EXHIBIT 10.8
DAD17-96-0072
LICENSE AGREEMENT
Effective upon execution of this agreement, as evidenced by the
signature of both parties, the WALTER REED ARMY INSTITUTE OF RESEARCH (hereafter
LICENSOR), as the representative of the United States of America, and JENNER
TECHNOLOGIES, (hereinafter LICENSEE), a corporation of the State of California,
having a principal place of business at 828 Eastbrook Court, Danville,
California 94506, agree as follows:
ARTICLE I
BACKGROUND
1.01 The United States of America is the owner by assignment of the
entire right, title and interest to inventions described and claimed in [*].
1.02 Under the authority of 15 United States Code 3710a and 35 United
States Code section 207, LICENSOR has custody of inventions described and
claimed in, and the right to issue licenses under the LICENSED PATENT
APPLICATION.
1.03 LICENSOR desires that the inventions described and claimed in the
LICENSED PATENT APPLICATION be brought to the POINT OF PRACTICAL APPLICATION in
the shortest possible time and made available to the public, thereby serving the
public interest and broadening the potential supply bass for LICENSOR and other
Government agencies.
1.04 LICENSEE desires to obtain a non-exclusive license under the
LICENSED PATENT APPLICATION for the purpose of developing and commercializing
products to be used in vaccine therapy of persons with cancer.
NOW THEREFORE, in consideration of the foregoing, including the
above-cited patent licensing statutes and the mutual promises and obligations
hereinafter set forth, LICENSOR and LICENSEE, intending to be lawfully bound, do
hereby agree as set forth below.
ARTICLE II
DEFINITIONS
2.01 Terms in this Agreement (other than names of parties and Article
headings) which are set forth in upper case letters have the meanings
established for such terms in the succeeding paragraphs of this ARTICLE II.
2.02 LICENSED PATENT APPLICATION means the [*] and all divisions,
continuations, continuations-in-part, and substitutions thereof; all foreign
patent applications corresponding to the preceding applications; and all U.S.
and foreign patents issuing on any of the preceding applications, including
extensions, reissues, and reexaminations.
2.03 LICENSED PRODUCTS AND METHODS means any and all products and
methods which employ or are produced by inventions described and claimed in the
LICENSED PATENT APPLICATION.
2.04 ROYALTY-BASE PRODUCTS means any and all products which either fall
within the scope of one or more VALID CLAIM of the LICENSED PATENT APPLICATION,
or are produced by the practice of a method claimed in the LICENSED PATENT
APPLICATION in the country of manufacture or sale by LICENSOR, its AFFILIATE(S)
or sublicensees.
2.05 LICENSED TERRITORY means the world.
2.06 GOVERNMENT shall mean the Federal Government of the United States
of America.
2.07 LICENSOR's REPRESENTATIVE means the Command Judge Advocate, U.S.
Army Medical Research and Materiel Command, ATTN: MCMR-JA, Fort Detrick,
Frederick, Maryland 21702-5012.
2.08 POINT OF PRACTICAL APPLICATION means [*] described and claimed in
the LICENSED PATENT APPLICATION, under such conditions as to establish that the
inventions [*] this Agreement, and to continue during the term of this Agreement
[*].
2.09 AFFILIATE(S) means any corporation, firm, partnership or other
entity which, whether de jure or de facto, directly or indirectly, owns
LICENSEE, is owned by LICENSEE or is under common ownership with LICENSEE to the
extent of at least fifty percent (50%) of the equity having the power to vote on
or direct the affairs of the entity and any corporation, firm, partnership or
other entity actually controlled by LICENSEE, controlling LICENSEE or under
common control of LICENSEE.
2.10 NET SALES means the amount billed, invoiced, or received on sales
of any ROYALTY-BASE PRODUCTS by LICENSEE, its AFFILIATES, and sublicensees or,
in the event of disposal of any ROYALTY-BASE PRODUCTS other than as scrap prior
to shipment from its place of manufacture or predisposal storage, or other than
by sales, the amount billed, invoiced, or received on sales for a like quantity
and quality of ROYALTY-BASE PRODUCTS to an independent third party on or about
the time of such disposal, less:
a. customary trade, quantity or cash discounts and
nonaffiliated brokers' or agents' commissions actually allowed and taken;
b. amounts repaid or credited by reason of rejections or
returns; and
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c. any freight or other transportation costs; insurance
charges; import, export, sales taxes, duties, tariffs, and all sales and excise
taxes based on sales or turnover or delivery of ROYALTY-BASE PRODUCTS subject to
this Agreement.
