1
EXHIBIT 10.22
AMENDED AND RESTATED
LICENSE AND RESEARCH
COLLABORATION AGREEMENT
BETWEEN
CORIXA CORPORATION
AND
GENQUEST, INC.
December 23, 1996
2
AMENDED AND RESTATED LICENSE AND RESEARCH
COLLABORATION AGREEMENT ........................................1
RECITALS ................................................................1
ARTICLE 1 - DEFINITIONS .................................................1
1.1 Affiliate ......................................................1
1.2 Annual Management Plan .........................................2
1.3 Call Option Agreement ..........................................2
1.4 Co-Exclusive Field .............................................2
1.5 Control ........................................................2
1.6 Corixa Exclusive Field .........................................2
1.7 Corixa Gene Discovery Know-how .................................2
1.8 Corixa Gene Discovery Methodologies . ....... ...... ...........2
1.9 Corixa Gene Product ............................................2
1.10 Corixa Gene Product Know-how ...................................3
1.11 Corixa Gene Product Patent .....................................3
1.12 Corixa Know-how ................................................3
1.13 Corixa Net Sales ...............................................3
1.14 Corixa Option ..................................................3
1.15 Corixa Research Patents ........................................3
1.16 Corixa Technology ..............................................3
1.17 Effective Date .................................................3
1.18 Existing Corixa Know-how .......................................3
1.19 Existing Corixa Patents ........................................4
1.20 Existing Corixa Technology .....................................4
1.21 Existing Third Party Agreements ................................4
1.22 FDA ............................................................4
1.23 Field ..........................................................4
1.24 ▇▇▇▇▇▇ Methodology .............................................4
1.25 Gene Product ...................................................4
1.26 GenQuest Exclusive Field .......................................4
1.27 GenQuest Gene Discovery Methodologies ..........................4
1.28 GenQuest Gene Product ..........................................4
1.29 GenQuest Gene Product Know-how .................................5
1.30 GenQuest Gene Product Patent ...................................5
1.31 GenQuest Know-how ..............................................5
1.32 GenQuest Net Sales .............................................5
1.33 GenQuest Option ................................................5
1.34 GenQuest Patents ...............................................5
1.35 GenQuest Technology ............................................6
1.36 Identified .....................................................6
1.37 IND ............................................................6
1.38 Information ....................................................6
1.39 Joint Patent ...................................................6
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1.40 Material Breach ................................................6
1.41 Net Sales ......................................................6
1.42 Patent .........................................................6
1.43 Patent Costs ...................................................7
1.44 Product ........................................................7
1.46 Regulatory Exclusivity .........................................7
1.47 Research Services Costs ........................................7
1.48 Research .......................................................7
1.49 Research Management Committee ..................................7
1.50 Research Plan ..................................................7
1.51 Research Term ..................................................7
1.52 [***] ..........................................................8
1.53 Secret .........................................................8
1.54 Substantial ....................................................8
1.55 Territory ......................................................8
1.56 Third Party ....................................................8
1.57 Vaccine ........................................................8
ARTICLE 2 - RESEARCH MANAGEMENT COMMITTEE ...............................8
2.1 Research Management Committee ....................................8
2.2 Responsibilities of Research Management Committee ................9
2.3 Board Oversight of Plans; Annual Management Plan;
Responsibility for Administrative Services .......................9
ARTICLE 3 - RESEARCH ....................................................10
3.1 Collaborative Research ...........................................10
3.2 Research Efforts and Expenses ....................................10
ARTICLE 4 - LICENSES ....................................................11
4.1 License to Corixa; Limitation on Sublicense ......................11
4.2 Licenses to GenQuest; Limitation on Sublicense ...................12
4.3 Assignment or Sublicense to Affiliates ...........................13
4.4 Existing Third Party Technology ..................................13
4.5 Additional Technology ............................................14
4.6 Internal Corixa Gene Discovery Research ..........................14
4.7 Limitations ......................................................14
ARTICLE 5 - TRADEMARKS ..................................................14
5.1 Trademarks .......................................................14
ARTICLE 6 - CORIXA ROYALTIES ............................................15
6.1 Royalties ........................................................15
6.2 Third Party Agreements ...........................................16
6.3 Reporting and Payment of Royalties ...............................16
6.4 Samples or Donations to Third Parties ............................16
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ARTICLE 7 - GENQUEST ROYALTIES ..........................................16
7.1 Royalties ........................................................16
7.2 Third Party Agreements ...........................................16
7.3 Reporting and Payment of Royalties ...............................16
7.4 Samples or Donations to Third Parties ............................17
ARTICLE 8 - PAYMENTS; OTHER CONSIDERATION ...............................17
8.1 FTE Reimbursement ................................................17
8.2 Other Expenses ...................................................17
8.3 Payment ..........................................................17
ARTICLE 9 - EQUITY ......................................................17
ARTICLE 10 - CONFIDENTIALITY ............................................17
10.1 Confidentiality; Exceptions ......................................17
10.2 Authorized Disclosure ............................................18
10.3 Confidentiality Agreements with Employees ........................18
ARTICLE 11 - OWNERSHIP OF INTELLECTUAL PROPERTY AND
PATENT RIGHTS ..............................................18
11.1 Non-Gene Product Inventions Resulting from the Research ..........19
11.2 Gene Product Inventions Resulting from the Research ..............19
11.3 Grants to GenQuest ...............................................20
11.4 GenQuest Responsibility for Patent Filings .......................20
11.5 Back-Up Rights ...................................................21
11.6 Enforcement and Defense Rights ...................................21
11.7 Patent Costs .....................................................22
11.8 Infringement of Third Party Patents ..............................22
ARTICLE 12 - REPRESENTATIONS, WARRANTIES AND COVENANTS ..................22
12.1 Representations, Warranties and Covenants of Both Parties.........22
12.2 Representations, Warranties and Covenants of GenQuest ............22
12.3 Representations, Warranties and Covenants of Corixa ..............24
ARTICLE 13 - REPORTS, RECORDS AND PAYMENTS ..............................26
13.1 Sharing of Information ...........................................26
13.2 Record of Net Sales ..............................................26
13.3 Records of Research Expenditures .................................26
13.4 Publicity Review .................................................26
13.5 Publications .....................................................27
ARTICLE 14 - TERM AND TERMINATION; CERTAIN OPTION RIGHTS ................27
14.1 Term ............................................................27
14.2 Termination for Material Breach .................................27
14.3 Termination for Bankruptcy ......................................28
14.4 Termination by GenQuest .........................................29
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14.5 Termination by Corixa ...........................................29
14.6 Surviving Rights ................................................29
14.7 Accrued Rights, Surviving Obligations ...........................29
14.8 Certain Option Rights ...........................................30
ARTICLE 15 - INDEMNIFICATION AND LIMITATIONS; DISPUTE RESOLUTION ........30
15.1 Indemnification by Corixa .......................................30
15.2 Indemnification by GenQuest .....................................30
15.3 Limited Liability ...............................................30
15.4 Warranty Disclaimer .............................................31
15.5 Dispute Resolution ..............................................31
ARTICLE 16 - MISCELLANEOUS ..............................................33
16.1 Assignment to Non-Affiliates: Sale or Merger ....................33
16.2 Force Majeure ...................................................33
16.3 Further Actions .................................................33
16.4 No Trademark Rights .............................................33
16.5 Notices .........................................................33
16.6 Governing Law ...................................................34
16.7 Waiver ..........................................................35
16.8 Severability ....................................................35
16.9 Entire Agreement ................................................35
16.10Certain Legal Fees ..............................................35
16.11Waiver of Conflicts .............................................35
EXHIBITS
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Exhibit A Call Option Agreement
Exhibit 1.19 Existing Corixa Patents
Exhibit 1.9 Exclusions from "Corixa Gene Product"
Exhibit 1.24 ▇▇▇▇▇▇ Methodology
Exhibit 3.1 Research Plan
Exhibit 4.4(a) Corixa Third Party Agreements
Exhibit 4.4(b) GenQuest Third Party Licenses with respect to the ▇▇▇▇▇▇
Methodology
Exhibit 12.2(g) GenQuest Gene Products
SCHEDULES
Schedule 3.2 Payments for Research Services
Schedule 12.2 GenQuest Schedule of Exceptions
Schedule 12.3 Corixa Schedule of Exceptions
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AMENDED AND RESTATED LICENSE AND RESEARCH
COLLABORATION AGREEMENT
THIS AMENDED AND RESTATED LICENSE AND RESEARCH COLLABORATION
AGREEMENT (this "Agreement") is dated as of the 23rd day of December, 1996 (the
"Execution Date") by and between GenQuest, Inc., a Delaware corporation having
its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("GenQuest") and Corixa Corporation, a Delaware corporation
having its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Corixa").
RECITALS
A. Corixa and GenQuest are parties to that certain License and Research
Collaboration Agreement dated February 2, 1996 (the "Prior Collaboration
Agreement") pursuant to which Corixa and GenQuest agreed to collaborate in the
discovery and characterization of novel genes through functional assays for
treatment of cancer or pre-neoplastic cell proliferation diseases in humans and
animals, with a view to developing technology and/or possible products for use
and/or sale by the parties.
B. Under the Prior Collaboration Agreement, Corixa obtained rights to
use certain GenQuest proprietary technology to research and develop Vaccine
products for the treatment of cancer and GenQuest obtained rights to use certain
proprietary Corixa technology to research and develop non-Vaccine products for
the treatment and diagnosis of cancer. Corixa and GenQuest also cross licensed
certain inventions and/or discoveries to each other pursuant to the Prior
Collaboration Agreement.
C. Corixa and GenQuest each desire to continue such collaboration on
modified terms and conditions, and in connection therewith, Corixa and GenQuest
each desire to terminate the Prior Collaboration Agreement in its entirety and
accept the rights and obligations created pursuant hereto in lieu of the rights
and obligations created under the Prior Collaboration Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
The following terms shall have the following meanings as used in this
Agreement:
1.1 "Affiliate" means an entity that, directly or indirectly, through
one or more intermediaries, controls, is controlled by or is under common
control with GenQuest or Corixa. For the purposes of this definition, control
means the direct or indirect ownership of (a) at least fifty percent (50%) or,
if less than fifty percent (50%), the maximum percentage as allowed by
applicable law, of the outstanding voting securities of such entity or (b) at
least fifty percent (50%) of the decision making authority of such entity;
provided, however, that neither Corixa nor GenQuest shall be deemed to be an
Affiliate of the other for purposes of this Agreement.
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1.2 "Annual Management Plan" has the meaning assigned to it in Section
2.3 of the Agreement.
1.3 "Call Option Agreement" means the Call Option Agreement dated as of
the date hereof by and among GenQuest, Corixa and the investors in GenQuest
listed on Exhibit A thereto (the "Call Option Agreement").
1.4 "Co-Exclusive Field" means the treatment, prevention or diagnosis of
diseases in humans, which diseases are not included in the GenQuest Exclusive
Field or the Corixa Exclusive Field.
1.5 "Control" means possession of the ability to grant a license or
sublicense as provided for herein, without violating the terms of the license or
other acquisition agreement, if any, pursuant to which a party hereto (or its
Affiliates) acquired such subject matter.
1.6 "Corixa Exclusive Field" means the treatment of disease (including
but not limited to cancer and/or pre-neoplastic cell proliferation disease
and/or infectious disease) in humans or animals through (a) the use of a Vaccine
or (b) the use of ex vivo hematopoeitic cell therapy for adoptive immunotherapy.
1.7 "Corixa Gene Discovery Know-how" means Information necessary or
useful to practice any Corixa Gene Discovery Methodology that is within the
Control of Corixa and is required to be disclosed to GenQuest pursuant to
Section 13.1 of this Agreement.
1.8 "Corixa Gene Discovery Methodologies" shall mean all gene discovery
methodologies invented or discovered by Corixa or its Affiliates during the
Research Term or in-licensed by Corixa or its Affiliates during the Research
Term, in each case to the extent the same is Controlled by Corixa.
1.9 "Corixa Gene Product" means [***], which in each case are Controlled
by Corixa or its Affiliates at any time until the date that is one (1) year
after termination of the Research Term, including such inventions or discoveries
made prior to the Effective Date (but excluding those items listed in Exhibit
1.9). Corixa Gene Product shall in no event be deemed to include any Corixa Gene
Discovery Methodology.
1.10 "Corixa Gene Product Know-how" means Information necessary or
useful to practice Corixa Gene Products which (i) Corixa is required to disclose
to GenQuest pursuant to the terms of Section 13.1 of this Agreement, and (ii) is
within the Control of Corixa.
1.11 "Corixa Gene Product Patent" means any Patent that comes into the
Control of Corixa or its Affiliates with claims covering a Corixa Gene Product.
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1.12 "Corixa Know-how" means Information which (i) Corixa is required to
disclose to GenQuest pursuant to the terms of Section 13.1 of this Agreement and
(ii) during the Research Term is within the Control of Corixa.
