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EXHIBIT 10.11
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
LICENSE AGREEMENT
This Agreement is made and entered into between the President and Fellows
of Harvard College (hereinafter HARVARD) having offices at the Office for
Technology and Trademark Licensing, 124 Mt. Auburn Street, Suite 410 South,
Cambridge, Massachusetts, 02138 and Amersham Pharmacia Biotech Inc (hereinafter
LICENSEE), a corporation of Delaware having offices at 800 Centennial Avenue,
Piscataway, New Jersey 08855-1327. This Agreement consolidates, and supersedes
and replaces the License Agreements entered into by the parties on or about
October 1, 1986, September 1, 1988 and November 30, 1994. In the case of doubt
the terms of this Agreement shall govern.
Whereas HARVARD is Owner by assignment from Stanley Tabor and Charles C.
Richardson of their entire right, title and interest in United States Patent
Application Serial No. 003,227 filed January 14, 1987 (HU Case no. 334), from
Stanley Tabor and Charles C. Richardson of their entire right, title and
interest in United States Patent Application Serial No. 218,103 filed July 12,
1988 (HU Case no. 483), from Stanley Tabor and Charles C. Richardson of their
entire right, title and interest in United States Patent Application Serial
324,437 filed October 17, 1994, (H.U. Case no 1077-94), the foreign patent
applications corresponding thereto, and in the inventions described and claimed
therein and listed in Appendix A; and
Whereas HARVARD is committed to policy that ideas or creative works
produced at HARVARD should be used for the greatest possible public benefit; and
Whereas HARVARD accordingly believes that every reasonable incentive
should be provided for the prompt introduction of such ideas into public use,
all in a manner consistent with the public interest; and
Whereas LICENSEE is desirous of obtaining an exclusive world-wide license
in order to practice the above referenced invention covered by PATENT RIGHTS in
the United States and in certain foreign countries, and to manufacture, use and
sell in the commercial market the products made in accordance therewith; and
Whereas HARVARD is desirous of granting such a license to LICENSEE in
accordance with the terms of this Agreement.
Now therefore, in consideration of the foregoing premises, the parties
agree as follows:
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ARTICLE I
DEFINITIONS
1.1 AFFILIATES shall mean any entity that directly or indirectly, through one
or more intermediaries, controls, is controlled by or is under common
control with a party to this Agreement, or where a party to this Agreement
and another corporation are controlled by the same entity. For the purposes
of this definition, control means the direct or indirect ownership of at
least fifty percent (50%) (or such lesser percentage representing the
maximum allowed to be owned by a foreign corporation in a particular
jurisdiction) of (a) the outstanding voting securities of such entity or
(b) the voting power of such entity. Unless otherwise, specified the term
LICENSEE includes AFFILIATES.
1.2 LICENSED PRODUCTS shall mean products claimed in PATENT RIGHTS or products
made in accordance with or by means of LICENSED PROCESSES. LICENSED
PRODUCTS shall include kits incorporating LICENSED PRODUCTS.
1.3 LICENSED PROCESSES shall mean the processes claimed in PATENT RIGHTS.
1.4 NET SALES shall mean the amount billed or invoiced on sales of LICENSED
PRODUCTS or LICENSED PROCESSES less:
(a) Customary trade, quantity or cash discounts and non-affiliated
brokers' or agents' commissions actually allowed and taken;
(b) Amounts repaid or credited by reason of rejection or return; and/or
(c) To the extent separately stated on purchase orders, invoices or other
documents of sale, taxes levied on and/or other governmental charges
made as to the production, sale, transportation, delivery or use and
paid by or on behalf of LICENSEE.
1.5 PATENT RIGHTS shall mean United States Patent Application Serial Numbers:
003,227 filed January 14, 1987 (HU Case no. 334) 218,103 filed July 12,
1988 (HU Case no. 483) 324,437 filed October 17, 1994 (HU Case no. 1077)
the inventions described and claimed therein, and any divisions,
continuations, continuations-in-part or re-issues thereof to the extent the
claims are directed to subject matter specifically described in the
foregoing patent applications and are dominated by the claims thereof; and
any and all foreign patents and patent applications corresponding thereto,
as well as such other patents or patent applications as are listed in
Appendix A. Appendix A shall be updated from time to time by the parties to
reflect the then pending applications and issued patents included in PATENT
RIGHTS.
