EX-4.8 10 d250851dex48.htm COLLABORATIVE RESEARCH AGREEMENT

1.

DEFINITIONS AND INTERPRETATION

2.

SERVICES

3.

STUDENTS

4.

COLLABORATOR DUTIES AND MATERIALS

5.

PAYMENT

6.

INTELLECTUAL PROPERTY RIGHTS

7.

OPTION TO COMMERCIAL LICENCE

8.

PROSECUTION AND MAINTENANCE OF PATENTS

9.

CONFIDENTIAL INFORMATION

10.

PUBLICATIONS

11.

PRIVACY

12.

LIABILITY AND INDEMNITY

13.

TERM AND TERMINATION

14.

FORCE MAJEURE

15.

DISPUTE RESOLUTION

16.

GENERAL

NewSouth Innovations Pty Limited ABN 25 000 263 025 (NSi)

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Contact:           Chief Executive Officer

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Prima Biomed Limited ACN 009 237 889 (Collaborator)

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Contact:          ▇▇▇▇▇▇ ▇▇▇▇▇▇, Executive Director

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NSi is the commercial entity of UNSW responsible for entering into arrangements relating to the commercialisation of Intellectual Property developed at UNSW, including collaborative research involving such Intellectual Property.

The Collaborator wishes to engage NSi to undertake certain research services and the parties wish to enter into a Commercial Licence.

The Collaborator and UNSW have also applied for an ARC Linkage Grant to conduct research under an ARC Linkage Agreement to further develop the NSi Background IP.

NSi agrees to conduct the Project and the ARC Project, the Collaborator agrees to pay the Fees, and the parties agree to accept certain other rights and obligations on the terms and conditions of this Agreement.

DEFINITIONS AND INTERPRETATION

Definitions

is now in the public domain, or enters the public domain after the Commencement Date, through no fault of the recipient;

can be shown by contemporaneous records of the recipient to have been known to the recipient at the time it is received pursuant to this Agreement;

is provided to the recipient by a third party after the Commencement Date, lawfully and without violating any restriction on its disclosure; or

can be shown by contemporaneous records of the recipient to have been independently developed by the recipient without reference to the Confidential Information of the other party.

the ability to cast or control the casting of more than 50% of the maximum number of votes that might be cast at any general meeting (or equivalent) of an entity;

the holding of more than 50% of the issued ordinary share capital, the equity, or other ownership interest, in the entity, or the holding of the maximum ownership interest permitted in the country where the entity exists; or

the ability of a person or persons to direct, or share equally in the direction of, the composition of the board of directors (or equivalent) of the entity, or to manage the entity pursuant to an agreement.

the patents and patent applications, if any, described in the Schedule;

all patent applications that may be filed by or on behalf of NSi which are based on, claim priority from, are divided from or are continuations of any patent application, if any, described in the Schedule or arising from the Project; and

all patents which may be granted pursuant to any of the patent applications referred to in paragraphs (a) or (b).

the committee formed in accordance with the terms of reference for the Human Research Ethics Committee; or

the committee formed in accordance with the terms of reference for the Animal Care and Ethics Committee,

Interpretation

headings are for convenience only and do not affect interpretation;

the singular includes the plural and conversely, and a gender includes all genders;

a reference to a clause, schedule or annexure is a reference to a clause of or schedule or annexure to this Agreement and references to this Agreement include any background recital, schedule and annexure;

a reference to a thing (including a right) includes a reference to a part of that thing;

a reference to a document includes the document as modified from time to time and any document replacing it;

the word “person” includes a natural person and any body or entity whether incorporated or not;

a reference to “written” or “in writing” includes any communication sent by letter, email or facsimile transmission;

a reference to any statute, proclamation, rule, regulation or ordinance includes any amendment, consolidation, modification, re-enactment or reprint of it and any statute, proclamation, rule, regulation or ordinance replacing it. A reference to a specified section, clause, paragraph, schedule or item of any statue, proclamation, rule, regulation or ordinance means a reference to the equivalent section of the statue, proclamation, rule, regulation or ordinance which is for the time being in force;

a reference to law includes laws, acts, ordinances, rules, regulations, other delegated legislation, codes and the requirements and directions of any relevant government or quasi-government department, body or authority in force from time to time (including any stock exchange);

wherever “include” or any form of that word is used it must be construed as it were followed by “(without limitation)”;

a reference to any agency or body, if that agency or body ceases to exist or is reconstituted, renamed or replaced or has its powers or functions removed (defunct body), means the agency or body which performs most closely the functions of the defunct body; and

money amounts are stated in the lawful currency of Australia unless otherwise specified.

SERVICES

Supply of Services by NSi

Use of contractors

Key personnel

Reporting

At least [ * ] prior to the end of each [ * ] during the Term the parties must consult with each other with a view to agreeing on an updated Research Plan for the following [ * ]. If the parties fail to agree on an updated Research Plan for any [ * ] prior to the end of the [ * ] then the current Research Plan will remain in place for the following [ * ].

During the Term NSi must provide to the Collaborator a written report setting out progress of the Services in relation to the Research Plan at least [ * ], which must include details of any Project IP developed since the last report (“Progress Report”).

Access

Uncertain nature of research

STUDENTS

Student involvement

Completion of higher degree

The parties acknowledge and agree that nothing contained in this Agreement will prevent a Student involved in the Project from meeting the requirements of a higher degree.

Despite any other provision of this Agreement, the Collaborator acknowledges and agrees that all or part of the results of the Project may be included in a Student Thesis which will be made publicly available after the award of a higher degree to the relevant Student. Any such publication of a Student Thesis will be in accordance with UNSW Policy, which contemplates certain restrictions on publication relating to confidential information and protection of Intellectual Property [ * ].

NSi must ensure that any external examiner appointed to examine a Student Thesis is bound by written obligations of confidentiality with respect to the information contained in the Student Thesis on terms consistent with this Agreement.

If this Agreement is terminated prior the Completion Date for any reason and a Student’s participation in the Project forms part of the Student’s work for a higher degree, the Collaborator grants to NSi a non-exclusive, non-transferable, royalty-free licence, including the right to sublicense to UNSW and UNSW Personnel (including the Student), to use such of the Collaborator’s Background IP as is necessary for the Student to complete the higher degree

(including completion and examination of his or her Student Thesis for such higher degree in accordance with this clause 3.2).

COLLABORATOR DUTIES AND MATERIALS

Collaborator to perform Collaborator Duties and provide Collaborator Materials

Nature of Collaborator Materials

the Collaborator is entitled to supply the Collaborator Materials to NSi and its contractors for the purposes of the Project;

the use of the Collaborator Materials by NSi or its contractors in the course of the Project is lawful, does not require the consent, permission or authorisation of any person and will not infringe the rights (including Intellectual Property rights) of any person;

if the Project includes the use, reproduction or adaptation of any Collaborator Materials, the Collaborator has obtained and grants to NSi and its contractors all necessary authorities for such use, reproduction or adaptation;

all information provided by or on behalf of the Collaborator in relation to the Collaborator Materials is accurate, complete and up to date; and

unless expressly specified by written notice to NSi, the Collaborator Materials are not reasonably capable of constituting a threat to safety, health, life, property or the environment and the Collaborator has given written notice to NSi prior to supplying any Collaborator Materials to NSi or its contractors of any matters affecting the safe, secure and appropriate transportation, use, storage and disposal of the Collaborator Materials.

No liability if Collaborator Duties not fulfilled

a breach by the Collaborator of any provision contained in this Agreement; or

a failure or delay by the Collaborator to provide the Collaborator Materials (if any).and timely access to information and decisions.

