EXHIBIT 10.2
EXECUTION COPY
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
TECHNOLOGY EXCHANGE AND DEVELOPMENT AGREEMENT
This Technology Exchange and Development Agreement dated the 9th day of
March, 2001 (the "Effective 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 Xxxxxx Laboratories, a corporation
organized and existing under the laws of the State of Illinois having its
principal office at 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx, Xxxxxxxx 00000
("Abbott").
INTRODUCTION
1. Millennium and Abbott have each developed certain process
technologies which they are willing to exchange, and which are potentially
useful in the discovery and development of pharmaceutical products.
2. Millennium and Abbott each desire to co-develop certain additional
process technologies which are potentially useful in the discovery and
development of pharmaceutical products.
NOW, THEREFORE, Millennium and Abbott agree as follows:
ARTICLE 1
DEFINITIONS, EXHIBITS AND SCHEDULES
When used in this Agreement, each of the following terms shall have the
meanings set forth in this Article I:
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. For the purpose
of this Agreement, TAP Pharmaceutical Products Inc. and its subsidiaries shall
not be deemed Affiliates of Abbott.
1.2 "ABBOTT BACKGROUND TECHNOLOGY". Abbott Background Technology means
Process Technology that does not constitute Abbott Development Program
Technology or Abbott Exchange Technology and (a) is solely or jointly owned by
Abbott or any of its Affiliates or is licensed in by Abbott or any of its
Affiliates from Third Parties, in each case as of the Effective Date or during
the Development Term (but only to the extent that transfer or sublicensing is
permitted by any applicable agreements with Third Parties), and (b) is specified
in the Technology Development Plan and is used by the Parties in the Development
Project.
1.3 "ABBOTT BACKGROUND TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Abbott
Background Technology Patent Rights and Copyrights means Patent Rights and
copyrights that cover Abbott Background Technology (but only to the extent that
transfer or sublicensing is permitted by any applicable agreements with Third
Parties).
1.4 "ABBOTT DEVELOPMENT PROGRAM TECHNOLOGY". Abbott Development Program
Technology means Process Technology which is (a) developed by Abbott or any of
its Affiliates alone or jointly by Abbott and Millennium in the course of
Technology Development activities under Article V, or (b) licensed in by Abbott
or any of its Affiliates from Third Parties pursuant to the Technology
Development Plan, in each case during the Development Term (but only to the
extent that transfer or sublicensing is permitted by any applicable agreements
with Third Parties).
1.5 "ABBOTT DEVELOPMENT PROGRAM TECHNOLOGY PATENT RIGHTS AND
COPYRIGHTS". Abbott Development Program Technology Patent Rights and Copyrights
means Patent Rights and copyrights that cover Abbott Development Program
Technology (but only to the extent that transfer or sublicensing is permitted by
any applicable agreements with Third Parties).
1.6 "ABBOTT EXCHANGE TECHNOLOGY". Abbott Exchange Technology means the
Process Technology described in EXHIBIT A to this Agreement which (a) is solely
or jointly owned by Abbott or any of its Affiliates, or (b) is licensed by
Abbott or its Affiliates from Third Parties, in each case as of the date of
Delivery with respect to the Abbott Exchange Technology and as of the date of
delivery with respect to the Upgrade to the Abbott Exchange Technology (but only
to the extent that transfer or sublicensing is permitted by any applicable
agreements with Third Parties). Abbott Exchange Technology specifically excludes
Direct Licensed Software and Sublicensed Software.
1.7 "ABBOTT EXCHANGE TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Abbott
Exchange Technology Patent Rights and Copyrights means, with respect to each
component of the Abbott
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Exchange Technology, Patent Rights and copyrights that are conceived and/or
reduced to practice prior to the expiration of the Upgrade Term and that cover
such component of Abbott Exchange Technology (but only to the extent that
transfer or sublicensing is permitted by any applicable agreements with Third
Parties).
1.8 "ABBOTT TECHNOLOGY". Abbott Technology means Abbott Background
Technology, solely owned Abbott Development Program Technology, Abbott Exchange
Technology, and Sublicensed Software provided by Abbott.
1.9 "BACKGROUND TECHNOLOGY". Background Technology means Abbott
Background Technology and/or Millennium Background Technology.
1.10 "CONFIDENTIAL INFORMATION". Confidential Information means all
proprietary materials, know-how or other information (including software),
whether or not patentable, 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 Team shall constitute Confidential Information
of a Party unless otherwise specified.
1.11 "DEVELOPMENT PROGRAM TECHNOLOGY". Development Program Technology
means Abbott Development Program Technology and/or Millennium Development
Program Technology.
1.12 "DEVELOPMENT TERM". Development Term means the period beginning on
the Effective Date and ending on the second anniversary of the Effective Date.
1.13 "DIRECT LICENSED SOFTWARE". Direct Licensed Software means the
software to be obtained and/or licensed directly from Third Parties by Abbott or
Millennium in connection with the Technology Exchange.
1.14 "EXCHANGE TECHNOLOGY". Exchange Technology means Abbott Exchange
Technology and/or Millennium Exchange Technology.
1.15 "EXCHANGE TERM". Exchange Term means the period beginning on the
Effective Date and ending on the second anniversary of the Effective Date.
1.16 "EXECUTIVE OFFICERS". Executive Officers means the Chief Executive
Officer of Abbott (or an executive of Abbott designated by such Chief Executive
Officer) and the Chief
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Executive Officer of Millennium (or an executive of Millennium designated by
such Chief Executive Officer).
1.17 "FIELD". Field means any and all fields of use other than the
Prohibited Field.
1.18 "JOINT EXECUTIVE COMMITTEE". Joint Executive Committee means a
committee comprised of an appropriate number of representatives of Abbott and
Millennium to plan and oversee the activities contemplated by this Agreement,
as well as the activities of the Parties under the Metabolic Agreement.
1.19 "JOINT TECHNOLOGY TEAM". Joint Technology Team means a committee
comprised of an appropriate number of representatives of Abbott and Millennium
to plan and oversee the Technology Exchange and the Technology Development, as
more fully described in Articles III and V.
1.20 "METABOLIC AGREEMENT". Metabolic Agreement means the Collaboration
and License Agreement between the Parties of even date herewith.
1.21 "MILLENNIUM BACKGROUND TECHNOLOGY". Millennium Background
Technology means Process Technology that does not constitute Millennium
Development Program Technology or Millennium Exchange Technology and (a) 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 Development Term (but only to the extent that
transfer or sublicensing is permitted by any applicable agreements with Third
Parties), and (b) is specified in the Technology Development Plan and is used by
the Parties in the Development Project.
1.22 "MILLENNIUM BACKGROUND TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS".
Millennium Background Technology Patent Rights and Copyrights means Patent
Rights and copyrights that cover Millennium Background Technology (but only to
the extent that transfer or sublicensing is permitted by any applicable
agreements with Third Parties).
1.23 "MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY". Millennium
Development Program Technology means Process Technology which is (a) developed
by Millennium or any of its Affiliates along or jointly by Millennium and Abbott
in the course of Technology Development activities under Article V, 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 Development Term
(but only to the extent that transfer or sublicensing is permitted by any
applicable agreements with Third Parties).
1.24 "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 (but only to the extent that transfer or sublicensing is
permitted by any applicable agreements with Third Parties).
1.25 "MILLENNIUM EXCHANGE TECHNOLOGY". Millennium Exchange Technology
means the Process Technology described in EXHIBIT B to this Agreement and which
(a) is solely or
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jointly owned by Millennium or any of its Affiliates or (b) is licensed by
Millennium or its Affiliates from Third Parties, in each case as of the date of
Delivery with respect to the Millennium Exchange Technology and as of the date
of delivery with respect to the Upgrade to the Millennium Exchange Technology
(but only to the extent that transfer or sublicensing is permitted by any
applicable agreements with Third Parties). Millennium Exchange Technology
specifically excludes Direct Licensed Software and Sublicensed Software.
1.26 "MILLENNIUM EXCHANGE TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS".
Millennium Exchange Technology Patent Rights and Copyrights means, with respect
to a component of the Millennium Exchange Technology, Patent Rights and
copyrights that are conceived and/or reduced to practice prior to the expiration
of the Upgrade Term and that cover such component of Millennium Exchange
Technology (but only to the extent that transfer or sublicensing is permitted by
any applicable agreements with Third Parties).
1.27 "MILLENNIUM TECHNOLOGY". Millennium Technology means Millennium
Background Technology, solely owned Millennium Development Program Technology,
Millennium Exchange Technology, and Sublicensed Software provided by Millennium.
1.28 "PARTY". Party means Abbott or Millennium; "PARTIES" means Abbott
and Millennium.
1.29 "PATENT RIGHT(S)". Patent Right(s) means all existing patents and
patent applications and all patent applications hereafter filed, including any
continuations, continuations-in-part (but solely to the extent claims are
directed to inventions included in Background Technology, Development Program
Technology or Exchange Technology), 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.
1.30 "PROCESS TECHNOLOGY". Process Technology means (a) technology in
the form of methods, systems, programs, technology and software, together with
know-how related thereto, and (b) Product-Process Tool Technology. Process
Technology shall only include Product Technology to the extent that it is for
use as Product-Process Tool Technology.
1.31 "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
Process Technology, provided that the utility of such materials and data in such
procedures is not specific for a particular product or service.
1.32 "PRODUCT TECHNOLOGY". Product Technology means technology in the
form of biological materials (e.g. genes, gene fragments, vectors, cell lines,
tissues, fluids, cells,
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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.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
1.33 "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) [**] within the Prohibited Field.
1.34 "SUBLICENSED SOFTWARE". Sublicensed Software means the software
owned by Third Parties that is capable of being sublicensed and is to be
sublicensed by Abbott or Millennium to the other Party in connection with the
Technology Exchange.
1.35 "TECHNOLOGY DEVELOPMENT". Technology Development means the
technology development activities to be undertaken by the Parties pursuant to
Article V and the Technology Development Plan.
1.36 "TECHNOLOGY DEVELOPMENT PLAN". Technology Development Plan means a
plan to be developed by the Joint Technology Team for the Technology
Development, to be updated as necessary during the Development Term, setting
forth, among other things, the matters described in Section 5.4.
1.37 "TECHNOLOGY EXCHANGE". Technology Exchange means the technology
exchange activities to be undertaken by the Parties pursuant to Article III and
the Technology Exchange Plan.
