CONFIDENTIAL Non-Exclusive License Agreement
CONFIDENTIAL
This
agreement (the “Agreement”)
is by
and between Max-▇▇▇▇▇▇-Innovation GmbH, a German corporation having a principal
place of business at ▇▇▇▇▇▇▇▇▇▇▇. ▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ (“MI”),
and
Rosetta
Genomics Ltd., an
Israeli corporation having a principal place of business at ▇▇
▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, Israel (“COMPANY”).
This
Agreement will become effective on December 22, 2006 (the “Effective Date”).
BACKGROUND
Max-▇▇▇▇▇▇-Gesellschaft
zur Foerderung der Wissenschaften e.V. ("MPG"),
a
German non-profit research organisation, has rights to certain intellectual
property developed by ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇ during his employment with MPG relating
to microRNA sequences (internal file No. GI 2916 ZJE). MPG has filed certain
MPG
Patent Rights (as later defined herein) relating to such microRNA sequences.
MPG
has authorized MI, its technology transfer agency, to act as its sole agent
for
patenting and licensing the MPG Patent Rights, and to sign this Agreement in
MI's own name.
COMPANY
desires to obtain a non-exclusive license under the MPG Patent Rights to
manufacture and sell research products for research purposes to its customers,
and to use such research products in COMPANY's services provided for its
customers. Furthermore, COMPANY intends to grant sublicenses under the MPG
Patent Rights to third parties, as part of COMPANY's licensing package relating
to microRNA technology.
In
consideration of the mutual obligations contained in this Agreement, and
intending to be legally bound, the parties agree as follows:
| 1. |
LICENSE
|
| 1.1 |
Definitions.
|
The
term
“MPG
Patent Rights”
means
all patent rights filed by MPG represented by or issuing from: (a) national
or
regional patent applications claiming priority from and directed to the same
subject matter as the patent applications listed in Exhibit A; (b) any
continuation, divisional and re-issue applications of (a); and (c) any foreign
counterparts and extensions of (a) or (b).
The
term
“Field
Of Use”
means
the sale and use of Licensed Products as research products for research
purposes, including use of such products in the provision of research services
to third parties. Specifically excluded from the Field of Use is any use for
diagnostic or therapeutic purposes, whether said use is in vivo or in vitro,
and
any use in humans, for whatever purpose. Further,
specifically excluded from the Field of Use is any sale and use of Licensed
Products, or performance and sale of Licensed Services, that contain or use
locked nucleic acids (LNAs).
For the
purpose of this definition, the term "use for diagnostic purposes" shall
include, without limitation, (i) clinical research where the medical management
of a human is involved; (ii) products or services that are designated and
regulated by
the
FDA as in vitro diagnostic tests or analyte specific reagents, and (iii) human
samples tracking, testing or quality controlling in a clinical laboratory,
the
results of which are sent to medical institutions or other laboratory labs,
and
are not used as part of research and development of products.
The
term
“Valid
Claim”
shall
mean a claim in an issued patent within the MPG Patent Rights (a) that has
not
lapsed, or (b) that has not been held to be invalid by a final judgment of
a
court of competent jurisdiction from which no appeal can be or is taken, or
(c)
that has not been abandoned.
Portions of this Exhibit were omitted
and
have been filed separately with the Secretary of the Commission pursuant
to the
Company’s application requesting confidential treatment under Rule 406 of the
Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 1 of 13
CONFIDENTIAL
The
term
“Pending
Claim”
shall
mean a claim in a patent application within the MPG Patent Rights that has
not
been pending for more than 8 years after the Effective Date and that has not
been (a) abandoned and not continued; or (b) finally rejected by an appropriate
administrative agency or court of competent jurisdiction from which no appeal
can be or is taken.
The
term
“Licensed
Products”
means
any product (i) that, or the manufacture, use or sale of which, in the absence
of this Agreement, would infringe at least one Valid Claim or Pending Claim
of
the MPG Patent Rights, or (ii) that uses a process or machine covered by a
Valid
Claim or Pending Claim of the MPG Patent Rights.
The
term
“Licensed
Services”
shall
mean any service, the performance or sale of which (i) in the absence of this
Agreement, would infringe at least one Valid Claim or Pending Claim of the
MPG
Patent Rights, or (ii) uses a Licensed Product or a process or machine covered
by a Valid Claim or Pending Claim of MPG Patent Rights.
The
term
“Sale”
means
any bona fide first commercial sale at arms length transaction between COMPANY
(or its Sales Partners or Sublicensees) and an independent third party (end
user
or distributors that are not Sales Partners) for which consideration is received
by COMPANY (or its Sales Partners or Sublicensees) for the sale, use, lease,
transfer or other disposition of a Licensed Product or a Licensed Service,
and
a
Sale is deemed completed at the time that COMPANY (or
its
Sales Partners or Sublicensees) sends
its
invoice for a Licensed Product or Licensed
Service.
