalty payments shall not be due on further sales of such Product, regardless
of changes or enhancements to such Product (including formulation, packaging,
etc.) following such sale by NaPro. If NaPro sells a Product to a sublicensee,
or if NaPro does not itself sell a Product, but such Product is sold by a
sublicensee, then the Net Sales Price shall be calculated on the sublicensee's
sale price on the first sale of such Product by such sublicensee, and multiple
royalty payments shall not be due on further sales of such Product, regardless
of changes or enhancements to such Product (including formulation, packaging,
etc.) following such sale by such sublicensee. For purposes of this paragraph
4.3, the definition of "NaPro" shall include any Affiliates of NaPro.
4.4 Payments. Royalties, milestone payments and other amounts payable
under this Agreement shall be paid within thirty (30) days following the last
day of the Calendar Quarter in which the royalties and other amounts accrue
except that royalties and other amounts payable hereof shall be paid within
sixty (60) days following the last day of the Calendar Quarter in which the
royalties and other amounts accrue. NaPro shall make all such payments to the
University of Delaware, who shall be responsible for distributing such payments
to the other Institutions. Payments shall be deemed paid as of the day on which
they are received by the University of Delaware.
4.5 Reports. Licensee shall deliver to the University of Delaware
within thirty (30) days after the end of each Calendar Quarter following
commercial sale of a Product a report setting forth in reasonable detail the
calculation of the royalties and other amounts payable to the Institutions for
such Calendar Quarter pursuant to this Article 4, including, without limitation,
the Products sold in each country during such Calendar Quarter, the gross sales
price and Net Sales Price thereof, and, within sixty (60) days after the end of
each Calendar Quarter, similar reports containing corresponding information
relating to royalties payable due to sales by permitted sublicensees.
4.6 Currency, Place of Payment, Interest.
(a) All dollar amounts referred to in this Agreement are
expressed in United States dollars. All payments to the University under this
Agreement shall be made in United States dollars (or other legal currency of the
United States), as directed by the University of Delaware, by check payable to
The University of Delaware at the address set forth in section 11.5, or by wire
transfer to such account as the University of Delaware may designate from time
to time.
(b) If Licensee receives revenues from sales of Products in a
currency other than United States dollars, royalties shall be converted into
United States dollars at the applicable conversion rate for the foreign currency
as published in the "Exchange Rates" table in the eastern edition of The Wall
Street Journal as of the last date of the Calendar Quarter.
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(c) Amounts that are not paid when due shall accrue
interest-from the due date until paid, at a rate equal to the "Prime Rate" as
published in the "Money Rates" table in the eastern edition of The Wall Street
Journal as of the due date.
4.7 Records. Licensee will maintain complete and accurate books and
records which enable the royalties payable hereunder to be verified. The records
for each Calendar Quarter shall be maintained for one year after the submission
of each report under Article 4.7 hereof. Upon reasonable prior notice to
Licensee, the Institutions" accountants shall have access to the books and
records of Licensee to conduct a review or audit thereof. Such access shall be
available not more than once each calendar year, during normal business hours.
Such audit shall be at the Institution"s expense, except if such audit uncovers
an underpayment of 5% or more of amounts owed to Institutions, in which case
Licensee shall bear the costs of such audit.
4.8 Third Party Technology. If Licensee or any sublicensee is required
to obtain a license to third party technology in order to sell any Product,
[THIS PORTION HAS BEEN REDACTED].
4.9 Milestone Payments. [THIS PORTION HAS BEEN REDACTED].
4.10 Reimbursement of past patent expenses. Within 30 days of delivery
to NaPro of documentation setting forth the Institution's legal fees paid in
connection with preparation and prosecution of the patent applications set forth
on Exhibit A, NaPro shall pay to the University of Delaware an amount equal to
the legal fees paid, provided, however that NaPro shall not be required to pay
in excess of $25,000 in connection with the paragraph 4.10.
