Exhibit 10.13
THE REGISTRANT HAS REQUESTED CONFIDENTIAL TREATMENT FOR CERTAIN PORTIONS OF THIS
AGREEMENT. THOSE PORTIONS HAVE BEEN OMITTED FROM THIS COPY OF THE AGREEMENT AT
THE PLACES INDICATED BY DOUBLE ASTERISKS (**) AND HAVE BEEN FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION.
CENTOCOR
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (215) 296-4488
TELEX: 173-190
FAX: (▇▇▇) ▇▇▇-▇▇▇▇
UNIVERSITY OF TEXAS HEALTH SCIENCE
CENTER AT SAN ANTONIO - CENTOCOR
RESEARCH AND LICENSING AGREEMENT
--------------------------------
This Agreement is made as of the 1st of October, 1986 (hereinafter
"Effective Date") between
Centocor, Inc.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇,
a corporation of Pennsylvania,
(hereinafter "CENTOCOR")
and
University of Texas
Health Science Center at San Antonio
Hematology Division, Department of Medicine
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,**
(hereinafter "UTHSC")
on behalf of the Laboratory of ▇▇▇▇▇▇ ▇▇▇▇▇▇, M.D.
(hereinafter "▇▇. ▇▇▇▇▇▇").
W I T N E S S E T H :
WHEREAS, UTHSC presently possesses certain know-how, as developed in the
laboratory of ▇▇. ▇▇▇▇▇▇, in the field of anti-platelet antibodies, and the use
of such antibodies for in vivo and in vitro medical diagnostic, prophylactic and
------- --------
therapeutic purposes (hereinafter "Field"); and
WHEREAS, UTHSC on behalf of ▇▇. ▇▇▇▇▇▇, is desirous of and prepared to
conduct further research in said Field
_____________
*an agency of the State of Texas which is governed by the Board
of Regents for the University of Texas System, hereinafter collectively referred
to as "UTHSC"
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0399D/Sep 9/25/86 -2
hereinafter "Research") which may lead to the development of commercial
applications; and
WHEREAS, CENTOCOR is prepared to provide financial support to UTHSC for
such Research by ▇▇. ▇▇▇▇▇▇ at UTHSC, providing it receives certain license
and/or option rights under inventions and/or know-how in said Field; and
WHEREAS, UTHSC represents that it has full rights by assignment to
inventions and know-how in the Field and wishes to have such inventions and
know-how perfected and marketed at the earliest possible time in order that
products resulting therefrom might be available for public use and benefit; and
WHEREAS, UTHSC represents and warrants to CENTOCOR that, (i) it has full
right and authority to enter into this Agreement without consent or approval of
any third person, and (ii) it is not subject to any restrictions which would
prevent or impair the grant to CENTOCOR of the licenses granted hereby, the
exercise by CENTOCOR of any options to obtain licenses or the exercise by
CENTOCOR of such licenses, other than those imposed upon UTHSC by its grantee
and/or contractor status under government, philanthropic or non-profit
sponsorship.
NOW, THEREFORE, in consideration of the mutual covenants herein contained
and intending to be legally bound hereby, CENTOCOR and UTHSC agree as follows:
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0399D/Sep 9/25/86 -3
ARTICLE I - PLAN FOR RESEARCH AND BUDGET
----------------------------------------
1.01 For the three years ending September 30, 1989, CENTOCOR agrees, as set
forth below, to pay to UTHSC funds to support the Research relating to the
above-mentioned Field and UTHSC agrees to supply the services of requisite
personnel and to furnish the necessary facilities and to carry out such Research
all according to a Plan for Research and Budget agreed upon by CENTOCOR and
UTHSC as set forth in Article 1.02.
1.02 UTHSC shall annually submit to CENTOCOR a proposed Plan for Research
and Budget for each of three (3) Agreement years following the Effective date of
this Agreement (each Agreement Year being defined to mean the twelve-month
period commencing with the Effective Date or anniversary thereof). The Plan for
Research and the Budget for the first (1st) Agreement Year is set forth in
Appendix A hereto. Proposed Plans for Research and Budgets for the second (2nd)
and third (3rd) Agreement Years will be submitted by UTHSC to CENTOCOR ninety
(90) days prior to the first and second anniversaries of the Effective Date,
respectively. The parties will negotiate in good faith and use their best
efforts to finalize the proposed Plans for Research. CENTOCOR shall notify UTHSC
in writing 30 days prior to the beginning of the subsequent Agreement Year if it
shall accept the Plan for Research submitted by UTHSC. If CENTOCOR and UTHSC
are not
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0399D/Sep 9/25/86 -4
able to agree upon the Research Plan, CENTOCOR shall notify UTHSC thirty (30)
days prior to the beginning of the subsequent Agreement Year that it will not
provide any further support for the Research, and the Agreement shall be
terminated pursuant to Article IX.
