Confidential treatment has been requested for portions of this document.
Brackets indicate portions of text that have been omitted. A separate filing
of such omitted text has been made with the Commission as part of the
Company's application for confidential treatment.
LICENSE AGREEMENT
BETWEEN
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
AND
CV THERAPEUTICS, INC.
JUNE 27, 1994
TABLE OF CONTENTS
PAGE
Article I - Definitions...................................................... 1
Article II - Grant........................................................... 4
Article III - Due Diligence.................................................. 5
Article IV - Royalties....................................................... 6
Article V - Reports And Records.............................................. 8
Article VI - Patent Prosecution and Infringement............................ 9
Article VII - Product Liability.............................................. 10
Article VIII - Confidentiality............................................... 11
Article IX - Export Controls................................................. 12
Article X - Non-Use Of Names................................................. 12
Article XI - Assignment...................................................... 12
Article XII - Term and Termination........................................... 12
Article XIII - Payments, Notices And Other Communications.................... 14
Article XIV - Miscellaneous Provisions....................................... 15
APPENDIX A...................................................................A-1
i
LICENSE AGREEMENT
This Agreement is made and entered into this 27th day of June, 1994, (the
Effective Date) by and between THE UNIVERSITY OF FLORIDA RESEARCH FOUNDATION,
INC., a not-for-profit corporation duly organized and existing under the laws of
the State of Florida and having its principal office at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ (hereinafter referred to UFRFI), and CV
THERAPEUTICS, INC., a corporation duly organized under the laws of Delaware and
having its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
(hereinafter referred to as Licensee).
WITNESSETH
WHEREAS, UFRFI is the owner of certain "Patent Rights" (as later defined
herein) by assignment from the University of Florida (hereinafter referred to as
University) and the University of South Florida relating to UFRFI Case No.1195
"Adenosine Receptors" invented by Dr. ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇, Dr. ▇▇▇▇▇▇▇ ▇▇▇▇▇ and
▇▇. ▇▇▇ ▇▇▇▇▇▇ and has the right to grant licenses under said Patent Rights;
WHEREAS, said Patent Rights were invented pursuant to an American Heart
Association sponsored research grant;
WHEREAS, ▇▇. ▇▇▇▇▇▇▇▇▇▇▇▇ and ▇▇. ▇▇▇▇▇ are employees of the University of
Florida and ▇▇. ▇▇▇▇▇▇ is an employee of the University of South Florida;
WHEREAS, UFRFI desires to have the Patent Rights and Know-How utilized in
the public interest and is willing to grant a license thereunder;
WHEREAS, Licensee desires to obtain a license under the Patent Rights and
Know-How in order to develop, market and sell Licensed Products as provided
herein;
WHEREAS, Licensee and the University of Florida have entered into a
Research Agreement of even date herewith providing for certain additional
research and the parties have agreed that any inventions within the scope of
such research program shall be included in the Patent Rights and Know-How
licensed hereunder;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein the parties hereto agree as follows:
ARTICLE I- DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.
1.1 "FIELD OF USE" shall mean the detection, prevention and treatment of
human and animal diseases and disorders relating adenosive receptors and analogs
thereof.
1.2 "JOINT INVENTIONS" shall mean individually and collectively all
inventions, improvements and/or discoveries, patentable or unpatentable, which
are conceived and/or made jointly by one or more employee of either of the
Universities and one or more employee of Licensee as a result of the Project
Work relating to adenosine receptors or analogs thereof, whether conceived or
made in connection with the Project Work or otherwise. For the purposes of this
Agreement, the "making" of inventions shall be governed by U.S. laws of
inventorship.
1.3 "JOINT PATENTS" shall mean individually and collectively any and all
United States and foreign patent applications and any and all issued United
States Letters Patent and foreign patents which are conceived and/or made
jointly by one or more employee of either of the Universities and one or more
employee of Licensee which pertain to Joint Inventions.
