Exhibit 10.101
The omitted portions indicated by asterisks have been separately filed with the
Securities and Exchange Commission pursuant to a request for confidential
treatment under Rule 24b-2 of the Securities and Exchange Act of 1934, as
amended.
AMENDED AND RESTATED
INTELLECTUAL PROPERTY LICENSE AGREEMENT
BETWEEN
Q-MED AB
AND
HA NORTH AMERICAN SALES AB
DATED AS OF MARCH 7, 2003
AMENDED AND RESTATED
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This AMENDED AND RESTATED Intellectual Property License
Agreement (this "AGREEMENT") effective as of this 6th day of March, 2003, (the
"EFFECTIVE DATE") between Q-Med AB, a company organized under the laws of the
Kingdom of Sweden with corporate registration number 556258-6882 ("Q-MED" or
"LICENSOR"), and HA North American Sales AB, a company organized under the laws
of the Kingdom of Sweden with corporate registration number 556636-3718 ("NEWCO"
or "LICENSEE").
RECITALS
WHEREAS, Licensor and Q-Med Holding Sweden AB, a company
organized under the laws of the Kingdom of Sweden and a wholly-owned subsidiary
of Q-Med ("HOLDCO") entered into that certain License Agreement dated as of
December 20, 2002 (the "LICENSE AGREEMENT");
WHEREAS, Holdco subsequently assigned the License Agreement to
Newco pursuant to the Asset Transfer Agreement (as defined herein);
WHEREAS, Licensor and Newco desire to amend and restate the
License Agreement on the terms and conditions set forth below.
NOW, THEREFORE, in consideration of the premises and the
representations, warranties, covenants and agreements contained herein and for
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, intending to be legally bound hereby, the Parties hereto
hereby agree as follows:
ARTICLE I
DEFINITIONS
1.1 Definitions. As used in this Agreement, the following
terms shall have the meanings set forth or as referenced below:
"ACTION" shall mean any action, claim, suit, litigation,
arbitration, investigation, notification, audit or other proceeding brought by a
Governmental Authority or other Person.
"AESTHETIC ENHANCEMENT" shall mean the alteration of the
visual appearance, visual form or visual shape of the naked human body or any of
its components; provided that Aesthetic Enhancement shall not be deemed to
include modification, restoration, adjustment or correction of functions of the
human body or any of its component parts.
"AFFILIATE" of a Person shall mean, with respect to any
Person, any other Person that directly or indirectly, through one or more
intermediaries, controls, is controlled by, or is under common control with,
such Person. As used in this definition, the term "CONTROL" means the
possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of a Person, whether through ownership
of voting securities, by contract, or otherwise.
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"AGREEMENT" shall mean this Agreement, as the same may be
amended or supplemented from time to time in accordance with the terms hereof.
"ASSET TRANSFER AGREEMENT" shall mean the Asset Transfer
Agreement, dated as of December 27, 2002 between Holdco and Newco, a true and
correct copy of which, including any and all amendments, modifications or
supplements thereto, is attached hereto as Schedule C.
"BUSINESS DAY" shall mean any day other than a Saturday, a
Sunday or a day on which banks in Sweden or New York are authorized or obligated
by Law or executive order to remain closed.
"CANADA'S FDA" shall mean Canada's Food and Drugs Act, R.S.C.
1985, c. F-27, as amended.
"CAP" shall have the meaning set forth in Section 9.1(b).
"CHANGE IN CONTROL" shall mean (a) the disposition of all or
substantially all of the outstanding shares, assets or business of a Party on a
consolidated basis; or (b) any transaction or event (or series of transactions
or events) as a result of which any Person (other than an Affiliate of such
Party), acting singly or as a part of a "partnership, limited partnership,
syndicate or group" (within the meaning of Section 13(d)(3) of the United States
Securities Exchange Act of 1934, as amended): (i) acquires (by purchase, merger,
consolidation or otherwise) or for the first time controls or is able to vote
(directly or through nominees, beneficial ownership, proxy or contract) fifty
percent (50%) or more of the aggregate of all outstanding equity securities of a
Party; or (ii) acquires (by purchase, merger, consolidation or otherwise) or the
first time is able to nominate or designate (directly or through nominees,
beneficial ownership, proxy or contract) at least fifty percent (50%) of the
nominees to the board of directors of such Party, in each of (a) or (b), in the
event that Licensor or Licensee, as the case may be, was not a party to the
applicable transaction and/or such transaction was not approved by the Board of
Directors of Licensor or Licensee, as the case may be.
"CIPO" shall mean the Canadian Intellectual Property Office.
"CLOSING" shall have the meaning set forth in the Share
Purchase Agreement.
"COMMERCIAL DISTRIBUTION" shall mean a distribution in
accordance with the terms and conditions of the Transaction Agreements for
purposes other than Investigational Distribution.
"COMPLAINING PARTY" shall have the meaning set forth in
Section 3.10(b).
"CONFIDENTIAL LICENSEE INFORMATION" shall have the meaning set
forth in Section 8.1.
"CONFIDENTIAL LICENSOR INFORMATION" shall have the meaning set
forth in Section 8.2.
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"CONFIDENTIALITY AGREEMENT" shall have the meaning set forth
in the Share Purchase Agreement.
"EFFECTIVE DATE" shall have the meaning set forth in the
preface above.
"ESCROW AGREEMENT" shall have the meaning set forth in the
Share Purchase Agreement.
"FDA" shall mean the United States Food and Drug
Administration.
"FDCA" shall mean the United States Federal Food, Drug, and
Cosmetic Act of 1938, as amended (21 U.S.C. Sections 301 et. seq.).
"FIELD" shall mean dermatologic aesthetic enhancement and the
aesthetic enhancement of the lips.
"FOOD AND DRUGS ACT" shall mean the Canadian Food and Drugs
Act of 1985, as amended (R.S., c. F-27).
"GOVERNMENTAL AUTHORITY" shall mean any supranational,
national, federal, state, provincial or local judicial, legislative, executive
or regulatory authority.
"IMPROVEMENTS" shall mean any replacements, improvements or
modifications, including without limitation new indications or new uses, in each
case in the Field.
"INDEMNIFIABLE CLAIM" shall have the meaning set forth in
Section 9.4 herein.
"INDEMNIFIED PARTY" shall have the meaning set forth in
Section 9.3 herein.
"INDEMNIFYING PARTY" shall have the meaning set forth in
Section 9.3 herein.
"INITIAL ASSET TRANSFER AGREEMENT" shall mean the initial
Asset Transfer Agreement, dated as of December 20, 2002, by and between Q-Med
and Holdco, a true and correct copy of which, including any and all amendments,
modifications or supplements is attached hereto as Schedule B.
"INVESTIGATIONAL DISTRIBUTION" shall mean distribution in
accordance with the terms and conditions of the Transaction Agreements pursuant
to the requirements of 21 C.F.R. Part 812 in the United States and Part 3 of the
Canadian Medical Device Regulations SOR/98-282 in Canada.
"LAUNCH" of a Licensed Product shall mean the first offer for
sale of the Licensed Product to the trade.
"LAWS" shall mean all applicable laws, statutes, rules,
regulations, ordinances and other pronouncements of law of any Governmental
Authority.
"LICENSED KNOW-HOW" shall mean, except to the extent published
or otherwise known, all of Licensor's and its Affiliates' proprietary know-how,
trade secrets, unpatented
4
inventions, technical data, formulations, technical information and business and
marketing information which Licensor or any of its Affiliates now own or have
the right to license, or hereafter acquire or obtain the right to license during
the Term, but only to the extent necessary or reasonably useful, in the ordinary
course of Licensee's business, for marketing, importing, selling, offering for
sale, disposing, Commercial Distribution of, Investigational Distribution of,
commercializing or using the Licensed Products in the Field in the Territory,
including sales and marketing materials, and medical, clinical, toxicological
testing and scientific data, relating to the Licensed Products. For the
avoidance of doubt, Licensed Know-How shall not include information that
Licensor is under an obligation to unrelated Third Parties not to disclose, such
as patient data.
"LICENSED PATENTS" shall mean the U.S. Patent and Canadian
Patent Application set forth on Schedule A attached hereto and any other patent
or patent application or rights thereunder in the Territory that covers the
manufacture, use, import or sale of the Licensed Products, together with any
extensions, publications, reissues, continuations, divisionals,
continuations-in-part, reexamination certificates, substitutions or renewals,
supplemental protection certificates or certificates of inventions thereof owned
by Licensor or any of its Affiliates, or under which Licensor or any of its
Affiliates has the right to grant licenses in the Territory, as of the Effective
Date or during the Term.
"LICENSED PRODUCTS" ****
"LICENSED RIGHTS" shall mean the Licensed Patents and the
Licensed Know-How.
"LICENSEE INDEMNIFIED PERSONS" shall have the meaning set
forth in Section 9.1.
"LICENSES" shall mean the licenses granted under the Licensed
Rights set forth in Section 2.1.
"LICENSOR INDEMNIFIED PERSONS" shall have the meaning set
forth in Section 9.2.
"LOSS" or "LOSSES" shall mean any and all damages, fines,
fees, penalties, deficiencies, losses and expenses, including reasonable legal
fees and expenses but excluding loss of profits or other special, punitive or
consequential damages.
"NEW PRODUCTS" ****
"OUT-OF-FIELD USE" shall have the meaning set forth in Section
3.10(b).
"PARTY" shall mean Licensor or Licensee and, when used in the
plural, means both Licensor and Licensee or their respective Permitted
Transferees or Third Party transferees, in each case upon the consummation of a
Transfer in accordance with the terms and conditions herein.
"PATENT REQUEST" shall have the meaning set forth in Section
3.7.
"PERMITTED TRANSFEREE" shall mean Medicis Pharmaceutical
Corporation ("MEDICIS") or any Affiliate of the Licensor or Medicis, as
applicable, of whom the Licensor or
5
Medicis, as applicable, owns or controls more than fifty percent (50%) of the
voting securities or economic interest; provided that the Licensor or Licensee,
as applicable, shall remain directly liable for the performance by the Permitted
Transferee of all obligations of the Licensor or Licensee, as applicable, under
this Agreement and no Transfer to a Permitted Transferee hereunder shall relieve
the Licensor or Licensee, as applicable, of its obligations pursuant to this
Agreement.
