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Exhibit 10.7
LICENSE AGREEMENT
TABLE OF CONTENTS
PREAMBLE
ARTICLES:
I DEFINITIONS
II GRANT
III DUE DILIGENCE
IV ROYALTIES
V REPORTS AND RECORDS
VI PATENT PROSECUTION
VII INFRINGEMENT
VIII PRODUCT LIABILITY
IX EXPORT CONTROLS
X NON-USE OF NAMES
XI ASSIGNMENTS
XII ARBITRATION
XIII TERMINATION
XIV PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
XV MISCELLANEOUS PROVISIONS
This Agreement is made and entered into this 14th day of October,
1993 (the effective Date), by and between CHILDREN'S MEDICAL CENTER CORPORATION,
a corporation duly organized and existing under the laws of the Commonwealth of
Massachusetts and having its principal office at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇, ▇.▇.▇. (hereinafter referred to as CMCC), and Medical
Science Partners a partnership duly organized under the laws of the Commonwealth
of Massachusetts and having its principal office at ▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter referred to as LICENSEE).
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WITNESSETH
WHEREAS, CMCC is the owner of certain "Patent Rights" (as later
defined herein) relating to CMCC Case No. 263 Treatment of Vesico-ureteral
Reflux by Drs. ▇▇▇▇▇▇▇ ▇▇▇▇▇ and ▇▇▇▇▇ ▇▇▇▇▇▇▇ and has the right to grant
licenses under said Patent Rights, (subject only to a royalty-free, nonexclusive
license heretofore granted to the United States Government);
WHEREAS, CMCC desires to have the Patent Rights utilized in the
public interest and is willing to grant a license thereunder;
WHEREAS, LICENSEE has represented to CMCC, to induce CMCC to enter
into this Agreement, that LICENSEE is capable of the development, production,
manufacture, marketing and sale of products similar to the "Licensed Product(s)"
(as later defined herein) and/or the use of the "Licensed Process(es)" (as later
defined herein) and that it shall commit itself to a thorough, vigorous and
diligent program of exploiting the Patent Rights so that public utilization
shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the Patent Rights
upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants herein, the parties hereto agree as follows:
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ARTICLE I -- DEFINITIONS
For the purpose of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall mean Medical Science Partners , any Subsidiary
or joint venture of Medical Science Partners , or any entity
formed by Medical Science Partners.
1.2 "Subsidiary" shall mean any corporation, company or other
entity more than fifty percent (50%) of whose voting stock is
owned or controlled directly or indirectly by LICENSEE.
1.3 "Patent Rights" shall mean all of the following CMCC
intellectual property:
a. The United States and foreign patents and/or patent
applications listed in Appendix A;
b. United States and foreign patents issued from the
applications listed in Appendix A and from divisionals and
continuations of these applications;
c. Claims of U.S. and foreign continuation-in-part
applications, and of the resulting patents, which are
directed to subject matter specifically described in the
U.S. and foreign applications listed in Appendix A;
d. Claims of all later filed foreign patent applications, and
of the resulting patents, which are directed to subject
matter specifically described in the United States patent
and/or patent applications described in (a) , (b) , or (c)
above;
e. Any reissues of United States patents described in (a), (b),
(c), or (d) above.
1.4 A "Licensed Product" shall mean any product or part thereof
which:
a. Is covered in whole or in part by an issued, unexpired claim
or a pending claim contained in the Patent Rights in the
country in which any Licensed Product is made, used, or
sold;
b. Is manufactured by using a process which is covered in whole
or in part by an issued, unexpired claim or a pending claim
contained in the Patent Rights in the country in which any
Licensed Process is used or in which the Licensed Product is
used or sold.
1.5 A "Licensed Process" shall mean any process which is covered in
whole or in part by an issued, unexpired
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claim or a pending claim contained in the Patent Rights.
1.6 "Net Sales Price" shall mean LICENSEE's ▇▇▇▇▇▇▇▇ for Licensed
Products produced hereunder less the sum of the following:
a. Discounts allowed in amounts customary in the trade;
b. Sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales;
c. Outbound transportation prepaid or allowed; and
d. Amounts allowed or credited on returns. No deductions shall
be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by
LICENSEE and on its payroll, or for cost of collections.
