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Exhibit 10.43
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
AGREEMENT
Effective as of February 12, 1996 ("Effective Date"), THE BOARD OF TRUSTEES OF
THE LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the
laws of the State of California ("STANFORD"), and Ontogeny Incorporated, a
Delaware corporation having a principal place of business at One Kendall Square,
Bldg. 600, Cambridge, MA 02139 ("ONTOGENY"), agree as follows:
1. BACKGROUND
1.1 STANFORD represents and warrants that it is Owner by assignment from
Matthew Scott (an investigator employed by Howard Hughes Medical Institute
("HHMI")), Lisa Goodrich and Ronald Johnson of the entire right, title and
interest in the United States Patent Application Serial No. 08/319,745
filed October 7, 1994 and entitled "Vertebrate Genes Related to the
Drosophila Gene Patched" (STANFORD Docket S94-099) and in the inventions
described and claimed therein ("Invention"), and any Licensed Patent,
defined in Section 2, which may issue to the Invention, and that STANFORD
has the authority to grant the licenses granted hereunder.
1.2 STANFORD has certain technical data and information ("Technology")
pertaining to Invention.
1.3 STANFORD wants the Technology and Invention perfected and marketed in a
reasonable period of time in order that resulting products will be
available for public use and benefit.
1.4 ONTOGENY wants a license under the Technology, Invention, and Licensed
Patent to develop, manufacture, use, and sell Licensed Product in the area
of human therapeutics and diagnostics.
1.5 The Technology and Invention were developed in the course of research
supported by the HHMI in affiliation with STANFORD.
2. DEFINITIONS
2.1 "Licensed Patent(s)" means any U.S. Letters Patent issued upon STANFORD's
U.S. Patent Application, Serial Number 08/319,745 filed October 7,1994, or
upon any divisions, continuations, reissues, reexamines, and any
continuations-in-part (CIPs), except those CIPs which do not embrace
subject matter disclosed in USSN 08/319,745 and which would not be
infringed by the practice of the Invention. "Licensed Patent(s)" also
includes any and all foreign patents or patent applications corresponding
to the above. All such divisions, continuations, reissues, CIPs and
foreign applications and patents issuing thereon will be automatically
incorporated in and added to this Agreement. This agreement specifically
contemplates that Licensed Patents shall include, but is not limited to,
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CIPs which are directed to other Patched homologs, e.g., mammalian
homologs, and bioactive fragments thereof, diagnostic methods involving
Patched gene(s) and/or gene product(s), and drug screening protocols
involving Patched gene(s) and/or gene product(s).
2.2 "Licensed Materials" means those proprietary materials which are
enumerated in Appendix A and transferred from STANFORD to ONTOGENY within
sixty (60) days of the Effective Date.
2.3 "Licensed Product" means any product or part in the Licensed Field of Use,
the manufacture, use, or sale of which:
(a) Is covered by a valid claim of an issued, unexpired Licensed
Patent directed to the Invention. A claim of an issued,
unexpired Licensed Patent will be presumed to be valid unless
it has been held to be invalid by a final judgment of a court
of competent jurisdiction where no appeal can be or is taken;
or
(b) Is covered by any claim being prosecuted in a pending
application directed to the Invention, provided the claim has
not been pending for more than 7 years.
2.4 "Milestone Product" means any product which is not a Licensed Product but
which is manufactured in material part through the use of a Licensed
Product.
2.5 "Derivative Product" means any product which is not a Licensed Product but
which is identified or discovered in material part through the use of a
Licensed Product.
2.6 "Source Product" means any product which is not a Licensed Product but
which incorporates in material part Licensed Materials.
2.7 "Cell Therapy Product" means any cell, tissue or organ which is engineered
ex vivo by a cell processing process which relies, in material part, on
the use of a Licensed Product.
2.8 "Derivative Cell Therapy Product" means any cell, tissue or organ which is
engineered ex vivo by a cell processing process which does not use of a
Licensed Product, but which process is identified or discovered in
material part through the use of a Licensed Product.
