License Agreement - Sloan-Kettering Institute for Cancer Research and Invitrogen Corp.
LICENSE AGREEMENT
(SK# 2302)
This Agreement, effective on the date signed by the last party to sign below
(the "Effective Date"), is made by and between
SLOAN-KETTERING INSTITUTE FOR CANCER RESEARCH, a not-for-profit corporation
organization under the law of New York state and having its principal place of
business at 1275 York Avenue, New York, NY 10021 (hereinafter "SKI"), and
INVITROGEN, a business corporation having offices at 3985 B Sorrento Valley
Blvd., San Diego, California 92121 (hereinafter "Invitrogen").
In consideration of the mutual covenants contained herein, both parties AGREE AS
FOLLOWS:
ARTICLE 1
BACKGROUND
1.1 SKI owns certain patent rights and technical information relating to Novel
Approaches to Molecular Cloning and Polynucleotide Synthesis using Vaccinia
DNA Topoisomerase (TECHNOLOGY) developed by Dr. Stewart Shuman at Memorial
Sloan-Kettering Cancer Center.
1.2 Invitrogen wishes to obtain a license from SKI to practice LICENSED PATENTS
relating to TECHNOLOGY.
ARTICLE 2
DEFINITIONS
2.1 FIELD OF USE of this agreement is all uses in all markets.
2.2 LICENSED PATENTS shall mean the United States patent application Serial No.
08/358,344, the inventions described and claimed therein, and any division,
continuations, continuations-in-part to the extent that their claims are
dominated by existing LICENSED PATENTS, and patents issuing thereof, and
any and all foreign patents and patents applications corresponding thereto;
all of which will be automatically incorporated in and to this Agreement
and shall periodically be added to Appendix A attached to this Agreement
and made a part hereof.
2.3 LICENSED PRODUCTS shall mean any products claimed in LICENSED PATENT or
products made or services provided in accordance with or by means of the
processes claimed in LICENSED PATENTS.
2.4 NET SALES shall mean the total of all charges billed or invoiced for sales
or lease of LICENSED PRODUCTS; less normal trade discount actually allowed;
credit allowed for returned or damaged goods; transportation costs; and
sales and other excise taxes paid directly with respect to the sale of
LICENSED PRODUCTS.
ARTICLE 3
LICENSE GRANT
3.1 SKI hereby grants to Invitrogen an exclusive, world-wide license, to use
and practice LICENSED PATENTS within the FIELD OF USE.
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3.2 SKI grants to Invitrogen the right to sublicense third parties, providing
that, prior to signing any sublicense agreement;
A. SKI is fully informed of proposed terms of the sublicense agreement
and proposed terms of all collateral agreements (such as cross-licensing or
supply agreements that are related to the sublicense and which have cash
and/or non-cash value), so that SKI will have knowledge of the full value
received by Invitrogen from each sublicensee whether in the form of fees,
royalties or other compensation of whatever form;
B. each sublicense agreement includes a provision that it subject to the
terms of this Agreement; and
C. SKI approves of the sublicense agreement, which approval shall not be
unreasonably withheld.
3.3 All grants under this Article 2 are subject to rights of the U.S.
government under 35 USC Sections 200 and 212.
3.4 SKI explicitly retains the right to use and practice the LICENSED PATENTS
for any purpose.
ARTICLE 4
PAYMENTS
4.1 Within 30 days after the Effective Date, Invitrogen shall pay to SKI *
* as a fully paid, non-refundable license fee. *
of this fee is fully creditable against royalties to be paid according to
section 4.3 accrued in the first twelve (12) months of this Agreement.
4.2 In consideration of the exclusivity of this license, Invitrogen agrees
to pay a minimum royalty of * United States dollars
commencing with the second royalty period as defined in
paragraph 4.3(c). Minimum payments shall be made at the same intervals
as regular royalty payments, on a PRO RATA basis. Failure to made such
payments will constitute a material breach and be subject to termination
as defined in Article 7.2 herein.
4.3 For the license granted in Article 2, Invitrogen shall pay to SKI the
amount of royalty of NET SALES indicated as follows:
a). LICENSED PRODUCTS sold alone: * of NET SALES
b). LICENSED PRODUCTS sold in combination such as a Kit:
* for annual NET SALES under *
* for annual NET SALES between *
* for annual NET SALES greater than *
c). All royalties are payable annually for the period of January 1 -
December 31. They shall be due sixty (60) days after the end of the
year.
d). Where Invitrogen sells LICENSED PRODUCTS together with third-party
licensed technology, the royalty rate due hereunder shall be reduced
by * for every * of royalty due to third parties.
However, the royalty payable will never be lower than *
* of the then running royalty rate.
* "CONFIDENTIAL PORTION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
COMMISSION."
