EXHIBIT 10.13
License Agreement Between
▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Institute for Cancer Research
and
Progenics Pharmaceuticals, Inc.
THIS LICENSE AGREEMENT, effective November 17, 1994, is
entered into by Progenics Pharmaceuticals, Inc. a corporation of
the State of Delaware, having its principal place of business at
▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (herein
called LICENSEE), and ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Institute for Cancer
Research, a not-for-profit membership corporation of the State of
New York, having its principal place of business at ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (herein called LICENSOR).
I. BACKGROUND OF AGREEMENT
1.00 LICENSOR represents that it has certain technology,
patent applications and technical information pertaining to cancer
vaccines with respect to which it is prepared to grant an
exclusive license to LICENSEE.
1.01 LICENSEE wishes to acquire an exclusive license under
selected patents and technical information of LICENSOR for
purposes of developing and commercializing vaccines for the
treatment and prevention of human neoplastic disease worldwide.
1.02 LICENSOR acknowledges that commercialization of LICENSED
PRODUCTS may require LICENSEE to obtain additional licenses and
technologies from others.
II. DEFINITIONS
As used herein, the following terms shall have the meanings
set forth below:
2.00 DEFINITIONS EXHIBIT means the Exhibit A attached to this
LICENSE AGREEMENT which contains additional defined terms.
2.01 EFFECTIVE DATE means November 17, 1994 which is the date
upon which this LICENSE AGREEMENT becomes effective.
2.02 LICENSED PATENT(s) shall mean
a) the following patent applications and patents relating
to ganglioside vaccines, intermediates or methods of
producing them, or methods of, or compositions using, them
which are owned by LICENSOR
[***]
(i) U.S. Patent Application No. 08/009,268 (Filed
January 22, 1993) all patents issuing therefrom and all
divisions, continuations, reissues, substitutes, and
extensions thereof and the foreign equivalents thereof;
[***]
(ii) all patents and patent applications, whether filed
before or after the EFFECTIVE DATE of this Agreement, which
claim priority under 35 U.S.C. Sec. 119 or the benefit of the
filing date under 35 U.S.C. Sec. 120 of the patent applications
and patents of subparagraph (i), but only to the extent of subject
matter in such applications and patents for which priority or
benefit is claimed.
[***]
b) any developments related to or arising out of the subject matter
described in a) above which are dominated by the patent applications or
patents described in a) above or [***]
2.03 LICENSED TERRITORY means worldwide.
2.04 LICENSED FIELD means, and is limited to, the practice of
the LICENSED PATENTS and TECHNICAL INFORMATION for
a) the treatment or prevention of neoplastic human
disease with any of the following:
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*** Confidential Treatment Requested
[***]
[***]
b) the treatment or prevention of human cancer using other
ganglioside vaccines [***]
2.05 LICENSED PRODUCT(S) means any and all products which fall
within the LICENSED FIELD and which would infringe the claims of
LICENSED PATENT(S) but for this LICENSE AGREEMENT or are produced
or used using a process or method that would infringe but for this
LICENSE AGREEMENT a claim of a LICENSED PATENT or were developed
using TECHNICAL INFORMATION.
2.06 LICENSED TECHNOLOGY means the LICENSED PATENT(S) and the
TECHNICAL INFORMATION.
2.07 LICENSE AGREEMENT means the license agreement, defined by
the document in which this paragraph appears. This LICENSE
AGREEMENT is between ▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Institute for Cancer
Research, as LICENSOR, and Progenics Pharmaceuticals, Inc., as
LICENSEE. Also included in this LICENSE AGREEMENT are all
Exhibits attached hereto and all amendments which may be made
thereto.
2.08 TECHNICAL INFORMATION means unpublished research and
development information, unpatented inventions, know-how, trade
secrets, and technical data in the possession of LICENSOR at the
effective date of this LICENSE AGREEMENT which are needed to
produce or gain government approvals to market LICENSED PRODUCT(S)
and which LICENSOR has the right to and will provide to LICENSEE
upon request. However, TECHNICAL INFORMATION does not include
patient names. Information and materials shall no longer be
considered to be TECHNICAL INFORMATION if such information or
materials cease to be CONFIDENTIAL INFORMATION.
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[***] Confidential Treatment Requested
III. LICENSE GRANT
3.00 LICENSOR hereby grants to LICENSEE to the extent of the
LICENSED FIELD and LICENSED TERRITORY, a license under LICENSED
PATENTS and TECHNICAL INFORMATION to make, have made, use, sell,
have sold and develop LICENSED PRODUCTS. No license under
LICENSED PATENTS and TECHNICAL INFORMATION is granted, and no
license should be implied, with respect to activities of LICENSEE
outside the LICENSED FIELD.
3.01 The license granted to LICENSED PATENTS pursuant to
paragraph 3.00 hereof shall be exclusive, with the right to grant
sublicenses, subject to the provisions in Article VI of this
LICENSE AGREEMENT. The license granted to TECHNICAL INFORMATION
pursuant to paragraph 3.00 shall be exclusive for the LICENSED
FIELD with the right to grant sublicenses, subject to the
provisions in Article VI of this LICENSE AGREEMENT.
