NEURON LOSS PROTECTION TECHNOLOGY
LICENSE AGREEMENT
Effective as of the 13th day of April, 1993 (the "Effective Date")
between the University of Kentucky Research Foundation, a corporation duly
organized and existing under the laws of the Commonwealth of Kentucky, and
having its principal place of business at 207 Administration Building,
Lexington, Kentucky, 40506 ("UKRF") and Apollo Genetics, Inc., a corporation
duly organized and existing under the laws of the State of Delaware, and
having its principal place of business at 222 Third Street, Suite 3121,
Cambridge, Massachusetts 02142 ("Licensee"), hereby agree as follows:
1. BASIS OF AGREEMENT. UKRF is the owner of Neuron Loss Protection
Technology as later defined herein and desires to have such technology
utilized to promote the public interest by granting a license thereunder.
Licensee has a commitment to facilitate the development of such technology
for the public interest. It is the desire and interest of the parties that
Licensee obtain a license from UKRF to utilize such technology. The purpose
of this Agreement is to set forth the terms and conditions under which UKRF
will grant and Licensee will accept said license.
2. DEFINITIONS.
2.1. "NEURON LOSS PROTECTION TECHNOLOGY" shall mean [*]
2.2. "PATENT RIGHTS" shall mean any United States or foreign patent
applications or any patents issuing thereon directed to the invention or
inventions set forth in University of Kentucky I.P.C. Case [*]
owned by, or assignable to, UKRF, together with any division,
reissue, continuation, continuation in part, extension, or addition thereof.
2.3. "LICENSED PRODUCT" shall mean any product which is covered in whole
or in part by (i) a pending claim contained in a Patent Rights application in
the country in which the Licensed Product is made, used, or sold, or (ii) a
valid and unexpired claim contained in a Patent Rights patent in the country
in which the Licensed Product is made, used or sold. A valid claim is any
* Confidential treatment has been requested for marked portion
claim that has not been held invalid or unenforceable by a court of competent
jurisdiction.
2.4. "LICENSED PROCESS" shall mean any process which is covered in whole
or in part by (i) a pending claim contained in a Patent Rights application in
the country in which the Licensed Process is, used, or sold, or (ii) a valid
and unexpired claim contained in a Patent Rights patent in the country in
which the Licensed Process is used or sold. A valid claim is any claim that
has not been held invalid or unenforceable by a court of competent
jurisdiction.
2.5. "NET SALES" shall mean the gross amount invoiced by Licensee and
its Affiliates from the sales of Licensed Products or Licensed Processes to
independent third parties less:
[ * ]
Licensed Products and Licensed Processes shall be considered "sold" when
invoiced.
2.6. "SUBLICENSE INCOME" shall mean the net royalties (including
advanced royalties or "lump-sum" payments) actually received by Licensee from
non-affiliated third party sublicensees under the license herein granted,
after the deduction of all reasonable legal costs actually incurred by
Licensee in connection with the negotiation and procurement of the pertinent
sublicenses.
2.7. "AFFILIATE" shall mean any corporation or other business entity
controlled by, controlling, or under common control with Licensee. For this
purpose "control" means direct or indirect beneficial ownership of at least
fifty percent (50%) interest in the income or stock of such corporation or
other business.
3. GRANT.
3.1. UKRF hereby grants to Licensee, subject to all the terms and
conditions of this Agreement, the exclusive right and license to make, have
made, use, lease and sell the Licensed Products throughout the world.
* Confidential treatment has been requested for marked portion
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3.2. Licensee shall have the right to sublicense worldwide any of the
rights, privileges and licenses granted hereunder.
4. DUE DILIGENCE.
4.1. Licensee agrees to work diligently to bring one or more Licensed
Products or Licensed Processes to the marketplace through a program of
development, production and distribution, including sponsoring of research at
UKRF pursuant to the Sponsored Research Agreement between UKRF and Licensee,
providing UKRF with a minimum of $[ * ] per year for [ * ], in
substantially the form of Exhibit 1 attached hereto.
