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Exhibit 10.3
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This Agreement is effective as of February 1, 1999 (the "Effective
Date") by and between Millennium Pharmaceuticals, Inc., a Delaware corporation
having its principal office at 000 Xxxxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx
00000-0000 ("MPI"), and Millennium Predictive Medicine, Inc., a Delaware
corporation having its principal place of business at 000 Xxxxxxxx Xxxxx,
Xxxxxxxxx, Xxxxxxxxxxxxx, 00000-0000 ("MPMx").
INTRODUCTION
1. MPI is willing to transfer and license to MPMx, and MPMx desires
to acquire and license from MPI, certain technology and intellectual property
rights thereto for the purpose of allowing MPMx to develop and market products
and services in the MPMx Core Field (as defined below) using such technology and
intellectual property rights thereto.
2. In the future, MPI may develop certain inventions, improvements,
processes or know-how and, in each such case to the extent it is able, MPI is
willing to grant to MPMx a license or sublicense to use such developments,
technology or rights for research and to exploit such developments, technology
or rights for development and commercialization in the MPMx Core Field.
3. In the future, MPMx may develop certain inventions, improvements,
processes or know-how and, in each such case to the extent it is able, MPMx is
willing to grant to MPI a license or sublicense to use such developments,
technology or rights for research and to exploit such developments, technology
or rights for development or commercialization in the MPI Core Field (as defined
below).
4. In consideration of the transfer and license by MPI to MPMx of
such technology and rights, MPMx has agreed to issue certain equity securities
to MPI.
NOW, THEREFORE, in consideration of the mutual covenants set forth
herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, MPI and MPMx hereby agree as
follows:
SECTION 1. DEFINITIONS
As used herein, the following terms shall have the meanings set forth
below:
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1.1 AGREEMENT, PARTY AND OTHER GENERAL TERMS.
"AFFILIATE" means any corporation, company partnership, joint venture
and/or firm which controls, is controlled by or is under common control with a
Party. For the purposes of this definition, "control" shall mean, (a) in the
case of corporate entities, direct or indirect ownership of at least fifty
percent (50%) of the stock or shares having the right to vote for the election
of directors, and (b) in the case of non-corporate entities, direct or indirect
ownership of at least fifty percent (50%) of the equity interest with the power
to direct the management and policies of such non-corporate entities.
"AGREEMENT TERM" means the period commencing on the Effective Date and
ending on the later of (a) the fifth anniversary of the Effective Date and (b)
the date on which MPMx ceases to be an Affiliate of MPI.
"COLLABORATIVE PARTNER" means a party (other than MPI or an MPI
Subsidiary or MPMx) to a collaboration agreement with either of MPI or MPMx.
"CONFIDENTIAL INFORMATION" means all trade secrets or confidential or
proprietary information designated as such in writing, whether by letter or by
the use of an appropriate proprietary stamp or legend, prior to or at the time
any such trade secret or confidential or proprietary information is disclosed to
the receiving Party. Notwithstanding the foregoing, information which is orally
or visually disclosed to the receiving Party, or is disclosed in writing without
an appropriate letter, proprietary stamp or legend, shall constitute
Confidential Information if (i) it would be apparent to a reasonable person,
familiar with the business and the industry of the disclosing Party, that such
information is of a confidential or proprietary nature the maintenance of which
is important to the disclosing Party or if (ii) the disclosing Party, within
thirty (30) days after such disclosure, delivers to the receiving Party a
written document or documents describing such information and referencing the
place and date of such oral, visual or written disclosure and the names of the
employees or officers.
"DESIGNATED COORDINATORS" means the employees of the Parties (who shall
be designated by the Parties within 30 days of the Effective Date) responsible
for updating the schedules to this Agreement as required by Section 3.2 and for
maintaining the list of biological materials required by Section 3.3.
"FAMILY COUNCIL" means a governing body consisting of the chief
executive officer, chief business officer, chief financial officer and general
counsel of MPI (to the extent such offices are filled), any additional employees
of MPI as may be selected by the chief executive officer of MPI, the senior
executive officer of each MPI Subsidiary so long as such MPI Subsidiary remains
an Affiliate of MPI, and the senior executive officer of MPMx so long as MPMx
remains an Affiliate of MPI. Each of the foregoing representatives shall have
the right to invite one additional non-voting designee to attend meetings of the
Family Council.
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"FULLY-LOADED COST" means (a) costs directly attributable to an
activity (i.e., those costs which vary with such activity), including, but not
limited to, direct labor and benefit expenses for such activity and consumable
bulk and other materials, plus (b) fixed overhead costs allocable to the
activity, including, but not limited to, direct benefit and labor expenses for
technical services and support services, rent, utilities, building supplies,
depreciation, maintenance and repairs and insurance costs associated with such
activity, plus (c) a percentage of indirect overhead costs allocable to the
activity, including, but not limited to, consulting costs, lab supplies and
services, information systems, equipment service, safety compliance, applicable
license fees and collaborative expenses.
"MPI SUBSIDIARY" shall mean a subsidiary established by MPI to operate
within all or any portion of the MPI Core Field.
"PARTY" means MPI or MPMx; "PARTIES" means MPI and MPMx.
"PERSON" means any individual, partnership, corporation, firm,
association, unincorporated organization, joint venture, trust or other entity.
"RIGHTS EXCHANGE AGREEMENT" means the Rights Exchange Agreement between
MPI and MPMx of even date herewith.
"THIRD PARTY LICENSEE" means a bona fide collaborator, permitted
customer or service recipient, or third party licensee of MPI or an MPI
Subsidiary within the MPI Core Field or of MPMx within the MPMx Core Field.
1.2 SCIENTIFIC AND PRODUCT TERMS.
"DIAGNOMICS" means products and services used to describe a patient's
medical condition in a form or manner which has inherent prognostic, therapeutic
or economic benefit.
"DIAGNOMIC AND PHARMACOGENOMIC DATABASES" means compilations of data
and other information for Diagnomic and Pharmacogenomic purposes. Diagnomic and
Pharmacogenomic Databases shall not include compilations of data and other
information which relate to MPI's (or, if so authorized by MPI, an MPI
Subsidiary's) development and/or commercialization of products or services in
the MPI Core Field.
"DIAGNOMIC AND PHARMACOGENOMIC PROCESS TECHNOLOGY" means technology
which is related to or necessary for the generation and interpretation of
Diagnomic and Pharmacogenomic Databases and/or the use of Diagnomic and
Pharmacogenomic Software.
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"DIAGNOMIC AND PHARMACOGENOMIC SOFTWARE" means software for the
generation and interpretation of Diagnomic and Pharmacogenomic Databases
including, but not limited to, software used in connection with Patient
Management Services.
"DIAGNOSTIC PRODUCTS" means any product which is offered, or is
reasonably intended by MPMx to be offered, for sale to third parties (e.g.,
testing laboratories, physicians, hospitals and patients) pursuant to an
arms-length transaction, in the form of a device, compound or kit, that is used
to identify patients having a particular disease or predisposition to a disease
and/or to monitor the course, prognosis or recurrence of such disease in such
patients.
"DIAGNOSTIC PRODUCTS/TESTING SERVICES RESEARCH AND DEVELOPMENT
SERVICES" means any research and development service which is provided, or is
reasonably intended by MPMx to be provided, to third parties (e.g., diagnostics
development and manufacturing companies) pursuant to an arms-length transaction
in order to develop and/or commercialize Diagnostic Products or Diagnostic
Testing Services.
"DIAGNOSTIC TESTING SERVICES" means any testing service which is
provided, or is reasonably intended by MPMx to be provided, to third parties
(e.g., physicians, hospitals and patients) pursuant to an arms-length
transaction, in order to identify patients having a particular disease or
predisposition to a disease and/or to monitor the course, prognosis or
recurrence of such disease in such patients.
"MPMx PRODUCTS" means Diagnomic and Pharmacogenomic Databases,
Diagnomic and Pharmacogenomic Process Technology, Diagnomic and Pharmacogenomic
Software, Diagnostic Products and Pharmacogenomic Products.
