Exhibit 10.2
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Execution Copy
TECHNOLOGY DEVELOPMENT AGREEMENT
BY AND BETWEEN
MILLENNIUM PHARMACEUTICALS, INC.
AND
AVENTIS PHARMACEUTICALS INC.
TABLE OF CONTENTS
PAGE
----
TECHNOLOGY DEVELOPMENT AGREEMENT..................................................................................1
Article I Definitions.............................................................................................1
Section 1.1 "Affiliate"..................................................................................1
Section 1.2 "Agreement Term".............................................................................1
Section 1.3 "Aventis Development Program Technology".....................................................1
Section 1.4 "Aventis Development Program Technology Patent Rights and Copyrights"........................2
Section 1.5 "Aventis Ex-Program Technology"..............................................................2
Section 1.6 "Aventis Ex-Program Technology Patent Rights and Copyrights".................................2
Section 1.7 "Change of Control"..........................................................................2
Section 1.8 "Confidential Information"...................................................................2
Section 1.9 "Contract Year"..............................................................................3
Section 1.10 "Development Program Technology"............................................................3
Section 1.11 "Effective Date"............................................................................3
Section 1.12 "Executive Officers"........................................................................3
Section 1.13 "Ex-Program Technology".....................................................................3
Section 1.14 "Field".....................................................................................3
Section 1.15 "Human Health Care Field"...................................................................3
Section 1.16 "Inflammation Agreement"....................................................................3
Section 1.17 "Joint Steering Committee"..................................................................3
Section 1.18 "Joint Technology Development Team".........................................................3
Section 1.19 "Millennium Development Program Technology".................................................4
Section 1.20 "Millennium Development Program Technology Patent Rights and Copyrights"....................4
Section 1.21 "Millennium Ex-Program Technology"..........................................................4
Section 1.22 "Millennium Ex-Program Technology Patent Rights and Copyrights".............................4
Section 1.23 "Party".....................................................................................4
Section 1.24 "Patent Right"..............................................................................4
Section 1.25 "Process Technology"........................................................................4
Section 1.26 "Product-Process Tool Technology"...........................................................4
Section 1.27 "Product Technology"........................................................................5
Section 1.28 "Prohibited Field"..........................................................................5
Section 1.29 "Significant Agricultural Enterprise".......................................................5
Section 1.30 "Technology Development"....................................................................5
Section 1.31 "Technology Development Plan"...............................................................5
Section 1.32 "Technology Transfer Agreement".............................................................6
Section 1.33 "Territory".................................................................................6
Section 1.34 "Third Party"...............................................................................6
Section 1.35 "Additional Definitions"....................................................................6
Article II Grants of Rights.......................................................................................6
Section 2.1 Grants of Licenses...........................................................................6
Section 2.2 Release from Restrictions...................................................................13
Section 2.3 Source Code.................................................................................14
Section 2.4 Nontransferable.............................................................................15
Section 2.5 Prohibited Field............................................................................15
Article III Technology Development...............................................................................16
i
Section 3.1 Technology Development......................................................................16
Section 3.2 Joint Technology Development Team...........................................................16
Section 3.3 Technology Development Plan.................................................................17
Section 3.4 Technology Development Disclosure and Update................................................18
Section 3.5 Development Expenses........................................................................18
Article IV Intellectual Property Ownership, Protection and Related Matters.......................................19
Section 4.1 Ownership...................................................................................19
Section 4.2 Prosecution and Maintenance of Patent Rights................................................19
Section 4.3 Exploitation of Inventions..................................................................19
Section 4.4 Cooperation.................................................................................20
Section 4.5 Third Party Infringement....................................................................20
Section 4.6 Claimed Infringement........................................................................20
Article V Confidentiality........................................................................................21
Section 5.1 Confidential Information....................................................................21
Section 5.2 Employee and Advisor Obligations............................................................21
Section 5.3 Term........................................................................................22
Article VI Term and Termination..................................................................................22
Section 6.1 Term; Extension.............................................................................22
Section 6.2 Termination.................................................................................22
Section 6.3 Rights Upon Termination.....................................................................23
Section 6.4 Cooperation Upon Termination................................................................23
Article VII Dispute Resolution...................................................................................23
Section 7.1 Joint Steering Committee....................................................................23
Section 7.2 Referral of Unresolved Matters to Joint Steering Committee..................................24
Section 7.3 Referral of Unresolved Matters to Executive Officers........................................24
Section 7.4 Independent Experts.........................................................................24
Section 7.5 Non-Binding Mediation.......................................................................24
Article VIII Representations and Warranties......................................................................25
Section 8.1 Representation of Authority; Consents.......................................................25
Section 8.2 No Conflict.................................................................................25
Section 8.3 Knowledge of Pending or Threatened Litigation...............................................25
Section 8.4 Employee and Consultant Obligations.........................................................25
Section 8.5 Disclaimer of Warranty......................................................................26
Article IX Miscellaneous Provisions..............................................................................26
Section 9.1 Product Liability Indemnification...........................................................26
Section 9.2 Governing Law...............................................................................27
Section 9.3 Assignment..................................................................................27
Section 9.4 Entire Agreement............................................................................28
Section 9.5 Amendments..................................................................................28
Section 9.6 Notices.....................................................................................28
Section 9.7 Force Majeure...............................................................................29
Section 9.8 Compliance with Export Regulations..........................................................29
Section 9.9 Section 365(n) of the Bankruptcy Code.......................................................29
Section 9.10 Public Announcements.......................................................................29
Section 9.11 Non-Solicitation...........................................................................30
Section 9.12 Independent Contractors....................................................................30
Section 9.13 No Strict Construction.....................................................................30
Section 9.14 Headings...................................................................................30
Section 9.15 No Implied Waivers; Rights Cumulative......................................................30
Section 9.16 Severability...............................................................................30
ii
Section 9.17 Execution in Counterparts..................................................................31
Section 9.18 No Third Party Beneficiaries...............................................................31
Section 9.19 No Consequential Damages...................................................................31
"EXHIBIT". The Exhibit referred to in the definitions of this Agreement
is being simultaneously delivered with the execution of this Agreement as a
separate document and shall have the following title:
EXHIBIT A Technology Development Plan
"SCHEDULE". The Schedule referred to in the definitions of this
Agreement has been attached to this Agreement and shall have the following
title:
SCHEDULE I Types of Technology
TECHNOLOGY DEVELOPMENT AGREEMENT
This Technology Development Agreement dated the 22nd day of June,
2000 (the "Execution Date") is by and between Millennium Pharmaceuticals,
Inc., a corporation organized and existing under the laws of the State of
Delaware and having its principal office at 00 Xxxxxx Xxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx 00000 ("Millennium") and Aventis Pharmaceuticals Inc., a
corporation organized and existing under the laws of the State of Delaware
and having its principal office at Xxxxx 000-000, X.X. Xxx 0000, Xxxxxxxxxxx,
Xxx Xxxxxx 00000. ("Aventis").
INTRODUCTION
1. Aventis and Millennium have each developed certain
technologies relating to the identification and characterization of genetic
materials, proteins and small molecules.
2. Millennium and Aventis wish to engage in the joint development
of additional technologies potentially useful in the discovery and development
of pharmaceutical products.
NOW, THEREFORE, Millennium and Aventis agree as follows:
ARTICLE I
DEFINITIONS
When used in this Agreement, each of the following terms shall have the
meanings set forth in this Article I:
SECTION 1.1 "AFFILIATE". Affiliate means any corporation, company,
partnership, joint venture and/or firm which controls, is controlled by, or is
under common control with a specified person or entity. For purposes of this
Section 1.1, "control" shall be presumed to exist if one of the following
conditions is met: (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, or (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. The Parties acknowledge that in the case of certain
entities organized under the laws of certain countries outside of the United
States, the maximum percentage ownership permitted by law for a foreign investor
may be less than fifty percent (50%), and that in such case such lower
percentage shall be substituted in the preceding sentence, PROVIDED THAT such
foreign investor has the power to direct the management and policies of such
entity.
SECTION 1.2 "AGREEMENT TERM". Agreement Term means the term commencing
on the Effective Date and ending five (5) years after the Effective Date unless
(a) earlier terminated pursuant to the provisions of Article VI or (b) extended
pursuant to the provisions of Section 6.1.
SECTION 1.3 "AVENTIS DEVELOPMENT PROGRAM TECHNOLOGY". Aventis
Development Program Technology means Process Technology and Product-Process Tool
Technology of the types listed in SCHEDULE I attached to this Agreement which is
(a) developed by Aventis or any of its Affiliates alone or jointly by Aventis
and Millennium in the course of Technology
1
Development activities under Article III, or (b) licensed in by Aventis or any
of its Affiliates from Third Parties pursuant to the Technology Development
Plan, in each case during the Agreement Term (but only to the extent that
transfer or sublicensing is permitted by any applicable agreements with Third
Parties).
SECTION 1.4 "AVENTIS DEVELOPMENT PROGRAM TECHNOLOGY PATENT RIGHTS AND
COPYRIGHTS". Aventis Development Program Technology Patent Rights and Copyrights
means Patent Rights and copyrights that cover Aventis Development Program
Technology.
SECTION 1.5 "AVENTIS EX-PROGRAM TECHNOLOGY". Aventis Ex-Program
Technology means Process Technology and Product-Process Tool Technology that (a)
does not constitute Aventis Development Program Technology; (b) is solely or
jointly owned by Aventis or any of its Affiliates or is licensed in by Aventis
or any of its Affiliates from Third Parties, in each case as of the Effective
Date or during the Agreement Term (but only to the extent that transfer or
sublicensing is permitted by any applicable agreements with Third Parties); and
(c) is specified in the Technology Development Plan to be used by the Parties in
a Development Project.
SECTION 1.6 "AVENTIS EX-PROGRAM TECHNOLOGY PATENT RIGHTS AND
COPYRIGHTS". Aventis Ex-Program Technology Patent Rights and Copyrights means
Patent Rights and copyrights that cover Aventis Ex-Program Technology.
