Technology Transfer and License Agreement - Sepracor Inc. and HemaSure Inc.
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This TECHNOLOGY TRANSFER AND LICENSE AGREEMENT, dated as of January 1,
1994, is between Sepracor Inc., a Delaware corporation ("Sepracor"), and
HemaSure Inc., a Delaware corporation ("HemaSure").
RECITALS:
A. Sepracor is willing to transfer and license to HemaSure, and HemaSure
desires to acquire and license from Sepracor, certain technology and
intellectual property and rights thereto for the purpose of allowing HemaSure to
develop and market products using such technology and intellectual property and
rights thereto.
B. In the future, Sepracor may develop certain inventions, improvements,
processes or know-how, or Sepracor may obtain technology or patents or other
proprietary rights useful in the business of HemaSure, and, in each such case,
Sepracor is willing to grant to HemaSure a license or sublicense to use such
developments, technology or rights.
NOW, THEREFORE, in consideration of the mutual covenants set forth herein
and for other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, Sepracor and HemaSure hereby agree as follows:
1. Definitions. As used herein, capitalized terms have the respective
meanings set forth in Schedule A attached hereto and incorporated herein by
reference.
2. Transfer of Technology. Subject to the terms and conditions of this
Agreement, Sepracor hereby transfers and assigns to HemaSure all of Sepracor's
right, title and interest to the Sepracor Technology and the assets and
equipment to be set forth in a separate letter agreement between the parties
(the "Letter Agreement").
3. Licenses and Right of First Refusal.
3.1. Grant of License to HemaSure. Subject to the terms and conditions
of this Agreement, Sepracor hereby grants to HemaSure a perpetual, royalty-free
and exclusive right and license, including the right to grant sublicenses, to
Improvements for use in the HemaSure Field.
3.2. Third-Party Licenses. To the extent that any Sepracor Technology or
Improvements assigned or licensed to HemaSure hereunder consist of rights of
Sepracor under an agreement or license with or from a third party, any
assignment or license granted to HemaSure hereunder shall be limited to the
rights which Sepracor has a right to grant under such agreement or license and
otherwise subject
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to any obligations assumed by Sepracor in consideration of the grant or
assignment of such right or license to Sepracor which is to be assigned or
sublicensed to HemaSure.
3.3. Grant of Licenses to Sepracor. Subject to the terms and conditions
of this Agreement, HemaSure hereby grants to Sepracor (i) a perpetual,
royalty-free and exclusive (against HemaSure and all other Persons) right and
license, including the right to grant sublicenses, to the Sepracor Technology
for the development, manufacture, use or sale of any products within the
Sepracor Field and (ii) a perpetual, royalty-free and nonexclusive right and
license, including the right to grant sublicenses, to the Sepracor Technology
for the development, manufacture, use or sale of any products outside the
HemaSure Field and the Sepracor Field.
3.4. Right of First Refusal. If Sepracor proposes to sell, or license a
third party to sell, any product for use within the HemaSure Field (a
"Product"), Sepracor will first provide HemaSure with written notice of such
proposal, including all material terms and conditions thereof (the "Product
Notice"). For 30 days following receipt of the Product Notice, HemaSure shall
have the option to purchase or license from Sepracor the Product upon the terms
and conditions set forth in the Product Notice. In the event HemaSure elects to
purchase or license the Product from Sepracor, HemaSure shall give written
notice of its election to Sepracor within such 30-day period and the parties
shall negotiate a mutually agreeable agreement for the purchase or license of
the Product. If HemaSure does not elect to purchase or license the Product,
Sepracor may, within the 30-day period following the expiration of the option
right granted to HemaSure, transfer or license the Product to the proposed
transferee or any other transferee, provided that this transfer shall not be on
terms and conditions more favorable to the purchaser than those contained in the
Product Notice.
3.5. Termination. The provisions of Sections 3.1 and 3.4 shall terminate
upon the earlier of (a) four years after the date hereof or (b) the acquisition
of all or substantially all of the business or assets, by merger, sale of assets
or otherwise, of either HemaSure or Sepracor, provided, that any licenses or
sublicenses granted under Section 3.1 shall survive such termination to the
extent that they relate to Improvements existing on such date of termination.
4. HemaSure Common Stock.
4.1. Issuance. In connection with the transfers and licenses from
Sepracor to HemaSure herein, HemaSure shall issue to Sepracor 2,999,999 shares
of HemaSure Common Stock.
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4.2. Registration Rights.
