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Exhibit 10.8
AGREEMENT
between
Gemini Holding PLC
and
Shield Diagnostics Limited
4th March 1999
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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AGREEMENT
between
Gemini Holding PLC, 162 Science Park, Milton Road, Cambridge, CB4 4GH
("Gemini").
and
Shield Diagnostics Limited, a company incorporated under the Companies Act
(Registration No. SC77359) and having its registered office at The Dundee
Technology Park, Dundee, Angus, DD2 1XA ("Shield").
WHEREAS
A. Gemini has intellectual property to diagnostic methods for detecting
certain polymorphisms in the collagen gene CollA1 as detailed in certain
patents and patent applications including the priority application
GB96043054 filed on 29/02/96.
B. Shield wishes to collaborate with Gemini in the development of commercial
assays for these polymorphisms and to license the relevant intellectual
property.
NOW THEREFORE the parties have agreed and do hereby agree as follows:-
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1. DEFINITIONS
In this agreement the following expressions shall have the following
meanings, namely:-
1.1 "Polymorphisms" means polymorphisms of the Co11A1 gene for which there are
claims in the patent;
1.2 "the Effective Data" means the last date of execution of this agreement;
1.3 "the Know-how" means all mechanical information, notes, reports and other
relevant information relating to the Patent or the assay, belonging to or
in the possession of Gemini or its academic partners to the extent made
available to Gemini;
1.4 "Net invoice price" means the gross invoice price of the Product sold by
Shield after deduction of value added tax, delivery charges, import duties
and any discounts or credits granted in the normal course of trade,
provided that all such sales shall be on an arms length basis;
1.5 "Patent" means all current and future patent related to GB9604305 owned by
Gemini;
1.6 "Product" means *
1.7 "Territory" means the world;
1.8 "Royalty period" shall mean each period of three months during the
continuance of this Agreement commencing on the Launch Date;
1.9 "Exclusive" means that the rights cannot be given to any other company for
microtitre-plate based assays;
1.10 "Intellectual Property Rights" means patents, trademarks, registered
designs, design rights (whether registrable or otherwise), applications
for any of the foregoing, copy right, know-how, trade or business names
and other similar rights or obligations whether registrable or not in any
country;
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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1.11 In this agreement words importing the singular shall include the plural
and vice versa;
1.12 Headings to Clauses are inserted for convenience and shall not affect
their interpretation;
2. DURATION
This agreement shall commence upon the Effective Date and shall subsist
for the term of the patent thereafter unless sooner terminated in
accordance with the provision herein contained.
3. INTELLECTUAL PROPERTY RIGHTS
3.1 Shield shall not acquire title to the Intellectual Property Rights which
shall remain solely vest in Gemini;
32 For the avoidance of doubt it is acknowledged that all and any
Intellectual Property Rights which belong to either party as at the date
of this Agreement and which may be used by either party in connection with
the development, manufacturing, marketing or sale of the Product shall at
all times remain the sole and exclusive property of the party introducing
the same;
3.3 Gemini shall forthwith upon execution of this agreement furnish Shield
with all relevant know-how in its possession, relating to the Product;
3.4 Gemini agrees to progress and maintain applications for full patent
coverage in the geographical areas.
4. GRANT OF RIGHTS TO THE COMPANY
a. Gemini hereby grants Shield an Exclusive license to the Patent and
the Know-how with the purpose of developing, producing and marketing
the Product in the Territory, and for no other purpose whatsoever.
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b. Shield shall be entitled to appoint sublicenses of all rights
granted to it pursuant to this Agreement.
5. LICENSE FEE
In consideration of fulfillment by Gemini of its obligations pursuant to
this Agreement, Shield agrees to the payment of ******* within 30 days
of the Effective Date and ******* when the product is launched anywhere
in the Territory
6. PAYMENT OF ROYALTIES
6.1 a. Shield shall make payment to Gemini a royalty of ******************
charged by Shield for the Product sold by Shield.
b. In the event that a patent is not granted in any one geographical
area the royalty rate will revert to *** for that particular
geographical area.
c. For geographical areas where no patent is applied for the royalty
rate will be *** for that particular geographical area.