3.02 The license granted in Article III shall be granted to
AFFILIATES of LICENSEE upon receipt of written notification to
LICENSOR. On the EFFECTIVE DATE, the license is granted to
LICENSEE's AFFILIATE Active Biotherapies, Inc., ▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇.
3.03 Without limiting the foregoing license grants, LICENSOR
agrees that this grant will extend to and authorize the
manufacture, sale, lease or other transfer of LICENSED PRODUCTS,
LICENSED PATENTS and TECHNICAL INFORMATION through an AFFILIATE or
a DISTRIBUTOR and shall authorize END USERS' use of LICENSED
PRODUCTS, LICENSED PATENTS AND TECHNICAL INFORMATION transferred
by LICENSOR to LICENSEE's AFFILIATE or DISTRIBUTORS.
3.04 All rights granted in this LICENSE AGREEMENT are
expressly granted subject to the rights of the GOVERNMENT pursuant
to 35 U.S.C. Sections 200 ET SEQ., as amended, and the
implementing regulations, and such rights are specifically
reserved by this LICENSE AGREEMENT to the GOVERNMENT. If LICENSOR
is required to grant licenses pursuant to the statutory and
regulatory requirements referred to in this paragraph, or if the
license granted to LICENSEE under this LICENSE AGREEMENT is
otherwise modified or limited by the GOVERNMENT pursuant to such
requirements, LICENSOR and LICENSEE shall negotiate in good faith
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a reduction of the license fees and royalties payable hereunder
and such other amendments of this LICENSE AGREEMENT as may be
appropriate under the circumstances.
3.05 Notwithstanding the exclusive field license granted
herein, LICENSOR specifically reserves the rights to manufacture,
or use the LICENSED PATENTS, LICENSED PRODUCTS and TECHNICAL
INFORMATION for its own internal purposes, including continuing
research, development, testing, clinical use and all other
internal uses. LICENSOR may have the LICENSED PRODUCTS
manufactured by third parties solely for LICENSOR's internal use
provided any such third party agrees in writing (a) not to use the
TECHNICAL INFORMATION except for such purpose and (b) not to
disclose the TECHNICAL INFORMATION to others. LICENSOR also
reserves the right to permit other entities or individuals to use
the LICENSED PATENTS, LICENSED PRODUCTS, and TECHNICAL INFORMATION
solely for academic research purposes provided such other entities
or individuals agree in writing (a) to use the same only for
academic research purposes, (b) not to provide the same to other
entities or individuals and (c) not to disclose the TECHNICAL
INFORMATION to others.
3.06 Provided LICENSOR's AFFILIATE(S) is capable and accepts,
LICENSEE hereby grants to LICENSOR's AFFILIATE(S) a right of first
refusal to function as a site at which the clinical tests or
trials of any LICENSED PRODUCT(S) are performed. Such right of
first refusal shall mean that LICENSEE shall request a proposal
from LICENSOR setting forth the procedures which LICENSOR would
follow in the tests and the associated costs. If LICENSEE decides
not to accept LICENSOR's proposal then LICENSEE may only contract
with a clinical test site(s) whose proposal is more favorable
(taken as a whole) to LICENSEE than that proposed by LICENSOR.
IV. LICENSE FEES AND ROYALTY
4.00 LICENSEE shall, as a license fee, pay to LICENSOR the sum
[***]
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[***] Confidential Treatment Requested
[***]
4.01 LICENSEE shall pay to LICENSOR a royalty of
[***]
4.02 If at the time of the sale of a LICENSED PRODUCT a patent
application is still pending and no valid claims have issued which
such LICENSED PRODUCT would infringe then the royalty rate for
such LICENSED PRODUCT shall be [***]
Once such claim(s) issue the royalty rate for a
LICENSED PRODUCT covered by such claim shall be as set forth in
paragraph 4.01.
4.03 In the event that a LICENSED PATENT is abandoned or
expires or if all of its claims are finally declared invalid by a
non-appealable decision of a court of competent jurisdiction
through no fault or cause of LICENSEE, [***]
V. MINIMUM ROYALTIES AND DEVELOPMENT EFFORTS
5.00 LICENSEE shall pay to LICENSOR royalties and SUBLICENSE
ROYALTIES as stated in Articles IV and VI, but in no event shall
the sum of royalties and SUBLICENSE ROYALTIES for a calendar year
for practice of the LICENSED PATENTS and or use of TECHNICAL
INFORMATION in the LICENSED FIELD and LICENSED TERRITORY be less
than the following minimum royalties during each of the calendar
years indicated:
Minimum Royalty,
Calendar Year U.S. $ per Calendar Year*
1995 [***]
1996
1997
1998
1999
2000
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[***] Confidential Treatment Requested
2001 [***]
2002 and each calendar year
thereafter during the term of
this LICENSE AGREEMENT
------------------------------
* Net to LICENSOR after taxes,
if any, withheld at the source.
