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Exhibit
10.18
WHENEVER CONFIDENTIAL INFORMATION IS
OMITTED HEREIN (SUCH OMISSIONS ARE DENOTED BY AN ASTERISK *), SUCH
CONFIDENTIAL INFORMATION HAS BEEN SUBMITTED SEPARATELY TO THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT.
LICENSE AGREEMENT
by and between
THE SCRIPPS RESEARCH
INSTITUTE,
a California
nonprofit
public benefit
corporation
and
REPLIGEN
CORPORATION,
a Delaware
corporation
TABLE OF
CONTENTS
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Page |
| 1. |
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Definitions |
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4 |
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1.1 |
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Affiliate |
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4 |
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1.2 |
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Confidential Information |
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4 |
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1.3 |
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Field |
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5 |
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1.4 |
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Licensed
Patent Rights |
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5 |
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1.5 |
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Licensed
Product |
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5 |
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1.6 |
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Licensed
Process |
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5 |
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1.7 |
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Licensed
Service |
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5 |
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1.8 |
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Major
Market Country |
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5 |
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1.9 |
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Net
Sales |
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5 |
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1.10 |
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Valid
Claim |
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6 |
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1.11 |
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Novartis
Research Products Nonexclusive License |
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6 |
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| 2. |
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Grant of License |
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6 |
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2.1 |
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Grant of
License for Licensed Products |
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6 |
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2.2 |
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Grant of
License for Licensed Processes |
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6 |
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2.3 |
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Grant of
License for Licensed Services |
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7 |
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2.4 |
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Sublicensing |
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7 |
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2.5 |
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No Other
License |
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2.6 |
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Governmental Interest |
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7 |
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2.7 |
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Reservation of Rights |
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7 |
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2.8 |
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Novartis
Non-Exclusive License |
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7 |
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Royalties |
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8 |
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3.1 |
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License
Issue Royalty |
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8 |
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3.2 |
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Equity |
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8 |
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3.3 |
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Minimum
Annual Royalty |
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8 |
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3.4 |
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Running
Royalties for Licensed Products |
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8 |
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3.5 |
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Running
Royalties for Licensed Processes |
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8 |
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3.6 |
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Running
Royalties for Licensed Services |
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9 |
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3.7 |
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Multiple
Royalties |
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3.8 |
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Arms-Length Transactions |
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3.9 |
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Duration
of Royalty Obligations |
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| 4. |
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Non-royalty Revenues |
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9 |
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4.1 |
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Sublicense Revenues |
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9 |
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4.2 |
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Product
Development Milestones |
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10 |
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4.3 |
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Certain
Additional Terms |
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10 |
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| 5. |
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Royalty Payments |
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11 |
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5.1 |
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Sales by
Licensee |
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11 |
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5.2 |
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Sales by
Sublicensees |
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11 |
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| 6. |
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Reports on Progress, Benchmarks, Sales or
Payments |
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11 |
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6.1 |
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Commercial Development Plan and Benchmarks |
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11 |
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6.2 |
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Progress
Reports on Commercial Development Plan and Benchmarks |
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11 |
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6.3 |
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Reports
on Revenues and Payments |
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12 |
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6.4 |
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Royalty
Payments |
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13 |
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6.5 |
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Foreign
Sales |
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13 |
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6.6 |
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Foreign
Taxes |
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13 |
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| 7. |
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Record Keeping |
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13 |
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| 8. |
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Patent Matters |
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14 |
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8.1 |
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Patent
Prosecution and Maintenance |
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14 |
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8.2 |
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Information to Licensee |
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14 |
