LICENSE AGREEMENT By and Between Tolarex Ltd. a company duly registered under the laws of Israel (company number 513736264, having its principal place of business at Kiryat Hadassah POB 12000 Jerusalem 91120, Israel (hereinafter, “the Company”) on one...
Exhibit 4.10
By and Between
Tolarex Ltd.
a company duly registered under the laws of Israel (company number 513736264, having its principal place of
business at Kiryat Hadassah POB 12000 ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇
(hereinafter, “the Company”)
on one part; and
Tolaren Ltd.
a company duly registered under the laws of Israel (company number 513078121), having its principal place of
business at Kiryat Hadassah P.O.B 12000 ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇
(hereinafter, “Tolaren”)
on the other part;
PREAMBLE
WHEREAS, subject to and in accordance with the terms of this License Agreement Tolaren agrees to grant to the Company an exclusive worldwide, royalty free right and license to use the Licensed Technology for the research, development manufacturing, sale and all other aspects of commercialization of products.
NOW, THEREFORE, the parties agree as follows:
1. Preamble and Interpretation
1.1 In this License Agreement the terms below shall bear the meanings assigned to them below, unless the context shall indicate a contrary intention:
“Effective Date” - shall mean the date on which the last party signs this Agreement;
“Licensed Technology” - shall mean the Patents and the related Patent Rights; all improvements, updates, modifications and enhancements thereto; and all inventions. know-how and other intellectual property owned or licensed by Tolaren and covered thereby or related thereto.
“Patents” - shall mean the patents and patent applications set out in Exhibit A hereto.
“Patent Rights” - shall mean any and all (a) patents, or any part thereof including any claim, (b) pending patent applications, including, without limitation, all provisional applications, continuations. continuations-in-part, divisions, reissues, renewals, and all patents granted thereon, and (c) all patents-of-addition, reissue patents. reexaminations and extensions or restorations by existing or future extension or restoration mechanisms, including, without limitation. supplementary protection certificates or the equivalent thereof.
“Scope of the License” - shall mean the development. manufacture and commercialization of products.
“Sub-License” - the grant to a third party the right to use the Licensed Technology or parts thereof including the right to grant additional sublicenses;
“The Territory” - shall mean the whole world;
“The License” - the exclusive and irrevocable right and license granted by Tolaren to the Company to practice the Licensed Technology in the Territory as mentioned in Clause 3 of this License Agreement;
2. Declarations of Tolaren
Tolarcn hereby declares, as follows:
2.1 That its owns, on an exclusive basis, the rights in and to the Licensed Technology and that to the best of its knowledge, said Licensed Technology is free and clear of any liens, encumbrances, and other third party rights. Notwithstanding anything stated in this Agreement to the contrary, THE LICENSED TECHNOLOGY AND ANY OTHER INTELLECTUAL PROPERTY OR TECHNOLOGY LICENSED HEREUNDER ARE PROVIIDED ·‘AS IS’’. NOT WITHSTANDING ANYTHING TO THE CONTJV\RY HEREIN, TOLAREN MAKES NO REPRESENATION OR WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY WARRANTY OF ACCURACY. COMLETENESS, PERFORMANCE, COMMERCIAL AND UTILITY, WITH RESPECT TO THE LICENSED TECHNOLOGY.
2.2 That it has not granted nor undertaken to grant, any right or license to any third party to use the Licensed Technology, except as provided for in this License Agreement.
2.3 On the Effective Date of this License Agreement, as defined belov,:, Tolaren is not connected or under any obligation whether by contract or agreement. directly related to the Licensed Technology that arc liable to disturb the interests of the Company concerning the License.
2.4 That it has full right and authority to grant the License granted under this Agreement.
2.5 That it has no knowledge as of the date hereof of any legal suit or proceeding by a third party contesting the ownership or validity of the Licensed Technology, or claiming that the practice of the Licensed Technology in the manner contemplated by this Agreement would infringe the rights of such third party.
3. License
3.1 Tolaren hereby grants the Company the exclusive, irrevocable, royalty free, sublicensable right and license to practice the Licensed Technology in the Territory, including without derogating from the above mentioned, the exclusive right to continue the research. development. commercialization, manufacturing. marketing. sale, distribution, and to otherwise use and exploit the Licensed Technology. in any manner it deems fit within the Scope of the License. For purposes hereof, the term “exclusive” means that Tolaren shall not have any right to grant such licenses or rights, directly or indirectly. to any third party or engage in any of the foregoing. For the removal of doubt and without derogating from the rights of Tolaren according to law or according to this License Agreement, it is hereby clarified that the License granted by Tolaren to the Company, does not include the use of the Patent or Patents and Trade Secrets outside the scope of the License, and the Company is not entitled to make any use of the Licensed Technology for any other development that is not within in the scope of the License.
3.2 A Sub License (as defined below) under the License may be granted by the Company provided that the Sub License includes provisions that are consistent with the terms of this License Agreement.
