Exhibit 4.1
SETTLEMENT AGREEMENT
This Agreement is between BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS
SYSTEM and THE UNIVERSITY OF TEXAS M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER, Plaintiffs
(collectively referred to herein as "Board of Regents"), and THE LIPOSOME
COMPANY, INC., Defendant (referred to herein as "TLC").
WHEREAS, Board of Regents and TLC are desirous of settling the various
claims embodied in the litigation presently pending as Civil Action No.
H-96-1040 in the United States District Court for the Southern District of
Texas, Houston Division;
NOW, THEREFORE, it is hereby agreed as follows:
1. Dismissal of Action
On or before August 31, 1997, Board of Regents and TLC shall
file a Stipulation of Dismissal in the above-entitled action in which each party
dismisses all of its claims in the action with prejudice and agrees to bear its
own costs and attorney fees, as set forth in Exhibit A attached hereto and made
a part hereof for all purposes.
2. License to TLC
Board of Regents hereby agrees to grant, and TLC agrees to
accept, a license under U.S. Patent No. 4,663,167 ("the `167 patent"), under the
terms and conditions set forth in Exhibit B.
3. Release
3.1 Board of Regents hereby releases TLC, TLC's Affiliates and
customers of TLC and TLC's Affiliates from any and all past claims for damages,
injunction, attorney fees, and any other liability arising out of the
manufacture, use, offer to sell or sale of the ABELCET(R) product or any method
or product infringing the `167 patent. For purposes of this Agreement, "TLC
Affiliates" shall mean business entities (a) more than fifty percent (50%) owned
by TLC, (b) that own more than fifty percent (50%) of TLC, or (c) that are more
than fifty percent (50%) owned by a business entity that owns more than fifty
percent (50%) of TLC.
3.2 TLC hereby releases Board of Regents, its agents and
attorneys, from any and all claims for damages, attorney fees, and any other
liability arising out of this litigation.
4. Confidentiality
4.1 Except for a press release to be mutually agreed upon by
the parties, TLC and Board of Regents shall keep the terms and conditions of
this Agreement in strict confidence and shall not, without first securing the
written consent of the other party, disclose the terms or conditions of the
Agreement to any other person or entity except (a) the Board of Regents may
fully disclose the terms and conditions of this Agreement to the named inventors
of the '167 Patent provided that, prior to such disclosure the inventors agree
to keep such information in strict confidence and not disclose such terms or
conditions to any other person or entity; (b) as may be required by law,
government regulations, the rules of the Nasdaq National Market requirements and
Generally Accepted Accounting Principles; (c) any of the parties may disclose
this Agreement to a court for the purpose of securing compliance therewith; or
(d) these restrictions shall not apply to any information which was publicly
available as of August 1, 1997.
5. Miscellaneous
5.l This Agreement embodies the total understanding of the
parties, and no provision hereof may be modified unless such modification is in
writing and signed by the parties to this Agreement.
5.2 This Agreement has been executed in multiple counterparts,
each of which shall be deemed an original. 5.3 This Agreement shall be governed
by the laws of the State of Texas. 5.4 This Agreement shall have an effective
date of July 1. 1997.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By:____________________________ By:_______________________________
▇▇▇▇▇▇▇ ▇. Best ▇▇▇ ▇▇▇▇▇▇▇
Chief Financial Officer Vice Chancellor and
General Counsel
APPROVED AS TO CONTENT: APPROVED AS TO FORM:
By:______________________________________ By:_______________________________
▇▇▇▇▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
Director, Technology Department Office of General Counsel
THE LIPOSOME COMPANY, INC.
By:____________________________________
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Chairman of the Board and
Chief Executive Officer
IN THE UNITED STATES DISTRICT COURT FOR
THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
BOARD OF REGENTS OF THE ss.
UNIVERSITY OF TEXAS SYSTEM, ss.
and THE UNIVERSITY OF TEXAS ss.
M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER, ss.
ss.
Plaintiffs, ss. Civil Action No. H-96-1040
ss.
v. ss.
ss.
THE LIPOSOME COMPANY, INC. ss.
ss.
Defendant. ss.
