Xochipelli
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GW have the benefit of an exclusive licence with Hortapharm BV in respect of US patent application number 08/919317 entitled “Vaporiser for inhalation and method for extraction of active ingredients from a crude natural product or other matrix”. This US patent application was filed on 28 August 1997 and has recently been formally allowed by the US Patent Office. It is expected to proceed to grant very shortly. This patent was originally filed in the name of its inventor, David Pate and was assigned to Hortapharm by assignments dated 26 August 1997 and 20 December 2000.
On 19 July 2000 GW Pharma entered into an agreement with Hortapharm B.V. (“Hortapharm”) (a company registered in the Netherlands) pursuant to which Hortapharm granted GW Pharma a worldwide exclusive licence to exploit all varieties of the cannabis plant developed by Hortapharm, together with a worldwide exclusive licence over Hortapharm’s know-how in respect of the species or varieties of cannabis plant developed by Hortapharm. This agreement is the continuation of an arrangement which has been in place between GW Pharma (or its successors in title) and Hortapharm since 30 April 1998. An exclusive licence over Hortapharm’s US Patent Application No. 08/919317 which relates to Hortapharm’s vaporisation technology or derivation process is also granted to GW Pharma. The licence granted to GW Pharma is limited to human and veterinary medicine and/or nutraceutical products. Also excluded from the scope of the licence are a number of areas where Hortapharm is either pursuing its own research or where it already has an agreement with a third party. These exclusions are in four parts and can be summarised as follows:
1. Breeding tricks and proprietary information in relation to the development of new plant varieties but not so as to affect GW’s rights under the agreement.
2. Information relating to HP’s existing agreement with a company for the extraction of a single cannabinoid from one plant variety.
3. Hortapharm’s anandamide project.
4. Information relating to use of any plant variety outside of the fields of human and veterinary medicine and/or as a nutraceutical product including industrial hemp, fibre or seed exclusively for non-medical or non-nutraceutical purposes.
GW Pharma has licensed back to Hortapharm on a non-exclusive basis the right of exploitation in the Peoples Republic of China. Additionally where GW Pharma decides not to commercially exploit a particular plant variety Hortapharm is permitted to exploit it.
Under the Agreement, Hortapharm is obliged to make available to GW Pharma any know-how it develops in relation to the licence and to provide suitably qualified staff to assist in the transfer of this know-how in exchange for 24 monthly payments of £25,000 commencing on 30 April 1998 . GW Pharma is to pay to Hortapharm the sum of £100,000 on signature, a further £50,000 on completion of a transition plan to be agreed between the parties and further payments of £50,000 should development work for GW Pharma continue to be done by Hortapharm in the period 25 to 36 months after signature and 36-47 months after signature. Additionally, GW Pharma is obliged to pay Hortapharm for any development works carried out by Hortapharm not covered by these payments the results of which GW Pharma subsequently commercially exploits. Royalties are to be paid by GW Pharma on sales exceeding £750,000 of all plant varieties licensed to GW Pharma under the Agreement. This royalty is calculated as 5 per cent. of sales receipts less direct costs for the first three quarters of any year and 5 per cent. of sales receipts less direct costs less maintenance costs for the last quarter of each year. This royalty rate increases to 8 per cent. where the technology protected by the US patent is utilised but is reduced by half if GW Pharma is licensed on a semi-exclusive (where one additional third party is also licensed) basis. Royalties are payable for the life of any United Kingdom plant registration protecting the relevant plant variety or where no such plant registration exists ten years from the date on which royalties first become due for that plant variety. The Agreement remains in force until no further royalties are due.
The Agreement may be assigned, transferred, charged, licensed or dealt with in any other way by GW Pharma who may also sub-contract its rights under it. Any assignment, sub-licence or sub-contract by Hortapharm cannot be done without the prior written consent of GW Pharma (such consent not to be unreasonably withheld). Certain warranties are given by Hortapharm relating to its ownership of all plant varieties developed by it and in relation to the adequacy of the know-how in relation to the exploitation of the various plant varieties. Hortapharm also warrants that its earlier agreements in this area will not conflict with or limit GW Pharma’s rights under this agreement. Hortapharm provides an indemnity against the infringement of any third party rights by GW Pharma’s exploitation of any of the rights licensed to it and against breach of its warranties.
