EXCLUSIVE PATENT LICENSE AGREEMENT BETWEEN THE UNIVERSITY OF ARIZONA AND PROLX PHARMACEUTICALS CORPORATION
Exhibit
99.2
BETWEEN
THE
UNIVERSITY OF ARIZONA
AND
PROLX
PHARMACEUTICALS CORPORATION
Effective
as of the date of the last signature to this Agreement, the Arizona Board of
Regents on behalf of the University of Arizona, having its principal offices
in
▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ (the "LICENSOR"), and PROLX PHARMACEUTICALS CORPORATION,
having a principal place of business at ▇▇▇ ▇. ▇▇▇
▇▇. ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 The
LICENSOR wishes to exercise its right to administer and license valuable
intangible property rights in Technology described in patents and patent
applications identified in the attached Schedule A associated with University
of
Arizona inventors, ▇▇▇▇▇ ▇▇▇▇▇, D.▇▇▇▇. and ▇▇▇▇▇ ▇. ▇▇▇▇▇, Ph.D.
1.2 The
LICENSEE wishes to acquire an Exclusive license from LICENSOR for the purpose
of
undertaking development, to manufacture, use, import and sell products
incorporating said Technology and the LICENSOR is willing to grant such an
Exclusive license in order to have the Technology developed into products and
marketed at the earliest possible time for use and benefit to the public and
the
LICENSOR.
2. DEFINITIONS
2.1 "Exclusive"
means that, subject to certain rights to the United States Government, LICENSOR
has not granted and shall not grant further licenses under the Licensed Patents
so long as this Agreement is in effect, and shall not make or have made Licensed
Products for use by third parties for commercial use nor sell or offer to sell
Licensed Products to third parties for commercial use.
2.2 "First
Commercial Sale"
means the first sale after regulatory approval of a Licensed Product in an
arms
length transaction with a third party unaffiliated with any party to this
Agreement.
2.3 "Licensed
Patent(s)"
means the patents and patent applications identified in Schedule A including
all
divisionals, continuations, reissues, and reexaminations thereof, and
applications claiming priority therefrom, but excluding continuations-in-part,
and any and all existing or future foreign counterparts as well as any U.S.
or
foreign patents actually issued or granted from the same .
2.4 "Licensed
Product(s)"
means any compound, product or part thereof, device, kit, method or service
for
which the creation, manufacture, use, import or sale is covered by a valid
claim
of an issued, unexpired Licensed Patent(s). A claim of an issued, unexpired
Licensed Patent(s) shall be presumed to be valid unless and until it has been
held to be invalid by a final judgment of a court of competent jurisdiction
from
which no appeal can be or is taken.
[+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES.
2.5 "LICENSEE"
is understood to include ProlX Pharmaceuticals Corporation and any and all
of
its Affiliates. An Affiliate of LICENSEE shall mean any corporation or other
business entity controlled by, controlling, or under common control with
LICENSEE during the term of this Agreement. For this purpose, "control" means
direct or indirect beneficial ownership:
(a) of
at least fifty percent (50%) of the voting stock; or
(b) of
at least fifty percent (50%) interest in the income of such corporation or
other
business.
2.6 "Net
Sales"
means the gross invoice price generated by sale or use, including provision
of
service involving the use, of the Licensed Product(s) after regulatory approval
in the form in which it is sold or used, less the following items:
(a) Import,
export, excise, value added and sales taxes, plus custom duties;
(b) Costs
of insurance, packing and transportation from the place of manufacture to the
customer's premises or point of installation;
(c) Normal
and customary quantity and cash discounts; and
(d) Credit
for returns, allowances, or trades actually given.
For
Licensed Products sold or otherwise provided in combination with other products
or services, or provided in other than a sale transaction, Net Sales shall
be
based on the quantity of products or services provided times the price for
a
similar product or service when sold or otherwise provided separately by
LICENSEE in an arms-length transaction in similar quantities.
2.7 "Regulatory
Approval"
means any approval, allowance or clearance by any governmental agency or
agencies having authority to regulate the use or sale of any Licensed Product(s)
in the pertinent jurisdiction or territory.
2.8 "Royalty
Payment"
means obligation arising as a result of sale of marketed Licensed Product by
Licensee or Sublicensee.
