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EXHIBIT 10.14
ARIAD PHARMACEUTICALS, INC. HAS OMITTED FROM THIS EXHIBIT 10.14 PORTIONS OF THE
AGREEMENT FOR WHICH ARIAD PHARMACEUTICALS, INC. HAS REQUESTED CONFIDENTIAL
TREATMENT FROM THE SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE
AGREEMENT FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED WITH AN
ASTERISK AND SUCH CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
AMENDED AND RESTATED
AGREEMENT
Effective as of December 12, 1997, THE BOARD OF TRUSTEES OF THE LELAND STANFORD
JUNIOR UNIVERSITY, a body having corporate powers under the laws of the State of
California ("STANFORD") and ARIAD GENE THERAPEUTICS, a Delaware corporation
having a principal place of business at 26 Landsdowne Street, Cambridge, MA
02139 ("AGT"), agree as follows:
1. BACKGROUND
1.1. STANFORD and the President and Fellows of Harvard College
("HARVARD") ("LICENSORS") have an assignment of those patent
applications set forth on Exhibit A ("Invention(s)"), and any
Licensed Patent(s), as hereinafter defined, which may issue to such
Invention(s).
1.2. LICENSORS own certain proprietary materials and information as
herein defined ("Technology") pertaining to the subject matter of
the Licensed Patents.
1.3. STANFORD has entered into an agreement with HARVARD granting
STANFORD authority to act on HARVARD's behalf and to bind HARVARD in
licensing HARVARD's rights in Invention(s), Licensed
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Patent(s) and Technology. A copy of that agreement between STANFORD
and HARVARD is attached hereto as Exhibit B.
1.4. LICENSORS desire to have the subject matter of the Licensed
Patent(s), Invention(s) and Technology perfected and marketed at the
earliest possible time in order that products resulting therefrom
may be available for public use and benefit.
1.5. LICENSORS granted AGT a license under said Invention(s), Technology
and Licensed Patent(s) to develop, manufacture, use, and sell
Licensed Product(s) in the fields of use of human and veterinary
healthcare, genetically engineered animals and plants and research
reagents under an Agreement effective as of January 1, 1994, which
was amended on July 3, 1996 (collectively, the "License Agreement").
1.6. The parties hereto desire to further amend and restate the License
Agreement.
1.7. The Invention(s) was made in the course of research conducted by the
Howard Hughes Medical Institute ("HHMI") in affiliation with
Stanford University and with research support from the National
Institutes of Health at Harvard College.
2. DEFINITIONS
2.1. "Licensed Patent(s)" means those United States Patent Applications
and international patent applications set forth on Exhibit A; and/or
any divisional, continuation, continuation-in-part, reissue,
reexamination or foreign counterpart application which claim
inventions disclosed in any of the foregoing applications; and any
United States and/or foreign patent(s) and any extensions thereof,
which may be granted upon, claim the priority of or claim inventions
disclosed in any of the foregoing.
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2.2. "Technology" means LICENSORS' proprietary rights, if any, in
tangible materials and information which pertain to the invention(s)
disclosed in the Licensed Patents and/or Invention(s), which are
conceived and/or reduced to practice as of the Effective Date, which
arise out of the research by Drs. Schreiber and Crabtree, and which
may be provided by Licensors to AGT, subject to sponsors' rights if
any.
2.3. "Licensed Product(s)" means any product in the Licensed Field of
Use, the manufacture, use, or sale of which would infringe a valid
claim of an issued, unexpired Licensed Patent(s); is covered by a
pending claim of a Licensed Patent for which there is a reasonable
good faith expectation of issuance; and/or which embodies any of the
Technology. A claim of issued, unexpired Licensed Patent(s) shall be
presumed to be valid unless and until it has been held to be invalid
by a final judgment of a patent office or court of competent
jurisdiction.
2.4. "Net Sales" means the amount of gross revenue received by the Seller
of the Licensed Product as a result of sales of Licensed Product(s)
to independent third parties by AGT and/or sublicensees and/or
Co-venturers, less the following items but only insofar as they
actually pertain to the disposition of such Licensed Product(s) by
AGT and/or sublicensee(s) and/or Co-venturers and are separately
billed or accounted for:
(a) customary discounts and rebates actually allowed or granted
from the amount billed;
(b) credits or allowances granted upon claims or returns;
(c) packing, insurance and freight charges paid by AGT and/or
sublicensee(s) and/or Co-venturers;
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(d) import, export, sales, use, excise or other taxes, customs
duties, or other governmental charges levied on or measured by
the selling price and included in the billing price whether
absorbed by AGT and/or sublicensee(s) and/or Co-venturers or
their customers; and
(e) all royalties and other fees required for making, using, or
selling Licensed Product(s) which are paid to third parties by
AGT and/or sublicensee(s) and/or Co-venturers.
Net Sales shall not include any transfers of Licensed Products made
in connection with preclinical or clinical studies.
2.5. "Research Reagents" means Licensed Product(s) which are sold for in
vitro laboratory research purposes only.
2.6. "Licensed Field of Use" means human and veterinary healthcare,
genetically engineered animals and plants and Research Reagents.
2.7. "Licensed Territory" means worldwide.
2.8. "Exclusive" means that, subject to Paragraph 3.4 and Article 4,
STANFORD shall not grant any further commercial license in the
Licensed Territory in the Licensed Field of Use.
2.9. "First Commercial Sale" shall mean the first sale in a given country
by AGT or a sublicensee or Co-venturer thereof to an unrelated third
party, in an arms-length transaction, following receipt of all
relevant governmental regulatory approvals which may be necessary
for commercialization of said Licensed Product, of a Licensed
Product in a final package form ready for use by the ultimate
consumer as a human therapeutic agent. The term "First Commercial
Sale" shall not include (i) a cost recovery sale made by AGT, or a
sublicensee or Co-venturer of
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AGT, under an investigational regulatory submission; and (ii) sales
and disposals, without charge, for experimental purposes or for
purposes of clinically or otherwise testing any Licensed Product(s).
2.10. "Manufacturing Profit" shall mean the price at which Licensed
Products are [*].