"MPMx SERVICES" means Diagnostic Products/Testing Services Research and
Development Services, Diagnostic Testing Services, Patient Management Services,
Pharmacogenomics-Mediated Drug Research and Development Services,
Pharmacogenomic Products/Testing Services Research and Development Services and
Pharmacogenomic Testing Services.
"PATIENT MANAGEMENT SERVICES" means the provision of medical practice
guidelines based on Diagnomics and Pharmacogenomics.
"PHARMACOGENOMICS" means the correlation, based on analysis of animal
and/or human tissue (including, without limitation, cell lines), of a biological
marker (e.g., DNA, RNA or protein) with measurements of the safety and/or
efficacy of a preventative and/or therapeutic substance or candidate.
"PHARMACOGENOMICS-MEDIATED DRUG RESEARCH AND DEVELOPMENT SERVICES" or
"PMDRDS" means any research and development service which is provided, or is
reasonably intended by
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MPMx to be provided, to third parties engaged in developing therapeutic and/or
preventative products (e.g., biotechnology and pharmaceutical companies)
pursuant to an arm's-length transaction in order to assess on behalf of any such
third party the Pharmacogenomic properties of an existing candidate therapeutic
or preventative product or an existing therapeutic or preventative product being
developed by such third party. Pharmacogenomics-Mediated Drug Research and
Development Services shall not include the provision of research and development
services in order to discover or identify candidate therapeutic or preventative
products.
"PHARMACOGENOMIC PRODUCTS" means any product which is offered, or is
reasonably intended by MPMx to be offered, for sale to third parties (e.g.,
testing laboratories, physicians and hospitals) pursuant to an arms-length
transaction, in the form of a device, compound or kit, that is used to identify
patients (e.g., the genetic disaggregation of patient populations) based on
their response to a pharmaceutical compound.
"PHARMACOGENOMIC PRODUCTS/TESTING SERVICES RESEARCH AND DEVELOPMENT
SERVICES" or "PPTSRDS" means any research and development service which is
provided, or is reasonably intended by MPMx to be provided, to third parties
(e.g., diagnostic development and manufacturing) pursuant to an arms-length
transaction in order to develop and/or commercialize Pharmacogenomic Products or
Pharmacogenomic Testing Services. Pharmacogenomic Products/Testing Services
Research and Development Services shall not include the provision of research
and development services in order to discover or identify candidate therapeutic
or preventative products or the provision of Pharmacogenomics-Mediated Drug
Research and Development Services.
"PHARMACOGENOMIC TESTING SERVICES" means any testing service which is
provided, or is reasonably intended by MPMx to be provided, to third parties
(e.g., pharmaceutical companies, clinical research organizations, physicians and
hospitals) pursuant to an arms-length transaction, in order to identify patients
(e.g., the genetic disaggregation of patient populations) based on their
response to a pharmaceutical compound.
1.3 FIELD, PATENT, RETAINED RIGHT AND TECHNOLOGY TERMS.
"MPI CORE FIELD" means the identification, discovery, research,
development and commercialization of all products and services outside of the
MPMx Core Field. MPI may assign all or any portion of the MPI Core Field to an
MPI Subsidiary.
"MPI PROCESS TECHNOLOGY" means all Process Technology which is solely
or jointly developed, acquired or otherwise controlled by MPI during the
Agreement Term (excluding, however, Process Technology licensed to MPI by MPMx
pursuant to this Agreement and Process which MPI does not have the right to
sublicense to MPMx). MPI Process Technology shall include MPI Subsidiary Process
Technology. MPI Process Technology existing as of the date hereof includes,
without limitation, the Process Technology set forth on SCHEDULE A.
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"MPI PROCESS TECHNOLOGY PATENT RIGHT(S)" means a Patent Right that
covers MPI Process Technology.
"MPI PRODUCT TECHNOLOGY" means all Product Technology which is solely
or jointly developed, acquired or otherwise controlled by MPI during the
Agreement Term (excluding, however, Product Technology licensed to MPI by MPMx
pursuant to this Agreement and Product Technology which MPI does not have the
right to sublicense to MPMx). MPI Product Technology shall include MPI
Subsidiary Product Technology.
"MPI PRODUCT TECHNOLOGY PATENT RIGHT(S)" means a Patent Right that
covers MPI Product Technology.
"MPI SUBSIDIARY PROCESS TECHNOLOGY" means all Process Technology which
is solely or jointly developed, acquired or otherwise controlled during the
Agreement Term by an MPI Subsidiary which is an Affiliate of MPI at the time of
such development, acquisition or control (excluding, however, Process Technology
licensed to an MPI Subsidiary by MPI and Process Technology which the MPI
Subsidiary does not have the right to sublicense to MPI). MPI Subsidiary Process
Technology existing as of the date hereof includes, without limitation, the
Process Technology set forth on SCHEDULE B.
"MPI SUBSIDIARY PRODUCT TECHNOLOGY" means all Product Technology which
is solely or jointly developed, acquired or otherwise controlled during the
Agreement Term by an MPI Subsidiary which is an Affiliate of MPI at the time of
such development, acquisition or control (excluding, however, Product Technology
licensed to an MPI Subsidiary by MPI and Product Technology which an MPI
Subsidiary does not have the right to sublicense to MPI).
"MPMx CORE FIELD" means the identification, discovery, research,
development and commercialization of MPMx Products and MPMx Services.
"MPMx PROCESS TECHNOLOGY" means all Process Technology which is solely
or jointly developed, acquired or otherwise controlled by MPMx during the
Agreement Term (excluding, however, Process Technology licensed to MPMx by MPI
pursuant to this Agreement and Process Technology which MPMx does not have the
right to sublicense to MPI). MPMx Process Technology existing as of the date
hereof includes, without limitation, the Process Technology set forth on
SCHEDULE C.
"MPMx PROCESS TECHNOLOGY PATENT RIGHT(S)" means a Patent Right that
covers MPMx Process Technology.
"MPMx PRODUCT TECHNOLOGY" means all Product Technology which is solely
or jointly developed, acquired or otherwise controlled by MPMx during the
Agreement Term (excluding,
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however, Product Technology licensed to MPMx by MPI pursuant to this Agreement
and Product Technology which MPMx does not have the right to sublicense to MPI).
"MPMx PRODUCT TECHNOLOGY PATENT RIGHT(S)" means a Patent Right that
covers MPMx Product Technology.
"MPMx RETAINED RIGHTS" means all research, development and
commercialization rights, if any, retained by MPMx in the MPI Core Field
pursuant to the MPMx Collaboration Agreements.
"PATENT RIGHT" means a patent or patent application and all divisions,
continuations, continuations-in-part (but solely to the extent directed to
claims made in patents issued or patent applications filed expiration of the
Agreement Term), reissues, reexaminations, extensions, Supplementary Protection
Certificates and foreign counterparts thereof that is owned or otherwise
controlled by MPI or an MPI Subsidiary or MPMx.
"PROCESS TECHNOLOGY" means methods, systems, programs, technology,
algorithms and software (including source code), together with all unpatentable
intellectual property related thereto (including, without limitation, know-how,
trade secrets and copyrights), for the identification, discovery, research,
development and/or production of products and services in the MPI Core Field
and/or the MPMx Core Field. Examples of Process Technology include, without
limitation, DNA sequencing technologies, transcriptional profiling, genotyping
technologies, protein analytics, methods for screening small molecule libraries,
methods for automating and increasing throughput of process technologies,
software systems for the control and management of automated process
technologies, and software systems for DNA sequencing analysis, transcriptional
profiling, genotyping analysis, protein profiling analysis and drug discovery
informatics.
"PRODUCT TECHNOLOGY" means technology in the form of biological
materials and chemical compounds and the data relating thereto, together with
all unpatentable intellectual property related thereto (including, without
limitation, know-how, trade secrets and copyrights), that directly relates to
the development, manufacture and/or commercialization of a product or service in
the MPI Core Field and/or the MPMx Core Field. Product Technology shall exclude
Process Technology. Examples of Product Technology include, without limitation,
genes, gene fragments, proteins, peptides, vectors, cell lines, cells, small
molecules and natural product compounds and libraries.
