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EXHIBIT 10.40
ARIAD PHARMACEUTICALS, INC. HAS OMITTED FROM THIS EXHIBIT 10.40 PORTIONS OF THE
AGREEMENT FOR WHICH ARIAD PHARMACEUTICALS, 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 AN
ASTERISK AND SUCH CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
TECHNOLOGY PURCHASE AND SALE AGREEMENT
This Technology Purchase Agreement and Sale Agreement (the "Agreement") is
entered into as of July 17, 1997 by and between ARIAD Pharmaceuticals, Inc. (the
"Buyer") and Mitotix, Inc. (the "Seller").
WHEREAS, the Seller desires to sell and the Buyer desires to buy the right,
title and interest of the Seller in certain intellectual property, patent
applications, know-how and reagents relating to the inventions disclosed in the
Patents (as hereinafter defined), except as excluded by Section 1.05 hereof (the
"Invention").
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained in this Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereto
agree as follows:
1. PURCHASE AND SALE OF ASSETS.
1.01 TRANSFERRED ASSETS. Upon the terms and conditions set forth in this
Agreement, at the Closing (as defined in Section 1.06) the Seller shall transfer
to the Buyer good and valid title to the Patents (as defined below in Section
1.01(a)) and all of its right, title and interest in and to the Know-How and
Reagents (as defined below in Sections 1.01(b) and (c), respectively). The
Patents, Know-How and Reagents shall hereinafter be collectively referred to as
the "Transferred Assets". The Transferred Assets shall consist of:
(a) The patent applications listed on SCHEDULE 2.05, the prosecution files
for such patent applications (including, without limitation, all drafts, notes,
drawings or figures, official correspondence with patent offices, other
correspondence and copies of cited references, copies of which the Seller may
retain), and all intellectual property rights (other than rights pertaining to
[*] as hereinafter defined) in such applications, including without limitation
the right to claim the priority benefit thereof and to prosecute and to enforce
any patents arising therefrom (collectively, the "Patents").
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(b) All laboratory notebooks and other primary data, research results,
records and documentation, research plans, proposals, conclusions, know-how,
specifications and information, to the extent any of the foregoing are recorded
in any tangible form (including, without limitation, gels, photographs,
print-outs, electronic files and paper documents), which are owned by, licensed
to or in the possession of the Seller and which relate to the discovery of or
are necessary or materially useful for the practice of the Invention, the
Patents or the Reagents, and all intellectual and tangible property rights in
the foregoing, including the right to file additional patent applications based
thereon (collectively, the "Know-How").
(c) The reagents listed on, and in the quantities listed on, SCHEDULE 2.04
attached hereto (the "Reagents").
Except as set forth in this Agreement, the Transferred Assets shall be
transferred on an "AS IS" basis. The Seller shall transfer the Transferred
Assets to the Buyer pursuant to a Xxxx of Sale in substantially the form of
EXHIBIT 1.01A attached hereto (the "Xxxx of Sale") and an Assignment of Patents
substantially in the form of EXHIBIT 1.01B attached hereto (the "Patent
Assignment").
1.02 NO LIABILITIES. The Buyer shall not assume any liabilities of the
Seller in connection with the Invention, the Transferred Assets or the
transactions contemplated by this Agreement.
1.03 CONSIDERATION FOR THE TRANSFERRED ASSETS. In consideration for the
transfer of the Transferred Assets, upon the terms and subject to the conditions
set forth in this Agreement, the Buyer shall pay the Seller an aggregate sum of
[*] (the "Purchase Price") payable as follows:
(a) [*] shall be paid at the Closing (the "Closing Payment"); and
(b) An additional [*] shall be paid on each of the dates which is [*] after
the Closing Date (as defined in Section 1.07) (the "Installments").
The Closing Payment and each of the Installments shall be made by wire
transfer to an account designated by the Seller.
1.04 LICENSE. As additional consideration for the Transferred Assets,
effective upon the completion of the Closing, the parties shall enter into a
license agreement granting to the Seller a [*] license, with the right to grant
sublicenses, to develop, use, make, have made, sell and import Diagnostic
Products (as hereinafter defined) using the Invention, the Patents and the
Know-How (the "License"). Notwithstanding the foregoing, the License shall
retain for the Buyer, the [*] right, [*] to develop, use, make, have made, sell
and import Diagnostic Products (i) for use in connection with therapeutic or
prophylactic products that are developed, manufactured, imported or sold by the
Buyer and/or parties licensing such therapeutic or prophylactic products from
the Buyer ("Buyer Therapeutic Products"), (ii) for use in determining how to
utilize (e.g., dosing regimen or drug monitoring) Buyer Therapeutic Products to
treat a particular disease or patient, or (iii) for monitoring the effect of
Buyer Therapeutic Products. The
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foregoing right reserved to the Buyer shall not include the right to develop,
use, make, have made, sell and import Diagnostic Products to generally determine
the presence or absence of, or predisposition to, a disease state independent of
a determination relative to the use of Buyer Therapeutic Products. For purposes
of this Agreement and the License, "Diagnostic Products" shall mean products
which are intended to monitor the course of disease or therapy in humans,
predict, detect or identify a disease in humans, or determine the outcome of a
pathological condition in humans.
