EXHIBIT 10.21
*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
200.83 AND 230.406.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT, dated as of April 30, 1998 (the "Effective
Date") is made by and between RAJYABIOTICS, a corporation organized under the
laws of the State of California (the "Company"), and SAN DIEGO STATE UNIVERSITY
FOUNDATION, a not-for-profit research institution organized under the laws of
the State of California (the "Foundation").
WHEREAS, the Foundation possesses proprietary methods of identifying
genes and protein products and possesses proprietary genes and protein products
covered by certain patent rights;
WHEREAS, the Company is engaged in the discovery, development and
commercialization of chemical compounds for therapeutic applications; and
WHEREAS, the Foundation wishes to grant to the Company, and the Company
wishes to obtain from the Foundation, an exclusive license under certain patent
rights held by the Foundation on the terms and subject to the conditions set
forth herein.
NOW, THEREFORE, in consideration of the mutual covenants and promises
hereinafter set forth, the parties hereto hereby agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "AFFILIATE" means any corporation or other entity which
controls, is controlled by, or is under common control with, a party to this
Agreement. A corporation or other entity shall be regarded as in control of
another corporation or entity if it owns or directly or indirectly controls
more than 50% of the voting stock or other ownership interest of the other
corporation or entity, or if it possesses, directly or indirectly, the power
to direct or cause the direction of the management and policies of the
corporation or other entity.
1.2 "CONFIDENTIAL INFORMATION" means any confidential information,
including information related to the Licensed Technology, and any other
information relating to any compound, research project, work in process,
future development, scientific, engineering, manufacturing, marketing,
business plan, financial or personnel matter relating to either party, its
present or future products, sales, suppliers, customers, employees, investors
or business, whether in oral, written, graphic or electronic form.
1.3 "CONTROL" means possession of the ability to grant a license or
sublicense as provided for herein without violating the terms of any
agreement or other arrangement with any Third Party.
1.4 "DRUG TARGET" means a defined physical chemical entity that is
a gene or protein that can be inhibited by a therapeutic agent, which is
discovered or developed by the Company through the use of any invention
within the scope of any Valid Claim.
1.
1.5 "FDA" means the United States Food and Drug Administration.
1.6 "FUTURE INVENTIONS" means all inventions related to the
identification of gene or protein products, or to the use of gene or protein
targets, in the discovery of new pharmaceuticals or diagnostics, which are
conceived of or reduced to practice in Dr. Judith Zyskind's laboratory at the
University after the Effective Date, and which the Company believes are
relevant to its commercial interests, and until (a) the effective date of
[... *** ...], or (b) the [... *** ...] of the effective date of [... *** ...].
1.7 "KNOW-HOW" means all know-how, trade secrets, inventions, data,
processes, procedures, devices, methods, formulas, protocols and information,
whether or not patentable, which are not covered by the Patent Rights, but
which are necessary or useful for the commercial exploitation of the Patent
Rights and which are owned by or under the Control of the Foundation as of
the Effective Date.
1.8 "LEAD COMPOUND" means a potential therapeutic agent discovered
or developed by the Company through the use of any invention within the scope
of any Valid Claim.
1.9 "LICENSED TECHNOLOGY" means the Patent Rights and the Know-How.
1.10 "PATENT RIGHTS" means the information, inventions and/or
discoveries covered by the patents applications owned by or under the Control
of the Foundation as of the Effective Date and listed in Exhibit A hereto,
including, without limitation, all substitutions, continuations,
continuations-in-part, divisions, reissues and extensions thereof, together
with any foreign counterparts thereof and any and all patents issuing thereon.
1.11 "TERM" shall have the meaning set forth in Section 8.1.
1.12 "THIRD PARTY" means any entity other than the Company or the
Foundation or an Affiliate of the Company or the Foundation.
1.13 "UNIVERSITY" means San Diego State University.
1.14 "VALID CLAIM" means a claim of an issued patent covered by the
Patent Rights or any Future Inventions, which claim has not lapsed, been
canceled or become abandoned and has not been declared invalid by an
unreversed and unappealable decision or judgment of a court or other
appropriate body of competent jurisdiction, and which has not been admitted
to be invalid or unenforceable through reissue or disclaimer.
