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EXCLUSIVE PATENT LICENSE AGREEMENT
THIS EXCLUSIVE PATENT LICENSE AGREEMENT ("Agreement") is made and entered into
as of July 31, 2003 (the "Signing Date") by and between John Simpson
("Licensor"), an individual, residing at 2468-3 Enterprise Road, Clearwater,
Florida 33763, and Dtomi, Inc. ("Licensee") a Nevada corporation, having its
principal office at 200 Ninth Avenue North, Suite 200, Safety Harbor, Florida
34695.
WITNESSETH
WHEREAS, Licensor is the . . .
1271954
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (67K)
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF CONTENTS.............................................................ii
R E C I T A L S................................................................1
1. Definitions................................................................2
2. Grant of Rights............................................................5
3. Company Diligence Obligations..............................................6
4. Royalties and Payment Terms................................................8
5. Reports and Records.......................................................10
6. Patent Prosecution........................................................12
7. Infringement..............................................................13
8. Indemnification and Insurance.............................................15
9. No Representations or Warranties..........................................16
10. Assignment................................................................17
11. General Compliance with Laws..............................................17
12. Termination...............................................................18
13. Dispute Resolution........................................................19
14. Miscellaneous.............................................................21
APPENDIX A....................................................................24
APPENDIX B....................................................................30
APPENDIX C....................................................................31
ii
{PAGE}
Portions of this document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("BIOMARIN"), a Delaware corporation, with a principal place of business at
371 Bel Marin Keys Blvd., Suite 210, Novato, CA 94949.
R E C I T A L S
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to heparinases and to the technology disclosed under M.I.T.
Case No. 4236, "Neutralization of the Anticoagulant Activities of the Low
Molecular Weight Heparin Fractions and Fragments With Flavobacterial
Heparinase," by Howard Bernstein, Charles L. Cooney, Robert S. Langer and Victor
C. Yang; M.I.T. Case No. 4330, "Procedure for Purification of High Purity
Heparinase," by Charles L. Cooney and Joseph J. Zimmermann; M.I.T. Case No.
4370, "Extracorporeal Systems for Heparin Neutralizaton Using Porous Fibers or
Tubes," by Ann R. Comfort, Robert A. Heft and Robert S. Langer; and M.I.T. Case
No. 5546, "The Heparinase Gene from Flavobacterium Heparinum," by Charles L.
Cooney, Robert S. Langer, Kelley W. Moreman and Ram Sasisekharan; and has the
right to grant licenses under said PATENT RIGHTS;
WHEREAS, M.I.T. and the President and Fellows of Harvard College are the
owners of certain PATENT RIGHTS (as later defined herein) relating to
heparinases and to the technology disclosed under M.I.T. Case No. 4176, "The
Heparinase Activated Clotting Time: A New Coagulation Test," by Judah Folkman,
Robert L. Hannon, Robert S. Langer and Robert W. Thompson, and HARVARD has
authorized M.I.T. to act as its agent for the purposes of licensing its rights
in this intellectual property in return for a share of royalties.
WHEREAS, M.I.T. and the University of Iowa ("U of I") are the joint owners
of certain PATENT RIGHTS (as later defined herein) relating to heparinases and
to the technology disclosed under M.I.T. Case No. 5981, "Purification,
Composition and Characterization of Heparinase II from Flavobacterium
Heparinum," by Charles L. Cooney, Robert S. Langer, Robert Lindhardt, Daniel
Lohse and Ram Sasisekharan; and U of I has authorized M.I.T. to act as its agent
for the purposes of licensing its right in this intellectual property in return
for a share in royalties.
