Exhibit 10.11
[LOGO] XXXXXXXX XXXX
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DATED December 10, 2001
(1) SKYEPHARMA INC
(2) SKYEPHARMA HOLDING AG
and
(3) ASTRALIS LIMITED
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TECHNOLOGY ACCESS OPTION AGREEMENT
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00 Xxxxxxx Xxxxxx Xxxxxx X0X 0XX
Tel: 000 0000 0000 Fax: 000 0000 0000
THIS AGREEMENT is made on 10th day of December 2001
BETWEEN
(1) SKYEPHARMA INC a US company having its principal place of business at
00000 Xxxxxxx Xxxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000, XXX; and
(2) SKYEPHARMA HOLDING AG a company incorporated in Basle, Switzerland whose
registered office is at Xxxxxxxxxxxx 00, XX-0000
(Skyepharma Inc and Skyepharma Holding AG together being "Skyepharma")
(3) ASTRALIS LIMITED a Delaware company having its principal place of business
at 135 Columbia Turnpike - Suite 000 Xxxxxxx Xxxx - Xxx Xxxxxx 00000, XXX
("Company")
RECITALS
(A) Skyepharma owns a drug delivery technology which utilises DepoFoam
sustained injectable, inhalation and topical patented technologies ("the
Technology").
(B) The Company wishes to acquire from Skyepharma a non-exclusive licence to
use the Technology in the Territory (as defined) and Skyepharma has agreed
to grant to Company an option to acquire a non-exclusive licence on the
terms and conditions of this Agreement.
NOW IT IS HEREBY AGREED as follows:-
1 Definitions and Interpretation
1.1 In this Agreement the following words and phrases shall (save where the
context otherwise requires) have the following meanings:
"Base Products" Company's existing or proposed products
which include leishmania extract for
immunotherapy for psoriasis and
leishmaniasis and which do not use or
exploit the Technology;
"the Commencement Date" the date hereof;
"Improvement" any addition, improvement, modification
development or novel or alternative use to
or of the
Licensed Property;
"Intellectual Property" patents, trade marks, service marks, trade
names, registered designs, design rights,
copyrights, topography rights and each of
them registered or existing in any part of
the Territory;
"Know-How" the body of technical knowledge technical
experience and skills and all information
in whatever form owned by Skyepharma or
which it is entitled to licence relating
to, or for use in connection with, the
Technology or its use and exploitation and
includes both the whole body of such
knowledge, experience, skills and
information and also any one or more parts
of the same;
"Net Sales" means the invoiced amount billed for sales
of products utilising the Technology to
third party purchasers, less the following
items to the extent they are paid or
allowed and included in the invoice price:
(i) quantity, trade and/or cash
discounts actually granted;
(ii) amounts refunded or credited for
products which were rejected or
damaged;
(iii) taxes, tariffs, customs duties and
surcharges and other governmental
charges incurred in connection with
the sale, exportation or importation
of such products;
"the Licensed Property" the Know-How and the Technology; and all
copyright, design rights and other rights
of a like nature attaching to or connected
with the Technical Documentation;
"the Option" the option granted pursuant to Clause 2;
"the Option Period" the period which begins on the
Commencement Date and which ends on the
seventh (7th) anniversary of the
Commencement Date;
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"the Products" those products manufactured and/or sold by
Company which use or exploit the
Technology;
"the Technology Documentation" all manuals and other documentation in
which the Know-How is recorded and all
other technical and organisational
documentation associated with the
Know-How;
"the Term" the term of this Agreement as set out in
Clause 6;
"the Territory" The World.
1.2 Where the context so permits, words importing the masculine gender shall
include the feminine and neuter and words importing the singular shall
also include the plural, and vice versa.
1.3 The headings in this Agreement are for reference only and shall have no
effect on the construction of this Agreement.
1.4 Reference to Clauses, sub-clauses, paragraphs, Schedules and Recitals are
to Clauses, sub-clauses, paragraphs, schedules and recitals of and to this
Agreement.