2.11. "Co-venturer" means Genovo, Inc. when operating under the AGT-Genovo
Agreement or any other third party entity with which AGT
participates in the sale of Licensed Product(s) pursuant to a joint
venture agreement, notice of the execution of which has been
provided to STANFORD (a "Joint Venture Agreement"). A Co-venturer
may or may not also be [*].
2.12. "Joint Venture Percentage" means the portion of [*] due to either
AGT or a Co-venturer pursuant to a Joint Venture Agreement. AGT's
Joint Venture Percentage in the AGT-Genovo Agreement, as defined
below, [*].
2.13. "AGT-Genovo Agreement" means the Joint Venture Agreement dated
February 14, 1997 between AGT and Genovo, Inc.
2.14. "Effective Date" means January 1, 1994.
3. GRANT
3.1. STANFORD hereby grants to AGT, and AGT hereby accepts, an Exclusive
license under LICENSORS' rights in the Licensed Patent(s),
Invention(s) and the Technology, to make and have made, use and have
used, sell and have sold Licensed Product(s), and/or to otherwise
engage in research, development and commercial activities relating
to the Licensed Patent(s), Invention(s) and/or Technology within the
Licensed Field of Use and Licensed Territory. Subject to the royalty
obligations set
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forth in Paragraphs 6.5, 6.6, 6.7, 6.8, 6.9 and 6.10 below, STANFORD
hereby further grants to AGT the right to grant to purchasers and
users of the Licensed Products immunity from suit for infringement
of the Licensed Patents in their use of such materials. Said license
shall include the right to grant sublicenses in accordance with
Article 14 hereunder.
3.2. The initial term of said license shall commence on January 1, 1994
and shall extend for a [*] following the date of First Commercial
Sale, augmented by the length of any patent term extension awarded
in connection with the Licensed Patent(s) in the United States, but
not to exceed life of Licensed Patent(s), or unless sooner
terminated under Article 15 hereunder (the "Initial Term"). AGT
agrees to promptly inform STANFORD in writing of the First
Commercial Sale.
3.3. At the end of the Initial Term, said license shall be extended for
[*], unless and to the extent that STANFORD can demonstrate that AGT
has not diligently pursued commercialization of, or will not
effectively commercialize the Licensed Product(s). Such extension(s)
shall not be unreasonably denied by STANFORD. The parties agree to
discuss such extension about twelve (12) months prior to the
conclusion of the Initial Term.
In the event of any such demonstration, AGT shall be provided
reasonable prior written notice and a reasonable opportunity to
refute or cure the basis for STANFORD's concern. In the event of
timely refutation or cure by AGT, the exclusive license shall be
extended for renewable [*].
Should the exclusive license not be extended in its entirety due to
a demonstrated inadequacy, said license shall become non-exclusive
with respect to the scope of the demonstrated inadequacy until
expiration of the last to expire of Licensed Patent(s).
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3.4. STANFORD and HARVARD and the inventors shall have the right to
practice the Invention(s) and use the Technology solely for
non-commercial research purposes, whether by themselves or in
collaboration with third party academic or not-for-profit research
institutions. STANFORD and HARVARD and the inventors shall have the
right to publish any information included in Technology. STANFORD
and HARVARD and the inventors shall have the right to provide any
tangible materials included in Technology to third party academic or
not-for-profit research institutions under the terms of a material
transfer agreement in substantially the form which has been provided
to AGT. However, no rights shall be granted by STANFORD or HARVARD
to any inventions or technology incorporating or utilizing such
materials for any commercial purpose. STANFORD shall use its
reasonable efforts to have the inventors provide a list of all such
material transfer agreements to AGT on a quarterly basis and to
provide AGT with copies of any such agreements which differ
materially from the form provided to AGT, as well as copies of such
other agreements as AGT shall reasonably request.
3.5. STANFORD and HARVARD agree that future inventions and discoveries
from the laboratories of Drs. Crabtree and Schreiber (including but
not limited to modes of synthesis, synthetic or natural analogs,
antagonists, precursors, constructs or artificial receptors) not
already disclosed in and expressly covered under Licensed Patent(s)
and/or Technology may be useful to AGT in the development and/or
commercialization of a Licensed Product(s). Subject to STANFORD's
and HARVARD's obligations to sponsors of research, STANFORD and
HARVARD will, as soon as practicable, bring any such new invention
and discovery to AGT's attention and provide AGT a reasonable
non-exclusive opportunity to negotiate a license therefor.
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3.6. Nothing in this Agreement shall be construed so as to restrict the
rights of Drs. Crabtree or Schreiber to publish the results of their
work.
4. SPONSORS' RIGHTS
This Agreement is subject to all of the terms and conditions of Title 35
United States Code Sections 200 through 204, including an obligation that
Licensed Product(s) sold or produced in the United States be "manufactured
substantially in the United States," as well as certain obligations to
HHMI (attached hereto as Exhibit C) and AGT agrees to take all reasonable
action necessary on its part as licensee to enable STANFORD and HARVARD to
satisfy their obligations thereunder, relating to the subject matter of
the Licensed Patents.
5. DILIGENCE
5.1. The parties agree that the use of all reasonable efforts and
diligence in the development, manufacture, and sale of Licensed
Product(s) and in the development of markets for the Licensed
Product(s) is of mutually critical importance. STANFORD and AGT
agree that achievement of the following development milestones shall
constitute diligence on the part of AGT during the initial exclusive
license period:
(a) [*] of an embodiment of the [*];
(b) Submission of a development plan or equivalent covering
commercialization of genetically engineered animals and
products for human healthcare by AGT or sublicensee(s) or
Co-venturers by [*];
(c) Submission of a development plan or equivalent detailing the
time lines and other appropriate information for the
development of
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genetically engineered plants and products for veterinary
healthcare by [*];
(d) [*];
(e) Submission of an updated business plan or equivalent detailing
the specific indications, time lines and other appropriate
information for the development and approval of human
pharmaceuticals, as well as indicating how products for the
veterinary healthcare and genetically engineered animal
markets may be developed using information derived from human
pharmaceutical product lines, by [*];
(f) Submission to the Food and Drug Administration by [*] of a PLA
or equivalent application for marketing approval .