2.9 "Licensed Process" means any process in the Licensed Field of Use which
relies, in material part, on the use of a Licensed Product.
2.10 "Net Sales" means the gross revenue derived by ONTOGENY and sublicensee
from Licensed Product, whether or not assembled (and without excluding any
components or subassemblies and whether or not patent impacted), less the
following items but only as they actually pertain to the disposition of
the Licensed
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Product by ONTOGENY or sublicense, are included in the gross revenue, and
are separately billed:
(a) Taxes levied on and/or other governmental charges made as to
production, sales, transportation, delivery or use and paid by
or on behalf of ONTOGENY or sublicensee;
(b) Costs of insurance, packing, and transportation from the place
of manufacture to the customer's premises or point of
installation;
(c) Costs of installation at the place of use;
(d) Credit for returns, allowances, or trades; and
(e) Customary trade, quantity or cash discounts and non-affiliated
brokers' or agents' commissions actually allowed or taken.
2.11 "Licensed Field of Use" means human and veterinary therapeutics, drug
discovery and diagnostics.
2.12 "Exclusive" means that, subject to Article 4, STANFORD will not grant
additional licenses in the Licensed Field of Use.
2.13 "Sublicensee" means third parties to whom ONTOGENY has granted sublicenses
pursuant to this agreement.
3. GRANT
3.1 STANFORD grants to ONTOGENY, upon and subject to the terms and conditions
of this agreement,
(i) a worldwide exclusive license to Licensed Patents, in
the Licensed Field of Use, to make, use, and sell
Licensed Products, Milestone Products, Derivative
Product, Licensed Process, Cell Therapy Products and
Derivative Cell Therapy Products; and
(ii) a worldwide non-exclusive license to Licensed Materials.
3.2 The exclusive license granted in paragraph 3.1, including the right to
sublicense pursuant to Article 13, in the Licensed Field of Use begins on
the Effective Date and ends on the first to occur of.
(a) 20 years from the Effective Date; or
(b) 12 years from the date of first commercial sale of a
Licensed Product by ONTOGENY or sublicensee; ONTOGENY agrees
to
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
promptly inform STANFORD in writing of the date of first commercial sale.
Then the exclusive license will be converted to nonexclusive license until
expiration of the last Licensed Patent.
3.3 STANFORD has the right to practice the Invention for its own
non-commercial research purposes or in non-commercial research
collaboration with third party academic or not-for-profit research
institutions. STANFORD also has the right to publish any information
included in the Licensed Patent.
4. SPONSORS'RIGHTS
This Agreement is subject to all of the terms and conditions of Title 35
United States Code Sections 200 through 204. This includes the obligation
that ONTOGENY will manufacture substantially in the United States all
Licensed Product sold or produced in the United States, as well as certain
obligations to HHMI, and to take all reasonable action necessary to enable
STANFORD to satisfy its obligation to the sponsor, relating to Invention.
5. DILIGENCE
5.1 As an inducement to STANFORD to enter into this Agreement, ONTOGENY will
use all reasonable effort and diligence to proceed with the development,
manufacture, and sale or lease of Licensed Product and to diligently
develop markets for the Licensed Product and to meet the specific
milestones, expenditure rates, and other measures of diligence are set
forth in Appendix B. Anytime after ten (10) years from the date of
license, STANFORD may terminate this Agreement if ONTOGENY or a
sublicensee has not sold a Licensed Product for a period of 1 year and is
not demonstrably engaged in research, development, manufacturing,
marketing or licensing program, as appropriate, directed toward the
development and commercialization of the licensed subject matter.
5.2 Progress Report - On or before September 30 of each year until ONTOGENY
markets a Licensed Product, STANFORD may request in writing that ONTOGENY
submit an annual report covering the preceding year ending June 30,
regarding the progress of ONTOGENY toward commercial use of Licensed
Product. This report will include, as a minimum, information sufficient to
enable STANFORD to satisfy reporting requirements of the U.S. Government
and for STANFORD to ascertain progress by ONTOGENY toward meeting the
diligence requirements of Article 5.
