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EXHIBIT 10.32
IMMUNOGEN, INC. HAS OMITTED FROM THIS EXHIBIT 10.32 PORTIONS OF THE AGREEMENT
FOR WHICH IMMUNOGEN, INC. HAS REQUESTED CONFIDENTIAL TREATMENT FROM THE
SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE AGREEMENT FOR WHICH
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED WITH AN ASTERISK AND SUCH
CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
RESEARCH COLLABORATION AGREEMENT
THIS AGREEMENT ("Agreement") effective this July 31, 1997 (the
"Effective Date"), between Apoptosis Technology, Inc., a corporation organized
and existing under the laws of the Commonwealth of Massachusetts having a place
of business at 000 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, XXX (hereinafter
"ATI"), and BioChem Therapeutic Inc., a corporation organized and existing under
the laws of the Province of Quebec having a place of business at 000
Xxxxxx-Xxxxxxxx Xxxxxxxxx, Xxxxx, Xxxxxx, Xxxxxx (hereinafter "BioChem").
WITNESSETH:
WHEREAS, ATI has expertise in the biology of major diseases and
discovery of targets for the therapy of such diseases, including targets in the
regulatory pathways of apoptosis, such as pathways comprising proteins of the
Bcl-2 family of proteins and the IGF-I Receptor ("IGF-IR") and has developed
screens based on these targets to identify and test human therapeutic products;
WHEREAS, BioChem has expertise in the synthesis of chemical compounds
and in discovering, developing and marketing human therapeutic products;
WHEREAS, BioChem desires to use screens developed by ATI to screen
various compounds for therapeutic activity; and
WHEREAS, ATI and BioChem desire that ATI and BioChem apply their
technology and expertise to discover and develop additional screens and to
discover, develop, manufacture and sell human therapeutic products for the
prevention or treatment of human diseases;
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants herein contained, the Parties hereby agree as follows:
ARTICLE I
DEFINITIONS
As used in this Agreement, the following terms, whether used in the
singular or plural, shall have the respective meanings set forth below:
1.1 "Affiliate" shall mean any individual or entity directly or
indirectly controlling, controlled by or under common control with, a Party to
this Agreement. For purposes of this Agreement, the direct or indirect ownership
of over fifty percent (50%) of the outstanding voting securities of an entity,
or the right to receive over fifty percent (50%) of the profits or earnings of
an
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entity shall be deemed to constitute "control". Such other relationship as in
fact gives such individual or entity the power or ability to control the
management, business and affairs of an entity shall also be deemed to constitute
control.
1.2 "Agreement" shall mean this Agreement and all instruments
supplemental hereto or in amendment or confirmation hereof; "herein," "hereof,"
"hereto," "hereunder," "herewith" and similar expressions mean and refer to this
Agreement and not to any particular Article, Section, Subsection or other
subdivision; "Article", "Section", "Subsection" or other subdivision of this
Agreement means and refers to the specified Article, Section, Subsection or
other subdivision of this Agreement.
1.3 "Annual Research Plan" shall mean the written plan describing
the research in the Field to be carried out during each year of the Research
Program by ATI and BioChem pursuant to this Agreement. Each Annual Research Plan
will be set forth in a written document adopted by the Joint Steering Committee
(as defined below).
1.4 "ATI Patent Rights" shall mean Patent Rights owned or licensed
by ATI, with the right to sublicense, which are necessary or useful to make or
have made, sell or have sold, use or make use of ATI Screens, Research
Inventions and/or Commercialized Products. For greater certainty, ATI Patent
Rights shall include, without limitation, the patent rights identified in
Schedule 1.4 hereto, as well as those Patent Rights, as defined in Section 1.19
hereof, which are owned by ATI or licensed to ATI with the right to sublicense
to BioChem.
1.5 "ATI Screens" shall mean pre-existing screening assays developed
by ATI and screening assays developed in the Research Program.
1.6 "ATI Technology" shall mean all information and materials,
including but not limited to, discoveries, improvements, processes, formulas,
data, inventions, know-how and trade secrets, instructions, technology,
biological substances (including, but not limited to, genes, DNA fragments,
primers and gene products), nucleic acid constructs, and other intellectual
property, patentable or otherwise, in each case which during the term of this
Agreement (i) are in ATI's possession or control and/or are useful in the Field
or necessary or useful to conduct the Research Program and/or the Drug Discovery
and Development Program; and/or (ii) which arise out of the Research Program or
are necessary or useful to BioChem in the performance of its obligations under
the Research Program. ATI Technology shall include, without limitation, all
biological, chemical, pharmacological, toxicological, pharmaceutical, physical
and analytical, clinical, safety, manufacturing and quality control data and
information related thereto, and all applications, registrations, licenses,
authorizations, approvals and correspondence related to ATI Screens, including,
without limitation, correspondence submitted to regulatory authorities with
jurisdiction over the ATI Screens.
1.7 "BioChem Patent Rights" shall mean Patent Rights owned or
licensed by BioChem, with the right to sublicense, which are necessary or useful
to make or have made, sell or have sold, use or make use of ATI Screens,
research Inventions and/or Commercialized Products. For greater certainty,
BioChem Patent Rights shall include, without limitation, those Patent Rights, as
defined in Section 1.19 hereof, which are owned by BioChem or licensed to
BioChem with the right to sublicense to ATI.
1.8 "BioChem Technology" shall mean all information and materials,
including but not limited to, discoveries, improvements, processes, formulas,
data, inventions, know-how and trade
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secrets, instructions, technology, biological substances (including, but not
limited to, genes, DNA fragments, primers and gene products), nucleic acid
constructs, and other intellectual property, patentable or otherwise, in each
case which during the term of the Agreement (i) are in BioChem's possession and
control and are useful in the Field or necessary or useful to conduct the
Research Program and/or the Drug Discovery and Development Program; and/or (ii)
which arise out of the Research Program or are necessary or useful to BioChem in
the performance of its obligations under the Research Program. BioChem
Technology shall include, without limitation, all biological, chemical,
pharmacological, toxicological, pharmaceutical, physical and analytical,
clinical, safety, manufacturing and quality control data and information related
thereto, and all applications, registrations, licenses, authorizations,
approvals and correspondence related to Commercialized Products, including,
without limitation, correspondence submitted to regulatory authorities with
jurisdiction over the Commercialized Products.
1.9 "Commercialized Product(s)" shall mean any preparation or
product including all formulations and mixtures, compositions or therapeutic
utilities thereof, for use in the diagnosis, prevention or treatment of any
clinical indication in humans, which is, or comprises a Compound, which is
conceived, discovered, invented or the utility of which is conceived,
discovered, reduced to practice or invented or developed in the Research Program
or the Drug Discovery and Development Program and which is commercialized by
BioChem or its Affiliates anywhere in the Territory.
1.10 "Compound Leads" shall mean any and all Compounds, including all
formulations, mixtures, compositions, or therapeutic utilities thereof
discovered by the Parties in the Research Program that the Joint Steering
Committee may so formally designate for further development by reason of belief
that such Compound Leads have demonstrated such properties of chemical
structure, potency, mechanism of action, selectivity and non-cytotoxicity as
deemed necessary by the Joint Steering Committee to warrant committing resources
to conduct chemical optimization studies with respect thereto.
1.11 "Compounds" shall mean any compounds delivered by BioChem to ATI
for use in, or used by BioChem or ATI in the Research Program, or otherwise
discovered by the Parties in carrying out the Research Program, including,
without limitation, Compound Leads and Commercialized Products, together with
any modifications, analogues, isolates, derivatives, improvements, uses, methods
of preparation or treatment relating thereto of each of the foregoing, whether
developed by BioChem or BioChem Affiliates or consultants or agents and provided
to ATI as Compounds, or by ATI as a result of its evaluation and analysis
hereunder.
1.12 "Dollars" shall mean U.S. Dollars.
1.13 "Drug Discovery and Development Program" shall have the meaning
set forth in Section 2.5.1.
