Exhibit 10.85
*Certain confidential information contained in this document, marked by
brackets, has been omitted and filed with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended
AGREEMENT REGARDING SUBLICENSES
(XXXXXXX CORPORATION/XXXXXXX PHARMACEUTICAL, INC.)
This AGREEMENT REGARDING SUBLICENSES (the "Agreement") is made effective
as of December 2, 1998 (the "Effective Date") between Xxxxxxx Pharmaceutical,
Inc. ("CPI"), the Xxxx-Xxxxxx Cancer Institute, Inc. ("Xxxx-Xxxxxx"), and
Xxxxxxx Corporation ("Xxxxxxx").
BACKGROUND
WHEREAS, CPI is developing and intends to commercialize a
radioimmunotherapy (Bexxar(TM)) which includes an antibody known as X0 ("X0");
WHEREAS, B1 was derived from a B1 hybrodoma and licensed by Xxxx-Xxxxxx to
Xxxxxxx for diagnostic applications pursuant to the Agreement between
Xxxx-Xxxxxx and Xxxxxxx dated July 23, 1981, as modified by the Modification
Agreement between Xxxx-Xxxxxx and Xxxxxxx dated March 1, 1983 and for
therapeutic applications pursuant to the agreement between Xxxx-Xxxxxx and
Xxxxxxx, dated April 28, 1983, as modified by the Modification Agreement No. 2
between Xxxx-Xxxxxx and Xxxxxxx, dated April 1, 1987, and the agreement between
Xxxx-Xxxxxx and Xxxxxxx, dated April 1, 1994 (the latter agreement referred to
hereinafter as the "'94 Agreement," and the foregoing five agreements
collectively referred to hereinafter as the "Prior Agreements").
WHEREAS, Xxxxxxx granted CPI an exclusive sublicense to B1 for certain
therapeutic applications and a non-exclusive sublicense to B1 for certain
diagnostic applications pursuant to an Assignment Agreement dated February 24,
1995 (the "Assignment Agreement"), attached hereto as Attachment I, and to help
expedite and accelerate the process of commercialization, CPI would like to
grant further sublicenses of the sublicense for B1 granted to it by Xxxxxxx;
WHEREAS, Xxxxxxx is willing to agree that CPI has such rights and
Xxxx-Xxxxxx is willing to agree that CPI has such rights, on the following terms
and conditions set forth in this Agreement;
WHEREAS, Attachment II hereto sets forth provisions derived from the Prior
Agreements, with minor clarifications, which are pertinent to CPI and its
Sub-Sublicensee(s) (as hereinafter defined); and
WHEREAS, the parties wish to provide additional clarifications in this
Agreement regarding the terms and conditions applicable to CPI and its
Sub-Sublicensee(s).
AGREEMENT
NOW, THEREFORE, intending to be legally bound, the parties hereby agree as
follows:
1. Xxxx-Xxxxxx confirms and warrants that as set forth in the Prior
Agreements, Xxxxxxx holds a license to make, have made, use, offer for sale,
sell, have sold and import B1,
and any related technical information licensed to Xxxxxxx under the Prior
Agreements, for diagnostic and therapeutic applications (the "B1 Technology")
and to use the hybridoma from which B1 was derived to accomplish such purposes.
Such license is currently valid, binding and in full force and effect and,
except as provided in Paragraph A of Attachment II, is exclusive to Xxxxxxx for
therapeutic and diagnostic applications as set forth in the Prior Agreements and
will remain exclusive to the extent permitted by the applicable statutes,
implementing regulations and policies of the Federal government, and any
agreements between Xxxx-Xxxxxx and the Federal government relating to the same,
including the Xxxx Xxxx Act and any Institutional Patent Agreement(s), as they
may apply to the commercialization of the B1 Technology. Xxxx-Xxxxxx shall not
act in any manner inconsistent with Xxxx-Xxxxxx'x xxxxx of such exclusive
license to Xxxxxxx for the B1 Technology unless required or mandated to do so by
the Federal government. Xxxxxxx and CPI confirm and warrant to each other that
CPI has been granted a sublicense under the Assignment Agreement that is
currently valid, binding, and in full force and effect. No party to this
Agreement is aware of any breach of any term or condition of the Prior
Agreements as they pertain to the B1 Technology.
