EXHIBIT 10.1
LICENSE AGREEMENT
BETWEEN:
THE UNIVERSITY OF BRITISH COLUMBIA, a corporation continued under the
University Act of British Columbia and having its administrative offices
at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, in the City of Vancouver, in the Province of
British Columbia, V6T I W5
(the "University")
AND:
CHEMOKINE THERAPEUTICS CORP., a corporation incorporated under the laws of
the State of Washington, and having an office at Suite 2200 - ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, in the City of Seattle, in the State of Washington 98101
(the "Licensee")
WHEREAS:
A. The University has been engaged in research during the course of which
it has invented, developed and/or acquired certain technology relating to
"Stromal Derived Factor I (SDF-1) Peptide Agonists and Antagonists" for the
development of therapeutics for the treatment of humans, which research was
undertaken by Dr. ▇▇▇ ▇▇▇▇▇-▇▇▇▇▇ in the Biomedical Research Centre and the
Department of Biochemistry and Molecular Biology at the University;
B. The University is desirous of entering into this Agreement with the
objective of furthering society's use of its advanced technology, and to
generate further research in a manner consistent with its status as a
non-profit, tax exempt educational institution;
C. The Licensee is desirous of the University granting an exclusive,
world-wide license to the Licensee to use or cause to be used such technology to
manufacture, distribute, market, sell, lease and/or license or sublicense
products derived or developed from such technology and to sell the same to the
general public during the term of this Agreement.
D. The Licensee has exercised its option under the Option Agreement dated
January 6, 1999 to license such technology upon the specific terms and
conditions contained in this Agreement.
NOW THEREFORE THIS AGREEMENT WITNESSETH that in consideration of the
premises and of the mutual covenants herein set forth, the parties hereto have
covenanted and agreed as follows:
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1. DEFINITIONS:
1.1 In this Agreement, unless a contrary intention appears, the following
words and phrases shall mean:
(a) "ACCOUNTING": an accounting statement setting out in detail how
the amount of Revenue was determined,
(b) "AFFILIATED COMPANY" OR "AFFILIATED COMPANIES": two or more
corporations where the relationship between them is one in which one of them is
a subsidiary of the other, or both are subsidiaries of the same corporation, or
fifty percent (50%) or more of the voting shares of each of them is owned by the
same person, corporation or other legal entity,
(c) "CONFIDENTIAL INFORMATION": any part of the Information which is
designated by the University as confidential, whether orally or in writing but
excluding any part of the Information:
(i) possessed by the Licensee prior to receipt from the
University, other than through prior disclosure by the University, as evidenced
by the Licensee's business records;
(ii) published or available to the general public otherwise
than through a breach of this Agreement;
(iii) obtained by the Licensee from a third party with a valid
right to disclose it, provided that said third party is not under a
confidentiality obligation to the University; or
(iv) independently developed by employees, agents or
consultants of the Licensee who had no knowledge of or access to the
University's Information as evidenced by the Licensee's business records,
(d) "DATE OF COMMENCEMENT" OR "COMMENCEMENT DATE": this Agreement
will be deemed to have come into force on the Date of Commencement which shall
be the day this Agreement is executed, and shall be read and construed
accordingly,
(e) "EFFECTIVE DATE OF TERMINATION": the date on which this
Agreement is terminated pursuant to Article 18,
(f) "IMPROVEMENTS": collectively the Licensee Improvements, Joint
improvements and University Improvements,
(g) "INFORMATION": any and all Technology and any and all
Improvements, the terms and conditions of this Agreement, and any and all oral,
written, electronic or other communications and other information disclosed or
provided by the parties including any and all analyses or conclusions drawn or
derived therefrom regarding this Agreement and information developed or
disclosed hereunder, or any party's raw materials, processes, formulations,
analytical procedures, methodologies, products, samples and specimens or
functions,
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(h) "JOINT IMPROVEMENTS": shall mean any and all Improvements,
variations, updates, modifications, enhancements and alterations to the
Technology which are invented, developed or acquired jointly by the University
and the Licensee, at any, time after the Commencement Date,
(i) "LICENSEE IMPROVEMENTS": shall mean any and all Improvements,
variations, updates, modifications, enhancements and alterations to the
Technology invented, developed and/or acquired solely by the Licensee, at any
time after the Commencement Date, which may be practised without use of the
Technology or infringing the patents or patent applications set out on Schedule
"A" hereto,
(j) "PRODUCT(S)": goods manufactured in connection with the use of
all or some of the Technology and/or any Improvements,
(k) "PRODUCT APPROVAL": shall mean the date the Licensee files for
new drug approval with respect to the Technology and/or any Improvements
(l) "REVENUE": all revenues, receipts, movies, and the fair market
value of all other , consideration directly or indirectly collected or received
whether by way of cash or credit or any barter, benefit, advantage, or
concession received by the Licensee or any Sublicensee from the marketing,
manufacturing, sale, distribution, or teasing of the Technology and any
Improvements, and/or' any Products in any or all parts of the world where the
Licensee is permitted by law and this Agreement to market, manufacture, sell,
distribute, -or lease the Technology and any Improvements, and/or any Products,
less the following deductions to the extent included in the amounts invoiced and
thereafter actually allowed and taken:
(i) credit, allowances or refunds given on account of returned
goods,
(ii) transportation charges invoiced separately and actually
charged to third parties,
(iii) taxes, duties and customs on all sales of Products,
(iv) agents' commissions paid by the Licensee for the sale of
Products, and
(v) bona fide special rebates provided for Products purchased
by third parties.
Where any Revenue is derived from a country other than Canada
it shall be converted to the equivalent in Canadian dollars on the
date the Licensee is deemed to have received such Revenue pursuant
to the terms hereof at the rate of exchange set by the Bank of
Montreal for buying such currency. The amount of Canadian dollars
pursuant to such conversion shall be included in the Revenue,
(m) "ROYALTY DUE DATES": the last working day of March, June,
September and December of each and every year during which this Agreement
remains in full force and effect,
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(n) "TECHNOLOGY": any and all knowledge, know-how and/or technique
or techniques invented, developed and/or acquired, prior to the Date of
Commencement by the University or the Licensee relating to, and including the
technology described in Schedule "A" hereto, as amended from time to time,
including, without limitation, all research, data, specifications, instructions,
manuals, papers or other materials of any nature whatsoever, whether written or
otherwise, relating to same,
(o) "UBC TRADE-MARKS": any ▇▇▇▇, trade-▇▇▇▇, service ▇▇▇▇, logo,
insignia, seal, design, symbol, or device used by the University in any manner
whatsoever,
(p) "UNIVERSITY IMPROVEMENTS": shall mean any and all Improvements,
variations, updates, modifications, enhancements and alterations to the
Technology invented, developed and/or acquired at any time after the
Commencement Date solely by the University.
