EXHIBIT 10.11
Exclusive Licensing Agreement, dated April 1, 1996, between
Calbiochem-Novabiochem International and the Registrant
Exclusive Licensing Agreement
between
Calbiochem-Novabiochem International (CNI)
and
Paracelsian
1. PREAMBLE
Subject matter of this agreement is the Assay for cdkl, components,
improvements and equivalents, the patent(s) covering this assay and the
know how and information on the manufacture, significance and
performance of the assay, hereinafter referred to as "Documentation".
2. RECITALS
a) Paracelsian having its principal office at 222 Langmuir
Laboratories, Cornell Technology Park, ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,
represents and warrants that it has the right to license the
rights in the patent applications and know how and information
covering this technology and that it is not aware of any right
that would inhibit any licensee of these rights to commercialize
the ASSAY.
b) Calbiochem-Novabiochem International (hereinafter referred to as
"CNI") a Delaware corporation having its principal place of
business at ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ is desirous of obtaining an exclusive license for the
commercial and scientific use of the ASSAY, and the sale and
distribution of the ASSAY.
In consideration of the mutual benefits to be derived hereunder,
Calbiochem Novabiochem International and Paracelsian agree as follows:
3. DEFINITIONS
"LICENSED PRODUCTS" shall mean the cdkl ASSAY and components to be
used as a research test kit for determining cdk1 levels in cell o
serum. Paracelsian reserves the right to market any assay not included
as part of the LICENSEE PRODUCTS.
"RESEARCH PRODUCT" shall mean any product not approved by the
Federal Drug Administration.
"AFFILIATE" shall mean any corporation or other business entity
controlled by or in common control of the one of the parties. "Control"
as used herein means the ownership directly or indirectly of fifty
percent (50%) or the maximum interest permitted by local law of the
voting stock of a corporation or a fifty percent (50%) or greater
interest in the income of such corporation or other business entity or
the ability otherwise of CNI or Paracelsian to secure that the affairs
of such corporation or other business entity are managed in accordance
with its wishes. CNI and Paracelsian shall include any and all of the
AFFILIATES, unless otherwise provided.
"NET SALES" shall mean actual ▇▇▇▇▇▇▇▇ of CNI on sales to third
parties for LICENSED PRODUCTS less the following deductions, where
applicable:
(i) Discounts, allowed and taken, in amounts customary in the
trade;
(ii) Sales, excise value added and/or use taxes or duties imposed
upon and with specific reference to particular sales-,
(iii)Amounts allowed or credited on returns, rebates or retroactive
price reductions; and
(iv) Outbound transportation prepaid or allowed.
"Exclusive License" shall mean that Paracelsian shall not issue a
license to a third party for the LICENSED PRODUCTS for the same use as
provided above.
4. GRANT OF LICENSE
Paracelsian hereby grants to CNI on the terms and conditions
hereinafter stated an exclusive world-wide license to make, have made,
use, sell and have solid LICENSED PRODUCTS as RESEARCH PRODUCTS under
any patents that may issue thereof reissues or extensions thereof, to
use the ASSAY as well as the Documentations throughout the world for a
cdk1 ASSAY and any know-how or components supplied by Paracelsian to be
used as RESEARCH PRODUCTS. This license shall continue until five (5)
years from the date of this agreement unless sooner terminated as
herein provided and shall be prolonged automatically for another five
years unless terminated in writing (Section 12). Paracelsian reserves
the right to make and use the LICENSED PRODUCT for research and to
market or license the rights to market any assay not included as part
of the LICENSED PRODUCTS.
Each LICENSED PRODUCT sold shall include a statement that the product
may only be used for purposes that do not require Federal Drug
Administration approval.
CNI Agrees to use its best efforts to bring LICENSED PRODUCTS to market
and to promote sales thereof. Such efforts shall be at least equal to
commercially reasonable efforts for promotion, sales and quality
control and CNI's efforts for its other products.
