THE GLOBE LABORATORIES INC.
NON-EXCLUSIVE
LICENSE AGREEMENT
Agreement June
17, 2008
This License
Agreement (“AGREEMENT”) is made as of the 17 day of
June, 2008 (“EFFECTIVE DATE”), between Globe
Laboratories Inc., a British Columbia corporation, having a
principal place of business at 2386 East Mall, Suite 307,
Vancouver, BC. V6T 1Z3 (“LICENSOR”) and The Neurokine
Pharmaceuticals Inc. (“LICENSEE), a British Columbia
Corporation, having a business office at 1255 West Pender Street,
Vancouver, B.C. V6E 2V1, each referred to herein individually as a
“PARTY” and collectively as the
“PARTIES”.
RECITALS
LICENSOR, as a
center for drug, research and development, is the owner of certain
KNOW-HOW and INTELECTUAL PROPERTIY (defined below) and desires to
grant a non-exclusive license of those KNOW-HOWS in order to
benefit the public by disseminating the results of its research via
the commercial development, manufacture, distribution and use of
products and processes.
LICENSEE has
the capability to commercially develop, manufacture, distribute and
use PRODUCTS and PROCESSES (defined below) for public use and
benefit and desires to license such KNOW-HOW RIGHTS.
For good and
valuable consideration, the sufficiency of which is hereby
acknowledged, the PARTIES hereto agree as follows:
1. CERTAIN
DEFINITIONS
The following
terms shall have the following meanings as used herein, unless the
context requires otherwise.
1.1 “
AFFILIATE ” with respect to either PARTY shall mean
any corporation or other legal entity other than that PARTY in
whatever country organized, controlling, controlled by or under
common control with that PARTY. The term
“control” shall mean (a) in the case of LICENSEE,
direct or indirect ownership of at least fifty percent (50%) of the
voting securities having the right to elect directors, and (b) in
the case of LICENSOR, the power, direct or indirect, to elect or
appoint more than fifty percent (50%) of the directors or trustees,
or to cause direction of management and policies, whether through
the ownership of voting securities, by contract or
otherwise.
1.2 “
CLAIM ” shall mean any pending or issued claim of any
KNOW-HOW or PATENT RIGHT that has not been permanently revoked, nor
held invalid or unenforceable through reissue or disclaimer or
otherwise in the court of law.
1.3 “
COMMERCIAL SALE ” shall mean any TRANSFER of a PRODUCT
or PROCESS by LICENSEE, an AFFILIATE or SUBLICENSEE (which may
include a TRANSFER to an AFFILIATE or SUBLICENSEE), for value, in
the form of cash or otherwise.
1.4 “
LICENSE FIELD ” shall mean large scale production of
therapeutic proteins using GST-FXa in a pGEX vector in E-coli
(Appendix A).
1.5 “
LICENSE TERRITORY ” worldwide.
1.6 “
NET SALES ” shall mean:
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the greatest of
the gross amount billed, invoiced or received by LICENSEE, its
AFFILIATES and SUBLICENSEES (for the purposes of this Section 1.6,
each a “SELLER”) for TRANSFER of PRODUCTS and PROCESSES
by LICENSEE, AFFILIATES, SUBLICENSEES and any third party
distributor (but excluding (i) any amounts billed, invoiced or
received resulting from any TRANSFER of any PRODUCT or PROCESS
between or among LICENSEE, an AFFILIATE or any SUBLICENSEE, unless
the transferee is the final purchaser of such PRODUCT or PROCESS;
and (ii) any royalty or similar payment by SUBLICENSEE to AFFILIATE
or LICENSEE, or by AFFILIATE to LICENSEE, on account of a TRANSFER
of any PRODUCT or PROCESS by a SUBLICENSEE or AFFILIATE, as the
case may be, to a third party), less (to the extent
appropriately documented) the following amounts actually paid or
otherwise incurred by SELLER in effecting such TRANSFER:
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credits and
allowances by reason of rejection or return;
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reasonable and
customary rebates, discounts and chargebacks;
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amounts for
outbound transportation, insurance, handling and shipping, to the
extent separately invoiced;
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taxes, customs
duties and other governmental charges levied on or measured by
COMMERCIAL SALES, to the extent separately invoiced, whether paid
by or on behalf of LICENSEE so long as LICENSEE’s price is
reduced thereby, but not franchise or income taxes of any kind
whatsoever.