1.14 "FDA" shall mean the United States Food and Drug Administration
or any replacement or successor entity thereto.
1.15 "Field" shall mean the diagnosis, treatment or prevention of
cancer in humans.
1.16 "Joint Steering Committee" shall have the meaning set forth in
Section 2.3.
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1.17 "License Agreement" shall mean the License Agreement of even
date executed between the Parties.
1.18 "Party" shall mean ATI or BioChem and when used in the plural,
shall mean ATI and BioChem.
1.19 "Patent Rights" shall mean the rights and interests in and to
issued patents and pending patent applications relating to ATI Screens,
Compounds, Compound Leads, Commercialized Products and/or Research Inventions
filed, or which claim priority from a patent application filed, in any country
at any time prior to the end of the first year following the termination of the
Research Program; including, but not limited to, ATI Patent Rights, BioChem
Patent Rights, all provisional applications, substitutions, continuations,
continuations-in-part, divisions, and renewals, all letters patent granted
thereon, patents-of-additions and all reissues, reexaminations and extensions
thereof, whether owned solely or jointly by a Party or jointly owned by the
Parties or licensed in by a Party with the right to sublicense to the other
Party.
1.20 "Person(s)" shall mean an individual, partnership, corporation,
business, trust, joint venture or other entity of a similar nature.
1.21 "Proprietary Information" shall mean all ATI Screens, ATI
Technology, BioChem Technology, and all other scientific, clinical, regulatory,
marketing, financial and commercial information or data, whether communicated in
writing or orally or by sensory detection, which is provided by one Party to the
other Party in connection with this Agreement.
1.22 "Research Inventions" shall have the meaning set forth in
Section 2.5.
1.23 "Research Program" shall mean the collaborative research program
to be conducted by ATI and BioChem pursuant to Article II of this Agreement to
discover Compound Leads, Commercialized Products and reflected in the Annual
Research Plans in effect during the Research Term.
1.24 "Research Term" shall have the meaning set forth in Section 2.8.
1.25 "Stock Purchase Agreement" shall mean the stock purchase
agreement of even date executed between ImmunoGen, BioChem Pharma
(International) Inc. and ATI.
1.26 "Targets" shall mean the elements of biological pathways upon
which ATI develop screens.
1.27 "Territory" shall mean all of the countries in the world,
including their respective territories and possessions.
1.28 "Valid Patent Claim" shall mean a claim of an issued and
unexpired patent included within the Patent Rights, which has not been revoked
or held unenforceable or invalid by a decision of a court or other governmental
agency of competent jurisdiction, unappealable or unappealed within the time
allowed for appeal, and which has not been disclaimed, denied or admitted to be
invalid or unenforceable through reissue, disclaimer or otherwise.
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ARTICLE II
RESEARCH PROGRAM
2.1 GENERAL. ATI and BioChem shall engage in the Research Program
upon the terms and conditions set forth in this Agreement. The objectives of the
Research Program shall be the discovery, characterization, and development of
Compound Leads, ATI Screens and Targets and Commercialized Products in the Field
according to the priorities established by the Joint Steering Committee. The
Research Program will be based on the "Collaborative Research Plan for BioChem
Therapeutic and Apoptosis Technology, Inc." dated April 14, 1997 and the "ATI
Research Plan Outline" which are attached to this Agreement as Schedule 2.1.
2.2 CONDUCT OF RESEARCH; STAFFING, RESEARCH PLANS AND EXCLUSIVITY
2.2.1 STANDARDS. ATI and BioChem each shall conduct its
respective activities for the Research Program in good scientific manner, and in
compliance in all material respects with all requirements of applicable laws,
rules and regulations to attempt to achieve their objectives efficiently and
expeditiously. In carrying out the Research Program, ATI and BioChem,
respectively, shall use commercially reasonable efforts to perform such tasks as
are set forth in and as are in accordance with the time schedules in the Annual
Research Plans. Scientists at ATI and BioChem shall cooperate in the performance
of the Research Program and, subject to any confidentiality obligations to third
Persons, shall exchange information and materials as necessary to carry out the
Research Program. Each Party will attempt to accommodate the reasonable requests
of the other Party to send or receive personnel for purposes of collaborating or
exchanging information under the Research Program. Such visits and/or access
will have defined purposes and will be scheduled in advance. The requesting
Party will bear the travel and lodging costs of any such personnel.
2.2.2 STAFFING. ATI will provide for use in the Research
Program a minimum of [*] full-time equivalent employees ("FTEs") of ATI per
Calendar Year during the term of the Research Program. The initial [*] FTEs
shall be those Persons identified on the document attached to this Agreement as
Schedule 2.2.2, who shall fill the positions set forth opposite their names on
such Schedule. Subject to Subsection 2.2.1, ATI shall have sole discretion in
naming replacements for such Persons throughout the Research Term, provided that
any such replacement shall have qualifications at least comparable to the Person
being replaced. The Joint Steering Committee will be responsible for reviewing
the FTE levels annually and can determine to increase or decrease the number of
FTEs assigned to the Research Program, provided that at no time during the
Initial Research Term, shall there be a decrease below [*] FTEs. In the event
that the number of FTEs assigned to the Research Program is more than [*],
BioChem (as defined in the Stock Purchase Agreement) will make an additional
equity investment in ATI, in a manner to be governed by the Stock Purchase
Agreement.
2.2.3 PRINCIPAL SCIENTISTS. The principal scientists and
primary contacts for the Research Program are Xx. Xxxxxx Xxxxxxxx for ATI and
Xx. Xxxxx Xxxxxx for BioChem. The Research Program and all work assignments to
be performed by ATI and BioChem shall be carried out under the direction and
supervision of the principal scientists noted above.
2.2.4 ANNUAL RESEARCH PLANS. For each year of the Research
Program commencing with the second year, the Annual Research Plan shall be
prepared and approved by the Joint Steering Committee no later than thirty (30)
days before the end of the prior year. The Annual Research Plan for the first
year shall be determined by the Joint Steering Committee no later than (30) days
after the
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Effective Date. Each Annual Research Plan shall be in writing countersigned by
ATI and BioChem and shall set forth with reasonable specificity research
objectives, milestones and budgetary (including personnel) requirements for the
period covered by the Annual Research Plan.
2.2.5 EXCLUSIVITY. ATI agrees that during the Research Term,
it will not collaborate with or grant license rights to any other Person in the
Field (or outside the Field for specific ATI Screens if BioChem exercises its
option under Subsection 2.1(b) of the License Agreement with respect to such ATI
Screens) and will not utilize any BioChem Technology for any purpose other than
(i) as provided for herein or in the License Agreement or (ii) otherwise for the
benefit of BioChem. BioChem agrees that during the Research Term, it will not
utilize any ATI Technology for any purpose other than (i) as provided for herein
or in the License Agreement or (ii) otherwise for the benefit of ATI.
2.2.6 COLLABORATIVE EFFORTS. The Parties agree that the
successful execution of the Research Program will require the collaborative use
of both Parties' areas of expertise. The Parties shall keep the Joint Steering
Committee and each other fully informed about the status of the Research
Program.
2.3 JOINT STEERING COMMITTEE. The Parties hereby establish a joint
steering committee ("Joint Steering Committee") to facilitate the Research
Program as follows:
2.3.1 JOINT STEERING COMMITTEE ACTIVITIES. The Joint Steering
Committee shall plan, administer and monitor the Research Program. The Joint
Steering Committee shall prepare each Annual Research Plan, review progress in
the Research Program and recommend necessary adjustments to the Research Program
as the research takes place. In particular, the activities of the Joint Steering
Committee shall include the selection of Compounds to move into high-throughput
screens and selection of candidates for secondary biological screening assays
for their specificity, ability to antagonize Bcl-2 and IGF-1R related proteins
and their potential therapeutic activity.
