NON-EXCLUSIVE
SITE LICENSE FOR EXPRESSION OF POLYPEPTIDES IN YEAST
THIS license agreement (the “AGREEMENT”),
entered into as of the ___ day of _____ 200_ (the “EFFECTIVE DATE”), is by and
between Washington Research Foundation (“WRF”), a Washington State non-profit
corporation having an office at 2815 Eastlake Avenue East, Suite #300, Seattle,
Washington 98102, and _______________ (“LICENSEE”), a corporation having
administrative offices at ____________.
WHEREAS, the technology entitled “Expression of
Polypeptides in Yeast” is covered by certain PATENT RIGHTS, defined below, and
those PATENT RIGHTS are owned jointly by WRF, by assignment from the University
of Washington, and Genentech, Inc. (hereinafter, "GENENTECH"), a
company having a place of business at 1 DNA Way, South San Francisco, CA
94080-4990;
WHEREAS, WRF is acting as the sole and exclusive
licensor of the PATENT RIGHTS to be granted by this AGREEMENT;
WHEREAS, LICENSEE desires to obtain certain
license rights to conduct research under the PATENT RIGHTS at LICENSEE’S
affiliated research facilities (hereinafter “SITES”) listed in Appendix A;
NOW THEREFORE, in consideration of the premises
and mutual covenants herein, LICENSEE and WRF, intending to be legally bound,
hereby agree as follows:
1. DEFINITIONS
1.1 “PATENT
RIGHTS” shall mean WRF’s rights to all claims in the United States and foreign
patents listed in Appendix B, attached hereto and a part of this AGREEMENT, and
any and all extensions, substitutions, re-examinations, renewals and reissues
arising therefrom or issued thereon.
1.2 “RIGHTS
UNAVAILABLE” shall mean the rights that are not available to LICENSEE under
this AGREEMENT. RIGHTS UNAVAILABLE
include the expression of any human papillomavirus
protein in yeast.
WRF shall have the right to amend these RIGHTS
UNAVAILABLE with at least one (1) year’s advance written notice to LICENSEE.
LICENSEE acknowledges that RIGHTS UNAVAILABLE
are the subject of prior rights granted to third parties, and that no right,
express or implied, is granted hereunder to any RIGHTS UNAVAILABLE.
1.3 “LICENSED PROCESSES” shall mean any
method(s) or process(es), the practice of which directly infringes,
contributorily infringes or induces the infringement, literally or by the doctrine
of equivalents, of a patent claim under the PATENT RIGHTS, but for this
AGREEMENT.
1.4 “LICENSED PRODUCTS” shall mean products,
including but not limited to compositions of matter, which, in the course of
their manufacture, development, use or sale, directly infringes, contributorily
infringes or induces the infringement, literally or by the doctrine of
equivalents, of a patent claim under the PATENT RIGHTS, but for this AGREEMENT. For
the avoidance of doubt, LICENSED PRODUCTS shall specifically exclude the
products whose expression falls within RIGHTS UNAVAILABLE, as stated herein or
as amended as allowed under paragraph 1.2.
1.5 “INTERNAL RESEARCH” shall mean making and
using LICENSED PRODUCTS and/or LICENSED PROCESSES solely at the SITES. INTERNAL RESEARCH includes the right of
LICENSEE to conduct research falling within the PATENT RIGHTS under contract
with third parties.
2. GRANT
2.1 Subject
to the terms and conditions of this AGREEMENT, WRF hereby grants to LICENSEE a
non-transferable, limited, non-exclusive, SITE license under PATENT RIGHTS
solely for INTERNAL RESEARCH.
2.2 This
AGREEMENT shall expire on April 8th of each year, and shall be
renewable for the life of the PATENT RIGHTS upon payment of the RENEWAL FEE, as
per Section 3.2.
2.3 LICENSEE
shall have no right to assign, sublicense or otherwise transfer this AGREEMENT
or any rights granted hereunder to any third party, except as provided in
Section 6.6.
2.4 LICENSEE
shall have the right to transfer to a third party research quantities, not
intended for resale or for use in making a product for sale, of LICENSED
PRODUCTS; provided that, within thirty (30) days of such transfer, LICENSEE
provides notification to WRF in the form of copies of signed Material Transfer
Agreements or other supporting documentation.
