License and Research Support Agreement - MedImmune Inc. and Rockefeller University
LICENSE AND RESEARCH SUPPORT AGREEMENT
AGREEMENT made as of the 16th day of April, 1996 by
and between MEDIMMUNE, INC. ("LICENSEE"), a corporation organized
and existing under the laws of the State of Delaware, having an
office at 35 West Watkins Mill Road, Gaithersburg, Maryland
20878, and THE ROCKEFELLER UNIVERSITY ("ROCKEFELLER") a nonprofit
education corporation organized and existing under the laws of
the State of New York, having an office at 1230 York Avenue, New
York, New York 10021.
W I T N E S E T H:
WHEREAS, ROCKEFELLER scientists have developed valuable
technology and know-how related to methods and compositions
for preventing and treating pneumococcal disease, which
technology is described and/or otherwise identified in this
Agreement and its attachments;
WHEREAS, ROCKEFELLER wishes to conduct a program of
continuing research in connection with such technology and is
willing to grant a license for a fair and reasonable remuneration
to the sponsor of such research, such license to cover both the
existing technology which is the initial subject matter of this
Agreement and to include an option to expand such license to
include any new inventions or improvements developed in the
course of such continuing research sponsored by the LICENSEE
pursuant to the provisions of this Agreement; and
WHEREAS, LICENSEE wishes to obtain such license and
option rights and to sponsor the research program proposed by
Rockefeller, all in the manner and subject to the term,
conditions and understandings described herein;
NOW, THEREFORE, the Parties hereto agree as follows:
1. DEFINITIONS
The following terms will have the meanings assigned
to them below when used in this Agreement.
1.1 "PARTY" shall mean either LICENSEE or ROCKEFELLER
and "PARTIES" shall mean both COMPANY and LICENSEE.
l.2 "LICENSED PATENT RIGHTS" shall mean
(a) all patent application(s) concerning the
subject matter of this Agreement which are listed on Exhibit "A"
attached hereto and all patents which may issue thereon;
(b) any patent and patent application covering
any New Invention(s) defined below as to which the LICENSEE shall
have exercised its option rights provided for in Paragraphs 2.5
and 4.2 of this Agreement; and
(c) all patent applications which are divisions,
continuations, continuations-in-part, reissues, renewals, foreign
counterparts, extensions or additions of the patents and
applications described in (a) and (b) hereof, and all patents
which may issue thereon.
1.3 "NEW INVENTION(S)" shall mean all invention(s)
made in the course of the Research Project, which inventions(s)
are made by ROCKEFELLER faculty members, employees, agents or
others working under ROCKEFELLER'S control, whether patentable or
not.
1.4 "TECHNICAL INFORMATION" shall mean the technical
data, information, materials and know-how owned by ROCKEFELLER
and existing in a tangible form, at the date of this Agreement
arising from the laboratories of DRS. ELAINE TUOMANEN and/or
ROBERT MASURE at Rockefeller as set forth in Exhibit "A" or
developed in the course of the RESEARCH PROJECT sponsored by
LICENSEE hereunder, and which is needed in the practice of
LICENSED PATENT RIGHTS.
1.5 "RESEARCH PROJECT" shall mean the program of
research to be conducted by DRS. ELAINE TUOMANEN and ROBERT
MASURE referred to in Paragraph 2 of this Agreement and described
in further detail in Exhibit "B" attached hereto or in any
amendment thereof that may be agreed to by the Parties, and which
is sponsored by LICENSEE pursuant to the provisions of this
Agreement.
1.6 "BUDGET" shall mean the budget for the RESEARCH
PROJECT provided for in Paragraph 2.2 of this Agreement.
1.7 "TERRITORY" shall mean the entire world.
1.8 "PRODUCTS" shall mean any and all Products, the
manufacture, use or sale which is or later becomes covered by a
valid claim of LICENSED PATENT RIGHTS.
1.9 "NET SALES" shall mean all gross revenues
recognized in accordance with generally accepted accounting
principles from the sale of PRODUCTS by LICENSEE or any
sublicensee of LICENSEE, less only returns and allowances
actually paid or allowed, including, but not limited to, prompt
payment and volume discounts, charge-backs from wholesalers and
other allowances granted to customers or wholesalers of the
PRODUCT, whether in cash or trade, freight packing, insurance,
rebates, and sales and other taxes based on sales prices when
deducted from the gross amount actually received by the selling
company, but not including taxes when assessed on income or gross
receipts derived from such sales.