2.3.2 COMPOSITION OF THE JOINT STEERING COMMITTEE. The Joint
Steering Committee shall be comprised of three (3) named representatives of
BioChem and three (3) named representatives of ATI. Each Party shall appoint its
respective representatives to the Joint Steering Committee from time to time,
and may substitute one or more of its representatives, in its sole discretion,
effective upon notice to the other Party of such change; provided that the
substitute representative shall have experience, expertise and stature at least
comparable to the representative being replaced. Additional representatives or
consultants may from time to time, by mutual consent of the Parties, be invited
to attend Joint Steering Committee meetings, subject to these representatives
and consultants agreeing in writing to comply with the confidentiality
obligations in Article V hereof. The Joint Steering Committee may establish such
sub-committees as it may deem appropriate in connection with the Research
Program.
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2.3.3 MEMBERSHIP.
The members of the Joint Steering Committee initially shall be:
ATI Appointees:
[*]
BioChem Appointees:
[*]
2.3.4 MEETINGS. During the Research Term, the Joint Steering
Committee shall meet at least once each Calendar Quarter with the location for
such meetings alternating between ATI and BioChem facilities (or such other
locations as is determined by the Joint Steering Committee). With respect to
meetings located at the ATI facilities, such meetings shall be at the Cambridge,
Massachusetts facility. With respect to meetings located at the BioChem
facilities, such meetings shall be at the Laval, Quebec facility. The Joint
Steering Committee may meet by means of conference call or other similar
communications equipment, with the approval of all members of the Joint Steering
Committee. An agenda for each meeting shall be issued by the Joint Steering
Committee two (2) weeks prior to the meeting.
2.3.5 CHAIRS AND ISSUE RESOLUTION. The Joint Steering
Committee shall be chaired by a chairperson appointed by BioChem.
Notwithstanding anything contained herein to the contrary, in the event that the
Joint Steering Committee cannot, after good faith efforts, reach agreement on an
issue related to the conduct of the Research Program, the issue shall be
referred to the President of BioChem and the President of ATI for resolution. In
the event that such individuals cannot agree, the resolution and/or course of
conduct shall be determined by BioChem, in its sole discretion.
2.3.6 MINUTES. The Joint Steering Committee shall keep
accurate minutes of its deliberations which record all proposed decisions and
all actions recommended or taken. Drafts of the minutes shall be delivered to
all Joint Steering Committee members within thirty (30) days after the relevant
meeting. The Party hosting the meeting shall be responsible for the preparation
and circulation of the draft minutes. Draft minutes shall be issued in final
form only with the approval of both ATI and BioChem.
2.3.7 EXPENSES. ATI and BioChem shall each bear all expenses
of their respective Joint Steering Committee members related to their
participation on the Joint Steering Committee and attendance at Joint Steering
Committee meetings.
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2.4 DRUG DISCOVERY AND DEVELOPMENT PROGRAM.
2.4.1 BIOCHEM'S DUTIES. BioChem shall be primarily responsible
for screening Compounds to identify Compounds which may yield Compound Leads.
Once ATI or BioChem has identified a Compound discovered or developed by it (or
jointly by it and the other Party) in the Research Program as a Compound Lead,
or otherwise believes that such a Compound should be considered as a Compound
Lead, it shall notify the Joint Steering Committee in writing, and shall provide
to the Joint Steering Committee the data and information demonstrating that the
Compound satisfies the criteria for a Compound Lead or the data and information
on the basis of which such Party believes such Compound should be considered as
a Compound Lead. The Joint Steering Committee shall decide which Compounds will
be considered Compound Leads. BioChem is responsible for the development of
Compound Leads and conducting all chemical, pharmacological and clinical
research and development activities, including but not limited to product
formulation, stability, safety and efficacy evaluation and designing and
conducting clinical trial programs. Upon the identification of a Compound Lead,
BioChem shall commence the development of Commercialized Products based on
Compound Leads identified or discovered in the Research Program (the "Drug
Discovery and Development Program"). BioChem agrees to use commercially
reasonable efforts to pursue the Drug Discovery and Development Program and
commercialization of Commercialized Products in accordance with the provisions
hereof and of the License Agreement.
2.4.2 ATI DUTIES. ATI shall be primarily responsible for
developing ATI Screens and the development and discovery of Targets. ATI is also
primarily responsible for characterizing Compounds in secondary biological
screening assays and for developing additional screening assays based on the
identification of new Targets which have been selected by the Joint Steering
Committee.
2.4.3 THIRD PERSON CONTRACTS. The Parties acknowledge and
agree that BioChem shall have the right, at BioChem's sole discretion and
expense, to contract with its Affiliates and/or third Persons for the
performance of work, or the provision of consulting services, in connection with
the carrying out of its obligations under the Research Program and/or the Drug
Discovery and Development Program; provided that ATI shall have the right to
review, comment and approve any such proposed contract with third Persons
relating solely to the Research Program and to review and comment upon any such
proposed contract with third Persons relating solely to the Drug Discovery and
Development Program, in each case, prior to its execution. Approval of any such
contract with third Persons with respect to contracts relating to the Research
Program shall not be unreasonably withheld or delayed. Except as otherwise
provided for in Schedule 2.4.3 hereof with respect to agreements between ATI and
ATI's Affiliate ImmunoGen, Inc. ("ImmunoGen"), ATI shall not have the right to
contract with its Affiliates and/or third Persons for the performance of work,
or the provision of consulting services, in connection with the carrying out of
its obligations under the Research Program without the approval of the Joint
Steering Committee, which consent shall not be unreasonably withheld or delayed.
2.4.4 REPORTS. BioChem shall keep ATI fully informed about the
status of the Drug Discovery and Development Program for each Compound Lead
under development. In particular, without limitation, BioChem shall (a) report
to ATI no less frequently than semi-annually concerning the status of the Drug
Discovery and Development Program; and (b) provide such other reports and
information as to the Drug Discovery and Development Program as ATI may
reasonably request from time to time including summaries of clinical trials and
regulatory filings for Compound Leads and
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Commercialized Products, as the case may be. Unless ATI requests paper copies,
all such documents and reports will be provided electronically.
2.5 RESEARCH INFORMATION AND INVENTIONS. Subject to Section 9.1
hereof and Section 10.1 of the License Agreement, the entire right, title and
interest in all discoveries, improvements, processes, formulas, data,
inventions, know-how and trade secrets, whether or not patentable, and any
patent applications or patents based thereon, arising from the Research Program,
made, conceived or reduced to practice in the Research Program or Drug Discovery
and Development Program (collectively the "Research Inventions"):
(a) which are related to the ATI Screens and/or Targets shall be
owned solely by ATI ("ATI Inventions") and BioChem agrees to assign all of its
ownership rights to ATI Inventions, if any, to ATI; and
(b) which are related to Compounds shall be owned solely by BioChem
("BioChem Inventions"). ATI agrees to assign all of its ownership rights to
BioChem Inventions, if any, to BioChem.
Inventorship of Research Inventions (including the meanings of "solely"
and "jointly") shall be determined in accordance with United States patent law.
Each Party hereby represents and warrants to the other that it shall take the
appropriate measures to assure that it shall own any and all Research Inventions
invented by its employees, agents and consultants. The filing, prosecution, and
maintenance of patents relating to Research Inventions shall be carried out in
accordance with Article IV of the License Agreement.
2.6 LICENSE OF RESEARCH INVENTIONS. ATI and BioChem shall promptly
disclose to the other the making, conception or reduction to practice of
Research Inventions. When a Research Invention has been made which may
reasonably be considered to be patentable, a patent application shall be filed
as soon as reasonably possible in accordance with the provisions of Article IV
hereof. Such Research Inventions shall be deemed to be "Patent Rights" in
accordance with Section 1.19 hereof and shall be licensed in accordance with the
terms and conditions contained in the License Agreement, as the case may be.
With respect to Research Inventions which are not patentable, such research
information shall, be deemed to be "ATI Technology" and/or "BioChem Technology",
as the case may be, and shall be licensed in accordance with the terms and
conditions contained in the License Agreement.