Adjustment of Fees

PAYMENT

Payment of Fees

Expenses

Invoices

Overdue payments

Taxes

Unless otherwise stated in the Schedule, all Fees, expenses and other amounts payable by the Collaborator under this Agreement are exclusive of GST, withholding tax and any other applicable taxes, duties, imposts and other similar charges payable in respect of the Services (Taxes).

If Taxes are payable on any supply made by NSi under this Agreement, the Collaborator must pay to NSi an additional amount equivalent to the Taxes at the time that payment to NSi is due. NSi will provide a tax invoice to the Collaborator.

INTELLECTUAL PROPERTY RIGHTS

Ownership of Background IP

Licence of Background IP

Ownership of Project IP

Assistance

No challenge

The Collaborator must not directly or indirectly engage in any conduct which may endanger the capacity of any Project IP or ARC Project IP owned by NSi to be protected or challenge its ownership or validity.

The Collaborator agrees clause 6.3 and 7.3 set out its entire rights in respect of ARC Project IP.

OPTION TO COMMERCIAL LICENCE

Option to Commercial Licence

Exercise of option for Project IP

The Collaborator may exercise the Option in respect of the Project IP at any time during the Term or on or before the date six months after the Completion Date (“Option Period”) by:

giving written notice to NSi;

providing the names of [ * ] Applications;

Upon NSi’s receipt of the Collaborator’s written notice, and the Application names in accordance with clause 7.2(a), NSi will:

update the Commercial Licence Schedule to reflect the Application names and the details of the Licensed IP,

provide the Collaborator with two originals of the Commercial Licence duly executed by NSi.

Option for ARC Project IP Applications

where the Option Period under clause 7.2 has not expired and the Collaborator has not exercised that Option, that the Collaborator may nominate any Application arising out of the ARC Project IP as [ * ] Applications under clause 7.2 (a)(ii);

where the Option under clause 7.2 has been exercised, provided the Collaborator is not in breach of any of the terms of the ARC Linkage Agreement, that the Collaborator may substitute any Application arising out of the ARC Project IP in accordance with the provisions of the Commercial Licence.

PROSECUTION AND MAINTENANCE OF PATENTS

Prosecution and Maintenance

prosecute all Patents and other applications for statutory protection of the Project IP; and

maintain all Patents and other rights granted on those applications.

Assistance in Prosecution

NSi and the Collaborator must render all reasonable non-monetary assistance to each other in relation to the prosecution and maintenance of the Patents.

At the Collaborator’s written request, NSi will advise the Collaborator about the current status of the Patents.

Costs of Patents

Subject to clause 8.3(b), the Collaborator must pay or reimburse NSi (at NSi’s option) all Patent Costs incurred by or on behalf of NSi in any country in the Territory approved by the Collaborator in writing.

The Collaborator is only required to pay or reimburse NSi (at NSi’s option) [ * ] of all Patent Costs incurred by or on behalf of NSi for any licensed NSi Background IP [ * ].

The Collaborator must give to NSi at least [ * ] written notice if it does not wish to continue payment of Patent Costs with respect to any Patents in any country in the Territory, in which case NSi may, at its sole discretion:

cease prosecution of that Patent or allow it to lapse in that country; or

prosecute or maintain such Licensed IP in that country at its own cost, and

From the date the Licensee’s notice under clause 8.3(c) becomes effective the option to any licence(s) under this Agreement for the relevant Licensed IP in that country will terminate and the Licensee will have no obligation to pay any Registration Costs incurred after that date in respect of such Licensed IP in that country under clause 8.3(a).

CONFIDENTIAL INFORMATION

Permitted use

Obligations of confidentiality

not use, and ensure that its employees, officers and agents (and in the case of NSi, UNSW, UNSW Personnel, Students and contractors) do not use, any Confidential Information of the other party for any purpose other than compliance with its obligations under this Agreement;

take all action necessary to maintain the confidential nature of the Confidential Information of the other party, including keeping all records of that Confidential Information under lock and key or password protection;

not disclose any of the Confidential Information of the other party to any person other than those of its employees (and in the case of NSi, UNSW, UNSW Personnel, Students and contractors) who need to have access to that Confidential Information for the purpose of performing the Services in accordance with this Agreement, who are aware of the requirements of this Agreement, and who are bound by an enforceable obligation of confidentiality; and

destroy all documents and other materials in whatever form in its possession, power or control which contain or refer to any Confidential Information of the other party, on the earlier of expiry or termination of this Agreement, demand by the other party or the time they are no longer required for the purpose of performing the Services in accordance with this Agreement.

Disclosure required by law

Acknowledgement

No restriction

PUBLICATIONS

Publication of Papers

the party must provide to the other party a copy of the proposed Paper at least [ * ] prior to the proposed date of publication (or submission for publication where applicable);

the other party may within [ * ] of receipt of a proposed Paper reasonably object to or request a delay of the publication of the Paper in whole or in part providing reasons, in which case the party must not publish, or must delay the publication of, the Paper (as applicable). If the other party fails to object or request a delay within this period, the other party will be deemed to have consented to the publication of the Paper; and

a party must not unreasonably withhold its consent to the publication of a Paper, provided that it may withhold consent if it reasonably believes the publication will adversely affect the protection or commercialisation of any Background IP or Project IP owned by it.

Acknowledgements

Press releases

PRIVACY

LIABILITY AND INDEMNITY

Prescribed terms

Subject to any terms, conditions and warranties which the law expressly provides may not be excluded, restricted or modified, or may be excluded, restricted or modified only to a limited extent (Prescribed Terms), all conditions, warranties, terms and obligations expressed or implied by law or otherwise relating to the performance of a party’s obligations, or any goods or services supplied or to be supplied by a party, under this Agreement are excluded.

To the extent permitted by law, the liability of a party for a breach of a Prescribed Term implied into this Agreement is limited, at that party’s option, to the repair or replacement of the goods, the cost of repairing or replacing the goods, the re-supply of the services or the payment of the cost of re-supplying the services.

Consequential loss

Indemnity

a breach of any provision of this Agreement by the Indemnifying Party; or

any negligent act or omission or wilful misconduct of the Indemnifying Party or its officers, employees, consultants or agents,

Insurance

Cap on liability

Notwithstanding any other provisions of this Agreement, to the extent permitted by law the total aggregate liability of NSi arising out of or in connection with the Services, the Project, the Project IP or this Agreement, whether based upon breach of contract, under common law, statute, tort (including negligence) or otherwise, will not exceed the amount of Fees received by NSi from the Collaborator under this Agreement.

Representations

TERM AND TERMINATION

Term

Unless otherwise agreed by the parties in writing, this Agreement commences on the Commencement Date and continues in force until the Completion Date unless it is terminated earlier in accordance with its terms.

The parties acknowledge that further development of the Project IP may be required following the Completion Date (“Further Work”) and agree that the work will be undertaken:

by the parties agreeing in writing to amend the Schedule;

under the same terms and conditions as this Agreement except for clause 7; and

provided the Collaborator is not in breach (other than a trivial breach causing no material harm) of any of the terms of the Agreement, the Collaborator may substitute any Application arising out of the Further Work under the provisions of clause 13 of the Commercial Licence.

Termination

the other party commits a breach (other than a trivial breach causing no material harm) of any provision of this Agreement and, where the breach is capable of remedy, fails to remedy the breach within [ * ] of receiving written notice to do so; or

the other party becomes insolvent, enters into liquidation or receivership, becomes subject to any form of external administration, makes a composition or arrangement with its creditors generally, or takes advantage of any statute for the relief of insolvent debtors.