"PERSON" shall mean any individual, firm, corporation,
partnership, limited liability company, trust, joint venture or other entity or
organization.
"PURCHASER" shall have the meaning set forth in the Share
Purchase Agreement.
"REGULATORY APPROVALS" shall have the meaning set forth in the
Supply Agreement.
"RESPONSIBLE PARTY" shall have the meaning set forth in
Section 3.10(b).
"SELLER" shall have the meaning set forth in the Share
Purchase Agreement.
"SHARE PURCHASE AGREEMENT" shall mean the Share Purchase
Agreement, dated as of February 10, 2003, as amended by Amendment No. 1 dated as
of March 7, 2003, between Q-Med International B.V., a company organized under
the laws of the Netherlands with its statutory seat at Amsterdam, the
Netherlands and its principal offices at Xxxxxxxxx 000, 0000 XX Xxxxxxxxx, xxx
Xxxxxxxxxxx and Startskottet 21914 AB (under proposed change of name to Medicis
Sweden Holdings AB), a Swedish limited liability company with corporate
registration number 556632-3548 (as the same may be amended from time to time in
accordance with its terms).
"SPECIAL TERMINATION PROVISIONS" shall have the meaning set
forth in the Supply Agreement.
"STEERING COMMITTEE" shall have the meaning set forth in the
Supply Agreement.
"SUPPLY AGREEMENT" shall mean the Supply Agreement, dated as
of the Closing under the Share Purchase Agreement, between Q-Med and Medicis (as
the same may be amended from time to time in accordance with its terms).
"TERM" shall have the meaning set forth in Section 6.1.
"TERRITORY" shall mean the United States, including its
territories and possessions, and Canada.
"THIRD PARTY" shall mean any Person who or which is neither a
Party nor an Affiliate of a Party.
"TPD" shall mean Canada's Therapeutic Products Directorate.
"TRADEMARKS" shall have the meaning set forth in the Asset
Transfer Agreement.
6
"TRANSACTION AGREEMENTS" shall mean this Agreement, the Share
Purchase Agreement, the Supply Agreement, the Escrow Agreement and the
Confidentiality Agreement.
"TRANSFER" shall mean any Change in Control or Volitional
Change in Control of a Party or a transfer or assignment by a Party of its
rights and obligations under this Agreement; provided, however, that for
purposes of this Agreement the actions set forth in Section 2.1 hereof shall not
be deemed to be a Transfer.
"USPTO" shall mean the United States Patent and Trademark
Office.
"VOLITIONAL CHANGE IN CONTROL" shall mean (a) the disposition
of all or substantially all of the outstanding shares, assets or business of a
Party on a consolidated basis; or (b) any transaction or event (or series of
transactions or events) as a result of which any Person (other than an Affiliate
of such Party), acting singly or as a part of a "partnership, limited
partnership, syndicate or group" (within the meaning of Section 13(d)(3) of the
United States Securities Exchange Act of 1934, as amended): (i) acquires (by
purchase, merger, consolidation or otherwise) or for the first time controls or
is able to vote (directly or through nominees, beneficial ownership, proxy or
contract) fifty percent (50%) or more of the aggregate of all outstanding equity
securities of a Party; or (ii) acquires (by purchase, merger, consolidation or
otherwise) or for the first time is able to nominate or designate (directly or
through nominees, beneficial ownership, proxy or contract) at least fifty
percent (50%) of the nominees to the board of directors of such Party, in each
of (a) or (b), in the event that Licensor or Licensee, as the case may be, was a
party to the applicable transaction or of which the Board of Directors of
Licensor or Licensee, as the case may be, shall have approved.
1.2 Other Definitional Provisions. (a) The words
"HEREOF", "HEREIN", "HERETO" and "HEREUNDER" and words of similar import, when
used in this Agreement, shall refer to this Agreement as a whole and not to any
particular provision of this Agreement.
(b) The terms defined in the singular shall have a
comparable meaning when used in the plural, and vice versa.
(c) The term "including" shall mean "including, without
limitation."
(d) When a reference is made in this Agreement to an
Article, a Section or Schedule, such reference shall be to an Article of, a
Section of or a Schedule to, this Agreement unless otherwise indicated.
ARTICLE II
LICENSE AND RESERVATION
2.1 Grant Of License. Subject to the terms and conditions
of this Agreement, Licensor hereby grants to Licensee a fully paid-up, exclusive
even as to Licensor, nonsublicensable (except as permitted in Section 11.1) and
nonassignable (except as permitted in Section 11.1) license to the Licensed
Rights in the Field in the Territory (i) to market, use, distribute for
Commercial Distribution or Investigational Distribution, import, offer for sale,
sell, commercialize or otherwise dispose of, but not to make or have made,
Licensed Products in the Territory, itself or to have such done on its behalf;
(ii) to market, offer for sale, sell, distribute for
7
Commercial Distribution or Investigational Distribution, use, commercialize or
otherwise dispose of Licensed Products in the Territory via the Internet, itself
or to have such done on its behalf, provided that any web site owned and
operated by or on behalf of Licensee is directed solely to users in the
Territory, and provided, further, that Licensee may only ship Licensed Products
or direct promotional materials related thereto to locations within the
Territory; and (iii) to conceive, but not develop, Improvements to the Licensed
Rights, provided with respect to (iii) herein that (x) Licensor remains the sole
source of development work for Licensee unless Licensor is unable to provide
Licensee with the research and development reasonably required by Licensee, in
which case the Steering Committee shall select a contract laboratory to provide
development work under Licensor's supervision and (y) Licensor retains ownership
of all Improvements, as set forth in Section 2.3 herein. Licensee shall not use
the Licensed Rights outside the Territory for any purpose or in the Territory
for any purpose other than as specifically authorized herein.
2.2 Reservation Of Rights. Other than as expressly stated
herein, Licensee shall have no other right to use or interest in the Licensed
Rights. Specifically, Licensee shall not have any interest in any other patents,
trademarks or other intellectual property owned, licensed, developed or
controlled by Licensor, other than as expressly provided in this Agreement or
other valid written agreements. Licensee undertakes not to make, market, use,
import, offer for sale, sell or in any other way take any action to
commercialize the Licensed Products or Licensed Rights outside the Territory.
Licensee shall use commercially reasonable efforts to direct to Licensor
customer requests for Licensed Products outside the Territory received through
Licensee's customer service, in each case only to the extent that such referral
does not violate or conflict with any confidentiality obligations binding on
Licensee. The Parties intend that this Agreement shall not restrict Licensor's
freedom to make, use, import, offer for sale, sell, practice or otherwise
commercialize the Licensed Products or Licensed Rights (a) within the Field
outside the Territory or (b) outside the Field whether or not in the Territory.
Except as specifically provided herein, Licensee grants no rights of ownership,
use or otherwise in Licensee's patents, trademarks, know-how or other
intellectual property.
2.3 Ownership Of Licensed Rights. Licensee acknowledges
that, as between Licensee and Licensor, Licensor is the sole owner of the
Licensed Rights and any Improvements to the Licensed Rights, including without
limitation products in whole or in part based on, utilizing or otherwise
incorporating the Licensed Rights, whether conceived of, created or developed by
Licensor or Licensee, but excluding (i) Improvements conceived by Licensee that
are not in whole or in part based on, do not utilize or do not otherwise
incorporate the Licensed Rights; and (ii) Improvements to the Licensed Rights
that the Parties' designees on the Steering Committee mutually agree shall be
jointly owned for the purpose of avoiding prior art status, such as under 35
U.S.C. Section 102(e). Licensee shall not directly or indirectly question,
attack, contest, or in any other matter impugn the validity, enforceability,
registration or Licensor's ownership of, or right to use the Licensed Rights and
any Improvements thereupon, including without limitation products in whole or in
part based on, utilizing or otherwise incorporating the Licensed Rights, nor
shall Licensee willingly become an adverse party to Licensor in any Action
contesting the validity or enforceability of, or Licensor's ownership of or
rights in, the Licensed Rights, except that Licensee shall be permitted to be an
adverse party in connection with a defensive counterclaim, and to assert any
claim or defense in any Action based on any dispute
8
arising out of or in connection with this Agreement, or the breach, termination,
or invalidity thereof.
2.4 Improvements. (a) Notwithstanding the foregoing, any
Improvements to the Licensed Rights (but excluding Improvements conceived by
Licensee that are not in whole or in part based on, do not utilize or do not
otherwise incorporate the Licensed Rights) shall be made available to Licensee
or be deemed included within the scope of the Licensed Rights without any
additional consideration on the part of Licensee. Without limiting the
generality of the foregoing, Licensee agrees not to, and not to assist any Third
Party to, apply to register or register title to any intellectual property
rights in the Licensed Rights or any Improvements thereupon, including
Improvements to Licensed Products that are, in whole or in part, based on,
utilizing or otherwise incorporating the Licensed Rights, except as mutually
agreed by the Parties' designees on the Steering Committee for the purpose of
avoiding prior art status, such as under 35 U.S.C. Section 102(e).
(b) Licensee hereby grants to Licensor a fully paid-up,
exclusive outside the Territory for all purposes and exclusive in the Territory
outside the Field, nonsublicensable (except as permitted in Section 11.1) and
nonassignable (except as permitted in Section 11.1) license to make, use,
market, distribute for Commercial Distribution or Investigational Distribution,
import, offer for sale, sell, commercialize or otherwise dispose of any
Improvements to the Licensed Rights, including Improvements of Licensed Products
that are, in whole or in part, based on, utilizing, or otherwise incorporating
the Licensed Rights, owned solely by Licensee or jointly by Licensee and
Licensor.
ARTICLE III
OBLIGATIONS
3.1 Diligence Efforts. Licensee shall use commercially
reasonable efforts to maximize sales of the Licensed Products in the Territory.
3.2 Markings. Licensee shall use commercially reasonable
efforts to substantially comply with all patent marking and placement of
corporate identifiers and identifiers of NASHA technology on the packaging and
package inserts of the Licensed Products as required by applicable Law in the
U.S. and Canada. Licensee shall use and display on all packaging and package
inserts of the Licensed Products Licensor corporate identifiers and identifiers
of NASHA technology that are reasonably requested by Licensor and are of a size,
format and location appropriate for said packaging as reasonably determined by
Licensee, provided that such identifiers shall be displayed in a reasonably
prominent manner. Licensee shall not use or display Licensor's corporate
identifiers or identifiers of NASHA technology other than on promotional
literature, packaging and package inserts, without Licensor's express written
consent, and in any event shall not use or display Licensor's corporate
identifiers or identifiers of NASHA technology in a manner inconsistent with
Licensor's use and display thereof. It shall not be considered a breach by
Licensee of this Section 3.2 if, through inadvertence or Third Party error, such
identifiers are not, or are incorrectly, displayed on a small number of
promotional literature, packages or package inserts of the Licensed Products.