5. ROYALTIES
In consideration for the license granted in Section 4, CNI agrees to
pay Paracelsian:
a) An initial license fee of five thousand dollars ($5,000) shall be
paid upon execution of this Agreement.
b) A royalty of five percent (5%) on the first one million dollars
($1,000,000) of NET SALES of CNI or its Affiliates of a LICENSED
PRODUCT and a royalty of ten percent (10%) on NET SALES over one
million dollars ($1,000,000).
c) If CNI is required to take a license under an issued patent or
other proprietary right in any country in order to market a
LICENSED PRODUCT, CNI will pay a royalty rate that is reduced by
1/2 of the royalty rate of the other license, but in no event less
than three percent (3%) on the NET SALES in that country.
d) It is understood that a LICENSED PRODUCT may be sold in a
combination package, composite or kit containing other non-licensed
products or items. In such event, NET SALES, for
purposes of determining royalty payments on the combination
package, shall be calculated by the following applicable method:
(i) By multiplying the NET SALES of that combination package
by the fraction A/B, where A is the price per unit, during the royalty
paying period in question, of the LICENSED PRODUCTS when sold
separately, and B is the price per unit, during the royalty paying
period in question, of the combination package.
(ii) In the event that no such separate sales are made of the
LICENSED PRODUCTS during the royalty paying period in question, the
price per unit from the most recent royalty paying period shall be
used.
(iii) NET SALES for the purposes of determining royalty
payments shall be never be less than the formula (2 x C), where C is
the standard fully absorbed cost to CNI of the LICENSED PRODUCTS, such
costs being determined by using CNI's standard accounting procedures
which shall be in accordance with the generally accepted practice.
e) Nothing contained herein shall obligate CNI to pay royalties more
than once in respect of NET SALES of any LICENSED PRODUCTS or to
pay a higher or multiple royalties for any reason, including
whether the sales of any LICENSED PRODUCTS are covered by the
CLAIMS of more than one patent owned or controlled by Licensor.
f) If Paracelsian shall, at any time during the term of this
Agreement, grant to any other licensee a royalty that is lower
than that contained herein, Paracelsian shall so notify CNI and
CNI shall be entitled to have such more favorable royalty was
granted.
6. TERMS OF PAYMENT
Payment of the royalties shall be due no later than sixty (60) days
after the close of each quarter fiscal year of CNI.
7. RECORDS
CNI shall keep accurate records on books of account showing the
quantities and NET SALES prices of the LICENSED PRODUCTS. Any
certified or chartered public accountant authorized in writing by
Paracelsian shall be given access to such records and books at all
reasonable times. Within sixty (60) days after March 31, June 30,
September 30 and December 31, CNI shall deliver to Licensor a true and
accurate report stating for the preceding three (3) calendar months (a)
NET SALES, (b) the royalties payable thereon and (c) the amount of any
credit taken against royalties payable, if any, not otherwise taken in
computing NET SALES. Except as otherwise provided, simultaneously with
the delivery of each such report, CNI shall pay to Licensor the
provided, simultaneously with the delivery of each such report, CNI
shall pay to Licensor the amount, if any, due for the period of such
report. If no payments are due, it shall be so reported.
All amounts payable hereunder by CNI shall be payable in United States
funds; provided, however, that if any payment on account of NET SALES
is received by CNI in a foreign currency, such amount shall be
converted monthly to United States funds at the rate set internally by
CNI's international finance department providing exchange rates for
translation of end of the month balance sheets and following month
income statements.
8. SUBLICENSES
CNI shall retain control over the ASSAY in its possession and shall not
give it or sublicense it to any third party or entity without prior
specific written permission from Paracelsian.
9. LIABILITY
Paracelsian's liability, in contract, tort or otherwise under or in
relations to the agreement, shall be limited to the amount of monies
actually received from CNI under this agreement. In no event shall
Paracelsian be liable for any indirect or consequential losses
(including, without limitation, loss of profits or use) CNI shall keep
Paracelsian fully indemnified at all times against all liabilities,
claims proceedings (whether civil or criminal), penalties, fines or
other sanctions, judgments, suits, actions, losses, damages
obligations, disbursements, costs and expenses which may at any time be
incurred by or imposed against Paracelsian arising in connection with
the manufacture, control possession, ownership, use, sale or other
disposition by CNI of ASSAY.
CNI hereby agrees to indemnify, hold harmless and defend Paracelsian,
its directors, officers, employees, agents and affiliates against any
damages and legal expenses arising out of lawsuits or any other damage
claim resulting from CNI's activities.
10. REPRESENTATIONS AND WARRANTIES
Paracelsian represents and warrants that it has the right to license
the rights in the patent applications and know how and information
covering this technology and that it is not aware of any right that
would inhibit any licensee of these rights to commercialize ASSAY.