4.2.1 At any time after (i) the expiration of the four year period
following the closing of HemaSure's first underwritten public offering of shares
of HemaSure Common Stock, or (ii) if later, after HemaSure becomes eligible to
file a Registration Statement on Form S-3 (or any successor form relating to
secondary offerings), Sepracor may request HemaSure, in writing, to effect the
registration on Form S-3 (or such successor form), of shares of HemaSure Common
Stock having an aggregate offering price of at least $5,000,000 (based on the
then current public market price). If Sepracor intends to distribute the shares
of HemaSure Common Stock by means of an underwriting, Sepracor shall so advise
HemaSure in its request. Upon receipt of any such request, HemaSure shall as
expeditiously as possible, use its best efforts to effect the registration on
Form S-3 (or such successor form) of all shares of HemaSure Common Stock which
Sepracor has been requested to so register.
4.2.2 HemaSure shall not be required to effect more than two
registrations in accordance with Section 4.2 of the Agreement. If at the time of
any request to register shares of HemaSure Common Stock pursuant to Section 4.2
of the Agreement, HemaSure is engaged in any other activity which, in the good
faith determination of HemaSure's Board of Directors, would be adversely
affected by the requested registration to the material detriment of HemaSure,
then HemaSure may at its option direct that such request be delayed for a period
not in excess of six months from the date of commencement of such other material
activity, such right to delay a request to be exercised by HemaSure not more
than once in any two-year period. Sepracor will pay all Registration Expenses.
5. Technology; Patent Rights and Disclosure.
5.1. Technology Transfer. Sepracor shall provide to HemaSure, or a
sublicensee designated by HemaSure, reasonable technical assistance and
instruction, at HemaSure's or such permitted sublicensee's sole option and
expense, in understanding, interpreting and applying Sepracor Technology and
Improvements for the purpose of commercially developing products within the
HemaSure Field. Sepracor shall make its employees reasonably available for
consultation by telephone, or in person at the offices of Sepracor, in
connection with such assistance and instruction, all at the sole expense of
HemaSure or such sublicensee.
5.2. Patent Rights. Sepracor shall have the exclusive right, at its
expense, to prepare, prosecute and maintain patent applications, and to maintain
and enforce patents issued thereon with respect to Improvements discovered,
developed or otherwise acquired by Sepracor.
5.3. Cooperation. Each party agrees to cause each of its employees and
agents to take all actions and to execute, acknowledge and deliver all
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instruments or agreements reasonably requested by the other party, and necessary
for the perfection, maintenance, enforcement or defense of that party's rights
as set forth herein.
5.4. Confidential Information. Any party receiving Confidential
Information shall maintain the confidential and proprietary status of such
Confidential Information, keep such Confidential Information and each part
thereof within its possession or under its control sufficient to prevent any
activity with respect to the Confidential Information that is not specifically
authorized by this Agreement, use commercially reasonable efforts to prevent the
disclosure of any Confidential Information to any other Person, and use
commercially reasonable efforts to ensure that such Confidential Information is
used only for those purposes specifically authorized herein; provided, however,
that such restriction shall not apply to any Confidential Information which is
(a) independently developed by the receiving party, (b) in the public domain at
the time of its receipt or thereafter becomes part of the public domain through
no fault of the receiving party, (c) received without an obligation of
confidentiality from a third party having the right to disclose such
information, (d) released from the restrictions of this Section 5.4 by the
express written consent of the disclosing party, (e) disclosed to any permitted
assignee, permitted sublicensee or permitted subcontractor of either Sepracor or
HemaSure hereunder (if such assignee, sublicense or subcontractor is subject to
the provisions of this Section 5.4 or comparable provisions of such other
documents), or (f) required by law, statute, rule or court order to be disclosed
(the disclosing party shall, however, use commercially reasonable efforts to
obtain confidential treatment of any such disclosure). The obligations set forth
in this Section 5.4 shall survive for a period of five (5) years from the
termination or expiration of this Agreement. Without limiting the generality of
the foregoing, Sepracor and HemaSure each shall use commercially reasonable
efforts to obtain confidentiality agreements from its respective employees and
agents, similar in scope to this Section 5.4, to protect the Confidential
Information. Sepracor agrees to treat the Sepracor Technology as Confidential
Information of HemaSure. Notwithstanding anything to the contrary herein,
Sepracor and HemaSure shall each be deemed to have satisfied its obligations
under this Section 5.4 if it protects the Confidential Information of the other
party with the same degree of care that it uses to protect its own similar
Confidential Information.
5.5. Permitted Disclosures. Notwithstanding the provisions of Section
5.4 hereof, Sepracor and HemaSure may, to the extent necessary, disclose and use
Confidential Information, consistent with the rights of Sepracor and HemaSure
otherwise granted hereunder (a) for the purpose of engaging in research and
development, conducting clinical testing and marketing programs, or securing
institutional or government approval to clinically test or market any product,
(b) for the purpose of sharing clinical trial results and data with third
parties conducting
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clinical trials on, or (c) for the purpose of securing patent protection for an
invention within the scope of the Improvements.
6. Disclaimer of Warranty; Consequential Damages.
6.1. Disclaimer of Warranty. Nothing in this Agreement shall be
construed as a representation made or warranty given by either party hereto that
any patents will issue based on pending applications within the Sepracor
Technology, or that any such patents which do issue will be valid, or that the
practice by the other party hereto of any license granted hereunder, or that the
use of any Sepracor Technology and Improvements transferred or licensed
hereunder, will not infringe the patent or proprietary rights of any other
Person. In addition, Sepracor and HemaSure acknowledge that THE TECHNOLOGY IS
LICENSED AND TRANSFERRED, AS THE CASE MAY BE, TO HEMASURE AND SEPRACOR,
RESPECTIVELY, AS IS, AND SEPRACOR AND HEMASURE EXPRESSLY DISCLAIM AND HEREBY
WAIVE, RELEASE AND RENOUNCE ANY WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO
SUCH TECHNOLOGY, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE.
6.2. Consequential Damages. EXCEPT AS OTHERWISE SET FORTH HEREIN,
NEITHER PARTY TO THIS AGREEMENT SHALL BE ENTITLED TO RECOVER FROM THE OTHER ANY
SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES.
7. No Implied Waivers; Rights Cumulative. No failure on the part of
Sepracor or HemaSure to exercise and no delay in exercising any right, power,
remedy or privilege under this Agreement, or provided by statute or at law or in
equity or otherwise, shall impair, prejudice or constitute a waiver of any such
right, power, remedy or privilege or be construed as a waiver of any breach of
this Agreement or as an acquiescence therein, nor shall any single or partial
exercise of any such right, power, remedy or privilege preclude any other or
further exercise thereof or the exercise of any other right, power, remedy or
privilege.
8. Force Majeure. Sepracor and HemaSure shall each be excused for any
failure or delay in performing any of its respective obligations under this
Agreement, other than the obligations of HemaSure to make certain payments to
Sepracor pursuant to Section 3 hereof, if such failure or delay is caused by
Force Majeure.
9. Notices. All notices, requests and other communications to Sepracor or
HemaSure hereunder shall be in writing (including telecopy or similar electronic
transmissions), shall refer specifically to this Agreement and shall be
personally delivered or sent by telecopy or other electronic facsimile
transmission or by registered mail or certified mail, return receipt requested,
postage prepaid, in each
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case to the respective address specified below (or to such other address as may
be specified in writing to the other party hereto):
Sepracor Inc.
33 Locke Drive
Marlborough, MA 01752
Attention: President
HemaSure Inc.
33 Locke Drive
Marlborough, MA 01752
Attention: President
Any notice or communication given in conformity with this Section 9 shall be
deemed to be effective when received by the addressee, if delivered by hand,
telecopy or other electronic facsimile transmission, and three (3) days after
mailing, if mailed.
10. Further Assurances. Each of Sepracor and HemaSure agrees to duly
execute and deliver, or cause to be duly executed and delivered, such further
instruments and do and cause to be done such further acts and things, including,
without limitation, the filing of such additional assignments, agreements,
documents and instruments, that may be necessary or as the other party hereto
may at any time and from time to time reasonably request in connection with this
Agreement or to carry out more effectively the provisions and purposes of, or to
better assure and confirm unto such other party its rights and remedies under,
this Agreement.
11. Successors and Assigns. The terms and provisions of this Agreement
shall inure to the benefit of, and be binding upon, Sepracor, HemaSure, and
their respective successors and assigns; provided, however, that neither
Sepracor nor HemaSure may assign or otherwise transfer any of its rights and
interests, nor delegate any of its respective obligations hereunder, including,
without limitation, pursuant to a merger or consolidation, without the prior
written consent of the other party hereto, which consent shall not be
unreasonably withheld. Any attempt to assign or delegate any portion of this
Agreement in violation of this Section 11 shall be null and void. Subject to the
foregoing, any reference to Sepracor and HemaSure hereunder shall be deemed to
include the successors thereto and assigns thereof.
12. Amendments. No amendment, modification, waiver, termination or
discharge of any provision of this Agreement, nor consent to any departure by
Sepracor or HemaSure therefrom, shall be effective unless the same shall be in
writing specifically identifying this Agreement and the provision intended to be
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amended, modified, waived, terminated or discharged and signed by Sepracor and
HemaSure, and each such amendment, modification, waiver, termination or
discharge shall be effective only in the specific instance and for the specific
purpose for which given. No provision of this Agreement shall be varied,
contradicted or explained by any oral agreements course of dealing or
performance or any other matter not set forth in an agreement in writing and
signed by Sepracor and HemaSure.
13. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the Commonwealth of Massachusetts.
14. Severability. If any provision hereof should be held invalid, illegal
or unenforceable in any respect in any jurisdiction, then, to the fullest extent
permitted by law, (a) all other provisions hereof shall remain in full force and
effect in such jurisdiction and shall be liberally construed in order to carry
out the intentions of the parties hereto as nearly as may be possible and (b)
such invalidity, illegality or unenforceability shall not affect the validity,
legality or enforceability of such provision in any other jurisdiction. To the
extent permitted by applicable law, Sepracor and HemaSure hereby waive any
provision of law that would render any provision hereof prohibited or
unenforceable in any respect.
15. Headings. Headings used herein are for convenience only and shall not
in any way affect the construction of, or be taken into consideration
interpreting, this Agreement.
16. Execution in Counterparts. This Agreement may be executed in
counterparts, each of which counterparts, when so executed and delivered, shall
be deemed to be an original, and all of which counterparts, taken together,
shall constitute one and the same instrument.
17. Entire Agreement. This Agreements together with any agreements
referenced herein, constitutes, on and as of the date hereof, the entire
agreement of Sepracor and HemaSure with respect to the subject matter hereof,
and all prior or contemporaneous understandings or agreements, whether written
or oral, between Sepracor and HemaSure with respect to such subject matter are
hereby superseded in their entirety.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed under seal and delivered as of the date first above written.
SEPRACOR INC.
By: /s/ Timothy J. Barberich
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Timothy J. Barberich, President
HEMASURE INC.
By: /s/ Eugene J. Zurlo
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Eugene J. Zurlo, President
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SCHEDULE A
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GLOSSARY
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"HemaSure Common Stock" shall mean the common stock, $0.01 par value per
share, of HemaSure.
"HemaSure Field" shall mean the development, manufacture, use or sale of
medical devices for the separation or purification of blood, blood products or
blood components.
"Confidential Information" shall mean all Technology disclosed by Sepracor
to HemaSure or by HemaSure to Sepracor pursuant to this Agreement.
"Force Majeure" shall mean any act of God, any accident, explosion, fire,
storm, earthquake, flood, drought, peril of the sea, riot, embargo, war or
foreign, federal, state or municipal order of general application seizure,
requisition or allocation, any failure or delay of transportation, shortage of
or inability to obtain supplies, equipment fuel or labor or any other
circumstances or event beyond the reasonable control of the party relying upon
such circumstance or event.
"Improvements" shall mean any improvement or enhancement to any Sepracor
Technology covered by the Sepracor Patent Rights that is discovered, developed
or otherwise acquired by Sepracor prior to the termination date set forth in
Section 3.5.
"Person" shall mean any individual, partnership, corporation, firm,
association, unincorporated organization, joint venture, trust or other entity.
"Registration Expenses" shall mean all expenses incurred by HemaSure in
complying with Section 4.2 of this Agreement, including, without limitation, all
registration and filing fees, exchange listing fees, printing expenses, fees and
expenses of counsel for HemaSure and the fees and expenses of one counsel
selected by Sepracor to represent Sepracor, state Blue Sky fees and expenses,
and the expense of any special audits incident to or required by any such
registration, but excluding underwriting discounts and selling commissions.
"Sepracor Field" shall mean the synthesis or separation of optically active
forms of chiral molecules with a molecular weight of less than 4,000 Daltons and
the development, manufacture, use or sale of chiral drugs and chiral drug
intermediates.
"Sepracor Patent Rights" shall mean (a) the issued patents and patent
applications listed in the Letter Agreement, (b) any patent application
constituting an equivalent, counterpart, reissue, extension or continuation
(including, without
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limitation, a continuation in part or a division) of any of the foregoing
applications, and (c) any patent issued or issuing upon any of the foregoing
applications.
"Sepracor Technology" shall mean all Technology owned or controlled by
Sepracor as of the date hereof including, but not limited to, the Sepracor
Patent Rights and other rights listed and described in the Letter Agreement,
that relates to and is used in researching, developing or manufacturing products
in the HemaSure Field. "Owned or controlled" shall include Technology which
Sepracor owns, or under which Sepracor is licensed and has the right to grant
sublicenses.
"Technoloy" shall mean public and nonpublic technical or other information,
trade secrets, know-how, processes, formulations, concepts, ideas, preclinical,
clinical, pharmacological or other data and testing results, experimental
methods, or results, descriptions, business or scientific plans, depictions,
customer lists and any other written, printed or electronically stored
materials, and any and all other intellectual property, including patents,
patent applications, trademarks and trademark applications of any nature
whatsoever.
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