2.9 "Technical
Information"
means the information in Licensed Application(s) and Licensed Patents as well
as
any technical data and material provided to LICENSEE by LICENSOR or its
employees or contractors including, without limitation, any biochemical,
preclinical, clinical, manufacturing, formulation, and scientific research
information of a confidential nature whether patentable or unpatentable,
relating to, but limited to the general subject matter described or claimed
in
Licensed Patent(s).
2.10 "Verifiable
Research Costs"
means any costs of research and development of Licensed Product, but excluding
costs that are paid for or reimbursed by research grants, contracts with third
parties, or other non-contractual agreements.
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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2.11 "LICENSOR"
means the Arizona Board of Regents on behalf of the University of
Arizona.
3. GRANT
3.1 LICENSOR
hereby grants under LICENSOR'S valuable intangible property rights and subject
to the terms of this Agreement, and LICENSEE hereby accepts, an Exclusive
worldwide license to make, have made, use, sell, have sold, offer for sale,
import, and otherwise obtain or provide Licensed Product(s) and a non-exclusive
worldwide license to use Technical Information. For the avoidance of doubt,
nothing in the preceding grant shall be interpreted as limiting LICENSOR'S
retained right to use Licensed Patents for educational and research purposes.
LICENSEE shall have a first option to license future patents by Inventors solely
owned by LICENSOR which are dominated by claims in any patents derived from
the
above referenced patent applications and not otherwise obligated by third party
funding agreements with LICENSOR.
3.2 LICENSOR
grants LICENSEE the right to grant sublicenses to third parties so long as
the
grant to any sublicense is within the scope of the grant of Article 3.1 to
LICENSEE and as long as LICENSEE possesses an Exclusive License under this
Agreement. Any and all sublicense agreements granted by LICENSEE shall also
include all of the rights and obligations due under this Agreement by LICENSEE
to LICENSOR and, if applicable, the United States government. These rights
due
LICENSOR in all sublicenses include, but are not limited to, the right of
LICENSOR to receive all royalties and fees under Articles 4 and 5.
LICENSEE
shall notify the LICENSOR of each sublicense granted hereunder and provide
LICENSOR with a copy of each sublicense, redacted to remove confidential
information of sublicensee. LICENSEE shall collect and pay all fees and
royalties due LICENSOR and guarantee all such payments due from sublicensees.
LICENSEE shall require sublicensees to provide payments with royalty reports,
and LICENSEE shall collect and summarize for LICENSOR all such reports due
from
sublicensees. LICENSEE shall monitor sublicensees and assure license terms
are
met and product quality is equal to or greater than that required by this
Agreement. Upon termination of this Agreement for any reason, LICENSOR shall
acknowledge in writing, not later than thirty days following such termination,
the continued effectiveness of each sublicense agreement (with the caveat that
LICENSOR shall take the place of LICENSEE in any such sublicense), unless
LICENSOR has a reasonable, good faith belief that the sublicensee under such
sublicense has not satisfactorily performed its obligations thereunder.
4. FEES,
MILESTONES AND ROYALTIES PAYMENTS
4.1 LICENSEE
agrees to pay [+].
4.2 LICENSEE
agrees to cover the costs incurred in connection with the preparation, filing,
prosecution and the maintenance of Licensed Patents. After the effective date,
and during the term of this Agreement, LICENSEE agrees to assume responsibility
for future patent prosecution and maintenance costs as provided in the following
Article 7.1.
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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4.3 LICENSEE
shall pay to LICENSOR, within thirty (30) days after achieving milestone,
payments relating to Regulatory Approval for Licensed Product as
follows:
[+]
LICENSEE
may investigate more than one Licensed Product through Phase II tests without
paying more than one set of milestone royalties.
4.4 [+]
4.5 [+]
4.6 The
royalty on sales in currencies other than U.S. Dollars shall be calculated
using
the appropriate foreign exchange rate for such currency quoted by the
Wall
Street Journal,
on the close of business on the last banking day of each calendar quarter.
Royalty payments to LICENSOR shall be in U.S. Dollars.
5. REPORTS,
PAYMENTS AND ACCOUNTING
5.1 Quarterly
Royalty Payment and Report.
LICENSEE shall make written reports and royalty payments to LICENSOR within
ninety (90) days after the end of each calendar quarter following the First
Commercial Sale. This report shall state the number, description, and aggregate
Net Sales of Licensed Product(s) during such completed calendar quarter, and
resulting calculation of earned royalty payment due the LICENSOR for such
completed calendar quarter. Concurrent with the making of each such report,
LICENSEE shall include payment due LICENSOR of royalties for the calendar
quarter covered by such report.