SECTION 1.7 "CHANGE OF CONTROL". Change of Control means (a) a merger
or consolidation of a Party which results in the voting securities of such Party
outstanding immediately prior thereto ceasing to represent at least fifty
percent (50%) of the combined voting power of the surviving entity immediately
after such merger or consolidation, or (b) a Third Party, together with its
Affiliates, becoming the beneficial owner of fifty percent (50%) or more of the
combined voting power of the outstanding securities of a Party, or (c) the sale
or other transfer of all or substantially all of a Party's assets which relate
to this Agreement to a Third Party.
SECTION 1.8 "CONFIDENTIAL INFORMATION". Confidential Information means
all proprietary materials, know-how or other information (whether or not
patentable) (including software) regarding a Party's technology, products,
business information or objectives, which is designated as confidential in
writing by the disclosing Party, whether by letter or by the use of an
appropriate stamp or legend, prior to or at the time any such material, know-how
or other information is disclosed by the disclosing Party to the other Party.
Notwithstanding the foregoing to the contrary, materials, know-how or other
information which is orally, electronically or visually disclosed by a Party, or
is disclosed in writing without an appropriate letter, stamp or legend, shall
constitute Confidential Information of a Party (a) if the disclosing Party,
within thirty (30) days after such disclosure, delivers to the other Party a
written document or documents describing the materials, know-how or other
information and referencing the place and date of such oral, visual, electronic
or written disclosure and the names of the persons to whom such disclosure was
made, or (b) such material, know-how or information is of the type that is
customarily considered to be confidential information by persons engaged in
activities that are substantially similar to the activities being engaged in by
the Parties (including without limitation software source code). Notwithstanding
the foregoing, any technical or financial information of a Party disclosed at a
meeting of the Joint Technology Development Team
2
or disclosed through an audit report shall constitute Confidential Information
of a Party unless otherwise specified.
SECTION 1.9 "CONTRACT YEAR". Contract Year means (a) with respect to
the first Contract Year, the period beginning on the Effective Date and ending
on December 31, 2000 (the "First Contract Year"), and (b) with respect to the
second, third, fourth and fifth Contract Years, the calendar years 2001, 2002,
2003 and 2004, respectively (the "Second Contract Year", "Third Contract Year",
etc.) and (c) with respect to the sixth Contract Year, the period beginning on
January 1, 2005 and ending on the fifth anniversary of the Effective Date (the
"Sixth Contract Year").
SECTION 1.10 "DEVELOPMENT PROGRAM TECHNOLOGY". Development Program
Technology means Aventis Development Program Technology and/or Millennium
Development Program Technology.
SECTION 1.11 "EFFECTIVE DATE". Effective Date means the HSR Clearance
Date (as defined in the Technology Transfer Agreement) or, if the Parties
mutually agree that an HSR Filing is not required, July 6, 2000.
SECTION 1.12 "EXECUTIVE OFFICERS". Executive Officers means the Chief
Executive Officer of Aventis (or an executive of Aventis designated by such
Chief Executive Officer) and the Chief Executive Officer of Millennium (or an
executive of Millennium designated by such Chief Executive Officer).
SECTION 1.13 "EX-PROGRAM TECHNOLOGY". Ex-Program Technology means
Aventis Ex-Program Technology and/or Millennium Ex-Program Technology.
SECTION 1.14. "FIELD". Field means any and all fields of use other than
the Prohibited Field.
SECTION 1.15 "HUMAN HEALTH CARE FIELD". Human Health Care Field means
the research, development and commercialization of products or services for the
diagnosis, prophylaxis and/or treatment of diseases or conditions in humans.
SECTION 1.16 "INFLAMMATION AGREEMENT". Inflammation Agreement means the
Collaboration and License Agreement between Millennium and Aventis dated as of
the Execution Date.
SECTION 1.17 "JOINT STEERING COMMITTEE". Joint Steering Committee means
a committee comprised of an appropriate number of representatives of Millennium
and Aventis to plan and oversee the activities contemplated by this Agreement,
as well as the activities of the Parties under the Technology Transfer Agreement
and the Inflammation Agreement, as may be provided in such agreements.
SECTION 1.18 "JOINT TECHNOLOGY DEVELOPMENT TEAM". Joint Technology
Development Team means a committee comprised of an appropriate number of
representatives of Aventis and Millennium to plan and oversee Technology
Development, as more fully described in Article III.
3
SECTION 1.19 "MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY". Millennium
Development Program Technology means Process Technology and Product-Process Tool
Technology of the types listed in SCHEDULE I attached to this Agreement which is
(a) developed by Millennium or any of its Affiliates alone or jointly by
Millennium and Aventis in the course of Technology Development activities under
Article III, or (b) licensed in by Millennium or any of its Affiliates from
Third Parties pursuant to the Technology Development Plan, in each case during
the Agreement Term (but only to the extent that transfer or sublicensing is
permitted by any applicable agreements with Third Parties).
SECTION 1.20 "MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY PATENT RIGHTS
AND COPYRIGHTS". Millennium Development Program Technology Patent Rights and
Copyrights means Patent Rights and copyrights that cover Millennium Development
Program Technology.
SECTION 1.21 "MILLENNIUM EX-PROGRAM TECHNOLOGY". Millennium Ex-Program
Technology means Process Technology and Product-Process Tool Technology that (a)
does not constitute Millennium Development Program Technology; (b) is solely or
jointly owned by Millennium or any of its Affiliates or is licensed in by
Millennium or any of its Affiliates from Third Parties, in each case as of the
Effective Date or during the Agreement Term (but only to the extent that
transfer or sublicensing is permitted by any applicable agreements with Third
Parties); and (c) is specified in the Technology Development Plan to be used by
the Parties in a Development Project.
SECTION 1.22 "MILLENNIUM EX-PROGRAM TECHNOLOGY PATENT RIGHTS AND
COPYRIGHTS". Millennium Ex-Program Technology Patent Rights and Copyrights means
Patent Rights and copyrights that cover Millennium Ex-Program Technology.
SECTION 1.23 "PARTY". Party means Aventis or Millennium; "PARTIES"
means Aventis and Millennium.
SECTION 1.24 "PATENT RIGHT". Patent Right means all existing patents
and patent applications and all patent applications hereafter filed, including
any continuations, continuations-in-part, divisions, provisionals or any
substitute applications, any patent issued with respect to any such patent
applications, any reissue, reexamination, renewal or extension (including any
supplemental patent certificate) of any such patent, and any confirmation patent
or registration patent or patent of addition based on any such patent, and all
foreign counterparts of any of the foregoing.
SECTION 1.25 "PROCESS TECHNOLOGY". Process Technology means methods,
systems, programs, technology and software, together with know-how related
thereto, for the research, discovery, production and/or characterization of
genes, nucleic acids, proteins, peptides and/or small molecules. Process
Technology shall include Product-Process Tool Technology.
SECTION 1.26 "PRODUCT-PROCESS TOOL TECHNOLOGY". Product-Process Tool
Technology means Product Technology that is used as a tool for the discovery
and/or development of Process Technology or that is necessary for the operation,
verification or calibration of Process Technology. Product-Process Tool
Technology shall include materials, and data related thereto, that are required
to discover, develop, operate, verify or calibrate procedures that are part of
4
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Process Technology, provided that the utility of such materials and data in such
procedures is not specific for a particular product or service. By way of
example, a chemical library used to derive an algorithm for toxicity prediction
is Product-Process Tool Technology, but a chemical library used to identify
ligands for a receptor is not Product-Process Tool Technology.
SECTION 1.27 "PRODUCT TECHNOLOGY". Product Technology means technology
in the form of biological materials (e.g. genes, gene fragments, vectors, cell
lines, cells, organelles, DNA and DNA fragments, proteins and peptides) and
chemical compounds (e.g. small molecule and natural product compounds and
libraries) and data relating to the foregoing; PROVIDED THAT Product Technology
does not include methods, systems, programs, technology and software included in
Process Technology.
SECTION 1.28 "PROHIBITED FIELD". Prohibited Field means (a) the
research, development or commercialization of (i) [**]in the [**], (ii) [**]
or (iii) [**] for the [**] of the [**]; (b) [**] to the [**] in subsection (a)
above; and (c) [**]. Notwithstanding the foregoing, [**](each as defined by
the U.S. Food and Drug Administration) [**] the Prohibited Field. Within the
Prohibited Field, "PLANT AGRICULTURE FIELD" means those fields recited in
subsections (a)(i) and (a)(ii) of the definition of Prohibited Field,
"NUTRITION FIELD" means the field recited in subsection (b) of the definition
of Prohibited Field, and "BOVINE FIELD" means the fields recited in
subsections (a)(iii) and (c) of the definition of Prohibited Field.
SECTION 1.29 "SIGNIFICANT AGRICULTURAL ENTERPRISE". Significant
Agricultural Enterprise means (a) a company which, together with its Affiliates,
had worldwide annual revenues from the sale of products in the Plant Agriculture
Field in excess of $[**] during its most recently completed fiscal year, and (b)
any Affiliates of such company.
SECTION 1.30 "TECHNOLOGY DEVELOPMENT". Technology Development means the
technology development activities to be undertaken by the Parties pursuant to
Article III and the Technology Development Plan.
SECTION 1.31 "TECHNOLOGY DEVELOPMENT PLAN". Technology Development Plan
means the plan to be developed by the Joint Technology Development Team for each
Contract Year, to be updated as necessary during each Contract Year, setting
forth, among other things, a master plan for Technology Development during the
Agreement Term and the matters described in Section 3.3. EXHIBIT A sets forth
the Technology Development Plan for the First Contract Year, reflecting the
master plan and the detailed plan for the First Contract Year.
5
SECTION 1.32 "TECHNOLOGY TRANSFER AGREEMENT". Technology Transfer
Agreement means the Technology Transfer Agreement between Aventis and Millennium
dated as of the Execution Date.
SECTION 1.33 "TERRITORY". Territory means all countries of the world.
SECTION 1.34 "THIRD PARTY". Third Party means any person or entity
other than a Party and its Affiliates.