Consequences of termination

all Fees paid remain the property of NSi; and

the Collaborator must immediately pay to NSi all Fees accrued or due but unpaid, and all amounts incurred or committed to by or on behalf of NSi with respect to the Project, as at the date of such termination or expiry without recourse, discount, set-off or reimbursement of any kind.

Survival

Clauses 2.6, 3.2, 4.2, 6, 7, 8, 9, 10, 12, 13.3 and 15 survive the expiry or termination of this Agreement for any reason.

FORCE MAJEURE

DISPUTE RESOLUTION

No proceedings

Dispute resolution

A party claiming that a Dispute has arisen must give written notice to the other party giving details of the Dispute (Notification).

Within [ * ] (or any longer period agreed by the parties) of receipt by the other party of a Notification, the Chief Executive Officers (or equivalent) of each party must personally or through a nominee attempt in good faith to resolve the Dispute, failing which the parties must seek to agree on an alternative dispute resolution technique to resolve the Dispute.

If the parties fail to agree on the dispute resolution technique to be used within a further [ * ] (or any longer period agreed by the parties), the Dispute will be referred to mediation by, and in accordance with the rules of, the Australian Commercial Disputes Centre Limited. The mediation will be conducted in Sydney in the English language.

The parties must continue to perform their respective obligations under this Agreement pending the resolution of a Dispute.

Each party must bear its own costs of complying with this clause 15.

GENERAL

This Agreement contains the entire agreement between the parties as to its subject matter and may only be amended in writing signed by all parties.

Notices must be given to the parties’ addresses set out at the front of this Agreement or as otherwise notified by the parties in writing and must be delivered in person or sent by email, fax or prepaid post (airmail if international). Notices will be deemed to have been received:

if delivered in person, on the date of delivery;

if sent by email, on receipt by the sender of an acknowledgment indicating that the mail item was read by the recipient;

if sent by fax, on production of a transmission report from the sender’s fax machine evidencing that the fax was successfully sent in its entirety; or

if sent by prepaid post, 3 business days after posting (7 business days if sent to or from a place outside of Australia).

A party must not assign any of its rights or obligations under this Agreement without the other party’s prior written consent.

No delay or indulgence by a party in enforcing this Agreement will prejudice or restrict the rights of that party, nor will a waiver of those rights operate as a waiver of a subsequent breach.

No part of this Agreement is to be construed to the disadvantage of a party because that party was responsible for its preparation.

Nothing in this Agreement may be construed as creating a relationship of partnership, joint venture employment, principal and agent or trustee and beneficiary.

A party, at the request of another party, must do all things and sign all documents necessary to give effect to this Agreement.

If any provision of this Agreement is or becomes invalid or unenforceable then, if the provision can be read down to make it valid and enforceable without materially changing its effect, it must be read down, and otherwise the offending provision must be severed and the remaining provisions will operate as if the provision had not been included.

This Agreement is governed by the laws of New South Wales, Australia, and the parties submit to the non-exclusive jurisdiction of the courts of that State.

Each signatory to this Agreement warrants that he or she has authority to bind the party that he or she is stated to represent.

This Agreement may be executed in any number of counterparts all of which taken together will constitute one agreement.

Commencement Date

Completion Date

Services

As specified in the Research Plan

NB: The Services are activities, not guaranteed outcomes

Project Director

Other Key Personnel

(UNSW)

Collaborator Personnel

Description

1         [ * ]

NSi and Collaborator may review and update Research Budget from time to time

Fees are payable as follows:

All rates are exclusive of GST. NSi may review and update time and materials rates (if any) for a calendar year from time to time by giving at least [ * ] written notice prior to the beginning of the relevant calendar quarter.

NSi will invoice the Collaborator for the Fees in advance at the start of each calendar quarter.

AUD$ [ * ]

Background IP

To be inserted during the course of the CRA by mutual agreement between the parties

1.

[ * ]

1.

[ * ]

2.

3.

Insurance

Each party must during the Term at its cost take out and maintain all necessary or prudent insurances in relation to this Agreement, including the insurances specified in the Schedule (if any). Each party must on request by the other party provide written evidence of such insurances, including certificates of currency from the insurer

Territory

Worldwide

Signed for an on behalf of

NEWSOUTH INNOVATIONS PTY LIMITED

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Print Name

17/12/2009

Date

Signed for an on behalf of

Prima Biomed Limited

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Print Name

17-12-2009

Date

Deliverables

Description:

Estimated Date:

Collaborator Duties

NewSouth Innovations Pty Limited ABN 25 000 263 025 (NSi)

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Contact:        Chief Executive Officer

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Prima Biomed Limited ACN 009 237 889 (Licensee)

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Contact:        ▇▇▇▇▇▇ ▇▇▇▇▇▇, Executive Director

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NSi is the owner of or otherwise authorised to use certain Intellectual Property.

The Licensee’s principal activities include research and commercialisation of licensed medical biotechnology. It has engaged NSi to undertake certain collaborative research to develop formulations for a number of Applications of NSi’s sub-critical water and dense gas technology for controlled polymer nanoarchitecture vaccine delivery formulations.

The Licensee wishes to be granted licences to Exploit those formulations within the Territory.

NSi agrees to grant to the Licensee, and the Licensee agrees to accept, a licence to Exploit the Licensed IP, and the parties agree to accept certain other rights and obligations, on the terms and conditions of this Agreement.

DEFINITIONS AND INTERPRETATION

Definitions

is now in the public domain, or enters the public domain after the Commencement Date, through no fault of the recipient;

can be shown by contemporaneous records of the recipient to have been known to the recipient at the time it is received pursuant to this Agreement;

is provided to the recipient by a third party after the Commencement Date, lawfully and without violating any restriction on its disclosure; or

can be shown by contemporaneous records of the recipient to have been independently developed by the recipient without reference to the Confidential Information of the other party.

the ability to cast or control the casting of more than 50% of the maximum number of votes that might be cast at any general meeting (or equivalent) of an entity;

the holding of more than 50% of the issued ordinary share capital, the equity, or other ownership interest, in the entity, or if a holding of more than 50% is not permitted in the

country where the entity exists, the holding of the maximum ownership interest permitted in the country where the entity exists; or

the ability of a person or persons to direct, or share equally in the direction of, the composition of the board of directors (or equivalent) of the entity, or to manage the entity pursuant to an agreement.

in relation to an Intellectual Property right, the exercise of all the rights exclusively granted to the holder of such Intellectual Property rights by the laws of the jurisdiction in which the Intellectual Property right subsists, including where permitted under this Agreement the right to sub-license those rights;

in relation to a product, kit, apparatus, substance, documentation or information resource (or any part of such materials), to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of it; and

in relation to a method or process, to use the method or process or to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of a product, kit or apparatus the use of which is proposed or intended to involve the exercise of the method or process,

is unable to pay its debts as they fall due;

makes or commences negotiations with a view to making, a general re-scheduling of its indebtedness or a general assignment, scheme of arrangement or composition with its creditors;

takes any corporate action or any steps are taken or legal proceedings are started for:

its winding-up, dissolution, liquidation, or re-organisation, other than to reconstruct or amalgamate while solvent on terms approved by the other party (which approval will not be unreasonably withheld); or

the appointment of a controller, receiver, administrator, official manager, trustee or similar officer of it or of any of its revenues and assets; or

seeks or is granted protection from its creditors, under any applicable legislation.

the Patents;