Licensed Products shall be considered "sold" when bills or
invoices are collected.
1.7 "Field of Use" shall mean the use of the detachable balloon
catheter for the treatment of vesico-ureteral reflux, urinary
incontinence, and contraceptives.
ARTICLE II -- GRANT
2.1 CMCC hereby grants to LICENSEE the exclusive worldwide right
and license to make, have made, use, lease and sell the
Licensed Products, and to practice the Licensed Processes for
the Field of Use to the end of the term for which the Patent
Rights are granted unless sooner terminated according to the
terms hereof; provided however, CMCC shall retain a
royalty-free, nonexclusive, irrevocable license to practice the
Patent Rights for research purposes only.
2.2 LICENSEE agrees that Licensed Products leased or sold in the
United States shall be manufactured substantially in the United
States.
2.3 In order to establish exclusivity for LICENSEE, CMCC hereby
agrees that it shall not grant any other license to make, have
made, use, lease and/or sell Licensed Products or to utilize
Licensed Processes for the Field of Use during the period of
time in which this Agreement is in effect.
2.4 LICENSEE shall have the right to enter into sublicense
agreements sublicensing any or all of the rights, privileges,
and licenses granted hereunder.
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2.5 LICENSEE shall have the right to enter into sublicensing
agreements for the rights, privileges, and licenses granted
hereunder. LICENSEE agrees that any sublicense agreement to
which it shall be a party and which shall relate to the rights,
privileges or licenses granted hereunder, shall contain a
statement setting forth the date (if any) upon which LICENSEE's
exclusive rights, privileges and licenses hereunder shall
terminate. LICENSEE agrees to provide to CMCC notice of any and
all sublicenses granted under this Agreement, which notice
shall include a copy of the sublicense agreement and the
sublicensee's address. CMCC agrees that if LICENSEE has
provided notice to CMCC that LICENSEE has granted a sublicense,
then in the event CMCC terminates this Agreement for any reason
as provided hereunder, CMCC shall, no less than thirty (30)
days prior to the effective date of termination of this
Agreement, give such sublicensee written notice of said
termination at the address specified by LICENSEE in LICENSEE's
notice to CMCC of the sublicense. CMCC hereby agrees that, at
the request of the sublicensee as set forth below, provided the
sublicensee is not in breach under its sublicense, CMCC shall
grant to such sublicensee license rights and terms equivalent
to the sublicense rights and terms which the sublicense shall
have granted to said sublicensee; provided that the sublicensee
shall remain a sublicensee under this Agreement for a period of
at least sixty (60) days following receipt of notice from CMCC.
Such right shall be exercisable upon written notice from the
sublicensee to CMCC during said sixty (60) day period wherein
the sublicensee: (i) reaffirms the terms and conditions of its
sublicense and the terms and conditions of this Agreement
appearing in Articles II, V, VII, VIII, IX, X, XI, XII, XIII,
XIV and XV (hereafter referred to collectively as the
"Pertinent Terms"); (ii) agrees to abide by all of the terms
and conditions of its sublicense agreement and the requirements
of the Pertinent Terms of this Agreement; provided that in the
event of any inconsistency or other conflict between the
sublicense and the Pertinent Terms of this Agreement, the
Pertinent Terms of this Agreement shall control and to
discharge directly to CMCC (aa) all obligations of sublicensee
which sublicensee is obligated under the sublicense agreement
to discharge; and (bb) the obligations of LICENSEE arising
after the date of the new agreement between CMCC and the
sublicencee which LICENSEE would have been obligated to
discharge under the Pertinent Terms of this Agreement if this
Agreement had not been terminated and (iii) acknowledges that
CMCC
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shall have no obligations to the sublicensee other than its
obligations set forth in this Agreement with regard to
LICENSEE.
