EXHIBIT 10.50
LICENSE AGREEMENT
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This Agreement, effective as of July 26, 1996 ("Effective Date") and
executed in duplicate originals, by and between Albert Einstein College of
Medicine of Yeshiva University, a division of Yeshiva University, a corporation
organized and existing under the laws of the State of New York and having
offices at 1300 Morris Park Avenue, Bronx, New York 10461 ("AECOM") and
Renaissance Cell Technologies, Incorporated, P.O. Box 16415, Chapel Hill, North
Carolina 27516, a corporation organized and existing under the laws of the State
of Delaware ("Renaissance").
WHEREAS, AECOM is the owner of U.S. and foreign patent applications
relating to (l) the proliferation of hepatocyte precursors and (2) hepatoblasts
and methods of isolating same;
WHEREAS, Renaissance is desirous of acquiring an exclusive license
under such U.S. and foreign patent applications and any patents issuing thereon;
WHEREAS, AECOM is willing to grant an exclusive license under such U.S.
and foreign patent applications and any patents issuing thereon to Renaissance
under the terms and conditions set forth below.
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Definitions
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1.01 "Patent Rights" means the United States and foreign patent applications
listed on Appendix A, including any divisionals, continuations and
continuations-in-part, and any patents issuing thereon, including any
substitutions, extensions, reissues, reexaminations, and inventor's
certificates.
1.02 "Licensed Product" means any product, the manufacture, use or sale of
which is covered by a claim of Patent Rights.
1.03 "Net Sales" means the total consideration received by Renaissance or
its sublicensees for sales by Renaissance or its sublicensees of
Licensed Products, less transportation charges, sales tax, use tax,
excise tax, value added taxes, custom duties, normal and customary
quantity and cash discounts, and allowances and credits for return of
Licensed Products.
Portions of this exhibit marked [ * ] have been omitted pursuant to a
request for confidential treatment.
2. License Grant
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2.01 Subject to the rights, if any, of the U.S. Government under 35 U.S.C.
ss. 200 et seq., AECOM grants to Renaissance a worldwide, exclusive
license with the right by Renaissance to grant sublicenses, under the
Patent Rights to make, have made, use, sell, offer for sale and import
Licensed Products. Renaissance will not grant any sublicense under
Patent Rights unless it first receives the prior written consent of
AECOM, which consent will not be unreasonably withheld.
2.02 Nothing contained in this Agreement shall be construed or interpreted
as a grant, by implication or otherwise, of any license except as
expressly specified in Paragraph 2.01 hereof.
2.03 Notwithstanding the rights granted to Renaissance pursuant to Paragraph
2.01, AECOM shall retain the right to make and use Licensed Products in
its own laboratories for scientific purposes and for continued research
provided that such Licensed Products are not sold by AECOM.
3. Payments
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3.01 Renaissance shall pay to AECOM [ * ]percent ([ * ]%) of Net Sales of
Licensed Products utilizing hepatic stem or progenitor cells which have
not been modified and the isolation of which is covered by a valid or
pending patent claim. For all other Licensed Products utilizing hepatic
stem or progenitor cells and based on valid or pending patent claims,
Renaissance shall pay to AECOM [ * ] percent ([ * ]%) of Net Sales.
Renaissance shall make such payments for the longer of ten (10) years
from the first commercial sale by Renaissance of a Licensed Product or
until the expiration of the Patent Rights which cover a Licensed
Product made, used or sold by Renaissance.
3.02 If Renaissance does not terminate this Agreement pursuant to paragraph
5.02 prior to January 1, 2004, then beginning in the calendar year 2004
and in each calendar year thereafter, Licensee agrees to pay to AECOM
guaranteed minimum annual royalties (to be credited against actual
royalties payable pursuant to paragraph 3.01) during each calendar year
of [ * ] Dollars ($[ * ]). This guaranteed minimum annual royalty is
non-refundable and will be paid to AECOM in equal semi-annual
installments pursuant to Article 4 during each such calendar year. In
no event shall any difference between actual royalties and minimum
guaranteed royalties in any such calendar year affect Licensee's
obligation to pay minimum guaranteed royalties in any other calendar
year.
3.03 Renaissance's failure to pay royalties under paragraph 3.01 or to make
any of the payments set forth in paragraph 3.03, after notice of such
failure and an opportunity to cure, shall be the equivalent of a
termination of this Agreement by Renaissance pursuant to paragraph
5.02.
