License Agreement - Duke University and SL-1 Pharmaceuticals Inc.
LICENSE AGREEMENT
This Agreement is made by and between DUKE UNIVERSITY ("LICENSOR"), a nonprofit
educational and research organization organized under the laws of North
Carolina, and having its principal office at Durham, North Carolina, and SL-1
PHARMACEUTICALS, INC. ("LICENSEE"), a Delaware corporation having its principal
office at Durham, North Carolina.
WHEREAS, Dani P. Bolognesi, Ph.D., is James B. Duke Professor of Surgery at
Duke University and is the Director of the Duke University Center for AIDS
Research; and
WHEREAS, in these capacities, Dr. Bolognesi leads a team of researchers
which includes Drs. Thomas J. Matthews, Alphonse Langlois, Kent J. Weinhold,
Michael L. Greenberg, and Carl T. Wild (collectively referred to as the
"Research Team", which is defined in 1.10 below); and
WHEREAS, the Research Team has engaged in research, and plans to continue
research in their laboratories at the LICENSOR, toward the development of
certain Subject Technology (as hereinafter defined) in the Defined Field (as
hereinafter defined); and
WHEREAS, in the course of their research, Drs. Bolognesi, Matthews, and
Wild have invented certain technology (hereinafter referred to as the "Duke
Invention" and hereinafter defined), and LICENSOR owns all rights, title, and
interest in and to the Duke Invention, including related patents, patent
applications, and unpatented technology; and
WHEREAS, LICENSOR has the right to grant licenses to the Duke Invention and
to future inventions of the Subject Technology falling within the Defined Field,
and wishes to have those Inventions utilized in the public interest; and
WHEREAS, LICENSOR is willing to grant an exclusive license to LICENSEE to
the Subject Technology, including any future developments and improvements
thereto, by means of an irrevocable, fully paid, royalty-free, world-wide
license, in accordance with the terms hereof; and
WHEREAS, the LICENSEE is willing to offer as consideration for the subject
license 820,000 shares of the common stock (the "Common Stock") of LICENSEE.
NOW, THEREFORE, in consideration of the foregoing recitals, the covenants
and agreements set forth herein, and other good and
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valuable consideration including, but not limited to, the Common Stock of the
LICENSEE to be issued to the LICENSOR as hereinafter described, the full receipt
and sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:
ARTICLE 1 - DEFINITIONS
1.01. "Assistant" shall mean any employee, agent, assistant or staff member
of the Licensor under supervision of the Research Team. Each Assistant shall
execute a memorandum of this Agreement to acknowledge her or his consent to be
bound by the terms and conditions of this agreement relating to compensation
under 3.03 below.
1.02. "Defined Field" shall mean the biomedical field of research involving
the discovery, development and application of novel antiviral therapeutics;
provided, however, "Defined Field" shall include diagnostics only for LICENSEE's
internal research purposes and not for commercialization, and shall not include
prophylactic vaccines.
1.03. "Duke Invention" shall mean the invention entitled COMPOUNDS WHICH
INHIBIT HIV REPLICATION, Duke file 00799, for which an application for United
States Letters Patent was filed in the United States Patent and Trademark Office
on 20 July 1992 under Serial Number 07/916,540, invented by Carl T. Wild, Ph.D.,
Thomas J. Matthews, Ph.D., and Dani P. Bolognesi, Ph.D.