1.4 "KNOW-HOW" shall mean any and all technical data, information, or
knowledge related to or described in the Patent Rights or created or discovered
in the course of the Project Work. Upon the reasonable request of Licensee to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇▇ or ▇▇. ▇▇▇▇▇ for other information relating to the manufacture,
marketing, registration, purity, quality, potency, safety, and efficacy of the
Licensed Products, including without limitation, any University Inventions and
Joint Inventions, UFRFI shall provide such information provided that the
Licensee shall reimburse UFRFI for out-of-pocket expenses, if any, associated
with providing such information. Said information provided by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇▇
or ▇▇. ▇▇▇▇▇ to Licensee shall be deemed Know-How for purposes of this
Agreement.
1.5 "LICENSEE" shall mean all of the following:
(a) a related company of Licensee, the voting stock of which is
directly or indirectly at least fifty percent (50%) owned or
controlled by Licensee;
(b) an organization which directly or indirectly controls more
than fifty percent (50%) of the voting stock of Licensee;
and
(c) an organization, the majority ownership of which is directly
or indirectly common to the ownership of Licensee.
1.6 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 such product or part thereof is made, used
or sold; or
(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
2.
Rights in the country in which any such process is used or in
which such product or part thereof is used or sold; or
(c) is derived from any of the Know-How not otherwise includable
in the Patent Rights; and
(d) is sold, manufactured or used in any country under this
Agreement.
1.7 "NET SALES" shall mean Licensee's ▇▇▇▇▇▇▇▇ and its sublicensees'
receipts (except as provided below) for Licensed Products sold hereunder less
the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales taxes, 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. If Licensee receives royalties from any
sublicensee on the basis of such sublicensee's ▇▇▇▇▇▇▇▇ for Licensed Products,
it shall pay royalties UFRFI on the basis of such sublicensee's ▇▇▇▇▇▇▇▇.
1.8 "PATENT RIGHTS" shall mean all of the following intellectual
property owned or controlled by UFRFI:
(a) the United States patent application listed in Appendix A
and any foreign patent applications thereof;
(b) United States and foreign patents issued from such
applications 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) any reissues of United States patents described in (a), (b)
or (c) above.
The Patent Rights shall include, without limitation, any University
Patents and UFRFI's rights under any Joint Patents.
3.
1.9 "PROJECT WORK" shall mean that research work to be performed by
University pursuant to the Research Agreement.
1.10 "RESEARCH AGREEMENT" shall mean that agreement attached hereto as
Exhibit B.
1.11 "UNIVERSITIES" shall mean individually and collectively the
University of Florida and the University of South Florida.
1.12 "UNIVERSITY INVENTIONS" shall mean individually and collectively all
inventions, improvements and/or discoveries, patentable or unpatentable, which
are conceived and/or made by one or more employees of the Universities, during
the course of the Project Work, including without limitation, all inventions,
improvements and/or discoveries relating to adenosine receptors or analogs
thereof made by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇. ▇▇▇▇▇ and/or one or more of employees of
the University of Florida working directly for either ▇▇. ▇▇▇▇▇▇▇▇▇▇▇▇ or ▇▇.
▇▇▇▇▇ during the period beginning with the Effective Date and terminating on the
first anniversary of the Effective Date.
1.13 "UNIVERSITY PATENTS" shall mean individually and collectively any
and all United States and foreign patent applications and any and all issued
United States Letters Patent and foreign patents owned solely by Universities
which pertain to University Inventions.
ARTICLE II - GRANT
2.1 UFRFI hereby grants to Licensee the exclusive, worldwide right and
license, under the Patent Rights and Know-How and in the Field of Use, subject
to the terms and conditions of this Agreement to make, have made, use and sell
the Licensed Products.
2.2 Licensee agrees that Licensed Products sold in the United States
shall be manufactured substantially in the United States if said Licensed
Products were invented in whole or in part with federal government research
support. Licensee further agrees that it shall abide by all rights and
limitations of U.S. Code, Title 35, Chapter 38, and implementing regulations
thereof, for all patent applications and patents invented in whole or in part
with federal money.
2.3 In order to establish exclusivity for Licensee, UFRFI hereby
represents that it has not, and agrees that it shall not, grant any other
license under the Patent Rights and Know-How and in the Field of Use to make,
have made, use and sell Licensed Products during the term of this Agreement.