The
term
“Net
Sales”
means
the gross amounts invoiced by COMPANY (or its Sales Partners or Sublicensees)
as
consideration for, or fair market value attributable to, each Sale, less
Qualifying Costs directly attributable to a Sale and actually borne by COMPANY
(or its Sales Partners or Sublicensees). For purposes of determining Net Sales,
the term “fair market value” means the cash consideration that COMPANY (or its
Sales Partners or Sublicensees) would realize from an unrelated buyer in an
arms
length sale of an identical item sold in the same quantity and at the time
and
place of the transaction. Specifically, regarding Licensed Services, Net Sales
shall mean any Licensed Products used in Licensed Services, where such Licensed
Products should be valued at fair market value. Net Sales shall not include
transfers or other distributions or dispositions of Products at no charge for
academic research.
For the
avoidance of doubt, in the event of a Sale between COMPANY (or
its
Sales Partners or Sublicensees) and
distributors (that are not Sales Partners), the
amount invoiced by COMPANY (or its Sales Partners or Sublicensees) to such
distributors upon Sale (and not the amount invoiced by such distributors to
an
independent third party upon further resale) shall be regarded as Net Sales
of
such Licensed
Products
or
Licensed Services.
The
term
"Sales
Partners"
means
any third party authorized
by COMPANY (or its Sublicensees) by any kind of agreement to market, promote,
distribute or sell, or otherwise dispose of, Licensed Products
or
Licensed Services, if such Sales
Partner does not purchase Licensed Products or Licensed Services from COMPANY
(or its Sublicensees) in
a Sale
transaction, i.e. if the relation between COMPANY (or
its
Sublicensees) and
the
Sales Partner is not a pure seller-buyer relationship, e.g. if the agreement
between COMPANY (or
its
Sublicensees) and
the
Sales Partner provides for an obligation to share costs or revenues, or a
reporting obligation, or responsibility for sales and/or marketing efforts
in a
country.
The
term
"Sublicensees"
means
any
third
party
that is
granted a sublicense to the MPG Patent Rights by COMPANY in accordance with
Section 1.3 below.
The
term
“Qualifying
Costs”
means:
(a) customary discounts in the trade for quantity purchased, prompt payment
or
wholesalers and distributors to the extent actually allowed and taken (b)
recalls, credits or refunds for claims or returns that do not exceed the
original invoice amount; (c) to the extent separately stated on the document
of
sale, prepaid outbound transportation expenses and transportation insurance
premiums; (d) to the extent separately stated on the document of sale, custom
duties, sales and use taxes and other fees imposed by a governmental agency;
and
(e) amounts that, despite best efforts of COMPANY, are finally and actually
uncollectible.
The
term
”6-months
period”
means
each six-months period beginning on January 1st,
and
July 1st.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 2 of 13
CONFIDENTIAL
| 1.2 |
License
Grant.
|
MI
grants
to COMPANY, and COMPANY hereby accepts, a worldwide non-exclusive license under
the MPG Patent Rights to make, have made, use, import, sell, have sold and
offer
for sale Licensed Products and Licensed Services in the Field of Use during
the
Term (as defined in Section 5.1).
| 1.3 |
Sublicenses
|
COMPANY
shall have the right to grant sublicenses to the rights granted to it under
Section 1.2 to
third
parties only if the intended sublicense also includes a license to substantial
intellectual property rights (e.g. patents that cover other microRNAs) owned
by
COMPANY in the field of "microRNAs".
Each
sublicense granted under this Agreement shall be subject and subordinate to,
and
be consistent with, the terms and conditions of this Agreement.
Within
[***] after the signature of each sublicense granted under this
Agreement, COMPANY
shall provide MI with a copy
of
the signed sublicense agreement.
| 1.4 |
Most
Favored Licensee
|
If,
before or after the Effective Date, MI grants other licenses under the MPG
Patents to third parties in the Field of Use (as applicable, the “Other Research
Licenses” or the "Other Research Licensees") under substantially more favorable
economic terms as a whole than those in this Agreement, then MI will notify
COMPANY of such Other Research Licenses granted. The notice will include all
material terms and conditions of such Other Research Licenses, including
duration, field, territory, audit rights, right to sublicense, right to
administer, prosecute and enforce patents, and all license fees (e.g. initial
payment, maintenance fees, royalty rates, sublicense fees). Whether the economic
terms of the Other Research Licenses are substantially more favorable or not
shall be mutually determined by COMPANY and MI. In the event that COMPANY elects
to take all fees and royalty rates, and all material terms and conditions of
such Other Research License, all fees and royalty rates, and all material terms
and conditions of such Other Research License shall apply as a whole to COMPANY
upon the date COMPANY provides MI with its written notice of such
election.