1.13 "Corixa Net Sales" means the amount actually received by Corixa or
an Affiliate, assignee or sublicensee of Corixa or a distributor, reseller or
other entity in the distribution chain in connection with sales of Products or
GenQuest Gene Products under this Agreement (other than GenQuest or its
Affiliates) to a Third Party which intends to use and not resell the Product or
GenQuest Gene Products, less the following, to the extent the same are credited
or deducted by the buyer as a reduction of the invoiced amount: (i) discounts,
including cash discounts, or rebates, retroactive price reductions or allowances
actually allowed or granted from the billed amount, (ii) credits or allowances
actually granted upon claims, rejections or returns of Products or GenQuest Gene
Products, including recalls, regardless of the party requesting such, (iii)
freight, postage, shipping and insurance charges paid for delivery of any
Product or GenQuest Gene Product, to the extent billed, and (iv) taxes, duties
or other governmental charges levied on or measured by the billing amount when
included in billing, as adjusted for rebates and refunds; provided however, that
Corixa Net Sales shall in no event include any amounts paid to Corixa by
GenQuest as royalties under this Agreement or pursuant to Section 8 hereof. As
used herein, "Products" and GenQuest Gene Products include products that
incorporate Products or GenQuest Gene Products.
1.14 "Corixa Option" has the meaning assigned to it in Section 14.8(a)
of this Agreement.
1.15 "Corixa Research Patents" means any Patent that comes into the
Control of Corixa or its Affiliates with claims covering an invention or
discovery other than a Corixa Gene Product made by Corixa during the Research;
excluding, however, Joint Patents.
1.16 "Corixa Technology" means the Corixa Know-how and Corixa Research
Patents, collectively.
1.17 "Effective Date" means January 1, 1996.
1.18 "Existing Corixa Know-how" means Information necessary or useful to
practice Existing Corixa Patents that (i) is within the Control of Corixa as of
the Effective Date or (ii) comes into the Control of Corixa during the Research
Term.
1.19 "Existing Corixa Patents" means the patent applications and issued
patent and invention disclosures (which are subsequently covered by patent
applications and/or issued patents) set forth on Exhibit 1.19 hereto together
with all divisionals, continuations, continuations-in-part, foreign counterparts
thereof, all patents issuing on any of the foregoing and all registrations,
re-issues, re-examinations and renewals thereof.
1.20 "Existing Corixa Technology" means the Existing Corixa Know-how and
the Existing Corixa Patents, collectively.
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1.21 "Existing Third Party Agreements" has the meaning assigned to it in
Section 4.4 of this Agreement.
1.22 "FDA" has the meaning assigned to it in Section 4.1(c) of this
Agreement.
1.23 "Field" means the treatment, prevention or diagnosis of cancer or
pre-neoplastic cell proliferation disease in humans or animals. [***].
1.24 "▇▇▇▇▇▇ Methodology" means the methodology for the discovery of
genes that is the subject of the issued patents and/or patent applications set
forth on Exhibit 1.24 and any additional patents and/or patent applications
required to be disclosed by GenQuest to Corixa pursuant to Section 12.2(g) of
this Agreement, and all divisionals, continuations, continuations-in-part,
foreign counterparts thereof, all patents issuing on any of the foregoing and
all registrations, reissue, re-examination or renewal thereof.
1.25 "Gene Product" means the Corixa Gene Products and the GenQuest Gene
Products, collectively.
1.26 "GenQuest Exclusive Field" means that portion of the Field that is
not included within the Corixa Exclusive Field.
1.27 "GenQuest Gene Discovery Methodologies" means (i) the ▇▇▇▇▇▇
Methodology and (ii) all other gene discovery methodologies invented or
discovered by GenQuest during the Research Term or in-licensed by GenQuest
pursuant to Section 4.5 during the Research Term, in each case to the extent the
same is Controlled by GenQuest.
1.28 "GenQuest Gene Product" means [***] which in each case are
Controlled by GenQuest or its Affiliates at any time until the date that is one
(1) year after termination of the Research Term, including all such inventions
or discoveries made prior to the Effective Date. GenQuest Gene Product shall in
no event be deemed to include any GenQuest Gene Discovery Methodology.
1.29 "GenQuest Gene Product Know-how" means Information necessary or
useful to practice GenQuest Gene Products which (i) (a) is in existence as of
the Effective Date or (b) GenQuest is required to disclose to Corixa pursuant to
the terms of Section 13.1 of this Agreement and (ii) is within the Control of
GenQuest.
1.30 "GenQuest Gene Product Patent" means any Patent that comes into the
Control of GenQuest or its Affiliates with claims covering a GenQuest Gene
Product.
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1.31 "GenQuest Know-how" means Information necessary or useful to
practice any GenQuest Gene Discovery Methodology that is (i) in the Control of
GenQuest as of the Effective Date or (ii) is required to be disclosed to Corixa
pursuant to Sections 12.3 or 13.1 of this Agreement.
1.32 "GenQuest Net Sales" means the amount actually received by GenQuest
or an Affiliate, assignee or sublicensee of GenQuest or a distributor, reseller
or other entity in the distribution chain in connection with sales of Corixa
Gene Products under this Agreement (other than Corixa or its Affiliates) to a
Third Party which intends to use and not resell the Corixa Gene Product, less
the following, to the extent the same are credited or deducted by the buyer as a
reduction of the invoiced amount: (i) discounts, including cash discounts, or
rebates, retroactive price reductions or allowances actually allowed or granted
from the billed amount, (ii) credits or allowances actually granted upon claims,
rejections or returns of Corixa Gene Products, including recalls, regardless of
the party requesting such, (iii) freight, postage, shipping and insurance
charges paid for delivery of any Corixa Gene Product, to the extent billed, and
(iv) taxes, duties or other governmental charges levied on or measured by the
billing amount when included in billing, as adjusted for rebates and refunds;
provided, however, that GenQuest Net Sales shall in no event include amounts
paid to GenQuest by Corixa as royalties under this Agreement. For purposes of
determining "GenQuest Net Sales" under this Agreement, including Section 7.1
hereof, "Corixa Gene Product" shall include any products that incorporate Corixa
Gene Products.
1.33 "GenQuest Option" has the meaning assigned to it in Section 14.8(b)
of this Agreement.
1.34 "GenQuest Patents" means the ▇▇▇▇▇▇ Methodology and any Patent that
comes into the Control of GenQuest or its Affiliates with claims covering an
invention or discovery made by GenQuest (other than a GenQuest Gene Product or
GenQuest Gene Product Know-how) during the Research; excluding, however, Joint
Patents.
1.35 "GenQuest Technology" means the GenQuest Know-how and GenQuest
Patents, collectively.
1.36 "Identified" shall mean that the GenQuest Know-how, GenQuest Gene
Product Know-how, Existing Corixa Know-how, Corixa Know-how, Corixa Gene
Discovery Know-how or Corixa Gene Product Know-how, as the case may be, is
described or recorded in this Agreement, or as an Exhibit or Schedule hereto, or
in a separate document or recorded in any other definable form, at the latest
when such know-how is transferred or disclosed pursuant to the disclosure
obligations set forth in Section 13.1, such that the separate document or other
record can be made available if the need arises.
1.37 "IND" has the meaning assigned to it in Section 4.1(c) of this
Agreement.
1.38 "Information" shall mean present and future techniques, inventions
and/or discoveries, practices, methods, knowledge, know-how, skill, test data
and software encoding the same, including biological materials, pharmacological,
toxicological and clinical test data,
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▇▇▇▇▇▇▇▇ ▇▇▇▇, analytical and quality control data, marketing, pricing, cost,
sales and manufacturing data.
1.39 "Joint Patent" means any Patent the subject of which is an
invention jointly invented by the parties other than a GenQuest Gene Product or
Corixa Gene Product during the Research. Inventorship shall be determined under
the laws of the jurisdiction in which the Patent was filed.
1.40 "Material Breach" means:
(a) with respect to GenQuest, a material breach of GenQuest's
obligations under Article 7, Article 8, Article 10, Article 11 or Article 13, or
Sections 3.1, 3.2, the first sentence of 4.5, 4.6, 4.7, 12.1, 12.2, 14.8, 15.2,
or 16.1 of this Agreement or a material breach of that certain Administrative
Services and Management Agreement between Corixa and GenQuest of even date
herewith, which breach is not cured within ninety (90) days of written notice
thereof from Corixa; and
(b) with respect to Corixa, a material breach of Corixa's
obligations under Article 6, Article 9, Article 10, Article 11 or Article 13, or
Sections 2.3, 3.1, 3.2, the first sentence of 4.5, 4.6, 4.7, 12.1, 12.3, 14.8,
15.1, or 16.1 of this Agreement or a material breach of that certain
Administrative Services and Management Agreement between Corixa and GenQuest of
even date herewith, which breach is not cured within ninety (90) days of written
notice thereof from GenQuest.
1.41 "Net Sales" means Corixa Net Sales and/or GenQuest Net Sales, as
applicable.
1.42 "Patent" means any patent application or issued patent, including
all divisionals, continuations, continuations-in-part, foreign counterparts
thereof, all patents issuing on any of the foregoing and all registrations,
reissue, re-examination or renewal thereof, in each case to the extent the same
claims and discloses an invention [***].
1.43 "Patent Costs" means the reasonable fees and expenses paid to
outside legal counsel and other Third Parties, and filing and maintenance
expenses, incurred in connection with the establishment and maintenance of
Patent rights licensed under this Agreement, including costs of interference
proceedings with respect to the Patents, but specifically excluding expenses
related to litigation, including, without limitation, any expenses related to
the enforcement or defense of any such Patent right.
1.44 "Product" means any product developed by either GenQuest or Corixa
subsequent to the Effective Date and covered by or incorporating, including or
developed using GenQuest Technology, Corixa Technology, Joint Patents, Existing
Corixa Technology, Corixa Gene Products and/or GenQuest Gene Products, as the
case may be; provided, however, that GenQuest Gene Products shall not be deemed
"Products" for the purposes of this definition or the royalties payable pursuant
to Articles 6.1(a) of this Agreement.
1.45 [Intentionally Omitted]
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1.46 "Regulatory Exclusivity" means the designation of a Product
developed by Corixa or GenQuest, as the case may be, as an orphan drug by the
FDA under the Orphan Drug Act, 21 C.F.R. Section 316.27, or any other regulatory
designation in a country that provides regulatory exclusivity equivalent to the
FDA's orphan drug designation.
1.47 "Research Services Costs" shall mean the price of the services
provided by Corixa to be paid by GenQuest pursuant to Sections 8.1 and 8.2.
1.48 "Research" means all research activities performed by or for the
parties during the Research Term pursuant to the Research Plan. Any research
performed by either party other than during the Research Term and directly
pursuant to the Research Plan shall not be deemed to constitute "Research" for
purposes of this Agreement.
1.49 "Research Management Committee" has the meaning assigned in Article
2.
1.50 "Research Plan" has the meaning assigned in Section 3.1.
1.51 "Research Term" means the period commencing on the Effective Date
and ending on the first to occur of (i) termination of this Agreement or the
Research Term by either party pursuant to the terms of this Agreement or (ii)
December 23, 1999 (unless extended in writing by mutual agreement of the
parties).
1.52 "[***]" means the technology covered by United States
Patent Application Serial No. [***], filed [***].
1.53 "Secret" means that the GenQuest Know-how, GenQuest Gene Product
Know-how, Existing Corixa Know-how, Corixa Know-how, Corixa Gene Discovery
Know-how or Corixa Gene Product Know-how, as the case may be, as a body or in
the precise configuration and assembly of its components, is not generally known
or easily accessible at the time first learned, so that its value is readily
definable [***].
1.54 "Substantial" means that the GenQuest Know-how, GenQuest Gene
Product Know-how, Existing Corixa Know-how, Corixa Know-how, Corixa Gene
Discovery Know-how or Corixa Gene Product Know-how, as the case may be, includes
information which is of importance for the whole or a significant part of (i) a
manufacturing process, or (ii) a product or service, or (iii) for the discovery
or development thereof, and excludes information which is trivial. [***].
1.55 "Territory" means the entire world.
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1.56 "Third Party" means any person or entity other than GenQuest or
Corixa or their respective Affiliates.
1.57 "Vaccine(s)" means the administration of [***], for the primary
purpose and effect of eliciting [***] immune response directed to [***]
contained therein. [***].
ARTICLE 2
RESEARCH MANAGEMENT COMMITTEE
2.1 Research Management Committee. Upon the Effective Date of this
Agreement, a Research Management Committee shall be created and such Research
Management Committee shall remain in existence for the Research Term. The
Research Management Committee shall be comprised of four (4) individuals, two
(2) individuals being appointed and replaced by GenQuest and two (2) individuals
being appointed and replaced by Corixa. In addition, each party shall have the
right to send additional representatives to meetings of the Research Management
Committee from time to time for the purpose of observing such committee
meetings. The initial GenQuest appointees shall be ▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇
▇▇▇▇▇▇▇▇▇ and the initial Corixa appointees shall be ▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇▇ ▇▇▇▇.