[***]
5.01 LICENSEE shall use its best reasonable efforts to
develop and market LICENSED PRODUCT(S) for commercial sale and
distribution throughout the LICENSED TERRITORY, and to such end,
LICENSEE, its AFFILIATES or its SUBLICENSEES shall achieve the
following objectives within the designated years following the
date of this LICENSE AGREEMENT in accordance with the following
schedule:
[***]
Failure to achieve these objectives shall result in LICENSOR
having the option to terminate the license granted hereunder,
subject to LICENSEE's right to achieve the missed objective within
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[***] Confidential Treatment Requested
sixty (60) days of receipt of written notice of termination from
LICENSOR. LICENSOR shall not unreasonably withhold its consent to
any revision in the preceding schedule requested in writing by
LICENSEE and supported by evidence of technical difficulties or
delays in the clinical studies or regulatory process that could
not have been reasonably avoided. Notwithstanding the foregoing,
LICENSOR shall not have a right to terminate the license for the
failure of LICENSEE to meet a goal if such failure is a result of
(i) causes beyond LICENSEE's direct control; (ii) LICENSOR's
failure to meet its obligations hereunder; (iii) infringement of
third party patents; or (iv) actions or inactions of a federal or
state agency whose approval is required for commercial sales.
At intervals no longer than every twelve months LICENSEE
shall report in writing to LICENSOR's Office of Industrial Affairs
on progress made toward the objectives set forth above.
LICENSED PRODUCT(s) used, sold, leased, or transferred within
the United States shall be manufactured substantially in the
United States.
LICENSOR and LICENSEE acknowledge that each may be required
to disclose to the other information which is CONFIDENTIAL
INFORMATION. Each agrees to take reasonable precautions to
protect such CONFIDENTIAL INFORMATION and preserve its
confidential, proprietary, or trade secret status. Each shall use
at least the same degree of care and precaution as is customarily
used to protect its own CONFIDENTIAL INFORMATION.
5.02 LICENSOR may, by written notice to LICENSEE, terminate
this LICENSE AGREEMENT during any February subsequent to the year
2002, if LICENSEE has not either (a) practiced the LICENSED
PATENTS during the calendar year that precedes each such February
to the extent of generating earned royalties or SUBLICENSE
ROYALTIES as provided by Articles IV and VI of this LICENSE
AGREEMENT in the amount of [***]
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[***] Confidential Treatment Requested
VI. SUBLICENSING
6.00 The license rights granted under this LICENSE AGREEMENT
shall specifically include the right for LICENSEE to grant
sublicenses. LICENSEE shall supply LICENSOR with an English
language copy of the executed agreement within thirty (30) days
after the execution of the sublicense agreement.
6.01 Sublicenses shall be transferable only from LICENSEE to
an AFFILIATE of LICENSEE or in connection with a MAJOR CORPORATE
TRANSACTION.
6.02 All sublicenses granted by LICENSEE shall expressly
provide that Articles II (DEFINITIONS), III (LICENSE GRANT), IX
(TERMINATION), X (LITIGATION), XI (RECORDS), XII,
(NONASSIGNABILITY), XIV (NONUSE OF LICENSOR's NAME, etc.), XVI
(MARKING) AND XVIII (EXPORTATION OF TECHNICAL INFORMATION) of this
LICENSE AGREEMENT shall be binding upon the SUBLICENSEE, as if
SUBLICENSEE were a party to this LICENSE AGREEMENT.
6.03 Each sublicense agreement shall include a provision
stating that the sublicense agreement shall automatically be
modified or terminated, in whole or in part, upon any modification
or termination, in whole or in part, of the LICENSE AGREEMENT if,
and to the extent, such modification or amendment to the LICENSE
AGREEMENT is relevant to and affects the terms of the sublicense
agreement. Such modification or termination of the sublicense
agreement shall be consistent with and reflect the modifications
or termination of the LICENSE AGREEMENT. Upon termination of this
LICENSE AGREEMENT for any reason, any sublicensee not then in
default shall have the right to seek a license from LICENSOR.
LICENSOR agrees to negotiate such licenses in good faith under
reasonable terms and conditions.
[***]
6.04 LICENSEE shall pay to LICENSOR a portion ("SUBLICENSE ROYALTIES") of
all accrued sublicense issue fees and sublicense royalties payable to
LICENSEE from its SUBLICENSEES under this LICENSE AGREEMENT ("SUBLICENSE
INCOME") from the Effective Date and during the term of the LICENSED PATENTS
as follows: [***]
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*** Confidential Treatment Requested
[***]
6.05 In the event that SUBLICENSE INCOME becomes accrued and
payable at a time when no valid claims of the LICENSED PATENTS
have issued which would be infringed by the manufacture, sale or
use of a LICENSED PRODUCT, then the SUBLICENSE ROYALTIES specified in
Paragraph 6.04 shall be reduced as follows:
[***]
6.06 In the event that a LICENSED PATENT is abandoned or
expires or if all of its claims are finally declared invalid by a
non-appealable decision of a court of competent jurisdiction
through no fault or cause of LICENSEE, [***]
6.07 The SUBLICENSE ROYALTIES shall be paid by LICENSEE to
LICENSOR in conjunction with LICENSEE's earned royalty payments
and shall be accompanied by written reports, as required with the
LICENSEE's earned royalty payments, sufficient to allow LICENSOR
to audit the activities of each SUBLICENSEE.