2.5 For
the avoidance of doubt, a transfer of LICENSED PRODUCTS to a third party shall
not constitute a transfer of rights or sublicense under this AGREEMENT
3. LICENSE
AND RENEWAL FEES
3.1 LICENSEE shall pay WRF a non-refundable
license fee for each SITE at which LICENSEE conducts INTERNAL RESEARCH as
listed in Appendix A. Such fee shall be
$5,000 for one SITE, $8,000 for two SITES, and an additional $2,000 for each
SITE thereafter. Said license fee shall
be due and payable within fifteen (15) days from the EFFECTIVE DATE. Should the EFFECTIVE DATE be other than April
8th, the license fee shall be prorated based on a year of 365 days.
3.2 LICENSEE
shall pay WRF an annual non-refundable fee (“RENEWAL FEE”) for each SITE at
which LICENSEE conducts INTERNAL RESEARCH.
Such fee shall be $5,000 for one SITE, $8,000 for two SITES, and an
additional $2,000 for each SITE thereafter.
Said RENEWAL FEE shall be due and payable on every April 8th
by invoice from WRF to maintain the AGREEMENT.
Within thirty (30) days of initiating INTERNAL
RESEARCH at an additional SITE, LICENSEE shall provide WRF with an updated
Appendix A, accompanied by an additional RENEWAL FEE as per the above schedule,
prorated based on a year of 365 days.
The RENEWAL FEE shall be subject to increase on
an annual basis as follows:
i. such increase in any given year shall
be not more than ten percent (10%) greater than the prior year’s RENEWAL FEE;
notwithstanding increases to the RENEWAL FEE due to the addition of SITES to
Appendix A.
ii. WRF shall provide thirty (30) days
advance written notice of such increases to the RENEWAL FEE.
3.3 All
payments made pursuant to this AGREEMENT shall be payable in United States
Dollars to Washington Research Foundation, 2815 Eastlake Avenue East, Suite
#300, Seattle, Washington 98102, Attention:
Controller. Invoices shall be
sent to: ___________________
____________________________________________________________________________.
4. REPRESENTATIONS
AND WARRANTIES
4.1 WRF represents that, to the best of WRF’s
knowledge, information and belief:
i. it has the full right, power and
authority to grant a license to the PATENT RIGHTS granted herein;
ii. it has the full right, power and authority,
and has taken all corporate action necessary, to execute, deliver and perform
this AGREEMENT;
iii. it intends this AGREEMENT to create a
legal, valid and binding obligation, enforceable in accordance with the terms
and conditions hereof; and
iv.
no consent, permit or authorization
of any governmental agency or third party is legally required for it to
execute, deliver and perform the AGREEMENT except such as have already been
obtained.
4.2 LICENSEE represents that, to the best of
LICENSEE’s knowledge, information and belief:
i. it has the full right, power and authority, and has taken all corporate actions necessary, to execute, deliver and perform this AGREEMENT;
ii. it intends this AGREEMENT to create a legal, valid and binding
obligation, enforceable in accordance with the terms and conditions hereof; and
iii. no
consent, permit or authorization of any governmental agency or third party is
legally required for it to execute, deliver and perform the AGREEMENT except
such as have already been obtained.
4.3 Nothing
in this AGREEMENT shall be construed as:
i. a
warranty or representation by WRF as to the validity, enforceability or scope
of the PATENT RIGHTS; or
ii. an
obligation to bring or prosecute actions or suits against third parties for
infringement; or
iii. a
requirement that WRF shall file any patent application, secure any patent, or
maintain any patent in force; or
iv. an
obligation by either party to furnish any manufacturing or technical
information; or
v. granting
by implication, estoppel, or otherwise, any licenses or rights under patents of
WRF other than PATENT RIGHTS, regardless of whether such other patents are
dominant of or subordinate to any patents within PATENT RIGHTS; or
vi. conferring
a right to use in advertising, publicity, or otherwise any trademark or trade
name of WRF, GENENTECH or University of Washington.
4.4 The
PATENT RIGHTS are provided on an “as is” basis. WRF makes no representations or
warranties:
i. of
commercial utility;
ii. of
merchantability or fitness for a particular purpose; or
iii. that the manufacture or use of the
PATENT RIGHTS, LICENSED PRODUCTS, or LICENSED PROCESSES will not infringe any
patent, copyright or trademark or other proprietary rights of others.