6. ROYALTIES
6.1 In consideration for the license granted in this agreement, ONTOGENY will
pay STANFORD a noncreditable, nonrefundable license issue royalty of $[**]
upon signing this Agreement.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
6.2 In addition, upon signing of this Agreement and upon approval by the
Provost, ONTOGENY will also issue to STANFORD 6000 shares of Ontogeny
Preferred stock.
6.3 Beginning [**] through [**], ONTOGENY will pay STANFORD a yearly royalty
of $[**]. Beginning [**] and thereafter, ONTOGENY will pay STANFORD a
yearly royalty of $[**]. These yearly royalty payments are nonrefundable
but they are creditable against earned royalties as described in Paragraph
6.5.
6.4 In addition, ONTOGENY will pay STANFORD earned royalties on Net Sales as
follows:
o Pharmaceutical Applications
o Net Sales of Licensed Product:...........................[**]%
o Net Sales of Licensed Product wherein Licensed Patent is
key, but not sole patent covering sale of Licensed
Product:.................................................[**]%
o Net Sales of Milestone Product:..........................[**]%
o Net Sales of Source Product:.............................[**]%
o Net Sales of Derivative Product:
a one-time payment of $[**] to be made upon first commercial
sale
o Cell Therapy Applications
o On Net Sales of Cell Therapy Product wherein Licensed
Product is a key cell differentiation factor used in
cell processing to generate the Cell Therapy Product ....[**]%
o On Net Sales of Cell Therapy Product wherein Licensed
product is used in cell processing, but is not a key
factor...................................................[**]%
where n is the number of proprietary factors on which Ontogeny
has to pay royalties or discovered itself
o Net Sales of Derivative Cell Therapy Product: a one-time
payment of $[**] to be made upon first commercial sale.
o Diagnostic Applications
o On Net Sales of Licensed Product as a diagnostic,
wherein Licensed Product is the sole proprietary component
of kit or reagent sold...................................[**]%
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
o On Net Sales of Licensed Product as a diagnostic, wherein
Licensed Product is one of several proprietary components
of kit or reagent sold...................................[**]%
where n is the number of proprietary components on which
Ontogeny has to pay royalties or discovered itself
If there is some dispute regarding what is considered a key patent or key
differentiation factor, ONTOGENY and STANFORD agree to discuss and if
necessary submit to a board of independent experts.
6.5 Creditable payments under this Agreement may be offset against 50% of each
earned royalty payment which ONTOGENY is required to pay under Paragraph
6.4 until the entire credit is exhausted.
6.6 If this Agreement is not terminated in accordance with other provisions,
ONTOGENY'S obligation to pay royalties will continue until the later of:
(a) seven years from even date herewith, if no Licensed Patent
issues covering product sales; or
(b) As long as ONTOGENY would infringe a valid claim of an
unexpired Licensed Patent of STANFORD.
6.7 At the time that any exclusive rights are converted to non-exclusive
rights under Article 3 or any other similar provision herein, the royalty
due under paragraph 6.4 above shall be halved for any Pharmaceutical, Cell
Therapy or Diagnostic product still covered by Licensed Patents but for
which exclusive rights are no longer accorded by the subject agreement.
6.8 ONTOGENY will calculate royalties on sales in currencies other than U.S.
Dollars using the appropriate foreign exchange rate quoted by the Bank of
America (San Francisco) foreign exchange desk, on the close of business on
the last banking day of each calendar quarter. Royalty payments to
STANFORD must be in U.S. Dollars. ONTOGENY will pay all non-U.S. taxes
related to royalty payments and will not deduct these taxes from the
payments due STANFORD.
