Exhibit 10.15.1
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote
omissions.
SECOND AMENDMENT TO COOPERATIVE AGREEMENT
This SECOND AMENDMENT TO COOPERATIVE AGREEMENT is made and entered into
as of this 11th day of April, 2002, by and among Novirio SARL, a private
corporation located at Immeuble "La Vigie," 000 Xxx Xxxx Xxxx, 00000 Xxxxxxxxxxx
("Novirio"), Le Centre National de la Recherche Scientifique, located at 0 Xxx
Xxxxxx-Xxxx 00000, Xxxxx, Cedex 16 ("CNRS"), and L'Universite' Montpellier II,
located at 0 Xxxxx Xxxxxx Xxxxxxxxx 00000, Xxxxxxxxxx ("UMII") (together, the
"Parties").
Whereas, Novirio, CNRS and UMII are parties to a certain Cooperative
Agreement dated as of January 4, 1999 ("the Cooperative Agreement"), pursuant to
which, inter alia, the parties have established a Cooperative Laboratory; and
Whereas, Novirio, CNRS and UMII entered into a First Amendment
Agreement dated as of May 17, 2001 to amend and clarify certain terms of the
Cooperative Agreement; and
Whereas, the parties now desire to further amend and clarify the
Cooperative Agreement as amended on May 17, 2001;
NOW THEREFORE, for and in consideration of the foregoing, the mutual
covenants herein contained and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows.
1. The reference to NOVIRIO Limited, in the first paragraph of
the Cooperative Agreement is understood and amended to refer to NOVIRIO
PHARMACEUTICALS Limited.
2. Article 9.1 is amended to read as follows.
Results obtained by the COOPERATIVE LABORATORY, within the framework of
research carried out under this Agreement, are owned jointly by the Parties.
Results ("Results") include, but are not limited to, technical information,
laboratory notebooks, data, trade secrets, know how, proprietary information and
inventions, documents and materials arising out of such research.
The parties further agree that any and all rights, title and interest
in the technology, inventions, and/or discoveries directly or indirectly
relating to the subject matter of the patent applications U.S. application
numbers [**] and all continuations, divisionals, continuations-in-part, foreign
counterparts, and all other U.S. and international patent filings that claim
priority to these applications or to which these applications claim priority are
deemed to be included in the results obtained by the COOPERATIVE LABORATORY
regardless of whether the work was carried out prior to the formation of the
COOPERATIVE LABORATORY and regardless of the
person or institution that carried out the work. Such work specifically includes
compositions, use and manufacture of [**], and analogs thereof for the treatment
of [**], including humans.
The rules of co-ownership are defined in Annex 3 and are an integral
part of this Agreement.
3. Article 9.2 is amended by adding the following paragraph as
the last paragraph of the Article.
The parties agree that Results obtained outside of the Cooperative
Laboratory as defined in this Section do not include any and all rights, title
and interest in the technology, inventions, and/or discoveries directly or
indirectly relating to the subject matter of the patent applications U.S.
application numbers [**] and all continuations, divisionals,
continuations-in-part, foreign counterparts, and all other U.S. and
international patent filings that claim priority to these applications or to
which these applications claim priority, which, by agreement of Novirio and the
Organization, are specifically deemed to fall under Article 9.1 as Results of
the Cooperative Laboratory. The parties further agree that compositions, use and
manufacture of [**], and analogs thereof for the treatment of [**], including
humans fall under Article 9.1 and not Article 9.2.
4. Article 10.2.1a) is amended by replacing the existing
paragraph with the following paragraph.
Novirio has the exclusive world-wide right to exploit, directly or
indirectly, the Results obtained in the Exploitation Field within the framework
of the Cooperative Laboratory, which includes, without limitation, the right to
make, have made, use, sell, offer for sale and import the Results of the
Cooperative Laboratory in the Exploitation Field, either directly or indirectly,
for all commercial purposes, and the right to enter into license agreements and
collaborations on its own or through its affiliates with third Parties to
authorize such third parties to make, use, sell, offer for sale and import said
Results for all commercial purposes, and Novirio agrees to provide a royalty to
the Organization under the conditions prescribed in Article 11.
5. Article 10.2.1c) is amended by replacing the existing
paragraph with the following paragraph.
