EXHIBIT 10.24
[CONFIDENTIAL TREATMENT REQUESTED]/*/ INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
EXECUTION COPY
LICENSE AGREEMENT
BY AND BETWEEN
ACUSPHERE, INC.
AND
ACUSPHERE NEWCO, LTD.
TABLE OF CONTENTS
1 DEFINITIONS
2 ACUSPHERE LICENSE TO NEWCO
3 INTELLECTUAL PROPERTY
4 [CONFIDENTIAL TREATMENT REQUESTED]/*/
5 FINANCIAL PROVISIONS
6 RIGHT OF INSPECTION AND AUDIT
7 REPRESENTATIONS AND WARRANTIES
8 TERM AND TERMINATION
9 CONFIDENTIAL INFORMATION
10 GOVERNING LAW AND JURISDICTION
11 IMPOSSIBILITY OF PERFORMANCE - FORCE MAJEURE
12 ASSIGNMENT
13 NOTICES
14 MISCELLANEOUS
THIS AGREEMENT made this 30th day of June 2000
BETWEEN:
(1) ACUSPHERE, INC., a Delaware corporation, having its principal place of
business at 00 Xxxxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000; and
(2) ACUSPHERE NEWCO, LTD., an exempted limited liability company
incorporated under the laws of Bermuda and having its registered office
at Xxxxxxxxx Xxxxx, 0 Xxxxxx Xx., Xxxxxxxx, Xxxxxxx;
RECITALS:
A. Simultaneously herewith, Acusphere, Elan, EIS, and Newco (capitalized
terms used herein are defined below) are entering into the JDOA for the
purpose of recording the terms and conditions of the joint venture and
of regulating their relationship with each other and certain aspects of
the affairs of, and their dealings with Newco.
B. Newco desires to enter into this Agreement with Acusphere so as to
permit Newco to utilize the Acusphere Intellectual Property in making,
having made, importing, using, offering for sale and selling the
Products in the Field in the Territory.
C. Simultaneously herewith Newco and Elan are entering into the Elan
License Agreement relating to Newco's use of the Elan Intellectual
Property.
1 DEFINITIONS
1.1 In this Agreement unless the context otherwise requires:
"ACUSPHERE" shall mean Acusphere, Inc., a Delaware corporation and its
Affiliates.
"ACUSPHERE IMPROVEMENTS" shall mean improvements relating to the
Acusphere Patents and/or the Acusphere Know-How, developed (i) by
Acusphere whether or not pursuant to the Project, (ii) by Newco or Elan
or by a third party (under contract with Newco) pursuant to the
Project, and/or (iii) jointly by any combination of Acusphere, Elan or
Newco pursuant to the Project, except as limited by agreements with
third parties.
Subject to third party agreements, Acusphere Improvements shall
constitute part of Acusphere Intellectual Property and be included in
the license of the Acusphere Intellectual Property pursuant to Clause
2.1 solely for the purposes set forth therein. If the inclusion of a
Acusphere Improvement in the license of Acusphere Intellectual Property
is restricted or limited by a third party agreement, Acusphere shall
use reasonable commercial efforts to minimize any such restriction or
limitation.
1
"ACUSPHERE INTELLECTUAL PROPERTY" shall mean the Acusphere Know-How,
the Acusphere Patents and the Acusphere Improvements.
"ACUSPHERE JV" shall mean an entity that Acusphere and a third party
(i) establish or has established, (ii) take shareholdings in or have a
right to take shareholdings in, and (iii) grant certain licenses in and
to certain intellectual property rights for the purpose of implementing
a strategic alliance.
"ACUSPHERE KNOW-HOW" shall, subject to Clause 4.2, mean any and all
rights owned, licensed or controlled by Acusphere to any discovery,
invention (whether patentable or not), know-how, substance, data,
technique, process, system, formulation and design relating to
microparticle compositions of the Compounds for pulmonary
administration which includes all know-how relating to the technology
set forth in Schedule 1 hereto.
"ACUSPHERE LICENSE" shall have the meaning set forth in Clause 2.1.
"ACUSPHERE PATENTS" shall, subject to Clause 4.2, mean any and all
rights under any and all patent applications and/or patents, now
existing, currently pending or hereafter filed or obtained or licensed
by Acusphere relating to microparticle compositions of the Compounds
for pulmonary administration as set forth in Schedule 1, which list is
not exhaustive, and any foreign counterparts thereof and all
divisionals, continuations, continuations-in-part, any foreign
counterparts thereof and all patents issuing on, any of the foregoing,
together with all registrations, reissues, re-examinations or
extensions thereof.
