EXHIBIT 3.17
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS DOCUMENT.
CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
LICENSE AGREEMENT
This agreement ("Agreement") is made by and between
THE UNIVERSITY OF ZURICH
(HEREINAFTER REFERRED TO AS UNIVERSITY)
represented by
PROF. ANDREAS PLUCKTHUN
INSTITUTE OF BIOCHEMISTRY
WINTERTHURERSTR. 190, CH-8057 ZURICH (SWITZERLAND)
PD DR. UWE ZANGEMEISTER-WITTKE
UNIVERSITY HOSPITAL; DIV. OF ONCOLOGY
HALDELIWEG 4, CH-8044 ZURICH (SWITZERLAND)
and
VIVENTIA BIOTECH INC.
10 FOUR SEASONS PLACE, SUITE 501
TORONTO, ONTARIO M9B 6H7 (CANADA)
("LICENSEE")
This Agreement is effective on the date of the last signature ("Effective
Date").
RECITALS
WHEREAS, UNIVERSITY is owner of Patent Rights as defined below on a stabilized
[ ] fragment termed [ ] ("Invention");
WHEREAS, LICENSEE entered into an Option Agreement with UNIVERSITY, effective
March 19, 2002, ("Option Agreement"), for the purpose of negotiating this
Agreement;
WHEREAS, UNIVERSITY is desirous that the Invention be developed and utilized to
the fullest possible extent so that its benefits can be enjoyed by the general
public;
WHEREAS, LICENSEE wishes to obtain, and UNIVERSITY is willing to grant, an
exclusive license to the Patent Rights on the terms and conditions set out
below.
NOW, THEREFORE, the parties agree:
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ARTICLE 1. DEFINITIONS
The terms, as defined herein, shall have the same meanings in both their
singular and plural forms.
1.1 "Affiliate" means any corporation or other business entity in which LICENSEE
owns or controls, directly or indirectly, at least fifty percent (50%) of the
outstanding stock or other voting rights entitled to elect directors, or in
which LICENSEE is owned or controlled directly or indirectly by at least fifty
percent (50%) of the outstanding stock or other voting rights entitled to elect
directors.
1.2 "Sublicensee" means a third party to whom LICENSEE grants a sublicense of
certain rights granted to LICENSEE under this Agreement.
1.3 "Field" means the treatment, stasis, and palliation of disease in humans by
[ ] antibodies or antibody fragments, whether by themselves or in
combination with other materials or methods.
1.4 "Territory" means world-wide.
1.5 "Term" means the period of time beginning on the Effective Date and ending
on the expiration date of the longest-lived Patent Rights.
1.6 "Patent Rights" means any of the patent applications set forth in Attachment
A to this Agreement and any other patents or patent applications now or in the
future owned or controlled by UNIVERSITY describing or claiming the Invention
(including methods of making or using same) and continuing applications thereof
including divisions, substitutions, and continuations-in-part; any patents
issuing on said applications including reissues, reexaminations and extensions.
1.7 "Licensed Method" means any method that is covered by Patent Rights the use
of which would constitute, but for the license granted to LICENSEE under this
Agreement, an infringement of any pending or issued and unexpired Valid Claim
within Patent Rights.
1.8 "Licensed Product" means any composition or product that is covered by the
claims of Patent Rights, or that is produced by the Licensed Method, the
manufacture, use, sale, offer for sale, or importation of which would
constitute, but for the license granted to LICENSEE by UNIVERSITY herein, an
infringement of any pending or issued and unexpired Valid Claim within the
Patent Rights.
1.9 "Net Sales" means the total of the gross invoice prices of Licensed Products
sold by LICENSEE, its Sublicensee, an Affiliate, a distributor or any
combination thereof, to end-user customers of Licensed Products less the sum of
the following actual and customary deductions where applicable and separately
itemized on the invoice and actually paid or allowed: cash, trade, or quantity
discounts; value added, sales or use taxes, and custom duties; transportation
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CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
charges; or credits to customers because of rejections or returns. Net Sales
shall be calculated on the price from Licensee, a sublicensee, a distributor or
their Affiliates to the first purchaser who is an end-user and not on sales
between or among Licensee, sublicensees, distributors or their Affiliates for
the purpose of resale.
