[*] indicates that a confidential portion of the text of this agreement has been
omitted and filed separately with the Securities and Exchange Commission.
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
BETWEEN
XOMA CORPORATION
AND
NEW YORK UNIVERSITY
NYU/XOMA
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
I N D E X
Section l. Definitions page 3
Section 2. Effective Date page 10
Section 3. Performance of the NYU Research Project page 10
Section 4. Funding of the NYU Research Protect page 12
Section 5. Title page 13
Section 6. Patents and Patent Applications page 14
Section 7. Grant of License page 16
Section 8. Development and Commercialization page 18
Section 9. Payments for License page 20
Section 10. Method of Payment page 27
Section 11. Publication page 28
Section 12. Infringement of NYU Patent page 29
Section 13. Term and Termination page 33
Section 14. CORPORATION's Contingent
Right to Royalties page 34
Section 15. CORPORATION's Indemnification page 35
Section 16. Security for Indemnification page 36
Section 17. Confidential Information page 40
Section 18. Representations and Covenants page 41
Section 19. No Assignment page 42
Section 20. Use of Name page 43
Section 21. Miscellaneous page 44
Appendix I - Pre-Existing Inventions
Appendix II - Research Project
Appendix III - Development Plan
Appendix IV - Schedule of Research Payments
NYU/XOMA
RESEARCH AND LICENSE AGREEMENT
This Agreement, dated as of September 1, 1993, is by and between:
NEW YORK UNIVERSITY a corporation organized and existing under the laws of
the State of New York and having a place of business at ▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (hereinafter "NYU")
AND
XOMA Corporation a corporation organized and existing under the laws of the
State of Delaware having its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "CORPORATION").
WITNESSETH:
WHEREAS, CORPORATION and NYU are parties to that certain Agreement dated
August 6, 1990 ("the Original Agreement") and each of them desires to amend and
restate the Original Agreement in its entirety;
NOW, THEREFORE, in consideration of the mutual promises and agreements
contained herein, CORPORATION and NUY mutually covenant and agree that the terms
of the Original Agreement shall be cancelled and that, effective August 6, 1990
("the Effective Date") the following recitals and terms shall be substituted
therefore:
-1-
RECITALS
WHEREAS, Drs. ▇▇▇▇▇ ▇▇▇▇▇▇▇ and ▇▇▇▇▇▇▇ ▇▇▇▇▇ of NYU (hereinafter "the NYU
Scientists") have made certain inventions relating to Bactericidal/Permeability
Increasing Protein (hereinafter "the BPI Pre-Existing Inventions"), and also
certain inventions relating to 15KD proteins purified from mammalian
polymorphonuclear leukocytes and having anti-bacterial or lipopolysaccharide
neutralizing properties ("the P15 Pre-Existing Inventions") all as more
particularly described in pending U.S. patent application and counterpart
foreign patent applications owned by NYU, identified, respectively, in annexed
Appendix I and Appendix II forming an integral part hereof;
WHEREAS, NYU is willing to perform the NYU Research Project (as hereinafter
defined);
WHEREAS, CORPORATION is prepared to sponsor the NYU Research Project (as
hereinafter defined) at the facilities of NYU;
WHEREAS, subject to the terms and conditions hereinafter set forth, NYU is
willing to grant to CORPORATION and CORPORATION is willing to accept from NYU a
license to use and practice the Research Technology (as hereinafter defined) for
the manufacturing and marketing of the Licensed Products (as hereinafter
defined);
NOW, THEREFORE, IT IS HEREBY DECLARED AND AGREED BETWEEN THE PARTIES AS
FOLLOWS:
-2-
1. Definitions.
Whenever used in this Agreement, the following terms shall have the
following meanings:
a. "Affiliate" shall mean any company or other legal entity which
controls, or is controlled by, or is under common control with, a
sublicensee of CORPORATION; control means the holding of fifty and one
tenth percent (50.1%) or more of (i) the capital and/or (ii) the
voting rights and/or (iii) the right to elect or appoint directors or
such lower maximum amount allowed by the law governing the ownership
of said organization.
b. "Agreement Year" shall mean any consecutive period of twelve months
commencing on the Effective Date or an annual anniversary of the
Effective Date.
c. "BPI" shall mean Bactericidal/Permeability Increasing protein,
purified from mammalian polymorphonuclear leukocytes.
d. "BPI Biological Material" shall mean the cDNA encoding for human BPI
that NYU has in its possession on the Effective Date.
e. "BPI Products" shall mean:
[*]
-3-
[*]
-4-
[*]
f. "BPI Combination Product" shall mean a product comprising a BPI
Product(s) and at least one other ingredient which is therapeutically
or prophylactically active.
g. "CORPORATION Entity" shall mean any company or other legal entity
which controls, or is controlled by, or is under common control with,
CORPORATION; control means the holding of fifty and one tenth percent
(50.1%) or more of (i) the capital and/or (ii) the voting rights
and/or (iii) the right to elect or appoint directors or such lower
maximum amount allowed by the law governing the ownership of said
organization.
h. "CORPORATION PATENTS" shall mean all United States and foreign patents
and reissues, renewals and extensions thereof, and patent
applications, and any divisions, continuations, in whole or in part
therefor, which name only employee(s) of CORPORATION and not any NYU
employee as an inventor(s) thereon and relate to the BPI Products, as
defined herein.
i. "Development Plan" shall mean the preclinical plan and estimated time
frame for clinical program, through final approval by the United
States Food and Drug Administration ("FDA") for the BPI Products, as
set forth in Appendix III, attached hereto and made an integral part
hereof.
-5-
j. "JOINT Patents" shall mean all United States and foreign patents and
reissues, renewals and extensions thereof, and patent applications,
and any divisions, continuations, in whole or in part therefor, which
name at least one employee of CORPORATION and one employee or student
of NYU as inventors thereon and which disclose and claim inventions
which are based on, use or comprise biological material provided to
CORPORATION by NYU or disclosed in the NYU Patents or which relate to
the BPI Products.
k. "License" shall mean the exclusive worldwide license to practice the
Research Technology for the development, manufacture, use and sale of
the Licensed Products.
l. "Licensed Product" shall mean (aa) any BPI Product; or (bb) any BPI
Combination Product; or (cc) any P15 Product (as hereinafter defined);
or (dd) any P15 Combination Product (as hereinafter defined). The
production, use or sale of which is covered by a claim of any
unexpired NYU Patent and/or JOINT Patent and/or CORPORATION Patent
which has not been disclaimed or held invalid by a court of competent
jurisdiction from which no appeal can be taken.
m. "Net Sales" shall mean the total amount invoiced in connection with
sales of the Licensed Products, in any arm's length transaction, after
deduction of all the following to the extent applicable to such sales;
-6-
i) all trade, case and quantity credits, discounts, refunds or
rebates;
ii) allowances or credits for returns;
iii) sales commissions; and iv) sales taxes (including value added
tax), provided that in respect of sales which are not "at arm's
length" sales, the Net Sales shall be deemed to be the total
sales price invoiced at the time of such sales for sales of
Licensed Products which are "at arm's length" sales after the
aforementioned deductions.
