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CONFIDENTIAL TREATMENT EXHIBIT 10.2
LICENSE AGREEMENT
THIS AGREEMENT, effective as of June 15, 1993 (EFFECTIVE DATE) between the
Center for Blood Research, Inc. ("CBR") having a place of business at ▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇., ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and Leukon, Inc., a corporation having an
address at c/c HealthCare Investment Corp., ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("LEUKON").
NOW THEREFORE, in consideration of the faithful performance of the
covenants herein contained, the parties hereto agree as follows:
1. DEFINITIONS
1.1 The term "AFFILIATE" as applied to LEUKON shall mean any company or
other legal entity other than LEUKON in whatever country organized, controlling,
controlled by or under common control with LEUKON. The term "control" means at
least a 40% possession, direct or indirect, of the powers to direct or cause the
direction of the management and policies whether through the ownership of voting
securities, by contract or otherwise.
1.2 "IMPROVEMENT INVENTION(S)" shall mean any inventions or discoveries
which names ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ as an inventor or co-inventor for which a
patent application owned by CBR is filed within three years from the date of
this Agreement and which enhance, substitute for or are useful with the
products, procedures or processes described in PATENT RIGHTS and which would
infringe any claim of a pending and/or issued patent or patent application which
is
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then or may become included in the PATENT RIGHTS, except those as to which CBR
is or in the future may be obligated to license to a third party as a result of
the third party funding ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇'▇ research.
1.3 "NET SALES" means the total received by LEUKON from sale, transfer or
use of PRODUCT less transportation charges separately billed and insurance
separately billed, sales taxes, use taxes, excise taxes, value added taxes,
customs duties or other imposts, normal and customary quantity and cash
discounts (to the extent allowed), allowances and credits on account of
rejection or return of PRODUCTS an rebates to the extent allowed, with respect
to disallowed reimbursements. In the event that a PRODUCT includes, a component
which has therapeutic and prophylactic activity ("Active Component(s)") covered
by a VALID CLAIM of a PATENT RIGHT (Patented Component(s)) and Active
Component(s) not covered by a VALID CLAIM of a PATENT RIGHT (Unpatented
Component(s)) (such PRODUCT being a Combined Product), then NET SALES shall be
the amount which is normally received by LEUKON from a sale of the Patented
Component(s) when sold separately in an arm's-length transaction with an
unaffiliated third party. If the Patented Component(s) are not sold separately,
then NET SALES upon which a royalty is paid shall be the NET SALES of the
Combined Product multiplied by a fraction, the numerator of which is the cost
for producing the Patented Components and the denominator of which is the cost
for producing the Combined Product.
If a sale is made other than at arm's-length, then NET SALES shall be
calculated on the basis of what would have been received if the sale was made at
arm's-length.
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No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LEUKON and on
its payroll, or for cost of collections.
PRODUCT shall be considered "sold" when shipped, transferred, billed out
or invoiced, whichever occurs first.
1.4 "OTHER PRODUCT(S)" means a product or process or service other than a
THERAPEUTIC PRODUCT.
1.5 The term "PATENT RIGHT(s)" shall mean the patent applications of
Appendix A and any United States patent application directed to an IMPROVEMENT
INVENTION and the inventions described and claimed therein and including any
division, continuation, or continuation-in-part thereof and any foreign patent
application or equivalent corresponding thereto and any Letters Patent or the
equivalent thereof issuing thereon or reissue or reexamination or extension
thereof.
1.6 The term "PRODUCT" shall mean any article, composition, apparatus,
substance, chemical, material, method, process or service which is covered by
PATENT RIGHTS, and includes both THERAPEUTIC PRODUCT and OTHER PRODUCT.
1.7 The term "SUBLICENSEE" shall mean any non-AFFILIATE third party
licensed by LEUKON to make, have made, use or sell any product or use any
process under PATENT RIGHTS.
1.8 "THERAPEUTIC PRODUCT" means a product or process or service for the
treatment and/or prevention of a disease.
1.9 The term "VALID CLAIM" shall mean a claim of an issued patent which
has not lapsed or become abandoned or been declared invalid or unenforceable by
a court of competent or an administrative
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agency from which no appeal can be or is taken or a claim of a pending patent
application which is maintained in good faith and further provided that the
application, including the pendency of any parent applications which supports
the claim, has not been pending for more than seven years.
