Execution Copy
EXHIBIT 10.3
CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY FILED HEREWITH
OMITS THE INFORMATION SUBJECT TO THE CONFIDENTIALITY REQUEST.
OMISSIONS ARE DESIGNATED AS *. A COMPLETE, UNREDACTED VERSION OF
THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
CONTRIBUTION AND LICENSE
AGREEMENT
THIS CONTRIBUTION
AND LICENSE AGREEMENT, including the Exhibits referred to herein
and attached hereto (the “ Agreement ”), is made
and entered into as of April 5, 2005 by and among Exeter Life
Sciences, Inc., an Arizona corporation with offices at 4455 E.
Camelback Road, Phoenix, AZ 85018 (“ ELS ”),
Geron Corporation, a Delaware corporation with offices at 230
Constitution Drive, Menlo Park, CA 94025 USA (“ Geron
”), and stART Licensing, Inc. (“ NewCo ”),
a Delaware corporation having offices at 4455 East Camelback Road,
Suite B100, Phoenix, AZ 85018. ELS, Geron and NewCo will
hereinafter be referred to individually as a “ Party
” and collectively as the “ Parties .” ELS
and Geron will hereinafter be referred to individually as a “
Licensor ” and collectively as the “
Licensors .”
RECITALS
WHEREAS , the Licensors have established NewCo for the
purpose of managing their respective intellectual property and
related rights in the Field (as defined below) pursuant to a
Formation and Shareholders Agreement of even date hereto (“
Formation and Shareholders Agreement ”);
WHEREAS , the Licensors wish to license or assign to NewCo
certain rights under or relating to certain patents and other
intellectual property rights, contract rights and certain other
rights (such licenses and assignments being referred to as the
“ Contribution ”) pursuant to the terms and
conditions hereof, in partial consideration for shares of NewCo to
be issued at the Effective Date pursuant to the Formation and
Shareholders Agreement;
NOW, THEREFORE, in consideration of the mutual covenants and
obligations set forth herein, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties hereby agree as follows:
AGREEMENT
1. DEFINITIONS.
All
capitalized terms shall have the meaning ascribed to them in this
Section 1 or elsewhere in this Agreement. Capitalized terms
not defined herein shall have the meaning ascribed to them in the
Formation and Shareholders Agreement.
1.1
“ Affiliate ” means any Person: (a) that is
controlled by, controls, or is under common control with a Party
(collectively, a “ Controlled Person ”); or
(b) that is controlled by, controls, or is under common
control with any such Controlled Person, in each case for so long
as such control continues. For purposes of this definition, “
control ” shall mean the possession, directly or
indirectly, of power to direct or cause the direction of management
or policies (whether through ownership of securities or other
ownership interests, by contract or otherwise), provided however,
that two companies shall not be deemed to be under common control
by virtue of the possession by one Person of such power with
respect to both companies if (i) such Person exercises such
power solely through delegates, e.g., members of the board of
directors of each such company, and (ii) the delegates for the two
companies are different, and (iii) neither the delegates nor
the Person attempts to coordinate the exercise of such power by the
two delegates. For the purpose of this Agreement, no Party shall be
considered an “Affiliate” of any other
Party.
1.2
“ Change of Control ” means a Party’s
(i) sale, lease, or other disposition of all or substantially
all of its assets, rights or businesses or license or sale of
substantially all of its intellectual property, or the acquisition
of a Party by, or merger, consolidation, reorganization, business
combination of a Party into or with another entity in which the
stockholders of a Party immediately prior to such acquisition,
merger, consolidation, reorganization or business combination do
not own a majority of the outstanding voting shares of the
surviving, purchasing, or newly resulting business entity (a
“ Merger Transaction ”); or (ii) any
transaction or series of related transactions to which a Party is a
party in which in excess of fifty percent (50%) of a Party’s
voting power is transferred, provided, however, any consolidation,
business combination, or merger effected exclusively to change the
domicile of a Party and the issuance of shares by the Party in a
transaction whose primary purpose is to raise capital for a Party
and does not involve any Merger Transaction, shall not be deemed a
Change of Control.
1.3
“ Closing ” has the meaning ascribed to such
term in the Formation and Shareholders Agreement.
1.4
“ Confidential Information ” has the meaning set
forth in Section 14.1.
1.5
“ CT Agreement ” means that certain Exclusive
License Agreement by and between Advanced Cell Technology, Inc., a
Delaware corporation with offices at One Innovation Drive, Biotech
Three, Worcester, MA 01605 (“ ACT ”), and ELS
dated as of October 22, 2003, as amended by the Letter
Agreement between ACT and ELS dated as of October 20, 2003,
and as further amended by the ACT letter signed by ACT and agreed
and accepted by ELS and UMass dated as of October 21,
2003.
1.6
“Discloser” means (i), with respect to Licensor
Confidential Information, the applicable Licensor, and (ii), with
respect to NewCo Confidential Information, NewCo.
1.7
“ Effective Date ” means the Closing (as such
term is defined in the Formation and Shareholders
Agreement).
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1.8
“ Field ” shall mean
(i) cloned
or chimeric mosaic non-human animals, tissues, and cells, and the
creation and production thereof, both transgenic and
non-transgenic;
(ii) all
products or by-products comprised of, made in, produced by, derived
from, extracted from or isolated from such non-human animals,
tissues and cells; and
(iii) all
associated uses of, and services relating to, such non-human
animals, tissues, cells, products and by-products.