6.2 Shield shall provide to Gemini with a written statement of the aggregate
royalties due for each Royalty Period giving such detail of the
calculation of royalties as Gemini may reasonably require.
6.3 For the purpose of verification of sums due to Gemini in terms of this
agreement Shield shall maintain true and accurate records and books of
accounts containing all information necessary for the determination of all
amounts received by its through sale or otherwise of the Product which
records and books of accounts shall be open to inspection by Gemini or its
authorised representative or professional advisers at any time during
normal business hours upon request by Gemini giving reasonable notice and
in addition Shield shall exhibit or deliver to Gemini such reasonable
information as it may require to verify all amounts payable.
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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7 WARRANTIES
7.1 Shield shall promptly notify Gemini of any infringement of Licensed
Patent(s) of which it shall become aware. The parties shall in
consultation decide if and what way appropriate action to restrain such
infringment has to be taken. The costs of any action against infringement
shall be borne equally by Gemini and Shield. Proceeds arising from any
infringement action will equally devided among parties. This is not valid
for Patent infringements from Shield.
8 WARRANTIES
8.1 Gemini hereby warrants, represents and undertakes to Shield at the date
hereof:-
a. no license of or any other rights in the Product had been granted by
it to any third party in the Territory;
b. it is free to enter into and has full right and power to enter into
this Agreement and the whole undertakings hereof;
c. it is the registered and beneficial owner of the Patents;
d. it has full power to and authority the use of the Know-how for the
purpose of this Agreement;
e. if has not entered into any arrangement of agreement or granted any
licenses or rights to use the Patent or the Know-how to any third
party and would prevent the licensee from exercising or enjoying its
rights pursuant to the Agreement; and
f. to the best of its knowledge, it has disclosed all the Know-how
created and generated both negatively and positively by Gemini, its
academic partners and collaborators.
8.2 Shield hereby warrants, represents and undertakes to Gemini to launch the
Product into the market by December 2000.
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9. IMPROVEMENTS
9.1 Title to the Intellectual Property Rights in any such amendment or
modification shall vest where appropriate in whichever party develops,
produces, suggests or designs the same.
9.2 Title to the Intellectual Property Rights in any aspect of the
manufacturing process shall vest where appropriate in whichever party
develops, produces, suggests or designs the same.
9.3 The exclusive license granted to Shield in Section 4 shall include the use
of any improvements in the know-how made either before or subsequent to
the signing of the agreement.
10 INDEMNITY
10.1 Shield shall indemnify and hold Gemini harmless against all and any costs,
losses, damage or expenses which Shield or Gemini may incur or have
awarded against it by reason of manufacture, supply or sale of the
Product.
11. TERMINATION
11.1 Either party shall be entitled to terminate this Agreement in the event of
material breach of any of the provisions herein contained by the other
provided always that such breach shall not have been remedied (if capable
of being remedied) within a period of thirty (30) days from the date of
written notice by either party requiring remedy of the breach and in the
case that either party:-
i. becomes bankrupt, goes into liquidation or receivership or has an
administrator appointed on its assets or upon institution of
insolvency proceedings or in the event of any general composition
formal or informal with or for the benefit of creditors of the
Company (except voluntary liquidation by a solvent Company for the
purposes of amalgamation of reconstruction where the resulting
entity assumes all of the obligations of the Company under this
Agreement);
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ii. in the event that payment of any royalties payable by Shield to
Gemini in terms of Clause 8 hereof remain unpaid for a period of
ninety (90) days after the same are due and payable;
11.2 Termination of the Agreement (howsoever occasioned) shall not effect the
continuance in force of the coming into force of any provision of the
Agreement which is expressly or by implication intended to continue in or
come into force after such termination.
12. CONSEQUENCES OF TERMINATION
On termination of the Agreement howsoever the same may be determined the
rights granted pursuant to Clause 4 hereof shall cease forthwith and
Shield shall forthwith cease to manufacture and sell the Product except
for the purposes of fulfilling any orders received prior to the date of
termination or of disposing of any stocks of the product held by the
company at the date of termination.