{PAGE}
WHEREAS, BIOMARIN acquired by assignment in November 2001, the rights
and responsibilities of two License Agreements to the PATENT RIGHTS by and
between M.I.T. and IBEX Technologies Inc. (the "IBEX License Agreements", and
attached herein in Appendix C) and, along with M.I.T., desires to restate and
modify the terms of the IBEX License Agreements in this new Agreement;
WHEREAS, M.I.T. desires to have the BIOMARIN continue to develop and
commercialize the PATENT RIGHTS to benefit the public and is willing to grant a
license to the BIOMARIN thereunder;
WHEREAS, to induce M.I.T. to enter into this Agreement, BIOMARIN has
represented to M.I.T. that it shall commit itself to a thorough, vigorous and
diligent program to commercialize the PATENT RIGHTS so that public utilization
shall result therefrom; and
WHEREAS, BIOMARIN desires to obtain a license under the PATENT RIGHTS upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, M.I.T. and BIOMARIN, in consideration of the premises, the
mutual promises and covenants contained herein, and other good and valuable
consideration, hereby agree as follows:
1. Definitions.
1.1 "AFFILIATE" shall mean any legal entity (such as a corporation,
partnership, or limited liability company) that is controlled by BIOMARIN. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
2
{PAGE}
1.2 "DIAGNOSTIC FIELD" shall mean clinical diagnostics using the
HEPARINASES for in vitro testing of external tissue samples from patients.
1.3 "EXCLUSIVE PERIOD" shall mean the period of time set forth in Section
2.2.
1.4 "FIELDS" shall mean the DIAGNOSTIC FIELD, RESEARCH REAGENT FIELD, and
THERAPEUTIC FIELD, but shall specifically exclude any use of the HEPARINASES in
sequencing machines.
1.5 "HEPARINASES" shall mean the heparinase I, II, and III enzymes
covered under the PATENT RIGHTS.
1.6 "LICENSED PRODUCT" shall mean any product or part thereof that:
(i) absent the license granted hereunder, would infringe one or more
claims of the PATENT RIGHTS; or
(ii) is manufactured by using a LICENSED PROCESS or that, when
used, practices a LICENSED PROCESS.
1.7 "LICENSED PROCESS" shall mean any process that, absent the license
granted hereunder, would infringe one or more claims of the PATENT RIGHTS or
which uses a LICENSED PRODUCT.
1.8 "NET SALES" shall mean the gross amount billed by BIOMARIN and its
AFFILIATES and SUBLICENSEES for LICENSED PRODUCTS and LICENSED PROCESSES, less
the following:
(i) customary trade, quantity, or cash discounts to the extent
actually allowed and taken;
(ii) amounts repaid or credited by reason of rejection or return;
(iii) to the extent separately stated on purchase orders, invoices,
or other documents of sale, any taxes or other governmental charges levied on
the production, sale, transportation, delivery, or use of a LICENSED PRODUCT or
LICENSED PROCESS which is paid by or on behalf of BIOMARIN; and
(iv) outbound transportation costs prepaid or allowed and costs of
insurance in transit.
148970
|
BioMarin Pharma
As referenced in this Exclusive Patent License Agreement:
BIOMARIN PHARMACEUTICAL – document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF CONTENTS.............................................................ii
R E C I T A L S................................................................1
1.
_____________
BioMarin Pharmaceutical
– Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("BIOMARIN"), a Delaware corporation, with a principal place of business at
371 Bel Marin Keys Blvd., Suite 210, Novato, CA 94949.
_____________
BioMarin Pharmaceutical – Institute of Technology
77 Massachusetts Avenue
Cambridge, MA 02139-4307
Attention: Director
Tel: 617-253-6966
Fax: 617-258-6790
If to BIOMARIN: BioMarin Pharmaceutical Inc.
371 Bel Marin Keys Blvd., Suite 210
Novato, CA 94949
Attention: Emil Kakkis, M.D., Ph.D.
Tel: 415-884-6704
Fax:
_____________
BIOMARIN PHARMACEUTICAL – be executed
by their duly authorized representatives.
The EFFECTIVE DATE of this Agreement is September 5, 2002.
{TABLE}
{S} {C}
MASSACHUSETTS INSTITUTE OF BIOMARIN PHARMACEUTICAL INC
TECHNOLOGY
By: /s/ Lita Nelson By: /s/ Emil Kakkis
-------------------------------------- -----------------------------------
Name: Lita Nelson Name: Emil Kakkis, M.D., Ph.D.
