Exhibit
10.28


 


LICENSE AGREEMENT


 


This Agreement, effective
as of November 25, 1988 (“EFFECTIVE DATE”) is between The Johns Hopkins
University, (JHU), a not-for-profit corporation of the State of Maryland,
having a principal place of business at 720 Rutland Avenue, Baltimore, Maryland
21205 and Brigham and Women’s Hospital (BWH), a corporation of the State of
Massachusetts, having a principal place of business at 75 Francis Street,
Boston Massachusetts 02115 (JHU and BWH hereinafter referred to as “Licensor”)
and T Cell Sciences, Inc. a Delaware Corporation, having a principal place of
business at 840 Memorial Drive, Cambridge, MA 02139 (hereinafter the
“Company”).


 


WITNESSETH;


 


WHEREAS, as a center for
research and education, Licensor is interested in licensing PATENT RIGHTS
(hereinafter defined) in a manner that will benefit the public by facilitating
the distribution of useful products, but is without capacity to commercially
develop, manufacture, and distribute any such product; and


 


WHEREAS, a valuable invention
in the field of the human C3b/C4b receptor (CRI) was developed during the
course of work funded by the United States Government and the Government has
certain rights therein; and


 


WHEREAS, Licensor has
acquired through assignment all right, title, and interest in said valuable
invention from the Department of Health and Human Services (hereinafter
“DHHS”); and


 


WHEREAS, Company as a
leader in the development and use of T cell materials, has such capacity, and
desires to commercially develop, manufacture, use and distribute such products
throughout the world; and


 


WHEREAS, JHU and BWH
entered into an agreement (attached as Exhibit A) with an effective date of
June 28, 1988;


 


NOW, THEREFORE, the
parties agree as follows:


 


ARTICLE 1 - DEFINITIONS


 


1.1                                 PATENT
RIGHTS shall mean the U.S. Patent Application Serial No. 176,532 filed on
April 1, 1988 in the names of Drs. Douglas T. Fearon, Lloyd B. Klickstein,
and Winnie W. Wong, assigned to The Johns Hopkins University and The Brigham
and Women’s Hospital entitled “The Human C3b/C4b Receptor (CR1)” (hereinafter
the “Patent Application”) and the invention disclosed and claimed therein, all
continuations, continuations in part, divisions, and reissues thereto, and any
corresponding foreign patent applications that may be filed in the future


 

















 


at the Company’s request and expense and any patents issuing thereon,
all of which are more fully set forth in Appendix A attached hereto and
made part of this Agreement.


 


1.2                                 LICENSED
PRODUCTS shall mean all products for therapeutic purposes, the manufacture, use
or sale of which, except for this Agreement, would constitute infringement of
one or more pending claims of a patent application contained within PATENT
RIGHTS or one or more valid and unexpired claims of an issued patent contained
within PATENT RIGHTS. LICENSED PRODUCTS shall not include such products for
research, diagnostic, or medical device purposes and Licensor shall be free to
license such products for such purposes to third parties, subject, however, to
the requirement that the Company shall have the option of first refusal to
negotiate for an exclusive license on reasonable terms to use such products for
research, diagnostic, or medical device purposes.


 


1.3                                 LICENSED
PROCESSES shall mean all methods and/or processes for therapeutic purposes
which are covered by any claim of one or more PATENT RIGHTS.


 


1.4                                 NET
SALES shall mean selling price received by Company and/or Affiliated Company
from the sale of LICENSED PRODUCTS, less trade and quantity discounts allowed,
transportation and handling charges, credits for claims or allowances, refunds,
returns and recalls, and less taxes and other governmental charges levied on or
measured by sales whether absorbed by Company or the customer. For purposes of
this definition, LICENSED PRODUCTS shall be considered sold when billed out to
customers, other than Licensee’s AFFILIATED COMPANY or sublicensee. In the
event that Company and/or AFFILIATED COMPANY sells a LICENSED PRODUCT in
combination with other active ingredients or components which are not LICENSED
PRODUCTS (“Other Items”), the NET SALES for purposes of royalty payments on the
combination shall be calculated as follows:


 


(a)                                  If
all LICENSED PRODUCTS, and Other Items contained in the combination are
available separately, the NET SALES for purposes of royalty payments will be
calculated by multiplying the NET SALES of the combination by the fraction
A/A+B, where A is the invoiced price of all LICENSED PRODUCTS in the
combination, and B is the invoiced price of all Other Items in the combination.


 


(b)                                 If
the combination includes Other Items which are not sold separately (but all
LICENSED PRODUCTS contained in the combination are available separately), the
NET SALES for purposes of royalty payments will be calculated by multiplying
the NET SALES of the combination by A/C, where A is as defined above and C is
the invoiced price of the combination.


