License Agreement - Medical Research Council and MedImmune Inc.
MEDICAL RESEARCH COUNCIL
THIS AGREEMENT is made the thirteenth day of August One thousand nine hundred and ninety seven between MEDICAL RESEARCH COUNCIL of 20 Park Crescent, London WIN 4AL (hereinafter called "MRC" which expression includes its successors and assigns) of the one part and MEDIMMUNE INC. of 35 West Watkins Mill Road, Gaithersburg, Maryland 20878, U.S.A. (hereinafter called "the Licensee" which expression includes its successors and permitted assigns) of the other part.
MRC is the proprietor of certain patent rights in respect of the genetic engineering of monoclonal antibodies comprising the replacement in whole or in part of the complementarity determining regions of one antibody by those of another.
NOW IT IS HEREBY AGREED as follows:-
"the Effective Date' shall mean...............
"the Reshaping Process" shall mean the genetic engineering of monoclonal antibodies comprising the replacement in whole or in part of the complementarity determining regions of one antibody by those of another as described in the Winter Patent.
"the Products" shall mean end products produced either directly or indirectly from antibodies which have been modified using the Reshaping Process and which are in a form capable of being marketed or sold upon a commercial basis.
"Affiliate" shall mean any corporation, company, partnership or other entity which directly or indirectly controls, is controlled by or is under common control with either party to this Agreement.
"Control" means the ownership of more than 50% of issued share capital or the legal power to direct or cause the direction of the general management and policies of the party in question.
"Fields" shall mean the field of human therapy or prophylaxis and human in vivo and in vitro diagnostics.
"Net Receipts" shall mean all monies received by Licensee in respect of the sale of the Products, less the following items to the extent that they are paid or allowed and included in the invoice price:-
normal discounts actually granted;
credits allowed for Products returned or not accepted by customers;
packaging, transportation and prepaid insurance charges on shipments or deliveries to customers;
taxes actually incurred and paid by Licensee in connection with the sale or delivery of Products to customers.
"The Winter Patent" shall mean the patents and applications therefor set out in Schedule 1 hereto and any divisions, renewals, continuations, extensions or reissues thereof and any patent granted thereon.
"The Boss Patents" shall mean the patents and patent applications therefore set out in Schedule 3 hereto in relation to multi-chain polypeptides or proteins and processes for their production and any patent granted on such patent applications including but without prejudice to the generality of the foregoing author certificates, inventor certificates, improvement patents, utility certificates and models and certificates of addition and including any divisions, renewals, continuations, extensions or reissues thereof.
THIS Agreement shall be deemed to have come into force on the Effective Date and shall be read and construed accordingly.
3. Grant of Rights
This clause shall not entitle a Licensee to a licence in respect of any of the restricted antibodies set out in Schedule 2.
legally possible such payment shall be made free and clear of any taxes imposed by or under the authority of any government or public authority and in particular but without limitation where any sums due to be paid to MRC here under are subject to any withholding or similar tax, the Licensee shall pay such additional amount as shall be required to ensure that the net amount received by MRC hereunder will equal the full amount which would have been received by it had not such tax been imposed or withheld. The Licensee and, without prejudice to the foregoing, MRC shall use their best endeavors to do all such lawful acts and things and to sign all such lawful deeds and documents as will enable the Licensee to take advantage of any applicable legal provision or any double taxation treaties with the object of paying the sums due to MRC without imposing or withholding any tax.
Sums are expressed in this agreement as exclusive of any value added tax (VAT) which may be applicable. MRC agrees to provide Licensee with a VAT invoice in respect of any payment affected by VAT.
5. Term and Termination
IF the Licensee becomes aware of a suspected infringement of the Winter Patents it shall notify MRC giving full particulars thereof. If the alleged infringement consists of any act which (if done by the Licensee) would be within the scope of the licences granted under this Agreement MRC and the Licensee shall (within a reasonable time of the said notification) consult together with a view to agreeing upon a course of action to be pursued.
THE waiver by MRC of any breach default or omission in the performance or observance of any of the terms of this Agreement by the Licensee shall not be deemed to be a waiver of any other such reach default or omission.
ANY notice consent or other communication authorised or required to be given hereunder or for the purposes hereof shall be in writing and be deemed to be duly given to MRC if left at or sent by recorded delivery or registered post addressed to its principal office and to the Licensee if left at or sent by recorded delivery or registered post to its principal place of business. Any such notice consent or other communication if served by post shall be deemed to have been given at the time when it would have been received in due course of the post.
Save for an assignment to an Affiliate of the Licensee, the Licensee shall not be entitled to assign the benefit of this Agreement or any rights granted or to be granted under the Agreement.
11. Law and Jurisdiction
THIS Agreement is to be read and construed in accordance with and governed by the Laws of England so far as the subject matter allows and the parties hereby submit to the jurisdiction of the English courts in relation to any dispute arising out of this Agreement.
IN WITNESS whereof the parties hereto have caused this Agreement to be executed in the matter legally binding upon them by causing authorised representatives to sign this Agreement.
|Signed:||/s/ DAVID M. MOTT |
David M. Mott
For and on behalf of MEDIMMUNE, INC.
|Signed:||/s/ MARTIN R. WOOD PH.D. |
Martin R. Wood Ph.D.
Head of Technology Transfer Group
For and on behalf of MEDICAL RESEARCH COUNCIL
SCHEDULE ONE above referred to
|Inventor:||Gregory Paul Winter|
|Applicant:||Medical Research Council|
|Title:||Recombinant DNA products and Methods|
|UK Priority Application:||UK PA 8607679 (27.03.86)|
|Territory ||Application number |
|Date of filing |
(Austria, Belgium, France, Germany, Greece, Italy, Liechtenstein, Luxembourg, Netherlands, Spain, Sweden, Switzerland)
26.05.95. This is a continuation application derived from continuation in-part 07/189814 filed 03.05.88.
SCHEDULE TWO above referred to
Antibodies excluded from the licence
|Antibody ||Specificity ||Source |
|B72.3||Mucin (TAG072||)||NIH (Schlom)|
|OKT-3 (and other Ortho antibodies against CD3)||CD3||Ortho Pharmaceutical|
SCHEDULE THREE above referred to
|Title||Multichain Polypeptides or Proteins and Processes for their Production|
|Subject Matter:||Expression of multichain proteins, such as antibodies, in single hose cells|
|Inventors||Michael Alan Boss|
John Henry Kenten
John Spencer Emtage
Clive Ross Wood
Priority Applications Date: 25 March 1983
Earliest Publication Date/No: 27 September 1984/WO84/03712
|Territory ||Application Date ||Application No. ||Patent No. ||Expiry Date |
*includes: Austria, Belgium, France, Germany, Italy, Liechtenstein, Luxembourg, Netherlands, Sweden, Switzerland, United Kingdom