EXHIBIT 10.37
Execution
Copy
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
AND
CHIREX AMERICA, INC.
EXCLUSIVE PATENT LICENSE AGREEMENT
Offer to continue negotiations based upon this
agreement open until May 26, 1998
TABLE OF CONTENTS
RECITALS.................................................................... 1
1. Definitions............................................................. 2
2. Grant of Rights......................................................... 4
3. Company Obligations Relating to Commercialization....................... 7
4. Consideration for Grant of Rights....................................... 12
5. Royalty Reports......................................................... 13
6. Patent Prosecution...................................................... 16
7. Infringement............................................................ 17
8. Term and Termination.................................................... 18
9. Dispute Resolution...................................................... 19
10. Miscellaneous........................................................... 21
EXHIBIT A................................................................... 25
EXHIBIT B................................................................... 26
1
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
(rev. 9/26/97)
This Agreement, effective as of the date set forth above the signatures of
the parties below (the "Effective Date"), is between the Massachusetts Institute
of Technology ("M.I.T."), a Massachusetts corporation, with a principal place of
business at 00 Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000 and ChiRex America
Inc. ("Company"), a Delaware corporation, with a principal place of business at
Xxxxx 000, 000 Xxxxxxxx Xxx., Xxxxxxxx, Xxxxxxxxxxx 00000
RECITALS
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WHEREAS, M.I.T. is the owner of certain Patent Rights (as later defined
herein) relating to M.I.T. Case No. 6752, "Techniques for and Applications of
Carbon-nitrogen Bond Formation", by Xxxxxxx X. Xxxxxxxx and Xxxx Xxxxx, M.I.T.
Case No. 7518, "Synthesis of Aryl Ethers", by Xxxxxxx X. Xxxxxxxx, Xxxxxxx
Xxxxxxx, and Xxxx X. Xxxxx M.I.T. Case No. 7718, "The First General Copper-
catalyzed Formation of Diaryl Ethers", by Xxxxxxx X. Xxxxxxxx, Xxxx Xxxx, and
Xxxx-xxxxxxxx Xxxxxxx, M.I.T. Case No. 7767, "An Ammonia Equivalent for the
Palladium-catalyzed Amination of Aryl Halides and Triflates", by X. Xxxxx,
Xxxxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxxx, X. X. Xxxxxx, and Xxxx X. Xxxxx, and
M.I.T. Case No. 7951 "Pd-catalyzed Arylations of Hydrazines, Hydrazones and
Applications Thereof", by Xxxxxxx X. Xxxxxxxx, Xxxxxx Xxxx, and Xxxxx X. Xxxxx
and has the right to grant licenses under said Patent Rights, subject only to a
royalty-free, nonexclusive non-transferable license to practice the Patent
Rights reserved by the United States Government and the rights described in
Section 2.2;
WHEREAS, M.I.T. desires to have the Patent Rights developed and commercial
benefit the public and is willing to grant a license thereunder;
WHEREAS, Company has represented to M.I.T., to induce M.I.T. to enter into
this Agreement, that Company shall commit itself to a thorough, vigorous and
diligent program of exploiting the Patent Rights so that public utilization
shall result therefrom; and
WHEREAS, Company desires to obtain a license under the Patent Rights upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, M.I.T. and Company hereby agree as follows:
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1. Definitions.
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1.1. "Affiliate" shall mean any legal entity (such as a corporation,
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partnership, or limited liability company) that is controlled by Company. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least thirty percent (30%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
thirty percent (30%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
1.2. "Exclusive Period" shall mean the period of time set forth in Section
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2.2(a).
1.3. Excluded Fields of Use shall mean synthesis of Licensed Products for
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the exclusive purpose of generating libraries using either /or (a) Combinatorial
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Chemistry defined as contemporaneous synthesis of more than 25 compounds in a
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single reaction vessel; or (b) Parallel Synthesis defined as mechanized
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manufacture of more than 25 discrete compounds contemporaneously.
1.4. "Field of Use One FOU-1" shall mean manufacture, use and sale of
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Licensed Products for the pharmaceutical and veterinarian markets except for the
Excluded Fields of Use.
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1.5. "Field of Use Two FOU-2" shall mean manufacture, use and sale of
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Licensed Products for the agricultural market except for the Excluded Fields of
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Use.
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1.6. "Licensed Product" shall mean any product whose development
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manufacture, or sale would infringe one or more claims under the Patent Rights
if such activity took place in the United States, regardless of where such
activity actually takes place.
1.7. "Licensed Process" shall mean any process whose development,
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manufacture, or sale would infringe one or more claims under the Patent Rights
if such activity took place in the United States, regardless of where such
activity actually takes place.
1.8. "Cost of Goods Sold" shall be calculated using the same generally
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accepted accounting principles that ChiRex uses when preparing its financial
reports.
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1.9. "Net Revenues" shall mean the gross amount billed or invoiced by
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Company and its Affiliates for Licensed Products and Licensed Processes, less
the following: (i) customary trade, quantity, or cash discounts and commissions
to non-affiliated brokers or agents to the extent actually allowed and taken;
(ii) amounts repaid or credited by reason of rejection or return; (iii) to the
extent separately stated on purchase orders, invoices, or other documents of
sale, any taxes or other governmental charges levied on the production, sale,
transportation, delivery, or use of a Licensed Product or Licensed Process which
is paid by or on behalf of Company; and (iv) outbound transportation costs
prepaid or allowed and costs of insurance in transit.
1.10. No deductions shall be made for commissions paid to individuals
whether they be with independent sales agencies or regularly employed by Company
and on its payroll, or for cost of collections. Net Revenues shall occur on the
date of invoice or billing for a Licensed Product or Licensed Process. If a
Licensed Product or a Licensed Process is distributed, billed or invoiced to
Affiliates or others at a discounted price that is substantially lower than the
customary price charged by Company to independent third parties, Net Revenues
shall be calculated based on the invoice amount of the Licensed Product or
Licensed Process to an independent third party during the same Royalty Period
or, in the absence of such invoice, on the fair market value of the Licensed
Product or Licensed Process as mutually determined by the parties in good faith.
1.11. Neither the Company nor an Affiliate nor any Sublicensee shall accept
non-monetary consideration for any Licensed Products or Licensed Processes
without the prior written consent of M. 1. T.
1.12. "Patent Rights" shall mean:
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a. the United States patents listed on Exhibit A;
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b the United States patent applications listed on Exhibit A, and
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any divisionals, continuations, and continuation-in-part
applications of such United States patent applications to the extent
the claims are directed to subject matter specifically described in
such United States patent applications, and the resulting patents;
c. any patents resulting from reissues, reexaminations, or
extensions of the United States patents described in (a) and (b)
above;
d. foreign patent applications directed to the subject matter
described in sections (a) and (b) filed after the Effective Date in
the countries listed in Exhibit B and divisionals, continuations and
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continuation-in-part applications of such foreign patent
applications to the extent the claims are directed to subject matter
specifically described in such foreign patent applications, and the
resulting patents; and
e. any foreign patents resulting from foreign procedures equivalent
or substantially equivalent to those in the United States for
reissues, reexaminations, or extensions of the foreign patents
described in (d) above.
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1.13. "Royalty Period" shall mean the partial calendar quarter commencing
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on the date on which the first Licensed Product is sold or used or the first
Licensed Process is performed and for every complete or partial calendar quarter
thereafter during which either (i) this Agreement remains in effect or (ii)
Company has the right to complete and sell work-in-progress and inventory of
Licensed Products pursuant to Section 8.5.
1.14. "Sublicense Income" shall mean any payments that Company receives
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from a Sublicensee in consideration of the sublicense of the rights granted
Company under Section 2. 1., including without limitation license fees,
milestone payments, license maintenance fees, running royalties on Sublicensees
Net Revenues and other payments.
1.15. "Sublicensee" shall mean any permitted sublicensee of the rights
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granted Company under this Agreement, as further described in Section 2.3.
1.16. "Term" shall mean the term of this Agreement as further defined in
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Section 8. 1. below.
2. Grant of Rights.
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2.1. License Grants. Subject to the terms of this Agreement, M.I.T. hereby
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grants to Company and its Affiliates a royalty-bearing license under its
commercial rights in the Patent Rights, to the extent not prohibited by other
patents, to develop, make, have made, use, sell, lease, and import Licensed
Products in Fields of Use FOU- I AND FOU-2 and to develop and perform Licensed
Processes in the Fields of Use FOU- I AND FOU-2.
2.2 Exclusivity.
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(a) The Exclusive Period shall commence on the Effective Date
and terminate with the first to occur of:
(i) the expiration of six (6) years after the first ton
sale of a Licensed Product; or
(ii) the expiration of twelve ( 12) years after the
Effective Date.
(b) During the Exclusive Period described above, M.I.T. agrees
that it shall not grant any other license in Fields of Use FOU- I AND FOU-2 to
practice under the Patent Rights unless sooner terminated as provided in this
Agreement except for:
(i) a nonexclusive, nontransferable license heretofore
granted to Pfizer Pharmaceutical Inc. and its affiliates in
the field of use "human and animal pharmaceuticals;"
(ii) and a nonexclusive, nontransferable license heretofore
granted to Xxxxxxx Chemical Co. and its affiliate, in the
field of use "racemic Intraconazole structure."
(iii) any third-party license(s) M.I.T. may grant in the
Excluded Field of Use which shall also grant the third-party
licensee(s) the right to manufacture and sell, for research
purposes only, small quantities of Licensed Products which
are single compounds
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derived from the third party licensee's practice of
Combinatorial Chemistry or Parallel synthesis in reactions
which fall under the Patent Rights (hereinafter referred to
as "Isolated Compounds"). Such small quantities shall not
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exceed 500 grams. Such third party licensee(s) shall also
have the right to supply up to 10 kilos, only for use in
preclinical studies, of such single isolated compounds as
intermediates or final compounds.
(c) The Exclusive Period may be extended at the sole discretion
of M.I.T. based on M.I.T.'s assessment of Company's due diligence in pursuing
commercialization. Upon expiration of the Exclusive Period, the license granted
hereunder shall become nonexclusive and shall extend to the end of the Term,
unless sooner terminated as provided in this Agreement.
(d) If Company is approached by a third party licensee to the
Excluded Field of Use to purchase or have made an "Isolated Compound" not then
being manufactured or under development by Company, then Company shall engage in
good faith negotiations to make or have made commercial quantities of such
Isolated Compound at a commercially reasonable price and at a commercially
reasonable schedule, or, at Company's discretion, shall grant a nonexclusive
license to the third party licensee for the commercial manufacture and sale of
the Compound, at commercially reasonable royalties. If Company is unwilling or
unable to supply such Compounds at a commercially reasonable price and schedule,
or is unable to reach a sublicense agreement with the third party licensee
within six months of the original request, then M.I.T. shall have the right to
grant the sublicense, at royalty rates of no less than Four Percent (4%) of net
sales of the Licensed Products, and shall share fifty percent (50%) of any
royalties received with Company. Any disagreements between M.I.T. and Company as
to whether schedules, prices and/or sublicensing rates offered to the third
party are "commercially reasonable" shall be negotiated in good faith and if
agreement cannot be promptly reached shall be subject to the Dispute Resolution
procedures of this license.
2.3. Sublicenses.
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Company shall have the right to grant sublicenses of its rights
under Section 2. 1. only during the Exclusive Period. Such sublicenses may
extend past the expiration date of the Exclusive Period, but any exclusivity of
such sublicense shall expire upon the expiration of the Exclusive Period.
Company shall incorporate terms and conditions into its sublicense agreements
sufficient to enable Company to comply with this Agreement. Company shall
promptly furnish M.I.T. with a fully executed copy of any sublicense agreement.
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. M.I.T. agrees to
negotiate such licenses in good faith under reasonable terms and conditions.
2.4. Retained Rights.
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(a) M.I.T. M.I.T. retains the right to make, use and practice
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under the Patent Rights for research, teaching, and educational purposes,
without payment of compensation to Company.
(b) Federal Government. Company acknowledges that the federal
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government retains a royalty-free, non-exclusive, non-transferable license to
practice any
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government-funded invention claimed in any Patent Rights. This Agreement and the
grant of any rights in such government funded inventions in the Patent Rights
are subject to and governed by federal law as set forth in 35 U.S.C. (S)(S) 201-
211, and the regulations promulgated thereunder, as amended, or any successor
statutes or regulations. If any term of this Agreement fails to conform with
such laws and regulations, the relevant term shall be deemed an invalid
provision and modified in accordance with Section 10.10.
2.5. New Inventions. M.I.T. also grants to Company a first option to add to
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the PATENT RIGHTS of this agreement, any new invention arising from the
laboratory of Xxxx. Xxxxxxx X. Xxxxxxxx at M.I.T. which:
(a) is reported to the M.I.T. Technology Licensing Office within
three (3) years of the Effective Date of this Agreement; and
(b) is dominated by the claims of the PATENT RIGHTS existing as
of the Effective Date; and
(c) is available for license to Company after satisfaction of
the terms of any sponsorship agreement under which the invention was made and
subject to any rights granted under such sponsorship.
This option shall be exercisable in writing by Company for each new
invention within six (6) months of M.I.T. notifying Company of the new
invention, with similar terms as contained in this agreement and additional
license issue fees and additional license maintenance fees to be negotiated, but
not to exceed:
(i) License issue fee: Twenty Five Thousand dollars ($25,000) if
foreign patent rights are obtainable; Fifteen Thousand Dollars
($15,000) if only U.S. rights are obtainable.
(ii) License maintenance fees: Twenty Thousand dollars ($20,000)
per year if foreign patent rights are obtainable; Ten Thousand
Dollars ($10,000) per year if only U.S. rights are obtainable and
otherwise under the terms of this agreement.
2.6. No Additional Rights. Nothing in this Agreement shall be construed to
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confer any rights upon Company by implication, estoppel, or otherwise as to any
technology or patent rights of M.I.T. or any other entity other than the Patent
Rights, regardless of whether such rights shall be dominant or subordinate to
any Patent Rights, except as specified in paragraph 2.5 above.
3. Company Obligations Relating to Commercialization.
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3. 1. Diligence Requirements. Company shall use diligent efforts, or shall
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cause its Affiliates to use diligent efforts, to develop Licensed Products or
Licensed Processes and to introduce Licensed Products or Licensed Processes into
Fields of Use FOU- I and FOU-2; thereafter, Company or its Affiliates shall make
Licensed Products or Licensed Processes reasonably available to the public.
Specifically, Company or Affiliate shall fulfill the following obligations:
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(a) Within three (3) months after the Effective Date, Company shall furnish
M.I.T. with a written research and development plan documenting the major tasks
needed to be achieved for successful commercialization, dates when each major
task is estimated to be completed, the name(s) of the project manager(s)
assigned to the development of each Field of Use (FOU- I and FOU-2), and other
resources devoted to the commercialization of Licensed Products or Licensed
Processes in each Field of Use (FOU- 1 and FOU-2).
(b) A duly authorized representative of the Company shall certify to M.I.T.
that Company has spent at the rate of at least One Hundred Fifty Thousand
Dollars ($150,000) per year of internal or external research and development
funds toward the development of Licensed Products and/or Licensed Processes in
FOU- 1 and FOU-2 beginning on the Effective Date and ending after the first
commercial sales of a Licensed Product or a first commercial performance of a
Licensed Process in FOU-1 and FOU-2.
(c) Within sixty (60) days after the end of each calendar year, Company shall
furnish M.I.T. with a updated development plan as described in Paragraph 3.1 (a)
for each Field of Use (FOU-1 and FOU-2) on the progress of its efforts during
the immediately preceding calendar year to develop and commercialize Licensed
Products or Licensed Processes, including without limitation research and
development efforts, efforts to obtain regulatory approval, marketing efforts,
and sales figures. The report shall also contain a discussion of intended
efforts and sales projections for the current year.
(d) Company shall identify initial target molecules to be produced by Licensed
Process and customers for Licensed Products for at least one of the Fields of
Use (FOU- 1 or FOU-2) by September 1, 1998 and for both of the Fields of Use by
January 1, 1999.
(e) Company shall receive Net Revenues from sales of one or more Licensed
Products in one of the Fields of Use (FOU-1, or FOU-2) in amounts equal to or
greater than the following schedule:
Effective Date to September 30, 1999 $ 20,000
October 1, 1999 to September 30, 2000 $ 100,000
October 1, 2000 to September 30, 2001 $ 250,000
October 1, 2001 to September 30, 2002 $ 500,000
October 1, 2002 to September 30, 2003 $ 1,000,000
October 1, 2003 to September 30, 2004 $ 2,000,000
the 12 months starting with October 1, 2004
and each 12 months thereafter $ 5,000,000
(f) Company shall receive Net Revenues from sales of one or more Licensed
Products in the remaining Field of Use whose sales were not included in Section
3.1 (e) in amounts equal to or greater than the following schedule:
Effective Date to March 31, 2000 $ 20,000
April 1, 2000 to March 31, 2001 $ 100,000
April 1, 2001 to March 31, 2002 $ 250,000
April 1, 2002 to March 31, 2003 $ 500,000
April 1, 2003 to March 31, 2004 $1,000,000
April 1, 2004 to March 31, 2005 $2,000,000
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the 12 months starting with March 1, 2006
and each 12 months thereafter $5,000,000
(g) Company shall permit an in-plant inspection by M.I.T. on or before April
1st, 1999, and thereafter permit in-plant inspections by M.I.T. at regular
intervals with at least twelve (12) months between each such inspection.
3.2. Diligence. In the event that M.I.T. determines that Company (or an
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Affiliate or Sublicensee) has not fulfilled its obligations under one or more of
the provisions of Section 3. 1. for either Field of Use (FOU- 1 or FOU-2),
M.I.T. shall furnish Company with written notice of such determination. Within
sixty (60) days after receipt of such notice, Company shall either (i) fulfill
the relevant obligation or (ii) immediately upon written notice to Company,
M.I.T. may terminate the rights for Company to practice in the Field(s) of Use
(FOU- 1, and or FOU-2) for which Company has not met the diligence and sales
milestones of Section 3.1.
In the event that M.I.T. determines that Company (or an Affiliate or
Sublicensee) has not fulfilled its obligations under this Section 3.1, M.I.T.
shall furnish Company with written notice of such determination. Within sixty
(60) days after receipt of such notice, Company shall either (i) fulfill the
relevant obligation or (ii) immediately upon written notice to Company, M.I.T.
may terminate this entire Agreement.
3.3. Indemnification.
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(a) Indemnity. Company shall indemnify, defend, and hold harmless
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M.I.T. and its trustees, officers, faculty, students, employees, and agents and
their respective successors, heirs and assigns (the "Indemnitees"), against any
liability, damage, loss, or expense (including reasonable attorneys' fees and
expenses) incurred by or imposed upon any of the Indemnitees in connection with
any claims, suits, actions, demands or judgments arising out of any theory of
liability (including without limitation actions in the form of tort, warranty,
or strict liability and regardless of whether such action has any factual basis)
concerning any product, process, or service that is made, used, sold, or
imported pursuant to any right or license granted under this Agreement.
(b) Procedures. The Indemnitees agree to provide Company with
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prompt written notice of any claim, suit, action, demand, or judgment for which
indemnification is sought under this Agreement. Company agrees, at its own
expense, to provide attorneys reasonably acceptable to M.I.T. to defend against
any such claim. The Indemnitees shall cooperate fully with Company in such
defense and will permit Company to conduct and control such defense and the
disposition of such claim, suit, or action (including all decisions relative to
litigation, appeal, and settlement); provided, however, that any Indemnitee
shall have the right to retain its own counsel, at the expense of Company, if
representation of such Indemnitee by the counsel retained by Company would be
inappropriate because of actual or potential differences in the interests of
such Indemnitee and any other party represented by such counsel. Company agrees
to keep M.I.T. informed of the progress in the defense and disposition of such
claim and to consult with M.I.T. with regard to any proposed settlement.
(c) Insurance. Company shall obtain and carry in full force and
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effect commercial general liability insurance, including product liability and
errors and emissions insurance which shall protect Company and Indemnitees with
respect to events
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covered by Section 3.2(a) above. Such insurance shall be issued by an insurer
pre-approved by M.I.T., such approval not to be unreasonably withheld, shall
list M.I.T. as an additional named insured thereunder, shall be endorsed to
include product liability coverage, and shall require thirty (30) days written
notice to be given to M.I.T. prior to any cancelation or material change
thereof. The limits of such insurance shall not be less than One Million Dollars
($ 1,000,000) per occurrence with an aggregate of Three Million Dollars
($3,000,000) for bodily injury including death; One Million Dollars ($1,000,000)
per occurrence with an aggregate of Three Million Dollars ($3,000,000) for
property damage; and One Million Dollars ($ 1,000,000) per occurrence with an
aggregate of Three Million Dollars ($3,000,000) for errors and omissions. In the
alternative, Company may self-insure subject to prior approval of M.I.T. Company
shall provide M.I.T. with Certificates of Insurance evidencing compliance with
this section. Company shall continue to maintain such insurance or self-
insurance after the expiration or termination of this Agreement during any
period in which Company or any Affiliate or Sublicensee continues (i) to make,
use, or sell a product that was a Licensed Product under this Agreement or (ii)
to perform a service that was a Licensed Process under this Agreement, and
thereafter for a period of five (5) years.
3.4. Use of M.I.T. Name. Company and its Affiliates and Sublicensees shall
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not use the name of "Massachusetts Institute of Technology," "Lincoln
Laboratory" or any variation, adaptation, or abbreviation thereof, or of any of
its trustees, officers, faculty, students, employees, or agents, or any
trademark owned by M.I.T., or any terms of this Agreement in any promotional
material or other public announcement or disclosure without the prior written
consent of M.I.T. The foregoing notwithstanding, without the consent of M.I.T.,
Company may state that it is licensed by M.I.T. under one or more of the patents
and/or patent applications comprising the Patent Rights and may disclose such
information in any prospectus, offering memorandum, or other document or filing
required by applicable securities laws or other applicable law or regulation.
3.5. Marking of Licensed Products. To the extent commercially feasible and
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consistent with prevailing business practices, Company shall xxxx, and shall
cause its Affiliates and Sublicensees to xxxx, literature describing Licensed
Products that are manufactured or sold under this Agreement with the number of
each issued patent under the Patent Rights that applies to such Licensed
Product. M.I.T. recognizes that it may not be commercially feasible to include
the relevant issued patent numbers on the shipping labels for the containers for
Licensed Products.
3.6. Compliance with Law. Company shall use reasonably commercial efforts
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to comply with, and shall ensure that its Affiliates and Sublicensees use
reasonably commercial efforts to comply with, all commercially material local,
state, federal, and international laws and regulations relating to the
development, manufacture, use, and sale of Licensed Products and Licensed
Processes. Company expressly agrees to comply with the following:
(i) Company and its Affiliates and Sublicensees shall comply with all
United States laws and regulations controlling the export of certain commodities
and technical data, including without limitation all Export Administration
Regulations of the United States Department of Commerce. Among other things,
these laws and regulations prohibit or require a license for the export of
certain types of commodities and technical data to specified countries. Company
hereby gives written assurance that it will comply with, and will cause its
Affiliates and Sublicensees to comply with, all United States export
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control laws and regulations, that it bears sole responsibility for any
violation of such laws and regulations by itself or its Affiliates or
Sublicensees, and that it will indemnify, defend, and hold M.I.T. harmless (in
accordance with Section 3.2.) for the consequences of any such violation.
(ii) Company agrees that any Licensed Products used or sold in the United
States will be manufactured substantially in the United States or its
territories.
4. Consideration for Grant of Rights.
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4. 1. License Issue Fee. In partial consideration of the rights granted
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Company under this Agreement, Company shall pay to M.I.T. on the Effective Date
a license issue fee of Fifty Thousand Dollars ($50,000), and shall reimburse
M.I.T. for its actual expenses incurred as of the Effective Date in connection
with obtaining the Patent Rights. These license fee payments are nonrefundable
and are not creditable against any other payments due to M.I.T. under this
Agreement.
4.2. License Maintenance Fee. In each calendar year during the Term, due
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and payable in full, the Company shall pay to M.I.T. the following license
maintenance fee on the following dates:
January 1, 1999 $30,000
January 1, 2000 $40,000
January 1, 2001 $50,000
January 1, 2002 and each January 1st thereafter $60,000
This annual license maintenance fee is nonrefundable; however, the license
maintenance fee will be credited towards any running royalties subsequently due
on Net Revenues during the same calendar year for which the License Maintenance
Fee was paid. License maintenance fees paid in excess of running royalties due
in such calendar year shall not be creditable to running royalties for future
years.
4.3. Running Royalties. In partial consideration of the rights granted
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Company under this Agreement, Company shall pay to M.I.T. a running royalty of
three percent (3%) of Net Revenues earned by Company and its Affiliates.
4.5. Sharing of Sublicense Income. Company shall pay M.I.T. a total of
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fifty percent (50%) of all Sublicensee Issue Fees and other Sublicense Income
but not less than three percent (3%) of the Sublicensee Net Revenue of Licensed
Products sold by sublicensee. If the Licensed Product manufactured by the
sublicensee is a compound or bulk product later formulated into a finished
pharmaceutical by that same sublicensee, then the Net Revenue price attributed
to the Licensed Product for the purposes of royalties under this paragraph shall
be either:
(a) the price of the raw (unformulated) Licensed Product sold
separately in commercial quantities by the sublicensee or, if not sold
by sublicensee then by Company or another sublicensee, if such product
is sold unformulated; or
(b) if the unformulated product is not available on the market, then
the Net Revenue price shall be the Fully Absorbed Manufacturing Cost
(using
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standard accounting practices) times the quantity 1.40 (that is, 140%
of the Fully Absorbed Manufacturing Price.)
4.6. No Multiple Royalties. If the manufacture, use, lease, or sale of any
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Licensed Product or the performance of any Licensed Process is covered by more
than one of the Patent Rights, multiple royalties shall not be due.
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5. Royalty Reports; Payments; Records.
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5. 1. Frequency of Reports.
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(a) Before First Commercial Sale. Prior to the first commercial
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sale of any Licensed Product or first commercial performance of any Licensed
Process, Company shall deliver reports to M.I.T. annually, within sixty (60)
days of the end of each calendar year, containing information concerning the
immediately preceding calendar year.
(b) After First Commercial Sale. After the first commercial sale
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of any Licensed Product or first commercial performance of any Licensed Process,
Company shall deliver reports to M.I.T. quarterly, within sixty (60) days of the
end of each calendar quarter, containing information concerning the immediately
preceding calendar quarter.
(c) Upon First Commercial Sale of each Licensed Product or
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Commercial Performance of Licensed Process. Company shall report to M.I.T. the
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date of first commercial sale of each Licensed Product and the date of first
commercial performance of each Licensed Process within sixty (60) days of
occurrence.
5.2. Content of Reports and Payments. Each report delivered by Company to
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M.I.T. contain at least the following information for the immediately preceding
Royalty Period:
(i) the number of Licensed Products sold, leased or distributed by
Company, its Affiliates and Sublicensees to independent third parties in each
country, and, if applicable, the number of Licensed Products used by Company,
its Affiliates and Sublicensees in the provision of services;
(ii) the number of Licensed Processes performed by Company, its Affiliates
Sublicensees;
(iii) the gross price charged by Company, its Affiliates and Sublicensees
for each Licensed Product and, if applicable, the gross price charged for each
Licensed Product used to provide services in each country; and the gross price
charged for each Licensed Process performed by Company, its Affiliates and
Sublicensees;
(iv) calculation of Net Revenues for the applicable Royalty Period,
including a listing of applicable deductions;
(v) total royalty payable on Net Revenues in U.S. dollars, together with
the exchange used for conversion;
12
(vi) the amount due to M.I.T. from Sublicense Income for the applicable
Royalty from each Sublicensee with a description of each type of Sublicense
Income; and
(vii) the number of sublicenses entered into for the Patent Rights,
Licensed Products and/or Licensed Processes.
If no royalties are due to M.I.T. for any Royalty Period, the report shall so
state. Concurrent with this report, Company shall remit to M.I.T. any payment
due for the applicable Royalty Period.
5.3. Financial Statements. On or before the one-hundred and twentieth
--------------------
(120th) day following the close of Company's fiscal year, Company shall provide
M.I.T. with Company's financial statements for the preceding fiscal year
including, at a minimum, a balance sheet and an income statement, certified by
Company's chief financial officer or by an independent auditor. All such
financial statements shall be considered Company Confidential Information.
5.4. Payments in U.S. Dollars. All payments due under this Agreement shall
------------------------
be payable in United States dollars. Conversion of foreign currency to U.S.
dollars shall be made at the conversion rate existing in the United States (as
reported in the Wall Street Journal) on the last working day of the calendar
-------------------
quarter preceding the applicable Royalty Period. Such payments shall be without
deduction of exchange, collection, or other charges.
5.5. Payments in Other Currencies. If by law, regulation, or fiscal policy
----------------------------
of a particular country, conversion into United States dollars or transfer of
funds of a convertible currency to the United States is restricted or forbidden,
Company shall give M.I.T. prompt written notice of such restriction, which
notice shall satisfy the sixty-day payment deadline described in Section 5.2.
Company shall pay any amounts due M.I.T. through whatever lawful methods M.I.T.
reasonably designates; provided, however, that if M.I.T. fails to designate such
payment method within thirty (30) days after M.I.T. is notified of the
restriction, Company may deposit such payment in local currency to the credit of
M.I.T. in a recognized banking institution selected by Company and identified by
written notice to M.I.T., and such deposit shall fulfill all obligations of
Company to M.I.T. with respect to such payment.
5.6. Records. Company shall maintain, and shall cause its Affiliates and
-------
Sublicensees to maintain, complete and accurate records relating to the rights
and obligations under this Agreement and any amounts payable to M.I.T. in
relation to this Agreement, which records shall contain sufficient information
to permit M.I.T. to confirm the accuracy of any reports delivered to M.I.T.
under Section 5.2 and compliance in other respects with this Agreement. The
relevant party shall retain such records for at least five (5) years following
the end of the calendar year to which they pertain, during which time M.I.T., or
M.I.T.'s appointed agents, shall have the right, at M.I.T.'s expense, to inspect
such records during normal business hours to verify any reports and payments
made or compliance in other respects under this Agreement. In the event that any
audit performed under this Section reveals an underpayment in excess of ten
percent (10%), Company shall bear the full cost of such audit and shall remit
any amounts due to M.I.T. within thirty (30) days of receiving notice thereof
from M.I.T.
13
5.7. Late Payments. Any payments by Company that are not paid on or before
-------------
the date such payments are due under this Agreement shall bear interest, to the
extent permitted by law, at two percentage points above the Prime Rate of
interest as reported in the Wall Street Journal on the date payment is due, with
-------------------
interest calculated based on the number of days that payment is delinquent.
5.8. Method of Payment. All payments under this Agreement should be made
-----------------
payable to "Massachusetts Institute of Technology" and sent to the address
identified below. Each payment should reference this Agreement and identify the
obligation under this Agreement that the payment satisfies.
5.9. Withholding and Similar Taxes. All royalty payments and other payments
-----------------------------
due to M.I.T. under this Agreement shall be paid in full, without deduction of
withholding or similar taxes or other government imposed fees or taxes, except
as defined in Net Revenues.
6. Patent Prosecution.
------------------
6. 1. Responsibility for Patent Rights. M.I.T. shall have primary
--------------------------------
responsibility for the preparation, filing, prosecution, and maintenance of all
Patent Rights. Company shall have reasonable opportunities to advise M.I.T. and
shall cooperate with M.I.T. in such filing, prosecution and maintenance. Such
cooperation includes, without limitation, (i) promptly executing all reasonable
and appropriate papers and instruments to enable M.I.T. to file, prosecute, and
maintain such Patent Rights in any country; and (ii) promptly informing M.I.T.
of matters that may affect the preparation, filing, prosecution, or maintenance
of any such Patent Rights (such as becoming aware of an additional inventor who
is not listed as an inventor in a patent application).
6.2. Foreign Filings. Exhibit B is a list of Foreign Countries in which
---------------
patent applications corresponding to the United States patent applications
listed in Exhibit A shall be filed. Exhibit B may be amended by mutual agreement
of Company and M.I.T.
6.3. Payment of Expenses. Payment of all fees and costs, including
-------------------
attorneys fees, relating to the filing, prosecution and maintenance of the
Patent Rights shall be the responsibility of Company, whether such amounts were
incurred before or after the Effective Date. Amounts incurred before the
Effective Date shall be due in four equal payments starting with the first day
of the first quarter after the Effective Date. Company shall reimburse all
amounts due pursuant to this Section quarterly within thirty (30) days of
invoicing; late payments shall accrue interest pursuant to Section 5.7. In all
instances, M.I.T. shall deem company a "large entity" for purposes of paying
fees and costs to the United States Patent Office. Should M.I.T. receive partial
reimbursement from other licensees for Patent costs, M.I.T. will amend this
agreement so that Company will not be billed for those amounts repaid by other
licensees.
7. Infringement.
------------
7.1 Notification of Infringement. Each party agrees to provide written
----------------------------
notice to the party promptly after becoming aware of any infringement of the
Patent Rights.
14
7.2. Company Right to Prosecute. So long as Company remains the only
--------------------------
licensee of the Patent Rights in any Field of Use, Company shall have the right,
under its own control and at its own expense, to prosecute any third party
infringement of the Patent Rights in that Field of Use or to defend the Patent
Rights in any declaratory judgment action brought by a third party that alleges
invalidity, unenforceability, or non-infringement of the Patent Rights. Prior to
commencing any such action, Company shall consult with M.I.T. and shall consider
the views of M.I.T. regarding the advisability of the proposed action and its
effect on the public interest. Company shall not enter into any settlement,
consent judgment, or other voluntary final disposition of any infringement
action under this section without the prior written consent of M.I.T.
7.3. Recovery. Any recovery obtained in an action under this Section shall
--------
be distributed as follows: (i) each party shall be reimbursed for any expenses
incurred in the action (including the amount of any royalty payments withheld
from M.I.T. as described below), (ii) as to ordinary damages, Company shall
receive an amount equal to its lost profits or a reasonable royalty on the
infringing sales (whichever measure of damages the court shall have applied),
less a reasonable approximation of the royalties and other amounts that Company
would have paid to M.I.T. if Company had sold the infringing products, processes
and services rather than the infringer, and (iii) as to special or punitive
damages, the parties shall share equally in any award. Company may offset a
total of fifty percent (50%) of any expenses incurred under this Section against
any running royalty payments due to M.I.T. under this Agreement, provided that
in no event shall the running royalty payments under Section 4.3. and 4.5., when
aggregated with any other offsets and credits allowed under this Agreement, be
reduced by more than fifty percent (50%) in any Royalty Period.
7.4. M.I.T. as Indispensable Party. M.I.T. shall permit any action under
-----------------------------
this Section to be brought in its name if required by law, provided that Company
shall hold M.I.T. harmless from, and if necessary indemnify M.I.T. against, any
costs, expenses, or liability that M.I.T. may incur in connection with such
action.
7.5. M.I.T. Right to Prosecute. In the event that Company fails to initiate
-------------------------
an infringement action within a reasonable time after it first becomes aware of
the basis for such action, or to answer a declaratory judgment action within a
reasonable time after such action is filed, M.I.T. shall have the right to
prosecute such infringement or answer such declaratory judgment action, under
its sole control and at its sole expense, and any recovery obtained shall be
given to M.I.T.
7.6. Cooperation. Each party agrees to cooperate fully in any action under
---------------
this Article which is controlled by the other party, provided that the
controlling party reimburses the cooperating party promptly for any costs and
expenses incurred by the cooperating party in connection with providing such
assistance.
8. Term and Termination.
--------------------
8.1. Term. This Agreement shall commence on the Effective Date and shall
----
remain in effect until the expiration or abandonment of all issued patents and
filed patent applications within the Patent Rights, unless earlier terminated in
accordance with the provisions of this Agreement.
15
8.2. Voluntary Termination by Company. Company shall have the right to
--------------------------------
terminate this Agreement, for any reason, upon six (6) months prior written
notice to M.I.T. and upon payment of all amounts due to M.I.T. through the
desired Effective Date of the termination.
8.3. Termination for Default.
-----------------------
(a) NonPayment. In the event Company fails to pay any amounts due and
----------
payable to M.I.T. hereunder, and falls to make such payments within thirty (30)
days after receiving written notice thereof, M.I.T. may terminate this Agreement
immediately upon written notice to Company. Company shall have only one
opportunity to benefit from the thirty (30) day cure period; any subsequent
breach for nonpayment by Company will entitle M.I.T. to terminate this Agreement
immediately upon written notice to Company, without the thirty-day cure period.
(b) Material Breach. In the event Company commits a material breach of
---------------
its obligations under this Agreement, except for breach as described in
Subsection 83(a), and falls to cure that breach within sixty (60) days after
receiving written notice thereof, M.I.T. may terminate this Agreement
immediately upon written notice to Company.
8.4. Force Majeure. Neither party will be responsible for delays resulting
-------------
from causes beyond the reasonable control of such party, including without
limitation fire, explosion, flood, war, strike, or riot, provided that the
nonperforming party uses commercially reasonable efforts to avoid or remove such
causes of nonperformance and continues performance under this Agreement with
reasonable dispatch whenever such causes are removed.
8.5. Effect of Termination. The following provisions shall survive the
---------------------
expiration or termination of this Agreement: Articles I and 9; Sections 3.2.,
3.5., 5.2. (obligation to provide final report and payment), 5.6., 8.5., and
10.8. Upon the early termination of this Agreement, Company and its Affiliates
and Sublicensees may complete and sell any work-in-progress and inventory of
Licensed Products that exist as of the Effective Date of termination, provided
that (i) Company is current in payment of all amounts due M.I.T. under this
Agreement, (ii) Company pays M.I.T. the applicable running royalty or other
amounts due on such sales of Licensed Products in accordance with the terms and
conditions of this Agreement, and (iii) Company and its Affiliates and
Sublicensees shall complete and sell all work-in-progress and inventory of
Licensed Products within six (6) months after the Effective Date of termination.
9. Dispute Resolution.
------------------
9. 1. Mandatory Procedures. The parties agree that any dispute arising out
--------------------
of or relating to this Agreement shall be resolved solely by means of the
procedures set forth in this Article, and that such procedures constitute
legally binding obligations that are an essential provision of this Agreement;
provided, however, that all procedures and deadlines specified in this Article
may be modified by written agreement of the parties. If either party falls to
observe the procedures of this Article, as modified by their written agreement,
the other party may bring an action for specific performance in any court of
competent jurisdiction.
16
9.2. Dispute Resolution Procedures.
-----------------------------
(a) Negotiation. In the event of any dispute arising out of or
-----------
relating to this Agreement, the affected party shall notify the other party, and
the parties shall attempt in good faith to resolve the matter within ten (10)
days after the date of such notice (the "Notice Date"). Any disputes not
resolved by good faith discussions shall be referred to the Director or
Assistant Director of the Technology Licensing Office for M.I.T. and to a senior
executive for the Company (collectively, the "Executives"), who shall meet at a
mutually acceptable time and location within thirty (30) days after the Notice
Date and attempt to negotiate a settlement.
(b) Mediation. If the matter remains unresolved within sixty (60)
---------
days after the Notice Date, or if the Executives fail to meet within thirty (30)
days after the Notice Date, either party may initiate mediation upon written
notice to the other party, whereupon both parties shall be obligated to engage
in a mediation proceeding under the then current Center for Public Resources
("CPR") Model Procedure for Mediation of Business Disputes, except that specific
provisions of this Section shall override inconsistent provisions of the CPR
Model Procedure. The mediator will be selected from the CPR Panels of Neutrals.
If the parties cannot agree upon the selection of a mediator within ninety (90)
days after the Notice Date, then upon the request of either party, the CPR shall
appoint the mediator. The parties shall attempt to resolve the dispute through
mediation until one of the following occurs: (i) the parties reach a written
settlement; (ii) the mediator notifies the parties in writing that they have
reached an impasse; (iii) the parties agree in writing that they have reached an
impasse; or (iv) the parties have not reached a settlement within one hundred
and twenty (120) days after the Notice Date.
(c) Trial Without Jury. If the parties fail to resolve the dispute
------------------
through mediation, or if neither party elects to initiate mediation, each party
shall have the right to pursue any other remedies legally available to resolve
the dispute, provided, however, that the parties expressly waive any right to a
jury trial in any legal proceeding under this Section.
9.3. Preservation of Rights Pending Resolution.
-----------------------------------------
(a) Performance to Continue. Each party shall continue to perform
-----------------------
its obligations under this Agreement pending final resolution of any dispute
arising out of or relating to this Agreement; provided, however, that a party
may suspend performance of its obligations during any period in which the other
party falls or refuses to perform its obligations. Nothing in this Section is
intended to relieve Company from its obligation to make payments pursuant to
Sections 4 and 6 of this Agreement.
(b) Provisional Remedies. Although the procedures specified in this
--------------------
Article are the sole and exclusive procedures for the resolution of disputes
arising out of or relating to this Agreement, either party may seek a
preliminary injunction or other provisional equitable relief if, in its
reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
(c) Statute of Limitations. The parties agree that all applicable
----------------------
statutes of limitation and time-based defenses (such as estoppel and laches)
shall be tolled while the procedures set forth in Subsections 9.2.(a) and 9.2(b)
are pending. The parties shall take any actions necessary to effectuate this
result.
17
10. Miscellaneous.
-------------
10. 1. No Representations or Warranties. EXCEPT AS OTHERWISE EXPRESSLY SET
--------------------------------
FORTH IN THIS AGREEMENT, M.I.T. MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY
KIND CONCERNING THE PATENT RIGHTS, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NONINFRINGEMENT, VALIDITY OF PATENT RIGHTS CLAIMS, WHETHER ISSUED OR PENDING,
AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE.
Specifically, and not to limit the foregoing, M.I.T. makes no warranty or
representation (i) regarding the validity or scope of the Patent Rights, (ii)
that the exploitation of the Patent Rights or any Licensed Product or Licensed
Process will not infringe any patents or other intellectual property rights of
M.I.T. or of a third party, and (iii) that M.I.T. or a third party is not
currently infringing or will not infringe the Patent Rights.
IN NO EVENT SHALL M.I.T., ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND
AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING ECONOMIC DAMAGES OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF
WHETHER M.I.T. SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT
SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
10.2. Compliance with Law and Policies. Company agrees to comply with
--------------------------------
applicable law and the policies of M.I.T. in the area of technology transfer and
shall promptly notify M.I.T. of any violation that Company knows or has reason
to believe has occurred or is likely to occur. The M.I.T. policies currently in
effect are available through the M.I.T. Technology Licensing Office.
10.3. Counterparts. This Agreement may be executed in one or more
------------
counterparts, each which shall be deemed an original, and all of which together
shall be deemed to be one and the same instrument.
10.4. Headings. All headings are for convenience only and shall not affect
--------
the meaning of any provision of this Agreement.
10.5. Binding Effect. This Agreement shall be binding upon and inure to the
--------------
benefit of the parties and their respective permitted successors and assigns.
10.6. Assignment. This Agreement is personal to Company and no rights or
----------
obligations may be assigned by Company without the prior written consent of
M.I.T., which shall not be unreasonably withheld. If there is a purchase of a
majority of Company's outstanding voting securities by a third party M.I.T.
retains the right to renegotiate the running royalty rates in this license to
reflect the business realities at the time of such purchase. This renegotiation
would recognize that the current license contains favorable licensing terms
given to Company because of Company's current limited resources so that Company
would thereby be able to maximize the resources available for developing Patent
Rights, provided however that in such renegotiations no running royalty
expressed as a percentage of Net Revenues earned by Company , its Affiliates, or
Sublicensees shall exceed five percent (5%). (See section 4.3 and also section
4.5 of this agreement).
18
10.7. Amendment and Waiver. This Agreement may be amended, supplemented, or
--------------------
otherwise modified only by means of a written instrument signed by both parties.
Any waiver of any rights or failure to act in a specific instance shall relate
only to such instance and shall not be construed as an agreement to waive any
rights or fail to act in any other instance, whether or not similar.
10.8. Governing Law. This Agreement and all disputes arising out of or
-------------
related to this Agreement, or the performance, enforcement, breach or
termination hereof, and any remedies relating thereto, shall be construed,
governed, interpreted and applied in accordance with the laws of the
Commonwealth of Massachusetts, U.S.A., without regard to conflict of laws
principles, except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent shall
have been granted.
10.9. Notice. Any notices required or permitted under this Agreement shall
------
be in writing, shall specifically refer to this Agreement, and shall be sent by
hand, recognized national overnight courier, confirmed facsimile transmission,
confirmed electronic mail, or registered or certified mail, postage prepaid,
return receipt requested, to the following addresses or facsimile numbers of the
parties:
If to M.I.T.:
Technology Xxxxxxxxx Xxxxxx, XX00-000
Xxxxxxxxxxxxx Institute of Technology
Five Cambridge Center, Xxxxxxx Square
Cambridge, MA 02142-1493
Attention: Director
Tel: 000-000-0000
Fax: 000-000-0000
If to Company:
ChiRex America Inc.
Xxxxx 000
000 Xxxxxxxx Xx.
Xxxxxxxx, XX 00000 X.X.X.
Attention: Xxxx Xxxxx
Tel: 000-000-0000
Fax: 000-000-0000
All notices under this Agreement shall be deemed effective upon receipt. A party
may change its contact information immediately upon written notice to the other
party in the manner provided in this Section.
19
10.10. Severability. In the event that any provision of this Agreement
------------
shall be held invalid or unenforceable for any reason, such invalidity or
unenforceability shall not affect any other provision of this Agreement, and the
parties shall negotiate in good faith to modify the Agreement to preserve (to
the extent possible) their original intent. If the parties fail to reach a
modified agreement within sixty (60) days after the relevant provision is held
invalid or unenforceable, then the dispute shall be resolved in accordance with
the procedures set forth in Article 9. While the dispute is pending resolution,
this Agreement shall be construed as if such provision were deleted by agreement
of the parties.
10. 11. Entire Amendment. This Agreement constitutes the entire agreement
----------------
between the parties with respect to its subject matter and supersedes all prior
agreements or understandings between the parties relating to its subject matter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed b
duly authorized representatives.
The Effective Date of this Agreement is /s/ May 22, 1998
--------------------------
MASSACHUSETTS'S INSTITUTE OF CHIREX AMERICA INC.
TECHNOLOGY
By: /s/ Xxxx X. Xxxxxx, Xx. By: /s/ Xxxxxxx Xxxxxxxx
------------------------ --------------------------
Name: Xxxx X. Xxxxxx, Xx. Name: Xxxxxxx Xxxxxxxx
Title: Assistant Director Technology Title: Chief Financial
Licensing Office
20
EXHIBIT A
List of Patent Applications and Patents in the Patent Rights as of the Effective
--------------------------------------------------------------------------------
Date
----
M.I.T. Case No. 6752
"Techniques for and Applications of Carbon-nitrogen Bond Formation"
by Xxxxxxx X. Xxxxxxxx and Xxxx Gurarn
U.S. Patent No. 5,576,460; issued 11/19/97
M.I.T. Case No. 7518
"Synthesis of Aryl Ethers"
by Xxxxxxx X. Xxxxxxxx, Xxxxxxx Xxxxxxx, and Xxxx X. Xxxxx
U.S. Serial No. 08/728,449; filed 10/10/96
M.I.T. Case No. 7718
"The First General Copper-catalyzed Formation of Diaryl Ethers"
by Xxxxxxx X. Xxxxxxxx, Xxxx Xxxx, and Xxxx-xxxxxxxx Xxxxxxx
U.S. Serial No. 60/061114; filed 10/6/97
M.I.T. Case No. 7767
"An Ammonia Equivalent for the Palladium-catalyzed Amination of Aryl Halides and
Triflates" by X. Xxxxx, Xxxxxxx X. Xxxxxxxx, Xxxxxx X. Xxxxxxx, X. X. Xxxxxx,
and Xxxx X. Xxxxx, U.S. Serial No. 60/054092; filed 7/29/97
M.I.T. Case No. 7951
"Pd-catalyzed Arylations Of Hydrazines, Hydrazones and Applications Thereof",
by Xxxxxxx X. Xxxxxxxx, Xxxxxx Xxxx, and Xxxxx X. Xxxxx
21
EXHIBIT B
Company has asked M.I.T. to file P.C.T. applications designating Europe, Canada,
and Japan for all M.I.T. Cases covered by Patent Rights unless Company
explicitly requests M.I.T. to do otherwise as described in Sections 6.1, 6.2 and
10.9.