WRF shall not be liable to LICENSEE, LICENSEE’s
successors or assigns or any third party with respect to: any claim arising
from the use of the PATENT RIGHTS or use or sale of LICENSED PRODUCTS or
products made using LICENSED PROCESSES; or any claim for loss of profits, loss
or interruption of business, or for indirect, special or consequential damages
of any kind.
5. TERM
AND TERMINATION
5.1 Unless terminated earlier as provided in the
following Sections of this Article 5, this AGREEMENT shall expire upon the
expiration or invalidation by a court of competent jurisdiction from which no
appeal has been or can be taken of the last to expire of the patent(s) included
in the PATENT RIGHTS in the country(ies) in which
LICENSEE is practicing the rights granted in this AGREEMENT, provided that the
RENEWAL FEES are timely paid.
5.2 LICENSEE shall have the right to terminate
this AGREEMENT at any time for any reason upon written notice to WRF.
5.3 This
AGREEMENT shall terminate if LICENSEE breaches any material obligation under
this AGREEMENT and if, after thirty (30) days’ notice of said breach to
LICENSEE, LICENSEE fails to cure such material breach.
5.4 Articles 2.4, 2.5 and 6 of this AGREEMENT
shall survive termination of this AGREEMENT.
5.5 Termination or expiration of this AGREEMENT
in accordance with the provisions hereof shall not limit remedies of either
party that may otherwise be available at law or in equity, subject to the terms
of this AGREEMENT.
6. MISCELLANEOUS RIGHTS AND OBLIGATIONS
6.1 This AGREEMENT, including Appendices A and
B, represents the full and complete understanding between the parties, and
there are no agreements, understandings, representations or warranties of any
kind between the parties except as expressly set forth in this AGREEMENT.
6.2 LICENSEE confirms and agrees that this
AGREEMENT grants no express or implied right or license of any kind (without
limitation) to:
i. make or use LICENSED PRODUCTS or to practice the LICENSED PROCESSES for any purpose other than INTERNAL RESEARCH; or
ii. have made, offer to sell, sell, or import LICENSED PRODUCTS; or
iii. distribute LICENSED PRODUCT(S) to third parties except as allowed under Section 2.4; or
iv. administer to any human being any
LICENSED PRODUCTS.
If LICENSEE desires to commercialize LICENSED
PRODUCTS, LICENSEE must apply for a separate commercial license from WRF. WRF shall have the right to grant or deny any
request for such a commercial license at its sole discretion.
6.3 This
AGREEMENT shall not be amended or modified except by an instrument in writing
duly executed by the parties and stating the parties’ intent by such instrument
to amend or modify this AGREEMENT; provided that, for the avoidance of doubt,
Section 6.3 shall not limit the right of WRF to change the RENEWAL FEE as
expressly provided in Section 3.2 and to amend the RIGHTS UNAVAILABLE
definition as expressly provided in Section 1.2, and the duty of LICENSEE to
update Appendix A as needed, as expressly required by Section 3.2.
6.4 A waiver of any breach of this AGREEMENT or a
failure to enforce any of the terms or conditions of this AGREEMENT shall not
in any way affect, limit or waive a party’s rights hereunder at any time to
enforce strict compliance thereafter with any and every term and condition of
this AGREEMENT.
6.5 Any payment,
notice or other communication required from either party, if delivered in
writing, shall be sent by first‑class mail, facsimile, or commercial
carrier with return receipt requested to the respective address given below, or
to such other address as either party shall designate by written notice. If
delivered via electronic communication, the sending party shall also promptly
confirm via first‑class mail or commercial carrier.
In the case of WRF to:
Washington Research Foundation
2815 Eastlake Avenue East, Suite 300
Seattle, Washington 98102
Fax: 206-336-5615
Attention:
President
with a copy to:
Director of Licensing
In the case of LICENSEE to:
Attention:
with a copy to:
or to such other address for such party as it
shall have specified by like notice to the other party, provided that notices
of a change of address shall be effective only upon receipt thereof. If sent by messenger or express courier
service, the date of receipt (in the case of personal delivery) or the third
business day after the date of dispatch (in the case of courier service) shall
be deemed to be the date on which such notice or other communication has been
given. If notice is given by fax, the
date of receipt shall be deemed the business day such fax was transmitted.
