1
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
Exhibit 10.9
LICENSE AGREEMENT
Agreement made this 28th day of September 1990 between MacroChem Corp.
(hereinafter "MacroChem"), a Massachusetts corporation having its principal
place of business at 0 Xxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000 and Ascent
Pharmaceutical, Inc. (hereinafter "Ascent"), a Delaware corporation, having its
principal place of business at 0 Xxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000.
WHEREAS, MacroChem possesses proprietary technology for drug-delivery utilizing
transdermal enhancers ("SEPA compounds") in combination with catecholamine
bronchodilators to treat respiratory disorders and in combination with cromolyn
sodium to treat allergic disorders. Such technology is the subject matter of
certain U.S. and foreign patents;
WHEREAS, Ascent desires to obtain an exclusive license to such technology;
NOW, THEREFORE, in consideration of the mutual covenants and conditions set
forth below, MacroChem and Ascent agree as follows:
1. Definitions.
1.1 "Field" shall mean the diagnosis and treatment of respiratory and
allergic disorders with catecholamine bronchodilators and cromolyn sodium
respectively in conjunction with SEPA compounds.
1.2 "MacroChem Patent Rights" shall mean the patents and patent
applications identified in Exhibit A and any continuations,
continuations-in-part, or divisions thereof, and any reissue or reexamination
patents based thereon and any foreign counterparts thereto.
1.3 "MacroChem Technology" shall mean know-how, technical information,
trade secrets, methods and agents provided by MacroChem to Ascent useful in the
practice of the MacroChem Patent Rights.
1.4 "Licensed Product" shall mean (1) any product in the Field covered
by a pending or issued, unexpired claim contained in the MacroChem Patent Rights
or (2) any product in the field manufactured or used in accordance with a
Licensed Method.
- 1 -
2
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
1.5 "Licensed Method" shall mean any process or method covered by a
pending or issued, unexpired claim contained in the MacroChem Patent Rights and
used for the manufacture or use of products in the Field.
1.6 "Net Sales" shall mean ***************************************
********************************************************************************
********************************************************************************
********************************************************************************
********************************************************************************
************************************************************************ in
connection with sales of Licensed Products. For purposes of determining Net
Sales, a sale shall be deemed to have occurred when payment is received for the
sale.
2. Grant.
2.1.1 License. MacroChem hereby grants to Ascent an exclusive,
worldwide license under the MacroChem Patent Rights and a non-exclusive
worldwide, perpetual license under the MacroChem Technology related to the
Field, including the rights, with the right to sublicense all such rights, to
make, to have made, to use, to have used, to sell and to have sold Licensed
Products for use in the Field and to practice Licensed Methods in the Field (the
"License").
2.1.2 Improvements.
(a) Improvements. MacroChem agrees to notify Ascent in writing of any
patents it owns or patent applications it owns arising from work at MacroChem
that are improvements of the technology disclosed in the MacroChem Patent Rights
(hereinafter called "Improvements"). The said notice shall be given within
thirty (30) days of the filing of such patent application, and shall describe
the Improvements in sufficient detail for Ascent to reasonably evaluate their
significance. Ascent shall have an option, exercisable only by written notice
delivered to MacroChem within thirty (30) days of the date of MacroChem's said
notice to accept an exclusive license in the Field to such Improvements as
MacroChem Patent Rights hereunder at no additional cost. If Ascent exercises
such option, the Improvements shall become part of the MacroChem Patent Rights
licensed to Ascent hereunder and Exhibit A shall be amended accordingly. If
Ascent does not respond in writing within thirty (30) days of the date of
MacroChem's notice, it is to be assumed that Ascent has declined the right to
exercise the option, and, in such event, MacroChem shall be free to license the
Improvements to third parties, provided that any licensee of such Improvements
- 2 -
3
shall not have any rights under MacroChem Patent Rights without a license from
Ascent, which license Ascent may in its sole discretion decline to grant.
