TECHNOLOGY TRANSFER
AGREEMENT
By and among XYZ Technologies and
WWW Group
Limited (collectively "the WWW Wellcome
Companies"),
and YYY, Inc.
1.0
INTRODUCTION
1.1 The parties to
this Agreement are:
XYZ Technologies N.V.
WWW Wellcome
House,
........., ........., ......... ......... UB6 ONN;
(hereinafter referred to as "ATNV")
WWW
Group Limited
WWW Wellcome House
........., ........., ......... ......... UA ONN;
(hereinafter referred to as "WWW")
collectively "the WWW Wellcome
Companies" and
YYY, Inc.
4001 Miranda
Avenue
......... Alto, ......... 94304;
(hereinafter referred to as "YYY")
1.2 The effective
date of this Agreement is
...
2.0
RECITALS
The WWW Wellcome Companies and YYY have entered into a Registration
Rights Agreement, a Securities Purchase Agreement, and
a Stockholder's Agreement
of even date (collectively, the "Stock Agreements") which call
for the issuance
of a total of 5,460,000 shares of YYY Common Stock to one or more of the
WWW Wellcome Companies at
the closing of the transaction in exchange for the
assignment of or license to certain intellectual property from the WWW
Wellcome Companies to YYY. YYY acknowledges that the WWW Wellcome
Companies would not enter into this Agreement but for
the Stock Agreements. This
Agreement is contingent upon closing of the Stock
Agreements and shall become
effective only upon the closing of the last of the Stock Agreements.
________________
* CERTAIN
INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC
INFORMATION
HAS BEEN FILED SEPARATELY WITH THE SEC. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
<PAGE>
NOW,
THEREFORE, in consideration of the premises, covenants, conditions and
Attachments set forth herein, the parties agree as
follows:
3.0
ATTACHMENTS
Schedules A
and B are attached and form part of this Agreement.
4.0
DEFINITIONS
4.1 "Affiliate"
means any entity that directly or indirectly controls, is
controlled by or is under common control with a party to this Agreement. A
corporation or non-corporate business entity shall be regarded as in control of
another corporation if it owns or directly or indirectly controls at least
sixty
percent (60%) of the voting stock of the other company, or (a) in the absence
of
the ownership of at least sixty percent (60%) of the voting stock of a
corporation or (b) in the case of a non-corporate business entity, if it
possesses, directly or indirectly, the power to direct or cause the direction of
the management and policies of such corporation or non-corporate business
entity, as applicable.
Affiliates shall be entitled to exercise all rights of
their respective party
under this Agreement provided that they agree in writing to be bound by the
corresponding obligations hereunder.
4.2 "Agreement"
means this Agreement, fully executed by the parties, to
include without limitation, all Attachments hereto.
4.3 "Associated
Technology" means a body of Confidential Information that
includes trade secrets, know-how, copyrights, and other technical information
reasonably related to the Patents and Applications set forth in Schedules A and
B, whether such information was developed
by the named inventors or others.
4.4 "Confidential
Information" means that information which the WWW
Wellcome Companies and/or YYY desire to protect against unauthorized
disclosure or use and which the disclosing party designates as confidential (i)
in writing, or (ii) orally, prior to any oral disclosure of the
Confidential
Information, and is reduced to tangible form and
provided to the receiving party
pursuant to this Agreement. Confidential Information may include information of
third parties.
4.5 "Derogatable Improvement" shall mean any modification
of the
Derogatable Technology that is invented or developed by YYY prior to the
earlier of (i) five years from the closing of this
transaction or (ii) upon the
closing of an underwritten public offering of shares of YYY under which not
less than $10 million in gross proceeds is provided to the Company and
described
in a
modification, if unlicensed, would infringe one or more of the
claims of the
Licensed Patents and Applications.
<PAGE>
4.6 "Derogatable Technology" shall include all
compositions, reagents, and
methods described in the Licensed Patents and Applications, excluding only
Licensed Technology and Designated Technology.
Notwithstanding the foregoing,
"Derogatable
Technology" shall not include any Derogated Technology. Derogatable
Technology includes, but is not limited to:
(1) gene therapy,
including the optimization of vectors, such as HSV,
HIV,
retroviral, adenoviral, and adeno-associated vectors
naked DNA
vectors, and protein-coated vectors; and transgenes;
(2) vaccines, including
live, dead, and attenuated bacterial vaccines;
live, dead, attenuated, subunit, and recombinant protein and
peptide
viral vaccines; DNA vaccines; and diverse vectors;
(3) cell therapy,
including cells expressing therapeutic transgenes,
protein, pharmaceuticals, and hormones;
(4) protein
pharmaceuticals, including enzymes, cytokines, growth
factors, hormones, novel agonists and novel antagonists; and
(5) antibody
pharmaceuticals, including whole IgGs and IgMs, Fabs, and
Fvs.
