<PAGE> 1
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON FEBRUARY 3, 2000
REGISTRATION NO. 333-91747
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- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
------------------------
AMENDMENT NO. 3
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
------------------------
ANTIGENICS INC.
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
<TABLE>
<S> <C> <C>
DELAWARE 2836 06-1562417
(STATE OR OTHER JURISDICTION (PRIMARY STANDARD INDUSTRIAL (I.R.S. EMPLOYER
OF INCORPORATION OR ORGANIZATION) CLASSIFICATION CODE NUMBER) IDENTIFICATION NUMBER)
</TABLE>
630 FIFTH AVENUE, SUITE 2100
NEW YORK, NEW YORK 10111
(212) 332-4774
(ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING
AREA CODE, OF REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES)
------------------------
GARO H. ARMEN, PH.D.
CHIEF EXECUTIVE OFFICER
ANTIGENICS INC.
630 FIFTH AVENUE, SUITE 2100
NEW YORK, NEW YORK 10111
(212) 332-4774
(NAME, ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER,
INCLUDING AREA CODE, OF AGENT FOR SERVICE)
------------------------
COPIES TO:
<TABLE>
<S> <C>
MICHAEL LYTTON, ESQ. DANIELLE CARBONE, ESQ.
PAUL KINSELLA, ESQ. SHEARMAN & STERLING
PALMER & DODGE LLP 599 LEXINGTON AVENUE
ONE BEACON STREET NEW YORK, NEW YORK 10022
BOSTON, MASSACHUSETTS 02108 (212) 848-4000
(617) 573-0100
</TABLE>
------------------------
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC: As soon as
practicable after the effective date of this Registration Statement.
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, check the following box. [ ]
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, check the following box and
list the Securities Act registration number of the earlier effective
registration statement for the same offering. [ ] __________
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration number of the earlier effective registration statement for the same
offering. [ ] __________
If this Form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act, check the following box and list the Securities Act
registration number of the earlier effective registration statement for the same
offering. [ ] __________
If delivery of the prospectus is expected to be made pursuant to Rule 434,
check the following box. [ ]
------------------------
THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR
DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL
FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION
STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(a) OF
THE SECURITIES ACT OF 1933 OR UNTIL THE REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(a),
MAY DETERMINE.
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<PAGE> 2
EXPLANATORY NOTE
The sole purpose of this amendment is to re-file Exhibits 10.8, 10.9, 10.10,
10.12 and 10.14 without redaction of certain language for which we no longer
seek confidential treatment.
<PAGE> 3
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION
The following table sets forth the costs and expenses, other than underwriting
discounts and commissions, payable by the Registrant in connection with the sale
of common stock being registered. All amounts are estimates except the
registration fee and the NASD filing fee.
<TABLE>
<CAPTION>
AMOUNT
TO BE
PAID
--------
<S> <C>
Registration fee............................................ $ 14,573
NASD filing fee............................................. 6,020
Nasdaq National Market listing fee.......................... 95,000
Printing and engraving...................................... 150,000
Legal fees and expenses..................................... 300,000
Accounting fees and expenses................................ 250,000
Transfer Agent fees......................................... 3,500
Miscellaneous............................................... 30,907
--------
Total............................................. $850,000
========
</TABLE>
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS
Section 145 of the Delaware General Corporation Law provides that a corporation
may indemnify any person who was or is a party or is threatened to be made a
party to any threatened, pending or completed action, suit or proceeding,
whether civil, criminal, administrative or investigative, other than an action
by or in the right of the corporation, by reason of the fact that the person is
or was a director, officer, employee or agent of the corporation or is or was
serving at the corporation's request as a director, officer, employee or agent
of another corporation, partnership, joint venture, trust or other enterprise,
against expenses, including attorneys' fees, judgments, fines and amounts paid
in settlement actually and reasonably incurred by the person in connection with
the action, suit or proceeding if the person acted in good faith and in a manner
the person reasonably believed to be in or not opposed to the best interests of
the corporation, and, with respect to any criminal action or proceeding, had no
reasonable cause to believe the person's conduct was unlawful. The power to
indemnify applies to actions brought by or in the right of the corporation as
well, but only to the extent of expenses, including attorneys' fees but
excluding judgments, fines and amounts paid in settlement, actually and
reasonably incurred by the person in connection with the defense or settlement
of the action or suit. And with the further limitation that in these actions no
indemnification shall be made in the event of any adjudication of negligence or
misconduct in the performance of his duties to the corporation, unless a court
believes that in light of all the circumstances indemnification should apply.
Article V of Antigenics' By-laws provides that Antigenics shall, to the extent
legally permitted, indemnify each person who was or is a party or is threatened
to be made a party to any threatened, pending or completed action, suit or
proceeding by reason of the fact that he is or was, or has agreed to become, a
director or officer of Antigenics, or is or was serving, or has agreed to serve,
at the request of Antigenics, as a director, officer or trustee of, or in a
similar capacity with, another corporation, partnership, joint venture, trust or
other enterprises. The indemnification provided for in Article V is expressly
not exclusive of any other rights to which those seeking indemnification may be
entitled under any law, agreement or vote of stockholders or disinterested
directors or otherwise, and shall inure to the benefit of the heirs, executors
and administrators of such persons.
Section 145(g) of the Delaware General Corporation Law and Article V of By-laws
of Antigenics provide that the company shall have the power to purchase and
maintain insurance on behalf of its officers, directors, employees and agents,
against any liability asserted against and incurred by such persons in any such
capacity.
II-1
<PAGE> 4
Antigenics has entered into indemnification agreements with each of its
directors and executive officers and has obtained insurance covering its
directors and officers against losses and insuring Antigenics against certain of
its obligations to indemnify its directors and officers.
Section 102(b)(7) of the General Corporation Law of the State of Delaware
provides that a corporation may eliminate or limit the personal liability of a
director to the corporation or its stockholders for monetary damages for breach
of fiduciary duty as a director, provided that such provisions shall not
eliminate or limit the liability of a director (i) for any breach of the
director's duty of loyalty to the corporation or its stockholders, (ii) for acts
or omissions not in good faith or which involve intentional misconduct or a
knowing violation of law, (iii) under Section 174 of the General Corporation Law
of the State of Delaware, or (iv) for any transaction from which the director
derived an improper personal benefit. No such provision shall eliminate or limit
the liability of a director for any act or omission occurring prior to the date
when such provision becomes effective.
Pursuant to the Delaware General Corporation Law, Section 7 of Article FIFTH of
the Certificate of Incorporation of Antigenics eliminates a director's personal
liability for monetary damages to Antigenics and its shareholders for breach of
fiduciary duty as a director, except in circumstances involving a breach of the
director's duty of loyalty to Antigenics or its shareholders, acts or omissions
not in good faith, intentional misconduct, knowing violations of the law,
self-dealing or the unlawful payment of dividends or repurchase of stock.
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES
We have sold and issued the following securities in the previous three years.
In 1996, we completed a private placement offering of equity interests in
Antigenics L.L.C. equal to 10.6% of the total post-offering equity interests in
the L.L.C. for an aggregate sale price of $10,600,000.
In January 1999, we completed a private placement offering of equity interests
in Antigenics L.L.C. equal to 13.8% of the total post-offering equity interests
in the L.L.C. for an aggregate sales price of $27,572,000.
In November 1999, we completed a private placement offering of (i) equity
interests in Antigenics L.L.C. equal to 13.56% of the total post-offering equity
interests in the L.L.C. and (ii) warrants to purchase equity interests in the
L.L.C. equal to 1.36% of the total post-offering equity interests in the L.L.C.
The equity interests and warrants were sold for an aggregate of approximately
$39,200,000.
All of the above sales of L.L.C. equity interests were made in reliance on the
exemption from registration under Section 4(2) of the Securities Act of 1933, as
amended, as transactions not involving a public offering.
The registrant has from time to time granted options to purchase equity
interests in Antigenics L.L.C. As of December 31, 1999, following the company's
reorganization into a corporation, the registrant will have options with a
weighted average exercise price of $5.89 per share that are, in the aggregate,
exercisable for 8.2% of the total common stock of the registrant, assuming all
of these options are exercised. The options were issued in reliance upon
exemptions from registration pursuant to either Section 4(2) of the Securities
Act of 1933, as amended, or Rule 701 promulgated under the Securities Act of
1933, as amended.
Concurrently with the closing of this offering, the registrant will merge with
Antigenics, L.L.C. Members of the L.L.C. will receive shares of the registrant's
common stock in exchange for their equity interests at a rate of 172.0336 shares
per percentage equity interest, for an aggregate of approximately 20,715,942
shares of common stock. The issuance of the registrant's common stock upon
contribution of the equity interests in the L.L.C. will be made in reliance on
the exemption from registration under Section 4(2) of the Securities Act of 1933
and Rule 506 thereunder as a transaction not involving a public offering.
The registrant retained two placement agents in connection with the November
1999 private placement who received aggregate compensation of $217,769 in cash
and will receive $76,298 in members' equity for
II-2
<PAGE> 5
their services. There were no underwriters employed in connection with any of
the other transactions set forth in Item 15.
For additional information concerning these equity investment transactions,
reference is made to the information contained under the caption "Certain
Relationships and Related Transactions" in the form of prospectus included
herein.
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES
(a) Exhibits
See the Exhibit Index, which is incorporated herein by reference.
(b) Financial Statement Schedules
None.
Schedules not listed above have been omitted because the information required to
be set forth therein is not applicable or is shown in the consolidated financial
statements or notes thereto.
ITEM 17. UNDERTAKINGS
Insofar as indemnification for liabilities arising under the Securities Act of
1933 may be permitted to directors, officers and controlling persons of the
registrant pursuant to the provisions referenced in Item 14 of this Registration
Statement or otherwise, the registrant has been advised that in the opinion of
the Securities and Exchange Commission such indemnification is against public
policy as expressed in the Act and is, therefore, unenforceable. In the event
that a claim for indemnification against such liabilities (other than the
payment by the registrant of expenses incurred or paid by a director, officer or
controlling person of the registrant in the successful defense of any action,
suit or proceeding) is asserted by such director, officer or controlling person
in connection with the securities being registered, the Registrant will, unless
in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the Act and
will be governed by the final adjudication of such issue.
The undersigned Registrant hereby undertakes to provide to the underwriter at
the closing specified in the underwriting agreements, certificates in such
denominations and registered in such names as required by the underwriter to
permit prompt delivery to each purchaser.
The undersigned registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities Act,
the information omitted from the form of prospectus filed as part of this
registration statement in reliance upon Rule 430A and contained in a form of
prospectus filed by the registrant pursuant to 424(b)(1) or (4), or 497(h) under
the Securities Act shall be deemed to be part of this registration statement as
of the time it was declared effective.
(2) For the purpose of determining any liability under the Securities Act,
each post-effective amendment that contains a form of prospectus shall be deemed
to be a new registration statement relating to the securities offered therein,
and the offering of such securities at that time shall be deemed to be the
initial bona fide offering thereof.
II-3
<PAGE> 6
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the Registrant
certifies that it has duly caused this Registration Statement to be signed on
its behalf by the undersigned, thereunto duly authorized, in the Town of Woburn,
Commonwealth of Massachusetts, as of February 3, 2000.
ANTIGENICS INC.
By: /s/ GARO ARMEN
------------------------------------
Garo H. Armen
Chief Executive Officer and
Chairman of
the Board of Directors
POWER OF ATTORNEY
Pursuant to the requirements of the Securities Act of 1933, this Registration
Statement has been signed below by the following persons in the capacities and
as of the dates indicated.
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
- --------- ----- ----
<S> <C> <C>
* Chief Executive Officer and February 3, 2000
- --------------------------------------------------- Chairman of the Board of
Garo Armen, Ph.D. Directors (Principal
Executive Officer and
Principal Financial and
Accounting Officer)
* Director February 3, 2000
- ---------------------------------------------------
Pramod Srivastava, Ph.D.
* Director February 3, 2000
- ---------------------------------------------------
Noubar Afeyan, Ph.D.
* Director February 3, 2000
- ---------------------------------------------------
Edward Brodsky
* Director February 3, 2000
- ---------------------------------------------------
Gamil de Chadarevian
* Director February 3, 2000
- ---------------------------------------------------
Tom Dechaene
* Director February 3, 2000
- ---------------------------------------------------
Donald Panoz
* Director February 3, 2000
- ---------------------------------------------------
Martin Taylor
*By: /s/ GARO ARMEN
- ---------------------------------------------------
As Attorney-in-Fact
</TABLE>
II-4
<PAGE> 7
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
<C> <S>
1.1 Form of Underwriting Agreement. Previously filed.
3.1 Certificate of Incorporation of Antigenics Inc. Previously
filed.
3.2 By-laws of Antigenics Inc. Previously filed.
4.1 Form of Common Stock Certificate. Previously filed.
4.2 Form of Warrant to purchase Common Stock, together with a
list of holders. Previously filed.
4.3 Form of Subscription Agreement, as amended, together with a
list of parties thereto. Previously filed.
5.1 Opinion of Palmer & Dodge LLP. Previously filed.
10.1* 1999 Equity Incentive Plan. Previously filed.
10.2* 1999 Employee Stock Purchase Plan. Previously filed.
10.3 Founding Scientist's Agreement between Antigenics and Pramod
K. Srivastava dated March 28, 1995. Previously filed.
10.4 Form of Indemnification Agreement between Antigenics and its
directors and executive officers. These agreements are
materially different only as to the signatories and the
dates of execution. Previously filed.
10.5 Lease Agreement between Antigenics and Cummings Property
Management, Inc. dated May 28, 1998, as amended on December
10, 1998. Previously filed.
