EXHIBIT 10.34
PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED (DESIGNATED BY AN
ASTERIX (*) AND WHITE SPACE) AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT DATED
JANUARY 31, 1996; FILE NO. 0-15609
THIRD AMENDMENT TO
DEVELOPMENT AND LICENSE AGREEMENT
Effective as of December 1, 1994, Agouron Pharmaceuticals, Inc., a California
corporation ("Agouron") and Japan Tobacco Inc., a Japanese corporation ("JT"),
for good and valuable consideration, agree as follows:
(Terms containing an initial capitalized letter, except as explicitly otherwise
indicated, shall have the meanings stated in the Development and License
Agreement, as defined below).
BACKGROUND
Agouron and JT entered into a Development and License Agreement dated December
1, 1994 and the First and Second Amendments to the Development and License
Agreement. The Development and License Agreement, as amended, is hereinafter
referred to as the "D&L Agreement."
The parties wish to amend and restate certain of the attachments to the D&L
Agreement.
AMENDMENT
1. Agouron and JT hereby agree to amend and restate the below-noted
Attachments to the D&L Agreement to read in full as stated in the
correspondingly-numbered Attachments to this Third Amendment:
Attachment 2 Trademark License Agreement
Attachment 3 Product Manufacturing Specifications
Attachment 4 Royalty Methodology and Accounting Terms/
Definitions
Attachment 6 Premarketing Expenses and Reimbursement
Procedures
2. Except as modified by the terms contained herein, the
provisions of the D&L Agreement shall remain in full force and effect.
AGOURON PHARMACEUTICALS, INC. JAPAN TOBACCO INC.
By: /s/ Xxxx X. Xxxxxxxx By: /s/ Masakazu Kakei
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Name: Xxxx X. Xxxxxxxx Name: Masakazu Kakei
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Title: Corporate VP & General Title: Executive Director
Counsel Pharmaceuticals
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Date: July 28, 1997 Date: July 9, 1997
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ATTACHMENT 2
TRADEMARK LICENSE AGREEMENT
This Trademark License, effective as of December 1, 1994, is between Agouron
Pharmaceuticals, Inc., a California corporation ("Agouron"), and Japan Tobacco
Inc., a Japanese corporation ("JT"). Agouron and JT are sometimes hereinafter
referred to as a party (collectively "parties") to this Trademark License.
(Terms containing an initial capitalized letter, except as explicitly otherwise
indicated, shall have the meanings stated in the D&L Agreement, as defined
below).
BACKGROUND
Agouron and JT entered into a Development and License Agreement dated December
1, 1994, and the First and Second Amendments to the Development and License
Agreement. The Development and License Agreement, as now or subsequently
amended, is hereinafter referred to as the "D&L Agreement."
The parties have conducted collaborative development and commercialization
activities for the HIV protease inhibitor nelfinavir mesylate pursuant to the
terms of the D&L Agreement.
The D&L Agreement provides that a form trademark license shall be agreed upon by
the parties and attached to the D&L Agreement as Attachment 2. The D&L Agreement
also contains the following provisions concerning the ownership and utilization
of Trademarks:
Section 1.34 "Trademark(s)" means any trademark selected and owned by a
party and registered by such party, its Affiliate(s) and sublicensee(s)
in the Territory for use in connection with the marketing of Products.
Section 2.01 License Grants.
(k) *
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Section 3.03 Trademarks. *
The provisions of Section 2.01(k) of the D&L Agreement were amended by the
Second Amendment to the D&L Agreement to provide that each party *
as such terms are defined in the Letter of Intent ("LOI")
dated January 17, 1997 between Roche and Agouron and JT.
One or both of the parties is the owner(s) of the Viracept Trademark, in certain
countries of the Territory.
The parties intend to use the Viracept Trademark, including its associated
non-English translations (hereinafter collectively referred to as the "Viracept
Trademark"), *
in their respective Exclusive
Territories.
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NOW THEREFORE, in accordance with the provisions of the D&L Agreement, for good
and valuable consideration, the parties agree as follows:
TRADEMARK LICENSE
1. Under the provisions of the D&L Agreement, as more
specifically set forth above, each party *
2. The parties' rights in Trademark(s) are *
3. Products marketed using the Viracept Trademark shall be manufactured
strictly in accordance with applicable governmental statutes,
regulations or directives.
4. The licensed user of the Viracept Trademark shall comply with all
applicable governmental statutes, regulations or directives.