2. Xxxxxxx and CPI represent and warrant that the Assignment Agreement,
reproduced in this Agreement as Attachment I and incorporated herein by
reference, contains all the terms and conditions governing CPI's rights and
obligations relating to B1 as between Xxxxxxx and CPI, and said rights permit
the further sublicense by Xxxxxxx of B1 Technology to Xxxxxxx Cellular
Therapies, Inc. for [*].
3. Xxxx-Xxxxxx agrees that Xxxxxxx has the right to authorize CPI to grant
further sublicenses of the sublicense granted to CPI by Xxxxxxx pursuant to the
Assignment Agreement, so long as such further sublicenses are consistent with
the obligations of CPI set forth herein. Xxxxxxx hereby grants such
authorization to CPI. Such sublicenses may include the right for
Sub-Sublicensees to grant further sublicenses in a manner consistent with the
requirements of this Agreement. Xxxxxxx and CPI agree that the granting of such
sublicenses shall not be deemed to be an abandonment under Section 6 of the
Assignment Agreement. Xxxxxxx agrees that it is not hereby relieved of any
obligations that it continues to owe to Xxxx-Xxxxxx with respect to the B1
Technology under the Prior Agreements.
4. Each party acknowledges and agrees that the terms and conditions under
which CPI holds a sublicense and may authorize the granting of further
sublicenses under a sub-sublicense agreement (a "Sub-Sublicense Agreement") are
set forth in this Agreement, including Attachment II, which is an integral part
of this Agreement. Xxxx-Xxxxxx and CPI agree that the obligations to Xxxx-Xxxxxx
of a sublicensee of CPI under any Sub-Sublicense Agreement are those set forth
in Paragraphs B, D, E and G of Attachment II (provided that royalties shall be
payable by CPI in respect of Net Sales made by CPI and all of the
Sub-Sublicensees) and that Xxxx-Xxxxxx retains the rights set forth in Paragraph
A of Attachment II. CPI agrees that it will insure that any Sub-Sublicensee
under a Sub-Sublicensee Agreement is aware of and will perform its obligations
under the paragraphs of Attachment II set forth in the preceding sentence and
under Section 7(b) of this Agreement. Further, CPI agrees and Xxxxxxx
acknowledges that Xxxx-Xxxxxx will be informed by written notice from CPI of the
identity of the Sub-Sublicensee(s).
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5.
(a) The parties acknowledge that the royalties owed to Xxxx-Xxxxxx
on the account of Net Sales of Licensed Products made by CPI or any
Sub-Sublicensee(s) are the royalties that Xxxxxxx would have owed to Xxxx-Xxxxxx
if Xxxxxxx had made such net Sales directly. CPI's royalty obligations to
Xxxx-Xxxxxx are governed by the terms set forth in this Section 5 and in
Paragraph C of Attachment II. CPI's obligations to pay royalties as provided in
this Section 5 shall commence on the date of first commercial sale of Licensed
Products by CPI or a Sub-Sublicensee and shall continue for so long as Licensed
Products are sold by CPI or a Sub-Sublicensee in the Territory. If the laws of
any foreign country(ies) within the Territory impose restrictions upon the
period of time that a licensor may receive royalties from its licensee(s) for
unpatented products such as B1, then CPI agrees to pay royalties on Net Sales of
Licensed Products in such country(ies) only for the maximum period of time
permitted by the law of such country(ies). For purposes of this Agreement, (A)
"Licensed Product" shall mean B1 and any product that contains B1, (B)
"Sub-Sublicensee" shall mean any corporation, partnership or business
organization to which CPI (or a further authorized sublicensee of CPI) grants
rights to enable such entity to sell Licensed Products, (C) "Territory" shall
mean all the countries of the world, and (D) "Net Sales" shall have the meaning
set forth in Paragraph C.2 of Attachment II.