1.05 EXCLUSION OF [*]. For the purpose of this Agreement, [*] and all uses
disclosed for any of the foregoing. The parties expressly agree that [*] is not
included within the subject matter transferred and assigned hereunder and is
expressly excluded from the definitions of the Invention, the Patents and the
Know-How. The Seller shall have an unrestricted right to prosecute claims
relating to [*].
1.06 FURTHER ASSURANCES. At any time and from time to time after the date
hereof, at the request of the Buyer and without further consideration, the
Seller will execute and deliver such other instruments of sale, transfer,
conveyance, assignment and confirmation as may be reasonably requested in order
to more effectively transfer, convey and assign to the Buyer and to confirm the
Buyer's title to the Transferred Assets.
1.07 CLOSING. The closing of the transactions contemplated by this
Agreement (the "Closing") shall take place at the offices of Mintz, Levin, Cohn,
Ferris, Glovsky and Popeo, P.C., Xxx Xxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx
contemporaneously with the execution of this Agreement. At the Closing:
(a) The Seller shall deliver or cause to be delivered to the Buyer the
following:
(i) The Xxxx of Sale;
(ii) The Patent Assignment;
(iii) The Reagents;
(iv) All of the books, data, documents, instruments and other records
and materials described in Sections 1.01(a) and 1.01(b), which shall
include identification by the Seller from the materials described therein
of the records believed by the Seller to document the earliest making of
the inventions claimed in the Patents and any additional records
corroborating the foregoing. The Seller may retain copies of the Know-How
in microfiche or other format. The original copies of the Know-How and
Patents transferred to the Buyer shall be retained by the Buyer and made
available to the Seller for use in connection with the Seller's rights
under the License, for the prosecution, defense, maintenance or enforcement
of patent applications and patents other than the Patents, and for all
purposes unrelated to the Invention or the Transferred Assets. [*]
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(v) A Confidentiality Agreement substantially in the form of EXHIBIT
1.07(a)(v) attached hereto (the "New Confidentiality Agreement"); and
(vi) Cooperation Agreements executed by each of the inventors named in
the Patents (the "Inventors") substantially in the form of EXHIBIT
1.07(a)(vi) attached hereto.
(b) The Buyer shall deliver or cause to be delivered to the Seller the
Closing Payment; and
(c) The parties shall execute and deliver the License.
2. REPRESENTATIONS AND WARRANTIES OF THE SELLER. As an inducement to the
Buyer to enter into this Agreement and to consummate the transactions
contemplated hereby, the Seller hereby represents and warrants to the Buyer as
follows:
2.01 ORGANIZATION AND QUALIFICATION. The Seller is a corporation duly
organized, validly existing and in good standing under the laws of the
jurisdiction of its incorporation and is duly licensed or qualified to transact
business as a foreign corporation in each jurisdiction in which the failure to
so qualify would have a material adverse impact on the Seller's ability to sell
the Transferred Assets.
2.02 CORPORATE POWER AND AUTHORITY. The Seller has the corporate power and
authority to execute, deliver and perform this Agreement and the documents and
transactions contemplated hereby. The execution, delivery and performance of
this Agreement and the documents contemplated hereby and the consummation of the
transactions contemplated hereby and thereby have been duly authorized and
approved by all necessary corporate action required of the Seller. This
Agreement and the other agreements, documents and instruments to be executed and
delivered by the Seller hereunder have been duly executed and delivered by, and
constitute the legal, valid and binding obligations of the Seller enforceable
against the Seller in accordance with their terms except as such enforcement may
be limited by bankruptcy, insolvency or other similar laws affecting the
enforcement of creditors' rights generally and except that the availability of
equitable remedies is subject to the discretion of the court before which any
proceeding therefor may be brought.
2.03 VALIDITY, ETC. Neither the execution and delivery of this Agreement
and the other documents and instruments contemplated hereby, the consummation of
the transactions contemplated hereby or thereby, nor the performance of this
Agreement and such other agreements in compliance with the terms and conditions
hereof and thereof will (i) violate or result in any breach of the Seller's
Certificate of Incorporation or By-Laws, (ii) require any consent, approval,
authorization or permit of, or filing with or notification to, any governmental
or regulatory authority or any other third party, (iii) violate or result in a
breach of any mortgage, indenture, note, license, agreement or other instrument
or obligation related to the Seller or to the Seller's ability to consummate the
transactions contemplated hereby or thereby, except for such defaults (or rights
of termination, cancellation or acceleration) as to which requisite waivers or
consents have been obtained in writing, (iv) violate any judgment, order, writ,
injunction, decree,
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statute, rule or regulation applicable to the Seller or (v) result in the
creation of any Claim (as defined in Section 2.07) upon the Transferred Assets.