7. PATENT PROSECUTION
7.1 STANFORD and ONTOGENY will share responsibility for patent prosecution as
follows:
ONTOGENY will lead the management of prosecution of the Licensed Patent
using patent counsel reasonably acceptable to STANFORD. Counsel will
directly notify STANFORD, and provide STANFORD copies of any official
communications from United States and foreign patent offices relating to
said prosecution, as well as copies of relevant communications to the
various patent
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offices so that STANFORD may be informed and apprised of the continuing
prosecution of Licensed Patent. STANFORD will have reasonable
opportunities to participate in decision making on key decisions affecting
filing, prosecution and maintenance of the Licensed Patent, including,
without limitation reasonable opportunity to review the abandonment of any
Licensed Patent or claims thereof, and ONTOGENY will use reasonable
efforts to incorporate STANFORD's reasonable suggestions regarding said
prosecution. ONTOGENY will use reasonable efforts to amend any patent
application to include claims reasonably requested by STANFORD to protect
Licensed Product. No case will be abandoned without giving STANFORD at
least thirty (30) days notice and opportunity to pursue the application.
7.2 Except as by mutual agreement between the parties, patent applications
comprising the Licensed Patent are to be filed in the major world markets,
which filing will be satisfied by filing in the following patent offices:
United States, Canadian, Japanese, Australia and European.
7.3 If STANFORD demonstrates that it is not being adequately informed or
apprised of the continuing prosecution of Licensed Patent or that STANFORD
is not being provided with reasonable opportunities to participate in
decision making as indicated in the above paragraph, STANFORD will assume
lead management of the prosecution of the Licensed Patent, using patent
counsel reasonably acceptable to ONTOGENY, and STANFORD will thereafter
provide ONTOGENY with the same safeguards which STANFORD was due under
paragraph 7.1. Any such demonstration will involve reasonable written
notice to ONTOGENY specifically detailing the STANFORD's concern, and a
reasonable opportunity, including a 60 day cure period, for ONTOGENY to
refute or cure the basis for STANFORD's concern. STANFORD agrees to
diligently prosecute or assist in prosecuting Licensed Patent. If after
the cure period STANFORD and ONTOGENY still cannot agree on a cure for
STANFORD's concerns, both parties agree to submit the dispute to
Arbitration as set forth in Article 18 below.
7.4 Within 45 days after receipt of a statement from STANFORD, ONTOGENY will
reimburse STANFORD for all costs incurred by STANFORD, including those
costs incurred prior to the Effective Date, in connection with the
preparation, filing and prosecution of all patent applications and
maintenance of patents corresponding to the Invention.
7.5 In the event that STANFORD assumes lead management of the Licensed Patent
under Paragraph 7.3 above, ONTOGENY will reimburse STANFORD for all
reasonable costs incurred in the preparation, filing, prosecution and
maintenance of the Licensed Patent within 45 days after receipt of a
statement from STANFORD. STANFORD agrees to use reasonable efforts to
minimize such patent costs by whatever means necessary for the benefit of
ONTOGENY, provided however, that the quality and scope of the Licensed
Patent will not be jeopardized by such minimization. STANFORD agrees to
provide an annual patent prosecution and maintenance budget to ONTOGENY
with reasonable
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period for review. ONTOGENY will not be held liable for any fees or
services in excess of the agreed upon budget unless by consent in writing.
8. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
8.1 ONTOGENY will make written reports and earned royalty payments to STANFORD
beginning with the first sale of a Licensed Product. These reports and
payments will be due within 45 days after the end of each calendar
quarter. The report will include the number, description and aggregate Net
Sales of Licensed Product as well as the calculation of earned royalty
payment due STANFORD under Paragraph 6.4 for the completed calendar
quarter. ONTOGENY will also include the payment of royalties for the
calendar quarter covered by the report.
8.2 ONTOGENY must keep and maintain records for a period of 3 years showing
the manufacture, sale, use, and other disposition of products sold or
otherwise disposed of under the license. These records will include
general ledger records showing cash receipts and expenses, and records
that include production records, customers, serial numbers and related
information in sufficient detail to be able to determine the royalties
owed to STANFORD. ONTOGENY will also permit STANFORD to examine books and
records when necessary to verify reports described in Paragraph 8.1.