SECTION 1.35 "ADDITIONAL DEFINITIONS". Each of the following
definitions is set forth in the section of this Agreement indicated below:
DEFINITION SECTION/ARTICLE
---------- ---------------
Aventis Introduction
Aventis Indemnified Parties 9.1(b)
Authorized Servers 2.3(c)
Breaching Party 6.2(a)
Bovine Field 1.28
Change of Control Party 6.2(b)
Development Project 3.3(a)
Execution Date Introduction
First Contract Year 1.9
Inventions 4.1(a)
Joint Invention 4.1(c)
Millennium Introduction
Millennium Indemnified Parties 9.1(a)
Monsanto 2.5
Monsanto Field 2.5
Non-Breaching Party 6.2(a)
Nutrition Field 1.28
Plant Agriculture Field 1.28
Second Contract Year 1.9
Sixth Contract Year 1.9
Source Code Provider 2.3(a)
Source Code Recipient 2.3(a)
Third Contract Year 1.9
ARTICLE II .
GRANTS OF RIGHTS
SECTION 2.1 GRANTS OF LICENSES.
(a) MILLENNIUM LICENSE GRANTS.
(i) LICENSE TO MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY.
Subject to the terms and conditions of this Agreement,
Millennium hereby grants to Aventis and its Affiliates a
co-exclusive (with
6
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Millennium and its Affiliates), non-royalty bearing and
perpetual right and irrevocable license and/or sublicense,
as applicable, in the Territory to the Millennium
Development Program Technology and Millennium Development
Program Technology Patent Rights and Copyrights, to
research, develop, make, have made, distribute for sale,
sell, offer to sell, use, practice, import and export
products and services in the Field, PROVIDED THAT Aventis
and its Affiliates shall not have the right to distribute
for sale, sell or offer for sale, or sublicense others to
distribute for sale, sell or offer for sale, products and
services that constitute or comprise, or whose functionality
is [**], Development Program Technology, except as
otherwise provided in Section 2.2(b). Anything to the
contrary notwithstanding, the foregoing limitation is not
intended to restrict the ability of Aventis and its
Affiliates to distribute for sale, sell, or offer for sale
products which are pharmaceuticals, biologics, diagnostics
or medical devices or any medical services related to the
foregoing. To the extent that Millennium Development
Program Technology encompasses Product-Process Tool
Technology, the license granted in this subsection
(i) with respect to such Product-Process Tool Technology
shall be subject to the further provisions of
subsection (iii).
(ii) LICENSE TO MILLENNIUM EX-PROGRAM TECHNOLOGY. Subject to the
terms and conditions of this Agreement, Millennium hereby
grants to Aventis and its Affiliates a non-exclusive,
non-royalty bearing and perpetual right and irrevocable
license and/or sublicense, as applicable, in the Territory
to the Millennium Ex-Program Technology and Millennium
Ex-Program Technology Patent Rights and Copyrights to the
extent necessary to enable Aventis and its Affiliates to (A)
perform Technology Development activities pursuant to the
Technology Development Plan, and (B) practice the
Development Program Technology in the Field pursuant to the
license granted under subsection (i), PROVIDED THAT Aventis
and its Affiliates shall not have the right to distribute
for sale, sell or offer for sale, or sublicense others to
distribute for sale, sell or offer for sale, products and
services that constitute or comprise, or whose functionality
is [**], Millennium Ex-Program Technology, except as
otherwise provided in Section 2.2(b). Anything to the
contrary notwithstanding, the foregoing limitation is not
intended to restrict the ability of Aventis and its
Affiliates to distribute for sale, sell, or offer for sale
products which are pharmaceuticals, biologics, diagnostics
or medical devices or any medical services related to the
foregoing. To the extent that Millennium Ex-Program
Technology encompasses Product-Process Tool Technology the
license granted in this subsection (ii) with respect to
such Product.
7
Process Tool Technology shall be subject to the further
provisions of subsection (iii).
(iii) LIMITATIONS ON LICENSES TO PRODUCT-PROCESS TOOL TECHNOLOGY.
To the extent that the licenses set forth in subsections (i)
or (ii) relate to Product-Process Tool Technology, such
licenses shall be subject to the further limitation that
Aventis and its Affiliates are licensed to use such
Product-Process Tool Technology solely for (A) use as a tool
for the discovery and development of Development Program
Technology or (B) the operation, verification or calibration
of Development Program Technology. For purposes of clarity,
Aventis and its Affiliates shall not have the right to use
such Product-Process Tool Technology as Product Technology
(e.g., to create copies, modifications or derivatives of
Product-Process Tool Technology to discover or develop
products which constitute Product Technology or to use such
Product-Process Tool Technology as the basis for the
discovery or development of therapeutic or prophylactic
products that are directed to or modulate the activity of
the Product-Process Tool Technology). Anything to the
contrary notwithstanding, the foregoing limitation is not
intended to restrict the ability of Aventis and its
Affiliates to distribute for sale, sell, or offer for sale
products which are pharmaceuticals, biologics, diagnostics
or medical devices or any medical services related to the
foregoing so long as such products are discovered and
developed by Aventis and its Affiliates independent of the
use of Product-Process Tool Technology as Product
Technology.
(iv) SUBLICENSES.
(A) GENERAL. Except as specifically provided in this
subsection (iv), the license/sublicense rights set
forth in Section 2.1(a)(i) and (ii) shall not be
sublicensable or transferable by Aventis and its
Affiliates to a Third Party.
(B) INTERNAL COLLABORATIVE USE. Aventis and its
Affiliates may use internally the Millennium
Development Program Technology and, to the extent,
and only to the extent, necessary to practice
Development Program Technology, the Millennium
Ex-Program Technology for the benefit of a Third
Party in a bona fide collaboration in the Field
between Aventis and/or its Affiliates and such
Third Party.
(C) SUBLICENSE RIGHT TO THIRD PARTY COLLABORATORS.
Aventis and its Affiliates may grant a sublicense
to, and/or transfer, Millennium Development Program
Technology and, to the extent, and only to the
extent, necessary to practice the
8
Development Program Technology, the Millennium
Ex-Program Technology to a Third Party only if all
of the following conditions are satisfied:
(1) such Third Party is engaged in a bona fide
collaboration in the Field with Aventis or any
of its Affiliates;
(2) such Third Party does not have a primary
business focus of providing Process Technology
to third parties or providing services and/or
data relating to the identification and
characterization of genetic materials, proteins
and small molecules to Third Parties;
(3) such sublicense and/or transfer shall include
only the minimum amount of technology
reasonably required to meet the purposes of the
collaboration with such Third Party;
(4) the sublicense and/or transfer is limited to
the use of the sublicensed/transferred
Millennium Development Program Technology and
Millennium Ex-Program Technology in the course
of the bona fide collaboration referenced in
subsection (1), it being understood that the
Millennium Ex-Program Technology shall be used
solely to the extent necessary to practice the
Development Program Technology;
(5) the sublicense and/or transfer does not include
any source code;
(6) the sublicense and/or transfer agreement
requires the Third Party to comply with
provisions comparable to those set forth in
Sections 2.1 and 9.8 and Article V, and shall
also include provisions that prohibit the
reverse engineering, decompiling,
disassembling, or creating derivative works, of
any software; and
(7) Aventis believes in good faith that there is no
material risk of unauthorized usage or public
disclosure of the Millennium Development
Program Technology and/or Millennium Ex-Program
Technology by such Third Party.
9
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
(D) NOTICE OF SUBLICENSEES. Aventis shall provide
notice to Millennium regarding each sublicense
granted and/or transfer made pursuant to the
provisions of subsection (C), including the
identity of the sublicensee/transferee and the
scope of the sublicense/transfer.
(b) AVENTIS LICENSE GRANTS.
(i) LICENSE TO AVENTIS DEVELOPMENT PROGRAM TECHNOLOGY. Subject
to the terms and conditions of this Agreement, Aventis
hereby grants to Millennium and its Affiliates a
co-exclusive (with Aventis and its Affiliates), non-royalty
bearing and perpetual right and irrevocable license and/or
sublicense, as applicable, in the Territory to the Aventis
Development Program Technology and Aventis Development
Program Technology Patent Rights and Copyrights, to
research, develop, make, have made, distribute for sale,
sell, offer to sell, use, practice, import and export
products and services in all fields, PROVIDED THAT
Millennium and its Affiliates shall not have the right to
distribute for sale, sell or offer for sale, or sublicense
others to distribute for sale, sell or offer for sale,
products and services that constitute or comprise, or whose
functionality is [**], Development Program Technology,
except as otherwise provided in Section 2.2(a).
Anything to the contrary notwithstanding, the foregoing
limitation is not intended to restrict the ability of
Millennium and its Affiliates to distribute for sale,
sell, or offer for sale products which are pharmaceuticals,
biologics, diagnostics or medical devices or any medical
services related to the foregoing. To the extent that the
Aventis Development Program Technology encompasses
Product-Process Tool Technology, the license granted in this
subsection (i) with respect to such Product-Process Tool
Technology shall be subject to the further provisions of
subsection (iii).
(ii) LICENSE TO AVENTIS EX-PROGRAM TECHNOLOGY. Subject to the
terms and conditions of this Agreement, Aventis hereby
grants to Millennium and its Affiliates a non-exclusive,
non-royalty bearing and perpetual right and irrevocable
license and/or sublicense, as applicable, in the Territory
to the Aventis Ex-Program Technology and Aventis Ex-Program
Technology Patent Rights and Copyrights to the extent
necessary to enable Millennium and its Affiliates to (A)
perform Technology Development activities pursuant to the
Technology Development Plan, and (B) practice the
Development Program Technology in all fields pursuant to the
license granted under subsection (i), PROVIDED THAT
Millennium and its Affiliates shall not have the right to
distribute for sale, sell, or offer for sale, or sublicense
others to distribute for sale, sell, or offer for sale,
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Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
products and services that constitute or comprise, or whose
functionality is [**], Aventis Ex-Program Technology,
except as otherwise provided in Section 2.2(a). Anything
to the contrary notwithstanding, the foregoing limitation
is not intended to restrict the ability of Millennium
and its Affiliates to distribute for sale, sell, or offer
for sale products which are pharmaceuticals, biologics,
diagnostics or medical devices or any medical services
related to the foregoing. To the extent that the Aventis
Ex-Program Technology encompasses Product-Process Tool
Technology, the license granted in this subsection (ii)
with respect to such Product-Process Tool Technology
shall be subject to the further provisions of
subsection (iii).
