Exhibit 10.1


 


[ **** ]
indicates confidential portions have been redacted and submitted separately
pursuant to confidentiality request with the Commission


 


EXCLUSIVE LICENSE
AGREEMENT


 


Between


 


Thomas Jefferson
University


 


And


 


Spliceomix, Inc.


 


Effective as of February 1,
2003


 


Re:
WON_ALB.002, entitled “Reagents and Processes For Targeting Mutant Epidermal
Growth Factors”


 


In consideration of the
mutual promises and covenants set forth below, intending to be legally bound,
the parties hereto agree as follows:


 


ARTICLE
I

DEFINITIONS


 


As used in this Agreement, the following terms shall
have the following meanings:


 


1.1                                 ACADEMIC
RESEARCH PURPOSES: use of PATENT RIGHTS for academic research or other
not-for-profit scholarly purposes which are undertaken at a non-profit or
governmental institution that does not use the PATENT RIGHTS in the production
or manufacture of products for sale or the performance of services for a fee.


 


1.2                                 AFFILIATE:
any entity which controls, is controlled by, or is under common control with a
party by ownership or control of at least fifty percent (50%) of the voting
stock or other means by which control over management of an entity can be made.
Unless otherwise specified, the term LICENSEE includes AFFILIATES.


 


1.3                                 FIELD:  All fields of use.


 


1.4                                 TJU:  Thomas Jefferson University, a nonprofit
Pennsylvania educational corporation having offices at 1020 Locust Street, M34,
Philadelphia, PA 19107.


 


1.5                                 LICENSED
PROCESSES:  the processes covered by at
least one VALID CLAIM included within the PATENT RIGHTS.


 


1.6                                 LICENSED
PRODUCTS:  product(s) covered by at
least one VALID CLAIM included within the PATENT RIGHTS or products made or
services provided in accordance with or by means of LICENSED PROCESSES.


 

















 


1.7                                 LICENSEE:  Spliceomix, Inc., a corporation
organized under the laws of Delaware having its principal offices at 416 S.
10th St., Philadelphia, PA 19107.


 


1.8                                 NET
RESEARCH AND DEVELOPMENT INCOME: RESEARCH AND DEVELOPMENT INCOME less LICENSEE’s
actual direct cost for research, development and/or research development
services provided.


 


1.9                                 NET
SALES: the amount collected or received (whichever occurs first) from
non-affiliated third parties for sales, leases, or other transfers (other than
sublicenses) of LICENSED PRODUCTS, less:


 


[ **** ]


 


1.10                           NON-ROYALTY
SUBLICENSE INCOME:  the amount paid to
LICENSEE by a third party (other than an AFFILIATE of LICENSEE) for the
granting of a sublicense under Section 3.1 hereinafter, including but not
limited to (i) license fees, (ii) milestone payments, (iii) the
fair market value in cash of any non-cash consideration of any kind for such
sublicense, (iv) in the event that LICENSEE receives any payment for
equity in connection with such sublicense that included a premium over the fair
market value of such equity, the amount of such premium, and (v) NET
RESEARCH AND DEVELOPMENT INCOME; provided that in the event that any such
sublicensed intellectual property includes property that is not covered by a
VALID CLAIM, the NON-ROYALTY SUBLICENSE INCOME shall be determined using the
same formula as NET SALES of LICENSED PRODUCT containing OTHER ITEMS pursuant
to Section 1.9, in which case the sublicensed property not covered by a
VALID CLAIM shall be treated as the OTHER ITEMS.


 


1.11                           RESEARCH
AND DEVELOPMENT INCOME:  the total
financial consideration of any kind (excluding amounts taken into account for
purposes of calculating NET SALES) received as a result of the utilization of
LICENSED PRODUCTS or LICENSED PROCESSES by LICENSEE as a result of a contract
with a third party.


 


1.12                           PATENT
RIGHTS:  The applications and patents as
listed in Appendix A of this Agreement, the allowed claims of such
applications, the inventions described and claimed therein, and any divisions,
continuations, or continuations-in-part of the applications and patents as
listed in Appendix A, and specific claims of any continuations-in-part of such
applications to the extent the specific claims are directed to subject matter
described in the applications and patents listed in Appendix A in a manner
sufficient to support such specific claims under 35 U.S.C., patents issuing
thereon or reissues thereof, and any and all foreign patents and patent
applications corresponding thereto, all to the extent owned or controlled by
TJU.