1.04. "Effective Date" shall mean the date of execution of this Agreement
1.05. "Future Technology" shall mean any Invention within the Defined Field
made, developed, discovered or disclosed, either solely or jointly, within seven
(7) years of the effective date of this agreement by any member or members of
the Research Team or any Assistant, and shall include any rights of the
University under any domestic or foreign patent applications with respect
thereto and any continuations, continuations-in-part and divisionals thereof,
and any domestic or foreign patents issuing with respect thereto, including any
substitutes or reissues thereof. The determination of whether an Invention is
within the Defined Field shall be made by LICENSOR within thirty (30) days of
disclosure of such invention. Written notice of such determination shall be
given by LICENSOR to LICENSEE within ten (10) days of such determination and if
LICENSEE does not agree with said determination, LICENSEE shall give written
notice of such disagreement to LICENSOR within ten (10) days of receipt of
notice of such determination. If the parties cannot agree as to the
determination within thirty (30) days of LICENSEE's notice of disagreement, then
LICENSEE may submit the issue to arbitration in accordance with the procedure
described herein. In each such
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instance, LICENSEE shall give written notice to LICENSOR that arbitration under
this provision is being invoked, and each party shall thereafter select one
individual as an arbitrator within 15 days of such notice. Each of the two
arbitrators selected by the parties shall select a third arbitrator and the
three arbitrators shall comprise the panel which shall decide the issue. All
proceedings under this provision shall be governed by the rules of the American
Arbitration Association; provided, however, in any event the proceedings shall
be completed and a decision rendered within one hundred and eighty (180) days
following the selection of the third arbitrator by the arbitrators selected by
LICENSOR and LICENSEE. All decisions rendered by arbitration under this
provision shall be final, binding on the parties, not subject to appeal in any
court of law or otherwise.
1.06. "Invention" shall mean any discovery, development, design,
improvement, formula, process, technique, program, know-how, data or other
information of any technical or commercial importance, whether or not patented
or patentable.
1.07. "Licensed Product" shall mean any product which is produced or sold
by LICENSEE that utilizes the Subject Technology.
1.08. "Net Sales" shall mean the gross sales of Licensed Products sold
pursuant to this Agreement, less allowances to customers for spoiled, damaged,
and returned goods, less quantity, trade, and cash discounts, and less
transportation costs, use and sales taxes, and value added taxes. Net Sales
shall include commissions paid to sales persons or agents and costs of
collections. Licensed Products used by LICENSEE for its own use in the Field
shall be considered to be "Net Sales" for purposes of computing royalty
obligations, except such Licensed Products used for non-revenue producing
activity such as promotional items or field trials.
1.09. "Subject Technology" shall mean the technology licensed hereunder,
including the Duke Invention and Future Technology.
1.10. "Research Team" shall mean the following researchers who are working
together at the Effective Date: Drs. Dani P. Bolognesi, Michael L. Greenberg,
Alphonse Langlois, Thomas J. Matthews, Kent J. Weinhold, and Carl T. Wild; and
shall also include other scientists who shall be added to the Research Team from
time to time by written notification of the addition by the LICENSOR to the
LICENSEE within thirty (30) days of such addition. Notice of the removal of a
member of the Research Team for any reason shall be given in writing by LICENSOR
to LICENSEE within thirty (30) days of such removal. Each member of the Research
Team shall execute a copy of this Agreement to acknowledge her or his consent to
be bound by the terms and
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conditions of this agreement.
ARTICLE 2 - LICENSE
2.01. LICENSOR hereby grants to the LICENSEE and LICENSEE hereby accepts
from LICENSOR, upon the terms and conditions herein specified, an exclusive
license to use and exploit the Subject Technology and to make, have made, use,
market, sell and otherwise distribute Licensed Products, with the right to
sub-license as provided in 2.02 below. Such license is worldwide to the full end
of the term or terms for which Patent Rights are issued, unless sooner
terminated as hereinafter provided.
2.02. To the extent of the License granted under this Agreement, LICENSEE
shall have the unrestricted right to sublicense to third parties (a) the Subject
Technology and (b) the right to make, have made, use, market, sell or distribute
Licensed Products during the term of this Agreement. Any such sublicenses shall
be subject to the terms of this Agreement and shall be no less favorable to the
LICENSOR than the license granted by this Agreement. LICENSEE will be
responsible for the performance hereunder by sublicensees, if any. Should
LICENSEE cancel the Agreement, LICENSEE agrees to assign all such sublicenses
directly to LICENSOR.