SECTION 2. LICENSES
2.1 LICENSES TO PROCESS TECHNOLOGY. Subject to the terms and
conditions of this Agreement, MPI and MPMx hereby grant the following Process
Technology licenses.
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(a) MPI PROCESS TECHNOLOGY. MPI hereby grants to MPMx a royalty-free,
non-exclusive right and license, without the right to grant sublicenses
(except to the limited extent set forth in Section 6), to MPI's
interest in all MPI Process Technology (excluding software source code
unless reasonably required for the purposes set forth in subsection (c)
below) and all MPI Process Technology Patent Rights reasonably related
to, or reasonably useful or necessary for use in, the MPMx Core Field
for use by MPMx and MPMx's permitted sublicensees solely in the MPMx
Core Field. Additionally, during the Agreement Term, except with the
written consent of MPMx, MPI shall not be permitted or authorized to
use or practice the MPI Process Technology or MPI Process Technology
Patent Rights in the MPMx Core Field. Upon expiration of the Agreement
Term, the foregoing non-exclusive license granted to MPMx to use such
MPI Process Technology and MPI Process Technology Patent Rights solely
in the MPMx Core Field shall survive and shall include an unrestricted
right to grant sublicenses.
(b) MPMx PROCESS TECHNOLOGY. MPMx hereby grants to MPI a royalty-free,
non-exclusive right and license, with the right to grant sublicenses
(subject, however, to the restrictions set forth in Section 6), to
MPMx's interest in (i) all MPMx Process Technology (including software
source code) and all MPMx Process Technology Patent Rights reasonably
related to, or reasonably useful or necessary for use in, the MPI Core
Field for use by MPI and MPI's permitted sublicensees in the MPI Core
Field and (ii) all MPMx Process Technology (including software source
code) and all MPMx Process Technology Patent Rights reasonably related
to, or reasonably useful or necessary for use in, the MPMx Core Field
for use by MPI and MPI's permitted sublicensees in the MPMx Core Field.
Additionally, during the Agreement Term, except with the written
consent of MPI or the MPI Subsidiary whose core field would be
affected, MPMx shall not be permitted or authorized to use or practice
the MPMx Process Technology or MPMx Process Technology Patent Rights
outside the MPMx Core Field. Notwithstanding the non-exclusive license
granted to MPI in clause (ii) above, during the Agreement Term, except
with the written consent of MPMx, MPI shall not be permitted or
authorized to use or practice the MPMx Process Technology or MPMx
Process Technology Patent Rights in the MPMx Core Field. Upon
expiration of the Agreement Term, the non-exclusive license granted to
MPI in clause (i) above shall survive and shall include the
unrestricted right to grant sublicenses; provided, however, that MPI
shall have no right to sublicense MPMx Process Technology which also
constitutes an MPMx Product to Persons other than MPI Subsidiaries.
Although the non-exclusive license granted to MPI in clause (ii) above
shall not survive expiration of the Agreement Term, any sublicenses
granted by MPI (in accordance with Section 6) prior to the expiration
of the Agreement Term to Third Party Licensees to use the MPMx Process
Technology and MPMx Process Technology Patent Rights in the MPMx Core
Field shall survive the expiration of the Agreement Term. Moreover, to
the extent that MPI (in accordance with Section 5) shall have incurred
support obligations to Third Party Licensees of the MPMx Process
Technology and MPMx Process Technology Patent Rights in the MPMx Core
Field prior to the
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expiration of the Agreement Term, MPI shall have the right to use the
MPMx Process Technology and MPMx Process Technology Patent Rights in
order to fulfill such support obligations.
(c) OTHER PROVISIONS FOR SOFTWARE WITHIN THE MPI PROCESS TECHNOLOGY.
Situations in which the Parties anticipate that MPI will license to
MPMx the source code for software within the MPI Process Technology
include, without limitation, situations in which the Parties will
undertake collaborative software development work and situations in
which MPMx desires to develop software products incorporating software
included within the MPI Process Technology. With respect to specific
types of software included within the MPI Process Technology, the
Parties may mutually agree from time to time to enter into separate
software licensing agreements for the purpose of setting forth more
detailed rights and obligations of the Parties with respect to such
software.
2.2 LICENSES TO PRODUCT TECHNOLOGY. Subject to the terms and
conditions of this Agreement, MPI and MPMx hereby grant the following Product
Technology licenses.
(a) MPI PRODUCT TECHNOLOGY. MPI hereby grants to MPMx a royalty-free,
exclusive right and license, with the right to grant sublicenses, to
MPI's interest in all MPI Product Technology and all MPI Product
Technology Patent Rights reasonably related to, or reasonably useful or
necessary for use in, the MPMx Core Field for use by MPMx and MPMx's
permitted sublicensees solely in the MPMx Core Field. Upon expiration
of the Agreement Term, the foregoing exclusive license granted to MPMx
to use the MPI Product Technology and MPI Product Technology Patent
Rights solely in the MPMx Core Field shall survive. Notwithstanding the
foregoing, in the event that, during the Agreement Term, MPI or an MPI
Subsidiary enters into a collaboration agreement, strategic alliance,
license agreement or similar arrangement with a Collaborative Partner
(a "Collaboration Agreement"), and pursuant to Section 2(c) of the
Rights Exchange Agreement, MPI or an MPI Subsidiary is permitted to
grant licenses and rights to such Collaborative Partner in the MPMx
Core Field, then the license set forth in this subsection (a) shall not
apply with respect to MPI Product Technology and MPI Product Technology
Patent Rights developed or acquired pursuant to such Collaboration
Agreement.
(b) MPMx PRODUCT TECHNOLOGY. MPMx hereby grants to MPI a royalty-free,
exclusive right and license, with the right to grant sublicenses, to
MPMx's interest in all MPMx Product Technology and all MPMx Product
Technology Patent Rights reasonably related to, or reasonably useful or
necessary for use in, the MPI Core Field for use by MPI and MPI's
sublicensees solely in the MPI Core Field. Upon expiration of the
Agreement Term, the foregoing exclusive license granted to MPI to use
the MPMx Product Technology and MPMx Product Technology Patent Rights
solely in the MPI Core Field shall survive. Notwithstanding the
foregoing, in the event that, during the Agreement Term, MPMx enters
into a Collaboration Agreement with a Collaborative Partner, and
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pursuant to Section 2(c) of the Rights Exchange Agreement, MPMx is
permitted to grant licenses and rights to such Collaborative Partner
in the MPI Core Field, then the license set forth in this subsection
(b) shall not apply with respect to such MPMx Product Technology and
MPMx Product Technology Patent Rights developed or acquired pursuant
to such Collaboration Agreement.
2.3 EXCEPTIONS TO ROYALTY-FREE LICENSES. Notwithstanding the
royalty-free provisions of Sections 2.1 and 2.2, the following terms shall
apply.
(a) VARIATIONS FOR TECHNOLOGY WHICH CONSTITUTES A PRODUCT. With
respect to MPI Subsidiary Process Technology or MPI Subsidiary Product
Technology which also constitutes an independent product which is
marketed and sold to third parties by an MPI Subsidiary, MPI shall
have the right to alter the financial basis on which such MPI
Subsidiary Process Technology or MPI Subsidiary Product Technology
shall be provided to MPMx, it being understood that MPMx shall have no
obligation to use or practice such MPI Subsidiary Process Technology
or MPI Subsidiary Product Technology. With respect to MPMx Process
Technology or MPMx Product Technology which may also constitute an
MPMx Product, the Parties have agreed to the financial variations
listed on SCHEDULE D.