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8.3 |
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Patent
Costs |
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14 |
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8.4 |
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Ownership |
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15 |
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8.5 |
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TSRI
Right to Pursue Patent |
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15 |
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8.6 |
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Infringement Actions. |
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15 |
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| 9. |
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Indemnity and Insurance |
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16 |
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9.1 |
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Indemnity |
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16 |
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9.2 |
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Insurance |
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17 |
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| 10. |
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Limited Warranty |
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17 |
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10.1 |
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Limited
Warranty |
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18 |
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| 11. |
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Confidentiality and Publication |
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18 |
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11.1 |
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Treatment
of Confidential Information |
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18 |
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11.2 |
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Publications |
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19 |
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11.3 |
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Publicity |
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19 |
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| 12. |
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Term and Termination |
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19 |
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12.1 |
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Term |
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12.2 |
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Termination Upon Mutual Agreement |
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12.3 |
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Termination by TSRI |
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19 |
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12.4 |
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Termination by Licensee |
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20 |
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12.5 |
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Rights
Upon Expiration |
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20 |
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12.6 |
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Rights
Upon Termination |
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12.7 |
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Work-in-Progress |
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12.8 |
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Final
Royalty Report |
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21 |
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| 13. |
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Assignment; Successors |
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21 |
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13.1 |
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Assignment |
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21 |
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13.2 |
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Binding
Upon Successors and Assigns |
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21 |
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| 14. |
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General Provisions |
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21 |
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14.1 |
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Independent Contractors |
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21 |
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14.2 |
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Late
Payments |
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21 |
ii
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14.3 |
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Governmental Approvals and Marketing of Licensed
Products |
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14.4 |
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Patent
Marking |
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21 |
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14.5 |
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No Use of
Name |
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14.6 |
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U.S.
Manufacture |
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22 |
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14.7 |
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Foreign
Registration |
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22 |
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14.8 |
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Use of
Materials |
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22 |
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14.9 |
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Arbitration |
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22 |
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14.10 |
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Entire
Agreement; Modification |
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14.11 |
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California Law |
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14.12 |
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Headings |
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14.13 |
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Severability |
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24 |
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14.14 |
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No
Waiver |
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14.15 |
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Name |
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14.16 |
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Attorneys’ Fees |
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14.17 |
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Notices |
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24 |
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14.18 |
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Compliance with U.S. Laws |
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25 |
iii
LICENSE
AGREEMENT
This License Agreement is
entered into and made effective as of this 6 th
day of April,
2007 (the “Effective Date”), by and between THE SCRIPPS
RESEARCH INSTITUTE, a California nonprofit public benefit
corporation (“TSRI”) located at 10550 North Torrey
Pines Road, La Jolla, California 92037, and Repligen Corporation, a
Delaware corporation (“Licensee”) located at 41 Seyon
Street, Waltham, Massachusetts, 02453 with respect to the facts set
forth below.
RECITALS
A. TSRI is engaged in
fundamental scientific biomedical and biochemical research
including research relating to Friedrich’s ataxia
(FA).
B. Licensee is engaged in
research and development of products to prevent, diagnose and treat
diseases and conditions in humans.
C. TSRI has disclosed to
Licensee certain technology and TSRI has the right to grant a
license to the technology, subject to certain rights of the U.S.
Government resulting from the receipt by TSRI of certain funding
from the U.S. Government.
D. TSRI desires to grant to
Licensee, and Licensee wishes to acquire from TSRI, a sole
worldwide right and license to certain patent rights and materials
of TSRI, subject to the terms and conditions set forth
herein.
AGREEMENT
NOW, THEREFORE, in
consideration of the mutual covenants and conditions set forth
herein, TSRI and Licensee hereby agree as follows:
1. Definitions . Capitalized
terms shall have the meaning set forth herein.
1.1 Affiliate . The
term “Affiliate” shall mean any entity which directly
or indirectly controls, or is controlled by Licensee. The term
“control” as used herein means (a) in the case of
corporate entities, direct or indirect ownership of at least fifty
percent (50%) of the stock or shares entitled to vote for the
election of directors; or (b) in the case of non-corporate
entities, direct or indirect ownership of at least fifty percent
(50%) of the equity interest with the power to direct the
management and policies of such non-corporate entities. Unless
otherwise specified, the term Licensee includes
Affiliates.
