Exhibit 10.1
EXCLUSIVE LICENSE
AGREEMENT
THIS EXCLUSIVE LICENSE
AGREEMENT (“Agreement”) is entered into this
17 th day of November 2006, and shall be
effective as of the date specified in Section 2.7 hereof
(“Effective Date”) by and between CEDARS-SINAI
MEDICAL CENTER , a California nonprofit public benefit
corporation (“CSMC”), with offices at 8700 Beverly
Boulevard, Los Angeles, California 90048-1865, and ImmunoCellular
Therapeutics, Ltd., a Delaware corporation that was formerly named
Optical Molecular Imaging, Inc. (“Licensee”), with
offices at 11 th Floor, 1999 Avenue of the Stars,
Los Angeles, California 90067.
RECITALS
A. CSMC owns Patent Rights and Technical
Information (as defined below) invented or developed in the course
of certain research into the diagnosis of diseases and disorders in
humans and the prevention and treatment of disorders in humans
utilizing cellular therapies, including dendritic cell-based
vaccines for brain tumors and other cancers and neurodegenerative
disorders at CSMC conducted under the direction of Dr. John Yu
(Dr. Yu, hereinafter, “Inventor”; the research,
hereinafter, “Research Project”).
B. CSMC desires to have the Patent Rights and the
Technical Information developed, used and commercialized in the
Field of Use (as defined below) by Licensee, and Licensee desires
to obtain an exclusive, worldwide license to conduct research in
the Field of Use, and to develop, manufacture, use and sell
Products (as defined below) in the Field of Use, using the Patent
Rights and Technical Information in accordance with the terms of
this Agreement. Other than the rights expressly granted by CSMC
hereunder within the Field of Use, Licensee acknowledges that CSMC
shall retain all other rights with respect to the Patent Rights and
the Technical Information.
C. CSMC and Licensee intend that the execution,
delivery and performance of this Agreement by each party, and the
consummation of the transactions contemplated hereunder, shall not
at any time threaten CSMC’s tax-exempt status under
Section 501(c)(3) of the Internal Revenue Code and
Section 23701d of the California Revenue and Taxation Code, or
cause CSMC to be in default under any of CSMC’s issued and
outstanding tax-exempt bonds.
NOW, THEREFORE,
in consideration of the mutual
covenants and premises herein contained, and for other good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto hereby agree as
follows:
Text marked by [ * * *] has been
omitted pursuant to a Request for Confidential Treatment and was
filed separately with the Securities and Exchange
Commission .
1.1 “ Affiliate ” or “
Affiliates ” shall mean any corporation, person or
entity, which controls, is controlled by, or is under common
control with, a party to this Agreement without regard to stock or
other equity ownership. For purposes hereof, the terms
“control” and “controls” mean the
possession, direct or indirect, of the power to direct or cause the
direction of the management and policies of a corporation, person
or entity, whether through the ownership of voting securities, by
contract or otherwise.
1.2 “ Confidential Information ”
shall mean any confidential or proprietary information furnished by
one party (the “Disclosing Party”) to the other party
(the “Receiving Party”) in connection with this
Agreement, including, without limitation, all specifications, know
how, trade secrets, technical information, drawings, software,
models, business information and patent applications pertaining to
the Patent Rights and Technical Information, and as further
provided in Section 10 hereof.
1.3 “ FDA ” shall mean the United
States Food and Drug Administration, or any successor agency
thereof.
1.4 “ Field of Use ” shall mean
cellular therapies or diagnostics utilizing cellular therapies,
including dendritic cell-based vaccines for neurological disorders
including brain tumors and neurodegenerative disorders and other
cancers.
1.5 “ Funding Agencies ” shall
mean any public or private granting agencies which have provided
funding to CSMC or to any of the inventors named on the Patent
Rights for the development of any of the Patent Rights or Technical
Information prior to the Effective Date.