10.6 License Agreement between GHA Management Corporation and
Antigenics dated November 12, 1999. Previously filed.
10.7 Master Loan and Security Agreement between Antigenics and
Finova Technology Finance, Inc. dated November 19, 1998.
Previously filed.
10.8 Patent License Agreement between Antigenics and Mount Sinai
School of Medicine dated November 1, 1994, as amended on
June 5, 1995. Filed herewith.(1)
10.9 Sponsored Research and Technology License Agreement between
Antigenics and Fordham University dated March 28, 1995, as
amended on March 22, 1996. Filed herewith.(1)
10.10 Research Agreement between Antigenics and The University of
Connecticut Health Center dated February 18, 1998. Filed
herewith.(1)
10.11 License Agreement between Antigenics and Duke University
dated March 4, 1999. Previously filed.(1)
10.12 License Agreement between Antigenics and University of Miami
dated April 12, 1999. Filed herewith.(1)
10.13 Letter Agreement between Antigenics and Sigma-Tau Industrie
Farmaceutiche Riunite SpA dated June 3, 1998. Previously
filed.(1)
10.14 Letter Agreement between Antigenics and Medison Pharma Ltd.
dated November 15, 1999. Filed herewith.
10.15 Amendment to Letter Agreement between Antigenics and
Sigma-Tau Industrie Farmaceutiche Riunite SpA dated October
20, 1999. Previously filed.
10.16* Employment Agreement between Antigenics and Elma Hawkins,
Ph.D. dated June 1, 1998. Previously filed.
10.17* Antigenics 401(k) Plan. Previously filed.
10.18* Antigenics L.L.C. Incentive Equity Plan. Previously filed.
23.1 Consent of KPMG LLP. Previously filed.
23.2 Consent of Palmer & Dodge LLP. Included in the opinion filed
as Exhibit 5.1.
24.1 Power of Attorney. Included on the signature page of the
initial filing of this Registration Statement.
27.1 Financial Data Schedule (available in EDGAR format only).
Previously filed.
</TABLE>
- ---------------------------------------------
* Indicates a management contract or compensatory plan.
(1)This Exhibit has been filed separately with the Commission pursuant to an
application for confidential treatment. The confidential portions of this
Exhibit have been omitted and are marked by an asterisk.
<PAGE> 1
EXHIBIT 10.8
PATENT LICENSE AGREEMENT
This Patent License Agreement (the "Agreement") is made and entered as
of the 1st day of November, 1994 by and between Antigenics, Inc., a Delaware
corporation having its principal place of business c/o Armen Partners, L.P., 135
East 57th Street, 30th Floor, New York, N.Y. 10022 ("Antigenics"), and Mount
Sinai School of Medicine, located at One Gustave L. Levy Place,. New York, NY
10029 ("MSSM").
RECITALS:
WHEREAS, Dr. Pramod K. Srivastava ("Dr. Srivastava") was formerly on
the faculty of and performed research and development at. MSSM in the area of
the use of heat shock proteins for the development of therapeutic and
prophylactic vaccines for cancer and infectious diseases;
WHEREAS, Antigenics desires to obtain and MSSM desires to grant
exclusive licenses to the patent rights which resulted from Dr. Srivastava's
research and development efforts in heat shock proteins at MSSM;
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and other good and valuable consideration, Antigenics and MSSM hereby
agree as follows;
1. LICENSE OF PATENT RIGHTS.
(a) DEFINITIONS OF PATENT RIGHTS. "MSSM Patent Rights" shall
be defined as U.S. patent application serial nos. 08/210,421, 8/315,892 and
08/180,685 and all U.S. patents which issue therefrom, including without
limitation, any continuations, divisionals, continuations-in-part, reissues,
reexaminations and related foreign applications and patents issuing therefrom or
patents which are owned by MSSM based on Pramod Srivastava's work conducted at
MSSM prior to January 1, 1994. For purposes of this Agreement, the term
"Licensed Products" shall be defined as products covered by the MSSM Patent
Rights.
(b) GRANT OF LICENSE. In consideration if the royalty set out
in Section 2(a) and other consideration set forth in Section 2(b), MSSM hereby
grants to Antigenics a worldwide, exclusive license to all MSSM Patent Rights.
In consideration of the mutual covenants herein contained, MSSM hereby agrees to
execute and deliver all documents and instruments and to take any other action
on a best efforts basis which Antigenics shall deem necessary to perfect patent
protection in the United States and in foreign countries with respect to, or to
perfect said exclusive license to the MSSM Patent Rights in Antigenics.
<PAGE> 2
(c) RIGHT TO SUBLICENSE. Antigenics may not grant sublicenses
to the MSSM Patent Rights without the prior written consent of MSSM.
(d) PROTECTION OF MT. SINAI PATENT RIGHTS. MSSM hereby agrees
that upon request of Antigenics, authorized officials of MSSM will execute and
deliver any and all documents or instruments and take any other action which
Antigenics shall deem necessary to transfer and vest an exclusive license in
Antigenics, to perfect copyright and patent protection with respect to, or to
protect Antigenics' interest in, all of its rights and interests in and to such
MSSM Patent Rights. Antigenics shall have the right to prepare, file and
prosecute, by counsel of its choice, any U.S. and foreign patent applications
covering inventions arising out of the MSSM Patent Rights. Antigenics shall
prepare, file and prosecute any such patent applications at its own expense. In
the event that Antigenics elects not to apply for patent protection in a foreign
country, or fails to prosecute U.S. patent applications, MSSM shall have the
right to prepare and file its own patent application at MSSM's expense. Without
limiting the generality of the foregoing, MSSM specifically agrees to execute
all documents, and take any other actions necessary to perfect filing of such
patent applications in the U.S. Patent and Trademark Office and in such foreign
Patent Offices as Antigenics shall choose to file. MSSM agrees to notify
Antigenics of any Patent Office actions taken after execution of this Agreement
which affect the Patent Rights to the extent that MSSM is aware of such Patent
Office actions. MSSM will use its best efforts to assist Antigenics with
responses to such Patent Office actions. The obligations of this Section 1(d)
shall be binding upon the successors and assigns of MSSM. Antigenics agrees to
pay all copyright and patent fees and reasonable expenses incurred by MSSM for
any assistance rendered to Antigenics pursuant to the foregoing.
(e) NIH AND OTHER INSTITUTIONAL FUNDING. MSSM and Antigenics
each acknowledges that certain of the research and development efforts that are
embodied in MSSM Patent Rights were funded in whole or in part by institutions
other than MSSM, including the National Institutes of Health and the Cancer
Research Institute (the "Institutions").
MSSM represents and warrants that it has taken and will take any
actions required by such Institutions or applicable law to be taken to obtain
ownership right, title and interest in any MSSM Patent Rights to be licensed
hereunder. Both Antigenics and MSSM agree to comply with all laws, regulations
and requirements of NIH or any other government agency with respect to research
sponsored by such agency and MSSM Patent Rights resulting therefrom. Without
limiting the foregoing, if required by law, Antigenics agrees to manufacture in
the United States Licensed Products which are to be sold in the United States.
2. ROYALTIES; EQUITY INTEREST.
(a) ROYALTIES. For the rights and privileges granted under
this Agreement, Antigenics shall pay to MSSM a royalty of [ ]*
on Net Sales of Licensed Products from the date hereof until the date the last
patent embodying or using the
________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
2
<PAGE> 3
Patent Rights has expired. For purposes of this Agreement "Net Sales" shall mean
sales that are net of any take-backs and/or trade discounts or allowances
whether Licensed Products are sold by Antigenics or another party with which
Antigenics has a marketing agreement. Royalties are payable for sales of
Licensed Products only if a patent has been issued or is pending which covers
the country or countries in which such Licensed Products are sold. If and only
for so long as gross margins on Net Sales of Licensed Products [ ]*,
Antigenics shall pay MSSM a royalty of [ ]* of Net Sales of such
Licensed Products.
On or before the forty-fifth (45th) day following each fiscal quarter,
Antigenics shall submit to MSSM full and accurate statements showing the
quantity, description and Net Sales of Licensed Products distributed and/or sold
during the preceding fiscal quarter, including any additional information kept
in the ordinary course of business by Antigenics, which is appropriate to enable
an independent determination of the amount due hereunder. All payments then due
MSSM shall be made simultaneously with the submission of the statements. Such
quarterly statements shall be submitted only when they reflect any sales.
Antigenics shall inform MSSM within thirty (30) days of the first sale of
Licensed Products. In addition, Antigenics will provide MSSM with audited
financial statements within ninety (90) days of the end of Antigenics' fiscal
year provided, however, that Antigenics shall not be required to deliver audited
financial statements until such time as there are sales of Licensed Products.
(b) EQUITY INTEREST. For the rights and privileges granted
under this Agreement, in-addition to the royalty described in Section 2(a),
Antigenics shall, pursuant to a Subscription Agreement which shall include
appropriate investment representations, deliver to MSSM a certificate
representing ten (10) shares of Antigenics common stock, representing 1% of
Antigenics issued and outstanding stock as of the date hereof. Antigenics
represents that as of the date of this Agreement, Antigenics has only one class
of stock outstanding.
3. DUE DILIGENCE.
Antigenics represents and warrants that it will use due diligence to
make Licensed Products commercially available. Antigenics will use its best
efforts to reach the following milestones:
(i) Phase I clinical trials to commence by December 31, 1997
and Phase II clinical trials will be initiated by December 31, 1999 provided
that the Phase I Clinical Trials indicate a reasonable scientific basis for
possible efficacy and indicate acceptable toxicity.
(ii) Additional funding of at least $1.5 million to be
completed by June 30, 1996.
(iii) Pre-clinical studies evaluating the optimal dose of gp96
and hsp70 for eliciting immunity to at least two mouse sarcomas (using enough
numbers of mice to be statistically significant) to be completed by March 31,
1997.
(iv) The efficacy of gp96 and hsp70, complexed to at least one
known antigenic peptide, in eliciting peptide-specific cellular and antibody
response, to be evaluated in a mammalian system by January 31, 1998.
(v) At least five (5) different adjuvants to be tested under
the conditions identified in Section 3(iv) by September 30, 1996.
(vi) A clinical director to be designated before the
initiation of Phase III Clinical Trials.
(vii) A chief executive officer of Antigenics to be hired after
the earlier of (a) the investment of a total of $5 million in equity capital in
Antigenics or (b) the filing of the first New Drug Application.
(viii) A chief financial officer to be hired when Antigenics'
total annual budget exceeds $3 million.
_________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
3
<PAGE> 4
Antigenics will notify MSSM as to the status of the milestones outlined
in this Section 30 days prior to the date of each milestone. If at any time MSSM
is of the opinion that Antigenics is not using due diligence to make Licensed
Products commercially available, as outlined above, MSSM shall notify Antigenics
to that effect, and Antigenics shall have six (6) months after such notice
within which to cure or to make arrangements satisfactory to MSSM. If at the end
of the six (6) month period MSSM and Antigenics cannot agree that Antigenics is
using due diligence, then MSSM may, at its option, convert the exclusive license
described in section 1(b) to a non-exclusive license upon thirty (30) days'
notice to Antigenics. At such time as the exclusive license becomes
non-exclusive, MSSM's obligations pursuant to Section 1(d) shall terminate.
Notwithstanding the foregoing, Antigenics' obligation to pay royalties pursuant
to Section 2(a) shall not terminate upon any conversion of the exclusive license
to a non-exclusive license.
4. INDEMNIFICATION. Antigenics shall indemnify, defend and hold
harmless, MSSM, its directors, officers, employees and agents (the
"Indemnitees") from and against any liability, damage, loss or expense
(including reasonable attorney's fees) incurred or imposed upon Indemnitees
arising in connection with any claim, suit, action, loss, settlement, demand or
judgment that arises, directly or indirectly, out of the design, manufacture,
sale, use, distribution or promotion by Antigenics or any of its licensees,
affiliates or agents of any product, process or service developed pursuant to
this Agreement or arising out of the acts or omissions of Antigenics committed
in the course of the performance of this Agreement. Antigenics'
4
<PAGE> 5
obligation to protect, defend, indemnify and hold harmless hereunder shall
survive the expiration and termination of the Agreement.
Antigenics agrees to obtain product liability insurance covering claims
arising or resulting from the design, manufacture, sale, use, distribution or
promotion f the Licensed Products prior to the time human clinical trials o the
Licensed Products are commenced. The amount of such product liability insurance
will be acceptable to MSSM and consistent with industry practice for companies
which are similar to Antigenics and institutions which are similar to MSSM. Such
insurance shall be underwritten by insurers acceptable to MSSM, and shall list
MSSM as an additional named insured.
5. NON-DISCLOSURE.
Unless required by law, MSSM agrees that it will not at any time,
either during or after the term of this Agreement, without the prior written
consent of Antigenics, divulge or disclose to anyone outside, or appropriate for
its own use or lie use of any third party, any financial or patent-related
information received from Antigenics after execution of this Agreement which is
marked "Confidential" (such information shall be referred to as "Confidential
Information"), and will not during the term hereof, or at any time thereafter,
disclose or use or attempt to use any such Confidential Information for its own
benefit, or the benefit of any third party, or in any manner which may injure or
cause loss or may be calculated to injure or cause loss to Antigenics. MSSM's
obligations contained in this subsection 5 shall lapse on the termination of
this Agreement.
6. GENERAL.
(a) ENTIRE AGREEMENT. This Agreement constitutes the entire
Agreement between the parties relative to the subject matter hereof, and
supersedes all proposals or agreements, written or oral, and all other
communications between the parties relating to the subject matter of this
Agreement.