*CONFIDENTIAL TREATMENT REQUESTED
2.
ARTICLE 2
GRANT OF LICENSE
2.1 LICENSE GRANT. Subject to the terms and conditions of this
Agreement and during the Term, the Foundation hereby grants to the Company an
exclusive, worldwide license, including the right to grant unlimited
sublicenses, to practice the Licensed Technology to develop, make, have made,
use, have used, offer for sale, sell and import products and processes, the
manufacture, use or sale of which is covered by the Patent Rights or which
otherwise uses or incorporates the Know-How.
2.2 SUBLICENSES. The Company shall have the unlimited right to
sublicense or assign the rights granted to it by the Foundation hereunder.
The Company shall notify any sublicensee hereunder of all rights and
obligations of the Company under this Agreement which are sublicensed to such
sublicensee. The Company shall notify the Foundation of any sublicense to the
Licensed Technology granted hereunder.
2.3 FUTURE INVENTIONS.
(a) The Foundation will promptly notify the Company of any
and all Future Inventions. The Company shall notify the Foundation in writing
of its belief that a Future Invention is relevant to its commercial interests
within [... *** ...] following receipt of written notice of such Future
Invention.
(b) The Foundation hereby grants to the Company an
exclusive, worldwide license, including the unlimited right to grant
sublicenses, to use and practice any and all Future Inventions. The
Foundation and the University will take all actions necessary or appropriate
to effect such license. The term of the license for each Future Invention
shall begin on the Effective Date and shall end on the expiration of the last
to expire issued patent for such Future Invention or, if no patent issues
under such Future Invention, 15 years after receipt by the Company of such
Future Invention.
ARTICLE 3
LICENSE FEE; ROYALTIES; MILESTONE PAYMENTS
3.1 LICENSE FEE. Upon the closing of the Company's first preferred
stock financing, the Company agrees to pay the Foundation a one-time,
non-refundable license fee of (a) a number of shares of Common Stock of the
Company equal to [... *** ...] % of the outstanding shares of Common Stock of
the Company immediately prior to the closing of the Company's first preferred
stock financing, and (b) $[... *** ...] in cash.
3.2 ROYALTIES.
(a) The Company will pay the Foundation a royalty equal to
[... *** ...]% of up-front fees, royalties and milestone payments received by
the Company or any of its Affiliates from any Third Party for the license of
any FDA-approved new chemical entity discovered or developed by the Company
through the use of any invention within the scope of any Valid Claim; provided
*CONFIDENTIAL TREATMENT REQUESTED
3.
that total royalties payable by the Company on royalties received with
respect to such new chemical entity from all parties (including royalties
payable to the Foundation) do not exceed [... *** ...]%. If total royalties
payable by the Company on royalties received with respect to such new
chemical entity from all parties (including royalties payable to the
Foundation) exceed [... *** ...]%, then the royalty payable to the Foundation
under this Section 3.2(a) will be reduced on a pro-rata basis with royalties
owed by the Company to all other parties so that the total royalties payable
by the Company equal [... *** ...]%; PROVIDED, HOWEVER, that in no event will
the royalty payable to the Foundation with respect to such new chemical
entity be reduced to an amount less than [... *** ...]%.
(b) The Company will pay the Foundation a royalty equal to
[... *** ...]% of up-front fees, royalties and milestone payments received by
the Company or any of its Affiliates from any Third Party for the sale of a
Lead Compound; provided that the total royalty payable to the Foundation
under this Section 3.2(b) with respect to amounts received for the sale of
all such Lead Compounds will not exceed $[... *** ...].
(c) The Company will pay the Foundation a royalty equal to
[... *** ...]% of up-front fees, royalties and milestone payments received by
the Company or any of its Affiliates from any Third Party for the sale of a
Drug Target; provided that the total royalty payable to the Foundation under
this Section 3.2(c) with respect to amounts received for the sale of all such
Drug Targets will not exceed $[... *** ...].