1.6 SUBLICENSE INCOME shall mean the total consideration, including but not
limited to sublicense option or issue fees, maintenance fees, milestone
payments and royalty
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payments received in cash or in kind, from the sublicensing of other
companies to practice, teach or use PATENT RIGHTS in the course of
manufacture, sale or distribution of the LICENSED PRODUCTS or LICENSED
PROCESSES.
1.7 TECHNOLOGY shall mean any and all information, biological materials or
PATENT RIGHTS supplied by HARVARD to LICENSEE.
1.8 USB shall mean USB Corporation, a corporation organized under the laws of
Ohio and having its principal offices at 26111 Miles Road, Warrenville
Heights, Ohio 44128. For the purposes of calculating royalties due to
Harvard under Article III of this Agreement, sales by USB shall be treated
as sales by an AFFILIATE.
1.9 The terms "Public Law 96-517" and "Public Law 98-620" include all
amendments to those statutes.
1.10 The terms "sold" and "sell" include, without limitation, leases and other
transfers and similar transactions.
ARTICLE II
GRANT
2.1 HARVARD hereby grants to LICENSEE and LICENSEE accepts, subject to the
terms and conditions hereof, a worldwide license under PATENT RIGHTS, with the
right to sublicense, to make and have made, to use and have used, to sell and
have sold, to import and have imported the LICENSED PRODUCTS, and to practice
the LICENSED PROCESSES, for the duration of the PATENT RIGHTS. In order to
provide LICENSEE with a period of exclusivity, HARVARD agrees it will not grant
licenses to others except as permitted in paragraphs 2.2(a), 2.2(b) and 2.3.
LICENSEE agrees during the period of exclusivity of this license in the United
States that any LICENSED PRODUCTS produced for sale in the United States will be
manufactured substantially in the United States unless a waiver is granted by
the Federal Agency under whose funding agreement the invention was made as
provided in Public Law 96-517, Section 204.
2.2 The granting and acceptance of this license is subject to the following
conditions:
(a) HARVARD's "Statement of Policy in Regard to Inventions, Patents and
Copyrights" dated August 10, 1998, Public Law 96-517, Public Law
98-620 and HARVARD's obligations under agreements with other sponsors
of research. Any right granted in this Agreement greater than that
permitted under Public Law 96-517 or Public Law 98-620 shall be
subject to modification as may be required to conform to the
provisions of that statute.
(b) HARVARD shall have the right to make and to use and to grant
non-exclusive licenses to make and to use, for internal research
purposes only and not for any
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
commercial purpose, the subject matter described and claimed in PATENT
RIGHTS.
(c) LICENSEE shall, until the expiration of this Agreement, endeavor to keep
LICENSED PRODUCTS reasonably available to the public.
(d) HARVARD shall have the right to terminate or render this license
non-exclusive at any time if, in HARVARD's reasonable judgment, LICENSEE:
(i) has not put the licensed subject matter into commercial use in the
country or countries where licensed, directly or through a
sublicense, and is not keeping the licensed subject matter reasonably
available to the public, or
(ii) is not demonstrably engaged in ongoing development, manufacturing,
marketing or licensing program, as appropriate, directed toward this
end.
In making this determination HARVARD shall take into account the normal
course of such programs conducted with sound and reasonable business
practices and judgment and shall take into account the reports provided
hereunder by LICENSEE.
(e) LICENSEE has granted a sublicense under PATENT RIGHTS to [*]
respectively, for worldwide rights to make and have made, to use and have
used, to sell and have sold, to import and have imported the LICENSED
PRODUCTS, and to practice the LICENSED PROCESSES, for the duration of the
PATENT RIGHTS, in the area of manual sequencing products and processes. A
copy of the sublicense agreement with [*] is attached to this Agreement as
Appendix B.
(f) All sublicenses granted by LICENSEE hereunder shall include a requirement
that the sublicensee use its best efforts to bring the subject matter of
the sublicense into commercial use as quickly as is reasonably possible and
shall bind the sublicensee to meet LICENSEE's obligations to HARVARD under
this Agreement. [*] Copies of all sublicense agreements shall be
provided to HARVARD.