Either Corixa or GenQuest may replace their respective appointee(s) upon prior
written notice to the other party, subject to the reasonable approval of the
other party. Any changes to the size of the Research Management Committee must
be made by unanimous vote of the Board of Directors of GenQuest. The Research
Management Committee shall meet at least quarterly to review matters relating to
the Research. All actions by the Research Management Committee shall require
unanimity. The Board of Directors of GenQuest (by a vote of sixty-six and two
thirds percent (66 2/3%) of such directors) shall have the right to cast a
deciding vote to finally resolve any issues with respect to which the Research
Management Committee is unable to agree unanimously. Meetings of the Research
Management Committee may be called by either party on ten (10) days written
notice to the other unless such notice is waived by the parties in writing or by
the attendance of all representatives at such meeting. The Research Management
Committee may be convened, polled or consulted from time to time by means of
telecommunication or correspondence.
2.2 Responsibilities of Research Management Committee. The purpose of
the Research Management Committee is to oversee and coordinate the day-to-day
activities of the Research in accordance with the Research Plan. The Research
Management Committee shall therefore have the authority to plan, budget,
monitor, direct and evaluate all Research activities and results. In addition,
the Research Management Committee shall periodically review the status of the
Research to determine its continued scientific viability.
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14
The Research Management Committee shall review and, if
applicable, revise, the Research Plan for each year of the Research. The
Research Management Committee shall also evaluate the results of the Research
and discuss information related to the Research. The Research Management
Committee shall summarize the progress of the Research in a report to the
GenQuest Board of Directors at least twice during each calendar year.
2.3 Board Oversight of Plans; Annual Management Plan; Responsibility for
Administrative Services. The Board of Directors of GenQuest shall oversee the
activities of the Research as well as the Research Services (as defined in
Section 3) and Administrative Services (as defined below) in accordance with the
Research Plan and that certain Administrative Services and Management Agreement
dated as of the date hereof by and between Corixa and GenQuest (the
"Administrative Services Agreement"), respectively. The Board of Directors shall
periodically review the status of the Research to determine its continued
scientific and commercial viability.
The administrative and management services to be performed by
Corixa for and on behalf of GenQuest ("Administrative Services") and the amounts
and timing of the payments therefor payable by GenQuest are described in the
Administrative Services Agreement. Corixa and GenQuest agree that the
Administrative Services Agreement shall govern Corixa's performance of the
Administrative Services until the termination of such Administrative Services
Agreement in accordance with Section 5 thereof.
ARTICLE 3
RESEARCH
3.1 Collaborative Research. GenQuest and Corixa agree that they shall
conduct the Research on a collaborative basis during the Research Term in
accordance with and to the goals set forth in the Research Plan attached hereto
as Exhibit 3.1 (the "Research Plan"), as updated from time to time by the
Research Management Committee. The Research Plan shall (i) specify scientific
objectives and research milestones, (ii) allocate research responsibilities and
the location at which such research shall take place, (iii) set forth the
research to be conducted by Corixa and GenQuest, respectively, as part of the
Research (the "Research Services"), (iv) set forth the Research Services Costs
payable by GenQuest to Corixa in exchange for such Research Services in
accordance with Article 8 below, (v) establish a timeline for the Research
consistent with the objectives of the parties and (vi) set forth such other
salient information with respect to the Research as the parties deem
appropriate. Subject to Section 3.2 and Article 8 below, the Research Management
Committee shall update the Research Plan, including without limitation the
Research Services Costs, on or before each anniversary of the Effective Date
during the Research Term. In the course of conducting such Research, Corixa
and/or GenQuest, as appropriate, may contract with and make payments to Third
Parties for Research in accordance with the Research Plan; provided, however,
that any such Third Parties shall be subject to appropriate confidentiality
provisions to be agreed upon by the parties and provided, further that in no
event shall the Corixa Gene Discovery Methodologies or the GenQuest Gene
Discovery Methodologies, or any Information comprising either, be disclosed by
the licensee hereunder of such Methodologies to, or used by, such Third Parties
in the course of such Research.
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3.2 Research Efforts and Expenses.
(a) During the Research Term, the parties shall maintain
scientific staff, laboratories, offices and other facilities appropriate and
necessary to carry out the Research Plan in accordance with the terms of the
Research Plan and shall expend reasonable diligent efforts to achieve the
objectives of the Research Plan. Each of the parties shall keep detailed records
of its Research expenditures in accordance with Section 13.3 hereof and shall
deliver to the other party, on a quarterly basis, a report of such expenditures.
(b) Corixa shall use its best efforts to perform the Research
Services set forth in the Research Plan. In that connection, during the Research
Term, Corixa agrees to dedicate to the performance of the Research at least the
number of full-time equivalent person-years ("FTEs") per year set forth in
Schedule 3.2. It is understood that the FTEs assigned to the Research shall be
qualified scientists or experts as is required for work to be conducted under
the Research. Corixa shall keep contemporaneous written records of FTEs
allocated to the Research such as payroll records, time sheets or equivalent. In
addition, to further the purposes of the Research, during the Research Term each
party may, at its own cost, provide certain of its employees to work or meet
from time to time at the other party's facilities, subject to approval by the
Research Management Committee; provided, however, that any such employees shall
be subject to appropriate confidentiality provisions to be agreed upon by the
parties.
ARTICLE 4
LICENSES
4.1 Licenses to Corixa; Limitations on Sublicense.
(a) Subject to all of the terms and conditions of this Agreement,
including, without limitation, the royalty provisions of Section 6.1, GenQuest
hereby grants to Corixa (i) a worldwide, sublicensable, exclusive license to
GenQuest Technology, Corixa Technology and Joint Patents for any use or purpose
in the Corixa Exclusive Field in the Territory and (ii) a worldwide,
sublicensable, non-exclusive license to Corixa Technology and Joint Patents for
any use or purpose outside of the Corixa Exclusive Field and the GenQuest
Exclusive Field in the Territory. As used in this Agreement (including in
Section 4.2 and 11.3 below), a license "for any purpose" includes, without
limitation, the right to research, make, have made, use, import, sell, have sold
and otherwise distribute. The license set forth in this paragraph shall
terminate on the date one (1) year after the Research Term, unless earlier
terminable pursuant to Article 14 of this Agreement.
(b) Subject to all of the terms and conditions of this Agreement,
including without limitation the royalty provisions of Section 6.1, contingent
upon Corixa exercising its Corixa Option pursuant to Section 14.8(a) hereof with
respect to any particular GenQuest Gene Product, GenQuest hereby grants to
Corixa a worldwide, sublicensable, exclusive license to research, make, have
made, use, import, sell, have sold and otherwise distribute such GenQuest Gene
Product in the Corixa Exclusive Field under any Patent containing claims
covering such GenQuest Gene Product and Controlled by GenQuest and any GenQuest
Gene Product
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Know-how related to such GenQuest Gene Product. Unless this license is
terminated pursuant to the next succeeding sentence of this paragraph or
explicitly terminable pursuant to Article 14 of this Agreement, the license
granted under this Section 4.1(b) shall become non-exclusive on a
country-by-country and product-by-product basis on the later of (i) the
expiration of the last to expire Patent covering that particular GenQuest Gene
Product or (ii) ten (10) years from the date of the first commercial sale of a
product consisting of or incorporating such GenQuest Gene Product by either
party. Such license shall also terminate with respect to any particular GenQuest
Gene Product discovered outside the Research Plan at any time or after the
termination of the Research Term, as applicable, in the event Corixa has not
(itself or through an Affiliate or Third Party), within five (5) years after the
termination of the Research Term, either (x) entered into a collaboration with a
corporate partner pursuant to which such corporate partner has agreed to pay
material consideration to Corixa in exchange for the right to develop, or fund
further research and development of, such GenQuest Gene Product for one or more
applications or (y) filed with the United States Food and Drug Administration
("FDA") (or its equivalent in another country) an application to undertake
clinical trials for or to market, or actually markets, a product based on or
incorporating such GenQuest Gene Product. If the requirements of (x) or (y)
above have been satisfied with respect to a particular GenQuest Gene Product,
the same shall be deemed satisfied for all GenQuest Gene Products that are
either (a) a variant of such GenQuest Gene Product or (b) one of the variations
set forth in the definition of GenQuest Gene Product.
(c) Notwithstanding Sections 4.1(a) and 4.1(b) above, in no event
shall any GenQuest Gene Discovery Methodology, or any Information associated
therewith, be sublicensable by Corixa or its Affiliates.
4.2 License to GenQuest; Limitation on Sublicense.
(a) Subject to all of the terms and conditions of this Agreement,
Corixa hereby grants to GenQuest a royalty-free, perpetual, sublicensable,
exclusive, worldwide license under the Existing Corixa Technology for any use or
purpose in the GenQuest Exclusive Field in the Territory; provided, however,
that Corixa expressly reserves the right to use such Existing Corixa Technology
solely for research purposes in all fields during the period ending on the date
that is one (1) year after termination of the Research Term. As used herein, a
license "for any purpose" includes, without limitation, the right to research,
make, have made, use, sell, have sold and otherwise distribute. Notwithstanding
the foregoing, in the event Corixa deems it necessary or useful to include in a
Corixa collaboration with a Third Party rights to the [***] in the GenQuest
Exclusive Field, GenQuest agrees, at the request of Corixa, to negotiate in good
faith and for up to ninety (90) days with such Third Party for a co-exclusive
license to the [***] in the GenQuest Exclusive Field provided that, subject to
Section 4.2(d) below, the foregoing shall in no event be deemed to preclude
GenQuest from entering into any agreement with a Third Party.
(b) Subject to all of the terms and conditions of this Agreement,
including without limitation the royalty provisions of Section 7.1, contingent
upon GenQuest exercising its GenQuest Option pursuant to Section 14.8(b) hereof
with respect to any particular Corixa Gene Product, Corixa hereby grants to
GenQuest (i) a sublicensable, worldwide, exclusive license to research, make,
have made, use, import, sell, have sold and otherwise distribute such Corixa
Gene
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Product in the GenQuest Exclusive Field and (ii) a sublicensable, worldwide,
non-exclusive license to research, make, have made, use, import, sell, have sold
and otherwise distribute such Corixa Gene Product in the Co-Exclusive Field,
each under any Patent with claims covering such Corixa Gene Product and
Controlled by Corixa and any Corixa Gene Product Know-how related to such Corixa
Gene Product. Unless this license is terminated pursuant to the next succeeding
sentence of this paragraph or explicitly terminable pursuant to Article 14 of
this Agreement, the license granted under this Section 4.2(b) shall become
non-exclusive on a country-by-country and product-by-product basis on the later
of (i) the expiration of the last to expire Patent covering that particular
Corixa Gene Product or (ii) ten (10) years from the date of the first commercial
sale of a product consisting of or incorporating such Corixa Gene Product by
either party. Such license shall also terminate with respect to any particular
Corixa Gene Product discovered outside the Research Plan at any time or after
the termination of the Research Term, as applicable, in the event GenQuest has
not (itself or through an Affiliate or Third Party), within five (5) years after
the termination of the Research Term, either (x) entered into a collaboration
with a corporate partner pursuant to which such corporate partner has agreed to
pay material consideration to GenQuest in exchange for the right to develop, or
fund further research and development of, such Corixa Gene Product for one or
more applications or (y) filed with the FDA (or its equivalent in another
country) an application to undertake clinical trials for or to market, or
actually markets a product based on or incorporating such Corixa Gene Product.
If the requirements or (x) or (y) above have been satisfied with respect to a
particular Corixa Gene Product, the same shall be deemed satisfied for all
Corixa Gene Products that are either (a) a variant or derivative of such Corixa
Gene Product or (b) one of the variations set forth in the definition of Corixa
Gene Product or a derivative thereof.
(c) Subject to all of the terms and conditions of this Agreement,
Corixa hereby grants to GenQuest (i) a royalty-free, exclusive, worldwide
license to any Corixa Gene Discovery Methodology for any use or purpose in the
GenQuest Exclusive Field in the Territory and (ii) a royalty-free, non-exclusive
license to any Corixa Gene Discovery Methodology invented or discovered by
Corixa during the Research for any use or purpose outside the Corixa Exclusive
Field and the GenQuest Exclusive Field under any Patent with claims covering
such Corixa Gene Discovery Methodology and Controlled by Corixa and any know-how
necessary to practice such Corixa Gene Discovery Methodology; provided, however,
that Corixa expressly reserves the right to use all such Corixa Gene Discovery
Methodology solely for research purposes in all fields. The license granted and
reservation of rights taken under this Section 4.2(c) shall expire on a
country-by-country basis on the expiration of the last to expire Patent with
claims covering such Corixa Gene Discovery Methodology.