Both parties agree that achievement of these diligence milestones is
subject to uncertainties regarding the availability of [*]; social,
medical and ethical issues regarding gene therapy, territorial or legal
restrictions on the use of biotechnology products, the regulatory climate
and approval process, pricing or other government restrictions on certain
pharmaceutical products, in addition to unforeseen difficulties which may
arise in reducing the technology to practice for commercialization.
Therefore, the parties agree to discuss and, if appropriate, rewrite said
milestones upon AGT's notice to STANFORD on or about [*] or at any other
time upon mutual agreement of the parties.
Unless AGT can demonstrate diligent pursuit and progress toward commercial
development of Licensed Product(s) (itself or through sublicensees or
Co-venturers), STANFORD may cause the license agreement to revert to
non-exclusive status, but only with respect to the scope of the
inadequacy. Any such reversion shall involve
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reasonable written notice and a reasonable opportunity for AGT to refute
or cure the basis for STANFORD's concern.
5.2. In addition to the foregoing, AGT agrees to use reasonable efforts
to make the first sale of a Research Reagent as quickly as possible
by or before [*], with the understanding that
(a) any sale of a Research Reagent should be made only after [*],
including the [*], such that the sale of Research Reagents
will [*];
(b) prior to the issuance of a relevant patent based on the
Licensed Patent(s), sales of Research Reagents by unlicensed,
third party competitors may substantially diminish the
commercial feasibility and/or volume of sales of Research
Reagents by or for AGT;
(c) distribution by STANFORD and/or HARVARD of Research Reagents
to third parties other than actual non-commercial
collaborators may substantially diminish the commercial
feasibility and/or volume of sales of Research Reagents by or
for AGT; and,
(d) AGT may be prohibited from making, using and/or selling
certain Research Reagents by virtue of third party patents;
and that upon the occurrence of situations such as the foregoing which may
be beyond AGT's control and may delay the sale of Research Reagents under
this Agreement in spite of AGT's reasonable efforts, the parties shall
meet to discuss a reasonable alternative timeline or framework for the
distribution of Research Reagents hereunder.
5.3. Progress Report - On or before January 1 of each year until AGT
markets a Licensed Product(s), AGT shall make a written annual
report to
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STANFORD covering the preceding year, regarding the progress of AGT
and its sublicensees and Co-venturers toward the commercialization
of Licensed Product(s). Such report shall include, as a minimum,
information sufficient to enable STANFORD to satisfy reporting
requirements of the United States Government and to ascertain
progress by AGT and its sublicensees and Co-venturers toward meeting
the diligence requirements of this Article 5.
6. ROYALTIES
6.1. AGT agrees to pay to STANFORD a non-creditable, non-refundable
license issue royalty of [*] within thirty (30) days following the
Effective Date.
6.2. AGT also agrees to hold in the names of STANFORD and HARVARD for a
period not to exceed two (2) years after the Effective Date, One
Hundred Eighty Thousand (180,000) shares of AGT's common stock for
each institution (which number may be adjusted to reflect any stock
split so long as the total number of shares to both universities
taken together represents three percent (3.0%) of the initial
capitalization of AGT), which shares shall be transferred to each
institution upon request.
The certificates representing the shares to be issued will contain a
legend providing that the securities represented thereby have not
been registered under the Securities Act of 1933 (the "ACT"), as
amended, or any state securities laws and neither the securities nor
any interest therein may be offered, sold, transferred, pledged or
otherwise disposed of except (i) pursuant to an effective
registration statement under the ACT or such laws or (ii) if, in the
opinion of counsel for the holder, which counsel and opinion are
reasonably satisfactory to counsel for AGT an exemption from
registration under such Securities Act and
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such laws is available. The stock shall not, without AGT's prior
written consent, be transferable until one year after AGT's initial
public offering, if any.
6.3. In addition, AGT shall pay license milestone royalties as follows:
(a) [*] on the first to occur of:
[*]; or
[*];
(b) [*] on the first to occur of:
[*]; or
IND filing in the United States by or on behalf of AGT for a
product covered by Licensed Patent(s);
(c) [*] on the first to occur of:
[*]; or
Submission by AGT of the first Product License Application
(PLA) in the United States for a product covered under
Licensed Patent(s);
(d) [*] upon the first approval in the United States of a PLA (or
its functional equivalent) filed by AGT for a product covered
by the Licensed Patent(s); and
(e) [*] for issuance of the first Licensed Patent in the United
States which contains one or more claims which would be
infringed by the making, using or selling by a third party of
products or services which would compete with a Licensed
Product(s) in the field of human and veterinary healthcare.
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6.4. Beginning [*] and each January 1 thereafter prior to its receipt of
official written approval of a Product License Application (PLA) for
the first human therapeutic Licensed Product in the United States,
AGT also shall pay to STANFORD an annual license maintenance royalty
of [*]. Such annual license maintenance royalties shall be
nonrefundable, but shall be [*] creditable against earned royalties
to the extent provided in Paragraph 6.14.
Beginning with the first calendar year following said receipt of
official written approval of said PLA, said annual license
maintenance royalty shall increase to [*]. Such annual license
maintenance royalties shall be nonrefundable, but shall be [*]
creditable against earned royalties in the year in which said earned
royalties are due.
No annual license maintenance royalty shall be due in the years in
which payments are also made under 6.3(a) and/or 6.3(b) above.
6.5. Subject to Sections 6.6, 6.9 and 6.10, AGT shall also pay STANFORD
earned royalties on Net Sales resulting from sales of Licensed
Product by AGT and/or its Co-venturers as follows:
On Net Sales of Licensed Product(s) covered only by one or more
pending, unissued claims of the Licensed Patent(s):
(a) [*] on such Net Sales of Licensed Products other than Research
Reagents for sales made before [*] after which no such royalty
obligations exist until such time as Licensed Patent(s) issue
containing one or more claims which would be infringed by the
making, using or selling of such Licensed Product(s); and
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(b) [*] on such Net Sales in which the Licensed Product(s) are
Research Reagents;
On Net Sales of Licensed Product(s) in any country to the extent
that manufacture or sale of such Licensed Product(s) would infringe
a valid claim of an issued, unexpired Licensed Patent in that
country or the country of manufacture:
(a) [*] in Net Sales per year of Licensed Product(s) other than
Research Reagents;
(b) [*] on amounts in excess of [*] in Net Sales per year of
Licensed Product(s) other than Research Reagents; and
(c) [*] of Net Sales of Research Reagents.
