Exhibit 10.1(k)
LICENSE AGREEMENT
This License Agreement, to be effective as of the 1st day of
February, 1993 (hereinafter called "Agreement Date"), is by and between Baylor
College of Medicine (hereinafter called "BAYLOR"), a Texas nonprofit corporation
having its principal place of business at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,
and Genica Pharmaceuticals Corporation, (hereinafter called "GENICA"), a
corporation organized under the laws of the Commonwealth of Massachusetts, and
having its principal place of business at Two Biotech Park, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
WITNESSETH:
WHEREAS, BAYLOR is the owner of the Subject Technology as defined
below; and
WHEREAS, BAYLOR is desirous of granting to GENICA a
royalty-bearing, worldwide license to the Subject Technology, which shall be
exclusive, except as set forth in Paragraphs 2.2 and 2.3, on the terms set forth
herein; and
WHEREAS, GENICA desires to obtain said exclusive license under
the Subject Technology.
NOW, THEREFORE, for and in consideration of the premises and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto expressly agree as follows:
1. DEFINITIONS AS USED HEREIN
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1.1 The term "Subject Technology" shall mean all technology,
biological materials, trade secrets, kits, compounds, know-how, methods,
documents, materials, tests, probes and all confidential information related to
the diagnosis of Charcot-▇▇▇▇▇ Tooth Disease which was developed by ▇▇. ▇▇▇▇▇ ▇.
▇▇▇▇▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇ ▇▇▇-▇▇▇▇ and ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ in
laboratories at BAYLOR. The Subject Technology shall also include United States
Patent Application Serial No. 07/711,615 filed June 6, 1991, entitled "Molecular
Diagnosis of Charcot-▇▇▇▇▇ Tooth Disease," together with all valid patents or
patent applications, reexaminations, reissues, renewals, extensions, divisions
and any foreign counterparts thereof (the "Licensed Patents"). The
continuation-in-part application of United States Serial No. 07/711,615 is
specifically excluded from the term "Subject Technology."
1.2 The term "Field" shall mean use of the Subject Technology
solely for commercial diagnostic purposes. The research market is specifically
excluded from the term "Field."
1.3 The term "Licensed Product(s)" shall mean products or
services which are derived from, incorporate or utilize, in whole or in part,
the Subject Technology.
* Material omitted and filed separately with the Securities and Exchange
Commission pursuant to request for confidential treatment under Rule 406.
1.4 The term "Combination Product" shall mean a diagnostic
product developed and sold by GENICA or its Affiliates that is comprised in part
of Licensed Product(s) and one or more other patented products or parts. The Net
Sales for the purposes of determining royalties on Licensed Products shall be
calculated by multiplying the Net Sales of the Combination Product by the
fraction A/A+B, where A is the invoice price for the Licensed Products and B is
the invoice price for the patented products or parts of the Combination Product
if sold separately. If the Licensed Products or other patented products or parts
of the Combination Product are not sold separately, the Net Sales for
determining royalties shall be calculated by multiplying the Net Sales of the
Combination Product by the fraction C/C+D, where C is the cost for producing the
Licensed Products and D is the cost for producing the other patented products or
parts in the Combination Product. If GENICA finds it necessary to license other
patents to enabling technology or other genes for CMT for which it must pay
royalties, then the royalty rate paid to BAYLOR as stated in Paragraph 4.2 shall
be reduced by no more than [ ]%*.
1.5 The term "Net Sales" shall mean the gross amount of monies or
monetary equivalent of other consideration received from unrelated third parties
by GENICA or its Affiliates for Licensed Products by sale or other mode of
transfer, less all trade, quantity and cash discounts actually allowed, credits,
and allowances actually granted on account of rejections, returns or billing
errors, duties, any separately identified charges for transportation and
insurance, taxes and other governmental charges actually paid. The term "Net
Sales" in the case of non-cash sales, shall mean all equivalent consideration
received by GENICA for Licensed Products. If the Parties fail to reach agreement
on the fair value of equivalent consideration received for non-cash sales, the
Parties agree that an independent third party mutually acceptable to both
Parties shall be appointed to determine the fair value of equivalent
consideration received.