1.10 "Patent Costs" means all out-of-pocket expenses for the preparation,
filing, prosecution, and maintenance of all patents included in Patent Rights in
at least the following countries: US, Canada, Japan, Europe (i. e. the following
EPC-countries; AT, BE, CH, , DE, DK, , , FR, GB, , , IT, , , , NL, , SE).
1.11 "Valid Claim" means a claim of the Patent Rights which has not been
withdrawn, canceled, or disclaimed, nor held invalid by a court of competent
jurisdiction in any unappealed or unappealable decision in the country where the
product or process was made, use or sold by LICENSEE, its Affiliate or
sublicensee.
ARTICLE 2. GRANTS
2.1 LICENSE. Subject to the limitations set forth in this Agreement, UNIVERSITY
hereby grants to LICENSEE, and LICENSEE hereby accepts, a royalty bearing,
exclusive license (with the right to sublicense) under Patent Rights to make,
have made, use, sell, offer for sale, and import Licensed Products and to
practice Licensed Methods, in the Field within the Territory and during the
Term.
The license granted herein is exclusive for Patent Rights and UNIVERSITY shall
not grant to third parties a further license under Patent Rights in the Field,
within the Territory and during the Term.
Upon expiration of each patent within the Patent Rights, Viventia shall have a
fully paid-up, royalty-free licence under such patent in the respective country
to make, have made, use, sell, offer for sale, and import Licensed Products and
to practice the Licensed Methods, in the Field.
2.2 SUBLICENSE.
(a) The license granted in Paragraph 2.1 includes the right of LICENSEE
to grant sublicense to third parties during the Term.
(b) With respect to sublicense granted pursuant to Paragraph 2.2(a),
LICENSEE shall:
(1) to the extent applicable, include all of the rights of and
obligations due to UNIVERSITY and contained in this Agreement;
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(2) promptly provide UNIVERSITY with a copy of each sublicense
issued; and
(3) collect and guarantee payment of all payments due,
directly or indirectly, to UNIVERSITY from Sublicensees and summarize and
deliver all reports due, directly or indirectly, to UNIVERSITY from
Sublicensees.
(c) Upon termination of this Agreement for any reason, UNIVERSITY, at
its sole discretion, shall determine whether LICENSEE shall cancel or assign to
UNIVERSITY any and all sublicenses.
2.3 RESERVATION OF RIGHTS. UNIVERSITY reserves the right to:
(a) use the Invention, and Patent Rights for educational and research
purposes;
(b) notwithstanding the provisions of Paragraph 5.1.b publish or
otherwise disseminate any information about the Invention at any time; and
(c) allow other academic, nonprofit institutions to use Invention, and
Patent Rights for educational and non-commercial research purposes in their
facilities, subject to a written agreement from such institution acknowledging
such restriction and agreeing that no Licensed Products will be transferred to
any other person or institution. LICENSEE shall have the right to consult
UNIVERSITY in setting up such written agreements and UNIVERSITY shall consider
LICENSEE's comments in good faith.
ARTICLE 3. CONSIDERATIONS
3.1 FEES AND ROYALTIES. The parties hereto understand that the fees and
royalties payable by LICENSEE to UNIVERSITY under this Agreement are partial
considerations for the license granted herein to LICENSEE under Patent Rights.
LICENSEE shall pay UNIVERSITY:
(a) a LICENSE ISSUE FEE of [ ] United States Dollars (US$
[ ) upon execution of the this Agreement;
(b) MILESTONE PAYMENTS in the amounts payable according to the
following schedule or events by LICENSEE, its Affiliates or sublicensees with
respect to the first Licensed Product:
Amount Event
(1) US$ [ ] Completion of first [ ] studies
(2) US$ [ ] First [ ] or equivalent
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CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
Amount Event
(3) US$ [ ] Within 30 days of [
]
(c) an EARNED ROYALTY of [ ] on Net Sales of Licensed
Products by LICENSEE, its Affiliates, or sublicensees; If LICENSEE is required
to pay royalties to third parties on sales of Licensed Products under patents
claiming the composition and/or method of making or using such Licensed Products
and the resulting aggregate royalty rate is 10% or greater, then the royalty
[
].