1.6 “ Future Patent Rights ”
shall mean any patents and/or patent applications claiming
Inventions invented after the Effective Date through any use of the
Patent Rights or Technical Information licensed hereunder arising
where such Inventions arise from work conducted by or under the
direction of the Inventor (except in the case of Dr. John Yu
working in his capacity as Licensee’s Chief Scientific
Officer and without using any facilities, resources or personnel of
CSMC), and any patents and/or patent applications (including
provisional patent applications) in any other country corresponding
to any of the foregoing, and all divisions, continuations,
continuations-in-part, reissues, reexaminations, supplementary
protection certificates and extensions thereof, whether domestic or
foreign, and any patent that issues thereon.
1.7 “ Future Technical Information
” shall mean the following information in the Field of Use
developed after the Effective Date through practicing the
Inventions claimed in or otherwise directly arising through any of
the Patent Rights or Technical Information licensed hereunder where
such Inventions or information arises from work conducted by or
under the direction of the Inventor (except in the case of
Dr. John Yu working in his capacity as Licensee’s Chief
Scientific Officer and without using any facilities, resources or
personnel of CSMC): Know-how, trade secrets, unpublished patent
applications, software, bioinformatics, unpatented technology,
technical information, statistical information and analyses,
biological materials, chemical reagents, preclinical and clinical
information, and any and all confidential and proprietary
information described in the Future Patent Rights or Inventions
invented after the Effective Date through any use of the Patent
Rights or Technical Information.
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1.8 “ Invention ” shall mean all
unpatented, patentable and patented inventions, discoveries,
designs, apparatuses, systems, machines, methods, processes, uses,
devices, models, composition of matter, technical information,
trade secrets, know-how, codes, programs or configurations of any
kind which are in the Field of Use.
1.9 “ Licensee Improvements ”
shall mean any and all processes, uses, designs, applications,
methods and compositions of matter, indications, improvements,
enhancements and modifications in the Field of Use directly based
upon or directly created using the Patent Rights and/or Technical
Information and which were discovered or developed by or on behalf
of Licensee (exclusive of work performed by CSMC or the Inventor,
except in the case of Dr. John Yu working in his capacity as
Licensee’s Chief Scientific Officer and without using any
facilities, resources or personnel of CSMC) during the term of this
Agreement.
1.10 “ Patent Rights ” shall mean
the patents and/or patent applications existing on the Effective
Date which are described on Schedule A attached hereto,
and all patents and/or patent applications (including provisional
patent applications) existing as of the Effective Date in any other
country corresponding to any of the foregoing, and all divisions,
continuations, continuations-in-part, reissues, reexaminations,
supplementary protection certificates and extensions thereof,
whether domestic or foreign, and any patent that issues thereon,
excluding any improvements by Dr. John Yu working in his
capacity as Licensee’s Chief Scientific Officer. The Patent
Rights are all owned by CSMC.
1.11 “ Product ” or “
Products ” shall mean any human therapeutics,
diagnostics (including algorithms or any components thereof),
bioinformatics and any other human health care products and/or
services in the Field of Use utilizing or derived in any manner
whatsoever from any of the Patent Rights, Technical Information or
Licensee Improvements, which Product(s), except for the license
granted hereunder, would infringe a Valid Claim.
1.12 “ Technical Information ”
shall mean, as of the Effective Date, the following information in
the Field of Use which is described in the Patent Rights: Know-how,
trade secrets, unpublished patent applications, software,
bioinformatics, unpatented technology, technical information,
statistical information and analyses, biological materials,
chemical reagents, preclinical and clinical information, in each
case which has been conceived or reduced to practice prior to the
Effective Date, in the conduct of the Research Project at CSMC
under the direction of the Inventor. The Technical Information
shall be the information in the Field of Use described in
Schedule B hereto which is embodied in the Patent
Rights and which has been reduced to practice prior to the
Effective Date in the conduct of the aforementioned research
programs at CSMC under the direction of the Inventor. Technical
Information is all owned by CSMC.
1.13 “ Territory ” shall mean the
entire world.