6.6. Nothwithstanding any other provision of this Agreement including,
without limitation, Paragraph 6.5 above,
(a) the royalty payable to STANFORD with respect to Net Sales
resulting from sales of Licensed Product by AGT or a
Co-venturer or by a sublicensee of AGT of a Licensed Product
[*]; provided, however, that [*] covered by Paragraphs
14.6(a)(i) and 14.6(b)(i) below with respect to such
sublicense.
(b) the royalty payable to STANFORD with respect to Net Sales
resulting from sales of Licensed Product by AGT or a
Co-venturer of a Licensed Product for which [*] shall be made
pursuant to Paragraph 6.5 above based on [*].
6.7. For any sublicenses of the type described in Paragraph 14.5, AGT
shall also pay STANFORD royalties on Net Sales resulting from sales
of
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Licensed Product by its sublicensee(s) who are not Co-venturers in
accordance with the terms of Paragraph 6.5 and 6.6 above.
6.8. Subject to Section 6.16, for any sublicenses entered into [*], of
the type described in Paragraph 14.6, AGT shall also pay STANFORD
royalties on the Net Sales resulting from sales of Licensed Product
by its sublicensee(s) who are not Co-venturers in accordance with
the terms of Paragraph 6.5 and 6.6(a) above. Payment of royalties
with respect to sales of Licensed Product by sublicensees under
sublicenses of the type described in Paragraph 14.6 entered into [*]
shall be governed by Paragraph 14.6.
6.9. Notwithstanding any other provision of this Agreement including,
without limitation, Paragraph 6.5 above, for sales of Licensed
Product(s) by AGT, and/or its Co-venturers, to third party strategic
partners for resale, in lieu of any payment based on the transfer
price of the Licensed Product to the strategic partner, AGT shall
pay to STANFORD a royalty of [*] received and retained by AGT for
such Licensed Product. This payment shall be in addition to any
payment due as a result of any royalties paid by strategic partners
to AGT and/or its Co-venturers with respect to such Licensed
Product(s).
6.10. Notwithstanding anything in this Article 6 or Article 14 to the
contrary, for any Licensed Product which is a Licensed Product
solely because of the use of Licensed Patents or Technology in the
manufacture of such Licensed Product, but where the [*], AGT shall
pay STANFORD a royalty of [*].
6.11. No multiple royalties shall be due in the event that a Licensed
Product(s) is covered by more than one claim of the Licensed
Patent(s).
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6.12. Notwithstanding any other provision herein, AGT's obligation to pay
earned royalties hereunder shall terminate upon the latter of:
(a) [*] , if no relevant Licensed Patent(s) issues; or
(b) For so long as AGT, by its activities would, but for the
license granted herein, infringe a valid claim of an issued,
unexpired Licensed Patent(s).
6.13. Upon conversion by STANFORD of this Exclusive license to
non-exclusive status with respect to any Licensed Product(s) in the
field of human and veterinary healthcare, the royalties due
hereunder on Net Sales of such Licensed Product(s) shall be reduced
to [*] upon the execution by STANFORD and/or HARVARD of any license
to a third party which would permit the making, using and/or selling
of one or more products which could compete with Licensed
Product(s). STANFORD agrees to promptly notify AGT of the execution
of any such third party license. All other royalties shall remain at
their respective levels, provided, however, that if STANFORD or
HARVARD grant any license to one or more third parties under the
Licensed Patent(s), under royalty rates which are less than those
set forth in this Agreement as modified by this Paragraph, the
royalties owed by AGT hereunder shall be reduced to the same
level(s) as those of the third party agreement having the lowest
royalty rate(s).
6.14. Creditable payments under this Agreement may be applied against up
to [*] of each earned royalty payment which AGT would be required to
pay pursuant to Paragraphs 6.5, 6.6, 6.7, 6.8, 6.9 and 6.10 above
until the entire credit is exhausted.
6.15. Any royalties payable by AGT pursuant to this Agreement shall be
paid in United States Dollars. To the extent that royalties are
accrued in accordance with Paragraphs 6.5, 6.6, 6.7, 6.8, 6.9 or
6.10 upon Net Sales
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or Manufacturing Profit in a currency other than United States
Dollars, the royalty statement required in accordance with Paragraph
8.1 shall be accompanied by AGT's payment of royalty in United
States Dollars, with conversion to be made at the rate published in
the Wall Street Journal on the business day next following the end
of the Calendar Quarter. All non-U.S. taxes related to royalty
payments shall be paid by AGT and are not deductible from the
payments due STANFORD provided that STANFORD use reasonable efforts
to cooperate with AGT in obtaining any available waivers or
abatements of such taxes.
6.16. The parties shall meet on or before [*] to discuss in good faith
whether the provisions in Paragraphs 6.8 and 14.7 should be [*].
7. PATENT PROSECUTION
7.1. STANFORD, HARVARD and AGT shall share responsibility for patent
prosecution as follows: AGT shall lead the management of prosecution
of the Licensed Patent(s) using patent counsel reasonably acceptable
to STANFORD and HARVARD, and AGT shall be responsible for all costs
relating thereto. Counsel will directly notify STANFORD, HARVARD and
AGT, and provide them copies of any official communications from
United States and foreign patent offices relating to said
prosecution. Counsel shall also provide STANFORD and HARVARD with
copies of all relevant communications to the various patent offices,
so that STANFORD and HARVARD may be informed and apprised of the
continuing prosecution of the Licensed Patent(s). STANFORD and
HARVARD shall have reasonable opportunities to participate in
decision making on all key decisions affecting filing, prosecution
and maintenance of the Licensed Patent(s), including, without
limitation, reasonable opportunity to review the abandonment of any
Licensed Patent(s) or claims thereof, and AGT will use best efforts
to incorporate STANFORD
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and HARVARD's reasonable suggestions regarding said prosecution. AGT
shall use all reasonable efforts to amend any patent application to
include claims reasonably requested by STANFORD and HARVARD to
protect Licensed Product(s). No case will be abandoned without
giving STANFORD and HARVARD reasonable notice and opportunity to
pursue the application.
7.2. Except as by mutual agreement between the parties, patent
applications comprising the Licensed Patent(s) are to be filed in
the major world markets which filing shall be satisfied by filing in
the following patent offices: [*].