2. PROPERTY RIGHTS IN AND TO THE TECHNOLOGY:
2.1 The parties hereto hereby acknowledge and agree that the University
owns any and all right, title and interest in and to the Technology, as well as
any and all University Improvements. The parties hereto hereby acknowledge and
agree that the University and the Licensee each own a 50% interest in the Joint
Improvements.
2.2 The Licensee shall, at the request of the University, enter into such
further agreements and execute any and all documents as may be required to
ensure that ownership of the Technology and any University Improvements remains
with the University.
2.3 On the last working day of June and December of each and every year
during which this Agreement remains in full force and effect, the Licensee shall
deliver in writing the details of any and all Joint Improvements which the
Licensee and any sublicensees of the Licensee has developed and/or acquired
during the previous six month period.
3. GRANT OF LICENSE:
3.1 In consideration of the royalty payments reserved herein, and the
covenants on the part of the Licensee contained herein, the University hereby
grants to the Licensee an exclusive world-wide license to use and sublicense the
Technology, Duty University Improvements and Joint Improvements and to
manufacture, distribute, and sell Products within the field of development of
therapeutics for the treatment of humans on the terms and conditions hereinafter
set forth during the term of this Agreement.
3.2 The license granted herein is personal to the Licensee and is not
granted to any Affiliated Company or Affiliated Companies.
3.3 The Licensee shall not cross-license the Technology or any University
Improvements or Joint Improvements without the prior written consent of the
University.
3.4 Notwithstanding Article 3.1 herein, the parties acknowledge and agree
that the University may use the Technology and any Improvements without charge
in any manner whatsoever for research, scholarly publication, educational or
other non-commercial use.
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3.5 As part of the consideration for the rights granted by the University
to the Licensee hereunder, the Licensee agrees to pay to the University as an
initial license fee the sum of $15,000.00 (Canadian funds) (the "Initial License
Fee"). The said sum shall be paid concurrently with the execution of this
Agreement. Neither all nor any portion of the said sum shall be refundable to
the Licensee under any circumstances.
3.6 Upon execution of this Agreement, the University may register a
financing statement with respect to this Agreement under the provisions of the
Personal Property Security Act of British Columbia and/or' under the provisions
of similar legislation in those jurisdictions in which the Licensee carries on
business and/or has its chief place of business. All costs associated with the
registrations contemplated by this Article 3.6 shall be paid for by the
Licensee.
3.7 The Licensee hereby gives written notice to the University that it is
carrying on business in Washington, U.S.A. and shall give written notice to the
University if it is carrying on business and/or locates its chief place of
business in another jurisdiction outside British Columbia and Washington, prior
to beginning business in that other jurisdiction.
3.8 If the University has registered one or more financing statements as
set forth in Article 3.6, the Licensee shall give written notice to the
University of any and all changes of jurisdiction within or outside of Canada in
which it is carrying on business and/or any and all changes in jurisdiction of
its chief place of business within or outside of Canada and shall rile the
appropriate documents in the various provincial Personal Property Registries or
similar registries within or outside of Canada to document such changes in
jurisdiction and furnish the University with a copy of the verification with
respect to each such filing within 15 days after receipt of same. All costs
associated with the registrations contemplated by this Article 3.8 shall be paid
for by the Licensee ,
4. SUBLICENSING:
4.1 The Licensee shall have the right to grant sublicenses to Affiliated
Companies and other third parties with respect to the Technology and any
University Improvements or Joint Improvements within the field of development of
therapeutics for the treatment of humans with the prior written consent of the
University. The Licensee will furnish the University with a copy of each
sublicense granted within 30 days after execution.
4.2 Any sublicense granted by the Licensee shall be personal to the
sublicensee and shall not be assignable without the prior written consent of the
University. Such sublicenses shall contain covenants by the sublicensee to
observe and perform similar terms and conditions to those in this Agreement.
4.3 Prior to the beginning of a sublicense agreement, the Licensee shall
give written notice to the University as to which jurisdictions the applicable
sublicensee is carrying on business in. Within five days of being aware of the
same, the Licensee shall provide written notice to the University if any
sublicensee is carrying on business in a jurisdiction outside of British
Columbia.
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4.4 If the University has registered one or more financing statements as
set forth in Article 3.6, the Licensee shall register a financing change
statement under the provisions of the Personal Property Security Act of British
Columbia and/or under the provisions of similar legislation in those
jurisdictions in which each sublicensee carries on business or has its chief
place of business in order to add each sublicensee as an additional debtor to
the registration referred to in Article 3.6 forthwith upon execution of each
sublicense, and shall furnish the University with a copy of the verification
statement with respect to each such filing within 15 days after receipt of same.
All costs associated with the flings contemplated by this Article 4.4 shall be
paid for by the Licensee. The Licensee shall give written notice to the
University of any and all changes of jurisdiction within or outside of Canada in
which each sublicensee is carrying on business and/or any and all changes in,
jurisdiction of each sublicensee's chief place of business and shall file the
appropriate documents in the various provincial Personal Property Registries or
similar registries within or outside of Canada to document such changes in
jurisdiction.
5. ROYALTIES AND MILESTONE PAYMENTS
5.1 In consideration of the license granted hereunder, the Licensee shall
pay to the University a royalty comprised of 2% of the Revenue.
5.2 The royalty shall become due and payable within 30 days of each
respective Royalty Due Date and shall be calculated with respect to the Revenue
in the three month period immediately preceding the applicable Royalty Due Date.
5.3 All payments of royalties made by the Licensee to the University
hereunder shall be made in Canadian dollars without any reduction or deduction
of any nature or kind whatsoever, except as may be prescribed by Canadian law.
5.4 Products shall be deemed to have been sold by the Licensee and
included in the Revenue when invoiced, or if not invoiced, then when delivered,
shipped, or paid for, whichever is the first. Revenue from any Sublicensee shall
be deemed to have been received by the Licensee with respect to each of its
sublicensees when such consideration is actually received by the Licensee from
its sublicensees.
5.5 Any transaction, disposition, or other dealing involving the
Technology or any part thereof between the Licensee and another person that is
not made at fair market value shall be deemed to have been made at fair market
value, and the fair market value of that transaction, disposition, or other
dealing shall be added to and deemed part of the Revenue and shall be included
in the calculation of royalties under this Agreement.