All fees and royalty payments specified in Paragraphs 3.1(a) through 3.1(c)
above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be delivered
by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.
3.2 PATENT COSTS. LICENSEE shall reimburse UNIVERSITY all Patent Costs within
thirty (30) days following receipt by LICENSEE of an itemized invoice from
UNIVERSITY.
3.3 DUE DILIGENCE.
(a) LICENSEE shall:
(1) diligently proceed with the development, manufacture and sale of
Licensed Products;
(2) upon market entry on a country-by-country basis, use its reasonable
efforts to promote the sale of the Licensed Products in the Territory as widely
as its resources reasonably permit and reasonably fill the market demand for
Licensed Products at any time during the term of this Agreement; and
(3) obtain all necessary governmental approvals for the manufacture,
use and sale of Licensed Products.
(b) If LICENSEE fails to perform any of its obligations specified in Paragraphs
3.3(a)(1)-(3), then UNIVERSITY shall have the right to demand a development and,
if applicable, marketing plan, detailing key activities and expected timetables.
If UNIVERSITY rejects such a plan, the Parties shall meet to discuss in good
faith possible amendments to the development and/or marketing plan. In the
absence of agreement to such amendments the UNIVERSITY shall have the right and
option to terminate this Agreement. If LICENSEE disagrees with such termination
it shall have the right within 60 days of the notification of termination to
seek arbitration as foreseen in clause 10.6. The arbitrators shall decide
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CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
whether the termination is justified or not and if the conclude that the
termination is not justified decide which amendments to the development and/or
marketing plan shall be done.
ARTICLE 4. REPORTS, RECORDS AND PAYMENTS
4.1 REPORTS.
(a) PROGRESS REPORTS.
(1) Beginning January 1, 2004 and ending on [
] LICENSEE shall submit to UNIVERSITY
annual progress reports covering LICENSEE's (and Affiliate's and Sublicensee's)
activities to develop and test all Licensed Products and obtain governmental
approvals necessary for marketing the same. Such reports shall include a summary
of work completed; summary of work in progress; current schedule of anticipated
events or milestones; market plans for introduction of Licensed Products; and
summary of resources spent in the reporting period.
(2) LICENSEE shall also report to UNIVERSITY, in its immediately
subsequent progress report, the date of first commercial sale of a Licensed
Product in each country.
(b) ROYALTY REPORTS. After the first commercial sale of a Licensed Product
anywhere in the world, LICENSEE shall submit to UNIVERSITY quarterly royalty
reports on a schedule to be determined by LICENSEE based on its fiscal year or
other related license agreements.. Each royalty report shall cover LICENSEE's
(and each Affiliate's and Sublicensee's) most recently completed quarter and
shall show:
(1) the gross sales, deductions as provided in Paragraph 1.9,
and Net Sales during the most recently completed quarter and the royalties
payable with respect thereto;
(2) the number of each type of Licensed Product sold;
(3) sublicense fees and royalties received during the most
recently completed quarter, payable with respect thereto;
(4) the method used to calculate the royalties; and
(5) the exchange rates used.
If no sales of Licensed Products has been made and no sublicense revenues has
been received by LICENSEE during any reporting period, LICENSEE shall so report.
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4.2 RECORDS & AUDITS.
(a) LICENSEE shall keep, and shall require its Affiliates and Sublicensees to
keep, accurate and correct records of all Licensed Products manufactured, used,
and sold, and sublicense fees received under this Agreement. Such records shall
be retained by LICENSEE for at least three (3) years following a given reporting
period.