2.04 REAGENTS. SCHEDULE 2.04 contains a true and complete list all reagents
in Seller's possession which, to the knowledge of Seller, are materially useful
in connection with the Invention and the quantities thereof.
2.05 PATENTS AND KNOW-HOW. SCHEDULE 2.05 sets forth a list of all the
Seller's patent applications related to the Invention. All patent applications
listed therein have been filed and prosecuted in good faith as required by law
and, to the knowledge of the Seller, are in good standing. To the knowledge of
the Seller, the inventors of such patent applications are as set forth in the
respective patent documents and all such inventors have assigned their rights in
the Invention and the Patents to the Seller. No third party has notified the
Seller of any claim of infringement by the Seller of any patents or other
intellectual property rights of others in connection with the Invention, the
Patents or Know-How. To the knowledge of the Seller, no interference or
opposition proceeding is pending or threatened relating to the Patents. Except
as contemplated by this Agreement, the Seller has not granted any person or
entity any right to use the Invention, the Patents or the Know-How for any
purpose.
2.06 PROPRIETARY INFORMATION OF THIRD PARTIES. To the knowledge of the
Seller, no third party has claimed or has reason to claim that any person
employed by or affiliated with the Seller has, in any way related to the
Invention, (a) violated or may be violating any of the terms or conditions of
such person's employment, non-competition or non-disclosure agreement with such
third party or (b) disclosed or may be disclosing or utilized or may be
utilizing any trade secret or proprietary information or documentation of such
third party. No third party has requested information from the Seller which
suggests that such a claim might be contemplated. To the knowledge of the
Seller, no person employed by or affiliated with the Seller has employed or
proposes to employ in connection with the Invention any trade secret or any
information or documentation proprietary to any former employer or other third
party and no person employed by or affiliated with the Seller has violated any
confidential relationship which such person may have had with any third party,
in connection with the development of the Invention.
2.07 TITLE. Upon delivery to the Buyer of the Xxxx of Sale and the Patent
Assignment, (i) the Buyer will receive good and valid title to the Patents free
and clear of all claims, charges, liens, contracts, rights, options, security
interests, mortgages, encumbrances and restrictions (collectively, "Claims"),
and (ii) the Buyer will receive all of the Seller's right, title and interest in
and to the Invention, the Know-How and the Reagents, free and clear of all
Claims known to the Seller or that arise out of or result from any action or
failure to act of the Seller, or, to the knowledge of the Seller, the Inventors,
or any other agent, employee or consultant of the Seller.
2.08 LITIGATION. There is no action, suit, claim, proceeding or
investigation pending, or, to the knowledge of the Seller, threatened against
the Seller and, to the knowledge of the Seller, there is no action, suit, claim,
proceeding or investigation pending or threatened against any of the Inventors
affecting the Transferred Assets (a) at law or in equity, or before any federal,
state, municipal or other governmental commission, board, bureau, agency or
instrumentality,
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domestic or foreign or (b) before any arbitration panel. To the knowledge of the
Seller, there are no outstanding writs, judgments, injunctions or decrees of any
court, governmental agency or arbitration tribunal against, involving or
affecting the Transferred Assets. There is no action or suit by the Seller
pending or threatened against others involving the Transferred Assets.
2.09 TAXES. The Seller has not taken or failed to take any action which
could create any tax lien on the Transferred Assets.
3. REPRESENTATIONS AND WARRANTIES OF THE BUYER. The Buyer represents and
warrants to the Seller as follows:
3.01 ORGANIZATION. The Buyer is a corporation duly organized, validly
existing and in good standing under the laws of the jurisdiction of its
incorporation and is duly licensed or qualified to transact business as a
foreign corporation in each jurisdiction in which the failure to so qualify
would have a material adverse impact on the Buyer's ability to purchase the
Transferred Assets.
3.02 CORPORATE POWER AND AUTHORITY. The Buyer has the corporate power and
authority to execute, deliver and perform this Agreement and the documents and
transactions contemplated hereby. The execution, delivery and performance of
this Agreement and the documents contemplated hereby and the consummation of the
transactions contemplated hereby and thereby have been duly authorized and
approved by all necessary corporate action required of the Buyer. This Agreement
and the other agreements, documents and instruments to be executed and delivered
by the Buyer hereunder have been duly executed and delivered by, and constitute
the legal, valid and binding obligations of the Buyer enforceable against the
Buyer in accordance with their terms except as such enforcement may be limited
by bankruptcy, insolvency or other similar laws affecting the enforcement of
creditors' rights generally and except that the availability of equitable
remedies is subject to the discretion of the court before which any proceeding
therefor may be brought.