2 Payment, Option and Exercise of Option
2.1 Company shall pay to Skyepharma the sum of US$5.0 million upon the date of
this Agreement, which payment shall be non-refundable. For the purposes of
this Agreement, the US$5.0 million payment, though only payable in
aggregate, shall be attributed to each component part of the Technology as
follows: Depofoam(R)injectable delivery technology US$2.0 million, topical
delivery technology US$2.0 million and inhalation delivery technology
US$1.0 million.
2.2 In consideration of the payment to Skyepharma of the sum of US$5.0 million
Skyepharma hereby grants to Company an Option to acquire from Skyepharma a
non-exclusive licence to use the Technology.
2.3 The Option may be exercised by Company serving notice during the Option
Period in writing on Skyepharma informing it of Company's exercise of the
Option ("the Option Notice").
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2.4 Notwithstanding any other provision of this Agreement the Option Notice
may not be served and Skyepharma shall not be liable to grant Company the
non-exclusive licence in respect of which the Option Notice has been given
at any time after any of the following has occurred (upon the happening of
which the Option shall lapse):
2.4.1 Company is declared insolvent, makes an arrangement with its
creditors or otherwise ceases or threatens to cease business;
2.4.2 Expiry of the Option Period.
3 Licence and Manufacturing and Marketing Rights
3.1 In consideration of the sum payable to Skyepharma by Company under Clause
2.1 and upon completion of the exercise of the Option, Skyepharma shall
grant to Company a non-exclusive right during the Term subject to the
provisions of this Clause 3:
3.1.1 to use the Technology in the Territory;
3.1.2 to use all of the Know-How and the Technology Documentation for
the purposes of or in connection with the utilisation of the
Technology;
3.1.3 to sell or supply Products to any person in the Territory.
3.2 The Company's use of the Technology during the Term shall be restricted to
the use of the Technology with leishmania extract for immunotherapy for
psoriasis and leishmaniasis only.
3.3 The licence to be granted to Company upon exercise of the Option shall
bear a running royalty of five percent (5%) of Net Sales of Products sold
by or on behalf of Company.
3.4 The remaining terms of the licence shall be the subject of good faith
negotiations between the parties, but shall contain those matters
specified in Schedule 1 substantially on the terms thereof.
3.5 Notwithstanding anything else herein, Skyepharma shall retain the
exclusive right to undertake manufacture of all products that incorporate
or utilize the Licensed Property. Such manufacture shall be undertaken by
Skyepharma on such reasonable terms as the parties may agree following
good faith negotiations.
3.6 Company hereby grants to Skyepharma the following rights with respect to
the marketing of the Base Products and/or Products on the following basis.
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3.6.1 Should Company receive from or make to any third party an offer to
market the Base Products and/or Products ("the Third Party Offer")
in all or any part of the Territory, at any time prior to
initiation of Phase III clinical trials for the Base Products
and/or the Products (as the case may be), it shall forthwith
notify Skyepharma of the identity of the third party and all the
relevant terms of such Third Party Offer. Within fifteen (15) days
of receipt of such Third Party Offer, Skyepharma may require
Company to engage in good faith negotiations to agree an offer
which matches in all material respects the Third Party Offer, or
is otherwise acceptable to Company. Should the parties so agree,
the parties shall enter an agreement on that basis. Should
Skyepharma not wish to or otherwise fail following good faith
negotiations to match the Third Party Offer or come to an
agreement otherwise acceptable to Company, Company may complete an
agreement with the notified third party on the terms of the Third
Party Offer. Company shall not complete any such agreement on
terms any less favourable to it than the Third Party Offer without
first notifying Skyepharma of such less favourable terms, which
notification shall be deemed a new Third Party Offer to which the
provisions of this clause shall apply in full. For the avoidance
of doubt, this clause shall apply to every Third Party Offer
received or made by Company.
