EXHIBIT 10.3
LICENCE AGREEMENT DATED OCTOBER 14, 1999 BETWEEN
ANUTECH PTY LTD. AND PRAXIS PHARMACEUTICALS INC.
PRAXIS PHARMACEUTICALS INC.
and
ANUTECH PTY LIMITED
----------------------------------
LICENCE AGREEMENT
----------------------------------
PRAXIS Pharmaceuticals Inc.
▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇
Tel: (▇▇) ▇▇▇▇ ▇▇▇▇
Fax: (▇▇) ▇▇▇▇ ▇▇▇▇
TABLE OF CONTENTS
1. DEFINITIONS AND INTERPRETATION.......................................1
2. GRANT OF LICENCE.....................................................4
3. LICENCE CONSIDERATION................................................4
4. LICENCE TERM.........................................................4
5. PERFORMANCE OF PRAXIS................................................4
6. RIGHT TO SUBLICENSE..................................................5
7. GST..................................................................5
8. OWNERSHIP............................................................6
9. PROTECTION OF PATENTS................................................6
10. INFRINGEMENT AND ENFORCEMENT OF PATENTS..............................7
11. REPORTS, PAYMENTS AND ACCOUNTING.....................................7
12. CONFIDENTIALITY......................................................8
13. PUBLICATION..........................................................9
14. USE OF NAME..........................................................9
15. INDEMNITY AND INSURANCE..............................................9
16. WARRANTIES..........................................................10
17. ASSIGNMENT, TRANSFER................................................11
18. TERMINATION.........................................................11
19. MISCELLANEOUS PROVISIONS............................................12
20. TERMINATION OF LICENCE AND RESEARCH & DEVELOPMENT AGREEMENT.........15
21. SCHEDULE 1 - ANU Intellectual Property..............................17
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
THIS AGREEMENT IS MADE ON THE 14TH DAY OF OCTOBER 1999
BETWEEN:
ANUTECH PTY LIMITED, ACN 008 548 650 with its registered office at
ANUTECH Court, Cnr ▇▇▇▇▇ Drive and ▇▇▇▇▇ Road, Acton, Australian
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ("ANUTECH").
AND:PRAXIS PHARMACEUTICALS INC., a company incorporated in Utah with its office
at ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇, ▇▇▇▇▇▇ ("Praxis").
RECITALS:
A. Praxis was incorporated on 20 June 1997 with the intention that it raise
capital, acquire intellectual property and research, develop and
commercialise pharmaceuticals.
B. ANU possesses intellectual property in the area of phosphosugars and
their analogues as anti-inflammatory agents.
C. Praxis wishes to license the ANU intellectual property in order to
undertake further research and development and commercialisation of the
intellectual property.
D. In accordance with the terms and conditions set forth in this agreement,
ANUTECH is willing to grant such a licence to Praxis with its term
dependant on Praxis achieving research and commercialisation milestones.
E. ANUTECH is the commercial subsidiary of the ANU and regularly provides
services to its clients by engaging the services of the ANU.
IT IS AGREED AS FOLLOWS:
DEFINITIONS AND INTERPRETATION
1.1 In this Agreement, unless there is something inconsistent with the
context, the following terms and expressions shall have the following
meanings:
"AFFILIATE" means, in relation to a person, the person's related bodies
corporate (within the meaning of the Corporations Law), entities who are
partners or joint venturers of or trustees for the person or with whom
the person is acting in concert and the directors agents, officers and
employees of the person or any of those related bodies corporate or
entities.
"ANU INTELLECTUAL PROPERTY" means the following intellectual property
owned by the ANU:
(a) Intellectual Property in relation to phosphosugars and their
anti-inflammatory activity; and
(b) the patents and patent applications set out in Schedule 1, including
all divisions, continuations, continuations-in-part, renewals,
extensions and additions thereof.
"COMMENCEMENT DATE" means the day of 1999.
"CONFIDENTIAL INFORMATION" means any information whether written, oral,
electronic or in any other form which is disclosed by a party or its
representatives, is claimed as
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
confidential to itself and which relates to the ANU Intellectual
Property, Research, Results, Products, Agreement and business of the
parties. It includes all copies and notes generated from the disclosure
but does not include information which:
(a) is in the public domain at the time of disclosure;
(b) becomes a part of the public domain after disclosure, otherwise than
as a result of any unauthorised activity and/or omission on the part
of the recipient;
(c) the recipient can prove is already in its own possession at the time
of disclosure and which was not acquired from the other party
directly or indirectly;
(d) is rightfully acquired from a third party who did not obtain it
under an obligation of confidentiality; or
(e) is legally required to be disclosed - the party required to make
disclosure shall notify the other to allow that party to assert
whatever exclusions are available.