STIPULATION OF DISMISSAL
It is hereby stipulated and agreed that the above-entitled action
shall be and hereby is dismissed and, further, it is specifically stipulated and
agreed that:
(1) the claims of Plaintiffs, Board of Regents of The University of
Texas System and The University of Texas M.D. ▇▇▇▇▇▇▇▇ Cancer Center, set forth
in Plaintiffs' Original Complaint and Plaintiffs' Reply to Amended Answer and
Counterclaim of The Liposome Company, Inc., are dismissed with prejudice; and
(2) the claims of Defendant, The Liposome Company, Inc., set forth in
the Amended Answer and Counterclaim of The Liposome Company, Inc., are dismissed
with prejudice.
Each of the parties is to bear its own costs and attorney fees.
EXHIBIT A
All relief otherwise requested by each of the parties against the other
is denied.
Dated:______________________ ____________________________________
▇▇▇▇▇ ▇. Nation - SB 14819500
Attorney-in-Charge
▇▇▇▇▇ ▇. ▇▇▇▇▇▇ - SB 15475320
▇▇▇▇▇▇, WHITE & ▇▇▇▇▇▇
1900 One American Center
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇)▇▇▇-▇▇▇▇
Facsimile: (▇▇▇)▇▇▇-▇▇▇▇
ATTORNEYS FOR PLAINTIFFS
Dated:______________________ ______________________________________
▇▇▇▇▇ ▇. ▇▇▇▇▇ - SB 07853000
Attorney-in-Charge
J. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ - SB 16801900
▇▇▇▇▇ & ▇▇▇▇▇, LLP
▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇)▇▇▇-▇▇▇▇
Facsimile: (▇▇▇)▇▇▇-▇▇▇▇
ATTORNEYS FOR DEFENDANT
APPROVED:
_____________________________
▇▇▇. ▇▇▇▇▇ ▇. Atlas
U.S. District Judge
PATENT LICENSE AGREEMENT
THIS twelve (12) page AGREEMENT ("AGREEMENT") is made on this first (1st) day of
July, 1997, by and between the BOARD OF REGENTS ("BOARD") of THE UNIVERSITY OF
TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose address is ▇▇▇
▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, THE UNIVERSITY OF TEXAS M. D. ▇▇▇▇▇▇▇▇
CANCER CENTER ("MDA"), a component Institution of the SYSTEM and THE LIPOSOME
COMPANY, a Delaware corporation having a principal place of business located at
▇ ▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ("LICENSEE").
TABLE OF CONTENTS
RECITALS Page 2
I. EFFECTIVE DATE Page 2
II. DEFINITIONS Page 2
III. LICENSE Page 3
IV. CONSIDERATION, PAYMENTS AND REPORTS Page 4
V. INFRINGEMENT BY THIRD PARTIES Page 6
VI. INFRINGEMENT NOTICE Page 6
VII. INDEMNIFICATION Page 6
VIII. USE OF BOARD AND COMPONENT'S NAME Page 7
IX. CONFIDENTIAL INFORMATION Page 7
X. ASSIGNMENT Page 8
XI. TERMS AND TERMINATION Page 8
XII. WARRANTY: SUPERIOR-RIGHTS Page 9
XIII. GENERAL Page 9
SIGNATURES Page 11
EXHIBIT B
RECITALS
A. BOARD owns certain PATENT RIGHTS related to LICENSED SUBJECT MATTER, which
were developed at MDA, a component institution of SYSTEM.
B. BOARD desires to have the LICENSED SUBJECT MATTER used for the benefit of
LICENSEE, BOARD, SYSTEM, MDA, the inventor, and the public as outlined in
the Intellectual Property Policy promulgated by the BOARD.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED
SUBJECT MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties hereto agree as follows:
I. EFFECTIVE DATE
1.1 Subject to approval by BOARD, this AGREEMENT shall be effective as of the
date written herein above ("EFFECTIVE DATE").
II. DEFINITIONS
As used in this AGREEMENT, the following terms shall have the meanings
indicated:
2.1 ABELCET(R)product shall mean the TLC product as approved and marketed in
the United States under NDA 50-724 or in any other territory under a
regulatory filing based on the product information in NDA 50-724.
2.2 AFFILIATE shall mean any business entity more than fifty percent (50%)
owned by LICENSEE, any business entity which owns more than fifty percent
(50%) of LICENSEE, or any business entity that is more than fifty percent
(50%) owned by a business entity that owns more than fifty percent (50%)
of LICENSEE.