1.10 "EFFECTIVE DATE" shall mean the date on which this
Agreement has been executed by both PARTIES.
1.11 "VALID CLAIMS" shall mean a claim of an issued
patent which has not lapsed or become abandoned or been declared
invalid or unenforceable by a court of competent jurisdiction or
an administrative agency from which no appeal can be or is taken.
1.12 The term "AFFILIATE" as applied to LICENSEE shall
mean any company or other legal entity other than LICENSEE in
whatever country organized, controlling or controlled by
LICENSEE. The term "control" means possession, of the power to
direct or cause the direction of the management and policies
whether through the ownership of voting securities, by contract
or otherwise.
2. RESEARCH PROJECT
2.1 The RESEARCH PROJECT consists of a program of
research described in Exhibit "B" to be conducted by DRS. ELAINE
TUOMANEN and ROBERT MASURE and their colleague scientists at
ROCKEFELLER. The RESEARCH PROJECT may be modified by written
agreement of the PARTIES. The PARTIES agree to cooperate with
each other to the extent that they are reasonably able to do so
in providing access to needed gene sequences of S. pneumoniae as
soon as they become available to LICENSEE, needed reagents and
similar materials as well as in the continuing review, redesign
and/or redirection of the RESEARCH PROJECT, and will keep each
other currently advised of the progress and results thereof
during the period of sponsored research. The RESEARCH PROJECT is
initially envisioned to be carried out over a three-year period.
The PARTIES contemplate its renewal for an additional two-year
period but only by mutual written consent.
2.2 LICENSEE agrees to provide funding to
ROCKEFELLER for the RESEARCH PROJECT in accordance with the
following BUDGET:
Funding for the RESEARCH PROJECT shall be payable
by LICENSEE to ROCKEFELLER quarterly in advance, in the amount of
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) per year for each of
the three (3) years initially contracted for (which annual amount
includes overhead), with the direct cost to increase
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)each year (i.e.,
second year and beyond).
2.3 DRS. ELAINE TUOMANEN and ROBERT MASURE will be the
Principal Investigators of the RESEARCH PROJECT and shall have
full and complete control over the conduct and direction thereof.
In the event that DRS. ELAINE TUOMANEN and ROBERT MASURE should
leave ROCKEFELLER, or be unable or unwilling, for any reason, to
continue with the RESEARCH PROJECT before its completion,
ROCKEFELLER may propose one or more new Principal Investigators
for LICENSEE'S consideration. If LICENSEE does not wish to
continue the RESEARCH PROJECT under such circumstances, it may
terminate its commitment for further research support, subject
only to payment of any pro rated amount of the BUDGET that may be
due up to the date of DRS. ELAINE TUOMANEN and ROBERT MASURE'S
cessation of involvement in the RESEARCH PROJECT.
2.4 The Principal Investigator or another RESEARCH
PROJECT Investigator designated by the Principal Investigator
will supply LICENSEE with a reasonably detailed written report
periodically as agreed between the Principal Investigators and
the LICENSEE during the term of the sponsored RESEARCH PROJECT.
Subject only to their terms of Paragraphs 2.6 and 2.7 herein,
LICENSEE shall have the unrestricted right to use all results and
data from the RESEARCH PROJECT for any purpose and in its
internal research programs or in required governmental reports,
without prior written approval of ROCKEFELLER.
2.5 ROCKEFELLER agrees that any NEW INVENTIONS made in
the course of the RESEARCH PROJECT shall be promptly disclosed by
ROCKEFELLER to LICENSEE, and the LICENSEE shall have the option
to acquire an exclusive license to such NEW INVENTIONS, in the
manner set forth in Paragraph 4.2 below.