"DOLLAR", "DOLLAR" OR "$" means Australian dollars unless otherwise
indicated.
"FIELD" means the use of phosphosugars as neutriceuticals, complementary
medicines or cosmetics for the treatment of any applicable condition and
expressly excludes:
(a) the use of phosphosugars as ethical therapeutics; and
(b) topical application for wound care; and
(c) use of fructose-1,6-diphosphate, administered non-topically, for the
treatment or prophylaxis of ischaemic disorders in humans, which
includes transplantation and immunosuppression.
"GST" means a tax on goods and services as defined by Commonwealth
legislation.
"INTELLECTUAL PROPERTY" shall mean all intellectual property rights and
includes:
(a) Trade Marks: means any trade ▇▇▇▇ or trade name whether registered
or not under, or by reference to which, a product or service is
known;
(b) Patents: meaning any patents or patent applications including all
divisions, continuations, renewals, extensions and patents of
addition thereof which have been or are in the future filed and
granted as a patent;
(c) Copyright subsisting in any form or manner whether written or stored
in any form (whether visible or not) including without limitation
brochures, design logos, insignia, computer programs, software,
firmware and hardware;
(d) Designs (whether or not registered); and
(e) Know-How: meaning the unpatented, technical information, processes,
formulae, technical and technological documentation, reports,
computer programs, biological materials, procedures or methods, all
current and accumulated knowledge, skills and experience.
"NET SALES" means:
(a) for an arms length sale of any Product means the gross amount
invoiced by Praxis, or its Affiliates less the following:
(i) transport and insurance related charges actually allowed and
taken;
(ii) trade, quantity or cash discounts or rebates actually
allowed and taken;
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
(iii)credits or allowances given or made on account of price
adjustments, recalls or destruction requested or made by an
appropriate government agency; and
(iv) any tax (excluding income tax), excise or other government
charge upon or measured by the sale, transportation,
delivery or use of the Product which is actually incurred by
the seller.
(b) for a non-arms length sale, means the highest of the most recent
Net Sales at which Praxis, its Affiliates, its subsidiaries,
joint venturers licensees or agents has sold similar quantities
of Products in an arms length sale.
"PRODUCTS" means any matter, article or thing which incorporates or
arises from the whole or partial use of ANU Intellectual Property or
Results.
"RESULTS" means all Intellectual Property, materials (including
substances, compounds, biological material, products, samples and
devices) in whatever form and information however known or recorded
(including trade secrets, processes, techniques, designs, plans, data,
test results, findings, evaluations and reports) generated as a result
of any exploitation of or in any connection with any research and
development conducted at the ANU within the Field.
"SUBLICENSE FEES" means all payments to Praxis in consideration for
rights to the ANU Intellectual Property, Results and Products pursuant
to a sublicence, assignment, joint venture, strategic alliance or other
arrangement.
Sublicence Fees shall not include:
(a) fees for research and development undertaken by Praxis including for
example preclinical research and clinical studies; nor
(b) the royalty percentage above that is required to be paid by Praxis
pursuant to clause 3 (License Consideration).
1.2 In this Agreement unless the contrary intention appears:
(a) a reference to a clause, schedule, attachment, annexure or appendix
is a reference to a clause of or schedule, attachment, annexure or
appendix to this Agreement and references to this Agreement include
any recital, schedule annexure, attachment, or appendix;
(b) a reference to this Agreement or another instrument includes any
variation or replacement of either of them;
(c) a reference to a statute, ordinance, code or other law includes
regulations and other instruments under it and consolidations,
amendments, re-enactments or replacements of any of them;
(d) the singular includes the plural and vice versa;
(e) if a period of time is specified and dates from a given day or the
day of an act or event, it is to be calculated exclusive of that
day;
(f) if an event must occur on a stipulated day which is not a business
day, then the stipulated day will be taken to be the next business
day;
(g) headings are inserted for convenience and do not affect the
interpretation of this Agreement;
(h) words importing any one gender shall mean and include masculine,
feminine and/or neuter where appropriate;
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
(i) words importing natural persons shall (where appropriate) mean and
include corporations and unincorporated associations and vice versa;
(j) schedules and attachments form part of and are incorporated in this
Agreement.