1.03 For as long as ▇▇. ▇▇▇▇▇▇ remains at UTHSC pursuant to the provisions
of this Agreement, such Research by UTHSC shall be under the direction of ▇▇.
▇▇▇▇▇▇. In addition, ▇▇. ▇▇▇▇▇▇ will not conduct research in the Field for
other commercial organizations during the term of this Agreement.
1.04 In the event that the services of ▇▇. ▇▇▇▇▇▇, become for any reason
unavailable during the course of this Agreement, UTHSC shall have ninety (90)
days within which to provide a replacement who shall be acceptable to CENTOCOR.
CENTOCOR shall not unreasonably withhold acceptance of such replacement. In the
event that no such replacement is provided, the obligations of CENTOCOR to fund
the Agreement shall cease.
ARTICLE II - REPORTS BY UTHSC
-----------------------------
2.01 UTHSC shall, upon each anniversary of the Effective Date, provide a
written report, prepared by
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▇▇. ▇▇▇▇▇▇, which presents a brief summary of the Research conducted and the
results obtained during the preceding twelve (12) months regarding its work in
the Field. At the conclusion of each Agreement Year, or in the event of
termination of the Agreement, CENTOCOR shall receive a complete detailed report
of the work carried out and funded by this Agreement.
2.02 If rights to any of UTHSC's inventions and/or know-how in the Field
are partially or wholly owned or restricted by governments, government agencies,
or any institutions under government control, UTHSC hereby agrees to comply with
all applicable statutes and regulations pertaining to such government rights.
Such restrictions to the disposition of rights by UTHSC are specified in
Appendix B herein. UTHSC further agrees to promptly notify CENTOCOR of any
reports, communications, or actions undertaken with regard to such government
rights pertaining to this Agreement.
ARTICLE III - PAYMENTS BY CENTOCOR
----------------------------------
3.01 CENTOCOR shall pay to UTHSC [**]
dollars [**] in the first year of this Agreement in support of the
Research to be conducted in such year payable at quarterly intervals.
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3.02 Subject to the provisions of Article 1.02, the second and third
Agreement years shall be funded at levels specified in the approved Research
Plan and Budget for each Agreement year, and payments shall be made quarterly.
ARTICLE IV - ESTABLISHMENT OF UTSA PROPRIETARY POSITION
-------------------------------------------------------
4.01 UTHSC agrees to establish a proprietary position in the Field to the
extent possible by (i) applying, as required by Article 4.03, for patents in the
United States and abroad on inventions conceived and/or reduced to practice
arising from this Research; (ii) maintaining information which is generated as
confidential know-how except to the extent that rights are reserved under
Article 4.09 (ii), (iii) obtaining title to inventions funded by Government or
third party support, whenever possible and (iv) diligently protecting its patent
rights from infringement. The choice of patent counsel shall be agreeable to
both UTHSC and CENTOCOR. Should UTHSC select the firm of Arnold, White, and
▇▇▇▇▇▇; this firm shall be acceptable to CENTOCOR.
4.02 For inventions in the Field which are conceived by UTHSC inventors,
UTHSC inventors shall assign their rights to UTHSC. For inventions in the Field
which are conceived by CENTOCOR inventors, CENTOCOR inventors shall assign their
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0399D/Sep 9/25/86 -7
rights to CENTOCOR. For inventions in the Field which are jointly conceived by
UTHSC and CENTOCOR inventors, UTHSC inventors shall assign their rights to UTHSC
and CENTOCOR inventors shall assign their rights to CENTOCOR.
4.03 UTHSC shall promptly advise CENTOCOR, in writing, of each invention
conceived and/or reduced to practice arising from this Research.
Representatives of UTHSC and CENTOCOR shall then discuss whether a patent
application or applications, pertaining to such invention, should be filed and
in which countries such application or applications should be filed.