3.6.2 Should, at any time subsequent to initiation of Phase III clinical
trials for the Base Products and/or the Products (as the case may
be), Company wish to market the Base Products and/or the Products,
or receive or make a Third Party Offer in all or any part of the
Territory, it shall forthwith notify Skyepharma of such wish or
the identity of the third party and all the relevant terms of such
Third Party Offer. Within fifteen (15) days of receipt of such
notification, Skyepharma may require Company to exclusively engage
in good faith negotiations with Skyepharma for sixty (60) days to
reach agreement acceptable to the parties. If Skyepharma elects to
exercise its first right of negotiation, until the expiration of
the 60 day period Company will not directly or indirectly solicit
or encourage any inquiries or proposals for, or enter into any
discussions with any third party with respect to, the marketing of
the Base Products and/or Products. In the event Skyepharma has
timely delivered its notice and the parties thereafter cannot
reach agreement in accordance with this Section 3.6.2 within such
60 day period, Company may enter into a marketing agreement with
respect to the Base Product and/or Products with a third party.
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4 Obligations of Confidentiality
4.1 Company undertakes to keep secret and treat as confidential and to ensure
that its employees, agents, sub-contractors and licensees keep secret and
treat as confidential this Agreement and its terms and all information
supplied by Skyepharma hereunder and except as permitted by this
Agreement, not to use any of the same otherwise than for the purposes of
this Agreement and to ensure that its employees, agents, subsidiaries,
sub-contractors and licensees do likewise.
4.2 Skyepharma undertakes to keep secret and treat as confidential and to
ensure that its employees, agents, sub-contractors and licensees keep
secret and treat as confidential this Agreement and its terms and all
information supplied by Company hereunder and, except as permitted by this
Agreement, not to use any of the same otherwise than for the purposes of
this Agreement and to ensure that its employees, agents, subsidiaries,
sub-contractors and licensees do likewise.
4.3 The obligations under Clause 4.1 and 4.2 shall not extend to any
information, which the party seeking to disclose or use can demonstrate by
competent written evidence:
4.3.1 is in the public domain or generally known in the country where is
to be disclosed or has ceased to be secret (otherwise than as a
result of a breach of this Agreement);
4.3.2 is required to be disclosed pursuant to any Order of a Court of
competent jurisdiction;
4.3.3 is contained in a published patent specification;
4.3.4 is required to be disclosed pursuant to any statute, regulation or
ordinance;
4.3.5 is at the time such party is seeking to disclose or use such
information already in the possession of such party free from any
obligation of confidentiality and has not been acquired by such
party in breach of any obligation of confidentiality;
4.3.6 has been disclosed under an express written statement that it is
not confidential.
5 Assignment
5.1 Company shall not assign, transfer, charge or part with any of its rights
under this Agreement without the prior written consent of Skyepharma.
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5.2 Company shall not in any event assign the whole or any part of its rights,
benefits and obligations under this Agreement unless it has first procured
the delivery to Skyepharma of an agreement by the transferee effectively
undertaking to observe the obligations of Company under this Agreement.
6 Duration and Termination
6.1 Unless terminated earlier in accordance with the following provisions of
this Clause 6, this Agreement shall continue until exercise of the Option
or expiry of the Option Period, whichever is the sooner.
6.2 A party to this Agreement shall be entitled (but not obliged) to terminate
this Agreement by notice in writing to the other party having immediate
effect:
6.2.1 if the other party commits any irremediable material breach of
this Agreement;
6.2.2 if the other party commits any remediable breach of this Agreement
and fails to remedy such breach within the period of 60 days from
the service on it of a notice specifying the breach and requiring
it to be remedied;
6.2.3 if a court makes an administration order with respect to the other
party or any composition in satisfaction of the debts of, or a
scheme of arrangement of the affairs of, the other party; or
6.2.4 the other party becomes insolvent, has a receiver, administrative
receiver or manager appointed over the whole or any part of its
assets, enters into any composition with creditors generally, or
has an order made or resolution passed for it to be wound up
(otherwise than in furtherance of any scheme for amalgamation or
reconstruction) or undergoes any similar or equivalent process in
any jurisdiction.
