***Biogen, Inc. has omitted from this Exhibit 10.1.1 portions of the
Agreement for which Biogen, 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 X's in brackets and
such confidential portions have been filed separately with the Securities and
Exchange Commission.***
AGREEMENT AND AMENDMENT
This Agreement and Amendment (this "Biogen Amendment") is made as of
this lst day of May, 1998, by and between Biogen, Inc., a corporation organized
under the laws of the Commonwealth of Massachusetts and having its principal
place of business at 00 Xxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000
("Biogen"), and Schering Corporation, a corporation organized under the laws of
the State of New Jersey and having its principal place of business at 0000
Xxxxxxxxx Xxxx Xxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000 ("Schering").
WITNESSETH:
WHEREAS, Schering and Biogen, as successor to Biogen N.V., a
corporation organized under the laws of the Netherlands Antilles, are parties to
an Exclusive License and Development Agreement, dated December 8, 1979, relating
to human recombinant leukocyte interferon (such agreement, as amended to date by
the Prior Amendments as defined below, the "Biogen-Schering Agreement"); and
WHEREAS, certain patent rights owned or controlled by Schering and
Biogen, on the one hand, and by Xxxxxxxx-Xx Xxxxx, Inc. ("Roche") and Genentech,
Inc. ("Genentech"), on the other hand, covering the use, manufacture and sale of
the respective interferon alpha products of Schering and Roche have been in
dispute as among Biogen, Schering, Roche and Genentech and have been the subject
of an interference proceeding before -the Board of Patent Appeals and
Interferences of the United States Patent and Trademark Office ("USPTO"),
entitled Xxxxx X. Xxxxxxx and Xxxxxx Xxxxxx v. Xxxxxxx Xxxxxxxxx, Interference
No. 101,601 (the "Interference"), which awarded priority to the Goeddel and
Xxxxxx Application (the "Roche/Genentech Patent Application") over the Xxxxxxxxx
Application in the Interference. This Interference decision has been appealed
('Interference Appeal") to the United States District Court for the District of
Massachusetts (the "Court"); and
WHEREAS, all the parties wish to avoid the risk and expense attendant
upon further litigation and to settle all claims which have been brought in the
Interference Appeal, and in order to accomplish these objectives, the parties
wish to enter into a settlement agreement as of the same date hereof which
specifies the terms and conditions agreed to by the parties to resolve the
Interference Appeal (the "Settlement Agreement"); and
WHEREAS, in connection with the Settlement Agreement, Schering, Biogen,
Genentech and Roche (where applicable) have agreed to execute this Biogen
Amendment and the Fourth Amendment to that certain agreement dated May 14, 1985
by and between Schering and Roche relating to recombinant human leukocyte
interferon (such agreement, as amended by prior amendments thereto, dated May
14, 1985, August 27, 1986, and October 9, 1986, the "Roche-Schering Agreement")
(the "Fourth Amendment," and the Biogen Amendment and the Fourth Amendment
together, the "Amendments"); and
WHEREAS, Schering and Biogen agree to the assignment of the Xxxxxxxxx
Application to Schering upon the receipt of all required governmental consents
and approvals and the observance of all applicable waiting periods under the
Xxxx-Xxxxx-Xxxxxx Antitrust Improvements Act ("HSR Act") in connection with the
Biogen Amendment, the Fourth Amendment and the Settlement Agreement (the
"Governmental Approvals"); and
WHEREAS, Schering recognizes that (i) royalty payments might have been
due to Biogen under the Biogen Agreement if the Xxxxxxxxx Application prevailed
and (ii) the payments to be made hereunder are made in consideration of the
assignment to Schering of the Xxxxxxxxx Application and the grant to Schering of
the rights set forth in Section 3.2.
NOW, THEREFORE, in consideration of the mutual covenants and agreements
contained herein, the parties hereto, intending to be legally bound, do hereby
agree as follows:
1. Definitions.
1.1. All capitalized terms used herein and not otherwise defined shall
have the respective earnings set forth in the Biogen-Schering Agreement.
1.2. "Additional Patent Rights" shall mean any United States patents that shall
issue to Biogen from the following patent applications or any divisional,
continuation, continuation-in-part, continuing prosecution application, reissue,
renewal or extension thereof or substitute therefor:[xxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxx]; however, X.X. Xxxxxx Xx. 000, 00 0, filed March 3, 1983 is excluded from
this definition.