1.38 "TECHNOLOGY EXCHANGE PLAN". Technology Exchange Plan means a plan
to be developed by the Joint Technology Team for a Technology Exchange, to be
updated as necessary during the Exchange Term, setting forth, among other
things, the matters described in Section 3.4.
1.39 "TECHNOLOGY EXCHANGE SERVICES". Technology Exchange Services means
those services related to Technology Exchange to be provided by a Party to the
other Party as set forth in a Technology Exchange Plan.
1.40 "TERRITORY". Territory means all the countries in the world.
1.41 "THIRD PARTY". Third Party means any person or entity other than a
Party and its Affiliates.
1.42 "THIRD PARTY SOFTWARE". Third Party Software means Direct Licensed
Software and Sublicensed Software.
1.43 "UPGRADE TO ABBOTT EXCHANGE TECHNOLOGY". Upgrade to Abbott
Exchange Technology means [**] to a component (i.e., [**] components detailed in
EXHIBIT A) of the Abbott Exchange Technology (which component is delivered to
Millennium during the Exchange Term) which becomes available during the Upgrade
Term for use in the then-current Abbott Supported Environment (i.e., hardware,
software and other infrastructure then being
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
specified by Abbott for the Upgrade to the component of the Abbott Exchange
Technology pursuant to Section 3.1(h)) or for use in an agreed upon Minimum
Environment. Upgrades shall include [**] procedures or otherwise.
1.44 "UPGRADE TO MILLENNIUM EXCHANGE TECHNOLOGY". Upgrade to Millennium
Exchange Technology means [**] a component (i.e., [**] components detailed in
EXHIBIT B) of the Millennium Exchange Technology (which component is delivered
to Abbott during the Exchange Term) which becomes available during the Upgrade
Term for use in the then-current Millennium Supported Environment (i.e.,
hardware, software and other infrastructure then being specified by Millennium
for the Upgrade to the component of the Millennium Exchange Technology pursuant
to Section 3.1(h)) or for use in an agreed upon Minimum Environment. Upgrades
shall include [**] procedures or otherwise.
1.45 "UPGRADE TERM". Upgrade Term means, with respect to a component of
Exchange Technology transferred to a receiving Party, the period commencing on
the date on which the Delivery Criteria are met for such component of Exchange
Technology and ending on the [**] anniversary thereof, it being understood that
if a Party proceeds with the installation of such component of Exchange
Technology in an agreed upon Minimum Environment, the Delivery Criteria for such
component [**] in accordance with Section 3.5(a), and that, in any such case,
there shall be [**]such component of Exchange Technology.
1.46 ADDITIONAL DEFINITIONS. Each of the following definitions is set
forth in the section of this Agreement indicated below:
DEFINITION SECTION/ARTICLE
---------- ---------------
Abbott Introduction
Abbott Indemnified Parties 12.1(b)
Abbott Supported Environment 3.1(c)
ADR 10.5
Authorized Servers 4.3(c)(i)
Breaching Party 9.1/9/3
Deliverables 5.4(c)
Delivery 3.5(a)
Delivery Criteria 3.4(h)
Development Project 5.1
Effective Date Introduction
Intellectual Property 11.4(a)
Inventions 7.1(a)
Joint Invention 7.1(c)
Millennium Introduction
Millennium Indemnified Parties 12.1(a)
Millennium Supported Environment 3.1(c)
Minimum Abbott Environment 3.1(c)
Minimum Environment 3.1(c)
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Minimum Millennium Environment 3.1(c)
Non-Breaching Party 9.1/9.3
Supported Environment 3.1(c)
Source Code 4.3(b)
Source Code Recipient 4.3(b)
Upgrade 3.1(h)
The Exhibits referred to in the definitions of this Agreement are being
simultaneously delivered with the execution of this Agreement as separate
documents and shall have the following titles:
Exhibit A Abbott Exchange Technology
Exhibit B Millennium Exchange Technology
Exhibit C Millennium Supported Environment
Exhibit X Xxxxxx Supported Environment
Exhibit E Technology Development Plan
The Schedule referred to in the definitions of this Agreement has been
attached to this Agreement and shall have the following title:
Schedule I Alternative Dispute Resolution Rules
ARTICLE 2
JOINT TECHNOLOGY TEAM
2.1 ESTABLISHMENT OF JOINT TECHNOLOGY TEAM. 2.2 As soon as practicable
after the Effective Date, Abbott and Millennium shall establish a Joint
Technology Team to manage the Technology Exchange and the Technology Development
under this Agreement. The Joint Technology Team shall be comprised of five (5)
representatives designated by Abbott and five (5) representatives designated by
Millennium, PROVIDED THAT Abbott and Millennium may designate an equal number of
additional representatives from time to time. With respect to each Party, such
representatives shall include one person responsible for [**] component
described in EXHIBIT A, one person responsible for [**] component described in
EXHIBIT A, one person responsible for [**] components described in EXHIBIT B,
one person responsible for Technology Development, and one senior officer of a
Party responsible for technology at such Party. Abbott and Millennium shall each
make its initial designation of its representatives not later than thirty (30)
days after the Effective Date. Either Party may change its designees to the
Joint Technology Team at any time upon written notice to the other Party.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
2.2 JOINT TECHNOLOGY TEAM DECISIONS. All decisions of the Joint
Technology Team shall be made by unanimous approval of Abbott and Millennium,
with each Party having one vote. With respect to each of the four areas
described in Section 2.1, a quorum for decision-making shall consist of the two
(2) senior officers of the Parties and the two (2) representatives of the
Parties designated for such area. Except as provided in Section 5.3(e), if the
Joint Technology Team is unable to reach agreement on any issue, such issue
shall be resolved in accordance with the provisions of Article 10.
2.3 MEETINGS. The Joint Technology Team shall meet at such times as
they deem necessary or desirable during the term of this Agreement. Such
meetings shall be held at such times and places as are mutually agreed upon by
the Joint Technology Team and may be conducted in person, by telephone or by
videoconference. Each Party shall use reasonable efforts to cause its
representatives to attend the meetings of the Joint Technology 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 Team. Either Party may
convene a special meeting of the Joint Technology Team for the purpose of
resolving disputes upon reasonable advance written notice to the other Party.
The Parties shall each bear their respective costs and expenses of attendance of
Joint Technology Team meetings by their respective representatives.
ARTICLE 3
TECHNOLOGY EXCHANGE
3.1 TECHNOLOGY EXCHANGE.
(a) NOTIFICATION AND SELECTION. At any time prior to the [**]
anniversary of the Effective Date, Millennium shall have the right to notify the
Joint Technology Team that it desires to receive from Abbott the Abbott Exchange
Technology. At any time prior to the [**] anniversary of the Effective Date,
Abbott shall have the right to notify the Joint Technology Team that it desires
to receive from Millennium the Millennium Exchange Technology. Upon each such
notification, the Joint Technology Team shall commence the Technology Exchange
of such Exchange Technology in accordance with the terms of this Article III.
(b) GENERAL RESPONSIBILITIES. Each Party will use reasonable efforts to
undertake and effect the Technology Exchange in accordance with the Technology
Exchange Plans and to provide Technology Exchange Services to the other Party.
It is specifically understood that each Party shall be responsible for obtaining
and installing, at its own expense, all equipment, hardware, technology and
Direct Licensed Software, and for employing appropriately trained personnel on a
timely basis, so as to facilitate the Technology Exchange and the fulfillment of
each Party's respective responsibilities and obligations, all in accordance with
the Technology Exchange Plans.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(c) SUPPORTED ENVIRONMENT. Attached as EXHIBIT C are the major items of
equipment, hardware, technology, Direct Licensed Software and Sublicensed
Software which are necessary to receive and operate the Millennium Exchange
Technology as of the Effective Date and which (other than the Sublicensed
Software) are to be obtained and/or licensed by Abbott (the "Millennium
Supported Environment"). Within [**] of the Effective Date, Abbott shall deliver
to Millennium, as EXHIBIT D, the major items of equipment, hardware, technology,
Direct Licensed Software and Sublicensed Software as of the Effective Date which
are necessary to receive and operate the Abbott Exchange Technology and which
(other than the Sublicensed Software) are to be obtained and/or licensed by
Millennium (the "Abbott Supported Environment"). Each of the Parties
acknowledges that the foregoing exhibits contain valuable know-how of the other
Party and that neither Party shall have the right to use the information set
forth in such exhibits except as is contemplated by the terms and conditions of
this Agreement.
(d) PRE-IMPLEMENTATION CONSULTATION. Each Party shall have the right to
request at any time (including prior to notification under subsection (a),
above) a pre-implementation consultation in order to receive guidance on the
requirements of the Supported Environment and/or the possibility of configuring
and implementing a subset of such Supported Environment which the providing
Party believes, in good faith, is, but which the providing Party can guarantee
is, sufficient for the operation of the relevant Exchange Technology (a "Minimum
Environment"). Any Minimum Environment identified by Abbott with respect to the
Abbott Exchange Technology is referred to herein as the "Minimum Abbott
Environment" or "an agreed upon Minimum Environment" and any Minimum Environment
identified by Millennium with respect to the Millennium Exchange Technology is
referred to herein as the "Minimum Millennium Environment" or "an agreed upon
Minimum Environment". Each Party acknowledges that selection of a Minimum
Environment may be critical to the overall success of the Technology Exchange
for the other Party and, therefore, each Party agrees to exert a good faith
effort to assist the other Party in this consultation exercise if so requested
by the other Party. Each pre-implementation consultation shall occur at the
facility of the Party whose Supported Environment is being evaluated. To the
extent there is a similar or comparable environment available at the evaluation
site for the testing of the proposed Minimum Environment, it will be made
available for testing and evaluation of basic functionality. In the event that a
recipient Party elects to proceed with the Minimum Environment for one or more
components of the Exchange Technology, EXHIBIT C or EXHIBIT D, as applicable,
shall be amended and restated to identify the Minimum Environment.