Sales between or among LICENSEE and its AFFILIATE(S) or
sublicensees shall be excluded from the computation of NET SALES except where
such AFFILIATE(S) or sublicensees are end users, but NET SALES shall include the
subsequent final sales to third parties by such AFFILIATE(S) and sublicensees.
2.11 IMPROVEMENT means any modification of any invention, described and
claimed in the LICENSED PATENT APPLICATION, provided such modification, if
unlicensed, would infringe one or more claims of the LICENSED PATENT
APPLICATION.
2.12 VALID CLAIM means a claim of an issued and unexpired patent
included within the LICENSED PATENT APPLICATION which has not been held
unenforceable or invalid by a court or other governmental agency of competent
jurisdiction, and which has not been admitted to be invalid or unenforceable
through reissue, disclaimer or otherwise.
2.13 CONFIDENTIAL INFORMATION shall mean (i) any proprietary or,
confidential information or material in tangible form disclosed in accordance
with this Agreement that is marked "confidential" at the time it is delivered to
the receiving party, or (ii) proprietary or confidential information disclosed
orally hereunder which is identified as confidential or proprietary when
disclosed and such disclosure of confidential information is confirmed in
writing within thirty (30) days by the disclosing party.
ARTICLE III
LICENSE GRANT
3.01 The LICENSOR grants to the LICENSEE a non-exclusive license under
the LICENSED PATENT APPLICATION, with the right to grant and authorize
sublicenses, to make, have made, import, use, offer for sale and sell
ROYALTY-BASE PRODUCTS AND METHODS throughout the LICENSED TERRITORY for the term
of this Agreement and for the purpose stated in Paragraph 1.04 of ARTICLE I.
LICENSEE shall have the right to extend this license to any AFFILIATE(S) of its
choice provided that it shall first notify LICENSOR in writing of the identity
and relationship of any AFFILIATE(S) to be included under this Paragraph 3.01.
3.02 No right or license is granted or implied to LICENSEE or any
person claiming through LICENSEE under any patent or patent application other
than that specifically identified herein as the LICENSED PATENT APPLICATION.
3.03 The LICENSEE grants to the LICENSOR a royalty-free, nonexclusive,
worldwide license to practice and have practiced on behalf of the United States,
and on behalf of any foreign
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government or international organization pursuant to any existing or future
treaty or agreement with the United States, any IMPROVEMENT made by LICENSEE for
the term set forth in ARTICLE XI of this Agreement.
ARTICLE IV
ROYALTIES AND PAYMENT
4.01 LICENSEE shall pay LICENSOR a royalty on the NET SALES of all
ROYALTY- BASE PRODUCTS of LICENSEE and its included AFFILIATE(S) and
sublicensees sold to third- parties or otherwise disposed of within the LICENSED
TERRITORY. The royalty rate for all ROYALTY-BASE PRODUCTS shall be [*].
4.02 No royalty shall be payable under paragraph 4.01 above with
respect to sales of ROYALTY-BASE PRODUCTS among LICENSEE and its AFFILIATE(S) or
Sublicensees, nor shall a royalty be payable under this Article IV with respect
to ROYALTY-BASE PRODUCTS distributed for use in research and/or development, in
clinical trials, or as promotional samples.
4.03 Royalties due under this Article IV shall be payable on a
country-by-country and ROYALTY-BASE PRODUCT-by-ROYALTY-BASE PRODUCT basis until
the expiration of the last-to-expire issued VALID CLAIM covering such
ROYALTY-BASE PRODUCT in such country, (or if no such patent has issued in a
country in which an application is pending, until the fifth anniversary of the
first commercial sale of a ROYALTY-BASE PRODUCT in such country).
4.04 If it is determined by a competent court, or by mutual agreement
of the parties hereto, that LICENSEE must avoid infringement by acquiring a
license from another party in the course of practicing LICENSOR's LICENSED
PATENT APPLICATION, then LICENSEE may offset any amounts paid to such third
party against royalties due LICENSOR, [*].