(d) Notwithstanding Sections 4.2(a), 4.2(b) and 4.2(c) above, in
no event shall any Corixa Gene Discovery Methodology or the [***], or any
Information associated with either, be sublicensable by GenQuest.
4.3 Assignment or Sublicense to Affiliates. Either party may assign or
sublicense any of its rights or obligations under this Agreement to any
Affiliate; provided, however, that (i) such Affiliate agrees in writing to be
bound by all of the terms and conditions of this Agreement and (ii) such
assignment shall not relieve the assigning party of its responsibilities for
performance of its obligations under this Agreement.
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4.4 Existing Third Party Technology. The licenses granted herein include
sublicenses under technology which has been or will be licensed by the
respective parties from certain Third Parties. Exhibit 4.4(a) sets forth a true
and complete list of all the Third Party licenses with respect to the Existing
Corixa Patents as well as sponsored research agreements and options related
thereto in existence as of the Effective Date and applicable to the Research, as
agreed to by the parties (the "Corixa Third Party Agreements"). Exhibit 4.4(b)
sets forth a true and complete list of all the Third Party licenses with respect
to the ▇▇▇▇▇▇ Methodology as well as sponsored research agreements and options
related thereto in existence as of the Effective Date and applicable to the
Research, as agreed to by the parties (the collectively with the Corixa Third
Party Agreements, the "Existing Third Party Agreements").
4.5 Additional Technology. During the Research Term, if either party
believes that technology related to the subject matter of the Research that is
Controlled by such party or a Third Party ("Additional Technology") would be
valuable or necessary to the Research in the Field hereunder, such party shall
present such technology, along with a written report with respect thereto, to
the Research Management Committee. The Research Management Committee shall then
determine whether licenses to, and/or acquisitions of, such Additional
Technology shall be made, the party that shall approach and negotiate with any
Third Parties and the terms of any agreements with any Third Parties, including,
without limitation, payments for sponsored research. No such Third Party license
and/or acquisition shall be effective with respect to the other party unless and
until such other party has specifically agreed in writing to abide by the
applicable terms and conditions of any such license and/or acquisition (other
than payment terms, which are provided for in Sections 6.2 and 7.2 below). It is
understood and agreed that with respect to all Additional Technology, Corixa's
rights shall be limited to the Corixa Exclusive Field and GenQuest's rights
shall be limited to the GenQuest Exclusive Field. Notwithstanding the foregoing,
this Section 4.5 shall not be deemed to preclude either party from acquiring
Additional Technology.
4.6 Internal Corixa Gene Discovery Research. During the Research Term,
Corixa agrees that in the event Corixa elects to conduct research with respect
to cancer gene discovery [***] on its own behalf ("Internal Corixa Gene
Discovery Research"), such research shall [***].
4.7 Limitations. To the extent permitted by law, neither GenQuest nor
Corixa shall sell Products that are subject to any licenses granted hereunder to
any Affiliate or Third Party if the selling party in good faith believes that
the Product(s) in question shall be resold or used in violation of the
commercialization arrangements set forth in this Agreement. Each party shall use
reasonable efforts to correct such violations and to prevent any future
violations by Third Parties.
ARTICLE 5
TRADEMARKS
5.1 Trademarks. Each of GenQuest and Corixa shall be responsible for
prosecution and/or maintenance of any trademark used by such party with respect
to Products.
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ARTICLE 6
CORIXA ROYALTIES
6.1 Royalties.
(a) On annual Corixa Net Sales of Products that are made or sold
in countries where (i) claims of any Corixa Research Patent or GenQuest Patent
or Joint Patent covering such Product (x) are issued or (y) have been pending
less than [***] from the later of the Effective Date or the date of filing of
such claim or (ii) such Product has received Regulatory Exclusivity, Corixa
shall pay to GenQuest a royalty of [***] on annual Net Sales of such Product
(the "Corixa Patent Royalty"); provided, however, that royalty shall be reduced
to be equal to [***] of the net royalty payable to Corixa by [***] pursuant to
Section [***] of that certain [***] Agreement dated [***] between Corixa [***]
(the "[***] Agreement") for Corixa Net Sales of such Products made pursuant to
the [***] Agreement (and for which [***] is obligated to pay a royalty to Corixa
pursuant to the [***] Agreement). The obligation to pay royalties under this
subsection 6.1(a) shall expire on a country-by-country and product-by-product
basis on the later of (i) the expiration of the last to expire GenQuest Patent,
Corixa Research Patent or Joint Patent with claims covering such Product or (ii)
[***] from the date of the first commercial sale of such Product by Corixa in
such country. As used herein and in Section 6.1(b), it is understood that "net"
royalty shall mean the royalty actually received by Corixa, less any portion of
such royalty paid by Corixa to a Third Party pursuant to an agreement under
which Corixa acquired rights to technology incorporated into such Product.
(b) If Corixa has actually received and uses Information
Controlled by GenQuest or Corixa in any Product, which Information Controlled by
GenQuest is Secret, Substantial and has been Identified by GenQuest, on annual
Corixa Net Sales of such Product in any country, Corixa shall pay the percentage
royalty rates specified in subparagraph 6.1(a) above where (x) a patent
application for a Corixa Research Patent and/or a GenQuest Patent and/or a Joint
Patent with claims covering such Product has been pending more than [***] from
the later of the Effective Date or the date of filing of such claim, and no
patent with claims covering such Product has issued or (y) no patent application
with claims covering such Product has been filed in the country of sale (the
"Corixa Know-how Royalty"). Royalties under this subparagraph 6.1(b) shall
expire, on a country-by-country and product by product basis, [***] after first
launch of such a Product by Corixa in any such country. The Corixa Know-how
Royalty shall not apply to Corixa Net Sales of GenQuest Gene Products, which
shall be solely governed by Section 6.1(c) of this Agreement.
(c) On annual Corixa Net Sales of GenQuest Gene Products made or
sold in countries where (i) current claims of any patent or patent application
covering any GenQuest Gene Product (x) are issued or (y) have been pending less
than [***] from the later of the Effective Date or the date of filing of such
claim or (ii) such GenQuest Gene Product has received Regulatory Exclusivity,
Corixa shall pay to GenQuest a royalty of [***] on annual Corixa Net Sales of
each product incorporating or consisting of any GenQuest Gene Product (the
"Corixa Gene Patent Royalty"); provided, however, that royalty shall be reduced
to be equal to [***] of the net royalty payable to Corixa by [***] pursuant to
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Section [***] of the [***] Agreement for Corixa Net Sales of such GenQuest Gene
Products made pursuant to the [***] Agreement (and for which [***] is obligated
to pay a royalty to Corixa pursuant to the [***] Agreement). The obligation to
pay royalties under this Section 6.1(c) shall expire on a country-by-country and
product-by-product basis on the later of (i) the expiration of the last to
expire of any patent with claims covering such GenQuest Gene Product or (ii)
[***] from the date of the first commercial sale of such GenQuest Gene Product
by Corixa in such country.
6.2 Third Party Agreements. Corixa acknowledges that it has reviewed
that certain [***] Agreement between [***] and [***] dated [***] (the "[***]
License Agreement") pursuant to which Corixa receives a sublicense under this
Agreement. Corixa agrees to abide, or cause its Affiliates or sublicensees to
abide, by the terms and conditions of the [***] License Agreement, as may be
amended from time to time, or any agreements applicable to Additional Technology
and applicable to sublicensees thereunder. Corixa will pay all amounts payable
under the [***] License Agreement and any other agreements with Third Parties
under which Corixa acquires Additional Technology, in each case by reason of the
exercise by Corixa, its Affiliates or sublicensees of the licenses granted
hereunder with respect to the Corixa Exclusive Field. GenQuest will pay all
amounts payable under the [***] License Agreement and any other agreements with
Third Parties under which GenQuest acquires Additional Technology, in each case
by reason of the exercise by GenQuest, its Affiliates or sublicensees of the
licenses granted hereunder with respect to the GenQuest Exclusive Field.
6.3 Reporting and Payment of Royalties. Corixa shall deliver to GenQuest
within ninety (90) days after the end of each calendar quarter a written
account, including quantities, of Corixa's and Corixa's Affiliates' and
sublicensees' sales subject to royalty payments hereunder and the amount of the
royalty payment due to GenQuest for such calendar quarter. When Corixa delivers
the accounting to GenQuest, Corixa shall also deliver all royalty payments due
to GenQuest for such calendar quarter. Such royalties shall be calculated on the
Corixa Net Sales in the local currency of each country, and converted into U.S.
Dollars and paid in U.S. Dollars on the basis of the currency exchange rate
published in the Wall Street Journal or comparable newspaper of international
circulation on the last business day of such calendar quarter. In the event of
Corixa Net Sales being made in a currency as to which conversion into U.S.
Dollars is then blocked, Corixa shall make payment to GenQuest in such local
currency in a bank account designated by GenQuest. Corixa shall withhold any
taxes on such royalties required by law. Corixa shall use reasonable diligent
efforts to reduce such withholdings to the greatest extent possible. Any refunds
or rebates of taxes paid by Corixa on behalf of GenQuest shall be remitted
promptly by Corixa to GenQuest. Royalty payments not made by Corixa within the
ninety (90) day period set forth above shall accrue interest at the annual rate
of [***], compounded annually.
6.4 Samples or Donations to Third Parties No royalties shall accrue on
the disposition of reasonable quantities of Products and Gene Products by Corixa
for no consideration as samples or donations to Third Parties; provided,
however, that such quantities shall not exceed [***] of the total number of
units of Products or Gene Products, respectively, dispensed by Corixa, whether
by sale or otherwise, during any particular quarter.
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ARTICLE 7
GENQUEST ROYALTIES
7.1 Royalties. On annual GenQuest Net Sales of Corixa Gene Products
invented or discovered after termination of the Research Term that are made or
sold in countries where current claims of any Patent covering Corixa Gene
Products (x) are issued or (y) have been pending less than seven (7) years from
the later of the Effective Date or the date of filing of such claim or (ii) such
Corixa Gene Product has received Regulatory Exclusivity, GenQuest shall pay to
Corixa a royalty of [***] on annual GenQuest Net Sales of each product
incorporating or consisting of any Corixa Gene Product (the "GenQuest Gene
Patent Royalty"). The obligation to pay royalties under this subsection 7.1(a)
shall expire on a country-by-country and product-by-product basis on the later
of (i) expiration of the last to expire of any Patent with claims covering such
Corixa Gene Product or (ii) ten (10) years from the date of the first commercial
sale of such a Corixa Gene Product by GenQuest in such country.
7.2 Third Party Agreements.
(a) GenQuest acknowledges that it has reviewed each Corixa Third
Party Agreement set forth on Exhibit 4.4(a) pursuant to which it shall receive a
sublicense under this Agreement. GenQuest agrees to abide, or cause its
Affiliates or sublicensees to abide, by the terms and conditions of each such
Corixa Third Party Agreement, and any agreements applicable to Additional
Technology and applicable to sublicensees thereunder. GenQuest will pay all
amounts payable under all agreements with Third Parties under which GenQuest
acquires Additional Technology, in each case by reason of the exercise by
GenQuest, its Affiliates or sublicensees of the licenses granted hereunder with
respect to the GenQuest Exclusive Field. Corixa will pay all amounts payable
under all agreements with Third Parties under which Corixa acquires Additional
Technology, in each case by reason of the exercise by Corixa, its Affiliates or
sublicensees of the licenses granted hereunder with respect to the Corixa
Exclusive Field
7.3 Reporting and Payment of Royalties. GenQuest shall deliver to Corixa
within ninety (90) days after the end of each calendar quarter a written
account, including quantities, of GenQuest's and GenQuest's Affiliates' and
sublicensees' sales subject to royalty payments hereunder and the amount of the
royalty payment due to Corixa for such quarter. When GenQuest delivers the
accounting to Corixa, GenQuest shall also deliver all royalty payments due to
Corixa for such calendar quarter. Such royalties shall be calculated on the
GenQuest Net Sales in the local currency of each country, and converted into
U.S. Dollars and paid in U.S. Dollars on the basis of the currency exchange rate
published in the Wall Street Journal or comparable newspaper of international
circulation on the date such royalty payment is due to be made to Corixa. In the
event of GenQuest Net Sales being made in a currency as to which conversion into
U.S. Dollars is then blocked, GenQuest shall make payment to Corixa in such
local currency in a bank account designated by Corixa. GenQuest shall withhold
any taxes on such royalties required by law. GenQuest shall use reasonable
diligent efforts to reduce such withholdings to the greatest extent possible.