2.3 LICENSED PRODUCTS shall mean ABELCET(R) or any product or service
comprising LICENSED SUBJECT MATTER SOLD by LICENSEE that is made, used, or
sold in the LICENSED TERRITORY pursuant to this AGREEMENT.
2.4 LICENSED SUBJECT MATTER shall mean inventions and discoveries defined
herein as PATENT RIGHTS.
2.5 LICENSED TERRITORY shall mean the United States of America.
2.6 NET SALES shall mean
2.6 PATENT RIGHTS shall only mean any and all of BOARD'S rights in the
inventions claimed in the '167 patent, and all divisionals, continuations,
continuations-in-part, reissues, reexaminations or extensions thereof or
of the patent application(s) from which the '167 patent issued or an
application which claims priority from any patent application(s)which gave
rise to the '167 patent.
2.7 SALE or SOLD shall mean the transfer or disposition of a LICENSED PRODUCT
for value to a party other than LICENSEE, LICENSEE'S AFFILIATE or
sublicensee.
2.8 '167 patent shall mean U. S. ▇▇▇. No. 4,663,167 issued May 5, 1987.
III. LICENSE
3.1 BOARD, through MDA, hereby grants to LICENSEE a royalty-bearing, exclusive
license under LICENSED SUBJECT MATTER to manufacture, have manufactured,
use, offer for sale, and/or sell LICENSED PRODUCTS within LICENSED
TERRITORY. This grant shall be subject to Paragraph 12.2 and 12.3
hereinbelow, the payment by LICENSEE to BOARD of all consideration as
provided in Paragraph 4.1 of this AGREEMENT, and shall be further subject
to rights retained by BOARD and MDA to:
(a) Publish the general scientific findings from MDA's research
related to LICENSED SUBJECT MATTER; and
(b) Subject to the provisions of ARTICLE IX herein below, use any
information contained in LICENSED SUBJECT MATTER for
educationally-related research, teaching, patient care, and
other purposes.
3.2 LICENSEE shall have the right to extend the license granted herein
to any AFFILIATE provided that such AFFILIATE consents to be bound
by all of the terms and conditions of this AGREEMENT.
3.3 Subject to the Paragraph 3.4 herein below, LICENSEE shall have the
right to grant sublicenses under LICENSED SUBJECT MATTER consistent
with the terms of this AGREEMENT provided that LICENSEE shall be
responsible for its sublicensees relative to this AGREEMENT, and for
diligently collecting all amounts due LICENSEE from sublicensees. In
the event a sublicensee pursuant hereto becomes bankrupt, insolvent or
is placed in the hands of a receiver or trustee, LICENSEE, to the
extent allowed under applicable law and in a timely manner, agrees to
use its best reasonable efforts to collect any and all consideration
owed to LICENSEE and to have the sublicense agreement confirmed or
rejected by a court of proper jurisdiction.
3.4 LICENSEE agrees to deliver to MDA a true and correct copy of each
sublicense granted by LICENSEE, and any modification or termination
thereof, within thirty (30) days after execution, modification, or
termination.
3.5 Upon termination of this AGREEMENT, BOARD and MDA agree to accept as
successors to LICENSEE, existing sublicensees in good standing at the
date of termination provided that such sublicensees consent in writing
to be bound by all of the terms and conditions of this AGREEMENT.
3.6 BOARD, through MDA, hereby grants TLC and TLC's AFFILIATES a covenant
not to ▇▇▇ for patent infringement based upon any currently issued
patent, pending application or a patent issued on an application
claiming priority from an application pending on July 1, 1997, owned by
BOARD as a result of their manufacture, use, offer to sell, or sale of
TLC's ABELCET(R) product. Unless by mutual written agreement between
BOARD, MDA and LICENSEE, this covenant not to ▇▇▇ shall automatically
terminate if this Agreement is terminated prior to expiration of the
full term of this Agreement as set forth in Article 11.1 hereinbelow.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1 In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, and as full and complete satisfaction of any claims the
BOARD or MDA brought or could have brought for sales of ABELCET(R),
LICENSEE agrees to pay MDA the following:
(a) Non-refundable initial royalty composed of the following:
(1) A payment of
, which shall not reduce the amount of any other
payment provided for in this ARTICLE IV, and which
shall be due and payable within thirty (30) days
after approval of this AGREEMENT by BOARD as invoiced
by MDA;
(2) Issuance of common stock of The Liposome Company to
BOARD or its designee(s) with a value guaranteed by
LICENSEE equal to Two Hundred Fifty-Five Thousand &
00/100 Dollars ($255,000) (LICENSEE will pay interest
of eight percent (8%) per annum after July 31, 1997
until the stock becomes marketable.)