4.05 For prototype products in the early part of the product life cycle
before sales to third parties, instead of NET SALES, milestone payments shall be
required at certain stages of the product development cycle. LICENSEE shall pay
LICENSOR according to the following schedule:
a. LICENSEE shall pay to LICENSOR [*].
b. LICENSEE shall pay to LICENSOR [*].
c. LICENSEE shall pay to LICENSOR [*].
4.06 Royalties shall be payable in United States dollars, paid by check
to the "Finance and Accounting Officer, U.S. Army Research Laboratory" and
mailed to Commander, U.S. Army Research Laboratory, ATTN: AMSRL-OP-RM-FA-DI,
2800 Powder Mill Road, Adelphi, Maryland 20783-1145. All checks and bank drafts
shall be drawn on United States banks.
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4.07 For purposes of converting currencies other than U.S. Dollars to
U.S. Dollars, the current exchange rate as reported in the Wall Street Journal
under the column headed "Currency Trading" and subtitled "Exchange Rates" for
the last Tuesday of the calendar quarter in which the sales were made shall be
used. Any and all loss of exchange, value, taxes or other expenses incurred in
the transfer or conversion of other currency to United States dollars shall be
paid entirely by LICENSEE.
4.08 In the event that LICENSEE is unable, as a result of any legal or
government restrictions to remit royalties from any country in the LICENSED
TERRITORY in respect of sales in that country, LICENSEE shall deposit the
appropriate royalties in an account in a bank in such country agreed to by
LICENSOR, such agreement not to be unreasonably withheld. For as long as such a
restriction applies, LICENSEE shall be relieved of any further obligations to
LICENSOR in respect of such royalties except that of reporting to LICENSOR under
ARTICLE V concerning the amount of royalty payable and so deposited.
4.09 LICENSEE shall pay royalties accrued for sales made subject to
such royalties to include sales by its AFFILIATE(S) and sublicensees not later
than [*]. LICENSEE shall submit with its payment the written report required in
ARTICLE V, paragraph 5.03 of this Agreement. If no royalties are due, the report
shall so state. Sales shall be considered to be made, for purposes of this
paragraph, when billed out, except that upon any termination of this Agreement,
all shipments made on or prior thereto shall be considered as sold (and
therefore subject to royalty). Royalties paid on sales of ROYALTY-BASE PRODUCTS
which are not accepted by the customer shall be credited to LICENSEE.
4.10 LICENSEE shall pay within [*] any termination of this Agreement
royalties accrued or accruable for payment at the time of any such termination.
4.11 Royalty payments not received by LICENSOR by the due date shall be
subject to interest charges computed at [*].
4.12 No royalty shall be payable under this Agreement for direct sales
of ROYALTY- BASE PRODUCTS by LICENSEE to the GOVERNMENT or any of its agencies
for governmental purposes or for sales made for the purpose of conducting
clinical trials.
ARTICLE V
REPORTS AND RECORDS
5.01 LICENSEE agrees to keep records showing the sales or other
disposition of ROYALTY-BASE PRODUCTS sold or otherwise disposed of under the
license granted in this Agreement. Such records shall be maintained as
CONFIDENTIAL INFORMATION of LICENSEE. Records should be in sufficient detail to
enable the royalties payable hereunder by LICENSEE to be determined, and
LICENSEE further agrees to permit its books and records to be examined, upon [*]
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prior written notice once per calendar year for the sole purpose of verifying
the accuracy of LICENSEE's payments and compliance with this Agreement, such
examination to be made at the expense of the LICENSOR by an auditor or certified
public accountant appointed by LICENSOR who shall be reasonably acceptable to
LICENSEE, or, at the expense of LICENSEE, by a certified public accountant
appointed by LICENSEE who shall be reasonably acceptable to LICENSOR. The
auditor shall enter into a reasonable confidentiality agreement with LICENSEE
and shall report to LICENSOR only whether there has been a royalty underpayment
and, if so, the amount thereof. Such access shall be permitted during LICENSEE'S
normal business hours during the term of this Agreement and for [*] after the
expiration or termination of this Agreement.