Any refunds or rebates of taxes paid by GenQuest on behalf of Corixa shall be
remitted promptly by Corixa to GenQuest. Royalty payments not made by GenQuest
within the ninety (90) day period set forth above shall accrue interest at the
annual rate of [***], compounded annually.
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7.4 Samples or Donations to Third Parties. No royalties shall accrue on
the disposition of reasonable quantities of Products or Gene Products by
GenQuest for no consideration as samples or donations to Third Parties;
provided, however, that such quantities shall not exceed [***] of the total
number of units of Products or Gene Products, respectively, dispensed
by GenQuest, whether by sale or otherwise, during any particular quarter.
ARTICLE 8
PAYMENTS; OTHER CONSIDERATION
8.1 FTE Reimbursement. During the Research Term, GenQuest shall pay
Corixa the amounts set forth on Schedule 3.2 hereto; provided, however, that the
parties agree that in no event shall the amount paid to Corixa per quarter to
Corixa be less than such amounts without Corixa's prior written consent,
provided that Corixa has applied to the Research at least the number of FTEs set
forth in Schedule 3.2. It is understood that, except as provided in Section 8.2
below, the FTE costs to be paid under this Section 8.1 include all costs to be
reimbursed to Corixa with respect to Corixa's performance of its
responsibilities under the Research Plan.
8.2 Other Expenses. In addition to the funding for the Corixa FTEs
performing the Research pursuant to Section 8.1, GenQuest shall reimburse
Corixa, within thirty (30) days from receipt of an invoice, for other expenses,
if any (i) expressly provided for in the applicable Research Plan, and (ii)
incurred by Corixa in performing the Research in accordance with such Research
Plan.
8.3 Payment. GenQuest shall pay to Corixa quarterly in advance the
amounts provided for in Sections 8.1 above, not later than January 1, April 1,
July 1 and October 1 of each year during the Research Term; such payments shall
be applied solely towards the FTE costs set forth on Schedule 3.2. For the
period from the Execution Date through the first such payment date, such
amounts, to the extent they have not been paid before, shall be paid within ten
(10) days from the Effective Date.
8.4 Research Plan Amendment. The Research Services Costs shall not be
modified without the approval of both Corixa and GenQuest, regardless of whether
any changes are made to the Research or Research Plan.
ARTICLE 9
EQUITY
[INTENTIONALLY OMITTED]
ARTICLE 10
CONFIDENTIALITY
10.1 Confidentiality; Exceptions. Except to the extent expressly
authorized by this Agreement or otherwise agreed in writing, the parties agree
that, for the term of this Agreement and for five (5) years thereafter, the
receiving party shall keep confidential and shall not publish or otherwise
disclose or use for any purpose other than as provided for in this Agreement any
Information and other information and materials furnished to it by the other
party pursuant to this
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Agreement (collectively, "Confidential Information"), except to the extent that
it can be established by the receiving party by competent proof that such
Confidential Information:
(a) was already known to the receiving party at the time of
disclosure by the other party;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving party.
(c) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement; or
(d) was disclosed to the receiving party, other than under an
obligation of confidentiality, by a Third Party who had no obligation to the
disclosing party not to disclose such information to others.
10.2 Authorized Disclosure. Each party may disclose the other's
Confidential Information to the extent such disclosure is reasonably necessary
in filing or prosecuting patent applications, prosecuting or defending
litigation, complying with applicable governmental regulations or conducting
preclinical or clinical trials, provided that if a party makes any such
disclosure of the other party's Confidential Information it shall give
reasonable advance notice to the other party of such disclosure requirement and,
except to the extent inappropriate in the case of patent applications, shall use
its best efforts to secure confidential treatment of such Confidential
Information required to be disclosed. Each party may also disclose Confidential
Information to (a) Third Parties with whom such party is actively engaging in
discussions with respect to an agreement to sublicense or collaborate, or has
agreed to sublicense or collaborate, on the research, development, marketing and
sale of compounds or products, (b) Third Parties that have expressed bona fide
interest in providing financing for such party, or (c) Affiliates; provided that
such Third Party or Affiliate (as the case may be) agrees in writing to
restrictions substantially similar to the restrictions set forth in Section 10.1
and that the party making such disclosure shall give periodic notice to the
other party of the content of such disclosures. With respect to the preceding
sentence, Corixa's right of disclosure relating to GenQuest Gene Discovery
Methodologies shall be limited to patents and patent applications and shall not
include the right to disclose Information relating thereto and GenQuest's right
of disclosure relating to Corixa's Gene Discovery Methodologies shall be limited
to patents and patent applications and shall not include the right to disclose
Information relating thereto.
10.3 Confidentiality Agreements with Employees. Each party will have
each of their employees, consultants and officers execute an agreement with the
other party regarding confidentiality and proprietary information of such other
party in form and substance reasonably agreed by Corixa and GenQuest.
ARTICLE 11
OWNERSHIP OF INTELLECTUAL PROPERTY AND PATENT RIGHTS
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11.1 Non-Gene Product Inventions Resulting from the Research Ownership
and disclosure of all inventions and/or discoveries made during the Research
that are not either Corixa Gene Products or GenQuest Gene Products shall be
handled as set forth in this Section 11.1. During the Research Term, GenQuest
shall promptly inform Corixa of all inventions and/or discoveries made during
the Research and that are conceived, made or developed by employees or service
providers of GenQuest, solely or jointly with employees or service providers of
Corixa. During the Research Term, Corixa shall promptly inform GenQuest of all
inventions and/or discoveries made during the Research and that are conceived,
made or developed by employees or service providers of Corixa, solely or jointly
with employees or service providers of GenQuest. Inventions and/or discoveries
made during the Research shall be owned as follows:
(a) Such inventions and/or discoveries (other than Gene Products)
discovered or invented during the Research Term shall be owned by Corixa if
invented solely by service providers or employees of Corixa. All patent
applications and patents covering such discoveries or inventions shall be Corixa
Research Patents (whether such patent applications were filed or patents were
issued before or after the end of the Research Term).
(b) Such inventions and/or discoveries (other than Gene Products)
shall be owned by GenQuest if invented solely by service providers or employees
of GenQuest. All patent applications and patents covering such inventions and/or
discoveries shall be GenQuest Patents (whether such patent applications were
filed or patents were issued before or after the end of the Research Term).
(c) Such inventions and/or discoveries (other than Gene Products)
shall be owned jointly by Corixa and GenQuest if invented jointly by or on
behalf of service providers or employees of Corixa and GenQuest. All such patent
applications and patents pertaining to jointly developed inventions and/or
discoveries shall be Joint Patents (whether such patent applications were filed
or patents were issued before or after the end of the Research Term). With
respect to any subject matter that is owned jointly by Corixa and GenQuest
hereunder, each party shall have the right to exploit and license the same
(subject to the exclusive rights granted pursuant to this Agreement), without
the consent of the other party and without any obligation to account to the
other party.
11.2 Gene Product Inventions Resulting from the Research. Gene Product
inventions and/or discoveries made during the Research shall be owned as
follows:
(a) Such inventions and/or discoveries (including Gene Products)
discovered or invented during the Research Term shall be owned by Corixa if
invented solely by service providers or employees of Corixa. All patent
applications and patents covering such discoveries or inventions shall be Corixa
Gene Product Patents (whether such patent applications were filed or patents
were issued before or after the end of the Research Term).
(b) Such inventions and/or discoveries (including Gene Products)
discovered or invented during the Research Term shall be owned by GenQuest if
invented solely by service providers or employees of GenQuest or if invented
jointly by or on behalf of Corixa and GenQuest by service providers or employees
of Corixa and GenQuest. All patent applications
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and patents covering such inventions and/or discoveries shall be GenQuest Gene
Product Patents (whether such patent applications were filed or patents were
issued before or after the end of the Research Term)
11.3 Grants to GenQuest.
(a) Subject to all of the terms and conditions of this Agreement,
including the licenses back to Corixa set forth in Sections 4.1(a) and 4.1(b),
Corixa hereby grants to GenQuest a perpetual, royalty-free, worldwide,
sublicensable, exclusive (even as to Corixa) license to Corixa Technology and
Corixa's interest in Joint Patents for any use or purpose in the Territory; and
provided further that Corixa expressly reserves the right to use such Corixa
Technology and Joint Patents for research purposes in all fields, provided that
such reservation of rights shall terminate in the GenQuest Exclusive Field on
the date that is one (1) year after termination of the Research Term. The
license set forth in this paragraph shall continue in perpetuity unless
explicitly terminable pursuant to Section 14.5(b) or 14.6 of this Agreement.
(b) Subject to all of the terms and conditions of this Agreement,
Corixa hereby grants to GenQuest a perpetual, royalty-free, worldwide,
sublicensable, exclusive (even as to Corixa) license to Corixa Gene Products and
Corixa Gene Product Know-how invented or discovered during the Research for any
use or purpose in the Territory outside the Corixa Exclusive Field; and provided
further that Corixa expressly reserves the right to use such Corixa Gene
Products and Corixa Gene Product Know-how for research purposes in all fields,
provided that such reservation of rights shall terminate in the GenQuest
Exclusive Field on the date that is one (1) year after termination of the
Research Term. The license set forth in this paragraph shall continue in
perpetuity unless explicitly terminable pursuant to Article 14 of this
Agreement. The license grant set forth in this Section 11.3(b) does not include
the right to any Corixa Gene Products or Corixa Gene Product Know-how invented
or discovered after the Research Term.
11.4 GenQuest Responsibility for Patent Filings. Except as set forth in
the proviso to the next succeeding sentence, GenQuest shall diligently file,
prosecute and maintain Corixa Research Patents, GenQuest Patents, Joint Patents,
GenQuest Gene Product Patents and Corixa Gene Product Patents to effectively
cover discoveries and inventions arising during the Research, and the Patent
Costs incurred in connection with such filing, prosecution and maintenance shall
be borne equally by GenQuest and Corixa. GenQuest shall use its best efforts to
ensure that claims are filed and are issued in such Patents and that all such
Patents are filed before any public disclosure to ensure the validity of such
Patents; provided, however, that GenQuest shall have the right to choose not to
file, prosecute and maintain Corixa Research Patents, GenQuest Patents and Joint
Patents in any territory in the world, in which case GenQuest shall be subject
to the notice and payment obligations set forth in Section 11.5 hereof. GenQuest
shall give Corixa immediate notice of any decision to prepare a Patent relating
to the Field, along with a list of all territories in which GenQuest intends to
file such Patent. GenQuest shall provide Corixa with draft copies of all such
Patents and related Patent prosecution documents and Corixa shall have, to the
extent reasonably possible, thirty (30) days from the receipt of such drafts to
comment. GenQuest shall confer with Corixa, and make reasonable efforts to adopt
Corixa's suggestions regarding the prosecution of Patents relating solely to the
Corixa Exclusive Field and the fields of adjuvants and infectious disease
Vaccines. Notwithstanding the foregoing, GenQuest shall have
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the right to take such actions as are reasonably necessary, in its good faith
judgment, to preserve the rights under Corixa Research Patents, GenQuest Patents
and Joint Patents in the territories in which it has chosen to file. As soon as
practical subsequent to any filing of a Patent or Patent prosecution document
relating to the Field, GenQuest shall provide Corixa a copy of any such filing.
In addition, GenQuest shall copy Corixa with any official action and GenQuest
submissions in such Patents, including an English translation thereof. GenQuest
shall have no obligation to file Corixa Gene Product Patents for Corixa Gene
Products invented and/or discovered after the Research Term.
11.5 Back-Up Rights. Should GenQuest determine not to file, prosecute,
maintain or issue a Corixa Research Patent, GenQuest Patent or Joint Patent or
related application for any invention related to the Corixa Exclusive Field in
any particular country or jurisdiction in the Territory, it shall immediately
grant any and all authority necessary to allow Corixa to timely file, prosecute,
maintain and issue such a patent application or maintain such a patent in the
Territory, with [***] of the related Patent Costs offset against royalties
otherwise payable to GenQuest pursuant to Section 6 of this Agreement with
respect to such Patent.
11.6 Enforcement and Defense Rights.
(a) With respect to infringement or defense of any of the Corixa
Research Patents, GenQuest Patents, Corixa Gene Product Patents, GenQuest Gene
Product Patents and Joint Patents, both inside and outside the Corixa Exclusive
Field, for which GenQuest has taken filing responsibility pursuant to Section
11.4 hereof, GenQuest shall have the right to institute and prosecute any action
or proceeding with respect to such infringement or defense. GenQuest shall have
the right, in its discretion, to invite Corixa to participate in such action and
if Corixa chooses to participate, the parties agree to cooperate equally in such
action, with Corixa bearing [***] of the costs of such action. The parties shall
consult regarding the institution, prosecution and control of any action or
proceeding with respect to infringement or defense of any such Patents. In the
event of sole enforcement and defense by GenQuest, [***]. In the event of shared
enforcement and defense, [***].