Paracelsian and CNI each represent and warrant to the other that they
have the full power an authority to enter into this Agreement, and that
entering into this Agreement will not contravene, conflict with or
violate the terms of any law, rule, regulation, order or agreement by
which the party may be bound.
11. USE OF NAME
CNI shall use the name of Paracelsian in any advertising, packaging
including customary technical literature and other promotional material
in connection with the sale of Licensed Product pursuant to this
Agreement.
12. INFORMATION
Paracelsian agrees to provide CNI with technical information and
scientific references as needed to market product and to answer
customer's questions related to the product.
CNI agrees to provide Paracelsian with copies of any information that
it receives regarding the efficacy, quality or reliability of the
LICENSED PRODUCTS.
Both parties agree to keep any confidential information disclosed by
either party confidential for at least two years past the termination
of this agreement unless directed to release the information by a court
of law or a lawful subpoena. Confidential Information shall include,
but not be limited to, information relating to: financial information,
manufacturing, research or testing methods, marketing and customer
information, and Documentation and other information related to a cdk1
Assay. Confidential Information shall not include information that: 1)
must be disclosed for the marketing or sale of a LICENSED PRODUCT: 2)
was in the Recipient's possession before disclosure by the Disclosing
party; 3) which is or becomes public through no wrongful action of the
Receiving party; 4) is rightfully received by the Receiving party from
another source without an obligation to the Disclosing party.
Paracelsian specifically reserves the right to disclose information
relating to: 1) the formation of a business relationship between the
parties; 2) the total amount received in royalties under this
Agreement; and 3) the efficacy, quality or reliability of any LICENSED
PRODUCT.
13. TERMINATION
If CNI fails to pay the royalties payable under the terms hereof, or
violates or fails to keep or perform any other obligation, term or
condition hereof, Paracelsian may at its option terminate this
agreement by giving sixty (60) days written notice, sent by registered
mail, return receipt requested, specifying the default complained of,
provided, however, that if CNI shall within such sixty (60) days cure
the default complained of, then the notice shall cease to be operative
and this agreement shall continue in fall force and effect as though
such default has not occurred. CNI may terminate this Agreement at any
time upon sixty (60) days written notice to Licensor. Upon
termination, CNI will destroy or return the MATERIALS back to
Paracelsian. In such case, CNI shall, remain obligated for royalties
on the NET SALES sold before the effective date of termination under
this paragraph.
14. MISCELLANEOUS
Parties to this Agreement recognize and agree that each is operating as
an independent contractor and not as an agent of the, other. This
Agreement shall not constitute a partnership or joint venture, and
neither party may be bound by the other to any contract, arrangement or
understanding except as specifically stated herein.
All notices, payments, reports and the like required or permitted
hereunder shall be deemed given when mailed by registered or certified
mail, if to Paracelsian to:
Paracelsian
222 Langmuir Laboratories
Cornell Technology Park
▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
ATTN: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
President and CEO
and if to CNI to:
Calbiochem-Novabiochem International
▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
ATTN: ▇▇. ▇▇▇▇ ▇. ▇▇▇▇
Vice President, New Business Development
or to such other person or by such other means as to which the parties
may from time to time agree in writing.
The captions herein are for the convenience of the parties only.
This Agreement shall not be assignable by either party without prior
written consent of the other party, except that each party may assign
to an AFFILIATE or to a successor in ownership of all or substantially
all of the business assets to which the Agreement pertains which
successor shall expressly assume in writing performance of all the
terms and conditions of this Agreement to be performed by the assigning
party.
This Agreement contains the entire understandings of the parties and no
amendment may be made hereto without the express written consent of
each of the parties.
15. ARBITRATION AND APPLICABLE LAW
This Agreement shall be construed under the substantive laws of the
State of California, United States, without giving effect to choice of
law or conflict of law principles. In the event of any dispute or
controversy arising under this Agreement or the transactions
contemplated herein, the parties mutually consent to the jurisdiction
of the courts sitting in the State of California, United States.
16. COUNTERPARTS
For convenience of the parties hereto, this Agreement may be executed
in one or more counterparts, each of which shall be deemed an original
for all purposes.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized officers as of the date first written
below.
Calbiochem-Novabiochem Paracelsian
International
/s/▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇▇▇ 3/25/96 /s/▇▇▇▇▇ ▇. ▇▇▇▇▇▇ 4/1/96
Signature Date Signature Date
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Chairman and CEO President and CEO