All
Payments pursuant to the License shall be made and sent to the following
address:
Director
Attention:
UA #04-034; UA # 06-011
Office
of Technology Transfer
The
University of Arizona
▇.▇.
▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
5.2 Annual
Progress Reports.
LICENSEE, within thirty (30) days of the end of a calendar year, shall provide
to LICENSOR annual written progress reports prior to the first Quarterly Report
for each calendar year after the effective date of this agreement. The reports
shall include sufficient detail to allow LICENSOR to determine progress on
research and development, manufacturing, sublicensing, marketing and sales
during the previous twelve (12) months as well as plans for the coming
year.
5.3 Accounting.
LICENSEE agrees to keep records for a period of seven (7) years showing the
manufacturing, sales, use, and other disposition of products sold or otherwise
disposed of under the license herein granted in sufficient detail to enable
the
royalties payable hereunder by
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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LICENSEE
to be determined, and further agrees to permit its books and records to be
examined from time to time by a certified public accountant of a nationally
recognized accounting firm (the "Auditor"), who is selected and paid for by
LICENSOR, but no more than once per calendar year to the extent necessary to
verify reports provided for in Paragraph 5.1. The information obtained shall
be
treated as confidential information pursuant to Article 9.
5.4 If
the Auditor determines that LICENSEE has, for any reason, failed to pay the
full
royalties as due under this Agreement, the Auditor shall inform LICENSOR and
LICENSEE. LICENSEE shall immediately upon notice thereof pay to LICENSOR any
owed royalties plus interest at the rate of [+] per annum above the average
prime rate for that calendar year, compounded daily, calculated from the date
upon which such royalties should have been paid to the date of actual payment
of
LICENSOR. If the Auditor determines that LICENSEE has overpaid royalties due
under this Agreement, such overpayments shall be credited against future
royalties due LICENSOR. In the event that underpayments of royalties due exceed
[+], then the cost of the next two examinations of LICENSEE'S books and records
shall be borne by LICENSEE.
6. REPRESENTATIONS
6.1 LICENSOR
represents that it has the right to grant LICENSEE the License granted herein
and that it has not granted any license to the Licensed Patents or any rights
in
any Licensed Product(s) to any third party, except for United States government
rights which may have been required by law.
6.2 LICENSOR
represents that, to LICENSOR'S knowledge, information and belief at the time
of
execution of this Agreement:
(a) there
are no other patents, applications, or invention disclosures naming one or
more
of the inventors of Licensed Patents owned or assigned to LICENSOR which
dominate or are dominated by the claimed subject matter of Licensed Patents;
and
(b) other
than the LICENSEE and LICENSOR, there are no other co-owners of the Licensed
Patents, except as set forth herein.
6.3 LICENSEE
represents to LICENSOR that LICENSEE shall diligently perform all of its
obligations under the Agreement.
6.4 EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT LICENSOR MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTY OF MERCHANTABILITY, FITNESS
FOR
A PARTICULAR PURPOSE, AND VALIDITY OF PATENTED RIGHTS CLAIMS, ISSUED OR
PENDING.
6.5 EXCEPT
FOR ITS OBLIGATIONS OF COOPERATION AS SET FORTH IN SECTION 8 HEREOF, NOTHING
IN
THIS AGREEMENT, EITHER EXPRESS OR IMPLIED, OBLIGATES LICENSOR EITHER TO BRING
OR
PROSECUTE ACTIONS OR SUITS
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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AGAINST
THIRD PARTIES FOR PATENT INFRINGEMENT OR TO FURNISH ANY KNOW-HOW OR TRADE
SECRETS NOT PROVIDED IN LICENSOR'S PATENT RIGHTS.
6.6 IN
NO EVENT SHALL LICENSOR BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL
DAMAGES RESULTING FROM THE EXERCISE OF THIS LICENSE OR THE USE OF THE TECHNICAL
INFORMATION OR LICENSED PRODUCTS.
6.7 NO
WARRANTY OR REPRESENTATION IS MADE THAT ANYTHING MADE, USED, OR SOLD UNDER
THE
TERMS OF THIS AGREEMENT WILL BE FREE FROM INFRINGEMENT OF ANY THIRD PARTY
PATENTS.
