CONFIDENTIAL TREATMENT REQUESTED EXHIBIT 10.7
CONFIDENTIAL TREATMENT REQUESTED UNDER RULE 24(b)(2) OF THE SECURITIES AND
EXCHANGE ACT OF 1934. CONFIDENTIAL TREATMENT REQUESTED IS REQUESTED AND IS NOTED
WITH "[CONFIDENTIAL TREATMENT REQUESTED]." AN UNREDACTED VERSION OF THIS
DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
PATENT AND KNOW-HOW
ASSIGNMENT AND LICENSE
OPTION AGREEMENT
BY AND AMONG
THE SCHOOL OF PHARMACY,
UNIVERSITY OF LONDON
AND
SOMANTA LIMITED
CONFIDENTIAL TREATMENT REQUESTED
Patent and know-how assignment and license option agreement
THIS AGREEMENT dated March 16, 2004 is between:
(1) THE SCHOOL OF PHARMACY ("The School of Pharmacy") incorporated in
England whose principal address is 28-38 Brunswick Square, London WC1N
1AX; and
(2) SOMANTIS LIMITED ("Somantis") a company incorporated in England and
Wales, (with company number [4201851]) whose registered office is at
117 Alexandra Park Road, London N10 2DP.
RECITALS:
A. The School of Pharmacy is the owner of the Patents (as defined below)
and possesses related Know-how.
B. The School of Pharmacy is willing to grant to Somantis and Somantis is
willing to accept, an option to obtain an assignment of the Patents and
a licence to use the Know-how (as defined below), in accordance with
the provisions of this Agreement.
C. Somantis and The School of Pharmacy have entered into a Research
Collaboration Agreement under which The School of Pharmacy shall
conduct further research funded by Somantis on the invention(s)
disclosed by the Patents.
D. In accordance with the Research Collaboration Agreement between the
School of Pharmacy and Somantis, Somantis has agreed to pay the patent
costs.
IT IS AGREED as follows:
1. Definitions
In this Agreement, the following words shall have the following meanings:
Affiliate In relation to a Party, means any entity or
person, which controls, is controlled by,
or is under common control with that Party.
For the purposes of this definition,
"control" shall mean direct or indirect
beneficial ownership of 50% (or, outside a
Party's home territory, such lesser
percentage as is the maximum, permitted
level of foreign investment) or more of the
share capital, stock or other participating
interest carrying the right to vote or to
distribution of profits of that entity or
person, as the case may be.
Field The treatment of cancer using the
invention(s) disclosed in the Patents.
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CONFIDENTIAL TREATMENT REQUESTED
Know-how All technical information in the Field
created during research carried out by The
School of Pharmacy under the direction of
Prof. Laurence Patterson in the possession
of The School of Pharmacy relating directly
to the inventions claimed in the Patents.
Option Exercise Date Shall have the meaning given in Clause 8.1.
Net Receipts The total amounts received by Somantis or
its Affiliates from any person to whom it
grants a licence or sub-licence under the
Patents and/or Know-how (less any Value
Added Tax or other sales tax), excluding
payments made for research work actually
performed, but including without
limitation, up-front payments, milestone
payments, royalties, Premium on Equity from
a licensee or sub-licensee, in each case
reasonably allocable to such licence or
sublicence rights under the Patents and/or
Know-how. "Premium on Equity" means the
amount by which amounts received by
Somantis for a particular equity security
exceed the fair market value of such
security.
Net Sales Value The [CONFIDENTIAL TREATMENT REQUESTED]
price of Royalty-bearing Products sold by
Somantis or its Affiliates to independent
third parties in arm's length transactions
exclusively for money or, where the sale is
not at arm's length, the price that would
have been so [CONFIDENTIAL TREATMENT
REQUESTED] if it had been at arm's length,
after deduction of normal trade discounts
actually granted and any credits actually
given and, provided the amounts are
separately charged on the relevant
[CONFIDENTIAL TREATMENT REQUESTED], any
costs of packaging, insurance, carriage and
freight, any value added tax or other sales
tax, and any import duties or similar
applicable government levies.
Parties The School of Pharmacy and Somantis, and
"Party" shall mean either of them.
Patents Any and all of the patents and patent
applications referred to in Schedule 1,
including any continuations, continuations
in part, extensions, reissues, divisions,
and any patents, supplementary protection
certificates and similar rights that are
based on or derive priority from the
foregoing.
Research Collaboration A research collaboration agreement between
Agreement The School of Pharmacy and Somantis under
which Somantis shall fund further research
by The School of Pharmacy on the
invention(s) disclosed in the Patents on
terms acceptable to both parties.
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CONFIDENTIAL TREATMENT REQUESTED
Royalty-bearing Any and all products in the Field that are
Products manufactured, sold or otherwise supplied by
Somantis and are within any Valid Claim of
the Patents or use the Know-how.
Territory The World.
Valid Claim A claim of a patent or patent application
that has not expired or been held invalid
or unenforceable by a court of competent
jurisdiction in a final and non-appealable
judgment.
2. Grant of rights
2.1 Grant of Option. The School of Pharmacy hereby grants to Somantis the
right to purchase and acquire the Patents in accordance with Clause
8.1.