9
3.3 Protection Of Licensor's Intellectual Property.
Licensee shall take such action as Licensor reasonably requests in writing, at
Licensor's expense except as otherwise determined by the Steering Committee in
accordance with the Supply Agreement, to assist Licensor in obtaining,
registering and perfecting the Licensed Rights and disclosing pertinent
information and executing documents in connection therewith.
3.4 Compliance With Relevant Law. Licensee shall, at its
sole expense, substantially comply with all applicable Laws and shall use
reasonable business practices in the operation of its business in connection
with the Licensed Products, including, without limitation, compliance with the
FDCA and FDA's regulations thereunder and the Food and Drugs Act and the
regulations thereunder.
3.5 Prosecution and Maintenance of Licensed Patents.
Subject to the terms and conditions of this Agreement, Licensor shall use
reasonable best efforts to prosecute and maintain all Licensed Patents in the
Territory in Licensor's name in accordance with the applicable terms set forth
herein. Except as otherwise set forth in Section 4.2 herein with respect to
Actions for the infringement, misappropriation or impairment of or damage to the
Licensed Rights, Licensor shall be responsible for all actions and costs
associated with maintaining the enforceability and validity of the Licensed
Patents, and paying maintenance fees and/or annuities, and all other costs
required to maintain the Licensed Patents. Licensor shall use reasonable best
efforts to prosecute each of the Licensed Patents either to issuance or until
administrative appeals to the Board of Patent Appeals and Interferences or its
Canadian equivalent are exhausted. Except as provided in Section 3.7 herein with
regard to patent applications requested by Licensee, the preparation and filing
of any new patent applications shall be entirely and solely at Licensor's
discretion.
3.6 Correspondence Relating to Patent Prosecution.
Licensor shall deliver to Licensee, or counsel designated by Licensee, copies of
all non-privileged correspondence to and from the USPTO and CIPO relating to the
Licensed Patents in the Territory, as well as all non-privileged correspondence
with the World Intellectual Property Organization relating to any International
Application designating the United States or Canada, and all non-privileged
correspondence with any national or regional patent office containing any
information that may reasonably be material to the validity, scope or
enforceability of the Licensed Patents, relating to applications corresponding
to or claiming priority with or from the Licensed Patents. Such correspondence
shall be delivered promptly after the origination or receipt of such
correspondence. With respect to the Licensed Patents, Licensee or counsel
designated by Licensee shall have the right to submit comments on such
correspondence to Licensor within fifteen (15) Business Days after Licensor
sends such correspondence to Licensee or counsel designated by Licensee. If
Licensee or counsel designated by Licensee timely submits comments to Licensor,
and subject always to the best judgment of Licensor and its counsel, Licensor
shall use commercially reasonable efforts to incorporate all reasonable comments
in its further correspondence with the USPTO or CIPO, provided incorporation of
the comments would not unreasonably delay, burden or increase the expense of the
prosecution of pending patent applications.
3.7 Divisional, Continuation and New Patent Applications.
From time to time Licensee may desire that Licensor file a divisional,
continuation or new application for patent in
10
the Territory embodying an invention conceived by Licensee and in whole or in
part based on, utilizing or otherwise incorporating the Licensed Rights. In such
circumstances, Licensee shall submit to the Steering Committee, in accordance
with the Supply Agreement, a request for patent filing detailing the invention,
the effect of the invention on the commercialization of the Licensed Products in
the Territory (if any) and any information known to Licensee regarding the
novelty, non-obviousness and general patentability of the invention (a "PATENT
REQUEST"). Licensee and Licensor shall cause their respective designees on the
Steering Committee, in accordance with the Supply Agreement, to decide whether
or not to approve the Patent Request, taking into consideration both any effect
on the commercialization of the Licensed Products in the Territory and the
patentability of the invention proposed for patenting. If the Steering Committee
in accordance with the Supply Agreement approves a Patent Request, Licensor
shall use commercially reasonable efforts to timely file a patent application
based on the invention detailed therein and to diligently prosecute such
application to issuance, provided that Licensee shall pay all reasonable costs
related to any patent application filed pursuant to a Patent Request and any
patent that issues therefrom to the extent the application and patent relate
exclusively to the Territory. To the extent the application and any patent that
issues therefrom are relevant to the worldwide market, Licensee and Licensor
shall cause their respective designees on the Steering Committee to determine
the appropriate allocation of cost as between Licensee and Licensor.
Notwithstanding Licensee's payment of prosecution and maintenance fees, any
patent application embodying an invention in whole or in part based on,
utilizing or otherwise incorporating the Licensed Rights, filed pursuant to a
Patent Request, or otherwise, and any patent that issues therefrom shall be
owned in its entirety by Licensor unless the Parties' designees on the Steering
Committee mutually agree that such application or patent shall be jointly owned
for the purpose of avoiding prior art status, such as under 35 U.S.C. Section
102(e). For the avoidance of doubt, the Parties intend that Licensee has the
right, on its own and at its sole expense, to prosecute patents based on its own
inventions to the extent, and only to the extent, such inventions are not in
whole or in part based on, do not utilize, and do not otherwise incorporate the
Licensed Rights.
3.8 March In Rights. If and only if Licensor is unwilling
or unable due to Licensor's bankruptcy, insolvency, appointment of receiver or
similar proceeding to maintain the Licensed Patents to the extent relevant to
the Licensed Products in the Territory, Licensee shall have the right to
prosecute and maintain such Licensed Patents in the Territory, provided that in
all events, ownership of all rights in and to such Licensed Patents shall remain
with Licensor.
11
3.9 Provision of Licensor Information and Access to
Licensor Employees. (a) Licensor shall, promptly after the Effective Date and at
Licensee's sole expense, use commercially reasonable efforts to deliver to
Licensee documentation of (1) the Licensed Know-How to the extent such
documentation (i) exists and (ii) is not subject to confidentiality restrictions
preventing its disclosure to Licensee and (2) any material published by Licensor
related to the Licensed Products, including but not limited to marketing and
sales materials, to the extent such documentation (i) exists and (ii) is
reasonably requested by Licensee for its use in the marketing, use, Commercial
Distribution, Investigational Distribution, importation, offering for sale,
sale, commercialization or other disposition of the Licensed Products in the
Territory. Licensor shall use commercially reasonable efforts to supplement such
documentation when new documentation reflecting the Licensed Know-How becomes
available to Licensor. For the avoidance of doubt, Licensor shall have no
obligation to author, create or produce initial or supplemental documentation to
the extent such documentation does not otherwise exist, but Licensor agrees to
share with Licensee such documentation related to the marketing, use, Commercial
Distribution, Investigational Distribution, importation, offering for sale,
sale, commercialization or other disposition of the Licensed Products in the
Territory as now exists or is hereafter created, other than documentation that
Licensor is under an obligation to unrelated Third Parties not to disclose, such
as patient data. All such documentation shall be provided by Licensor to the
Licensee in the form of one copy only in the English language or in another
language if no English copy exists.
(b) From time to time Licensor shall use commercially
reasonable efforts to provide Licensee reasonable access, at Licensee's sole
expense, to relevant employees designated by Licensor as having knowledge of
Licensed Know-How that is not reduced to writing and is reasonably requested by
Licensee for its use in the marketing, use, Commercial Distribution,
Investigational Distribution, importation, offering for sale, sale,
commercialization or other disposition of the Licensed Products in the
Territory, to allow Licensee to meet and interview such employees to enable
Licensee to better practice the Licenses granted under Section 2.1, provided
that, if not otherwise agreed between the Parties, such meetings (i) shall be
limited to no more than five (5) days per annum or, in any year in which
Licensee shall Launch a Licensed Product, no more than ten (10) days per annum,
of which no more than two (2) days at a time shall be consecutive; (ii) shall
occur upon not less than thirty (30) days' prior notice to Licensor; (iii) shall
only be conducted during normal business hours; and (iv) shall not unreasonably
disrupt or interfere with Licensor's normal operations.
3.10 Policing of Products. (a) The Parties shall use
commercially reasonable efforts to police the Licensed Products and their
channels of trade to ensure that (i) Licensor and its Affiliates, licensees or
designees do not sell, offer for sale, import, market, distribute or have
distributed, or otherwise dispose of Licensed Products within the Territory; and
(ii) Licensee and its Affiliates, licensees or designees do not sell, offer for
sale, import, market, distribute or have distributed, or otherwise dispose of
Licensed Products outside the Territory.
(b) The Parties shall use commercially reasonable efforts
to police their products to ensure that (i) products sold by Licensor and its
Affiliates, licensees or designees, other than Licensed Products sold by
Licensee and its Affiliates, licensees or designees, are not used in the Field
in the Territory; and (ii) Licensed Products sold by Licensee and its
Affiliates, licensees or designees are not used outside the Field in the
Territory (in either case an "OUT-OF-
12
FIELD USE"). In the event that either Party (the "COMPLAINING PARTY") believes
that products sold by the other Party (the "RESPONSIBLE PARTY") or its
Affiliates, licensees or designees in the Territory have been or are being used
for an Out-of-Field Use, the Complaining Party shall present the Responsible
Party with the full, complete and most probative evidence of such Out-of-Field
Use available to the Complaining Party. If, after review of the proof presented
by the Complaining Party, the Responsible Party agrees that products sold by
itself or its Affiliates, licensees or designees in the Territory have been or
are being used for an Out-of-Field Use, such Responsible Party shall compensate
the Complaining Party for the lost profits suffered by the Complaining Party due
to the Out-of-Field Use of products sold directly by such Responsible Party or
its Affiliates, licensees or designees in the Territory. If, after review of the
proof presented by the Complaining Party, the Responsible Party refuses to
compensate the Complaining Party for its lost profits in accordance with this
Section 3.10(b), the Parties shall submit their claims to arbitration in
accordance with the dispute resolution provisions of Article X herein.
