EXHIBIT 10.65
***TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. XX.XX. 200.80(B)(4),
200.83 AND 240.24B-2
SECOND AMENDED AND RESTATED
NYU/SUGEN
RESEARCH AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
SECTION 1. DEFINITIONS..................................................... 1
SECTION 2. EFFECTIVE DATE.................................................. 4
SECTION 3. PERFORMANCE OF THE NYU RESEARCH PROJECT......................... 4
SECTION 4. FUNDING OF THE NYU RESEARCH PROJECT............................. 5
SECTION 5. TITLE........................................................... 6
SECTION 6. PATENTS AND PATENT APPLICATIONS................................. 6
SECTION 7. GRANT OF LICENSE................................................ 8
SECTION 8. PAYMENTS FOR LICENSE............................................ 9
SECTION 9. SUGEN OWNERSHIP CHANGE.......................................... 10
SECTION 10. METHOD OF PAYMENT. ............................................. 11
SECTION 11. DEVELOPMENT AND COMMERCIALIZATION............................... 11
SECTION 12. CONFIDENTIAL INFORMATION........................................ 13
SECTION 13. PUBLICATION..................................................... 13
SECTION 14. INFRINGEMENT OF NYU PATENT...................................... 14
SECTION 15. LIABILITY AND INDEMNIFICATION................................... 15
SECTION 16. SECURITY FOR INDEMNIFICATION.................................... 16
SECTION 17. EXPIRY AND TERMINATION.......................................... 17
SECTION 18. REPRESENTATIONS BY SUGEN AND NYU................................ 18
i.
SECTION 19. ASSIGNMENT...................................................... 19
SECTION 20. USE OF NAME..................................................... 19
SECTION 21. MISCELLANEOUS................................................... 20
ii.
SECOND AMENDED AND RESTATED
NYU/SUGEN
RESEARCH AND LICENSE AGREEMENT
This Agreement, effective as of September 1, 1991 ("the Effective
Date"), is by and between:
NEW YORK UNIVERSITY, a corporation organized and existing under the
laws of the State of New York ("NYU") and having a place of business at 00
Xxxxxxxxxx Xxxxxx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000; and
SUGEN, INC., a corporation organized and existing under the laws of the
State of Delaware ("SUGEN") and having its principal office at 000 Xxxxxxxxx
Xxxxx, Xxxxxxx Xxxx, Xxxxxxxxxx 00000-0000.
RECITALS
WHEREAS, Xx. Xxxxxx Xxxxxxxxxxxx of NYU (the "NYU Scientist") has made
certain inventions (the "Pre-Existing Inventions") with respect to Receptors (as
hereinafter defined), including those listed in Appendix I.
WHEREAS, NYU is willing to perform the NYU Research Project;
WHEREAS, subject to the terms and conditions hereinafter set forth, NYU
is willing to grant to SUGEN and SUGEN is willing to accept from NYU the License
(as hereinafter defined); and
WHEREAS, NYU and SUGEN have heretofore entered into the NYU/SUGEN
Research and License Agreement, which became effective on September 1, 1991 (the
"Original Agreement"), and the Amended and Restated NYU/SUGEN Research and
License Agreement effective in November 1993 (the "Amended Agreement") and each
of them desires to amend and restate the Original Agreement and Amended
Agreement in their entireties,
NOW, THEREFORE, in consideration of the mutual promises and agreements
contained herein, the parties hereto hereby agree as follows:
SECTION 1. DEFINITIONS.
Whenever used in this Agreement, the following terms shall have the
following meanings:
(a) "Calendar Year" shall mean any consecutive period of twelve months
commencing on the first day of January of any year.
(b) "Corporation Entity" shall mean any company or other legal entity
which controls, or is controlled by, or is under common control with, SUGEN;
"control" means the
1.
holding of more than 50% of (i) the capital and/or (ii) the voting rights and/or
(iii) the right to elect or appoint directors.
(c) "Date of First Commercial Sale" shall mean the date on which the
first arms-length commercial sale of a SUGEN Product is made on a product by
product and country by country basis.
(d) "Force Majeure" shall mean any occurrence that prevents or
substantially interferes with the performance by a party of any of its
obligations hereunder, if such occurs by reason of any act of God, flood, fire,
explosion, breakdown of plant, strike, lockout, labor dispute, casualty,
accident, war, revolution, civil commotion, acts of public enemies, blockage,
embargo, injunction, law, order, proclamation, regulation, ordinance, demand or
requirement of any government or of any subdivision, authority or representative
of any such government, inability to procure or use materials, labor, equipment,
transportation or energy sufficient to meet manufacturing needs without the
necessity of allocation, or any other cause whatsoever, whether similar or
dissimilar to those above enumerated, beyond the reasonable control of such
party, if and only if the party affected shall have used reasonable efforts to
avoid such occurrence and to remedy it promptly if it shall have occurred.
(e) "License" shall mean the exclusive worldwide license to practice
the Research Technology (as hereinafter defined) for the research, development,
manufacture, use and sale of SUGEN Products (as hereinafter defined).
(f) "License Revenues" shall mean [...*...] provided that, License
Revenues shall not include any such payments made by any Corporation Entity or
SUGEN to SUGEN or any other Corporation Entity.
(g) "Net Sales" shall mean the total amount [...*...] after deduction
of all the following to the extent applicable to such sale:
(i) all trade, case and quantity credits discounts, refunds or
rebates, including government rebates;
(ii) all amounts of insurance and freight expenses included in
such invoice;
(iii) all allowances or credits for returns;
(iv) all sales commissions; and
(v) all sales taxes (including value added taxes);
provided, that, in respect of any sale that [...*...], after the aforementioned
deductions.
(h) "MPG" shall mean Max-Xxxxxx-1 Institut fur Biochemie, Abteilung
Molekularbiologie (Director: Prof. Xx. Xxxx Xxxxxxx), located in Am Klopferspitz
18a, W-8003
________________________
* CONFIDENTIAL TREATMENT REQUESTED
2.
Martinsreid, an institute of the Max-Xxxxxx-Gesellschaft zur Forderung der
Wissenschaften e.V., located in Xxxxxxxxxxxxxxx 0x, X-0000 Xxxxxxx 2, or any
scientist affiliated with Max-Xxxxxx-1 Institut fur Biochemie, and/or Garching
Intrumente Gesellschaft zur industriellen Nutzung von Forschungsergebnissen
m.b.h. located in Xxxxxxxxxxxxx 00, X-0000 Xxxxxxx 22.
(i) "NYU Know-How" shall mean the Pre-Existing Inventions and any
information and materials (including, but not limited to, pharmaceutical,
chemical, biological and biochemical products, information, trade secrets,
know-how, technical and non-technical data, materials, methods and processes and
any drawings, plans, diagrams, specifications and/or other documents containing
such information) [...*...]. For the avoidance of doubt, NYU Know-How shall
include any of the foregoing that are developed [...*...].