2.7 EXCHANGE OF INFORMATION; ETC. ATI and BioChem shall promptly
disclose to each other orally on an ongoing basis all ATI Technology, or BioChem
Technology, as the case may be, and Proprietary Information and other useful
information not previously disclosed. If and as reasonably requested by either
Party, the other Party's Technology and Proprietary Information shall be reduced
to writing and provided to the Party requesting it within a reasonable period of
time. ATI shall advise and provide a reasonable description to BioChem of any
governmental visits to, or written or oral inquiries about, any facilities or
procedures related to the Research Program or Commercialized Products promptly
(if feasible, prior to a scheduled visit, but in no event later than five (5)
calendar days) after the beginning of such visit or inquiry. BioChem shall have
the right to participate in any communications, inspections or meetings with
regulatory authorities if such communications, inspections or inquiries may
impact the Research Program in the Territory as reasonably determined by ATI.
ATI shall furnish to BioChem, (a) within two (2) days after receipt, any report
or correspondence issued by the governmental authority in connection with such
visit or inquiry, including but not limited
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to any FDA Form 483, Establishment Inspection Reports, and warning letters, and
(b) five (5) days prior to delivery to a governmental authority, copies of any
and all responses or explanations relating to items set forth above, in each
case, subject to Article V.
2.8 RESEARCH TERM. Except as otherwise provided herein, the term of
the Research Program shall commence on the Effective Date and continue for a
period of three (3) years (the "Initial Research Term"). BioChem shall have the
exclusive option, in its discretion, to extend the Initial Research Term on a
year-by-year basis, initially by notice given at least ninety (90) days prior to
the third (3rd) anniversary of the commencement of the Research Program and,
thereafter, at least ninety (90) days prior to the scheduled end of the then
current Research Term; provided that BioChem (as defined in the Stock Purchase
Agreement) makes an additional equity financing for such extension of the
Research Program at a financing level equal to at least three million three
hundred seventy-five thousand Dollars ($3,375,000.00) per year, as governed by
the Stock Purchase Agreement. BioChem may exercise such option by written notice
to ATI received by ATI within the notice period set forth above. Should BioChem
not exercise its option as aforesaid in any given year, the Research Program
shall automatically terminate at the end of such year. The Research Program
shall otherwise terminate upon termination of this Agreement in accordance with
the provisions of Article VIII hereof. The Initial Research Term of the Research
Program, together with any extensions hereunder, shall be referred to as the
"Research Term."
ARTICLE III
RESEARCH FUNDING
3.1 RESEARCH PROGRAM FUNDING. Except as otherwise specifically
provided for herein, each Party shall be responsible for all costs and expenses
incurred by it, its employees, its Affiliates and its consultants in the
performance of its obligations under the Research Program, including, without
limitation, in respect of salaries of its employees, fees of consultants,
materials, equipment, administrative and travel costs of its employees,
employees of its Affiliates and consultants; provided that BioChem (as defined
in the Stock Purchase Agreement) shall perform its financing obligations
pursuant to the Stock Purchase Agreement.
ARTICLE IV
PROPRIETARY RIGHTS; ETC.
4.1 PROPRIETARY RIGHTS. Subject to the licenses and other rights
granted to ATI under the License Agreement; Compounds, BioChem Inventions and
BioChem Technology supplied or made available to ATI by BioChem and/or its
delegates during the term of this Agreement shall be the sole and exclusive
property of BioChem. Subject to the licenses and other rights (including
security interests in Collateral) granted to BioChem hereunder and under the
License Agreement, ATI Screens; ATI Inventions and ATI Technology supplied or
made available to BioChem by ATI and/or its delegates during the term of this
Agreement shall be the sole and exclusive property of ATI.
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ARTICLE V
CONFIDENTIALITY AND PUBLICATION
5.1 NONDISCLOSURE OBLIGATION.
ATI and BioChem shall use all Proprietary Information only in accordance
with this Agreement and, except as specifically provided for in Section 5.2,
shall not disclose to any third Person any Proprietary Information disclosed by
one Party to the other, without the prior written consent of the other Party.
The foregoing obligations shall survive the expiration or termination of this
Agreement until the relevant Information falls within one of the exceptions
listed in paragraphs (a) to (g) of this Section 5.1. These obligations shall not
apply to any Proprietary Information that:
(a) is known by the receiving Party at the time of its receipt, and
not through a prior disclosure by the disclosing Party, as documented by
business records;
(b) is at the time of disclosure or thereafter becomes published or
otherwise part of the public domain without breach of this Agreement by the
receiving Party;
(c) is subsequently disclosed to the receiving Party by a third
Person who has the right to make such disclosure;
(d) is developed by the receiving Party independently of Proprietary
Information or other information received from the disclosing Party and such
independent development can be properly demonstrated by the receiving Party;
(e) is disclosed to governmental or other regulatory agencies in
order to obtain patents or to gain approval to conduct clinical trials or to
market Commercialized Product, but such disclosure may be only to the extent
reasonably necessary to obtain such patents or authorizations and provided that
protectable trade secrets are redacted;
(f) is necessary to be disclosed to sublicensees, agents,
consultants, Affiliates and/or other third Persons for the research and
development, manufacturing and/or marketing of Commercialized Product (or for
such Persons to determine their interest in performing such activities) in
accordance with this Agreement on the condition that such third Persons agree to
be bound by the confidentiality obligations contained in this Agreement,
provided that the term of confidentiality for such third Persons shall be no
less than that provided herein; or
(g) is required to be disclosed by law or court order, provided that
notice is promptly delivered to the other Party in order to provide an
opportunity to seek a protective order or other similar order with respect to
such Proprietary Information and thereafter discloses only the minimum
information required to be disclosed in order to comply with the request,
whether or not a protective order or other similar order is obtained by the
other Party.
5.2 PERMITTED USES AND DISCLOSURES. Nothing in this Article V shall
restrict BioChem's right to transfer any of its rights hereunder in accordance
with the terms hereof or prohibit or restrict BioChem from disclosing
information hereunder for the purposes of filing an IND (as such term is defined
in the License Agreement), carrying out clinical trials or performing such other
acts as are necessary or commercially desirable in the course of seeking
governmental approvals of
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Commercialized Products under the License Agreement. Nothing in this Article V
shall restrict ATI's right to commercialize the ATI Screens for use outside the
Field in accordance with the provisions hereof. Each Party may use or disclose
confidential information disclosed to it by the other Party to the extent such
use or disclosure is reasonably necessary in prosecuting or defending
litigation, complying with applicable laws or otherwise submitting information
to tax or other governmental bodies, conducting clinical trials, or making a
permitted sublicense or transfer or otherwise exercising its rights hereunder or
under the License Agreement, provided that if a Party is required to make any
such disclosure of the other Party's Proprietary Information, other than
pursuant to a confidentiality agreement containing provisions substantially
similar to those contained in this Article V, it will give reasonable advance
notice to the latter Party of such disclosure and shall secure confidential
treatment of such information prior to its disclosure (whether through
protective orders or otherwise). Should either Party wish to use or disclose
Proprietary Information disclosed to it by the other Party in filing or
prosecuting patent applications, prior to so doing, such Party shall submit a
copy of any proposed application to the other Party. If filing such application
could jeopardize the Proprietary Information of the other Party, such other
Party shall have the right to oblige the filing Party to modify the application,
so as to protect the confidentiality of such information.
5.3 NO PUBLICITY. A Party may not use the name of the other Party in
any publicity or advertising and, except as provided in Section 5.4, may not
issue a press release or otherwise publicize or disclose any information related
to this Agreement or the terms or conditions hereof, without the prior written
consent of the other Party. The Parties shall agree on a form of initial press
release that may be used by either Party to describe this Agreement. Nothing in
the foregoing, however, shall prohibit a Party from making such disclosures to
the extent deemed necessary under applicable federal, state or provincial
securities laws or any rule or regulation of any nationally recognized
securities exchange; in such event, however, the disclosing Party shall use good
faith efforts to consult with the other Party prior to such disclosure and,
where applicable, shall request confidential treatment to the extent available.
