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EXHIBIT 10.39
ARIAD PHARMACEUTICALS, INC. HAS OMITTED FROM THIS EXHIBIT 10.39 PORTIONS OF THE
AGREEMENT FOR WHICH ARIAD PHARMACEUTICALS, INC. HAS REQUESTED CONFIDENTIAL
TREATMENT FROM THE SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE
AGREEMENT FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED WITH AN
ASTERISK AND SUCH CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
LICENSE AGREEMENT
This License Agreement, dated as of July 17, 1997 (the "Effective Date"),
is between ARIAD Pharmaceuticals, Inc. 00 Xxxxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000
("ARIAD"),and Mitotix, Inc., Xxx Xxxxxxx Xxxxxx, Xxxxxxxx 000, Xxxxxxxxx, XX
00000 ("Mitotix").
W I T N E S S E T H :
WHEREAS, ARIAD has acquired from Mitotix a certain Invention and certain
Licensed Patents and Licensed Know-How (all as hereinafter defined) pursuant to
a Technology Purchase and Sale Agreement of even date herewith (the "Technology
Purchase Agreement"); and
WHEREAS, in connection with such acquisition, ARIAD has agreed to [*]
license Mitotix under such Invention, Licensed Patents and Licensed Know-How in
the field of Diagnostic Products (as hereinafter defined) in accordance with the
terms of this Agreement.
NOW THEREFORE, for valuable consideration, the receipt and adequacy of
which are hereby acknowledged, and intending to be legally bound, the parties
hereto mutually agree as follows:
ARTICLE I - DEFINITIONS
1.1 "AFFILIATE" shall mean any corporation, company, partnership and/or
firm which controls or is controlled by or is under common control with Mitotix.
For the purposes of this
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Paragraph, control shall mean: (a) in the case of corporate entities, direct or
indirect ownership of at least fifty percent (50%) of the stock or participating
shares entitled to vote for the election of directors; and (b) in the case of
non-corporate entities, direct or indirect ownership of at least fifty percent
(50%) of the equity interest or the power to direct the management and policies
of such entity.
1.2 "FIELD" shall mean the field of Diagnostic Products.
1.3 "DIAGNOSTIC PRODUCTS" shall mean products which are intended to monitor
the course of disease or therapy in humans, predict, detect or identify a
disease in humans or determine the outcome of a pathological condition in
humans.
1.4 "INVENTION" shall have the meaning set forth in the Technology Purchase
Agreement.
1.5 "LICENSED PATENTS" shall mean those U.S. patent applications listed on
Schedule A attached hereto, any and all patents issuing from such applications,
together with any divisionals and continuations and certain
continuations-in-part as set forth below of said applications and any
re-examinations, extensions, or reissues of the foregoing and patents of
addition thereto; and any and all foreign counterparts of any of the foregoing;
provided, however, that continuations-in-part shall include only those
applications claiming the benefit of the filing date of an application listed on
Schedule A in which all new matter is directed to subject matter specifically
described in an application listed on Schedule A.
1.6 "LICENSED KNOW-HOW" shall mean any and all Know-How, as defined in the
Technology Purchase Agreement, transferred by Mitotix to ARIAD pursuant to the
Technology Purchase Agreement.
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ARTICLE II - LICENSE GRANT
2.1 ARIAD hereby grants to Mitotix and Mitotix hereby accepts [*]
royalty-free license [*] in the Field under the Invention, the Licensed Patents
and Licensed Know-How to develop, use, make, have made, sell and import
Diagnostic Products.
2.2 Notwithstanding the foregoing, ARIAD hereby retains [*] the Licensed
Patents and the Licensed Know-How to develop, use, make, have made, sell and
import Diagnostic Products (i) for use in connection with therapeutic or
prophylactic products that are developed, manufactured, imported or sold by
ARIAD and/or parties licensing such therapeutic or prophylactic products from
ARIAD ("ARIAD Therapeutic Products"), (ii) for use in determining how to utilize
(e.g., dosing regimen or drug monitoring) ARIAD Therapeutic Products to treat a
particular disease or patient, or (iii) for monitoring the effect of ARIAD
Therapeutic Products. The foregoing right reserved to ARIAD shall not include
the right to develop, use, make, have made, sell and import Diagnostic Products
to generally determine the presence or absence of, or predisposition to, a
disease state independent of a determination relative to the use of ARIAD
Therapeutic Products.
2.3 The license granted to Mitotix under Paragraph 2.1 of this article
shall include the right to grant sublicenses of no greater scope than the
license granted to Mitotix hereunder.
2.4 In the event that prosecution of any of the Licensed Patents leads to
the issuance of claims directed to [*] as defined in the Technology Purchase
Agreement), ARIAD covenants that it will not enforce such claims against Mitotix
or any licensee or sublicensee of Mitotix (i) to which Mitotix licenses
technology developed by Mitotix which utilizes such an assay, or (ii) with which
Mitotix is collaborating on a program or project which utilizes such an assay.