1.6 The term "Sublicensing Revenues" shall mean the amount
actually paid to GENICA by Sublicensees arising from the sublicensing of the
right to make, have made, use or sell Licensed Products. Sublicensing Revenues
shall include license fees, royalties and any other payment in respect to
Licensed Products, but shall not include any payments tied to the provision of
goods and services by GENICA to such Sublicensee to compensate GENICA for the
provision of such goods and services.
1.7 The term "Affiliates" shall mean any corporation,
partnership, joint venture or other entity of which the common stock or other
equity ownership thereof is [ ]%* or more owned by GENICA.
1.8 The term "the Parties" shall mean GENICA and BAYLOR.
2. GRANT OF LICENSE
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2.1 BAYLOR hereby grants to GENICA an exclusive, worldwide
license with the right to grant sublicenses hereunder, under the Subject
Technology to make, have made, use, and sell Licensed Products in the Field.
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2.2 BAYLOR shall at all times retain the right to use the Subject
Technology for research and commercial purposes in diagnostic and other
laboratories which are owned and operated by and are located at BAYLOR or any of
its affiliated health care entities and which are staffed in whole or in part by
full-time BAYLOR faculty members. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ and ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ shall at
all times retain the right to use the Subject Technology solely for research,
non-commercial purposes. In addition, BAYLOR reserves the right to: (i) provide
to academic institutions solely for research, non-commercial purposes, the
Subject Technology and (ii) grant licenses to the Subject Technology solely for
research, non-commercial purposes to other third parties. BAYLOR agrees that
before it (i) provides the Subject Technology for research purposes to other
academic institutions, or (ii) licenses the Subject Technology for research
purposes to other third parties, it will require that these institutions or
third parties sign an agreement whereby they consent not to sell or offer to
sell products or services for the clinical diagnosis of CMT covered by the
Subject Technology nor will they provide diagnostic results to others including
medical professionals where such results might be used in the screening or
clinical management of human patients.
2.3 The exclusive license granted to GENICA hereunder shall also
be subject to and nonexclusive with respect to, any nonexclusive license which
BAYLOR is required by law to grant to the United States government or to a
foreign state pursuant to any existent or future treaty with the United States.
2.4 Upon written request by ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ or ▇▇▇▇▇▇ ▇. ▇▇▇▇▇,
GENICA agrees to undertake reasonable efforts to provide samples of patient
serum or other fluids or tissues to the individual laboratories of ▇▇▇▇▇ ▇.
▇▇▇▇▇▇ and ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ for research purposes in connection with the Subject
Technology.
3. BEST EFFORTS
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GENICA shall use Best Efforts to effect introduction of Licensed
Products into the commercial market as soon as practicable, consistent with
sound and reasonable business practices and judgment. For purposes of this
paragraph, "Best Efforts" shall include, but not be limited to, meeting the
following milestones of introducing the Licensed Products to the market:
* GENICA shall (i) train its salesforce to sell CMT tests, (ii)
mail product introduction information to neurologists within
thirty (30) days of launch, and (iii) have an advertisement in a
key journal (i.e. American Journal of Human Genetics,
Neurobiology, Annals of Neurology and American Journal of
Medical Genetics) or other promotional mechanisms in place at
GENICA's sole discretion, within nine (9) months of the launch
date, or such reasonable time as makes marketing sense.
* GENICA must exhibit at a major conference (i.e. American Society
of Human Genetics and/or American Neurology Association or
similar body) within one year of the Agreement Date.
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* GENICA shall train technicians to the acceptance of Drs. Lupski
and ▇▇▇▇▇.
* GENICA shall have technicians at GENICA with the appropriate
skill to sufficiently perform any of the methods (including
fluorescent in-situ hybridization, southern blot analysis, PCR
and pulsed-field gel electrophoresis) that are necessary to meet
market needs to diagnose CMT within sixty (60) days of the first
determination of a market need.
* BAYLOR shall (i) provide reasonable amounts of the tangible
materials of the Subject Technology including all necessary
probes for the diagnosis of CMT to GENICA as soon possible after
the Agreement Date, (ii) participate in a blind pool study with
GENICA and (iii) reasonably train a technician of GENICA in
laboratories of ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ and/or ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ at
BAYLOR.
* GENICA shall launch a commercial product within six months of
the date of receipt of tangible materials of the Subject
Technology.