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4.4 If the LICENSED PRODUCTS is sold in a kit in combination with other active
products or components that are not LICENSED PRODUCTS, NET SALES for
purposes of determining royalties shall be the unit equivalent price of
the LICENSED PRODUCTS if sold separately.
4.5 For purposes of determining royalties on foreign (Non-U.S.) sales of
LICENSED PRODUCTS, NET SALES shall be determined by multiplying the U.S.
catalog price for each such LICENSED PRODUCTS by the number of such
LICENSED PRODUCTS sold during the period for which royalties are due
(i.e., NET SALES = Foreign Units Sold x U.S. catalog price). Such
determination of NET SALES shall only be valid as long as LICENSED
PRODUCTS are substantially manufactured in the United States.
4.6 In the case of sublicense, Invitrogen shall pay SKI * of the non-royalty
sublicense income (e.g. License issue fees, license maintenance fee,
etc.), and * of royalty sublicense income. Any non-cash consideration
received by Invitrogen from such sublicense shall be valued at its fair
market value as of the date of receipt by Invitrogen.
4.7 Within Thirty (30) Days of the Effective Date Invitrogen shall reimburse
SKI * * , for documented out of pocket expenses
reasonably incurred by SKI for the preparation, prosecution and
maintenance of LICENSED PATENTS prior to the Effective Date. Such costs
will be fully creditable against royalties payable in *
* increments over three (3) years beginning with the second royalty
period as defined in paragraph 4.3(c).
Invitrogen shall take over control of the preparation, filing, prosecution
and maintenance of LICENSED PATENTS as of the Effective Date and shall pay
all related expenses reasonably incurred thereafter. SKI shall promptly
execute any documents reasonably requested by Invitrogen or its counsel in
connection with such preparation, filing, prosecution or maintenance.
Such control shall be exercised exclusively by Invitrogen and includes,
without limitation the right to decide what to claim, in what
jurisdictions to prosecute, and the choice of attorneys, except that the
attorneys prosecuting the U.S. patents as of Effective Date shall not be
changed absent good cause. Invitrogen shall consult with SKI as to the
preparation, filing, prosecution and maintenance and shall use prudent and
sound business judgment in all decisions relevant thereto.
In the event Invitrogen elects not to file an application, or elects to
abandon an application in any jurisdiction, SKI may, at its option file or
continue prosecution of such application at its own expense and under its
exclusive control. Such applications that become issued patents will not
be part of LICENSED PATENTS.
4.8 Payment shall be made by remittance to Sloan-Kettering Institute for
Cancer Research. Payment shall show "payment, contract SK# 2302" on the
check stub, and shall be sent to
Office of Industrial Affairs
Memorial Sloan-Kettering for Cancer Research
1275 York Avenue
New York, New York 10021
ARTICLE 5
INFRINGEMENT
5.1 SKI reserves the right to take action, in its own name and its own
expense to enforce LICENSED PATENTS against infringement or
threatened infringement. In the event that SKI takes action against
infringers, Invitrogen shall give reasonable assistance (not to
exceed 40 hours labor) to
* "CONFIDENTIAL PORTION HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION."
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SKI and any damages recovered shall belong to SKI. However, Invitrogen
shall have the right to join in such action in order to recover damages
for injury to Invitrogen resulting from said infringement, and in that
event, each party's expenses shall be reimbursed from their respective
recovered damages.
5.2 In the event that SKI decide not to take action against infringer, SKI
shall notify Invitrogen and Invitrogen may initiate legal proceeding
against infringer at Invitrogen's expense. Failure of SKI to provide such
notice within thirty (30) days of letter request from Invitrogen shall be
deemed the equivalent of such notice. Invitrogen, may at its' option join
SKI as a plaintiff. SKI shall give reasonable assistance (not to exceed 40
hours labor) to Invitrogen and damages recovered shall belong to
Invitrogen. However, SKI shall have the right to join in such action in
order to recover damages for injury to SKI resulting from said
infringement, and in that event, each party's expenses shall be reimbursed
from their respective recovered damages.
ARTICLE 6
CONFIDENTIALITY
6.1 Invitrogen shall not disclose any information to third parties furnished
to Invitrogen and marked "Confidential" by SKI or by third parties on
behalf of SKI related to LICENSED PATENTS or know-how related to the
LICENSED PATENTS ("Confidential Information") during the term of this
Agreement.
6.2 Obligations of confidentiality shall not apply to information:
a) for which disclosure was authorized by both parties in writing;
b) in Invitrogen's possession at the time of disclosure by SKI and
not directly or indirectly obtained from SKI;
c) which is or may hereafter be publicly available through no
wrongful act of Invitrogen:
d) lawfully received by Invitrogen from a third party under no
obligation of confidentially; or,
e) required to be disclosed by law, government regulations or court
order with prior notice to SKI.
