Exhibit 10.8
LICENSE AGREEMENT
(“Agreement”), effective as of
February 25, 2008 (the “Effective Date”)
BETWEEN
Advanced Cell
Technology, Inc., a Delaware corporation with offices located
at 381 Plantation Street, Worcester, Massachusetts 01605, the
United States of America, lawfully represented by its
director William M. Caldwell, IV (“ACT” or
“Licensor”)
and
Pharming
Technologies B.V., a private limited liability company
incorporated and existing under the laws of the Netherlands,
having its registered office at Darwinweg 24, 2333 CR Leiden, the
Netherlands, lawfully
represented by its directors Dr. R. Strijker and Dr. B.
M. Giannetti (“Pharming” or
“Licensee”)
(Pharming and ACT
sometimes hereinafter referred to individually as a
“Party” and collectively as the
“Parties”) .
WHEREAS
:
1.
Pharming and Infigen, Inc. (“Infigen”) previously
entered into a License and Settlement Agreement that was executed
by Pharming and Infigen on July 9, 2004 and July 13,
2004, respectively”), a copy of which is attached hereto as
Exhibit A (the “Original Agreement”).
2.
Under the Original Agreement, Pharming obtained certain exclusive
and nonexclusive rights to patents owned by Infigen.
3.
Infigen ceased conducting its business, and certain of the patents
previously owned by Infigen were acquired by ACT pursuant to a
Patent Assignment Agreement (the “Assignment
Agreement”) dated February 2, 2007 between ACT and
Infigen.
4.
Under the Assignment Agreement, ACT agreed to honor the Original
Agreement with respect to the Infigen Patents (as defined herein)
and subject to the terms and conditions of the Assignment
Agreement; and
5.
Pharming and ACT have agreed that the Original Agreement should be
restated to clarify the Parties’ respective rights and to
reflect certain agreements reached by Pharming and ACT concerning
the patent rights previously licensed to Pharming under the
Original Agreement.
DECLARE THAT THEY HAVE ENTERED
INTO AGREEMENT AS FOLLOWS:
ARTICLE 1 -
DEFINITIONS
For the purposes of
this Agreement, the following words and phrases shall have the
following meanings:
1.1
“ Infigen Patents ” means the patents and patent
applications listed in Exhibit B attached hereto.
The Parties acknowledge and agree that Exhibit B shall
be updated by ACT on a yearly basis to reflect the actual status of
the Infigen Patents.
1.2
“ Pharming Field ”
means all uses and applications in or related to non-human
animals.
1.3
“ ACT Field ” means all uses and applications in
or related to humans.
1.4
“ Territory ” means the world.
1.5
“ Improvements ” means all improvements or
modifications or adaptations to or, any new application of Infigen
Patents or any parts thereof which may be made or acquired by
either Party during this Agreement.
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.
ARTICLE 2 – TERMINATION
OF THE ORIGINAL AGREEMENT
The Original Agreement
is hereby terminated by mutual agreement of the Parties and all of
its provisions are hereby superseded in their entirety and replaced
by the provisions of this Agreement, including its Exhibits,
provided, however, that ACT and Pharming acknowledge, understand
and agree that the Original Agreement shall remain in force as
between Pharming and Infigen with respect to all rights, licenses
(including the non-exclusive license rights of Pharming under the
Original Agreement not covered by Exhibit B and its provisions
in relation to these non-exclusive license rights) and obligations
relating to any Infigen intellectual property, including without
limitation, any patents and patent applications other than the
Infigen Patents (licensed hereunder) included in the Original
Agreement. Nothing in this Agreement is intended to terminate
or adversely affect any rights obtained by Pharming from Infigen
under the Original Agreement except to the extent the Original
Agreement is terminated by this Agreement.
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ARTICLE 3 - LICENSE GRANTS AND RETAINED
RIGHTS
3.1
License Grant . ACT hereby grants to Pharming an
exclusive (even excluding ACT), sublicenseable, world-wide,
royalty-free, non-terminable (by ACT) and irrevocable license under
the Infigen Patents, including Improvements, and including any
foreign counterpart applications, together with any and all patents
that have issued or in the case of applications heretofore filed,
in the future issue therefrom or whose priority date is based
thereon; and all related divisionals, continuations, national stage
applications or patents filed under the Patent Cooperation Treaty
of 1978, reissues or renewals, of the foregoing, in the Pharming
Field in the Territory, to make, have made, use, have used, sell,
have sold, offer for sale, and import all products covered by this
Agreement and to use and have used the technology covered by the
Infigen Patents.
3.2
Sublicenses . Pharming shall have the right to grant
further sublicenses to or under the Infigen Patents in the Pharming
Field.
3.3
Retained Rights . Pharming acknowledges and agrees
that ACT shall retain all rights to exploit the Infigen Patents in
the ACT Field.
3.4
Term of License . The license granted under
Section 3.1 shall endure until the expiry of the last of the
Infigen Patents.
ARTICLE 4 -
CONSIDERATION
4.1
License Fee. Upon execution of this Agreement,
Pharming shall pay to ACT a one-time payment of USD $260,000.00
(TWO HUNDRED SIXTY THOUSAND DOLLARS) (the “License
Fee”). The License Fee shall be via wire transfer to
ACT in accordance with the wire instructions set forth in
Exhibit C attached hereto.
4.2
No Additional Compensation . ACT is not entitled to
any renumeration, royalty or other compensation other than as
provided in Section 4.1.
ARTICLE 5 –
PAYMENTS AND RECORDS
[Intentionally Omitted]
ARTICLE 6 -
REPRESENTATIONS AND WARRANTIES
6.1
ACT represents and warrants that from the effective date of the
Assignment Agreement it is the owner of the Infigen Patents and all
registration and renewal
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fees with regard to the
Infigen Patents have been paid and will be paid during the duration
of this Agreement.
6.2
ACT represents and warrants that from the effective date of the
Assignment Agreement no other patents have been transferred by
Infigen to ACT than the patents listed in Exhibit B of this
Agreement.
6.3
ACT represents and warrants that except as set forth in the
disclosure schedule set forth in Exhibit D attached
hereto there exist no any other licenses to use the Infigen
Patents. ACT further represents and warrants that it will not
grant any further licenses to use Infigen Patents to any third
party
6.4
ACT represents and warrants that the execution, delivery and
performance of this Agreement by ACT (i) are within its
corporate powers, and (ii) have been duly authorized by all
necessary corporate action on ACT’s part.
6.5
ACT represents to the best of its knowledge:
(a)
that the Infigen Patents are valid or remain valid;
(b)
that the practice of the inventions disclosed in the Infigen
Patents do not violate patent or other rights of third parties;
(c)
that the Infigen Patents are not subject to any legal proceedings,
litigation or interference;
(d)
that since the acquisition of the Infigen Patents by ACT the
Infigen Patents have been properly maintained and all fees due have
been paid.
6.6
Pharming represents and warrants that the execution, delivery and
performance of this Agreement by Pharming (i) are within its
corporate powers, and (ii) have been duly authorized by all
necessary corporate action on Pharming’s part.
6.7
Pharming hereby represents, warrants and covenants that it shall
comply in all material respects with all local, state, federal and
international laws and regulations relating to the exploitation of
the Infigen Patents, including in connection with the development,
manufacture, use, provision, and sale of products and services
covered by the Infigen Patents.
ARTICLE 7:
INTELL
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