(e) DELIVERY AND INSTALLATION OF EXCHANGE TECHNOLOGY. As part of Technology
Exchange Services, each Party shall deliver its Exchange Technology to the other
Party in accordance with the timeline set forth in the Technology Exchange Plan
for such Exchange Technology. In addition, as part of Technology Exchange
Services, each Party delivering Exchange Technology shall use reasonable efforts
to install, with the reasonable assistance of the other Party, the Exchange
Technology on the Supported Environment or Minimum Environment obtained and
configured by the Party receiving the Exchange Technology.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(f) TRAINING. As part of Technology Exchange Services, each Party shall
use reasonable efforts to train the personnel of the other Party in the use of
the Exchange Technology and the use of the Third Party Software in conjunction
with such Exchange Technology. Such personnel shall have the appropriate
technical skill, consistent with generally acceptable industry standards, to be
trained in the use of the Exchange Technology. Following the installation of
each component or set of components of the Exchange Technology, each Party
delivering Exchange Technology shall provide training to the recipient Party at
the installation location of the recipient Party.
(g) TECHNOLOGY, SOFTWARE AND HARDWARE COSTS. The Party receiving
Exchange Technology shall be responsible for the costs associated with the
acquisition by such Party of all equipment, hardware, technology and Third Party
Software including, but not limited to, fees or payments associated with any
Sublicensed Software included in such Exchange Technology. A Party receiving
Sublicensed Software shall reimburse the other Party for any fees or other
payments payable to a Third Party within [**] after invoice by the other Party.
(h) UPGRADES. The Technology Exchange Services shall include the
provision of Upgrades to the Xxxxxx Exchange Technology and Upgrades to the
Millennium Exchange Technology during the Upgrade Term (each, an "Upgrade").
Notwithstanding the foregoing, in the event that an Upgrade to a component of
Exchange Technology for which the Upgrade Term [**] is required in order to
operate an Upgrade to a component of Exchange Technology to which a Party is
entitled pursuant to the foregoing sentence, the Party providing the Upgrade
shall also provide the Upgrade to the component of Exchange Technology [**].
Significant Upgrades to the Xxxxxx Exchange Technology shall be made available
to Millennium within [**] after internal testing of such Upgrades are completed
by Abbott. Minor Upgrades to the Xxxxxx Exchange Technology shall be made
available to Millennium from time to time, at a frequency recommended by the
Joint Technology Team, but in no event [**]. Upgrades to the Millennium Exchange
Technology shall be made available to Xxxxxx at substantially the same time as
such Upgrades are made available by Millennium to its other then-existing
customers of the underlying component of the Millennium Exchange Technology. In
the event that any Upgrade includes any Third Party Software, the terms upon
which such Third Party Software shall be made available to the other Party
(i.e., as Direct Licensed Software or as Sublicensed Software or, if Sublicensed
Software, the fees or payments associated with such Sublicensed Software) shall
be [**]Software is made available [**] (i.e., [**] may be [**] available), if
any, of the underlying component of the Exchange Technology. Prior to making an
Upgrade available, the Party furnishing the Upgrade shall notify the other Party
of any changes to the Supported Environment or an agreed upon Minimum
Environment which are necessary to install, receive and operate the Upgrade as
part of the Exchange Technology, such notification to include, without
limitation, the items set forth in Sections 3.4(d), (e) and (f). Further, the
providing Party shall conduct such installation and training services as the
Joint Technology Team determines to be appropriate for the Upgrade, it being
understood that [**] in the provision of such installation and training
services, the Party [**] shall be entitled to compensation in accordance with
subsection (k), below. If a Party elects not to implement such changes, the
other Party shall not be obligated to deliver, install or otherwise support the
Upgrade.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(i) SUPPORT. During the Upgrade Term, the transferring Party shall
designate a member of its technology transfer staff with appropriate skills
(e.g., software support or end-user consulting) to provide telephone support to
aid the other Party in resolving performance problems pertaining to the Exchange
Technology. Similarly, the Party receiving support shall designate a person who
shall be the contact with the other Party on support matters. Each Party
acknowledges that there is no obligation for either Party to provide support (i)
with respect to any Third Party Software, (ii) any Exchange Technology that is
modified by the other Party or (iii) for any components of the Exchange
Technology which have been installed by the other Party on an environment other
than a Supported Environment or an agreed upon Minimum Environment.
(j) MAXIMUM SERVICE HOURS. Excepts as otherwise agreed to by the
Parties under subsection (k), below, neither Party shall be required to provide
more than the following amounts of services under this Section 3.1 and Section
3.5:
------------------------------- ---------------------------- ---------------------------- ----------------------------
Party Component Type of Service Maximum Level of Service
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Millennium [**] (as defined on [**] [**]
EXHIBIT B)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Millennium [**] (as defined on [**] [**]
EXHIBIT B)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Xxxxxx [**] (as defined on [**] [**]
EXHIBIT A)
------------------------------- ---------------------------- ---------------------------- ----------------------------
Millennium [**](as defined on EXHIBIT B)[**] [**]
------------------------------- ---------------------------- ---------------------------- ----------------------------
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(k) ADDITIONAL SERVICES. If either Party desires additional support
services, it shall request such services through the Joint Technology Team, and,
if so approved by the Joint Technology Team, the other Party shall provide such
services [**]
3.2 GENERAL RESPONSIBILITIES OF JOINT TECHNOLOGY TEAM. The Joint
Technology Team shall be responsible for (i) preparing the Technology Exchange
Plan for each Exchange Technology, (ii) planning and overseeing the Technology
Exchange, (iii) reviewing and approving amendments and updates to the Technology
Exchange Plans, and (iv) monitoring compliance by the Parties with their
respective obligations under the Technology Exchange Plans, including the
accomplishment of key objectives.
3.3 CONTACT PERSONS. The Parties will designate contact persons to
serve as the primary contacts for the coordination, delivery and receipt of the
Exchange Technology and Technology Exchange Services.
3.4 TECHNOLOGY EXCHANGE PLANS. Within [**] following the notification
made by a Party under Section 3.1(a) of this Agreement, the Joint Technology
Team shall prepare a Technology Exchange Plan setting forth specific tasks and
responsibilities relating to the Technology Exchange with respect to such
Exchange Technology. Each Technology Exchange Plan shall among other things:
(a) set forth the Technology Exchange that is to occur during the
Exchange Term;
(b) provide a delivery schedule that, among other things, outlines the
timing, order, and logistics for the Technology Exchange activities during the
Exchange Term;
(c) identify the physical location(s) within the United States to which
Exchange Technology shall be delivered;
(d) list the major items of equipment, hardware, technology, Direct
Licensed Software and Sublicensed Software, as of the date of Delivery, which
are necessary to receive and operate the Exchange Technology and which (other
than the Sublicensed Software) are to be obtained and/or licensed by the Party
receiving the Exchange Technology;
(e) identify (based on the recommendation of the Party delivering the
Exchange Technology) any action that the Party receiving the Exchange Technology
is required to take prior to commencement of the delivery of a component of the
Technology Exchange, including, but not limited to, any additional facilities,
procedures or personnel necessary to receive and operate such component of the
Technology Exchange;
(f) identify any terms and conditions applicable to the sublicense of
Sublicensed Software;
(g) provide a reasonable and detailed description of the Technology
Exchange Services which shall be consistent with the provisions set forth in
Section 3.1; and
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(h) with respect to components of the Exchange Technology, provide a
reasonable and detailed description of the objective criteria by which the Joint
Technology Team will ascertain when a specific component of Exchange Technology
has been delivered (the "Delivery Criteria"), it being understood that to the
extent a Party proceeds with installation of a component of Exchange Technology
in an agreed upon Minimum Environment, the Delivery Criteria shall be deemed to
be met regardless of performance of the Exchange Technology.
3.5 DELIVERY AND REVIEW TESTING OF EXCHANGE TECHNOLOGY.
(a) DELIVERY AND TESTING. For the purposes of this Agreement,
"Delivery" of a given component of the Exchange Technology shall be met when the
Parties agree that the Delivery Criteria for such component have been achieved.
The Parties shall test each component of the Exchange Technology as soon as
practicable following delivery of such component of the Exchange Technology.
Subject to the limitations set forth in Sections 3.1(j) and (k), in the event
that any component of the Exchange Technology does not meet the applicable
Delivery Criteria, including in a situation in which the Exchange Technology is
installed on an agreed upon Minimum Environment, the Parties shall promptly
discuss such issue, and shall work in good faith and use reasonable efforts to
address any failures. In the event the Parties are unable to correct a failure,
or agree on a plan to correct such failure, then such matter will be referred to
the Joint Executive Committee for resolution, it being understood that to the
extent a Party proceeds with installation of a component of Exchange Technology
in an agreed upon Minimum Environment, the other Party cannot, and does not,
guarantee the performance of the Exchange Technology.
(b) Notwithstanding any inability to meet the Delivery Criteria, a
Party delivering Exchange Technology shall be deemed to have completed Delivery
if (i) the other Party fails to procure and make available for installation the
Supported Environment or fails to take any other action identified in the
Technology Exchange Plan as necessary to receive and operate the Exchange
Technology or (ii) the component performs in a substantially similar manner to
the manner in which it performs for the other Party when used under similar
conditions.
3.6 TECHNOLOGY EXCHANGE EXPENSES. Except as expressly set forth herein
or as otherwise specifically agreed to in writing by the Parties, each Party
shall bear its own expenses incurred in connection with the performance of the
Technology Exchange Services.
ARTICLE 4
GRANT OF RIGHTS TO EXCHANGE TECHNOLOGY
4.1 MILLENNIUM LICENSE GRANTS.
(a) MILLENNIUM EXCHANGE TECHNOLOGY. Subject to the terms and conditions
of this Agreement, including the provisions of Section 4.3, Millennium hereby
grants to Xxxxxx a non-exclusive, non-royalty bearing and perpetual right and
irrevocable license and/or sublicense, as applicable, in the Territory to the
Millennium Exchange Technology transferred during the Exchange Term and the
related Millennium Exchange Technology Patent Rights and Copyrights to (i)
research, develop, make, have made, use and practice process technologies in the
Field and (ii) research, develop, make, have made, distribute for sale, sell,
offer to sell, use, practice,
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
import and export products and services in the Field, PROVIDED THAT Xxxxxx 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 or services that constitute or comprise, or whose functionality [**],
Millennium Exchange Technology. The right to use and practice shall extend to
on-site consultants of Xxxxxx and to on-site employees of Third Parties engaged
in bona fide collaborations in the Field with Xxxxxx for use in such bona fide
collaborations, provided that a purpose of such collaboration is not to provide
contract services to a Third Party using the Millennium Exchange Technology.
