COLLABORATION TERMINATION AGREEMENT
Exhibit 4.2
This collaboration termination agreement (“Termination Agreement”) is effective
as of
May 10, 2007 (“Termination Date”)
BETWEEN:
WEX PHARMACEUTICALS INC. (formerly, International WEX Technologies Inc.)
(“WEX”)
AND:
LABORATORIOS DEL XX. XXXXXX, S.A.
(“ESTEVE”)
(each a “Party” and together, the “Parties”)
BACKGROUND:
| A. | The Parties have entered into the following agreements with respect to the development and
commercialization of certain technology: |
| (i) | License and Collaboration Agreement dated November 27, 2002; |
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| (ii) | Supply Agreement dated November 27, 2002; |
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| (iii) | Letter dated July 28, 2003; and |
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| (iv) | Revised Collaboration Letter dated March 9, 2005, |
(together,
the “Existing Agreements”); and
| B. | The Parties wish to enter into this Termination Agreement to terminate the Existing
Agreements
as of the Termination Date and to set out their respective rights and obligations relating
to matters
arising from such termination. |
NOW THEREFORE, for good and valuable consideration of the premises and the mutual promises and
covenants set out in this Termination Agreement (the receipt and sufficiency of which are hereby
acknowledged by the Parties), the Parties hereby agree as follows:
| 1. | Definitions |
The following words shall have the following meanings ascribed to them below:
| (a) | “Affiliate” means, with respect to a Party, any individual, corporation,
partnership, joint venture, trust, entity or other person that directly, or indirectly
through one or more intermediates, controls, is controlled by, or is under common
control with such Party. The term “control” means the possession, directly or
indirectly, of at least 50% of the share capital or voting rights or of the power to
direct or cause the direction of the management and policies of an entity, whether
through the ownership of voting securities, by contract or otherwise; |
| (b) | “Aggregate Patent Rights” means all of the WEX Patent Rights, ESTEVE Patent
Rights and Joint Patent Rights; |
| (c) | “ESTEVE Patent Rights” means one or more inventions which have been claimed in a
patent and/or patent application set out in Exhibit B attached to this Termination
Agreement and any and all foreign counterparts thereof, and any and all divisions or
divisional applications, reissues, continuations or continuation-in-part of any of
the foregoing, that might be filed or issued after the Termination Date; |
| (d) | Joint Patent Rights” means one or more inventions which have been claimed in
a patent and/or patent application set out in Exhibit C attached to this Termination
Agreement and any and all foreign counterparts thereof, and any and all divisions or
divisional applications, reissues, continuations or continuation-in-part of any of
the foregoing, that might be filed or issued after the Termination Date; |
| (e) | “Know-How” means any and all non-public data, methodologies, techniques,
processes, active ingredients, formulations, chemistry, manufacturing, controls,
specifications, regulatory filings, and other know-how provided or developed during
the Parties’ collaboration under any of the Existing Agreements, limited by ESTEVE
Patent Rights, WEX Patent Rights, Joint Patent Rights or Aggregate Patent Rights as
the context may require; and |
| (f) | “WEX Patent Rights” means one or more inventions which have been claimed in
a patent and/or patent application set out in Exhibit A attached to this Termination
Agreement and any and all foreign counterparts thereof, and any and all divisions or
divisional applications, reissues, continuations or continuation-in-part of any of
the foregoing, that might be filed or issued after the Termination Date. |
| 2. | Termination of Existing Agreements |
By mutual consent of the Parties, the Existing Agreements (including any and all survival
provisions therein) shall terminate and be of no force and effect as of the Termination
Date.
| 3. | Patent Rights |
| A. | Assignment of ESTEVE Patent Rights and Joint Patent Rights. |
ESTEVE hereby irrevocably and unconditionally assigns and transfers, and shall cause the
inventors to irrevocably and unconditionally assign and transfer, to WEX all rights, title
and interests throughout the universe in, to and associated with the ESTEVE Patent Rights,
Joint Patent Rights and related Know-How, free and clear of all liens, claims, charges,
security interests, encumbrances, and interests of any kind whatsoever. WEX shall reimburse
ESTEVE any and all reasonable out-of-pocket legal expenses and patent office fees and costs
incurred by ESTEVE in connection with the preparation, and recordation at the applicable
patent offices, of appropriate assignment documents. Until such assignment has been
recorded at the applicable patent offices, ESTEVE agrees to maintain (and not abandon) the
ESTEVE Patent Rights and Joint Patent Rights, provided that WEX bears the cost and expenses
related to the maintenance of the ESTEVE Patent Rights and Joint Patent Rights until
recordation of the assignment. If WEX is unable, for any reason whatsoever, to secure
signature(s) to any assignment or related document that is required to be executed by
ESTEVE and/or the inventors pursuant to the foregoing, ESTEVE hereby irrevocably designates
and appoints, and shall cause the inventors to irrevocably designate and appoint, WEX and
its duly authorized officers and agents as ESTEVE’s and inventors’ agents and
attorneys-in-fact to act for and on behalf of ESTEVE and the inventors and instead of
ESTEVE and the inventors, to execute and file the necessary documents and to do all other
lawfully permitted acts to further the purposes of the foregoing with the same legal force
and effect as if executed by ESTEVE and the inventors.
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If and to the extent that ESTEVE or any of its Affiliates has, but WEX does not have, a
copy of patent files (including data and other supporting information, and correspondences
received from and submitted to the applicable patent offices, reasonably necessary for
patent prosecution and enforcement purposes) pertaining to the ESTEVE Patent Rights, Joint
Patent Rights and/or related Know-How that might enable WEX to more fully develop, use and
exploit the ESTEVE Patent Rights, Joint Patent Rights and related Know-How, ESTEVE shall,
promptly upon WEX’ written request, provide a copy of such information and materials to
WEX, and the shipping expenses shall be borne by WEX.
| B. | WEX Patent Rights |
WEX shall be the sole and exclusive owner of all rights, title and interests in and to the
WEX Patent Rights and related Know-How and shall be free to develop, use and exploit the
WEX Patent Rights and related Know-How throughout the universe for WEX’s sole account.
| C. | Aggregate Patent Rights |
Commencing on the Termination Date, ESTEVE and its Affiliates shall cease any and all use,
directly or indirectly, of the Aggregate Patent Rights and related
Know-How.
WEX shall be solely responsible for the filing, prosecution and maintenance of the
Aggregate Patent Rights and shall bear the cost and expenses related thereto. WEX shall
also have the right to abandon any or all of the Aggregate Patent Rights in any or all
jurisdictions without notifying, or obtaining the consent of, ESTEVE.
Each party acknowledges the inventive input of the other party and its employees and/or
agents in respect of the inventions described in the Aggregate Patent Rights, and shall
abide by any legal rights derived therefrom.
| D. | Ongoing Patent Applications |
At WEX’s request and expense, ESTEVE has undertaken certain steps to:
| (i) | proceed with certain national phase filings of the Joint Patent Rights; and |
| (ii) | obtain a PCT application claiming priority to each of the following: |
REDACTED
listed in the ESTEVE Patent Rights.
WEX shall reimburse ESTEVE any and all reasonable out-of-pocket legal expenses,
translation fees, and patent office fees and costs incurred by ESTEVE associated with the
activities undertaken under paragraphs (i) and (ii) above. ESTEVE shall invoice WEX such
expenses, fees and costs in due course and WEX shall pay ESTEVE’s invoices within ten (10)
business days of receipt.
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| 4. | Pre- and Non-Clinical Data and Related Materials |
With respect to pre-clinical and non-clinical studies performed or subcontracted by
ESTEVE pursuant to the Letter dated July 28, 2003 and section 3 of the Revised
Collaboration Letter dated
March 9, 2005 or under any invoice submitted by ESTEVE to WEX for work described in such
invoice and paid for by WEX, ESTEVE shall, to the extent not already provided, deliver to
WEX within thirty (30) days of the Termination Date (or, for studies not yet paid for by
WEX, within thirty (30) days of receiving the applicable payment), copies of any and all
pre-clinical and non-clinical protocols (including amendments) and raw data and an
originally signed copy of final reports for all studies and work paid for by WEX, in both
paper and electronic (PDF) copies arising out of or relating to such studies and work,
including but not limited to works derived from or based on any of the foregoing (together
“Materials”). Without prejudice to the authors’ legal rights, ESTEVE hereby acknowledges
and agrees that WEX shall be the sole and exclusive owner of all rights, title and
interests in and to the Materials and intellectual property therein throughout the universe
and that WEX shall be free to develop, use and exploit the Materials and intellectual
property therein for WEX’s sole account. To the extent that any data, records or other
documents must be retained by ESTEVE or any of its subcontractors in accordance with
applicable laws, ESTEVE shall grant to, and shall secure for, WEX and the regulatory
authorities the right to access and audit (at WEX’ cost and expense) such data, records or
other documents used or referenced in the development or preparation of the Materials by
ESTEVE or its subcontractors, as the case may be. ESTEVE shall, and shall cause its
subcontractors (at WEX’ cost and expense) to, respond to reasonable enquiries of WEX and
the regulatory authorities arising from such access and audit. Commencing on the
Termination Date, ESTEVE and its Affiliates and their respective subcontractors shall cease
any and all uses of the Materials and intellectual property therein throughout the
universe, except as may be required by any applicable law.