5.4 PUBLICATION. During the term of the Research Program, BioChem
and ATI each acknowledge the other Party's interest in publishing its results to
obtain recognition within the scientific community and to advance the state of
scientific knowledge. Each Party also recognizes the mutual interest in
obtaining valid patent protection and in protecting business interests and trade
secret information. Consequently, either Party, its employees or consultants
wishing to make a publication covering information arising from the Research
Program, Drug Discovery and Development Program or in the Field shall deliver to
the other Party a copy of the proposed written publication or an outline of an
oral disclosure at least sixty (60) days prior to submission for publication or
presentation (the "Review Period"). If either Party reasonably determines that
the proposed disclosure would reveal a Research Invention or Proprietary
Information, then such Party shall notify the other of such determination and
its basis prior to the expiration of the Review Period. With respect to
disclosure of a Research Invention, both Parties agree not to submit the written
publication or presentation of the oral public disclosure, or otherwise disclose
the results of the Research Program in any manner that would compromise ATI's or
BioChem's ability to obtain valid Patent Rights covering such invention. Neither
Party shall disclose results of the Research Program and/or any Research
Invention until one of the following events occurs: (i) BioChem and ATI agree
that no patentable Research Invention or protectable trade secret exists; (ii)
BioChem or ATI files a patent application claiming the relevant Research
Invention pursuant to Section 4.2 and otherwise agree that no trade secret
information shall be jeopardized by such disclosure; or (iii) BioChem and ATI
jointly agree upon revisions that prevent disclosure of any Research Invention
and trade secret information. The foregoing notwithstanding, in
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the event that either of BioChem or ATI (hereinafter referred to as a "notifying
Party") notifies the other that a proposed publication of results of the
Research Program contains information which is of substantial commercial
importance to the notifying Party, the proposed publication shall be delayed by
the publishing Party (including any other form of public disclosure of such
information) for a period not to exceed eighteen (18) months from the filing
date of the first patent application covering the information contained in the
proposed publication. In the case of a proposed publication involving an
academic (i.e. University) collaborator, the aforementioned delay period shall
be decreased to a period reasonably acceptable to the Joint Steering Committee
and such collaborator, which period shall be no less than three (3) months. In
the event that the notifying Party notifies the other of evidence that an
independent third Person is preparing to publish, or otherwise publicly
disclose, essentially the same information as that contained in the proposed
publication which has been delayed, the notifying Party will seriously consider
a request by the publishing Party to allow such delayed publication to occur on
an expedited bases, provided that absent written approval from the notifying
Party no such expedited publication shall occur.
ARTICLE VI
REPRESENTATIONS AND WARRANTIES
6.1 REPRESENTATIONS AND WARRANTIES OF EACH PARTY. Each of ATI and
BioChem hereby represents, warrants and covenants to the other Party hereto as
follows:
(a) it is a corporation duly organized and validly existing under
the laws of the state or other jurisdiction of incorporation or formation;
(b) the execution, delivery and performance of this Agreement by
such Party has been duly authorized by all requisite corporate action, subject
only to receipt of requisite boards of directors' approvals;
(c) it has the right, power and authority to execute and deliver
this Agreement and to perform its obligations hereunder, including, without
limitation, the right, power and authority to grant the rights granted hereunder
and the licenses granted under Article II of the License Agreement;
(d) the execution, delivery and performance by such Party of this
Agreement and its compliance with the terms and provisions hereof does not and
will not conflict with or result in a breach of any of the terms and provisions
of or constitute a default under (i) a loan agreement, guaranty, financing
agreement, agreement affecting a product or other agreement or instrument
binding or affecting it or its property; (ii) the provisions of its charter
documents or bylaws; or (iii) any order, writ, injunction or decree of any court
or governmental authority entered against it or by which any of its property is
bound;
(e) except for the governmental and regulatory approvals required to
market the Commercialized Product in the Territory, the execution, delivery and
performance of this Agreement by such Party does not require the consent,
approval or authorization of, or notice, declaration, filing or registration
with, any governmental or regulatory authority and the execution, delivery or
performance of this Agreement will not violate any law, rule or regulation
applicable to such Party;
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(f) this Agreement has been duly authorized, executed and delivered
and constitutes such Party's legal, valid and binding obligation enforceable
against it in accordance with its terms;
(g) it shall comply with all applicable material laws and
regulations relating to its activities under this Agreement;
(h) neither Party has in effect and after the Effective Date neither
Party shall enter into any oral or written agreement or arrangement that would
be inconsistent with its obligations under this Agreement;
(i) in respect of ATI only, to the best of ATI's knowledge after due
inquiry, on the Effective Date, there is no outstanding claim or allegation that
the ATI Screens, ATI Patent Rights and/or ATI Technology infringe upon any
rights of a third Person nor any threatened claim or allegation that the ATI
Screens, ATI Patent Rights and/or ATI Technology infringe upon the rights of a
third Person; and Schedule 1.4 hereto is a true and complete list of all patents
and patent applications existing on the date of execution hereof with respect to
the ATI Screens, ATI Patent Rights and/or ATI Technology;
(j) in respect of BioChem only, to the best of BioChem's knowledge
after due inquiry, on the Effective Date, there is no outstanding claim or
allegation that the BioChem Technology infringes upon any rights of a third
Person nor any threatened claim or allegation that the BioChem Technology
infringes upon the rights of a third Person;
(k) in respect of ATI only, without limiting the generality of
Subsections 6.1(c) or (d), on the Effective Date, except as otherwise
specifically provided for herein, (i) ATI holds valid rights to the ATI Screens,
ATI Patent Rights and ATI Technology and has the full right, power and authority
to grant the rights granted to BioChem hereunder, free and clear of any
mortgage, lien, encumbrance or other third Person interest of any kind (subject
to Section 9.1 hereof and to Section 10.1 of the License Agreement) and (ii)
neither the ATI Screens, ATI Patent Rights nor ATI Technology is subject to any
restrictions, covenants, licenses, judicial or administrative orders of any kind
which detract in any material respect from the value of either or which would
interfere with the use thereof by BioChem as contemplated in this Agreement.
With respect to the ownership and licensing of any intellectual property rights
arising out of (i) the Research Agreement between Xxxxxx Xxxxxxxxx University
("TJU") and ATI dated December 14, 1994; (ii) the Option Agreement between TJU
and ATI dated May 1, 1997; and (iii) the Option Agreement between St. Louis
Medical Center ("SLMC") and ATI dated March 1, 1994, ATI has disclosed to
BioChem that ATI does not have the exclusive rights to such inventions or
intellectual property rights and that ATI has an exclusive option to negotiate a
royalty-bearing, exclusive license of each Invention under those Agreements.
[*].
(l) in respect of BioChem only, without limiting the generality of
Subsection 6.1(c) or (d), on the Effective Date, BioChem holds valid rights to
the BioChem Technology and has the full right, power and authority to grant the
rights granted to ATI hereunder, free and clear of any mortgage, lien,
encumbrance or other third Person interest of any kind, and except as
specifically provided for herein, the BioChem Technology is not subject to any
restrictions, covenants, licenses, judicial or administrative orders of any kind
which detract in any material respect from the value thereof or which would
interfere with the use thereof by ATI as contemplated in this Agreement.
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ARTICLE VII
INDEMNIFICATION AND LIMITATION ON LIABILITY
7.1 INDEMNIFICATION BY BIOCHEM. BioChem shall indemnify, defend and
hold harmless ATI and its Affiliates, and each of its and their respective
employees, officers, directors and agents (each, an "ATI Indemnified Party")
from and against any and all liability, loss, damage, cost, and expense
(including reasonable attorneys' fees), subject to the limitations in Sections
7.6 and 7.7 (collectively, a "Liability") which the ATI Indemnified Party may
incur, suffer or be required to pay resulting from or arising in connection with
(i) the breach or misstatement by BioChem of any of its obligations, covenants,
representations or warranties contained in this Agreement, (ii) any negligent
act or omission or willful misconduct of BioChem (or any Affiliate thereof) in
the performance of the Research Program or fulfillment of its obligations under
this Agreement or any strict liability claim based on the promotion, marketing
and sale of a Commercialized Product; or (iii) the successful enforcement by an
ATI Indemnified Party of its rights under this Section 7.1.