5.6 The Licensee shall pay to the University as milestone payments the
following amounts:
(a) upon filing IND with respect to the Technology or any
Improvements in any jurisdiction the `sum of $50,000.00,
(b) upon the completion of Phase II clinical trials with respect to
the Technology or any Improvements in any jurisdiction the sum of $100,000.00,
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(c) upon the completion of Phase III clinical trials with respect to
the Technology or any Improvements in any jurisdiction the sum of $250,000.00,
and
(d) upon the filing for new drug approval with respect to the
Technology or any Improvements in any jurisdiction the sum of $500,000.00.
6. MINIMUM ANNUAL ROYALTY:
6.1 The Licensee shall pay to the University a minimum' annual advance on
earned royalties as specified in Schedule "B" hereto, beginning one year from
the date of Product Approval (the "Annual Royalty Due Date") and payment of such
amounts specified in Schedule "B" hereto on each and every Annual Royalty Due
Date in each subsequent year thereafter, during the Term of this Agreement. Such
payment shall be non-refundable, except that the amount by which the minimum
royalty as paid exceeds the earned royalties payable in any year, such excess
shall be credited against earned royalties in the subsequent year.
7. PATENTS:
7.1 The Licensee acknowledges that the University is the owner of the
patent applications set forth in Schedule "A" hereto (the "Patent Portfolio").
The University, at all times shall have the right to manage the Patent
Portfolio, provided that the University shall, on request by the Licensee:
(a) consult with the Licensee prior to making any material decision
in relation to the management of the Patent Portfolio, and
(b) provide for review by the Licensee copies of any patent
applications prior to filing and copies of material correspondence sent or
received by the University in connection with the prosecution of any patent
application made under this Article 7.
The University may, at its sole discretion, assign to the Licensee the
right to manage the Patent Portfolio.
7.2 The Licensee agrees to pay all costs incurred in relation to the
management of the Patent Portfolio and any further applications made by the
Licensee pursuant to Article 7.4 after the Commencement Date. Without limiting
the generality of the forgoing the Licensee agrees to pay for all costs with
respect to the Patent Portfolio, patent applications, divisionals,
substitutions, continuations, continuations in part, all claims of foreign
patent applications and any and all patents relating to the Technology and any
Improvements licensed hereunder,, and with respect to any and all maintenance
fees for any and all patents relating to the Technology and any Improvements
licensed hereunder.
7.3 The parties acknowledge and agree that the Licensee has reimbursed the
University for the patent costs incurred to February 1, 1999 of $1,199.88
(Canadian Funds) as an option fee upon the execution of the Option Agreement
between the parties dated January 1, 1999. Neither all nor any portion of the
said sum shall be refundable to' the Licensee under any circumstances.
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7.4 The Licensee shall have the right to identify any process, use or
products arising out of the Technology and any Improvements that may be
patentable and the University shall, upon the request of the Licensee, take all
reasonable steps to apply for a patent in the name of the University provided
that the Licensee pays all costs of applying for, registering, and maintaining
the patent in those jurisdictions in which the Licensee might designate that a
patent is required.
7.5 In the event of the issuance of a patent, the Licensee shall have the
right to become, and shall become the Licensee of the same all pursuant to the
terms contained herein.
7.6 The Licensee shall not contest the validity or scope of any and all
patents relating to the Technology and any University Improvements or Joint
Improvements licensed hereunder.
7.7 The Licensee will ensure proper patent marking for all Technology, and
any Improvements licensed hereunder and shall clearly ▇▇▇▇ the appropriate
patent numbers on any Products made using the Technology and any Improvements or
any patented processes used to make such Products.
8. DISCLAIMER OF WARRANTY:
8.1 The University makes no representations, conditions, or warranties,
either express or implied, with respect to the Technology or any Improvements or
the Products. Without limiting the generality of the foregoing, the University
specifically disclaims any implied warranty, condition, or representation that
the Technology or any Improvements or the Products:
(a) shall correspond with a particular description;
(b) are of merchantable quality;
(c) are fit for a particular purpose; or
(d) are durable for a reasonable period of time.
The University shall not be liable for any loss, whether direct,
consequential, incidental, or special which the Licensee suffers arising from
any defect, error, fault, or failure to perform with respect to the Technology
or any Improvements or Products, even if the University has been advised of the
possibility of such defect, error, fault, or failure. The Licensee acknowledges
that it has been advised by the University to undertake its own due diligence
with respect to the Technology and any Improvements.
8.2 The parties acknowledge and agree that the International Sale of Goods
Act and the United Nations Convention on Contracts for the International Sale of
Goods have no application to this Agreement.
8.3 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by the University as to title to
the Technology and/or any Improvement or that anything made, used, sold or
otherwise disposed of under the
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license granted in this Agreement is or will be free from infringement of
patents, copyrights, trade-marks, industrial design or other intellectual
property rights,
(b) an obligation by the University to bring or prosecute or defend
actions or suits against third parties for infringement of patents, copyrights,
trade-marks, industrial designs or other intellectual property or contractual
rights, or
(c) the conferring by the University of the right to use in
advertising or publicity the name of the University or UBC Trade-marks.
8.4 Notwithstanding Article 8.3, in the event of an alleged infringement
of the Technology or any University Improvements or Joint Improvements or any
right with respect to the Technology or any University Improvements or Joint
Improvements; the: Licensee shall have; upon receiving the prior written consent
of the University, the right to prosecute litigation designed to enjoin
infringers of the Technology or any University Improvements or Joint
Improvements. Provided that it has first granted its prior written consent, the
University agrees to co-operate to the extent of executing all necessary
documents and to vest in the Licensee the right to institute any such suits, so
long as all the direct or indirect costs and expenses of bringing and conducting
any such litigation or settlement shall be borne by the Licensee and in such
event all recoveries shall enure to the Licensee.
8.5 In the event that any complaint alleging infringement or violation of
any patent or other proprietary rights is made against the Licensee or a
sublicensee of the Licensee with respect to the use of the Technology or any
University Improvements or Joint Improvements or the manufacture, use or sale of
the Products, the following procedure shall be adopted:
(a) the Licensee shall promptly notify the University upon receipt
of any such complaint and shall keep the University fully informed of the
actions and positions taken by the complainant and taken or proposed to be taken
by the Licensee on behalf of itself or a sublicensee,
(b) except as provided in Article 8.5(d), all costs and expenses
incurred by the Licensee or any sublicensee of the Licensee in investigating,
resisting, litigating and settling such a complaint, including the payment of
any award of damages and/or costs to any third party, shall be paid by the
Licensee or any sublicensee of the Licensee, as the case may be,
(c) no decision or action concerning or governing any final
disposition of the complaint shall be taken without full consultation with and
approval by the University.