Project IP

the Other Statutory Rights; and

the Background IP.

the patents and patent applications described in the Schedule;

all patent applications that may be filed by or on behalf of NSi which are based on, claim priority from, are divided from or are continuations of any patent application described in the Schedule;

all patents which may be granted pursuant to any of the patent applications referred to in paragraphs (a) or (b); and

Interpretation

headings are for convenience only and do not affect interpretation;

the singular includes the plural and conversely, and a gender includes all genders;

a reference to a clause, schedule or annexure is a reference to a clause of or schedule or annexure to this Agreement and references to this Agreement include any background recital, schedule and annexure;

a reference to a thing (including a right) includes a reference to a part of that thing;

a reference to a document includes the document as modified from time to time and any document replacing it;

the word “person” includes a natural person and any body or entity whether incorporated or not;

a reference to “written” or “in writing” includes any communication sent by letter, [email] or facsimile transmission;

a reference to any statute, proclamation, rule, regulation or ordinance includes any amendment, consolidation, modification, re-enactment or reprint of it and any statute, proclamation, rule, regulation or ordinance replacing it. A reference to a specified section, clause, paragraph, schedule or item of any statue, proclamation, rule, regulation or

ordinance means a reference to the equivalent section of the statue, proclamation, rule, regulation or ordinance which is for the time being in force;

a reference to law includes laws, acts, ordinances, rules, regulations, other delegated legislation, codes and the requirements and directions of any relevant government or quasi-government department, body or authority in force from time to time (including any stock exchange);

wherever “include” or any form of that word is used it must be construed as it were followed by “(without limitation)”;

a reference to any agency or body, if that agency or body ceases to exist or is reconstituted, renamed or replaced or has its powers or functions removed (defunct body), means the agency or body which performs most closely the functions of the defunct body; and

money amounts are stated in the lawful currency of Australia unless otherwise specified.

LICENCE

Grant of licence

separate exclusive, non-transferable licences:

under the Patents;

the Project IP;

under the Other Statutory Rights; and

[ * ]

Transfer of rights

Licensee’s acknowledgments

this Agreement does not confer and the Licensee does not acquire any right, title or interest in the Licensed IP other than as expressly set out in-this Agreement;

as between the parties, NSi is the owner of the Licensed IP;

to the extent permitted by law, the Licensee may not Exploit the Licensed IP or any Products outside the Territory or the Field or knowingly supply any Products to any person for resupply outside the Territory or the Field; and

subject to clause 4, NSi reserves all rights in and to the Licensed IP outside and within the Field and may Exploit or license others to Exploit the Licensed IP and the Products outside and within the Field as it sees fit, except in relation to the Applications licensed under this Agreement.

Disclosure of the Licensed IP and technical assistance

Following the Commencement Date, to the extent it has not already done so, NSi must disclose to the Licensee details of the Licensed IP.

NSi may, subject to payment in accordance with its usual consulting rates and on its standard consulting terms and conditions from time to time, provide the Licensee with technical assistance and consultancy services reasonably requested by the Licensee in relation to the Exploitation of the Licensed IP and the Products.

Research by UNSW

SUB-LICENCES

Sub-licences

to its Affiliates without the consent of NSi, provided that the Licensee must provide to NSi a copy of any agreement effecting any such sub-licence within [ * ] of its execution; and

to third parties without the consent of NSi, where such third party [ * ]. The licensee must provide to NSi a copy of any agreement effecting any such sub-licence within [ * ] of its execution; and

to any other third parties only with prior written consent of NSi, which consent may be granted, whether or not subject to conditions, or withheld provided in all the circumstances NSi consent will not be unreasonably withheld. The Licensee must provide to NSi a copy of any proposed agreement effecting any such sub-licence at least [ * ] prior to its proposed or planned execution.

Conditions of Sub-licences

provide that the sub-licence and the rights granted under it are personal to the Sub-licensee and the Sub-licensee must not at any time assign, transfer or in any way charge, mortgage or deal with any of its rights or obligations under the sub-licence without NSi’s prior written consent;

provide in a form reasonably required by NSi that the Sub-licensee releases NSi and UNSW from, and indemnifies NSi and UNSW against, all costs and liability in connection with the sub-licence and the Sub-licensee’s exercise of rights under it, including indirect and consequential loss, liability for breach of contract, under statute, common law, tort (including negligence) or otherwise to the extent permitted by law;

contain obligations of confidentiality in respect of NSi’s Confidential Information, and the right of NSi to inspect the Sub-licensee’s premises and records, in a form substantially similar to those contained in this Agreement;

not otherwise grant rights which are inconsistent with the rights and obligations of the Licensee under this Agreement;

terminate where the Sub-licensee ceases to be an Affiliate of Licensee, unless NSi has given its prior written consent to the continuation of the relevant sub-licence;

if the licence of any right in respect of the Licensed IP is terminated under this Agreement, terminate to a corresponding extent; and

terminate on the termination or expiry of this Agreement, except where this Agreement is terminated under clauses 19.3(d) or 19.3(e) in which case the sub-licence must provide for the novation of the rights and obligations of Licensee under the sub-licence to NSi at NSi’s absolute discretion. For the purpose of any such novation, the Licensee hereby appoints NSi as its attorney to do all things and execute all documents necessary or desirable to perfect such novation of the sub-licence agreement on behalf of the Licensee.

Licensee responsible for Sub-licensees

Licensee to procure compliance by sub-licensees

EXPLOITATION BY NSI

Royalties

Late payment

calculated daily from the due date of payment to the date payment is received by the Licensee in full; and

at an interest rate of [ * ] the rate quoted on the due date of payment (and if no rate was quoted on that day, the day on which it is next quoted) for business overdrafts over AUD$100,000 by the Licensee’s principal Australian bank.

Payments

Payment of NSi Royalty is to be made by NSi to the Licensee in Australian currency and is to be made by bank draft made payable to the Licensee or, at the Licensee’s option, direct deposit into the account notified by the Licensee in writing.

Where conversion from foreign currency is required, the conversion is to be made at the average day’s buying rate of NSi’s principal bank prevailing two days before the remittance of the payment.

Royalty statement

the number of Products manufactured by NSi and its Affiliates and additional licensees;

the number of Products supplied by NSi and its Affiliates and additional licensees;

the total amounts invoiced in respect of Products by NSi and its Affiliates and additional licensees

the total Net Revenue amounts in respect of Products;

the manner in which the NSi Royalty was calculated, including details of any deductions from the total invoiced amounts;

the applicable NSi Royalty payable;

sales forecasts; and

any other details the Licensee reasonably requires from time to time.

Licensee may request audited statement

NSi to retain records

the matters specified in clause 4.4 in accordance with applicable accounting standards;

the working papers NSi used to calculate the NSi Royalty; and

each NSi Royalty statement,

Licensee’s right to inspect records

permit the Licensee’s accountant, auditor or nominee, on reasonable notice and during ordinary business hours on a Business Day, to inspect and verify the records referred to in clause 4.6; and

give all reasonable help in any inspection and verification and permit the Licensee’s accountant, auditor or nominee to take copies of such records.

Cost of inspection

PAYMENTS

Licence Fees, Sub-licence Fees and Royalties

the Licence Fees in the amounts, and within [ * ] of the Milestone specified in the Schedule having been achieved;

the Royalty within [ * ] of the end of each Royalty Period;

the Sub-licence Fees within [ * ] of the end of each Royalty Period; and

any other amounts due from time to time under this Agreement, upon request in accordance with the relevant obligations.