The
Field includes by way of example, but not limitation, the cloning
(including, without limitation, by means of nuclear transfer and
chromatin transfer), research, development, making, using, selling,
offering for sale, importing, exporting, or otherwise exploiting
non-human animals, cells and tissues for any personal, business or
commercial purposes, such as cloning endangered, extinct,
transgenic or elite animals for use in agriculture, in
biomanufacturing of products, including pharmaceuticals and other
materials, and in xenotransplantation, and providing animal models
for scientific research and development, and including
technologies, methods, products and services that directly or
indirectly support the cloning of animals. For the purpose of this
definition, the term “chimeric mosaic” is intended to
include animals generated by nuclear or chromatin transfer of
nuclear material into one or more cells of multi-cell embryos and
insertion of nuclear transfer or chromatin transfer generated cells
into multi-cell embryos.
Notwithstanding
the foregoing, (i) during the period beginning as of the
Effective Date and ending upon expiration or termination of the
Noncompete Termination Date (as defined in the Disclosure
Schedule), the Field shall exclude cloned or chimeric mosaic
non-human animals, tissues and cells, and the creation and
production thereof, both transgenic and non-transgenic, and all
products and by products comprised of, made in, produced by,
derived from, extracted from or isolated from such animals, tissues
and cells, in each case for (x) xenotransplantation or (y)
production of polyclonal antibodies in non-human animals and stem
cells (the “ Xenotrans-Antibody Subfield ”), and
(ii) with respect to Patents and Technology Rights governed by
the CT Agreement, the Field shall exclude cloned or chimeric mosaic
Endangered Species animals, tissues and cells, and the creation and
production thereof, both transgenic and non-transgenic, for any and
all purposes, and products and by products comprised of, made in,
produced by, derived from, extracted from or isolated from such
Endangered Species animals, tissues and cells. For the purposes of
this definition, “ Endangered Species ” means
any species that is or has ever been (i) extinct or (ii)
classified as threatened, vulnerable or in danger of extinction
throughout all or a significant portion of its range by any
governmental or international authority, treaty, law or regulation
or (iii) classified under the guidelines of the Convention of
International Trade of Endangered Species of Wild Fauna and
Flora.
1.9
“ Future Technology ” means, with respect to a
Licensor, any and all Technology that is (i) owned, in-licensed or
used by such Licensor, (ii) disclosed or otherwise provided by
such Licensor to NewCo after the Effective Date (regardless
of
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whether or not such Licensor is
obligated to do so), and (iii) not subject to any separate
agreement regarding its use or disclosure between NewCo and any of
the Licensors entered after the Effective Date other than this
Agreement.
1.10 “
Future Technology Rights ” means, with respect to a
Licensor, any and all Technology Rights in, to and under such
Licensor’s Future Technology (i) which are owned by such
Licensor, or (ii) with respect to which, and only to the
extent that, such Licensor has the right to grant the licenses
granted to NewCo under this Agreement without payment of
royalties or license fees to third parties on account of such a
license, or (iii) with respect to which, and only to the
extent that, such Licensor has the right to grant the licenses
granted to NewCo under this Agreement with payment of
royalties or license fees to third parties on account of such a
license and NewCo has agreed to pay such royalties or
license fees; in each of (i), (ii) and (iii), owned or
licensed at any time after the Effective Date.
1.11 “
Governmental Authority ” means any domestic or foreign
government, governmental authority, court, tribunal, agency or
other regulatory, administrative or judicial agency, commission or
organization, and any subdivision, branch or department of any of
the foregoing.
1.12 “
Improvement Patents ” means, with respect to a
Licensor, any and all Patents (i) which are owned by such
Licensor, or (ii) with respect to which, and only to the
extent that, such Licensor has the right to grant the licenses
granted to NewCo under this Agreement without payment of
royalties or license fees to third parties on account of such a
license, or (iii) with respect to which, and only to the
extent that, such Licensor has the right to grant the licenses
granted to NewCo under this Agreement with payment of
royalties or license fees to third parties on account of such a
license and NewCo has agreed to pay such royalties or
license fees; in each case, whether owned or licensed as of the
Effective Date or at any time thereafter and claiming inventions
which are covered by one or more claims of the Original Licensed
Patents.
1.13 “
Licensed Patents ” means the Original Licensed Patents
and the Third-Party Patents.
1.14 “
Licensor Patents ” means the Patents listed on
Exhibit A , and any Related Patents thereof or thereto
(collectively, the “ Original Licensed Patents
”) together with any Improvement Patents.
1.15 “
Licensor Technology ” means, with respect to a
Licensor, any and all Technology, with the exception of the
Third-Party Technology, existing and owned, in-licensed or used by
a Licensor as of the Effective Date that is necessary or without
which it is impracticable to practice, utilize and commercialize
inventions claimed in the Licensed Patents or that is necessary or
without which it is impracticable to conduct activities, or operate
NewCo’s business, within the Field.
