LICENSE AGREEMENT
Exhibit
10.1
DATED
AUGUST 19, 1991
BY
AND
AMONG
THE
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
THE
XXXXXXXXX INSTITUTE
AND
ARIAD
PHARMACEUTICALS, INC.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
WHI
Vers -1/28/91
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LLN/#4:
4167ariad.agt
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Date: August 8, 1991 |
TABLE
OF CONTENTS
PREAMBLE
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ARTICLES:
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ARTICLE
I -
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3
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ARTICLE
II -
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5
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ARTICLE
III -
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7
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ARTICLE
IV -
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7
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ARTICLE
V -
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9
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ARTICLE
VI -
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10
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ARTICLE
VII -
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10
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ARTICLE
VIII -
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12
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ARTICLE
IX -
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12
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ARTICLE
X -
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12
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ARTICLE
XI -
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13
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ARTICLE
XII -
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13
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ARTICLE
XIII -
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13
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ARTICLE
XIV -
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14
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ARTICLE
XV -
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15
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00
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19
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20
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24
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Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
2
This
Agreement is made and entered into this 19th day of August, 1991, (the Effective
Date) by and between MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a corporation duly
organized and existing under the laws of the Commonwealth of Massachusetts
and
having its principal office at 00 Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx
00000, X.X.X. (hereinafter referred to as M.I.T.), and the XXXXXXXXX INSTITUTE,
a corporation organized and existing under the laws of Delaware and having
its
principal office at Nine Xxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000,
U.S.A., (hereinafter referred to as Xxxxxxxxx) and ARIAD PHARMACEUTICALS, INC.,
a corporation duly organized under the laws of Delaware and having its principal
office at 000 Xxxxxxxx Xxxx, Xxxxx, Xxxxxxxxxxxx 00000 (hereinafter referred
to
as LICENSEE).
WITNESSETH
WHEREAS,
M.I.T. and Xxxxxxxxx are the owners of certain “Patent Rights” (as later defined
herein) relating to M.I.T. Case No. [***] by [***]; M.I.T. Case No. [***]
(Xxxxxxxxx No. [***]) “[***]” by [***]; M.I.T. Case No. [***] (Xxxxxxxxx No.
[***]) “[***]” by [***]; M.I.T. Case No. [***] (Xxxxxxxxx [***]) “[***]” by
[***] et al.; M.I.T. Case No. [***] (Xxxxxxxxx No. [***]) “[***]” by [***] and
has the right to grant licenses under said Patent Rights, subject only to a
royalty-free, nonexclusive license heretofore granted to the United States
Government;
WHEREAS,
Xxxxxxxxx has authorized M.I.T. to act as its sole and exclusive agent for
the
purposes of licensing Xxxxxxxxx’x rights in the Patent Rights and has authorized
M.I.T. to enter into this licensing agreement on its own and Xxxxxxxxx’x
behalf;
WHEREAS,
M.I.T. and Xxxxxxxxx desire to have the Patent Rights utilized in the public
interest and is willing to grant a license thereunder;
WHEREAS,
LICENSEE has represented to M.I.T., to induce M.I.T. to enter into this
Agreement, that LICENSEE is committed to the development and commercialization
of “Licensed Product(s)” (as later defined herein) and/or the use of the
“Licensed Process(es)” (as later defined herein) and that it shall commit itself
to a thorough, vigorous and diligent program of exploiting the Patent Rights
so
that public utilization shall result therefrom; and
WHEREAS,
LICENSEE desires to obtain a license under the Patent Rights upon the terms
and
conditions hereinafter set forth.
NOW,
THEREFORE, in consideration of the premises and the mutual covenants contained
herein the parties hereto agree as follows:
For
the
purposes of this Agreement, the following words and phrases shall have the
following meanings:
1.1
“LICENSEE”
shall include a related company of LICENSEE, the voting stock of which is
directly or indirectly at least Fifty Percent (50%) owned or controlled by
LICENSEE, an organization which directly or indirectly controls more than Fifty
Percent (50%) of the voting
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
3
stock
of
LICENSEE and an organization, the majority ownership of which is directly or
indirectly common to the ownership of LICENSEE.
1.2
“Patent
Rights” shall mean all of the following Xxxxxxxxx and M.I.T. intellectual
property:
(a)
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the
United States and foreign patents and/or patent applications listed
in
Appendix A;
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(b)
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United
States and foreign patents issued from the applications listed in
Appendix
A and from divisionals and continuations of these
applications;
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(c)
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claims
of U.S. and foreign continuation-in-part applications, and of the
resulting patents, which are directed to subject matter specifically
described in the U.S. and foreign applications listed in Appendix
A;
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(d)
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claims
of all foreign patent applications, and of the resulting patents,
which
are directed to subject matter specifically described in the United
States
patents and/or patent applications described in (a), (b), or (c)
above;
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(e)
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any
reissues of United States patents described in (a), (b), (c), or
(d)
above.
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1.3
A
“Licensed Product” shall mean any product or part thereof which:
(a)
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is
covered in whole or in part by an issued, unexpired claim or a pending
claim contained in the Patent Rights in the country in which any
Licensed
Product is made, used or sold;
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(b)
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is
manufactured by using a process which is covered in whole or in part
by an
issued, unexpired claim or a pending claim contained in the Patent
Rights
in the country in which any Licensed Process is used or in which
such
product or part thereof is used or
sold;
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(c)
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contains
the Tangible Property,
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subject
to
the limitations in Paragraph 4.4.
1.4
A
“Licensed Process” shall mean any process which is covered in whole or in part
by an issued, unexpired claim or a pending claim contained in the Patent Rights
or which uses the Tangible Property, subject to the limitations in Paragraph
4.4.
1.5
“Net
Sales” shall mean LICENSEE’s (and its sublicensees’ where appropriate) xxxxxxxx
for Licensed Products and Licensed Processes produced hereunder less the sum
of
the following:
(a)
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discounts
allowed in amounts customary in the
trade;
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Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
4
(b)
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sales,
tariff duties and/or use taxes directly imposed and with reference
to
particular sales;
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(c)
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outbound
transportation prepaid or allowed;
and
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(d)
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amounts
allowed or credited on returns.
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No
deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Products shall be considered
“sold” when billed out or invoiced.
1.6
“Tangible
Property” shall mean cell lines containing [***] obtained directly or indirectly
from M.I.T. or Xxxxxxxxx, and any progeny and derivatives thereof.
2.1
M.I.T.
hereby grants to LICENSEE the right and license to make, have made, use, lease
and sell the Licensed Products, and to practice the Licensed Processes to the
end of the term for which the Patent Rights are granted unless sooner terminated
according to the terms hereof.
2.2
This
license shall be subject to the research license and to the option granted
to
Centocor to acquire a license to the Patent Rights of M.I.T. Case 4167 for
use
with certain hybridomas, under the Collaborative Research Agreement between
Centocor and M.I.T. dated November 14, 1988 as attached hereto as Appendix
C.
M.I.T. agrees that it will not renew the Collaboration Research Agreement as
provided in Paragraph 2 thereof.
2.3
In
order
to establish a period of exclusivity for LICENSEE, M.I.T. hereby agrees that
with the exception of the rights granted or optioned to Centocor, it shall
not
grant any other license to make, have made, use, lease and sell Licensed
Products or to utilize Licensed Processes during the period of time commencing
with the Effective Date of this Agreement and terminating with the first to
occur of:
(a)
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for
each type of Licensed Product the expiration of Twelve (12) years
after
the first commercial sale of that Licensed Product;
or
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(b)
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the
expiration of Sixteen (16) years after the Effective Date of this
Agreement;
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provided,
however, that for any Licensed Product for which an application for premarket
approval has been submitted to the U.S. FDA prior to July 1, 2007, the time
spent by the FDA reviewing said application(s) for that Licensed Product shall
be added to the period of exclusivity which would otherwise apply.
2.4
At
the end
of the exclusive period, the license granted hereunder shall become nonexclusive
and shall extend to the end of the term or terms for which any Patent Rights
are
issued, unless sooner terminated as hereinafter provided, or unless the parties
agree to extend the period of exclusivity.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
5
2.5
M.I.T.
and
Xxxxxxxxx also agree to bring to the attention of LICENSEE any inventions which
relate to [***] which arise prior to December 31, 1994 from the M.I.T. or
Xxxxxxxxx laboratories of any of the inventors of the Patent Rights listed
in
Appendix A. LICENSEE shall have a three month option, dating from the date
at
which any such invention is revealed to LICENSEE, to begin negotiations with
M.I.T. for an exclusive license to such invention. If such negotiations are
begun at LICENSEE’s request, LICENSEE shall have an additional three month
option to negotiate in good faith for an exclusive license to the invention.
LICENSEE’s options under this Paragraph 2.5 shall, however, be subject to any
options or licenses granted under a research agreement with sponsors of the
research leading to such invention, and the terms of such research agreements
shall not be limited by the provisions of this Paragraph 2.5. M.I.T. and
Xxxxxxxxx shall use their best reasonable efforts to notify LICENSEE of any
planned or completed sponsorship agreements, other than those involving U.S.
Government sponsorship, in the field of [***], subject, however, to any
confidentiality provisions with sponsors that might limit such
notification.
2.6
LICENSEE
agrees that Licensed Products leased or sold in the United States shall be
manufactured substantially in the United States.
2.7
Xxxxxxxxx
and M.I.T. reserve the right to practice under the Patent Rights and to use
and
distribute the Tangible Property for their noncommercial research purposes
under
a Materials Transfer agreement similar to that in Appendix D. M.I.T. and
Xxxxxxxxx shall use their best reasonable efforts to notify LICENSEE of any
Tangible Property distributed to third parties.
2.8
LICENSEE
shall have the right to enter into sublicensing agreements for the rights,
privileges and licenses granted hereunder only during the exclusive period
of
this Agreement. Such sublicensees may extend past the expiration date of the
exclusive period of this Agreement, but any exclusivity of such sublicenses
will
expire upon the expiration of LICENSEE’s exclusivity.
2.9
LICENSEE
hereby agrees that every sublicensing agreement to which it shall be a party
and
which shall relate to the rights, privileges and license granted hereunder
shall
contain a statement setting forth the date upon which LICENSEE’s exclusive
rights, privileges and license hereunder shall terminate.
2.10
LICENSEE
agrees that any sublicenses granted by it shall provide that the obligations
to
M.I.T. and Xxxxxxxxx of Articles II, V, VII, VIII, IX, X, XII, XIII, and XV
of
this Agreement shall be binding upon the sublicensee as if it were a party
to
this Agreement. LICENSEE further agrees to attach copies of these Articles
to
sublicense agreements.
2.11
LICENSEE
agrees to forward to M.I.T. a copy of any and all fully executed sublicense
agreements, and further agrees to forward to M.I.T. annually a copy of such
reports received by LICENSEE from its sublicensees during the preceding twelve
(12) month period under the sublicensee as shall be pertinent to a royalty
accounting under said sublicense agreements.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
6
2.12
LICENSEE
shall not receive from sublicensees anything of value in lieu of cash payments
in consideration for any sublicense under this Agreement, without the express
prior written permission of M.I.T..
2.13
The
license granted hereunder shall not be construed to confer any rights upon
LICENSEE by implication, estoppel or otherwise as to any technology not
specifically set forth in Appendix A hereof and Paragraph 2.5.
3.1
LICENSEE
shall use its best efforts to bring one or more Licensed Products or Licensed
Processes to market through a thorough, vigorous and diligent program for
exploitation of the Patent Rights.
3.2
In
addition, LICENSEE shall adhere to the following milestones:
(a)
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LICENSEE
shall deliver to M.I.T. on or before [***] on or before the ninetieth
(90th) day following the close of LICENSEE’s fiscal
year.
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(b)
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ARIAD
PHARMACEUTICALS, INC. (LICENSEE) shall have received at least
[***].
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(c)
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ARIAD
PHARMACEUTICALS, INC. (LICENSEE) shall have received a cumulative
total of
at least [***].
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(d)
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LICENSEE
shall, within six (6) months of a request by a suitable sublicensee
willing to take a sublicense upon reasonable business terms, grant
at
least one sublicense to the Patent Rights and Tangible Property for
sale
of Licensed Products as research reagents with appropriate protection
of
LICENSEE’s commercial interests. Failure to reach such an agreement within
six (6) months after a bona fide request shall allow M.I.T. to grant
a
license to the Patent Rights to the requestor for sale of research
reagents on terms no more favorable than those of paragraph 4.1(d)
below.
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(e)
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In
any calendar year after [***] that LICENSEE has not made at least
[***] in
Net Sales of Licensed Product, LICENSEE shall have invested a minimum
of
[***].
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3.3
LICENSEE’s
failure to perform in accordance with Paragraphs 3.1 and 3.2 above shall be
grounds for M.I.T. to terminate this Agreement pursuant to Paragraph 13.3
hereof.
4.1
For
the
rights, privileges and license granted hereunder, LICENSEE shall pay royalties
to M.I.T. in the manner hereinafter provided to the end of the term of the
Patent Rights or until this Agreement shall be terminated as hereinafter
provided:
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
7
(a)
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License
Issue Fee of [***], which said License Issue Fee shall be deemed
earned
and due thirty days after the execution of this
Agreement.
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(b)
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License
Maintenance Fees of [***]per year payable on [***]and on January
1 of each
year thereafter until the [***]. Following the submission of such
[***],
the License Maintenance Fees shall be [***] per year beginning January
1
of the year following the submission. However, beginning [***], the
License Maintenance Fees shall be [***] per year [***] has been submitted
by LICENSEE. The License Maintenance Fee for a given year shall be
fully
creditable against any Running Royalties subsequently
due.
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(c)
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A
one-time Milestone Fee of [***] payable within ninety (90) days after
LICENSEE receives approval to [***] on a Licensed Product based upon
its
[***].
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(d)
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Running
Royalties in an amount equal to [***] of the Net Sales of Licensed
Products and Licensed Processes used, leased or sold by and/or for
LICENSEE which are covered [***] of the Patent Rights in any country
in
which the Licensed Products and/or Licensed Processes are made, used,
leased or sold; and Running Royalties in an amount equal to [***]
of the
Net Sales of Licensed Products and Licensed Processes used, leased
or sold
by and/or for LICENSFF which are covered [***] of the Patent Rights
in any
country in which the Licensed Products and/or Licensed Processes
are made,
used, leased or sold. The provisions of this paragraph shall not
apply to
any Licensed Products leased or sold by LICENSEE or its sublicensees
for
use as research reagents.
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(e)
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Running
Royalties in an amount equal to [***] of the Net Sales price of Licensed
Products sold by or for LICENSER, or its sublicensees for use as
research
reagents.
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(f)
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[***]
of any payments made to LICENSEE for sublicensing of the Patent Rights
and/or Tangible Property. This subparagraph 4.1(f) shall not apply,
however, to royalties paid to LICENSEE by sublicensee(s) on the Net
Sales
of Licensed Products sold by sublicensee(s) for use as research reagents,
which shall fall under subparagraph 4.1(e)
above.
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4.2
The
License Issue Fee, Milestone Fee and all License Maintenance Fees shall be
cumulatively creditable against Running Royalties.
4.3
All
patent
costs incurred prior to July 1, 1991 and reimbursed by LICENSEE under Article
VI
shall be creditable against Running Royalties except for Running royalties
on
research reagents. [***] of patent costs incurred after July 1, 1991 shall
be
creditable against Running Royalties except for Running Royalties on research
reagents.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
8
4.4
The
definitions of Paragraphs 1.3 and 1.4 notwithstanding, after [***] Running
Royalties shall be due on the Net Sales of a Licensed Product only if the
Licensed Product is covered [***].
4.5
LICENSEE
shall be entitled to credit [***] of the royalties paid to third parties for
the
use, lease or sale of a Licensed Product or Licensed Process by LICENSEE against
the Running Royalties for that Licensed Product or Licensed Process due under
subparagraph 4.1(d) above; provided, however that the amount credited shall
not
reduce the Running Royalty paid below [***] for the Licensed Product or Licensed
Process covered [***], and [***] if the Licensed Product or Licensed Process
is
covered [***].
4.6
In
no
instance shall the amount paid to M.I.T. in total in a given year be less than
the License Maintenance Fee for that year.
4.7
All
payments due hereunder shall be paid in full, without deduction of taxes or
other fees which may be imposed by any government and which shall be paid by
LICENSEE.
4.8
No
multiple royalties shall be payable because any Licensed Product, its
manufacture, use, lease or sale are or shall be covered by more than one patent
application or patent licensed under this Agreement.
4.9
Royalty
payments shall be paid in United States dollars in Cambridge, Massachusetts,
or
at such other place as M.I.T. may reasonably designate consistent with the
laws
and regulations controlling in any foreign country. If any currency conversion
shall be required in connection wish the payment of royalties hereunder, such
conversion shall be made by using the exchange rate prevailing at the Chase
Manhattan Bank (N.A.) on the last business day of the calendar quarterly
reporting period to which such royalty payments relate.
5.1
LICENSEE,
within sixty (60) days after March 31, June 30, September 30 and December 31,
of
each year, shall deliver to M.I.T. true and accurate reports, giving such
particulars of the business conducted by LICENSEE and its sublicensees during
the preceding three-month period under this Agreement as shall be pertinent
to a
royalty accounting hereunder. These shall include at least the
following:
(a)
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number
of Licensed Products manufactured and
sold.
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(b)
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total
xxxxxxxx for Licensed Products
sold.
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(c)
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accounting
for all Licensed Processes used or
sold.
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(d)
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deductions
applicable as provided in Paragraph
1.5.
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(e)
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total
royalties due.
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(f)
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names
and addresses of all sublicensees of
LICENSEE.
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Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
9
5.2
With
each
such report submitted, LICENSEE shall pay to M.I.T. the royalties due and
payable under this Agreement. If no royalties shall be due, LICENSEE shall
so
report.
5.3
On
or
before the ninetieth (90th) day following the close of LICENSEE’s fiscal year,
LICENSEE shall provide M.I.T. with LICENSEE’s certified financial statements for
the preceding fiscal year including, at a minimum, a Balance Sheet and an
Operating Statement.
5.4
The
royalty payments set forth in this Agreement shall, if overdue, bear interest
until payment at a per annum rate two percent (2%) above the prime rate in
effect at the Chase Manhattan Bank (N.A.) on the due date. The payment of such
interest shall not foreclose M.I.T. from exercising any other rights it may
have
as a consequence of the lateness of any payment.
6.1
M.I.T.
(and/or Xxxxxxxxx, as appropriate, depending on ownership of the individual
Patent Rights) shall apply for, seek prompt issuance of, and maintain during
the
term of this Agreement the Patent Rights in the United States and in the foreign
countries listed in Appendix B hereto. Appendix B may be amended by verbal
agreement of both parties, such agreement to be confirmed in writing within
ten
(10) days. The prosecution, filing and maintenance of all Patent Rights patents
and applications shall be the primary responsibility of M.I.T. (and/or
Xxxxxxxxx); provided, however, LICENSEE shall have reasonable opportunities
to
advise M.I.T. (and/or Xxxxxxxxx) and shall cooperate with M.I.T. (and/or
Xxxxxxxxx) in such prosecution, filing and maintenance.
6.2
Payment
of
all fees and costs relating to the filing, prosecution, and maintenance of
the
Patent Rights shall be the responsibility of LICENSEE, whether such fees and
costs were incurred before or after the date of this Agreement. Such payments
shall be creditable as specified in Paragraphs 4.2 and 4.3. For fees and costs
incurred prior to July 1, 1991, LICENSEE shall reimburse M.I.T. and Xxxxxxxxx
on
the following schedule:
25%
of total:
|
30
days after billing
|
25%
of total:
|
January
15, 1992
|
25%
of total:
|
July
15, 1992
|
25%
of total:
|
January
15, 1993
|
Fees
and
costs incurred after July 1, 1991 shall be reimbursed within 30 days after
billing.
7.1
LICENSEE,
M.I.T. and Xxxxxxxxx shall promptly inform each other of any alleged
infringement of the Patent Rights by a third party and of any available evidence
thereof.
7.2
During
the
term of this Agreement, LICENSEE shall have the right, but shall not be
obligated, to prosecute at its own expense any such infringements of the Patent
Rights and in furtherance of such right, M.I.T. and Xxxxxxxxx hereby agree
that
LICENSEE may include
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
10
M.I.T.
or
Xxxxxxxxx as party plaintiffs in any such suit without expense to M.I.T. or
Xxxxxxxxx. The total cost of any such infringement action commenced or defended
solely by LICENSEE shall be borne by LICENSEE. LICENSEE may, for such purposes,
use the name of M.I.T. or Xxxxxxxxx as party plaintiffs provided, however,
that
such right to bring an infringement action shall remain in effect only for
so
long as the license granted herein remains exclusive. No settlement, consent
judgment or other voluntary final disposition of the suit may be entered into
without the consent of M.I.T. and Xxxxxxxxx, which consent shall not
unreasonably be withheld. LICENSEE shall indemnify M.I.T. and Xxxxxxxxx against
any order for costs associated with the litigation that may be made against
M.I.T. or Xxxxxxxxx in such proceedings.
7.3
In
the
event that LICENSEE shall undertake the enforcement and/or defense of the Patent
Rights by litigation, LICENSEE may withhold up to [***] of the royalties
otherwise thereafter due M.I.T. hereunder and apply the same toward
reimbursement of up to [***] of LICENSEE’s expenses, including reasonable
attorney’s fees, in connection therewith. Any recovery of damages by LICENSEE
for any such suit shall be applied pro
rata
in
satisfaction of (i) any unreimbursed expenses and legal fees of LICENSEE
relating to the suit; and (ii) any royalties due M.I.T. and withheld by LICENSEE
and applied pursuant to this Paragraph 7.3. The balance remaining from any
such
recovery shall be divided between LICENSEE and M.I.T. in the proportion of
[***].
7.4
If
within
six (6) months after having been notified of any alleged infringement, LICENSEE
shall have been unsuccessful in persuading the alleged infringer to desist
and
shall not have brought and shall not be diligently prosecuting an infringement
action, or if LICENSEE shall notify M.I.T. at any time prior thereto of its
intention not to bring suit against any alleged infringer, then, and in those
events only, M.I.T. or Xxxxxxxxx, as appropriate) shall have the right, but
shall not be obligated, to prosecute at its own expense any infringement of
the
Patent Rights, and, in furtherance of such right, LICENSEE hereby agrees that
M.I.T. (or Xxxxxxxxx) may include LICENSEE as a party plaintiff in any such
suit, without expense to LICENSEE. The total cost of any such infringement
action commenced or defended solely by M.I.T. (or Xxxxxxxxx) shall be borne
by
M.I.T. (or Xxxxxxxxx), and M.I.T. (or Xxxxxxxxx) shall keep any recovery or
damages for past infringement derived therefrom. No settlement, consent judgment
or other voluntary final disposition of the suit maybe entered into without
the
consent of LICENSEE, which consent shall not unreasonable be
withheld.
7.5
In
the
event that a declaratory judgment action alleging invalidity or noninfringement
of any of the Patent Rights shall be brought against LICENSEE, M.I.T. (or
Xxxxxxxxx), at its option, shall have the right, within thirty (30) days after
commencement of such action, to intervene and take over the sole defense of
the
action at its own expense.
7.6
In
any
infringement suit as any party may institute to enforce the Patent Rights
pursuant to this Agreement, the other parties hereto shall, at the request
and
expense of the party initiating such suit, cooperate in all respects and, to
the
extent possible, have its employees testify when requested and make available
relevant records, papers, information, samples, specimens, and the
like.
7.7
LICENSEE,
during the exclusive period of this Agreement, shall have the sole right in
accordance with the terms and conditions herein to sublicense any alleged
infringer for
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
11
future
use
of the Patent Rights. Any upfront fees paid to LICENSEE as part of such
sublicense shall be handled in accordance with subparagraph 4.1(f).
8.1
LICENSEE
shall at all times during the tern of this Agreement and thereafter, indemnify,
defend and hold M.I.T. and Xxxxxxxxx, their trustees, officers, employees and
affiliates, harmless against all claims and expenses, including legal expenses
and reasonable attorneys’ fees, arising out of the death of or injury to any
person or persons or out of any damage to property and against any other claim,
proceeding, demand, expense and liability of any kind whatsoever resulting
from
the production, manufacture, sale, use, lease, consumption or advertisement
of
the Licensed Product(s) and/or Licensed Process(es) or arising from any
obligation of LICENSEE hereunder.
8.2
LICENSEE
shall obtain prior to the first use of a Licensed Product or Licensed Process
on
humans and carry in full force and effect liability insurance which shall
protect LICENSEE, M.I.T. and Xxxxxxxxx in regard to events covered by Paragraph
8.1 above.
8.3
EXCEPT
AS
OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T. AND XXXXXXXXX MAKE
NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR
PENDING.
It
is
understood that M.I.T. and Xxxxxxxxx are subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of
such
agency. M.I.T. neither represents that a license shall not be required nor
that,
if required, it shall be issued.
LICENSEE
shall not use the names of the Massachusetts Institute of Technology nor of
the
Xxxxxxxxx Institute nor any of their employees, nor any adaptation thereof,
in
any advertising, promotional or sales literature without prior written consent
obtained from M.I.T. in each case, except that LICENSEE may state that it is
licensed by Xxxxxxxxx or M.I.T. under one or more of the patents and/or
applications comprising the Patent Rights.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
12
The
rights
of ARIAD under this Agreement may not be assigned and the duties of ARIAD under
this Agreement may not be delegated without the prior written consent of M.I.T.
and Xxxxxxxxx, except that ARIAD may assign this Agreement to an entity,
acceptable to M.I.T. and Xxxxxxxxx, with which it merges or consolidates or
which ARIAD controls, or to which substantially all of its assets relating
to
the Patent Rights are sold or otherwise transferred or to a partnership of
which
ARIAD or any of its affiliates in the general partner.
12.1
Any
and
all claims, disputes or controversies arising under, out of, or in connection
with this Agreement, including any dispute relating to patent validity or
infringement, which have not been resolved by good faith negotiations between
the parties, shall be resolved by final and binding arbitration in Boston,
Massachusetts under the rules of the American Arbitration Association, or the
Patent Arbitration Rules if applicable, then obtaining. The arbitrators shall
have no power to add to, subtract from or modify any of the terms or conditions
of this Agreement. Any award rendered in such arbitration may be enforced by
either party in either the courts of the Commonwealth of Massachusetts or in
the
United States District Court for the District of Massachusetts, to whose
jurisdiction for such purposes M.I.T., Xxxxxxxxx and LICENSEE each hereby
irrevocably consents and submits.
12.2
Notwithstanding
the foregoing, nothing in this Article shall be construed to waive any rights
or
timely performance of any obligations existing under this
Agreement.
13.1
If
LICENSEE shall cease to carry on its business, this Agreement shall terminate
upon notice by M.I.T.
13.2
Should
LICENSEE fail to pay M.I.T. royalties due and payable hereunder, M.I.T. shall
have the right to terminate this Agreement on thirty (30) days’ notice, unless
LICENSEE shall pay M.I.T. within the thirty (30) day period, all such royalties
and interest due and payable. Upon the expiration of the thirty (30) day period,
if LICENSEE shall not have paid all such royalties and interest due and payable,
the rights, privileges and license granted hereunder shall
terminate.
13.3
Upon
any
material breach or default of this Agreement by LICENSEE, other than those
occurrences set out in Paragraphs 13.1 and 13.2 hereinabove, which shall always
take precedence in that order over any material breach or default referred
to in
this Paragraph 13.3, M.I.T. shall have the right to terminate this Agreement
and
the rights, privileges and license granted hereunder by ninety (90) days’ notice
to LICENSEE. Such termination shall become effective unless LICENSEE shall
have
cured any such breach or default prior to the expiration of the ninety (90)
day
period.
13.4
LICENSEE
shall have the right to terminate this Agreement at any time on six (6) months’
notice to M.I.T., and upon payment of all amounts due M.I.T. through the
effective date of the termination.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
13
13.5
Upon
termination of this Agreement for any reason, nothing herein shall be construed
to release either party from any obligation that matured prior to the effective
date of such termination. LICENSEE and any sublicensee thereof may, however,
after the effective date of such termination, sell all Licensed Products, and
complete Licensed Products in the process of manufacture at the time of such
termination and sell the same, provided that LICENSEE shall pay to M.I.T. the
royalties thereon as required by Article IV of this Agreement and shall submit
the reports required by Article V hereof on the sales of Licensed
Products.
13.6
Upon
termination of this Agreement for any reason, any sublicensee not then in
default shall have the right to seek a license from M.I.T.
13.7
LICENSEE
shall have the right, upon written notice to M.I.T., to separately terminate
its
license to any independent patent application or patent of the Patent
Rights.
Any
payment, notice or other communication pursuant to this Agreement shall be
sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other
party:
In
the
case of M.I.T.:
Director
Technology
Licensing Office
Massachusetts
Institute of Technology
Xxxx
X00-000
Xxxxxxxxx,
Xxxxxxxxxxxxx 00000
In
the
case of WHITEHEAD:
Vice
President
Xxxxxxxxx
Institute
Nine
Xxxxxxxxx Xxxxxx
Xxxxxxxxx,
XX 00000
In
the
case of LICENSEE:
Xxxxxx
X.
Xxxxxx, M.D.
Chairman
and Chief Executive Officer
ARIAD
Pharmaceuticals, Inc.
000
Xxxxxxxx Xxxx
Xxxxx,
XX
00000
or
as
amended in writing from time to time by any party.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
14
15.1
This
Agreement shall be construed, governed, interpreted and applied in accordance
with the laws of the Commonwealth of Massachusetts, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was
granted.
15.2
The
parties hereto acknowledge that this Agreement sets forth the entire Agreement
and understanding of the parties hereto as to the subject matter hereof, and
shall not be subject to any change or modification except by the execution
of a
written instrument subscribed to by the parties hereto.
15.3
The
provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under
any
controlling body of the Law, such invalidity or unenforceability shall not
in
any way affect the validity or enforceability of the remaining provisions
hereof.
15.4
LICENSEE
agrees to xxxx the Licensed Products sold in the United States with all
applicable United States patent numbers. All Licensed Products shipped to or
sold in other countries shall be marked in such a manner as to conform with
the
patent laws and practice of the country of manufacture or sale.
15.5
The
failure of any party to assert a right hereunder or to insist upon compliance
with any term or condition of this Agreement shall not constitute a waiver
of
that right or excuse a similar subsequent failure to perform any such term
or
condition by the other parties.
IN
WITNESS
WHEREOF, the parties have hereunto set their hands and seals and duly executed
this Agreement the day and year set forth below.
MASSACHUSETTS
INSTITUTE OF TECHNOLOGY
By
|
/s/
Xxxx X. XxxxxxX
|
Name
|
Xxxx
X. Xxxxxxx
|
Title
|
Director,
Technology Licensing Office
|
Date
|
8-26-91
|
XXXXXXXXX
INSTITUTE
By
|
/s/
Xxxx Xxxxx
|
Name
|
Xxxx
Xxxxx
|
Title
|
Vice
President
|
Date
|
8/28/91
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
15
ARIAD
PHARMACEUTICALS, INC.
By
|
/s/
Xxxxxx Xxxxxx, M.D.
|
Name
|
Xxxxxx
X. Xxxxxx, M.D.
|
Title
|
Chairman
& Chief Executive Officer
|
Date
|
8/19/91
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
16
M.I.T.
Case No. [***]
U.S.S.N.
[***] (Filed [***])
(Owned
by
M.I.T. and the Xxxxxxxxx Institute, jointly)
FOREIGN
FILING(S)
M.I.T.
Case No. [***]:
European
Application No. [***] (Filed [***])
(Claiming
Austria, Belgium, Switzerland/Liechtenstein, Germany, France, Great Britain,
Italy, Luxembourg, Netherlands, Sweden)
Japanese
Application No. PCT/[***] (Filed [***])
M.I.T.
Case No. [***]:
Canadian
Application No. [***] (Filed [***])
European
Application No. [***] (Filed [***])
(Claiming
Austria, Belgium, Switzerland/Liechtenstein, Germany, France, Great Britain,
Italy, Luxembourg, Netherlands, Sweden)
Japanese
Application No. PCT/[***] (Filed [***])
M.I.T.
Case No. [***]
(Xxxxxxxxx No. [***])
[***]
U.S.S.N.
[***] (Filed [***])
(Owned
by
The Xxxxxxxxx Institute)
FOREIGN
FILING(S)
[***]
M.I.T.
Case No. [***]
(Xxxxxxxxx No. [***])
[***]
U.S.S.N.
[***] (Filed [***])
(Owned
by
The Xxxxxxxxx Institute)
FOREIGN
FILING(S)
European
Application No. PCT/[***] (Filed [***])
(Claiming
Austria, Belgium, Switzerland/Liechtenstein, Germany, France, Great Britain,
Italy, Luxembourg, Netherlands, Sweden)
M.I.T.
Case No. [***]
(Xxxxxxxxx No. [***])
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
17
[***]
U.S.S.N.
[***] (Filed [***])
(Owned
by
The Xxxxxxxxx Institute and Harvard University, jointly. Harvard University
has
given M.I.T. the authority to license Harvard’s rights on Harvard’s behalf and
has given Xxxxxxxxx full rights to prosecute and defend the Patent
Rights.)
FOREIGN
FILING (S)
[***]
M.I.T.
Case [***]
(Xxxxxxxxx [***])
[***]
(Owned
by
The Xxxxxxxxx Institute)
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
00
Foreign
countries in which Patent Rights shall be filed, prosecuted and maintained
in
accordance with Article VI where legally possible:
[***]
[***]
[***]
[***]
[***]
[***]
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
19
#l/LLN111/14/88 | |
CentCollabResAgt
|
COLLABORATIVE
RESEARCH AGREEMENT
This
Agreement between Centocor, Inc. and the Massachusetts Institute of Technology
(“M.I.T.”) defines the terms and conditions under which Centocor scientists will
collaborate with Xxxx Xxxxxxx X. Xxxxx and colleagues in the Cancer Center
at
M.I.T. in the area of antibody gene expression (“The
Collaboration”).
Centocor
and M.I.T. hereby agree as follows:
1.
FIELD:
The
Field of the Collaboration is defined by the Work Statement attached hereto
as
Appendix A.
2.
DURATION:
The Collaboration shall begin on December 1, 1988 and terminate on November
30,
1991, unless sooner terminated by either party notifying the other, in writing,
that it wishes to terminate the Collaboration. The Collaboration may be extended
by written mutual consent.
3.
EXCHANGE
OF INFORMATION: During the Collaboration, each party shall provide the other
with all data and other information that it develops under the
Collaboration.
4.
M.I.T.
TANGIBLE PROPERTY: M.I.T. shall provide to Centocor certain biological materials
(“M.I.T.”) developed before the Collaboration, for Centocor’s use in the
Collaboration. Centocor shall not give samples, progeny, or derivatives of
such
M.I.T. Tangible Property to any third party except with the written permission
of M.I.T.
5.
BIOLOGICAL
MATERIAL DEVELOPED UNDER THE COLLABORATION: Any biological material developed
by
one party under the Collaboration shall be provided to the other for its use
under the Collaboration. Samples, progeny or derivatives of any biological
materials developed under the Collaboration shall not be delivered to any third
party without the written permission of the developing party, except as
specified in Paragraph 8(c) below. Notwithstanding the foregoing, for hybridomas
developed under this Collaboration which are of commercial value to Centocor
and
which are derived from hybridomas developed or obtained by Centocor outside
of
this Collaboration, Centocor shall not be requited to provide said hybridomas
to
MIT unless provision is specifically requested by MIT for specific purposes
and,
unless suitable cell line transfer agreements in the form of those contained
in
Appendix C are executed between the parties hereto.”
6.
PUBLICATION:
Either party shall be free to publish any of the results it obtains under the
Collaboration, and shall acknowledge the contribution of the other party, or
include the other
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
20
party
as
co-author, as appropriate. The publishing party shall provide the other parry
with a copy of manuscripts submitted for publication at least thirty days prior
to publication, in order to allow the other party to identify potentially
patentable material and request that a patent application be filed.
7.
INVENTIONS:
Any inventions made by Centocor personnel shall belong to Centocor, inventions
made by M.I.T. personnel shall be owned by M.I.T. Inventions made jointly by
M.I.T. and Centocor personnel shall belong jointly to M.I.T. and Centocor.
Each
party shall promptly notify the other if it makes an invention during the
Collaboration, and if it intends to file a patent application on any such
inventions. Copies of any such patent applications which are filed by one party
shall be promptly provided to the other party.
8.
PATENT
AND
LICENSING RIGHTS:
(a)
During
the
Collaboration, M.I.T. shall grant to Centocor a royalty-free nonexclusive
license to the Patent Rights of the M.I.T. Cases listed in Appendix B and to
the
M.I.T. Tangible Property for internal research and development use in the field
of use of “Expression of Antibodies”. If Centocor does not terminate this
Agreement at any time prior to October 31, 1991, the internal research and
development use license to the Patent Rights and the M.I.T. Tangible Property
shall be in perpetuity.
(b)
M.I.T.
shall have the right to use any biological property and inventions developed
by
Centocor under the Collaboration for its own internal uses, royalty-free in
perpetuity.
(c)
“Transferrable
Property” is defined as any biological property developed by Centocor under the
Collaboration, but excluding hybridomas developed by Centocor which produce
antibody of commercial value to Centocor. “Licensable Centocor Patent .Rights”
shall mean patent rights to inventions made by Centocor under the Collaboration,
but excluding claims to hybridomas producing antibody of commercial value to
Centocor. M.I.T. shall have the right to license to third parties, only in
conjunction with the Patent Rights to Appendix B, any Transferrable Property
and
Licensable Centocor Inventions. M.I.T. shall pay to Centocor twenty-five percent
(25%) of the Net Royalties it receives from such licenses. (“Net Royalties” is
defined as Gross Royalties minus 15% for administration and marketing, and
minus
any unreimbursed out-of-pocket patenting costs.)
(d)
Centocor
shall have a first option to an exclusive royalty-bearing license with suitable
due diligence provisions, for certain Applications, to the M.I.T. Tangible
Property, the Patent Rights of Appendix B, and any M.I.T. inventions or
biological property developed under the Collaboration. An “Application” is
defined as all hybridomas producing antibodies to a single antigen or directed
to detection of a single disease state if all tests for that disease are based
on the same antigen or set of antigens operating by the same basic mechanism
in
the disease state. The terms of Centocor’s option are as follows:
(i)
Centocor
shall have a first option for an exclusive license to all Applications for
one
year following the beginning of the Collaboration and an option for a
non-exclusive license until one year following the end of the Collaboration.
Thereafter, Centocor’s option shall be only to Applications for which M.I.T. has
not previously granted a license to a third party.
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
21
(ii) Centocor
may exercise its option to an exclusive license for an Application only after
Centocor demonstrates that it has developed a suitable hybridoma for that
Application, or that it has an intensive development program in place
specifically devoted to development of a hybridoma for that Application. In
the
latter event, Centocor’s license to the hybridoma shall terminate if a
functional hybridoma is not developed by Centocor within two years of the
effective date of the license.
(iii) If
Centocor exercises its option to an exclusive license to an Application, the
royalties shall be as follows:
((a))
For
Applications using known hybridomas whose efficiency of production of antibody
is increased by use of the Patent Rights of Appendix B or the M.I.T. Tangible
Property and/or M.I.T. patents or M.I.T. biological property developed under
the
Collaboration (together defined as “M.I.T. Intellectual and Material Property”),
royalties shall include a License Issue Fee of $10,000 per Application, and
a
Running Royalty of one-half of one percent (0.5%) of Centocor’s sales of product
produced and sold using the M.I.T. Intellectual and Material
Property.
((b))
For
Applications using new hybridomas which could not be practically developed
without use of the M.I.T. Intellectual and Material Property, a License Issue
Fee of $25,000 per Application, and a Running Royalty of 2.5% of product
sales.
AGREED
TO
FOR:
MASSACHUSETTS
INSTITUTE
|
CENTOCOR,
INC.
|
OF
TECHNOLOGY
|
By: |
/s/
Xxxx X. Xxxxxxx
|
By: |
By:
/s/ [Chairman of Board of Centocor]
|
||
Title: |
Director,
Technology Licensing Office
|
Title: |
Title:
Chairman of the Board
|
||
Date: |
Nov.
14, 1998
|
Date: |
Date:
Nov. , 1998
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
22
APPENDIX
A
WORK
STATEMENT
As
part of
a continuing collaboration between MIT scientists (represented by Dr. Xxxxxxx
Xxxxx and Centocor), the MIT scientists will isolate and characterize cDNA
clones representing cellular factors involved .in the regulation of
immunoglobulin gene expression. Said cDNA clones will then be sent to Centocor
where they will be used in one or more of the following ways:
a)
|
The
cDNA clones will be used as probes to determine the level of expression
of
said factors in hybridoma and other cell
lines.
|
b)
|
the
cDNA clones will be expressed in hybridoma or other mammalian cells
in
order to study their effects on immunoglobulin
production.
|
c)
|
the
cDNA clones will be expressed in E. coli in order to obtain large
quantities for study and for production of
antisera.
|
d)
|
Recombinants
of the cDNAs and otter activator genes may also be tested in the
course of
these experiments.
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
23
MASSACHUSETTS
INSTITUTE OF TECHNOLOGY Xxxxxxxxx,
Xxxxxxxxxxxxx 00000
Date:
________________________
Biomaterials
Coordinator
|
|
Technology
Licensing Office
|
Biology
Department
|
Massachusetts
Institute of Technology
|
Massachusetts
Institute of Technology
|
Xxxxxxxx
X00-000
|
Xxxxxxxx
|
00
Xxxxxxxxxxxxx Xxx.
|
00
Xxxxxxxxxxxxx Xxx.
|
Xxxxxxxxx,
XX 00000
|
Xxxxxxxxx,
XX 00000
|
Subject:
BIOLOGICAL
MATERIAL TRANSFER AGREEMENT
Dear
This
is to
acknowledge your request for ___________________________________________
_____________________________________, which is owned by MASSACHUSETTS INSTITUTE
OF TECHNOLOGY (M.I.T.). M.I.T. will provide this material to you, for your
use
in noncommercial scientific research only, under the following
conditions:
1.
|
The
Material covered by this Agreement includes_______________________,
any
additional progeny or derivatives which could not have been made
but for
the_______________________ and any related information and know-how
which
will be received under this
agreement.
|
2.
|
The
Material will be used only by you and by individuals working under
your
direct supervision in your Institution, and will not be transferred,
distributed or released to any other
person.
|
3.
|
The
Material will be used only for noncommercial, publishable research
purposes. It will not be used on any research to be used for the
development of any commercial product, including drug screening or
development for commercial purposes or on behalf of any commercial
entity.
|
4.
|
You
will be free to publish any research results using the Material.
We would
appreciate your acknowledging in such publication(s) MIT and its
personnel
as scientifically appropriate, and providing MIT with copies of such
publication(s).
|
5.
|
The
Material is made available for investigational use only in laboratory
animals or in in
vitro,
experiments and will not be used in humans or for any other
purpose.
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
24
6.
|
All
characteristics of the Material are not fully understood and its
use may
involve risks or dangers that are not known or fully appreciated.
The
Material is being provided without warranty of any sort, express
or
implied.
|
7.
|
You
and your Institution will use the Material in compliance with all
laws and
governmental regulations and guidelines applicable to the Material
and
will comply with all NIH guidelines and other relevant NIH instructions.
In particular:
|
A)
|
Your
laboratory has been reviewed by its institutional biohazards committee
(IBC) which has certified that facilities, procedures, and the training
and expertise of the personnel involved are
adequate;
|
B)
|
Your
laboratory has received the appropriate approvals and has registered
its
rDNA program with the IBC; and
|
C)
|
A
copy of this letter is on file with your laboratory’s
IBC.
|
8.
|
You
will hold MASSACHUSETTS
INSTITUTE OF TECHNOLOGY (M.I.T.) and
its employees harmless from any loss, claim, damage or liability,
of any
kind, which may arise from or in connection with this Agreement or
the
use, handling or storage of the Material. In no case shall M.I.T,
or
Professor ______________ be liable for any use by you, by individuals
working under your direct supervision, or by your Institution, of
the
Material or any loss, claim, damage or liability, of any kind, which
may
arise from or in connection with this Agreement or the use, handling
or
storage of the Material.
|
9.
|
You
understand that no other right or license to this Material or to
its use
is granted or implied as a result of our sending the Material to
you.
|
10.
|
At
the request of MASSACHUSETTS
INSTITUTE OF TECHNOLOGY,
unused Material will be returned to M.I.T. or
destroyed.
|
Research
Project: Studies on the activation and differentiation of monocytic
cells.
If
you
agree to accept the Material under the above conditions, please sign the
Agreement, have it signed by an authorized representative of your Institution
and return it to:
_________________________________
_________________________________
_________________________________
_________________________________
_________________________________
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
25
The
Material will be sent to you as soon as possible after the receipt of the signed
agreement.
Sincerely,
Accepted:
REQUESTER
INSTITUTION
______________________________
By:
_____________________________
|
By:_____________________________
|
(Signature)
|
(Signature)
|
By:_____________________________
|
By:_____________________________
|
(Printed
Name)
|
(Authorized
Representative’s
|
Printed
Name)
|
|
Date:____________________________
|
Date:____________________________
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
26
FIRST
AMENDMENT
This
amendment, dated November 20, 1991, is to the License Agreement dated August
19,
1991 between MASSACHUSETTS INSTITUTE OF TECHNOLOGY, the XXXXXXXXX INSTITUTE,
and
ARIAD PHARMACEUTICALS, INC.
The
parties agree that the License Agreement shall be amended as follows in order
to
acknowledge Harvard University’s ownership of certain Patent
Rights:
1.
|
The
following paragraph shall be added to the WITNESSETH
section:
|
“WHEREAS, M.I.T. Case No. [***] (Xxxxxxxxx No. [***]) “[***] is jointly owned by Harvard University, and Harvard University (Harvard) has authorized M.I.T. to act as its sole and exclusive agent for the purposes of licensing Harvard’s rights in the Patent Rights and has authorized M.I.T. to enter into this licensing agreement on Harvard’s behalf; |
2.
|
The
word “Harvard” shall be added after “Xxxxxxxxx,” in the first sentence of
Paragraph 1.2.
|
3.
|
The
words “and Harvard” shall be added after “Xxxxxxxxx and M.I.T.” and
“M.I.T. and Xxxxxxxx” in Paragraph
2.7.
|
4.
|
The
words “and/or Harvard” shall be added after the words “and/or Xxxxxxxxx”
in all instances in Paragraph 6.1.
|
5.
|
The
words “and Harvard” shall be added after the words “M.I.T. and Xxxxxxxxx”
in Paragraphs 7.1 and 7.2. The words “or Harvard shall be added after the
words “M.I.T. or Harvard” in Paragraph
7.2.
|
6.
|
The
words “and Harvard” shall be added after the words “M.I.T. and Xxxxxxxxx”
in all instances in Paragraphs 8.1, 8.2 and
8.3.
|
7.
|
The
words “nor of Harvard University” shall be added after “nor of the
Xxxxxxxxx Institute”, and the words “or Harvard” shall be added after the
words “Xxxxxxxxx or M.I.T. in Section
X.
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
27
IN
WITNESS
WHEREOF, the parties have hereunto set their hands and seals and duly executed
this Agreement the day and year set forth below.
MASSACHUSETTS
INSTITUTE OF TECHNOLOGY
By
|
/s/
Xxxx X. Xxxxxxx
|
Name
|
Xxxx
X. Xxxxxxx
|
Title
|
Director,
Technology Licensing Office
|
Date
|
11-11-91
|
XXXXXXXXX
INSTITUTE
By
|
/s/
Xxxx Xxxxx
|
Name
|
Xxxx
Xxxxx
|
Title
|
Vice
President
|
Date
|
11/20/91
|
ARIAD
PHARMACEUTICALS, INC.
By
|
/s/
Xxxxxx Xxxxxx
|
Name
|
Xxxxxx
X. Xxxxxx
|
Title
|
Chairman
& CEO
|
Date
|
11/20/91
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
28
SECOND
AMENDMENT TO LICENSE AGREEMENT
This
Second Amendment to License Agreement (“Second Amendment to License Agreement”)
is made and entered into as of this 2nd day of January, 2002, (the “Effective
Date”) by and between MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a corporation
organized and existing under the laws of the Commonwealth of Massachusetts
and
having its principal offices at 00 Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx (hereinafter referred to as “M.I.T.”), and the XXXXXXXXX
INSTITUTE, a corporation organized and existing under the laws of Delaware
and
having its principal offices at Nine Cambridge Center, Cambridge, Massachusetts
(hereinafter referred to as “Xxxxxxxxx”) and ARIAD PHARMACEUTICALS, INC., a
corporation duly organized under the laws of Delaware and having its principal
offices at 00 Xxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx (hereinafter referred
to as “LICENSEE”).
WHEREAS,
M.I.T., WHITEHEAD and LICENSEE entered into that certain License Agreement
dated
August 19, 1991, and amended same effective November 20, 1991 (collectively,
the
“Agreement”); and
WHEREAS,
the parties to the Agreement desire to amend certain terms of the Agreement,
to
add certain terms to the Agreement and to confirm the validity and effectiveness
of the remaining terms and conditions set forth in the Agreement, all as further
set forth herein.
NOW,
THEREFORE, in consideration of the foregoing premises and the mutual covenants
and obligations set forth herein, the parties hereby agree as
follows.
ARTICLE
1
1.
Definitions.
Capitalized
terms used but not defined herein shall have the meaning ascribed to them in
the
Agreement.
ARTICLE
2
2.
Amendment
of the Agreement.
The
Agreement is hereby amended as set forth in this Article 2.
2.1
Amendment
of Article II - Grant.
Article
II of the Agreement is hereby amended as set forth herein.
2.1.1
Amendment
of Paragraph 2.2.
Paragraph
2.2 of the Agreement is hereby deleted and replaced with the following
text:
“2.2
[RESERVED]”
2.1.3
Amendment
of Paragraph 2.3.
Paragraph
2.3 of the Agreement is hereby deleted and replaced with the following
text:
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
29
“2.3
Except as otherwise specifically set forth herein, the rights granted under
Paragraph 2.1 hereof shall be and remain exclusively granted to LICENSEE and
shall continue until the end of the term or terms for which any Patent Rights
are issued, unless sooner terminated as provided herein. Without limiting the
generality of the foregoing, upon a failure of LICENSEE to pay the License
Maintenance Fees due hereunder, the rights granted under Paragraph 2.1 hereunder
shall convert to non-exclusive upon written notice from M.I.T. to LICENSEE.
The
right to convert the rights granted hereunder to non-exclusive shall not be
in
limitation of any other rights that M.I.T. may have hereunder or at law upon
such a failure by LICENSEE to pay the License Maintenance Fees hereunder.”
2.1.3
Amendment
of Paragraph 2.4.
Paragraph
2.4 of the Agreement is hereby deleted and replaced with the following
text:
“2.4
[RESERVED]”
2.1.4
Amendment
of Paragraph 2.8.
Paragraph
2.8 of the Agreement is hereby deleted and replaced with the following
text:
“2.8
LICENSEE shall have the right to enter into sublicenses for the rights,
privileges and licenses granted hereunder. Such sublicenses shall contain
provisions enabling LICENSEE to fulfill its obligations to M.I.T. hereunder.”
2.1.5
Amendment
of Paragraphs 2.9 and 2.10.
Paragraphs
2.9 and 2.10 of the Agreement are hereby deleted and replaced with the following
text:
“2.9
[RESERVED]
2.10
[RESERVED]”
2.2
Amendment
of Article III - DUE DILIGENCE.
Article
III of the Agreement is hereby amended as set forth herein.
2.2.1
Amendment
of Paragraph 3.1.
Paragraph
3.1 of the Agreement is hereby deleted and replaced with the following
text:
“3.1
LICENSEE shall use reasonable commercial efforts to bring one or more Licensed
Products to market through a thorough, vigorous and diligent program for
exploitation of the Patent Rights. Commercially reasonable efforts by LICENSEE
to grant sublicenses to companies that LICENSEE reasonably believes are engaged
or will engage in such activities shall be sufficient to satisfy LICENSEE’s
obligations hereunder.”
2.2.2
Amendment
of Paragraph 3.2.
Paragraph
3.2 of the Agreement is hereby deleted and replaced with the following
text:
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
30
“3.2
[RESERVED]”
2.3
Amendment
of Article VII - INFRINGEMENT.
Article
VII of the Agreement is hereby amended as set forth herein.
2.3.1
Amendment
of Paragraph 7.5.
Paragraph
7.5 of the Agreement is hereby deleted and replaced with the following
text:
“7.5
In
the event that a declaratory action alleging invalidity or noninfringement
of
any of the Patent Rights shall be brought against LICENSEE, and LICENSEE fails
to take reasonable steps to defend such action in a timely manner, M.I.T. (or
Xxxxxxxxx), at its option, shall have the right to intervene and take over
sole
defense of such action at its own expense.”
ARTICLE
3
CONFIRMATION
OF VALIDITY AND EFFECTIVENESS
3.
Confirmation
of Validity and Effectiveness.
Except
as
otherwise specifically set forth herein, the parties hereby confirm the validity
and continued effectiveness of the Agreement.
IN
WITNESS
WHEREOF, the parties have hereunto set their hands and duly executed this Second
Amendment to License Agreement as of the Effective Date.
MASSACHUSETTS
INSTITUTE OF TECHNOLOGY
By:
|
/s/
Xxxx X. Xxxxxx
|
|
Name:
|
Xxxx
X. Xxxxxx
|
|
Title:
|
Director,
Technology Office
|
XXXXXXXXX
INSTITUTE
By:
|
/s/
Xxxx Xxxxx
|
|
Name:
|
Xxxx
Xxxxx
|
|
Title:
|
Vice
President
|
ARIAD
PHARMACEUTICALS, INC.
/s/ Xxxxx Xxxxxxxxx | ||
By:
|
Xxxxx
Xxxxxxxxx
|
|
Senior
Vice President and
|
||
Chief
Business Officer
|
Portions
of this Exhibit were omitted and have been filed separately with the Secretary
of the Commission pursuant to the Company’s application requesting confidential
treatment under Rule 24b-2 of the Securities Exchange Act of
1934.
31