4. PAYMENT
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4.1 As partial consideration for the rights conveyed by BAYLOR
under this License Agreement, GENICA agrees to pay BAYLOR a license fee of $[
]*. The payment shall be as follows: (i) $[ ]* contemporaneously upon
the execution of the License Agreement; (ii) $[ ]* within six months of
the initial sale of a Licensed Product under the License Agreement and (iii) the
remaining $[ ] within twelve (12) months of the initial sale of product.
4.2 In addition to the foregoing license execution fee, GENICA
agrees to pay and shall pay to BAYLOR a running royalty of [ ]%* of Net
Sales of all Licensed Products sold by GENICA or its Affiliates. Such running
royalties shall be payable as provided in Paragraph 4.5. GENICA may offset
against any royalty payment due from a particular foreign country the patent
costs from such particular foreign country.
4.3 In addition to the foregoing fees and running royalties,
GENICA agrees to pay to BAYLOR the following annual minimum royalty payments,
with the start of Year One being defined as the date of the initial sale of
Licensed Products under the License Agreement:
Year One $[ ]
Year Two $[ ]
Year Three $[ ]
Year Four $[ ]
Year Five $[ ]
The first payment shall be due within thirty (30) days of the anniversary of
Year One. Each such subsequent payment shall be due within thirty (30) days of
each of the second, third,
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fourth, and fifth anniversaries of Year One. Each such annual minimum royalty
payment shall be creditable against royalties due that year payable under
Paragraph 4.2.
4.4 For sublicenses granted to the Subject Technology, GENICA
shall pay BAYLOR [ ]%* of the Sublicensing Revenue received by GENICA
during the first year of the License Agreement, [ ]%* received during
the second year of the License Agreement, [ ]%* received during the
third year of the License Agreement, [ ]%* received during the fourth
and continuing years of the License Agreement.
4.5 If GENICA fails to pay when due all running royalties payable
under Paragraphs 4.2 and 4.4 and each annual minimum royalty payable under
Paragraph 4.3, BAYLOR may, at its sole option, convert this license to a
non-exclusive one, in which event, the royalty rate in Paragraph 4.2 shall be
reduced to [ ]%* and the annual minimum royalties in Paragraph 4.3 shall
be reduced by [ ]%*. The failure of BAYLOR to exercise such right shall
not be deemed to be a waiver of such right, nor shall such failure preclude
BAYLOR from exercising or enforcing said right upon any subsequent failure by
GENICA.
4.6 Payment of the royalties specified in Paragraph 4.2 shall be
made by GENICA to BAYLOR within sixty (60) days after March 31, June 30,
September 30 and December 31 of each year during the term of this License
Agreement covering the quantity of Licensed Products sold by GENICA or its
Affiliates during the preceding calendar quarter. The last such payment shall be
made within sixty (60) days after termination of this License Agreement.
4.7 All payments due hereunder are expressed in and shall be paid
by check payable in United States of America currency, without deduction of
exchange, collection or other charges, except as defined in Section 1.5, to
BAYLOR, or to the account of BAYLOR at such other bank as BAYLOR may from time
to time designate in writing.
4.8 In the event that any payment due hereunder is not made when
due, the payment shall accrue interest beginning on the tenth day following the
due day thereof, calculated at the annual rate of the sum of (a) [ ]%*
plus (b) [ ]* on the date said payment is due, the interest being
[ ]*, provided, however, that in no event shall said annual interest
rate exceed [ ]*. Each such royalty payment when made shall be
accompanied by all interest so accrued. Said interest and the payment and
acceptance thereof shall not negate or waive the right of BAYLOR to seek any
other remedy, legal or equitable, to which it may be entitled because of the
delinquency of any payment.
5. RECORDS, REPORTS AND INSPECTION
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5.1 Within sixty (60) days after the expiration of each calendar
quarter that begins or ends during the term of this License Agreement, GENICA
shall furnish BAYLOR
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with a written statement of Net Sales of Licensed Products during such calendar
quarter. Such written statements shall be duly signed by an authorized signatory
of GENICA on behalf of GENICA and its Affiliates and shall show the Net Sales of
Licensed Products by GENICA and its Affiliates during such calendar quarter and
the amount of royalties payable under this License Agreement based thereon. Each
such report shall be accompanied by payment of the royalties shown to be due
thereby.
