EXHIBIT 99.6
SPONSORED RESEARCH AND LICENSE AGREEMENT
THIS SPONSORED RESEARCH AND LICENSE AGREEMENT (the "Agreement") is made and
entered into as of January 20, 2000 (the "Effective Date") by and between
XXXXXXX X. XXXXXXXXXXX, of Baybush, Straffan, County Kildare, Ireland
(hereinafter "Xxxxxxxxxxx"), EDENLAND, INC., a corporation duly organized and
existing under the laws of Belize (hereinafter "Edenland"), XXXXXXXXX LIMITED, a
corporation duly organized and existing under the laws of Belize (hereinafter
"Xxxxxxxxx"), and XXXXXX-XXXX PHARMACEUTICALS, INC., a corporation duly
organized and existing under the laws of Delaware with a principal place of
business at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxx Xxxxx, XX 00000 (hereinafter
"Xxxxxx-Xxxx").
RECITALS
WHEREAS, Xxxxxx-Xxxx researches and develops compounds for therapeutic
applications in humans and animals;
WHEREAS, Xxxxxxxxxxx has previously made inventions and discoveries
relating to compounds which may be useful for therapeutic applications in humans
and animals;
WHEREAS, Xxxxxx-Xxxx wishes to sponsor further research by Xxxxxxxxxxx, and
to own the results of such research;
WHEREAS, Xxxxxxxxxxx and Xxxxxx-Xxxx are parties to that certain Settlement
and Mutual Release Agreement entered into concurrently herewith (the "Settlement
Agreement") that terminates that certain License Agreement (the "License
Agreement") and that certain Research, Development and Option Agreement (the
"Research Agreement"), both executed by the Parties on August 25, 1994;
WHEREAS, Xxxxxxxxxxx made inventions and discoveries pursuant to those
terminated Agreements and inventions and discoveries related to the Related
Know-How (as defined below); and
WHEREAS, Xxxxxxxxxxx and Edenland are willing to grant an irrevocable,
exclusive license to the Patents and Applications (as defined below) and the
Related Know-How, pursuant to the terms of this Agreement;
NOW, THEREFORE, in consideration of the foregoing and the covenants and
promises contained herein, the parties agree as follows:
*** Text Omitted and Filed Separately. Confidential Treatment Requested
Under 17 C.F.R. (S)(S)200.80(b)(4), 200.83 and 240.24b-2.
1.
1. DEFINITIONS
As used herein, the following capitalized terms shall have the following
meanings:
1.1 "AFFILIATE" means any company or entity controlled by, controlling, or
under common control with a party hereto. For the purposes hereof, the term
"control" shall mean (a) that an entity or company owns, directly or indirectly,
fifty percent (50%) or more of the voting stock of the controlled entity, or (b)
that an entity, person or group has the actual ability to control and direct the
management of the controlled entity, whether by contract or otherwise.
1.2 "COMPOUND" means any compound discovered by or on behalf of Xxxxxxxxxxx
during the Research Term or using any of the funding by Xxxxxx-Xxxx pursuant to
Section 6.1 hereof, and any compound listed at Exhibit C.
1.3 "DERIVATIVE" means any compound that is a [********** ** ****** ** *
******** (********* * ******* ********), *** *** **** ****** ************ **
**** ******** **** **** ** ****** ** *******, *** *** **** ** *********** ** **
** ****** ** ******-**** (** *** ***********) ** *** ** **** ******** ** **
*********** *******.]
1.4 "DEVELOPMENT TRANSFER DATE" means, for each Compound, the date upon
which development responsibility shifts to Xxxxxx-Xxxx pursuant to Section
2.1(d). The Parties shall maintain a list of the Development Transfer Date for
each Compound in the form attached hereto as Exhibit A.
1.5 "DIRECT COSTS" means all reasonable expenditures directly relating to
(i) payroll for research and development employees who are not relatives of
Xxxxxxxxxxx, (ii) scientific consultants and laboratories for drug screening,
assays, metabolism, formulations, non-GLP toxicology and pharmacokinetics, (iii)
in-vitro testing, (iv) drug supplies and (v) animal studies.
1.6 "EXISTING PATENT RIGHTS" means (a) the United States and foreign
patents and/or patent applications listed in Exhibit B and (b) all patents
throughout the world that have issued or may issue from the patents and
applications identified in Exhibit B and including any continuation,
continuation-in-part or divisional application of any of them, and any reissue,
reexamination, extension or substitution of any of the foregoing patents, as
well as renewals, reexaminations, reissues or extensions of said patents, and
all rights under the International Convention for the Protection of Industrial
Property.
2.
1.7 "FIELD" means all research and development activities relating to
Compounds and analogs or derivatives thereof.
1.8 "KNOW-HOW" means any inventions, information, know-how, trade secrets,
discoveries, procedures, expertise, data, results, or other technical or
scientific information which is not in the public domain, and which is not
disclosed in a patent.
1.9 "PATENTS AND APPLICATIONS" means (a) all patents and patent
applications, wherever filed in the world, that claim any aspect of the Related
Know-How, whether filed before or after the Effective Date; (b) all continuation
applications, continuation-in-part applications, and divisional applications of
any of the foregoing; (c) any reissue, reexamination, extension or substitution
of any of such patents, as well as renewals, reexaminations, reissues or
extensions of the patents, and all rights under the International Convention for
the Protection of Industrial Property; and (d) the Existing Patent Rights.
1.10 "NET SALES" means, with respect to sales of a Product by Xxxxxx-Xxxx
or its Affiliate or sublicensee, the total amount received for such sales to
third party purchasers, less the following items to the extent actually incurred
or allowed with respect to such sales: (a) volume or trade discounts, credits or
allowances; (b) credits, refunds or allowances granted upon returns, rejections
or recalls; (c) freight, shipping and insurance charges; (d) taxes, duties or
other government tariffs; and (e) rebates mandated by the government or
managed-care organizations.
1.11 "OVERHEAD COSTS" means all costs other than Direct Costs, including
without limitation payments made, directly or indirectly, to Xxxxxxxxxxx (or
relatives of Xxxxxxxxxxx) and costs relating to project management, secretarial
assistance, travel, office supplies, postage and freight, insurance,
accountancy, phones and rent.
1.12 "PRODUCT" means any human or animal pharmaceutical product which (i)
incorporates a Compound (including any Related Compound) or a Derivative as its
active ingredient or (ii) embodies an Improvement. It is understood and agreed
that, notwithstanding anything to the contrary in this Agreement, in no event
shall any product that comprises, utilizes, is based upon or is covered by the
"Technology" or the "Patents and Applications" (as such terms are defined in the
Technology Assignment Agreement) be deemed a "Product" for purposes of this
Agreement.
1.13 "IMPROVEMENT" means any modifications, formulations or changes made in
chemical structure or otherwise by or on behalf of Xxxxxx-Xxxx (or its
sublicensee) during the term the of this Agreement which directly relate to a
Compound, Related Compound or Derivative and result from the use of such
Compound, including without
3.
limitation new or improved methods of administration, improved side effect
profile, new medical indications and improvements in the manufacturing process.
1.14 "RELATED COMPOUND" means, with respect to any particular Compound, any
other Compound that is [***********************] of such Compound and has
[******* ********** ******* ** ***** ** ** ***** ********].
1.15 "RELATED KNOW-HOW" means any Know-How generated by or on behalf of
Xxxxxxxxxxx or Edenland (a) pursuant to any work conducted under the License
Agreement; (b) that relates to the Antiserum as that term was defined by the
License Agreement, whether developed before or after the Effective Date of this
Agreement; or (c) pursuant to any work conducted under the Research Agreement,
including without limitation all the Know-How listed on Exhibit C attached
hereto.
1.16 "RESEARCH" means the research and development investigations and work
conducted by or on behalf of Xxxxxxxxxxx pursuant to Section 2.1 of this
Agreement.
1.17 "RESEARCH RESULTS" means any and all Know-How made, created, developed
or discovered pursuant to the Research work or during the Research Term by or on
behalf of Xxxxxxxxxxx or Edenland within the fields of medical, biochemical,
biological and/or pharmaceutical research and development, and shall include any
such Know-How made, created, developed or discovered using any funding provided
by Xxxxxx-Xxxx pursuant to Section 6.1 of this Agreement.
1.18 "RESEARCH PATENTS" means (a) any and all patent applications filed
that claim any invention in the Research Results; (b) any divisionals,
continuations or continuations-in-part of the foregoing applications; (c) all
patents that issue on any of the foregoing patent applications; and (d) all
extensions, reissues, reexaminations and supplemental protection certificates
for any of the foregoing patents.
1.19 "RESEARCH TERM" means the period beginning on the Effective Date and
ending upon the later of the expiration of the Initial Research Term (as that
term is defined by Section 2.2(a)) or the expiration of the last extension of
the Research made pursuant to Sections 2.2(b) and (c).