n. "NYU Know-How" shall mean the BPI and P15 Pre-Existing Inventions and
any information and materials, including the BPI Biological Material
and the P15 Biological Material and also, but not limited to,
pharmaceutical, chemical, biological and biochemical products,
information, trade secrets, know-how, technical and non-technical
data, methods and processes and any drawings, plans, diagrams,
specifications and/or other documents containing such information,
discovered, developed or acquired by, or on behalf of, students or
employees of NYU during the Research Period (as hereinafter defined)
and in the course of the NYU Research Project.
o. "NYU Patents" shall mean all United States and foreign patents and
reissues, renewals and extensions thereof, and patent applications,
and any divisions, continuations, in whole or in part, therefor:
-7-
(1) which claim Pre-Existing Inventions and which are
identified on annexed Appendix I; or
(2) which claim inventions that are made by students or
employees of NYU during the term and in the course of the NYU
Research Project.
p. "NYU Research Project" shall mean the investigations during the
Research Period (as hereinafter defined) into the field of BPI and P15
(as hereinafter defined) under the supervision of the NYU Scientists
at NYU in accordance with the research program, described in annexed
Appendix III, which forms an integral part hereof.
q. "PLA" shall mean 15KD proteins purified from mammalian
polymorphonuclear leukocytes and having anti-bacterial or
lipopolysaccharide neutralizing properties.
r. "P15 Products" shall mean:
[*]
-8-
[*]
s. "P15 Biological Material" shall mean the encoding for
mammalian P15s that NYU had in its possession on September 1,
1993. t. "P15 Combination Product" shall mean a product
comprising a P15 Product(s) and at least one other ingredient
which is therapeutically or prophylactically active.
-9-
u. "PLA" shall mean a product license application filed with the FDA with
respect to any BPI Product or P15 Product.
v. "Research Period" shall mean the six (6) year period commencing upon
the Effective Date and any extension thereof as to which NYU and
CORPORATION shall mutually agree in writing.
w. "Research Technology" shall mean all NYU Patents and NYU Know-How and
NYU's interest in JOINT Patents.
2. Effective Date.
This Agreement shall be effective as of August 6, 1990 (the "Effective
Date") and shall remain in full force and effect until it expires or is
terminated in accordance with Section 13 or Sections 8.e. or 9.f. hereof.
3. Performance of the NYU Research Project.
a. In consideration of the sums to be paid to NYU as set forth in Section
4 below, NYU undertakes to perform the NYU Research Project at NYU
under the supervision of the NYU Scientists during the three year
period commencing on the Effective Date, (hereinafter "the Research
Period"). If, during the Research Period all of the NYU Scientists
shall cease to supervise the NYU Research Project, then NYU shall
provide notice to CORPORATION of such occurrence and shall endeavor to
find from among the scientists of NYU a scientist or scientists
acceptable to CORPORATION to continue the supervision of the NYU
Research Project in place of the NYU Scientists. If NYU is unable to
find such a scientist
-10-
acceptable to CORPORATION, which acceptance shall not unreasonably be
withheld, within three months after such notice to CORPORATION,
CORPORATION shall have the option to terminate its funding of the NYU,
Research Project. CORPORATION shall promptly advise NYU in writing if
CORPORATION so elects. Such termination of funding pursuant to this
Section 3.a. shall not terminate this Agreement or the License granted
herein. Nothing herein contained, however, shall be deemed to impose
an obligation on NYU to find a replacement for the NYU Scientists.
b. Nothing contained in this Agreement shall be construed as a warranty
on the part of NYU that any results or inventions will be achieved by
the NYU Research Project, or that the Research Technology and/or any
other results or inventions achieved by the NYV Research Protect, if
any, are or will be commercially exploitable and furthermore, NYU
makes no warranties whatsoever as to the commercial or scientific
value of the Research Technology.
c. Within sixty (60) days after each six months of the Research Period,
NYU shall prepare a written report summarizing the results of the work
conducted on the NYU Research Project during the preceding period.
d. NYU will have full authority and responsibility for the NYU Research
Project. All students and employees of NYU who work on the NYU
Research Project will do so as employees or students of NYU, and not
as employees of CORPORATION.
-11-
e. Within seven (7) days after the Effective Date, NYV shall deliver to
CORPORATION a sample of the Biological Material. CORPORATION shall use
such Biological Material solely for performance of the CORPORATION's
research and development obligations pursuant to Section 8 hereof, and
CORPORATION shall not distribute or disclose the Biological Material
to any person or entity outside CORPORATION without the prior written
permission of NYU.
4. Funding of the NYU Research Project.
a. As compensation to NYU for work performed on the NYU Research Project
during the Research Period, CORPORATION shall pay NYU a total of [*]
payable in accordance with the Schedule annexed hereto as Appendix V,
which is an integral part of this Agreement. NYU acknowledges that as
of September 1, 1993, CORPORATION has paid NYU [*] of such amount.
b. Nothing in this Agreement shall be interpreted to prohibit NYU (or
the NYU Scientists) from obtaining additional financing or research
grants for the NYU Research Project from government agencies, which
grants or financing may render all or part of the NYU Research Project
and the results thereof subject to the patent rights of the U.S.
government and its agencies, as set forth in Title 35 U.S.C. ss.200 et
seq., and from non-commercial third parties, provided, however, that
such grants
-12-
shall not give such non-commercial third parties any rights to the
results, use and/or commercialization of such research.
5. Title.
a. Subject to the License granted to CORPORATION hereunder and to the
rights of the United States Government pursuant to Title 35 of the
U.S.C. ss.200 et. sec. and 15 CFR ss.368 et. seq., it is hereby agreed
that all right, title and interest, in and to the Research Technology,
and in and to any drawings, plans, diagrams, specifications, and other
documents containing any of the Research Technology shall vest solely
in NYU. At the request of NYU, CORPORATION shall take all steps as may
be necessary to give full effect to said right, title and interest of
NYU including, but not limited to, the execution of any documents that
may be required to record such right, title and interest with the
appropriate agency or government office. If CORPORATION determines
that a waiver is necessary with respect to the Research Technology,
from the United States Government, CORPORATION shall so notify NYU and
NYU shall assist CORPORATION in applying for such waiver.
b. Title to JOINT Patents shall vest jointly in NYU and CORPORATION,
except as otherwise provided herein.
c. NYU and CORPORATION acknowledge that there is a possibility Genentech
or an assignee thereof might claim certain rights to and/or interest
in the BPI Pre-Existing Inventions.