Notification of milestone events

Accruals

The Royalty accrues in respect of Products when the Products are invoiced by the Licensee its Affiliates or Sub-licensees which is deemed to have occurred on the earlier of the Products being invoiced, supplied to a purchaser, put into use or paid for by the purchaser.

The Sub-licence Fees accrue at the earlier of the time any consideration is received by or has become due to the Licensee from a Sub-licensee under the relevant sub-licence.

Non arms’ length arrangements or non-cash consideration

Where any Sale of Products is made, or any sub-licence of the Licensed IP to a Sub-licensee is granted, other than in an arms’ length bona fide commercial transaction or for consideration other than cash, for the purposes of calculating the Royalty and any Sub-licence Fees the consideration received for that transaction must be calculated by the Licensee by reference to the fair market value, as if the transaction had been an arms’ length bona fide commercial transaction and the consideration had been in cash.

The Licensee must separately identify in its Royalty and Sub-licence Fee statements provided to NSi under clauses 7.1 and 7.2 any transactions the subject of this clause 5.4 providing reasonable detail as to the relevant calculation.

Any dispute as to the calculation of the fair market value or cash equivalent value which cannot be resolved by discussion between the parties must be referred for resolution in accordance with clause 21.

Late payment

calculated daily from the due date of payment to the date payment is received by NSi in full; and

at an interest rate of [ * ] the rate quoted on the due date of payment (and if no rate was quoted on that day, the day on which it is next quoted) for business overdrafts over AUD$100,000 by NSi’s principal Australian bank.

Payments

All Licence Fees, Royalties, Sub-licence Fees and other payments to be made by the Licensee to NSi under this Agreement are to be made in Australian currency and are to be made by bank draft made payable to NSi or, at NSi’s option, direct deposit into the account notified by NSi in writing.

Where conversion from foreign currency is required, the conversion is to be made at the average day’s buying rate of the Licensee’s principal bank prevailing two days before the remittance of the payment

TAXES

General Taxes

All amounts payable by a party (Recipient) under this Agreement are exclusive of any applicable Taxes and, subject to clause 6.3, the Recipient must pay directly (if applicable) or reimburse the other party (Supplier) for any such Taxes.

Where required, Supplier will provide a tax invoice to the Recipient.

GST

In circumstances where GST applies, at the cost the Recipient, the Supplier must do all things reasonably necessary to assist the Recipient to claim any input tax credit or refund available in relation to any GST paid or payable by the Recipient under this clause 6.

The Supplier may invoice the Recipient for GST when the Supplier invoices the Recipient for payments due under this Agreement or when the Supplier is required to remit the GST, at the Supplier’s option.

Any GST payable by the Recipient under this Agreement is calculated by multiplying by the prevailing GST rate by the amount of the consideration payable by the Recipient for the relevant supply.

If a payment to a party under this agreement is a payment by way of reimbursement or indemnity and is calculated by reference to the GST inclusive amount of a loss, cost or expense incurred by that party, then the payment is to be reduced by the amount of any input tax credit to which that party is entitled in respect of that loss, cost or expense before any adjustment is made for GST.

Withholding taxes

ACCOUNTS

Royalty statement

the number of Products manufactured by the Licensee and its Affiliates and Sub-licensees;

the number of Products supplied by the Licensee and its Affiliates and Sub-licensees;

the total amounts invoiced in respect of Products by the Licensee and its Affiliates and Sub-licensees

the total Net Sales amounts in respect of Products;

the manner in which the Royalty was calculated, including details of any deductions from the total invoiced amount;

the applicable Royalty payable;

Sales forecasts; and

any other details NSi reasonably requires from time to time.

Sub-licence statement

the number of sub-licences to Sub-licensees (other than Affiliates) in place for the Licensed IP;

the total amounts invoiced by the Licensee or its Affiliates under or in relation to such sub-licences;

the amount of all payments received by the Licensee or its Affiliates under or in relation to such sub-licences;

the manner in which the Sub-licence Fee was calculated;

the applicable Sub-licence Fee;

sales forecasts; and

any other details NSi reasonably requires from time to time.

NSi may request audited statement

Licensee to retain records

the matters specified in clauses 7.1 and 7.2 in accordance with applicable accounting standards;

the working papers the Licensee used to calculate the Royalty and the Sub-licence Fees; and

each Royalty and Sub-licence Fee statement,

NSi’s right to inspect records

permit NSi’s accountant, auditor or nominee, on reasonable notice and during ordinary business hours on a Business Day, to inspect and verify the records referred to in clause 7.4; and

give all reasonable help in any inspection and verification and permit NSi’s accountant, auditor or nominee to take copies of such records.

Cost of inspection

Obligations of Sub-licensees

that all Sub-licensees comply with obligations substantially the same as those contained in this clause 7; and

for NSi the rights of inspection under clause 7.5 in respect of the Licensee’s Sub-licensees.

PROSECUTION AND MAINTENANCE OF PATENTS

Prosecution

prosecute all Patents and other applications for statutory protection of the Licensed IP; and

maintain all Patents and other rights granted on those applications.

Assistance in prosecution

NSi and the Licensee must render all reasonable non-monetary assistance to each other in relation to the prosecution and maintenance of the Patents.

At the Licensee’s written request, NSi will advise the Licensee about the current status of the Patents.

Costs of Patents

Subject to clause 8.3(b), the Licensee must pay or reimburse NSi (at NSi’s option) all Registration Costs incurred by or on behalf of NSi with respect to all Licensed IP in any country in the Territory approved by the Licensee in writing.

The Licensee is only required to pay or reimburse NSi (at NSi’s option) [ * ] of all Registration Costs incurred by or on behalf of NSi for any licensed NSi Background IP in any country in the Territory approved by the Licensee in writing, [ * ].

The Licensee must give to NSi at least [ * ] written notice if it does not wish to continue payment of Registration Costs with respect to any Licensed IP in any country in the Territory, in which case NSi may, at its sole discretion:

cease prosecution of that Licensed IP or allow it to lapse in that country; or

prosecute or maintain such Licensed IP in that country at its own cost, and

NO CHALLENGE TO VALIDITY

EXPLOITATION BY LICENSEE

Best efforts to Exploit

Exploit the Licensed IP within the Territory in the Field so as to maximise Sales of Products and consideration received from Sub-licensees;

meet the Minimum Performance Obligations as set out in the Schedule.

Reports

The Licensee must prepare and deliver to NSi within [ * ] of the end of each [ * ] during the Term, in a form reasonably required by NSi, a written report setting out progress of the development and Exploitation of the Licensed IP in the previous [ * ] for those Applications for which a Royalty statement has not been provided under clause 7.

The Licensee must procure that its Sub-licensees comply with obligations substantially equivalent to those in this clause 10.2.

Minimum Performance Obligations

Without limiting the obligations set out in clauses 10.1 and 10.2, the Licensee must meet the Minimum Performance Obligation by the relevant Commercialisation Milestone Date set out in the Applications Commercialisation Plan.

Where the Licensee fails to meet a Minimum Performance Obligation for any Application NSi may, in its absolute discretion by [ * ] prior written notice to the Licensee, terminate the licences granted under this Agreement for that Application only.

Compliance with laws

Exclusive efforts

PRODUCTS

Quality of Products

manufacture, or cause to be manufactured, the Products with due care and skill and in accordance with all relevant best practice industry standards, and ensure that the Products are of good and merchantable quality and fit for their purpose, and meet all legal requirements, including all product liability laws, applicable where the particular Product is to be Exploited; and

promptly notify NSi of any significant quality failures which affect the Products and any circumstances which may require the recall of any Products.

