EX-10.52 LICENSE AGREEMENT



 





Exhibit 10.52




LICENSE AGREEMENT



This License Agreement (“Agreement”) is dated and effective as of the last signature date below
(“Effective Date”), and is made by and between (1) the UNIVERSITY COLLEGE CARDIFF CONSULTANTS
LIMITED (“CARDIFF”), a company incorporated under the laws of England and Wales whose address is
30-36 Newport Road, Cardiff, CF24 0DE, United Kingdom, (2) CARDIFF UNIVERSITY (“the UNIVERSITY”),
whose principal office is at 30-36 Newport Road, Cardiff, CF24 0DE, (3) Katholieke Universiteit
Leuven, more specifically its Rega Institute for Medical Research, having offices at
Minderbroedersstraat 10, B-3000 Leuven, Belgium, represented for the purpose of this Agreement by
K.U. Leuven Research & Development, with headquarters in Belgium at 3000 Leuven,
Minderbroedersstraat 8A, (represented by Prof. Dr. ir. K. Debackere, Managing Director and P. Van
Dun, General Manager) (“KUL”) and (4) INHIBITEX, INC., a Delaware corporation whose address is 9005
Westside Parkway, Alpharetta, GA 30004 (“Inhibitex”).




     In consideration of the mutual covenants and promises contained in this Agreement and
intending to be legally bound, the parties agree as follows:


CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY ASTERISKS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION, PURSUANT TO RULE 24B-2 UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.




ARTICLE 1. DEFINITIONS





	1.1.	 	“Affiliate” means any corporation or non-corporate entity that controls, is controlled by, or
is under common control with a Party to this agreement. A corporation or non-corporate
entity is to be regarded as in control of a corporation if it owns, or directly or indirectly
controls, at least fifty percent (50%) of the voting stock of the other corporation, or (i) in
the absence of the ownership of at least fifty percent (50%) of the voting stock of a
corporation or (ii) in the case of a non-corporate business entity, or non-profit corporation,
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 entity, as applicable. For
purposes of this Agreement, an entity can be either an Affiliate or a Sublicensee, but not
both. If an entity meets the definition of “Affiliate,” it shall be treated herein as an
Affiliate for all purposes, even if it has also entered into a Sublicense.
	 
	1.2.	 	“Field” means any and all anti-viral uses including but not limited to prophylaxis, diagnosis
or treatment of a condition, infection or disease associated with a virus.
	 
	1.3.	 	“Licensed Patents” means the (i) patent applications listed in Appendix A, (ii) United States
patents that may issue from the patent applications listed in Appendix A and from divisionals
and continuations and continuations-in-part of such United States patents and patent
applications, (iii) all foreign counterparts of such patent applications, and all patents that
issue thereon anywhere in the world, including reexamined and reissued




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		 	patents. Licensed
Patents shall also mean (iv) with respect to the matters described in clauses (i), (ii) and
(iii) above, all provisionals, renewals, re-examinations, patents of addition, supplementary
protection certificates, extensions, restorations of patent terms, letters of patent,
registration or confirmation patents and reissues of such patents or patent applications.
	 
	1.4.	 	“Licensed Product” means any product, service, or process in the Field, the manufacture, use,
or sale of which, but for the license granted herein, would infringe at least one Valid Claim.
	 
	1.5.	 	“Licensee” means Inhibitex, Inc. and its Affiliates.
	 
	1.6.	 	“Net Sales” means, subject to paragraph 3.2(c), the gross amount paid to and received by
Licensee as consideration for the sale by Licensee of Licensed Product in an arms length
transaction to any third party that is not an Affiliate, less the following deductions:






	 	(a). 	 	 credits actually given for rejected, defective, recalled, or returned Licensed
Product or because of charge backs, refunds, rebates, or retroactive price reductions;
	 
	 	(b). 	 	 freight and insurance costs and any other outbound transportation charges, if
separately stated on the invoice or purchase order or other document of sale paid by
the customer; and
	 
	 	(c). 	 	 excise taxes and customs duties included in the invoiced amount;
	 
	 	(d). 	 	 other taxes (including but not limited to tariffs, duties, excises, sales,
value added, consumption or other taxes) imposed and paid in connection with the
production, sale, use, or delivery of Licensed Products (consistent with industry
practice); and
	 
	 	(e). 	 	 customary cash discounts, rebates or charge backs actually granted, allowed,
taken or incurred in connection with the sale of such Licensed Product, or granted or
given to or imposed by governmental authorities and managed care systems (that is,
systems that integrate the financing and delivery of healthcare services to covered
members, including but not limited to, pharmacy benefit managers (PBMs), prescription
drug plans (PDPs), health maintenance organizations (HMOs), preferred provider
organizations (PPOs), independent practice associations (IPAs) and other similar
healthcare organizations), wholesalers and other distributors, buying groups, health
care insurance carriers, pharmacy benefit management companies, health maintenance
organizations or other institutions or health care organizations (including, without
limitation, any payments in respect of sales to any governmental authorities or with
respect to any government-subsidized program or managed care organization and any
discounts and rebates for any program for the benefit of low income, uninsured or other
patients who receive the opportunity to receive Licensed Products at discounted
prices).






	 	 	In the case of sales of Licensed Products other than at arm’s length (other than supplies of
Licensed Products to the UNIVERSITY) Net Sales will be equivalent to the price at which
Licensed Products would have been invoiced in a sale at arm’s length less deductions
referred to in (a) to (e) above. Transfers among Affiliates are not considered sales and
are not included in Net Sales; however the number of transfers shall be reported to CARDIFF
in the reports of sales described in Article 4 below.




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	1.7.	 	“Parties” means CARDIFF, the UNIVERSITY, KUL and Inhibitex. Party means one of CARDIFF, the
UNIVERSITY, KUL and Licensee.
	 
	1.8.	 	“Patent Expenses” means the reasonable actual and documented out of pocket documented costs
paid to third parties by CARDIFF in prosecuting and maintaining the Licensed Patents.
	 
	1.9.	 	“Sublicense” means a grant of all or part of the rights to Licensed Patents that are granted
to Licensee by this Agreement, made by (a) Licensee; (b) a person or entity that has licensed
such rights from Licensee; or (c) by a person or entity that has received such rights from a
person or entity that licensed such rights from Licensee.
	 
	1.10.	 	“Sublicensee” means any person or entity entering into a Sublicense.
	 
	1.11.	 	“Territory” means the world.
	 
	1.12.	 	“Valid Claim” means a claim in an unexpired patent or patent application included in the
Licensed Patents, so long as such claim shall not have been irrevocably abandoned or held
invalid in an unappealed or unappealable decision of a court or other authority of competent
jurisdiction; it being understood that, if a claim of a pending patent application has not
issued as a claim of an issued patent within eight (8) years after the original filing date of
the pending application containing such claim, such pending claim shall cease to be a Valid
Claim for purposes of this Agreement unless and until such claim becomes an issued claim of an
issued patent. If such claim later issues then royalties for sales, which but for a license,
would infringe the claim shall be paid for the period beginning on the original filing date of
the claim until such time the claim ceases to be a Valid Claim.





ARTICLE 2. GRANT OF LICENSE AND OPTION





	2.1.	 	Grant. Subject to the reservations in this Article and payment obligations in Article 3,
CARDIFF and KUL grant to Licensee the exclusive right and license under the Licensed Patents
to make, have made, use, import, offer for sale, and sell in the Territory, Licensed Products
during the term of this Agreement including Licensee’s right to grant sublicenses pursuant to
paragraph 2.3. In no event shall this grant take effect until Licensee has paid to CARDIFF
and KUL the initial license payments in paragraph 3.1.
	 
	2.2.	 	Reservation of Rights.






	 	(a). 	 	 The license granted in paragraph 2.1 is subject to reserved, non-exclusive
licenses of the UNIVERSITY and KUL, transferable to their not-for-profit academic
collaborators, to practice the Licensed Patents in the Field, only for the purpose of
non-commercial scientific inquiry, academic research, and education. This reservation
does not extend to any research funded by any non-academic or for profit entity. Any
materials within the scope of the Licensed Patents sent to a not-for-profit academic
collaborator outside of the UNIVERSITY or KUL for use in the Field will be sent using a
material transfer agreement stating that the materials and results derived from them
will be used solely for not-for-profit academic purposes and that the materials will
not be transferred to any third party without the express written permission of the
UNIVERSITY or KUL.




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	2.3.	 	Sublicenses. Licensee may grant sublicenses of any and all rights granted to Licensee
herein, and Licensee may authorize its sublicensees to grant sub-sublicenses. Such
Sublicenses shall not contain terms and conditions that conflict with those included in this
Agreement. Licensee shall provide to CARDIFF a complete copy of all Sublicenses within thirty
(30) days after execution, subject to confidentiality terms acceptable to the respective
Sublicensee. The existence, terms and conditions of such sublicenses are the confidential
information of Licensee.