"AFFILIATE" shall mean any corporation or entity controlling,
controlled or under the common control of Elan or Acusphere, as the
case may be, excluding an Elan JV or an Acusphere JV. For the purpose
of this definition, "control" shall mean direct or indirect ownership
of [CONFIDENTIAL TREATMENT REQUESTED]/*/ or more of the stock or shares
entitled to vote for the election of directors. For purposes of this
Agreement, Newco is not an Affiliate of Acusphere or EIS.
"AGREEMENT" shall mean this license agreement (which expression shall
be deemed to include the Recitals and Schedules hereto).
"BUSINESS PLAN" shall have the meaning set forth in the JDOA.
"COMMERCIALIZATION" shall mean the manufacture, have manufactured,
promotion, distribution, import, use, market, offer for sale and sale
of the Products.
"COMPOUNDS" shall mean [CONFIDENTIAL TREATMENT REQUESTED]/*/ and such
other active ingredients for the Products as may be nominated by the
Management Committee in accordance with Clause 2 of the JDOA.
"CONFIDENTIAL INFORMATION" shall have the meaning set forth in Clause
9.
2
"DEFINITIVE DOCUMENTS" shall mean the definitive agreements relating to
the transaction including finance, stock purchase, research and license
agreements.
"EFFECTIVE DATE" shall mean the date of this Agreement.
"EIS" shall mean Elan International Services, Ltd., a Bermuda exempted
limited liability company having its registered office at Xxxxxxxxx
Xxxxx, 0 Xxxxxx Xx., Xxxxxxxx, Xxxxxxx.
"ELAN" shall mean EPIL and Elan Corporation, plc carrying on business
as Elan Pharmaceutical Technologies. For purposes of this Agreement,
Elan shall exclude The Liposome Company, Inc. and its subsidiaries,
Axogen Limited and Neuralab Limited and all Affiliates and subsidiaries
(present or future) of Elan Corporation plc within the division of Elan
Corporation, plc carrying on business as Elan Pharmaceuticals which
incorporates, inter alia, Athena Neurosciences, Inc., Elan
Pharmaceuticals, Inc., Elan Diagnostics, Carnrick Laboratories, and
Elan Europe Limited.
"ELAN IMPROVEMENTS" shall have the meaning set forth in the Elan
License Agreement.
"ELAN INTELLECTUAL PROPERTY" shall have the meaning set forth in the
Elan License Agreement.
"ELAN JV" shall have the meaning set forth in the Elan License
Agreement.
"ELAN KNOW-HOW" shall have the meaning set forth in the Elan License
Agreement.
"ELAN LICENSE" shall have the meaning set forth in the Elan License
Agreement.
"ELAN LICENSE AGREEMENT" shall mean that certain license agreement, of
even date herewith, entered into between Elan and Newco.
"ELAN PATENTS" shall have the meaning set forth in the Elan License
Agreement.
"EPIL" shall mean Elan Pharma International Limited, a private limited
company incorporated under the laws of Ireland.
"FIELD" shall mean the delivery of a specified Compound by a specific
Mode of Administration in a specific device to treat a specific medical
condition, as set forth in Clause 2.3 of the JDOA with respect to
[CONFIDENTIAL TREATMENT REQUESTED]/*/ and as further determined by the
unanimous vote of the Management Committee in accordance with Clause 2
of the JDOA.
"FINANCIAL YEAR" shall mean each year commencing on 1 January (or in
the case of the first Financial Year, the Effective Date) and expiring
on 31 December of each year.
3
"IN MARKET" shall mean the sale of the Product in the Territory by
Newco or its Affiliates, or where applicable by a permitted
sub-licensee, to an unaffiliated third party, such as (i) the end-user
consumer of the Product (ii) a wholesaler, managed care organization,
hospital or pharmacy or other third party who effects the final
commercial sale to the end-user consumer of the Product, and shall
exclude the transfer pricing of the Product(s) by Newco to an Affiliate
or a sub-licensee.
"JDOA" shall mean that certain subscription, joint development and
operating agreement, of even date herewith, by and between Elan,
Acusphere, EIS and Newco.
"LICENSES" shall mean the Elan License and the Acusphere License.
"MANAGEMENT COMMITTEE" shall have the meaning set forth in the JDOA.
"MODE OF ADMINISTRATION" shall mean administration via the pulmonary
route (a) for local or systemic effect, and (b) by immediate or
controlled release.
