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CONFIDENTIAL TREATMENT REQUESTED
FOR PORTIONS OF THIS DOCUMENT
EXHIBIT 10.9
ASSIGNMENT AGREEMENT
THIS ASSIGNMENT AGREEMENT is effective as of the 31st day of January, 1997,
by and among The Wellcome Foundation Ltd. Of Glaxo Xxxxxxxx Xxxxx, Xxxxxxxx
Xxxxxx, Xxxxxxxxx, Xxxxxxxxx, XX0 ONN ("WFL"), and Glaxo Wellcome Inc., having
an address at Five Xxxxx Drive, Research Xxxxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
("GWUSA" and together with WFL, "GW') and Lung Rx, Inc., having an address at
000 Xxxxxx Xxxxx, Xxxxx 000, Xxxxxx Xxxx, Xxxxx Xxxxxxxx 00000 ("Lung Rx").
WHEREAS, GW owns all right, title and interest in certain patent rights and
has the right to use certain know-how relating to the Compound (as herein
defined) in the Territory (as herein defined);
WHEREAS, Lung Rx desires to obtain an assignment of such patent rights and
know-how in order to make, have made, use and sell products containing the
Compound; and
WHEREAS, GW is willing to make such an assignment to Lung Rx;
NOW, THEREFORE, in consideration of the foregoing and the mutual promises
and covenants set forth herein, the parties hereto mutually agree as follows:
ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms, whether used in the
singular or the plural, shall have the following meanings:
1.1 "Affiliate" means any corporation or non-corporate entity which
controls, is controlled by, or is under common control with a party to this
Agreement. A corporation or non-corporate entity shall be regarded as in control
of another corporation if it owns or directly or indirectly controls at least
forty percent (40%) of the voting stock of the other corporation, or (i) in the
absence of the ownership of at least forty percent (40%) of the voting stock of
a corporation or (ii) in the case of a non-corporate entity, if it possesses,
directly or indirectly, the power to direct or cause the direction of the
management and policies of such corporation or non-corporate entity, as
applicable.
1.2 "Agreement" means this Assignment Agreement.
1.3 "Compound" means (a) 9-deoxy-13, 14-dihydra-2', 9a-methano-3-oxa-
4,5,6.4 trinor-3, 7-(1',3'-interphenylene)-PGF, referred to by the parties as
15AU81, and (b) the pharmaceutically acceptable salts and esters thereof.
1.4 "Dollars" or "S" means United States dollars.
1.5 "Effective Date" means the date appearing at the beginning of this
Agreement.
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1.6 "FDA" means the United States Food and Drug Administration or any
successor entity.
1.7 "IND" means an Investigational New Drug application or any equivalent
successor application.
1.8 "Know-How" means all technical information and data, whether or not
patentable, which is owned by GW or which GW has the right to use and assign as
of the Effective Date and which relates solely to the Compound, the IND filed
with respect thereto, and its use as described in the claims of the patents and
patent applications listed in Appendix I attached hereto and made a part hereof
or any other patents or patent applications comprising the Patent Rights, it
being understood that a substantial portion of the foregoing has been disclosed,
by GW to Lung Rx prior to the Effective Date. Know-How shall include, without
limitation, the information and data described in Appendix II attached hereto
and made a part hereof.
1.9 "NDA" means a New Drug Application or any equivalent successor
application.
1.10 "Net Sales," with respect to any Product containing the Compound as
the sole active ingredient, means the gross sales (i.e., gross invoice prices)
of such Product billed by Lung Rx and its licensees to Third Party customers,
less: (i) actual credited allowances to such Third Party customers for spoiled,
damaged, outdated and returned Product and for retroactive price reductions in
lieu of returned Product; (ii) customary trade and cash discounts, to the extent
such trade and cash discounts are not deducted by Lung Rx or its licensees at
the time of invoice in order to arrive at the gross invoice prices; (iii) all
transportation and handling charges, sates taxes, excise taxes, use taxes or
import/export duties actually paid; and (iv) all other invoiced allowances and
adjustments actually credited to customers including, but not limited to,
rebates paid to Third Party payors, whether during the specific royalty period
or not.