ARTICLE 7
TERM AND TERMINATION
7.1 The term of this agreement is from the Effective Date until the
expiration date of the last to expire of LICENSED PATENTS unless
earlier terminated according to this article 7.
7.2 Failure by Invitrogen or SKI to comply with any of their respective
obligations and conditions contained in this Agreement shall entitle the
other party to the party in default written notice requiring it to cure
such fault. If such default is not cured within sixty (60) days after
receipt of such notice, the notifying party shall be entitled (without
prejudice to any of its other rights conferred on it by this Agreement) to
terminate this Agreement by giving notice to take effect immediately. The
right of either party to terminate this Agreement shall not be affected in
any way by its waiver of, or failure to take action with respect to, any
previous default.
7.3 Should the U.S. patent application(s) under LICENSED PATENTS be ultimately
rejected for any reason this agreement shall terminate.
If at any time all or substantially all claims within the LICENSED PATENTS
are declared invalid, void or unenforceable by any court of final resort or
in a judgment from which no appeal is taken, no royalty shall thereafter be
payable hereunder in the relevant jurisdiction. If at any time, such
claims are declared invalid, void or unenforceable by any court, and review
by a
* "CONFIDENTIAL PORTION HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION."
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higher court is sought, then royalties shall continue to accrue, but shall
not become due unless and until the court's judgment is reversed
7.4 Upon termination of this License for any reason, all rights granted
hereunder shall revert to SKI for the solo benefit of SKI.
7.5 At least forty five (45) days prior to filing a petition in bankruptcy,
each party must inform the other of its intention to file the petition or
of another's intent to file an involuntary petition in bankruptcy. Failure
to conform to this be deemed to be a material, pre-petition incurable
breach.
7.6 Obligations under Article 5, 6 and 8 shall survive termination of this
agreement
ARTICLE 8
PRODUCT LIABILITY
8.1 Invitrogen shall at all times, during the term of this Agreement and
thereafter, indemnify and hold SKI and its affiliates and their directors,
officers, agents and employees, harmless against all claims and expenses,
including legal expenses and reasonable attorneys' fees, arising out of the
death of or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from the action of Invitrogen
hereunder in the production, manufacture, sales, use, consumption or
advertisement of LICENSED PRODUCTS, subject to SKI giving Invitrogen prompt
notice of any such claims, giving Invitrogen full control of the defense or
settlement of any such claims.
8.2 Nothing in this Agreement shall be construed as a warranty or
representation that anything made, used, sold or otherwise disposed of any
license granted in this Agreement is or will be free from infringement of
patents of third parties.
8.3 Invitrogen shall not use the name of SKI or any affiliate, inventor,
employee or agent of SKI, nor any variant of any of them, for advertising,
publicity, offering, promotion or sales purposes without the prior written
consent of SKI.
ARTICLE 9
MISCELLANEOUS
9.1 Any notice given by either party hereunder shall be given in writing by
registered or certified mail addressed to the party for whom it is intended
at the address set forth below or such other address as such party may
subsequently designate in writing.
For SKI For Invitrogen
Mr. James S. Quirk Mr. Joseph M. Fernandez
Senior Vice President Vice President
Sloan-Kettering Institute for Cancer Invitrogen Corporation
Research Business Development
1275 York Avenue 3985 B Sorrento Valley Boulevard
New York, NY 10021 San Diego, CA 92121
9.2 The construction, validity, and performance of this Agreement shall be
governed in all respects by the laws of the State of New York, but the
scope and validity of any LICENSED PATENTS shall be governed by the
applicable laws of the country granting such patent.
9.3 Neither party may assign this Agreement or any rights granted hereunder in
whole or in part without the prior written consent of the other party
except to the successor to, or assignee of, all
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or substantially all of the business, assets, and goodwill of the assigning
party with prior written notice to the other party.
9.4 This Agreement sets forth the entire Agreement and understanding between
the parties and to the subject matter of this Agreement, and merges all
prior discussions between them and this Agreement may not be superseded,
amended, or modified except by written agreement between the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their respective duly authorized officers as of the day and year first above
written, all in duplicate original.
SLOAN-KETTERING INSTITUTE INVITROGEN CORPORATION
FOR CANCER RESEARCH
By: /s/ James S. Quirk By: /s/ Joseph M. Fernandez
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James S. Quirk Joseph M. Fernandez
Senior Vice President Vice President
Research Resources Management Business Development
Date: 1/22/97 Date: 1/16/97
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APPENDIX A
The following comprise LICENSED PATENTS:
U.S. patent application serial No. 08/358,344, filed December 19, 1994
PCT International application No. PCT/US95/16099, filed December 12, 1995