(k) no provision of this Agreement will be construed adversely to a
party solely on the ground that the party was responsible for the
preparation of this agreement or that provision; and
(l) an expression importing a natural person includes any company,
partnership, joint venture, association, corporation or other body
corporate and any government, governmental, administrative, judicial
or semi-governmental agency or body.
1.3 For the avoidance of doubt the recitals to this Agreement shall form
part of this Agreement and in the event of any inconsistency between the
recitals and the other provisions of this Agreement the other provisions
of this Agreement shall prevail.
GRANT OF LICENCE
1.4 ANUTECH grants to Praxis an exclusive, worldwide licence to use and
exploit the ANU Intellectual Property and Results within the Field,
including the right to sublicense pursuant to clause 6 (Right to
Sublicense).
LICENCE CONSIDERATION
1.5 In consideration for the grant of the licence Praxis will pay to ANUTECH:
a) a 4% royalty on Net Sales of Products by Praxis;
b) 50% of all royalty income on Net Sales of Products received from
sublicensees;
c) 15% of all Sublicence Fees.
d) ANUTECH shall maintain the right to hold 300,000 shares issued to
ANUTECH 31 March 1999. These shares will be held in escrow for a
period of 12 months from the date of issue.
1.6 The obligation in clause 3.1 survives the termination of the licence in
clause 2.1 or this Agreement.
LICENCE TERM
1.7 The Licence in clause 2.1 commences upon the Commencement Date and ends
on the expiration of the last to expire of the patents covered by this
Agreement, unless otherwise earlier terminated pursuant to clause 5
(Performance of Praxis) or clause 18 (Termination).
PERFORMANCE OF PRAXIS
1.8 If Praxis fails to comply with the following performance milestones,
ANUTECH has at its election the right to terminate this Agreement in
accordance with clause 18(Termination).
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.9 Commercialisation milestones
a) Praxis shall use best efforts to commercialise the ANU Intellectual
Property and Results by undertaking an ongoing and active research,
developmental, manufacturing, marketing, licensing or capital
raising program, as appropriate, directed toward the exploitation of
the ANU Intellectual Property and Results within the Field.
b) Part of these best efforts includes Praxis providing to ANUTECH as
soon as practicable a business plan (and any updates thereafter)
which addresses Praxis's capacities, objectives and strategies for
such a commercialisation program.
c) Praxis shall also provide ANUTECH with an annual written report (on
the anniversary of the Commencement Date) on its progress towards
achieving these commercialisation milestones.
RIGHT TO SUBLICENSE
1.10 ANUTECH grants to Praxis the right to sublicence ANU Intellectual
Property and Results within the Field, subject to:
a) the prior written approval of ANUTECH which shall not be
unreasonably withheld;
b) the sublicensee being bound to similar terms as contained in this
Agreement; and
c) the royalty and Sublicence Fee stream provided for in clause 3
(Licence Consideration) are reserved.
GST
1.11 The parties acknowledge that this Agreement, including all pricing and
compensation terms, whether by way of reimbursement, indemnity or
otherwise has been drafted without taking into account the effect, if
any, of GST. The following principles apply when determining the amount
(including royalties) payable (the Payment) for any rights, services, or
any other thing granted or supplied pursuant to this Agreement.
1.12 If GST is payable in relation to the granting of rights, supply of
services or any other thing, the Payment will be the consideration
specified herein plus GST (if any).
1.13 If the Payment is determined by reference to any cost, expense or
liability incurred by a party (the Payee), the reference to cost,
expense or liability means the actual amount incurred by the Payee less
the amount of any GST input tax credit the Payee is entitled to claim in
respect of that cost, expense or liability. The Payee will be assumed to
be entitled to claim full input tax credits unless it demonstrates that
its entitlement is otherwise prior to the date on which the Payment must
be made.
1.14 If the Payment is a reimbursement or indemnification of a loss
determined (including a percentage of sales revenue) by reference to
revenue received and costs incurred, the revenue will be the revenue
earned net of GST and the costs will be determined in accordance with
clause 7.3.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.15 If a party sets off an amount otherwise payable under this Agreement,
the principles set out above shall be applied to calculate the amount to
be set off as if that amount had been paid.
1.16 Each party agrees to do all things, including providing invoices or
other documentation containing stipulated information, that may be
necessary or desirable to enable or assist the other party to claim any
credit, set off, rebate or refund in relation to any GST included in any
payment made under this Agreement.