7.2 INDEMNIFICATION BY ATI. ATI shall indemnify, defend and hold
harmless BioChem and its Affiliates, and each of its and their respective
employees, officers, directors and agents (each, a "BioChem Indemnified Party")
from and against any Liability which the BioChem Indemnified Party may incur,
suffer or be required to pay resulting from or arising in connection with (i)
the breach or misstatement by ATI of any of its obligations, covenants,
representations or warranties contained in this Agreement; (ii) any negligent
act or omission or willful misconduct of ATI (or any Affiliate thereof) in the
performance of the Research Program or fulfillment of its obligations under this
Agreement; or (iii) the successful enforcement by a BioChem Indemnified Party of
its rights under this Section 7.2.
7.3 CONDITIONS TO INDEMNIFICATION. The obligations of the
indemnifying Party under Sections 7.1 and 7.2 are conditioned upon the delivery
of written notice to the indemnifying Party of any potential Liability provided
however, that the indemnifying Party shall not be released from any obligation
unless it is substantially damaged by the delay.
7.4 SETTLEMENTS. Neither Party may settle a claim or action related
to a Liability without the consent of the other Party, if such settlement would
impose any monetary obligation on the other Party or require the other Party to
submit to an injunction or otherwise limit the other Party's rights under this
Agreement. Any payment made by a Party to settle any such claim or action shall
be at its own cost and expense.
7.5 THIRD PERSON INDEMNIFICATION PROCEDURES. A Party (the
"indemnitee") which intends to claim indemnification under this Article VII
shall promptly notify the other Party (the "indemnitor") in writing of the
Liability with respect to which the claim of indemnification relates. The
indemnitee shall permit, and shall cause its employees and agents to permit, the
indemnitor, at its discretion, to settle any such Liability, the defense and
settlement of which shall be under the complete control of the indemnitor;
provided, however, that such settlement shall not adversely affect the
indemnitee's rights hereunder or impose any obligations on the indemnitee in
addition to those set forth herein in order for it to exercise those rights. No
such Liability shall be settled without the prior written consent of the
indemnitor and the indemnitor shall not be responsible for any legal fees or
other costs incurred other than as provided herein. The indemnitee, its
employees and agents shall co-operate fully with the indemnitor and its legal
representatives in the investigation and defense of any Liability covered by
this indemnification. The indemnitee shall have the right, but not the
obligation, to be represented by counsel of its own selection and expense.
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7.6 EXCEPTION. No indemnification shall be made to a Party to the
extent any Liability arises out of, results from or involves (i) the breach or
misstatement by such Party of its obligations, covenants, representations or
warranties under this Agreement (including the Schedules hereto) or (ii) the
negligence or willful misconduct of such Party.
7.7 LIMITATION OF LIABILITY. WITH RESPECT TO ANY CLAIM BY ONE PARTY
AGAINST THE OTHER FOR INDEMNIFICATION, THE PARTIES EXPRESSLY AGREE THAT THE
LIABILITY OF SUCH PARTY TO THE OTHER PARTY SHALL BE LIMITED UNDER THIS AGREEMENT
OR OTHERWISE AT LAW OR EQUITY TO DIRECT DAMAGES ONLY AND IN NO EVENT SHALL A
PARTY BE LIABLE FOR LOST PROFITS, COVER DAMAGES, PUNITIVE, EXEMPLARY OR
CONSEQUENTIAL DAMAGES.
7.8 DISCLAIMER OF WARRANTIES. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED
IN THIS AGREEMENT, NEITHER PARTY MAKES ANY WARRANTY EXPRESS OR IMPLIED WITH
RESPECT TO ANY TECHNOLOGY, PRODUCTS, GOODS, SERVICES, RIGHTS OR OTHER SUBJECT
MATTER OF THIS AGREEMENT AND OTHER THAN AS PROVIDED FOR IN SECTIONS 2.5 AND 6.1,
EACH PARTY HEREBY DISCLAIMS ALL WARRANTIES INCLUDING, WITHOUT LIMITATION,
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE VIII
TERM AND TERMINATION
8.1 TERM AND EXPIRATION. This Agreement shall be effective as of the
Effective Date and, unless terminated earlier pursuant to Sections 8.2 or 8.3
below, shall continue in effect until the end of the Research Term. Upon
termination of this Agreement otherwise than in accordance with Sections 8.2 or
Section 8.3, the licenses granted pursuant to Sections 2.1 and 2.3 of the
License Agreement shall become fully paid-up, irrevocable, worldwide, perpetual
licenses.
8.2 TERMINATION ON NOTICE BY BIOCHEM. Notwithstanding anything
contained herein to the contrary, BioChem shall have the right to unilaterally
terminate this Agreement after the third (3rd) anniversary hereof, with or
without cause, at any time by giving ninety (90) days' advance written notice to
ATI. Upon termination of this Agreement under this Section 8.2, BioChem shall
have the right to continue to develop and commercialize Commercialized Products
and the development of Compound Leads, subject to the obligation to pay
milestones and royalties due pursuant to the License Agreement. Subject to the
immediately preceding sentence, upon termination of this Agreement pursuant to
this Section 8.2, BioChem shall have no continuing right whatsoever with respect
to ATI Technology and ATI Screens for any purpose either in the Field or outside
the Field. Upon the date of termination of this Agreement under this Section
8.2, BioChem shall immediately transfer to ATI all documents, instruments,
records and ATI Technology in its possession with respect to the ATI Screens.
8.3 TERMINATION FOR CAUSE. This Agreement may be terminated by
notice by either Party at any time during the term of this Agreement:
(a) (i) with respect to obligations other than payment obligations,
if the other Party (or its relevant Affiliate, as the case may be) is in breach
of its material obligations hereunder or under the
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License Agreement or the Stock Purchase Agreement and has not cured or taken
steps to substantially cure such breach within ninety (90) days (or such shorter
time period as may apply under the relevant provision of the License Agreement
or the Stock Purchase Agreement) after notice of the breach with reasonable
detail of the particulars of the alleged breach, (ii) with respect to payment
obligations due and owing, if the breaching Party has not cured or taken steps
to substantially cure such breach (such as the mailing of the check therefore)
within fifteen (15) days (or such shorter time period as may apply under the
relevant provision of the License Agreement or the Stock Purchase Agreement)
after notice of the particulars of the alleged breach, and/or (iii) if a
condition to a Subsequent Closing has not been satisfied under the Stock
Purchase Agreement, such that BioChem (as defined in the Stock Purchase
Agreement) has the right to terminate such agreement; or
(b) upon the filing or institution of bankruptcy, reorganization,
liquidation or receivership proceedings, or upon an assignment of a substantial
portion of the assets for the benefit of creditors by the other Party, or in the
event a receiver or custodian is appointed for such Party's business or if a
substantial portion of such Party's business is subject to attachment or similar
process; provided, however, in the case of any involuntary bankruptcy proceeding
such right to terminate shall only become effective if the Party consents to the
involuntary bankruptcy or such proceeding is not dismissed within sixty (60)
days after the filing thereof.
8.4 CHANGE OF CONTROL. BioChem shall have the right, exercisable
immediately and at its sole discretion, to terminate this Agreement should ATI
undergo a change in control (as such term is defined in Section 1.1 hereof). In
the event BioChem terminates this Agreement because of a change of control of
ATI (whether before or after the end of the Research Term), (i) BioChem shall
continue to have access to the ATI Screens, ATI Inventions, ATI Patent Rights
and ATI Technology in accordance with the provisions of Article II of the
License Agreement for the remainder of the Research Term (i.e. for the period of
time between the early termination date of the Research Program and the
scheduled end of the Research Term, had such termination for change of control
not occurred); and (ii) the licenses for commercial purposes granted to BioChem
under Article II of the License Agreement shall otherwise continue, such that
BioChem shall have the right to continue to develop and commercialize
Commercialized Products and to develop Compound Leads; subject to the obligation
to pay royalties and milestones due under the License Agreement.