2.2 Assignment and Licence. On the Option Exercise Date subject to the
provisions of this Agreement, The School of Pharmacy shall:
(a) Assign the Patents to Somantis; and
(b) Grant to Somantis an exclusive licence in the Field to use the
Know-how, with the right to sub-license, to develop,
manufacture, have manufactured, use and sell Royalty-bearing
Products in the Field in the Territory.
2.3 Formal assignments and licences. In order to effect the assignments and
licence contemplated by Clause 2.2, the Parties shall execute such
formal assignments and licences as may be necessary or appropriate for
registration with Patent Offices and other relevant authorities in
particular territories; and in any event, at Somantis' request, The
School of Pharmacy shall execute an assignment in the form set out in
Schedule 3. In the event of any conflict in meaning between any such
assignment or licence and the provisions of this Agreement, the
provisions of this Agreement shall prevail wherever possible. Prior to
the execution of the formal assignment(s) and licence(s) (if any)
referred to above, the Parties shall so far as possible have the same
rights and obligations towards one another as if such assignment(s) and
licence(s) had been granted. The Parties shall use reasonable
endeavours to ensure that, to the extent permitted by relevant
authorities, this Agreement shall not form part of any public record.
2.4 Reservation of rights. From the Option Exercise Date Somantis grants to
The School of Pharmacy the non-exclusive right to use the Patents, and
The School of Pharmacy reserves the non-exclusive right for itself to
use the Know-how, for the purposes of academic, non-commercial research
and publication of such research, subject to the confidentiality
provisions set out in Clause 3 below.
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CONFIDENTIAL TREATMENT REQUESTED
3. Know-how and Confidential Information
3.1 Provision of Know-how. Upon Somantis' reasonable request, The School of
Pharmacy shall supply Somantis with all Know-how in its possession that
The School of Pharmacy is at liberty to disclose and has not previously
been disclosed and which is reasonably necessary or desirable to enable
Somantis to undertake the further development of the Royalty-bearing
Products. The Know-how shall be subject to the confidentiality
provisions of Clause 3.4 and The School of Pharmacy shall be bound by
such provisions as if the Know-how had been developed by Somantis and
disclosed to The School of Pharmacy hereunder. If it is agreed that any
representative of The School of Pharmacy shall travel to Somantis'
premises in connection with such supply, Somantis shall reimburse all
travel (at business class rates), accommodation and subsistence costs
incurred.
3.2 Status of Know-how. Somantis acknowledges that the Know-how is at an
early stage of development. Accordingly, specific results cannot be
guaranteed and any results, materials, information or other items
(together "Delivered Items") provided under this Agreement are provided
"as is" and without any express or implied warranties, representations
or undertakings. As examples, but without limiting the foregoing, The
School of Pharmacy does not give any warranty that Delivered Items do
not infringe third party rights, are of merchantable or satisfactory
quality, are fit for any particular purpose, comply with any sample or
description, or are viable, uncontaminated, safe or non-toxic.
3.3 Responsibility for development of Royalty-bearing Products. Somantis
shall be exclusively responsible for the technical and commercial
development and manufacture of Royalty-bearing Products and for
incorporating any modifications or developments thereto that may be
necessary or desirable and for all Royalty-bearing Products sold or
supplied, and accordingly Somantis shall indemnify The School of
Pharmacy in the terms of Clause 7.4.
3.4 Confidentiality obligations. Subject to the terms of this Agreement,
each Party ("Receiving Party") undertakes:
(a) to maintain as secret and confidential all Know-how and other
technical or commercial information obtained directly or
indirectly from the other Party ("Disclosing Party") in the
course of or in anticipation of this Agreement and to respect
the Disclosing Party's rights therein,
(b) to use the same exclusively for the purposes of this
Agreement, and
(c) to disclose the same only to those of its employees,
contractors and licensees or sublicensees pursuant to this
Agreement (if any) to whom and to the extent that such
disclosure is reasonably necessary for the purposes of this
Agreement.
3.5 Exceptions to obligations. The provisions of Clause 3.4 shall not apply
to Know-how and other information which the Receiving Party can
demonstrate by reasonable, written evidence:
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CONFIDENTIAL TREATMENT REQUESTED
(a) was, prior to its receipt by the Receiving Party from the
Disclosing Party, in the possession of the Receiving Party and
at its free disposal; or
(b) is subsequently disclosed to the Receiving Party without any
obligations of confidence by a third party who has not derived
it directly or indirectly from the Disclosing Party; or
(c) is or becomes generally available to the public through no act
or default of the Receiving Party or its agents, employees,
Affiliates or licensees or sub-licensees; or
(d) the Receiving Party is required to disclose to the courts of
any competent jurisdiction, or to any government regulatory
agency or financial authority, provided that the Receiving
Party shall (i) inform the Disclosing Party as soon as is
reasonably practicable, and (ii) at the Disclosing Party's
request seek to persuade the court, agency or authority to
have the information treated in a confidential manner, where
this is possible under the court, agency or authority's
procedures; or
(e) in the case of information disclosed by The School of Pharmacy
to Somantis, is disclosed to actual or potential customers for
Royalty-bearing Products in so far as such disclosure is
reasonably necessary to promote the sale or use of
Royalty-bearing Products, provided that the customers sign a
written confidentiality undertaking at least as restrictive as
Clauses 3.4 and 3.5.