STANFORD or its designee will make the examination at STANFORD's expense.
If the audit reveals 5% or more under reporting of royalties due STANFORD,
ONTOGENY will pay the audit costs.
9. NEGATION OF WARRANTIES
9.1 Nothing in this Agreement can be construed as:
(a) A warranty or representation by STANFORD as to the validity or
scope of any Licensed Patent;
(b) A warranty or representation that anything made, used, sold,
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties;
(c) An obligation to bring or prosecute actions or suits against
third parties for infringement, except as described in Article
13; or
(d) Granting by implication, estoppel, or otherwise any licenses
or rights under patents or other rights of STANFORD or other
persons other than Licensed Patent, regardless of whether the
patents or other rights are dominant or subordinate to any
Licensed Patent.
9.2 Except as expressly set forth in this Agreement, STANFORD makes no
representations and extends no warranties of any kind, either express or
implied.
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There are no express or implied warranties of merchantability or fitness
for a particular purpose, or that the use of the Licensed Product will not
infringe any patent, copyright, trademark, or other rights or any other
express or implied warranties.
9.3 ONTOGENY agrees that nothing in this Agreement grants ONTOGENY any express
or implied license or right under or to:
(a) U.S. Patent No. 4,237,224, "Process for Producing Biologically
Functional Molecular Chimeras"; U.S. Patent No. 4,468,464 and
U.S. Patent No. 4,740,470, both entitled, "Biologically
Functional Molecular Chimeras" (collectively known as the
Cohen/Boyer patents), or reissues; or
(b) U.S. Patent 4,656,134 "Amplification of Eucaryotic Genes" or
any corresponding patent applications.
10. INDEMNITY
10.1 ONTOGENY will indemnify, hold harmless, and defend STANFORD, HHMI and
STANFORD Health Services and their respective trustees, officers,
employees, students, and agents against any and all claims for death,
illness, personal injury, property damage, and improper business practices
arising out of the manufacture, use, sale, or other disposition of
Invention Licensed Patent, Licensed Product, or Technology by ONTOGENY or
sublicensee, or their customers.
10.2 STANFORD and HHMI will not be liable for any indirect, special,
consequential, or other damages whatsoever, whether grounded in tort
(including negligence), strict liability, contract or otherwise. STANFORD
and HHMI will not have any responsibilities or liabilities whatsoever with
respect to Licensed Product.
10.3 ONTOGENY must at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
10.4 In addition to the foregoing, ONTOGENY must maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier to cover the activities of ONTOGENY and its sublicensee.
This insurance must provide minimum units of liability of $5,000,000 and
must include STANFORD, HHMI and STANFORD Health Services, their trustees,
directors, officers, employees, students, and agents as additional
insureds. This insurance will be written to cover claims incurred,
discovered, manifested, or made during or after the expiration of this
Agreement. At STANFORD's request, ONTOGENY will furnish a Certificate of
Insurance evidencing primary coverage and requiring 30 days prior written
notice of cancellation or material change to STANFORD.
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ONTOGENY will advise STANFORD, in writing, that it maintains excess
liability coverage (following form) over primary insurance for at least
the minimum limits set forth above. All insurance of ONTOGENY must be
primary coverage; insurance of STANFORD, HHMI or STANFORD Health Services
will be excess and noncontributory.
11. MARKING
ONTOGENY will mark Licensed Product (or their containers or labels) made,
sold, or otherwise disposed of by it under the license granted in this
Agreement with the words "Patent Pending," if no patent on the Invention
has issued and with the numbers of the Licensed Patent when a patent has
issued.
12. NAMES AND MARKS
ONTOGENY will not identify STANFORD or HHMI in any promotional advertising
or other promotional materials to be disseminated to the public or to use
the name of any STANFORD faculty member, employee, or student or any
trademark, service mark, trade name, or symbol of STANFORD, HHMI or the
STANFORD Health Services or both, without STANFORD's or HHMI's prior
written consent.