(b) All records shall be available during normal business hours for inspection
at the expense of UNIVERSITY by an independent public accountant selected by
UNIVERSITY and reasonably acceptable to LICENSEE and in compliance with the
other terms of this Agreement for the sole purpose of verifying reports and
payments; such accountant shall not be retained on a contingency-fee basis or on
any other terms by which the accountant's compensation depends on the results of
the audit. Such accountant shall not disclose to UNIVERSITY any information
other than information relating to the accuracy of reports and payments made
under this Agreement or other compliance issues. In the event that any such
inspection shows an under reporting and underpayment in excess of [
] for any twelve (12) month period, then LICENSEE shall pay the reasonable
cost of the audit as well as any additional sum that would have been payable to
UNIVERSITY had the LICENSEE reported correctly, plus an interest charge at a
rate of [ ] per year. Such interest shall be calculated from the
date the correct payment was due to UNIVERSITY up to the date when such payment
is actually made by LICENSEE. For underpayment not in excess of [
] for any twelve (12) month period, LICENSEE shall pay the difference within
thirty (30) days without interest charge or inspection cost.
4.3 PAYMENTS.
(a) All fees due UNIVERSITY shall be paid to:
Zurich Cantonal Bank; CH-8010 Zurich (Switzerland); SWIFT No.
ZKBKCHZZ80A; SIC/ABA N0.: 007005 Account No. [ ]; Finance
Dept. of the University of Zurich Ref. [ ]
(b) Royalty Payments.
(1) LICENSEE shall pay earned royalties quarterly on a schedule to be
determined by LICENSEE based on its fiscal year or other related license
agreements. Each such payment shall be for earned royalties accrued within
LICENSEE's most recently completed calendar quarter.
(2) Royalties earned on sales occurring or under sublicense granted
pursuant to this Agreement shall not be reduced by LICENSEE for any taxes, fees,
or other charges imposed by the government of such country on the payment of
royalty income, except that all payments made by LICENSEE in
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fulfillment of UNIVERSITY' tax liability in any particular country may be
credited against earned royalties or fees due UNIVERSITY for that country.
LICENSEE shall pay all bank charges resulting from the transfer of such royalty
payments.
(3) In the event that any patent or patent claim within Patent Rights
is held invalid in a final decision by a patent office from which no appeal or
additional patent prosecution has been or can be taken, or by a court of
competent jurisdiction and last resort and from which no appeal has or can be
taken, all obligation to pay royalties based solely on that patent or claim or
any claim patentably indistinct therefrom shall cease as of the date of such
final decision. LICENSEE shall not, however, be relieved from paying any
royalties that accrued before the date of such final decision, that are based on
another patent or claim not involved in such final decision.
(c) Late Payments. In the event royalty, reimbursement and/or fee payments are
not received by UNIVERSITY when due, LICENSEE shall pay to UNIVERSITY interest
charges at a rate of ten percent (10%) per year. Such interest shall be
calculated from the date payment was due until actually received by UNIVERSITY.
ARTICLE 5. PATENT MATTERS
5.1 PATENT PROSECUTION AND MAINTENANCE.
(a) Provided that LICENSEE has reimbursed UNIVERSITY for Patent Costs pursuant
to Paragraph 3.2, UNIVERSITY shall consult in good faith with LICENSEE and
diligently prosecute and maintain the patents, and applications in Patent Rights
using counsel of its choice and taking in good faith into account any comments
of LICENSEE. UNIVERSITY shall provide LICENSEE with copies of all relevant
documentation relating to such prosecution and LICENSEE shall keep this
documentation confidential. The counsel shall take instructions only from
UNIVERSITY, and all patents and patent applications in Patent Rights shall be
assigned solely to UNIVERSITY.
(b) UNIVERSITY shall provide LICENSEE with (i) drafts of all applications and
papers it plans to file with any patent office at least thirty days before
filing, and (ii) copies of all communications from patent offices promptly after
receipt thereof. UNIVERSITY shall consult in good faith with LICENSEE and/or
LICENSEE's patent counsel as to the content of all applications and papers to be
filed, and shall act in good faith upon comments received from LICENSEE.
UNIVERSITY shall ensure that no public disclosures are made prior to filing of
patent applications.
(c) LICENSEE shall apply for an extension of the term of any patent in Patent
Rights if appropriate under the US Drug Price Competition and Patent Term
Restoration Act and/or European, Japanese and other counterparts thereof.
LICENSEE shall prepare all documents for such application, and UNIVERSITY
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shall execute such documents and take any other additional action as LICENSEE
reasonably requests in connection therewith.