6.8 THIS
AGREEMENT DOES NOT CONFER BY IMPLICATION, ESTOPPEL, OR OTHERWISE ANY LICENSE
OR
RIGHTS TO ANY OTHER PATENT OF LICENSOR OTHER THAN PATENT RIGHTS AS EXPRESSLY
STATED HEREIN, REGARDLESS OF WHETHER SUCH PATENTS ARE DOMINANT OR SUBORDINATE
TO
PATENT RIGHTS.
7. PROSECUTION
OF LICENSED PATENTS
7.1 LICENSEE
agrees to accept liaison and financial responsibilities, as hereinafter set
forth, for the prosecution, by a patent lawyer in independent practice, who
shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Patents
listed in Schedule A, and additional applications as the parties may
subsequently agree. Said financial responsibilities shall not only include
the
costs of prosecution but also the payment of maintenance fees, where required,
to maintain said patent applications and patents, if issued, in force and effect
for as long as possible. It is further agreed that the patent lawyer selected
and paid by LICENSEE and approved by LICENSOR shall be required, if so desired
by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and
maintenance of said Licensed Patents. Notice of prosecution and maintenance
of
said Licensed Patents shall be sent by express courier delivery to:
Internal
IP Counsel
Attn:
UA #04-034; UA # 06-011
Office
of Technology Transfer
The
University of Arizona
▇▇▇
▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Tel:
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If,
for any reason, prosecution or maintenance of a particular patent application
or
patent in a particular country is to be abandoned by LICENSEE, LICENSOR will
be
notified in sufficient time to assume prosecution should LICENSOR desire to
do
so. LICENSEE shall bear all cost to maintain the patent prosecution until such
time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment
of
any particular patent application or patent, terminates its rights under Article
3 in said patent application or patent and said patent application or patent
shall no longer be considered part of Licensed Patents for purposes of this
Agreement or any sublicense derived herefrom.
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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Within
two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current
patent counsel will furnish complete file histories and a summary of current
actions required of all of the patent applications constituting said Licensed
Patents to the patent lawyer nominated by LICENSOR to continue prosecution
of
patents abandoned by LICENSEE.
7.2 If
Licensee has not used reasonable efforts to prosecute patents, LICENSOR shall
have the right at any time, by notice in writing and sent to LICENSEE by
registered mail, to assume and continue at its own expense, direction of the
prosecution of any of said Licensed Patents. Upon receipt by LICENSEE of any
such notice from LICENSOR, LICENSEE and the patent lawyer nominated in
accordance herewith shall provide in two weeks from the time of notice an
executed power of attorney and all the file histories of the patent applications
constituting said Licensed Patents. Upon receipt of this documentation, LICENSEE
and the patent attorney nominated by LICENSEE shall be relieved of all future
responsibilities to prosecute the Licensed Patents to which the notice is
directed. In which event, LICENSOR agrees to use its good faith efforts to
apply
for, seek prompt issuance of, and maintain during the term of this Agreement,
Licensed Patents to the extent necessary to cover both broadly and specifically
Licensed Products. LICENSEE shall have reasonable opportunity to advise LICENSOR
and shall cooperate with LICENSOR in such filing, prosecution and maintenance.
LICENSOR shall use its good faith efforts to furnish LICENSEE with copies of
any
patent application sufficiently in advance of its anticipated filing date to
give LICENSEE a reasonable opportunity to review and comment thereon. In this
event, LICENSOR also agrees to furnish LICENSEE with copies of all substantive
communications to and from U. S. and foreign patent offices regarding Licensed
Patents and in good faith shall consider the reasonable comments of LICENSEE
regarding all communications and filings to and from the respective patent
office.
7.3
[+]
8. INFRINGEMENT
8.1 LICENSOR
and LICENSEE shall promptly give notice to the other in writing of any alleged
infringement of Licensed Patents and of any other legal action undertaken by
either party with respect to the defense or enforcement of Licensed Patents.
The
parties shall thereupon confer as to what steps are to be taken to stop or
prevent such infringement.
8.2 LICENSEE
shall have the first right to defend or enforce Licensed Patents against any
infringer at LICENSEE's cost and expense including by bringing any legal action
for infringement or defending any counterclaim of invalidity or action of a
third party for declaratory judgment of non-infringement, which LICENSEE, in
its
sole discretion, decides is reasonable and necessary for it to undertake.