 


(c)                                  If
neither the LICENSED PRODUCTS nor the Other Items contained in the combination
are sold separately, the NET SALES for such combination shall be NET SALES of
such combination as defined in the first sentence of this Paragraph 1.4.
However, the royalty rates paid on such combination NET SALES, as described in
Paragraph 4.4 (2%, 3%, and 4%), shall be reduced by fifty percent (50%). In no
event shall the royalty rates be reduced by greater than fifty percent
(50%).  The term “Other Items” is not
intended to include carriers, excipients or the like used in formulating a
pharmaceutical product.


 


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1.5                                 NET
ROYALTIES shall mean all royalties actually received by the Company or its
AFFILIATED COMPANIES, including the receipt of lump sums as advances against
royalties, from nonaffiliated sublicensees in connection with the sublicensing
of any LICENSED PRODUCTS and LICENSED PROCESSES under the PATENT RIGHTS.


 


1.6                                 AFFILIATED
COMPANY shall mean any corporation, company, partnership, joint venture or
other entity which controls, is controlled or under common control with the
Company or Licensor, as the case may be. For the purposes of this
Section 1.6, control shall mean the direct or indirect ownership of at
least fifty percent (50%) or if less than fifty percent (50%), the maximum
percentage as allowed by applicable law of (a) the stock shares entitled to
vote for the election of directors; or (b) ownership interest.


 


1.7                                 RESEARCH
PHASE of product development shall mean laboratory research efforts up to and
including the completion of protein expression studies, undertaken by Company
and/or AFFILIATED COMPANY, for the purpose of commercializing LICENSED
PRODUCTS.


 


ARTICLE 2 - GRANTS


 


2.1                                 Subject
to the terms and conditions of this Agreement, Licensor hereby grants to the
Company an exclusive license to make, have made, use, and sell the LICENSED
PRODUCTS, and to use the LICENSED PROCESSES in the United States and worldwide
under the PATENT RIGHTS and to sublicense others under LICENSED PRODUCTS,
LICENSED PROCESSES and PATENT RIGHTS subject to section 2.2 and
limitations imposed on Licensor’s right to grant such license by 35 USC 200-211 and the regulations promulgated thereunder.


 


2.2                                 Licensor
retains the right under the PATENT RIGHTS to make, provide and use the LICENSED
PRODUCTS and LICENSED PROCESSES for its own not-for-profit use. For purposes of
this Section 2.2, Licensor shall include but not be limited to JHU, The
Johns Hopkins Health System and BWH.


 


ARTICLE 3 - PATENT INFRINGEMENT


 


3.1                                 Company
shall have the right to enforce any patent within PATENT RIGHTS against any
infringement or alleged infringement thereof, and shall at all times keep
Licensor informed as to the status thereof. Company may, in its sole judgment
and its own expense, institute suit against any such infringer or alleged
infringer and control, settle, and defend such suit in a manner consistent with
the terms and provisions hereof and recover, for its account, any damages,
awards, or settlements resulting therefrom, subject to Section 3.3. This
right to sue for infringement shall not be used in an arbitrary or capricious
manner. Licensor shall reasonably cooperate in any such litigation at Company’s
expense.


 


3.2                                 If
Company elects not to enforce any patent within PATENT RIGHTS, then it shall so
notify Licensor in writing, and Licensor may, in its sole judgment and at its
own expense, do so and control, settle, and defend such suit in a manner
consistent with the terms and


 


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provisions hereof, and recover, for its own account, any damages,
awards or settlements resulting therefrom.


 


3.3                                 Any
recovery by Company under Section 3.1 shall be deemed to reflect loss of
commercial sales, and Company shall pay Licensor a royalty in accordance with
this license agreement on said recovery. Company may, in calculating any
royalty due Licensor on said recovery, deduct reasonable expenses of litigation
actually incurred and not reimbursed, provided, however, that in no event shall
such royalty due Licensor be reduced by more than fifty percent (50%).


 


ARTICLE 4 - PAYMENTS


 


4.1                                 The
Company shall pay to Licensor, within thirty (30) days of the execution of this
agreement by both parties, the sum of Fifteen Thousand Dollars ($15,000.00).


 


4.2                                 The
Company shall pay to Licensor minimum annual royalties at the end of each
calendar year beginning after the first commercial sale by the Company and/or
AFFILIATED COMPANY and/or sublicensee thereof of a LICENSED PRODUCT
(hereinafter “Royalty Year”) as follows:


 


	
  At the end of the first

  Royalty Year:

  	
   

  	
  Twenty-five Thousand
  Dollars

  ($25,000.00)

  
	
   

  	
   

  	
   

  
	
  At the end of the

  second Royalty Year:

  	
   

  	
  Fifty Thousand Dollars

  ($50,000.00)

  
	
   

  	
   

  	
   

  
	
  At the end of the

  third Royalty Year:

  	
   

  	
  Seventy-five Thousand
  Dollars

  ($75,000.00)

  
	
   

  	
   

  	
   

  
	
  At the end of the

  fourth and subsequent

  Royalty Years:

  	
   

  	
  One Hundred Thousand
  Dollars

  ($100,000.00)

  



 


Said minimum annual royalties shall be paid to
Licensor within thirty (30) days after the end of each Royalty Year. Said
minimum annual royalties shall be credited against running royalties as defined
by Section 4.4.