"NET SALES" shall mean that sum determined by deducting the following
deductions from the aggregate gross In Market sales proceeds billed for
the Products by Newco or its Affiliate or a permitted sub-licensee, as
the case may be:
(i) transportation charges or allowances, if any, included in such
price;
(ii) trade, quantity or cash discounts, broker's or agent's
commissions, if any, allowed or paid;
(iii) credits or allowances, if any, given or made on account of
price adjustments, returns, promotional discounts, rebates and
any and all federal, state or local government rebates whether
in existence now or enacted at any time during the term of the
Licenses; and
(iv) any tax, excise or governmental charge upon or measured by the
sale, transportation, delivery or use of the Products.
"NEWCO" shall mean, Acusphere Newco, Ltd. a new company established by
Acusphere and EIS, in Bermuda.
"NEWCO INTELLECTUAL PROPERTY" shall mean all rights to patents,
know-how and other intellectual property arising out of the conduct of
the Project by any person, including any technology acquired by Newco
from a third party, that relates to the Products and which is not (in
the case of the Compound) or which cannot be segregated into (nor does
it constitute) Elan Intellectual Property or Acusphere Intellectual
Property.
"PARTY" shall mean Acusphere or Newco, as the case may be, and
"PARTIES" shall mean Acusphere and Newco.
"PRODUCTS" shall mean formulations of the Compound(s) for use as a
human therapeutic for a specified medical condition.
4
"PROJECT" shall mean all activities as undertaken by Elan, Acusphere
and Newco in order to develop the Products.
"TERM" shall have the meaning set forth in Clause 8.
"TERRITORY" shall mean all the countries of the world.
"UNITED STATES DOLLAR" and "US$" shall mean the lawful currency for the
time being of the United States of America.
1.2 In this Agreement:
1.2.1 The singular includes the plural and vice versa, and the
masculine includes the feminine and vice versa and the neuter
includes the masculine and the feminine.
1.2.2 Any reference to a Clause or Schedule shall, unless otherwise
specifically provided, be to a Clause or Schedule of this
Agreement.
1.2.3 The headings of this Agreement are for ease of reference only
and shall not affect its construction or interpretation.
2 ACUSPHERE LICENSE TO NEWCO
2.1 Acusphere hereby grants to Newco for the Term an exclusive license (the
"ACUSPHERE LICENSE") of the Acusphere Intellectual Property solely in
the Field to make, have made, import, use, offer for sale and sell the
Products in the Field in the Territory, subject to any contractual
obligations that Acusphere has as of the Effective Date. Acusphere
hereby confirms that no such contractual obligations are in effect on
the date hereof between Acusphere and an unaffiliated third party.
2.2 [CONFIDENTIAL TREATMENT REQUESTED]/*/ shall be responsible for payments
related to the financial provisions and obligations of any third party
agreement with respect to [CONFIDENTIAL TREATMENT REQUESTED]/*/ to
which it is a party on the Effective Date (including amendments
thereto) including without limitation, any royalty or other
compensation obligations triggered thereunder on the Effective Date, or
triggered thereunder after the Effective Date.
2.3 Elan shall be a third party beneficiary under this Agreement and shall
have the right to cause Newco to enforce Newco's rights under this
Agreement against Acusphere.
2.4 Notwithstanding anything contained in this Agreement to the contrary,
Acusphere shall have the right outside the Field and subject to the
non-competition provisions of Clause 4 to exploit and grant licenses
and sublicenses of the Acusphere Intellectual Property.
5
For the avoidance of doubt, Newco shall have no right to use the
Acusphere Intellectual Property outside the Field.
2.5 Except as provided in Clause 11 of the JDOA, Newco shall not be
permitted to assign, license or sublicense any of its rights under the
Acusphere Intellectual Property without the prior consent in writing of
Acusphere.
2.6 Any agreement between Newco and any permitted third party for the
development or exploitation of the Acusphere Intellectual Property
shall require such third party to maintain the confidentiality of all
information concerning the Acusphere Intellectual Property.
Insofar as the obligations owed by Newco to Acusphere are concerned,
Newco shall remain responsible for all acts and omissions of any
permitted sub-licensee, including Elan, as if they were acts and
omissions by Newco.
3 INTELLECTUAL PROPERTY
3.1 Ownership of Intellectual Property:
3.1.1 Newco shall own the Newco Intellectual Property.
3.1.2 Acusphere shall own the Acusphere Intellectual Property.
4 [CONFIDENTIAL TREATMENT REQUESTED]/*/
5 FINANCIAL PROVISIONS
5.1 ROYALTIES:
Prior to the Commercialization of the Products, the Management
Committee shall consider and if appropriate, determine reasonable
royalties with respect to the Commercialization of the Products by
Newco that shall be payable by Newco to Elan and Acusphere[CONFIDENTIAL
TREATMENT REQUESTED]/*/.
