Exhibit 10.47
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
Licensing Agreement
This Agreement is made effective this 12th day of March 1999, by and between
Integrated DNA Technologies, Inc., a corporation organized and existing under
the laws of Iowa having offices at 1710 Commercial Park, Coralville, Iowa
(hereinafter called "IDT"), and Hybridon, Inc., a Delaware corporation having
its principal place of business at 155 Fortune Boulevard, Milford, Massachusetts
01757 (hereinafter called "Hybridon").
WHEREAS, IDT owns or controls certain technology, proprietary information, and
inventions hereinunder described as IDT Antisense Technology, and is willing to
grant a * * * License to Hybridon under the rights contained therein, according
to the terms hereunder described; and
WHEREAS, Hybridon owns or controls certain technology, proprietary information,
and inventions hereinunder described as Hybridon Antisense Technology, and is
willing to grant a * * * License to IDT under those rights, according to the
terms hereunder described;
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth below, the parties covenant and agree as follows:
Section 1. Definitions.
For the purpose of this Agreement, the following definitions shall
apply.
A. "Affiliates" shall mean any corporation, company, partnership, joint
venture or other entity, which controls, is controlled or under
common control with Hybridon or IDT as the case may be, and, in the
case of Hybridon, provided such entities agree in writing to be
bound by the terms and provisions of this Agreement, shall also mean
and include MethylGene Inc., and OriGenix Technologies Inc. For the
purposes of this definition, control shall mean the direct or
indirect ownership of at least fifty percent (50%) or, if less than
fifty percent (50%), the maximum percentage as allowed by applicable
law of (a) the stock shares entitled to vote for the election of
directors; or (b) ownership interest.
B. "Chimeric Antisense Technology" shall mean any oligonucleotide, the
nucleotide sequence of which has complementarity for and is
hybridizable to a nucleotide sequence within RNA transcribed from a
targeted gene, which oligonucleotide meets at least one of the two
sets of criteria described in Appendix B attached hereto.
C. "Confidential Information" shall mean this Agreement, and any and
all books, records, opinions of counsel and business information
required to be supplied to either Party under the terms of this
Agreement.
- 1 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
D. "Hybridon Antisense Technology" shall mean all Hybridon issued
patents, Hybridon filed patents applications, or patents acquired by
Hybridon as of or prior to the date of the signing of this
agreement, to the extent that the claims of such patents and patents
issuing from such applications fall within the scope of
oligonucleotides defined herein as Chimeric Antisense Technology.
E. "Hybridon Licensed Product" shall mean and include any material that
either (a) is covered by a claim of any patent within the definition
of Hybridon Antisense Technology; or (b) the manufacture, use or
sale of which would constitute, but for the license granted pursuant
to this Agreement, an infringement of any Valid Claim within the
definition of Hybridon Antisense Technology.
F. "Hybridon Sublicensed Product" shall mean any IDT Licensed Product
discovered and/or developed in whole or in part by Hybridon or its
Affiliates, which is sublicensed to a third party for manufacture,
development, distribution and/or commercialization.
G. "IDT Antisense Technology" shall mean Chimeric Antisense Technology
covered by one or more Valid Claims of * * * * * *; and all
divisional, reissues, and foreign counterparts claiming and entitled
to the right of priority from these patents and patent applications.
H. "IDT Licensed Product" shall mean and include any material or method
that either (a) is covered by a Valid Claim of any patent within the
definition of IDT Antisense Technology; or (b) the manufacture, use
or sale of which would constitute, but for the license granted
pursuant to this Agreement, an infringement of any Valid Claim
within the definition of IDT Antisense Technology.
I. "Interference Settlement Agreement" shall mean the Agreement signed
by the parties to United States Interference No. 104,041, attached
hereto as Attachment 1.
J. "License" shall mean the License granted to Hybridon and its
Affiliates for IDT Antisense Technology for Medical Applications
and/or the License granted to IDT and its Affiliates for Hybridon
Antisense Technology for Research Applications, as the case may be.