-13-
6. Patents and Patent Applications.
a. CORPORATION has paid NYU the sum of U.S. [*] being the amount of all
costs and fees incurred by NYU up to the Effective Date in connection
with the patent applications identified in Appendix I hereto. Within
thirty (3) days of final execution of this Agreement, CORPORATION
shall pay NYU the sum of [*], being the amount of all costs and fees
incurred by NYU after the Effective Date and with respect to the
patent applications identified in Appendix II hereof.
b. NYU shall promptly disclose to CORPORATION in writing all inventions
which comprise potential NYU Patents or JOINT Patents. CORPORATION
shall promptly disclose to NYU in writing all inventions which
comprise potential JOINT Patents or CORPORATION Patents.
c. At the initiative of CORPORATION or NYU, the parties shall consult
with each other regarding the filing of patent applications in respect
of any inventions which comprise potential NYU Patents or JOINT
Patents, including but without limitation, the timing of the filing of
such applications, the jurisdiction within which foreign counterparts
of such applications should be filed and other details pertaining to
the prosecution and maintenance of patent rights.
d. NYU and CORPORATION will negotiate in good faith to select patent
counsel mutually acceptable to NYU and CORPORATION.
-14-
NYU and CORPORATION will file, prosecute and maintain through such
patent counsel and in countries selected by NYU and CORPORATION,
patent applications on any inventions which comprise potential JOINT
Patents. NYU and CORPORATION shall each be solely responsible for the
filing, prosecution and maintenance of NYU Patents and CORPORATION
Patents respectively.
e. NYU and CORPORATION shall assist, and cause their respective employees
and consultants to assist each other, in assembling inventorship
information and data for the filing and prosecution of patent
applications on inventions which comprise potential NYU Patents or
JOINT Patents.
f. All NYU Patents and JOINT Patents shall be filed, prosecuted and
maintained at the expense of CORPORATION.
g. If at any time during the term of this Agreement CORPORATION decides
that it is undesirable as to one or more countries, to prosecute or
maintain any potential or issued NYU Patents or JOINT Patents,
CORPORATION shall give prompt written notice thereof to NYU, and upon
receipt of such notice CORPORATION shall be released from its
obligation to bear all of the expense to be incurred thereafter as to
such countries in conjunction with such patent(s) or patent
application(s), and NYU shall have the right to prosecute and maintain
such patents at NYU's sole expense.
h. Nothing herein contained shall be deemed to be a warranty by NYU that
-15-
i) NYU can or will be able to obtain any patent or patents on any
patent application or applications in the NYU Patents or any portion
thereof, or that any of the NYU Patents will afford adequate or
commercially worthwhile protection, or
ii) that the manufacture, use, or sale of any element of the
Research Technology or any Licensed Product will not infringe any
patent(s) of a third party.
7. Grant of License.
a. Subject to the terms and conditions hereinafter set forth, and subject
to any rights of the United States Government pursuant to Title 35 of
the United States Code ss.200 et seq., NYU hereby grants to
CORPORATION and CORPORATION hereby accepts from NYU the License.
b. The period of the License shall be determined on a country-by-country
basis and on a Licensed Product-by-Licensed Product basis and shall be
for the longer of (i) fifteen (15) years after first commercial sale
after regulatory approval in such country of the respective Licensed
Product by CORPORATION, or CORPORATION's sublicensees, or (ii) until
the last to expire of the NYU Patents or the JOINT Patents in such
country, and, thereafter, in the case of (i) or (ii), CORPORATION's
license
-16-
hereunder with respect to the Licensed Product shall be a fully
paid-up irrevocable license without payment of additional royalties.
The CORPORATION shall inform NYU in writing of the date of first
commercial sale after regulatory approval of each Licensed Product in
each such country as soon as practicable after the making of such
commercial sale.
c. CORPORATION shall be entitled to grant sublicenses under the License
on terms and conditions in compliance and not inconsistent with the
terms and conditions of this Agreement (i) to a CORPORATION Entity or
(ii) to other third parties for consideration and in an arms-length
transaction. All sublicenses shall only be granted by CORPORATION
under a written agreement, a copy of which, with certain financial
terms deleted, shall be submitted by CORPORATION to NYU as soon as
practicable after the signing thereof. Each sublicense granted by
CORPORATION hereunder shall be subject and subordinate to the terms
and conditions of this Agreement and shall contain (inter-alia) the
following provisions:
(1) the sublicense shall expire automatically on the termination
of the License; provided, however that upon such termination, the
sublicensee shall have the right to enter into a licensing agreement
with NYU upon the same terms and conditions as in this Agreement.
(2) the sublicense shall not be assignable, in whole or in part
except to an Affiliate of the sublicensee;
-17-
(3) the sublicensee shall not grant further sublicenses except to
an Affiliate of the sublicensee; and
(4) both during the term of the sublicense and thereafter the
sublicensee shall be bound by a secrecy obligation similar to that
imposed on CORPORATION in Section 17 below, and that the sublicensee
shall bind its employees, both during the terms of their employment
and thereafter, with a similar undertaking of secrecy.
(5) the sublicense agreement shall include the text of Section 15
and 16 of this Agreement and shall state that NYU is an intended third
party beneficiary of such sublicense agreement for purposes of
enforcing such indemnification and insurance provisions.
8. Development and Commercialization.
a. CORPORATION undertakes to use reasonable diligence to carry out the
Development Plan, including but not limited to, the performance of all
efficacy, pharmaceutical, safety, toxicological and clinical tests,
trials and studies and all other activities necessary in order to
obtain the approval of the FDA for the production, use and sale of the
Licensed Products, all as set forth in the Development Plan and within
all timetables set forth therein. CORPORATION further undertakes to
exercise due diligence and to employ its reasonable diligence to
obtain or to
-18-
cause its sublicensees to obtain, the appropriate approvals of the
health authorities for the production, use and sale of the Licensed
Products, in each of the other countries of the world in which
CORPORATION or its sublicensees intend to produce, use, and/or sell
Licensed Products.
b. Provided that applicable laws, rules and regulations require that the
performance of the tests, trials, studies and other activities
specified in subsection a. above shall be carried out in accordance
with FDA Good Laboratory Practices and in a manner acceptable to the
relevant health authorities, CORPORATION shall carry out such tests,
trials, studies and other activities in accordance with FDA Good
Laboratory Practices and in a manner acceptable to the relevant health
authorities. Furthermore, the Licensed Products shall be produced in
accordance with FDA Good Manufacturing Practice ("GMP") procedures in
a facility which has been certified by the FDA as complying with GMP,
provided that applicable laws, rules and regulations so require.
c. CORPORATION undertakes to begin the regular commercial production,
use, and sale of the Licensed Products in good faith in accordance
with the Development Plan and to continue diligently thereafter to
commercialize the Licensed Products.
d. CORPORATION shall provide NYU with written reports on all activities
and actions undertaken by CORPORATION to develop and commercialize the
Licensed Products; such reports shall be made
-19-
within sixty (60) days after each six (6) months of the duration of
this Agreement, commencing six months after the Effective Date.