7.3. If STANFORD and HARVARD can demonstrate that they are not being
adequately informed or apprised of the continuing prosecution of
Licensed Patent(s), or that they are not being provided with
reasonable opportunities to participate in decision making as
indicated in the above Paragraph, STANFORD and HARVARD shall assume
lead management of the prosecution of the Licensed Patent(s), using
patent counsel reasonably acceptable to AGT. STANFORD and HARVARD
shall thereafter provide AGT with the same safeguards which STANFORD
and HARVARD were due under Paragraph 7.1. Any such demonstration
shall involve reasonable written notice and a reasonable opportunity
for AGT to refute or cure the basis for STANFORD and HARVARD's
concern. STANFORD and HARVARD agree to diligently prosecute or
assist in prosecuting Licensed Patent(s).
7.4. Within thirty (30) days after receipt of a statement from STANFORD,
AGT shall reimburse STANFORD for all reasonable costs incurred by
STANFORD prior to the Effective Date in connection with the
preparation and filing of the Licensed Patent(s), which costs total
[*].
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7.5. In the event that STANFORD and HARVARD assume lead management of the
Licensed Patent(s) under Paragraph 7.3 above, AGT shall reimburse
STANFORD for all reasonable costs incurred in the preparation,
filing, prosecution and maintenance of the Licensed Patent(s) within
thirty (30) days after receipt of a statement from STANFORD.
STANFORD and HARVARD agree to use reasonable efforts to minimize
such patent costs by whatever means necessary for the benefit of
AGT, provided however, that the quality and scope of the Licensed
Patent(s) shall not be jeopardized by such minimization.
8. QUARTERLY REPORTS, PAYMENTS AND ACCOUNTING
8.1. QUARTERLY EARNED ROYALTY PAYMENT AND REPORT - AGT shall notify
STANFORD within sixty (60) days of the First Commercial Sale of a
Licensed Product. Subsequently, AGT shall make written reports and
earned royalty payments to STANFORD within ninety (90) days after
the end of each calendar quarter in which royalties accrued under
this Agreement. Each such report shall state the number,
description, aggregate revenues from sales by AGT and/or its
sublicensee(s) and/or its Co-venturers, deductions applicable to
determine the Net Sales and the amount of the royalty due pursuant
to Paragraphs 6.5, 6.6, 6.7, 6.8, 6.9 and 6.10 hereof for said
calendar quarter. If no sales were made, the report shall so state.
Royalty payments based on good faith estimates by AGT shall be
adjusted in the next subsequent quarter and shall be accompanied by
an explanation of said adjustment. Concurrent with the making of
each such report, AGT shall include the payment then due STANFORD.
Late payments shall be subject to an interest charge of one and one
half percent (1 1/2%) per month.
8.2. ACCOUNTING - AGT agrees to keep and maintain records for a period of
three (3) years showing the manufacture, sale, use, and other
disposition
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of products sold or otherwise disposed of under the license herein
granted. Such records will be kept in a format as required by
Generally Accepted Accounting Principles and in sufficient detail to
enable the royalties payable hereunder by AGT to be determined.
STANFORD shall have the right to nominate an independent certified
public accountant acceptable to AGT who may be permitted access to
AGT's Records during reasonable business hours and upon reasonable
notice given to AGT in advance of such visit, for the purpose of
verifying the royalty payable as provided for in this agreement for
the two preceding years, but this right may not be exercised more
than once in any year, and the accountant shall agree in writing to
hold in confidence such records except to the extent of verifying to
STANFORD information relating solely to the accuracy of the royalty
report and the royalty payments made according to this agreement.
The entire cost for such inspection shall be borne by the STANFORD
unless the audit shows that AGT has underpaid royalties due to
STANFORD by more than five percent (5%) of the amount due according
to such audit and such an underreporting is not corrected or
correctable in the following quarter, whereupon AGT shall bear such
reasonable cost of the audit. If an audit shows any underpayment or
overpayment, a correcting payment or refund shall be made within
thirty (30) days of receipt of verification by the party owing the
same. Particular documents from which the accounting or royalties
are determined need not be retained by the AGT for more than two (2)
years after the completion of an audit thereof, if an audit has been
requested, and, in any event, no more than three (3) years from
their date of origin.
9. NEGATION OF WARRANTIES
9.1. Nothing in this Agreement is or shall be construed as:
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(a) A warranty or representation by STANFORD or HARVARD as to the
validity or scope of any Licensed Patent(s);
(b) A warranty or representation that anything made, used, sold,
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of any other
patents, copyrights, and rights;
(c) An obligation to bring or prosecute actions or suits against
third parties for infringement, except to the extent and in
the circumstances described in Article 13;
(d) Granting by implication, estoppel, or otherwise any licenses
or rights under patents or other rights of STANFORD or HARVARD
or other persons other than Licensed Patent(s), regardless of
whether such patents or other rights are dominant or
subordinate to any Licensed Patent(s); or
(e) An obligation to furnish any technology or technological
information other than that presented or described in the
Licensed Patent(s).
9.2. Except as expressly set forth in this Agreement, STANFORD AND
HARVARD MAKE NO REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY
KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE,
OR THAT THE MANUFACTURE, USE OR SALE OF THE LICENSED PRODUCT(S) WILL
NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR
ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
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9.3. AGT agrees that nothing in this Agreement grants AGT any express or
implied license or right under or to:
(a) United States Patent No. 4,237,224, "Process for Producing
Biologically Functional Molecular Chimeras"; United States
Patent No. 4,468,464 and United States Patent No. 4,740,470,
both entitled, "Biologically Functional Molecular Chimeras"
(collectively known as the Cohen/Boyer patents), or reissues
thereof; or
(b) United States Patent 4,656,134 "Amplification of Eucaryotic
Genes" or any patent application corresponding thereto.