(c) SEVERABILITY. The parties agree that each provision of
this Agreement shall be treated as a separate and independent clause, and the
unenforceability of any one clause shall in no way impair the enforceability of
any of the other clauses herein. Moreover, if any one or more of the provisions
of this Agreement shall for any reason be held to be exclusively broad as to
scope, activity or subject so as to be enforceable at law, such provisions shall
be construed by the appropriate judicial body by limiting and reducing it or
them, so as to be enforceable to the maximum extent compatible with the
applicable law as it shall then appear.
(d) ASSIGNMENT. Antigenics may assign its rights, together
with its obligations hereunder, to any affiliate or successor in connection with
any consolidation, merger, sale, transfer or other disposition of all or
substantially all of Antigenics' business and assets. In the event of an
consolidation or merger of Antigenics' with or into any other corporation, or
the sale or conveyance of -all or substantially all of the assets of Antigenics
to another corporation, the surviving or acquiring corporation shall be entitled
to the rights and benefits provided under this Agreement, and become obligated
to perform all of the terms and conditions hereof. The foregoing
notwithstanding, Antigenics may also transfer its rights hereunder with the
consent of MSSM which consent shall not be withheld unreasonably.
5
<PAGE> 6
(e) GOVERNING LAW. This Agreement shall be construed and
enforced in accordance with, and the rights of the parties shall be governed by,
the internal laws of the State of New York.
(f) NOTICE. All notices provided for in this Agreement shall
be given in writing and shall be effective when either served by personal
delivery, express overnight courier service, or by registered or certified mail,
return receipt requested, addressed to the parties at their respective address s
herein set forth, or to such other address or addresses as either party may
later specify by written notice to the other.
(g) SURVIVAL. The provisions set forth in Sections 4, 5, and 6
shall survive the termination or expiration of this Agreement for the periods
set forth herein as a continuing agreement of the parties hereto.
(h) REMEDIES. The parties agree that a breach of the
provisions of Section 5 of this Agreement by either party will cause irreparable
damage to the other party and that in the event of such breach the party who has
suffered the breach shall have, in addition to any and all remedies of law, the
right to an injunction, specific performance or other equitable relief to
prevent the violation of the other party's obligations hereunder. Nothing herein
contained shall be construed as prohibiting either party from pursuing any other
remedies available to either for breach by the other under this Agreement or
applicable law.
(i) TERM. The term of this Agreement shall be until the last
patent embodying or using the MSSM Patent Rights has expired. MSSM may terminate
this agreement if after at least sixty (60) days' written notice by MSSM to
Antigenics, Antigenics shall continue to fail to pay any royalties then due
under Section 2(a). The termination of this Agreement will not relieve
Antigenics of its obligations to make any payments required hereunder.
(j) USE OF NAME. Except where required by law, Antigenics may
not use the name "Mount Sinai School of Medicine", the MSSM logo or the MSSM
insignia in any advertisement, commercial or product literature without the
express written consent of MSSM. If Antigenics is required by law to use the
name "Mount Sinai School of Medicine", Antigenics will only use such name in
connection with factually correct information. The "Mount Sinai School of
Medicine" name may be used in connection with fundraising activities of
Antigenics with MSSM's consent, which consent may not be unreasonably withheld.
This Agreement may be executed in duplicate counterparts, which, when
taken together, shall constitute one instrument and each of which shall be
deemed to be an original instrument.
6
<PAGE> 7
IN WITNESS WHEREOF, parties have executed this Agreement as of the day
and year first above written.
ANTIGENICS, INC.
By: /s/ Garo H. Armen
-----------------------------------
President
MOUNT SINAI SCHOOL OF MEDICINE
By: /s/ Nathan Kase
-----------------------------------
Title Dean MSSM
----------------------------
7
<PAGE> 8
AMENDMENT TO
PATENT LICENSE AGREEMENT
BY AND BETWEEN
ANTIGENICS, INC.
AND
MOUNT SINAI SCHOOL OF MEDICINE
THIS AMENDMENT TO THE PATENT LICENSE AGREEMENT ("AMENDMENT"), effective
as of June 5, 1995 ("EFFECTIVE DATE"), is made and entered into by and between
ANTIGENICS, INC., a Delaware corporation having a principal place of business
c/o Armen Partners, 135 East 57th Street, 30th Floor, New York, New York 10022,
("Antigenics") and MOUNT SINAI SCHOOL OF MEDICINE, having a principal of
business at One Gustave L. Levy Place, New York, New York 10029 ("MSSM").
WHEREAS Antigenics and MSSM entered into a Patent License Agreement
("License Agreement") effective as of November 1, 1994 pursuant to which
Antigenics obtained a worldwide, exclusive license under the MSSM Patent Rights
(as defined in the License Agreement); and
WHEREAS Antigenics and MSSM desire to amend the License Agreement to
provide for modification of the obligations of the parties.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
1. RIGHT TO SUBLICENSE
Section 1(c) of the License Agreement is hereby amended to read in its
entirety as follows:
(c) RIGHT TO SUBLICENSE. Antigenics may grant sublicenses to
the MSSM Patent Rights; provided that, at least ten (10) business days
prior to the effective date of any such sublicense, Antigenics, in
accordance with Section 6(f), shall provide written notice to MSSM of
Antigenics' intention to grant such sublicense, such notice to be
provided for the purpose of obtaining MSSM's consent. MSSM agrees that
such consent shall not be unreasonably withheld. In addition, MSSM may
provide comments to Antigenics relating to the terms and conditions of
such sublicense. In the event that MSSM provides no comments to
Antigenics in writing within five (5) business days after receipt of
Antigenics' written notice, MSSM will be deemed to have given consent
to such sublicense. In the event that MSSM provides comments to
Antigenics in writing within five (5) business days after receipt of
Antigenics' written notice, Antigenics shall consider such comments in
good faith and shall in incorporate such comments into the sublicense
to the extent necessary to provide that Antigenics complies with its
obligations to MSSM under the License Agreement.
8
<PAGE> 9
2. OTHER PROVISIONS
All provisions of the License Agreement not expressly modified by this
Amendment shall remain in full force and effect.
9
<PAGE> 10
IN WITNESS WHEREOF, the parties hereto have caused authorized their
duly authorized representatives to execute this Amendment.
ANTIGENICS, INC. MOUNT SINAI SCHOOL OF MEDICINE
("Antigenics") ("MSSM")
By: /s/ Garo H. Armen By: /s/ Nathan Kase
-------------------------------- ---------------------------------
Name: Garo H. Armen Name: Nathan Kase
-------------------------------- ---------------------------------
Title: Chairman and CEO Title: Dean
-------------------------------- ---------------------------------
10
<PAGE> 1
EXHIBIT 10.9
SPONSORED RESEARCH AND
TECHNOLOGY LICENSE AGREEMENT
This Sponsored Research and Technology License Agreement (the
"Agreement") is made and entered into this 28th day of March, 1995 by and
between Antigenics, Inc., a Delaware corporation having its principal place of
business c/o Armen Partners, L.P., 30 Rockefeller Plaza, Suite 4220, New York,
N.Y. 10011 ("Antigenics"), and Fordham University, located at 441 East Fordham
Rd., Bronx, New York 10458-5153 ("Fordham").
R E C I T A L S:
WHEREAS, Dr. Pramod K. Srivastava ("Dr. Srivastava") is currently on
the faculty of and performing research and development at Fordham in the area of
the use of heat shock proteins for the development of therapeutic and
prophylactic vaccines for cancer and infectious diseases (the "Field");
WHEREAS, Antigenics desires to sponsor, support and fund Dr.
Srivastava's research and development efforts at Fordham in the Field and obtain
exclusive rights to the intellectual property which has resulted to date from
his research and development efforts in the Field at Fordham and which may
result from his continuing research and development efforts in the Field at
Fordham; and
WHEREAS, Fordham desires to obtain funding for Dr. Srivastava's
research and development efforts in the Field and to support the
commercialization of the results of such efforts;
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and other good and valuable consideration, Antigenics and Fordham hereby
agree as follows:
1. Sponsored Research.
(A) PERIOD OF PERFORMANCE; TERM. This Agreement shall begin on
the date hereof and shall continue in effect for a period of three (3) years
(the "Initial Term"). The term of this Agreement shall be extended beyond the
Initial Term for one or more additional one (1) year periods (individually, an
"Additional Term") unless either party desires not to extend the term of this
Agreement for an additional term, in which case such party shall give the other
party at least thirty (30) days' prior written notice of his or its intention
not to extend the Agreement for an Additional Term. As used in this Agreement,
the term of the Agreement shall include the Initial Term and any Additional
Terms. Notwithstanding the foregoing, Antigenics may terminate this agreement on
thirty (30) days' prior notice if Dr. Srivastava dies, becomes incapacitated or
otherwise incapable of performing his duties at Fordham or if Dr. Srivastava
becomes affiliated with a university or institution other than Fordham. The
termination of this Agreement will not relieve Antigenics of its obligation to
make any payments due but unpaid on the date of termination.
<PAGE> 2
(B) STATEMENT OF WORK. Fordham agrees to use its best efforts
to facilitate the performance by Dr. Srivastava and his laboratory personnel at
Fordham of the project set forth and described on EXHIBIT A attached hereto (the
"Project").
(C) RESEARCH SUPPORT. Antigenics will supply the equipment to
be associated with the Project as set forth and described on EXHIBIT B hereto.
All such property supplied by Antigenics will be the property of Antigenics.
Antigenics will pay Fordham all direct and indirect costs for space, supplies,
services and personnel incurred by Fordham in the performance of the Project,
which, for the term hereof, shall not exceed a total of $100,000 per quarter
all as itemized and set forth as Exhibit B hereto without the prior written
authorization of Antigenics. The parties agree to update EXHIBIT B from time to
time and at least annually as of November 1 of each year during the term hereof.
No update of EXHIBIT B will be effective unless executed by each of the parties
hereto.
(D) PAYMENT. An initial payment of $100,000 has been paid to
Fordham covering the quarter commencing November 1, 1994 and ending January 31,
1995. An additional payment of $100,000 will be made upon execution of this
Agreement covering the quarter commencing February 1, 1995 and ending April 30,
1995. The remaining quarterly payments of $100,000 will be payable in advance as
of the first day of the quarter commencing May 1, 1995. Notwithstanding the
foregoing, Fordham shall reimburse to Antigenics the pro rata portion of any
quarterly payment paid if this Agreement shall terminate within a quarter for
which payment has been made in advance.
2. LICENSE OF INTELLECTUAL PROPERTY.
(A) DEFINITION OF INTELLECTUAL PROPERTY. "Intellectual
Property" shall mean all inventions, discoveries, know-how, technical
information, improvements and other information which are or were conceived
(whether or not reduced to practice) and/or made or become known (i) by
employees of Fordham, including Dr. Srivastava, (ii) jointly by employees of
Fordham and employees of Antigenics, if any, or (iii) by employees of or
consultants to Antigenics, if any, at Dr. Srivastava's Fordham laboratory in the
Field or resulting or arising from or in connection with the performance of the
Project hereunder.
(B) GRANT OF LICENSE. In consideration of the research support
set out in Section 1(C) hereinabove and other good and valuable consideration,
Fordham hereby grants to Antigenics a worldwide, exclusive license to all
Intellectual Property resulting or arising from or in connection with the
performance of the Project hereunder, including all patents and patent
applications and specifically the patent applications described in subsection
2(C) hereof.
(C) PROTECTION OF INTELLECTUAL PROPERTY RIGHTS. Fordham hereby
agrees that it will promptly disclose to Antigenics any and all of such
intellectual Property in a manner that will enable Antigenics to use effectively
such Intellectual Property, and that, upon request of
2
<PAGE> 3
Antigenics, authorized officials of Fordham will execute and deliver any and all
documents or instruments and take any other action which Antigenics shall deem
necessary to transfer and vest an exclusive license in Antigenics, to perfect
copyright and patent protection with respect to, or to protect Antigenics'
interest in, all of its rights and interests in and to such Intellectual
Property. Antigenics shall have the right to prepare, file and prosecute, at its
own expenses, by counsel of its choice, any U.S. and foreign patent applications
covering inventions arising out of the Intellectual Property. Without limiting
the generality of the foregoing, Fordham specifically agrees to execute all
documents, to ensure the cooperation of its employees, and take any other
actions necessary to perfect filing of such patent applications in the U.S.
Patent and Trademark Office and in such foreign Patent Offices as Antigenics
shall choose to file. The obligations of this Section 2 shall continue beyond
the termination of this agreement with respect to such Intellectual Property and
shall be binding upon the successors and assigns of Fordham. Antigenics agrees
to pay all copyright and patent fees and expenses incurred by Fordham for any
assistance rendered to Antigenics pursuant to the foregoing.
(D) RIGHT TO SUBLICENSE. Antigenics may not grant sublicenses
to the Intellectual Property without the prior written consent of Fordham which
consent shall not be unreasonably withheld. Notwithstanding the foregoing,
Antigenics may grant sublicenses to the Intellectual Property to its affiliates
without the prior written consent of Fordham.
(E) NIH AND OTHER INSTITUTIONAL FUNDING. Fordham and
Antigenics each acknowledges that certain of the research and development,
efforts that are embodied in certain of the Intellectual Property to which
Antigenics will receive exclusive license rights hereunder were funded in whole
or in part by institutions other than Fordham, including the National Institutes
of Health and the Cancer Research Institute (the "Institutions"). The parties
also acknowledge that the Project may be partially funded by other Institutions.