(iii) LIMITATIONS ON LICENSES TO PRODUCT-PROCESS TOOL TECHNOLOGY.
To the extent that the licenses set forth in subsection (i)
or (ii) relate to Product-Process Tool Technology, such
licenses shall be subject to the further limitation that
Millennium and its Affiliates are licensed to use such
Product-Process Tool Technology solely for (A) use as a tool
for the discovery and development of Development Program
Technology, or (B) the operation, verification or
calibration of Development Program Technology. For purposes
of clarity, Millennium and its Affiliates shall not have the
right to use such Product-Process Tool Technology as Product
Technology (e.g., to create copies, modifications or
derivatives of Product-Process Tool Technology to discover
or develop products which constitute Product Technology or
to use such Product-Process Tool Technology as the basis for
the discovery or development of therapeutic or prophylactic
products that are directed to or modulate the activity of
the Product-Process Tool Technology). Anything to the
contrary notwithstanding, the foregoing limitation is not
intended to restrict the ability of Millennium and its
Affiliates to distribute for sale, sell, or offer for sale
products which are pharmaceuticals, biologics, diagnostics
or medical devices or any medical services related to the
foregoing so long as such products or services are
discovered and developed by Millennium and its Affiliates
independent of the use of Product-Process Tool Technology as
Product Technology.
(iv) SUBLICENSES.
(A) GENERAL. Except as specifically provided in this
subsection (iv), the license/sublicense rights set
forth in Section 2.1(b)(i) and (ii) shall not be
sublicensable or transferable by Millennium and its
Affiliates to a Third Party.
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(B) INTERNAL COLLABORATIVE USE. Millennium and its
Affiliates may use internally the Aventis Development
Program Technology and, to the extent, and only to the
extent, necessary to practice the Development Program
Technology, the Aventis Ex-Program Technology for the
benefit of a Third Party in a bona fide collaboration
between Millennium and/or its Affiliates and such Third
Party.
(C) SUBLICENSE RIGHT TO THIRD PARTY COLLABORATORS.
Millennium and its Affiliates may grant a sublicense
to, and/or transfer, Aventis Development Program
Technology and, to the extent, and only to the extent,
necessary to practice the Development Program
Technology, the Aventis Ex-Program Technology to a
Third Party only if all of the following conditions are
satisfied:
(1) such Third Party is engaged in a bona fide
collaboration with Millennium or any of its
Affiliates;
(2) such sublicense and/or transfer shall include only
the minimum amount of technology reasonably
required to meet the purposes of the collaboration
with such Third Party;
(3) the sublicense and/or transfer is limited to the
use of the sublicensed/transferred Aventis
Development Program Technology and Aventis
Ex-Program Technology in the course of the bona
fide collaboration referenced in subsection (1), it
being understood that Millennium Ex-Program
Technology shall be used solely to the extent
necessary to practice the Development Program
Technology;
(4) the sublicense and/or transfer agreement requires
the Third Party to comply with provisions
comparable to Sections 2.1 and 9.8, and Article V;
and
(5) Millennium believes in good faith that there is no
material risk of unauthorized usage or public
disclosure of the Aventis Development Program
Technology and/or Aventis Ex-Program Process
Technology by such Third Party.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
(D) NOTICE OF SUBLICENSEES. Millennium shall provide notice
to Aventis regarding each sublicense granted and/or
transfer made pursuant to the provisions of this
subsection (C), including the identity of the
sublicensee/transferee and the scope of the
sublicense/transfer.
SECTION 2.2 RELEASE FROM RESTRICTIONS
(a) RELEASE OF MILLENNIUM FROM RESTRICTIONS.
Notwithstanding the co-exclusive nature of the licenses set forth in Sections
2.1(a)(i) and 2.1(b)(i) and the sublicensing restrictions of Sections
2.1(b)(i), 2.1(b)(ii) and 2.1(b)(iv) (but still subject to the licensing
restrictions of Section 2.1(b)(iii)), Millennium shall have the right to
license and transfer [**] of the Development Program Technology, together
with any Aventis Ex-Program Technology to the extent, and only to the extent,
necessary to practice such Development Program Technology, to Third Parties,
irrespective of whether they are engaged in bona fide collaborations with
Millennium, [**] of the development of [**] the Development Program
Technology.
(b) RELEASE OF AVENTIS FROM RESTRICTIONS. Notwithstanding the
co-exclusive nature of the licenses set forth in Sections 2.1(a)(i) and
2.1(b)(i) and the sublicensing restrictions of Sections 2.1(a)(i), 2.1(a)(ii)
and 2.1(a)(iv) (but still subject to the general scope of the licensing grants
and the specific licensing restrictions of Section 2.1(a)(iii)):
(i) With respect to each component of the Development
Program Technology, during the period commencing on the
[**] anniversary of the development of such component
and ending on the [**] anniversary of the development
of such component, Aventis and its Affiliates shall
have the right to (A) distribute for sale, sell, or
offer to sell products or services in the Field that
comprise the Development Program Technology (together
with any Millennium Ex-Program Technology to the
extent, and only to the extent, necessary to practice
such Development Program Technology) and (B) grant
sublicenses to, and/or transfer, the Development
Program Technology (together with any Millennium
Ex-Program Technology to the extent, and only to the
extent, necessary to practice such Development Program
Technology) included in such products or services to
Third Parties so long as (1) the functionality of such
products is [**] the Development Program Technology,
(2) such sales, sublicenses and transfers are not
part of a general business of selling or providing
access to process technologies or data to Third
Parties and (3) such Third Parties are not in the
business of selling or
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
providing access to process technologies or primarily in the
business of selling or providing access to data to other Third
Parties.
(ii) With respect to each component of the Development
Program Technology, during the period commencing on
the [**] anniversary of the development of such
component, Aventis and its Affiliates shall have the
right to (A) distribute for sale, sell, or offer to
sell products or services in the Field that comprise
the Development Program Technology (together with any
Millennium Ex-Program Technology to the extent, and
only to the extent, necessary to practice such
Development Program Technology) and (B) grant
sublicenses to, and/or transfer, the Development
Program Technology (together with any Millennium
Ex-Program Technology to the extent, and only to the
extent, necessary to practice such Development
Program Technology) included in such products or
services to Third Parties so long as (1) such sales,
sublicenses and transfers are not part of a general
business of selling or providing access to process
technologies or data to Third Parties and (2) such
Third Parties are not in the business of selling
or providing access to process technologies or
primarily in the business of selling or providing
access to data to other Third Parties.
(iii) Sublicenses and/or transfers made pursuant to this
Section 2.2(b) shall be subject to, and made in
compliance with, the provisions of Sections
2.1(a)(iv)(C)(5) and (6).
SECTION 2.3 SOURCE CODE.
(a) ACCESS TO SOURCE CODE. Aventis shall have access to [**]
relating (i) to the Millennium Development Program Technology and, (ii) to the
extent, and only to the extent, necessary to practice such Millennium
Development Program Technology, the Millennium Ex-Program Technology. Millennium
shall have access to any source code (including interpretive code such as perl
or shell code) relating (1) to the Aventis Development Program Technology and,
(2) to the extent, and only to the extent, necessary to practice such Aventis
Development Program Technology, the Aventis Ex-Program Technology. The
Technology Development Plan shall specify the source code to be provided by one
Party (the "Source Code Provider") to the other Party (the "Source Code
Recipient") as provided in the preceding sentence and the timing of such
transfer.
(b) LICENSE GRANT. Upon release of the source code or any part
thereof as provided in subsection (a), the Source Code Provider hereby grants to
the Source Code Recipient and its Affiliates a non-exclusive right and license
and/or sublicense, as applicable, in the Territory, under the Source Code
Provider's rights to such released source code, to modify, enhance, prepare
derivative works and support internal use by the Source Code Recipient and its
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Affiliates of such source code. Such right and license and/or sublicense shall
be non-transferable, except that if the Source Code Recipient is Millennium, it
shall have the right to grant sublicenses to the extent permitted under Sections
2.1(b)(iv) and 2.2(a).
(c) RESTRICTIONS ON SOURCE CODE. In addition to the
confidentiality provisions set forth in Article V, the released source code
shall (i) be stored on no more than [**] client servers (the "Authorized
Servers") at the Source Code Recipient's facilities for [**] after such source
code is released and no more than [**]Authorized Servers thereafter, (ii) be
stored in files on each such Authorized Server which are password protected and
which can be accessed only by authorized people having a need to access such
source code for the purpose of developing modifications or enhancements to, or
derivative works of, the applicable Development Program Technology or
maintaining or supporting the applicable Development Program Technology and
(iii) be stored in files for which a log of all authorized users and their dates
of access are kept. In addition to the foregoing, any source code that becomes
generally known to the public through no fault or omission on the part of
Aventis, any of its Affiliates, contractors, consultants, or agents, shall cease
to be subject to the restrictions set forth in this Section 2.3(c).
(d) SUPPORT. The Source Code Provider shall use commercially
reasonable efforts to respond to questions of the Source Code Recipient
regarding the use of any source code transferred by the Source Code Provider to
the Source Code Recipient pursuant to this Section 2.3.
SECTION 2.4 NONTRANSFERABLE. Except as expressly provided herein, the
licenses granted hereunder shall be nontransferable without the consent of the
Party granting such license.
SECTION 2.5 PROHIBITED FIELD. Aventis acknowledges that Millennium
has agreed to exclusively transfer and license Millennium's rights to certain
Process Technology in the Prohibited Field to [**] and that, pursuant to such
agreement, Millennium has certain [**] in the Prohibited Field. With respect
to [**] the Parties agree that at such [**] (a) if Millennium, [**] licensing
agreement [**] with a [**] with respect to [**] Millennium shall [**] the
licenses set forth in Section 2.1(a) [**] (provided, however, that, [**] and
licensing agreement [**] then the [**] set forth in Section 2.1(a) [**] and,
to the extent, and only to the extent, necessary [**] (b) if Millennium, [**]
licensing agreement [**]
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
with a [**] licensing agreement [**] [**] set forth in section 2.1(a) [**] to
the extent, and only to the extent, [**] Anything to [**] Millennium shall
have the [**] regard to the provisions of this Section 2.5.