3.6 Disclosure to employees. The Receiving Party shall procure that all of
its employees, contractors and licensees or sub-licensees pursuant to
this Agreement (if any) who have access to any of the Disclosing
Party's information to which Clause 3.4 applies, shall be made aware of
and subject to these obligations and shall have entered into written
undertakings of confidentiality at least as restrictive as Clauses 3.4
and 3.5 and which apply to the Disclosing Party's information.
3.7 Right to Publish Notwithstanding the provisions of Clause 3.4, The
School of Pharmacy shall have the right to use, publish and present the
Patents and Know-how for academic and research purposes (irrespective
of applications). The School of Pharmacy will use reasonable endeavours
to submit material intended for publication which relates to the
Patents or the Know-how to Somantis in writing not less than thirty
(30) days in advance of the submission for publication. Somantis may
request that submission for publication be delayed if Somantis
reasonably believes that the intended publication would materially
damage its commercial interests (such as, without limitation, the
protection of confidential information or the filing of patent
applications). A delay imposed on submission for publication as a
result of a request made by Somantis shall not exceed sixty (60) days
from the date of receipt of the material by Somantis. Notification of
the request for delay in submission for publication must be received by
The School of Pharmacy within fourteen (14) days after the receipt of
the material by Somantis, failing which The School of Pharmacy shall be
free to assume that Somantis has no objection to the proposed
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CONFIDENTIAL TREATMENT REQUESTED
publication. Nothing in this Agreement shall prevent any registered
student of The School of Pharmacy from submitting for a degree of The
School of Pharmacy or the University of London a thesis based on or
related to the Patents or the Know-how, the examination of such a
thesis by examiners appointed by The School of Pharmacy or the
University of London, or the deposit of such a thesis in a library of
The School of Pharmacy or the University of London in accordance with
the relevant procedures of The School of Pharmacy or the University of
London.
4. Payments
4.1 Option consideration. Within 30 days of the Option Exercise Date,
Somantis shall pay The School of Pharmacy the non-refundable,
non-deductible sum of [CONFIDENTIAL TREATMENT REQUESTED].
4.2 Somantis shall pay The School of Pharmacy [CONFIDENTIAL TREATMENT
REQUESTED] on the successful completion of animal studies,
demonstrating efficacy for the drug under development.
4.3 Somantis shall as and when requested by The School of Pharmacy pay The
School of Pharmacy an amount equal to those costs incurred by The
School of Pharmacy in applying for and prosecuting the Patents,
including entering the national/regional phase of the prosecution of
the Patents together with all other costs incurred in the prosecution
of the Patents and the legal fees incurred by The School of Pharmacy in
negotiating this Agreement.
4.4 Somantis shall pay The School of Pharmacy [CONFIDENTIAL TREATMENT
REQUESTED] on the first successful completion of Phase I clinical
trials of any of the Royalty-bearing Products (defined as completion of
the Phase I study.
4.5 Somantis shall pay The School of Pharmacy [CONFIDENTIAL TREATMENT
REQUESTED] on the first successful completion of Phase II clinical
trials of any of the Royalty-bearing Products (defined as completion of
the Phase II study).
4.6 Somantis shall pay The School of Pharmacy [CONFIDENTIAL TREATMENT
REQUESTED] on the first successful completion of Phase III trials
(defined as the completion of the Phase III study) of any of the
Royalty-bearing Products.
4.7 Within 60 days of the date of this Agreement, Somantis shall issue to
The School of Pharmacy in consideration for the grant of the option in
Clause 2.1 such number of fully paid-up ordinary shares in Somantis as
represents [CONFIDENTIAL TREATMENT REQUESTED] of the authorised share
capital of Somantis at the date of such issue. At the date of this
Agreement, the authorised share capital of Somantis is 100 million
shares each of 0.1p par value and therefore The School of Pharmacy
shall be issued with [CONFIDENTIAL TREATMENT REQUESTED].
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CONFIDENTIAL TREATMENT REQUESTED
4.8 All sums due under this Agreement:-
(a) are exclusive of Value Added Tax which where applicable will
be paid by Somantis to The School of Pharmacy in addition;
(b) shall be paid in pounds sterling by cheque or direct credit
transfer made payable to The School of Pharmacy , University
of London;
(c) shall be made without deduction of income tax or other taxes
charges or duties that may be imposed, except insofar as
Somantis is required to deduct the same to comply with
applicable laws. The Parties shall cooperate and take all
steps reasonably and lawfully available to them, at the
expense of The School of Pharmacy, to avoid deducting such
taxes and to obtain double taxation relief. If Somantis is
required to make any such deduction it shall provide The
School of Pharmacy with such certificates or other documents
as it can reasonably obtain to enable The School of Pharmacy
to obtain appropriate relief from double taxation of the
payment in question; and
(d) shall be made by the due date, failing which The School of
Pharmacy may charge interest on any outstanding amount on a
daily basis at a rate equivalent to [CONFIDENTIAL TREATMENT
REQUESTED] above the National Westminster Bank plc base
lending rate then in force.
4.9 If at any time during the continuation of this Agreement Somantis is
prohibited from making any of the payments required hereunder by a
governmental authority in any country then Somantis will within the
prescribed period for making the said payments in the appropriate
manner use its best endeavours to secure from the proper authority in
the relevant country permission to make the said payments and will make
them within 7 days of receiving such permission. If such permission is
not received within 30 (thirty) days of Somantis making a request for
such permission then, at the option of The School of Pharmacy, Somantis
shall deposit the payments due in the currency of the relevant country
either in a bank account designated by The School of Pharmacy within
such country or such payments shall be made to an associated company of
The School of Pharmacy designated by The School of Pharmacy and having
offices in the relevant country designated by The School of Pharmacy.