(d) The Company will make royalty payments under this
Section 3.2 until expiration of the applicable patent included in the Patent
Rights. Royalties will be payable by the Company under this Section 3.2
regardless of whether the applicable up-front fees, royalties and milestone
payments are received before or after such patent issues. In the event that
no patent included in the Patent Rights issues, no royalties will be payable
by the Company.
(e) Notwithstanding the foregoing, no royalties will be
payable to the Foundation on any amounts received by the Company for data,
research and development partnerships, equity investments at fair market
value or pre-commercialization consultation.
3.3 MILESTONE PAYMENTS. The Company agrees to make a one-time
payment to the Foundation of $[... *** ...] in cash within 10 days following
[... *** ...].
ARTICLE 4
PAYMENTS; RECORDS; AUDITS
4.1 PAYMENT; REPORTS. Royalty payments shall be calculated and
reported for each calendar quarter. All royalty payments due to the
Foundation under this Agreement shall be paid within 60 days of the end of
each calendar quarter, unless otherwise specifically provided herein. Each
payment of royalties shall be accompanied by a report in sufficient detail to
permit confirmation of the accuracy of the royalty payment made, including,
without limitation, the
*CONFIDENTIAL TREATMENT REQUESTED
4.
royalties payable in U.S. dollars, the method used to calculate the royalty
and the exchange rates used.
4.2 EXCHANGE RATE; MANNER AND PLACE OF PAYMENT. All payments
hereunder shall be payable in U.S. dollars. With respect to each quarter, for
countries other than the United States, whenever conversion of payments from
any foreign currency shall be required, such conversion shall be made at the
rate of exchange reported in The Wall Street Journal on the last business day
of the applicable reporting period. All payments owed under this Agreement
shall be made by wire transfer, unless otherwise specified by the Foundation.
4.3 RECORDS AND AUDITS. During the Term and for a period of five
years thereafter, the Company shall keep complete and accurate records in
sufficient detail to permit the Foundation to confirm the accuracy of all
payments due hereunder. The Foundation shall have the right to cause an
independent, certified public accountant reasonably acceptable to the Company
to audit such records to confirm royalty payments for the preceding year.
Such audits may be exercised during normal business hours no more than once
in any 12-month period upon at least 30 working days' prior written notice to
the Company. The Foundation shall bear the full cost of such audit unless
such audit discloses an underpayment by more than 5% of the amount due under
this Agreement. In such case, the Company shall bear the full cost of such
audit.
4.4 TAXES. All turnover and other taxes levied on account of the
royalties and other payments accruing to the Foundation under this Agreement
shall be paid by the Foundation for its own account, including taxes levied
thereon as income to the Foundation. If provision is made in law or
regulation for withholding, such tax shall be deducted from the royalty or
other payment made by the Company to the proper taxing authority and a
receipt of payment of the tax secured and promptly delivered to the
Foundation. Each party agrees to assist the other party in claiming exemption
from such deductions or withholdings under any double taxation or similar
agreement or treaty from time to time in force.
4.5 PROHIBITED PAYMENTS. Notwithstanding any other provision of this
Agreement, if the Company is prevented from paying any such royalty by virtue
of the statutes, laws, codes or governmental regulations of the country from
which the payment is to be made, then such royalty may be paid by depositing
funds in the currency in which accrued to the Foundation's account in a bank
acceptable to the Foundation in the country whose currency is involved.
ARTICLE 5
CONFIDENTIALITY
5.1 CONFIDENTIALITY OBLIGATION. During the Term and for a period of
five years thereafter, each party hereto will maintain in confidence all
Confidential Information disclosed to it by the other party hereto. Neither
party will use, disclose or grant use of such Confidential Information of the
other party, except as expressly authorized by this Agreement. Each party may
disclose to its employees, agents and consultants Confidential Information of
the other party to accomplish the purposes of this Agreement and will obtain
prior agreement from such employees, agents and consultants to whom
disclosure is to be made to hold in confidence and
5.
not make use of such information for any purposes other than those permitted
by this Agreement. Each party will use at least the same standard of care as
it uses to protect its own trade secrets or proprietary information to ensure
that such employees, agents and consultants do not disclose or make any
unauthorized use of such Confidential Information. Each party will promptly
notify the other upon discovery of any unauthorized use or disclosure of
Confidential Information.
