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EXHIBIT 10.41
AMENDED AND RESTATED SUBLICENSE AGREEMENT
This Amended and Restated Sublicense Agreement ("Agreement") is
effective this 20 day of November, 1996, between United States Biochemical
Corporation, an Ohio corporation having its principal office at ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ("USB") and Ribozyme Pharmaceuticals, Inc., a Delaware
corporation having its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇ ("RPI").
WHEREAS, USB has been granted the exclusive rights to commercialize
certain Licensed Patents (as more fully identified herein) from University
Research Corporation ("URC"), a Colorado corporation and wholly owned
subsidiary of the University of Colorado Foundation (the "Foundation"), under
that certain License Agreement between USB, URC and the Regents of the
University of Colorado ("CU") dated September 1, 1993 (the "Prior License
Agreement"); and
WHEREAS, USB and RPI are parties to that certain Sublicense Agreement
dated September 1, 1993, whereby USB's rights to commercialize such Licensed
Patents were subsequently licensed by USB to RPI; and
WHEREAS, contemporaneously herewith, URC, CU and USB have terminated the
Prior License Agreement, and URC, CU and USB have entered into an Amended and
Restated License Agreement (the "License Agreement") granting USB the exclusive
rights to commercialize the Licensed Patents for such consideration as set
forth therein; and
WHEREAS, contemporaneously herewith, USB and RPI, along with Competitive
Technologies, Inc., a Delaware corporation ("CTI"), have entered into an
Assignment of License and Restated License Agreement (the "Restated License
Agreement"), granting RPI the exclusive rights to commercialize certain patents
relating to ribozymes identified therein in exchange for the issuance of 22,500
shares of the Common Stock, $.01 par value, of RPI ("Common Stock") to USB and
the assumption by RPI of all of USB's rights and obligations under a certain
Second Restated License Agreement dated September 1, 1996 between USB and CTI;
and
WHEREAS, contemporaneously herewith, RPI and USB have entered into a
Stock Subscription Agreement regarding USB's acquisition of Common Stock, which
agreement is part of the consideration to USB hereunder and under the Restated
Sublicense Agreement; and
WHEREAS, USB has agreed to sublicense the Licensed Patents to RPI on the
terms and conditions set forth herein, and, pursuant to Section 13.3 thereof,
USB and RPI desire to and do hereby amend the Prior Sublicense Agreement
effective concurrently herewith.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
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1. Definitions: In addition to the terms defined above, for purposes of
this Agreement, the following capitalized terms shall have the meanings
ascribed to them:
1.1 "Improvement" shall mean any invention the practice of which
would infringe the claims of any Licensed Patent, which invention is made by
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direction and control of CU prior to the date of this Agreement.
1.2 "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-in-part, divisions, patents of addition
and/or reissues thereof filed upon an Improvement, and to which the Foundation
or URC had the right to grant licenses during the term of the Prior License
Agreement.
1.3 "Licensed Method" shall mean any method, process, or procedure
which would infringe any valid claim in a Licensed Patent but for the existence
of this Agreement and which involves the manufacture, use or sale of a Licensed
Product.
1.4 "Licensed Patents" shall mean U.S. Patent Application Serial No.
427,707, filed on October 26, 1989, entitled "Ribozyme Inhibitors" and U.S.
Patent Application Serial No. 496,852, filed on November 21, 1990, entitled
"Site Specific Cleavage of Single-Stranded DNA" and any patents issuing
therefrom (including, without limitation, U.S. Patent No. 5,180,818), and any
corresponding foreign patent applications and patents that may issue thereon
throughout the world, and all extensions, renewals, divisions, continuations,
continuations-in-part, patents of addition, and/or reissues thereof and all
Improvement Patents.
1.5 "Licensed Product" shall mean any product covered by a valid
claim in a Licensed Patent, sold by or for RPI for use as (by way of
illustration and not of limitation) diagnostic products, pharmaceutical
products, agricultural products, veterinary products, cell culture and/or
fermentation products, or otherwise.