10. INDEMNITY
10.1. AGT agrees to indemnify, hold harmless, and defend STANFORD,
HARVARD, HHMI and Stanford University Hospital and their respective
directors, governing board members, trustees, officers, faculty,
medical and professional staff, employees, students, and agents and
their respective successors, heirs, and assigns against any and all
claims arising from breach of this Agreement by AGT, any
sublicensee(s) or Co-venturers, including without limitation any and
all claims for death, illness, personal injury, property damage, and
improper business practices arising out of the manufacture, use,
sale, or other disposition of Invention(s), Licensed Patent(s), or
Licensed Product(s) by AGT or sublicensee(s) or Co-venturers, or
their customers, except as may be due solely to grossly negligent
acts by STANFORD, HHMI and/or HARVARD.
10.2. STANFORD, HARVARD and HHMI shall not be liable for any indirect,
special, consequential, or other damages whatsoever, whether
grounded in tort (including negligence), strict liability, contract
or otherwise.
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STANFORD and HARVARD and HHMI shall not have any responsibilities or
liabilities whatsoever with respect to Licensed Product(s).
10.3. AGT shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to
activities performed under this Agreement.
10.4. In addition to the foregoing, AGT shall maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier(s) to cover the activities of AGT and its
sublicensee(s). Such insurance shall provide minimum limits of
liability considered to be standard for AGT's industry prior to
human clinical trials.
Commencing with human clinical trials of Licensed Product(s), AGT
shall maintain such insurance with minimum limits of liability of
[*] and shall include STANFORD, HARVARD, HHMI, Stanford University
Hospital, their trustees, directors, officers, employees, students,
and agents as additional insureds. Such insurance shall be written
to cover claims incurred, discovered, manifested, or made during or
after the expiration of this Agreement. At STANFORD's request, AGT
shall furnish a Certificate of Insurance evidencing primary coverage
and requiring thirty (30) days prior written notice of cancellation
or material change to STANFORD. AGT shall advise STANFORD, in
writing, that it maintains excess liability coverage (following
form) over primary insurance for at least the minimum limits set
forth above. All such insurance of AGT shall be primary coverage;
insurance of STANFORD, HARVARD, HHMI or Stanford University Hospital
shall be excess and noncontributory. STANFORD acknowledges that the
insurance specified in this Paragraph may be or become unavailable
or
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unavailable on commercially practicable terms. In such event,
STANFORD agrees to discuss with AGT commercially reasonable
alternatives.
11. MARKING
Prior to the issuance of patents on the Invention(s), AGT agrees to mark
Licensed Product(s) (or their containers or labels) made, sold, or
otherwise disposed of by it under the license granted in this Agreement
with the words "Patent Pending," and following the issuance of one or more
patents, with the numbers of the Licensed Patent(s).
12. NAMES AND MARKS
It is understood that the names of HARVARD, STANFORD and HHMI will appear
in disclosure documents required by securities laws, and in other
regulatory and administrative filings in the ordinary course of AGT's
business. The above described use will be deemed to be non-commercial
uses. AGT agrees not to identify STANFORD, HARVARD or HHMI or to use the
name of any STANFORD or HARVARD faculty member, employee, or student or
any trademark, service mark, trade name, or symbol of STANFORD, HARVARD,
HHMI or the Stanford University Hospital, in any commercial advertisement
or similar material that is used to promote or sell products, without
STANFORD'S, HARVARD'S, or HHMI's prior written consent, except that AGT
may state that it has acquired this license from STANFORD and HARVARD.
13. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
13.1. AGT and STANFORD shall promptly inform each other of any suspected
infringement of any issued Licensed Patent(s) by a third party
during the term of this Agreement. During the initial term of the
Exclusive license provided in Paragraph 3.2 and for so long as the
license of exclusive rights may be extended thereafter, STANFORD and
AGT each shall have
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the right to institute an action for infringement of the Licensed
Patent(s) against such third party in accordance with this Article
13.
13.2. Joint Action
[*].
13.3. Absent joint action pursuant to Paragraph 13.2, [*] in the first
instance to (but not the obligation to):
(a) bring any action for infringement of the Licensed Patent(s),
provided that AGT will keep STANFORD advised with regard to
any action that is brought or proposed to be brought;
(b) defend any action relating to enforcement of the Licensed
Patent(s);
(c) bring such action in its own name, or, if in the opinion of
counsel for AGT, that it is necessary or desirable, in the
name of LICENSORS or in the names of LICENSORS and AGT; [*];
(d) [*];
(e) settle the lawsuit, at it sole discretion; provided that (i)
such settlement is not inconsistent with the terms of this
Agreement; [*]; and [*].
(f) [*]; and
(g) retain any monetary recovery in any action brought or proposed
to be brought by (or defended by) AGT as a result of any
judgment rendered in favor of AGT or collected as a result of
any settlement of a lawsuit hereunder; provided, however, that
sums, net of
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expenses of such litigation, that are collected by AGT on
account of past infringing sales by such third parties shall
be computed in accordance with Paragraphs 6.5 and 6.6 hereof
[*] and that AGT further [*].
13.4. Action by LICENSORS.
In the event that AGT declines to take action against an infringer,
and in the absence of an agreement to institute a suit jointly,
STANFORD may institute suit, and, at its option, join AGT as a
plaintiff. If STANFORD decides to institute suit, then it shall so
notify AGT in writing. AGT shall have the right to join STANFORD in
such suit pursuant to Paragraph 13.2. However, if AGT declines to do
so and fails to notify STANFORD in writing, within thirty (30) days
after the date of such notice, that it will join in enforcing the
patent pursuant to the provisions hereof, AGT shall be deemed to
assign to STANFORD all of AGT's rights, causes of action, and
damages resulting from any such alleged infringement. STANFORD shall
bear the entire cost of such litigation and shall be entitled to
retain the entire amount of any recovery or settlement it obtains
from said infringer.
13.5. Multiple Infringement.
Notwithstanding any provision or implication to the contrary in this
Agreement, neither party shall be obligated under this Article 13 to
proceed against more than one infringer at a time.
13.6. Should any of STANFORD, HARVARD or AGT commence a suit under the
provisions of this Article 13 and thereafter elect to abandon the
same, it shall give timely notice to the other party who may, if it
so desires, continue prosecution of such suit, provided, however,
that the sharing of
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expenses and any recovery in such suit shall be as agreed upon
between STANFORD and AGT.