e. If CORPORATION shall not commercialize the Licensed Products within a
reasonable time frame, unless such delay is necessitated by FDA or
other regulatory agencies or unless NYU and CORPORATION have mutually
agreed to amend the Development Plan because of unforeseen
circumstances, NYU shall notify CORPORATION in writing of
CORPORATION's failure to commercialize and shall allow CORPORATION
sixty (60) days to cure its failure to commercialize. If CORPORATION
falls to cure such delay to NYU's reasonable satisfaction, NYU shall
have the right, upon written notice to CORPORATION, solely at NYU's
discretion, either to terminate this Agreement or to convert the
License granted herein to a non-exclusive license.
f. CORPORATION shall deliver to NYU a sample of each BPI Product
developed by CORPORATION promptly after its development. NYU shall use
such samples only for research purposes and shall not give them to
others, unless and until such BPI Products are in the public domain or
unless authorized by CORPORATION in writing.
9. Payments for License.
a. In consideration for the grant of the License hereunder, CORPORATION
shall pay to NYU
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(1) A non-refundable, non-creditable license issue fee of [*] payable
as follows: [*] on the date that is twenty-four months after the
Effective Date or upon CORPORATION's first filing of an
Investigational New Drug ("IND") in the United States with
respect to the Licensed Products, whichever is earlier; and
(2) Non-refundable, milestone payments as follows: [*], which amount
shall not be creditable against further royalties otherwise
payable to NYU; and, on [*] of which amount shall be creditable
against future royalties otherwise payable to NYU; and
(3) a royalty of [*] of the Net Sales of any Licensed Product sold by
CORPORATION or its sublicensees (including CORPORATION Entity)
for as long as CORPORATION maintains the License except as
follows in i) and ii) below:
(i) If a Licensed Product described in Section 1.1.(aa) or
(bb) is covered solely by an NYU Patent having
-21-
claims directed to the cDNA as described in subparagraph l.e.(iv)
then the royalty owed by CORPORATION shall be reduced by [*].
(ii) If a Licensed Product described in Section 1.1.(aa) or
(bb) is covered solely by an NYU Patent having claims directed to
the cDNA as described in subparagraph l.e.(i)(4) and a third
party is producing and selling a BPI Product by a manufacturing
process using means other than such claimed cDNA then CORPORATION
shall have no royalty obligation with respect to such Licensed
Product.
(4) a royalty of [*] of the Net Sales of any Licensed Product
described in Section 1.1.(cc) or (dd) and sold by COPORATION or
its sublicensees (including CORPORATION Entity) for as long as
CORPORATION maintains the License except as follows in i) and ii)
below:
(i) If a Licensed Product in Section 1.1.(cc) or (dd) is covered
solely by a CORPORATION Patent having claims directed to the
cDNA as described in Section 1.r.(i)(4) then the royalty
owed by the CORPORATION to NYU shall be reduced by [*].
(ii) If a Licensed Product in Section 1.1.(cc) or (dd) is covered
solely by an NYU Patent having claims directed to the cDNA
as described in Section 1.r.(i)(4) and a third party is
producing and selling a P15 Product by a manufacturing
process using means other than such
-22-
claimed cDNA then CORPORATION shall have [*] with respect to
such Licensed Product.
(5) If any Licensed Product is covered solely by a CORPORATION Patent
then the royalty owed by the CORPORATION to NYU with respect to
such Licensed Product shall be [*] of the Net Sales of such
Licensed Product sold by CORPORATION or its sublicensees
(including CORPORATION Entity) for as long as CORPORATION
maintains the License.
b. For the purpose of computing the royalties due to NYU hereunder, the
year shall be divided into two parts ending on June 30 and December
31. CORPORATION shall, within forty-five (45) days from the end of
each December and June in each calendar year during the term of the
License, submit to NYU a full and detailed report of royalties or
payments due NYU under the terms of this Agreement for the preceding
half year (hereinafter "the Part-Year Report"), setting forth the
following:
i) gross sales of Licensed Products and Combination Products, i.e.,
the amount invoiced prior to any deductions,
ii) the deductions permitted under subsection 1.m. hereof to arrive
at Net Sales, and
iii) the royalty computations and subject of payment.
In determining Net Sales of Combination Products, Net Sales will be
multiplied by the percent value of BPI Product and/or the P15
-23-
Product contained in the Combination Product. Such percent value being
the quotient obtained by dividing the costs of manufacturing the BPI
Product and/or the P15 Product by the sum of the cost of the
manufacturing of the BPI Product and/or the P15 Product plus other
biologically active ingredients. All such costs of manufacturing shall
be calculated in accordance with generally accepted accounting
practices and audited by an independent certified public accountant.
If no royalties are due, a statement shall be sent to NYU stating such
fact. The full amount of any royalties or other payments due to NYU
for the preceding part of the year shall accompany each such report on
royalties and payments. CORPORATION shall keep and shall cause its
sublicensees to keep for a period of at least three (3) years after
the date of entry, full, accurate and complete books and records
consistent with sound business and accounting practices and in such
form and in such detail as to enable the determination of the amounts
due to NYU from CORPORATION pursuant to the terms of this Agreement.
c. On reasonable notice and during regular business hours, NYU shall have
the right to have the books of accounts, records and other relevant
documentation of CORPORATION or of Corporation Entity inspected by
independent auditors as set forth herein. If NYU desires to perform
such audit, NYU shall notify CORPORATION. Within fourteen (14) days
after receipt of such notice, CORPORATION shall designate one of the
"Big-6" accounting firms which does not have CORPORATION as a client
-24-
and shall notify NYU of CORPORATION's designation and NYU shall engage
such accounting firm to perform such audit on NYU's behalf. If
CORPORATION falls to notify NYU of such designated accounting firm
within such fourteen day period, NYU shall have the right to select
and engage any accounting firm to perform such audit on NYU's behalf.
If errors of five percent (5%) or more in NYU's favor are discovered
as a result of such examination, CORPORATION shall reimburse NYU for
the expense of such examination. CORPORATION shall undertake to have
sublicensees of CORPORATION provide audited reports to NYU; if any
sublicensee does not provide such reports to NYU, CORPORATION shall
have conducted, at no expense to NYU, an audit of such sublicensee's
records with respect to the production, marketing and sale of Licensed
Products and Combination Products every two years, commencing two
years after the effective date of such sublicensee's agreement with
CORPORATION.
d. If a patent license from a third party is necessary for the
manufacture or sale of a Licensed Product or Combination Product,
CORPORATION shall be entitled to deduct from royalties which would
otherwise be due to NYU under Section 9.a.(3) and/or 9.a.(4) hereof,
the amount of royalties which CORPORATION must pay to such third party
for such license. This deduction, however, shall not exceed [*] of the
royalties otherwise due under this Agreement.