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1.14 “ Valid Claim ” shall mean a
claim of a pending patent application or an issued patent included
within the Patent Rights or Future Patent Rights licensed to
Licensee, which claim has not (a) been pending for longer than
ten (10) years after the first commercial sale of a Product,
(b) lapsed, been canceled or become abandoned, (c) been
declared invalid or unenforceable by a non-appealable decision or
judgment of a court or other appropriate body or authority of
competent jurisdiction, or (c) been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
2.1 Grant of Exclusive Rights. Subject to the
terms of this Agreement, CSMC hereby grants to Licensee, and
Licensee hereby accepts from CSMC, the exclusive, worldwide
license, with the right to grant sublicenses (subject to the terms
of Section 2.2 hereof), during the term of this Agreement (as
provided in Section 6 hereof) to conduct research in the Field
of Use using the Patent Rights and the Technical Information and to
develop, use, make, have made, practice, import, carry out,
manufacture, have manufactured, offer for sale, sell and/or have
sold Products in the Field of Use in the Territory using the Patent
Rights and the Technical Information. The foregoing grant of
exclusivity is made expressly subject to the following:
(a) All applicable laws and regulations, including,
without limitation, the requirements of federal law as pertains to
the manufacture of products within the United States;
(b) All applicable rules of the Funding Agencies
which have provided funding to CSMC or to any of its employees
(including any of the inventors named on the Patent Rights) for the
development of the Patent Rights and Technical Information, with
CSMC disclosing to Licensee concurrently with CSMC’s
execution of this Agreement the specific funding, if any, that has
been provided by any Funding Agency including the National
Institutes of Health, National Brain Tumor Foundation and the
Musella Foundation; and
(c) The following non-exclusive rights to the Patent
Rights and Technical Information, which are retained by CSMC within
the Field of Use:
(i) Subject to Licensee’s right to prior
review to determine the patentability thereof (which shall expire
after thirty (30) days after Licensee’s receipt
thereof), the right to submit for publication the scientific
findings from research conducted by or through CSMC or its
investigators (including the Inventor) related to the Patent Rights
and the Technical Information; and provided further that if
Licensee determines to file a patent application, Licensee shall
have a further thirty (30) day period thereafter to do so, and
CSMC shall delay any publication with respect thereto for that
period.
(ii) Except as provided in subparagraph (d) of
this Section 2.1, the right (A) to use any tangible or
intangible information contained in the Patent Rights or the
Technical Information (so long as CSMC shall treat such information
as Confidential Information and maintain its confidentiality in
accordance with Section 10 hereof), for CSMC’s internal
teaching and other educationally-related and non-commercial (except
for charges to its own patients) clinical purposes, where clinical
use does not involve a third party funding grant to commercialize
such information, and (B) to obtain research funding for
further study and development thereof from governmental and other
nonprofit organizations (including grant applications);
and
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(iii) Except as provided in subparagraph (d) of
this Section 2.1, the right to conduct research using the
Patent Rights, Technical Information, Future Patent Rights and
Future Technical Information, and to develop, use, make, practice,
carry-out, and otherwise exploit the Patent Rights, Technical
Information, Future Patent Rights and Future Technical Information
for CSMC’s internal research and non-commercial (except for
charges to its own patients) clinical purposes, where clinical use
does not involve a third party funding grant to commercialize any
Product.
(d) Except as provided by Sections 2.3 and 2.6
hereof, CSMC shall not, under any circumstances, grant and/or
transfer any rights retained by CSMC under Section 2.1(c) to
any third party (other than to Licensee or, where required by
applicable law, rule, regulation, governmental policy or contract,
to any Funding Agency or the United States Government) to
commercialize Inventions or information related thereto derived
directly from the Patent Rights or the Technical Information in the
Field of Use as a result of CSMC’s teaching and internal
research and clinical activities with respect to the Patent Rights
and Technical Information otherwise permitted by
Sections 2.1(c)(ii) and (iii) above.
(e) Notwithstanding any other provision hereof to
the contrary, all rights to the Patent Rights and the Technical
Information outside of the Field of Use are retained by
CSMC.
