Intellectual Property Cross License Agreement By and Among Maxygen, Inc. Maxygen Holdings Ltd. Maxygen ApS AND Bayer HealthCare LLC Dated July 1, 2008
Exhibit 2.1.1
Certain information in this document, marked by brackets, has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been requested with
respect to the omitted portions.
Intellectual Property
By and Among
Maxygen, Inc.
Maxygen Holdings Ltd.
Maxygen ApS
AND
Bayer HealthCare LLC
Dated July 1, 2008
TABLE OF CONTENTS
| Page | ||||
ARTICLE 1 DEFINITIONS |
1 | |||
1.1 “Control” and/or “Controlled |
1 | |||
1.2 Dispute |
1 | |||
1.3 Field Exclusivity Period |
2 | |||
1.4 Licensed-Back Acquired IP |
2 | |||
1.5 Licensed Retained IP |
2 | |||
1.6 Materials |
2 | |||
1.7 ML Laboratories Agreement |
2 | |||
1.8 Owner |
2 | |||
1.9 Recipient |
2 | |||
1.10 Technology Transfer Agreement |
2 | |||
1.11 Territory |
2 | |||
1.10 UCOE-Licensed Compounds |
3 | |||
1.11 UCOE Technology |
3 | |||
1.13 Interpretation |
3 | |||
ARTICLE 2 UCOE TECHNOLOGY |
3 | |||
2.1 Grant |
3 | |||
2.2 Limited Maxygen Rights |
3 | |||
2.3 Sublicensing |
3 | |||
2.4 Compliance with Obligations; Payments; Notices |
3 | |||
2.5 Breach of ML Laboratories Agreement |
4 | |||
2.6 Maxygen Exercise of Retained Rights |
5 | |||
2.7 Negotiation for Direct License |
5 | |||
ARTICLE 3 LICENSED RETAINED IP |
5 | |||
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TABLE OF CONTENTS
(continued)
(continued)
| Page | ||||
3.1 Grant |
5 | |||
3.2 Limited Maxygen Rights |
6 | |||
3.3 Sublicensing |
6 | |||
3.4 Maxygen Exercise of Retained Rights |
6 | |||
ARTICLE 4 LICENSE TO MAXYGEN |
6 | |||
4.1 Grant |
6 | |||
4.2 Sublicensing |
6 | |||
4.3 Bayer Exercise of Retained Rights |
6 | |||
ARTICLE 5 CONSIDERATION; NO IMPLIED RIGHTS |
7 | |||
5.1 Consideration |
7 | |||
5.2 No Future IP; No Implied Rights |
7 | |||
ARTICLE 6 WARRANTIES, REPRESENTATIONS AND COVENANTS |
7 | |||
6.1 Maxygen’s Representations and Warranties |
7 | |||
6.2 Maxygen’s Covenants |
7 | |||
6.3 Bayer Representations and Warranties |
8 | |||
6.4 Bayer Covenants |
8 | |||
ARTICLE 7 PROTECTION OF PROPERTY RIGHTS |
8 | |||
7.1 Maintain Confidentiality |
8 | |||
ARTICLE 8 TERM AND TERMINATION |
9 | |||
8.1 Term of Agreement |
9 | |||
8.2 Expiration of Licensed Patent Rights |
9 | |||
8.3 Termination of Sublicensed Third Party Agreements |
9 | |||
8.4 Effect of Termination |
10 | |||
ARTICLE 9 GOVERNMENTAL COMPLIANCE |
10 | |||
9.1 Compliance with Applicable Law |
10 | |||
9.2 Responsibility for Compliance |
10 | |||
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TABLE OF CONTENTS
(continued)
(continued)
| Page | ||||
9.3 Costs |
10 | |||
ARTICLE 10 DISPUTE RESOLUTION |
10 | |||
10.1 Dispute Resolution |
10 | |||
ARTICLE 11 MISCELLANEOUS |
10 | |||
11.1 Patent Marking |
10 | |||
11.2 Registration of Licenses |
11 | |||
11.3 Entire Agreement |
11 | |||
11.4 Bankruptcy |
11 | |||
11.5 Third Party Beneficiaries |
11 | |||
11.6 Assignment |
11 | |||
11.7 Binding Agreement |
11 | |||
11.8 Rights and Remedies |
11 | |||
11.9 Choice of Law |
12 | |||
11.10 Venue |
12 | |||
11.11 Independent Contractor Status |
12 | |||
11.12 Severability |
12 | |||
11.13 No Waiver |
12 | |||
11.14 Survival |
12 | |||
11.15 Amendments |
13 | |||
11.16 Notice |
13 | |||
11.17 Further Assurances |
13 | |||
11.18 Counterparts |
13 | |||
11.19 Headings |
13 | |||
11.20 Informed Review |
14 | |||
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INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT
This Intellectual Property Cross License Agreement (this “Agreement”) is made and entered into
on this 1st day of July 2008, by and between Maxygen, Inc. (“Maxygen”), a Delaware corporation,
Maxygen Holdings Ltd. (“Holdings”), a wholly owned subsidiary of Maxygen and a company organized
under the laws of the Cayman Islands, Maxygen ApS, a wholly owned subsidiary of Holdings and a
company organized under the laws of the Kingdom of Denmark (“ApS”), and Bayer HealthCare LLC
(“Bayer”), a Delaware limited liability company.