LICENSEE shall bring or defend or may settle any such actions solely
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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at
its own discretion and expense and through counsel of its selection. LICENSEE
will be entitled to retain any settlement or damage award received except as
provided for in Article 8.4; provided, however, that the LICENSOR shall be
entitled in each instance to participate through counsel of its own selection
and its own expense and share in any damage award or settlement as mutually
agreed upon in writing by the parties prior to such participation. LICENSEE
shall not join LICENSOR as a party-plaintiff in any suit which LICENSEE may
institute unless necessary for the maintenance of said suit, and then only
with
the prior knowledge and written consent of LICENSOR, which consent shall not
be
unreasonably withheld. In such event that LICENSOR is an unwilling participant
in any suit which LICENSEE may institute, LICENSOR shall not be chargeable
for
any costs or expenses and those costs and expenses shall be borne by LICENSEE.
LICENSOR shall execute all documents necessary for the prosecution of any
infringement suit brought by LICENSEE and provide other such support as LICENSEE
may require including having its employees testify when requested and make
available relevant records, papers, information, samples, specimens and the
like, all however at the expense, with respect to travel and the like, of
LICENSEE.
8.3 LICENSOR
shall have the right to defend or enforce the Licensed Patents against
infringement in the event that LICENSEE declines to exercise its rights to
defend or enforce Licensed Patents under Article 8.2 and shall have sole
discretion to file and prosecute, defend or settle such infringement and
declaratory judgment action at its own expense through counsel of its own
selection and will be entitled to retain any settlement or damage award
received; provided, however, that LICENSEE shall be entitled in each instance
to
participate through counsel of its own selection and at its own expense.
LICENSEE shall have no responsibility or financial obligation with respect
to
any such infringement action except to provide reasonable assistance to LICENSOR
as requested and LICENSOR shall reimburse LICENSEE for LICENSEE's out-of-pocket
expenses in connection with any such assistance. LICENSEE shall execute all
documents necessary for the prosecution of any infringement suit brought by
LICENSOR and provide other such support as LICENSOR may require, including
having its employees testify when requested and make available relevant records,
papers, information, samples, specimens and the like, all however at the
expense, with respect to travel and the like, of LICENSOR.
8.4 LICENSOR
shall be entitled to the percentage of any recovery obtained in any infringement
suit brought by LICENSEE equal to the amount to which LICENSOR would be entitled
under the sublicensee royalty provision of this Agreement had said recovery
been
paid to LICENSEE as sublicense royalties by the defendant in said infringement
suit. LICENSEE may deduct its reasonable direct costs and attorneys' fees paid
to third parties incurred in prosecuting such suit, to the extent such costs
and
fees are not otherwise recovered, prior to calculating the share owing to
LICENSOR pursuant to this provision.
8.5 Should
LICENSEE commence a suit under the provisions of Paragraphs 8.2 and thereafter
elect to abandon the same, it shall give timely notice to LICENSOR, which may,
if it so desires, continue prosecution of such suit under Article
8.3.
8.6 During
the period of this Agreement, if LICENSOR's actions under Article 8.3 require
a
sublicense to an infringer, LICENSEE shall grant such a sublicense to said
infringer in accordance with the terms and conditions herein and the terms
and
conditions of any settlement or
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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other
judgment effected by LICENSOR. LICENSEE shall receive such royalties under
any
such sublicense and LICENSOR shall be entitled to royalties therefrom as
specified in Paragraph 4.3.
9. PUBLICITY
AND CONFIDENTIALITY
9.1 Neither
party shall use the name of the other in any form of advertising or promotion
without the prior written approval of the other, except to announce this
Agreement.
9.2 Confidential
Items.
Confidential Items shall mean any proprietary information or materials belonging
to the disclosing party, in writing, clearly marked CONFIDENTIAL (whether or
not
patentable) including, but not limited to, patent filings; descriptions of
formulations, techniques, know-how, methodology; data, reports, information
regarding sources of supply or patent positioning; consultant(s)'s reports
and
business plans, including any negative developments, which are communicated
to,
learned by, or otherwise acquired by the party receiving such information or
materials during or in the course of this Agreement; and further including
information concerning the existence, scope or activities of any research and
development project of the disclosing party.