	 	(a). 	 	 Licensee shall remain fully responsible for the operations of Sublicensees that
are relevant to this Agreement as if such operations were carried out by Licensee.
Licensee is responsible for payments owed to CARDIFF and KUL and triggered by
activities of Sublicensees such as milestone payments (Appendix D).
	 
	 	(b). 	 	 No fees are owed directly to CARDIFF or KUL by a Sublicensee as a result of
entering into a Sublicense.
	 
	 	(c). 	 	 Licensee shall include, or shall cause to be included, in all Sublicenses a
provision requiring the Sublicensee to indemnify CARDIFF and KUL and maintain liability
coverage to the same extent that Licensee is so required under this Agreement, and a
provision granting CARDIFF the right to audit Sublicensee to the same extent that
CARDIFF may audit Licensee hereunder.
	 
	 	(d). 	 	 Upon termination of this Agreement by both CARDIFF and KUL for any reason, all
Sublicences will terminate. In no event does CARDIFF or KUL have any obligations to a
Sublicensee whatsoever with respect to (i) any past, current, or future obligations
Licensee may have had, or may in the future have pursuant to such Sublicense, and (ii)
any future obligations to Sublicensee beyond those to Licensee in this Agreement.






	2.4.	 	No Other Obligations. Except as expressly stated in this Agreement, none of CARDIFF, KUL or
the UNIVERSITY faculty, staff, employees, or students are obligated to report or deliver to
Licensee or its Sublicensees under this Agreement any compounds, derivatives, technical
information, know-how, data, or other tangible materials of any kind related to the Licensed
Patents.
	 
	2.5.	 	New Inventions Outside the Field.






	 	(a). 	 	 Option. If, during the term of this Agreement, Licensee first conceives of or
reduces to practice a new, patentable invention outside the Field, the manufacture,
use, or sale of which, but for a license, would infringe at least one Valid Claim (“New
Invention”), Licensee must inform CARDIFF of such New Invention in writing within sixty
(60) days of its conception or reduction to practice and CARDIFF and KUL each hereby
grant to Licensee an option to acquire an exclusive, royalty-bearing, commercial
license (i) to Licensed Patents outside the Field only as necessary for Licensee to
make, have made, use, import, offer for sale and/or sell in the Territory the New
Invention; and (ii) to any and all of CARDIFF’s or KUL’s ownership interest (if any) in
the New Invention (the “Option Rights”). The period of Licensee’s option will begin on
the date that Licensee provides written notice to CARDIFF and KUL of the New Invention
and will expire ninety (90) days thereafter (“Option Period”).




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	 	(b). 	 	 Exercise of Option. At any time during the Option Period, Licensee may
exercise the option by written notice to CARDIFF and KUL, whereupon each of the
following shall be deemed to have occurred effective as of the exercise of such option:
(x) the “Field” shall be deemed to include the New Invention; and (y) the “Licensed
Product” shall be deemed to include the New Invention and, accordingly, the grant of
rights under paragraphs 2.1 and 2.2 and 2.3 shall be deemed to include right to develop
and commercialize the New Invention.






	2.6.	 	No Implied License. The license and rights granted in this Agreement do not confer any
rights upon Licensee as to any patents or technology not specifically identified in this
Agreement as part of Licensed Patents.





ARTICLE 3. CONSIDERATION





	3.1.	 	Initial License Payments and Requirements. The grant of rights and license to the Licensed
Patents set out in paragraphs 2.1 and 2.3 shall only become effective after Licensee has met
the following pre-conditions:






	 	(a). 	 	 Licensee shall, on the Effective Date, pay CARDIFF a non-refundable up-front
one time licensing fee in the amount of [*****]; and pay KUL a non-refundable up-front
one time licensing fee in the amount of [*****]
	 
	 	(b). 	 	 Licensee shall, on the Effective Date, execute the sponsored research agreement
(“SRA”) with UNIVERSITY attached hereto as Appendix H.






	3.2.	 	Royalty for Sales by Licensee. For sales of Licensed Products by Licensee, or an assignee of
this Agreement, CARDIFF and KUL shall be paid the following royalties:






	 	(a). 	 	 Royalty. Licensee shall pay CARDIFF a royalty of [*****] and KUL a royalty of
[*****] on the total Net Sales of Licensed Products sold by Licensee, provided that if
there is no Valid Claim in a given country that would be infringed by Licensee but for
the license granted herein, then a royalty of [*****] is owed to each of CARDIFF and
KUL on sales of Licensed Products in such non-patent country, and further provided that
no royalty is due in such non-patent country for any period during which there is a
competing product for sale (i.e. a product which would infringe a Valid Claim if a
claim existed in such non-patent country). Only one royalty shall be paid to each of
CARDIFF and KUL per Licensed Product regardless of the number of Licensed Patents that
would be infringed by the Licensed Product absent the license granted herein. Further,
only one Net Sale of a given Licensed Product shall be subject to a royalty payment
regardless of how many arms length transactions may occur between manufacture of the
Licensed Product and purchase by the final end user. The royalty shall be increased
from [******] to [******] for each of KUL and Cardiff to the extent that Net Sales in a
given year exceed [*****] and to [*****] to the extent that Net Sales in a given year
exceed [*****]
	 
	 	(b). 	 	 Calculation of Royalties. If Licensee’s making, having made, offer for sale
or sale of a Licensed Product would infringe rights of a third party but for a license,
then Licensee may reduce the royalty percentage owed to each of CARDIFF and




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	 	 	 	KUL on Net
Sales of such Licensed Product by any reasonable royalty or other amounts actually paid
to such third party by Licensee on such sale of Licensed Product for such license, but
under no circumstances may Licensee reduce such royalty percentage by more than [*****]
per annum (and any unapplied amounts may be carried forward for credit as provided
above in subsequent years). For the avoidance of doubt, the Licensee shall calculate
any reduction in the royalty percentage annually and such percentage shall always be
applied to the full royalty due to each of CARDFIFF and KUL under 3.2 (a).
	 
	 	(c). 	 	 Combination Product Royalties. A Combination Product means any pharmaceutical
product which consists of a Licensed Product and one or more other active compounds
and/or active ingredients. In the event a Licensed Product is sold as part of a
Combination Product, the Net Sales from the Combination Product, for the purposes of
determining royalty payments, shall be determined by multiplying the Net Sales of the
Combination Product, during the applicable royalty reporting period, by the fraction,
A/(A+B), where A is the average net sales price of the Licensed Product when sold
separately in finished form and B is the average net sales price of the other active
product(s) included in the Combination Product when sold separately in finished form,
in each case during the applicable royalty reporting period or, if sales of both the
Licensed Product and the other active product(s) did not occur in such period, then in
the most recent royalty reporting period in which sales of both occurred. In the event
that such average net sales price cannot be determined for both the Licensed Product
and all other active products(s) included in the Combination Product, Net Sales for the
purposes of determining royalty payments shall be calculated by multiplying the Net
Sales of the Combination Product by the fraction of C/(C+D) where C is the applicable
cost of goods amount of the Licensed Product in the Combination Product and D is the
applicable cost of goods amount of the active product(s) included in the Combination
Product. In the event of any disagreement as to the respective average net sales price
or cost of goods amount in the Combination Product, these amounts shall be determined
by a three member panel of qualified independent third parties, one chosen by each
Party and the third chosen by the first two. The determination of the panel shall be
made within twenty (20) business days following written submissions by the Parties and
a one day oral hearing. The determination of the panel shall be final and binding on
the Parties and the Party whose aggregate costs of goods calculation is deemed by the
panel to be less accurate shall bear all of the legal costs and expenses associated
with such proceedings.
	 
	 	(d). 	 	 Notwithstanding the foregoing, whether through agreement between the Parties or
through decision by the panel, the royalty due to CARDIFF and KUL on sales of
Combination Products shall not be reduced by more than [*****]of Net Sales of the
Combination Products.






	3.3.	 	Royalty for Sales by Sublicensee. Royalties received by Licensee from a Sublicensee are
subject to paragraph 3.5 and are included in the definition of “Sublicense Payment” in
Appendix C.




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	3.4.	 	Annual License Maintenance Fees. Licensee shall pay to CARDIFF and KUL an annual license
maintenance fee as set forth in Appendix B no later than thirty (30) days after each
anniversary of the Effective Date; provided, however that Licensee shall have no obligation to
pay an annual license maintenance fee in any year that royalty payments are greater than the
Appendix B amount. Only one annual license maintenance fee is due to each of CARDIFF and KUL
by Licensee in any calendar year regardless of the number of patents within the Licensed
Patents, and regardless of the number of Sublicensees.
	 