W I T N E S S E T H :
Whereas, concurrently with the execution of this Agreement, Maxygen, Bayer, Holdings and ApS
have executed the Technology Transfer Agreement;
Whereas, Maxygen and its Affiliates own or Control certain rights, title and interest in the
UCOE Technology and Licensed Retained IP which relate to Compounds;
Whereas, pursuant to the Technology Transfer Agreement, Bayer will acquire ownership of the
Acquired Assets;
Whereas, in connection with its acquisition of the Acquired Assets, Bayer desires to obtain
certain licenses under the UCOE Technology and the Licensed Retained IP, and Maxygen and its
Affiliates are willing to grant such licenses, all on the terms and conditions set forth herein;
Whereas, Maxygen desires to obtain a license back under the Licensed-Back Acquired IP, and
Bayer is willing to grant such license, all on the terms and conditions set forth herein;
Now, therefore, in consideration of the mutual promises and obligations hereinafter set forth
and for other good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties hereto stipulate and agree as follows:
ARTICLE 1
DEFINITIONS
DEFINITIONS
The terms used and not otherwise defined herein shall have the meanings ascribed to them in
the Technology Transfer Agreement.
1.1 “Control” and/or “Controlled” shall mean, with respect to Patent Rights, Know-How or
Materials, ownership by or possession by a Party of the ability to grant the licenses or
sublicenses to the other Party as provided for herein, and/or to transfer Materials to the other
Party as provided for herein, without (i) violating the terms of any agreement or other arrangement
with any Third Party, and/or (ii) incurring a contractual payment obligation to a Third Party for
the grant and/or practice of such license or sublicense, as the case may be.
1.2 “Dispute” shall have the meaning set forth in Section 10.1.
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1.3 “Field Exclusivity Period” shall mean the period during which Maxygen is subject to the
obligations set forth in Section 3.1 of the Technology Transfer Agreement.
1.4 “Licensed-Back Acquired IP” means the Patent Rights and Know-How within the Acquired
Assets that have utility outside the Field. With respect to Patent Rights, Licensed-Back Acquired
IP shall include future patent applications and patents issuing thereon to the extent they have
utility outside the Field and claim priority to any Patent Rights within the scope of the foregoing
sentence (provided, however, that with respect to continuation-in-part applications, only those
claims thereof which claim priority to a date on or before the Closing Date shall be included in
the license hereunder). Notwithstanding the foregoing, Licensed-Back Acquired IP shall not
include: (a) the Patent Rights listed on Schedule 4.1(g) of the Technology Transfer Agreement or
the future patent applications filed and patents issuing thereon which claim priority to any Patent
Rights within Schedule 4.1(g), and (b) any Patent Rights and Know-How within the Assigned Third
Party Agreements.
1.5 “Licensed Retained IP” means the Retained Intellectual Property owned by Maxygen, Holdings
or their Affiliates as of the Closing Date. With respect to Patent Rights, Licensed Retained IP
shall include future patent applications and patents issuing thereon to the extent they have
utility in the manufacture, use or sale of Compounds and claim priority to any Patent Rights within
the scope of the foregoing sentence (provided, however, that with respect to continuation-in-part
applications, only those claims thereof which claim priority to a date on or before the Closing
Date shall be included in the license hereunder).
1.6 “Materials” shall mean any chemical or biological substances including, without
limitation, any: (i) organic or inorganic chemical element or compound; (ii) nucleic acid; (iii)
vector of any type (e.g., cosmid, plasmid, spore, phage, virus, or virus-like particle), and
subunits of the foregoing; (iv) host organism, including, without limitation, prokaryotic cells,
eukaryotic cells or animals; (v) eukaryotic cell line, prokaryotic cell line or expression system;
(vi) protein, including, without limitation, any peptide or amino acid sequence, enzyme, antibody
or protein conferring targeting properties and any fragment of any of the foregoing; (vii) genetic
material, including, without limitation, any genetic nucleic acid construct, marker gene and
genetic control element (e.g., promoter, termination signal), gene, genome or variant of any of the
foregoing; and/or (viii) assay or reagent.
1.7 “ML Laboratories Agreement” shall mean that certain Research and Commercial UCOE License
Agreement entered into between ML Laboratories PLC (together with its successors-in-interest,
referred to herein as “ML Laboratories”) and Maxygen, Holdings and ApS on May 27, 2005.
1.8 “Owner” shall have the meaning set forth in Section 7.1.
1.9 “Recipient” shall have the meaning set forth in Section 7.1.
1.10 “Technology Transfer Agreement” shall mean that certain Technology Transfer Agreement
between Maxygen, Holdings and Bayer of even date herewith.
1.11 “Territory” shall mean worldwide.
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1.12 “UCOE-Licensed Compounds” shall mean the two Factor VII variant Compounds designated by
Maxygen as [****] and [****], with the [****] described in Schedules 1.14 and 1.62 of the
Technology Transfer Agreement.
1.13 “UCOE Technology” shall mean any and all Patent Rights and Know-How licensed to Maxygen
under the ML Laboratories Agreement, and any and all Materials provided by ML Laboratories to
Maxygen under the ML Laboratories Agreement (including any modification, derivatives or
improvements thereof in Maxygen’s possession as of the Closing Date).
1.14 Interpretation. The usage and construction of the terms in this Agreement shall be
subject to the construction rules set forth in Section 1.124 of the Technology Transfer Agreement.