(b) Notice if MacroChem Elects Not to Seek Patent Protection. In the
case of an Improvement in the Field at MacroChem which may constitute a
patentable invention subject to Subsection 2.1.2(a) above, MacroChem shall use
reasonable efforts prior to any publication by any MacroChem employee of any
information disclosing such invention to inform Ascent in a timely manner if
MacroChem does not intend to file a patent application covering such invention,
in which case Ascent shall have the right to file, at its expense, a patent
application covering such development in the name of MacroChem, and MacroChem
shall provide Ascent, at Ascent's expense (excluding rent, salaries and
utilities and other expenses typically considered overhead), all necessary
assistance to facilitate such filing. Any such filings or payments by Ascent
notwithstanding, Ascent shall have no rights in any such patent applications
(including any resulting patents) except to the extent Ascent acquires rights
therein under Section 2.1.2(a), as the case may be. MacroChem agrees to act in a
prudent and businesslike manner to attempt to ensure than any developments which
are the subject of this Section 2.1.2(b) are brought to the attention of Ascent.
2.1.3 Test Data. Ascent and MacroChem shall grant each other access to
any non-proprietary test data either one develops in connection with the
preparation of regulatory approvals. MacroChem further agrees to use reasonable
efforts to obtain any consents necessary to allow Ascent to use test data
provided in regulatory applications by other entities with which MacroChem has
agreements relating to SEPA compounds.
2.2 Sublicense. Ascent shall have the right to grant sublicenses to
any party with respect to any rights conferred upon Ascent under this Agreement,
provided, however, that (i) any such sublicense (except such sublicenses to use
granted in connection with the sale of Licensed Products) will include
reasonable reporting obligations and termination provisions for breach by the
sublicense, and (ii) the identity of each such sublicensee shall promptly be
disclosed to MacroChem.
2.3 Survival of Sublicenses. In the event of termination of this
Agreement, MacroChem shall recognize the license under MacroChem Patent Rights
granted in such sublicenses, provided that the sublicense(s) abide(s) by the
terms of the sublicense agreement and pay(s) any amount due when payable to
MacroChem.
2.4 License Fees. As consideration for the license granted hereunder,
and continuation thereof, Ascent shall pay MacroChem the license fees set forth
in this Section 2.4. Such fees are consideration for the grant of the license
hereunder, and the continuation thereof and MacroChem shall have no obligation,
unless it materially breaches this Agreement, to return any such amounts
notwithstanding any failure by
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4
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
Ascent to develop any Licensed Product(s) or market any Licensed Product(s)
commercially, and notwithstanding the volume of sales of the Licensed
Product(s). Such license fees shall be payable to MacroChem as follows:
****************************************************************************
********************************************************************************
****************************************************.
The licensee fee set forth in this Section 2.4 shall not be creditable
against earned royalties due pursuant to Section 2.5 herein below.
Failure to make timely payments of amounts due pursuant to this Section 2.4
shall be grounds for immediate termination pursuant to written notice by
MacroChem.
2.5.1 Royalty. Ascent shall pay to MacroChem a royalty as follows:
****************** of Net Sales of Licensed Products in the
country of sale.
No royalty shall be due for the use of any MacroChem Technology
in any product which is not covered by a claim of the MacroChem Patent Rights.
Ascent shall pay to MacroChem ********************* of all sublicense
royalties paid to Ascent. Ascent will share equally with MacroChem all other
sublicensing income attributable to the sublicense of MacroChem Patent Rights,
including option fees, license fees, minimum, paid-up licenses and the like.
Ascent shall not be required to share with MacroChem any payment received from
sublicensees for consulting, training or sale of equipment not covered by a
claim of the MacroChem Patent Rights.