2.6 ROCKEFELLER and LICENSEE recognize the traditional
freedom of all scientists to publish and present promptly the
results of the RESEARCH PROJECT. ROCKEFELLER and LICENSEE also
recognize that exclusive patent rights can be jeopardized by
public disclosure prior to the filing of suitable patent
applications. Therefore, ROCKEFELLER agrees that each proposed
publication, before submission to a publisher, will be submitted
to LICENSEE for review in connection with preservation of
exclusive patent rights. COMPANY shall have thirty (30) days in
which to review each publication, which may be extended for an
additional thirty (30) days when LICENSEE provides substantial
and reasonable need for such extension. By mutual agreement,
this period may be further extended for not more than an
additional three (3) months. When requested by ROCKEFELLER in
advance, LICENSEE, at its discretion, may allow for simultaneous
submission of the publication to the publisher. Any publication
by LICENSEE personnel will also be subject to similar pre-review
by ROCKEFELLER before publication. Scientists at both
ROCKEFELLER and LICENSEE will be expected to treat matters of
authorship in a proper collaborative spirit, giving credit where
it is due and proceeding in a manner which fosters cooperation
and communication, but will not to do anything in this regard
which will jeopardize the issuance of a valid patent.
2.7 ROCKEFELLER and LICENSEE agree to hold in
confidence all information received from the providing party
which is identified as confidential or proprietary information,
and agree not to disclose it to any third party or use it for any
purpose except as provided herein. The foregoing restrictions on
use and disclosure shall not apply to any such information which:
(a) is or later becomes generally available to
the public by use, publication or the like, through no fault of
the other PARTY; or
(b) is obtained from a third party who had the
legal right to disclose the same to the PARTY; or
(c) the PARTY already possesses, as evidenced by
its written records, predating receipt thereof from the other
PARTY; and
such restrictions shall survive termination of this Agreement.
Notwithstanding the foregoing, LICENSEE shall have the
right to disclose Confidential Information of ROCKEFELLER to a
third party who undertakes an obligation of confidentiality and
non-use with respect to such information, at least as restrictive
as LICENSEE'S obligation under this Section.
2.8 During the period which Licensee is funding the
RESEARCH PROJECT under this Agreement, the Principal Investigator
may not seek or accept funding from a commercial sponsor using
any information or materials developed or expected to be
developed in the RESEARCH PROJECT.
2.9 (a) During the period in which LICENSEE holds a
license, ROCKEFELLER and Principal Investigator shall not,
without LICENSEE'S prior written approval, distribute or
knowingly allow Materials developed in the RESEARCH PROJECT
("Materials") to be distributed to for-profit entities or persons
known to be employed thereby or consulting or performing research
therefor other than under a license permitted under this
Agreement.
(b) ROCKEFELLER and Principal Investigator shall
have the right to transfer Materials to not-for-profit entities
or persons known to be affiliated therewith provided that such
entities or persons sign the Material Transfer Agreement set
forth as Exhibit "C".
3. PATENTS
3.1 Prior Patent Expenses: Within five (5) business
days following the execution of this Agreement, LICENSEE shall
reimburse ROCKEFELLER for all unreimbursed out-of-pocket amounts
expended by ROCKEFELLER, prior to the date hereof for the
preparation, filing, prosecution and maintenance of LICENSED
PATENT RIGHTS being licensed to LICENSEE pursuant to Paragraph
4.1 of this Agreement, said amount being(CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED).
3.2 LICENSEE shall promptly decide whether or not it
wishes ROCKEFELLER to file U.S. and/or foreign patent
applications on any NEW INVENTION which may be patentable.
ROCKEFELLER shall select qualified independent patent counsel to
file and prosecute any such NEW INVENTION applications, including
divisionals, continuations, continuations-in-part, reissues, and
corresponding foreign applications. LICENSEE shall bear the
reasonable cost of filing, prosecution, and maintenance of each
such NEW INVENTION application to which LICENSEE has exercised
its option provided in Paragraphs 2.5 and 4 hereof.
3.3 ROCKEFELLER shall arrange for LICENSEE
representatives to meet with patent counsel at a reasonable
time(s) and place(s). Upon request, ROCKEFELLER shall promptly
deliver to LICENSEE copies of any patentability search reports
made by patent counsel including any patents located, a copy of
each Project Patent application, and a copy of each Project
Patent that issues thereon.
3.4 LICENSEE shall promptly advise ROCKEFELLER of any
decision not to continue to finance the filing, prosecution, or
maintenance of any LICENSED PATENT RIGHTS in adequate time to
allow ROCKEFELLER, at its own cost, to effectuate such filing,
prosecution, or maintenance if it so desires; and shall, at the
request of Rockefeller, take whatever steps may be necessary to
return to ROCKEFELLER all rights which LICENSEE may have thereto.