(b) SUBLICENSED SOFTWARE. Subject to the terms and conditions of this
Agreement, including the provisions of Section 4.3, Millennium hereby grants to
Xxxxxx a non-exclusive, non-transferable sublicense in the Territory to each
component of Sublicensed Software transferred by Millennium for use in the
Field, provided that Xxxxxx, pursuant to Section 3.1(g), has paid to Millennium
the appropriate fees for each such sublicense and Xxxxxx complies with any
additional requirements of each such sublicense as set forth in the Technology
Exchange Plan.
(c) SUBLICENSES.
(i) GENERAL. Except as specifically provided in this
subsection (c), the license rights set forth in Sections 4.1(a) and (b)
shall not be sublicensable or transferable by Xxxxxx to a Third Party.
(ii) AFFILIATES. Xxxxxx may xxxxx a sublicense, and in
connection therewith transfer the Millennium Exchange Technology, to
any of its Affiliates provided that Xxxxxx remains primarily liable for
the performance of this Agreement by any such Affiliate, and any such
sublicense is subject to the terms of this Agreement.
(iii) INTERNAL COLLABORATIVE USE. Xxxxxx and its Affiliates
may use internally the Millennium Exchange Technology for the benefit
of a Third Party in a bona fide collaboration in the Field between
Xxxxxx and/or its Affiliates and such Third Party, provided that a
purpose of such collaboration is not to provide contract services to a
Third Party using the Millennium Exchange Technology.
4.2 ABBOTT LICENSE GRANTS.
(a) XXXXXX EXCHANGE TECHNOLOGY. Subject to the terms and conditions of
this Agreement, including the provisions of Section 4.3, Abbott hereby grants to
Millennium a non-exclusive, non-royalty bearing and perpetual right and
irrevocable license and/or sublicense, as applicable, in the Territory to the
Xxxxxx Exchange Technology transferred during the Exchange Term and the related
Xxxxxx Exchange Technology Patent Rights and Copyrights to (i) research,
develop, make, have made, use and practice process technologies in the Field and
(ii) 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 Millennium and its Affiliates shall not have the
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
right to distribute for sale, sell or offer for sale, or sublicense others to
distribute for sale, sell or offer for sale, products or services that
constitute or comprise, or whose functionality is [**], Xxxxxx Exchange
Technology, and FURTHER PROVIDED THAT, notwithstanding the last sentence of
Section 1.30, the foregoing license shall include the right to use the Product
Technology included within the Xxxxxx Exchange Technology (i.e., the [**] by
Abbott specifically for screening [**] as Product Technology. The right to use
and practice shall extend to on-site consultants of Millennium and to on-site
employees of Third Parties engaged in bona fide collaborations in the Field with
Millennium for use in such bona fide collaborations, provided that a purpose of
such collaboration is not to provide contract services to a Third Party using
the Xxxxxx Exchange Technology.
(b) SUBLICENSED SOFTWARE. Subject to the terms and conditions of this
Agreement, including the provisions of Section 4.3, Abbott hereby grants to
Millennium a non-exclusive, non-transferable sublicense in the Territory to each
component of Sublicensed Software transferred by Xxxxxx for use in the Field,
PROVIDED THAT Millennium, pursuant to Section 3.1(g), has paid to Xxxxxx the
appropriate fees for each such sublicense and Millennium complies with any
additional requirements of each such sublicense as set forth in the Technology
Exchange Plan.
(c) SUBLICENSES.
(i) GENERAL. Except as specifically provided in this
subsection (c), the license rights set forth in Sections 4.2(a) and (b)
shall not be sublicensable or transferable by Millennium to a Third
Party.
(ii) AFFILIATES. Millennium may grant a sublicense, and in
connection therewith transfer the Xxxxxx Exchange Technology, to any of
its Affiliates provided that Millennium remains primarily liable for
the performance of this Agreement by any such Affiliate, and any such
sublicense is subject to the terms of this Agreement.
(iii) INTERNAL COLLABORATIVE USE. Millennium and its
Affiliates may use internally the Xxxxxx Exchange Technology for the
benefit of a Third Party in a bona fide collaboration in the Field
between Millennium and/or its Affiliates and such Third Party, provided
that a purpose of such collaboration is not to provide contract
services to a Third Party using the Xxxxxx Exchange Technology.
4.3 SPECIAL PROVISIONS RELATING TO SOFTWARE.
(a) GENERAL. The licenses granted in Sections 4.1(a) and 4.2(a) with
respect to the software components of the Exchange Technology shall be limited
to (i) the right to use, copy and internally distribute the software components
of the Exchange Technology, and (ii) the right to modify, enhance, prepare
derivative works and support internal use of the software components of the
Exchange Technology.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(b) ACCESS TO SOURCE CODE. Each Party shall be entitled to receive
during the Exchange Term and any Upgrade Term, [**] (the "Source Code"). Upon
release of the Source Code to a Source Code Recipient, the other Party hereby
grants to such Source Code Recipient a non-exclusive, non-transferable, right
and license and/or sublicense, as applicable, in the Territory to such Source
Code, to modify, enhance, prepare derivative works and support internal use by
such Source Code Recipient of such Source Code, PROVIDED THAT under no
circumstances shall such license grant be interpreted as granting such Source
Code Recipient the right to sublicense, transfer, distribute, or otherwise make
available to a Third Party such Source Code. Any such modification, enhancement,
preparation of derivative works, or internal support of Source Code for such
Source Code Recipient may be performed by independent contractors of such Source
Code Recipient, PROVIDED THAT each such independent contractor agrees in writing
to be bound by the same level of confidentiality as the Parties, and in
particular the restrictions in Section 4.3(c), prior to having any access to the
Source Code, and all such efforts are conducted at the facilities of such Source
Code Recipient.
(c) RESTRICTIONS ON SOURCE CODE. In addition to the confidentiality
provisions set forth in Article VIII, Source Code shall be subject to the
following restrictions:
(i) Such Source Code shall be stored on no more than [**]
client servers at the facilities of each Party for [**] years after
such Source Code is released and no more than [**] client servers
thereafter (the "Authorized Servers").
(ii) Such Source Code shall 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 exercising each Party's rights under this
Agreement, and for which a log of all authorized users and their dates
of access are kept.
(iii) The type and serial number of each Authorized Server
shall be provided to the other Party reasonably promptly after
installation on such Authorized Server; provided, however, that such
Source Code may be relocated at any time in each Party's sole
discretion without the consent of the other Party. Each Party shall,
however, notify the other Party of the new location.
(iv) The media on which the Source Code is delivered shall be
kept in a locked storage location when not in use.
(v) Once any Source Code has been released to a Source Code
Recipient, such Source Code Recipient shall not distribute to a Third
Party any software which provides functions substantially similar
thereto, unless such software is developed by employees or independent
contractors of such Source Code Recipient, who have not accessed the
Source Code.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(vi) In order to establish independent development under
clause (v), each Party shall maintain access logs recording the names
and dates of access to Source Code. Each Party shall also keep
development records for any other software it develops that provides
functions substantially similar to any released Source Code or
applications which incorporate such Source Code including dates of
development of each module and the names of the people working on such
module.
No more than once a year, upon reasonable notice and during business hours, a
Party shall have a right to inspect the facilities of the Source Code Recipient
at which the Authorized Servers reside, and review the access logs and
development records for such software, to make sure that the Source Code
Recipient has complied with the terms of this Section 4.3(c). The restrictions
set forth in the foregoing subsections (ii), (iv) and (v) shall be perpetual
while the restrictions set forth in the foregoing subsections (iii) and (vi)
shall expire [**] years after such Source Code is released to a Source Code
Recipient.
ARTICLE 5
TECHNOLOGY DEVELOPMENT
5.1 TECHNOLOGY DEVELOPMENT. During the Development Term, Xxxxxx and
Millennium will each use reasonable efforts to undertake and effect the [**]
project identified in the Technology Development Plan (the "Development
Project").
5.2 GENERAL RESPONSIBILITIES OF THE JOINT TECHNOLOGY TEAM. The Joint
Technology Team shall be responsible for (a) preparing the Technology
Development Plan, (b) planning and overseeing the Technology Development, (c)
reviewing and approving amendments and updates to the Technology Development
Plan, (d) monitoring compliance by the Parties with their respective activities
and obligations under the Technology Development Plan, (e) assessing whether
specified development benchmarks and specifications have been satisfied, (f)
ensuring the timely transfer by the Parties of Background Technology and
Development Program Technology, including materials, processes and data,
required for implementation of the Technology Development Plan, and (g) ensuring
the timely transfer by the Parties of the Deliverables.
5.3 PROGRAM DIRECTORS. Each Party shall appoint one of its designees on
the Joint Technology 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.
5.4 TECHNOLOGY DEVELOPMENT PLAN. EXHIBIT E sets forth a preliminary
Technology Development Plan. Within [**] of the Effective Date (or such other
period as is agreed to by the Joint Technology Team), the Joint Technology Team
shall prepare a definitive Technology Development Plan which shall then be
binding on the Parties. The Joint Technology Team shall be responsible for the
preparation of any amendments to the Technology Development Plan, with
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the understanding that any material modification to the Technology Development
Plan, including, without limitation, any modification to a Deliverable, shall
require the approval of the two senior officers of the Parties on the Joint
Technology Team. The Technology Development Plan, and any modification to the
Technology Development Plan, shall, among other things:
(a) set forth which technology development tasks shall be undertaken or
continued for the Development Project during the Development Term;
(b) identify the co-development deliverables to be licensed by each
Party to the other Party upon the conclusion of the Development Project (the
"Deliverables") and the procedures and logistics for the transfer of such
Deliverables to the other Party;
(c) identify the development benchmarks and specifications for the
Development Project for the Development Term;
(d) identify the Background Technology and Development Program
Technology expected to be utilized by the Parties in the Development Project, as
well as any fees, restrictions or obligations placed upon such Background
Technology or Development Program Technology by Third Parties, and, if
applicable, the procedures and logistics for the transfer of a Party's
Background Technology and Development Program Technology to the other Party;
PROVIDED THAT notwithstanding the provisions of Article 10, both Parties shall
be required to approve the use of any Background Technology in the performance
of the Technology Development activities or the incorporation of any Background
Technology or Development Program Technology in any Deliverables.
5.5 DEVELOPMENT RESOURCES AND EXPENSES. Each Party shall devote
approximately equal resources (e.g, total expenses calculated on numbers of full
time equivalent employees and Third Party expenses) to the Development Project.