On 19 July 2000 GW Pharma entered into an agreement with Hortapharm B.V. (“Hortapharm”) (a company registered in the Netherlands) pursuant to which Hortapharm granted GW Pharma a worldwide exclusive licence to exploit all varieties of the cannabis plant developed by Hortapharm, together with a worldwide exclusive licence over Hortapharm’s know-how in respect of the species or varieties of cannabis plant developed by Hortapharm. This agreement is the continuation of an arrangement which has been in place between GW Pharma (or its successors in title) and Hortapharm since 30 April 1998. An exclusive licence over Hortapharm’s US Patent Application No. 08/919317 which relates to Hortapharm’s vaporisation technology or derivation process is also granted to GW Pharma. The licence granted to GW Pharma is limited to human and veterinary medicine and/or nutraceutical products. Also excluded from the scope of the licence are a number of areas where Hortapharm is either pursuing its own research or where it already has an agreement with a third party. These exclusions are in four parts and can be summarised as follows:
1. Breeding tricks and proprietary information in relation to the development of new plant varieties but not so as to affect GW’s rights under the agreement.
2. Information relating to HP’s existing agreement with a company for the extraction of a single cannabinoid from one plant variety.
3. Hortapharm’s anandamide project.
4. Information relating to use of any plant variety outside of the fields of human and veterinary medicine and/or as a nutraceutical product including industrial hemp, fibre or seed exclusively for non-medical or non-nutraceutical purposes.
GW Pharma has licensed back to Hortapharm on a non-exclusive basis the right of exploitation in the Peoples Republic of China. Additionally where GW Pharma decides not to commercially exploit a particular plant variety Hortapharm is permitted to exploit it.
Under the Agreement, Hortapharm is obliged to make available to GW Pharma any know-how it develops in relation to the licence and to provide suitably qualified staff to assist in the transfer of this know-how in exchange for 24 monthly payments of £25,000 commencing on 30 April 1998 . GW Pharma is to pay to Hortapharm the sum of £100,000 on signature, a further £50,000 on completion of a transition plan to be agreed between the parties and further payments of £50,000 should development work for GW Pharma continue to be done by Hortapharm in the period 25 to 36 months after signature and 36-47 months after signature. Additionally, GW Pharma is obliged to pay Hortapharm for any development works carried out by Hortapharm not covered by these payments the results of which GW Pharma subsequently commercially exploits. Royalties are to be paid by GW Pharma on sales exceeding £750,000 of all plant varieties licensed to GW Pharma under the Agreement. This royalty is calculated as 5 per cent. of sales receipts less direct costs for the first three quarters of any year and 5 per cent. of sales receipts less direct costs less maintenance costs for the last quarter of each year. This royalty rate increases to 8 per cent. where the technology protected by the US patent is utilised but is reduced by half if GW Pharma is licensed on a semi-exclusive (where one additional third party is also licensed) basis. Royalties are payable for the life of any United Kingdom plant registration protecting the relevant plant variety or where no such plant registration exists ten years from the date on which royalties first become due for that plant variety. The Agreement remains in force until no further royalties are due.
The Agreement may be assigned, transferred, charged, licensed or dealt with in any other way by GW Pharma who may also sub-contract its rights under it. Any assignment, sub-licence or sub-contract by Hortapharm cannot be done without the prior written consent of GW Pharma (such consent not to be unreasonably withheld). Certain warranties are given by Hortapharm relating to its ownership of all plant varieties developed by it and in relation to the adequacy of the know-how in relation to the exploitation of the various plant varieties. Hortapharm also warrants that its earlier agreements in this area will not conflict with or limit GW Pharma’s rights under this agreement. Hortapharm provides an indemnity against the infringement of any third party rights by GW Pharma’s exploitation of any of the rights licensed to it and against breach of its warranties.