Nothing herein is intended or shall be construed as obligating
ROCKEFELLER to apply for any U.S. or foreign patent at its own
expense, or to defend, enforce, or support any LICENSED PATENT
RIGHTS against any third party.
4. LICENSE
4.1 ROCKEFELLER grants to LICENSEE, an exclusive
license, including the right to grant sublicenses, under LICENSED
PATENT RIGHTS and TECHNICAL INFORMATION, for the full term of any
patent issuing thereon, said exclusive license being a license to
make, have made, use and sell PRODUCTS in any country of the
TERRITORY, except to the extent that ROCKEFELLER'S right to do so
may be subject to the provisions of
35 United States, Section 20l et seq.,
and regulations and rules promulgated
thereunder and any agreements implementing
the provisions of such Federal Laws and
regulations and rules,
none of which prevent the grant of the license herein described.
4.2 ROCKEFELLER grants to LICENSEE the exclusive right
and option to add to the exclusive license granted in Paragraph
4.1, any NEW INVENTIONS. LICENSEE may exercise such option by
notice in writing to ROCKEFELLER, at any time within three (3)
months of receipt by LICENSEE of a written invention disclosure,
which may be extended by an additional three (3) months when
LICENSEE provides a reasonable basis for such extension. In the
event that LICENSEE does not exercise such right and option with
respect to a particular NEW INVENTION within the period
specified, ROCKEFELLER shall be free to license such New
Invention to a third party or parties.
4.3 LICENSEE'S license shall continue until the last
to expire LICENSED PATENT RIGHT, after which LICENSEE shall have
a fully paid up, non-cancelable license.
Nothing herein is intended or shall be construed as
obligating ROCKEFELLER to file or maintain any U.S. or foreign
patents at its own expense, or to defend, enforce, or support any
patent or patent applications which may be included in LICENSED
PATENT RIGHTS to which it has granted license right to LICENSEE;
provided, however, that ROCKEFELLER will cooperate with LICENSEE
in its activity in applying for U.S. or foreign patents or in the
defense or enforcement of LICENSED PATENT RIGHTS.
Nothing herein is intended or shall be construed as
obligating LICENSEE to maintain its license with respect to any
patent or application licensed hereunder and to finance the
preparation, filing, prosecution or maintenance of any patent
application in any country or jurisdiction in which it believes
it is not in the best business interest of LICENSEE to do so.
4.5 LICENSEE, or any Affiliate or Sublicensee of
LICENSEE, shall have the right but not the obligation to
institute patent infringement proceedings against third parties
based on any LICENSED PATENT RIGHTS licensed hereunder.
ROCKEFELLER agrees to give Notice to LICENSEE promptly, in
writing, of each infringement of LICENSED PATENT RIGHTS of which
ROCKEFELLER is or becomes aware during the term of this
Agreement. If LICENSEE does not institute infringement
proceedings against such third parties, ROCKEFELLER shall have
the right, but not the obligation, to institute such proceedings
within thirty (30) days of Notice of its intention to commence
such proceedings given to LICENSEE, in writing, and provided that
LICENSEE does not, within such thirty (30) day period, institute
its own proceedings. The expenses of such proceedings, including
lawyers' fees, shall be borne by the PARTY instituting suit. The
PARTY instituting suit shall have the right to select counsel to
conduct the suit. Each PARTY shall execute all necessary and
proper documents and take all other appropriate action, including
but not limited to being named as a participating party, to allow
the other PARTY to institute and prosecute such proceedings. Any
award paid by third parties as a result of such proceedings
(whether by way of settlement or otherwise) shall first be
applied toward reimbursement for the legal fees and expenses
incurred, and the excess, if any, shall be shared on a pro rata
basis based on the expenses incurred by each PARTY.
5. ROYALTIES AND OTHER LICENSE CONSIDERATION
5.1 As further consideration for the license grant
provided in Paragraph 2.1, Licensee agrees to pay ROCKEFELLER the
following amounts in the nature of royalties:
(a) Initial License Fee: A one-
time non-refundable payment of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) shall be due
and payable upon the execution of this
Agreement
(b) Royalties on Net Sales of
Products, as follows:
(i) For NET SALES of
PRODUCTS up (CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED) in any calendar year a
royalty at the rate of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) of NET
SALES; and
(ii) For NET SALES of
PRODUCTS in excess thereof, a royalty
at the rate of (CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED) of NET SALES
The obligation to pay royalties hereunder is
imposed only once with respect to the sale, lease or disposition
of PRODUCTS regardless of the number of Valid Claims which cover
such PRODUCTS. Additionally, there shall be no obligation to pay
royalties on the sale, lease or disposition of PRODUCTS by
LICENSEE to its AFFILIATES or sublicensees for resale, but in
such instances, the obligation to pay royalties shall arise upon
the sale by its LICENSEES, AFFILIATES or sublicensees to
unrelated third parties.
