Cross-License Agreement (2001)Full Document 

Start of Preview
                            Cross-License Agreement


This Cross-License Agreement, effective as of the Effective Date, (the
"Agreement") governs disposition of certain intellectual property rights between
ZymoGenetics, Inc., a Washington corporation having a principal place of
business at 1201 Eastlake Avenue East, Seattle, Washington 98102 ("ZGI") and
Novo Nordisk A/S, Enzyme Business, a Danish corporation having a principal place
of business at Novo Alle, DK-2880, Bagsvaerd, Denmark ("NN").

WHEREAS, ZGI wishes to acquire licenses to certain rights to patents and patent
applications owned or controlled by NN; and

WHEREAS, NN wishes to acquire licenses to certain rights to patents and patent
applications owned or controlled by ZGI;

NOW THEREFORE, IT IS HEREBY AGREED AS FOLLOWS:


                                   ARTICLE 1
                                  Definitions
                                  -----------

SECTION 1.1.  "Additional Patents" means:  any patents or patent applications of
               ------------------
ZGI or NN that are not ZGI Patents or NN Patents.

SECTION 1.2.  "Affiliate" means:  any company, joint venture partnership, or
               ---------
other business entity which controls, is controlled by, or is under common
control of a party hereto. A business entity shall be deemed to control another
business entity if it possesses, directly or indirectly, the power to order or
cause the direction, management and policies of such other business entity,
whether through the ownership of voting securities, by contract or otherwise.

SECTION 1.3.  "Commercialization Rights" means:  (a) the right to conduct
               ------------------------
research (including research with academic and other non-profit institution
collaborators), use, sample, develop (including clinical development), promote,
manufacture, have made, market, offer to sell, import, export, distribute, sell,
and have sold NN or ZGI Products; and (b) the right to conduct research, use,
sample, develop (including clinical development), manufacture, have made,
promote, market, offer to sell, import, export, distribute, sell and have sold
NN or ZGI Products together with one or more third parties as part of a co-
marketing agreement, strategic partnership, joint venture relationship or the
like in which NN or ZGI continues work on research and development of NN or ZGI
Products.

SECTION 1.4.  "Commercialization Partner" means:  a third party to whom NN or
              ---------------------------
ZGI has extended rights consistent with SECTION 1.3(b) above.


Cross-License Agreement
Page 1 of 22
[*] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.


SECTION 1.5.  "Effective Date" means:  the date on which external investors have
               --------------
first invested at least fifty million United States dollars (US$50,000,000) in
ZGI which money dilutes NN's ownership interest in ZGI to below eighty percent
(80%) and which date is noted for the sake of clarity on the signature page of
this Agreement.

SECTION 1.6.  "NN Field" means:  [*]
               --------

SECTION 1.7.  "NN Patent" means:  any patent or patent application within a
               ---------
patent family listed in Appendix 1 as well as any applications claiming priority
therefrom, continuations, continuations-in-part, divisions, utility models,
extensions, renewals, substitutions and additions thereof, and all reissues,
revalidations, and reexaminations thereof, and all patents issuing therefrom and
all foreign counterparts thereof.

SECTION 1.8.  "NN Product" means:  any product, which absent a license granted
               ----------
hereunder would infringe a Valid Claim of a ZGI Patent.

SECTION 1.9.  "Negotiation Fields" means:  [*]
               ------------------

SECTION 1.10.  "Net Sales" means:  NN's or ZGI's and their respective
                ---------
Commercialization Partners' gross proceeds from sales of NN or ZGI Products
invoiced to any independent third party, less,

     i.   any direct or indirect credits and allowances or adjustments,
     including, without limitation, credits and allowances on account of price
     adjustments or on account of rejection, recall or return of NN or ZGI
     Products previously sold;

     ii.  any trade and cash discounts; price reductions or rebates, retroactive
     or otherwise imposed by government authorities; and third party distributor
     fees;

     iii. any sales, excise, turnover, value added, or similar taxes and any
     duties and other governmental charges imposed upon the production,
     importation, use or sale of NN or ZGI Product(s);

     iv.  applicable transportation, importation, insurance and other handling
     charges; and

     v.   the per unit cost of special devices used for administration of NN or
     ZGI Products. Such special devices shall not include conventional devices
     (e.g., tablets, standard syringes, suppositories and/or standard
     transdermal patches).


Deductions i, ii and iv in the aggregate shall not exceed fifteen percent (15%)
of gross sales of Product by NN, ZGI and their respective Affiliates and
Commercialization Partner(s) during any


Cross-License Agreement
Page 2 of 22
[*] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.



reporting period. Sales of NN Products between NN and an Affiliate or
Commercialization Partner of NN shall not be included within Net Sales. Sales of
ZGI Products between ZGI and an Affiliate or Commercialization Partner of ZGI
shall not be included within Net Sales.

SECTION 1.11.  "Valid Claim" means:  a claim of any issued and unexpired patent
                -----------
within NN or ZGI Patents, as applicable, so long as such claim shall not have
been disclaimed or shall not have been held invalid in a final decision rendered
by a tribunal of competent jurisdiction from which no appeal has been or can be
taken.

SECTION 1.12.  "ZGI Field" means"  [*]
                ---------

SECTION 1.13.  "ZGI Patent" means:  any patent or patent application within a
                ----------

End of Preview