 


1.13                           TERRITORY:  Worldwide.


 


1.14                           VALID
CLAIM:  either (a) a claim of an
issued patent that has not been held unenforceable or invalid by an agency or a
court of competent jurisdiction in any unappealable or appealed decision or (b) a
claim of a pending patent application that has 


 


2

















 


not been abandoned or finally rejected without the
possibility of appeal or refiling and that has been pending for less than five
(5) years from its priority date.


 


1.15                           The
terms “Public Law 96-517” and “Public Law 98-620” include all amendments to
those statutes.


 


1.16                           The
terms “sold” and “sell” include leases and other legal transfers and similar
transactions involving consideration.


 


ARTICLE
II

REPRESENTATIONS


 


 


2.1                                 TJU is owner by assignment from
inventors of their entire right, title and interest in the PATENT RIGHTS, and
in the inventions described and claimed therein as listed in Appendix A.


 


2.2                                 TJU has the authority to issue
licenses under PATENT RIGHTS.


 


2.3                                 TJU is committed to the policy
that ideas or creative works produced at TJU should be used for the greatest
possible public benefit, and believes that every reasonable incentive should be
provided for the prompt introduction of such ideas into public used all in a
manner consistent with the public interest.


 


2.4                                 LICENSEE is prepared and intends
to diligently develop the invention and to bring products to market which are
subject to this Agreement.


 


2.5                                 LICENSEE is desirous of
obtaining an exclusive license in the TERRITORY 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 TJU is desirous of granting
such a license to LICENSEE in accordance with the terms of this Agreement.


 


ARTICLE
III

GRANT OF RIGHTS


 


3.1                                 TJU hereby grants to LICENSEE
and LICENSEE accepts, subject to the terms and conditions hereof, in the
TERRITORY and in the FIELD an exclusive license under PATENT RIGHTS to research
and develop, to make and have made, to use and have used, to sell and have sold
the LICENSED PRODUCTS, and to practice the LICENSED PROCESSES, for the life of
the PATENT RIGHTS. Such licenses shall include the right to grant sublicenses. In
the event of sublicensing, LICENSEE shall within thirty (30) days provide TJU a
copy of such sublicense agreement for review. In order to provide LICENSEE with
commercial exclusivity for so long as the license under the PATENT RIGHTS
remains exclusive, TJU agrees that it will not grant licenses under the PATENT
RIGHTS to others except as required by TJU’s obligations in Section 3.2(a) or
as permitted in Section 3.2(b).


 


3.2                                 The granting and exercise of
this license is subject to the following conditions:


 


3

















 


(a)                                  TJU’s “Patent Policy” dated October 2002,
Public Law 96-517, Public Law 98-620 and TJU’s obligations under written
agreements, existing as of the date hereof, with other sponsors of research in
the laboratory of Dr. Albert Wong. 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 those statutes.


 


(b)                                 TM reserves the right to make
and use, and grant to others non-exclusive licenses to make and use for
ACADEMIC RESEARCH PURPOSES the subject matter described and claimed in PATENT
RIGHTS.


 


(c)                                  LICENSEE shall use commercially
reasonable diligent efforts to effect introduction of the LICENSED PRODUCTS
into the commercial market as soon as practicable, consistent with sound and
reasonable business practice and judgment; thereafter, until the expiration of
this Agreement, LICENSEE shall endeavor to keep LICENSED PRODUCTS reasonably
available to the public.


 


(d)                                 At any time after five (5) years
from the effective date of this Agreement, TJU may terminate or render this
license non-exclusive if, in TJU’s reasonable judgment, the. Progress Reports
furnished by LICENSEE substantially demonstrate that LICENSEE:


 


(i)                                     has
not put the licensed subject matter into commercial use in a country or
countries hereby licensed, directly or through a sublicense, and is not keeping
the licensed subject matter reasonably available to the public; and


 


(ii)                                  is
not engaged in research, development, manufacturing, marketing or sublicensing
activity reasonably appropriate to achieving 3.2(f)(i).