5.2 PATENT INFRINGEMENT.
(a) If LICENSEE learns of any substantial infringement of Patent Rights,
LICENSEE shall so inform UNIVERSITY and provide UNIVERSITY with reasonable
evidence of the infringement. Neither party shall notify a third party of the
infringement of Patent Rights without the consent of the other party. Both
parties shall use reasonable efforts and cooperation to terminate infringement
without litigation.
(b) LICENSEE may request UNIVERSITY to take legal action against such third
party for the infringement of Patent Rights. Such request shall be made in
writing and shall include reasonable evidence of such infringement and damages
to LICENSEE. If the infringing activity has not abated ninety (90) days
following LICENSEE's request, UNIVERSITY shall elect to or not to commence suit
on its own account. UNIVERSITY shall give notice of its election in writing to
LICENSEE by the end of the one-hundredth (100th) day after receiving notice of
such request from LICENSEE. LICENSEE may thereafter bring suit for patent
infringement in its own name (and in the name of UNIVERSITY if necessary) and at
its own expense, if and only if UNIVERSITY elects not to commence suit and the
infringement occurred in a jurisdiction where LICENSEE has an exclusive license
under this Agreement. If LICENSEE elects to bring suit, UNIVERSITY may join that
suit at its own expense.
(c) Recoveries from actions brought pursuant to Paragraph 5.2(b) shall belong to
the party bringing suit except that in the event that LICENSEE brings suit for
infringement of Patent Rights and an acceptable settlement is entered into or
monetary damages are awarded in a final non-appealable judgment, UNIVERSITY
shall be reimbursed for any amount which would have been due to UNIVERSITY under
this Agreement if the products sold by the infringer actually had been sold by
LICENSEE. Legal actions brought jointly by UNIVERSITY and LICENSEE and fully
participated in by both shall be at the joint expense of the parties and all
recoveries shall be shared jointly by them in proportion to the share of expense
paid by each party.
(d) Each party shall cooperate with the other in litigation proceedings at the
expense of the party bringing suit. Litigation shall be controlled by the party
bringing the suit, except that UNIVERSITY may choose to be represented by
counsel of its choice (at its expense) in any suit brought by LICENSEE.
5.3 PATENT MARKING. LICENSEE shall mark all Licensed Products made, used or sold
under the terms of this Agreement, or their containers, in accordance with the
applicable patent marking laws.
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ARTICLE 6. GOVERNMENTAL MATTERS
6.1 GOVERNMENTAL APPROVAL OR REGISTRATION. If this Agreement or any associated
transaction is required by the law of any nation to be either approved or
registered with any governmental agency, LICENSEE shall assume all legal
obligations to do so. LICENSEE shall notify UNIVERSITY if it becomes aware that
this Agreement is subject to any government reporting or approval requirement.
LICENSEE shall make all necessary filings and pay all costs including fees,
penalties, and all other out-of-pocket costs associated with such reporting or
approval process.
ARTICLE 7. TERMINATION OF THE AGREEMENT
7.1 TERMINATION BY UNIVERSITY.
(a) If LICENSEE fails to perform or violates any term of this Agreement, then
UNIVERSITY may give written notice of default ("Notice of Default") to LICENSEE.
If LICENSEE fails to cure the default within sixty (60) days of the Notice of
Default with respect to the failure to make payments required under this
Agreement or within one hundred twenty (120) days for any other breach,
UNIVERSITY may terminate this Agreement and the license granted herein by a
second written notice ("Notice of Termination") to LICENSEE. If a Notice of
Termination is sent to LICENSEE, this Agreement shall automatically terminate on
the effective date of that notice. Termination shall not relieve LICENSEE of its
obligation to pay any fees owed at the time of termination and shall not impair
any accrued right of UNIVERSITY.
(b) UNIVERSITY shall have the right to terminate this Agreement by giving
written notice, in the event of filing by LICENSEE of a petition of bankruptcy
or insolvency or both, or in the event of an adjudication that LICENSEE is
bankrupt or insolvent or both, or after filing by LICENSEE of any petition or
pleading asking reorganization, readjustment or rearrangement of its business
under any law relating to bankruptcy or insolvency, or upon or after appointment
of a receiver for all or substantially all of the property of LICENSEE or upon
or after the making of any assignment for the benefit of creditors or upon or
after the institution of any proceedings for the liquidation or winding-up of
LICENSEE's business or for the termination of its corporate charter, and this
Agreement shall terminate upon the date specified in such written notice.