(g) [*]
2.3 All rights reserved to the United States Government and others under Public
Law 96-517 and 98-620 shall remain and shall in no way be affected by this
Agreement
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
ARTICLE III
ROYALTIES
3.1 LICENSEE has paid to HARVARD the license fees stipulated in the License
Agreements entered into by the parties on or about October 1, 1986,
September 1, 1988 and November 30, 1994. LICENSEE has also agreed to make
an additional payment of [*] LICENSEE will make this payment on or before
March 1, 2000 [*]
3.2 LICENSEE shall pay to HARVARD during the term of this Agreement a royalty
of [*] percent ([*]%) of NET SALES by LICENSEE and AFFILIATES, by USB
under the sublicense referenced in Appendix B, or by future sublicensees.
Payments on NET SALES under existing sublicenses to ABD and Roche shall be
governed by paragraph 3.3.
(a) On sales between LICENSEE and its AFFILIATES or sublicensees for
resale, the royalty shall be paid on the resale to a bona fide third
party.
(b) Only one royalty shall be due and payable for a LICENSED PRODUCT and
use thereof irrespective of the number of patents included within
PATENT RIGHTS which are applicable to such LICENSED PRODUCT provided
that said royalty shall be the highest applicable royalty.
(c) [*]
(d) If the license pursuant to the Agreement is converted to a
non-exclusive one and if other non-exclusive licenses in the same
field and territory are granted, the above royalties shall not exceed
the royalty rate to be paid by other licensees in the same field and
territory during the term of the non-exclusive license.
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
3.3 For existing sublicenses with [*] and [*], LICENSEE shall pay to HARVARD
[*] percent ([*]%) of SUBLICENSE INCOME received by LICENSEE from
sublicensees.
3.4 To the extent any sales of LICENSED PRODUCTS are made to the Government of
the United States of America by LICENSEE or its AFFILIATES or sublicensees
under a contract requiring a discounted or fixed price in which the
Government invokes its royalty-free license, no royalty shall be payable
hereunder to HARVARD for such sales.
3.5 In the event that the royalties paid to HARVARD are so significant a factor
in the return realized by LICENSEE as to diminish LICENSEE's capability to
respond to competitive pressures in the market, HARVARD agrees to consider
a reasonable reduction in the royalty paid to HARVARD as to each LICENSED
PRODUCT for the period during which such market condition exists. Factors
determining the size of the reduction will include profit margin on
LICENSED PRODUCTS and on analogous products, prices of competitive
products, total prior sales by LICENSEE, and LICENSEE's expenditures on
LICENSED PRODUCT development.
ARTICLE IV
REPORTING
4.1 LICENSEE shall provide written annual reports within sixty (60) days after
June 30 of each calendar year which shall include but not be limited to:
reports of progress on research and development, regulatory approvals,
manufacturing, sublicensing, marketing and sales during the preceding
twelve (12) months as well as plans for the coming year.
4.2 LICENSEE shall report to HARVARD the date of the first sale of LICENSED
PRODUCTS (or results of LICENSED PROCESSES) in each country within thirty
(30) days of occurrence.
4.3 (a) LICENSEE agrees to submit to HARVARD within sixty (60) days after the
calendar half years ending June 30 and December 31 reports setting forth
for the preceding six (6) month period:
(i) the number of LICENSED PRODUCTS sold by LICENSEE, its AFFILIATES and
sublicensees in each country;
(ii) total billings for such LICENSED PRODUCTS;
(iii) an accounting for all LICENSED PROCESSES used or sold;
(iv) deductions applicable to determine the NET SALES thereof;
(v) the amount of SUBLICENSE INCOME received by LICENSEE; and
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(vi) the amount of royalty due thereon, or, if no royalties are due to
HARVARD for any reporting period, the statement that no royalties are
due.
Such report shall be certified as correct by an officer of LICENSEE and
shall include a detailed listing of all deductions from royalties.
(b) LICENSEE shall pay to HARVARD with each such Royalty Report the
amount of royalty due with respect to such half year. Since multiple
technologies are covered by the license granted hereunder, LICENSEE
shall specify which PATENT RIGHTS or family of patents within PATENT
RIGHTS are utilized for each LICENSED PRODUCT and LICENSED PROCESS
included in the Royalty Report.
(c) All royalties due hereunder shall be payable in United States
dollars. Conversion of foreign currency to U.S. dollars shall be
made at the prevailing conversion rate existing in the United States
shown in the New York Times on the last business day of the reporting
period. All such reports shall be maintained in confidence by
HARVARD, except as required by law, including Public Law 96-517 and
98-620, and provided also that HARVARD may include in its usual
reports total annual amounts of royalties paid. Late payment of
royalties shall be subject to an interest charge of one and one half
per cent (1 1/2%) per month of the outstanding sum.