Any such licensee or sublicensee of Mitotix may rely on ARIAD's covenant as an
intended third party
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beneficiary. No license or covenant to refrain from enforcing any other patent
rights owned or licensed by ARIAD is hereby expressed or implied.
ARTICLE III - PROPRIETARY POSITION; INFRINGEMENT
3.1 ARIAD shall be responsible, [*] for the preparation, filing,
prosecution and maintenance of all patent applications and patents included in
the Licensed Patents and shall use commercially reasonable efforts to obtain the
issuance of [*] claims in the Field in such applications. ARIAD shall keep
Mitotix reasonably informed on a timely basis as to the status of the patent
applications and the patents. ARIAD shall provide advance written notice to
Mitotix if, for any reason, it elects not to continue the preparation, filing,
prosecution or maintenance of any of the patent applications or patents included
in the Licensed Patents, [*].
3.2 If at any time either party becomes aware of any infringement by any
commercial third parties of any Licensed Patent (excluding claims of [*] as
defined in the Purchase Agreement) in the Field, such party shall provide the
other party with the available evidence, if any, of such infringement.
3.3 If at any time any third party shall infringe any unexpired Licensed
Patent in the Field and Mitotix shall give notice in writing to ARIAD of the
existence of such infringement, then ARIAD shall have the right, but not the
obligation, in the exercise of its commercially reasonable judgment, to take
action to xxxxx such infringement. [*] In the event ARIAD does not take such
actions, then, subject to ARIAD's right set forth in Section 3.4, Mitotix may at
its election bring suit in its own name or in the name of ARIAD against such
infringer, all at the expense of Mitotix. ARIAD shall execute such legal papers
necessary for the prosecution of such suit as may be reasonably requested by
Mitotix. Mitotix shall be entitled to receive and retain all recoveries of
compensatory damages, in any form, from any suit so brought by
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Mitotix, except that ARIAD and Mitotix shall be entitled to receive an amount
equal to their reasonable expenses in prosecuting the suit (in the case of
Mitotix) or providing any cooperation (in the case of ARIAD) under this section.
In any suit brought hereunder, (i) the parties hereto shall each cooperate in
the conduct of any suit hereunder at their own expense, (ii) the parties shall
share equally any recoveries, in any form, other than compensatory damages, and
(iii) if the party bringing suit decides to enter into a settlement of the suit,
such settlement shall require the consent of the other party hereto, which shall
not be unreasonably withheld or delayed. Notwithstanding the foregoing, [*]
except that ARIAD and Mitotix shall be entitled to receive an amount equal to
their reasonable expenses in connection with such suit. In all events, if
damages or the proceeds of settlement are not sufficient to pay the expenses of
both ARIAD and Mitotix as provided above, the available amount shall be used to
pay such expenses on a pro-rata basis.
3.4 If Mitotix wishes to bring any suit pursuant to Section 3.3, it shall
give ARIAD thirty (30) days' written notice. Notwithstanding the foregoing,
ARIAD shall have the right to deny Mitotix the right to bring any such suit
proposed to be brought by Mitotix under Section 3.3 above by written notice to
Mitotix within such thirty (30) day period if ARIAD in good faith believes that
the commencement or prosecution of any such suit will create an unreasonable
risk of invalidating or otherwise jeopardizing the value of the Licensed
Patents.
ARTICLE IV - TERMINATION
If any material terms or conditions of this Agreement are breached by a
party (the "breaching party") and such breach is not corrected within sixty (60)
days after written notice thereof is given to the breaching party by the
non-breaching party, then the non-breaching party shall have the option to
terminate this Agreement by giving written notice thereof to the breaching
party.
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ARTICLE V - ASSIGNABILITY
[*]
ARTICLE VI - STATUS OF THE PARTIES
No partnership, joint venture, agency or employer-employee relationship is
created hereby and neither party is authorized or empowered to make any
statement, contract, warranty, representation or commitment on behalf of the
other.
ARTICLE VII - INDEMNIFICATION; DISCLAIMER
7.1 Except to the extent that any claims or causes of action are based upon
[*] Mitotix shall defend, indemnify and hold ARIAD harmless against any and all
liability, damage, loss, cost or expense resulting from any claim, suit or other
action arising out of or based on Mitotix's (or its Affiliates' or
sublicensees') development, manufacture, use or sale of any Diagnostic Products
licensed hereunder. ARIAD shall promptly notify Mitotix of any such claim of
which it has actual notice and shall cooperate with Mitotix, at Mitotix's sole
expense, in the defense thereof, but the omission to so notify Mitotix will not
relieve Mitotix from any liability it will have to ARIAD other than under
Section 7.1 or to the extent Mitotix is not actually prejudiced as a result of
such omission. The parties shall use joint counsel, selected jointly by them, in
the defense of any such claim, unless ARIAD, in the exercise of commercially
reasonable judgment, determines that it needs to retain separate counsel because
of an actual or potential conflict of interest between ARIAD and Mitotix. [*]
7.2 EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, NEITHER PARTY
MAKES ANY WARRANTY WITH RESPECT TO ANY TECHNOLOGY, GOODS, SERVICES, RIGHTS OR
OTHER SUBJECT MATTER OF THIS AGREEMENT AND HEREBY DISCLAIMS WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A
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PARTICULAR PURPOSE AND NON-INFRINGEMENT WITH RESPECT TO ANY AND ALL OF THE
FOREGOING.