OWNERSHIP
1.17 The following shall be owned by the ANU and licensed to Praxis pursuant
to the terms of this Agreement:
a) improvements to ANU Intellectual Property ; and
b) new patents and patent applications arising from the use of ANU
Intellectual Property.
PROTECTION OF PATENTS
1.18 With respect to the existing ANU Intellectual Property patents and
patent applications:
a) the parties shall cooperate in the prosecution and maintenance of
the patents and patent applications with the relevant patent
offices;
b) from the Commencement Date, one third of any past and future costs
and expenses incurred in their filing, maintenance and renewal shall
be borne by Praxis;
c) Praxis may select the countries in which patent applications are to
be filed in the name of the ANU; and
d) if Praxis decides not to request patent protection for an invention
in any country, ANU may file or maintain at its own cost patent
applications which Praxis has declined to file or maintain, and such
patent applications or granted patents shall lie outside the
provision of this Agreement.
1.19 With respect to any new patentable inventions arising from the Results
and use of ANU Intellectual Property:
a) Praxis may request ANUTECH to file and prosecute a patent
application, in ANU's name, for the invention or agree to treat the
invention as a trade secret;
b) the parties shall cooperate in the prosecution and maintenance of
the patents and patent applications with the relevant patent
offices;
c) all costs and expenses incurred in filing, maintaining and renewing
the patents and patent applications shall be borne by Praxis; d)
Praxis may select the countries in which patent applications are to
be filed in the name of the ANU; and
e) if Praxis decides not to request patent protection for an invention
in any country, ANU may file or maintain at its own cost patent
applications which Praxis has declined to file or maintain, and such
patent applications or granted patents shall lie outside the
provision of this Agreement.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
INFRINGEMENT AND ENFORCEMENT OF PATENTS
1.20 Infringement
In the event of any patent, the subject of this Agreement, being
infringed Praxis may at its own cost and in its own name litigate such
infringement and may settle or compromise such litigation in such a
manner as Praxis shall determine provided that Praxis shall consult with
ANUTECH in good faith in relation to those proceedings.
1.21 Enforcement
In the event that litigation is taken or threatened by a third party
against any rights associated with any patents the subject of this
Agreement, the parties shall consult in good faith and use their best
endeavours mutually to determine the manner in which these proceedings
are to be defended or resisted and to act accordingly provided always
that the parties shall first seek the opinion of counsel experienced in
such matters.
1.22 In any litigation, ANUTECH shall cooperate with Praxis in making
available all relevant records, papers, information and the like which
may be relevant and in its possession.
1.23 Nothing herein shall preclude ANUTECH from defending or pursuing any
such actions.
REPORTS, PAYMENTS AND ACCOUNTING
1.24 Within 30 days after the first day of January, April, July and October
of each year, Praxis shall provide to ANUTECH a true and accurate
royalty report. This royalty report will cover payments due under clause
3 (Licence Consideration) and specify:
a) the total quantity of Products sold or provided by it and by its
sublicensees;
b) the Net Sales price at which the Products were sold or provided;
c) the calculation of the royalty due;
d) the total royalties so calculated and due to ANUTECH; and
e) the amount of Sublicence Fees and the royalty due.
1.25 For the term of this Agreement and simultaneous with the delivery of
each such royalty report, Praxis shall pay to ANUTECH the royalty and
any other payments due under this Agreement for the period covered by
such report.
Praxis shall be responsible for all payments that are due to ANUTECH but
have not been paid by Praxis' sublicensees to Praxis.
1.26 All payments hereunder by Praxis shall be payable in Australian Dollars.
1.27 During the term of this Agreement, Praxis shall keep complete and
accurate records of its and its sublicensees sales of Products and
Sublicence Fees in sufficient detail to enable compliance with its
obligations under this Agreement to be verified.
1.28 Praxis shall permit ANUTECH or its representatives, at ANUTECH's
expense, to periodically examine its books, ledgers and records during
business hours and with 48 hours notice for the purpose of and to the
extent necessary to ensure that Praxis has complied, and is complying,
with its obligations under this Agreement.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.29 In the event that the difference between the amount of royalty due and
the amount of royalty actually paid exceeds 5% then Praxis shall pay the
amount of the underpayment plus the cost of such examination.
1.30 If Praxis fails to pay ANUTECH an amount due under this Agreement,
Praxis shall upon notification pay to ANUTECH the amount owing together
with interest, such interest to be at the rate applicable to overdrafts
charged by the Commonwealth Bank of Australia at the date of payment,
calculated daily from the due date or the date the shortfall in payment
was effective, as the case may be. The payment of such interest shall
not preclude ANUTECH from exercising any other rights it may have
because any payment is overdue.