ARTICLE III
TECHNOLOGY DEVELOPMENT
SECTION 3.1 TECHNOLOGY DEVELOPMENT. During the Agreement Term, Aventis
and Millennium will each use commercially reasonable efforts to undertake and
effect the Technology Development in accordance with the Technology Development
Plan. As more fully set forth in the Technology Development Plan, the Parties
intend to engage in the joint development of Process Technologies expected to be
useful in the Human Health Care Field. The initial focus of the Parties will be
on Process Technologies for predictive pharmacology and toxicology with such
additional areas as are mutually agreed upon by the Parties. Anything to the
contrary notwithstanding, the Parties acknowledge that they will not enter into
any co-development activities under this Agreement unless both Parties have
mutually agreed to any development and/or co-development activities and have the
contractual right to do so under their respective agreements with Third Parties.
SECTION 3.2 JOINT TECHNOLOGY DEVELOPMENT TEAM.
(a) ESTABLISHMENT OF JOINT TECHNOLOGY DEVELOPMENT TEAM. As
soon as practicable after the Execution Date, Aventis and Millennium shall
establish a Joint Technology Development Team, comprised of three (3)
representatives designated by Aventis and three (3) representatives designated
by Millennium; PROVIDED THAT Aventis and Millennium may designate an equal
number of additional representatives from time to time. Aventis and Millennium
shall each make its initial designation of its representatives not later than
thirty (30) days after the Execution Date. Either Party may change its designees
to the Joint Technology Development Team at any time upon written notice to the
other Party.
(b) RESPONSIBILITIES. The Joint Technology Development Team
shall be responsible for (i) preparing the Technology Development Plan for each
Contract Year, (ii) planning and overseeing the Technology Development, (iii)
reviewing and approving amendments and updates to the Technology Development
Plan, (iv) monitoring compliance by the Parties with their respective activities
and obligations under the Technology Development Plan, (v) assessing whether
specified development benchmarks and specifications have been satisfied, and
(vi) ensuring the timely transfer by the Parties of Development Program
Technology and Ex-Program Technology, including materials, processes and data,
required for implementation of, or resulting from, the Technology Development
Plan.
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(c) PROGRAM DIRECTORS. Each Party shall appoint one of its
designees on the Joint Technology Development Team to serve as a program
director with responsibility for overseeing the day-to-day activities of the
Parties relating to Technology Development. The program directors shall, as
appropriate, appoint one or more project teams for each Development Project to
facilitate the Technology Development.
(d) JOINT TECHNOLOGY DEVELOPMENT TEAM DECISIONS. All decisions
of the Joint Technology Development Team shall be made by unanimous approval of
Aventis and Millennium, with each Party having one vote. Subject to the
provisions of Section 3.1, if the Joint Technology Development Team is unable to
reach agreement on any issue within its purview, such issue shall be resolved in
accordance with the provisions of Article VII.
(e) MEETINGS. The Joint Technology Development Team shall meet
at least four (4) times per Contract Year. Such meetings shall be held at such
times and places as are mutually agreed upon by the Joint Technology Development
Team and may be conducted in person, by telephone or by video conference. Each
Party shall use reasonable efforts to cause its representatives to attend the
meetings of the Joint Technology Development Team. If a representative of a
Party is unable to attend a meeting, such Party may designate an alternate to
attend such meeting in place of the absent representative. In addition, each
Party may, at its discretion invite other employees, and, with the consent of
the other Party, consultants or scientific advisors, to attend the meetings of
the Joint Technology Development Team. Either Party may convene a special
meeting of the Joint Technology Development Team for the purpose of resolving
disputes upon reasonable advance written notice to the other Party, including a
description of the nature of the dispute in reasonable detail, to all of the
Joint Technology Development Team members. The Parties shall each bear their
respective costs and expenses of attendance of Joint Technology Development Team
meetings by their respective representatives.
SECTION 3.3 TECHNOLOGY DEVELOPMENT PLAN. At least sixty (60) days prior
to the commencement of each Contract Year, other than the First Contract Year,
the Technology Development Plan for which is set forth in EXHIBIT A, the Joint
Technology Development Team shall prepare the Technology Development Plan
setting forth specific tasks and responsibilities relating to the Technology
Development hereunder for such Contract Year consistent with the master plan
agreed upon by the Parties in the Technology Development Plan for the First
Contract Year (as such master plan has been amended). The Joint Technology
Development Team shall update, as appropriate, the Technology Development Plan
at its quarterly meetings, including, without limitation, the addition of new
Development Projects. Each Technology Development Plan shall, among other
things:
(a) set forth which process technology development projects
(each, a "Development Project") shall be undertaken or continued during the
Contract Year;
(b) identify with specificity the activities to be undertaken
by each Party for each Development Project for such Contract Year;
(c) identify with specificity development benchmarks and
specifications for each Development Project for such Contract Year;
17
(d) identify with specificity the Ex-Program Technology
expected to be utilized by the Parties in each Development Project, as well as
any restrictions or obligations placed upon such Ex-Program Technology by Third
Parties, and, if applicable, the procedures and logistics for the transfer of a
Party's Ex-Program Technology to the other Party;
(e) identify with specificity the procedures and logistics for
the transfer of Millennium Development Program Technology to Aventis and Aventis
Development Program Technology to Millennium; and
(f) if applicable, identify with specificity any exceptions to
the general provisions under Section 4.1 governing the ownership of inventions
made in the course of a Development Project.
SECTION 3.4 TECHNOLOGY DEVELOPMENT DISCLOSURE AND UPDATE.
(a) MILLENNIUM. During the Agreement Term, Millennium will
provide to the Joint Technology Development Team, on at least a quarterly basis,
reasonably detailed, written, confidential updates on the progress of efforts by
Millennium pursuant to the Technology Development Plan, including but not
limited to identification of technology which, at the time of such update,
Millennium believes in good faith it could successfully transfer to Aventis in
compliance with this Article III. Notwithstanding the foregoing, Millennium need
not disclose to Aventis any information which it is precluded from disclosing
under any agreement or other arrangement with a Third Party; provided that
Millennium shall use commercially reasonable efforts to not include any such
restrictions in such agreements with Third Parties, or, if they are included, to
obtain consent of such Third Party for such disclosure. The Joint Technology
Development Team shall, as appropriate, modify the Technology Development Plan
to reflect any agreed-upon transfer of such technologies from Millennium to
Aventis.
(b) AVENTIS. During the Agreement Term, Aventis will provide
to the Joint Technology Development Team, on at least a quarterly basis,
reasonably detailed, written, confidential updates on efforts by Aventis
pursuant to the Technology Development Plan, including but not limited to the
identification of technology which, at the time of such update, Aventis believes
in good faith it could successfully transfer to Millennium in compliance with
this Article III. Notwithstanding the foregoing, Aventis need not disclose to
Millennium any information which it is precluded from disclosing under any
agreement or other arrangement with a Third Party; provided that Aventis shall
use commercially reasonable efforts to not include any such restrictions in such
agreements with Third Parties, or, if they are included, to obtain consent of
such Third Party for such disclosure. The Joint Technology Development Team
shall, as appropriate, modify the Technology Development Plan to reflect any
agreed upon transfer of such technologies from Aventis to Millennium.
SECTION 3.5 DEVELOPMENT EXPENSES. Each Party shall bear its own
expenses incurred in connection with each Development Project, unless otherwise
specifically agreed upon in writing by the Parties.
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ARTICLE IV .
INTELLECTUAL PROPERTY OWNERSHIP, PROTECTION AND RELATED MATTERS
SECTION 4.1 OWNERSHIP.
(a) "Inventions" shall mean all proprietary, non-public
Process Technology, including, without limitation, processes, techniques,
formulas, equipment designs, know-how, show-how and trade secrets, discoveries,
practices, inventions, technology, designs, works of authorship, instructions,
and other intellectual property, patentable or otherwise, tangible or intangible
that are developed, made, conceived, reduced to practice or generated during the
course of performance of the activities pursuant to this Agreement which are not
generally known.
(b) SOLE INVENTIONS. Aventis shall solely own all Inventions
developed, made, conceived, reduced to practice or generated solely by its
employees, agents or other persons acting under its authority (or any of their
respective Affiliates) and Millennium shall solely own all Inventions developed,
made, conceived, reduced to practice or generated solely by its employees,
agents or other persons acting under its authority (or any of their respective
Affiliates). Notwithstanding the foregoing, Aventis agrees not to utilize any
such sole Invention in the Prohibited Field.
(c) JOINT INVENTIONS. All Inventions developed, made,
conceived, reduced to practice or generated jointly by employees, agents or
other persons acting under the authority of each Party (or any of their
respective Affiliates) ("Joint Inventions") shall be jointly owned by Aventis
and Millennium.
SECTION 4.2 PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
(a) MILLENNIUM PATENTABLE INVENTIONS. Millennium shall have
the exclusive right and option, but not the obligation, (at its sole expense) to
file and prosecute any patent applications and maintain any patents that cover
Inventions solely owned by Millennium.
(b) AVENTIS PATENTABLE INVENTIONS. Aventis shall have the
exclusive right and option, but not the obligation, (at its sole expense) to
file and prosecute any patent applications and maintain any patents that cover
Inventions solely owned by Aventis.
(c) JOINTLY-OWNED INVENTIONS. With respect to Joint
Inventions, the Parties shall mutually agree upon a course of action, including
allocation of expenses, as to the nature of protection sought for such Joint
Inventions and strategies for filing, prosecution and maintenance of patents and
patent applications for Joint Inventions, and shall keep each other reasonably
informed with regard to such activities.
SECTION 4.3 EXPLOITATION OF INVENTIONS.
(a) EXPLOITATION OF SOLE INVENTIONS. Aventis agrees not to
utilize any sole Inventions of Aventis made in the course of activities under
this Agreement of the Parties in the Prohibited Field.
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(b) EXPLOITATION OF JOINT INVENTIONS. Subject to the grant of
licenses to Aventis and to Millennium under Article II, respectively, each of
the Parties shall be free to exploit any Joint Inventions within the Territory
without payment of any additional compensation to the other Party.