5.2 GENICA shall maintain or cause to be maintained a true and
correct set of records pertaining to the Net Sales of Licensed Products and its
performance and the performance of its Affiliates under this License Agreement.
During the term of this License Agreement and for a period of two (2) years
thereafter, GENICA agrees to permit an independent public accountant selected
and paid by BAYLOR and reasonably acceptable to GENICA to have access during
ordinary business hours to such records as are maintained by GENICA or its
Affiliates as may be necessary, in the opinion of such auditor, to determine the
correctness of any report and/or payment made under this License Agreement. If
the event that the audit reveals an underpayment of royalty by more than
[ ]%*, the cost of the audit shall be paid by GENICA. If the
underpayment is less than [ ]%* but more than [ ]%*, GENICA and
BAYLOR shall each pay [ ]%* of the cost of the independent audit. Such
accountant shall maintain in confidence, and shall not disclose to BAYLOR, any
information directly relating to the correctness of such reports and payments.
6. PATENTS AND INFRINGEMENT
------------------------
6.1 BAYLOR shall continue, at its expense, the efforts commenced
prior to the Agreement Date to obtain a United States patent on the Licensed
Patents. GENICA shall be responsible for all of the expenses incurred after the
Agreement Date for the preparation, filing, prosecution and maintenance of
foreign patent applications and resulting foreign patents. The Parties shall
utilize patent attorneys or agents of BAYLOR's choice for the filing,
prosecution and issuance of the United States and all foreign patent
applications on the Licensed Patents. GENICA expressly authorizes and directs
BAYLOR to instruct such counsel to invoice GENICA directly for all of the
expenses and fees related to all foreign filings. GENICA shall have reasonable
input in deciding which foreign filings will be made. Should GENICA refuse to
pay for certain foreign filings, then BAYLOR may do so at its own expense,
retaining license and patent rights secured for such filings. BAYLOR shall
instruct its counsel to copy GENICA on all correspondence related to the
Licensed Patents. BAYLOR and its faculty members shall cooperate fully in the
preparation, filing and prosecution of all United States and foreign patent
applications filed pursuant to this paragraph.
6.2 If it is believed in good faith that the Licensed Patents are
infringed by a third party, the party to this License Agreement first having
knowledge of such infringement shall promptly notify the other in writing, which
notice shall set forth the facts of such infringement in reasonable detail.
GENICA shall have the right, but not the obligation, to institute and prosecute
at its own expense an action or proceeding against any such infringement of the
Licensed Patent. If GENICA fails to bring such action or proceedings within a
period of three (3) months after receiving written notice or otherwise having
knowledge of such in-
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fringement, then BAYLOR shall have the right, but not the obligation, to
institute or prosecute at its own expense an action or proceeding against any
infringement of the Licensed Patents. Any recovery of damages and costs in such
suits shall be apportioned as follows: the party bringing suit shall first
recover an amount equal to two times the costs and expenses incurred by such
party directly related to the initiation and full prosecution of such action and
the remainder shall be divided equally between BAYLOR and GENICA.
7. AFFILIATES AND SUBLICENSEES
---------------------------
GENICA shall be responsible for its Affiliates and sublicensees
and shall not grant any rights which are inconsistent with the rights and
obligations of GENICA hereunder. Any act or omission of an Affiliate or
sublicensee which would be a breach of this License Agreement if performed by
GENICA shall be deemed to be a breach by GENICA of this License Agreement. Each
sublicense agreement granted by GENICA to its Affiliates or sublicensees shall
include an audit right by BAYLOR of the same scope as provided by Paragraph 5.2
hereof with respect to GENICA. No such sublicense agreement shall contain any
provision which would cause it to extend beyond the term of this License
Agreement. GENICA shall give BAYLOR prompt notification of the identity and
address of each Affiliate and sublicensee with whom it concludes a sublicense
agreement and shall supply BAYLOR with a copy of each sublicense agreement.
8. TERMINATION
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8.1 Unless earlier terminated as hereinafter provided, this
License Agreement shall extend for the life of the last to expire Licensed
Patent or if no Licensed Patent issues, five (5) years from the Agreement Date.