1.10 The use herein of the plural shall include the singular, and the use
of the masculine shall include the feminine.
2. LICENSES
2.1(a) CBR hereby grants to LEUKON and LEUKON accepts, subject to the
terms and conditions hereof, a sole and exclusive, worldwide, royalty-bearing
license, in, under and to PATENT RIGHTS, as well as a royalty bearing
non-exclusive license under any IMPROVEMENT INVENTIONS not covered by PATENT
RIGHTS to make, have made, use, sell and have sold PRODUCTS and to use methods
and processes under PRODUCTS. Such license shall include the right to grant
sublicenses thereto. LEUKON may extend such rights and licenses to AFFILIATES
These rights are granted subject to the rights of the U. S. Government under
Public Laws 96-517 and 98-620. All sublicenses shall be subject to CBR's
approval of the entity being sublicensed which approval shall not be
unreasonably withheld. If CBR does not provide a written reasonable objection to
the entity being sublicensed within ten (10) days after notice thereof, such
entity shall be conclusively deemed as having been approved by CBR.
(b) LEUKON agrees to forward to CBR a copy of any and all fully executed
sublicense agreements and any agreements which extend a license hereunder to
AFFILIATES, and further agrees to forward to CBR
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annually a copy of such reports received by LEUKON from its SUBLICENSEES during
the preceding twelve (12) month period under the sublicenses as shall be
pertinent to a royalty accounting or an accounting of progress on PRODUCT to the
CBR under said sublicense agreements.
(c) Any PRODUCTS which are subject to obligations under Public Laws 96-517
or 98-620 and which are intended for sale in the United States shall be
manufactured substantially in the United States.
2.2 The above licenses to sell any PRODUCT for which a royalty paid under
this Agreement include the right of LEUKON, AFFILIATES, and SUBLICENSEES to
grant to the purchaser thereof the right to use and/or resell such purchased
PRODUCT without payment of a further royalty under patents licensed herein.
2.3 (omitted)
2.3(a) Taking into account the complexity, and stage of development of the
PRODUCT and the science related thereto, LEUKON shall select and use reasonable
efforts and diligence under the circumstances to research, develop and then
commercialize a selected PRODUCT. The efforts of a SUBLICENSEE, collaborator
and/or an AFFILIATE shall be considered as efforts of LEUKON. LEUKON shall
provide written reports to CBR as to its activities under this paragraph which
reports shall be given to CBR each January 1 and July 1 during the term of this
agreement.
(b) In the event that CBR reasonably believes that LEUKON is not making
reasonable efforts under the circumstances to research, develop and then
commercialize a PRODUCT selected by LEUKON
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pursuant to Paragraph 2.4(a) then CBR shall provide written notice to LEUKON
which specifies CBR's basis for such belief and what additional efforts CBR
believes should be made by LEUKON. Upon receipt of such written notice, CBR and
LEUKON shall enter into good faith negotiations in order to reach mutual
agreement as to what efforts by LEUKON shall satisfy the requirements of this
Paragraph 2.4, and if such mutual agreement is not reached within ninety (90)
days after receipt of such written notice, then the parties agree to submit to
arbitration pursuant to Paragraph 10.9 to determine the efforts which should be
exerted by LEUKON. Thereafter, LEUKON shall exert the efforts determined by the
parties or in such arbitration.
(c) If LEUKON fails to exert the efforts determined by the parties or in
such arbitration, CBR's sole and exclusive remedy for LEUKON's failure to meet
such efforts is for the licenses granted hereunder to be terminated provided
however, that instead of termination, the sole and exclusive remedy shall be
conversion of the exclusive right and license to a non-exclusive license if as
of such time LEUKON has invested at least $500,000 in the research and/or
development of PRODUCT and continues with the research and development of
PRODUCT. The termination and/or conversion shall take effect sixty (60) days
after written notice by CBR to LEUKON unless such failure is cured prior to the
end of such period.
2.4 CBR acknowledges that LEUKON is in the business of developing,
manufacturing and selling of medical processes and products and nothing in this
Agreement shall be construed as restricting such business or imposing on LEUKON
the duty to market, and/or sell and
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exploit PRODUCT for which royalties are due hereunder to the exclusion of or in
preference to any other product or process.
2.5 LEUKON shall have sole discretion for making all decisions relating to
the commercialization and marketing of PRODUCT.