ARTICLE IV
INFRINGEMENT OF LICENSED RIGHTS
4.1 Obligations. Each Party shall promptly notify the
other Party in writing of any actual or potential infringement, misappropriation
or impairment of or damage to the Licensed Rights, or threatened Action against
a Party that the Party's acts under or related to the Licensed Rights infringe,
misappropriate, impair or otherwise damage the intellectual property rights of a
Third Party, of which the Party is or becomes aware.
4.2 Actions. Licensor shall have the exclusive right to
bring an Action for the infringement or misappropriation or impairment of or
damage to the Licensed Rights and shall use all reasonable, diligent efforts to
pursue parties who have infringed, misappropriated, impaired or otherwise
damaged the Licensed Rights known to Licensor or identified in writing to
Licensor by Licensee. Licensor shall bear all expenses, have complete control
over, and recover all proceeds, settlements and damages with respect to any such
Action, provided that, if such infringement, misappropriation, impairment or
damage is due in whole or in part to the actions or inactions of Licensee,
Licensee shall reimburse Licensor for such expenses, including reasonable
attorney's fees and expenses, in proportion to the degree to which Licensee's
actions or inactions contributed to such infringement, misappropriation,
impairment or damage. Licensee agrees to cooperate fully with Licensor at
Licensor's expense in any such Action, and to be joined as a party in such
Action where required by Law. If Licensor fails to provide Licensee with
evidence reasonably sufficient to Licensee that Licensor has undertaken
demonstrable and reasonable efforts to xxxxx and investigate an infringement,
misappropriation, impairment or damage reported by Licensee in writing to
Licensor within sixty (60) days after it receives a written request from
Licensee to do so, or if Licensor fails to bring an Action in the Field in the
Territory to xxxxx an infringement, misappropriation, impairment or damage
within ninety (90) days after it receives a written request from Licensee to do
so, or if Licensor discontinues the prosecution of any such Action after filing,
Licensee may, in its discretion, undertake such Action as it deems necessary to
enforce the Licensed Rights. In such case, Licensee shall bear all expenses and
recover all proceeds, settlements and damages with respect to any such Action,
and Licensor shall assist Licensee, upon Licensee's request, at Licensee's sole
expense in taking any action to enforce the Licensed Rights and shall consent to
be joined as a party in such Action where
13
required by Law. In any Licensee-brought Action, Licensee shall promptly send to
Licensor a true copy of any and all notices or communications between Licensee
and the Third Party infringer as well as a true copy of any and all pleadings,
motions or other filings in or related to the Action. To the extent that there
are communications not in writing, Licensee shall periodically, but at least
monthly, provide to Licensor a report of all material communications bearing
upon the current status of the dispute as between Licensee and the Third Party
infringer, and any steps bearing upon resolution of that dispute. In no event
shall any Party settle any Action referred to in this Section 4.2 with any Third
Party, which settlement would materially affect any of the rights of the other
Party (as determined by that Party in its reasonable discretion) under this
Agreement, without the prior approval of the other Party, which approval shall
not be unreasonably withheld or delayed.
ARTICLE V
REPRESENTATIONS, WARRANTIES AND COVENANTS
5.1 Representations And Warranties of Licensor. Licensor
hereby represents and warrants to Licensee that:
(a) Corporate Organization and Authority. Licensor is a
company duly organized, validly existing and in good standing under the Laws of
the Kingdom of Sweden and has all requisite power and authority to execute and
deliver this Agreement and to perform its obligations hereunder. The execution
and delivery by Licensor of this Agreement, the performance by Licensor of its
obligations hereunder, and the consummation by Licensor of the transactions
contemplated hereby has been duly authorized by all requisite corporate action.
This Agreement has been duly executed and delivered by Licensor and, assuming
the due authorization, execution and delivery hereof by Licensee, constitutes a
legal, valid and binding obligation of Licensor, enforceable against Licensor in
accordance with its terms, except to the extent that such enforcement may be
subject to applicable bankruptcy, insolvency, reorganization, moratorium, or
other Laws of general application relating to or affecting enforcement of
creditors' rights and Laws concerning equitable remedies.
(b) No Conflict. The execution, delivery and performance
by Licensor of this Agreement and the consummation by Licensor of the
transactions contemplated hereby do not and will not, with or without the giving
of notice or the passage of time or both, violate, conflict with or cause a
breach or termination of or constitute a default under (i) the provisions of any
Law applicable to Licensor or its properties or assets; (ii) the provisions of
the constituent organizational documents or other governing instruments of
Licensor; (iii) any note, bond, mortgage, indenture, license, agreement or other
instrument or obligation to which Licensor is a party or by which Licensor, the
Licensed Products or the Licensed Rights are bound or subject; or (iv) any
judgment, decree, order or award of any court or Governmental Authority
applicable to Licensor or its properties or assets.
(c) Governmental and Third Party Consents. No consent,
approval, exemption or authorization is required to be obtained from, no notice
is required to be given to and no filing is required to be obtained from any
Third Party by virtue of the execution and delivery of this Agreement.
14
(d) Litigation. Except as set forth in Schedule 6.1(d),
as of the Effective Date (i) there are no Actions pending, or to Licensor's
knowledge threatened, which could reasonably be expected to have, individually
or in the aggregate, a material adverse effect on the prospects or condition of
the Licensed Products or the Licensed Rights nor (ii) to Licensor's knowledge,
do circumstances exist which are reasonably likely to result in any Action of
the kind described in clause (i) above.
(e) Licensor Know-How. The Licensed Know-How is not, as
of the Effective Date, readily ascertainable by proper means by those who can
obtain economic value from its knowledge or use and Licensor has taken steps
reasonable under the circumstances to ensure that the Licensed Know-How has been
maintained in confidence.
(f) Licensed Rights. Licensor or one of its Affiliates is
the sole and exclusive owner of, and has all rights, title and interest in and
to, or has the right to license the Licensed Rights. Licensor has the
unrestricted right to grant the Licenses hereunder and no other Person has any
license, claim or right in or to the Regulatory Approvals for each Licensed
Product. As of the Effective Date, no Actions are pending, or to Licensor's
knowledge threatened against Licensor alleging the Licensed Rights in any
respect are an infringement, misappropriation or impairment or have otherwise
caused damage to any Third Party or any Third Party's intellectual property
rights, or that challenge Licensor's ownership of, or the enforceability or
validity of the Licensed Rights. To the best of Licensor's knowledge after due
inquiry, the Licensed Rights do not and will not infringe, constitute a
misappropriation or impairment of or otherwise cause damage to or interfere with
any patent, copyright, trademark, design right or other intellectual property
rights of any other Person in the Territory. Licensor has complied and will,
during the Term, comply in all material respects with all provisions of the
patent acts, regulations, and statutes regarding the procurement and maintenance
of, all Licensed Rights in the Territory. Licensor is in compliance and will,
during the Term, remain in compliance with that certain settlement agreement
dated September 28, 1999, between Licensor and Biomatrix, Inc. in settlement of
Civil Case #99-CV-2021 in the U.S. District Court for the District of New Jersey
(Newark), Biomatrix, Inc. v. Xxxxx Xxxxxx, et al., Filed May 3, 1999. Licensor
has not specifically admitted that any claim of an unexpired patent or pending
patent application included within the Licensed Patents is invalid or
unenforceable through reissue, disclaimer (other than that in U.S. Patent No.
5,827,937 and Canadian Patent Application No. 2,226,488, wherein a disclaimer
has been filed with respect to claim 4) or otherwise. Licensor has adopted and
will use measures reasonable under the circumstances to enforce non-disclosure
and confidentiality policies and has obtained agreements from employees,
consultants and others relating to such matters that are reasonable under the
circumstances to protect its rights in and to the Licensed Rights.
(g) Third Party Rights. Neither Licensor nor its
Affiliates have granted to any Third Party or Affiliate any rights or licenses
or have otherwise taken any action that conflicts with or materially adversely
affects the rights and Licenses granted to Licensee under this Agreement and
will not grant any such rights or licenses to any Third Party during the Term.
(h) Schedules. All schedules in this Agreement are
complete and correct. Schedule A contains a complete and correct list of all
U.S. and Canadian patents and patent applications owned by Licensor or any of
its Affiliates that cover the marketing, manufacture,
15
use, Commercial Distribution, Investigational Distribution, importation,
offering for sale, sale, commercialization or other disposition of the Licensed
Products in the Field in the Territory.
(i) Government Authority. Licensor is not aware of any
Action or pending or threatened Action by any Governmental Authority, including,
but not limited to, the HC or FDA, that would prohibit or disapprove of the sale
of the Licensed Products in the Territory. Licensor is not aware that any
Governmental Authority, including, but not limited to, the HC and FDA, would
have a basis for prohibiting or not approving the sale of the Licensed Products
in the Territory.
5.2 Representations and Warranties of Licensee. (a)
Corporate Organization and Authority. Licensee is a company duly organized,
validly existing and in good standing under the laws of the jurisdiction of its
organization and has all requisite power and authority to execute and deliver
this Agreement and to perform its obligations hereunder. The execution and
delivery by Licensee of this Agreement, the performance by Licensee of its
obligations hereunder, and the consummation by Licensee of the transactions
contemplated hereby have been duly authorized by all requisite corporate action.
This Agreement has been duly executed and delivered by Licensee and, assuming
the due authorization, execution and delivery hereof by Licensor, constitutes a
legal, valid and binding obligation of Licensee, enforceable against Licensee in
accordance with its terms, except to the extent that such enforcement may be
subject to applicable bankruptcy, insolvency, reorganization, moratorium, or
other Laws of general application relating to or affecting enforcement of
creditors' rights and Laws concerning equitable remedies.
(b) No Conflict. The execution, delivery and performance
by Licensee of this Agreement and the consummation by Licensee of the
transactions contemplated hereby do not and will not, with or without the giving
of notice or the passage of time or both, violate, conflict with or cause a
breach or termination of or constitute a default under (i) the provisions of any
Law applicable to Licensee or its properties or assets; (ii) the provisions of
the constituent organizational documents or other governing instruments of
Licensee; (iii) any note, bond, mortgage, indenture, license, agreement or other
instrument or obligation to which Licensee is a party or by which Licensee, the
Licensed Products or the Licensed Rights are bound or subject; or (iv) any
judgment, decree, order or award of any court or Governmental Authority
applicable to Licensee or its properties or assets.