4.7 "Derogated
Technology" shall mean any Derogatable
Technology
specifically encompassed within a collaborative research project
that YYY
has proposed to the WWW Wellcome Companies and
upon which the WWW Wellcome
Companies has declined to pursue a collaborative
research project with YYY
or upon which the parties have failed to negotiate a mutually satisfactory
agreement within the stipulated time period, provided, that YYY has entered
into a research collaboration with a third party on such Derogated
Technology on
terms involving comparable scope and financial parameters as those proposed
to
the WWW Wellcome Companies within twelve (12)
months of WWW Wellcome
declining to participate in the project. "Derogated Technology" shall
also refer
to any Derogatable Technology specifically
encompassed within a collaborative
research project between YYY and a third party, wherein the third party
initially proposed, in confidence, the collaboration to YYY.
4.8
"Designated Technology" shall refer to the process of Shuffling as
practiced with mammalian or other eukaryotic cells using the compositions,
reagents, and methods described in the Licensed Patents and Applications in the
field of human pharmaceuticals; provided, however, that the proteins, RNAs, or
DNAs generated from such a process can be further manipulated, screened,
selected, or used in other hosts. Designated Technology shall include
(1) the Shuffling of
proteins for development of assays for drug discovery
and optimization, such as proteins that can be used
generically in
various assay formats as well as proteins for use in
specific assays
with specific classes of targets, including modified ligands, modified
receptors, and modified proteins in signal transduction; and
(2) the Shuffling of
proteins for validation of drug discovery targets,
such as antibodies, proteins that interfere with a pathway
or process,
and other binding proteins.
Designated Technology shall not include:
(1) the Shuffling of
proteins, peptides, DNAs, and RNAs
to be used as
human pharmaceuticals;
<PAGE>
(2) generic assay
technology for screening and selection; as well as
product-specific assay technology for screening and
selection; and
(3) the Shuffling of
viral sequences or mammalian plasmids or sequences
used for gene therapy or vaccines, or fragments or
precursors thereof.
4.9 ".........
Patent" shall mean U.S. Patent No. ..........
4.10
"Internal Research Purposes" shall mean that the Licensed Technology
and Licensed Improvements will not be used in specific research that is
directly
subject to consulting or licensing obligations to a non-profit institution
(other than the .........
States Government) or to another for profit institution,
corporation or business entity unless written permission is obtained from the
owner of such Licensed Technology or Licensed Improvement, provided, however,
that the parties shall be free to use the Licensed Technology and Licensed
Improvements in furtherance of their own [*******] and
the commercial marketing
of their products.
4.11
"Licensed Improvements" shall mean any modification of the Licensed
Technology related to the processes of generating
molecular diversity within,
on, or secreted from [*******], provided (1) that such modification is
invented
or developed by YYY or the WWW Wellcome
Companies prior to the earlier of
(i) five years from the
closing of this transaction or (ii) upon the closing of
an underwritten public offering of shares of YYY under which not less than
$10 million in gross proceeds is provided to the
Company and described in a
or foreign patent or patent application and (2) that such modification, if
unlicensed, would infringe one or more of the claims of the Licensed Patents and
Applications.
4.12
"Licensed Technology" shall refer to the process of Shuffling of
proteins, RNAs, or DNAs as
practiced in [*******] using the compositions,
reagents, and methods described in the Licensed Patents and Applications in the
field of [*******]; provided, however, that the proteins, RNAs,
or DNAs
generated from such a process can be further manipulated, screened, selected, or
used in other hosts.
Licensed Technology includes but is not limited to:
(1) the Shuffling of proteins
for [*******];
(2) the Shuffling of
proteins for [*******];
(3) the Shuffling of
[*******];
(4) the Shuffling of
proteins, RNAs, or DNAs
[*******] and the subsequent
screening and selection of the modified RNAs
or DNAs in other cells
for [*******] purposes; and
<PAGE>
(5) the Shuffling of
proteins, DNAs, and RNAs
for Internal Research
Purposes only.
Licensed
Technology shall not include:
(1) the Shuffling of
proteins, peptides, DNAs, and RNAs
to be used as
[*******];
(2) generic assay
technology for [*******], as well as product-specific
assay technology for [*******]; and
(3) the Shuffling of
proteins, RNAs, or DNAs
[*******] using the
compositions, reagents, and methods described in the
Licensed Patents
and Applications.
4.13
Licensed Patents and Applications" are as defined in Schedule A.
4.14
"Patent," "Patents," "Patent Applications" or
"Patents and
Applications" refer to issued U.S. Patents,
pending and abandoned
applications, to any division, renewal, continuation in whole or
in part,
substitution, conversions, reissue, prolongation or extension
thereof, to all
foreign counterparts (including patent, utility model, and industrial designs),
and to any Letters Patent and Registrations which may hereafter be granted
on
any of the foregoing in the ......... States and all countries throughout
the
world.
4.15
"Peptides-on-Plasmids Display Patents and Applications" refer to the
Patents and Applications set forth in the attached
Schedule B.
4.16
"Phage Display Patents and Applications" refer to the Patents and
Applications set forth in the attached Schedule B.
4.17 "Polysome Display Patents and Applications" refer to
the Patents and
Applications set forth in the attached Schedule B.