ARTICLE 2
UCOE TECHNOLOGY
UCOE TECHNOLOGY
2.1 Grant. Subject to the terms and conditions herein (including, without limitation, Section
2.4), effective as of the Closing Date, Maxygen and its Affiliates hereby grant to Bayer, and Bayer
hereby accepts, a fully-paid (except for payments pursuant to Section 2.4), royalty-free,
irrevocable (except as provided in Section 2.5) sublicense under Maxygen’s and its Affiliates’
interest in the UCOE Technology to research, develop, make, have made, use, sell, offer for sale,
import and have imported the UCOE-Licensed Compounds in the Territory. Such license for the
UCOE-Licensed Compounds shall be exclusive as to Maxygen’s rights and interest in the UCOE
Technology pursuant to the ML Laboratories Agreement.
2.2 Limited Maxygen Rights. Bayer acknowledges that the license to Maxygen with respect to
the UCOE Technology under the ML Laboratories Agreement is non-exclusive and limited to the Field
of Use (as defined in the ML Laboratories Agreement). Accordingly, the license provided in Section
2.1 with respect to the UCOE-Licensed Compounds shall be limited to the scope of the rights
licensed to Maxygen under the ML Laboratories Agreement.
2.3 Sublicensing. Bayer shall have the right to further sublicense the rights sublicensed to
Bayer pursuant to Section 2.1 to the full extent permitted under the terms of the ML Laboratories
Agreement. Any such sublicense shall be (i) in writing, (ii) consistent with the terms and
conditions of this Agreement, and (iii) consistent with the terms and conditions of the ML
Laboratories Agreement (including without limitation Section 4.1 thereof). Bayer shall notify
Maxygen and ML Laboratories in writing of the identity of the applicable sublicensee within thirty
(30) days following each grant of such a sublicense, and shall be responsible for ensuring the
compliance of each of its sublicensees with respect to the UCOE Technology with the applicable
terms and conditions of the ML Laboratories Agreement.
2.4 Compliance with Obligations; Payments; Notices. Bayer hereby covenants that, with respect
to the exercise of the licenses and rights with respect to the UCOE Technology that are sublicensed
to Bayer hereunder, Bayer shall comply, and shall ensure that its Affiliates
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and the sublicensees of Bayer and its Affiliates comply, in each case for the lesser of the
term of the ML Laboratories Agreement and the term of the sublicense to Bayer under Section 2.1 of
this Agreement, with all restrictions and obligations set forth in the ML Laboratories Agreement
(other than payment of annual research fees pursuant to section 6.1 of that agreement) with respect
to the use of the licenses and rights with respect to the UCOE Technology that are sublicensed to
Bayer hereunder, throughout the term of Bayer’s sublicense under the ML Laboratories Agreement.
With respect to payment obligations, Bayer agrees to timely pay ML Laboratories, according to the
terms specified in the ML Laboratories Agreement, all amounts required to be paid under the ML
Laboratories Agreement for the activities of Bayer and its Affiliates and their sublicensees and to
supply concurrent written notification of such payment to Maxygen; provided, however, that Bayer
shall not be obligated to pay any portion of the annual research fees that Maxygen is required to
pay pursuant to section 6.1 of the ML Laboratories Agreement. Bayer shall notify ML Laboratories
and Maxygen in writing within thirty (30) days after achievement of any of the milestone events
indicated in Section 6.2 of the ML Laboratories Agreement, by or under authority of Bayer and/or
its Affiliate, or any sublicensee of either Bayer and/or its Affiliate, with respect to any
UCOE-Licensed Compound.
2.5 Breach of ML Laboratories Agreement.
(a) Notice. In the event that Maxygen receives any written notice of breach under the ML
Laboratories Agreement, Maxygen shall promptly notify Bayer, and each of Bayer (to the extent such
breach is attributed to Bayer and/or its Affiliate or a sublicensee of Bayer and/or its Affiliate)
and Maxygen shall provide such information as is reasonably available to it, or its Affiliates,
regarding the breach or alleged breach (subject to confidentiality obligations to Third Parties).
The Parties shall promptly confer and discuss the nature of the breach or alleged breach, and
appropriate steps to cure such breach to avoid termination of the ML Laboratories Agreement.
(b) Cooperation and Cure. Bayer shall have the first obligation to cure any breach
attributable to Bayer’s action or inaction (or that of Bayer’s Affiliate, or of a sublicensee of
Bayer or its Affiliate), and Bayer and Maxygen each shall have the right to cure any such breach or
alleged breach under the ML Laboratories Agreement in order to avoid termination of the ML
Laboratories Agreement. Maxygen and Bayer shall each use all reasonable efforts, as requested by
the other Party, to cooperate to effect such cure, which cooperation shall be at Bayer’s expense to
the extent the breach or alleged breach is attributable to action or inaction of Bayer and/or its
Affiliate or any sublicensee of either of Bayer and/or its Affiliate, and at Maxygen’s expense to
the extent the breach or alleged breach is attributable to action or inaction of Maxygen and/or its
Affiliate or any sublicensee of Maxygen and/or its Affiliate.