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4.11 Piggyback Registration Rights. In connection with the one hundred
thousand (100,000) shares of NaPro Common Stock which are granted pursuant to
paragraph 4.1 and which are vested immediately upon execution of this Agreement,
NaPro shall use its reasonable best efforts to include such shares in any
registration of NaPro Common Stock which NaPro may undertake, and thereby to
cause those 100,000 shares to be registered under the Securities Act and
registered or qualified under any state securities law provided, however, that
this obligation shall not apply to any registration (a) on: Form S-8 (or any
successor form); (b) in connection with dividend reinvestment plans or rights
offering, or (c) for the purpose of offering registered securities to another
business entity or the shareholders of such entity in connection with the
acquisition of assets or capital stock of such entity or in connection with a
merger, consolidation, combination or similar transaction with such entity.
ARTICLE 5
CERTAIN OBLIGATIONS OF LICENSEE
5.1 Licensee Efforts; Reporting, Milestone payments.
(1) Licensee shall use its diligent, commercially reasonable
efforts to develop for commercial use and to market Products as soon as
practicable, and to continue to market Products as long as commercially viable,
all as is consistent with sound and reasonable business practice.
(2) Licensee shall provide the University of Delaware once per
Calendar year on December 1 with written reports, setting forth the progress of
the development, evaluation, testing and commercialization of Products. Licensee
also shall notify the University of Delaware within thirty (30) days of the end
of the first quarter in which the first commercial sale of a Product occurs.
(3) Should NaPro fail to commercialize the Licensed Technology
such that royalties [THIS PORTION HAS BEEN REDACTED] of execution of this
Agreement, or if NaPro fails to commercialize the Licensed Technology such that
royalties for the field of human pharmaceutical use are not earned and paid to
the Institutions pursuant to paragraph 4.2 within [THIS PORTION HAS BEEN
REDACTED] of execution of this Agreement, then a rebuttable presumption shall be
established that NaPro has failed to perform under its obligation of diligence
set forth in subparagraph 5.1(1) above. In such event, the University of
Delaware may terminate the licenses granted herein for the fields in question,
provided that the issue of NaPro"s diligence shall be subject to arbitration as
set forth in paragraph 11.1, and termination shall not be effective unless and
until NaPro has been found in such arbitration proceedings to have failed to
perform under its obligation of diligence set forth in subparagraph 5.1(1)
above.
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5.2 Compliance With Laws. Licensee shall use its best efforts to comply
with all prevailing laws, rules and regulations pertaining to the development,
testing, manufacture, marketing and import or export of Products. Without
limiting the foregoing, Licensee acknowledges that the transfer of certain
commodities and technical data is subject to United States laws and regulations
controlling the export of such commodities and technical data, including all
Export Administration Regulations of the United States Department of Commerce.
These laws and regulations, among other things, prohibit or require a license
for the export of certain types of technical data to specified countries.
Licensee will comply with all United States laws and regulations controlling the
export of commodities and technical data.
5.3 Government Approvals. Licensee will be responsible for obtaining,
at its cost and expense, all governmental approvals required to commercially
market Products.
ARTICLE VI
WARRANTIES AND REPRESENTATIONS
6.1 Representations and Warranties of the Institutions. The
Institutions represent and warrant to Licensee that: (a) this Agreement, when
executed and delivered by them, will be the legal, valid and binding obligation
of the Institutions, enforceable against them in accordance with its terms; (b)
to the best of their knowledge, the Institutions are the sole owner of all
right, title and interest in and to the Licensed Technology, and no other person
has any right or interest in any of the Licensed Technology; (c) no Institution
has any notice or knowledge that the Licensed Technology infringes the
proprietary rights of any third party; (d) to the best of their knowledge, the
research which led to the conception and/or reduction to practice of any of the
inventions comprising the Licensed Technology was conducted solely by employees
of the Institutions acting within the scope of their employment, and such
employees have assigned all rights and interests to such inventions to the
Institutions; (e) to the best of their knowledge, none of the funding for the
research which led to the conception and/or reduction to practice of any of the
inventions comprising the Licensed Technology was provided by Kimeragen; and (f)
to the best of their knowledge, the inventions disclosed in patent applications
included in the Licensed Technology have not been publicly used, offered for
sale, or disclosed in a printed publication by employees of the Institutions
prior to the filing of the relevant applications for the Patents.