1.2 Confidential
Information . The term “Confidential Information”
shall mean any and all proprietary or confidential information of
TSRI or Licensee which may be exchanged between the parties at any
time and from time to time during the term of this Agreement.
Information shall not be considered confidential to the extent that
the receiving party can establish by competent proof that
it:
(a) Is publicly disclosed
through no fault of any party hereto, either before or after it
becomes known to the receiving party; or
(b) Was known to the
receiving party prior to the date of this Agreement, which
knowledge was acquired independently and not from another party
hereto (or such party’s employees); or
(c) Is subsequently disclosed
to the receiving party in good faith by a third party who has a
right to make such disclosure; or
(d) Has been published by a
third party as a matter of right.
1.2.1 In the event that
Confidential Information is required to be disclosed by law or
court order, in which event the party required to make such
disclosure shall limit the same to the minimum required to comply
with the law or court order, and prior to making such disclosure
that party shall notify the other party, not later than ten
(10) days before the disclosure in order to allow that other
party to comment and/or to obtain a protective or other order,
including extensions of time and the like, with respect to such
disclosure.
1.3 Field . The term
“Field” shall mean the prevention, diagnosis and
treatment of conditions or diseases in humans.
1.4 Licensed Patent
Rights . The term “Licensed Patent Rights” shall
mean rights arising out of or resulting from (a) the U.S./PCT
Patent Application(s) set forth on Exhibit A; (b) the foreign
patent applications of (a); (c) the patents proceeding from
(a) and (b); (d) divisionals, continuations, reissues,
reexaminations, and extensions of any patent or application set
forth in (a)- (c) above; and (e) all claims of
continuations-in-part that are entitled to the benefit of the
priority date of (a).
1.5 Licensed Product .
The term “Licensed Product” shall mean any product, the
manufacture, use, importation, sale or offer for sale of which in
or into a particular country is covered by a Valid Claim within the
Licensed Patent Rights. Whether a product is a “Licensed
Product” shall be determined on a country-by-country
basis.
1.6 Licensed Process .
The term “Licensed Process” shall mean any process, the
performance of which is covered by a Valid Claim of Licensed Patent
Rights. Whether a process is a “Licensed Process” shall
be determined on a country-by-country basis.
1.7 Licensed Service .
The term “Licensed Service” shall mean the performance
of a service by Licensee or a sublicensee for a third party, which
performance uses or incorporates a Licensed Product or Licensed
Process. Whether a service is a “Licensed Service”
shall be determined on a country-by-country basis.
1.8 Major Market
Country . The term “Major Market Country” shall
mean any of the following countries: the United States of America,
the United Kingdom, France, Germany, Spain, Italy, Japan, Canada,
or Australia.
1.9 Net Sales . The
term “Net Sales” shall mean the gross amount invoiced
by Licensee, or sublicensee, or any of them on all sales of
Licensed Products, Licensed Processes and Licensed Services less
(a) discounts, chargebacks and rebates actually allowed,
whether in cash or trade; (b) credits for claims, allowances,
retroactive price reductions or returned goods;
(c) prepaid freight and insurance;
and (d) sales taxes or other governmental charges actually
paid in connection with sales of Licensed Products (but excluding
what are commonly known as income taxes and value-added taxes). Net
Sales shall include all consideration charged by Licensee or
sublicensees in exchange for any Licensed Products, Licensed
Processes, or Licensed Services, including without limitation any
monetary payments or any other property whatsoever. For purposes of
determining Net Sales, a sale shall be deemed to have occurred when
an invoice therefore shall be generated or the Licensed Product
shipped for delivery, Licensed Process, completed, or Licensed
Service provided. Sales of Licensed Products by Licensee to any
Affiliate or sublicensee which is a reseller thereof shall be
excluded, and only the subsequent sale of such Licensed Products by
Affiliates or sublicensees of Licensee to unrelated parties shall
be deemed to generate Net Sales hereunder.