2.6 If in the calendar year 1998 or any calendar year thereafter LEUKON
and/or its AFFILIATES and/or SUBLICENSEES, and/or collaborators have not
expended at least * for such calendar year with respect to research and/or
development of PRODUCT and the total royalties due and payable under this
Agreement for such calendar year are not equal to at least *, then LEUKON shall
pay CBR the amount by which * exceeds such royalties for the calendar year,
which, if due, shall be payable on the last royalty payment date for such
calendar year.
3. ROYALTIES
3.1(a) LEUKON or its AFFILIATES shall pay CBR as a total royalty for each
PRODUCT one of the following:
(1) * of the NET SALES of all THERAPEUTIC PRODUCTS and * of the NET
SALES of all OTHER PRODUCTS sold by LEUKON or its AFFILIATES,
provided that in the country where the PRODUCT is sold, the PRODUCT
is covered by a VALID CLAIM of a PATENT RIGHT under which LEUKON is
licensed by CBR; or
(2) * of royalties (or the value of consideration provided in lieu of
royalties) received by LEUKON or its AFFILIATES from a SUBLICENSEE
for all
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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PRODUCTS covered by a VALID CLAIM of a PATENT RIGHT licensed to
LEUKON.
(3) In the event that LEUKON's license is non-exclusive and any other
person or entity is also granted a license under PATENT RIGHTS at a
royalty less than that of this Agreement, then LEUKON's royalty
under this Agreement shall be reduced to such lower royalty. CBR
shall promptly notify LEUKON of the granting of any such other
license and the royalties thereunder.
(b) Only one royalty shall be due and payable for a specific PRODUCT and
irrespective of the number of patents included within PATENT RIGHTS which are
applicable to such PRODUCT.
3.2 In the event that royalties are to be paid by LEUKON to a party who is
not an AFFILIATE of LEUKON for any PRODUCT ("Other Royalties") for which
royalties are also due to CBR pursuant to Section 3.1, then the royalties to be
paid to CBR by LEUKON pursuant to Section 3.1 shall be reduced by the amount of
such Other Royalties, but in no event shall the royalties under Section 3.1 be
reduced by more than *.
3.3 LEUKON shall keep, and shall cause each of its AFFILIATES and
SUBLICENSEES to keep, full and accurate books of account containing all
particulars that may be necessary for the purpose of calculating all royalties
payable to CBR. Such books of account shall be kept at their principal place of
business and, with all necessary supporting data shall, during all reasonable
times for the three (3) years next following the end of the calendar year to
which each shall pertain be
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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open for inspection by CBR or their designee upon reasonable notice during
normal business hours at CBR's expense for the sole purpose of verifying royalty
statements or compliance with this Agreement.
3.4 With quarterly payments, LEUKON shall deliver to CBR a full and
accurate accounting to include at least the following information:
(a) Quantity of each PRODUCT subject to royalty sold (by country) by
LEUKON, and its AFFILIATES;
(b) Total Net Sales for each PRODUCT subject to royalty (by country);
(c) Total royalties payable to CBR;
(d) Royalties received from SUBLICENSEES.
3.5 In each year the amount of royalty due shall be calculated quarterly
as of March 31, June 30, September 30 and December 31 and shall be paid
quarterly within the sixty days next following such date, every such payment
shall be supported by the accounting prescribed in Paragraph 3.4 and shall be
made in United States currency. Whenever for the purpose of calculating
royalties conversion from any foreign currency shall be required, such
conversion shall be at the rate of exchange thereafter published in the Wall
Street Journal for the business day closest to the applicable March 31, June 30,
September 30, or December 31, as the case may be.
3.6 If the transfer of or the conversion into United States dollars of any
remittance due hereunder is not lawful or possible in any country, such
remittance shall be made by the deposit thereof in the currency of the country
to the credit and account of CBR or their nominee in any
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commercial bank or trust company located in that country, prompt notice of which
shall be given to CBR.
3.7 Any tax required to be withheld by LEUKON under the laws of any
foreign country for the account of CBR, shall be promptly paid by LEUKON for and
on behalf of CBR to the appropriate governmental authority, and LEUKON shall use
its best efforts to furnish CBR with proof of payment of such tax. Payments to
CBR shall be net of any such payments of taxes.