4.10 Records
4.10.1 Somantis shall keep at its normal place of business detailed and up to
date records and accounts showing the stage of development of
Royalty-bearing Products and the quantity, description and value of
Royalty-bearing Products sold by it, and the amount of sublicensing
revenues received by it in respect of Royalty-bearing Products, on a
country by country basis, and being sufficient to ascertain any
payments due under this Agreement.
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CONFIDENTIAL TREATMENT REQUESTED
4.10.2 Somantis shall make such records and accounts available, on reasonable
notice, for inspection during business hours by an independent
chartered accountant nominated by The School of Pharmacy for the
purpose of verifying the accuracy of any statement or report given by
Somantis to The School of Pharmacy under this Agreement. The accountant
shall be required to keep confidential all information learnt during
any such inspection, and to disclose to The School of Pharmacy only
such details as may be necessary to report on the accuracy of Somantis'
statement or report. The School of Pharmacy shall be responsible for
the accountant's charges if Somantis' statement or report was
reasonably accurate. If the accountant's report shows that Somantis'
statement or report was not reasonably accurate, Somantis shall pay to
The School of Pharmacy a sum equal to the accountant's charges.
4.10.3 Somantis shall ensure that The School of Pharmacy has the same rights
as those set out in this Clause 4.10 in respect of any licensee or
licence or sublicencee of Somantis that is licensed or sub-licensed
under the Patents and/or Know-how pursuant to this Agreement.
5. Commercialisation
5.1 Somantis shall use all reasonable endeavours to develop and
commercially exploit Royalty-bearing Products in accordance with the
development timetable set out in Schedule 4.
5.2 Without prejudice to the generality of Somantis' obligations under
Clause 5.1, Somantis shall provide at least annually to The School of
Pharmacy an updated, written development plan, showing all past,
current and projected activities taken or to be taken by Somantis to
bring Royalty-bearing Products to market and sell Royalty-bearing
Products worldwide.
5.3 If Somantis does not achieve a development target within the deadline
set out in Schedule 4 in relation to the development of Royalty-bearing
Products, Somantis shall notify The School of Pharmacy within 30 days
giving reasonable details why such target was not achieved.
5.4 If Somantis does not achieve a development target within six months
after the deadline set out in Schedule 4, The School of Pharmacy may
terminate this Agreement with immediate effect on notice to Somantis.
6. Intellectual property
6.1 Obtain and maintain the Patents. Until the Option Exercise Date, The
School of Pharmacy shall at his own cost and expense:
(a) endeavour to obtain and maintain valid patents in the name of
The School of Pharmacy pursuant to each of the patent
applications listed in Schedule 1 so as to secure the broadest
monopoly reasonably available; and
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CONFIDENTIAL TREATMENT REQUESTED
(b) pay all renewal fees in respect of the Patents as and when
due.
6.2 On and after the Option Exercise Date, Somantis shall:
(a) at its own cost and expense endeavour to maintain valid
patents in the name of Somantis pursuant to each of the patent
applications listed in Schedule 1 so as to secure the broadest
monopoly reasonably available; and
(b) pay all renewal fees in respect of the Patents as and when
due;
provided that if Somantis wishes to abandon any such application or not
to maintain any such Patent (or to cease funding such application or
Patent) it shall give 6 months' prior written notice to The School of
Pharmacy and on the expiry of such notice period Somantis shall assign
back to The School of Pharmacy without charge the patent application or
patent identified in the notice.
6.3 Infringement of the Patents
6.3.1 Each Party shall inform the other Party promptly if it becomes aware of
any infringement or potential infringement of any of the Patents in the
Field, and the Parties shall consult with each other to decide the best
way to respond to such infringement.
6.3.2 If the Parties fail to agree on a joint programme of action, including
how the costs of any such action are to be borne and how any damages or
other sums received from such action are to be distributed, then any
time after the Option Exercise Date Somantis shall be entitled to take
action against the third party at its sole expense and it shall be
entitled to all damages or other sums received from such action, after
reimbursing The School of Pharmacy for any reasonable expenses incurred
in assisting it in such action and any damages or sums received from
such action which relate to the period before the Option Exercise Date.
The School of Pharmacy shall agree to be joined in any suit to enforce
such rights subject to being indemnified and secured in a reasonable
manner as to any costs, damages, expenses or other liability and shall
have the right to be separately represented by its own counsel at its
own expense.
6.4 Infringement of third party rights
6.4.1 If any warning letter or other notice of infringement is received by a
Party, or legal suit or other action is brought against a Party,
alleging infringement of third party rights in the manufacture, use or
sale of any Assigned Product or use of any Patents, that Party shall
promptly provide full details to the other Party, and the Parties shall
discuss the best way to respond.
6.4.2 Somantis shall have the right but not the obligation to defend such
suit to the extent that it relates to the Field, and shall have the
right to settle with such third party, provided that if any action or
proposed settlement involves the making of any statement, express or
implied, concerning the validity of any Patent, the consent of The
School of Pharmacy must be obtained before taking such action or making
such settlement.