COMPANY
acknowledges and agrees that MI may provide a copy of this Agreement to any
Other Research Licensee upon request of such Other Research
Licensee.
This
Section 1.4 shall not apply to (i) the settlement of a lawsuit or other dispute
between MI and a third party (including Other Research Licensees) with respect
to past infringements of the MPG Patent Rights, and (ii) any license granted
by
MI to any scientific or other non-profit research organizations.
| 2 |
FEES
AND ROYALTIES
|
| 2.1 |
License
Initiation Fee.
|
COMPANY
shall pay to MI, within [***] after the Effective Date, a license initiation
fee
of [***] Euro (EUR [***]).
| 2.2 |
Annual
Maintenance Fees.
|
COMPANY
shall pay to MI, commencing on January 1st,
2007,
and on each Jannuary 1st
thereafter, an annual maintenance fee of [***] Euro (EUR [***]). COMPANY’s
actual earned royalties payable to MI under Section 2.3 may be credited against
this annual maintenance fee for the same calendar year. In the event of
expiration or termination of this Agreement, COMPANY shall pay to MI the balance
due to MI of the pro-rata
(determined
monthly) share of such annual maintenance fee for the calendar year in which
this Agreement expires or is terminated.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 3 of 13
CONFIDENTIAL
| 2.3 |
Earned
Royalties.
|
COMPANY
shall pay to MI the following royalties on Net Sales of Licensed Products and
Licensed Services:
(a)
in
the event of a Sale by COMPANY (or its Sales Partners) to end users:
[***]%
([***] percent); and
b)
in the
event of a Sale by COMPANY (or its Sales Partners) to distributors (that are
not
Sales
Partners): [***]% ([***] percent).
There
shall be no royalties or imputed revenues from promotional free samples, free
goods, or other marketing programs whereby Licensed Products and/or Licensed
Services are provided free of charge to induce sales.
In
the
event of an overpayment of earned royalties, COMPANY may credit the overpaid
amount with future earned royalties.
| 2.4 |
Sublicense
Revenues; Management Fee
|
If
COMPANY grants a sublicense, the financial terms of Sections 2.1, 2.2 and 2.3
will be reached through to the Sublicensee, which means that:
(i)
COMPANY shall pay to MI, within [***] days after the effective date of the
sublicense agreement, a license initiation fee of [***] Euro (EUR [***]),
and
(ii)
COMPANY shall pay to MI, commencing on the first January 1st
following the effective date of the sublicense agreement, and on each Jannuary
1st
thereafter, an annual maintenance fee of [***] Euro (EUR [***]). Sublicensee’s
actual earned royalties payable by COMPANY to MI under subsection (iii) below
may be credited against this annual maintenance fee for the same calendar year,
and
(iii)
COMPANY shall pay to MI the following royalties on Net Sales of Licensed
Products and Licensed Services:
(a)
in
the event of a Sale by Sublicensee (or its Sales Partners) to end users:
[***]%
([***] percent),; and
(b)
in
the event of a Sale by Sublicensee (or its Sales Partners) to distributors
(that
are
not Sales Partners): [***]% ([***] percent).
If
the
Sublicensee sells Combination Products (as defined in Section 2.6), then Section
2.6 below shall apply accordingly.
COMPANY
may deduct, prior to the remittance of royalties due and payable to MI under
this subsection (iii), a service fee of [***]% ([***] percent) from such
royalties.
| 2.5 |
Stacking
Protection.
|
If
COMPANY is a party to a license agreement with any third party, which license
is
employed in connection with the MPG Patent Rights for the manufacture, use
and/or sale of a Licensed Product, or the performance and/or sale of a Licensed
Service, COMPANY may reduce, on a product-by-product, service-by-service and
country-by-country basis, the royalty rate in Section 2.3 by [***]% for each
[***]% of royalty rate actually paid to such third party; provided, however,
that in no event will the royalty rate otherwise due to MI be reduced by the
application of this Section 2.5 to less than [***]%. If such other license
includes a royalty stacking provision of like intent to this Section 2.5, the
royalty rate reduction provided for in this Section 2.5 will be calculated
on a
pro-rata basis.
| 2.6 |
Payments
Related to Combination Products.