 


(e)                                  TJU understands and acknowledges
that LICENSEE will be spending considerable resources, both human and
financial, on the development of the LICENSED PRODUCTS in an effort to obtain
the necessary approvals of LICENSED PRODUCTS in the Territory. LICENSEE further
acknowledges that it is TJU’s mission to make the LICENSED PRODUCTS available
to the public.


 


(f)                                    In all sublicenses granted by
LICENSEE hereunder, LICENSEE shall include a requirement that the sublicensee(s) use
commercially reasonable efforts to bring the subject matter of the sublicense
into commercial use as quickly as is reasonably possible. LICENSEE shall
further provide in such sublicenses that such sublicenses are subject and
subordinate to the terms and conditions of this Agreement, except:  (i) the SUBLICENSEE may not further
sublicense; and (ii) the rate of royalty on NET SALES paid by the
SUBLICENSEE to the LICENSEE. Copies of the relevant provisions of all
sublicense agreements shall be provided within thirty (30) days to TJU. TJU
agrees to maintain any information contained in such provisions in confidence,
except as otherwise required by law, however, TJU may include in its usual
reports annual amounts of royalties paid.


 


4

















 


(g)                                 A license in any other field of
use in addition to the FIELD shall be the subject of a separate agreement and
shall require LICENSEE’s submission of evidence, satisfactory to TJU,
demonstrating LICENSEE’s willingness and ability to develop and commercialize
in such other field of use the kinds of products or processes likely to be
encompassed in such other fields. Prior to entering into negotiations with any
third party for an exclusive license in any territory or field of use in
addition to the TERRITORY and/or FIELD, TJU agrees to notify LICENSEE, and
provides opportunity for LICENSEE to make license proposals.


 


(h)                                 To the extent that federal funds
are used to support research leading to a patent or patent application in the
PATENT RIGHTS, LICENSEE shall cause any LICENSED PRODUCT produced for sale by
LICENSEE or SUBLICENSEES in the United States to be manufactured substantially
in the United States during the period of exclusivity of this license in the
United States.


 


3.3                                 All rights reserved to the
United States Government and others under Public Law 96-517, and Public Law
98-620, shall remain and shall in no way be affected by, this Agreement.


 


ARTICLE
IV

ROYALTIES


 


4.1                                 (a)                                  LICENSEE shall pay to TJU a
non-refundable license royalty fee in the sum of [ **** ]. [ **** ] is due to
TJU upon execution of the Agreement and the remaining balance is due to TJU
twelve months (12) months after the execution date of this Agreement.


 


(b)                                 As consideration for the rights
granted hereunder, LICENSEE shall pay to TJU during the term of this Agreement
a royalty in the form [ **** ]. LICENSEE shall issue to [ **** ]. For purposes
of the foregoing sentence, grant funding, loans received from Ben Franklin
Technology Partners and milestone and research and development payments
received by LICENSEE shall be deemed to be paid in capital.


 


[ **** ]


 


4.2                                 (a)                                  LICENSEE shall pay to TILT
during the term of this Agreement a royalty of [ **** ] by LICENSEE and
sublicensees.


 


(b)                                 For each LICENSED PRODUCT sold
by LICENSEE and sublicensees, LICENSEE and sublicensees may credit up to [ ****
] of royalties that LICENSEE is paying to third parties on LICENSEE’s and
sublicensees’ NET SALES of that LICENSED PRODUCT, provided that the royalty
paid to TJU shall not be reduced below [ **** ] of the NET SALES of that
LICENSED PRODUCT for which such third party royalties are being paid.


 


(c)                                  In the event that a single
LICENSED PRODUCT or LICENSED PROCESS is covered by TJU intellectual property in
addition to PATENT RIGHTS, which is licensed to LICENSEE under other agreements
as of the date of this Agreement,


 


5

















 


then the total royalty payment due TJU under all such agreements
including this Agreement shall be [ **** ] of NET SALES of LICENSED PRODUCT.
LICENSEE shall notify TJU of the identity of each license agreement that includes
patent rights covering the product or process, and TM shall distribute the
royalties evenly among such agreements.


 


(d)                                 In the case of sublicenses,
LICENSEE shall pay to TJU a royalty [ **** ] SUBLICENSE INCOME.