3.03 VALIDITY, ETC. Neither the execution and delivery of this Agreement
and the other documents and instruments contemplated hereby, the consummation of
the transactions contemplated hereby or thereby, nor the performance of this
Agreement and such other agreements in compliance with the terms and conditions
hereof and thereof will (i) violate or result in any breach of the Buyer's
Certificate of Incorporation or By-Laws, (ii) require any consent, approval,
authorization or permit of, or filing with or notification to, any governmental
or regulatory authority or any other third party, (iii) violate or result in a
breach of any mortgage, indenture, note, license, agreement or other instrument
or obligation related to the Buyer or to the Buyer's ability to consummate the
transactions contemplated hereby or thereby, except for such defaults (or rights
of termination, cancellation or acceleration) as to which requisite waivers or
consents have been obtained in writing, or (iv) violate any judgment, order,
writ, injunction, decree, statute, rule or regulation applicable to the Buyer.
4. COVENANTS OF THE SELLER. The Seller covenants and agrees with the Buyer
that, following the Closing, the Seller shall cooperate with the Buyer in
prosecuting the
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patent applications and in defending as necessary the Patents, the Know-How and
the Invention against any claims or objections of third parties. Such
cooperation shall include, without limitation, [*]. Without limiting the
generality of the foregoing, the Seller agrees that the Buyer shall have the
right to enforce the rights of the Seller pursuant to Subsection 2(c) of the
Invention, Non-Disclosure and Non-Competition Agreements between the Seller and
each of the Inventors in so far as such rights pertain to the Invention, the
Know-How and the Patents, as fully as if the Buyer were a party to each of such
agreements in the place of the Seller.
5. COVENANTS OF THE BUYER AND SELLER. The Buyer covenants and agrees with
the Seller that the Buyer shall not renew or prosecute any claims of the Patents
pertaining specifically to [*]. The Seller covenants and agrees with the Buyer
that the Seller shall not prosecute or assert any claims to the Invention except
as may be permitted under the License. The Seller further covenants and agrees
that it shall not take any action which will adversely affect the prosecution of
the claims to the Invention by the Buyer and the Buyer further covenants and
agrees that it shall not take any action which will adversely affect the
prosecution of the claims to [*] by the Seller.
6. MISCELLANEOUS.
6.01 NOTICES. All notices, requests, consents and other communications
hereunder shall be in writing, shall be addressed to the receiving party's
address set forth below or to such other address as a party may designate by
notice hereunder, and shall be either (i) delivered by hand, (ii) made by telex,
telecopy or facsimile transmission, (iii) sent by recognized overnight courier,
or (iv) sent by registered or certified mail, return receipt requested, postage
prepaid.
If to the Buyer: ARIAD Pharmaceuticals, Inc.
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attn: Chief Executive Officer
Fax No.: (000) 000-0000
If to the Seller: Mitotix, Inc.
Xxx Xxxxxxx Xxxxxx, Xxxxxxxx 000
Xxxxxxxxx, XX 00000
Attn: President
Fax No.: (000) 000-0000
All notices, requests, consents and other communications hereunder shall be
deemed to have been (i) if by hand, at the time of the delivery thereof to the
receiving party at the address of such party set forth above, (ii) if made by
telex, telecopy or facsimile transmission, at the time that receipt thereof has
been acknowledged by electronic confirmation or otherwise, (iii) if sent by
overnight courier, on the next business day following the day such notice is
delivered to the courier service, or (iv) if sent by registered or certified
mail, on the fifth (5th) business day following the day such mailing is made.
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6.02 ENTIRE AGREEMENT. This Agreement together with the Xxxx of Sale,
Patent Assignment, New Confidentiality Agreement and License (together, the
"Documents") embodies the entire agreement and understanding between the parties
hereto with respect to the subject matter hereof and supersedes all prior oral
or written agreements and understandings relating to the subject matter hereof.
In addition, the Buyer acknowledges that the Cooperation Agreements embody the
entire understanding with respect to the subject matter hereof between the Buyer
and the Inventors. No statement, representation, warranty, covenant or agreement
of any kind not expressly set forth in the Documents shall affect, or be used to
interpret, change or restrict, the express terms and provisions of this
Agreement.
6.03 MODIFICATIONS AND AMENDMENTS. The terms and provisions of this
Agreement may be modified or amended only by written agreement executed by both
parties hereto.
6.04 WAIVERS AND CONSENTS. No failure or delay by a party hereto in
exercising any right, power or remedy under this Agreement, and no course of
dealing between the parties hereto, shall operate as a waiver of any such right,
power or remedy of the party. No single or partial exercise of any right, power
or remedy under this Agreement by a party hereto, nor any abandonment or
discontinuance of steps to enforce any such right, power or remedy, shall
preclude such party from any other or further exercise thereof or the exercise
of any other right, power or remedy hereunder. The election of any remedy by a
party hereto shall not constitute a waiver of the right of such party to pursue
other available remedies. The terms and provisions of this Agreement may be
waived, or consent for the departure therefrom granted, only by written document
executed by the party entitled to the benefits of such terms or provisions. No
such waiver or consent shall be deemed to be or shall constitute a waiver or
consent with respect to any other terms or provisions of this Agreement, whether
or not similar. Each such waiver or consent shall be effective only in the
specific instance and for the purpose for which it was given, and shall not
constitute a continuing waiver or consent.