ARTICLE V
RECORD KEEPING
5.1 LICENSEE shall keep, and shall require its AFFILIATES and sublicensees to
keep accurate and correct records of LICENSED PRODUCTS or LICENSED
PROCESSES made, used or sold under this Agreement, appropriate to determine
the amount of royalties due hereunder to HARVARD. Such records shall be
retained for at least three (3) years following a given reporting period.
They shall be available during normal business hours for inspection at the
expense of HARVARD by HARVARD's Internal Audit Department or by a Certified
Public Accountant selected by HARVARD and approved by LICENSEE for the sole
purpose of verifying reports and payments hereunder. Such accountant shall
not disclose to HARVARD any information other than information relating to
accuracy of reports and payments made under this Agreement. In the event
that any such inspection shows an under reporting and underpayment in
excess of five percent (5%) for any twelve (12) month period, then LICENSEE
shall pay the cost of such examination as well as any additional sum that
would have been payable to HARVARD had the LICENSEE reported correctly,
plus interest.
ARTICLE VI
DOMESTIC AND FOREIGN PATENT FILING AND MAINTENANCE
6.1 LICENSEE shall reimburse HARVARD for all reasonable expenses HARVARD has
incurred for the preparation, filing, prosecution and maintenance of PATENT
RIGHTS
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and shall reimburse HARVARD for all such future expenses upon receipt of
invoices from HARVARD. Late payment of these invoices shall be subject to
interest charges of one and one-half percent (1 1/2%) per month. HARVARD
shall, in its sole discretion, be responsible for the preparation, filing,
prosecution and maintenance of any and all patent applications and patents
included in PATENT RIGHTS. HARVARD shall consult with LICENSEE as to the
preparation, filing, prosecution and maintenance of such patent
applications and patents and shall furnish to LICENSEE copies of documents
relevant to any such preparation, filing, prosecution or maintenance.
6.2 HARVARD and LICENSEE shall cooperate fully in the preparation, filing,
prosecution and maintenance of PATENT RIGHTS and of all patents and patent
applications licensed to LICENSEE hereunder, executing all papers and
instruments or requiring members of HARVARD to execute such papers and
instruments so as to enable HARVARD to apply for, to prosecute and to
maintain patent applications and patents in HARVARD's name in designated
territories, as listed in Appendix A. Designated territories may be added
or deleted, and Appendix A accordingly modified, by written mutual consent
of HARVARD and LICENSEE. Each party shall provide to the other prompt
notice as to all matters which come to its attention and which may affect
the preparation, filing, prosecution or maintenance of any such patent
applications or patents.
6.3 LICENSEE may elect to surrender its PATENT RIGHTS in any country upon sixty
(60) days written notice to HARVARD. Such notice shall not relieve LICENSEE
from responsibility to reimburse HARVARD for patent-related expenses
incurred prior to the expiration of the (60)-day notice period (or such
longer period specified in LICENSEE's notice).
ARTICLE VII
INFRINGEMENT
7.1 With respect to any PATENT RIGHTS under which LICENSEE is exclusively
licensed pursuant to this Agreement, LICENSEE shall have the right to
prosecute in its own name and at its own expense any infringement of such
patent, so long as such license is exclusive at the time of the
commencement of such action. HARVARD agrees to notify LICENSEE promptly of
each infringement of such patents of which HARVARD is or becomes aware.
Before LICENSEE commences an action with respect to any infringement of
such patents, LICENSEE shall give careful consideration to the views of
HARVARD and to potential effects on the public interest in making its
decision whether or not to sue.
7.2 If LICENSEE or its sublicensee elects to commence an action as described
above and HARVARD is a legally indispensable party to such action, HARVARD
shall have the right to assign to LICENSEE all of HARVARD's right, title
and interest in each patent which is a part of the PATENT RIGHTS and is the
subject of such action (subject to all HARVARD's obligations to the
government and others having rights in such patent). In the event that
HARVARD makes such an assignment, such assignment shall be irrevocable, and
such action by LICENSEE on that patent or patents shall thereafter be
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
brought or continued without HARVARD as a party, if HARVARD is no
longer an indispensable party. Notwithstanding any such assignment to
LICENSEE by HARVARD and regardless of whether HARVARD is or is not an
indispensable party, HARVARD shall cooperate fully with LICENSEE in
connection with any such action. In the event that any patent is
assigned to LICENSEE by HARVARD, pursuant to this paragraph, such
assignment shall require LICENSEE to continue to meet its obligations
under this Agreement as if the assigned patent or patent application
were still licensed to LICENSEE.