 


4.3                                 The
Company shall use all reasonable efforts to effect the lawful commercial sale
of a LICENSED PRODUCT in each country in which such LICENSED PRODUCT is
licensed hereunder as soon as is commercially practicable, consistent with the
Company’s sound and reasonable business practices and judgment. The Company or
AFFILIATED COMPANY or a sublicensee thereof shall identify a LICENSED PRODUCT
within twenty-four (24) months of the date of execution of this Agreement by
both parties and file an IND with the Food and Drug Administration (FDA) within
five (5) years of the date of execution of this Agreement by both parties and
make a first commercial sale of a LICENSED PRODUCT within ten (10) years of the


 


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date of execution of this Agreement by both parties. If the Company or
AFFILIATED COMPANY or a sublicensee has not identified a LICENSED PRODUCT or
filed an IND within said time periods, Licensor shall have the right to
terminate this Agreement. If the Company, an AFFILIATED COMPANY, or a
sublicensee thereof has not achieved a first commercial sale of a LICENSED
PRODUCT by the end of the ninth year from the date of execution of this
Agreement by both parties, the Company shall begin payment of a minimum annual
royalty of $10,000 per year until the first commercial sale has occurred, at
which time the Company shall begin payment of the minimum annual royalties
pursuant to Section 4.2. If the Company or AFFILIATED COMPANY or a sublicensee
has not achieved a first commercial sale of a Licensed product by the end of
the tenth year of the effective date of this Agreement, Licensor shall have the
right to terminate this Agreement. This tenth year milestone may be extended
for such length of time as the first commercial sale is delayed by reason of a
delay in receiving the required governmental approval for such sale in excess
of one hundred twenty (120) days from the time application for such approval is
made. If the license grant is terminated, all right shall revert to Licensor.


 


4.4                                 The
Company shall pay to Licensor, as a royalty, for each LICENSED PRODUCT sold by
the Company and AFFILIATED COMPANIES thereof, two percent (2%) of the first
fifty million dollars ($50,000,000) of NET SALES, three percent (3%) of the
next fifty million dollars ($50,000,000) of NET SALES, and four percent (4%) of
all the NET SALES over one hundred million dollars ($100,000,000) for the term
of this Agreement. However, if no patent has issued with respect to the PATENT
RIGHTS by December 31, 1992, the applicable royalty rate, pursuant to this
Section 4.4, shall be reduced by fifty percent (50%) unless the Patent
Application is involved in an interference or subject to a secrecy order from
the U.S. Patent and Trademark office, in which cases the full royalty rate
shall apply. If the royalty rate is reduced by fifty percent (50%) as provided
by this Section and a patent subsequently issues, the full royalty rate
shall be payable as of the issue date of the patent. After a patent issues, the
full royalty rate shall again apply.


 


4.5                                 In
the event that the Company grants sublicenses to any third party that is not an
AFFILIATED COMPANY to make, have made, use, and sell the LICENSED PRODUCTS
and/or to use the LICENSED PROCESSES anywhere in the world under the PATENT
RIGHTS at anytime during the term of this Agreement, then for each such
sublicense the Company agrees to pay Licensor NET ROYALTIES at the rates set
forth below in the NET ROYALTY rate schedule. Such NET ROYALTIES shall be paid
to Licensor whether or not a patent issues with respect to the PATENT RIGHTS.


 


NET ROYALTY RATE
SCHEDULE


 


On all of the NET ROYALTIES collected by the Company
or its AFFILIATED COMPANIES (including dollar equivalents in foreign funds)
during each calendar year during the term of this agreement,


 


(1)                                  if
Company or AFFILIATED COMPANY does not complete, within its internal
laboratories, the RESEARCH PHASE of product development, the royalty rate shall
be 50%, or


 


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(2)                                  if
Company or AFFILIATED COMPANY does complete, within its internal laboratories,
the RESEARCH PHASE of product development, the royalty rate shall be 25%.


 


4.6                                 If,
in the Company’s reasonable judgment, it is necessary to have one or more
royalty-bearing licenses from third parties in order to fully exercise the
rights granted by Licensor hereunder, then the applicable royalty rate set
forth in section 4.4 shall be reduced by one percent (1%) for each percent
of royalty the Company would be required to pay under such licenses from third
parties, but in no case will the royalty otherwise due Licensor be reduced by
more than fifty percent (50%).