1.3. "Biogen Patent" shall mean U.S. Patent No. 4,530,901 entitled
"Recombinant DNA Molecules and
Their Use in Producing Interferon-Like Polypeptides," issued on July 23, 1985.
1.4. "Prior Amendments" shall mean the amendments and supplements to
the Exclusive icense and Development Agreement dated as of December 8, 1979, by
and between Biogen, Biogen .V., and Biogen N.V. and Schering, executed prior to
the date hereof, including without limitation the following: (i) Supplemental
Agreement, dated as of March 11, 1983, by and between Biogen N.V., Biogen B.V.
and Schering; (ii) Amendatory Agreement, dated as of May 14, 1985, by and
between Biogen B.V. and Schering; (iii) Amendment and Settlement Agreement,
dated as of September 29, 1988 by and between Biogen, Biogen B.V. and Schering;
(iv) Amendment, dated as of March 20, 1989 by and between Biogen B.V. and
Schering; (v) Amendment, dated as of March 23, 1992, by and between Biogen and
Schering; and (vi) Supplemental Amendment and Agreement, dated as of March 1,
1994, by and between Schering and Biogen.
1.5. "Roche Patent Rights" shall mean any United States patents that
shall issue from patent applications owned or controlled by Roche
individually or jointly with Genentech, that were the subject of the
Interference, including, but not limited to,[xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxx] or from any divisional, continuation, continuation-in-part,
continuing prosecution application, reissue or extension thereof or substitute
therefor.
1.6. "Royalty Termination Date" shall mean (as applicable):
a) with respect to Additional Patent Rights for any given Licensed
Product or Licensed Combination Product, the last to expire of any issued
Additional Patent Rights which has a claim that covers the manufacture, use,
offer to sell, sale, export or import of such Licensed Product or Licensed
Combinations Product (both as defined in the Biogen-Schering Agreement); or
b) with respect to the Roche Patent Rights, for any given Licensed
SCHERING Product the last to expire of any issued Roche Patent Rights which has
a claim that covers the manufacture, use, sale, offer to sell, export or import
of such Licensed SCHERING Products, as defined by the Roche-Schering Agreement,
as amended by the Fourth Amendment.
1.7. "Xxxxxxxxx Application" shall mean U.S. Serial No. 471,301
filed March 2, 1983.
2. Roche Patent Rights. Biogen hereby acknowledges that Schering is
entering into the Fourth Amendment with Roche under
which Roche has agreed to grant Schering an exclusive (even as to Roche),
non-transferable license and an immunity from suit under the Roche and
Roche/Genentech Patent Rights for use solely within the United States to
manufacture, have manufactured, import, export, use, offer to sell, and sell
Licensed SCHERING Products (as such terms are defined by the Roche-Schering
Agreement, as amended by the Fourth Amendment). Biogen also acknowledges that,
for consideration granted herein, it retains no right, title or interest in the
rights granted to Schering by Roche in the Roche-Schering Agreement, as amended
by the Fourth Amendment.
3. Assignment of Xxxxxxxxx Application.
3.l. Biogen hereby agrees to assign, transfer and convey to Schering
all of its right, title and interest in and to the Xxxxxxxxx Application by
executing and delivering, within ten (10) days of the last to occur of the
Governmental Approvals, an Assignment of Patent Rights substantially in the form
of Exhibit A attached hereto (the "Patent Assignment"). Biogen further covenants
and agrees that it will from time to time, if requested by Schering, execute,
acknowledge and deliver such additional documents and instruments as may be
reasonably necessary to effectuate the foregoing assignment.
3.2. Biogen also agrees that it will assign to Schering, as assignee of
the Xxxxxxxxx Application, contemporaneously with the assignment of the
Xxxxxxxxx Application, the right (i) to contest or consent to the decision of
the Board of Patent Appeals and Interferences of the USPTO rendered on December
15, 1995 in the Interference and (ii) to take such actions as Schering in its
sole discretion may determine in order to carry on or to conclude the
Interference and the Interference Appeal.