6.05 ASSIGNMENT. [*]
6.06 ARBITRATION. Any controversy, dispute or claim arising out of or in
connection with this Agreement, or the breach, termination or validity hereof,
shall be settled by final and binding arbitration to be conducted by an
arbitration tribunal in Boston, Massachusetts pursuant to the rules of the
American Arbitration Association. The arbitration tribunal shall consist of
three arbitrators. [*] In the event of any procedural matter not covered by the
aforesaid rules, the procedural law of The Commonwealth of Massachusetts shall
govern.
6.07 GOVERNING LAW. This Agreement and the rights and obligations of the
parties hereunder shall be construed in accordance with and governed by the
internal law of The Commonwealth of Massachusetts, without giving effect to the
conflict of law principles thereof.
6.08 SEVERABILITY. In the event that any court of competent jurisdiction
shall finally determine that any provision, or any portion thereof, contained in
this Agreement shall be void or unenforceable in any respect, then such
provision shall be deemed limited to the extent that such court determines it
enforceable, and as so limited shall remain in full force and effect. In the
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event that such court shall determine any such provision, or portion thereof,
wholly unenforceable, the remaining provisions of this Agreement shall
nevertheless remain in full force and effect.
6.09 HEADINGS AND CAPTIONS. The headings and captions of the various
subdivisions of this Agreement are for convenience of reference only and shall
in no way modify, or affect, or be considered in construing or interpreting the
meaning or construction of any of the terms or provisions hereof.
6.10 EXPENSES. Each of the parties hereto shall pay its own fees and
expenses in connection with this Agreement and the transactions contemplated
hereby whether or not the transactions contemplated hereby are consummated.
6.11 SURVIVAL. All representations and warranties in this Agreement shall
survive the Closing.
6.12 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
6.13 PUBLICITY. The parties will agree upon a press release which shall be
issued promptly after the Closing hereunder. Except as set forth in the
preceding sentence, neither Mitotix nor ARIAD shall make any news release or
other public statement disclosing the terms of this Agreement or of any
amendment hereto, or the performance hereunder or the existence of the
arrangement between the parties without the prior approval of the other party,
except as required by applicable law, rule or regulation, which approval shall
not be unreasonably withheld. Once a particular item of information has been
disclosed as aforesaid, either party may make subsequent disclosure of such
information without further approval of the other party.
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IN WITNESS WHEREOF, the Buyer and the Seller have executed this Agreement
as an instrument under seal as of the date first above written.
ARIAD PHARMACEUTICALS, INC.
By:/s/
-----------------------------------
Name:
Title:
MITOTIX, INC.
By:/s/
-----------------------------------
Name:
Title:
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SCHEDULE 2.04
REAGENTS
BOX 1: [*]
[*]
BOX 2: [*]
[*]
BOX 3: [*]
[*]
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SCHEDULE 2.05
PATENTS
1. [*]
2. [*]
3. [*]
4. [*]
5. [*]
6. [*]
7. [*]
8. [*]
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EXHIBIT 1.01A
XXXX OF SALE
This Xxxx of Sale, dated this _____ day of July, 1997, is executed and
delivered by Mitotix, Inc. (the "Seller"), to ARIAD Pharmaceuticals, Inc. (the
"Purchaser"). All capitalized terms used herein and not defined herein shall
have the respective meanings ascribed to such terms in the Technology Purchase
and Sale Agreement, dated as of the date hereof, between the Seller and the
Purchaser (the "Agreement").
WHEREAS, pursuant to the Agreement, the Seller has agreed to sell,
transfer, convey, assign and deliver to the Purchaser certain Transferred
Assets.
NOW, THEREFORE, in consideration of the execution and delivery of the
Agreement and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Seller hereby sells,
transfers, conveys, assigns and delivers to the Purchaser, its successors and
assigns, to have and to hold forever, all of the Seller's rights, title and
interest in and to the Invention and:
(a) The Patents;
(b) The Know-How; and
(c) The Reagents.
IN WITNESS WHEREOF, the Seller has caused this Xxxx of Sale to be executed
under seal as of the date first above written.
MITOTIX, INC.