Notwithstanding the foregoing, Aventis agrees not to utilize, directly or
indirectly, any Joint Inventions made in the course of activities under this
Agreement in the Prohibited Field.
SECTION 4.4 COOPERATION. Each Party hereby agrees to (a) make available
to the other Party (or to the other Party's authorized attorneys, agents or
representatives), its employees, agents or consultants to the extent reasonably
necessary to enable the appropriate Party to file and prosecute patent
applications and maintain resulting patents that cover Joint Inventions, and (b)
cooperate, if necessary and appropriate, with the other Party in gaining patent
term extensions wherever applicable to Patent Rights that cover Joint
Inventions, (c) provide to the other Party copies of all material correspondence
pertaining to prosecution of patent applications covering Joint Inventions with
the U.S. Patent and Trademark Office or its foreign counterparts, (d) to
endeavor in good faith to coordinate its efforts with the other Party to
minimize or avoid interference with Patent Rights of such other Party, (e)
cooperate, if necessary and appropriate, with the other Party in the preparation
and filing of any copyright registrations, and (f) determine the nature of the
proprietary protection to be sought for all Joint Inventions and take
commercially reasonable efforts to implement such protections.
SECTION 4.5 THIRD PARTY INFRINGEMENT.
(a) During the Agreement Term, promptly after either Party
becomes aware of the reasonable probability of an alleged infringement by a
Third Party of Millennium Development Program Technology Patent Rights and
Copyrights or Aventis Development Program Technology Patent Rights and
Copyrights, in the Field, such Party shall provide written notice to the other
Party regarding such infringement. Any such notice shall include reasonable
evidence to support an allegation of infringement by such Third Party.
(b) Millennium or Aventis, respectively, in the case of a sole
Invention, shall have the exclusive right, but not the obligation, to institute
an infringement suit or take other appropriate action that it believes is
reasonably required to protect its proprietary position.
(c) With respect to Joint Inventions, the Parties shall
mutually agree whether or not to institute an infringement suit or take other
appropriate action to protect their proprietary position in such Joint
Inventions.
(d) Millennium will use commercially reasonable efforts to
enforce the Millennium Development Program Technology Patent Rights and
Copyrights against Third Parties in the Field.
(e) Aventis will use commercially reasonable efforts to take
appropriate action with respect to infringement of Aventis Development Program
Technology Patent Rights and Copyrights against Third Parties.
SECTION 4.6 CLAIMED INFRINGEMENT. Promptly after becoming aware of the
reasonable probability of a Third Party claim that the Development Program
Technology infringes such
20
Third Party's intellectual property rights, the Party having notice of such
claimed infringement shall provide written notice to the other Party regarding
such claimed infringement, and the Parties shall meet to discuss an appropriate
course of action. Each Party shall be responsible for its own costs incurred in
connection with any such claimed infringement.
ARTICLE V ..
CONFIDENTIALITY
SECTION 5.1 CONFIDENTIAL INFORMATION. Any Confidential Information
disclosed by a Party to the other Party during the term of this Agreement shall
not be used by the receiving Party except in connection with the activities
contemplated by this Agreement, shall be maintained in confidence by the
receiving Party, and shall not otherwise be disclosed by the receiving Party to
any Third Party, without the prior written consent of the disclosing Party,
except to the extent that the Confidential Information (as determined by
competent documentation):
(a) was known or used by the receiving Party or its Affiliates
prior to its date of disclosure to the receiving Party; or
(b) either before or after the date of the disclosure to the
receiving Party or its Affiliates is lawfully disclosed to the receiving Party
or its Affiliates by sources other than the disclosing Party rightfully in
possession of the Confidential Information; or
(c) either before or after the date of the disclosure to the
receiving Party or its Affiliates becomes published or generally known to the
public (including information known to the public through the sale of products
in the ordinary course of business) through no fault or omission on the part of
the receiving Party its Affiliates or its sublicensees; or
(d) is independently developed by or for the receiving Party
or its Affiliates without reference to or reliance upon the Confidential
Information.
In addition, the provisions of this Section 5.1 shall not preclude the
receiving Party or its Affiliates from disclosing Confidential Information to
the extent such Confidential Information is required to be disclosed by the
receiving Party or its Affiliates to comply with applicable laws, to defend or
prosecute litigation or to comply with governmental regulations or judicial or
administrative decrees or orders, PROVIDED THAT the receiving Party provides
prior written notice of such disclosure to the disclosing Party and takes
reasonable and lawful actions to endeavor to avoid and/or minimize the degree of
such disclosure. Specific information shall not be deemed to be within any of
the foregoing exclusions merely because it is embraced by more general
information falling within these exclusions.
SECTION 5.2 EMPLOYEE AND ADVISOR OBLIGATIONS. Millennium and Aventis
each agree that they shall provide Confidential Information received from the
other Party only to their respective employees, consultants and advisors, and to
the employees, consultants and advisors of such Party's Affiliates, who have a
need to know and have an obligation to treat such information and materials as
confidential.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
SECTION 5.3 TERM. All obligations of confidentiality imposed under this
Article V shall expire [**] following the disclosure of the relevant
Confidential Information, PROVIDED THAT (a) obligations of confidentiality
relating to source code provided pursuant to Section 2.3 shall continue in
effect indefinitely and (b) in no event shall the expiration of the obligation
to maintain the confidentiality of the relevant Confidential Information be used
to circumvent the sublicensing restrictions of Sections 2.1(a), 2.1(b) and
2.2(b).
ARTICLE VI .
TERM AND TERMINATION
SECTION 6.1 TERM; EXTENSION. This Agreement becomes effective as of the
Effective Date and may be terminated as set forth in this Article VI. The
Parties acknowledge that they may find it to be mutually beneficial to continue
the relationship established by this Agreement after the termination of the
Agreement Term. Consequently, the Parties hereby agree to negotiate in good
faith, prior to [**] before the expiration of the Agreement Term,
whether or not to extend the Agreement Term on terms and conditions that are
mutually acceptable to the Parties.
SECTION 6.2 TERMINATION. The Parties may terminate this Agreement upon
mutual agreement, and either Party may terminate this Agreement upon the
occurrence of any one of the following events:
(a) MATERIAL BREACH. Upon any material breach of this
Agreement by Aventis or Millennium (in such capacity, the "Breaching Party"),
the other Party (in such capacity, the "Non-Breaching Party") may terminate this
Agreement by sixty (60) days' written notice to the Breaching Party, specifying
the material breach. The termination becomes effective at the end of the sixty
(60) day period unless (i) the Breaching Party cures such breach during such
sixty (60) day period, or (ii) if such breach is not susceptible to cure within
sixty (60) days of the receipt of written notice of the breach, the Breaching
Party is diligently pursuing a cure (unless such breach, by its nature, is
incurable, in which case the Agreement may be terminated immediately). The
Parties will use reasonable efforts to work together to cure any breach.
(b) CHANGE OF CONTROL. If a Change of Control of a Party (the
"Change of Control Party") occurs during the Agreement Term, the other Party
may, at its sole discretion, elect to terminate this Agreement by giving the
Change of Control Party written notice within sixty (60) days after the other
Party's receipt of notice of such Change of Control, such termination to be
effective sixty (60) days after provision of written notice of termination.
(c) ANNUAL TERMINATION RIGHT. Either Party may terminate this
Agreement by providing written notice to the other Party at least ninety (90)
days prior to the commencement of any Contract Year, such termination to be
effective on the last day of the Contract Year during which such notice of
termination is given, PROVIDED THAT work on all pending Development Projects
shall continue until the next mutually agreed upon identifiable end point even
if such further work would extend beyond the last day of the Contract Year.
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(d) TERMINATION OF TECHNOLOGY TRANSFER AGREEMENT. In the event
that the Technology Transfer Agreement is terminated pursuant to the provisions
of Section 9.3 thereof, the non-breaching Party under such Technology Transfer
Agreement may terminate this Agreement by providing written notice to the other
Party, such notice to be provided within sixty (60) days of the effective date
of such termination of the Technology Transfer Agreement.
SECTION 6.3 RIGHTS UPON TERMINATION. Upon termination of this Agreement
pursuant to Section 6.2 or 9.7:
(a) All Technology Development activities shall cease, except
as set forth in Section 6.2(c) or as otherwise agreed by the Parties;
(b) Each Party shall retain the licenses granted to it by the
other Party with respect to Development Program Technology and Ex-Program
Technology up to the date of such termination;
(c) Each Party shall have the rights with respect to the
ownership of intellectual property as set forth in Article IV;
(d) The obligations regarding confidentiality shall continue
as set forth in Article V;
(e) The Parties' obligations of defense and indemnity shall
continue in full force and effect for an unlimited period; and
(f) Any cause of action or claim of either Party accrued or to
accrue because of any breach or default by the other Party hereunder shall
continue.
SECTION 6.4 COOPERATION UPON TERMINATION. In the event of a termination
under Section 6.2 the Parties shall cooperate in the transfer of any existing
Development Program Technology that has not previously been transferred, which
transfer shall be diligently carried out within ninety (90) days after the
effective date of such termination.
ARTICLE VII
DISPUTE RESOLUTION
SECTION 7.1 JOINT STEERING COMMITTEE.
(a) As soon as practicable after the Execution Date, Aventis
and Millennium shall establish a Joint Steering Committee comprised of three (3)
senior executives of Aventis and three (3) senior executives of Millennium.
(b) The Joint Steering Committee shall meet within forty-five
(45) days after the Effective Date and, thereafter, at least quarterly during
the Agreement Term to (a) review the efforts of the Parties in the conduct of
the Technology Development activities, and (b) attempt to resolve any disputes
relating to this Agreement that may arise between the Parties that are referred
to the Joint Steering Committee by the Joint Technology Development Team or by
either of the Parties.
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(c) The location of such meetings of the Joint Steering
Committee shall be as agreed by the Parties. The Joint Steering Committee may
also meet by means of a telephone conference call or by videoconference.
(d) Each Party may change any one or more of its
representatives to the Joint Steering Committee at any time upon written notice
to the other Party.
(e) Each Party shall use commercially reasonable efforts to
cause its representatives to attend the meetings of the Joint Steering
Committee. If a representative of a Party is unable to attend a meeting, such
Party may designate an alternate to attend such meeting in place of the absent
representative, and such alternate shall have full voting power at such meeting.