2.6 All sublicenses granted by LICENSEE hereunder shall include a
requirement that the sublicensee use its good faith and
diligent efforts to bring the subject matter of the sublicense
into commercial use as quickly as is reasonably possible. In
addition, LICENSEE agrees that any sublicense granted by it
shall provide that the obligations to CMCC of Articles II, V,
VII, VIII, IX, X, XII, XIII, and XV of this Agreement shall be
binding upon the sublicensee as if it were a party to this
Agreement. LICENSEE further agrees to attach copies of these
Articles to sublicense agreements.
2.7 LICENSEE agrees to forward to CMCC a copy of any and all fully
executed sublicense agreements, and further agrees to forward
to CMCC annually a copy of such reports received by LICENSEE
from its sublicensees during the preceding twelve (12) month
period under the sublicenses as shall be pertinent to a royalty
accounting under said sublicense agreements.
2.8 LICENSEE shall not receive from sublicensees anything of value
in lieu of cash payments based upon payment obligations of any
sublicense under this Agreement, without the express prior
written permission of CMCC.
2.9 The license granted hereunder shall not be construed to confer
any rights upon LICENSEE by implication, estoppel or otherwise
as to any technology not specifically set forth in Appendix A
hereof.
ARTICLE III -- DUE DILIGENCE
3.1 LICENSEE shall use reasonable efforts to bring one or more
Licensed Products or Licensed Processes to market through a
thorough, vigorous and diligent program for exploitation of the
Patent Rights.
In connection with such reasonable efforts LICENSEE agrees to
satisfy the following due diligence milestones:
a. Commence human clinical trials by [*] if LICENSEE
determines that a 510K should be filed for the licensed
products or by [*] if
[*] Confidential treatment requested.
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LICENSEE determines that a PMA should be filed for the Licensed
Products.
b. If LICENSEE determines that a 510K should be filed with the
FDA then LICENSEE shall file the 510K by October 1997 or if
LICENSEE determines that a PMA should be filed for the Licensed
Products such PMA shall be filed by October 1998.
LICENSOR'S sole remedy for LICENSEE'S failure to use its
reasonable efforts under this Section 3.1 shall be termination
of this Agreement or conversion of the license to a
non-exclusive license.
ARTICLE IV -- ROYALTIES
4.1 For the rights, privileges and license granted hereunder,
LICENSEE shall pay to CMCC in the manner hereinafter provided
to the end of the term of the Patent Rights or until this
Agreement shall be terminated as hereinafter provided:
a. A license issue fee of [*] which said license issue fee
shall be deemed earned and due:
(i) [*] immediately upon the execution of this Agreement
(ii) [*] one year from the effective signing date of
this Agreement
(iii) [*] two years from the effective signing date.
b. A royalty based on the Net Sales Price of the Licensed
Products or Licensed Processes, leased or sold by LICENSEE or a
joint venture in which LICENSEE is involved, which said royalty
shall be [*] while patent applications are still pending, and
[*] as soon as at least one patent in the Patent Rights has
been issued in the country where the royalty obligation is
accruing, whether or not other patent applications are still
pending in that country. If no patent issues in a specified
country, royalty shall be [*] in that country only.
C. Where sublicenses have been granted, LICENSEE shall pay to
CMCC [*] of any and all sublicensing fees, signing fees,
milestone payments and royalties received from sublicensees,
provided that CMCC shall receive royalties not less than [*] of
the Net Sales Price of the Licensed Products, or Licensed
Processes, leased or sold by LICENSEE's sublicensees.
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[*] Confidential treatment requested.
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d. In the event that LICENSEE participates in the formation of
a company to commercialize the Patent Rights, LICENSEE shall
cause such company to issue to CMCC common stock of such
company such that CMCC's percentage ownership interest therein
(on a fully diluted basis) shall not be less than [*] until
such time as [*] has been invested in such company (CMCC
to enjoy no anti-dilution protection thereafter).
4.2 No multiple royalties shall be payable because any Licensed
Product, its manufacture, use, lease or sale are or shall be
covered by more than one Patent Rights Patent Application or
Patent Rights Patent licensed under this Agreement.