-25-
e. [*]
f. In the event that NYU exercises its right to convert the License
granted herein to a non-exclusive license pursuant to Sections 8.e. or
9.f., the parties shall negotiate in good faith a reduction of the
royalties stated in Sections 9.a.(3), 9.a.(4) and 9.e., at a rate
commensurate with a non-exclusive license effective prospectively from
the date such negotiated reduction is reduced to writing and signed by
both parties.
-26-
g. In the event the License granted herein is converted to a
non-exclusive license pursuant to Section 9.e. and NYU grants a
nonexclusive license to practice the Research Technology to a third
party, NYU shall advise CORPORATION as to those terms which are
different in such other license agreement(s), whereupon CORPORATION
may determine whether such terms are more favorable than those granted
to CORPORATION. CORPORATION shall, at its election, be entitled upon
written notice to NYU to have this Agreement amended to substitute all
terms of such more favorable license for all terms of this Agreement
as of the date upon which such more favorable license shall have
become effective. Such amendment shall, as to royalty, apply only to
prospective royalties.
10. Method of Payment.
a. Royalties and any other payments due to NYU hereunder shall be paid to
NYU in United States dollars. Any royalties and such payments that
accrue in a foreign currency shall be converted into United States
dollars based on the closing buying rate of the ▇▇▇▇▇▇ Guaranty Trust
Company of New York applicable to transactions under exchange
regulations for the particular currency on the last business day of
the accounting period for which payment is due.
b. CORPORATION shall be responsible for payment to NYU of all royalties
due on sale, transfer or disposition of Licensed Products by the
sublicensees of CORPORATION.
-27-
11. Publication.
a. Prior to submission of publication of a manuscript describing the
results of any aspect of the NYU Research Project, NYU shall send
CORPORATION a copy of the manuscript to be submitted, and shall allow
CORPORATION sixty (60) days from the date of receipt to determine
whether the manuscript contains such subject matter for which patent
protection should be sought prior to publication of such manuscript,
for the purpose of protecting an invention made by the NYU Scientists
during the course and within the term of the NYU Research Protect.
Should CORPORATION believe the subject matter of the manuscript
contains a patentable invention, then prior to the expiration of sixty
(60) days from the receipt date of such manuscript to CORPORATION by
NYU, CORPORATION shall give written notification to NYU of its
determination that such manuscript contains patentable subject matter
for which patent protection should be sought.
b. After the expiration of sixty (60) days from the date of receipt such
manuscript to CORPORATION, unless NYU has received the written notice
specified above from CORPORATION, NYU shall be free to submit such
manuscript for publication to publish the disclosed research results
in any manner consistent with academic standards.
c. Upon receipt of such written notice from CORPORATION, NYU will
thereafter delay submission of the manuscript for an
-28-
additional period of up to ninety (90) days to permit preparation and
filing of U.S. patent application by NYU on the subject matter to be
disclosed in such manuscript. After expiration of such 90-day period,
or the filing of a patent application on each such invention,
whichever shall occur first, NYU shall be free to submit the
manuscript and to publish the disclosed results.
12. Infringement of NYU Patent.
a. In the event a party to this Agreement acquires information that a
third party is infringing one or more of the NYU Patents and/or the
JOINT Patents and CORPORATION Patents, the party acquiring such
information shall promptly notify the other party to the Agreement in
writing of such infringement.
b. In the event of an infringement of the NYU Patents and/or the JOINT
Patents, CORPORATION shall be privileged but not required to bring
suit against the infringer, and to join NYU as a party plaintiff in
such suit. Should CORPORATION elect to bring suit against an infringer
and NYU is joined as a party plaintiff in any such suit, NYU shall
have the right to approve the counsel selected by CORPORATION to
represent CORPORATION. The expenses of such suit or suits that
CORPORATION elects to bring, including any expenses of NYU incurred in
conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by CORPORATION and CORPORATION
shall hold NYU
-29-
free, clear and harmless from and against any and all costs of such
litigation, including attorneys' fees. CORPORATION shall not
compromise or settle such litigation in which NYU is joined as a party
plaintiff without the prior written consent of NYU which shall not be
unreasonably withheld.
c. In the event CORPORATION exercises the right to sue herein conferred,
it shall have the right to first reimburse itself out of any sums
recovered in such suit or in settlement thereof for all costs and
expenses of every kind and character, including reasonable attorneys'
fees, necessarily involved in the prosecution of any such suit, and if
after such reimbursement, any funds shall remain from said recovery,
CORPORATION shall promptly pay to NYU an amount equal to fifty percent
(50%) of such remainder and CORPORATION shall be entitled to receive
and retain the balance of the remainder of such recovery. If
CORPORATION is not fully reimbursed for the costs and expenses of
litigation from said recovery, CORPORATION shall have the right to
deduct from royalties otherwise due to NYU, an amount equal to fifty
percent (50%) of such unreimbursed costs and expenses, provided,
however, that such deduction when combined with any other deduction
against royalties permitted under this Agreement, shall not at any
time exceed fifty percent (50%) of the royalties payable to NYU on
each payment date.
d. If CORPORATION does not bring suit against said infringer pursuant to
Section 12.b. herein, or has not commenced
-30-
negotiations with said infringer for discontinuance of said
infringement, within 90 days after receipt of such notice, NYU shall
have the right, but shall not be obligated, to bring suit for such
infringement and to join CORPORATION as a party plaintiff, in which
event NYU shall hold CORPORATION free, clear and harmless from and
against any and all costs and expenses of such litigation, including
attorneys' fees. If CORPORATION has commenced negotiations with an
alleged infringer of the NYU Patent and/or the JOINT Patents for
discontinuance of such infringement within such 90-day period,
CORPORATION shall have an additional ninety (90) days from the
termination of such initial 90-day period to conclude its negotiations
before NYU shall bring suit for such infringement. In the event NYU
brings suit for infringement of the NYU Patents and/or the JOINT
Patents, NYU shall have the right to first reimburse itself out of any
sums recovered in such suit or settlement thereof for all costs and
expenses of every kind and character, including reasonable attorneys'
fees necessarily involved in the prosecution of such suit, and if
after such reimbursement, any funds shall remain from said recovery,
NYU shall promptly pay to CORPORATION an amount equal to fifty percent
(50%) of such remainder and NYU shall be entitled to receive and
retain the balance of the remainder of such recovery.
e. Each party shall always have the right to be represented by counsel of
its own selection in any suit for infringement of
-31-
the NYU Patents and/or the JOINT Patents instituted by the other party
to this Agreement under the terms hereof. The expense of such counsel
shall be borne by the party initiating such infringement suit.
f. CORPORATION agrees to cooperate fully with NYU at the request of NYU,
including, by giving testimony and producing documents lawfully
requested in the course of a suit prosecuted by NYU for infringement
of the NYU Patents and/or the JOINT Patents provided NYU shall pay all
reasonable expenses (including attorneys' fees) incurred by
CORPORATION in connection with such cooperation. NYU shall cooperate
and shall endeavor to cause the NYU Scientists to cooperate with
CORPORATION in the prosecution of a suit by CORPORATION for
infringement of the NYU Patents and/or the JOINT Patents, provided
that CORPORATION shall pay all reasonable expenses (including
attorneys' fees) involved in such cooperation.
g. In the event that there is infringement of the NYU Patents and/or the
JOINT Patents on a commercial scale and neither NYU nor CORPORATION
desire to prosecute an action for infringement and an independent
patent attorney selected upon mutual agreement of NYU and CORPORATION
recommends that an action for infringement not be brought, NYU and
CORPORATION shall negotiate in good faith a reduction to the royalties
stated in Sections 9.a.(3) and 9.f., which reduction shall be
effective prospectively, from the date such negotiated reduction is
reduced to writing and signed by both parties.