(c) Governmental and Third Party Consents. No consent,
approval, exemption or authorization is required to be obtained from, no notice
is required to be given to and no filing is required to be obtained from any
Third Party by Licensee by virtue of the execution and delivery of this
Agreement.
5.3 NO OTHER REPRESENTATIONS OR WARRANTIES. EXCEPT AS
EXPRESSLY SET FORTH HEREIN AND IN THE SUPPLY AGREEMENT, (I) LICENSOR MAKES NO
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, EITHER AT LAW OR IN EQUITY,
RELATED TO THE LICENSED RIGHTS OR LICENSED PRODUCTS, INCLUDING WITHOUT
LIMITATION, ANY REPRESENTATION OR WARRANTY AS TO VALUE, MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE OR FOR ORDINARY PURPOSES, OR ANY OTHER MATTER, (II)
LICENSOR
16
MAKES NO, AND HEREBY DISCLAIMS, ANY REPRESENTATION OR WARRANTY, INCLUDING ANY
IMPLIED WARRANTY OF MERCHANTABILITY AND WARRANTY OF FITNESS FOR A PARTICULAR
PURPOSE REGARDING THE LICENSED RIGHTS AND LICENSED PRODUCTS AND (III) THE
LICENSED RIGHTS ARE CONVEYED ON AN "AS IS, WHERE IS" BASIS AS OF THE EFFECTIVE
DATE AND LICENSEE SHALL RELY UPON ITS OWN EXAMINATION THEREOF. Without limiting
the foregoing, Licensee acknowledges that it has not and is not relying upon any
implied warranty of merchantability or fitness for a particular purpose, or upon
any representation or warranty whatsoever as to the prospects (financial,
regulatory or otherwise) or the reliability, suitability, ability to produce a
particular result, and validity, regarding the Licensed Rights after the date of
this Agreement, except that Licensee may rely on the representations and
warranties contained herein and in the Supply Agreement. This provision shall
not affect the rights or obligations of either Party hereto with respect to any
other Transaction Agreement.
5.4 Disclaimer Of Consequential, Incidental and
Contingent Damages. To the extent permitted by Law, Licensor shall not be
subject to and disclaims liability for all consequential, incidental and
contingent damages whatsoever of Licensee or any of its Affiliates arising out
of or relating to action or inaction under, performance or non-performance of,
or the breach of, this Agreement.
ARTICLE VI
TERM; TERMINATION
6.1 Term. The term of this Agreement ("TERM") commences
on the Effective Date and, unless earlier terminated pursuant to Section 6.2
lasts until the last to occur of (a) the last Licensed Patent in the Licensed
Rights expires, is abandoned or is finally adjudicated invalid and (b) the first
to occur of (i) all of the Licensed Know-How becomes publicly available, other
than by a breach by either Party of its obligations under Article VIII herein,
or (ii) until one hundred (100) years from the Effective Date.
6.2 Termination. (a) Licensor may terminate this
Agreement, effective upon written notice to Licensee, upon termination of the
Supply Agreement pursuant to the Special Termination Provisions.
(b) Either Party may terminate this Agreement if there
shall have been a Transfer by the other Party pursuant to a Change in Control
(other than a Volitional Change in Control) in violation of Section 11.1.
6.3 Effect of Termination. Upon the termination of this
Agreement in accordance with Section 6.2 Licensee shall (i) cease all use of the
Licensed Rights and promptly return all originals and copies of any Licensed
Know-How and Licensor Confidential Information in its possession or control to
Licensor and (ii) assign the Trademarks and any and all rights and interests it
or its Affiliates may have with respect to the Trademarks to Licensor or such of
Licensor's Affiliates as Licensor may designate, by executing a trademark
assignment agreement substantially in the form of the Trademark Assignment
Agreement attached hereto as Schedule D.
17
6.4 Survival. Article VIII [Confidentiality], Article IX
[Indemnification] and Article X [Dispute Resolution], and Sections 11.8
[Expenses] and 11.15 [Publicity] shall survive the expiration or termination of
this Agreement for any reason; provided, however, that termination pursuant to
Section 6.2 will not relieve a defaulting or breaching party from any liability
to the other party hereto.
ARTICLE VII
CERTAIN FURTHER COVENANTS RELATED TO TRADEMARKS
AND INTERNET WEBSITES
7.1 Assignment of Trademarks and Consent to Registration
of Domain Names. Licensor acknowledges and warrants that, pursuant to the
Initial Asset Transfer Agreement and the Asset Transfer Agreement, Licensor has
transferred and assigned to Holdco and Holdco has transferred and assigned to
Newco all of the good will, reputation, trademarks, service marks and trade
names, both registered and unregistered (collectively the "ASSIGNED
TRADEMARKS"), and irrevocably agrees to Licensee's registration and ownership of
the domain names listed on Schedule E (the "DOMAIN NAMES"), all of which are
associated with the Licensed Products. Licensor shall provide to Licensee copies
of any other executed instruments evidencing the assignment or conveyance of the
Assigned Trademarks by Licensor to Holdco, and the assignment or conveyance of
same by Holdco to Newco, together with copies of documents reflecting the
recordation of such assignments or conveyances under applicable local law.
Subject to the rights transferred and assigned to Holdco that Holdco transferred
and assigned to Newco, Licensor has maintained for the benefit of Holdco, and
now shall continue to maintain on behalf of Newco, US Trademark Application No.
76/267,260, and will promptly assign said application to Newco when the USPTO
grants the request that the application be accorded the benefit of 15 U.S.C.
Section 1126 (e).
7.2 Representation and Warranty Concerning Trademarks.
Licensor represents and warrants that, at the time of the Initial Asset Transfer
Agreement, it (a) was the sole owner of the Assigned Trademarks and the goodwill
represented by them, and (b) had the authority to assign unencumbered ownership
of the Assigned Trademarks and the goodwill they represent to Holdco.
7.3 Infringement. The Parties shall promptly notify each
other in writing of any actual or potential infringement, misappropriation or
other impairment of the Assigned Trademarks, or any threatened Action that the
Licensee's or its Affiliates' use of the Trademarks infringes the intellectual
property rights of others, of which it is or becomes aware.
7.4 Distinctly Different Trade Dress. To reduce the
possibility or likelihood of confusion between the Assigned Trademarks, which
will be owned and controlled in the Territory by Licensee and the trademarks of
Licensor, which will be owned and controlled by Licensor, the Parties agree that
if Licensee adopts a new unique or distinctive trade dress for the Licensed
Products in the Territory, Licensor and its Third Party Licensees shall refrain
from changing or modifying the trade dress for Licensor's other products in the
Territory in a way as to make it confusingly similar to the trade dress of
Licensee, provided that Licensee shall bear its own expenses with regard to
adoption or modification of Licensee's trade dress, and provided
18
further that Licensee shall not adopt a trade dress which is incompatible with
or unduly burdensome on Licensor's packaging or other equipment.
7.5 Web Sites. Licensee may display links to Licensor's
web site on its own web site for the purpose of directing Internet users to
information contained on Licensor's web site; provided, that (i) after the
Closing under the Share Purchase Agreement this link shall accurately convey and
communicate the nature of their business relationship; (ii) Licensor shall
display links to the portions of the Licensee's web site that are intended for
United States web site visitors only after a PMA Approval (as defined in the
Share Purchase Agreement) with respect to Restylane(R) has been received by
Licensor from the FDA; and (iii) Licensor and Licensee shall ensure that their
respective web sites substantially comply with the applicable FDA and the
applicable TPD requirements. To the extent Licensor has the right to grant
licenses to the content of its web site, Licensor grants Licensee the right to
use the content of those portions of Licensor's web site that relate to the
Licensed Products in connection with the marketing, offering for sale, and
distribution of the Licensed Products, including the right to copy, prepare
derivative works and publicly display such content, and Licensor shall in all
instances act reasonably in allowing Licensee to copy and display content from
Licensor's web site in all cases at Licensee's reasonable request and sole
expense, provided that any web site owned and operated by or on behalf of
Licensee is directed solely to users in the Territory. It is understood and
agreed that it shall not be a breach of this provision if users outside the
Territory are able to gain access to web sites owned or operated by or on behalf
of Licensee, provided that Licensee does not take any affirmative measures to
target such users and takes commercially reasonable measures to limit the web
sites' response to users located within the Territory, for example, by declining
to provide additional information to users who identify themselves as being
located outside the Territory.
7.6 Restriction on Transfer. Prior to the date on which
all of the Milestone Payments to be paid pursuant to Section 2.2 of the Share
Purchase Agreement have been paid to and received by the Seller (as defined in
the Share Purchase Agreement), Licensee shall not and shall cause its Affiliates
not to Transfer or otherwise encumber, in whole or in part any of the Trademarks
except in accordance with Section 11.1 herein. Any attempted or purported
Transfer in connection with a Volitional Change in Control or encumbrance of the
Trademarks in contravention of this Section 7.6 shall be void ab initio and of
no force or effect and any attempted or purported Transfer in connection with a
Change in Control (other than a Volitional Change in Control) shall give rise to
a right of termination by the Licensor pursuant to Section 6.2(b).
ARTICLE VIII
CONFIDENTIALITY
8.1 Licensor's Obligation. Except for the proper exercise
of any rights granted or reserved under other provisions of this Agreement,
Licensor agrees that it shall keep confidential, and shall cause its officers,
employees, directors and counsel to keep confidential and shall not publish or
otherwise divulge to a Third Party, other than any agents or representatives of
Licensor (provided that such agents and representatives are informed of the
confidential and proprietary nature of such information and agree in writing to
the conditions set forth in this Article VIII; and provided, further, that
Licensor shall be responsible for any breach
19
of this Section by such representatives and agents), or use for itself, unless
Licensee shall have given its prior written approval, during the Term and for a
period of ten (10) years after the end of the Term, any information (and all
tangible and intangible embodiments thereof) of a confidential and proprietary
nature relating to Licensee's and its Affiliates' business or operations,
including non-public information concerning Licensee's products, processes,
customers and suppliers and the products and processes of Licensee's customers
and suppliers furnished to Licensor by Licensee in connection with this
Agreement but excluding Licensed Know-How which is addressed in Section 8.3
below (any of the foregoing, "CONFIDENTIAL LICENSEE INFORMATION"); provided,
however, that Licensor shall have the right to disclose any Confidential
Licensee Information provided hereunder if such disclosure is necessary (a) in
connection with the securing of any governmental approval necessary for the
performance by Licensor of any of its obligations hereunder or under any other
agreement with Licensee, (b) for the purpose of complying with governmental
regulations or (c) by Law or legal process. Licensor shall promptly notify
Licensee of Licensor's intent to make any disclosure of Confidential Licensee
Information prior to making such disclosure so as to allow Licensee adequate
time to take whatever action Licensee may deem to be appropriate to protect the
confidentiality of the Confidential Licensee Information and Licensor will
cooperate and provide any assistance that the Licensee may reasonably request in
connection with the foregoing. For the avoidance of confusion, all information
provided by Licensee to Licensor in connection with this Agreement shall be
deemed Confidential Licensee Information unless Licensor can demonstrate that
such information is available to it from sources other than Licensee that are
not under a duty of confidentiality with respect thereto. Licensor shall use
Confidential Licensee Information only in connection with and for the purposes
reflected in this Agreement and the other Transaction Agreements and for no
other purpose.