(j) "NYU Patents" shall mean NYU's share in all United States and
foreign patents and patent applications, and any divisions, continuations, in
whole or in part, reissues, renewals and extensions thereof, and pending
applications therefor:
(x) which claim Pre-Existing Inventions and which are
identified on Appendix I hereto; or
(y) which claim inventions that are made, in whole or in
part, [...*...]. For the avoidance of doubt, NYU Patents
shall include any such inventions that are made
[...*...].
(k) "NYU Research Project" shall mean the investigations during the
Research Period into the field of the Receptors under the direction of the NYU
Scientist which are funded by SUGEN and include the research programs described
in Appendix II hereto which forms an integral part hereof.
(l) "Patentable Invention" shall mean a claim in an issued, unexpired
patent that has not been held invalid by any final decision of a court in the
relevant country. It also includes claims in a pending application that has
priority from a specification filed less than seven years previous.
(m) "Receptor" shall mean:
(i) [...*...] and/or
(ii) [...*...] and/or
(iii) [...*...]and/or
(iv) [...*...] of the above receptors.
________________________
* CONFIDENTIAL TREATMENT REQUESTED
3.
(n) "Research Period" shall mean the ten year period commencing on the
Effective Date hereof and any extension thereof as to which NYU and SUGEN shall
mutually agree in writing.
(o) "Research Technology" shall mean all NYU Patents and NYU Know-How.
(p) "Sublicensee" shall mean an entity licensed by SUGEN or a licensee
of SUGEN to develop, make, distribute or sell a SUGEN Product.
(q) "SUGEN Product" shall mean any product for the diagnosis, treatment
or prevention of human disease which contains or comprises:
(i) any Receptor (as hereinafter defined); and/or
(ii) any substance which [...*...] and/or
(iii) any substance [...*...] and/or
(iv) any substance [...*...] and/or
(v) [...*...]
provided that an Investigational New Drug (IND) application is filed for such
SUGEN Product within 4 years from the end of the Research Period. SUGEN Product
shall not include any product that is licensed by SUGEN from a third party other
than MPG, provided that such product does not act by [...*...] a Validated
Target.
(r) "Validated Target" shall mean a Receptor target that has been shown
to be correlated with a particular disease in which a small molecule therapeutic
would offer a reasonable commercial opportunity, and where inhibition of target
function in in vitro and in vivo models leads to effective inhibition of
pathophysiology.
SECTION 2. EFFECTIVE DATE.
This Agreement shall be effective as of the Effective Date and shall
remain in full force and effect until it expires or is terminated in accordance
with Section 17 hereof.
SECTION 3. PERFORMANCE OF THE NYU RESEARCH PROJECT.
(a) In consideration of the sums to be paid to NYU as set forth in
Section 4 below, NYU undertakes to perform the NYU Research Project under the
leadership of the NYU Scientist during the Research Period. If, during the
Research Period, the NYU Scientist shall cease to lead the NYU Research Project,
then NYU shall promptly so notify SUGEN and shall endeavor to find from among
the scientists employed by NYU a scientist or scientists acceptable
________________________
* CONFIDENTIAL TREATMENT REQUESTED
4.
to SUGEN to continue the leadership of the NYU Research Project in place of the
NYU Scientist. If NYU is unable to find such a scientist acceptable to SUGEN
[...*...] the NYU Research Project may be terminated by SUGEN upon written
notice to NYU, in which case SUGEN shall have no further obligation to fund the
NYU Research Project and NYU shall have no further obligation to perform the NYU
Research Project. Such termination of funding of the NYU Research Project
pursuant to this Section 3(a) shall not terminate this Agreement or the License
granted herein. [...*...].
(b) Nothing contained in this Agreement shall be construed as a
warranty on the part of NYU that any results or inventions will be achieved by
the NYU Research Project or that the Research Technology and/or any other
results or inventions achieved by the NYU Research Project, if any, are or will
be commercially exploitable and, furthermore, NYU makes no warranties whatsoever
as to the commercial or scientific value of the Research Technology and/or any
results which may be achieved by the NYU Research Project.
(c) Within sixty (60) days after the end of each six-month period of
each year during the Research Period, NYU shall prepare a written report
summarizing the results of the work conducted on the NYU Research Project during
such preceding six-month period. Within sixty (60) days of the date on which
such report is due to SUGEN, SUGEN and NYU shall hold a meeting at the NYU
research facility, or such other site as the parties may agree, to review the
written report in the format of a scientific exchange. Such meeting shall
include the NYU Scientist.
(d) NYU will have full authority and responsibility for the NYU
Research Project. All students and employees of NYU who work on the NYU Research
Project will do so as employees or students of NYU, and not as employees or
consultants of SUGEN.
SECTION 4. FUNDING OF THE NYU RESEARCH PROJECT.
(a) In addition to prior payments to NYU, as compensation for work to
be performed on the NYU Research Project during the Research Period, subject to
any earlier termination of the Research Project pursuant to Section 3(a) hereof,
SUGEN will pay NYU the following amounts for the remaining years of the Research
Period, after execution of this Second Amended Agreement, for a total of
[...*...]:
Seventh Year [...*...]
Eighth Year [...*...]
Ninth Year [...*...]
Tenth Year [...*...]
such payments shall be paid according to the Schedule of Payments set forth in
Appendix III, which is an integral part of this Agreement.
________________________
* CONFIDENTIAL TREATMENT REQUESTED
5.
(b) Charges with respect to the NYU Research Project shall be made in
accordance with NYU's then prevailing policies and procedures for charging
research expenditures to individual research projects. NYU shall deliver to
SUGEN, [...*...] a report setting out the income and disbursements received and
expended in connection with the NYU Research Project during such year.
(c) SUGEN shall have the annual right (at its own expense) to meet with
the NYU Scientist and review expenditures by NYU in connection with the Research
Project during such year.
(d) NYU shall not, without SUGEN's prior written consent, permit
funding other than provided by SUGEN to be spent on the NYU Research Project;
provided that, nothing in this Agreement shall be interpreted to prohibit NYU
(or the NYU Scientist) from obtaining additional financing or research grants
for the NYU Research Project from not-for-profit entities or United States
government agencies, which grants or financing may render all or part of the NYU
Research Project or the results thereof subject to the patent rights of the
United States government and its agencies, as set forth in Title 35 U.S.C. ss.
200 et seq, provided that such funding is not subject to rights to any other
third party.
SECTION 5. TITLE.
(a) Subject to the License granted to SUGEN hereunder, it is hereby
agreed that all right, title and interest in and to the Research Technology
shall vest solely in NYU except to the extent that any technology is jointly
developed by SUGEN and NYU, in which case, such technology shall be jointly
owned.
(b) SUGEN acknowledges that, subject to the License granted to SUGEN
hereunder, for so long as Xx. Xxxxxx Xxxxxxxxxxxx (or any scientist or
researcher working on the NYU Research Project) is employed by NYU, any and all
inventions made by Xx. Xxxxxxxxxxxx (or such other scientist or researcher)
shall be owned solely by NYU.
SECTION 6. PATENTS AND PATENT APPLICATIONS.