 


If compensation for such a sublicense of PATENT RIGHTS is bundled with
compensation received for the sublicensing of the other TJU patent rights
licensed to LICENSEE under other agreements as of the date of this Agreement,
LICENSEE shall pay Till only ten percent (10%) of the total compensation
received no matter how many license agreements from TILT are involved. In such
a case, LICENSEE shall notify TJU of the identity of each license agreement
involved and TM shall distribute its ten percent (10%) of compensation equally
among those license agreements, including this Agreement.


 


4.3                                 As consideration for the rights
granted hereunder, LICENSEE shall pay to TJU dining the term of this Agreement
the following [ **** ] within thirty (30) days of their occurrence (time of
payment is of the essence):


 


For the first two licensed human therapeutic products:


 


(i)                                     [
**** ] upon the filing of a LICENSEE sponsored Phase III clinical trial, and


 


(ii)                                  [
**** ] upon the filing of a New Drug Application (“NDA”)


 


In the event that the first licensed therapeutic product were being
commercially sold and royalties being received by LICENSEE at the time when the
milestone payment(s) for the second licensed therapeutic product would
otherwise be due (and such royalties equal or exceed [ **** ] annually), such
milestone payment on the second licensed therapeutic product shall not be
payable by LICENSEE.


 


4.4                                 Anything herein to the contrary,
if the license pursuant to this 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 and the milestone payments provided in Section 4.3
shall not be payable.


 


4.5                                 On sales between LICENSEE and
its AFFILIATES or sublicensees for resale, the royalty shall be paid on the NET
SALES of the AFFILIATE or sublicensee.


 


4.6                                 No later than March 31st of
each calendar year after the effective date of this Agreement, LICENSEE shall
pay to TJU the following non-refundable [ **** ]. Such payments may only be
credited against running royalties due for that calendar year and Royalty
Reports shall reflect such a credit. Such payments shall not be credited
against milestone 


 


6

















 


payments (if
any) nor against royalties due for any subsequent calendar year nor for any
other payments made pursuant to this license.


 


	
  March 31, 2004

  	
  $

  	
    [ **** ]

  
	
  March 31, 2005

  	
  $

  	
    [ **** ]

  
	
  March 31, 2006

  	
  $

  	
    [ **** ]

  
	
  each year thereafter

  	
  $

  	
    [ **** ]

  



 


ARTICLE
V

REPORTING


 


5.1                                 Six (6) months after
signing this Agreement, LICENSEE shall provide to TJU a written research and
development plan under which LICENSEE intends to bring the subject matter of
the licenses granted hereunder into commercial use. Such plan includes
projections of sales and proposed marketing efforts.


 


5.2                                 No later than sixty (60) days
after June 30 of each calendar year, LICENSEE shall provide to TJU a
detailed written annual Progress Report describing progress on research and
development, regulatory approvals, manufacturing, sublicensing, marketing and
sales during the most recent twelve (12) month period ending June 30 and
plans for the forthcoming year. If multiple technologies are covered by the
license granted hereunder, the Progress Report shall provide the information
set forth above for each technology. If progress differs from that anticipated
in the plan required under Section 5.1, LICENSEE shall explain the reasons
for the difference and propose a modified research and development plan for TJU’s
review. LICENSEE shall also provide any reasonable additional data TJU
reasonably requires to evaluate LICENSEE’s performance.


 


5.3                                 LICENSEE shall report to TJU the
date of first sale of LICENSED PRODUCTS (or results of LICENSED PROCESSES) in
each country within thirty (30) days of occurrence.


 


5.4                                 (a) LICENSEE shall submit
to TJU within sixty (60) days after each calendar half year ending June 30
and December 31, a Royalty Report setting forth for such half year at
least the following information:


 


(i)                                     the
number of LICENSED PRODUCTS sold by LICENSEE in each country; total billings
and amounts actually received for such LICENSED PRODUCTS;


 


(ii)                                  total
billings and amounts actually received 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


 


7

















 


(vi)                              the
amount of royalty due thereon, or, if no royalties are due to TJU 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 TJU with
each such Royalty Report the amount of royalty due with respect to such half
(1/2) year.


 


(c)                                  All payments due hereunder shall
be deemed received when funds are credited to TN’s bank account and shall be
payable by check or wire transfer in United States dollars. Conversion of
foreign currency to U.S. dollars shall be made in accordance with LICENSEE’s
standard accounting practices relating to recognition of revenue from foreign
sales. No transfer, exchange, collection or other charges shall be deducted
from such payments.