3.3. If, for any reason, the Court does not approve, or withdraws its
approval of, the Settlement Agreement, or the Settlement Agreement is declared
null and void ab initio after the assignments contemplated in paragraphs 3.1 and
3.2 herein occur, then such assignments shall be deemed null and void ab initio
and have no further force and effect and Schering shall execute, acknowledge and
deliver such documents and instruments as may be reasonably necessary to
effectuate the reassignment to Biogen of all rights assigned pursuant to
Sections 3.1 and 3.2 herein.
4. Covenants of Schering.
4.1. Schering hereby covenants and agrees that it shall (i) seek to
enforce in a commercially reasonable matter Article 11 of the Fourth Amendment;
(ii) keep Biogen informed in
a reasonably prompt manner of all substantive actions of which Schering is aware
have been taken with respect to the Roche Patent Rights; and (iii) provide
Biogen with copies of all substantive filings and substantive correspondence, to
the extent permissible under law, with respect to the Roche Patent Rights that
Schering receives from Roche
or any governmental authority.
4.2. Schering hereby represents and warrants that, other
than with respect to certain confidential financial terms which have been
deleted, the copy of the Roche-Schering Agreement provided to Biogen on the date
hereof is true and correct.
5. Amendments to the Biogen-Schering Agreement.
5.1. Section 5.1 of the Biogen-Schering Agreement is hereby amended by
deleting the second sentence (Le., the first full sentence) beginning on page 29
of the Biogen-Schering Agreement, as amended by the Prior Amendments, and
substituting in lieu thereof the following:
Such earned royalties shall be paid (i) at the rate of
[xxxxxxxxxxxxxxxxx] with respect to Licensed Products other than
Licensed Combination Products and [xxx] times the "proration factor"
with respect to Licensed Combination Products
[xxxxxxxxxxxxxxxxxxxxxxxxx] of aggregate Sales Value (including
aggregate Sales Value of Licensed Combination Products) of such sales
during each License Year and (ii) at the rate of
[xxxxxxxxxxxxxxxxxxxxxxxxxx] with respect to Licensed Products other
than Licensed Combination Products and [xxx]times the "proration
factor" with respect to Licensed Combination Products on the aggregate
Sales Value (including aggregate Sales Value of Licensed Combination
Products) of all such sales [xxxxxxxxxxxxxxxxxx]in each License Year;
provided that no royalties shall be paid under any circumstances on
Licensed Products or Licensed Combination Products sold or manufactured
in the United States following the date of expiration of the Biogen
Patent, i.e., July 23, 2002 (the "Patent Expiration Date"); except that
(A) After the Patent Expiration Date and through the Royalty
Termination Date, in consideration of the assignments
described in Sections 3.1 and 3.2 above, royalties shall be
paid (I) with respect to Licensed Products sold in the United
States during the periods specified below other than Licensed
Combination Products, at the royalty rates specified below and
(ii) with respect to Licensed Combination Products sold in the
United States during such periods at the royalty rates
specified below times the "proration factor"
Royalty Rate
(Percent of
Royalty Period Sales Value)
After the Patent Expiration [xxx]
Date until July 22, 2003
On or after July 23, 2003 [xxx]
until July 22, 2004
On or after July 23, 2004 [xxx]
until July 22, 2005
On or after July 23, 2005 [xxx]
until July 22, 2006
On or after July 23, 2006 [xxx]
until July 22, 2007
On or after July 23, 2007 and [xxx]
until the Royalty Termination
Date
; and
(B) After the Patent Expiration Date, with respect to Licensed
Products and Licensed Combination Products manufactured in the
United States and sold outside the United States, royalties
shall be paid if and only to the extent that Biogen still owns
an unexpired patent or supplementary protection certificate
covering such Licensed Products or Licensed Combination
Products in the country in which such Licensed Products or
Licensed Combination Products are sold. Any such royalties
shall be paid (i) at the rate of [xxxx xxxxxxxxxxxx] with
respect to Licensed Products other than Licensed Combination
Products and [xxx] times the "proration factor" with respect
to Licensed Combination Products on such sales
[xxxxxxxxxxxxxxxx xxxxxxxx] of aggregate Sales Value
(including aggregate Sales Value of Licensed Combination
Products) of sales during each License Year; and (ii) at the
rate of [xxxxxxxxxxxxxxxxxxxxxx] with respect to Licensed
Products and [xxx] times the "proration factor" with respect
to Licensed Combination Products on such sales within the
aggregate Sales Value (including aggregate Sales Value of
Licensed Combination Products) of all sales [xxxxxxxxxxxxxx
xxxxx] in each License Year.