	3.5.	 	Sublicense Fees. In addition to other payments required under this Article 3, in the event
that Licensee grants a Sublicense under one or more of the Licensed Patents, Licensee agrees
to pay CARDIFF and KUL Sublicense Fees as set forth and defined in Appendix C. The payment
shall be made thirty (30) days following receipt by Licensee of the relevant payment from the
Sublicensee. Sublicense Fees are only due if and when Sublicense Payments are actually
received by Licensee from a Sublicensee. Notwithstanding the definition of Sublicense and
Sublicensee at paragraphs 1.11 and 1.12 above and paragraph 2.3 (a), no Sublicense Fees are
due or payable to CARDIFF or KUL by Licensee arising from any sublicense granted by a
Sublicensee or any other transaction entered into between a third party and a Sublicensee of
Licensee.
	 
	3.6.	 	Milestone Payments. Licensee agrees to make milestone payments to CARDIFF and KUL as set
forth in Appendix D. Each milestone payment is owed whether the milestone is achieved by
Licensee or by a Sublicensee. If the milestone is achieved by Licensee, Licensee shall inform
CARDIFF and KUL within thirty (30) days of the event and the payment shall be made within
thirty (30) days of the notice of each event being served to CARDIFF and KUL. If the
milestone is achieved by a Sublicensee, Licensee shall inform CARDIFF and KUL within sixty
(60) days of Licensee’s knowledge of the event and payment shall be made within thirty (30)
days of notice of each event being served to CARDIFF and KUL.
	 
	3.7.	 	Reimbursement for Patent Expenses. Licensee shall reimburse CARDIFF for all un-reimbursed
Patent Expenses (in no event to exceed [*****] dollars) in the aggregate) incurred before the
Effective Date. Thereafter, Licensee shall reimburse CARDIFF for all un-reimbursed Patent
Expenses incurred for each patent or patent application within the Licensed Patents for which
Licensee is the only licensee of CARDIFF (excluding Sublicensees). For Licensed Patents where
there are one or more additional licensees of CARDIFF other than Licensee (excluding
Sublicensees), Licensee shall reimburse CARDIFF a pro rata share of Patent Expenses based upon
the number of aggregate licensees; for example, Licensee would reimburse CARDIFF for [******]
of Patent Expenses incurred for a patent having one other direct licensee of CARDIFF. Upon
entering into the first additional license agreement for the Licensed Patents other than with
Licensee (excluding Sublicensees), CARDIFF shall reimburse Licensee for [******] of Patent
Expenses incurred prior to the date of that license agreement. As used herein, un-reimbursed
Patent Expenses shall mean CARDIFF has not received, and has no right to receive,
reimbursement of such expenses from any third party. Licensee shall make such payments within
sixty (60) days of CARDIFF’s invoice date.




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ARTICLE 4. REPORTS AND AUDITS





	4.1.	 	Progress Reports. Within sixty (60) days of each calendar year end, Licensee shall provide
CARDIFF with a written report detailing the current status of the development of a Licensed
Product by Licensee and/or its Sublicensees.
	 
	4.2.	 	Payment Reports. During the term of this Agreement, Licensee shall furnish, or cause to be
furnished, written reports to CARDIFF regarding Net Sales of Licensed Products and any
Sublicense Fees that include all applicable information identified in Appendix C and E.
Licensee shall provide these reports within sixty (60) days of each calendar quarter following
the first sale of Licensed Products or entering into a Sublicense (but, in the case of any
Sublicense, such reports shall be due within ninety (90) days of each calendar quarter
following the first sale of Licensed Products).
	 
	4.3.	 	Audit. Licensee shall keep, and shall cause Sublicensees to keep, accurate records in
sufficient detail such that the amount of any Sublicense Fee or royalty due and payable to
CARDIFF may be verified. During the term of this Agreement and for a period of one year
thereafter, Licensee shall permit CARDIFF or its qualified representatives to inspect, copy,
and audit its books and records, no more than once per calendar year, with respect only to
Sublicense Payments received or the sale of Licensed Products, upon reasonable notice and
during normal business hours. Such books and records include, but are not limited to,
invoice registers and original invoices; product sales reports; price lists, sales ledgers;
accounting general ledgers; sublicense and distributor agreements; price lists; product
catalogues and marketing materials; financial statements and income tax returns; sales tax
returns; and inventory and production records and shipping documents. Such examination shall
be made at CARDIFF’s expense. If such examination determines an underpayment of [******] or
more in the amount of royalty or other payments due CARDIFF for any year, then Licensee shall
reimburse CARDIFF for reasonable out of pocket costs associated with such examination or
audit, including any professional fees. Conversely, if such examination determines an
overpayment was made by Licensee, such overpayments will be refunded or credited against
future amounts owed by Licensee. No separate confidentiality agreement will be required
between the Parties to conduct such an examination or audit provided that any representatives
of CARDIFF agree to be bound by confidentiality terms no less restrictive than those set forth
in Article 10 herein, and the results of the audit shall be treated as Licensee’s Confidential
Information. The Parties agree that CARDIFF or its representative may keep a copy of all
documents provided by Licensee hereunder and all documents created by CARDIFF or its
representative in connection with such examination or audit for archival purposes.





ARTICLE 5. PAYMENTS





	5.1.	 	Payments and Due Dates. Licensee shall pay to CARDIFF and KUL all Sublicense Fees and
royalties attributable to the period covered by each payment report under paragraph 4.2 on the
date such royalty report is due. All other payments, if not otherwise specified in this
Agreement, shall be paid within thirty (30) days after the due date. All payments shall be
made by wire transfer to an account designated by each of CARDIFF




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	 	 	and KUL, or in person, via
U.S. mail or by commercial carrier and in the case of CARDIFF to Dr Nick Bourne at the above
registered CARDIFF address.
	 
	5.2.	 	Currency Conversion. All royalties shall be paid in U.S. dollars. If any Licensed Products
are sold for consideration other than dollars, the Net Sales of such Licensed Products shall
first be determined in the currency of the country in which such sales of Licensed Products
were made and then converted to dollars at a ninety (90) day trailing average published by the
Wall Street Journal (U.S. ed.) for conversion of the foreign currency into dollars on the last
day of the quarter for which such payment is due.
	 
	5.3.	 	Overdue Payments. Without prejudice to any other rights or remedies to which CARDIFF or KUL
may be entitled whether hereunder, in equity or at law, CARDIFF and KUL shall be entitled to
charge interest on any overdue amounts from the date on which payment became due until the
date on which CARDIFF or KUL received payment in full (whether before or after judgment has
been obtained by CARDIFF or KUL against LICENSEE) at the interest rate in force pursuant to
the Late Payment of Commercial Debts (Interest) Act 1998 at the time the interest becomes
chargeable. Any payment not made due to a bona fide dispute between the Parties shall not be
considered an overdue payment until such dispute is resolved in CARDIFF’s or KUL’s favor, at
which point the interest due will have accrued as of the original due date.
	 
	5.4.	 	Termination Report and Payment. Within sixty (60) days after the date of termination or
expiration of this Agreement, Licensee shall make a final report and payment to CARDIFF and
KUL per Articles 4 and 5, respectively.
	 
	5.5.	 	No Refunds or Credits. All amounts paid to CARDIFF or KUL by Licensee pursuant to paragraphs
3.1, 3.4 and 3.6 shall be non-refundable. Any amounts paid to CARDIFF or KUL pursuant
paragraphs 3.2, 3.3, 3.5, or 3.7 in error or subject to correction shall be refunded or
credited against future payments by Licensee.





ARTICLE 6. COMMERCIAL DILIGENCE





	6.1.	 	Commercial Diligence. Licensee shall use commercially reasonable efforts, directly or through
Sublicensees, to bring one or more Licensed Products to market. Satisfactory diligence by a
Sublicensee shall satisfy the diligence obligation of Licensee. Without prejudice to any
other rights or remedies to which CARDIFF and/or the UNIVERSITY may be entitled to whether
hereunder, at law or in equity, LICENSEE will use reasonable endeavours to advise CARDIFF and
the UNIVERSITY promptly if it becomes unlikely that it will be unable to meet its material
obligations hereunder.





ARTICLE 7. PATENT PROSECUTION AND MAINTENANCE





	7.1.	 	Patent Prosecution and Maintenance. Licensee shall be primarily responsible for prosecuting
and maintaining the Licensed Patents using patent counsel reasonably acceptable to both
Parties. CARDIFF shall use reasonable endeavours to cause the inventors on the Licensed
Patents to meet their obligations of disclosure to the U.S. Patent Office. The parties shall
enter into a common interest agreement so that both may




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	 	 	communicate freely with patent
counsel. Licensee shall promptly provide CARDIFF with copies of all filings and
correspondence pertaining to patent prosecution and maintenance activities so as to give
CARDIFF reasonable opportunities to advise and cooperate with Licensee and review and comment
on such patent applications and prosecution documents. Licensee shall consult with CARDIFF as
to the preparation, filing, prosecution, and maintenance of all Licensed Patents reasonably
prior to any deadline or action with the United States Patent & Trademark Office or any
foreign patent office. Licensee and CARDIFF agree to cooperate with each other during the
patent application and prosecution process. Licensee shall notify CARDIFF in writing of the
countries in which Licensee wishes patent applications to be filed, including but not limited
to national phase filings and registrations in countries from regional filings. CARDIFF may,
at its own expense, file patent applications in those countries in which Licensee elects not
to file. Applications filed in non-elected countries will be excluded from the Licensed
Patents; and the expenses therefore shall not be reimbursed by Licensee. Upon ninety (90)
days prior written notice, Licensee may advise CARDIFF that it no longer wishes to continue to
prosecute or maintain one or more Licensed Patents in a particular country. CARDIFF may elect
to continue prosecution and maintenance at its own expense or permit such Licensed Patents in
such countries to be abandoned or lapse. If CARDIFF elects to continue, Licensed Patents in
such countries shall be removed from Licensed Patents.
	 