(b) SHARING OF COSTS ASSOCIATED WITH TECHNOLOGY. In the event that MPI,
an MPI Subsidiary or MPMx in the ordinary course of its business
licenses from a third party any Process Technology or Product
Technology which has broad application across the MPI Core Field and
MPMx Core Field, prior to the commencement of each calendar year, MPI,
each MPI Subsidiary which is an Affiliate of MPI, and MPMx shall agree
on an annual fixed percentage cost-sharing arrangement in respect of
the costs associated with such license from such third party. In the
event that such Process Technology or Product Technology does not have
broad application across the MPI Core Field and MPMx Core Field, the
parties who are anticipated to use such Process Technology or Product
Technology shall negotiate on a case-by-case basis an appropriate
cost-sharing arrangement. In the event that MPI or an MPI Subsidiary
outside the ordinary course of its business acquires from a third party
any Process Technology or Product Technology which has application in
the MPMx Core Field or in the event that MPMx outside the ordinary
course of its business acquires from a third party any Process
Technology or Product Technology which has application in the MPI Core
Field, the parties who are anticipated to use such Process Technology
or Product Technology shall negotiate on a case-by-case basis an
appropriate cost-sharing arrangement in respect of the costs associated
with such acquisition.
2.4 TRADEMARK LICENSES. The trademarks and service marks "Millennium"
and "Millennium Predictive Medicine" shall be co-exclusively licensed to MPMx
for use in the MPMx Core Field in accordance with the terms of the Trademark
License Agreement between MPI and
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MPMx of even date herewith (the "Trademark License Agreement"). The trademarks
and service marks "Diagnomics," "MPMx" and "Changing the Practice of Medicine"
shall be either exclusively licensed to MPMx in perpetuity or transferred to and
owned by MPMx.
SECTION 3. DISCLOSURE AND TRANSFER OF TECHNOLOGY
3.1 MPI shall disclose to MPMx on an ongoing basis during the Agreement
Term all MPI Process Technology and MPI Product Technology which MPI reasonably
believes to be pertinent to the MPMx Core Field. Notwithstanding the foregoing,
MPI need not disclose to MPMx any MPI Process Technology and/or MPI Product
Technology which MPI is precluded from disclosing under any agreement binding
upon it. Within 30 days of the end of each calendar quarter, the Designated
Coordinators shall update SCHEDULE A and SCHEDULE B.
3.2 MPMx shall disclose to MPI on an ongoing basis during the Agreement
Term all MPMx Process Technology and shall disclose to MPI on an ongoing basis
during the Agreement Term all MPMx Product Technology which MPMx reasonably
believes to be pertinent to the MPI Core Field. Notwithstanding the foregoing,
MPMx need not disclose to MPI any MPMx Process Technology and/or MPMx Product
Technology which MPMx is precluded from disclosing under any agreement binding
upon it. Within 30 days of the end of each calendar quarter, the Designated
Coordinators shall update SCHEDULE C
3.3 MPI shall provide to MPMx biological materials related to the MPMx Core
Field and MPMx shall provide to MPI biological materials related to the MPI Core
Field in either case, such as genes, gene fragments, vectors, cell lines,
strains, transgenic organisms, model organisms, DNA and DNA fragments, as well
as information relating to such materials. At the time of each transfer of
biological material the Designated Coordinators shall establish a written record
evidencing the transfer and indicating the type and amount of transfer and any
limitations on the transferred biological materials. The written record shall be
initialed by the appropriate officer or senior employee of each Party. With
respect to transfers which may have occurred prior to the Effective Date, the
Designated Coordinators shall promptly prepare a written record of such
previously transferred biological materials. Except for transfers from MPI to
the MPI Subsidiaries, the Party receiving such transferred biological materials
shall not be permitted or authorized to transfer such biological material to a
third party without the prior written authorization of the providing Party.
Notwithstanding the foregoing, neither Party is required to transfer any
biological materials which such Party is precluded from transferring under any
agreement binding upon such Party.
3.4 MPI shall provide reasonable technical assistance and instruction, at
MPMx's sole option and expense, in understanding, interpreting and applying MPI
Process Technology and MPI Product Technology, and MPMx shall provide reasonable
technical assistance and instruction, at MPI's sole option and expense, in
understanding, interpreting and applying MPMx
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Process Technology and MPMx Product Technology. Each Party shall make its
employees reasonably available for consultation by telephone, or in person at
the Party's offices, in connection with such assistance and instruction, all at
the requesting Party's expense.
SECTION 4. ISSUANCE OF EQUITY
In consideration for the transfers and licenses set forth herein, MPMx
hereby agrees to issue, and MPI hereby agrees to accept, among other
consideration, 6,250,000 shares of Series A Convertible Preferred Stock of MPMx.
SECTION 5. SUPPORT OF PROCESS TECHNOLOGY AND RELATED COMPENSATION.
(a) GENERAL OBLIGATIONS OF MPI, MPMx AND MPI SUBSIDIARIES. MPI shall be the
central repository for all Process Technology. Except as set forth in this
subsection (a) and as provided for in subsection (c) below, MPI shall have
the right and responsibility for supporting all Process Technology. Such
support obligation shall extend to MPMx, each MPI Subsidiary which is an
Affiliate of MPI, and each permitted sublicensee of Process Technology.
With respect to MPMx Process Technology, MPMx shall provide reasonable
assistance to MPI in connection with MPI's support obligations and, with
respect to MPI Subsidiary Process Technology, MPI shall contractually
require each MPI Subsidiary, until such time as it is no longer an
Affiliate of MPI, to provide reasonable assistance to MPI in connection
with its support obligations. Notwithstanding the foregoing, with respect
to MPMx Process Technology which also constitutes an MPMx Product, MPMx
shall have the right and responsibility for supporting Third Party
Licensees of such MPMx Process Technology in lieu of MPI and, with respect
to MPI Subsidiary Process Technology which also constitutes an independent
product which is marketed and sold to third parties by an MPI Subsidiary,
such MPI Subsidiary shall have the right and responsibility for supporting
Third Party Licensees of such MPI Subsidiary Process Technology in lieu of
MPI.
(b) COMPENSATION TO MPI. Prior to the commencement of each calendar year,
MPMx, each MPI Subsidiary which is an Affiliate of MPI, and MPI shall agree
on an annual support budget for MPI in exchange for MPI's performance of
its support obligations that run to MPMx and such MPI Subsidiaries. In the
event that MPMx or an MPI Subsidiary requires an unusual amount of support
from MPI in a given calendar year, MPMx or the MPI Subsidiary, as
applicable, and MPI shall negotiate on a case-by-case basis additional
compensation to be paid MPI by MPMx or the MPI Subsidiary, as applicable.
MPI shall be compensated for its support obligations that run to all other
permitted sublicensees of Process Technology by such sublicensees as
provided for in MPI's licensing arrangement with such sublicensees.
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(c) ELECTION NOT TO SUPPORT PROCESS TECHNOLOGY. Despite MPI's general
obligation to support all Process Technology, MPI shall have the right to
elect not to support certain components of the Process Technology. In the
case of any such MPMx Process Technology or MPI Subsidiary Process
Technology, MPMx or the applicable MPI Subsidiary shall have the right, but
not the obligation, to support such MPMx Process Technology or MPI
Subsidiary Process Technology for itself, each MPI Subsidiary which is an
Affiliate of MPI, and MPI, and shall have the option of extending support
of such MPMx Process Technology or MPI Subsidiary Process Technology to all
other permitted sublicensees of the MPMx Process Technology or MPI
Subsidiary Process Technology. In the event that MPMx declines to undertake
such right and option, MPMx and MPI may consent to such undertaking by an
MPI Subsidiary which is an Affiliate of MPI. In the event that the
applicable MPI Subsidiary declines to undertake such right and option, the
applicable MPI Subsidiary and MPI may consent to such undertaking by MPMx
or an MPI Subsidiary which is an Affiliate of MPI. In the case of any such
MPI Process Technology which is not MPI Subsidiary Process Technology, in
the event that MPMx or an MPI Subsidiary which is an Affiliate of MPI
desires to undertake such right and option, MPI may consent to such
undertaking by MPMx or such MPI Subsidiary. With respect to all components
of the Process Technology that MPI elects not to support, MPI shall provide
reasonable assistance to the party providing the support.