6.08 The minimum royalty for a year will be creditable
against SUBLICENSE ROYALTIES to the extent and as provided in
paragraph 5.00.
VII. PAYMENTS AND REPORTS, LICENSED PATENT EXPENSES
7.00 Not later than the last day of each November, March,
May and August, LICENSEE shall furnish to LICENSOR a written
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[***] Confidential Treatment Requested
statement in such detail as LICENSOR may reasonably require of all
amounts due pursuant to Articles IV and VI for the previous
calendar quarter ended the last days of the preceding September,
December, March and June, respectively, and shall pay to LICENSOR
all amounts due to LICENSOR. In the event that the amounts due at
the end of any calendar year do not equal the minimum royalties
specified in paragraph 5.00 for said calendar year, LICENSEE shall
pay to LICENSOR no later than the last day of March of the
following calendar year, the amount required to satisfy the
minimum royalty obligation for said calendar year. Such amounts
are due at the dates the statements are due. If no amount is
accrued during any calendar quarter, a written statement to that
effect shall be furnished.
7.01 Payments provided for in this LICENSE AGREEMENT, when
overdue, shall bear interest at a rate per annum equal to one
percent (1%) in excess of the "PRIME RATE" published by "The Wall
Street Journal" at the time such payment is due, and for the time
period until payment is received by LICENSOR.
7.02 If this LICENSE AGREEMENT is for any reason terminated
before all of the payments herein provided for have been made
(including minimum royalties for the year in which the agreement
is terminated), LICENSEE shall promptly submit a terminal report
and pay to LICENSOR any remaining unpaid balance as of the
termination date even though the due date as above provided has
not been reached.
7.03 LICENSEE shall reimburse LICENSOR for all reasonable
expenses incurred by LICENSOR after the EFFECTIVE DATE of this
LICENSE AGREEMENT in connection with the filing, prosecution and
maintenance of LICENSED PATENTS in the United States. At
LICENSOR's option, LICENSOR's patent counsel may ▇▇▇▇ LICENSEE
directly for such expenses and LICENSEE shall remit payment for
any undisputed amounts directly and promptly (within 30 days) to
LICENSOR's patent counsel. If the license should become non-
exclusive then (a) LICENSEE shall only be responsible for its pro
rata share of any patent prosecution expenses and fees incurred
after the license becomes non-exclusive and (b) any person
becoming a licensee thereafter will be required to pay a pro rata
share of such expenses and fees and LICENSEE shall be entitled to
the excess if any of any expenses and fees paid over its pro rata
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portion assuming that the new licensee had become a licensee at
the time that the license became non-exclusive.
7.04 LICENSOR shall apply for, seek prompt issuance of, and
maintain during the term of this LICENSE AGREEMENT the LICENSED
PATENTS in the United States. LICENSOR will consult with LICENSEE
before seeking any foreign patent protection. If LICENSEE wants
LICENSOR to seek such protection, LICENSOR shall apply for that
protection and LICENSEE shall reimburse LICENSOR for all
reasonable fees and costs as provided. The prosecution, filing
and maintenance of all patents and applications comprising the
LICENSED PATENTS shall be the primary responsibility of LICENSOR.
LICENSOR shall keep LICENSEE fully informed concerning LICENSED
PATENTS, and shall promptly provide to LICENSEE copies of all
correspondence relating to LICENSED PATENTS from the patent
offices in those countries in which patents are filed as well as
copies of all responses thereto. So long as LICENSEE timely
provides comments to LICENSOR concerning the preparation of
responses to Office Actions, LICENSOR's counsel shall give due
consideration to such comments. If LICENSEE does not want to
support the filing, prosecution, or maintenance of any patent
application or patent in a country, LICENSOR may do so, in which
case LICENSEE's rights and obligations to such patent or patent
application in such country shall terminate.
VIII. DISCLAIMER OF WARRANTIES, INDEMNITY AND INSURANCE
8.00 NOTHING IN THIS LICENSE AGREEMENT SHALL BE DEEMED TO BE
A REPRESENTATION OR WARRANTY BY LICENSOR OF THE VALIDITY OF ANY OF
THE LICENSED PATENTS OR TECHNICAL INFORMATION.