	7.2.	 	Interferences. Licensee will give CARDIFF prompt written notice upon the declaration of any
interference involving the Licensed Patents. The Parties shall cooperate in the interference
proceeding using counsel acceptable to both parties unless there is a Sublicense, in which
case the counsel shall be chosen by the Sublicensee. In the absence of a Sublicense, fees and
costs incurred in connection with the interference shall be deemed to be Patent Expenses and
shall be reimbursed as provided herein. Licensee may terminate its obligation to reimburse
for interference expenses upon ninety (90) days written notice, and the claims or patent at
issue shall be removed from the Licensed Patents in the United States.
	 
	7.3.	 	Patent Extension. Upon a Party’s request and at Licensee’s pro rata expense CARDIFF shall
apply to the patent office of a given country to have the normal term of any Licensed Patent
extended or restored under a country’s procedure for extending a patent term where such
extension relates to duration of patent prosecution of such patent application. Licensee
shall assist CARDIFF in its efforts to obtain such extension. If extended, Licensee shall be
obligated to make all payments due under this Agreement through the end of the extended patent
term. If after written notice Licensee affirmatively elects not to extend, CARDIFF may at its
own expense obtain such extension, and the license to the non-elected extended Licensed Patent
under this Agreement will expire upon expiration of the natural patent term. No other type of
extension of the term of patent rights or exclusive marketing rights shall be sought by
CARDIFF or any licensee of CARDIFF except with the prior written consent of Licensee, which
consent shall not be unreasonably withheld.




Page 10 of 31









 











ARTICLE 8. REPRESENTATIONS, WARRANTIES, DISCLAIMER,

LIMITATION OF LIABILITY, INDEMNIFICATION, AND INSURANCE





	8.1.	 	CARDIFF and KUL Representations. Licensee relies on the following representations of CARDIFF
and KUL in entering into this Agreement. CARDIFF and KUL each represent that as of the
Effective Date:






	 	(a). 	 	 CARDIFF and KUL are each a proprietor of and applicant for the patent
applications listed in Appendix A;
	 
	 	(b). 	 	 CARDIFF and KUL have each not granted any rights in claimed subject matter of
the Licensed Patents in the Field to a third party;
	 
	 	(c). 	 	 other than those listed in Appendix A, CARDIFF and KUL do not jointly own and
are not jointly licensed under any patents or applications relating to the use of HCV
protide compounds;
	 
	 	(d). 	 	 Neither KUL nor CARDIFF has received any notice that a product or process of a
third party is alleged to infringe any issued patent or allowed claim in the Licensed
Patents, and neither KUL nor CARDIFF has given such notice to any third party;
	 
	 	(e). 	 	 all test results relating to the subject matter disclosed in the Licensed
Patents, as well as any and all other data and information at CARDIFF or KUL relating
to the subject matter disclosed in the Licensed Patents, if requested by Licensee, has
been made available to Licensee;
	 
	 	(f). 	 	 CARDIFF and KUL is each compliant with all of its own policies, and with any
laws or regulations of which non-compliance would be material to this Agreement;
	 
	 	(g). 	 	 after reasonable inquiry with Professor Chris McGuigan, CARDIFF is not aware of
any test results or data that has not been provided or disclosed to Licensee that would
reasonably be expected to have a material adverse impact on Licensee’s evaluation or
the development of the inventions disclosed in the Licensed Patents; and
	 
	 	(h). 	 	 after reasonable inquiry with Professor Johan Neyts, KUL is not aware of any
test results or data that has not been provided or disclosed to Licensee that would
reasonably be expected to have a material adverse impact on Licensee’s evaluation or
the development of the inventions disclosed in the Licensed Patents.






	8.2.	 	CARDIFF and KUL Covenants. CARDIFF and KUL each covenants that during the term of this
Agreement:




Page 11 of 31









 












	 	(a). 	 	 Neither KUL nor CARDIFF will grant any rights in Licensed Patents in the Field
and in the Territory to a third party;
	 
	 	(b). 	 	 CARDIFF will promptly notify Licensee in writing if it receives any notice
that any issued patent or allowed claim in Licensed Patents is invalid or
unenforceable;
	 
	 	(c). 	 	 Each of KUL and CARDIFF will promptly notify Licensee in writing if it receives
any written notice wherein a product or process of a third party is alleged to infringe
any issued patent or allowed claim in the Licensed Patents; and
	 
	 	(d). 	 	 Each of KUL and CARDIFF will use reasonable endeavours to continue to be
compliant during the term of this Agreement with all of its own policies, and with any
laws or regulations material to this Agreement.






	8.3.	 	LICENSEE Representations. CARDIFF and KUL each relies on the following representations of
LICENSEE in entering into this Agreement. LICENSEE represents that as of the Effective Date:






	 	(a). 	 	 LICENSEE is compliant with all of its own policies and with any laws and
regulations of which non-compliance would be material to this Agreement.






	8.4.	 	LICENSEE Covenants. LICENSEE covenants that during the term of this Agreement:






	 	(a). 	 	 LICENSEE will not use the Licensed Patents for any purpose other than as stated
within this Agreement;
	 
	 	(b). 	 	 LICENSEE will not act as an agent of CARDIFF and/or the UNIVERSITY and not give
any indication that it is acting otherwise than as a principal and not make any
representation nor give any warranty on behalf of CARDIFF or the UNIVERSITY;
	 
	 	(c). 	 	 LICENSEE will use reasonable endeavours to commercialize Licensed Products
during the term of this Agreement;






	8.5.	 	Mutual Representations. The Parties each rely on the following representations in entering
into this Agreement. Each Party represents that as of the Effective Date:






	 	(a). 	 	 it has the right, power and authority to enter into this Agreement and to
perform its obligations hereunder;
	 
	 	(b). 	 	 it has taken all necessary corporate action on its part to authorize the
execution and delivery of this Agreement and the performance of its obligations
hereunder;
	 
	 	(c). 	 	 it has obtained all necessary consents, approvals, and authorizations of all
governmental authorities and other entities required in connection with entering




Page 12 of 31









 






	 	 	 	into
this Agreement, except for those the failure of which to obtain would not have a
material adverse effect; and
	 
	 	(d). 	 	 the execution and delivery of this Agreement, including the grant of licenses
or Sublicenses hereunder, and the performance of such Party’s obligations hereunder do
not conflict with or violate or constitute a default of any requirement of applicable
laws or regulations or with any material contractual obligation of such Party.






	8.6.	 	Mutual Covenants. Each Party covenants that during the term of this Agreement:






	 	(a). 	 	 it will take all necessary corporate action on its part to authorize the
performance of its obligations hereunder;
	 
	 	(b). 	 	 it will use commercially reasonable efforts to obtain all necessary consents,
approvals, and authorizations of all governmental authorities and other entities (other
than FDA and other comparable product approvals and product pricing approvals) required
in connection with performance of its obligations under this Agreement, except for
those the failure of which to obtain would not have a material adverse effect; and
	 
	 	(c). 	 	 performance under this Agreement, including the grant of Sublicenses hereunder,
and the performance of each Party’s obligations hereunder will not conflict with or
violate or constitute a default of any requirement of applicable laws or regulations or
with any material contractual obligation of such Party.






	8.7.	 	Disclaimer of Warranties. EXCEPT AS DESCRIBED IN ARTICLE 8, each of KUL and CARDIFF
DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, RELATING IN ANY WAY TO THE
LICENSED PATENT RIGHTS OR LICENSED PRODUCTS, INCLUDING BUT NOT LIMITED TO, THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND LICENSEE AND ITS
SUBLICENSEES ASSUME THE ENTIRE RISK AND RESPONSIBILITY FOR THE SAFETY, EFFICACY, PERFORMANCE,
DESIGN, MARKETABILITY, AND QUALITY OF ALL LICENSED PRODUCTS. NOTHING CONTAINED IN THIS
AGREEMENT SHALL BE CONSTRUED AS EITHER A WARRANTY OR REPRESENTATION BY CARDIFF AS TO THE
VALIDITY OR SCOPE OF THE LICENSED PATENTS.
	 