-32-
13. Term and Termination.
a. Unless terminated pursuant to this Section 13 or Sections 8.e. or 9.f.
hereof, this Agreement shall expire on the expiration of the period of
the License as set forth in Section 7.b. above.
b. Six months after the Effective Date, CORPORATION shall have the right
to terminate this Agreement at any time upon six month's prior written
notice to NYU
c. At any time prior to expiration either party may terminate this
Agreement forthwith for cause by giving written notice to the other
party. Cause for termination of this Agreement shall be deemed to
exist if either NYU or CORPORATION materially breaches or defaults in
the performance or observance of any of the provisions of this
Agreement and such breach or default is not cured within sixty (60)
days or, in the case of failure to pay any amounts due hereunder,
thirty (30) days (unless otherwise specified herein) after the giving
of notice by the other party specifying such breach or default, or if
either NYU or CORPORATION discontinues its business or becomes
insolvent or bankrupt.
d. Upon termination of this Agreement for any reason prior to expiration
as set forth in Section 13.a. hereof, all rights in and to the
Research Technology shall revert to NYU, and CORPORATION shall not be
entitled to make any further use whatsoever of the Research Technology
and shall not make, use or sell BPI Products and P15 Products.
-33-
e. Upon termination of this Agreement for any reason prior to expiration
of the License as set forth in Section 13.a., CORPORATION shall
promptly grant to NYU, without consideration, an exclusive license,
with the right to sublicense, all of the right, title and interest of
CORPORATION in and to any JOINT Patents and CORPORATION Patents and
the provisions of Section 14 shall apply.
f. Any amount payable hereunder by one of the parties to the other, which
has not been paid by its due date of payment shall bear interest from
its due date of payment until the date of actual payment, at the rate
of two percent (2%) per annum in excess of the Prime Rate prevailing
at the Citibank, Inc., New York, New York, during the period of
arrears and such amount and the interest thereon may be set off
against any amount due, whether in terms of this Agreement or
otherwise, to the party in default by any non-defaulting party.
g. Termination of this Agreement shall not relieve the parties of any
obligation occurring prior to such termination.
h. Sections 1, 9, 13, 14, 15, 16, 17.b., and 17.c. hereof shall survive
and remain in full force and effect after any termination,
cancellation or expiration of this Agreement.
14. CORPORATION's Contingent Right to Royalties.
Upon termination of this Agreement pursuant to Section 13., the following
provisions shall apply:
-34-
a. NYU and CORPORATION shall continue to file, prosecute and maintain the
JOINT Patents and NYU and CORPORATION shall share the expenses
associated with such filing, prosecution and maintenance of such
patent. NYU shall not abandon NYU Patents and CORPORATION shall not
abandon CORPORATION Patents without first providing notice and an
opportunity to the other party to assume prosecution or maintenance of
such patents.
b. NYU shall have the right, but shall not be obligated, to license one
or more third parties the JOINT Patents and CORPORATION Patents,
subject to CORPORATION's rights as defined below.
c. With respect to any JOINT Patent and/or CORPORATION Patent which NYU
licenses to a third party, CORPORATION shall be entitled to receive
[*] of any royalties or other consideration received by NYU and
attributable to the JOINT Patents and CORPORATION Patent from such
third party in consideration of a license to practice such Patents.
15. CORPORATION's Indemnification.
a. CORPORATION shall, at all times during the term of this Agreement and
thereafter, defend, indemnify and hold harmless NYU and its trustees,
officers, agents, employees, faculty and students from and against any
and all liability, loss, damages and expenses (including attorneys'
fees), they may suffer as the result of claims, demands, costs or
judgments which may be made or
-35-
instituted against them or any of them arising out of the manufacture,
distribution, use, testing, sale or other disposition by CORPORATION
or any Corporation Entity, distributor, customer, sublicensee or
representative of CORPORATION or anyone in privity therewith, of any
BPI Products, or any method or process licensed by NYU to CORPORATION
hereunder or out of any representation made by CORPORATION pursuant to
Section 19 of this Agreement. CORPORATION's obligation to defend,
indemnify and hold harmless shall include, but not be limited to,
claims, demands, costs or judgments, whether for money damages or
equitable relief by reason of: alleged personal injury (including
death) to any person; alleged property damage; alleged infringement of
any United States or foreign patent, copyright or other proprietary
rights. b. NYU agrees to notify CORPORATION as soon as NYU becomes
aware of a claim or action for which indemnification may be sought
pursuant to this Section 15. At NYU's request, CORPORATION shall
provide attorneys to defend against any claim or action with respect
to the subject of indemnity contained herein, whether or not such
claims are rightfully brought or filed.
16. Security for Indemnification.
a. CORPORATION shall not sell any BPI products nor manufacture, have
manufactured, market or distribute, any BPI Products for commercial
sale, nor grant any rights to
-36-
a third party to sell BPI Products or to make, have made, distribute
or market any BPI Products for commercial sale unless CORPORATION
shall have first:
i) provided NYU with a certificate of insurance proving the
CORPORATION or such third party has in force, during the term of
this Agreement, a policy of insurance acceptable to NYU which:
(a) is drawn in an amount not less than five million dollars
($5,000,000) for each occurrence as a combined single limit
for bodily injury including personal injury and death and
property damage; and
(b) is endorsed to name NYU, CORPORATION, CORPORATION's
sublicensees and their respective partners, trustees,
officers, directors, employees, agents and students as
additional insureds under such policy of insurance with
respect to CORPORATION's obligations to indemnify pursuant
to Section 15; and
(c) which contains a stipulation that the required coverage will
not be reduced, materially altered or cancelled without
first giving sixty (60) days prior written notice to NYU's
Director of Insurance at NYU; or
-37-
ii) provided NYU written evidence acceptable to NYU (at the
individual full discretion of NYU) that CORPORATION has
sufficient financial resources to support meaningfully the
indemnification obligations undertaken in Section 15; or
iii) provided NYU with CORPORATION's warranty and representation (and
upon request by NYU, evidence acceptable to NYU) that
CORPORATION's net worth (excluding intangible assets) during the
term of this Agreement is in excess of five million dollars
($5,000,000), as determined in accordance with accounting
principles generally accepted in the United States and
consistently applied; or
iv) provided NYU, with a written guarantee and undertaking in form
satisfactory, on a reasonable basis, to NYU by a party having
sufficient financial resources to support the indemnification
obligations undertaken in Section 15. Such party shall be
required to execute in form satisfactory, on a reasonable basis,
to NYU a guarantee and undertaking to:
(a) provide defense and indemnification to NYU pursuant to
Section 15 hereof;
(b) maintain at all times required by Section 16.b. hereof
sufficient insurance or self-insurance to indemnify NYU
pursuant to Section 15;
(c) upon written
-38-
request of NYU provide evidence satisfactory, on a
reasonable basis, to NYU that such party maintains such
insurance or self-insurance, and (d) appoint an agent for
service of process in the United States and consent to
jurisdiction in the federal and state courts of New York.