7.2 TERMINATION BY LICENSEE.
(a) LICENSEE shall have the right at any time and for any reason to terminate
this Agreement upon a ninety (90) day written notice to UNIVERSITY. Said notice
shall state LICENSEE's reason for terminating this Agreement.
(b) Any termination under Paragraph 7.2(a) shall not relieve LICENSEE of any
obligation or liability accrued under this Agreement prior to termination or
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rescind any payment made to UNIVERSITY or action by LICENSEE prior to the time
termination becomes effective. Termination shall not affect in any manner any
rights of UNIVERSITY arising under this Agreement prior to termination.
7.3 SURVIVAL ON TERMINATION. The following Paragraphs and Articles shall survive
the termination of this Agreement:
(a) Article 4 (REPORTS, RECORDS AND PAYMENTS);
(b) Paragraph 7.4 (Disposition of Licensed Products on Hand);
(c) Paragraph 8.2 (Indemnification);
(d) Article 9 (USE OF NAMES AND TRADEMARKS);
(e) Paragraph 10.2 hereof (Secrecy); and
(f) Paragraph 10.5 (Failure to Perform).
7.4 DISPOSITION OF LICENSED PRODUCTS ON HAND. Upon termination of this
Agreement, LICENSEE may dispose of all previously made or partially made
Licensed Product within a period of one hundred and twenty (120) days of the
effective date of such termination provided that the sale of such Licensed
Product by LICENSEE, its Sublicensees, or Affiliates shall be subject to the
terms of this Agreement, including but not limited to the rendering of reports
and payment of royalties required under this Agreement.
ARTICLE 8. LIMITED WARRANTY AND INDEMNIFICATION
8.1 LIMITED WARRANTY.
(a) UNIVERSITY warrants that it has the lawful right to grant this license, that
Attachment A to this Agreement is a complete list of all patents and
applications owned or controlled by UNIVERSITY pertaining to the Invention, and
that it has good and sufficient title to the Licensed Patents to grant the
licenses herein free and clear of the rightful claim of any third party.
(b) The license granted herein is provided "AS IS" and without WARRANTY OF
MERCHANTABILITY or WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE or any other
warranty, express or implied. UNIVERSITY makes no representation or warranty
that the Licensed Product, Licensed Method or the use of Patent Rights will not
infringe any other patent or other proprietary rights.
(c) In no event shall UNIVERSITY be liable for any incidental, special or
consequential damages resulting from exercise of the license granted herein or
the use of the Invention, Licensed Product, or Licensed Method.
(d) Nothing in this Agreement shall be construed as:
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(1) a warranty or representation by UNIVERSITY as to the validity or
scope of any Patent Rights;
(2) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or shall be
free from infringement of patents of third parties;
(3) an obligation to bring or prosecute actions or suits against third
parties for patent infringement except as provided in Paragraph 5.2 hereof;
(4) conferring by implication, estoppel or otherwise any license or
rights under any patents of UNIVERSITY other than Patent Rights as defined in
this Agreement, regardless of whether those patents are dominant or subordinate
to Patent Rights;
(5) an obligation to furnish any know-how not provided in Patent
Rights.
8.2 INDEMNIFICATION.
(a) LICENSEE shall indemnify, hold harmless and defend UNIVERSITY, its officers,
employees, and agents; the sponsors of the research that led to the Invention;
and the inventors of the patents and patent applications in Patent Rights and
their employers against any and all claims, suits, losses, damage, costs, fees,
and expenses resulting from or arising out of exercise of this license or any
sublicense. This indemnification shall include, but not be limited to, any
product liability.
(b) LICENSEE, at its sole cost and expense, shall insure its activities in
connection with the work under this Agreement and obtain, keep in force and
maintain insurance or an equivalent program of self insurance.
(c) UNIVERSITY shall notify LICENSEE in writing of any claim or suit brought
against UNIVERSITY in respect of which UNIVERSITY intends to invoke the
provisions of this Article. LICENSEE shall keep UNIVERSITY informed on a current
basis of its defense of any claims under this Article.