6.2 Representations and Warranties of Licensee. Licensee represents
and warrants to the Institutions as follows:
(a) Licensee is a corporation duly organized, validly existing
and in good standing under the laws of the State of Delaware, and has all
requisite corporate power and authority to execute, deliver and perform this
Agreement;
(b) this Agreement, when executed and delivered by Licensee,
will be the legal, valid and binding obligation of Licensee, enforceable against
Licensee in accordance with its terms; and
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(c) the execution, delivery and performance of this Agreement
by Licensee does not conflict with, or constitute a breach or default under, (i)
the charter documents of Licensee, (ii) any law, order, judgment or governmental
rule or regulation applicable to Licensee, or (iii) any provision of any
agreement, contract, commitment or instrument to which Licensee is a party; and
the execution, delivery and performance of this Agreement by Licensee does not
require the consent, approval or authorization of, or notice, declaration,
filing or registration with, any governmental or regulatory authority.
ARTICLE 7
INDEMNIFICATION
7.1 Licensee Indemnification. Licensee will indemnify and hold harmless
the Institutions, their trustees, officers, agents and employees (collectively,
the "Indemnified Parties"), from and against any and all liability, loss,
damage, action, claim or expense suffered or incurred by the Indemnified Parties
which results from or arises out of (individually, a "Liability" and
collectively, the "Liabilities"):
(a) breach by Licensee of any representation, warranty,
covenant, or agreement contained in this Agreement;
(b) the development, use, manufacture, promotion, sale,
distribution or other disposition of any Products by Licensee, its Affiliates,
assignees, vendors or other third parties, for personal injury, including death,
arising from any of the foregoing. Licensee will indemnify and hold harmless the
Indemnified Parties from and against any Liabilities resulting from:
(i) any product liability or other claim of any kind related
to the use by a third party of a Product that was manufactured, sold,
distributed or otherwise disposed by Licensee, its Affiliates, assignees,
vendors or other third parties;
(ii) clinical trials or studies conducted by or on behalf of
Licensee relating to any Products, including, without limitation, any claim by
or on behalf of a human subject of any such clinical trial or study, any claim
arising from the procedures specified in any protocol used in any such clinical
trial or study, any claim of deviation, authorized or unauthorized, from the
protocols of any such clinical trial or study, any claim resulting from or
arising out of the manufacture or quality control by a third party of any
substance administered in any clinical trial or study; and
(iii) Licensee's failure to comply with all prevailing laws,
rules and regulations pertaining to the development, testing, manufacture,
marketing and import or export of Products.
7.2 Institutional Indemnification. The Institutions indemnify and hold
harmless the Licensee, their trustees, officers, agents and employees
(collectively, the "Indemnified Parties"), from and against any and all
liability, loss, damage, action, claim or expense suffered or incurred by the
Indemnified Parties which results from or arises out of (individually, a
"Liability" and collectively, the "Liabilities") breach by any of the
Institutions of any covenant, representation, warranty, or agreement contained
in this Agreement.
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7.3 Procedures. The Indemnified Party shall promptly notify Licensee of
any claim or action giving rise to a Liability subject to the provisions of
Article 7. Licensee shall have the right to defend any such claim or action
brought by a third party set forth in 7.1, at its cost and expense. The
indemnification rights of the University or other Indemnified Party contained
herein are in addition to all other rights which such Indemnified Party may have
at law or in equity or otherwise.