(b) Xxxxxxx and Xxxx-Xxxxxx acknowledge and agree that pursuant to
the Prior Agreement, Xxxxxxx paid to Xxxx-Xxxxxx advance royalty payments
totaling four million five hundred thousand United States dollars (US$4,500,000)
(the "Royalty Credit"). The parties agree that CPI will pay to Xxxxxxx the first
four million five hundred thousand United States dollars (US4,500,000) in
royalties payable pursuant to Section 5(c) of this Agreement. After the Royalty
Credit has been fully recovered by Xxxxxxx, either by its receipt of four
million five hundred thousand United States dollars (US$4,500,000) in cash or
CPI stock purchase according to the Assignment Agreement, CPI shall thereafter
make royalty payments directly to Xxxx-Xxxxxx, as set forth herein.
(c) The royalties that shall be due and payable by CPI in respect of
the exercise of its rights under this Agreement and the Assignment Agreement
shall be as follows:
(i) On account of Net Sales of Licensed Products made by CPI
or any Sub-Sublicensee(s), CPI shall pay a royalty at the rate of [*] until [*]
and thereafter the royalty on Licensed Products shall be reduced to the rate of
[*].
(ii) CPI represents that it has an obligation to pay royalties
to the University of Michigan for certain patent rights transferred or licensed
by the University of Michigan to Xxxxxxx, including without limitation [*] which
relate to the use of an unlabeled and radiolabeled anti-CD20 antibody such as B1
in accordance with a radioimmunotherapy protocol the "Therapy Patents"). CPI
further represents that B1 will be offered for sale and sold by CPI and any
Sub-Sublicensee(s) for use in accordance with the invention(s) described and
claimed in the Therapy Patents. Based upon such representations, Xxxx-Xxxxxx
agrees that [*], with the result that royalties shall be payable to Xxxx-Xxxxxx
under this Agreement at the rate of [*] on
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Net Sales of Licensed Products in the United States in respect of which
royalties are also due and paid to the University of Michigan. However, no such
[*] shall be applied or allowed for any payments made to the University of
Michigan under said license in respect of Net Sales of Licensed Products outside
the United States. The parties further agree that [*] shall not have any effect
on the future construction or application of such Paragraph C.1 if CPI seeks any
further reduction in royalties in respect of any other third party technology.
(iii) The parties agree that in no event shall the royalty
rate on account of Net Sales of Licensed Products made by CPI or any
Sub-Sublicensee(s) be [*] either under this Section 5 or Paragraph C.1 of
Attachment II without the express written consent of Xxxx-Xxxxxx.
6. CPI agrees that within sixty (60) days after execution of a
Sub-Sublicense Agreement, CPI will forward to Xxxx-Xxxxxx a summary of the
Sub-Sublicense Agreement and copies of those provisions of the Sub-Sublicense
Agreement that CPI reasonably believes are relevant to CPI's obligations to
Xxxx-Xxxxxx as provided herein which shall in any event include the provisions
of the Sub-Sublicense Agreement addressing the subject matter of the terms and
conditions identified in Paragraphs A, B, D, E and G of Attachment II.
7. Xxxxxxx and CPI agree to the following insurance and indemnification
obligations.
(a) XXXXXXX'X INSURANCE AND INDEMNIFICATION OBLIGATIONS TO
XXXX-XXXXXX: Xxxxxxx agrees that it is bound by the insurance and
indemnification obligations to Xxxx-Xxxxxx under Article XV of the '94 Agreement
and Article VIII of the '94 Agreement's Appendix A; and that such obligations
apply not only to the activities of Xxxxxxx and CPI, but also to the activities
of any of CPI's further sublicensee(s) pursuant to a sub-sublicense granted by
CPI. Xxxxxxx'x obligations to Xxxx-Xxxxxx under Article XV of the '94 Agreement
and Article VIII of the '94 Agreement's Appendix A survive termination of this
Agreement or Xxxxxxx'x license to the B1 Technology under the Prior Agreements.
(b) CPI AND ANY FURTHER SUBLICENSEE(S)' INSURANCE AND
INDEMNIFICATION OBLIGATIONS TO XXXXXXX: Because Xxxxxxx is obligated under
Section 7(a) to indemnify and defend Xxxx-Xxxxxx and to procure general
liability insurance as set forth in Article XV of the '94 Agreement and Article
VIII of the '94 Agreement's Appendix A, even as to claims, causes of action,
etc., that arise from CPI's activities or those of any Sub-Sublicensee(s), CPI
hereby agrees that it owes, and shall require that all further
Sub-Sublicensee(s) owe, insurance and indemnification obligations to Xxxxxxx
that are equal to the insurance and indemnification obligations to Xxxx-Xxxxxx
under Article XV of the '94 Agreement and Article VIII of the '94 Agreement's
Appendix A.