4.2. Licensee shall provide an annual report on its development efforts
to UKRF, which report shall cite specific goals and objectives in
commercializing the licensed technology and progress in meeting these goals
and objectives.
5. ROYALTIES.
5.1. In consideration of the license granted hereunder by UKRF to
Licensee, Licensee shall pay an earned royalty of [ * ] percent ([ * ]%) of
Net Sales of Licensed Products and Licensed Processes by Licensee and its
sublicensed Affiliates.
5.2. In the event Licensee grants any sublicenses to nonaffiliated third
parties during the term of this Agreement, then for each such sublicense,
Licensee shall pay UKRF an additional royalty at the rate of [ * ]
percent ([ * ]%) of the Sublicense Income collected by Licensee under such
sublicense.
6. REPORTS, RECORDS AND ROYALTY PAYMENTS.
6.1. RECORDS. Licensee shall keep adequate and complete records showing
all Licensed Products and Licensed Processes sold and Net Royalties received,
with respect to which earned royalties and additional royalties are due under
this Agreement. Such records shall include all information necessary to
verify the total amount and computation of earned royalties and additional
royalties due hereunder, and shall be open to inspection on behalf of UKRF
upon reasonable notice during reasonable business hours to the extent
necessary to verify the amount thereof. Such inspection shall be made not
more often than once each calendar year at the expense of UKRF by a Certified
Public Account appointed by UKRF and to whom Licensee has no reasonable
objection. Licensee shall not be required to retain such records for more
than five (5) years after the close of any calendar half year.
6.2. REPORTS. The last day of each February and November throughout the
term of this Agreement and upon a final accounting, Licensee shall furnish
UKRF with a written report, signed by an authorized representative of
Licensee, showing (a)
* Confidential treatment has been requested for marked portion
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the total Net Sales of all Licensed Products and the total Net Sales of all
Licensed Processes sold by Licensee and its sublicensed Affiliates in each
country during the preceding calendar half-year; (b) the total amount of
Sublicense Income received by Licensee and its Affiliates from non-affiliated
sublicensees under this license during the preceding calendar half year; (c)
the amount of royalties due on Licensed Products and Licensed Processes sold
by Licensee and its sublicensed Affiliates during the preceding calendar half
year, computed pursuant to the provisions of Section 5.1 hereof; and (d) the
amount of UKRF's pro data share of such Sublicense Income received by
Licensee and its Affiliates during the preceding calendar half year, computed
pursuant to the provisions of Section 5.2 hereof.
6.3. ROYALTY PAYMENTS. With each such half-yearly report, Licensee
shall remit to UKRF the total amount of royalties shown thereby to be due,
subject to any credits which may be taken by Licensee hereunder. Subject to
the provisions of Section 6.4 hereof, payment shall be made in lawful money
of the United States.
6.4. CURRENCY CONVERSION. All payments due hereunder from foreign sales
of Licensed Products and Licensed Processes from time to time shall be paid
in United States funds collectible at par in Boston, Massachusetts. For
purposes of computing such payments, the Net Sales shall first be determined
in the foreign funds for which such Licensed Products or Licensed Processes
are sold (herein called "selling funds") and then converted into its
equivalent in United States funds at either:
(a) the rate applicable to the transfer of funds arising from royalty
payments as established by the exchange control authorities of the country of
which selling funds are the national currency, for the last business day of
the accounting period for which payment is thus made; or
(b) if there is no applicable rate so established, then the selling rate
in United States funds as published by leading commercial banks in the major
city of the country of which selling funds are the national currency, for the
last business day of such accounting period; or
(c) if there is no rate so published, then the buying rate for selling
funds as published by First National Bank of Boston, N.A., for the last
business day of such accounting period.