1.10 Valid Claim . The
term “Valid Claim” shall mean a claim of an issued
patent within the Licensed Patent Rights that has not lapsed,
expired, been canceled, or become abandoned, and has not been held
invalid by a court or other appropriate body of competent
jurisdiction, unappealable or unappealed within the time allowed
for appeal and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise. The term
Valid Claim shall also include the claims of a pending patent
application within the Licensed Patent Rights for a period of six
(6) years from the date of first examination (i.e., first
office action) of that patent application.
1.11 Novartis Research
Products Nonexclusive License . “Novartis Research
Products Nonexclusive License” shall mean the non-exclusive,
worldwide license rights (without the right to sublicense) granted
by Scripps to Novartis under the Licensed Patent Rights to make and
use (but not sell) “Research Products”. “Research
Products” is defined to mean any product, process or device
which is designed or utilized for discovering, improving or testing
a Therapeutic Product, Preventative medicine, or Diagnostic
Product. “Diagnostic Product” means any product,
process or device that is designed or utilized for diagnosis of a
disease or condition in humans or vertebrate animals.
“Preventative medicine” means any product, process or
device that is designed or utilized to prevent the occurrence of
any disease state in humans or vertebrate animals.
“Therapeutic Product” means any product, process or
device which is designed or utilized for treatment or mitigation of
an existing disease state in humans or vertebrate
animals.
2. Grant of License .
2.1 Grant of License for
Licensed Products . TSRI hereby grants and Licensee accepts,
subject to the terms and conditions of this Agreement, a sole
license under the Licensed Patent Rights to make and have made, to
use and have used and to import Licensed Products in the Field. In
addition, TSRI hereby grants and Licensee accepts, subject to the
terms and conditions of this Agreement, an exclusive license under
the Licensed Patent Rights to offer to sell, to sell and have sold
Licensed Products in the Field.
2.2 Grant of License for
Licensed Processes . TSRI hereby grants and Licensee accepts,
subject to the terms and conditions of this Agreement, a sole
license under the Licensed Patent Rights to use and have used
Licensed Processes in the Field. In addition, TSRI hereby grants
and Licensee accepts, subject to the terms and conditions of this
Agreement, an exclusive
license under the Licensed Patent Rights
to offer to sell, to sell and have sold Licensed Processes in the
Field.
2.3 Grant of License for
Licensed Services . TSRI hereby grants and Licensee accepts,
subject to the terms and conditions of this Agreement, a sole
license under the Licensed Patent Rights to use and have used
Licensed Services in the Field. In addition, TSRI hereby grants and
Licensee accepts, subject to the terms and conditions of this
Agreement, an exclusive license under the Licensed Patent Rights to
offer to sell, to sell and have sold Licensed Services in the
Field.
2.4 Sublicensing .
Licensee shall have the right to grant and authorize sublicenses to
any party with respect to the rights conferred upon Licensee under
this Agreement, provided, however, that any such sublicense shall
be subject in all respects to the provisions contained in this
Agreement (excluding the payments specified in Sections 3.1 and 3.2
below). Sublicensees shall not further sublicense without
TSRI’s prior written consent, which approval shall not be
unreasonably withheld. Licensee shall forward to TSRI a copy of any
and all fully executed agreements within thirty (30) days of
execution.
2.5 No Other License .
This Agreement confers no license or rights by implication,
estoppel, or otherwise under any patent applications or patents of
TSRI other than Licensed Patent Rights regardless of whether such
patents are dominant or subordinate to Licensed Patent Rights. TSRI
and Licensee hereby agree and acknowledge that nothing in this
Agreement, including without limitation the provisions of Sections
2.6, 2.7, and 2.8, create, expressly or implicitly, any obligation
for Licensee to grant any rights or licenses, or to provide any
materials or perform any services, to or for TSRI or any Third
Party, including without limitation, the United States Government
or Novartis.