5.2 Payment of royalties pursuant to Clause 5.1 shall be made quarterly in
arrears during each Financial Year within 30 days after the expiry of
the calendar quarter. The method of payment shall be by wire transfer
to an account specified by Acusphere. Each payment made to Acusphere
shall be accompanied by a true accounting of all Products sold by
Newco's permitted sublicensees, if any, during such quarter.
Such accounting shall show, on a country-by-country and
Product-by-Product basis, Net Sales (and the calculation thereof) and
each calculation of royalties with respect thereto, including the
calculation of all adjustments and currency conversions.
6
5.3 Newco shall maintain and keep clear, detailed, complete, accurate and
separate records for a period of 3 years:
5.3.1 to enable any royalties on Net Sales that shall have accrued
hereunder to be determined; and
5.3.2 to enable any deductions made in the Net Sales calculation to
be determined.
5.4 All payments due hereunder shall be made in United States Dollars.
Payments due on Net Sales of any Product for each calendar quarter made
in a currency other than United States Dollars shall first be
calculated in the foreign currency and then converted to United States
Dollars on the basis of the exchange rate in effect on the last working
day for such quarter for the purchase of United States Dollars with
such foreign currency quoted in the Wall Street Journal (or comparable
publication if not quoted in the Wall Street Journal) with respect to
the currency of the country of origin of such payment, determined by
averaging the rates so quoted on each business day of such quarter.
5.5 If, at any time, legal restrictions in the Territory prevent the prompt
payment when due of royalties or any portion thereof, the Parties shall
meet to discuss suitable and reasonable alternative methods of paying
Acusphere the amount of such royalties. In the event that Newco is
prevented from making any payment under this Agreement by virtue of the
statutes, laws, codes or government regulations of the country from
which the payment is to be made, then such payments may be paid by
depositing them in the currency in which they accrue to Acusphere's
account in a bank acceptable to Acusphere in the country the currency
of which is involved or as otherwise agreed by the Parties.
5.6 Acusphere and Newco agree to co-operate in all respects necessary to
take advantage of any double taxation agreements or similar agreements
as may, from time to time, be available.
5.7 Any taxes payable by Acusphere on any payment made to Acusphere
pursuant to this Agreement shall be for the account of Acusphere. If so
required by applicable law, any payment made pursuant to this Agreement
shall be made by Newco after deduction of the appropriate withholding
tax, in which event the Parties shall co-operate to obtain the
appropriate tax clearance as soon as is practicable. On receipt of such
clearance, Newco shall forthwith arrange payment to Acusphere of the
amount so withheld.
6 RIGHT OF INSPECTION AND AUDIT
6.1 Once during each Financial Year, or more often not to exceed quarterly
as reasonably requested by Acusphere, Newco shall permit Acusphere or
its duly authorized representatives, upon reasonable notice and at any
reasonable time during normal business hours, to have access to inspect
and audit the accounts and records of Newco and any other book, record,
voucher, receipt or invoice relating to the calculation of the royalty
payments on Net Sales submitted to Acusphere.
7
Any such inspection of Newco's records shall be at the expense of
Acusphere, except that if any such inspection reveals a deficiency in
the amount of the royalty actually paid to Acusphere hereunder in any
Financial Year quarter of [CONFIDENTIAL TREATMENT REQUESTED]/*/ or more
of the amount of any royalty actually due to Acusphere hereunder, then
the expense of such inspection shall be borne solely by Newco. Any
amount of deficiency shall be paid promptly to Acusphere by Newco.
If such inspection reveals a surplus in the amount of royalties
actually paid to Acusphere by Newco, Elan shall reimburse Newco the
surplus within 15 days after determination.
6.2 In the event of any unresolved dispute regarding any alleged deficiency
or overpayment of royalty payments hereunder, the matter will be
referred to an independent firm of chartered accountants chosen by
agreement of Acusphere and Elan for a resolution of such dispute. Any
decision by the said firm of chartered accountants shall be binding on
the Parties.
7 REPRESENTATIONS AND WARRANTIES
7.1 Upon the selection of the Compound by the Management Committee in
accordance with Clause 2.3 of the JDOA Acusphere represents and
warrants to Newco and Elan as of such selection date with respect to
the Acusphere Intellectual Property as it relates to such Compound, as
follows:
7.1.1 Acusphere has the right to grant the Acusphere License;
7.1.2 There are no agreements between Acusphere and any third party
that conflict with the Acusphere License; and
7.1.3 to Acusphere's knowledge, there are no third party proceedings
pending or threatened against Acusphere in connection with the
Acusphere Patent Rights or the Acusphere Know-How in relation
to the Field.