4.3 Royalty payments shall be paid in United States dollars in
Boston, Massachusetts, or at such other place as CMCC may
reasonably designate consistent with the laws and regulations
controlling in any foreign country. If any currency conversion
shall be required in connection with the payment of royalties
hereunder, such conversion shall be made by using the exchange
rate prevailing at the Bank of Boston on the last business day
of the calendar quarterly reporting period to which such
royalty payments relate.
ARTICLE V -- REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the
purpose of showing the amounts payable to CMCC hereunder. Said
books of account shall be kept at LICENSEE's principal place of
business or the principal place of business of the appropriate
Division of LICENSEE to which this Agreement relates. Said
books and the supporting data shall be open at all reasonable
times for five (5) years following the end of the calendar year
to which they pertain, to the inspection of CMCC or its agents
for the purpose of verifying LICENSEE's royalty statement or
compliance in other respects with this Agreement.
5.2 LICENSEE, within thirty (30) days after March 31, June 30,
September 30 and December 31, of each year, shall deliver to
CMCC true and accurate reports, giving such particulars of the
business conducted by
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[*] Confidential treatment requested.
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(i) LICENSEE and (ii) and within forty-five (45) days of such
dates its sublicensees during the preceding three-month period
under this Agreement as shall be pertinent to a royalty
accounting hereunder. These shall include at least the
following:
a. Number of Licensed Products manufactured and sold.
b. Total collections for Licensed Products sold.
c. Accounting for all Licensed Products sold.
d. Deductions applicable as provided in Paragraph 1.6
e. Total royalties due.
f. Names and addresses of all sublicensees of LICENSEE.
g. Licensed Products manufactured and sold to the United States
Government. (No royalty obligations shall arise due to use by,
for or on behalf of the United States Government in view of the
royalty-free, nonexclusive license heretofore granted to the
United States Government.)
5.3 With each such report submitted, LICENSEE shall pay to CMCC the
royalties due and payable under this Agreement. If no royalties
shall be due, LICENSEE shall so report.
5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall allow an independent
certified public accountant to review LICENSEE's financial
statements, for the preceding fiscal year including, at a
minimum, a Balance Sheet and an Operating Statement. In
addition, until LICENSEE brings one or more Licensed Products
or Licensed Processes to market, CMCC shall have the right to
send a representative, reasonably acceptable to LICENSEE, to
observe board meetings of the LICENSEE entity attempting to
bring Licensed Products or Licensed Processes to market.
5.5 The royalty payments set forth in this Agreement shall, if
overdue, bear interest until payment at a per annum rate of [*]
above the prime rate in effect at the Bank of Boston on the due
date. The payment of such interest shall not foreclose CMCC
from exercising any other rights it may have as a consequence
of the lateness of any payment.
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[*] Confidential treatment requested.
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ARTICLE VI -- PATENT PROSECUTION
6.1 The prosecution, filing and maintenance of all Patent Rights
Patents and Applications shall be the primary responsibility of
LICENSEE once the license has been executed; provided,
however, CMCC shall have reasonable opportunities to advise
LICENSEE and shall cooperate with LICENSEE in such prosecution,
filing and maintenance.
6.2 Payment of all fees and costs relating to the filing,
prosecution, and maintenance of the Patent Rights shall be the
responsibility of LICENSEE, whether such fees and costs were
incurred before or after the date of this Agreement.
ARTICLE VII -- INFRINGEMENT
7.1 LICENSEE shall inform CMCC promptly in writing of any alleged
infringement of the Patent Rights by a third party and of any
available evidence thereof.
7.2 During the term of this Agreement, LICENSEE shall have the
right, but shall not be obligated, to prosecute at its own
expense any such infringements of the Patent Rights and, in
furtherance of such right, CMCC hereby agrees that LICENSEE may
join CMCC as a party plaintiff in any such suit, without
expense to LICENSEE. The total cost of any such infringement
action commenced or defended solely by LICENSEE shall be borne
by LICENSEE and LICENSEE shall keep any recovery or damages for
past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any
alleged infringement, LICENSEE shall have been unsuccessful in
persuading the alleged infringer to desist and shall not have
brought and shall not be diligently prosecuting an infringement
action, or if LICENSEE shall notify CMCC at any time prior
thereto of its intention not to bring suit against any alleged
infringer, then, and in those events only, CMCC shall have the
right, but shall not be obligated, to prosecute at its own
expense any infringement of the Patent Rights. No settlement,
consent judgment of other voluntary final disposition of the
suit may be entered into without the consent of the party not
bringing the suit, which consent shall not unreasonably be
withheld.