 


(d)                                 Late payments shall be subject
to a charge of one and one-half percent (1.5%) per month, or $250, whichever is
greater.


 


5.5                                 In the event of acquisition,
merger, change of corporate name, or reorganization, LICENSEE shall notify TJU
in writing within thirty (30) days of such event and provide TJU with
reasonable assurance that such changes shall not effect payment to TJU or the
commercialization of the LICENSED PRODUCT and or LICENSED PROCESS.


 


5.6                                 If LICENSEE or any AFFILIATE or
sublicensee (or optionee) does not qualify as a “small entity” as provided by
the United States Patent and Trademark Office, LICENSEE must notify TX
immediately.


 


ARTICLE
VI

RECORD KEEPING


 


6.1                                 LICENSEE shall keep, and shall
require its AFFILIATES and sublicensees to keep, accurate records (together
with supporting documentation) of LICENSED PRODUCTS made, used or sold under
this Agreement, appropriate to determine the amount of royalties due to TJU
hereunder. Such records shall be retained for at least three (3) years
following the end of the reporting period to which they relate. They shall be
available during normal business hours for examination by an accountant
selected by TJU, for the sole purpose of verifying reports and payments
hereunder. In conducting examinations pursuant to this Section, TJU’s
accountant shall have access to all records which TJU reasonably believes to be
relevant to the calculation of royalties under Article IV.


 


6.2                                 TJU’s accountant shall not
disclose to TJU any information other than information relating to the accuracy
of reports and payments made hereunder.


 


6.3                                 Such examination by TJU’s
accountant shall be at TJU’s expense, except that if such examination shows an
underreporting or 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 TJU had the LICENSEE


 


8

















 


reported correctly, plus interest on said sum
at the rate of one and one-half percent (1.5%) per month.


 


ARTICLE
VII

DOMESTIC AND FOREIGN PATENT FILING AND MAINTENANCE


 


7.1                                 Upon execution of this
Agreement, LICENSEE shall reimburse TJU for fifty percent (50%) of all
reasonable expenses TJU has incurred for the preparation, filing, prosecution
and maintenance of PATENT RIGHTS prior to the execution date of this Agreement.
Eight (8) months after execution of this Agreement, LICENSEE shall
reimbursed TJU for the remaining fifty percent (50%) of all reasonable expenses
TJU has incurred for the preparation, filing, prosecution and maintenance of
PATENT RIGHTS prior to the execution date of this Agreement. The entire amount
of such expenses total $23,081.53 as of March 31, 2003, which amount shall
be supported by copies of invoices received or generated by TJU.


 


After execution date of this agreement, LICENSEE shall reimburse TJU
for all such future reasonable expenses upon receipt of invoices from TJU. Late
payment (thirty (30) days from first invoice) of these invoices shall be
subject to ‘interest charges of one and one-half percent (1.5%) per month.


 


7.2                                 TJU shall be responsible for the
preparation, filing, prosecution and maintenance of any and all patent
applications and patents included in PATENT RIGHTS. TJU will instruct counsel
to directly notify TJU and LICENSEE and provide them copies of any official
communications from the United States and foreign patent offices relating to
said prosecution, and to provide LICENSEE and TJU with advance copies of all
relevant communications to the various patent offices, so that LICENSEE, may be
informed and apprised of the continuing prosecution of patent applications in
PATENT RIGHTS. LICENSEE shall have reasonable opportunities to participate in
decision making on all key decisions affecting filing, prosecution and
maintenance of patents and patent applications in PATENT RIGHTS. TJU will use
reasonable efforts to incorporate LICENSEE’s reasonable suggestions regarding
said prosecution. TJU shall use all reasonable efforts to amend any patent
application to include claims reasonably requested by LICENSEE to protect
LICENSED PRODUCTS.


 


7.3                                 TJU 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 TILT to execute
such papers and instruments so as to enable TJU to apply for, to prosecute and
to maintain patent applications and patents in TN’s name in any country. 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. In particular, LICENSEE
must immediately notify TJU if LICENSEE or any AFFILIATE or sublicensee (or
optionee) does not qualify as a “small entity” as provided by the United States
Patent and Trademark Office.