With respect to such third parties in each instance, NYU and
CORPORATION shall negotiate in good faith to determine the
nature and extent of the financial resources necessary to
constitute "sufficient financial resources" for purposes of
this Section 16.a.(iv).
b. Unless waived in writing by NYU, CORPORATION agrees that the liability
insurance policy or policies referred to in Section 16.a. above shall
be maintained in force for so long as this Agreement remains in force
and for six (6) years thereafter or as long as CORPORATION or such
third party shall make, use or sell BPI Products, and for six (6)
years thereafter, whichever shall be longer. Neither CORPORATION nor
any third party shall terminate, reduce the face value of, or
otherwise materially modify such insurance coverage during the
aforementioned period of time, unless equal or greater coverage is
provided under another policy in compliance with the foregoing
provisions and without a gap in coverage.
-39-
17. Confidential Information.
a. Except as otherwise provided in Section 11 above and in Section 17.c.
below, NYU shall maintain any and all of the Research Technology and
the JOINT Patents in confidence and shall not release or disclose any
tangible or intangible component thereof to any third party without
first receiving the prior written consent of CORPORATION to said
release or disclosure.
b. Except as provided in Section 17.c. below CORPORATION shall maintain
any and all of the Research Technology and the JOINT Patents in
confidence and shall not release or disclose any tangible or
intangible component thereof to any third party without first
receiving the prior written consent of NYU to said release or
disclosure.
c. The obligations of confidentiality set forth in Sections 17.a. and b.
shall not apply to any component of the Research Technology and the
JOINT Patents which is part of the public domain prior to the
Effective Date of this Agreement or which becomes a part of the public
domain not due to some unauthorized act by or omission of the
receiving party after the Effective Date of this Agreement or which is
disclosed to the receiving party by a third party who has the right to
make such disclosure.
d. The provisions of Section 17.b. notwithstanding, CORPORATION may
disclose the Research Technology and the JOINT Patents to third
parties who need to know the same in order to secure Regulatory
Approval for the sale of Licensed Products.
-40-
18. Representation and Covenants.
a. CORPORATION hereby represents and warrants to NYU as follows:
i) CORPORATION is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware.
CORPORATION has been granted all requisite power and authority to
carry on its business and to own and operate its properties and
assets. The execution, delivery and performance of this Agreement
have been duly authorized by the Board of Directors of
CORPORATION.
ii) There is no pending or threatened litigation involving
CORPORATION which would have any effect on this Agreement or on
CORPORATION's ability to perform its obligations hereunder; and
iii) There is no indenture, contract, or agreement to which
CORPORATION is a party or by which CORPORATION is bound which
prohibits or would prohibit the execution and delivery by
CORPORATION of this Agreement or the performance or observance by
CORPORATION of any term or condition of this Agreement.
b. NYU hereby represents and warrants to CORPORATION as follows:
i) Subject to Sections 4.c. and 5.c. above, NYU has the entire
right, title and interest in and to the NYU Patents identified on
Appendix I;
ii) NYU does not own or control any patent or patent application
which covers the making, using or selling
-41-
of BPI Product and/or Combination Product other than as identified on
Appendix I;
iii) NYU has not granted any rights to third parties (including
Genentech, Inc.) in and to the Pre-Existing Inventions, or the BPI
Products. NYU has obtained from ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇ his representation
that he has not entered into or is not presently a party to an
agreement with any third party, including Genentech, Inc. relating to
BPI.
iv) NYU is a corporation duly organized, validly existing and in
good standing under the laws of the State of New York. NYU has been
granted all requisite power and authority to carry on its business and
to own and operate its properties and assets. The execution, delivery
and performance of this Agreement have been duly authorized by the
Board of Trustees of NYU.
19. No Assignment.
CORPORATION shall not have the right to assign, delegate or transfer at any
time to any party, in whole or in part, any or all of the rights, duties
and interest herein granted without first obtaining the written consent of
NYU to such assignment, except that CORPORATION shall have the right to
assign this Agreement subject to all the terms and conditions set forth
herein to a person or entity which acquires control of CORPORATION.
-42-
20. Use of Name.
Without the prior written consent of NYU, CORPORATION shall not use the
name of NYU or of any NYU staff member, employee or student, or any
adaptation thereof;
i) in any advertising, promotional or sales literature;
ii) in connection with any public or private offering or in conjunction
with any application for regulatory approval, unless disclosure is
otherwise required by law, in which case CORPORATION may make factual
statements concerning the Agreement or file copies of the Agreement
after providing NYU with an opportunity to comment and reasonable time
within which to do so on such statement in draft.
Except as provided herein, neither NYU or CORPORATION will issue
public announcements about this Agreement or the status or existence
of the NYU Research Project without prior written approval of the
other party.