1.6 "Licensed Service" shall mean any service which is performed for
remuneration by RPI or a sublicensee for a third party which would infringe any
valid claim of a Licensed Patent but for the existence of this Agreement and
which does not involve the manufacture, use or sale of a Licensed Product.
2. License:
2.1 Grant: USB hereby grants to RPI an exclusive, world-wide, fully
paid license under the Licensed Patents including, without limitation, the
right to manufacture, use and sell the subject matter described and claimed
therein. The license includes the full right to grant sublicenses to third
parties on terms and conditions deemed reasonable in RPI's sole discretion
subject to the provisions of this Agreement. Except as otherwise provided
herein, USB agrees, during the term hereof, not to grant to any third party any
rights inconsistent with the rights granted to RPI under this Agreement and not
to terminate the License Agreement with CU and URC without the express, prior
written approval of RPI.
2.2 Reservation of Rights in Third Parties: RPI acknowledges that
the rights granted in this Agreement are limited to those which USB has a right
to grant under the License Agreement (a copy of which has been delivered to
RPI) and are subject to any obligations assumed by USB under the License
Agreement. Further, RPI acknowledges that the foregoing sublicense is subject
to any and all rights that: (1) CU may have to utilize the Ribozyme Technology
for academic, non-commercial research conducted at CU and (2) third parties
have
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to utilize the Ribozyme Technology to the extent permitted by 35 U.S.C. Section
200 et seq. and 37 CFR Section 401 as required by prior agreement(s) for
funding to CU.
3. Payment: As consideration in full for the license granted by USB to RPI
hereunder, RPI shall issue to USB 22,500 shares of its common stock, $.01 par
value (the "Common Stock"). Such Common Stock shall be fully-paid, non-
assessable and validly issued to USB. USB shall execute a Subscription
Agreement for the shares of Common Stock containing such representations,
warranties and covenants as RPI deems necessary for compliance with applicable
federal and state securities laws. The parties acknowledge that the issuance
of such Common Stock to USB by RPI is also in consideration for the Restated
Sublicense Agreement between USB, RPI and CTI of even date herewith.
4. Patents: The parties agree that, consistent with Section 5 of the
Technology Agreement entered into between USB and RPI on February 7, 1992 (the
"Technology Agreement"), RPI shall continue to assume the rights and
responsibilities of USB to file, prosecute and maintain Licensed Patents under
paragraph 4 of the License Agreement.
5. Patent Enforcement: USB shall promptly notify RPI of any facts which
come to USB's attention indicating that a third party is violating any of the
Licensed Patents. RPI shall take whatever action it deems appropriate to
enforce the Licensed Patents in its sole discretion and at its expense and
shall be entitled to obtain any remuneration recovered as a result thereof
subject to fulfilling any obligations of USB to CU and URC under the License
Agreement. At the request of RPI, USB shall join in as a party to any
enforcement action at RPI's expense provided that any expenses incurred by USB
in connection therewith are approved in advance by RPI and are reasonable in
amount. USB acknowledges that CU and URC may have certain rights to enforce
the Licensed Patents, if RPI does not do so. If both RPI and USB do not
enforce the Licensed Patents against a particular infringer, then URC and/or CU
may do so in its own name and at its own expense. CU and URC may retain the
proceeds of any enforcement action initiated and maintained by them pursuant to
the preceding sentence.
6. Defense of Patent Rights:
6.1 Declaratory Judgment Actions: In the event a third party brings
an action to obtain a declaration of patent invalidity of a Licensed Patent (a
"DJ Action") against RPI or USB, RPI shall have the first right to defend said
action (including the right to intervene, if necessary) at its own cost and
expense and to control the ensuing litigation. If RPI elects not to defend the
DJ Action, USB may elect to defend that action at its own cost and expense.