(a) NYU will promptly disclose to SUGEN in writing any inventions made
during the Research Period and in the course of performance of the NYU Research
Project pertaining to the Research Technology which may constitute the basis for
potential NYU Patents. NYU will fully cooperate with SUGEN to ensure that such
inventions are promptly disclosed, and will make the scientists which made such
inventions available for consultation to attorneys for SUGEN and NYU to achieve
this.
(b) At the initiative of SUGEN or NYU, the parties shall consult with
each other regarding the filing of patent applications in respect of any
inventions pertaining to the Research Technology, including without limitation,
the timing of the filing of such applications, the jurisdiction within which
foreign counterparts of such applications should be filed and other
________________________
* CONFIDENTIAL TREATMENT REQUESTED
6.
details pertaining to the prosecution and maintenance of patent rights.
Notwithstanding the foregoing, the parties agree that:
(i) if SUGEN and NYU disagree at any time regarding the
filing of any patent application in respect of any such invention pertaining to
the Research Technology, upon the delivery of written instructions to the other
party from the party who desires to file such application, the party who so
desires to file such application may proceed to file such application and the
other party shall fully cooperate, and shall instruct their patent counsel to
cooperate, in all matters to ensure that such application may be properly filed
on a timely basis;
(ii) neither party may abandon the prosecution or maintenance
of any such patent application without the prior written consent of the other
party; and
(iii) NYU shall act with respect to the filing of any foreign
counterpart of any such patent application only on and in conformity with the
written instructions of SUGEN.
(c) Patent applications on any inventions pertaining to the Research
Technology shall be filed, prosecuted and maintained by [...*...]. Copies of all
such patent applications and patent office actions shall be forwarded to each of
NYU and SUGEN. [...*...] shall have the right, at its own expense, to have such
patent applications and patent office actions independently reviewed by other
patent counsel separately retained by it, upon prior notice to and consent of
[...*...], which consent shall not unreasonably be withheld.
(d) NYU and SUGEN shall assist, and cause their respective employees
and consultants to assist each other, in assembling inventorship information and
data for the filing and prosecution of patent applications on inventions
pertaining to the Research Technology.
(e) All NYU Patents shall be filed, prosecuted and maintained at the
expense of SUGEN; provided, that, with respect to the filing of those NYU
Patents with which SUGEN disagreed, pursuant to Section 6(c)(i) hereof, such NYU
Patents shall be filed, prosecuted and maintained at the expense of NYU. SUGEN
shall pay [...*...] directly for all costs and fees in connection with the
preparation, filing, maintenance, prosecution, protection and the like of the
NYU Patents, except such costs and fees incurred in connection with those NYU
Patents referred to in the proviso in the immediately preceding sentence, which
shall be paid by NYU.
(f) Nothing herein contained shall be deemed to be a warranty by NYU
that (i) NYU can or will be able to obtain any patent or patents on any patent
application or applications in the NYU Patents or any portion thereof, or that
any of the NYU Patents will afford adequate or commercially worthwhile
protection, or (ii) the manufacture, use or sale of any element of the Research
Technology or any SUGEN Product will not infringe any patent of any third party.
________________________
* CONFIDENTIAL TREATMENT REQUESTED
7.
SECTION 7. GRANT OF LICENSE.
(a) Subject to the terms and conditions hereinafter set forth, NYU
hereby grants to SUGEN and SUGEN hereby accepts from NYU the License.
(b) With respect to each SUGEN Product, the royalty obligations under
this Agreement for the License granted to SUGEN in Section 7(a) hereto shall
remain in force on a country by country basis beginning from the Date of First
Commercial Sale of such SUGEN Product in a country until the expiration date of
the last to expire of an NYU Patent or any patent claiming a Patentable
Invention licensed to or owned by SUGEN relating to the SUGEN Product in such
country, or 15 years, whichever shall be earlier. SUGEN shall inform NYU in
writing of the Date of First Commercial Sale with respect to each SUGEN Product
in each country as soon as practicable after the making of each such first
commercial sale. Upon expiration of such period with respect to any SUGEN
Product in any country as provided in this Section 7(b), SUGEN shall have a
fully paid up license to make, have made, use and sell such SUGEN Product in
such country.
(c) SUGEN shall be entitled to grant sublicenses under the License on
terms and conditions in compliance with the terms and conditions of this
Agreement (except that the rate of royalty may be at higher rates than those set
forth in this Agreement) (i) to a Corporation Entity or (ii) to other third
parties [...*...], subject to the following conditions:
(i) All sublicenses shall only be granted under written
agreements. SUGEN shall notify NYU of all relevant sublicense agreements as soon
as practicable after the signing thereof, and upon written request by NYU shall
provide copies of such agreements to NYU under an agreement in the form of
Appendix IV.
(ii) Each sublicense granted hereunder shall be [...*...];
(iii) Subject to the last sentence of this clause (c), the
sublicense shall expire automatically on the termination of the License;
(iv) Any Sublicensee or any Corporation Entity may grant
further sublicenses for the development, manufacture, use, sale or distribution
of SUGEN Products;
(v) Both during the term of the sublicense and thereafter the
Sublicensee shall be bound by a confidentiality obligation similar to that
imposed on SUGEN in Section 11 below;
(vi) Any sublicense agreement shall include an equivalent
obligation of the Sublicensee thereunder to SUGEN's obligations under Sections
14 and 15 hereof and shall state that NYU is an intended third party beneficiary
of such sublicense agreement for the purpose of enforcing such indemnification
and insurance provisions;
________________________
* CONFIDENTIAL TREATMENT REQUESTED
8.
(vii) If further sublicensing is permitted thereunder, the
sublicense shall require the Sublicensee thereunder to give notice to SUGEN in
writing promptly after the grant by any such Sublicensee of a further
sublicense. SUGEN shall give written notice to NYU promptly after the receipt of
any such notice from any Sublicensee.
In the event that the License is terminated, any sublicense granted by SUGEN
under the License and any further sublicenses thereunder shall, [...*...] remain
in full force and effect, provided that such Sublicensee is not then in breach
of its sublicense agreement and [...*...] under the terms and conditions of such
sublicense agreement.
SECTION 8. PAYMENTS FOR LICENSE.
(a) NYU acknowledges that SUGEN has a fully paid up and non-exclusive
license to all NYU Know-How related to the use or development of a SUGEN
Product, but excluding Pre-Existing Inventions, in consideration of payments for
the Research Program as described in Section 4 herein. NYU acknowledges that
SUGEN retains all rights to the License that accumulated since the Effective
Date up to [...*...], including those rights granted in Section 7 of the Amended
Agreement.