LICENSEE will indemnify and hold LICENSOR harmless against
any and all actions, suits, claims, demands, prosecutions, costs
and expenses (including actual reasonable attorneys' fees) based
on or arising out of this LICENSE AGREEMENT, including, without
limitation, the manufacture, packaging, use, sale, rental or lease
of LICENSED PRODUCTS, even if altered or used for a purpose not
intended, or the use of LICENSED PATENTS or TECHNICAL INFORMATION
by LICENSEE, its AFFILIATES, its SUBLICENSEES or its (or their)
customers and any representation made or warranty given by
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LICENSEE, its AFFILIATES or SUBLICENSEES with respect to LICENSED
PRODUCTS or LICENSED TECHNOLOGY.
LICENSEE shall maintain, during the term of this LICENSE
AGREEMENT, comprehensive general liability insurance, including
products liability insurance, with reputable and financially
secure insurance carriers reasonably acceptable to LICENSOR, to
cover the activities of LICENSEE, its AFFILIATES and its
SUBLICENSEES, for minimum limits of [***]
combined single limit for bodily injury and property damage per
occurrence and in the aggregate. Such insurance shall include LICENSOR,
its trustees, directors, officers, employees, and agents as additional
insureds. Prior to any administration of a LICENSED PRODUCT to a
human being, LICENSEE shall furnish to LICENSOR a certificate of
insurance evidencing such coverage, with thirty (30) days' written
notice to LICENSOR of cancellation or material change.
The insurance required of LICENSOR under this Article VIII
shall be primary coverage; any insurance LICENSOR may purchase
shall be excess and noncontributory. The insurance required of
LICENSEE shall at all times comply with all statutory workers'
compensation and employers' liability requirements covering its
employees with respect to activities performed under this LICENSEE
AGREEMENT.
8.01 Compliance with Governmental Obligations.
a) LICENSEE, AFFILIATES and SUBLICENSEES shall comply upon
reasonable notice from LICENSOR with all governmental
requests directed to either LICENSOR or LICENSEE and provide
all information and assistance necessary to comply with the
governmental requests.
b) LICENSEE shall insure that research, development, and
marketing under this LICENSE AGREEMENT will comply with all
government regulations in force and effect including, but not
limited to, Federal, state and municipal legislation.
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[***] Confidential Treatment Requested
IX. TERMINATION
9.00 This LICENSE AGREEMENT shall terminate upon the
expiration of the last to expire of the LICENSED PATENTS included
herein, or upon the abandonment of the last to be abandoned of any
patent applications included herein, or 15 years from the date of
FIRST COMMERCIAL SALE, whichever is later, unless the LICENSE
AGREEMENT is sooner terminated. Following termination of this
LICENSE AGREEMENT pursuant to this paragraph, LICENSEE shall have
the right to manufacture, have manufactured, use, sell, have sold,
and develop LICENSED PRODUCTS without further obligations to
LICENSOR.
9.01 LICENSEE may terminate this LICENSE AGREEMENT at any
time upon ninety (90) days' written notice in advance to LICENSOR.
If LICENSOR is not in material breach of the LICENSE AGREEMENT at
the time of termination, then all of the rights, but not the then
accrued liabilities of LICENSEE, its AFFILIATES and SUBLICENSEES,
under the LICENSED TECHNOLOGY shall revert and belong to LICENSOR.
If LICENSEE is not in material breach of the LICENSE AGREEMENT at
the time of termination, then LICENSEE shall have the right for
one year thereafter to dispose of all LICENSED PRODUCTS then in
its inventory, and shall pay royalties thereon, in accordance with
the provisions of this LICENSE AGREEMENT, as though this LICENSE
AGREEMENT had not terminated.
9.02 If either party shall be in default of any obligation
hereunder, or shall be adjudged bankrupt, or become insolvent, or
make an assignment for the benefit of creditors, or be placed in
the hands of a receiver or a trustee in bankruptcy, the other
party may terminate this LICENSE AGREEMENT by giving sixty (60)
days' notice by Registered Mail to the other party, specifying the
basis for termination. If within sixty (60) days after the
receipt of such notice, the party receiving notice shall remedy
the condition forming the basis for termination, such notice shall
cease to be operative, and this LICENSE AGREEMENT shall continue
in full force.
9.03 The word "termination" and cognate words, such as
"term" and "terminate," used in this Article IX and elsewhere in
this LICENSE AGREEMENT are to be read, except where the contrary
is specifically indicated, as omitting from their effect the
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following rights and obligations, all of which survive any
termination to the degree necessary to permit their complete
fulfillment or discharge:
a) LICENSEE's obligation to supply a terminal report as
specified in paragraph 7.02 of this LICENSE AGREEMENT.
b) LICENSOR's right to receive or recover and
LICENSEE'S obligation to pay royalties (including minimum
royalties) accrued or accruable for payment at the time of
any termination.
c) LICENSEE's obligation to maintain records under
paragraph 11.00 of this LICENSE AGREEMENT.
d) Licenses, releases, and agreements of nonassertion
running in favor of customers or transferees of LICENSEE in
respect to products sold or transferred by LICENSEE prior to
any termination and on which royalties shall have been paid
as provided in paragraph 4.01 of this LICENSE AGREEMENT.
e) Any cause of action or claim of either party accrued
or to accrue, because of any breach or default by the other
party.
f) The representation and disclaimer of warranties and
indemnification obligations of paragraph 8.00.
g) The confidentiality obligations under paragraph
5.01.
