EXHIBIT 10.87
[Xxxxxxx & Xxxxxxx Letterhead]
AGREEMENT
This Agreement, made and entered into this 26th day of December, 1995,
by and between
GENTA INCORPORATED, having offices at 0000 Xxxxxxx Xxxxxxx Xxxxx, Xxx
Xxxxx, Xxxxxxxxxx 00000 (hereinafter "GENTA"), and
XXXXXXX & XXXXXXX CONSUMER PRODUCTS, INC., having offices at Xxxxxxxxx
Xxxxxx, Xxxxxxxx, Xxx Xxxxxx 00000 (hereinafter "CPI").
W I T N E S S E T H
WHEREAS, GENTA is a research-based company which focuses on the
discovery of biopharmaceuticals;
WHEREAS, CPI develops, manufactures and sells skin and hair care
products; and
WHEREAS, GENTA and CPI desire to cooperate in the development of new
skin care agents and active ingredients.
NOW THEREFORE, in consideration of the covenants and conditions set
forth herein, and other good valuable consideration, the sufficiency of which is
hereby acknowledged by each of the parties hereto, it is agreed as follows:
1. General Purpose
It is the general purpose of this Agreement to provide for GENTA and
CPI to cooperate in a feasibility study for the potential joint development of
new and improved skin and hair care products and active ingredients with the
objective of GENTA manufacturing and supplying such ingredients to CPI. In order
to accomplish this purpose, CPI will evaluate the use of one or more of GENTA's
compounds that are selective for the mRNA of the human androgen receptor
(hereinafter, "the Compound") as a prophylactic and/or therapeutic agent for
androgen receptor mediated conditions (such as control of hair growth, sebaceous
gland activity, etc.). These will be evaluated in a study that is designed to
quantify the reduction in sebum production resulting from topical application of
the Compound to the forehead of selected patients (hereinafter, "the Study").
The Compound and the Formulation (as defined below) provided by GENTA
to CPI under this Agreement (a) shall remain the sole property of GENTA, (b)
shall be used by and under the control of CPI solely in order to carry out its
obligations under this Agreement, (c) shall not be used by or delivered to or
for the benefit of any third party without the prior express written consent of
GENTA.
GENTA and CPI each shall comply in all material respects with all laws
and governmental rules, regulations and guidelines which are applicable to the
Compound, the Formulation or the use thereof, including biosafety procedures,
and with any safety precautions described in a writing which accompanies the
Compound or the Formulation.
CPI shall return to GENTA all unused quantities of the Compound and the
Formulation after the completion, or earlier termination, of the Study.
THE COMPOUND AND THE FORMULATION ARE PROVIDED "AS IS" AND WITHOUT ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTY OF MERCHANTABILITY OR OF FITNESS FOR ANY PARTICULAR PURPOSE OR
ANY WARRANTY THAT THE USE OF THE COMPOUND OR THE FORMULATION WILL NOT INFRINGE
OR VIOLATE ANY PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY.
It is understood by the parties that "CPI", unless expressly stated
otherwise, shall mean Xxxxxxx & Xxxxxxx Consumer Products, Inc., the corporation
of New Jersey as above described, together with its Affiliates. "Affiliate" of,
or an entity "Affiliated" with, a specified entity, means an entity that
controls (in other words, owns directly or indirectly or otherwise has the power
to vote more than fifty percent (50%) of the voting stock), is controlled by, or
is under common control with, the entity specified.
2. Responsibility of the Parties
GENTA will provide the Compound and an appropriate delivery vehicle
(hereinafter, "the Formulation"). GENTA will supply the Formulation free of
charge to CPI in quantities sufficient to complete CPI's evaluation. CPI will
(1) provide technical resources to develop an acceptable topical formulation for
use in the Study, (2) conduct appropriate toxicological tests, (3) design,
conduct and evaluate the results of the Study and (4) provide GENTA with a
written summary of all tests conducted in progress reports on the status of the
Study and copies of all results. The Study will take place outside of the United
States. CPI will be responsible for fulfilling regulatory requirements for
shipping the Formulation outside the United States.