14. SUBLICENSE(s)
14.1. AGT may grant sublicense(s) during the Exclusive period.
14.2. If at any time [*], AGT has not commercialized or is not actively
attempting to commercialize the Invention(s) in a potential and
material market or market territory, AGT will attempt to:
(a) Identify a willing sublicensee reasonably acceptable to AGT;
and
(b) Negotiate in good faith a sublicense(s) in such market or
territory.
14.3. Any sublicense(s) granted by AGT under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement,
except:
(a) Sublicense terms and conditions shall reflect that any
sublicensee(s) shall not further sublicense [*]; and
(b) The earned royalty rate specified in the sublicense(s) may be
at higher rates than the rates in this Agreement. Any such
sublicense(s) also shall expressly include the provisions of
Articles 8, 9, and 10 for the benefit of STANFORD, HARVARD and
HHMI and provide for the transfer of all obligations,
including the payment of royalties specified in such
sublicense(s), to STANFORD or its designee, in the event that
this Agreement is terminated.
14.4. AGT agrees to provide STANFORD with a copy of all portions of
sublicense agreement(s) which are relevant to STANFORD and
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HARVARD and to the obligations of AGT and its sublicensees thereto
under this Agreement.
14.5. If AGT grants sublicense(s) solely under LICENSORS' rights in the
Licensed Patent(s), AGT shall pay to STANFORD:
(a) In the case of sublicense(s) for the fields of human and
veterinary healthcare or genetically engineered animals, [*]
of the following revenue: all non-royalty income and all
earned royalties on Net Sales for sublicensee(s) in excess of
royalty due to STANFORD under Paragraph 6.7 which are actually
received by AGT; and
(b) In the case of sublicense(s) for the fields of Research
Reagents or genetically engineered plants, [*] of the
following revenue: all non-royalty income and all earned
royalties on Net Sales of sublicensee(s) in excess of royalty
due to STANFORD under Paragraph 6.7 which are actually
received by AGT.
14.6. The following provisions shall apply to sublicense(s) other than
sublicense(s) covered in Paragraph 14.5 above granted to
non-Co-venturers on or before [*]:
(a) If AGT grants sublicense(s) other than sublicense(s) covered
in Paragraph 14.5 above to non-Co-venturers, in the fields of
human and veterinary healthcare or genetically engineered
animals, under LICENSORS' rights in the Licensed Patent(s),
then AGT shall pay to STANFORD: [*].
(b) If AGT grants sublicense(s) other than sublicense(s) covered
in Paragraph 14.5 above to non-Co-venturers, in the fields of
Research Reagents or genetically engineered plants, under
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LICENSORS' rights in the Licensed Patent(s), then AGT shall
pay to STANFORD: [*].
(c) Notwithstanding the foregoing, in no event will STANFORD be
paid less than [*] of the Net Sales of AGT's sublicensees
other than Co-venturers unless AGT elects, at its sole
discretion, upon any execution of a sublicense to a
non-Co-venturer hereunder, to pay STANFORD [*] covered by
Paragraphs 14.6(a)(i) and 14.6(b)(i) above, in which case
STANFORD shall receive [*].
(d) Notwithstanding all of the foregoing, in the event that
payments and earned royalties under sublicenses of LICENSORS'
rights in the Licensed Patents are to be shared with
Co-venturers under the AGT-Genovo Agreement or any other Joint
Venture Agreements between AGT and Co-venturers, payments to
STANFORD shall be made pursuant to Paragraphs 14.6(a)(i) and
(ii) above, or Paragraphs 14.6(b)(i) and (ii) above, if
applicable, as modified by Paragraph 14.6(c), based on that
portion of upfront cash payments, other license fee payments
and earned royalties received by AGT after deduction of any
amounts payable to any Co-venturer or retained by the
Co-venturer. Accordingly, for sublicenses to third parties
resulting from the joint venture between AGT and Genovo, Inc.,
payments under Paragraphs 14.6(a)(i) and (ii) shall be based
[*].
(e) For the avoidance of doubt, it is acknowledged and agreed that
payments for [*] for the purposes of this Agreement.
14.7. Subject to Paragraph 6.16, the following provisions shall apply to
sublicense(s) other than sublicense(s) covered in Paragraph 14.5
above granted to non-Co-venturers after [*]: If AGT grants
sublicense(s), other
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than sublicense(s) covered in Paragraph 14.5 above, to
non-Co-venturers in the fields of Research Reagents or genetically
engineered plants, under LICENSORS' rights in the Licensed
Patent(s), then AGT shall pay to STANFORD [*] of the following
non-royalty income: upfront cash payments and other license fee
payments received by AGT in consideration of said sublicense(s).
15. TERMINATION
15.1. AGT may terminate this Agreement by giving STANFORD at least thirty
(30) days prior written notice.
15.2. STANFORD may terminate this Agreement on thirty days' prior written
notice in the event of material breach by AGT in the substantial
performance of its essential obligations hereunder, specifically
including the payment of royalties and providing of reports, by
causes and reasons within its control and responsibility (and not
subject to force Majeure as set forth below), but only if AGT has
not cured such breach or has not taken substantial steps toward
curing such breach within sixty (60) days after written notice
requesting the correction of such breach.
15.3. Surviving any termination are:
(a) AGT's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of AGT or STANFORD, accrued or to
accrue, because of any breach or default by the other party;
(c) The provisions of Articles 8, 9, and 10; and
(d) AGT's right to sell or otherwise dispose of any Licensed
Product(s) remaining in its inventory at the time of
termination, provided that royalties shall be due to STANFORD
on Net Sales
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of such inventory as if this Agreement were still in full
force and effect.
16. ASSIGNMENT
AGT may assign this Agreement with the prior written consent of STANFORD.
However, upon notice to STANFORD, AGT may, without further obligation to
STANFORD, assign this Agreement to an entity with which it merges or
consolidates or to a corporation, partnership or other business entity
which during the term of this Agreement, directly or indirectly, is
controlled by, controls, or is under common control with AGT, or to which
substantially all of its assets relating to the Licensed Patent(s) are
sold or otherwise transferred or to a partnership of which AGT is a
partner.
17. ARBITRATION
17.1. Any controversy arising under or related to a material provision of
this Agreement, and any disputed, substantial claim by either party
against the other under this Agreement, excluding any dispute
relating to patent validity or infringement arising under this
Agreement or any controversy or dispute relating to HHMI's rights
under Article 10 hereof, shall be settled by arbitration in
accordance with the Licensing Agreement Arbitration Rules of the
American Arbitration Association.