9.04 In the event LICENSEE is permanently enjoined from
exercising its license rights granted hereunder pursuant to an
infringement action brought by a third party, or if both LICENSEE
and LICENSOR elect not to undertake the defense or settlement of
such a claim of alleged infringement for a period of six months
from notice of such claim or suit, then LICENSEE shall have the
right to terminate this LICENSE AGREEMENT with respect to the
infringing patent claims following thirty (30) days' written
notice to LICENSOR.
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X. LITIGATION
10.00 Each party shall notify the other party in writing of
any suspected infringements of or by the LICENSED PATENTS in the
LICENSED TERRITORY and shall inform the other party of any
evidence of such infringements.
10.01 INFRINGEMENT OF LICENSED PATENTS DURING EXCLUSIVE
PERIOD. So long as this LICENSE AGREEMENT remains exclusive the
LICENSEE shall have the first right to defend the LICENSED PATENTS
against infringement or interference by other parties in whole or
in part in the LICENSED FIELD in any country in which a LICENSED
PATENT is in effect hereunder, including by bringing any legal
action for infringement or defending any counterclaim of
invalidity or action of a third party for declaratory judgment of
non-infringement or interference. LICENSOR agrees to join as a
party plaintiff in any such lawsuit initiated by LICENSEE and to
cooperate with LICENSEE in LICENSEE's prosecution, if requested by
LICENSEE, with all reasonable costs, attorney fees, and expenses
to be paid by LICENSEE. However, if LICENSEE does not institute
suit for infringements within ninety (90) days of receipt of
written notice from LICENSOR of LICENSOR's desire to bring suit
for infringement in its own name and on its own behalf, then
LICENSOR may, at its own expense, bring suit or take any other
appropriate action. In the event that LICENSEE shall undertake
the enforcement of the LICENSED PATENTS by litigation, LICENSEE
may withhold [***]
of the payments otherwise thereafter due LICENSOR and apply the
same toward reimbursement of up to half of LICENSEE's expenses,
including reasonable attorneys' fees, in connection therewith.
Any recovery of damages by LICENSEE for each such suit shall be
applied first in satisfaction of any unreimbursed expenses and
legal fees of LICENSEE relating to such suit, and next toward
reimbursement of LICENSOR for any payments past due or withheld
and applied pursuant to this paragraph. The balance remaining
from any such recovery shall be retained by LICENSEE.
10.02 INFRINGEMENT OF LICENSED PATENTS DURING NON-EXCLUSIVE
PERIOD. If this LICENSE AGREEMENT is nonexclusive at the time of
infringements, the sole right to institute suit for infringement
and to recover damages shall rest with LICENSOR.
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[***] Confidential Treatment Requested
10.03 LICENSEE shall be entitled to any recovery of damages
resulting from a lawsuit brought by it pursuant to paragraph
10.01. LICENSOR shall be entitled to recovery of damages resulting
from any lawsuit brought by LICENSOR to enforce any LICENSED
PATENT, pursuant to paragraph 10.01 or 10.02.
10.04 Neither party may settle with any infringer without the
prior approval of the other party if such settlement would affect
the rights of the other party under the LICENSED PATENTS.
10.05 INFRINGEMENT BY LICENSED PATENTS. Each party shall
promptly notify the other in writing in the event that a third
party shall bring a claim of infringement against LICENSOR or
LICENSEE, either in the United States or in any foreign country in
which there is a LICENSED PATENT. So long as this LICENSE
AGREEMENT is exclusive, LICENSEE in its own name and at its sole
expense shall have the first right to defend the LICENSED PATENTS
and may compromise, settle or otherwise pursue such defense in
such a manner and on such terms as LICENSEE shall see fit. In the
event that LICENSEE shall undertake such defense, LICENSEE may
withhold [***]
of the payments otherwise thereafter due LICENSOR and apply
the same toward reimbursement of LICENSEE's expenses, including
reasonable attorneys' fees, in connection therewith. Any
recovery of damages by LICENSEE for each such suit shall be
applied first in satisfaction of any unreimbursed expenses and
legal fees of LICENSEE relating to such suit, and next toward
reimbursement of LICENSOR for any payments past due or withheld
and applied pursuant to this paragraph. The balance remaining
from any such recovery shall be retained by LICENSEE.
XI. RECORDS
11.00 LICENSEE shall keep accurate records of all operations
affecting payments hereunder, and shall permit LICENSOR or its
duly authorized agent to inspect all such records and to make
copies of or extracts from such records during regular business
hours throughout the term of this LICENSE AGREEMENT and for a
reasonable period of not less than three (3) years thereafter.