Fordham hereby represents and warrants that it has taken and will take any
actions required by such Institutions or applicable law to be taken to obtain
ownership right, title and interest in any Intellectual Property to be licensed
hereunder. During the term hereof, both Antigenics and Fordham agree to comply
with all laws, regulations and requirements of NIH or any other government
agency with respect to research sponsored by such agency and Intellectual
Property resulting therefrom. Each party agrees to indemnify and hold harmless
the other party in the event of a breach of the provisions of this Section 2(E).
3. ROYALTIES. For the rights and privileges granted under this
Agreement, Antigenics shall pay to Fordham a royalty of [ ]*on Net Sales of any
product covered by any patent based on the Intellectual Property licensed
hereunder from the date hereof until the date the last such patent has expired.
For purposes of this Agreement "Net Sales" shall mean sales that are net of any
take-backs and/or trade discounts or allowances whether products are sold by
Antigenics or another party with which Antigenics has a marketing agreement.
Royalties are payable for sales of products only if a patent has been issued or
is pending which covers the country or countries in which such products are
sold.
_________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
3
<PAGE> 4
On or before the forty-fifth (45th) day following each fiscal quarter,
Antigenics shall submit to Fordham full and accurate statements showing the
quantity, description and Net Sales of any products distributed and/or sold
during the preceding fiscal quarter and covered by the foregoing royalty payment
obligation, including any additional information kept in the ordinary course of
business by Antigenics, which is appropriate to enable an independent,
determination of the amounts due hereunder. All payments then due Fordham shall
be made simultaneously with the submission of the statements. Such quarterly
statements shall be submitted only when they reflect any sales. Antigenics shall
inform Fordham within thirty (30) days of the first such sale. In addition,
Antigenics will provide Fordham with audited financial statement within ninety
(90) days of the end of Antigenics' fiscal year provided, however, that
Antigenics shall not be required to deliver-audited financial statements until
such time as there are sales hereunder.
4. ACKNOWLEDGMENT OF AGREEMENT BETWEEN ANTIGENICS AND DR. SRIVASTAVA.
Fordham hereby acknowledges that Dr. Srivastava will enter into an agreement or
agreements with Antigenics which will provide, among other things, for Dr.
Srivastava to receive an equity interest in Antigenics and to consult for
Antigenics.
5. MUTUAL NON-DISCLOSURE.
(A) PROPRIETARY INFORMATION. For purposes of this Agreement,
the term "Proprietary Information" shall mean all knowledge and information
which each party hereto has acquired or may acquire as a result of, or related
to the performance of the terms of this Agreement concerning the other party's
business, finances, operations, strategic planning, research and development
activities, products, molecules, organisms, laboratory materials, prototypes,
software programs, firmware, designs, systems, improvements, applications,
processes, trade secrets, services, cost and pricing policies, and including,
but not limited to, information relating to formulae, diagrams, schematics,
notes, data, memoranda, methods, know-how, techniques, inventions, and
purchasing, merchandising and selling strategies. Notwithstanding the foregoing
sentence such Proprietary Information does not include (i) information which is
or becomes publicly available (excepts as may be disclosed by either party in
violation of this Agreement), or (ii) information acquired by either party from
a third-party source, other than the other party or any of its employees,
consultants or shareholders, which source legally acquired such information from
the party for whom the information is Proprietary Information.
(B) NONDISCLOSURE OBLIGATION. Each party agrees that it will
not at any time, either during or after the term of this Agreement, without the
prior written consent of the other party, divulge or disclose to anyone outside
of the other party, or appropriate for his own use or the use of any third
party, any such Proprietary Information, and will not during the term hereunder,
or at any time thereafter, disclose or use or attempt to use any such
Proprietary Information for his own benefit, or the benefit of any third party,
or in any manner which may injure or cause loss or may be calculated to injure
or cause loss to the other party. Each party's obligations contained in this
subsection 5(B) shall lapse on the fifth anniversary of the termination of this
Agreement. Each party shall obtain from personnel, agents or other
representatives employed or engaged by it to perform any work hereunder an
agreement which contains the provisions of this Section 5.
4
<PAGE> 5
6. ANTIGENICS COLLABORATION. Subject to the nondisclosure obligations
of Section 5 hereof, Antigenics agrees that during the term hereof it will share
with the Fordham employees working on the Project hereunder the results of
research and development efforts of Antigenics employees in the Field for the
purpose of enhancing the performance of the Project hereunder.
7. PUBLICATIONS. Nothing in this Agreement shall prevent Fordham from
submitting for publication to any academic journal or periodical the results of
research relating to the Field or to which the services provided by Fordham to
Antigenics hereunder shall then pertain. So long as Fordham is subject to a
non-disclosure obligator under Section 5 hereof, Fordham shall deliver at least
30 days prior to any such submission for publication, to Antigenics a final form
of the manuscript to be so submitted. Notwithstanding the foregoing obligation
to deliver publications to Antigenics prior to submission for publication,
Fordham does not need to obtain Antigenics' approval of any manuscript prior to
publication of the manuscript. Fordham shall cooperate in a timely manner with
Antigenics in taking any and all actions necessary to perfect copyright and
patent protection with respect to, or to protect Antigenics' interest in, any
Proprietary Information or Intellectual Property that Antigenics may deem to be
disclosed in such manuscript.
8. CONSULTATION WITH NON-COMMERCIAL ENTITIES. Subject to all the
provisions hereof, nothing herein shall preclude Fordham or employees of Fordham
working on the Project hereunder from consulting in the Field with
non-commercial entities and institutions.
9. GENERAL. This Agreement constitutes the entire Agreement between the
parties relative to the subject matter hereof, and supersedes all proposals or
agreements, written or oral, and all other communications between the parties
relating to the subject matter of this Agreement.
No provision of this Agreement shall be waived, amended, modified,
superseded, cancelled, renewed or extended except in a written instrument signed
by the party against whom any of the foregoing actions is asserted. Any waiver
shall be limited to the particular instance and for the particular purpose when
and for which it is given.
The invalidity, illegality or unenforceability of any provision of this
Agreement shall in no way affect the validity, legality or enforceability of any
other provision of this Agreement.
This Agreement, the Project to be performed and all rights hereunder
may not be transferred or assigned by Fordham at any time. Antigenics may assign
its rights, together with its obligations hereunder, to any affiliate or
successor in connection with any consolidation, merger, sale, transfer or other
disposition of all or substantially all, of Antigenics' business and assets. In
the event of any consolidation or merger of Antigenics' with or into any other
corporation, or the sale or conveyance of all or substantially all of the assets
of Antigenics to another corporation, the surviving or acquiring corporation
shall he entitled to the rights and benefits of the services provided under this
Agreement, and become obligated to perform all of the terms and conditions
hereof. The foregoing notwithstanding, Antigenics may transfer its Proprietary
Information without limitation.
5
<PAGE> 6
This Agreement shall be construed and enforced in accordance with, and
the rights of the parties shall be governed by, the internal laws of the State
of New York.
All notices provided for in this Agreement shall be given in writing
and shall be effective when either served by personal delivery, express
overnight courier service, or by registered or certified mail, return receipt
requested, addressed to the parties at their respective addresses herein set
forth, or to such other address or addresses as either party may later specify
by written notice to the other.
This Agreement may be executed in duplicate counterparts, which, when
taken together, shall constitute one instrument and each of which shall he
deemed to be an original instrument.
The provisions of Sections 2, 3, 5 and 7 shall survive the termination
or expiration of this Agreement for the periods set forth herein as a continuing
agreement of the parties hereto.
The parties agree that a breach of the provisions of Sections 2, 3, 5
and 7 of this Agreement by either party will cause irreparable damage to the
other party and that in the event of such breach either party shall have, in
addition to any and all remedies of law, the right to an injunction, specific
performance or other equitable relief to prevent the violation of the other
party's obligations hereunder. Nothing herein contained shall he construed as
prohibiting either party from pursuing any other remedies available to either
for breach by the other under this Agreement or applicable law.
The parties agree that each provision of this Agreement shall be
treated as a separate and independent clause, and the unenforceability of any
one clause shall in no way impair the enforceability of any of the other clauses
herein. Moreover, if any one or more of the provisions of this Agreement shall
for any reason be held to be exclusively broad as to scope, activity or subject
so as to be unenforceable at law, such provisions shall be construed by the
appropriate judicial body by limiting and reducing it or them, so as to be
enforceable to the maximum extent compatible with the applicable low as it shall
then appear.
(REMAINDER OF PAGE LEFT BLANK INTENTIONALLY.)
6
<PAGE> 7
IN WITNESS WHEREOF, parties have executed this Agreement as of the day
and year first above written.
ANTIGENICS, INC.
By: /s/ Garo H. Armen
------------------------------------
President
FORDHAM UNIVERSITY
By: [AUTHORIZED SIGNATORY]
------------------------------------
Title:
------------------------------
7
<PAGE> 8
EXHIBIT A
---------
THE PROJECT
[
]*.
_________________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
i
<PAGE> 9
EXHIBIT B
---------
First Year's (November 1, 1994 to October 31, 1995) Budget
----------------------------------------------------------
I. Equipment
Computers and printer $ 12,000
- ------------------------------------------------------------------------
II. Supplies
Calf sera ($150/bottle) $ 9,000
Mice ($12/mouse) 3,600
Peptides (-$700/peptide) 14,000
Chemicals 35,000
Plasticware (tissue culture ware) 20,000
Non-capital equipment 14,000
--------
TOTAL $ 95,600
- ------------------------------------------------------------------------
III. Services
Mouse maintenance (400 mice) $ 24,000
- ------------------------------------------------------------------------
IV. Personnel
Kim Wilkins (Secy.) $ 25,000
Navdeep Jaikaria (PDF) 32,000
Antoinc Menoret (PDF) 10,000
Post-Doctoral Fellow (TBN) 27,000
Technician (TBN) 25,000
Arick Cupper (Technician) 22,000
--------
TOTAL $141,000
- ------------------------------------------------------------------------
V. Miscellaneous
Slides/prints $ 2,000
Transportation (samples, mice, people) 3,600
--------
TOTAL $ 5,600
- ------------------------------------------------------------------------
VI/ Indirect cost (84.4% of personnel) $119,004
GRAND TOTAL $397,204
ii
<PAGE> 10
AMENDMENT TO
SPONSORED RESEARCH AND
TECHNOLOGY LICENSE AGREEMENT
BY AND BETWEEN
ANTIGENICS, INC.
AND
FORDHAM UNIVERSITY
THIS AMENDMENT TO THE SPONSORED RESEARCH AND TECHNOLOGY LICENSE
AGREEMENT ("AMENDMENT"), effective as of March 22, 1996 ("EFFECTIVE DATE"), is
made and entered into by and between ANTIGENICS, INC., a Delaware corporation
having a principal place of business c/o Armen Partners, L.P., 630 Fifth Avenue,
Suite #918, New York, New York 10111, ("Antigenics") and FORDHAM UNIVERSITY,
having a principal of business at 441 East Fordham Road, Bronx, New York 10458
("Fordham").
WHEREAS Antigenics and Fordham entered into a Sponsored Research and
Technology License Agreement ("License Agreement") effective as of March 28,
1995 pursuant to which Antigenics (i) agreed to fund certain research activities
by Dr. Pramod K. Srivastava at Fordham, and (ii) obtained a worldwide, exclusive
license under Intellectual Property (as defined in thc License Agreement); and
WHEREAS Antigenics and Fordham desire to amend the License Agreement to
provide for modification of the obligations of the parties.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
1. GRANT
Section 2(B) of the License Agreement is hereby amended to read in its
entirety as follows:
(B) GRANT OF LICENSE. In consideration of the research support
set out in Section 1(C) hereinabove and other good and valuable
consideration, Fordham hereby grants to Antigenics a worldwide,
exclusive license to all Intellectual Property, including without
limitation all patents and patent applications therein.
2. RIGHT TO SUBLICENSE
Section 2(D) of the License Agreement is hereby amended to read in its
entirety as follows:
(D) RIGHT TO SUBLICENSE. Antigenics may grant sublicenses to
the Intellectual Property; provided that, at least ten (10) business
days prior to the effective date of any such sublicense, Antigenics
shall provide written notice to Fordham of Antigenics'
iii
<PAGE> 11
intention to grant such sublicense, such notice to be provided in
accordance with the provisions of Section 9. Fordham may provide
comments to Antigenics relating to the terms and conditions of such
sublicense. In the event that Fordham provides comments to Antigenics,
Antigenics shall consider such comments in good faith; provided that
such comments are received by Antigenics within ten (10) business days
after Fordham's receipt of Antigenics written notice. Antigenics
acknowledges that it is aware of, and will take fully into account the
distinctive history, tradition and mission of Fordham, in its
evaluation and selection of sublicensees under the Intellectual
property. Antigenics agrees that the economic terms and conditions of
any sublicense granted by Antigenics will be at least as favorable as
the economic terms and conditions of the license between Fordham and
Antigenic relating to the Intellectual Property. In addition,
Antigenics agrees that it will include in any sublicense granted by
Antigenics the condition that in the event of any event of, or filing
for, bankruptcy, arrangement among creditors or any other procedure
sounding in insolvency, the sublicense, to the extent permitted by
applicable law, will be immediately terminated and of no further force
or effect.
3. OTHER PROVISIONS
All provisions of the License Agreement not expressly modified by this
Amendment shall remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized representatives to execute this Amendment.