1.11 "Net Sales," with respect to any Product containing one or more active
ingredients in addition to the Compound, means the gross sales of such Product
billed by Lung Rx and its licensees to Third Party customers, less all the
allowances, adjustments, reductions, discounts, taxes, duties and other charges
referred to in Section 1.10, multiplied by a fraction, the numerator of which
shall be the manufacturing cost or acquisition cost, as applicable, of the
Compound included in such Product and the denominator of which shall be the
manufacturing cost or acquisition cost, as applicable, of all active ingredients
in such Product, including the Compound. In no event, however, shall the
foregoing fraction be less than one-half (1/2)
1.12 "Patent Rights" means all domestic and foreign patents and patent
applications listed in Appendix I attached hereto and made a part hereof, and
any extensions, continuations, continuations-in-part, divisions, substitutions,
foreign equivalents, renewals or reissues thereof.
1.13 "Product" means any pharmaceutical product containing the Compound as
an active ingredient.
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1.14 "Registration" means, in relation to any Product, such approvals by
government authorities as may be legally required before such Product may be
commercialized in the Territory.
1.15 "Territory" means the entire world.
1.16 "Third Party" means any party other than Lung Rx, GW, their respective
Affiliates and Lung Rx' licensees.
1.17 "Valid Claim" means a claim of an issued and unexpired patent included
within the Patent Rights which has not been held unenforceable, unpatentable or
invalid by a decision of a court or other governmental agency of competent
jurisdiction, unappealable or unappealed within the time allowed for appeal, and
which has not been admitted to be invalid or unenforceable through reissue,
disclaimer or otherwise.
ARTICLE 2 - WARRANTIES
2.1 Warranties by XX - XX represents and warrants to Lung Rx that:
(i) GW is the sole owner of the Patent Rights and has the right and
authority to use the Know-How and to assign the Patent Rights and the Know-How;
and
(ii) As of the Effective Date, GW is not aware of any action or claim
of infringement brought by a Third Party under any Third Party patent, trade
secret or other Third Party proprietary right in respect of GW's exploitation of
the Patent Rights or use of the Know-How.
2.2 Warranties of Each Party - Each party hereto represents and warrants to
the other that:
(i) it is free to enter into this Agreement and to carry out its
obligations hereunder, including, in the case of GW, the right to make the
assignment made by it pursuant to Article 3 hereof
(ii) this Agreement constitutes its legal, valid and binding
obligation; and
(iii) execution, delivery and performance of this Agreement will not
constitute a violation or breach of any agreement or contract to which it is a
party or by which it is bound or the terms of any judicial or administrative
decree or order to which it is subject.
2.3 Disclaimers by GW - Other than the warranties set forth in Sections 2.1
and 2.2, GW makes no representation and extends no warranties whatsoever, either
express or implied: (i) that the Patent Rights and Know-How may be utilized to
create any Product; or (ii) that a Product manufactured, used, sold or otherwise
marketed under the Patent Rights and Know-How, or a method provided or practiced
in accordance with the Patent Rights and Know-How, shall be free from
infringement of any United States or other patent, whether presently issued or
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which may issue in the future. GW makes no representations and extends no
warranties, either express or implied, that any Know-How comprises inventions
which will mature into issued United States or foreign patents having valid and
enforceable claims. Lung Rx acknowledges that GW has not designed any Product
and that, as between Lung Rx and GW, Lung Rx shall bear all responsibility for
the design, development, manufacture and marketing of Products. Lung Rx further
acknowledges that GW has made no warranties or representations to Lung Rx
regarding the usefulness or confidential nature of the Know-How.