(b) In consideration for the grant and during the term provided in
Section 7(b) with respect to each SUGEN Product SUGEN shall pay to NYU:
(i) a royalty of [...*...] of the Net Sales of SUGEN or any
Corporation Entity; and
(ii) a portion of License Revenues determined as follows:
(A) [...*...] of License Revenues with respect to any
SUGEN Product; or
(B) [...*...] of License Revenues with respect to any
SUGEN Product that is covered under SUGEN's agreements with [...*...], and any
extensions, modifications, or revisions thereof, provided that with respect to
amounts paid to NYU for royalties such amounts shall not exceed [...*...] of the
Sublicensee's Net Sales in any period;
(c) For the purpose of computing the royalties due to NYU hereunder,
the year shall be divided into two parts ending on [...*...]. SUGEN shall, not
later than [...*...] after each June [...*...] in each Calendar Year during the
term of the License, submit to NYU a full and detailed report of royalties or
payments due NYU under the terms of this Agreement for the preceding half year
(hereinafter "the Half-Year Report"), setting forth the Net sales, License
Revenues and all other payments due to NYU hereunder, including at least:
(i) the quantity of Licensed Products sold;
________________________
* CONFIDENTIAL TREATMENT REQUESTED
9.
(ii) the selling price of each SUGEN Product sold;
(iii) the deductions permitted under Section 1(g) hereof to
arrive at Net Sales; and
(iv) the royalty computations and subject of payment.
If no royalties or other payments are due, a statement shall be sent to
NYU stating such fact. Payment of the full amount of any royalties or other
payments due to NYU for the preceding half year shall accompany each such
Half-Year Report.
(d) SUGEN shall maintain, and shall require all Sublicensees and
Corporation Entities to maintain for a period of two years after the end of the
Calendar year to which they relate, true and complete books of account
consistent with standard accounting practice containing an accurate record of
all data necessary for the proper computation of all payments due to NYU under
the terms of this Agreement and NYU shall have the right, through a nationally
recognized independent certified public accountant, to examine such books (not
more than once in each calendar Year) within two Calendar Years after the end of
the Calendar Year to which they relate for the purpose of verifying such
payments. Any such examination shall be made during normal business hours where
the records are regularly kept. NYU agrees that the information furnished to it
as a result of any such examination shall be limited to a statement by such
certified public accountant to the effect that they have reviewed such books of
account and that the amounts of the payments due under the terms of this
Agreement are in conformity with such books of account and the applicable
provisions of this Agreement, or setting forth any required adjustments. The
fees and expenses of such examination shall be borne by NYU; provided, however,
that if such examination reveals an underpayment of more than [...*...] for any
period, SUGEN shall promptly reimburse NYU for such fees and expenses. Any such
accountants shall be required to keep all information derived from such
examination confidential.
SECTION 9. SUGEN OWNERSHIP CHANGE
In the event that SUGEN is acquired or merged with another company, or
that SUGEN acquires or forms a joint venture with another company, then SUGEN
may at its option notify NYU that such other company wishes to make a
determination as to which targets shall be included under the terms of the
Agreement prior to the effective date of any such acquisition, merger, or joint
venture, or as soon as possible thereafter. This determination shall be made in
good faith by NYU and SUGEN and shall be based on an examination of SUGEN's lab
books and other information available to the parties, full access (under
appropriate confidentiality agreements) to which will be provided to NYU. With
respect to targets that were adopted by SUGEN into drug discovery prior to the
effective date of the acquisition, merger, or joint venture, SUGEN Products
developed based on such targets shall be subject to the license payments
described in Section 8 hereto. SUGEN Products that are developed based on
Receptor targets which were not adopted into drug discovery at the time of the
effective date of such acquisition, merger, or joint venture shall be subject to
a). a royalty of [...*...] on Net Sales
________________________
* CONFIDENTIAL TREATMENT REQUESTED
10.
of SUGEN, and/or Corporation Entity, which may be offset by [...*...] of the
royalties paid by SUGEN to third parties (other than MPG), provided that the
royalties due to NYU shall not be less than [...*...] of Net Sales of SUGEN and
/or Corporation Entity and b). [...*...] of License Revenues with respect to any
SUGEN Product, provided that with respect to such SUGEN Product there exists a
Patentable Invention with respect to such target and/or its utility which is
derived from or based on the Research Technology, and provided further that such
SUGEN Product shall include a product irrespective of whether an IND application
is filed with respect thereto within 4 years from the end of the Research
Period, or not.
SECTION 10. METHOD OF PAYMENT.
(a) Royalties and any other payments due to NYU hereunder shall be paid
to NYU in United States dollars. Any such royalties on or other payments
relating to transactions in a foreign currency shall be converted into United
States dollars based on the closing buying rate of the Xxxxxx Guaranty Trust
Company of New York applicable to transactions under exchange regulations for
the particular currency on the last business day of the accounting period for
which such royalty or other payment is due.
(b) SUGEN shall be responsible for payment to NYU of all royalties,
License Revenues and all other payments due to NYU under this Agreement on sale,
transfer or disposition of SUGEN Products by any Corporation Entity of SUGEN
under the License. SUGEN shall use its best efforts to collect all License
Revenues due to NYU under this agreement from Sublicensees.
SECTION 11. DEVELOPMENT AND COMMERCIALIZATION.
(a) In the event a Validated Target is identified directly by NYU in
the course of the NYU Research Project and i). the Validated Target is a
Receptor target validated by NYU after the effective date of this amendment to
the Amended Agreement ii). the Validated Target is covered by a Patentable
Invention in an NYU Patent and iii). the necessary reagents are available to
NYU, in which case they will be made available to SUGEN, SUGEN shall use
reasonable diligence consistent with prudent commercial practices to [...*...]
of receiving the Validated Target and all reagents from NYU. If the Validated
Target is not [...*...], SUGEN shall initiate an outlicensing effort to find an
appropriate commercial partner. If the Validated Target is not i). [...*...]
period or ii). [...*...] area by SUGEN or iii). [...*...] then NYU shall have
the right upon written notice to SUGEN to terminate the License in respect of
the Validated Target. If at any point prior to the termination of the License in
respect of a Validated Target SUGEN shall validate the Validated Target in an
additional disease or therapeutic area, then SUGEN shall have an additional
[...*...] period to initiate [...*...] and an additional [...*...] period to
outlicense. In the event that NYU shall terminate the License in respect of a
Validated Target as aforesaid, and notwithstanding anything to the contrary in
Section 17(d), all rights in and to the Research Technology relating to such
Validated Target shall revert to NYU and SUGEN shall not make any further use
thereof (except to the extent that a third party is free to use them without a
license from NYU).
________________________
* CONFIDENTIAL TREATMENT REQUESTED
11.
(b) SUGEN or its Sublicensees shall use reasonable diligence consistent
with prudent commercial practices to carry out all developmental activities,
including but not limited to, [...*...]. SUGEN or its Sublicensees shall use
reasonable diligence consistent with prudent commercial practices to obtain the
appropriate approvals of the health authorities for the production, use and sale
of the SUGEN Products in each of the other countries of the world in which SUGEN
or its Sublicensees under the License intend to produce, use, and/or sell SUGEN
Products.
