1
Exhibit 10.64
CONFIDENTIAL TREATMENT REQUESTED
EXECUTION VERSION
AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS
BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS
dated as of September 20, 2000
by and between
HYBRIDON, INC.
and
BOSTON BIOSYSTEMS, INC.
2
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS
BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS
This AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS
BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS (the
"Agreement"), dated as of September 20, 2000 (the "Effective Date"), is entered
into by and between Boston Biosystems, Inc., a Delaware corporation (the
"Licensor"), having a principal place of business located at 00X Xxxxxxx Xxxxxx,
Xxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as "BBI") and Hybridon,
Inc., a Delaware corporation (the "Licensee"), having a principal place of
business located at 000 Xxxxxxx Xxxx., Xxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter
referred to as "HYBRIDON"). HYBRIDON and BBI are sometimes referred to herein
individually as a "Party" and collectively as the "Parties", and all references
to "HYBRIDON" and "BBI" shall include their respective Affiliates, where
appropriate under the terms of this Agreement.
W I T N E S S E T H:
WHEREAS, HYBRIDON has entered into that certain Asset Purchase
Agreement dated ________________ ("Purchase Agreement") to transfer certain
patents and patent applications as listed in Appendix A attached hereto
("Patents") to BBI;
WHEREAS, HYBRIDON has granted certain rights under the Patents to
OriGenix Technologies, Inc., a corporation incorporated under the laws of the
Province of Quebec, Canada ("OriGenix") by virtue of the license and supply
agreements dated January 22, 1999 ("OriGenix License Agreement" and "OriGenix
Supply Agreement," collectively the "OriGenix Agreements"), attached hereto as
Appendix B;
WHEREAS, BBI wishes to grant, and HYBRIDON wishes to receive, a
license under the Patents to allow HYBRIDON to fulfill its obligations to
OriGenix under the OriGenix Agreements;
NOW, THEREFORE, in consideration of the foregoing recitals, the
parties hereto, intending to be legally bound, do hereby agree as follows:
ARTICLE I
DEFINITIONS
SECTION 1.01. Definitions. The following terms, when capitalized,
shall have the following meanings (such meanings to be equally applicable to
both the singular and plural forms of the terms defined) as used in this
Agreement:
-2-
3
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
"Affiliate(s)" means any person, corporation, partnership, firm,
joint venture or other entity now currently existing or which may be formed in
the future, which directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with, HYBRIDON, BBI, or
AVECIA HOLDINGS PLC, as the case may be. As used in this definition, "control"
means direct or indirect ownership of an entity, whether through the ownership
of more than 50% of the outstanding voting securities or by contract or
otherwise.
"AVECIA HOLDINGS PLC" or "AVECIA HOLDINGS" is a company organized
under the laws of United Kingdom, and its registered office address is XX Xxx
00, Xxxxxxx Xxxxx, Xxxxxxxx, Xxxxxxxxxx, X0 0XX, Xxxxxx Xxxxxxx.
"Confidential Information" shall have the meaning set forth in
Article III.
"Control" or "Controlled" shall refer to possession of the ability
to grant a license or sublicense of patent rights, know-how or other intangible
rights as provided for herein without violating the terms of any agreement or
other arrangement with any Third Party.
"Effective Date" shall have the meaning set forth in the Recitals to
this Agreement.
"Patent" means United States and foreign patents, applications and
provisional applications for United States and foreign patents, and all
reexaminations, reissues, extensions, term restorations, divisionals,
continuations and continuations-in-part thereof.
"Territory" means worldwide.
"Third Party" or "Third Parties" means any entity other than
HYBRIDON, BBI or AVECIA HOLDINGS, and their respective Affiliates.
ARTICLE II
LICENSE GRANT
SECTION 2.01. Subject to the terms and conditions of this Agreement,
BBI hereby grants to HYBRIDON a worldwide license with right to sublicense under
the Patents solely for the purpose of allowing HYBRIDON to fulfill all its
obligations to OriGenix under the OriGenix Agreements ("the License").