6.2 Third Party Patents: Each party shall notify the other in the
event a third party alleges, asserts or otherwise claims, formally or
informally, or brings an action alleging, or in the event RPI forms a good
faith belief, that use of all or any portion of the rights granted to RPI
hereunder may violate any patent or other intellectual property right of a
third party. USB shall assist RPI in the evaluation and defense thereof to the
extent reasonably requested by RPI, but shall not have an obligation to defend
RPI. RPI shall have the right to defend the allegation at its own cost and
expense and to control any ensuing legal action.
6.3 Resolution: In an effort to avoid the expenses of defending
against a patent infringement action and to permit RPI to continue to use the
rights granted hereunder, RPI (after consulting with USB) shall be entitled to
settle or compromise the infringement allegation as it
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deems appropriate including, without limitation, entry into a cross-license,
including the sublicensing of rights granted under this Agreement, with the
third party on terms (including the amount of the royalty rate, if any) which
RPI deems to be reasonable in its discretion and, which at the time of the
settlement or compromise, provide comparable mutual benefits to the licensed
parties. Provided that the rights received by RPI under the cross-license are
necessary to practice all or part of the rights granted under this Agreement,
as determined by RPI after conferring with USB, then the reciprocal rights
granted by RPI to the third party under the cross-license shall be free of any
royalty to USB, CU or URC.
7. Term and Termination:
7.1 Term: This Agreement shall remain in effect until the last of
the Licensed Patents has expired or if no such patent issues, ten (10) years
from the effective date of this Agreement.
7.2 Effect of Termination: Unless otherwise agreed by the parties in
writing, the termination of this Agreement for any reason shall not affect the
rights or obligations of either party arising prior thereto (including, without
limitation, the obligation of RPI to indemnify USB, CU and URC under paragraph
11.7 herein) and shall not terminate or otherwise adversely affect any
sublicenses granted by RPI under this Agreement, which sublicenses shall be
assigned to USB upon the termination hereof.
8. Warranties and Representations:
8.1 USB: USB represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by USB and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on USB as a matter of law. USB EXPRESSLY
DISCLAIMS ANY REPRESENTATION OR WARRANTY THAT THE LICENSED PATENTS ARE VALID
PATENTS OR THAT THEY WILL SURVIVE LITIGATION, THAT THE USE OR PRACTICE OF THE
LICENSED PATENTS WILL NOT INFRINGE THE RIGHTS OF ANY THIRD PARTY, THAT ANY
LICENSED PATENTS CAN BE EMPLOYED IN CLINICAL APPLICATIONS OR THAT THE LICENSED
PRODUCTS, LICENSED SERVICES AND LICENSED METHODS WILL BE OF ANY COMMERCIAL
VALUE TO RPI WHATSOEVER, AND NO SUCH REPRESENTATIONS OR WARRANTIES SHOULD BE
IMPLIED. RPI AGREES THAT IT IS OBTAINING THE LICENSES HEREIN GRANTED WITHOUT
ANY REPRESENTATION OF VALUE, MERCHANTABILITY OR FITNESS FOR USE.
8.2 RPI: RPI represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by RPI and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on RPI as a matter of law.
9. Preference for U.S. Industry: In view of Public Law 96-517, Public Law
98-620 and regulations thereunder, RPI agrees that any Licensed Product covered
by Licensed Patents or produced through the use of a Licensed Method for sale
in the United States of America will be manufactured substantially in the
United States of America, unless a waiver of such obligation is
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obtained from the Federal Agency which supported in whole or in part said
invention. RPI shall include the foregoing provision in any sublicense(s) it
grants hereunder.
10. Dispute Resolution:
10.1 Submission to Presidents: In the event of any dispute regarding
the interpretation or enforcement of this Agreement, any party hereto may have
the dispute referred to the Presidents of the respective parties (the
"Presidents") for good-faith resolution. The resolution by the Presidents
shall be final and binding on the parties.