Each Party shall bear its own expenses incurred in connection with the
Development Project, unless otherwise specifically agreed upon in writing by the
Parties. All of such resources and expenses shall be identified in the
Technology Development Plan.
ARTICLE 6
GRANTS OF RIGHTS TO DEVELOPMENT TECHNOLOGY
6.1 GRANTS OF LICENSES.
(a) MILLENNIUM LICENSE GRANTS.
(i) RESEARCH LICENSE DURING THE DEVELOPMENT TERM. Subject to
the terms and conditions of this Agreement, Millennium hereby grants to
Xxxxxx during the Development Term, a non-exclusive and non-royalty
bearing license and/or sublicense, as applicable, in the Territory to
the Millennium Background Technology, Millennium Background Technology
Patent Rights and Copyrights, Millennium Development Program Technology
and Millennium Development Program Technology Patent Rights and
Copyrights for the sole and exclusive purpose of performing Technology
Development activities pursuant to the Technology Development Plan. To
the extent that
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Millennium Background Technology or 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) POST-DEVELOPMENT LICENSE. Subject to the terms and
conditions of this Agreement, Millennium hereby grants to Xxxxxx a
non-exclusive, non-royalty bearing and perpetual right and irrevocable
license and/or sublicense, as applicable, in the Territory to use the
Deliverables (and, to the extent embodied therein or employed by virtue
of the use thereof, to use the Millennium Background Technology and the
Millennium Development Program Technology in conjunction with the
Deliverables and, to the extent covered thereby or practiced by virtue
of the use thereof, to practice the Millennium Background Technology
Patent Rights and Copyrights and the Millennium Development Program
Technology Patent Rights and Copyrights in conjunction with the
Deliverables) in order to research, develop, make, have made,
distribute for sale, sell, offer to sell, use, practice, import and
export products and services, PROVIDED THAT Xxxxxx 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
significantly based upon, the Deliverables. To the extent that the
Deliverables encompass 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 subsections
(i) or (ii) relate to Product-Process Tool Technology, such licenses
shall be subject to the further limitation that Xxxxxx is licensed to
use such Product-Process Tool Technology solely for the development,
operation, verification or calibration of the Deliverables. For
purposes of clarity, Xxxxxx shall not have the right to use such
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 6.1(a)(i) and (ii) shall not be sublicensable or
transferable by Xxxxxx to a Third Party.
(B) SUBLICENSE RIGHT TO THIRD PARTY COLLABORATORS.
Under the license granted in Section 6.1(a)(ii), Xxxxxx may
grant a sublicense to, and/or transfer, the Deliverables 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 Xxxxxx 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;
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(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
Deliverables in the course of the bona fide
collaboration referenced in subsection (1);
(5) the sublicense and/or transfer does not
include any source code; and
(6) the sublicense and/or transfer agreement
requires the Third Party to comply with provisions
comparable to those set forth in Sections 6.1 and
12.7 and Article VIII, and shall also include
provisions that prohibit the reverse engineering,
decompiling, disassembling, or creating derivative
works, of any software provided as part of a
Deliverable.
(C) NOTICE OF SUBLICENSEES. Xxxxxx shall provide
notice to Millennium regarding each sublicense granted and/or
transfer made pursuant to the provisions of subsection (B),
including the identity of the sublicensee/transferee and the
scope of the sublicense/transfer.
(b) XXXXXX LICENSE GRANTS.
(i) RESEARCH LICENSE DURING THE DEVELOPMENT TERM. Subject to
the terms and conditions of this Agreement, Xxxxxx hereby grants to
Millennium during the Development Term, a non-exclusive and non-royalty
bearing license and/or sublicense, as applicable, in the Territory to
the Xxxxxx Background Technology, Xxxxxx Background Technology Patent
Rights and Copyrights, Xxxxxx Development Program Technology and Xxxxxx
Development Program Technology Patent Rights and Copyrights for the
sole and exclusive purpose of performing Technology Development
activities pursuant to the Technology Development Plan in the Field. To
the extent that the Xxxxxx Background Technology or Xxxxxx 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) POST-DEVELOPMENT LICENSE. Subject to the terms and
conditions of this Agreement, Xxxxxx hereby grants to Millennium a
non-exclusive, non-royalty bearing and perpetual right and irrevocable
license and/or sublicense, as applicable, in the Territory, with the
unrestricted right to grant sublicenses upon the occurrence of the
condition precedent set forth in subsection (iv), below, to use the
Deliverables (and, to the extent embodied therein or employed by virtue
of the use thereof, to use the Xxxxxx Background Technology and the
Xxxxxx Development Program Technology in conjunction with the
Deliverables and, to the extent covered thereby or practiced by virtue
of the use thereof, to practice the Xxxxxx Background Technology Patent
Rights and Copyrights and the Xxxxxx Development Program Technology
Patent Rights and Copyrights in conjunction with the Deliverables) in
order to research, develop, make,
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
have made, distribute for sale, sell, offer to sell, use, practice,
import and export products and services. To the extent that the
Deliverables 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 subsections
(i) or (ii) relate to Product-Process Tool Technology, such licenses
shall be subject to the further limitation that Millennium is licensed
to use such Product-Process Tool Technology solely for the development,
operation, verification or calibration of the Deliverables. For
purposes of clarity, Millennium shall not have the right to use such
Product-Process Tool Technology as Product Technology.
(iv) CONDITION PRECEDENT TO RIGHT TO SUBLICENSE. Prior to the
condition precedent set forth in this subsection (iv) being met,
Millennium shall have the same sublicensing rights as are set forth in
Section 6.1(b)(iv) for Xxxxxx. Thereafter, the right to sublicense
provided for in subsection (ii), above, shall become effective upon the
availability of [**] of the Millennium Exchange Technology described in
EXHIBIT B (i.e., [**]), in the manner and as further described in
EXHIBIT B, and regardless of whether such component, or any or all
portions thereof, is internally developed by Millennium or is acquired
from Third Parties and, if any or all portions thereof are acquired
from Third Parties, regardless of the cost of the required Direct
Licensed Software and/or the fees and terms and conditions associated
with the Sublicensed Software. The foregoing condition precedent shall
not, however, be deemed to have been met if both (a) the component
provided by Millennium is available free of charge in the public domain
and (b) the component provided by Millennium [**] available free of
charge in the public domain).
ARTICLE 7
INTELLECTUAL PROPERTY OWNERSHIP, PROTECTION AND RELATED MATTERS
7.1 OWNERSHIP. The Parties agree to protect, maintain and enforce any
Intellectual Property in accordance with the terms set forth in this Article
VII.
(a) "INVENTIONS" shall mean all proprietary, non-public technology,
including, without limitation, processes, techniques, formulas, equipment
designs, know-how, 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 activities pursuant to this Agreement.
(b) SOLE INVENTIONS. Xxxxxx 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
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
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). Xxxxxx agrees not to utilize any sole
Invention pertaining to Millennium Exchange Technology 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 Xxxxxx and Millennium. 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. Xxxxxx agrees
not to utilize any Joint Invention pertaining to Millennium Exchange Technology
in the Prohibited Field.
(d) INVENTORSHIP. Inventorship for patentable inventions conceived
and/or or reduced to practice during the course of the performance of activities
pursuant to this Agreement shall be determined in accordance with United States
patent laws for determining inventorship. In the event of a dispute regarding
inventorship, if the Parties are unable to resolve such inventorship dispute, in
lieu of the requirements set forth in Article 10, the Joint Executive Committee
shall establish a procedure to resolve such dispute, which may include engaging
a Third Party patent attorney selected by the Parties to resolve such dispute,
which resolution by such patent attorney shall be binding on the Parties.
(e) UNBLOCKING LICENSE TO MILLENNIUM INVENTIONS PERTAINING TO XXXXXX
EXCHANGE TECHNOLOGY. Millennium hereby grants to Abbott a non-exclusive,
non-royalty bearing and perpetual right and irrevocable license and/or
sublicense, as applicable, in the Territory under Millennium Inventions relating
specifically to Xxxxxx Exchange Technology in order to research, develop, make,
have made, distribute for sale, sell, offer to sell, use, practice, import and
export products and services in the Field. Until the [**] anniversary of the
receipt of a component of the Xxxxxx Exchange Technology, Millennium shall [**]
of this Agreement. Except as set forth in the foregoing sentence, Millennium
shall not be obligated pursuant to this subsection (e) to disclose or transfer
any such Millennium Inventions to Xxxxxx.
(f) UNBLOCKING LICENSE TO XXXXXX INVENTIONS PERTAINING TO MILLENNIUM
EXCHANGE TECHNOLOGY. Xxxxxx hereby grants to Millennium a non-exclusive,
non-royalty bearing and perpetual right and irrevocable license and/or
sublicense, as applicable, in the Territory under Xxxxxx Inventions relating
specifically to Millennium Exchange Technology in order to research, develop,
make, have made, distribute for sale, sell, offer to sell, use, practice, import
and export products and services in the Field. Until the [**] anniversary of the
receipt of a component of the Millennium Exchange Technology, Xxxxxx shall [**]
of this Agreement. Except as set forth in the foregoing sentence, Xxxxxx shall
not be obligated pursuant to this subsection (f) to disclose or transfer such
Xxxxxx Inventions to Millennium.
7.2 PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
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(a) MILLENNIUM SOLE INVENTIONS, JOINT INVENTIONS PERTAINING TO
DEVELOPMENT PROGRAM TECHNOLOGY AND JOINT INVENTIONS PERTAINING TO MILLENNIUM
TECHNOLOGY. Millennium shall have the exclusive right and option, but not the
obligation, to file and prosecute any patent applications and maintain any
patents that cover Inventions solely owned by Millennium (at its sole expense),
Joint Inventions pertaining to Development Program Technology, and Joint
Inventions pertaining to Millennium Technology. With respect to Joint Inventions
pertaining to Development Program Technology and Millennium Technology, upon the
request of Xxxxxx, Millennium agrees to consult with Xxxxxx upon a course of
action as to the nature of protection sought for such Joint Inventions and
strategies for filing, prosecution and maintenance of patents and patent
applications for such Joint Inventions, and shall keep Xxxxxx reasonably
informed with regard to such activities. All expenses associated with the
filing, prosecution and maintenance of patents and patent applications covering
such Joint Inventions shall be shared equally by the Parties unless the Parties
agree otherwise in writing.