2.4 UFRFI reserves the right for the Universities to practice under the
Patent Rights and Know-How and to use and distribute to third parties the
tangible property described in the Patent Rights and Know-How solely for its own
noncommercial research purposes.
2.5 Licensee shall have the right to enter into sublicensing agreements
for the rights, privileges and licenses granted hereunder. However, Licensee
shall notify UFRFI in writing
4.
within ten (10) business days of the initiation of license negotiations with all
potential sublicensees.
2.6 Licensee hereby agrees that every sublicensing agreement to which it
shall be a party and which shall relate to the rights, privileges and license
granted hereunder shall contain a statement setting forth the date upon which
Licensee's exclusive rights, privileges and license hereunder shall terminate.
2.7 Licensee agrees that the terms of any sublicense granted hereunder
shall be consistent with the terms of this Agreement. Licensee further agrees
to attach copies of the following provisions of this Agreement to sublicense
agreements: I (Definitions); II (Grant); V (Reports and Records); VI (Patent
Prosecution and Infringement); VII (Product Liability); IX (Export Controls); X
(Non-Use of Names); XII (Termination) and XIV (Miscellaneous).
2.8 Licensee agrees to forward to UFRFI a copy of any and all sublicense
agreements within thirty (30) days of the execution of such sublicense
agreements and further agrees to forward to UFRFI 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.
2.9 Licensee shall not receive from sublicenses anything of value in
lieu of cash payments in consideration for any sublicense under this Agreement,
without the express prior written consent of UFRFI.
2.10 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 herein.
ARTICLE III - DUE DILIGENCE
3.1 Licensee shall use commercially reasonable efforts to develop and
commercialize, one or more Licensed Products to market through a thorough and
diligent program for the exploitation of the right and license granted in this
Agreement and to create, supply and service as extensive a market for Licensed
Products as is reasonably possible in order to maximize its sale of Licensed
Products.
3.2 In addition, Licensee shall adhere to the following milestones:
(a) Licensee shall deliver to UFRFI on or before December 27, 1994
a project plan showing the projected amount of money, number
and kind of personnel and time budgeted and planned for each
phase of development of the Licensed Products and Licensed
Processes and shall provide similar reports to UFRFI on an
annual basis on or before the ninetieth (90th) day following
the close of Licensee's fiscal year. The parties acknowledge
5.
that the Licensed Products relate to pharmaceutical and
diagnostic products which typically require long periods for
development and with respect to which estimates are subject to
substantial uncertainty as to time, technology and funding
requirements.
(b) Licensee shall permit an in-plant inspection by UFRFI on or
before June 27, 1995, and thereafter permit in-plant
inspections at regular intervals with at least twelve (12)
months between each such inspection. All such inspections
shall be on reasonable notice to Licensee and during normal
business hours.
(c) Licensee shall notify UFRFI of any outside preclinical and
clinical studies to be performed relating to the Licensed
Products and UFRFI shall have thirty (30) days from such
notice in which to submit to Licensee a proposal for
participation; after such thirty (30) day period, Licensee
shall have the right to solicit proposals from any third
party.
(d) Licensee (or any of its sublicensees) shall file, or have
filed on its behalf, an investigational new drug application
in the U.S. within one (1) year following completion of the
Project Work and after completion of any other necessary and
sufficient preclinical safety and efficacy studies,
manufacturing, quality control and clinical investigation
documentation. Licensee agrees that it will complete such
safety and efficacy studies within one (1) year following
completion of the Project Work.
(e) Licensee (or any of its sublicensees) will promote market
and sell a Licensed Product in a country in the Territory
within [ ] of receipt of all
governmental approvals necessary for the commercial sale of
such Licensed Product.
3.3 If Licensee fails to perform in accordance with Paragraphs 3.1 and
3.2, UFRFI shall have the right, effective upon thirty (30) days written notice
to Licensee, during which period Licensee may cure such default, to convert the
license granted under Paragraph 2.1 to a non-exclusive license.