Applications assigned solely to UTHSC shall be filed by UTHSC; applications
assigned solely to CENTOCOR shall be filed by CENTOCOR, and jointly assigned
applications shall be filed as mutually agreed upon by the parties.
4.04 The patent costs incurred by UTHSC, including, without limitation, the
costs of preparing, filing, prosecuting (including mutually agreed upon
interferences or oppositions), issuing or maintaining for patent rights claiming
an invention filed by mutual agreement of the parties after the Effective Date
shall be reimbursed by CENTOCOR upon the receipt of UTHSC's notice of payment of
such costs. Such reimbursement shall be fully creditable against future royalty
payments due UTHSC from CENTOCOR, provided that such credit does not exceed
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0399D/Sep 9/25/86 -8
[**] percent [**] of the royalties payable in any one payment period.
4.05 With respect to any patent application filed by mutual agreement of
the parties, 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 shall be provided to CENTOCOR sufficiently
prior to the filing of such application, response or request to allow for review
and comment by CENTOCOR.
4.06 In the event CENTOCOR is not interested in having a patent application
filed with respect to a particular invention in a particular country, CENTOCOR
shall advise UTHSC of such fact within ninety (90) days from the date on which
the invention was disclosed to CENTOCOR by UTHSC or sooner if necessary to avoid
the loss of patent rights. UTHSC, at its own expense, may then file and
prosecute such patent application in any country where CENTOCOR elects not to
file, and such patent applications and patents in any such country shall not be
included within the option for an exclusive license granted to CENTOCOR pursuant
to Article 5.01 of this Agreement.
4.07 In the event that UTHSC does not wish to file a patent application
with respect to a particular invention or
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does not wish to file patent applications with respect to specific countries, it
shall without delay notify CENTOCOR, and CENTOCOR shall be free, where not
contrary to United States law, to file at its expense, patent applications in
the name of UTHSC, if necessary, and UTHSC shall render CENTOCOR, at CENTOCOR's
expense, all necessary assistance in order to facilitate such filing.
4.08 CENTOCOR shall have the right to have all of the Research conducted
and funded hereunder reviewed by patent counsel of its choice subject to the
provisions of Articles 4.01 and 4.03.
4.09 UTHSC recognizes that during the course of this Agreement it may, on
behalf of ▇▇. ▇▇▇▇▇▇, acquire from CENTOCOR trade secrets or information which
is confidential to CENTOCOR. CENTOCOR has a period of thirty (30) days after the
exchange of information to notify ▇▇. ▇▇▇▇▇▇ as to whether said information
given to UTHSC is to be considered confidential. Accordingly, UTHSC agrees as
follows: (i) except in furtherance of the Agreement, UTHSC will not, for a
period of twenty (20) years from the receipt of such information, disclose any
information or knowledge received from CENTOCOR which has been so designated as
being secret and confidential, except to the extent that such information was
previously known to UTHSC as
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shown by its written records or except to the extent that such information is or
becomes available to the public without fault on the part of UTHSC; (ii) UTHSC
and its employees shall have the rights to publish or otherwise publicly
disclose information gained in the course of the Agreement subject to the
provisions of Article 4.09(i) hereof, provided it gives CENTOCOR a draft of the
disclosure (manuscript or abstract) at least sixty (60) days in advance of such
publication.
4.10 UTHSC retains the right to use any of the cell lines, antibodies or
their improvements derived in part or total from this Agreement, free of cost,
for its own research and to distribute the antibodies to other institutions
engaged in non-commercial research, free of cost, under a written agreement that
the use will be restricted to non-commercial research and that materials
provided will not be transferred or communicated to any third person for any
reason.