7.3 If LICENSEE elects to commence an action described above and HARVARD
is a legally indispensable party to such action, HARVARD may join the
action as a co-plaintiff. Upon doing so, HARVARD shall jointly
control the action with LICENSEE.
7.4 LICENSEE shall reimburse HARVARD for any costs it incurs as part of
an action brought by LICENSEE, irrespective of whether HARVARD shall
become a co-plaintiff.
7.5 [*]
7.6 No settlement, consent judgment or other voluntary final disposition
of the suit may be entered into without the consent of HARVARD, which
consent shall not be unreasonably withheld.
7.7 [*]
7.8 In the event that LICENSEE and its sublicensee, if any, elect not to
exercise their right to prosecute an infringement of the PATENT
RIGHTS pursuant to the above paragraphs, HARVARD may do so at its own
expense, controlling such action and retaining all recoveries
therefrom.
7.9 Without limiting the generality of paragraph 7.8, HARVARD may, at its
election and by notice to LICENSEE, establish a time limit of sixty
(60) days for LICENSEE to decide whether to prosecute any
infringement of which HARVARD is or becomes aware. If, by the end of
such sixty (60)-day period, LICENSEE has not commenced such an
action, HARVARD may prosecute such an infringement at its own expense,
controlling such action and retaining all recoveries therefrom. With
respect to any such infringement action prosecuted by HARVARD in good
faith, LICENSEE shall pay over to Harvard any payments (whether or
not designated as "royalties") made by the alleged infringer to
LICENSEE under any existing or future sublicense authorizing LICENSED
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PRODUCTS, up to the amount of HARVARD'S unreimbursed litigation expenses
(including, but not limited to, reasonable attorneys' fees).
7.10 If a declaratory judgment action alleging invalidity of any of the PATENT
RIGHTS shall be brought against LICENSEE or HARVARD, then HARVARD, at its
sole option, shall have the right to intervene and take over the sole
defense of the action at its own expense.
ARTICLE VIII
TERMINATION OF AGREEMENT
8.1 This Agreement, unless extended or terminated as provided herein, shall
remain in effect until the last patent or patent application in PATENT
RIGHTS has expired or been abandoned.
8.2 In the event LICENSEE fails to make payments due hereunder, HARVARD shall
have the right to terminate this Agreement upon thirty (30) days written
notice, unless LICENSEE makes such payments plus interest within the
thirty (30) day notice period. If payments are not so made, HARVARD may
immediately terminate this Agreement.
8.3 In the event that LICENSEE shall be in default in the performance of any
obligation under this Agreement (other than as provided in 8.2 above which
shall take precedence over any other default), and if the default has not
been remedied within ninety (90) days after the date of notice in writing
of such default, HARVARD may terminate this Agreement immediately by
written notice. If upon receipt of such original notice in writing of such
default LICENSEE believes that such default cannot be remedied within 90
days, LICENSEE may so notify HARVARD in writing and propose a plan and
deadline for remedy, which HARVARD may accept or reject in its sole
discretion. If HARVARD accepts such plan and deadline, and if the default
has not been remedied on or before such deadline, HARVARD may terminate
this Agreement immediately by written notice. If HARVARD rejects such
plan, and such default has not been remedied within ninety (90) days after
the date of such original notice in writing of such default, HARVARD may
terminate this Agreement immediately by written notice.
8.4 In the event that LICENSEE shall become insolvent, shall make an
assignment for the benefit of creditors, or shall have a petition in
bankruptcy filed for or against it, HARVARD shall have the right to
terminate this entire Agreement immediately upon giving LICENSEE written
notice of such termination.
8.5 Any sublicenses granted by LICENSEE under this Agreement shall provide for
termination or assignment to HARVARD, at the option of HARVARD, of
LICENSEE's interest therein upon termination of this Agreement.