CONFIDENTIALITY
1.31 The parties acknowledge that the Confidential Information is valuable to
the party in question and each party undertakes to keep the Confidential
Information secret and to protect and preserve the confidential nature
and secrecy of the Confidential Information.
1.32 The recipient of Confidential Information must:
1.33 keep it confidential;
1.34 use it only for the purposes of the Agreement; 1.35 not disclose it to
any person other than:
(a) to those of the recipient's employees or legal advisers who have a
need to know and who have first been directed and have undertaken
orally or in writing to keep it confidential; or
(b) to other people, such as contractors, visitors and agents who have a
need to know and who have agreed in writing to keep it confidential
in accordance with this Agreement
1.36 not copy it or any part of it other than as strictly necessary for the
purposes of this Agreement and must ▇▇▇▇ any such copy "Confidential";
1.37 promptly comply with any request by the discloser to return or destroy
any or all copies of Confidential Information; and
1.38 implement security practices against any unauthorised copying, use or
disclosure of the Confidential Information.
1.39 Each party shall take:
a) reasonable efforts to ensure that any person who has access to
Confidential Information does not make any unauthorised use,
reproduction or disclosure of that information; and
b) reasonable steps to enforce the confidentiality obligations imposed
or required to be imposed by this agreement, including diligently
prosecuting at its cost any breach or threatened breach of such
confidentiality obligations by a person to whom it has disclosed
Confidential Information and, where appropriate, making applications
for interim or interlocutory relief.
1.40 The provisions of this clause 12 shall continue to have effect for a
period of four (4) years after termination or expiry of this Agreement.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.41 Upon the termination or expiry of this agreement the recipient of
Confidential Information shall deliver (or with the discloser's prior
consent, destroy or erase) to the discloser all material forms of
Confidential Information in its or its representatives possession, power
or control. The return of Confidential Information under this clause
does not release either party or their representatives from their
confidentiality obligations under this clause.
PUBLICATION
1.42 If ANUTECH or its employees or agents wish to publish or otherwise
disclose any information contained in the ANU Intellectual Property or
Results, other than in accordance with clause 12 (Confidentiality),
including by way of written disclosure or any oral disclosure at any
seminar, lecture or other meeting ("Publication"), the following
procedures shall be observed:
(a) ANUTECH shall submit the Publication to Praxis 30 days prior to
disclosure;
(b) within the 30 day period Praxis will consider whether to agree to
the Publication and shall advise ANUTECH what part (if any) of the
information it does not wish published;
(c) if Praxis does not advise ANUTECH within the 30 day period that it
objects to the Publication it shall be deemed to have consented to
the Publication;
(d) if Praxis does advise ANUTECH of its objection then the information
in question will not be published:
(i) until the date upon which the complete Australian specification
in relation thereto becomes open to public inspection at the
Australian Patents Office; and
(ii) in the case of information which is not patentable or which it
is not proposed to patent, for so long as further confidential
research or development work or potential or actual commercial
exploitation is being actively pursued in relation thereto but in
any case not to exceed 2 years;
(e) where appropriate, ANUTECH will make proper acknowledgment of
Praxis.
USE OF NAME
1.43 Any proposed use of a party's name by the other in any published
material (including prospectus information) must be approved by the
other party in writing prior to release of that published material.
INDEMNITY AND INSURANCE
1.44 Praxis hereby agrees to defend, indemnify and hold harmless ANUTECH, ANU
and their employees from and against any and all demands, claims,
liabilities, damages, costs and expenses which may be brought against or
incurred by ANUTECH, ANU and their employees as a result of the use to
which Praxis or its sublicensees make of the ANU Intellectual Property,
Results and Products the subject of the licence granted in this
Agreement, other than to the extent (if any) that the same are caused
solely by the gross negligence of ANUTECH, ANU or of any of their
employees.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
The indemnity above shall also apply to actions that may arise out of
the capital raising that Praxis undertakes for the purposes of this
Agreement.
1.45 From the date that any Product arising out of the ANU Intellectual
Property is first applied for human use (and for the term or foreseeable
term of the human use) Praxis undertakes to hold product liability
insurance to the value of at least $5,000,000.00 .
1.46 Praxis shall at all times maintain in full force and effect general
liability insurance with limits of not less than $5,000,000.00.