 


9

















 


7.4                                 LICENSEE may elect to surrender
its PATENT RIGHTS in any country upon sixty (60) days written notice to TJU. Such
notice shall not relieve LICENSEE from responsibility to reimburse TJU 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
VIII

INFRINGEMENT


 


8.1                                 With respect to any PATENT
RIGHTS that are exclusively licensed to LICENSEE 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. TJU agrees to notify LICENSEE
promptly of each infringement of such patents of which TJU 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 TJU and to
potential effects on the public interest in making its decision whether or not
to prosecute.


 


8.2                                 (a) If LICENSEE elects to
commence an action as described above, TJU shall, to the extent permitted by
law, join as a party in that action and TJU shall cooperate fully with LICENSEE
in connection with any such action.


 


(b)                                 LICENSEE shall reimburse TJU for
any costs TJU incurs, including reasonable attorneys’ fees, as part of an
action brought by LICENSEE.


 


8.3                                 If LICENSEE elects to commence
an action as described above, LICENSEE may deduct from its royalty payments to
TJU with respect to the patent(s) subject to suit an amount not exceeding
fifty percent (50%) of LICENSEE’s expenses and costs of such action, including
reasonable attorneys’ fees; provided, however, that such reduction shall not
exceed fifty percent (50%) of the total royalty due to TJU with respect to the
patents) subject to suit for each calendar year. If such fifty percent (50%) of
LICENSEE’s expenses and costs exceeds the amount of royalties deducted by LICENSEE
for any calendar year, LICENSEE may to that extent reduce the royalties due to
TJU from LICENSEE in succeeding calendar years, but never by more than fifty
percent (50%) of the total royalty due in any one year with respect to the
patent(s) subject to suit.


 


8.4                                 No settlement, consent judgment
or other voluntary final disposition of the suit that materially adversely
affects TJU’s rights may be entered into without the prior written consent of
TJU, which consent shall not be unreasonably withheld.


 


8.5                                 Recoveries or reimbursements
from actions commenced pursuant to this Article shall first be applied to
reimburse LICENSEE and TJU for litigation costs not paid from royalties and
then to reimburse TJU for royalties deducted by LICENSEE pursuant to Section 8.3.


 


Any additional recoveries shall shared by LICENSEE and TJU, 75% to
LICENSEE and 25% to TJU.


 


8.6                                 If LICENSEE elects not to
exercise its right to prosecute an infringement of the PATENT RIGHTS pursuant
to this Article, TJU may do so at its own expense, controlling such 


 


10

















 


action and retaining all recoveries therefrom. LICENSEE shall cooperate
fully with TJU in connection with any such action.


 


8.7                                 Without limiting the generality
of Section 8.6, TJU may, at its election and by notice to LICENSEE,
establish a time limit of ninety (90) days for LICENSEE to decide whether to
prosecute any infringement of which TJU is or becomes aware. If, by the end of
such ninety (90) day period, LICENSEE has not commenced such an action, TJU 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 TJU in good faith, LICENSEE shall pay over to TJU any payments
(whether or not designated as “royalties”) made by the alleged infringer to
LICENSEE under any existing or future sublicense authorizing LICENSED PRODUCTS,
up to the amount of TJU’s unreimbursed litigation expenses (including, but not
limited to, reasonable attorneys’ fees).


 


8.8                                 If a declaratory judgment action
is brought naming LICENSEE as a defendant and alleging invalidity of any of the
PATENT RIGHTS, TJU may elect to take over the sole defense of the action at its
own expense. LICENSEE shall cooperate fully with TJU in connection with any
such action.


 


ARTICLE
IX

TERMINATION OF AGREEMENT


 


9.1                                 This Agreement, unless
terminated as provided herein, shall remain in effect until the last patent or
patent application containing a VALID CLAM in PATENT RIGHTS has expired or been
abandoned.


 


9.2                                 TJU may terminate this Agreement
as follows:


 


(a)                                  If LICENSEE does not make a
payment due hereunder and fails to cure such non-payment (including the payment
of interest in accordance with Section 5.4(e)) within thirty (30) days
after the date of notice in writing of such non-payment by TJU.


 


(b)                                 If LICENSEE defaults in its
obligations under Sections 10.4 to procure and maintain insurance.