4.18
"Receptor Immobilization Patent Application" refer to the Patents and
Applications set forth in the attached Schedule B.
4.19
"Shuffling" shall mean the totality of the reiterative process of
gene
fragmentation; reassembly; amplification, if necessary;
transformation; and
screening or selection described in the Licensed Patents and Applications.
5.0
TRANSFERS
5.1 ASSIGNMENT OF
PATENTS AND ASSOCIATED TECHNOLOGY
<PAGE>
5.1.1 For good and
valuable consideration, receipt of which is
acknowledged by the WWW Wellcome
Companies, the WWW Wellcome Companies agree
to assign and hereby assign to YYY all right, title, and interest in and
to
the Licensed Patents and Applications, including the right to claim the
priority
from the Patents and Applications as provided by the
the Associated Technology, subject to any outstanding licenses or other
rights
provided to Affymetrix under the XYZ/Affymetrix Technology Transfer
Agreement by and among XYZ N.V., XYZ Technologies,
N.V., XYZ
Research Institute, WWW Group Limited, and Affymetrix, Inc., effective date,
to these Patents and Applications is to be held and enjoyed by YYY and
YYY's successors and assigns as fully and exclusively as it would have been
held and enjoyed by the WWW Wellcome Companies had
this assignment not been
made, for the full term of any Letters Patent and Registrations which may be
granted thereon.
5.2 LICENSE OF
PATENTS
5.2.1 The WWW Wellcome Companies hereby grant YYY, a perpetual,
worldwide, royalty-free, non-exclusive license without the right to sublicense,
to Peptides-on-Plasmids Display Patents and Applications, Polysome Display
Patents and Applications, Phage Display Patents and
Applications, the .........
Patent, and Receptor Immobilization Patent
Application. YYY agrees that use
of these patents and applications shall be restricted to [*******].
5.3 LICENSED
TECHNOLOGY AND LICENSED IMPROVEMENTS
5.3.1 Grant to the
WWW Wellcome Companies
5.3.1.1 YYY hereby grants and agrees to grant the WWW
Wellcome Companies a perpetual, worldwide, royalty-free, non-exclusive license,
with the right to sublicense Affiliates only, under the Licensed Patents and
Applications and Associated Technology to make, have made and use Licensed
Technology for Internal Research Purposes
only.
5.3.1.2 YYY hereby grants and agrees to grant the WWW
Wellcome Companies a perpetual, worldwide, royalty-free, non-exclusive license,
with the right to sublicense Affiliates only, to make, have made, and use
Licensed Improvements for Internal
Research Purposes only.
5.3.1.3 Notwithstanding the foregoing, if any Licensed
Improvement is derived from a
collaboration between YYY and an independent
third party, whereby YYY does not have the right to license such Licensed
Improvement outside
<PAGE>
of the collaboration, then YYY shall have no obligation to license or
otherwise make available such Improvement to the WWW Wellcome
Companies.
5.3.1.4 YYY hereby grants and agrees to grant the WWW
Wellcome Companies a perpetual, worldwide, royalty-free, non-exclusive license,
with the right to sublicense Affiliates only, under the Licensed Patents and
Applications, to make, have made, and use the
[*******] for Internal Research
Purposes only.
5.3.1.5 Upon the request of the WWW Wellcome Companies,
YYY shall grant a license to an Affiliate of the WWW Wellcome Companies
upon the terms set forth herein provided that the WWW Wellcome
Companies shall
guarantee the performance of such licensee.
5.4.1 Grant to YYY
5.4.1.1 The WWW Wellcome Companies hereby
grant and agree to
grant the YYY a perpetual, worldwide, royalty-free, non-exclusive license,
without the right to sublicense, to make, have made and use Licensed
Improvements for Internal Research
Purposes only.
5.4.1.2 Notwithstanding the foregoing, if any Licensed
Improvement is derived from a
collaboration between any of the WWW Wellcome
Companies and an independent third party, whereby such
WWW Wellcome Company
does not have the right to license such Licensed Improvement outside of the
collaboration, then the WWW Wellcome
Companies shall have no obligation to
license or otherwise make available such Improvement to YYY.
5.5 RIGHT OF FIRST
NEGOTIATION FOR LICENSED TECHNOLOGY AND LICENSED
IMPROVEMENTS
5.5.1
YYY grants and agrees to grant the WWW Wellcome
Companies
a right of first negotiation for any collaborative project to develop
Licensed
Technology and Licensed Improvements in
the field of human pharmaceuticals.
Notwithstanding the foregoing, this right of first
negotiation shall not extend
to collaborative projects proposed by third parties in confidence to YYY.
This right will terminate upon the earlier of five
years from the closing of the
transaction or upon an underwritten public offering of shares of YYY under
which not less than $10 million in gross proceeds is provided to the Company.
This proposal for a collaborative research project
shall include, at a minimum,
a description of the scope of the research, the financial parameters of
the
project, and the required nonfinancial contributions
of the collaborator.