Inspection of Licensee’s premises

Records of Exploitation

permit NSi, its authorised representative or agent, on reasonable notice and during ordinary business hours on a Business Day, to inspect and verify such records; and

give all reasonable help in any such inspection and verification and permit NSi, its authorised representative or agent to take copies of such records.

Cost of inspection

Obligations of sub-licensees

that all Sub-licensees comply with obligations substantially the same as those contained in this clause 11; and

for NSi the rights of inspection under clauses 11.2 and 11.3 in respect of the Licensee’s Sub-licensees.

Insurance

The Licensee must during the Term, and for so long as is necessary after the Term to give effect to this clause 11.6, take out and maintain with reputable insurers reasonably acceptable to NSi:

comprehensive public and product liability insurance policies which give coverage against all usual risks, including for any claim or demand arising out of or in relation to this Agreement, the Licensed IP or the Products (including but not limited to clinical trial insurance) and for an amount in respect of each claim of at least the amount specified in the Schedule;

insurance in respect of all claims and liabilities arising, whether at common law or under statute, relating to workers compensation or employer’s liability, from any accident or injury to any person employed by the Licensee in connection with the Exploitation of the Products. This insurance must be in compliance with all laws of the relevant jurisdiction in which the Products will be manufactured, marketed and Sold; and

Unless prohibited by law, the Licensee must ensure that all policies of insurance required to be taken out by it under this clause 11.6 include NSi and UNSW as interested parties on such policy.

Unless otherwise agreed by NSi in writing, any sub-contract or sub-licence granted by the Licensee with respect to the Licensed IP must require the sub-contractor or Sub-licensee to take out and maintain adequate insurance, including comprehensive public and product liability insurance policies, consistent with the requirements of this clause 11.6.

The Licensee must at NSi’s request provide NSi with certificates of currency for the policies required to be taken out by the Licensee under this clause 11.6 within [ * ] of such request.

The Licensee must immediately notify NSi of any cancellation or change to a relevant insurance policy which affects NSi’s or UNSW’s interests.

If any event occurs which may give rise to a claim involving NSi or UNSW under any policy of insurance to be taken out by the Licensee under this clause 11.6 the Licensee must:

notify NSi as soon as reasonably practicable, but in any event within [ * ] of the occurrence of that event; and

ensure that NSi is kept fully informed of any subsequent actions and developments concerning the relevant claim.

The Licensee’s obligations to insure under this clause 11.6 are material obligations of this Agreement. Without limiting NSi’s rights at law, in equity, under this Agreement or otherwise, any failure by the Licensee to comply with a provision of this clause 11.6 entitles NSi, at its sole discretion, to terminate this Agreement and/or to invoice the Licensee for, or set off against any sum payable by NSi to the Licensee, all costs and expenses NSi incurs in taking out and maintaining a policy of insurance which Licensee has failed to take out as required.

NOT USED

APPLICATION SUBSTITUTION

Option to Substitute New Applications

Exercise of the Option

the Licensee will provide a notice in writing to NSi indicating the New Application required to be licensed and nominating the Further Application to be replaced in the Schedule;

NSi will amend the Schedule to incorporate the New Application, remove the Further Application and add any Project IP or Background IP necessary to Exploit the New Application; and

the parties will execute the amended Schedule to indicate their agreement to amend the Schedule.

[ * ] Option

that it may only exercise the Option subject to:

[ * ]; and

[ * ]; and

until the Licensee exercises its Option, [ * ] and [ * ] in respect of any applications [ * ].

Additional Applications

At any time during the Term, the Licensee may serve a notice on NSi that it wishes to obtain a separate commercial licence for an application of the Project IP within or outside the Field (Additional Application).

The parties must work together in good faith on an exclusive basis for a period of [ * ] (Exclusivity Period) after service of a notice pursuant to clause 13.4(a) to agree on the terms (including, without limitation, the royalty rate) on which the Additional Application will be licensed to the Licensee provided that if the parties agree on terms:

the parties will enter into a new separate license agreement; and

[ * ] will [ * ] during the Exclusivity Period in respect of any Intellectual Property the subject of the negotiation.

CONFIDENTIAL INFORMATION

Permitted use

Obligations of confidentiality

not use, and ensure that its employees, officers and agents do not use, any Confidential Information of the other party for any purpose other than compliance with its obligations under this Agreement;

take all action necessary to maintain the confidential nature of the Confidential Information of the other party, including keeping all records of that Confidential Information under lock and key or password protection;

not disclose any of the Confidential Information of the other party to any person other than those of its employees who need to have access to that Confidential Information for the purposes of compliance with its obligations under this Agreement, who are aware of the requirements of this Agreement, and who are bound by an enforceable obligation of confidentiality; and

destroy all documents and other materials in whatever form in its possession, power or control which contain or refer to any Confidential Information of the other party, on the earlier of expiry or termination of this Agreement, demand by the other party or the time they are no longer required for the purposes of this Agreement.

Uncertainty

any information is Confidential Information; or

any Confidential Information is publicly available,

Disclosure required by law

Acknowledgement

MEDIA AND PUBLICATIONS

Statements and use of name

A party may not make press or other announcements or releases relating to this Agreement or the matters the subject of this Agreement without the prior written consent of the other party, such consent not to be unreasonably withheld.

In any publication, press release, advertising or other promotional material relating to the Licensed IP:

the Licensee must give due credit to UNSW and/or NSi as owner and/or licensor (as applicable), but must not otherwise use or permit to be used NSi’s or UNSW’s name without having previously obtained the consent in writing of NSi and/or UNSW (as applicable); and

must not intentionally make or permit to be made any inaccurate or misleading statement in relation to the Licensed IP or the Products.

Publication of Papers

the party must provide to the other party a copy of the proposed Paper at least [ * ] prior to the proposed date of publication (or submission for publication where applicable);

the other party may within [ * ] of receipt of a proposed Paper reasonably object to or request a delay of the publication of the Paper in whole or in part providing reasons, in which case the party must not publish, or must delay the publication of, the Paper (as applicable). If the other party fails to object or request a delay within this period, the other party will be deemed to have consented to the publication of the Paper; and

a party must not unreasonably withhold its consent to the publication of a Paper, provided that it may withhold consent if it reasonably believes the publication will adversely affect the protection or commercialisation of any Intellectual Property owned by it.

Acknowledgements

INFRINGEMENT AND ENFORCEMENT

Notice of proceedings

Licensee to enforce

give NSi reasonable notice, keep NSi advised of the progress, and consult with NSi and accept the reasonable directions of NSi about the conduct of such proceedings;

provide to NSi on request, at no cost to NSi, copies of all documents used in or prepared for such proceedings; and

indemnify NSi and UNSW against all actions, claims, loss, awards, costs, damages and expenses arising out of or in connection with those proceedings, but only to the extent those proceedings relate to or arise from the Exploitation of the Licensed IP by the Licensee, its Affiliates or its sub-licensees.

NSi may join action

NSi may proceed alone

Third party claims

If proceedings are threatened or commenced by a third party against a party in any country on the ground that the Exploitation of the Licensed IP infringes an Intellectual Property rights vested in the third party, then:

the party threatened or sued must immediately notify the other party; and

the parties will refer the matter to leading legal counsel for advice on whether a defence or threats action will have a reasonable chance of a successful outcome and whether there are circumstances making it imprudent to defend or commence proceedings.