(b) With respect to infringement or defense of any of the Corixa
Research Patents, GenQuest Patents and Joint Patents, both inside and outside
the Corixa Exclusive Field, for which Corixa has taken filing responsibility
pursuant to Section 11.5 hereof, Corixa shall have the sole right to institute
and prosecute any action or proceeding with respect to such infringement or
defense. Corixa shall use best efforts to protect any exclusivity granted to
GenQuest pursuant to this Agreement. Corixa shall have the right, in its
discretion, to invite GenQuest to participate in such action and if GenQuest
chooses to participate, the parties agree to cooperate equally in such action,
with GenQuest bearing [***] of the costs of such action. The parties shall
consult regarding the institution, prosecution and control of any action or
proceeding with respect to infringement or defense of any Corixa Research
Patents, GenQuest Patents or Joint Patents. In the event of sole enforcement and
defense by Corixa, [***]. In the event of shared enforcement and defense, [***].
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11.7 Patent Costs. [Intentionally Omitted].
11.8 Infringement of Third Party Patents.
(a) If any Third Party asserts a claim of patent infringement
against Corixa on account of Corixa's use, manufacture or sale of Products or
GenQuest Gene Products in the Territory, Corixa shall promptly notify GenQuest
of the existence and details of such claim. Subject to the terms of any Third
Party Agreements, GenQuest shall at its election choose and do one of the
following: (i) negotiate with said Third Party for the right to have Corixa use,
manufacture and/or sell Products or GenQuest Gene Products in the Corixa
Exclusive Field in the Territory; or (ii) defend Corixa against such claim; or
(iii) should GenQuest not elect either (i) or (ii) above, GenQuest shall
reasonably cooperate with Corixa in defending against such claim. In the event
GenQuest elects (i) or (ii) above, Corixa shall reasonably cooperate with
GenQuest.
(b) If any Third Party asserts a claim of patent infringement
against GenQuest on account of GenQuest's use, manufacture or sale of Corixa
Gene Products in the Territory, GenQuest shall promptly notify Corixa of the
existence and details of such claim. Subject to the terms of any existing Third
Party Agreements, Corixa shall at its election choose and do one of the
following: (i) negotiate with said Third Party for the right to have GenQuest
use, manufacture and/or sell Corixa Gene Products in the Corixa Exclusive Field
in Territory; or (ii) defend GenQuest against such claim; or (iii) should Corixa
not elect either (i) or (ii) above, GenQuest shall reasonably cooperate with
Corixa in defending against such claim. In the event Corixa elects (i) or (ii)
above, GenQuest shall reasonably cooperate with Corixa.
ARTICLE 12
REPRESENTATIONS, WARRANTIES AND COVENANTS
12.1 Representations, Warranties and Covenants of Both Parties. Each of
the parties hereby represents, warrants and covenants as follows:
(a) This Agreement is a legal and valid obligation binding upon
such party and enforceable in accordance with its terms. The execution, delivery
and performance of the Agreement by such party does not conflict with any
agreement, instrument or understanding, oral or written, to which it is a party
or by which it is bound, nor violate any law or regulation of any court,
governmental body or administrative or other agency having jurisdiction over it.
(b) Such party has not, and during the term of the Agreement
shall not, grant any right to any Third Party relating to its respective
technology in the Field which would abrogate the rights granted to the other
party hereunder.
12.2 Representations, Warranties and Covenants of GenQuest Except as set
forth on Schedule 12.2 hereto (the "GenQuest Schedule of Exceptions"), GenQuest
hereby represents, warrants and covenants as follows:
(a) As of the Execution Date, except for rights granted to IDEC,
GenQuest has not granted to any Third Party any rights or interests to the
GenQuest Patents, GenQuest Gene Discovery Methodologies (including but not
limited to the ▇▇▇▇▇▇ Methodology), GenQuest
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Gene Product Know-how or the GenQuest Know-how. Neither the execution or
delivery of this Agreement nor the consummation of the transactions contemplated
hereunder, requires GenQuest to obtain any permits, authorizations or consents
from any governmental body or from any other body, person, form or corporation
and such execution, delivery and consummation shall not result in the breach of
or give rise to cause for termination of any agreement or contract to which
GenQuest or its Affiliates may be a party. Neither GenQuest nor its Affiliates
shall take any action after the Effective Date that would in any way restrict
its legal right to grant to Corixa the rights and licenses contemplated under
this Agreement.
(b) As of the date hereof, except as otherwise known to Corixa,
the Columbia License Agreement is in full force and effect and GenQuest is in
compliance in all material respects with all of its material obligations
thereunder; GenQuest has heretofore delivered to Corixa a true and complete copy
thereof and there have been no amendments or modifications thereof. So as not to
adversely affect Corixa rights hereunder or under the Columbia License
Agreement, GenQuest agrees during the term of this Agreement not to take any
actions to terminate or restrict its rights under the Columbia License Agreement
and to discharge all of GenQuest's material obligations and responsibilities
thereunder, including, without limitation, making all required payments
thereunder. In the event GenQuest shall receive any notice of default under the
Columbia License Agreement, GenQuest shall promptly notify Corixa.
(c) GenQuest has not, and to GenQuest's best knowledge without
having undertaken any special investigation, Columbia University has not,
received any notice of infringement of or conflict with the patents or other
proprietary rights of Third Parties with respect to the GenQuest Technology.
(d) GenQuest has not been a defendant in any action, suit,
investigation or proceeding relating to, or otherwise has been notified of, any
alleged claim or infringement of any GenQuest Technology and GenQuest has no
knowledge of any continuing infringement by any Third Party of any of any
GenQuest Technology. No GenQuest Technology is subject to any outstanding
judgment, injunction, order or decree restricting the use thereof by GenQuest or
restricting the licensing thereof by GenQuest. None of the Information of
GenQuest, the value of which to GenQuest is contingent upon maintenance of the
confidentiality thereof, has been disclosed by GenQuest other than to employees,
representatives and agents of GenQuest all of whom are bound by written
confidentiality agreements substantially in the form previously disclosed to
GenQuest.
(e) GenQuest will use its best efforts to make available and
deliver to Corixa all materials necessary or useful for Corixa to carry out its
obligations under the Research Plan as determined by the Research Management
Committee, within ten (10) days after the Research Management Committee so
determines. Corixa may request such materials by making such request to the
Research Management Committee and the Research Management Committee shall
promptly make a determination related thereto. [***].
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(f) To GenQuest's best knowledge, set forth on Exhibit 1.24
hereto are all patents and/or patent applications existing as of the Effective
Date and relating to the methodology for discovering genes that is the subject
of the [***] License Agreement. GenQuest will update such Exhibit 1.24 within
thirty (30) days of the Effective Date with all additional patent and/or patent
applications relating to such methodology, and thereafter from time to time
during the Research Term, such that Exhibit 1.24 at all times contains a
complete listing of all such patents and/or patent applications.
(g) To GenQuest's best knowledge, set forth on Exhibit 12.2(g)
hereto is a listing of all GenQuest Gene Products existing as of the Effective
Date.
12.3 Representations, Warranties and Covenants of Corixa. Except as set
forth on Schedule 12.3 hereto (the "Corixa Schedule of Exceptions"), Corixa
hereby represents, warrants and covenants as follows:
(a) Corixa has not granted to any Third Party any rights or
interests to the Existing Corixa Patents or the Existing Corixa Know-how.
Neither the execution or delivery of this Agreement nor the consummation of the
transactions contemplated hereunder, requires Corixa to obtain any permits,
authorizations or consents from any governmental body or from any other body,
person, form or corporation and such execution, delivery and consummation shall
not result in the breach of or give rise to cause for termination of any
agreement or contract to which Corixa or its Affiliates may be a party. Neither
Corixa nor its Affiliates shall take any action after the Effective Date that
would in any way restrict its legal right to grant to GenQuest the rights and
licenses contemplated under this Agreement.
(b) Corixa has not received any notice of infringement of or
conflict with the patents or other proprietary rights of Third Parties with
respect to the Corixa Technology.
(c) Corixa has not, and to Corixa's best knowledge without having
undertaken any special investigation, no licensor to Corixa under any existing
Third Party Agreement has, received any notice of infringement of or conflict
with the patents or other proprietary rights of Third Parties with respect to
the Existing Corixa Technology.
(d) Corixa has not been a defendant in any action, suit,
investigation or proceeding relating to, or otherwise has been notified of, any
alleged claim or infringement of any Corixa Technology or Existing Corixa
Technology and Corixa has no knowledge of any continuing infringement by any
Third Party of any of any Corixa Technology or Existing Corixa Technology. No
Corixa Technology or Existing Corixa Technology is subject to any outstanding
judgment, injunction, order or decree restricting the use thereof by Corixa or
restricting the licensing thereof by Corixa. None of the Corixa Know-how or
Existing Corixa Know-how , the value of which to Corixa is contingent upon
maintenance of the confidentiality thereof, has been disclosed by Corixa other
than to employees, representatives and agents of Corixa all of whom are bound by
written confidentiality agreements substantially in the form previously
disclosed to GenQuest.
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(e) Corixa shall use reasonable commercial efforts to cause each
employee, officer and consultant of Corixa to execute a Proprietary Information
and Inventions Agreement in the form provided to GenQuest.
(f) Prior to the expiration of Corixa's royalty obligations to
GenQuest under Sections 6.1(a) and 6.1(c) of this Agreement, Corixa shall not
enter into any amendment of the CellPro Agreement which reduces the royalty
percentage payable to Corixa from CellPro pursuant to Section 6.1 of such
CellPro Agreement.
(g) To Corixa's best knowledge, set forth on Exhibit 1.19 hereto
are all patents and/or patent applications and/or disclosures within the Control
of Corixa as of the Execution Date and relating to the subject matter of such
patents and/or patent applications and/or disclosures with respect to the
GenQuest Exclusive Field.
(h) Corixa will use its best efforts to make available and
deliver to GenQuest all materials in Corixa's Control that are necessary or
useful for GenQuest to carry out its obligations under the Research Plan, as
determined by the Research Management Committee, within ten (10) days after the
Research Management Committee so determines. GenQuest may request such materials
by making such request to the Research Management Committee and the Research
Management Committee shall promptly make a determination related thereto.
(i) During the Research Term, Corixa will not enter into any
corporate partnering or collaborative relationships except those that have as
their primary research focus at Corixa work outside the GenQuest Exclusive
Field. In negotiating such collaborations, Corixa will ensure that any Corixa
Gene Products invented during the course of research conducted under such
collaboration will be licensed to GenQuest for the GenQuest Exclusive Field.
(j) During the Research Term, Corixa may specifically enter into
corporate partnering or collaborative relationships that have as an aspect of
the relationship genomics work; provided, however, that the primary focus of
such relationship is to discover and/or develop products within the Corixa
Exclusive Field. Otherwise, corporate partnering and collaborative
relationships that are focused upon cancer genomics shall first be offered to
GenQuest; provided that if GenQuest does not agree within 90 days to conduct
such work on reasonable terms and conditions, then Corixa shall be free to
enter into such corporate partnering or collaborative relationships with Third
Parties for cancer genomics; provided further that Corixa will use its best
efforts to ensure that any agreement negotiated provides that any Corixa Gene
Products invented during the course of research conducted under such
collaboration will be licensed to GenQuest for the GenQuest Exclusive Field.
(k) Except items described in Exhibit 1.9 hereto, the Existing
Corixa Technology includes all technology owned by or licensed to Corixa as of
the Execution Date that relates to cancer-associated genes, their gene products
or the discovery thereof.
(l) During the Research Term, Corixa agrees that in the event
Corixa elects to conduct research with respect to cancer gene discovery within
the Field and outside of the Research Plan on its own behalf ("Internal Corixa
Gene Discovery Research"), such research shall be directed solely at
applications within the Corixa Exclusive Field.
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ARTICLE 13
REPORTS, RECORDS AND PAYMENTS
13.1 Sharing of Information. Subject to the time limitations set forth
in the last sentence of this paragraph, beginning May 1, 1996, and every ninety
(90) days thereafter, the parties shall exchange written reports presenting a
meaningful summary of the parties' activities pursuant to this Agreement, which
reports shall include, at a minimum, a detailed description of (a) the Research
and Information arising therefrom, (b) any Corixa Gene Product and Corixa Gene
Product Know-how or GenQuest Gene Product and GenQuest Gene Product Know-how, as
the case may be, invented and/or discovered by such party since the date of the
last such report, including sequencing and methodology information related
thereto, (c) all Information related to Corixa Gene Discovery Methodologies and
GenQuest Gene Discovery Methodologies and (c) such other information the
disclosing party reasonably believes the other party would find reasonably
useful to carry out the goals of this Agreement. Each party shall provide the
other with raw data in original form or a photocopy thereof for any and all work
carried out in the course of the Research as reasonably requested by the other
party. The reports required by this Section 13.1 shall be provided for the
duration of the Research Term and one additional reporting period after the
termination of the Research Term, except that Information with respect to Gene
Products shall continue to be exchanged for the respective option terms set
forth in Section 14.9.