6.3 Termination of this Agreement shall be without prejudice to any rights
accrued in favour of either party in respect any breach committed prior to
the date of such termination by the other party.
7 Consequences of Termination
7.1 Termination of this Agreement for any reason shall not bring to an end:
7.1.1 the confidentiality obligations on the parties; or
7.1.2 Company's obligation to pay any sums which may be due or shall
have accrued hereunder.
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8 Severability
Except insofar as the context otherwise requires, each provision herein
shall be construed as independent of every other provision, and if any
provision hereof is or becomes partially or totally invalid or
unenforceable then the validity and enforceability of the remaining
provisions shall not be affected.
9 Entire Agreement
This Agreement constitutes the whole Agreement and understanding between
the parties with respect to the subject matter of this Agreement and
supersedes all prior discussions and agreements between the parties and/or
their agents.
10 Variations
No amendments to this Agreement shall be effective unless and until made
in writing and signed on behalf of both parties.
11 Waiver
A failure by either party to exercise or enforce any right conferred upon
it by this Agreement shall not be deemed to be a waiver of such right or
operate so as to bar the exercise or enforcement thereof at any subsequent
time or times.
12 Governing Law
The validity and performance of this Agreement shall be governed in
accordance with New York law.
13 Notices
13.1 Any notice required to be given hereunder shall be sufficiently given if
forwarded by prepaid registered airmail post.
13.2 Any notice sought to be given by either party to the other shall be
addressed to that other at its address on page 1 of this Agreement or at
such other address as may from time to time be notified by that other for
this purpose to the party seeking to give such notice.
14 Further Assistance
Company shall do, execute and perform and shall procure to be done
executed and performed all such further acts, deeds, documents and things
as Skyepharma may reasonably
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require from time to time to give full effect to the terms of this
Agreement and in particular, but without limitation, Company shall, at the
reasonable request of Skyepharma from time to time execute and deliver to
Skyepharma such assignments, novation agreements and transfers of
contracts, rights, licences and agreements hereby agreed to be assigned,
novated or transferred as Skyepharma may reasonably require.
15 Counterparts
This Agreement may be executed in two or more counterparts, each of which
shall be deemed to be an original, and which together shall constitute one
and the same Agreement. Unless otherwise provided in this Agreement, this
Agreement shall become effective and be dated (and each counterpart shall
be dated) on the date on which a counterpart of this Agreement is signed
by the last of the parties to execute this Agreement.
16 Publicity
The parties agree that neither of them will make any official press
release, announcement or other formal publicity relating to the subject
matter of this Agreement without first obtaining in each case the prior
written consent of the other party, which consent will not be unreasonably
withheld.
17 No Partnership
Nothing in this Agreement shall be taken to constitute a partnership
between the parties hereto nor the appointment of one of the parties as
agent of the other.
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AS WITNESS the hands of the parties to this Agreement or their duly authorised
representatives on the date written on page 1 of this Agreement.
SIGNED BY /s/ )
for and on behalf of SKYEPHARMA INC )
in the presence of:- )
Witness Name: /s/ A. M. Theobold
Address: 00 Xxxxxxx Xxxx, Xxxxxx, Xxxxxx
Occupation: Head of Education and Planning
SIGNED BY /s/ )
for and on behalf of SKYEPHARMA HOLDING AG )
in the presence of:- /s/ A.M. Theobold )
Witness Name: A.M. Theobold
Address: 00 Xxxxxxx Xxxx, Xxxxxx, Xxxxxx
Occupation: Head of Education and Planning
SIGNED BY /s/ Xxxx Ajnsztajn ) Xxxx Ajnsztajn
for and on behalf of ASTRALIS LIMITED )
in the presence of:- ) /s/ Xxxx Xxxxxxx
Witness Name: Xxxx Xxxxxxx
Address: 000 Xxxxxxxx Xxxxxxxx Xxxxx 000
Xxxxxxx Xxxx, XX 00000
Occupation: Secretary
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SCHEDULE 1
1. Exploitation of Rights
Company shall throughout the Territory use its best commercial endeavours
to promote and increase the sale of Products.