2.6 Quarterly Payments. With regard to Net Sales earned by Ascent,
royalties due thereon shall be payable quarterly, within thirty (30) days after
the end of each calendar quarter, based upon the Net Sales during such preceding
calendar quarter, commencing with the calendar quarter in which the first
commercial sale of a product covered by a claim of the MacroChem Patent Rights
is made. With regard to Net Sales earned by a sublicensee pursuant to this
Agreement, royalties due thereon shall be payable to MacroChem by Ascent
quarterly, within sixty (60) days after the end of each calendar quarter, based
upon the sublicensee's Net Sales during
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5
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
such preceding calendar quarter by such sublicensee, commencing with the
calendar quarter in which the first commercial sale of a product covered by a
claim of the MacroChem Patent Rights any Licensed Product is made by the
sublicensee.
2.7 Duration of Royalty Obligations. The royalty obligations of Ascent
shall terminate on a country-by-country, patent-by-patent basis concurrently
with the expiration of the applicable MacroChem Patent Rights.
2.8 Reports. Ascent shall furnish to MacroChem at the same time as
each royalty payment is due by Ascent, a detailed written report of the Net
Sales and the royalty due and payable, on a country-by-country basis, for the
calendar quarter upon which the royalty payment is based.
2.9 Records. Ascent shall keep full, complete and proper records and
accounts for its Net Sales in sufficient detail to enable the royalties payable
on such Net Sales to be determined. MacroChem shall have the right at its own
expense to appoint an independent certified public accounting firm approved by
Ascent, which approval shall not be unreasonably withheld, to audit Ascent's
records which are necessary to verify the royalties payable pursuant to this
Agreement. Such audit shall be at MacroChem's expense; provided, however, that
if the audit discloses that MacroChem was underpaid royalties by at least ***
percent (**%) for any calendar quarter, then Ascent shall reimburse MacroChem
for any such audit costs, together with an amount equal to the additional
royalties to which MacroChem is entitled as disclosed by the audit. MacroChem
may exercise its right of audit no more frequently than once in any calendar
year. The accounting firm shall disclose to MacroChem only information relating
solely to the accuracy of the royalty payments. Ascent shall preserve and
maintain all such records required for audit for a period of three (3) years
after the calendar quarter to which the record applies.
2.10 Foreign Sales. The remittance of royalties payable on sales
outside the United States invoiced in foreign currencies shall be payable to
MacroChem in United States Dollars at the rate of exchange obtained by Ascent.
If the transfer or the conversion into the United States Dollar Equivalents of
any remittance in any such instance is not lawful or possible, the payment of
such royalties thereon as is necessary shall be made by the deposit thereof, in
the currency of the country where the sale was made on which the royalty was
based to the credit and account of or its nominee in any commercial bank or
trust company of MacroChem's choice located in that country, prompt noticed of
which shall be given by MacroChem to Ascent.
3. Patent Matters.
3.1 Patent Maintenance. For each patent and patent application of the
MacroChem Patent Rights, MacroChem shall direct, control, and diligently conduct
the processes as appropriate for issuance, extension, renewal or other
- 5 -
6
maintenance of each resulting patent, subject to such requirements, limitations
and conditions as are expressly set forth in this Agreement. MacroChem shall not
fail to maintain any of the MacroChem Patent Rights without a *** (**) days'
prior written notice to Ascent.
If MacroChem decides not to maintain any patent or patent application and Ascent
disapproves of such decision, and so notifies MacroChem in writing, then,
provided all amounts then due MacroChem under this agreement are paid in full,
MacroChem shall assign such patent for use in the field subject to any
outstanding licenses to third parties to Ascent at no additional fee. After any
such assignment, no fees or payments of any sort shall be due to MacroChem with
respect to such assigned applications or patents and they shall no longer be
included in the MacroChem Patent Rights or MacroChem Technology.
3.2 Provisions of Information to Ascent. MacroChem shall keep Ascent
informed with regard to the prosecution and maintenance of the MacroChem Patent
Rights. MacroChem shall promptly deliver to Ascent copies of all such patent
applications, amendments, related correspondence, and other related matters.
3.3. Patent Costs. MacroChem shall bear all expenses incurred in
connection with maintaining patents of the MacroChem Patent Rights pursuant to
Section 3.1.
