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EXHIBIT 10.23
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
BETWEEN
COMBICHEM, INC.
AND
ATHENA NEUROSCIENCES, INC.
OCTOBER 15, 1997
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COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
THIS COLLABORATIVE RESEARCH AND LICENSE AGREEMENT (the
"Agreement") is entered into and made effective as of October 15, 1997 (the
"Effective Date"), by and between COMBICHEM, INC., a Delaware corporation
having its principal offices at 0000 Xxxxxx Xxxxx Xx, Xxx Xxxxx, Xxxxxxxxxx
00000 ("CombiChem") and ATHENA NEUROSCIENCES, INC., a Delaware corporation and a
wholly-owned subsidiary of Elan Corporation, plc ("Elan"), having its principal
offices located at 000 Xxxxxxx Xxxxxxxxx, Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
("Athena").
WHEREAS, CombiChem has developed and owns certain drug discovery
technology and intellectual property rights, including chemical library design
software, multi-parallel synthesis and purification methods, chemical libraries
suitable for high throughput biological screening assays and medicinal chemistry
(collectively, "CombiChem Technology");
WHEREAS, as of the Effective Date, Elan, Athena and their Affiliates
have developed and own certain drug discovery and intellectual property rights,
including certain assays, methods and know how regarding the *** among other
things (collectively "Athena Technology");
WHEREAS, Athena desires to utilize CombiChem Technology for its drug
discovery activities under Athena know-how concerning the identification and
characterization of novel small molecule inhibitors for development as
therapeutics for treatment of central nervous system conditions in humans;
WHEREAS, the parties wish to collaborate in a Research Program
against Target(s) ("Collaboration");
WHEREAS, during the Research Period and for purposes of the
Collaboration, the Parties intend to focus on up to six (6) Collaboration
Targets;
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "Abandoned Target" shall have the meaning given in Section 4.1.
1.2 "Abandoned Compound" shall have the meaning given in Section
4.1.
1.3 "Active Compound(s)" means a compound (or compounds) which
(a) (i) is selected by *** under the Research Program
from Collaboration Compounds under Section 4.2, or
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(ii) is a Derivative of a Collaboration Compound which
is so by *** and
(b) shows In Vitro Activity.
1.4 "Affiliate" of a Party means any corporation or other business
entity controlled by, controlling or under common control with, such Party. For
this purpose "control" shall mean direct or indirect beneficial ownership of
more than fifty percent (50%) of the voting securities or income interest in
such corporation or other business, or if not meeting the preceding
requirements, any company owned or controlled by or owning or controlling such
Party at the maximum control or ownership right permitted in the country where
such company exists.
1.5 "Athena Compound" means a chemical compound that is proprietary
to Athena or whose use or manufacture is proprietary to Athena or its
Affiliates.
1.6 "Athena Technology" shall have the meaning set forth in the
preamble of this Agreement.
1.7 "Collaboration" has the meaning set forth in the preamble.
1.8 "Collaboration Compound(s)" means a compound (or compounds)
which (a) is synthesized following the Effective Date for screening against a
Collaboration Target under the Research Program, (b) is a pre-existing or
hereafter acquired CombiChem compound which CombiChem desires to designate as a
Collaboration Compound, or (iii) is a pre-existing or hereafter acquired Athena
compound which Athena desires to designate as a Collaboration Compound.
1.9 "Collaboration Library" means a library synthesized under the
direction of the RMC, containing compounds designed to provide information
regarding activity against a specific Collaboration Target.
1.10 "Collaboration Target(s)" means either an Initial Target or an
Optional Target.
1.11 "CombiChem Compound" means a chemical compound that is
proprietary to CombiChem, or whose use or manufacture is proprietary to
CombiChem.
1.12 "CombiChem Technology" has the meaning set forth in the
preamble.
1.13 "Confidential Information" includes, but is not limited to,
(a) all information and materials received by either Party
from the other Party pursuant to this Agreement which is
confidential under Article 11;
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(b) all information and materials by either Party arising
out of the Collaboration during the Research Period;
(c) all Daughter Libraries, excluding Inactive Compounds and
Returned Compounds; and
(d) the financial terms of this Agreement.
1.14 "Daughter Libraries" shall mean the compound libraries which
are designed and synthesized as a part of the Collaboration.
1.15 "Derivative" shall mean a compound (or compounds) which has
resulted from subsequent chemical synthesis to generate an Active Compound or
Development Compound in support of the Research Program.
1.16 "Development Compound(s)" means a compound ( or compounds)
which
(a) (i) is an Active Compound or (ii) is a Derivative of an
Active Compound; and
(b) is determined by *** to be appropriate for preclinical
studies for the purpose of IND filing by Athena.
1.17 "Due Diligence" means the use of by a Party of its or its
Affiliates' resources in a manner which is consistent with the exercise of
reasonable and prudent scientific and business judgment as applied to other
programs of Athena or CombiChem, as the case may be, targeting products aimed at
markets or patient groups of similar sizes and of similar scientific and
commercial potential. With respect to any Development Compound, ***
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Diligence by any Party shall be established if such Party receives written
notice describing such failure and does not cure such failure within ninety (90)
days of the receipt of such notice.
1.18 "Exclusivity Period" means the Research Period ***
1.19 "Field" means all therapeutic and diagnostic indications in
humans for any target against which an Active Compound, Development Compound or
Products may be directed.
1.20 "First Commercial Sale" of a Product shall mean the first sale
for use or consumption of such Product in a country after required marketing and
pricing approval has been granted by the governing health regulatory authority
of such country. Sale to an Affiliate shall not constitute a First Commercial
Sale unless the Affiliate is the end user of the Product.
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1.21 "FTE" shall mean a full-time equivalent employee of CombiChem.
For of this Agreement, the FTEs shall include ***
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1.22 "Inactive Compound(s)" means a Collaboration Compound(s) which
does not have the In Vitro Activity required for an Active Compound.
1.23 "In Vitro Activity" shall mean the observation of *** in assays
as described by Athena in the Research Plan for each Collaboration Target.
1.24 "Initial Target" shall have the meaning set forth in Section
3.1 hereof.
1.25 "Net Sales" means the gross sales invoiced by Athena or its
Affiliates for Products to non-Affiliated Third Parties (and to Affiliates who
are the end users of such Products) less actual deductions or returns (including
withdrawals and recalls), rebates (price reductions, including formulary or
Medicaid and similar types of rebates, e.g. chargebacks), cash, trade or volume
(quantity) discounts, discounts granted at the time of invoicing, the cost of
transport, insurance, delivery, sales taxes and use, tariff, excise or other
taxes (other than income taxes) directly linked to and included in the gross
sales amount as computed on a product-by-product basis for the countries
concerned, whereby the amount of such sales in foreign currencies is converted
into United States dollars at the exchange rate of the last business day for
each calendar month as reported in The Wall Street Journal.
1.26 ***
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1.27 "Patent" means (a) valid and enforceable Letters Patent, and
any non-U.S. equivalent, including any extension (including Supplemental
Protection Certificates), registration, confirmation, reissue, continuation,
divisionals, continuation-in-part, reexamination or renewal thereof, or (b)
pending applications for any of the foregoing, whether filed or issued before or
after the Effective Date of this Agreement.
1.28 "Party" means CombiChem or Athena, as the case may be,
including their respective Affiliates, permitted successors and assigns.
1.29 "Product(s)" means any product containing an Active Compound or
Development Compound with such compound as the active ingredient and which is
granted regulatory approval by the governing health regulatory authority of the
applicable country for marketing in the Field.
1.30 "Project Team" shall have the meaning set forth in Section
2.1(c).
1.31 "Proposed Targets" shall have the meaning given in Section 3.1.
1.32 ***
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1.33 "Research Management Committee" or "RMC" has the meaning set
forth in Article 6 below.
1.34 "Research Period" means the initial term of the Collaboration
commencing on the Effective Date and *** unless earlier terminated, which can be
extended in accordance with Section 7.1 below.
1.35 "Research Plan" means the research plan to be agreed in writing
between the Parties, which describes the research activities to be performed for
each Collaboration Target.
1.36 "Research Program" means the research to be conducted for the
Collaboration including, without limitation, the activities described in the
Research Plan and set forth in Sections 2.1 and 2.2 of this Agreement.
1.37 "Returned Compound" shall have the meaning set forth in Section
9.2.
1.38 "Royalty Term" means, in the case of any Product, in any
country, the period of time commencing on the First Commercial Sale and ending
upon the later of ***
*** from the date of First Commercial Sale in such country; or (b) the
expiration of the last-to-expire Patent resulting from the Research Program
filed in the Field during the Exclusivity Period with claims covering that
Product in the relevant country.
1.39 "Target" means a biomolecular entity that a small molecule is
synthesized against wherein the small molecule demonstrates relevant activity.
1.40 "Territory" means the entire world.
1.41 "Third Party" means an entity other than CombiChem or Athena or
their respective Affiliates.
1.42 "UIL" means CombiChem's proprietary Universal Informer
Library(TM).
2. RESEARCH COLLABORATION
2.1 CombiChem Responsibilities. CombiChem shall with Due Diligence
provide the following resources to Athena and conduct the following activities
under the Research Program and as more fully described in the Research Plan:
(a) During the Research Period, CombiChem shall (i) review
data and information regarding the Collaboration Targets
provided by Athena; (ii) based on such data and
information and using the
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CombiChem Technology, design Daughter Libraries; and
(iii) supply all lead chemistries and synthesize
compounds as provided in Section 5.4 below.
(b) During the Research Period, CombiChem shall keep Athena
informed of its activities performed in connection with
the Collaboration, including, without limitation,
providing Athena with data and information (and, upon
Athena's request, reasonable quantities of samples
pursuant to Section 5.4) regarding the status of all
Collaboration Compounds prior to the meetings of the
Research Management Committee.
(c) Subject to Section 2.3, Article 3 and Section 8.3, and
at all times during the Research Period, ***
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2.2 Athena Responsibilities. Athena shall with Due Diligence provide
the following resources to CombiChem and conduct the following activities under
the Research Program as more fully described in the Research Plan:
(a) Athena shall provide CombiChem with funding for the
Collaboration as set forth in Article 8, provide
screening, biological and structural data and
information (including leads and/or screening hits and
assay methods relating to Collaboration Compounds) to
CombiChem with respect to the Collaboration necessary
for CombiChem to perform its duties under this
Agreement, and will assume scientific, financial and
administrative responsibility for screening and
biological support activities, drug development and
regulatory filings during and after the term of the
Collaboration on the terms set forth below. ***
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(b) During the Research Period, Athena shall provide
CombiChem with data and information regarding
Collaboration Compounds and the Collaboration Target
assays developed by Athena under the Research Program
prior to the meetings of the Research Management
Committee.
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(c) During the Exclusivity Period, Athena shall ***
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(d) During the Exclusivity Period, with respect to any
Collaboration Target against which an Active Compound
has designated by the RMC, Athena shall (i) *** (ii)
endeavor to determine Development Compounds, and (iii)
endeavor to develop Products. ***
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(e) Following the first IND filing through First Commercial
Sale, Athena shall provide CombiChem with an annual
report summarizing Athena's activities in developing
Development Compounds.
2.3 Conduct of Research Program. The Parties hereby agree that the
Research Programs shall be carried out in accordance with the Research Plan, as
amended from time to time. The Research Management Committee shall review the
Research Plan on an ongoing basis and may make changes to the Research Plan so
long as such changes are mutually agreed to by CombiChem and Athena. ***
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2.4 Third Party Licenses. Each Party shall be solely responsible for
any Third Party license fees required to perform its obligations under this
Agreement.
3. TARGETS
3.1 ***
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3.2 ***
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4. EXCLUSIVITY
4.1 Collaboration Target Exclusivity. Prior to designating a
Collaboration Target for an active Research Program under Article 3, and
thereafter so long as ***
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4.2 Active Compounds. Following the designation of any Collaboration
Compound as an Active Compound, such Active Compound shall be exclusively
available to Athena for research or application to any Target, within or outside
the Collaboration, during the
*** and CombiChem shall not knowingly work on or knowingly provide
information regarding such Active Compound to any Third Party, except to reject
and take any steps necessary to protect Athena's exclusivity hereunder.
Following the expiration of the *** *** Active Compounds for that Target ***
*** shall be deemed to be Inactive Compounds for
all purposes ; provided, that any Active Compound which is ***
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4.3 Inactive and Returned Compounds. Any Inactive Compounds and
Returned Compounds shall be *** *** following the designation of a Collaboration
Compound as an Inactive Compound or Returned Compound.
4.4 Duration of Exclusivity for Collaboration Targets.
Notwithstanding any other provision of this Agreement, ***
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4.6 Survival. This Article 4 shall survive termination or
expiration of this.
5. COLLABORATION COMPOUNDS
5.1 Pre-Existing Compounds. Neither Party shall have any rights to
any pre-existing compound of the other Party unless and until such compound is
designated as a Collaboration Compound by such Party. Additionally, CombiChem
may decline (after informing Athena) to synthesize a particular compound or
library of compounds by reason of existing Patents or contractual obligations.
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5.3 Structural Information. Neither Party shall disclose the
structure of any Active Compound to any Third Party without the other Party's
written permission, unless required to do so by law, in which case such Party
shall promptly notify the other Party of such required disclosure. If a subpoena
or other legal process concerning the same is served upon either Party,
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the other Party shall cooperate with the Party served in any effort to contest
the validity of such subpoena or other legal process.
5.4 Supply of Collaboration Compounds. Aliquots of at least ***
milligrams of any Collaboration Compound that has been synthesized will be
prepared and given to Athena. CombiChem shall replenish that amount upon
Athena's reasonable request. CombiChem shall maintain aliquots of any
Collaboration Compound that has been synthesized by CombiChem. CombiChem shall
also provide Athena with additional requirements of samples at CombiChem's cost.
6. RESEARCH MANAGEMENT COMMITTEE
The design, review and conduct of the Research Program will be
coordinated by the Research Management Committee, which will meet regularly on a
mutually-agreeable schedule. Each Party shall bear its own expenses related to
such meetings. The Research Management Committee may establish and amend or
revise the Research Plan as reasonable and necessary to reflect the scientific
progress and work performed under the Research Program, such amendments to be
mutually agreed to in writing by Athena and CombiChem. The Research Management
Committee will consist of an equal number of members from Athena and CombiChem
and will include appropriate representatives from Athena and CombiChem as
mutually agreed. The co-chairs of the Research Management Committee will
initially be the Vice President, Chemistry of CombiChem and the Vice President,
Research of Athena and subsequently may change as each Party determines for its
co-chair. Decisions of the Research Management Committee shall be by consensus.
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7. RESEARCH PERIOD; TERMINATION OF RESEARCH PROGRAM
7.1 Research Period: Option to Extend the Research Period. The
initial term of the Collaboration shall be *** subject to extension upon mutual
agreement. To extend the Research Period, Athena must notify CombiChem no later
than ninety (90) days prior to the then-current expiration date and the Parties
shall negotiate in good faith the terms and conditions of any such extension.
7.2 Termination of Research Program Upon Breach. The Research
Program and/or this Agreement may be terminated by a Party for the material
breach by the other Party as provided by Section 10.2.
7.3 Termination by Athena. Athena may terminate this Agreement
effective at any time after *** in its sole discretion, upon ninety (90) days'
prior written notice. Athena may also terminate any part of the Research Program
directed at one or
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more of the Collaboration Targets, also upon ninety (90) days' prior written
notice, at any time during the Collaboration, in which case the RMC shall
reallocate the FTEs affected to any of the other Collaboration Targets.
8. CONSIDERATION
8.1 ***
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8.2 Equity Purchase. *** an Affiliate of Athena, shall purchase
shares of Common Stock of CombiChem pursuant to the terms of that certain Common
Stock Purchase Agreement, dated as of the Effective Date, by and between
CombiChem and EIS (the "Stock Purchase Agreement").
8.3 Program Funding.
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(b) Expansion of Project Team. Athena may request that
CombiChem expand its Project Team during the Research Period in order to
accelerate work on Collaboration Targets and/or to add Optional Targets. In such
event, the RMC shall promptly confer as to the appropriate number of FTEs to be
added to the Project Team, at a cost to Athena of U.S. *** per FTE to be paid as
specified in Section 8.3(a).
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8.4 Milestone Payments. Within thirty (30) days of the occurrence of
a development milestone triggered by the activities of Athena or its Affiliates
as shown on Appendix A, Athena shall pay CombiChem the related milestone payment
in U.S. dollars as set forth on Appendix A. Such payments shall apply to any
milestone reached by an Active Compound, Development Compound or Product,
whether the Target is within or outside the Collaboration.
8.5 Royalties. During the Royalty Term, Athena will pay CombiChem
a *** of Net Sales of Products sold by Athena or its Affiliates in all countries
in the Territory. Each payment of royalties shall be accompanied by a report of
Net Sales of Products in sufficient detail to permit confirmation of the
accuracy of the royalty payment made.
8.6 Manner and Place of Payment. Royalty payments and reports for
Net Sales of Products shall be calculated in local currencies and reported for
each calendar quarter. All royalty payments owed under this Agreement shall be
made by wire transfer to the bank account to be designated by CombiChem within
sixty (60) days following the end of each such calendar quarter.
8.7 Records and Audit. During the term of this Agreement and for a
period of three (3) years thereafter, Athena shall keep complete and accurate
records pertaining to the sale or other disposition of Products in sufficient
detail to permit CombiChem to confirm the accuracy of all payments due
hereunder. CombiChem shall have the right to cause an independent certified
public accounting firm reasonably acceptable to Athena to audit such records to
confirm Athena's Net Sales for the preceding year. Any information obtained
during such audit shall be treated as Confidential Information. Such audits may
be exercised after reasonable notice during normal business hours of Athena no
more than once each year. CombiChem shall bear the full cost of such audit
unless such audit discloses a deficiency of the
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period. In such case, Athena shall bear the reasonable cost of such audit.
8.8 Taxes. All income and other taxes levied on account of the
royalties and other payments accruing to CombiChem under this Agreement shall be
paid by CombiChem, including taxes levied thereon as income to CombiChem. If
provision is made in law or regulation for withholding, such tax shall be
deducted from the royalty or other payment made by Athena to the proper taxing
authority and a receipt of payment of the tax secured and promptly delivered to
CombiChem. Each Party agrees to assist the other Party reasonably in claiming
exemption from such deductions or withholdings under any double taxation or
similar agreement or treaty from time to time in force.
9. LICENSE GRANTS; OUTLICENSE
9.1 CombiChem License Grant to Athena. Subject to the terms and
conditions of this Agreement, CombiChem hereby grants to Athena an exclusive,
royalty-free, worldwide license, with the right to sublicense to use such
CombiChem Technology as is necessary to make,
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have made, use, have used, sell, have sold, import and export Collaboration
Compounds or Products in the Territory. Such license shall remain exclusive
(including as to CombiChem) in relation to each Active Compound, Development
Compound and/or Product so long as Athena or its licensee continues to develop
and commercialize such Active Compound, Development Compound and/or Product
against a Collaboration Target with Due Diligence.
9.2 Athena License Grant to CombiChem. Subject to Article 4 and
following the failure of Athena or its licensee to develop and commercialize
with Due Diligence an Active Compound, a Development Compound or Product, as the
case may be (collectively, and together with all Abandoned Compounds, "Returned
Compounds"), Athena shall grant to CombiChem a non-exclusive, royalty-free
license, with the right to sublicense, under those Athena Patents and know-how
which are resulting from the Research Program and related exclusively to the
Returned Compound, to make, have made, use, have used, sell, have sold, import
and export such Returned Compound in the Territory.
9.3 Athena Outlicense. Athena shall have the right to transfer,
assign or to a Third Party the Products or Patents covering the Products,
subject to right to receive ***
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All Payments shall be made to CombiChem by wire transfer to such bank account
designated by CombiChem within five (5) business days after receipt by Athena or
its Affiliates of such Payments from the Third Party. As an express condition of
any such outlicense, any such licensee shall be required to agree in writing to
be bound by due diligence, royalty reporting and recordkeeping and inspection
provisions no less stringent than those contained in this Agreement. In
addition, CombiChem shall have the right to receive all audit reports relating
to sales of Products of Athena's licensees, and to cause Athena or its
Affiliates or successors to have an independent certified public accounting firm
(reasonably acceptable to Athena) audit such licensee's records on the same
terms as those specified in Section 8.6. Failure of such licensee to make any
milestone or royalty payment in respect of such Product shall not relieve Athena
of its obligations to make royalty and milestone payments to CombiChem
hereunder.
9.4 Rights to Inactive Compounds. Except for any Athena Compounds
(which remain proprietary to Athena), each of Athena and, subject to Athena's
Patent rights, CombiChem shall have rights to make, have made, use, have used,
sell, have sold, import and export Inactive Compounds or products containing
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10. TERM AND TERMINATION OF THE AGREEMENT
10.1 Term. The term of this Agreement shall commence upon the
Effective Date of this Agreement, and unless earlier terminated as provided in
this Agreement, shall expire on
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10.2 Termination by Athena or CombiChem. If either Party materially
breaches this Agreement and fails to remedy that breach within ninety (90) days
of receiving written notice thereof from the other Party, or enters into any
arrangement of composition with its creditors or goes into liquidation,
insolvency, bankruptcy, receivership or reorganization proceedings, whether
voluntarily or compulsorily which is not dismissed within ninety (90) days, then
the other Party may at any time, by notice in writing or by telefax, terminate
this Agreement. Within sixty (60) days following termination for any Research
Program and/or research related to any Target under this Agreement, the RMC
shall prepare a detailed, final written report to each Party, and provide any
remaining supply of compounds in synthesis to date, for each Target or Research
Program being terminated.
10.3 After Termination. Any termination of this Agreement or the
Research Program shall be without prejudice to the accrued rights of either
Party prior to the termination. In case of termination of this Agreement or the
Research Program pursuant to Section 10.2 above, all royalty, milestone, Payment
and confidentiality obligations set forth in Sections 8.1, 8.4, 8.5, 9.3, 9.4
and Articles 11 and 12 shall survive any such termination. Moreover, Athena
shall not be entitled to any refund of any payments made to CombiChem hereunder
upon the expiration of the term of this Agreement or earlier termination
pursuant to this Article 10.
10.4 Effect of Termination on Licensees. In the event or any
termination of this Agreement pursuant to this Article 10 where such termination
shall not have been caused by the action of inaction on the part of any
respective licensee of Athena or CombiChem, or by any breach by such licensee of
its obligations under its licensee from Athena or CombiChem, as appropriate,
such termination of this Agreement shall be without prejudice to the rights of
each non-breaching licensee and such licensee shall be deemed to be a direct
licensee hereunder.
11. CONFIDENTIAL INFORMATION
11.1 Nondisclosure. During the term of this Agreement and for a
period of *** *** after termination thereof, each Party will maintain all
Confidential Information in trust and confidence and will not disclose any
Confidential Information to any third party or use any Confidential Information
for any purpose except (i) as expressly authorized by this Agreement, (ii) as
required by law or court order, after as much advance notice as is practical to
the other Party, (iii) to its consultants, subcontractors or agents who need to
know to accomplish the purposes of this Agreement and who are bound by
equivalent written confidentiality obligations. Each Party may use the other
Party's Confidential Information only to the extent required to accomplish the
purposes of this Agreement. Each Party will use at least the same standard of
care as it uses to protect proprietary or confidential information of its own to
ensure that its
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Affiliates, employees, agents, consultants and other representatives do not
disclose or make any unauthorized use of the Confidential Information. Each
Party will promptly notify the other upon discovery of any unauthorized use or
disclosure of the Confidential Information.
11.2 Exceptions. Confidential Information shall not include any
information which the receiving Party can prove by competent evidence: (a) is
now, or hereafter becomes, through no act or failure to act on the part of the
receiving Party, generally known or available; (b) is known by the receiving
Party at the time of receiving such information, as evidenced by its records;
(c) is hereafter disclosed to the receiving Party by a Third Party, as a matter
of right and without restriction on disclosure; (d) is independently developed
by the receiving Party without the aid, application or use of Confidential
Information; or (e) is the subject of a written permission to disclose provided
by the disclosing Party.
12. PUBLICATIONS AND PUBLIC STATEMENTS
12.1 Publications. Without affecting obligations under Article 11
above, neither Party shall publish any information with respect to Collaboration
Compounds or Development Compound during the Exclusivity Period without the
prior written permission of the other Party. Such permission shall be approved
or disapproved within thirty (30) days of written request for permission unless
the other Party requests additional time (not to exceed ninety (90) days) for
the purpose of protecting its intellectual property position. Such permission
shall not be unreasonably withheld. The Party proposing to publish such
information shall give the other Party ninety (90) days prior written notice and
an opportunity to review such manuscript in order to determine the patentability
of the information contained therein.
12.2 Public Statements. Neither Party shall use the name of the
other Party in any public statement, prospectus, annual report or press release
or other public communication (collectively "Public Statements") without the
prior written approval of the other Party, which may not be unreasonably
withheld or delayed; provided, however, that both Parties shall endeavor in good
faith to give the other Party a minimum of two (2) business days to review such
Public Statements; provided, further, that, upon approval of any such Public
Statement, both Parties may disclose to Third Parties the information contained
in such Public Statement without the further approval of the other; and
provided, further, that if a Party does not approve such Public Statement,
either Party may still use the name of the other Party in any Public Statement
without the prior written approval of the other Party, if such Party is advised
by counsel that such disclosure is required to comply with applicable law.
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14. ASSIGNABILITY
This Agreement may not be assigned by either Party without the prior
written consent of the other Party, not to be unreasonably withheld; provided,
however, that either Party may assign this Agreement, in whole or in part, to an
Affiliate ***
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of a Party in connection with the merger, consolidation or sale of all or
substantially all of such Party's assets or that portion of its business
pertaining to the subject matter of this Agreement (and upon doing so will
promptly notify the other Party in writing); provided that the assigning Party
remains fully liable as obligated hereunder.
15. DISPUTE RESOLUTION PROCEDURES
15.1 Senior Executives Discussions. If a decision on a matter
regarding the management of the Research Program as provided herein is not
reached by the RMC, the dispute will be resolved as set forth in Article 6
above. If a dispute arises between CombiChem and Athena with respect to matters
other than the management of the Research Program, either during or after the
Research Period, such dispute will be referred to the appropriate senior
management in the area of the dispute. ***
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15.2 Binding Arbitration. If the parties have not been able to
resolve the dispute as provided in Section 15.1 above, the dispute shall be
finally settled by binding arbitration. Any arbitration hereunder shall be
conducted under rules of the American Arbitration Association. The arbitration
shall be conducted before three arbitrators chosen according to the following
procedure: each of the parties shall appoint one arbitrator and the two so
nominated shall choose the third. If the arbitrators chosen by the parties
cannot agree on the choice of the third arbitrator within a period of thirty
(30) days after their appointment, then the third arbitrator shall be appointed
by the Court of Arbitration of the American Arbitration Association. If
CombiChem brings an arbitration action, such arbitration shall occur in San
Francisco, California. If Athena brings an arbitration action, such arbitration
shall occur in San Diego, California. The arbitrators shall have the authority
to grant specific performance, and to allocate between the parties the costs of
arbitration in such equitable manner as they determine. The arbitral award (i)
shall be final and binding upon the parties; and (ii) may be entered in any
court of competent jurisdiction.
15.3 Injunctive Relief. Nothing contained in this Article 15 or any
other provisions of this Agreement shall be construed to limit or preclude a
Party from bringing any action in any court of competent jurisdiction for
injunctive or other provisional relief to compel the other Party to comply with
its obligations hereunder before or during the pendency of arbitration
proceedings.
16. NOTICES
Any notice required or permitted to be given hereunder shall be
deemed sufficient if sent by facsimile letter or overnight courier, or delivered
by hand to Athena or CombiChem at the respective addresses and facsimile numbers
as set forth below or at such other address and facsimile number as either Party
hereto may designate. If sent by facsimile letter, notice shall be deemed given
when the transmission is completed if the sender has a confirmed transmission
report. If a confirmed transmission report does not exist, then the notice will
be deemed given when the notice is actually received by the person to whom it is
sent. If delivered by overnight courier, notice shall be deemed given when it
has been signed for. If delivered by hand, notice shall be deemed given when
received.
if to CombiChem, to:
CombiChem, Inc.
0000 Xxxxxx Xxxxx Xx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attention: President
Fax number: (000) 000-0000
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Confidential Treatment and filed separately with the commission.
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with a copy to:
Xxxxxxx, Xxxxxxx & Xxxxxxxx LLP
000 Xxxxx Xxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attention: Xxxxxx X. Xxxxx, Esq.
Fax number: (000) 000-0000
if to Athena, to:
Athena Neurosciences, Inc.
000 Xxxxxxx Xxxxxxxxx
Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Fax number: (000) 000-0000
17. SURVIVAL
The provisions of Sections 2.4, 5.1, 5.2, 5.3, 10.3, 10.4 and Articles 4,
8, 9, 11, 12, 13, 15, and this Article 17 shall survive termination of this
Agreement in addition to those provisions which by their terms survive.
18. ADDITIONAL TERMS
18.1 Entire Agreement. This Agreement and the Common Stock Purchase
Agreement constitute the entire understanding between the Parties with respect
to the subject matter hereto and supersedes and replaces all previous
negotiations, understandings, representations, writings and contract provisions
and rights relating hereof.
18.2 Amendment; No Waiver. No provision of this Agreement may be amended,
revoked or waived except by a writing signed and delivered by an authorized
officer of each Party. Any waiver on the part of either Party of any breach or
any fight or interest hereunder shall not imply the waiver of any subsequent
breach or waiver of any other right or interest.
18.3 Validity. The invalidity or unenforceability of any provision of this
Agreement shall not affect the validity or enforceability of any other provision
of this Agreement, each of which shall remain in full force and effect.
18.4 Headings. The descriptive headings are inserted for convenience of
reference only and are not intended to be part of or to affect the meaning of or
interpretation of this Agreement.
18.5 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
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18.6 Governing Law. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of California, without regard
to conflicts of laws principles.
18.7 Further Assurances. At any time and from time to time after the
Effective Date, the Parties shall each do, execute, acknowledge and deliver, and
cause to be done, executed, acknowledged or delivered, all such further acts,
transfers, conveyances, or assignments as may be reasonably required to carry
out the transactions contemplated by this Agreement
19. REPRESENTATIONS AND WARRANTIES
19.1 Authorization. All action on the part of each of CombiChem, Athena
and their respective officers, directors and stockholders necessary for the
authorization, execution and delivery of this Agreement and the performance of
all obligations of CombiChem, Athena and Athena, respectively, hereunder has
been taken. ***
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19.2 Compliance with Other Instruments. The execution, delivery and
performance by CombiChem of this Agreement and the consummation of the Research
Program hereunder will not result in a violation of, or be in material conflict
with, or constitute a material default, under any agreement in existence as of
the Effective Date between CombiChem and its Third Party Collaborators. Subject
to Section 5.2 and except for the rights expressly reserved by CombiChem
therein, from the Effective Date until the expiration or termination of this
Agreement, CombiChem agrees that it shall not enter into any agreement with any
Third Party collaborator which would be in material conflict with, or cause a
default under, this Agreement.
19.3 Rights to Intellectual Property. Each Party warrants that it has the
power to grant all of the rights granted and make such required assignments, and
to assume all of the obligations required, under this Agreement. Under no
circumstances does CombiChem warrant to Athena that its rights in any Active
Compound, Development Compound or Products are exclusive to the extent such
Active Compound, Development Compound or Products may be covered under the
patent claims of Third Parties wherein such claims are not the direct result of
a collaboration between the Third Party and CombiChem.
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IN WITNESS WHEREOF, the parties have executed this Agreement to be
effective as of the Effective Date.
COMBICHEM, INC. ATHENA NEUROSCIENCES, INC.
By: Xxxxxxx Xxxxx, Xx. By:/s/illegible
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Its: President & CEO Its:Vice President & General Counsel
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[SIGNATURE PAGE TO THE COLLABORATIVE
RESEARCH AND LICENSE AGREEMENT]
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Appendix A
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