7. PATENT PROSECUTION AND INFRINGEMENT.
7.1. Licensee shall, in the name of UKRF, apply for, seek prompt
issuance of, and maintain during the term of this Agreement any Patent Rights
in the United States and in foreign countries. The prosecution, filing and
maintenance of all patents shall be the primary responsibility of Licensee,
who
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shall consult with UKRF concerning the foregoing and provide copies of
pertinent filings to UKRF.
7.2. Payment of all fees and costs relating to the filing, prosecution
and maintenance of all patents shall be the responsibility of Licensee.
7.3.1. If at any time during the term of this Agreement, Licensee
furnishes to UKRF reasonably convincing written evidence of an infringement
of a patent included in the Patent Rights which adversely and substantially
affects the commercial operations of Licensee under the license granted
hereunder,and UKRF shall within three (3) months after receipt of such
evidence fail to cause such infringement to terminate or to bring a suit or
action to compel termination, then payment of royalties under Section 5
hereof shall be waived so long as such infringement continues; provided,
however, that such royalties shall not be so waived so long as at least one
suit or action is being prosecuted by UKRF for infringement of such patent.
7.3.2. If after said three (3) months, UKRF fails to cause such
infringement to terminate or to bring a suit or action to compel termination,
Licensee shall have the right, but not the obligation, to bring such suit or
action to compel termination and shall have the right for such purpose to
join UKRF as a party plaintiff at Licensee's expense. UKRF independently
shall have the right to join any such suit or action brought by Licensee and,
in such event, shall pay one-half of the cost of such suit or action from the
date of joining. No settlement, consent judgment or other voluntary final
disposition of the suit may be entered into without the consent of UKRF,
which consent shall not unreasonably be withheld. Any damages recovered by
such suit or action shall be first used to reimburse each party hereto for
the cost of such suit or action (including attorney's fees) actually paid by
each party hereto as the case may be, then to reimburse UKRF for any
royalties waived under this Section 7.3 and the residue, if any, shall be
divided equally between the parties hereto.
7.4. In the event that a declaratory judgment action alleging invalidity
or noninfringement of any of the Patent Rights shall be brought against
Licensee, UKRF, at its sole option, shall have the right, within thirty (30)
days after commencement of such action, to intervene and take over the sole
defense of the action at its own expense.
7.5. In any infringement suit as either party may institute to enforce
the Patent Rights pursuant to this Agreement, the other party hereto shall,
at the request and expense of the party initiating such suit, cooperate in
all respects and, to the extent possible, have its employees testify when
requested and make available relevant records, papers, information, samples
and the like.
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8. TERM AND TERMINATION.
8.1. Unless earlier terminated as hereinafter provided, this Agreement
shall remain in full force and effect until the last to expire of any patent
included in the Licensed Products.
8.2. If Licensee shall cease to carry on its business, this Agreement
shall terminate upon notice by UKRF.
8.3. Should Licensee fail to pay UKRF such royalties as are due and
payable hereunder, UKRF shall have the right to terminate this Agreement on
forty-five (45) days written notice, unless Licensee shall pay UKRF within
the forty-five day (45) notice period, all such royalties and interest that
are due and payable. Upon the expiration of the forty-five (45) day period,
if Licensee shall not have paid all such royalties and interest due and
payable, UKRF, at its sole option, may immediately terminate this Agreement
and all rights, privileges and license hereunder granted.
8.4. Licensee shall have the right to terminate this Agreement at any
time upon six (6) months written notice to UKRF, and upon payment of all
amounts due UKRF through the effective date of termination.
8.5. Upon any material breach or default of this Agreement by Licensee,
other than those delineated in Sections 8.2 and 8.3 which shall always take
precedence in that order over any material breach or default referred to in
this Section 8.5, UKRF shall have the right to terminate this Agreement and
the rights, privileges and license hereunder granted upon ninety (90) days
written notice to Licensee. Such termination shall become effective
immediately at the conclusion of such notice period unless Licensee shall
have cured any such breach or default prior to the expiration of the ninety
(90) day period.