2.6 Governmental
Interest . Licensee and TSRI acknowledge that TSRI has
received, and expects to continue to receive, funding from the
United States Government in support of TSRI’s research
activities. Licensee and TSRI acknowledge and agree that their
respective rights and obligations pursuant to this Agreement shall
be subject to the rights of the United States Government, which may
exist, arise or result from TSRI’s receipt of research
support from the United States Government, including but not
limited to, 37 C.F.R. 401, the NIH Grants Policy Statement and the
NIH Guidelines for Obtaining and Disseminating Biomedical Research
Resources.
2.7 Reservation of
Rights . TSRI reserves the right to use for any research or
educational purposes any Licensed Patent Rights and materials
licensed hereunder, without TSRI being obligated to pay Licensee
any royalties or other compensation. In addition, TSRI reserves the
right to grant non-exclusive research and educational use licenses
to other nonprofit or academic institutions to Licensed Patent
Rights licensed hereunder, without the other nonprofit entity being
obligated to pay Licensee any royalties or other compensation. TSRI
shall have no obligation to notify or inform Licensee of such use
or licenses.
2.8 Novartis Non-Exclusive
License . The licenses granted under Sections 2.1 and 2.2 of
this Agreement are subject to the non-exclusive license rights
granted to Novartis pursuant to the Novartis Research Products
Nonexclusive License.
3. Royalties
3.1 License Issue
Royalty . In consideration for TSRI entering into this
Agreement, Licensee agrees to pay and shall pay to TSRI a
noncreditable, nonrefundable license issue royalty in the amount of
Three Hundred Thousand U.S. Dollars (U.S.$300,000) (“License
Issue Royalty”) within fifteen (15) days of the
Effective Date. Failure of Licensee to make this payment shall
render this Agreement null and void ( ab initio)
.
3.2 Equity . In
addition to the License Issue Royalty specified in 3.1 above,
Licensee shall issue to TSRI Eighty Seven Thousand Four Hundred
Sixty-Four (87,464) shares of Licensee’s common stock,
equal to Three Hundred Thousand U.S. Dollars (U.S. $300, 000)
within fifteen (15) days of the Effective Date as reported on
the Nasdaq Global Market or such other market on which such shares
are then traded. Each share of Licensee common stock shall be
valued at the closing price of such shares on the trading day
immediately prior to the Effective Date. If the value of the shares
is not equal to Three Hundred Thousand U.S. Dollars (U.S. $300,000)
on the one-year anniversary of the Effective Date, Licensee shall
make a cash payment to TSRI equal to the difference between the
actual total value of the shares on such date and Three Hundred
Thousand U.S. Dollars (U.S. $300,000) within thirty (30) days
after the one year anniversary of the Effective Date.
3.3 Minimum Annual
Royalty . Subject to the credits described in this
Section 3.3, within thirty days following each anniversary of
the Effective Date, Licensee agrees to pay and shall pay to TSRI a
nonrefundable minimum annual royalty in the amount of
[**Confidential Treatment Requested**] for the twelve
(12) month period immediately preceding such anniversary date.
Each such minimum annual royalty shall be offset (i.e., reduced by)
by any amounts paid, as specified in 3.4, 3.5, 3.6, 4.1, and 4.2.
hereunder by Licensee during the twelve (12) month period
immediately preceding the relevant anniversary date.
3.4 Running Royalties for
Licensed Products . Licensee agrees to pay and shall pay to
TSRI a running royalty on a country by country basis in the amount
of [**Confidential Treatment Requested**] of Net Sales of Licensed
Products. Licensee shall be entitled to a credit against royalties
due hereunder, of [**Confidential Treatment Requested**] of any
royalties paid to any third parties by Licensee, its Affiliates or
sublicensees which is necessary in order for Licensee or its
Affiliates or sublicensees to make, use, sell, offer for sale, or
import any Licensed Product without infringing any patent or other
rights of such third party. The application of such credit shall be
limited so that it shall not reduce by more than [**Confidential
Treatment Requested**] the royalties paid hereunder for any given
period.