(3)
(4) Issuance to the BOARD or its designee(s) of warrants
to purchase one million (1,000,000) shares of common
stock of The Liposome Company at Fifteen & 00/100
Dollars ($15) per share exercisable from July 1, 1998
through July 1, 2008, provided however, all such
warrants shall become callable by The Liposome
Company when the price of a common share of stock of
The Liposome Company reaches Twenty-Five & 00/100
Dollars ($25) per share and such share price remains
at or above Twenty-Five & 00/100 Dollars ($25) per
share for two (2) continuous weeks (such share price
being its closing price on the NASDAQ).
(b) A running royalty as set forth in Exhibit 1 hereto as a
percent of NET SALES of LICENSED PRODUCTS manufactured, used,
or sold in the LICENSED TERRITORY. Within forty-five (45) days
after March 31, June 30, September 30, and December 31 of each
year during the term of this AGREEMENT, LICENSEE shall deliver
to BOARD and MDA a true and accurate report, giving such
particulars of the business conducted by LICENSEE, LICENSEE'S
AFFILIATES and its sublicensees, if any exist, during the
preceding three (3) calendar months under this AGREEMENT as
necessary for BOARD to account for LICENSEE'S payments
hereunder. Such report shall include all pertinent data,
including, but not limited to: (a) the total quantities of
LICENSED PRODUCTS produced; (b) the total gross sales and
revenues from LICENSEE PRODUCTS, (c) the calculation of NET
SALES and royalties thereon; (d) the total royalties so
computed and due MDA; and (e) all other amounts due MDA
herein. Simultaneously with the delivery of each such report,
LICENSEE shall pay to MDA the amount, if any, due for the
period of such report. If no payments are due, it shall be so
reported.
4.2
4.3 During the Term of this AGREEMENT and for one (1) year thereafter,
LICENSEE shall keep complete and accurate records of its and its
sublicensees' gross sales and NET SALES of LICENSED PRODUCTS to enable
the royalties payable hereunder to be determined. LICENSEE shall permit
MDA or its representatives, at MDA's expense, to periodically examine
its books, ledgers, and records during regular business hours for the
purpose of and to the extent necessary to verify any report required
under this AGREEMENT. In the event that the amounts due to MDA are
determined to have been underpaid in an amount equal to or greater than
five percent (5%) of the total amount due during the period of time so
examined, LICENSEE shall pay the cost of such examination, and accrued
interest at the highest allowable rate.
4.4 All amounts payable hereunder by LICENSEE shall be payable in United
States funds without deductions for taxes, assessments, fees, or
charges of any kind. Checks shall be made payable to The University of
Texas M. D. ▇▇▇▇▇▇▇▇ Cancer Center and mailed by U.S. Mail to Box
297402, ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ Attention: Manager, Sponsored Programs.
V. INFRINGEMENT BY THIRD PARTIES
5.1 LICENSEE shall have the right to enforce at its expense any patent
exclusively licensed hereunder against infringement by third parties
and shall be entitled to retain recovery from such enforcement.
LICENSEE shall pay MDA a royalty on any monetary recovery to the extent
that such monetary recovery by LICENSEE is held to be damages or a
reasonable royalty in lieu thereof. In the event that LICENSEE does not
file suit against a substantial infringer of such patents within six
(6) months of knowledge thereof, then BOARD and MDA shall have the
right at their sole discretion to enforce any patent licensed hereunder
on behalf of itself and LICENSEE, with MDA retaining all recoveries
from such enforcement.
VI. INFRINGEMENT NOTICE
6.1 LICENSEE or LICENSEE'S AFFILIATES shall inform BOARD and MDA, in
writing within thirty (30) days, of becoming aware of any suspected
infringement (actual or threatened) in the LICENSED TERRITORY of any
claim in the PATENT RIGHTS by a third party, and, with respect to such
activities as are suspected, LICENSEE or LICENSEE'S AFFILIATES shall
set forth the facts and details of such suspected infringement in
reasonable detail.