|
In
the
event that a Licensed Product is sold by COMPANY in a combination product form
with one or more other biologically active product components (validated other
microRNAs) which are not Licensed Products (the "Combination
Product"),
then
Net Sales, for purposes of determining royalty payments on the Combination
Product, shall be calculated by multiplying the Net Sales of the Combination
Product by the Royalty Base Factor. The term “Royalty
Base Factor”
means,
in any given Combination Product, [***].
| 2.7 |
Minimum
Royalty Floors
|
MI
and
COMPANY agree that the royalty rate due to MI shall not be reduced -by the
application of Section 2.6 or by the application of Section 2.6 together with
Section 2.5- to less than a minimum royalty rate of [***]% of the Net Sales
of
any Combination Product.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 4 of 13
CONFIDENTIAL
In
the
event that after the Effective Date, COMPANY becomes a party to license
agreements with one or more third parties, which licenses contribute certain
biologically validated microRNAs to the Combination Product, and such third
party license agreements also include minimum royalty floors of [***]% or more
for combination products, and the application of the [***]% minimum royalty
floor owed to MI, together with the minimum royalty floors of [***]% or more
owed to the third party licensors, would exeed an aggregate minimum royalty
floor of [***]%
for a
certain Combination Product,
then
the minimum royalty rate payable to MI for such Combination Product will be
reduced pro rata, together with all third party minimum royalty rates of [***]%
or more, in order to reduce the maximum aggregate minimum royalty rate to [***]%
for that certain Combination Product. No minimum royalty reduction for a certain
Combination Product will apply unless all third party licensors for that certain
Combination Product agree to their respective pro rata minimum royalty
reductions. (Example: a Combination Product contains microRNAs covered by the
MPG Patent Rights, and microRNAs of a third party. The minimum royalty floor
applicable to such third party microRNAs amounts to [***]%, which leads to
an
aggregate minimum royalty floor of [***]%. In order not to exceed the maximum
aggregate minimum royalty rate of [***]%, the respective pro rata reduction
will
be [***]%, which leads to a minimum royalty floor owed to MI of [***]%, and
owed
to such third party of [***]%).
Notwithstanding
the foregoing, in no event shall the minimum royalty rate due to MI under this
Agreement for any Combination Product be reduced to less than [***]% of the
Net
Sales of any such Combination Product.
| 3 |
REPORTS
AND PAYMENTS
|
| 3.1 |
Progress
Report
|
COMPANY
shall use all commercial reasonable efforts, including appropriate
advertisement, to commercialize Licensed Products and Licensed Services, by
itself and by granting sublicenses, at the earliest commercially practicable
date. COMPANY shall provide MI, on each January 1st
following the Effective Date, with a written report showing in sufficient
detail, on a product-by-product, service-by-service and country-by-country
basis, if and to what extent COMPANY and its Sublicensees have been able to
develop and to commercialize Licensed Products and Licensed Services during
the
immediately preceding calendar year. The report shall also contain a discussion
of intended development and commercialisation and sublicensing efforts for
the
calendar year
in which
the report is submitted. Provided however that such any discussion of intended
activities shall be a predicted estimate of the Company only, and shall not
bind
the Company to act according to such report by any means
whatsoever.
| 3.2 |
Royalty
Reports.
|
Commencing
with the first Sale of a Licensed Product or Licensed Service, COMPANY shall,
within sixty (60) days after the end of each 6-months period, deliver to MI
a
report, certified by the chief financial officer of COMPANY, detailing on a
country-by-country, product-by-product and service-by-service basis, and
distinguishing between COMPANY and its Sublicensees, the calculation of all
royalties and fees due to MI for such 6-months period. The report will include,
at a minimum: (a) the number of Licensed Products involved in Sales of Licensed
Products and used in Licensed Services; (b) gross consideration invoiced or
billed in the 6-months period; (c) Qualifying Costs, listed by category of
cost;
(d) the resulting Net Sales; (e) royalties and fees owed to MI; and (f) any
applicable credits resulting from royalty credits.
| 3.3 |
Payments.
|
COMPANY
shall pay all royalties due to MI under Section 2.3 and 2.4 (iii) within sixty
(60) days after the end of the 6-months period in which the royalties or fees
accrue.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 5 of 13
CONFIDENTIAL
| 3.4 |
Records.
|
COMPANY
shall maintain, and shall cause its Sublicensees to maintain, complete and
accurate books and records to verify Sales, Net Sales, and all of the royalties,
fees, and other payments payable under this Agreement. The records for each
6-months period will be maintained for at least [***] after submission of the
applicable report required under Section 3.2.
| 3.5 |
Audit
Rights.