SECTION 2.02. In the event that HYBRIDON receives any lump sum,
royalty or similar payments in respect of its obligations to OriGenix under the
OriGenix Agreements (other than payments in respect of the supply of products
thereunder), to the extent that such payments relate to the Patents, HYBRIDON
shall promptly pay to
-3-
4
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
BBI the equivalent amount of such payments, provided that if such payments
relate in part to the Patents and in part to other patents or intellectual
property:
(a) HYBRIDON shall promptly pay to BBI the equivalent amount of such
proportion of the payments as fairly and reasonably relates to the
Patents ("the Proportion");
(b) In the event of any dispute between HYBRIDON and BBI as to the
Proportion, such dispute shall be referred for decision to an
independent expert agreed between the parties (and in default of
agreement appointed by BBI), such person to act as an expert and his
decision to be final and binding on the parties; and
(c) If HYBRIDON receives a lump sum payment from OriGenix in full payment
for a license to make or have made products under the OriGenix
Agreements, HYBRIDON will pay *** of such payment to BBI, the payment
to BBI not to be less than ***.
SECTION 2.03. To the extent that any provision of this Agreement
conflicts with Hybridon's obligations under the OriGenix License Agreement, that
provision will not be enforced.
ARTICLE III
CONFIDENTIALITY
SECTION 3.01. Confidentiality; Exceptions. Except to the extent
expressly authorized by this Agreement or otherwise agreed in writing, the
Parties agree that, for the term of this Agreement and for five (5) years
thereafter, they shall keep confidential the existence of this Agreement and
shall not publish or otherwise disclose or use for any purpose other than as
provided for in this Agreement any information and materials furnished to it by
the other Party pursuant to this Agreement, or any provisions of this Agreement
that are the subject of an Effective order of the Securities Exchange Commission
granting confidential treatment pursuant to the Securities Act of 1934, as
amended (collectively, "Confidential Information"), except to the extent that it
can be established by the receiving Party that such Confidential Information:
(a) was already known to the receiving Party as shown by written
record, other than under an obligation of confidentiality, at the time of
disclosure by the other Party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party as shown by
written record;
(c) became generally available to the public or otherwise part of the
public domain after its disclosure and other than through any act or omission of
the receiving Party in breach of this Agreement; or
-4-
5
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
(d) was disclosed to the receiving Party, other than under an
obligation of confidentiality, by a Third Party who had no obligation to the
disclosing Party not to disclose such information to others.
SECTION 3.02. Authorized Disclosure. Each Party may disclose
Confidential Information hereunder to the extent such disclosure is reasonably
necessary in filing or prosecuting patent applications, prosecuting or defending
litigation, complying with applicable governmental regulations or conducting
pre-clinical or clinical trials, provided that if a Party is required by law or
regulation to make any such disclosures of the other Party's Confidential
Information it will, except where impracticable for necessary disclosures, for
example in the event of medical emergency, give reasonable advance notice to the
other Party of such disclosure requirement and, except to the extent
inappropriate in the case of patent applications, will use its reasonable
efforts to secure confidential treatment of such Confidential Information
required to be disclosed. In addition, and with prior written notice to the
other Party of each Third Party with whom a confidential disclosure agreement is
being entered into, each Party shall be entitled to disclose, under a binder of
confidentiality containing provisions as protective as those of this Article,
Confidential Information to any Third Party for the purpose of carrying out the
purposes of this Agreement. Nothing in this Article shall restrict any Party
from using for any purpose any Confidential Information independently developed
by it during the term of this Agreement.
SECTION 3.03. Publicity Review. Subject to the further provisions of
this Section, no Party shall originate any written publicity, news release, or
other announcement or statement relating to this Agreement or to performance
hereunder or the existence of an arrangement between the Parties (collectively,
"Written Disclosure"), without the prior prompt review and written approval of
the other, which approval shall not be unreasonably withheld or delayed.
