1
EXHIBIT 10.19
[Confidential treatment has been requested for portions of this exhibit. The
confidential portions have been redacted and are denoted by [**]. The
confidential portions have been separately filed with the commission.]
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is made and entered into
effective July 1, 1996 ("Effective Date"), by and between Sother Limited
("SOTHER"), a Channel Island corporation having its principal place of business
at 00 Xxxxxxx X Xxxxxx, XX Xxxxxx, Xxxxxx, XX0 0XX Channel Islands; and ILEX
Oncology, Inc. ("ILEX"), a Delaware corporation having its principal place of
business at 00000 Xxxxxxx Xxxxx, Xxx Xxxxxxx, Xxxxx 00000.
WITNESSETH
WHEREAS, SOTHER is the developer or owner of the Technology; and
WHEREAS, SOTHER desires to grant to ILEX and ILEX desires to acquire an
exclusive, worldwide license with the right to sub-license to make, use,
market, sell, manufacture and otherwise commercially exploit the Products in
the Field of Interest; and
NOW, THEREFORE, in consideration of the mutual promises and obligations
hereinafter set forth and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "Confidential Information" shall mean any proprietary and secret
ideas, proprietary technical information, know-how and proprietary commercial
information or other similar proprietary information; provided, however,
Confidential Information shall not include information which:
(a) has been published or otherwise made available to the
general public other than by any act in breach of this Agreement; or
(b) is disclosed by an unrelated third party without any
obligation of confidentiality; or
(c) was in the possession of the receiving party prior to
disclosure by the disclosing party hereunder and was not acquired
directly or indirectly from any third party under obligation of
confidentiality to the disclosing party;
-1-
2
(d) is required by law, court or governmental order to be
disclosed; provided that the discloser shall not disclose such
information prior to giving the other party reasonable notice to afford
the other party an opportunity to object to such disclosure; or
(e) is required to be disclosed during the filing or
prosecution of a patent; or
(f) is required by law or governmental regulation to obtain
regulatory approval for use or Sale as contemplated by this Agreement;
or
(g) is disclosed in the course of a Sale of a Product as
contemplated in this Agreement.
1.2 "Field of Interest" shall mean all uses of the Technology for the
treatment or prophylaxis of: (i) cancer in humans; (ii) conditions or diseases
which are associated with cancer in humans; and (iii) conditions and diseases
associated with the treatment or prophylaxis of cancer in humans.
1.3 "Improvements" shall mean all improvements, advancements,
modifications, revisions, changes, developments and alterations that: (i)
relate to or pertain to the Patent Rights or the Field of Interest, (ii)
improve the efficacy of applications of the Technology including, without
limitation, improvements in methods, treatment regimes, treatment sites,
uptake, stability, metabolism, delivery and pharmacokinetics, and (iii) are
made, developed owned, licensed or acquired by SOTHER during the term of this
Agreement.
1.4 "Net Manufacturing Revenues" shall mean the gross revenue
received by ILEX for manufacturing Products for third parties less: (i) the
direct material costs; (ii) the direct labor costs; and (iii) [**]
percent ([**]%) of the direct material costs and direct labor costs.
1.5 "Net Sales" shall mean the gross revenue (other than Sub-Licensee
Receipts) received by ILEX from Sales of Products less the following:
(a) any credits or refunds actually granted to
customers for the return of Products previously Sold;
(b) any separately identified sales, excise, value added, use,
turnover or similar taxes and any duties and other such governmental
charges imposed upon the importation or Sales of Products;
(c) any separately identified charges for transportation,
shipping, handling or insurance which are directly associated with Sales
of Products;
-2-
3
(d) any customary, trade, quantity or cash discounts actually
allowed and taken;
(e) in the event that ILEX is required to pay a royalty to an
unrelated third party in order to make, use, sell, manufacture or
commercially exploit Products in any country, the amount of such
royalties actually paid to such third party; and
(f) in the event that ILEX is successful in litigation under
Article 9 and the monetary recovery is insufficient to cover ILEX's
expenses of such litigation, then ILEX's uncovered expenses of such
litigation up to a maximum of U.S. $ [**] ( [**] DOLLARS
U.S.); provided, however, such deduction, in any quarter shall not
exceed an amount which would decrease the royalties payable in such
quarter by more than [**]% of the royalties due prior to such
deduction.
Notwithstanding the foregoing, if a Product is sold in conjunction with
or includes Royalty Bearing Components, Net Sales for purposes of determining
royalties payable under this Agreement shall be calculated as the product
obtained by using whichever of the following formulas is applicable:
(i) If both the Product and the Royalty Bearing Components
included in the combination products or service are also sold separately
(by ILEX or others), multiplying Net Sales of the combination products
or service by the fraction A/(A+B), where "A" is the price during the
royalty paying period in question of the Product if sold separately and
"B" is the price of the Royalty Bearing Components in the combination
products or service if sold separately.
(ii) If Section 1.5.1 does not apply, multiplying Net Sales of
such combination products or service by the fraction C/(C+D), where "C"
is the per unit cost of the Product portion of such combination products
or service and "D" is the per unit cost of the Royalty Bearing
Components in such combination products or service, such costs being
arrived at using the standard cost accounting procedures of ILEX, which
will be in accordance with generally accepted accounting principles.
1.6 "Patent Rights" shall mean all patent applications, information
and discoveries covered by patents whether in the United States, Argentina, or
other foreign countries which are owned or licensed by SOTHER that may issue
from SOTHER's patent applications and all divisions, continuations,
continuations-in-part, re-examinations, renewals and extensions thereof, and
any letters of patents at issue thereon which are applicable to the
manufacture, use or sale of farnesyl transferase inhibitors within the Field of
Interest within the Territory. All Patent Rights shall be listed on Schedule
1, which schedule shall be updated from time to time.
-3-
4
1.7 "Person" shall mean an individual, corporation, partnership,
joint venture, trust, unincorporated organization, university, college or a
governmental or any agency or political subdivision thereof.
1.8 "Product" shall mean any product or service, the manufacture, use
or Sale of which would, if not licensed under this Agreement, be within the
scope of any of the Patent Rights.
1.9 "Royalty Bearing Components" shall mean all components, devices
or products that are sold in conjunction with or are included as a part of a
Product and for which either (i) ILEX must license and pay a royalty to an
unrelated third party or (ii) ILEX owns a patent, or a patent application that
is being diligently prosecuted, covering the component, device or product in
the appropriate territory where such component, product or device is sold.
1.10 "Sale"/"Sold"/"Sell" shall mean the sale, rent, lease, marketing,
exchange or otherwise commercial exploitation transfer of a Product, but shall
not include any distribution of Products for clinical testing or promotional or
marketing purposes in which no profit is derived from such distribution.
1.11 "Sub-Licensee Receipts" shall mean all revenue received by ILEX
from Products sold by sub-licensees.
1.12 "Technology" shall mean and include the Patent Rights, together
with any and all copyrights, Improvements, information, data, know-how, trade
secrets, processes, formulas, patterns, drawings, writings, notes, records,
compilations, programs, materials, devices, systems, methods, techniques,
products, procedures, preparations, usage information or materials, models, and
prototypes, whether or not patentable, which (i) relate or pertain to the Field
of Interest; (ii) have been licensed, acquired, made or developed by SOTHER;
and (iii) relate to farnesyl transferase inhibitors.
1.13 "Territory" shall mean the whole world.
ARTICLE 2
GRANT OF EXCLUSIVE LICENSE
2.1 Subject to the terms and conditions hereof, effective as of the
Effective Date, SOTHER hereby grants to ILEX a worldwide, exclusive license
with the right to sublicense to the Technology with rights to develop, make and
have made, use, sell, manufacture, market and otherwise commercially exploit
Products in the Field of Interest.
-4-
5
ARTICLE 3
CONSIDERATION
3.1 In consideration of the grant of the exclusive license specified
in Section 2.1, ILEX shall pay SOTHER a licensing fee equal to the reasonable
expenses incurred by SOTHER in filing any patent under the Patent Rights. This
fee, however, shall only be payable after (i) the patent has issued; and (ii)
ILEX has confirmed the activity of a Product in ILEX's laboratories.
3.2 In consideration of the grant of the exclusive license specified
in Section 2.1, ILEX agrees to pay SOTHER a royalty of (i) [**] percent
([**]%) of Net Sales on Product sold by ILEX; (ii) [**] percent
([**]%) of all Sub-Licensee Receipts and (iii) [**] percent ([**]%)
of Net Manufacturing Revenues.
3.3 Notwithstanding Section 3.2, no royalty shall be due on any money
or services received by ILEX for payments received for research and development
contracts related to the development of Products.
3.4 If the license granted hereunder becomes non-exclusive in any
country by operation of law in such country and SOTHER licenses any third party
in such country on terms more favorable than those contained herein, SOTHER
shall promptly notify ILEX and ILEX, in its sole discretion, shall be entitled
to pay royalty to SOTHER on Net Sales of Products Sold in such country on the
same terms as the non-exclusive licensee in such country from the effective
date of the third party license.
3.5 Notwithstanding Section 3.2, no multiple royalties shall be
payable to SOTHER because any Product is covered by (i) more than one patent
within the Technology or (ii) is covered by more than one royalty payable under
Sections 3.2(i), (ii) or (iii). In such case, ILEX shall pay the single
royalty which produces the highest income for SOTHER.
3.6 In the event that ILEX is required to pay a royalty to a third
party in order to manufacture or Sell Products in any country, [**]% of such
third party royalties shall be creditable against the royalty due SOTHER in
such country by reducing the amount of royalty paid to SOTHER by the amount so
paid to the third party.
3.7 All payments required in this Agreement shall be paid in United
States dollars, delivered in accordance with Section 16.7 of this Agreement or
at such other place as the party receiving payment may reasonably designate
consistent with applicable laws and regulations.
3.8 Royalty on any manufacturing or Sales subject to royalty in any
country outside the United States shall be calculated on Net Sales, Sub-
Licensee Receipts or Net Manufacturing Revenues in such country as expressed in
United States dollars in accordance with Generally Accepted Accounting
Principals (GAAP).
-5-
6
3.9 ILEX shall use its best efforts to convert the royalty or other
payments due SOTHER on manufacturing or Sales in any country to United States
dollars; provided, however, that if conversion to and transfer of United States
dollars cannot be made in any country for any reason, payment of royalty at
SOTHER's option (i) can be made in the currency of the country in which such
manufacturing or Sales are made, deposited in SOTHER's name in a bank
designated by SOTHER in any such country; or (ii) ILEX's obligation to pay
royalty on such Net Sales, Sub-Licensee Receipts or Net Manufacturing Revenues
shall be suspended until such conversion and transfer of all funds by ILEX
becomes possible.
3.10 If any country limits the royalty rate or amount payable on
account of Net Sales, Sub-Licensee Receipts or Net Manufacturing Revenues in
such country, the royalty payable hereunder shall not exceed the maximum amount
payable under applicable laws, regulations or administrative rulings of such
country.
3.11 All taxes assessed or imposed against or required to be withheld
from any royalty payments due SOTHER shall be deducted from amounts payable
hereunder and shall be paid to appropriate fiscal or tax authorities on behalf
of SOTHER. Tax receipts received by ILEX evidencing payment of such taxes
shall be forwarded to SOTHER.
ARTICLE 4
ACCOUNTING AND RECORDS
4.1 The royalties during each calendar quarter shall be computed each
calendar quarter ending on March 31, June 30, September 30 and December 31, and
shall be paid no later than sixty (60) calendar days after the end of each
calendar quarter.
4.2 With each royalty payment, ILEX shall furnish to SOTHER a written
accounting report for the royalty, stating by country in which the Products
were Sold, the total number of units of each Product Sold by ILEX, the unit
price for each Product Sold, the Net Sales, Sub-license Receipts, Net
Manufacturing Revenues, the royalties due and the royalties paid.
4.3 ILEX shall keep and maintain records of Sales and deductible
expenses made pursuant to the license granted hereunder. Such records shall be
open to inspection upon reasonable notice and during normal business hours of
ILEX at any reasonable time within two (2) years after the royalty period to
which such records relate, by an independent certified accountant selected by
SOTHER and approved by ILEX, which approval shall not be unreasonably withheld.
The accountant shall have the right to examine the records which relate to the
computation of the royalties to be paid under this Agreement and report the
findings of such examination of records to SOTHER solely to the extent of
reporting the accuracy of the reports and payments made by ILEX, including the
amount of any discrepancy, if any. Such examination, however, shall not occur
more than one time per year. A copy of any report provided to SOTHER by the
accountant shall be given concurrently to ILEX. Any accountant
-6-
7
so selected shall sign, at ILEX's request, an appropriate agreement with ILEX
to keep confidential all information obtained as a result of such examination
of records. All costs of such audit shall be borne solely by SOTHER; provided,
however, if the examination by the accountant reveals an underpayment by ILEX
by more than of the amount actually owing to SOTHER during any six month
reporting period, then the entire cost of the examination by the accountant
shall be paid by ILEX.
4.4 All royalties which are not timely paid by ILEX shall bear
interest at the prime rate of Bank One, Texas N. A. or the maximum allowable
lawful interest rate, whichever is less. Nothing in this section shall be
deemed to permit or excuse any late payment by ILEX.
ARTICLE 5
WARRANTIES AND REPRESENTATIONS
5.1 SOTHER represents and warrants to ILEX:
(a) that it is the owner, inventor or licensee of the
Technology and that the ideas or concepts were not taken from any third
person or party and that it is entitled to enter into this Agreement and
convey the rights granted hereunder;
(b) that other than the grant set forth herein, the Technology
is free and clear of all liens, mortgages, assignments, encumbrances,
pledges, options, restrictions or licenses on the Technology within the
Field of Interest;
(c) that the use of the Technology does not infringe any
patent, trademark or copyright belonging to SOTHER (other than those
licensed hereunder) or any third party nor has it been misappropriated
nor is there any misuse by SOTHER of trade secret, know-how or
confidential information of another;
(d) that there are no claim or actions pending or threatened
against SOTHER or any of its affiliates relating to the Technology;
(e) that it is a corporation duly organized under the laws of
Argentina and is qualified to do business and is in good standing in all
countries as the nature of its business and properties require;
(f) that it has all necessary right, power and authority to
enter into this Agreement and to grant the assignments and licenses
provided herein;
-7-
8
(g) that it is not and will not be a party to any agreement or
commitment with any third party which would impair, interfere with or
infringe upon the rights it granted hereunder;
(h) that it has duly and validly executed and delivered this
Agreement and that this Agreement constitutes the valid and binding
obligation of SOTHER, enforceable in accordance with its terms.
5.2 ILEX represents and warrants that:
(a) it is a corporation duly organized under the laws of the
State of Delaware and is qualified to do business in good standing in
all states as the nature of its business and properties is required; and
(b) its execution, delivery, and performance of this Agreement
and the consideration herein set forth have been duly authorized by all
necessary corporate action.
(c) that it has all necessary right, power and authority to
enter into this Agreement and to grant the assignments and licenses
provided herein;
(d) that it is not and will not be a party to any agreement or
commitment with any third party which would impair, interfere with or
infringe upon the rights it granted hereunder;
ARTICLE 6
INDEMNITY
6.1 ILEX agrees to indemnify and hold SOTHER and its officers,
trustees, employees, agents and representatives harmless from any liabilities,
costs and expenses (including attorneys' fee and expenses), obligations or
causes of actions arising out of or related to any breach of the
representations and warranties made by ILEX herein.
6.2 SOTHER agrees to indemnify and hold ILEX and its officers,
trustees, employees, agents and representatives harmless from any liabilities,
costs and expenses (including attorneys' fee and expenses), obligations or
causes of actions arising out of or related to any breach of the
representations and warranties made by SOTHER herein.
6.3 In seeking indemnification under this Article 6, the indemnified
party shall promptly notify the indemnifying party in writing of any such
claim, lawsuit, loss or cause of action for which indemnity is sought and the
indemnified party shall permit the indemnifying party to control any litigation
and the settlement of any such claim, lawsuit, loss or cause of
-8-
9
action. The indemnified party shall cooperate fully in every proper way in the
defense and settlement thereof. After the indemnified party has received
notice of the indemnifying party's election to assume the defense of said
action, the indemnifying party will not be liable to the indemnified party
under this Article 6 for any legal or other expenses subsequently incurred by
the indemnified party in connection with the defense thereof unless: (i) the
indemnified party, in any action, has reasonably concluded that there may be
legal defenses available to it which are different from or additional to those
available to the indemnifying party, in which case the indemnified party shall
have the right to select separate counsel to assume said legal defenses and to
otherwise participate in the defense of said action on behalf of the
indemnified party, or (ii) the indemnifying party has authorized the employment
of counsel at the expense of the indemnifying party. The indemnified party
shall also have the right, at its own expense, to be represented by counsel of
its own choice in any such proceedings; provided, however, the indemnifying
party has control over the defense.
ARTICLE 7
PROTECTION OF PROPERTY RIGHTS
7.1 SOTHER and ILEX agree to use all reasonable efforts to keep
confidential the Confidential Information together with any and all
documentation and other physical manifestations or embodiments thereof;
provided, however, ILEX may, to the extent it deems necessary or appropriate,
disclose the Technology to potential licensees, purchasers, investors, joint
venturers and the like, but ILEX agrees to use its best efforts to make such
disclosures subject to a satisfactory confidentiality agreement.
7.2 SOTHER has paid and will continue to pay all costs associated
with the filing, prosecution and maintenance of the Patent Rights.
7.3 Subject to the provisions of Section 7.6, SOTHER shall have sole
right and responsibility for deciding whether to file U.S., Argentina and/or
foreign patent applications, continue or abandon prosecution of any such
applications or to maintain or abandon any such application or patent regarding
the Technology licensed hereunder.
7.4 SOTHER agrees to prosecute with good faith and due diligence all
such applications and to take all actions necessary to maintain and enforce the
patents and proprietary rights in and to the Technology.
7.5 SOTHER agrees to prepare and dispatch for foreign filings within
such period of time as will result in the application of the "one year
convention" as to retroactive filing date, proper applications for foreign
letters patent.
-9-
10
7.6 In the event that SOTHER decides not to file any or all U.S.,
Argentina and/or foreign applications or to continue prosecution of a patent
application to issuance or maintain any U.S., Argentina or foreign patent
application or patent, SOTHER shall timely notify ILEX in writing in order that
ILEX may file U.S. and/or said foreign applications and/or continue said
prosecution or maintenance of such patent applications or patents at ILEX's
expense, without any lapse in any rights thereunder. All rights in such patent
application or patent shall remain with SOTHER, provided, however, ILEX shall
be able to deduct such expenses from any royalties due on a country by country
basis.
7.7 SOTHER agrees to keep ILEX fully informed, at SOTHER's expense,
of prosecutions pursuant to this Article 7, including submitting to ILEX copies
of all official actions and responses thereto. SOTHER shall consult ILEX
regarding any abandonment of the prosecution of the patents in the Patent
Rights.
7.8 Each party agrees to cooperate with the other party to whatever
extent is necessary to procure patent protection of any rights, including fully
agreeing to execute any and all documents to give the other party the full
benefit of the licenses granted herein.
ARTICLE 8
PUBLICITY AND PUBLICATION RIGHTS
8.1 Unless otherwise specified in this Agreement, neither party shall
disclose the terms and provisions of this Agreement, nor use the name,
logotypes or symbols of the other party or the name of any employee or staff of
a party for publication or advertising purposes except with the written consent
of the other party; provided, however, each party shall be allowed to disclose
any information, including the terms of this Agreement if such party's counsel
deems it necessary or appropriate to comply with applicable laws, rules and
regulations.
ARTICLE 9
PATENT INFRINGEMENT
9.1 If the manufacture, Sale or use of Products within the Field of
Interest results in a claim for patent infringement against ILEX, or its
sublicensees, the party to this Agreement first having notice of such claim
shall promptly notify the other party in writing, which notice shall set forth
the facts of such claim in reasonable detail. ILEX shall have the primary
right, at its expense, to conduct and control the defense of any such claim,
using counsel of its choice. SOTHER shall have the right, at its expense, to
be represented by independent counsel in any such proceeding, subject to ILEX's
right of control. ILEX shall have the right to settle any claim under this
Section 9.1.
9.2 Notice of Infringement. Each party shall promptly notify the
other party of any alleged infringement of the Technology, within the Field of
Interest and of any available
-10-
11
evidence of such infringement. If any party other than ILEX or its
sublicensees infringes Patent Rights in any country, ILEX may institute patent
infringement litigation in its own name or in the name of SOTHER. If ILEX
obtains any monetary recovery in such a suit, ILEX shall first reimburse itself
and SOTHER for the full expenses of litigation from such recovery. The balance
remaining of such recovery shall first be used to reimburse SOTHER for royalty
due to infringement(s) as of the date thereof, and any remaining monies shall
be retained by ILEX. SOTHER shall cooperate fully in the prosecution of any
such suit. If such suit must include SOTHER as a party, SOTHER will permit it
to be joined in such suit. SOTHER shall have the right to be represented by
counsel of its choosing in any such action if joined as a party, such
representation to be at SOTHER's expense subject to reimbursement from any
monetary recovery in such suit of an amount not to exceed one-half of the total
full expenses of litigation.
9.3 Defense. In the event that a declaratory judgment action
alleging invalidity, unenforceability or noninfringement of any of the
Technology within the Field of Interest shall be brought against either party,
SOTHER shall have the right not the obligation to defend such action; provided,
however, that if SOTHER determines at any time that it does not desire to
defend such action, SOTHER shall promptly so advise ILEX, and ILEX shall then
have the right to defend such action on SOTHER's behalf at ILEX's cost and
expense, including attorney's fees.
9.4 Cooperation. In any suit either party may commence or defend
pursuant to its rights under this Agreement in order to enforce or defend the
validity or enforceability of the Technology, the other party shall, at the
request and expense of the party initiating or defending 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.
ARTICLE 10
MARKETING/MARKING
10.1 ILEX shall use its reasonable best efforts to market Products
with respect to which it, in the exercise of its reasonable business judgment,
decides to pursue commercialization.
10.2 ILEX shall make reasonable efforts to xxxx all Products which
incorporate Patent Rights with appropriate notice of patent coverage.
10.3 ILEX shall undertake at its expense the responsibility to apply
for Government approval in the Territory, including carrying out and keeping
records of preclinical and clinical testing for approval by the FDA and other
government agencies. ILEX shall at its expense keep SOTHER informed, at least
every two-months of the results of the preclinical and clinical activities
related to the Product. Such information should include any information in
ILEX's
-11-
12
possession that is required to obtain government approval to make, market and
sell the Product in countries of the territory where ILEX, pursuant to Section
13.2, does not sell Product.
ARTICLE 11
INDEPENDENT CONTRACTOR STATUS
11.1 SOTHER and ILEX hereby acknowledge and agree that each is an
independent contractor; that neither party shall be considered to be the agent,
representative, master, or servant of the other for any purpose; and that
neither party has any authority to enter into contract, assume any obligation,
or make any representation or warranty on behalf of the other. Nothing in this
relationship between SOTHER and ILEX shall be construed to create any joint
venture, partnership, fiduciary relationship, or similar relationship between
the parties.
ARTICLE 12
ASSIGNMENT AND SUBLICENSING
12.1 ILEX may sublicense any rights or obligations to any part of the
Technology under this Agreement; provided however that ILEX shall be
responsible for the reporting and payment of all royalties on Products Sold by
such sublicensees.
12.2 ILEX may not assign or attempt to assign its rights or
obligations under this Agreement without the prior written approval of SOTHER,
which approval will not be unreasonably withheld; provided, however, ILEX shall
be able to assign all of its rights or obligations under this Agreement in
connection with the sale of all of its business associated with this Agreement.
12.3 SOTHER may not assign or license or attempt to assign or license
its rights or obligations under this Agreement without the prior written
approval of ILEX, which approval will not be unreasonably withheld.
ARTICLE 13
TERM AND TERMINATION
13.1 Unless sooner terminated as otherwise provided herein, the
licenses granted herein shall terminate on the expiration of the last issued
patent to expire in the Patent Rights. In the event that (i) no patent in the
Patent Rights issues by the fifth anniversary of the Effective Date of this
Agreement or all Patent Rights expire or are held unpatentable, invalid or
unenforceable in an agency or judicial proceeding from which no appeal has been
or can be taken, then the licenses granted herein shall become paid-up, and no
further royalties under Article 3 shall be owed by ILEX for Sales of Products
occurring after such anniversary.
-12-
13
13.2 SOTHER may terminate this Agreement in the event of any of the
following circumstances:
(a) ILEX is ordered or adjudged bankrupt, or placed in the
hands of a receiver and such receivership is not abated within 90 days.
(b) ILEX fails to perform any of its material obligations
under this Agreement and fails to remedy said breach within 60 days
after being given written notice of the specific failure or default and
termination by SOTHER.
(c) ILEX decides to not or does not diligently pursue
preclinical testing within six months from the Effective Date of this
Agreement or diligently continue said testing until conclusive results
are obtained to the satisfaction of the parties or until three years
have elapsed since such tests were begun by ILEX, whichever date is
sooner.
13.3 SOTHER may terminate this Agreement for a specific country in the
Territory the event (i) ILEX decides to not or does not diligently pursue
marketing and selling a Product in such country, (ii) the activity of the
Product has been confirmed by ILEX or another appropriate party, and (iii)
government approval has been received in such country. Prior to such
termination, SOTHER shall provide ILEX at least two months written
notification, such notification shall include a statement of SOTHER's intent
and the specific country.
13.4 ILEX may terminate this Agreement by giving thirty (30) days
written notice to SOTHER. Upon termination under this Section 13.3: (i) all
licenses under Article 2 shall terminate; and (ii) each party shall return the
other party's Confidential Information and shall, subject to Section 7.1,
maintain the confidentiality of all confidential information.
13.5 Upon termination of this Agreement for any reason, ILEX shall
have 180 days to complete the Sale of any Products in stock or in the course of
manufacture at the time of termination, subject to payment of royalty as
provided in Article 3.
13.6 If this agreement terminates under Sections 13.2 or 13.3, ILEX,
for such countries where the Agreement is terminated, shall assign any
trademarks it used to market the product in such countries.
13.7 Except as expressly provided by this Agreement, termination shall
not relieve any party of any obligation or liability existing before
termination. Nothing in this Section 13.5 should be construed as limiting
either party's ability to pursue alternative exploitation of the Technology if
this Agreement is terminated.
-13-
14
ARTICLE 14
MANUFACTURING RIGHTS
14.1 ILEX shall have the right to manufacture for SOTHER all of
SOTHER's needs for Products used within the Field of Interest within the
Territory. Further, SOTHER agrees to purchase [**] percent ([**]) of
its Product needs from ILEX if, in SOTHER's reasonable business judgment, it is
commercially feasible.
ARTICLE 15
GOVERNMENT COMPLIANCE
15.1 During the term of this Agreement, SOTHER shall be responsible
for complying with all foreign registrations necessary for the transfer of the
right in this Agreement, including the filing and registration of such
agreement in Argentina or any other foreign country.
ARTICLE 16
MISCELLANEOUS TERMS
16.1 ASSIGNMENT
Without further consideration, each party shall, and shall cause its
agents and legal representatives to, execute and deliver to the other party
such other instruments, and to take such other action, and assist the other
party in such manner as the other party may reasonably request to more
effectively convey and transfer and vest in and to put each party in possession
of the rights granted hereunder and to assist each party in the recordation of
same as necessary.
16.2 INUREMENT
This Agreement shall be binding upon and shall inure to the benefit of
each party's successors and assigns.
16.3 EXPENSES
Other than as provided herein, each party is responsible for its own
expenses related to the execution of this Agreement.
-14-
15
16.4 CHOICE OF LAW
This Agreement shall be deemed to have been made under and shall be
construed and interpreted in accordance with the laws of the State of Delaware.
No conflicts-of-law rule or law which might refer such construction and
interpretation to the laws of another state, republic or country shall be
considered.
16.5 ENTIRE AGREEMENT
The terms of this Agreement constitute the entire agreement between the
parties and supersedes all previous communications, written or oral, related to
the subject matter of this document. No previous agreement or understanding
varying or extending the terms of this Agreement shall be binding upon either
party.
16.6 AMENDMENTS
No amendment or modification to this Agreement shall be effective unless
it is in writing and signed by duly authorized representatives of the parties.
16.7 NOTICE
All notices, statements and reports required or contemplated herein by
one party to the other shall be in writing and shall be delivered personally or
by telecopy (receipt confirmed) to such party or shall be sent by reputable
express delivery service or by certified mail, postage prepaid, with return
receipt requested.
If to ILEX:
To: ILEX Oncology, Inc.
00000 Xxxxxxx Xxxxx
Xxx Xxxxxxx, Xxxxx 00000
Attention: Xxx Xxxxxxxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
-15-
16
with a copy to:
Xxxxxx X. Xxxx
Xxxxxxxxx & Xxxxxxxx, L.L.P.
0000 XxXxxxxx Xx., Xxxxx 0000
Xxxxxxx, Xxxxx 00000-0000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
If to SOTHER:
To: SOTHER LIMITED
Xxxxx y Planes 1025
Xxxxxxxx
Xxxxxx Xxxxx 0000, Xxxxxxxxx
Attention: Xxxxxxxx Xxxxx, M.D.
Telephone: 00-0-000-0000
Facsimile: 00-0-000-0000
with a copy to:
Xxxxx Xxxxxx & Associates
Av. Xxxxxxxx Xxxxxxx 2252 0xx xxxxx "X"
0000
Xxxxxx Xxxxx, Xxxxxxxxx
Attention: Xxxxxxx X. XxXxxxxx
Telephone: 00-0-000-0000
Facsimile: 00-0-000-0000
Either party hereto may change the address to which notices to such
party are to be sent by giving notice to the other party at the address and in
the manner provided above. All notices shall be deemed given on the day when
actually delivered as provided above (if delivered personally or by telecopy)
or on the day showing on the return receipt (if delivered by express delivery
service or by mail).
16.8 SEVERABILITY
Both parties hereby especially agree in contract that neither party
intends to violate any public policy, statutory or common law, rule,
regulation, treaty or decision of any government
-16-
17
agency or executive body thereof of any country or community or association of
countries; that if any word, sentence, paragraph or clause or combination
thereof of this Agreement is found, by a court or executive body with judicial
powers having jurisdiction over this Agreement or any of its parties hereto, in
a final unappealed order to be in violation of any such provision in any
country or community or association of countries, such words, sentences,
paragraphs or clauses or combination shall be inoperative in such country or
community or association of countries, and the remainder of this Agreement
shall remain binding upon the parties hereto.
16.9 WAIVER
The parties covenant and agree that if either party fails or neglects
for any reason to take advantage of any of the terms provided for the
termination of this Agreement or if either party, having the right to declare
this Agreement terminated, shall fail to do so, any such failure or neglect by
either party shall not be a waiver or be deemed or be construed to be a waiver
of any cause for the termination of this Agreement subsequently arising, or as
a waiver of any of the terms, covenants or conditions of this Agreement or of
the performance thereof. None of the terms, covenants and conditions of this
Agreement can be waived by either party except by its written consent.
16.10 HEADINGS
The Article, section and paragraph headings are for convenience only and
are not a part of this Agreement.
IN WITNESS OF THIS AGREEMENT, the parties have executed and delivered
this Agreement in multiple originals, by their duly authorized officers and
representatives on the respective dates shown below, but effective as of the
Effective Date.
ILEX ONCOLOGY, INC. SOTHER LIMITED
By: By:
---------------------------------- -------------------------------------
Name: Name:
-------------------------------- -----------------------------------
Title: Title:
------------------------------- ----------------------------------
Date: Date:
-------------------------------- -----------------------------------
-17-
18
SCHEDULE 1
PATENT RIGHTS
-18-