|
Upon
reasonable prior written notice to COMPANY, COMPANY will provide access to
accountants appointed by MI, to all of the books and records required by Section
3.4 to conduct a review or audit of Sales, Net Sales, and all of the royalties,
fees, and other payments payable under this Agreement. Access will be made
available: (a) during normal business hours; (b) in a manner reasonably designed
to facilitate MI’s review or audit without unreasonable disruption to COMPANY’s
business; and (c) no more than once each calendar year during the Term
and
for a
period of [***] years thereafter. COMPANY will promptly pay to MI the
amount of any underpayment determined by the review or audit plus accrued
interest. If the review or audit determines that COMPANY has underpaid any
royalty payment by five percent ([***]%) or more, then COMPANY will also
promptly pay any reasonable costs and expenses of MI appointed accountants
in
connection with the review or audit.
| 3.6 |
Currency.
|
All
amounts referred to in this Agreement are expressed in Euro. All payments will
be made in Euro. If COMPANY receives payment from a third party in a currency
other than Euro for which a royalty or fee is owed under this Agreement, then
(a) the payment will be converted into Euro at the conversion rate for the
foreign currency as published in the eastern edition of the Wall Street Journal
as of the last business day of the 6-months-period in which the payment was
received by COMPANY, and (b) the conversion computation will be documented
by
COMPANY in the applicable report delivered to MI under Section 3.2.
| 3.7 |
Place
of Payment.
|
All
payments by COMPANY are payable to "Max-▇▇▇▇▇▇-Innovation GmbH" and will be
made
to the following address:
[***]
[***]
[***]
[***]
[***]
[***]
[***]
| 3.8 |
Interest.
|
All
amounts that are not paid by COMPANY when due will accrue interest from the
date
due until paid at a rate equal to [***] percent ([***]%) per month (or the
maximum allowed by law, if less).
| 3.9 |
No
Refund.
|
All
payments made by COMPANY under this Agreement are non-refundable and, except
as
set forth in Section 2.2 and 2.3, non-creditable against each other. This
Section 3.9 shall apply, without limitation, in the event this Agreement is
terminated prematurely in accordance with the termination provisions of this
Agreement.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 6 of 13
CONFIDENTIAL
| 3.10 |
Taxes
|
MI
alone
shall be responsible for paying any and all taxes (other than withholding taxes
or deduction of tax at source or value added tax required by applicable law
to
be paid by COMPANY) levied on it by applicable law with respect to any payments
it receives from COMPANY under this Agreement. The Parties shall use all
reasonable and legal effort to reduce tax withholding on payments made to MI
hereunder. Notwithstanding such efforts, if COMPANY concludes that tax
withholdings under the laws of any country are required with respect to payments
to MI, COMPANY shall withhold the required amount and pay it to the appropriate
governmental authority. In such a case COMPANY will promptly provide MI with
the
original receipts or other evidence reasonably desirable and sufficient to
all
MI to document such tax withholding adequately for purposes of claiming foreign
tax credits and similar benefits.
| 4 |
CONFIDENTIALITY
|
| 4.1 |
MI’s
Confidential Information.
|
The
term
“Confidential
Information”
includes the terms and conditions of this Agreement, and all technical
information, inventions, developments, discoveries, software, know-how, methods,
techniques, formulae, data, processes, and other proprietary ideas, whether
or
not patentable, that MI identifies as confidential or proprietary at the time
it
is delivered or communicated to COMPANY under this Agreement.
| 4.2 |
COMPANY’s
Obligation.
|
COMPANY
will maintain in confidence and not disclose to any third party any Confidential
Information. COMPANY will use the Confidential Information only for the purposes
of this Agreement. COMPANY will ensure that COMPANY’s employees have access to
Confidential Information only on a need to know basis and are obligated in
writing to abide by COMPANY’s obligations under this Agreement. The obligations
under this Section 4.2 will not apply to: (a) information that is known to
COMPANY or independently developed by COMPANY prior to the time of disclosure,
in each case, to the extent evidenced by written records promptly disclosed
by
COMPANY to MI upon receipt of the Confidential Information; (b) information
that
is disclosed to COMPANY by a third party that has the right to make such
disclosure; (c) information that becomes patented, published or otherwise part
of the public domain as a result of acts by MI or a third party obtaining such
information as a matter of right; or (d) information that is required to be
disclosed by law, order of relevant governmental authority or a court of
competent jurisdiction, provided that COMPANY must use its best efforts to
obtain confidential treatment of such information by such agency or
court.
| 4.3 |
Disclaimer.