7.4 Product Liability Insurance. Beginning with the commencement of
human clinical trials or agricultural field testing of any Product and
continuing for a period of time after Licensee ceases manufacturing and
marketing Products that is reasonable based upon industry standards, Licensee
shall maintain general liability and product liability insurance that is
reasonable based upon industry standards, but not less than [THIS PORTION HAS
BEEN REDACTED] The insurance amounts specified herein shall not be deemed a
limitation on Licensee's indemnification liability under this Agreement.
Licensee shall provide the Institutions with copies of such policies, upon
request of the Institutions. Licensee shall notify the Institutions at least ten
(10)days prior to cancellation of any such coverage.
ARTICLE 8
PATENTS AND INFRINGEMENT
8.1 Prosecution of Patents.
(a) The Licensee shall be responsible for and shall control
the preparation, prosecution and maintenance of the Patents and any other rights
included in the Licensed Technology and shall diligently prosecute and maintain
such Patents and rights. The Licensee shall keep the University of Delaware
reasonably informed of all such activity and shall make all documents relating
to the Patents available for the University of Delaware"s inspection. Licensee
shall pay all costs associated with patent prosecution.
(b) Licensee shall determine the countries where the Patents
will be prosecuted and maintained. If Licensee elects not to prosecute (and pay
for) any patent application in any jurisdiction, the University of Delaware may
do so at its cost and expense and any patent resulting from such application
shall be excluded from the rights granted to Licensee by this Agreement, unless
Licensee elects, within thirty days of notice from University of the issuance of
such patent, to pay five times University of Delaware"s expenses incurred in the
prosecution of such patent.
(c) If the Licensee elects not to maintain any issued Patent
it shall notify the University of Delaware at least 30 days prior to the taking,
or not taking, of any action which would result in abandonment, withdrawal or
lapse of such patent. The respective Institution that owns such patent shall
then have the right to maintain the patent at its own expense, and such patent
shall be excluded from the rights granted to Licensee by this Agreement.
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(d) Each party shall cooperate with the other party to execute
all lawful papers and instruments and to make all rightful oaths and
declarations as may be necessary in the preparation and prosecution of all such
patents and other applications and protections referred to in this Article 8.1.
8.2 Infringement by Third Party.
(a) Each party will promptly notify the other party of any
infringement or possible infringement of any of the Patents or other Licensed
Technology. Licensee shall have the right, but not the obligation, to prosecute
such infringement at its own expense. In such event, the Institutions shall
cooperate with Licensee, at Institutions" expense. Licensee shall not settle or
compromise any such suit in a manner that imposes any obligations or
restrictions on the Institutions or grants any rights to the Licensed Technology
which are inconsistent with the obligations of Licensee pursuant to this
Agreement, without the University of Delaware's written consent.
(b) If Licensee fails to prosecute or chooses not to prosecute
such infringement within one hundred and twenty (120) days after receiving
notice thereof, the University of Delaware shall have the right, but not the
obligation, to prosecute such infringement at its own expense. In such event,
Licensee shall cooperate with the University of Delaware, at the Licensee"s
expense.
(c) Any recovery obtained by the prosecuting party as a result
of such proceeding, by settlement or otherwise, shall be applied [THIS PORTION
HAS BEEN REDACTED].
