EXHIBIT 10.54
REVISED AND RESTATED
RESEARCH AND DEVELOPMENT AGREEMENT
This Revised and Restated Research and Development Agreement (the "Agreement"),
dated as of March 15, 2002 ("Execution Date"), between ARIAD Gene Therapeutics,
Inc., a Delaware corporation ("AGTI") and ARIAD Corporation, a Delaware
corporation ("Corporation") supersedes and supplants in its entirety the
Research and License Agreement between AGTI and Corporation dated July 1, 1994
("Original Agreement").
WHEREAS, AGTI has certain patent rights and technology and has acquired licenses
to certain other patent rights and technology, for the purpose of allowing AGTI
to develop and commercialize certain Products;
WHEREAS, Corporation has personnel experienced in the research and development
of human health care products and has, or is expected to acquire, the
facilities, equipment and employees that will permit it to carry out research
and development activities for AGTI, with respect to such rights and technology;
and
WHEREAS, AGTI desires to engage Corporation to perform such services and
Corporation desires to provide such services.
NOW, THEREFORE, in consideration of the foregoing premises and for other good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, Corporation and AGTI hereby agree as follows:
1. Definitions.
1.1 Definitions. As used herein, capitalized terms shall have the
respective meanings set forth below:
(a) "AGTI Technology" shall mean all information, developments,
discoveries, inventions, improvements, know-how, processes,
formulas, methods, trade secrets and other intellectual
property, whether or not patentable, whether or not
copyrightable, now owned or hereafter developed, acquired,
reduced to practice or conceived by AGTI, either alone or
jointly with others, or licensed or sublicensed to AGTI.
(b) "Confidential Information" has the meaning set forth in
Section 8.1 below.
(c) "Improvements" shall mean all information, developments,
discoveries, inventions, improvements (including
improvements to AGTI Technology), know-how, processes,
formulas, methods, trade secrets and other intellectual
property, other than the AGTI Technology, whether or not
patentable, whether or not copyrightable, which are
developed, acquired, reduced to practice or conceived by
Corporation, either alone or jointly with others, in
carrying out Research and Development under this Agreement.
(d) "Legal Order" has the meaning set forth in Section 8.3
below.
(e) "Product" shall mean any article, composition, apparatus,
substance, chemical, material, method, process or service.
(f) "Programs" shall mean research and development programs set
forth by AGTI for Research and Development to be performed
by Corporation.
(g) "Research and Development" shall mean research,
development, clinical testing and related services and
activities.
1.1. Singular and Plural. Singular and plural forms, as the case may
be, of terms defined herein shall have correlative meanings.
2. Research and Development.
2.1. Research and Development Services. AGTI hereby engages
Corporation, and Corporation hereby agrees, to undertake Research
and Development of the AGTI Technology in accordance with each
Program for the purpose of allowing AGTI to develop, manufacture,
use, sell and market one or more Products. During the term of this
Agreement, Corporation shall use its best efforts to conduct the
Research and Development for AGTI with respect to each Program in
a prudent and skillful manner in accordance with applicable laws,
ordinances, rules, regulations, orders, licenses and other
requirements now or hereafter in effect. Corporation shall obtain
all labor, supervision, services, materials, supplies, tools,
machinery and replacement parts thereof necessary to perform the
Research and Development in accordance with each Program then in
effect, which expenses shall be paid by AGTI as described below.
All such materials, supplies, tools, machinery and replacement
parts thereof shall be used exclusively by Corporation to perform
the Research and Development for AGTI under each Program.
2.2. Reports and Records. Within sixty (60) days after the end of each
calendar quarter during the term of this Agreement, Corporation
shall provide to AGTI a report setting forth the total Research
and Development costs incurred during such quarter. All Research
and Development and any other work performed under each Program
should be duly recorded and evidenced in laboratory notebooks
maintained by the persons working on the Program, in sufficient
detail and in good scientific manner appropriate for patent and
regulatory purposes. Upon the request of AGTI, Corporation will
provide to AGTI a report setting forth (a) a summary of the work
performed hereunder by Corporation and its employees and agents,
and (b) a description of any material development with respect to
the Programs. AGTI shall also have the right, during normal
business hours, to inspect and copy the records pertaining to the
Programs kept by Corporation.
2.3. Rights to Property. As between AGTI and Corporation, all right,
title and interest in and to any Improvements acquired or
developed pursuant to this Agreement, including all intellectual
property rights therein, shall be the exclusive property of and
are hereby assigned to AGTI. This Section 2.3 shall survive the
expiration or termination of this Agreement for any reason.
2.4. Exclusion from Assignment. AGTI and Corporation acknowledge and
agree the assignments set forth in Sections 2.3, 5.3 and 7 shall
not extend to, and do not include, any Improvements owned or
controlled by third parties (alone or jointly) that Corporation
does not have the right to assign; and to the extent any
Improvements are owned or controlled by a third party and licensed
to Corporation, Corporation hereby grants AGTI a sublicense to
such Improvements that is of the same scope and duration and
includes all rights Corporation received under the license granted
to Corporation by the third party, provided that Corporation has
the right to sublicense its rights to AGTI. This Section 2.4 shall
survive the expiration or termination of this Agreement for any
reason.
