Exhibit 10.24
SUBLICENSE AGREEMENT
WITH RESPECT TO XXXXX-XXXXXXXXX LICENSE
BETWEEN
PROGENICS PHARMACEUTICALS, INC.
AND
XXXXXXX-XXXXX SQUIBB COMPANY
DATED AS OF
APRIL 15, 1997
[Note: Certain portions of this document have been marked "[XXX]" to
indicate that confidentiality has been requested for this information. The
confidential portions have been omitted and filed separately with the
Securities and Exchange Commission.]
TABLE OF CONTENTS
Page
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1. DEFINITIONS ......................................................... 1
1.1 "Affiliate" ................................................ 1
1.2 "BCG" ...................................................... 2
1.3 "Compound" ................................................. 2
1.4 "Derivative" ............................................... 2
1.5 "Distributor" .............................................. 2
1.6 "Effective Date" ........................................... 2
1.7 "End User" ................................................. 2
1.8 "FDA" ...................................................... 2
1.9 "First Commercial Sale" .................................... 2
1.10 "GD2" ...................................................... 2
1.11 "Generic Product" .......................................... 2
1.12 "GM2" ...................................................... 2
1.13 "GMK Vaccine" .............................................. 2
1.14 "Government" ............................................... 3
1.15 "KLH" ...................................................... 3
1.16 "MGV Vaccine" .............................................. 3
1.17 "NDA" ...................................................... 3
1.18 "Net Sales" ................................................ 3
1.19 "Party" .................................................... 3
1.20 "Person" ................................................... 3
1.21 "PLA" ...................................................... 3
1.22 "QS-21" .................................................... 3
1.23 "S-K Field" ................................................ 3
1.24 "S-K Licensed Patents" ..................................... 4
1.25 "S-K Licensed Technology" .................................. 4
1.26 "S-K Products" ............................................. 4
1.27 "S-K Technical Information" ................................ 4
1.28 "Sub-sublicensee" .......................................... 5
1.29 "Territory" ................................................ 5
1.30 "Third Party" .............................................. 5
1.31 "Use" ...................................................... 5
1.32 "Valid Claim" .............................................. 5
2. REPRESENTATIONS AND WARRANTIES OF PROGENICS ......................... 5
2.1 Representations and Warranties ............................. 5
3. GRANT OF RIGHTS ..................................................... 6
3.1 Sublicense Grant Under Xxxxx-Xxxxxxxxx/PROGENICS
License Agreement .......................................... 6
3.2 Sublicense Rights .......................................... 7
3.3 BMS Rights under Xxxxx-Xxxxxxxxx/PROGENICS
License Agreement .......................................... 8
4. UPFRONT FEE; ROYALTY PAYMENTS ....................................... 9
4.1 Upfront Fee ................................................ 9
4.2 Royalty Payments ........................................... 9
(1)
TABLE OF CONTENTS (continued)
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4.3 Obligation to Pay Royalties ................................ 15
5. DILIGENCE OBLIGATIONS OF BMS ........................................ 15
5.1 Diligence Obligations ...................................... 15
6. PAYMENTS AND REPORTS ................................................ 16
6.1 Reports; Payments .......................................... 16
6.2 Mode of Payment; Taxes ..................................... 16
6.3 Records Retention .......................................... 17
6.4 Audit Request .............................................. 17
6.5 Cost of Audit .............................................. 17
6.6 No Non-Monetary Consideration for Sales .................... 17
7. PATENT PROSECUTION; ENFORCEMENT; INFRINGEMENT ....................... 18
7.1 Patent Prosecution ......................................... 18
7.2 Patent Costs ............................................... 18
7.3 Patent Enforcement ......................................... 18
7.4 Infringement Action by Third Parties ....................... 19
8. TERM; TERMINATION ................................................... 20
8.1 Term ....................................................... 20
8.2 Acknowledgment of Termination Rights Under Xxxxx-
Xxxxxxxxx/PROGENICS License Agreement ...................... 20
8.3 Breach by Either Party ..................................... 20
8.4 Effect of Termination ...................................... 20
8.5 Right to Sell Stock on Hand ................................ 21
8.6 Termination of Sublicenses ................................. 21
8.7 Accrued Rights: Surviving Obligations ...................... 21
9. ASSIGNABILITY ....................................................... 22
9.1 Non-Assignability .......................................... 22
9.2 Assignability .............................................. 22
10. MISCELLANEOUS ....................................................... 22
10.1 Relationship of Parties .................................... 22
10.2 Force Majeure .............................................. 22
10.3 Further Actions ............................................ 22
10.4 Notice ..................................................... 22
10.5 Use of Name ................................................ 23
10.6 Non-Solicitation ........................................... 24
10.7 Marking .................................................... 24
10.8 Costs and Expenses ......................................... 24
10.9 Manufacture in United States ............................... 24
10.10 Waiver ..................................................... 24
10.11 Compliance with Law ........................................ 24
10.12 Severability ............................................... 25
10.13 Amendment .................................................. 25
(2)
TABLE OF CONTENTS (continued)
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10.14 Xxxxx-Xxxxxxxxx/PROGENICS License Agreement ................ 25
10.15 Governing Law .............................................. 25
10.16 Arbitration ................................................ 25
10.17 Counterparts ............................................... 26
10.18 Descriptive Headings ....................................... 26
EXHIBITS
Exhibit A S-K Licensed Patents
(3)
SUBLICENSE AGREEMENT
WITH RESPECT TO XXXXX-XXXXXXXXX LICENSE
THIS SUBLICENSE AGREEMENT WITH RESPECT TO XXXXX-XXXXXXXXX LICENSE (this
"Agreement") is dated as of April 15, 1997 between Progenics Pharmaceuticals,
Inc., a Delaware corporation, having offices at 000 Xxx Xxx Xxxx Xxxxx Xxxx,
Xxxxxxxxx, Xxx Xxxx 00000 ("PROGENICS"), and Xxxxxxx-Xxxxx Squibb Company, a
Delaware corporation, having offices at X.X. Xxx 0000, Xxxxx 000 and Province
Xxxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000-0000, for and on behalf of itself and its
Affiliates ("BMS").
PRELIMINARY STATEMENTS
A. PROGENICS has acquired a license to certain patents and technology
relating to the treatment of human cancers using vaccines pursuant to a license
agreement dated November 17, 1994 (the "Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement") between PROGENICS and Xxxxx-Xxxxxxxxx Institute for Cancer Research,
a not-for-profit membership corporation of the State of New York
("Xxxxx-Xxxxxxxxx").
B. BMS is interested in obtaining a worldwide sublicense to formulate,
manufacture, use and sell products using the patent rights and technology to
which PROGENICS has acquired a license from Xxxxx-Xxxxxxxxx, and PROGENICS
wishes to grant such rights to BMS, pursuant to the terms and conditions set
forth in this Agreement.
C. It is anticipated that BMS, PROGENICS and Xxxxx-Xxxxxxxxx will enter
into a side letter agreement (the "Xxxxx-Xxxxxxxxx Letter Agreement") with
respect to this Agreement and the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement,
and the rights and obligations of such parties hereunder and thereunder.
NOW, THEREFORE, in consideration of the mutual covenants and agreements of
the Parties contained in this Agreement, the Parties agree as follows:
1. DEFINITIONS.
As used in this Agreement, the following terms will have those meanings
set forth in this Section 1 unless the context dictates otherwise.
1.1 "Affiliate", with respect to any Party, shall mean any Person which,
directly or indirectly, controls, is controlled by, or is under common control
with, such Party. For these purposes, "control" shall refer to the possession,
directly or indirectly, of the power to direct the management or policies of a
Person or to veto any material decision relating to the management or policies
of a Person, in each case, whether through the ownership of equity
participation, voting securities or beneficial interests, by contract, by
agreement, or otherwise.
1.2 "BCG" shall mean bacille de Calmette et Xxxxxx, a nonspecific immune
stimulant (cow tuberculosis) vaccine.
1.3 "Compound" shall mean any of XXX, XX0, XX0, KLH and QS-21.
1.4 "Derivative" shall mean a chemical substance derived from another
substance either directly or by modification or partial substitution.
1.5 "Distributor" shall mean any Person engaged by BMS, or any agent or
representative of BMS, to distribute any S-K Product(s) either directly or
indirectly through other distributors.
1.6 "Effective Date" shall mean the date first above written as the date
of this Agreement.
1.7 "End User" shall mean any Person licensed or otherwise authorized to
Use S-K Product(s) for its own personal use, or any Person licensed to Use S-K
Product(s) in the regular conduct of its own business and not for licensing to
other Persons.
1.8 "FDA" shall mean the United States Food and Drug Administration, or
the successor thereto.
1.9 "First Commercial Sale" shall mean, in each country in the Territory,
the date that the S-K Product(s) are first sold, marketed or publicly made
available for sale. S-K Product(s) distributed or used for clinical trials or
experimental purposes only shall not be considered sold, marketed or made
publicly available and shall not establish the First Commercial Sale.
1.10 "GD2" shall mean [XXX].
1.11 "Generic Product" shall mean, on a country-by-country basis, an S-K
Product: (i) the manufacture, use or sale of which is not covered by a Valid
Claim in such country, and (ii) that is also marketed by an unlicensed Third
Party or Parties in such country, which Third Party or Parties have, in the
aggregate, at least [XXX] in such country, as measured by IMS.
1.12 "GM2" shall mean [XXX].
1.13 "GMK Vaccine" shall mean that certain S-K Product composed of GM2
conjugated to KLH and combined with QS-21.
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1.14 "Government" means the Federal Government of the United States of
America.
1.15 "KLH" shall mean keyhole limpet hemocyanin.
1.16 "MGV Vaccine" shall mean that certain S-K Product composed of GM2
conjugated to KLH and combined with GD2 conjugated to KLH and further combined
with QS-21.
1.17 "NDA" shall mean New Drug Application as defined by the FDA.
1.18 "Net Sales" shall mean the gross amount [XXX]. Such amounts shall be
determined from the books and records of BMS, its Affiliates or
Sub-sublicensees, maintained in accordance with the accounting principles used
by such entity, consistently applied.
1.19 "Party" shall mean PROGENICS or BMS and, when used in the plural,
shall mean PROGENICS and BMS.
1.20 "Person" shall mean any natural person, corporation, firm, business
trust, joint venture, association, organization, company, partnership or other
business entity, or any government or any agency or political subdivision
thereof, or any organization which can exercise independent legal standing.
1.21 "PLA" shall mean a Product License Application filed with the FDA.
1.22 "QS-21" shall mean the [XXX].
1.23 "S-K Field" shall mean, and is limited to, the practice of the S-K
Licensed Patents and S-K Technical Information for the treatment or prevention
of neoplastic human disease or the treatment of human cancer with any of the
following: [XXX]
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[XXX]
1.24 "S-K Licensed Patents" shall mean:
(a) The following patent applications and patents relating to
ganglioside vaccines, intermediates or methods of producing them, or methods of,
or compositions using, them which are owned by or licensed to PROGENICS [XXX]:
(i) [XXX] all patents issuing therefrom and all divisions, continuations,
patents issuing therefrom and all divisions, continuations, reissues,
substitutes, and extensions thereof and the foreign equivalents thereof; and
(ii) all patents and patent applications, whether filed before or after the
effective date of the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, which claim
priority under 35 U.S.C. ss. 119 or the benefit of the filing date under 35
U.S.C. ss. 120 of the patent applications and patents of clause (i), but only to
the extent of subject matter in such applications and patents for which priority
or benefit is claimed; and
(b) Any developments related to or arising out of the subject matter
described in Section 1.24(a) which are dominated by the patent applications or
patents described in Section 1.24(a) or [XXX].
1.25 "S-K Licensed Technology" shall mean the S-K Licensed Patent(s) and
the S-K Technical Information.
1.26 "S-K Products" shall mean any and all products which fall within the
S-K Field and which: (i) would infringe a claim of any S-K Licensed Patent(s),
but for this Agreement and the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, or
(ii) are produced or used using a process or method that would infringe, but for
this Agreement and the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, a claim of
any S-K Licensed Patent, or (iii) were developed using S-K Technical
Information. S-K Products shall include, without limitation, the GMK Vaccine and
the MGV Vaccine.
1.27 "S-K Technical Information" shall mean unpublished research and
development information, unpatented inventions, know-how, trade secrets, and
technical data in the possession of Xxxxx-Xxxxxxxxx at the effective date of the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement which are needed to produce or gain
government approvals to market S-K Product(s) and which Xxxxx-Xxxxxxxxx has the
right to and will provide to PROGENICS upon request. However, S-K Technical
Information does not include patient names. Information and materials shall no
longer be
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considered to be S-K Technical Information if such information or materials
cease to be Confidential Information.
1.28 "Sub-sublicensee" shall mean any Person, not an Affiliate of BMS,
which is licensed by BMS, pursuant to the authority granted in this Agreement,
which has rights to S-K Licensed Technology beyond those rights commonly granted
to an End User.
1.29 "Territory" shall mean the entire world.
1.30 "Third Party" shall mean any Person who or which is neither a Party
nor an Affiliate of a Party.
1.31 "Use" shall mean any form of practice or utilization of the S-K
Licensed Technology, or any portion thereof.
1.32 "Valid Claim" shall mean a claim of any S-K Licensed Patent which has
not been held invalid or unenforceable by final decision of a court or other
governmental agency of competent jurisdiction, unappealed or unappeased within
the time allowed for appeal, and which is not admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
2. REPRESENTATIONS AND WARRANTIES OF PROGENICS.
2.1 Representations and Warranties. PROGENICS represents and warrants to
BMS as of the Effective Date:
(a) The Xxxxx-Xxxxxxxxx/PROGENICS License Agreement is in full
force and effect and has not been modified or amended;
(b) To the best of PROGENICS's knowledge, neither Xxxxx-Xxxxxxxxx
nor PROGENICS is in default under, and neither party claims or has grounds upon
which to claim the other party is in default under, the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement;
(c) To the best of PROGENICS's knowledge, the rights Xxxxx-Xxxxxxxxx
has licensed to PROGENICS pursuant to the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement were not and are not subject to any restrictions or limitations except
as set forth in the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement;
(d) To the best of PROGENICS's knowledge, Xxxxx-Xxxxxxxxx has not
accepted funding from any non-governmental parties which would diminish
PROGENICS's rights to technology under the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement;
(e) The milestones set forth in Sections 5.01(a), (b) and (e) of the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement have been fully satisfied by
PROGENICS as of the Effective Date; and
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(f) Attached hereto as Exhibit A is a true and complete list of all
patents and patent applications comprising the S-K Licensed Patents as of the
Effective Date
3. GRANT OF RIGHTS.
3.1 Sublicense Grant Under Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
(a) Subject to the terms and conditions of this Agreement, PROGENICS
hereby grants to BMS an exclusive (including as to PROGENICS) sublicense, under
the Xxxxx-Xxxxxxxxx License Agreement, to use the S-K Licensed Patents and the
S-K Technical Information to make, have made, use, sell, have sold and develop
S-K Products in the S-K Field throughout the Territory. No license under the S-K
Licensed Patents and S-K Technical Information is granted, and no license should
be implied, with respect to activities of BMS outside the S-K Field.
(b) The sublicense granted to S-K Licensed Patents pursuant to
Section 3.1(a) shall be exclusive, with the right to grant sublicenses as
provided in Section 3.2. The sublicense granted to S-K Technical Information
pursuant to Section 3.1(a) shall be exclusive for the S-K Field with the right
to grant sublicenses as provided in Section 3.2.
(c) The sublicense granted in this Section 3 shall be granted to
Affiliates of BMS, effective five days after receipt of written notification
from BMS by PROGENICS thereof.
(d) Without limiting the foregoing sublicense grants, PROGENICS
agrees that this grant will extend to and authorize the manufacture, sale, lease
or other transfer of S-K Products through an Affiliate or a Distributor and
shall authorize End Users' Use of S-K Products transferred by PROGENICS to BMS's
Affiliates or Distributors.
(e) All rights granted in this Agreement are expressly granted
subject to the rights of the Government pursuant to 35 U.S.C. ss. 200 et seq.,
as amended, and the implementing regulations, and such rights are specifically
reserved by this Agreement to the Government. If Xxxxx-Xxxxxxxxx or PROGENICS is
required to grant licenses pursuant to the statutory and regulatory requirements
referred to in this Section 3.1(e), or if the sublicense granted to BMS under
this Agreement is otherwise modified or limited by the Government pursuant to
such requirements, PROGENICS and BMS shall negotiate in good faith a reduction
of the sublicense fees and royalties payable hereunder and such other amendments
of this Agreement as may be appropriate under the circumstances.
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(f) Notwithstanding the exclusive field sublicense granted herein,
BMS hereby acknowledges that: (i) Xxxxx-Xxxxxxxxx has specifically reserved the
rights to manufacture, or use the S-K Licensed Patents, S-K Products and S-K
Technical Information for its own internal purposes, including continuing
research, development, testing, clinical use and all other internal uses; (ii)
Xxxxx-Xxxxxxxxx may have the S-K Products manufactured by Third Parties solely
for Xxxxx-Xxxxxxxxx'x internal use provided any such Third Party agrees in
writing (a) not to use the S-K Technical Information except for such purpose and
(b) not to disclose the S-K Technical Information to others; and (iii)
Xxxxx-Xxxxxxxxx also has reserved the right to permit other Persons to use the
S-K Licensed Patents, S-K Products, and S-K Technical Information solely for
academic research purposes provided such other Persons agree in writing (x) to
use the same only for academic research purposes, (y) not to provide the same to
other entities or individuals and (z) not to disclose the S-K Technical
Information to others.
(g) Provided Xxxxx-Xxxxxxxxx'x Affiliate(s) is capable and accepts,
BMS hereby grants to Xxxxx-Xxxxxxxxx'x Affiliate(s) a right of first refusal to
function as a site at which the clinical tests or trials of any S-K products are
performed. Such right of first refusal shall mean that BMS shall request a
proposal from Xxxxx-Xxxxxxxxx setting forth the procedures which Xxxxx-Xxxxxxxxx
would follow in the tests and the associated costs. If BMS decides not to
accept Xxxxx-Xxxxxxxxx'x proposal, then BMS may only contract with a clinical
test site(s) whose proposal is more favorable (taken as a whole) to BMS than
that proposed by Xxxxx-Xxxxxxxxx.
3.2 Sublicense Rights.
(a) BMS shall have the right to grant sublicenses to its Affiliates
of the sublicense granted to BMS herein, provided that: (i) BMS shall guarantee
and be responsible for the making of all payments due, and the making of reports
under this Agreement, by reason of sales of any S-K Products by its Affiliates
and their compliance with all applicable terms of this Agreement (including the
applicable terms of the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement); and (ii)
each Affiliate agrees in writing to keep books and records and permit PROGENICS
to review such books and records pursuant to the relevant provisions and to
observe all other applicable terms of this Agreement. No consent or approval of
PROGENICS shall be required in connection with the granting of such sublicenses.
(b) BMS shall have the right to grant sublicenses to
Sub-sublicensees of the sublicense granted to BMS herein, except that BMS does
not have the right to grant such sublicenses with respect to the United States,
provided that: (i) PROGENICS shall have consented to such sublicense, which
approval shall not be
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unreasonably withheld (it will be reasonable for PROGENICS to withhold consent
if PROGENICS determines that the capabilities of the proposed Sub-sublicensee
are not comparable to BMS's capabilities in the country or countries to be
sublicensed); (ii) BMS shall guarantee and be responsible for the making of all
payments due, and the making of reports under this Agreement, by reason of sales
of any S-K Products by its Sub-sublicensees and their compliance with all
applicable terms of this Agreement (including the applicable terms of the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement); and (iii) each Sub-sublicensee
agrees in writing to keep books and records and permit PROGENICS to review such
books and records pursuant to the relevant provisions and to observe all other
applicable terms of this Agreement.
(c) BMS hereby unconditionally guarantees the performance of any of
its Affiliates and Sub-sublicensees hereunder. In the event of a breach by an
Affiliate or Sub-sublicensee in the observance of applicable terms of this
Agreement, PROGENICS shall be entitled to proceed against either such Affiliate
or Sub-sublicensee or directly against BMS, as PROGENICS may determine in its
sole discretion, to enforce this Agreement.
3.3 BMS Rights under Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
PROGENICS agrees that, with respect to the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement:
(a) PROGENICS will diligently fulfill all of its obligations
thereunder, to the extent such obligations have not been delegated to BMS;
(b) PROGENICS shall not enter into any subsequent agreement with
Xxxxx-Xxxxxxxxx which modifies or amends the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement in a way which is deleterious to the rights of BMS under this
Agreement;
(c) PROGENICS shall not terminate the Xxxxx-Xxxxxxxxx/PROGENICS
License Agreement, in whole or in part, directly or indirectly, without the
prior written consent of BMS, which shall not be unreasonably withheld in the
event that Xxxxx-Xxxxxxxxx is in material default under the terms thereof at the
time PROGENICS seeks to make such exercise;
(d) PROGENICS shall promptly furnish BMS with copies of all reports
it receives from Xxxxx-Xxxxxxxxx which relate to the subject of this Agreement;
(e) PROGENICS shall promptly furnish BMS with copies of all reports
PROGENICS furnishes to Xxxxx-Xxxxxxxxx which relate to the subject of this
Agreement, including without limitation all correspondence of any kind with
respect to the filing, prosecution or maintenance of the S-K Licensed Patents in
any jurisdiction;
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(f) PROGENICS shall promptly deliver to Xxxxx-Xxxxxxxxx'x patent
counsel all of BMS's comments with respect to the filing, prosecution or
maintenance of the S-K Licensed Patents in any jurisdiction, including without
limitation requests for filing for foreign protection, as if such comments were
comments of PROGENICS; and
(g) PROGENICS shall furnish to BMS copies of all notices received by
PROGENICS relating to alleged breaches or defaults by PROGENICS of its
obligations under the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement within three
business days of PROGENICS's receipt thereof and, provided that PROGENICS cannot
or chooses not to cure or otherwise resolve such alleged breaches or defaults,
PROGENICS shall allow BMS, in BMS's sole discretion, to cure or otherwise
resolve such alleged breaches or defaults in order to preserve BMS's rights
under this Agreement.
4. UPFRONT FEE; ROYALTY PAYMENTS.
4.1 Upfront Fee. As consideration to PROGENICS for the issuance of the
sublicense and other rights to BMS under this Agreement, BMS shall pay to
PROGENICS the sum of: [XXX]. Such up-front fee shall be paid upon the execution
of this Agreement by both Parties. Such sum shall be non-refundable.
4.2 Royalty Payments. As consideration to PROGENICS for the sublicense and
other rights granted to BMS under this Agreement, during the term of this
Agreement, BMS shall pay to PROGENICS a royalty on Net Sales of any S-K Product
commencing on the First Commercial Sale of such S-K Product by BMS, its
Affiliates or its Sub-sublicensees as follows:
(a) With respect to the GMK Vaccine:
(i) With respect to those countries in the Territory where
such S-K Product is covered by a Valid Claim in such countries:
(A) [XXX] of the Net Sales of such S-K Product in such
countries for any calendar year until royalties relating to
all S-K Products throughout the Territory in the amount of
[XXX] have accrued and are payable by BMS to PROGENICS in such
calendar year; and
(B) After royalties relating to all S-K Products
throughout the Territory in the amount of [XXX] have accrued
and are payable by
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BMS to PROGENICS in such calendar year, [XXX] of any further
Net Sales of such S-K Product in such countries until Net
Sales of such S-K Product throughout the Territory in such
calendar year equal [XXX]; and
(C) After Net Sales of such S-K Product throughout the
Territory in such calendar year exceed [XXX] of any further
Net Sales of such S-K Product in such countries until the end
of such calendar year.
(ii) With respect to those countries in the Territory where
such S-K Product is not covered by, or is no longer covered by, a Valid Claim in
such countries (unless such S-K Product has become a Generic Product in any such
country, in which case subparagraph (iii) below shall apply):
(A) [XXX] of the Net Sales of such S-K Product in such
countries for any calendar year until Net Sales of such S-K
Product throughout the Territory in such calendar year equal
[XXX]; and
(B) After Net Sales for such S-K Product throughout the
Territory in such calendar year exceed [XXX] of any further
Net Sales of such S-K Product in such countries until the end
of such calendar year.
(iii) With respect to those countries in the Territory where
such S-K Product is a Generic Product:
(A) [XXX] of the Net Sales of such S-K Product in such
countries for any calendar year until Net Sales of such S-K
Product throughout the Territory in such calendar year equal
[XXX]; and
(B) After Net Sales for such S-K Product throughout the
Territory in such calendar year exceed [XXX] of any further
Net Sales of such S-K Product in such countries until the end
of such calendar year.
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(iv) Royalties shall be paid at the royalty rates set forth in
Sections 4.2(a)(i)(A), 4.2(a)(ii)(A) and 4.2(a)(iii)(A) through the end of the
calendar quarter preceding the calendar quarter in which annual Net Sales in all
countries throughout the Territory first exceed [XXX] in any year; provided,
however, that in the calendar quarter in which royalties relating to all S-K
Products throughout the Territory in the aggregate amount of at least [XXX] have
accrued and are payable by BMS to PROGENICS for the calendar year, and in each
subsequent calendar quarter in that calendar year, royalties under Section
4.2(a)(i) shall be paid at the royalty rate set forth in Section 4.2(a)(i)(B) in
lieu of the royalty rate set forth in Section 4.2(a)(i)(A). Royalties shall be
paid at the royalty rates set forth in Sections 4.2(a)(i)(C), 4.2(a)(ii)(B) and
4.2(a)(iii)(B) for the calendar quarter in which annual Net Sales in all
countries throughout the Territory first exceed [XXX] in any year, and for each
calendar quarter in such year thereafter other than the last calendar quarter of
such year. Following the end of the last calendar quarter of each year, the
total amount of royalties actually due for such year shall be calculated as
provided in Section 4.2(a)(v), and such amount of royalties shall be paid,
reduced by the total amount of royalties paid with respect to such S-K Product
throughout the Territory for the first three calendar quarters of such year. The
calculation of the amount to be paid with respect to the fourth calendar quarter
of each year shall be included on the royalty report for such calendar quarter.
In the event that BMS has paid more royalties during the first three calendar
quarters of any year than BMS owes for the entire year, BMS shall be entitled to
a credit, equal to the amount of such excess royalties, paid, to be applied
against [XXX] of accrued royalties until the entire credit has been used.
(v) The total amount of royalties actually due for each year
under this Section 4.2(a) shall be calculated as follows:
(A) The royalty rate set forth in Section 4.2(a)(i)(A)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(1), x Y(1)/Z x [XXX]/W;
(B) The royalty rate set forth in Section 4.2(a)(i)(B)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(1) x Y(1)/Z x
[1-[XXX]/W];
(C) The royalty rate set forth in Section 4.2(a)(i)(C)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(2) x Y(1)/Z;
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(D) The royalty rate set forth in Section 4.2(a)(ii)(A)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(1) x Y(2)/Z;
(E) The royalty rate set forth in Section 4.2(a)(ii)(B)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(2) x Y(2)/Z;
(F) The royalty rate set forth in Section 4.2(a)(iii)(A)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(1) x Y(3)/Z; and
(G) The royalty rate set forth in Section 4.2(a)(iii)(B)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X(2) x Y(3)/Z;
Where:
W = the sum of the amount of the royalties that are
generated by the first [XXX] of Net Sales of each S-K
Product which have accrued and are payable by BMS to
PROGENICS for any calendar year with respect to each S-K
Product included in all S-K Products throughout the
Territory; provided that if the foregoing sum of
royalties is less than [XXX] then W shall equal [XXX]
X(1) = smaller of: (i) the actual annual Net Sales of such S-K
Product throughout the Territory for such year; or (ii)
[XXX]
X(2) = the actual annual Net Sales of such S-K Product
throughout the Territory for such year in excess of
[XXX]
Y(1) = the annual Net Sales of such S-K Product for such year
in all countries when Section 4.2(a)(i) applies
Y(2) = the annual Net Sales of such S-K Product for such year
in all countries when Section 4.2(a)(ii) applies
Y(3) = the annual Net Sales of such S-K Product for such year
in all countries when Section 4.2(a)(iii) applies
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Z = the annual Net Sales of such S-K Product for such year
in all countries in the Territory
(b) With respect to the MGV Vaccine and any other S-K
Products:
(i) With respect to those countries in the Territory where
such S-K Product is covered by a Valid Claim in such countries:
(A) [XXX] of the Net Sales of such S-K Product in such
countries for any calendar year until royalties relating to
all S-K Products throughout the Territory in the amount of
[XXX] have accrued and are payable by BMS to PROGENICS in such
calendar year; and
(B) After royalties relating to all S-K Products
throughout the Territory in the amount of [XXX] have accrued
and are payable by BMS to PROGENICS in such calendar year,
[XXX] of any further Net Sales of such S-K Product in such
countries until the end of such calendar year.
(ii) With respect to those countries in the Territory where
such S-K Product is not covered by, or is no longer covered by, a Valid Claim in
such countries (unless such S-K Product has become a Generic Product in any such
country, in which case subparagraph (iii) below shall apply), [XXX] of the Net
Sales of such S-K Product in such countries for any calendar year.
(iii) With respect to those countries in the Territory where
such S-K Product is a Generic Product, [XXX] of the Net Sales of such S-K
Product in such countries for any calendar year.
(iv) Royalties shall be paid at the royalty rate set forth in
Section 4.2(b)(i)(A) through the end of the calendar quarter preceding the
calendar quarter in which royalties relating to all S-K Products throughout the
Territory in the aggregate amount of at least [XXX] have accrued and are
payable by BMS to PROGENICS for the calendar year. Royalties shall be paid at
the royalty rate set forth in Section 4.2(b)(i)(B) for the calendar quarter in
which royalties relating to all S-K Products throughout the Territory in the
aggregate amount of at least [XXX] have accrued and are payable by BMS to
PROGENICS for the calendar year, and for each calendar quarter in such year
thereafter other than the last calendar quarter of such year. Following the end
of the last calendar quarter of each year, the total amount of royalties
-13-
actually due for such year shall be the aggregate of the amounts for the entire
year, calculated as provided in Sections 4.2(b)(ii), (iii) and (v), and such
amount of royalties shall be paid, reduced by the total amount of royalties paid
with respect to such S-K Product throughout the Territory for the first three
calendar quarters of such year. The calculation of the amount to be paid with
respect to the fourth calendar quarter of each year shall be included on the
royalty report for such calendar quarter. In the event that BMS has paid more
royalties during the first three calendar quarters of any year than BMS owes for
the entire year, BMS shall be entitled to a credit, equal to the amount of such
excess royalties paid, to be applied against [XXX] of accrued royalties until
the entire credit has been used.
(v) The total amount of royalties actually due for each year
under this Section 4.2(b)(i) shall be calculated as follows:
(A) The royalty rate set forth in Section 4.2(b)(i)(A)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X x [XXX]/W; and
(B) The royalty rate set forth in Section 4.2(b)(i)(B)
shall be applied to that amount of Net Sales of such S-K
Product determined under the formula X x [1-[XXX]/W];
Where:
W = the sum of the amount of the royalties that are
generated by the first [XXX] of Net Sales of each S-K
Product which have accrued and are payable by BMS to
PROGENICS for any calendar year with respect to each S-K
Product included in all S-K Products throughout the
Territory; provided that if the foregoing sum of
royalties is less than [XXX], then W shall equal [XXX]
X = the actual annual Net Sales of such S-K Product
throughout the Territory for such year
(c) The royalty rates applicable to S-K Products not covered by a
Valid Claim pursuant to Sections 4.2(a)(ii) and 4.2(b)(ii), respectively, shall
apply to Net Sales in any country commencing with the calendar quarter during
which such S-K Product is first not covered by a Valid Claim in such country.
(d) The royalty rates applicable to Generic Products pursuant to
Sections 4.2(a)(iii) and 4.2(b)(iii), respectively,
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shall apply to Net Sales in any country commencing with the calendar quarter
during which such S-K Product first becomes a Generic Product in such country.
4.3 Obligation to Pay Royalties. The obligation to pay royalties to
PROGENICS under Section 4.2 is imposed only once with respect to the same unit
of S-K Product regardless of the number of S-K Licensed Patents pertaining
thereto. BMS shall only be entitled to a credit against royalties or a reduction
of the royalty rate once with respect to any S-K Product in any country pursuant
to any provision in this Agreement. There shall be no obligation to pay
royalties to PROGENICS under Section 4.2 on sales of S-K Products among BMS, its
Affiliates and Sub-sublicensees, but in such instances the obligation to pay
royalties shall arise upon the sale by BMS, its Affiliates or Sub-sublicensees
to Third Parties. Payments due under Section 4.2 shall be deemed to accrue when
S-K Products are shipped or billed, whichever event shall first occur. In the
instance where BMS, its Affiliates or Sub-sublicensees use the S-K Product or
provide it as part of some other service or product, a royalty shall be due to
PROGENICS at the time such S-K Product is used or provided based on a Net Sales
amount equal to the price at which BMS or its Affiliate or Sub-sublicensee sell
such S-K Product to Third Parties in the country in which the S-K Product was
used or provided.
5. DILIGENCE OBLIGATIONS OF BMS.
5.1 Diligence Obligations. BMS shall use its best reasonable efforts to
develop and market S-K Product(s) for commercial sale and distribution
throughout the Territory pursuant to this Agreement, and to such end, BMS, its
Affiliates or its Sub-sublicensees shall achieve the following objectives in
accordance with the following schedule:
(i) [XXX].
(ii) [XXX].
The Parties acknowledge that, subject to certain limitations set forth in
Section 5.01 of the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, failure to
achieve these objectives shall entitle Xxxxx-Xxxxxxxxx to terminate the license
granted under the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement and, thereby, the
license granted under this Agreement. PROGENICS shall not unreasonably withhold
its consent to, and shall use all reasonable efforts to obtain the consent of
Xxxxx-Xxxxxxxxx to, any revision in the preceding schedule requested in writing
by BMS and supported by evidence of technical difficulties or delays in the
clinical studies or regulatory process that could not have been reasonably
-15-
avoided. Notwithstanding the foregoing, the Parties acknowledge that
Xxxxx-Xxxxxxxxx shall not have the right to terminate the license granted under
the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, and therefore PROGENICS shall
not have a right to terminate the license granted under this Agreement, for the
failure of BMS to meet a goal if such failure is a result of (i) causes beyond
BMS's direct control; (ii) Xxxxx-Xxxxxxxxx'x or PROGENICS's failure to meet its
obligations hereunder; (iii) infringement of Third Party patents; or (iv)
actions or inactions of a federal or state agency whose approval is required for
commercial sales.
The Parties further acknowledge and agree that the milestones contained in
this Section 5.1 were established on the assumption that the milestones would
apply to development of the GMK Vaccine. In the event that development of the
GMK Vaccine is terminated due to safety or efficacy reasons, the parties agree
that the milestones set forth in this Section 5.1 shall not apply and the
Parties will negotiate in good faith to establish new milestones.
6. PAYMENTS AND REPORTS.
6.1 Reports; Payments. Except as otherwise specifically provided in this
Agreement, all payments due under this Agreement shall be paid quarterly within
50 days after the end of each calendar quarter. Each such payment for running
royalties shall be accompanied by a statement, S-K Product-by-S-K Product and
country-by-country, of the amount of Net Sales during such quarter and the
amount of royalties due on such Net Sales and, with respect to the last calendar
quarter of each year, such report shall include the calculation of the
adjustments referred to in Sections 4.2(a)(iv) and 4.2(b)(iv).
6.2 Mode of Payment; Taxes. All payments due under this Agreement shall be
paid by wire transfer of funds to an account at PROGENICS's designated bank in
New York, New York, and shall be paid in U.S. Dollars, calculated at BMS's
customary internal corporate monthly exchange rates for the last month of the
calendar quarter for which remittance is made for royalties. Such payments shall
be free of any taxes, charges, or remittance fees, except for income tax levied
upon or required to be withheld and paid by BMS, its Affiliates or its
Sub-sublicensees for the account of PROGENICS. BMS shall provide PROGENICS
appropriate receipts of payment of such withholding taxes or other proof
thereof. For each month and each currency, BMS's customary internal corporate
monthly exchange rate shall equal the arithmetic average of the daily exchange
rates (obtained as described below) during the period from (i) the 20th day of
the preceding month (or, if such 20th day is not a business day, the immediately
preceding business day) through (ii) the 19th day of the current month (or, if
such 19th day is not a business day, the immediately preceding business day);
each daily exchange rate shall be obtained from the Reuters Daily Rate Report
-16-
or The Wall Street Journal, Eastern U.S. Edition, or, if not so available, as
furnished by BMS's local Affiliates.
6.3 Records Retention. BMS and its Affiliates and Sub-sublicensees shall
keep accurate records of all operations affecting payments hereunder, and shall
permit PROGENICS or its duly authorized agent to inspect all such records and to
make copies of or extracts from such records during regular business hours
throughout the term of this Agreement and for a reasonable period of not less
than three (3) years thereafter.
6.4 Audit Request. At the request and expense of PROGENICS, BMS and its
Affiliates and Sub-sublicensees shall permit PROGENICS or an independent,
certified public accountant appointed by PROGENICS and reasonably acceptable to
BMS, at reasonable times and upon reasonable notice, to examine those records as
may be necessary to: (i) determine the correctness of any report or payment made
under this Agreement; or (ii) obtain all information as to Net Sales and the
royalties payable for any calendar quarter. If an accountant is used, said
accountant shall not disclose to PROGENICS any information other than
information relating to said reports, royalties, and payments. Results of any
such examination shall be made available to both Parties.
6.5 Cost of Audit. PROGENICS shall bear the full cost of the performance
of any such audit except as hereinafter; set forth. If, as a result of any
inspection of the books and records of BMS, its Affiliates or its
Sub-sublicensees, it is shown that BMS's payments under this Agreement were less
than the amount which should have been paid, then BMS shall make all payments
required to be made to eliminate any discrepancy revealed by said inspection
within 30 days after PROGENICS's demand therefor, plus interest at the prime
rate from the date payment should have been made. Furthermore, if the payments
were less than the amount which should have been paid by an amount in excess of
five percent of the payments actually made during the period in question, BMS
shall also reimburse PROGENICS for the costs of such audit in addition to the
payment required to be made to eliminate any discrepancy.
6.6 No Non-Monetary Consideration for Sales. Without the prior written
consent of PROGENICS, BMS and its Affiliates and Sub-sublicensees shall not
accept or solicit any non-monetary consideration in the sale of S-K Products
other than as would be reflected in Net Sales. The use by BMS and its Affiliates
and Sub-sublicensees of commercially reasonable amounts of S-K Products for
clinical trials and promotional sampling shall not violate this provision.
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7. PATENT PROSECUTION; ENFORCEMENT; INFRINGEMENT.
7.1 Patent Prosecution. BMS acknowledges and agrees that the S-K Licensed
Patents will continue to be prosecuted (in the case of patent applications) and
maintained (in the case of patents) by Xxxxx-Xxxxxxxxx or PROGENICS. PROGENICS
agrees that the S-K Licensed Patents shall be prosecuted and/or maintained in
accordance with the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, and, to the
extent permitted thereunder, with diligence the same as or greater than is used
for PROGENICS's own patents and patent applications. To the extent that
PROGENICS has the right to do so, PROGENICS shall not permit any S-K Licensed
Patent to be abandoned.
7.2 Patent Costs. BMS shall, from time to time, upon invoice from
PROGENICS, promptly reimburse PROGENICS for all out-of-pocket costs and expenses
incurred in connection with the prosecution and maintenance of the S-K Licensed
Patents including amounts payable by PROGENICS to Xxxxx-Xxxxxxxxx therefor as
required by the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
7.3 Patent Enforcement.
(a) Each Party shall inform the other Party promptly in writing of
any alleged infringement of any S-K Licensed Patent by a third party of which it
shall have knowledge, and provide any available evidence of infringement.
(b) BMS acknowledges and agrees that PROGENICS shall have the right
to defend the S-K Licensed Patents against infringement or interference by other
parties in whole or in part in the S-K Field in any country in which an S-K
Licensed Patent is in effect hereunder, including by bringing any legal action
for infringement or defending any counterclaim of invalidity or action of a
third party for declaratory judgment of non-infringement or interference
(however, as between PROGENICS and BMS, BMS shall have the right, but not the
obligation, to prosecute at its own expense any infringement of the S-K Licensed
Patents in the S-K Field). Xxxxx-Xxxxxxxxx agrees to join as a party plaintiff
in any such lawsuit initiated by PROGENICS and to cooperate with PROGENICS in
PROGENICS's prosecution, if requested by PROGENICS, with all reasonable costs,
attorney fees, and expenses to be paid by PROGENICS.
(c) BMS acknowledges and agrees that, in the event that PROGENICS
shall undertake the enforcement of the S-K Licensed Patents by litigation,
PROGENICS may withhold [XXX] of the payments otherwise thereafter due
Xxxxx-Xxxxxxxxx and apply the same toward reimbursement of up to [XXX] of
PROGENICS's expenses, including reasonable attorneys' fees, in connection
therewith. Any recovery of damages by PROGENICS for each such suit shall be
applied first in satisfaction of any unreimbursed expenses and legal fees of
PROGENICS relating to such suit, and next toward reimbursement of
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Xxxxx-Xxxxxxxxx for any payments past due or withheld and applied pursuant to
Section 10 of the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement. The balance
remaining from any such recovery shall be retained by PROGENICS. (As between BMS
and PROGENICS, from the remaining balance, BMS shall be entitled to
reimbursement of expenses incurred by BMS in connection with such suit, and the
balance remaining from any such recovery shall be divided as follows: [XXX] to
BMS and the remaining [XXX] to PROGENICS.)
(d) BMS acknowledges and agrees that, under the Xxxxx-Xxxxxxxxx
License Agreement, if PROGENICS does not institute suit for infringements within
90 days of receipt of written notice from Xxxxx-Xxxxxxxxx of Xxxxx-Xxxxxxxxx'x
desire to bring suit for infringement in its own name and on its own behalf,
then Xxxxx-Xxxxxxxxx may, at its own expense, bring suit or take any other
appropriate action. [XXX] shall be entitled to recovery of damages resulting
from any lawsuit brought by [XXX] to enforce any S-K Licensed Patent, pursuant
to Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
(e) BMS acknowledges that the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement also provides that neither party may settle with any infringer without
the prior approval of the other party if such settlement would affect the rights
of the other party under the S-K Licensed Patents. (As between PROGENICS and
BMS, PROGENICS agrees to defer to BMS any reasonable objection that BMS may have
to any such settlement, consent judgment or final disposition.)
7.4 Infringement Action by Third Parties.
(a) Each Party shall promptly notify the other in writing in the
event that a third party shall bring a claim of infringement against either
Party, either in the United States or in any foreign country in which there is
an S-K Licensed Patent.
(b) BMS acknowledges and agrees that PROGENICS, in its own name and
at its sole expense, shall have the first right to defend the S-K Licensed
Patents and may compromise, settle or otherwise pursue such defense in such a
manner and on such terms as PROGENICS shall see fit. (However, as between
PROGENICS and BMS, BMS shall have the first right, but not the obligation, to
defend, at its own expense, the S-K Licensed Patents in the S-K Field.)
(c) BMS acknowledges and agrees that, in the event that PROGENICS
shall undertake such defense, PROGENICS may withhold [XXX] of the payments
otherwise thereafter due Xxxxx-Xxxxxxxxx and apply the same toward reimbursement
of PROGENICS's expenses, including reasonable attorneys' fees, in connection
therewith. Any recovery of damages by PROGENICS for each such suit shall be
applied first in satisfaction of any unreimbursed expenses and legal fees of
PROGENICS relating to such suit, and next toward
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reimbursement of Xxxxx-Xxxxxxxxx for any payments past due or withheld and
applied pursuant to Section 10 of the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement. The balance remaining from any such recovery shall be retained by
PROGENICS.
8. TERM: TERMINATION.
8.1 Term. This Agreement shall commence as of the Effective Date of this
Agreement and, unless sooner terminated as provided hereunder, shall terminate
upon the expiration of the last to expire of the S-K Licensed Patents included
herein, or upon the abandonment of the last to be abandoned of any patent
applications included herein, or 15 years from the date of the First Commercial
Sale, whichever is later, unless the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement
is sooner terminated, pursuant to the terms thereof.
8.2 Acknowledgment of Termination Rights Under Xxxxx-Xxxxxxxxx/PROGENICS
License Agreement. BMS acknowledges that: (i) subject to Section 3.3 of this
Agreement, PROGENICS has certain rights to terminate the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement pursuant to Sections 9.01 and 9.04
thereof; and (ii) Xxxxx-Xxxxxxxxx and, subject to Section 3.3 of this Agreement,
PROGENICS have certain rights to terminate the Xxxxx-Xxxxxxxxx/PROGENICS License
Agreement upon the default, bankruptcy, insolvency or similar such event of the
other party, pursuant to Section 9.02 thereof.
8.3 Breach by Either Party. Failure by either Party to comply with any of
the material obligations of such Party contained in this Agreement shall entitle
the other Party to give notice to the defaulting Party specifying the nature of
the default and requiring it to cure such default. If such default is not cured
within 60 days after the receipt of such notice (or, if such default cannot be
cured within such 60-day period, if the defaulting Party does not commence and
diligently continue actions to cure such default), the other Party shall be
entitled, without prejudice to any of its other rights conferred on it by this
Agreement, in addition to any other remedies available to it by law or in
equity, to terminate this Agreement by giving written notice to take effect
immediately. The right to terminate this Agreement, as hereinabove provided,
shall not be affected in any way by the other Party's waiver or failure to take
action with respect to any previous default.
8.4 Effect of Termination.
(a) Following termination of this Agreement pursuant to Section 8.1,
BMS shall have the right to manufacture, have manufactured, use, sell, have
sold, and develop S-K Products without further obligations to PROGENICS
hereunder.
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(b) Upon termination of this Agreement in its entirety for any
reason other than expiration of this Agreement pursuant to Section 8.1, BMS
shall promptly: (1) return to PROGENICS, at BMS's expense, all relevant data and
other information concerning the S-K Licensed Patents and S-K Technical
Information in the possession or control of BMS, its Affiliates and
Sub-sublicensees; (2) transfer, at BMS's expense, to PROGENICS or such other
Person, as PROGENICS shall designate, any and all rights that it may have under
any government registrations or authorizations in any country in the Territory
with respect to the S-K Products; (3) cancel, at BMS's expense, any government
registrations or authorizations with respect to the S-K Products as may not be
transferable; (4) provide to PROGENICS, at BMS's expense, all data and other
information in BMS's, or its Affiliates' or Sub-sublicensees', possession or
control relating to such governmental registrations or authorities in any
country in the Territory with respect to all S-K Products; and (5) discontinue
all manufacture, use, sale and distribution of all S-K Products and the use of
the S-K Licensed Patents and S-K Technical Information in connection therewith.
All rights granted to BMS under this Agreement shall revert to PROGENICS.
8.5 Right to Sell Stock on Hand. If BMS is not in material breach of this
Agreement at the time of termination of this Agreement, then BMS shall have the
right for one year thereafter to dispose of all S-K Products then in its
inventory, and shall pay royalties thereon, in accordance with the provisions of
this Agreement, as though this Agreement had not terminated.
8.6 Termination of Sublicenses. Upon any termination of this Agreement,
all sublicenses granted by BMS under this Agreement shall terminate
simultaneously, subject, nevertheless, to Section 8.5.
8.7 Accrued Rights; Surviving Obligations.
(a) Termination, relinquishment or expiration of this Agreement for
any reason shall be without prejudice to any rights which shall have accrued to
the benefit of either Party prior to such termination, relinquishment or
expiration. Such termination, relinquishment or expiration shall not relieve
either Party from obligations which are expressly indicated to survive
termination or expiration of this Agreement.
(b) Termination of this Agreement shall not terminate BMS's
obligation to pay the royalties for S-K Products which has been sold under this
Agreement. All of the Parties' rights and obligations under Sections 1, 6,
7.3(b), (c) and (d), 7.4 (solely with respect to actions in existence at the
time of termination), 8.4, 8.5, 10.5, 10.6, 10.11, 10.15 and 10.16 shall survive
termination.
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9. ASSIGNABILITY.
9.1 Non-Assignability. The Parties agree that this Agreement imposes
personal obligations on BMS. BMS shall not assign any rights under this
Agreement not specifically transferable by its terms (other than to an
Affiliate). PROGENICS may not assign its rights hereunder (other than to any
assignee of all or substantially all of its business, which assignee has
previously agreed to be bound by all of the terms and conditions of this
Agreement). Any purported assignment not in accordance with this Section 9.1
shall be ineffective.
9.2 Assignability. BMS acknowledges that Xxxxx-Xxxxxxxxx may assign its
rights under the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, but not to a
competitor of PROGENICS.
10. MISCELLANEOUS.
10.1 Relationship of Parties. Nothing in this Agreement is intended or
shall be deemed to constitute a partnership, agency, employer-employee or joint
venture relationship between the Parties. No Party shall incur any debts or make
any commitments for the other, except to the extent, if at all, specifically
provided herein.
10.2 Force Majeure. Neither Party shall be liable to the other for loss or
damages or shall have any right to terminate this Agreement for any default or
delay attributable to any act of God, flood, fire, explosion, strike, lockout,
labor dispute, shortage of raw materials, casualty or accident, war, revolution,
civil commotion, act of public enemies, blockage or embargo, injunction, law,
order, proclamation, regulation, ordinance, demand or requirement of any
government or subdivision, authority or representative of any such government,
or any other cause beyond the reasonable control of such Party, if the Party
affected shall give prompt notice of any such cause to the other Party. The
Party giving such notice shall thereupon be excused from such of its obligations
hereunder as it is thereby disabled from performing for so long as it is so
disabled and for 30 days thereafter. Notwithstanding the foregoing, nothing in
this Section 10.2 shall excuse or suspend the obligation to make any payment due
hereunder in the manner and at the time provided.
10.3 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
10.4 Notice. Any notice or request required or permitted to be given
under or in connection with this Agreement shall be deemed to have been
sufficiently given if in writing and personally
-22-
delivered by messenger, facsimile transmission (receipt verified), express
courier service (signature required), or telegram, prepaid, to the Party for
which such notice is intended, at the address set forth for such Party below:
(a) In the case of PROGENICS, to:
Progenics Pharmaceuticals, Inc.
000 Xxx Xxx Xxxx Xxxxx Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
Attention: Xx. Xxxx Xxxxxx
Facsimile No.: (000) 000-0000
(b) In the case of BMS, to:
Xxxxxxx-Xxxxx Squibb Company
X.X. Xxx 0000
Xxxxx 000 & Province Line Road
Princeton, New Jersey 08543-4000
Attention: Vice President and Senior
Counsel, Pharmaceutical Research
Institute, and Worldwide Franchise
Management and Strategic Business
Development
Facsimile No.: (000) 000-0000
(c) In the case of Xxxxx-Xxxxxxxxx, to:
Xxxxx-Xxxxxxxxx Institute for Cancer Research
0000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Senior Vice President, Research
Resources Management
Facsimile No.: (000) 000-0000
or to such other address for such Party as it shall have specified by like
notice to the other Party, provided that notices of a change of address shall be
effective only upon receipt thereof. If sent by messenger, facsimile
transmission, express courier service, or telegram, the date of mailing or
transmission shall be deemed to be the date on which such notice or request has
been given.
10.5 Use of Name. Except as otherwise provided herein, neither Party shall
have any right, express or implied, to use in any manner the name or other
designation of, or otherwise refer to, the other Party (and, in the case of BMS,
Xxxxx-Xxxxxxxxx or any organization related to Xxxxx-Xxxxxxxxx), or any other
trade name or trademark of the other Party, for any purpose in connection with
the performance of this Agreement, without the written approval of the other
Party or Xxxxx-Xxxxxxxxx, as the case may be, except that BMS may make
statements to the effect that (i) it is sublicensed by PROGENICS, pursuant to
this Agreement and further pursuant to the
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Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, under the S-K Licensed Patents, and
(ii) Xxxx X. Xxxxxxxx, M.D., Xxxxxx X. Xxxxxxxxxx, M.D. and Xxxxx X. Xxxxxxxxxx,
M.D., Ph.D. are staff of Xxxxx-Xxxxxxxxx and there is a relationship between
these individuals and PROGENICS. It is understood that the other Party or
Xxxxx-Xxxxxxxxx, as the case may be, shall respond to any request for the use of
such name or the making of such reference within 14 days after the receipt of
such request.
10.6 Non-Solicitation. BMS shall not hire as board members or employees
any of [xxx] without first obtaining Xxxxx-Xxxxxxxxx'x prior written
consent.
10.7 Marking. BMS, its Affiliates and its Sub-sublicensees shall place in
a conspicuous location on S-K Products that would infringe S-K Licensed Patents
but for this Agreement and the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, a
patent notice in accordance with 35 U.S.C. ss. 282. BMS agrees to xxxx, and to
cause its Affiliates and its Sub-sublicensees to xxxx, any products made using a
process covered by any S-K Licensed Patent with the number of each such patent
and, with respect to such S-K Licensed Patents, to respond to any request for
disclosure under 35 U.S.C. ss.287 (b)(4)(B) by only notifying PROGENICS of the
request for disclosure.
10.8 Costs and Expenses. Except as otherwise expressly provided in this
Agreement, each Party shall bear all costs and expenses associated with the
performance of such Party's obligations under this Agreement.
10.9 Manufacture in United States. S-K Product(s) used, sold, leased, or
transferred within the United States shall be manufactured substantially in the
United States.
10.10 Waiver. A waiver by either Party of any of the terms and conditions
of this Agreement in any instance shall not be deemed or construed to be a
waiver of such term or condition for the future, or of any subsequent breach
hereof. All rights, remedies, undertakings, obligations and agreements contained
in this Agreement shall be cumulative and none of them shall be in limitation of
any other remedy, right, undertaking, obligation or agreement of either Party.
10.11 Compliance with Law.
(a) BMS agrees to comply with the laws and rules of the Government
regarding prohibition of exportation of S-K Technical Information furnished to
BMS either directly or indirectly by PROGENICS or Xxxxx-Xxxxxxxxx.
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(b) BMS, its Affiliates and its Sub-sublicensees shall comply upon
reasonable notice from PROGENICS or Xxxxx-Xxxxxxxxx with all governmental
requests directed to PROGENICS or Xxxxx-Xxxxxxxxx and provide all information
and assistance necessary to comply with the governmental requests.
10.12 Severability. When possible, each provision of this Agreement will
be interpreted in such manner as to be effective and valid under applicable law,
but if any provision of this Agreement is held to be prohibited by or invalid
under applicable law, such provision will be ineffective only to the extent of
such prohibition or invalidity, without invalidating the remainder of this
Agreement.
10.13 Amendment. No amendment, modification or supplement of any
provisions of this Agreement shall be valid or effective unless made in writing
and signed by a duly authorized officer of each Party.
10.14 Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
(a) This Agreement shall automatically be modified, in whole or in
part, upon any modification, in whole or in part, of the
Xxxxx-Xxxxxxxxx/PROGENICS License Agreement, if and to the extent that such
modification is relevant and affects the terms of this Agreement. Such
modification of this Agreement shall be consistent with and reflect the
modification of the Xxxxx-Xxxxxxxxx/PROGENICS License Agreement.
(b) The Parties acknowledge and agree that Sections 1, 3.1, 6.3,
7.3(a), 7.3(c), 7.3(d), 8.1, 8.2, 8.7, 9, 10.5, 10.6, 10.7, 10.11(a) and 10.15
of this Agreement have been included herein in satisfaction of Section 6.02 of
the Xxxxx-Xxxxxxxxx License Agreement. BMS acknowledges and agrees that
Xxxxx-Xxxxxxxxx shall be a third party beneficiary under this Agreement with
respect to the foregoing sections.
10.15 Governing Law. This Agreement shall be governed by and interpreted
in accordance with the laws of the State of New York without regard to its
choice of law principles.
10.16 Arbitration. Any dispute arising out of or relating to any
provisions of this Agreement shall be finally settled by arbitration to be held
in New York, New York, under the auspices and then current commercial
arbitration rules of the American Arbitration Association. Such arbitration
shall be conducted by three (3) arbitrators appointed according to said rules.
Judgment upon any award rendered may be entered in any court having
jurisdiction, or application may be made to such court for a judicial acceptance
of the award and an order of enforcement, as the case may be.
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10.17 Counterparts. This Agreement may be executed simultaneously in any
number of counterparts, any one of which need not contain the signature of more
than one Party but all such counterparts taken together shall constitute one and
the same agreement.
10.18 Descriptive Headings. The descriptive headings of this Agreement
are for convenience only, and shall be of no force or effect in construing or
interpreting any of the provisions of this Agreement.
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed and delivered by its duly authorized officer as of the day and year
first above written.
PROGENICS PHARMACEUTICALS, INC.
By: /s/ Xxxx X. Xxxxxx
--------------------------------
Name: Xxxx X. Xxxxxx, M.D., Ph.D.
Title: Chairman and Chief
Executive Officer
XXXXXXX-XXXXX SQUIBB COMPANY
By: /s/ Xxxxxxx Xxxxxxx
--------------------------------
Name: Xxxxxxx Xxxxxxx
------------------------------
Title: Vice President
-----------------------------
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EXHIBIT A
S-K LICENSED PATENTS
Application or Patent Number Filing or Issue Date
---------------------------- --------------------
[XXX] [XXX]