8.5 EFFECT OF TERMINATION. Except as otherwise set forth herein, in
the event of termination, the rights and obligations of both Parties shall
terminate. Expiration or termination of the Agreement shall not relieve the
Parties of any obligation accrued or accruing prior to such expiration or
termination, and the provisions of Articles V, VII, and VIII and of Sections
9.1, 9.3, 9.4 and 9.5 shall survive the expiration or termination of the
Agreement. Any expiration or early termination of this Agreement shall be
without prejudice to the rights of either Party against the other accrued or
accruing under this Agreement prior to expiration or termination.
ARTICLE IX
MISCELLANEOUS
9.1 GRANT OF SECURITY INTEREST. ATI hereby assigns and transfers to
BioChem, and hereby grants to BioChem, a security interest in ATI Screens, ATI
Inventions, ATI Technology and ATI Patent Rights now owned or at any time
hereafter acquired by ATI or in which ATI now has or at any time in the future
may acquire any right, title or interest (collectively, the "Collateral"), and
any proceeds and products of such Collateral as collateral security for the
prompt and complete
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performance when due of ATI's obligations under this Agreement. BioChem shall
have the right to satisfy any and all claims for breach of this Agreement out of
the Collateral; and BioChem shall have the rights of a secured creditor under
applicable law, including the Uniform Commercial Code.
9.2 ASSIGNMENT. Except as otherwise specifically provided for
herein, neither this Agreement nor any or all of the rights and obligations of a
Party hereunder shall be assigned, delegated, sold, transferred, or otherwise
disposed of, by operation of law or otherwise, without the prior written consent
of the other Party, and any attempted assignment, delegation, sale, transfer, or
other disposition, by operation of law or otherwise, of this Agreement or of any
rights or obligations hereunder contrary to this Section 9.2 shall be void and
without force or effect; provided, however, that BioChem may, without the
consent of ATI, assign this Agreement and its rights and obligations hereunder
to an Affiliate or in connection with the transfer or sale of all or
substantially all of its assets related to the division or the subject business
relating hereto, or in the event of a change in control of BioChem. This
Agreement shall be binding upon and inure to the benefit of each Party, its
Affiliates, and its permitted successors and assigns. Nothing in this Section
9.2 shall be construed to restrict (i) BioChem's right to sublicense referred to
in Article II of the License Agreement; or (ii) BioChem's right to engage third
Persons or Affiliates under Subsection 2.4.3 hereof. Each Party shall be
responsible for the compliance by its Affiliates with the terms and conditions
of this Agreement.
9.3 GOVERNING LAW. Except for disputes between the Parties relating
to the ownership and enforcement of Patent Rights under Article IV of the
License Agreement which will be governed by Federal law and brought in the
Federal District Court of Massachusetts, this Agreement shall be governed by and
construed in accordance with the laws of the Commonwealth of Massachusetts
without regard to the conflict of laws provisions thereof and will be subject to
the arbitration procedures set forth herein.
9.4 ARBITRATION. The Parties shall mutually consult in good faith in
an attempt to settle amicably in the spirit of co-operation any and all disputes
arising out of or in connection with this Agreement or questions regarding the
interpretation of the provisions hereof. Subject to Subsection 2.3.5, each
dispute arising out of or in connection with this Agreement or question
regarding the interpretation hereof which cannot be settled amicably within two
(2) months from the date of notification of either Party to the other of such
dispute or question, which notice shall specify the details of such dispute or
question, shall be finally settled by binding arbitration, in English, in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association, by one (1) arbitrator appointed in accordance with such Rules. If
the Parties cannot agree on the arbitrator to be so appointed, each Party shall
be entitled to appoint one (1) arbitrator and the two (2) arbitrators so
appointed shall agree upon a third. The arbitrator(s) shall have the technical
expertise required to understand and arbitrate the dispute. Such arbitration
shall be held in Laval, Quebec if initiated by ATI and in Cambridge,
Massachusetts if initiated by BioChem. The costs of any arbitration, including
administrative and arbitrators' fees, shall be shared equally by the Parties and
each Party shall bear its own costs and attorneys' and witness' fees provided,
however, that the prevailing Party, if determined by the arbitrator(s), shall be
entitled to an award against the other Party in the amount of the prevailing
Party's costs (including arbitration costs) and reasonable attorney's fees. The
arbitration carried out hereunder shall apply to the exclusion of regular legal
means, provided that the rights of the Parties in urgent situations in which
time is of the essence to obtain proper remedies in courts of law or equity
shall remain unimpaired. There shall be no appeal from the decision or findings
of the arbitrator(s), which shall be final and binding upon the Parties and may
be entered in any court having proper jurisdiction.
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9.5 PROHIBITION ON HIRING. Neither Party nor its Affiliates shall,
during the period commencing with the Effective Date and ending five (5) years
after the Research Term, hire any Person employed by the other Party or its
Affiliates during such period, whether such Person is hired as an employee,
investigator, independent contractor or otherwise, without the express written
consent of the other Party. However, the prohibition on hiring in this Section
9.5 shall no longer apply if ATI and/or ImmunoGen files for bankruptcy
protection as described in Subsection 8.3(b) hereof.
9.6 WAIVER. Any delay or failure in enforcing a Party's rights under
this Agreement or any waiver as to a particular default or other matter shall
not constitute a waiver of such Party's rights to the future enforcement of its
rights under this Agreement, nor operate to bar the exercise or enforcement
thereof at any time or times thereafter, excepting only as to an express written
and signed waiver as to a particular matter for a particular period of time.
9.7 INDEPENDENT RELATIONSHIP. Nothing herein contained shall be
deemed to create an employment, agency, joint venture or partnership
relationship between the Parties hereto or any of their agents or employees, or
any other legal arrangement that would impose liability upon one Party for the
act or failure to act of the other Party. Neither Party shall have any power to
enter into any contracts or commitments or to incur any liabilities in the name
of, or on behalf of, the other Party, or to bind the other Party in any respect
whatsoever.
9.8 EXPORT CONTROL. BioChem agrees that it will not export, directly
or indirectly, any technical information acquired from ATI under this Agreement
to any country for which the United States government or any agency thereof at
the time of export requires an export license or other governmental approval,
without first obtaining the written consent to do so from the Department of
Commerce or other agency of the United States government when required by an
applicable statute or regulation.
9.9 ENTIRE AGREEMENT; AMENDMENT. This Agreement, including the
Schedules hereto and the License Agreement and Stock Purchase Agreement, sets
forth the complete, final and exclusive agreement and all the covenants,
promises, agreements, warranties, representations, conditions and understandings
between the Parties hereto and supersedes and terminates all prior agreements,
writings and understandings between the Parties. However, the Confidentiality
obligations contained in the Non-Disclosure Agreement between the Parties dated
January 27, 1997 shall survive the termination of this Agreement for all
confidential information (as defined in the Non-Disclosure Agreement) disclosed
by either Party prior to the Effective Date of this Agreement. There are no
covenants, promises, agreements, warranties, representations, conditions or
understandings, either oral or written, between the Parties other than as are
set forth herein and therein. No terms or provisions of this Agreement shall be
varied or modified and no subsequent alteration, amendment, change or addition
to this Agreement shall be binding upon the Parties unless reduced to writing
and signed by an authorized officer of each Party.
9.10 NOTICES. Each notice required or permitted to be given or sent
under this Agreement shall be given by facsimile transmission (with confirmation
copy by registered first-class mail) or by registered or overnight courier
(return receipt requested), to the Parties at the addresses and facsimile
numbers indicated below.
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If to ATI, to:
Apoptosis Technology, Inc.