1.16 “
Licensor Technology Rights ” means, with respect to a
Licensor, any and all Technology Rights in, to and under Licensor
Technology (i) which are owned by
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such Licensor, or (ii) with
respect to which, and only to the extent that, such Licensor has
the right to grant the licenses granted to NewCo under this
Agreement without payment of royalties or license fees to
third parties on account of such a license, or (iii) with
respect to which, and only to the extent that, such Licensor has
the right to grant the licenses granted to NewCo under this
Agreement with payment of royalties or license fees to third
parties on account of such a license and NewCo has agreed to
pay such royalties or license fees; in each case, owned or licensed
as of the Effective Date..
1.17 “
Original Licensed Patents ” has the meaning set forth
in Section 1.14.
1.18 “
Patent(s) ” means (i) all patents, invention
disclosures, inventor’s certificates and patent applications
throughout the world, together with (ii) any renewal,
division, continuation (in whole or in part), or continued
prosecution application of any of such patents, inventor’s
certificates and patent applications, and any and all patents or
inventor’s certificates issuing thereon, and any and all
reissues, reexaminations, extensions, divisions, renewals,
substitutions, confirmations, registrations, revalidations,
revisions, and additions of or to any of the foregoing, and any
foreign counterparts of any of the foregoing and any other patents
claiming priority back to any of the foregoing (all of
(ii) collectively being “ Related Patents
”).
1.19 “
Person ” means a natural individual, partnership,
firm, corporation, business association, institute, organization,
or other entity.
1.20 “
Pre-existing License Agreements ” means the agreements
and contracts listed on Exhibit D , and any agreements
governing any intellectual property rights arising therefrom (e.g.,
license agreements resulting from the exercise of options or
grant-backs thereunder by the applicable Licensor).
1.21
“Recipient” means (i), with respect to a
Licensor’s Confidential Information, NewCo and the other
Licensor, as applicable, and (ii), with respect to NewCo
Confidential Information, the applicable Licensor.
1.22 “
Retained Licensor Rights ” means (a) the license
rights retained by the United States government and UMass as
described in the UMass Agreement, pursuant to which UMass retains
certain rights under its Third-Party Patents for academic research,
teaching, and non-commercial patient care and the United States
government retains rights under UMass’s Third-Party Patents
as set forth in 35 U.S.C. §§ 201-211, and the regulations
promulgated thereunder, as amended, or any successor statutes or
regulations; (b) rights retained by Roslin as described in the
Geron Roslin Agreements, under which Roslin retains the right,
without Geron’s consent, to engage in research relating to
somatic cell nuclear transfer in non-human animals, alone or in
collaboration with others, and in humans, alone or in collaboration
with nonprofit academic parties, charitable, research and other not
for profit organizations but not in collaboration with any
for-profit organizations, solely for the purpose of such permitted
activities; and (c) the license rights retained by Roslin as
described in the Exeter Roslin Agreement, under which Roslin
retains certain rights under its Third-Party Patents for any
research work.
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1.24 “
Roslin Agreements” means (in each case as may be
amended by the applicable License Consent) (i) the Licence
Agreement between Geron and the Roslin Institute (Edinburgh), a
company incorporated in Scotland under the Companies Acts with
registered number 157100 and having its registered office at Roslin
Biotechnology Centre, Roslin, Edinburgh, Midlothian, EH25, Scotland
(“ Roslin ”) dated as of April 30, 1999, as
amended by the Agreement dated September 30, 2003 (the “
Geron Roslin Licence Agreement ”); (ii) the
Research and Licence Agreement between Geron and Roslin dated as of
May 3, 1999, as amended by the First Amendment to Research and
Licence Agreement dated as of October 1, 2002 and further
amended by the Agreement dated September 30, 2003 (the “
Geron Roslin Research Agreement ” and collectively,
the agreements in (i) and (ii), the “ Geron Roslin
Agreements ”); and (iii) the Licence Agreement
between Roslin and PPL Therapeutics – (Scotland) Limited,
dated as of June 2, 1998, as amended and assigned by PPL
Therapeutics to ELS by the Assignation and Variation Agreement
between and among Roslin, ELS and PPL Therapeutics, dated
December 2003 (the “ Exeter Roslin
Agreement” ).
1.25 “
Technology ” means materials, information, ideas,
inventions and other subject matter, including, without limitation,
works of authorship, products, discoveries, developments,
creations, designs, plans, specifications, drawings, writings,
schematics, documents, reports, notebooks, technical information,
processes, know-how, methods, procedures, concepts, techniques,
technology, biological and chemical materials, compounds and
substances, formulas, compositions, protocols, data and databases
or computer programs.
1.26 “
Technology Rights ” means, throughout the world, any
and all (i) copyrights, author’s rights, related rights
(including without limitation so called “neighboring
rights” and “sui generis” rights), database
rights and similar rights; (ii) rights in, to and under trade
secrets and know-how; and (iii) any other proprietary rights
to technology but specifically excluding Patents, trademarks, trade
names, trade dress, service marks and any rights therein or
thereto.
1.27 “
Third-Party License Agreements ” means the following
agreements, individually or collectively, as applicable in the
context: the Roslin Agreements, the CT Agreement, and the other
license agreements listed in Exhibit C (as may be
amended in writing from time to time).
1.28 “
Third-Party Licensor ” means Roslin, ACT, and their
successors and assigns.