|
MI
is not
obligated to accept any confidential information from COMPANY, except for the
reports required by Sections 3.1 and 3.2, and sublicense agreements provided
to
MI pursuant to Section 1.3. MI will use its best efforts not to disclose to
any
third party outside of MI , the terms of this agreement, the terms of any
sublicense agreement provided to MI pursuant to section 1.3, and any
Confidential Information of COMPANY contained in those reports, subject to
exceptions analogous to those contained in Section 4.2 (a) - (d) above. MI
bears
no institutional responsibility for maintaining the confidentiality of any
other
information of COMPANY. COMPANY may elect to enter into confidentiality
agreements with individual scientists at MPG that comply with MI’s internal
policies.
| 5 |
TERM
AND TERMINATION
|
| 5.1 |
Term.
|
This
Agreement will commence on the Effective Date. It will terminate upon the later
of (i) expiration or abandonment of the last patent to expire or become
abandoned of the MPG Patent Rights; or (ii) if no patent ever issues from the
MPG Patent Rights, ten (10) years after the first commercial sale of the first
Licensed Product, unless earlier terminated according to the provisions of
this
Agreement (as the case may be, the “Term”).
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 7 of 13
CONFIDENTIAL
| 5.2 |
Early
Termination by COMPANY.
|
COMPANY
may terminate this Agreement at any time upon sixty (60) days prior written
notice to MI after paying all amounts owed to MI under this Agreement through
the date of termination.
| 5.3 |
Early
Termination by MI.
|
MI
may
terminate this Agreement immediately upon written notice to COMPANY if (a)
COMPANY fails to pay to MI any amounts owed under this Agreement, and fails
to
make such payments within [***] after receiving written notice of such failure;
or (b) COMPANY materially breaches this Agreement and does not cure the breach
within [***] after written notice of the breach.
| 5.4 |
Effect
of Termination.
|
Upon
the
termination of this Agreement for any reason (a) the licenses granted to COMPANY
terminate; (b) COMPANY will pay to MI all amounts owed to MI through the date
of
termination under this Agreement; (c) COMPANY will, at MI’s request, return to
MI all Confidential Information and provide to MI copies of all non-confidential
data generated by COMPANY during the Term that will facilitate the further
development of the technology licensed under this Agreement; and (d) in the
case
of termination under Section 5.3, all duties of MI and all rights (but not
duties) of COMPANY under this Agreement immediately terminate without further
action required by either MI or COMPANY.
| 5.5 |
Survival.
|
COMPANY’s
obligation to pay all amounts owed to MI under this Agreement will survive
the
termination of this Agreement for any reason. Articles 4, 5, 8, 9 and Section
11.10 will survive the termination of this Agreement for any reason in
accordance with their respective terms. Articles 3 and 6 will survive the
termination of this Agreement for any reason for a period of 6
months.
| 6 |
PATENT
MAINTENANCE
|
| 6.1 |
Patent
Maintenance.
|
MI
shall,
in its sole discretion and at its own cost and expense, control the filing,
prosecution, maintenance and abandonment of any and all patents and patent
applications within the MPG Patent Rights. MI shall use reasonable efforts
to
apply for and seek issuance of patents in the following countries: United States
of America, Canada, Germany, United Kingdom, France, Switzerland, Australia,
and
Japan. Upon COMPANY’s request, COMPANY will be copied on, and allowed to comment
upon, all substantive issues in the course of the patent prosecution.
| 7 |
PATENT
INFRINGEMENT
|
| 7.1 |
Prosecution.
|
If
during
the term of this Agreement COMPANY learns of facts which may constitute a third
party infringement of the MPG Patent Rights, COMPANY shall promptly notify
MI in
writing. In such event, MI may elect, in its sole discretion, but is not
obligated, to pursue the third party infringer at its sole cost and
expense.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 8 of 13
CONFIDENTIAL
| 8 |
DISCLAIMER
OF WARRANTIES; LIMITATION OF LIABILITIES;
|
| 8.1 |
Warranty
of the Parties
|
MI
and
COMPANY each represent that as of the Effective Date, they have the legal right
and authority to enter into this Agreement, and to perform all obligations
hereunder. MI further represents that, to the best of its knowledge as of the
Effective Date, (i) MI is the exclusive licensor of the entire right, title
and
interest in and to the MPG Patent Rights, and (ii) MI has the full right to
grant to COMPANY rights under the MPG Patent Rights as set forth in this
Agreement.
| 8.2 |
No
Further MI Warranties.