ARTICLE 3 - ASSIGNMENT; LICENSES
3.1 Lung Rx Assignment - In consideration of One Dollar ($1.00), the
receipt of which is hereby acknowledged, and subject to Sections 3.3 and 3.4
hereof, GW hereby assigns to Lung Rx all right, title and interest in and to the
Patent Rights and the Know-How. GW will, where appropriate, execute all
necessary documents to effect such assignment and to perfect relevant patent
rights upon the reasonable written request of Lung Rx.
3.2 Lung Rx License - GW hereby grants Lung Rx a non-exclusive,
royalty-free license in the Territory to any GW patents not included in the
Patent Rights, the infringement of which is necessary to carry out the making,
using, selling or importation of Product, the sale of which Product is subject
to the payment of royalties under Section 4.1 hereof.
3.3 Limitation on Assignment - Except as provided in Section 3.2, the
assignment made pursuant to Section 3.1 shall not include rights under any
patents, patent applications, know-how or other intellectual property of GW or
its Affiliates other than the Patent Rights and Know-How.
3.4 Reservation of Rights - GW hereby reserves the perpetual, royalty-free
right to practice the Patent Rights and to use the Know-How for research and
development purposes only.
ARTICLE 4 - ROYALTIES
4.1 Earned Royalties
(i) Subject to the terms hereof, Lung Rx shall pay GW, an Net Sales of
Products in the Territory in excess of [ ] per annum (the "Threshold Amount"), a
royalty often [ ] on Net Sales by Lung Rx, its Affiliates and Third Party
licensees in the Territory. Royalties shall be paid in respect of Net Sales in
the Territory in excess of the Threshold Amount for a period of ten years from
the date of first commercial sale of Product in the Territory. Thereafter
royalties shall be paid in respect of a given Product only so long as the
manufacture, sale or use of such Product in the Territory would, but for the
assignment made herein, infringe a Valid Claim or any period of orphan drug or
other exclusivity granted by the FDA or other government agency with respect to
any Product ("Exclusivity Period"). Notwithstanding the foregoing, in the event
the Patent Rights and any Exclusivity Periods expire prior to the end of
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such ten (10) year period, the royalty rate set forth above shall be reduced to
[ ] or the remainder of such ten (10) year period.
(ii) If Lung Rx grants any licenses hereunder, then in addition to the
royalties payable pursuant to Subsection 4.1(i), Lung Rx shall pay GW [ ] of all
consideration payable by each licensee, within thirty (30) days after receipt by
Lung Rx of payment from such licensee.
4.2 Accrual of Royalties - No royalty shall be payable on a Product made,
sold, or used for tests or development purposes or distributed as samples,
provided such samples are not furnished in consideration of monies paid to Lung
Rx. No royalties shall be payable on sales among Lung Rx and its licensees, but
royalties shall be payable on the initial subsequent sale by Lung Rx or its
licensees to a Third Party. No multiple royalty shall be payable because the
manufacture, use or sale of a Product is covered by more than one Valid Claim or
is subject to both Know-How and a Valid Claim.
4.3 Third Party Royalties - If Lung Rx or its licensees determine, after
discussion with GW, that it or they are required to pay royalties to any Third
Party because the manufacture, use or sale of the Compound infringes any patent
or other intellectual property rights of such Third Party in the Territory, Lung
Rx or its licensees may deduct from royalties thereafter due to GW with respect
to Net Sales of the Product containing such Compound up to [ ] of the royalties
or such other fees paid to such Third Party, subject to the limitation in the
immediately following sentence. In no event shall the royalties due to GW on
such Net Sales of such Product on account of any reduction pursuant to this
Section 4.3 be thereby reduced by more than [ ] of the royalties which otherwise
would have been due hereunder on such Net Sales of such Product in the
Territory.
4.4 Limitation on Royalty Reductions - After Net Sales exceed the Threshold
Amount, in no event shall any reductions in royalties afforded by any provision
of this Agreement, when taken alone or in combination, result in GW's receiving
less than [ ] of Net Sales in any calendar year.