8.6. Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. Licensee and its
sublicensed Affiliates and any non-affiliated third party sublicensees
thereof may, after the effective date of such termination, sell all Licensed
Products which are in inventory at the time of termination and Licensed
Processes for which inventory was received at the time of termination, and
complete and sell Licensed Products which Licensee can clearly demonstrate
were in the process of manufacture at the time of such termination, provided
that Licensee shall pay to UKRF the royalties thereon as required by Section
5 of this Agreement and shall submit the reports required by Section 5 hereof
on the sales of Licensed Products and Licensed Processes.
9. INDEMNIFICATION AND INSURANCE.
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9.1. Licensee shall indemnify, defend and hold harmless UKRF and its
trustees, officers, employees, and affiliates (the "Indemnitees"), against
any liability, damage, loss or expense (including reasonable attorneys' fees
and expenses of litigation) incurred by or imposed upon the Indemnitees, or
any one of them, in connection with any claims, suits, actions, demands or
judgments (a) arising out of the production, manufacture, sale, use in
commerce, or promotion by Licensee or by a licensee, affiliate or agent of
Licensee, or any product, process or service relating to, or developed
pursuant to, this Agreement or (b) arising out of any other activities to be
carried out pursuant to this Agreement.
9.2. Licensee's indemnification under Section 9.1(a) shall apply to any
liability, damage, loss or expense whether or not it is attributable to the
negligent activities of the Indemnitees. Licensee's indemnification under
Section 9.1(b) shall not apply to any liability, damage, loss or expense to
the extent that it is attributable to (i) the negligent activities of the
Indemnitees, or (ii) the intentional wrongdoing or intentional misconduct of
the Indemnitees.
9.3. At such time as any product, process or service relating to, or
developed pursuant to, this Agreement is being commercially distributed or
sold (other than for the purpose of obtaining regulatory approvals) by
Licensee or by a licensee, affiliate or agent of Licensee, Licensee shall, at
its sole cost and expense, procure and maintain policies of comprehensive
general liability insurance in amounts not less than One Million Dollars per
person per occurrence and naming the Indemnitees as additional insureds.
Such comprehensive general liability insurance shall provide (a) product
liability coverage; (b) broad form contractual liability coverage for
Licensee's indemnification under Sections 9.1 and 9.2 of this Agreement; and,
(c) a provision of non-cancellation except upon sixty (60) days written
notification to UKRF.
9.4. In the event any such action is commenced or claim made or
threatened against UKRF or other Indemnitees as to which Licensee is
obligated to indemnify it (them) or hold it (them) harmless, UKRF or the
other Indemnitees shall promptly notify Licensee of such event and Licensee
shall assume the defense of, and may settle, that part of any such claim or
action commenced or made against UKRF (or other Indemnitees) which relates to
Licensee's indemnification and Licensee may take such other steps as may he
necessary to protect itself. Licensee shall not be liable to UKRF or other
Indemnitees on account of any settlement of any such claim or litigation
affected without Licensee's consent. The right of Licensee to assume the
defense of any action shall be limited to that part of the action commenced
against UKRF and/or Indemnitees which relates to Licensee's obligations of
indemnification and holding harmless.
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9.5. This Section 9 shall survive expiration or termination of this
Agreement.
10. DISCLAIMER OF WARRANTIES.
10.1. UKRF MAKES NO WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT
LIMITATION, ANY IMPLED WARRANTIES OF MERCHANTABILITY OR OF FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO ANY TECHNICAL INFORMATION LICENSED OR
OTHERWISE PROVIDED TO LICENSEE HEREUNDER AND HEREBY DISCLAIMS THE SAME.