ARTICLE 9
CONFIDENTIALITY
9.1 Confidentiality.
(a) Both parties shall maintain in confidence and shall not
disclose to any third party the Confidential Information received pursuant to
this Agreement, without the prior written consent of the disclosing party except
that the Confidential Information may be disclosed by either party only to those
third parties (x) who have a need to know the information in connection with the
exercise by either party of its rights under this Agreement and who agreed in
writing to keep the information confidential to the same extent as is required
of the parties under this Article 9.1, or (y) to whom either party is legally
obligated to disclose the information. The foregoing obligation shall not apply
to information which:
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(i) is, at the time of disclosure, publicly known or available
to the public, provided that Information will not be deemed to be within the
public domain merely because individual parts of such Information are found
separately within the public domain, but only if all the material features
comprising such Information are found in combination in the public domain;
(ii) is known to recipient at the time of disclosure of such
Confidential Information provided that recipient promptly notifies disclosing
party in writing of this prior knowledge within thirty (30) days of receipt;
(iii) is hereafter furnished to recipient by a third party, as
a matter of right and without restriction on disclosure, provided that recipient
promptly notifies disclosing party in writing of this third party disclosure
after receipt thereof;
(iv) is made public by disclosing party;
(v) is disclosed with the written approval of either party;
(vi) is the subject of a legally binding court order
compelling disclosure, provided that recipient must give disclosing party notice
of any request for disclosure pursuant to any legal proceeding, within two (2)
days of receipt of such request by recipient, and recipient must cooperate with
disclosing party in obtaining appropriate protective orders to preserve the
confidentiality of the Confidential Information.
(b) The receiving party will take all reasonable steps to
protect the Confidential Information of the disclosing party with the same
degree of care the respective parties use to protect their own confidential or
proprietary information. Without limiting the foregoing, both parties shall
ensure that all of its employees or appropriate third parties having access to
the Confidential Information of the disclosing party are obligated in writing to
keep such information confidential to the same extent as is required of the
respective parties under this Article 9.1.
(c) The receiving party shall not disclose the information
provided by the disclosing party to anyone other than those employees of the
receiving party or appropriate third parties who have a need to know the
information in connection with the exercise of the rights or performance of
obligations of the receiving party pursuant to this Agreement, or as otherwise
required by law, provided that the receiving party shall take steps to preserve
the confidentiality of such information to the extent allowed by law.
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9.2 Publication
(a) Except as permitted in paragraph 2.4, should any of the
Institutions desire to disclose publicly, in writing or by oral presentation,
Confidential Information related to the Licensed Technology, the appropriate
Institution shall notify Licensee in writing of its intention at least ninety
(90) days before such disclosure. The notice shall include a description of the
oral presentation or, in the case of a manuscript or other proposed written
disclosure, a current draft of such written disclosure. Licensee may request the
Institution, no later than ninety(90)days following the receipt of the
Institution's notice, to file a patent application, copyright or other filing
related to such Invention. All such filings shall be subject to the provisions
of Article 8.1 of this Agreement. Upon receipt of such request, the Institution
shall arrange for a delay in publication, to permit filing of a patent or other
application by the Licensee. Should Licensee reasonably determine that more than
ninety (90) days is required in order to file any such patent information
(including additional time required to perform additional research required for
adequate patent disclosure), or, if Licensee reasonably determines that such
Confidential Information cannot be adequately protected through patenting and
such Confidential Information has commercial value as a trade secret, then
publication or disclosure shall be postponed until such time such Confidential
Information can be adequately protected.
9.3 Use of Name. Neither Licensee nor any Institution shall directly or
indirectly use the other party's name, or the name of any trustee, officer or
employee thereof, without that party's prior written consent, or disclose the
terms of this Agreement to third parties except that the Licensee may disclose
this Agreement to potential sublicensees or other appropriate third parties
under obligations of confidentiality, and may disclose an accurate description
of the terms of this Agreement to the extent required under federal or state
securities laws. The Institutions may make such disclosures as are required by
tax, grant administration, or other disclosure laws, provided that they shall
take steps to preserve the confidentiality of such information to the extent
allowed by law. Upon execution of this Agreement, and from time to time
thereafter, NaPro may issue press releases or other disclosure which identify
the Institutions as the licensors of the Licensed technology.
ARTICLE 10
TERM AND TERMINATION
10.1 Term. This Agreement and the licenses granted herein shall
commence on the Effective Date and shall continue, subject to earlier
termination under Articles 10.2 or 10.3 hereof, until the later of twenty years
or the expiration of the last to expire of the Patents, whichever is later.