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7.4 In the event that LICENSEE shall undertake the enforcement
and/or defense of the Patent Rights by litigation, LICENSEE may
withhold up to fifty percent (50%) of the royalties otherwise
thereafter due CMCC hereunder and apply the same toward
reimbursement of its expenses, including reasonable attorneys,
fees, in connection therewith. Any recovery of damages by
LICENSEE for any such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of
LICENSEE relating to the suit, next toward reimbursement of
CMCC for any royalties past due or withheld and applied
pursuant to this Article VII, and to royalties due to CMCC for
infringing sales as if sales had been made by LICENSEE. The
balance remaining from any such recovery shall belong to
LICENSEE.
7.5 In the event that a declaratory judgment action alleging
invalidity or non-infringement of any of the Patent Rights
shall be brought against LICENSEE, CMCC, at its option, shall
have the right, within thirty (30) days after commencement of
such action, to intervene and take over the sole defense of the
action at its own expense.
7.6 In any infringement suit as either party may institute to
enforce the Patent Rights pursuant to this Agreement, the other
party hereto shall, at the request and the expense of the party
initiating such suit, cooperate in all respects and, to the
extent possible, have its employees testify when requested and
make available relevant records, papers, information, samples,
specimens, and the like.
7.7 LICENSEE, during the period of this Agreement, shall have the
sole right in accordance with the terms and conditions herein
to sublicense any alleged infringer for the Field of Use for
future use of the Patent Rights.
ARTICLE VIII -- INDEMNIFICATION,
PRODUCT LIABILITY AND INSURANCE
8.1. Indemnification
(a) LICENSEE shall indemnify, defend and hold harmless CMCC and its
trustees, officers, medical and professional staff, employees, and
agents and their respective successors, heirs and assigns (the
"Indemnitees"), against any liability, damage, loss or expense
(including
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reasonable attorney's fees and expenses of litigation) incurred by or
imposed upon the Indemnitees or any one of them in connection with any
claims, suits, actions, demands or judgments arising out of any theory
of product liability (including, but not limited to, actions in the
form of tort, warranty, or strict liability) concerning, any product,
process or service made, used or sold pursuant to any right or license
granted under this Agreement.
(b) LICENSEE's indemnification under (a) above shall not apply to any
liability, damage, loss or expense to the extent that it is directly
attributable to the negligent activities, reckless misconduct or
intentional misconduct of the Indemnitees.
(c) LICENSEE agrees, at its own expense, to provide attorneys
reasonably acceptable to CMCC to defend against any actions brought or
filed against any party indemnified hereunder with respect to the
subject of indemnity contained herein, whether or not such actions are
rightfully brought.
(d) This Section 8.1 shall survive expiration or termination of this
Agreement.
8.2. Insurance.
(a) Beginning at the time as any such product, process or service is
being commercially distributed or sold (other than for the purpose of
obtaining regulatory approvals) by LICENSEE or by a sublicensee,
affiliate or agent of LICENSEE, LICENSEE shall, at its sole cost and
expense, procure and maintain comprehensive general liability insurance
in amounts not less than [*] per incident and [*] annual aggregate and
naming the Indemnitees as additional insureds. Such comprehensive
general liability insurance shall provide (i) product liability
coverage and (ii) broad form contractual liability coverage for
LICENSEE's indemnification under Section 8.1 of this Agreement. If
LICENSEE elects to self-insure all or part of the limits described
above (including deductibles or retentions which are in excess of [*]
annual aggregate) such self-insurance program must be acceptable to the
CMCC and the Risk Management Foundation of the Harvard Medical
Institutions, Inc. The minimum amount of insurance coverage required
under this Section 8.2 shall not be construed to create a limit of
LICENSEE's liability with respect to its indemnification under Section
8.1 of this Agreement.