(c) Provided that applicable laws, rules and regulations require that
the performance of the tests, trials, studies and other activities specified in
subsection (a) above shall be carried out in accordance with FDA Good Laboratory
Practices and in a manner acceptable to the relevant foreign health authorities,
SUGEN or its Sublicensees shall carry out such tests, trials, studies and other
activities in accordance with FDA Good Laboratory Practices and in a manner
acceptable to the relevant foreign health authorities. Furthermore, the SUGEN
Products shall be produced in accordance with FDA Good Manufacturing Practice
procedures ("GMP") in a facility which has been certified by the FDA as
complying with GMP, provided that applicable laws, rules and regulations so
require.
(d) SUGEN shall have the right, but not the obligation, in its sole
discretion, to select one or more SUGEN Products for commercialization. SUGEN
shall advise NYU in writing promptly of each SUGEN Product so selected. SUGEN
undertakes, or shall cause its Sublicensees to agree to undertake, to use
reasonable diligence consistent with prudent commercial practices [...*...] for
SUGEN, the commercialization of those SUGEN Products selected by SUGEN for
commercialization.
(e) SUGEN shall provide NYU with written reports on all material
activities and actions undertaken by SUGEN to develop and commercialize the
SUGEN Products; such reports shall be made, during the royalty term of the
License with respect to such SUGEN Product as provided in Section 7(b),
[...*...]. Promptly after filing of an IND application with respect to any SUGEN
Product, SUGEN shall notify NYU in writing of such filing.
(f) If SUGEN fails to use reasonable diligence consistent with prudent
commercial practices either to [...*...] or thereafter to [...*...], unless in
either case such delay is necessitated by [...*...] NYU shall have the right to
notify SUGEN in writing of such failure with respect to such SUGEN Product and
shall allow SUGEN [...*...] to cure such failure. If SUGEN does not cure such
failure within such period of time, NYU shall have the right by notice in
writing to SUGEN to terminate the License with respect to [...*...] and/or to
convert the License granted herein with respect to such Receptor into a
non-exclusive license. In the event that the License is converted to a
non-exclusive license, all royalty and other consideration due shall be reduced
to [...*...] of the amount stated in Section 8 or to the amount that [...*...]
should that represent a lower royalty rate or other consideration payment,
provided, that SUGEN shall retain all of its right, title and interest, in, to
and under the Research Technology with respect to [...*...] and all other
technology owned or developed by or on behalf of SUGEN with respect to such
Receptor.
________________________
* CONFIDENTIAL TREATMENT REQUESTED
12.
SECTION 12. CONFIDENTIAL INFORMATION.
(a) Except as otherwise provided in Sections 12(c) and 13 below, NYU
shall maintain any and all of the Research Technology in confidence and shall
not release or disclose any tangible or intangible component thereof to any
third partywithout first receiving the prior written consent of SUGEN to said
release or disclosure.
(b) Except as otherwise provided in Sections 12(c) and 12(d) below,
SUGEN and its Sublicensees shall maintain any and all of the Research Technology
in confidence and shall not release or disclose any tangible or intangible
component thereof to any third party, except MPG, without first receiving the
prior written consent of NYU to said release or disclosure.
(c) The obligations of confidentiality on each party or any Sublicensee
set forth in Sections 12(a) and (b) shall not apply to any component of the
Research Technology (i) which was part of the public domain prior to the
Effective Date of this Agreement, which subsequently becomes a part of the
public domain through no fault of such party, which was disclosed with the prior
written approval of the other party or which was disclosed to such party by a
third party who had the right to make such disclosure; or (ii) to the extent,
but only to the extent, that such disclosure or delivery is necessary for such
party or Sublicensee to comply with applicable laws or regulations.
(d) The provisions of Section 12(b) notwithstanding, SUGEN or any
Sublicensee may disclose the Research Technology (i) to third parties, so long
as any such third party shall have signed a written agreement of confidentiality
containing provisions substantially to the effect of Sections 12(b) and (c) made
applicable to such third party; and (ii) to the extent that such disclosure or
delivery is required by regulatory authorities in order to obtain necessary
approvals for any SUGEN Product or to the extent such disclosure is necessary in
connection with any actions taken or proposed to be taken by SUGEN or such
Sublicensee in accordance with either Section 6 or Section 11 hereof.
(e) The obligation of any party, Sublicensee or other person to hold
any Research Technology or other information in confidence shall be satisfied if
they exercise the same care with respect to such information as they would take
to preserve the confidentiality of their own similar information.
SECTION 13. PUBLICATION.
(a) Prior to submission for publication of a manuscript describing the
results of any aspect of the NYU Research Project, NYU shall send SUGEN a copy
of the manuscript to be submitted, and shall allow SUGEN sixty (60) days from
the date of such mailing to determine whether the manuscript contains subject
matter for which patent protection should be sought prior to publication of such
manuscript. Should SUGEN believe the subject matter of the manuscript contains a
patentable invention, then, prior to the expiration of such 60-day period, SUGEN
shall give written notification to NYU of:
________________________
* CONFIDENTIAL TREATMENT REQUESTED
13.
(i) its determination that such manuscript contains patentable
subject matter for which patent protection should be sought; and
(ii) the countries in which such patent protection should be
sought.
(b) After the expiration of such 60-day period, unless NYU has received
the written notice specified above from SUGEN, NYU shall be free to submit such
manuscript for publication in any manner consistent with academic standards.
(c) upon receipt of such written notice from SUGEN, NYU will thereafter
delay submission of the manuscript for an additional period of [...*...] to
permit the preparation and filing, in accordance with section 6 hereof, of a
U.S. patent application on the subject matter to be disclosed in such
manuscript. After expiration of such [...*...], or the filing of a patent
application on each such invention, whichever shall occur first, NYU shall be
free to submit the manuscript and to publish the disclosed results.
SECTION 14. INFRINGEMENT OF NYU PATENT.
(a) In the event a party to this Agreement acquires information that a
third party is infringing one or more of the NYU Patents, the party acquiring
such information shall promptly notify the other party to the Agreement in
writing of such infringement.
(b) In the event of an infringement of an NYU Patent, SUGEN shall be
privileged but not required to bring suit against the infringer. Should SUGEN
elect to bring suit against an infringer and to join NYU as a party plaintiff in
any such suit, NYU shall have the right to approve the counsel selected by SUGEN
to represent SUGEN, which approval by NYU shall not unreasonably be withheld.
The expenses of such suit or suits that SUGEN elects to bring, including any
reasonable expenses of NYU incurred in conjunction with the prosecution of such
suit or the settlement thereof, shall be paid for entirely by SUGEN and SUGEN
shall hold NYU free, clear and harmless from and against any and all costs of
such litigation, including reasonable attorneys, fees.
(c) In the event SUGEN exercises the right to xxx herein conferred, it
shall have the right to first reimburse itself out of any sums recovered in such
suit or in settlement thereof for all costs and expenses of every kind and
character, including reasonable attorneys' fees incurred in the prosecution of
any such suit, and if after such reimbursement, any funds shall remain from said
recovery, SUGEN shall promptly pay to NYU a portion of such funds as determined
in section 8 (b) (ii) and SUGEN shall be entitled to receive and retain the
balance of the remainder of such recovery.