ARTICLE V - LICENSE TO CENTOCOR
-------------------------------
5.01 In view of CENTOCOR's support for research hereunder, UTHSC grants to
CENTOCOR a non-exclusive, world-wide, royalty-bearing license under any and all
UTHSC patent rights and know-how in the Field, arising out of the Research, to
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0399D/Sep 9/25/86 -11
make, have made, use and/or sell products and to practice methods developed in
this Research. Such license shall be for a period of twenty-five (25) years or
the life of any and all UTHSC rights in the Field, whichever is greater,
including patent rights (rights arising from patent applications and/or issued
patents), rights to use and possess the cell lines developed by UTHSC in the
Field, rights to inventions funded under this Agreement and UTHSC know-how
covering products and/or methods arising out of the Research. The non-exclusive
royalty shall be [**] percent [**] of the NET selling price of products
utilizing any UTHSC rights granted herein, which is defined to mean the sales
price of products actually charged by CENTOCOR, its affiliates, or licensees in
the Field of this Agreement less ten percent to allow for customary trade
discounts, commissions, freight, sales or use taxes and customs duties. UTHSC
hereby further grants to CENTOCOR an option to obtain, whenever desired by
CENTOCOR, an exclusive, world-wide, royalty-bearing license under all UTHSC
rights for such inventions and for such term as above. If such option is
exercised, the royalty shall be X% ("X" percent) of the NET selling price. X
is defined as follows: X equals [**] percent [**] for therapeutic
products, X equals [**] percent [**] for imaging products, and X equals
[**] percent [**] for other diagnostic products. In addition, if such option
is exercised, CENTOCOR shall reimburse UTHSC for all patent
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0399D/Sep 9/25/86 -12
expenses, if any, not covered under Article 4.04 related to such exclusive
option within 90 days of such event. Under the exclusive license option,
CENTOCOR shall also be obligated to pay, to UTHSC, minimum annual royalties for
each Agreement Year in which CENTOCOR does not provide research support in the
Field. CENTOCOR will pay [**] for the first Agreement Year in which there is
no such research support, [**] for the second Agreement Year, and [**]
for each Agreement Year thereafter, subject to the provisions of Section 5.03.
Such payments shall be due within 90 days of the commencement of said Agreement
Year and shall be fully creditable against all earned royalties payable under
Article V herein.
5.02 The license and option described in Article 5.01 is also granted on
the same terms as specified in Article 5.01 with respect to rights to use and
possess cell lines previously developed by ▇▇. ▇▇▇▇▇▇ in the Field and any
concordant patent rights, specifically including cell lines that produce
monoclonal antibodies [**] or any cell lines developed
by ▇▇. ▇▇▇▇▇▇ producing antibodies which are functionally equivalent or related
to said antibodies.
5.03 CENTOCOR reserves the right to convert any exclusive license to non-
exclusive, at the non-exclusive royalty terms specified, by giving ninety (90)
days' notice of said conversion to UTHSC.
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5.04 Prior to granting any additional, non-exclusive license to any third
party in the Field, UTHSC hereby agrees to promptly notify CENTOCOR of such
impending event. CENTOCOR shall then have the right to exercise its option to
obtain an exclusive, worldwide, royalty-bearing license in the Field. If
CENTOCOR fails to respond to UTHSC's notice within sixty (60) days, then UTHSC
may grant additional, non-exclusive licenses to one or more third parties in the
Field.
5.05 If pursuant to Article 5.04, UTHSC shall grant a non-exclusive license
to any third party in the Field which provides for a lower rate of royalties
with respect to the practice of such UTHSC invention, the royalty payable by
CENTOCOR shall be reduced to the rate paid by the third party. In the event
that two or more antibodies, the rights to which have been licensed from
different institutions, are employed by CENTOCOR in a final product, royalties
payable to UTHSC shall be determined as the product of total royalties payable
by the fraction of the number of antibodies employed from the institution to the
total number of antibodies incorporated in the product.
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5.06 CENTOCOR shall not have the right to assign its rights or delegate its
obligations under licenses resulting from this Agreement, without UTHSC prior
approval, except that CENTOCOR may assign this Agreement to an entity with which
it merges or consolidates or to a corporation of which it owns at least 50% of
the equity or a partnership of which CENTOCOR or any of its affiliates is the
general partner.
5.07 In the event that CENTOCOR exercises its option to obtain an exclusive
license pursuant to Article 5.01, CENTOCOR shall be obligated to diligently
consider applications presented to CENTOCOR, in writing, for sub-licenses for
products in the Field. The terms of such sub-licenses shall. be negotiated to
be mutually acceptable to both UTHSC and CENTOCOR. Such acceptance shall not be
unreasonably withheld, and CENTOCOR and UTHSC shall divide any and all proceeds
from said sub-licenses on an equal basis.
5.08 If CENTOCOR makes payment to one or more third parties under patents
and/or know-how which CENTOCOR reasonably believes covers a product or process
licensed hereunder, the payments due under this Agreement shall be reduced by
the amount of payments actually made to said third parties by CENTOCOR;
providing, however, that the payments from CENTOCOR to UTHSC due under this
Agreement shall not be reduced, in any
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event, to less than [**] percent [**] of the royalties that would have
been due in any period except for such payments to said third parties. The
return by any such third parties of any payments to CENTOCOR because of an
invalidated third-party patent shall be paid to UTHSC in an amount necessary to
restore any such reduced royalty payments.