Notwithstanding the foregoing provisions of this Section, any Party may make any
public Written Disclosure it believes in good faith based upon the advice of
counsel is required by applicable law or any listing or trading agreement
concerning its publicly traded securities, provided that prior to making such
Written Disclosure, the disclosing Party shall provide the other Party with a
copy of the materials proposed to be disclosed and provide the receiving Party
with an opportunity to promptly review the proposed Written Disclosure. To the
extent that the receiving Party reasonably requests that any information in the
materials proposed to be disclosed be deleted, the disclosing Party shall
request confidential treatment of such information pursuant to Rule 406 of the
Securities Act of 1933 or Rule 26b-2 of the Securities Exchange Act of 1934, as
applicable (or any other applicable regulation relating to the confidential
treatment of information), so that there be omitted from the materials that are
publicly filed any information that the receiving Party reasonably requests to
be deleted. The terms of this Agreement may also be disclosed to (i) government
agencies where required by law, or (ii) Third Parties with the prior written
consent of the other Party, which consent shall not be unreasonably withheld or
delayed, so long as such disclosure is made under a binder of confidentiality
and so long as highly sensitive terms and conditions such as financial terms are
extracted from the Agreement or not disclosed upon the request of the other
Party. All Written Disclosures shall be factual and as brief
-5-
6
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
as is reasonable under the circumstances. Upon request by either Party, the
Parties agree to prepare a mutually agreed press release and question and answer
document with respect to this Agreement. Each Party agrees that all Written
Disclosures and oral statements relating hereto shall be consistent with the
answers specified in such question and answer document.
SECTION 3.04. Survival. This Article shall survive the termination
or expiration of this Agreement for a period of five (5) years.
ARTICLE IV
INTELLECTUAL PROPERTY AND PATENT RIGHTS
SECTION 4.01. Notice. Each of the parties shall promptly notify the
other in writing if it: (i) receives any notice or becomes aware of any
information that in any way affects the other party's rights under this
Agreement; or (ii) becomes aware of any actual or suspected infringement,
misappropriation or misuse by a Third Party of the Patents in the Territory.
SECTION 4.02. Infringement.
(a) BBI's and HYBRIDON's Rights to Enforce. BBI shall have the right
(but not the obligation), in its sole discretion, to take action at its own
expense against actual or suspected infringers of the Patents in the Territory,
and any and all recoveries resulting from such actions by BBI shall be retained
by BBI. At BBI's request, and at BBI's expense, HYBRIDON shall take all
reasonable steps and shall provide any materials, cooperation and assistance as
may be reasonably required to assist BBI in taking action against actual or
suspected infringers in the Territory. HYBRIDON shall join any such action as a
necessary and indispensable party if so required. Notwithstanding any of the
above in this Section 4.02 (a), HYBRIDON shall have all rights of enforcement
reasonably necessary for it to fulfill its obligations under Section 5.1 of the
OriGenix License Agreement. In any such action taken by HYBRIDON in fulfillment
of its obligations thereunder, at HYBRIDON's request, and at HYBRIDON's expense,
BBI shall take all reasonable steps and shall provide any materials, cooperation
and assistance as may be reasonably required to assist HYBRIDON in taking action
against actual or suspected infringers in the Territory. BBI shall join any such
action as a necessary and indispensable party if so required.
-6-
7
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
ARTICLE V
INDEMNIFICATION; LIMITATION OF LIABILITY
SECTION 5.01. Indemnification by BBI. BBI shall defend, indemnify
and hold HYBRIDON, and its and their officers, directors, shareholders,
employees and agents harmless and shall pay all losses, damages, fees, expenses
or costs (including reasonable attorneys' fees) incurred by them based upon any
claim or action alleging BBI's breach of its obligations, representations,
warranties or covenants hereunder unless HYBRIDON's negligence caused the
losses, damages, fees, expenses or costs.
SECTION 5.02. Indemnification by HYBRIDON. HYBRIDON shall defend,
indemnify and hold BBI and its officers, directors, shareholders, employees and
agents harmless and shall pay all losses, damages, fees, expenses or costs
(including reasonable attorney's fees) incurred by them based upon any claim or
action alleging HYBRIDON's breach of its obligations, representations,
warranties or covenants hereunder unless BBI's negligence caused the losses,
damages, fees, expenses or costs.
SECTION 5.03 Limitation of Liability. EXCEPT AS SET FORTH IN SECTION
7.03 HEREIN, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY OR ANY THIRD PARTY
FOR ANY SPECIAL, CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING LOST
OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE SAME), ARISING FROM ANY CLAIM
RELATING TO THIS AGREEMENT, THE PATENTS OR ANY IMPROVEMENT, WHETHER SUCH CLAIM
IS BASED ON WARRANTY, CONTRACT, TORT (INCLUDING NEGLIGENCE OR STRICT LIABILITY)
OR OTHERWISE, EVEN IF AN AUTHORIZED REPRESENTATIVE OF SUCH PARTY IS ADVISED OF
THE POSSIBILITY OR LIKELIHOOD OF SAME.