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3. Payment for Services; Timing of Payments.
3.1. Payments. In consideration of the Research and Development
activities to be carried out by Corporation during the term of
this Agreement, AGTI shall reimburse Corporation for all of its
Research and Development costs, and AGTI shall additionally pay
Corporation a fee equal to ten (10%) percent of all such Research
and Development costs (a "Cost-Plus Fee").
3.2. Timing of Payments. If requested by Corporation, AGTI shall
advance funds for all Research and Development costs in reasonable
amounts. Within sixty (60) days after the end of each calendar
quarter, Corporation shall deliver a statement to AGTI of the
Research and Development costs actually incurred in such calendar
quarter and the Cost-Plus Fee thereon, and AGTI shall pay to
Corporation any additional amounts shown to be due therefor and
not yet paid.
3.3. Calculation of Costs. Directs costs shall be allocated on a
reasonable and consistent basis, and charged to AGTI for Research,
Development and other services performed by Corporation for AGTI
hereunder. Corporation's expenditures and estimated expenditures
of conducting the Research and Development hereunder shall be
determined using Corporation's internal financial and accounting
systems. Allocation of all indirect costs, including general and
administrative costs, will be made by Corporation on a reasonable
basis consistent with Corporation's regular internal cost
accounting system.
3.4. Competitive Costs. All costs to be paid by AGTI hereunder shall be
no greater than the cost to AGTI would be if AGTI obtained similar
services, materials or other resources from a third party
similarly situated to Corporation.
4. Representatives, Warranties and Covenants.
4.1. Representations, Warranties and Covenants of the Corporation.
Corporation represents, warrants and covenants to AGTI as follows:
(a) Corporation is a corporation duly organized, validly
existing and in good standing under the laws of the State
of Delaware; has all corporate power required to own its
property and to carry on its business as now conducted and
proposed to be conducted; and is qualified to do business
in all jurisdictions in which such qualification is
necessary;
(b) The execution, delivery and performance of this Agreement
have been duly authorized by all necessary corporate action
on the part of Corporation;
(c) This Agreement has been duly executed and delivered by
Corporation and is a legal, valid and binding obligation of
Corporation, enforceable against Corporation in accordance
with its terms;
(d) The execution, delivery and performance of this Agreement
does not and will not conflict with or contravene any
provisions of the certificate of incorporation or by-laws
of Corporation or any agreement, document, instrument,
indenture, lien, judgment, order or other obligation of
Corporation; and
(e) Corporation shall not knowingly misappropriate or otherwise
misuse, nor shall it knowingly permit of its employees,
consultants or agents to misappropriate or
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otherwise misuse, any intellectual property of any third
party in performance of the Research and Development for a
Program.
4.2. Representation, Warranties and Covenants of AGTI. AGTI represents,
warrants and covenants to Corporation as follows:
(a) AGTI is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware;
has all corporate power required to own its property and to
carry on its business as now conducted and proposed to be
conducted; and is qualified to do business in all
jurisdictions in which such qualification is necessary;
(b) The execution, delivery and performance of this Agreement
have been duly authorized by all necessary corporate action
on the part of AGTI;
(c) This Agreement has been duly executed and delivered by AGTI
and is a legal, valid and binding obligation of AGTI,
enforceable against AGTI in accordance with its terms; and
(d) The execution, delivery and performance of this Agreement
does not and will not conflict with or contravene any
provision of the certificate of incorporation or by-laws of
AGTI or any agreement, document, instrument, indenture,
lien, judgment, order or other obligation of AGTI.
5. Term and Termination.
5.1. Term. This Agreement shall be effective as of the Execution Date
set forth on the first page of the Agreement and shall continue in
full force and effect through December 31, 2010, unless earlier
terminated in accordance with the terms and conditions set forth
herein. The Agreement may be renewed upon the mutual agreement of
the parties in their sole discretion.
5.2. Termination. Either party hereto may terminate this Agreement for
any reason on sixty (60) days' written notice to the other party.
5.3. Prior Research and Development. AGTI and Corporation acknowledge
that certain research, development and other services were
provided between the parties following the expiration of the
Original Agreement on July 1, 1999. Therefore, the parties
expressly agree that the terms and conditions of this Agreement
shall apply to any such research, development or other services
that were provided between the parties after July 1, 1994 and
prior to the Execution Date of this Agreement (as well as to any
Research and Development performed by the parties under this
Agreement during its term). To the extent necessary to affect this
intention of the parties, Corporation hereby assigns to AGTI all
of its right, title and interest in and to the Improvements
existing prior to the Execution Date of this Agreement, and all
intellectual property rights therein. Corporation shall cause any
of its employees, consultants and agents to also assign any rights
in the Improvements to AGTI.