------------------------------------ ---------------------------------
Title: Director of
_____________
dt 208623
;
Harvard
As referenced in this Exclusive Patent License Agreement:
Fellows of Harvard – to grant licenses under said PATENT RIGHTS;
WHEREAS, M.I.T. and the President and Fellows of Harvard College are the
owners of certain PATENT RIGHTS (as later defined herein) relating to
dt 64370
;
|
M.I.T.
As referenced in this Exclusive Patent License Agreement:
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above
Massachusetts Institute
of Technology – set forth above the signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue,
M.I.T." – signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T." ), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-
M.I.T. – Blvd., Suite 210, Novato, CA 94949.
R E C I T A L S
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to heparinases
dt 63059
|
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Exclusive Patent License Agreement
Exclusive Patent License Agreement (67K)
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF CONTENTS.............................................................ii
R E C I T A L S................................................................1
1. Definitions................................................................2
2. Grant of Rights............................................................5
3. Company Diligence Obligations..............................................6
4. Royalties and Payment Terms................................................8
5. Reports and Records.......................................................10
6. Patent Prosecution........................................................12
7. Infringement..............................................................13
8. Indemnification and Insurance.............................................15
9. No Representations or Warranties..........................................16
10. Assignment................................................................17
11. General Compliance with Laws..............................................17
12. Termination...............................................................18
13. Dispute Resolution........................................................19
14. Miscellaneous.............................................................21
APPENDIX A....................................................................24
APPENDIX B....................................................................30
APPENDIX C....................................................................31
ii
{PAGE}
Portions of this document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("BIOMARIN"), a Delaware corporation, with a principal place of business at
371 Bel Marin Keys Blvd., Suite 210, Novato, CA 94949.
R E C I T A L S
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to heparinases and to the technology disclosed under M.I.T.
Case No. 4236, "Neutralization of the Anticoagulant Activities of the Low
Molecular Weight Heparin Fractions and Fragments With Flavobacterial
Heparinase," by Howard Bernstein, Charles L. Cooney, Robert S. Langer and Victor
C. Yang; M.I.T. Case No. 4330, "Procedure for Purification of High Purity
Heparinase," by Charles L. Cooney and Joseph J. Zimmermann; M.I.T. Case No.
4370, "Extracorporeal Systems for Heparin Neutralizaton Using Porous Fibers or
Tubes," by Ann R. Comfort, Robert A. Heft and Robert S. Langer; and M.I.T. Case
No. 5546, "The Heparinase Gene from Flavobacterium Heparinum," by Charles L.
Cooney, Robert S. Langer, Kelley W. Moreman and Ram Sasisekharan; and has the
right to grant licenses under said PATENT RIGHTS;
WHEREAS, M.I.T. and the President and Fellows of Harvard College are the
owners of certain PATENT RIGHTS (as later defined herein) relating to
heparinases and to the technology disclosed under M.I.T. Case No. 4176, "The
Heparinase Activated Clotting Time: A New Coagulation Test," by Judah Folkman,
Robert L. Hannon, Robert S. Langer and Robert W. Thompson, and HARVARD has
authorized M.I.T. to act as its agent for the purposes of licensing its rights
in this intellectual property in return for a share of royalties.
WHEREAS, M.I.T. and the University of Iowa ("U of I") are the joint owners
of certain PATENT RIGHTS (as later defined herein) relating to heparinases and
to the technology disclosed under M.I.T. Case No. 5981, "Purification,
Composition and Characterization of Heparinase II from Flavobacterium
Heparinum," by Charles L. Cooney, Robert S. Langer, Robert Lindhardt, Daniel
Lohse and Ram Sasisekharan; and U of I has authorized M.I.T. to act as its agent
for the purposes of licensing its right in this intellectual property in return
for a share in royalties.