ARTICLE VI
DISPUTE RESOLUTION.
SECTION 6.01. Disputes. Without prejudice to the provisions in
SECTION 2.02(b), the Parties recognize that disputes as to certain matters may
from time to time arise during the term of this Agreement which relate to either
Party's rights and/or obligations hereunder or thereunder. It is the intent of
the Parties to establish procedures to facilitate the resolution of disputes
arising under this Agreement in an expedient manner by mutual cooperation and
without resort to litigation. To accomplish this objective, the Parties agree to
follow the procedures set forth in this Article if and when a dispute arises
under this Agreement.
SECTION 6.02. Good Faith. The parties shall negotiate in good faith
to resolve the dispute.
-7-
8
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
SECTION 6.03. Personal Meeting. If the dispute remains unresolved,
executives from the interested business units or division of the parties shall
meet in person, at a mutually agreed upon time and place, to negotiate in good
faith to resolve the dispute. If the dispute continues to remain unresolved for
more than sixty (60) days from the date the parties met to negotiate pursuant to
this Section, then either party may pursue other dispute resolution procedures,
including the institution of arbitration as more fully set forth herein.
SECTION 6.04. Alternative Dispute Resolution. Any dispute
controversy or claim arising out of or relating to the validity, construction,
enforceability or performance of this Agreement, including disputes relating to
an alleged breach or to termination of this Agreement, but excluding (i) any
dispute, controversy or claim arising out of or relating to the validity,
enforceability, or infringement of any Patent and (ii) other than disputes which
are expressly prohibited herein from being resolved by this mechanism, shall be
settled by binding Alternative Dispute Resolution ("ADR") in the manner
described below:
(a) If a Party intends to begin an ADR to resolve a dispute, such
Party shall provide written notice (the "ADR Request") to counsel for the other
Party informing such other Party of such intention and the issues to be
resolved. From the date of the ADR Request and until such time as any matter has
been finally settled by ADR, the running of the time periods contained in
SECTION 6.05 as to which a Party must cure a breach of this Agreement shall be
suspended as to the subject matter of the dispute.
(b) Within sixty (60) days after receipt of the ADR Request, the
other Party may, by written notice to counsel for the Party initiating ADR, add
additional issues to be resolved.
SECTION 6.05. Arbitration Procedures. An ADR initiated under this
Agreement will proceed in accordance with the Commercial Arbitration Rules of
the American Arbitration Association then in effect, insofar as such rules are
not inconsistent with the provisions expressly set forth in this Agreement,
unless the Parties mutually agree otherwise, and pursuant to the following
procedures:
(a) Notice of the demand for arbitration will be filed in writing
with the other Party and with the American Arbitration Association. The
arbitration panel shall consist of one (1) arbitrator mutually agreed to by the
Parties and the decision shall be final and binding on the Parties and their
legal successors.
(b) The arbitrator may, at his discretion, provide for discovery by
the Parties, not to exceed four (4) months from the date of filing of the Notice
of Arbitration.
(c) Any arbitration hearing shall be conducted in Wilmington,
Delaware. The governing law will be as specified herein. The arbitrator will
have authority to award both legal and equitable relief but not to award
punitive damages.
-8-
9
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
(d) All costs and fees of the arbitration, other than each Party's
legal fees and expenses, will be allocated by the arbitrators. Subject to
subsection (c), each Party shall bear its own legal fees and expenses.
(e) A final written decision by the arbitrator will be rendered not
later than thirty (30) days following the completion of the hearing.
(f) The ADR proceeding shall be confidential and the arbitrator
shall issue appropriate protective orders to safeguard each Party's confidential
information. Except as required by law, no Party shall make (or instruct the
arbitrator to make) any public announcement with respect to the proceedings or
decision of the arbitrator without prior written consent of each other Party.
The existence of any dispute submitted to ADR, and the award, shall be kept in
confidence by the Parties and the arbitrator, except as required in connection
with the enforcement of such award or as otherwise required by applicable law.
SECTION 6.06. Survivability. Any duty to arbitrate under this
Agreement shall remain in effect and enforceable after termination of this
Agreement for any reason.