2. Provision of the Know-How
a. Skyepharma shall make available to Company all of the Know-How in
existence at the commencement of the Term and shall provide Company
with one complete copy of the Technical Documentation.
b. The copyright in all Technical Documentation provided by Skyepharma
under this Clause shall belong to and remain vested in Skyepharma.
Skyepharma hereby grants to Company a licence to make such number of
copies of the same as Company may reasonably require for the
exercise of its rights and the performance of its obligations under
this Agreement.
c. The Know-How and Technical Documentation to be given and provided by
Skyepharma under this Clause shall be so given and provided by
Skyepharma solely on the basis of knowledge and documentation which
it actually possesses at the date of this Agreement:
i. from its general experience gained through operating its
business; and
ii. as the owner of the Technology.
d. Company agrees that except and to the extent expressly provided
under the terms of this Agreement the use and exploitation of, and
reliance on, the Technology and the Know-How by Company shall be
entirely at its own risk and Company agrees that Skyepharma shall
not be responsible or liable for any loss or damage to, or any
claims made by any third party against Company by reason of any such
use, exploitation or reliance.
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3. Royalties
a. In consideration of the licence and other rights hereby granted to
Company under Clause 3, Company shall pay to Skyepharma the
following sums in the manner and by the instalments set out below:
i. a running royalty of five percent (5%) of Net Sales on
Products sold by or on behalf of Company. The minimum royalty
targets to be obtained by Company in each year shall be agreed
between the parties;
ii. royalties shall be paid by Company within eight (8) weeks of
the end of each calendar year and Company shall supply
Skyepharma with detailed calculations of the royalties due in
accordance herewith together with such payment;
iii. Skyepharma or its duly authorised representatives shall have
the right to inspect and audit and to take copies of or
extracts from any accounts and any other documents, records,
receipts or insurances relating to the calculation of the
royalties. If on any such inspection or audit Skyepharma or
its duly authorised representatives can demonstrate a
discrepancy of more than 5% between the royalties as paid to
Skyepharma and the actual royalties payable to Skyepharma for
the same period, Company shall (without prejudice to any other
rights which Skyepharma may have) pay to Skyepharma the amount
of such discrepancy forthwith and reimburse Skyepharma for all
reasonable costs incurred in conducting such inspection and
audit.
4. Liability of Skyepharma for Defaults
a. In no event shall Skyepharma its employees, agents, consultants or
contractors (or any of them) have any liability to Company for (and
Company shall keep Skyepharma indemnified against) any consequential
loss, consequential damage and any loss of profits, business,
revenue, goodwill or anticipated savings suffered by Company and any
claim made against Company by any third party caused (whether
directly or indirectly) by or arising from:
i. any failure of Skyepharma (except a deliberate and
unjustifiable failure) to provide, or any delay in providing
any of the Know-How, the Technology, the Technical
Documentation or any of the advice or assistance to be
provided by Skyepharma under this Agreement;
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ii. any defect in, or inadequacy of, any of the Know-How, the
Technology or the Technical Documentation or any of the
advice, assistance and services provided by Skyepharma under
this Agreement;
iii. any claim that the use or exploitation of the Licensed
Property by Company infringes the intellectual property rights
of any third party;
iv. any default of Skyepharma or Skyepharma's employees, agents,
consultants or contractors in connection with or in relation
to the subject matter of this Agreement.
5. Improvements
a. Each party ("the inventing party") shall forthwith disclose to the
other in confidence and in such detail as that other party may
reasonably require all Improvements that the inventing party may
develop or acquire during the Term. Subject to the following
provisions, all Improvements shall vest in and remain the property
of Skyepharma, and Company shall do all things reasonably necessary
at Skyepharma's cost and request to vest ownership in Skyepharma of
those Improvements developed or acquired by Company.
b. All Improvements shall be deemed comprised in the Licensed Property
and shall be subject to the licence thereof.
c. To the extent that any Improvement is solely of use with or
application to the Base Product, commencing upon the expiry of the
Term, Company may require that Skyepharma grant to it a licence to
such Improvement exclusively for use with the Base Product, such
licence to otherwise be on such commercial terms as the parties may
agree.