(c) The parties agree that, for purposes of Sections 7(a) and 7(b)
hereof, Article XV of the '94 Agreement and Article VIII of the '94 Agreement's
Appendix A are hereby incorporated by reference as an integral part of this
Agreement.
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8. Upon any termination of Xxxxxxx'x license to the B1 Technology, this
Agreement will remain in full force and effect with CPI as the direct licensee
of Xxxx-Xxxxxx for the rights granted pursuant to the Assignment Agreement,
provided that:
(a) CPI is not then in default of its obligations as provided
herein; and
(b) CPI promptly agrees in writing to be bound by the insurance and
indemnification obligations Xxxxxxx has to Xxxx-Xxxxxx as set forth herein.
From and after the date on which CPI becomes a direct licensee of Xxxx-Xxxxxx,
upon any termination of CPI's license to the B1 Technology, any Sub-Sublicensee
that is not then in default of its obligations under its Sub-Sublicense
Agreement may elect by prompt written notice to Xxxx-Xxxxxx to retain the rights
granted to it under such Sub-Sublicense Agreement as a direct licensee of
Xxxx-Xxxxxx, provided that such Sub-Sublicensee agrees in writing to be bound by
the terms of this Agreement. Notice is considered promptly given if made by a
Sub-Sublicensee within thirty (30) days after written notice of termination of
CPI's license is provided to the Sub-Sublicensee by Xxxx-Xxxxxx.
9. Xxxx-Xxxxxx acknowledges that CPI is bound only to those terms and
conditions contained herein, including those in Attachment II. To the extent
that the terms and conditions of this Agreement are inconsistent with the Prior
Agreements, this Agreement has a superseding effect as between Xxxx-Xxxxxx and
CPI. The parties acknowledge that this Agreement has been entered into in a good
faith effort to clarify the terms and conditions under which CPI is sublicensed
and authorized to grant further sublicenses for the B1 Technology and which CPI
is obligated to include in any Sub-Sublicense Agreement authorized hereunder.
This Agreement does not affect any positions as between Xxxx-Xxxxxx and Xxxxxxx
as regards the Prior Agreements, except with respect to the Royalty Credits and
the insurance and indemnification obligations set forth in Section 7(a) hereof.
10. As of the date of this Agreement, Xxxx-Xxxxxx believes (without the
separate concurrence of CPI) that Federal law and policy requires that
antibodies comprising the B1 Technology to be leased or sold in the United
States must be manufactured substantially in the United States. CPI agrees to
seek to confirm its understanding that said requirement does not apply to such
B1 Technology, or in the alternative to cooperate with Xxxx-Xxxxxx to seek a
waiver of any such requirement as may exist. CPI acknowledges that Xxxx-Xxxxxx
cannot guarantee that such a waiver can be obtained. CPI shall bear all
reasonable costs associated with the seeking of such waiver by Xxxx-Xxxxxx and
shall be primarily responsible for preparing the documentation necessary to
support a waiver request. If such confirmation is not received and such waiver
is not granted, CPI shall comply with said requirement in such manner as may be
required by the United States government.
11. Any notice or other communication required or permitted to be given to
any party hereto shall be in writing and shall be deemed to have been properly
given and to be effective on the date of delivery if delivered in person or five
(5) days after mailing by registered or certified mail, postage paid, or by
other courier with evidence of receipt to the other party(ies) as follows.
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(a) In the case of Xxxx-Xxxxxx, the proper address for all notices
and communications shall be:
Director for Research
Xxxx-Xxxxxx Cancer Institute, Inc.
00 Xxxxxx Xxxxxx
Xxxxxx, XX 00000
with a copy to:
General Counsel
Xxxx-Xxxxxx Cancer Institute, Inc.