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No deductions
shall be made for commissions paid to individuals whether they be
with independent sales agencies or employed by a SELLER or
otherwise, or for any cost of collections.
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NET SALES shall
occur on the earlier of the date of billing or invoicing for
TRANSFER of a PRODUCT or PROCESS. For a PRODUCT or
PROCESS for which SELLER does not bill or invoice, NET SALES shall
occur on the date on which payment is due or made to the SELLER,
whichever is earlier. If the date on which such payment
is due or made cannot be ascertained, NET SALES shall be deemed to
have occurred on the date the PRODUCT or PROCESS was
TRANSFERRED.
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If a SELLER
TRANSFERS any PRODUCT or PROCESS at a discounted price that is
lower than the customary price charged by SELLER, or for non-cash
consideration (whether or not at a discount), NET SALES shall be
calculated based on the non-discounted cash amount charged to an
independent third party for the PRODUCT or PROCESS during the same
REPORTING PERIOD or, in the absence of such transaction, on the
fair market value of the PRODUCT or PROCESS. Non cash
consideration shall not be accepted by a SELLER without the prior
written consent of LICENSOR, which shall not be unreasonably
withheld.
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In the case of
a TRANSFER of a PRODUCT within LICENSEE or between or among
LICENSEE, any AFFILIATE or SUBLICENSEE, solely for further TRANSFER
by such transferee, NET SALES shall be based on the further
TRANSFER of such PRODUCT by such transferee.
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1.7 “
PATENT RIGHTS ” shall mean LICENSOR’s rights to
use the know-how and patents generated from the
KNOW-HOWS.
1.8 “
PROCESS ” shall mean any process, method or service
the use or performance of which, in whole or in part, absent the
license granted hereunder would infringe, or is covered by, one or
more CLAIMS of PATENT RIGHTS.
1.9 “
PRODUCT ” shall mean any article, device or
composition, the manufacture, use, or sale of which, in whole or in
part, absent the license granted hereunder would infringe, or is
covered by, one or more CLAIMS of PATENT RIGHTS.
1.10 “
REPORTING PERIOD ” shall mean each three month period
ending March 31, June 30, September 30 and December 31.
1.11 “
SUBLICENSEE ” shall mean any third party sublicensee
of the rights granted by LICENSEE under Section
2.1(a)(ii).
1.12 “
TRANSFER ” shall mean to sell or have sold, to lease
or have leased, to import or have imported or otherwise to transfer
or have transferred, for value in the form of cash or otherwise, a
PRODUCT or PROCESS, and further in the case of a PROCESS to use or
perform such PROCESS for the benefit of a third party.
2. LICENSE
2.1
Grant of License .
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Subject to the
terms of this AGREEMENT, LICENSOR hereby grants to LICENSEE in the
LICENSE FIELD in the LICENSE TERRITORY:
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a
non-exclusive, royalty-bearing license under PATENT RIGHTS to make,
have made, use, have used, and TRANSFER PRODUCTS and to
use, have used and TRANSFER PROCESSES;
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the right to
grant sublicenses under the rights granted in Section 2.1(a)(i) to
SUBLICENSEES, provided that in each case LICENSEE shall be
responsible for the performance of any obligations of SUBLICENSEES
relevant to this AGREEMENT as if such performance were carried out
by LICENSEE itself, including, without limitation, the payment of
any royalties or other payments provided for hereunder, regardless
of whether the terms of any sublicense provide for such amounts to
be paid by the SUBLICENSEE directly to LICENSOR.
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The licenses
granted in Section 2.1(a) above include the right to grant to the
purchaser of PRODUCTS from LICENSEE, AFFILIATES and SUBLICENSEES
the right to use such purchased PRODUCTS in a method coming within
the scope of PATENT RIGHTS.
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The foregoing
license grant shall include the grant of said license to
any AFFILIATE of LICENSEE, provided that such AFFILIATE
shall assume the same obligations as those of LICENSEE and be
subject to the same terms and conditions hereunder and further
provided that LICENSEE shall be responsible for the performance by
said AFFILIATE of said obligations and for compliance by said
AFFILIATE with said terms and conditions. LICENSEE shall
provide to LICENSOR a fully signed, non-redacted copy of each
agreement with each AFFILIATE that assumes the aforesaid
obligations, including all exhibits, attachments and related
documents and any amendments, within thirty (30) days of request by
LICENSOR.