	8.8.	 	Limitation of Liability. Each of KUL, UNIVERSITY and CARDIFF assumes no liability with
respect to infringement of any patent or other intellectual property right of third parties
due to the activities of Licensee or Sublicensees under this agreement (except with respect to
any breach of this Agreement by CARDIFF). In no event will KUL, UNIVERSITY or CARDIFF, or its
regents, trustees, directors, officers, faculty, students, employees, consultants, and agents
(collectively “KUL, UNIVERSITY and CARDIFF Indemnitees”) be responsible or liable for any
direct, indirect, special, punitive, incidental, or consequential damages or lost profits to
Licensee or Sublicensees,




Page 13 of 31









 






		 	or any other individual or entity arising from the acts or omissions
of Licensee or Sublicensees regardless of legal theory (except with respect to any breach of
this Agreement by CARDIFF, UNIVERSITY or KUL). The above limitations on liability apply even
though KUL, UNIVERSITY, CARDIFF, or any of KUL and CARDIFF Indemnitees, may have been advised
of the possibility of such damage. Licensee shall not make any statements, representations,
or warranties, or accept any liabilities or responsibilities whatsoever, with regard to KUL,
UINVERSITY, CARDIFF or KUL and CARDIFF Indemnitees that are inconsistent with any disclaimer
or limitation included in this agreement.
	 
	8.9.	 	Indemnification. Except with respect to any breach of this Agreement by KUL, UNIVERSITY or
CARDIFF (for which KUL or UNIVERSITY or CARDIFF hereby indemnifies the Licensee): none of
KUL, UNIVERSITY, CARDIFF or KUL or CARDIFF Indemnitees shall have any liability to Licensee or
Sublicensees or any other person or entity for or on account of (and Licensee agrees and
covenants, and agrees to cause each Sublicensee to agree and covenant, not to sue UNIVERSITY
or any KUL or CARDIFF Indemnitee in connection with) any injury, loss, or damage of any kind
incurred by Licensee or Sublicensees or any other person or entity, whether direct, indirect,
special, punitive, incidental, consequential or otherwise arising under any legal theory (and
further excluding without limitation any existing or anticipated profits or opportunities for
profits lost by Licensee or Sublicensees), directly arising out of or in connection with or
resulting from (i) any acts or omissions of Licensee or a Sublicensee relating to this
Agreement, Licensee’s or a Sublicensee’s use of the rights granted under the Licensed Patents,
Licensee’s or a Sublicensee’s Licensed Products, or any of Licensee’s or Sublicensees’
activities undertaken hereunder; (ii) the production, use, or sale of the Licensed Products by
Licensee or a Sublicensee, or (iii) any advertising or other promotional activities of
Licensee or a Sublicensee with respect to either (i) or (ii). Licensee shall indemnify and
hold each of UNIVERSITY, KUL or CARDIFF Indemnitee harmless against all claims, demands,
losses, damages or penalties (including but not limited to reasonable attorney’s fees and
expenses at the pretrial, trial or appellate level) to the extent they are made against any of
UNIVERSITY, KUL or CARDIFF Indemnitee with respect to items (i) through (iii) above, whether
or not such claims are groundless or without merit or basis (except with respect to any breach
of this Agreement by UNIVERSITY, KUL or CARDIFF). UNIVERSITY and KUL and CARDIFF shall
indemnify and hold Licensee and each Sublicensee harmless against all claims, demands, losses,
damages or penalties (including but not limited to reasonable attorney’s fees and expenses at
the pretrial, trial or appellate level) to the extent they are made against UNIVERSITY or KUL
or CARDIFF, Licensee or a Sublicensee in respect to breach of this any representation,
warranty or covenant herein by UNIVERSITY, KUL or CARDIFF, whether or not such claims are
groundless or without merit or basis. The Parties understand and agree that each Party’s
indemnification for any of its respective breaches of its representations, warranties,
covenants and agreements under this Agreement shall include indemnification for attorney’s
fees and expenses.
	 
	8.10.	 	Indemnification Procedure. As a condition to the indemnification under this Agreement, an
indemnified entity (UNIVERSITY, KUL or a CARDIFF Indemnitee,




Page 14 of 31









 






	 	 	Licensee or a Sublicensee as
applicable — each being an “Indemnified Entity”) that intends to claim indemnification under
this Article 8 shall promptly notify Licensee and Sublicensees or UNIVERSITY or KUL or
CARDIFF, as applicable (such indemnifying entity, the “Indemnitor”) of any liability or action
in respect of which the Indemnified Entity intends to claim such indemnification, and the
Indemnitor shall have the right to participate in, and, to the extent the Indemnitor so
desires, jointly with any other Indemnitor similarly noticed, to assume the defense thereof
with counsel selected by the Indemnitor; provided, however, that an Indemnified Entity shall
have the right to retain its own counsel, with the fees and expenses to be paid by the
Indemnified Entity. The indemnity obligations under this Article 8 shall not apply to amounts
paid in settlement of any loss, claim, damage, liability, or action if such settlement is
effected without the consent of the Indemnitor, which consent shall not be unreasonably
withheld. The failure to deliver notice to the Indemnitor within a reasonable time after the
commencement of any such action, to the extent such failure substantially impairs Indemnitor’s
ability to defend such action, shall relieve such Indemnitor of any such liability to the
Indemnified Entity with regard to such action under this Article 8. The Indemnified Entity,
its employees, and agents, shall cooperate fully with the Indemnitor and its legal
representatives in the investigation of any action, claim, or liability covered by this
indemnification.
	 
	8.11.	 	Insurance. Licensee shall obtain and carry in full effect, and shall cause Sublicensees to
obtain and carry in full effect, insurance with coverage and limits, the nature and extent of
which shall be commensurate with those of similar companies in Licensee’s industry. Such
insurance will be written by an insurance company having a rating reasonably acceptable to
CARDIFF and KUL, will name CARDIFF and KUL as an additional insured, and shall require thirty
(30) days written notice to CARDIFF and KUL prior to cancellation, endorsement or other policy
change. Within thirty (30) days of a request by CARDIFF or KUL, Licensee shall provide
CARDIFF or KUL with appropriate certificates of insurance satisfying the obligations of
Licensee hereunder.





ARTICLE 9. INFRINGEMENT





	9.1.	 	Notice. The parties shall report to each other in writing all suspected infringement of the
Licensed Patents. Should Licensee desire to negotiate with or file suit against a potential
infringer, it shall first provide to CARDIFF a written analysis setting out in pertinent
detail the grounds for infringement and its proposed legal strategy. Upon such notice,
CARDIFF shall permit Licensee to take action under paragraph 9.2.
	 
	9.2.	 	Enforcement. Subject to paragraph 9.1, Licensee, or a Sublicensee, shall have exclusive
authority to negotiate, license, file suit, or otherwise settle the matter without limitation.
Licensee shall employ counsel reasonably satisfactory to CARDIFF; Licensee and Sublicensee,
as applicable, shall inform CARDIFF of all material developments, and provide CARDIFF with
copies of all material correspondence and pleadings, subject to any protective order or
confidentiality obligations imposed on Licensee or Sublicensee, as applicable. Licensee and
Sublicensee, as applicable, shall be responsible for its expenses, except that CARDIFF shall
cooperate in all reasonable respects with Licensee’s or Sublicensee’s requests at Licensees or
Sublicensee’s expense. CARDIFF




Page 15 of 31









 






	 	 	consents to be joined as a party, if necessary in order for
Licensee to proceed with a suit. CARDIFF will execute any documents and instruments necessary
or appropriate for Licensee or Sublicensee to exercise its rights under this Article. CARDIFF
may be represented by its own counsel in such proceedings at its own expense. Prosecution,
settlement, or abandonment of any proceeding shall be at Licensee’s or Sublicensee’s
reasonable discretion, provided that Licensee or Sublicensee must not grant any infringer any
rights to the Licensed Patents other than by sublicense pursuant to paragraph 2.3 of this
Agreement. Recoveries collected by Licensee or Sublicensee will be paid as follows: (a) to
Licensee or Sublicensee to reimburse its documented and reasonable out of pocket third party
costs and expenses incurred in such action; (b) to CARDIFF for its documented and reasonable
out of pocket third party costs and expenses incurred in assisting Licensee; and (c) the
remainder, if any, shall be treated as if it were [******].
	 