000 Xxxxxxxxxx Xxxxxxx
Xxxxxxx, XX 00000
Attn: Xxxxx Xxxxxx, President
Facsimile: (000) 000-0000
with copies to:
Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxx
Facsimile: (000) 000-0000
If to BioChem, to:
BioChem Therapeutic Inc.
000 Xxxxxx-Xxxxxxxx Xxxxxxxxx
Xxxxx, Xxxxxx, Xxxxxx
Attn: President
Facsimile: (000) 000-0000
with copies to:
BioChem Pharma Inc.
000 Xxxxxx-Xxxxxxxx Xxxxxxxxx
Xxxxx, Xxxxxx, Xxxxxx
Attn: Xxxxxxx Xxxxxxx, Vice President, Legal Affairs
Facsimile: (000) 000-0000
Any such notice shall be deemed to have been received on the earlier of the date
actually received or the date five (5) days after the same was posted or sent.
Either Party may change its address or its facsimile number by giving the other
Party written notice, delivered in accordance with this Section.
9.11 FORCE MAJEURE. Failure of any Party to perform its obligations
under this Agreement (except the obligation to make payments when properly due)
shall not subject such Party to any liability or place it in breach of any term
or condition of this Agreement to the other Party if such failure is caused by
any cause beyond the reasonable control of such non-performing Party, including
without limitation acts of God, fire, explosion, flood, drought, war, riot,
sabotage, embargo, strikes or other labor trouble, failure in whole or in part
of suppliers to deliver on schedule materials, equipment or machinery,
interruption of or delay in transportation, a national health emergency or
compliance with any order or regulation of any government entity acting with
color of right; provided however, that the Party affected shall promptly notify
the other Party for the condition constituting force majeure as defined herein
and shall exert reasonable efforts to eliminate, cure and overcome any such
causes and to resume performance of its obligations with all possible speed. If
a condition constituting force majeure as defined herein exists for more than
ninety (90) consecutive days, the Parties shall meet to negotiate a mutually
satisfactory solution to the problem, if practicable.
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9.12 SEVERABILITY. If any provision of this Agreement is declared
invalid or unenforceable by a court having competent jurisdiction, it is
mutually agreed that this Agreement shall endure except for the part declared
invalid or unenforceable by order of such court; provided, however, that in the
event that the terms and conditions of this Agreement are materially altered the
Parties will, in good faith, renegotiate the terms and conditions of this
Agreement to reasonably substitute such invalid or unenforceable provision in
light of the intent of this Agreement.
9.13 RECORDING. Each Party shall have the right, at any time, to
record, register, or otherwise notify this Agreement in appropriate governmental
or regulatory offices anywhere in the Territory, and ATI or BioChem, as the case
may be, shall provide reasonable assistance to the other in effecting such
recording, registering or notifying.
9.14 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further instruments and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement. Without limiting the generality of the foregoing, in case at any time
after the Initial Closing (as such term is defined in the Stock Purchase
Agreement), any further action is necessary or desirable to carry out the
purposes of this Agreement (including the execution by ATI and filing with the
appropriate governmental entity of statements (and any renewals or amendments
thereto) acknowledging, evidencing and/or perfecting the security interest of
BioChem in the Collateral), ATI and BioChem will take such further action as the
other Party may request, all at the sole cost and expense of the requesting
Party (unless the requesting Party is entitled to indemnification therefor under
Article VII hereof.)
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9.15 COUNTERPARTS. This Agreement shall become binding when any one
or more counterparts hereof, individually or taken together, shall bear the
signatures of each of the Parties hereto. This Agreement may be executed in any
number of counterparts, each of which shall be an original as against either
Party whose signature appears thereon, but all of which taken together shall
constitute but one and the same instrument.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
date first set forth above.
APOPTOSIS TECHNOLOGY, INC. BIOCHEM THERAPEUTIC INC.
By: ____________________________ By: _______________________________
Title: _________________________ Title: ____________________________
By: _______________________________
Title: ____________________________
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SCHEDULE 1.4
TO THE RESEARCH COLLABORATION AGREEMENT
DATED THIS JULY 31, 1997
BETWEEN
BIOCHEM THERAPEUTIC INC. ("BIOCHEM") AND APOPTOSIS TECHNOLOGY, INC. ("ATI")
ATI PATENT RIGHTS
July 22, 1997
SCHEDULE 1.4
ATI Patent Portfolio
Bcl-2 and IGF-IR Projects
U.S. Patent Application
Application No. Filing Date Title and Description
08/408,095 March 21, 1995 [*]
08/321,071 October 11, 1994 [*]
Allowed
(6/5/96)
08/440,391 May 12, 1995 [*]
08/625,819 April 1, 1996 [*[
08/652,245 May 23, 1996 [*]
08/632,514 May 29, 1996 [*]
Corresponding Foreign Patent Applications
Application No. Filing Date Title and Description
PCT/US95/10103 Aug. 9, 1995 [*]
PCT/US96/06122 May 6, 1996 [*]
PCT/US97/06087 Apr. 1, 1997 [*]
PCT/US97/09194 May 29, 1997 [*]
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[SEE ATTACHED LIST.]SCHEDULE 2.1
TO THE RESEARCH COLLABORATION AGREEMENT
DATED THIS JULY 31, 1997
BETWEEN
BIOCHEM THERAPEUTIC INC. ("BIOCHEM") AND APOPTOSIS TECHNOLOGY, INC. ("ATI")
COLLABORATIVE RESEARCH PLAN & ATI RESEARCH PLAN OUTLINE
SCHEDULE 2.1
Collaborative Research Plan for BioChem Therapeutic and Apoptosis
Technology, Inc.
14 April, 1997
Apoptosis is a defined genetic and biochemical machinery that regulates
apoptosis, leading to enhanced levels of cell survival. This proposal outlines
strategies for developing novel therapeutics for cancer that will selectively
induce apoptosis of tumor cells. The collaboration will focus on two biochemical
pathways altered in tumor cells; the Bel-2 family and insulin-like growth
factor-I receptor. ATI scientists have identified and validated BH3 domains of
Bel-2 homologues as initial targets. They will identify and validate additional
targets and work with BioChem scientists to develop biochemical screens for drug
discovery. Primary screening will be performed at BioChem, and secondary assays
will be performed at ATI. Medicinal and combinatorial chemistry, molecular
modeling, in vivo lead evaluation, pharmacology and toxicology will be performed
at BioChem. This collaboration is established to provide a competitive research
program for developing important new therapeutics targeting defective apoptotic
pathways in solid tumors.
Summary of projected milestones
BCL-2 PROJECT
[*]
IGF-IR PROJECT
[*]
Apoptosis Technology Research Plan (summary)
[* 2 pages]
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SCHEDULE 2.2.2
TO THE RESEARCH COLLABORATION AGREEMENT
DATED THIS JULY 31, 1997
BETWEEN
BIOCHEM THERAPEUTIC INC. ("BIOCHEM") AND APOPTOSIS TECHNOLOGY, INC. ("ATI")
FTE'S
BH3/BCL-2 FAMILY PROJECT
[*]
IGF-1 RECEPTOR PROJECT
[*]
Summary: [*]
25
26
SCHEDULE 2.4.3
TO THE RESEARCH COLLABORATION AGREEMENT
DATED THIS JULY 31, 1997
BETWEEN
BIOCHEM THERAPEUTIC INC. ("BIOCHEM") AND APOPTOSIS TECHNOLOGY, INC. ("ATI")
AGREEMENTS BETWEEN ATI AND IMMUNOGEN
[SEE ATTACHED LIST.]
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SCHEDULE 6.1(k)
TO THE RESEARCH COLLABORATION AGREEMENT
DATED THIS JULY 31, 1997
BETWEEN
BIOCHEM THERAPEUTIC INC. ("BIOCHEM") AND APOPTOSIS TECHNOLOGY, INC. ("ATI")
FORM OF LETTER AGREEMENT
[* one page]