For purposes of the foregoing subsections (A) and (B), the Roche Patent
Rights shall be deemed to be a "patent with respect to any Biogen
Invention" under Section 1. 14(a)(i) of this Schering-Biogen Agreement.
5.2.[xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx].
6. Consents and Approvals; Cooperation.
6.1. Schering and Biogen shall in good faith cooperate to
obtain all Governmental Approvals. Both parties agree to: (i) take promptly
all actions necessary to make the filings required of the parties; (ii)
comply at the earliest practicable date with any requests for additional
information received either by Biogen or Schering from a governmental authority;
and (iii) furnish to each other such information and assistance as may
reasonably be requested in connection with the foregoing, to the extent
permissible under law. Biogen and Schering agree to provide the other with
copies of all correspondence between either of them (or their advisors) and
any government antitrust entity relating to this Biogen Amendment, the
Fourth Amendment or the Settlement Agreement to the extent permissible under
law. Biogen and Schering agree that all meetings with a governmental authority
relating to any matters described in this Section 6.1 shall include
representatives of both Biogen and Schering unless Biogen and Schering jointly
decide otherwise or the governmental authority objects to such attendance.
6.2. Nothing in this Biogen Amendment shall require Biogen or
Schering, as a consequence of any government action or threatened action, to
change, modify, add, or delete any material term in this Biogen Amendment, or
to take any other action that shall have a material adverse effect on such
party. Either party may provide notice to the other party that it concludes, in
good faith, it would not be feasible and consistent with the intentions of the
parties in entering into this Biogen Amendment to continue the effectiveness of
this Biogen Amendment in the event any governmental agency seeks to enjoin or a
court enjoins the parties from acting pursuant to this Biogen Amendment or a
governmental authority seeks to terminate this Biogen Amendment. Upon the
receipt of such notice by the other party, this Biogen Amendment shall be
declared null and void ab initio and the Biogen-Schering Agreement shall remain
in full force and effect as if this Biogen Amendment and Patent Assignment had
never been executed, and Schering shall execute an assignment in mutually
satisfactory form assigning the Xxxxxxxxx Application to Biogen.
7. Confidentiality. No party shall make any public statements with
respect to this Biogen Amendment or the transactions or agreements contemplated
hereby, the Fourth Amendment, the Interference, the Interference Appeal, the
Settlement Agreement, nor shall any of the parties hereto disclose to any third
party the terms of this Biogen Amendment or any of the other agreements
referenced in this Section 7, or the relationships created hereby, without, in
any such case, the prior written consent of the other parties hereto, except as
required by law or regulation. Each party may make a press release concerning
this Biogen Agreement or the Settlement Agreement, but agree that prior to
making such release, such party will submit the text thereof to the other party
and shall issue the release only with the approval of such party, which approval
shall not be unreasonably withheld; provided, that, once information has been
released in accordance with this Section 7, the information contained in such
release may subsequently be released by the releasing party without the prior
approval or consent of the other party.
8. Revocation. In addition to those rights specified in Paragraph 6.2
above, this Biogen Amendment and the Patent Assignment (if executed), shall be
null and void ab initio, and Schering shall execute an assignment in mutually
satisfactory form assigning the Xxxxxxxxx Application to Biogen and the present
Biogen-Schering Agreement (prior to this Biogen Amendment), shall remain in full
force and effect as if this Biogen Amendment and the Patent Assignment (if
executed) had never been executed, if (i) either a stay of litigation in the
Interference Appeal agreed to by the parties in the Settlement Agreement is not
granted by the court or is lifted by the court prior to the termination of the
Interference Appeal by Schering, as assignee of Biogen, under the provisions of
Paragraph 3 of the Settlement Agreement; (ii) the Settlement Agreement is
properly declared null and void ab initio or a governmental authority whose
prior approval must be obtained, enjoins, rejects or rescinds the Settlement
Agreement, the Fourth Amendment, or this Biogen Amendment or otherwise fails to
render a final approval on or before December 31, 1998; or (iii) Roche fails to
enter into the Fourth Amendment.