	9.3.	 	CARDIFF Enforcement. If CARDIFF wishes to proceed against a potential infringer where the
infringing process or product is outside the Field and if Licensee agrees in writing to allow
CARDIFF to proceed, CARDIFF shall have exclusive authority to negotiate, license, file suit or
otherwise settle the matter outside the Field. CARDIFF shall employ counsel reasonably
satisfactory to Licensee, inform Licensee of all material developments, and provide Licensee
with copies of all material correspondence and pleadings, subject to any protective order or
confidentiality obligations imposed on CARDIFF. CARDIFF shall be responsible for its own
costs and expenses, except that Licensee shall cooperate in all reasonable respects with
CARDIFF’s requests at CARDIFF’s expense. Licensee consents to be joined as a party if
necessary in order for CARDIFF to proceed with a suit. Licensee will execute any documents and
instruments necessary or appropriate for CARDIFF to exercise its rights under this Article.
Licensee may be represented by its own counsel in such proceedings at its own expense.
CARDIFF will be responsible for its own expenses. Recoveries collected by CARDIFF will be
paid as follows: (a) to CARDIFF to reimburse its documented and reasonable out of pocket
third party costs and expenses incurred in such action, (b) to Licensee for its documented and
reasonable out of pocket third party costs and expenses incurred in assisting CARDIFF, and (c)
the remainder, if any, shall be [******]. CARDIFF has the right to grant nonexclusive
licenses outside the Field in settlement of any permitted enforcement action it initiates.
Notwithstanding anything to the contrary contained herein, CARDIFF hereby covenants and agrees
that it will not grant any exclusive licenses outside the Field with respect to the Licensed
Patents without granting to Licensee a right of first refusal whereby: (a) CARDIFF shall
notify Licensee of all the material terms of such proposed exclusive license, (b) CARDIFF
shall provide to Licensee all of the proposed definitive agreements with respect to such
exclusive license, and (c) Licensee shall have ninety (90) days following the satisfaction of
the matters described in clauses (a) and (b) to accept or reject such exclusive license on the
basis of the terms described in clauses (a) and (b).
	 
	9.4.	 	Abandonment. If Licensee or CARDIFF has filed suit and thereafter elects to abandon suit
does not waive any of its enforcement rights under paragraphs 9.2 or 9.3. The rights of
Licensee include the right to abandon a suit or refrain from suit. Licensee’s abandonment or
refraining from suit does not give CARDIFF the right to proceed.




Page 16 of 31









 











ARTICLE 10. CONFIDENTIALITY





	10.1.	 	Confidential Information. Pursuant to and for the purpose of complying with its obligations
under this Agreement (“the Purpose”), either Party may disclose to the other Party
confidential and proprietary information, technical data, trade secrets or know-how, including
but not limited to, research, product plans, products, markets, developments, inventions,
processes, formulas, technology, designs, drawings, engineering, marketing, distribution,
sales methods and systems, and sales and profit figures (the “Confidential Information”).
	 
	10.2.	 	General Defined Terms. The terms “Recipient” and “Provider” refer to Licensee, the
UNIVERSITY and CARDIFF and KUL in their capacity either as the recipient or the provider of
Confidential Information under this Agreement.
	 
	10.3.	 	Manner of Disclosure. The Provider may disclose the Confidential Information to the
Recipient, in writing, electronically, orally or by drawings or inspection of documents or
other tangible property for the Purpose.
	 
	10.4.	 	Non-Disclosure Obligation. In its capacity as Recipient, each Party agrees that for a
period of five (5) years from the date of disclosures received, that such Party will treat the
Confidential Information with reasonable care to avoid disclosure of the Confidential
Information to any person (natural or otherwise). A Recipient may disclose such Confidential
Information to (i) others within its organization pursuant to paragraph 10.7 and (ii) to third
parties; provided they enter into a confidentiality agreement no less restrictive than that of
this Article 10. A Recipient shall be generally liable for unauthorized disclosure or failure
to exercise such reasonable care, but a Recipient will not be so restricted with respect to
any Confidential Information which:






	 	(a). 	 	 is in the public domain, not through a breach of this Agreement, at the time of
disclosure;
	 
	 	(b). 	 	 after disclosure, becomes part of the public domain, except through breach of
this Agreement by the Recipient;
	 
	 	(c). 	 	 the Recipient can establish by competent proof was legally in its possession at
the time of disclosure by the Provider;
	 
	 	(d). 	 	 comes to the Recipient from third parties who are not under an obligation to
the Provider to maintain the confidentiality of that Confidential Information;
	 
	 	(e). 	 	 is independently developed by employees of the Recipient without use of the
Confidential Information, as shown by competent proof;
	 
	 	(f). 	 	 is approved for release by written authorization of the Provider, or:
	 
	 	(g). 	 	 subject to paragraph 10.5, disclosure is required by applicable law or
administrative order.




Page 17 of 31









 












	10.5.	 	Required Disclosures. If the Recipient is required by applicable law or administrative or
judicial order to disclose Confidential Information, the Recipient shall give the Provider
prompt notice of such fact so that the Provider may attempt to obtain a protective order or
other appropriate remedy with respect to any such disclosure. The Recipient shall fully
cooperate with the Provider in connection with the Provider’s efforts to obtain any such order
or other remedy. If any such order or other remedy does not fully preclude disclosure, the
Recipient will make such disclosure only to the extent that such disclosure is legally
required.
	 
	10.6.	 	Limited Use. Acceptance of the Confidential Information by the Recipient gives the
Recipient the right and obligation to use the Confidential Information only for the Purpose in
accordance with this Agreement and does not give the Recipient any sort of license to, use of,
or any other rights in the Confidential Information.
	 
	10.7.	 	Internal Dissemination. Recipient’s internal dissemination of the Provider’s Confidential
Information is limited to those employees, officers, directors, and agents (or, where the
UNIVERSITY is the Recipient, those employees, officers, directors, and agents of the
UNIVERSITY) whose duties justify the need to know such Confidential Information. The
Recipient will make all necessary efforts to require such officers, directors, employees,
students and agents, who have been given access to and who shall receive disclosures of the
Confidential Information, to maintain the strictest secrecy under the terms and conditions of
this Agreement.
	 
	10.8.	 	Unauthorized Use. If any third party makes any unauthorized use or disclosure of the
Confidential Information under this Agreement, the Recipient shall notify the Provider and
cooperate in taking reasonable steps to protect the Confidential Information from further
unauthorized use or disclosure.
	 
	10.9.	 	Return of Information. Upon termination or expiration of this Agreement and upon request by
the Provider, the Recipient will promptly return to the Provider all Confidential Information
received from the Provider which is in tangible form or provide a letter certifying as to its
destruction; except that Recipient may keep a single copy for archival purposes.





ARTICLE 11. TERM AND TERMINATION





	11.1.	 	Term. Unless sooner terminated as otherwise provided herein, this Agreement begins on the
Effective Date and continues until expiration of the last to expire of the Licensed Patents or
patent extension as provided by paragraph 7.3.
	 
	11.2.	 	CARDIFF and KUL Right to Terminate. CARDIFF or KUL may, without prejudice to any of its
other rights, terminate this Agreement if Licensee:






	 	(a). 	 	 fails to pay any undisputed amount when due under this Agreement, and fails to
make such payment after ninety (90) days written notice by CARDIFF or KUL;
	 
	 	(b). 	 	 fails to deliver any report when due under this Agreement, and Licensee fails
to make such report after ninety (90) days written notice from CARDIFF; or




Page 18 of 31









 






	 	(c). 	 	 materially breaches or defaults any other material obligation under this
Agreement other than by (a)-(b) above, and fails to cure such breach or default within
ninety (90) days after receipt of written notice by CARDIFF or KUL.






	11.3.	 	Licensee Right to Terminate. Licensee may, without prejudice to any of its other rights,
terminate this Agreement:






	 	(a). 	 	 at any time with or without cause effective on ninety (90) days written notice
of termination; or
	 
	 	(b). 	 	 if CARDIFF or KUL materially breaches or defaults any material obligation
under this Agreement and fails to cure such breach or default within ninety (90) days
after receipt of written notice by Licensee.






	11.4.	 	Effect of Termination. If this Agreement terminates in its entirety as to all Parties for
any reason under paragraphs 11.2 or 11.3, on the effective date of termination Licensee shall
immediately cease practicing the inventions claimed in Valid Claims of Licensed Patents and
making, having made and selling the Licensed Products, and shall return to CARDIFF, or deliver
or destroy as CARDIFF directs, all Confidential Information in its possession; provided,
however, that (a) Licensee and Sublicensee may continue to sell in the ordinary course of
business for a period of one (1) year reasonable quantities of Licensed Products that are in
Licensee’s normal inventory, at the date of termination if (i) all monetary obligations of
Licensee to CARDIFF and KUL have been satisfied and (ii) royalties on such sales, and any
other payments, are paid to CARDIFF and KUL in the amounts and in the manner provided in this
Agreement and (b) Licensee and Sublicensee shall continue to own all patents, know-how and
other rights developed by such parties on and after the Effective Date.
	 
	11.5.	 	Survival. Notwithstanding termination or expiration of this Agreement for any reason, the
following provisions shall survive:






	 	(a). 	 	 Licensee’s payment obligations that are accrued and remaining unpaid or
unperformed prior to such termination;
	 
	 	(b). 	 	 Articles 4,5,8.6, 8.7, 8.8 10, 11.4, 11.5 12, and 13
	 
	 	(c). 	 	 Any cause of action or claim of a Party, accrued or to accrue, because of any
breach or default of this Agreement by the other Party.