 


4.7                                 No
multiple royalties shall be payable on NET SALES of any LICENSED PRODUCT by
virtue of such LICENSED PRODUCT being covered by a claim or claims of more than
one patent or patent application within PATENT RIGHTS.


 


4.8                                 In
the event that the Company and Licensor jointly own a patent or patent
application within PATENT RIGHTS by virtue of co-inventorship between personnel
of Licensor and one or more employees of the Company, (i) the applicable
minimum annual royalties as set forth in Sections 4.2 and 4.3 hereof, which
become due by virtue of the sale of a LICENSED PRODUCT covered solely by one or
more claims of such a jointly owned patent or patent application shall be
reduced by fifty percent (50%); and (ii) the applicable royalty rates, as set
forth in Sections 4.4 and 4.5 hereof, based on NET SALES of a LICENSED PRODUCT
covered solely by one or more claims of such a jointly owned patent or patent
application shall be reduced by fifty percent (50%). However, where such
LICENSED PRODUCT is also covered by a claim of a patent or patent application
within PATENT RIGHTS which is owned solely by Licensor, the applicable royalty
reduction of this Section shall not apply.


 


4.9                                 The
Company shall provide within thirty (30) days of the end of each June and
December after execution of this Agreement by both parties a written
report to Licensor of the amount of LICENSED PRODUCT sold, the total NET SALES
of such LICENSED PRODUCT, the royalties due to Licensor as a result thereof,
the amount of NET ROYALTIES received from nonaffiliated sublicensees pursuant
to Section 4.5, and royalties due to Licensor pursuant to
Section 4.5. Payment of any such royalties due shall accompany such
report. Until the Company has achieved a first commercial sale of a LICENSED
PRODUCT, each report shall include a full written report on the progress of the
Company’s efforts towards such first commercial sale.


 


4.10                           The
Company shall make and retain, for a period of three (3) years following the
period of such report, true and accurate records, files and books of account
containing all the data reasonably required for the full computation and
verification of sales and other information required in section 4.9. Such
books and records shall be satisfactory to Licensor and in accordance with
generally accepted accounting principles consistently applied. The Company
shall permit the reasonable inspection and copying of such records, files and
books of account by Licensor during regular business hours upon ten (10)
business days’ written notice to the company. Such inspection shall not be made
more than once each calendar year. All reasonable costs of such inspection and
copying shall be paid by Licensor, provided that if any such inspection shall
reveal that an error has been made in the amount of any payment in amount equal
to 15% or more of such payment, such costs shall be borne by the Company.


 


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ARTICLE 5 - PATENT RIGHTS AND CONFIDENTIAL INFORMATION


 


5.1                                 Licensor
represents that Appendix A contains an accurate and complete listing and
description of the Patent Application and issued patents included within PATENT
RIGHTS.  Appendix A shall be
periodically updated.


 


5.2                                 Licensor
warrants that, except to the extent specifically set forth in Article 6,
Licensor has the right to grant the rights and licenses granted therein to the
Company free and clear of all liens and encumbrances.


 


5.3                                 Title
to all patent and patent applications included within PATENT RIGHTS, in which
no employees of the Company are co-inventors, shall reside in Licensor. All
patent applications included within PATENT RIGHTS in which no employees of the
Company are co-inventors shall be assigned to Licensor. Inventions which arise
from joint inventorship between personnel of Licensor and one or more employees
of the Company shall be assigned to both Licensor and the Company. Throughout
the term of the Agreement, the Company shall have the right, but shall not be
obligated, to file United States and/or foreign patent applications included
within PATENT RIGHTS; to prosecute and defend such applications against third
party oppositions; and upon grant of any Letters Patent included within PATENT
RIGHTS to maintain such Letters Patent in force, and the Company shall be
licensed under such patents or patent applications. In carrying out the filing
and prosecution of applications and maintenance of Letters Patents in which no
employees of the Company are coinventors, due care shall at all times be taken
to reasonably safeguard the interests of Licensor as assignee, and Licensor
shall have the right of final decision on all actions taken in such filing,
prosecution, and maintenance, which decision shall not be unreasonable in view
of the Company’s interests as licensee. All the costs of such filing,
prosecution, and maintenance for PATENT RIGHTS in which Licensor is the sole
assignee shall be billed directly to JHU, and reimbursed in full by the Company
within thirty (30) days of receipt. At the time of billing, a duplicate copy of
such bill shall be sent directly to the Company, so as to keep it informed of
incurred costs. Costs for filing, prosecution, and maintenance of PATENT RIGHTS
which are jointly owned by Licensor and the Company shall be billed directly to
the Company and paid by Company. For PATENT RIGHTS which are either solely
owned by Licensor or jointly owned by Licensor and Company:


 


(a)                                  the
patent attorney will timely send copies of all correspondence to and from the
various patent offices to both parties and shall give both parties an
opportunity to comment thereon.