8.6 Sections 5.1, 6.1, 7.7, 8.6, 9.2, 9.3, 9.4, 9.7 and 9.8 of this Agreement
shall survive termination.
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ARTICLE IX
GENERAL
9.1 HARVARD represents and warrants that Stanley Tabor and Charles Richardson
have assigned to HARVARD their entire right, title, and interest in the
patent applications or patents comprising the PATENT RIGHTS and that
HARVARD has the authority to issue licenses under said PATENT RIGHTS.
HARVARD does not warrant the validity of the PATENT RIGHTS licensed
hereunder and makes no representations whatsoever with regard to the scope
of the licensed PATENT RIGHTS or that such PATENT RIGHTS may be exploited
by LICENSEE, an AFFILIATE, or sublicensee without infringing other patents.
9.2 HARVARD EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND
MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
ANY PARTICULAR PURPOSE OF THE PATENT RIGHTS OR TECHNOLOGY SUPPLIED BY
HARVARD OR THE LICENSED PROCESSES OR LICENSED PRODUCTS CONTEMPLATED BY THIS
AGREEMENT.
9.3 (a) LICENSEE shall indemnify, defend and hold harmless HARVARD and its
current or former directors, governing board members, trustees,
officers, faculty, medical and professional staff, employees,
students, and agents and their respective successors, heirs and
assigns (the "Indemnitees"), against any liability, damage, loss or
expenses (including reasonable attorneys' fees and expenses of
litigation) incurred by or imposed upon the Indemnitees or any one of
them in connection with any claims, suits, actions, demands or
judgments arising out any theory of product liability (including, but
not limited to, actions in the form of tort, warranty, or strict
liability) concerning any product, process or service made, used or
sold pursuant to any right or license granted under this Agreement,
except to the extent directly attributable to the negligent, reckless
misconduct or intentional misconduct of the Indemnitees.
(b) LICENSEE agrees, at its own expense, to provide attorneys reasonably
acceptable to HARVARD to defend against any actions brought or filed
against any party indemnified hereunder with respect to the subject of
indemnity contained herein, whether or not such actions are rightfully
brought.
(c) Beginning at the time as any such product, process or service is being
commercially distributed or sold (other than for the purpose of
obtaining regulatory approvals) by LICENSEE or by a sublicensee,
AFFILIATE or agent of LICENSEE, LICENSEE shall, at its sole cost and
expense, procure and maintain commercial general liability insurance
in amounts not less than $2,000,000 per incident and $2,000,000
annual, aggregate. During clinical trials of any such product, process
or service, LICENSEE shall, at its sole cost and expense, procure and
maintain commercial general liability insurance in such equal or
lesser amount as HARVARD shall require. Such commercial general
liability insurance shall provide (i) product liability coverage
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and (ii) broad form contractual liability coverage for LICENSEE's
indemnification under this Agreement. Within thirty (30) days after
execution of this Agreement, LICENSEE shall provide a commitment to
maintain a self-insurance program which is reasonably satisfactory to
HARVARD and the Risk Management Foundation of the Harvard Medical
Institutions, Inc. The minimum amounts of insurance coverage required
shall not be construed to create a limit of LICENSEE's liability with
respect to its indemnification under this Agreement.
(d) LICENSEE shall provide HARVARD with written evidence of such insurance
upon request of HARVARD. LICENSEE shall provide HARVARD with written
notice at least thirty (30) days prior to the cancellation,
non-renewal or material reduction in such insurance; if LICENSEE does
not obtain replacement insurance providing comparable coverage within
such thirty (30) day period, HARVARD shall have the right to terminate
this Agreement effective at the end of such thirty (30) day period
without notice or any additional waiting periods.
(e) LICENSEE shall maintain such commercial general liability insurance
beyond the expiration or termination of this Agreement during (i) the
period that any product, process, or service, relating to, or
developed pursuant to, this Agreement is being commercially
distributed or sold by LICENSEE or by a sublicensee, AFFILIATE or
agent of LICENSEE and (ii) a reasonable period after the period
referred to in (e) (i) above which in no event shall be less than five
(5) years.
9.4 LICENSEE shall not use HARVARD's name or any adaptation of it or the name
or names of any of HARVARD's investors in any advertising, promotional or
sales literature without the prior written assent of HARVARD.