(d) COMPENSATION TO MPMx AND MPI SUBSIDIARIES. In the event that MPMx
elects to support components of the Process Technology on behalf of itself,
each MPI Subsidiary which is an Affiliate of MPI, and MPI, MPMx shall be
reimbursed by the MPI Subsidiaries and MPI for its Fully-Loaded Cost
associated with the rendering of such support services. In the event that
an MPI Subsidiary elects to support components of the Process Technology on
behalf of itself, MPMx, each MPI Subsidiary which is an Affiliate of MPI,
and MPI, such MPI Subsidiary shall be reimbursed by MPMx, the MPI
Subsidiaries and MPI for its Fully-Loaded Cost associated with the
rendering of such services. In the event that MPMx or an MPI Subsidiary
supports any other permitted sublicensee of Process Technology, MPMx or the
MPI Subsidiary shall be compensated for such support obligations by such
sublicensee as provided for in the licensing arrangement with such
sublicensee.
(e) TERM. If MPMx ceases to be an Affiliate of MPI, the provisions of
subsections (a)-(d) shall cease to apply to MPMx, provided that MPMx and
MPI and the MPI Subsidiaries shall agree on terms for a transition period
not to exceed two (2) years. During such transition period, at a minimum,
the former supporting parties shall provide MPMx with reasonable technical
assistance and instruction in the use of MPI Process Technology in the MPMx
Core Field and such former supporting parties shall be reimbursed for their
Fully-Loaded Cost associated with such assistance and instruction.
Additionally, with respect to software included within the MPI Process
Technology that
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remains non-exclusively licensed to MPMx pursuant to Section 2, if MPI does
not agree to continue support of such software in any transitional or final
support arrangement agreed to with MPMx, MPI shall provide MPMx with the
source code necessary in order for MPMx to exploit its continuing license
to such software. If an MPI Subsidiary ceases to be an Affiliate of MPI,
the provisions of subsections (a)-(d) shall cease to apply with respect to
such MPI Subsidiary, provided that MPMx, MPI and such MPI Subsidiary shall
agree on terms for a transition period not to exceed two (2) years. During
such transition period, at a minimum, the former supporting parties shall
provide the MPI Subsidiary with reasonable technical assistance and
instruction in the use of MPI Process Technology and MPMx Process
Technology in the portion of the MPI Core Field assigned to such MPI
Subsidiary and such former supporting parties shall be reimbursed for their
Fully-Loaded Cost associated with such assistance and instruction.
SECTION 6. LICENSING OF PROCESS TECHNOLOGY AND RELATED COMPENSATION.
(a) GENERAL OUT-LICENSING OBLIGATIONS. Except as set forth in this
subsection (a) and as provided for in subsection (c) below, MPI shall have
the right and responsibility for licensing all Process Technology and
related Patent Rights. Notwithstanding the foregoing, without the written
consent of MPMx, MPI shall have no right to grant such licenses if the
intended principal use of the Process Technology or related Patent Rights
is in the MPMx Core Field. At the request of MPMx, which request shall not
be unreasonably refused by MPI, MPI shall license the Process Technology
and related Patent Rights to a Third Party Licensee of MPMx for use in the
MPMx Core Field. At the request of an MPI Subsidiary, which request shall
not be unreasonably refused by MPI, MPI shall license the Process
Technology and related Patent Rights to a Third Party Licensee of such MPI
Subsidiary for use in the portion of the MPI Core Field assigned to such
MPI Subsidiary. Notwithstanding the foregoing, with respect to MPMx Process
Technology which also constitutes an MPMx Product, MPMx shall have the
right and responsibility for licensing such MPMx Process Technology to
Third Party Licensees in lieu of MPI and, with respect to MPI Subsidiary
Process Technology which also constitutes an independent product which is
marketed and sold to third parties by an MPI Subsidiary, such MPI
Subsidiary shall have the right and responsibility for licensing such MPI
Subsidiary Process Technology to Third Party Licensees in lieu of MPI.
(b) COMPENSATION FOR LICENSING BY MPI. MPI shall be entitled to retain all
compensation received by it in connection with its licensing of Process
Technology and related Patent Rights, provided that in the event that MPI
licenses the Process Technology and related Patent Rights to a Third Party
Licensee of MPMx for use in the MPMx Core Field or to a Third Party
Licensee of an MPI Subsidiary for use in the portion of the MPI Core Field
assigned to such MPI Subsidiary, MPMx or the MPI Subsidiary, as applicable,
shall be entitled to retain such compensation. In the event that MPI
licenses the Process
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Technology and related Patent Rights to a Third Party Licensee for use in
both the MPMx Core Field and the MPI Core Field, the parties whose core
fields are involved shall negotiate on a case-by-case basis an appropriate
sharing of the compensation received by MPI.
(c) NON-SUPPORTED PROCESS TECHNOLOGY. In the event that MPI shall elect not
to support certain components of the Process Technology, MPI shall cease to
have the right and responsibility for licensing such components of the
Process Technology and their related Patent Rights. In the case of
components of the MPMx Process Technology, MPMx shall have the right, but
not the obligation, to license such components of the Process Technology
and their related Patent Rights to Third Party Licensees for use in the
MPMx Core Field. In the case of components of the MPI Subsidiary Process
Technology, the applicable MPI Subsidiary shall have the right, but not the
obligation, to license such components of the MPI Subsidiary Process
Technology and their related Patent Rights to Third Party Licensees for use
in the portion of the MPI Core Field assigned to such MPI Subsidiary. In
the event that an MPI Subsidiary desires to license components of the MPMx
Process Technology and their related Patent Rights to a Third Party
Licensee for use in the portion of the MPI Core Field assigned to such MPI
Subsidiary, if MPMx and MPI so consent, which consent shall not be
unreasonably refused, MPMx (or, at the option of MPMx, such MPI Subsidiary)
shall grant such license. In the event that MPMx or another MPI Subsidiary
desires to license components of the MPI Subsidiary Process Technology and
their related Patent Rights to a Third Party Licensee for use in the MPMx
Core Field or the portion of the MPI Core Field assigned to such MPI
Subsidiary, respectively, if the applicable MPI Subsidiary and MPI so
consent, which consent shall not be unreasonably refused, the applicable
MPI Subsidiary (or, at the option of the applicable MPI Subsidiary, MPMx or
such other MPI Subsidiary) shall grant such license. In the case of
components of the MPI Process Technology which are not MPI Subsidiary
Process Technology, in the event that MPMx or an MPI Subsidiary desires to
license such components of the MPI Process Technology and their related
Patent Rights to a Third Party Licensee for use in the MPMx Core Field or
the portion of the MPI Core Field assigned to such MPI Subsidiary,
respectively, if MPI so consents, which consent shall not be unreasonably
refused, MPMx or such MPI Subsidiary shall have the right to grant such
license.
(d) COMPENSATION FOR LICENSING BY MPMx OR MPI SUBSIDIARIES. In the event
that MPMx licenses components of the Process Technology and their related
Patent Rights in the MPMx Core Field in accordance with subsection (c)
above, MPMx shall be entitled to retain all compensation received from such
Third Party Licensees. In the event that an MPI Subsidiary licenses
components of the Process Technology and their related Patent Rights in the
portion of the MPI Core Field assigned to such MPI Subsidiary in accordance
with subsection (c) above, such MPI Subsidiary shall be entitled to retain
all compensation received from such Third Party Licensees.
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(e) SURVIVAL OF LICENSES. Upon the expiration of the Agreement Term, the
provisions of subsections (a)-(d) shall cease to apply, provided that any
license granted in accordance with subsections (a)-(d) above prior to the
expiration of the Agreement Term shall survive any expiration of the
Agreement Term.
SECTION 7. PATENT RIGHTS
The Patent Rights of the Parties on a country by country basis shall be as
defined below, provided that, in no event shall either Party have the right to
prepare and prosecute a patent application which discloses Confidential
Information of the other Party without the prior written consent of the other
Party.