After such termination, GENICA shall have a perpetual, royalty-free license to
the Subject Technology except for payment of previously accrued and unpaid
royalties due pursuant to Paragraph 4.2 hereof.
8.2 In the event of default or failure by either party to perform
any of the terms, covenants or provisions of this License Agreement, the
nonperforming party shall have ninety (90) days after the giving of written
notice of such default by the other party to correct such default. If such
default is not corrected within the said ninety (90) day period or after BAYLOR,
at its sole discretion, accepts a suitable workplan from GENICA after notice as
aforesaid, the performing party shall have the right, at its option, to cancel
and terminate this License Agreement. Either Party shall have the right, at its
option, to cancel and terminate this License Agreement in the event that the
other Party shall (i) become involved in its insolvency, dissolution, bankruptcy
or receivership proceedings affecting the operation of its business or (ii) make
an assignment of all or substantially all its assets for the benefit of
creditors or in the event that (iii) a receiver or trustee is appointed for such
other Party and such Party shall, after the expiration of ninety (90) days
following any of the events enumerated above, have been unable to secure a
dismissal, stay or other suspension of such proceedings. In the event of
termination of this License Agreement, except pursuant to Paragraph 8.1, all
rights to the Subject Technology licensed by BAYLOR to GENICA hereunder shall
revert to BAYLOR.
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8.3 GENICA may terminate this License Agreement at any time upon
ninety (90) days written notice to BAYLOR. From and after the effective date of
such termination, GENICA shall cease using the Subject Technology and GENICA's
obligation to pay running royalties and annual minimum royalties hereunder shall
cease, except as to royalty payments which have accrued up to the effective date
of such termination. GENICA shall not, however, be entitled to receive a refund
of any sums paid to BAYLOR hereunder.
8.4 At the date of any termination pursuant to Paragraph 8.2
hereof for breach by GENICA, or pursuant to Paragraph 8.3 hereof, GENICA shall
return all tangible materials of the Subject Technology to BAYLOR.
8.5 No termination of this License Agreement shall constitute a
termination or a waiver of any rights of either Party accruing at or prior to
the time of such termination. The obligations of Paragraphs 5 and 12 shall
survive termination of this License Agreement.
9. ASSIGNABILITY
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This License Agreement shall be binding upon and shall inure to
the benefit of BAYLOR and its assigns and successors in interest, and shall be
binding upon and shall inure to the benefit of GENICA and its Affiliates who are
sublicensees and the successor to its entire business to which this License
Agreement relates, but shall not otherwise be assignable or assigned by either
Party without prior written approval by the other Party, which approval shall
not be unreasonably withheld.
10. LAW
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This License Agreement shall be construed according to the Laws
of the State of Texas, United States of America; provided, however, that any
patent question or controversy shall be resolved in the courts having
jurisdiction over the patent or patents in question and in accordance with the
laws applicable to such patent or patents.
11. ADDRESSES
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For the purpose of reports and notices herein set forth, the
addresses set forth in the introductory paragraph of this License Agreement
shall be used unless changed by written notification by one Party to the other
Party.
12. ADDITIONAL PROVISIONS
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12.1 Use of BAYLOR Name. GENICA agrees that it may not use in any
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way the name of "BAYLOR" or any logotypes or symbols associated with BAYLOR or
the names of any researchers at BAYLOR without the prior written consent of
BAYLOR, which consent shall not be unreasonably withheld.
12.2 Confidentiality. GENICA agrees to use reasonable efforts
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(which shall be at least as great as the efforts it uses to maintain the
confidentiality of its own confidential
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information) to maintain the Subject Technology in confidence, and to use the
same only in accordance with this License Agreement. Such obligation of
confidentiality shall not apply to information which GENICA can demonstrate: (i)
was at the time of disclosure in the public domain; (ii) has come into the
public domain after disclosure through no fault of GENICA or its Affiliates;
(iii) was known to GENICA or its Affiliates prior to disclosure thereof by
BAYLOR or (iv) was lawfully disclosed to GENICA without obligation of confidence
by a third party which was not under an obligation of confidence to BAYLOR with
respect thereto. The foregoing obligations of confidentiality shall survive
termination of this License Agreement.