6. No Warranties Without Authority
Company shall make no statements, representations or claims and shall give no
warranties to any customer in respect of Products supplied to the customer save
such as are implied by law or may have been specifically authorised by
Skyepharma. Skyepharma shall be entitled to withhold such authorisation only on
the grounds that the statement, representation, warranty or claim in question
refers or relates (directly or indirectly, expressly or by implication) to the
Licensed Property and that (by reason of the making of the statement,
representation or claim or the giving of the warranty in question) Skyepharma
might be exposed to liability for defects in the Products or liability for
death, injury or loss or damage caused by the Products or defects in the
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Products. Company undertakes to keep Skyepharma fully and effectually
indemnified against all claims, demands, losses, expenses and costs which
Skyepharma may incur as a result of any breach by Company of this Clause.
7. Indemnity
a. Subject always to the provisos set out below in this sub-clause,
Company undertakes to indemnify Skyepharma its directors and
employees and keep them fully and effectively indemnified against
any and all losses, claims, damages, costs, charges, expenses,
liabilities, demands, proceedings and actions which they (or any of
them) may sustain or incur, or which may be brought or established
against them (or any of them) as a result (whether direct or
indirect, and whether wholly or in part) of or arising from:
i. any action or omission of Company or its employees agents or
contractors in the performance of its obligations or the
exercise of any of its rights under this Agreement;
ii. the death of or personal injury to any person and/or any loss
or damage to any property and/or any other loss or damage
wholly or partly caused (whether directly or indirectly) by
reason of Company selling, supplying, offering for sale,
offering to supply, agreeing to sell and/or agreeing to supply
any Product which:
1. is not of merchantable quality; or
2. is defective in any respect; or
3. is or may be injurious to the health or safety of any
person using or handling the Product in question for any
reasonably foreseeable purpose; or
4. is or may be injurious to the property of any person
referred to in paragraph 8.a.ii;
provided that the indemnity contained in this Clause 8 shall not apply to any
claims, demands or proceedings brought by any third party alleging that the use
by Company of the Licensed Property or any part thereof infringes any
Intellectual Property of that third party and the indemnity in paragraph 8.a.ii
shall not apply to any death, personal injury or loss or damage which is caused
by, or arises from, any defect which is inherent in the Technology or the
Know-How.
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b. If under this Agreement Skyepharma shall exercise its right to use
and exploit an Improvement developed or acquired by Company to make
or have made any product, Skyepharma undertakes (subject always to
the provisos set out below in this sub-clause) to indemnify Company
its directors and employees and keep them fully and effectively
indemnified against any and all losses, claims, damages, costs,
charges, expenses, liabilities, demands, proceedings and actions
which they (or any of them) may sustain or incur, or which may be
brought or established against them (or any of them) as a result
(whether direct or indirect, and whether wholly or in part) of or
arising from the death of or personal injury to any person and/or
any loss or damage to any property and/or any other loss or damage
wholly or partly caused (whether directly or indirectly) by reason
of Skyepharma selling, supplying, offering for sale, offering to
supply, agreeing to sell and/or agreeing to supply any such product
which:
i. is not of merchantable quality; or
ii. is defective in any respect; or
iii. is or may be injurious to the health or safety of any person
using or handling the product in question for any reasonably
foreseeable purpose; or
iv. is or may be injurious to the property of any person referred
to in this sub-clause;
provided that the indemnity contained in this sub-clause shall not apply to any
claims, demands or proceedings brought by any third party alleging that the use
or exploitation by Skyepharma of such rights or any part thereof infringes any
Intellectual Property of that third party nor shall it apply to any death,
personal injury or loss or damage which is caused by, or arises from, any defect
which is inherent in that Improvement.