7.1 PATENT RIGHTS OF MPI.
(a) PROCESS TECHNOLOGY PATENT RIGHTS. MPI shall have the exclusive right,
at its expense and in its sole discretion, to prepare, file and prosecute
patent applications, and to maintain and enforce any patents issued
thereon, with respect to inventions relating to MPI Process Technology and
to inventions relating to MPMx Process Technology, provided that in the
case of inventions relating to MPMx Process Technology, MPI shall consult
with MPMx concerning such patent prosecution and give due consideration to
the comments and suggestions of MPMx, and further provided that in the case
of claims that relate solely to the MPMx Core Field, MPI shall follow the
advice of MPMx absent compelling reasons to the contrary. Additionally, in
the event that MPI elects not to file or prosecute a patent application or
elects not to maintain a patent covering an invention relating to MPMx
Process Technology, MPI shall promptly notify MPMx and MPMx shall have the
right, at its expense, to assume the patent filing, prosecution or
maintenance for such invention.
(b) MPI PRODUCT TECHNOLOGY PATENT RIGHTS IN THE MPI CORE FIELD. MPI shall
have the exclusive right, at its expense and its sole discretion, to
prepare, file and prosecute patent applications, and to maintain and
enforce any patents issued thereon, with respect to inventions relating to
MPI Product Technology in the MPI Core Field other than that jointly owned
by MPI and MPMx.
(c) MPI PRODUCT TECHNOLOGY PATENT RIGHTS IN THE MPMx CORE FIELD. At MPMx's
expense, MPI shall prepare, file and prosecute patent applications and
shall maintain and enforce any patents issued thereon, with respect to MPI
Product Technology in the MPMx Core Field other than that jointly owned by
MPI and MPMx. In the event that MPMx elects not to assume these costs in
any country, MPI shall have the right and option to undertake such
responsibilities, at its sole expense. If MPI undertakes such
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responsibilities at its sole expense, then (i) the license under Section 2
to any such MPI Product Technology Patent Right in such country shall
terminate and (ii) MPI shall have the exclusive right to develop and/or
commercialize such MPI Product Technology in either the MPMx Core Field or
the MPI Core Field.
7.2 PATENT RIGHTS OF MPMx.
(a) MPMx PRODUCT TECHNOLOGY PATENT RIGHTS IN THE MPMx CORE FIELD. MPMx
shall have the exclusive right, at its expense and its sole discretion, to
prepare, file and prosecute patent applications, and to maintain and
enforce any patents issued thereon, with respect to inventions relating to
MPMx Product Technology in the MPMx Core Field other than that jointly
owned by MPMx and MPI.
(b) MPMx PRODUCT TECHNOLOGY PATENT RIGHTS IN THE MPI CORE FIELD. At MPI's
expense, MPMx shall prepare, file and prosecute patent applications and
shall maintain and enforce any patents issued thereon, with respect to MPMx
Product Technology in the MPI Core Field other than that jointly owned by
MPMx and MPI. In the event that MPI elects not to assume these costs in any
country, MPMx shall have the right and option to undertake such
responsibilities, at its sole expense. If MPMx undertakes such
responsibilities at its sole expense, then (i) the license under Section 2
to any such MPMx Product Technology Patent Right in such country shall
terminate and (ii) MPMx shall have the exclusive right to develop and/or
commercialize such MPMx Product Technology in either the MPMx Core Field or
the MPI Core Field.
7.3 JOINT PRODUCT TECHNOLOGY PATENT RIGHTS. Patent applications relating
to MPI Product Technology and MPMx Product Technology jointly owned by MPI and
MPMx shall be prepared, filed and prosecuted by the Party in whose core field
the technology is most relevant; provided that, if the technology is relevant to
the core fields of both Parties then MPI shall prepare, file and prosecute such
patent application. The costs of such preparation, filing and prosecution of
such patent applications, and the maintenance of any patent issuing thereon,
shall be borne equally by the Parties. Should either Party determine that it no
longer desires to file or prosecute such patent application or maintain any
patent issued thereon, then such Party shall be obligated to transfer its entire
right, title and interest in and to such patent application or patent to the
other Party and such patent application or patent shall not be subject to the
license provisions of Section 2.
7.4 IMPROVEMENTS.
(a) IMPROVEMENTS MADE BY MPI TO MPMx PRODUCT TECHNOLOGY. MPMx shall have
the right to prohibit MPI from preparing, filing and prosecuting a patent
application directed to any improvement made by MPI to MPMx Product
Technology. If MPMx
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consents to the preparation, filing and prosecution of such patent
application, then such patent application shall be prepared and prosecuted,
in MPI's name and at MPI's expense, by MPMx. If MPI decides not to prepare,
file and prosecute such patent application, then MPMx shall not have the
right to assume the preparation and prosecution of such patent application.
(b) IMPROVEMENTS MADE BY MPMx TO MPI PRODUCT TECHNOLOGY. MPI shall have the
right to prohibit MPMx from preparing, filing and prosecuting a patent
application directed to any improvement made by MPMx to a MPI Product
Technology. If MPI consents to the preparation, filing and prosecution of
such patent application, then such patent application shall be prepared,
filed and prosecuted, in MPMx's name and at MPMx's expense, by MPI. If MPMx
decides not to prepare, file and prosecute such patent application, then
MPI shall not have the right to assume the preparation, filing and
prosecution of such patent application.
(c) JOINT IMPROVEMENTS. The Parties shall discuss and shall mutually agree
to prepare, file and prosecute patent applications relating to jointly
owned improvements to any of the MPI Product Technology or MPMx Product
Technology, provided that the Party from whose technology such improvement
derives shall have the right to prohibit the preparation, filing and
prosecution of any such patent applications. If the Parties agree to
prepare, file and prosecute any such patent applications, then the
preparation, filing and prosecution shall be controlled by the Party to
whose technology such improvement relates. The costs of the preparation,
filing and prosecution of such patent applications shall be borne equally
by the Parties. Should either Party determine that it no longer desires to
file or prosecute such patent application or maintain any patent issued
thereon, then such Party shall be obligated to transfer its entire right,
title and interest in and to such patent application or patent to the other
Party and such patent application or patent shall not be subject to the
license provisions of Section 2.
SECTION 8. CONFIDENTIAL INFORMATION.
8.1 CONFIDENTIAL INFORMATION. Any Party receiving Confidential Information
shall maintain the confidential and proprietary status of such Confidential
Information, keep such Confidential Information and each part thereof within its
possession or under its control sufficient to prevent any activity with respect
to the Confidential Information that is not specifically authorized by this
Agreement, use commercially reasonable efforts to prevent the disclosure of any
Confidential Information to any other Person, and use commercially reasonable
efforts to ensure that such Confidential Information is used only for those
purposes specifically authorized herein; provided, however, that such
restriction shall not apply to any Confidential Information which is (a)
independently developed by the receiving Party, (b) in the public domain at the
time of its receipt or thereafter becomes part of the public domain through no
fault of the receiving
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Party, (c) received without an obligation of confidentiality from a third
party having the right to disclose such information, (d) released from the
restrictions of this Section 8.1 by the express written consent of the
disclosing Party, (e) disclosed to any permitted assignee, permitted
sublicensee or permitted subcontractor of either MPI or MPMx hereunder (if
such assignee, sublicense or subcontractor is subject to the provisions of
this Section 8.1 or comparable provisions of such other documents), or (f)
required by law, statute, rule or court order to be disclosed (the
disclosing Party shall, however, use commercially reasonable efforts to
obtain confidential treatment of any such disclosure).
8.2 EMPLOYEE OBLIGATIONS. MPI and MPMx each agree that it shall provide
Confidential Information received from the other Party only to its employees,
consultants, advisors and third party collaborators who have a need to know and
have an obligation to treat such information and materials as confidential.
Without limiting the generality of the foregoing, MPI and MPMx each shall use
commercially reasonable efforts to obtain confidentiality agreements from its
respective employees and agents, similar in scope to Section 8.1, to protect the
Confidential Information.
8.3 THIRD PARTY OBLIGATIONS. Each Party acknowledges that the other Party
may from time to time have agreements with other persons which impose
obligations or restrictions on such other Party with respect to the disclosure
or use of inventions or information relating to the subject matter of such
agreements ("Third Party Agreements"). Each Party agrees to be bound by all such
obligations and restrictions which are made known to it under Third Party
Agreements relating to Confidential Information.