5.02 Prior to the first commercial sale of ROYALTY-BASE PRODUCTS,
LICENSEE shall provide [*] progress reports within [*] of the end of each [*]
detailing its efforts, and the efforts of all AFFILIATE(S) and sublicensees, to
bring the inventions licensed under this Agreement to the POINT OF PRACTICAL
APPLICATION. These reports shall contain reasonably sufficient information to
substantiate that LICENSEE's development plan is being executed (see Application
for License to Practice Government-Owned Invention attached hereto as Appendix
A). No further annual progress reports will be required after notification of
the first commercial sale of ROYALTY- BASE PRODUCTS unless otherwise requested
by LICENSOR.
5.03 Concurrently with each payment of royalties as required in ARTICLE
IV, paragraph 4.09, of this Agreement, LICENSEE shall submit a written report
setting forth for the preceding [*] reporting period the amount of ROYALTY-BASE
PRODUCT made, used, sold or otherwise disposed of by LICENSEE and its
AFFILIATE(S) and sublicensees in the LICENSED TERRITORY, the NET SALES thereof,
and the amount of royalties due thereon. If no royalties are due LICENSOR for
any report period, the report shall so state.
5.04 The reports required under this ARTICLE V shall also be made
within [*] of the termination of this Agreement concurrently with any payment of
royalties required under ARTICLE IV, paragraph 4.10.
ARTICLE VI
[*]
6.01 [*] during the term of this Agreement [*] to submission to, and
approval [*], which approval shall not be unreasonably withheld. [*] shall make
reference to this Agreement including those [*]. A copy of any [*] shall be
furnished to [*] promptly after its execution.
6.02 [*] paid by an [*] be payable to [*].
6.03 Modification or termination under ARTICLE XI paragraph 11.03, or
any of the provisions this Agreement shall [*], provided that [*] by advising
[*], within sixty (60) days of the [*]
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receipt of written notice of such [*] contain provisions corresponding to those
of this paragraph respecting [*] and termination and the conditions of [*].
ARTICLE VII
LICENSEE PERFORMANCE
7.01 LICENSEE shall expend reasonable efforts and resources to carry
out the development and marketing of the inventions, described and claimed in
the LICENSED PATENT APPLICATION.
7.02 After bringing the inventions, described and claimed in the
LICENSED PATENT APPLICATION, to the POINT OF PRACTICAL APPLICATION in the
LICENSED TERRITORY, LICENSEE agrees to keep LICENSED PRODUCTS AND METHODS
available to the public on reasonable terms during the term of this agreement.
LICENSEE shall promptly report discontinuance of its making the benefits of the
inventions reasonably accessible to the public.
7.03 Failure to comply with the terms of this ARTICLE VII shall be
cause for modification or termination of this Agreement in accordance with the
provisions of ARTICLE XI below.
ARTICLE VIII
MARKINGS
8.01 LICENSEE and its AFFILIATES shall identify, within a reasonable
period of time, ROYALTY-BASE PRODUCTS with the marking "Licensed Under U.S.
Patent (number)" or "U.S. Patent Pending" as permitted or required by statute or
identify product as patented in any promotional literature used.
8.02 The name of the GOVERNMENT employee inventor(s), the name of the
agency or department of the Government or any adaptation of the above shall not
be used in any promotional activity without prior written approval from
LICENSOR.
ARTICLE IX
PATENT ENFORCEMENT
9.01 LICENSOR and LICENSEE shall notify each other promptly in writing
of any infringement of the LICENSED PATENT APPLICATION which becomes known to
either of them. LICENSEE shall notify LICENSOR promptly of any action taken in
accordance with this ARTICLE VIII to prevent or eliminate such infringement.
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9.02 Upon receipt by either party of a notice of infringement of the
LICENSED PATENT APPLICATIONS, LICENSOR shall have the responsibility to, enforce
the LICENSED PATENT APPLICATION. If any unlicensed third party infringes the
LICENSED PATENT APPLICATION, AND LICENSOR fails to bring an action to enforce
the LICENSED PATENT APPLICATION within one hundred eighty (180) days of
receiving notice of such an infringement, no further royalties shall be due
under this Agreement until the infringement has ceased.