13. INFRINGEMENT BY OTHERS; PROTECTION OF PATENTS
13.1 ONTOGENY will promptly inform STANFORD of any suspected infringement of a
Licensed Patent. During the Exclusive period of this Agreement, STANFORD
and ONTOGENY each have the right to institute an action for infringement
of the Licensed Patent against a third party as follows:
(a) If STANFORD and ONTOGENY agree to institute suit jointly, the
suit will be brought in both their names, the out-of-pocket
costs and any recovery or settlement will be divided equally.
ONTOGENY and STANFORD will agree to the manner in which they
exercise control over the action. STANFORD may, if it so
desires, also be represented by and pay for separate counsel;
(b) If there is no agreement to institute a suit jointly, STANFORD
may institute suit, and, at its option, join ONTOGENY as a
plaintiff. If STANFORD decides to institute suit, then it will
notify ONTOGENY in writing. Failure by ONTOGENY to notify
STANFORD in writing within 15 days of the written notice will
mean that ONTOGENY has assigned to STANFORD all rights, causes
of action, and damages resulting from any alleged
infringement;
(c) If neither (a) nor (b) above occurs, ONTOGENY may institute
suit and, at its option, join STANFORD as a plaintiff.
ONTOGENY will pay the entire cost of litigation and be
entitled to retain the
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entire amount of any recovery or settlement. However any
recovery in excess of litigation costs will be considered Net
Sales, and ONTOGENY will pay STANFORD royalties as indicated
in Section 6.
13.2 Should either STANFORD or ONTOGENY commence a suit under Paragraph 13.1
but then decide to abandon the suit, it will give timely notice to the
other part. The other party may continue prosecution of the suit only if
the two parties can agree on sharing of expenses and any recovery.
14. SUBLICENSE
14.1 ONTOGENY may grant sublicenses to Licensed Patents and Licensed Materials
during the exclusive period of this agreement.
14.2 If ONTOGENY is unable or unwilling to serve or develop a potential market
or market territory for which there is a willing sublicensee, ONTOGENY
will, at STANFORD's request, negotiate in good faith a sublicense under
this Agreement. Bona fide business concerns of ONTOGENY will be considered
in any good faith negotiation for a sublicense under this Agreement.
14.3 Any sublicense granted by ONTOGENY under this Agreement must be subject
and subordinate to terms and conditions of this Agreement, except:
(a) The sublicensee may further sublicense any rights under
Licensed Patents or Licensed Materials only as:
(i) needed or implied in the course of distribution,
installation or performance of service as required for
the sale to an end-user of Licensed Products, Milestone
Products, Derivative Product, Cell Therapy Products,
Derivative Cell Therapy Products and Licensed Materials,
or
(ii) not specifically rejected in writing by STANFORD within
thirty (10) days of written notification of
sub-sublicense by ONTOGENY, any such rejection not being
unreasonably made by STANFORD; and
(b) The earned royalty rate specified in the sublicense may be at
higher rates than the rates in this Agreement. Any sublicense
also will expressly include the provisions of Articles 8, 9,
and 10 for the benefit of STANFORD and HHMI and, in the event
that this Agreement is terminated, provide for the transfer of
all obligations, including the payment of royalties, to
STANFORD or its designee.
14.4 ONTOGENY will provide STANFORD a copy of any sublicense granted under this
Agreement.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
15. STRATEGIC PARTNERSHIPS
Pursuant to ONTOGENY entering into a corporate partnership agreement or
other similar strategic partnership agreement for development of Licensed
Products, Milestone Products, Derivative Product, Cell Therapy Products
and Derivative Cell Therapy Products, ONTOGENY will pay STANFORD, with
sixty (60) days of execution of such partnership agreement, as follows:
If agreement constitutes committed funds to ONTOGENY (including half
the value of equity investments) of less than or equal to $2
Million, then STANFORD will receive $[**].
