Exhibit 10.3
Execution Copy
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
TECHNOLOGY TRANSFER AGREEMENT
BY AND BETWEEN
MILLENNIUM PHARMACEUTICALS, INC.
AND
AVENTIS PHARMACEUTICALS INC.
TABLE OF CONTENTS
PAGE
----
TECHNOLOGY TRANSFER AGREEMENT....................................................................1
Article I Definitions............................................................................1
Section 1.1 "Additional Technology Transfer Services"...................................1
Section 1.2 "Affiliate".................................................................1
Section 1.3 "Agreement Term"............................................................2
Section 1.4 "Aventis Improvements to Millennium Process Technology".....................2
Section 1.5 "Aventis Improvements Patent Rights and Copyrights".........................2
Section 1.6 "Base Technology Transfer Services".........................................2
Section 1.7 "Change of Control".........................................................2
Section 1.8 "Confidential Information"..................................................3
Section 1.9 "Contract Year".............................................................3
Section 1.10 "Cover"....................................................................3
Section 1.11 "Development Program Technology"...........................................3
Section 1.12 "Direct Acquired Technology"...............................................4
Section 1.13 "Direct Licensed Software".................................................4
Section 1.14 "Documentation"............................................................4
Section 1.15 "Effective Date"...........................................................4
Section 1.16 "Executive Officers".......................................................4
Section 1.17 "Field"....................................................................4
Section 1.18 "First Commercial Sale"....................................................5
Section 1.19 "Inflammation Agreement"...................................................5
Section 1.20 "Informatics Platform".....................................................5
Section 1.21 "Joint Oncology Vaccine Committee".........................................5
Section 1.22 "Joint Steering Committee".................................................5
Section 1.23 "Joint Technology Transfer Team"...........................................5
Section 1.24 "Millennium Existing Process Technology"...................................5
Section 1.25 "Millennium Informatics Technology"........................................6
Section 1.26 "Millennium New Process Technology"........................................6
Section 1.27 "Millennium Oncology Vaccine Technology"...................................6
Section 1.28 "Millennium Oncology Vaccine Technology Patent Rights and
Copyrights".............................................................7
Section 1.29 "Millennium Process Technology"............................................7
Section 1.30 "Millennium Process Technology Improvements"...............................7
Section 1.31 "Millennium Process Technology Patent Rights and Copyrights"...............7
Section 1.32 "Millennium Product-Process Tool Technology"...............................7
Section 1.33 "Millennium Product-Process Tool Technology Patent Rights and
Copyrights".............................................................8
Section 1.34 "Millennium Research-Stage Process Technology".............................8
Section 1.35 "Net Sales"................................................................8
Section 1.36 "Oncology Vaccine Field"..................................................10
Section 1.37 "Oncology Vaccine Product"................................................10
Section 1.38 "Party"or "Parties".......................................................10
Section 1.39 "Patent Right"............................................................10
i
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Section 1.40 "Process Technology"......................................................10
Section 1.41 "Product-Process Tool Technology".........................................10
Section 1.42 "Product Technology"......................................................10
Section 1.43 "Prohibited Field"........................................................10
Section 1.44 "Regulatory Approval".....................................................11
Section 1.45 "Selected Vaccine Target".................................................11
Section 1.46 "Significant Agricultural Enterprise".....................................11
Section 1.47 "Significant Pharmaceutical Enterprise"...................................11
Section 1.48 "Sublicensed Software"....................................................11
Section 1.49 "Technology Development Agreement"........................................11
Section 1.50 "Technology Transfer".....................................................11
Section 1.51 "Technology Transfer Plan"................................................12
Section 1.52 "Territory"...............................................................12
Section 1.53 "Third Party".............................................................12
Section 1.54 "Third Party Software"....................................................12
Section 1.55 "Upgrade".................................................................12
Section 1.56 "Vaccine".................................................................12
Section 1.57 "Valid Claim".............................................................12
Section 1.58 "Additional Definitions"..................................................12
Article II Grants of Rights to Aventis..........................................................14
Section 2.1 Millennium License Grants..................................................14
Section 2.2 Special Provisions Relating to Software....................................18
Section 2.3 Nontransferable............................................................20
Section 2.4 Prohibited Field...........................................................20
Article III Technology Transfer.................................................................20
Section 3.1 Technology Transfer........................................................20
Section 3.2 Joint Technology Transfer Team.............................................22
Section 3.3 Selection of Vaccine Targets...............................................25
Section 3.4 Technology Transfer Plan...................................................26
Section 3.5 Delivery and [**] of Millennium Process Technology.........................27
Section 3.6 Technology Disclosure and Update...........................................29
Section 3.7 Millennium Research-Stage Process Technology...............................30
Section 3.8 Amendments to Technology Transfer Plans....................................30
Article IV Grants of Rights to Millennium.......................................................31
Section 4.1 Technology Disclosure and Update...........................................31
Section 4.2 Option to Aventis Improvements to Millennium Process Technology............31
Section 4.3 License Grant to Millennium................................................32
Section 4.4 Source Code................................................................33
Section 4.5 Co-Development Technology..................................................33
Article V Payments..............................................................................34
Section 5.1 Technology Transfer Payments...............................................34
Section 5.2 Sublicensed Software Fees..................................................36
Section 5.3 Additional Technology Transfer Services....................................36
Section 5.4 Audits of Additional Technology Transfer Services..........................36
Section 5.5 Oncology Vaccine Products Royalties and Reports............................37
Section 5.6 Audits of Oncology Vaccine Reports.........................................37
ii
Section 5.7 Tax Matters................................................................38
Section 5.8 Currency Exchange..........................................................38
Section 5.9 Currency and Method of Payments; Late Payments.............................38
Article VI Oncology Vaccine Product Diligence Obligations of Aventis............................39
Section 6.1 Aventis Diligence Obligations..............................................39
Section 6.2 Notification by Millennium.................................................39
Section 6.3 Consequences of Aventis Failure to Comply with Diligence Obligations.......39
Article VII Intellectual Property Ownership, Protection and Related Matters.....................39
Section 7.1 Ownership..................................................................39
Section 7.2 Prosecution and Maintenance of Patent Rights...............................40
Section 7.3 Exploitation of Inventions.................................................40
Section 7.4 Cooperation................................................................41
Section 7.5 Third Party Infringement...................................................41
Section 7.6 Claimed Infringement.......................................................42
Article VIII Confidentiality....................................................................44
Section 8.1 Confidential Information...................................................44
Section 8.2 Employee and Advisor Obligations...........................................44
Section 8.3 Term.......................................................................45
Article IX Term and Termination.................................................................45
Section 9.1 Term; Extension............................................................45
Section 9.2 Termination upon the Third or Fourth Anniversary of the Effective Date.....45
Section 9.3 Termination For Material Breach............................................46
Section 9.4 Termination Upon Change of Control or Upon Millennium Ceasing Certain
Activities................................................................47
Section 9.5 Rights Upon Termination Under Section 9.2, 9.3, 9.4 or 12.7................47
Section 9.6 Termination Upon HSR Denial................................................48
Section 9.7 Residual Rights............................................................48
Article X Dispute Resolution....................................................................49
Section 10.1 Joint Steering Committee..................................................49
Section 10.2 Referral of Unresolved Matters to Joint Steering Committee................49
Section 10.3 Referral of Unresolved Matters to Executive Officers......................49
Section 10.4 Independent Experts.......................................................50
Section 10.5 Non-Binding Mediation.....................................................50
Article XI Representations, Warranties and Covenants............................................50
Section 11.1 Representation of Authority; Consents.....................................50
Section 11.2 No Conflict...............................................................50
Section 11.3 Knowledge of Pending or Threatened Litigation.............................50
Section 11.4 Employee and Consultant Obligations.......................................51
Section 11.5 Sublicense Rights.........................................................51
Section 11.6 Exhibits..................................................................52
Section 11.7 Intellectual Property.....................................................52
Section 11.8 Software Specific.........................................................52
Section 11.9 Disclaimer of Warranty....................................................53
Section 11.10 Conduct of Business Pending Closing......................................53
Section 11.11 Sublicense Terms and Conditions..........................................54
iii
Article XII Miscellaneous Provisions............................................................54
Section 12.1 Product Liability Indemnification.........................................54
Section 12.2 Governing Law.............................................................55
Section 12.3 Assignment................................................................56
Section 12.4 Entire Agreement..........................................................56
Section 12.5 Amendments................................................................56
Section 12.6 Notices...................................................................56
Section 12.7 Force Majeure.............................................................57
Section 12.8 Compliance with Export Regulations........................................57
Section 12.9 Section 365(n) of the Bankruptcy Code.....................................57
Section 12.10 Public Announcements.....................................................58
Section 12.11 Non-Solicitation.........................................................58
Section 12.12 Independent Contractors..................................................58
Section 12.13 No Strict Construction...................................................59
Section 12.14 Headings.................................................................59
Section 12.15 No Implied Waivers; Rights Cumulative....................................59
Section 12.16 Severability.............................................................59
Section 12.17 Execution in Counterparts................................................59
Section 12.18 No Third Party Beneficiaries.............................................59
Section 12.19 No Consequential Damages.................................................59
Article XIII HSR Filing.........................................................................60
Section 13.1 HSR Filing................................................................60
Section 13.2 HSR-Related Definitions...................................................60
Article XIV Closing.............................................................................60
Section 14.1 Obligations...............................................................60
iv
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
"EXHIBITS". The Exhibits referred to in the definitions of this
Agreement are being simultaneously delivered with the execution of this
Agreement as separate documents and shall have the following titles:
Exhibit A [**]
Exhibit B [**]
Exhibit C Third Party Consents for Millennium Existing Process
Technology, Millennium Product-Process Tool Technology and
Millennium Research Stage Process Technology
Exhibit D Technology Transfer Plan
Exhibit E Exceptions to Representations and Warranties
Exhibit F Exclusions from Millennium Oncology Vaccine Technology
"SCHEDULES". The Schedules referred to in the definitions of this
Agreement have been attached to this Agreement and shall have the following
titles:
Schedule I Process Technology
Schedule II Transferred Millennium Process Technology and Third Party
Software Maintenance and Support
v
TECHNOLOGY TRANSFER AGREEMENT
This Technology Transfer Agreement dated the 22nd day of June, 2000
(the "Execution Date") is by and between Millennium Pharmaceuticals, Inc., a
corporation organized and existing under the laws of the State of Delaware and
having its principal office at 00 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000
("Millennium") and Aventis Pharmaceuticals Inc., a corporation organized and
existing under the laws of the State of Delaware and having its principal office
at Xxxxx 000-000, X.X. Xxx 0000, Xxxxxxxxxxx, Xxx Xxxxxx 00000 ("Aventis").
INTRODUCTION
1. WHEREAS, Millennium has developed certain process
technologies relating to the identification and characterization of genetic
materials, proteins and small molecules, as well as certain product technologies
potentially useful for oncology vaccines.
2. WHEREAS, Aventis desires to obtain access and a license to
Millennium's process technologies and certain product technologies for certain
oncology vaccines, and Millennium is willing to provide such access and grant
such license, on the terms set forth in this Agreement.
3. WHEREAS, simultaneous with the transfer of the process
technologies contemplated by this Agreement, Aventis and Millennium are entering
into a Technology Development Agreement and an Inflammation Agreement with the
intent of enabling Aventis to incorporate and utilize such process technologies
in specific drug discovery and pharmacogenomic applications.
NOW, THEREFORE, Millennium and Aventis agree as follows:
ARTICLE I
DEFINITIONS
When used in this Agreement, each of the following terms shall have the
meanings set forth in this Article I:
SECTION 1.1. "ADDITIONAL TECHNOLOGY TRANSFER SERVICES". Additional
Technology Transfer Services means those services related to Technology
Transfer, other than the Base Technology Transfer Services, as may be provided
by Millennium under the Technology Transfer Plan.
SECTION 1.2. "AFFILIATE". Affiliate means any corporation, company,
partnership, joint venture and/or firm which controls, is controlled by, or is
under common control with a specified person or entity. For purposes of this
Section 1.2, "control" shall be presumed to exist if one of the following
conditions is met: (a) in the case of corporate entities, direct or indirect
ownership of at least fifty percent (50%) of the stock or shares having the
right to vote for the election of directors, or (b) in the case of
non-corporate entities, direct or indirect ownership of at least fifty
percent (50%) of the equity interest with the power to direct the management
and policies of such non-corporate entities. The Parties acknowledge that in
the case of certain entities
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
organized under the laws of certain countries outside of the United States, the
maximum percentage ownership permitted by law for a foreign investor may be less
than fifty percent (50%), and that in such case such lower percentage shall be
substituted in the preceding sentence, PROVIDED THAT such foreign investor has
the power to direct the management and policies of such entity.
SECTION 1.3. "AGREEMENT TERM". Agreement Term means the term
commencing on the Effective Date and ending five (5) years after the Effective
Date unless (a) earlier terminated pursuant to the provisions of Article IX or
(b) extended pursuant to the provisions of Section 9.1.
SECTION 1.4. "AVENTIS IMPROVEMENTS TO MILLENNIUM PROCESS TECHNOLOGY".
Aventis Improvements to Millennium Process Technology means improvements,
enhancements, or modifications to a specific component of Transferred Millennium
Process Technology or Millennium Research-Stage Process Technology that are
developed using Transferred Millennium Process Technology or Millennium
Research-Stage Process Technology, and are directed to such specific component
of Transferred Millennium Process Technology or Millennium Research-Stage
Process Technology and which are (a) solely or jointly owned by Aventis or its
Affiliates, or (b) licensed by Aventis or any of its Affiliates from Third
Parties, in each case after the Effective Date and during the Agreement Term
(but only to the extent that transfer or sublicensing is permitted by any
applicable agreements with Third Parties), [**].
SECTION 1.5. "AVENTIS IMPROVEMENTS PATENT RIGHTS AND COPYRIGHTS".
Aventis Improvements Patent Rights and Copyrights means Patent Rights and
copyrights that cover Aventis Improvements to Millennium Process Technology.
SECTION 1.6. "BASE TECHNOLOGY TRANSFER SERVICES". Base Technology
Transfer Services means those services related to Technology Transfer to be
provided by Millennium that are reasonably necessary to: (a) install and
transfer the Transferred Millennium Process Technology and the Sublicensed
Software, (b) facilitate the integration of the Direct Licensed Software with
the Transferred Millennium Process Technology and Sublicensed Software, (c)
[**] (d) maintain, update, upgrade and support (i) the Transferred Millennium
Process Technology and (ii) the portions of Third Party Software modified by
Millennium, and (e) train Aventis personnel in the use of Transferred
Millennium Process Technology, in each case as specifically set forth in the
Technology Transfer Plan, as it may be amended from time to time. Anything to
the contrary notwithstanding, the scope of all Base Technology Transfer
Services shall be consistent with the terms and conditions of Article III and
SCHEDULE II. While Base Technology Transfer Services shall not in general
include any services with respect to Direct Acquired Technology or the
unmodified portions of Third Party Software, Base Technology Transfer
Services shall include limited support for the unmodified portions of Third
Party Software as set forth in SCHEDULE II.
SECTION 1.7. "CHANGE OF CONTROL". Change of Control means (a) a
merger or consolidation of Millennium and a Significant Pharmaceutical
Enterprise which results in the
2
voting securities of Millennium outstanding immediately prior thereto ceasing to
represent at least fifty percent (50%) of the combined voting power of the
surviving entity immediately after such merger or consolidation, or (b) a
Significant Pharmaceutical Enterprise, together with its Affiliates, becoming
the beneficial owner of fifty percent (50%) or more of the combined voting power
of the outstanding securities of Millennium, or (c) the sale or other transfer
of all or substantially all of Millennium's assets which relate to this
Agreement to a Significant Pharmaceutical Enterprise.
SECTION 1.8. "CONFIDENTIAL INFORMATION". Confidential Information
means all proprietary materials, know-how or other information, (whether or not
patentable) (including software) regarding a Party's technology, products,
business information or objectives, which is designated as confidential in
writing by the disclosing Party, whether by letter or by the use of an
appropriate stamp or legend, prior to or at the time any such material, know-how
or other information is disclosed by the disclosing Party to the other Party.
Notwithstanding the foregoing to the contrary, materials, know-how or other
information which is orally, electronically or visually disclosed by a Party, or
is disclosed in writing without an appropriate letter, stamp or legend, shall
constitute Confidential Information of a Party (a) if the disclosing Party,
within thirty (30) days after such disclosure, delivers to the other Party a
written document or documents describing the materials, know-how or other
information and referencing the place and date of such oral, visual, electronic
or written disclosure and the names of the persons to whom such disclosure was
made, or (b) such material, know-how or information is of the type that is
customarily considered to be confidential information by persons engaged in
activities that are substantially similar to the activities being engaged in by
the Parties (including without limitation software source code). Notwithstanding
the foregoing, any technical or financial information of a Party disclosed at a
meeting of the Joint Technology Transfer Team or disclosed through an audit
report shall constitute Confidential Information of a Party unless otherwise
specified.
SECTION 1.9. "CONTRACT YEAR". Contract Year means (a) with respect to
the first Contract Year, the period beginning on the Effective Date and ending
on December 31, 2000 (the "First Contract Year"), and (b) with respect to the
second, third, fourth and fifth Contract Years, the calendar years 2001, 2002,
2003 and 2004, respectively (the "Second Contract Year", "Third Contract Year",
etc.) and (c) with respect to the sixth Contract Year, the period beginning on
January 1, 2005 and ending on the fifth anniversary of the Effective Date (the
"Sixth Contract Year").
SECTION 1.10. "COVER". Cover means, with respect to a Patent Right,
that, but for a license granted to a party under a Valid Claim included in such
Patent Right, the practice by such party of an invention claimed in such Patent
Right would infringe such Valid Claim or in the case of a Patent Right that is a
patent application, would infringe a Valid Claim in such patent application if
it were to issue as a patent.
SECTION 1.11. "DEVELOPMENT PROGRAM TECHNOLOGY". Development Program
Technology means the Development Program Technology as such term is defined in
the Technology Development Agreement.
3
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
SECTION 1.12. "DIRECT ACQUIRED TECHNOLOGY". Direct Acquired
Technology means those licenses to intellectual property (other than
software) that have been obtained by Millennium from Third Parties in
transactions with such Third Parties that were separate from the purchase of
commercial products and/or services from such Third Parties and which
uniquely and directly relate to the use of specific components of the
Millennium Process Technology and Millennium Research-Stage Process
Technology to be transferred to Aventis. [**] which, as of the Execution Date
[**] during the [**] during the [**] Commencing with the [**] shall be set
forth in the [**]
SECTION 1.13. "DIRECT LICENSED SOFTWARE". Direct Licensed Software
means the software to be obtained and/or licensed directly from Third Parties
by Aventis. [**] which, as of the Execution Date, [**] [**] during the [**]
in connection with [**] during such period. Commencing with the [**] during
each [**] shall be set forth in the [**].
SECTION 1.14. "DOCUMENTATION". Documentation means existing written
and/or electronic documentation delivered by Millennium to Aventis for use in
association with the Millennium Process Technology, including without limitation
all related operating instructions and user manuals. In addition, upon Aventis'
request, on a component-by-component basis, Documentation shall also include
existing written and/or electronic documentation such as installation guides,
administration guides and database schematics, which shall be provided on an "as
is" basis, in such form as such additional documentation exists at Millennium at
the time of such request.
SECTION 1.15. "EFFECTIVE DATE". Effective Date means the HSR Clearance
Date (as defined in Article XIII) or, if the Parties mutually agree that an HSR
Filing is not required, July 6, 2000.
SECTION 1.16. "EXECUTIVE OFFICERS". Executive Officers means the Chief
Executive Officer of Aventis (or an executive of Aventis designated by such
Chief Executive Officer) and the Chief Executive Officer of Millennium (or an
executive of Millennium designated by such Chief Executive Officer).
SECTION 1.17. "FIELD". Field means any and all fields of use other
than the Prohibited Field.
4
SECTION 1.18. "FIRST COMMERCIAL SALE". First Commercial Sale means,
for each Oncology Vaccine Product, on a country-by-country basis, the first
shipment of such Oncology Vaccine Product to a Third Party by Aventis, its
Affiliates or sublicensees in a country in the Territory after Regulatory
Approval has been achieved for such Oncology Vaccine Product in such country.
Sales for test marketing, sampling and promotional uses, clinical trial purposes
or compassionate or similar use shall not be considered to constitute a First
Commercial Sale.
SECTION 1.19. "INFLAMMATION AGREEMENT". Inflammation Agreement means
the Collaboration and License Agreement between Millennium and Aventis dated as
of the Execution Date.
SECTION 1.20. "INFORMATICS PLATFORM". Informatics Platform means the
Direct Licensed Software and the equipment, hardware and operating system
configuration, the obtaining and installation of which by Aventis will serve to
achieve functionality of the components of the Millennium Informatics
Technology. The Technology Transfer Plan for the First Contract Year sets forth
a list of all material items of the equipment and hardware which, as of the
Execution Date, are required to be obtained by Aventis during the First Contract
Year and currently expected to be required to be obtained during the Second
Contract Year prior to the first anniversary of the Effective Date in connection
with Technology Transfer during such time period. Commencing with the Second
Contract Year, material items of equipment and hardware required to be obtained
by Aventis in connection with Technology Transfer during each succeeding
Contract Year shall be set forth in the Technology Transfer Plan for such
Contract Year.
SECTION 1.21. "JOINT ONCOLOGY VACCINE COMMITTEE". Joint Oncology
Vaccine Committee means a committee comprised of an appropriate number of
representatives of Millennium and Aventis to plan and oversee the Technology
Transfer relating to Oncology Vaccine Technology contemplated by this Agreement,
as more fully described in Article III.
SECTION 1.22. "JOINT STEERING COMMITTEE". Joint Steering Committee
means a committee comprised of an appropriate number of representatives of
Millennium and Aventis to plan and oversee the activities contemplated by this
Agreement, as well as the activities of the Parties under the Technology
Development Agreement and the Inflammation Agreement, as may be provided in such
agreements.
SECTION 1.23. "JOINT TECHNOLOGY TRANSFER TEAM". Joint Technology
Transfer Team means a committee comprised of an appropriate number of
representatives of Aventis and Millennium to plan and oversee Technology
Transfer, as more fully described in Article III.
SECTION 1.24. "MILLENNIUM EXISTING PROCESS TECHNOLOGY". Millennium
Existing Process Technology means Process Technology of the types listed in
SCHEDULE I attached to this Agreement which (a) is solely or jointly owned by
Millennium or any of its Affiliates, or (b) is licensed by Millennium or its
Affiliates from Third Parties, in each case as of the Effective Date (but only
to the extent that transfer or sublicensing is permitted by any applicable
agreements with Third Parties). Millennium Existing Process Technology
specifically excludes Direct Acquired Technology, Direct Licensed Software,
Sublicensed Software, Millennium Product-Process Tool Technology and Millennium
Research-Stage Process Technology. EXHIBIT C sets
5
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
forth a list of all agreements under which the consent of any Third Party is
required as of the Execution Date for the transfer of any material component of
Millennium Existing Process Technology during the First Contract Year and
currently expected to be transferred or sublicensed during the Second Contract
Year prior to the first anniversary of the Effective Date in connection with
Technology Transfer during the First Contract Year. Commencing with the Second
Contract Year, agreements under which consent of any Third Party is required for
the transfer of any material component of Millennium Existing Process Technology
during each succeeding Contract Year shall be set forth in the Technology
Transfer Plan for such Contract Year.
SECTION 1.25. "MILLENNIUM INFORMATICS TECHNOLOGY". Millennium
Informatics Technology means that portion of Millennium Process Technology
that consists of software (including the interfaces developed by Millennium
between the Millennium Process Technology and the Third Party Software) which
is useful for, among other things, the storage, retrieval, analysis, mining
or integration of data or for the management of laboratory information or
samples, in each case, in connection with the other types of Process
Technology listed in SCHEDULE I attached to this Agreement, PROVIDED THAT
Millennium Informatics Technology shall not include software tools used to
develop the Millennium Informatics Technology. [**] which, as of the
Execution Date, [**] during such time period. Commencing with the [**] during
each [**] shall be set forth in the [**].
SECTION 1.26. "MILLENNIUM NEW PROCESS TECHNOLOGY". Millennium New
Process Technology means Process Technology of the types listed in SCHEDULE I
attached to this Agreement which (a) is solely or jointly owned by Millennium or
any of its Affiliates, or (b) is licensed by Millennium or any of its Affiliates
from Third Parties, in each case during the Agreement Term (but only to the
extent that transfer or sublicensing is permitted by any applicable agreements
with Third Parties). Millennium New Process Technology specifically excludes
Direct Acquired Technology, Direct Licensed Software, Sublicensed Software,
Millennium Product-Process Tool Technology, Millennium Research-Stage Process
Technology, Millennium Existing Process Technology, Millennium Process
Technology Improvements, and Development Program Technology. Commencing with the
Second Contract Year, agreements under which consent of any Third Party is
required for the transfer of any material component of Millennium New Process
Technology during each succeeding Contract Year shall be set forth in the
Technology Transfer Plan for such Contract Year.
SECTION 1.27. "MILLENNIUM ONCOLOGY VACCINE TECHNOLOGY". Millennium
Oncology Vaccine Technology means Product Technology consisting of a gene, or
protein encoded thereby, and the related data relevant for the Oncology Vaccine
Field that is recommended by the Joint Oncology Vaccine Committee to the Joint
Technology Transfer Team for transfer to Aventis pursuant to the criteria set
forth in the Technology Transfer Plan (each a "Vaccine Target"), which gene or
protein and/or related data (a) is solely or jointly owned by Millennium
6
or any of its Affiliates, or (b) is licensed to Millennium or any of its
Affiliates, in each case as of the Effective Date or during the Agreement Term
(but only to the extent that transfer or sublicensing is permitted by any
applicable agreements with Third Parties). Millennium Oncology Vaccine
Technology specifically excludes the materials and information described in
EXHIBIT F.
SECTION 1.28. "MILLENNIUM ONCOLOGY VACCINE TECHNOLOGY PATENT RIGHTS
AND COPYRIGHTS". Millennium Oncology Vaccine Technology Patent Rights and
Copyrights means Patent Rights and copyrights that Cover Millennium Oncology
Vaccine Technology.
SECTION 1.29. "MILLENNIUM PROCESS TECHNOLOGY". Millennium Process
Technology means Millennium Existing Process Technology, Millennium New Process
Technology, Millennium Process Technology Improvements, and Millennium
Product-Process Tool Technology, including without limitation the Millennium
Informatics Technology associated with each of the foregoing components.
Millennium Process Technology specifically excludes Direct Acquired Technology,
Direct Licensed Software, Sublicensed Software, Millennium Research-Stage
Process Technology, Development Program Technology and Product Technology,
except to the extent that the Product Technology has a use and is used as
Millennium Product-Process Tool Technology.
SECTION 1.30. "MILLENNIUM PROCESS TECHNOLOGY IMPROVEMENTS". Millennium
Process Technology Improvements means Process Technology of the types listed in
SCHEDULE I attached to this Agreement that consists of improvements,
enhancements or modifications of or to Millennium Process Technology which (a)
are solely or jointly owned by Millennium or any of its Affiliates, or (b)
licensed by Millennium or any of its Affiliates from Third Parties, in each case
during the Agreement Term (but only to the extent that transfer or sublicensing
is permitted by any applicable agreements with Third Parties). Commencing with
the Second Contract Year, agreements under which consent of any Third Party is
required for the transfer of any material component of Millennium Process
Technology Improvements during each succeeding Contract Year shall be set forth
in the Technology Transfer Plan for such Contract Year.
SECTION 1.31. "MILLENNIUM PROCESS TECHNOLOGY PATENT RIGHTS AND
COPYRIGHTS". Millennium Process Technology Patent Rights and Copyrights means
Patent Rights and copyrights that cover Millennium Process Technology.
SECTION 1.32. "MILLENNIUM PRODUCT-PROCESS TOOL TECHNOLOGY". Millennium
Product-Process Tool Technology means Product-Process Tool Technology which (a)
is solely or jointly owned by Millennium or any of its Affiliates, or (b) has
been licensed by Millennium or any of its Affiliates from Third Parties, in each
case as of the Effective Date or during the Agreement Term (but only to the
extent that transfer or sublicensing is permitted by any applicable agreements
with Third Parties). EXHIBIT C sets forth a list of all agreements under which
the consent of any Third Party is, as of the Execution Date, required for the
transfer or sublicensing of any material component of existing Millennium
Product-Process Tool Technology during the First Contract Year and currently
expected to be transferred or sublicensed during the Second Contract Year prior
to the first anniversary of the Effective Date in connection with Technology
Transfer during such time period. Commencing with the Second Contract Year,
agreements under which the consent of any Third Party is required for the
transfer or sublicensing of any
7
material component of Millennium Product-Process Tool Technology during each
succeeding Contract Year shall be set forth in the Technology Transfer Plan for
such Contract Year.
SECTION 1.33. "MILLENNIUM PRODUCT-PROCESS TOOL TECHNOLOGY PATENT
RIGHTS AND COPYRIGHTS". Millennium Product-Process Tool Technology Patent Rights
and Copyrights means Patent Rights and copyrights that cover Millennium
Product-Process Tool Technology.
SECTION 1.34. "MILLENNIUM RESEARCH-STAGE PROCESS TECHNOLOGY".
Millennium Research-Stage Process Technology means Process Technology of the
types listed in SCHEDULE I attached to this Agreement that is under development
by Millennium or any of its Affiliates and which (a) is solely or jointly owned
by Millennium or any of its Affiliates or (b) has been licensed by Millennium or
any of its Affiliates from Third Parties, in each case as of the Effective Date
or during the Agreement Term (but only to the extent that transfer or
sublicensing is permitted by any applicable agreements with Third Parties).
Under development by Millennium shall mean that, with respect to the specific
function for which transfer is desired or contemplated, there has been no full
implementation of the technology at Millennium by the relevant research group
for that specific function, the technology is not fully supported within
Millennium, or the technology is not ready for supported transfer to Third
Parties. EXHIBIT C sets forth a list of all agreements under which the consent
of any Third Party is required as of the Execution Date for the transfer or
sublicensing of any material component of existing Millennium Research-Stage
Process Technology during the First Contract Year and currently expected to be
transferred or sublicensed during the Second Contract Year prior to the first
anniversary of the Effective Date in connection with Technology Transfer during
such time period. Commencing with the Second Contract Year, agreements under
which the consent of any Third Party is required for the transfer or
sublicensing of any material component of Millennium Research-Stage Process
Technology during each succeeding Contract Year shall be set forth in the
Technology Transfer Plan for such Contract Year. Millennium Research-Stage
Process Technology specifically excludes Direct Acquired Technology, Direct
Licensed Software, Sublicensed Software, Development Program Technology, and
Product Technology, except to the extent that the Product Technology has a use
and is used as Millennium Product-Process Tool Technology.
SECTION 1.35. "NET SALES". Net Sales means the gross amount invoiced
by Aventis and/or its Affiliates and sublicensees on account of sales of
Oncology Vaccine Product(s) to Third Parties (including without limitation
Third Party distributors and wholesalers), less the total of:
8
(a) Trade, cash and/or quantity discounts not already
reflected in the amount invoiced;
(b) Excise, sales and other consumption taxes (including VAT
on the sale of Oncology Vaccine Products) and custom duties to the extent
included in the invoice price;
(c) Freight, insurance and other transportation charges to the
extent included in the invoice price;
(d) Amounts repaid or credited by reason of rejections,
defects, recalls or returns or because of chargebacks, retroactive price
reductions, refunds or billing errors; and
(e) Compulsory payments and rebates directly related to the
sale of Oncology Vaccine Products, accrued, paid or deducted pursuant to
agreements (including, but not limited to, managed care agreements) or
governmental regulations.
Use of Oncology Vaccine Products for promotional or sampling purposes and for
use in clinical trials contemplated under this Agreement shall not be considered
in determining Net Sales.
In the case of any sale of any Oncology Vaccine Product between or among Aventis
and its Affiliates or sublicensees for resale, Net Sales shall be calculated as
above only on the value charged or invoiced on the first arm's length sale
thereafter to a Third Party. In the case of any other sale for value, such as
barter or counter-trade, of any Oncology Vaccine Product, or part thereof, other
than in an arm's length transaction exclusively for money, Net Sales shall be
calculated as above on the value of the consideration received.
In the event an Oncology Vaccine Product is sold as part of a Combination
Product (as defined below), the Net Sales from the Combination Product, for the
purposes of determining royalty payments, shall be determined by multiplying the
Net Sales of the Combination Product (as defined in the standard Net Sales
definition), during the applicable royalty reporting period, by the fraction,
A/A+B, where A is the weighted (by sales volume) average sale price of the
Oncology Vaccine Product when sold separately in finished form in the country in
which the Combination Product is sold and B is the weighted (by sales volume)
average sale price of the other product(s) included in the Combination Product
when sold separately in finished form in the country in which the Combination
Product is sold, in each case during the applicable royalty reporting period or,
if sales of both the Oncology Vaccine Product and the other product(s) did not
occur in such period, then in the most recent royalty reporting period in which
sales of both occurred. In the event that such average sale price cannot be
determined for both the Oncology Vaccine Product and all other products(s)
included in the Combination Product, Net Sales for the purposes of determining
royalty payments shall be mutually agreed by the Parties based on the relative
value contributed by each component, such agreement not to be unreasonably
withheld.
As used above, the term "Combination Product" means any product which comprises
the Oncology Vaccine Product and other active compounds or Vaccine products
which can be used separately as prophylactic or therapeutic agents.
9
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
SECTION 1.36. "ONCOLOGY VACCINE FIELD". Oncology Vaccine Field means
the use of Vaccines in the prevention, control and/or treatment of all forms of
cancer, [**].
SECTION 1.37. "ONCOLOGY VACCINE PRODUCT". Oncology Vaccine Product
means a Vaccine for use in the Oncology Vaccine Field that (a) is based upon,
derived from or otherwise developed through the use of Millennium Oncology
Vaccine Technology, or (b) is covered by a Valid Claim of Patent Rights included
in the Millennium Oncology Vaccine Technology Patent Rights and Copyrights.
SECTION 1.38. "PARTY" OR "PARTIES". Party means Aventis or Millennium;
"Parties" means Aventis and Millennium.
SECTION 1.39. "PATENT RIGHT". Patent Right means all existing patents
and patent applications and all patent applications hereafter filed, including
any continuations, continuations-in-part, divisions, provisionals or any
substitute applications, any patent issued with respect to any such patent
applications, any reissue, reexamination, renewal or extension (including any
supplemental patent certificate) of any such patent, and any confirmation patent
or registration patent or patent of addition based on any such patent, and all
foreign counterparts of any of the foregoing.
SECTION 1.40. "PROCESS TECHNOLOGY". Process Technology means methods,
systems, programs, technology and software, together with the know-how related
thereto, for the research, discovery, production and/or characterization of
genes, nucleic acids, proteins, peptides and/or small molecules. Process
Technology shall include Product-Process Tool Technology.
SECTION 1.41. "PRODUCT-PROCESS TOOL TECHNOLOGY". Product-Process Tool
Technology means Product Technology that is used as a tool for the discovery
and/or development of Process Technology or that is necessary for the operation,
verification or calibration of Process Technology. Product-Process Tool
Technology shall include materials, and data related thereto, that are required
to discover, develop, operate, verify or calibrate procedures that are part of
Process Technology, provided that the utility of such materials and data in such
procedures is not specific for a particular product or service. By way of
example, a chemical library used to derive an algorithm for toxicity prediction
is Product-Process Tool Technology, but a chemical library used to identify
ligands for a receptor is not Product-Process Tool Technology.
SECTION 1.42. "PRODUCT TECHNOLOGY". Product Technology means
technology in the form of biological materials (e.g. genes, gene fragments,
vectors, cell lines, cells, organelles, DNA and DNA fragments, proteins and
peptides) and chemical compounds (e.g. small molecule and natural product
compounds and libraries) and data relating to the foregoing; PROVIDED THAT
Product Technology does not include methods, systems, programs, technology and
software included in Process Technology.
SECTION 1.43. "PROHIBITED FIELD". Prohibited Field means (a) the
research, development or commercialization of (i) [**] in the [**], (ii) [**],
or (iii) [**] for the [**] of the [**];
10
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
(b) [**] to the [**] in subsection (a) above; and (c) [**]. Notwithstanding
the foregoing, [**] (each as defined by the U.S. Food and Drug
Administration) [**] the Prohibited Field. Within the Prohibited Field,
"PLANT AGRICULTURE FIELD" means those fields recited in subsections (a)(i)
and (a)(ii) of the definition of Prohibited Field, "NUTRITION FIELD" means
the field recited in subsection (b) of the definition of Prohibited Field,
and "BOVINE FIELD" means the fields recited in subsections (a)(iii) and (c)
of the definition of Prohibited Field.
SECTION 1.44. "REGULATORY APPROVAL". Regulatory Approval means any and
all approvals (including any applicable governmental price and reimbursement
approvals), licenses, registrations, or authorizations of any federal, national,
multinational, state, provincial or local regulatory agency, department, bureau
or other governmental entity necessary for the manufacture, use, storage,
import, transport, promotion, marketing and sale of a product in a country.
SECTION 1.45. "SELECTED VACCINE TARGET". Selected Vaccine Target
means a Vaccine Target which has been selected by Aventis for transfer to
Aventis.
SECTION 1.46. "SIGNIFICANT AGRICULTURAL ENTERPRISE". Significant
Agricultural Enterprise means (a) a company which, together with its Affiliates,
had worldwide annual revenues from the sale of products in the Plant Agriculture
Field in excess of $[**] during its most recently completed fiscal year, and
(b) any Affiliates of such company.
SECTION 1.47. "SIGNIFICANT PHARMACEUTICAL ENTERPRISE". Significant
Pharmaceutical Enterprise means (a) a company (other than Aventis or an
Aventis Affiliate) which, together with its Affiliates, had worldwide annual
revenues from the sale of pharmaceutical products in excess of $[**] during
its most recently completed fiscal year, and (b) any Affiliates of such
company.
SECTION 1.48. "SUBLICENSED SOFTWARE". Sublicensed Software means
the software owned by Third Parties that is to be sublicensed by Millennium
to Aventis hereunder. [**], which as of the Execution Date, [**] during such
time period. Commencing with the [**] during each [**] shall be set forth in
the [**].
SECTION 1.49. "TECHNOLOGY DEVELOPMENT AGREEMENT". Technology
Development Agreement means the Technology Development Agreement between Aventis
and Millennium dated as of the Execution Date.
SECTION 1.50. "TECHNOLOGY TRANSFER". Technology Transfer means the
transfer of the Millennium Process Technology, Millennium Product-Process Tool
Technology, Millennium
11
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Research-Stage Process Technology, and Millennium Oncology Vaccine Technology,
together with related evaluation and development activities, to be undertaken by
the Parties pursuant to this Agreement. Subject to the provisions of Section
3.2(d)(iii), Technology Transfer shall also mean the transfer of any
co-developed Millennium Process Technology, Millennium Product-Process Tool
Technology or Millennium Research-Stage Process Technology undertaken by the
Parties and transferred to Aventis as part of this Agreement.
SECTION 1.51. "TECHNOLOGY TRANSFER PLAN". Technology Transfer Plan
means the plan to be developed by the Joint Technology Transfer Team for each
Contract Year, to be updated as necessary during each Contract Year, setting
forth, among other things, a master plan for Technology Transfer during the
Agreement Term and the matters described in Section 3.4. EXHIBIT D (which is
entitled Year One Technology Transfer Plan) sets forth the Technology Transfer
Plan for the First Contract Year and for the Second Contract Year prior to the
first anniversary of the Effective Date, reflecting the master plan and the
detailed plan for the First Contract Year and for the Second Contract Year prior
to the first anniversary of the Effective Date.
SECTION 1.52. "TERRITORY". Territory means all countries of the world.
SECTION 1.53. "THIRD PARTY". Third Party means any person or entity
other than a Party and its Affiliates.
SECTION 1.54. "THIRD PARTY SOFTWARE". Third Party Software means the
Direct Licensed Software and the Sublicensed Software.
SECTION 1.55. "UPGRADE". Upgrade means a fully-supported revision of a
component of the Millennium Informatics Technology (including for example, error
corrections, enhancements, modifications, improvements, new releases and new
functionality). Upgrade specifically excludes interim corrections and
modifications to Millennium Informatics Technology.
SECTION 1.56. "VACCINE". Vaccine means a product that contains a
prophylactic or therapeutic agent that acts by inducing a humoral and/or
cell-mediated immune response directed specifically against an antigen.
SECTION 1.57. "VALID CLAIM". Valid Claim means a claim (a) of any
issued, unexpired patent which has not been revoked or held unenforceable or
invalid by a decision of a court or governmental agency of competent
jurisdiction from which no appeal can be taken, or with respect to which an
appeal is not taken within the time allowed for appeal, and which has not
been disclaimed, denied or admitted to be invalid or unenforceable through
reissue, disclaimer or otherwise, or (b) of any patent application which
shall not have been cancelled, withdrawn, abandoned nor been pending for more
than [**] from the earliest priority date claimed for such application.
SECTION 1.58. "ADDITIONAL DEFINITIONS". Each of the following
definitions is set forth in the section of this Agreement indicated below:
12
Definition Section/article
---------- ---------------
Additional Services Records 5.4(a)
Additional Source Code 2.2(b)
Authorized Servers 2.2(c)(i)
Aventis Introduction
Aventis Indemnified Parties 12.1(b)
Aventis Requested Modification 3.1(h)
Bovine Field 1.42
Breaching Party 9.3(a)
Burdened Technology Obligations 3.3(b)
Completion 3.4(b)
Completion Criteria 3.4(a)(xi)
Critical Error Schedule II
Deliverables 5.1(b)(i)
Delivery 3.4(b)
Delivery Criteria 3.4(a)(x)
Delivery and Completion Payments 5.1(b)
Designated Inventions 7.4
DOJ 13.2(a)
Execution Date Introduction
First Contract Year 1.9
FTC 13.2(b)
HSR Act 13.2(c)
HSR Clearance Date 13.2(d)
HSR Filing 13.2(e)
Informatics Source Code 2.2(b)
Infringement Notice 7.6(a)
Infringement Proceeding 7.6(b)
Intellectual Property 11.7(a)
Inventions 7.1(a)
Joint Invention 7.1(c)
Major Error Schedule II
Millennium Introduction
Millennium Indemnified Parties 12.1(a)
Minor Error Schedule II
Monsanto 2.4
Monsanto Field 2.4
Non-Breaching Party 9.3(a)
Nutrition Field 1.42
Oncology Vaccine Transfer Plan 3.3(a)
Plant Agriculture Field 1.42
Process Technology Category Schedule I
Quarterly Payment 5.1(a)
Second Contract Year 1.9
Self-Help Code 11.8(c)
Sixth Contract Year 1.9
13
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Source Code 2.2(b)
Specified Payment Amount 5.1(b)(vi)
Specified Process Technology 7.6(e)
Statement of Work 3.1(h)
Support Hours Schedule II
Third Contract Year 1.9
Transferred Millennium Process Technology 3.1
Vaccine Target 1.26
ARTICLE II
GRANTS OF RIGHTS TO AVENTIS
SECTION 2.1. MILLENNIUM LICENSE GRANTS.
(a) MILLENNIUM PROCESS TECHNOLOGY. Subject to the terms
and conditions of this Agreement, including the provisions of Section 2.2,
Millennium hereby grants to Aventis and its Affiliates a non-exclusive,
non-royalty bearing and perpetual right and irrevocable license and/or
sublicense, as applicable, in the Territory to the Millennium Process
Technology transferred or co-developed during each Contract Year and the
related Millennium Process Technology Patent Rights and Copyrights to (i)
research, develop, make, have made, use and practice process technologies in
the Field and (ii) research, develop, make, have made, distribute for sale,
sell, offer to sell, use, practice, import and export products and services
in the Field, PROVIDED THAT, Aventis and its Affiliates shall not have the
right to distribute for sale, sell or offer for sale, or sublicense others to
distribute for sale, sell or offer for sale, products or services that
constitute or comprise, or whose functionality is [**], Millennium Process
Technology. Anything to the contrary notwithstanding, the foregoing
limitation is not intended to restrict the ability of Aventis and its
Affiliates to distribute for sale, sell or offer for sale products which are
pharmaceuticals, biologics, diagnostics or medical devices, or any medical
services related to the foregoing. The foregoing license shall specifically
exclude Millennium Product-Process Tool Technology and any Millennium
Product-Process Tool Technology Patent Rights and Copyrights.
(b) MILLENNIUM PRODUCT-PROCESS TOOL TECHNOLOGY. Subject to
the terms and conditions of this Agreement, Millennium hereby grants to Aventis
and its Affiliates a non-exclusive, non-royalty bearing and perpetual right and
irrevocable license and/or sublicense, as applicable, in the Territory to the
Millennium Product-Process Tool Technology transferred or co-developed during
each Contract Year and the related Millennium Product-Process Tool Technology
Patent Rights and Copyrights solely for (i) use as a tool for the discovery and
development of Process Technology for use in the Field or (ii) the operation,
verification or calibration of Process Technology for use in the Field. For
purposes of clarity, Aventis and its Affiliates shall not have the right to (x)
use Millennium Product-Process Tool Technology as Product Technology (e.g., to
create copies, modifications or derivatives of Millennium Product-Process Tool
Technology to discover or develop products which constitute Product Technology
or to use Millennium Product-Process Tool Technology as the basis for the
discovery or development of therapeutic or prophylactic products that are
directed to or modulate the activity of the Millennium Product-Process Tool
Technology) or (y) distribute for sale, sell, or offer for sale, or sublicense
others to distribute for sale, sell or offer for sale, products or services that
14
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
constitute or comprise, or whose functionality is [**] Millennium
Product-Process Tool Technology. Anything to the contrary notwithstanding,
the foregoing limitation is not intended to restrict the ability of Aventis
and its Affiliates to distribute for sale, sell or offer for sale products
which are pharmaceuticals, biologics, diagnostics or medical devices, or any
medical services relating to the foregoing, so long as such products are
discovered and developed by Aventis and its Affiliates independent of the use
of Millennium Product-Process Tool Technology as Product Technology.
(c) SUBLICENSED SOFTWARE. Subject to the terms and
conditions of this Agreement, including the provisions of Section 2.2,
Millennium hereby grants to Aventis and its Affiliates a non-exclusive,
non-transferable sublicense in the Territory to each component of Sublicensed
Software transferred during each Contract Year for use in the Field, PROVIDED
THAT Aventis has paid to Millennium the appropriate fees for each such
sublicense [**] and Aventis complies with any additional requirements of each
such sublicense. With respect to each component of Sublicensed Software to be
transferred during the First Contract Year and currently expected to be
transferred during the Second Contract Year prior to the first anniversary of
the Effective Date, [**] and to the [**], and [**]. With respect to each [**]
and the [**] shall be [**], and [**] to such [**] shall be [**] any such [**]
that it [**] to be [**].
(d) MILLENNIUM ONCOLOGY VACCINE TECHNOLOGY. Subject to the
Burdened Technology Obligations as defined in Section 3.3(a), the terms of
Section 6.3, and the terms and conditions of this Agreement, Millennium hereby
grants to Aventis and its Affiliates an exclusive, royalty-bearing and perpetual
right and license and/or sublicense, as applicable, including the right to grant
sublicenses, in the Territory to the Millennium Oncology Vaccine Technology for
the Selected Vaccine Targets transferred during each Contract Year and the
related Millennium Oncology Vaccine Technology Patent Rights and Copyrights, to
research, develop, make, have made, use, distribute for sale, sell, offer to
sell, practice, import and export Oncology Vaccine Products in the Oncology
Vaccine Field. Notwithstanding the foregoing, Aventis and its Affiliates may not
grant a sublicense to the Millennium Oncology Vaccine Technology to any Third
Party primarily engaged in the business of gene discovery, without the prior
written consent of Millennium.
(e) SUBLICENSES.
(i) GENERAL. Except as specifically provided in
this subsection (e), the license rights set
forth in Sections 2.1(a) and 2.1(b) shall not
be sublicensable or transferable by Aventis
and its Affiliates to a
15
Third Party. In no event shall the license
rights set forth in Section 2.1(c) be
sublicensable or transferable by Aventis and
its Affiliates to a Third Party.
(ii) INTERNAL COLLABORATIVE USE. Aventis and its
Affiliates may use internally the Millennium
Process Technology for the benefit of a Third
Party in a bona fide collaboration in the
Field between Aventis and/or its Affiliates
and such Third Party.
(iii) SUBLICENSE RIGHT TO MILLENNIUM PROCESS
TECHNOLOGY. Aventis and its Affiliates may
grant a sublicense to, and/or transfer,
Millennium Process Technology to a Third Party
only if all of the following conditions are
satisfied:
(A) such Third Party is engaged in a bona
fide collaboration in the Field with Aventis
or any of its Affiliates;
(B) such Third Party does not have a primary
business focus of providing Process Technology
to third parties or providing services and/or
data relating to the identification and
characterization of genetic materials,
proteins and small molecules to Third Parties;
(C) the sublicense and/or transfer is limited
to one or more of the Process Technology
Categories set forth on SCHEDULE I attached to
this Agreement, plus any related
Automation/Robotics and/or Informatics
Technologies (as such terms are used in
SCHEDULE I attached to this Agreement)
necessary to practice such Process Technology
Categories, PROVIDED THAT any sublicense
and/or transfer shall include only the minimum
amount of technology reasonably required to
meet the purposes of the collaboration with
such Third Party, and FURTHER PROVIDED THAT
Aventis shall first obtain Millennium's
written consent, not to be unreasonably
withheld, if the sublicense or transfer covers
more than one Process Technology Category;
(D) the sublicense and/or transfer is limited
to the use of the sublicensed/transferred
Millennium Process Technology in the course of
the bona fide collaboration referenced in
subsection (A);
(E) the sublicense and/or transfer does not
include any Source Code;
the sublicense and/or transfer agreement requires the Third Party to comply with
provisions comparable to those set forth in Sections 2.1(a), 2.1(b) and 12.8 and
Article VIII, and shall also include provisions that prohibit the reverse
engineering, decompiling, disassembling, or creating derivative works, of any
software; and
16
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
(F) Aventis believes in good faith that there
is no material risk of unauthorized usage or
public disclosure of the Millennium Process
Technology by such Third Party.
(iv) NOTICE OF SUBLICENSEES. Aventis shall provide
notice to Millennium regarding each sublicense
granted and/or transfer made pursuant to the
provisions of Section 2.1(e)(iii), including
the identity of the sublicensee/transferee and
the Millennium Process Technology included in
such sublicense/transfer.
(f) RELEASE FROM RESTRICTIONS. Notwithstanding the
sublicensing restrictions of Sections 2.1(a)(ii), 2.1(b)(y) and 2.1(e) (but
still subject to the general scope of the licensing grant and the specific
licensing restrictions of Section 2.1(b)(x)):
(i) With respect to each component of Millennium
Process Technology, during the period
commencing on the [**] anniversary of the
transfer of such component to Aventis and
ending on the [**] anniversary of the transfer
of such component to Aventis, Aventis and its
Affiliates shall have the right to (1)
distribute for sale, sell, or offer to sell
products or services in the Field that
comprise the Millennium Process Technology and
(2) grant sublicenses to and/or transfer the
Millennium Process Technology included in such
products or services to Third Parties so long
as (A) the functionality of such products or
services is not [**] the Millennium Process
Technology, (B) such sales, sublicenses and
transfers are not part of a general business
of selling or providing access to process
technologies or data to Third Parties, and
(C) such Third Parties are not in the
business of selling or providing access to
process technologies or primarily in the
business of selling or providing access to
data to other Third Parties.
(ii) With respect to each component of Millennium
Process Technology, commencing on the [**]
anniversary of the transfer of such component
to Aventis, Aventis and its Affiliates shall
have the right to (1) distribute for sale,
sell, or offer to sell products or services
in the Field that comprise the Millennium
Process Technology and (2) grant sublicenses
to and/or transfer the Millennium Process
Technology included in such products or
services to Third Parties so long as (A)
such sales, sublicenses and transfers are
not part of a general business of selling
or providing access to process technologies
or data to Third Parties, and (B) such Third
Parties are not in the business of selling
or providing access to process technologies
or primarily in the business of selling or
providing access to data to other Third
Parties.
17
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
(iii) Sublicenses and/or transfers made pursuant to
this Section 2.1(f) shall be subject to, and
made in compliance with, the provisions of
Sections 2.1(e)(iii)(E) and (F).
(iv) Anything herein to the contrary
notwithstanding, in no event shall the license
rights set forth in Section 2.1(c) be
sublicensable or transferable by Aventis and
its Affiliates to a Third Party.
SECTION 2.2. SPECIAL PROVISIONS RELATING TO SOFTWARE.
(a) MILLENNIUM INFORMATICS TECHNOLOGY. The license granted
in Section 2.1(a) with respect to the Millennium Informatics Technology shall be
limited to (i) the right to use, copy and internally distribute the Millennium
Informatics Technology, and (ii) the right to prepare derivative works of the
Millennium Informatics Technology. Derivative works shall, for the purposes of
this Article II, be treated as Millennium Informatics Technology. The right of
Aventis and its Affiliates to grant sublicenses to, and to transfer, the
Millennium Informatics Technology to Third Parties pursuant to Section 2.1(e)
shall be limited to object code forms only of the Millennium Informatics
Technology.
(b) ACCESS TO SOURCE CODE. Aventis shall have access during
the Agreement Term, upon [**]. Upon release of the Informatics Source Code
and/or Additional Source Code (collectively, "Source Code") to Aventis,
Millennium hereby grants to Aventis and its Affiliates a non-exclusive,
non-transferable, right and license and/or sublicense, as applicable, in the
Territory to such Source Code, to modify, enhance, and prepare derivative works
and support internal use by Aventis and its Affiliates, of such Source Code,
PROVIDED THAT under no circumstances shall such license grant be interpreted as
granting Aventis or its Affiliates the right to sublicense, transfer,
distribute, or otherwise make available to a Third Party such Source Code. Any
such modification, enhancement, preparation of derivative works, or internal
support of Source Code for Aventis and its Affiliates may be performed by
independent contractors of Aventis or its Affiliates, PROVIDED, that each such
independent contractor agrees in writing to be bound by the same level of
confidentiality as Aventis, and in particular the restrictions in Section
2.2(c), prior to having any access to the Source Code, and all such efforts are
conducted at the facilities of Aventis or its Affiliates.
(c) RESTRICTIONS ON SOURCE CODE. In addition to the
confidentiality provisions set forth in Article VII, Source Code shall be
subject to the following restrictions:
(i) Such Source Code shall be stored on no more
than [**] client servers (the "Authorized
Servers") at the facilities of Aventis for
[**] years after such Source Code is released
and no more than [**] Authorized Servers
thereafter.
(ii) Such Source Code shall be stored in files on
each such Authorized Server which are password
protected and which can be accessed only by
authorized people having a need to access such
18
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Source Code for the purpose of exercising
Aventis' rights under this Agreement, and for
which a log of all authorized users and their
dates of access are kept.
(iii) The type and serial number of each Authorized
Server shall be provided to Millennium
reasonably promptly after installation on such
Authorized Server; provided, however, that
such Source Code may be relocated at any time
in Aventis' sole discretion without the
consent of Millennium. Aventis shall, however,
notify Millennium of the new location within
five (5) days after relocation.
(iv) The media on which the Source Code is
delivered shall be kept in a locked storage
location when not in use.
(v) Once any Source Code has been released to
Aventis, Aventis shall not distribute to a
Third Party any software which provides
functions similar thereto, unless such
software is developed by employees or
independent contractors of Aventis, who have
not accessed the Source Code. In order to
establish such independent development,
Aventis shall maintain access logs recording
the names and dates of access to Source Code.
(vi) Aventis shall also keep development records
for any other software it develops that
provides functions substantially similar to
any released Source Code or applications which
incorporate such Source Code including dates
of development of each module and the names of
the people working on such module.
No more than once a year, upon reasonable notice and during business hours,
Millennium shall have a right to inspect the facilities of Aventis at which the
Authorized Servers reside, and review the access logs and development records
for such software, to make sure that Aventis has complied with the terms of this
Section 2.2(c). The restrictions set forth in the foregoing subsections (ii) and
(iv) shall be perpetual while the restrictions set forth in the foregoing
subsection (iii) shall expire [**] years after such Source Code is released, and
the restrictions set forth in the foregoing subsections (v) and (vi) shall
expire [**] years after the date the relevant Source Code is released to
Aventis. In addition to the foregoing, any Source Code that becomes generally
known to the public through no fault or omission on the part of Aventis or any
of its Affiliates, contractors, consultants, or agents shall cease to be subject
to the restrictions set forth in this Section 2.2(c).
(d) SUPPORT. Millennium shall provide support of the Source
Code as set forth in Article III.
19
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
SECTION 2.3. NONTRANSFERABLE. Except as expressly provided herein,
the licenses granted hereunder shall be nontransferable by Aventis without the
prior written consent of Millennium.
SECTION 2.4. PROHIBITED FIELD. Aventis acknowledges that
Millennium has agreed to exclusively transfer and license Millennium's rights
to certain Process Technology in the Prohibited Field to Monsanto Company and
Cereon Genomics LLC (collectively "Monsanto") and that, pursuant to such
agreement, Millennium has certain ongoing obligations to Monsanto which
restrict Millennium from transferring such Process Technology for use, or
from granting licenses to Aventis or a Third Party, in the Prohibited Field.
With respect to [**], the Parties agree that at such [**], (a) if Millennium,
[**] licensing agreement [**] with a [**] with respect to [**], Millennium
shall [**] the licenses set forth in this Article II [**] (provided, however,
that, [**] and licensing agreement [**], then the [**] set forth in this
Article II [**] a [**] in such [**], and (b) if Millennium, [**] licensing
agreement [**] with a [**] licensing agreement [**] set forth in this Article
II [**] license under [**]. Anything to [**], Millennium shall have [**] to
the provisions of this Section 2.4.
ARTICLE III
TECHNOLOGY TRANSFER
SECTION 3.1. TECHNOLOGY TRANSFER. Millennium will use commercially
reasonable efforts to undertake and effect the Technology Transfer in accordance
with the Technology Transfer Plan and to provide the Base Technology Transfer
Services to Aventis. In addition, Millennium will use commercially reasonable
efforts to effect the transfer of the significant majority of the Millennium
Process Technology to be transferred during the Agreement Term during the period
ending three (3) years after the Effective Date (taking into account any partial
transfers then in process) and the transfer of the high priority components of
the Millennium Existing Process Technology during the First and Second Contract
Year, in each case as may be
20
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
specified or otherwise provided in the Technology Transfer Plan. It is
specifically understood that Aventis shall be responsible for obtaining and
installing, at its own expense, Direct Acquired Technology, Direct Licensed
Software and equipment and hardware, and for employing appropriately trained
personnel, on a timely basis so as to facilitate the Technology Transfer, all in
accordance with the Technology Transfer Plan. Millennium Process Technology that
is transferred to Aventis pursuant to this Article III is referred to as
"Transferred Millennium Process Technology".
(a) KNOW-HOW. As part of Base Technology Transfer Services,
Millennium shall, as soon as reasonably practicable, make available to Aventis
any of its know-how reasonably necessary to use the Transferred Millennium
Process Technology and the Direct Acquired Technology and Third Party Software,
including but not limited to, methods for preparing, processing and analyzing
samples, and any Documentation. Aventis shall be responsible for the copying of
any know-how made available in written form.
(b) INSTALLATION. As part of Base Technology Transfer
Services, Millennium shall use commercially reasonable efforts to install, with
the commercially reasonable assistance of Aventis, the Millennium Process
Technology on the Informatics Platform obtained and configured by Aventis.
(c) INTEGRATION. As part of Base Technology Transfer
Services, Millennium shall reasonably cooperate with Aventis to [**]. To the
extent Millennium at its sole discretion elects to adopt any such source code
as Millennium Informatics Technology, Millennium will be subject to the same
support obligations as for other components of the Millennium Informatics
Technology.
(d) SUPPORT OBLIGATIONS. As part of Base Technology Transfer
Services, Millennium will provide support for: (i) the Millennium Process
Technology and (ii) the portions of Third Party Software modified by Millennium,
PROVIDED THAT all support for the Millennium Informatics Technology shall be in
accordance with the provisions of SCHEDULE II. While Base Technology Transfer
Services shall not in general include any services with respect to Direct
Acquired Technology or the unmodified portions of Third Party Software, Base
Technology Transfer Services shall include limited support for the unmodified
portions of the Third Party Software as set forth in SCHEDULE II. Base
Technology Transfer Services shall not include support for: modifications made
by Aventis to the Millennium Process Technology unless such modifications are
incorporated by Millennium into the Millennium Process Technology. In the event
that modifications by Aventis to the Millennium Process Technology materially
impact the level of support necessary for unmodified portions of Millennium
Process Technology then Millennium shall use commercially reasonable efforts in
assisting Aventis with the resolution of any problem with such unmodified
portion of Millennium Process Technology so impacted, and Aventis shall pay
Millennium commercially reasonable rates, on a time and material basis, plus any
additional expenses of Millennium (including without limitation travel costs and
living expenses) for the provision of such assistance.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(e) UPGRADES. As part of Base Technology Transfer Services,
Millennium shall (i) provide Aventis with interim corrections and modifications
to the Millennium Informatics Technology as they become available for transfer
to Aventis, (ii) notify the Joint Technology Transfer Team in writing of all
available Upgrades and (iii) install the Upgrades requested by Aventis in
accordance with the provisions of Section 3.2(e). Aventis shall use commercially
reasonable efforts to enable the installation of requested Upgrades as soon as
available from Millennium.
(f) TECHNOLOGY, SOFTWARE AND HARDWARE COSTS. Millennium
shall not be under any obligation to Aventis to pay for the acquisition of
any Direct Acquired Technology, Direct Licensed Software, or any equipment or
hardware, or the fees [**] for any Sublicensed Software [**]. In addition,
Millennium shall not be under any obligation to Aventis to pay the fees for
any future sublicensed technology listed in the Technology Transfer Plan.
(g) TRAINING. As part of Base Technology Transfer Services,
Millennium shall use commercially reasonable efforts to train Aventis personnel
in the use of the Millennium Process Technology and the use of the Direct
Acquired Technology and Third Party Software in conjunction with such Millennium
Process Technology. Such Aventis personnel shall have the appropriate technical
skill, consistent with generally acceptable industry standards, to be trained in
the use of Transferred Millennium Process Technology.
(h) AVENTIS REQUESTED MODIFICATIONS. If Aventis desires that
Millennium undertake a modification of any Millennium Informatics Technology,
Aventis shall submit a written request to Millennium detailing the functionality
and other specifications of the desired modification (an "Aventis Requested
Modification"). Within fifteen (15) days after Millennium's receipt of Aventis'
request for a Aventis Requested Modification, Millennium shall notify Aventis in
writing of whether or not Millennium is willing to submit a statement of the
terms and conditions under which Millennium is willing to develop the Aventis
Requested Modification for Aventis (a "Statement of Work"). At a minimum, any
Statement of Work prepared by Millennium shall include the fees and charges to
be paid by Aventis for the Aventis Requested Modification, an estimate of the
time period required to complete the Aventis Requested Modification, and the
Third Party services, equipment and other items, if any, that will be required
in connection with Millennium's development of the Aventis Requested
Modification. Within fifteen (15) days after Aventis receives a Statement of
Work, Aventis shall notify Millennium in writing if Aventis desires to have
Millennium provide the Aventis Requested Modification under the terms and
conditions in such Statement of Work.
SECTION 3.2. JOINT TECHNOLOGY TRANSFER TEAM.
(a) ESTABLISHMENT OF JOINT TECHNOLOGY TRANSFER TEAM. As soon
as practicable after the Execution Date, Aventis and Millennium shall establish
a Joint Technology Transfer Team, comprised of three (3) representatives
designated by Aventis and three (3) representatives designated by Millennium;
PROVIDED THAT Aventis and Millennium may designate an equal number of additional
representatives from time to time. Aventis and Millennium shall each make its
initial designation of its representatives not later than thirty (30) days after
the Execution
22
Date. Either Party may change its designees to the Joint Technology Transfer
Team at any time upon written notice to the other Party.
(b) PROGRAM DIRECTORS. Each Party shall appoint one of its
designees on the Joint Technology Transfer Team to serve as a program director
with responsibility for overseeing the day-to-day activities of the Parties
relating to Technology Transfer. The program directors shall, as appropriate,
appoint one or more project teams to facilitate the Technology Transfer.
(c) CONTACT PERSON. The program directors will identify
contact person(s) to serve as the primary contacts for the coordination,
delivery and receipt of the Base Technology Transfer Services and any Additional
Technology Transfer Services. Such contact person(s) shall be knowledgeable in
the coordination of delivery and receipt of the Transferred Millennium Process
Technology and shall have the appropriate technical skill, consistent with
generally acceptable industry standards, to be trained in the use of Transferred
Millennium Process Technology.
(d) RESPONSIBILITIES.
(i) GENERAL. The Joint Technology Transfer Team
shall be responsible for (A) preparing the
Technology Transfer Plan for each Contract
Year, including updating EXHIBITS A, B and C
to reflect such Technology Transfer Plan, (B)
planning and overseeing the Technology
Transfer, (C) reviewing and approving
amendments and updates to the Technology
Transfer Plan and EXHIBITS A, B and C for each
Contract Year, including, without limitation,
modifications to reflect any agreed-upon
transfer of additional or substitute
Millennium Process Technology or Millennium
Research-Stage Process Technology, (D)
monitoring compliance by the Parties with
their respective obligations under the
Technology Transfer Plan, including the
accomplishment of key objectives, and (E)
recommending to the Joint Steering Committee
when Delivery and Completion Payments are due
under the provisions of Section 5.1(b).
(ii) MILLENNIUM ONCOLOGY VACCINE TECHNOLOGY. The
Joint Technology Transfer Team shall be
responsible for (A) establishing the Joint
Oncology Vaccine Committee within forty-five
(45) days after the Execution Date, which
shall be comprised of at least one (1)
representative designated by Aventis and one
(1) representative designated by Millennium;
provided that by mutual agreement the Parties
may each designate an appropriate number of
additional representatives from time to time
or may change its representatives at any time
upon written notice to the other Party, (B)
appointing one of the representatives from
each Party to serve as a primary contact
person for the coordination and transfer of
Selected Vaccine Targets, (C) approving the
Oncology Vaccine Transfer
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Confidential Materials omitted and filed with the Securities and Exchange
Commission. Asterisks denote omissions.
Plan prepared by the Joint Oncology Vaccine
Committee to be used by Millennium for
Millennium's selection of the Vaccine Targets,
and (D) overseeing pursuant to Section 3.3,
the activities of the Joint Oncology Vaccine
Committee.
(iii) CO-DEVELOPMENT ACTIVITIES. The Parties
acknowledge that the Technology Transfer Plan
for the First Contract Year and Technology
Transfer Plans for subsequent Contract Years
may include certain co-development activities
to be undertaken by the Parties relating to
Millennium Process Technology, Millennium
Product-Process Technology or Millennium
Research-Stage Process Technology that will be
transferred to Aventis as part of this
Agreement. Despite the co-development nature
of such activities, the Joint Technology
Transfer Team shall be responsible for
planning and overseeing the co-development
activities of the Parties and such Technology
Transfer. Anything to the contrary
notwithstanding, the Parties acknowledge that
they will not enter into any co-development
activity under this Agreement unless both
Parties have mutually agreed to such
co-development activity and have the
contractual right to do so under their
respective agreements with Third Parties.
(e) JOINT TECHNOLOGY TRANSFER TEAM DECISIONS. All
decisions of the Joint Technology Transfer Team shall be made by unanimous
approval of Aventis and Millennium, with each Party having one vote. Subject
to the provisions of Section 3.2(d)(iii), if the Joint Technology Transfer
Team is unable to reach agreement on any issue, such issue shall be resolved
in accordance with the provisions of Article X, PROVIDED THAT [**] concerning
(i) [**] shall be [**], (ii) the [**] for the [**] and (iii) which [**] shall
be [**], in each case, consistent with the overall [**] for the [**],
including the [**] of such [**] during such [**] and the [**] for the [**] as
set forth in Section 5.1(b).
(f) MEETINGS. The Joint Technology Transfer Team shall
meet at least four (4) times per Contract Year. Such meetings shall be held
at such times and places as are mutually agreed upon by the Joint Technology
Transfer Team and may be conducted in person, by telephone or by video
conference. Each Party shall use commercially reasonable efforts to cause its
representatives to attend the meetings of the Joint Technology Transfer Team.
If a representative of a Party is unable to attend a meeting, such Party may
designate an alternate to attend such meeting in place of the absent
representative. In addition, each Party may, at its discretion, invite other
employees, and, with the consent of the other Party, consultants or
scientific advisors, to attend the meetings of the Joint Technology Transfer
Team. Either Party may convene a special meeting of the Joint Technology
Transfer Team for the purpose of resolving disputes upon reasonable advance
written notice to the other Party, including a description of the nature of
the dispute in reasonable detail, to all of the Joint Technology Transfer
Team members. The Parties
24
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
shall each bear their respective costs and expenses of attendance of Joint
Technology Transfer Team meetings by their respective representatives.
SECTION 3.3 SELECTION OF VACCINE TARGETS.
(a) ONCOLOGY VACCINE TRANSFER PLAN. The Joint Oncology
Vaccine Committee shall, within sixty (60) days following its formation, prepare
an "Oncology Vaccine Transfer Plan" which shall, at a minimum, include the
criteria to be used by Millennium for the selection of Vaccine Targets.
(b) MILLENNIUM'S RESPONSIBILITIES. Millennium shall (i) use
commercially reasonable efforts to identify [**] Vaccine Targets during each
Contract Year after the First Contract Year, which Vaccine Targets shall, in the
sole judgment of Millennium, represent the most appropriate targets that comply
with the selection criteria specified in the Oncology Vaccine Transfer Plan,
(ii) prepare reasonably detailed, written disclosures of the Millennium Oncology
Vaccine Technology for each identified Vaccine Target, which disclosure shall
include a reasonably detailed, written description of the financial or other
obligations to Third Parties ("Burdened Technology Obligations") relating to
Millennium Oncology Vaccine Technology so disclosed, and (iii) for each Vaccine
Target, provide the available DNA and/or protein sequence information to outside
patent counsel of Aventis' selection, it being agreed by Aventis that such
outside patent counsel shall (A) be under an obligation to Millennium to keep
all such DNA and/or protein sequence information confidential, (B) review such
DNA and/or protein sequence information solely to identify any Third Party
Patent Rights that Cover the gene or protein or their use in the Oncology
Vaccine Field, and (C) provide only the results of such review to both
Millennium and Aventis for the purpose of facilitating Aventis' evaluation of
the Vaccine Targets for selection as Selected Vaccine Targets. In no event shall
such outside patent counsel provide the DNA and/or protein sequence information
to Aventis. The Parties acknowledge that such Burdened Technology Obligations
may, with respect to any Vaccine Target, (1) preclude the grant to Aventis of
exclusive rights to such Vaccine Target for research, development and/or
commercialization in the Oncology Vaccine Field, (2) require that certain rights
or options be granted, or that certain information be disclosed, to a Third
Party, as a result of the use of such Vaccine Target, (3) increase the costs and
expenses associated with the research, development and commercialization of
Oncology Vaccine Products based on such Vaccine Target or (4) otherwise limit
the rights of Aventis under this Agreement relative to the rights of a Third
Party in the absence of any grant of rights to such Third Party.
(c) SELECTION PROCEDURE. Commencing with the [**], at the
[**] shall [**] the information set forth in Section 3.3(b) [**] in
accordance with Section 3.3(b). [**], provided that, in no event, [**]
25
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
and shall be included [**] shall [**] shall [**] and [**] shall have [**].
SECTION 3.4 TECHNOLOGY TRANSFER PLAN. At least sixty (60) days
prior to the commencement of each Contract Year (other than the First Contract
Year, the Technology Transfer Plan for which is set forth in EXHIBIT D), the
Joint Technology Transfer Team shall prepare the Technology Transfer Plan
setting forth specific tasks and responsibilities relating to the Technology
Transfer hereunder for such Contract Year, consistent with the master plan
agreed upon by the Parties in the Technology Transfer Plan for the First
Contract Year (as such master plan has been amended). The Joint Technology
Transfer Team shall periodically update, as appropriate, the Technology Transfer
Plan at its quarterly meetings.
(a) The Technology Transfer Plan shall among other things:
(i) set forth the Technology Transfer that is to
occur during the Contract Year;
(ii) provide a delivery schedule that, among other
things, outlines the timing, order, and
logistics for the Technology Transfer
activities during the Contract Year;
(iii) identify the physical location(s) within the
United States, France and Germany, or such
other locations as are mutually agreed upon in
a Technology Transfer Plan, to which
Millennium Process Technology shall be
delivered, it being understood that transfer
to a location outside of the United States
shall not occur if it would be in violation of
United States export or other laws and
regulations, and identify the physical
location(s) to which the Selected Vaccine
Targets shall be delivered, which location(s)
shall only be to Aventis-Pasteur or to another
established oncology vaccine research and
development group of Aventis;
(iv) identify with specificity the Direct Acquired
Technology obtained by Millennium and the
Direct Licensed Software, and major equipment
and hardware to be obtained and/or licensed by
Aventis;
(v) identify with specificity any action that
Aventis is required to take prior to
commencement of the delivery of a component of
the Technology Transfer, including, but not
limited to, any additional facilities,
procedures or personnel necessary to receive
and operate such component of the Technology
Transfer;
(vi) identify the process by which potential issues
of integration between the transferred
components of the Technology Transfer
26
and Aventis' technology will be identified and
the general approach to be taken for
addressing such issues;
(vii) provide a reasonable and detailed description
of the Base Technology Transfer Services
(which shall be consistent with the provisions
set forth in Section 3.1 and, with respect to
support obligations for the Millennium
Informatics Technology and Third Party
Software, with the provisions set forth in
SCHEDULE II), and identify any Additional
Technology Transfer Services, and the costs
associated therewith;
(viii) identify any co-development activities that
are to take place during a Contract Year
pursuant to Section 3.2(d)(iii);
(ix) establish the specific payments under Section
5.1(b) that are tied to each Technology
Transfer activity (or portion thereof), that
is to occur in connection with such Technology
Transfer Plan;
(x) with respect to components of the Millennium
Process Technology provide a reasonable and
detailed description of the objective criteria
(which shall be consistent with the provisions
set forth in Section 3.5), by which the Joint
Technology Transfer Team will ascertain when a
specific component of Millennium Process
Technology (or portion thereof) has been
delivered (the "Delivery Criteria"); and
(xi) with respect to all other components of the
Technology Transfer provide a reasonable and
detailed description of the objective criteria
by which the Joint Technology Transfer Team
will ascertain when a specific component of
the Technology Transfer has been completed
(the "Completion Criteria").
(b) For purposes of this Agreement: "Delivery" shall mean
the delivery of a component of the Millennium Process Technology, as provided in
the Technology Transfer Plan, that meets the Delivery Criteria, and "Completion"
shall mean the completion of a specific component of the Technology Transfer, as
provided in the Technology Transfer Plan, that meets the Completion Criteria.
SECTION 3.5 DELIVERY AND REVIEW TESTING OF MILLENNIUM PROCESS
TECHNOLOGY.
(a) DELIVERY. Millennium shall be considered to have
provided Delivery when it has provided Aventis with written notice that it has
completed its quality assurance testing and provides reasonable evidence that
the Transferred Millennium Process Technology performs in all material respects
at the relevant Aventis facility following installation in accordance with the
Delivery Criteria. The Technology Transfer Plan shall identify, for each
component of the Transferred Millennium Process Technology, what shall
constitute reasonable evidence for the purpose of determining whether the
Delivery Criteria for such component have been met. The Delivery Criteria and
such reasonable evidence shall take into account any
27
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
differences in scale and environments between Aventis' and Millennium's use of
such Millennium Process Technology that might limit the extent to which
substantially the same performance of such Millennium Process Technology is
possible at Aventis, and may include, by way of example, but without limitation:
(i) Evidence that the same Millennium Process
Technology operates at Aventis in
substantially the same manner that it operates
at Millennium;
(ii) Data and results evidencing that that
substantially similar experiments performed at
Aventis and at Millennium, each using the same
Millennium Process Technology and identical
samples, produced substantially the same data
and results;
(iii) Evidence that Millennium Informatics
Technology provides substantially the same
level of functionality that such Millennium
Informatics Technology provides to Millennium;
and
(iv) Evidence that appropriate Aventis personnel
were trained by Millennium to use the
Millennium Process Technology and, if
appropriate, to train other Aventis personnel
in the use of such Millennium Process
Technology.
(b) [**] of the Millennium Process Technology has been
[**] in accordance with Section 3.5(a), [**] of the Millennium Process
Technology [**] of the Millennium Process Technology [**] of the Millennium
Process Technology [**].
(i) [**] of the Millennium Process Technology
[**] of the Millennium Process Technology by
Millennium, [**]. In the event that [**]
of the Millennium Process Technology [**]
the applicable Delivery Criteria, [**]
Millennium [**].
(ii) Millennium shall [**] if applicable, [**]
28
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
within the provisions of this Section
3.5(b).
(iii) [**], Millennium shall [**] of the Millennium
Process Technology; [**] of the Millennium
Process Technology.
(iv) [**] of the Millennium Process Technology
[**] of the Millennium Process Technology to
[**]
(v) [**] in this Section 3.5(b) [**]
provided, however, [**]
(vi) Millennium shall [**] in accordance with the
provisions of this Section.
SECTION 3.6 TECHNOLOGY DISCLOSURE AND UPDATE.
(a) During the Agreement Term, Millennium shall use
commercially reasonable efforts to disclose to the Joint Technology Transfer
Team, on an ongoing basis, reasonably detailed, written, confidential updates on
the progress of efforts by Millennium to develop Millennium New Process
Technology, Millennium Process Technology Improvements, Millennium
Product-Process Tool Technology and Millennium Research-Stage Process
Technology, including but not limited to identification of technology which, at
the time of such update, Millennium believes in good faith it could successfully
transfer to Aventis in compliance with this Article III.
29
(b) Prior to the preparation of the Technology Transfer Plan
for each Contract Year, Millennium shall disclose the Millennium Research-Stage
Process Technology which is then in productive use by the relevant research
group at Millennium or which Millennium reasonably believes will be in
productive use by the relevant research group at Millennium during the upcoming
Contract Year. Notwithstanding the foregoing, Millennium shall have no
obligation to continue the development of such Millennium Research-Stage Process
Technology, incorporate such Millennium Research-Stage Process Technology into
Millennium Process Technology, or support such Millennium Research-Stage Process
Technology (except to the extent provided in Section 3.7).
(c) Notwithstanding the foregoing, Millennium need not
disclose to Aventis any information which it is precluded from disclosing under
any agreement with a Third Party; provided that Millennium shall use
commercially reasonable efforts to not include any such restrictions in such
agreements with Third Parties or, if they are included, to obtain consent of
such Third Party for such disclosure.
SECTION 3.7 MILLENNIUM RESEARCH-STAGE PROCESS TECHNOLOGY. Upon
receipt of written report thereof, Aventis shall have the right to request that
the Joint Technology Transfer Team include the transfer of one or more
components of the Millennium Research-Stage Process Technology disclosed in
accordance with Section 3.6 in the Technology Transfer Plan for the succeeding
Contract Year. Millennium shall deliver to Aventis (such delivery including the
installation, and any available interfacing with other components of the
previously delivered Millennium Process Technology) the designated component(s)
of such Millennium Research-Stage Process Technology in accordance with the
Technology Transfer Plan. Notwithstanding anything to the contrary in this
Agreement, Millennium shall not be obligated to provide support for any
transferred Millennium Research-Stage Process Technology, but shall respond to
all reasonable inquiries of Aventis regarding the operation and use of such
Millennium Research-Stage Process Technology and shall use commercially
reasonable efforts to train appropriately skilled Aventis personnel in the use
of such transferred Millennium Research-Stage Process Technology, provided that
such efforts do not disrupt the ability of Millennium to engage in further
development and testing of such Millennium Research-Stage Process Technology.
Any such Millennium Research-Stage Process Technology transferred to Aventis
shall be subject to the licenses granted under Article II, and shall be deemed
for the purposes of such licenses to be Millennium Process Technology, with the
exception that Aventis shall not have the right to transfer or grant sublicenses
to such Millennium Research-Stage Process Technology to any Third Party.
SECTION 3.8 AMENDMENTS TO TECHNOLOGY TRANSFER PLANS. During any
given Contract Year, Aventis shall have the right to request the Joint
Technology Transfer Team to amend the Technology Transfer Plan for such Contract
Year to include one or more components, delete one or more components, or
substitute and replace one or more components, of Millennium Process Technology
or Millennium Research-Stage Process Technology. Such Technology Transfer Plan
shall be so amended if the Joint Technology Transfer Team determines such
amendment to be consistent with the overall Technology Transfer Plan for such
Contract Year, including agreement upon revised Delivery and Completion Payments
for such Contract Year, which in the case of the inclusion of one or more
components without the deletion or substitution and replacement of one or more
components shall include a Delivery and Completion payment in
30
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
addition to those set forth in the Technology Transfer Plan on a basis
consistent with the principles set forth in Section 5.1(b), PROVIDED, that if
[**] Millennium [**] in connection with [**] in accordance with [**], THEN
(z) the Joint Technology Transfer Team shall determine the appropriate
portion of the Delivery and Completion Payment relating to such deleted, or
substituted and replaced, component(s) that has been earned by Millennium
based on Millennium's commercially reasonable efforts to effect the
Technology Transfer of such one or more components up to the date of such
amendment of the Technology Transfer Plan and Aventis shall pay such amount
to Millennium, and any remaining portion of such Delivery and Completion
Payment shall be allocated to the other component(s) included in the
Technology Transfer Plan, as so amended, for such Contract Year, all on a
basis consistent with the principles set forth in Section 5.1(b).
ARTICLE IV
GRANTS OF RIGHTS TO MILLENNIUM
SECTION 4.1 TECHNOLOGY DISCLOSURE AND UPDATE.
(a) During the Agreement Term, Aventis shall use
commercially reasonable efforts to disclose to the Joint Technology Transfer
Team, any Aventis Improvements to Millennium Process Technology that Aventis
believes in good faith can be transferred to Millennium as Aventis Improvements
to Millennium Process Technology in compliance with this Article IV.
(b) Notwithstanding the foregoing, Aventis need not disclose
to Millennium any information which it is precluded from disclosing under any
agreement or other arrangement with a Third Party, provided that Aventis shall
use commercially reasonable efforts to not include any such restrictions in its
agreements with Third Parties or, if they are included, to obtain consent of
such Third Party for such disclosure.
SECTION 4.2 OPTION TO AVENTIS IMPROVEMENTS TO MILLENNIUM PROCESS
TECHNOLOGY.
(a) OPTION. Millennium shall have the option, at any time
during the Agreement Term, to request that Aventis transfer to Millennium those
Aventis Improvements to Millennium Process Technology identified by Aventis as
transferable pursuant to Section 4.1. In the event that Millennium exercises an
option to an Aventis Improvement to Millennium Process Technology, the Joint
Technology Transfer Team shall then agree upon a plan for the transfer of such
Aventis Improvement to Millennium Process Technology.
(b) TRANSFER PLAN. Any such transfer plan for Aventis
Improvements to Millennium Process Technology shall include the following:
31
(i) The specific aspects of the Aventis
Improvements to Millennium Process Technology
to be transferred to Millennium, and the
timing of such transfers;
(ii) The physical location(s) to which such
transfer shall be made;
(iii) Any license to Third Party technology obtained
by Aventis and any license to Third Party
software, or major equipment or hardware
required to be obtained by Millennium, at
Millennium's sole expense, in connection with
such transfer;
(iv) The actions Millennium needs to take prior to
commencement of the transfer to effectuate
such transfer; and
(v) The criteria for determining whether a
transfer of Aventis Improvements to Millennium
Process Technology has been successfully
completed.
(c) TRANSFER AND ACCESS. Aventis shall use commercially
reasonable efforts to facilitate the access by Millennium personnel to Aventis
Improvements to Millennium Process Technology to be transferred to Millennium in
accordance with this Section 4.2. Such access shall be reasonably sufficient to
enable Millennium to transfer and implement the technology. Alternatively,
Aventis may choose to use commercially reasonable efforts to effect the transfer
of such technology to Millennium directly in a manner reasonably sufficient to
enable Millennium to implement the technology.
(d) TRAINING. Aventis shall make available to Millennium a
commercially reasonable level of training for transferred Aventis Improvements
to Millennium Process Technology, as specified in the applicable transfer plan.
(e) KNOW-HOW. Aventis shall make available to Millennium its
know-how reasonably necessary to use the transferred Aventis Improvements to
Millennium Process Technology, including but not limited to, methods for
preparing, processing and analyzing samples. Millennium shall be responsible for
the copying of any know-how made available in written form.
SECTION 4.3 LICENSE GRANT TO MILLENNIUM. Subject to the terms and
conditions of this Agreement, with respect to those Aventis Improvements to
Millennium Process Technology for which Millennium has exercised the option
set forth in Section 4.2, Aventis hereby grants to Millennium and its
Affiliates a non-exclusive, non-royalty bearing and perpetual right and
license and/or sublicense, as applicable, with the right to sublicense such
rights, in the Territory to such Aventis Improvements to Millennium Process
Technology transferred to Millennium pursuant to this Article IV and related
Aventis Improvements Patent Rights and Copyrights to research, develop, make,
have made, distribute for sale, sell, offer to sell, use, practice, import
and export products, services and process technologies in all fields.
Millennium shall not sublicense any such Aventis Improvements to Millennium
Process Technology unless (1) such sublicensee agrees to be bound by at least
the same restrictions and limitations as is Millennium under this Agreement,
and (2) such sublicense requires such Aventis Improvements to
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Millennium Process Technology to be used in conjunction with one or more
components of the Millennium Process Technology. Millennium shall reimburse
Aventis for any fees payable by Aventis to a Third Party that have been
disclosed to Millennium prior to Millennium's commitment to such transfer,
including, but not limited to license or sublicense fees or royalties,
reasonably required to allow Millennium to practice such Aventis Improvements to
the Millennium Process Technology.
SECTION 4.4 SOURCE CODE.
(a) ACCESS TO SOURCE CODE. Millennium shall have access
during the Agreement Term to any source code (including interpretive code such
as perl or shell code) of Aventis Improvements to Millennium Process Technology
transferred to Millennium pursuant to this Article IV. Upon release of the
source code, or any part thereof, for such Aventis Improvements to Millennium
Process Technology, Aventis hereby grants to Millennium and its Affiliates a
non-exclusive right and license and/or sublicense, as applicable, with the right
to sublicense such rights, in the Territory to such released source code, to
modify, enhance, prepare derivative works and support use by Millennium, its
Affiliates, and its sublicensees of such source code.
(b) RESTRICTIONS ON SOURCE CODE. In addition to the
confidentiality provisions set forth in Article VIII, such source code shall be
stored on no more than [**] at the facilities of Millennium and in files on each
such server which are password protected and which can only be accessed by
authorized people having a need to access such source code for the purpose of
developing modifications or enhancements or maintaining or supporting the
Aventis Improvements to Millennium Process Technology.
(c) SUPPORT. Aventis shall use commercially reasonable
efforts to respond to questions of Millennium regarding the use of any Aventis
source code transferred to Millennium pursuant to this Section 4.4.
SECTION 4.5 CO-DEVELOPMENT TECHNOLOGY
(a) Aventis hereby grants to Millennium and its Affiliates a
non-exclusive, non-royalty bearing and perpetual right and irrevocable license
and/or sublicense, as applicable, with the right to sublicense such rights, in
the Territory to any technology, including the applicable know-how, developed by
Aventis or its Affiliates in the course of the co-development activities of the
Parties pursuant to Section 3.2(d)(iii), to research, develop, make, have made,
distribute for sale, sell, offer to sell, use, practice, import and export
products, services and process technologies in all fields.
(b) Aventis hereby grants to Millennium and its
Affiliates a non-exclusive, non-royalty bearing and perpetual right and
irrevocable license and/or sublicense (any such sublicense being subject to
Aventis having the right to grant a sublicense and further subject to any
financial obligations imposed by a Third Party on the grant of such
sublicense), as applicable, with the right to
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
sublicense such rights, in the Territory to any underlying or related technology
of Aventis or its Affiliates to the extent, and only to the extent, any such
underlying or related technology is necessary to practice any of the technology,
including the applicable know how, of either Party made in the course of the
co-development activities of the Parties pursuant to Section 3.2(d)(iii).
ARTICLE V
PAYMENTS
SECTION 5.1 TECHNOLOGY TRANSFER PAYMENTS.
(a) QUARTERLY PAYMENT. On the Effective Date and within ten
(10) days after the first day of each calendar quarter during the Agreement Term
(commencing with the next succeeding calendar quarter following the Effective
Date), Aventis shall make a payment to Millennium of [**] Dollars ($[**]) (each
of such payments referred to as a "Quarterly Payment") in consideration for the
licenses granted to Aventis under Article II of this Agreement for the
technology to be transferred in such calendar quarter, for total payments under
this subsection (a) of a maximum of [**] Dollars ($[**]). Notwithstanding the
foregoing, the first and last Quarterly Payments shall be calculated on a PRO
RATA basis based on (a) the number of days remaining in such calendar quarter
after the Effective Date or (b) the number of days that have expired between the
beginning of the calendar quarter and the termination or expiration date, as the
case may be.
(b) DELIVERY AND COMPLETION PAYMENTS. Aventis shall make
nonrefundable payments (the "Delivery and Completion Payments") to Millennium
based upon each Delivery or Completion for such Contract Year as follows:
(i) During each Contract Year, Aventis shall make
Delivery and Completion Payments based upon
the Delivery of a component of the Millennium
Process Technology or the Completion of a
component of the Technology Transfer (the
"Deliverables").
(ii) EXHIBIT D, which includes the Technology
Transfer Plan for the First Contract Year,
shall include the schedule of Deliverables for
the First Contract Year and the Delivery and
Completion Payment associated with each such
Deliverable. The schedule of Deliverables for
each succeeding Contract Year and the Delivery
and Completion Payment associated with each
such Deliverable shall be set forth in the
Technology Transfer Plan for such Contract
Year.
(iii) Aventis and Millennium agree that, in
establishing the Deliverables for each
Contract Year, the Parties shall be governed
by the principle that one hundred percent
(100%) of the Delivery and Completion Payments
for each Contract Year shall be
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Exchange Commission. Asterisks denote omissions.
attainable with one hundred percent (100%)
probability of success by Millennium through
the use of commercially reasonable efforts. To
implement this principle, the Technology
Transfer Plan for each Contract Year will
specify a list of Deliverables, that in the
aggregate may not be one hundred percent
(100%) achievable, whose associated Delivery
and Completion Payments collectively total
more than the maximum amount of Delivery and
Completion Payments that Millennium is
eligible to receive in a Contract Year, such
Deliverables being of a nature that Millennium
will be able through the use of commercially
reasonable efforts to transfer a sufficiently
large subset of such Deliverables to qualify
for receipt of such maximum amount of Delivery
and Completion Payments with one hundred
percent (100%) probability.
(iv) Notwithstanding the foregoing, should any
Deliverable not be attainable due to failure
of Aventis to obtain and/or license any
available Direct Acquired Technology or Direct
Licensed Software, to purchase required
equipment or hardware, to employ appropriate
personnel, or to take other appropriate
actions required for transfer or operation of
such Deliverable specified in the Technology
Transfer Plan, then such Deliverable shall in
any such event be deemed delivered and the
related Delivery and Completion Payment shall
be due and payable.
(v) The total Delivery and Completion Payments
payable to Millennium in each Contract Year
shall equal (A) the Specified Payment Amount
(as defined below) if sufficient Deliverables
are fulfilled in the manner set forth in the
applicable Technology Transfer Plan or (B) a
lesser amount, determined in accordance with
the Technology Transfer Plan, if sufficient
Deliverables are not delivered in the manner
set forth in the applicable Technology
Transfer Plan. In no event shall the Delivery
and Completion Payments for any Contract Year
exceed Specified Payment Amount for such
Contract Year.
(vi) As used herein, the term "Specified Payment
Amount" means (A) for the First Contract Year,
the number of days from the Effective Date
through December 31, 2000 divided by three
hundred sixty-five and multiplied by $[**],
(B) [**] Dollars ($[**]) for each of the
Second, Third, Fourth and Fifth Contract
Years, and (C) for the Sixth Contract Year,
the number of days from January 1, 2005
through the fifth anniversary of the Effective
Date divided by three hundred sixty-five and
multiplied by $[**]. Notwithstanding the
foregoing, if the Effective Date occurs after
[**], then the Parties shall discuss the
necessary changes to the Technology Transfer
Plan for the First Contract Year and to the
related Delivery and
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Completion Payments to reflect the time period
remaining in the First Contract Year.
(vii) The Delivery and Completion Payments shall be
made to Millennium within [**] following the
date of the quarterly Joint Technology
Transfer Team meeting at which the
recommendations for payments due Millennium
are made based on the complete or partial
fulfillment of the Deliverables, it being
understood that the Joint Steering Committee
shall meet within such [**] period to act on
such recommendations or, if the Joint
Technology Transfer Team and/or Joint Steering
Committee is unable to agree on such
recommendations and the matter is submitted
for resolution under Article X, such payment
shall be made within [**] after resolution
under Article X, if appropriate.
SECTION 5.2 SUBLICENSED SOFTWARE FEES. Aventis will pay Millennium
the applicable fees for Sublicensed Software, which for the First Contract Year
and for those components currently expected to be transferred during the Second
Contract Year prior to the first anniversary of the Effective Date are specified
in EXHIBIT B and for subsequent Contract Years shall be specified in the
Technology Transfer Plan for such Contract Year. Millennium will provide to
Aventis an itemized invoice for the fees for the Sublicensed Software. Aventis
will pay all such invoices within thirty (30) days after receipt thereof.
SECTION 5.3 ADDITIONAL TECHNOLOGY TRANSFER SERVICES. Aventis will
pay Millennium for the actual cost of any Additional Technology Transfer
Services, based upon a reasonable allocation of both direct and indirect costs.
The amounts of such costs will be determined by mutual agreement of the Parties
prior to the commencement of the delivery of such Additional Technology Transfer
Services. Millennium will provide to Aventis, on a monthly basis, an invoice for
and accounting of the charges for Additional Technology Transfer Services.
Aventis will pay all such invoices within thirty (30) days after receipt
thereof, except for any amounts that may be the subject of a good faith dispute.
SECTION 5.4 AUDITS OF ADDITIONAL TECHNOLOGY TRANSFER SERVICES.
(a) Millennium shall keep complete and accurate records of
the services which are paid for by Aventis pursuant to Section 5.3 (the
"Additional Services Records") for the latest three (3) years.
(b) Aventis will have the right annually, at its own
expense, to have an independent, certified public accountant selected by
Aventis, and reasonably acceptable to Millennium, review any Additional
Services Records. To the extent possible, such Additional Services Records
shall be located at Millennium's principal place of business. If not
possible, such records shall be reviewed at the physical location where they
are maintained by Millennium in the ordinary course of business. Aventis
shall provide reasonable notice and review such Additional Services Records
during
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Exchange Commission. Asterisks denote omissions.
regular business hours and under obligations of strict confidence, for the sole
purpose of verifying the basis and accuracy of payments for services rendered by
Millennium.
(c) If the review of Additional Services Records reveals
that Millennium has overbilled an amount due under Section 5.3, then
Millennium shall promptly refund the appropriate amount to Aventis, together
with interest calculated in the manner provided in Section 5.8 below. If any
overpayment is equal to or greater than [**] of the total payment that was
otherwise due, Millennium shall pay all of the costs of such review.
SECTION 5.5 ONCOLOGY VACCINE PRODUCTS ROYALTIES AND REPORTS.
(a) ROYALTY RATE. Aventis shall pay a royalty of [**]% of
Net Sales of each Oncology Vaccine Product. Royalties shall be payable, on a
country-by-country basis, for [**] years after the First Commercial Sale of such
Oncology Vaccine Product in such country. The royalty rate set forth in this
subsection (a) shall not be subject to any reductions or offsets of any kind.
(b) ROYALTY REPORTS; PAYMENTS. Within sixty (60) days after
the end of each calendar quarter in which Aventis has Net Sales of an Oncology
Vaccine Product, Aventis shall submit to Millennium a report, on the basis of
each Oncology Vaccine Product in each country, providing in reasonable detail an
accounting of all such Net Sales made during such calendar quarter and the
calculation of the royalty due. Concurrently with such report, Aventis shall pay
to Millennium all royalties payable by it under Section 5.5(a) as indicated in
the report.
SECTION 5.6 AUDITS OF ONCOLOGY VACCINE REPORTS. Aventis, its
Affiliates and licensees shall keep complete and accurate records of
underlying revenue and expense data relating to the reports and payments
required in Section 5.5(b). Millennium will have the right once annually at
its own expense to have an independent, certified public accountant, selected
by Millennium and reasonably acceptable to Aventis, review any such records
of Aventis in the location(s) where such records are maintained by Aventis
upon reasonable notice and during regular business hours and under
obligations of strict confidence, for the sole purpose of verifying the basis
and accuracy of payments made under Section 5.5(b), within the prior
twenty-four (24) month period. If the review of such records reveals that
Aventis has failed to accurately report information pursuant to Section
5.5(b), then Aventis shall promptly pay to Millennium any resulting amounts
due under Section 5.5(b), together with interest calculated in the manner
provided in Section 5.9. If any amounts due under Section 5.5(b) as a result
of such audit are greater than [**] of the amounts actually due for a
calendar year under Section 5.5(b), then Aventis shall pay all of the costs
of such review. If Aventis in good faith disputes any conclusion of the
accounting firm under this Section 5.6, including that Aventis owes
additional amounts, then Aventis shall inform Millennium by written notice
within thirty (30) days of receipt of a copy of the audit in question,
specifying in detail such dispute. The Parties shall promptly thereafter meet
and negotiate in good faith a resolution to such dispute. In the event that
the Parties are unable to resolve any such dispute within sixty (60) days
after notice by Aventis, the matter shall be resolved in a manner consistent
with the procedures set forth in
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Article X, and interest shall be payable on any additional amounts determined to
be due in the same manner as provided for in Section 5.9.
SECTION 5.7 TAX MATTERS. Any income or other taxes which Aventis is
required by law to pay or withhold on behalf of Millennium with respect to
royalties or other payments payable to Millennium under this Agreement shall be
deducted from the amount of such royalties or other payments due, and paid or
withheld, as appropriate, by Aventis on behalf of Millennium. Any such tax
required by law to be paid or withheld shall be an expense of, and borne solely
by, Millennium. Aventis shall furnish Millennium with reasonable evidence of
such payment or amount withheld, in electronic or written form, as soon as
practicable after such payment is made or such amount is withheld. The Parties
will reasonably cooperate in completing and filing documents required under the
provisions of any applicable tax laws or under any other applicable law in
connection with the making of any required tax payment withholding payment, or
in connection with any claim to a refund of or credit for any such payment.
SECTION 5.8 CURRENCY EXCHANGE. With respect to Net Sales invoiced or
expenses incurred in U.S. dollars, the Net Sales or expense amounts and the
amounts due to Millennium hereunder shall be expressed in U.S. dollars. With
respect to Net Sales invoiced or expenses incurred in a currency other than U.S.
dollars, the Net Sales or expense shall be expressed in the domestic currency of
the entity making the sale or incurring the expense, together with the U.S.
dollar equivalent, calculated using the arithmetic average of the spot rates on
the last business day of each month of the calendar quarter in which the Net
Sales were made or the expense was incurred. The "closing mid-point rates" found
in the "dollar spot forward against the dollar" table published by The Financial
Times or any other publication as agreed to by the Parties shall be used as the
source of spot rates to calculate the average as defined in the preceding
sentence. All payments shall be made in U.S. dollars. If at any time legal
restrictions in any country in the Territory prevent the prompt remittance of
any payments with respect to sales in that country, Aventis shall have the right
and option to make such payments by depositing the amount thereof in local
currency to Millennium's account in a bank or depository in such country.
SECTION 5.9 CURRENCY AND METHOD OF PAYMENTS; LATE PAYMENTS.
Except as set forth in Section 5.7, all payments under this Agreement shall
be made in United States dollars by wire transfer to such bank account as the
receiving Party may designate from time to time. The paying Party shall pay
interest to the receiving Party on the aggregate amount of any payments that
are not paid on or before the date such payments are due under this Agreement
at a rate per annum equal to the lesser of the prime rate of interest plus
one percent (1%), as reported by the Wall Street Journal, or the highest rate
permitted by applicable law, calculated on the number of days such payments
are paid after the date such payments are due.
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Exchange Commission. Asterisks denote omissions.
ARTICLE VI
ONCOLOGY VACCINE PRODUCT DILIGENCE OBLIGATIONS OF AVENTIS
SECTION 6.1 AVENTIS DILIGENCE OBLIGATIONS. With respect to each
Selected Vaccine Target, Aventis agrees to exercise commercially reasonable
efforts to research, develop and commercialize Oncology Vaccine Products. For
the purposes of assessing the exercise of commercially reasonable efforts by
Aventis for each Selected Vaccine Target, Aventis shall provide to Millennium
within thirty (30) days after the end of each calendar year a written report
detailing the research, development and commercialization activities undertaken
with each Selected Vaccine Target.
SECTION 6.2 NOTIFICATION BY MILLENNIUM. In the event that Millennium
believes that Aventis has failed to exercise commercially reasonable efforts to
research, develop and commercialize Oncology Vaccine Products with respect to a
Selected Vaccine Target, then Millennium shall notify Aventis in writing within
[**] after receipt of any annual report required under Section 6.1, and shall
provide a reasonably detailed description of its reasons for such belief. Upon
receipt of such notice Aventis shall have [**] in which to cure any such failure
and shall provide to Millennium a reasonably detailed, written report of its
compliance with its obligation to exercise commercially reasonable efforts.
Alternatively, if Aventis believes that it has exercised commercially reasonable
efforts, it shall so notify Millennium within [**] after receipt of Millennium's
notice. Such reply by Aventis shall provide supporting information which
reasonably details the reasons why Aventis believes it has satisfied its
obligation to exercise commercially reasonable efforts to research, develop and
commercialize Oncology Vaccine Products with respect to such Selected Vaccine
Target. If Millennium disagrees that Aventis has cured any failure of its
obligations or if Millennium disagrees with Aventis' response, it shall notify
Aventis within [**] after receipt of Aventis' response, and then the Parties
shall attempt in good faith to resolve the disagreement, referring the matters
to the Executive Officers for resolution pursuant to Article X, if necessary.
SECTION 6.3 CONSEQUENCES OF AVENTIS FAILURE TO COMPLY WITH DILIGENCE
OBLIGATIONS. In the event that it is determined pursuant to Section 6.2 that
Aventis has failed to exercise commercially reasonable efforts to research,
develop and commercialize Oncology Vaccine Products for any Selected Vaccine
Target, then Aventis' license and rights to such Selected Vaccine Target shall
terminate.
ARTICLE VII
INTELLECTUAL PROPERTY OWNERSHIP, PROTECTION AND RELATED MATTERS
SECTION 7.1 OWNERSHIP.
(a) "Inventions" shall mean all proprietary, non-public
Process Technology, including, without limitation, processes, techniques,
formulas, equipment designs, know-how,
39
show-how and trade secrets, discoveries, practices, inventions, technology,
designs, works of authorship, instructions, and other intellectual property,
patentable or otherwise, tangible or intangible that are developed, made,
conceived, reduced to practice or generated during the course of performance of
activities pursuant to this Agreement and which are not generally known.
(b) SOLE INVENTIONS. Aventis shall solely own all Inventions
developed, made, conceived, reduced to practice or generated solely by its
employees, agents, or other persons acting under its authority (or any of its
Affiliates), and Millennium shall solely own all Inventions developed, made,
conceived, reduced to practice or generated solely by its employees, agents, or
other persons acting under its authority (or any of its Affiliates).
(c) JOINT INVENTIONS. All Inventions developed, made,
conceived, reduced to practice or generated jointly by employees, agents, or
other persons acting under Aventis' authority (or any of its Affiliates) and
Millennium employees, agents, or other persons acting under Millennium authority
(or any of its Affiliates) ("Joint Inventions") shall be jointly owned by
Aventis and Millennium.
SECTION 7.2 PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
(a) MILLENNIUM PATENTABLE INVENTIONS. Millennium shall have
the exclusive right and option, but not the obligation, (at its sole expense) to
file and prosecute any patent applications and maintain any patents that Cover
Inventions solely owned by Millennium, including without limitation Inventions
that constitute or are deemed to be Millennium Process Technology, Millennium
Research-Stage Process Technology and Millennium Oncology Vaccine Technology.
(b) AVENTIS PATENTABLE INVENTIONS. Aventis shall have the
exclusive right and option, but not the obligation, (at its sole expense) to
file and prosecute any patent applications and maintain any patents that Cover
Inventions solely owned by Aventis, including without limitation Inventions that
constitute or are deemed to be Aventis Improvements to Millennium Process
Technology and Aventis inventions relating to Oncology Vaccine Products.
(c) JOINTLY-OWNED INVENTIONS. With respect to Joint
Inventions, the Parties shall mutually agree upon a course of action, including
allocation of expenses, as to the nature of protection sought for such Joint
Inventions and strategies for filing, prosecution and maintenance of patents and
patent applications for Joint Inventions, and shall keep each other reasonably
informed with regard to such activities.
(d) If Millennium elects not to continue to prosecute or
maintain any Patent Right within Millennium Oncology Vaccine Technology Patent
Rights and Copyrights (and Aventis has rights under such Patent Right), then
Millennium shall, subject to any contractual obligation to Third Parties, notify
Aventis in writing of such election at least thirty (30) days prior to the last
available date for action to preserve such Patent Right. If Aventis elects to
continue prosecuting or maintaining such Patent Right, Aventis may do so at its
sole expense.
SECTION 7.3 EXPLOITATION OF INVENTIONS.
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(a) EXPLOITATION OF SOLE INVENTIONS. Aventis agrees (i) not
to utilize any sole inventions of Aventis made in the course of the
co-development activities of the Parties pursuant to Section 3.2(d)(iii) in the
Prohibited Field, and (ii) that it shall sublicense any sole inventions of
Aventis made in the course of the co-development activities of the Parties
pursuant to Section 3.2(d)(iii) only in accordance with the provisions of
Sections 2.1(a), (b), (e) and (f).
(b) EXPLOITATION OF JOINT INVENTIONS. Subject to the grant
of licenses to Aventis and to Millennium under Article II and IV, respectively,
each of the Parties shall be free to exploit any Joint Inventions within the
Territory without payment of any additional compensation to the other Party.
Notwithstanding the foregoing, Aventis agrees (i) not to utilize any Joint
Inventions made in the course of the co-development activities of the Parties
pursuant to Section 3.2(d)(iii) in the Prohibited Field, and (ii) that it shall
sublicense any such Joint Inventions only in accordance with the provisions of
Sections 2.1(a), (b), (e) and (f).
SECTION 7.4 COOPERATION. Each Party hereby agrees to (a) make
available to the other Party (or to the other Party's authorized attorneys,
agents or representatives), its employees, agents or consultants to the extent
reasonably necessary to enable the appropriate Party to file and prosecute
patent applications and maintain resulting patents that cover (i) Joint
Inventions, or (ii) other inventions that constitute Aventis Improvements to
Millennium Process Technology and Aventis Inventions relating to Oncology
Vaccine Products (collectively the "Designated Inventions"), and (b) cooperate,
if necessary and appropriate, with the other Party in gaining patent term
extensions wherever applicable to Patent Rights that cover Designated
Inventions, (c) provide to the other Party copies of all material correspondence
pertaining to prosecution of patent applications covering Joint Inventions with
the U.S. Patent and Trademark Office or its foreign counterparts, (d) to
endeavor in good faith to coordinate its efforts with the other Party to
minimize or avoid interference with Patent Rights of such other Party, (e)
cooperate, if necessary and appropriate, with the other Party in the preparation
and filing of any copyright registrations, and (f) determine the nature of the
proprietary protection to be sought for all Joint Inventions and take
commercially reasonable efforts to implement such protections.
SECTION 7.5 THIRD PARTY INFRINGEMENT.
(a) During the Agreement Term, promptly after either Party
becomes aware of the reasonable probability of an alleged infringement by a
Third Party of (i) Millennium Process Technology Patent Rights and Copyrights,
(ii) Millennium Oncology Vaccine Technology Patent Rights and Copyrights in the
Oncology Vaccine Field relating to any Selected Vaccine Target transferred to
Aventis, (iii) Millennium Product-Process Technology Patent Rights and
Copyrights or (iv) Aventis Improvements Patent Rights and Copyrights, or (v)
Aventis proprietary rights relating to Oncology Vaccine Products, such Party
shall provide written notice to the other Party regarding such infringement. Any
such notice shall include reasonable evidence to support an allegation of
infringement by such Third Party.
(b) Millennium or Aventis, respectively, in the case of a
sole Invention, shall have the exclusive right, but not the obligation, to
institute an infringement suit or take other appropriate action that it believes
is reasonably required to protect its proprietary position.
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Exchange Commission. Asterisks denote omissions.
(c) With respect to Joint Inventions, the Parties shall
mutually agree whether or not to institute an infringement suit or take other
appropriate action to protect their proprietary position in such Joint
Inventions.
(d) Millennium will use commercially reasonable efforts to
prosecute, maintain and enforce the Millennium Oncology Vaccine Technology
Patent Rights and Copyrights against Third Parties in the Oncology Vaccine Field
and Millennium Process Technology Patent Rights and Copyrights, and Millennium
Product-Process Technology Patent Rights and Copyrights against Third Parties in
the Field.
(e) Aventis will use commercially reasonable efforts to
enforce the Aventis Improvement Patent Rights and Copyrights against Third
Parties.
(f) With respect to Patent Rights within Millennium Oncology
Vaccine Technology Patent Rights and Copyrights that Cover an Oncology Vaccine
Product, if Millennium, within [**] of a notice of infringement pursuant to
Section 7.5(a) from Aventis, has not taken action with respect to a Third Party
pursuant to Section 7.5(b), Aventis may request consent from Millennium to
institute and direct legal proceedings against such Third Party, including in
the name of Millennium, which consent shall not be unreasonably withheld.
Millennium shall respond to such request within [**] of receipt of such request
in writing. All costs, including attorneys' fees, relating to such legal
proceedings shall be borne by Aventis. All recoveries resulting from such legal
proceedings in excess of Aventis' costs, including attorneys' fees, shall be
deemed Net Sales by Aventis of the applicable Oncology Vaccine Product.
SECTION 7.6 CLAIMED INFRINGEMENT.
(a) INFRINGEMENT NOTICE. In the event that either Party
becomes aware of any claim that the practice of Transferred Millennium Process
Technology, Aventis Improvements to Millennium Process Technology or Millennium
Oncology Vaccine Technology related to a Selected Vaccine Target infringes the
intellectual property rights of any Third Party, such Party shall promptly
notify the other Party ("Infringement Notice"). However, the provisions of the
remainder of this Section 7.6 shall not apply to Specified Process Technology
(as defined below) or to Aventis Improvements to Millennium Process Technology.
(b) INFRINGEMENT PROCEEDINGS. If Aventis or any of its
Affiliates are named as defendants in any action or proceeding claiming that
their practice of Transferred Millennium Process Technology or Millennium
Oncology Vaccine Technology related to a Selected Vaccine Target infringes
the intellectual property rights of any Third Party (an "Infringement
Proceeding"), and both (i) Millennium elects to defend and indemnify Aventis
and its Affiliates with respect to the Infringement Proceeding, and (ii)
Aventis and its Affiliates have not been enjoined by a court of competent
jurisdiction from continuing to practice the applicable Transferred
Millennium Process Technology in the Field or Millennium Oncology Vaccine
Technology related to a Selected Vaccine Target in the Oncology Vaccine
Field, then Millennium shall have the right to control the resolution of the
claim(s), and all payment obligations of Aventis and its Affiliates to
42
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Millennium under this Agreement shall continue in effect, and shall only be
offset, abated or reduced by (x) Aventis' reasonable out of pocket expenses
incurred as a result of its cooperation in the Infringement Proceeding and (y)
amounts specified in Section 7.6(d). The election of Millennium to defend and
indemnify Aventis and its Affiliates shall be made in writing by Millennium
within[**] after Millennium receives written notice of the Infringement
Proceeding from Aventis. Aventis shall be entitled to retain its own counsel, at
its own expense, to represent its interests in the Infringement Proceeding.
(c) REDUCTION IN PAYMENTS. If either (i) Millennium does
not elect to defend and indemnify Aventis and its Affiliates within the [**]
period referred to in subsection (b) with respect to an Infringement
Proceeding, or (ii) Aventis and its Affiliates have been enjoined by a court
of competent jurisdiction from continuing to practice the applicable
Transferred Millennium Process Technology in the Field or are required to
practice the applicable Millennium Process Technology in a more limited
capacity, then [**] pursuant to Section 5.1(b) [**], as applicable, [**]
Section 5.1(b) [**]; (B) such withheld sum shall be held in escrow by Aventis
pending resolution of such Infringement Proceeding, and (C) upon resolution
of the Infringement Proceeding such withheld sum shall be paid to Millennium
subject to the payment offsets of Section 7.6(d) unless such resolution
involves the issuance of an injunction by a court of competent jurisdiction
enjoining Aventis from continuing to practice the applicable Transferred
Millennium Process Technology, or any portion thereof, or any resulting
agreement requires a material change in the use or scope of use of the
applicable Millennium Process Technology.
(d) PAYMENT OFFSETS. If the claim(s) with respect to an
Infringement Proceeding is resolved in such a manner that Aventis or its
Affiliates incur either a lump-sum or ongoing payment obligation to a Third
Party to continue to practice the applicable Transferred Millennium Process
Technology, then Aventis shall have the right to offset such payments to such
Third Party against the sum withheld in accordance with Section 7.6(c) above,
PROVIDED THAT any such offset shall in no event collectively exceed an amount
equal to [**] of the Delivery and Completion Payment for the applicable
Transferred Millennium Process Technology. To the extent practicable, Millennium
shall modify, or allow Aventis to modify, such Millennium Process Technology so
that it does not infringe the Third Party rights which were the subject of the
Infringement Proceedings.
(e) SPECIFIED PROCESS TECHNOLOGY. As used in this Section
7.6, the term "Specified Process Technology" means Millennium Process Technology
as to which (i) Millennium has indicated in writing to Aventis prior to the
transfer thereof pursuant to Article III that Third Party licenses are necessary
in order to practice the technology, AND (ii) Aventis has, prior to such
transfer, obtained, or could obtain if it so chose, such Third Party licenses on
its own behalf. The provisions of subsections (b), (c) and (d) of this Section
7.6, however, shall
43
apply to Specified Process Technology if the claim of infringement is unrelated
to the rights that would have been granted pursuant to such Third Party license
as to which Millennium has provided notice under subsection (e)(i) of this
Section 7.6.
ARTICLE VIII
CONFIDENTIALITY
SECTION 8.1 CONFIDENTIAL INFORMATION. Any Confidential Information
disclosed by a Party to the other Party during the term of this Agreement shall
not be used by the receiving Party except in connection with the activities
contemplated by this Agreement, shall be maintained in confidence by the
receiving Party, and shall not otherwise be disclosed by the receiving Party to
any Third Party without the prior written consent of the disclosing Party,
except to the extent that the Confidential Information (as determined by
competent documentation):
(a) was known or used by the receiving Party or its
Affiliates prior to its date of disclosure to the receiving Party; or
(b) either before or after the date of the disclosure to the
receiving Party or its Affiliates is lawfully disclosed to the receiving Party
or its Affiliates by sources other than the disclosing Party rightfully in
possession of the Confidential Information; or
(c) either before or after the date of the disclosure to the
receiving Party or its Affiliates becomes published or generally known to the
public (including information known to the public through the sale of products
in the ordinary course of business) through no fault or omission on the part of
the receiving Party or its Affiliates or its sublicensees; or
(d) is independently developed by or for the receiving Party
or its Affiliates without reference to or reliance upon the Confidential
Information.
In addition, the provisions of this Section 8.1 shall not preclude the receiving
Party or its Affiliates from disclosing Confidential Information to the extent
such Confidential Information is required to be disclosed by the receiving Party
or its Affiliates to comply with applicable laws, to defend or prosecute
litigation or to comply with governmental regulations or judicial or
administrative decrees or orders, PROVIDED THAT the receiving Party provides
prior written notice of such disclosure to the disclosing Party and takes
reasonable and lawful actions to endeavor to avoid and/or minimize the degree of
such disclosure. Specific information shall not be deemed to be within any of
the foregoing exclusions merely because it is embraced by more general
information falling within these exclusions.
SECTION 8.2 EMPLOYEE AND ADVISOR OBLIGATIONS. Millennium and Aventis
each agree that they shall provide Confidential Information received from the
other Party only to their respective employees, consultants and advisors, and to
the employees, consultants and advisors of such Party's Affiliates, who have a
need to know and have an obligation to treat such information and materials as
confidential.
44
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
SECTION 8.3 TERM. All obligations of confidentiality imposed under
this Article VIII shall expire [**] following the disclosure of the relevant
Confidential Information, PROVIDED THAT (a) obligations of confidentiality
relating to source code provided pursuant to Sections 2.2 or 4.4 shall continue
in effect indefinitely, and (b) in no event shall the expiration of the
obligation to maintain the confidentiality of the relevant Confidential
Information be used to circumvent the sublicensing restrictions of Sections
2.1(a)(ii), 2.1(b)(y), 2.1(e) and 2.1(f).
ARTICLE IX
TERM AND TERMINATION
SECTION 9.1 TERM; EXTENSION. This Agreement becomes effective as of
the Effective Date and may be terminated as set forth in this Article IX. The
Parties acknowledge that they may find it to be mutually beneficial to continue
the relationship established by this Agreement after the termination of the
Agreement Term. Consequently, the Parties hereby agree to negotiate in good
faith, prior to [**] before the expiration of the Agreement Term, whether or not
to extend the Agreement Term on terms and conditions that are mutually
acceptable to the Parties.
SECTION 9.2 TERMINATION UPON THE [**] ANNIVERSARY OF THE EFFECTIVE
DATE.
(a) TERMINATION RIGHTS. Aventis shall have the right, [**]
to terminate this Agreement effective as of the [**]. Aventis may exercise
this right by providing written notice to Millennium no later than [**] prior
to [**] and such termination shall be effective on the [**], as applicable,
[**]. Aventis agrees that in the event of any such termination by Aventis,
Millennium shall be paid the pro rata portion of all Delivery and Completion
Payments for the portion of the [**] which has elapsed prior to such
termination date, as applicable, unless Millennium has failed to use
commercially reasonable efforts to undertake and effect the Technology
Transfer in accordance with the Technology Transfer Plan for such [**], as
appropriate.
(b) RIGHTS UPON TERMINATION UNDER SECTION 9.2(a). If
Aventis terminates this Agreement pursuant to Section 9.2(a) and as of the
effective date of such termination Millennium has earned in excess of [**] of
all Delivery Payments which it could have earned over all Contract Years
elapsed prior to termination (i.e., the [**] if such termination occurs on
the [**] and the [**] if such termination occurs on the [**], then Aventis
shall pay to Millennium (i) if such termination occurs on the [**] or (ii) if
such termination occurs on the [**], in either case such payment to be made
at the same time as the notice of termination is provided under Section
9.2.(a) above, which payments shall be in consideration for future use of the
Millennium Process
45
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Technology, Millennium Product-Process Tool Technology, Millennium
Research-Stage Process Technology and Oncology Vaccine Technology transferred by
Millennium to Aventis prior to the effective date of such termination.
SECTION 9.3 TERMINATION FOR MATERIAL BREACH.
(a) TERMINATION RIGHTS. Upon any material breach of this
Agreement by Aventis or Millennium (in such capacity, the "Breaching Party"),
the other Party (in such capacity, the "Non-Breaching Party") may terminate this
Agreement by [**] written notice to the Breaching Party, specifying the material
breach. The termination becomes effective at the end of the [**] period unless
(i) the Breaching Party cures such breach during such [**] period, or (ii) if
such breach is not susceptible to cure within [**] of the receipt of written
notice of the breach, the Breaching Party is diligently pursuing a cure (unless
such breach, by its nature, is incurable, in which case the Agreement may be
terminated immediately). The Parties will use commercially reasonable efforts to
work together to cure any breach.
(b) RIGHTS UPON TERMINATION FOR MATERIAL BREACH. If the
Non-Breaching Party terminates this Agreement pursuant to subsection (a)
following a material breach by the Breaching Party:
(i) in the event that the Breaching Party is
Millennium:
(A) Aventis shall pay Millennium all
applicable amounts owed by Aventis to
Millennium under Section 5.1 as of the
effective date of termination, PROVIDED THAT
without limiting such other remedies as may be
available, such payments shall be subject to
reduction to reflect the nature of the breach
and the damages caused thereby, such reduction
to be agreed upon in good faith by the
Parties, or if the Parties are unable to reach
such agreement, pursuant to the provisions of
Article X, PROVIDED, THAT, if Aventis asserts
that Millennium is a Breaching Party,
Millennium shall continue to use commercially
reasonable efforts to transfer Millennium
Process Technology in accordance with this
Agreement until the effective date of such
termination.
(ii) In the event that the Breaching Party is
Aventis:
(A) if such termination occurs during the Agreement Term
and such breach is the direct result of nonpayment, Aventis shall pay as a
lump sum to Millennium: (i) [**] should such termination occur prior to the
[**] anniversary of the Effective Date, (ii) [**] should such termination
occur on or after the [**]anniversary of the Effective Date but prior to the
[**] anniversary of the Effective Date, and (iii) [**] should such
termination occur on or after the [**] anniversary of the Effective Date but
prior to the [**] anniversary of the Effective Date, in each case less any
payments paid or payable to Millennium under Section 5.1 prior to the
effective date of the
46
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
termination. Such payment will be made within [**] after the effective date of
termination. Notwithstanding the foregoing, if Aventis attempts to terminate
this Agreement in good faith under Section 9.3(b)(i) and, as a result, ceases
any further payments under this Agreement, Aventis shall not by reason of such
cessation be deemed to have been in breach of this Agreement if it is finally
determined that Millennium was not a Breaching Party so long as Aventis makes
all payments otherwise due within [**] after such final determination.
SECTION 9.4 TERMINATION UPON CHANGE OF CONTROL OR UPON MILLENNIUM
CEASING CERTAIN ACTIVITIES.
(a) TERMINATION UPON CHANGE OF CONTROL. If a Change of
Control occurs during the Agreement Term, Aventis may, at its sole discretion,
elect to terminate this Agreement by giving Millennium written notice within
[**] after Aventis' receipt of notice of such Change of Control, such
termination to be effective [**] after provision of written notice of
termination.
(b) TERMINATION UPON MILLENNIUM CEASING CERTAIN ACTIVITIES.
During the Agreement Term, in the event that Millennium and any of its
Affiliates that are subject to this Agreement, taken as a whole, cease to be
significantly involved in the business of developing Process Technologies,
Aventis shall have the right to terminate this Agreement by providing Millennium
with [**] notice of such termination.
SECTION 9.5 RIGHTS UPON TERMINATION UNDER SECTION 9.2, 9.3, 9.4
OR 12.7. As of the effective date of a termination pursuant to Section 9.2, 9.3,
9.4, or 12.7:
(i) All Technology Transfer activities shall
cease, except as otherwise agreed by the
Parties;
(ii) All payment obligations under Article V shall
cease, except with respect to applicable
amounts owed by Aventis to Millennium under
Section 5.1 as of the effective date of
termination and except as otherwise
specifically provided herein;
(iii) Aventis shall retain all licenses granted to
it by Millennium under this Agreement as of
the effective date of such termination;
(iv) Aventis shall have no additional access or
rights to Millennium Process Technology,
Millennium Research-Stage Process Technology
or Millennium Oncology Vaccine Technology
developed, acquired or otherwise controlled by
Millennium from and after the date of such
termination;
(v) Millennium shall retain all licenses granted
to it by Aventis under this Agreement as of
the effective date of such termination; and
47
(vi) Millennium will have no access or rights to
Aventis Improvements to Millennium Process
Technology developed, acquired or otherwise
controlled by Aventis from and after the date
of such termination.
SECTION 9.6 TERMINATION UPON HSR DENIAL. The Agreement shall
immediately terminate in the event that either (a) the FTC and/or the DOJ shall
seek a preliminary injunction under the HSR Act against Millennium and Aventis
to enjoin the transactions contemplated by this Agreement, the Technology
Development Agreement, and/or the Inflammation Agreement, or (b) if the Parties
mutually agree that a HSR Filing is required, the HSR Clearance Date shall not
have occurred on or prior to December 31, 2000.
SECTION 9.7 RESIDUAL RIGHTS. Upon termination of this Agreement,
except as specifically provided herein to the contrary, all rights and
obligations of the Parties shall cease, except as follows:
(a) Obligations to pay amounts accruing hereunder up to the
date of expiration or termination;
(b) The obligations regarding confidentiality as set forth
in Article VIII;
(c) All obligations for record keeping and accounting
reports;
(d) Aventis' right to inspect books and records of
Millennium as set forth in Section 5.4;
(e) Millennium's right to inspect books and records of
Aventis as set forth in Section 5.6;
(f) The Parties' rights with respect to the ownership of
intellectual property as set forth in Article VII;
(g) Obligations of defense and indemnity, which obligations
shall continue in full force and effect for an unlimited period; and
(h) Except as provided in Section 9.3, any cause of action
or claim of Millennium or Aventis accrued or to accrue because of any material
breach by the other Party.
48
ARTICLE X
DISPUTE RESOLUTION
SECTION 10.1 JOINT STEERING COMMITTEE.
(a) As soon as practicable after the Execution Date, Aventis
and Millennium shall establish a Joint Steering Committee comprised of three (3)
senior executives of Aventis and three (3) senior executives of Millennium.
(b) The Joint Steering Committee shall meet within
forty-five (45) days after the Effective Date and, thereafter, at least
quarterly during the Agreement Term to (a) review the efforts of the Parties in
the conduct of the Technology Transfer activities, and (b) attempt to resolve
any disputes relating to this Agreement that may arise between the Parties that
are referred to the Joint Steering Committee by the Joint Technology Transfer
Team or by either of the Parties.
(c) The location of such meetings of the Joint Steering
Committee shall be as agreed by the Parties. The Joint Steering Committee may
also meet by means of a telephone conference call or by videoconference.
(d) Each Party may change any one or more of its
representatives to the Joint Steering Committee at any time upon written notice
to the other Party.
(e) Each Party shall use commercially reasonable efforts to
cause its representatives to attend the meetings of the Joint Steering
Committee. If a representative of a Party is unable to attend a meeting, such
Party may designate an alternate to attend such meeting in place of the absent
representative, and such alternate shall have full voting power at such meeting.
(f) In addition, each Party may, at its discretion, invite
non-voting employees, and, with the consent of the other Party, consultants or
scientific advisors, to attend meetings of the Joint Steering Committee.
(g) Decisions of the Joint Steering Committee shall be made
by unanimous consent of Aventis and Millennium, with each Party having one vote.
Either Party may convene a special meeting of the Joint Steering Committee for
the purpose of resolving disputes.
SECTION 10.2 REFERRAL OF UNRESOLVED MATTERS TO JOINT STEERING
COMMITTEE. If the Joint Technology Transfer Team is unable to reach a decision
on any matter within the scope of its responsibilities within thirty (30) days
after such matter is first considered by it, either Party may refer such
unresolved matter to the Joint Steering Committee for consideration and
resolution. In such event, a meeting of the Joint Steering Committee shall be
convened as soon as practicable in order to consider and resolve the unresolved
matter. Any determination by the Joint Steering Committee shall be final and
binding upon the Parties.
SECTION 10.3 REFERRAL OF UNRESOLVED MATTERS TO EXECUTIVE OFFICERS. If
the Joint Steering Committee is unable to resolve any matter referred to it
under Section 10.2 within thirty (30) days after the matter is referred to it,
the matter shall be referred to the Executive Officers to be
49
resolved by negotiation in good faith as soon as is practicable but in no event
later than thirty (30) days after referral. Such resolution, if any, of a
referred issue by the Executive Officers shall be final and binding on the
Parties.
SECTION 10.4 INDEPENDENT EXPERTS. Each Executive Officer shall have
the right to engage the services of any number of independent experts in the
field in question (the individual(s) so engaged by each Executive Officer to be
engaged under obligations of confidentiality) to assist the Executive Officer in
making a determination on the unresolved matter, and each Executive Officer
shall be obligated to consider in good faith the analyses and opinions of any
such independent experts engaged by either of them in making a determination.
SECTION 10.5 NON-BINDING MEDIATION. If the matter has not been
resolved by the Executive Officers within thirty (30) days of referral in
accordance with Section 10.3, or if the Executive Officers fail to meet within
such thirty (30) days, either Party may initiate a non-binding mediation
procedure. The non-binding mediation shall be administered by the American
Arbitration Association in accordance with its commercial mediation rules.
Unless otherwise mutually agreed upon by the Parties, the mediation proceedings
shall be conducted at the location chosen by the Party not originally requesting
the resolution of the dispute. The Parties agree that they shall share equally
the cost of the mediation, including filing and hearing fees, and the cost of
the mediator(s). Each Party shall have the right, at its own expense, to be
represented by counsel in such a proceeding. If any unresolved matter is not
resolved following non-binding mediation pursuant to this Section 10.5, either
Party may seek any remedy, at law or in equity, that may be available.
ARTICLE XI
REPRESENTATIONS, WARRANTIES AND COVENANTS
SECTION 11.1 REPRESENTATION OF AUTHORITY; CONSENTS. Millennium and
Aventis each represents and warrants to the other Party that as of the Execution
Date it has full right, power and authority to enter into this Agreement, this
Agreement has been duly executed by such Party and constitutes a legal, valid
and binding obligation of such Party, enforceable in accordance with its terms,
and all necessary consents, approvals and authorizations of all government
authorities and other persons required to be obtained by such Party in
connection with the execution, delivery and performance of this Agreement have
been and shall be obtained except with respect to FTC clearance pursuant to the
HSR Act.
SECTION 11.2 NO CONFLICT. Each Party represents to the other Party
that notwithstanding anything to the contrary in this Agreement, the execution
and delivery of this Agreement and the performance of such Party's obligations
hereunder (a) do not conflict with or violate such Party's corporate charter and
bylaws or any requirement of applicable laws of regulations and (b) do not and
shall not conflict with, violate or breach or constitute a default or require
any consent under, any contractual obligation of such Party.
SECTION 11.3 KNOWLEDGE OF PENDING OR THREATENED LITIGATION. Each
Party represents and warrants to the other Party that there is no claim,
investigation, suit, action or proceeding pending or, to the knowledge of such
Party, expressly threatened, against such Party before or by
50
any governmental entity or arbitrator that, individually or in the aggregate,
could reasonably be expected to (i) materially impair the ability of such Party
to perform any obligation under this Agreement or (ii) prevent or materially
delay or alter the consummation of any or all of the transactions contemplated
hereby.
SECTION 11.4 EMPLOYEE AND CONSULTANT OBLIGATIONS.
(a) Millennium represents and warrants that all of its
employees, officers, and consultants have executed agreements or have existing
obligations under law requiring, in the case of employees and officers,
assignment to Millennium of all inventions made during the course of and as the
result of their association with Millennium and, in the case of employees,
officers and consultants, obligating the individual to maintain as confidential
Millennium's Confidential Information as well as confidential information of
Aventis or any Third Party which Millennium may receive, to the extent required
to support Millennium's obligations under this Agreement.
(b) Aventis represents and warrants that all of its
employees, officers, and consultants that are supporting the performance of
Aventis' obligations under this Agreement or otherwise have access to Millennium
Process Technology shall have executed agreements or have existing obligations
under law requiring, in the case of employees and officers, assignment to
Aventis of all inventions made during the course of and as the result of their
association with Aventis and, in the case of employees, officers and
consultants, obligating the individual to maintain as confidential Aventis'
Confidential Information as well as confidential information of Millennium or
any Third Party which Aventis may receive, to the extent required to support
Aventis' obligations under this Agreement.
SECTION 11.5 SUBLICENSE RIGHTS.
(a) Except as set forth in EXHIBIT E or as otherwise
disclosed by Millennium to Aventis in a future Technology Transfer Plan,
Millennium represents and warrants to Aventis that, it has, or will have, the
right to grant sublicenses to Aventis pursuant to Section 2.1 to all Millennium
Process Technology and Sublicensed Software that are a part of the Technology
Transfer.
(b) Millennium represents and warrants to Aventis that, as
of the Execution Date, it is not in breach of any agreement with any Third Party
which would materially affect its obligations under this Agreement, and it is
not in default under any of its existing licenses with any Third Party
reasonably necessary for Millennium to fulfill its duties and obligations under
this Agreement. Millennium further represents and warrants that it shall use
commercially reasonable efforts to maintain such Third Party licenses in effect
during the Agreement Term and if Millennium has been accused of a material
breach under any such Third Party agreements or licenses, Millennium shall
within thirty (30) days of such accusation notify Aventis of such accusation.
(c) Millennium covenants that it will use commercially
reasonable efforts to obtain the right to grant sublicenses and/or transfer
proprietary information to Aventis pursuant
51
to Section 2.1 to all Millennium New Process Technology and Millennium Process
Technology Improvements that will be licensed from Third Parties by Millennium
or its Affiliates.
(d) Aventis covenants that it will use commercially
reasonable efforts to obtain the right to grant sublicenses and/or transfer
proprietary information to Millennium pursuant to Section 4.3 to all Aventis
Improvements to Millennium Process Technology that have been licensed from Third
Parties by Aventis or its Affiliates.
SECTION 11.6 EXHIBITS. Millennium represents and warrants that, as
of the Execution Date, EXHIBITS A, B, C and E to this Agreement are in all
respects true, correct, complete and accurate, it being understood that the
breach of any such representation and warranty by Millennium shall not be
grounds for termination of this Agreement by Aventis.
SECTION 11.7 INTELLECTUAL PROPERTY. Except as set forth in EXHIBIT E,
Millennium represents and warrants to Aventis that as of the Execution Date:
(a) No person or entity has asserted the invalidity, misuse,
unregistrability, unenforceability or non-infringement of any of its
intellectual property relating to the Millennium Existing Process Technology
which is the subject of this Agreement (the "Intellectual Property") or
challenged its right to the use or ownership of any of the Intellectual Property
or made any adverse claim of ownership thereof;
(b) There are no pending or, to its knowledge, threatened
claims or litigation which allege that Millennium's activities to date relating
to the Intellectual Property have violated, or by conducting its business as
currently proposed to be conducted hereunder would violate, the intellectual
property rights of any other person; and
(c) All Millennium Process Technology Patent Rights and
Copyrights and Millennium Product-Process Tool Technology Patent Rights and
Copyrights that exist as of the Execution Date are owned by Millennium, or, to
Millennium's knowledge, are validly licensed to Millennium.
(d) Nothing in this Agreement shall be construed as a
representation made or warranty given by Millennium that any patents under which
Aventis is granted a license in this Agreement will issue based on pending
patent applications or that any such pending patent applications or patents
issued thereon will include Valid Claims.
SECTION 11.8 SOFTWARE SPECIFIC.
(a) AS-DOCUMENTED WARRANTY. Millennium warrants to Aventis
that the Millennium Informatics Technology will operate in all material respects
in the manner that it works at Millennium on Millennium's platform taking into
account any differences in scale between Millennium's platform and Aventis'
informatics platform, provided that Aventis (i) has implemented the Informatics
Platform, and (ii) has not altered the operating environment of or otherwise
modified the Millennium Informatics Technology.
(b) PHYSICAL MEDIA WARRANTY. Millennium warrants to Aventis
that the Millennium Informatics Technology will be free from any material
physical defects in the media
52
that tangibly embodies such Millennium Informatics Technology. This Physical
Media Warranty does not apply to defects discovered more than thirty (30) days
after the date of delivery of the Millennium Informatics Technology or to
defects which cannot be reproduced on Millennium's platform.
(c) NO SELF-HELP CODE WARRANTY. Millennium warrants to
Aventis that no copy of the Millennium Informatics Technology contains or will
contain any Self-Help Code (defined below). As used herein, "Self-Help Code"
means any back door, time bomb, drop dead device, or other software routine
designed to disable a computer program automatically with the passage of time or
under the positive control of a person other than a licensee of the program.
Self-Help Code does not include software routines in a computer program, if any,
designed to permit an owner of the computer program to obtain access to a
licensee's computer system(s) (e.g., remote access via modem) for purposes of
maintenance or technical support.
(d) UNAUTHORIZED CODE WARRANTY. Millennium covenants that it
shall use commercially reasonable efforts, consistent with industry standards,
to conduct virus scans prior to distributing delivery media to Aventis as
contemplated in this Agreement.
(e) Y2K. Prior to January 1, 2000, as part of its overall,
company-wide Year 2000 effort based on the Government Accounting Office Y2K
Guide, Millennium investigated, evaluated and performed necessary remediation on
Millennium's critical informatic applications, excluding third party
applications. As of the Execution Date, Millennium has not experienced any
material problems involving a failure of its informatic applications to
recognize the Year 2000.
(f) NO TERMINATION. The breach of any of the provisions of
this Section 11.8 by Millennium shall not be grounds for termination of this
Agreement by Aventis.
SECTION 11.9 DISCLAIMER OF WARRANTY. Nothing in this Agreement shall
be construed as a representation made or warranty given by either Party that any
patents will issue based on pending applications or that any such pending
applications or patents issued thereon will be valid or that any Millennium
Process Technology, Millennium Research-Stage Process Technology or Aventis
Improvements to Millennium Process Technology will be operated without
interruption or will be error-free. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, EACH PARTY EXPRESSLY DISCLAIMS, WAIVES, RELEASES, AND RENOUNCES ANY
WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR, EXCEPT AS EXPRESSLY SET
FORTH IN SECTION 11.7, ANY WARRANTY THAT SUCH PARTY'S PROCESS TECHNOLOGY OR
PRODUCT-PROCESS TOOL TECHNOLOGY DOES NOT INFRINGE THE INTELLECTUAL PROPERTY
RIGHTS OF ANY THIRD PARTY.
SECTION 11.10 CONDUCT OF BUSINESS PENDING CLOSING. Millennium
covenants and agrees that between the Execution Date and the Effective Date, and
unless the Parties shall otherwise consent or agree in writing:
53
(a) Millennium will continue to research and develop
Millennium Process Technology in the ordinary course of business and consistent
with past practice;
(b) Millennium shall not, to the extent that it has a
material adverse effect on the Technology Transfer contemplated by this
Agreement, modify, amend, extend, renew or terminate any of the existing
licenses with Third Parties relating to the Millennium Process Technology;
(c) Millennium shall use commercially reasonable efforts to
conduct business in such a manner so that the representations and warranties
contained in Article 10 shall continue to be true and correct on and as of the
Effective Date as if made on and as of the Effective Date;
(d) Millennium shall make all reasonable efforts to provide
information about the Millennium Process Technology to Aventis that is
reasonably requested; and
(e) Millennium shall inform Aventis prior to the Effective
Date of any updates to EXHIBITS A, B, C and E as necessary to cause the
information contained in them to continue to be accurate up to and including the
Effective Date.
SECTION 11.11 SUBLICENSE TERMS AND CONDITIONS. Aventis expressly
agrees to the Standard Attachment, Supplemental Sublicense Terms and Conditions
and the Special Attachments set forth in EXHIBIT B.
ARTICLE XII
MISCELLANEOUS PROVISIONS
SECTION 12.1 PRODUCT LIABILITY INDEMNIFICATION.
(a) AVENTIS. Aventis agrees to defend Millennium and its
Affiliates, at Aventis' cost and expense, and will indemnify and hold Millennium
and its Affiliates and their respective directors, officers, employees and
agents (the "Millennium Indemnified Parties") harmless from and against any
losses, costs, damages, fees or expenses arising out of any Third Party claim
relating to (i) any breach by Aventis of any of its representations, warranties
or obligations pursuant to this Agreement, (ii) any sublicense and/or transfer
by Aventis of the Millennium Process Technology and/or Millennium
Product-Process Tool Technology, (iii) any personal injury resulting from the
development, manufacture, use, sale or other disposition of any product or
service offered by Aventis and/or its Affiliates or licensees to the extent that
such injury is or is alleged to be the result of the use by Aventis and/or its
Affiliates or licensees of the Transferred Millennium Process Technology,
Millennium Research-Stage Process Technology transferred to Aventis or Aventis
Improvements to Millennium Process Technology, or (iv) any personal injury
resulting from the development, manufacture, use, sale or other disposition of
any Oncology Vaccine Product by Aventis and/or its Affiliates or licensees. In
the event of any such claim against the Millennium Indemnified Parties by any
Third Party, Millennium shall promptly notify Aventis in writing of the claim
and Aventis shall manage and control, at its sole expense, the defense of the
claim and its settlement. The Millennium Indemnified Parties shall cooperate
with Aventis and may, at their option and expense, be represented in any such
action or proceeding. Aventis shall not be liable for any litigation costs or
expenses incurred by the
54
Millennium Indemnified Parties without Aventis' prior written authorization. In
addition, Aventis shall not be responsible for the indemnification of any
Millennium Indemnified Party arising from any negligent or intentional acts by
such party, or any claims compromised or settled without its prior written
consent. Notwithstanding the foregoing, (x) in the event of a personal injury
claim that is covered by the indemnification provisions of the Inflammation
Agreement, the indemnification provisions of the Inflammation Agreement shall
control and (y) in the event that both Aventis and the Millennium Indemnified
Parties are parties to a class action suit relating to the sale of substantially
similar products sold by Aventis and the Millennium Indemnified Parties, the
foregoing indemnification shall apply solely in respect of the product or
service offered by Aventis and/or its Affiliates and licensees.
(b) MILLENNIUM. Millennium agrees to defend Aventis and its
Affiliates, at Millennium's cost and expense, and will indemnify and hold
Aventis and its Affiliates and their respective directors, officers, employees
and agents (the "Aventis Indemnified Parties") harmless from and against any
losses, costs, damages, fees or expenses arising out of any Third Party claim
relating to (i) any breach by Millennium of any of its representations,
warranties or obligations pursuant to this Agreement, (ii) any sublicense and/or
transfer by Millennium of the Aventis Improvements to Millennium Process
Technology, or (iii) any personal injury resulting from the development,
manufacture, use, sale or other disposition of any product or service offered by
Millennium and/or its Affiliates or licensees to the extent that such injury is
or is alleged to be the result of the use by Millennium and/or its Affiliates or
licensees of the Transferred Millennium Process Technology, Millennium
Research-Stage Process Technology transferred to Aventis or Aventis Improvements
to Millennium Process Technology transferred to Millennium. In the event of any
claim against the Aventis Indemnified Parties by any Third Party, Aventis, shall
promptly notify Millennium in writing of the claim and Millennium shall manage
and control, at its sole expense, the defense of the claim and its settlement.
The Aventis Indemnified Parties shall cooperate with Millennium and may, at
their option and expense, be represented in any such action or proceeding.
Millennium shall not be liable for any litigation costs or expenses incurred by
the Aventis Indemnified Parties without Millennium's prior written
authorization. In addition, Millennium shall not be responsible for the
indemnification of any Aventis Indemnified Party arising from any negligent or
intentional acts by such party, or any claims compromised or settled without its
prior written consent. Notwithstanding the foregoing, (x) in the event of a
personal injury claim that is covered by the indemnification provisions of the
Inflammation Agreement, the indemnification provisions of the Inflammation
Agreement shall control and (y) in the event that both Millennium and the
Aventis Indemnified Parties are parties to a class action suit relating to the
sale of substantially similar products sold by Millennium and the Aventis
Indemnified Parties, the foregoing indemnification shall apply solely in respect
of the product or service offered by Millennium and/or its Affiliates and
licensees.
SECTION 12.2 GOVERNING LAW. This Agreement shall be construed and the
respective rights of the Parties determined according to the substantive laws of
the State of Delaware notwithstanding the provisions governing conflict of laws
under such Delaware law to the contrary, except matters of intellectual property
law which shall be determined in accordance with the intellectual property laws
relevant to the intellectual property in question; and PROVIDED, FURTHER, that
the U.N. Convention of the International Sale of Goods shall not apply. English
shall be the governing language for the construction and interpretation of this
Agreement.
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SECTION 12.3 ASSIGNMENT. Neither Millennium nor Aventis may assign
this Agreement in whole or in part without the consent of the other, except if
such assignment occurs in connection with the sale or transfer (by merger or
otherwise) of all or substantially all of the business and assets of Millennium
(subject to Section 9.4(a)) or Aventis to which the subject matter of this
Agreement pertains, provided that the acquirer confirms to the other Party in
writing its agreement to be bound by all of the terms and conditions of this
Agreement. Each Party agrees that, notwithstanding any provisions of this
Agreement to the contrary, in the event that this Agreement is assigned by
Millennium in connection with the sale or transfer of all or substantially all
of the business and assets of the Millennium to which the subject matter of this
Agreement pertains (including in the context of a Change of Control), Millennium
shall demonstrate to the reasonable satisfaction of Aventis that the acquirer of
Millennium shall maintain the Millennium Process Technology, and continue to
conduct research and development with respect thereto. Notwithstanding the
definitions set forth in this Agreement with respect to Affiliates and the fact
that an acquirer of a Party would constitute an Affiliate of such Party, in the
case of any assignment of this Agreement such assignment shall not provide the
non-assigning Party with rights or access to intellectual property or technology
of the acquirer of the assigning Party. Notwithstanding the foregoing, Aventis
may assign this Agreement to an Affiliate, provided that Aventis shall guarantee
the performance of such Affiliate, and provided further that either Party may
assign its rights, but not its obligations, pursuant to this Agreement in whole
or in part to an Affiliate of such Party that is controlled by such Party. It is
expressly understood that Aventis may transfer or assign all rights and
obligations under this Agreement relating to Selected Vaccine Targets and
Oncology Vaccine Products to Aventis-Pasteur or any other Affiliate of Aventis
engaged in the business of oncology vaccines.
SECTION 12.4 ENTIRE AGREEMENT. This Agreement, the Schedules
attached hereto, and the Exhibits referred to in this Agreement constitute the
entire agreement between the Parties with respect to the subject matter hereof,
and supersede all previous arrangements with respect to the subject matter
hereof, whether written or oral. The Parties acknowledge that the Exhibits
referred to in this Agreement are being simultaneously delivered by Millennium
to Aventis on or before the Execution Date. The Parties also acknowledge the
simultaneous execution and delivery of the Technology Development Agreement, the
Inflammation Agreement, and the Investment Agreement between the Parties dated
as of the Execution Date, none of which shall be superseded by this Agreement.
SECTION 12.5 AMENDMENTS. Any amendment or modification to this
Agreement shall be made in writing signed by both Parties.
SECTION 12.6 NOTICES.
Notices to Millennium shall be addressed to:
Millennium Pharmaceuticals, Inc.
00 Xxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: Chief Executive Officer
56
Facsimile No.: (000) 000-0000
with a copy to:
Attention: Legal Department
Notices to Aventis shall be addressed to:
Aventis Pharmaceuticals Inc.
Xxxxx 000-000
X.X. Xxx 0000
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Attention: Vide President, Technology Licensing and Alliances
Facsimile No.: (000) 000-0000
with a copy to:
Attention: Vice President, Legal Corporate Department
Facsimile No.: (000) 000-0000
Either Party may change its address to which notices shall be sent by
giving notice to the other Party in the manner herein provided. Any notice
required or provided for by the terms of this Agreement shall be in writing and
shall be (a) sent by registered or certified mail, return receipt requested,
postage prepaid, (b) sent via a reputable overnight courier service, or (c) sent
by facsimile transmission, in each case properly addressed in accordance with
the paragraph above. The effective date of notice shall be the actual date of
receipt by the Party receiving the same.
SECTION 12.7 FORCE MAJEURE. No failure or omission by either Party in
the performance of any obligation of this Agreement shall be deemed a breach of
this Agreement or create any liability if the same shall arise from any cause or
causes beyond the control of such Party, including, but not limited to, the
following: acts of gods; acts or omissions of any government; any rules,
regulations or orders issued by any governmental authority or by any officer,
department, agency or instrumentality thereof; fire; storm; flood; earthquake;
accident; war; rebellion; insurrection; riot; and invasion; provided that such
failure or omission resulting from one of the above causes is cured as soon as
is practicable after the occurrence of one or more of the above mentioned causes
and in no event more than two hundred seventy (270) days after the date of
occurrence.
SECTION 12.8 COMPLIANCE WITH EXPORT REGULATIONS. Neither Party shall
export any technology licensed to it by the other Party under this Agreement
except in compliance with U.S. and other applicable export laws and regulations,
including without limitation, the Export Administration Regulations and the
International Traffic in Arms Regulations.
SECTION 12.9 SECTION 365(n) OF THE BANKRUPTCY CODE. All rights and
licenses granted under or pursuant to any section of this Agreement are, and
shall otherwise be, deemed to be, for purposes of Section 365(n) of the
Bankruptcy Code, licenses of rights to "intellectual property"
57
as defined under Section 101(35A) of the Bankruptcy Code. The Parties shall
retain and may fully exercise all of their respective rights and elections under
the Bankruptcy Code. Upon the bankruptcy of either Party, the non-bankrupt Party
shall further be entitled to a complete duplicate of (or complete access to, as
appropriate) any such intellectual property, and such, if not already in its or
their possession, shall be promptly delivered to the non-bankrupt Party, unless
the bankrupt Party elects to continue, and continues, to perform all of its
obligations under this Agreement.
SECTION 12.10 PUBLIC ANNOUNCEMENTS. On the Execution Date, the Parties
shall issue one or more press release(s). Any announcements or similar publicity
with respect to the execution of this Agreement shall be agreed upon between the
Parties in advance of such announcement. The Parties agree that any such
announcement will not contain confidential business or technical information
and, if disclosure of confidential business or technical information is required
by law or regulation, will make commercially reasonable efforts to minimize such
disclosure and obtain confidential treatment for any such information which is
disclosed to a governmental agency or group. Each Party agrees to provide to the
other Party a copy of any public announcement as soon as reasonably practicable
under the circumstances prior to its scheduled release. Except under
extraordinary circumstances, each Party shall provide the other with an advance
copy of any press release at least five (5) business days prior to the scheduled
disclosure. Each Party shall have the right to expeditiously review and
recommend changes to any announcement regarding this Agreement or the subject
matter of this Agreement. Except as otherwise required by law, the Party whose
press release has been reviewed shall remove any information the reviewing Party
reasonably deems to be inappropriate for disclosure. The contents of any such
announcement or similar publicity which has been reviewed and approved by the
reviewing Party can be re-released by either Party without a requirement for
re-approval. Furthermore, each Party shall give the other Party a reasonable
opportunity to review all filings with the United States Securities and Exchange
Commission describing the terms of this Agreement prior to submission of such
filings, and shall give due consideration to any reasonable comments by the
non-filing Party relating to such filing, including without limitation the
provisions of this Agreement for which confidential treatment should be sought.
SECTION 12.11 NON-SOLICITATION. During the Agreement Term, and for a
period of one (1) year thereafter, neither Party shall either directly or
indirectly solicit, recruit, induce, encourage or attempt to induce or encourage
any employee of the other Party, or independent contractor primarily dedicated
to the other Party to terminate his or her employment with such other Party and
become employed by or consult for such Party whether or not such individual is
engaged full-time by such other Party, and whether or not such employment is
pursuant to a written agreement or is at-will.
SECTION 12.12 INDEPENDENT CONTRACTORS. It is understood and agreed
that the relationship between the Parties is that of independent contractors and
that nothing in this Agreement shall be construed as authorization for either
Millennium or Aventis to act as agent for the other. Members of the Joint
Steering Committee, the Joint Technology Transfer Team and Joint Oncology
Vaccine Committee shall be, and shall remain, employees of Millennium or
Aventis, as the case may be. No Party shall incur any liability for any act or
failure to act by members of the Joint Steering Committee, the Joint Technology
Transfer Team, and Joint Oncology Vaccine Committee who are employees of such
other Party.
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SECTION 12.13 NO STRICT CONSTRUCTION. This Agreement has been prepared
jointly and shall not be strictly construed against either Party.
SECTION 12.14 HEADINGS. The captions or headings of the sections or
other subdivisions hereof are inserted only as a matter of convenience or for
reference and shall have no effect on the meaning of the provisions hereof.
SECTION 12.15 NO IMPLIED WAIVERS; RIGHTS CUMULATIVE. No failure on
the part of Millennium or Aventis to exercise, and no delay in exercising,
any right, power, remedy or privilege under this Agreement, or provided by
statute or at law or in equity or otherwise, shall impair, prejudice or
constitute a waiver of any such right, power, remedy or privilege or be
construed as a waiver of any breach of this Agreement or as an acquiescence
therein, nor shall any single or partial exercise of any such right, power,
remedy or privilege preclude any other or further exercise thereof or the
exercise of any other right, power, remedy or privilege.
SECTION 12.16 SEVERABILITY. If any provision hereof should be held
invalid, illegal or unenforceable in any respect in any jurisdiction, the
Parties hereto shall substitute, by mutual consent, valid provisions for such
invalid, illegal or unenforceable provisions which valid provisions in their
economic effect are sufficiently similar to the invalid, illegal or
unenforceable provisions that it can be reasonably assumed that the Parties
would have entered into this Agreement with such valid provisions. In case such
valid provisions cannot be agreed upon, the invalidity, illegality or
unenforceability of one or several provisions of this Agreement shall not affect
the validity, of this Agreement as a whole, unless the invalid, illegal or
unenforceable provisions are of such essential importance to this Agreement that
it is to be reasonably assumed that the Parties would not have entered into this
Agreement without the invalid, illegal or unenforceable provisions.
SECTION 12.17 EXECUTION IN COUNTERPARTS. This Agreement may be
executed in counterparts, each of which counterparts, when so executed and
delivered, shall be deemed to be an original, and all of which counterparts,
taken together, shall constitute one and the same instrument.
SECTION 12.18 NO THIRD PARTY BENEFICIARIES. No person or entity other
than Aventis, Millennium and their respective Affiliates and permitted assignees
hereunder shall be deemed an intended beneficiary hereunder or have any right to
enforce any obligation of this Agreement.
SECTION 12.19 NO CONSEQUENTIAL DAMAGES. UNLESS RESULTING FROM A
PARTY'S WILLFUL MISCONDUCT, NEITHER PARTY HERETO SHALL BE LIABLE FOR SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT OR THE
EXERCISE OF ITS RIGHTS HEREUNDER, INCLUDING WITHOUT LIMITATION LOST PROFITS
ARISING FROM OR RELATING TO ANY BREACH OF THIS AGREEMENT, REGARDLESS OF ANY
NOTICE OF SUCH DAMAGES. NOTHING IN THIS SECTION 12.19 IS INTENDED TO LIMIT OR
RESTRICT THE INDEMNIFICATION RIGHTS OR OBLIGATIONS OF EITHER PARTY.
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ARTICLE XIII
HSR FILING
SECTION 13.1 HSR FILING. To the extent necessary, each of Millennium
and Aventis shall, within fifteen (15) days after the Execution Date, file with
the FTC and the Antitrust Division of the DOJ, any notification and report form
required of it in the reasonable opinion of both Parties under the HSR Act with
respect to the transactions contemplated hereby. The Parties shall cooperate
with one another to the extent necessary in the preparation of any notification
and report form required to be filed under the HSR Act. Each Party shall be
responsible for its own costs, expenses, and filing fees associated with any
filing under the HSR Act.
SECTION 13.2 HSR-RELATED DEFINITIONS. As used in Section 13.1, the
following terms have the following meanings:
(a) "DOJ" means the United States Department of Justice.
(b) "FTC" means the United States Federal Trade Commission.
(c) "HSR ACT" means the Xxxx-Xxxxx-Xxxxxx Antitrust
Improvements Act of 1976, as amended (15 U.S.C. Sec. 18a), and the rules and
regulations promulgated thereunder.
(d) "HSR CLEARANCE DATE" shall mean the earlier of (i) the
date on which the FTC shall notify Millennium and Aventis of early termination
of the applicable waiting period under the HSR Act or (ii) the day after the
date on which the applicable waiting period under the HSR Act expires.
(e) "HSR FILING" means filings by Aventis and Millennium
with the FTC and the Antitrust Division of the DOJ of a Notification and Report
Form for Certain Mergers and Acquisitions (as that term is defined in the HSR
Act) with respect to the matters set forth in this Agreement, together with all
required documentary attachments thereto.
ARTICLE XIV
CLOSING
SECTION 14.1 OBLIGATIONS. The respective obligations of each
Party to effect the transactions contemplated under this Agreement shall be
subject to the satisfaction, at or prior to the Effective Date, of the following
conditions (the performance of any of which by the other Party may be waived in
writing by Millennium or Aventis).
(a) DECREES. Neither Millennium nor Aventis shall be subject
to any order, decree or injunction by a court of competent jurisdiction which
prevents or materially delays the consummation of the transactions contemplated
hereby.
(b) COMPLIANCE. No statute, rule or regulation shall have
been enacted by the government, or any governmental agency of the United States
or any state, municipality or other
60
political subdivision thereof, that makes the consummation of the transactions
contemplated hereby illegal.
(c) REPRESENTATIONS AND WARRANTIES. The representations and
warranties of the other Party shall be accurate in all material respects as of
the time of the Effective Date and such other Party shall have delivered a
certificate of an officer certifying the same, subject to such non-material
updates as may be provided by one Party to the other Party prior to the
Effective Date.
(d) PERFORMANCE AND COMPLIANCE. Each Party shall have
performed all of the covenants and complied with all of the provisions required
by this Agreement to be performed or complied with by it on or before the
Effective Date.
(e) OTHER AGREEMENTS. The closing under the Technology
Development Agreement, the Investment Agreement and the Inflammation Agreement
shall occur simultaneously with the closing under this Agreement.
(f) SATISFACTORY INSTRUMENTS. All instruments and documents
required on the Execution Date to effectuate and consummate the transactions
contemplated hereby, including this Agreement, the Technology Development
Agreement, the Inflammation Agreement, and the Investment Agreement, shall have
been delivered in form and substance reasonably satisfactory to each Party and
their respective counsel.
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.]
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IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
date first set forth above.
MILLENNIUM PHARMACEUTICALS, INC.
By: /s/ Xxxxxx X. Xxxxxxxx
------------------------------
Title: Chief Business Officer
---------------------------
AVENTIS PHARMACEUTICALS INC.
By: /s/ Xxxxx Xxxxxxx, M.D.
------------------------------
Title: Executive Vice President
---------------------------
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
SCHEDULE I
PROCESS TECHNOLOGY
Category Applications
-------- ------------
Target Discovery Technologies: For [**]; for [**] and [**].
Target Validation Technologies: For [**] in [**] or [**]; for [**] and [**].
High-Throughput Screening Technologies: For [**]; for [**] of [**].
Protein Analysis Technologies: For [**] in [**] or [**] .
Pharmacogenomics and Genetics Technologies: For [**], and [**].
Predictive Pharmacology Technologies: For [**] and [**] of [**].
Automation/Robotics Technologies: For [**] technologies of the types listed above.
Informatics Technologies: For the [**] and for the [**] and [**], in each
case, in connection with [**] of the types listed
above.
Each of the technology categories listed in the first column above (other than
Automation/Robotics Technologies and Informatics Technologies) is referred to in
the Agreement as a "Process Technology Category".
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
SCHEDULE II
TRANSFERRED MILLENNIUM PROCESS TECHNOLOGY AND THIRD PARTY SOFTWARE MAINTENANCE
AND SUPPORT
GENERAL
The Base Technology Transfer Services to be provided by Millennium, at
no cost to Aventis, shall consist of the following maintenance and support for
the Transferred Millennium Process Technology and the Third Party Software, as
such maintenance and support may be expressly supplemented or amended in writing
pursuant to the Technology Transfer Plan:
1. Problem reporting, tracking and monitoring by a dedicated
connection or by encrypted electronic mail via the Internet.
2. Reasonable telephone and/or email support as further described
below.
3. Error correction and bug fixes as further described below.
4. Delivery and installation of Upgrades in accordance with the
instructions of the Joint Technology Transfer Team.
5. Training as agreed upon in the Technology Transfer Plan.
MAINTENANCE AND SUPPORT PROCESS
Millennium shall provide Aventis with a telephone number and electronic mail
address to facilitate Millennium's provision of the maintenance and support
described in this Schedule II. All maintenance and support shall be provided
Monday through Friday, during the hours of 9:00 a.m. to 6:00 p.m. Eastern
Standard Time, excluding Millennium's standard holidays (the "Support Hours").
1. GENERAL SUPPORT
a. GENERAL USER AND ADMINISTRATIVE SUPPORT. Following the transfer of the
Transferred Millennium Process Technology to Aventis, Millennium shall
provide Aventis' general users and administrative support individuals
via the designated Aventis contact person or persons for the component
at issue, with reasonable telephone and email support during the
Support Hours for general questions or problems regarding the operation
and maintenance of the Transferred Millennium Process Technology.
Aventis will telephone or email Millennium with any such question or
problem and Millennium will contact Aventis within [**] of
Millennium's receipt thereof, provided that if the end of such [**]
period falls after the close of the Support Hours on any given day,
Millennium's response will be on the next business day within the
Support Hours. If necessary, Millennium will then further respond to
such question within [**] of Millennium's initial contact provided
that if the end of such [**] period falls after the close of the
Support Hours on any given day, Millennium's response will be on
the next business day within the Support Hours. It is expressly
understood by Aventis that due to the complexity of the Transferred
Millennium Process Technology, Millennium's response may not
necessarily include a solution to the question or
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
problem. In addition, for its administrative support individuals, Aventis may
establish, after consultation with Millennium, [**].
b. DEVELOPER AND COMPUTATIONAL BIOLOGIST SUPPORT. Following the transfer
of the Transferred Millennium Process Technology to Aventis, Millennium
shall provide Aventis' developers and computational biologists via the
designated Aventis contact person or persons for the component at
issue, with reasonable telephone and email support during the Support
Hours for questions or problems regarding the operation and maintenance
of the Transferred Millennium Process Technology and to the extent
expressly set forth in the Agreement, for questions or problems
regarding the functionality, development or modification of the
Transferred Millennium Process Technology. Aventis will telephone or
email Millennium with any such question or problem and Millennium will
contact Aventis [**] of Millennium's receipt thereof and will use
commercially reasonable efforts to answer Aventis' question or
problem, provided that if the end of such [**] period falls after
the close of the Support Hours on any given day, Millennium's
response will be on the next business day within the Support Hours.
If necessary, Millennium will then respond to such question or
problem within [**] of Millennium's initial contact provided that
if the end of such [**] period falls after the close of the
Support Hours, Millennium's response will be on the next business
day within the Support Hours. It is expressly understood by Aventis
that due to the complexity of the Transferred Millennium Process
Technology, Millennium's response may not necessarily include a
solution to the question or problem.
2. ERROR CORRECTION SUPPORT FOR TRANSFERRED MILLENNIUM PROCESS TECHNOLOGY
Aventis will promptly notify Millennium by telephone and/or email
via the designated Aventis contact person for the component at issue, of each
problem that Aventis is experiencing that Aventis reasonably believes results
from Transferred Millennium Process Technology and for which Aventis seeks
support from Millennium. Aventis shall provide Millennium with a reasonably
detailed description of the problem and any information, data and assistance
reasonably necessary to permit Millennium to diagnose or reproduce the
problem. Millennium will contact Aventis within [**] of Millennium's receipt
thereof and will use commercially reasonable efforts to answer Aventis'
question or resolve the problem in such response, provided that if such [**]
period falls outside of the Support Hours, Millennium's response will be on
the next day falling within the Support Hours. It is expressly understood by
Aventis that due to the complexity of the Transferred Millennium Process
Technology, Millennium's response may not necessarily include a solution to
the question or problem. If necessary, Millennium will then provide a
preliminary assessment of the problem within [**] Millennium's initial
contact and will attempt to remedy such problem via telephone or email with
the assistance of Aventis, provided that if such [**] period falls outside of
the Support Hours, Millennium's response will be on the next day falling
within the Support Hours. If such problem cannot be remedied in such a manner
and if the problem can be reproduced on Millennium's own platform, the
problem shall be escalated in accordance with the following severity schedule:
a. If Aventis reports a Critical Error, Millennium shall promptly initiate
the following procedures: (a) immediately assign appropriate Millennium
specialist(s) to
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
seek to correct the Critical Error; (b) provide ongoing daily
communication on the status of the correction; and (c) immediately,
begin to identify a workaround, patch or solution, at no additional
cost. For purposes hereunder, a "CRITICAL ERROR" means a failure of the
Transferred Millennium Process Technology to perform or a malfunction
in the Transferred Millennium Process Technology that degrades the use
of the Transferred Millennium Process Technology such that the error:
(a) renders the Transferred Millennium Process Technology inoperative;
and/or (b) causes the Transferred Millennium Process Technology to fail
catastrophically and for which there is no viable detour or work
around; and materially impacts Aventis' substantive use of the
technology platform.
b. If Aventis reports a Major Error, Millennium shall promptly initiate
the following procedures: (a) assign Millennium specialist(s) to
commence correction of the Major Error; (b) provide ongoing
communication on the status of the correction as requested by Aventis
and (c) promptly begin to identify a patch or solution for the Major
Error. For purposes hereunder, a "MAJOR ERROR" means a failure of the
Transferred Millennium Process Technology to perform or a malfunction
in the Transferred Millennium Process Technology that degrades the use
of the Transferred Millennium Process Technology such that the error
materially affects performance or usability of the Transferred
Millennium Process Technology, but does not prohibit Aventis' use of
the Transferred Millennium Process Technology.
c. If Aventis reports a Minor Error, Millennium shall provide Aventis with
reasonable updates of its progress on remedying the Minor Error. For
purposes hereunder, a "MINOR ERROR" means a failure of the Transferred
Millennium Process Technology to perform or a malfunction in the
Transferred Millennium Process Technology that degrades the use of the
Transferred Millennium Process Technology such that the error causes
only minor impact to the use of the Transferred Millennium Process
Technology. If and when a minor error is corrected it will be included
in the next release.
3. ERROR CORRECTION SUPPORT FOR THIRD PARTY SOFTWARE.
Aventis will promptly notify Millennium by telephone and/or email via the
designated Aventis contact person for the component at issue, of each problem
that Aventis is experiencing that Aventis reasonably believes is due to Third
Party Software and for which Aventis seeks support from Millennium. Aventis
will provide Millennium with a reasonably detailed description of the problem
and any information, data and assistance reasonably necessary to permit
Millennium to diagnose or reproduce the problem. Millennium will contact
Aventis within [**] of Millennium's receipt thereof and will use commercially
reasonable efforts to answer Aventis' question or resolve the problem in such
response, provided that if such [**] period falls outside of the Support
Hours, Millennium's response be on the next day falling within the Support
Hours. It is expressly understood by Aventis that due to the complexity of
the Transferred Millennium Process Technology, Millennium's response may not
necessarily include a solution to the question or problem. If necessary,
Millennium will then provide a preliminary assessment of the problem within
[**] of Millennium's initial
contact. This preliminary assessment will consist of an assessment of whether
the reported problem appears to be a problem resulting from Transferred
Millennium Process Technology, a Millennium modification to Third Party
Software, or unmodified Third Party Software. In the event the problem results
from Transferred Millennium Process Technology or a Millennium modification to
Third Party Software, such problem shall be handled in accordance with the
provisions for Error Correction for Transferred Millennium Process Technology as
described above. If the problem results from unmodified Third Party Software
then, if Millennium is able to reproduce the problem in Millennium's environment
and if Millennium elects to remedy the problem for Millennium's environment,
Millennium will, to the extent Millennium is not contractually prohibited by the
applicable vendor, provide such remedy to Aventis if and when such problem is
resolved.
4. LIMITATIONS.
a. Except as expressly set forth herein, Millennium shall have no support
or maintenance obligations in connection with problems arising from
unmodified Sublicensed Software or Direct Licensed Software or any
software that is modified by anyone other than Millennium unless such
software constitutes an Aventis Improvement to Transferred Millennium
Process Technology that Millennium has incorporated into Millennium's
own platform.
b. Millennium acknowledges that there will be problems that cannot be
reproduced on Millennium's own platform, and in such cases, Millennium
shall use commercially reasonable efforts in assisting Aventis with the
resolution of such problems but shall have no further obligations with
respect to such unreproducible problems. Aventis agrees that in the
event that the problem is caused by Aventis, then Aventis shall pay
Millennium commercially reasonable rates, on a time and material basis,
plus any additional expense of Millennium (including without limitation
travel costs and living expenses) for the provision of such assistance.
c. Support shall be provided by Millennium only for (a) the then current
release level of the Millennium Process Technology and the version of
the Third Party Software then in use by Millennium and (b) the most
recent prior release level of the Millennium Process Technology and the
version of the Third Party Software then in use by Millennium for the
first six (6) months after the release of the then current release
level. Notwithstanding the foregoing, in the event that Millennium has
not made available to Aventis, the then current release level of the
Millennium Process Technology or the version of Sublicensed Software
then in use by Millennium as the case may be, then Millennium shall
provide support for the most recent release of the Millennium Process
Technology and Sublicensed Software components provided to Aventis and
will thereafter provide Aventis with the most current release level,
subject to, in the case of Sublicensed Software, any third party
restrictions, additional license terms required by the Sublicensed
Software licensors and the payment of any related vendor/institution
license and/or maintenance fees.
d. Millennium shall have no obligation to provide support or maintenance
for any Aventis sublicensees.