2.03. Within thirty (30) days following the execution of this Agreement and
thereafter during the period of this Agreement, LICENSOR agrees to provide
LICENSEE with copies of all technical know-how it may have or later obtain
relative to the Subject Technology, and copies of any and all patents or patent
applications owned or controlled by the LICENSOR covering the Subject Technology
or the use of the Subject Technology or processes for the manufacture of the
Subject Technology, including all Patent Office actions received and amendments
filed, if any, relative thereto.
2.04. LICENSEE shall not disclose any unpublished technology, know-how, and
data included within Subject Technology or Patent Rights and furnished by DUKE
pursuant to Article 2.03 above to third parties during the term of this
AGREEMENT or at any time thereafter; provided, however, that such disclosure may
be made at any time: (a) with the prior written consent of DUKE, or (b) after
the same shall have become public through no fault of LICENSEE.
2.05. LICENSEE agrees to diligently pursue the development of the Subject
Technology. This will include manufacturing or producing Licensed Products
utilizing the Subject Technology for testing, development, and sale, and also
seeking required governmental approvals of such Licensed Product. A copy of the
development plan for the Subject Technology is attached to and made a part of
this Agreement as Exhibit A.
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LICENSEE shall provide LICENSOR with copies of revisions of Exhibit A, and
copies of new development plans for the Subject Technology upon request.
ARTICLE 3 - CONSIDERATION
3.01 In consideration for the License granted pursuant to this Agreement,
the LICENSEE shall issue to the LICENSOR Eight Hundred and Twenty Thousand
(820,000) shares of Common Stock of the LICENSEE (collectively, the "Shares").
The issuance to the LICENSOR of the Shares as set forth above shall be in lieu
of any royalty for the License granted hereunder. Moreover, the LICENSOR
expressly acknowledges and agrees that the issuance by the LICENSEE of the
Shares to the LICENSOR shall be adequate and satisfactory consideration for the
License by the LICENSOR to the LICENSEE of any Future Technology during the term
hereof.
3.02. During the term of this Agreement, representatives of LICENSOR will
meet with representatives of LICENSEE at times and places mutually agreed upon
to discuss the progress and results, as well as ongoing plans, with respect to
the evaluation and development of Inventions licensed to LICENSEE. Provided,
however, that should LICENSOR's personnel agree to consult the LICENSEE outside
of Durham, North Carolina, LICENSEE will reimburse reasonable travel and living
expenses incident thereto.
3.03. The parties acknowledge that Assistants and other research personnel
and collaborators from other laboratories at the University and elsewhere may
have certain rights in Future Technology and that it may be appropriate to
compensate such personnel under applicable University policies for the transfer
of Future Technology to the LICENSEE made under this Agreement. If such a
compensation issue arises, the parties agree that they will provide such third
party with the option to receive either (a) an immediate cash payment from
LICENSEE of an amount agreed upon by the LICENSOR, LICENSEE, and the third party
to be compensated for all of the third party's rights in the Future Technology,
or (b) compensation to be paid by LICENSEE and based on future commercial sales
of any Licensed Products incorporating such Future Technology. If the third
party chooses the compensation option based on sales [(3.03(b) above], the third
party's compensation shall be based on a formula as if the LICENSOR were
entitled to receive from LICENSEE a royalty for LICENSEE's net sales of a
Licensed Product, and said formula shall be whatever share of the gross
royalties due to the LICENSOR to which that third party would be entitled under
the University's Policy on Inventions, Patents, and Technology Transfer assuming
that the University is receiving a royalty rate of 5% of Net Sales on any
Licensed Product.
ARTICLE 4 - PATENTS
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4.01. Subject to the terms set forth below, LICENSEE will be responsible,
at its own expense, for the filing and prosecution of applications for and
maintenance of the appropriate United States and foreign letters patent for the
Subject Technology. The LICENSOR shall have the right to review and approve
(which approval will not be unreasonably withheld) such patent applications. The
LICENSOR and the LICENSEE shall cooperate with each other in the prosecution of
such patent applications to ensure that any such patent applications reflect, to
the best of their knowledge, all items of commercial and technical interest and
importance to the prosecution thereof.