<PAGE>
5.5.2 If the WWW Wellcome Companies wish to pursue such a
collaborative project with YYY, then the WWW Wellcome
Companies and
YYY agree that the parties will diligently and in good
faith, negotiate the
terms and conditions of a collaborative research agreement and shall make a
good
faith effort to conclude such license agreement within five months of
receipt of the YYY proposal by the WWW Wellcome
Companies. If the WWW
Wellcome Companies decide not to pursue such a collaborative project, then they
shall promptly inform YYY of such a decision.
5.5.3 In the event
that the WWW, Wellcome Companies decide not to
pursue a proposal of YYY as contemplated above or that the parties are
unable to negotiate a mutually satisfactory agreement within five months of
receipt of the YYY proposal by the WWW Wellcome Companies,
YYY shall
be free to seek a third party sponsor of the project. If YYY enters into a
research collaboration with a third party on terms involving, comparable scope
and financial parameters as those proposed to the WWW Wellcome
Companies
within twelve months of the WWW Wellcome Companies
declining to participate
in the project or the failure of the parties to negotiate a mutually
satisfactory agreement within the stipulated time period, then the
WWW
Wellcome Companies right to first negotiation for a collaborative project to
develop the Licensed Technology and Licensed Improvements specifically
encompassed within such proposal shall terminate.
5.5.4
If, however, YYY has not entered into a third party
collaboration on such project within twelve months of the WWW Wellcome
Companies declining to participate in the project or
the failure of the parties
to negotiate a mutually satisfactory agreement within the stipulated time
period, then the WWW Wellcome Companies shall again
have a right of first
negotiation for any collaborative project to develop the Licensed Technology and
Licensed Improvements encompassed within such proposal
and YYY shall be
obligated to present any collaborative project to develop such Licensed
Technology and Licensed Improvements in the field of
human pharmaceuticals to
the WWW Wellcome Companies prior to seeking a
third party partner.
5.5.5 Notwithstanding the foregoing, in the event that YYY enters
into a research collaboration with a third party to Licensed Technology and
Licensed Improvements in the field of human
pharmaceuticals, wherein the third
party initially proposed, in confidence, the collaboration to YYY, then the
WWW Wellcome Companies agree
that the WWW Wellcome Companies right to first
negotiation for a collaborative project to develop the Licensed Technology and
Licensed Improvements specifically encompassed within
such collaboration shall
terminate.
5.6 RIGHT OF FIRST
NEGOTIATION FOR DESIGNATED TECHNOLOGY
5.6.1
YYY will grant the WWW Wellcome Companies a right of
first
negotiation for any collaborative project to develop Designated Technology in
the field of human pharmaceuticals. Notwithstanding the foregoing, this
right of
first negotiation
<PAGE>
shall not extend to collaborative projects proposed by third parties in
confidence to YYY. This right will terminate upon the earlier of five years
from the closing of the transaction or upon an underwritten public offering
of
shares of YYY under which not less than $10 million in gross proceeds is
provided to the Company. This proposal for a collaborative research project
shall include, at a minimum, a description of the scope of the research, the
financial parameters of the project, and the required non-financial
contributions of the collaborator.
5.6.2 If the WWW Wellcome Companies wish to pursue such a
collaborative project with YYY, then the WWW Wellcome
Companies and
YYY agree that the parties will diligently and in good
faith, negotiate the
terms and conditions of a collaborative research agreement and shall make a
good
faith effort to conclude such license agreement within five months of
receipt of the YYY proposal by the WWW Wellcome
Companies. If the WWW
Wellcome Companies decide not to pursue such a collaborative project, then they
shall promptly inform YYY of such a decision.
5.6.3 In the event
that the WWW Wellcome Companies decide not to
pursue a proposal of YYY as contemplated above or that the parties are
unable to negotiate a mutually satisfactory agreement within five months of
receipt of the YYY proposal by the WWW Wellcome
Companies, YYY shall
be free to seek a third party sponsor of the project. If YYY enters into a
research collaboration with a third party on terms involving comparable scope
and financial parameters as those proposed to the WWW Wellcome
Companies
within twelve months of the WWW Wellcome Companies
declining to participate in
the project or the failure of the parties to negotiate a mutually
satisfactory
agreement within the stipulated time period, then the WWW Wellcome
Companies
right to first negotiation for a collaborative project to develop the
Designated
Technology specifically encompassed within such
proposal shall terminate.
5.6.4
If, however, YYY has not entered into a third party
collaboration on such project within twelve months of the WWW Wellcome
Companies declining to participate in the project or
the failure of the parties
to negotiate a mutually satisfactory agreement within the stipulated time
period, then the WWW Wellcome Companies shall again
have a right of first
negotiation for any collaborative project to develop the Designated Technology
encompassed within such proposal and YYY shall be obligated to present any
collaborative project to develop such Designated Technology in the
field of
human pharmaceuticals to the WWW Wellcome Companies
prior to seeking a third
party partner.