The Results shall be jointly owned by GENTA and CPI, and shall
constitute Confidential Information of GENTA and CPI for purposes of Section 4
below.
3. Expenses
Each party will bear its own expenses in the initial preparation and
evaluation of compounds under this Agreement, with the following exception: CPI
shall within fifteen (15) days of signing this Agreement, pay GENTA a
non-refundable commitment fee of Fifty Thousand Dollars ($50,000.00) which will
not be creditable toward any further purchases or license fees.
2
4. Confidentiality
In order to accomplish the objectives of this Agreement, it may be
necessary for the parties to exchange materials and information which are
considered to be confidential and proprietary to the disclosing party. Each
party agrees to limit its disclosure of Confidential Information to the other
party to that reasonably necessary to achieve the objectives of this Agreement.
All information disclosed hereunder which is considered by the
disclosing party to be confidential and proprietary shall be in writing and
marked "Confidential", or if initially disclosed orally or visually, designated
as being confidential at the time of disclosure and confirmed in writing within
thirty (30) days (hereinafter "Confidential Information"). All written documents
containing Confidential Information and other confidential material in tangible
form received by either party under this Agreement shall remain the property of
the originating party, and all and any such other materials shall be promptly
returned to the originating party upon request; provided, however, that the
receiving party shall have the right to retain one copy of any and all such
materials solely in its Law Department files.
Each party agrees that all Confidential Information received from the
other party under this Agreement shall be maintained in confidence and not
disclosed to a third party during the term of this Agreement and for a period of
five (5) years thereafter, and the receiving party agrees not to use such
Confidential Information for any purpose other than to further the objectives of
this Agreement without the prior written consent of the other party. Each party
shall use the same standard of care to protect the confidentiality of
information received from the other party as it uses to protect its own
confidential information, and shall limit disclosure of such information to
those of its personnel and consultants who have an actual need to know and have
a written obligation to protect the confidentiality thereof.
Notwithstanding the preceding provisions, obligations regarding
confidentiality and use of Confidential Information disclosed hereunder shall
not include:
a) information which, at the time of disclosure, was published, known
publicly, or otherwise in the public domain;
b) information which, after disclosure, is published, becomes known
publicly, or otherwise becomes part of the public domain through no fault of the
receiving party;
c) information which, prior to the time of disclosure, is known to the
receiving party without any obligation of confidentiality as evidenced by its
written records;
d) information which, after disclosure, is made available to the
receiving party in good faith by a third party who is under no obligation of
confidentiality or secrecy to the disclosing party; and
3
e) information which is independently developed by employees or others
on behalf of the receiving party, without access to or use of the Confidential
Information of the disclosing party.
Notwithstanding the preceding provisions, obligations regarding
confidentiality and use of Confidential Information disclosed hereunder shall
not apply to the extent that the receiving party is required to disclose
information by law, order or regulation of a governmental agency or a court of
competent jurisdiction, provided that the receiving party shall provide written
notice thereof to the disclosing party and sufficient opportunity for the
disclosing party to object to any such disclosure or to request confidential
treatment thereof.
The disclosure of Confidential Information hereunder by either party
shall not result in any right or license under any patent or know-how being
granted to the other party, nor shall it be construed to impose on the other
party any restriction, duty or obligation other than that of confidentiality and
non-use as expressly provided herein.
5. Designated Representatives
The following representatives are designated by the parties to disclose
and receive Confidential Information under this Agreement:
For CPI: Xxxxxxx Xxxxxxx, Ph.D.
Worldwide Director
Dermatology Research and Drug Discovery
For GENTA: Xx. Xxxxxx Xxxxxx
Senior Vice President
Research & Development
6. Competitive Activity
GENTA acknowledges that CPI and its affiliates are in the business of
manufacturing and selling cosmetic and pharmaceutical products for the purposes
of caring for the skin and hair and has an ongoing research and development
effort relating to such products. In addition, CPI may consult with, supply, and
jointly develop with third parties skin and hair care compositions and products.
Nothing contained herein shall be construed to prevent CPI from continuing such
activities provided only that CPI does not reveal to such third parties, or use
for any purpose (other than as permitted by this Agreement), the Compound, the
Formulation or any Confidential Information of GENTA covered by this Agreement.