ARTICLE 5 - ROYALTY REPORTS AND ACCOUNTING
5.1 Royalty Reports: Records - Lung Rx shall notify GW promptly when Lung
Rx or its licensees commence selling any Products in the Territory. Within sixty
(60) days after the end of the calendar quarter in which Lung Rx or its
licensees commence selling any Product and within sixty (60) days after the end
of each calendar quarter thereafter, Lung Rx shall furnish to GW a written
report or reports covering each calendar quarter (a "royalty period") showing
(i) the Net Sales of all Products in the Territory during the royalty period;
(ii) the royalties, payable in Dollars, which shall have accrued hereunder in
respect of such sales; (iii) withholding taxes, if any required by law to be
deducted in respect of such sales; and (iv) the exchange rates, if any, used in
determining the amount of Dollars. With respect to sales of Products invoiced in
Dollars, the Net Sales and royalties payable shall be expressed in Dollars With
respect to sales of Products invoiced in a currency other than Dollars, the Net
Sales and royalties payable shall be
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expressed in the domestic currency of the party making the sale together with
the Dollar equivalent of the royalty payable, calculated using the simple
average of the exchange rates published in the New York Times on the last day of
each month during the royalty period. If any licensee makes any sales invoiced
in a currency other than Dollars, the Net Sales shall be converted to Dollars in
accordance with the licensee's normal accounting principles. Lung Rx shall
furnish to GW appropriate evidence of payment of any tax or other amount
required by applicable laws or regulations to be deducted from any royalty
payment. Lung Rx shall keep accurate records in sufficient detail to enable the
royalties payable hereunder to be determined. Lung Rx shall be responsible for
all royalties and late payments that are due to GW but have not been paid by
Lung Rx' licensees.
5.2 Right to Audit - Upon the written request of GW, at least ten (10)
business days in advance, at GW's expense and not more than once in each
calendar year, Lung Rx shall permit an independent public accountant, selected
by GW, and acceptable to Lung Rx, which acceptance shall not be unreasonably
refused, to have access during normal business hours to those records of Lung Rx
as may be reasonably necessary to verify the accuracy of the royalty reports
furnished by Lung Rx to GW pursuant to Section 5.1 of this Agreement in respect
of any calendar year ending not more than thirty-six (36) months prior to the
date of such request. Lung Rx shall include in each license granted by it
pursuant to this Agreement a provision requiring the licensee to keep and
maintain records of sales made pursuant to such license and to grant access to
such records by GW's independent public accountant. If such independent public
accountant's report shows any underpayment of royalties, within thirty (30) days
after Lung Rx' receipt of such report, Lung Rx shall remit to GW (i) the amount
of such underpayment and (ii) if such underpayment exceeds five percent (5%) of
the total royalties owed to GW for the calendar year then being audited, the
reasonable and necessary fees and expenses of such independent public
accountant performing the audit, subject to reasonable substantiation thereof.
Any overpayment of royalties shall be fully creditable against future royalties
payable to GW in subsequent royalty periods.
5.3 Confidentiality of Records - GW agrees that all information subject to
review under this Article 5 or under any license agreement granted pursuant to
this Agreement is confidential and that it and its accountant shall retain all
such information in confidence.
ARTICLE 6 - ROYALTY AND OTHER PAYMENTS
6.1 Payment Due Dates - Royalties shown to have accrued in each royalty
report provided for under Article 5 of this Agreement shall be due and payable
on the date such royalty report is due. Payment of royalties in whole or in part
may be made in advance of such due date.
6.2 Interest - Royalties and other payments required to be paid by Lung Rx
pursuant to this Agreement shall, if overdue, bear interest at a per annum rate
of twelve percent (12%) or the maximum rate allowed by raw, whichever is less,
until paid. The payment of such interest shall not preclude GW from exercising
any other rights it may have because any payment is overdue.