ARTICLE 9. USE OF NAMES AND TRADEMARKS
9.1 Nothing contained in this Agreement confers any right to use in advertising,
publicity, or other promotional activities any name, trade name, trademark, or
other designation of either party hereto (including contraction, abbreviation or
simulation of any of the foregoing).
9.2 UNIVERSITY may acknowledge the existence of this Agreement and the extent of
the grant in Article 2 to third parties, but UNIVERSITY shall not disclose
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the financial terms of this Agreement to third parties, except where UNIVERSITY
is required by law to do so.
ARTICLE 10. MISCELLANEOUS PROVISIONS
10.1 CORRESPONDENCE. Any notice or payment required to be given to either party
under this Agreement shall be deemed to have been properly given and effective:
(a) on the date of delivery if delivered in person, or
(b) five (5) days after mailing if mailed by registered mail, postage
paid, to the respective addresses given below, or to such other address as is
designated by written notice given to the other party.
If sent to LICENSEE:
Viventia Biotech, Inc.
10 Four Seasons Place
Suite 501
Toronto, ON Canada, M9B 6H7
Attention: Dr. Nick Glover
If sent to UNIVERSITY:
University of Zurich
Kunstlergasse 15; CH-8001 Zurich (SWITZERLAND)
Attention: Legal Department
with copy to:
Unitectra; Ref. UZ-03/064
Mohrlistrasse 23; CH-8006 Zurich (SWITZERLAND)
10.2 SECRECY.
(a) "Confidential Information" shall mean information relating to the Invention
or activities hereunder disclosed by one party to the other during the term of
this Agreement, which if disclosed in writing shall be marked "Confidential."
(b) The Receiving party of any such Confidential Information shall:
(1) use the Confidential Information for the sole purpose of performing
under the terms of this Agreement;
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(2) safeguard Confidential Information against disclosure to others
with the same degree of care as it exercises with its own data of a similar
nature;
(3) not disclose Confidential Information to others (except to its
employees, agents or consultants who are bound to it by a like obligation of
confidentiality) without the express written permission of the Disclosing party,
, except that the Receiving party shall not be prevented from using or
disclosing any of the Confidential Information that:
(i) it can demonstrate by written records was previously known
to it;
(ii) is now, or becomes in the future, public knowledge other
than through acts or omissions of it; or
(iii) is lawfully obtained by it from sources independent of
Disclosing party.
(iv) is required to be disclosed by government authority;
provided; however, that Receiving party has provided reasonable advance notice
of the impending disclosure to Disclosing party and will disclose the
Confidential Information to the extent necessary and to such authority only.
(c) The obligations of the Receiving party with respect to Confidential
Information shall continue for a period ending five (5) years from the
termination date of this Agreement.
10.3 ASSIGNABILITY. UNIVERSITY and LICENSEE each agree that their rights and
obligations under this Agreement may not be transferred or assigned to a third
party without the prior written consent of the other party thereto, such consent
not to be unreasonably withheld. Notwithstanding the foregoing, in the event of
a merger, consolidation or similar reorganization of either Party with or into
another party, or in the event of a sale of all or substantially all of the
assets of a Party or the business unit or product to which this Agreement
pertains, this Agreement shall be assigned to or become the obligation and
liability of the acquiring entity, subject to written notification of such
acquisition or merger to the other Party. The terms and conditions of this
Agreement shall be binding upon and inure to the benefit of the permitted
successors and assigns of the Parties..
10.4 NO WAIVER. No waiver by either party of any breach or default of any
covenant or agreement set forth in this Agreement shall be deemed a waiver as to
any subsequent and/or similar breach or default.
10.5 FAILURE TO PERFORM. In the event of a failure of performance due under this
Agreement and if it becomes necessary for either party to undertake legal action
against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
page 14 of 18
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS DOCUMENT.
CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
10.6 GOVERNING LAWS; ARBITRATION. THIS AGREEMENT SHALL BE INTERPRETED AND
CONSTRUED IN ACCORDANCE WITH THE LAWS OF SWITZERLAND, except that matters
concerning the validity or infringement of any patent shall be governed by the
national laws of the jurisdiction issuing such patent.