(b) XXXXXX SOLE INVENTIONS AND JOINT INVENTIONS PERTAINING TO XXXXXX
TECHNOLOGY. Xxxxxx shall have the exclusive right and option, but not the
obligation, to file and prosecute any patent applications and maintain any
patents that cover Inventions solely owned by Xxxxxx (at its sole expense) or
Joint Inventions pertaining to Xxxxxx Technology. With respect to Joint
Inventions pertaining to Xxxxxx Technology, upon the request of Millennium,
Xxxxxx agrees to consult with Millennium upon a course of action as to the
nature of protection sought for such Joint Inventions and strategies for filing,
prosecution and maintenance of patents and patent applications for such Joint
Inventions, and shall keep Millennium reasonably informed with regard to such
activities. All expenses associated with the filing, prosecution and maintenance
of patents and patent applications covering such Joint Inventions shall be
shared equally by the Parties unless the Parties agree otherwise in writing.
7.3 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) 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, (d) cooperate, if necessary and appropriate, with the other Party in the
preparation and filing of any copyright registrations.
7.4 THIRD PARTY INFRINGEMENT.
(a) During the term of this Agreement, after either Party becomes aware
of the reasonable probability of an alleged infringement by a Third Party of
Abbott Development Program Technology Patent Rights and Copyrights, Xxxxxx
Exchange Technology Patent Rights and Copyrights, Millennium Development Program
Technology Patent Rights and Copyrights, or Millennium Exchange Technology
Patent Rights and Copyrights, such Party shall use reasonable efforts to 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.
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(b) Millennium or Xxxxxx (or their respective licensors) 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 in its solely-owned patent rights or copyrights.
(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.
7.5 CLAIMED INFRINGEMENT.Promptly after becoming aware of the
reasonable probability of a Third Party claim that the Exchange Technology or
any Development Program Technology infringes such 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 8
CONFIDENTIALITY
8.1 CONFIDENTIAL INFORMATION. All Confidential Information disclosed by
a Party or its Affiliates to the other Party during the term of this Agreement
shall not be used by the receiving Party or its Affiliates except in connection
with the activities contemplated by this Agreement, shall be maintained in
confidence by the receiving Party and its Affiliates, and shall not otherwise be
disclosed by the receiving Party or its Affiliates to any Third Party who is not
an Affiliate or consultant of or an advisor to, the receiving Party, without the
prior written consent of the disclosing Party, except to the extent that the
Confidential Information: (a) was known or used by the receiving Party or its
Affiliates prior to its date of disclosure to the receiving Party as
demonstrated by legally admissible evidence available to the receiving Party or
its Affiliates; (b) either before or after the date of the disclosure to the
receiving Party is lawfully disclosed to the receiving Party or its Affiliates
by sources other than the disclosing Party rightfully in possession of the
Confidential Information and not bound by confidentiality obligations to the
disclosing Party; (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 through no fault or omission on the part of the receiving Party or its
Affiliates; or (d) is independently developed by or for the receiving Party or
its Affiliates without reference to or reliance upon the Confidential
Information as demonstrated by competent written records. In addition, the
provisions of this Section 8.1 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, provides the disclosing Party, to the
extent possible, with sufficient time and opportunity to obtain a protective
order for such Confidential Information and takes reasonable and lawful actions
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.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
8.2 EMPLOYEE AND ADVISOR OBLIGATIONS. Millennium and Xxxxxx 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 such Confidential Information to assist such Party in fulfilling its
obligations under this Agreement provided that such employees, consultants and
advisors agree to treat such information and materials as confidential.
8.3 TERM. All obligations of confidentiality imposed under this Article
VIII shall expire [**] following termination or expiration of this Agreement,
PROVIDED THAT (a) obligations of confidentiality relating to source code
licensed/sublicensed pursuant to Section 4.3 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 4.1(c), 4.2(c) or
6.1(a)(iv).
ARTICLE 9
TERMINATION
9.1 TERMINATION OF TECHNOLOGY EXCHANGE FOR BREACH. Upon a material
breach of the Technology Exchange provisions of this Agreement by a Party (the
"Breaching Party"), the other Party (the "Non-Breaching Party") may provide
written notice (a "Breach Notice") to the Breaching Party specifying the
material breach. If the Parties dispute whether the Party has materially
breached the Technology Exchange provisions of this Agreement, the matter shall
be referred to ADR under Section 10.5. If (i) the Breaching Party fails to cure
such material breach during the [**] period (or, if such material breach by its
nature is a curable breach that is not curable within the [**] period, such
longer period as would be reasonably necessary for a diligent party to cure such
material breach) following the date on which the Breach Notice is provided, or
(ii) such material breach by its nature is incurable, then the Technology
Exchange provisions shall terminate, PROVIDED THAT if there is a dispute as to
whether a material breach has been cured or is incurable, such matter shall be
referred to ADR and termination shall be stayed pending resolution of such ADR
proceedings. The Parties will use reasonable efforts to work together to cure
any breach under this Section 9.1.
9.2 RIGHTS UPON TERMINATION OF TECHNOLOGY EXCHANGE. Upon termination of
the Technology Exchange provisions of this Agreement pursuant to Section 9.1:
(a) All Technology Exchange activities shall cease;
(b) The licenses granted under Article IV and VII to the Non-Breaching
Party in the event of a termination for breach pursuant to Section 9.1 shall
survive;
(c) The licenses granted under Article IV and VII to the Breaching
Party in the event of a termination for breach pursuant to Section 9.1 shall not
survive;
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
(d) Except as provided in subsection (c), above, the rights and
obligations with respect to the ownership of intellectual property pertaining to
Technology Exchange shall survive as set forth in Article VII;
(e) The obligations regarding confidentiality shall survive as set
forth in Article VIII;
(f) The Parties' obligations of defense and indemnity shall survive in
full force and effect for an unlimited period; and
(g) Any cause of action or claim of either Party shall survive.
9.3 TERMINATION OF TECHNOLOGY DEVELOPMENT FOR BREACH. Upon a material
breach of the Technology Development provisions of this Agreement by a Party
(the "Breaching Party"), the other Party (the "Non-Breaching Party") may provide
written notice (a "Breach Notice") to the Breaching Party specifying the
material breach. If the Parties dispute whether the Party has materially
breached the Technology Development provisions of this Agreement, the matter
shall be referred to ADR under Section 10.5. If (i) the Breaching Party fails to
cure such material breach during the [**] period (or, if such material breach by
its nature is a curable breach that is not curable within the [**] period, such
longer period as would be reasonably necessary for a diligent party to cure such
material breach) following the date on which the Breach Notice is provided, or
(ii) such material breach by its nature is incurable, then the Technology
Development provisions shall terminate, PROVIDED THAT if there is a dispute as
to whether a material breach has been cured or is incurable, such matter shall
be referred to ADR and termination shall be stayed pending resolution of such
ADR proceedings. The Parties will use reasonable efforts to work together to
cure any breach under this Section 9.3.
9.4 RIGHTS UPON TERMINATION OF TECHNOLOGY DEVELOPMENT. Upon termination
of the Technology Development provisions of this Agreement pursuant to Section
9.3:
(a) All Technology Development activities shall cease;
(b) The licenses granted under Article VI to the Non-Breaching Party in
the event of a termination for breach pursuant to Section 9.3 shall survive;
(c) The licenses granted under Article VI to the Breaching Party in the
event of a termination for breach pursuant to Section 9.3 shall not survive;
(d) The rights and obligations with respect to the ownership of
intellectual property pertaining to Technology Development shall survive as set
forth in Article VII;
(e) The obligations regarding confidentiality shall survive as set
forth in Article VIII;
(f) The Parties' obligations of defense and indemnity shall survive in
full force and effect for an unlimited period;
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(g) Any cause of action or claim of either Party shall survive.
ARTICLE 10
DISPUTE RESOLUTION
10.1 JOINT EXECUTIVE COMMITTEE.
(a) In accordance with the Metabolic Agreement and this Agreement, as
soon as practicable after the Effective Date, Xxxxxx and Millennium shall
establish a Joint Executive Committee comprised of three (3) senior executives
of Xxxxxx and three (3) senior executives of Millennium. Each Party may change
any one or more of its representatives to the Joint Executive Committee at any
time upon written notice to the other Party.
(b) The Joint Executive Committee shall meet at such times as they deem
necessary or desirable during the term of this Agreement to (i) review the
efforts of the Parties in the conduct of the Technology Exchange and Technology
Development activities and (ii) attempt to resolve any disputes relating to this
Agreement that are referred to the Joint Executive Committee by the Joint
Technology Team or by either of the Parties.
(c) Perform such other tasks and undertake such other responsibilities
as may be set forth in this Agreement.
(d) The location of such meetings of the Joint Executive Committee
shall be as agreed by the Parties. The Joint Executive Committee may also meet
by means of a telephone conference call or by videoconference.
(e) Each Party may change any one or more of its representatives to the
Joint Executive Committee at any time upon written notice to the other Party.
(f) Each Party shall use reasonable efforts to cause its
representatives to attend the meetings of the Joint Executive 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.
(g) 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 Executive Committee.
(h) Decisions of the Joint Executive Committee shall be made by
unanimous consent of Xxxxxx and Millennium, with each Party having one vote.
Either Party may convene a special meeting of the Joint Executive Committee for
the purpose of resolving disputes.
10.2 REFERRAL OF UNRESOLVED MATTERS TO JOINT EXECUTIVE COMMITTEE. If
the Joint Technology 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
Executive Committee for consideration and resolution. Notwithstanding the
foregoing, unresolved matters pertaining to intellectual property matters shall
be governed by Article VII. In such event, a meeting of the Joint Executive
Committee
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shall be convened as soon as practicable in order to consider and resolve the
unresolved matter. Any determination by the Joint Executive Committee shall be
final and binding upon the Parties.
10.3 REFERRAL OF UNRESOLVED MATTERS TO EXECUTIVE OFFICERS. If the Joint
Executive Committee is unable to resolve any matter referred to it under Section
10.2 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.
10.4 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.
10.5 ALTERNATE DISPUTE RESOLUTION. If the matter has not been resolved
by the Executive Officers within thirty (30) days of referral in accordance with
Section 10.3, or if the Executive Officers fail to meet within such thirty (30)
days, either Party may initiate binding alternative dispute resolution ("ADR")
in accordance with the terms set forth on Schedule I. Unless otherwise mutually
agreed upon by the Parties, the ADR proceedings shall be conducted at the
location chosen by the Party not originally requesting the resolution of the
dispute. Each Party shall have the right, at its own expense, to be represented
by counsel in such a proceeding. Each Party shall have the right to enforce a
judgment or ruling entered in the ADR proceeding in a court of competent
jurisdiction (including, without limitation, a judgment for specific performance
or injunctive relief).