4. INFRINGEMENT
4.1 With respect to any PATENT RIGHT under which LEUKON is exclusively
licensed pursuant to this Agreement, LEUKON or its SUBLICENSEE shall have the
right to prosecute in its own name and/or in the name of CBR and at LEUKON's own
total cost and expense (except as provided in Section 4.2) any infringement of
such patent, so long as such license is exclusive at the time of the
commencement of action. Before LEUKON or its SUBLICENSEES commences an action
with respect to any infringement of such patents, LEUKON shall give careful
consideration to the views of CBR. CBR shall have the right to assign PATENT
RIGHTS to LEUKON in the event that LEUKON desires to initiate an infringement
action with respect to such PATENT RIGHTS, and after such assignment LEUKON
shall remain obligated to make royalty payments as provided in Article 3. In
addition, with respect to any such infringement action initiated by LEUKON in
which LEUKON designates CBR as a party plaintiff, LEUKON shall indemnify CBR
with respect to any costs or counsel fees awarded against CBR in such action.
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4.2 If LEUKON or its SUBLICENSEE elects to commence an action as described
above, LEUKON may reduce the royalty due to CBR earned under the patent subject
to suit by * the amount of the expenses and costs of such action, including
attorneys' fees, but in no event shall any royalty be reduced by more than *. In
the event that such expenses and costs exceed the amount of royalties withheld
by LEUKON for any calendar year, LEUKON may to that extent reduce the royalties
due to CBR from LEUKON in succeeding calendar years.
4.3 Recoveries or reimbursements from such action shall first be applied
to reimburse LEUKON for litigation costs not paid from royalties (if any), and
then to reimburse CBR for royalties withheld. Any remaining recoveries or
reimbursements shall be divided between the parties as follows.
(a) (i) If the amount is lost profits, LEUKON shall receive an
amount equal to the damages the court determines LEUKON has suffered as a
result of the infringement less the amount of any royalties that would
have been due CBR on sales of PRODUCTS lost by LEUKON as a result of the
infringement had LEUKON made such sales; and
(ii) CBR shall receive an amount equal to the royalties it would
have received if such sales had been made by LEUKON; or
(b) As to awards other than lost profits, seventy-five percent (75%)
to LEUKON and twenty-five percent (25%) to CBR.
4.4 In the event that LEUKON and its SUBLICENSEE, if any, elect not
to exercise their right to prosecute an infringement of the
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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PATENT RIGHTS pursuant to the above paragraphs or do not bring an infringement
lawsuit within six months notice from CBR of infringement, CBR may do so at its
own expense, controlling such action and retaining all recoveries therefrom.
4.5 In the event that litigation against LEUKON is initiated by a
third-party charging LEUKON with infringement of a patent of the third party as
a result of the manufacture, use or sale by LEUKON of PRODUCT, LEUKON shall
promptly notify CBR in writing thereof. LEUKON'S costs as to any such defense
shall be fully creditable against running royalties due and payable to CBR under
Paragraph 3.1(a), but in no event shall any royalty be reduced by more than *.
5. PATENTS
5.1(a) LEUKON shall reimburse CBR for any patent expenses it has incurred
and will incur in the preparation, filing, prosecution and maintenance of PATENT
RIGHTS. The amount of patent expenses to be reimbursed to CBR for patent
expenses incurred as of the EFFECTIVE DATE shall be *, plus the
additional unbilled expenses Incurred for filing a PCT application as authorized
by CBR prior to the EFFECTIVE DATE.
(b) CBR shall promptly advise LEUKON in writing of each IMPROVEMENT
INVENTION disclosed to CBR.
(c) CBR shall use best reasonable efforts to file, prosecute and maintain
patent applications and patents which are PATENT RIGHTS at LEUKON's cost and
expense with patent counsel selected by CBR and reasonably acceptable to LEUKON
and shall consult with and request Its patent counsel to keep LEUKON advised
with respect thereto.
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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(d) In the event LEUKON is not interested in acquiring rights to
IMPROVEMENT INVENTION or in continuing prosecution or maintenance of any patent
or patent application in PATENT RIGHTS, LEUKON shall advise CBR of such fact in
writing at least one month before CBR, at its own expense may then file,
prosecute, maintain or continue such patent(s) or patent applications in any
country where LEUKON elects not to file, prosecute, maintain or continue and
such patent applications and patents shall not be included with the rights
licensed to LEUKON pursuant to paragraph 2.1 of this Agreement and CBR shall be
free to license such patent to any other party.