9. Covenants of Biogen. Section 12.1 of the Biogen-Schering Agreement
shall apply to the prosecution of Additional Patent Rights. In addition,
Biogen hereby covenants and agrees that it shall (i) keep Schering fully
informed of all actions
taken with respect to the Additional Patent Rights, and (ii) provide Schering
with copies of all proposed filings and correspondence with respect to the
Additional Patent Rights at least thirty (30) days before submission to the
relevant patent office, and give good faith consideration to any comments and
suggestions of Schering with respect thereto. Any and all costs and expenses
incurred by Biogen in connection with any such actions shall be borne by
Biogen.
10. Miscellaneous.
10.1. This Biogen Amendment shall constitute an amendment of the
Biogen-Schering Agreement within the meaning of Section 18 thereof.
10.2. Except as expressly set forth herein, all of the other terms and
conditions of the Biogen-Schering Agreement shall remain in full force and
effect.
10.3. In the event of any inconsistency between this Biogen Amendment
and the Biogen Agreement (as previously amended), the provisions of this
Biogen Amendment shall govern.
IN WITNESS WHEREOF, the parties have caused this Biogen Amendment to be
executed by their respective officers hereunto duly authorized as of the date
and year first written above.
SCHERING CORPORATION
By: /s/Xxxxxx X. Xxxxx
Name: Xxxxxx X. Xxxxx
Title: Vice President
BIOGEN, INC.
By: /s/Xxxxx X. Xxxxx
Name: Xxxxx X. Xxxxx
Title: President & Chief Executive Officer
EXHIBIT A
Assignment of Patent Rights
ASSIGNMENT OF PATENT RIGHTS, dated as of May _, 1998 from Biogen, Inc.,
a Massachusetts corporation ("Biogen"), to Schering Corporation, a New Jersey
corporation ("Schering").
WITNESSETH
WHEREAS, Biogen and Schering have entered into an Agreement and
Amendment dated as of even date hereof (the "Biogen Amendment"), pursuant to
which Biogen has agreed to transfer certain patent rights to Schering upon the
receipt of certain governmental approvals and consents and observance of certain
waiting periods specified therein ("Governmental Approvals") in exchange for the
payment by Schering of certain royalties specified therein.
NOW, THEREFORE, in consideration of the premises and in satisfaction of
its obligation under the Biogen Amendment and for other good and valuable
consideration, the receipt, adequacy and sufficiency of which is hereby
acknowledged, Biogen hereby conveys, transfers and assigns to, and vests in
Schering and its successors and assigns, all of Biogen's right, title and
interest, in and to the patent rights described on Schedule A attached hereto
(the "Assigned Patent Rights").
TO HAVE AND TO HOLD all of the foregoing Assigned Patent Rights unto
Schering, its successors and assigns, to its and their own proper use forever:
1. Biogen, for itself and its successors and assigns, hereby covenants
that, at any time and from time to time after delivery of this instrument, at
Schering's request and expense but without further consideration, Biogen will
do, execute, acknowledge and deliver, or will cause to be done, executed,
acknowledged and delivered, all and every such further acts, conveyances,
instruments, transfers, assignments, powers of attorney and assurances as
reasonably may be required for the better assuring, conveying, transferring,
confirming and vesting in or to Schering, the Assigned Patent Rights or to
enable Schering, its successors and assigns, to realize upon or otherwise to
enjoy the Assigned Patent Rights.
2. This instrument is executed by, and shall be binding upon Biogen,
its successors and assigns, for the uses and purposes above set forth and
referred to, effective as of the date hereof.
3.Terms used herein shall have the same meaning that such terms have
when used in the Biogen Amendment. In the event of any inconsistency
between the provisions hereof and the provisions of the Biogen Amendment,
the provisions of the Biogen Amendment shall be controlling. The
representation and warranties and other terms and conditions of the Biogen
Amendment shall be incorporated in and shall survive execution and delivery of
this Assignment of Patent Rights.
4. This Assignment of Patent Rights shall be governed by and construed
and enforced in accordance with the laws of the state of New Jersey.
IN WITNESS WHEREOF, Biogen and Schering have caused this Assignment of
Patent Rights to be signed by their respective authorized officers as an
instrument under seal, on the day and year first above written.
SCHERING CORPORATION
By: __________________________
Title:
BIOGEN, INC.
By: ___________________________
Title:
SCHEDULE A
Assigned Patent Rights
"Assigned Patent Rights" shall mean the patent application designated
as U.S. Serial No. 471,301 filed
March 2, 1983.