ARTICLE 11
REPRESENTATIONS AND WARRANTIES
11.1 REPRESENTATION OF AUTHORITY; CONSENTS. Millennium and Xxxxxx each
represents and warrants to the other Party that it has full right, power and
authority to enter into this Agreement and to perform its respective obligations
under this Agreement; it has the right to grant to the other Party the licenses
and sublicenses granted pursuant to 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 as of the Effective Date in
connection with the execution, delivery and performance of this Agreement have
been and shall be obtained by the Effective Date.
11.2 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 existing as of the
Effective Date and (b) do not and will not conflict with, violate or breach or
constitute a default under any material contractual obligation of such Party
existing as of the Effective Date.
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11.3 EMPLOYEE AND CONSULTANT OBLIGATIONS. Each Party represents and
warrants that, unless prohibited by, or inconsistent with, applicable laws, all
of its employees, officers, consultants, and advisors that are supporting the
performance of such Party's obligations under this Agreement 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.
11.4 INTELLECTUAL PROPERTY. Each Party represents and warrants to the
other that as of the Effective Date:
(a) it is not aware of any claim made against it asserting the
invalidity, misuse, unregisterability, unenforceability or non-infringement of
any of its intellectual property which is the subject of this Agreement (the
"Intellectual Property") or challenging its right to use or ownership of any of
the Intellectual Property or making any adverse claim of ownership thereof;
(b) there is not any pending or, to its knowledge, threatened claim or
litigation or, to the knowledge of such Party, written claim or demand of any
Third Party has been received, which alleges that its activities to date
relating to the Intellectual Property have violated, or by conducting its
business as currently proposed to be conducted hereunder would violate, the
intellectual property rights of any Third Party; and,
(c) it is not aware of any default or claim of default by it or by any
Third Party relating to any license agreement with any Third Party which has a
material adverse effect on the licenses granted the other Party to this
Agreement.
11.5 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.
11.6 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 DOES NOT INFRINGE THE INTELLECTUAL PROPERTY
RIGHTS OF ANY THIRD PARTY.
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ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 PRODUCT LIABILITY INDEMNIFICATION.
(a) ABBOTT. Abbott agrees to defend Millennium and its Affiliates, at
Xxxxxx'x 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 Abbott of any of its representations, warranties or obligations
pursuant to this Agreement, or (ii) any personal injury resulting from the
development, manufacture, use, sale or other disposition of any product or
service offered by Abbott and/or its Affiliates or licensees to the extent that
such injury is alleged to be the result of the use by Abbott and/or its
Affiliates or licensees of the Deliverables or the Exchange Technology (and any
Patent Rights or copyrights related thereto). In the event of any such claim
against the Millennium Indemnified Parties by any Third Party, Millennium shall
promptly notify Abbott in writing of the claim and Abbott shall manage and
control, at its sole expense, the defense of the claim and its settlement
keeping Millennium reasonably apprised of the status of the defense and/or
settlement. No settlement shall be finalized without obtaining Millennium's
prior written consent, which shall not be unreasonably withheld, except that, in
the case of a settlement that does not require an admission or action on the
part of Millennium, Millennium's consent shall not be required so long as
Millennium is unconditionally released from all liability in such settlement.
The Millennium Indemnified Parties shall cooperate with Abbott and may, at their
option and expense, be represented in any such action or proceeding. Abbott
shall not be liable for any litigation costs or expenses incurred by the
Millennium Indemnified Parties without Xxxxxx'x prior written authorization. In
addition, Abbott shall not be responsible for the indemnification of any
Millennium Indemnified Party to the extent any Third Party claim arises from any
negligent or intentional acts by such party, or any claims compromised or
settled without its prior written consent. Notwithstanding the foregoing, in the
event of a personal injury claim that is covered by the indemnification
provisions of the Metabolic Agreement, the indemnification provisions of the
Metabolic Agreement shall control.
(b) MILLENNIUM. Millennium agrees to defend Abbott and its Affiliates,
at Millennium's cost, and will indemnify and hold Abbott and its Affiliates and
their respective directors, officers, employees and agents (the "Abbott
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, or (ii) 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 Deliverables or the Exchange Technology (and any Patent Rights
or copyrights related thereto). In the event of any claim against the Abbott
Indemnified Parties by any Third Party, Abbott 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 keeping Abbott reasonably
apprised of the status of the defense and/or settlement. No settlement shall be
finalized without obtaining Xxxxxx'x prior written consent, which shall not be
unreasonably withheld, except that, in the case of a settlement that does not
require an admission
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or action on the part of Abbott, Xxxxxx'x consent shall not be required so long
as Abbott is unconditionally released from all liability in such settlement. The
Abbott 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 Abbott
Indemnified Parties without Millennium's prior written authorization. In
addition, Millennium shall not be responsible for the indemnification of any
Abbott Indemnified Party to the extent any Third Party claim arises from any
negligent or intentional acts by such party, or any claims compromised or
settled without its prior written consent. Notwithstanding the foregoing, in the
event of a personal injury claim that is covered by the indemnification
provisions of the Metabolic Agreement, the indemnification provisions of the
Metabolic Agreement shall control.
12.2 GOVERNING LAW. This Agreement shall be construed and the
respective rights of the Parties determined according to the substantive laws of
the State of New York notwithstanding the provisions governing conflict of laws
under such New York 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.
12.3 ASSIGNMENT. Neither Millennium nor Abbott 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 Abbott to which the subject matter of this Agreement pertains.
Notwithstanding the foregoing, either Party may assign this Agreement to an
Affiliate, PROVIDED THAT such Party shall guarantee the performance of such
Affiliate. 12.4 AMENDMENTS. This Agreement, the Schedule attached hereto and the
Exhibits 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 Exhibits referred to in this Agreement
are being simultaneously delivered by Millennium to Abbott on or before the
Effective Date. The Parties also acknowledge the simultaneous execution and
delivery of the Metabolic Agreement and the Investment Agreement between the
Parties dated as of the Effective Date, none of which shall be superseded by
this Agreement. Any amendment or modification to this Agreement shall be made in
writing signed by both Parties.
12.5 NOTICES.
Notices to Millennium shall be addressed to:
Millennium Pharmaceuticals, Inc.
00 Xxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: Chief Executive Officer
with a copy to:
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Millennium Pharmaceuticals, Inc.
00 Xxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: General Counsel
Notices to Abbott shall be addressed to:
Xxxxxx Laboratories
000 Xxxxxx Xxxx Xxxx
Xxxxxxxx XX0X; Xxxx 0XX
Xxxxxx Xxxx, XX 00000
Attention: Executive Vice President, Pharmaceuticals and Chief
Scientific Officer
with a copy to:
Xxxxxx Laboratories;
000 Xxxxxx Xxxx Xxxx
Xxxxxxxx XX0X, Dept 364
Xxxxxx Xxxx, XX 00000
Attention: Senior Vice President, Secretary and General Counsel
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 certified mail, return receipt requested, postage prepaid,
or (b) sent via a reputable overnight courier service, in each case properly
addressed in accordance with the paragraph above. The effective date of notice
shall be the actual date of receipt by the Party receiving the same.
12.6 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 reasonable control of such Party, including, but not limited
to, the following: acts of God; 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 corrected as soon
as is practicable after the occurrence of one or more of the above mentioned
causes by the Party claiming force majeure taking all reasonable steps within
its power to resume compliance with its obligations with the least possible
delay. The Party claiming force majeure shall notify the other Party with notice
of the force majeure event as soon as practicable, but in no event longer than
ten (10) business days after its occurrence, which notice shall reasonable
identify such obligations under this Agreement and the extent to which
performance thereof will be affected. In such event, the Parties shall meet
promptly to determine an equitable solution to the effects of any such event.
12.7 COMPLIANCE WITH EXPORT REGULATIONS. Neither Party shall export any
technology licensed to it by the other Party under this Agreement except in
compliance with United States and other applicable export laws and regulations.
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12.8 PUBLIC ANNOUNCEMENTS. On the Effective Date, the Parties shall
issue one or more press release(s) the timing and content of which shall be
mutually agreed. 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 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. Millennium acknowledges that Xxxxxx'x internal process
for the review and approval of public announcements typically requires three (3)
weeks from the initiation of review of a proposed announcement; Abbott
acknowledges that Millennium may be required, under certain circumstances, to
issue public announcements relating to material events on an expeditious basis.
The Parties shall use reasonable efforts to anticipate potential public
announcements and, where feasible, initiate the preparation and review of such
announcement at least three (3) weeks prior to the anticipated release date
thereof. However, in the event that either Party is required by law or other
circumstances to make an announcement on a more expeditious basis (such as upon
the occurrence of a material event), such Party shall provide the other Party
with an advance copy of such announcement as far in advance of the release of
such announcement as is feasible under the circumstances. Each Party shall have
the right to 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 and shall use reasonable efforts to accommodate the reviewing Party's
other comments. 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 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 suggested redactions and including, without limitation,
the provisions of this Agreement for which confidential treatment should be
sought.
12.9 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 Abbott to act as agent for the other. Members of the Joint
Executive Committee and the Joint Technology Team shall be, and shall remain,
employees of Millennium or Abbott, as the case may be. No Party shall incur any
liability for any act or failure to act by members of the Joint Executive
Committee and the Joint Technology Team who are employees of such other Party.
12.10 NO STRICT CONSTRUCTION. This Agreement has been prepared jointly
and shall not be strictly construed against either Party.
12.11 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.
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12.12 NO IMPLIED WAIVERS; RIGHTS CUMULATIVE. No failure on the part of
Millennium or Abbott 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.
12.13 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.
12.14 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.
12.15 NO THIRD PARTY BENEFICIARIES. No person or entity other than
Abbott and 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.