 


(c)                                  If, at any time after five years
from the date of this Agreement, TJU determines that the Agreement should be
terminated pursuant to Section 3.2(d).


 


(d)                                 If LICENSEE shall become
insolvent, shall make an assignment for the benefit of creditors, shall have
been declared bankrupt by a court of competent jurisdiction, makes use of any
law or regulation for relief from creditors, or reorganizes or restructures in
order to avoid creditors. Such termination shall be effective immediately upon
TJU giving written notice to LICENSEE.


 


11

















 


(e)                                  If an examination by TJU’s
accountant pursuant to Article VI shows an underreporting or underpayment
by LICENSEE in excess of twenty percent (20%) for any twelve (12) month period
and in excess of fifty thousand dollars ($50,000).


 


(f)                                    If LICENSEE is convicted of, or
pleads no-lo-contendere to, a
felony relating to the manufacture, use, or sale of LICENSED PRODUCTS.


 


(g)                                 Except as provided in
Subsections (a), (b), (c), (d), (e) and (f) above, if LICENSEE
defaults in a material respect in the performance of any obligations under this
Agreement and the de fault has not been remedied within sixty (60) days after
the date of notice in writing of such default by TJU.


 


9.3                                 LICENSEE shall provide, in all
sublicenses granted by it under this Agreement, that such sublicenses shall
survive the termination of this Agreement and that LICENSEE’s interest in such
sublicenses shall be assigned to TJU upon termination of this Agreement;
provided, however, that TJU shall not be subject to LICENSEE’s obligations to
its sublicensees under such assigned sublicenses.


 


9.4                                 LICENSEE may terminate this
Agreement by giving ninety (90) days advance written notice of termination to
TJU. Upon termination, LICENSEE shall submit a final Royalty Report to TJU and
any royalty payments and un-reimbursed patent expenses due to TJU shall become
immediately payable. Upon termination by LICENSEE, all obligations and duties
under this LICENSEE shall cease and terminate and LICENSEE agrees to execute
all reasonable documentations requested evidencing such termination.


 


9.5                                 Sections 6.1, 6.2, 6.3, 8.5,
9.5, 10.2, 10.4, 10.5 and 10.8 of this Agreement shall survive termination.


 


ARTICLE
X

GENERAL


 


10.1                           TJU does not warrant the
validity of the PATENT RIGHTS licensed here under 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 AFFILLIATE, or sublicensee
without infringing other patents.


 


10.2                           TJU EXPRESSLY DISCLAIMS ANY AND
ALL IMPLIED OR EXPRESS WARRANTIES AND MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILIT’ OR FITNESS FOR ANY PARTICULAR PURPOSE OF THE PATENT RIGHTS OR
INFORMATION SUPPLIED BY TJU, LICENSED PROCESSES OR LICENSED PRODUCTS
CONTEMPLATED BY THIS AGREEMENT


 


12

















 


10.3                           SECTION LEFT BLANK


 


10.4                           (a) LICENSEE shall
indemnify, defend and hold harmless TJU 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 (collectively, the “INDEMNITEES”), from and against any claim,
liability, cost, expense, damage, deficiency, loss or obligation of any kind or
nature (including, without limitation, reasonable attorney’s fees and other
costs and expenses of litigation) (collectively, “Claims”), based upon, arising
out of, or otherwise relating to any cause of action relating to product
liability concerning any product, process, or service made, used or sold
pursuant to any right or license granted under this Agreement.


 


(b)                                 LICENSEE shall, at its own
expense, provide attorneys reasonably acceptable to TJU to defend against any
actions brought or filed against any Indemnitee hereunder with respect to the subject
of indemnity contained herein, whether or not such actions are rightfully
brought.


 


(c)                                  Beginning at the time 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 and
naming the Indemnitees as additional insureds. 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 TJU shall reasonably require, naming the TJU as additional
insureds. Such commercial general liability insurance shall provide:  (i) product liability coverage; and (ii) broad
form contractual liability coverage for LICENSEE’s indemnification under this
Agreement. If LICENSEE elects to self-insure all or part of the limits
described above (including deductibles or retentions which are in excess of
$250,000 annual aggregate) such self-insurance program must be reasonably
acceptable to TJU. 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 TJU with
written evidence of such insurance upon request of TJU. LICENSEE shall provide
TJU with written notice at least fifteen (15) days prior to the cancellation,
non-renewal or material change in such insurance; if LICENSEE does not obtain
replacement insurance providing comparable coverage within such fifteen (15)
day period, TJU shall have the right to terminate this Agreement effective at
the end of such fifteen (15) 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,


 


13

















AFFILIATE or agent of LICENSEE; and (ii) a reasonable period after
the period referred to in Subsection (e)(i) above which in no event shall
be less than fifteen (15) years.