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CONFIDENTIAL TREATMENT REQUESTED
7. Warranties and liability
7.1 Warranties by Owner. The School of Pharmacy warrants, represents and
undertakes as follows:
(a) subject to Clause 7.3, it is entitled to assign the Patents
and license the Know-how to Somantis as provided for in this
Agreement.
(b) it has not done, and will not do nor agree to do during the
continuation of this Agreement, any of the following things in
the Field, if to do so would be inconsistent with the exercise
by Somantis of the rights granted to it under this Agreement,
namely:
(i) grant or agree to grant any right, title or interest
in the Patents or the Know-how or any improvements
thereto; or
(ii) assign, mortgage, charge or otherwise transfer any of
the Patents or Know-how or (subject to Clause 9.3
below) any of its rights or obligations under this
Agreement.
7.2 Warranties by Somantis. Somantis warrants, represents and undertakes as
follows:
(a) that Somantis shall not assign, transfer, mortgage, charge or
otherwise encumber any of the Patents; and
(b) Somantis shall not license the Patents to any party except on
terms which include obligations to commercialise the Patents
at least as great as in this Agreement and shall provide a
copy of any such licence agreement to The School of Pharmacy
within 30 days of the grant of the licence.
7.3 No other warranties
7.3.1 Each of Somantis and The School of Pharmacy acknowledges that, in
entering into this Agreement, it does not do so in reliance on any
representation, warranty or other provision except as expressly
provided in this Agreement, and any conditions, warranties or other
terms implied by statute or common law are excluded from this Agreement
to the fullest extent permitted by law.
7.3.2 Without limiting the scope of Clause 7.3.1, The School of Pharmacy does
not give any warranty, representation or undertaking:-
(a) as to the efficacy or usefulness of the Patents or Know-how;
or
(b) that any of the Patents is or will be valid or subsisting or
(in the case of an application) will proceed to grant; or
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CONFIDENTIAL TREATMENT REQUESTED
(c) that the use of any of the Patents or Know-how, the
manufacture, sale or use of the Royalty-bearing Products or
the exercise of any of the rights granted under this Agreement
will not infringe any other intellectual property or other
rights of any other person; or
(d) that the Know-how or any other information communicated by The
School of Pharmacy to Somantis under or in connection with
this Agreement will produce Royalty-bearing Products of
satisfactory quality or fit for the purpose for which Somantis
intended; or
(e) as imposing any obligation on The School of Pharmacy to bring
or prosecute actions or proceedings against third parties for
infringement or to defend any action or proceedings for
revocation of any of the Patents; or
(f) as imposing any liability on The School of Pharmacy in the
event that any third party supplies Royalty-bearing Products
to customers located in the Territory.
7.4 Indemnity. Somantis shall indemnify The School of Pharmacy against any
loss, damages, costs or expenses which are awarded against or incurred
by The School of Pharmacy as a result of any claim or threatened claim
concerning the use by Somantis or any of its licensees or sublicensees
of the Patents or Know-how or otherwise in connection with the
manufacture, use or sale of or any other dealing in any of the
Royalty-bearing Products by Somantis or its Affiliates, any of its
licensees or sublicensees.
7.5 Liability. Notwithstanding any other provision of this Agreement, no
Party shall be liable to any other Party to this Agreement in contract,
tort, negligence, breach of statutory duty or otherwise for any loss,
damage, costs or expenses of any nature whatsoever incurred or suffered
by that other party or its Affiliates of an indirect or consequential
nature including without limitation any economic loss or other loss of
turnover, profits, business or goodwill.
7.6 Notwithstanding any other provision of this Agreement, The School of
Pharmacy's total liability to Somantis in contract, tort (including
negligence), misrepresentation (other than fraudulent
misrepresentation) or otherwise arising out of or in connection with
this Agreement shall be limited to [CONFIDENTIAL TREATMENT REQUESTED]
as at the date of the claim.
8. Duration and Termination
8.1 Commencement, Option and Conditions
8.1.1 This Agreement shall come into effect on the date of this Agreement.
The assignment and licence in Clause 2.2, shall come into effect on
such date on or before 31 October 2004 (if any) as Somantis shall
notify to The School of Pharmacy in accordance with this Clause 8.1
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CONFIDENTIAL TREATMENT REQUESTED
(the "Option Exercise Date"). Such notification may be given at any
time on or before 31 October 2004, but may only be given if:
(a) Somantis shall have agreed to receive sufficient funds by way
of proceeds from a subscription for shares in Somantis and/or
as part of a collaborative agreement, to conduct its business;
(b) The School of Pharmacy and Somantis shall have entered into
the Research Collaboration Agreement.
8.1.2 During the period between the date of this Agreement and the earlier of
(a) the Option Exercise Date and (b) 31 October 2004, The School of
Pharmacy shall not enter into any agreement or discussions with any
other person in relation to the assignment or licensing of any or all
of the Patents and the Know-how.
8.1.3 If Somantis fails to give a notification to The School of Pharmacy in
accordance with Clause 8.1.1, this Agreement shall terminate on 1
November 2004, the provisions of Clauses 3.4 to 3.6 (in respect of
information disclosed prior to termination) and 4 (in respect of
payments becoming due prior to termination) shall continue in force,
the provisions of Clauses 8.4.2(f) and (g) shall apply and for the
avoidance of doubt any payments made by Somantis to The School of
Pharmacy under this Agreement on or prior to 31 October 2004 shall not
be refundable.