(d) If SUGEN does not bring suit against said infringer pursuant to
Section 14(b) hereof, or has not commenced negotiations with said infringer for
discontinuance of said
________________________
* CONFIDENTIAL TREATMENT REQUESTED
14.
infringement, within [...*...] days after receipt of such notice, NYU shall have
the right, but shall not be obligated, to bring suit for such infringement and
to join SUGEN as a party plaintiff, in which case, if NYU joins SUGEN party
plaintiff in such a suit, SUGEN shall have the right to approve the counsel
selected by NYU to represent NYU, which approval by SUGEN shall not unreasonably
be withheld. The expenses of such suit or suits that NYU elects to bring,
including any reasonable expenses of SUGEN incurred in conjunction with the
prosecution of such suit or the settlement thereof, shall be paid for entirely
by NYU and NYU shall hold SUGEN free, clear and harmless from and against any
and all costs and expenses of such litigation, including reasonable attorneys'
fees. If SUGEN has commenced negotiations with an alleged infringer of the NYU
Patent for discontinuance of such infringement within such [...*...] period,
SUGEN shall have an additional [...*...] from the termination of such initial
[...*...] period to conclude its negotiations before NYU may bring suit for such
infringement. In the event NYU brings suit for infringement of any NYU Patent,
NYU shall have the right to first reimburse itself out of any sums recovered in
such suit or settlement thereof for all costs and expenses of every kind and
character, including reasonable attorneys, fees incurred in the prosecution of
such suit, and if after such reimbursement, any funds shall remain from said
recovery, NYU shall promptly pay to SUGEN an amount equal to [...*...] of such
remainder and NYU shall be entitled to receive and retain the balance of the
remainder of such recovery.
(e) Each party shall always have the right to be represented by counsel
of its own selection in any suit for infringement of the NYU Patents instituted
by the other party to this Agreement under the terms hereof. The reasonable
expense of such counsel shall be borne by that party.
(f) SUGEN agrees to cooperate fully with NYU at the request of NYU,
including by giving testimony and producing documents lawfully requested, in the
prosecution of any suit by NYU for infringement of the NYU parents; provided
that NYU shall pay all reasonable expenses (including attorneys' fees) incurred
by SUGEN in connection with such cooperation. NYU shall, and shall endeavor to
cause the NYU Scientist to, cooperate fully with SUGEN at the request of SUGEN,
including by giving testimony and producing documents lawfully requested, in the
prosecution of any suit by SUGEN for infringement of the NYU Patents; provided
that SUGEN shall pay all reasonable expenses (including attorneys' fees)
incurred by NYU in connection with such cooperation.
SECTION 15. LIABILITY AND INDEMNIFICATION.
(a) SUGEN shall, subject to clause (b) of this Section 15, indemnify,
defend and hold harmless NYU and its trustees, officers, medical and
professional staff, employees, students and agents and their respective
successors, heirs and assigns (the "Indemnitees"), against any liability,
damage, loss or expense (including reasonable attorneys' fees and expenses of
litigation) incurred by or imposed upon the Indemnitees or any one of them in
connection with any claims, suits, actions, demands or judgments (i) arising out
of the production, manufacture, sale, use in commerce or in human clinical
trials, lease, or promotion by SUGEN, any Sublicensee under the License,
Corporation Entity or agent of SUGEN of any SUGEN Product,
________________________
* CONFIDENTIAL TREATMENT REQUESTED
15.
process or service relating to, or developed pursuant to, this Agreement or (ii)
arising out of any other activities to be carried out by SUGEN, any Sublicensee
under the License, Corporation Entity or agent of SUGEN pursuant to this
Agreement.
(b) SUGEN's indemnification obligation under Section 15(a)(I) shall
apply to any liability, damage, loss or expense whether or not it is
attributable to the negligent activities of the Indemnitees. SUGEN's
indemnification obligation with respect to any Indemnitee under Section
15(a)(ii) shall not apply to any liability, damage, loss or expense to the
extent that it is attributable to the negligent activities of such Indemnitee.
(c) SUGEN agrees, at its own expense, to provide attorneys reasonably
acceptable to NYU to defend against any actions brought or filed against any
Indemnitee with respect to the subject of indemnity to which such Indemnitee is
entitled hereunder whether or not such actions are rightfully brought.
SECTION 16. SECURITY FOR INDEMNIFICATION.
(a) At such time as any SUGEN Product, process or service relating to,
or developed pursuant to, this Agreement is being commercially distributed or
sold (other than for the purpose of obtaining regulatory approvals) by SUGEN,
any Sublicensee under the License, Corporation Entity or agent of SUGEN, SUGEN
shall, at its sole cost and expense, procure and maintain policies of
comprehensive general liability insurance in amounts not less than [...*...] per
incident and [...*...] annual aggregate and naming the Indemnitees as additional
insureds. Such comprehensive general liability insurance shall provide (i)
product liability coverage and (ii) broad form contractual liability coverage
for SUGEN's indemnification under Section 15 of this Agreement. If SUGEN elects
to self-insure all or part of the limits described above (including deductions
or retentions which are in excess of [...*...] annual aggregate) such self
insurance program must be acceptable to NYU. The minimum amounts of insurance
coverage required under this Section 16 shall not be construed to create a limit
of SUGEN's liability with respect to its indemnification under Section 15 of
this Agreement.
(b) SUGEN shall provide NYU with written evidence of such insurance
upon the request of NYU. SUGEN shall provide NYU with written notice at least
sixty (60) days prior to any cancellation, non-renewal or material change in
such insurance. If SUGEN fails to obtain replacement insurance providing
comparable coverage within such 60-day period, NYU shall have the right to
terminate this Agreement effective at the end of such 60-day period without
notice or any additional waiting periods.
(c) SUGEN shall maintain such comprehensive general liability insurance
beyond the expiration or termination of this Agreement during (i) the period
that any product, process or service, relating to, or developed pursuant to,
this Agreement is being commercially distributed or sold (other than for the
purpose of obtaining regulatory approvals) by SUGEN or by a Sublicensee,
Corporation Entity or agent of SUGEN and (ii) a reasonable period after the
period
________________________
* CONFIDENTIAL TREATMENT REQUESTED
16.
referred to in subclause (c)(i) above; provided that the sum of the periods
referred to in subclauses (c)(i) and (c)(ii) of this Section 15 shall in no
event be [...*...].
SECTION 17. EXPIRY AND TERMINATION.
(a) unless terminated Pursuant to Section 17(b) or Section 16(b)
hereof, except as provided in subsection (f), this Agreement shall expire upon
the expiration of the royalty term of the License in all countries for all SUGEN
Products as set forth in section 7(b) hereof. Notwithstanding the foregoing, the
last sentence of Section 7(b) and all of Section 7(c) shall survive any such
expiration of this Agreement.