1.20 "TECHNOLOGY ASSIGNMENT AGREEMENT" means that certain Technology
Assignment Agreement of even date herewith by and among Xxxxxx-Xxxx, Xxxxxxxxxxx
and Xxxxxxxxx.
1.21 "THIRD PARTY" means any person, entity or organization other than
Xxxxxxxxxxx or Xxxxxx-Xxxx, and their Affiliates.
4.
1.22 "THIRD PARTY ROYALTIES" means royalties payable by Xxxxxx-Xxxx, its
Affiliate or sublicensee to a Third Party in respect of the manufacture, use or
sale of a Product.
2. SPONSORED RESEARCH
2.1 CONDUCT OF RESEARCH.
(a) In consideration of the Research funding provided by Xxxxxx-Xxxx
under Section 6.1, Xxxxxxxxxxx agrees to undertake and perform the Research. The
Research will be conducted and supervised by Xxxxxxxxxxx. Xxxxxxxxxxx agrees to
use diligent efforts to perform the Research, and all of Xxxxxxxxxxx'x research
efforts within the fields of medical, biochemical, biological and/or
pharmaceutical research during the Research Term (as that term is defined in
Section 2.2) shall be devoted to the Research. Xxxxxxxxxxx agrees that all work
done on the Research and all Research Results will be duly recorded and
evidenced in laboratory notebooks maintained by the persons working on the
Research, which notebooks shall be available for inspection by Xxxxxx-Xxxx
pursuant to Section 2.3.
(b) Xxxxxxxxxxx shall have the right to employ, at his sole
discretion, other persons and subcontractors to carry out the Research under
Xxxxxxxxxxx'x supervision, provided that such persons are under an obligation to
assign and transfer to Xxxxxxxxxxx any inventions, discoveries, or other
Know-How they may make or develop in the course of performing the Research which
obligation to assign must be sufficient in scope to effectively result in
ownership by Xxxxxxxxxxx of all Research Results produced or contributed to by
such other person or subcontractor. Such inventions, discoveries or other
Know-How shall be exclusively licensed to Xxxxxx-Xxxx pursuant to Article 3.
Xxxxxx-Xxxx shall provide Xxxxxxxxxxx with a form of assignment to be used with
respect to any such assignments from third parties. Xxxxxxxxxxx promptly will
provide to Xxxxxx-Xxxx a copy of any such agreement with such persons.
(c) The Research shall be limited to discovery and preclinical
research on the Compounds and Know-How set forth in Exhibit C attached hereto
and, with the prior written consent of Xxxxxx-Xxxx, any other compounds and
Know-How, including such research in any animal or other model or system up to,
and including, primate models, and specifically excluding clinical research in
humans. In addition, the Research shall not involve, and Xxxxxxxxxxx covenants
that he shall not conduct, any research or other work on any subject matter
relating to the "Patents and Applications" or the "Technology" as such terms are
defined in the Technology Assignment Agreement.
5.
(d) Any and all development of Compounds beyond the primate model
stage shall be Xxxxxx-Xxxx'x sole right and responsibility and at Xxxxxx-Xxxx'x
sole discretion, subject to the provisions of Article 5. Development
responsibility for each Compound shall shift from Xxxxxxxxxxx to Xxxxxx-Xxxx on
the earlier of (i) the date Xxxxxx-Xxxx receives copies of all preclinical data
regarding the Compound that Xxxxxxxxxxx has generated and intends to generate
under the Research; or (ii) the date Xxxxxx-Xxxx, at its sole discretion, elects
to begin conducting its own development activities with respect to that
Compound. No later than ninety (90) days after the foregoing shift of
development responsibility for a particular Compound (the "Development Transfer
Date" for such Compound), Xxxxxxxxxxx shall discontinue and conduct no further
Research or other work with respect to such Compound or any Related Compound of
such Compound unless such work is expressly requested by Xxxxxx-Xxxx in writing
to be conducted under the Research.
2.2 RESEARCH TERM.
(a) The initial Research Term, during which Xxxxxxxxxxx shall conduct
the Research, shall commence on the date that Xxxxxx-Xxxx makes the payment
pursuant to Section 6.1(a) and continue for one (1) year (the "Initial Research
Term").
(b) Xxxxxx-Xxxx shall have the right, exercisable by written notice
within thirty (30) days after the expiration of the Initial Research Term, to
extend the Research Term for an additional two (2) years. In the event that all
of the [********************************] paid by Xxxxxx-Xxxx pursuant to
Section 6.1 to support the Research during the first two (2) year extension
hereunder have not been expended at the expiration of the Research Term (as
extended pursuant to this Section 2.2), then the Research Term and further
Research work shall automatically extend until all such funds are expended to
support the Research.
(c) At the end of the Research Term as extended pursuant to subsection
(b), the Research Term shall automatically extend for another two (2) years,
unless either Xxxxxx-Xxxx or Xxxxxxxxxxx provides written notice, prior to such
date, to the other Party that it or he wishes not to so extend and to terminate
the Research Term, in which case the Research Term shall terminate at the end of
the extension period made pursuant to subsection (b).
2.3 RESEARCH REPORTS. Xxxxxxxxxxx shall regularly inform Xxxxxx-Xxxx
of the Research performed and all Research Results, and shall provide
Xxxxxx-Xxxx with written summaries of the results and data of the Research and
inventions therein by making quarterly (or more frequent) written reports to
Xxxxxx-Xxxx of the progress of the Research during that quarter. Xxxxxxxxxxx
shall include in such reports, in order to
6.
facilitate the calculation required under Section 5.4, an allocation of
expenditures with respect to each Compound and Related Compound that is the
subject of such report. Xxxxxx-Xxxx shall have the right, but not the
obligation, to discuss the conduct and results of the Research with Xxxxxxxxxxx
at regular intervals. Xxxxxx-Xxxx shall have the unrestricted right to inspect
and copy any and all of the raw data of the Research and the Research Results,
and Xxxxxxxxxxx covenants that he shall make all such materials available to
Xxxxxx-Xxxx at its request, without delay.
2.4 OWNERSHIP OF RESEARCH RESULTS. All Research Results and any inventions
therein and all intellectual property rights in any of the foregoing, including
without limitation the Research Patents, shall be owned by Xxxxxxxxxxx but shall
be licensed exclusively to Xxxxxx-Xxxx as provided in Article 3. Xxxxxx-Xxxx
shall have the right to obtain, at its expense, protection in the United States
and foreign countries for any inventions in such Research Results, as provided
in Article 7.
2.5 OTHER RESEARCH.
(a) Xxxxxxxxxxx hereby agrees and covenants not to perform or
supervise, or permit or engage any other party to perform, any research in the
Field other than the Research, but subject to the reversion option of Article 5.
(b) Upon the expiration of the Research Term, Xxxxxxxxxxx shall have
the right to conduct, supervise, permit or engage another party to perform
research outside the Field.
(c) Upon three (3) months after the expiration of the Research Term,
if the Parties have not entered a new agreement to extend the Research Term or
that provides for further sponsored research, Xxxxxxxxxxx shall be under no
further obligation to Xxxxxx-Xxxx to disclose or assign any future inventions,
discoveries, or Know-How outside the Field.
3. EXCLUSIVE LICENSE OF THE RESEARCH RESULTS
3.1 LICENSE TO XXXXXX-XXXX. Xxxxxxxxxxx and Edenland hereby grant to
Xxxxxx-Xxxx the exclusive (even as to Xxxxxxxxxxx and Edenland), world-wide,
perpetual, irrevocable license, with the full right to sublicense, under any and
all of the Research Results and all intellectual property rights related
thereto, including, without limitation, any inventions, discoveries and Know-How
made, produced or discovered by or on behalf of Xxxxxxxxxxx relating to the
Research Results, whether or not patentable, and whether made or conceived or
reduced to practice alone or jointly with others, and including without
limitation the Research Patents, for any and all purposes. Xxxxxxxxxxx
7.
hereby agrees to execute all documents, including without limitation all
recordations and declarations, reasonably necessary for Xxxxxx-Xxxx to record
its interest in and to the Research Results and other intellectual property
described in the preceding sentence.
3.2 COVENANT NOT TO XXX. Xxxxxxxxxxx, Edenland and Xxxxxxxxx hereby
covenant and agree that none of them, and no entity or person affiliated with
any of them will make any claim, allegation or suit alleging infringement of any
Research Results or any intellectual property rights therein or seeking
compensation for those rights by Xxxxxx-Xxxx or any of its sublicensees, except
with respect to the specific Option Compounds for which Xxxxxxxxxxx has
exercised the option pursuant to Section 5.3; provided, however, that nothing in
this Section 3.2 shall limit Edenland's rights to seek remedy for non-payment of
royalties due under Section 6.