12.16 NO CONSEQUENTIAL DAMAGES. UNLESS RESULTING FROM A PARTY'S WILFULL
MISCONDUCT, NEITHER PARTY HERETO WILL 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 12.16 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: Xxxx X. Xxxxx
----------------------------------------
Title: CEO
---------------------------------------
XXXXXX LABORATORIES
By: Miles X. Xxxxx
---------------------------------------
Title: Chairman of the Board and CEO
-------------------------------------
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Schedule I
ALTERNATIVE DISPUTE RESOLUTION RULES
1. To begin an ADR proceeding, a Party shall provide written notice to the other
Party identifying the issues to be resolved by ADR ("ADR Notice"). Within
fourteen (14) days after receipt of such ADR Notice, the other Party may, by
written notice to the Party initiating the ADR, add additional issues to be
resolved within the same ADR.
2. Within twenty-one (21) days following receipt of the original ADR Notice, the
Parties shall select a mutually acceptable neutral party ("Neutral") to preside
in the resolution of any disputes in this ADR proceeding. If the Parties are
unable to agree on a mutually acceptable Neutral within such period, either
Party may request the President of the CPR Institute for Dispute Resolution
("CPR"), 000 Xxxxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000, to select a
Neutral pursuant to the following procedures:
(a) The CPR shall submit to the Parties a list of not fewer than five (5)
candidates within fourteen (14) days after receipt of the request, along with a
CURRICULUM VITAE for each candidate. No candidate shall be an employee, director
or shareholder of either Party or any of their Affiliates.
(b) Such list shall include a statement of disclosure by each candidate of
any circumstance likely to affect his or her impartiality.
(c) Each Party shall number the candidates in order of preference (with
the number one (1) signifying the greatest preference) and shall deliver the
list to the CPR within seven (7) days following receipt of the list of
candidates. If a Party believes a conflict of interest exists regarding any of
the candidates, the Party shall provide a written explanation of the conflict to
the CPR along with its list showing its order of preference for the candidates.
Any Party failing to return a list of preferences on time shall be deemed to
have no order of preference.
(d) If the Parties collectively have identified fewer than three (3)
candidates deemed to have conflicts, the CPR shall designate as the Neutral the
candidate for whom the Parties collectively have indicated the greatest
preference. If a tie shall result between two candidates, the CPR may designate
either candidate. If the Parties collectively have identified three (3) or more
candidates deemed to have conflicts, the CPR shall review the explanations
regarding conflicts, and, in its sole discretion, may either (i) immediately
designate as the Neutral the candidate for whom the Parties collectively have
indicated the greatest preference, or (ii) issue a new list of not fewer than
five (5) candidates, in which case the procedures set forth in subparagraphs
2(a)-(d) shall be repeated.
3. No earlier than twenty-eight (28) days or later than fifty-six (56) days
after the selection, the Neutral shall hold a hearing to resolve each of the
issues identified by the Parties. The ADR proceeding shall take place at a
location agreed upon by the Parties. If the Parties cannot agree, the Neutral
shall designate a location other than the principal place of business of either
Party or any of their Affiliates.
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4. At least seven (7) days prior to the hearing, each Party shall submit the
following to the other Party and the Neutral:
(a) a copy of all exhibits on which such Party intends to rely in any
oral or written presentation to the Neutral;
(b) a list of any witnesses such Party intends to call at the hearing,
and a short summary of the anticipated testimony of each witness;
(c) a proposed ruling on each issue to be resolved, together with a
request for a specific damage award or other remedy for each issue.
The proposed rulings and remedies shall not contain any recitation
of the facts or any legal arguments and shall not exceed one (1)
page per issue.
(d) a brief in support of each Party's proposed rulings and remedies
PROVIDED THAT the brief shall not exceed twenty (20) pages. This
page limitation shall apply regardless of the number of issues
raised in the ADR proceeding.
Except as expressly set forth in subparagraphs 4(a)-(d), no discovery shall be
required or permitted by any means, including depositions, interrogatories,
requests for admissions, or production of documents.
5. The hearing shall be conducted on two (2) consecutive days and shall be
governed by the following rules:
(a) Each Party shall be entitled to five (5) hours of hearing time to
present its case. The Neutral shall determine whether each Party
has had the five (5) hours to which it is entitled.
(b) Each Party shall be entitled, but not required, to make an opening
statement, to present regular and rebuttal testimony, documents or
other evidence, to cross-examine witnesses, and to make a closing
argument. Cross-examination of witnesses shall occur immediately
after their direct testimony, and cross-examination shall be
charged against the Party conducting the cross-examination.
(c) The Party initiating the ADR shall begin the hearing and, if it
chooses to make an opening statement, shall address not only issues
it raised but also any issues raised by the responding Party. The
responding Party, if it chooses to make an opening statement, also
shall address all issues raised in the ADR. Thereafter, the
presentation of regular and rebuttal testimony and documents, other
evidence, and closing arguments shall proceed in the same sequence.
(d) Except when testifying, witnesses shall be excluded from the
hearing until closing arguments.
(e) Settlement negotiations, including any statements made therein,
shall not be admissible under any circumstances. Affidavits
prepared for purposes of the
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ADR hearing also shall not be admissible. As to all other matters,
the Neutral shall have sole discretion regarding the admissibility
of any evidence.
6. Within seven (7) days following completion of the hearing, each Party may
submit to the other Party and the Neutral a post-hearing brief in support of its
proposed rulings and remedies, PROVIDED THAT such brief shall not contain or
discuss any new evidence and shall not exceed ten (10) pages. This page
limitation shall apply regardless of the number of issues raised in the ADR
proceeding.
7. The Neutral shall rule on each disputed issue within fourteen (14) days
following completion of the hearing. Such ruling shall adopt in its entirety the
proposed ruling and remedy of one of the Parties on each disputed issue but may
adopt one Party's proposed rulings and remedies on some issues and the other
Party's proposed rulings and remedies on other issues. The Neutral shall not
issue any written opinion or otherwise explain the basis of the ruling.
8. The Neutral shall be paid a reasonable fee plus expenses. These fees and
expenses, along with the reasonable legal fees and expenses of the prevailing
Party (including all expert witness fees and expenses), the fees and expenses of
a court recorder, and any expenses for a hearing room, shall be paid as follows:
(a) If the Neutral rules in favor of one Party on all disputed issues
in the ADR, the losing Party shall pay 100% of such fees and
expenses.
(b) If the Neutral rules in favor of one Party on some issues, and the
other Party on other issues, the Neutral shall issue with the
rulings a written determination as to how such fees and expenses
shall be allocated between the Parties. The Neutral shall allocate
the fees and expenses in a way that bears a reasonable relationship
to the outcome of the ADR, with the Party prevailing on more
issues, or on issues of greater value or gravity, recovering a
relatively larger share of its legal fees and expenses.
9. The rulings of the Neutral and the allocation of fees and expenses shall be
binding, non-reviewable, and non-appealable, and may be entered as a final
judgment in any court having jurisdiction.
10. Except as provided in paragraph 9 of this Exhibit I or as required by law,
the existence of the dispute, any settlement negotiations, the ADR hearing, any
submissions (including exhibits, testimony, proposed rulings and briefs), and
the rulings shall be deemed Confidential Information. The Neutral shall have the
authority to impose sanctions for unauthorized disclosure of Confidential
Information.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT A
ABBOTT EXCHANGE TECHNOLOGY
The following is a description of the [**] component of the Abbott Exchange
Technology:
Non-exclusive licenses to [**], including:
Screening using [**])
Screening using [**]
Drug design [**]Utilization of [**]
Protocols for [**]Software to [**]
Vendor information on [**]Structures of [**]The following is a description of
the [**] of the Abbott Exchange Technology:
Blueprints, protocols and software for all of the following:
[**]
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT B
MILLENNIUM EXCHANGE TECHNOLOGY
The following is the list of the [**] components of the Millennium Exchange
Technology which are available as of the Effective Date:
[**]
The following is the list of the [**] components of the Millennium Exchange
Technology which, [**] developed by Millennium and made available to
Millennium's [**] of the Effective Date, [**] Millennium Exchange Technology
under this Agreement:
[**], as described above, subsequent to the [**] anniversary of the Effective
Date and prior to the [**] anniversary of the Effective Date, Millennium shall
notify Abbott. Notwithstanding Section 3.1(a) of the Agreement, within [**] of
such notification, Abbott shall have the right to notify Millennium that it
[**], Abbott agrees that the [**] and, in no event, later than [**] from
Xxxxxx'x notification to Millennium (or such longer period as the Joint
Technology Team determines is necessary in order for Abbott [**]).
Millennium reserves the right, in whole or in part, to develop the [**]
components through the acquisition of Third Party software and technology. In
the event that Millennium utilizes Third Party software or technology, [**]
that it will [**] that there will [**] as a [**] that if [**] is not [**],
[**] of the Agreement. In the event that either component includes any Third
Party Software, the terms upon which such Third Party Software shall be made
available to Xxxxxx (i.e., as Direct Licensed Software or as Sublicensed
Software or, if Sublicensed Software, the fees or payments associated with
such Sublicensed Software) shall be [**]available by Millennium [**].
Millennium shall notify Xxxxxx promptly following either component becoming
covered by this Agreement, and the Parties shall then promptly meet to amend
the Technology Exchange Plan to provide for Delivery thereof during the
Exchange Term.
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Exhibit C
MILLENNIUM SUPPORTED ENVIRONMENT
Because of its confidential nature, this exhibit has been supplied to specific
persons within Xxxxxx. Upon signature of the Agreement, it will be made more
widely available within Xxxxxx.
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Exhibit X
XXXXXX SUPPORTED ENVIRONMENT
To be Provided by Xxxxxx within [**] of the Effective Date
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Exhibit E
PRELIMINARY TECHNOLOGY DEVELOPMENT PLAN
[**]
XXXXXX CONTACT: [**]MILLENNIUM CONTACT: [**]
PROJECT TITLE: [**]
DESCRIPTION OF PROGRAM: [**]
STATEMENT OF HYPOTHESIS: [**].
SPECIFIC OBJECTIVES:
[**] (Xxxxxx)[**] (Millennium)[**] (Xxxxxx and Millennium)[**] (Xxxxxx)[**].
(Xxxxxx and Millennium)
EXPERIMENTAL APPROACH: [**]
Projected Costs - Xxxxxx: The estimated cost to conduct these studies is
about [**]
PROJECTED COSTS - MILLENNIUM: The estimated costs to conduct these studies
are [**]
TIME LINE: [**]
PREDICTED OUTCOME AND IMPACT: [**].
DELIVERABLES: [**].
BACKGROUND TECHNOLOGIES: [**]
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