3.5 Running Royalties for
Licensed Processes . Licensee agrees to pay and shall pay to
TSRI a running royalty on a country by country basis in the amount
of [**Confidential Treatment Requested**] of Net Sales of products
made using a Licensed Process. Licensee shall be entitled to a
credit against royalties due hereunder, of [**Confidential
Treatment Requested**] of any royalties paid to any third parties
by Licensee, its Affiliates or sublicensees which is necessary in
order for Licensee or its Affiliates or sublicensees to make, use,
sell, offer for sale or perform any Licensed Process without
infringing any patent or other rights of such third party. The
application of such credit shall be limited so that it shall not
reduce by more than [**Confidential Treatment Requested**] the
royalties paid hereunder for any given period.
3.6 Running Royalties for
Licensed Services . Licensee agrees to pay and shall pay to
TSRI [**Confidential Treatment Requested**] of any and all Net
Sales for Licensed Services. Licensee shall be entitled to a credit
against royalties due hereunder, of [**Confidential Treatment
Requested**] of any royalties paid to any third parties by
Licensee, its Affiliates or sublicensees which is necessary in
order for Licensee or its Affiliates or sublicensees to make, use,
sell, offer for sale or perform any Licensed Service without
infringing any patent or other rights of such third party. The
application of such credit shall be limited so that it shall not
reduce by more than [**Confidential Treatment Requested**] the
royalties paid hereunder for any given period.
3.7 Multiple Royalties
. No multiple royalties shall be due because any Licensed Product,
Licensed Process or Licensed Service is covered by more than one of
the Licensed Patent Rights. In such case, Licensee shall pay the
highest of the royalties owed to TSRI pursuant to Sections 3.4-3.6
above.
3.8 Arms-Length
Transactions. On sales of Licensed Products, Licensed Processes
or Licensed Services which are made in other than an
arm’s-length transaction, the value of the Net Sales
attributed under this Section 3 to such a transaction shall be
that which would have been received in an arm’s-length
transaction, based on sales of like quality and quantity products
on or about the time of such transaction. “Arm’s-length
transaction” means a sale between unaffiliated
parties.
3.9 Duration of Royalty
Obligations . The royalty obligations of Licensee as to each
Licensed Product, Licensed Process or Licensed Service shall
terminate on a country-by-country basis concurrently with the
expiration or termination of the last Valid Claim within Licensed
Patent Rights that covers such Licensed Product or Licensed Process
or Licensed Service.
4. Non-royalty Revenues
.
4.1 Sublicense
Revenues . Any and all revenues, other than royalties, research
and development funding (excluding Licensed Services), and equity
investments made by such sublicensees in Licensee’s stock,
pursuant to a stock purchase agreement that is separate from the
sublicense agreement, to the extent such stock was sold by Licensee
for a price that is above the then-current fair market value (for
avoidance of doubt, the amount above fair market value shall be
included within Sublicense Revenue as defined herein). Sublicense
Revenue shall be reported and paid to TSRI by Licensee within
thirty (30) days of receipt by Licensee as provided herein.
Licensee shall pay to TSRI a non-creditable, non-refundable
percentage of these Sublicense Revenues according to the following
schedule (“Sublicense Payments”):
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Effective Date of Sublicense
Agreement
|
|
Percent of Sublicense
Revenues
Payable to TSRI
|
|
|
|
First period of six months after
Effective Date
|
|
[**Confidential Treatment Requested**] |
|
Second period of six months after
Effective Date
|
|
[**Confidential Treatment Requested**] |
|
|
|
|
Third period of six months after
Effective Date
|
|
[**Confidential Treatment Requested**] |
|
Fourth period of six months after
Effective Date
|
|
[**Confidential Treatment Requested**] |
|
During the third year after Effective
Date
|
|
[**Confidential Treatment Requested**] |
|
During or after the fourth year after
Effective Date
|
|
[**Confidential Treatment Requested**] |
Any non-cash consideration received by
Licensee from sublicensees shall be valued at its fair market value
as of the date of receipt.