10.2 Arbitration: Any controversy concerning the interpretation or
enforcement of this Agreement shall be settled by final and binding arbitration
in accordance with the then existing rules of the American Arbitration
Association, and judgment upon the award rendered by the arbitrators may be
entered in any court having jurisdiction over the party against whom the award
is entered. Arbitration of disputes referred to the Presidents may not be
initiated unless the Presidents cannot agree to a resolution within thirty (30)
days after submission to them. The arbitration shall be conducted in Boulder,
Colorado. Any such arbitration proceeding shall be heard before a panel of
three arbitrators, one to be designated by USB, another to be designated by
RPI, and a third to be agreed upon by the other two arbitrators; provided,
however, that if the two party-appointed arbitrators are unable to agree on a
third arbitrator within thirty (30) days after the second arbitrator is
appointed, the third arbitrator shall be selected by the American Arbitration
Association. The arbitrators may award any remedy provided under this
Agreement or otherwise available in law or in equity and shall award to the
prevailing party and assess against the others the costs, arbitration fees
(including the fees of the American Arbitration Association and the
arbitrators) and reasonable attorneys' fees incurred by the prevailing party in
connection with the dispute.
10.3 Exclusive Procedures: The dispute resolution procedures
specified in this paragraph 10 are the exclusive procedures for dispute
resolution regarding the interpretation and enforcement of this Agreement.
11. General Provisions:
11.1 Notices: Any payment or notice to be made hereunder shall be
sufficiently made or given, effective on the day of receipt, by: (a) personal
delivery; (b) United States mail, duly certified or registered; or (c) by
delivery by a recognized national courier service, with postage or fee prepaid
and addressed as follows:
To USB: United States Biochemical Corporation
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▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
Attention: President
To RPI: Ribozyme Pharmaceuticals, Inc.
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: President
Either party may, from time-to-time, by written notice to the other in
the manner specified, designate a different address or representative to
receive notice.
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11.2 Integration: The parties acknowledge that this Agreement is
subject to the Technology Agreement, except to the extent that the Technology
Agreement is inconsistent with the terms herein, in which event the provisions
of this Agreement shall be controlling.
11.3 Amendment: This Agreement may not be altered, amended or
modified, except in a writing executed by both parties.
11.4 Non-Waiver: Failure by a party to enforce any provision of this
Agreement or to assert a claim because of a breach hereof shall not be deemed a
waiver of the right to enforce the same or any other provision of this
Agreement for a subsequent breach.
11.5 Construction: This Agreement shall be interpreted and construed
under the substantive laws of the State of Colorado.
11.6 Assignability: Neither this Agreement nor any interest hereunder
shall be assignable by operation of law or otherwise by RPI without the prior
written consent of USB, except to a successor in ownership of all or
substantially all of the business assets of RPI, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning party.
11.7 Indemnification: In addition to the indemnification contained in
the Technology Agreement, RPI specifically agrees to indemnify and hold
harmless the inventors of the Licensed Patents, USB, URC and CU and the
officers, directors, agents and employees of any of them from any and all
claims, damages and liabilities asserted by third parties arising from the
manufacture, use or sale of Licensed Products, Licensed Methods or Licensed
Services by RPI or its sublicensees.
11.8 Force Majeure: Neither party shall be liable in damages or have
the right to terminate this Agreement for any delay or default in performing
hereunder if such delay or default is caused by conditions beyond its control
including, without limitation, acts of God, government restrictions, wars or
insurrections.
11.9 Non-use of Names: Nothing contained herein shall authorize
either party to use the name of the other in advertising or promotional
materials for any product sold to the public without the express prior written
authorization of the party whose name is to be used. Subject to the foregoing,
the parties may advise others of the existence and nature of this Agreement.
The parties shall agree to the content of a joint announcement regarding the
execution of this Agreement.
11.10 Independent Contractors: The parties acknowledge that each of
them is acting as an independent contractor in the exercise of its rights and
the performance of its obligations under this Agreement. Nothing contained
herein shall be construed as making either party the agent of the other or as
creating a partnership or joint venture between them.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first above written.
UNITED STATES BIOCHEMICAL RIBOZYME PHARMACEUTICALS, INC.
CORPORATION
By: /s/ ▇▇▇ ▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇
Title: President Title: President/CEO
Date: November 20, 1996 Date: November 20, 1996
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