5.2 EXCEPTIONS. The obligations of confidentiality contained in
Section 5.1 will not apply to the extent that it can be established by the
receiving party by competent proof that such Confidential Information:
(a) was already known to the receiving party, other than
under an obligation of confidentiality, at the time of disclosure by the
other party;
(b) was generally available to the public or otherwise part
of the public domain at the time of its disclosure by the other party;
(c) 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
(d) was disclosed to the receiving party, other than under
an obligation of confidentiality, by a Third Party who had no obligation to
the other party not to disclose such information to others.
5.3 AUTHORIZED DISCLOSURE. Each party may disclose the Confidential
Information to the extent such disclosure is reasonably necessary to file or
prosecute patent applications, to prosecute or defend litigation or to comply
with applicable governmental regulations; PROVIDED, HOWEVER, that if such
party is required to make any such disclosure of Confidential Information it
will to the extent practicable give reasonable advance notice to the other
party of such disclosure requirement and, except to the extent inappropriate
in the case of patent applications, will use its best efforts to secure
confidential treatment of such information required to be disclosed.
5.4 PUBLICATION. During the Term, the Foundation and the Company
each acknowledge the other party's interest in publishing certain of its
results to obtain recognition within the scientific community and to advance
the state of scientific knowledge. Each party also recognizes the mutual
interest in obtaining valid patent protection and maintaining as confidential
any non-patentable methods which would have commercial value when
undisclosed. Consequently, either party, its employees or consultants wishing
to make a publication (including any oral disclosure made without obligation
of confidentiality) relating to the Licensed Technology (the "Publishing
Party") shall transmit to the other party (the "Reviewing Party") a copy of
the proposed written publication at least 60 days prior to submission for
publication, or an outline of such oral disclosure at least 30 days prior to
presentation. The Reviewing Party shall have the right (a) to propose
modifications to the publication for patent protection of trade secret or
other reasons and (b) to request a delay in publication in order to protect
patentable information. If the Reviewing Party requests such a delay, the
Publishing
6.
Party shall delay submission or presentation of the publication for a period
of 90 days to enable patent applications protecting each party's rights in
such information to be filed. If the Reviewing Party reasonably claims that
such information, whether or not patentable, may have significant commercial
value and can be maintained as a trade secret, the Publishing Party shall
publish or disclose only such information which would not adversely affect
such commercial value. Upon the expiration of 60 days or 30 days from
transmission to the Reviewing Party, the Publishing Party shall be free to
proceed with the written publication or the presentation, respectively,
unless the Reviewing Party has requested the delay described above.
Notwithstanding the foregoing, the Foundation hereby agrees that it will not
publish Allyn Forsyth's thesis until patents have issued worldwide on all
patent applications within the Patent Rights.
ARTICLE 6
INTELLECTUAL PROPERTY RIGHTS
6.1 OWNERSHIP. Ownership of inventions shall be determined in
accordance with the rules of inventorship under United States patent law. The
Company shall have sole ownership of all inventions, discoveries,
developments and improvements conceived of and reduced to practice solely by
its employees or agents, and all patent applications and patents claiming
such inventions, discoveries, developments and improvements. The Foundation
shall have sole ownership of all Licensed Technology and all inventions,
discoveries, developments and improvements conceived of and reduced to
practice solely by its employees and agents, and all patent applications and
patents claiming such inventions, discoveries, developments and improvements.
All inventions conceived of and reduced to practice jointly by employees or
agents of the Company and employees or agents of the Foundation, and all
patent applications and patents claiming such inventions, discoveries,
developments and improvements, shall be owned jointly by the Company and the
Foundation.