By:
-------------------------------
Name:
Title:
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EXHIBIT 1.01B
ASSIGNMENT OF PATENTS
WHEREAS, Mitotix, Inc. (hereafter "Assignor"), a corporation having a
principal place of business at Xxx Xxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx
00000, is the sole and exclusive owner of all right, title and interest in and
to the United States Patents and Patent Applications set forth on Schedule A
attached hereto; and
WHEREAS, ARIAD Pharmaceuticals, Inc. (hereafter "Assignee"), a corporation
having a principal place of business at 00 Xxxxxxxxxx Xxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx 00000, is desirous of acquiring the entire right, title and
interest in and to said Patents and Patent Applications except for all rights in
and to [*] and, to the extent disclosed in said Patents and Patent Applications,
all embodiments of, and all inventions pertaining to, [*] including, without
limitation, [*] and all uses disclosed for any of the foregoing. The parties
expressly agree that claims relating to [*] are not included within the subject
matter transferred and assigned hereunder and the Seller shall have an
unrestricted right to prosecute claims relating to [*].
NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN, BE IT KNOWN, that for good and
valuable consideration, the receipt of which is hereby acknowledged, Assignor
has sold, assigned, transferred and conveyed and by these presents does hereby
sell, assign, transfer and convey, unto said Assignee, its successors and
assigns, the entire right, title and interest in and to the Patents and Patent
Applications as set forth and described in Schedule A attached hereto and all
divisions, continuations, continuations-in-part and renewals thereof, and all
Patents of the United States which may be granted thereon and all reissues,
re-examinations and extensions thereof; and all applications for industrial
property protection, including, without limitation, all applications for
patents, utility models, and designs which may hereafter be filed for an
invention described in any of the foregoing applications in any country or
countries foreign to the United States, together with the right to file such
applications and the right to claim for the same the priority rights derived
from said United States applications under the Patent Laws of the United States,
the International Convention for the Protection of Industrial Property, or any
other international agreement or the domestic laws of the country in which any
such application is filed, as may be applicable; and all forms of industrial
property protection, including, without limitation, patents, utility models,
inventors' certificates and designs which may be granted for said invention in
any country or countries foreign to the United States and all extensions,
renewals and reissues thereof; together with all claims for damages by reason of
past infringement, with the right to xxx for, and collect the same for the use
of Assignee, its successors and assigns; provided, however, that there shall be
excluded from the foregoing conveyance any claims of said Patents and Patent
Applications set forth on Schedule A that pertain specifically to [*] as defined
above.
Assignor hereby authorizes and requests the Commissioner of Patents and
Trademarks of the United States, and any official of any country or countries
foreign to the United States, whose duty it is to issue patents or other
evidence or forms of industrial property protection on
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applications as aforesaid, to issue the same to the Assignee, its successors,
legal representatives and assigns, in accordance with the terms of this
instrument.
Assignor hereby covenants and agrees that it has full right to convey the
entire interest herein assigned, and that it has not executed, and will not
execute, any agreement in conflict herewith.
This assignment is effective as of this _____ day of July, 1997.
IN WITNESS WHEREOF, Assignor has caused these presents to be signed by a
duly authorized officer.
MITOTIX, INC., Assignor
By:
------------------------------------
Name:
Title:
Witnesses:
Signature:
-------------------------
Name
Signature:
-------------------------
Name:
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SCHEDULE A
1. [*]
2. [*]
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EXHIBIT 1.07(a)(v)
CONFIDENTIALITY AGREEMENT
This Confidentiality Agreement (the "Agreement") is made as of July __,
1997 by and between ARIAD Pharmaceuticals, Inc. ("ARIAD") and Mitotix Inc.
("Mitotix"). All capitalized terms used herein and not defined herein shall have
the meanings ascribed to such terms in the Technology Purchase and Sale
Agreement between ARIAD and Mitotix dated as of the date hereof (the "Purchase
Agreement").
WHEREAS, pursuant to the Purchase Agreement, Mitotix has transferred all of
its right, title and interest in the Invention, the Know-How and the Patents to
ARIAD and ARIAD has granted a license under the Invention, the Know-How and the
Patents in the Field of Diagnostic Products pursuant to a License Agreement of
even date herewith between ARIAD and Mitotix (the "License").
NOW, THEREFORE, in consideration of the Purchase Agreement and for other
good and valuable and consideration, the receipt and sufficiency which is hereby
acknowledged, the parties hereto agree as follows:
1. DEFINITION OF CONFIDENTIAL INFORMATION. For purposes of this Agreement,
"Confidential Information" shall mean (a) the Know-How, (b) all Confidential
Items as defined in the Confidential Disclosure Agreement between ARIAD and
Mitotix dated September 20 and September 24, 1996, (c) all information
concerning the terms of the Purchase Agreement [*].