K. "Licensed Products" shall mean IDT Licensed Products and/or Hybridon
Licensed Products, as the case may be.
- 2 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
L. "Licensee" shall mean IDT and its Affiliates and/or Hybridon and its
Affiliates, as the case may be.
M. "Licensor" shall mean IDT and its Affiliates and/or Hybridon and its
Affiliates, as the case may be.
N. "Medical Applications" shall mean * * * * * * *, including without
limitation, * * * * * * * * *.
O. "Net Sales" shall mean the * * * * , from sales of * * * * * *: (i)
import, export, excise, good and services, sales or similar taxes
and custom duties; (ii) reasonable listed trade discounts, rebates
and allowances, as well as all returns; (iii) packing,
transportation, shipping, insurance and other similar charges
incurred in connection with and necessary for completion of such
dispositions; (iv) * * * * * * *; and (v) * * * * * * *.
Notwithstanding the foregoing, * * * * * * * * *. For purposes of
this Agreement, a distributor will not * * * * * and sales by * * *
* * * *.
P. "Research Applications" shall mean all * * * * * * including but not
limited to * * * * * * *, with the exception of * * * * * * *.
Q. " Valid Claim" shall mean a claim of an issued patent that has not
been ruled invalid or unenforceable by a court of competent
jurisdiction in an unappealed or unappealable decision.
Section 2. Grants of Licenses
A. IDT License to Hybridon.
IDT grants to Hybridon and its Affiliates, a * * * * * License to
make, use, offer to sell, import, and sell IDT Licensed Products for
all Medical Applications. The License granted to Hybridon and its
Affiliates shall be * * * ** * according to the terms and
restrictions as established in subsection 2C herein.
(i) * * * * *. IDT shall * * * * *, including, but not limited to, *
* * * *.
(ii)* * * * *. IDT shall not * * * * *, with such licenses having *
* * * * than those established herein, unless * * * * *. IDT
hereby * * * * * to make * * * * * to * * * * *, for any reason,
including but not limited to: (1) * * * * *; (2) the * ** * *;
and (3) any * * * * *. Under no circumstances shall* * * * * .
- 3 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
B. Hybridon License to IDT.
Hybridon grants to IDT and its Affiliates * * * * * license to
use, manufacture, offer to sell, import and sell Hybridon Licensed
Products for Research Applications.
(i) * * * * *. Hybridon shall * * * * *.
(ii) * * * * *. Hybridon shall not * * * * *, unless * * * * *.
(iii) License Clarified. Within sixty (60) days of the signing of
this Agreement, Hybridon shall deliver to IDT a complete
list of patents and patent applications owned by, and
assigned or exclusively licensed to Hybridon included in
the definition of Hybridon Antisense Technology. The list
shall be identified as Appendix A and will be incorporated
into this Agreement upon acceptance by IDT.
C. Sublicenses.
(i) Upon grant of the license, Hybridon and its Affiliates may
grant written sublicenses to third parties for the
manufacture, development, distribution, and/or
commercialization of any IDT Licensed Product discovered
and/or developed in whole or in part by Hybridon or such
Affiliates (a Hybridon Sublicensed Product) for Medical
Applications. Hybridon will inform IDT of the identity of
any sublicensee and the nature of such sublicense * * * *
*. Any agreement granting a sublicense shall state that the
sublicense is subject to the terms of this Agreement.
Hybridon shall have the same accounting and reporting
responsibilities for the activities of any sublicensee, as
if the activities were directly those of Hybridon.
(ii) The Hybridon License to IDT and its Affiliates shall be * *
* * *.
Section 3. Consideration.
A. Initial License Fee.
Upon execution of this Agreement, Hybridon agrees to pay to* * * *
* according to the following schedule:
(i) * * * * *;
(ii) * * * * *; and
(iii) * * * * *.
- 4 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
B. * * * * *.
(i) * * * * *. Hybridon agrees to pay to * * * * * by or on
behalf of Hybridon, its Affiliates or sublicensees
hereunder, or its foreign equivalent.