(c) Termination. In the event that Bayer or any of its Affiliates or any sublicensee of Bayer
or its Affiliate has materially breached, or otherwise materially failed to comply with, any
material terms or conditions of the ML Laboratories Agreement with respect to the UCOE Technology
sublicensed to Bayer hereunder, and provided that either (i) Maxygen has notified Bayer within
[****] Business Days of Maxygen’s receipt of notice of breach from ML
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Laboratories or (ii) ML Laboratories has provided notice of such breach directly to Bayer,
then if such material breach or material failure is not cured on or before the date [****] Business
Days prior to the last day of Maxygen’s cure period under the ML Laboratories Agreement, Maxygen
may terminate the sublicense to Bayer hereunder with respect to the UCOE Technology upon written
notice to Bayer. In the event that Maxygen’s license to the UCOE Technology under the ML
Laboratories Agreement is terminated in whole or part, Maxygen shall not be liable to Bayer to the
extent such termination is based upon (i) Bayer’s or its Affiliate’s (or Bayer’s or its Affiliate’s
sublicensee’s) breach of, or failure to comply with, the terms and conditions of the ML
Laboratories Agreement or (ii) Maxygen’s failure to pay any amounts due under the ML Laboratories
Agreement in respect of Bayer’s or any of its Affiliates’ activities, or any of their sublicensees’
activities, (other than annual research fees pursuant to Section 6.1 of such agreement) if Bayer
has not paid such amounts to ML Laboratories on or before the date the applicable payment is due.
2.6 Maxygen Exercise of Retained Rights. Bayer acknowledges and agrees that Maxygen retains
the right to practice, and to grant to Maxygen’s Affiliates and/or to any Third Party rights to
practice, the UCOE Technology for any or all uses (i) outside the Field during the Field
Exclusivity Period, and (ii) outside of the sublicense granted hereunder following the Field
Exclusivity Period, and nothing in this Agreement shall restrict, or be construed to restrict,
Maxygen’s right to practice and grant licenses to practice the UCOE Technology (i) outside the
Field during the Field Exclusivity Period, and (ii) outside of the sublicense granted hereunder
following the Field Exclusivity Period.
2.7 Negotiation for Direct License. Maxygen agrees that Bayer may approach Maxygen’s licensor
under the ML Laboratories Agreement (or such licensor’s successor-in-interest) for the purpose of
obtaining a direct license to Bayer with respect to the rights in the UCOE Technology sublicensed
to Bayer hereunder, and Maxygen agrees that it shall facilitate such contact, on Bayer’s request
after the Closing Date, and not object to such a direct sublicense, provided that (i) Maxygen’s
rights under the ML Laboratories Agreement are not diminished, (ii) Maxygen is not required to make
any payment in respect of such direct license, and (iii) such licensor (or licensor’s
successor-in-interest) releases Maxygen from responsibility and liability (including payment
obligations) under the ML Laboratories Agreement for prospective activities of Bayer and its
Affiliates and their sublicensees with respect to the practice of the UCOE Technology sublicensed
hereunder.
ARTICLE 3
LICENSED RETAINED IP
LICENSED RETAINED IP
3.1 Grant. Subject to the terms and conditions herein, effective as of the Closing Date,
Maxygen and its Affiliates hereby grant to Bayer, and Bayer hereby accepts, (i) a fully-paid,
royalty-free, irrevocable non-exclusive license under the Licensed Retained IP to practice or have
practiced, research, develop, make, have made, use, import and have imported the Licensed Retained
IP, in the Territory, and (ii) a fully-paid, royalty-free, irrevocable (x) exclusive license for
the Field Exclusivity Period and (y) non-exclusive license thereafter, in
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each case under the Licensed Retained IP to research, develop, make, have made, use, sell,
offer for sale, import and have imported Compounds, in the Territory. For clarification,
notwithstanding any provision of this Agreement or the Technology Transfer Agreement, Maxygen has
no duty, expressed or implied, to teach Bayer basic research techniques within the Licensed
Retained IP outside of the services and consultation specified in or provided through the
Transition Services under the Technology Transfer Agreement.
3.2 Limited Maxygen Rights. It is understood and agreed that with respect to any aspect of
the Licensed Retained IP for which Maxygen has less than fully exclusive, worldwide rights (i.e.,
co-exclusive, non-exclusive, limited territorial and/or otherwise restricted rights), the license
provided in Section 3.1 shall be limited to the scope of rights that Maxygen Controls and has the
right to sublicense to Bayer.
3.3 Sublicensing. Bayer shall have the right to sublicense to its Affiliates and Third
Parties rights licensed to Bayer pursuant to Section 3.1.
3.4 Maxygen Exercise of Retained Rights. Bayer acknowledges and agrees that Maxygen retains
the right to practice, and to grant to Maxygen’s Affiliates and/or to any Third Party rights to
practice, the Licensed Retained IP for any or all uses outside of the Field, and nothing in this
Agreement shall restrict, or be construed to restrict, Maxygen’s right to practice and grant
licenses to practice the Licensed Retained IP outside the Field.
ARTICLE 4
LICENSE TO MAXYGEN
LICENSE TO MAXYGEN
4.1 Grant. Subject to the terms and conditions herein, effective as of the Closing Date,
Bayer hereby grants to Maxygen, and Maxygen hereby accepts, a fully-paid, royalty-free,
irrevocable, non-exclusive license under the Licensed-Back Acquired IP to (i) practice or have
practiced, research, develop, make, have made, use, import and have imported the Licensed-Back
Acquired IP outside the Field, in the Territory, and (ii) research, develop, make, have made, use,
sell, offer for sale, import and have imported compounds and products (other than Compounds or
products containing Compounds) outside the Field, in the Territory. For clarification,
notwithstanding any provision of this Agreement or the Technology Transfer Agreement, Bayer has no
duty, expressed or implied, to disclose any Patent Rights or Know-How to Maxygen.
4.2 Sublicensing. Maxygen shall have the right to sublicense to its Affiliates and Third
Parties the rights licensed to Maxygen pursuant to Section 4.1.