8.2 Termination by expiry. Unless terminated earlier in accordance with
this Clause 8, this Agreement and the licence or sub-licences granted
hereunder shall continue in force until the date on which all the
Patents have expired or been revoked without a right of further appeal,
and on such date this Agreement and the licences granted hereunder
shall terminate automatically by expiry.
8.3 Early termination
8.3.1 Somantis may terminate this Agreement at any time on 90 days notice in
writing to The School of Pharmacy.
8.3.2 Without prejudice to any other right or remedy, either Party may
terminate this Agreement at any time by notice in writing to the other
Party ("Other Party"), such notice to take effect as specified in the
notice:-
(a) if the Other Party is in breach of this Agreement and, in the
case of a breach capable of remedy within 90 days, the breach
is not remedied within 90 days of the Other Party receiving
notice specifying the breach and requiring its remedy; or
(b) if the Other Party becomes insolvent, or if an order is made
or a resolution is passed for the winding up of the Other
Party (other than voluntarily for the purpose of solvent
amalgamation or reconstruction), or if an administrator,
administrative receiver or receiver is appointed in respect of
the whole or any part of the Other Party's assets or business,
or if the Other Party makes any composition with its creditors
or takes or suffers any similar or analogous action in
consequence of debt.
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CONFIDENTIAL TREATMENT REQUESTED
8.3.3 The School of Pharmacy may forthwith terminate this Agreement by giving
written notice to Somantis if Somantis or its Affiliate or licensee or
sub-licensee commences legal proceedings, or assists any third party to
commence legal proceedings, to challenge the validity of any of the
Patents.
8.3.4 The School of Pharmacy may terminate the Agreement forthwith if any of
the payments due and payable or issue of shares due under Clause 4 of
the Agreement are not made within 60 days of Somantis receiving from
The School of Pharmacy notice of default in making such a payment, such
notice to refer to this Clause 8.3.4 and to The School of Pharmacy's
intention to terminate this Agreement if the payment is not made; and
in the event of such termination Somantis shall assign all Patents to
The School of Pharmacy in accordance with Clause 8.4.2(c).
8.3.5 Either party may on giving to the other Party of not less than 10 days'
written notice prior to 1st November 2004 terminate the Agreement if
the Parties agree (such agreement to be entirely at each Party's
discretion) that:
(a) Royalty-bearing Products are unlikely to arise from pursuance
of the Agreement; or
(b) it is unlikely that such Royalty-bearing Products will enter
Clinical Trials prescribed for under Clause 4 above; or
(c) for any other reason the objects of this Agreement cannot be
commercially achieved;
in which event the Parties shall have no further obligations to one
another under this Agreement other than their continuing obligations
under Clauses 3.4 to 3.6 in respect of information disclosed prior to
the date of termination.
8.4 Consequences of termination
8.4.1 Upon termination of this Agreement by expiry under Clause 8.2 above,
Somantis shall have the non-exclusive right to use the Know-how without
charge or other obligation to The School of Pharmacy.
8.4.2 Upon termination of this Agreement after the Option Exercise Date for
any reason otherwise than in accordance with Clause 8.2:
(a) Somantis and its licensee sub-licensees shall be entitled to
sell, use or otherwise dispose of any unsold or unused stocks
of the Royalty-bearing Products;
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CONFIDENTIAL TREATMENT REQUESTED
(b) subject to paragraph (a) above, Somantis shall no longer be
entitled as assignee or licensee to use or otherwise exploit
in any way, either directly or indirectly, the Patents, in so
far and for as long as any of the Patents remains in force, or
the Know-how, and any licence or sub-licences granted by
Somantis shall automatically terminate;
(c) Somantis shall free of charge assign the Patents to The School
of Pharmacy free from any encumbrances;
(d) the provisions of Clauses 3.4 to 3.6 (in respect of
information disclosed prior to termination), 4 (in respect of
payments becoming due prior to termination), 7.4, 7.5, 7.6,
8.4 and 9 shall continue in force;
(e) subject as provided in this Clause 8.4, and except in respect
of any accrued rights, neither party shall be under any
further obligation to the other;
(f) Somantis and The School of Pharmacy shall promptly return to
the other all written Confidential Information and any other
written material containing or reflecting any information
included in the Confidential Information (whether provided by
the other party, its representatives or advisors or otherwise)
and will not retain any copies, extracts or other
reproductions in whole or in part of such written material;
and
(g) all documents, memorandum, notes and other writings whatsoever
prepared by Somantis and The School of Pharmacy or their
representatives or advisors based on the information included
in the Confidential Information shall be destroyed.
8.4.3 Upon termination of this Agreement for any reason and at The School of
Pharmacy's request, the Parties shall negotiate in good faith the terms
of an agreement between them on reasonable commercial terms under which
Somantis would:
(a) transfer to The School of Pharmacy exclusively all clinical
and other data relating to the development of Royalty-bearing
Products;
(b) to the extent possible, seek to have any product licences,
pricing approvals and other permits and applications
transferred into the name of The School of Pharmacy or its
nominee;
(c) grant The School of Pharmacy an exclusive, worldwide licence,
with the rights to grant licence or sub-licences, under any
improvements and other intellectual property owned or
controlled by Somantis relating to the Royalty-bearing
Products; and
(d) grant The School of Pharmacy or its nominee the right to
continue to use any product name that had been applied to the
Royalty-bearing Products prior to termination of this
Agreement.