5.09 In the event CENTOCOR or a sublicensee of CENTOCOR incurs expenses in
judicial or administrative proceedings based upon allegations of infringement of
third party patents or know-how as a result of the exercise of rights hereunder,
or in the enforcement or defense of patents or technology licenses hereunder,
all such expenses will be offset against future royalties due from CENTOCOR
under this Agreement provided that such offsets do not exceed [**] percent
[**] of the royalties due in any period.
ARTICLE VI - COMMERCIAL DEVELOPMENT
-----------------------------------
6.01 CENTOCOR shall use its best efforts, including such efforts of any or
all of its affiliates and licensees, commercially to develop, manufacture and
distribute products throughout the world.
6.02 At intervals no longer than every twelve (12)
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months, CENTOCOR shall report in writing to UTHSC on progress made toward
commercialization, manufacturing and distribution of the products and royalties
earned thereon, and if at any time progress is not considered reasonable, UTHSC
may give notice to CENTOCOR that CENTOCOR is in default and according to the
provisions of Article 9.02, CENTOCOR shall formulate a plan and notify UTHSC of
such plan within 30 days of receipt of such notice to cure such default.
Approval of such plan by UTHSC shall be deemed to cure any such default pursuant
to 9.02.
6.03 CENTOCOR agrees to use nomenclature specified by ▇▇. ▇▇▇▇▇▇, unless
otherwise authorized in writing by UTHSC, to identify the hybridomas for the
purposes of publication, promo tion and commercial development of the
hybridomas, but shall not identify either UTHSC, nor ▇▇. ▇▇▇▇▇▇, nor his UTHSC
collaborators as being the source of the antibodies and/or hybridomas; except
that any publication may refer to the published record.
ARTICLE VII - EFFECTIVE AND TERM
--------------------------------
7.01 This Agreement shall become effective on the day and year first above
written, and unless previously terminated in accordance with any provisions
hereof, shall remain in full force and effect for a period of three (3) years
from such
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date, except for the provisions of Article V, which shall be for the term set
forth in Article V.
ARTICLE VIII - CENTOCOR'S RIGHT OF FIRST REFUSAL
------------------------------------------------
8.01 Prior to ▇▇. ▇▇▇▇▇▇ initiating any other commercial program involving
research in the Field, CENTOCOR shall have a right of first refusal to support
said other program on terms to be determined by good faith negotiations between
the parties or upon the same terms and conditions that any third party has
agreed to and to thereby receive the same benefits as UTHSC had agreed to
provide in return for said third party's support. CENTOCOR shall provide written
notice to UTHSC within one (1) month of such notification stating whether
CENTOCOR wishes to exercise this right of first refusal.
ARTICLE IX - TERMINATION
------------------------
9.01 UTHSC, shall have the right to terminate this Agreement by giving at
least thirty (30) days notice thereof in writing to CENTOCOR, and upon the
giving of such notice, this Agreement shall terminate as of such date. In the
event of such termination by UTHSC: (i) CENTOCOR's obligation to fund in whole
or in part the terminated Research shall be limited to so much thereof as shall
have been conducted prior to such
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termination; (ii) Upon CENTOCOR's written request thirty (30) days next
following the date of the termination, UTHSC, shall disclose to CENTOCOR all
research information funded by this Agreement which shall be in its possession
at such date which relates to the terminated Research and, (iii) shall grant to
CENTOCOR the right of first refusal to license each hybridoma, issued patent or
patent application resulting from the Research, subsequent to the date of notice
of termination as set forth in (ii) above.
9.02 Failure by UTHSC or CENTOCOR to comply with any of the respective
obligations and conditions contained in this Agreement shall entitle the other
party to give to the party in default notice requiring it to cure such default.
If such default is not cured or a plan for cure has not been approved, such
approval to not be unreasonably withheld, within ninety (90) days after receipt
of such notice, the notifying party shall be entitled (without prejudice to any
of the other rights conferred on it by this Agreement) to terminate this
Agreement by giving notice to take effect immediately. The right of either
party to terminate this Agreement as hereinabove provided shall not be affected
in any way by its waiver of, or failure to take action with respect to, any
previous default.