5. The licensed user of the Viracept Trademark shall not use the Viracept
Trademark in a manner which is deceptive, or which would bring the
Viracept Trademark, the Product or the other party, into disrepute.
Each party shall use the Viracept Trademark, including its associated
non-English translations, *
6. Pursuant to the terms of the D&L Agreement, *
Provided a party fulfills its obligations and responsibilities related
to Trademark(s) and subject to the terms of the D&L Agreement, such
party shall *
7. Administration of this Trademark license shall be undertaken, in
accordance with the procedures established by Section 4.01 of the D&L
Agreement, *
8. Each party shall, upon learning thereof, promptly notify the other
party in writing of any infringement by a third party of the parties'
rights in the Viracept Trademark, or of any claim or suit by a third
party that the use of the Viracept Trademark infringes or otherwise
violates the rights of a third party. The parties shall *
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9. Only the licenses granted pursuant to the express terms of this
Trademark License and the D&L Agreement shall be of any legal force and
effect. No license rights shall be created by implication or estoppel.
10. This Trademark License shall terminate *
11. Any failure by either party to enforce any right which it may have
hereunder in any instance shall not be deemed to waive any right which
it or the other party may have in any other instance with respect to
any provisions of this Trademark License, including the provision which
such party has failed to enforce.
12. In the event that any provision of this Trademark License is judicially
determined to be unenforceable, in whole or in part, the remaining
provisions or portions thereof of this Trademark License shall be valid
and binding to the fullest extent possible, and the parties shall
endeavor to negotiate additional terms, as feasible, in a timely manner
so as to fully effectuate the original intent of the parties, to the
extent possible. Ambiguities, if any, in this Trademark License shall
not be construed against any party, irrespective of which party may be
deemed to have authored the ambiguous provision.
13. This Trademark License and the D&L Agreement constitute the full
agreement of the parties with respect to the subject matter of this
Trademark License, and incorporate any prior discussions between them
with respect to such subject matter. This Trademark License shall not
be amended, supplemented or otherwise modified, except by an instrument
in writing signed by a duly authorized officer of each party.
14. If there is a conflict between the terms of this Trademark License and
the D&L Agreement, the terms of the D&L Agreement shall control.
15. This Trademark License shall be construed, and the rights of the
parties shall be determined, in accordance with *
16. Any notice required or permitted to be given under this Trademark
License shall be in writing and shall be given in person, delivered by
recognized overnight delivery service, sent by mail (certified or
registered, or air mail for addresses outside of the continental U.S.),
or by telefax (or other similar means of electronic communication)
whose receipt is confirmed by confirming telefax, and addressed, in the
case of Agouron, to the President and, in the case of JT, to the Vice
President, Pharmaceutical Division at the respective
A2-4
addresses shown at the beginning of the D&L Agreement or such other
person and/or address as may have been furnished in writing to the
notifying party in accordance with the provisions of this paragraph.
Except as otherwise provided herein, any notice shall be deemed
delivered upon the earlier of (i) actual receipt, (ii) two (2) business
days after delivery to such overnight express service, (iii) five (5)
business days after deposit in the mail, or (iv) the date of receipt of
the confirming telefax.
17. This Trademark License shall be binding upon all successors in
interest, assigns, trustees and other legal representatives of the
parties.
IN WITNESS WHEREOF, the parties hereto have executed this Trademark License, in
duplicate originals, by their respective officers thereunto duly authorized as
of the day and year hereinabove written.
AGOURON PHARMACEUTICALS, INC. JAPAN TOBACCO INC.
By: /s/ Xxxx X. Xxxxxxxx By: /s/ Masakazu Kakei
Name: Xxxx X. Xxxxxxxx, Esq. Name: Masakazu Kakei
Title: Vice President and Title: Executive Director
General Counsel Pharmaceuticals
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ATTACHMENT 3
PRODUCT MANUFACTURING SPECIFICATIONS
THE TERMS OF THE PRODUCT MANUFACTURING SPECIFICATIONS ARE THOSE CONTAINED IN
THE APPLICABLE REGISTRATION FILING FOR THE PRODUCT, AS AMENDED
A3-1
ATTACHMENT 4
ROYALTY METHODOLOGY AND ACCOUNTING TERMS
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ATTACHMENT 6
PREMARKETING EXPENSES AND REIMBURSEMENT PROCEDURES
THE DETAILS RELATING TO THE DEFINITION AND TREATMENT OF PREMARKETING EXPENSES *
A6-1