All disputes, differences or controversies arising out of or in connection with
this Agreement, its interpretation, performance, or termination, which may arise
between the Parties arising out of, or related to, this Agreement shall be
amicably settled between the Parties. In case of failure of amicable settlement
between the Parties, it shall be finally settled by binding arbitration
conducted in accordance with the Rules of Concilliation and Arbitration of the
International Chamber of Commerce (Paris, France) (the "ICC"). The arbitration
panel shall be composed of three arbitrators, one of whom shall be selected by
UNIVERSITY, one of whom shall be selected by LICENSEE and the third of whom
shall be selected by the two so selected. If both or either of UNIVERSITY OR
LICENSEE fails to select an arbitrator or arbitrators within fourteen (14) days
after receiving notice of commencement of arbitration or if the two arbitrators
fail to select a third arbitrator within fourteen (14) days after their
appointment, the ICC shall, in accordance with said rules, upon the request of
both or either of the Parties to the arbitration, appoint the arbitrator or
arbitrators required to complete the panel. The venue of arbitration shall be
Zurich.
The Parties shall share the costs of the arbitration, including administrative
and arbitrators' fees equally. Each Party shall bear its own costs and
attorneys' and witnesses' fees; provided, however, that the prevailing Party, as
determined by the arbitration panel, shall be entitled to an award against the
other Party in the amount of the prevailing Party's costs and reasonable
attorneys' fees. The arbitration award shall be final and each Party shall
comply in good faith and submit itself to the jurisdiction of the appropriate
courts in Zurich for the sole purpose of the entry of such arbitrator's award to
render effective such arbitration decision.
10.7 FORCE MAJEURE. A party to this Agreement may be excused from any
performance required herein if such performance is rendered impossible or
unfeasible due to any catastrophe or other major event beyond its reasonable
control, including, without limitation, war, riot, and insurrection; laws,
proclamations, edicts, ordinances, or regulations; strikes, lockouts, or other
serious labor disputes; and floods, fires, explosions, or other natural
disasters. When such events have abated, the non-performing party's obligations
herein shall resume.
10.8 HEADINGS. The headings of the several sections are inserted for convenience
of reference only and are not intended to be a part of or to affect the meaning
or interpretation of this Agreement.
page 15 of 18
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS DOCUMENT.
CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
10.9 ENTIRE AGREEMENT. This Agreement embodies the entire understanding of the
parties and supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof.
10.10 AMENDMENTS. No amendment or modification of this Agreement shall be valid
or binding on the parties unless made in writing and signed on behalf of each
party.
10.11 SEVERABILITY. In the event that any of the provisions contained in this
Agreement is held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality or unenforceability shall not affect any other provisions
of this Agreement, and this Agreement shall be construed as if the invalid,
illegal, or unenforceable provisions had never been contained in it.
page 16 of 18
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS DOCUMENT.
CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
IN WITNESS WHEREOF, both UNIVERSITY and LICENSEE have executed this Agreement,
in duplicate originals, by their respective and duly authorized officers on the
day and year first above written.
UNIVERSITY
Date: December 20, 2002
By: PROF. ANDREAS PLUCKTHUN /s/ Andreas Pluckthun
----------------------------
(SIGNATURE)
Date: December 18, 2002
By: PD DR. UWE ZANGEMEISTER-WITTKE /s/ Uwe Zangemeister-Wittke
----------------------------
(SIGNATURE)
Approved by the Vice President for Research:
Date: December 15, 2002
By: PROF. ALEXANDER BORBELY /s/ Alexander Borbely
----------------------------
(SIGNATURE)
LICENSEE
Date: January 9, 2003
By: NICK GLOVER, PH.D. /s/ Nick Glover
----------------------------
VP, Corporate Development (SIGNATURE)
page 17 of 18
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS DOCUMENT.
CONFIDENTIAL PROVISIONS HAVE BEEN OBSCURED.
ATTACHMENT A
Patent Applications on "[
]
Country/Region Number
United States [ ]
Canada [ ]
Europe [ ]
Japan [ ]
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