4.3 Bayer Exercise of Retained Rights. Maxygen acknowledges and agrees that the license to
Maxygen hereunder is non-exclusive, and Bayer retains the right to practice, and to grant to
Bayer’s Affiliates or to any Third Party rights to practice, the Licensed-Back Acquired IP for any
or all uses.
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ARTICLE 5
CONSIDERATION; NO IMPLIED RIGHTS
CONSIDERATION; NO IMPLIED RIGHTS
5.1 Consideration. The Parties acknowledge that the payments to Maxygen specified in the
Technology Transfer Agreement, according to the terms and condition set forth therein, are
consideration for granting to Bayer the licenses and sublicenses to the UCOE Technology and
Licensed Retained IP on the terms and conditions set forth herein, and the sale and transfer of the
Acquired Assets to Bayer under the Technology Transfer Agreement, according to the terms and
conditions set forth therein, are consideration for granting to Maxygen the license to the
Licensed-Back Acquired IP on the terms and conditions set forth herein. Except as expressly set
forth in Section 2.4, or as set forth in the Technology Transfer Agreement, no other payments shall
be due from Bayer to Maxygen for the license and sublicenses set forth herein. No payments shall
be due from Maxygen to Bayer for the license set forth herein.
5.2 No Future IP; No Implied Rights. Bayer acknowledges and agrees that, (i) except as
specified in this Agreement or the License Agreement, no rights or licenses are conveyed to Bayer
with respect to Patent Rights, Know-How, Materials or other intellectual property rights that are
invented, developed, created, acquired, licensed to or otherwise obtained by Maxygen or any of its
Affiliates after the Closing Date, and (ii) no rights or licenses are conveyed to Bayer with
respect to any Patent Rights, Know-How, Materials or other intellectual property rights owned or
Controlled by any Third Party that is not an Affiliate of Maxygen as of the Closing Date
(regardless of whether such Third Party later becomes an Affiliate of Maxygen). No rights, options
or licenses with respect to any intellectual property owned by Maxygen or Bayer are granted or will
be deemed granted under this Agreement or in connection with it, other than those rights expressly
granted in this Agreement.
ARTICLE 6
WARRANTIES, REPRESENTATIONS AND COVENANTS
WARRANTIES, REPRESENTATIONS AND COVENANTS
6.1 Maxygen’s Representations and Warranties. Except for representations and warranties set
forth in the Technology Transfer Agreement (and subject to the disclaimer set forth in Section 4.3
thereof) made by Maxygen, Maxygen makes no representations, extends no warranties of any kind,
either express or implied, and assumes no responsibilities whatever with respect to the Licensed
Retained IP.
6.2 Maxygen’s Covenants. In addition to any Maxygen covenants under the Technology Transfer
Agreement, Maxygen hereby covenants that Maxygen will, and will cause each of its Affiliates to,
comply with all of its obligations under the Sublicensed Third Party Agreements and will not
terminate or amend any Sublicensed Third Party Agreement in any manner which diminishes the rights
licensed to Bayer or increase the obligations on Bayer hereunder with respect to the UCOE
Technology that is subject to such Sublicensed Third Party Agreement without the consent of Bayer.
In addition, Maxygen will, and will cause each of its Affiliates to, notify Bayer promptly, if
Maxygen or any of its Affiliates receives notice, whether or not there is a cure period, from a
Third Party that Maxygen or any of its Affiliates is in material breach of any Sublicensed Third
Party Agreement, or notice from any Third Party which purports to modify or terminate any
Sublicensed Third Party Agreement in any manner
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which diminishes the rights licensed to Bayer or increases the obligations on Bayer hereunder
with respect to the UCOE Technology that is subject to such Sublicensed Third Party Agreement.
Maxygen will, and will cause each of its Affiliates to, take prompt and commercially reasonable
steps to cure any such breach.
6.3 Bayer Representations and Warranties. Except for representations and warranties set forth
in the Technology Transfer Agreement (and subject to the disclaimer set forth in Section 4.3
thereof) made by Bayer, Bayer makes no representations, extends no warranties of any kind, either
express or implied, and assumes no responsibilities whatever with respect to the Licensed-Back
Acquired IP.
6.4 Bayer Covenants. In addition to any Bayer covenants under the Technology Transfer
Agreement, Bayer hereby covenants that:
(a) Bayer and its Affiliates shall not, and shall ensure that their sublicensees do not,
practice those rights and licenses with respect to the UCOE Technology which are sublicensed to
Bayer under this Agreement outside of the scope of the licenses conveyed to Maxygen under the ML
Laboratories Agreement, or in any manner which is inconsistent with the sublicenses granted
hereunder.
(b) Bayer and its Affiliates shall not, and shall ensure that their sublicensees do not,
practice the Licensed Retained IP licensed to Bayer under this Agreement outside of the scope of
the license conveyed to Bayer pursuant to Section 3.1 of this Agreement.