4.2 Product Development
Milestones . Licensee agrees to pay and shall pay to TSRI the
following non-creditable, non-refundable product development
milestones within thirty (30) days of the first achievement of
each milestone with a Licensed Product. All such milestones shall
be payable a maximum of one time each regardless of how many times
each is achieved in a particular country and regardless of in how
many countries each is achieved.
|
|
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Milestone Event
|
|
Payment |
|
|
|
First Patient Dosed in a
Clinical Trial
in a Major Market
Country
|
|
[**Confidential Treatment Requested**] |
|
|
|
First Patient Dosed in a
Phase III Trial
(or its equivalent) in a
Major Market Country
|
|
[**Confidential Treatment Requested**] |
|
|
|
Acceptance of NDA Filing by
the FDA
(or its equivalent) in a
Major Market Country
|
|
[**Confidential Treatment Requested**] |
|
|
|
FDA Approval of an NDA to treat
Friedrich’s Ataxia
|
|
[**Confidential Treatment Requested**] |
|
|
|
FDA Approval of an NDA to
treat a disease other than
Friedrich’s
Ataxia
|
|
[**Confidential Treatment Requested**] |
|
|
|
European Approval in a Major Market
Country
|
|
[**Confidential Treatment Requested**] |
4.3 Certain Additional
Terms . After Licensee executes its first sublicense pursuant
to Section 2.4, all amounts that Licensee thereafter pays to
TSRI under Section 4.2 shall be fully credited only against
the Sublicense Payments due from Licensee to TSRI under
Section 4.1 for product development milestone payments that
Licensee subsequently receives from its sublicensees under
sublicense agreements (“Sublicensee Milestone
Payments”). The payments
that Licensee makes to TSRI under
Section 4.2 shall not be credited or applied against any other
Sublicense Payments due from Licensee to TSRI under
Section 4.1. In order to receive such credit, Licensee
shall itemize in detail on its accounting of Sublicense Revenues
under Section 4.1 the original amount of Sublicense Payments
due under Section 4.1 for Sublicensee Milestone Payments for
each sublicense, and the specific amounts paid to TSRI under
Section 4.2 after the date of Licensee’s first
sublicense that Licensee wants credited against its Sublicense
Payments due under Section 4.1 for Sublicensee Milestone
Payments for each sublicense. If any amounts required to be
paid to TSRI under Section 4.2 are due before Licensee
executes its first sublicense, but are not actually paid by
Licensee to TSRI until after Licensee executes its first
sublicense, then those amounts actually paid by Licensee to TSRI
under Section 4.2 shall not be entitled to be credited or
applied against Sublicense Payments due under Section 4.1 for
Sublicensee Milestone Payments for any sublicense.
5. Royalty Payments .
5.1 Sales by Licensee
. Royalties payable pursuant to Section 3 herein, shall be
payable by Licensee quarterly, within sixty (60) days after
the end of each calendar quarter, based upon Net Sales during the
immediately preceding calendar quarter.
5.2 Sales by
Sublicensees . Licensee agrees to pay and shall pay to TSRI, or
cause its sublicensees to pay to TSRI all royalties pursuant to
Section 3 herein resulting from the activities of its
sublicensees, within ninety (90) days after the end of each
calendar quarter.
6. Reports on Progress, Benchmarks,
Sales or Payments .
6.1 Commercial Development
Plan and Benchmarks . Prior to signing this Agreement, Licensee
has provided to TSRI the Commercial Development Plan attached
hereto as Exhibit B, under which Licensee intends to bring the
subject matter of the Licensed Patent Rights to the point of
commercia
|