12.3 Indemnity. Each Party shall notify the other of any claim,
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lawsuit or other proceeding related to the Licensed Products. Subject to the
following sentence, GENICA agrees that it will defend, indemnify and hold
harmless BAYLOR and its faculty members, researchers, employees, officers,
trustees, ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ and agents and each of them (the "Indemnified
Parties") from and against any and all claims, causes of action, lawsuits or
other proceedings filed or otherwise instituted against the Indemnified Parties
related directly or indirectly to or arising out of the design, manufacture,
sale, or use of the Licensed Products or any other embodiment of the Subject
Technology by GENICA or its Affiliates except such claims, causes of action,
lawsuits, other proceedings and the costs (including attorney's fees) related
thereto which result in whole or in part from the gross negligence or
intentional misconduct of any of the Indemnified Parties. Notwithstanding any
provisions herein to the contrary, BAYLOR shall indemnify GENICA for any claims
for injuries to persons or damages which occur on BAYLOR premises or premises
under the exclusive control of BAYLOR. GENICA will also assume responsibility
for all costs and expenses related to such claims and lawsuits for which it is
obligated to indemnify the Indemnified Parties pursuant to this Paragraph 12.3,
including, but not limited to, the payment of all attorneys' fees and costs of
litigation or other defense.
12.4 Insurance. GENICA and each of its Affiliates and
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sublicensees as applicable, shall, for so long as GENICA, its Affiliates or
sublicensees manufacture, sell, or use any Licensed Products, maintain in full
force and effect policies of (i) worker's compensation and/or employer's
liability insurance (with Broad Form General Liability and Service Liability
endorsements) with limits of not less than $[ ] per person and $[ ] per
occurrence with no annual aggregate or such coverage as is deemed suitable by
the insurance agency and GENICA's Board of Directors. Such coverage(s) shall be
purchased from a carrier or carriers deemed acceptable to BAYLOR. Upon request
by BAYLOR, GENICA shall provide certificate(s) evidencing the coverage(s)
maintained which shall also specify that GENICA make best efforts to give BAYLOR
no less than thirty (30) days prior written notice of any change in or
cancellation of such coverage(s).
12.5 BAYLOR's Disclaimers. Neither BAYLOR nor any of its faculty
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members, researchers, trustees, officers, employees, ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ or
agents assume any responsibility for the manufacture, service specifications, or
use of the Licensed Products which are manufactured by or for or sold by GENICA,
its Affiliates or its sublicensees. All warranties in connection with the
Licensed Products shall be made by GENICA (or the par-
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ticular GENICA Affiliate or sublicensee that is involved) as the manufacturer or
seller thereof and none of such warranties shall directly or by implication in
any way obligate BAYLOR or any of its faculty members, researchers, trustees,
officers, employees, ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ or agents.
12.6 Disclaimer of Warranty. BAYLOR makes no warranties or
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representations, expressed or implied, including, but not limited to, warranties
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of fitness or merchantability, regarding Licensed Products.
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12.7 The failure of either Party to enforce at any time any of
the provisions of this License Agreement, or any rights in respect thereto, or
to exercise any election herein provided, shall in no way be considered to be a
waiver of such provisions, rights, or elections, or in any way to affect the
validity of this License Agreement. Exercise by either Party of any of its
rights herein or any or its elections under the terms and covenants herein shall
not preclude either Party from exercising the same or any other rights in this
License Agreement irrespective of any previous action or proceeding taken by
either Party hereunder.
12.8 If any provision of this License Agreement is judicially or
in an arbitration proceeding determined to be void or unenforceable, such
provision shall be deemed to be severable from the other provisions of this
License Agreement which shall remain in full force and effect. Either Party may
request that a provision otherwise void or unenforceable be reformed so as to be
valid and enforceable to the maximum extent permitted by law.
12.9 No liability hereunder shall result to a Party by reason of
delay in performance caused by force majeure, that is circumstances beyond the
reasonable control of the party, including, without limitation, acts of God,
fire, flood, war, civil unrest, labor unrest, or shortage of or inability to
obtain material as equipment.
12.10 The terms and conditions herein constitute the entire
agreement between the Parties and shall supersede all previous agreements,
either oral or written, between the Parties hereto with respect to the subject
matter hereof. No agreement of understanding bearing on this License Agreement
shall be binding upon either Party hereto unless it shall be in writing and
signed by the duly authorized officer or representative of each of the Parties
and shall expressly refer to this License Agreement.