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ARTICLE 7 - DEVELOPMENT AND COMMERCIALIZATION PROGRAM
7.1 GW Right of First Refusal - Notwithstanding anything in this Agreement
to the contrary, in the event that Lung Rx shall decide to license any aspect of
the commercialization of any Product anywhere in the Territory, or be solicited
by a Third Party to grant such a license, Lung Rx shall give GW an exclusive
option and right of first refusal to negotiate a license agreement covering such
matters with Lung Rx. GW shall have sixty (60) days from receipt of written
notice from Lung Rx of its intent to enter into a license agreement, which such
notice shall describe in reasonable detail the material terms of any proposed
license to a Third Party, to deliver its decision as to whether it shall
exercise such option and right. Upon Lung Rx' receipt of written notice from GW
of its desire to enter into negotiations, the parties shall have one hundred
twenty (120) days, or such longer period as the parties shall mutually agree
(the "Negotiation Period"), to negotiate in good faith and enter into a
definitive license agreement. The terms of such agreement shall be commercially
reasonable under the circumstances; then in existence. In the event that GW
shall decline to exercise its option or right hereunder or the: parties fail in
good faith enter into a license agreement prior to the expiration of the
Negotiation Period. Lung Rx shall be free to enter into a license agreement
covering the same matters with a Third Party, provided, however that the
material terms of any such agreement shall no more favorable than the terms
offered to GW.
7.2 Progress Reports - Until commercial introduction of the first Product.
Lung Rx shall provide a semiannual report to GWUSA summarizing Lung Rx'
activities related to the development of the Products and securing of the
requisite registrations during .the semiannual period covered by such report.
ARTICLE 8 - PATENT RIGHTS
8.1 Patent Prosecution Costs - GW shall have no responsibility to maintain
or take any other action concerning the Patent Rights. Lung Rx expressly
acknowledges and agrees that it shall be solely responsible for such activities.
8.2 Patent Prosecution Costs - Lung Rx shall reimburse GW for the
reasonable out-of-pocket expenses incurred by GW to prosecute or maintain any of
the Patent Rights during the period this Agreement was under negotiation by the
parties.
ARTICLE 9 - INDEMNIFICATION: INSURANCE
9.1 Indemnification by Lung Rx - Subject to GW's compliance with its
obligations set forth in Section 9.3 below, Lung Rx agrees to indemnify and hold
GW, its Affiliates, and its and their directors, officers, employees and agents
harmless from and against any liabilities or damages or expenses in connection
therewith (including reasonable attorneys' fees and costs and other expenses of
litigation) resulting from (i) claims arising out of Lung Rx1 or its licensees'
testing, use manufacture or sale of the Products; (ii) the breach by Lung Rx of
any of its warranties. representations or covenants contained in this Agreement;
or (iii) the successful enforcement (i.e., a judgment issued by a court of
competent jurisdiction against Lung Rx,
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unappealable or unappealed by Lung Rx within the time allowed therefor) by GW of
its indemnification rights set forth in clauses (i) and (ii) of this Section
9.1.
9.2 Indemnification by GW - Subject to Lung Rx' compliance with its
obligations set forth in Section 9.3 below, GW agrees to indemnify and hold Lung
Rx, its Affiliates and its and their directors, officers, employees and agents
harmless from and against any liability, or damages or expenses in connection
therewith (including reasonable attorneys' foes and costs and other expenses of
litigation) resulting from (i) the breach by GW of any of its representations,
warranties or covenants contained in this Agreement; or (ii.) the successful
enforcement (i.e., a judgment issued by a court of competent jurisdiction
against GW, unappealable or unappealed by GW within the time allowed therefor)
by Lung Rx of its indemnification rights set forth in clause (i) of this Section
9.2.