Hybridon shall notify * * * * * , by Hybridon, its
Affiliates or sublicensees.
For each * * * * *, unless compliance with the notice
provisions of 3.B(iii) herein, allows for an extension.
(ii) * * * * *. Hybridon agrees to pay to* * * * * or a foreign
equivalent.
For each* * * * * , unless compliance with the notice
provisions of 3.B(iii) herein, allows for an extension.
Payment of the * * * * *, unless compliance with the notice
provisions of 3.B(iii) herein, allows for an extension.
(iii) Hybridon shall notify IDT * * * * *if Hybridon is unable to
* * * * * to IDT for a * * * * * or an * * * * * sold by *
* * * * or * * * * *, within the time allotted in the above
numbered sections because of * * * * * or * * * * * . In
such notification, Hybridon shall * * * * * . Hybridon will
make payment to IDT the* * * * * .
Notwithstanding the foregoing, products developed utilizing IDT
Licensed Technology, but which products do not themselves infringe
any Valid Claim, are* * * * *.
C. * * * * *
(i) In further consideration for the License granted herein,
Hybridon agrees to pay to IDT the following* * * * * :
(1) * * * * *,
* * * * *
(2) * * * * *,
* * * * *
(3) * * * * * .
- 5 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
(ii) IDT agrees to pay to Hybridon * * * * *.
Notwithstanding the foregoing, products developed utilizing
IDT or Hybridon Licensed Technology, but which products do
not themselves infringe any Valid Claim, are * * * * *.
D. Accounting/Payments.
(i) For each fiscal year in which there are Net Sales of a
Licensed Product, each Licensee shall prepare, or cause its
Affiliates or sublicensees to prepare, deliver and pay to
Licensor a quarterly estimate of the * * * * * due to the
Licensor under Section 3.D,* * * * *.
(ii) * * * * * *, Licensee shall prepare and deliver an annual
statement of the total * * * * * due to Licensor for the
fiscal year expired under Section 3.D. Licensee shall
tender payment of the balance owed for the year, including
all payments owed for the fourth quarter of the year
expired, and any necessary adjustments to the quarterly
estimate payments previously paid. Each quarterly estimate
or annual payment shall be accompanied by a report which
shall indicate the estimated or actual Net Sales, as the
case may be, by Licensee for the previous period and shall
show the amount of * * * * * due Licensor with sufficient
detail to enable confirmation of the calculations by
Licensor.
(iii) Except as otherwise directed, all amounts owing to Licensor
under this Agreement shall be paid in U.S. dollars to
Licensor at the addresses provided in Section 12(a). * * *
* * owing with respect to Net Sales stated in currencies
other than U.S. dollars shall be converted at the rate
shown in the Federal Reserve Noon Valuation - Value of
Foreign Currencies on the day preceding the payment.
Section 4. Recordkeeping.
A. Licensee, its Affiliates and its sublicensee(s) shall keep books
and records sufficient to verify the accuracy and completeness of
Licensee's and its sublicensee(s)'s accounting referred to above,
including without limitation sales, accounts receivable, and
invoice records relating to IDT Licensed Products or Hybridon
Licensed Products. Such books and records shall be preserved for a
period not less than five years after they are created during and
after the term of this Agreement.
- 6 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
B. Licensee, its Affiliates and its sublicensee(s) shall take all
steps necessary so that Licensor may, within sixty days of its
request, review and copy all the books and records at a single
U.S. location to verify the accuracy of Licensee's and its
sublicensee(s)'s accounting. Such review shall be made not more
than once each fiscal year, upon reasonable notice and during
regular business hours, at the expense of Licensor by a certified
public accountant to whom Licensee has no reasonable objection.
C. If a * * * * * * for a fiscal year is determined, Licensee, its
Affiliates or sublicensee(s) shall pay the * * * * * outstanding
within thirty (30) days of receiving written notice thereof, and
shall reimburse Licensor for the cost of the inspection.
Section 5. Patent Prosecution and Maintenance Publications.
A. Prosecution and Maintenance.
The preparation, filing, prosecution, and maintenance of all
patents and patent applications -- domestic, international, and
foreign -- included in the definition of IDT Antisense Technology,
shall remain the exclusive responsibility of IDT. IDT retains the
exclusive right and authority to make all decisions and
determinations regarding the prosecution and maintenance of those
patents and patent applications. The preparation, filing,
prosecution, and maintenance of all patents and patent
applications -- domestic, international and foreign -- included in
the definition of Hybridon Antisense Technology, shall remain the
exclusive responsibility of Hybridon. Hybridon retains the
exclusive right and authority to make all decisions and
determinations regarding the prosecution and maintenance of those
patents and patent applications.
B. Patent Marking.
Hybridon and IDT shall comply with all applicable United States
and foreign jurisdiction laws in respect of patent marking, if
any.
C. Ownership.
(i) Acknowledgments. All patent rights and proprietary
information included in IDT Antisense Technology shall
remain the sole property of IDT. All patent rights and
proprietary information included in Hybridon Antisense
Technology shall remain the sole property of Hybridon.
- 7 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
D. Infringement by Third Parties.
In the event that either party believes there is infringement in
that party's field of use of any patent included within IDT
Antisense Technology or Hybridon Antisense Technology under this
Agreement, that party shall provide the other party with prompt
written notification thereof. During the term of this Agreement,
the Licensor of the patent being infringed shall have the sole
right, but not the obligation, to bring and control any action or
proceeding at its own expense and by counsel of its own choice
against any such infringement. If the Licensor of the patent being
infringed elects to prosecute such infringement, the total cost of
any infringement action shall be borne by the Licensor and the
Licensor shall keep any recovery or damages for past infringement
derived therefrom.
E. Infringement of Third Party Rights.
(i) In the event that either party receives notice of or
believes there is infringement by Licensee, or if there is
asserted infringement by Licensee of any third party's
intellectual property (collectively, "Alleged Third Party
Rights") by reason of the manufacture, import, use, sale or
offer for sale of any product arising out of IDT Antisense
Technology or Hybridon Antisense Technology, the party
having knowledge of the alleged infringement shall provide
the other party with prompt written notification thereof.
Licensee shall have the right to control any defense of any
claim of infringement of Alleged Third Party Rights at its
own expense and any counsel of its choice.
(ii) In the event that Licensee incurs any costs, attorneys
fees, damage awards, or other penalties relating to an
alleged or proven act of infringement, Licensee shall
indemnify and hold harmless Licensor, and either the
University of Iowa Research Foundation/University of Iowa,
or the University of Massachusetts Medical Center, as the
case may be, for all such costs and expenses.
Section 6. Limitation of Liability, Indemnification, Negation of Warranties.
A. Limitation of Liability.
IDT shall not be liable to Hybridon, its Affiliates, sublicensees,
successors, or assigns for any loss of profits, loss of business,
interruption of business, nor for indirect, special or
consequential damages of any kind under this Agreement. Hybridon
shall not be liable to IDT, its Affiliates, sublicensees,
successors, or assigns for any loss of profits, loss of business,
interruption of business, nor for indirect, special or
consequential damages of any kind under this Agreement.
- 8 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
B. Patent Rights.
The parties warrant that except as otherwise provided under
Section 10 of this Agreement with respect to U.S. Government
interests, each has the right to grant the Licenses granted to the
other party in this Agreement. IDT warrants that it does not own
or control any patents or patent applications with claims to
antisense compounds and/or methods not already disclosed in the
definition of "IDT Antisense Technology."
C. No Warranties.
Except as expressly set forth herein, IDT and Hybridon make no
representations, extend no warranties of any kind, either express
or implied, and assume no responsibilities whatsoever with respect
to use, sale, or other disposition by Hybridon, IDT, their
Affiliates, sublicensees or their vendees or other transferees, of
IDT Licensed Products or Hybridon Licensed Products, respectively.
Except as expressly set forth herein, nothing in this Agreement,
nor any prior communication, shall be construed as:
(i) a warranty or representation by IDT or Hybridon as to the
validity or scope of any of the patents contained within
IDT Antisense Technology or Hybridon Antisense Technology;
(ii) a warranty or representation that anything made, used, sold
or otherwise disposed of under the Licenses granted in this
Agreement will or will not infringe patents of third
parties; or
(iii) an obligation to furnish any know-how not provided in IDT
Antisense Technology or Hybridon Antisense Technology or
any services other than those specified in this Agreement.
D. Indemnification.
Hybridon and IDT shall at all times during the term of this
Agreement and thereafter, indemnify, defend and hold each other,
the University of Iowa Research Foundation/University of Iowa, the
University of Massachusetts Medical Center and the authors and
inventors of IDT Antisense Technology and Hybridon Antisense
Technology, harmless against all claims and expenses, including
legal expenses and reasonable attorneys fees, arising out of the
death of or injury to any person or persons or out of any damage
to property and against any other claim, proceeding, demand,
expense and liability of any kind whatsoever resulting
- 9 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
from the production, manufacture, sale, use, lease, consumption or
advertisement of products or processes arising from any right or
obligation of IDT or Hybridon or any of its sublicensee(s) granted
herein. Notwithstanding the above, each party at all times reserve
the right to retain counsel of its own to defend its own
interests.
E. Insurance.
IDT and Hybridon warrant that each will use commercially
reasonable efforts to maintain liability insurance coverage
appropriate to the risk involved in the sale and marketing of
Licensed Products, and shall include in the calculation of said
risk, each parties' responsibility for indemnification in Section
6D herein. Notwithstanding the above, failure to obtain liability
insurance for the sale of research products by IDT or Hybridon
shall not be a breach of this clause.
Section 7. Confidential Information.
The following provisions relate to restrictions on the disclosure and use of
Confidential Information by the parties:
A. Confidentiality. Hybridon and IDT each agrees to treat as
confidential and to use only in the conduct of its business, all
Confidential Information disclosed to it by the other party.
B. Non-Disclosure and Non-Use. Hybridon and IDT each agrees not to
disclose any of the Confidential Information received from the
other party to any unauthorized third party and not to use any of
the Confidential Information except to fulfill the terms of the
Agreement, for a period of five (5) years from the receipt of the
Confidential Information.
C. Release from Restrictions. All information which is characterized
as Confidential Information shall cease to be confidential and the
receiving party shall be released from its respective obligations
under Sections 7A and 7B hereof if such information (a) is legally
known to or was in the possession of the receiving party at the
time of the disclosure; (b) legally is or has become part of the
public domain through no act or omission of the receiving party;
(c) has been disclosed to the recipient by a third party without
restriction as to the use or disclosure of the information; (d) is
available to the general public as a result of a governmentally
required release or disclosure; or (e) is required to be disclosed
by the laws, regulations or otherwise of any governmental
authority, including without limitation, the Securities and
Exchange Commission and the U.S. Food and Drug Administration as
determined by counsel of the receiving or disclosing party.
- 10 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
Section 8. Term and Termination.
A. The word "termination" and cognate words such as "term" and
"terminate", as used in this Section 8, whether applied to the
Agreement or an individual License, are to be read, except where
the contrary is specifically indicated, as omitting from their
effect the following rights and obligations, all of which shall
survive any termination to the degree necessary to permit their
complete fulfillment or discharge:
(i) Licensor's right to receive or recover and Licensee's
obligation to pay * * * * * * accrued or accruable for
payment at the time of any termination.
(ii) Licensee's obligation to maintain records and Licensor's
right to receive final year accounting reports as provided
in Section 3.E.
(iii) Any cause of action or claim of Licensor, accrued or to
accrue because of any breach or default by the Licensee;
(iv) The rights and obligations of both parties regarding
confidentiality as defined in Section 7 herein;
(v) The warranty, indemnification and insurance provisions as
set forth in Sections 6.C, 6.D and 6.E.
B. The term of this Agreement shall extend until the last patent to
expire included within IDT Antisense Technology or Hybridon
Antisense Technology, whichever expires later.
C. In the event either party;
(i) shall materially breach any of the terms, conditions and
agreements contained in this Agreement, including but not
limited to failure to pay or make corrected payments of
Royalties in a timely fashion; or
(ii) assigns or attempts to assign this Agreement, the License
or any interest herein or therein without the prior written
consent of the other party or except as otherwise permitted
in Section 9;
then the alleging party may, at its election, notify the
other party of the alleged breach giving the other party 30
days' written notice to cure the breach or begin good faith
negotiations to resolve such alleged breach. If the alleged
breach is not resolved to the satisfaction of the alleging
party within 60 days of the first giving of notice the
alleging party may,
- 11 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
at its option, bring arbitration proceedings under Section
11.D. In the event of a good faith dispute about monetary
obligations, the notified party will pay any undisputed
amounts to the alleging party and pay any disputed amounts
into escrow pending resolution of such dispute, with
payment to be made to the prevailing party. The * * * * *
licenses granted hereunder are not terminable except in the
event of bankruptcy of a Licensee and the continuing rights
of sublicensees and others under this Section 8.
D. IDT's Rights Should Hybridon Become Bankrupt.
IDT shall have the right to terminate Hybridon's License to IDT
Antisense Technology granted pursuant to this Agreement under the
following circumstances: (i) the admission by Hybridon in writing
of its insolvency or bankruptcy, (ii) the making by Hybridon of an
assignment of substantially all its assets for the benefit of
creditors, (iii) an application by Hybridon for the appointment of
a trustee or receiver for Hybridon, (iv) the appointment of a
trustee or receiver for Hybridon, (v) the institution by or
against Hybridon of any bankruptcy, reorganization, arrangement,
insolvency or liquidation proceedings or other proceedings for
relief under any bankruptcy law or similar law for the relief of
debtors which is allowed against Hybridon, or is consented to or
is not dismissed, stayed or otherwise nullified within sixty (60)
days after the institution thereof, or (vi) Hybridon ceases to
carry on business as a going concern. Notwithstanding the
foregoing, Hybridon shall have the right to grant to its
sublicensee(s) the power to assume Hybridon's rights and
obligations under its License and its Affiliates shall retain
their rights and obligations under this Agreement, limited to
Hybridon Sublicensed Products. Hybridon, and its successor in
interest, however organized, shall, to the extent permitted by
law, maintain in full IDT's License to Hybridon Antisense
Technology granted pursuant to this Agreement. In addition,
subject to the foregoing, if University of Massachusetts Medical
Center ("UMMC") terminates its license with Hybridon for certain
Hybridon Antisense Technology as a result of any of the events
listed in the first sentence of this paragraph, UMMC shall have
the right for a period of 180 days after said termination to
assume the rights and obligations of Hybridon hereunder and within
the first 180 days thereafter shall have the right to assign or
sublicense all rights and obligations of Hybridon hereunder to one
and only one party (a "Subsequent Licensee") to whom UMMC regrants
a license under such formerly licensed Hybridon Antisense
Technology. Such Subsequent Licensee shall have the same rights to
sublicense hereunder as Hybridon had prior to the termination of
its license hereunder.
- 12 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
E. In the event IDT:
(i) shall become insolvent, bankrupt or subject to the
provisions of the United States Bankruptcy Code or any
other similar legislation of any jurisdiction, or makes any
assignment for the benefit of creditors, fails to generally
to pay its debts as they become due, is adjudged bankrupt,
or otherwise acknowledges its insolvency, or if a receiver
custodian or trustee of IDT's property or a major part of
IDT's property is appointed, or if any other proceeding for
relief under any bankruptcy law or similar law for the
relief of debtors is instituted by or against IDT; or
(ii) ceases to carry on business as a going concern;
then Hybridon shall have the right to terminate IDT's
License to Hybridon Antisense Technology granted pursuant
to this Agreement. IDT, and its successor in interest,
however organized, shall maintain, to the extent permitted
by law, the IDT License to Hybridon granted pursuant to
this Agreement.
F. Waiver of Terms. No waiver of any breach of any term or provision
of this Agreement shall be effective or binding unless made in
writing and signed by the party purporting to give the waiver. No
condoning, excusing or waiver by any party of any default, breach
or non-observance by the other party at any time or times in
respect of any covenant, proviso or condition contained herein
shall operate as waiver of that party's rights hereunder in
respect of any continuing or subsequent default, breach or
non-observance, and no waiver shall be inferred from or implied by
anything done or committed to be done by the party having those
rights.
G. Rights and Obligations after Termination. Upon the termination of
a License resulting from the provisions of 8.C, 8.D and 8.E
herein, the Licensee and its sublicensee(s), if any, shall have
the right, within six (6) months following such date of
termination, to sell or dispose of Licensed Products completed or
substantially completed on the date of termination and to complete
orders, outstanding on such date of termination for such products
pursuant to the terms of this Agreement.
H. Successors in Interest. Should IDT and/or Hybridon, or their
assigns become insolvent, bankrupt or subject to the provisions of
the United States Bankruptcy Code or any other similar legislation
of any jurisdiction, the rights of the University of Iowa Research
Foundation and the University of Massachusetts Medical Center
pertaining to retention, reversion, and/or assumption of the
insolvent parties interest in the patents described herein shall
not be abrogated in any way by any term or provision of this
Agreement.
- 13 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
Section 9. Assignability.
This Agreement may not be transferred or assigned by either party without
the prior written consent of the other party, except that Licensee may
freely assign this Agreement to (i) an Affiliate, if Licensee guarantees
the full performance of its Affiliates' obligations hereunder, or (ii) an
entity acquiring substantially all of Licensee's business to which the
License relates. Any purported assignment in contravention of this
section shall, at the option of the non-assigning party, be null and void
and of no effect.
Section 10. United States Government Interests.
It is understood that if the United States Government (through any of its
agencies or otherwise) has funded research, during the course of or under
which any of the inventions of the patents contained in a License were
conceived or made, the United States Government is entitled, as a right,
under the provisions of 35 U.S.C. ss. 200-212 and applicable regulations
of Chapter 37 of the Code of Federal Regulations, to a nonexclusive,
nontransferable, irrevocable paid-up license to practice or have
practiced the invention of such patent for government purposes. Any
license granted to Licensee in this Agreement shall be subject to such
right.
Section 11. Miscellaneous.
A. Applicable Law. This Agreement shall be construed in accordance
with the internal laws of the State of Illinois. If any provisions
of this Agreement are or shall come into conflict with the laws or
regulations of any jurisdiction or any governmental entity having
jurisdiction over the parties or this Agreement, those provisions
shall be deemed automatically deleted, if such deletion is allowed
by relevant law, and the remaining terms and conditions of this
Agreement shall remain in full force and effect. If such a
deletion is not so allowed or if such a deletion leaves terms
thereby made clearly illogical or inappropriate in effect, the
parties agree to substitute new terms as similar in effect to the
present terms of this Agreement as may be allowed under the
applicable laws and regulations. The parties hereto are
independent contractors and not joint ventures or partners.
B. Construction/Effect. The parties acknowledge that this Agreement
has been the subject of full opportunity for negotiation and
amendment and that the party who has taken the role of drafter
shall not suffer any adverse construction of any terms or language
of this Agreement because of such role.
C. Force Majeure. A party hereto shall not be deemed in default with
respect to the performance of or compliance with the terms,
covenants, agreements conditions or provisos of this Agreement if
the failure to perform or comply
- 14 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
shall be due to any event of force majeure. "Force majeure" shall
include natural disasters, acts of God, or any other event or
cause beyond the control of the party claiming the benefit of this
paragraph and which that party could not reasonably have protected
itself against, provided however that lack of funds or credit
shall not constitute an event of force majeure.
D. Disputes-- Arbitration. The parties agree to attempt initially, to
solve all claims, disputes, or controversies arising under, out
of, or in connection with this Agreement by conducting good faith
negotiations. Except with respect to disputes as to the validity
of patents, applications for injunctions, specific performance, or
other equitable relief, any dispute arising out of or in
connection with this Agreement or any legal relationship
associated therewith, that cannot be resolved amicably by the
parties, shall be finally resolved by arbitration. The arbitration
shall be conducted in accordance with the arbitration rules of the
American Arbitration Association ("AAA") then in force, by one or
more arbitrators appointed in accordance with said rules;
provided, however, that arbitration proceedings may not be
instituted until the party alleging breach of this Agreement by
the other party has given the other party not less than sixty (60)
days' notice to remedy any alleged breach and the other party has
failed to do so. The place of arbitration shall be Chicago,
Illinois. The award rendered shall be final and binding upon both
parties. The judgement rendered shall include costs of
arbitration, reasonable attorney's fees and reasonable costs for
any expert and other witnesses. The arbitration may expressly
consider the amounts paid pursuant to Sections 3.B, 3.C and 3.D,
in considering any claims of any damages. Judgment upon the award
may be entered in any court having jurisdiction, or application
may be made to such court for judicial acceptance of the award
and/or an order of enforcement. Disputes as to the validity of
patents shall be resolved by the courts of appropriate
jurisdiction.
Section 12. Notices.
Any notice required to be given pursuant to the provisions of this
Agreement shall be in writing and shall be deemed to have been given at
the earlier of the time when actually received as a consequence of any
effective method of delivery, including but not limited to hand delivery,
transmission by telefax, or delivery by a professional courier service or
the time when sent by certified or registered mail addressed to the
party. Any notice of change of address shall be effective only upon
actual receipt, by the persons listed below or other formally authorized
person(s) acting in their behalf.
- 15 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
(a) Joseph A. Walder, M.D., Ph.D.
Integrated DNA Technologies, Inc.
President & CEO
1710 Commercial Park
Coralville, IA 52241-9802
(b) Cheryl M. Northrup, J.D.
Hybridon, Inc.
Vice President and General Counsel
155 Fortune Blvd
Milford, MA 01757
Section 13. Integration.
This agreement constitutes the full understanding between the parties
with reference to the subject matter hereof, and no statements or
agreements by or between the parties, whether orally or in writing, made
prior to or at the signing hereof, shall vary or modify the written terms
of this Agreement. Neither party shall claim any amendment, modification,
or release from any provisions of this Agreement by mutual agreement,
acknowledgement, or otherwise, unless such mutual agreement is in
writing, signed by the other party, and specifically states that it is an
amendment to this Agreement.
Section 14. Benefits.
All terms and provisions of this Agreement shall bind and inure to the
benefit of the parties hereto, and upon their respective successors and
assigns as those are permitted under the terms of this Agreement.
Section 15. Contract Formation and Authority.
The persons signing on behalf of IDT and Hybridon hereby warrant and
represent that they have authority to execute this Agreement on behalf of
the party for whom they have signed.
- 16 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on the
dates indicated below.
INTEGRATED DNA TECHNOLOGIES, INC. HYBRIDON, INC.
/s/ Joseph A. Walder, M.D., Ph.D. /s/ E. Andrews Grinstead III
- --------------------------------- ----------------------------
Joseph A. Walder, M.D., Ph.D. E. Andrews Grinstead III
President President
Date: March 15, 1999 Date: March 12, 1999
------------------------------ ----------------------------
- 17 -
Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
Asterisks denote omissions.
APPENDIX B
Chimeric Antisense Technology
"Chimeric Antisense Technology" shall mean any oligonucleotide, the nucleotide
sequence of which has complementarity for and is hybridizable to a nucleotide
sequence within RNA transcribed from a targeted gene, which oligonucleotide
meets at least one set of the following two sets of criteria:
Criteria Set (1)
(a) * * * * *; and
(b) * * * * * ; and
(c) * * * * *.
or:
Criteria Set (2)
(i) * * * * *; and
(ii) * * * * *; and
(iii) * * * * *.
- 18 -