ARTICLE 7
PROTECTION OF PROPERTY RIGHTS
PROTECTION OF PROPERTY RIGHTS
7.1 Maintain Confidentiality. Except to the extent a Party (“Recipient”) is permitted to
disclose the other Party’s (“Owner”) Confidential Information under Sections 7.1(a) and (b) below,
the Recipient shall use all commercially reasonable efforts to maintain and assure the
confidentiality of the Owner’s Confidential Information. The Recipient may only disclose the
Owner’s Confidential Information to the extent Recipient is legally required to disclose such
information under the terms of a valid and effective subpoena or order issued by a Governmental
Authority; provided, that, Recipient uses reasonable efforts to: (1) promptly notify the Owner of
the existence, terms and circumstances surrounding such a request, so that the Owner may seek an
appropriate protective order and/or waive compliance with the provisions of this Agreement; (2)
provide the Owner full and complete cooperation to seek an appropriate order and/or remedy; (3)
cooperate with the Owner in obtaining reliable assurances that confidential treatment will be
accorded to the disclosed Confidential Information if disclosure of such Confidential Information
is required; and (4) limit disclosure of the Confidential Information to only that part necessary
to comply with the request. Any disclosure of Confidential Information as permitted in the
foregoing sentence shall not alter the confidential nature of such Confidential Information for all
other purposes.
(a) Provided Bayer (or its Affiliate or sublicensee hereunder, as applicable) is otherwise
entitled to engage in such activities under this Agreement, and/or the Technology Transfer
Agreement, Bayer and its Affiliates and sublicensees hereunder may disclose
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Maxygen’s Retained Confidential Information to (i) any of its Affiliates, consultants, outside
contractors and clinical investigators on condition that such Persons agree: (A) to keep such
Confidential Information confidential for at least the same time periods and to the same extent as
Bayer is required to keep the Confidential Information confidential; and (B) to use such
Confidential Information only for such purposes as Bayer is entitled hereunder to use such
Confidential Information; (ii) Governmental Authorities to the extent that such disclosure is
reasonably necessary to obtain patents; (iii) the extent such Confidential Information is
inherently disclosed in a product that is marketed or sold; (iv) Governmental Authorities in
connection with the manufacture, preclinical development, clinical development, and/or efforts to
seek or maintain Governmental Approvals for, products, provided that Bayer or its Affiliate or
sublicensee uses commercially reasonable efforts, consistent with typical practice in the
pharmaceutical industry, to secure confidential treatment thereof by such Governmental Authorities.
(b) Provided Maxygen (or its Affiliate or sublicensee hereunder, as applicable), is otherwise
entitled to engage in such activities under this Agreement, Maxygen and its Affiliates and
sublicensees hereunder may disclose Bayer’s Licensed-Back Confidential Information to (i) any of
its Affiliates, consultants, outside contractors, or clinical investigators on condition that such
Persons agree: (A) to keep such Confidential Information confidential for at least the same time
periods and to the same extent as Maxygen is required to keep the Confidential Information
confidential; and (B) to use such Confidential Information only for such purposes as Maxygen is
entitled hereunder to use such Confidential Information; (ii) Governmental Authorities to the
extent that such disclosure is reasonably necessary to obtain patents; (iii) the extent such
Confidential Information is inherently disclosed in a product that is marketed or sold;
(iv) Governmental Authorities in connection with the manufacture, preclinical development, clinical
development, and/or efforts to seek or maintain Governmental Approvals for, products (other than
Compounds or products containing Compounds), provided that Maxygen or its Affiliate or sublicensee
uses commercially reasonable efforts, consistent with typical practice in the pharmaceutical
industry, to secure confidential treatment thereof by such Governmental Authorities, and (v) the
extent reasonably necessary to comply with Maxygen’s and/or any of its Affiliates’ reporting
obligations under the ML Laboratories Agreement.
ARTICLE 8
TERM AND TERMINATION
TERM AND TERMINATION
8.1 Term of Agreement. Unless terminated in part as set forth in Section 2.5, the licenses
and sublicenses under this Agreement shall be perpetual.
8.2 Expiration of Licensed Patent Rights. On the expiration of each patent within the
Licensed Retained IP, on a patent-by-patent and country-by-country basis, the license set forth in
Section 3.1 shall become a fully paid-up non-exclusive license with respect to practice of the
applicable patent in the country where such patent is expired.
8.3 Termination of Sublicensed Third Party Agreements. In the event that the rights of
Maxygen and its Affiliates under any Sublicensed Third Party Agreement are
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terminated for cause thereunder in a manner which would diminish the rights licensed to Bayer
hereunder, and provided that Bayer and its Affiliates or their sublicensees are not and have not
been in breach of this Agreement, including, without limitation, any of their obligations hereunder
with respect to such Sublicensed Third Party Agreement, then Maxygen shall, and shall cause each of
its Affiliates to, use its commercially reasonable efforts to cooperate with efforts of Bayer to
assure that Bayer can maintain its sublicense to such Sublicensed Third Party Agreement.
8.4 Effect of Termination. In the event of any termination of the sublicense to the UCOE
Technology granted to Bayer hereunder, such termination shall not release any Party hereto from any
liability that, at the time of such termination, has already accrued or that is attributable to a
period prior to such termination, nor preclude either Party from pursuing all rights and remedies
it may have hereunder or at law or in equity with respect to any breach of this Agreement.
ARTICLE 9
GOVERNMENTAL COMPLIANCE
GOVERNMENTAL COMPLIANCE
9.1 Compliance with Applicable Law. Each Party warrants that it shall comply with any
Applicable Laws related to the subject matter of this Agreement that are applicable to such Party.
9.2 Responsibility for Compliance. Each Party shall be, as to its own activities, responsible
for compliance with Applicable Law with respect to any sale, manufacture or other use involving the
UCOE Technology, Licensed Retained IP or Licensed-Back Acquired IP, as applicable, and/or products
it develops using the UCOE Technology, Licensed Retained IP or Licensed-Back Acquired IP, as
applicable, including, without limitation, any applicable export control laws.