9.3 Each
party shall hold in confidence for a period of five (5) years, and shall not
disclose to any person outside its respective organization, any Confidential
Items disclosed to it by the other party to this Agreement. The party receiving
such Confidential Items shall use such Confidential Items only for the limited
purpose for which it was disclosed and shall not exploit such Confidential
Items
for its own benefit or the benefit of another without the prior written consent
of the disclosing party. Each party shall disclose Confidential Items of the
other party under this Agreement only to persons within its organization and
to
consultants who have a need to know such Confidential Items in the course of
the
performance of their duties and who are bound to protect the confidentiality
of
such Confidential Items.
9.4 The
confidentiality and non-use obligations of the receiving party shall not apply
to any Confidential Item(s) which is received by one party from the other party
and which:
(i) is
disclosed in a printed publication available to the public, is described in
an
issued patent anywhere in the world, is otherwise in the public domain at the
time of disclosure, or becomes publicly known through no breach of this
Agreement by the receiving party;
(ii) becomes
known to the receiving party through disclosure by sources other than the
disclosing party having the right to disclose such Confidential
Items;
(iii) is
disclosed pursuant to the requirements of a governmental agency or any law
requiring disclosure thereof, provided that the disclosing party is provided
with prior written notice of any such disclosure;
(iv) is
generally disclosed to third parties by the disclosing party without similar
restrictions on such third parties;
(v) is
approved for release by written authorization of an officer of the disclosing
party;
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DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
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(vi) is
already known by the receiving party as evidenced by its prior written records;
or
(vii) is
developed by receiving party independently of and without reference to
Confidential Items received from disclosing party as evidenced by written
record.
provided,
however, that a breach of the foregoing obligations shall not be absolved by
the
subsequent occurrence of any of the above exceptions.
10. PUBLICATION
10.1 Subject
to all other terms of this Agreement, including those concerning
confidentiality, LICENSOR's investigators have the right to publish or otherwise
publicly disclose information. LICENSOR agrees that publication may be delayed
at the request of LICENSEE for a period not to exceed ninety (90) days from
the
date of submission of the publication to LICENSEE, in order to enable LICENSEE
to undertake the filing of a patent application.
11. DUE
DILIGENCE
11.1 LICENSEE
shall use good faith efforts to develop, obtain clinical approval for,
manufacture, market and promote Licensed Products.
11.2 [+]
12. TERM
AND TERMINATION
12.1 Term
of License.
(a) The
Term of this Agreement shall be for a period beginning with the Effective Date
and extending until the last to expire valid claim of a Licensed Patent, unless
sooner terminated as herein provided. Surviving any termination are: (a)
LICENSEE's obligation to pay royalties accrued or accruable for sell-off of
inventory pursuant to Paragraph 12.1(d); and (b) any cause of action or claim
of
LICENSEE or LICENSOR, accrued or to accrue, because of any breach or default
by
the other party.
(b) Subject
to the provisions of Section 11.3 hereof, which describes the only method by
which LICENSOR shall be entitled to terminate this Agreement on the basis of
failure to use appropriate diligence, upon any material breach or default under
this Agreement by LICENSEE, LICENSOR may give written notice thereof to
LICENSEE, and LICENSEE shall have sixty (60) days thereafter to cure such breach
or default. If such breach or default is not so cured, LICENSOR may then in
its
sole discretion and option (a) terminate this Agreement and the licenses granted
herein or (b) seek such other relief as may be provided by law in such
circumstances by giving written notice thereof to LICENSEE. Repetitive breaching
of this Agreement by LICENSEE also shall be considered a material breach of
this
Agreement for which LICENSOR may declare, at its sole discretion, that either
no
cure possible and terminate this Agreement and the licenses granted
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
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herein
or seek an amendment to this Agreement as a requirement for any cure of the
repetitive breaching.
(c) LICENSEE
shall have the right to terminate this Agreement at any time upon ninety (90)
days written notice to LICENSOR and payment of all amounts due LICENSOR through
the effective date of termination.