If proceedings are threatened or commenced against a party, that party will be solely responsible for the defence of those proceedings and bringing any threats action, and indemnifies the other party against all actions, claims, loss, awards, costs, damages and expenses arising out of or in connection with those proceedings. In the case of the Licensee, the requirement for it to indemnify NSi only applies to the extent the proceedings or threatened proceedings relate to or arise from the Exploitation of the Licensed IP by the Licensee, its Affiliates or its sub-licensees.

A party will not be required to defend any infringement proceedings brought by a third party or institute any threats action where leading counsel advises that it would be imprudent to defend or commence proceedings.

Amendment

Assistance

WARRANTIES

Mutual warranties

it has the power and authority to enter into and perform its obligations under this Agreement and that the execution of this Agreement by it has been duly and validly authorised by all necessary corporate action;

its obligations under this Agreement are valid and binding and enforceable against it in accordance with their terms; and

this Agreement and its performance do not contravene its constituent documents or any law, or any of its obligations or undertakings by which it is bound, or cause a limitation on the powers of its corporate officers to be exceeded.

NSi’s warranties

it owns the Licensed IP and has the right to grant the licences to the Licensed IP contained in this Agreement;

there is no litigation pending in respect to the Licensed IP, and no claim or demand has been received by NSi from any person in relation to the ownership or validity of the Licensed IP;

the Licensed IP is not encumbered, mortgaged, or charged in any way, nor subject to any lien;

it has not granted to any person any licence to the Licensed IP which may conflict with the licences granted in this Agreement, other than as expressly permitted by this Agreement;

Limit on warranties

to [ * ] knowledge, [ * ]; and

subject to all liabilities, contracts and other matters disclosed in writing by or on behalf of NSi to the Licensee before the date of execution of this Agreement, including all matters disclosed in the Disclosed Items specified in the Schedule, and do not apply in respect of any matter disclosed in, or arising out of or in connection with, any such liabilities, contracts and other matters.

Licensee’s warranties

it has the necessary resources, skills and technical expertise to Exploit the Licensed IP and Products in accordance with and perform its obligations under this Agreement;

it has made its own assessment of the Licensed IP and Products and the commercial value of the licences granted under this Agreement;

it has exercised its independent skill and judgment and has carried out its own investigations in its decision to enter into this Agreement;

it has not relied on any advice, promise or representation made by or on behalf of NSi (including by UNSW or UNSW personnel) which has not been expressly included in this Agreement; and

it has obtained, or where required in the future will obtain, all authorisations, registrations, approvals and permits required by any governmental body or under any government legislation in any relevant jurisdiction in connection with the Licensee’s entry into and performance of this Agreement and the Exploitation of the Licensed IP and Products.

Exclusion of warranties

NSi has not made or given, nor has any person on behalf of NSi made or given, any warranty, representation, undertaking or understanding whatsoever that is not expressly set out in this Agreement; and

NSi has not made and does not make any warranty or representation whatsoever as to:

the safety of the Licensed IP or the Products;

the Exploitation of the Licensed IP or of the Products, except as set out in clause 17.2;

the marketability of the Licensed IP or of the Products;

the Exploitation prospects or success of any part of the Licensed IP or of the Products or the profits or revenues that may result from the Exploitation of the Licensed IP or the Products;

the validity of any right in respect of the Licensed IP, whether in respect of the Products or otherwise;

NSi’s Confidential Information or the Know-how being complete or accurate;

the Licensee’s Exploitation of the Licensed IP or the Products not infringing the rights (including Intellectual Property rights) of any person;

the Exploitation of the Licensed IP being lawful or not requiring the consent or approval of any person (including regulatory approval); and

it being possible to grant an exclusive licence of the Licensed IP under the law of any jurisdiction within the Territory.

LIABILITY

NSi’s exclusions

Prescribed terms

Subject to any terms, conditions and warranties which the law expressly provides may not be excluded, restricted or modified, or may be excluded, restricted or modified only to a limited extent (Prescribed Terms), except as expressly set out in this Agreement, all

conditions, warranties, terms and obligations expressed or implied by law or otherwise relating to the performance of a party’s obligations, or any goods or services supplied or to be supplied by a party, under this Agreement are excluded.

To the extent permitted by law, the liability of a party for a breach of a Prescribed Term implied into this Agreement is limited, at that party’s option, to the repair or replacement of the goods, the cost of repairing or replacing the goods, the re-supply of the services or the payment of the cost of re-supplying the services.

Consequential loss

Indemnity by Licensee

any material breach by the Licensee of its warranties or obligations under this Agreement;

any negligent act or omission or wilful misconduct of the Licensee or its officers, employees, consultants or agents;

the Exploitation of the Licensed IP or Products by or on behalf of the Licensee or its Sub-licensees, including but not limited to, breach of Intellectual Property rights of third parties arising in the course of such Exploitation;

the design, manufacture, marketing or supply of the Products by or on behalf of the Licensee or its Sub-licensees; or

any person’s use of any Products supplied by or on behalf of the Licensee or its Sub-licensees,

Indemnity by NSi

any material breach by NSi of its warranties or obligations under this Agreement;

any negligent act or omission or wilful misconduct of NSi or its officers, employees, consultants or agents;

Cap on Liability

arising out of any one act, omission or event and any one series of related acts, omissions or events are not to exceed the amount of Licence Fees, Sub-licence Fees and Royalties paid by the Licensee to NSi in the 12 month period prior to the act, omission or event or the first in the series of acts, omissions or events giving rise to the liability; and

arising out of all acts, omissions and events whenever occurring is not to exceed the total amount of Licence Fees, Sub-licence Fees and Royalties paid to NSi under this Agreement,

TERM AND TERMINATION

Agreement to continue for Term

Expiry of Intellectual Property rights during the Term

Termination by NSi

the Licence Fees, Sub-licence Fees or Royalties are in arrears and unpaid for a period of [ * ] after they have become due and payable;

the Licensee commits or allows to be committed a breach (other than a trivial breach causing no material harm) of this Agreement and, where the breach is capable of remedy, fails to remedy that breach within [ * ] of receiving written notice from NSi describing the breach and asking for it to be remedied;

the Licensee suffers a change in Control (other than solely due to a corporate reconstruction of Affiliates) which, in the reasonable opinion of NSi, adversely affects the Licensee’s ability to perform this Agreement;

an Insolvency Event occurs in relation to the Licensee; or

the Licensee ceases or threatens to cease to carry on its business.

Termination by Licensee

NSi commits or allows to be committed a breach (other than a trivial breach causing no material harm) of this Agreement and, where the breach is capable of remedy, fails to remedy that breach within [ * ] of receiving written notice from the Licensee describing the breach and asking for it to be remedied; or

an Insolvency Event occurs in relation to NSi.

Consequences of termination

the parties must pay all amounts owing under this Agreement, which become immediately due on termination or expiry;

except to the extent applicable law provides otherwise, the Licensee must cease Exploiting the Licensed IP;

the Licensee must provide NSi with details of any sub-licences or other arrangements entered into by the Licensee relating to or relying upon the Licensed IP;

the Licensee must, at NSi’s option deliver to NSi or erase or destroy, or procure the delivery, erasure or destruction (as applicable) of, all materials, including electronic storage, in the possession or under the control of the Licensee or its Affiliates containing any Confidential Information of NSi; and

the Licensee must deliver to NSi a statutory declaration made by an authorised officer of the Licensee declaring that to the best of that person’s knowledge and belief (after having made proper inquiries) none of Licensee, its Affiliates and their officers, employees, agents, contractors or advisers have retained any Confidential Information of NSi and that the Licensee has fully complied with its obligations under clause 19.5(d).