 


(b)                                 Company,
at its own expense, shall have the right, but shall not be obligated, to file
United States and/or foreign patent applications included within the PATENT
RIGHTS; to prosecute and defend such applications against third party
oppositions; and upon grant of any Letters Patent included within the PATENT
RIGHTS, to maintain such Letters Patent in force.


 


(c)                                  if
the Company elects not to file or prosecute such applications or maintain such
Letters Patent., the Company. shall so notify Licensor, in which event Licensor
shall have the right to file or prosecute such applications and to maintain
such Letters Patent entirely at its own expense, and the Company shall not be
licensed thereunder.


 


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5.4                                 The
Company agrees that the investigators and researchers of Licensor shall have
the right to publish any results relating to the invention disclosed within
PATENT RIGHTS. The Company shall be provided with an advance copy of any such
proposed publication. At the Company’s request, the Licensor agrees to delay
submission for publication to permit the filing of patent application(s) but in
no event shall such delay exceed sixty (60) days from the time the Company
receives the advance copy of the proposed publication.


 


5.5                                 During
the term of this Agreement, Licensor and the Company may disclose to each other
information which each considers to be confidential (hereinafter “CONFIDENTIAL
INFORMATION”). All written CONFIDENTIAL INFORMATION shall be marked as
confidential by the party providing the information at the time it is provided.
All CONFIDENTIAL INFORMATION which is verbally disclosed shall be subject to
the obligations of this Section 5.5 only upon written communication of its
confidential nature prior to or within 20 days after the time of its
disclosure. Upon the acceptance of the disclosure of the CONFIDENTIAL
INFORMATION, each party agrees to employ all reasonable efforts to maintain the
CONFIDENTIAL INFORMATION secret and confidential, such efforts to be no less
than the degree of care employed by each party to preserve and safeguard the
party’s own CONFIDENTIAL INFORMATION. The Company and Licensor each agrees to
treat as confidential and to use only in the conduct of its business all
CONFIDENTIAL INFORMATION disclosed to it by the other party except insofar as this
Agreement authorizes the use of such CONFIDENTIAL INFORMATION other purposes.
The Company and Licensor each agree not to disclose any of the CONFIDENTIAL
INFORMATION received from the other party to any third party who has not agreed
to keep it confidential. The company and/or Licensor shall be relieved from
their respective obligations under this Section 5.5 with regard to any
part of the CONFIDENTIAL INFORMATION:


 


(a)                                  that
can be demonstrated to have been in the public domain or publicly known and readily
available to the trade or the public prior to the date of the disclosure; or


 


(b)                                 that
can be demonstrated, in writing, to have been in the possession of the party
seeking release, or readily available to such party from another source without
binder of secrecy, provided however, that such source is not under obligation
of secrecy to the other party; or


 


(c)                                  that
becomes part of the public domain or known to the trade or public by
publication or otherwise, not due to any unauthorized act by the party seeking
release.


 


The Company’s and
Licensor’s respective obligations under this Section 5.5 shall extend for
a period of five (5) years from the EFFECTIVE DATE hereof; or (b) three (3)
years from the date of termination, whichever occurs later.


 


ARTICLE 6 - DHHS


 


6.1                                 Pursuant
to 35 USC 202, Licensor elected to take all right, title, and interest in the
invention forming the basis of the PATENT APPLICATION.


 


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6.2                                 The
Company hereby specifically agrees to cooperate with Licensor in abiding by the
terms and conditions imposed on Licensor pursuant to 35 USC 200-211 and the
regulations promulgated thereunder. If a conflict arises between the terms of
this agreement and said federal statutes and regulations, said federal statutes
and regulations shall prevail.


 


6.3                                 Licensor
warrants that it has complied with and will continue to comply with all duties
and obligations running from Licensor to the Government pursuant to 35 USC
200-211 and the regulations promulgated thereunder.


 


6.4                                 Licensor
warrants that it has the right to grant the exclusive licenses granted under
this Agreement for the life of any U.S. or foreign patent that might issue with
respect to the PATENT APPLICATION.


 


ARTICLE 7 - TERM AND TERMINATION


 


7.1                                 This
Agreement shall be effective on the date that the last party executes this
Agreement. It shall expire on the date of expiration of the last to expire
patent issued included within PATENT RIGHTS, or if no patent ultimately issues,
fifteen (15) years after the first commercial sale of a LICENSED PRODUCT.


 


7.2                                 The
Company may terminate this Agreement at any time by written notice to Licensor.
Upon termination, all rights revert back to Licensor.