6.6 This
AGREEMENT shall inure to the benefit of, and shall be binding upon, the
successors and permitted assigns of the respective parties hereto; provided
that LICENSEE may only assign this AGREEMENT, with prior written notice to WRF,
to the corporate successor to all or substantially all of LICENSEE’s assets to
which this AGREEMENT pertains.
6.7 LICENSEE shall indemnify, defend and hold
harmless WRF, GENENTECH and the University of Washington, and their respective
directors, regents, officers, employees and representatives (collectively,
“INDEMNITEES”) from and against any and all losses, claims (based on any
theory, including, without limitation, claim of personal injury, product
liability or property damage), damages, demands, suits, actions,
investigations, penalties, fines, liabilities, costs and expenses (including,
without limitation, reasonable attorney's fees and reasonable expenses imposed
upon or incurred by INDEMNITEES) (collectively, “LOSSES”) based on or arising
(i) out of a claim, suit or proceeding against LICENSEE based on or arising out
of LICENSEE’s exercise of the rights granted under this AGREEMENT; or (ii) out
of LICENSEE’s research, development or use in any way of the technology covered
by the PATENT RIGHTS; or (iii) breach by LICENSEE of any covenant or agreement
contained in this AGREEMENT; or (iv) out of the negligence or willful
misconduct of LICENSEE or any of its employees, agents or others acting under
its direction or with its authority, except to the extent caused by the gross
negligence or willful misconduct of INDEMNITEES.
6.8 INDEMNITEES
shall promptly notify LICENSEE of any LOSSES of which they become aware subject
to the provisions of Section 6.7.
LICENSEE shall have the right to defend any such claim or action, at its
cost and expense. LICENSEE shall not
settle or compromise any such claim or action in a matter that imposes any
restrictions or obligations on WRF or grants any rights to the PATENT RIGHTS,
LICENSED PRODUCTS, or LICENSED PROCESSES without WRF’s prior written
consent. If LICENSEE fails or declines to
assume the defense of any such claim or action within ninety (90) days after
notice thereof, WRF may assume the defense of such claim or action for the
account and at the risk of LICENSEE, and any LOSSES related thereto shall be
conclusively deemed a liability of LICENSEE.
LICENSEE shall promptly pay to the INDEMNITEES any LOSSES to which the
indemnity of Section 6.7 relates, as incurred.
The indemnification rights of INDEMNITEES contained in Sections 6.7 and 6.8
are in addition to all other rights which such INDEMNITEES may have at law or in
equity or otherwise.
6.9 This
AGREEMENT is and shall be deemed made and entered into in the State of
Washington, and this AGREEMENT and the relationship between the parties shall be
governed in all respects by the laws of the State of Washington, without
respect to its choice-of-law rules; provided that questions affecting the
construction and effect of any patent shall be determined by the law of the
country in which the patent has been granted.
The parties agree that the exclusive venue of any lawsuit based on or
arising out of this AGREEMENT shall be and remain in the federal or state
courts located in King County, Washington, and they hereby consent to the
personal jurisdiction of such courts for the purpose of enforcing the
provisions of this agreement;
provided that WRF may, if reasonably necessary to protect its rights hereunder,
seek injunctive relief in any appropriate venue. The prevailing party in any action based on
or arising out of this AGREEMENT shall, as part of whatever judgment may be
awarded, be entitled to recover from the other party its litigation costs and
expenses including, without limitation, reasonable fees and expenses for
attorneys and consultants.
IN WITNESS WHEREOF, the parties hereto, by their
duly authorized representatives, have caused this AGREEMENT to be executed as
of the EFFECTIVE DATE.
[COMPANY NAME] WASHINGTON
RESEARCH FOUNDATION
Signature _____________________ Signature __________________________
Printed _____________________ Printed __________________________
Title _____________________ Title __________________________
LICENSEE’S LIST OF SITES PERFORMING INTERNAL
RESEARCH
|
SITE |
ADDRESS (Street Address,
City, State, Zip) |
|
1 |
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2 |
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3 |
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4 |
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APPENDIX
B
Patent Filing Patent Issue Expiry
Country App. No. Date Status Number Date Date
U.S.A. 08/465,931 06/06/95 Issued 5,854,018 12/29/98 04/08/14
U.S.A. 08/465,986 06/06/95 Issued 5,856,123 01/05/99 04/08/14
U.S.A. 08/465,927 06/06/95 Issued 5,919,651 07/06/99 04/08/14