In the event that LICENSEE is required to pay
royalties to a third party(s) for a PRODUCT covered by claims of
the license herein granted, (CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED) of such royalties payable to such third party(s) will
be creditable against royalties owed to ROCKEFELLER hereunder.
In no event, however, will ROCKEFELLER'S royalty be reduced by
more than (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) of that
provided hereunder.
(c) Milestone payments as follows:
(i) (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) payable
within sixty (60 days of the first
approved submission of an IND in any
country of the TERRITORY on a PRODUCT,
(ii) (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) payable
within sixty 60 days of the start of the
first Phase III clinical trial in any
country of the TERRITORY,
(iii) (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) payable
within sixty (60) days of the first FDA
approval or its equivalent in any country
of the TERRITORY on a PRODUCT.
5.2 Upon commencement of NET SALES of PRODUCTS which
generate a royalty to the ROCKEFELLER pursuant to this Agreement,
LICENSEE shall, within sixty (60) days of the close of the
calendar quarter in which such Net Sales begin, make quarterly
reports to the ROCKEFELLER indicating the total NET SALES of
PRODUCTS in the quarter and the calculation of royalties due
thereon. Any royalty then due and payable shall be included with
such report.
LICENSEE'S records shall be open to inspection by
the ROCKEFELLER or a certified public accountant designated by
the ROCKEFELLER, at reasonable times, and from time to time (but
no more than once each calendar year), for the sole purpose of
verifying the accuracy of the reports and the royalty payments.
ROCKEFELLER shall bear the costs of such inspection unless the
inspection establishes an error in the ROCKEFELLER'S favor of
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) or more of the amount
payable for the period of inspection.
5.3 LICENSEE agrees to provide to ROCKEFELLER
periodically, but no more frequently than annually, which
progress in research and development involving the LICENSED
TECHNOLOGY and regulatory approvals, manufacturing and
sublicensing information.
6. PUBLICITY
LICENSEE will not use ROCKEFELLER'S name or the
name of any member of its faculty or its staff for any public,
commercial or advertising purposes without the prior written
approval of the ROCKEFELLER and faculty or staff member involved;
provided, however, that it is expressly agreed that LICENSEE may
reveal or identity ROCKEFELLER or any member of its faculty or
staff as the inventor, source or origin of any Technology,
TECHNICAL INFORMATION or any PRODUCT or process for its own
internal records or in any disclosures or filings required by
governmental law or regulation.
7. PRODUCT LIABILITY
(a) LICENSEE agrees to indemnify and hold
harmless ROCKEFELLER and its trustees, officers, agents, faculty,
employees, and students from any and all liability arising from
injury or damage to person or property resulting directly or
indirectly from LICENSEE'S use, manufacture, or sale of any
PRODUCT covered by any Licensed Patent Rights or Technical
Information. LICENSEE further agrees to obtain and maintain in
force product liability and comprehensive general liability
insurance against any claims or expenses for which it is
obligated to indemnify as provided above in amounts not less than
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) per incident and
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) annual aggregate.
The policies representing such insurance shall specify
ROCKEFELLER as named insured.
(b) LICENSEE'S indemnification under (a) shall
not apply to any liability, damage, loss or expense to the extent
that it is directly attributable to the negligent activities or
intentional misconduct of the Indemnitees.
(c) LICENSEE shall have the right to control the
defense, settlement or compromise of any such action.
(d) ROCKEFELLER shall promptly give the LICENSEE
Notice of any claim asserted or threatened on the basis of which
the Party giving such Notice intends to seek indemnification from
LICENSEE as herein provided and shall fully cooperate with all
reasonable requests of LICENSEE in the respect thereto.