6.2 APPLICATION, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS. From
and after the Effective Date, the Company shall, at its expense, be
responsible for filing, prosecuting and maintaining patents and/or patent
applications worldwide for those inventions covered by the Patent Rights or
any Future Inventions. The Company will keep the Foundation advised of the
status of the filing, prosecution and maintenance of the Patent Rights and/or
any Future Inventions and will provide to the Foundation copies of official
actions, amendments and responses with respect to such filing, prosecution
and maintenance. In the event that the Company desires to abandon any Patent
Rights or Future Inventions, or if the Company later declines responsibility
for any Patent Rights or Future Inventions, the Company shall provide
reasonable prior written notice to the Foundation of such intention to
abandon or decline responsibility, and the Foundation shall have the right,
at its expense, to file, prosecute, and maintain such Patent Rights or Future
Inventions.
6.3 INFRINGEMENT BY THIRD PARTIES. The Company and the Foundation
shall promptly notify the other in writing of any alleged or threatened
infringement of any patent or patent application covered by the Patent Rights
or any Future Inventions of which they become aware. Both parties shall use
their best efforts in cooperating with each other to terminate such
7.
infringement without litigation. The Company shall have the first right to
bring and control any action or proceeding with respect to such infringement,
at its own expense and by counsel of its own choice, and the Foundation shall
have the right, at its own expense, to participate in such action by counsel
of its own choice if there are claims or defenses which are not shared with
the Company, or if the Company fails to prosecute or raise claims or defenses
that are shared by the Company and the Foundation. If the Company fails to
bring an action or proceeding within (a) 90 days following the notice of
alleged infringement or (b) 10 days before the time limit, if any, set forth
in the appropriate laws and regulations for the filing of such actions,
whichever comes first, the Foundation shall have the right to bring and
control any such action, at its own expense and by counsel of its own choice,
and the Company shall have the right, at its own expense, to be represented
in any such action by counsel of its own choice. In the event a party brings
an infringement action, the other party shall cooperate fully, including if
required to bring such action, the furnishing of a power of attorney. Neither
party shall have the right to settle any patent infringement litigation under
this Section 6.3 in a manner that diminishes the rights or interests of the
other party without the consent of such other party. Except as otherwise
agreed to by the parties as part of a cost sharing arrangement, any recovery
realized as a result of such litigation, after reimbursement of any
litigation expenses of the Company and the Foundation, shall belong to the
party who brought the action.
6.4 INFRINGEMENT OF THIRD PARTY RIGHTS. The Company and the
Foundation shall promptly notify the other in writing of any allegation by a
Third Party that the exercise of the rights granted to the Company under this
Agreement infringes or may infringe the intellectual property rights of such
Third Party. The Company shall have the first right to control any defense of
such claim, at its own expense and by counsel of its own choice, and the
Foundation shall have the right, at its own expense, to participate in such
action by counsel of its own choice if there are counterclaims or defenses
which are not shared with the Company, or if the Company fails to prosecute
or raise counterclaims or defenses that are shared by the Company and the
Foundation. If the Company fails to proceed in a timely fashion with regard
to such defense, the Foundation shall have the right to control any such
defense of such claim at its own expense and by counsel of its own choice,
and the Company shall have the right, at its own expense, to be represented
in any such action by counsel of its own choice. Neither party shall have the
right to settle any patent infringement litigation under this Section 6.4 in
a manner that diminishes the rights or interests of the other party or
obligates the other party to make any payment or take any action without the
consent of such other party.
ARTICLE 7
REPRESENTATIONS, WARRANTIES AND COVENANTS
7.1 CORPORATE POWER. Each party hereby represents and warrants that
it is duly organized and validly existing under the laws of the state of its
incorporation and has full corporate power and authority to enter into this
Agreement and to carry out the provisions hereof.
7.2 DUE AUTHORIZATION. Each party hereby represents and warrants
that such party is duly authorized to execute and deliver this Agreement and
to perform its obligations hereunder.
8.
7.3 BINDING AGREEMENT. Each party hereby represents and warrants
that this Agreement is a legal and valid obligation binding upon it and is
enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by such party does not conflict with any
agreement, instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or regulation of any
court, governmental body or administrative or other agency having authority
over it.