If agreement constitutes committed funds to ONTOGENY (including half
the value of equity investments of less than $10 Million, but
greater than $2 Million, then STANFORD will receive $[**].
If agreement constitutes committed funds to ONTOGENY (including half
the value of equity investments) of greater than or equal to $10
Million, then STANFORD will receive $[**].
16. TERMINATION
16.1 ONTOGENY may terminate this Agreement by giving STANFORD a 60 day notice
in writing.
16.2 STANFORD may terminate this Agreement if LICENSEE:
(a) Is in default in payment of royalty or providing of reports;
(b) Is in breach of any provision of this Agreement; or
(c) Provides any false report;
and ONTOGENY fails to remedy the default, breach, or false report within
30 days after written notice by STANFORD.
16.3 Surviving any termination are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of ONTOGENY or STANFORD, accrued
or to accrue, because of any breach or default by the other
party; and
(c) The provisions of Articles 8, 9, and 10.
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17. ASSIGNMENT
This Agreement may be assigned to Affiliates of ONTOGENY upon written
approval by STANFORD. STANFORD will not unreasonably withhold approval.
For purposes of this agreement, "Affiliate" shall mean any corporation or
other business entity which directly or indirectly controls, is controlled
by, or is under common control with ONTOGENY. Control means ownership or
other beneficial interest in 50% or more of the voting stock or other
voting interest of a corporation or other business entity,
18. ARBITRATIQN
18.1 Any controversy or any disputed claim arising from this Agreement,
excluding any dispute relating to patent validity or infringement, will be
settled by arbitration in accordance with the Licensing Agreement
Arbitration Rules of the American Arbitration Association.
18.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by ONTOGENY and STANFORD within
" )0 days of request. The arbitrator's judgement will be final and
nonappealable and may be entered in any court having jurisdiction.
18.3 Discovery will be as a civil suit in the California Superior Court. The
Arbitrator may limit the scope, time or issues involved in discovery.
18.4 Any arbitration will be held at STANFORD, California, unless the parties
mutually agree in writing to another place.
19. NOTICES
Notices are to be written and deposited in the United States mail,
registered or certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
STANFORD University
900 Welch Road, Suite 350
Palo Alto, CA 94304-1850
Attention: Director
To LICENSEE: Ontogeny Incorporated
One Kendall Square
Building 600
Cambridge, MA 02139
Attention: President & CEO
Either party may change its address upon written notice to the other
party.
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20. WAIVER
None of the terms of this Agreement can be waived except by the written
consent.
21. APPLICABLE LAW
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
22. MERGER
The parties hereto acknowledge that this Agreement sets forth the entire
Agreement and understanding of the parties hereto as to the subject matter
hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE
LELAND STANFORD JUNIOR
UNIVERSITY
Signature: /s/ Katherine Ku
Name: Katherine Ku
Title: Director, Technology Licensing
Date: Feb. 8, 1996
ONTOGENY INCORPORATED
Signature: /s/ Heidi Wyle
Name: Heidi Wyle
Title: COO
Date: 2/12/96
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S94-099:MW
Stanford /Ontogeny Agreement
Appendix A
Patched-Associated Biological Materials
Derivatives of the patched cDNA clones
Genomic DNA clones containing the patched promoter, and derivatives, especially
fusions to reporter genes
Patched homologues from other species including human
Antibodies, including rat, rabbit and chicken, and other species antiserum
against vertebrate patched protein
Patched protein
PCR primer sequences
Cell culture assay material for patched
<PAGE>
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
S94-009:MW
Stanford /Ontogeny Agreement
Appendix B
Diligence Milestones for Ontogeny Patched Program
1. Nov. 10, 1996
[**]
2. Dec. 15, 1997
[**] and [**] in [**] from [**] a [**] or [**]
3. end 4Q, 1998
[**]
4. end 4Q, 2000
[**]
5. end 4Q 2001
[**]