1.29 “
Third-Party Patents ” means (a) those Patents
licensed to a Licensor under a Third-Party License Agreement and
listed in Exhibit B(I) , (b) any Related Patents
thereof or thereto, and (c) any Patents issued or applied for
with respect to the invention disclosures set forth in
Exhibit B(II) hereto; in each of (a), (b), and (c),
only to the extent that a Licensor has the right under the
Third-Party License Agreements or under such Related Patents or
Patents, as applicable, to grant the licenses granted to NewCo
under this Agreement.
6
1.30 “
Third-Party Technology ” means that Technology
licensed by a Third-Party Licensor to a Licensor under a
Third-Party License Agreement.
1.31 “
Transaction Documents ” means this Agreement, the
Formation and Shareholders Agreement, the Management Services
Agreement, License Consents and Preferred Stock Repurchase
Agreement (as such terms are defined in the Formation and
Shareholders Agreement).
1.32 “
UMass Agreement ” means that certain Exclusive License
Agreement between ACT and UMass dated as of April 1,
2003.
1.33 Collective Terms . For purposes of this Agreement,
except as otherwise expressly provided herein or unless the context
otherwise requires: (a) the use herein of the plural shall
include the single and vice versa and the use of the
masculine shall include the feminine; (b) unless otherwise set
forth herein, the use of the term “ including ”
or “ includes ” means “ including
[includes] but [is] not limited to ”; and (c) the
words “ herein ,” “ hereof ,”
“ hereunder ” and other words of similar import
refer to this Agreement as a whole and not to any particular
provision. Additional terms may be defined throughout this
Agreement.
2 PATENT
LICENSES.
2.1 License to NewCo Under Third-Party Patents . Each
Licensor hereby grants, and agrees to grant, to NewCo a worldwide,
exclusive , fully-paid up, royalty-free (except as expressly
set forth in Section 8.9), non-transferable (except as
permitted in Section 15.9) license, with the right to
sublicense in accordance with Section 4, under all of its
rights and interests in the Third-Party Patents under the
Third-Party License Agreement(s), to exercise all rights in, and to
use and practice any process, art or method claimed in or covered
by, and to otherwise commercialize and exploit (in connection with
research and development activities, products, services,
sublicensing, or otherwise) such Third-Party Patents, solely in the
Field, to the maximum extent permitted by such Third-Party License
Agreement(s); provided, however, that the exclusive nature
of the license granted in this Section 2.1 shall be subject to
the applicable Retained Licensor Rights and the rights of the
licensee(s) described in the applicable Pre-existing License
Agreements, if any.
2.2 License to NewCo Under Licensor Patents . Each Licensor
hereby grants, and agrees to grant, to NewCo a worldwide,
exclusive , fully-paid up, royalty free, non-transferable
(except as permitted in Section 15.9) license, under its
Licensor Patents, with the right to sublicense in accordance with
Section 4, to make, have made, use, develop, sell, offer to
sell, lease, distribute, import, export and otherwise dispose of
products, to develop and perform services, to use and practice any
process, art or method, and to otherwise commercialize and exploit
(in connection with research and development activities, products,
services, sublicensing, or otherwise) such Licensor Patents, solely
in the Field; provided, however, that the exclusive nature
of the license granted herein shall be subject to the rights of the
licensee(s) described in the applicable Pre-existing License
Agreements, if any.
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2.3 Third Party Patents. The licenses granted in
Section 2.1 shall be deemed to be sublicenses under the
applicable Third Party License Agreement, and NewCo shall be
subject to all limitations, obligations, and other restrictions, if
any, expressly imposed on sublicensees pursuant to the terms of the
applicable Third Party License Agreement. NewCo shall comply, as if
it were the applicable Licensor, with all limitations, obligations,
and restrictions applicable to Licensor under any Third Party
License Agreement to the extent such limitations, obligations and
restrictions arise out of exercise by NewCo of the license rights
granted to NewCo under Article 2. Notwithstanding the
foregoing, NewCo shall not owe royalties, sublicensee income,
minimum annual royalties, or any other consideration due under
Exeter’s Third-Party License Agreements as a Licensor, but
rather as a sublicensee or affiliate, as applicable, under such
Third-Party License Agreements as set forth in Section 8.9 of
this Agreement.
3 TECHNOLOGY
LICENSES.
3.1 License to NewCo Under Third-Party Technology Rights .
Each Licensor hereby grants, and agrees to grant, to NewCo a
worldwide, exclusive , fully-paid up, royalty-free (except
as expressly set forth in Section 8.9), non-transferable
(except as permitted in Section 15.9) license, with the right
to sublicense in accordance with Section 4, under all of its
Technology Rights in the Third-Party Technology under the
Third-Party License Agreement(s), to exercise all rights in, and to
use and practice any process, art or method embodied by, and to
otherwise commercialize and exploit (in connection with research
and development activities, products, services, sublicensing, or
otherwise), such Third-Party Technology, solely in the Field, to
the maximum extent permitted by such Third-Party License
Agreement(s); provided, however, that the exclusive nature
of the license granted in this Section 3.1 shall be subject to
the applicable Retained Licensor Rights and the rights of the
licensee(s) identified in the applicable Pre-existing License
Agreements, if any.
