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EXHIBIT 10.48
Immunogen, Inc. has omitted from this Exhibit 10.48 portions of the
Agreement for which Immunogen, Inc. has requested confidential treatment from
the Securities and Exchange Commission. The portions of the Agreement for which
confidential treatment has been requested are marked with X's in brackets and
such confidential portions have been filed separately with the Securities and
Exchange Commission.
[Execution Copy]
LICENSE AGREEMENT
This License Agreement ("Agreement") is made effective as of June 1, 1998
("Effective Date") by and between PHARMACIA & UPJOHN AB, a company organized and
existing under the laws of Sweden, having an address of Xxxxxxxxxxxxxxx 000,
XX-00000 Xxxxxxxxx, Xxxxxx ("P&U"), and IMMUNOGEN, INC., a corporation organized
and existing under the laws of the Commonwealth of Massachusetts, having an
address of 000 Xxxxxxxxxx Xxxxxxx, Xxxxxxx, XX 00000, XXX ("IMMUNOGEN").
IMMUNOGEN and P&U are each hereafter referred to individually as a "Party" and
together as the "Parties".
WHEREAS, the Parties have previously entered into two research agreements
dated as of December 8, 1992 and December 10, 1993 and an Ancillary Supply
Agreement dated as of May 24, 1994;
WHEREAS, P&U is the owner of proprietary rights in technical information,
trade secrets and know-how relating to the monoclonal antibody designated as
C242 ("C242"), including U.S. Patent No. 5,552,293 and the other patents and
patent applications listed on SCHEDULE A attached hereto (the "P&U Patents");
WHEREAS, P&U, jointly with Zeneca Limited, is the owner of proprietary
rights in certain patents and patent applications relating to conjugates between
any monoclonal antibody binding to the same epitope as C242 and any toxin, which
patents and patent applications are listed on SCHEDULE B attached hereto (the
"P&U/ZENECA Patents");
WHEREAS, IMMUNOGEN has rights in proprietary technology relating to
products involving maytansinoid drug ("May") linked to monoclonal antibodies,
and technical information, trade secrets and know-how relating to the foregoing;
WHEREAS, IMMUNOGEN wishes to obtain, and P&U wishes to grant, a license to
such proprietary rights and patents or patent applications owned by P&U or owned
jointly by
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P&U and Zeneca Limited as set forth in Schedules A and B hereto in order to
develop and market a conjugate between C242 and May ("C242-May"); and
WHEREAS, the Parties have executed a Letter Agreement dated March 5, 1998
setting forth the terms of such license, which the Parties have incorporated
into the definitive agreement set forth herein.
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, and for other good and valuable consideration, the receipt and
adequacy of which is hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the terms
defined in this Section 1 shall have the meanings specified.
1.1 "AFFILIATE" shall mean any corporation, firm, limited liability
company, partnership or other entity which directly or indirectly controls or is
controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of fifty
percent (50%) or more of the shares of stock entitled to vote for the election
of directors, in the case of a corporation, or fifty percent (50%) or more of
the equity interests in the case of any other type of legal entity, status as a
general partner in any partnership, or any other arrangement whereby a Party
controls or has the right to control the Board of Directors or equivalent
governing body of a corporation or other entity.
1.2 "FIELD" shall mean the treatment of human disease.
1.3 "LICENSED PATENT RIGHTS" means the rights and interests in and to those
issued patents and pending patent applications listed on SCHEDULES A AND B
hereto, and shall include, without limitation, all continuations,
continuations-in-part (but only to the extent claims are directed to subject
matter specifically described in the patents and patent applications listed on
SCHEDULES A AND B), divisions and renewals thereof, all letters patent granted
thereon, and all
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reissues, reexaminations, foreign counterparts and extensions thereof, whether
owned solely by P&U or jointly by P&U and Zeneca Limited, now or in the future.
1.4 "LICENSED PRODUCT" shall mean C242-May.
1.5 "NET SALES" shall mean the gross invoiced sales price charged by
IMMUNOGEN or its Affiliates for the sale of Licensed Product in arm's length
sales to unrelated third parties, less the following amounts incurred by
IMMUNOGEN or its Affiliates with respect to such sale of Licensed Product:
(a) trade, cash and quantity discounts or rebates actually allowed or
taken;
(b) credits or allowances given or made for rejection of or return of,
and for uncollectible amounts on, previously sold Licensed Products or
for retroactive price reductions;
(c) charges for insurance, freight, and other transportation costs
directly related to the delivery of Licensed Product;
(d) sales, transfer and other excise taxes and customs duties levied
on the sale or delivery of Licensed Product (including any tax such as
a value added or similar tax or government charge), other than
franchise or income tax of any kind whatsoever.