[ * ] Confidential Treatment Requested; Certain Information Omitted and
Filed Separately with the SEC.
3.04 Only one royalty will be payable on Net Sales by Renaissance of a
Licensed Product under paragraph 3.01, regardless of the number of
patent claims of Patent Rights covering such Licensed Product.
4. Payments and Records
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4.01 All payments required to be made by Renaissance to AECOM pursuant to
this Agreement shall be made to AECOM in U.S. Dollars by check payable
to AECOM and sent to the address set out in paragraph 12.01 for AECOM.
4.02 Payment due from Renaissance to AECOM pursuant to paragraphs 3.01 and
3.02 will be paid within twenty (20) days after the end of each
semi-annual period during which the payment accrued. Payment shall be
accompanied by a statement of the amount of Net Sales realized by
Renaissance, the amount of Net Proceeds received by Renaissance, the
amount of any minimum royalty due to AECOM, and the total payment due
from Renaissance to AECOM.
4.03 Renaissance shall maintain the usual books of account and records
showing sales of Licensed Products, Net Sales attributable to such
sales. Such books and records shall be open to confidential inspection
by AECOM during usual business hours, by an independent certified
public accountant to whom Renaissance has no reasonable objection, for
two (2) years after the calendar year to which they pertain, for the
sole purpose of verifying the accuracy of the payments made to AECOM by
Renaissance pursuant to this Agreement. Inspection shall be reasonably
limited to those matters related to Renaissance's payment obligations
under this Agreement.
5. Term and Termination of Agreement
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5.01 Unless terminated earlier under other provisions hereof, this Agreement
will expire upon the expiration of Renaissance's last obligation to pay
royalty hereunder.
5.02 Renaissance may terminate this Agreement and the licenses granted
hereunder anytime after execution of this Agreement, by giving notice
to AECOM thirty (30) days prior to such termination. Upon any such
termination, all rights in Patent Rights will revert to AECOM.
5.03 If either party defaults on or breaches any material condition of this
Agreement, the aggrieved party may serve notice upon the other party of
the alleged default or breach. If such default or breach is not
remedied within sixty (60) days from the date of such notice, the
aggrieved party may at its election terminate this Agreement. Any
failure to terminate hereunder shall not be construed as a waiver by
the aggrieved party of its right to terminate for future defaults or
breaches.
5.04 If either party becomes insolvent or makes an assignment for the
benefit of creditors or if proceedings for a voluntary bankruptcy are
instituted on behalf of either party or if either party is declared
bankrupt or insolvent, the other party may at its election terminate
this Agreement by notice to the bankrupt or insolvent party.
5.05 Termination of this Agreement by either party shall not prejudice the
right of AECOM to recover any payment due at the time of termination or
which becomes due after termination based upon rights vested prior to
termination and shall not prejudice any cause of action or claim of
either party accruing under the licenses granted herein.
6. Prohibition On Use of AECOM's Name
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6.01 Renaissance shall not use the name of AECOM without its prior written
consent, except for the use of AECOM's name by Renaissance as required
by law, regulation or judicial order, in which events Renaissance will
promptly inform AECOM prior to any such required use.
7. Patent Prosecution And Maintenance.
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7.01 Renaissance will pay the cost of prosecuting and maintaining the Patent
Rights using patent counsel selected by Renaissance and reasonably
acceptable to AECOM. The parties will keep each other fully informed
concerning such applications and will consult with each other
concerning the prosecution of such applications.
7.02 Renaissance may, upon reasonable notice to AECOM, decide to discontinue
paying the expenses associated with any particular application or
patent. If Renaissance decides to discontinue paying such expenses,
AECOM may pay such expenses. Renaissance shall retain no further rights
in any such application or patent for which Renaissance decides to
discontinue paying such expenses and AECOM assumes such responsibility.
8. Force Majeure
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8.01 Each party hereto shall be relieved of its obligations hereunder to the
extent that fulfillment of such obligations shall be prevented by acts
of war, labor difficulties, riot, fire, flood, hurricane, windstorm,
acts or defaults of common carriers, governmental laws, acts or
regulations, shortage of materials or any other occurrence whether or
not similar to the foregoing beyond the reasonable control of the party
affected thereby.
9. Amendment and Assignment
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9.01 This Agreement sets fourth the entire understanding between the parties
pertaining to the subject matter hereof.
9.02 Except as otherwise provided herein, this Agreement may not be amended,
supplemented or otherwise modified except by an instrument in writing
signed by both parties.