8. TERMINATION
8.1 The licenses herein granted shall continue for the
full term of any patents licensed hereunder as the same or the
effectiveness thereof may be extended by any governmental
authority, rule or regulation applicable thereto.
8.2 Either PARTY may terminate this Agreement in the
event of a material breach by the other PARTY, provided only that
the breaching PARTY is given Notice of the breach and a
reasonable time, not to exceed thirty (30) days, in which to cure
such breach, excepting, however, that the failure of LICENSEE to
meet any payment of laboratory support provided for in Paragraph
2 hereof (or for any further term that may be agreed upon by the
Parties) shall be deemed a material breach for which LICENSEE
shall have but ten (10) days to cure or automatically forfeit all
license rights hereunder and remain liable for damages for breach
of contract.
8.3 ROCKEFELLER agrees that in the event this
Agreement and/or the rights and licenses granted under this
Agreement to LICENSEE are terminated, any sublicense granted
under this Agreement, which provides for royalty rates payable to
ROCKEFELLER at least equal to those provided for in Paragraph
5.1(b), shall remain in full force and effect as a direct license
between ROCKEFELLER and the sublicensee under the terms and
conditions of the sublicense agreement, subject to the
sublicensee agreeing to be bound to ROCKEFELLER under such terms
and conditions within thirty (30) days after ROCKEFELLER provides
written notice to the sublicensee of the termination of
LICENSEE'S rights and licenses under this Agreement. At the
request of LICENSEE, ROCKEFELLER will acknowledge to a
sublicensee, ROCKEFELLER'S obligations to the sublicensee under
this Agreement.
9. TIMES AND CURRENCIES OF PAYMENT
9.1 Royalty payments shall be made in United States
Dollars or, if sales are made in the currency of other countries,
royalties shall be calculated in the currency of such other
country and be converted into United States Dollars using the
applicable exchange rate published in The Wall Street Journal on
the last day of the applicable reporting period.
9.2 If at any time, legal restrictions prevent the
prompt remittance of part or all royalties by Licensee with
respect to any country where a PRODUCT is sold, LICENSEE shall
have the right and option to make such payment by depositing the
amount in local currency to ROCKEFELLER'S account in a bank or
other depository in such country.
10. NOTICES
Any Notice required to be given pursuant to this
Agreement shall be made by personal delivery or, if by mail, then
by registered or certified mail, return receipt requested, with
postage and fees prepaid, by one PARTY to the other PARTY at the
addresses noted below, or to such other address as such PARTY may
designate in writing from time to time to the other PARTY.
In the case of the LICENSEE, Notice should be sent to:
MedImmune, Inc.
35 West Watkins Mill Road
Gaithersburg, Maryland 20878
Attention: CEO
In the case of ROCKEFELLER, Notice should be sent to:
The Rockefeller University
1230 York Avenue
New York, New York 10021
Attention: Office of the General Counsel
11. ASSIGNMENT; SUCCESSORS
This Agreement shall not be assignable by either of the
parties without the prior written consent of the other party
(which consent shall not be unreasonably withheld), except that
LICENSEE without the consent of ROCKEFELLER may assign this
Agreement to an AFFILIATE or to a successor in interest or
transferee of all or substantially all of the portion of the
business to which this Agreement relates.
11.2 Subject to the limitations on assignment herein,
this Agreement shall be binding upon and inure to the benefit of
said successors in interest and assigns of LICENSEE and
ROCKEFELLER. Any such successor or assignee of a party's
interest shall expressly assume in writing the performance of all
the terms and conditions of this Agreement to be performed by
said party and such Assignment shall not relieve the Assignor of
any of its obligations under this Agreement.
12. GOVERNING LAW
This Agreement shall be governed by and construed in
accordance with the laws of the State of New York, without regard
to choice of law principles.
13. FURTHER ACTION
At any time and from time to time, each PARTY
agrees, without further consideration, to take such actions and
to execute and deliver such documents as may be reasonable
necessary to effectuate the purposes of this Agreement.
14. SEVERABILITY
If any provision of this Agreement is invalid, illegal,
or unenforceable, the balance of this Agreement shall remain in
effect, and if any provision is inapplicable to any person or
circumstance, it shall nevertheless remain applicable to all
other persons and circumstances.
15. COUNTERPARTS
This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all
of which together shall constitute one and the same instrument.