ARTICLE 12. DISPUTE RESOLUTION





	12.1.	 	Non-binding Mediation. Except for the right of each Party to apply to a court of competent
jurisdiction for a temporary restraining order, preliminary injunction, or other equitable
relief, any and all claims, disputes or controversies arising under, out of, or in connection
with this agreement (including patent validity, claim for theft of trade secrets, unauthorized
disclosure of confidential information, damages, restitution, rescission or reformation, or
any combination of such remedies) that the Parties are unable to resolve within sixty (60)
days following written notice of a dispute including an attempt to resolve the dispute, will
be mediated through non-binding mediation in good faith as follows: The Party raising such
dispute shall promptly provide notice to the other Party




Page 19 of 31









 






		 	of its claim, dispute or controversy
in a writing that describes in reasonable detail the nature of the dispute (“Dispute Notice”).
By not later than twenty (20) business days after the recipient has received the Dispute
Notice, each Party shall have selected for itself a representative who has the authority to
bind such Party, and shall additionally have advised the other Party in writing of the name
and title of such representative. These representatives shall meet in person and in good faith
attempt to resolve the dispute within sixty days of the Dispute Notice. If they fail to
resolve it, then by not later than twenty (20) business day after their meeting date, the
Parties shall each notify the other of two acceptable mediators and the representatives shall
promptly select and agree upon one commonly acceptable mediator for a mediation hearing.
Within thirty days thereafter, the Parties shall enter into good faith mediation and shall
share the costs of mediation equally; provided, however, that each Party shall pay its own
attorneys’ fees. If the representatives of the Parties do not resolve the dispute within
thirty (30) business days after the mediation hearing, the Parties shall be deemed to have
satisfied this requirement for mediation.
	 
	12.2.	 	CEDR. All disputes between any or all of the Parties arising out of or in connection with
this Agreement and not resolved through good faith non-binding mediation as set forth in
paragraph 12.1 above shall be referred to mediation in accordance with the CEDR model
mediation procedure. To initiate a mediation, a Party may give notice in writing to another
Party requesting mediation. The mediation shall commence not less than thirty (30) days after
the date of the notice requesting mediation.
	 
	12.3.	 	Continued Performance. The Parties shall continue to perform their respective obligations
under this Agreement during the resolution of any dispute under the provisions of this article
12.





ARTICLE 13. MISCELLANEOUS





	13.1.	 	Assignment. This agreement, and the rights and obligations hereunder, shall not be assigned
by LICENSEE without the prior written consent of CARDIFF and KUL, such consent not to be
unreasonably withheld; except that this Agreement or rights and obligations hereunder may be
assigned by LICENSEE without consent to the acquirer of substantially all of the assets of
LICENSEE to which the assigned rights and obligations pertain. CARDIFF and the UNIVERSITY and
KUL shall be free to assign, novate or otherwise transfer any and/or all of their rights or
obligations hereunder and LICENSEE shall enter into such deed of assignment, novation or
transfer in connection herewith as CARDIFF and the UNIVERSITY or KUL require. No assignment
requiring consent will be effective unless the assignor has, no less than ten (10) days before
the effective date thereof, (i) delivered written notice of the transaction to the other
Parties; and (ii) caused the successor entity to deliver to such other Parties the form of a
written assignment and assumption by such successor of all of the assigned terms and
conditions of this Agreement, such assignment and assumption to be in form and substance
satisfactory to such other Parties.
	 
	13.2.	 	Entire Agreement, Amendment and Waiver. This Agreement, including its Appendices, contains
the entire understanding of the parties with respect to the subject




Page 20 of 31









 






	 	 	matter of this Agreement
and supersedes any and all prior written or oral discussions, arrangements, courses of conduct
or agreements. This Agreement may be amended only by a written instrument executed by the
parties. The waiver of an obligation hereunder shall not constitute a waiver of any other
obligation, and shall not constitute a permanent waiver of that obligation.
	 
	13.3.	 	Force Majeure. No Party shall be considered in default or be liable for any delay in
performance or for any non-performance caused by circumstances beyond the reasonable control
of such Party, including but not limited to acts of God, explosion, fire, flood, accident,
strike or other labor disturbance, war (whether declared or not), terrorism, sabotage, order
or decree of any court or unforeseen or unanticipated action of any governmental authority, or
other causes, whether similar or dissimilar to those specified, that cannot reasonably be
anticipated or controlled by the Party who failed to perform. Performance is excused only for
the duration of the force majeure event and a commercially reasonable time thereafter.
	 
	13.4.	 	Notices. All notices required or desired to be given under this Agreement, and all payments
to be made to CARDIFF or KUL under this Agreement, shall be delivered to the parties in the
manner set out herein and at the addresses set forth in Appendix G, unless otherwise set forth
in this Agreement. Notices may be given (i) by hand, or (ii) by certified mail return receipt
requested, or (iii) by commercial carrier. Such notices or payments are effective upon
receipt by an employee, agent, or representative of the receiving Party authorized to receive
notices or other communications sent or delivered in the manner set forth above.
	 
	13.5.	 	Severability. If any one or more of the provisions of this Agreement is held by any court
of competent jurisdiction to be invalid, illegal or unenforceable, such provision or
provisions shall be reformed to approximate as nearly as possible the intent of the Parties,
and the validity of the remaining provisions shall not be affected; provided that such
reformation does not depart materially from the intent of the Parties.
	 
	13.6.	 	Governing Law. This Agreement shall be governed by and construed in all respects in
accordance with the laws of England and Wales and, subject to the provisions of article 12,
the parties (1) submit to the exclusive jurisdiction of the courts of England and Wales and
(2) waive any right each may have to trial by jury.
	 
	13.7.	 	Damages. The Parties each hereby waive any right to receive punitive, consequential,
special or indirect damages relating in any way to this Agreement.
	 
	13.8.	 	Marking. Licensee shall place in a conspicuous location on any Licensed Product (or its
packaging where appropriate) made or sold under this Agreement a patent notice in accordance
with applicable laws.
	 
	13.9.	 	Export Controls. Licensee acknowledges that Licensed Products may be subject to U.S. laws
and regulations controlling the export of technical data, biological materials, chemical
compositions, computer software, laboratory prototypes and other commodities (“Technical
Data”). Licensee’s transfer of Technical Data may require a license from an agency of the
U.S. government or written assurances by Licensee that Licensee shall not export Technical
Data to certain foreign countries without prior approval of the U.S.




Page 21 of 31









 






		 	government. CARDIFF
neither represents that an export license will not be required nor that, if required, such
export license shall issue.
	 
	13.10.	 	Implementation. Each Party shall, at the request of the other Party, execute any document
reasonably necessary to implement the provisions of this Agreement.
	 
	13.11.	 	Relationship of Parties. The Parties are independent contractors. There is no relationship
of principal to agent, master to servant, employer to employee, or franchiser to franchisee
between the Parties. No Party has the authority to bind another or incur any obligation on
its behalf.
	 
	13.12.	 	Agreement Conflicts. In the event of a conflict between this Agreement and an Appendix
attached hereto, the terms of this Agreement shall control.
	 
	13.13.	 	Advertising. Each Party shall not use (and shall prohibit its agents, Affiliates, licensees
and sublicensees from using) the names and marks of the other Party or any of its agents in
connection with any commercial activity under this Agreement without prior written consent.
Notwithstanding the foregoing, Licensee may use the name of CARDIFF and or the UNIVERSITY
and/or KUL in a non-misleading fashion in (i) business plans, offering memoranda and other
similar documents for the purpose of raising financing for the operations of Licensee as
related to the Licensed Products; (ii) as required in sublicenses to vest CARDIFF and the
UNIVERSITY’s and KUL’s interests as a third party beneficiary, and (iii) as required in any
securities reports required to be filed with the Securities and Exchange Commission.





(The remainder of this page left blank)




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IN WITNESS WHEREOF, the parties hereto have caused this License Agreement to be executed by their
authorized officers or representatives on the date indicated below.




UNIVERSITY COLLEGE CARDIFF

CONSULTANTS LIMITED




	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 
	By:
	 	 	 	 	 	 
	 	 	 	 	 
	Name

	 	(print):	 	 	 	 
	Title:

	 	 	 	 

	 	 
	 	 	 	 	 
	Date:
	 	 	 	 	 	 
	 	 	 	 	 
	 
	 	 	 	 	 	 
	INHIBITEX, INC.	 	 
	 