00 Xxxxxx Xxxxxx
Xxxxxx, XX 00000
or other individuals or addresses as shall hereafter be furnished by written
notice to the other parties hereto.
(b) In the case of Counter, the proper address for all notices and
communications shall be:
VP-Finance
Xxxxxxx Corporation
00000 Xxxxxxxxx 000xx Xxxxxx
Xxxxx, Xxxxxxx 00000-0000
with a copy to:
Corporate Counsel
Xxxxxxx Corporation
00000 Xxxxxxxxx 000xx Xxxxxx
Xxxxx, Xxxxxxx 00000-0000
or other individuals or addresses as shall hereafter be furnished by written
notice to the other parties hereto.
(c) In the case of CPI, the proper address for all notices and
communications shall be:
Xxxxxxx Pharmaceutical, Inc.
000 Xxxxxxxxxx Xxxxxx, Xxxxx 000
Xxxx Xxxx, XX 00000
with a copy to:
Xxxxxx Godward LLP
Attn: Xxxxx Xxxxx, Esq.
Five Palo Alto Square
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0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000
or other individuals or addresses as shall hereafter be furnished by written
notice to the other parties hereto.
12.
(a) Any controversy or claim arising out of, or relating to, any
provisions of this Agreement, or the breach thereof, which cannot otherwise be
resolved by good faith negotiations between the parties or by some form of
alternate dispute resolution other than arbitration shall be resolved by final
and binding arbitration in New York, New York under the rules of the American
Arbitration Association, or the Patent Arbitration Rules if applicable, then
obtaining.
The arbitration shall be subject to the following terms:
(i) The number of arbitrators shall be one (1).
(ii) The arbitrator shall be an independent, impartial third
party having no direct or indirect personal or financial relationship to any of
the parties to the dispute, who has agreed to accept the appointment as
arbitrator on the terms set out in this Section 12.
(iii) The arbitrator shall be an active or retired attorney,
law professor or judicial officer with at least five (5) years experience in
general commercial matters and a familiarity with the laws governing proprietary
rights in intellectual property and the technology in dispute.
(iv) The arbitrator shall be selected as follows:
(1) Each party shall submit a description of the matter
to be arbitrated to the American Arbitration Association at its Regional Office
in New York, New York. Said Association shall submit to the parties a list of
the arbitrators available to arbitrate any dispute between them. Thereafter,
each party shall select, in numerical order, those persons on said list
acceptable as arbitrators and return the same to the Association. The first
arbitrator acceptable to all parties shall be deemed the selected arbitrator
with respect to the dispute then at issue under this Agreement. In the event of
a failure to select a mutually agreeable arbitrator, the Association shall be
requested to submit as many subsequent lists of arbitrators as shall be
necessary to effect a mutual selection.
(2) If the method of selection set out in paragraph
(iv)(1) fails for any reasons, then either party may petition any state or
federal court in New York having jurisdiction for appointment of the arbitrator
in accordance with applicable law, provided that the arbitrator must satisfy the
requirements of (ii) and (iii) above.
(v) The arbitrator shall announce the award in writing
accompanied by written findings explaining the facts determined in support of
the award and any relevant conclusions of law.
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(vi) Unless otherwise provided in this Section or extended by
agreement of the parties, each party shall submit an initial request for
designation of an arbitrator within [*] after any request for arbitration,
the dispute shall be submitted to the arbitrator within [*] after the arbitrator
is selected and a decision shall be rendered within [*] after the dispute is
submitted.
(vii) The fees of the arbitrator and any other costs and fees
associated with the arbitration shall be paid in accordance with the decision of
the arbitrator.
(viii) The arbitrator shall have no power to add to, subtract
from, or modify any of the terms or conditions of this Agreement. Any award
rendered in such arbitration may be enforced by any party to the dispute in
either the courts of the State of New York or a United States District Court in
New York, New York, to whose jurisdiction for such purposes each party hereto
hereby irrevocably consents and submits.
(b) Notwithstanding the foregoing, in the event that the controversy
or claim arises from an allegation that a termination under this Agreement was
not appropriate, the Agreement shall not be considered terminated until such
time as the arbitrator has made a determination that the termination was
appropriate.