(d) the University may elect to participate formally in any
litigation involving the complaint to the extent that the court may permit, but
any additional expenses generated by such formal participation shall be paid by
the University (subject to the possibility of recovery of some or all of such
additional expenses from the complainant),
(e) notwithstanding Article 8.3, if the complainant is willing to
accept an offer of settlement and one of the parties to this Agreement is
willing to make or accept such offer and the other is not, then the unwilling
party shall conduct all further proceedings at its own expense, and shall be
responsible for the full amount of any damages, costs, accounting of profits and
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settlement costs in excess of those provided in such offer, but shall be
entitled to retain unto itself the benefit of any litigated or settled result
entailing a lower payment of costs, damages, accounting of profits and
settlement costs than that provided in such offer.
(f) the royalties payable pursuant to this Agreement shall be paid
by the Licensee to the University in trust from the date the complaint is made
until such time as a resolution of the complaint has been finalized. If the
complainant prevails in the complaint, then the royalties paid to the University
in trust pursuant to this Article shall be returned to the Licensee, provided
that the amount `returned to the Licensee hereunder shall not exceed the amount
paid by the Licensee to the complainant in the settlement or other disposition
of the complaint. If the complainant does not prevail in the complaint, then the
University shall be entitled to retain all royalties paid to it pursuant to this
Article.
9. INDEMNITY AND LIMITATION OF LIABILITY:
9.1 The Licensee hereby indemnifies, holds harmless and defends the
University, its Board of Governors, officers, employees, faculty, students,
invitees, and agents against any and all claims (including all legal fees and
disbursements incurred in association therewith) arising out of the exercise of
any rights under this Agreement including, without limiting the generality of
the foregoing, against any damages or losses, consequential or otherwise,
arising from or out off the use of the Technology or any Improvements or
Products licensed under this Agreement by the Licensee or its sublicensees, or
their customers or end-users howsoever the same may arise.
9.2 Subject to Article 9.3, the University's total liability, whether
under the express or implied terms of this Agreement, in tort (including
negligence), or at common law, for any loss or damage suffered by the Licensee,
whether direct, indirect, special, or any other similar or like damage that may
arise or does arise from any breaches of this Agreement by the University, its
Board of Governors, officers, employees, faculty, students, or agents shall be
limited to the amount of the Initial License Fee paid pursuant to Article 3.5.
9.3 In no event shall the University be liable for consequential or
incidental damages arising from any breach or breaches of this Agreement.
9.4 No action, whether in contract or tort (including negligence), or
otherwise arising out of or in connection with this Agreement may be brought by
the Licensee more than six months after the cause of action has occurred.
10. PUBLICATION AND CONFIDENTIALITY:
10.1 The Information shall be developed, received, and used by the
Licensee solely in furtherance of the purposes set forth in this Agreement
subject to the terms and conditions set forth in this Article 10.
10.2 The Licensee shall keep and use all of the Confidential Information
in confidence and will not, without the University's prior written consent,
disclose any Confidential Information to any person or entity, except those of
the Licensee's officers, employees, consultants, agents and assigns who require
said Confidential Information in performing their
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obligations under this Agreement. The Licensee covenants and agrees that it will
initiate and maintain an appropriate internal program limiting the internal
distribution of the Confidential Information to its officers, servants or agents
and to obtain signed confidentiality and non-disclosure agreements in a form
approved by the Licensee's Board of Directors from any and all persons who may
have access to the Confidential Information.
10.3 The Licensee shall not use, either directly or indirectly, any
Confidential Information for any purpose other than as set forth herein without
the University's prior written consent.
10.4 In the event that the Licensee is required by judicial or
administrative process to disclose any or all of the Confidential Information,
the Licensee shall promptly notify the University and allow the University
reasonable time to oppose such process before disclosing any Confidential,,
information.
10.5 Notwithstanding any termination or expiration of this Agreement, the
obligations created in this Article 10 shall survive and be binding upon the
Licensee, its successors and assigns.
10.6 The University shall not be restricted from presenting at symposia,
national or regional professional meetings, or from publishing in journals or
other publications accounts of its research relating to the information;
provided that with respect to Confidential Information only, the Licensee shall
have been furnished copies of the disclosure proposed therefor at least 60 days
in advance :Of the presentation or publication date and does not within 30 days
after receipt of the proposed disclosure object to such presentation or
publication. Any objection to a proposed presentation or publication shall
specify the portions of the presentation or publication considered objectionable
(the "Objectionable Material"). Upon receipt of notification from the Licensee
that any proposed publication or disclosure contains. Objectionable Material,
the University and the Licensee shall work together to revise the proposed
publication or presentation to remove or alter the Objectionable Material in a
manner acceptable to the Licensee, in which case the Licensee shall withdraw its
objection. In the event that an objection is made, disclosure of the
Objectionable Material shall not be made for a period of 6 months after the date
the Licensee has received the proposed publication or presentation relating to
the Objectionable Material. The University shall co-operate in all reasonable
respects in making revisions to any proposed disclosures if considered by the
Licensee to contain Objectionable Material. The University shall not be
restricted from publishing or presenting the proposed disclosure as long as the
Objectionable Material has been removed. After the 6 month period has elapsed,
the University shall be free' to present and/or publish the proposed publication
or presentation, whether or not it contains Objectionable Material.
10.7 The Licensee requires of the University, and the University agrees
insofar as it may be permitted to do so at law, that this Agreement, and each
part of it, is confidential and shall not be disclosed to third parties, as the
Licensee claims that such disclosure would or could reveal commercial,
scientific or technical information and would significantly harm the Licensee's
competitive position and/or interfere with the Licensee's negotiations with
prospective sublicensees. Notwithstanding anything contained in this Article,
the parties hereto
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acknowledge and agree that the University may identify the title of this
Agreement, the parties to this Agreement, and the names of the inventors of the
Technology and any Improvements.
11. PRODUCTION AND MARKETING:
11.1 The Licensee shall not use any of the UBC Trade-marks or make
reference to the University or its name in any advertising or publicity
whatsoever, without the prior written consent of the University, except as
required by law. Without limiting the generality of the foregoing, the Licensee
shall not issue a press release with respect to this Agreement or any activity
contemplated herein without the prior review and approval of same by the
University, except as required by law. If the Licensee is required by law to act
in contravention of this Article, the Licensee shall provide the University with
sufficient advance notice in writing to permit the University to bring an
application or other proceeding to contest the requirement.
11.2 The Licensee will not register or use any trade-marks in association
with the Products without the prior written consent of the University.