Net Sales of Licensed Products shall not include sales or transfers between
IMMUNOGEN and its Affiliates, unless the Licensed Product is consumed by the
Affiliate.
1.6 "SUBLICENSEE" shall mean any non-Affiliate third party sublicensed by
IMMUNOGEN under the license granted to IMMUNOGEN hereunder, to develop, make,
have made, use, have used, offer to sell, sell, have sold, lease, import or have
imported any Licensed Product.
1.7 "TERM" shall have the meaning set forth in Section 6.1.
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1.8 "TERRITORY" shall mean the world.
2. LICENSE GRANT
2.1. LICENSE GRANT.
(a) P&U hereby grants to IMMUNOGEN (i) an exclusive license in the
Territory, under the Licensed Patent Rights which are P&U Patents, as listed on
SCHEDULE A hereto, and (ii) a non-exclusive license in the Territory under the
Licensed Patent Rights which are P&U/ZENECA Patents, as listed on SCHEDULE B
hereto, in each case to develop, have developed, make, have made, use, have
used, sell, have sold, offer for sale, lease, import and have imported Licensed
Products useful in the Field. The license granted pursuant to Section 2.1(a)(ii)
above, with respect to any rights of Zeneca Limited in the P&U/ZENECA Patents,
shall be subject to the written approval of Zeneca Limited as indicated below,
and if such approval is not obtained, shall apply only to the rights in the
United States of P&U in and to such P&U/ZENECA Patents.
(b) No rights are granted hereunder to develop or commercialize any
products or processes or to utilize any intellectual property rights of P&U or
Zeneca Limited other than as expressly provided above.
2.2 PROGRESS REPORTS. On or before February 15 of each year, IMMUNOGEN
shall provide a written summary to P&U of progress made in the development and
commercialization of Licensed Product in the previous calendar year.
2.3 EXCHANGE OF SAFETY INFORMATION. Each Party shall promptly advise the
other Party if it becomes aware of any concerns regarding the safety of C242
when administered to humans.
2.4 SUBLICENSES. IMMUNOGEN shall have the right to grant sublicenses to all
or any portion of its rights under any license granted herein to any Affiliate
or Sublicensee, subject to the prior written approval of P&U, in the case of a
sublicense under the P&U Patents, and the prior written approval of P&U and
Zeneca Limited, in the case of a sublicense under the P&U/ZENECA Patents, such
approval to not be unreasonably withheld and to be given within
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thirty (30) days of any request therefor; provided, however, that in any event
IMMUNOGEN shall remain obligated to ensure compliance with the terms of this
Agreement and payment of royalty and milestone obligations as set forth in
Article 3. Any such sublicense will impose obligations, responsibilities and
standards upon the Sublicensee not less than those imposed on IMMUNOGEN by this
Agreement. A copy of this Agreement shall be attached to any such sublicense
agreement.
3. CONSIDERATION
3.1 LICENSE FEES.
IMMUNOGEN shall pay to P&U a license fee of [XXXXXX]. Such amount shall be
due within ninety (90) days of the date of execution of this Agreement.
3.2 MILESTONE PAYMENTS. IMMUNOGEN shall make the following milestone
payments to P&U upon the first achievement of each indicated event:
(a) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days
following the date IMMUNOGEN or an Affiliate or Sublicensee [XXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXX] and
(b) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days
following the date IMMUNOGEN or an Affiliate or Sublicensee [XXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
3.3 ROYALTIES. IMMUNOGEN shall pay to P&U a royalty of [XXXXXXXXXXXXXXX] of
Net Sales of Licensed Products sold by IMMUNOGEN or its Affiliates.
3.4 SUBLICENSES. In the event that IMMUNOGEN grants a sublicense to a
Sublicensee under Licensed Patent Rights to commercialize any Licensed Product,
IMMUNOGEN shall pay to P&U [XXXXXXXXXXXXXXX] of any earned royalties received by
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IMMUNOGEN or its Affiliates from such Sublicensee with respect to the sale by
such Sublicensee of Licensed Products.