9.03 Without the prior written approval of the other party, which approval
shall not be unreasonably withheld, neither party may assign this
Agreement except to a party
acquiring substantially all of the assigning party's business to which
this Agreement relates and provided that Renaissance makes all required
payments to AECOM under paragraph 3.01.
10. Infringement
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10.01 Renaissance shall have the right, in its sole discretion and its
expense, to initiate legal proceedings on its behalf or in AECOM's
name, if necessary, against any infringer of Patent Rights. Renaissance
shall notify AECOM of its intention to initiate such proceedings at
least thirty (30) days prior to commencement thereof. Any settlement or
recovery received by Renaissance from any such proceeding shall be
divided [*] percent ([*]%) to Renaissance and [*] percent ([*]%)
to AECOM after Renaissance deducts from any such settlement or
recovery its reasonable counsel fees and out-of-pocket expenses
relative to any such legal proceeding. If Renaissance decides not to
initiate legal proceedings against any such infringer, then AECOM shall
have the right to initiate such legal proceedings. Any settlement or
recovery received from any such proceeding shall be divided [*]
percent ([*]%) to Renaissance and [*] percent ([*]%) to AECOM after
AECOM deducts from any such settlement or recovery its reasonable
counsel fees and out-of-pocket expenses relative to any such legal
proceeding.
10.02 In the event that either party initiates or carries on legal
proceedings to enforce any Patent Rights against an alleged infringer,
the other party shall fully cooperate with and supply all assistance
reasonably requested. Further, the other party at its expense, shall
have the right to be represented by counsel of its choice in any such
proceeding, provided that the party who initiates or carries on the
legal proceedings shall have the sole right to conduct such proceedings
and to enter into any settlement thereof for the mutual benefit of
AECOM and Renaissance.
11. Miscellaneous Provisions
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11.01 This Agreement shall be interpreted and construed in accordance with
the laws of the State of New York.
11.02 This Agreement has been prepared jointly and shall not be strictly
construed against either party.
11.03 If any term or provision of this Agreement or the application thereof
to any person or circumstance shall to any extent be invalid or
unenforceable, the remainder of this Agreement or the application of
such term or provision to persons or circumstances other than those as
to which it is held invalid or unenforceable shall not be affected
thereby and each term and provision of this Agreement shall be valid
and enforced to the fullest extent permitted by law.
[ * ] Confidential Treatment Requested; Certain Information Omitted and
Filed Separately with the SEC.
11.04 Renaissance agrees to defend at its sole expense, to indemnify and to
hold AECOM, its trustees, employees and agents harmless from any
claims, liabilities, suits or judgments arising out of this Agreement,
so long as such claims, liabilities, suits, or judgments are not
attributable to negligent or intentionally wrongful acts or omissions
by AECOM, its trustees, employees and agents or a breach by AECOM of
this Agreement.
11.05 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by AECOM that anything made or
used by Renaissance under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties; or
(b) Granting by implication, estoppel, or otherwise any license,
right or interest other than as expressly set forth herein.
11.06 Except as expressly set forth in this Agreement, the parties MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW, STATUTE OR OTHERWISE,
AND THE PARTIES SPECIFICALLY DISCLAIM ANY IMPLIED WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR WARRANTY OF
NON-INFRINGEMENT.
12. Notices
12.01 Any notice or report required or permitted hereunder shall be given in
writing by registered or certified mail, return receipt requested, to
the following addresses (or such other address as a party may from time
to time instruct the other party):
To AECOM:
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Albert Einstein College of Medicine of Yeshiva University
1300 Morris Park Avenue Bronx
New York 10461
Attn: Dr. Sidney L. Goldfischer
With Copy To:
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Amster, Rothstein & Ebenstein
90 Park Avenue
New York, New York 10016
Attn: Kenneth P. George, Esq.
To Licensee:
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Renaissance Cell Technologies, Incorporated
P.O. Box 16415
Chapel Hill, North Carolina 27516
IN WITNESS WHEREOF, the parties have entered into this Agreement as of the day
and year first above written.
ALBERT EINSTEIN COLLEGE OF MEDICINE
OF YESHIVA UNIVERSITY
By /s/ Emanuel Genn
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Witness: Title Associate Dean for Business Affairs
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/s/ [illegible] Date August 13, 1996
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RENAISSANCE CELL TECHNOLOGIES, INC.
By /s/ Lola M. Reid
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Witness: Title President
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/s/ [illegible] Date July 26, 1996
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