7.4 OWNERSHIP OF PATENT RIGHTS. The Foundation represents and
warrants that (a) it is the sole owner of all right, title and interest in
and to the Patent Rights, (b) it has not granted any license under the Patent
Rights to any Third Party and is under no obligation to grant any such
license except to the Company, and (c) there are no outstanding liens,
encumbrances, agreements or understandings of any kind, either written, oral
or implied, regarding the Patent Rights which are inconsistent or in conflict
with this Agreement.
7.5 PATENT PROCEEDINGS. The Foundation represents and warrants that,
to the best of its knowledge, no patent application within the Patent Rights
is the subject of any pending interference, opposition, cancellation or other
protest proceeding.
7.6 DUE DILIGENCE. The Company agrees to use commercially reasonable
efforts to commercialize the Licensed Technology. If the Foundation believes
that the Company is not pursuing this objective, then the Foundation may seek
resolution according to Article 9 of this Agreement.
7.7 DISCLAIMER OF WARRANTIES. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY TO THE OTHER
PARTY OF ANY NATURE, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY
WARRANTY OF NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
7.8 INDEMNIFICATION BY THE COMPANY. The Company hereby agrees to
save, defend and hold harmless the Foundation and its trustees, officers,
employees, students and agents from and against any and all suits, claims,
actions demands, liabilities, expenses and losses, including reasonable legal
expense and attorneys' fees ("Losses"), arising directly or indirectly the
breach of any representation or warranty made by the Company hereunder or out
of the practice by the Company of the license granted hereunder, except to
the extent such Losses result from the negligence or the willful misconduct
of the Foundation. In the event the Foundation seeks indemnification under
this Section 7.8, the Foundation shall inform the Company of a claim as soon
as reasonably practicable after the Foundation receives notice of the claim,
shall permit the Company to assume direction and control of the defense of
the claim (including the right to settle the claim solely for monetary
consideration), and shall cooperate as requested (at the expense of the
Company) in the defense of the claim.
7.9 INDEMNIFICATION BY THE FOUNDATION. The Foundation hereby agrees
to save, defend and hold harmless the Company from and against any and all
Losses arising directly or indirectly out of the breach of any representation
or warranty made by the Foundation hereunder,
9.
except to the extent such Losses result from the negligence or the willful
misconduct of the Company. In the event the Company seeks indemnification
under this Section 7.9, the Company shall inform the Foundation of a claim as
soon as reasonably practicable after the Company receives notice of the
claim, shall permit the Foundation to assume direction and control of the
defense of the claim (including the right to settle the claim solely for
monetary consideration), and shall cooperate as requested (at the expense of
the Foundation) in the defense of the claim.
ARTICLE 8
TERM; TERMINATION
8.1 TERM. The term of this Agreement (the "Term") shall begin on the
Effective Date and shall end on the expiration of the last to expire of the
issued patents under the Licensed Technology or, if no patent issues under
the Licensed Technology, 15 years after the Effective Date, unless terminated
earlier in accordance with the terms of this Agreement. Following the
expiration of this Agreement in accordance with this Section 8.1, the Company
shall have a license on the same terms as set forth in Section 2.1, except
that the license shall be a non-exclusive, fully-paid, irrevocable license.
8.2 TERMINATION. Either party may terminate this Agreement prior to
the expiration of the Term upon the occurrence of any of the following:
(a) Upon or after the bankruptcy, insolvency, dissolution
or winding up of the other party (other than dissolution or winding up for
the purposes of reconstruction or amalgamation); or
(b) Upon or after the breach of any material provision of
this Agreement by the other party if the breaching party has not cured such
breach within 60 days after written notice thereof by the other party.