8. Obligations of Confidentiality
a. Company undertakes to keep secret and treat as confidential and to
ensure that its employees, agents, sub-contractors and licensees
keep secret and treat as confidential all information in respect of
the Licensed Property (including additions, and Improvements
thereto), the Technical Documentation, Know-How and all other
information, documentation, materials and advice supplied by
Skyepharma hereunder and except as permitted by this Agreement, not
to use any of the same otherwise than for the purposes of this
Agreement and to ensure that its employees, agents, subsidiaries,
sub-contractors and licensees do likewise.
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b. Skyepharma undertakes to keep secret and treat as confidential all
technical and business information and documentation and all other
materials supplied to Skyepharma by Company for the purposes of or
in the course of implementing this Agreement and, except as
permitted by this Agreement, not to use any of the same otherwise
than for the purposes of this Agreement.
c. The obligations under Clause 8.a and 8.b shall not extend to any
information, Improvements, Technical Documentation, Know-How or
other documentation or advice which the party seeking to disclose or
use can demonstrate by competent written evidence:
i. is in the public domain or generally known in the country
where is to be disclosed or has ceased to be secret (otherwise
than as a result of a breach of this Agreement);
ii. is required to be disclosed pursuant to any Order of a Court
of competent jurisdiction;
iii. is contained in a published patent specification;
iv. is required to be disclosed pursuant to any statute,
regulation or ordinance;
v. is at the time such party is seeking to disclose or use such
documentation, information, Improvements, Know-How or advice
already in the possession of such party free from any
obligation of confidentiality and has not been acquired by
such party in breach of any obligation of confidentiality;
vi. has been disclosed under an express written statement that it
is not confidential.
d. The following acts shall not be deemed to be a breach of the
obligations contained in Clause 8.a in relation to any information,
Improvements, Know-How, Technical Documentation or other
documentation or advice:
i. disclosure occurring by its use in the manufacture of products
using the Technology and/or the Improvements;
ii. disclosure occurring in the ordinary course of the sale of
products manufactured using the Technology and/or the
Improvements;
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iii. disclosure by the receiving party to its customers or users or
repairers of products manufactured using the Technology and/or
the Improvements or to sub-contractors or manufacturers of
such products or component parts;
iv. disclosure by reproduction of drawings as may be necessary in
advertising literature, instruction books and spare parts
lists;
provided that in all the above cases any disclosure has been made bona fide and
to no greater degree than was necessary in the circumstances and with a view to
promoting the sale or use of products manufactured using the Technology and/or
the Improvements.
e. Subject as provided herein, any information communicated to one
party hereunder may be disclosed by that party to any sub-contractor
appointed to manufacture, repair or service products manufactured
using the Technology provided that the disclosing party procures
that such disclosure is limited to such officers or employees of the
sub-contractor as cannot properly fulfil their duties to the
sub-contractor without such disclosure and who undertake in writing
to keep such information confidential.
9. Infringements
a. Skyepharma and Company shall notify each other forthwith in writing
of any infringement or suspected or threatened infringement in the
Territory of any of the rights comprising the Licensed Property
which shall at any time come to knowledge of either of them.
b. Skyepharma shall be entitled in its sole discretion to decide
whether to take any steps (including any proceedings) as may be
necessary to prevent or restrain any infringement in the Territory
by a third party of any of the rights comprising the Licensed
Property. In the event that Skyepharma decides to take steps under
this Clause, Skyepharma shall have control over and shall conduct at
its own cost any such action as it deems fit provided that Company
shall provide or procure the provision of such assistance in taking
such steps (including any proceedings) as Skyepharma shall
reasonably require. Skyepharma shall be entitled to retain any award
of damages or other compensation obtained as a result of any steps
(including any proceedings) taken by Skyepharma pursuant to this
Clause.