9.3 Costs. Except as otherwise provided in this Agreement, the License Agreement and/or the
Technology Transfer Agreement, each Party shall be responsible for any and all of its expenses,
costs, fees, duties and/or taxes necessary to comply with Applicable Law.
ARTICLE 10
DISPUTE RESOLUTION
DISPUTE RESOLUTION
10.1 Dispute Resolution. If a dispute arises out of or relates to this Agreement or its
breach (the “Dispute”), the Parties agree to resolve the Dispute as specified in Section 12 of the
Technology Transfer Agreement.
ARTICLE 11
MISCELLANEOUS
MISCELLANEOUS
11.1 Patent Marking. Bayer agrees that it and its Affiliates shall xxxx all products that are
made, used, or sold under the terms of this Agreement in accordance with Applicable Law regarding
patents.
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11.2 Registration of Licenses. Bayer agrees to register and give required notice concerning
this Agreement, through itself or through its sublicensee, in each country where there exists a
valid claim within the Patent Rights within the UCOE Technology or Licensed Retained IP and an
obligation under Applicable Law to so register or give notice and to pay all costs and legal fees
connected therewith and shall otherwise comply with all Applicable Laws. Maxygen shall, and shall
cause its Affiliates to, reasonably cooperate with Bayer to comply with the obligations under this
Section 11.2 including executing any documents and taking additional actions as Bayer may
reasonably request in connection therewith. If filing of a short form license setting forth the
Patent Rights licensed and scope of the license is acceptable for filing, in lieu of this full
Agreement, in any such country, the Parties agree to use reasonable efforts to cooperate to prepare
such a short form license for such filing. In connection with the filing of this Agreement or any
corresponding short form license, the Parties shall reasonably cooperate and use reasonable efforts
to redact or remove confidential or sensitive information of either Party.
11.3 Entire Agreement. The terms and conditions of the Technology Transfer Agreement and this
Agreement, including all the schedules and all the agreements referenced herein, executed
contemporaneously herewith or contemplated by any of such agreements constitute the entire
agreement between the Parties and supersede all previous communications whether oral or written
between the Parties with respect to the subject matter hereof, and no previous agreement or
understanding varying or extending the same shall be binding upon either Party. If there is any
conflict between the terms in this Agreement and the terms of the Technology Transfer Agreement,
the terms of the Technology Transfer Agreement shall control.
11.4 Bankruptcy. The Parties agree that Xxxxxxx 00 X.X.X. § 000(x) of the Bankruptcy Code
related to intellectual property licenses shall apply to the licenses herein in the event that
Maxygen becomes subject to a proceeding subject to the Bankruptcy Code.
11.5 Third Party Beneficiaries. All rights, benefits and remedies under this Agreement are
solely intended for the benefit of Maxygen, Holdings and Bayer, and no Third Party shall have any
rights whatsoever to (i) enforce any obligation contained in this Agreement; (ii) seek a benefit or
remedy for any breach of this Agreement; or (iii) take any other action relating to this Agreement
under any legal theory, including actions in contract, tort (including but not limited to
negligence, gross negligence and strict liability), or as a defense, setoff or counterclaim to any
action or claim brought or made by the Parties.
11.6 Assignment. The Assignment provisions of Section 14.2 of the Technology Transfer
Agreement shall govern assignment of this Agreement.
11.7 Binding Agreement. This Agreement shall be binding upon and shall inure to the benefit
of the legal representatives, administrators, successors and permitted assigns of the Parties
hereto.
11.8 Rights and Remedies. The rights and remedies of the parties hereunder shall be governed
exclusively under the Technology Transfer Agreement.
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11.9 Choice of Law. This Agreement shall be deemed to have been made under, and shall be
construed and interpreted in accordance with the laws of the State of New York. No
conflict-of-laws rule or law that might refer such construction and interpretation to the laws of
another state, republic, or country shall be considered. The application of the United Nations
Conventions on Contracts for the International Sale of Goods dated 11 April 1980 shall be excluded.
11.10 Venue. Any legal proceeding brought by a Party hereto against the other Party that
relates to this Agreement, or the performance or breach hereof, shall be brought before a court (a
federal court if federal jurisdiction exists) located in Wilmington, Delaware. Each Party hereby
consents to the personal and subject matter jurisdiction of such courts.
11.11 Independent Contractor Status. The Parties hereby acknowledge and agree that each is an
independent contractor and that neither Party or its employees shall be considered to be the agent,
representative, master or servant of the other Party for any purpose whatsoever, and that neither
Party has any authority to enter into a contract, to assume any obligation or to give warranties or
representations on behalf of the other Party. Nothing in this relationship shall be construed to
create a relationship of joint ventures, partnerships, fiduciary or other similar relationships
between the Parties.
11.12 Severability. All Parties hereby agree that neither Party intends to violate any
Applicable Law and that if any word, sentence, paragraph or clause or combination thereof contained
in this Agreement is found, by a court or executive body with judicial powers having jurisdiction
over this Agreement or any of its Parties hereto, in a final unappealed order to be in violation of
any Applicable Law in any country or community or association of countries, such words, sentences,
paragraphs or clauses or combination shall be inoperative in such country or community or
association of countries, and the remainder of this Agreement shall remain binding upon the Parties
hereto. In order that the objectives contemplated by the Parties when entering this Agreement may
be realized as fully as possible, the Parties agree to negotiate in good faith to replace any
provision hereof which is so held, in whole or part, to be in violation of Applicable Law with a
valid and enforceable provision which most closely approximates the effect originally contemplated
by the Parties, and to be bound by such mutually agreed replacement provision.