3.5 COMPETING PRODUCTS. Notwithstanding the foregoing Sections 3.3 and 3.4,
in the event that, in any country where IMMUNOGEN has the right hereunder to use
or sell Licensed Product, a third party commences the sale of a conjugate drug
binding to the same epitope with the same CDR as C242 (a "Competitive Conjugate
Drug"), and (i) P&U does not own or control any patent rights which could be
enforced to prevent such sale; or (ii) if P&U does own or control patent rights
which could be enforced to prevent such sale and P&U has been unsuccessful for a
period of twelve months from the date of notice of any such event from IMMUNOGEN
in preventing any such sale or entering into a license agreement with such third
party, IMMUNOGEN shall thereafter not be obligated to pay further royalties
pursuant to Sections 3.3 or 3.4 hereof on sales of Licensed Product in such
country for so long as any such sales of a Competitive Conjugate Drug in such
country continue.
3.6 PAYMENT TERMS.
(a) Royalty payments shall be made to P&U in United States Dollars on a
quarterly basis within sixty (60) days following the end of each calendar
quarter for which royalties are due. Each royalty payment shall be accompanied
by a report summarizing the total Net Sales and receipt of royalties from
Sublicensees during the relevant three-month period and the calculation of
royalties, if any, due thereon pursuant to this Article 3. Such reports shall
include at least the following information:
(i) total xxxxxxxx for Licensed Products sold by IMMUNOGEN and its
Affiliates;
(ii) allowable deductions hereunder;
(iii) royalties due pursuant to Section 3.4; and
(iv) total royalties due.
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(b) All royalties shall be payable in full in United States Dollars by wire
transfer to a bank designated in writing by P&U, regardless of the countries in
which sales are made. For the purpose of computing Net Sales for which a
currency other than United States Dollars is received, such currency shall be
converted into United States dollars at the exchange rate for buying United
States Dollars set forth in THE WALL STREET JOURNAL for the last business day of
the calendar quarter.
3.7 ROYALTY TERM. IMMUNOGEN shall pay royalties with respect to each
Licensed Product on a country-by-country basis until (i) the expiration of the
last to expire or to be revoked of any Licensed Patent Right covering such
Licensed Product in such country, or (ii) eight (8) years from the first
commercial sale of such Licensed Product in such country, whichever is later.
Following such period, IMMUNOGEN shall have a fully paid-up, irrevocable license
in such country to make, have made, use, have used, sell, have sold, offer for
sale, lease, import and have imported such Licensed Product in such country.
3.8 RECORDS RETENTION. AUDITS. IMMUNOGEN and its Affiliates shall keep for
three (3) years from the date of each payment of royalties complete and accurate
records of sales by IMMUNOGEN and its Affiliates of each Licensed Product and
receipts by IMMUNOGEN or its Affiliates of royalties from Sublicensees in
sufficient detail to allow the accruing royalties hereunder to be determined
accurately. P&U shall have the right for a period of three (3) years after
receiving any report or statement with respect to royalties due and payable to
appoint an independent certified public accountant reasonably acceptable to
IMMUNOGEN, at P&U's expense, to inspect the relevant records of IMMUNOGEN and
its Affiliates to verify such report or statement. IMMUNOGEN and its Affiliates
shall each make its records available for inspection by such independent
certified public accountant during regular business hours at such place or
places where such records are customarily kept, upon reasonable notice from P&U,
solely to verify the accuracy of the reports and payments. Such inspection right
shall not be exercised more than once in any calendar year nor more than once
with respect to sales of any Licensed Product in any given payment period. P&U
agrees to hold in strict confidence all information concerning royalty payments
and reports, and all information learned in the course of any audit or
inspection, except to the extent necessary for P&U to reveal such information in
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order to enforce its rights under this Agreement or if disclosure is required by
law, regulation or judicial order. The results of each inspection, if any, shall
be binding on both Parties.