8.2 Licensee's Obligation. Except for the proper exercise
of any rights granted or reserved under other provisions of this Agreement,
Licensee agrees that it shall keep confidential, and shall cause its officers,
employees, directors and counsel to keep confidential and shall not publish or
otherwise divulge to a Third Party, other than any agents or representatives of
Licensee (provided that such agents and representatives are informed of the
confidential and proprietary nature of such information and agree in writing to
the conditions set forth in this Article VIII; and provided, further, that
Licensee shall be responsible for any breach of this Section by such
representatives and agents), or use for itself, unless Licensor shall have given
its prior written approval, during the Term and for a period of ten (10) years
after the end of the Term, any information (and all tangible and intangible
embodiments thereof) of a confidential and proprietary nature relating to
Licensor's and its Affiliates' business or operations, including non-public
information concerning the Licensed Rights, Licensor's products, processes,
customers and suppliers and the products and processes of Licensor's customers
and suppliers, furnished to Licensee by Licensor in connection with this
Agreement but excluding Licensed Know-How which is addressed in Section 8.3
below (any of the foregoing, "CONFIDENTIAL LICENSOR INFORMATION"); provided,
however, that Licensee shall have the right to disclose any Confidential
Licensor Information provided hereunder if such disclosure is necessary (a) in
connection with the securing of any governmental approval necessary for the
performance by Licensee of any of its obligations hereunder or under any other
agreement with Licensor, (b) for the purpose of complying with government
regulations, or (c) by Law or legal process. Licensee shall promptly notify
Licensor of Licensee's intent to make any disclosure of Confidential Licensor
Information prior to making such disclosure so as to allow Licensor
20
adequate time to take whatever action Licensor may deem to be appropriate to
protect the confidentiality of Confidential Licensor Information and Licensee
will cooperate and provide any assistance that the Licensor may reasonably
request in connection with the foregoing. For the avoidance of confusion, all
information provided by Licensor to Licensee in connection with this Agreement
shall be deemed Confidential Licensor Information unless Licensee can
demonstrate that such information is available to it from sources other than
Licensor that are not under a duty of confidentiality with respect thereto.
Licensee shall use Confidential Licensor Information only in connection with and
for the purposes reflected in this Agreement and the other Transaction
Agreements and for no other purpose.
8.3 Protection of Licensed Know-How. Each Party shall use
protective measures that are commercially reasonable and in no event less
stringent than those used by such Party within the Party's own business to
protect its comparable know-how to maintain the confidentiality of the Licensed
Know-How and shall cause its officers, employees, directors and counsel to keep
confidential and shall not publish or otherwise divulge to a Third Party, other
than any licensees, Affiliates, agents or representatives under appropriate
confidentiality agreements during the Term and after the end of the Term unless
the Licensed Know-How: (a) is or has become known to the public other than
through a breach of this Agreement; or (b) lawfully was disclosed to the
disclosing Party on a non-confidential basis by a Third Party not prohibited
from disclosing such information by a legal, contractual or fiduciary
obligation, provided, however, such exception only applies to such portion of
the Licensed Know-How that falls within one or more of the above-cited
exceptions. Licensee shall have the right to disclose any Licensed Know-How if
such disclosure is necessary (a) in connection with the securing of any
governmental approval necessary for the performance by Licensee of any of its
obligations hereunder or under any other agreement with Licensor, (b) for the
purpose of complying with government regulations, or (c) by Law or legal
process, provided however, that the foregoing shall not alter the Parties'
rights and obligations with respect to regulatory matters and compliance
therewith as more fully set out in the Supply Agreement. For the avoidance of
confusion, all Licensed Know-How shall be deemed confidential information
subject to this Section 8.3 unless Licensee can demonstrate that the information
falls within one or more of the above-cited exceptions. Licensee shall use the
Licensed Know-How only in connection with and for the purposes reflected in this
Agreement and the other Transaction Agreements and for no other purpose.
8.4 Permitted Disclosure Or Use Of Information. Nothing
in this Article VIII shall prevent the disclosure or use of Confidential
Licensee Information or Confidential Licensor Information, as the case may be,
that (a) is or has become known to the public other than through a breach of
this Agreement or (b) lawfully was disclosed to the disclosing Party on a
non-confidential basis by a Third Party not prohibited from disclosing such
information by a legal, contractual or fiduciary obligation.
8.5 Use Of Information to Perform Obligations under this
Agreement. Within the limits set forth in this Article VIII, each Party shall be
entitled at all times to use all Confidential Licensee Information or
Confidential Licensor Information, as the case may be, provided by the other
Party to the extent necessary to perform its obligations under this Agreement.
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ARTICLE IX
INDEMNIFICATION
9.1 Licensor. (a) Licensor shall indemnify, defend and
hold harmless Licensee, its Affiliates and their respective officers, directors,
stockholders, employees, agents and representatives (the "LICENSEE INDEMNIFIED
PERSONS") from and against any Losses that they may incur resulting from any
Action to the extent arising out of or due to (i) any breach of any
representation, warranty, covenant or other agreement by Licensor or any of its
Affiliates to the extent such Affiliate is bound under this Agreement (provided,
that for purposes of this Section 9.1(a)(i), Section 5.1(d)(ii) shall be read
without regard to qualification with respect to knowledge); (ii) any act or
omission of Licensor or Licensee occurring before the Closing under the Share
Purchase Agreement with respect to the Licensed Rights, Trademarks, the Licensed
Products or any other matter that is the subject of this Agreement; or (iii) the
infringement, misappropriation or impairment of or damage to any Third Party's
intellectual property rights arising out of the Licensee's exercise of the
Licensed Rights or the Licensee's marketing, use, distribution, importation,
sale, or disposition of Licensed Products, or the Licensee's use of the
Confidential Licensor Information.
(b) Licensor shall not have any liability under Section 9.1(a)
unless the aggregate of all Losses relating thereto for which Licensor would,
but for this Section 9.1(b), be liable exceeds on a cumulative basis an amount
equal to $159,000, and then only to the extent of any such excess, after which
the entire amount of such Losses which is payable pursuant to the provisions of
Section 9.1 shall be paid by Licensor subject to the Cap (as such term is
defined below); provided that Licensor shall not have any liability under
Section 9.1(a) for any individual item where the Loss relating to such item is
less than $10,000; provided, further, however, that Licensor's aggregate
liability under Section 9.1(a) shall in no event exceed the aggregate of the
amounts paid to and received by Seller (as defined in the Share Purchase
Agreement) pursuant to Section 2.2 of the Share Purchase Agreement (the "CAP").
All amounts paid by Licensor to Licensee Indemnified Persons pursuant to Section
9.1 of this Agreement and all amounts paid by Seller to Purchaser Indemnified
Persons pursuant to Section 9.1 of the Share Purchase Agreement shall be
aggregated for purposes of determining the satisfaction of the Cap. The
limitations of this Section 9.1(b) shall not apply to any claim for
indemnification made under Section 3.10(b) herein. Licensor and its Affiliates
shall have no liability under Section 9.1(a) to the extent a Licensee
Indemnified Person has been paid pursuant to the Supply Agreement or the Share
Purchase Agreement for an Indemnifiable Claim involving the identical
substantive issue.
9.2 Licensee
(a) Licensee shall indemnify, defend and hold harmless
Licensor, its Affiliates and their respective officers, directors, stockholders,
employees, agents and representative (the "LICENSOR INDEMNIFIED PERSONS") from
and against any Losses that they may incur resulting from any Action to the
extent arising out of or due to (i) any breach, from and after the Closing under
the Share Purchase Agreement, of any representation, warranty, covenant or other
agreement of the Licensee or any of its Affiliates to the extent such Affiliate
is bound under this Agreement or (ii) any FDA or TPD action related to the web
site link referenced in Section 7.5 arising out of an act or omission by the
Licensee.
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(b) Licensee shall not have any liability under Section
9.2(a) unless the aggregate of all Losses relating thereto for which Licensee
would, but for this Section 9.2(b), be liable exceeds on a cumulative basis an
amount equal to $159,000, and then only to the extent of any such excess;
provided that Licensee shall not have any liability under Section 9.2(a) for any
individual item where the Loss relating to such item is less than $10,000;
provided, further, however, that the Licensee's aggregate liability under
Section 9.2(a) shall in no event exceed the Cap. All amounts paid by Licensee to
Licensor Indemnified Persons pursuant to Section 9.2 this Agreement and all
amounts paid by Purchaser to Seller Indemnified Persons pursuant to Section 9.2
of the Share Purchase Agreement shall be aggregated for purposes of determining
the satisfaction of the Cap. The limitations of this Section 9.2(b) shall not
apply to any claim for indemnification made under Section 3.10(b) herein.
Licensee and its Affiliates shall have no liability under Section 9.2(a) to the
extent a Licensor Indemnified Person has been paid pursuant to the Supply
Agreement or the Share Purchase Agreement for an Indemnifiable Claim involving
the identical substantive issue.