11.3 The Licensee represents and warrants to the University that:
(a) it has the infrastructure, expertise and resources to develop
and commercialize the Technology and any Improvements;
(b) it has the infrastructure, expertise and resources to track and
monitor on an ongoing basis performance under the terms of each sublicense
agreement entered into by the Licensee;
(c) it has the expertise and resources to monitor on a world wide
basis patent infringement with respect to any patent relating to the Technology
and any Improvements licensed hereunder;
(d) it has the infrastructure, expertise and resources to initiate
and maintain an appropriate program limiting the distribution of the
Information, Technology, and any Improvements and any related biological
materials as set out in this Agreement and to obtain the appropriate
non-disclosure agreements from all persons, who may have access to the
Technology, and any Improvements `and related biological materials;
(e) it will throughout the Term of this Agreement allocate to the
development and commercialization of the Technology, and any Improvements at
least the same degree of diligence, expertise, infrastructure, and resources as
the Licensee is allocating to the most favoured therapeutic drug developed and
marketed by the Licensee.
11.4 The Licensee shall use its best efforts to promote, market and sell
the Products and utilize the technology and any Improvements and to meet or
cause to be met the market demand for the Products and the utilization of the
Technology and any Improvements. Without limiting the generality of the
foregoing, the Licensee covenants and agrees that it shall:
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(a) file the IND within 48 months of the Commencement Date. The
Licensee covenants to furnish the University with a copy of the verification
with respect to such filing within 15 days after receipt of the same;
(b) commence Phase I clinical trials within 54 months of the
Commencement Date. The Licensee covenants to notify the University, in writing,
within 15 days of the commencement of Phase I clinical trials;
(c) commence ▇▇▇▇▇ ▇▇ clinical trials within 66 months of the
Commencement Date. The Licensee covenants to notify the University, in writing,
within 15 days of the commencement of Phase 11 clinical trials;
(d) commence Phase III clinical trials within `84 months of the
Commencement Date. The Licensee covenants to notify the University, in writing,
within 15 days of the commencement of Phase III clinical trials;
(e) file a new drug approval within 120 months of the Commencement
Date. The Licensee covenants to furnish the University with a copy of the
verification with respect to such filing within 15 days after receipt of the
same; and
(f) approve the Products to the Market within 132 months of the
Commencement Date.
11.5 The Licensee has submitted a written plan (the "Business Plan") to
the University, outlining the Licensee's strategy for developing and
commercializing the Technology and any Improvements. The Licensee shall update
the Business Plan from time to time, and provide to the University, not more
than once annually and within 60 days of a request by the University, an updated
Business Plan report that includes:
(a) a summary of new improvements, modifications and enhancements to
the Technology made by the Licensee or any sublicensee; and
(b) relevant market information and projections of Revenues for the
next 12 months.
The University shall have the right to review and approve each update of
the Business Plan and request reasonable changes and modifications if the
Business Plan is deemed to be inadequate. Performance by the Licensee in
accordance with the Business Plan, once approved by the University, shall be an
integral part of the Licensee's obligation to use its best efforts to develop,
promote, market the Technology.
11.6 The Parties will meet annually to review progress on the development
and commercialization of the Technology, and conduct two major reviews within 36
and 60 months of the Commencement Date to determine the progress by the Licensee
in meeting the objectives and milestones set out in Article 11.4 and/or the
Licensee's approved Business Plan. If after such a review the University has
identified any deficiency by the Licensee's progress in meeting the objectives
set out in Article 11.4 and l or the Licensee's approved Business Plan, then the
University may at its option:
13
(a) give notice to cure such default or correct any deficiency in
accordance with Article 18.4 hereof;
(b) appoint an Evaluator to conduct an evaluation to further review
the Licensee's performance under Article 11.7 hereof, or
(c) exercise any of its other rights on default by the Licensee in
accordance with Article 18 hereof.
11.7 In the event that the University is of the view that the Licensee is
in breach of Article 11.4, the University shall notify the Licensee and the
parties hereto shall appoint a mutually acceptable person as an independent
evaluator (the "Evaluator") to conduct the evaluation set forth in Article 11.6.
In the event that the parties cannot agree on such an Evaluator, the appointing
authority shall be the British Columbia International Commercial Arbitration
Centre.
11.8 Unless the Parties mutually agree otherwise, the following rules and
procedures shall govern the conduct of the parties and the Evaluator before and
during the investigation by the Evaluator:
(a) within 30 days of the appointment of the Evaluator each party
shall provide to the Evaluator and the other party copies of all documents,
statements and records on which the party intends to rely in presenting its
position to the Evaluator;
(b) within 45 days of the appointment of the Evaluator the Licensee
shall provide to the Evaluator and the University a written summary of its
position. On receipt of the Licensee's summary the University shall have 15 days
to prepare and submit to the Licensee and the Evaluator its own summary in reply
to the summary submitted by the Licensee;
(c) on receipt of the documents, statements, records and summaries
submitted by the parties the Evaluator shall have 30 days within which to
conduct such further inquiries as he or she may deem necessary, for the purpose
of reviewing the efforts made by the Licensee with respect to the promotion,
marketing and sale of the Products and the Technology and any Improvements in
compliance with the requirements of Article 11.4. For the purpose of conducting
such an inquiry, the Evaluator shall have the right to:
(i) require either party to disclose any further documents or
records which the Evaluator considers to be relevant:
(ii) interview or question either orally (or by way of written
questions) one or more representatives of either party on issues deemed to be
relevant by the Evaluator;
(iii) make an "on site" inspection of the Licensee's
facilities;
(iv) obtain if necessary, the assistance of an independent
expert to provide technical information with respect to any area in which the
Evaluator does not have a specific expertise;
14
(d) On completion of the Inquiry described in Article 11.6(c) the
Evaluator shall within l S days prepare a report setting out his or her findings
and conclusions as to whether or not the Licensee has committed a breach of
Article 11.4. If the Evaluator has determined that the Licensee has committed a
breach of Article 11.4, then the Evaluator shall also set out in the report his
or her conclusions as to whether such breach:
(i) was substantially due to external market conditions not
within the control of the Licensee, or
(ii) was substantially due to the Licensees failure to use its
best efforts to comply with the requirements of Article 11.4.
(e) The report and- conclusions of the Evaluator shall be delivered
to the Licensee and the University, and shall be accepted by both parties as
final and binding.