(f) The grant of exclusive rights hereunder is made
expressly subject to any non-exclusive license and any option
granted by CSMC to the Torrey Pines Institute of Molecular Studies
(“TPIMS”) per the specific contractual requirements of
the April 4, 2006 Material Transfer Agreement (“TPIMS
MTA”) between CSMC and TPIMS. CSMC has been informed by the
Inventor that the individual peptides included in the Materials (as
defined in the TPIMS MTA) consist solely of superagonist peptides
that are epitopes of gp100 and HER-2 whose sequences are defined in
Schedule C . CSMC shall use commercially reasonable efforts
to reacquire, at its expense, any rights of CSMC licensed to TPIMS
and any option granted to TPIMS pursuant to the specific
contractual requirements of the TPIMS MTA so that CSMC can give
Licensee within six (6) months from the Effective Date an
exclusive license to all of the Patent Rights subject, however, to
a license granted by CSMC to TPIMS for the relevant Patent Rights
limited to academic research and other educationally related,
non-commercial activities. If CSMC is unable to reacquire the
non-academic/educational license rights and terminate the option of
TPIMS as described above within the six-month period, the
parties’ sole remedy shall be that CSMC and Licensee will
negotiate in good faith to determine whether a reduction in the
number of shares of Licensee’s common stock issued to CSMC as
a license fee pursuant to Section 4.1 is reasonable and
appropriate. It is understood and agreed that the grant of a
non-exclusive license to the relevant Patent Rights to TPIMS
limited to academic research and other educationally related
non-commercial activities shall not be considered a basis for
negotiating a possible reduction as provided in the previous
sentence.
2.2 Right to Sublicense or Assign Rights.
Licensee shall have the right to grant sublicenses or to assign any
or all of the rights granted hereunder consistent with this
Agreement; provided, however, that Licensee shall not sublicense or
assign its rights to any part of the Patent Rights or Technical
Information licensed under this Agreement, or assign its rights
under this Agreement, to any entity (or a subsidiary of such
entity) which is not a recognized biopharmaceutical, pharmaceutical
or bio-diagnostic company which
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either (a) at the time of the sublicense or
assignment has annual revenues or a market capitalization for its
equity securities of at least One Hundred Million Dollars
($100,000,000), or (b) is generally recognized in such
industries and has a level of science, management and investors of
such quality as shall be acceptable to CSMC (each, an
“Acceptable Assignee”) on the basis of CSMC’s
prior written consent (which consent shall not be unreasonably
withheld or delayed). In order to preserve and protect the value of
the Patent Rights and Technical Information, Licensee shall obtain
the prior written consent of CSMC prior to entering into any
sublicense or assignment with any party who is not an Acceptable
Assignee under clause (a) above. Licensee shall also keep CSMC
reasonably informed with respect to the progress of any relations
entered into with any sublicenses or assignments entered into by
Licensee with any Acceptable Assignee (or any other party for whom
CSMC has given its prior written consent). As an express condition
of any such sublicense or assignment, any such assignee or
sublicensee shall be required to agree in writing to be bound by
commercially reasonable royalty reporting and record keeping,
indemnification and inspection provisions, and the applicable
provisions of this Agreement, including, without limitation, those
pertaining to the use of CSMC’s name and marks,
indemnification of CSMC and the use of CSMC’s Confidential
Information. Licensee will be responsible for enforcing each
sublicensee’s obligations under its sublicense and, in
particular, royalty payment obligations due on such
sublicensee’s sales of Products. If Licensee shall conduct
one or more audits of its sublicensees or assignees hereunder
during the term hereof, Licensee shall provide copies of all audit
reports to CSMC on a timely basis. The covenants pertaining to the
use of CSMC’s name and marks, the indemnification of CSMC and
the use of CSMC’s Confidential Information in any sublicense
or assignment shall run for the benefit of CSMC, who shall be
expressly stated as being a third-party beneficiary thereof with
respect to the covenants set forth in this Agreement. Licensee
understands and agrees that none of its permitted sublicenses
hereunder shall reduce in any manner any of its obligations set
forth in this Agreement.