ANTIGENICS, INC. FORDHAM UNIVERSITY
("Antigenics") ("FORDHAM")
By: /s/ Garo H. Armen By: /s/ Robert W. Charrubba
--------------------------------- ---------------------------------
Name: Garo H. Armen Name: Robert W. Charrubba
-------------------------------- --------------------------------
Title: Chairman & CEO Title: VP for Academic Affairs
------------------------------- -------------------------------
4
<PAGE> 1
EXHIBIT 10.10
RESEARCH AGREEMENT
This Agreement is made by and between:
Antigenics, L.L.C., a limited liability company organized and existing under the
laws of the State of Delaware, having an office at 630 Fifth Avenue, Suite #
2170, New York, NY 10111, hereinafter referred to as Sponsor.
and
The University of Connecticut Health Center, an agency of the State of
Connecticut, having a business address at 263 Farmington Avenue, Farmington,
Connecticut, 06030, hereinafter referred to as UCHC.
and
Pramod Srivastava, Ph.D., Professor of Immunology, and Director, Center for
Immunotherapy of Cancer and Infectious Diseases, University of Connecticut
Health Center, having a business address at MC-1601, University of Connecticut
Health Center, 263 Farmington Avenue, Farmington, Connecticut, 06030,
hereinafter referred to as Principal Investigator.
The purpose of this Agreement is to promote the increase of useful
knowledge relating to a project entitled, "Use of heat shock proteins for the
development of therapeutic and prophylactic vaccines for cancer and infectious
diseases."
IT IS AGREED:
1.0 The UCHC agrees to undertake certain research (hereinafter referred to
as the Project) specifically described in the attached proposal
(Appendix A) which by reference is incorporated into this Agreement,
and such other work as may be mutually agreed upon in a duly executed
amendment to this Agreement.
2.0 The Project and all work assignments shall be carried out under the
direction of the Principal Investigator, while employed by UCHC, and by
other research staff employed by UCHC (e.g. technician, graduate
student, postdoctoral follow, staff assistant, hereinafter collectively
referred to as Personnel), as assigned by Principal Investigator.
3.0 The Project covered by this Agreement shall commence on February 12,
1998 and shall extend for a period of 58.5 months, expiring on December
31, 2002.
4.0 UCHC agrees to furnish such available facilities as it shall determine
necessary for the work to be done on this Project. During the term of
this Agreement, UCHC and the Principal Investigator will permit, upon
reasonable notice and at reasonable times, representatives of Sponsor
to observe research facilities utilized for and research performed by
Principal Investigator pursuant to this Agreement.
<PAGE> 2
5.0 Sponsor agrees to pay UCHC the sum of $5,000,000 for this Project in
accordance with the agreed budget (Appendix B), plus any agreed to
excess costs as evidenced by a writing signed by both parties; payments
to be made as follows:
$250,000 Payable upon execution of Agreement
$250,000 Payable by no later than May 15, 1998
$250,000 Payable by no later than August 15, 1998
$250,000 Payable by no later than November 15, 1998
Payments for all subsequent years shall be due by no later than
February 15, May 15, August 15, and November 15 of each year.
Sponsor further agrees to pay preaward costs incurred by Dr. Srivastava
upon submission of an invoice in an amount not to exceed $475,000.
Payment of said preaward costs shall be made within ten day of
Sponsor's receipt of the invoice.
5.1 Payments are to be made to:
University of Connecticut Health Center
Grant and Contract Administration
ASB3, MC 5335
263 Farmington Ave.
Farmington, CT 06030
Attn.: Ken Landorf, Manager
IRS No.: 52-1725543
6.0 The Principal Investigator shall furnish Sponsor with written reports
on the progress of the work on dates as mutually agreed upon and a
final report on the entire Project within ninety (90) days after
termination of this Agreement.
7.0 The data and information accruing from the Project may be published in
writing or orally presented by the Principal Investigator, but Sponsor
shall be provided with a copy of any proposed written manuscript at
least thirty (30) day prior to submission or the text of any oral
disclosure at least fourteen (14) days prior to its presentation and
shall have thirty (30) days in the case of written manuscripts and
fourteen (14) days in the case of oral presentations for review of
patentable items or items deemed confidential and proprietary as
defined in Article 8.0.
7.1 If Sponsor believes that any planned publication contains a
patentable development, publication, or presentation shall be
delayed for a reasonable time to permit the filing of a patent
application(s). If the patent application is prepared under
direction of UCHC, counsel approved by the Sponsor from the
list of firms
2
<PAGE> 3
having Professional Employment Agreements with the Attorney
General of the State of Connecticut for the purposes of patent
preparation, prosecution and maintenance of University of
Connecticut inventions conceived or reduced to practice in the
conduct of the Project shall be used. Sponsor shall have the
right to elect to use its own counsel who will then conduct
such patent preparation, prosecution, and maintenance. If
Sponsor elects to use its own counsel, said counsel shall be
subject to UCHC approval, which approval shall not be
unreasonably withheld. When such election has been approved by
UCHC, Sponsor, and Sponsor's counsel, or their agents shall
provide UCHC and its agents on a timely basis with copies of
all correspondence and patent application submissions
(including but not limited to parent, continuation,
continuation-in-part or reissue applications) by and between
Sponsor and Sponsor's counsel and/or agents and the U.S.
Patent and Trademark Office. Notwithstanding the preceding
service requirement, Sponsor and Sponsor's counsel and/or
agents shall make diligent efforts to provide all such
correspondence and applications to UCHC or UCHC's agents prior
to their submission and shall to the extent practicable
consult with UCHC and its agents regarding the form of such
submissions. UCHC acknowledges and approves Sponsor's election
to use as patent counsel the firm of Pennie and Edmonds, New
York, NY.
7.2 Sponsor shall reimburse UCHC for all costs associated with
UCHC's filing, prosecution and maintenance of patents arising
form this work pursuant to Sponsor's request that is carried
out by UCHC counsel. If Sponsor has elected to use it's own
counsel and UCHC has approved such election, Sponsor shall
directly pay all costs associated with the preparation,
submission and maintenance of the resulting patent carried out
by its counsel.
7.3 UCHC and the Principal Investigator shall not disclose to
other or publish any information disclosed to the Principal
Investigator by Sponsor which is confidential within the
meaning of Article 8.0 without the prior written approval of
Sponsor.
8.0 UCHC and Principal Investigator agree to hold in confidence all
information which Sponsor may wish to disclose to Principal
Investigator in writing and marked "CONFIDENTIAL" under this Agreement
except:
a. technical information which at the time of disclosure
publicly known or available;
b. technical information which after disclosure is
published or otherwise becomes publicly known or
available through no fault of Principal Investigator;
c. technical information which was in the possession of
the Principal Investigator at the time of disclosure
and was not acquired from Sponsor under an obligation
of confidence.
3
<PAGE> 4
9.0 Sponsor shall retain patent rights to all of its technologies currently
protected by existing patents or pending patent applications, and for
technologies developed by Sponsor outside the terms of this Agreement.
9.1 Pursuant to the work performed under this Agreement UCHC shall
retain patent rights to all new technologies developed as a
result of intellectual contributions of UCHC's faculty or
staff or involving the use of UCHC facilities or resources.
9.2 UCHC shall provide Sponsor with a copy of each written
invention disclosure of intellectual property conceived or
developed in the conduct of the Project within forty five (45)
days of its submittal to the UCHC, in sufficient detail so as
to enable one skilled in the art to understand the subject
matter of the invention. The UCHC shall also notify Sponsor
immediately of any potential statutory bar, including but not
limited to, the dates of any publication, presentation or
other disclosure of the intellectual property accruing to the
project.
9.3 For new inventions, other than incremental improvements which
are dominated by existing patents or pending patent
applications for which Sponsor holds a license, UCHC agrees to
grant and hereby grants to Sponsor an option to secure a
royalty-bearing exclusive license, including the right to
grant sublicenses, under reasonable terms with the right to
make, use and sell, have made, have used, import and offer for
sale the claimed invention of any patent or patent application
which is based on any invention conceived or reduced to
practice in the conduct of the Project, subject to Article 9.1
above. The license (and all sublicenses) will include a
royalty rate in an amount to be negotiated in good faith by
both UCHC and Sponsor at the time the Sponsor decides to
exercise its option and shall remain in effect until the
expiration of the last to expire patents licensed to the
Sponsor. Such option shall be in effect and exercisable for
each invention within one hundred and eighty (180) days from
the date of filing a U.S. patent application on each such
invention. Upon exercise of such option, the terms and
conditions of the license will be negotiated in good faith by
the parties. In the absence of agreement within six (6) months
from the date of exercise of such option, which time shall be
extended upon mutual written agreement, the dispute shall be
submitted to a mutually acceptable third-party mediator, which
period of mediation shall not exceed 90 days or such longer
period as may be mutually acceptable to the parties.
9.4 For inventions which are incremental improvements dominated by
existing patents or pending patent applications for which
Sponsor holds a license, UCHC agrees to grant and hereby
grants to Sponsor an option to secure a royalty-bearing
exclusive license with the right to make, use and sell, have
made, have used, import and offer for sale the claimed
invention conceived or reduced to practice in
4
<PAGE> 5
the conduct of the Project. Such option shall be in effect and
exercisable within one hundred and eighty (180) days from the
date of filing a U.S. Patent Application on each such
invention. In the case of Licensed Products that incorporate
the UCHC Technology but are dominated by patent applications
licensed by Sponsor from one other third party, Sponsor shall
pay UCHC a royalty calculated at the rate of [ ]* of
Net Sales of Licensed Product. In the case of Licensed
Products that incorporate the UCHC technology but are
dominated by patent applications licensed by Sponsor from two
or more third parties, Sponsor shall pay UCHC a royalty
calculated at the rate of [ ]* of Net Sales of Licensed
Product. Upon exercise of such option, the remaining terms and
conditions of the license will be negotiated in good faith by
the parties. In the absence of agreement within six (6) months
from the date of exercise of such option, which time period
shall be extended upon mutual written agreement, the dispute
shall be submitted to a mutually acceptable third-party
mediator, which period of mediation shall not exceed 90 days.
9.5 For the purposes of this Article 9 the terms, Licensed Product
and Net Sales shall be defined as follows:
o Affiliates are defined as any entity which controls, is
controlled by or is under common control with Licensee. An
entity shall be regarded as in control of another entity if it
owns or controls more than fifty percent (50%) of the voting
power of such entity.
o Licensed Product(s) means any method, procedure, process,
product, or component part thereof conceived or developed by
UCHC in the conduct of the Project whose manufacture, sale,
use, importation, or offer for sale is covered by the claim of
a pending patent application or which could be construed to
infringe the licensed patent in the absence of the license.
o Net Sales means total billings for Licensed Product(s),
determined in accordance with generally accepted accounting
principles, sold by Licensee, its Affiliates and sublicensees,
less: (a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales; (c) outbound
transportation prepaid or allowed; and (d) amounts allowed or
credited on returns. Licensed Products shall be considered
"sold" when billed out or invoiced. Sales of Licensed
Product(s) between or among Licensee, its Affiliates and
sublicensees shall not be subject to any royalty hereunder,
and in such cases royalties shall be calculated upon
Licensee's or its Affiliates' or sublicensees' Net Sales to an
independent third party. Licensee shall be responsible for
payment of any royalty accrued on Net Sales of Licensed
Products to such independent third party through Licensee's
Affiliates or
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
5
<PAGE> 6
sublicensees. Royalties shall accrue hereunder only once in
respect of the same unit of the Licensed Product.
9.6 As to all licenses which may be granted by UCHC to Sponsor
under the terms of this Agreement, UCHC retains a perpetual
royalty-free non-exclusive right to use the licensed property,
product, procedure or process and to use the licensed UCHC
technology for basic and clinical research, and the
educational purposes of the UCHC, and not for any commercial
purpose.
10.0 UCHC and Sponsor agree that the Principal Investigator and Personnel
are acting as employees of UCHC and not as agents or employees of
Sponsor.
11.0 No advertising or publicity matter having or containing any reference
to either party shall be used by the other party without advanced
written authorization. Notwithstanding the afore-stipulated
restrictions, Sponsor may use publications containing the name of UCHC
and other documentation (abstracts, poster presentations, etc.) which
are generally accessible to the public without the further review and
consent of UCHC. All other advertising and publicity matter shall be
submitted to the Office of the Vice Chancellor for Research for review
prior to its use or public release. Said documentation shall be
reviewed expeditiously, and in no event shall such review be
unreasonably delayed. In addition, UCHC may disclose the sponsorship,
title, duration and total budget of this project in UCHC's "Annual
Report of Research and Scholarly Activity," and in such other reports
as may be required by the UCHC's Administration, Board of Trustees or
by the Board of Governors of Higher Education.
12.0 UCHC agrees that there shall be no change in the Principal Investigator
without prior written approval of Sponsor.
13.0 It is understood that the Project may be extended for additional
periods of time under terms mutually agreed upon in writing in a duly
executed amendment to this Agreement.
13.1 Renewal proposals shall be submitted by UCHC to Sponsor at
least ninety (90) days prior to the expiration of this
Agreement.
13.2 Sponsor agrees to give UCHC notice of its intention to
continue the Project not less than sixty (60) days prior to
the expiration date specified in Article 3.0 hereof or in a
later amendment to this Agreement.
14.0 If UCHC is unable to fulfill the terms of this Agreement, then UCHC may
terminate the Agreement by giving sixty (60) days notice to Sponsor. If
Pramod Srivastava is unable to continue as Principal Investigator, or
terminates his employment by UCHC, Sponsor shall have the right to
terminate this Agreement by giving thirty (30) days notice to UCHC.
14.1 Upon termination of this Agreement, unexpended funds
appropriate by Sponsor to UCHC shall be returned to Sponsor
except for outstanding, unpaid commitments to a third
party(ies) or to Personnel engaged in the conduct of the
Project which
6
<PAGE> 7
cannot be canceled or otherwise terminated. Upon issuance of
notice, UCHC shall not enter into any material new commitments
or obligations related to the Project without consent of the
Sponsor.