11.9 If the Evaluator concludes:
(a) pursuant to Article 11.6(d)(i) that the Licensee's breach was
substantially due to external market conditions, then the University may at its
option terminate the Licensee's right - to grant further sublicenses `of the
Technology and any Improvements, and may continue the license granted hereunder
as an exclusive license to the Licensee, but with all other terms and conditions
of this Agreement unchanged;
(b) pursuant to Article 11.6(d)(ii) that the Licensee's breach was
substantially due to the Licensee's failure to use its best efforts then the
University shall at its option have the right to terminate this Agreement as
provided in Article 18;
(c) pursuant to Article 11.6(d) that the Licensee is not in breach
of Article 11.4, then the University shall not terminate this Agreement for
breach of Article 11.4, nor shall it change the nature of the license granted
hereunder.
11.10 The University may not calf for more than one evaluation pursuant to
Article 11.5 in each calendar year. The cost of an evaluation hereunder shall be
borne 50% by the Licensee and 50% by the University.
12. ACCOUNTING RECORDS:
12.1 The Licensee shall maintain at its principal place of business, or
such other place as may be most convenient, separate accounts and records of all
Revenues, and all business done pursuant to this Agreement, such accounts and
records to be in sufficient detail to enable proper returns to be made under
this Agreement, and the Licensee shall cause its sublicensees to keep similar
accounts and records.
12.2 The Licensee shall deliver to the University on the date 30 days
after each and every Royalty Due Date, together with the royalty payable
thereunder, the Accounting and a report on all Sublicensing activity, including
an accounting statement setting out in detail how the amount of Revenue for each
Sublicensee was determined and identifying each sublicensee and the location of
the business of each sublicensee.
15
12.3 The calculation of royalties shall be carried out in accordance with
generally accepted Canadian accounting principles ("GAA)"), or the standards and
principles adopted by the U.S. Financial Accounting Standards Board ("FASB")
applied on a consistent basis.
12.4 The Licensee shall retain the accounts and records referred to in
Article 12.1 above for at least six years after the date upon which they were
made and shall permit any duly authorized representative of the University to
inspect such, accounts and records during normal business hours of the Licensee
at the University's expense. The Licensee shall furnish such reasonable evidence
as such representative, will deem necessary to verify the Accounting and will
permit such representative to make copies of or extracts from such accounts,
records and agreements at the University's expense. If an inspection of the
Licensee's records by the University shows an under-reporting or underpayment by
the Licensee of any amount to the University, in excess of 5% for any 12 month
period, then the Licensee shall reimburse the University for the cost of the
inspection as well as pay to the University any amount found due (including any
late payment charges or interest) within 30 days of notice by the University to
the Licensee.
12.5 During the term of this Agreement and thereafter, the University
shall use reasonable efforts to ensure that ail information provided to the
University or its representatives pursuant to this Article remains confidential
and is treated as such by the University
13. INSURANCE:
13.1 Unless satisfactory arrangements are made between the Licensee and
the University with respect to a self-insurance program or the requirement for
insurance hereunder is waived by the University sixty (60) days prior to the
first sale of a Product, then the Licensee shall procure and maintain, during
the term of this Agreement the insurance outlined in Articles 13 2 and 13 3 and
otherwise comply with the insurance provisions contained at Articles 13 2 and
13.3.
13.2 One month prior to the first sale of a Product, the Licensee will
give notice to the University of the terms and amount of the public liability,
product liability and errors and omissions insurance which it has placed in
respect of the same, which in no case shall be less than the insurance which a
reasonable and prudent businessman carrying on a similar line of business would
acquire. This insurance shall be placed with a reputable and financially secure
insurance carrier, shall include the University, its Board of Governors,
faculty, officers, employees, students, and agents as additional insureds, and
shall provide primary coverage with respect to the activities contemplated by
this Agreement. Such policy shall include severability of interest and
cross-liability clauses and shall provide that the policy shall not be cancelled
or materially altered except upon at least 30 days written notice to the
University. The University shall have the right to require reasonable amendments
to the terms or the amount of coverage contained in the policy. Failing the
parties agreeing on the appropriate terms or the amount of coverage, then the
matter shall be determined by arbitration as provided for herein. The Licensee
shall provide the University with certificates of insurance evidencing such
coverage seven days before commencement of sales of any Product and the Licensee
covenants not to sell any Product before such certificate is provided and
approved by the University, or to sell any Product at any time unless the
insurance outlined in this Article 13.2 is in effect.
16
13.3 The Licensee shall require that each sublicensee under this Agreement
shall procure and maintain, during the term of the sublicense, public liability,
product liability and errors and omissions insurance in reasonable amounts, with
a reputable and financially secure insurance carrier. The Licensee shall use its
best efforts to ensure that any and all such policies of insurance required
pursuant to this Article-shall contain a waiver of subrogation against the
University, its Board of Governors, faculty, officers, employees, students, and
agents.
14. ASSIGNMENT:
14.1 The Licensee will not assign, transfer, mortgage, charge or otherwise
dispose of any or all of the rights, duties or obligations granted to it under
this Agreement without the prior written consent of the University, which
consent shall not be unreasonably withheld:
14.2 The University shall have the right to assign its rights, duties and
obligations under this Agreement to a company or society of which it is the sole
shareholder in' the case of a company or of which it controls the membership, in
the case of a society: In the event of such an assignment, the Licensee will
release, remise and forever discharge the University from any and all
obligations or covenants, provided however that such company or society, as the
case may be, executes a written agreement which provides that such company or
society shall assume all such obligations or covenants from the University and
that the Licensee shall retain all rights granted to the Licensee pursuant to
this Agreement and provided that such company or society has and is likely for
the term of this, Agreement to continue to have the resources and ability to
perform all obligations of the University hereunder.
15. GOVERNING LAW AND ARBITRATION:
15.1 This Agreement shall be governed by and construed in accordance with
the laws of the Province of British Columbia and the laws of Canada in force
therein without regard to its conflict of law rules. All parties agree that by
executing this Agreement they have attorned to the jurisdiction of the Supreme
Court of British Columbia. Subject to Articles 15.2 and 15.3. the British
Columbia Supreme-Court shall have exclusive jurisdiction over this Agreement.
15.2 In the event of any dispute arising between the parties concerning
this Agreement, its enforceability or the interpretation thereof, the same shall
be settled by a single arbitrator appointed pursuant to the provisions of the
Commercial Arbitration Act of British Columbia, or any successor legislation
then in force. The place of. arbitration shall be Vancouver, British Columbia.
The language to be used in the arbitration proceedings shall be English..
15.3 Nothing in Article 15.2 shall prevent a party hereto from applying to
a court of competent jurisdiction for interim protection such as, by way of
example, an interim injunction.