ARTICLE X
RESERVATION OF RIGHTS
10.01 The license granted in ARTICLE III of this Agreement shall be
subject to the irrevocable, royalty-free right of the GOVERNMENT to practice the
inventions, described and claimed in the LICENSED PATENT APPLICATION, on behalf
of the United States and on behalf of any foreign government or international
organization pursuant to any existing or future treaty or agreement with the
United States, including the right to engage in research on inventions,
described and claimed in the LICENSED PATENT APPLICATION, either alone or with
one or more third parties.
ARTICLE XI
TERM AND TERMINATION
11.01 The term of this Agreement begins with its effective date as set
forth in the heading paragraph located above ARTICLE I and, unless sooner
terminated in accordance with this ARTICLE XI, shall run until the expiration of
the last to expire patent within the LICENSED PATENT APPLICATION, including any
extensions granted under the Patent Term Restoration Act or any other statute.
11.02 The LICENSOR may modify or terminate this license, in whole or in
part, if:
a. LICENSEE or any of its sublicensees fails to meet the
obligations set forth in ARTICLE VII above;
b. The LICENSOR determines that such action is necessary to
meet requirements for public use specified by Federal regulations issued after
the date of this Agreement and such requirements are not reasonably satisfied by
the LICENSEE;
c. The LICENSEE has willfully made a false statement of, or
willfully omitted, a material fact in the license application or in any report
required by this Agreement;
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d. The LICENSEE commits a substantial breach of a covenant or
agreement contained in this Agreement;
e. The LICENSEE defaults in making any payment or report
required by this Agreement;
f. The LICENSEE is adjudged a bankrupt or has its assets
placed in the hands of a receiver or makes any assignment or other accommodation
for the benefit or creditors; or
g. The LICENSEE or any of its AFFILIATE(S) or sublicensee
misuses the LICENSED PATENT APPLICATION.
11.03 Prior to any modification or termination of this Agreement, other
than by mutual agreement, LICENSOR shall furnish LICENSEE and any AFFILIATE(S)
and sublicensees of record a written notice of intention to modify or terminate,
and the LICENSEE and any notified AFFILIATE(S) and sublicensees shall be allowed
ninety (90) days after the date of such notice to remedy the breach or default
of any covenant or agreement of this Agreement or to show cause why this
Agreement should not be modified or terminated.
11.04 The word "termination" and cognate words, such as "term" and
"terminate," used in this ARTICLE XI and elsewhere in this Agreement are to be
read, except where the contrary is specifically indicated, as omitting from
their effect the following rights and obligations, all of which survive any
termination to the degree necessary to permit their complete fulfillment or
discharge:
a. LICENSEE's obligation to supply a terminal report as
specified in ARTICLE V, paragraph 5.04, of this Agreement;
b. LICENSOR's right to receive or recover and LICENSEE's
obligation to pay royalties accrued or accruable for payment at the time of any
termination as specified in ARTICLE IV, paragraph 4.10, of this Agreement;
c. LICENSEE's obligation to maintain records and LICENSOR's
right to conduct a final audit as provided in ARTICLE V of this Agreement;
d. Licenses, releases, and agreements of nonassertion running
in favor of customers or transferees of LICENSEE in respect to ROYALTY-BASE
PRODUCTS sold or transferred by LICENSEE prior to any termination and on which
royalties shall have been paid as provided in ARTICLE IV of this Agreement; and
e. Any cause of action or claim of LICENSOR accrued or to
accrue, because of any breach or default by LICENSEE.
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11.05 Either party shall have the right to terminate this Agreement by
giving written notice thereof if the other party materially breaches the terms,
covenants, and conditions hereof, and fails to correct such material breach
within ninety (90) days after such party has been given written notice thereof.
Such termination shall take place upon expiration of the ninety (90) day period.
The notice of termination shall specify the breach alleged to have occurred.
11.06 In the event of termination of this Agreement or conversion of
the license granted hereunder, any sublicense of record granted pursuant to this
Agreement may, at sublicensee's option, be converted to a license directly
between sublicensee and LICENSOR in accordance with the provisions of ARTICLE VI
herein.