10.2 Termination by the University.
(a) Upon the occurrence of any of the events set forth below
("Events of Default"), the University of Delaware shall have the right to
terminate this Agreement in the following instances:
(i) nonpayment of any amount payable that is continuing sixty
(60) calendar days after the University of Delaware gives Licensee written
notice of such nonpayment;
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(ii) material breach by Licensee of any material obligation,
covenant, representation, or warranty contained in this Agreement that is
continuing sixty(60) calendar days after the University of Delaware gives
Licensee written notice of such breach;
(iii) Licensee becomes subject to a Bankruptcy Event;
(iv) the dissolution or cessation of operations by Licensee;
10.3 Termination by Licensee.
(a) Licensee shall have the right to terminate this Agreement,
at any time and with or without cause, upon ninety (90) days' written notice to
the University.
10.4 Rights and Duties Upon Termination. Within thirty (30) days after
termination of this Agreement, each party shall return to the other party any
Confidential Information of the other party. Licensee also shall return all
Licensed Technology which is embodied in physical form to the University
promptly upon the termination of this Agreement. In the case of expiration of
this Agreement pursuant to Article 10.1, or termination of the royalty
obligation pursuant to Article 10.3(b), Licensee shall not be required to return
Confidential Information or Licensed Technology (whether or not embodied in
physical form) to the University.
10.5 Provisions Surviving Termination. Licensee's obligation to pay any
royalties accrued but unpaid prior to termination of this Agreement shall
survive such termination. In addition, Articles 2.3, 9.1, 9.3, 9.4, 10.1, 10.4
and Articles 6 and 7 and any other provisions required to interpret the rights
and obligations of the parties arising prior to the termination date shall
survive expiration or termination of this Agreement.
10.6 Research Funding. If Licensee terminates this Agreement pursuant
to paragraph 10.3(a), Licensee"s obligations (if any) to fund the Research
Project shall continue according to the terms set forth in Exhibit B for the
remainder of the calendar year in which the termination is effective.
ARTICLE 11
ADDITIONAL PROVISIONS
11.1 Arbitration.
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(a) All disputes arising between the Institutions and Licensee
(including, without limitation, the ability to terminate this Agreement pursuant
to paragraph 10.2 or terminate the payment obligations pursuant to paragraph
10.3(b)) shall be settled by arbitration conducted in the English language by
three arbitrators in accordance with the Commercial Arbitration Rules of the
American Arbitration Association. The parties will cooperate with each other in
causing the arbitration to be held in as efficient and expeditious a manner as
practicable. Any arbitration proceeding instituted by either party under this
Agreement shall be brought in New York City.
(b) Any award rendered by the arbitrators shall be final and
binding upon the parties hereto. Judgment upon the award may be entered in any
court of record of competent jurisdiction. Each party shall pay its own expenses
of arbitration and the expenses of the arbitrators shall be equally shared
unless the arbitrators assess as part of their award all or any part of the
arbitration expenses of one party (including reasonable attorneys, fees) against
the other party.
(c) The parties irrevocably and unconditionally consent to the
jurisdiction of any such proceeding and waive any objection that they may have
to personal jurisdiction or the laying of venue in any such proceeding.
(d) In the event of breach or imminent breach of this
Agreement by any party which may lead to irreparable harm if not immediately
rectified, the party which may be harmed may apply for preliminary injunctive
relief of any court of competent jurisdiction, provided that any such
preliminary relief so granted shall be subject to final review and modification
in the arbitration proceeding as set forth above.
11.2 Assignment. No rights hereunder may be assigned by the Licensee,
directly or by merger, or other operation of law, without the express written
consent of the University of Delaware except for: (i) an assignment in
connection with the sale or transfer of all or substantially all of the
Licensee's assets which relate to the Licensed Technology provided that the
buyer or transferee is at least as financially stable as Licensee and following
the sale or transfer would be as capable of performing its obligations under
this Agreement as Licensee would be; or (ii) an assignment of a security
interest in this Agreement as a part of a security interest in all or
substantially all of the Licensee's assets which relate to the Licensed
Technology. Any prohibited assignment of this Agreement on the rights hereunder
shall be null and void. No assignment shall relieve Licensee of responsibility
for the performance of any accrued obligations which it has prior to such
assignment. This Agreement shall inure to the benefit of permitted assigns of
Licensee.