3.3 Tolaren hereby undertakes to take all further acts reasonably required. at the Company’s expense. to convey the rights contemplated herein to the Company and/or to assist the Company to perfect and protect such rights
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4. Ownership of Inventions
All intellectual property rights including, any invention, product material, method, process, technique, know how, data, information, discoveries, other results, whether oral or written, all patents and/or technology developed by the Company including new patents derived from or relating to the Licensed Technology, will belong solely and exclusively to the Company, and those inventions to the extent they are capable of registration will be assigned and/or registered in the name of the Company.
5. Patents/Patent Infringements
5.1 The Company shall at its expense handle the maintenance and management of the Patent or Patents, including matters concerning the registration of a Patent or Patents in different countries. Tolaren shall reasonably co-operate with the Company and at its sole expense in all matters concerning said management of the Patent or Patents.
5.2 Commencing with the Effective Date, the Company will bear all future expenses connected to the management of the Patent or Patents including the registration of said Patent or Patents.
5.3 The Company shall have the right to take action in respect of any infringement of the Licensed Technology. In the event that the Company is sued by a third party for patent infringement because of its exercise of the License granted herein, the Company shall defend the suit at its own expense, and Tolaren shall fully cooperate, at the Company’s expense, in the conduct of the defense and shall use their best efforts to cause its employees to cooperate with the Company in carrying out its defense. The Company shall have the exclusive right to reach a settlement in any such suit without casting any liability on Tolaren or their employees.
5.4 In the event that any infringement of any one or more of the Patents comes to the attention of either party hereto, such party shall promptly notify the other party thereof.
5.5 ln the event the Company refrains from taking legal actions against third parties infringing the Licensed Technology or any part thereof within ninety (90) days from the date the parties hereunder are aware of such infringement, then Tolaren shall be entitled to (but no obligated to) take necessary actions, however in such event Tolaren shall be reimbursed for its out of pocket expenses and the remaining recovery amount from such proceedings shall vest with the Company.
6. Consideration
6.1 In consideration for the grant of the license hereunder, the Company undertakes to issue to Tolaren 50,050 ordinary shares in its share capital. The Company shall issue said shares within 30 days of the effective date.
6.2 the Company’s cap table, preceding and following said issue of shares to Tolaren is setout in Exhibit B hereto.
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7. Indemnification, Limitation of Liability, Disclaimers
7.1 The Company shall defend. indemnify and hold harmless Tolaren and its directors, officers. employees or agents (the “lndemnitees”) from and against any third party claim ((including charges. complaints. actions, suits, proceedings, hearings, investigations, claims or demands, jointly: “Claim”) for loss, damage, liability and expense (including legal costs) arising out of or resulting from any use of the Licensed Technology by the Company or any of its sub licensees or affiliates, including, without limitation, the development. testing. manufacture. promotion, sale or other disposition or use of any products or Licensed Technology by the Company or its affiliates or sub-licensees, including, without limitation, (a) from and against product liability Claims relating thereto and (b) any Claim by third party that the practice of any of the patent rights related to the Licensed Technology or the design, manufacture, use, sale or other disposition of any products infringes or violates any patent, copyright, trade secret. trademark or other intellectual property rights of such third party. provided however:
(1) that the Company is notified in writing as soon as practicable under the circumstances of any complaint or claim potentially subject to indemnification; and
(2) that the Company shall have the right to assume the defense, control and settlement of any such third party claim at its own cost and expense by a legal counsel reasonably acceptable to Tolaren.
7.2 Nothing in this Agreement shall be deemed or construed as a representation or warranty by Tolaren that any Patents within the Licensed Technology are valid or enforceable.
7.3 TOLAREN WILL NOT BE RESPONSIBLE TO THE COMPANY. ITS AFFILIATES OR SUBLICENSEES, SUCCESSORS OR ASSIGNES, OR ANY THIRD PARTY WITH RESPECT TO ANY CLAIM: ARISING FROM THE COMPANY’S USE OF THE LICENSED TECHNOLOGY, PRODUCTS OR ANY OTHER TECHNOLOGY LICENSED UNDER THIS AGREEMENT: ARISING FROM THE DEVELOPMENT. TESTING. MANUFACTURE, USE, OR SALE OF PRODUCTS: Without derogating from the above, if any of the lndemnitees are found liable (whether under contract, tort (including negligence) or otherwise), then the sole remedy of the Company shall be forfeiture of the Company’s shares issued to Tolaren.
8. Activation of the License, Term and Termination
8.1 The License granted in Sub Clause 3.1 above, shall be activated upon the Effective Date of this License Agreement and, unless terminated as provided for herein, shall continue in effect with respect to each Patent until it expires on a country by country basis and on a product by product basis. Following the expiration of this Agreement as aforesaid, the Company shall have a fully-paid up, nonexclusive, unlimited, worldwide license (with the right to grant sublicenses) under the Licensed Technology; however Tolaren shall be relieved of any and all of their obligations or warranties hereunder.
8.2 The Company may terminate this License Agreement and the License granted hereunder upon thirty (30) days’ prior written notice to Tolaren.