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CONFIDENTIAL TREATMENT REQUESTED
8.4.4 If the Parties are unable to agree the terms of an agreement as
described in Clause 8.4.3 within 90 days of The School of Pharmacy
requesting the negotiation of such an agreement, The School of Pharmacy
may refer the terms for settlement by an independent expert who shall
be appointed in accordance with the provisions of Schedule 2 and whose
decision shall be final and binding on the Parties. The Parties shall
promptly execute an agreement on the terms agreed between them or
settled by the expert.
9. General
9.1 Force majeure. Neither Party shall have any liability or be deemed to
be in breach of this Agreement for any delays or failures in
performance of this Agreement which result from circumstances beyond
the reasonable control of that Party, including without limitation
labour disputes involving that Party. The Party affected by such
circumstances shall promptly notify the other Party in writing when
such circumstances cause a delay or failure in performance and when
they cease to do so.
9.2 Amendment. This Agreement may only be amended in writing signed by duly
authorised representatives of The School of Pharmacy and Somantis.
9.3 Assignment and third party rights.
9.3.1 Except as provided in Clause 9.3.2, neither Party may assign or
transfer any or all of its rights and obligations hereunder.
9.3.2 Either Party may assign all its rights and obligations under this
Agreement together with its rights in the Patents and the Know-how to
any company to which it transfers all or substantially all of its
assets or business and in the case of The School of Pharmacy, to any of
its Affiliates, PROVIDED that the assignee undertakes to the other
Party to be bound by and perform the obligations of the assignor under
this Agreement.
9.4 Waiver. No failure or delay on the part of either Party to exercise any
right or remedy under this Agreement shall be construed or operate as a
waiver thereof, nor shall any single or partial exercise of any right
or remedy preclude the further exercise of such right or remedy.
9.5 Invalid clauses. If any provision or part of this Agreement is held to
be invalid, amendments to this Agreement may be made by the addition or
deletion of wording as appropriate to remove the invalid part or
provision but other wise retain the provision and the other provisions
of this Agreement to the maximum extent permissible under applicable
law.
9.6 No Agency. Neither Party shall act or describe itself as the agent of
the other, nor shall it make or represent that it has authority to make
any commitments on the other's behalf.
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CONFIDENTIAL TREATMENT REQUESTED
9.7 Interpretation. In this Agreement:
(a) the headings are used for convenience only and shall not
affect its interpretation;
(b) references to persons shall include incorporated and
unincorporated persons; references to the singular include the
plural and vice versa; and references to the masculine include
the feminine;
(c) references to Clauses and Schedules mean clauses of, and
schedules to, this Agreement; and
(d) references to the grant of "exclusive" rights shall mean that
the person granting the rights shall neither grant the same
rights (in the same Field and Territory) to any other person,
nor exercise those rights directly to the extent that and for
as long as the Royalty-bearing Products are within Valid
Claims of unexpired Patents.
9.8 Notices
9.8.1 Any notice to be given under this Agreement shall be in writing and
shall be sent by first class mail or air mail, or by fax (confirmed by
first class mail or air mail) to the address of the relevant Party set
out at the head of this Agreement, or to the relevant fax number set
out below, or such other address or fax number as that Party may from
time to time notify to the other Party in accordance with this Clause
9.8. The fax numbers of the Parties are as follows: The School of
Pharmacy - 0207 753 5968; Somantis - 0207 299 9482 .
9.8.2 Notices sent as above shall be deemed to have been received three
working days after the day of posting (in the case of inland first
class mail), or seven working days after the date of posting (in the
case of air mail), or on the next working day after transmission (in
the case of fax messages, but only if a transmission report is
generated by the sender's fax machine recording a message from the
recipient's fax machine, confirming that the fax was sent to the number
indicated above and confirming that all pages were successfully
transmitted).
9.9 Law and Jurisdiction. The validity, construction and performance of
this Agreement shall be governed by English law and shall be subject to
the exclusive jurisdiction of the English courts to which the parties
hereby submit, except that a Party may seek an interim injunction in
any court of competent jurisdiction.
9.10 Further action. Each Party agrees to execute, acknowledge and deliver
such further instruments, and do all further similar acts, as may be
necessary or appropriate to carry out the purposes and intent of this
Agreement.
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CONFIDENTIAL TREATMENT REQUESTED
9.11 Somantis hereby appoints The School of Pharmacy as its attorney to
effect on its behalf any assignment of the Patents provided for in this
Agreement and to do all and any acts and things necessary to effect
unconditionally such assignment.
9.12 Announcements. Neither Party shall make any press or other public
announcement concerning any aspect of this Agreement, or make any use
of the name of the other Party in connection with or in consequence of
this Agreement, without the prior written consent of the other Party.
9.13 Entire agreement. This Agreement, including its Schedules, sets out the
entire agreement between the Parties relating to its subject matter and
supersedes all prior oral or written agreements, arrangements or
understandings between them relating to such subject matter. The
Parties acknowledge that they are not relying on any representation,
agreement, term or condition which is not set out in this Agreement.