4. EXCLUSIVE LICENSE OF PREVIOUS TECHNOLOGY.
4.1 LICENSE TO XXXXXX-XXXX. Xxxxxxxxxxx and Edenland hereby grant to
Xxxxxx-Xxxx the world-wide, exclusive (even as to Xxxxxxxxxxx and Edenland),
perpetual, irrevocable, license, with the full right to sublicense, under the
Patents and Applications and the Related Know-How, for all uses and purposes.
4.2 PROSECUTION AND MAINTENANCE. Xxxxxxxxxxx and Edenland hereby grant to
Xxxxxx-Xxxx the sole and exclusive right, but not the duty,
(a) to prosecute (including through appealing) the patent applications
within Patents and Applications, and patents and applications claiming the
Related Know-How, including continuations, continuations-in-part and divisionals
thereof, as well as to prosecute any reissue patent applications and any
re-examination patent applications as a part of any reissue or re-examination
proceeding;
(b) to enter any claim of any patent or application into interference;
(c) to procure any patent resulting from the prosecution set forth in
Sections 4.2(a) and 4.2(b); and
(d) to maintain all issued patents worldwide. Notwithstanding the
foregoing, Xxxxxx-Xxxx shall not have the duty or obligation to prosecute, issue
or maintain any patent or application.
4.3 SUBLICENSES. Xxxxxx-Xxxx shall have the sole and exclusive right,
but not the duty, to grant licenses under the patents and applications
exclusively licensed under this Agreement and to collect royalty payments
therefor.
8.
4.4 RIGHT TO XXX. Xxxxxxxxxxx and Edenland hereby grant to Xxxxxx-Xxxx the
sole and exclusive right, but not the duty, to xxx on the patents in the Patents
and Applications, and to collect all damages and profits for any past, present
and/or future infringements thereof.
4.5 DEFENSE. Xxxxxx-Xxxx shall have the sole and exclusive right, but not
the duty, to bring and maintain any action necessary to defend its rights to the
Patents and Applications, and/or the Know-How, including but not limited to
actions in copyright and trade secret.
4.6 SOLE DISCRETION. Any such licenses or suits of Sections 4.3, 4.4,
and/or 4.5, respectively, shall be undertaken at Xxxxxx-Xxxx'x sole discretion.
4.7 EXECUTION AND DELIVERY OF DOCUMENTS. Xxxxxxxxxxx and Edenland shall
execute and deliver to Xxxxxx-Xxxx (at Xxxxxx-Xxxx'x request and expense) all
documents and instruments, to be prepared by Xxxxxx-Xxxx, reasonably necessary
for Xxxxxx-Xxxx to perfect and/or record any of the rights that are granted to
it under this Agreement, provided that such acts of perfecting and recording
shall be at Xxxxxx-Xxxx'x expense.
4.8 TRANSFER OF TANGIBLE MANIFESTATIONS.
(a) Xxxxxxxxxxx and Edenland shall deliver or cause to be delivered to
Xxxxxx-Xxxx on or shortly after execution of this Agreement any and all tangible
manifestations of the Patents and Applications and/or the Related Know-How in
Edenland's and/or Xxxxxxxxxxx'x possession or control.
(b) Xxxxxxxxxxx and Edenland agree that upon execution of this
Agreement, they will instruct their legal representatives and all other relevant
third parties to surrender to Xxxxxx-Xxxx and/or its representatives all notes,
records, files, prototypes, and other tangible items of any sort pertaining to
the Patents and Applications, and/or the Related Know-How. The foregoing
requirement notwithstanding, Xxxxxxxxxxx and Edenland shall not be required to
deliver to Xxxxxx-Xxxx any documents that are subject to the attorney-client
privilege or work product doctrine; provided, that a complete privilege log is
provided to Xxxxxx-Xxxx for each document being withheld. The privilege log must
set forth as to each document being withheld, its date, its identity, (e.g.
letter, research memorandum, etc.) its author, the identity of the recipient(s)
of the original and any copies, and the basis upon which the document is being
withheld (attorney-client privilege or attorney work product). Xxxxxx-Xxxx shall
have ten (10) business days to dispute the assertion of any privilege, as it
pertains to the disclosures and delivery required by this paragraph.
9.
4.9 REASONABLE ASSISTANCE. Xxxxxxxxxxx and Edenland agree to provide all
reasonable technical assistance in (i) facilitating the transfers and licenses
contemplated by this Agreement and (ii) the prosecution of any patent
application in the Patents and Applications and/or the Related Know-How, related
to and/or arising from the Agreement until all prosecution of patent
applications in the Patents and Applications and/or the Related Know-How in all
patent offices worldwide is completed.
4.10 FURTHER IMPROVEMENTS. Xxxxxx Xxxxxxxxxxx nor Edenland (nor any of
their Affiliates) shall conduct any further research or development of any kind
relating to the Related Know-How, except to the extent such work is conducted by
Xxxxxxxxxxx under the Research, solely to the extent permitted by and pursuant
to this Agreement.
4.11 APPOINTMENT OF ATTORNEY IN FACT. Xxxxxxxxxxx and Edenland agree
that if Xxxxxx-Xxxx is unable for any reason, after reasonable effort, to secure
any of relevant signatures on any document needed in connection with the actions
specified herein, each of Xxxxxxxxxxx, Edenland, and Xxxxxxxxx hereby
irrevocably designates and appoints Xxxxxx-Xxxx and its duly authorized officers
and agents as his or its agent and attorney in fact, which appointment is
coupled with an interest, to act for and on his or its behalf to execute, verify
and file any such documents and to do all other lawfully permitted acts to
further the purposes of this Agreement with the same legal force and effect as
if executed by Xxxxxxxxxxx.
5. DEVELOPMENT BY XXXXXX-XXXX
5.1 RIGHT TO FURTHER DEVELOP COMPOUNDS. Subject to the provisions of this
Article 5, Xxxxxx-Xxxx shall have the sole right, but not the responsibility, to
develop and commercialize any of the Compounds and Derivatives for any purpose
and in any country or jurisdiction in the world.
5.2 DEVELOPMENT REPORTS. Beginning six months after the Development
Transfer Date, Xxxxxx-Xxxx shall make quarterly written reports to Xxxxxxxxxxx
summarizing its progress towards filing an IND and obtaining NDA approval for
each such Compound or a Related Compound or Derivative thereof; provided,
however, that Xxxxxx-Xxxx shall not be required to disclose in such reports any
(i) raw data, (ii) financial information or (iii) the terms of any licenses or
sublicenses it grants to Third Parties to further develop any of the Compounds,
Related Compounds or Derivatives. Xxxxxx-Xxxx'x obligation to make such reports
shall terminate, with respect to each Compound, (i) upon FDA rejection of an NDA
for such Compound or Related Compound or Derivative thereof; or (ii) at such
time as Xxxxxx-Xxxx decides to abandon development of such Compound and all
Related Compounds and Derivatives thereof.
10.
5.3 DILIGENCE AND REVERSION OPTION. With respect to any specific group of
Compounds (a "Related Compound Group"), where such group is defined to include
all the Compounds that are Related Compounds to each other, for which
Xxxxxx-Xxxx (or its sublicensee) has undertaken development efforts with respect
to at least one such Compound or a Derivative thereof, if Xxxxxx-Xxxx or its
sublicensee has not initiated Phase I clinical trials pursuant to an IND with
respect to at least one Compound in such Related Compound Group or Derivative
thereof by the [*************] anniversary of the date that is the latest
Development Transfer Date for the Compounds in such Related Compound Group (the
"Option Date"), then all the Compounds in such Related Compound Group shall be
deemed "Option Compounds" for purposes hereof, and Xxxxxxxxxxx shall have the
following reversion option as to such Option Compounds. Commencing on the Option
Date with respect to such Option Compounds, and continuing for sixty (60) days
thereafter, Xxxxxxxxxxx shall have the right, exercisable during such period by
written notice to Xxxxxx-Xxxx, subject to and in accordance with Section 5.5, to
elect to cause the license to Xxxxxx-Xxxx to terminate with respect to such
Option Compounds.
5.4 REVERSION PAYMENTS. As to any such Option Compounds for which
Xxxxxxxxxxx exercises the option granted in Section 5.3 within the applicable
option period, Xxxxxxxxxxx shall, promptly after such exercise, repay to Xxxxxx-
Xxxx the following amounts: (a) all amounts of Research funding paid by Xxxxxx-
Xxxx to Xxxxxxxxxxx that was expended by Xxxxxxxxxxx in conducting Research on
any of such Option Compounds, and the allocable amounts of Overhead Costs with
respect thereto (which amounts shall be determined by the quarterly reports
provided by Xxxxxxxxxxx pursuant to Section 2.3; and if such amounts remain
undeterminable, then such amounts shall be determined by the good-faith
discussions of Xxxxxxxxxxx and Xxxxxx-Xxxx after reviewing the applicable
records of Xxxxxxxxxxx relating to the Research expenditures and accounting);
(b) all amounts expended by Xxxxxx-Xxxx and its Affiliates and sublicensees in
conducting any research or development activities with respect to any such
Option Compounds; and (c) all actual third party costs and expenses incurred by
Xxxxxx-Xxxx or its Affiliate or sublicensee in seeking to obtain proprietary
intellectual property rights in any such Option Compounds (together, the
"Development Expenses" with respect to such Option Compounds).