8.3 EFFECT OF TERMINATION. Upon any termination of this Agreement by
the Foundation pursuant to Section 8.2, all rights to the Licensed Technology
will revert to the Foundation. Upon any termination of this Agreement by the
Company pursuant to Section 8.2, the license granted under Section 2.1 shall
remain in effect so long as the Company does not breach its obligations to
the Foundation under this Agreement. Expiration or termination of this
Agreement shall not relieve the parties of any obligation accruing prior to
such expiration or termination. The provisions of Sections 2.3, 4.3, 6.1,
7.7, 7.8, 7.9 and 8.3 and Articles 5, 9 and 10 shall survive termination or
expiration of this Agreement.
ARTICLE 9
DISPUTE RESOLUTION
9.1 DISPUTES. The parties recognize that disputes as to certain
matters may from time to time arise which relate to either party's rights
and/or obligations hereunder. It is the objective of the parties to establish
procedures to facilitate the resolution of such disputes in an expedient
10.
manner by mutual cooperation and without resort to litigation. To accomplish
this objective, the parties agree to follow the procedures set forth in this
Article 9 if and when such a dispute arises between the parties.
9.2 PROCEDURE. If a dispute arises between the parties relating to
the interpretation or performance of this Agreement or the grounds for the
termination thereof, and the parties cannot resolve the dispute within 30
days of a written request by either party to the other, the parties agree to
hold a meeting, attended by individuals with decision-making authority
regarding the dispute, to attempt in good faith to negotiate a resolution of
the dispute prior to pursuing other available remedies. If, within 30 days
after such meeting, the parties have not succeeded in negotiating a
resolution of the dispute, such dispute shall be submitted to final and
binding arbitration under the then current commercial rules and regulations
of the American Arbitration Association ("AAA") relating to voluntary
arbitrations in San Diego, California. The arbitration shall be conducted by
one arbitrator, who is knowledgeable in the subject matter at issue in the
dispute and who will be selected by mutual agreement of the parties or,
failing such agreement, shall be selected in accordance with the AAA rules.
Each party shall initially bear its own costs and legal fees associated with
such arbitration. The prevailing party in any such arbitration shall be
entitled to recover from the other party the reasonable attorneys' fees,
costs and expenses incurred by such prevailing party in connection with such
arbitration. The decision of the arbitrator shall be final and may be sued on
or enforced by the party in whose favor it runs in any court of competent
jurisdiction.
ARTICLE 10
MISCELLANEOUS
10.1 RIGHTS OF U.S. GOVERNMENT. The U.S. Government shall have a
worldwide, non-exclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced for or on behalf of the United States the Licensed
Technology.
10.2 FORCE MAJEURE. Neither party shall be held liable or
responsible to the other party nor be deemed to have defaulted under or
breached this Agreement for failure or delay in fulfilling or performing any
term of this Agreement when such failure or delay is caused by or results
from causes beyond the reasonable control of the affected party, including,
without limitation, fire, floods, embargoes, war, acts of war (whether war be
declared or not), insurrections, riots, civil commotions, strikes, lockouts
or other labor disturbances, acts of God or acts, omissions or delays in
acting by any governmental authority or the other party.
10.3 ASSIGNMENT. This Agreement may not be assigned or otherwise
transferred, nor, except as expressly provided hereunder, may any right or
obligations hereunder be assigned or transferred, by either party without the
written consent of the other party; PROVIDED, HOWEVER, that either party may,
without such consent, assign this Agreement and its rights and obligations
hereunder (a) in connection with the transfer or sale of all or substantially
all of its business, if such assets include substantially all of the assets
relating to its performance of its respective obligations hereunder, (b) to
an Affiliate or (c) in the event of its merger or consolidation with another
company at any time during the term of this Agreement. Any purported
assignment in
11.
violation of this Section 10.3 shall be void. The rights and obligations of
the parties under this Agreement will be binding upon the heirs, successors
and permitted assigns of the parties.
10.4 PUBLICITY. The parties agree that neither party will originate
any press release or other public announcement, written or oral, or otherwise
make any disclosure relating to the existence or terms of or performance
under this Agreement without the prior written approval of the other party,
except as may otherwise be required by law.
10.5 SEVERABILITY. In case any provision of this Agreement shall be
invalid, illegal or unenforceable, the validity, legality and enforceability
of the remaining provisions shall not in any way be affected or impaired
thereby.