1.47 Such policies shall name ANUTECH and the ANU as additional insureds and
shall be purchased from a reputable insurer. Certificates evidencing the
coverage shall be provided to ANUTECH.
WARRANTIES
1.48 Right to enter Agreement
Each Party hereby warrants to the other that it has the full right,
power, authority and liberty to enter into this Agreement and to perform
all of its respective duties and obligations hereunder. Each party
warrants to the other that it is not under any other duty or obligation
which is contrary to or inconsistent with any of its duties and
obligations hereunder.
1.49 No contrary agreements
Each party hereby warrants to the other that it will not enter into any
agreement, arrangement or understanding with any third party which is
contrary to or inconsistent with any of that party's rights, duties and
obligations under this Agreement.
1.50 Status of ANUTECH
ANUTECH warrants and covenants that it enters into this Agreement as
agent for and on behalf of ANU having full power and authority so to do,
and with the express consent of ANU, to the intent that each and every
of the warranties, covenants, terms and conditions of this Agreement are
given by and bind both ANUTECH in its own right and ANU.
1.51 Due diligence
Praxis warrants that it has undertaken a due diligence examination of
the ANU Intellectual Property licensed in this agreement and warrants
that it satisfied itself as to ANU's rights to and the validity of the
ANU Intellectual Property, in particular the patents and patent
applications set out in Schedule 1.
1.52 ANU Intellectual Property
To the best of its knowledge ANUTECH warrants and covenants that in
respect of ANU Intellectual Property either:
(a) ANU is the sole legal and beneficial owner; or
(b) ANU has such rights to the ANU Intellectual Property, as will enable
ANUTECH to perform its obligations under this Agreement.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
ANUTECH makes no warranty as to whether the US Patent 5520926 (and
corresponding international patents or applications) in the name of
British Technology Group Limited infringes the ANU Intellectual
Property.
1.53 Results achieving purpose
ANUTECH makes no representations or warranties as to the accuracy or
completeness of the Results generated by ANUTECH, or their capability to
achieve a particular purpose.
1.54 Fundamental Terms
Each party acknowledges that the warranties contained in this clause 16
(Warranties) are fundamental terms of this Agreement.
ASSIGNMENT, TRANSFER
1.55 This Agreement may not be assigned or otherwise transferred by Praxis
without the prior written consent of ANUTECH. An assignment is deemed to
include a change in greater than 50% beneficial ownership of shares in
Praxis with the exception of such a change in share holding in Praxis
through capital raising.
1.56 Any permitted assignee shall assume all obligations of its assignor
under this Agreement.
1.57 No assignment shall relieve Praxis of responsibility for the performance
of any accrued obligation(s) which Praxis then has hereunder.
TERMINATION
1.58 A party may terminate this Agreement upon 30 days written notice to the
other party on the occurrence of any of the following by the other
party:
a) upon or after the bankruptcy, insolvency, dissolution or winding up
of such party (other than dissolution or winding up for the purposes
of reconstruction or amalgamation); or
b) the failure of such party to comply with its obligations under this
agreement, if such default is not cured (if capable of being cured)
within 30 days of the party not in default giving notice of the
default; or
c) if the representations and warranties made under this Agreement
prove inaccurate or false in any material respect.
1.59 Without limiting clause 18.1 (b), ANUTECH may terminate this Agreement
upon 30 days written notice to Praxis in the event Praxis:
a) fails to make any payment which is due and payable pursuant to this
Agreement and such payment remains unpaid for more than 30 days; or
b) fails to achieve any of the performance milestones in accordance
with clause 5 and is demonstrated not to be making best efforts in
attempting to achieve these milestones and such default is not cured
(if capable of being cured) within 90 days of ANUTECH giving notice
of the default.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.60 The provisions of this clause 18 and clauses 3.1 (Licence Consideration)
12 (Confidentiality), 11 (Reports, Payments and Accounting), 15
(Indemnity and Insurance, 19.12 (Governing Law) and19.9 (Dispute
Resolution) shall continue in full force and effect notwithstanding the
termination, any alterations or additions to the other provisions of
this Agreement.
1.61 Upon termination of this Agreement and except as otherwise expressly
provided:
a) any rights or obligations of a party which may have arisen or
accrued prior to termination shall not be affected;
b) all licences granted to Praxis under the terms of this Agreement
shall terminate and Praxis shall cease its exploitation of the
relevant intellectual property other than provided for in clause
18.4 (d);
c) Praxis shall promptly pay to ANUTECH any amounts due under the terms
of this Agreement including royalties and Sublicence Fees which have
accrued as of the date of termination; d) Praxis may sell all
inventory of the Product that it may have on hand at the date of
termination provided that it pays royalties as provided in this
Agreement.