4.02. The LICENSEE shall provide the LICENSOR with at least sixty (60) days
notice of the foreign countries in which the LICENSEE intends to seek patent
protection for the Subject Technology. The LICENSOR may elect to seek patent
protection in countries not pursued by the LICENSEE, in which case the LICENSOR
shall be responsible for all expenses related to such patent filings. In such
instances, the LICENSEE shall forfeit its rights under this License Agreement as
to those countries.
4.03. LICENSEE shall give LICENSOR prompt notice of any claim or allegation
received by it that the manufacture, use, or sale of any Licensed Product
constitutes an infringement of a third party patent or patents. LICENSEE shall
have the primary right and responsibility, at its own expense, to defend and
control the defense of any such claim against LICENSEE, by counsel of its
choosing. The settlement of any such actions must be approved by LICENSOR, which
approval shall not be unreasonably withheld. LICENSOR agrees to cooperate with
LICENSEE in any reasonable manner deemed by LICENSEE to be necessary in
defending or prosecuting such action. LICENSEE shall reimburse LICENSOR for all
reasonable expenses incurred in providing such assistance. Notwithstanding the
foregoing, LICENSOR, in its sole discretion and at its own expense, shall be
entitled to participate through counsel of its own choosing in any such action.
4.04. In the event that any patent rights licensed to LICENSEE are
infringed by a third party, LICENSEE shall have the primary right, but not the
obligation, to institute, prosecute and control any action or proceeding with
respect to such infringement, by counsel of its choice, including any
declaratory judgment action arising from such infringement. Notwithstanding the
foregoing, LICENSOR, in its sole discretion and at its own expense, shall be
entitled to participate through counsel of its own choosing, in any such action;
In the event that LICENSEE fails to take appropriate action in this regard,
LICENSOR shall have the right to institute, prosecute and control any such
action or proceeding.
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ARTICLE 5 - GOVERNMENT CLEARANCE,
PUBLICATION, OTHER USE, EXPORT
5.01. LICENSEE agrees to use its best efforts to have the Subject
Technology cleared for marketing in those countries in which LICENSEE intends to
sell Licensed Products by the responsible government agencies requiring such
clearance. To accomplish such clearances at the earliest possible date, LICENSEE
agrees to file, according to the usual practice of LICENSEE, any necessary data
with such government agencies. Should LICENSEE cancel this Agreement, LICENSEE
agrees to assign its full interest and title in such market clearance
application, including all data relating thereto, to LICENSOR at no cost to
LICENSOR.
5.02. LICENSEE further agrees that the right of publication of Subject
Technology shall reside in the inventor. LICENSOR agrees to submit to LICENSEE
for its review, a copy of any proposed publication relating to the Subject
Technology at least sixty (60) days prior to the estimated date of publication,
and if no response is received within thirty (30) days of the date submitted to
LICENSEE, it will be conclusively presumed that the publication may proceed
without delay. If LICENSEE determines that the proposed publication contains
patentable subject matters which require protection, LICENSEE may require the
delay of the publication for a period of time not to exceed sixty (60) days for
the purpose of allowing the pursuit of such protection. LICENSEE shall also have
the right to publish and/or co-author any publication regarding the application
of the Subject Technology.
5.03. It is agreed that, notwithstanding any provisions herein, LICENSOR is
free to use the Subject Technology for its own education, teaching, research,
and clinical purposes without restriction and without payment of royalties or
other fees.
5.04. This Agreement is subject to all of the United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes, and other commodities and technology.
ARTICLE 6 - DURATION AND TERMINATION
6.01. This Agreement shall become effective upon the Effective Date, and
unless sooner terminated in accordance with any of the provisions herein, shall
remain in full force and effect for the life of the last-to-expire of the
patents included in the Patent Rights.
6.02. LICENSEE may terminate this Agreement by giving LICENSOR written
notice at least ninety (90) days prior to such
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termination, and thereupon terminate the manufacture, use, or sale of Licensed
Products covered by such patent application or patent.