7.2 In addition to any other indemnities provided for herein, Acusphere
shall indemnify and hold harmless Newco and its Affiliates and their
respective employees, agents, officers and directors from and against
any claims, losses, liabilities or damages (including reasonable
attorney's fees and expenses) incurred or sustained by Newco arising
out of or in connection with any:
7.2.1 breach of any representation, covenant, warranty or obligation
by Acusphere hereunder; or
7.2.2 act or omission on the part of Acusphere or any of its
respective employees, agents, officers and directors in the
performance of this Agreement.
8
7.3 In addition to any other indemnities provided for herein, Newco shall
indemnify and hold harmless Acusphere and its Affiliates and their
respective employees, agents, officers and directors from and against
any claims, losses, liabilities or damages (including reasonable
attorney's fees and expenses) incurred or sustained by Acusphere
arising out of or in connection with any:
7.3.1 breach of any representation, covenant, warranty or obligation
by Newco hereunder; or
7.3.2 act or omission on the part of Newco or any of its agents or
employees in the performance of this Agreement.
7.4 The Party seeking an indemnity shall:
7.4.1 fully and promptly notify the other Party of any claim or
proceeding, or threatened claim or proceeding;
7.4.2 permit the indemnifying Party to take full care and control of
such claim or proceeding;
7.4.3 co-operate in the investigation and defense of such claim or
proceeding;
7.4.4 not compromise or otherwise settle any such claim or
proceeding without the prior written consent of the other
Party, which consent shall not be unreasonably withheld
conditioned or delayed; and
7.4.5 take all reasonable steps to mitigate any loss or liability in
respect of any such claim or proceeding.
7.5 [CONFIDENTIAL TREATMENT REQUESTED]/*/ ACUSPHERE IS GRANTING THE
ACUSPHERE LICENSE HEREUNDER ON AN "AS IS" BASIS WITHOUT REPRESENTATION
OR WARRANTY WHETHER EXPRESS OR IMPLIED INCLUDING WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR INFRINGEMENT OF
THIRD PARTY RIGHTS, AND ALL SUCH WARRANTIES ARE EXPRESSLY DISCLAIMED.
7.6 NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS AGREEMENT, ACUSPHERE
AND NEWCO SHALL NOT BE LIABLE TO THE OTHER BY REASON OF ANY
REPRESENTATION OR WARRANTY, CONDITION OR OTHER TERM OR ANY DUTY OF
COMMON LAW, OR UNDER THE EXPRESS TERMS OF THIS AGREEMENT, FOR ANY
CONSEQUENTIAL, SPECIAL OR INCIDENTAL OR PUNITIVE LOSS OR DAMAGE
(WHETHER FOR LOSS OF PROFITS OR OTHERWISE) AND WHETHER OCCASIONED BY
THE NEGLIGENCE OF THE RESPECTIVE PARTIES, THEIR EMPLOYEES OR AGENTS OR
OTHERWISE.
9
8. TERM AND TERMINATION
8.1 The term of this Agreement shall commence as of the Effective Date and
shall, subject to the rights of termination outlined in this Clause 8,
expire on a Product-by-Product basis and on a country-by-country basis
on the last to occur of:
8.1.1 [CONFIDENTIAL TREATMENT REQUESTED]/*/ starting from the date
of the first commercial sale of the Product in the country
concerned; or
8.1.2 the date of expiration of the last to expire of the patents
included in the Elan Patents and the Elan Improvements and/or
the Acusphere Patents and the Acusphere Improvements
("XXX XXXX").
8.2 If either Party commits a Relevant Event, the other Party shall have,
in addition to all other legal and equitable rights and remedies
hereunder, the right to terminate this Agreement upon 30 days' prior
written notice to the defaulting Party.