5.3 With respect to any PATENT RIGHTS CBR shall instruct its patent
attorneys to provide, each patent application, office action, response to office
action, request for terminal disclaimer, and request for reissue or
reexamination of any patent issuing from such application to LEUKON sufficiently
prior to the filing of such application, response or request to allow for review
and comment by LEUKON.
5.4 CBR shall use reasonable best efforts to prevent any PATENT RIGHTS
licensed to LEUKON under this Agreement from lapsing or becoming abandoned
without the prior written consent of LEUKON.
6. WARRANTIES
6.1 CBR and LEUKON warrants and represents to the other that it owns all
right, title and interest in and to PATENT RIGHTS; has the full right and
authority to enter into this Agreement, and that it is not aware of any
impediment which would inhibit its ability to perform the terms and conditions
imposed on it by this Agreement.
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6.2 CBR covenants, warrants and represents that as of this date, to the
best of its knowledge, it owns all right, title and interest in and to PATENT
RIGHTS; it has the right to grant the licenses and rights granted hereunder;
that the granting of such rights and licenses does not require the consent of a
third party; and that there are no outstanding agreements, assignments or
encumbrances inconsistent with the provisions of this Agreement that it is not
aware of any claim which has been made or threatened with respect to CBR owning
all right, title and interest in PATENT RIGHTS.
6.3 CBR BY THIS AGREEMENT MAKES NO REPRESENTATION OR WARRANTIES AS TO THE
PATENTABILITY AND/OR BREADTH OF THE INVENTIONS AND/OR DISCOVERIES INVOLVED IN
PATENT RIGHTS; THE VALIDITY OF THE PATENT RIGHTS; OR THAT SUCH PATENT RIGHTS MAY
BE EXPLOITED BY LEUKON, ITS AFFILIATES OR SUBLICENSEES WITHOUT INFRINGING OTHER
PATENTS.
6.4 CBR EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND
MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY
PARTICULAR PURPOSE OF THE INVENTION, PROCESSES OR PRODUCTS LICENSED UNDER THIS
AGREEMENT.
7. INDEMNIFICATION
7.1(a) LEUKON shall indemnify, defend and hold harmless CBR and its
trustees, officers, medical and professional staff, employees, and agents and
their respective successors, heirs and assigns (the "Indemnitees"), against any
third-party claims, liability, damage, loss, or
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expense (including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed upon the Indemnitees or any one of them in connection
with any third-party claims, suits, actions, demands or judgments (i) arising
out of the design, production, manufacture, sale, use in commerce, lease, or
promotion by LEUKON or by a SUBLICENSEE, AFFILIATE or agent of LEUKON, of any
PRODUCT, process or service relating to, or developed pursuant to, this
Agreement or (ii) arising out of any other activities to be carried out by
LEUKON pursuant to this Agreement;
(b) LEUKON's indemnification under (a) above shall not apply to any
liability, damage, loss or expense to the extent that it is attributable to the
negligent activities or willful misconduct of the Indemnitees;
(c) CBR shall notify LEUKON promptly of any claim or threatened claim
under this Section 7 and shall fully cooperate with all reasonable requests of
LEUKON with respect thereto; and
(d) LEUKON agrees, at its own expense, to provide attorneys reasonably
acceptable to CBR to defend against any actions brought or filed against any
party indemnified hereunder with respect to the subject of indemnity contained
herein, whether or not such actions are rightfully brought and LEUKON shall have
the right to control the defense thereof LEUKON shall have the right to control
the settlement or compromise of any such claim or action to the extent that
LEUKON satisfies such claim or action.