{PAGE}
WHEREAS, BIOMARIN acquired by assignment in November 2001, the rights
and responsibilities of two License Agreements to the PATENT RIGHTS by and
between M.I.T. and IBEX Technologies Inc. (the "IBEX License Agreements", and
attached herein in Appendix C) and, along with M.I.T., desires to restate and
modify the terms of the IBEX License Agreements in this new Agreement;
WHEREAS, M.I.T. desires to have the BIOMARIN continue to develop and
commercialize the PATENT RIGHTS to benefit the public and is willing to grant a
license to the BIOMARIN thereunder;
WHEREAS, to induce M.I.T. to enter into this Agreement, BIOMARIN has
represented to M.I.T. that it shall commit itself to a thorough, vigorous and
diligent program to commercialize the PATENT RIGHTS so that public utilization
shall result therefrom; and
WHEREAS, BIOMARIN desires to obtain a license under the PATENT RIGHTS upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, M.I.T. and BIOMARIN, in consideration of the premises, the
mutual promises and covenants contained herein, and other good and valuable
consideration, hereby agree as follows:
1. Definitions.
1.1 "AFFILIATE" shall mean any legal entity (such as a corporation,
partnership, or limited liability company) that is controlled by BIOMARIN. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
2
{PAGE}
1.2 "DIAGNOSTIC FIELD" shall mean clinical diagnostics using the
HEPARINASES for in vitro testing of external tissue samples from patients.
1.3 "EXCLUSIVE PERIOD" shall mean the period of time set forth in Section
2.2.
1.4 "FIELDS" shall mean the DIAGNOSTIC FIELD, RESEARCH REAGENT FIELD, and
THERAPEUTIC FIELD, but shall specifically exclude any use of the HEPARINASES in
sequencing machines.
1.5 "HEPARINASES" shall mean the heparinase I, II, and III enzymes
covered under the PATENT RIGHTS.
1.6 "LICENSED PRODUCT" shall mean any product or part thereof that:
(i) absent the license granted hereunder, would infringe one or more
claims of the PATENT RIGHTS; or
(ii) is manufactured by using a LICENSED PROCESS or that, when
used, practices a LICENSED PROCESS.
1.7 "LICENSED PROCESS" shall mean any process that, absent the license
granted hereunder, would infringe one or more claims of the PATENT RIGHTS or
which uses a LICENSED PRODUCT.
1.8 "NET SALES" shall mean the gross amount billed by BIOMARIN and its
AFFILIATES and SUBLICENSEES for LICENSED PRODUCTS and LICENSED PROCESSES, less
the following:
(i) customary trade, quantity, or cash discounts to the extent
actually allowed and taken;
(ii) amounts repaid or credited by reason of rejection or return;
(iii) to the extent separately stated on purchase orders, invoices,
or other documents of sale, any taxes or other governmental charges levied on
the production, sale, transportation, delivery, or use of a LICENSED PRODUCT or
LICENSED PROCESS which is paid by or on behalf of BIOMARIN; and
(iv) outbound transportation costs prepaid or allowed and costs of
insurance in transit.
3
{PAGE}
No deductions shall be made for commissions paid to individuals whether
they are with independent sales agencies or regularly employed by BIOMARIN and
on its payroll, or for cost of collections. NET SALES shall occur on the date of
billing for a LICENSED PRODUCT or LICENSED PROCESS. If a LICENSED PRODUCT or a
LICENSED PROCESS is distributed at a discounted price that is substantially
lower than the customary price charged by BIOMARIN, or distributed for non-cash
consideration (whether or not at a discount), NET SALES shall be calculated
based on the non-discounted amount of the LICENSED PRODUCT or LICENSED PROCESS
charged to an independent third party during the same REPORTING PERIOD or, in
the absence of such sales, on the fair market value of the LICENSED PRODUCT or
LICENSED PROCESS
Non-monetary consideration shall not be accepted by BIOMARIN, any
AFFILIATE, or any SUBLICENSEE for any LICENSED PRODUCTS or LICENSED PROCESSES
without the prior written consent of M.I.T.