 


7.3                                 Upon
breach or default of any of the terms and conditions of this Agreement, the
defaulting party shall be given notice of such default in writing and a period
of thirty (30) days after receipt of such notice to correct the breach or
default. If the default or breach is not corrected within said thirty (30) day
period, the party not in default shall have the right to terminate this
Agreement.


 


7.4                                 Nonpayment
of the royalties required under Article 4 and nonreimbursement of costs
required under Article 5 hereinabove shall be a breach of this Agreement
in accordance with the provisions of Section 7.3 hereinabove and Licensor
shall have the right to terminate this Agreement if said breach is not
corrected within thirty (30) days. Termination shall not affect right to
recover unpaid royalties and nonreimbursed patent costs.


 


7.5                                 In
the event (a) either party shall become insolvent or shall suspend business or
shall file a voluntary petition or answer admitting the jurisdiction of the
Court and the material allegations of or shall consent to an involuntary
petition pursuant to or purporting to be pursuant to any reorganization or
insolvency law of any jurisdiction or shall make an assignment for the benefit
of creditors, or shall apply for or consent to the appointment of a receiver or
trustee of a substantial part of its property, and (b) no AFFILIATED COMPANY
shall undertake to assume its obligations under the provisions of this
Agreement within ninety (90) days from the date on which the party becomes so
disabled, then to the extent permitted by law, the other party may thereafter
immediately terminate this Agreement by giving written notice of termination to
the disabled party. This Agreement shall terminate upon receipt of such notice,
except with respect to all accrued and unpaid royalties and sales.


 


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7.6                                 Sections
3.3, 4.10, 5.5, 7.4, 7.6, 8.5, 8.6, 8.8 8.9 of this Agreement shall survive the
termination of this Agreement.


 


ARTICLE 8 - MISCELLANEOUS.


 


8.1                                 All
notices pertaining to extension, termination, and amendment to this Agreement
shall be in writing and sent certified mail, return receipt requested, to the
parties at the following addresses or such other addresses as such party shall
have furnished in writing to the other party in accordance with this Section 8.1:


 


ASSOCIATE DEAN FOR
RESEARCH


The Johns Hopkins
University.


School of Medicine


720 Rutland Avenue


Baltimore, Maryland  21205


 


Ms. Susan E. Dubé


Vice President


Brigham and Women’s
Hospital


75 Francis Street


Boston Massachusetts  02115


 


T CELL SCIENCES, INC.


840 Memorial Drive


Cambridge, MA  02139


Attention:  Chairman and Chief Executive Officer


 


8.2                                 All
progress reports, royalty and other payments, and any other related
correspondence shall be in writing and sent certified mail, return receipt
requested, by TCS to:


 


Assistant Dean for
Technology Licensing


The Johns Hopkins
University


School of Medicine


720 Rutland Avenue


Baltimore, Maryland 21205


 


JHU shall provide copies
of said reports and correspondence to BWH.


 


8.3                                 The
Company may assign this Agreement in whole or in part to a party (i) acquiring
substantially all of its business relating to LICENSED PRODUCTS and/,or
LICENSED PROCESSES; (ii) to any AFFILIATED COMPANY; or (iii) to any other party
provided Licensor approves the assignment in writing, which approval shall not
be unreasonably withheld. BWH shall have the right to assign this Agreement to
its parent corporation, Brigham Medical Corporation.


 


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8.4                                 The
construction, performance, and execution of this Agreement shall be governed
and interpreted by the laws of the State of Maryland.


 


8.5                                 Neither
party shall use the other party’s name or, any contraction thereof, or the
names of inventors in any advertising, promotional, or sales literature without
prior written consent from the other party.


 


8.6                                 EXCEPT
AS EXPRESSLY SET FORTH IN THIS SECTION 8.6, LICENSED PRODUCTS AND LICENSED
PROCESSES ARE PROVIDED “AS IS”. NO REPRESENTATION OR WARRANTY IS MADE WITH
RESPECT TO THE PERFORMANCE OF LICENSED PRODUCTS AND LICENSED PROCESSES,
INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL VIABILITY. LICENSOR
DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCTS AND PROCESSES LICENSED UNDER
THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR IMPLIED,
OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE. NOTWITHSTANDING ANY
OTHER PROVISION OF THIS AGREEMENT, LICENSOR ADDITIONALLY DISCLAIMS ALL
OBLIGATIONS AND LIABILITIES ON THE PART OF LICENSOR FOR DAMAGES, INCLUDING BUT
NOT LIMITED TO DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS’
AND EXPERTS’ FEES, AND COURT COSTS (EVEN IF LICENSOR HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN CONNECTION
WITH THE MANUFACTURE, USE, OR SALE OF THE PRODUCTS AND PROCESSES LICENSED UNDER
THIS AGREEMENT. COMPANY ASSUMES ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR
DAMAGE CAUSED BY A PRODUCT AND PROCESS MANUFACTURED, USED, OR SOLD BY COMPANY,
ITS SUBLICENSEES AND AFFILIATED COMPANIES WHICH IS A LICENSED PRODUCT OR
LICENSED PROCESS AS DEFINED IN THIS AGREEMENT.