13. NOTICE
Any notice served under the provisions of this Agreement shall be
sufficient served or delivered or sent by registered or recorded delivery
or first class prepaid post in the case of Gemini addressed to the
Managing Director at the address given in this Agreement and in the case
of Shield addressed to the Managing Director at the address given in this
Agreement or at any such other address as either party may notify in
writing to the other for this purpose.
14. DISPUTE RESOLUTION
In the event of any dispute or difference between Gemini and Shield
arising under or in connection with the Agreement either during or after
the performance of the Agreement the parties shall use all reasonable
endeavours to resolve the same between themselves failing which either
party shall be entitled to exercise any remedy available to it in terms of
this Agreement or at law or otherwise.
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15. CONFIDENTIAL INFORMATION
15.1 Pursuant to the Agreement Gemini shall disclose and deliver to Shield
information which Gemini considers is of a confidential nature relating to
the concept, idea and design of the Product and associated products and
the clinical testing of the Co11A1 polymorphisms hereinafter collectively
referred to as "the Confidential Information" which expression shall
include but not be limited to any information, data, material and the like
of a confidential or secret nature disclosed by Gemini to Shield in
contemplation of furtherance of or arising from this Agreement or
otherwise all of which are regarded by Gemini as commercial assets of
considerable value. Shield undertakes to treat any and all of the
Confidential Information as strictly confidential and not to divulge it to
any third party for any purpose whatsoever and not to make use of the
Confidential Information or any part thereof other than in fulfilling the
obligations incumbent upon it in terms of the Agreement without the prior
written consent of Gemini.
15.2 The provisions of this Clause 15 shall not apply to:
a. Information which is in the public domain as at the effective date;
b. Information which comes into the public domain other than as a
result of breach by Shield of the obligations herein contained;
c. Information which was in the possession of Shield as at the
effective date and received from a third party which was under no
obligation of confidentiality in respect of disclosure;
d. Information which Shield is required to disclose by law or in
connection with any application for a product license or approval
for the product in any part of the territory.
15.4 Shield confirms that it shall treat as confidential and keep strictly
confidential and not divulge to any third party whatsoever, or make use
of, except in the performance of its obligations under this Agreement or
in performance of its statutory duties.
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16. FORCE MAJEURE
Failure of either party to perform the terms of the Agreement in whole or
in part shall be excused if such failure is the result of Force Majeure
and Acts of God including but not limited to flood, wind and lighting,
acts of the public enemy, epidemics and laws, regulations or restriction
of any Governmental entity or agency. If performance of this Agreement is
excused pursuant to the foregoing sentence the party thus excused shall
use reasonable efforts to avoid, remove and correct the circumstances
which caused the failure to perform and the party excused from such
performance shall resume performance with the utmost dispatch when such
circumstance(s) is (are) avoided, removed or corrected.
17. ENTIRE AGREEMENT
1. The terms of this Agreement will constitute the entire understanding
and agreement between the parties and no amendment will be made to
the Agreement except in writing and agreed by both parties.
2. In the event that any of these terms, conditions or provisions shall
be determined by the competent authority to be invalid, unlawful or
unenforceable to any extent, such term, condition or provision
shall to that extent be severed from the remaining terms, conditions
or provisions which shall continue to be valid to the full extent
permitted by law.
18. ENGLISH LAW
This Agreement shall be construed in accordance with the English Law and
the parties hereby submit to the exclusive jurisdiction of the English
Courts: IN WITNESS WHEREOF these presents typewritten on this and the
preceding nine (9) pages are executed as follows:
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At on the day of Nineteen hundred and ninety nine
On behalf of Gemini: Witnessed by:
Signed by /s/ Neil [ILLEGIBLE] Signed by /s/ RM [ILLEGIBLE]
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Print Name NEIL [ILLEGIBLE] Print Name RM [ILLEGIBLE]
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Designation FINANCE DIRECTOR Designation COMPANY SECRETARY
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30th March 1999 30th March 1999
On behalf of Shield: Witnessed by:
Signed by /s/ D.P. Foster Signed by /s/ James [ILLEGIBLE]
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Print Name DR PETER FOSTER Print Name JAMES [ILLEGIBLE]
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Designation TECHNICAL DIRECTOR Designation [ILLEGIBLE]
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26th March 1999 26th March 1999
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