ESTEVE hereby confirms that there are no other outstanding amounts due or owing by WEX
under any of the Existing Agreements, except as set out in Exhibit D attached to this
Termination Agreement. Upon receipt of detailed invoices from its agents and
subcontractors, ESTEVE shall remit such invoices to WEX for reimbursement, in accordance
with the costs set out in Exhibit D attached to this Termination Agreement, and WEX shall
thereafter reimburse ESTEVE for such costs within ten (10) business days of receipt.
| 5. | Destruction of TTX and Retention of Biological Specimens |
Within thirty (30) days of the Termination Date, ESTEVE shall provide WEX with a written
TTX accountability report on the receipt, return, use and disposal of all TTX and TTX
impurities (whether in powder, solution or other forms) supplied to ESTEVE by WEX to enable
WEX to meet its regulatory obligations. With respect to any unused TTX, at WEX’s expense,
ESTEVE shall have destroyed, and shall ensure that its Affiliates and each of their
respective subcontractors have destroyed, all unused TTX as soon as reasonably practicable
following the Termination Date, and ESTEVE shall promptly thereafter provide WEX with
written certification of such destruction. WEX shall reimburse ESTEVE the expenses
associated with the destruction of unused TTX within ten (10) business days of receipt of
ESTEVE’s invoice.
With respect to toxicology studies performed by ESTEVE’s subcontractors, and
pharmacokinetic studies performed by ESTEVE or its Affiliates, ESTEVE shall, at WEX’ cost
and expense, retain and cause its Affiliates and subcontractors to retain, biological
specimens such as blood, plasma and tissue specimens used in the conduct of such studies,
in accordance with applicable laws. ESTEVE shall, and shall cause its Affiliates and
subcontractors (at WEX’ cost and expense) to, grant to WEX and the regulatory authorities
the right to access such specimens, and respond to reasonable enquiries of WEX and the
regulatory authorities relating thereto.
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| 6. | Confidentiality |
On and after the Termination Date, each Party will use reasonable efforts to maintain the
confidentiality of any non-public information and materials, in any form or on any medium,
relating to the Aggregate Patent Rights and related Know-How.
This obligation of confidentiality shall not apply to any information that the receiving
party can demonstrate by competent records:
| (a) | is or hereafter becomes generally available to the public other than by reason
of any default by the receiving party of the confidentiality obligation under this
Termination Agreement; or |
| (b) | was independently developed by the receiving party having no access to any
confidential information received from the disclosing party or its representatives, or
generated by the receiving party or its representatives under any of the Existing
Agreements, at the time of such independent development; or |
| (c) | was available to the receiving party on a non-confidential basis from a source
who is not bound by a confidentiality agreement with the disclosing party and is not
otherwise obligated to keep such information confidential; or |
| (d) | has been pre-approved in writing for publication by the other party; or |
| (e) | is required to be disclosed in compliance with applicable laws or regulations
or order by a court or other regulatory body having competent jurisdiction. |
| 7. | Further Assurances |
Each Party shall cooperate fully with the other Party and shall do such other things and
execute and deliver such additional documents and agreements as the other Party, acting
reasonably, may request to give effect to and carry out the terms and intent of this
Termination Agreement. A Party shall not be entitled to any compensation or remuneration
for its provision of such cooperation and assistance, except that such Party shall be
reimbursed for any reasonable out-of-pocket expenses incurred thereto.
| 8. | Entire Agreement |
This Termination Agreement sets out the entire agreement of the Parties with respect to the
subject matter of this Termination Agreement and supersedes, cancels and replaces any and
all previous and simultaneous communications, representations, negotiations, discussions,
agreements or understandings (including but not limited to those set out in the Existing
Agreements), whether oral or written, between them with respect to the subject matter of
this Termination Agreement. There are no representations, warranties, terms, conditions,
undertakings or collateral agreements, express, implied or statutory, between the Parties
other than as expressly set out in this Termination Agreement. This Termination Agreement
may be modified only by a written instrument signed by both Parties or their successors or
assigns.
[Signature Page Follows]
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IN WITNESS WHEREOF, the Parties hereto have executed this Termination Agreement to be
effective as of the Termination Date.
| WEX PHARMACEUTICALS INC. | LABORATORIOS DEL XX. XXXXXX, S.A. | |||||||
Per:
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/s/ “Edge Wang”
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Per: | /s/ “Xxxxxx Xxxxxx”
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Name:
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Edge Wang | Name: | Xxxxxx Xxxxxx | |||||
Title:
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President and Chief Executive Officer | Title: | President | |||||
Date:
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May 7, 2007 | Date: | May 20, 2007 | |||||
EXHIBITS REDACTED