3.4 If Licensee has not commenced clinical trials relating to the
Licensed Products by January 1, 1999, then, UFRFI may, but shall not be
obligated to, terminate this Agreement upon sixty (60) days written notice to
Licensee.
ARTICLE IV - ROYALTIES
4.1 Licensee shall pay license fees, royalties and sublicense fees to
UFRFI as follows:
6.
(a) [
] which said [ ]
shall be deemed earned and due [
].
(b) [
]
PROVIDED, HOWEVER, that in countries where neither [
] such
[ ] shall be [
] of any given year.
(c) [
] excluding amounts paid to Licensee [
].
Upon request from UFRFI, Licensee shall provide written
evidence that such excluded amounts are [
].
4.2 No [ ] shall be payable because any [
] under this Agreement.
4.3 [ ] shall be paid in United States dollars in
Gainesville, Florida or at such other place as UFRFI 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 [
] hereunder, such conversion shall be made by using the exchange rate
prevailing at the Chase Manhattan Bank (N.A.) on the last business day of the
calendar quarterly reporting period to which such royalty payments relate.
4.4 In the event the [ ] set forth herein are higher than the [
] permitted by the law or regulations of a particular country, the [
] for sales in such country shall be equal to the [
] under such law or regulations. Notice of said event shall be provided to
UFRFI. An authorized representative of Licensee shall notify UFRFI, in writing,
within thirty (30) days of discovering that [ ] are approaching or
have reached the [ ], and shall provide UFRFI with written
documentation regarding the laws or regulations establishing such maximum.
4.5 In the event that any taxes, withholding or otherwise, are levied by
any taxing authority in connection with accrual or payment of any royalties
payable by Licensee under this Agreement, and Licensee determines in good faith
that it must pay such taxes, Licensee shall have the right to pay such taxes to
the local tax authorities on behalf of UFRFI and payment of the net amount due
after reduction by the amount of such taxes, shall fully satisfy Licensee's
royalty obligations under this Agreement. Licensee shall provide UFRFI with
appropriate receipts or other documentation supporting such payment. Licensee
shall inform UFRFI in
7.
writing, within thirty (30) days of notification that taxes will or have been
levied by a taxing authority.
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 UFRFI 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 UFRFI or its agents for the purpose of verifying Licensee's royalty statement
or compliance in other respects with this Agreement.
5.2 Licensee, within ninety (90) days after March 31, June 30, September
30 and December 31, of each year, shall deliver to UFRFI true and accurate
reports, giving such particulars of the business conducted by Licensee and 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) [
], if any.
(b) [ ].
(c) deductions applicable [ ].
(d) [ ].
(e) names and addresses of all sublicensees of Licensee.
(f) A progress report on [
] covering
Licensed Products or Licensed Processes.
5.3 With each such report submitted, Licensee shall pay to UFRFI 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 provide UFRFI with Licensee's [
] including, at a minimum, [
].
5.5 The [ ] and [
] set forth in this Agreement shall, if overdue, bear interest until
payment at the monthly rate of [ ]
8.
[ ]. The payment of such interest shall not foreclose UFRFI from
exercising any other rights it may have as a consequence of the lateness of any
payment.
ARTICLE VI - PATENT PROSECUTION AND INFRINGEMENT
6.1 During the term of this Agreement, [ ] will be responsible for
filing, prosecuting and maintaining patent applications with respect to the
Patent Rights, at its own expense. [ ] will retain patent counsel of its
choosing but reasonably acceptable to [ ] in connection with the
performance of [ ] obligations under this Section 6.1 and shall
designate [ ] as an additional client with respect to such representation.
As an additional client, [ ] shall be entitled to receive copies of
correspondence and filings with the U.S. Patent and Trademark office and foreign
equivalents and to be consulted regarding such patent applications.
6.2 [ ] will cooperate with [ ] in the preparation, filing,
prosecution and maintenance of patents and patent applications with respect to
the Patent Rights by disclosing such information as may be necessary and by
promptly executing such documents as [ ] may reasonably request to effect
such efforts.