1.10 "PATENT RIGHTS" shall mean:
(a) the United States and i nternational patents listed on
Appendix A;
(b) the United States and international patent applications
and/or provisional applications listed on Appendix A and the resulting patents;
(c) any patent applications resulting from the provisional
applications listed on Appendix A, and any divisionals, continuations,
continuation-in-part applications, and continued prosecution applications (and
their relevant international equivalents) of the patent applications listed on
Appendix A and of such patent applications that result from the provisional
applications listed on Appendix A, to the extent the claims are directed to
subject matter specifically described in the patent applications listed on
Appendix A, and the resulting patents;
(d) any patents resulting from reissues, reexaminations, or
extensions (and their relevant international equivalents) of the patents
described in (a), (b), and (c) above; and
(e) international (non-United States) patent applications and
provisional applications filed after the EFFECTIVE DATE and the relevant
international equivalents to divisionals, continuations, continuation-in-part
applications and continued prosecution applications of the patent applications
to the extent the claims are directed to subject matter specifically described
in the patents or patent applications referred to in (a), (b), (c), and (d)
above, and the resulting patents.
4
{PAGE}
1.11 "REPORTING PERIOD" shall begin on the first day of each calendar
quarter and end on the last day of such calendar quarter.
1.12 "RESEARCH REAGENT FIELD" shall mean research reagent uses of the
HEPARINASES designated for "research purposes only, not to be used in humans."
1.13 "SUBLICENSEE" shall mean any non-AFFILIATE sublicensee of the rights
granted BIOMARIN under Section 2.1.
1.14 "TERM" shall mean the term of this Agreement, which shall commence on
the EFFECTIVE DATE and shall remain in effect until the expiration or
abandonment of all issued patents and filed patent applications within the
PATENT RIGHTS, unless earlier terminated in accordance with the provisions of
this Agreement.
1.15 "TERRITORY" shall mean worldwide.
1.16 "THERAPEUTIC FIELD" shall mean human use of the HEPARINASES as
therapeutics in pharmaceutical compositions for reversal of anticoagulants,
inflammation, reperfusion injury, restenosis and wound healing.
2. Grant of Rights.
2.1 License Grants. Subject to the terms of this Agreement, M.I.T. hereby
grants to BIOMARIN and its AFFILIATES for the TERM a royalty-bearing license
under the PATENT RIGHTS to develop, make, have made, use, sell, offer to sell,
284404
|
BioMarin Pharma
As referenced in this Exclusive Patent License Agreement:
BIOMARIN PHARMACEUTICAL – document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF CONTENTS.............................................................ii
R E C I T A L S................................................................1
1.
_____________
BioMarin Pharmaceutical
– Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("BIOMARIN"), a Delaware corporation, with a principal place of business at
371 Bel Marin Keys Blvd., Suite 210, Novato, CA 94949.
_____________
BioMarin Pharmaceutical – Institute of Technology
77 Massachusetts Avenue
Cambridge, MA 02139-4307
Attention: Director
Tel: 617-253-6966
Fax: 617-258-6790
If to BIOMARIN: BioMarin Pharmaceutical Inc.
371 Bel Marin Keys Blvd., Suite 210
Novato, CA 94949
Attention: Emil Kakkis, M.D., Ph.D.
Tel: 415-884-6704
Fax:
_____________
BIOMARIN PHARMACEUTICAL – be executed
by their duly authorized representatives.
The EFFECTIVE DATE of this Agreement is September 5, 2002.
{TABLE}
{S} {C}
MASSACHUSETTS INSTITUTE OF BIOMARIN PHARMACEUTICAL INC
TECHNOLOGY
By: /s/ Lita Nelson By: /s/ Emil Kakkis
-------------------------------------- -----------------------------------
Name: Lita Nelson Name: Emil Kakkis, M.D., Ph.D.