8.3 For the purpose of this Clause 8, a "RELEVANT EVENT" is committed or
suffered by a Party if:
8.3.1 it commits a material breach of its obligations under this
Agreement or the JDOA and fails to cure it within 60 days of
being specifically required in writing to do so by the other
Party; provided, that if the breaching Party has proposed a
course of action to cure the breach and is acting in good
faith to cure same but has not cured the breach by the 60th
day, such period shall be extended by such period as is
reasonably necessary to permit the breach to be cured,
provided that such period shall not be extended by more than
90 days, unless otherwise agreed in writing by the Parties;
8.3.2 a distress, execution, sequestration or other process is
levied or enforced upon or sued out against a material part of
its property, which is not discharged or challenged within 30
days;
8.3.3 it is unable to pay its debts in the normal course of
business;
8.3.4 it ceases wholly or substantially to carry on its business,
otherwise than for the purpose of a reconstruction or
amalgamation, without the prior written consent of the other
Party (such consent not to be unreasonably withheld);
8.3.5 the appointment of a liquidator, receiver, administrator,
examiner, trustee or similar officer of such Party or over all
or substantially all of its assets under the law of any
applicable jurisdiction, including without limitation, the
United States of America, Bermuda or Ireland;
8.3.6 an application or petition for bankruptcy, corporate
re-organization, composition, administration, examination,
arrangement or any other procedure similar to any of the
foregoing under the law of any applicable jurisdiction,
including without limitation, the United States of America,
Bermuda or
10
Ireland, is filed, and is not discharged within 60 days, or a
Party applies for or consents to the appointment of a
receiver, administrator, examiner or similar officer of it or
of all or a material part of its assets, rights or revenues or
the assets and/or the business of a Party are for any reason
seized, confiscated or condemned.
8.4 Upon expiration or termination of the Agreement:
8.4.1. any sums that were due from Newco to Acusphere on Net Sales in
the Territory or in such particular country or countries in
the Territory (as the case may be) prior to the expiration or
termination of this Agreement as set forth herein shall be
paid in full within 60 days after the expiration or
termination of this Agreement for the Territory or for such
particular country or countries in the Territory (as the case
may be);
8.4.2 any provisions that expressly survive termination or
expiration of this Agreement, including without limitation
this Clause 8, shall remain in full force and effect;
8.4.3 all representations, warranties and indemnities shall insofar
as are appropriate remain in full force and effect;
8.4.4 the rights of inspection and audit set out in Clause 6 shall
continue in force for a period of one year; and
8.4.5 subject to Clause 8.4.7, all rights and licenses granted to
Newco pursuant to this Agreement and to the Acusphere
Intellectual Property pursuant to the JDOA (including the
rights of Newco pursuant to Clause 10 of the JDOA with respect
to patent prosecution and maintenance) shall cease for the
Territory or for such particular country or countries in the
Territory (as the case may be) and shall revert to or be
transferred to Acusphere, and Newco shall not thereafter use
in the Territory or in such particular country or countries in
the Territory (as the case may be) any rights covered by this
Agreement;
8.4.6 subject to such license, if any, granted by Newco to Acusphere
pursuant to the provisions of Clause 11.3 of the JDOA, all
rights to Newco Intellectual Property shall be transferred to
and jointly owned by Acusphere and Elan and may be exploited
by both Elan and Acusphere separately provided that nothing
hereunder shall grant, or be construed to grant, a license to
the other party under the Elan Intellectual Property or the
Acusphere Intellectual Property;
8.4.7 the rights of permitted third party sub-licensees in and to
the Acusphere Intellectual Property shall survive the
termination of the license and sublicense agreements granting
said intellectual property rights to Newco; and Newco, Elan
and Acusphere shall in good faith agree upon the form most
advantageous to Elan and Acusphere in which the rights of
Newco under any such licenses and sublicenses are to be held
(which form may include continuation of Newco solely as the
holder of such licenses or assignment of
11
such rights to a third party or parties, including an
assignment to both Elan and Acusphere).
Any sublicense agreement between Newco and such permitted
sublicensee shall permit an assignment of rights by Newco and
shall contain appropriate confidentiality provisions.
9 CONFIDENTIAL INFORMATION
9.1 The Parties agree that it will be necessary, from time to time, to
disclose to each other confidential and proprietary information,
including without limitation, inventions, works of authorship, trade
secrets, specifications, designs, data, know-how and other proprietary
information relating to the Field, the Products, processes, services
and business of the disclosing Party.
The foregoing shall be referred to collectively as "CONFIDENTIAL
INFORMATION".
9.2 Any Confidential Information disclosed by one Party to another Party
shall be used by the receiving Party exclusively for the purposes of
fulfilling the receiving Party's obligations under this Agreement and
the JDOA and for no other purpose.
9.3 Save as otherwise specifically provided herein, each Party shall
disclose Confidential Information of the other Party only to those
employees, representatives and agents requiring knowledge thereof in
connection with fulfilling the Party's obligations under this
Agreement. Each Party further agrees to inform all such employees,
representatives and agents of the confidentiality terms and provisions
of this Agreement and their duties hereunder and to obtain their
agreement hereto as a condition of receiving Confidential Information.