 


8.7                                 Licensor
warrants that it has good and marketable title to the invention claimed under
PATENT RIGHTS and it is free of all liens and encumbrances which may result in
claims against Company or its affiliates.


 


8.8                                 In
as much as Licensor and the inventors of LICENSED PRODUCTS will not, under the
provisions of this Agreement or otherwise, have any control over the manner in
which company or AFFILIATED COMPANY or its sublicensees or those operating for
its account or third parties who purchase LICENSED PRODUCTS from any of the
foregoing entities, practice the inventions of LICENSED PRODUCTS, Company shall
defend and hold Licensor and said inventors harmless as against any judgments,
fees, expenses, or other costs arising from or incidental to any product
liability or other lawsuit, claim, demand or other action brought as a
consequence of the practice of said inventions by any of the foregoing
entitles, whether or not Licensor or any one or more of said inventors, either
jointly or severally, is named as a party defendant in any such lawsuit.
Practice of the inventions covered by LICENSED PRODUCTS, by an affiliate or an
agent or a sublicensee or a third party on behalf of or for the account of the
Company or by a third party who purchases LICENSED PRODUCT from the Company,
shall be considered Licensee’s practice of said inventions for purposes of this
Section 8.8. The obligation of the Company to defend and indemnify as set
out in this Section 8.8 shall survive the termination of this Agreement.


 


11

















 


8.9                                 The
Company warrants that it now maintains and will continue to maintain, in each
country Company sells LICENSED PRODUCTS, product liability insurance coverage
appropriate to the risks involved in marketing LICENSED PRODUCT and will
annually present evidence to Licensor that such coverage is being maintained.
The Company will furnish Licensor with a copy of each product liability
insurance policy obtained and agrees to maintain reasonable product liability
insurance pertaining to the LICENSED PRODUCT. Licensor shall be listed as named
insured in Company’s said insurance policy.


 


8.10                           This
Agreement constitutes the entire understanding between the parties with respect
to the obligations of the parties with respect to the subject matter hereof,
and supersedes and replaces all prior agreements, understandings, writings, and
discussions between the parties relating to said subject matter.


 


8.11                           This
Agreement may be amended and any of its terms or conditions may be waived only
by a written instrument executed by the parties or, in the case of a waiver, by
the party waiving compliance. The failure of either party at any time or times
to require performance of any provision hereof shall in no manner affect its
right at a later time to enforce the same. No waiver by either party of any
condition or term in any one or more instances shall be construed as a further
or continuing waiver of such condition or term or of any other condition or
term.


 


8.12                           This
Agreement shall be binding upon and inure to the benefit of and be enforceable
by the parties hereto and their respective successors and permitted assigns.


 


12

















 


IN WITNESS WHEREOF the respective parties hereto have
executed this Agreement by their duly authorized officers on the date appearing
below their signatures.


 


	
   

  	
  THE JOHNS HOPKINS
  UNIVERSITY

  
	
   

  	
   

  
	
   

  	
  By

  	
  /s/ O. Michael
  Colvin, M.D.

  
	
   

  	
   

  	
  O. Michael Colvin, M.D.
  Associate Dean

  for Research

  
	
   

  	
   

  
	
   

  	
  Date

  	
  12/15/88

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  BRIGHAM AND WOMEN’S
  HOSPITAL

  
	
   

  	
   

  
	
   

  	
  By

  	
  /s/ Ms. Susan E. Dubé

  
	
   

  	
   

  
	
   

  	
  Name

  	
  Ms. Susan E. Dubé

  
	
   

  	
   

  
	
   

  	
  Title

  	
  Vice President

  
	
   

  	
   

  
	
   

  	
  Date

  	
  12/7/88

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  T CELL SCIENCES, INC.

  
	
   

  	
   

  
	
   

  	
  By

  	
  /s/ Patrick C. Kung

  
	
   

  	
   

  
	
   

  	
  Name

  	
  Patrick C. Kung

  
	
   

  	
   

  
	
   

  	
  Title

  	
  Executive Vice
  President

  
	
   

  	
   

  
	
   

  	
  Date

  	
  11/30/88

  
										



 


13

















 


I have read and
agree with the terms of this Agreement.