AGREED by the parties through their authorised signatories:-
For and on behalf of For and on behalf of
THE SCHOOL OF PHARMACY SOMANTIS LIMITED
/s/ JULIAN C. AXE /s/ AGAMEMNON A. EPENETOS
- ---------------------------------- --------------------------------
signed signed
Julian C. Axe Agamemnon A. Epenetos
- ---------------------------------- --------------------------------
print name print name
Clerk to Council CEO
- ---------------------------------- --------------------------------
title title
16/3/2004 16/3/2004
- ---------------------------------- --------------------------------
date date
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CONFIDENTIAL TREATMENT REQUESTED
Schedule 1
The Patents
[CONFIDENTIAL TREATMENT REQUESTED]
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CONFIDENTIAL TREATMENT REQUESTED
Schedule 2
Appointment of expert
1. Pursuant to Clause 8.4.4, The School of Pharmacy may serve notice on
Somantis ("Referral Notice") that it wishes to refer to an expert (the "Expert")
the questions set out in Clause 8.4.4.
2. The parties shall agree the identity of a single independent, impartial
expert to determine such questions. In the absence of such agreement within 30
days of the Referral Notice, the questions shall be referred to an expert
appointed by the President of Law Society of England and Wales.
3. 60 days after the giving of a Referral Notice, both parties shall
exchange simultaneously statements of case in no more than 10,000 words, in
total, and each side shall simultaneously send a copy of its statement of case
to the Expert.
4. Each party may, within 30 days of the date of exchange of statement of
case pursuant to paragraph 3 above, serve a reply to the other side's statement
of case of not more than 10,000 words. A copy of any such reply shall be
simultaneously sent to the Expert.
5. The Expert shall make his decision on the said questions on the basis
of written statements and supporting documentation only and there shall be no
oral hearing. The Expert shall issue his decision in writing within 30 days of
the date of service of the last reply pursuant to paragraph 4 above or, in the
absence of receipt of any replies, within 60 days of the date of exchange
pursuant to paragraph 3 above.
6. The Expert's decision shall be final and binding on the parties.
7. The Expert's charges shall be borne equally by the parties.
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Schedule 3
THIS DEED OF ASSIGNMENT dated __________________2004 is made by and between:-
(1) [ ] whose address is ______; and
(2) SOMANTIS LIMITED ("Somantis") whose registered office is at 117
Alexander Park Road, London N10 2DP
WHEREAS:
A. ... has made application(s) for Patent(s) (defined below as the "Patents"
in relation to certain inventions and generated related know-how in the
field of prevention and treatment of cancer through the use of specific
classes of drugs (together with the "Technology").
B. .... is willing to assign its right title and interest in the Patents to
Somantis subject to the provisions of the Agreement.
THIS DEED OF ASSIGNMENT WITNESSES as follows:-
1. Definitions
-----------
In this Assignment, "Patents" shall mean the patent(s) and patent
application(s) identified in the attached Schedule.
2. Assignment
----------
2.1 In consideration of the sum of (pound)1 sterling paid to (receipt of
which they each hereby acknowledge), hereby assign and transfer to
Somantis absolutely all their right, title and interest in the Patents.
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CONFIDENTIAL TREATMENT REQUESTED
2.2 The assignments effected by this Clause 2 shall include, without
limitation, the assignment and transfer of:
a. all patents and other patents that may be granted pursuant to
any applications listed in the attached Schedule, as well as
all patents and other Patents that may derive priority from or
have equivalent claims to the applications listed in the
Schedule or be based upon the Technology in any country of the
world (and including supplementary protection certificates,
divisions, continuations, continuations in part, reissues and
extensions), and the Patents shall be deemed to include all
such items of property;
b. and all rights of action, powers and benefits arising from
ownership of the Patents, including without limitation the
right to sue for damages and other legal and equitable
remedies in respect of all causes of action arising prior to,
on or after the date of this assignment.
2.3 ........shall execute such documents and give such assistance as
Somantis may require, at the Somantis' expense:
a. to secure the vesting in Somantis of all rights in the
Patents;
b. to uphold Somantis' rights in the Patents: and
c. to defeat any challenge to the validity of, and resolve any
questions concerning, the Patents
d. All reasonable costs and expenses of is undertaking any of its
obligations under this clause shall be paid for and reimbursed
in full by Somantis.
3.0 Law and Jurisdiction
--------------------
The validity, construction and performance of this Assignment shall be governed
by English law, and Somantis submit to the exclusive jurisdiction of the English
courts in respect of any dispute arising in connection therewith.
EXECUTED AS A DEED by the parties:
Executed and delivered as a Deed by by (applying its common seal in the presence
of two members of its Council
______________________signature of Council member
______________________signature of Council member
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Executed and delivered as a Deed by Somantis Limited:
__________________________Director's signature0
__________________________date
SCHEDULE
Description of general subject area covered by this assignment:
The present invention concerns a novel family of anthraquinone alkylating
agents, their use in the treatment of cancers, methods of manufacture of
medicaments for same, and methods of treatment of cancers.
Description of specific patents and patent applications:
Patent details: International Patent Classification o
International Filing o
Priority Date: [CONFIDENTIAL TREATMENT REQUESTED]
Applicant: The School of Pharmacy , London
Title: [CONFIDENTIAL TREATMENT REQUESTED]
Application Number: [CONFIDENTIAL TREATMENT REQUESTED]
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Schedule 4
Development Timetable
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Development Target Deadline
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[CONFIDENTIAL TREATMENT [CONFIDENTIAL TREATMENT
REQUESTED] REQUESTED]
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