Each Party shall exercise the same standard of care as it would itself
exercise in relation to its own confidential information (but in no
event less than a reasonable standard of care) to protect and preserve
the proprietary and confidential nature of the Confidential Information
disclosed to it by the other Party. Each Party shall, upon request of
the other Party, return all documents and any copies thereof containing
Confidential Information belonging to, or disclosed by, such other
Party.
9.4 Any breach of this Clause 9 by any person informed by one of the
Parties is considered a breach by the Party itself.
9.5 Confidential Information shall not be deemed to include:
9.5.1 information that is in the public domain;
9.5.2 information which is made public through no breach of this
Agreement;
9.5.3 information which is independently developed by a Party as
evidenced by such Party's records;
12
9.5.4 information that becomes available to a Party on a
non-confidential basis, whether directly or indirectly, from a
source other than a Party, which source did not acquire this
information on a confidential basis; or
9.6 The receiving Party will be entitled to disclose Confidential
Information which the receiving Party is required to disclose pursuant
to:
9.6.1 a valid order of a court or other governmental body; or
9.6.2 any other requirement of law;
provided that if the receiving Party becomes legally required to
disclose any Confidential Information, the receiving Party shall give
the disclosing Party prompt notice of such fact so that the disclosing
Party may obtain a protective order or other appropriate remedy
concerning any such disclosure. The receiving Party shall fully
co-operate with the disclosing Party in connection with the disclosing
Party's efforts to obtain any such order or other remedy. If any such
order or other remedy does not fully preclude disclosure, the receiving
Party shall make such disclosure only to the extent that such
disclosure is legally required.
9.7 The provisions relating to confidentiality in this Clause 9 shall
remain in effect during the term of this Agreement, and for a period of
7 years following the expiration or earlier termination of this
Agreement.
9.8 The Parties agree that the obligations of this Clause 9 are necessary
and reasonable in order to protect the Parties' respective businesses,
and each Party agrees that monetary damages would be inadequate to
compensate a Party for any breach by the other Party of its covenants
and agreements set forth herein. Accordingly, the Parties agree that
any such violation or threatened violation shall cause irreparable
injury to a Party and that, in addition to any other remedies that may
be available, in law and equity or otherwise, each Party shall be
entitled to obtain injunctive relief against the threatened breach of
the provisions of this Clause 9, or a continuation of any such breach
by the other Party, specific performance and other equitable relief to
redress such breach together with its damages and reasonable counsel
fees and expenses to enforce its rights hereunder, without the
necessity of proving actual or express damages.
10 GOVERNING LAW AND JURISDICTION
10.1 This Agreement shall be governed by and construed in accordance with
the laws of the State of New York.
10.2 The Parties will attempt in good faith to resolve any dispute arising
out of or relating to this Agreement promptly by negotiation between
executives of the Parties. In the event that such negotiations do not
result in a mutually acceptable resolution, the Parties agree to
consider other dispute resolution mechanisms including mediation.
13
In the event that the Parties fail to agree on a mutually acceptable
dispute resolution mechanism, any such dispute shall be finally settled
by the courts of competent jurisdiction. For the purposes of this
Agreement the parties submit to the non-exclusive jurisdiction of the
courts of the State of New York.
11 IMPOSSIBILITY OF PERFORMANCE - FORCE MAJEURE
Neither Acusphere nor Newco shall be liable for delay in the
performance of any of its obligations hereunder if such delay results
from causes beyond its reasonable control, including, without
limitation, acts of God, fires, strikes, acts of war, intervention of a
government authority, but any such delay or failure shall be remedied
by such Party as soon as practicable.
12 ASSIGNMENT
This Agreement may not be assigned by either Party without the prior
written consent of the other, save that either Party may assign this
Agreement to its Affiliates or subsidiaries without such prior written
consent; provided that such assignment does not have any adverse tax
consequences on the other Party.
13 NOTICES
13.1 Any notice to be given under this Agreement shall be sent in writing in
English by registered airmail or telefaxed to the following addresses:
If to Newco at:
Xxxxxxxxx Xxxxx,
0 Xxxxxx Xx.,
Xxxxxxxx,
Xxxxxxx
Xxxxxxxxx: Secretary
Telephone: 000 000 0000
Fax: 000 000 0000
with a copy to Elan at:
Elan Corporation, plc
000 Xx. Xxxxx Xxxxx
Xxxxxx, Xxxxxx XX00
Bermuda
Attention: President
Telephone: 000-000-0000
Fax: 000-000-0000
14
If to Acusphere at:
00 Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Attn: Chief Executive Officer
Telephone 000-000-0000
Fax: 000-000-0000
with a copy to:
Xxxxx, Xxxxxxx & Xxxxxxxxx, LLP
000 Xxxx Xxxxxx
Xxxxxx, XX 00000
Attention: Xxxxxxxx X. Xxxxxxxxxx
Telephone: 000-000-0000
Fax: 000-000-0000
If to Elan at:
Elan Corporation, plc
000 Xx. Xxxxx Xxxxx
Xxxxxx, Xxxxxx XX00
Bermuda
Attention: President
Telephone: 000-000-0000
Fax: 000-000-0000
or to such other address(es) and telefax numbers as may from time to
time be notified by either Party to the other hereunder.