(d) Upon
termination of this Agreement under any provision, all further obligations
of
the parties under this Agreement shall terminate without further liability
of
any party to another; provided, however, that the publicity and confidentiality
obligations of the parties contained in Article 9 hereof, shall survive any
such
termination for the periods set forth therein. Termination shall not relieve
any
party of any obligation occurring prior to such termination, of any liability
for a breach of, or for any misrepresentation under this Agreement or be deemed
to constitute a waiver of any available remedy (including specific performance
if available) for any such breach or misrepresentation, provided, however,
that
neither party shall be liable for consequential, punitive or special damages
including without limitation, lost profits. Except for legal actions that may
prohibit such activity, LICENSEE and any sublicensee thereof may, for six months
after the effective date of such termination, sell all Licensed Products, and
complete Licensed Products in the process of manufacture and fulfill all orders
for Licensed Products at the time of such termination and sell the same,
provided that LICENSEE shall pay to LICENSOR the royalties thereon as required
by Article 4 of this Agreement and shall submit the reports required by Article
5 hereof on the sales of such Licensed Products.
(e) In
the event of termination of this Agreement for any reason, any and all rights
granted LICENSEE hereunder, including any rights granted by LICENSEE to any
sublicensee, shall cease and terminate, and all such rights shall revert to
LICENSOR. LICENSEE shall diligently thereafter return to LICENSOR, or to
LICENSOR's designated attorneys, any files or other documents in its possession
or in the possession of its attorneys, agents or sublicensees, relating to
pending or issued Licensed Patent(s), except that one copy of each such document
may be retained by LICENSEE's attorney for the purpose of ensuring compliance
hereunder. LICENSEE shall also execute any and all documents necessary to return
control of said Licensed Patent(s) until such time as control has properly
been
transferred to LICENSOR. Further, LICENSEE shall immediately return to LICENSOR
all research data, biological and other material (including but not limited
to
licensed cell lines), prototypes, process information, clinical data and the
like of LICENSOR in its possession or in the possession of its
sublicensees.
13. ASSIGNMENT
13.1 This
Agreement shall not be assignable by either party without the prior written
consent of the other party, such consent not to be unreasonably withheld.
Notwithstanding however, LICENSEE may assign this Agreement to an entity, which
acquires all or substantially all of the assets to which this Agreement pertains
without the prior written consent of LICENSOR. [+]
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
-11-
14. INDEMNIFICATION
14.1 LICENSEE
agrees that during the term of this Agreement and thereafter, it will indemnify,
defend and hold LICENSOR, its trustees, officers, employees and affiliates,
harmless against all claims and expenses, including legal expenses and
attorneys' fees, arising out of the death of or injury to any person or persons,
or out of any damage to property, and against any other claim, proceeding,
demand, expense and liability of any kind whatsoever resulting from the
production, manufacture, sales, use, consumption, disposal or advertisement
of
Licensed Products by LICENSEE.
14.2 LICENSEE,
at its sole cost and expense, shall insure its activities in connection with
the
work under this Agreement and obtain, keep in force, and maintain insurance
as
follows, or an equivalent program of self insurance:
(a) Comprehensive
or commercial general liability insurance (contractual liability included)
with
its minimum limits as follows:
Each
Occurrence $1,000,000
Products/Completed
Operations Aggregate $5,000,000
Personal
and Advertising Injury $1,000,000
General
Aggregate (commercial form only) $5,000,000
(b) The
coverage and limits specified above do not in any way limit the liability of
the
LICENSEE under this Agreement. The LICENSEE shall furnish LICENSOR with
certificates of insurance showing compliance with all requirements. Such
certificates must:
|
-
|
Provide
for thirty (30) day advance written notice to LICENSOR of any
modification.
|
|
-
|
Indicate
that LICENSOR has been endorsed as an additional Insured under the
coverage specified above..
|
|
-
|
Include
a provision that the coverage will be primary and will not relate
to nor
will be excess over any valid and collectable insurance or program
of
self-insurance carried or maintained by
LICENSOR.
|
14.3 LICENSOR
shall notify LICENSEE in writing of any claim or suit brought against LICENSOR
in respect of which LICENSOR intends to invoke the provisions of this Article.
LICENSEE shall keep LICENSOR informed on a current basis of its defense of
any
claims under this Article.
15. NOTICES
15.1 All
notices under this Agreement not otherwise set forth for specific delivery
shall
be deemed to have been fully given when done in writing and deposited in the
United States mail, registered, certified or express, and addressed, or when
actually received, as follows:
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
-12-
|
TO
LICENSOR:
|
Director
|
|
Office
of Technology Transfer
|
|
|
The
University of Arizona
|
|
|
▇▇▇
▇. ▇▇▇▇▇▇ ▇▇▇., ▇▇▇▇▇ ▇▇▇
|
|
|
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
|
|
|
TO
LICENSEE:
|
▇▇.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
|
|
ProlX
Pharmaceuticals Corporation
|
|
|
▇▇▇
▇ ▇▇▇
▇▇.
|
|
|
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
|
Either
party may change its address upon notice to the other party as provided
herein.