10.2. UKRF DOES NOT WARRANT THE VALIDITY OF THE TECHNOLOGY LICENSED
HEREUNDER AND MAKES NO REPRESENTATION WHATSOEVER WITH REGARD TO THE SCOPE OF
SUCH TECHNOLOGY OR THAT SUCH TECHNOLOGY MAY BE EXPLOITED BY LICENSEE,
AFFILIATES OR SUBLICENSEES WITHOUT INFRINGING ANY PATENTS. IF BIOLOGICAL
MATERIALS ARE LICENSED HEREUNDER, UKRF MAKES NO REPRESENTATION THAT SUCH
MATERIALS OR THE METHODS USED IN MAKING OR USING SUCH MATERIALS ARE FREE FROM
LIABILITY FOR PATENT INFRINGEMENT.
11. NOTICES.
11.1. All reports, notices and other communications from Licensee to
UKRF as provided hereunder shall be in writing and mailed or delivered to:
University of Kentucky Research Foundation
207 Administration Building
Lexington, Kentucky 40506
or other individuals or addresses as shall hereafter be furnished by written
notice to Licensee.
11.2. All reports, notices and other communications from UKRF to
Licensee as provided hereunder shall be in writing and mailed or delivered to:
Apollo Genetics, Inc.
222 Third Street, Suite 3121
Cambridge, Massachusetts 02142
with a copy to: Bromberg & Sunstein
10 West Street - 7th Floor
Boston, Massachusetts 02111
Attn: Bruce D. Sunstein
or other individuals or addresses as shall hereafter be furnished by written
notice to UKRF.
12. RESTRICTIONS ON USE OF NAMES. Licensee shall not use the names of
UKRF, its related entities and its employees, or any adaptations thereof, in
any advertising, promotional or sales literature or in any securities reports
required by the Securities and Exchange Commission, without the prior written
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consent of UKRF in each case; provided, however, that Licensee (a) may offer
to publications by employees of UKRF in the scientific literature or (b) may
state that a license from UKRF has been granted as herein provided.
13. MISCELLANEOUS.
13.1. For the purpose of this Agreement and all services to be provided
hereunder, both parties shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other. neither party shall
have authority to make any statements representations or commitments of any
kind, or to take any action, that will be binding on the other party.
13.2. If any one or more of the provisions of this Agreement shall be
held to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this Agreement shall not in any
way be affected or impaired thereby.
13.3. This Agreement shall be binding upon the parties, and their
successors and assigns.
13.4. This instrument contains the entire Agreement between the parties
hereto. No verbal agreement, conversation or representation between any
officers, agents, or employees of the parties hereto either before or after
the execution of this Agreement shall affect or modify any of the terms or
obligations herein contained.
13.5. No change, modification, extension, termination or waiver of this
Agreement, or any of the provisions herein contained, shall be valid unless
made in writing and signed by a duly authorized representative of each party.
13.6. The captions are provided for convenience and are not to be used
in construing this Agreement.
13.7. She parties agree that they have participated equally in the
formation of this Agreement and that the language herein should not he
presumptively construed against either of them.
13.8. This Agreement may be signed in counterparts which collectively
shall constitute a single agreement.
13.9. Neither party shall be in breach hereof by reason of its delay z
the performance of or failure to perform any of its obligations hereunder, if
that delay or failure is caused by strikes, acts of God or the public enemy,
riots, incendiaries, interference by civil or military authorities,
compliance with governmental priorities for materials, or any fault beyond
its control or without its fault or negligence.
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13.10. The parties each, at any time or from time to time, shall execute
and deliver or cause to be delivered such further assurances, instruments or
documents as may be reasonably necessary to fulfill the terms and conditions
of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives as of the date first above
written.
UNIVERSITY OF KENTUCKY RESEARCH FOUNDATION
By: /s/ Lee J. Magid
---------------------------------------
Name: Lee J. Magid
---------------------------------------
Title: Executive Director, U.K.R.F.
---------------------------------------
APOLLO GENETICS, INC.
/s/ Katherine Gordon
---------------------------------------------
Katherine Gordon, Ph.D
President
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Exhibit 1
UNIVERSITY OF KENTUCKY RESEARCH FOUNDATION
SPONSORED RESEARCH AGREEMENT
This Agreement has Expired
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