(f) In addition, each Party may, at its discretion, invite
non-voting employees, and, with the consent of the other Party, consultants or
scientific advisors, to attend meetings of the Joint Steering Committee.
(g) Decisions of the Joint Steering Committee shall be made by
unanimous consent of Aventis and Millennium, with each Party having one vote.
Either Party may convene a special meeting of the Joint Steering Committee for
the purpose of resolving disputes.
SECTION 7.2 REFERRAL OF UNRESOLVED MATTERS TO JOINT STEERING COMMITTEE.
If the Joint Technology Development Team is unable to reach a decision on any
matter within the scope of its responsibilities within thirty (30) days after
such matter is first considered by it, either Party may refer such unresolved
matter to the Joint Steering Committee for consideration and resolution. In such
event, a meeting of the Joint Steering Committee shall be convened as soon as
practicable in order to consider and resolve the unresolved matter. Any
determination by the Joint Steering Committee shall be final and binding upon
the Parties.
SECTION 7.3 REFERRAL OF UNRESOLVED MATTERS TO EXECUTIVE OFFICERS. If
the Joint Steering Committee is unable to resolve any matter referred to it
under Section 7.2 within thirty (30) days after the matter is referred to it,
the matter shall be referred to the Executive Officers to be resolved by
negotiation in good faith as soon as is practicable but in no event later than
thirty (30) days after referral. Such resolution, if any, of a referred issue by
the Executive Officers shall be final and binding on the Parties.
SECTION 7.4 INDEPENDENT EXPERTS. Each Executive Officer shall have the
right to engage the services of any number of independent experts in the field
in question (the individual(s) so engaged by each Executive Officer to be
engaged under obligations of confidentiality) to assist the Executive Officer in
making a determination on the unresolved matter, and each Executive Officer
shall be obligated to consider in good faith the analyses and opinions of any
such independent experts engaged by either of them in making a determination.
SECTION 7.5 NON-BINDING MEDIATION. If the matter has not been resolved
by the Executive Officers within thirty (30) days of referral in accordance with
Section 7.3, or if the Executive Officers fail to meet within such thirty (30)
days, either Party may initiate a non-binding mediation procedure. The
non-binding mediation shall be administered by the American Arbitration
Association in accordance with its commercial mediation rules. Unless otherwise
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mutually agreed upon by the Parties, the mediation proceedings shall be
conducted at the location chosen by the Party not originally requesting the
resolution of the dispute. The Parties agree that they shall share equally the
cost of the mediation, including filing and hearing fees, and the cost of the
mediator(s). Each Party shall have the right, at its own expense, to be
represented by counsel in such a proceeding. If any unresolved matter is not
resolved following non-binding mediation pursuant to this Section 7.5, either
Party may seek any remedy, at law or in equity, that may be available.
ARTICLE VIII
REPRESENTATIONS AND WARRANTIES
SECTION 8.1 REPRESENTATION OF AUTHORITY; CONSENTS. Millennium and
Aventis each represents and warrants to the other Party that as of the Execution
Date it has full right, power and authority to enter into this Agreement, this
Agreement has been duly executed by such Party and constitutes a legal, valid
and binding obligation of such Party, enforceable in accordance with its terms,
and all necessary consents, approvals and authorizations of all government
authorities and other persons required to be obtained by such Party in
connection with the execution, delivery and performance of this Agreement have
been and shall be obtained except with respect to clearance from the United
States Federal Trade Commission pursuant to the Xxxx-Xxxxx-Xxxxxx Antitrust
Improvements Act of 1976, as amended, and the rules and regulations promulgated
thereunder.
SECTION 8.2 NO CONFLICT. Each Party represents to the other Party that
notwithstanding anything to the contrary in this Agreement, the execution and
delivery of this Agreement and the performance of such Party's obligations
hereunder (a) do not conflict with or violate such Party's corporate charter and
bylaws or any requirement of applicable laws of regulations and (b) do not and
shall not conflict with, violate or breach or constitute a default or require
any consent under, any contractual obligation of such Party.
SECTION 8.3 KNOWLEDGE OF PENDING OR THREATENED LITIGATION. Each Party
represents and warrants to the other Party that there is no claim,
investigation, suit, action or proceeding pending or, to the knowledge of such
Party, expressly threatened, against such Party before or by any governmental
entity or arbitrator that, individually or in the aggregate, could reasonably be
expected to (i) materially impair the ability of such Party to perform any
obligation under this Agreement or (ii) prevent or materially delay or alter the
consummation of any or all of the transactions contemplated hereby.
SECTION 8.4 EMPLOYEE AND CONSULTANT OBLIGATIONS. Each Party represents
and warrants that all of its employees, officers, and consultants that are
supporting the performance of such Party's obligations under this Agreement or
otherwise have access to Development Program Technology or Ex-Program Technology
shall have executed agreements or have existing obligations under law requiring
assignment to such Party of all inventions made during the course of and as the
result of their association with such Party and obligating the individual to
maintain as confidential such Party's Confidential Information as well as
confidential information of the other Party or any Third Party which such Party
may receive, to the extent required to support such Party's obligations under
this Agreement.
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SECTION 8.5 DISCLAIMER OF WARRANTY. Nothing in this Agreement shall be
construed as a representation made or warranty given by either Party that any
patents will issue based on pending applications or that any such pending
applications or patents issued thereon will be valid or that any software will
be operated without interruption or will be error-free. EXCEPT AS EXPRESSLY SET
FORTH IN THIS AGREEMENT, EACH PARTY EXPRESSLY DISCLAIMS, WAIVES, RELEASES, AND
RENOUNCES ANY WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY WARRANTY
THAT SUCH PARTY'S PROCESS TECHNOLOGY OR PRODUCT-PROCESS TOOL TECHNOLOGY DOES NOT
INFRINGE THE INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY.
ARTICLE IX .
MISCELLANEOUS PROVISIONS
SECTION 9.1 PRODUCT LIABILITY INDEMNIFICATION.
(a) AVENTIS. Aventis agrees to defend Millennium and its
Affiliates, at Aventis' cost and expense, and will indemnify and hold Millennium
and its Affiliates and their respective directors, officers, employees and
agents (the "Millennium Indemnified Parties") harmless from and against any
losses, costs, damages, fees or expenses arising out of any Third Party claim
relating to (i) any breach by Aventis of any of its representations, warranties
or obligations pursuant to this Agreement, (ii) any sublicense and/or transfer
by Aventis of the Development Program Technology and/or Ex-Program Technology,
or (iii) any personal injury resulting from the development, manufacture, use,
sale or other disposition of any product or service offered by Aventis and/or
its Affiliates or licensees to the extent that such injury is alleged to be the
result of the use by Aventis and/or its Affiliates or licensees of the
Development Program Technology or Ex-Program Technology. In the event of any
such claim against the Millennium Indemnified Parties by any Third Party,
Millennium shall promptly notify Aventis in writing of the claim and Aventis
shall manage and control, at its sole expense, the defense of the claim and its
settlement. The Millennium Indemnified Parties shall cooperate with Aventis and
may, at their option and expense, be represented in any such action or
proceeding. Aventis shall not be liable for any litigation costs or expenses
incurred by the Millennium Indemnified Parties without Aventis' prior written
authorization. In addition, Aventis shall not be responsible for the
indemnification of any Millennium Indemnified Party arising from any negligent
or intentional acts by such party, or any claims compromised or settled without
its prior written consent. Notwithstanding the foregoing, (x) in the event of a
personal injury claim that is covered by the indemnification provisions of the
Inflammation Agreement, the indemnification provisions of the Inflammation
Agreement shall control and (y) in the event that both Aventis and the
Millennium Indemnified Parties are parties to a class action suit relating to
the sale of substantially similar products sold by Aventis and the Millennium
Indemnified Parties, the foregoing indemnification shall apply solely in respect
of the product or service offered by Aventis and/or its Affiliates and
licensees.
(b) MILLENNIUM. Millennium agrees to defend Aventis and its
Affiliates, at Millennium's cost, and will indemnify and hold Aventis and its
Affiliates and their respective
26
directors, officers, employees and agents (the "Aventis Indemnified Parties")
harmless from and against any losses, costs, damages, fees or expenses arising
out of any Third Party claim relating to (i) any breach by Millennium of any of
its representations, warranties or obligations pursuant to this Agreement, (ii)
any sublicense and/or transfer by Millennium of the Development Program
Technology and/or Ex-Program Technology, or (iii) any personal injury resulting
from the development, manufacture, use, sale or other disposition of any product
or service offered by Millennium and/or its Affiliates or licensees to the
extent that such injury is alleged to be the result of the use by Millennium
and/or its Affiliates or licensees of the Development Program Technology or
Ex-Program Technology. In the event of any claim against the Aventis Indemnified
Parties by any Third Party, Aventis shall promptly notify Millennium in writing
of the claim and Millennium shall manage and control, at its sole expense, the
defense of the claim and its settlement. The Aventis Indemnified Parties shall
cooperate with Millennium and may, at their option and expense, be represented
in any such action or proceeding. Millennium shall not be liable for any
litigation costs or expenses incurred by the Aventis Indemnified Parties without
Millennium's prior written authorization. In addition, Millennium shall not be
responsible for the indemnification of any Aventis Indemnified Party arising
from any negligent or intentional acts by such party, or any claims compromised
or settled without its prior written consent. Notwithstanding the foregoing, (x)
in the event of a personal injury claim that is covered by the indemnification
provisions of the Inflammation Agreement, the indemnification provisions of the
Inflammation Agreement shall control and (y) in the event that both Millennium
and the Aventis Indemnified Parties are parties to a class action suit relating
to the sale of substantially similar products sold by Millennium and the Aventis
Indemnified Parties, the foregoing indemnification shall apply solely in respect
of the product or service offered by Millennium and/or its Affiliates and
licensees.