8.4 PERMITTED DISCLOSURES. Notwithstanding the provisions of Section 8.1
hereof, MPI and MPMx may, to the extent necessary, disclose and use Confidential
Information, consistent with the rights of MPI and MPMx otherwise granted
hereunder (a) for the purpose of engaging in research and development,
conducting clinical testing and marketing programs, or securing institutional or
government approval to clinically test or market any product, (b) for the
purpose of sharing clinical trial results and data with third parties conducting
clinical trials, (c) for the purpose of securing patent protection to the extent
provided in Xxxxxxx 0, (x) for the purpose of obtaining private investment, or
(e) for the purpose of discussing potential business and collaborative
relationships in each party's core field.
8.5 TERM The obligations set forth in this Section 8 shall survive for a
period of five (5) years from the expiration of the Agreement Term.
SECTION 9. TERM
This Agreement becomes effective as of the Effective Date and shall remain
in effect during the Agreement Term. Upon the expiration of the Agreement Term,
the provisions of Section 2.1 (as provided for therein), Section 2.2 (as
provided for therein), Section 2.3(a),
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Section 2.4, Section 5(e), Section 6(e), Section 7, Section 8, Xxxxxxx 00,
Xxxxxxx 00, Xxxxxxx 00(x) and Section 13 shall survive the expiration of the
Agreement Term.
SECTION 10. DISCLAIMER OF WARRANTY; CONSEQUENTIAL DAMAGES.
10.1 DISCLAIMER OF WARRANTY. Nothing in this Agreement shall be construed
as a representation made or warranty given by either Party hereto that any
patents will issue based on pending applications or that any such pending
applications or patents issued thereon will be valid, or that the practice by
the other Party hereto of any license granted hereunder will not infringe the
patent or proprietary rights of any other Person. In addition, MPI and MPMx
acknowledge that ALL KNOW-HOW LICENSED OR TRANSFERRED HEREUNDER IS LICENSED AND
TRANSFERRED, AS TO THE CASE MAY BE, TO MPMX AND MPI, RESPECTIVELY, AS IS, AND
MPI AND MPMX EXPRESSLY DISCLAIM AND HEREBY WAIVE, RELEASE AND RENOUNCE ANY
WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO SUCH KNOW-HOW, INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
In turn, MPI shall contractually require each MPI Subsidiary to acknowledge that
MPMx makes no representation or warranty that any patents will issue based on
pending applications or that any such pending applications or patents issued
thereon will be valid, to acknowledge that MPMx makes no representation or
warranty that the practice by such MPI Subsidiary of any license granted
hereunder will not infringe the patent or proprietary rights of any other
Person, to acknowledge that all know-how is licensed or transferred to such MPI
Subsidiary as is, and to expressly disclaim and waive, release and renounce any
warranty, express or implied, with respect to such know-how, including, without,
any warranty of merchantability or fitness for a particular purpose.
10.2 CONSEQUENTIAL DAMAGES. EXCEPT AS OTHERWISE SET FORTH HEREIN, NEITHER
PARTY TO THIS AGREEMENT SHALL BE ENTITLED TO RECOVER FROM TO THE OTHER ANY
SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES.
SECTION 11. INDEMNIFICATION
11.1 INDEMNIFICATION BY MPI. MPI agrees to defend MPMx at MPI's cost and
expense, and will indemnify and hold MPMx and its directors, officers, employees
and agents (the "MPMx Indemnified Parties") harmless from and against any
losses, costs, damages, fees or expenses arising out of any claim relating to
personal injury from the exploitation by MPI or an MPI Subsidiary or their
licensees of the licenses granted by MPMx pursuant to Section 2, including the
development, manufacture, use sale or other disposition of products or services
resulting therefrom. In the event of any such claim against the MPMx Indemnified
Parties by any party, MPMx shall promptly notify MPI in writing of the claim and
MPI shall manage and control, at its
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sole expense, the defense of the claim and its settlement. The MPMx Indemnified
Parties shall cooperate with MPI and may, at their option and expense, be
represented in any such action or proceeding. MPI shall not be liable for any
litigation costs or expenses incurred by the MPMx Indemnified Parties or for any
costs or expenses of settlements made by any MPMx Indemnified Parties without
MPI's prior written authorization. In addition, MPI shall not be responsible for
the indemnification of any MPMx Indemnified Party arising from any negligent or
intentional acts by such party.
11.2. INDEMNIFICATION BY MPMx. MPMx agrees to defend MPI at MPMx's cost and
expense, and will indemnify and hold MPI and its directors, officers, employees
and agents (the "MPI Indemnified Parties") harmless from and against any losses,
costs, damages, fees or expenses arising out of any claim relating to personal
injury from the exploitation by MPMx or its licensees of the licenses granted by
MPI pursuant to Section 2, including the development, manufacture, use sale or
other disposition of products or services resulting therefrom. In the event of
any such claim against the MPI Indemnified Parties by any party, MPI shall
promptly notify MPMx in writing of the claim and MPMx shall manage and control,
at its sole expense, the defense of the claim and its settlement. The MPI
Indemnified Parties shall cooperate with MPMx and may, at their option and
expense, be represented in any such action or proceeding. MPMx shall not be
liable for any litigation costs or expenses incurred by the MPI Indemnified
Parties or any costs or expenses of settlements made by any MPI Indemnified
Parties without MPMx's prior written authorization. In addition, MPMx shall not
be responsible for the indemnification of any MPI Indemnified Party arising from
any negligent or intentional acts by such party.
SECTION 12. GOVERNANCE.
(a) ROLE OF FAMILY COUNCIL. The relationship among MPMx, MPI and the MPI
Subsidiaries shall be guided by the Family Council. The purpose of the Family
Council shall be to provide guidance to MPMx, MPI and each of the MPI
Subsidiaries on matters relating to the definition of the MPMx Core Field, the
MPI Core Field and any portion of the MPI Core Field assigned to an MPI
Subsidiary, MPMx's proposed provision of PMDRDS in connection with a Competitive
Product which has not yet advanced to the stage of clinical studies, the
licensing of technology, the allocation and management of business opportunities
among MPMx, MPI and the MPI Subsidiaries, the allocation of compensation and
costs among MPMx, MPI and the MPI Subsidiaries, conflicts among MPMx, MPI and
the MPI Subsidiaries, and other related issues. The Family Council shall
endeavor to reach consensus on all conflicts brought before it by any of MPMx,
MPI or an MPI Subsidiary. To the extent that conflicts brought before the Family
Council specifically or disproportionately implicate the interests of MPMx, MPI
or an MPI Subsidiary, the Family Council shall be deferential to that entity's
recommendations consistent with MPI's overall business strategy. If the Family
Council cannot reach a consensus on any conflict brought before it, the conflict
shall be referred to the boards of directors of the parties involved.
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(b) TERM. If MPMx ceases to be an Affiliate of MPI, subsection (a) above
shall cease to apply with respect to MPMx. If an MPI Subsidiary ceases to be an
Affiliate of MPI, subsection (a) above shall cease to apply with respect to such
MPI Subsidiary.
SECTION 13. GENERAL PROVISIONS
13.1 PRIOR AGREEMENTS WITH MPI SUBSIDIARIES. MPMx acknowledges that MPI has
entered into a Rights Exchange Agreement and Technology Transfer and License
Agreement with its subsidiary Millennium BioTherapeutics, Inc. To the extent
that such agreements are not substantially consistent with MPI's obligations to
MPMx under this Agreement or the Rights Exchange Agreement, MPI agrees to use
commercially reasonable and diligent efforts to amend such agreements (including
obtaining any consents necessary to amend such agreements) so that they are
substantially consistent with MPI's obligations to MPMx under this Agreement and
the Rights Exchange Agreement. If, despite such efforts, MPI is unable to so
amend the agreements, the provisions of this Agreement and the Rights exchange
Agreement shall nevertheless continue to apply to the relationship among MPI,
any other MPI Subsidiary and MPMx, and MPI shall not be deemed to be in breach
of this Agreement or the Rights Exchange Agreement.