SECTION 6.07. Jurisdiction. For the purposes of this Article, each
Party agrees to abide by the award rendered in any arbitration, and the Parties
agree to accept the jurisdiction of any court having jurisdiction over the
Parties for the purposes of enforcing awards entered pursuant to this Article
and for enforcing the agreements reflected in this Article.
SECTION 6.08. Equitable Remedies. Nothing in this Section shall
prevent either party from pursuing a temporary restraining order, injunctive
relief or other equitable relief against the other party at any time if the
allegedly aggrieved party believes that a breach or a threatened breach of this
Agreement would cause it irreparable harm provided that the other party is given
thirty (30) days written notice prior to equitable relief being sought.
ARTICLE VII
REPRESENTATIONS AND WARRANTIES
SECTION 7.01. BBI represents, warrants and covenants that:
(a) BBI is a corporation duly organized, existing and in good
standing under the laws of the State of Delaware, with full right, power and
authority to enter into and perform this Agreement and to grant all of the
rights, powers and authorities herein granted.
-9-
10
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
(b) The execution, delivery, and performance of this Agreement do
not conflict with, violate, or breach any agreement to which BBI is a party, or
BBI's articles of incorporation or bylaws.
(c) This Agreement has been duly executed and delivered by BBI and
is a legal, valid, and binding obligation enforceable against BBI in accordance
with its terms.
(d) BBI knows of no fact which does or could materially adversely
affect the rights granted to HYBRIDON hereunder, except as disclosed herein.
SECTION 7.02. HYBRIDON represents, warrants and covenants that:
(a) HYBRIDON is a corporation duly organized, existing, and in good
standing under the laws of the State of Delaware, with full right, power and
authority to enter into and perform this Agreement and to grant all of the
rights, powers, and authorities herein granted.
(b) The execution, delivery, and performance of this Agreement do
not conflict with, violate, or breach any agreement to which HYBRIDON is a
party, or HYBRIDON's certificate of incorporation or bylaws.
(c) This Agreement has been duly executed and delivered by HYBRIDON,
and is a legal, valid, and binding obligation enforceable against HYBRIDON in
accordance with its terms.
SECTION 7.03. Effect of Representations, Warranties and Covenants.
The Parties agree that if the representations and warranties made by BBI under
this Article are not true and accurate, or if the covenants made by BBI under
this Article are not upheld and complied with, and HYBRIDON incurs reasonably
foreseeable damages, liabilities, costs or other expenses as a result of such
falsity or non- compliance, then BBI shall indemnify and hold HYBRIDON harmless
from and against any such reasonably foreseeable damages, liabilities, costs or
other expenses incurred as a result of such falsity or such non-compliance.
ARTICLE VIII
INFORMATION AND REPORTS
SECTION 8.01. Records of Revenues and Expenses.
(a) HYBRIDON will maintain complete and accurate records which are
relevant to payments subject to SECTION 2.02, costs, expenses and payments under
this Agreement and such records shall be open during reasonable business hours
for a period of two (2) years from creation of individual records for
examination at BBI's expense and not more often than once each year by a
certified public accountant
-10-
11
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
selected by BBI for the sole purpose of verifying for the BBI the correctness of
calculations and classifications of such revenues, costs, expenses or payments
made under this Agreement. In the absence of material discrepancies in any
request for reimbursement resulting from such audit, the accounting expense
shall be paid by BBI. Any records or accounting information received from
HYBRIDON shall be Confidential Information. Results of any such audit shall be
provided to both Parties.
(b) If there is a dispute between the Parties following any audit
performed pursuant to SECTION 8.01(a), either Party may refer the issue (an
"Audit Disagreement") to an independent certified public accountant for
resolution. In the event an Audit Disagreement is submitted for resolution by
either Party, the Parties shall comply with the following procedures:
(i) The Party submitting the Audit Disagreement for
resolution shall provide written notice to the other Party.
(ii) Within thirty (30) business days of the giving of
such notice, the Parties shall jointly select a recognized international
accounting firm to act as an independent expert to resolve such Audit
Disagreement.
(iii) The Audit Disagreement submitted for resolution
shall be described by the Parties to the independent expert, which description
may be in written or oral form, within ten (10) business days of the selection
of such independent expert.
(iv) The independent expert shall render a decision on
the matter as soon as practicable.