9.3 Indemnification Procedures - A party (the "indemnitee") which intends
to claim indemnification under this Article 9 shall promptly notify the other
party (the "indemnitor) in writing of any action, claim or liability in respect
of which the indemnitee or any of its Affiliates, directors, officers, employees
or agents intend to claim such indemnification. The indemnitee shall permit, and
shall cause its Affiliates, directors, officers, employees and agents to permit,
the indemnitor, at its discretion, to settle any such action; claim or liability
and. agrees to the complete control of such defense or settlement by the
indemnitor provided, however, that such settlement does not adversely affect the
indemnitee's rights hereunder or impose any obligations on the indemnitee in
addition to those set forth herein in order for it to exercise such rights. No
such action, claim or liability shall be settled without the prior written
consent of the indemnitor and the indemnitor shall not be responsible for any
legal fees or other costs incurred other than as provided herein. The indemnitee
and its Affiliates, directors, officers, employees and agents shall cooperate
fully with the indemnitor and its legal representatives in the investigation and
defense of any action, claim or liability covered by this indemnification. The
indemnitee shall have the right, but not the obligation, to be represented by
counsel of its own selection and expense.
9.4 Insurance
(i) Lung Rx shall take out and maintain, at its own expense, during the
term of this Agreement, and for a minimum of two (2) years following the
expiration, termination or cancellation of this Agreement, product liability
coverage from an insurance company or companies reasonably satisfactory to GW.
During the clinical development of Products, such coverage shall be at least
$2,000,000 per occurrence. Promptly upon commercial introduction of the initial
Product, the parties shall negotiate in good faith an increase in such coverage.
The insurance policy relating to such coverage shall name GW as additional
insured by way of endorsement or otherwise as its interests may appear.
(ii) Within thirty (30) days after the Effective Date, Lung Rx shall
cause to be delivered to GW an insurance certificate evidencing the insurance
coverage required by Subsection 9.4(i). Such insurance certificate shall name GW
as additional insured as its interests
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may appear and shall include a certification that such insurance coverage
includes contractual coverage for Lung Rx' liability under this Agreement.
ARTICLE 10 - CONFIDENTIALITY
10.1 Treatment of Confidential Information - Except as otherwise provided
in Article 10, during the term of this Agreement and for a period of five (5)
years thereafter:
(i) Lung Rx will retain in confidence and use only for purposes of
this Agreement any information and data supplied GW to Lung Rx
under this Agreement; and
(ii) GW wiIl retain in confidence and use only for purposes Agreement
:any information and data supplied by or on for purposes of this
by or on behalf of Lung Rx to GW under this Agreement.
For purposes of this Agreement, all such information and data which a party
is obligated to retain in confidence shall be called "information."
10.2 Right to Disclose - To the extent it is seasonably necessary or
appropriate to fulfill its obligations or exercise its rights under this
Agreement or any rights which survive termination or expiration hereof, a party
may disclose Information to its Affiliates, licensees, consultants, outside
contractors and clinical investigators on condition that such entities or
persons agree (I) to keep the Information confidential for at least the same
time periods and to the same extent as each party is required to keep the
Information confidential and (ii) to use the Information only for such purposes
as such party is entitled to use the Information. Each party or its Affiliates
or, if applicable, the licensees may disclose such Information to government or
other regulatory authorities to the extent that such disclosure 9a) is
reasonably necessary to obtain patents or authorizations, to conduct clinical
trials and to market commercially the Product, provided such party is otherwise
entitled to engage in such activities under this Agreement or (b) is otherwise
required by applicable laws or regulations.
10.3 Release From Restrictions - The obligation not to disclose Information
shall not apply to any part of such Information that (i) is or becomes patented,
published or otherwise part of the public domain other than by acts of the party
obligated not to disclose such Information (for purposes of this Article 10, the
"receiving party") or its Affiliates or licensees in contravention of this
Agreement; or (ii) is disclosed to the receiving party or its Affiliates or
licensees by a Third Party, provided such Information was not obtained by such
Third Party directly or indirectly from the other party under this Agreement; or
(iii) prior to disclosure under this Agreement, was already in the possession of
the receiving party or its Affiliates or licensees, provided such Information
was not obtained, directly or indirectly, from the other party under this
Agreement; or (iv) results from research and development by the receiving party
or its Affiliates or licensees independent of disclosures from the other party
under this Agreement.