------------------------------------ ---------------------------------
Title: Director of
_____________
dt 241150
;
Harvard
As referenced in this Exclusive Patent License Agreement:
Fellows of Harvard – Moreman and Ram Sasisekharan; and has the
right to grant licenses under said PATENT RIGHTS;
WHEREAS, M.I.T. and the President and Fellows of Harvard College are the
owners of certain PATENT RIGHTS (as later defined herein) relating to
heparinases and to the technology disclosed under M.
_____________
dt 217212
;
|
M.I.T.
As referenced in this Exclusive Patent License Agreement:
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – 10.1
Portions of this document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
BIOMARIN PHARMACEUTICAL INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
{PAGE}
TABLE OF CONTENTS
TABLE OF CONTENTS.............................................................ii
R E C I T A
_____________
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – ii
{PAGE}
Portions of this document have been redacted pursuant to a Request for
Confidential Treatment. Redacted portions are indicated with
the notation "*****"
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures of
the parties below (the "EFFECTIVE
_____________
Massachusetts Institute
of Technology – AGREEMENT
This Agreement, effective as of the date set forth above the signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("
_____________
M.I.T." – as of the date set forth above the signatures of
the parties below (the "EFFECTIVE DATE"), is between the Massachusetts Institute
of Technology ("M.I.T." ), a Massachusetts corporation, with a principal office
at 77 Massachusetts Avenue, Cambridge, MA 02139-4307 and BioMarin Pharmaceutical
Inc. ("BIOMARIN"), a Delaware
_____________
M.I.T. – place of business at
371 Bel Marin Keys Blvd., Suite 210, Novato, CA 94949.
R E C I T A L S
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to heparinases and to the technology disclosed under M.I.
_____________
dt 235987
|
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| 2001 |
Exclusive Patent License Agreement
Exclusive Patent License Agreement (29K)
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EXCLUSIVE PATENT
LICENSE AGREEMENT
S91-093:LRM
AGREEMENT
Effective as of June 30, 1998 ("Effective Date") THE BOARD OF TRUSTEES OF
THE LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the
laws of California ("STANFORD"), and NATUS MEDICAL INCORPORATED, a California
corporation, having its principal place of business at . . .
921129
| | |
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| 2000 |
Exclusive Patent License
Exclusive Patent License (41K)
Doc #108801: Click preview link for longer preview.
EXCLUSIVE PATENT LICENSE
AGREEMENT
CONFIDENTIAL
This license agreement (this "Agreement") is effective as of this 1st
day of September, 1997 (the "Effective Date"), by and between the University of
Washington, a public institution of higher education having administrative
offices in Seattle, Washington ("UW") and Rosetta Biosystems, Inc., a company
organized and existing under the laws of the State of Delaware and having a
place of business at 12040 115th Avenue NE, Kirkland, WA 98034 ("Licensee").
1. PREAMBLE
1.1 UW has developed and owns or is in possession of certain technology
("INVENTION," defined further below) relating to a novel inkjet technology for
the synthesis of oligonucleotides.
1.2 UW desires that the INVENTION be used as soon as possible in the
public interest, and to this end desires to transfer the INVENTION to a company
capable of commercially exploiting the INVENTION.
1.3 Licensee desires, for the purpose of commercial exploitation, to
acquire a license to certain patent rights in and to the INVENTION and to
receive certain technical information relating to the INVENTION.
1.4 Licensee and UW therefore agree to the terms as set forth
herein.
2. DEFINITIONS
2.1 Terms defined in this Definitions Article, and parenthetically
defined elsewhere in this Agreement, shall throughout this Agreement have the
meaning here or there provided. Defined terms may be used in the singular or in
the plural, as sense shall require. Terms defined in this Definition Article
will be printed in capital letters for ease of reference.
2.2 "INVENTION" shall mean a novel inkjet technotogy for the synthesis
of oligonucleotides on glass or silicon surfaces that provides a proprietary
solution with solvent that allows reagent delivery from the inkjet heads, as
recorded in UW's internal files as [***].