(v) The decision of the independent expert shall be final
and binding, unless such Audit Disagreement involves alleged fraud, breach
of this Agreement or construction or interpretation of any of the terms and
conditions hereof.
(vi) All fees and expenses of the independent expert,
including any Third Party support staff or other costs incurred with respect to
carrying out the procedures specified at the direction of the independent expert
in connection with such Audit Disagreement, shall be borne by the losing Party.
-11-
12
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
ARTICLE IX
TERM AND TERMINATION
SECTION 9.01. Term. This Agreement shall commence as of the
Effective Date and shall remain in force, unless terminated as provided herein.
(a) The License shall expire on the date of expiry or termination of
HYBRIDON'S obligations to OriGenix under the OriGenix Agreements with respect to
the Patents. HYBRIDON shall notify BBI of such expiry or termination.
(b) Survivability. Termination, relinquishment or expiration of the
Agreement for any reason shall be without prejudice to any rights which shall
have accrued to the benefit of either Party prior to such termination,
relinquishment or expiration, including damages arising from any breach
hereunder. Such termination, relinquishment or expiration shall not relieve
either Party from obligations which are expressly indicated to survive
termination or expiration of the Agreement.
ARTICLE X
BANKRUPTCY
SECTION 10.01. BBI shall be responsible for the maintenance of the
Patents licensed hereunder pursuant to clause 5.5 of the OriGenix License
Agreement. All rights and licenses granted under or pursuant to this Agreement
by BBI to HYBRIDON are, and shall otherwise be deemed to be, for purposes of
Section 365(n) of the Bankruptcy Code, licenses of rights to "intellectual
property" as defined under Section 101(56) of the Bankruptcy Code. The parties
agree that HYBRIDON, as a licensee of such rights and licenses, shall retain and
may fully exercise all of its rights and elections under the Bankruptcy Code.
The parties further agree that, in the event that any proceeding shall be
instituted by or against BBI seeking to adjudicate it a bankrupt or insolvent,
or seeking liquidation, winding up, reorganization, arrangement, adjustment,
protection, relief or composition of it or its debts under any law relating to
bankruptcy, insolvency or reorganization or relief of debtors, or seeking an
entry of an order for relief or the appointment of a receiver, trustee or other
similar official for it or any substantial part of its property or it shall take
any action to authorize any of the foregoing actions (each a "Proceeding"),
HYBRIDON shall have the right to retain and enforce its rights under this
Agreement.
-12-
13
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
ARTICLE X
MISCELLANEOUS
SECTION 11.01. Assignment.
(a) The License granted hereunder shall be personal to HYBRIDON and
shall not be assigned without the consent of BBI, except that HYBRIDON may
assign the License to any party to whom HYBRIDON assigns the OriGenix
Agreements, and provided HYBRIDON notifies BBI of such assignment.
(b) BBI shall be entitled to assign the Patents without HYBRIDON's
consent, provided that BBI also assigns the License thereunder, and provided BBI
notifies HYBRIDON of such assignment.
(c) This Agreement shall be binding upon and inure to the benefit of
the successors and permitted assigns of the Parties.
SECTION 11.02. Consents Not Unreasonably Withheld or Delayed.
Whenever provision is made in this Agreement for either Party to secure the
consent or approval of the other, that consent or approval shall not
unreasonably be withheld or delayed.
SECTION 11.03. Force Majeure. Neither Party shall lose any rights
hereunder or be liable to the other Party for damages or losses on account of
failure of performance by the defaulting Party if the failure is occasioned by
government action, war, fire, explosion, flood, strike, lockout, embargo, act of
God, or any other cause beyond the control of the defaulting Party, provided
that the Party claiming force majeure has extended all reasonable efforts to
avoid or remedy such force majeure and has given the other Party prompt notice
describing such event, the effect thereof and the actions being taken to avoid
or remedy such force majeure; provided, however, that in no event shall a Party
be required to settle any labor dispute or disturbance.
SECTION 11.04. Notices. All notices hereunder shall be in writing
and shall be deemed given if delivered personally or by facsimile transmission
(receipt verified), telexed, mailed by registered or certified mail (return
receipt requested), postage prepaid, or sent by express courier service, to the
Parties at the following addresses (or at such other address for a Party as
shall be specified by like notice; provided that notices of a change of address
shall be Effective only upon receipt thereof).