(b) At any time prior to the expiration of this Agreement, either party
may terminate this Agreement forthwith for cause, as "cause" is described below,
by giving written notice to the other party. Cause for termination by one party
of this Agreement shall be deemed to exist if (i) the other party materially
breaches or defaults in the performance or observance of any of the provisions
of this Agreement and such breach or default is not cured within [...*...] or,
in the case of failure to pay any amounts due hereunder, [...*...] (unless
otherwise specified herein) after the giving of notice by The party specifying
such breach or default, or (ii) if, with respect to the other party:
(A) (I) a voluntary case under any applicable bankruptcy,
insolvency or other similar law now or hereafter in effect shall be instituted
by such party, or such party shall consent to the entry of an order for relief
in an involuntary case under any such law; (II) a general assignment for the
benefit of creditors shall be made by such party; (III) such party shall consent
to the appointment of or possession by a receiver, liquidator, trustee,
custodian, sequestrator or similar official of such party or of any substantial
part of its property; or (IV) such party shall adopt a board resolution in
furtherance of any of the foregoing actions specified in this paragraph (A); or
(B) a decree or order for relief by a court of competent
jurisdiction shall be entered in respect of such party in an involuntary case
under any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or appointing a receiver, liquidator, trustee, sequestrator
or other similar official of such party or of any substantial part winding up or
liquidation of its affairs, and any such decree or order shall remain unstayed
or undischarged and in effect for a period of sixty days.
If any act or omission by any Sublicensee under the License (including any
further Sublicensee thereunder) shall cause SUGEN to be in breach or default in
the performance or observance of any of the provisions of this Agreement and
such sublicense is terminated, then notwithstanding anything to the contrary
contained in this Agreement, NYU shall not have the right to terminate this
Agreement for any such breach or default.
(c) Any amount payable hereunder by one of the parties to the other,
which has not been paid by the date on which such payment is due, shall bear
interest from such date until the
________________________
* CONFIDENTIAL TREATMENT REQUESTED
17.
date on which such payment is made, at the rate [...*...] per annum in excess of
the prime rate prevailing at Citibank, N.A. in New York during the period of
arrears and such amount and the interest thereon may be set off against any
amount due, whether in terms of this Agreement or otherwise, to the party in
default by any nondefaulting party.
(d) Except as provided in Section 3(a), if either party terminates this
Agreement for any reason permitted hereunder, all rights in and to the Research
Technology shall revert to NYU, and, subject to the last sentence of Section 7,
Section 8 (a) and the last sentence of section 11(a), SUGEN or any Sublicensee
thereof shall not be entitled to make any further use of such rights (except to
the extent that a third party is free to use them without a license from NYU);
provided, that SUGEN shall retain all of its right, title and interest in, to
and under any other technology developed by or on behalf of SUGEN (and not
developed by NYU). In the event SUGEN shall terminate this Agreement for cause,
such termination shall not terminate the License granted herein, so long as
payments due under Section 8 and Section 9 are maintained.
(e) Termination of this Agreement shall not relieve either party of any
obligation to the other party incurred prior to such termination.
(f) Sections 3(c), 5, 6, 9, 10, 12, 13, 14, 15, 16, 17 and 21 hereof
shall survive and remain in full force and effect after any termination or
expiration of this Agreement.
SECTION 18. REPRESENTATIONS BY SUGEN AND NYU.
(a) SUGEN hereby represents and warrants to NYU as follows:
(i) SUGEN is a corporation duly organized, validly existing
and in good standing under the laws of the State of Delaware. SUGEN has all
requisite power and authority to carry on its business and to own and operate
its properties and assets. The execution, delivery and performance of this
Agreement have been duly authorized by the Board of Directors of SUGEN;
(ii) There is no pending or, to SUGEN's knowledge, threatened
litigation involving SUGEN which would have any material adverse effect on this
Agreement or on SUGEN's ability to perform its obligations hereunder; and
(iii) There is no indenture, contract, or agreement to which
SUGEN is a party or by which SUGEN is bound which prohibits or would prohibit
the execution and delivery by SUGEN of this Agreement or the performance or
observance by SUGEN of any material term or condition of this Agreement.
(b) NYU represents and warrants to SUGEN as follows:
________________________
* CONFIDENTIAL TREATMENT REQUESTED
18.
(i) The execution and delivery of this Agreement have been
duly authorized by all requisite action on the part of NYU and NYU has all
right, power and authority necessary to grant the License and perform its other
obligations hereunder.
(ii) There is no pending or, to NYU's knowledge, threatened
litigation involving NYU which would have any material adverse effect on this
Agreement or on NYU's ability to perform its obligations hereunder;
(iii) There is no indenture, contract, or agreement to which
NYU is a party or by which NYU is bound which prohibits or would prohibit the
execution and delivery by NYU of this Agreement or the performance or observance
by NYU of any material term or condition of this Agreement; and
(iv) NYU holds ail right, title and interest in and to the
Research Technology and, as of the Effective Date is the sole and exclusive
owner thereof, subject only to the rights, if any, of the United States
government and its agencies, to the extent permitted under Section 4(c) hereof,
as set forth in 35 U.S.C. ss.200 et seq. NYU has not received notice of, nor has
any knowledge of any basis for, any claim that the Research Technology infringes
on any patent or other intellectual property right or trade secret of any third
party.
SECTION 19. ASSIGNMENT.
Neither party shall have the right to assign, delegate or transfer at:
any time to any third party, in whole or in part, any or all of the rights,
duties and interest herein granted without first obtaining the written consent
of the other party hereto to such assignment or delegation; provided, however,
that if SUGEN consolidates with or merges into, or sells or transfers all or
substantially all of its assets to, any other entity, then SUGEN may assign all
of its rights and delegate all of its duties hereunder to such successor entity
without first obtaining the consent of NYU to such assignment and delegation.
SECTION 20. USE OF NAME.
Without the prior written consent of NYU, SUGEN shall not use the name
of NYU or of any NYU staff member, employee or student, or any adaptation
thereof:
(i) in any product labeling, advertising, promotional or sales
literature;
(ii) in connection with any public or private offering or in
conjunction with any application for regulatory approval, unless disclosure is
otherwise required by law, in which case SUGEN may make factual statements
concerning the Agreement or file copies of the Agreement after providing NYU
with an opportunity to comment and reasonable time within which to do so on such
statement in draft.
19.
Except as provided herein, neither NYU or SUGEN will issue
public announcements about this Agreement or the status or existence of the NYU
Research Project without prior written approval of the other party.
SECTION 21. MISCELLANEOUS.
(a) In carrying out this Agreement the parties shall comply with all
local, state and federal laws and regulations including but not limited to, the
provisions of 35 U.S.C. ss. 200 et seq., and 15 CFR ss. 368 et seq.. Without
NYU's express prior written consent, neither SUGEN nor any Sublicensee under the
License shall knowingly export, directly or indirectly, (1) any of the NYU
Patents and NYU Know-How, or, (2) the direct product thereof into any country or
territory to which the exportation thereof directly from the United States is
illegal at the time in question, according to the laws of the United States or
to regulations of any department or agency of the Government of the United
States made according to such laws.
(b) If any provision of this Agreement is determined to be invalid or
void, the remaining provisions shall remain in effect.
(c) This Agreement shall be deemed to have been made in the State of
New York and shall be governed and interpreted in all respects under the laws of
the State of New York.