1.62 If any party terminates the Agreement and sublicensees are not then in
default under the terms of their sublicence agreements hereunder,
ANUTECH shall have the right (but not the obligation) to assume and
continue sublicence agreements with payments thereunder being made by
the sublicensees directly to ANUTECH without any further obligations on
the part of Praxis with respect thereto.
1.63 Waiver by either party of any breach (or a succession of breaches) of
any one or more of the provisions of this Agreement shall not deprive
such party of any right to terminate this Agreement pursuant to the
terms of this clause 18 upon the occasion of any subsequent breach.
MISCELLANEOUS PROVISIONS
1.64 Binding obligations
The duties and obligations imposed and the benefits conferred by this
Agreement are to be binding upon and to enure to the parties and to
their respective successors and permitted assigns.
1.65 Other instruments
Each party shall prepare and execute such other instruments and
documents and do such other acts and things as may be necessary or
desirable to ensure each party has such rights and interest as are
contemplated for it by this Agreement or as may be necessary or
desirable to give full effect to the provisions of this Agreement.
1.66 Whole Agreement
This Agreement combines the whole understanding of the Parties relating
to its subject matter and it supersedes and cancels any and all
agreements, understandings or commitments made by the same Parties with
respect to the same subject matter. Any purported representations,
warranties or other promises of the Parties not recorded in it are of no
effect.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.67 Amendment
The variation or waiver of a provision of this Agreement or a Party's
consent to a departure from a provision by another Party, will be
ineffective unless in writing executed by the Parties. The requirements
concerning variation or waiver apply to this clause itself.
1.68 No waiver
No waiver by either party of any breach (or a succession of breaches) of
any one or more of the provisions of this Agreement by the other party
shall be deemed to be a waiver of any subsequent breach of the same or
any other provision.
1.69 Illegality
If any provision of this Agreement shall be construed so as to be
illegal or invalid the legality or the validity of any other provision
shall not be affected thereby. Any legal or invalid provisions shall be
severable and all other provisions shall remain in full force and
effect.
1.70 Notices
A party notifying or giving notice under this Agreement must notify
(a) in writing;
(b) addressed to the address of the recipients specified below or as
altered by notice given in accordance with this clause; and
(c) delivered by hand, facsimile, registered mail or post.
A notice shall be deemed received:
(a) if hand delivered on the date of delivery
(b) if sent by facsimile on generation of an acknowledgment that the
transmission has been successfully completed,
(c) if sent by registered mail on acknowledgment of receipt by or on
behalf of the recipient
(d) if dispatched by post, after 5 days including day of posting.
If a notice is received on a day other than a business day or after 4.30
pm on a business day, then it is deemed received on the next business
day.
Notice addresses
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc.
GPO ▇▇▇ ▇ ▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇
or
ANUTECH Court
Cnr. ▇▇▇▇▇ Drive and ▇▇▇▇▇ Road and
ACTION ▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
Facsimile 02 6257 1433 BC, Canada
Facsimile: ▇ (▇▇▇)▇▇▇ ▇▇▇▇
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
1.1 Force Majeure
No party shall be responsible or liable to any other party for, nor
shall this Agreement be terminated as a result of any party's failure to
perform any of its obligations hereunder, with the exception of payment
of monies due and owing, if such failure results from circumstances
beyond the control of such party, including, without limitation,
requisition by any government authority or the effect of any statute,
ordinance or governmental order or regulations, wars, strikes, lockouts,
riots, epidemic disease, act of god, civil commotion, fire, earthquake,
storm, failure of public utilities, common carriers or suppliers, or any
other circumstances, whether or not similar to the above causes. The
parties shall use reasonable efforts to avoid or remove any such causes
and shall resume performance under this Agreement as soon as feasible
whenever such cause is removed; provided however that the foregoing
shall not be construed to require a party to settle any labour dispute
or to commence, continue or settle any litigation.
If after six months the force majeure continues, the Parties must meet
in good faith to discuss the situation and endeavour to achieve a
mutually satisfactory resolution of the problem.
1.2 Dispute resolution
If a dispute arises between the Parties out of or relating to this
Agreement (the "Dispute"), any Party seeking to resolve the Dispute must
do so strictly in accordance with the provisions of this clause.