2.3 "LICENSED PATENTS' shall mean United States Patent applications
listed below and any Patents issued from such, together with all corresponding
foreign patents now issued or issued during the term of this Agreement, which
relate to the INVENTION, and all reissues, reexaminations, extensions,
divisionals, continuations, and continuations-in-part thereof:
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
108801
|
Venture Law
As referenced in this Exclusive Patent License:
Venture Law Group
– be addressed as
follows.
In the case of Licensee:
Postal Address: Rosetta BioSystems, Inc.
12040 115th Avenue NE
Suite 210
Kirkland, WA 98034
Attn: John King
with a copy to: Venture Law Group
4750 Carillon Point
Kirkland, WA 98033
Attn: William W. Ericson
Facsimile (425) 739-8750
In the case of UW:
Postal Address: University of Washington
Director of Technology Transfer
Office
_____________
dt 1417330
;
Rosetta Biosystems, Inc.;
| Rosetta Inpharmatics Inc.
|
Preview
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| 2000 |
Patent License Agreement (Exclusive)
Patent License Agreement (Exclusive) (44K)
Doc #108844: Click preview link for longer preview.
CONFIDENTIAL
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
REPROGENESIS, INC.
PATENT LICENSE AGREEMENT
(EXCLUSIVE)
{PAGE}
Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Patent Exclusive IA/ra: [**].Reprogenesis
Date: October 30, 1996
TABLE OF CONTENTS
WITNESSETH...................................................................1
1 - DEFINITIONS..............................................................2
2 - GRANT....................................................................4
3 - DILIGENCE................................................................6
4 - ROYALTIES................................................................7
5 - REPORTS AND RECORDS......................................................9
6 - PATENT PROSECUTION......................................................11
7 - INFRINGEMENT............................................................11
8 - PRODUCT LIABILITY.......................................................13
9 - EXPORT CONTROLS.........................................................15
10 - NON-USE OF NAMES.......................................................15
11 - ASSIGNMENT.............................................................16
12 - DISPUTE RESOLUTION.....................................................16
13 - TERMINATION............................................................17
14 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS.............................18
15 - MISCELLANEOUS PROVISIONS...............................................19
APPENDIX A..................................................................20
{PAGE}
Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
REPROGENESIS, INC.
PATENT LICENSE AGREEMENT
This Agreement is made and entered into this ______ day of ____________,
1996, (the "EFFECTIVE DATE") by and between the MASSACHUSETTS INSTITUTE OF
TECHNOLOGY, a corporation duly organized and existing under the laws of the
Commonwealth of Massachusetts and having its principal office at 77
Massachusetts Avenue, Cambridge, Massachusetts 02139, U.S.A. (hereinafter
referred to as "M.I.T."), and REPROGENESIS, INC., a corporation duly organized
under the laws of Texas and having its principal office at 10 Sylvan Drive,
Suite 27, St. Simons Island, Georgia 31522, U.S.A. (hereinafter referred to as
"LICENSEE").
WITNESSETH
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to M.I.T. Case No. [**], "[**]" by Elazer Edelman, Robert
Langer, Michael Klagsburn and Edith Mathiowitz, U.S. Patent No. [**], Issued
[**], and M.I.T. Case No. [**], "[**]" by Elazer Edelman, Aruna Natha and
Matthew Nugent and has the right to grant licenses under said PATENT RIGHTS,
subject only to a royalty-free, nonexclusive license heretofore granted to the
United States Government;
WHEREAS, M.I.T. desires to have the PATENT RIGHTS developed and
commercialized to benefit the public and is willing to grant a license
thereunder;
WHEREAS, LICENSEE has represented to M.I.T., to induce M.I.T. to enter
into this Agreement, that LICENSEE is experienced in the development,
production, manufacture, marketing and sale of products similar to the LICENSED
PRODUCT(s) (as later defined herein)
{PAGE}
and/or the use of the LICENSED PROCESS(es) (as later defined herein) and that it
shall commit itself to a thorough, vigorous and diligent program of exploiting
the PATENT RIGHTS so that public utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS upon
the terms and conditions hereinafter set forth.
WHEREAS, LICENSEE and M.I.T. entered into a separate royalty bearing
License Agreement dated December 23, 1993.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1. "LICENSEE" shall include a related company of REPROGENESIS, INC., the
voting stock of which is directly or indirectly at least Fifty Percent (50%)
owned or controlled by REPROGENESIS, INC., an organization which directly or
indirectly controls more than Fifty Percent (50%) of the voting stock of
REPROGENESIS, INC. and an organization, the majority ownership of which is
directly or indirectly common to the ownership of REPROGENESIS, INC.
1.2. "PATENT RIGHTS" shall mean all of the following M.I.T. intellectual
property:
a. the United States patent applications listed in Appendix A, and
divisionals, continuations and claims of continuation-in-part
applications which shall be directed to subject matter supported
by such patent applications, and the resulting patents;
b. any patents resulting from reissues or reexaminations of the
United States patents described in a. above;
c. the Foreign patents listed in Appendix A;
108844
|
Curis
As referenced in this Patent License Agreement (Exclusive):
CURIS INC –
CURIS INC
_____________
dt 1851563
;
M.I.T.
As referenced in this Patent License Agreement (Exclusive):
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
CONFIDENTIAL
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
REPROGENESIS, INC.
PATENT LICENSE AGREEMENT
(EXCLUSIVE)
{PAGE}
Confidential materials omitted and filed separately
MASSACHUSETTS INSTITUTE OF TECHNOLOGY – Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
REPROGENESIS, INC.
PATENT LICENSE AGREEMENT
This Agreement is made and entered into this
MASSACHUSETTS INSTITUTE OF
TECHNOLOGY – entered into this ______ day of ____________,
1996, (the "EFFECTIVE DATE") by and between the MASSACHUSETTS INSTITUTE OF
TECHNOLOGY , a corporation duly organized and existing under the laws of the
Commonwealth of Massachusetts
M.I.T." – office at 77
Massachusetts Avenue, Cambridge, Massachusetts 02139, U.S.A. (hereinafter
referred to as "M.I.T." ), and REPROGENESIS, INC., a corporation duly organized
under the laws of Texas and having
M.I.T. – St. Simons Island, Georgia 31522, U.S.A. (hereinafter referred to as
"LICENSEE").
WITNESSETH
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to M.I.
dt 63052
;
|
 Chase Manhattan
As referenced in this Patent License Agreement (Exclusive):
Chase Manhattan Bank – Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
by using the exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the
last business day of the calendar quarterly reporting period to which such
royalty payments relate.
4.5 In
_____________
Chase Manhattan Bank – and 6 shall, if overdue, bear
interest until payment at a per annum rate [**] Percent ([**]%) above the prime
rate in effect at the Chase Manhattan Bank (N.A.) on the due date. The payment
of such interest shall not foreclose M.I.T. from exercising any other rights
_____________
dt 101510
;
Reprogenesis, Inc.
|
Preview
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| 2000 |
Exclusive Patent License Agreement
Exclusive Patent License Agreement (29K)
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EXCLUSIVE PATENT
LICENSE AGREEMENT
S91-093:LRM
AGREEMENT
Effective as of June 30, 1998 ("Effective Date") THE BOARD OF TRUSTEES OF
THE LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the
laws of California ("STANFORD"), and NATUS MEDICAL INCORPORATED, a California
corporation, having its principal place of business at . . .
921178
| | |
Preview
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| 2000 |
Exclusive Patent License Agreement
Exclusive Patent License Agreement (38K)
Doc #1417848: Click preview link for longer preview.
EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
THE UNIVERSITY OF TEXAS SYSTEM
AND
COLLATERAL THERAPEUTICS, INC.
<PAGE>
TABLE OF CONTENTS
<TABLE>
<S> <C>
RECITALS PAGE 3
1. EFFECTIVE DATE . . .
1417848
| | |