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8.3 Tolaren may terminate this License Agreement in the event that the Company ceases its operations for a period of greater than 360 days
8.4 Upon termination of this License Agreement, any existing agreements that contain a sublicense of the Licensed Technology shall terminate, upon termination of the sublicense agreement with such Sub-licensee, Tolaren shall be obligated, at the request of such Sub-licensee, to enter into a new license agreement with such Sub-licensee on substantially the same terms as those contained in such sublicense agreement, provided that such terms shall be amended, if necessary, to the extent required to ensure that such sublicense agreement does not impose any obligations or liabilities on Tolaren which are not included in this License Agreement.
9. Governing Law and Jurisdiction
This Agreement and the rights of the parties hereunder shall be interpreted in accordance with the laws of the State of Israel. The competent courts of Jerusalem will have exclusive jurisdiction in all matter relating to this Agreement.
10. Assignment
This Agreement may not be assigned by either party without the consent of the other party, which consent shall not be unreasonably withheld: provided however, that each party may, without such consent, assign this Agreement and the rights, obligations and interests of such party, in whole or in part, to any of its affiliates or shareholders, to any purchaser of all or substantially all of its assets or research to which the subject matter of this License Agreement relates, or to any successor corporation resulting from any merger or consolidation of such party with or into such corporation.
11. Miscellaneous
11.1 This Agreement shall become effective on the Effective Date.
11.2 No modifications or variations to this Agreement shall be valid unless it is agreed in writing and duly signed by the authorized representatives of all parties.
11.3 Each party shall bear its own costs and expenses in connection ,vith this Agreement and the performance thereof.
11.4 Notices. Any notice required or permitted under this Agreement shall be in writing and shall be deemed duly given for all purposes (a) on the date of delivery, if delivered personally to the party or by confirmed facsimile transmission, or (b) on the third day after mailing. by registered mail, return receipt requested, postage prepaid and addressed to the addressee at the address stated below, or at the most recent address, specified by written notice, given to the party by the addressee under this provision. Notices to the Company shall be given in the same manner and shall be addressed to it at its principal place of business.
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The Company:
Tolarex Ltd.
Kiryat Hadassah POB 12000, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax: ▇▇▇▇-▇-▇▇▇▇▇▇▇
Tolaren Ltd:
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ 91120
11.5 Failure to Pursue Remedies. The failure of any party to seek redress for violation of or to insist upon the strict performance of. any provision of this Agreement shall not prevent a subsequent act, which would have originally constituted a violation from having the effect of an original violation.
11.6 Binding Effect; Third Party Beneficiaries. This Agreement shall be binding upon and inure to the benefit of all of the parties and, to the extent permitted by this Agreement, their successors, legal representatives and assigns.
11.7 Counterparts. This Agreement may be executed in any number of counterparts with the same effect as if all parties hereto had signed the same document. All counterparts shall be construed together and shall constitute one instrument.
11.8 Entire Agreement. This Agreement constitutes the entire agreement among the parties hereto pertaining to the subject matter hereof and supersedes all prior agreements and understandings pertaining thereto.
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IN WITNESSETH WHEREOF, each of the parties have executed and delivered this Agreement:
Tolarex Ltd. |
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| By: | /s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇ | |
| Name: | ▇▇▇▇ ▇▇▇▇▇▇▇▇ | |
| Title: | Director | |
Tolarex Ltd. |
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| By: | /s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇ | |
| Name: | ▇▇▇▇ ▇▇▇▇▇▇▇▇ | |
| Title: | Director | |
Additional consents:
We hereby consent to entering of the Tolaren in to this agreement and the full and complete performance of its undertakings contained herein. We hereby undertake to take all further acts reasonably required, at the Company’s expense, in order to convey the rights contemplated herein to the Company and/or to assist the Company to perfect and protect such rights.
| By: | ▇▇▇▇ ▇▇▇▇▇▇▇▇ | |
| Signature: | ▇▇▇▇ ▇▇▇▇▇▇▇▇ |
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Exhibit A
Disease therapy using dying or dead cells IL ▇▇▇. No. 11/12 L048 JL2006/000527
Disease therapy using dying or dead cells US Patent Application No. 20050202098
Induction of tolerance by apoptotic and/or necrotic cells US Patent Application No. 20050031618
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Exhibit B
| Total | Yisssum | Tolaren Ltd. | HBL | ||||||||||||||||||||||||||||
| % | Shares | % | Shares | % | Shares | % | Shares | ||||||||||||||||||||||||
| 100 | % | 1,000 | 0 | % | - | 0 | % | - | 100 | % | 1,000 | Pre transfer. | |||||||||||||||||||
| 49,050 | 6,313 | 43,187 | Post license 1 | ||||||||||||||||||||||||||||
| 50,050 | 50,050 | Post license 2 | |||||||||||||||||||||||||||||
| 100 | % | 101,000 | 6.25 | % | 6,313 | 50 | % | 50,050 | 43.75 | % | 44,188 | Post licenses | |||||||||||||||||||
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