4. CONFIDENTIAL INFORMATION
4.1 CONFIDENTIAL INFORMATION. During the term of this Agreement, each Party
may disclose to the other proprietary technical and business information
(collectively, "Confidential Information"). Confidential Information of a Party
shall be deemed to include information of any third party confidentially
obtained by such Party from such third party and permitted to be disclosed to
the other Party hereunder. For a period of ten (10) years after the receipt of
any such Confidential Information, the receiving Party shall keep confidential
all such Confidential Information of the other Party and will not disclose such
Confidential Information of the other Party to third parties by publication or
otherwise, except that confidential disclosures made in connection with the
exercise of rights granted hereunder shall be permitted. Each Party further
agrees not to use Confidential Information of the other Party for any purpose
other than exercising any rights granted to it or reserved by it hereunder. Each
Party shall limit the access to the Confidential Information to its employees
who have a need to know such Confidential Information. Each Party will ensure
that employees to whom Confidential Information is disclosed have agreed in
writing to protect the confidential nature of such Confidential Information and
that such agreements are strictly observed.
Notwithstanding the foregoing, it is understood and agreed that the
receiving Party's obligations of confidentiality and non-use herein shall not
apply to any information which:
(a) is, at the time of disclosure by the disclosing Party hereunder,
or thereafter becomes, a part of the public domain, or publicly known
or available, through no fault, act, omission, or negligence of the
receiving Party or any of its Affiliates, provided that Confidential
Information shall not be deemed to have entered the public domain by
reason of its having been filed with any regulatory authority;
(b) was otherwise in the receiving Party's lawful possession prior to
its receipt from the disclosing Party;
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(c) is lawfully disclosed to the receiving Party or any of its
Affiliates on a non-confidential basis by a third party who is not in
violation of an obligation of confidentiality to the disclosing Party
relative to such information; or
(d) is required to be disclosed pursuant to law, provided, however,
that the receiving Party shall give reasonable notice to the
disclosing Party of any such requirement.
Information disclosed other than in written or electronic form shall be
subject to the terms of this Section 4.1 only if confirmed in writing to other
Party within thirty (30) days of initial disclosure and specifying with
particularity that Confidential Information disclosed other than in written form
which is subject to the provisions of this Section 4.1.
5. PROVISIONS CONCERNING THE PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
5.1 PATENT PROSECUTION AND MAINTENANCE.
(a) During the Term of this Agreement, P&U shall prosecute, obtain and
maintain the Licensed Patent Rights listed on SCHEDULE A hereto at its sole
expense. P&U agrees that any such prosecution and maintenance shall be conducted
with reasonable diligence.
(b) In the event that P&U desires to discontinue the prosecution or
maintenance of any Licensed Patent Right(s), P&U shall be permitted to elect to
do so provided that it gives at least sixty (60) days prior notice of any such
intention to IMMUNOGEN. Such notice shall specifically identify the patent
application(s) and/or patent(s) for which P&U wishes to make such election.
Following the receipt of such notice, IMMUNOGEN shall have the right to
prosecute, obtain and maintain the patent application(s) and patent(s)
identified in the notice, at its sole expense and for its sole benefit, and upon
any such assumption of responsibility by IMMUNOGEN, such Licensed Patent
Right(s) shall be removed from operation of this Agreement.
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(c) The Parties shall mutually agree before permitting any patent
application or patent within Licensed Patent Rights licensed hereunder to lapse
as well as before authorizing any amendment to any patent application or patent
within such Licensed Patent Rights that would irrevocably limit the lawful scope
of the Licensed Patent Rights as they pertain to the subject matter of this
Agreement.
5.2 NOTICE OF INFRINGEMENT. If, during the Term of this Agreement, either
Party learns of any infringement or threatened infringement by a third party of
the patents within Licensed Patent Rights in the Field, such Party shall
promptly notify the other Party and shall provide such other Party with
available evidence of such infringement. The Parties shall consult to determine
the course of action, if any, to be taken in such circumstances.
5.3 INFRINGEMENT. P&U shall have the right (but not the obligation), at its
own expense, to bring suit against any actual or suspected infringement of the
Licensed Patent Rights and to retain any recovery therefrom. If P&U declines to
take action against any such actual or suspected infringement, then P&U may
authorize IMMUNOGEN to take such action at its own expense and to keep any
damages which might be awarded, such authorization to not be unreasonably
withheld.
5.4 COOPERATION. Each Party shall execute all papers and perform such other
acts as may be reasonably required to maintain any infringement suit brought in
accordance with Section 5.3 above (including giving legal consent for bringing
such suit, and agreeing to be named as a plaintiff or otherwise joined in such
suit) at the expense of the Party bringing suit, and at its option and expense,
may be represented in such suit by counsel of its choice.
6. TERM AND TERMINATION
6.1. TERMINATION PROVISIONS.
(a) This Agreement and the licenses granted herein may be terminated by P&U
upon any breach by IMMUNOGEN of any material obligation or condition, effective
fifteen (15) days after giving written notice to IMMUNOGEN of such termination
in the case of a payment breach and sixty (60) days after giving written notice
to IMMUNOGEN of such termination in the case
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of any other breach, which notice shall describe such breach in reasonable
detail. The foregoing notwithstanding, if the default or breach is cured or
shown to be non-existent within the aforesaid fifteen (15) or sixty (60) day
period, the notice shall be deemed automatically withdrawn and of no effect.
(b) If either Party files for protection under bankruptcy laws, makes an
assignment for the benefit of creditors, appoints or suffers appointment of a
receiver or trustee over its property, files a petition under any bankruptcy or
insolvency act or has any such petition filed against it which is not discharged
within sixty (60) days of the filing thereof, then the other party may terminate
this Agreement by notice to such Party.
6.2 EFFECT OF TERMINATION.
(a) Upon termination of this Agreement under Section 6.1, IMMUNOGEN shall
cease sales of Licensed Products and all rights included in the relevant
licenses granted by P&U to IMMUNOGEN hereunder shall immediately and
automatically revert to P&U; provided, however, that IMMUNOGEN, with the consent
of P&U, shall be entitled to complete the manufacture of any Licensed Product
then in progress and to sell any such completed Licensed Product, along with any
Licensed Product then in inventory, subject to payment of royalties pursuant to
Article 3. Without limiting the generality of the foregoing, all relevant
licenses and sublicenses granted by P&U to IMMUNOGEN hereunder shall terminate
automatically and IMMUNOGEN shall promptly transfer to P&U all related
documents, materials and records in its possession without retaining any copies
thereof.
(b) IMMUNOGEN shall have no obligation to make any milestone or royalty
payment to P&U that has not accrued prior to the effective date of such
termination, but shall remain liable for all obligations accruing prior to
termination, and all obligations relating to sales of inventory as provided in
Section 6.2(a) above.
6.3 TERMINATION BY IMMUNOGEN. IMMUNOGEN may terminate this Agreement, and
the rights and obligations hereunder in its sole discretion at any time by
giving written notice thereof to P&U. Such termination shall be effective ninety
(90) days following the
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date such notice is received by P&U and shall have all consequences as set forth
in Section 6.2 above as if this Agreement had been terminated pursuant to
Section 6.1(a).
6.4 TERMINATION BY P&U. In the event that any third party entity which is
reasonably and in good faith considered by P&U as a major competitor to P&U in
the oncology field becomes the record and beneficial owner of more than fifty
(50) percent of the voting stock of IMMUNOGEN (a "Change of Control"), P&U may,
by written notice to IMMUNOGEN, terminate any license and rights granted under
this Agreement but only to the extent that such rights and licenses have not
been further sublicensed by IMMUNOGEN to an approved Sublicensee in accordance
with the provisions of Section 2.4. Any such termination shall be effective
thirty (30) days after receipt of any such notice. In the event of any such
Change of Control, each approved Sublicensee shall, as a condition of the
survival of its sublicense rights, be required to enter into a written agreement
with P&U pursuant to which it agrees to perform directly any obligation that
IMMUNOGEN is obligated to perform hereunder with respect to its sublicense,
including without limitation, (i) the making of any milestone payment due under
Section 3.2 as a result of such Sublicensee's activities, (ii) the payment to
P&U of 10% of any earned royalties due to IMMUNOGEN or its affiliate from such
Sublicensee, which sum shall in no event be less than 1% of such Sublicensee's
Net Sales of Licensed Product, and (iii) the indemnification of P&U with respect
to the actions of such Sublicensee in accordance with Section 7.5.
Notwithstanding the foregoing, in no event shall P&U be required to assume any
additional obligations to those set forth herein pursuant to any such written
agreement with a Sublicensee.
6.5 REMEDIES. If either Party shall fail to perform or observe or otherwise
breaches any of its material obligations under this Agreement, in addition to
any right to terminate this Agreement, the non-defaulting Party may elect to
obtain other relief and remedies available under law.
6.6 SURVIVING PROVISIONS. Notwithstanding any provision herein to the
contrary, the rights and obligations set forth in Articles 3 and 4, and Sections
5.4, 6.2, 6.5, 6.6, 7.3, 7.4, 7.5, 7.6 and 7.18 hereof shall survive the
expiration or termination of the Term of this Agreement.
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7. MISCELLANEOUS
7.1 P&U REPRESENTATIONS. P&U represents and warrants that: (a) the
execution and delivery of this Agreement and the performance of the transactions
contemplated hereby have been duly authorized by the appropriate P&U management;
(b) P&U is under no obligation which is inconsistent with this Agreement; and
(c) P&U has the full right and legal capacity to grant the rights to IMMUNOGEN
pursuant to Article 2 above, subject to the consent referenced therein, without
violating the rights of any third party.
7.2 IMMUNOGEN REPRESENTATIONS. IMMUNOGEN represents and warrants that: (a)
the execution and delivery of this Agreement and the performance of the
transactions contemplated hereby have been duly authorized by all appropriate
IMMUNOGEN corporate action; and (b) IMMUNOGEN is under no obligation which is
inconsistent with this Agreement.
7.3 NO WARRANTIES. Nothing in this Agreement is or shall be construed as:
(i) a warranty or representation by P&U as to the validity
or scope of any application or patent within the Licensed Patent
Rights;
(ii) a warranty or representation that anything made, used,
sold or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties.
7.4 LIABILITY. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR
OTHERWISE, NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL
OR EQUITABLE THEORY FOR (I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES OR LOST PROFITS OR (II) COST OF PROCUREMENT OF SUBSTITUTE GOODS,
TECHNOLOGY OR SERVICES.
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7.5 INDEMNIFICATION.
(a) IMMUNOGEN shall indemnify, defend and hold harmless P&U, Zeneca
Limited, their Affiliates and their respective directors, officers, employees,
and agents and their respective successors, heirs and assigns (the "Licensor
Indemnitees"), against any liability, damage, loss or expense (including
reasonable attorneys' fees and expenses of litigation) incurred by or imposed
upon the Licensor Indemnitees, or any of them, in connection with any claims,
suits, actions, demands or judgments of third parties, including without
limitation personal injury and product liability matters (except in cases where
such claims, suits, actions, demands or judgments result from a willful material
breach of this Agreement, gross negligence or willful misconduct on the part of
P&U or Zeneca Limited) arising out of or relating to any actions of IMMUNOGEN or
any Affiliate, sublicensee, distributor or agent of IMMUNOGEN under this
Agreement.
(b) The Licensor Indemnitees shall promptly notify IMMUNOGEN of any action
or claim for which they are to be indemnified hereunder and IMMUNOGEN shall have
the sole right to defend, settle or compromise any such action or claim at
IMMUNOGEN's sole cost and expense.
7.6 NOTICES. Any notices, requests, deliveries, approvals or consents
required or permitted to be given under this Agreement to IMMUNOGEN or P&U shall
be in writing and shall be personally delivered or sent by telecopy (with
written confirmation to follow via first class mail), overnight courier
providing evidence of receipt or certified mail, return receipt requested,
postage prepaid, in each case to the respective address specified below (or to
such address as may be specified in writing to the other Party hereto):
P&U: Pharmacia & Upjohn AB
Xxxxxxxxxxxxxxx 000
XX - 00000 Xxxxxxxxx
XXXXXX
Attn: Head of the Legal Department
Telecopy: _______________
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with a copy to: Pharmacia & Upjohn S.p.A.
Xxx Xxxxxx Xxxx, 0.0
00000 Xxxxxx
XXXXX
Attn: Head of the Legal Department
Telecopy: 00-0-0000-0000
IMMUNOGEN: ImmunoGen, Inc.
000 Xxxxxxxxxx Xxxxxxx
Xxxxxxx, XX 00000
XXX
Attn: Chief Executive Officer
Telecopy: (000) 000-0000
with a copy to: Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
XXX
Attn: Xxxxxxx X. Xxxxxx, Esq.
Telecopy: (000) 000-0000
Such notices shall be deemed to have been sufficiently given on: (a) the
date sent if delivered in person or transmitted by telecopy, (b) the next
business day after dispatch in the case of overnight courier or (c) five (5)
business days after deposit in the U.S. mail in the case of certified mail.