Executed this 1st day of February, 1993, to be effective as of
the day and year first above written.
GENICA PHARMACEUTICALS BAYLOR COLLEGE OF MEDICINE
CORPORATION
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Title: President and CEO Title: Vice President for Finance and
Administration
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FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment ("the First Amendment") to the License
Agreement, to be effective as of the first day of August, 1993, is by and
between Baylor College of Medicine (hereinafter "BAYLOR"), a Texas non-profit
corporation having its principal place of business at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇, and Genica Pharmaceuticals Corporation (hereinafter "GENICA"), a
corporation organized under the laws of the Commonwealth of Massachusetts and
having a place of business at Two Biotech Park, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
WHEREAS, BAYLOR and GENICA have entered into that certain
License Agreement effective the first day of February, 1993 (hereinafter
referred to as the "License Agreement") under which GENICA has obtained from
BAYLOR and BAYLOR has granted to GENICA a certain exclusive license to the
"Subject Technology" as defined in said License Agreement; and
WHEREAS, BAYLOR and GENICA desire to amend and modify certain
provisions of the License Agreement as provided herein,
NOW, THEREFORE, in consideration of the mutual provisions and
covenants contained herein, BAYLOR and GENICA hereby agree as follows:
1. The terms as defined in the License Agreement shall have the
same meanings in this First Amendment.
2. Section 1.1 in the License Agreement is hereby deleted in the
entirety and replaced by the following: The term "Subject
Technology" shall mean all technology, biological materials,
trade secrets, kits, compounds, know-how, methods, documents,
materials, tests, probes and all confidential information
related to the diagnosis of Charcot-▇▇▇▇▇ Tooth Disease which
was developed by ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇.
▇▇▇▇▇▇ ▇▇ ▇▇▇-▇▇▇▇ and ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ in laboratories at
BAYLOR. The Subject Technology shall also include United
States Patent Application Serial No. 07/711,615 filed June 6,
1991, entitled "Molecular Diagnosis of Charcot-▇▇▇▇▇ Tooth
Disease" and United States continuation-in-part application
#2, Serial No. 08/129,902, together with all valid patents or
patent applications, reexaminations, reissues, renewals,
extensions, divisions thereof (the "Licensed Patents"). The
continuation-in-part application #1 of United States Serial
No. 07/711, 615 is specifically excluded from the term
"Subject Technology."
3. Section 6.1 in the License Agreement is hereby deleted in the
entirety and replaced by the following: BAYLOR shall continue,
at its expense, the efforts commenced prior to the Agreement
Date to obtain a United States patent on
Serial No. 07/711,615 and all valid patents or patent
applications, reexaminations, reissues, renewals, extensions
and divisions thereof. GENICA shall be responsible for all
costs and expenses incurred after April 1, 1994 for CIP #2,
Serial No. 08/129,902 and all valid patents or patent
applications, reexaminations, reissues, renewals, extensions
and divisions thereof. The Parties shall utilize patent
attorneys or agents of BAYLOR's choice for the filing,
prosecution and issuance of the Licensed Patents. GENICA
expressly authorizes and directs BAYLOR to instruct such
counsel to invoice GENICA directly for all of the expenses and
fees related to CIP #2. BAYLOR shall instruct its counsel to
copy GENICA on all correspondence related to the Licensed
Patents. BAYLOR and its faculty members shall cooperate fully
in the preparation, filing and prosecution of all United
States and foreign patent applications filed pursuant to this
paragraph.
4. Except as amended hereby, the License Agreement shall be and
remain in full force and effect. This First Amendment shall be
effective as of the date first written above.
IN WITNESS WHEREOF, BAYLOR and GENICA have executed this
Amendment upon the dates set forth below.
GENICA PHARMACEUTICALS BAYLOR COLLEGE OF MEDICINE
CORPORATION
Name: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ /s/ ▇.▇. ▇▇▇▇▇▇▇▇▇▇
------------------------------ -------------------------------
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇.▇. ▇▇▇▇▇▇▇▇▇▇
Title: President and CEO Title: Vice President for Finance and
Administration
Date: March 29, 1994 Date: April 8, 1994
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