13.2 Records of Net Sales. Each of Corixa and GenQuest shall maintain
complete and accurate records of Net Sales which are relevant to the payments to
be made under this Agreement. Such records shall be open during reasonable
business hours for a period of five (5) years from their creation for
examination at the other party's expense and not more often than once each year
by a certified public accountant selected by the examining party and reasonably
acceptable to the party maintaining the records. Such accountant shall review
the records for the sole purpose of verifying the accuracy of the calculations
or payments made under this Agreement and such information shall be considered
confidential under the terms of this Agreement. In the event the examination
shows an underpayment of more than [***] for any calendar quarter examined due
to an error on the part of the record-keeping party, such party shall pay the
examining party the amounts underpaid, [***] of such amounts, and the cost of
such examination.
13.3 Records of Research Expenditures. Each of Corixa and GenQuest shall
maintain complete and accurate records of expenditures for Research. Such
records shall be open during reasonable business hours for a period of five (5)
years from their creation for examination at the other party's expense and not
more often than once a year by a certified public accountant selected by mutual
agreement of the parties. Such accountant shall review the records for the sole
purpose of verifying the accuracy of expenditures reported by the applicable
party under this Agreement and such information shall be considered confidential
under the terms of this Agreement.
13.4 Publicity Review. The parties agree that the public announcement of
the execution of this Agreement shall be in the form of a press release to be
agreed upon by the parties. Thereafter, GenQuest and Corixa shall jointly
discuss and agree, based on the principles of this Section 13.4, on any
statement to the public regarding this Agreement or any aspect of this
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Agreement not covered by Section 13.5 below, subject in each case to disclosure
otherwise required by law or regulation, including, without limitation,
disclosure required by (i) order of a court, (ii) United States securities law
filings in connection with public offerings or periodic reporting requirements
or (iii) prosecution of patent applications. In such event, the disclosing party
shall promptly notify the non-disclosing party of such disclosure as soon as
practical after the disclosure. In the discussion and agreement referred to
above, the principles observed by GenQuest and Corixa shall be: accuracy, the
requirements for confidentiality under Article 10, the advantage a competitor of
GenQuest or Corixa may gain from any public statements under this Section 13.4,
the requirements of disclosure under any applicable securities laws, including
those associated with public offerings, and the standards and customs in the
pharmaceutical industry for such disclosures by companies comparable to GenQuest
and Corixa. The terms of this Agreement may also be disclosed to Third Parties
with the consent of the other party, which consent shall not be unreasonably
withheld so long as such disclosure is made for a legitimate business purpose
and under the same confidentiality restrictions as set forth in Section 10.1 of
this Agreement.
13.5 Publications. Each party agrees that it shall not publish or
present the results of studies carried out as part of the Research without the
opportunity for prior review by the other party. Each party shall provide to the
other the opportunity to review any proposed abstracts, manuscripts or
presentations (including information to be presented orally) covering
information arising from the Research and not previously disclosed at least
thirty (30) days prior to their intended submission for publication and such
submitting party agrees, upon written request from the other party, not to
submit such abstract or manuscript for publication or to make such presentation
until the other party is given a reasonable period of time to secure patent
protection for any material in such publication or presentation which it
believes is patentable.
ARTICLE 14
TERM AND TERMINATION; CERTAIN OPTION RIGHTS
14.1 Term.
(a) This Agreement shall commence as of the Effective Date and
shall continue in effect unless otherwise terminated in accordance with the
terms of this Article 14.
(b) The Research Term shall have the duration set forth in
Section 1.42 of this Agreement and shall terminate in accordance therewith.
14.2 Termination for Material Breach. If either party commits a Material
Breach of this Agreement at any time, the non-breaching party may elect to
terminate this Agreement at any time, as follows:
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(a) If Corixa elects to terminate under this Section 14.2, the
licenses to GenQuest set forth in Section 4.2(a), 4.2(b) and 4.2(c) shall, at
Corixa's option, immediately terminate and be of no further force or effect;
provided, however, that (i) the license under Section 4.2(b) with respect to
Corixa Gene Products invented and/or discovered during the Research shall remain
in full force and effect, and (ii) the license under Section 4.2(c) with respect
to Corixa Gene Discovery Methodologies invented and/or discovered during the
Research shall remain in full force and effect. No other license grants to
GenQuest under this Agreement shall be affected by termination under this
Section 14.2.
(b) If GenQuest elects to terminate under this Section 14.2, (i)
the licenses to Corixa set forth in Section 4.1(a) and Section 4.1(b) shall, at
GenQuest's option, immediately terminate and be of no further force or effect,
and (ii) all licenses granted to GenQuest under this Agreement shall be expanded
beyond the GenQuest Exclusive Field and shall include exclusive rights in the
field of infectious disease, excluding all infectious disease Vaccines. No other
license grants to Corixa under this Agreement shall be affected by termination
under this Section 14.2.
(c) In addition, upon the request of the non-breaching party, an
Arbitrator appointed in accordance with Section 15.5 shall have the authority,
after taking into account the circumstances leading to the Material Breach in
question, to reduce (but in no event increase) any royalty obligation payable to
the breaching party under this Agreement to an amount not lower than half the
royalty payable if the Material Breach had not occurred.
(d) In the event that Corixa terminates under this Section 14.2
as a result of a Material Breach by GenQuest, GenQuest's remaining payment
obligations under Article 8 herein up to the date of termination shall become
immediately due and payable. Within thirty (30) days of such Material Breach,
GenQuest shall make a one-time lump sum cash payment to Corixa equal to such
amounts not previously paid to Corixa pursuant to Article 8. In the event that
GenQuest terminates under this Section 14.2 as a result of a Material Breach by
Corixa, GenQuest's obligations under Article 8 herein shall terminate.
(e) Notwithstanding the foregoing, in the event a party disputes
the occurrence of a Material Breach, the other party's right to terminate this
Agreement under Section 14.2 above shall be stayed until it has been determined
in accordance with Section 15.5 below that such Material Breach in fact occurred
and the breaching party has failed to cure such breach within sixty (60) days
after such determination.
(f) This Section 14.2 shall not be construed so as to limit the
remedies of either party with respect to breaches of this Agreement by the other
party of terms of this Agreement that do not constitute a Material Breach, nor
to limit any other remedies available to the parties under applicable law with
respect to such Material Breach.
14.3 Termination for Bankruptcy. Either party may terminate this
Agreement with notice if the other party makes an assignment of substantially
all of its assets for the benefit of creditors, is the subject of proceedings in
voluntary or involuntary bankruptcy instituted on behalf of or against such
party, or has a receiver or trustee appointed for all or substantially all of
its property; provided that in the case of an involuntary bankruptcy proceeding
such right to
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terminate shall only become effective if the party consents to the involuntary
bankruptcy or such proceeding is not dismissed within one hundred eighty (180)
days after the filing thereof. The party terminating this Agreement under this
Section 14.3 may, at such party's option, terminate any license granted under
this Agreement to the other party which constitutes a sublicense under any
Existing Third Party Agreement.
14.4 Termination by GenQuest. GenQuest shall have the right to terminate
the Research Term within thirty (30) days after December 31, 1997, if the
scientific objectives set forth in the Research Plan for the period ended
December 31, 1997 have not been met. Termination under this Section shall be
deemed to be a "Fundamental Change" under the Call Option Agreement.
14.5 Termination by Corixa Corixa shall have the right to terminate the
Research Term within thirty (30) days after December 31, 1997, if the scientific
objectives set forth in the Research Plan for the period ended December 31, 1997
have not been met. Termination under this Section shall be deemed to be a
"Fundamental Change" under the Call Option Agreement.
14.6 Surviving Rights. Except with respect to the survival of licenses
granted under Article 4 and Section 11.3, which shall survive as set forth in
Sections 14.2, 14.3, 14.4, 14.5 and 14.6, the obligations and rights of the
parties under Articles 6, 7, 8, 10, 11.1, 11.2, 11.4, 11.5, 11.6, 11.8, 12, 15
and 16, and Sections 13.2, 13.4 and 13.5 of this Agreement shall survive
termination. In addition, any sublicense granted to a Third Party pursuant to
this Agreement shall survive termination of this Agreement for any reason,
provided that the sublicensee thereunder agrees in writing to be bound by the
applicable provisions of Articles 6, 7, 10, 15 (other than Section 15.5) and 16,
and Sections 4.7, 11.6 and 13.2, of this Agreement.
14.7 Accrued Rights, Surviving Obligations. Termination, relinquishment
or expiration of the Agreement for any reason shall be without prejudice to any
rights which shall have accrued to the benefit of either party prior to such
termination, relinquishment or expiration, including damages arising from any
breach hereunder. Such termination, relinquishment or expiration shall not
relieve either party from obligations which are expressly indicated to survive
termination or expiration of the Agreement.
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14.8 Certain Option Rights.
(a) GenQuest hereby grants to Corixa an exclusive option (the
"Corixa Option"), exercisable at any time from the Effective Date until ninety
(90) days after the date one (1) year after termination of the Research Term to
acquire the license set forth in Section 4.1(b) hereof with respect to any
GenQuest Gene Products discovered or invented prior to the expiration of such
one (1) year period. For so long as such Corixa Option remains in effect, prior
to entering into negotiations with any Third Party with respect to a
collaboration covering any particular GenQuest Gene Product, GenQuest shall
notify Corixa of its intention to enter into such negotiations. The Corixa
Option with respect to such GenQuest Gene Product shall terminate thirty (30)
days after Corixa's receipt of such notice from GenQuest if not exercised by
Corixa prior to the expiration of such thirty (30) day period.
(b) Corixa hereby grants to GenQuest an exclusive option (the
"GenQuest Option"), exercisable at any time from the Effective Date until ninety
(90) days after the date one (1) year after termination of the Research Term, to
acquire the license set forth in Section 4.2(b) hereof with respect to any
Corixa Gene Products discovered or invented prior to the expiration of such one
(1) year period. For so long as such GenQuest Option remains in effect, prior to
entering into negotiations with any Third Party with respect to a collaboration
covering any particular Corixa Gene Product, Corixa shall notify GenQuest of its
intention to enter into such negotiations. The GenQuest Option with respect to
such Corixa Gene Product shall terminate thirty (30) days after GenQuest's
receipt of such notice from Corixa if not exercised by GenQuest prior to the
expiration of such thirty (30) day period.
ARTICLE 15
INDEMNIFICATION AND LIMITATIONS; DISPUTE RESOLUTION
15.1 Indemnification by Corixa. Corixa shall indemnify and hold GenQuest
harmless from and against any and all liability, damage, loss, cost (including
reasonable attorneys' fees) and expense resulting from any claim of bodily
injury or property damage (a) relating to the development, manufacture, use,
distribution or sale of any Product by Corixa, or (b) due to the negligence or
willful misconduct of Corixa or its employees or agents.
15.2 Indemnification by GenQuest. GenQuest shall indemnify and hold
Corixa harmless from and against any and all liability, damage, loss, cost
(including reasonable attorneys' fees) and expense resulting from any claim of
bodily injury or property damage (a) relating to the development, manufacture,
use, distribution or sale of any Product by GenQuest or (b) due to the
negligence or willful misconduct of GenQuest or its employees or agents.
15.3 LIMITED LIABILITY. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT
OR OTHERWISE, NEITHER GENQUEST NOR CORIXA SHALL BE LIABLE WITH RESPECT TO ANY
SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT
LIABILITY, OR OTHER LEGAL OR EQUITABLE THEORY FOR (i) ANY INCIDENTAL OR
CONSEQUENTIAL DAMAGES OR LOST PROFITS; OR (ii) COST OF PROCUREMENT OF SUBSTITUTE
GOODS, TECHNOLOGY, OR SERVICES. NEITHER GENQUEST NOR CORIXA SHALL HAVE
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ANY LIABILITY FOR ANY FAILURE OR DELAY DUE TO MATTERS BEYOND THEIR RESPECTIVE
REASONABLE CONTROL.
15.4 WARRANTY DISCLAIMER. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY WARRANTY WITH RESPECT TO ANY TECHNOLOGY,
GOODS, SERVICES, RIGHTS, OR OTHER SUBJECT MATTER OF THIS AGREEMENT AND HEREBY
DISCLAIMS WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON-INFRINGEMENT WITH RESPECT TO ALL OF THE FOREGOING.
15.5 Dispute Resolution. No arbitration with reference to this Agreement
shall arise until the procedures set forth in this Section 15.5 have been
satisfied. In the event of any dispute with respect to the interpretation of any
provision of this Agreement or with respect to the performance of either party
under this Agreement, either party may at any time provide the other party
written notice specifying the terms of such disagreement in reasonable detail.