11.13 No Waiver. The Parties covenant and agree that if either Party fails or neglects for
any reason to take advantage of any of the terms provided for the termination of this Agreement or
if either Party, having the right to declare this Agreement terminated, shall fail to do so, any
such failure or neglect by either Party shall not be a waiver or be deemed or be construed to be a
waiver of any cause for the termination of this Agreement subsequently arising, or as a waiver of
any of the terms, covenants or conditions of this Agreement or of the performance thereof. None of
the terms, covenants and conditions of this Agreement may be waived by either Party except by its
written consent.
11.14 Survival. The provisions, rights and obligations set forth in Articles 1, 7 and 10 and
Sections 8.4, 11.3, 11.5, 11.7 thru 11.16 and 11.18 thru 11.20 along with any other obligations
that by their terms survive termination, shall survive the termination of this Agreement.
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11.15 Amendments. No amendment or modification to this Agreement shall be effective unless it
is in writing and signed by duly authorized representatives of both Parties.
11.16 Notice. Any notices, payments, statements, reports and other communications under this
Agreement shall be in writing and shall be deemed to have been received (i) when personally
delivered, or (ii) five (5) days after mailing if mailed by first-class certified mail, postage
paid and deposited in the United States mail, or (iii) as of the date received if sent by public
overnight courier (e.g., Federal Express), or (iv) as otherwise agreed upon in writing by the
Parties; and addressed as follows:
If for Maxygen, Holdings or ApS:
|
If for Bayer: | |
Maxygen, Inc.
|
Bayer HealthCare LLC | |
000 Xxxxxxxxx Xxxxx
|
000 Xxxxxx Xxx | |
Xxxxxxx Xxxx, Xxxxxxxxxx 00000
|
Xxxxxxxx, XX 00000 | |
X.X.X.
|
X.X.X. | |
Attn: Chief Executive Officer
|
Attn: Legal Department | |
Telephone: (000) 000-0000
|
Telephone: (000) 000-0000 | |
Facsimile: (000) 000-0000
|
Facsimile: (000) 000-0000 | |
With copy to: |
||
Maxygen, Inc.
|
Fulbright & Xxxxxxxx L.L.P. | |
000 Xxxxxxxxx Xxxxx
|
000 Xxxxxxxxxxxx Xxx. XX | |
Xxxxxxx Xxxx, Xxxxxxxxxx 00000
|
Washington, D.C. 00000 | |
X.X.X.
|
X.X.X. | |
Attn: General Counsel
|
Attn: Xxxxxxx Xxxxxx | |
Telephone: (000) 000-0000
|
Telephone: (000) 000-0000 | |
Facsimile: (000) 000-0000
|
Facsimile: (000) 000-0000 |
Either Party may change its official address upon written notice to the other Party.
11.17 Further Assurances. At any time or from time-to-time on and after the Closing Date,
either Party shall at the request of the other Party: (i) deliver to the requesting Party such
records, data or other documents as a required under the provisions of this Agreement, (ii)
execute, and deliver or cause to be delivered, all such consents, documents or further instruments
of assignment, transfer or license as are required under the provisions of this Agreement, and
(iii) take or cause to be taken all such actions, as the requesting Party may reasonably deem
necessary in order for the requesting Party to obtain the full benefits of this Agreement and the
transactions contemplated hereby in accordance with the terms and conditions set forth in this
Agreement.
11.18 Counterparts. This Agreement may be executed in any number of counterparts, each of
which shall be deemed an original but all of which together shall constitute one and the same
instrument. A Party’s signature may be transmitted by facsimile, thereby constituting a signed and
delivered document.
11.19 Headings. The headings contained in this Agreement are for convenience of reference
only and shall not be considered in construing this Agreement.
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11.20 Informed Review. Each Party acknowledges that it and its counsel have received and
reviewed this Agreement and that normal rules of construction, to the effect that ambiguities are
to be resolved against the drafting Party, shall not apply to this Agreement or to any amendments,
modifications, exhibits or attachments to this Agreement.
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IN WITNESS WHEREOF, the Parties hereto have executed and delivered this Agreement in multiple
originals by their duly authorized officers and representatives on the Closing Date.
| BAYER HEALTHCARE LLC: | MAXYGEN, INC.: | |||||||
By:
|
/s/ Xxxx Xxxxxx | By: | /s/ Xxxxxxx X. Xxxxxx | |||||
Name:
|
Xxxx Xxxxxx | Name: | Xxxxxxx X. Xxxxxx | |||||
Title:
|
Executive Vice President | Title: | Chief Executive Officer | |||||
Date:
|
June 28, 2008 executed | Date: | June 27, 2008 executed | |||||
| July 1, 2008 delivered | July 1, 2008 delivered | |||||||
| MAXYGEN HOLDINGS LTD.: | ||||||||
By:
|
/s/ Xxxx Xxxxxxxxxx | |||||||
Name:
|
Xxxx Xxxxxxxxxx | |||||||
Title:
|
Secretary | |||||||
Date:
|
June 30, 2008 executed | |||||||
| July 1, 2008 delivered | ||||||||
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| MAXYGEN APS: | ||||||||
By:
|
/s/ Xxxxxxxx X. Xxxxxxx | |||||||
Name:
|
Xxxxxxxx X. Xxxxxxx | |||||||
Title:
|
Director | |||||||
Date:
|
June 30, 2008 executed | |||||||
| July 1, 2008 delivered | ||||||||
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