17.2. Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by AGT and STANFORD
within thirty (30) days of such arbitration request. Judgment upon
the decision rendered by the arbitrator shall be final and
nonappealable and may be entered in any court having jurisdiction
thereof.
17.3. The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit before a United States Federal Court
for a
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District to be chosen by the party other than the party which
initiated the request for arbitration. The Arbitrator may limit the
scope, time and/or issues involved in discovery.
17.4. Any arbitration shall be held at a neutral location mutually agreed
upon in writing by the parties hereto and shall be conducted in
adherence to the Federal Rules of Evidence.
17.5. The fact that arbitration proceedings have been requested, are being
conducted and/or have concluded, as well as all information
concerning the nature of the controversy, the subject matter of the
arbitration, materials and/or testimony produced for discovery
whether or not admitted into evidence as well as the nature and/or
details of any decision by an arbitrator, shall be maintained in
confidence to the fullest extent provided by law. Any disclosure of
any of the foregoing by any party shall be preceded by written
notice to the other parties of the nature, scope, content, place,
date and time of any such intended disclosure, permitting any other
party hereto to seek a protective order or any other action
appropriate under the circumstances.
17.6. All expenses incurred in the arbitration, without limitation, shall
be divided equally among the parties. Each party shall be
responsible for paying its own share of such expenses.
18. CONFIDENTIALITY
18.1. AGT, in its performance hereunder, may be disclosing to the Office
of Technology Licensing at STANFORD confidential and proprietary
information comprising correspondence, documents (such as progress
reports, royalty reports and development plans) and other
information relating to AGT's performance of its obligations under
this Agreement ("Confidential Information").
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18.2. The Office of Technology Licensing at STANFORD agrees to use the
Confidential Information only for the purpose for which disclosed by
AGT.
18.3. The Office of Technology Licensing at STANFORD agrees not to
disclose, directly or indirectly, the Confidential Information to
any third person or entity. The Office of Technology Licensing at
STANFORD shall have the right to disclose such Confidential
Information to employees of the Office for Technology and Trademark
Licensing at HARVARD and to other employees of STANFORD and HARVARD
who have a need to know such information and agree to be bound by
the confidentiality provisions herein. The Office of Technology
Licensing at STANFORD and the Office for Patent and Trademark
Licensing at HARVARD will treat all such information as confidential
and proprietary property of AGT. STANFORD and HARVARD may, however,
disclose to third parties total annual royalty payments and general
statistical information made hereunder in the context of disclosing
statistical information pertaining to the performance of the Office
of Technology Licensing.
18.4. The term "Confidential Information" does not include information
that
(a) is or becomes available to the public other than by disclosure
in violation of this Agreement,
(b) was within the possession of STANFORD or HARVARD prior to the
disclosure thereto by AGT,
(c) is obtained by the STANFORD and HARVARD from a third party who
had the legal right to disclose the information to STANFORD
and HARVARD, or
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(d) is required to be disclosed by law, government regulation or
court order requiring disclosure thereof, or is required to be
disclosed to HHMI and/or DHHS as sponsors of the research
resulting in the Invention(s), in any such case, provided that
AGT is provided with prior written notice of any such
disclosure so that AGT may seek a protective order or take
other action reasonable in light of the circumstances.
19. MISCELLANEOUS
19.1. Waivers.
Any delay or forbearance by either party in exercising any right
hereunder shall not be deemed a waiver of that right.
19.2. Entire Agreement.
This Agreement, including the Exhibits attached hereto and which are
incorporated herein by reference, contains the entire understanding
of the parties hereto, and there are no other agreements or
understandings, express or implied, written or oral, as to the
subject matter hereof. Without limiting the generality of the
foregoing, the License Agreement is hereby superseded.
19.3. Amendments.
This Agreement may not be amended or altered except by a written
instrument signed by an authorized representative of each party.
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19.4. Governing Laws.
This Agreement shall be governed by the laws of the State of
California applicable to agreements negotiated, executed and
performed wholly within California.
19.5. Severability.
The parties agree that if any part, term, or provision of this
Agreement shall be found illegal or in conflict with any valid
controlling law, the validity of the remaining provisions shall not
be affected thereby. In the event of the legality of any provision
of this Agreement is brought into question because of a decision by
a court of competent jurisdiction, the parties shall revise the
provision in question or may delete it entirely so as to comply with
the decision of said court.
20. FORCE MAJEURE
Neither AGT nor its sublicensees shall be liable or be in breach of
any provision of this Agreement for any failure or omission on its
or their part to perform any obligation hereof because of force
majeure, including, without limitation, war, riot, fire, explosion,
flood, sabotage, accident or other impediments or hindrances of
transportation, strike or other labor disturbances, governmental act
or omission including governmental prohibition, or failure to
approve, of the manufacture, sale or use of a Licensed Product, or
any other cause beyond the control of the party; provided that such
failure or omission resulting from one of the foregoing causes is
cured as soon as is practicable after the occurrence of one or more
of the above-mentioned causes.
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21. NOTICES
All notices under this Agreement shall be deemed to have been fully
given when done in writing and deposited in the United States mail,
registered or certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
900 Welch Road, Suite 350
Palo Alto, CA 94304-1850
Attention: Director
To AGT: ARIAD Gene Therapeutics, Inc.
26 Landsdowne Street
Cambridge, MA 02139
Attention: Chairman & Chief Executive Officer
Either party may change its address upon written notice to the other
party.
22. COUNTERPARTS
This Agreement may be executed in one or more counterpart copies, each of
which shall be deemed to be an original and all of which shall together be
deemed to constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE LELAND
STANFORD JUNIOR UNIVERSITY
Signature /s/ Katharine Ku
--------------------------
Name Katharine Ku
-------------------------------
Title Director, Technology Licensing
------------------------------
Date Jan. 26, 1998
-------------------------------
ARIAD GENE THERAPEUTICS, INC.
/s/ Harvey Berger
------------------------------------
Harvey J. Berger, M.D.
Chairman and Chief Executive Officer
Date January 21, 1998
-------------------------------
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EXHIBIT A
---------
INVENTIONS
[*]
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