(b) LICENSEE shall provide CMCC with written evidence of such insurance
upon request of CMCC. LICENSEE shall
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[*] Confidential treatment requested.
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provide CMCC with written notice at lease fifteen (15) days prior to
the cancellation, non-renewal or material change in such insurance; if
LICENSEE does not obtain replacement insurance providing comparable
coverage within such fifteen (15) day period, CMCC shall have the right
to terminate this Agreement effective at the end of such fifteen (15)
day period without notice of any additional waiting periods.
(c) LICENSEE shall maintain such comprehensive general liability
insurance during (i) the period that any such product, process or
service is being commercially distributed or sold (other than for the
purpose of obtaining regulatory approvals) by LICENSEE or by a
sublicensee, affiliate or agent of LICENSEE and (ii) a reasonable
period after the period referred to in (c) (i) above which in no event
shall be less than fifteen (15) years.
(d) This ARTICLE 8.2 shall survive expiration or termination of this
Agreement.
ARTICLE IX -- EXPORT CONTROLS
It is understood that CMCC is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. CMCC neither represents that a license shall not be required nor that,
if required, it shall be issued.
ARTICLE X -- NON-USE OF NAMES
LICENSEE shall not use the names of the Children's Medical Center
corporation nor of any of its employees, nor any adaptation thereof, in any
advertising, promotional or sales literature without prior written consent
obtained from CMCC in each case except that LICENSEE may state that it is
licensed by CMCC under one or more of the patents and/or applications comprising
the Patent Rights, and LICENSEE may comply with disclosure requirements of all
applicable laws
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relating to its business, including United States and state security laws.
ARTICLE XI -- ASSIGNMENT
This Agreement is not assignable by LICENSEE without the express
written consent of CMCC which shall not be unreasonably withheld; provided,
however, that LICENSEE shall have the right to assign this Agreement to a
Subsidiary without the consent of CMCC.
ARTICLE XII -- ARBITRATION
12.1 Any and all claims, disputes or controversies arising under,
out of, or in connection with this Agreement, which have not
been resolved by good faith negotiations between the parties,
shall be resolved by final and binding arbitration in Boston,
Massachusetts, under patent arbitration rules of the American
Arbitration Association then obtaining. The arbitrators shall
have no power to add to, subtract from or modify any of the
terms or conditions of this Agreement. Any award rendered in
such arbitration may be enforced by either party in either the
courts of the Commonwealth of Massachusetts or in the United
States District Court for the District of Massachusetts, to
whose jurisdiction for such purposes CMCC and LICENSEE each
hereby irrevocably consents and submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any
obligations existing under this Agreement.
ARTICLE XIII -- TERMINATION
13.1 If LICENSEE shall cease to carry on its business, this
Agreement shall terminate upon notice by CMCC.
13.2 Should LICENSEE fail to pay CMCC royalties due and payable
hereunder, CMCC shall have the right to terminate this
Agreement on thirty (30) days' notice, unless LICENSEE shall
pay CMCC within the thirty (30) day period, all such royalties
and interest due and payable. Upon the expiration of the thirty
(30) day period, if LICENSEE shall not have paid all such
royalties and interest due and
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payable, the rights, privileges and license granted hereunder
shall terminate.
13.3 Upon any material breach or default of this Agreement by
LICENSEE, other than those occurrences set out in Paragraphs
13.1 and 13.2 hereinabove, which shall always take precedence
in that order over any material breach or default referred to
in this Paragraph 13.3, CMCC shall have the right to terminate
this Agreement and the rights, privileges and license granted
hereunder by ninety (90) days' notice to LICENSEE. Such
termination shall become effective unless LICENSEE shall have
cured any such breach or default prior to the expiration of the
ninety (90) day period.
13.4 LICENSEE shall have the right to terminate this Agreement at
any time on six (6) months' notice to CMCC, and upon payment of
all amounts due CMCC through the effective date of termination,
in no case prior to the end of the first year of full funding.