 


10.5                           LICENSEE shall not use TJU’s
name or insignia, or any adaptation of them, or the name of any of TJU’s
inventors in any advertising, promotional or sales literature without the prior
written approval of TJU except in announcing to the public the existence of
this agreement, consistent with LICENSEE’s legal responsibility as a public
company.


 


10.6                           This License Agreement and the
rights and duties hereunder may not be assigned by either party without first
obtaining the written consent of the other which consent will not be
unreasonably withheld. Any such purported assignment, without the written
consent of the other party, will be null and of no effect. Notwithstanding the
foregoing, LICENSEE may assign this License Agreement to a purchaser, or
successor in-interest or acquirer of substantially all of the LICENSEE’s assets
or business and/or pursuant to any reorganization qualifying under section 368
of the Internal Revenue Code of 1986 as amended, as may be in effect at such
time.


 


10.7                           The interpretation and
application of the provisions of this Agreement shall be governed by the laws
of the Commonwealth of Pennsylvania.


 


10.8                           LICENSEE shall 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 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 TJU harmless in
the event of any legal action of any nature occasioned by such violation.


 


10.9                           LICENSEE agrees:  (i) to obtain all regulatory approvals
required for the manufacture and sale of LICENSED PRODUCTS and LICENSED
PROCESSES; and (ii) 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.


 


10.10                     Any notices to be given
hereunder shall be sufficient if signed by the party (or party’s attorney)
giving same and either: (i) delivered in person; (ii) mailed certified
mail return receipt requested; or (iii) faxed to other party if the sender
has evidence of successful transmission and if the sender promptly sends the
original by ordinary mail, in any event to the following addresses:


 


14

















 


If to LICENSEE:


 


Spliceomix, Inc.


416 S. 10th St.


Philadelphia, PA 
19107


Attention: 
President


 


If to TJU:


 


University Office for Technology Transfer


Thomas Jefferson University


1020 Locust Street


Philadelphia, PA 
19107


Attention: 
Director, University Office of Technology Transfer 


Fax:  (215)
923-5835


 


With copy to University Counsel at


 


University Counsel


1020 Walnut Street


Philadelphia, PA 
19107


 


By such notice either party may change their address for future
notices.


 


Notices delivered in person shall be deemed given on the date delivered.
Notices sent by fax shall be deemed given on the date faxed. Notices mailed
shall be deemed given five (5) days following the date postmarked on the
envelope.


 


10.11                     Should a court of competent
jurisdiction later hold any provision of this Agreement to be invalid, illegal,
or unenforceable, and such holding is not reversed on appeal, 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.


 


10.12                     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  :conflict 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 promptly 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 legal proceedings based on such
controversy or claim would be barred by the applicable statute of limitation. Such
arbitration shall be held in Philadelphia, Pennsylvania. 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. The prevailing party in any arbitration shall be afforded
reasonable costs and attorney fees.


 


15

















 


10.13                     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.


 


16

















 


IN
WITNESS WHEREOF, the parties hereto have caused this
Exclusive License Agreement to be executed by their duly authorized representatives.


 


 


	
  Thomas
  Jefferson University

  	
   

  	
  Spliceomix

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  /s/Jussi J.
  Saukkonen M.D.

  	
   

  	
  /s/Anthony
  Giordano

  	
   

  
	
  Jussi J.
  Saukkonen M.D.

  Vice President for Science 

  Policy, Technology 

  Development, and International Affairs

  	
  Anthony
  Giordano 

  Interim President

  
	
   

  	
   

  
	
   

  	
    4/24/03
  

  	
   

  
	
   Date

  	
  Date

  



 


17

















 


Appendix A


 


The following comprise
PATENT RIGHTS:


 


Case number: WON_ALB.002


 


Title: “Reagents and
Processes For Targeting Mutant Epidermal Growth Factors”


 


Inventor


 


18