7.7 GOVERNING LAW. This Agreement will be construed, interpreted and
applied in accordance with the substantive laws of Sweden.
7.8 LIMITATIONS. Except as set forth elsewhere in this Agreement, neither
Party grants to the other Party any right or license to any of its intellectual
property.
7.9 ENTIRE AGREEMENT. This is the entire Agreement between the Parties with
respect to the subject matter herein. No modification shall be effective unless
in writing and signed by the Parties.
7.10 WAIVER. The terms or conditions of this Agreement may be waived only
by a written instrument executed by the Party waiving compliance. The failure of
either Party at any
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time or times to require performance of any provision hereof shall in no manner
affect its rights at a later time to enforce the same. No waiver by either Party
of any condition or term shall be deemed as a continuing waiver of such
condition or term or of another condition or term.
7.11 HEADINGS. Section and subsection headings are inserted for convenience
of reference only and do not form part of this Agreement.
7.12 ASSIGNMENT. This Agreement may not be assigned by either Party without
the consent of the other, which consent shall not be unreasonably withheld,
except that P&U may, without such consent, assign or transfer this Agreement and
the rights, obligations and interests of P&U hereunder, in whole or in part, to
any successor or affiliated organization or company.
7.13 FURTHER ASSURANCES. Each Party agrees to execute, acknowledge and
deliver such further instructions, and to do all such other acts, as may be
necessary or appropriate in order to carry our the purposes and intent of this
Agreement.
7.14 FORCE MAJEURE. Neither Party shall be liable for failure of or delay
in performing obligations set forth in this Agreement, and neither shall be
deemed in breach of its obligations, if such failure or delay is due to natural
disasters or any causes beyond the reasonable control of such Party. In event of
such force majeure, the Party affected thereby shall use reasonable efforts to
cure or overcome the same and resume performance of its obligations hereunder.
7.15 CONSTRUCTION. The Parties hereto acknowledge and agree that: (i) each
Party and its counsel reviewed and negotiated the terms and provisions of this
Agreement and have contributed to its revision; (ii) the rule of construction to
the effect that any ambiguities are resolved against the drafting Party shall
not be employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties hereto
and not in a favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
7.16 SEVERABILITY. If any provision(s) of this Agreement are or become
invalid, are ruled illegal by any court of competent jurisdiction or are deemed
unenforceable under then current applicable law from time to time in effect
during the Term hereof, it is the intention of
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the Parties that the remainder of this Agreement shall not be affected thereby
provided that a Party's rights under this Agreement are not materially affected.
The Parties hereto covenant and agree to renegotiate any such term, covenant or
application thereof in good faith in order to provide a reasonably acceptable
alternative to the term, covenant or condition of this Agreement or the
application thereof that is invalid, illegal or unenforceable, it being the
intent of the Parties that the basic purposes of this Agreement are to be
effectuated.
7.17 STATUS. Nothing in this Agreement is intended or shall be deemed to
constitute a partner, agency, employer-employee, or joint venture relationship
between the Parties.
7.18 ARBITRATION. In the event of any dispute, difference or question
arising between the parties in connection with this Agreement, the construction
hereof, or the rights, duties or liabilities of either party hereunder, then
such dispute shall be resolved by binding arbitration in accordance with the
Rules of Conciliation and Arbitration of the International Chamber of Commerce.
The arbitration panel shall be composed of three arbitrators, appointed in
accordance with such Rules. The decision of the arbitrators shall be by majority
vote and, at the request of either party, the arbitrators shall issue a written
opinion of findings of fact and conclusions of law. Costs shall be borne as
determined by the arbitrators. Unless the parties to the arbitration shall
otherwise agree to a place of arbitration, the place of arbitration shall be at
Stockholm, Sweden. The arbitration award shall be final and binding upon the
parties to such arbitration and may be entered in any court having jurisdiction.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representative in two (2) originals.
IMMUNOGEN, INC. PHARMACIA & UPJOHN AB
By: /s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxxx Xxxx/H. Sievertsson
------------------------------- ------------------------------------
Title: CEO Title: /s/ VP, Legal Affairs VP, GLOBAL
---------------------------- BUSINESS DEV.