	 	 	 	 	 	 
	By:
	 	 	 	 	 	 
	 	 	 	 	 
	Name

	 	(print):	 	 	 	 
	 

	 	 	 	 

	 	 
	Title:
	 	 	 	 	 	 
	 	 	 	 	 
	Date:
	 	 	 	 	 	 
	 	 	 	 	 
	 
	 	 	 	 	 	 
	CARDIFF UNIVERSITY	 	 
	 
	 	 	 	 	 	 
	By:
	 	 	 	 	 	 
	 	 	 	 	 
	Name

	 	(print):	 	 	 	 
	 

	 	 	 	 

	 	 
	Title:
	 	 	 	 	 	 
	 	 	 	 	 
	Date:
	 	 	 	 	 	 
	 	 	 	 	 
	 
	 	 	 	 	 	 
	KATHOLIEKE UNIVERSITEIT LEUVEN	 	 
	 
	 	 	 	 	 	 
	By:
	 	 	 	 	 	 
	 	 	 	 	 
	Name

	 	(print):	 	 	 	 
	 

	 	 	 	 

	 	 
	Title:
	 	 	 	 	 	 
	 	 	 	 	 
	Date:
	 	 	 	 	 	 
	 	 	 	 	 





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APPENDIX A

LICENSED PATENTS




	 	 	 	 	 	 	 	 	 	 
	CARDIFF	 	 	 	 	 	 	 	 	 
	Case	 	 	 	 	 	 	 	 	 
	Number	 	Title	 	Priority Date	 	Priority Application	 	Status/Comments
	[******]

	 	[******]
	 	 	[******]
	 	[******]
	 	[******]






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APPENDIX B

ANNUAL LICENSE MAINTENANCE FEES (Paragraph 3.4)




     Licensee shall pay each of KUL and CARDIFF an Annual License Maintenance Fee of [*****] no
later than thirty (30) days after each anniversary of the Effective Date; provided, however that
Licensee shall have no obligation to pay an annual license maintenance fee in any year that royalty
payments are greater than the Appendix B amount. Only one annual license maintenance fee is due to
each of KUL and CARDIFF by Licensee in any calendar year regardless of the number of patents within
the Licensed Patents, and regardless of the number of Sublicensees.



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APPENDIX C

SUBLICENSE FEES (Paragraph 3.5)





	1.	 	Definitions. “Sublicense Payment” means a payment received by Licensee as direct
consideration specifically for the grant of a Sublicense of the Licensed Patents. For
purposes of paragraph 3.5 and this Appendix C, Sublicense Payments include, but are not
limited to, (a) Sublicense signing or upfront fees, (b) the portion of any premium (the excess
over the fair market value) paid by Sublicensee for debt or equity securities issued by
Licensee to a Sublicense to the extent such premium is (i) direct consideration for entering
into a Sublicense, and (ii) exceeds [******] of the fair market value of the debt or equity
securities issued by Licensee in direct connection with a Sublicense; (c) development or
commercial diligence milestone payments for development or commercialization of Licensed
Products, (d) annual license maintenance fees in excess of amounts payable to CARDIFF and KUL
by Licensee as set forth in Appendix B; (e) royalties received by Licensee from a Sublicensee;
(f) annual minimum royalty payments received by Licensee from a Sublicensee; or (g) similar
consideration that is milestone-based, development-based, or diligence-based.
	 
	 	 	Notwithstanding the foregoing, Sublicense Payment specifically excludes the following
payments received by Licensee from any Sublicensees: (a) reasonable funding or
reimbursement for research activities performed by Licensee on behalf of a Sublicensee after
the effective date of the respective Sublicense; (b) reasonable payments or reimbursements
for materials made for or transferred to a Sublicensee after the effective date of the
respective Sublicense; (c) reasonable payments or reimbursements for other expenses incurred
by Licensee on behalf of and for the benefit of a Sublicensee after the effective date of
the respective sublicense; (d) reimbursement for Licensee’s payment of Patent Expenses to
CARDIFF incurred before or after the effective date of the Sublicense; (e) reasonable
payments or reimbursements for the cost of clinical trials conducted by Licensee or on
behalf of Sublicensee after the effective date of the Sublicense; (f) reasonable payments
for the transfer to a Sublicensee of know-how developed by Licensee without input by
CARDIFF or KUL, or if with input from CARDIFF or KUL, then the pro rata portion of such
payment; and (g) consideration of any kind received by Licensee for the transfer or grant
from Licensee to a Sublicensee of rights, assets or value of any kind other than rights
within the Licensed Patents under this Agreement.
	 
	 	 	Licensee shall provide KUL and CARDIFF with a copy of each Sublicense Agreement and any
other contract Licensee may enter into relating to the Licensed Patents and consideration
for a sublicense to the Licensed Patents.
	 
	2.	 	Sublicense Fees.
	 
	 	 	If Licensee enters into a Sublicense for Licensed Product, and if Licensee receives from that
Sublicensee any Sublicense Payments related to that Licensed Product, then Licensee shall pay
CARDIFF [*****] and KUL [*****] of such Sublicense Payments.




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APPENDIX D

MILESTONE PAYMENTS (Paragraph 3.6)



When each of the following milestone payments becomes due, one half of each payment shall be paid
to CARDIFF and the other half shall be paid to KUL.




	 	 	 	 	 
	1. Milestone Payments.	 	Payment (USD)
	a. [******]
	 	$	[*****]	 
	b. [******]
	 	$	[*****]	 
	c. [******]
	 	$	[*****]	 
	d. [******]
	 	$	[*****]	 
	e. [******]
	 	$	[*****]	 
	f. [******]
	 	$	[*****]	 






Page 27 of 31









 





APPENDIX E

ROYALTY REPORTS




     Each Royalty Report due under this Agreement shall provide the following aggregate information
per quarter for all Licensed Products sold by Licensee or Sublicensees.




	1.	 	Sales report by country sufficient for CARDIFF and KUL to determine specific volume of sales
and total Net Sales in each country;
	 
	2.	 	Number of units of each Licensed Product sold by Licensee or by Sublicensees;
	 
	3.	 	Total dollar amount Subject to Royalty;
	 
	4.	 	Applicable Conversion Rate for Foreign Sales;
	 
	5.	 	Total dollars Converted to U.S. Dollars;
	 
	6.	 	Minimum Royalty Due, if applicable;
	 
	7.	 	Total Royalty Due;
	 
	8.	 	Names and Addresses of all Affiliates selling Licensed Product, Sublicensees and
Distributors;
	 
	9.	 	Number of Licensed Products transferred between Affiliates.




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APPENDIX F

INSURANCE REQUIREMENTS




     Beginning on the date a first clinical trial is initiated incorporating a Licensed Product and
continuing for five years after the date of the last sale of a Licensed Product in the United
States, Licensee shall maintain a commercial general liability insurance policy that insures
Indemnitees and names Indemnitees as an additional insured for all claims, damages, actions, and
judgments mentioned in Articles 8.9 and 8.10 of this Agreement, and provides Indemnitees with
liability coverage in an amount no less than five million Dollars ($5,000,000) per occurrence,
subject to a reasonable aggregate amount per policy period.



     In the event that this Agreement terminates without the sale of any Licensed Product, and no
sale of Licensed Product is anticipated, the insurance required under this paragraph may be
discontinued.



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APPENDIX G

NOTICES




	 	 	 	 	 	 	 
	1.

	 	If to CARDIFF:
	 	Dr Nick Bourne	 	 
	 

	 	 	 	University College Cardiff Consultants Limited	 	 
	 

	 	 	 	30-36 Newport Road 	 	 
	 

	 	 	 	Cardiff	 	 
	 

	 	 	 	CF24 0DE	 	 
	 
	 	 	 	 	 	 
	2.

	 	If to the UNIVERSITY:
	 	Mr Geraint Jones	 	 
	 

	 	 	 	Research and Commercial Division	 	 
	 

	 	 	 	Cardiff University	 	 
	 

	 	 	 	30-36 Newport Road 	 	 
	 

	 	 	 	Cardiff	 	 
	 

	 	 	 	CF24 0DE	 	 
	 
	 	 	 	 	 	 
	3.

	 	If to Licensee:
	 	Dr. Joseph M. Patti, Chief Scientific Officer	 	 
	 

	 	 	 	Inhibitex, Inc.	 	 
	 

	 	 	 	9005 Westside Parkway	 	 
	 

	 	 	 	Alpharetta, GA 30004 	 	 
	 

	 	 	 	Facsimile: (678) 746-0624 	 	 
	 
	 	 	 	 	 	 
	 

	 	With a copy to:
	 	David S. Rosenthal, Esq.	 	 
	 

	 	 	 	Dechert,LLP	 	 
	 

	 	 	 	30RockefellerPlaza 	 	 
	 

	 	 	 	New York, New York 10112 	 	 
	 

	 	 	 	Facsimile: (212) 698-3599 	 	 
	 
	 	 	 	 	 	 
	4.

	 	If to KUL:
	 	Paul Van Dun,	 	 
	 

	 	 	 	K.U.Leuven R&D	 	 
	 

	 	 	 	Minderbroedersstraat 8A,	 	 
	 

	 	 	 	B-3000 Leuven, Belgium	 	 
	 

	 	 	 	Facsimile: +32-16-326515 	 	 
	 
	 

	 	 	 	 

	 	 






Page 30 of 31









 





APPENDIX H




SPONSORED RESEARCH AGREEMENT




To be attached.





Page 31 of 31