14.2 Termination of this Agreement shall not affect the rights and
obligations of the parties in inventions conceived or made in
the conduct of the Project prior to termination.
15.0 This Agreement shall be binding upon and inure to the benefit of the
respective parties and their successors.
16.0 This Agreement shall be governed by and construed according to the laws
of the State of Connecticut; including, but not limited to the
following:
a. Non-discrimination Section 4.1 14a of the General
Statutes of Connecticut, as amended. UCHC in its
employment practices under this grant Agreement will
not discriminate or permit discrimination against any
person or group of persons on the grounds of race,
color, religious creed, age, marital status, national
origin, sex, mental retardation, or physical
disability (including but not limited to blindness)
unless it is shown that such disability prevents
performance of the work involved, in any manner
prohibited by the laws of the United States or of the
State of Connecticut.
17.0 UCHC is authorized to enter into this Agreement under Section 10a-104,
10a-110 to 10a-l10g of the General Statutes of Connecticut as amended
to date.
18.0 Sponsor agrees to indemnify, hold harmless, and pay all legal and other
costs or losses incurred by Principal Investigator and Personnel, as
investigator(s) in this study, and UCHC as the host institution,
against any claim or legal cause of action brought against Principal
Investigator, Personnel and UCHC arising out of the use by Sponsor, or
by any party acting on behalf of or under authorization from Sponsor,
sale or other disposition by Sponsor, or by any party acting on behalf
of or under authorization from Sponsor of products made as a result of
work conducted under this Agreement.
UCHC agrees to notify Sponsor as soon as it becomes aware of a claim or
action and to cooperate with and to authorize Sponsor to carry out sole
management and defense and settlement of such claim or defend against
any actions brought or filed against its trustees, officers, agents and
employees with respect to the subject of indemnity contained herein,
whether such claims or actions are rightfully brought or filed.
Neither UCHC, nor its trustees, officers, agents or employees shall
compromise or settle any claim or suit related to the Project of this
Agreement without the prior written approval of Sponsor.
This Agreement will govern claims brought subsequent to the termination
date of this Agreement. This provision shall survive the completion or
termination of this project since it cannot be presently ascertained
when the last claim will be filed.
7
<PAGE> 8
19.0 Any notice required to be given hereunder shall be considered properly
given if sent by certified letter, first class mail, postage prepaid,
to the respective address of each party indicated at the beginning of
this Agreement, or to such address as the addressee shall have last
furnished in writing to the addressor in like manner.
20.0 Sections 7, 8, 9, 11, 15, 16, 18 and 19 shall survive termination or
expiration of this Agreement.
21.0 It is understood that UCHC and the Principal Investigator and Personnel
may be or become involved in other activities and projects which entail
commitments to other sponsors; however, UCHC represents and warrants
that the Principal Investigator and Personnel are not presently
performing, and will not perform during the term of this Agreement,
research relating to the Project (see Appendix A) that is sponsored by
a commercial, for-profit, third party to whom UCHC is obligated to
grant rights in any invention or discovery resulting therefrom,
excluding Government rights pursuant to 35 U.S.C. ss.ss. 200 et seq.
resulting from federal grant funding or a similar reservation of rights
pursuant to grant funding from the State of Connecticut or other
non-profit entities.
22.0 The Project will not be conducted in collaboration with a researcher
who is not associated with UCHC, unless Sponsor has given prior written
approval of such collaboration.
23.0 The parties hereto have caused this Agreement to be executed by duly
authorized representatives effective as of the later date indicated
below.
ANTIGENICS, L.L.C. - "SPONSOR"
/s/ Garo Armen 2/18/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Garo Armen
------------------------
Title: CEO
-----------------------
UNIVERSITY OF CONNECTICUT HEALTH CENTER - "UCHC"
/s/ Leonard Paplauskas 2/17/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Leonard P. Paplauskas
Title: Assistant Vice Chancellor for Research
8
<PAGE> 9
/s/ Pramod Srivastava 2/16/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Pramod Srivastava, Ph.D.
Title: Professor, Center for Immunotherapy of Cancer and Infectious Disease
9
<PAGE> 10
APPENDIX A
SCOPE OF WORK
<PAGE> 11
Scope of work for ANTIGENICS grant
[
]*
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
<PAGE> 12
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
<PAGE> 13
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
<PAGE> 14
APPENDIX B
BUDGET
For Each of 5 Years
2/12/98 - 12/31/02
SUB CODE DESCRIPTION BUDGET
1000 Salaries [ ]*
2000 Purchased Services [ ]*
3000 Supplies & Minor Equipment [ ]*
4000 Sundry (Fringe Benefits) [ ]*
9000 Capital Equipment [ ]*
Indirect Cost [ ]*
TOTAL [ ]*
_________________________
* Confidential Treatment has been requested for the marked portion.
<PAGE> 1
EXHIBIT 10.12
LICENSE AGREEMENT
-----------------
This License Agreement (the "Agreement") is entered into and made effective
this 12th day of April, 1999, (the "Effective Date") between UNIVERSITY OF MIAMI
and its School of Medicine, whose principal place of business is at 1600 N.W.
10th Avenue, Miami, Florida 33136 (hereinafter referred to as "LICENSOR") and
ANTIGENICS LLC, a Delaware limited liability company, whose principal place of
business is at 630 Fifth Avenue, New York, New York (hereinafter referred to as
"LICENSEE").
WITNESSETH
WHEREAS, LICENSOR is the sole owner of the Inventions described and
claimed in U.S. patent application serial number [
]*; and,
WHEREAS, LICENSOR wishes to obtain United States patents, and foreign
counterparts, and to have the Inventions commercially marketed; and,
WHEREAS, LICENSOR warrants that it possesses the right to license the
aforestated patents to be obtained and the right to market the Products; and,
WHEREAS, LICENSOR wishes the LICENSEE to obtain the subject patent and
to market the Products; and,
WHEREAS, LICENSEE desires to acquire the exclusive license in the
Territory, with the right to sublicense, under the Patent Rights (as defined in
Paragraph 1.3 below) for the purposes of making, having made, using, selling,
importing and offering for sale the Products and practicing the Inventions
disclosed and claimed in the Patent Rights;
NOW THEREFORE, For these and other valuable considerations, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. DEFINITIONS:
1.1 "Affiliate" shall mean any corporation or other business entity
controlled by, controlling or under common control with LICENSOR or LICENSEE.
For this purpose, "control" shall mean direct or indirect beneficial ownership
of at least a fifty percent (50%) of the voting stock of, or at least a fifty
percent (50%) interest in the income of such corporation or other business
entity, or such other relationship as in fact, constitutes actual control.
- -------------
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
1
<PAGE> 2
1.2 "Sublicensee" as used in this Agreement shall mean any third
party to whom LICENSEE has granted a license to make, have made, use, sell,
import or offer for sale the Product under the Patent Rights, provided said
third party has agreed in writing with LICENSEE to accept the conditions and
restrictions agreed to by LICENSEE in Sections 6 (Indemnification), 13 (Marking
and Standards) and 17 (Certificate of Insurance) of this Agreement.
1.3 "Patent Rights" shall mean and collectively include United States
patent application serial number[
]* and United States patent application serial
number [ ]*
and the inventions therein; and all applications claiming priority to any of the
foregoing applications under 35 U.S.C. ss. 119(e), and all continuations,
continuations-in-part, divisions and renewals of any of such applications; all
foreign counterparts of the foregoing; and all United States and foreign patents
which may be granted thereon, and all reissues and extensions thereof.
1.4 "Products" shall mean and collectively include any product which:
(a) is covered by an issued, unexpired claim or a pending claim
contained in the Patent Rights;
(b) is manufactured by using a process which is covered by an
issued, unexpired claim or a pending claim contained in the
Patent Rights.
1.5 "Processes" shall mean and collectively include any process which
is covered by an issued, unexpired claim or pending claim contained in the
Patent Rights.
1.6 "Net Sales" shall mean the sum of all amounts invoiced on account
of sale of Products by LICENSEE and its Affiliates to non-affiliated third party
purchasers of Products, if invoiced separately, (a) cash discounts to purchasers
allowed in amounts customary in the trade, (b) amounts for transportation or
shipping charges to purchasers, (c) credits for returns, allowances or trades,
and (d) taxes and duties levied on the sale of Products, whether absorbed by
Licensee or pa d by the purchaser. In the event a Product is sold in combination
with another active component(s), Net Sales, for purposes of determining
royalties on the combination will be calculated by multiplying Net Sales of the
combination by the fraction A/(A+B), in which A is the invoiced price of the
Product if sold separately, and B is the invoiced price of the other active
component(s) in the combination if sold separately. If the Products and the
other active component(s) in the combination are not sold separately, then
royalties on the combination will be calculated by the same method, in which A
is the direct cost of manufacturing the Product and B
- -------------
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
2
<PAGE> 3
is the direct cost of manufacturing the other active component(s). However, in
no case shall the calculated fraction A/(A+B) be less than [ ]*.
1.7 "Territory" shall mean the entire world.
1.8 "Inventions" shall mean the inventions disclosed and claimed in
United States patent application serial number [
]* and U.S. patent application serial number [
]*.
1.9 "Confidential Information" shall mean all information related to
the Patent Rights or to the business, plans and/or technology of LICENSEE which
is disclosed by one party to the other, to the extent that such information, as
of the date of disclosure, is not (a) known to the receiving party; (b)
disclosed in published literature; (c) generally available to industry; or (d)
obtained by the receiving party from a third party without binder of secrecy,
PROVIDED, HOWEVER, that such third party has no confidentiality obligations to
the disclosing party or to any of its Affiliates relating to the disclosed
information.
1.10 "Net Royalties" shall mean the net royalties on all Net Sales of
Products actually received by LICENSEE or its Affiliate(s), including the
receipt of lump sums as advances against royalties, from non-affiliated
licensees in connection with the licensing of any Patent Rights.
2. GRANT:
2.1 In consideration for payment of royalties and other good and
valuable consideration, LICENSOR hereby grants to LICENSEE and its Affiliates
the exclusive license in the Territory with the right to grant sublicenses to
others, under the Patent Rights, to make, have made, use, sell, import and offer
for sale Products and to practice Processes.
2.2 LICENSOR grants to the LICENSEE the authority to make application
for Patents, in the name of the LICENSOR; all expenses of obtaining and
maintaining said patents obtained and maintained by LICENSEE shall be paid by
LICENSEE.
2.3 LICENSOR retains the non-exclusive right to use the Inventions
solely for its own internal, non-commercial research purposes. LICENSOR shall be
permitted to transfer Products only to academic researchers at non-profit
institutions pursuant to a written Material Transfer Agreement whereby the
researcher and his institution agree: (a) to use the transferred Product only
for the researcher's own, noncommercial research purposes and not for research
- -------------
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
3
<PAGE> 4
sponsored by a third party to whom an obligation to grant commercial rights
exists, and (b) not to further transfer the Product.
3. TERM:
The term of this Agreement shall be until the later of (a) 15 years
from the Effective Date of this Agreement, and (b) the expiration of the last to
expire of all patents within the Patent Rights.
4. UNITED STATES LAWS:
4.1 This Agreement is subject to all of the terms and conditions of
Public Law 96-517 as amended, and LICENSEE agrees to take all action necessary
on its part as LICENSEE to enable LICENSOR to satisfy its obligation thereunder,
relating to Inventions.
4.2 It is understood that LICENSOR is subject to United States laws
and regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 199), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. LICENSOR neither represents that a license shall not be required nor
that, if required, it shall be issued.
5. PATENT PROTECTION AND INFRINGEMENT:
5.1 LICENSEE, during the term of this Agreement, is responsible for
the filing, payment and the prosecution of all patents and applications and
maintenance fees covered by this Agreement. If LICENSEE elects not to file or
prosecute such an application (except where such application is abandoned in
favor of prosecuting the invention claimed therein in a related application) or
maintain such patent, LICENSEE shall so notify the LICENSOR at least forty-five
(45) days in advance of the relevant deadline, in which event the LICENSOR shall
have the right to file or prosecute such applications and to maintain such
patent entirely at its own expense and such application or patent shall no
longer be deemed included within the Patent Rights.
5.2 Each party shall promptly notify the other party in writing of
any third party claim of patent infringement of which it has received notice and
which may be asserted against LICENSEE or LICENSOR, its Affiliates and any
Sublicensees because of the manufacture, use, promotion and sale of Product by
LICENSEE, its Affiliates or Sublicensees.
5.3 LICENSEE will defend, indemnify and hold harmless LICENSOR, its
Trustees, officers, directors, employees and its Affiliates against any and all
judgments and damages arising from any and all third party claims of patent
infringement which may be asserted against LICENSOR, and its Affiliates because
of the manufacture, use, promotion and sale of Products by LICENSEE or its
Affiliates or Sublicensees. Except as provided herein below, LICENSEE will bear
all costs and expenses incurred in connection with the defense of any such
claims or as a result of any settlement made or judgment rendered on the basis
of such claims.
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<PAGE> 5
LICENSOR shall have no further liability to LICENSEE for any loss or damages
LICENSEE may incur as a result of any invalidity of LICENSOR'S Patent Rights
except where due to gross negligence or intentional misconduct of LICENSOR.
