Exclusive License Agreement (2005)Full Document 

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EXCLUSIVE

LICENSE AGREEMENT

 

 

 

 

Between

 

THE REGENTS OF THE

UNIVERSITY OF CALIFORNIA

 

And

 

MEDIVATION, INC.

and

MEDIVATION PROSTATE THERAPEUTICS, INC.

 

 

 

 

“Preparation and Activity of Novel Prostate Cancer Drugs”

(UC Case No. 2004-129)

and

“Groups 1 and 2: Preparation and Activity of

Novel Prostate Cancer Drugs”

(UC Case No. 2005-438)

 

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LICENSE AGREEMENT

TABLE OF CONTENTS

 

ARTICLE


   PAGE NUMBER

RECITALS

   3

  1. DEFINITIONS

   4

  2. GRANT

   6

  3. SUBLICENSES

   6

  4. FEES

   7

  5. ROYALTIES

   9

  6. DILIGENCE

   10

  7. PATENT FILING, PROSECUTION AND MAINTENANCE

   11

  8. PATENT INFRINGEMENT

   12

  9. PROGRESS AND ROYALTY REPORTS

   13

10. BOOKS AND RECORDS

   14

11. LIFE OF THE AGREEMENT

   14

12. TERMINATION BY THE REGENTS

   14

13. TERMINATION BY LICENSEE

   15

14. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION

   15

15. PATENT MARKING

   15

16. USE OF NAMES AND TRADEMARKS

   15

17. LIMITED WARRANTY

   15

18. INDEMNIFICATION

   16

19. NOTICES

   18

20. ASSIGNABILITY

   18

21. LATE PAYMENTS

   18

22. WAIVER

   19

23. FAILURE TO PERFORM

   19

24. GOVERNING LAWS

   19

25. GOVERNMENT APPROVAL OR REGISTRATION

   19

26. EXPORT CONTROL LAWS

   19

27. PREFERENCE FOR UNITED STATES INDUSTRY

   19

28. FORCE MAJEURE

   19

29. CONFIDENTIALITY

   20

30. HHMI THIRD-PARTY BENEFICIARY STATUS

   21

31. MISCELLANEOUS

   21

APPENDIX A

   22

 

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EXCLUSIVE LICENSE AGREEMENT

 

This Agreement is made and is effective this 12th day of August 2005, (the “Effective Date”) between THE REGENTS OF THE UNIVERSITY OF CALIFORNIA (“The Regents”), a California corporation having its corporate offices located at 1111 Franklin Street, Oakland, California 94607-5200, acting through its offices located at 10920 Wilshire Blvd, Suite 1200, Los Angeles, California 90024-1406, and MEDIVATION, INC. (“Medivation”), a Delaware corporation, and MEDIVATION PROSTATE THERAPEUTICS, INC. (“MPT”) (Medivation and MPT together “Licensee”), a Delaware corporation and wholly-owned subsidiary of Medivation, each having a principal place of business at 501 Second Street, Suite 211, San Francisco, CA 94107.

 

RECITALS

 

WHEREAS, certain inventions (the “Inventions”), generally characterized as “Preparation and Activity of Novel Prostate Cancer Drugs” (UC Case No. 2004-129) and “Groups 1 and 2: Preparation and Activity of Novel Prostate Cancer Drugs” (UC Case No. 2005-438), was made in the course of research at the University of California, Los Angeles by Michael E. Jung, Samedy Ouk, Charlie D. Chen and Derek Welsbie, employee(s) of The Regents, and Charles L. Sawyers, an employee of the Howard Hughes Medical Institute (“HHMI”) and member of the faculty of the University of California, Los Angeles, and is claimed in Regents’ Patent Rights as defined below;

 

WHEREAS, each of Michael E. Jung, Samedy Ouk, Charlie D. Chen and Derek Welsbie, as employees of The Regents, is obligated to assign their right, title and interest in and to the Invention to The Regents;

 

WHEREAS, HHMI assigned its rights in the Invention to The Regents under the terms of the interinstitutional agreement with HHMI having UC Control No. 1986-18-0017 (“HHMI Interinstitutional Agreement”), and accordingly, The Regents has the authority to license the entire interest in the Invention and any patent rights claiming it;

 

WHEREAS, under the terms of the HHMI Interinstitutional Agreement, HHMI has reserved nonexclusive, paid-up, royalty-free, irrevocable licenses, with no right to sublicense others, to make and use the Invention for research purposes;

 

WHEREAS, the Invention was developed with United States Government funds, and The Regents has elected title thereto and granted a royalty-free nonexclusive license to the United States Government on August 10, 2005, as required under 35 U.S.C. §201-212;

 

WHEREAS, Licensee and The Regents entered into a secrecy agreement effective April 12, 2005 and expiring on April 11, 2010 (“Secrecy Agreement”) to allow Licensee to evaluate its interest in the Inventions and, as a result of its evaluation, Licensee wishes to obtain certain rights from The Regents;

 

WHEREAS, Medivation and The Regents entered into a Letter Agreement effective July 1, 2005 in which The Regents agreed to negotiate exclusively with Medivation for a license to certain rights in the Inventions;

 

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WHEREAS, Licensee is a “small business concern” as defined in 15 U.S.C. §632; and

 

WHEREAS, The Regents wishes that Regents’ Patent Rights be developed and utilized to the fullest extent so that the benefits can be enjoyed by the general public.

 

The parties agree as follows:

 

1. DEFINITIONS

 

1.1 Regents’ Patent Rights” means The Regents interest in the claims of the United States patents and patent applications, corresponding foreign patents and patent applications (requested under Paragraph 7.3 herein), and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those claims in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) based on the patent applications listed in Appendix A (UC Case Nos. 2004-129 and 2005-438).

 

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