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[***] Confidential Treatment Requested
XII. NONASSIGNABILITY
12.00 The parties agree this LICENSE AGREEMENT imposes
personal obligations on LICENSEE. LICENSEE shall not assign any
rights under this LICENSE AGREEMENT not specifically transferable
by its terms (other than to an AFFILIATE or in connection with a
MAJOR CORPORATE TRANSACTION) without the written consent of
LICENSOR, which shall not be unreasonably withheld, delayed or
conditioned. LICENSOR may assign its rights hereunder but not to
a competitor of LICENSEE.
XIII. SEVERABILITY
13.00 The parties agree that if any part, term, or provision
of this LICENSE AGREEMENT shall be found illegal or in conflict
with any valid controlling law, the validity of the remaining
provisions shall not be affected thereby.
XIV. NONUSE OF LICENSOR'S NAME AND LICENSOR EMPLOYEES AS
CONSULTANTS, BOARD MEMBERS OR EMPLOYEES
14.00 In publicizing anything made, used, or sold under this
LICENSE AGREEMENT, LICENSEE shall not use the name of LICENSOR or
otherwise refer to any organization related to LICENSOR, except
with the written approval of LICENSOR and except that LICENSEE may
make statements to the effect that (a) it is licensed by LICENSOR
under the LICENSED PATENTS and (b) [***] ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇, M.D., Ph.D. are
staff of LICENSOR and there is a relationship between these individuals and
LICENSEE. LICENSOR shall respond to any such LICENSEE'S request to use
LICENSOR's name or otherwise refer to any organization related to LICENSOR
within fourteen (14) days after receiving LICENSEE's request.
LICENSOR shall respond to any such LICENSEE's request to use
LICENSOR's name or otherwise refer to any organization related to
LICENSOR within fourteen (14) days after receiving LICENSEE's request.
14.01 Neither LICENSEE, its AFFILIATES nor its SUBLICENSEES
shall hire as consultants, board members or employees any
individual who is at the same time also an employee of LICENSOR or
its AFFILIATES without first obtaining LICENSOR's prior written
consent to such hiring agreement.[***]
LICENSOR hereby consents to the involvement of [***]
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*** Confidential Treatment Requested
[***]
and ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇, M.D., Ph.D. with LICENSEE or its AFFILIATES,
provided that their involvement is described in separate agreements that have
been approved by LICENSOR as consistent with LICENSOR's policies.
XV. WAIVER, INTEGRATION ALTERATION
15.00 The waiver of a breach hereunder may be effected only
by a writing signed by the waiving party and shall not constitute
a waiver of any other breach.
15.01 This LICENSE AGREEMENT represents the entire
understanding between the parties, and supersedes all other
agreements, express or implied, between the parties concerning
LICENSED PATENTS and TECHNICAL INFORMATION.
15.02 A provision of this LICENSE AGREEMENT may be altered
only by a writing signed by both parties, except as provided in
paragraph 13.00 above.
XVI. MARKING
16.00 LICENSEE shall place in a conspicuous location on
LICENSED PRODUCTS that would infringe LICENSED PATENTS but for
this LICENSE AGREEMENT, a patent notice in accordance with 35
U.S.C. Section 282. LICENSEE agrees to ▇▇▇▇ any products made
using a process covered by any LICENSED PATENT with the number of
each such patent and, with respect to such LICENSED PATENTS, to
respond to any request for disclosure under 35 U.S.C. Section
287(b)(4)(B) by only notifying LICENSOR of the request for
disclosure.
XVII. APPLICABLE LAW
17.00 This LICENSE AGREEMENT shall be construed in accordance
with the substantive laws of the State of New York of the United
States of America.
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[***] Confidential Treatment Requested
XVIII. EXPORTATION OF TECHNICAL INFORMATION
18.00 LICENSEE agrees to comply with the laws and rules of
the GOVERNMENT regarding prohibition of exportation of TECHNICAL
INFORMATION furnished to LICENSEE either directly or indirectly by
LICENSOR.
XIX. NOTICES UNDER THE LICENSE AGREEMENT
19.00 For the purpose of all written communications and
notices between the parties, their addresses shall be:
LICENSOR: ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇
Senior Vice President
Research Resources Management
▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ Institute for Cancer Research
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
LICENSEE: ▇▇▇▇ ▇. ▇▇▇▇▇▇, M.D., Ph.D.
Chairman, President and CEO
Progenics Pharmaceuticals, Inc.
▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
or any other addresses of which either party shall notify the
other party in writing.
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IN WITNESS WHEREOF the parties have caused this LICENSE
AGREEMENT to be executed by their duly authorized officers on the
respective dates hereinafter set forth.