|
Except
as
set forth in Section 8.1, MI AND MPG MAKE NO REPRESENTATIONS OR WARRANTIES
OF
ANY KIND CONCERNING THE MPG PATENT RIGHTS, EXPRESS OR IMPLIED, AND THE ABSENCE
OF ANY LEGAL OR ACTUAL DEFECTS, WHETHER OR NOT DISCOVERABLE. Specifically,
and
not to limit the foregoing, MI and MPG make no warranty or representation (i)
regarding the merchantability or fitness for a particular purpose of the MPG
Patent Rights, the Licensed Services and Licensed Products, (ii) regarding
the
patentability, validity or scope of the MPG Patent Rights, (iii) that the use
and commercialization of the MPG Patent Rights, the Licensed Services and
Licensed Products will not infringe any patents or other intellectual property
rights of a third party, and (iv) that the use and commercialization of the
MPG
Patent Rights, the Licensed Services and Licensed Products will not cause any
damages of any kind to COMPANY or to any third party.
| 8.3 |
Limitation
of Liability.
|
EXCEPT
WITH RESPECT TO A BREACH OF ARTICLE 4, IN NO EVENT SHALL EITHER PARTY BE LIABLE
HEREUNDER TO THE OTHER PARTY, OR ANY OTHER PERSON OR ENTITY
FOR
SPECIAL, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR OTHER INDIRECT DAMAGES
(INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS OR LOSS OF USE DAMAGES) ARISING
FROM THIS AGREEMENT, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY
OF
SUCH DAMAGES OR LOSSES.
|
9
|
INDEMNIFICATION
|
| 9.1 |
By
COMPANY.
|
COMPANY
shall indemnify, defend, and hold harmless MI, MPG and their trustees, officers,
faculty, students, employees, and agents and their respective successors, heirs
and assigns (collectively the “Indemnitees”), against any and all claims, suits,
actions (including, without limitation, actions in the form of tort, warranty,
or strict liability and regardless of whether such actions has any factual
basis), demands, judgments, liabilities losses, damages, costs, fees or expenses
(collectively, the “Claims”) incurred by or imposed upon any of the Indemnitees
by a third party resulting from or arising out of (i) any use of MPG Patent
Rights by COMPANY or (ii) any development, manufacture, performance, use or
sale
of Licensed Products or COMPANY Licenses Services by COMPANY, or (iii) any
third
party use of any such Licensed Products or Licensed Services.
| 9.2 |
Non-use
of Names.
|
Unless
required to do so by law, order of relevant governmental authority or a court
of
competent jurisdiction, COMPANY is not allowed to use the name “▇▇▇ ▇▇▇▇▇▇
Institute”, “▇▇▇ ▇▇▇▇▇▇ Society”, “Max-▇▇▇▇▇▇-Innovation” or any variation,
adaptation, or abbreviation thereof, or of any of its trustees, officers,
faculty, students, employees, or agents in any promotional material or other
public announcement or disclosure without the prior written consent of MI or,
in
the case of an individual, the consent of that individual.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 9 of 13
CONFIDENTIAL
| 9.3 |
Procedure.
|
All
indemnification obligations under this Article 9 shall be subject to the
following requirements: (a) the indemnified party shall provide the indemnifying
party with prompt written notice of any claim; (b) the indemnified party shall
permit the indemnifying party to assume and control the defense of any
action
provided, however,
that the
indemnified party shall have the right to retain its own counsel, at the expense
of the indemnifying party, if representation of such indemnified party by the
counsel retained by the indemnifying party would be inappropriate because of
an
actual conflict of interest between the indemnified party and such
counsel;
and (c)
the indemnified party shall not make any admissions, or enter into any
settlement or compromise of any claim without the indemnifying party’s prior
written consent. In addition, the indemnified party may, at its own expense,
participate in its defense of any claim.
| 9.4 |
Other
Provisions.
|
COMPANY
will not settle or compromise any Claims that imposes any restrictions on MI,
or
grants any rights to the MPG Patent Rights or the Licensed Products, without
MI’s prior written consent. The indemnification rights of the indemnified party
under this Article 9 are in addition to all other rights that an indemnified
party may have at law, in equity or otherwise.
| 10 |
INSURANCE
|
| 10.1 |
Coverages.
|
COMPANY
will procure and maintain insurance policies for the following coverages with
respect to personal injury, bodily injury and property damage arising out of
COMPANY’s performance during the Term under this Agreement: Comprehensive
general liability, including broad form and contractual and product liability,
in a minimum amount of EUR [***] per incident. MI may review periodically the
adequacy of the minimum amounts of insurance for each coverage required by
this
Section 10.1, and MI reserves the right to require COMPANY to adjust the limits
accordingly. The required minimum amounts of insurance do not constitute a
limitation on COMPANY’s liability or indemnification obligations to MI under
this Agreement.
| 11 |
ADDITIONAL
PROVISIONS
|
| 11.1 |
Independent
Contractors.
|
The
parties are independent contractors. Nothing contained in this Agreement is
intended to create an agency, partnership or joint venture between the parties.