5.6.5 Notwithstanding the foregoing, in the event that YYY enters
into a research collaboration with a third party to Designated Technology in
the
field of human pharmaceuticals wherein the third party initially proposed, in
confidence, the collaboration to YYY, then the WWW Wellcome
Companies
agree that the WWW Wellcome Companies right to
first negotiation for a
collaborative project to develop the
<PAGE>
Designated Technology specifically encompassed within
such collaboration shall
terminate.
5.7 RIGHT OF FIRST
NEGOTIATION FOR DEROGATABLE TECHNOLOGY AND DEROGATABLE
IMPROVEMENTS
5.7.1
YYY will grant the WWW Wellcome Companies a right of
first
negotiation for any collaborative project to develop Derogatable
Technology or
Derogatable Improvements in the field of human
pharmaceuticals. Notwithstanding
the foregoing, this right of first negotiation shall not extend to
collaborative
projects proposed by third parties in confidence to YYY. This right will
terminate upon the earlier of five years from the closing of the transaction or
upon an underwritten public offering of shares of YYY under which not less
than $10 million in gross proceeds is provided to the Company. This proposal
for
a collaborative research project shall include, at a minimum, a
description of
the scope of the research, the financial parameters of the project, and the
required nonfinancial contributions of the
collaborator.
5.7.2 If the WWW Wellcome Companies wish to pursue such a
collaborative project with YYY, then the WWW Wellcome
Companies and
YYY agree that the parties will diligently and in good
faith, negotiate the
terms and conditions of a collaborative research agreement and shall make a
good
faith effort to conclude such license agreement within five months of receipt
of
the YYY proposal by the WWW Wellcome Companies.
If the WWW Wellcome
Companies decide not to pursue such a collaborative
project, then they shall
promptly inform YYY of such a decision.
5.7.3 In the event
that the WWW Wellcome Companies decide not to
pursue a proposal of YYY as contemplated above or that the parties are
unable to negotiate a mutually satisfactory agreement within five months of
receipt of the YYY proposal by the WWW Wellcome
Companies, then YYY
shall be free to seek a third party sponsor of the project. If YYY enters
into a research collaboration with a third party on terms involving
comparable
scope and financial parameters as those proposed to the WWW Wellcome Companies
within twelve months of the WWW Wellcome Companies
declining to participate in
the project or the failure of the parties to negotiate a mutually
satisfactory
agreement within the stipulated time period, then the WWW Wellcome
Companies
right to first negotiation for a collaborative project to develop the
Derogatable Technology or Derogatable Improvements
specifically encompassed
within such proposal shall terminate and the Derogatable
Technology and
Derogatable Improvements specifically encompassed within such proposal shall be
deemed Derogated Technology and Derogated Improvements, respectively.
5.7.4 If, however,
YYY has not entered into a third party
collaboration on such project within twelve months of the WWW Wellcome
Companies declining to participate in the project or
the failure of the parties
to negotiate a mutually satisfactory agreement within the stipulated time
period, then such Derogated Technology or
<PAGE>
Derogated Improvements shall again be deemed Derogatable Technology or
Derogatable Improvements, respectively, and the WWW Wellcome
Companies shall
again have a right of first negotiation as set forth above to such Derogatable
Technology and to such Derogatable
Improvements and YYY shall be obligated
to present any collaborative project to develop such Derogatable
Technology and
Derogatable Improvements in the field of human pharmaceuticals to the WWW
Wellcome Companies prior to seeking a third party for a collaborative partner
based on such Derogatable Technology and Derogatable Improvements in the field
of human pharmaceuticals.
5.7.5 Notwithstanding the foregoing, in the event that YYY enters
into a research collaboration with a third party to develop Derogatable
Technology or Derogatable
Improvements in the field of human pharmaceuticals,
wherein the third party initially proposed, in confidence, the collaboration to
YYY, then the WWW Wellcome
Companies agree that the WWW Wellcome
Companies right to first negotiation for a
collaborative project to develop the
Derogatable Technology or Derogatable Improvements
specifically encompassed
within such collaboration shall terminate and the Derogatable
Technology and
Derogatable Improvements specifically encompassed within such collaboration
shall be deemed Derogated Technology and Derogated Improvements,
respectively.
5.7.6 The WWW Wellcome Companies shall have no rights to the
Derogatable Technology and Derogatable Improvements
except as otherwise provided
in this section.
5.8 ASSOCIATED
TECHNOLOGY
Each party
agrees that the other party shall not be prevented from using
any Associated Technology of one party which Associated Technology was
rightfully acquired by the other party under this Technology Transfer Agreement,
provided that such use does not (1) result in improper disclosure or misuse of
Confidential Information or (2) make use of rights to
Patents and Applications
which rights are not expressly provided by this Agreement. Each party further
agrees to maintain such Associated Technology as Confidential Information with
the same degree of care that it exercises with respect to its own
information of
like import, but in no event less than reasonable care.