7. Inventions
Any invention, discovery, or improvement made or technology developed,
whether patentable or not (an "Invention") as a result of work performed
pursuant to this Agreement shall be owned by the party making the Invention if
such Invention is made independently of the other party.
4
Inventions made jointly by representatives of both GENTA and CPI shall
be jointly owned by CPI and GENTA. GENTA and CPI shall promptly disclose to the
other party all such solely or jointly owned Inventions. Both parties shall
cooperate in the filing and prosecution of patent applications related to joint
inventions and shall share equally the costs associated with such filings and
prosecution. With respect to such joint inventions, the parties will grant each
other a non-assignable, sole license to make, have made, use and sell such
inventions without the right to sublicense without the mutual agreement of the
parties. With respect to joint inventions and inventions made by GENTA pursuant
to this Agreement, CPI shall have the right of first refusal for an exclusive
license to make, have made, use and sell the inventions in the field of skin and
hair care.
Nothing in this Agreement shall be construed to grant to a party a
license or other rights under any intellectual property rights of the other
party, unless expressly provided in this Agreement.
8. Future Rights
Simultaneous with the performance of the Study, CPI and GENTA will
negotiate the terms of a mutually acceptable full development, supply and
product license agreement (hereinafter, "the License Agreement"). Under the
License Agreement, CPI shall have the exclusive worldwide rights to have made,
use and sell GENTA's antisense compounds which are selective to the mRNA of the
human androgen receptor for the field of skin and hair care. The License
Agreement shall be complete prior to the completion of the Study. The
negotiations to develop the License Agreement between CPI and GENTA shall begin
no later than two (2) months after the execution of this Agreement.
At the completion of the Study, CPI shall notify GENTA that the Study
has been completed. Within sixty (60) days after CPI notifies GENTA that the
Study has been completed, CPI shall notify GENTA whether it intends to pursue
the development of the Compound commercially. Upon notification that CPI intends
to pursue the development of the Compound commercially, the parties shall
execute the License Agreement and CPI shall pay GENTA One Hundred and Fifty
Thousand Dollars ($150,000.00). The License Agreement will include at least the
following provisions: (i) GENTA will supply the Compound exclusively to CPI for
use in its skin and hair care products, (ii) CPI will purchase its requirements
of such compounds from GENTA, if GENTA is capable, at a negotiated fair market
price which shall be at least as favorable as GENTA's price to other customers
for similar compounds, and (iii) CPI will pay GENTA mutually acceptable
royalties on Net Sales of products and milestone payments.
9. Exclusivity
During the duration of the Study, GENTA shall not engage any third
party to study the androgen receptor mediated dermatological effects of the
Compound or discuss with or negotiate with any third party regarding the right
to make, have made, use or sell the Compound.
5
10. Term and Termination
The term of this Agreement shall be one (1) year from the date written
above. This Agreement may be terminated by CPI upon thirty (30) days prior
written notice to GENTA, provided, however, that the obligations of each party
under Paragraph 4 hereof shall survive such termination of this Agreement.
11. Miscellaneous
This Agreement may not be superseded, amended, or modified except by
written agreement signed on behalf of both parties hereto.
Notices given by either party hereto shall be in writing and shall be
effective upon receipt and shall be sent by registered or certified mail or
overnight courier to the other party at the address set forth above.
Each party's rights and obligations under this Agreement shall enure to
the benefit of, and shall be binding upon, its successors.
This Agreement shall in no way constitute a commitment by CPI to
purchase any goods from GENTA or by GENTA to produce and sell any goods to CPI.
This Agreement shall be governed by and construed in accordance with
the laws of the State of Delaware, without regard to the conflict of law
principles thereof.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed in duplicate by their duly authorized representatives on the day and
year first above written.
GENTA INCORPORATED XXXXXXX & XXXXXXX
CONSUMER PRODUCTS, INC.
By: /s/Xxxxxx X. Xxxxx By: /s/
------------------ ---------------------
Xxxxxx X. Xxxxx
Title: Vice President,
Title:__________________ Licensing & Acquisition
6