13.2 Any notice sent by mail shall be deemed to have been delivered within 7
working days after dispatch and any notice sent by telex or telefax
shall be deemed to have been delivered within 24 hours of the time of
the dispatch. Notice of change of address shall be effective upon
receipt.
14 MISCELLANEOUS
14.1 WAIVER:
No waiver of any right under this Agreement shall be deemed effective
unless contained in a written document signed by the Party charged with
such waiver, and no waiver of any breach or failure to perform shall be
deemed to be a waiver of any other breach or failure to perform or of
any other right arising under this Agreement.
15
14.2 SEVERABILITY:
If any provision in this Agreement is agreed by the Parties to be, or
is deemed to be, or becomes invalid, illegal, void or unenforceable
under any law that is applicable hereto:
14.2.1 such provision will be deemed amended to conform to applicable
laws so as to be valid and enforceable; or
14.2.2 if it cannot be so amended without materially altering the
intention of the Parties, it will be deleted, with effect from
the date of such agreement or such earlier date as the Parties
may agree, and the validity, legality and enforceability of
the remaining provisions of this Agreement shall not be
impaired or affected in any way.
14.3 FURTHER ASSURANCES:
At the request of any of the Parties, the other Party or Parties shall
(and shall use reasonable efforts to procure that any other necessary
parties shall) execute and perform all such documents, acts and things
as may reasonably be required subsequent to the signing of this
Agreement for assuring to or vesting in the requesting Party the full
benefit of the terms hereof.
14.4 SUCCESSORS:
This Agreement shall be binding upon and enure to the benefit of the
Parties hereto, their successors and permitted assigns.
14.5 NO EFFECT ON OTHER AGREEMENTS/CONFLICT:
No provision of this Agreement shall be construed so as to negate,
modify or affect in any way the provisions of any other agreement
between the Parties unless specifically referred to, and solely to the
extent provided herein.
In the event of a conflict between the provisions of this Agreement and
the provisions of the JDOA, the terms of the JDOA shall prevail unless
this Agreement specifically provides otherwise.
14.6 AMENDMENTS:
No amendment, modification or addition hereto shall be effective or
binding on any Party unless set forth in writing and executed by a duly
authorized representative of each Party.
14.7 COUNTERPARTS:
This Agreement may be executed in any number of counterparts, each of
which when so executed shall be deemed to be an original and all of
which when taken together shall constitute this Agreement.
16
14.8 GOOD FAITH:
Each Party undertakes to do all things reasonably within its power
which are necessary or desirable to give effect to the spirit and
intent of this Agreement.
14.9 NO RELIANCE:
Each Party hereby acknowledges that in entering into this Agreement it
has not relied on any representation or warranty save as expressly set
out herein or in any document referred to herein.
14.10 RELATIONSHIP OF THE PARTIES:
Nothing contained in this Agreement is intended or is to be construed
to constitute Acusphere and Newco as partners, or Acusphere as an
employee of Newco, or Newco as an employee of Acusphere.
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.
17
IN WITNESS WHEREOF the Parties hereto have executed this Agreement.
SIGNED
BY: /s/ illegible signature
------------------------------------------------
For and on behalf of ACUSPHERE NEWCO, LTD.
SIGNED
BY: /s/ Xxxxxx X. Xxxxx
------------------------------------------------
For and behalf of ACUSPHERE, INC.
AGREED TO AND ACCEPTED:
SIGNED
BY: /s/ illegible signature
------------------------------------------------
for and on behalf of ELAN CORPORATION, PLC,
ACTING THROUGH ITS DIVISION ELAN PHARMACEUTICAL
TECHNOLOGIES
SIGNED
BY: /s/ illegible signature
------------------------------------------------
for and behalf of ELAN PHARMA
INTERNATIONAL LIMITED
18
SCHEDULE 1
REPRESENTATIVE ACUSPHERE PATENTS
[CONFIDENTIAL TREATMENT REQUESTED]/*/