Notwithstanding the foregoing, Confidential Information shall not include
information which:
[*]
2. DISCLOSURE OF CONFIDENTIAL INFORMATION.
(a) From and after the date hereof, Mitotix shall hold in confidence and
shall not disclose any Confidential Information except (i) as expressly
permitted under this Agreement, the Purchase Agreement or the License, or (ii)
as required by applicable law or legal process, in which instance Mitotix shall
provide ARIAD with prior written notice of any such disclosure so that ARIAD can
seek an appropriate protective order. [*]
(b) From and after the date hereof, ARIAD shall hold in confidence and
shall not disclose any Confidential Information which either (1) relates solely
to the Field of Diagnostic Products or to [*] (as defined in the Purchase
Agreement), or (2) represents business or commercial information of Mitotix
which does not constitute or relate solely to the Transferred Assets except (i)
as expressly permitted under this Agreement, the Purchase Agreement or the
License, or (ii) as required by applicable law or legal process, in which
instance ARIAD shall
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provide Mitotix with prior written notice of any such
disclosure so that Mitotix can seek an appropriate protective order. [*]
(c) Either party may disclose or permit the disclosure of any Confidential
Information to its directors, officers, employees, consultants and advisors who
are obligated to maintain the confidential nature of such Confidential
Information and who need to know such Confidential Information for purposes
contemplated by the Agreement, the License or the Purchase Agreement.
3. MISCELLANEOUS.
(a) ENTIRE AGREEMENT. This Agreement together with the Purchase Agreement
embodies the entire agreement and understanding between the parties hereto with
respect to the subject matter hereof and supersedes all prior oral or written
agreements and understandings relating to the subject matter hereof.
(b) MODIFICATIONS AND AMENDMENTS. The terms and provisions of this
Agreement may be modified or amended only by written agreement executed by both
parties hereto.
(c) ASSIGNMENT. [*]
(d) GOVERNING LAW. This Agreement and the rights and obligations of the
parties hereunder shall be construed in accordance with and governed by the
internal law of The Commonwealth of Massachusetts, without giving effect to the
conflict of law principles thereof.
(e) SEVERABILITY. In the event that any court of competent jurisdiction
shall finally determine that any provision, or any portion thereof, contained in
this Agreement shall be void or unenforceable in any respect, then such
provision shall be deemed limited to the extent that such court determines it
enforceable, and as so limited shall remain in full force and effect. In the
event that such court shall determine any such provision, or portion thereof,
wholly unenforceable, the remaining provisions of this Agreement shall
nevertheless remain in full force and effect.
(f) HEADINGS AND CAPTIONS. The headings and captions of the various
subdivisions of this Agreement are for convenience of reference only and shall
in no way modify, or affect, or be considered in construing or interpreting the
meaning or construction of any of the terms or provisions hereof.
(g) COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as an
instrument under seal as of the date first above written.
ARIAD PHARMACEUTICALS, INC.
By: ______________________________
Name:
Title:
MITOTIX INC.
By: ______________________________
Name:
Title:
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EXHIBIT 1.07(a)(vi)
COOPERATION AGREEMENT
This Cooperation Agreement (the "Agreement") is executed and delivered by
the undersigned (the "Inventor") as of July ____, 1997.
WHEREAS, pursuant to the Technology Purchase and Sale Agreement by and
between ARIAD Pharmaceuticals Inc. ("ARIAD") and Mitotix, Inc. ("Mitotix") dated
as of the date hereof (the "Purchase Agreement"), Mitotix has transferred all of
its right, title and interest in and to the Invention, the Patents and the
Know-How to ARIAD and has agreed to cooperate with ARIAD in the prosecution of
the Patents after the date hereof; and
WHEREAS, the Inventor is an employee of Mitotix and is listed as an
inventor in one or more of the patent applications included in the Patents, and
the Inventor has executed and delivered to Mitotix a Invention, Non-Disclosure
and Non-Competition Agreement (the "Prior Agreement") pursuant to which the
Inventor has agreed, among other things, to keep confidential certain
Proprietary Information (as defined therein), to assign to Mitotix all the
Inventor's right, title and interest in and to the Invention and the Patents and
to cooperate fully with Mitotix, both during and after the Inventor's employment
with Mitotix, with respect to the procurement, maintenance and enforcement of
the Patents.
NOW, THEREFORE, in consideration of the premises and for other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Inventor hereby covenants and agrees with ARIAD as follows:
1. DEFINITIONS. For purposes of this Agreement:
(a) The "Confidential Information" shall mean all materials, information
and know-how, whether or not in writing, concerning the Invention, the Patents,
the Supplemental Patent Materials and the Know-How.
(b) The "Invention" shall mean the inventions disclosed in the Patents (as
hereinafter defined) except as excluded by Section 1.05 of the Purchase
Agreement.
(c) The "Patents" shall mean patent applications listed on Schedule A, and
all intellectual property rights (other than rights pertaining to [*] as defined
in the Purchase Agreement) in such applications.
(d) The "Supplemental Patent Materials" shall mean the prosecution files
for the patent applications listed on Schedule A (including, without limitation,
all drafts, notes, drawings or figures, official correspondence with patent
offices, other correspondence and copies of cited references).