6.03. Either party may immediately terminate this Agreement for fraud,
willful misconduct, or illegal conduct of the other party upon written notice of
same to that other party. Except as provided above, if either party fails to
fulfill any of its obligations under this Agreement, the non-breaching party may
terminate this Agreement, upon written notice to the breaching party, as
provided below ("Notice"). Such Notice must contain a full description of the
event or occurrence constituting a breach of the Agreement. The party receiving
Notice will have the opportunity to cure that breach within sixty (60) days of
receipt of Notice. If the breach is not cured within that time, the termination
will be effective as of the sixty-first (61st) day following receipt of Notice.
A party's ability to cure a breach will apply only to the first two breaches
properly noticed under the terms of this Agreement, regardless of the nature of
those breaches. Any subsequent breach by that party will entitle the other party
to terminate this Agreement upon proper Notice.
6.04. Upon the termination of this Agreement, LICENSEE may notify LICENSOR
of the amount of Licensed Products that LICENSEE has on hand and LICENSEE shall
then have a license to sell only that amount of Licensed Products.
6.05. If during the term of this Agreement, LICENSEE shall become bankrupt
or insolvent or if the business of LICENSEE shall be placed in the hands of a
receiver or trustee, whether by the voluntary act of LICENSEE or otherwise, or
if LICENSEE shall cease to exists as an active business this Agreement shall
immediately terminate.
ARTICLE 7 - GOVERNING LAW
7.01. This Agreement shall be construed as having been entered into in the
State of North Carolina and shall be interpreted in accordance with and its
performance governed by the laws of the State of North Carolina.
ARTICLE 8 - NON-ASSIGNABILITY
8.01. This Agreement shall be binding upon and inure to the benefit of the
respective successors and assigns of the parties hereto. However, LICENSEE may
not assign its rights in this Agreement without approval of LICENSOR, such
approval not to be unreasonably withheld.
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ARTICLE 9 - NOTICES
9.01. It shall be a sufficient giving of any notice, request, report,
statement, disclosure or other communication hereunder, if the party giving the
same shall deposit a copy thereof in the Post Office in certified mail, postage
prepaid, addressed to the other party at its address hereinafter set forth or at
such other address as the other party shall have theretofore in writing
designated:
LICENSOR
Robert Taber, Director
Office of Science and Technology
M-103B Davison Building
Duke University
Durham. North Carolina 27708
cc: Office of the University Counsel
011 Allen Building
Duke University
Durham, North Carolina 27706
LICENSEE
SL-1 PHARMACEUTICALS, INC.
C/O Mr. Fred D. Hutchison, Attorney
Petree Stockton & Robinson
4101 Lake Boone Trail, Suite 400
PO Box 300004
Raleigh, NC 27622
9.02. The date of giving any such notice, request, report, statement,
disclosure or other communications shall be the U.S. postmark of such envelope
if marked or actual date of receipt if delivered otherwise.
ARTICLE 10 - INDEMNITY, INSURANCE, REPRESENTATIONS, STATUS
10.01. LICENSEE agrees to indemnify, hold harmless, and defend LICENSOR,
its trustees, officers, employees, agents, and the Research Team, against any
and all claims, suits, losses, damages, costs, fees, and expenses, including
attorneys fees, resulting from or arising out of the exercise of this license.
LICENSEE shall not be responsible for the negligence or intentional wrongdoing
of LICENSOR.
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10.02. LICENSEE shall maintain in force at its sole cost and expense with
reputable insurance companies, general liability insurance and products
liability insurance coverage in an amount reasonably sufficient to protect
against liability under Article 10.01 above. LICENSOR shall have the right to
ascertain from time to time that such coverage exists, such right to be
exercised in a reasonable manner. In lieu of said coverage, LICENSOR agrees to
consider the existence of an adequate self-insurance program as an acceptable
alternative.
10.03. Nothing in this Agreement shall be deemed to be a representation or
warranty by LICENSOR of the validity of any of the patents or the accuracy,
safety, efficacy, or usefulness for any purpose, of any Subject Technology.