(d) Any dispute arising under this Agreement shall be resolved in an
action in the courts of New York State or the federal courts located in New York
State, and the parties hereby consent to personal jurisdiction of such courts in
any such action.
(e) All payments or notices required or permitted to be given under
this Agreement shall be given in writing and shall be effective when either
personally delivered or deposited, postage prepaid, in the United States
registered or certified mail, addressed as follows:
To NYU: New York University Medical Center 000 Xxxxx Xxxxxx Xxx
Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxxxx
Vice President for
Industrial Liaison
and
Office of Legal Counsel
New York University
Xxxxx Library
00 Xxxxxxxxxx Xxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Associate General Counsel
20.
To SUGEN: Xxxxxxx Xxxxx-Freke
Chairman and Chief Executive Officer
SUGEN, Inc.
000 Xxxxxxxxx Xxxxx
Xxxxxxx Xxxx, Xxxxxxxxxx 00000-0000
or such other address or addresses as either party may hereafter
specify by written notice to the other. Such notices and communications shall be
deemed effective on the date of delivery or fourteen (14) days after having been
sent by registered or certified mail.
(f) This Agreement (and the annexed Appendices) constitute the entire
Agreement between the parties and no variation, modification or waiver of any of
the terms or conditions hereof shall be deemed valid unless made in writing and
signed by both parties hereto. This Agreement supersedes any and all prior
agreements or understandings, whether oral or written, between SUGEN and NYU.
(g) No waiver by either party of any nonperformance or violation by the
other party of any of the covenants, obligations or agreements of such other
party hereunder shall be deemed to be a waiver of any subsequent violation or
non-performance of the same or any other covenant, agreement or obligation, nor
shall forbearance by any party be deemed to be a waiver by such party of its
rights or remedies with respect to such violation or nonperformance.
(h) The descriptive headings contained in this Agreement are included
for convenience and reference only and shall not be held to expand, modify or
aid in the interpretation, construction or meaning of this Agreement.
(i) It is not the intent of the parties to create a partnership or
joint venture or to assume partnership responsibility or liability. The
obligations of the parties shall be limited to those set out herein and such
obligations shall be several and not joint.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
effective as of the date and year first above written.
NEW YORK UNIVERSITY
By: /s/ Xxxxx X. Xxxxxxxx
---------------------------
Name: Xxxxx X. Xxxxxxxx
Title: Vice President for
Industrial Liaison
SUGEN, INC.
By: /s/ Xxxxxxx Xxxxx-Freke
---------------------------
Name: Xxxxxxx Xxxxx-Freke
Title: Chairman and
Chief Executive Officer
21.
APPENDIX I
PRE-EXISTING INVENTIONS
[...*...]
________________________
* CONFIDENTIAL TREATMENT REQUESTED
22.
APPENDIX II
RESEARCH PROGRAM
The proposed research is an investigation of the mechanisms underlying
the action of receptors which control the level of cellular phosphotyrosine by
regulating the activity of either protein tyrosine kinases or protein tyrosine
phosphatases. The goals of this research project are as follows:
[...*...]
________________________
* CONFIDENTIAL TREATMENT REQUESTED
23.
APPENDIX III
SCHEDULE OF PAYMENTS
Payment Due Amount
----------- ------
[...*...]1991 [...*...]
[...*...]1992 [...*...]
[...*...]1992 [...*...]
[...*...]1992 [...*...]
[...*...]1992 [...*...]
[...*...]1992 [...*...]
[...*...]1993 [...*...]
[...*...]1993 [...*...]
[...*...]1993 [...*...]
[...*...]1993 [...*...]
[...*...]1994 [...*...]
[...*...]1994 [...*...]
[...*...]1994 [...*...]
[...*...]1994 [...*...]
[...*...]1995 [...*...]
[...*...]1995 [...*...]
[...*...]1995 [...*...]
[...*...]1995 [...*...]
[...*...]1996 [...*...]
[...*...]1996 [...*...]
[...*...]1996 [...*...]
[...*...]1996 [...*...]
[...*...]1997 [...*...]
[...*...]1997 [...*...]
[...*...]1997 [...*...]
[...*...]1997 [...*...]
[...*...]1998 [...*...]
[...*...]1998 [...*...]
[...*...]1998 [...*...]
[...*...]1998 [...*...]
[...*...]1999 [...*...]
[...*...]1999 [...*...]
[...*...]1999 [...*...]
[...*...]1999 [...*...]
[...*...]2000 [...*...]
[...*...]2000 [...*...]
[...*...]2000 [...*...]
[...*...]2000 [...*...]
[...*...]2001 [...*...]
[...*...]2001 [...*...]
[...*...]2001 [...*...]
________________________
* CONFIDENTIAL TREATMENT REQUESTED
APPENDIX IV
6 June, 1997
Xxxxx X. Xxxxxxxx
Vice President, Industrial Liaison
NYU Medical Center
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
CONFIDENTIALITY AGREEMENT
Dear Xx. Xxxxxxxx:
We are in possession of certain information relating to SUGEN's
proprietary programs with various entities in the field of tyrosine kinases and
phosphatases, including licensing agreements (hereinafter called the "Subject
Matter"), which we consider confidential. We are willing to provide copies of
licensing agreements with these entities to you for the sole purpose ("the
Purpose") of your reviewing those agreements to assure yourself that SUGEN is in
compliance with its existing agreements with you and of preserving and/or
enforcing any right you may have under said existing agreement you have with
SUGEN. You agree to receive such information from us during the term of this
Agreement on the following basis:
1. You will hold in confidence any and all information on the Subject
Matter disclosed to you by us under this Agreement except:
(a) information which at the time of disclosure was in the public
domain;
(b) information which, after disclosure, becomes part of the public
domain by publication or otherwise, except by breach of this
Agreement by you;
(c) information which you can establish by written documents was in
your possession at the time of disclosure by us and was not
acquired, directly or indirectly, from us;
(d) information which you received non-confidentially from a third
party, provided, however, that such information was not obtained
by said third party, directly or indirectly, from us; and
25.
(e) information which you can demonstrate written documents was
independently developed by or for you by persons who did not access
information disclosed by us under this Agreement.
2. Such information may include confidential and proprietary information
supplied to you with the legend "SUGEN Confidential and Proprietary,"
and information of third parties as to which SUGEN has an obligation of
confidentiality.
3. You agree that you will not use the information relating to the Subject
Matter, which you are required hereunder to keep confidential, for any
purpose other than the aforesaid Purpose, without first entering into
an agreement with us covering the use thereof.
4. Your obligation under this Agreement shall not expire.
If you agree to the foregoing, kindly indicate your acceptance thereof and
assent thereto by signing and dating the duplicate copy of this letter at the
space provided for below, returning such signed copy to us. We will then proceed
to disclose to you our information relating to the Subject Matter.
Very truly yours,
SUGEN, Inc.
By: _________________________
Xxxxxxx Xxxxx-Freke
Chief Executive Officer
AGREED TO AND ACCEPTED:
By: _____________________________
Title: __________________________
Date: ___________________________
26.