VII. INDEMNIFICATION
7.1 LICENSEE shall hold harmless and indemnify BOARD, SYSTEM, MDA, its
Regents, officers, employees, students, and agents from and against any
claims, demand, or causes of action whatsoever, costs of suit and
reasonable attorney's fees including without limitation those costs
arising on account of any injury or death of persons or damage to
property caused by, or arising out of, or resulting from, the exercise
or practice of the license granted hereunder by LICENSEE or its
officers, employees, agents or representatives.
VIII. USE OF BOARD AND COMPONENT'S NAME
8.1 LICENSEE shall not use the name of (or the name of any employee of)
MDA, SYSTEM or BOARD without the advance, express written consent of
BOARD secured through:
The University of Texas
M. D. ▇▇▇▇▇▇▇▇ Cancer Center
Office of Public Affairs
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
ATTENTION: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
IX. CONFIDENTIAL INFORMATION
9.1 Except for a press release to be mutually agreed upon by the parties,
LICENSEE, BOARD AND MDA shall keep the terms and conditions of this
Agreement in strict confidence and shall not, without first securing
the written consent of the other party, disclose the terms or
conditions of the Agreement to any other person or entity except (a)
MDA may fully disclose the terms and conditions of this Agreement to
the named inventors of the '167 Patent provided that, prior to such
disclosure the inventors agree to keep such information in strict
confidence and not disclose such terms or conditions to any other
person or entity; (b) as may be required by law, government
regulations, the rules of the Nasdaq National Market requirements and
Generally Accepted Accounting Principles; (c) any of the parties may
disclose this Agreement to a court for the purpose of securing
compliance therewith; or (d) these restrictions shall not apply to any
information which was publicly available as of August 1, 1997.
9.2 BOARD, MDA and LICENSEE each agree that all information contained in
documents marked "confidential" which are forwarded to one by the other
shall be received in strict confidence, used only for the purposes of
this AGREEMENT, and not disclosed by the recipient party (except to the
named inventors of the '167 patent under conditions of confidentiality,
or as required by law or court order), its agents or employees without
the prior written consent of the other party, unless such information
(a) was in the public domain at the time of disclosure, (b) later
became part of the public domain through no act or omission of the
recipient party, its employees, agents, successors or assigns, (c) was
lawfully disclosed to the recipient party by a third party having the
right to disclose it, (d) was already known by the recipient party at
the time of disclosure, (e) was independently developed or (f) is
required to be submitted to a government agency pursuant to any
preexisting obligation.
9.3 BOARD'S, MDA'S and LICENSEE'S obligation of confidence hereunder shall
be fulfilled by using the same degree of care with the other party's
confidential information as it uses to protect its own confidential
information. This obligation shall exist while this AGREEMENT is in
force and for a period of three (3) years thereafter.
X. ASSIGNMENT
10.1 Except in connection with the sale of substantially all of
LICENSEE's assets to a third party this AGREEMENT may not be
assigned by LICENSEE without the prior written consent of MDA.
XI. TERMS AND TERMINATION
11.1 Subject to Articles 11.2, and 11.3 hereinbelow, the term of this
AGREEMENT shall extend from the Effective Date set forth hereinabove as
long as PATENT RIGHTS have not expired, been extinguished by failure to
pay fees or by final adjudication of invalidity.
11.2 Subject to any rights herein which survive termination, this AGREEMENT
will earlier terminate in its entirety:
(a) automatically if LICENSEE shall become bankrupt or insolvent
and/or if the business of LICENSEE shall be placed in the
hands of a receiver or trustee, whether by voluntary act of
LICENSEE or otherwise; or
(b) (i) upon thirty (30) days written notice by MDA if LICENSEE
shall breach or default on the payment obligations of ARTICLE
IV, or use of name obligations of ARTICLE VIII; or (ii) upon
ninety (90) days written notice by MDA if LICENSEE shall
breach or default on any other obligation under this
AGREEMENT; provided, however, LICENSEE may avoid such
termination if before the end of such thirty (30) day period
if LICENSEE provides notice and accurate, written evidence
satisfactory to MDA that such breach has been cured and the
manner of such cure; or
(c) at any time by mutual written agreement between LICENSEE, MDA
and BOARD.