7.2(a) At such time as any PRODUCT is being commercially distributed or
sold (other than for research purposes or for the purpose of obtaining
regulatory approvals) by LEUKON, or by an AFFILIATE,
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SUBLICENSEE or agent of LEUKON (hereinafter "Other Seller"), LEUKON shall itself
or in the alternative shall ensure that Other Seller either (i) at its sole cost
and expense, procure(s) and maintains) comprehensive general liability insurance
in amounts not less than $2,000,000 per incident and $2,000,000 annual aggregate
and naming the Indemnitees as additional insureds or (ii) pay(s) for the
procurement and maintenance by CBR of insurance in the amounts and in the form
set forth in this paragraph. Such comprehensive general liability insurance
shall provide (i) product liability coverage and (ii) broad form contractual
liability coverage for LEUKON's indemnification under Paragraph 7.1 of this
Agreement. LEUKON shall ensure that if LEUKON or the Other Seller elects to
self-insure all or part of the limits described above (including deductibles or
retentions which are in excess of $250,000 annual aggregate) such self-insurance
program must be acceptable to CBR and the Risk Management Foundation. The
minimum amounts of insurance coverage required under this Paragraph 7.2 shall
not be construed to create a limit of LEUKON's liability with respect to its
indemnification under Paragraph 7.1 of this Agreement. At such time, or at any
time LEUKON can request that CBR ascertain whether Risk Management Foundation
has in effect Uniform Indemnification and Insurance Provisions more favorable
than those of this Agreement, in which event LEUKON and CBR shall amend this
Agreement to include such more favorable provisions.
(b) LEUKON shall provide CBR with written evidence of such insurance upon
request of CBR. LEUKON shall provide CBR with written notice of at least thirty
(30) days prior to the cancellation,
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nonrenewal or material change in such insurance; if LEUKON or Other Seller does
not obtain replacement insurance providing comparable coverage within such
thirty (30) day period, LEUKON will agree to suspend sales of all PRODUCTS in
any country for which there is no insurance, or HARVARD shall have the right to
terminate this Agreement effective at the end of such thirty (30) day period by
written notice to LEUKON.
(c) LEUKON shall itself maintain, or shall ensure that Other Seller
maintains or that payments are made for the maintenance by CBR of, as the case
may be, such comprehensive general liability insurance beyond the expiration or
termination of this Agreement during (i) the period that any PRODUCT is being
commercially distributed or sold (other than for research purposes or the
purpose of obtaining regulatory approvals) by Other Seller and (ii) a reasonable
period after the period referred to in (c)(i) above which shall in no event be
less than ten (10) years. The obligations of (c)(ii) above can be satisfied by
the purchase of insurance by LEUKON or a third party which covers claims made
during such period of (c)(ii) above for PRODUCT or PROCESS commercially
distributed or sold by LEUKON or Other Seller during the period referred to in
(c)(i) above.
8. TERMINATION
8.1 Except as otherwise specifically provided herein and unless sooner
terminated pursuant to this Agreement, this Agreement and the licenses and
rights granted thereunder shall remain in full force and effect for the life of
PATENT RIGHTS. Upon the expiration of the last to
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expire PATENT RIGHT, LEUKON shall have a fully paid-up, non-cancellable license.
8.2 LEUKON shall have the right to terminate this Agreement and/or its
license under one or more PATENT RIGHTS in one or more countries upon sixty (60)
days prior written notice.
8.3 Upon material breach of any material provision of this Agreement by a
party to this Agreement, in the event the breach is not cured within sixty (60)
days after written notice to the breaching party by the other party, in addition
to any other remedy it may have, the other party at its sole option may
terminate this Agreement. In the event that LEUKON disputes the termination and
initiates legal proceedings in this respect, this Agreement shall not be
terminated until there is a final decision in such proceedings that this
Agreement has been terminated from which no appeal can be or is taken.
8.4 Upon any termination of this Agreement LEUKON shall have the option to
finish any manufacturing work-in-progress and to sell any completed inventory of
a PRODUCT under the license granted by this Agreement which remains on hand as
of the date of the termination provided that LEUKON pays to CBR the royalties
applicable to said subsequent sales in accordance with the same terms and
conditions as set forth in this Agreement.
8.5 In the event that this Agreement is terminated for any reason
whatsoever, upon the written request of a SUBLICENSEE if such SUBLICENSEE is not
otherwise in default, a sublicense granted under this Agreement shall be
assignable to CBR and CBR and the sublicense shall remain in full force and
effect as a direct license from CBR in
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accordance with the terms and conditions thereof. At the request of LEUKON, CBR
agrees to confirm in writing its obligations under this Paragraph to a
SUBLICENSEE.
8.6 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination.
9. ASSIGNMENT; SUCCESSORS
9.1 This Agreement shall not be assignable by either of the parties
without the prior written consent of the other party (which consent shall not be
unreasonably withheld), except that either party without the consent of the
other may assign this Agreement to an AFFILIATE or to a successor in interest of
all or substantially all of the portion of the business to which this Agreement
relates.