ARTICLE VII - NOTICE
Any notice required under this Agreement shall be considered given upon the
earlier of: (i) when actually received at the address set forth below; or (ii)
two business days after such notice, properly addressed and shipped by overnight
service providing evidence of delivery or by certified mail, return receipt
requested, is sent by either party to the other. The proper addresses for notice
are as follows:
If to ARIAD: ARIAD Pharmaceuticals, Inc.
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: Chief Executive Officer
If to Mitotix: Mitotix, Inc.
Xxx Xxxxxxx Xxxxxx
Xxxxxxxx 000
Xxxxxxxxx, XX 00000
Attention: President
ARTICLE IX - MISCELLANEOUS
9.1 This Agreement shall be governed by and construed in accordance with
the internal laws of The Commonwealth of Massachusetts. Any controversy, dispute
or claim arising out of or in connection with this Agreement, or the breach,
termination or validity hereof, shall be settled by final and binding
arbitration to be conducted by an arbitration tribunal in Boston, Massachusetts
pursuant to the rules of the American Arbitration Association. The arbitration
tribunal shall consist of three arbitrators. The party initiating arbitration
shall nominate one arbitrator in the request for arbitration and the other party
shall nominate a second in the answer thereto within thirty (30) days of receipt
of the request. The two arbitrators so
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named will then jointly appoint the third arbitrator. If the answering party
fails to nominate its arbitrator within the thirty (30) day period, or if the
arbitrators named by the parties fail to agree on the third arbitrator within
sixty (60) days, the office of the American Arbitration Association in Boston,
Massachusetts shall make the necessary appointments of such arbitrator(s). Each
party shall pay the costs of its respective arbitrator, and the parties shall
share equally the costs of the third arbitrator. The decision or award of the
arbitration tribunal (by a majority determination, or if there is no majority,
then by the determination of the third arbitrator, if any) shall be final, and
judgment upon such decision or award may be entered in any competent court or
application may be made to any competent court for judicial acceptance of such
decision or award and an order of enforcement. In the event of any procedural
matter not covered by the aforesaid rules, the procedural law of The
Commonwealth of Massachusetts shall govern.
9.2 This Agreement, in conjunction with the Technology Purchase Agreement,
constitutes the entire Agreement between the parties hereto with respect to the
subject matter hereof and as such supersedes all previous written and oral
negotiations, agreements, contracts, representations, letters of intent,
understandings and commitments with respect thereto. This Agreement may be
modified, discharged, amended, or extended only by a writing signed by a duly
authorized representative of the parties.
9.3 Should any court of competent jurisdiction later consider any portion
of this Agreement to be invalid, illegal or unenforceable, it shall be
considered severed from this Agreement. All other provisions, rights or
obligations shall continue without regard to the severed provision, provided
that the remaining provisions of this Agreement are in accordance with the
intention of the parties.
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9.4 The parties will agree upon a press release which shall be issued
promptly after the Closing under the Technology Purchase Agreement. Except as
set forth in the preceding sentence, neither Mitotix nor ARIAD shall make any
news release or other public statement disclosing the terms of this Agreement or
of any amendment hereto, or the performance hereunder or the existence of the
arrangement between the parties without the prior approval of the other party,
except as required by applicable law, rule or regulation, which approval shall
not be unreasonably withheld. Once a particular item of information has been
disclosed as aforesaid, either party may make subsequent disclosure of such
information without further approval of the other party.
9.5 Headings in this Agreement are included for convenience of reference
only and shall not constitute a part of this Agreement for any other purpose.
9.6 No failure or delay of any party in exercising any right, power or
remedy hereunder shall operate as a waiver thereof; nor shall any single or
partial exercise of any such right, power or remedy preclude any other or
further exercise thereof or the exercise of any other right, power or remedy
hereunder.
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IN WITNESS WHEREOF, and intending to be bound hereby, the parties have
caused this agreement to be signed by their duly authorized representatives.
MITOTIX, INC.
By:/s/
----------------------------
Name:
Title:
ARIAD PHARMACEUTICALS, INC.
By:/s/
----------------------------
Name:
Title:
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SCHEDULE A
LICENSED PATENTS
1 [*]
2. [*]
3. [*]
4. [*]
5. [*]
6. [*]
7. [*]
8. [*]