2.3 Certain Future
Rights. The following
shall pertain to Inventions which constitute Future Patent Rights
or Future Technical Information: Subject to the rights and
applicable rules of the Funding Agencies and subject to the rights
of TPIMS under the TPIMS MTA and the license described in
Section 2.1(f), Licensee shall have, for a period of one
hundred twenty (120) days after either (a) receipt by
Licensee of written notice from CSMC disclosing in adequate detail
any such Inventions in the Field of Use, or (b) written
notification by the Inventor to each of Licensee and CSMC
disclosing in adequate detail any such Inventions in the Field of
Use, the exclusive first right to negotiate with CSMC to obtain one
or more licenses to the Future Patent Rights in the Field of Use
and/or Future Technical Information in the Field of Use, upon such
terms and conditions as shall be agreed by the parties hereto,
which terms and conditions shall include provisions for fair market
value consideration for the grant of any such licenses. Subject to
the rights and applicable rules of the Funding Agencies or the
United States Government, and to the extent it would not impair or
jeopardize any efforts of CSMC to obtain domestic or foreign rights
thereto, CSMC shall provide Licensee with prompt written disclosure
of Future Patent Rights in the Field of Use and/or Future Technical
Information in the Field of Use as may be developed by CSMC or the
Inventor. If Licensee declines or fails to pursue, or if the
parties fail to conclude negotiations for a license to, such Future
Patent Rights in the Field of Use and/or Future Technical
Information in the Field of Use during the one hundred twenty
(120) day period specified above, then CSMC shall have the
right to commence discussions with any other party concerning such
Future Patent Rights and/or Future Technical Information, but shall
not accept terms from any third party that are less favorable
to
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CSMC than the final offer, if any, made by
Licensee during the one hundred twenty (120) days negotiating
period. Subject to the provisions of this Section 2.3,
Licensee acknowledges and agrees that CSMC expressly retains and
reserves any and all right, title and interest in and to the Future
Patent Rights and Future Technical Information, whether or not in
the Field of Use and, accordingly, no license to any Future Patent
Rights or Future Technical Information is granted to Licensee under
this Agreement. CSMC shall use its reasonable and continuing
efforts during the term of this Agreement, in accordance with its
policies and procedures, where appropriate, to file and maintain
patent applications claiming Inventions in the Field of
Use.
2.4 License to Use Improvements. Licensee
hereby grants to CSMC the following nonexclusive, royalty free,
fully paid up rights and licenses to the Licensee
Improvements:
(a) Subject to Licensee’s right to prior
review to determine the patentability thereof within thirty
(30) days following receipt by Licensee, the right and license
to publish the scientific findings from research conducted by or
through Licensee or on its behalf by CSMC or the Inventor related
to the Licensee Improvements; and provided further that if Licensee
determines to file a patent application, Licensee shall have a
further thirty (30) day period thereafter to do so and
CSMC’s right and license shall be delayed until completion of
that period.
(b) Except as provided below in this
Section 2.4, the right and license to use any tangible or
intangible information contained in the Licensee Improvements (so
long as CSMC shall treat such information as Confidential
Information and maintain its confidentiality in accordance with
Section 10 hereof), for CSMC’s internal teaching and
other educationally-related and non-commercial (except for charges
to its own patients) clinical purposes, where clinical use does not
involve a third party funding grant to commercialize such
information, and to obtain research funding from governmental and
other nonprofit organizations (including grant applications);
and
(c) Except as provided below in this
Section 2.4 and so long as CSMC shall treat such information
as Confidential Information and maintain its confidentiality in
accordance with Section 10 hereof, the right and license to
conduct research using the Licensee Improvements, and to develop,
use, make, practice and carry out the Licensee Improvements for
CSMC’s internal teaching and research and non-commercial
(except for charges to its own patients) clinical purposes, where
clinical use does not involve a third party funding grant to
commercialize any Product.
Except as provided in
Sections 2.3 and 2.6 hereof, CSMC shall not, under any
circumstances, grant and/or transfer any rights granted to CSMC
under this Section 2.4 to any third party (other than to
Licensee or, where required by applicable law, rule, regulation,
governmental policy or contract, to any Funding Agency or the
United States Government) to commercialize Inventions in the Field
of Use resulting directly from the Licensee Improvements as a
result of CSMC’s internal research and clinical activities
with respect to the Licensee Improvements otherwise permitted by
Sections 2.4(b) and (c) above.