(c) Notwithstanding the foregoing, nothing in this Section 12 shall
be construed to waive any rights or timely performance of any obligations
existing under this Agreement.
13. For the purpose of this Agreement and all services to be provided
hereunder, each party shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other. No party shall have
authority to make any statements, representations or commitments of any kind, or
to take any action, that will be binding on another party hereto.
14. If any one or more of the provisions of this Agreement shall be held
to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this Agreement shall not in any
way be affected or impaired thereby.
15. Neither this Agreement, not any part hereof, shall be assignable by
any party hereto without the express written consent of the other parties, which
consent shall not be unreasonably withheld. However, any party hereto may assign
this Agreement in connection with the merger, consolidation, transfer or sale of
all or substantially all of its assets. Any attempted assignment without such
consent shall be void.
16. The validity and interpretation of this Agreement and the legal
relations of the parties to it shall be governed by the laws of the Commonwealth
of Massachusetts.
17. The parties agree that they have participated equally in the formation
of this Agreement and that the language herein should not be presumptively
construed against any party hereto.
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18. No change, modification, extension, termination or waiver of any of
this Agreement and provisions herein containing any obligations owed
Xxxx-Xxxxxx, shall be valid unless made in writing and signed by a duly
authorized representative of each party.
19. This Agreement may be executed in one or more counterparts, each of
which shall be an original and all of which shall constitute together the same
document.
IN WITNESS WHEREOF, Xxxx-Xxxxxx, Xxxxxxx and CPI have executed this
Agreement in triplicate originals by their respective authorized officers as of
the Effective Date.
XXXX-XXXXXX CANCER INSTITUTE, INC.
By: /s/ XXXX XXXXXXXXXX, PH.D.
Name: Xxxx Xxxxxxxxxx, Ph.D.
Title: Director, Office of Technology
XXXXXXX CORPORATION XXXXXXX PHARMACEUTICAL, INC.
By: /s/ XXXXXX X. XXXXXXX By: /s/ XXXXXXX X. XXXXXX
Name: Xxxxxx X. Xxxxxxx Name: Xxxxxxx X. Xxxxxx
Title:Vice President, Finance Title:
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*Certain confidential information contained in this document, marked by
brackets, has been omitted and filed with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended
ATTACHMENT I
ASSIGNMENT AGREEMENT
BETWEEN
XXXXXXX CORPORATION
AND
XXXXXXX PHARMACEUTICAL, INC.
DATED AS OF FEBRUARY 24, 1995
The full text of Attachment I was originally attached to the registration
statement of Xxxxxxx Pharmaceutical, Inc. on Form S-1 (File No. 333-17661) filed
with the Commission on December 11, 1996. Pursuant to a confidential treatment
request submitted to the Commission by Xxxxxxx, the Commission granted
confidential treatment with respect to certain terms of the Assignment
Agreement.
*Certain confidential information contained in this document, marked by
brackets, has been omitted and filed with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended
ATTACHMENT II
LICENSING TERMS AND CONDITIONS
BINDING ON CPI AND FURTHER SUBLICENSEES
A. RETAINED RIGHTS.
Xxxx-Xxxxxx retains the right to use the B1 Technology [*].
Xxxx-Xxxxxx further retains the right [*] .
The rights and licenses confirmed in Section 1 of this Agreement are
subject to, where applicable, a nonexclusive license to the United States
government to the extent required by Federal law and policy.
B. DUE DILIGENCE.
CPI shall [*] to diligently make a therapeutic product based upon the B1
Technology available to the general public.
CPI shall provide annual reports to Xxxx-Xxxxxx on its specific goals and
objectives for commercializing the B1 Technology. Such reports shall be provided
on January 15 of each year or on such other date as CPI and Xxx-Xxxxxx mutually
agree to in writing.
C. ROYALTIES.
1. CPI has the right to enter into Sub-Sublicense Agreements with
other entities for the rights, privileges and licenses that CPI holds as set
forth in the Assignment Agreement and this Agreement, at royalty rates [*].
Where CPI must obtain a license from a third party in order to practice the B1
Technology, either [*], then the otherwise applicable royalty rate shall [*] to
the extent that CPI or its Sub-Sublicensee actually pays royalties to the third
party, but in no event will the royalty rate be [*] either under Section 5 of
this Agreement or this Paragraph C.1.
2. "Net Sales" shall mean [*]:
(A) [*];
(B) [*];
(C) [*]; and
(D) [*].
Licensed Products shall [*].
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In the event CPI enters into a Sub-Sublicense Agreement that contains a
different definition of Net Sales, subject to the approval of Xxxx-Xxxxxx, CPI
may utilize such definition in the calculation and reporting of royalties
hereunder. Xxxx-Xxxxxx agrees [*].
3. Subject to Section 5(b) of this Agreement, the payment of
royalties shall be made by CPI to Xxxx-Xxxxxx within [*] after March 31, June
30, September 30 and December 31 each year during the term of this Agreement
covering the quantity of Licensed Products sold by CPI or its Sub-Sublicensee(s)
during the preceding calendar quarter. All payments to be made hereunder shall
be paid in United States dollars in Boston, Massachusetts, or at such other
place and in such other way, as Xxxx-Xxxxxx may reasonably delegate, without
deduction of exchange, collection or other charges. For the purpose of
determining royalties due to Xxxx-Xxxxxx, Net Sales made in currencies other
than United States dollars will be converted to United States dollars at the
exchange rate quoted in the Wall Street Journal on the last day of the calendar
quarter in which such Net Sales were made [*]. Only a single royalty shall be
paid with respect to any Licensed Product, irrespective of the number of claims
of patent rights or technical information. In the event that any payment due
hereunder is not made when due, the payment shall accrue interest beginning on
the first day following the due date as herein specified, calculated at the
annual rate of the sum of (a) [*] plus (b) the prime interest rate quoted by the
Bank of Boston on the date said payment is due, the interest being compounded on
the last day of each calendar quarter, provided that in no event shall said
annual rate exceed the maximum legal rate in Massachusetts. The payment of such
interest shall not foreclose Xxxx-Xxxxxx from exercising any other rights it may
have as a consequence of the lateness of any payment. Should CPI fail to pay
Xxxx-Xxxxxx such royalties as are due and payable hereunder, Xxxx-Xxxxxx shall
have the right to terminate the license on [*] written notice, unless CPI shall
pay Xxxx-Xxxxxx within the [*] notice period all such royalties and interest
that are due and payable. Upon the expiration of the [*] period, if CPI shall
not have paid all such royalties and interest due and payable, Xxxx-Xxxxxx, at
its sole option, may immediately terminate this Agreement and all rights,
privileges and license granted hereunder.
D. REPORTS AND RECORDS.
Within [*] after March 31, June 30, September 30 and December 31 of each
year in which this Agreement is in effect, CPI shall deliver to Xxxx-Xxxxxx
full, true and accurate reports of its activities and those of its
Sub-Sublicensee(s), if any, relating to this Agreement during the preceding
three (3) month period. These reports shall include at least the following:
(A) Number of Licensed Products sold;
(B) Total xxxxxxxx for Licensed Products sold, where applicable;
(C) Deductions applicable to a determination of Net Sales; and
(D) Total royalties due.
Xxxxxxx and CPI shall keep, and CPI shall require any Sub-Sublicensee(s)
to keep, true books of account containing an accurate record of all data
necessary for the determination of the
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amounts payable to Xxxx-Xxxxxx, including the amounts of the Royalty Credit.
Such records (including information received from any Sub-Sublicensee(s)) shall
be kept at each entity's principal place of business, or the principal place of
business of the appropriate division of the entity for which records are being
maintained. Said records shall be available for inspection by a certified public
accountant, selected by Xxxx-Xxxxxx and reasonably acceptable to the applicable
entity during regular business hours for three (3) years following the end of
the calendar year to which they pertain, in order for Xxxx-Xxxxxx to ascertain
the correctness of any report and/or payment. The provisions of this paragraph
shall survive termination of this Agreement.