LICENSEE
PROGENICS PHARMACEUTICALS, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------------------------------------------------
Title: Chairman and CEO
----------------------------------------------------------------------
Date: November 17, 1994
-----------------------------------------------------------------------
LICENSOR
▇▇▇▇▇-▇▇▇▇▇▇▇▇▇ INSTITUTE FOR CANCER RESEARCH
By: /s/ ▇▇▇▇▇▇ ▇. Furl
-------------------------------------------------------------------------
Title: Senior Vice President
----------------------------------------------------------------------
Date: November 22, 1994
-----------------------------------------------------------------------
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Exhibit A
DEFINITIONS EXHIBIT
Part 1: Additional licensing terms.
E1.01 AFFILIATES means, with respect to a party of this
LICENSE AGREEMENT, any individual or entity which directly or
indirectly controls, is controlled by, or is under common control
with such party. The term "control" means possession, direct or
indirect, of the powers to direct or cause the direction of the
management or policies of a person or ENTITY; whether through
ownership of equity participation, voting securities, or
beneficial interests; by contract; by agreement; or otherwise.
Also, with respect to LICENSOR, AFFILIATES includes Memorial
Hospital for Cancer and Allied Diseases and Memorial ▇▇▇▇▇-
▇▇▇▇▇▇▇▇▇ Cancer Center, each a not-for-profit membership
corporation of the State of New York, each having its principal
place of business at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇.
E1.02 CONFIDENTIAL INFORMATION means the collection of
technical information included in the LICENSED TECHNOLOGY or
technical information of LICENSEE and confidential non-public
information concerning LICENSEE's business plans, strategy and the
like. All information which shall be disclosed in confidence by
the disclosing party to the receiving party, and which affords a
competitive advantage to the disclosing party or its AFFILIATES,
shall be presumed to be CONFIDENTIAL INFORMATION, even though
limited portions of such technical information may be in the
public domain.
The following information shall be excluded from the
definition of CONFIDENTIAL INFORMATION: (a) information which the
receiving party demonstrates was in the receiving party's
possession in written or other tangible form prior to any
disclosure; (b) information which the receiving party demonstrates
was received from a third party without restriction and not in
violation of any duty of nondisclosure on the part of such third
party; (c) information which is independently discovered or
invented by personnel of a party who do not have direct or
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indirect access to the information provided to that party by the
other party, or (d) from the time it becomes so known, any
information which the receiving party demonstrates was generally
known to the trade. Information shall not be considered to be
generally known to the trade if, in order to acquire such
information from publicly available sources, the receiving party
used the disclosing party's CONFIDENTIAL INFORMATION to guide it
in reviewing such sources in order to select therefrom a series of
relatively unconnected information which may be fit together to
match the CONFIDENTIAL INFORMATION first learned from the
disclosing party.
E1.03 DISTRIBUTOR means any person or ENTITY engaged by
LICENSEE, or any agent or representative of LICENSEE, to
distribute any LICENSED PRODUCT(S) either directly or indirectly
through other distributors.
E1.04 END USER means any person licensed or otherwise
authorized to USE LICENSED PRODUCT(S) for his/her own personal
use, or any ENTITY licensed to USE LICENSED PRODUCT(S) in the
regular conduct of its own business and not for licensing to other
entities or individuals.
E1.05 ENTITY means a corporation, an association, a joint
venture, a partnership, a trust, a business, an individual, a
government or political subdivision thereof, including an agency,
or other organization which can exercise independent legal
standing.
E1.06 FIRST COMMERCIAL SALE means the date that the LICENSED
PRODUCT(S) are first sold, marketed or publicly made available.
LICENSED PRODUCT(S) distributed or used for clinical trials or
experimental purposes only shall not be considered marketed or
made available and shall not establish the FIRST COMMERCIAL SALE.
E1.07 GOVERNMENT means the Federal Government of the United
States of America.
E1.08 MAJOR CORPORATE TRANSACTION means (a) the sale of all
or substantially all of the business to which the licenses granted
under this LICENSE AGREEMENT relate or (b) the merger of the
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LICENSEE with or into or the consolidation of the LICENSEE with
another ENTITY.
[***]
E1.010 SUBLICENSEE means any ENTITY, not an AFFILIATE of
LICENSEE, which is licensed by LICENSEE, pursuant to this
authority granted in this LICENSE AGREEMENT, which has rights to
LICENSED TECHNOLOGY beyond those rights commonly granted to an END
USER.
E1.011 USE means any form of practice or utilization of the
LICENSED TECHNOLOGY, or any portion thereof.
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Part 2: Technical Terms.
[***]
E2.01 BCG means bacille de Calmette et ▇▇▇▇▇▇, a nonspecific immune
stimulant.
E2.02 DERIVATIVES means a chemical substance derived from another
substance either directly or by modification or partial substitution.
[***]
E2.03 FDA means the Food and Drug Administration of the
GOVERNMENT.
[***]
E2.06 GMP means good manufacturing practices as defined by
the FDA of the GOVERNMENT.
[***]
E2.07 KHL means keyhole limpet hemocyanin.
E2.08 NDA means New Drug Application as defined by the FDA of
the GOVERNMENT.
[***]
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