c. If Skyepharma shall decide not to take any steps pursuant to Clause
9.b, Company shall be entitled to take action to prevent or restrain
such infringement subject always to Company indemnifying Skyepharma
against any claim or counter claim
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that may be brought against Skyepharma in connection with or arising
from any actions so taken by Company. In the event that Company
decides to take steps under this Clause, Company shall be
responsible for all costs and fees incurred by it in the taking of
such steps (including any proceedings). Skyepharma shall at
Company's cost provide or procure the provision of such assistance
as Company shall reasonably require and subject to Company
reimbursing Skyepharma for such costs, Company shall be entitled to
retain any award or damages or other compensation obtained as a
result of any such steps (including any proceedings) being taken by
Company but only to the extent that such damages or compensation is
awarded in respect of any infringement in the Territory.
d. If any proceedings are brought against Company on the grounds that
the use or exploitation by Company of the Licensed Property
infringes the rights of any third party, Company shall forthwith
notify Skyepharma of the same. If Skyepharma shall so require,
Company shall surrender control of the defence of such proceedings
to the exclusive control of Skyepharma. If the acts of Company in
respect of which the proceedings have been brought are not such as
to constitute a breach of this Agreement and are not acts for which
Company would require the licence or consent of Skyepharma falling
outside the terms of the licences granted under this Agreement,
then:
i. Skyepharma shall indemnify and keep indemnified Company
against all damages and all costs (including all taxes payable
on them) which may be awarded against Company as a result of
the proceedings, or which may be agreed to be paid in
settlement of the proceedings (where that settlement has first
been proposed or approved in writing by Skyepharma);
ii. Skyepharma shall indemnify and keep indemnified Company
against all proper costs and expenses (including all
reasonable fees and disbursements of lawyers, patent attorneys
and expert witnesses) incurred by Company in defending the
proceedings; and
10. Sub-Licences
a. Company shall not grant to any person any licence, sub-1icence,
permission or authorisation (referred to collectively in the
remainder of this Clause 10 as a "sub-licence") of, out of or in
relation to any rights granted to it under this Agreement unless the
prior written consent of Skyepharma is obtained in respect of:
i. the person to whom the sub-licence is to be granted; and
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ii. the terms of such sub-1icence.
For the purpose of obtaining Skyepharma's consent to any sub-1icence Company
shall submit to Skyepharma a written copy of the proposed terms of such
sub-licence. Company shall keep Skyepharma fully informed of all sub-licensing
negotiations and shall at Skyepharma's request, allow Skyepharma to participate
fully in any such negotiations.
b. Any sub-licences granted by Company in accordance with Clause 10.a
shall be restricted to the use of the Technology and the Know-How
within the Territory in the field of use of the licence granted to
the Company hereunder.
c. Without prejudice to Clause 10.a if Skyepharma shall give its
written consent to the grant of a sub-licence under Clause 10.a
Company shall, in respect of each such sub-licence, pay to
Skyepharma a sum to be agreed on the date that each sub-licence is
approved by Skyepharma. Company shall also pay to Skyepharma, in
respect of each sub-licence, 100% of the royalties which would have
been payable under Clause 3 in respect of each Product sold by the
sub-licensee which utilises the Technology as if Company had sold
the Product itself. Such royalties shall be paid in the same manner
and by the same instalments as set out in Clause 3.
d. The term of any sub-licence granted by Company shall expire at least
one day before the expiration of the effective Term of this
Agreement.
e. Company shall be responsible to Skyepharma for the enforcement of
the terms of any sub-licence and for inspecting the accounts and
records kept by the sub-licensee. It shall be a term of each of the
sub-licences that the sub-licensee shall allow Skyepharma to visit
any sub-licensee and to inspect all of the sub-licensee's accounts
and records relevant to calculation of amounts payable to Company.
Company shall at the request of Skyepharma appoint a qualified
person jointly with Skyepharma to inspect the records of the
sub-licensee on behalf of both Skyepharma and Company and Company
shall supply Skyepharma with a copy of any report prepared in
relation to such inspection.
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Schedule I
(Minimum Royalty Payments)
(to be agreed)
Calendar Year
Year 1
Year 2
Year 3
Year 4
thereafter
NWK3: 659812.01
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