-43-
21. Miscellaneous.
a. In carrying out this Agreement the parties shall comply with all
local, state and federal laws and regulations including but not
limited to, the provisions of Title 35 United States Code ss.200 et
seq. and 15 CFR ss.368 et seq.
b. If any provision of this Agreement is determined to be invalid or
void, the remaining provisions shall remain in effect.
c. This Agreement shall be governed and interpreted in all respects under
the laws of the State of Illinois. Any dispute arising under this
Agreement between the parties requiring resolution by legal
proceedings shall be resolved in an action in the state courts or in
the federal courts; if CORPORATION initiates the legal proceedings,
they shall be commenced within the State of New York; if NYU initiates
the legal proceedings, they shall be commenced within the State of
California; the defendant in either such proceeding shall be entitled
to bring a counterclaim and join other parties as a part of that
proceeding. d. All payments or notices required or permitted to be
given under this Agreement shall be given in writing and shall be
effective when either personally delivered or deposited, postage
prepaid, in the United States registered or certified mail, addressed
as follows:
To NYU: New York University Medical Center
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Vice President for
Industrial Liaison
-44-
and
Office of Legal Counsel
New York University
▇▇▇▇▇ Library - 11th Floor
▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Associate General Counsel
To CORPORATION: XOMA CORPORATION
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Office of the
Chief Executive Officer
and
XOMA CORPORATION
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Corporate Secretary
or such other address or addresses as either party may
hereafter specify by written notice to the other. Such notices
and communications shall be deemed to have been received by
the addressee on the date of delivery or fourteen (14) days
after having been sent by registered mail.
e. This Agreement (and the annexed Appendices) constitute the entire
Agreement between the parties and no variation, modification or waiver
of any of the terms or conditions hereof shall be deemed valid unless
made in writing and signed by both parties hereto. This Agreement
supersedes any and all prior agreements or understandings, whether
oral or written, between CORPORATION and NYU.
f. No waiver by either party of any non-performance or violation by the
other party of any of the covenants, obligations or agreements of such
other party hereunder shall be deemed to be a waiver of any subsequent
violation or non-performance of the same or any other covenant,
agreement or obligation, nor shall forbearance by any party be deemed
to be a waiver by such party of its rights or remedies with respect to
such violation or non-performance.
g. The descriptive headings contained in this Agreement are included for
convenience and reference only and shall not be held to expand, modify
or aid in the interpretation, construction or meaning of this
Agreement.
-45-
h. It is not the intent of the parties to create a partnership or joint
venture or to assume partnership responsibility or liability. The
obligations of the parties shall be limited to those set out herein
and such obligations shall be several and not joint.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement the
date and year first above written.
NEW YORK UNIVERSITY
By: /s/▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: Vice President for
Industrial Liaison
Date: Sept 21st, 1993
XOMA CORPORATION
By: /s/▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: Vice President and
General Counsel
Date: September 21, 1993
-46-
APPENDIX I
Title Serial No. Date Priority Status
U.S. Applications
I. Biologically Active 07/084,335 8/11/97 None Abandoned in
Bactericidal/Permeability favor of Ser.
Increasing Protein No. 07/228,335
Fragments
II. Biologically Active 07/228,035 8/5/88 Ser. No. Abandoned in
Bactericidal/Permeability 07/084,335 favor of Ser.
Increasing Protein No. 07/762,730
Fragments (C-I-P of Ser.
No. 084,335)
III. Biologically Active 07/762,730 9/17/91 Ser. Nos. Pending
Bactericidal/Permeability 07/084,335
Increasing Protein and
Fragments (Continuation 07/228,035
of Ser. No. 228,035)
IV. DNA Encoding 07/805,031 12/11/91 Ser. Nos. Issued 3/30/93
Bactericidal/Permeability 07/084,335 as U.S. Patent
Increasing Proteins 07/228,035 No. 5,198,541
(Divisional of Ser. No. 07/762,730
762,730)
V. Biologically Active 07/801,814 12/4/91 Ser. Nos. Pending
Bactericidal/Permeability 07/084,335
Increasing Protein 07/228,035
Fragments (C-I-P of Ser. 07/762,730
No. 762,730)
VI. DNA Encoding 08/007,837 1/22/93 Ser. Nos. Pending
Bactericidal/Permeability 07/084,335
Increasing Proteins 07/228,035
(Continuation of Ser. No. 07/762,730
805,814) 07/801,814
Foreign Applications
Canada 07/574,398 8/11/87 Ser. Nos. Pending
07/084,335
07/228,035
PCT National and Regional Phase
European Patent 88907884.6 2/9/90 Ser. Nos. Pending
07/804,335
07/228,035
Japan 507146/88 8/9/88 Ser. Nos. Pending
07/804,335
07/228,035
APPENDIX I (Cont'd.)
Title Serial No. Date Priority Status
U.S. Applications
I. Biologically Active 07/621,473 12/3/90 Ser. Nos. Abandoned in
Bactericidal/Permeability 07/084,335 favor of Ser.
Increasing Protein 07,228,035 No. 754,204
Fragments (C-I-P of Ser. 07/502,560
No. 228,035 and
502,560)
II. Biologically Active 07/754,204 8/26/91 Ser. Nos. Pending
Bactericidal/Permeability 07/084,335
Increasing Protein 07/228,035
Fragments (C-I-P of Ser. 07/502,560
No. 621,473) 07/621,473
PCT National and Regional Phase
European Patent 92902215.0 6/3/93 Ser. Nos. Pending
France 07/804,335
Germany 07/228,035
United Kingdom 07/506,560
APPENDIX II
Title Serial No. Date Priority Status
U.S. Applications
I. Polypeptides that 07/502,560 3/30/90 Abandoned in
Potentiate favor of
Bactericidal/Permeability Ser. No.
Increasing Protein and 07/767,551
Methods for Treating
Bacterial Infections
II. Polypeptides that 07/767,551 9/26/91 Ser. No. Abandoned in
Potentiate 07/502,560 favor of
Bactericidal/Permeability Ser. No.
Increasing Protein and 07/905,066
Methods for Treating
Bacterial Infections
(Continuation of Ser. No.
07/502,560)
III. Polypeptides that 07/905,066 6/24/92 Ser. Nos. Abandoned in
Potentiate 07/502,560 favor of
Bactericidal/Permeability 07/767,551 Ser. No.
Increasing Protein and 08/023,760
Methods for Treating
Bacterial Infections
(C-I-P of Ser. No.
07/767,551)
IV. Polypeptides that 08/023,760 2/26/93 Ser. Nos. Pending
Potentiate 07/502,560
Bactericidal/Permeability 07/767,551
Increasing Protein and 07/905,066
Methods for Treating
Bacterial Infections
(C-I-P of Ser. No.
07/905,066)
APPENDIX III-A
Amended and Restated Research and License Agreement
Elsbach/▇▇▇▇▇ Research Project for Years 1-3
Objectives:
[*]
1
[*]
2
[*]
3
APPENDIX III-B
NYU RESEARCH PROJECT - FOR YEARS 4-6
[*]
4
[*]
5
[*]
6
[*]
7
[*]
8
[*]
9
APPENDIX IV
Amended and Restated Research and License Agreement
Development Plan
[*]
10
[*]
11
Appendix V
NYU/XOMA
AMENDED AND RESTATED RESEARCH AND LICENSE AGREEMENT
RESEARCH PAYMENT SCHEDULE
XOMA shall pay NYU for work performed on the NYU Research Project during
the fourth through six years of the Research Period the total of [*] in six
installments of [*] each.
The first such payment shall be due within fifteen (15) days after the
signature of this Agreement by the last party to sign ("the Execution Date").
Subsequent payments shall be made every six months after the Execution Date
until the total of [*] is paid.
XOMA may retain [*] of each payment until XOMA receives the written six
month research report provided in accordance with Section 3.c.