Compliance with this clause is a condition precedent to seeking relief
in any court or tribunal in respect of the Dispute.
A Party seeking to resolve the Dispute must notify the existence and
nature of the Dispute to the other Party ("the Notification"). Upon
receipt of a Notification the Parties must refer resolution of the
Dispute to their respective chief executive officers or their nominees.
If the Dispute has not been resolved within thirty (30) days of receipt
of the Notification then any Party may refer the Dispute to the
Australian Commercial Dispute Centre Limited ("ACDC") for mediation. The
parties must negotiate in good faith, and in accordance with the
Conciliation Rules of ACDC, to resolve the Dispute.
If the Dispute has not been resolved within sixty (60) days of referral
to ACDC either Party is free to initiate proceedings in a court.
1.3 Stamp Duty
All stamp duty levied upon this agreement shall be paid by Praxis.
1.4 Costs
Each Party agrees to bear its own legal and other costs and expenses in
connection with the preparation and execution of this Agreement and of
other related documentation.
1.5 Governing law
This Agreement shall be construed in accordance with and governed by the
laws of the Australian Capital Territory, Australia, and the parties
hereby submit themselves to the jurisdiction of the courts in and of
that Territory.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
TERMINATION OF LICENCE AND RESEARCH & DEVELOPMENT AGREEMENT
1.6 The parties entered into a Licence and Research & Development Agreement
dated 27 October 1997 and an Addendum to the Licence and Research &
Development Agreement dated 8 October 1998 ("Licence and R&D
Agreement").
1.7 The parties have agreed to end the Licence and R&D Agreement by mutual
agreement with effect from the Commencement Date of this Agreement.
1.8 With effect from the Commencement Date of this Agreement:
(a) the parties agree that the Licence and R&D Agreement is terminated;
and
(b) each party permanently releases each other party from any actions,
suits, causes of action, arbitration, debts, dues, costs, claims,
demands, verdicts and judgments, either at law or in equity or
arising under statute ("Claims") which but for their entry into this
termination, they or any of them have or may have against each other
arising from or in connection with the early termination of the
Licence and R&D Agreement.
1.9 Each party must:
(a) use its best efforts to do all things necessary or desirable to give
full effect to this termination; and
(b) refrain from doing anything that might hinder performance of this
termination.
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
IN WITNESS: this Agreement shall be duly executed and shall commence from the
Commencement Date:-
The COMMON SEAL of )
PRAXIS PHARMACEUTICALS INC )
was hereunto affixed in accordance )
with its constitution in the presence of: )
/S/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ /S ▇.▇. ▇▇▇▇▇▇
Director/Secretary Director
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇.▇. ▇▇▇▇▇▇
Name Name
The COMMON SEAL of )
ANUTECH PTY LIMITED )
was hereunto affixed in accordance )
with its constitution in the presence of: )
/S/ ▇. ▇▇▇▇▇▇▇▇▇ /S/ ▇▇▇▇ ▇. ▇▇▇▇
Director/Secretary Director
▇. ▇▇▇▇▇▇▇▇▇
COMPANY SECRETARY ▇▇▇▇ ▇. ▇▇▇▇
ANUTECH PTY LTD MANAGING DIRECTOR
Name Name
--------------------------------------------------------------------------------
ANUTECH Pty Ltd Praxis Pharmaceuticals Inc
SCHEDULE 1 - ANU INTELLECTUAL PROPERTY
PHOSPHOSUGAR-BASED ANTI-INFLAMMATORY AND/OR IMMUNOSUPPRESSIVE DRUGS
o International Application No. PCT/AU89/00350
o Inventors - ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
o Priority date - 18 August 1988 o International filing date - 18 August 1989 o
ANUTECH reference 140
COUNTRY APPLICATION NO. PATENT NO. STATUS
Australia 41875/89 627500 granted
Europe 89909685.3 0429522 granted
Japan 509079/89 request examination
USA 988001 5506210* granted
USA-continuation discontinued
* date of grant = 9 April 1996
NOVEL PHOSPHOSUGARS AND PHOSPHOSUGAR-CONTAINING COMPOUNDS HAVING
ANTIINFLAMMATORY ACTIVITY
o Inventors - ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
o Priority date - 18 October 1996
o ANUTECH reference 278
COUNTRY APPLICATION NO. PATENT NO. STATUS
Australia PO3098/96
INT on 18 October 1997