Other remedies

Survival

FORCE MAJEURE

Relief for Force Majeure

within a reasonable time after the occurrence of the Force Majeure, the party gives the other party a written notice specifying the Force Majeure;

the relevant obligations will be suspended only to the extent that the obligations are affected by Force Majeure;

the relevant obligations will be suspended during, but no longer than, the continuance of the Force Majeure, and such further period as is reasonable in the circumstances; and

the party giving the notice uses its best efforts to promptly ▇▇▇▇▇ the Force Majeure.

Other party may terminate

If a party is wholly or partly unable to carry out its obligations under this Agreement due to Force Majeure for a period of more than [ * ], the other party may terminate this Agreement or the licence of any right in respect of the Licensed IP by giving written notice.

Termination under this clause 20.2 is without prejudice to the rights of any party arising before or due to the event giving rise to termination, or from any breach of this Agreement.

DISPUTE RESOLUTION

No proceedings

Dispute resolution

A party claiming that a Dispute has arisen must give written notice to the other party giving details of the Dispute (Notification).

Within [ * ] (or any longer period agreed by the parties) of receipt by the other party of a Notification, the Chief Executive Officers (or equivalent) of each party must personally or through a nominee attempt in good faith to resolve the Dispute, failing which the parties must seek to agree on an alternative dispute resolution technique to resolve the Dispute.

If the parties fail to agree on the dispute resolution technique to be used within a further [ * ] (or any longer period agreed by the parties), the Dispute will be referred to mediation by, and in accordance with the rules of, the Australian Commercial Disputes Centre Limited. The mediation will be conducted in Sydney in the English language.

The parties must continue to perform their respective obligations under this Agreement pending the resolution of a Dispute.

Each party must bear its own costs of complying with this clause 21.

GENERAL

This Agreement contains the entire agreement between the parties as to its subject matter and may only be amended in writing signed by all parties.

Notices must be given to the parties’ addresses set out at the front of this Agreement and in the case of notices regarding accounting issues to the person specified in the Schedule or as otherwise notified by the parties in writing and must be delivered in person or sent by email, fax or prepaid post (airmail if international). Notices will be deemed to have been received:

if delivered in person, on the date of delivery;

if sent by email, on receipt by the sender of an acknowledgment indicating that the mail item was read by the recipient;

if sent by fax, on production of a transmission report from the sender’s fax machine evidencing that the fax was successfully sent in its entirety; or

if sent by prepaid post, 3 business days after posting (7 business days if sent to or from a place outside of Australia).

No delay or indulgence by a party in enforcing this Agreement will prejudice or restrict the rights of that party, nor will a waiver of those rights operate as a waiver of a subsequent breach.

No part of this Agreement is to be construed to the disadvantage of a party because that party was responsible for its preparation.

Nothing in this Agreement may be construed as creating a relationship of partnership, joint venture employment, principal and agent or trustee and beneficiary.

A party, at the request of another party, must do all things and sign all documents necessary to give effect to this Agreement.

If any provision of this Agreement is or becomes invalid or unenforceable then, if the provision can be read down to make it valid and enforceable without materially changing its effect, it must be read down, and otherwise the offending provision must be severed and the remaining provisions will operate as if the provision had not been included.

This Agreement is governed by the laws of New South Wales, Australia, and the parties submit to the non-exclusive jurisdiction of the courts of that State.

Each signatory to this Agreement warrants that he or she has authority to bind the party that he or she is stated to represent.

This Agreement may be executed in any number of counterparts all of which taken together will constitute one agreement.

Commencement Date

To be updated at end of the Collaborative Research Agreement

Term

In respect of each Application, from the Commencement Date until the conditions in clause 19.2 have been met

Licensed IP

Patents

NSi Ref / Tech ID

Title

Type of Patent / Application and No.

Know-how -To be updated at end of the Collaborative Research Agreement

Background IP - To be updated at end of the Collaborative Research Agreement

Project IP- To be updated at end of the Collaborative Research Agreement

Territory

Worldwide

Field

Formulations for oral vaccines. The Licensee acknowledges that [ * ] and [ * ].

License Fees

These License Fees are payable in respect of each Application Licensed under this Agreement.

The Licensee will pay NSi the Licence Fees attributed to each Milestone for each Application licensed under this Agreement as follows:

Milestones are numbered for convenience but may not occur in sequence and are payable when achieved.

No

[ * ]

Milestone

License Fees

In addition to the [ * ] Milestones above, a trigger for payment to NSI is payable on [ * ].

No

[ * ]

Milestone

License Fees

Royalty For all

Applications

[ * ]% of Net Sales

Royalty Period

Each calendar quarter ending on 31 March, 30 June, 30 September and 31 December during the Term, or part thereof where the first such period commences within a quarter or this Agreement terminates prior to the end of a quarter.

Sub-license Fees

[ * ]% of any one-off upfront payments or other one-off upfront consideration (other than Royalties, patent re-imbursement expenses or research funding) received by or due to the Licensee or its Affiliates for and on execution of an agreement sub-licensing the Licensed IP or any part of it to a Sub-licensee (excluding any consideration received by the Licensee from any of its Affiliates).

Insurance

Public liability and product liability insurance: AU$[ * ]

Minimum

Performance

Obligations

1.      Exploitation:

The Licensee must:

(a)     use its best endeavours to pursue throughout the Territory and the Field opportunities for the Exploitation of the Licensed IP and the Products; and

(b)     use its best endeavours (whether by itself or through permitted Sub-licensees, sub-contractors or assignees) to obtain all necessary regulatory approvals for the Exploitation of the Products in the Territory and in the Field;

3.      Application Commercialisation Plan

For each Application the Licensee must, by the Commercialisation Milestone Dates listed in the Application Commercialisation Plan, demonstrate to NSi’s satisfaction that the Commercialisation Milestone has been achieved. For this purpose the Commercialisation Milestone is achieved when a substantial [ * ] R&D and/or commercialisation program to further Exploit the Application, is commenced, conducted and funded by either:

1.      By the Licensee; or

2.      By a 3rd party sub-licensee [ * ].

For the avoidance of doubt, substantiality for the purposes of

Commercialisation Milestone will be measured by NSi against the R&D [ * ] and/or commercialisation [ * ] typically made by pharmaceutical companies for similar Applications in the Field in the Territory and excludes the Collaborative Research Agreement.

Accounting Notices

NSI:

Contact:

Chief Financial Officer

Phone:

▇▇▇ ▇ ▇▇▇▇ ▇▇▇▇

Fax:

▇▇▇ ▇ ▇▇▇▇ ▇▇▇▇

Licensee:

Contact:

▇▇▇▇▇▇ ▇▇▇▇▇▇, Executive Director

Phone:

▇▇▇ ▇ ▇▇▇▇ ▇▇▇▇

Fax:

▇▇▇ ▇ ▇▇▇▇ ▇▇▇▇

Mobile:

▇▇▇ (▇)▇▇▇ ▇▇▇ ▇▇▇

Email:

▇▇▇▇▇▇.▇▇▇▇▇▇@▇▇▇▇▇▇▇▇▇▇▇.▇▇▇.▇▇

Signed for an on behalf of

NEWSOUTH INNOVATIONS PTY LIMITED

Signed for an on behalf of

Prima Biomed Limited

Application Name

[ * ]

[ * ]

[ * ]

[ * ]

[ * ]

Signed for an on behalf of

NEWSOUTH INNOVATIONS PTY LIMITED

Signed for an on behalf of

Prima Biomed Limited