5.4. Effects of Expiration and Termination. Following expiration or
termination of this Agreement, Corporation shall deliver to AGTI
all Confidential Information of AGTI, including, without
limitation, the laboratory notebooks and records of the Research
and Development kept by Corporation, and all copies thereof in
Corporation's possession.
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5.5. Survival. The following provisions shall survive any expiration or
termination of this Agreement: 1, 2.2 (during period set
forth therein only), 2.3, 2.4, 4, 5.3, 5.4, 5.5, 6, 7, 8, 9, 10,
11, 12, 13 and any payment obligations due as of the effective
date of such expiration or termination.
6. Relationship of the Parties.
Nothing contained in this Agreement is intended, or is to be construed,
to constitute Corporation and AGTI partners or joint venturers or
Corporation as an employee of AGTI. Neither party hereto shall have any
express or implied right or authority to assume or create any obligations
on behalf of or in the name of the other party or to bind the other party
to any contract, agreement or undertaking with any third party.
7. Further Assurance.
Corporation and AGTI each agree to duly execute and deliver, or cause to
be duly executed and delivered, such further instruments and do and cause
to be done such further acts and things, including, without limitation,
the execution and filing of additional assignments, agreements,
instruments and other documents that may be necessary, or as the other
party hereto may at any time and from time to time reasonably request, in
connection with this Agreement or to carry out more effectively the
provisions and purposes of, or to better assure and confirm unto such
other party its rights under this Agreement. Without limiting the
foregoing, Corporation expressly agrees that each of its employees,
consultants and agents performing work under a Program has entered, or
promptly will enter, into a written agreement assigning all right, title
and interest to AGTI in any Improvements conceived or reduced to practice
by such individual pursuant to any Program as necessary for AGTI to
exercise its rights hereunder.
8. Confidential Information.
8.1. Confidential Information. As used herein, "Confidential
Information" means all information that AGTI discloses to
Corporation under this Agreement, all AGTI Technology and all
other Information deemed "Confidential Information" under this
Agreement, provided that Confidential Information shall not
include any information excluded under Section 8.2. Except to the
extent expressly authorized by this Agreement or otherwise agreed
in writing by the Parties, the Corporation agrees that it shall
keep confidential and shall not publish or otherwise disclose any
Confidential Information to any third party, and shall not use
such Information for any purpose other than as provided for in
this Agreement.
8.2. Exceptions. Notwithstanding Section 8.1 above, "Confidential
Information" shall not include any information that Corporation
can demonstrate by competent written evidence in existence at the
time of disclosure or development (as applicable):
(a) Was already known to Corporation other than under an
obligation of confidentiality, at the time of disclosure by
AGTI or, in the case of AGTI Technology, prior to its
creation or discovery hereunder;
(b) Was generally available to the public or otherwise part of
the public domain at the time of its disclosure to
Corporation by AGTI;
(c) Became generally available to the public or otherwise part
of the public domain after its disclosure and other than
through any act or omission of Corporation in breach of
this Agreement;
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(d) Was disclosed to Corporation, other than under an
obligation of confidentiality to a third party, without
breach of any party's confidentiality obligation to AGTI;
or
(e) Is independently developed by Corporation without using any
Confidential Information.
8.3. Permitted Disclosure. Notwithstanding the limitations in this
Article 8, in the event that Corporation is required to disclose
Confidential Information by any court of competent jurisdiction
under any legal or regulatory statute, rule, order or regulation
("Legal Order"), Corporation shall provide AGTI with immediate
written notice of same so that AGTI may have the opportunity to
seek an appropriate protective order. If AGTI does not obtain a
protective order, Corporation shall disclose only such part of the
Confidential Information as is specifically required by the Legal
Order.
9. Publicity.
Neither Party shall use the name of the other Party in connection with
any product, promotional literature, or advertising material without the
prior written permission of the other party, which permission shall not
be unreasonably withheld. This restriction shall not apply to materials
used by AGTI solely for financing or corporate partnering purposes or to
documents available to the public that identify the existence of the
Agreement.
10. Successors and Assigns.
The terms and provisions of this Agreement shall insure to the benefit
of, and be binding upon, Corporation, AGTI, and their respective
successors and assigns.
11. Governing Law.
This Agreement shall be governed by and construed in accordance with the
laws of the Commonwealth of Massachusetts, without regard to conflicts of
laws principles.
12. Execution in Counterparts.
This Agreement may be executed in any number of counterparts, each of
which counterparts, when so executed and delivered, shall be deemed to be
original, and all of which counterparts, taken together, shall constitute
one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed under seal and delivered as of the date first above written.
ARIAD GENE THERAPEUTICS, INC.,
A DELAWARE CORPORTION
By: /s/ Xxxxxx X. Xxxxxx
------------------------
Xxxxxx X. Xxxxxx
Chairman and Chief Executive Officer
ARIAD CORPORATION, A DELAWARE CORPORTION
By: /s/ Xxxxxx X. Xxxxx
-----------------------
Xxxxxx X. Xxxxx
Senior Vice President
Chief Legal Officer
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