3.4 Infringement Actions.
3.4.1 Claims of Infringement against Third Parties. Ascent shall
have the right but not the obligation to prosecute any and all infringement of
any MacroChem Patent Rights in the Field, in its name or in MacroChem's name, as
appropriate, and may enter into settlements, judgments or other arrangements
respecting the same all at its own expense; provided, however, that MacroChem
shall permit any action to be brought in its name, and further that if a
settlement or other arrangement is negotiated between Ascent and an unlicensed
third party, said settlement or arrangement shall be subject to the approval of
MacroChem with regard to portions affecting MacroChem Patent Rights, such
approval not to be unreasonably withheld. Any settlement or damages or other
recovery from such infringement actions in excess of the expenses and costs
incurred by Ascent and MacroChem in connection with such action (which shall be
paid to MacroChem and Ascent on a first priority basis) shall be shared equally
by Ascent and MacroChem. MacroChem agrees to provide reasonable assistance at
MacroChem's expense of a technical nature which Ascent may require in any
litigation arising in accordance with the provisions of this Section 3.5,
whether or not MacroChem has requested the opportunity to share in any recovery.
In the event that within ninety (90) days after Ascent has actual knowledge of
such an infringement by a third party in the Field Ascent fails to notify
MacroChem that it will challenge any such infringer, thereafter MacroChem shall
- 6 -
7
have the right to prosecute such infringement on its own behalf at its own
expense. Should MacroChem do so, any damages or other recovery from such
infringement action shall be the sole property of MacroChem.
3.4.2 Claims of Infringement Against Ascent.
(a) If Ascent or a sublicensee is sued by a third party
charging that the SEPA compounds infringe a patent or that the manufacture, use,
or sale of the Licensed Products or practice of the Licensed Methods by Ascent
or a sublicensee (or a customer of Ascent or a sublicensee) infringe a patent
that dominates any claim of the MacroChem Patent Rights, Ascent shall promptly
notify MacroChem. If Ascent should decide to settle any such litigation, it
shall notify MacroChem and MacroChem shall have the opportunity to assume the
prosecution of the litigation including all subsequent expenses with counsel
approved by Ascent, which approval shall not be unreasonably withheld; provided,
however, that MacroChem shall not enter into any settlement without Ascent's
consent. Unless MacroChem notifies Ascent within thirty (30) days of receipt of
Ascent's notice of proposed settlement that MacroChem will assume the defense of
the litigation, Ascent shall be empowered to settle any such third party claim
without the approval of MacroChem's. MacroChem shall cooperate fully with Ascent
at MacroChem's expense in defending against any such claim.
(b) In the event of a judgment in any suit described in
subsection (a) or a settlement of such suit requiring Ascent to pay damages or a
royalty to, grant a sublicense to, or enter into cross-licensing arrangement
with a third party, MacroChem shall indemnify and hold harmless Ascent from and
against any liability, damage, loss, cost or expense (including reasonable
attorneys' fees and expenses of litigation).
4. Obligations Related to Commercialization.
4.1 Commercial Development Obligation.
4.1.1 In order to maintain the license granted hereunder in
force, Ascent shall use reasonable efforts to develop a commercially feasible
product in each of the respiratory and allergic field segments for which a
license under the MacroChem Patent Rights is required. Ascent may, in its sole
discretion, determine the sequence and timing it will use in introducing
Licensed Products into different geographic areas. Ascent shall keep MacroChem
generally informed as to Ascent's progress in such development, including its
efforts if any, to sublicense hereunder. If Ascent has not made any reasonable
efforts to commercially develop a Licensed
- 7 -
8
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
Product in each of the respiratory and allergic field segments in a particular
geographic area in which MacroChem Patent Rights exist within ********** of the
date hereof or abandons a previously introduced Licensed Product in a particular
geographical area in which MacroChem Patent Rights exist, without a good faith
business reason for not doing so, and, after ******** notice by MacroChem to
Ascent, Ascent continues to not make reasonable efforts to commercially develop
a Licensed Product during such one year, then the rights to the MacroChem Patent
Rights in such geographic area shall revert to MacroChem.