SECTION 9.2 GOVERNING LAW. This Agreement shall be construed and the
respective rights of the Parties determined according to the substantive laws of
the State of Delaware notwithstanding the provisions governing conflict of laws
under such Delaware law to the contrary, except matters of intellectual property
law which shall be determined in accordance with the intellectual property laws
relevant to the intellectual property in question; and PROVIDED, FURTHER, that
the U.N. Convention on the International Sale of Goods shall not apply. English
shall be the governing language for the construction and interpretation of this
Agreement.
SECTION 9.3 ASSIGNMENT. Neither Millennium nor Aventis may assign this
Agreement in whole or in part without the consent of the other, except if such
assignment occurs in connection with the sale or transfer (by merger or
otherwise) of all or substantially all of the business and assets of Millennium
or Aventis to which the subject matter of this Agreement pertains.
Notwithstanding the definitions set forth in this Agreement with respect to
Affiliates and the fact that an acquirer of a Party would constitute an
Affiliate of such Party, in the case of any assignment of this Agreement
(including in the context of a Change of Control), such assignment shall not
provide the non-assigning Party with rights or access to intellectual property
or technology of the acquirer of the assigning Party. Notwithstanding the
foregoing, Aventis may assign this Agreement to an Affiliate, provided that
Aventis shall guarantee the performance of such Affiliate, and provided further
that either Party may assign its rights, but not its obligations, pursuant to
this Agreement in whole or in part to an Affiliate of such Party that is
controlled by such Party.
27
SECTION 9.4 ENTIRE AGREEMENT. This Agreement, the Schedule attached
hereto, and the Exhibit referred to in this Agreement constitute the entire
agreement between the Parties with respect to the subject matter hereof, and
supersede all previous arrangements with respect to the subject matter hereof,
whether written or oral. The Parties acknowledge that the Exhibit referred to in
this Agreement is being simultaneously delivered by Millennium to Aventis on or
before the Execution Date. The Parties also acknowledge the simultaneous
execution and delivery of the Technology Transfer Agreement, the Inflammation
Agreement, and the Investment Agreement between the Parties dated as of the
Execution Date, none of which shall be superseded by this Agreement.
SECTION 9.5 AMENDMENTS. Any amendment or modification to this Agreement
shall be made in writing signed by both Parties.
SECTION 9.6 NOTICES.
Notices to Millennium shall be addressed to:
Millennium Pharmaceuticals, Inc.
00 Xxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: Chief Executive Officer
Facsimile No.: (000) 000-0000
with a copy to:
Attention: Legal Department
Notices to Aventis shall be addressed to:
Aventis Pharmaceuticals Inc.
Xxxxx 000-000
X.X. Xxx 0000
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Attention: Vice President, Technology Licensing and Alliances
Facsimile No.: (000) 000-0000
with a copy to:
Attention: Vice President, Legal Corporate Department
Facsimile No.: (000) 000-0000
Either Party may change its address to which notices shall be sent by
giving notice to the other Party in the manner herein provided. Any notice
required or provided for by the terms of this Agreement shall be in writing and
shall be (a) sent by registered or certified mail, return receipt requested,
postage prepaid, (b) sent via a reputable overnight courier service, or (c) sent
by facsimile transmission, in each case properly addressed in accordance with
the paragraph
28
above. The effective date of notice shall be the actual date of receipt by the
Party receiving the same.
SECTION 9.7 FORCE MAJEURE. No failure or omission by either Party in
the performance of any obligation of this Agreement shall be deemed a breach of
this Agreement or create any liability if the same shall arise from any cause or
causes beyond the control of such Party, including, but not limited to, the
following: acts of gods; acts or omissions of any government; any rules,
regulations or orders issued by any governmental authority or by any officer,
department, agency or instrumentality thereof; fire; storm; flood; earthquake;
accident; war; rebellion; insurrection; riot; and invasion; provided that such
failure or omission resulting from one of the above causes is cured as soon as
is practicable after the occurrence of one or more of the above mentioned causes
and in no event more than two hundred seventy (270) days after the date of
occurrence.
SECTION 9.8 COMPLIANCE WITH EXPORT REGULATIONS. Neither Party shall
export any technology licensed to it by the other Party under this Agreement
except in compliance with U.S. and other applicable export laws and regulations,
including without limitation, the Export Administration Regulations and the
International Traffic in Arms Regulations.
SECTION 9.9 SECTION 365(N) OF THE BANKRUPTCY CODE. All rights and
licenses granted under or pursuant to any section of this Agreement are, and
shall otherwise be, deemed to be, for purposes of Section 365(n) of the
Bankruptcy Code, licenses of rights to "intellectual property" as defined under
Section 101(35A) of the Bankruptcy Code. The Parties shall retain and may fully
exercise all of their respective rights and elections under the Bankruptcy Code.
Upon the bankruptcy of either Party, the non-bankrupt Party shall further be
entitled to a complete duplicate of (or complete access to, as appropriate) any
such intellectual property, and such, if not already in its or their possession,
shall be promptly delivered to the non-bankrupt Party, unless the bankrupt Party
elects to continue, and continues, to perform all of its obligations under this
Agreement.
SECTION 9.10 PUBLIC ANNOUNCEMENTS. On the Execution Date, the Parties
shall issue one or more press release(s). Any announcements or similar publicity
with respect to the execution of this Agreement shall be agreed upon between the
Parties in advance of such announcement. The Parties agree that any such
announcement will not contain confidential business or technical information
and, if disclosure of confidential business or technical information is required
by law or regulation, will make commercially reasonable efforts to minimize such
disclosure and obtain confidential treatment for any such information which is
disclosed to a governmental agency or group. Each Party agrees to provide to the
other Party a copy of any public announcement as soon as reasonably practicable
under the circumstances prior to its scheduled release. Except under
extraordinary circumstances, each Party shall provide the other with an advance
copy of any press release at least five (5) business days prior to the scheduled
disclosure. Each Party shall have the right to expeditiously review and
recommend changes to any announcement regarding this Agreement or the subject
matter of this Agreement. Except as otherwise required by law, the Party whose
press release has been reviewed shall remove any information the reviewing Party
reasonably deems to be inappropriate for disclosure. The contents of any such
announcement or similar publicity which has been reviewed and approved by the
reviewing Party can be re-released by either Party without a requirement for
re-approval. Furthermore, each
29
Party shall give the other Party a reasonable opportunity to review all filings
with the United States Securities and Exchange Commission describing the terms
of this Agreement prior to submission of such filings, and shall give due
consideration to any reasonable comments by the non-filing Party relating to
such filing, including without limitation the provisions of this Agreement for
which confidential treatment should be sought.
SECTION 9.11 NON-SOLICITATION. During the Agreement Term, and for a
period of one (1) year thereafter, neither Party shall either directly or
indirectly solicit, recruit, induce, encourage or attempt to induce or encourage
any employee of the other Party or independent contractor primarily dedicated to
the other Party to terminate his or her employment with such other Party and
become employed by or consult for such Party whether or not such individual is
engaged full-time by such other Party, and whether or not such employment is
pursuant to a written agreement or is at-will.
SECTION 9.12 INDEPENDENT CONTRACTORS. It is understood and agreed that
the relationship between the Parties is that of independent contractors and that
nothing in this Agreement shall be construed as authorization for either
Millennium or Aventis to act as agent for the other. Members of the Joint
Steering Committee and the Joint Technology Development Team shall be, and shall
remain, employees of Millennium or Aventis, as the case may be. No Party shall
incur any liability for any act or failure to act by members of the Joint
Steering Committee and the Joint Technology Development Team who are employees
of such other Party.
SECTION 9.13 NO STRICT CONSTRUCTION. This Agreement has been prepared
jointly and shall not be strictly construed against either Party.
SECTION 9.14 HEADINGS. The captions or headings of the sections or
other subdivisions hereof are inserted only as a matter of convenience or for
reference and shall have no effect on the meaning of the provisions hereof.
SECTION 9.15 NO IMPLIED WAIVERS; RIGHTS CUMULATIVE. No failure on the
part of Millennium or Aventis 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.
SECTION 9.16 SEVERABILITY. If any provision hereof should be held
invalid, illegal or unenforceable in any respect in any jurisdiction, the
Parties hereto shall substitute, by mutual consent, valid provisions for such
invalid, illegal or unenforceable provisions which valid provisions in their
economic effect are sufficiently similar to the invalid, illegal or
unenforceable provisions, that it can be reasonably assumed that the Parties
would have entered into this Agreement with such valid provisions. In case such
valid provisions cannot be agreed upon, the invalidity, illegality or
unenforceability of one or several provisions of this Agreement shall not affect
the validity, of this Agreement as a whole, unless the invalid, illegal or
unenforceable provisions are of such essential importance to this Agreement that
it is to be reasonably assumed
30
that the Parties would not have entered into this Agreement without the invalid,
illegal or unenforceable provisions.
SECTION 9.17 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.
SECTION 9.18 NO THIRD PARTY BENEFICIARIES. No person or entity other
than Aventis, Millennium and their respective Affiliates and permitted assignees
hereunder shall be deemed an intended beneficiary hereunder or have any right to
enforce any obligation of this Agreement.
SECTION 9.19 NO CONSEQUENTIAL DAMAGES. UNLESS RESULTING FROM A PARTY'S
WILLFUL MISCONDUCT, NEITHER PARTY HERETO SHALL BE LIABLE FOR SPECIAL, INCIDENTAL
OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT OR THE EXERCISE OF ITS
RIGHTS HEREUNDER, INCLUDING WITHOUT LIMITATION LOST PROFITS ARISING FROM OR
RELATING TO ANY BREACH OF THIS AGREEMENT, REGARDLESS OF ANY NOTICE OF SUCH
DAMAGES. NOTHING IN THIS SECTION 9.19 IS INTENDED TO LIMIT OR RESTRICT THE
INDEMNIFICATION RIGHTS OR OBLIGATIONS OF EITHER PARTY.
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.]
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IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
date first set forth above.
MILLENNIUM PHARMACEUTICALS, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx
------------------------------------
Title: Chief Business Officer
AVENTIS PHARMACEUTICALS INC.
By: /s/ Xxxxx Xxxxxxx, M.D.
------------------------------------
Title: Executive Vice President
32
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
SCHEDULE I
TYPES OF TECHNOLOGY
Predictive Pharmacology Technologies: For [**] and [**] of [**].
33