5.9 TRADEMARKS
5.9.1 For good and
valuable consideration, receipt of which is hereby
acknowledged by the WWW Wellcome
Companies, the WWW Wellcome Companies
hereby assigns to YYY all right, title, and interest to the marks YYY,
SHUFFLING, MOLECULAR BREEDING, and SEXUAL PCR,
including all goodwill associated
therewith. YYY shall be responsible for any and all future expenses
associated with registration and/or prosecution of these marks. The rights of
<PAGE>
YYY at common law and/or to the end of the term or
terms of which
registration of the mark may be granted or renewed are to be enjoyed
by YYY
for YYY's own use and enjoyment, and for the use
and enjoyment of its
successors, assigns and other legal representatives, as fully and entirely as
the same would have been held and enjoyed by the WWW Wellcome
Companies if
this assignment and sale had not been made; including all claims for
royalties
for licensing of the marks provided in this section and damages by reason
of
past infringement(s) of these marks, with the right to sue for and collect
the
same for its own use and benefit, for the use, benefit and on behalf of its
successors, assigns and other legal representatives.
5.10 Except
as expressly provided herein, the licensing, assignment or
other conveyance of rights under this Agreement shall not be construed as
conferring any rights, license or title, express or implied, in or to any
Patents and Applications or Associated
Technology.
6.0
TERM AND TERMINATION
6.1 Term. The term of
this Agreement shall commence on the Effective Date
and shall continue in force until terminated upon the expiration of the
last-to-expire of the Licensed Patents and Applications unless
terminated
earlier as set forth below.
6.2 Termination for
Material Breach. If either party fails to comply with
any of the material terms and conditions of this Agreement, the other party
may
terminate this Agreement upon sixty (60) days' written notice to the defaulting
party specifying any such breach unless within the period of such notice, all
breaches specified therein shall have been remedied, or unless the breach is one
which, by its nature, cannot be fully remedied in sixty (60) days, but the
breaching party has undertaken reasonable, good faith efforts toward remedying
the breach within such sixty (60) days, and continues to use reasonable,
good
faith, and diligent efforts to promptly remedy the breach.
A
material breach includes but is not limited to either party's
failure to comply with the provisions prohibiting disclosure or unauthorized
use
of Confidential Information.
6.3 Effect of
Termination. Upon termination of the Agreement, as provided
in Section 6.2, all licenses granted by the nonbreaching
party to the other
party under this Agreement shall terminate and all other rights granted by
the
nonbreaching party to the other party shall revest
in the nonbreaching party.
6.4 Survival. The
provisions of the following sections and paragraphs
shall survive expiration or termination of this Agreement: Section 4.0
("Definitions"); Paragraph 10.8
("Notices"); Paragraph 6.3 ("Effect of
Termination"); Section 7.0 ("Confidential
Information"); Section 8.0
("Warranties and Disclaimer of Warranties");
and Section 9.0 ("Limitations of
Liability").
<PAGE>
7.0
CONFIDENTIAL INFORMATION
7.1 Restrictions. Each
party will hold in confidence any Confidential
Information received by it from the other and will
protect the confidentiality
of such with the same degree of care that it exercises with respect to its
own
information of like import, but in no event less than reasonable care.
7.2 Exceptions.
Notwithstanding any provisions herein concerning
non-disclosure and non-use of the Confidential Information, the
obligations of
the above Paragraph will not apply to any portion of the Confidential
Information which:
(a) is now or which hereafter through no act or failure to act
on
the part of the receiving party becomes generally known without restriction
on
disclosure;
(b) is hereafter furnished to the receiving party by a third
party
as matter of right without restriction on disclosure;
(c) is independently developed by the receiving party without
the
use of the Confidential Information;
(d) is disclosed to others by the party owning the Confidential
Information without restriction.
(e) is required to be disclosed by the receiving party pursuant
to a
legal, judicial, or administrative procedure, or is otherwise required by
law;
providing the party required to disclose the Confidential Information gives the
party owning the Confidential Information notice of the proposed disclosure
with
sufficient time to seek relief and that such disclosure, if made, is made in a
fashion as to maximize the protection of the information from further
disclosure;
(f) is already known to the receiving party without restriction
on
disclosure; or
(g) is approved for release or use without restriction by
written
authorization of an officer of the party owning the Confidential
Information.
7.3 Advising
Employees and Suspected Violations. Each party will inform
its employees having access to the Confidential Information of such party's
limitations, duties, and obligations regarding non-disclosure and copying of the
Confidential Information and will obtain their
agreement, whether by means of
existing or new agreements, to comply with those limitations, duties, and
obligations. Each party will provide notice to the other party immediately after
learning of, or having reason to suspect, a breach of any of the confidential
restrictions set forth in this section.
<PAGE>
7.4 Independent
Development. Each party understands that the other party
may develop information internally, or receive information from third
parties,
that may be similar to Confidential Information. Accordingly, nothing in
this
Agreement will be construed as a representation or
inference that each party
will not develop or acquire products, for itself or others, that compete
with
the products, systems, or methods contemplated by the other party's
Confidential
Information, provided that the party has not done so
in breach of this
Agreement.
8.0
WARRANTIES AND DISCLAIMER
OF WARRANTY
8.1 Right to Enter
into Agreement. The parties warrant that they have the
right and power to enter into this Agreement and to convey the rights granted
herein.
8.2 DISCLAIMER OF
WARRANTY. EXCEPT AS PROVIDED IN THIS SECTION, NEITHER
PARTY MAKES ANY EXPRESS OR IMPLIED WARRANTIES.
WARRANTIES DISCLAIMED INCLUDE,
BUT ARE NOT LIMITED TO, THE WARRANTIES OF DESIGN,
MERCHANTABILITY, OR FITNESS
FOR A PARTICULAR PURPOSE, OR ARISING FROM A COURSE OF
DEALING, USAGE, OR TRADE
PRACTICE. NO REPRESENTATION OR STATEMENT NOT EXPRESSLY CONTAINED IN THIS
AGREEMENT WILL BE BINDING UPON EITHER PARTY AS A
WARRANTY OR OTHERWISE.
8.3 Nothing in this
Agreement shall be construed as:
(i) a warranty or representation by either Party as to the
validity or scope of any Licensed Patent; or
(ii) a
warranty or representation that anything made, use, sold or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents of third parties; or
(iii)
a requirement that either Party shall file any patent
application, secure any patent, or maintain any patent in force; or
(iv) an
obligation to bring or prosecute actions or suits against
third parties for infringement; or
(v) an obligation to
furnish any manufacturing or technical
information or training; or
(vi) conferring
a right to use in advertising, publicity, or
otherwise any trademark or tradename of either Party
<PAGE>
9.0
LIMITATIONS OF LIABILITY
9.1 IN NO EVENT WILL EITHER PARTY BE
LIABLE TO THE OTHER FOR ANY LOST
REVENUES OR PROFITS OR OTHER INCIDENTAL, SPECIAL,
INDIRECT, OR CONSEQUENTIAL
DAMAGES ARISING OUT OF THIS AGREEMENT, EVEN IF THAT
PARTY HAS BEEN ADVISED OF
THE POSSIBILITY OF SUCH DAMAGES.
10.0 MISCELLANEOUS
10.1 Force Majeure. Neither party will be deemed in default of this
Agreement to the extent that performance of its
obligations or attempts to cure
any breach are delayed or prevented by reason of any act of god, fire,
natural
disaster, accident, act of government, or any other cause beyond the control of
such party ("Force Majeure"), provided
that such party gives the other party
written notice thereof, and uses good faith efforts to so perform or cure. In
the event of such a Force Majeure, the time for
performance or cure will be
extended for a period equal to the Force Majeure, but
in no event more than six
(6) months.
10.2
Governing Law. This Agreement is deemed entered into in the state of
......... and will be
governed and construed in all respects according to the
laws of ......... as such laws are applied to agreements between .........
residents entered into and entirely performed within ......... (except that
body of law controlling conflict of laws). Any litigation or other dispute
resolution between the parties, relating to this Agreement will take place in
to personal jurisdiction of, and venue within the state and federal courts
within that country.
10.3
Arbitration of Disputes. Any controversy or claim arising out of or
relating to this Agreement, or the breach thereof, will be settled by
arbitration before a single arbitrator, and judgment upon the award rendered by
the arbitrator may be entered in any court having jurisdiction thereof. The
arbitration will take place in ......... Alto, ..........
The arbitration will be
conducted in the English language, and each party will bear its own expenses and
attorneys fees connected with the arbitration regardless of the outcome.
If the
parties cannot agree on a single arbitrator, each party will
appoint an arbitrator, and the two appointed arbitrators will appoint a third
neutral arbitrator, whereupon the arbitration will take place before the three
arbitrators, so appointed.
10.4
Severability. If any provision of this Agreement, or the application
thereof, will for any reason and to any extent be determined by a court of
competent jurisdiction to be invalid or unenforceable under applicable law, the
remaining provisions of this Agreement will be interpreted so as best to
reasonably effect the intent of the parties. The
<PAGE>
parties further agree to replace any such invalid or unenforceable provisions
with valid and enforceable provisions designed to achieve, to the extent
possible. The business purposes and intent of such invalid and unenforceable
provisions.
10.5
Relationship to the Parties. No employees, consultants, contractors,
or agents of one party are agents, employees, franchisees, or joint
ventures of
the other party, nor do they have any authority to bind the other party by
contract or otherwise to any obligation. They will not represent to the
contrary, either expressly, implicitly, or otherwise.
10.6
Assignment. Neither party will assign this Agreement to a third party
without the other party's prior written approval, except to a third party
pursuant to a merger, sale of all or substantially all of the business of which
this Agreement is a part, or other corporate reorganization.
10.7
Successors and Assigns. This Agreement will be binding upon and inure
to the benefit of the parties hereto and to their respective successors
and
assigns, subject to the provisions of Paragraph 10.6.
10.8
Notices. All notices required hereunder must be in writing and
delivered either in person or by a means evidenced by a delivery receipt, to the
address specified in this Agreement or as otherwise notified in writing. Such
notice will be effective upon receipt.