3.2 License to NewCo Under Licensor Technology Rights . Each
Licensor hereby grants, and agrees to grant, to NewCo a worldwide,
exclusive , fully-paid up, royalty free, non-transferable
(except as permitted in Section 15.9) license, with the right
to sublicense in accordance with Section 4, under all of its
Technology Rights in its Licensor Technology, to make, have made,
use, develop, sell, offer to sell, lease, distribute, import,
export, reproduce, display, perform and otherwise make available
(publicly or otherwise) (subject to Section 14
(“Confidentiality”)), prepare derivatives based upon
and otherwise modify, and otherwise practice, commercialize and
exploit (in connection with research and development activities,
products, services, sublicensing, or otherwise), (i) the
Licensor Technology and (ii) any derivatives thereof or
modifications thereto prepared by or for NewCo in accordance with
the foregoing, in each case solely in the Field; provided,
however, that the exclusive nature of the license granted
herein shall be subject to the rights of the licensee(s) identified
in the applicable Pre-existing License Agreements, if
any.
3.3 License to NewCo Under Licensors’ Future Technology
Rights . Solely for the purpose of NewCo fulfilling its
obligations (or assisting Licensors in fulfilling their
obligations) under the Pre-existing License Agreements, each
Licensor
8
hereby grants, and agrees to
grant, to NewCo a worldwide, non-exclusive , fully-paid up,
royalty-free, non-transferable (except as set forth in
Section 15.9) license, with the right to sublicense in
accordance with Section 4, under such Licensor’s Future
Technology Rights, solely in the Field, to reproduce, distribute,
display and otherwise make available (publicly or otherwise)
(subject to Section 14), prepare derivatives based upon and
otherwise modify, and otherwise practice, commercialize and exploit
(in connection with research and development activities, products,
services or otherwise), (i) such Licensor’s Future
Technology and (ii) any derivatives thereof or modifications
thereto prepared in accordance with the foregoing.
3.4 Third-Party Technology . With respect to any Technology
or Technology Rights of any third party that may be covered by any
of the license(s) in this Section 3, such license(s) shall be
subject to the applicable license limitations, obligations and
other restrictions, if any, expressly imposed on sublicensees
pursuant to the applicable Third Party License Agreement. For the
avoidance of doubt, the licenses granted in Section 3.1 are
considered to be sublicenses under the applicable Third Party
License Agreement. Prior to inclusion of Future Technology or
Future Technology Rights in the licenses in this Section 3,
the Licensor shall notify NewCo in writing of any such limitations
and restrictions with respect to Future Technology or Future
Technology Rights.
4 RIGHTS TO
SUBLICENSE.
NewCo may
sublicense the rights granted to it in Sections 2 and 3 to
third parties, provided that each such sublicensee is bound in
writing by (i) confidentiality obligations with respect to the
Licensors’ Confidential Information that are no less
restrictive than the confidentiality obligations of this Agreement
and, if applicable, a Third-Party License Agreement, and
(ii) in the case of sublicenses of Third-Party Patents and
Third-Party Technology, other terms and conditions setting forth
obligations and limitations that are consistent with those terms
and conditions required to be imposed on sublicensees pursuant to
the applicable Third-Party License Agreement. NewCo will require
its sublicensees to provide written reports setting forth the
calculation of the royalties payable to NewCo, including the number
of licensed products sold in each country, gross sales, deductible
expenses, and net revenues. If NewCo sublicenses any of the
Third-Party Patents set forth in Exhibit B , NewCo will
require those sublicensees to provide a separate accounting for
products covered by such patents, to the extent necessary to permit
royalties payable to Third-Party Licensors to be properly
calculated.
5 OWNERSHIP; RESERVATION OF
RIGHTS.
5.1 Reserved Rights. Each Licensor and NewCo acknowledges
and agrees that each other Licensor retains all right, title and
interest in, to and under its intellectual property rights and
other proprietary rights, subject only to the rights and licenses
expressly assigned or granted herein. For the avoidance of doubt,
except as may be expressly claimed in Patents licensed by a
Licensor under Sections 2.1 and 2.2 hereof, nothing in this
Agreement shall be deemed to constitute a grant of rights to
transdifferentiation technology, telomerase technology, or
embryonic stem cell
9
technology of any Licensor.
Notwithstanding the foregoing, and for the avoidance of doubt, the
rights granted to NewCo pursuant to Sections 2.1, 2.2, 3.1 and
3.2 hereof include the right to employ the Third-Party Patents,
Licensor Patents and Technology Rights in the Licensor Technology
and Third-Party Technology under the Third Party License Agreements
to perform reproductive cloning in the Field.
5.2 No Restriction. Nothing in this Agreement shall in any
way limit or restrict, or be deemed to limit or restrict, the use
or exploitation of any of a Licensor’s rights in, to or under
any of its intellectual property outside the Field. Nothing herein
shall restrict a Licensor from protecting any of its Licensor
Technology under any patent or any other intellectual or industrial
property laws after the Effective Date, and each Licensor shall own
all right, title and interest in, to and under such Licensor
Technology and any related intellectual property rights, subject
only to the rights of NewCo expressly set forth herein.
6 TRANSFER OF PRE-EXISTING LICENSE AGREEMENTS.
6.1
[Intentionally omitted]
6.2
[Intentionally omitted]
6.3 Modification or Replacement of Pre-Existing License
Agreements . NewCo shall use commercially reasonable efforts to
negotiate a new direct license agreement with each licensee under
each Pre-existing License Agreement, except those set forth in the
Disclosure Schedule, to replace the applicable Pre-existing License
Agreement (and the applicable Licensor will cooperate with and
assist NewCo in contacting the licensees and negotiating the new
license agreement and in terminating or amending, as appropriate,
the Pre-existing License Agreement to be replaced). NewCo’s
obligation to negotiate and Licensor’s obligation to
cooperate in any related negotiations shall terminate
12 months after the Effective Date. To the extent that any
Pre-existing License Agreement cannot be replaced with a direct
agreement between the licensee under the Pre-existing License
Agreement and NewCo, then the applicable Licensor will cooperate
with NewCo in a mutually agreeable arrangement under which NewCo
will obtain the benefits under such Pre-existing License Agreement,
including such Licensor assigning such Pre-existing License
Agreement to NewCo, sublicensing or subcontracting to NewCo,
appointing NewCo as its agent to administer and manage the
Pre-existing License Agreement, and enforcing for the benefit of
NewCo the sublicensees’ obligations under the Pre-existing
License Agreement.
6.4
[Intentionally omitted]
6.5 Effect of Termination of Pre-Existing License Agreement
. On termination or expiration (or assignment to NewCo), in whole
or part, of any Pre-existing License Agreement, or any license,
option, or other right granted thereunder, such license or other
right shall automatically be deemed incorporated in the licenses
and rights granted to NewCo under this Agreement (and each Licensor
hereby grants to NewCo a license under all of its rights thereto in
the Field on the terms of this Agreement), subject
10
to the applicable terms, if any,
in the Pre-existing License Agreement or applicable Third-Party
License Agreement affecting such transfer of rights.
7 PATENT PROSECUTION
7.1 Transition .
(a)
Transition Period . Each Licensor shall, at its sole
expense, for a period of ninety (90) days after the Closing
(“ Transition Period ”), (a) continue to
prosecute and maintain its Licensed Patents in the ordinary course
(including without limitation prosecuting any pending interferences
with non-Licensor third parties), consulting closely with and
complying with the reasonable instructions of NewCo with respect to
any filings or communications with patent authorities during such
period, (b) permit NewCo ample opportunity to comment on any
filings and communications with patent authorities during such
period prior to submission; and (c) not abandon the
prosecution of such patents and patent applications or any claims
unless at NewCo’s written direction. A list of the patents
and patent applications to be prosecuted and maintained by Geron
during the Transition Period after Closing are set forth in
Exhibit A and Exhibit B . Each Licensor and
NewCo agree to reasonably cooperate and assist each other in the
transfer of such prosecution from such Licensor to NewCo. Each
Licensor shall provide to NewCo, within thirty (30) days after
the Closing, contact information for any outside counsel and any
prosecution docket listings maintained by such outside counsel, or,
if prosecution is handled internally by such Licensor, such
listings maintained internally, especially those listings
containing information concerning outstanding due dates and
deadlines associated with the patents and applications handled by
such outside counsel or internally by such Licensor. Each Licensor
shall provide to NewCo, within thirty (30) days after the
Closing, all patent and patent application files (including paper
copies and, to the extent available, duplicate electronic copies)
transferred from its outside counsel (or from such Licensor if
handled internally), unless instructed by NewCo otherwise. Each
Licensor shall bear all its own costs and expenses, and those of
its counsel, in copying and delivering records, files and other
materials in connection with transitioning prosecution and
maintenance responsibility for Licensed Patents to NewCo hereunder.
Each Licensor shall cooperate with NewCo to provide copies of any
documents identified by NewCo or discovered by such Licensor to be
missing from files of Licensed Patents provided to NewCo. The
Licensor obligations in this Section 7.1(a) shall apply to
Exeter only to the extent that Exeter has or acquires during the
Transition Period the relevant prosecution and maintenance rights
with respect to its Licensed Patents.
(b)
Pending or other Proceedings . Except as instructed by
NewCo, neither Licensor shall knowingly take any action during the
Transition Period (or thereafter) with respect to any opposition,
inter partes re-examination, or interference (including any
appeal thereof) involving the Licensed Patents that is likely to
adversely affect the value, validity, scope or enforceability of
any Licensed Patents.
7.2 NewCo Prosecution Responsibility . Subject to this
Section 7, commencing from end of the Transition Period, NewCo
shall be solely responsible for
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and shall have sole control over
(subject to any consultation, reporting and similar requirements of
the Third-Party License Agreements) prosecution and maintenance of
the Licensed Patents, except for those indicated on
Exhibit B as excluded from this
Section 7.2.