4.2 Products to be Supplied by MacroChem. MacroChem will supply Ascent
with SEPA compounds for testing purposes and for use in final products produced
by Ascent at prices to be agreed by the parties; provided, however, that the
price of the SEPA compounds shall be ******************************************
********************************************************************************
***************************** (including quality assurance and quality control
costs) of the total of all final dosage form components including the SEPA
compounds, excluding the labels, inserts, covers, boxes which this finished
dosage form may be placed into for the trade. If MacroChem does not or cannot
manufacture SEPA compounds to the required specifications of Ascent, Ascent may
obtain such compounds from any other source and MacroChem will provide to Ascent
or a mutually acceptable third party any know-how necessary to manufacture the
SEPA compounds required by Ascent.
4.3 Product Development and Government Approvals. Ascent shall be
responsible for engaging in all product development, pre-clinical and clinical
testing and obtaining all necessary government regulatory approvals for the
development, production, distribution and use of any Licensed Product including
any safety studies. Ascent shall have sole responsibility for any warning
labels, packaging, instructions as to use and quality control as to any Licensed
Product.
4.4 Product Liability Indemnity.
4.4.1 Ascent shall indemnify, defend and hold harmless MacroChem
and its directors, officers, employees, agents and their respective successors,
heirs and assigns (the "MacroChem Indemnities"), against any and all liability,
damage, loss, cost or expense (including reasonable attorney's fees and expenses
of litigation) incurred by or imposed upon the MacroChem Indemnities or any one
of them in connection with any claims, suits, actions, demands or judgments
arising out of the production, manufacture or sale by a Ascent or a sublicensee
or
- 8 -
9
agent of Ascent of any product or process relating to, or developed pursuant to,
this Agreement except as provided in Section 4.4.2 below.
4.4.2 Ascent's indemnification obligation under Section 4.4.1
shall not apply to any liability, damage, loss, cost or expense to the extent
that it is attributable to claims arising out of product manufacturing defects
relating to the SEPA compounds supplied by MacroChem pursuant to Section 4.2 or
the negligent activities of the MacroChem Indemnities.
4.4.3 Ascent agrees, at its own expense, to provide attorneys
reasonably acceptable MacroChem to defend against any actions brought or filed
against any entity or person indemnified under Section 4.4.1 with respect to the
subject of indemnity contained therein, whether or not such actions are
rightfully brought.
4.4.4 MacroChem shall indemnify, defend and hold harmless Ascent
and its directors, officers, employees, agents and their respective successors,
heirs and assigns (the "Ascent Indemnitees") against any and all liability,
damage, loss, cost or expense (including reasonable attorney's fees and expenses
of litigation) incurred by or imposed upon Ascent Indemnitees or any one of them
in connection with any claims, suits, actions, demands or judgments arising out
of the production, manufacture or sale of the SEPA compounds supplied to Ascent
by MacroChem pursuant to Section 4.2.
4.4.5 MacroChem's indemnification obligation under Section 4.4.4
shall not apply to any liability, damage, loss, cost or expense to the extent
that it is attributable to the negligent activities of Ascent Indemnitees.
4.4.6 MacroChem agrees, at its own expense, to provide attorneys
reasonably acceptable to Ascent to defend against any actions brought or filed
against any party indemnified under Section 4.4.4 with respect to the indemnity
contained therein, whether or not such actions are rightfully brought.
4.4.7 This Section 4.4 shall survive expiration or termination of
this Agreement.
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10
5. Warranties.
5.1 MacroChem represents and warrants that it is the sole owner of the
MacroChem Patent Rights and that it otherwise has the authority to grant the
licenses granted hereunder. MacroChem represents that, as of the effective date
of this Agreement, no federal agency has supported the MacroChem Patent Rights.
MacroChem warrants that as of the effective date of this Agreement, it has not
received actual notice of any patents or patent applications owned by third
parties which would prevent Ascent from making, using or selling Licensed
Products in the Field or practicing or otherwise using the Licensed Methods in
the Field nor does it know or have any reason to know that any patents owned by
third parties would prevent Ascent from making, using or selling Licensed
Products in the Field or practicing or otherwise using the Licensed Methods in
the Field.
5.2 MacroChem warrants that the applications and patents set forth on
the attached Exhibit A constitute all patent applications and patents to which
MacroChem has power to grant an exclusive license that claim or describe
products or methods in the Field.
6. Term and Termination of Agreement.
6.1 Term. Unless terminated sooner in accordance with the terms
herein, this Agreement shall terminate upon the last to expire of the MacroChem
Patent Rights, provided however the license to MacroChem Technology shall
survive such termination.
6.2 Termination Upon Default. In the event of default by a party
("Defaulting party"), the other party ("Non-Defaulting party") may give the
Defaulting party written notice of the default and elect to terminate this
Agreement sixty (60) days after receipt of the notice if the default is
susceptible of cure within 60 days or if not susceptible of cure within sixty
(60) days within such longer period as such breach could have reasonably been
cured, but in no event to exceed an additional thirty (30) days and if, within
said time period, the Defaulting party fails to resolve the default by (i)
curing the default, (ii) providing a written explanation satisfactory to the
Non-Defaulting party that a default has not occurred, or (iii) entering into a
written agreement with the Non-Defaulting party for the cure or other resolution
of the default. Upon failure of the Defaulting party to resolve the default as
required, the Non-Defaulting party may terminate this Agreement by giving
written notice to the defaulting party, said termination to be effective upon
the date specified in the notice.
Such termination rights shall be in addition to and not in substitution for
any other remedies that may be available to the party serving such notice
against the
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11
party in default. Termination pursuant to this Section 6.2 shall not relieve the
party in default from liability and damages to the other party for breach of
this Agreement. Waiver by either party of a single default or a succession of
defaults shall not deprive such party of any right to terminate this Agreement
arising by reason of any subsequent default.
6.3 Termination Upon Insolvency. This Agreement may be terminated by
either party giving written notice of termination to the other party if the
other party is adjudicated insolvent or upon the appointment of a receiver of
substantially all of the other party's assets or the making by the other party
of any assignment of substantially all of its assets for the benefit of
creditors. Termination shall be effective upon the date specified in such
notice. Upon the occurrence of any such events of insolvency with respect to
either party, the Trustee or such party as the Debtor in Possession shall not
interfere with the other party's rights pursuant to this Agreement.
6.4 Rights Upon Expiration of MacroChem Patent Rights. Neither party
shall have any further rights or obligations upon the expiration of the last to
expire of the MacroChem Patent Rights with respect to the Agreement, other than
the obligation of Ascent to make any and all final reports and payments for the
final quarter period, provided that upon such expiration, the parties shall
continue to abide by their obligations to indemnify pursuant to Section 4.4 and
to maintain product liability insurance pursuant to Section 5.5, and the right
of Ascent to continue in its enjoyment of the License of the MacroChem
Technology.
6.5 Rights Upon Termination. Upon any termination of this Agreement,
the License granted hereunder shall terminate. Except as otherwise provided in
this Agreement with respect to work-in-progress, upon such termination, Ascent
shall have no further right to develop, manufacture or market a Licensed
Product, or to otherwise use any of the MacroChem Technology which is covered by
this Agreement. Any such termination shall not relieve either party from any
obligations accrued to the date of such termination. Notwithstanding the
foregoing, sublicenses in effect as of the date of termination shall survive
pursuant to the provisions of Sections 2.2 and 2.3.