---------------------------------
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JOINDER OF ZENECA LIMITED
Zeneca Limited hereby consents to the grant of the license under the
P&U/ZENECA Patents to IMMUNOGEN as set forth in Section 2.1(a) hereof and joins
in such grant. Except as set forth in the previous sentence and in Sections
2.1(b), 2.4, and 7.5 hereof, Zeneca Limited has no rights or obligations under
this Agreement.
ZENECA LIMITED
By: _________________________________
Title: ______________________________
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SCHEDULE A
LICENSED PATENT RIGHTS
P&U PATENTS
-----------
--------------------------------------------------------------------------------
COUNTRY APPLICATION NO. APPLICATION PUBLICATION PATENT EXPIRY STATUS
NO. DATE NO. NO. DATE
--------------------------------------------------------------------------------
AU 19425/92 1992-07-03 658198 2012 A
--------------------------------------------------------------------------------
BY 964 1992-07-03 I
--------------------------------------------------------------------------------
CA 2073124-9 1992-07-03 A
--------------------------------------------------------------------------------
EE P9400328 1994-11-16 03031 2014 A
--------------------------------------------------------------------------------
EP 92850166.7 1992-07-03 0521842 A
--------------------------------------------------------------------------------
FI 935970 1993-12-31 A
--------------------------------------------------------------------------------
HU P9400011 1994-01-03 A
--------------------------------------------------------------------------------
HU P/P00289 1995-06-20 211512 2012 A
--------------------------------------------------------------------------------
IE 922188 1992-07-03 A
--------------------------------------------------------------------------------
XX 000000 1992-07-02 P/102390 2012 A
--------------------------------------------------------------------------------
JP 175848/92 1992-07-03 276987/1993 A
--------------------------------------------------------------------------------
KR 93-704117 1992-07-02 A
--------------------------------------------------------------------------------
KZ 933270.1 1992-07-03 WO93/01303 I
--------------------------------------------------------------------------------
NO P934777 1993-12-22 A
--------------------------------------------------------------------------------
NZ 243435 1992-07-03 243435 2012 A
--------------------------------------------------------------------------------
RU 93058456 1992-07-03 I
--------------------------------------------------------------------------------
UA 93004422 1992-07-03 I
--------------------------------------------------------------------------------
US 906350 1992-07-02 I
--------------------------------------------------------------------------------
US 438123 1995-05-08 5552293 2013 A
--------------------------------------------------------------------------------
A = active
I = inactive
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SCHEDULE B
LICENSED PATENT RIGHTS
P&U /ZENECA PATENTS
-------------------
--------------------------------------------------------------------------------
COUNTRY APPLICATION APPLICATION PUBLICATION STATUS
NUMBER DATE NUMBER
--------------------------------------------------------------------------------
Australia 19430/92 1992-07-03 Active - Granted
--------------------------------------------------------------------------------
Canada 2073113-3 1992-07-03 Active
--------------------------------------------------------------------------------
Europe 92306149.3 1992-07-03 0528527 Active
--------------------------------------------------------------------------------
Finland 923085 1992-07-03 Active
--------------------------------------------------------------------------------
Ireland 922190 1992-07-03 Active
--------------------------------------------------------------------------------
Israel 102399 1992-07-03 Active
--------------------------------------------------------------------------------
Japan 177212/92 1992-07-03 Active
--------------------------------------------------------------------------------
South Korea 11913/92 1992-07-03 Active
--------------------------------------------------------------------------------
Mexico 923891 1992-07-03 Active
--------------------------------------------------------------------------------
Norway 922383 1992-06-17 Active
--------------------------------------------------------------------------------
Xxx Xxxxxxx 000000 1992-07-03 Active - Granted
--------------------------------------------------------------------------------
Taiwan 81107395 1992-07-02 Active
--------------------------------------------------------------------------------
X.X.X. 000000 1992-07-02 Active
--------------------------------------------------------------------------------
X.X.X 000000 1995-03-20 Active
--------------------------------------------------------------------------------
Hungary P9202219 1992-07-03 Active
--------------------------------------------------------------------------------
Malaysia X00000000 1992-07-01 Active
--------------------------------------------------------------------------------
Portugal 100660 1992-07-03 Active
--------------------------------------------------------------------------------
Zimbabwe 101/92 1992-07-03 Active - Granted
--------------------------------------------------------------------------------
South Africa 92/4973 1992-07-03 Active - Granted
--------------------------------------------------------------------------------
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