7.3 Adversarial Actions . Opposition proceedings,
interference proceedings, re-examination proceedings, and appeals
from any of the foregoing involving any of the Licensed Patents
(“ Adversarial Actions ”) that have been
instituted, requested or are on-going as of the Effective Date are
listed in Exhibit E . Each Licensor shall provide to
NewCo, within thirty (30) days after the Closing, all materially
relevant information, filings, correspondence, and other documents
(including, to the extent available, in electronic form) relating
to any such pending or contemplated Adversarial Actions. During the
Transition Period, each relevant Licensor and NewCo shall agree as
to which Adversarial Actions listed in Exhibit E NewCo
shall assume (the “ Assumed Adversarial Actions
”) and how such actions shall be managed by NewCo. Commencing
from the end of the Transition Period, and subject to the
provisions of Section 7.4(c), NewCo shall be solely
responsible for and shall have sole control over (subject to any
consultation, reporting and similar requirements of the Third-Party
License Agreements) the Assumed Adversarial Actions. To the extent
that such actions must be maintained in the name of a Licensor,
each Licensor will reasonably cooperate with NewCo to maintain such
actions at NewCo’s request, subject to reimbursement of
reasonable associated expenses by NewCo. NewCo shall have no
responsibility for Adversarial Actions listed in
Exhibit E not assumed by NewCo.
7.4 Patent Filing
Costs . Commencing from
end of the Transition Period, NewCo (as between each Licensor and
NewCo) shall bear all costs and expenses associated with its
prosecution and maintenance of the Licensed Patents, subject to
Section 7.3 and the following exceptions:
(a) Each
Licensor shall bear its own expenses associated with preparation,
filing, prosecuting and maintaining of patent applications and
patents associated with any Patents outside the Field (e.g.,
continuations, continuations-in-part, divisionals, re-issues or
re-examinations of any Licensed Patents filed to separate human
from non-human claims, and the patent applications and patents
covering inventions applicable to human cloning resulting from such
filings, and all its Patents other than Licensed Patents) and all
the costs and expenses incurred by NewCo (whether incurred during
or after the Transition Period), if any, for filing, prosecution
and maintenance of any continuations, divisions, re-issues,
re-examinations or other applications filed for purposes of
transferring claims outside the Field (e.g., human claims) under
such Licensor’s Licensed Patents to such Licensor’s
control. Each Licensor shall notify NewCo within sixty
(60) days after the Closing of the Patents for which it will
file patent applications to separate human from non-human claims.
If such Licensor filings are not completed before prosecution
control transfers to NewCo at the end of the Transition Period,
NewCo and the Licensor shall cooperate in effecting such
filings.
(b) For
any Licensed Patent having any material applicability outside the
Field, NewCo shall bear only a portion of its costs and expenses
associated with
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filing, prosecuting and
maintaining the Licensed Patent, and the Licensor shall bear, and
reimburse NewCo for, the remainder of such NewCo expenses. The
equitable allocation of such costs and expenses shall be mutually
agreed by the Licensor and NewCo based upon the scope of the claims
in the Licensed Patent in the Field and outside the Field and the
relative value of such claims scope. Except as otherwise provided
in Section 7.4(a) herein, for any Licensed Patent having
material applicability outside the Field, NewCo and the applicable
Licensor shall mutually agree upon the strategy for filing,
prosecuting and maintaining such Licensed Patents.
(c) For
any Adversarial Action involving any Licensed Patent having any
material applicability outside the Field, NewCo shall bear only a
portion of its costs and expenses associated with such Adversarial
Action, and the Licensor shall bear, and reimburse NewCo for, the
remainder of such NewCo expenses. For any Adversarial Action
involving any Licensed Patent having material applicability outside
the Field, NewCo and the applicable Licensor shall mutually agree
upon the strategy for defending and conducting such Adversarial
Action and upon an equitable allocation of such costs, expenses and
any recovery arising from such Adversarial Action. No settlement of
or material concession with respect to such Adversarial Action
shall be made or entered into without Licensor’s or
NewCo’s consent.
(d) In
any event, NewCo shall bear no costs under this Section 7.4 or
Section 7.11 to the extent any third party is obligated to
pay, reimburse or credit a Licensor or Third-Party Licensor
(excluding a Licensor’s obligation to pay, reimburse or
credit a Third-Party Licensor) for any such costs; in such event,
and provided such costs have been incurred by or are owed by NewCo,
such Licensor shall pay over to NewCo any such amounts to the
extent that such amounts are not received by NewCo from such third
party pursuant to Section 6 hereof. Further, NewCo shall
receive the benefit afforded to any Licensor pursuant to a
Third-Party License Agreement with respect to reimbursement of
costs and expenses incurred by NewCo under this Section 7.4
and Section 7.11, and Licensors hereby agree to take all
actions reasonably requested by NewCo to obtain such benefit,
except in each case as may be otherwise agreed by NewCo in
writing.
7.5 Licensor Cooperation .
(a) Each
Licensor shall make reasonable commercial efforts to cooperate
fully with NewCo to effectuate an orderly transition of the
prosecution and maintenance relating to the Licensed Patents and to
cooperate fully with NewCo in the preparation, filing, prosecution,
maintenance and, as applicable, enforcement of all Licensed
Patents. Cooperation includes, without limitation, (i) promptly
executing all papers and instruments or requiring employees of such
Licensor to execute papers and instruments as reasonably
appropriate to enable NewCo to file, prosecute, maintain and
enforce Licensed Patents in any jurisdiction; (ii) making
available to NewCo (or to NewCo’s authorized attorneys,
agents or representatives), such Licensor’s employees, agents
or consultants to the extent necessary or appropriate to enable
NewCo to file, prosecute and maintain patent applications and
resulting patents with respect to Licensed Patents owned or
licensed by a Licensor and for reasonable periods of time
sufficient for
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NewCo to obtain the assistance it
needs from such personnel; and (iii) promptly informing NewCo
of matters that may affect the preparation, filing, prosecution,
future validity, or maintenance of Licensed Patents (such as
becoming aware of material prior art or references thereto or of an
additional inventor who is not listed as an inventor in a patent
application).