Notices to the WWW Wellcome Companies will be
to the attention of:
XYZ N.V. and
XYZ Technologies N.V. Via
Facsimile 011-44-181-966-8838
c/o Dr. Alan Hesketh Confirmation by DHL
Courier
Manager, Intellectual Property Department
WWW Wellcome plc
WWW House,
........., ........., ......... ......... UB6 ONN
Dr. Via Facsimile
Chief Executive Officer Confirmation by Registered Mail
XYZ Research Institute
4001 Miranda
......... Alto,
Notices to YYY will be to the attention of:
Dr. Via Facsimile
Chief Executive Officer Confirmation by Registered Mail
YYY, Inc.
<PAGE>
4001 Miranda Avenue
.........
10.9 No Waiver.
Failure by either party to enforce any provision of this
Agreement will not be deemed a waiver of future
enforcement of that or any other
provision.
10.10 No
Rights in Third Parties. This Agreement is made for the benefit of
the parties, and not for the benefit of any third parties unless otherwise
agreed to by the parties.
10.11
Headings. The headings and captions used in this Agreement are used
for convenience only and are not to be considered in construing or
interpreting
this Agreement.
10.12
Construction. This Agreement has been negotiated by the parties and
by their respective counsel. This Agreement will be fairly interpreted in
accordance with its terms and without any strict construction in favor of or
against either party.
10.13
Entire Agreement. This Agreement, including all Attachments hereto,
represents the entire understanding and agreement of the parties with respect to
the subject matter of the Agreement, and supersedes all prior or
contemporaneous
understandings and agreements, whether written or oral, except as
specifically
provided in this Agreement. Unless otherwise provided herein, this Agreement may
not be modified, amended, rescinded, or waived, in whole or part except by
a
written instrument signed by the duly authorized representatives of both
parties.
<PAGE>
11.0 EXECUTION BY THE PARTIES
IN
WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives. This Agreement may be
executed in one or more counterparts, each of which will be deemed an original,
but all of which will constitute but one and the same instrument.
XYZ Technologies N.V.
By: /s/
Name:
Title: Director
Date:
WWW Group Limited
By: /s/
Name:
Title: Company
Secretary
Date:
YYY, Inc.
By: /s/
Name:
Title:
President
Date:
<PAGE>
SCHEDULE A
For the purposes of this term sheet, "Licensed
Patents and Applications" shall
be defined as the following patents and applications:
.
National
Phase counterparts:
Omissis
<PAGE>
SCHEDULE B
For the purposes of this term sheet, the patents and
patent applications related
to various peptide display technologies shall be defined as the following
patents and applications:
omissis
<PAGE>
MODIFICATION TO
XYZ/YYY TECHNOLOGY
TRANSFER
AGREEMENT
This
modification to the XYZ/YYY Technology Transfer Agreement (the
Agreement), is made by and between XYZ Technologies
N.V. and WWW Group
Limited, each of which is a corporation having a
registered address at WWW
Wellcome House,
(collectively referred to as
"the WWW Wellcome Companies") and YYY,
Inc.,
a
(referred to as "YYY") and shall have an effective
date of
1.0
Definitions
-----------
"Antibodies on Phage Patents and Applications"' refer to the
following
Patents and
Applications:
; European Patent
Application No.
; and
"Modification Agreement" shall refer to this agreement.
2.0
Modification of Article 5.2
---------------------------
Article 5.2
of the Agreement is hereby modified in its entirety to read as
follows:
5.2.1 The WWW Wellcome
Companies hereby grant YYY a perpetual,
worldwide, royalty-free, non-exclusive license, without the
right
to sublicense, to Peptides-on-Plasmids Display Patents and
Applications, Polysome Display Patents and
Applications, Phage
Display Patents and Applications, the .........
Patent, and Receptor
Immobilization Patent Application. YYY agrees that use of
these
patents and applications shall be [*******]. YYY further
agrees
that YYY shall not enter into a research collaboration with
a
third party, or conduct research on behalf of a third party,
for
the purpose of developing reagents for commercial use in the
Diagnostic Field and using antibodies on phage technology as
claimed in the Antibody on Phage Patents and Applications.
Notwithstanding the foregoing, such restriction shall apply only in
those countries in which the Antibody on Phage Patents have
issued.
5.2.2 For purposes of
this Modification Agreement, "Diagnostic Field"
shall mean the [*******].
3.0
Miscellaneous
-------------
The terms
of the Agreement not specifically modified by this Modification
Agreement shall continue in effect.
<PAGE>
4.0 Execution
by the Parties
------------------------
IN WITNESS
WHEREOF, the parties have caused this Modification Agreement to
be executed by their duly authorized representatives. This Modification
Agreement may be executed in one or more counterparts,
each of which will be
deemed an original, but all of which will constitute but one and the same
instrument.
XYZ Technologies N.V.
By: /s/
Name:
Title: Managing
Director
Date:
WWW Group Limited
By: /s/
Name:
Title:
Assistant Secretary
Date:
YYY, Inc.
By: /s/
Name:
Title: President & CEO
Date: