1
Exhibit 10.58
LICENSE AGREEMENT
This Agreement, made as of this 20th day of September, 2000 is by and
between Boston Biosystems, Inc., a Delaware corporation (hereinafter,
"Licensee") and Hybridon, Inc., a Delaware corporation (hereinafter,
"Licensor").
W I T N E S S E T H:
WHEREAS, Licensor and Licensee are entering into an Asset Purchase
Agreement dated as of the date hereof (the "Asset Purchase Agreement"), pursuant
to which Licensee is purchasing certain of Licensee's assets in connection with
the manufacture and sale of advanced chemistry compounds and pharmaceuticals
(the "Business"); and
WHEREAS, Licensor has adopted and is using the trade names and
trademarks used in the operation of the Business as set forth on SCHEDULE A
attached hereto (hereinafter, the "Names & Marks") in connection with its
current operation of the Business; and
WHEREAS, Licensor wishes to grant, and Licensee wishes to accept a
non-exclusive, royalty-free license providing for use by the Licensee of the
Names & Marks in connection with its operation of the Business for a period of
one (1) year commencing on the date hereof;
NOW, THEREFORE, in consideration of the mutual covenants herein
contained, and for other good and valuable consideration, the receipt and
adequacy of which are acknowledged, the parties hereby agree as follows:
1. LICENSE
1.1 Licensor hereby grants to Licensee a non-exclusive, royalty-free,
worldwide license, for a term of one (1) year commencing on the date hereof, to
use the Names & Marks in connection with Licensee's operation of the Business,
primarily for the purpose of any packaging or marketing materials, for the
limited purposes of facilitating a smooth transition of the Business from the
Licensor to Licensee pursuant to the terms of the Asset Purchase Agreement,
subject to the terms and conditions contained herein.
1.2 Licensee may (i) engage, employ or otherwise retain the services of
third parties to operate the Business using the Names &Marks, subject to the
quality control provision in Section 4 below, but may not transfer said license
rights to any other third party without the consent of Licensor, which consent
shall not be unreasonably withheld, or (ii) assign any or all of its rights and
interests in the Names and Marks hereunder to one or more of its Affiliates (as
defined in Rule 12b-2 of the regulations promulgated under the Securities
Exchange Act); PROVIDED, that in the event of (i) or (ii) the Licensee shall
nonetheless remain responsible for the performance of all of its obligations
hereunder.
2
2. TERMINATION
2.1 This Agreement may be terminated by each of the parties hereto in
accordance with the following provisions:
(i) Licensee shall have the right and option to terminate this
Agreement, for its convenience, by providing two (2) months written notice
thereof to Licensor.
(ii) In the event of any material breach of this agreement by either
party hereto, the other party shall have the right, without limitation of any
other right it may have on account of such failure, to terminate this Agreement
by first giving the breaching party thirty (30) days written notice of its
intention to terminate, specifying the cause of default, and if the defaulting
party shall not remedy such failure during such thirty (30) day period, then the
other party may give further written notice to the defaulting party, terminating
the Agreement, in which event this Agreement shall be terminated on the date
specified in such further notice.
2.2 Notwithstanding the above, this Agreement shall terminate
automatically without notice upon any of the following events:
(i) An assignment for the benefit of creditors of Licensee.
(ii) The appointment of a receiver or trustee to manage the affairs of
the Licensee unless removed within sixty (60) days.
(iii) The involuntary or voluntary bankruptcy of the Licensee, unless
stayed within sixty (60) days.
3. OBLIGATIONS OF LICENSOR.
3.1 Licensor agrees to police the use of the Names & Marks, or
colorable imitations thereof, by others. It shall be in Licensor's sole
discretion, however, as to whether to bring, maintain or settle an infringement
action against a third party.
4. QUALITY CONTROL.
4.1 Licensee agrees that its operation of the Business while utilizing
the Names & Marks will comply with generally recognized industry standards with
respect to the manufacture and sale of advanced chemistry compounds and
pharmaceuticals.
5. INDEMNIFICATION. To the extent a claim or action is brought against
the Licensor based on or related to Licensee's use of the Names and Marks or its
failure to observe or perform its obligations under this Agreement, Licensee
shall defend and hold the Licensor harmless from and against any and all claims,
liabilities, judgments, damages, costs and expenses, including reasonable
attorneys' fees, suffered by or awarded against the Licensor.
-2-
3
6. MISCELLANEOUS.
6.1 This Agreement contains the entire Agreement between the parties
regarding the subject matter hereof and supersedes all prior Agreements, whether
oral or written. No amendment to this Agreement may be made except by a writing
signed by both parties.
6.2 No provision hereof may be waived unless in writing signed by both
parties affixing their signatures to this document. Waiver of any one provision
herein shall not be deemed to be a waiver of any other provision herein.
6.3 This Agreement shall be governed in accordance with the laws of the
State of Delaware.
6.4 Any notice, request, information or other document required to be
provided hereunder shall be in writing and delivered by first class mail,
postage prepaid, or by overnight delivery service as follows:
If to Licensee:
Boston Biosystems, Inc.
00X Xxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxxxx Xxxxxxxx, Chief Operating Officer
with a copy to:
XxXxxxxxx, Will & Xxxxx
00 Xxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxx Xxxxx, Esq.
If to Licensor:
Hybridon, Inc.
000 Xxxxxxx Xxxxxxxxx
Xxxxxxx, Xxxxxxxxxxxxx
Attn: Xxxxxx Xxxxxxxx
with a copy to:
Holland & Knight
Xxx Xxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx
Attn: Xxxxx Xxxxxxx, Esq.
-3-
4
6.5 It is the desire and intent of the parties hereto that the
provisions of this Agreement shall be enforced to the fullest extent permissible
under the laws and public policies applied in each jurisdiction in which
enforcement is sought. Accordingly, if any particular provision of this
Agreement shall be adjudicated to be invalid or unenforceable, such provision
shall be deemed amended to delete therefor the portion thus adjudicated to be
invalid or unenforceable and the Agreement shall otherwise remain in full force
and effect.
6.6 In any action, suit or other proceeding instituted to enforce,
remedy, prevent or obtain relief from a breach or violation of this Agreement,
the substantially prevailing party shall recover all of such party's reasonable
attorneys' fees incurred therein, including any and all appeals or petitions
therefrom.
6.7 Nothing contained herein shall be construed to create a joint
venture, partnership or agency between the parties and neither party may take
any action which binds the other or gives a color of authority than an act is on
behalf of the other party.
6.8 This Agreement shall inure to the benefit of and shall be binding
upon the successors and assigns of any party, and each of them.
6.9 The terms of this Agreement are the result of negotiation between
the parties. All parties to this Agreement therefore, agree that the normal rule
of construction to the effect that any ambiguities in an agreement are to be
resolved against the drafting party shall not be employed in the interpretation
of this Agreement.
6.10 The signatories here below represent they are authorized to
execute this Agreement on behalf of their respective parties.
[The remainder of this page is intentionally left blank.]
-4-
5
IN WITNESS WHEREOF, the parties hereto have approved and executed this
Agreement effective as of the date first written above.
BOSTON BIOSYSTEMS, INC.
By: /s/ Xxxxxxx X. Xxxxx
----------------------------------------
Name: Xxxxxxx X. Xxxxx
Title: General Counsel
HYBRIDON, INC.
By: /s/ Xxxxxx X. Xxxxxxxx
----------------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: Chief Financial Officer
By: /s/ Xxxxxx Xxxxxxx
Name: Xxxxxx Xxxxxxx
Title: President and Chief Executive
Officer
-5-