At no time will either party make commitments or incur any charges or expenses
for or on behalf of the other party.
| 11.2 |
Compliance
with Laws.
|
COMPANY
must comply with all prevailing laws, rules and regulations that apply to its
activities or obligations under this Agreement.
| 11.3 |
Modification,
Waiver and Remedies.
|
This
Agreement may only be modified by a written amendment that is executed by an
authorized representative of each party. Any waiver must be express and in
writing. No waiver by either party of a breach by the other party will
constitute a waiver of any different or succeeding breach. Unless otherwise
specified, all remedies are cumulative.
| 11.4 |
Assignment.
|
Neither
party may assign this Agreement in whole or in part to a third party without
the
prior written consent of the other party, except that each party may assign
the
Agreement to a successor in connection with the merger, consolidation, or sale
of all or substantially all of its assets or that part of its business interest
to which this Agreement applies, provided that such assignee assumes in writing
all of the obligations governing the assignor herein.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 10 of 13
CONFIDENTIAL
| 11.5 |
Notices.
|
Any
notice or other required communication (each, a "Notice")
must
be in writing, addressed to the party’s respective Notice Address listed on the
signature page, and delivered: (a) personally; (b) by certified mail, postage
prepaid, return receipt requested; (c) by recognized overnight courier service,
charges prepaid; or (d) by facsimile. A Notice will be deemed received: if
delivered personally, on the date of delivery; if mailed, five (5) days after
deposit in the United States mail; if sent via courier, one (1) business day
after deposit with the courier service; or if sent via facsimile, upon receipt
of confirmation of transmission.
| 11.6 |
Severability
and Reformation.
|
If
any
provision of this Agreement is held to be invalid or unenforceable by a court
of
competent jurisdiction, then the remaining provisions of this Agreement will
remain in full force and effect. Such invalid or unenforceable provision will
be
automatically revised to be a valid or enforceable provision that comes as
close
as permitted by law to the parties' original intent.
| 11.7 |
Headings
and Counterparts.
|
The
headings of the articles and sections included in this Agreement are inserted
for convenience only and are not intended to affect the meaning or
interpretation of this Agreement. This Agreement may be executed in several
counterparts, all of which taken together will constitute the same
instrument.
| 11.8 |
Governing
Law.
|
This
Agreement will be governed in accordance with the laws of Germany and the
proceedings shall be conducted in English.
| 11.9 |
Dispute
Resolution.
|
If
a
dispute arises between the parties concerning any right or duty under this
Agreement, then the parties will confer, as soon as practicable, in an attempt
to resolve the dispute by good faith negotiations within [***] after one party
has informed the other party in writing of such dispute. If the parties are
unable to resolve the dispute amicably, then the parties will submit to the
exclusive jurisdiction of, and venue in, Germany, with respect to all disputes
arising under this Agreement.
| 11.10 |
Integration.
|
This
Agreement, together with all attached Exhibits, contain the entire agreement
between the parties with respect to the MPG Patent Rights and the license
granted, and supersede all other oral or written representations, statements,
or
agreements with respect to such subject matter.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 11 of 13
CONFIDENTIAL
In
witness whereof, each party has caused this Agreement to be executed by its
duly
authorized representative.
|
Max-▇▇▇▇▇▇-Innovation
GmbH
|
|||
|
By:
|
_______________________
|
By:
|
_______________________
|
|
Name:
|
▇▇.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇
|
Name:
|
▇▇▇▇
▇▇▇▇▇▇
|
|
Title:
|
Managing
Director
|
Title:
|
Chief
Executive Officer
|
|
Date:
|
_______________________
|
Date:
|
_______________________
|
|
Notice
Address:
|
Notice
Address:
|
||
|
Max-▇▇▇▇▇▇-Innovation
GmbH
▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇
▇▇▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇
Phone:
+ 49 / 89 / ▇▇ ▇▇ ▇▇-▇
Fax:
+
49 / 89 / ▇▇ ▇▇ ▇▇-▇▇
E-mail:
▇▇▇▇@▇▇▇-▇▇▇▇▇▇-▇▇▇▇▇▇▇▇▇▇.▇▇
|
▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Israel
Phone:
Fax:
▇▇▇▇▇▇▇▇▇▇▇▇
E-mail:
|
||
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 12 of 13
CONFIDENTIAL
EXHIBIT
A
(MPG
Patent Rights)
MPG
Patent Rights shall comprise of the following patents and patent applications
filed by MPG entitled "Small expressed RNA molecules (MicroRNA
molecules)":
| · |
[***],
|
| · |
[***],
|
| · |
[***]
|
| · |
[***].
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
Rosetta
Research
License GI2916ZJE
Dec.
19,
2006; page 13 of 13