13.5 Upon termination of this Agreement for any reason, nothing
herein shall be construed to release either party from any
obligation that matured prior to the effective date of such
termination. LICENSEE and any sublicensee thereof may, however,
after the effective date of such termination, sell all Licensed
Products, and complete Licensed Products in the process of
manufacture at the time of such termination and sell the same,
provided that LICENSEE shall pay to CMCC the royalties thereon
as required by Article IV of this Agreement and shall submit
the reports required by Article V hereof on the sales of
Licensed Products.
ARTICLE XIV -- PAYMENTS, NOTICES, AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of the mailing if sent to such
party by certified first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
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In the case of CMCC:
Technology Transfer Manager
Office of Research Administration
The Children's Hospital
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
In the case of LICENSEE:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
General Partner
Medial Science Partners
▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
ARTICLE XV -- MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the Commonwealth of
Massachusetts, U.S.A., except that questions affecting the
construction and effect of any patent shall be determined by
the law of the country in which the patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth
the entire Agreement and understanding of the parties hereto as
to the subject matter hereof, and shall not be subject to any
change or modification except by the execution of a written
instrument subscribed to by the parties hereto.
15.3 The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement shall be determined
to be invalid or unenforceable under any controlling body of
law, such invalidity or unenforceability shall not in any way
affect the validity or enforceability of the remaining
provisions hereof.
15.4 LICENSEE agrees to ▇▇▇▇ the Licensed Products sold in the
United States with all applicable United States patent numbers.
All Licensed Products shipped to or sold in other countries
shall be marked in such a manner as to conform with the patent
laws and practice of the country of manufacture or sale.
15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this
Agreement shall not constitute a waiver of that right or excuse
a similar
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17
subsequent failure to perform any such term or condition by the other
party.
IN WITNESS WHEREOF, the parties have hereunto set their hands and
seals and duly executed this Agreement the day and year set forth below.
CHILDREN'S MEDICAL CENTER CORPORATION
By [SIG]
-------------------------------------
Name ▇▇▇▇▇▇▇ New
-------------------------------------
Title Director, Research Administrator
-------------------------------------
Date 10/25/93
-------------------------------------
LICENSEE
By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------------
Name ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------------
Title General Partner
-------------------------------------
Date 10/25/93
-------------------------------------
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18
APPENDIX A
Children's Medical Center Corporation Case #263
U.S. Patent Application Serial #07/782,058 filed 10/24/91
PCT US/92/09037 filed 10/23/92
CIP 08/054,375 filed 4/28/93
By: Drs. ▇▇▇▇▇▇▇ ▇▇▇▇▇ and ▇▇▇▇▇ ▇▇▇▇▇▇▇
- 18 -
19
[MEDICAL SCIENCE PARTNERS, L.P. LETTERHEAD]
Children's Medical Center Corporation
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
February 23, 1994
UroSurge, Inc.
c/o Medical Science Partners, L.P.
▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Medical Science Partners, L.P.
▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Gentlemen:
Children's Medical Center Corporation ("CMCC"), UroSurge, Inc.
("UroSurge") and Medical Science Partners, L.P. ("MSP") hereby agree as to the
following with respect to the License Agreement dated as of October 14, 1993
between the CMCC and MSP (the "License Agreement"):
1. UroSurge, an entity formed by MSP (as described in the License
Agreement), shall be the sole licensee under the License Agreement and shall be
bound by and subject to the terms of the License Agreement;
2. CMCC consents to the assignment of the License Agreement by MSP to
UroSurge; and
3. MSP shall have no further rights or obligations under the License
Agreement.
If you are in agreement with the above paragraphs, please indicate such
agreement by signing in the spaces below.
CHILDREN'S MEDICAL CENTER CORPORATION
By: [SIG]
---------------------------------
Title: Director, Research Administration
---------------------------------
20
Agreed and Acknowledged this
___ day of February, 1994
UROSURGE, INC.
By: [SIG]
---------------------------------
Title: Treasurer
------------------------------
MEDICAL SCIENCE PARTNERS, L.P.
By: Medical Science Ventures, L.P.
its General Partner
By: [SIG]
---------------------------------
Title:
------------------------------