 


	
  By

  	
  /s/ Douglas T. Fearson

  	
   

  	
  Date

  	
  December 14,
  1988

  
	
   

  	
  Douglas T. Fearson

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By

  	
  /s/ Lloyd B. Klickstein

  	
   

  	
  Date

  	
  December 8,
  1988

  
	
   

  	
  Lloyd B. Klickstein

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By

  	
  /s/ Winnie W. Wong

  	
   

  	
  Date

  	
  December 9,
  1988

  
	
   

  	
  Winnie W. Wong

  	
   

  	
   

  	
   

  



 


14

















 


APPENDIX A


 


(TO BE UPDATED
PERIODICALLY)


 


U.S. Patent Application
Serial Number 176,532 filed on April 1, 1988


 


15

















 


EXHIBIT A


 


AGREEMENT


 


THIS AGREEMENT is made
between THE JOHNS HOPKINS UNIVERSITY, having a place of business at 720 Rutland
Avenue, Baltimore, Maryland 21205 (hereinafter referred to as “JHU”) and
BRIGHAM AND WOMAN’S HOSPITAL, having a place of business at 75 Francis Street,
Boston, Massachusetts 02115 (hereinafter referred to as “BRIGHAM AND WOMAN’S”);
and


 


WITNESSETH THAT:


 


WHEREAS, Douglas T.
Fearon of JHU, Lloyd B. Klickstein of JHU and BRIGHAM AND WOMAN’S and Winnie W.
Wong of BRIGHAM AND WOMAN’s have jointly invented “The Human C3b/C4b Receptor
(CRT)” (hereinafter referred to as “INVENTION”).


 


WHEREAS, a United States
patent application on the INVENTION was filed on April 1, 1988 and was
accorded Serial Number 176,532.


 


WHEREAS, said United
States patent application shall be assigned jointly to JHU and BRIGHAM AND
WOMAN’S, each of which shall have an equal and undivided half interest in said
INVENTION disclosed and claimed therein, as well as any patent issuing thereon.


 


WHEREAS, JHU and BRIGHAM
AND WOMAN’S wish to act jointly in offering options on licenses and licenses to
others under the patent rights pertaining to said INVENTION.


 


WHEREAS, JHU and BRIGHAM
AND WOMAN’S wish to provide for the handling and division of the monies
received from any licensee under said patent rights.


 


NOW, THEREFORE, in
consideration of the premises and of the mutual covenants and agreements
contained herein and of other good and valuable considerations, the parties
have agreed and do hereby agree as follows:


 


1.                                       Licensing
of said INVENTION shall only be by mutual agreement. Neither party shall
independently grant a license to a third party without agreement from the other
party. JHU shall take the lead in identifying potential licensees and
negotiating a license agreement.


 


2.                                       Foreign
patent applications shall be filed at the mutual discretion of JHU and BRIGHAM
AND WOMAN’S.


 


3.                                       Expenses
related to administering the INVENTION and obtaining, defending, maintaining
and licensing patents issuing thereon shall be equally divided between JHU and
BRIGHAM AND WOMAN’S.


 


4.                                       Royalties
and other income received pursuant to options on licenses and licenses under
the patent rights of said INVENTION shall be equally divided between JHU and
BRIGHAM AND WOMAN’S.


 


16

















 


5.                                       This
Agreement shall terminate with the expiration of the last to expire patent
issued on said INVENTION, or on abandonment of all patent applications on the
INVENTION, provided such abandonment is by mutual consent.


 


All notices and communications hereunder shall be
forwarded to:


 


David A. Blake, Ph.D.

Associate Dean for Research

The Johns Hopkins University

School of Medicine

720 Rutland Avenue

Baltimore, MD  21205


 


Ms. Susan Dubé

Vice President

Brigham and Woman’s Hospital

75 Francis Street

Boston, Massachusetts  02115


 


17

















 


IN WITNESS WHEREOF, JHU and BRIGHAM AND WOMAN’S have caused
this Agreement to be duly executed as indicated below.


 


	
  WITNESS:

  	
   

  	
  THE JOHNS HOPKINS
  UNIVERSITY

  
	
   

  	
   

  	
   

  
	
   /s/ Carol S. Grap

  	
   

  	
  By:

  	
  /s/ David A. Blake

  
	
   

  	
   

  	
   

  	
  David A. Blake, Ph.D.

  Associate Dean for Research

  
	
  Date:

  	
  6/28/88

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  WITNESS:

  	
   

  	
  BRIGHAM AND WOMAN’S
  HOSPITAL

  
	
   

  	
   

  	
   

  
	
   /s/ [signature
  illegible]

  	
   

  	
  By:

  	
  /s/ Susan Dubé

  
	
   

  	
   

  	
   

  	
   

  	
  Susan Dubé

  Vice President

  
	
  Date:

  	
  6/24/88

  	
   

  	
   

  



 


18