Exhibit 10.22
Agreement
between
Nycomed Amersham plc
(formerly known as Amersham International plc)
Amersham Place
Little Chalfont
Bucks. HP7 9NA
United Kingdom
(hereafter AMERSHAM)
Phytera Inc
377 Plantation Street
Worcester
MA 01605
USA
(hereafter PHYTERA)
AND
Phytera Limited
Regent Court
Regent Street
Sheffield S1 4DA
United Kingdom
(hereafter SHEFFIELD)
WHEREAS
Under an agreement of 30th July 1993 (hereafter the ORIGINAL AGREEMENT) it was
agreed (as per clause 8.1 of the ORIGINAL AGREEMENT) that AMERSHAM would use its
best efforts to grant licenses relating to the research conducted under this
ORIGINAL AGREEMENT in the field of clinical diagnostics.
The Parties desire that PHYTERA now assumes responsibility for this activity
NOW
It is hereby agreed that the responsibilities of AMERSHAM in respect of clause
8.1 shall cease, and shall by virtue of this Agreement, become the
responsibility of PHYTERA, according to the terms and arrangements set out
below.
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1. DEFINITIONS
1.1. The Project Rights shall be defined as any patents, patent applications,
know-how (whether patentable or not), processes, software, trademarks,
designs or copyright which have arisen from the programme of research set
out in schedule I of the ORIGINAL AGREEMENT.
1.2. The Clinical Diagnostics Field is defined as the use of products or
reagents for the purpose of determining, measuring or monitoring the
metabolic or disease state of a human being, with such products or
reagents requiring the approval, prior to sale, of the US FDA (or the
equivalent regulatory agencies for other countries).
2. LICENSING ACTIVITIES BY PHYTERA
2.1. For the duration of this Agreement PHYTERA shall use its best efforts to
grant licenses under The Project Rights in The Clinical Diagnostics Field
on terms which are commercially reasonable and agreed by Amersham.
2.2. PHYTERA shall not be under any obligation to offer any company first
option to The project rights.
2.3. PHYTERA agrees to pay AMERSHAM half of any royalties, option payments, up
front license payments, fixed annual license payments or similar payments
that it may receive under the terms of any license which PHYTERA may grant
under the provisions of this Agreement. Payments made for activities such
as feasibility studies, research and development work or for the
production of materials shall not be covered by this clause.
2.4. All costs associated with the licensing activities shall be the
responsibility of PHYTERA.
3. GRANT OF RIGHTS, PATENTING
3.1. Notwithstanding Clause 7 of the Original Agreement, for the sole purpose
of PHYTERA pursuing the licensing programme as set out above, AMERSHAM
hereby grants PHYTERA an exclusive license to The Project Rights for The
Clinical Diagnostics Field.
3.2. In the course of its licensing activities PHYTERA may seek to protect The
Project Rights in various ways, including the filing of patent
applications. Any such patent applications shall be made in consultation
with AMERSHAM and shall ensure that AMERSHAM's rights in the Life Sciences
field (as defined in the Original Agreement) are respected. The
responsibility for costs of any patent filings and associated activities
shall be discussed in good faith between PHYTERA and AMERSHAM. Such costs
shall be deductible from any payments received before the allocation of
payments as per Clause 2.3.
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3.3. PHYTERA may not sell, grant options over, or license The Project Rights to
any third party except as outlined in clause 2.1, and all such sales,
options or licenses shall require the written signature of AMERSHAM to be
valid, which signature shall not unreasonably be withheld or delayed.
3.4. In the event that PHYTERA sells non-exclusive licenses to The project
Rights, then AMERSHAM shall be entitled, during the period of this
Agreement to obtain a non exclusive license for The Clinical Diagnostics
Field at the same royalty levels and terms as set out in the Original
Agreement. Should PHYTERA sell an exclusive license to The Project Rights,
then AMERSHAM shall have no such right to obtain a non exclusive license.
4. CONFIDENTIAL INFORMATION & DISCLOSURE
4.1. PHYTERA and AMERSHAM shall jointly agree a standard confidentiality
agreement which is to be used by PHYTERA during the course of its
licensing activities under this Agreement. This confidentiality agreement
shall include provisions committing both PHYTERA and AMERSHAM.
4.2. PHYTERA shall be entitled to make such disclosures relating to The Project
Rights as it deems necessary to pursue the licensing activities set out in
clause 2.1. Any detailed disclosures shall be made under confidentiality
agreements, but non-confidential summary information may be released into
the public domain.
4.3. Except as set out in clause 4.2, for the duration of this Agreement
neither party shall allow any of information or knowledge relating to The
Project Rights to be released into the public domain, nor may either party
take any action which reduces or lowers either the prospect of patent
filings being made on The Project Rights, or the value of The Project
Rights.
5. PERIOD OF AGREEMENT, TERMINATION
5.1. This Agreement shall come into effect following signature by all parties.
5.2. This Agreement shall remain in effect for a period of 24 months from the
effective date.
5.3. This Agreement shall terminate at the end of the 24 month period, unless
either:
(a) PHYTERA has (with Amersham's agreement) licensed The project Rights
to one or more third parties, or:
(b) The parties mutually agree to extend the period of the Agreement.
5.5 Upon termination of this Agreement then
(a) all provisions and rights assigned from AMERSHAM to PHYTERA under
this Agreement shall lapse and revert to AMERSHAM.
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(b) any patent applications created under this Agreement shall, at
AMERSHAM's request, be assigned by PHYTERA to AMERSHAM.
(c) any existing agreements (such as confidentiality agreements, options
or licenses) between PHYTERA, AMERSHAM and third parties shall remain
in force in accordance with their terms.
(d) The terms of the ORIGINAL AGREEMENT shall remain in force in an
unamended form.
6. PRIMACY OF ORIGINAL AGREEMENT
6.1. Except as amended in this Agreement, all other clauses of the ORIGINAL
AGREEMENT shall remain in effect.
7. SIGNATURES
Signed in three copies, each of which shall constitute an original.
/s/ M. R. Evans V.P. Drug Discovery 29 October 1998
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Signature Position Date
for Nycomed Amersham plc
/s/ Malcolm Morville President September 18, 1998
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Signature Position Date
for Phytera Inc.
/s/James Eardley Director September 18, 1998
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Signature Position Date
for Phytera Ltd.
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