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(e) The "Know-How" shall mean all laboratory notebooks and other primary
data, research results, records and documentation, research plans, proposals,
conclusions, know-how, specifications and information, to the extent any of the
foregoing are recorded in any tangible form (including, without limitation,
gels, photographs, print-outs, electronic files and paper documents), which are
owned by, licensed to or in the possession of Mitotix and which relate to the
discovery of or are necessary or materially useful for the practice of the
Invention, the Patents or the Reagents (as defined in the Purchase Agreement),
and all intellectual and tangible property rights in the foregoing, including
the right to file additional patent applications based thereon.
(f) The "License" shall mean the License Agreement dated as of even date
herewith between ARIAD and Mitotix.
2. CONFIDENTIALITY. The Inventor acknowledges that, as between ARIAD and
the Inventor, the Confidential Information shall be the exclusive property of
ARIAD. [*] the Inventor will not disclose any Confidential Information to others
or use the same for any purposes without the prior written approval of ARIAD,
unless and until such Confidential Information has become public knowledge
without fault by the Inventor.
3. INVENTOR REPRESENTATIONS. The Inventor represents, warrants and confirms
to ARIAD that the Inventor has assigned all of the Inventor's right, title and
interest in and to the Invention, the Patents and the Know-How to Mitotix. [*]
4. COOPERATION. The Inventor agrees to cooperate reasonably with ARIAD with
respect to the procurement, maintenance and enforcement of the Patents (both in
the United States and foreign countries) and the Know-How, provided that (a) the
Inventor will be entitled to reasonable compensation and reimbursement from
ARIAD for time and expenses incurred by the Inventor in connection with such
cooperation, other than for time spent as an employee of Mitotix, (the specific
terms of such compensation and reimbursement to be determined by mutual
agreement prior to the provision of such cooperation), and (b) such cooperation
and assistance by the Inventor shall be scheduled and coordinated by mutual
agreement between the Inventor and ARIAD so as not to interfere with the
Inventor's performance of services to Mitotix or any subsequent employer.
Notwithstanding the foregoing, the Inventor shall not be required to spend more
than [*] in any [*] period performing services for ARIAD under this Agreement.
5. CONSENT OF MITOTIX. Mitotix hereby confirms that the Inventor has
executed this Agreement at the request of Mitotix and that Mitotix consents to
the performance by the Inventor of the obligations of the Inventor hereunder and
agrees that the performance of such obligations by the Inventor shall not be
considered by Mitotix to be inconsistent with the Inventor's obligations as an
employee of Mitotix.
6. MISCELLANEOUS.
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(a) ENTIRE AGREEMENT. This Agreement embodies the entire agreement and
understanding between the parties hereto with respect to the subject matter
hereof and supersedes all prior oral or written agreements and understandings
relating to the subject matter hereof.
(b) MODIFICATIONS AND AMENDMENTS. The terms and provisions of this
Agreement may be modified or amended only by written agreement executed by both
parties hereto.
(c) ASSIGNMENT. This Agreement and any right hereunder may not be assigned
by ARIAD without the written consent of the Inventor, which shall not be
unreasonably withheld, except that ARIAD may, without such consent, assign this
Agreement and its rights hereunder, in whole or in part, (i)to any of its
affiliates, [*].
(d) GOVERNING LAW. This Agreement and the rights and obligations of the
parties hereunder shall be construed in accordance with and governed by the
internal law of The Commonwealth of Massachusetts, without giving effect to the
conflict of law principles thereof.
(e) SEVERABILITY. In the event that any court of competent jurisdiction
shall finally determine that any provision, or any portion thereof, contained in
this Agreement shall be void or unenforceable in any respect, then such
provision shall be deemed limited to the extent that such court determines it
enforceable, and as so limited shall remain in full force and effect. In the
event that such court shall determine any such provision, or portion thereof,
wholly unenforceable, the remaining provisions of this Agreement shall
nevertheless remain in full force and effect.
(f) HEADINGS AND CAPTIONS. The headings and captions of the various
subdivisions of this Agreement are for convenience of reference only and shall
in no way modify, or affect, or be considered in construing or interpreting the
meaning or construction of any of the terms or provisions hereof.
(g) EXPENSES. Mitotix agrees to pay the reasonable expenses of the Inventor
in connection with the negotiation of this Agreement.
(h) [*]
(i) TERMINATION. [*] This Agreement shall terminate on [*], but may be
extended by ARIAD for [*] additional years on sixty (60) days prior notice in
the event that [*].
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IN WITNESS WHEREOF, the Inventor has executed this Agreement as an
instrument under seal as of the date first above written.
THE INVENTOR
-------------------------------
Name:
AGREED AND ACCEPTED:
ARIAD PHARMACEUTICALS, INC.
By:/s/
--------------------------------- ---------------------
Name: Date:
Title:
MITOTIX, INC.
By:--------------------------------- ---------------------
Name: Date:
Title:
4
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SCHEDULE A
PATENTS
1. [*]
2. [*]
3. [*]
4. [*]
5. [*]
6. [*]
7. [*]
8. [*]