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10.4 Confidentiality of Agreement - Except as otherwise required by
applicable jaw-or regulation or permitted by the terms of this Agreement or
otherwise mutually agreed upon by the-parties hereto, each party shall treat as
confidential the terms, conditions and existence of this Agreement.
Notwithstanding the foregoing, a party may disclose such terms, conditions and
existence to an Affiliate or, in the case of Lung Rx, a licensee, which agrees
to be bound by the terms of this Section 10.4 to the same extent as such party.
Notwithstanding the foregoing, Lung Rx may disclose the terms of this Agreement
for the purpose of obtaining debt and/or equity financing.
10.5 Publications.- Except for such disclosure as is deemed necessary, in
the reasonable judgment of the responsible party, to comply with applicable law
or regulation, no announcement, news release, public statement, publication or
other public presentation relating to the existence of this Agreement, the
subject matter herein, or either party's performance hereunder (collectively, a
"Publication") will be made without the other party's prior approval. Each party
agrees to submit each Publication it proposes to make to the other party for
purposes of such other party's review and comment or, if required pursuant to
this Subsection 10.5, approval. Each party further agrees to respond as promptly
as reasonably practicable but, in any event, within ten (10) days following
receipt from the other party of such proposed Publication, and likewise agrees
that it will not unreasonably withhold approval of such Publication. Lung Rx
will develop, subject to the reasonable prior approval of GW, publication and
communication literature which credits GW as the pharmaceutical company
currently marketing FLOLAN(R) and dedicated to the discovery, development and
marketing of additional lifesaving medicines for the treatment of PPH patients.
ARTICLE 11 - TERM; TERMINATION
This Agreement shall become effective as of the-Effective Date and shall
continue in-full force and-effect until the expiration of Lung Rx' obligation to
pay royalties hereunder. Upon expiration or-termination of this Agreement with
respect to all countries within the Territory, the rights and obligations of the
parties shall cease, except as follows:
(i) the rights and obligations of the parties under Article 9 shall
survive termination or expiration;
(ii) upon expiration or termination for any reason, the obligations of
confidentiality and use of Information under Article 10 shall
survive for the period-provided therein; and
(iii) expiration or termination of this Agreement shah not relieve the
other obligation accruing prior to such termination.
ARTICLE 12 - DELIVERY OF KNOW-HOW
To the extent it has not previously done so, within ninety (90) days
following the Effective Date, GW shall supply Lung Rx with all the Know-How. GW
shall, upon request by
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Lung Rx which must be given, if at, all within sixty (60) days after delivery of
one (1) day of consultation regarding the use or application of the Know-How at
GW's Research Triangle Park, North Carolina facilities. GW shall not be
obligated to provide any consultation other than as set forth in this Article
12. GW shall have no responsibility for the accuracy or use by any person of any
portion of the Know-How.
ARTICLE 13 - ASSIGNMENT
This Agreement may not be assigned or otherwise transferred by Lung Rx
without the written consent of GW; provided, however, that Lung Rx may, without
such consent, assign this Agreement in connection with the transfer or sale of
all or substantially all of its business or in the event of its merger or
consolidation with another company. Any purported assignment in violation of the
preceding sentence shall be void. Any permitted assignee shall assume all
obligations of its assignor under this Agreement. No assignment shall relieve
Lung Rx of responsibility for the performance of any accrued obligation which
Lung Rx then has hereunder.
ARTICLE 14 - FORCE MAJEURE
A party shall not be held liable or responsible to another party nor be
deemed to have defaulted under or breached this Agreement for failure or delay
in fulfilling or performing nay term of this Agreement, other than an obligation
to make a payment, when such failure or delay is caused by or results from
fires, floods, embargoes, government regulations, prohibitions or interventions,
wars, acts of war (whether war be declared or not), insurrections, riots, civil
commotions, strikes, lockouts, acts of God, or any other cause beyond the
reasonable control of the affected party.