LICENSOR shall have no obligation, express or implied, to supervise, monitor,
review, or otherwise assume responsibility for the production, manufacture,
testing, marketing, or sale of any Licensed Product, and LICENSOR shall have no
liability whatsoever to LICENSEE or any third parties for or on account of any
injury, loss, or damage, of any kind or nature, sustained by, or any damage
assessed or asserted against, or any other liability incurred by or imposed upon
LICENSEE or any other person or entity, arising out of or in connection with or
resulting from: (a) the production, use, or sale of any Licensed Product; (b)
the use of any Subject Technology; or (c) any advertising or other promotional
activities with respect to any of the foregoing.
10.04. Neither party hereto is an agent of the other party for any purpose
whatsoever.
ARTICLE 11 - USE OF A PARTY'S NAME
11.01. Neither party will, without the prior written consent of the other
party: (a) use in advertising, publicity, or otherwise, any trade-name,
trademark, trade device, service mark, symbol, or any abbreviation contraction,
or simulation thereof owned by the other party; (b) other than members of the
Research Team (provided that they have consented in writing to such use), use
the name of any employee or agent of the other party in any publication,
publicity, advertising or otherwise; or (c) represent, either directly or
indirectly, that any product or service of the other party is a product or
service of the representing party or that it is made in accordance with or
utilizes the information of the other party.
ARTICLE 12 - SEVERANCE
12.01. Each clause of this Agreement is a distinct and
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severable clause and if any clause is deemed illegal, void, or unenforceable,
the validity, legality, or enforceability of any other clause or portion of this
Agreement will not be affected thereby.
ARTICLE 13 - ENTIRE AGREEMENT
13.01. This Agreement, including any schedules or other attachments which
are incorporated herein by reference, contains the entire agreement between the
parties as to its subject matter. This Agreement merges all prior discussions
between the parties and neither party shall be bound by conditions, definitions,
warranties, understandings, or representations concerning such subject matter
except as provided in this Agreement as or as may be specified later in writing
and signed by the properly authorized representatives of the parties. This
Agreement can be modified or amended only by written agreement duly signed by
persons authorized to sign agreements on behalf of the parties.
ARTICLE 14 - WAIVER
14.01. The failure of a party in any instance to insist upon the strict
performance of the terms of this Agreement shall not be construed to be a waiver
or relinquishment of any of the terms of this Agreement, either at the time of
the party's failure to insist upon strict performance or at any time in the
future, and such term or terms shall continue in full force and effect.
ARTICLE 15 - TITLES
15.01. All titles and article headings contained in this Agreement are
inserted only as a matter of convenience and reference. They do not define,
limit, extend, or describe the scope of this Agreement or the intent of any of
its provisions.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the
dates set forth below.
LICENSOR
DUKE UNIVERSITY
By: /s/ Robert Taber
-----------------------------------------------
Title: Director, Office of Science and Technology
-------------------------------------------
Date: 2/5/93
--------------------------------------------
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ATTEST:
By: /s/ Signature Illegible
----------------------------
Assistant Secretary [SEAL]
LICENSEE
SL-1 PHARMACEUTICALS, INC.
By: /s/ Signature Illegible
-----------------------------------
Title: Vice President
---------------------------------
Date: Feb 3, 1993
---------------------------------
ATTEST:
By: /s/ Signature Illegible
----------------------------
Secretary [SEAL]
MEMBERS OF THE RESEARCH TEAM:
/s/ DANI P. BOLOGNESI
----------------------------------
DANI P. BOLOGNESI, Ph.D.
/s/ MICHAEL L. GREENBERG
----------------------------------
MICHAEL L. GREENBERG, Ph.D.
/s/ ALPHONSE LANGLOIS
----------------------------------
ALPHONSE LANGLOIS, Ph.D.
/s/ THOMAS J. MATTHEWS
----------------------------------
THOMAS J. MATTHEWS, Ph.D.
/s/ KENT J. WEINHOLD
----------------------------------
KENT J. WEINHOLD, Ph.D.
/s/ CARL T. WILD
----------------------------------
CARL T. WILD, Ph.D.
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