In the event of indirect exploitation by Novirio, Novirio is granted
have the unlimited right to act behalf of the Parties, and to sign all
agreements with any and all third parties in Novirio's sole discretion and
without the Organization's prior permission. Indirect exploitation shall include
a collaboration, nonexclusive or exclusive license agreement, option agreement,
or other relationship or agreement with another institution that passes any
right or partial right granted to Novirio under Article 10.2.1a) to that
institution. Novirio will advise the Organization of any such indirect
exploitation and will transmit a copy of the signed agreements to the
Organization.
6. Article 12 is amended by adding the following paragraph.
In Article 12, the first clause of the first sentence of the last paragraph is
amended to read:
Notwithstanding the expiration or termination of the Agreement or its
anticipated cancellation:
7. Article 13 is amended by replacing the existing paragraph with
the following paragraph.
The Parties agree that this contract will be construed and interpreted
under French law. The parties shall try to settle out of court litigation and
disputes that could arise from the interpretation of this Agreement. In the case
of persistent disagreement, any disputes among the parties will be heard in a
court of competent jurisdiction.
8. Annex 3, entitled "Co-ownership Settlement of Cooperative
Laboratory Results" is amended as follows.
The first paragraph is replaced with the following sentence.
Any patent applications covering the Results obtained in the framework
of the COOPERATIVE LABORATORY will be filed in the names of the appropriate
parties under the law of the country of the patent filing, but will be exploited
according to the terms of this contract for the benefit of all of the Parties.
Novirio will [**] for submitting a patent, for the patent being granted, for
maintaining the patent, and for defending it.
9. Article 4.3 of Annex 3 is replaced with the following
paragraph.
The parties hereby grant Novirio the first, full and sole right to
enforce or defend any patent obtained covering Results at Novirio's sole
expense, and the Organization agrees to cooperate, assist, and participate in
any litigation that Novirio deems necessary or desirable to defend such patents.
If Novirio elects in writing not to defend or enforce a patent being infringed,
then the Organization is granted the second, full and sole right to enforce or
defend any patent obtained covering Results at the Organization's sole expense,
and then Novirio agrees to cooperate, assist, and participate in any litigation
that the Organization deems necessary or desirable to defend such patents.
10. The first two sentences of Article 4.4 are deleted. In the
third sentence of Article 4.4, the word "them" is replaced with "the Parties."
11. Article 4.5 of Annex 3 is replaced with the following
paragraph.
If the Organization does not want to exercise the second right to
enforce the patent, either CNRS or UMII may individually take legal action at
its own expense, wherein Novirio and the
other party agree to cooperate, assist and participate in any such litigation.
In this case, all damages will be awarded to the litigating party in full.
12. Article 5 of Annex 3 is amended by adding the following
sentence to the end of the second paragraph.
The right of notice and preemption prior to an assignment of patent or
technical rights does not apply in the case of the sale of all or substantially
all of the assets of the party, in which case the co-ownership right flows
automatically with the asset sale to the new owner of the assets. The new owner
of all or substantially all of the assets of the prior co-owner must confirm in
writing its agreement to the co-ownership provisions set forth in this
Agreement.
13. CNRS warrants and represents that it is the sole owner of all
inventions, conceptions, trade secrets, technical developments and patents of
Xx. Xxxxxx Xxxxxxxx carried out or accomplished in the course of Xx. Xxxxxxxx'x
research and Results in the Cooperative Laboratory. CNRS has not granted any
rights held by the Cooperative Laboratory to any other entity, and no government
entity or other entity holds such rights other than CNRS.
14. UMII warrants and represents that it is the sole owner of all
inventions, conceptions, trade secrets, technical developments and patents of
Xx. Xxxx-Xxxxx Xxxxxx carried out or accomplished in the course of Xx. Xxxxxx'x
research and Results in the Cooperative Laboratory. UMII has not granted any
rights held by the Cooperative Laboratory to any other entity, and no government
entity holds such rights other than UMII.
15. All other provisions of the Cooperative Agreement as amended
on May 17, 2001 remain unchanged.
16. This Amendment has been drafted in the English language and in
the French language. In case of contradiction between the two versions, the
French version shall prevail.
For the Director General of the CNRS and on his authority, the Regional Delegate
/s/ XXXXXXXX XXXXXX /d/ 4/11/2002
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Name Date
For the President of the University of Montpellier II
/s/ XXXXX XXXXXXXXXX /d/ 4/11/2002
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Name Date
Chairman and CEO of Novirio
/s/ XXXX-XXXXXX SOMMADOSSI /d/ 4/11/2002
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Name Date