9.5 Without the prior written approval of HARVARD in each instance, neither
this Agreement nor the rights granted hereunder shall be transferred or
assigned in whole or in part by LICENSEE to any person whether voluntarily
or involuntarily, by operation of law or otherwise, except that LICENSEE
may transfer or assign this Agreement and the rights granted hereunder, in
whole or in part, to an AFFILIATE or to a successor to substantially all of
the business or particular product line for which this Agreement was
entered into, and such succession shall include but not be limited to one
by acquisition, merger, change of corporation name or change in make-up,
organization, or identity. This Agreement shall be binding upon the
respective AFFILIATES, successors, legal representatives and assignees of
HARVARD and LICENSEE.
9.6 The interpretation and application of the provisions of this Agreement
shall be governed by the laws of the Commonwealth of Massachusetts.
9.7 LICENSEE agrees to comply with all applicable laws and regulations. In
particular, it is understood and acknowledged that the transfer of certain
commodities and technical data is subject to United States laws and
regulations controlling the export of such commodities and technical data,
including all Export Administration Regulations of the United States
Department of Commerce. These laws and regulations among other things,
prohibit or require a license for the export of certain types of technical
data to certain specified countries. LICENSEE hereby agrees and gives
written assurance that it
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will comply with all United States laws and regulations controlling the
export of commodities and technical data, that it will be solely
responsible for any violation of such by LICENSEE or its AFFILIATES or
sublicensees, and that it will defend and hold HARVARD harmless in the
event of any legal action of any nature occasioned by such violation.
9.8 LICENSEE agrees to obtain all regulatory approvals required for the
manufacture and sale of LICENSED PRODUCTS and LICENSED PROCESSES and to
utilize appropriate patent marking on such LICENSED PRODUCTS. LICENSEE also
agrees to register or record this Agreement as is required by law or
regulation in any country where the license is in effect.
9.9 Written notices required to be given under this Agreement shall be
addressed as follows:
If to HARVARD: Office for Technology and
Trademark Licensing
Harvard University
1350 Massachusetts Avenue, Holyoke 727
Cambridge, MA 02138
With copies to: Office for Technology Licensing
And Industry-Sponsored Research
Harvard Medical School
Building A, Room 414
25 Shattuck Street
Boston, MA 02115
If to LICENSEE: General Counsel
Amersham Pharmacia Biotech, Inc
800 Centennial Avenue,
Piscataway,
New Jersey 08855-1327
or such other address as either party may request in writing.
9.11 Should a court of competent jurisdiction later consider any provision of
this Agreement to be invalid, illegal, or unenforceable, it shall be
considered severed from this Agreement. All other provisions, rights and
obligations shall continue without regard to the severed provision,
provided that the remaining provisions of this Agreement are in accordance
with the intention of the parties.
9.12 In the event of any controversy or claim arising out of or relating to any
provision of this Agreement or the breach thereof, the parties shall try to
settle such conflicts amicably between themselves. Subject to the
limitation stated in the final sentence of this section, any such conflict
which the parties are unable to resolve shall be settled through
arbitration conducted in accordance with the rules of the American
Arbitration Association. The demand for arbitration shall be filed within a
reasonable time after the controversy or claim has arisen, and in no event
after the date upon which institution of
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legal proceedings based on such controversy or claim would be barred by the
applicable statute of limitation. Such arbitration shall be held in
Boston, Massachusetts. The award through arbitration shall be final and
binding. Either party may enter any such award in a court having
jurisdiction or may make application to such court for judicial acceptance
of the award and an order of enforcement, as the case may be.
Notwithstanding the foregoing, either party may, without recourse to
arbitration, assert against the other party a third-party claim or
cross-claim, in any action brought by a third party, to which the subject
matter of this Agreement may be relevant.
9.13 This Agreement constitutes the entire understanding between the parties and
neither party shall be obligated by any condition or representation other
than those expressly stated herein or as may be subsequently agreed to by
the parties hereto in writing.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives.
The effective date of this Agreement is January 1, 1999.
PRESIDENT AND FELLOWS OF AMERSHAM PHARMACIA BIOTECH INC.
HARVARD COLLEGE
By: /s/ Jeffrey Labovitz, Ph.D. By: /s/ Ron Long
--------------------------- -----------------
Name and Title: Name and Title:
Jeffrey Labovitz, Ph.D. Ron Long
Director Director
Office of Technology Licensing &
Industry Sponsored Research
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