16. NOTICES:
16.1 All payments, reports and notices or other documents that any of the
parties hereto are required or may desire to deliver to any other party hereto
may be delivered only by personal delivery or by registered or certified mail,
telex or fax, all postage and other charges prepaid, at the address for, such
party set forth below or at such other address as any party may hereinafter
designate in writing to the others. Any notice personally delivered or sent by
telex or
17
fax shall be deemed to have been given or received at the time of delivery,
telexing or faxing. Any notice mailed as aforesaid shall be deemed to have been
received on the expiration of five, days after it is posted, provided that if
there shall be at the time of mailing or between the time of mailing and the
actual receipt of the notice a mail strike, slow down or labour dispute which
might affect the delivery of the notice by the mails, then the notice shall only
be effected if actually received.
If to the University: The Director University
Industry Liaison Office
University of British Columbia
IRC 331 -- 2194 Health Sciences Mall
Vancouver, British Columbia V6T IZ3
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
If to the Licensee: Chemokine Therapeutics Corp.
Suite 2200 - ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇. ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
And with a copy to: Chemokine Therapeutics Inc.
▇▇▇▇ ▇▇▇ - ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ I K3
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax:(▇▇▇) ▇▇▇-▇▇▇▇
17. TERM:
17.1 This Agreement and the license granted hereunder shall terminate on
the expiration of a term of 20 years from the Date of Commencement or the
expiration of the last patent obtained pursuant to Article 7 herein, whichever
event shall last occur unless earlier terminated pursuant to Article 18 herein.
18. TERMINATION:
18.1 This Agreement shall automatically and immediately terminate without
notice to the Licensee if any proceeding under the Bankruptcy and Insolvency Act
of Canada, or any other statute of similar purport, is commenced by or against
the Licensee:
18.2 The University may, at its option, terminate this Agreement
immediately on the happening of any one or more of the following events by
delivering notice in writing to that effect to the Licensee:
(a) if the Licensee becomes insolvent,
(b) if any execution, sequestration, or any other process of any
court becomes enforceable against the Licensee or if any such process is levied
on the rights under this
18
Agreement or upon any of the monies due to the University and is not released or
satisfied by the Licensee within 30 days thereafter,
(c) if any resolution is passed or order made or other steps taken
for the winding up, liquidation or other termination of the existence of the
Licensee,
(d) if the Licensee is more than 30 days in arrears of royalties or
other monies that are due to the University under the terms of this Agreement,
(e) if the Technology or any Improvements becomes subject to any
security interest, lien, charge or encumbrance in favour of any third party
claiming through the Licensee,
(f) if the Licensee ceases or threatens to cease to carry on its
business.
(g) if a controlling interest in the Licensee passes to any person
or persons other than those having a controlling interest at the Date of
Commencement, whether by reason of purchase of shares or otherwise, without the
prior written consent of the University, such consent not to be withheld except
as provided in Article 183,
(h) if the composition of the Board of Directors of the Licensee is
changed without the prior written consent of the University, such consent not to
be withheld except as provided in Article 18.3,
(i) if the Licensee undergoes a reorganization or any part of its
business relating to this Agreement is transferred to a subsidiary or associated
company without the prior written consent of the University, such consent not to
be withheld except as provided in Article 18.3;
(j) if the Licensee commits any breach of Articles 4.1, 11.1, 11.2
and 13,
(k) if it is determined, pursuant to Article 11.6, that the Licensee
is in breach of Article 11.4, or
(l) if any sublicensee of the Licensee is in breach of its
sublicense agreement with the Licensee and the Licensee does not cause such
sublicensee to cure such default within 30 days of receipt of written notice
from the University requiring that the Licensee cause such sublicensee to cure
such default.
18.3 The University shall not withhold its consent pursuant to Article
18.2(g), 18.2(h), or 18.2(i) unless the granting of such consent would result in
the University having a contractual relationship with an entity with whom the
University is prohibited from contracting with pursuant to its then existing
policies. ,
18.4 Other than as set out in Articles 18.1 and 18.2, if either party
shall be in default under or shall fail to comply with the terms of this
Agreement then the non-defaulting party shall have the right to terminate this
Agreement by written notice to that effect if:
19
(a) such default is reasonably curable within 30 days after receipt
of notice of such default and such default or failure to comply is not cured
within 30 days after receipt of written notice thereof, or
(b) such default is not reasonably curable within 30 days after
receipt of written notice thereof, and such default or failure to comply is not
cured within such further reasonable period of time as may be necessary for the
curing of such default or failure to comply.
18.5 if this Agreement is terminated pursuant to Article 18.1, 18.2, or.
18.4, the Licensee shall make royalty payments to the University in the manner
specified in Article 5, and 6 and the University may proceed to enforce payment
of all outstanding royalties or other monies owed to the University and to
exercise any or all of the rights and remedies contained herein or otherwise
available to the University by law or in equity, successively or concurrently at
the option of the University. Upon any such termination of this Agreement, the
Licensee shall forthwith deliver up to the University all Technology and any
University Improvements in its possession or control and shall have no further
right of any nature whatsoever in the Technology or any University Improvements.
On the failure of the Licensee to so deliver up the Technology and any
University Improvements, the University may immediately and without notice enter
the Licensee's premises and take possession of the Technology and any University
Improvements. The Licensee will pay all charges or expenses incurred by the
University in the enforcement of its rights or remedies against the Licensee
including, without limitation, the University's legal fees and disbursements on
an indemnity basis.
18.6 The Licensee shall cease to use the Technology or any University
Improvements in any manner whatsoever or to manufacture or sell the Products
within five days from the Effective Date of Termination. The Licensee shall then
deliver or cause to be delivered to the University, an accounting within 30 days
from the Effective Date of Termination. The accounting will specify, in or on
such terms as the University may in its sole discretion require, the inventory
or stock of Products manufactured and remaining unsold on the Effective Date of
Termination. The University will instruct that the unsold Products be stored,
destroyed, or sold under its direction, provided the Agreement was terminated
pursuant to Article 18.2 or 18.4. Without limiting the generality of the
foregoing, if the Agreement was terminated pursuant to Article 18.1, the unsold
Products will not be sold by any party without the prior written consent of the
University. The Licensee will continue to make royalty payments to the
University in the same manner specified in Article 5 and 6 on all unsold
Products that are sold in accordance with this Article 18.6, notwithstanding
anything contained in or, any exercise of rights by the University under Article
18.5 herein. .
18.7 Notwithstanding the termination of this Agreement, Article 12 shall
remain *in full force and effect until six years after
(a) all payments of royalty required to be made by the Licensee to
the University under this Agreement have been made by the Licensee to the
University, and
(b) any other claim or claims of any nature or kind whatsoever of
the University against the Licensee has been-settled.