LICENSEE shall defend and control negotiation of settlement of any such claim
with counsel of LICENSEE'S choosing. LICENSOR agrees to cooperate fully in the
defense of any such claim and may participate in the defense with counsel of
LICENSOR'S choosing, such separate counsel to be at LICENSOR'S expense. LICENSEE
shall have no liability to defend any such claim unless it receives written
notification of such claim by LICENSOR promptly after LICENSOR has actual
knowledge of such claim, is given exclusive control of the defense and
settlement thereof, and is provided with all reasonable assistance in connection
therewith by LICENSOR. Notwithstanding the foregoing, any such settlement that
adversely affects the validity or scope of the Patent Rights will require the
approval of LICENSOR, which approval will not be unreasonably withheld.
5.4 Upon learning of any infringement of Patent Rights by third
parties in any country, LICENSEE and LICENSOR will promptly inform each other,
as the case may be, in writing of that fact and will supply the other with any
available evidence pertaining to the infringement. LICENSEE at its own expense
shall have the right but not the obligation to take whatever steps are necessary
to stop the infringement at its expense and recover damages therefore, and will
be entitled to retain all damages so recovered and LICENSOR will cooperate fully
in connection therewith. In the event that LICENSEE elects not to take whatever
steps are necessary to stop the infringement, LICENSEE will so notify LICENSOR,
and upon such notification and in the event that LICENSEE is not at the time a
party to a litigation involving a claim of infringement of the Patent Rights,
LICENSOR shall have the right to bring suit against the infringer, and LICENSEE
will cooperate fully in connection therewith. In the event that LICENSOR and
LICENSEE mutually agree to bring suit, costs and expenses shall be shared
equally and any recovery in excess of expenses shall be shared equally; the
parties agree to cooperate fully with each other in connection therewith.
5.4.1 ROYALTY PAYMENTS DURING ENFORCEMENT OF PATENT RIGHTS. In
the event that LICENSEE shall undertake the enforcement and/or defense
of the Patent Rights by litigator either solely or jointly with the
LICENSOR as provided above, LICENSEE may withhold up to fifty percent
(50%) of the royalties otherwise thereafter due LICENSOR hereunder and
apply the same toward reimbursement of its expenses, including
reasonable attorneys' fees, in connection therewith, PROVIDED, HOWEVER
that royalties due LICENSOR pursuant to Section 8.1(a) hereof shall
not be reduced to less than one percent (1%) on Net Sales. Any
recovery of damages by LICENSEE for any such suit, as provided above,
shall be applied first in satisfaction of any unreimbursed expenses
and legal fees of LICENSEE relating to the suit, and next toward the
reimbursement of LICENSOR for any royalties past due or withheld. The
balance remaining from any such recovery shall be retained
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<PAGE> 6
in its entirety by LICENSEE except where as provided hereinabove,
LICENSOR and LICENSEE have mutually brought suit.
5.5 LICENSOR shall have no responsibility with respect to LICENSEE'S
own trademarks and tradename.
6. INDEMNIFICATION:
6.1 Except as provided in Paragraphs 5.4 and 5.4.1, LICENSEE agrees
to release, indemnify and hold harmless the LICENSOR, its Trustees, officers,
faculty, employees and students against any and all losses, expenses, claims,
actions, lawsuits and judgments thereon (including attorney's fees through the
appellate levels) which may be brought against LICENSOR, its Trustees, officers,
faculty, employees or students as a result of or arising out of any act of
negligence or willful misconduct of LICENSEE, its agents, or employees relating
to this Agreement, or arising out of the use, production, manufacture, sale,
lease, consumption or advertisement by LICENSEE of Products. LICENSEE shall
defend and control negotiation of settlement of any such claim with counsel of
LICENSEE'S choosing. LICENSOR agrees to cooperate fully in the defense of any
such clam and may participate in the defense with counsel of LICENSOR'S
choosing, such separate counsel to e at LICENSOR'S expense. LICENSEE shall have
no liability to defend any such claim unless it receives written notification of
such claim by LICENSOR promptly after LICENSOR has actual knowledge of such
claim, is given exclusive control of the defense and settlement thereof, and is
provided with all reasonable assistance in connection therewith by LICENSOR.
Notwithstanding the foregoing, any such settlement that adversely affects the
validity or scope of the Patent Rights will require the approval of LICENSOR,
which approval will not be unreasonably withheld.
7. WARRANTIES:
EXCEPT AS EXPRESSLY SET FORTH HEREIN LICENSOR MAKES NO WARRANTIES,
EXPRESS OR IMPLIED, AND HEREBY DISCLAIMS ALL SUCH WARRANTIES, AS TO ANY MATTER
WHATSOEVER, INCLUDING, WITHOUT LIMITATION, THE CONDITION OF ANY INVENTIONS OR
PRODUCTS, WHETHER TANGIBLE OR INTANGIBLE, LICENSED UNDER THIS AGREEMENT; OR THE
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE INVENTIONS OR
PRODUCTS; OR THAT THE USE OF THE PRODUCTS WILL NOT INFRINGE ANY PATENT,
COPYRIGHTS, TRADEMARKS, OR OTHER RIGHTS. LICENSOR SHALL NOT BE LIABLE FOR ANY
DIRECT, CONSEQUENTIAL, OR OTHER DAMAGES SUFFERED BY ANY LICENSEE OR ANY THIRD
PARTIES RESULTING FROM THE USE, PRODUCTION, MANUFACTURE, SALE, LEASE,
CONSUMPTION, OR ADVERTISEMENT OF THE PRODUCTS BY LICENSEE.
The provisions of this Section shall continue beyond the termination
of this Agreement.
8. ROYALTIES:
8.1 In consideration of the license herein granted, LICENSEE shall
pay royalties to LICENSOR as follows:
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<PAGE> 7
(a) For the rights and privileges granted under this Agreement,
LICENSEE shall pay to LICENSOR a royalty of [ ]*on Net
Sales of Products which at the time and place of
manufacture, embody or are made in accordance with one or
more claims of any valid, issued, unexpired patent or
pending patent application within the Patent Rights, subject
to any credits permitted hereunder. Notwithstanding the
foregoing, in the event that claim(s) in such pending
application do not issue in a patent in the respective
country within five (5) years after the filing date of such
pending application in such country, LICENSEE'S obligation
to pay LICENSOR such royalties on account of such claim(s)
shall cease, until such time as such claim(s) issue.
(b) SHARE OF NET ROYALTY INCOME. In the event that LICENSEE
grants licenses to any non-affiliated third parties under
the Patent Rights at any time during the term of this
Agreement, then for each sublicense LICENSEE agrees to pay
LICENSOR additional royalties at the rate of [ ]* on
all Net Royalties collected by LICENSEE and its Affiliate(s)
(including dollar equivalents in foreign funds), subject to
any credits permitted hereunder.
8.1.1 Offset Against Royalties.
(a) In the event that LICENSEE or its Affiliate(s) either:
(i) manufactures, uses, or sells a Product which
contains or is combined with another product which is
covered by inventions or technology duly licensed to
LICENSEE by a third party, or
(ii) cannot manufacture or sell a particular Product
without infringing the patent of a third party, LICENSEE
shall have tee right to negotiate with the third party for a
license under the third party's patent rights; and
then LICENSEE shall have the right to reduce LICENSEE'S
royalty payments to LICENSOR by the amount which LICENSEE is
obligated to pay such third party for such patent license,
PROVIDED, HOWEVER, that such reduction does not reduce the
royalties to an
- -------------
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
7
<PAGE> 8
amount less than [ ]* the amount which would otherwise
be due LICENSOR pursuant to the provisions of Section 8.1
hereof.
(b) LICENSEE shall have the right to credit its expense for the
filing, prosecution and defense of applications and
maintenance of patents within Patent Rights against
royalties otherwise due LICENSOR pursuant to Section 8.1.
8.2 All payments shall be made hereunder in U.S. dollars; provided
however, that if the proceeds of the sales upon which such royalty payments are
based are received by the LICENSEE in a foreign currency or other form that is
not convertible or exportable in dollars, and the LICENSEE does not have ongoing
business operations or bank accounts in the country in which the currency is not
convertible or exportable, the LICENSEE shall pay such royalties in the currency
of the country in which such sales were made by depositing such royalties in
LICENSOR'S name in a bank designated by LICENSOR in such country. Royalties in
dollars shall be computed by converting the royalty in the currency of the
country in which the sales were made at the exchange rate for dollars prevailing
at the close of the business day of the LICENSEE'S quarter for which royalties
are being calculated as published the following day in the Wall Street Journal
(or, if it ceases to be published, a comparable publication to be agreed upon
from time to time by the parties), and with respect to those countries for which
rates are not published in the Wall Street Journal, the exchange rate fixed for
such date by the appropriate United States governmental agency.
8.3 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular country,
the royalty payable for sales in such country shall be equal to the maximum
permitted royalty under such law or regulation.
8.4 In the event that any taxes, withholding or otherwise, are levied
by any taxing authority in connection with accrual or payment of any royalties
payable to LICENSOR under this Agreement, the LICENSEE shall have the right to
pay such taxes to the local tax authorities on behalf of LICENSOR and the
payment to LICENSOR of the net amount due after reduction by the amount of such
taxes, shall fully satisfy the LICENSEE'S royalty obligations under this
Agreement.
9. BEST EFFORTS:
9.1 Subject to the exercise of LICENSEE'S reasonable business
judgment, LICENSEE will use its best efforts to manufacture, market and sell the
Products in the Territory and will exert its best efforts to create a demand for
the Products.
- -------------
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
8
<PAGE> 9
9.2 LICENSEE agrees to submit reports, upon LICENSOR'S request not
more than once annually following the Effective Date, as to its efforts to
develop markets for the Products. Such reports shall include assurance by
LICENSEE of its intent to actively develop commercial embodiments of the
inventions of the Patent Rights subject to the exercise of LICENSEE'S reasonable
business judgment, and a summary of its efforts in this regard.
10. REPORTS AND RECORDS:
10.1 Commencing one (1) year after the first sale, the LICENSEE shall
furnish to LICENSOR a report in writing specifying during the preceding calendar
quarter (a) the number or amount of Products sold hereunder by LICENSEE, and/or
its Affiliates or Sublicensees, (b) the total billings for all Products sold,
(c) deductions as applicable in Paragraph 1.6, (d) amount of Net Royalties
collected, (e) total royalties due, and (f) names and addresses of all
Sublicensees. Such reports shall be due within forty-five (45) days following
the last day of each calendar quarter in each year during the term of this
Agreement. Each such report shall be accompanied by payment in full of the
amount due LICENSOR in United States dollars calculated in accordance with
Paragraph 8.1 hereof.
10.2 For a period of three (3) years from the date of each report
pursuant to Paragraph 10.2, LICENSEE shall keep records adequate to verify each
such report and accompanying payment made to LICENSOR under this Agreement, and
an independent Certified Public Accountant or Accounting Firm selected by
LICENSOR and acceptable to LICENSEE may have access, on reasonable notice during
regular business hours, not to exceed once per year, to such records to verify
such reports and payments. Such Accountant or Accounting Firm shall not disclose
to LICENSOR any information other than that information relating solely to the
accuracy of, or necessity for, the reports and payments made hereunder The fees
and expense of the Certified Public Accountant or Accounting Firm performing
such verification shall be borne by LICENSOR unless in the event that the audit
reveals an underpayment of royalty by more than ten percent (10%), in which case
the cost of the audit shall be paid by LICENSEE.
11. REPRESENTATIONS AND WARRANTIES: The following provisions relate
to representations and warranties by the parties.
11.1 BY LICENSEE. LICENSEE represents and warrants to LICENSOR as
follows:
11.1.1 CORPORATE POWER. LICENSEE has all necessary corporate
power to enter into and perform its obligations under this Agreement
and as taken all necessary action under the laws of the State of
Delaware and its articles of organization and operating agreement to
authorize the execution and consummation of this Agreement.
11.2 BY LICENSOR. LICENSOR represents and warrants to LICENSEE as
follows:
11.2.1 CORPORATE POWER. LICENSOR has all necessary corporate
power to enter into and perform its obligations under this agreement
and has taken all
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<PAGE> 10
necessary corporate action under the laws of the State of Florida and
its charter and by-laws to authorize the execution and consummation of
this Agreement.
11.2.2 OWNERSHIP. Subject to (a) any statutory rights of the
United States Government under 35 U.S.C. Sections 200 et seq.,
LICENSOR acknowledges that LICENSOR either legally and/or beneficially
owns and controls the entire right, title and interest in and to the
Patent Rights including the right to preclude the unauthorized
disclosure or use of the foregoing.
11.2.3 NO OPTIONS. There are no outstanding options or rights in
any third party to any of the Patent Rights or to acquire any rights
or licenses to any of the Patent Rights.
11.2.4 NO LITIGATION. To the best of LICENSOR'S knowledge, there
is no action, suit, claim, proceeding or governmental investigation
pending or threatened against LICENSOR with respect to any of the
Patent Rights either at law or in equity, before any court or
administrative agency or before any governmental department,
commission, board, bureau, agency or instrumentality, whether United
States or foreign.
12. CONFIDENTIAL INFORMATION. The following provisions relate to
restrictions on the disclosure and use of Confidential Information by the
parties:
12.1 Confidential Information shall be marked confidential, or, if
disclosed orally, shall be summarized in a writing marked confidential by the
disclosing party and such summary shall be given to the receiving party within
thirty (30) days after oral disclosure.
12.2 CONFIDENTIALITY. Until the later of (a) five years from the
Effective Date of this Agreement, or (b) two years from the effective date of
termination, LICENSEE and LICENSOR each agrees
(a) to treat as confidential and not disclose to any third pan
all Confidential Information disclosed to it by the other
party; and
(b) not to use such Confidential Information;
except as authorized by this Agreement.