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2.2
Sublicenses . All sublicenses granted hereunder
shall be consistent with the terms of this AGREEMENT, shall
incorporate terms and conditions sufficient to enable LICENSEE to
comply with this AGREEMENT and shall prohibit any further
sublicense by a SUBLICENSEE. Any sublicense granted by
LICENSEE shall be subject to the prior written approval of
LICENSOR, which approval shall not be unreasonably
withheld. LICENSEE shall provide to LICENSOR a fully
signed non-redacted copy of all sublicense agreements and
amendments thereto, including all exhibits, attachments and related
documents, within thirty (30) days of executing the
same. Upon termination of this AGREEMENT or any license
granted hereunder for any reason, any sublicenses shall be
addressed in accordance with Section 10.6.
2.3
Retained Rights; Requirements . Any and all
licenses granted hereunder are subject to:
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LICENSOR’s
and LICENSOR’s AFFILIATES’ right to make and to use the
subject matter described and/or claimed in the KNOW-HOWS and to
permit others at academic, government and not-for-profit
institutions to make and use the subject matter described and/or
claimed in KNOW-HOW for research and educational purposes;
and
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for PATENT
RIGHTS, the requirement that any PRODUCTS used or sold in Canada
shall be manufactured substantially in Canada.
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2.4
No Additional Rights . It is understood that
nothing in this AGREEMENT shall be construed to grant LICENSEE a
license express or implied under any patent owned solely or jointly
by LICENSOR other than the PATENT RIGHTS expressly licensed
hereunder. LICENSOR shall have the right to license any
PATENT RIGHTS to any other party for any purpose inside of the
LICENSE FIELD or the LICENSE TERRITORY on non-exclusive
basis.
3. DUE
DILIGENCE OBLIGATIONS
3.1
Diligence Requirements . LICENSEE shall itself
use, or shall cause its AFFILIATES or SUBLICENSEES, as applicable,
to use, best efforts to develop and make available to the public
PRODUCTS and PROCESSES throughout the LICENSE TERRITORY in the
LICENSE FIELD. Such efforts shall include achieving the
following objectives within the time periods designated below
following the EFFECTIVE DATE:
The product on
a best commercial effort will be developed according to the
Appendix A. In the event the LICENSEE misses the timelines,
LICENSOR and the LICENSEE shall renegotiate a new timeline
reasonable thereafter.
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Post-Sales
Requirements .
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Following the
first COMMERCIAL SALE in any country in the LICENSE TERRITORY,
LICENSEE shall itself or through its AFFILIATES and/or SUBLICENSEES
make continuing COMMERCIAL SALES in such country without any
elapsed time period of one (1) year or more in which such
COMMERCIAL SALES do not occur.
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LICENSEE shall
itself or through an AFFILIATE or SUBLICENSEE make such first
COMMERCIAL SALE within the following countries and regions in the
LICENSE TERRITORY within 2 years after the EFFECTIVE DATE of this
AGREEMENT:
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Achievement of
the foregoing objectives shall be deemed to satisfy
LICENSEE’s obligations to use best efforts under this Section
3.1.
3.2
Diligence Failures . If LICENSOR determines that
LICENSEE has failed to fulfill any of its obligations under Section
3.1, then LICENSOR may treat such failure as a default and may
terminate this AGREEMENT and/or the licenses granted hereunder in
accordance with Section 10.4.
3.3
Diligence Reports . LICENSEE shall provide all
reports with respect to its obligations under Section 3.1 as set
forth in Article 5.
4. PAYMENTS
AND ROYALTIES
4.1
License Issue Fee . LICENSEE shall pay LICENSOR a
non-refundable license issue fee in the sum of hundred Thousands
Dollars ($100,000) or 400,000 common shares of Neurokine upon
execution of this AGREEMENT.
4.2
Patent Cost . LICENSEE shall pay to LICENSOR
Fifty Thousands Dollars ($50,000) or 200,000 common
shares of Neurokine for filling the patents on the
technology.
4.3
Royalty Free License Fee .
The LICENSEE
shall pay to LICENSOR Three Hundred Fifty Thousands Dollars
($350,000) or 1,400,000 common shares of Neurokine one time fee,
instead of 3% annual net sale royalty on the commercialization of
product during its life time.
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No royalty is
required on the is use of the technology as per clause
4.3.
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4.7
Form of Payment . All p
