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EXHIBIT 99.2
ARIAD PHARMACEUTICALS, INC. HAS OMITTED FROM THIS EXHIBIT 99.2 PORTIONS OF THE
AGREEMENT FOR WHICH ARIAD PHARMACEUTICALS, INC. HAS REQUESTED CONFIDENTIAL
TREATMENT FROM THE SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE
AGREEMENT FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED WITH
BRACKETS AND AN ASTERISK AND SUCH CONFIDENTIAL PORTIONS HAVE BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
RESTRUCTURING AGREEMENT
(SRC RESEARCH AND DEVELOPMENT PROGRAM)
THIS SRC RESTRUCTURING AGREEMENT (this "Agreement") is entered into this
31st day of December, 1999, by and between HOECHST XXXXXX XXXXXXX (France), a
stock company formed under the laws of France ("HMR S.A."), and ARIAD
PHARMACEUTICALS, INC., a Delaware corporation ("ARIAD").
W I T N E S S E T H:
WHEREAS, HMR S.A., as successor in interest to Xxxxxxx Uclaf S.A., a
French corporation, and ARIAD are parties to that certain Collaborative Research
and License Agreement dated as of November 6, 1995 (the "RU Agreement"); and
WHEREAS, HMR S.A. and ARIAD have been engaged in the Research and
Development Program;
WHEREAS, the parties have decided that it is in their respective best
interests to restructure their relationship regarding the Research and
Development Program and to terminate the RU Agreement; and
WHEREAS, Aventis Pharmaceuticals Inc., a Delaware corporation (formerly
known as Hoechst Xxxxxx Xxxxxxx, Inc.), and ARIAD have simultaneously herewith
entered into that certain Restructuring Agreement (the "Restructuring
Agreement"), which provides for, among other things, the restructuring of the
transactions related to the formation and operation of the Hoechst-ARIAD
Genomics Center, LLC.
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
and for other good and valuable consideration, the parties hereto, intending to
be legally bound, hereby agree as follows:
1. DEFINITIONS. Unless otherwise provided herein, all capitalized terms
used herein shall have the meanings set forth on SCHEDULE 1 hereto.
2. ASSIGNMENT AND ASSUMPTION OF ARIAD OWNED TECHNOLOGY, JOINT
TECHNOLOGY AND XXXXXXX OWNED TECHNOLOGY. As of the Effective Time, HMR S.A.
hereby sells, assigns
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and transfers to ARIAD all of its right, title and interest in and to, and ARIAD
hereby accepts such sale, assignment and transfer of, ARIAD Owned Technology (if
any), Joint Technology and XXXXXXX Owned Technology (as such terms are defined
in Schedule 1), each as in existence as of the Effective Time, and including
without limitation the Joint Technology and XXXXXXX Owned Technology listed on
SCHEDULE 2 hereto (collectively, the "Assigned Technology"). To the best of HMR
S.A.'s knowledge, Schedule 2 contains a true and complete list of all patent
applications and patents claiming any element of the Joint Technology or XXXXXXX
Owned Technology.
[*]
In furtherance of the foregoing, the Assigned Technology
[*]
does and shall grant
[*]
provided, however, that
[*]
set
forth in this sentence, and the right to
[*]
.
3. TANGIBLE MATERIALS. In furtherance of the provisions of Section 2
hereof, HMR S.A. will deliver to ARIAD, no later than January 31, 2000, such
manuals, standard operating procedures, assay methods, process descriptions and
the like, and all other tangible materials (including without limitation copies
of research results and other records, copies of relevant portions of laboratory
notebooks, biological materials and chemical materials) that are ARIAD
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Owned Technology, Joint Technology or XXXXXXX Owned Technology), including
without limitation the items listed on SCHEDULE 3 hereto (collectively, the
"Tangible Materials"); provided, however, that a reasonable additional period of
time shall be permitted for the delivery as promptly as practicable to ARIAD of
Tangible Materials relating to the deconvolution of certain libraries.
4. UNDERTAKINGS.
(a) In furtherance of the provisions of Sections 2 and 3 hereof,
designated representatives of HMR S.A. and its Affiliates shall meet with
designated representatives of ARIAD at the location in France and on the dates
set forth on Schedule 4 hereof, at which meeting HMR S.A. shall review and
discuss with ARIAD the status of the Research and Development Program as
concluded as of the Effective Time and the Assigned Technology. The identities
of the persons who will attend such meeting on behalf of HMR S.A. and its
Affiliates, and on behalf of ARIAD, are set forth on Schedule 4.
(b) After transferring all Assigned Technology (including Tangible
Materials) to ARIAD, HMR S.A. shall, as soon as practicable after the Effective
Time and subject to the proviso in the last sentence of Section 11(b) hereto,
take all steps necessary to destroy, delete and/or remove all data and
information relating to Compounds (including screening of such Compounds), the
Research and Development Program and the Assigned Technology, whether the same
is in written form or in electronic form and contained in the computers,
databases and other electronic media of HMR S.A. and its Affiliates and
successors, to the extent that the isolation and destruction, deletion and/or
removal of such data and information is feasible. Notwithstanding anything to
the contrary contained in this Agreement, (i) HMR S.A. and its Affiliates shall
be entitled to retain and use copies of publicly available materials, and (ii)
patent counsel for HMR S.A. and its Affiliates shall be entitled to retain and
use copies of data and information relating to Assigned Technology applicable
to, and for the sole purpose of, supporting the patentability, including without
limitation the utility or industrial applicability, of Compounds, compounds and
methods of HMR S.A. or its Affiliates, described on Schedule 2; it being
understood that access by HMR S.A. and its Affiliates to the data and
information relating to the Assigned Technology for the purposes described in
clause (ii) of this sentence is strictly limited to inventors and in-house and
outside patent counsel for HMR S.A. and its Affiliates.
(c) After the Effective Time, ARIAD shall undertake and assume all
costs and expenses associated with the Assigned Technology, including without
limitation those related to prosecution of patent rights (except as set forth in
Schedule 2), but only to the extent such costs and expenses relate to its
ownership or actions, events or omissions occurring after the Effective Time.
HMR S.A. shall have no responsibility for costs and expenses relating to the
Assigned Technology (except as set forth on Schedule 2) or to ARIAD's possession
of, or actions, events or omissions associated with, the Assigned Technology
occurring after the Effective Time. Except as provided in the RU Agreement,
ARIAD shall have no responsibility for costs and expenses relating to the
Assigned Technology or to HMR S.A.'s or its Affiliates' possession of, or
actions, events or omissions associated with, the Assigned Technology occurring
prior to the Effective Time.
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(d) Except as set forth in Section 4(b) hereof, HMR S.A.
acknowledges and agrees that neither it nor any of its Affiliates shall use any
Assigned Technology for any purpose following the Closing.
5. TERMINATION OF RU AGREEMENT. As of the Effective Time, the RU
Agreement shall be terminated in its entirety (including, without limitation,
any survival provisions) and, notwithstanding anything in the RU Agreement to
the contrary, the parties shall have no rights or obligations thereunder.
6. CONSIDERATION.
(a) ONE-TIME PAYMENT UPON [*]. In the event that ARIAD shall enter
into any transaction with a third party, which transaction will provide such
third party directly or indirectly with rights to [*], ARIAD shall,
[*]
. For purposes of clarification,
[*]
.
(b) MILESTONES. ARIAD shall, [*] days following the occurrence of
the triggering event, pay to HMR S.A. the following milestone payments with
respect to
[*]
:
(i)
[*]
; and
(ii)
[*]
.
(c) FURTHER PAYMENTS.
(i) Until such time as the condition in Section 6(e) hereof
is achieved, ARIAD shall pay HMR S.A.:
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(A) an amount based on the [*] equal to [*] actually received by
ARIAD or any of its Affiliates in each Fiscal Year;
(B) an amount based on [*] equal to [*] actually received by ARIAD
or any of its Affiliates in each such Fiscal Year;
(C) an amount based on [*] equal to [*] actually received by ARIAD
or any of its Affiliates in each Fiscal Year; and
(D) an amount equal to [*] actually received by ARIAD or any of
its Affiliates with respect to [*], as the case may be, by
licensees of ARIAD or any of its Affiliates in each Fiscal
Year; provided, however, that the amounts payable by ARIAD to
HMR S.A. in each Fiscal Year under the preceding clause (D)
shall be:
(x) [*] by licensees of ARIAD or any of its Affiliates of
[*];
(y) [*] by licensees of ARIAD or any of its Affiliates of
[*]; and
(z) [*] by licensees of ARIAD or any of its
Affiliates of [*].
In furtherance of the foregoing and for purposes of clarification, if a product
is
[*]
then, unless (i) such product is
[*]
or (ii)
[*]
the payment on the [*] shall be calculated using the
[*]
.
(ii) Such amounts shall be paid by ARIAD within ninety (90) days
after the end of each Fiscal Quarter in which Net Sales are made by ARIAD or any
of its Affiliates or payments from licensees are received. Such payments shall
be accompanied by a report showing the quantity and Net Sales of each Human
Therapeutic Product or Human Therapeutic Non-Field Product sold by ARIAD or any
Affiliate or licensee in each country and a calculation of the amount due
pursuant to this Section 6(c).
(iii) ARIAD and its Affiliates shall keep, and shall cause its
licensees to keep, for five (5) years from the date of each such payment
complete and accurate records of
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sales by ARIAD and its Affiliates and licensees of each Human Therapeutic
Product or Human Therapeutic Non-Field Product in sufficient detail to allow the
accruing of such payments to be determined accurately. HMR S.A. will have the
right for a period of three (3) years after receiving any report or statement
with respect to payments due and payable to appoint at its expense an
independent certified public accountant reasonably acceptable to ARIAD to
inspect the relevant records of ARIAD and its Affiliates to verify such report
or statement. ARIAD and its Affiliates shall each make its records available for
inspection by such independent certified public accountant during regular
business hours at such place or places where such records are customarily kept,
upon reasonable notice from HMR S.A., solely to verify the accuracy of the
reports and payments. At the written request of HMR S.A., and as part of the
exercise by HMR S.A. of the aforesaid right to inspect the records of ARIAD and
its Affiliates, ARIAD will exercise its rights to inspect the records of its
licensees (and ARIAD will ensure that its agreements with its licensees permit
such inspection) and provide HMR S.A. with the results of such inspection. Such
inspection right shall not be exercised more than once in any calendar year nor
more than once with respect to sales of any Human Therapeutic Product or Human
Therapeutic Non-Field Product in any given period. HMR S.A. agrees to hold in
strict confidence all information concerning such payments and reports, and all
information learned in the course of any audit or inspection, except to the
extent necessary for HMR S.A. to reveal such information in order to enforce its
rights under this Agreement or if disclosure is required by law. The results of
each inspection, if any, shall be binding on both parties. HMR S.A. shall pay
for such inspections, except that in the event that there is any upward
adjustment in aggregate amounts payable for any Fiscal Year shown by such
inspection of more than two percent (2%) of the amount paid, ARIAD shall pay for
such inspection.
(d) LATE PAYMENTS. Payments not made within the time periods set
forth in Sections 6(a), 6(b) and 6(c) hereof, respectively, shall bear interest
at a rate of the lesser of (i) one percent (1%) per month and (ii) the maximum
rate allowed under applicable law, from the due date until paid in full.
(e) MAXIMUM PAYMENTS. The maximum aggregate amount of payments due
by ARIAD to HMR S.A. pursuant to Sections 6(b) and 6(c) hereof shall be
[*]
by ARIAD and its Affiliates and licensees.
7. DISCLAIMER. EXCEPT AS OTHERWISE PROVIDED IN SECTIONS 9(f) AND 9(g)
OF THIS AGREEMENT, HMR S.A. MAKES NO WARRANTIES OR REPRESENTATIONS OR WARRANTIES
WHATSOEVER, WHETHER EXPRESSED OR IMPLIED, IN RESPECT OF THE ASSIGNED TECHNOLOGY
OR ARIAD'S ABILITY TO PURSUE RESEARCH, DEVELOPMENT OR COMMERCIALIZATION
ACTIVITIES WITH RESPECT TO THE ASSIGNED TECHNOLOGY AND HEREBY DISCLAIMS
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF OTHERS WITH RESPECT TO
ANY AND ALL OF THE FOREGOING.
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8. INDEMNIFICATION. ARIAD shall indemnify, defend and hold harmless HMR
S.A., its Affiliates and their respective directors, officers, employees and
agents, and their respective successors, heirs and assigns (the "HMR S.A.
Indemnitees"), against any liability, damage, loss or expense (including
reasonable attorneys' fees and expenses of litigation) incurred by or imposed
upon the HMR S.A. Indemnitees, or any one of them, in connection with any
claims, suits, actions, demands or judgments of third parties, including,
without limitation, personal injury and product liability matters (except in
cases where such claims, suits, actions, demands or judgments result from the
gross negligence or willful misconduct on the part of HMR S.A.) arising out of
the development, testing, production, manufacture, promotion, import, sale or
use by any person of any Human Therapeutic Product or Human Therapeutic
Non-Field Product which is manufactured or sold by ARIAD, or by an Affiliate,
licensee, distributor or agent of ARIAD.
9. REPRESENTATIONS AND WARRANTIES OF HMR S.A. As of the Effective Time,
HMR S.A. hereby represents and warrants to ARIAD as follows:
(a) ORGANIZATION. HMR S.A. is a corporation duly organized,
validly existing and in good standing under the laws of France.
(b) AUTHORIZATION. The execution, delivery and performance by HMR
S.A. of this Agreement have been duly authorized by all necessary corporate
action and do not and will not (i) require any consent or approval of its
stockholders or (ii) violate any provision of any law, rule, regulation, order,
writ, judgment, injunction, decree, determination or award presently in effect
having applicability to it or any provision of its charter documents.
(c) BINDING AGREEMENT. This Agreement is a legal, valid and
binding obligation of HMR S.A. enforceable against it in accordance with its
terms.
(d) NO INCONSISTENT OBLIGATIONS. HMR S.A. is not under any
obligation to any person, entity, contractual or otherwise, that is materially
conflicting or materially inconsistent in any respect with the terms of this
Agreement or that would materially impede the diligent and complete fulfillment
of its obligations.
(e) CONSENTS. No consent of any natural person, corporation,
partnership, proprietorship, association, trust or other legal entity is
required to be obtained by HMR S.A. to the execution, delivery and performance
of this Agreement or the consummation of the transactions contemplated hereby,
including without limitation, consents to the assignment of the Assigned
Technology.
(f) LITIGATION OR ADMINISTRATIVE PROCEEDINGS. There is no action,
suit, proceeding, investigation, or arbitration pending before any court,
arbitration panel or other governmental or regulatory body or, to HMR S.A.'s
knowledge, threatened relating to the Assigned Technology. To HMR S.A.'s
knowledge, HMR S.A. has not received any notice alleging infringement of the
rights of any third party relating to HMR S.A.'s use of the Assigned Technology.
HMR S.A. has not made any regulatory filings with the U.S. Food and Drug
Administration, or a governmental
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agency of any other country serving the same function, relating to any aspect of
the Assigned Technology or the testing thereof.
(g) DISCLOSURE. HMR S.A. represents and warrants that no
representation or warranty of HMR S.A. contained in this Agreement and no
information contained in any schedule hereto contains or will contain any untrue
statement of a material fact.
10. REPRESENTATIONS AND WARRANTIES OF ARIAD. As of the Effective Time,
ARIAD hereby represents and warrants to HMR S.A. as follows:
(a) ORGANIZATION. ARIAD is a corporation duly organized, validly
existing and in good standing under the laws of State of Delaware.
(b) AUTHORIZATION. The execution, delivery and performance by
ARIAD of this Agreement have been duly authorized by all necessary corporate
action and do not and will not (i) require any consent or approval of its
stockholders or (ii) violate any provision of any law, rule, regulation, order,
writ, judgment, injunction, decree, determination or award presently in effect
having applicable to it or any provision of its charter documents.
(c) BINDING AGREEMENT. This Agreement is a legal, valid and
binding obligation of ARIAD enforceable against it in accordance with its terms.
(d) NO INCONSISTENT OBLIGATIONS. ARIAD is not under any obligation
to any person, entity, contractual or otherwise, that is materially conflicting
or materially inconsistent in any respect with the terms of this Agreement or
that would materially impede the diligent and complete fulfillment of its
obligations.
11. CONFIDENTIALITY.
(a) ARIAD and HMR S.A. each recognize that the other party's
Confidential Information constitutes highly valuable and proprietary
confidential information. ARIAD and HMR S.A. each agree that for five (5) years
from the date of this Agreement, it will keep confidential, and will cause its
employees, consultants, Affiliates and licensees and sublicensees to keep
confidential, all Confidential Information of the other party that is disclosed
to it, or to any of its employees, consultants, Affiliates and licensees and
sublicensees, pursuant to or in connection with this Agreement. Neither ARIAD
nor HMR S.A. nor any of their respective employees, consultants, Affiliates and
licensees and sublicensees shall use Confidential Information of the other party
for any purpose whatsoever except as expressly permitted in this Agreement.
Without limiting the generality of the foregoing, neither ARIAD nor HMR S.A. nor
any of their respective employees, consultants, Affiliates and licensees and
sublicensees shall use Confidential Information of the other party to invalidate
or challenge any patent, issued or pending, of such other party, its Affiliates
or successors, except in the defense of a legal or administrative action brought
by such other party, its Affiliates or successors and, in such case, only to the
extent that such Confidential Information is produced pursuant to a discovery
request (prepared without any use of Confidential Information), an order of a
court of competent jurisdiction or by similar judicial, administrative or
governmental action.
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(b) ARIAD and HMR S.A. each agree that any disclosure of the other
party's Confidential Information to any officer, employee, consultant or agent
of the other party or of any of its Affiliates and licensees and sublicensees
shall be made only if and to the extent necessary to carry out its rights and
responsibilities under this Agreement, shall be limited to the maximum extent
possible consistent with such rights and responsibilities and shall only be made
to persons who are bound by written confidentiality obligations to maintain the
confidentiality thereof and not to use such Confidential Information except as
expressly permitted by this Agreement. ARIAD and HMR S.A. each agree not to
disclose the other party's Confidential Information to any third parties under
any circumstance without the prior written approval from the other party (such
approval not to be unreasonably withheld), except as required in any application
for regulatory approval for testing, manufacture or sale of a Human Therapeutic
Product or Human Therapeutic Non-Field Product subject to this Agreement, or as
otherwise required by law, and except as otherwise expressly permitted by this
Agreement. Each party shall take such action, and shall cause its Affiliates and
licensees and sublicensees to take such action, to preserve the confidentiality
of each other's Confidential Information as it would customarily take to
preserve the confidentiality of its own Confidential Information, and in no
event, less than reasonable care. Each party, upon the other's request, will
return all the Confidential Information of the other party disclosed to it
pursuant to this Agreement and the RU Agreement, including all copies and
extracts of documents, within sixty (60) days of the request following the
termination of this Agreement; provided, however, that a party may retain one
copy of Confidential Information in inactive archives of its legal department
solely for the purpose of establishing the contents thereof.
(c) ARIAD and HMR S.A. each represent that all of its employees
and the employees of its Affiliates, and any consultants to such party or its
Affiliates who shall have access to Confidential Information of the other party
are bound by written obligations to maintain such information in confidence and
not to use such information except as expressly permitted herein. Each party
agrees to enforce confidentiality obligations to which its employees and
consultants (and those of its Affiliates) are obligated.
12. FURTHER ASSURANCES. Each party agrees that at any time and from time
to time, upon the written request of the other, it will promptly and duly
execute and deliver any and all such further instruments and documents and take
such further action as the other may reasonably request in order to transfer the
Assigned Technology (including the Tangible Materials) and obtain the full
benefits of this Agreement and of the transactions contemplated hereby. Without
limiting the generality of the foregoing, at the reasonable request of the other
party, each party agrees to, and agrees to cause its Affiliates and successors
to, execute and deliver any patent assignments relating to the Assigned
Technology or the rights set forth in the fifth sentence of Section 2 to permit
the requesting party to obtain the full benefits of this Agreement and the
transactions contemplated hereby. In addition, HMR S.A. and ARIAD agree (a) to
assist (including enforcement of employee agreements at the expense of the party
requesting such assistance) each other
[*]
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[*]
as may be reasonably requested by the other party. The parties acknowledge
that such assistance shall only be required to extend to administrative
assistance reasonably necessary to enable the requesting party to exercise or
enforce rights obtained under this Agreement, and shall
[*]
.
13. GENERAL.
(a) NOTICES. All notices, requests and other communications to
ARIAD or HMR S.A. hereunder shall be in writing (including telecopy or similar
electronic transmissions) and shall be personally delivered by a courier service
providing evidence of receipt or sent by telecopy or other electronic facsimile
transmission or by registered mail or certified mail, return receipt requested,
postage prepaid, in each case to the respective address set forth below (or such
other address as may be specified in writing to the other party hereto):
If to HMR S.A.: Hoechst Xxxxxx Xxxxxxx (France)
000 Xxxxx xx Xxxxx
00000 Xxxxxxxxxxx Xxxxx
XXXXXX
Attention: General Counsel
Telecopy: 33 1 49 91 30 55
With a copy to Aventis Pharmaceuticals Inc.
Route 202-206
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000
X.X.X.
Attention: Vice President and General Counsel,
Global Drug Development Center
Telecopy: (000) 000-0000
and a copy to: Xxxxxx, Xxxxx & Bockius LLP
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
X.X.X.
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Telecopy: (000) 000-0000
If to ARIAD to: ARIAD Pharmaceuticals, Inc.
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
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U.S.A.
Attention: Chief Executive Officer
Telecopy: (000) 000-0000
with a copy to: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attention: Xxxxxxx X. Xxxxxx, Esq.
Telecopy: (000) 000-0000
(b) GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware, without regard
to the application of principles of conflicts of law.
(c) BINDING EFFECT. This Agreement shall be binding upon and inure
to the benefit of the parties and their respective legal representatives,
successors and permitted assigns.
(d) HEADINGS. Section and subsection headings are inserted for
convenience of reference only and do not form a part of this Agreement.
(e) COUNTERPARTS. This Agreement may be executed simultaneously in
two counterparts, each of which shall be deemed an original.
(f) AMENDMENT; WAIVER. This Agreement may be amended, modified,
superseded or canceled, and any of the terms may be waived, only by a written
instrument executed by each party or, in the case of waiver, by the party or
parties waiving compliance. The delay or failure of any party at any time or
times to require performance of any provisions shall in no manner affect the
rights at a later time to enforce the same. No waiver by any party of any
condition or of the breach of any term contained in this Agreement, whether by
conduct or otherwise, in any one or more instances, shall be deemed to be, or
considered as, a further or continuing waiver of any such condition or of the
breach of such term or any other term of this Agreement.
(g) NO THIRD PARTY BENEFICIARIES. No third party, including any
employee of any party to this Agreement, shall have or acquire any rights by
reason of this Agreement.
(h) ASSIGNMENT AND SUCCESSORS. This Agreement shall be assignable
by ARIAD, without consent, to any third party and shall not be assignable by HMR
S.A. to any third party without the written consent of ARIAD, except that HMR
S.A. may assign this Agreement to an Affiliate or to a third party transferee of
all or substantially all of HMR S.A.'s assets which relate to the subject matter
of this Agreement. The terms and conditions shall be binding on and inure to the
benefit of the permitted successors and assigns of the parties. No such
permitted assignment shall relieve the assignor of any of its obligations or
liabilities under this Agreement.
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(i) INTERPRETATION. The parties hereto acknowledge and agree that:
(i) each party and its counsel reviewed and negotiated the terms and provisions
of this Agreement and have contributed to its revision; (ii) the rule of
construction to the effect that any ambiguities are resolved against the
drafting party shall not be employed in the interpretation of this Agreement;
and (iii) the terms and provisions of this Agreement shall be construed fairly
as to all parties hereto and not in favor of or against any party, regardless of
which party was generally responsible for the preparation of this Agreement.
(j) INTEGRATION; SEVERABILITY. This Agreement constitutes the
entire understanding of HMR S.A. and ARIAD with respect to the subject matter
hereof and all prior or contemporaneous agreements and understandings, whether
written or oral, between the parties with respect to such matter, including,
without limitation, the RU Agreement, are hereby superseded in their entirety.
If any provision hereof should be held invalid, illegal or unenforceable in any
respect in any jurisdiction then, to the fullest extent permitted by law (i) all
other provisions hereof shall be liberally construed in order to carry out the
intentions of the parties hereto as nearly as may be possible and (ii) such
invalidity, illegality or unenforceability shall not affect the validity,
legality or enforceability of such provision in any other jurisdiction. To the
extent permitted by applicable law, each party hereby waives any provision of
law that would render any provision hereof prohibited or unenforceable in any
respect.
(k) EXPENSES. Each party agrees to pay its own legal, accounting
and other expenses in connection with the transactions contemplated hereby
including the fees and expenses of any investment banker or broker engaged by
such party.
(l) SCHEDULES. All schedules referred to in this Agreement are
attached hereto and are incorporated herein by reference as if fully set forth
herein.
(m) CURRENCY. All amounts used herein are denominated in United
States dollars. All calculations required hereby shall be computed, and all
payments to be made hereunder, shall be in United States dollars. For purposes
of determining the amounts due hereunder, the amount of Net Sales in any foreign
currency shall be computed by converting such amount into United States dollars
at the prevailing commercial rate of exchange for purchasing United States
dollars with such foreign currency as reported in The Wall Street Journal on the
last business day of the Fiscal Quarter to which a payment relates. Each payment
under this Agreement shall be paid by ARIAD by wire transfer of funds to an
account of HMR S.A. in accordance with the instructions provided by HMR S.A.
from time to time.
(n) ARBITRATION. In the event of any dispute, difference or
question arising between the parties in connection with this Agreement, the
construction thereof, or the rights, duties or liabilities of either party, then
such dispute shall be resolved by binding arbitration in accordance with the
rules of the American Arbitration Association. The arbitration panel shall be
composed of three arbitrators, one of whom shall be chosen by HMR S.A., one by
ARIAD, and the third by the two so chosen. If both or either of HMR S.A. or
ARIAD fails to choose an arbitrator or arbitrators within fourteen (14) days
after receiving notice of commencement of arbitration or if the two arbitrators
fail to choose a third arbitrator within fourteen (14) days after their
appointment, then the President of the American Arbitration Association shall,
upon the
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request of both or either of the parties to the arbitration, appoint the
arbitrator or arbitrators required to complete the board or, if he or she shall
decline or fail to do so, such arbitrator or arbitrators shall be appointed by
the New York City, New York office of the American Arbitration association. The
decision of the arbitrators shall be by majority vote and, at the request of
either party, the arbitrators shall issue a written opinion of findings of fact
and conclusions of law. Costs shall be borne as determined by the arbitrators.
Unless the parties to the arbitration shall otherwise agree to a place of
arbitration, the place of arbitration shall be at New York City, New York,
U.S.A. The arbitration award shall be final and binding upon the parties to such
arbitration and may be entered in any court having jurisdiction.
14. EFFECTIVE TIME. This Agreement shall become effective (the
"Effective Time") simultaneously with the Closing (as such term is defined in
the Restructuring Agreement) of the Restructuring Agreement, and shall terminate
simultaneously with any termination of the Restructuring Agreement.
15. PUBLIC ANNOUNCEMENTS. Each party will give the other party prior
notification and an opportunity to provide comments on its announcement
regarding the transactions contemplated hereby and will consider in good faith
any proposed revisions thereof.
[Remainder of page intentionally left blank]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives as of the date first written above.
HOECHST XXXXXX XXXXXXX (FRANCE)
By: /s/ Xxxxxxx Xxxxxxx
Name: Xxxxxxx Xxxxxxx
Title: Head of DIA HMR-FRANCE
ARIAD PHARMACEUTICALS, INC.
By: /s/ Xxxxxx Xxxxxx
Name: Xxxxxx X. Xxxxxx
Title: Chairman and Chief Executive Officer
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SCHEDULE 1
DEFINITIONS
The following capitalized terms used throughout this Agreement shall have the
meanings set forth below:
"Analog" shall mean a [*] , but
[*] it in respect to [*]
.
"Affiliate" shall mean any corporation, firm, partnership or other entity
which directly or indirectly controls or is controlled by or is under common
control with a party to this Agreement. "Control" means ownership, directly or
through one or more Affiliates, of more than fifty percent (50%) of the shares
of stock entitled to vote for the election of directors, in the case of a
corporation, or more than fifty percent (50%) of the equity interests in the
case of any other type of legal entity, status as a general partner in any
partnership, or any other arrangement whereby a party controls or has the right
to control the board of directors or equivalent governing body of a corporation
or other entity.
"Anti-Cancer Activity" shall mean cytostatic or cytolitic activity in
cultured tumor cells.
"ARIAD Owned Technology" shall mean Technology solely invented, discovered
or developed by ARIAD under, and during the term of, the Research and
Development Program and without use of XXXXXXX Owned Technology, and shall
include without limitation the Technology set forth on Schedule 1-A. ARIAD
represents and warrants that there is not [*] that constitutes
any [*] .
"Compound" shall mean a compound invented, discovered or developed under,
and during the term of, the Research and Development Program by either party
alone or jointly by both parties which [*]
Src protein tyrosine kinase. "XXXXXXX
or Joint Compound" shall mean a Compound invented, discovered or developed by
HMR S.A. or any of its Affiliates alone or jointly with ARIAD or any of its
Affiliates.
"Confidential Information" shall mean all information of a party
(including but not limited to information about any element of Technology) which
is disclosed by or on behalf of one party to the other with respect to the
subject matter hereof (including, without limitation, any such information
disclosed under the RU Agreement) except to the extent that such information (i)
as of the date of disclosure is demonstrably known to the party receiving such
disclosure or its Affiliates, as shown by written documentation, other than by
virtue of a prior confidential disclosure to such party or its Affiliates; (ii)
as of the date of disclosure is in, or subsequently enters, the public domain,
through no fault or omission of the other party receiving such disclosure; or
(iii) as of the date of disclosure or thereafter is obtained from a third party
free from any obligation of confidentiality to the disclosing party. For
purposes of this Agreement,
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all [*] is Confidential Information of ARIAD, unless such [*] otherwise falls
within the exceptions to Confidential Information contained in clauses (i), (ii)
or (iii) of the preceding sentence.
"Covered" means, with respect to
[*]
.
"directly inhibits", "direct inhibition" and similar words shall mean the
direct inhibition at a [*] conducted in accordance with
accepted scientific procedures.
"Field" shall mean the treatment or prophylaxis, by
[*]
Src protein
tyrosine kinase, of hyperresorptive bone diseases in humans,
[*]
.
"Fiscal Quarter" shall mean one quarter of ARIAD's Fiscal Year.
"Fiscal Year" shall mean a year starting January 1 and ending December 31.
"Human Therapeutic Non-Field Product" shall mean any product [*] which is
invented, discovered or developed utilizing a [*]
with respect to which [*]
or any [*].
"Human Therapeutic Product" shall mean any product which is invented,
discovered or developed utilizing a
[*]
including, without limitation, any of the
[*]
.
"Joint Technology" shall mean
[*]
.
"Net Sales" shall mean the gross amount billed by ARIAD or its Affiliates
or licensees to third parties worldwide for the sales of Human Therapeutic
Products, Human Therapeutic Src Inhibition Products or Human Therapeutic
Non-Field Products, as the case may be, less (a)
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allowances for normal and customary trade, quantity and cash discounts actually
taken, (b) transportation, insurance and postage charges, if prepaid by ARIAD or
any affiliate or licensee of ARIAD and billed on ARIAD's or any Affiliate's or
licensee's invoices as a separate item, (c) credits, rebates, returns
(including, but not limited to, wholesaler and retailer returns), to the extent
actually allowed, and (d) sales, use and other taxes similarly incurred to the
extent stated on the invoice as a separate item, all subject to the following:
(i) In the case of pharmacy incentive programs, hospital performance
incentive program chargebacks, disease management programs, similar
programs or discounts on "bundles" of products, all discounts and the like
shall be allocated among products on the basis on which such discounts and
the like were actually granted, or if such basis cannot be determined,
proportionately to the list prices of such products.
(ii) In the case of any sale or other disposal by a party hereto to
an Affiliate, for resale, the Net Sales shall be calculated as above on
the value charged or invoiced on the first arm's length sale to a party
who is not an Affiliate;
(iii) In the event of a license as to any Human Therapeutic Product,
Human Therapeutic Src Inhibition Product or Human Therapeutic Non-Field
Product, Net Sales will be calculated with respect to sales of the Human
Therapeutic Product, Human Therapeutic Src Inhibition Product or Human
Therapeutic Non-Field Product, as the case may be, by the licensee.
(iv) In the case of a sale of unformulated Licensed Compound in bulk
for resale after formulation into Human Therapeutic Product, Human
Therapeutic Src Inhibition Product or Human Therapeutic Non-Field Product,
Net Sales will be calculated on the resale of Human Therapeutic Product,
Human Therapeutic Src Inhibition Product or Human Therapeutic Non-Field
Product, as the case may be.
(v) In the case of any other sale or other disposal, such as barter
or counter-trade, of any Human Therapeutic Product, or part thereof,
otherwise than in an arm's length transaction exclusively for money, the
Net Sales shall be calculated as above on the fair market price (if
higher) in the relevant country of sale or disposal.
"Research and Development Program" shall mean the research and development
program conducted by ARIAD and HMR S.A. pursuant to the RU Agreement.
"XXXXXXX Owned Technology" shall mean Technology (i) solely invented,
discovered or developed by HMR S.A. or its Affiliates under, and during the term
of, the Research and Development Program and without use of ARIAD Technology and
(ii) Section 3.1 Technology. For purposes of clarification, XXXXXXX Owned
Technology does not include Technology invented, discovered or developed by HMR
S.A.'s Affiliates, other than under, and during the term of, the Research and
Development Program or publicly-available Technology.
"Src Inhibition Field" shall mean the treatment or prophylaxis, by [*]
Src protein tyrosine kinase, of diseases in humans [*].
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"Section 3.1 Technology" shall mean Technology transferred to HMR S.A. by
ARIAD pursuant to Section 3.1 of the RU Agreement.
"Technology" shall mean and include all inventions, discoveries,
improvements and proprietary materials, whether or not patentable, and all data
and information related thereto, including, but not limited to, samples of, and
structural and functional information pertaining to, chemical compounds, DNA
vectors, cells, antibodies, other proteins or other biological substances,
including DNA sequence information and information pertaining to
three-dimensional structure of proteins and other substances; other data;
formulations; techniques; and know-how; including any negative results.
"Valid Claim" means, with respect to each country in the world, a claim in
any issued patent that is directed to any XXXXXXX Owned Technology or Joint
Technology that has not been disclaimed or held unenforceable or invalid in such
country by a governmental agency or court of competent jurisdiction by a
decision beyond right of review.
As used in this Agreement, the following terms shall have the respective
meanings specified in the Sections indicated below.
Defined Term Section
------------ -------
Agreement Preamble
Assigned Technology 2
ARIAD Preamble
Effective Time 14
HMR S.A. Preamble
HMR S.A. Indemnitee 8
Restructuring Agreement Preamble
RU Agreement Preamble
Tangible Materials 3
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SCHEDULE A-1
ARIAD TECHNOLOGY
(Patents Applications)
[*]
[One page redacted.]
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SCHEDULE 2
JOINT TECHNOLOGY AND XXXXXXX OWNED TECHNOLOGY
---------------------------------------------
(INCLUDING PATENTS AND PATENT APPLICATIONS)
I. Patents to be assigned by HMR S.A. to ARIAD are set forth on Exhibit A to
this Schedule 2.
II. [*] patent to be assigned by HMR S.A. to ARIAD:
Case: [*]
Country: [*]
Type: [*]
Filing Date: [*]
Filing No.: [*]
Expiration: [*]
Abbreviated Title: [*]
III.
[*]
IV.
[*]
V. Schedule 3 is incorporated herein by reference.
[One page redacted.]
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EXHIBIT A
Patent Applications Filed
By Hoechst Xxxxxx Xxxxxxx
[*]
[Four pages redacted.]
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EXHIBIT B
[*]
[Thirty pages redacted.]
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SCHEDULE 3
TANGIBLE MATERIALS
I.
[*]
II.
[*]
III.
[*]
[One page redacted.]
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SCHEDULE 4
MEETING DATE, LOCATION AND ATTENDEES
1. HMR S.A. and Affiliates attendees:
[*]
[*]
[*]
[*]
2. ARIAD attendees:
[*]
[*]
[*]
[*]
[*]
3. Meeting date: [*].
4. Meeting location: [*]
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