As soon as practicable after receipt of such notice, the Chairman of the Board
of Directors of GenQuest and the Chairman of the Board of Directors of Corixa
shall meet at a mutually agreed upon time and location for the purpose of
resolving such disagreement. They shall engage in discussions and/or
negotiations for a period of up to thirty (30) days in an effort to resolve the
disagreement or negotiate an interpretation or revision of the applicable
portion of this Agreement which is mutually agreeable to both parties, without
the necessity of formal procedures relating thereto. During the course of such
discussion and/or negotiation, the parties shall reasonably cooperate and
provide information that is not materially confidential in order so that each of
the parties may be fully informed with respect to the issues in dispute.
The commencement of JAMS (as defined below) dispute resolution
procedures to resolve such disagreement may occur only after the earlier of: (a)
the mutual agreement of the Chairman of the Board of Directors of GenQuest and
the Chairman of the Board of Directors of Corixa that resolution of such
disagreement through continued negotiation is not likely to occur, or (b)
following expiration of the thirty (30) day negotiation period. Thereafter,
either party may seek to resolve such disagreement by initiating an Alternative
Dispute Resolution ("ADR") in which the Judicial Arbitration and Mediation
Services ("JAMS"), Seattle, Washington shall select the arbitrator
("Arbitrator") as provided herein. If JAMS is not in existence at the time of
such dispute the American Arbitration Association, Seattle, Washington shall be
substituted.
(a) Selection of Arbitrator. An ADR shall be initiated by a party
by sending written notice thereof to the other party and JAMS, which notice
shall state the issues to be resolved. Within ten (10) business days after
receipt of such notice, the other party may, by sending written notice to the
initiating party and JAMS, add issues to be resolved. Within twenty (20)
business days after the date of the original ADR notice, JAMS shall nominate to
the parties at least five (5) qualified nominees from JAMS' panel. The parties
shall have five (5) business days after the receipt of such nominations to agree
on a Arbitrator or, failing to agree, to rank-order their preferences with the
most preferred being given the lowest number, and mail the rank-order to JAMS.
JAMS shall notify the parties of their selection. If all nominees are
unacceptable to a party, the procedure shall be repeated and, if the parties
cannot select an Arbitrator the second time, JAMS shall select the Arbitrator.
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(b) Arbitrator With Special Expertise. In the event of a dispute
between the parties relating to the calculation of any royalties or the amount
of other consideration payable under this Agreement, then, in addition to the
procedure set forth in the previous subsection, the Arbitrator shall (i) be a
partner or full member of an internationally recognized certified public
accounting firm which is not an auditing firm for either party and has not
provided material services to either party during the last two (2) year period
prior to the date of ADR initiation and (ii) have a meaningful biotechnology
science and industry background.
(c) ADR Hearing. The Arbitrator shall hold a hearing to resolve
the issues within sixty (60) business days after selection. The location of the
hearing shall be Seattle, Washington. Each party may be represented by counsel.
The Arbitrator shall have sole discretion regarding the admissibility of
evidence and conduct of the hearing. At least five (5) business days prior to
the hearing, each party shall submit to the other party and the Arbitrator a
copy of all exhibits on which such party intends to rely at the hearing, a
pre-hearing brief (up to thirty (30) pages) and a proposed disposition of the
dispute (up to five (5) pages). The proposed disposition shall be limited to
proposed rulings and remedies on each issue, and shall contain no argument on or
analysis of the facts or issues; provided, however, that the parties shall not
present proposed monetary remedies. Within five (5) business days after close of
the hearing, each party may submit a post-hearing brief (up to five (5) pages)
to the Arbitrator.
(d) ADR Ruling: Fees and Expenses. The Arbitrator shall render a
disposition on the proposed rulings as expeditiously as possible after the
hearing, but not later than fifteen (15) business days after the conclusion of
the hearing. The Arbitrator shall rule on each issue and shall adopt in its
entirety the proposed ruling of one of the parties on each issue. In the
circumstance where the Arbitrator rules for a party on a claim in the form of a
claim for monetary damages, the parties shall then submit a proposed remedy
within ten (10) days of notice of the ruling. The proposed remedy may be
accompanied by a brief in support of the remedy not to exceed five (5) pages.
The Arbitrator shall rule on and adopt one of the proposed remedies within ten
(10) days of their submission. The Arbitrator's disposition shall be final and
not appealable, except that either party shall have the right to appeal such
disposition on the basis it was affected by fraud or bad faith in connection
with the ADR proceedings. The reasonable fees and expenses of the Arbitrator, as
well as the standard charges of JAMS for its assistance, shall be borne by the
parties as determined by the Arbitrator, who shall, in making such
determination, take into account the equities and disposition of the
proceedings. A judgment on the Arbitrator's disposition may be entered in and
enforced by any court having jurisdiction over the parties.
(e) JAMS Rules. Except as otherwise provided in this Section
15.5, JAMS Rules shall be used in connection with the ADR.
(f) Notwithstanding anything to the contrary in this Section
15.5, either Corixa or GenQuest may, on good cause shown in the event such party
reasonably believes that it otherwise will suffer irreparable injury, seek a
temporary restraining order and/or preliminary injunction from a court of
competent jurisdiction, to be effective pending the institution of the
arbitration process and the deliberation and award of the Arbitrator.
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ARTICLE 16
MISCELLANEOUS
16.1 Assignment to Non-Affiliates: Sale or Merger. Neither party may
assign its rights or obligations under this Agreement except as expressly
provided elsewhere in this Agreement or in accordance with the remainder of this
paragraph. Either party may assign its rights or obligations under this
Agreement in connection with the sale of all or substantially all of the
assigning party's related business. This Agreement shall survive any merger of
either party with or into another party and no consent shall be required
hereunder; provided, that in the event of such merger, no intellectual property
rights of the Third Party that is a party to the merger or its Affiliate shall
be included in the GenQuest Technology or the Corixa Technology, as applicable,
to the extent that such intellectual property rights were Controlled by the
Third Party or its Affiliate prior to the merger, or are created outside the
Research Plan by personnel who were not employees of GenQuest or Corixa,
respectively, prior to the merger. Following the Put Option Expiration under
the Put/Call Agreement after an assignment of this Agreement by Corixa,
GenQuest may upon notice to Corixa terminate the Research Term, in which case
the Research Term shall be deemed to end for all purposes of this Agreement
upon Corixa's receipt of such notice.
16.2 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses on account of failure of
performance by the defaulting party if the failure is occasioned by government
action, war, fire, earthquake, explosion, flood, strike, lockout, embargo, act
of God, or any other similar cause beyond the control of the defaulting party,
provided that the party claiming force majeure has exerted all reasonable
efforts to avoid or remedy such force majeure; provided further, however, in no
event shall a party be required to settle any labor dispute or disturbance.
16.3 Further Actions. Each party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
16.4 No Trademark Rights. Except as otherwise provided herein, no right,
express or implied, is granted by the Agreement to use in any manner the name
"GenQuest" or "Corixa" or any other trade name or trademark of the other party
in connection with the performance of this Agreement, and no tradename or
trademark of either party may be used in any form by the other party or such
party's Affiliates or sublicensees without prior written consent.
16.5 Notices. All notices and other communications hereunder shall be in
writing and shall be deemed given if delivered (i) personally, (ii) by facsimile
transmission (receipt verified), (iii) by registered or certified mail (return
receipt requested), postage prepaid, or (iv) sent by express courier service
(receipt verified), to the parties at the following addresses (or at such other
address for a party as shall be specified by like notice; provided, that notices
of a change of address shall be effective only upon receipt thereof):
If to GenQuest, addressed to:
GenQuest, Inc.
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c/▇ ▇▇▇▇▇▇▇ & Company
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to Corixa, addressed to:
Corixa Corporation.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇.
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Operating Officer
Corporate Counsel
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
With Copies to:
Venture Law Group
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇
▇▇▇ ▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
16.6 Governing Law. This Agreement shall be governed by the laws of the
State of Washington as such laws are applied to contracts entered into and to be
performed within such state notwithstanding the provisions governing conflict of
laws under such laws to the contrary. The parties hereby submit to the exclusive
jurisdiction of the United States District Court for the Western District of
Washington.
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16.7 Waiver. All waivers must be in writing signed by authorized
representatives of both parties. Except as specifically provided for herein, the
waiver from time to time by either of the parties of any of their rights or
their failure to exercise any remedy shall not operate or be construed as a
continuing waiver of same or of any other of such party's rights or remedies
provided in this Agreement.
16.8 Severability. 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 for a period of
ninety (90) days after such provision is held to be invalid or unenforceable,
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.
16.9 Entire Agreement. This Agreement sets forth all the covenants,
promises, agreements, warranties, representations, conditions and understandings
between the parties hereto and supersedes and terminates all prior agreements
and understandings between the parties. There are no covenants, promises,
agreements, warranties, representations, conditions or understandings, either
oral or written, between the parties other than as set forth herein and therein.
No subsequent alteration, amendment, change or addition to this Agreement shall
be binding upon the parties hereto unless reduced to writing and signed by the
respective authorized officers of the parties.
16.10 Certain Legal Fees. The parties will share legal expenses incurred
in connection with the drafting and negotiation of this Agreement in a manner to
be determined in good faith by the parties within a reasonable time after the
Execution Date.
16.11 Waiver of Conflicts. Each party to this Agreement acknowledges
that Venture Law Group ("VLG") is general corporate counsel for Corixa and has
represented Corixa with respect to the negotiations of, and the transactions
contemplated by, this Agreement, the Administrative Services Agreement and the
Call Option Agreement, and that VLG has in the past performed and may continue
to perform legal services for certain investors in GenQuest (the "Investor")
and for GenQuest in matters unrelated to the transactions described in this
Agreement, including the representation of certain Investors in venture capital
financings and other matters and the representation of GenQuest in certain
transactions and general corporate matters. In addition, VLG has been
requested to, and has agreed to, provide a legal opinion with respect to
certain legal matters regarding the transactions contemplated by GenQuest's
Series B Preferred Stock Purchase Agreement dated as of the date hereof (the
"Opinion"). Accordingly, each party to this Agreement hereby (a) acknowledges
that they have had an opportunity to ask for information relevant to this
disclosure, and (b) gives its informed written consent to (i) VLG's general
corporate representation of Corixa, (ii) VLG's representation of certain of the
Investors in such unrelated matters, (iii) VLG's representation of GenQuest with
respect to the negotiation of, and the transactions contemplated by, GenQuest's
Series B Preferred Stock Purchase Agreement dated as of the date hereof,
GenQuest's Amended and Restated Investor's Rights Agreement dated as of the date
hereof, GenQuest's Second Amended and Restated Certificate of Incorporation and
the Amendment and Termination Agreement dated as of the date hereof, (iv) VLG's
provision of the Opinion and the representation of GenQuest in certain unrelated
transactions and general corporate matters, (v) VLG's representation of Corixa
with respect to the negotiation of,
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and the transactions contemplated by, this Agreement, the Administrative
Services Agreement, the Put/Call Agreement and GenQuest's Amended and Restated
Voting Agreement dated as of the date hereof, and (vi) VLG's provision of
services for GenQuest through GenQuest's relationship with Corixa, as set forth
in this Agreement, the Administrative Services Agreement and the Put/Call
Agreement. Each party to this Agreement further acknowledges that it has had
the opportunity to confer with legal counsel of its choice in connection with
the transactions contemplated hereby.
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IN WITNESS WHEREOF, the parties have executed this Amended and
Restated License and Research Collaboration Agreement in duplicate originals by
their proper officers as of the date and year first above written.
GENQUEST, INC.
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
--------------------------------
▇▇▇▇ ▇▇▇▇▇▇▇
Chairman of the Board of Directors
CORIXA CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
--------------------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇
President and Chief Executive Officer
43
Exhibit A
AMENDED AND RESTATED CALL OPTION AGREEMENT
See Exhibit 10.24 filed herewith
44
Exhibit 4.4(a)
To the Amended and Restated License and
Research Collaboration Agreement
EXISITING THIRD PARTY TECHNOLOGY
1. License Agreement, dated as of November 11, 1994, between University of
Pittsburgh of the Commonwealth System of Higher Education and Corixa
Corporation.
2. Exclusive License Agreement, dated as of June 12, 1995, between the
University of Washington and Croixa Corporation.
3. Exclusive License Agreement, dated as of June 12, 1995, between the
Washington Research Foundation and Corixa Corporation.
4. License Agreement, dated as of November 20, 1995, between Health
Research, Inc. and Corixa Corporation.
5. Agreement for Collaborative Research with Commercial Sponsers, dated as
of March 1, 1995, between Health Research, Inc. and Corixa Corporation.
6. Research Agreement, dated as of November 11, 1994, between the
University of Pittsburgh of the Commonwealth System of Higher
Education, as amended March 8, 1995.