E. WARRANTIES, REPRESENTATION AND DISCLAIMERS.
XXXX-XXXXXX DOES NOT WARRANT THE VALIDITY OF ANY PATENT RIGHTS WHICH MAY
BE LICENSED PURSUANT TO THIS AGREEMENT AND MAKES NO REPRESENTATION WHATSOEVER
WITH REGARD TO THE SCOPE OF ANY PATENT RIGHTS OR THAT SUCH PATENT RIGHTS MAY BE
EXPLOITED BY XXXXXXX OR AFFILIATE(S) OR SUBLICENSEE(S) OF XXXXXXX WITHOUT
INFRINGING OTHER PATENTS; PROVIDED HOWEVER, THAT XXXX-XXXXXX REPRESENTS AND
WARRANTS THAT IT SHALL TAKE NO ACTION WHICH SHALL JEOPARDIZE ANY SUCH PATENT
RIGHTS AND HAS NO KNOWLEDGE OF ANY THIRD PARTY RIGHTS TO A LICENSED TECHNOLOGY
OTHER THAN RIGHTS HERETOFORE GRANTED TO THE UNITED STATES GOVERNMENT. IF
UNPATENTED BIOLOGICAL MATERIALS ARE LICENSED HEREUNDER, XXXX-XXXXXX MAKES NO
REPRESENTATION THAT SUCH MATERIALS OR THE METHODS USED IN MAKING OR USING SUCH
MATERIALS ARE FREE FROM LIABILITY FOR PATENT INFRINGEMENT.
XXXX-XXXXXX MAKES NO WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR OF FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO ANY PATENT, NONPUBLIC OR OTHER INFORMATION,
OR TANGIBLE RESEARCH PROPERTY, LICENSED OR WHICH OTHERWISE MAY BE PROVIDED TO
XXXXXXX AND HEREBY DISCLAIMS THE SAME.
F. TERM AND TERMINATION.
Unless earlier terminated under the appropriate agreement, the license
shall remain an exclusive license and in full force and effect as long as
Licensed Products are being developed or sold.
If any party defaults in the performance of its obligations under this
Agreement and fails to remedy the default within [*] for financial
obligations and [*] for non-financial obligations after written notice from the
non-defaulting party to which an obligation was owed, the non-defaulting party
is entitled upon the giving of written notice to immediately terminate this
Agreement; however, if the defaulting party has undertaken and continues to
undertake good faith efforts to cure, the defaulting party will be granted
another [*] to cure.
----------------------------
* Confidential treatment requested
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If CPI, directly or indirectly through its sublicensee(s), ceases to carry
on its business with respect to the B1 Technology at any time prior to
commercial launch of the Licensed Products in the United States, CPI shall give
prompt written notice to Xxxxxxx and Xxxxxxx shall thereafter have one hundred
and twenty (120) days for its right of first offer to reacquire the B1
Technology as set forth in Section 6 of the Assignment Agreement. If Xxxxxxx
does not so exercise such right of first offer, then Xxxx-Xxxxxx has the right
to terminate this Agreement and to narrow its license to Xxxxxxx of the B1
Technology under the Prior Agreements to remove from such license the rights
granted by Xxxxxxx to CPI pursuant to the Assignment Agreement.
Upon termination of this Agreement for any reason, nothing herein shall be
construed to release any party from any obligation that matured prior to the
effective date of such termination. CPI and any Sub-Sublicensee(s) thereof may,
after the effective date of such termination, sell all Licensed Products which
are in inventory at the time of termination, and complete and sell Licensed
Products which CPI can clearly demonstrate were in the process of manufacture at
the time of such termination, provided that CPI shall pay to Xxxx-Xxxxxx the
royalties thereon as required by this Agreement and shall submit the reports
required by Paragraph D of this Attachment II on the Net Sales of Licensed
Products.
G. RESTRICTION ON USE OF NAMES.
CPI and its Sub-Sublicensee(s) shall not use the names of Xxxx-Xxxxxx, its
related entities, Xx. Xxxxxxxxxx and other employees of Xxxx-Xxxxxx, or any
adaptations thereof, in any advertising, promotional or sales literature,
without the prior written consent of Xxxx-Xxxxxx in each case; provide however,
that Xxxxxxx and its sublicensee(s) (a) may refer to publications by employees
of Xxxx-Xxxxxx in the scientific literature or (b) may state that a license from
Xxxx-Xxxxxx has been granted as herein provided.
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