12.3 RELEASE FROM RESTRICTIONS. All information which is characterized
as Confidential Information shall cease to be confidential and LICENSEE and/or
LICENSOR shall be released from their respective obligations under Paragraph
12.2 hereof on the date when, through no fault or omission of the party seeking
such release, such information becomes (a) disclosed in published literature; or
(b) generally available to industry; or (c) obtained by the party seeking such
release from a third party without binder of secrecy, PROVIDED, HOWEVER, that
such third party has no confidentiality obligations to the other party.
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<PAGE> 11
12.4 CONFLICT. In the event of any conflict between this Agreement and
the terms of the Confidentiality Non-Disclosure Agreement dated December 29,
1997 between the parties, the terms of this Agreement shall govern.
13. MARKING AND STANDARDS:
13.1 In accordance with applicable law, LICENSEE agrees to mark and
obligate Sublicensees to mark Products (or their containers or labels) sold in
the United States with proper patent notice as specified under the patent laws
of the United States and will also satisfy the marking standards of each foreign
country in which patent protection is sought and products are sold.
13.2 LICENSEE further agrees to maintain satisfactory standards in
respect to the nature of the Products manufactured and/or sold by LICENSEE.
LICENSEE agrees that all Products manufactured and/or sold by it shall be of a
quality which is appropriate to products of the type here involved LICENSEE
agrees that similar provisions shall be included in its sublicenses under the
Patent Rights.
14. ASSIGNMENT:
14.1 This Agreement is not assignable by LICENSEE without the prior
written consent of LICENSOR at its sole discretion, except that LICENSEE may
freely assign this Agreement to an Affiliate or to a party assuming
substantially all of LICENSEE's business to which Products relate. Notice to
LICENSOR shall be given within thirty (30) days after such an assignment in
order to allow LICENSOR to comply with its affected obligations under this
Agreement.
14.2 This Agreement shall extend to and be binding upon the successors
and legal representatives and permitted assigns of LICENSOR and LICENSEE.
15. NOTICE:
Any notice, payment, report or other correspondence (hereinafter
collectively referred to as "Correspondence") required or permitted to be given
hereunder shall be mailed by certified mail or delivered by hand to the party to
whom such Correspondence is required or permitted to be given hereunder. If
mailed, any such notice shall be deemed to have been given when mailed as
evidenced by the postmark at point of mailing. If delivered by hand, any such
Correspondence shall be deemed to have been given when received by the party to
whom such Correspondence is given, as evidenced by written and dated receipt of
the receiving party.
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<PAGE> 12
All Correspondence to LICENSEE shall be addressed as follows:
Antigenics LLC
630 Fifth Avenue, Suite 2170
New York, NY 10111
Attn: Garo Armen, Chief Executive Officer
All Correspondence to LICENSOR shall be addressed, in duplicate, as
follows:
FOR NOTICE: University of Miami
School of Medicine
Research and Graduate Studies
P.O. Box 016960 (R64)
1600 N.W. 10th Avenue
Miami, Florida 33101
Attention: Dr. Norman H. Altman
Assistant Vice President
Business Affairs
327 Max Orovitz Building
1507 Levante Avenue
Coral Gables, Florida 33124-1432
Attention: Mr. Alan J. Fish
FOR NOTICE AND PAYMENT:
Director
Office of Technology Transfer
P.O. Box 016960 (M811)
Miami, FL 33101
Attention: Dr. Gary S. Margules
Either party may change the address to which Correspondence to it is to be
addressed by notification as provided herein in this paragraph.
16. TERMINATION:
16.1 LICENSOR and LICENSEE shall each have the right to terminate this
Agreement if the other party commits a material breach of an obligation under
this Agreement or provides an intentionally false report and continues in
default for more than two (2) months after receiving written notice of such
default or intentionally false report. Such termination shall be effective upon
further written notice to the breaching party after failure by the breaching
party to cure such default. If LICENSOR commits a material breach or defaults,
then LICENSEE has no duty to continue the payment of royalties as set forth in
Section 8 of this Agreement.
16.2 The license and rights granted in this Agreement have been
granted on the basis of the special capability of LICENSEE to perform research
and development work leading to the manufacture and marketing of the Products.
Accordingly, to the extent enforceable under
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<PAGE> 13
law, LICENSEE covenants and agrees that in the event any proceedings under the
Bankruptcy Act or any amendment thereto, be commenced by or against LICENSEE,
and, if against LICENSEE, said proceedings shall no be dismissed with prejudice
before either an adjudication in bankruptcy or the confirmation of a composition
arrangement, or plan of reorganization, or in the event LICENSEE shall be
adjudged insolvent or make an assignment for the benefit of its creditors, or if
a writ of attachment or execution be levied upon the license hereby created and
not be released or satisfied within ten (10) days thereafter, or if a receiver
be appointed in any proceeding or action to which LICENSEE is a party with
authority to exercise any of the rights or privileges granted hereunder, any
such event shall be deemed to constitute a breach of this Agreement by LICENSEE,
and LICENSOR, at the election of LICENSOR, but not otherwise, ipso facto, and
without notice or other action by LICENSOR, shall have the right to terminate
this Agreement.
16.3 LICENSEE shall have the right to terminate this Agreement in
whole or in part with respect to any patent or application within Patent Rights
upon sixty (60) days notice.
16.4 Any termination of this Agreement shall be without prejudice to
LICENSOR'S right to recover all amounts accruing to LICENSOR prior to such
termination and cancellation. Except as otherwise provided, should this
Agreement be terminated for any reason, LICENSEE shall retain no rights, express
or implied, under the Patent Rights, nor have the right to recover any royalties
paid LICENSOR hereunder. Upon termination, LICENSEE shall have the surviving
right under this Agreement to dispose of Products then in its possession and to
complete existing contracts for such products, so long as contracts are
completed within six (6) months from the date of termination, subject to the
payment of royalties to LICENSOR as provided in Section 8 hereof.
17. CERTIFICATE OF INSURANCE:
17.1 LICENSEE and LICENSOR each agree to carry and keep in force, each
at its expense, general liability insurance with limits not less than one
million dollars ($1,000,000) per person and three million dollars ($3,000,000)
aggregate to cover liability for damages on account of bodily or personal injury
or for any cause. Such insurance shall not be canceled for any cause without at
least thirty (30) days prior written notice to the other party. LICENSEE'S
insurance shall contain an endorsement naming LICENSOR as an additional insured
with respect to this Agreement. LICENSEE shall provide a certificate of
insurance stating the limits of coverage. Such insurance shall be written to
cover claims during the term of this Agreement. The insurance certificate shall
be sent to the University of Miami, attention Mr. William Coombs, 333 Max
Orovitz Building, 1507 Levante Avenue, Coral Gables, Florida 33124-1437.
17.2 LICENSEE shall keep in force product liability insurance with
limits not less than five million dollars ($5,000,000) in the event of human
subject testing of a Product. Such insurance shall not be canceled for any cause
without at least thirty (30) days prior written notice to the other party
LICENSEE'S insurance shall contain an endorsement naming LICENSOR as an
additional insured with respect to this Agreement. LICENSEE shall provide a
certificate of insurance stating the limits of coverage. Such insurance shall be
written to cover claims incurred, discovered, manifested or made during or after
the expiration of this Agreement. The insurance certificate shall be sent to the
University of Miami, attention Mr. William Coombs, 333 Max Orovitz Building,
1507 Levante Avenue, Coral Gables, Florida 33124-1437.
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<PAGE> 14
18. USE OF NAME:
Except as may be required by law, LICENSEE shall not use the name of
the University of Miami, or any of its employees, or any adaptation thereof, in
any publication, including advertising, promotional or sales literature without
the prior written consent of Mr. Alan J. Fish, Assistant Vice President of
Business Services, 327 Max Orovitz Bldg., 1507 Levante Avenue, Coral Gables, FL
33124-1432. Except as may be required by law, LICENSOR shall not use the name of
Antigenics LLC, or any of its employees, or any adaptation thereof, in any
publication, including advertising, promotional or sales literature without the
prior written consent of the Chief Executive Officer of Antigenics LLC, 630
Fifth Avenue, Suite 2170, New York, NY 10111.
19. GOVERNING LAW:
This Agreement shall be governed by and interpreted in accordance with
the laws of the State of Florida.
20. CAPTIONS:
The captions and Paragraph/Section headings of this Agreement are
solely for the convenience of reference and shall not affect its interpretation.
21. SEVERABILITY:
Should any part or provision of this Agreement be held unenforceable
or in conflict with the applicable laws or regulations of any jurisdiction, the
invalid or unenforceable part or provision shall be replaced with a provision
which accomplishes, to the extent possible, the original business purpose of
such part or provision in valid and enforceable manner, and the remainder of the
Agreement shall remain binding upon the parties hereto.
22. SURVIVAL:
22.1 The provisions of Sections 5.3, 6, 7 and 12 shall survive the
termination or expiration of this Agreement and shall remain in full force and
effect.
22.2 The provisions of this Agreement which do not survive termination
or expiration hereof (as the case may be) shall, nonetheless, be controlling on,
and shall be used in construing and interpreting, the rights and obligations of
the parties hereto with regard to any dispute, controversy or claim which may
arise under, out of, in connection with, or relating to this Agreement.
23. AMENDMENT:
No amendment or modification of the terms of this Agreement shall be
binding on either party unless in a prior writing signed by an authorized
officer of each party.
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<PAGE> 15
24. WAIVER:
No failure or delay on the part of a party in exercising any right
hereunder will operate as a waiver of, or impair, any such right. No single or
partial exercise of any such right will preclude any other or further exercise
thereof or the exercise of any other right. No waiver of any such right will be
deemed a waiver of any other right hereunder.
25. ENTIRE AGREEMENT:
This Agreement constitutes the entire agreement between the parties
hereto respecting the subject matter hereof, and supercedes and terminates all
prior agreements respecting the subject matter hereof, whether written or oral,
and may be amended only by an instrument in writing executed by both parties
hereto.
[SIGNATURE PAGE FOLLOWS]
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<PAGE> 16
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed by their respective officers thereunto duly authorized to be
effective as of the Effective Date.
ANTIGENICS LLC
Date: ____________________ By: /s/ Garo H. Armen
----------------------------------
Garo H. Armen
-------------------------------------
Name
Chairman and Chief Executive Officer
-------------------------------------
Title
UNIVERSITY OF MIAMI
Date: 4/19/99 By: /s/ Alan J. Fish
----------------------------------
Alan J. Fish
-------------------------------------
Name
Asst. Vice President Business Services
--------------------------------------
Title
16
<PAGE> 1
EXHIBIT 10.14
[ANTIGENICS LOGO]
ANITGENICS
November 15, 1999
Medison Pharma Ltd.
10 Hashiloach St. P.O.B. 7090
Petach-Tikva 49170
Israel
Dear Mr. Jakobsohn:
We refer to our recent discussions regarding a potential Licensing and
Distribution Relationship between Antigenics LLC ("Antigenics") and Medison
Pharma Ltd. ("Medison") in Israel with regard to Antigenics' proprietary
technology utilizing Heat Shock Proteins ("HSP") for the boosting and modulating
of the immune system of humans against cancer (the "Technology").
The following outline the general terms and conditions of a Licensing and
Distribution Relationship:
1. Antigenics' shall grant Medison a license for the Technology in
Israel solely for the purposes outlined in this Letter Agreement.
2. In each of Antigenics' Phase III Trials, Antigenics will include a
limited number of clinical sites in Israel. Antigenics' obligation
will cease if it is determined by both companies that there are
insufficient sites available to accrue the appropriate number of
patient's according to Antigenics' timelines.
3. All data, clinical and otherwise, generated in the Israeli sites
will be property of Antigenics.
4. Medison shall be Antigenics' exclusive sales and marketing agent
for the Israeli market.
5. For the Israeli market, Medison will be responsible, at its own
costs, for preparing and filing all regulatory documents and
providing whatever support is necessary to obtain regulatory
approval in Israel.
6. Medison shall be responsible for obtaining any necessary
reimbursement approvals.
<PAGE> 2
7. After regulatory approval, Medison shall be responsible for all
sales and marketing efforts and expenses.
8. Antigenics shall receive 45% of Net Sales and Medison shall
receive 55% of Net Sales.
9. Medison and its affiliates shall make an equity investment of
$350,000 in Antigenics LLC 1999 Private Placement and will be
entitled to all the rights granted to the other investors as
detailed in the Private Placement Memorandum dated 8/31/99, the
Subscription Agreement and the Limited Liability Company
Agreement.
10. Your rights and obligations will be subject to typical termination
provisions, however, the Agreement will not contain a change in
control termination provision.
11. The term of the agreement shall be 7 years.
Prior to the initiation of Antigenics' first Phase III trial in cancer,
Antigenics and Medison shall negotiate and sign a License and Distribution
Agreement acceptable to both parties. That agreement shall contain terms and
conditions typical to for an agreement of that type, including appropriate
termination provisions and best efforts clauses.
This Letter Agreement shall be governed by and construed and enforced in
accordance with the laws of the state of New York, without regard to the
conflicts of law principles thereof. In the event of any dispute, New York
courts shall have exclusive jurisdiction of such dispute.
If the foregoing correctly expresses our understanding, please so indicate by
signing and dating the enclosed copy of this Letter Agreement and returning it
to the undersigned.
Sincerely,
Antigenics LLC
By: /s/ Garo H. Armen
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Name: Garo H. Armen
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Title: Chairman and Chief Executive Officer
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<PAGE> 3
Medison
By: /s/ Mier Jakobsohn /s/ Shmuel Berkovich
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Name: /s/ Mier Jakobsohn /s/ Shmuel Berkovich
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Title: General Manager General Manager
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