6.3 If [ ] wishes to file a patent application with respect to any
invention claimed in the Patent Rights in any jurisdiction in which no
application has yet been filed, [ ] will so notify [ ] in writing,
upon receipt of which [ ] will have ninety (90) days to file such patent
application. If [ ] declines or fails to file such patent application, [
] may file and prosecute such patent application, at [ ] own expense.
In such event, [ ] will have no rights under Section 2.1 to practice the
invention disclosed in such patent application in such jurisdiction.
6.4 If [ ] intends to abandon all claims under all patent
applications contained in the Patent Rights in a particular jurisdiction, it
will notify [ ] within ninety (90) days of its proposed abandonment, but no
later than thirty (30) days prior to any deadline for filing any response or
taking any action necessary to maintain such application. Upon receipt of such
notice [ ] may, by written notice to [ ], elect to continue the
prosecution of such application. The costs and expenses associated such
prosecution will be borne solely by [ ]; provided, however, that if [ ]
obtains issuance of any such patent application, [ ] shall reimburse [
] for such costs and expenses. [ ] determination to abandon any patent
application hereunder will have no force and effect upon the license granted
with respect to such patent application pursuant to Section 2.1.
6.5 For so long as [ ] under this
Agreement, [
] shall be responsible, solely at its expense, for
defending and enforcing the Patent Rights. However, [ ] shall receive
notice of and shall have the right, at its expense, to participate in the
protection and defense of the Patent Rights. [ ] shall have the right to
settle and compromise any dispute with third parties, with the prior written
consent of [ ], which consent shall not be unreasonably withheld. All
costs, fees and expenses incurred in connection
9.
with the defense and enforcement of the Patent Rights shall be borne by [
] , provided, however, that [
] and [
] in connection therewith. Said [ ] shall begin no
earlier than the date [
]. Any [
] pursuant to this
Article VI. [
] To the extent that [
] shall be entitled to [
] under this
Agreement.
[ ] agrees to cooperate reasonably in any such litigation initiated by [
] including participating as a necessary party, supplying essential
documentary evidence and making essential witnesses in [ ] employment
available.
6.6 If [ ] does not, within ninety (90) days after receiving
notice or otherwise becoming aware of a third party infringement of any of the
Patent Rights, take appropriate action to address such third party infringement,
then [ ] may take such legally permissible action as it deems necessary or
appropriate to enforce the Patent Rights and restrain such infringement. In
such event, all costs, fees and expenses incurred in connection with the defence
and enforcement of the Patent Rights shall be borne by [ ]. [ ]
agrees to cooperate reasonably in any such litigation initiated by [ ]
including participating as a necessary party, supplying essential documentary
evidence and making essential witnesses in [ ] 's employment available.
If [ ] shall prevail in such proceeding, either by way of judgment or
settlement or compromise, any amounts recovered by [ ] shall be divided
equally between the parties, net of expenses incurred in connection therewith,
with the payment made promptly after such receipt of such amounts.
6.7 If [ ] has a [ ] under this Agreement,
the parties shall discuss [ ].
ARTICLE VII - PRODUCT LIABILITY
7.1 Licensee shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UFRFI, the USF Research Foundation Inc.
and the Universities, their trustees, officers, employees and affiliates,
harmless against all claims and expenses, including legal expenses and
reasonable attorneys' fees, whether arising from a third party claim or
resulting from UFRFI's enforcing this indemnification clause against Licensee,
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,
sale, use, consumption or advertisement of the Licensed Product(s) or arising
from any obligation of Licensee hereunder.
10.
7.2 Licensee shall obtain and carry in full force and effect liability
insurance, in amounts customary in the biotechnology industry, which shall
protect Licensee, UFRFI and the USF Research Foundation Inc. in regard to events
covered by Paragraph 7.1 above.
7.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UFRFI
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR
PENDING.
ARTICLE VIII - CONFIDENTIALITY
8.1 Anything in this Agreement to the contrary notwithstanding, any and
all knowledge, know-how, practices, process or other information of any kind and
in any form (hereinafter referred to as "Confidential Information") disclosed or
submitted, either orally, in writing or in other tangible or intangible form
which is designated as Confidential Information, to either party by the other
shall be received and maintained by the receiving party in strict confidence and
shall not be disclosed to any third party. Furthermore, neither party shall use
the said Confidential Information for any purpose other than those purposes
specified in this Agreement. The parties may disclose Confidential Information
to the minimum number of its employees reasonably requiring access thereto for
the purposes of this Agreement provided, however, that prior to making any such
disclosures each such employee shall be apprised of the duty and obligation to
maintain Confidential Information in confidence and not to use such information
for any purpose other than in accordance with the terms and conditions of this
Agreement.