10.6 NOTICES. Any notices or communications provided for in this
Agreement to be made by either of the parties to the other shall be in
writing and delivered personally or sent by United States mail, registered or
certified, postage paid, by overnight delivery service such as FedEx or UPS
or by facsimile, with confirmation of receipt, addressed as follows:
IF TO THE COMPANY: RAJYABIOTICS
8415 La Jolla Scenic Drive
San Diego, CA 92037
Attn: Judith W. Zyskind, Ph.D.
Phone No. (619) 594-6597
Fax No. (619) 594-0355
IF TO THE FOUNDATION: SAN DIEGO STATE UNIVERSITY FOUNDATION
5250 Campanile Drive
San Diego, CA 92182-1934
Attn: Frank J. DiSanto, Director
Grants and Contracts Administration
Phone No. (619) 594-1052
Fax No. (619) 594-4950
Either party may by like notice specify or change an address to
which notices and communications shall thereafter be sent. Notices sent by
facsimile shall be effective upon confirmation of receipt, notices sent by
mail or overnight delivery service shall be effective upon receipt, and
notices given personally shall be effective when delivered.
10.7 GOVERNING LAW. This Agreement shall be governed by, and
construed and enforced in accordance with, the laws of the State of
California, without regard to its choice of law provisions, and any
applicable laws of the United States.
10.8 ENTIRE AGREEMENT; AMENDMENT. This Agreement sets forth all of
the covenants, promises, agreements, warranties, representations, conditions
and understandings between the parties hereto with respect to the subject
matter of this Agreement, and supersedes and terminates all prior agreements
and understanding between the parties with respect to the subject matter of
this Agreement. There are no covenants, promises, agreements, warranties,
representations
12.
conditions or understandings with respect to the subject matter hereof,
either oral or written, between the parties other than as set forth herein.
No subsequent alteration, amendment, change or addition to this Agreement
shall be binding upon the parties hereto unless reduced to writing and signed
by the respective authorized officers of the parties.
10.9 HEADINGS. The captions contained in this Agreement are not a
part of this Agreement, but are merely guides or labels to assist in locating
and reading the several Articles hereof.
10.10 INDEPENDENT CONTRACTORS. It is expressly agreed that the
Foundation and the Company shall be independent contractors and that the
relationship between the two parties shall not constitute a partnership,
joint venture or agency of any kind. Neither party shall have the authority
to make any statements, representations or commitments of any kind, or to
take any action, which shall be binding on the other, without the prior
written consent of the other party.
10.11 WAIVER. Except as specifically provided for herein, the waiver
from time to time by either of the parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a
continuing waiver of the same rights or remedies or of any other of such
party's rights or remedies provided in this Agreement.
10.12 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
13.
IN WITNESS WHEREOF, the parties have executed this
Agreement as of the date first set forth above.
RAJYABIOTICS
By: /s/ Judith Zyskind
-------------------------------------------------
Name: Judith W. Zyskind
-----------------------------------------------
Title: President
----------------------------------------------
SAN DIEGO STATE UNIVERSITY FOUNDATION
By: /s/ Frank J. DiSanto
-------------------------------------------------
Name: Frank J. DiSanto
-----------------------------------------------
Title: Director, Grants & Contracts
----------------------------------------------
THE UNDERSIGNED ACKNOWLEDGES AND AGREES TO THE PROVISIONS
OF SECTION 2.3 OF THIS AGREEMENT:
SAN DIEGO STATE UNIVERSITY
By: /s/ James W. Cobble
-------------------------------------------------
Name: James W. Cobble
-----------------------------------------------
Title: Dean of the Graduate Division and Vice
President for Research
----------------------------------------------
LICENSE AGREEMENT
EXHIBIT A
PATENT RIGHTS
All subject matter disclosed and/or claimed in U.S. Patent Application No.
[... *** ...] filed [... *** ...], entitled [... *** ...].
*CONFIDENTIAL TREATMENT REQUESTED