16. GENERAL
PROVISIONS
16.1 Equal
Opportunity.
The parties agree to be bound by applicable state and federal rules governing
equal employment opportunity and nondiscrimination.
16.2 State
Funding.
The parties recognize that the performance of the LICENSOR may be dependent
upon
the appropriation of funds by the Arizona State Legislature. Should the
Legislature of Arizona fail to appropriate the necessary funds, LICENSOR may
cancel this Agreement without further duty or obligation. The LICENSOR agrees
to
notify the LICENSEE as soon as reasonably possible after the unavailability
of
said funds comes to the LICENSOR'S attention.
16.3 Arbitration.
The parties agree that should a dispute arise between them, in any manner,
concerning this Agreement, and said dispute involves the sum of Thirty Thousand
Dollars ($30,000) or less in money damages only, exclusive of interest or cost
of attorney's fees, the parties will submit the matter to binding arbitration
pursuant to the Arizona Supreme Court Rules for Compulsory Arbitration and
the
decision of the arbitrator(s) shall be final and binding upon the
parties.
16.4 Conflict
of Interest.
This Agreement is subject to the provisions of A.R.S. § 38-511(E) and conflict
of interest laws of the State of Arizona. Either party may cancel this Agreement
by written notice to other party if any person substantially involved in
obtaining, drafting, or procuring this Agreement for or on behalf of a party
becomes an employee or consultant in any capacity of the other
party.
16.5 Waiver.
None of the terms, covenants and conditions of this Agreement can be waived
except by the written consent of the party waiving compliance.
16.6 Severability.
The provisions of this Agreement shall be deemed severable, and the invalidity
or unenforceability of any provision shall not affect the validity and
enforceability of the other provisions hereof.
16.7 Headings.
The description headings in this Agreement are inserted for convenience only
and
do not constitute a part of this Agreement.
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
-13-
16.8 Execution
in Counterpart.
This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original.
16.9 Entire
Agreement.
This writing constitutes the entire agreement of the parties and there are
no
promises, understandings or agreements of any kind pertaining to this Agreement
other than those written in this Agreement. This Agreement supercedes all
previous Agreements in this matter.
-14-
IN
WITNESS WHEREOF,
the parties thereto have executed this Agreement in duplicate originals by
their
duly authorized officers or representatives.
| ARIZONA BOARD OF REGENTS | PROLX PHARMACEUTICALS | |||
| On behalf of | CORPORATION | |||
| THE UNIVERSITY OF ARIZONA | ||||
| By: |
/s/
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
|
By: |
/s/
D. ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
|
|
| Name: |
▇▇▇▇▇▇▇
▇. ▇▇▇▇▇, Ph.D., M.B.A.
|
Name: |
D.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, Ph.D.
|
|
| Title: |
Director,
Officer of Technology Transfers
|
Title: |
CEO
|
|
| Date: |
September
13, 2005
|
Date: |
Sept.
15, 2005
|
|
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.
Schedule
A
|
10/288,888
|
U.S.
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/6/2002
|
Abandoned
|
|
10/929,156
|
U.S.
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
8/20/2004
|
Pending
|
|
2003291282
|
AU
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
Pending
|
|
2504496
|
CA
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
Pending
|
|
03768672.2
|
EP
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
Pending
|
|
2004-551738
|
JP
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
Pending
|
|
2005-004845
|
MX
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
Pending
|
|
PCT/US03/35266
|
PCT
|
N-Oxides
and Derivatives of Melphalan for Treating Diseased States Associated
with
Hypoxia Inducible Factor
|
11/3/2003
|
regional/
national phases entered
|
|
60/487,562
|
U.S.
|
Regulation
of HIF Protein Levels via Deubiquination Pathway
|
7/14/2003
|
Expired
|
|
10/890,756
|
U.S.
|
Regulation
of HIF Protein Levels via Deubiquination Pathway
|
7/14/2004
|
Pending
|
|
PCT/US04/22656
|
PCT
|
Regulation
of HIF Protein Levels via Deubiquination Pathway
|
7/14/2004
|
Pending
|
[+]
DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR
CONFIDENTIALITY PURPOSES.