9.3 Notice of Claims. If there occurs an event which any
of the Persons to be indemnified under this Article IX asserts is indemnifiable
pursuant to Section 9.1 or 9.2 (the "INDEMNIFIED PARTY"), the Party or Parties
seeking indemnification shall so notify the Party from whom indemnification is
sought (the "INDEMNIFYING PARTY") promptly in writing describing such Loss, the
amount or estimated amount thereof, if known or reasonably capable of
estimation, and the method of computation of such Loss, all with reasonable
particularity and containing a reference to the provisions of this Agreement in
respect of which such Loss shall have occurred. If any Action is instituted by
or against a Third Party with respect to which the Indemnified Party intends to
claim any liability as a Loss under this Section 9.3, the Indemnified Party
shall promptly notify the Indemnifying Party of such Action and tender to the
Indemnifying Party the defense of such Action. A failure by the Indemnified
Party to give notice and to tender the defense of the Action in a timely manner
pursuant to this Section 9.3 shall not limit the obligation of the Indemnifying
Party under this Article IX, except to the extent such Indemnifying Party is
materially prejudiced thereby.
9.4 Control Of Claims. The Indemnifying Party under this
Article IX shall have the right, but not the obligation, to conduct and control,
through counsel of its choosing, any Action for which indemnification is sought
pursuant to this Article IX ("INDEMNIFIABLE CLAIM"), and if the Indemnifying
Party elects to assume the defense thereof, the Indemnifying Party shall not be
liable to the Party or Parties seeking indemnification hereunder for any legal
expenses of other counsel or any other expenses subsequently incurred by such
Party or Parties in connection with the defense thereof; provided that if the
Indemnified Party has been advised in writing by outside counsel that there is a
potential conflict between the interests of the Indemnifying Party and the
Indemnified Party, the reasonable out-of-pocket fees and expenses of one
separate counsel for the Indemnified Party shall be paid by the Indemnifying
Party and such separate counsel shall be selected by the Indemnified Party in
its sole discretion. Notwithstanding the foregoing, the reasonable legal fees
and expenses of counsel selected by the Indemnified Party in its sole discretion
in connection with an Indemnifiable Claim as to which the Indemnifying Party
does not assume the defense or is not entitled to assume the defense shall be
considered Losses for purposes of this Article IX. The Indemnifying Party may
compromise or settle such Action, provided that the Indemnifying Party shall
give the Indemnified Party advance notice of any proposed compromise or
settlement, provided, further, that the
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Indemnifying Party shall not compromise or settle any Indemnifiable Claim
without the prior written approval of the Indemnified Party, such approval not
to be unreasonably withheld or delayed, unless all relief provided is paid or
satisfied in full by the Indemnifying Party. No Indemnified Party may compromise
or settle any Indemnifiable Claim without the prior written approval of the
Indemnifying Party. If the Indemnifying Party elects not to control or conduct
the defense or prosecution of an Indemnifiable Claim, the Indemnifying Party
nevertheless shall have the right to participate in the defense or prosecution
of any Indemnifiable Claim and, at its own expense, to employ counsel of its own
choosing for such purpose. The Parties hereto shall cooperate with each other
and their respective counsel in the defense negotiation settlement or
prosecution of any Indemnifiable Claim.
9.5 Survival. The representations and warranties of the
Parties contained in this Agreement shall survive until the eighteen (18) month
anniversary of the termination or expiration of this Agreement pursuant to
Section 6.1 and the covenants to be performed following the Effective Date shall
survive until the date that is six (6) months after the end of the applicable
period for performance thereof.
9.6 Indemnification Calculations. The amount of any
Losses for which indemnification is provided under this Article IX shall be
computed net of any insurance proceeds received by the Indemnified Party in
connection with such Losses. If an Indemnified Party receives insurance proceeds
in connection with Losses for which it has received indemnification, such Party
shall refund to the Indemnifying Party the amount of such insurance proceeds
when received, up to the amount of indemnification received. An Indemnified
Party shall use its commercially reasonable efforts to pursue insurance claims
with respect to any Losses.
9.7 Exclusive Remedies. Except as otherwise set forth
herein, the remedies set forth in this Article IX will be the exclusive remedies
available to the Parties hereto with respect to any Losses or any other damages,
costs or expenses of any kind or nature or any other claim or remedy directly or
indirectly resulting from, arising out of or relating to any of this Agreement
(including alleged breaches of representation, warranty, covenant or any other
term or provision or for any alleged misrepresentation), the Licensed Rights and
the transactions contemplated hereby; provided that nothing herein shall limit
in any way any Party's remedies in respect of fraud by the other Party in
connection herewith or in connection with the transactions contemplated hereby.
Notwithstanding anything to the contrary in this Agreement, the Parties hereby
agree that any and all Actions resulting from, arising out of or based upon the
provisions of this Agreement may be asserted or brought solely under and in
accordance with the terms of this Agreement.
ARTICLE X
DISPUTE RESOLUTION
10.1 Purpose. It is the objective of the Parties to
establish procedures to facilitate the resolution of disputes arising under this
Agreement in an expedient manner by mutual cooperation and without resort to
litigation. To accomplish this objective, the Parties agree to follow the
procedures set forth in this Article X if and when a dispute arises under this
Agreement.
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10.2 Arbitration. The Parties agree that any dispute
arising out of or in connection with this Agreement, or the breach, termination,
or invalidity thereof, shall be resolved as follows. In the event of a dispute
between the Parties, either Party may initiate the dispute resolution procedures
of this Section 10.2 by providing written notice (the "NOTICE OF CLAIM") to the
other Party identifying the dispute and stating the desire to resolve the
dispute. After receiving the Notice of Claim, respondent will respond in writing
by stating its position and setting forth a proposed resolution of the dispute.
If claimant and respondent are not able to resolve the dispute within twenty
(20) days thereafter, the matter in dispute shall be settled by arbitration in
accordance with the Rules of Arbitration of the International Chamber of
Commerce (the "ICC"). The arbitral tribunal shall be comprised of three
arbitrators; the Party-nominated arbitrators shall be appointed in accordance
with the Rules of the ICC. The Party-nominated arbitrators will have thirty (30)
days to appoint a chair. If they are unable to make such appointment within that
time, then the chair shall be appointed in accordance with the Rules of the ICC.
The place of arbitration shall be Stockholm, Sweden. The language to be used in
the arbitral proceedings shall be English. The Parties agree that the losing
Party shall bear the cost of the arbitration filing and hearing fees, the cost
of the arbitrators and the ICC administrative expenses and the attorney's fees
and expenses of each Party. The Parties agree to reasonable document discovery
provided the requesting Party makes a showing of relevance and need to the
tribunal. Notwithstanding the foregoing, (1) either Party may seek an immediate
injunction from a court of competent jurisdiction (i) to prevent the disclosure
of Confidential Licensor Information or Confidential Licensee Information, as
applicable, in violation of Article VIII herein or (ii) to prevent an assignment
of this Agreement in violation of Section 11.1 herein; and (2) Licensor may seek
an immediate injunction from a court of competent jurisdiction in the event
Purchaser (as defined in the Share Purchase Agreement) breaches its obligations
to make the Milestone Payments as required under Section 2.2(b) of the Share
Purchase Agreement.
ARTICLE XI
MISCELLANEOUS
11.1 Assignment and Sublicense. The Parties may only
sublicense or Transfer their respective rights and obligations hereunder in
accordance with this Section 11.1.
(a) Commencing on the date hereof each of Licensor and
Licensee shall be entitled to sublicense its rights or obligations under this
Agreement without the written consent of the other Party hereto to a Permitted
Transferee for so long as such Affiliate continues to be a Permitted Transferee.
A sublicensing Party shall remain directly liable for the performance by its
Permitted Transferee of all obligations of such sublicensing Party under this
Agreement and no sublicense to a Permitted Transferee hereunder shall relieve
Licensor or Licensee of its obligations pursuant to this Agreement.
(b) Commencing on the date that is three (3) months
following the date of the Closing under the Share Purchase Agreement, each of
Licensor and Licensee shall be entitled to Transfer its rights or obligations
under this Agreement without the written consent of the other Party hereto, to a
Permitted Transferee of Licensor or Licensee, as applicable, for so long as such
Affiliate continues to be a Permitted Transferee; provided, that such Transfer
shall be null and void ab initio and of no further force and effect unless (i)
such Transfer was effected in accordance with the terms and conditions of this
Agreement and (ii) the Permitted Transferee, if
25
not already a Party hereto, shall have executed and delivered to the other Party
hereto, as a condition precedent to such Transfer, an instrument or instruments
reasonably satisfactory to the other Party hereto, confirming that the Permitted
Transferee shall be bound by the terms of this Agreement to the same extent
applicable to the transferring Party, as if such Permitted Transferee was
originally a Party hereto. Any such Permitted Transferee shall and the
transferring Party shall cause such Permitted Transferee to Transfer back to the
transferring Party (or to another Permitted Transferee of the transferring
Party), its rights and obligations hereunder prior to such Permitted Transferee
ceasing to be a Permitted Transferee of the transferring Party. Upon such
Permitted Transferee ceasing to be a Permitted Transferee hereunder, any
Transfer of rights and obligations hereunder shall be null and void from
inception and of no further force or effect. A transferring Party shall remain
directly liable for the performance by its Permitted Transferee of all
obligations of such transferring Party under this Agreement and no Transfer to a
Permitted Transferee hereunder shall relieve Licensor or Licensee of its
obligations pursuant to this Agreement.
(c) Except as otherwise provided in Section 2.1 hereof,
commencing on the date on which all of the Milestone Payments to be paid
pursuant to Section 2.2(b) of the Share Purchase Agreement have been paid to and
received by the Seller (as defined in the Share Purchase Agreement) (provided
that all such Milestone Payments may be pre-paid at any time, regardless of
whether such Milestone Payments are then due under Section 2.2 of the Share
Purchase Agreement) Licensee or its Permitted Transferees shall be entitled in
accordance with this clause (c) to Transfer or sublicense its rights and
obligations under this Agreement to a Third Party, subject to the prior written
consent of Licensor; provided, further, that (i) in the event of a Volitional
Change in Control such Transfer shall be null and void ab initio and of no
further force and effect unless (A) such Transfer was effected in accordance
with the terms and conditions of this Agreement and (B) the Third Party shall
have executed and delivered to Licensor as a condition precedent to such
Transfer, an instrument or instruments reasonably satisfactory to Licensor
confirming that the Third Party shall be bound by the terms of this Agreement to
the same extent applicable to the Licensee or its Permitted Transferee as if
such Third Party was originally a Party hereto and (ii) in the event of a Change
in Control (other than a Volitional Change in Control) such Transfer shall give
rise to a right of termination pursuant to Section 6.2(b) herein unless such
Transfer was effected in accordance with the terms and conditions of this
Agreement. The Parties agree that Licensor may only withhold its consent in the
event that Licensor reasonably determines (such determination to be made without
unreasonable delay, and such consent, or the withholding thereof, to be promptly
communicated once determined) that the proposed Third Party transferee or
sublicensee **** (iv) does not have financial condition at least comparable to
that of the Licensee as of Closing under the Purchase Agreement or (v) has been
or is currently debarred under the authority of the FDCA or the Food and Drugs
Act and/or regulations thereunder.