6.6 Work-in-Progress. Upon any such early termination of the license
granted hereunder in accordance with this Agreement, provided royalties due to
date have been paid, Ascent shall be entitled to finish any work-in-progress and
place it into inventory, and to sell any completed inventory of a Licensed
Product covered by such license which remain on hand as of the date of the
termination, so long as Ascent pays to MacroChem the royalties applicable to
said subsequent sales in accordance with the terms and conditions as set forth
in this Agreement.
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12
7. Assignment; Successors.
7.1 Assignment. This Agreement shall not be assignable by either of
the parties without the prior written consent of the other party, except to a
successor in interest of all or substantially all of the assets or business of a
party hereto.
7.2 Binding Upon Successors and Assigns. Subject to the limitations on
assignment herein, this Agreement shall be binding upon and inure to the benefit
of said successors in interest and assigns of MacroChem and Ascent. Any such
successor or assignee of a party's interest shall expressly assume in writing
the performance of all the terms and conditions of this Agreement to be
performed by said party.
8. General Provisions.
8.1 Independent Contractors. The relationship between MacroChem and
Ascent is that of independent contractors. MacroChem and Ascent are not joint
venturers, partners, principal and agent, master and servant, employer or
employee, and have no other relationship other than independent contracting
parties. MacroChem shall have no power to bind or obligate Ascent in any manner,
other than as is expressly set forth in this Agreement. Likewise Ascent shall
have no power to bind or obligate MacroChem in any manner other than as is
expressly set forth in this Agreement.
8.2 Entire Agreement; Modification. This Agreement sets forth the
entire agreement and understanding between the parties as to the subject matter
set forth in this Agreement. There shall be no amendments or modifications to
this Agreement, except by a written document which is signed by both parties.
8.3 Massachusetts Law. This Agreement shall be construed and enforced
in accordance with the laws of the Commonwealth of Massachusetts.
8.4 Heading. The headings for each article and section in this
Agreement have been inserted for convenience of reference only and are not
intended to limit or expand on the meaning of the language contained in the
particular article or section.
8.5 Severability. If any provision of this Agreement is ultimately
held to be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not in any way be affected or
impaired thereby.
8.6 No Waiver. Any delay in enforcing a party's rights under this
Agreement or any waiver as to a particular default or other matter shall not
constitute a waiver of such party's rights to the future enforcement of its
rights under
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13
this Agreement, excepting only as to an express written and signed waiver as to
a particular matter for particular period of time.
8.7 Attorneys' Fees. In the event of a dispute between the parties
hereto or in the event of any default hereunder, the parties shall bear their
own attorneys' fees and other costs incurred in connection with resolving said
dispute or default.
8.8 Notices. Any notices given pursuant to this Agreement shall be in
writing and shall be deemed delivered upon the earlier of (i) when received at
the address set forth below, or (ii) three (3) business days after being mailed
by certified mail, postage prepaid and properly addressed, with return receipt
requested. Notices and payments due shall be delivered to the respective parties
as indicated:
FOR MacroChem: MacroChem Corporation
0 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: President
FOR Ascent: Ascent Pharmaceuticals, Inc.
0 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxxx
8.9 Compliance with U.S. Laws. Nothing contained in this Agreement
shall require or permit MacroChem or Ascent to do any act inconsistent with the
requirements of any United States law, regulation or executive order as the same
may be is effect from time to time.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
set forth above.
MACROCHEM ASCENT PHARMACEUTICALS, INC.
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxxx Xxxxxxxx
-------------------------------- ---------------------------
Title: President Title: President
- 13 -
14
Confidential material omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote such omissions.
APPENDIX A
MacroChem Patents & Patent Applications
Title: Percutaneous Absorption Enhancers
Compositions Containing Same and
Method of Use
1. U.S. Patent # 4,861,764 - Issued August 29, 1989.
2. ************************************************
**********************
3. ************************************************
**********************
Designated States: Austria, Belgium, France,
Federal Republic of Germany, Great Britain,
Greece, Italy, Luxembourg, The Netherlands,
Spain, Sweden and Switzerland (including Liechtenstein).
4. ************************************************
***********************
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