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9.03 In the event that one of the parties shall go into liquidation, or a
receiver, custodian or trustee be appointed for the property or estate of that
party, or the party makes an assignment for the benefit of creditors, and
whether any of the aforesaid events be the outcome of the voluntary act of that
party, or otherwise, the other party shall be entitled to terminate this
Agreement forthwith by giving written notice to the first party.
9.04 Termination or expiration of the Agreement, other than under Articles
9.02 and 9.03, shall not affect rights and obligations of either party or the
licenses and option granted under Article V.
9.05 If either party shall be delayed, interrupted in or prevented from the
performance of any obligation hereunder by reason of Force Majeure including an
act of God, fire, flood, war (declared or undeclared), public disaster, strike
or labor differences, governmental enactment, rule or regulation, or any other
cause beyond such party's control, such party shall not be liable to the other
therefor; and the time for performance of such obligation shall be extended for
a period equal to the duration of the contingency which occasioned the delay,
interruption or prevention. The party invoking such Force Majeure rights under
this Article must notify the other
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party by registered letter within a period of fifteen (15) days, from the first
and the last day of the Force Majeure unless the Force Majeure renders such
notification impossible in which case notification will be made as soon as
possible. If the delay resulting from the Force Majeure exceeds six (6) months,
the injured party may terminate this Agreement as per the conditions stipulated
herein.
ARTICLE X - INDEMNIFICATION
---------------------------
10.01 CENTOCOR shall indemnify UTHSC from and against any claims,
demands, or causes of action on account of any injury or death of persons or
damage to property caused by, or arising out of, or resulting from, exercise or
practice of the license granted hereunder; provided, however, that such
obligation to indemnify UTHSC shall not extend to any claim, demand, or cause of
action arising in favor of any person or entity, growing out of, incident to, or
resulting directly or indirectly from negligence (whether sole, joint, or
otherwise), of UTHSC or its officers, agents, representatives, or employees.
ARTICLE XI - ASSIGNMENT
-----------------------
11.01 The rights of CENTOCOR, under this Agreement, may not be assigned
and the duties of CENTOCOR under this
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Agreement may not be delegated without the prior written consent of UTHSC,
except that CENTOCOR may assign this Agreement to an entity with which it merges
or consolidates or which CENTOCOR controls, or to which substantially all of its
assets relating to the Field of the Agreement are sold or otherwise transferred,
or to a partnership of which CENTOCOR or any of its affiliates is the general
partner.
ARTICLE XII - NOTICES
---------------------
12.01 Any notice, report or demand required to be given by either party
under the terms of this Agreement shall be given in writing by letter properly
addressed and containing sufficient postage to the party for whom it is
intended. Those to be sent to UTHSC shall be addressed to UTHSC, at the address
set forth in the beginning of this Agreement, to the attention of the Director
for Research or to such other address as UTHSC shall designate from time to
time. Those to be sent to CENTOCOR shall be addressed to ▇▇. ▇▇▇▇▇▇ ▇. ▇.
▇▇▇▇▇▇▇▇▇▇, President, CENTOCOR, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ or to such other address as CENTOCOR shall designate from
time to time. Each notice so mailed as hereinabove provided shall be deemed to
have been given when mailed.
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ARTICLE XIII - TITLES
---------------------
13.01 It is agreed that marginal headings appearing at the beginning of
the numbered articles hereof have been inserted for convenience only and do not
constitute any part of this Agreement.
ARTICLE XIV - STATUS OF PARTIES
-------------------------------
14.01 UTHSC and CENTOCOR agree that each party to this Agreement is
operating as an independent contractor and not as an agent of the other. This
Agreement shall not constitute a partnership or joint venture, and neither party
may be bound by the other to any contract, arrangement or understanding except
as specifically stated herein.
14.02 No publicity, news release, or other public announcement, written
or oral, whether to the public press, to stockholders, or otherwise relating to
the Agreement, to any amendment hereto or to performance hereunder or the
existence of the arrangement between the parties shall be originated by either
CENTOCOR, UTHSC or their employees without written approval of the other party
to this Agreement except as required by the law. CENTOCOR shall not knowingly
disclose the name of any UTHSC investigator or project relating to this
University of Texas Health Science Center - Centocor, Inc. Agreement
0399D/Sep 9/25/86 -23
Agreement. However, CENTOCOR may use descriptive scientific terminology in
accordance with Article 6.03 in marketing a product.