(d) Licensor or its Permitted Transferee shall be
entitled to Transfer or sublicense its rights and obligations under this
Agreement to a Third Party, subject to the prior written consent of Licensee;
provided that (i) in the event of a Volitional Change in Control such Transfer
shall be null and void ab initio and of no further force and effect, unless (A)
such Transfer was effected in accordance with the terms and conditions of this
Agreement and (B) the Third Party shall have executed and delivered to Licensee
as a condition precedent to such Transfer, an instrument or instruments
reasonably satisfactory to Licensee confirming that the
26
Third Party shall be bound by the terms of this Agreement to the same extent
applicable to Licensor or its Permitted Transferee as if such Third Party was
originally a Party hereto and (ii) in the event of a Change in Control (other
than a Volitional Change in Control) such Transfer shall give rise to a right of
termination pursuant to Section 6.2(b) herein unless such Transfer was effected
in accordance with the terms and conditions of this Agreement. The Parties agree
that Licensee may only withhold its consent in the event that Licensee
reasonably determines (such determination to be made without unreasonable delay,
and such consent, or the withholding thereof, to be promptly communicated once
determined) that (i) the proposed Third Party transferee or sublicensee does not
have the financial condition to perform Licensor's obligations under this
Agreement, (ii) if Licensor is not the surviving entity upon the consummation of
such proposed Transfer, upon the consummation of such proposed Transfer the
successor entity does not have manufacturing capacity at least comparable to
Licensor's manufacturing capacity immediately prior to such proposed Transfer,
(iii) such Transfer has not received all required Regulatory Approvals, or if
Licensor is not to be the surviving entity upon the consummation of such
proposed Transfer, upon the consummation of such proposed Transfer the proposed
Third Party transferee will not have all Regulatory Approvals required for its
performance of this Agreement or (iv) such proposed Third Party transferee or
sublicensee has been or is currently debarred under the authority of the FDCA or
the Food and Drugs Act and/or regulations thereunder.
(e) Licensor and Licensee, as the case may be, and each
of their respective present and former officers, directors, employees and
Affiliates shall be released and discharged of its respective rights and
obligations pursuant to this Agreement and from any and all claims, rights,
causes of actions or suits and recoveries related thereto upon the consummation
of a Transfer to a Third Party in accordance with the terms and conditions set
forth herein.
(f) Subject to the foregoing provisions of this Section
11.1, this Agreement shall be binding upon and inure to the benefit of the
successors and assigns of each of the Parties.
11.2 Notices. All notices or other communications
hereunder shall be deemed to have been duly given and made if in writing and if
served by personal delivery upon the Party for whom it is intended, if delivered
by registered or certified mail, return receipt requested, or by a national
courier service, or if sent by facsimile, provided that the facsimile is
promptly confirmed by telephone confirmation thereof, to the Person at the
address set forth below, or such other address as may be designated in writing
hereafter, in the same manner, by such Person.
If to Licensor:
Q-Med AB
Xxxxxxxxxxxxxx 00
000 00 Xxxxxxx, Xxxxxx
Attention: Xxxxxx Xxxxx
Telephone No.: x00 00 000 00 00
Facsimile No.: x00 00 000 00 00
27
with a copy to (which shall not constitute notice):
Xxxxxxx Xxxxxxx & Xxxxxxxx
Attention: Xxxxxxx Xxxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
If to Licensee prior to the Closing under the Share Purchase Agreement:
Q-Med AB
Xxxxxxxxxxxxxx 00
000 00 Xxxxxxx, Xxxxxx
Attention: Xxxxxx Xxxxx
Telephone No.: x00 00 000 00 00
Facsimile No.: x00 00 000 00 00
with a copy to (which shall not constitute notice):
Xxxxxxx Xxxxxxx & Xxxxxxxx
Attention: Xxxxxxx Xxxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
If to Licensee as of the Closing under the Share Purchase Agreement:
HA North American Sales AB
c/o Medicis Pharmaceutical Corporation
0000 X. Xxxxxx Xxxx
Xxxxxxxxxx Xxxxxxx, 00000-0000
Attention: Xxxxx Xxxxxxxx
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
with a copy to (which shall not constitute notice):
Xxxx Xxxxx, LLP
Attention: Wm. X. XxXxxxxx
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
28
11.3 Governing Law. This Agreement shall be governed by
and construed in accordance with the Laws of the State of New York, regardless
of Laws that might otherwise govern pursuant to applicable principles of
conflicts of Laws thereof.
11.4 Counterparts. This Agreement may be executed in one
or more counterparts, each of which shall be deemed an original, and all of
which shall constitute one and the same agreement.
11.5 Headings. The heading references herein are for
convenience purposes only, do not constitute a part of this Agreement and shall
not be deemed to limit or affect any of the provisions hereof.
11.6 Entire Agreement. This Agreement, each of its
appendices, exhibits, schedules and certificates, and all documents and
certificates delivered or contemplated in connection herewith and therewith
constitute the entire agreement between the Parties with respect to the subject
matter hereof and supersede all prior agreements or understandings of the
Parties relating thereto.
11.7 Severability. In the event that any one or more of
the provisions contained herein, or the application thereof in any
circumstances, is held invalid, illegal or unenforceable in any respect for any
reason, the Parties shall negotiate in good faith with a view to the
substitution therefor of a suitable and equitable solution in order to carry
out, so far as may be valid and enforceable, the intent and purpose of such
invalid provision; provided, however, that the validity, legality and
enforceability of any such provision in every other respect and of the remaining
provisions contained herein shall not be in any way impaired thereby, it being
intended that all of the rights and privileges of the Parties shall be
enforceable to the fullest extent permitted by Law.
11.8 Expenses. Each Party will bear its own expenses
incurred in connection with the negotiation and preparation of this Agreement
and, except as set forth in this Agreement, the performance of the obligations
contemplated hereby.
11.9 Further Actions. Each Party hereby agrees to use all
reasonable efforts to take, or cause to be taken, all actions and to do, or
cause to be done, all things reasonably necessary or proper and execute and
deliver such documents and other papers as may be required to make effective the
transactions contemplated by this Agreement.
11.10 Waiver. Any term or provision of this Agreement may
be waived at any time by the Party entitled to the benefit thereof only by a
written instrument executed by such Party. No delay on the part of any Party in
exercising any right, power or privilege hereunder will operate as a waiver
thereof, nor will any waiver on the part of such Party of any right, power or
privilege hereunder operate as a waiver of any other right, power or privilege
hereunder nor will any single or partial exercise of any right, power or
privilege hereunder preclude any other or further exercise thereof or the
exercise of any other right, power or privilege hereunder.
11.11 Amendment. This Agreement may be modified or amended
only by written agreement of the Parties hereto signed by authorized
representatives of the Parties hereto and specifically referencing this
Agreement.
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11.12 No Third Party Rights. Other than as set forth in
Article IX and Section 11.17 herein, no provision of this Agreement will be
deemed or construed in any way to result in the creation of any rights or
obligations in any Person not a Party to this Agreement.
11.13 Construction. This Agreement will be deemed to have
been drafted by each Party and will not be construed against any Party as the
draftsperson hereof. Whenever this Agreement refers to a number of days, such
number shall refer to calendar days unless business days are specified.
11.14 Appendices, Exhibits, Schedules and Certificates.
Each appendix, exhibit, schedule and certificate attached hereto is incorporated
herein by reference and made a part of this Agreement.
11.15 Publicity. Neither Party shall issue or release any
media release or public announcement (including any announcements made via any
posting on the World Wide Web or Internet), or other similar publicity
announcing the existence of this Agreement or relating to any term or condition
of this Agreement in any country or the relationships created by this Agreement
without three (3) Business Days' prior written notice, including by e-mail, to
the other Party and the prior agreement of the other Party on the relevant
wording relating to the Agreement or term or condition of the Agreement.
Notwithstanding the foregoing each Party shall have the right to issue media
releases, immediately and without prior consent of the other Party that disclose
any information required by the rules and regulations of the Securities and
Exchange Commission, the Stockholm Stock Exchange or applicable Law; provided
that the disclosing Party shall notify, including by e-mail, the other Party no
later than simultaneously with such issuance of such disclosure and shall use
commercially reasonable efforts to provide a copy of the relevant wording
relating to the Agreement, or any term or condition thereof to the other Party
prior to the disclosure thereof. As of the Closing under the Share Purchase
Agreement, Licensor shall contact Licensee's Investor Relations Group for
approval and Licensee shall contact **** for approval.
11.16 Enforcement. The Parties agree that irreparable
damage would occur in the event that any of the provisions of this Agreement
were not performed in accordance with their specific terms. It is accordingly
agreed that the Parties shall be entitled to specific performance of the terms
of this Agreement, this being in addition to any other remedy to which they are
entitled at law or in equity.
11.17 Certain Affiliate Transfers
Neither Party shall (1) invest, directly or indirectly, in an
Affiliate which has operations or conducts activities in the field of Aesthetic
Enhancement, or (2) transfer or make available any of its activities, operations
or assets in the field of Aesthetic Enhancement (including research and
development, marketing, know-how or other intellectual property, management of
regulatory relations and protection of intellectual property) to an Affiliate,
without causing such Affiliate to enter into an agreement for the benefit of the
other Party by which such Affiliate agrees to be bound by the provisions hereof
in all relevant respects to the same effect as if such Affiliate had originally
been a Party hereto.
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IN WITNESS WHEREOF, the Parties have duly executed this Agreement as of
the day and year first above written.
Q-MED AB
By:/s/ Xxxxx Xxxxxx
---------------------------------------
Name: Xxxxx Xxxxxx
Title:
HA NORTH AMERICAN SALES AB
By:/s/ Xxxxx Xxxxxx
----------------------------------------
Name: Xxxxx Xxxxxx
Title:
