Confidential Treatment
Exhibit 10.1
Research Collaboration and
License Agreement
Cubist Pharmaceuticals, Inc.
Novalon Pharmaceuticals Corporation
Dated as of May 5, 1997
Confidential Treatment
Research Collaboration and License Agreement
RESEARCH COLLABORATION AND LICENSE AGREEMENT, dated as of May 5, 1997
(the Effective Date), by and between Cubist Pharmaceuticals, Inc., a Delaware
corporation (Cubist) and Novalon Pharmaceutical Corporation, a
Delaware corporation (Novalon).
WHEREAS, Cubist and Novalon have entered into a Series B Convertible
Preferred Stock Purchase Agreement, dated as of May 5, 1997 (the Stock Purchase
Agreement), pursuant to which Cubist purchased shares of the Series B
Convertible Preferred Stock of Novalon and agreed to engage in a collaborative
"BioKeys" research project and the "ElectroScreen" research project with
Novalon.
WHEREAS, pursuant to Section 7.6 of the Stock Purchase Agreement,
Cubist and Novalon agreed to negotiate and enter into this Agreement to set
forth in greater detail the rights and obligations of the parties with
respect to the research projects.
WHEREAS, Novalon has the right to grant licenses with respect to
certain Novalon Patent Rights and Novalon Technology (as each is defined herein)
and desires to grant a license thereto; and
WHEREAS, Cubist desires to obtain a license to use and practice the
Novalon Patent Rights and Novalon Technology to develop products;
NOW, THEREFORE, in consideration of the mutual promises and agreements set
forth herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Cubist and Novalon hereby agree as
follows:
Section 1. Definitions. Capitalized terms used in this
Agreement shall have the meanings set forth in Schedule I
annexed hereto.
Section 2. Research Collaboration.
2.1 Collaboration.
(a) Cubist and Novalon hereby agree (i) to engage in the
Collaborative "BioKeys" Research Project and the "ElectroScreen"
Research Project, all as described in Exhibit A, (ii) to engage
in the research activities described in Section 2.1(b) and
(c) below and (iii) to engage in such other research activities
as the parties may agree upon from time to time. The terms and
Conditions of the Collaboration
and of all research activities of the parties pursuant to the
Collaboration shall be governed by, to the extent applicable, the
provisions of this Agreement and such other provisions as the
parties may agree upon in writing from and after the date hereof.
The term of the Collaboration shall commence on the date hereof
and end on February 5, 2001, provided that Cubist shall be
entitled to terminate the Collaboration at any time from and
after the end of the Minimum Research Period by giving Novalon at
least thirty (30) days prior written notice of termination.
(b) During the Minimum Research Period, Cubist and Novalon shall
engage in the research activities described in Exhibit A. The
respective tasks, activities and obligations of the parties
during the Minimum Research Period are set forth in Exhibit A.
(c) In the event that Cubist elects not to exercise the Acquisition
Option, Cubist shall, within [ ]* after the
Acquisition Option Expiration Date, deliver to Novalon a schedule
listing all of the research programs then being conducted by
Cubist (the Specified Research Programs, Exhibit B describes the
current research programs at Cubist). During the Remaining
Research Period, Novalon and Cubist shall (i) continue the
research activities described in Exhibit A, (ii) engage in such
research, screening, target discovery and validation, and drug
discovery and development activities as Cubist shall request,
provided that such research, screening, target discovery and
validation, and drug discovery and development activities are
related to, or involve, biological targets that are within the
scope of the Specified Research Programs and (iii) engage in such
other research activities as the parties may agree upon from time
to time. The respective tasks, activities and obligations of the
parties in connection with any of the matters on which the
parties are collaborating during the Remaining Research Period
shall be mutually agreed upon by the parties.
2.2 Funding.
(a) On the first day of each month during the Minimum Research Period
and on the first day or the first month immediately after the
Minimum Research Period, Cubist shall reimburse Novalon for any
payments made by Novalon during the immediately preceding month
in respect of (i) salary and fringe benefits payable by Novalon
to no more than [ ]*
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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employed by Novalon and engaged solely in activities relating to
the Collaboration, and (ii) laboratory supplies for use solely in
activities relating to the Collaboration; provided, however, that
the amount of any monthly payment that Cubist shall be required
to make to Novalon pursuant to the foregone provisions of this
Section 2.2(a) shall in no event exceed [ ]*
(it being understood that any expenses incurred or payments,
made by Novalon in connection with (the Collaboration in any
month during the Minimum Research Period in excess of
[ ]* shall be Novalon's sole responsibility and
Cubist shall have no obligation to reimburse Novalon with
respect to any such excess).
[
]*
(b) On the first day of each month during the Remaining Research
Period and on the first day of the first month immediately after
the Remaining Research Period, Cubist shall reimburse Novalon for
the direct costs incurred by Novalon in connection with
activities relating to the Collaboration, provided that such
costs shall not exceed [
]* (it being
understood that any costs incurred by Novalon in connection with
the Collaboration activities that are in excess of [
]* shall be Novalon's sole
responsibility and Cubist shall have no obligation to reimburse
Novalon with respect to any such excess).
2.3 Obligations Following Termination of Collaboration. Except
for Cubist's obligation, pursuant to Section 2.2(a) above, to make a payment to
Novalon on the first day of the first month immediately after the Remaining
Research Period and except for any other payment obligations of Cubist in
connection with the Collaboration which are agreed upon by the parties in
writing after the date hereof and which by their own terms survive the
Collaboration Termination Date, Cubist shall have no obligations or liabilities
to Novalon pursuant to this Section 2 (including, without limitation, the
obligation to make payments to Novalon in
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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connection with the Collaboration) from and after the Collaboration Termination
Date.
2.4 Exclusivity.
(a) Until [
]* Novalon shall not engage in
any research collaboration, any drug discovery or drug
development collaboration, partnership or alliance, any
licensing transactions or any other kind of transaction,
involving all or any portion of Novalon's intellectual
property or know-how or the intellectual property or know-how
of any Person; provided, however, that the foregoing
provisions of this Section 2.4(a) shall not preclude Novalon
from engaging in the Collaboration. The restrictions set
forth in this Section 2.4(a) may be waived, in any instant,
by written consent of Cubist.
(b) During the period commencing upon the expiration
of the restrictions set forth in Section 2.4(a) above
and ending on the Collaboration Termination
Date, Novalon shall not engage in any research
or screening activities or programs, any
research collaborations, any drug discovery or
drug development collaborations, partnerships or
alliances, any licensing transactions, or any
other kind of transactions, in the anti-
bacterial and anti-fungal therapeutic area;
provided, however, that the foregoing provisions
of this Section 2.4(b) shall not preclude Novalon from
engaging in (i) the Collaboration, or (ii) any research or
screening activity or program so long as it (A) covers, a
finite number of specific biological targets for drug
discovery and development, none of which have been subject to
research and development activities pursuant to the
Collaboration, (B) provides for Novalon to engage in active
research, discovery and development activities with respect to
all of such biological targets, (C) provides for the payment
to Novalon of commercially reasonable consideration and (D)
does not preclude Novalon from entering into similar
arrangements with other parties (including Cubist) relating to
other targets in the same or any different field of pathogen.
The restrictions set forth in this Section 2.4(b) may be
waived. in any instance, by written consent of Cubist.
(c) Until [
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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]* Novalon, subject to any
applicable nondisclosure agreements between Novalon and third
parties, shall discuss and coordinate in advance with Cubist
any contacts, meetings, discussions or negotiations that
Novalon proposes to make or in which Novalon proposes to
participate, to the extent that such proposed contacts,
meetings, discussions or negotiations relate to any research
or screening activities or programs, any research
collaboration, any drug discovery or drug development
collaboration, partnership or alliance, any licensing
transaction, or any other kind of transaction, involving all
or any portion of Novalon's intellectual property or know-how
or the intellectual property or know-how of any Person;
provided, however, that the foregoing provisions of this
Section 2.4(c) shall not apply to the Collaboration.
Section 3. License. Subject to all of the terms of this Agreement,
Novalon hereby grants to Cubist a worldwide right and license to use the
Novalon Patent Rights and the Novalon Technology, for purposes of (i)
researching, screening for, discovering or developing anti-bacterial or
anti-fungal drug candidates or antibacterial or anti-fungal drug discovery
targets or (ii) selling, licensing, marketing or otherwise commercializing
anti-bacterial or anti-fungal drugs discovered or developed using any portion
of the Novalon Patent Rights and the Novalon Technology. The license shall be
perpetual and irrevocable. The license shall be exclusive with respect to any
Novalon Patent Rights and Novalon Technology that were developed in the
course of the research and development activities provided for in Section 2
hereof. Cubist shall have the right to sublicense the license granted to
Cubist pursuant to this Section 3. Except for any payments made or required
to be made by Cubist to Novalon pursuant to Section 2.2 or Section 4.1 in
connection with the Collaboration, Cubist shall not have to pay or otherwise
owe to Novalon any consideration of any kind in connection with the license.
Section 4. Royalties & Payments.
Section 4.1 Royalties. In consideration for the license granted
under this Agreement, Cubist shall pay royalties (collectively, the
Royalties) to Novalon, within [ ]* after the end of each calendar quarter,
in the amount of [ ]* of all revenue actually received by Cubist from
third parties to the extent that such revenue is directly attributable to (a)
Net Sales of Products for such quarter, (b) drug development milestone
payments actually received by Cubist during such quarter on account of any
antibacterial or antifungal drug candidate that was discovered or developed
as a result of the use of the Novalon Patent Rights or the Novalon
Technology, and (c) any
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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licensing fees actually received by Cubist during such quarter with respect
to any Sublicense.
Section 4.2 Payments. All payments due under this Agreement shall be
paid (a) in full without deduction of exchange, collection, taxes or other
fees that may be imposed by any government and (b) in United States dollars
at Novalon's office in Chapel Hill, North Carolina or at such other place as
Novalon may designate consistent with applicable law. Currency conversions
shall be made by reference to the prevailing exchange rate for bank transfers
from the foreign currency to U.S. Dollars, as quoted at BankBoston on the
last business day of the calendar quarter immediately preceding the payment
due date. If by law, regulation or fiscal policy of any country, conversion
from that country's currency into U.S. dollars is restricted or forbidden,
written notice thereof shall be given to Novalon and payment of amounts from
that country shall be made through such lawful means as Novalon shall
designate, including, without limitation, deposit of local currency in such
recognized banking institution as Novalon shall designate. When in any
country the law or regulation prohibits both the transmittal and the deposit
of royalties as sales in that country, royalty payments from that country
will be suspended for as long as the prohibition is in effect and, as soon as
the prohibition ceases, all royalties that Cubist or its Sublicensees would
have been obligated to pay, but for the prohibition, will promptly be
deposited or transmitted, as (be case may be, to the extent then allowed.
Section 5. Intellectual Property.
Section 5.1 Ownership Rights. Novalon shall own all Technology and
inventions made, developed or discovered solely by its employees or agents or
by the employees or agents of any of its Affiliates, and shall own all Patent
Rights relating to such Technology and inventions. Cubist shall own all
Technology and inventions made, developed or discovered solely by its
employees or agents or by the employees or agents of any of its Affiliates,
and shall own all Patent Rights relating to such Technology and inventions.
Cubist and Novalon shall own all Technology and inventions developed jointly
by the employees or agents of Novalon and Cubist or their respective
Affiliates, and shall own all Patent Rights relating to such Technology and
inventions. Subject to the provisions of Section 5.2 below, Novalon retains
all rights to file and prosecute any and all patent applications included
within the Novalon Patent Rights, and Cubist retains all rights to file and
prosecute any and all patent applications included within the Cubist Patent
Rights.
Section 5.2 Patent Filings. Novalon shall, at its expense and using
patent attorneys selected by it, apply for, seek issuance of and maintain the
Novalon Patent Rights and other patents based on the Novalon Technology in
the United States and in such other countries as are identified in the Patent
List hereto or as Cubist may request in writing; provided that Cubist shall
cooperate with
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Novalon in such prosecutions filing and maintenance. Cubist shall be given at
least ten (10) days to advise and comment upon such filings and actions as
are undertaken by Novalon. Novalon may, in its discretion, decline to apply
for, prosecute or maintain any Novalon Patent Rights in any country, but
shall give timely notice to Cubist of any such determination, whereupon
Cubist may undertake such action, in the name and on behalf of Novalon, at
its own expense. Novalon agrees to cooperate with (Cubist as reasonably
necessary to permit Cubist to be able to prosecute or maintain any Novalon
Patent Rights in those countries that Novalon declines to undertake action.
Novalon also agrees to cooperate with Cubist as reasonably necessary to
permit Cubist to be able to prosecute or maintain any Cubist Patent Rights
arising from the Collaboration in those countries selected by Cubist.
Section 6. Indemnification.
Section 6.1 Indemnification. Cubist shall at all times defend and
hold Novalon, and its officers, directors, employees, agents and Affiliates
(together, Novalon Indemnitees) harmless from and against all claims, suits,
demands, liability and expenses, including legal expenses and reasonable
attorneys' fees, arising out of (a) the death of or injury to any person or
persons, (b) damage to property, or (c) any other claim, proceeding, demand,
expense and liability of any kind whatsoever resulting from (i) the
production, manufacture, shipping, handling, use (in commerce or otherwise),
sale, lease, consumption, promotion or advertisement of the Products by
Cubist or any Sublicensee or (ii) any obligation or activity of Cubist under
this Agreement or of any Sublicensee under any Sublicense; provided that
Cubist shall have no obligation to indemnify Novalon to the extent of
liability attributable to the Novalon's gross negligence or willful
misconduct.
Section 6.2 Indemnification. Novalon shall at all times defend and
hold Cubist, its officers, directors, employees, agents and Affiliates
(together, Cubist Indemnitees) harmless from and against all claims, suits,
demands, liability and expenses, including legal expenses and reasonable
attorneys' fees, arising out of any claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from (i) the Novalon Patent Rights
and the Novalon Technology or (ii) any obligation or activity of Novalon
under this Agreement; provided that Novalon shall have no obligation to
indemnify Cubist to the extent of liability attributable to the Cubist's
gross negligence or willful misconduct.
Section 7. Infringement.
Section 7.1 Notice. Cubist shall notify Novalon promptly in writing
of any alleged Infringement of the Novalon Patent Rights by a third party and
shall provide any available evidence thereof.
Section 7.2 Prosecution By Novalon. Novalon shall have the right,
at its sole discretion, to prosecute, at its own expense, any alleged
infringements of the
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Novalon Patent Rights. Cubist agrees to allow Novalon to include Cubist, at
Novalon's expense, as a party plaintiff in any suit brought with respect to
infringement alleged to have occurred during the Collaboration within the
antibacterial and anti-fungal therapeutic area. In the event that Novalon
takes the lead counsel role with respect to the commencement or defense of
any action, the total cost shall be borne by and any recovery or damages
shall be paid solely to Novalon. Cubist shall have the right to participate
in any action, at Cubist's expense, and Novalon agrees to consult with
counsel for Cubist on any significant matters related to the litigation.
Section 7.3 Prosecution By Cubist.
(a) Procedure. If Novalon, within six (6) months after having been
notified of an alleged infringement, shall have been unsuccessful in
negotiating with the alleged infringer to cease and desist such infringement
and shall not have brought an infringement action, or if Novalon shall notify
Cubist at any time prior thereto or its intention not to bring suit against
any alleged infringer, then Cubist shall have the right, but shall not be
obligated, to prosecute at its own expense any such infringement of the
Novalon Patent Rights. Cubist shall be entitled to offset the costs of any
such litigation against any amounts due by Cubist to Novalon under this
Agreement. In such circumstances, Cubist may use the name of Novalon as the
plaintiff if necessary for the prosecution of the infringement suit.
Notwithstanding anything in the foregoing to the contrary, no settlement,
consent judgment or other voluntarily final disposition of any such suit may
be entered into without the consent of Novalon, which consent shall not be
unreasonably withheld.
(b) Damages. In the event that Cubist undertakes litigation pursuant
to Section 7.3(a) for the enforcement of Novalon Patent Rights, any recovery
of damages by Cubist for each suit shall be applied as follows: (a) first, to
Cubist to reimburse Cubist for the expenses of the litigation or suit,
including reasonable attorneys' fees, (b) then, second, to Novalon to
reimburse Novalon for its expenses of the litigation or case, including
reasonable attorneys' fees and any Running Royalty Amounts and licensing Fees
withheld by Cubist pursuant to Section 8.3(a), (c) then, third, an amount
equal to the aggregate dollar amount of sales revenue made by the infringing
person would be allocated [ ]* to Cubist and [ ]*
to Novalon and (d) then, the balance would be allocated [ ]*
between Cubist and Novalon.
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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Section 7.4 Actions Against Cubist or Novalon.
(a) In the event that an action alleging invalidity or
noninfringement of any of the Novalon Patent Rights shall be brought against
Cubist or against Novalon (whether as an independent action or as a
counterclaim of a suit filed by Cubist pursuant to Section 7.3(a)), Novalon,
at its sole option, shall have the right, within thirty (30) days after the
commencement of such action, to take or regain control of the action at its
own expense. If Novalon shall determine not to exercise this right, Cubist
may take over or remain as lead counsel for the action at Cubist's sole
expense, with any settlement or recovery subject to the approval provisions
of Section 7.3(a) and allocation provisions of Section 7.3(b).
(b) In the event that an action alleging any of the Novalon Patent
Rights or Novalon Technology infringes, or resulted from the misappropriation
of, any third party shall be brought against Cubist or against Novalon
(whether as an independent action or as a counterclaim of a suit filed by
Novalon pursuant to Section 7.2), Cubist, at its sole option, shall have the
right, within thirty (30) days after the commencement of such action, to take
or regain control of the action at its own expense. If Cubist shall determine
not to exercise this right, Novalon may take over or remain as lead counsel
for the action at Novalon's sole expense.
Section 7.5 Cooperation. In any infringement suit, either party
shall be entitled to request the cooperation and assistance of the other
party, at the requesting party's expense, as may be reasonably necessary for
the suit. Each party agrees to make available relevant records, papers,
information, samples and specimens, as well as to have its employees testify
upon request.
Section 7.6 Third Party Licenses. If Cubist and Novalon mutually
determine that sales of Products or use of the Novalon Patent Rights or
Novalon Technology would be impractical or impossible without obtaining a
royalty-bearing license from a third party, Cubist may enter into a license
with such third party, and Cubist shall be permitted to offset royalties or
any other amounts paid thereunder as a deduction within the calculation of
Royalties, unless the third party is an Affiliate of Cubist; provided,
however, that Cubist shall be entitled to offset no more than [ ]*
of the Royalties otherwise payable to Novalon.
Section 8. Dispute Resolution.
Section 8.1 Scope and Enforcement. Any controversy or claim arising
between the parties in connection with this Agreement shall be resolved by
binding arbitration in accordance with the terms and conditions of this
Section 9; provided,
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* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
9
that actions by either party seeking equitable or declaratory relief may be
brought in court pursuant to Section 9. This agreement to arbitrate shall
continue in full force and effect despite the expiration, rescission or
termination of this Agreement. All arbitration shall be undertaken in
accordance with the federal policy favoring arbitration, as set forth in the
Federal Arbitration Act, and the decision of the arbitrator(s) shall be
enforceable in any court of competent jurisdiction. The parties knowingly and
voluntarily waive their rights to have their dispute tried and adjudicated by
a judge and jury except as expressly provided herein. The arbitrator(s) shall
apply the law of the Commonwealth of Massachusetts and the arbitration shall
be held in Boston, Massachusetts or in such other city as the parties may
mutually agree.
Section 8.2 Procedure. Any party may demand arbitration by sending
written notice to the other party. The arbitration and the selection of the
arbitrator(s) shall he conducted in accordance with such rules as may be
agreed upon by the parties, or, failing agreement within thirty (30) days
after arbitration is demanded, under the Commercial Arbitration Rules of the
American Arbitration Association (AAA), as such rules may be modified by this
Agreement. If the parties are unable to agree upon a single arbitrator within
sixty (60) days, three (3) arbitrators shall be used, one selected by each
party within ten (10) days after the conclusion of the sixty (60) day period
and a third selected by the first two within ten (10) days thereafter. The
arbitrator or arbitrators shall be accredited by the AAA and shall be
individuals with relevant business experience in structuring and negotiating
biotechnology research collaborations; provided, however, that the parties
may mutually agree in writing to waive either UT both of the foregoing
requirements. Unless the parties agree otherwise, they shall be limited in
their discovery to directly relevant documents- Responses or objections to a
document request shall be served twenty (20) days after receipt of the
request. The arbitrator(s) shall resolve any discovery disputes.
Section 8.3 Awards. The arbitrator(s) shall have the authority to
award actual money damages (with interest on unpaid amounts from the date
due), specific performance, and temporary injunctive relief, but the
arbitrator(s) shall not have the authority to award exemplary or punitive
damages, and the parties expressly waive any claimed right to such damages.
The arbitration shall be of each party's individual claims only, and no claim
of any other party shall be subject to arbitration in such proceeding. The
parties are unable to agree on the appointment of a single arbitrator, each
party shall bear the cost of the arbitrator appointed by such party and the
cost of the third arbitrator shall be shared equally by both parties. Each
party shall be responsible for all costs incurred by it in preparing for and
participating in the arbitration. Except as otherwise required by law, the
parties and the arbitrator(s) agree to maintain as confidential all
information or documents obtained during the arbitration process, including
the resolution of the dispute.
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Section 9. General Provisions.
Section 9.1 Remedies. The parties acknowledge and agree that, in the
event of a breach or a threatened breach by either party of Section 9.4
hereof, the other party may suffer irreparable damage for which it will have
no adequate remedy at law and, accordingly, shall be entitled to injunctive
and other equitable remedies to prevent or restrain such breach or threatened
breach, without the necessity of posting any bond or surety, in addition to
any other remedy it might have at law or at equity.
Section 9.2 Governing Law. This Agreement shall be governed and
construed in accordance with the internal laws of the State of Delaware,
without regard to its rules concerning conflicts of laws.
Section 9.3 Exclusive Venue; Consent to Jurisdiction. Any action,
suit or other proceeding pursuant to, arising under, or touching or
concerning this Agreement or the transactions contemplated hereby (other than
those for which arbitration pursuant to Section 8 is the sale forum) shall be
brought exclusively in any court of competent jurisdiction in the State of
Delaware. The parties agree to take any and all necessary or appropriate
action to submit to the exclusive jurisdiction of any such court. In any such
action, suit or proceeding, the successful or prevailing party shall be
entitled to recover its reasonable attorneys' fees and other costs incurred
in connection with that action, suit or proceeding, in addition to any other
relief to which such party may be entitled.
Section 9.4 Confidentiality. It is contemplated that in the course
of the performance of this Agreement each party may, from time to time,
disclose Confidential Information to the other. Each party agrees to take all
reasonable steps to prevent disclosure of Confidential Information; provided
that no provision of this Agreement shall be construed to preclude such
disclosure of Confidential Information as may be necessary or appropriate to
obtain from any governmental agency any necessary approval or license or to
obtain patents that are to be included in Novalon Patent Rights.
Section 9.5 Amendment and Waiver. No provision of or right under
this Agreement shall be deemed to have been waived by any act or acquiescence
on the part of either party, its agents or employees, but only by an
instrument in writing signed by an authority officer of each party. No waiver
by either party of any breach of this Agreement by the other party shall be
effective as to any other breach, whether of the same or any other term or
condition and whether occurring before or after the date of such waiver.
Section 9.6 Independent Contractors. Each party represents that
it is acting on its own behalf as an independent contractor and is not acting
as an agent for or on behalf of any third party. This Agreement and the
relations hereby established by and between Cubist and Novalon do not
constitute a partnership, joint venture, agency or contract of employment
between them.
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Section 9.7 Assignment. Neither party may assign its rights or
obligations hereunder without the prior written consent of the other party,
which consent shall not be unreasonably withheld in the case of any
assignment pursuant to a merger, consolidation or sale of substantially all
of the assets or stock of a party, provided that (a) nothing contained in
this Section 9.7 shall prohibit sublicensing, and (b) the proposed assignee
under this Section 9.7 agrees in writing to assume all of the obligations of
such party under this Agreement.
Section 9.8 Successors and Assigns. This Agreement shall bind and
inure to the benefit of the parties hereto and their respective successors
and permitted assigns.
Section 9.9 Use of Names. Neither party shall use the name of the
other party or any officer, employee or consultant of the other party or any
adaptation thereof in any advertising, promotional or sales literature,
publicity or In any document employed to obtain funds or financing without
the prior written approval of the party or individual whose name is to be
used; provided that Cubist may state that it is licensed by Novalon under the
Novalon Patent Rights and the Novalon Technology and may make such disclosure
as is required by the Securities Act of 1933, the Securities Exchange Act of
1934 and the rules and regulations promulgated thereunder.
Section 9.10 Notices. All communications hereunder shall be in
writing and shall he deemed to have been duly given upon receipt by the
addressee at the addresses set forth below or such other address as either
party may specify by notice sent in accordance with this Section:
If to Cubist:
Cubist Pharmaceuticals, Inc.
00 Xxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Xxxxxx, XX 00000
Attention: Xxxxx X. Xxxxxxxx, Ph.D.
Telecopier: (000) 000-0000
With a copy to,
Xxxxxxx Xxxx LLP
000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Xxxx, Esquire
Telecopier: (000) 000-0000
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(i) If to Novalon:
Novalon Pharmaceutical Corporation
000 Xxxx Xxxxxxx Xxxxxx, Xxxxx X
Xxxxxx Xxxx, X.X. 00000
Attention: Xxxx X. Xxxxxxx, NM, Ph.D.
Telecopier: (000) 000-0000
with a copy to:
Jenner & Block
12th Floor
000 Xxxxxxxxxx Xxxxxx, X. X.
Xxxxxxxxxx, X.X. 00000
Attention: D. Xxx Xxxxx, Esquire
Telecopier: (000) 000-0000
Section 9.11 Severability. In the event any provision of this
Agreement shall for any reason be held to be invalid, illegal or
unenforceable in any respect, such invalidity, illegality or unenforceability
shall not affect any other term or provision hereof. The parties agree that
they will negotiate in good faith or will permit a court or arbitrator to
replace any provision hereof so held invalid, illegal or unenforceable with a
valid provision which is as similar as possible in substance to the invalid,
illegal or unenforceable provision.
Section 9.12 Conflict or Inconsistency. In the event of any
conflict or inconsistency between the terms and conditions hereof and any
terms or conditions set forth in any purchase order or other document
relating to the transactions contemplated by this Agreement, the terms and
conditions set forth in this Agreement shall prevail.
Section 9.13 Captions. Captions or the sections and subsections of
this Agreement are for reference purposes only and do not constitute terms or
conditions of this Agreement and shall not limit or affect the terms and
conditions hereof.
Section 9.14 Word Meanings. Words such as herein, hereinafter,
hereof and hereunder refer to this Agreement as a whole and not merely to a
section or paragraph in which such words appear, unless the context otherwise
requires. The singular shall include the plural, and each masculine, feminine
and neuter reference shall include and refer also to the others, unless the
context otherwise requires.
Section 9.15 Entire Agreement. This Agreement contains the entire
understanding of the parties hereto with respect to the transactions and
matters contemplated hereby, supersedes all prior agreements and
understandings relating to the subject matter hereof (including, without
limitation, Section 7 of the
13
Stock Purchase Agreement), and no representations, inducements, promises or
agreements, whether oral or otherwise, between such parties not contained
herein or incorporated herein by reference shall be of any force or effect.
Section 9.16 Acquisition. This Agreement shall immediately
terminate upon consummation of the Acquisition.
Section 9.17 Rules of Construction. The parties agree that they have
participated equally in the formation of this Agreement and that the language
and terms of this Agreement shall not be presumptively construed against
either of them.
Section 9.18 Counterparts. This Agreement may be executed in
multiple counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument. In making proof
of this Agreement, it shall not be necessary to produce or account for more
than one such counterpart.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed by their respective duly authorized officers, and have duly
delivered and executed this Agreement under seal as of the date first set
forth above.
CUBIST PHARMACEUTICALS, INC. NOVALON PHARMACEUTICAL
CORPORATION
/s/ Xxxx Xxxxxx for Xxxxx X. Xxxxxxxx /s/ Xxxx X. Xxxxxxx
------------------------------------- -------------------------------------
By: Xxxxx X. Xxxxxxxx By: Xxxx X. Xxxxxxx
Title: President and Chief Title: President and Chief
Executive Officer Executive Officer
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Schedule I
Definitions
When used as capitalized terms in the Research Collaboration and
License Agreement to which this Schedule I is attached, the following terms
shall have the respective meanings set forth below:
AAA has the meaning specified in Section 10.
Acquisition means the acquisition by Cubist of all of the outstanding
shares of Novalon's capital stock.
Acquisition Option means Cubists option to acquire all of the
outstanding shares of Novalon's capital stock pursuant to that certain
Acquisition Option Agreement, dated May 5, 1997.
Acquisition Option Expiration Date means the earlier of (i) [ ]* or
(ii) such date as the Acquisition Option terminates pursuant to that certain
Acquisition Option Agreement, dated May 5, 1997.
Affiliate means with respect to any person or Entity, any other person
or Entity that controls, is controlled by or is under common control with the
specified person or Entity. As used in this definition, the term control means
the possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of an Entity, whether through ownership
of voting securities, by contract or otherwise.
Agreement means the research collaboration and license agreement to
which this Schedule I is attached, together with all Schedules and Exhibits
annexed thereto, as the same shall be modified and in effect from time to time.
Collaboration means the collaboration and other research activities
engaged in by Cubist and Novalon pursuant to Section 2 of this Agreement.
Collaboration Termination Date means the earlier of (i) [ ]* or (ii)
the effective date of termination of the Collaboration pursuant to the
provision, of Section 2.1(a) of this Agreement.
Confidential Information means all information and data provided by the
parties to each other hereunder in written or other tangible medium and
--------------------------
* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
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marked as confidential, or if disclosed orally, confirmed in writing within
thirty (30) days after disclosure, except any portion thereof which:
(a) is known to the receiving party, as evidenced by the receiving
party's written record, before receipt thereof under this Agreement;
(b) is disclosed to the receiving party by a third person who has a
right to make such disclosure; or
(c) is or becomes generally known in the trade through no fault of the
receiving party.
Cubist Indemnitee has the meaning specified in Section 6.2.
Cubist Patent Rights means Patent Rights which are owned by Cubist or
any of its Affiliates or which Cubist or any of its Affiliates has the right to
license or sublicense to persons or Entities.
Cubist Technology means Technology which is owned by Cubist or any of
its Affiliates or which Cubist Or any of its Affiliates has the right to license
or sublicense to persons or Entities.
Effective Date has the meaning set forth in the preamble to this
Agreement.
Entity means any corporation, association, partnership (general or
limited), joint venture, trust, estate, limited liability company, limited
liability partnership or other legal entity or organization.
Exhibit A means Exhibit A to this Agreement, as said Exhibit A may be
amended and in effect from time to time.
Minimum Research Period means the period commencing
on the Effective Date and ending on the later of [ ] * or [ ]*
after the Acquisition Option Expiration Date.
Net Sales means all gross amounts billed to any person or Entity (other
than an Affiliate of such person or Entity) at the earliest of invoice, shipment
or payment in respect of Products, less the sum of the following amounts:
(a) sales and use taxes, tariffs, duties and the like imposed
directly and with reference to particular sales or leases;
plus
(b) outbound shipping prepaid or actually allowed;
plus
--------------------------------------
* Confidential Treatment requested: material has been omitted and filed
separately with the Commission.
2
(c) amounts allowed on credits or returns; plus
(d) discounts allowed in amounts customary in the trade.
Novalon Indemnitee has the meaning specified in Section 6.1.
Novalon Patent Rights means Patent Rights as they relate to Cubist's
Specified Research Program as described in 2.1 c. which are owned by Novalon or
any of its Affiliates or which Novalon or any of its Affiliates has the right to
license or sublicense to persons or Entities. Without limiting the generality of
the foregoing, the term Novalon Patent Rights shall include all Patent Rights of
Novalon as they relate to Cubist's Specified Research Program as described in
2.1 c. with respect to the patents and patent applications listed in the Patent
List.
Novalon Technology means Technology as it relates to Cubist's Specified
Research Program as described in 2.1 c which is owned by Novalon or any of its
Affiliates or which Novalon or any of its Affiliates has the right to license or
sublicense to persons or Entities.
Patent List means Exhibit C annexed hereto as they may be amended and
in effect from time to time.
Patent Rights means all rights related to any of the following:
(a) all United States and foreign patent
applications and provisional applications;
(b) all patents issued with respect to all United States and
Foreign patent applications and provisional applications and
with respect to divisionals and continuations of these
applications;
(c) claims of United States and foreign continuation-in-part
applications, and of resulting patents, that are directed to
subject matter described in the patent applications described
in clause (a) above;
(d) claims of all foreign patent applications and of the resulting
patents that are directed to the subject matter described in
the United States patents and patent applications described in
clauses (a), (b) or (c) hereof, and
(e) any reissues of United States patents described in (a), (b) or
(c) hereof
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Products means any anti-bacterial or anti-fungal drug that was
discovered or developed as a result of the use of the Novalon Patent Rights or
the Novalon Technology.
Remaining Research Period means the period commencing at the end of the
Minimum Research Period and ending on the Collaboration Termination Date.
Royalties has the meaning set forth in Section 4. 1.
Sublicense means any license or right granted by Cubist to any person
or Entity (and any such license or right granted by such person or Entity to any
other person or Entity) to use the Novalon Patent Rights or the Novalon
Technology to the same extent as Cubist is entitled pursuant to this Agreement,
together with all agreements between the parties related thereto.
Sublicensor means any person or Entity (including without limitation,
Cubist) who grants a Sublicense.
Sublicensee Any person or Entity to whom a Sublicense is granted.
Technology means all proprietary developments, ideas, designs,
concepts, techniques, processes, inventions, cell lines, discoveries,
improvements, research results, toxicology data, assays, preclinical data,
mask Works, manufacturing processes, clinical results, regulatory
submissions, approvals and licenses, product licenses, papers, photographs,
computer programs and databases, manuals, prototypes, models, plans,
drawings, formulations, specifications, methods, shop-practices, formulas,
supplier lists, engineering and manufacturing information costing
information, accounting and financial data, and strategic plans (without
regard to whether they are Confidential Information, patentable or
copyrightable) of a person but that are not included within Patent Rights,
including without limitation,
(a) inventions that are the subject of patent applications for
which patents do not issue or are invalidated (from and after
the date a final determination is made from which no further
appeal may be taken);
(b) inventions that directly relate to the Patent Rights but do
not infringe a valid, unexpired or pending claim contained in
the Patent Rights;
(c) from and after the abandonment of a claim of a patent
contained in the Patent Rights or after the removal of a
patent from the list of Patent Rights, inventions formerly
covered thereby; and
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(d) in countries where the parties hereto have agreed that
obtaining patent protection is not economically viable or
advisable, all inventions that directly relate to the Patent
Rights.