8.2 Nothing contained herein will in any way restrict or impair either
parties right to use, disclose, or otherwise deal with any Confidential
Information which at the time of its receipt:
(a) Is generally available in the public domain, or thereafter
becomes available to the public through no act of the receiving party; or
(b) Was independently known prior to receipt thereof, or made
available to such receiving party as a matter of lawful right by a third party.
8.3 Each party may disclose any Confidential Information to the extent
that such party has been advised by counsel that such disclosure is necessary
for such party to comply with laws or regulations, provided that the party
proposing to make such disclosure shall give the other party reasonable advance
notice of such disclosure and shall use its best efforts to secure confidential
treatment of such Information to be disclosed.
8.4 The obligations of this Article VIII shall continue until the later
of the term of this Agreement and for a period of five (5) years thereafter or
for so long as any Confidential
11.
Information not otherwise includable in the Patent Rights or Know-How is being
utilized in connection with any Licensed Product.
8.5 Each party agrees that remedies at law may be inadequate to protect
against breach of this Article VIII, and hereby agrees to the granting of
injunctive relief, without proof of actual damages.
ARTICLE IX - EXPORT CONTROLS
Licensee hereby agrees that it shall not sell, transfer, export or reexport
any Licensed Products or related information in any form, or any direct products
of such information, except in compliance with all applicable laws, including
the export laws of any U.S. government agency and any regulations thereunder,
and will not sell, transfer, export or reexport any such Licensed Products or
information to any persons or any entities with regard to which there exist
grounds to suspect or believe that they are violating such laws. Licensee shall
be solely responsible for obtaining all licenses, permits or authorizations
required from the U.S. and any other government for any such export or reexport.
To the extent not inconsistent with this Agreement, UFRFI agrees to provide
Licensee with such assistance as it may reasonably request in obtaining such
licenses, permits or authorization.
ARTICLE X - NON-USE OF NAMES
Licensee shall not use the names of the Universities or UFRFI nor of any of
their employees, nor any adaptation thereof, in any advertising, promotional or
sales literature without prior written consent obtained from UFRFI in each case,
except that Licensee may state that it is licensed by UFRFI under one or more of
the patents and/or applications comprising the Patent Rights. The parties agree
to issue a mutually agreed press release on or after the Effective Date.
ARTICLE XI - ASSIGNMENT
Licensee shall have the right to assign its rights or obligations under
this Agreement in connection with a merger or similar reorganization or the sale
of all or substantially all of the assets to which this Agreement pertains, or
otherwise with the prior written consent of UFRFI. This Agreement shall be
binding upon and inure to the benefit of the successors and permitted assigns of
Licensee. Any assignment not in accordance with this Agreement shall be void.
ARTICLE XII - TERM AND TERMINATION
12.1 Unless sooner terminated as provided herein, this Agreement will
expire on the later of the date on which the last to expire of the Patent Rights
shall expire or fifteen (15) years from the first commercial sale of a Licensed
Product. Upon such expiration of this Agreement, Licensee shall have a fully
paid-up worldwide right and license under the Patents and Know-How for any
purpose.
12.
12.2 If Licensee shall cease to carry on its business, this Agreement
shall terminate upon notice by UFRFI.
12.3 In the event either party files for bankruptcy or a receiver is
appointed, this Agreement may immediately thereafter be terminated at the option
of the other party.
12.4 Should Licensee fail to pay UFRFI [ ] due
and payable hereunder, UFRFI shall have the right to terminate this Agreement on
[ ] notice, unless Licensee shall pay UFRFI within the [
] period, all such royalties and fees and interest due and
payable. Upon the expiration of the [ ] period, if
Licensee shall not have paid all such royalties and fees and interest due and
payable, the rights, privileges and license granted hereunder shall terminate.