ARTICLE XV - GOVERNING LAW
--------------------------
15.01 This Agreement shall be governed by and construed in accordance
with the laws of the State of Texas.
ARTICLE XVI - INVALIDITY OR UNENFORCEABILITY
--------------------------------------------
16.01 If and to the extent that any court of competent jurisdiction
holds any provision (or any part thereof) of this Agreement to be invalid or
unenforceable, said invalid provision or part thereof shall be severable here
from and shall in no way affect the validity of the remainder of this Agreement.
ARTICLE XVII - ENTIRE AGREEMENT
-------------------------------
17.01 This Agreement constitutes the entire Agreement between the
parties, and no variation of modification of this Agreement or waiver of any of
its terms or provisions shall be deemed valid unless in writing and signed by
both parties.
University of Texas Health Science Center - Centocor, Inc. Agreement
0399D/Sep 9/25/86 -24
IN WITNESS WHEREOF, and for making this Agreement come into force from the
date first above written, both parties cause this Agreement to be duly signed by
their respective authorized representatives.
ACKNOWLEDGMENT UNIVERSITY OF TEXAS
HEALTH SCIENCE CENTOCOR
WITNESS
/s/E.G. Piebold /s/ ▇. ▇. ▇▇▇▇▇
---------------------------- -------------------------------
President for Administration and
Business Affairs
October 1, 1986
--------------------------------
Date
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
--------------------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇, M.D.
WITNESS CENTOCOR, INC.
/s/ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ /s/ ▇▇▇▇▇▇ ▇.▇. ▇▇▇▇▇▇▇▇▇▇
--------------------------- --------------------------------
▇▇▇▇▇▇ ▇.▇. ▇▇▇▇▇▇▇▇▇▇, Ph. D.
President
University of Texas Health Science Center - Centocor, Inc. Agreement
0399D/Sep 9/25/86 -25
APPENDIX A
Proposed Research Budget
Agreement Year One
------------------
Research Associate [**]
Lab Tech IV [**]
Supplies [**]
Equipment [**]
Total Direct Costs [**]
Indirect Costs at 10% [**]
Total Costs [**]
------------------------
The following letter outlines the proposed Research Plan for the first
Agreement Year.
University of Texas Health Science Center - Centocor, Inc. Agreement
0399D/Sep 9/25/86 -▇▇
▇▇▇▇▇▇▇▇ ▇
There are no institutions other than UTHSC with any rights to inventions to be
licensed to CENTOCOR under this Agreement.
CENTOCOR
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (215) 296-4488
TELEX: 173-190
FAX: (▇▇▇) ▇▇▇-▇▇▇▇
June 23, 1988
▇▇▇▇ ▇. Park, Esquire
Office of the Executive Vice President
for Administration and Business Affairs
University of Texas Health Science Center
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Dear ▇▇▇▇:
As our work with ▇▇. ▇▇▇▇▇▇'▇ antibodies progresses, particularly with S-
12, we would like to hereby exercise the option under Article 5.01 of the
October 1, ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ Health Science Center at San Antonio -
Centocor Research and Licensing Agreement (the "Agreement") to convert our
License thereunder to exclusive. Accordingly, the higher exclusive royalty
rates and other obligations related to the exclusive license as specified in
said Agreement shall become effective as of the date of this letter.
As a clarification of further terms of Article 5.01, given that ▇▇. ▇▇▇▇▇▇
has left your institution and that we are continuing to fund him at the
University of Oklahoma, Centocor would like to propose that the minimum royalty
payments discussed in Article 5.01 commence on October 1, 1989, the third
anniversary of the Agreement. This is in line with the expected three years of
funding originally envisioned under Article I of the Agreement. ▇▇. ▇▇▇▇▇▇'▇
departure was obviously not foreseen when said Article was drafted.
If this above modifications/clarifications to the Agreement are acceptable,
please have both copies of this letter signed by your institution and return one
to me.
Feel free to call all with any questions.
Very truly yours,
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
▇▇▇▇▇ ▇. ▇▇▇▇▇
Director of Corporate Technology Affairs
RESEARCH AND DEVELOPMENT
Agreed to and Accepted By:
/s/ ▇▇▇▇ ▇▇▇▇
------------------------------
University of Texas Medical Science
Center at San Antonio