(a) If to HYBRIDON:
President
HYBRIDON, INC.
000 Xxxxxxx Xxxx.
Xxxxxxx, XX 00000
-13-
14
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
(b) If to BBI:
BOSTON BIOSYSTEMS, INC.
00X Xxxxxxx Xxx.
Xxxxxxx, XX 00000
SECTION 11.05. Waiver. Except as specifically provided for herein,
the waiver from time to time by either of the Parties of any of their rights or
their failure to exercise any remedy shall not operate or be construed as a
continuing waiver of same or any other of such Party's rights or remedies
provided in this Agreement.
SECTION 11.06. Severability. If any term, covenant or condition of
this Agreement or the application thereof to any Party or circumstances shall,
to any extent or in any country, be held to be invalid or unenforceable, then
(i) the remainder of this Agreement shall not be affected thereby and each term,
covenant or condition of this Agreement shall be valid and be enforced to the
fullest extent permitted by law; and (ii) the Parties hereto covenant and agree
to renegotiate any such term, covenant or application thereof in good faith.
SECTION 11.07. No Strict Construction; Ambiguities. The language
used in this Agreement shall be deemed to be the language chosen by the parties
hereto to express their mutual intent and no rule of strict construction against
either party shall apply to any term or condition of this Agreement.
Ambiguities, if any, in this Agreement shall not be construed against any Party,
irrespective of which Party may be deemed to have authored the ambiguous
provision.
SECTION 11.08. Headings. The Sections and paragraph headings
contained herein are for the purposes of convenience only and are not intended
to define or limit the contents of said Sections or paragraphs.
SECTION 11.09. Governing Law. This Agreement shall be governed by
and interpreted under the laws of the State of Delaware as applied to contracts
entered into and performed entirely in Delaware by Delaware residents.
SECTION 11.10. Further Assurances. Each of the parties agrees to
execute and deliver such other documents, including but not limited to, updating
the list of Patents set forth in Appendix A, and to take all such actions as the
other party, its successors, assigns or other legal representatives may
reasonably request to effect the terms of this Agreement.
SECTION 11.11. Counterparts. This Agreement may be executed in one
or more counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
-14-
15
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
SECTION 11.12. Entire Agreement; Amendments. This Agreement,
including all Appendices attached hereto and thereto, and all documents
delivered concurrently herewith and therewith, set forth all the covenants,
promises, agreements, warranties, representations, conditions and understandings
between the Parties hereto and supersede and terminate all prior agreements and
understandings between the Parties. Both Parties acknowledge that in deciding to
enter into the Agreement and to consummate the transaction contemplated thereby
neither has relied upon any statement or representations, written or oral, other
than those explicitly set forth therein.
SECTION 11.13. Independent Contractors. The status of the Parties
under this Agreement shall be that of independent contractors. Neither Party
shall have the right to enter into any agreements on behalf of the other Party,
nor shall it represent to any person that it has any such right or authority.
Nothing in this Agreement shall be construed as establishing a partnership or
joint venture relationship between the Parties.
SECTION 11.14. Successors. This Agreement will be binding upon and
inure to the benefit of the parties and their respective successors and assigns
in whole or in part.
SECTION 11.15. Authority of Signatories. Each person executing this
Agreement individually and personally represents and warrants that he is duly
authorized to execute and deliver the same on behalf of the corporation for
which he is signing and that this Agreement is binding upon the corporation in
accordance with its terms.
IN WITNESS WHEREOF, HYBRIDON and BBI have caused this Agreement to
be executed as of the date first written above by their respective officers
thereunto duly authorized.
[SIGNATURE PAGES TO FOLLOW]
-15-
16
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
HYBRIDON, INC..
By: /s/ Xxxxxx X. Xxxxxxxx
------------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: Chief Financial Officer
-16-
17
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
BOSTON BIOSYSTEMS, INC.
By: /s/ Xxxxxxx X. Xxxxx
------------------------------------
Name: Xxxxxxx X. Xxxxx
Title: General Counsel
-17-
18
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE OMISSIONS.
APPENDIX A - PATENTS
PATENT/APPLICATION NUMBER HYBRIDON CASE REFERENCE
***
-18-