12.5 Upon any material breach or default of this Agreement by Licensee,
other than under Sections 3.1, 3.2 and 3.4 and those occurrences set out in
Paragraphs 12.2 and 12.4 hereinabove, which shall always take precedence in that
order over any material breach or default referred to in this Paragraph 12.5,
UFRFI shall have the right to terminate this Agreement and the rights,
privileges and license granted hereunder by [ ] notice to
Licensee. Such termination shall become effective unless (i) Licensee shall
have cured any such breach or default prior to the expiration of the [
] period or (ii) Licensee shall have demonstrated substantial efforts to cure
such breach or default, which efforts shall be reasonably satisfactory to UFRFI.
12.6 Licensee shall have the right to terminate this Agreement at any
time on six (6) months' written notice to UFRFI, and upon payment of all
amounts due UFRFI through the effective date of the termination.
12.7 UFRFI may [
].
12.8 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 UFRFI 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.
12.9 Upon termination of this Agreement for any reason, any sublicensee
not then in default under its sublicense agreement with Licensee shall
automatically have [
] under this Agreement [
] on economic terms [
] and otherwise with the [ ]
hereunder, provided, however, that Sublicensee shall have [
] from notice by [ ] ] in order to:
13.
(i) pay any [ ] due and
payable or
(ii) cure any such breach or default in any manner [
] or [
] cure such breach or default, which [
];
or [ ].
12.10 Upon termination of this Agreement for any reason, all intellectual
property rights licensed hereunder, including without limitation all Patent
Rights and rights in and to the Know-How, University Patents and University
Inventions shall [ ](except to the extent assumed by
sublicensees pursuant to Section 12.9) and [ ] shall have no further
right to or continuing interest herein. In addition, upon termination of this
Agreement, to the extent that [
].
ARTICLE XIII - 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 mailing if sent to such party by
certified first class mail or air courier, postage prepaid, addressed to it at
its address below or at it shall designate by written notice given to the other
party:
In the case of UFRFI:
President
University of Florida Research Foundation, Inc.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
With a copy to:
Director
Office of Patent, Copyright and Technology Licensing
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
All payments to:
Director
Office of Patent, Copyright and Technology Licensing
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
14.
PLEASE MAKE ALL CHECKS PAYABLE TO:
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
In the case of Licensee:
CV Therapeutics, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President and CEO
ARTICLE XIV - MISCELLANEOUS PROVISIONS
14.1 Each party represents and warrants that it has the authority to
enter into this Agreement and that the execution, delivery and performance of
this Agreement do not conflict with any agreement or understanding, either
written or oral, to which it is a party or to which it is otherwise bound.
14.2 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the State of Florida, U.S.A., except that
questions affecting the construction and effect of any Patent Rights shall be
determined by the law of the country in which the patent was granted.
14.3 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.
14.4 If any term, covenant or condition of this Agreement or the
application thereof to any party or circumstance shall, to any extent, be held
to be invalid or unenforceable, then (i) the remainder of this Agreement, or the
application of such term, covenant or condition to Parties or circumstances
other than those as to which it is held invalid or unenforceable, shall not be
affected thereby and each term, covenant or condition of this Agreement shall be
valid and be enforced to the fullest extent permitted by law; and (ii) the
parties hereto covenant and agree to renegotiate any such term, covenant or
application thereof in good faith in order to provide a reasonably acceptable
alternative to the term, covenant or condition of this Agreement or the
application thereof that is invalid or unenforceable, it being the intent of the
Parties that the basic purposes of this Agreement are to be effectuated.
14.5 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.
14.6 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 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.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
By /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
-----------------------------
Name
------------------------------------
Title President
-----------------------------------
Date 7/6/94
------------------------------------
CV THERAPEUTICS, INC.
By /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
--------------------------------------
Name
------------------------------------
Title Chief Executive Officer
-----------------------------------
Date 8/30/94
----------------------------------------
16.
APPENDIX A
[
]
U.S.S.N. [ ]
By [ ]
Filed [ ]
A-1