ARTICLE 15 - SEVERABILITY
Each party hereby expressly agrees and contracts that it is not the
intention of any party to violate any public policy, statutory or common laws,
rules, regulations, treaty or decision of any government agency or executive
body thereof of any country or community or association of countries; that if
any word, sentence, paragraph, clause or combination thereof in this Agreement
is found by a court or executive body with judicial powers having jurisdiction
over this Agreement or any of the parties hereto in a final unappealed order, to
be in violation of any such provisions in any country or community association
of countries, such words, sentences, paragraphs, clauses or combination shall be
inoperative in such country or community or association of countries and the
remainder of this Agreement shall remain binding upon the parties hereto.
ARTICLE 16 - NOTICES
Any notice required or permitted to be given hereunder shall be in writing
and shall be deemed to have been properly given if delivered in person, or if
mailed by registered or certified mail (return receipt requested), postage
prepaid, or by facsimile (and promptly confirmed by such
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registered or certified mail), to the addresses given below or such other
addresses as may be designated in writing by the parties from time to time
during the term of this Agreement. Any notice sent by registered or certified
mail as aforesaid shall be deemed to have been given when mailed.
In the case of Lung Rx:
Lung Rx, Inc.
000 Xxxxxx Xxxxx, Xxxxx 000
Xxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
Attention: President
Facsimile No.: (919) 942-342~
In the case of GW:
Glaxo Wellcome Inc.
Five Xxxxx Drive
Research Xxxxxxxx Xxxx, XX 00000
Attention: Corporate Secretary
Facsimile No.: (000) 000-0000
ARTICLE 17 - INDEPENDENT CONTRACTORS
The relationship between GW and Lung Rx is that of independent contractors.
Neither party has any actual or apparent authority, express or implied, to act
on behalf of the other party or to bind the other party to any obligations.
Neither party shall be deemed to be an agent or servant of the other party or a
partner or venturer with the other party. GW shall not control, or have any
right to control, the manner, method and means by which Lung Rx makes, has made,
uses, sells, leases or otherwise provides or markets its products and services.
Neither party shall have the right to utilize the name, patent rights, know-how,
trademarks or service marks of the other party to this Agreement, except, in the
case of the patent Rights and Know-How, as otherwise expressly assigned pursuant
to Section 3.1.
ARTICLE 18 - GOVERNING LAW
This Agreement shall be governed by and construed in accordance with the
laws of the State of North Carolina, exclusive of its choice-of-law rules.
ARTICLE 19 - ENTIRE AGREEMENT; MODIFICATION
This Agreement contains the entire understanding of the parties with
respect to the subject matter hereof. All express or implied agreements and
understandings, either oral or written, heretofore made are expressly merged in
and made a part of this Agreement. The parties
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hereto may alter any of the provisions of this Agreement, but only by a written
instrument duly executed by both parties hereto.
ARTICLE 20 - WAIVER
The failure of a party to enforce at any time for any period any of the
provisions hereof shall not be construed as a waiver of such provisions or of
the rights of such party thereafter to enforce each such provision.
ARTICLE 21 - COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original but all of which together shall constitute one and
the same document.
ARTICLE 22 - CAPTIONS
The captions to the several Articles and Sections hereof are not a part of
this Agreement, but are merely guides or labels to assist in locating and
reading the several Articles and Sections hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
LUNG RX, INC. GLAXO WELLCOME INC.
By:/s/ Xxxxx X. Xxxx By: /s/ Xxxxxx X. Xxxx
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Name: Xxxxx X. Xxxx Name: Xxxxxx X. Xxxx, Ph.D.
------------------------- -------------------------------
Title: President Title: Vice President, Research,
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Glaxo Wellcome Inc.
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THE WELLCOME FOUNDATION LTD.
By:/s/ Xxxxx Xxxxxxxx
-----------------------------
Name: Xxxxx Xxxxxxxx
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Title: Assistant Secretary
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