11.3 No Waiver. A waiver by either party of a breach or violation of
any provision of this Agreement will not constitute or be construed as a waiver
of any subsequent breach or violation of that provision or as a waiver of any
breach or violation of any other provision of this Agreement.
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11.4 Independent Contractor. Nothing herein shall be deemed to
establish a relationship of principal and agent between the University and
Licensee, nor any of their agents or employees for any purpose whatsoever. This
Agreement shall not be construed as constituting the University and Licensee as
partners, or as creating any other form of legal association or arrangement
which could impose liability upon one party for the act or failure to act of the
other party. No employees or staff of University shall be entitled to any
benefits applicable to employees of Licensee. Neither party shall be bound by
the acts or conduct of the other party.
11.5 Notices. Any notice under this Agreement shall be sufficiently
given if sent in writing by prepaid, first class, certified or registered mail,
return receipt requested, addressed as follows:
If to Delaware, to:
Vice Provost for Research
University of Delaware
210 Hullihen Hall
Newark, DE 19716
if to Licensee, to:
NaPro BioTherapeutics Inc.
6304 Spine Road
Unit A
Boulder, CO 80301
Attention: Kai Larson
Vice President, General Counsel
or to such other addresses as may be designated from time to time by notice
given in accordance with the terms of this Article.
11.6 Entire Agreement. This Agreement embodies the entire understanding
between the parties relating to the subject matter hereof and supersedes all
prior understandings and agreements, whether written or oral. This Agreement may
not be modified or varied except by a written document signed by duly authorized
representatives of both parties.
11.7 Separability. In the event that any provision of this Agreement
shall be held to be unenforceable, invalid or in contravention of applicable
law, such provision shall be of no effect, the remaining portions of this
Agreement shall continue in full force and effect, and the parties shall
negotiate in good faith to replace such provision with a provision which effects
to the extent possible the original intent of such provision.
11.8 Force Majure In the event that either Party"s performance of its
obligations under this Agreement shall be prevented by any cause beyond its
reasonable control, including without limitation acts of God, acts of
government, shortage of material, accident, fire, delay or other disaster,
provided that the effected Party shall have used its reasonable best efforts to
avoid or remove the cause of such nonperformance and to minimize the duration
and negative affect of such nonperformance, then such effected Party"s
performance shall be excused and the time for performance shall be extended for
the period of delay or inability to perform due to such occurrence. The affected
Party shall continue performance under this Agreement using its best efforts as
soon as such cause is removed.
11.9 Headings. Any headings and captions used in this Agreement are for
convenience of reference only and shall not affect its construction or
interpretation.
11.10 No Third Party Benefits. Nothing in this Agreement, express or
implied, is intended to confer on any person other than the parties hereto or
their permitted assigns, any benefits, rights or remedies.
11.11 Governing Law. This Agreement shall be construed in accordance
with and governed by the internal laws of the State of Delaware, excluding such
state"s rules relating to conflicts of laws, and its form, execution, validity,
construction and effect shall be determined in accordance with such internal
laws.
11.12 Counterparts. This Agreement shall become binding when any one or
more counterparts hereof, individually or taken together, shall bear the
signatures of each of the parties hereto. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original as against the
party whose signature appears thereon, but all of which taken together shall
constitute but one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have duly executed this License Agreement
as of the date first above written.
University of Delaware
By:
/s/ T.W. Fraser Russell
Thomas Jefferson University
By:
/s/ Jussi J. Saukkonen
NAPRO BIOTHERAPEUTICS INC.
By: /s/ Kai P. Larson
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Kai P. Larson
Vice President, General Counsel