11.07 LICENSEE will have the right to terminate this Agreement, with or
without cause, at any time effective sixty (60) days after written notice as to
any patent application or patent within the LICENSED PATENT APPLICATION.
11.08 In the event of any termination of this Agreement under this
Article XI (other than upon expiration of the term specified in paragraph 11.01
hereof), LICENSEE, its AFFILIATE(S) and sublicensees shall be permitted for a
period of ninety (90) days, to complete the sale of its existing inventory of
ROYALTY-BASE PRODUCTS and LICENSOR shall be entitled to the payment of royalties
as provided in Article IV, paragraph 4.10 with respect thereto.
ARTICLE XII
ACKNOWLEDGMENTS AND REPRESENTATIONS
12.01 LICENSOR acknowledges that: (i) it is the sole and exclusive
owner of all right, title and interest in the LICENSED PATENT APPLICATION; (ii)
it has the right to grant the rights and licenses granted herein, and the
LICENSED PATENT APPLICATION is free and clear of any lien, encumbrance, security
interest or restriction on license; (iii) it has not previously granted, and
will not grant during the term of this Agreement any right, license, or interest
in and to the LICENSED PATENT APPLICATION, or any portion thereof, inconsistent
with the license granted to LICENSEE herein; (iv) to the best of its knowledge,
no other intellectual property owned by LICENSOR is necessary to practice the
LICENSED PATENT APPLICATION; and (v) there are no threatened or pending actions,
suits, investigation, claims or proceedings in any way relating to the LICENSED
PATENT APPLICATION.
12.02 LICENSEE represents and warrants that: (i) it is a corporation
duly organized, validly existing and in good standing under the laws of the
State of California; and (ii) the execution, delivery and performance of this
Agreement have been duly authorized by all necessary corporate action on the
part of LICENSEE.
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ARTICLE XIII
GENERAL
13.01 This Agreement shall not be transferred or assigned by LICENSEE
to any party other than to a successor or assignee of the entire business
interest of LICENSEE without the approval of LICENSOR'S REPRESENTATIVE.
13.02 This Agreement does not confer any immunity from or defenses
under the antitrust laws, the laws and regulations pertaining to or administered
by the Food and Drug Administration, or the export laws nor does it confer
immunity from a charge of patent misuse. Furthermore, LICENSEE'S, AFFILIATE(S),
or sublicensee's acquisition and exercise of rights hereunder are not immunized
from the operation of any state or Federal law by reason of the source of the
grant. This Agreement does not constitute an endorsement by LICENSOR of any
ROYALTY-BASE PRODUCTS and LICENSEE shall not state or imply in any medium that
such endorsement exists as the result of this Agreement.
13.03 LICENSOR makes no warranty, express or implied, or any
representations regarding the patentability, validity or scope of the LICENSED
PATENT APPLICATION or that LICENSED PATENT APPLICATION may be exploited without
infringing patents of third parties.
13.04 LICENSEE, its AFFILIATE(S) and sublicensees agree that
ROYALTY-BASE PRODUCTS will be manufactured substantially in the United States in
compliance with 35 United States Code 209(b).
13.05 The decision of LICENSOR'S REPRESENTATIVE on any requirement,
dispute, interpretation, modification, or termination of this Agreement shall be
reduced to writing and a copy mailed or otherwise furnished to LICENSEE. Such
decision shall be final, provided that LICENSEE may, within thirty (30) days of
receiving notice of such decision, submit a written appeal through LICENSOR'S
REPRESENTATIVE and the Intellectual Property Counsel of the Army to the Judge
Advocate General, Department of the Army, Washington, DC 20310-2207, which
appeal shall set forth in detail the decision being appealed and the basis of
the appeal and may include appropriate supporting materials. Implementation of
such decision shall be stayed pending a final resolution of such appeal. Pending
such final resolution, LICENSEE shall proceed diligently with the performance of
its obligations under this Agreement.