5.5 REVERSION AND LICENSE. Upon the date that Xxxxxx-Xxxx receives full
repayment of the Development Expenses for a particular set of Option Compounds
for which Xxxxxxxxxxx has exercised the option under Section 5.3 (the "Reversion
Date" for such Option Compounds), then the exclusive license to Xxxxxx-Xxxx
shall automatically terminate solely with respect to such Option Compounds;
provided, however, that the licenses granted hereunder shall otherwise survive.
11.
5.6 EXCEPTION TO REVERSION RIGHTS. Notwithstanding the provisions of
Sections 5.3 and 5.5 above, in the event that a particular Compound, in a set of
Option Compounds for which Xxxxxxxxxxx exercised the option under Section 5.3
and made full repayment of the Development Expenses for such set of Option
Compounds, was discovered or synthesized by Xxxxxx-Xxxx or its Affiliate or
sublicensee prior to the date Xxxxxxxxxxx disclosed such Compound to Xxxxxx-Xxxx
under this Agreement and without use of any Research Results, as demonstrated by
Xxxxxx-Xxxx'x (or its Affiliate's or sublicensee's) written records, then the
termination under Section 5.5 shall not apply to such particular Compound.
5.7 PATENT PROSECUTION AFTER THE REVERSION DATE. With respect to any
particular set of Option Compounds for which Xxxxxxxxxxx has exercised the
option granted under Section 5.3 and paid the amounts owed to Xxxxxx-Xxxx under
Section 5.4, (a) for the patents and patent applications claiming solely such
set of Option Compounds and/or their manufacture or use, Xxxxxxxxxxx shall have
the sole and exclusive rights thereafter to prosecute, maintain, enforce,
practice and license the rights under such patents and applications, and (b) as
to the patents and applications that do not claim solely such set of Option
Compounds and/or their manufacture or use, Xxxxxx-Xxxx shall retain its rights
under Article 7, subject to Xxxxxxxxxxx'x rights under Section 7.2(b) with
respect thereto.
6. PAYMENTS
6.1 RESEARCH SPONSORSHIP PAYMENTS.
(a) Within one month of Xxxxxx-Xxxx'x receipt of all experimental
data, patents and patent applications from Xxxxxxxxxxx, Edenland and their
Affiliates and representatives pursuant to Article 4 above, Xxxxxx-Xxxx shall
pay Edenland [********************************] in a single payment to support
Xxxxxxxxxxx'x efforts under the Research for the Initial Research Term. All
payments hereunder shall be made by wire transfer payable to Edenland.
(b) If the Research Term is extended beyond the Initial Research Term
either at Xxxxxx-Xxxx'x election pursuant to Section 2.3(b) or pursuant to
Section 2.3(c), then Xxxxxx-Xxxx shall pay [**********************************]
per year to Xxxxxxxxxxx for each year of such extension of the Research Term
beyond the Initial Research Term. Such amounts shall be payable quarterly in the
amount of [***********************************************] per quarter, payable
within ten (10) days of the beginning of any such quarter of the Research Term
and subject to the following sentence. Xxxxxxxxxxx shall provide to Xxxxxx-Xxxx
for its review and inspection, if requested, the original invoices or other
documentation documenting the
12.
expenditures under the Research of all funding provided by Xxxxxx-Xxxx hereunder
and proof of payment of all such expenditures. Any amounts not so documented in
writing to have been spent for the purposes of supporting the Research and the
Overhead Costs, respecting the limitation of Section 6.1(c), and any amounts
expended for any other purpose, shall be deducted from the quarterly payment
next due after Xxxxxx-Xxxx discovers either (i) that the expenditure has not
been adequately documented, in Xxxxxx-Xxxx'x reasonable discretion, or (ii) the
other purpose for which the funds were expended.
(c) No more than forty percent (40%) per year in the first year of the
Research Term, and no more than thirty percent (30%) per year in any other year
of the Research Term, of any of the payments made to Xxxxxxxxxxx pursuant to
this Section 6.1 may be allocated to Overhead Costs.
(d) Xxxxxxxxxxx shall provide to Xxxxxx-Xxxx quarterly reports
containing accountings for the expenditure of the funds paid to Xxxxxxxxxxx
pursuant to this Section 6.1. In addition, Xxxxxxxxxxx shall provide to
Xxxxxx-Xxxx annual reports containing accountings for the expenditure of the
funds paid to Xxxxxxxxxxx pursuant to this Section 6.1, which annual reports
shall be audited by independent certified public accountants from an
internationally recognized accounting firm.
6.2 ROYALTIES ON PRODUCTS. Xxxxxx-Xxxx shall pay to Xxxxxxxxxxx a royalty
of [****************] of worldwide Net Sales by Xxxxxx-Xxxx and its Affiliates
and sublicensees based on sales of Products. Xxxxxx-Xxxx may deduct from this
royalty payment any amounts made to Xxxxxxxxxxx pursuant to Section 6.3.
6.3 SUBICENSEE PAYMENTS. Xxxxxx-Xxxx shall pay Xxxxxxxxxxx
[*************************] of the amounts Xxxxxx-Xxxx receives from its
sublicensees, on account of the granting of licenses for the manufacture and
sale of Products, as license fees, milestone payments and royalties. For
clarification, it is understood that payments to Xxxxxx-Xxxx by a sublicensee to
support research and development activities at Xxxxxx-Xxxx or to purchase equity
of Xxxxxx-Xxxx, or as payments for the license of products or technology that
are not Products, shall not be subject to the foregoing obligation.
6.4 THIRD PARTY ROYALTIES. In the event that Xxxxxx-Xxxx or its Affiliates
or sublicensees are obligated to pay Third Party Royalties on account of the
manufacture or sale of Products, then Xxxxxx-Xxxx may deduct from the royalties
or payments owed to Xxxxxxxxxxx under Section 6.2, one hundred percent (100%) of
the amount of such Third Party Royalties, provided that the amount of royalties
or payments paid to Edenland shall not be reduced in any event by more than
[*************************] of the amount otherwise owed.
13.
6.5 LIMITATIONS ON ROYALTY PAYMENTS.
(a) Except as otherwise provided in Section 6.5(c), from and after the
fifth (5th) anniversary of the regulatory approval for a particular Product in a
particular country and through the tenth (10th) anniversary thereof, the
[*****************] royalty due under Section 6.2 shall be reduced to
[****************] for Net Sales generated in each such country where the
Product is not covered in whole or in part by any issued or pending claim
contained in the Research Patents or Patents and Applications in such country;
provided, however, upon the written request of Xxxxxx-Xxxx, Xxxxxxxxxxx and
Xxxxxx-Xxxx shall discuss in good faith further reducing such royalties based
upon the then current competition in such country generated by competing
pharmaceutical products and its effect on Xxxxxx-Xxxx'x profitability for such
Product.
(b) No royalties shall be payable under Section 6.2 on Net Sales
generated from a Product sold after the tenth (10th) anniversary of the
regulatory approval for a particular Product in a particular country, in each
country where the Product is not then covered in whole or in part by any issued
claim in a patent contained in the Research Patents or Patents and Applications.
(c) In each country where the Product was covered in whole or in part
by any issued patent contained in the Research Patents or Patents and
Applications in such country, no royalties shall be payable under Section 6.2 on
Net Sales generated from a Product sold in such country after the date that all
such issued patents in such country have expired or been held invalid or
unenforceable by a final decision of a court that is no longer appealed or
appealable.
6.6 PAYMENTS AND REPORTS. All amounts payable to Edenland under this
Agreement shall be paid in U.S. dollars to a bank account specified by Edenland.
The royalty obligation under Section 6.2 shall accrue at the time of sale of the
Products to a Third Party purchaser. The payment obligations under Section 6.3
shall accrue at the time that Xxxxxx-Xxxx receives payments from its
sublicensees that are subject to such a payment obligation, and such payment
obligations that accrue during a semi-annual period shall be paid within sixty
(60) days after the end of each semi-annual period. Royalty obligations that
accrue during a particular semi-annual period shall be paid within sixty (60)
days after the end of each semi-annual period. Each payment of royalties due
Edenland under Sections 6.2 and 6.3 shall be accompanied by a statement of the
amount of Net Sales during such period, the amount of payments by Xxxxxx-Xxxx'x
sublicensees, and such other information as is necessary to determine the
appropriate amount of such payments by Xxxxxx-Xxxx.
14.
6.7 EXCHANGE RATE. The rate of exchange to be used in computing the amount
of currency equivalent in United States dollars due Edenland shall be made at
the period end rate of exchange quoted on the last business day of the royalty
period in the Wall Street Journal.
6.8 RECORDS AND AUDIT.
(a) XXXXXXXXXXX AND EDENLAND. During the Research Term and for two (2)
years thereafter, Xxxxxxxxxxx and Edenland shall maintain complete and accurate
records pertaining to the Research and expenditures of funds to support the
Research, in sufficient detail to permit Xxxxxx-Xxxx to confirm that the
payments made pursuant to Section 6.1 are being used solely to support the
Research and that the limitation of Section 6.1(c) has been respected.
Xxxxxx-Xxxx shall have the right to cause an independent, certified public
accountant reasonably acceptable to Xxxxxxxxxxx to audit such records to confirm
the use of the funds to support the Research and that the limitation of Section
6.1(c) has been respected. Such audits may be exercised twice per year, within
two (2) years after the period to which such records relate, upon reasonable
notice to Xxxxxxxxxxx and during normal business hours. Xxxxxx-Xxxx shall have
the right to itself inspect and copy, at any time during normal business hours,
such records described in this Section 6.8(a).
(b) XXXXXX-XXXX. During the term of this Agreement and for a period of
two (2) years thereafter, Xxxxxx-Xxxx shall keep complete and accurate records
pertaining to the sale or other disposition of the Products commercialized by
it, in sufficient detail to permit Edenland to confirm the accuracy of all
payments due hereunder. Edenland shall have the right to cause an independent,
certified public accountant reasonably acceptable to Xxxxxx-Xxxx to audit such
records to confirm Xxxxxx-Xxxx'x Net Sales and royalty payments owed hereunder;
provided, however, that such auditor shall not disclose any confidential
information of Xxxxxx-Xxxx to Xxxxxxxxxxx or Edenland, except to the extent such
disclosure is necessary to verify the amount of royalty payments due under this
Agreement. Xxxxxx-Xxxx will ensure that any agreement entered into between
Xxxxxx-Xxxx and a licensee or sublicensee of Xxxxxx-Xxxx shall include a
provision giving Xxxxxx-Xxxx similar inspection rights with respect to such
licensee's or sublicensee's applicable records. Such records subject to
inspection by Xxxxxx-Xxxx shall also be subject to audit by the accountant
referred to in the first sentence of this Section 6.8(b). Such audits may be
exercised once a year, within two (2) years after the period to which such
records relate, upon reasonable notice to Xxxxxx-Xxxx and during normal business
hours. Any amounts correctly shown to be owing by such audits shall be paid
immediately with interest in the amount of [***] per month (or the maximum
amount permitted by law, if less) from the date first owed until paid.
Xxxxxxxxxxx shall bear the full cost of such audit
15.
unless such audit discloses a variance in the amounts paid by Xxxxxx-Xxxx of
more than [*****************] from the amount of royalties actually owed. In
such case, Xxxxxx-Xxxx shall bear the reasonable cost of such audit.
6.9 WITHHOLDING OF TAXES. Any withholding of taxes levied by tax
authorities on the payments hereunder shall be borne by Xxxxxxxxxxx and deducted
by Xxxxxx-Xxxx from the sums otherwise payable by it hereunder for payment to
the proper tax authorities on behalf of Xxxxxxxxxxx. Xxxxxx-Xxxx agrees to
cooperate with Xxxxxxxxxxx in the event Xxxxxxxxxxx claims exemption from such
withholding or seeks deductions under any double taxation or other similar
treaty or agreement from time to time in force, such cooperation to consist of
providing receipts of payment of such withheld tax or other documents reasonably
available to Xxxxxx-Xxxx.
6.10 BLOCKED CURRENCY. In each country where the local currency is
blocked and cannot be removed from the country, royalties accrued in that
country may be paid to Xxxxxxxxxxx in the country in local currency by deposit
in a local bank designated by Xxxxxxxxxxx.
7. PATENT MATTERS
7.1 DRAFT PROVISIONAL APPLICATION. Xxxxxxxxxxx shall have the right to
draft and submit to Xxxxxx-Xxxx initial provisional patent applications covering
any Compound within the Research Results. Such initial draft provisional patent
application shall describe the invention and any data available at that time to
demonstrate, support, or enable disclosure of such invention. Xxxxxx-Xxxx shall
reasonably consider such provisional patent applications in Xxxxxx-Xxxx'x own
drafting of any provisional or non-provisional patent applications claiming such
inventions within the Research and, to the extent permitted by applicable law,
Xxxxxxx X. Xxxxxxxxxxx shall be acknowledged as inventor on all such
applications utilizing any data or information or concepts or content of the
provisional provided to Xxxxxx-Xxxx by Xxxxxxxxxxx. Notwithstanding the
foregoing, if (i) Xxxxxx-Xxxx sends a written notice to Xxxxxxxxxxx requesting
that he draft an initial provisional patent application covering a Compound and
(ii) Xxxxxx-Xxxx does not receive such initial draft from Xxxxxxxxxxx within
thirty (30) days of Xxxxxx-Xxxx'x notice, then Xxxxxx-Xxxx shall have the right
to draft the initial provisional patent application for such Compound.
7.2 FILING AND PROSECUTION.
(a) GENERAL. Xxxxxx-Xxxx shall have the sole and exclusive right, but
not the obligation, to conduct and control, at its expense, the filing,
prosecution and maintenance of any patents filed on, or other applications or
registrations with respect to,
16.
the Research Results, including the Research Patents. During the term of this
Agreement, Xxxxxx-Xxxx shall reasonably consider any recommendations provided by
Xxxxxxxxxxx regarding patent filing and/or prosecution of the Research Patents,
but sole discretion as to filing and/or prosecution matters shall rest with
Xxxxxx-Xxxx. Xxxxxx-Xxxx shall use reasonable efforts to provide Xxxxxxxxxxx
with copies of documents, correspondence and materials reasonably relating to
the prosecution by Xxxxxx-Xxxx of the Research Patents to allow Xxxxxxxxxxx a
reasonable time to review such materials and comment thereon. Xxxxxxxxxxx shall
provide Xxxxxx-Xxxx all reasonable assistance, at Xxxxxx-Xxxx'x expense, in
prosecuting such patents, including without limitation executing all documents
and instruments reasonably required for such prosecution.
(b) CERTAIN PATENTS. If Xxxxxx-Xxxx, in its sole discretion, decides
that it no longer desires to prosecute or maintain any patent or application
within the Research Patents or the Patents and Applications, Xxxxxx-Xxxx shall
so notify Xxxxxxxxxxx. Xxxxxxxxxxx shall then have the right to assume
prosecution and maintenance of such specific patent or application. Xxxxxx-Xxxx
shall, upon Xxxxxxxxxxx'x request, take all actions and execute all documents
and instruments reasonably necessary to transfer such right to prosecute and
maintain, on Xxxxxx-Xxxx'x behalf, such specific patents and applications to
Xxxxxxxxxxx. For any such patent application for which Xxxxxxxxxxx has
undertaken under this subsection (b) to continue prosecution efforts,
Xxxxxxxxxxx shall provide to Xxxxxx-Xxxx copies of all documents, correspondence
and materials reasonably relating to the prosecution by Xxxxxxxxxxx of such
patent applications in sufficient time to allow Xxxxxx-Xxxx to review such
materials and comment thereon. Xxxxxxxxxxx shall reasonably consider and
accommodate any recommendations provided by Xxxxxx-Xxxx regarding patent filing
and/or prosecution of such patent applications. In addition, if Xxxxxx-Xxxx has
a reasonable justification for any changes to such prosecution based on
Xxxxxx-Xxxx'x own patent prosecution and enforcement strategy, then Xxxxxxxxxxx
will modify or change any such prosecution efforts as requested by Xxxxxx-Xxxx,
including without limitation deleting or amending particular claims in such
applications and/or modifying any arguments made in communications with relevant
patent authorities. For clarity, it is understood and agreed that the foregoing
right in this subsection (b) of Xxxxxxxxxxx to undertake to continue the
prosecution and maintenance, on Xxxxxx-Xxxx'x behalf, of specific patents and
patent applications does not affect the licenses granted to Xxxxxx-Xxxx under
this Agreement.
7.3 INFRINGEMENT OF PATENTS BY THIRD PARTIES. Xxxxxxxxxxx shall promptly
notify Xxxxxx-Xxxx in writing of any alleged or threatened infringement of the
Research Patents of which he becomes aware. Xxxxxxxxxxx hereby agrees to
cooperate reasonably in any litigation or other legal action related to
enforcing the Research Patents as reasonably requested by Xxxxxx-Xxxx,
including, if required, himself bringing a legal
17.
action or furnishing a power of attorney at the expense of Xxxxxx-Xxxx. Any
recovery from such infringer obtained by settlement or otherwise shall belong to
Xxxxxx-Xxxx. Notwithstanding the foregoing sentence, to the extent that it can
be demonstrated with a preponderance of the evidence that any portion of such
recovery is based upon the loss of revenues of Xxxxxx-Xxxx, then Edenland shall
be entitled to an amount of such recovery that is equal to the royalties that
would have been due under this Agreement with respect to the amount of such
recovery allocated to lost revenues, provided that Edenland must first reimburse
Xxxxxx-Xxxx for Edenland's proportionate share (based on the proportion of the
recovery claimed by Edenland) of all litigation fees and costs incurred by
Xxxxxx-Xxxx related to the infringement dispute.
7.4 SUBLICENSES. Xxxxxx-Xxxx shall have the sole and exclusive right, but
not the duty, to grant licenses under the Research Patents exclusively licensed
under this Agreement and to collect royalty payments therefor.
7.5 RIGHT TO XXX. Xxxxxxxxxxx and Edenland hereby grant to Xxxxxx-Xxxx the
sole and exclusive right, but not the duty, to xxx on the patents in the
Research Patents, and to collect all damages and profits for any past, present
and/or future infringements thereof.
7.6 DEFENSE. Xxxxxx-Xxxx shall have the sole and exclusive right, but not
the duty, to bring and maintain any action necessary to defend its rights to the
Research Patents, and/or the Know-How, including but not limited to actions in
copyright and trade secret.
7.7 SOLE DISCRETION. Any such licenses or suits of Sections 7.4, 7.5,
and/or 7.6, respectively, shall be undertaken at Xxxxxx-Xxxx'x sole discretion.
7.8 EDENLAND AND XXXXXXXXXXX RIGHTS TO XXX AND DEFEND. Notwithstanding
Sections 7.5 and 7.6, if (i) any infringement or threatened infringement on the
Research Patents or the Know-How relating to the Research, which infringement
could reduce the amount of royalties due to Edenland under this Agreement, is
caused by anyone who is currently or was previously associated, affiliated or
employed with Xxxxxx-Xxxx or its Affiliates ("Xxxxxx-Xxxx Affiliate"), (ii)
Edenland or Xxxxxxxxxxx notify Xxxxxx-Xxxx in writing of its or his intent to
exercise their rights under this Section 7.8 and (iii) Xxxxxx-Xxxx elects not to
exercise its rights under Sections 7.5 and 7.6 within 180 days after receipt of
the notice described in clause (ii) above, then Edenland and Xxxxxxxxxxx shall
have the right to xxx or defend against such Xxxxxx-Xxxx Affiliate, at their
expense, as described in Sections 7.5 and 7.6.
18.
8. REPRESENTATIONS AND WARRANTIES
8.1 XXXXXX-XXXX REPRESENTATIONS AND WARRANTIES Xxxxxx-Xxxx represents and
warrants to Xxxxxxxxxxx that:
(a) CORPORATE POWER. Xxxxxx-Xxxx is duly organized and validly
existing under the laws of its state of incorporation, and has full corporate
power and authority to enter into this Agreement and to carry out the provisions
hereof.
(b) DUE AUTHORIZATION. Xxxxxx-Xxxx is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder.
(c) BINDING AGREEMENT. This Agreement is binding upon Xxxxxx-Xxxx and
enforceable in accordance with its terms, subject to applicable protections
under bankruptcy and other debtor's rights laws.
8.2 XXXXXXXXXXX REPRESENTATIONS AND WARRANTIES. Xxxxxxxxxxx represents and
warrants to Xxxxxx-Xxxx that:
(a) BINDING AGREEMENT. This Agreement is binding upon Xxxxxxxxxxx and
enforceable in accordance with its terms, subject to applicable protections
under bankruptcy and other debtor's rights laws.
(b) GRANT OF RIGHTS; NO CONFLICTING ASSIGNMENT OF RESEARCH RESULTS.
Xxxxxxxxxxx has not granted, and will not grant during the term of this
Agreement, any rights to any Third Party that would conflict with the rights
granted to Xxxxxx-Xxxx hereunder. Other than the obligation to assign contained
in the Technology Assignment Agreement, Xxxxxxxxxxx is under no obligation to
assign inventions made by him which obligation would conflict with his ownership
of the Research Results and ability to perform the obligation of Article 3 of
this Agreement.
8.3 XXXXXXXXXXX AND EDENLAND REPRESENTATIONS AND WARRANTIES. Xxxxxxxxxxx
and Edenland represent and warrant as follows:
(i) They together or individually are the sole and lawful owners
of the entire right, title, and interest in and to the Patents and Applications
and the Related Know-How;
(ii) They together or individually own all right, title and
interest in and to the Patents and Applications and the Related Know-How;
(iii) there are no outstanding liens, licenses and/or
encumbrances burdening the Patents and Applications and the Related Know-How or
any part thereof;
19.
(iv) all Patents and Applications, excluding those patents and
applications that have not yet been filed, are active and in force in the U.S.
or other territories to which they apply;
(v) Exhibit B is a complete list of all Patents and Applications
that have been filed on or prior to the date hereof and have not been abandoned;
(vi) they have no knowledge of any reason that would cause any
patent or patent application in the Patents and Applications to be invalid or
unenforceable;
(vii) they have not granted, expressly or otherwise, an
assignment or any license or other right, exclusive or otherwise, to or under
the Patents and Applications and/or the Related Know-How, which rights remain in
force;
(viii) they have received no notice of any pending or threatened
claims of infringement or misappropriation with respect to the Patents and
Applications or the Related Know-How (other any such notice in connection with
the recent arbitration claims and counterclaims among the parties hereto), and
knows of no reason that they would receive such notice;
(ix) they have not executed and will not execute any agreements
inconsistent with this Agreement or to the detriment of the Patents and
Applications assigned hereby; and
(x) they shall sign all papers and documents, take all lawful
oaths, and do all acts necessary or required to be done for the procurement,
maintenance, enforcement and defense of the Patents and Applications and the
Related Know-How throughout the world at the cost and expense of Xxxxxx-Xxxx,
its successors, legal representatives and assigns.
8.4 EDENLAND REPRESENTATIONS AND WARRANTIES. Edenland represents and
warrants as follows:
(a) CORPORATE POWER. It is duly organized and validly existing under
the laws of its state of incorporation, and has full corporate power and
authority to enter into this Agreement and to carry out the provisions hereof.
(b) DUE AUTHORIZATION. It is duly authorized to execute and deliver
this Agreement and to perform its obligations hereunder.
20.
(c) BINDING AGREEMENT. This Agreement is binding upon it and
enforceable in accordance with its terms, subject to applicable protections
under bankruptcy and other debtor's rights laws.
9. CONFIDENTIALITY
9.1 LICENSED RIGHTS ARE CONFIDENTIAL INFORMATION. Edenland, Xxxxxxxxx and
Xxxxxxxxxxx hereby acknowledge and agree that all Research Results and all other
Know-How, and all rights therein, disclosed or licensed by or from Edenland,
Xxxxxxxxx and/or Xxxxxxxxxxx to Xxxxxx-Xxxx pursuant to the terms of Sections
2.3, 2.4, 3.1 and/or 4.1, and all information relating to the Patents and
Applications and the Related Know-How, are the confidential information of
Xxxxxx-Xxxx (the "Confidential Information").
9.2 DISCLOSED INFORMATION. During the Agreement, Xxxxxx-Xxxx may disclose
to Xxxxxxxxxxx proprietary or confidential information of Xxxxxx-Xxxx, which
information shall also be deemed the "Confidential Information" of Xxxxxx-Xxxx
subject to the provisions of this Article 9.
9.3 NONDISCLOSURE AND NON-USE. Edenland, Xxxxxxxxx and Xxxxxxxxxxx each
covenant and agree that they and their Affiliates, representatives, agents and
employees: (a) will not publish or disclose in any fashion any Confidential
Information to any third party, except and unless Xxxxxx-Xxxx has given
Edenland, Xxxxxxxxx or Xxxxxxxxxxx the prior express written permission to do so
as to particular information, which permission may be withheld at Xxxxxx-Xxxx'x
sole discretion; and (b) will not use, practice or employ any of the
Confidential Information for any purpose, except for the limited purpose of
conducting further Research on Xxxxxx-Xxxx'x behalf under the terms of this
Agreement.
9.4 REMOVAL FROM PUBLIC DISPLAY. Edenland, Xxxxxxxxx and Xxxxxxxxxxx shall
remove from, and in the future shall not disclose on, their websites and all
other publicly available sources within the control of Edenland, Xxxxxxxxx
and/or Xxxxxxxxxxx all Confidential Information of Xxxxxx-Xxxx, including
without limitation, all clinical data and discussions.
10. INDEMNIFICATION AND LIABILITY
10.1 XXXXXXXXXXX AND EDENLAND.
(a) Each of Xxxxxxxxxxx and Edenland, severally and not jointly,
hereby agrees to save, defend and hold Xxxxxx-Xxxx and its directors, employees
and agents harmless from and against any and all damages, expenses, losses,
suits, claims, actions, demands, and/or liabilities, including reasonable legal
expenses and attorneys' fees,
21.
resulting from any breach by Xxxxxxxxxxx or Edenland or Xxxxxxxxx of the
provisions of Sections 2.5, 8.2, 8.3, 8.4 or Section 9.
(b) Each of Xxxxxxxxxxx and Edenland, severally and not jointly,
hereby agrees to save, defend and hold Xxxxxx-Xxxx and its directors, employees
and agents harmless from and against any and all damages, expenses, losses,
suits, claims, actions, demands, and/or liabilities, including reasonable legal
expenses and attorneys' fees, resulting from any claim, allegation or suit by
(i) any Affiliate of Xxxxxxxxxxx or Edenland or (iii) any entity that employs
Xxxxxxxxxxx, asserting any ownership interest or other rights whatsoever in any
Research Results or any intellectual property rights therein or seeking
compensation for any of those rights.
10.2 XXXXXX-XXXX. To the extent Xxxxxx-Xxxx may maintain product liability
insurance, Xxxxxx-Xxxx agrees to make Edenland and Xxxxxxxxxxx a named insured
under such insurance during the term of this Agreement.
11. TERM AND TERMINATION OF AGREEMENT
11.1 TERM. Unless earlier terminated as provided below, the term of this
Agreement shall commence upon the Effective Date and shall expire on the
expiration date of the last to expire royalty or other payment obligation of
Xxxxxx-Xxxx hereunder.
11.2 ACCRUED RIGHTS. Termination of this Agreement shall not affect any
rights of either Party that accrued prior to the date of termination. Promptly
after termination of this Agreement each party shall return or dispose of any
confidential information of the other Party in accordance with its instructions.
11.3 SURVIVING OBLIGATIONS.
(a) OBLIGATIONS OF XXXXXX-XXXX. The obligation to pay royalties
pursuant to Section 6.2, and the obligation to maintain complete and accurate
records pursuant to Section 6.8 shall survive the expiration of this Agreement.
(b) OBLIGATIONS OF XXXXXXXXXXX. The obligations to license pursuant to
Articles 3 and 4, the covenant not to conduct other research in the Field
pursuant to Section 2.5, and the obligation to maintain complete and accurate
records pursuant to Section 6.8, and the obligations of Articles 9 and 10 shall
survive the expiration of this Agreement.
22.
12. MISCELLANEOUS
12.1 PUBLICATION. Xxxxxxxxxxx covenants and agrees that he and his
employees will not publish or disclose any Research or portion of the Research
Results unless Xxxxxx-Xxxx has given Xxxxxxxxxxx the prior written permission to
do so, which permission may be withheld at Xxxxxx-Xxxx'x sole discretion. To the
extent that Xxxxxxxxxxx is an inventor of a Compound, Xxxxxx-Xxxx shall give
Xxxxxxxxxxx credit as inventor of such Compound in any publication by
Xxxxxx-Xxxx regarding such Compound or a Product incorporating such Compound.
12.2 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of California, without reference to its
conflicts of law provisions, as though it were written, executed and fully
performed within the State of California.
12.3 DISPUTE RESOLUTION. In the event of any dispute arising under the
Agreement, the parties shall refer such dispute to the Chief Executive Officer
of Xxxxxx-Xxxx and Xxxxxxxxxxx for attempted resolution by good faith
negotiations within thirty (30) days after such referral is made. In the event
such officers are unable to resolve such dispute within such thirty (30) day
period, either party may invoke the provisions of Section 12.4 below.
12.4 ARBITRATION. If the officers of the parties are unable to resolve a
dispute under the Agreement pursuant to good faith negotiation under Section
9.4, then the resolution of such dispute shall be by arbitration as provided
herein. Any such dispute shall be resolved by confidential, final and binding
arbitration (rather than trial by jury or court or resolution in some other
forum) to the fullest extent permitted by law. Any arbitration proceeding
pursuant to this Agreement shall be conducted by the American Arbitration
Association ("AAA") in San Diego, under the then existing AAA commercial
arbitration rules. If for any reason all or part of this arbitration provision
is held to be invalid, illegal, or unenforceable in any respect under any
applicable law or rule in any jurisdiction, such invalidity, illegality or
unenforceability will not effect any other portion of this arbitration provision
or any other jurisdiction, but this provision will be reformed, construed and
enforced in such jurisdiction as if such invalid, illegal or unenforceable part
or parts of this provision had never been contained herein, consistent with the
general intent of the Parties insofar as possible.
12.5 REMEDIES. Except pursuant to Sections 5.3, 5.4 and 5.5, in no event
shall the remedy for any breach hereunder result in the termination of the
exclusive licenses under Sections 3.1 and 4.1.
12.6 NOTICES. All notices required or permitted to be given under this
Agreement shall be in writing and shall be mailed by registered or certified
mail, Federal
23.
Express or DHL addressed to the signatory to whom such notice is required or
permitted to be given and transmitted by facsimile to the number indicated
below. All notices shall be deemed to have been given when mailed, as evidenced
by the postmark at the point of mailing, or faxed.
All notices to Xxxxxx-Xxxx shall be addressed as follows:
Xxxxxx-Xxxx Pharmaceuticals, Inc.
0000 Xxxxxxx Xxxxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chief Executive Officer
with a copy to:
Xxxxxx Godward L.L.P.
0000 Xxxxxxxxx Xxxxx, Xxxxx 0000
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxx, Esq.
All notices to Xxxxxxxxxxx shall be addressed as follows:
Xxxxxxx X. Xxxxxxxxxxx
c/o Colthurst Limited and Edenland, Inc.
Baybush, Straffan
County Kildare
Ireland
With a copy to:
Xxxxx X. Xxxxxxx, Esq.
Akin, Gump, Strauss, Xxxxx & Xxxx LLP
0000 Xxx Xxxxxxxxx Xxxxxx, X.X.
Xxxxx 000
Xxxxxxxxxx, X.X. 00000
Any party may, by written notice to the other, designate a new address
or fax number to which notices to the party giving the notice shall thereafter
be mailed or faxed.
12.7 COMPLIANCE WITH LAWS. Xxxxxxxxxxx shall provide Xxxxxx-Xxxx with such
reasonable assistance as may be required for Xxxxxx-Xxxx to comply with all
applicable
24.
laws, ordinances, rules, regulations and the like of all governmental units or
agencies having jurisdiction pertaining to Xxxxxx-Xxxx'x activities under this
Agreement.
12.8 FORCE MAJEURE. No party shall be liable for any delay or failure of
performance to the extent such delay or failure is caused by circumstances
beyond its reasonable control and that by the exercise of due diligence it is
unable to prevent, provided that the party claiming excuse based on such
circumstances uses its best efforts to overcome the effects of such
circumstances and to recommence performance.
12.9 ENTIRETY OF AGREEMENT. This Agreement, including the Exhibits hereto,
embodies the entire, final and complete agreement and understanding between the
parties regarding the subject matter hereof and replaces and supersedes all
prior discussions and agreements between them with respect to its subject
matter. No modification or waiver of any terms or conditions hereof shall be
effective unless made in writing and signed by a duly authorized officer of each
party.
12.10 NON WAIVER. The failure of a party in any one or more instances to
insist upon strict performance of any of the terms and conditions of this
Agreement shall not constitute a waiver or relinquishment, to any extent, of the
right to assert or rely upon any such terms or conditions on any future
occasion.
12.11 DISCLAIMER OF AGENCY. Neither party is, nor will be deemed to be, the
legal representative or agent of the other, nor shall either party have the
right or authority to assume, create, or incur any third party liability or
obligation of any kind, express or implied, against or in the name of or on
behalf of another except as expressly set forth in this Agreement.
12.12 SEVERABILITY. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any government or
other agency having jurisdiction over either Xxxxxx-Xxxx or Xxxxxx-Xxxx deems
any provision to be contrary to any laws, then that provision shall be severed
and the remainder of the Agreement shall continue in full force and effect. To
the extent possible, the parties shall revise such invalidated provision in a
manner that will render such provision valid without impairing the parties'
original intent.
12.13 AFFILIATES; ASSIGNMENT. Xxxxxxxxxxx may not assign his rights or
delegate his duties under this Agreement without the prior written consent of
Xxxxxx-Xxxx. Xxxxxx-Xxxx may assign this Agreement to any of its Affiliates or
to any successor by merger, acquisition or sale of substantially all of its
business unit to which this Agreement relates in a manner such that the assignor
will remain liable and responsible for the performance
25.
and observance of all its duties and obligations hereunder. This Agreement shall
be binding upon the successors and permitted assigns of the parties.
12.14 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
12.15 PUBLICITY. Except as otherwise provided herein or required by law,
Xxxxxxxxxxx shall not originate any publication, news release or other public
announcement, written or oral, relating to the existence of or the performance
under this Agreement, without the prior written approval of Xxxxxx-Xxxx, which
approval shall not be unreasonably withheld.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement.
XXXXXX-XXXX PHARMACUETICALS, INC. XXXXXXX X. XXXXXXXXXXX
By: /s/ Xxxxxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxxxxxxxx
----------------------------- -------------------------------
Name: Xxxxxxx X. Xxxxxx Name: Xxxxxxx X. Xxxxxxxxxxx
--------------------------- -----------------------------
Title: Chairman and CEO
-------------------------
EDENLAND, INC. XXXXXXXXX LIMITED
By: /s/ Xxxxxxx X. Xxxxxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxxxxxx
----------------------------- -------------------------------
Name: Xxxxxxx X. Xxxxxxxxxxx Name: Xxxxxxx X. Xxxxxxxxxxx
--------------------------- -----------------------------
Title: MD/Edenland Inc. Title: MD/Xxxxxxxxx Ltd.
-------------------------- ---------------------------
26.
EXHIBIT A
DEVELOPMENT TRANSFER DATES
COMPOUND TRANSFER DATE
-------- -------------
27.
EXHIBIT B
PATENTS AND PATENT APPLICATIONS
--------------------------------------------------------------------------------
Docket Filing Serial # Patent # Issue Expiration Annuity
Number Date (Publication #) Date Date Due
--------------------------------------------------------------------------------
[ ********** (***) *** ***** ********* ********* - "****"
--------------------------------------------------------------------------------
***** */**/** ****/** ****
***** */*/** **/****** ***
*****.* */**/** **/****** ***
*****.** */**/** **/****** ***
*****.** */**/** **/****** ******* **/**/**
*****.** **/**/** **/****** ***
***** */**/** ******* ***
*****.* */**/** ******* ***
***** */**/** ****** *******
***** */**/** ****** ***
***** */**/** ******** ***
(********)
***** */**/** ***** ***** **/*/**
***** */**/** ****** ***
***** */**/** ******/** ***
***** */**/** ****** ***
***** *********** ***
***** *****/** ***
***** ***** ***
***** *****
***** **/********
--------------------------------------------------------------------------------
* *** = *******, *** = *********
********** (***) *** ******** & ********** ********* ********* - "******** ****"
--------------------------------------------------------------------------------
***.*** */**/** ****/** ***
***.***.* */**/** **/****** ***
***.*** */**/** */**-***** *****
***.*** */**/** ******* ***
***.***.* **/**/** ******* ***
***.***.** **/*/** ******* ***
***.*** */**/** ---- ****-*
***.*** */**/** ******* ***
***.*** */**/** ********.* ***
(********)
***.*** ****/** ***]
28.
--------------------------------------------------------------------------------
Docket Filing Serial # Patent # Issue Expiration Annuity
Number Date (Publication #) Date Date Due
--------------------------------------------------------------------------------
[***.*** ******/** ***
***.*** *****/** ***
***.*** ******* ****
***.*** ***** *****
--------------------------------------------------------------------------------
********* (***) *** ******** & ********** ********** - "*** ** ******** **** **"
--------------------------------------------------------------------------------
***.*** */**/** **/****** ******* */*/** */*/**
***.*** **/*/******* ***
***.*** *****/** ***
***.*** ****** ***
***.*** ***
***.*** ****/** ***
***.*** ******* ***
***.*** ***** ***
--------------------------------------------------------------------------------
*** ** ***/********* ******* ******** **** **** ** *********** **** ** *****
*****/*********
*******/********** ** **** ***** - "********* **********"
--------------------------------------------------------------------------------
***** */**/** ****/** ***
***** */**/** **/****** ***
***** */**/** */**-***** **.***
***** */**/** ******* ***
***** */**/** ---- ****-*
***** */**/** ******* ***
***** */**/** ********.* ***
(********)
***** */**/** ******* **** **/**/**
"********* **********"
--------------------------------------------------------------------------------
***.*** */**/** **-*** ***
--------------------------------------------------------------------------------
]
29.
--------------------------------------------------------------------------------
Docket Filing Serial # Patent # Issue Expiration Annuity
Number Date (Publication #) Date Date Due
--------------------------------------------------------------------------------
[
****-***** **** ******* (*** ****)/****-*** *** ** ***** ***** **** *******
******* ** *** ** ** **-******** ****** ********* - "****** **********"
-------------------------------------------------------------------------------
***.*** */*/** **-**** ***
***.*** */**/** **/****** ***
***.***.* */**/** **/****** ***
***.***.** **/**/** **/****** ***
--------------------------------------------------------------------------------
**-*********** **** ****/****/*** ********** - **** ********** /****-*** ***
** ******** ***; ****/*** ************ ******** *** - "**** *********** *******"
--------------------------------------------------------------------------------
**** */**/** **/****** ***
**** */**/** ****/***** ***
(*********)
***** *****/*****
***** **/**/** ******* ***
***** */**/** ********.* ***
***** ********.* ***
(********)
***** */**/** ******* ***
***** *-*********
***** **/**/** ******** ***
***** ******/** ***
**-*********** **** ****/**** ********** - *** ******** ******** - "****
*********** *******"
--------------------------------------------------------------------------------
***.** **/**/** ****/***** ***
(*********)
***.*** **/**/** **/****** ***
--------------------------------------------------------------------------------
*** ******* (*******) & ****-******* ** **************** * - "******
********* *******"
--------------------------------------------------------------------
**** */**/** **/****** ***
**** */**/** ****/***
(*********)
--------------------------------------------------------------------------------
]
30.
--------------------------------------------------------------------------------
Docket Filing Serial # Patent # Issue Expiration Annuity
Number Date (Publication #) Date Date Due
--------------------------------------------------------------------------------
[*** ******* (*******) & ****-******* ** **************** ** - "******
********* *******"
--------------------------------------------------------------------------------
***.** */**/** ****/**** ***
(*********)
***.*** */** **/****** ***
***.*** */** *****/** ***
***.*** */** ******* ***
***.*** */** ******** ***
***.*** */** ******** ***
(********)
***.*** */** ****** ***
***.*** */** **-****** ***
***.*** */** ****** ***
***.*** */** ********* ***
--------------------------------------------------------------------------------
*** ********/********* ** ********* (***, ***) ***/** ****** **********
--------------------------------------------------------------------------------
**** */**/** **/****** ***
**** */**/** ******* ***
(*********)
***** ******* ***
***** */**/** **/**** ***
***** */**/** ******** ***
*** ******** + *** ******** *******/********** ******* - *** + *** ********
*********** *******
--------------------------------------------------------------------------------
**** */**/** **/****** ***
**** */**/** ****/***** ***
]
31.
EXHIBIT C
COMPOUNDS AND KNOW-HOW
NAME CODE (INHOUSE) CHEMICAL FORMULA THERAPEUTIC AREA
----- -------------- ---------------- ----------------
[*-***************** ******** **** ********** *************
***/*********
**********
********** **
*. ********
* ******
*********** ********* **** ********** ***/*********/********
*. ********
******* ******** **** ********** ***/*********
(**-******)******-*-(**-******) ***** **: ****.** ***/*********
******-*-(**-******)*********
*** ****** ********* ******
**-****** *********-*' ****-* *********** ***/*********
-*************
*. ********
********** *** ** ******** ****/****
*********** *** ** ******** ****/****
***/*********
*********** *** * ******* ***/*********
***/ ** *********** **** ***-**
****
************ ************* ***/*********
******** *** ** ******** ***/*********
(alpha)-******** *** ** ********** ***/*********
*********** ******** **** ********* ****
********* *
***/*********
*-************** **** ********* ***/*********
********* ** ** ********* ***/*********
********* ** ** ********* *************
****
********** **** *
********** **** **
32.
NAME CODE (INHOUSE) CHEMICAL FORMULA THERAPEUTIC AREA
----- -------------- ---------------- ----------------
********** **** *
******** *** ** ********* *************
****/****
*************
********** *** ** ********* ***/*********
********** **** *
********** ***** ********* ***/*********
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********* ***** **** *** *** ***/*********
*********** ** ** *** ** ***/*********
*** ** **** ******** *** ** *** *,
***/******* *********.
***/*********
**** ***** ***/*********
******** ********* ***** ********/*********'*
********]
33.