9.2 Subject to the limitations on assignment herein, this Agreement shall
be binding upon and inure to the benefit of said successors in interest and
assigns of LEUKON and CBR. Any such successor or assignee of a party's interest
shall expressly assume in writing the performance of all the terms and
conditions of this Agreement to be performed by said party.
10. PROVISIONS
10.1 The relationship between CBR and LEUKON is that of independent
contractors. CBR and LEUKON are not joint venturers, partners, principal and
agent, master and servant, employer or employee, and have no relationship other
than as independent contracting parties. CBR shall not have the power to bind or
obligate LEUKON in any manner
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Likewise, LEUKON shall have no power to bind or obligate CBR in any manner.
10.2 This Agreement sets forth the entire agreement and understanding
between the parties as to the rights and licenses granted under this Agreement
and supersedes all prior agreements in this respect. There shall be no
amendments or modifications to this Agreement, except by a written document
which is signed by both parties.
10.3 This Agreement shall be construed and enforced in accordance with the
laws of the Commonwealth of Massachusetts without reference to its choice of law
principles.
10.4 The headings in this Agreement have been inserted for the convenience
of reference only and are not intended to limit or expand on the meaning of the
language contained in the particular article or section.
10.5 Any delay in enforcing a party's rights under this Agreement or any
waiver as to a particular default or other matter shall not constitute a waiver
of a party's right to the future enforcement of its rights under this Agreement,
excepting only as to an expressed written and signed waiver as to a particular
matter for a particular period of time.
10.6 LEUKON shall not use the name of CBR nor any adaptation thereof in
any advertising, promotional or sales literature with respect to PRODUCT without
prior written consent obtained from CBR, in each case except that LEUKON may
state that it is licensed by CBR under one or more of the patents and/or
applications comprising the PATENT RIGHTS.
10.8 Notices. Any notices given pursuant to this Agreement shall be in
writing and shall be deemed delivered upon the earlier of (i) when received at
the address set forth below (including telefax or personal
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delivery), or (ii) three (3) business days after mailed by certified or
registered mail in the United States malls, postage prepaid and properly
addressed, with return receipt requested. Notices shall be delivered to the
respective parties as indicated:
To LEUKON: Leukon, Inc.
c/o HealthCare Investment Corp.
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: CEO
To CBR: The Center for Blood Research
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
10.9 Any matter or disagreement under Paragraph 2.3 which this Agreement
specifically specifies is to be resolved by arbitration shall be submitted to a
mutually-selected single arbitrator to so decide any such matter or
disagreement. The arbitrator shall conduct the arbitration in accordance with
the then applicable Rules of the American Arbitration Association, unless the
parties agree otherwise. If the parties are unable to mutually select an
arbitrator, the arbitrator shall be selected In accordance with the procedures
of the American Arbitration Association The decision and award rendered by the
arbitrator shall be final and binding. Judgment upon the award may be entered in
any court having jurisdiction thereof Any arbitration pursuant to this section
shall be held in Boston, MA, or such other place as may be mutually agreed upon
in writing by the parties.
10.10 If any provisions of this Agreement are or become invalid, are ruled
illegal by any court of competent jurisdiction or are deemed unenforceable under
then current applicable law from time to time in
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effect during the term hereof, it is the intention of the parties that the
remainder of this Agreement shall not be affected thereby provided that a
party's rights under this Agreement are not materially affected. It is further
the intention of the parties that in lieu of each such provision which is
invalid, illegal, or unenforceable, there be substituted or added as part of
this Agreement a provision which shall be as similar as possible in economic and
business objectives as intended by the parties to such invalid, illegal or
unenforceable provision. but shall be valid, legal and enforceable. In the event
a party's rights are materially affected as a result of a change in this
Agreement under this Section 10.8 such party may terminate this Agreement.
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IN WITNESS WHEREOF, the parties hereto intending to be bound, have set
their hand and seal.
LEUKON, INC. CENTER FOR BLOOD RESEARCH, INC.
BY [signature appears here] BY [signature appears here]
---------------------------- ----------------------------
▇▇▇▇ ▇. ▇▇▇▇▇, M.D.
TITLE TITLE
------------------------- -------------------------
President
DATE: DATE
------------------------- --------------------------