13.2 NO IMPLIED WAIVERS; RIGHTS CUMULATIVE. No failure on the part of MPI
or MPMx to exercise, and no delay in exercising, any right, power, remedy or
privilege under this Agreement, or provided by statute or at law or in equity or
otherwise, shall impair, prejudice or constitute a waiver of any such right,
power, remedy or privilege or be construed as a waiver of any breach of this
Agreement or as an acquiescence therein, nor shall any single or partial
exercise of any such right, power, remedy or privilege preclude any other or
further exercise thereof or the exercise of any other right, power, remedy or
privilege.
13.3 FORCE MAJEURE. Neither Party to this Agreement shall be responsible to
the other Party for nonperformance or delay in performance of the terms or
conditions of the Agreement due to acts of God, acts of governments, war, riots,
strikes, accidents in transportation, or other causes beyond the reasonable
control of such Party.
13.4 COOPERATION. Each Party agrees to cause each of its employees and
agents to take all actions and to execute, acknowledge and deliver all
instruments or agreements reasonably requested by the other Party, and necessary
for the perfection, maintenance, enforcement or defense of that Party's rights
as set forth herein.
13.5 NOTICES. All notices, requests and other communications to MPI or MPMx
hereunder shall be in writing (including telecopy or similar electronic
transmissions), shall refer specifically to this Agreement and shall be
personally delivered or sent by telecopy or other electronic facsimile
transmission or by certified mail, return receipt requested, postage prepaid, in
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each case to the respective address specified below (or to such other address as
may be specified in writing to the other Party hereto):
Millennium Pharmaceuticals, Inc.
000 Xxxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
ATTENTION: Chief Business Officer
with a copy to: Legal Department
Millennium Predictive Medicine, Inc.
000 Xxxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
ATTENTION: President
with a copy to: Legal Department
Any notice or communication given in conformity with this Section 13.5 shall be
deemed to be effective when received by the addressee, if delivered by hand,
telecopy or other electronic facsimile transmission, and three (3) days after
mailing, if mailed.
13.6 FURTHER ASSURANCES. Each of MPI and MPMx agrees to duly execute and
deliver, or cause to be duly executed and delivered, such further instruments
and do and cause to be done such further acts and things, including, without
limitation, the filing of such additional assignments, agreements, documents and
instruments, that may be necessary or as the other Party hereto may at any time
and from time to time reasonably request in connection with this Agreement or to
carry out more effectively the provisions and purposes of, or to better assure
and confirm unto such other Party its rights and remedies under, this Agreement.
13.7 SUCCESSORS AND ASSIGNS. The terms and provisions of this Agreement
shall inure to the benefit of, and be binding upon, MPI, MPMx, and their
respective successors and assigns. Notwithstanding the foregoing, except as
otherwise contemplated herein, neither MPI nor MPMx may assign or otherwise
transfer any of its rights and interests, nor delegate any of its respective
obligations hereunder, including, without limitation, pursuant to a merger or
consolidation, without the prior written consent of the other Party hereto,
which consent shall not be unreasonably withheld. Any attempt to assign or
delegate any portion of this Agreement in violation of this Section 13.7 shall
be null and void. Subject to the foregoing, any reference to MPI and MPMx
hereunder shall be deemed to include the successors thereto and assigns thereof.
13.8 AMENDMENTS. No amendment, modification, waiver, termination or
discharge of any provision of this Agreement, nor consent to any departure by
MPI or MPMx therefrom, shall be effective unless the same shall be in writing
specifically identifying this Agreement and the provision intended to be
amended, modified, waived, terminated or discharged and signed by MPI and MPMx,
and each such amendment, modification, waiver, termination or discharge shall be
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effective only in the specific instance and for the specific purpose for which
given. No provision of this Agreement shall be varied, contradicted or explained
by any oral agreements course of dealing or performance or any other matter not
set forth in an agreement in writing and signed by MPI and MPMx.
13.9 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the substantive laws of the Commonwealth of Massachusetts
notwithstanding the provisions governing conflict of laws under the laws of the
Commonwealth of Massachusetts to the contrary.
13.10 SEVERABILITY. If any provision hereof should be held invalid, illegal
or unenforceable in any respect in any jurisdiction, then, to the fullest extent
permitted by law, (a) all other provisions hereof shall remain in full force and
effect in such jurisdiction and shall be liberally construed in order to carry
out the intentions of the Parties as nearly as may be possible and (b) such
invalidity, illegality or unenforceability shall not affect the validity,
legality or enforceability of such provision in any other jurisdiction. To the
extent permitted by applicable law, MPI and MPMx hereby waive any provision of
law that would render any provision hereof prohibited or unenforceable in any
respect.
13.11 HEADINGS. Headings used herein are for convenience only and shall not
in any way affect the construction of, or be taken into consideration
interpreting, this Agreement.
13.12 EXECUTION IN COUNTERPARTS. This Agreement may be executed in
counterparts, each of which counterparts, when so executed and delivered, shall
be deemed to be an original, and all of which counterparts, taken together,
shall constitute one and the same instrument.
13.13 ENTIRE AGREEMENT. This Agreement, together with the Rights Exchange
Agreement, the Trademark License Agreement, the Administrative Services
Agreement dated the Effective Date, the Research Services and Collaboration
Agreement dated the Effective Date and the Tax Sharing Agreement dated the
Effective Date, constitute the entire agreement of MPI and MPMx with respect to
the subject matter hereof, and all prior or contemporaneous understandings or
agreements, whether written or oral, between MPI and MPMx with respect to such
subject matter are hereby superseded in their entirety.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed under seal and delivered as of the date first above written.
MILLENNIUM PHARMACEUTICALS, INC.
By:
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Xxxxxx X. Xxxxxxxx
Chief Business Officer
MILLENNIUM PREDICTIVE MEDICINE, INC.
By:
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Xxxxxxx X. Xxxxxx
President
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SCHEDULE A
MPI PROCESS TECHNOLOGY
RADE [ ]
Transcriptional Profiling
Mouse Models, including transgenic and knock-out technologies
Sequencing, including sequence analysis
cDNA and genomic library screening methodologies
Protein Biochemistry, including proteomics and PARADE [ ]
Histology
Vector Biology
Cell Biology, including bioassay technology
Yeast Two-Hybrid technology
Automation
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SCHEDULE B
MPI SUBSIDIARY PROCESS TECHNOLOGY
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SCHEDULE C
MPMx PROCESS TECHNOLOGY
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SCHEDULE D
VARIATIONS FOR TECHNOLOGY WHICH CONSTITUTES A PRODUCT
There shall be no variations for Process Technology or Product Technology which
constitutes an MPMx Product except as set forth below.
Diagnomic and Pharmacogenomic Databases shall be licensed to MPI on the
following basis. So long as MPMx remains an Affiliate of MPI, MPI shall not be
obligated to pay MPMx any licensing, subscription or upfront payments in order
to use Diagnomic and Pharmacogenomic Databases, but shall be obligated to pay
MPMx downstream fees and charges, such as milestones and royalties, associated
with the fair market value sales of Diagnomic and Pharmacogenomic Databases to
third parties. So long as an MPI Subsidiary remains an Affiliate of MPI, such
MPI Subsidiary shall not be obligated to pay MPMx any licensing, subscription or
upfront payments in order to use Diagnomic and Pharmacogenomic Databases, but
shall be obligated to pay MPMx downstream fees and charges, such as milestones
and royalties, associated with the fair market value sales of Diagnomic and
Pharmacogenomic Databases to third parties. If MPMx ceases to be an Affiliate of
MPI, MPI and the MPI Subsidiaries shall also be required to pay to MPMx any
licensing, subscription or upfront payments associated with the fair market
value sales of Diagnomic and Pharmacogenomic Databases, provided that MPMx, MPI
and the MPI Subsidiaries shall agree on terms for a transition period not to
exceed two (2) years. If an MPI Subsidiary ceases to be an Affiliate of MPI,
such MPI Subsidiary shall also be required to pay to MPMx any licensing,
subscription or upfront payments associated with the fair market value sales of
Diagnomic and Pharmacogenomic Databases, provided that MPMx, MPI and the MPI
Subsidiary shall agree on terms for a transition period not to exceed two (2)
years.