16. FORCE MAJEURE
The PARTIES shall not be liable in any manner for
failure or delay in fulfillment of all or part of this Agreement,
directly or indirectly caused by acts of God, governmental order
or restrictions, war, war-like condition, revolution, riot,
looting, strike, lockout, fire, flood or other similar or
dissimilar causes or circumstances beyond the non-performing
PARTY'S control. The non-performing PARTY shall promptly notify
the other PARTY of the cause or circumstance and shall recommend
its performance of its obligations as soon as practicable after
the cause or circumstance ceases.
17. ENTIRE UNDERSTANDING
This Agreement, together with the Exhibits hereto and
the concurrently executed Agreement constitute the entire
agreement between the PARTIES with respect to the subject matter
hereof, supersedes all prior understanding and agreement by the
PARTIES with respect to the subject matter hereof and may be
modified only by written instrument duly executed by each PARTY.
IN WITNESS WHEREOF, the parties have caused this
Agreement to be duly executed as of the day and year first above
written.
MEDIMMUNE, INC.
By: David M. Mott
President
THE ROCKEFELLER UNIVERSITY
By: William H. Griesar
Vice President and General Counsel
EXHIBIT A
Patent, Patent Applications and
KNOW-HOW TECHNOLOGY
EXHIBIT A-1
TITLE INVENTORS SERIAL NO.
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
BACTERIAL EXPORTED H. Robert Masure, PCT/94/09942
PROTEINS AND ACELLULAR Barbara J. Pearce and (EP,AU,CA,FI,JP,NO,
VACCINES BASED THEREON Elaine Tuomanen NZ, US)
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
EXHIBIT A-2
TITLE INVENTORS SERIAL NO.
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
EXHIBIT A-3
Pneumococcal genes of importance to disease and drug
discovery
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
EXHIBIT B
RESEARCH PROGRAM
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
EXHIBIT C
MATERIAL TRANSFER AGREEMENT
THIS MATERIAL TRANSFER AGREEMENT ("Agreement") is entered
into by and between The Rockefeller University, 1230 York Avenue,
New York, New York 10021-6399 ("ROCKEFELLER") ________________
("Institution").
Whereas, Rockefeller and MedImmune, Inc. ("MI") have entered
into a License Agreement dated April __, 1996 under which
ROCKEFELLER has exclusively licensed to MI rights in Materials
(defined below) and technology based on Materials;
Whereas, Rockefeller is willing to provide to you
Rockefeller's proprietary ________________ and mutually agreed
additional materials (collectively "Material") in accordance with
the following terms:
Research Program. Institution shall undertake a research program
("Research Program") as described in Appendix A. Institution
agrees that the Research Program shall be conducted by or under
the direct supervision of ______________ ("Investigator"). The
Research Program may be modified, upon mutual written agreement
of Rockefeller and Institution.
Reports. Institution shall furnish Rockefeller with a final
written report summarizing the results of the Research Program
within thirty (30) days of completion of the Research Program or
termination of this Agreement. The final report will be sent to
the person at Rockefeller who sent the Material or a designee
thereof at Rockefeller. Rockefeller and MI shall have the
unrestricted right to utilize all data and information developed
under the Research Program in internal research.
Research Materials. In consideration of the services provided by
institution and the rights obtained by Rockefeller and MI under
this Agreement, Rockefeller shall provide Investigator with
mutually agreed upon quantity of the Material. The Materials and
all other materials arising out of the conduct of the Research
Program ("Program Materials") shall be used for the sole purpose
of conducting the Research Program. Any Material or Program
Materials remaining upon conclusion of this Agreement shall be
returned to Rockefeller or at Rockefeller's option, destroyed,
within thirty (30) days following completion of the Research
Program or termination this agreement, or upon request of
Rockefeller prior to the completion of the Research Program.
Institution shall not provide either Materials or Program
Materials to any third party without the prior written approval
of Rockefeller.
Confidentiality. For the term of this Agreement, and any
subsequent extension, and for a period of five (5) years
thereafter, Institution will not use, except as necessary for
purposes of the Research Program, or disclose or provide to any
third party without the prior written consent of Rockefeller any
Confidential Information. For purposes of this Agreement,
"Confidential Information" means all information, reagents,
procedures, results, conclusions, and the like which are
disclosed or provided to Institution by Rockefeller in connection
with the Research Program. Institution shall have no obligation
with respect to any portion of such Confidential Information
which:
(a) is or later becomes generally available to the public
by use, publication or the like, through no fault of
Institution; or
(b) is obtained from a third party who had the legal right
to disclose the same to Institution; or
(c) Institution already possesses, as evidenced by its
written records, predating receipt thereof from
Rockefeller; or
(d) was information that Institution believes in good faith
is required to be disclosed to comply with any
applicable law, regulation or order of a government
authority or court of competent jurisdiction, in which
event Institution shall use all reasonable efforts to
advise Rockefeller in advance of the need for such
disclosure.
Publications. Institution shall submit all scientific articles,
manuscripts, abstracts, and posters or summaries of any oral
presentations relating to the Research Program to Rockefeller
thirty (30) days prior to submission for publication or
presentation. Rockefeller shall have thirty (30) days to review
and comment on each proposed presentation or publication.
Institution shall delete any Confidential Information and
postpone publication or presentation for up to forty-five (45)
days upon request by Rockefeller in order to allow appropriate
patent applications to be filed. These periods can be extended
by mutual agreement of the parties.
Intellectual Property. Any inventions or discoveries made in
performance of the Research Program solely by Investigator and/or
any other personnel affiliated with institution ("Sole
Inventions"), will belong to Institution. Institution shall have
the right to obtain patent protection for Sole Inventions, at its
expense. Any inventions or discoveries made in performance of
the Research Program jointly by Investigator and/or other
personnel affiliated with Institution and by Rockefeller's
employees or affiliated personnel (collectively, "Joint
Inventions"), shall belong jointly to Institution and
Rockefeller. Rockefeller shall have the right to obtain patent
protection for any Joint Inventions involving Rockefeller
personnel, at its expense, unless otherwise agreed upon by
Rockefeller. Institution shall promptly notify Rockefeller of
all inventions and discoveries developed as a result of the
Research Program.
Rockefeller and MI shall have an exclusive option for the term of
this Agreement and one (1) year thereafter to obtain an exclusive
worldwide license, with the right to sublicense, for any such
patent application, or patent issued thereon, filed for Sole
Inventions and/or for Institution's interest in Joint Inventions.
The license shall be negotiated in good faith by the parties and
provide for appropriate compensation to Institution. In the
event the parties fail to reach a mutually acceptable licensing
arrangement within one hundred eighty (180) days after commencing
negotiations, Institution shall grant to MI a royalty-free non-
exclusive license under any Sole Invention and thereafter
Institution shall be entitled to negotiate in good faith with a
third party for a license to any patent application or patent on
Sole Inventions or Institution rights in Joint Inventions.
Warranty. Institution warrants that it is permitted to enter
into this Agreement and that this Agreement is not inconsistent
with other contractual arrangements of Institution.
Term. The term of this Agreement shall be for a period of one
(1) year from the date of execution of this Agreement, unless
extended by written agreement between the parties. Any rights or
obligations set forth herein which of their nature are intended
to extend beyond the termination of this Agreement including but
not limited to the confidentiality and option provisions, shall
survive any such termination.
Indemnification. Institution agrees to indemnity, defend, and
hold Rockefeller harmless from any liability (including
attorney's fees) resulting from any claim or demand arising from
use of the Material by Institution.
IN WITNESS WHEREOF, the parties hereto have caused this
instrument to be executed by their respective duly authorized
officers or representatives on the respective dates indicated
below.
Institution Rockefeller University
BY:____________________ By:____________________
Title:_________________ Title:_________________
Date:__________________ Date:__________________
AGREED:
Investigator
BY:_____________________
Title:__________________
Date:___________________
1. Consultant is a member of the faculty of The Rockefeller
University and heads a major laboratory there engaged in ongoing
programs of scientific research. Nothing herein is intended or
shall be construed as granting to the Company any rights or
licenses to any inventions, developments or scientific data or
technology arising out of research at The Rockefeller University.
2. If and to the extent Dr. Tuomanen completes the partial
sequence information, while acting as a consultant under this
contract, any technology describing the complete sequence and
deemed under United States Patent law as belonging at least in
part to The Rockefeller University shall be deemed a New
Invention as that term is defined in the Research and License
Agreement between The Rockefeller University and MedImmune, Inc.
dated 4/16/96 and be subject to those option rights described in
Paragraph 4.2 of such Agreement.