11.3 Upon termination of this AGREEMENT for any cause:
(a) nothing herein shall be construed to release either party of
any obligation matured prior to the effective date of such
termination.
(b) LICENSEE covenants and agrees to be bound by the provisions of
ARTICLES VII, VIII and IX of this AGREEMENT.
(c) LICENSEE may, after the effective date of such termination, or
upon expiration of PATENT RIGHTS, sell all LICENSED PRODUCTS
therefore that LICENSEE, LICENSEE'S AFFILIATES or sublicensees
may have on hand at the date of expiration or termination,
provided that LICENSEE pays the appropriate royalty thereon
and any other amounts due pursuant to ARTICLE IV of this
AGREEMENT.
XII. WARRANTY: SUPERIOR-RIGHTS
12.1 Except for the rights, if any, of the Government of the United States
as set forth hereinbelow, BOARD represents and warrants its belief that
it is the owner of the entire right, title, and interest in and to
LICENSED SUBJECT MATTER, and that it has the sole right to grant
licenses thereunder, and that it has not knowingly granted licenses
thereunder to any other entity that would restrict rights granted
hereunder except as stated herein.
12.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United
States of America and, if so, that the Government may have certain
rights relative thereto. This AGREEMENT is explicitly made subject to
the Government's rights under any such agreement and any applicable law
or regulation, including P.L. 96-517 as amended by P.L. 98-620. To the
extent that there is a conflict between any such agreement, applicable
law or regulation and this AGREEMENT, the terms of such Government
agreement, applicable law or regulation shall prevail.
12.3 LICENSEE understands and agrees that BOARD, by this AGREEMENT, makes no
representation as to the operability or fitness for any use, safety,
efficacy, approvablity by regulatory authorities, time and cost of
development, patentability, and/or breadth of the LICENSED SUBJECT
MATTER. Also LICENSEE understands and agrees that BOARD, by this
AGREEMENT, makes no representation as to whether there are any patents
now held, or which will be held, by others or by BOARD on the LICENSED
PRODUCTS, nor does BOARD make any representation that the inventions
contained in PATENT RIGHTS do not infringe any other patents now held
or that will be held by others or by BOARD.
XIII. GENERAL
13.1 This AGREEMENT constitutes the entire and only AGREEMENT between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby.
No agreements altering or supplementing the terms hereof may be made
except by means of a written document signed by the duly authorized
representatives of the parties.
13.2 Any notice required by this AGREEMENT shall be given by prepaid,
first class, certified mail, return receipt requested, and addressed
in the case of BOARD to:
BOARD OF REGENTS
The University of Texas System
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
ATTENTION: System Intellectual
Property Office
with copy to: The University of Texas
M.D. ▇▇▇▇▇▇▇▇ Cancer Center
Office of Technology Development
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
ATTENTION: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
or in the case of LICENSEE to: The Liposome Company
One Research Way
Princeton ▇▇▇▇▇▇▇▇▇ Center
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
ATTENTION: Office of General Counsel
or such other address as may be given from time to time under the terms
of this notice provision.
13.3 LICENSEE covenants and agrees to comply with all applicable federal,
state and local laws and regulations in connection with its activities
pursuant to this AGREEMENT.
13.4 This AGREEMENT shall be construed and enforced in accordance with the
laws of the United States of America and of the State of Texas.
13.5 Failure of BOARD to enforce a right under this AGREEMENT shall not act
as a waiver of that right or the ability to later assert that right
relative to the particular situation involved.
13.6 Headings included herein are for convenience only and shall not be used
to construe this AGREEMENT.
13.7 If any provision of this AGREEMENT shall be found by a court to be
void, invalid or unenforceable, the same shall be reformed to comply
with applicable law or stricken if not so conformable, so as not to
affect the validity or enforceability of this AGREEMENT.
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By ______________________________ By_________________________________
▇▇▇▇▇▇▇ ▇. Best ▇▇▇ ▇▇▇▇▇▇▇
Chief Financial Officer Vice Chancellor and
General Counsel
APPROVED AS TO CONTENT: APPROVED AS TO FORM:
By_______________________________ By_________________________________
▇▇▇▇▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
Director, Technology Development Office of General Counsel
THE LIPOSOME COMPANY, INC.
By________________________________
Name______________________________
Title_____________________________
EXHIBIT 1
ROYALTY SCHEDULE