(b) If
NewCo requests travel by a Licensor (or its employees, agents or
consultants) in connection with the preceding or, after the
one-year anniversary of the Effective Date, directly requests in
writing substantial legal advice from a Licensor’s outside
legal counsel for which the Licensor is charged or from a
Licensor’s in-house counsel (excluding any charges relating
to file transfer, execution of papers and instruments and similar
costs), NewCo will reimburse the Licensor for its out-of-pocket
direct costs incurred for such travel or legal fees (or in the case
of in-house counsel, the charge allocated to Licensor’s
applicable business division for such in-house counsel’s time
so incurred, in accordance with such Licensor’s standard past
practices), provided Licensor first obtains NewCo approval of the
estimated cost thereof. In order to allow NewCo to efficiently and
economically prepare, file, prosecute, maintain and, as applicable,
enforce the Licensed Patents, the Licensors shall not challenge the
validity, enforceability or scope of the Licensed Patents through
any means, including, without limitation, declaratory judgment
actions, litigation proceedings, opposition proceedings,
interference proceedings, and re-examination proceedings. Except as
otherwise expressly provided for in this Agreement, a
Licensor’s performance of its obligations and exercise of its
rights under this Agreement shall be at the sole expense of such
Licensor.
7.6 NewCo Cooperation . After the Transition Period, NewCo
shall keep each Licensor informed of the status of prosecution of
its Licensed Patents and provide such Licensor with copies of and
the opportunity to comment on associated filings with patent
authorities. NewCo will not unreasonably refuse to accept any
reasonable suggestions of a Licensor’s patent counsel
regarding any filings made by NewCo with a patent authority with
respect to such Licensor’s Licensed Patent, provided that
Licensor’s patent counsel provides such comments to NewCo in
a timely manner (i.e. not less than thirty (30) days prior to
the patent office deadline (excluding extensions) for such filing),
and further provided that accepting such suggestion would not
materially adversely affect the patentability, enforceability, or
validity of claims or the scope of the claims of such patent or
patent application having application within the Field. NewCo
shall, if and to the extent required by any Third-Party License
Agreement, keep the Third-Party Licensor informed of the status of
prosecution of the applicable Third-Party Patents and provide such
Third-Party Licensor with copies of and the opportunity to comment
on associated filings with patent authorities.
7.7 Status Updates . Each Licensor agrees to keep NewCo
informed in a timely manner of the status of its and any
Third-Party Licensor’s (and UMass’, as applicable)
activities relating to any of the Licensed Patents or Technology
licensed to NewCo hereunder (e.g., developments of any on-going
litigation, interference proceedings, or other activities that
could affect the value, validity, or prosecution strategy of the
Licensed Patents) to the extent such Licensor becomes aware of such
activities.
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7.8 Assignment of Prosecution Rights . Subject to
Section 7.3 and 7.4 hereof, each Licensor shall, and if
necessary shall use reasonable commercial efforts to cause any
Third-Party Licensor (and UMass, as applicable) to, execute a power
of attorney for the prosecution and maintenance of the Licensed
Patents, assign to NewCo (in written form reasonably acceptable to
NewCo) all its rights to prosecute and maintain the Licensed
Patents in all jurisdiction(s), and otherwise perform all acts and
make all filings necessary to permit NewCo and its designees to,
effective as of the end of the Transition Period, prosecute,
maintain and enforce each such patent or application in all
jurisdiction(s) and transact all matters connected therewith,
including by way of example but not limitation, controlling
prosecution and resolving all interference, re-examination,
re-issue, and opposition proceedings relating thereto. Such acts
shall include changing the address of the patent attorney of record
with the appropriate patent authorities and, as may be necessary on
an interim or extended basis, appointing NewCo as a
Licensor’s delegatee or agent for the purpose of continuing
to exercise such Licensor’s prosecution, maintenance and
enforcement rights under any of the Third-Party License Agreements
and appointing NewCo’s patent counsel as associate attorneys
of record. The foregoing assignment of rights shall include all
rights to apply for, file, register, prosecute, maintain, extend or
renew the Licensed Patents in all jurisdictions and to settle or
otherwise terminate any interference proceedings, re-examinations,
oppositions, or other challenges to the validity, enforceability or
scope of any Licensed Patent, and the right to bring actions for
past, present or future infringement of or otherwise enforce any of
the Licensed Patents in accordance with Section 7.11 hereof,
and, subject to the terms and conditions of the applicable Third
Party License Agreement regarding reimbursement of a Third-Party
Licensor’s costs and expenses or sharing of recovery with a
Third-Party Licensor, to settle and retain the proceeds of such
actions. Each Licensor shall execute and deliver such additional
documents and perform such additional acts as are necessary, to
establish, perfect, enforce, evidence or otherwise protect
NewCo’s rights under this Se
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