20
19. MISCELLANEOUS COVENANTS OF LICENSEE:
19.1 The Licensee hereby represents and warrants to the University that
the Licensee is a corporation duly organized, existing, and in good standing
under the laws of the State of Washington and has the power, authority, and
capacity to enter into this Agreement and to carry out the transactions
contemplated by this Agreement, all of which have been duly and validly
authorized by all requisite corporate proceedings.
19.2 The Licensee represents and warrants that it has the expertise
necessary to handle the Technology and any Improvements with care and without
danger to the Licensee, its employees agents, or the public. The Licensee shall
not accept delivery of the Technology or any Improvements until it has requested
and received from the University all necessary information and advice to ensure
that it is capable of handling the Technology and any improvements in a safe and
prudent manner.
19.3 The Licensee shall comply with all laws, regulations and ordinances,
whether Federal, State, Provincial, County, Municipal or otherwise with respect
to the Technology and any Improvements and/or this Agreement.
19.4 Upon the presentation of itemized bills to the Licensee by the
University, the Licensee shall pay all reasonable legal expenses and costs
incurred by the University in respect of any consents and approvals required
from the University, including but not limited to expenses and costs in respect
of the University's review of any sublicenses to be granted by the Licensee.
19.5 The Licensee shall pay all taxes and any related interest or penalty
howsoever designated and imposed as a result of the existence or operation of
this Agreement, including, but not limited to, tax which the Licensee is
required to withhold or deduct from payments to the University. The Licensee
will furnish to the University such evidence as may be required by Canadian
authorities to' establish that any such tax has been paid. The royalties
specified in this Agreement are exclusive of taxes. If the University is
required to collect a tax to be paid by the Licensee or any of its sublicensees,
the Licensee shall pay such tax to the University on demand.
19.6 The obligation of the Licensee to make all payments hereunder will be
absolute and unconditional and will not, except as expressly set out in this
Agreement, be affected by any circumstance, including without limitation any
set-off, compensation, counterclaim, recoupment, defence or other right which
the Licensee may have against the University, or anyone else for any reason
whatsoever.
19.7 All amounts due and owing to the University hereunder but not paid by
the Licensee on the due date thereof shall bear interest in Canadian dollars at
the rate of one per cent (1 %) per month. Such interest shall accrue on the
balance of unpaid amounts from time to time outstanding from the date on which
portions of such amounts become due and owing until payment thereof in full.
21
20. GENERAL:
20.1 The Licensee shall permit any duly authorized representative of the
University during normal business hours and at the University's sole risk and
expense to enter upon and into any premises of the Licensee for the purpose of
inspecting the Products and the manner of their manufacture and generally of
ascertaining whether or not the provisions of this Agreement have been, are
being, or will be complied with by the Licensee.
20.2 Nothing contained herein shall be deemed or construed to create
between the parties hereto a partnership or joint venture. No party shall have
the authority to act on behalf of any other party, or to commit any other party
in any manner or cause whatsoever or to use any other party's name in any way
not specifically authorized by this Agreement. No party shall lie liable for any
act, omission, representation, obligation or debt of any other party, even if
informed of such act, omission, representation, obligation or debt.
20.3 Subject to the limitations hereinbefore expressed, this Agreement
shall enure to the benefit of and be binding upon the parties, and their
respective successors and permitted assigns.
20.4 No condoning, excusing or overlooking by any party of any default,
breach or nonobservance by any other party at any time or times in respect of
any covenants, provisos, or conditions of this Agreement shall operate as a
waiver of such party's rights under this Agreement in respect of any continuing
or subsequent default, breach or non-observance, so as to defeat in any way the
rights of such party in respect of any such continuing or subsequent default or
breach and no waiver shall be inferred from or implied by anything done or
omitted by such party; save only an express waiver in writing.
20.5 No exercise of a specific right or remedy by any party precludes it
from or prejudices it in exercising another right or pursuing another remedy or
maintaining an action to which it may otherwise be entitled either at law or in
equity.
20.6 Marginal headings as used in this Agreement are for the convenience
of reference only and do not form a part of this Agreement and are not be used
in the interpretation hereof.
20.7 The terms and provisions, covenants and conditions contained in this
Agreement which by the terms hereof require their performance by the parties
hereto after the expiration or termination of this Agreement shall be and remain
in force notwithstanding such expiration or other termination of this Agreement
for any reason whatsoever.
20.8 In the event that any Article, part, section, clause, paragraph, or
subparagraph of this Agreement shall be held to be indefinite, invalid, illegal
or otherwise voidable or unenforceable, the entire agreement shall not fail on
account thereof, and the balance of the Agreement shall continue in full force
and effect.
20.9 The parties hereto acknowledge that the law firm of ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ has acted solely for the University in connection with this Agreement and
that all other parties hereto have been advised to seek independent legal
advice.
22
20.10 This Agreement sets forth the entire understanding between the
parties and no modifications hereof shall be binding unless executed in writing
by the parties hereto.
20.11 Time shall be of the essence of this Agreement.
20.12 Whenever the singular or masculine or neuter is used throughout this
Agreement the same shall be construed as meaning the plural or feminine or body
corporate when the context or the parties hereto may require.
IN WITNESS WHEREOF the parties hereto have hereunto executed this
Agreement on the 22 day of September, 1999 but effective as of the Date of
Commencement.
SIGNED FOR AND ON BEHALF of
THE UNIVERSITY OF BRITISH COLUMBIA
by its duly authorized officers:
____________________________________
Authorized Signatory
____________________________________
Authorized Signatory
THE CORPORATE SEAL of
CHEMOKINE THERAPEUTICS CORP.
was hereunto affixed in the presence of:
____________________________________
Authorized Signatory
____________________________________
Authorized Signatory
23
SCHEDULE "A"
DESCRIPTION OF "TECHNOLOGY"
TECHNOLOGY: UBC File 97-0981, "Stromal Derived factor I (SDF-I)
Peptide Agonists and Antagonists"
PATENTS: Canadian Patent Application 2,226,391 filed March 13,
1998.
Canadian Patent Application 2,245,224 filed August 14,
1998.
International PCT Application No. PCT/CA99100221
"Therapeutic Chemokine Receptor Antagonists" filed March
12, 1999
International PCT Application No. PCT/CA99100750
"Therapeutic Chemokine Receptor Antagonists" filed
August 16, 1999
SCHEDULE "13"
PAYMENT SCHEDULE OF MINIMUM ANNUAL ROYALTIES
TO BE PAID BY LICENSEE
DATE OF PAYMENT AMOUNT TO BE PAID
--------------- -----------------
Year 1 $ 25,000
Year 2 $ 50,000
Year 3 $ 75,000
Year 4 $100,000
Year 5 onwards $150,000