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2.5 Milestones. Licensee acknowledges that it
is important to CSMC, and a requirement of the United States
Government under Title 35, Section 203 of the United States
Code, that Licensee pursue the development, commercialization and
marketing of Products and otherwise exercise commercially
reasonable efforts to maximize the value of this Agreement to CSMC.
Licensee shall be deemed to have exercised commercially reasonable
efforts to maximize the value of this Agreement to CSMC if Licensee
has used and is using reasonable efforts to meet the requirements
set forth on Schedule D hereto, with each such
requirement being deemed a separate and independent condition
(each, a “Milestone”). Within sixty (60) days
after each anniversary of the Effective Date, Licensee shall
prepare and deliver to CSMC an annual written report (to be
certified by an executive officer of Licensee) that provides an
overview of Licensee’s progress towards achieving each
Milestone and its other efforts with respect to the ongoing
development, commercialization, and marketing of the Products. If
Licensee fails to meet any Milestone, Licensee will have ninety
(90) days after notice from CSMC to remedy the default or, if
the default is capable of being cured but cannot be remedied within
such ninety (90)-day period, as reasonably determined by CSMC and
Licensee, to develop a written plan for the cure or other
resolution of the default and diligently pursue the same, which
plan is subject to the approval of CSMC, not to be unreasonably
withheld. During any period when a Milestone has been missed,
Licensee will use reasonable diligence to subsequently meet that
Milestone. If Licensee does not so remedy the failure, CSMC may
within ninety (90) days of CSMC’s receipt of such annual
written report, at its option and as its sole remedy for
Licensee’s breach of this Section 2.5, upon written
notice to Licensee, convert the exclusive license granted under
Section 2.1 hereof to a non-exclusive license or to a
co-exclusive license, or terminate the license as provided under
Title 35, Section 203 of the United States Code, which shall
be effective sixty (60) days after such written
notice.
2.6 Procedure for Granting Access
to Technical Information. The grant of rights by CSMC to Licensee pursuant
to Section 2.1 hereof are expressly subject to the following
provisions:
(a) Responsibility for Monitoring
Access to Technical Information. During the term of this Agreement, the
responsibility for monitoring access to the Technical Information
(and any Future Technical Information) in the Field of Use at CSMC
shall be borne by the Inventor or, in the event that all of the
Inventor shall die, become disabled or otherwise cease to be
employees of CSMC for whatever reason, the Senior Vice President
for Academic Affairs of CSMC (or his or her functional equivalent
at CSMC) (the “Gatekeeper”). Subject to
Sections 2.1(c), 2.4 and 3.3 hereof, the Gatekeeper shall not
grant access to the Technical Information or any Future Technical
Information in the Field of Use to any person except as provided in
this Section 2.6, and CSMC’s sole responsibility with
respect to requests for the grant of access to the Technical
Information or any Future Technical Information in the Field of Use
by any person shall be to refer all such requests to the
Gatekeeper.
(b) Conditions of Access to the Technical
Information. As a condition to any use of the Technical
Information or Future Technical Information by, and any grant of
access to the Technical Information or any Future Technical
Information to, any person within the Field of Use during the term
of this Agreement, such person shall be required to (i) obtain
the prior written consent of the Gatekeeper to obtain the use of or
access to the Technical Information or Future Technical Information
within the Field of Use, and (ii) after obtaining the
Gatekeeper’s prior written consent, execute a material
transfer agreement (to be
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obtained from the Gatekeeper) in the
form customarily employed for such purpose by CSMC. Such material
transfer agreement shall identify Licensee’s rights in such
Technical Information and/or such Future Technical Information and
specify the obligations of the transferee, which obligations shall
not be less than those of CSMC under this Agreement. The Gatekeeper
shall then promptly provide the executed originals of all such
material transfer agreements to CSMC, with an executed copy to
Licensee for its records.
(c) Special Situations. Licensee shall obtain
the prior written consent of CSMC to any proposed transfer of
Technical Information or any Future Technical Information, or any
proposed sublicense of any Patent Rights, to any other person or
entity for which special notice is provided by CSMC to Licensee
under the specific provisions of this Agreement.
2.7 Conditions to Effectiveness. As a
condition precedent to the effectiveness of this Agreement, all of
the following documents and instruments shall have been fully
executed and delivered by each of the parties hereto and thereto:
(a) this Agreement, including applicable Schedules A,
B, C, D, F and G , (b) that certain Stock Purchase
Agreement by and between Licensee and CSMC in the form of that
attached hereto as Schedule E (the “Stock
Purchase Agreement”), and (c) a stock certificate or
certificates in the name of CSMC for the Shares of Licensee as
provided in Section 4.1 hereof. For purposes of this
Agreement, the “Effective Date” shall mean, and this
Agreement shall become effective upon, the date upon which the last
of the documents or instruments described in the preceding sentence
has been fully executed and delivered by all of the parties hereto
and thereto.
2.8 Rights in Bankruptcy. All rights and
licenses granted under or pursuant to this Agreement by CSMC to
Licensee are, and shall otherwise be deemed to be, for purposes of
Section 365(n) of the U.S. Bankruptcy Code and other
similar international laws, licenses of rights to
“intellectual property” as defined in Section 101
of the U.S. Bankruptcy Code or such international laws. CSMC
agrees that Licensee, as a licensee of such rights under this
Agreement, shall retain and may fully exercise all of its rights
and elections under the U.S. Bankruptcy Code and other similar
international laws. CSMC further agrees that, in the event of the
commencement of a bankruptcy proceeding by or against CSMC under
the U.S. Bankruptcy Code, Licensee shall be entitled to a
complete duplicate of (or complete access to, as appropriate) any
such intellectual property and all embodiments of such intellectual
property, and the same, if not already in Licensee’s
possession, shall be promptly delivered to it (i) upon any
such commencement of a bankruptcy proceeding upon its written
request therefore, unless CSMC elects to continue to perform all of
its obligations under this Agreement, or (ii) if not delivered
under (i) above, upon the rejection of this Agreement by or on
behalf of CSMC upon written request therefore by
Licensee.
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3.
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REPRESENTATIONS AND WARRANTIES
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3.1 Representations and Warranties of CSMC.
Except for the rights, if any, of the Funding Agencies or the
United States Government, CSMC represents and warrants to Licensee
that, to the best of its actual, current knowledge (without
investigation outside of CSMC as to such representations and
warranties) (a) it has the right to grant the licenses in this
Agreement, (b) except for the rights granted by CSMC to TPIMS
pursuant to the TPIMS MTA and the license described in
Section 2.1(f), it has not granted
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licenses to the Patent Rights or Technical
Information to any other party that would restrict the rights
granted hereunder except as stated herein, (c) there are no
claims, judgments or settlements to be paid by CSMC with respect
the Patent Rights or Technical Information or pending claims or
litigation relating to the Patent Rights or Technical Information,
(d) it is the sole owner of the Patent Rights and Technical
Information, (e) the patents and patent applications in the
Patent Rights have been applied for, and (f) it has not
received notice from any third party that the Patent Rights or
Technical Information infringes the proprietary rights of any third
party. Except for any potential or actual rights of Funding
Agencies or the United States Government and the rights of TPIMS
under the TPIMS MTA and the license described in
Section 2.1(f), CSMC is not aware that any additional rights
or licenses are necessary for Licensee to exercise its licensed
rights granted by CSMC under this Agreement.
3.2 Representations and Warranties of
Licensee . Licensee represents and warrants to CSMC that
(a) Licensee is a corporation duly organized, validly existing
and in good standing under the laws of the State of Delaware, is
qualified to do business in the State of California and has the
corporate power and authority to enter into this Agreement and to
perform its obligations hereunder; (b) the execution and
delivery of this Agreement by Licensee and the performance by
Licensee of its obligations hereunder have been duly authorized by
all necessary corporate action; (c) this Agreement constitutes
the legal, valid and binding obligation of Licensee, enforceable
against Licensee in accordance with its terms; (d) neither the
execution or delivery of this Agreement by Licensee, nor the
performance by Licensee of its obligations hereunder,
(i) requires the consent or approval of any third party,
except the shareholders of Licensee, which consent has been
obtained; (ii) shall constitute a default unde