13.06 Except as expressly provided herein, the parties agree that, for
the term of this Agreement and for five (5) years thereafter, the receiving
party shall keep completely confidential and shall not publish or otherwise
disclose and shall not use for any purpose except for the purposes contemplated
by this Agreement any CONFIDENTIAL INFORMATION furnished to it by the disclosing
party hereto pursuant to this Agreement, except that it can be established by
the receiving party by competent proof that such CONFIDENTIAL INFORMATION:
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i. was already known to the receiving party, other than
under an obligation of confidentiality, at the time of disclosure;
ii. was generally available to the public or otherwise part
of the public domain at the time of its disclosure to the receiving party;
iii. became generally available to the public or otherwise
part of the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement; or
iv. was subsequently lawfully disclosed to the receiving
party by a person other than a party hereto.
13.07 LICENSEE may use or disclose information disclosed to it by
LICENSOR to the extent such disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation, complying
with applicable governmental regulations or otherwise submitting information to
tax or governmental authorities, conducting clinical trials, acquiring potential
investors who are bona fide investment banks and/or venture capital firms, or
making a permitted sublicense or otherwise exercising its rights hereunder,
provided that if LICENSEE is required to make any such disclosure of LICENSOR'S
CONFIDENTIAL INFORMATION, other than pursuant to a confidentiality agreement, it
will give reasonable notice to LICENSOR of such disclosure and, save to the
extent inappropriate in the case of patent applications, will use its best
efforts to secure confidential treatment of such information prior to its
disclosure (whether through protective orders or otherwise). LICENSEE agrees to
keep records of confidentiality agreements between itself and third parties in
accordance with the treatment of CONFIDENTIAL INFORMATION given in ARTICLE V,
paragraph 5.01, above.
13.08 The parties shall notify each other of any changes in name,
address, or business status, and any notice or report required to be given under
the provisions of this Agreement shall be considered duly given if mailed by
first class mail, postage prepaid and addressed as follows:
a. If to LICENSOR: Command Judge Advocate
U.S. Army Medical Research and Material Command
ATTN: MCMR-JA
Fort Detrick Frederick, Maryland 21702-5012
b. If to LICENSEE: Jenner Technologies, Inc.
828 Eastbrook Court
Danville, California 94506
Attention: Anthony E. Maida, III
Chief Executive Officer
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13.09 The interpretation and application of the provisions of this
Agreement shall be governed by the laws of the United States as interpreted and
applied by the Federal courts in the District of Columbia, United States of
America.
13.10 This Agreement constitutes the entire understanding between the
parties and neither party shall be obligated by any condition or representation
other than those expressly stated herein or as may be subsequently agreed to by
the parties hereto in writing.
13.11 All prior reviews and approvals required by regulations or law
have been obtained by the Command prior to the execution of this Agreement. The
Command official executing this Agreement has the requisite authority to do so.
Notwithstanding the delegation of authority to execute this Agreement to the
individual designated, the Secretary of the Army has reserved to the Assistant
Secretary of the Army (Research, Development and Acquisition) the opportunity
provided by 15 U.S.C. Section 3710a(c)(5)(A), to disapprove or require the
modification of this Agreement within 30 days of the date it is presented to him
or her by the Command.
13.12 Failure of any party to enforce any term, covenant, or condition
herein contained shall not be deemed to be a waiver of such term, covenant, or
condition herein contained.
13.13 Neither party shall be in default hereunder by reason of its
delay in the performance of, or failure to perform, any of its obligations
hereunder, other than LICENSEE'S obligations to make payments to LICENSOR in
accordance with the terms of this Agreement, if such delay is caused by strikes,
acts of God or the public enemy, riots, or without the fault or negligence of
the other party. During the pendency of such intervening event, each of the
parties shall take all reasonable steps to furnish the services required
hereunder by other means, and, in any event, shall, upon termination of such
intervening event, forthwith resume obligations under this Agreement.
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IN WITNESS WHEREOF, each of the parties hereto has caused this
Agreement to be executed in triplicate originals by its duly authorized officers
or representatives.
FOR LICENSEE:
Anthony E. Maida, III
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CEO
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Jenner Technologies
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/s/ ANTHONY E. MAIDA
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Dated: February 22, 1996
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Witness: Jackie A. Field
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Dated: 2/22/96
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FOR LICENSOR:
/s/ ERNEST T. TAKAFUJI
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Ernest T. Takafuji, Colonel, MC
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Director
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Walter Reed Army Institute of Research
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Dated: 29 March 1996
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Witness: Marvin Rogul
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Dated: 29 March 1996
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