1
EXHIBIT 10.12
CONFIDENTIAL TREATMENT REQUESTED BY ABGENIX, INC.
AMENDED AND RESTATED
ANTI-IL-8 PRODUCT LICENSE AGREEMENT
THIS AMENDED AND RESTATED PRODUCT LICENSE AGREEMENT (the "Agreement") to
agreement originally made as of March 19, 1996, is made as of the original date
by and between Xenotech, L.P., a California limited partnership ("XT"), and each
of Cell Genesys, Inc. ("CGI"), a Delaware corporation, and Japan Tobacco Inc., a
Japanese corporation ("JTI").
RECITALS
A. XT desires to grant JTI an exclusive license in the JTI Territory
under the Licensed Technology to commercialize Products, and JTI wishes to
acquire such a license, on the terms and conditions herein.
B. XT desires to grant CGI an exclusive license in the CGI Territory
under the Licensed Technology to commercialize Products, and CGI wishes to
acquire such a license, on the terms and conditions herein.
C. XT desires to grant to JTI and CGI a co-exclusive license in the
Rest of the World under the Licensed Technology to commercialize Products, and
JTI and CGI wish to acquire such a license.
NOW, THEREFORE, for and in consideration of the covenants, conditions,
and undertakings hereinafter set forth, it is agreed by and between the parties
as follows:
1. DEFINITIONS
Incorporation by Reference. For purposes of this Agreement, the terms
set forth in this Article shall have the meanings set forth below.
1.l "Affiliate" shall mean any entity which controls, is controlled
by or is under common control with any of CGI, JTI or XT. An entity shall be
regarded as in control of another entity if it owns or controls at least fifty
percent (50%) of the shares of the subject entity entitled to vote in the
election of directors (or, in the case of an entity that is not a corporation,
for the election of the corresponding managing authority); provided, however, XT
shall not be an Affiliate of CGI or JTI under this Agreement and XT shall not be
considered controlled by CGI or JTI for purposes of determining Affiliates of
CGI or JTI.
2
1.2 "[***] Technology" shall mean (i) all U.S. patent applications
and patents listed on Schedule 1 and patents issuing on such patent applications
owned by or licensed to XT which relate to the [***], in each case to the extent
XT has the right to license or sublicense the same; (ii) any continuations,
divisionals, reexaminations, reissues or extensions of any of (i) above; (iii)
any foreign counterparts issued or issuing on any of (i) or (ii) above; and (iv)
[***] as set forth in Schedule 1.
1.3 "CGI Territory" shall mean the United States of America and its
territories and possessions, Canada and Mexico.
1.4 "Core Technology" shall have the meaning set forth in Section
10.3.
1.5 "Effective Date" shall mean March 19, 1996.
1.6 "IND" shall mean an Investigational New Drug Exemption for a
Product, as defined in the U.S. Food, Drug and Cosmetic Act and the regulations
promulgated thereunder, or its non-U.S. equivalent.
1.7 "JTI Territory" shall mean Japan, Taiwan, and South Korea
(including the territory comprising North Korea if it should be reunited with
South Korea).
1.8 "License Date" shall mean, for each of CGI and JTI, the date that
such party has executed this Agreement.
1.9 "License Fee" shall have the meaning set forth in Article 3
hereof.
1.10 "Licensed Field" shall mean all human medical uses.
1.11 "Licensed Technology" shall mean the [***] Technology and the
[***] Technology.
1.12 "Master Research License and Option Agreement" shall mean that
certain Master Research License and Option Agreement entered into by CGI, JTI
and XT as of June 28, 1996, as it may be amended.
1.13 "Net Sales" shall mean the [***] by CGI or JTI, as the
case may be, or its Affiliates and Sublicensees for sales of Product to
non-Affiliate customers, [***], with respect to such sales, and [***], as
reflected in [***] of CGI or JTI and its Affiliates or Sublicensees, [***].
-2-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
3
1.14 "Product" shall mean [***] but not limited to any [***]. Product
as used herein shall not include a [***].
1.15 "Product Antigen" shall mean Interleukin 8.
1.16 "Rest of the World" shall mean all parts of the world not
included in the CGI Territory or the JTI Territory.
1.17 "Sublicensee" shall mean a third party that is not an Affiliate
to whom CGI or JTI, as the case may be, has granted a sublicense under the
Licensed Technology to make, use and/or sell Product to the extent of the rights
of CGI or JTI, as the case may be, therein. "Sublicensee" shall also include a
third party to whom CGI or JTI has granted the right to distribute Product under
the Licensed Technology to the extent of the rights of CGI or JTI, as the case
may be, therein, provided that such third party is responsible for the marketing
and promotion of Product within the applicable country.
1.18 "Territory" shall mean those countries of the world in which CGI
or JTI, as the case may be, has exclusive or co-exclusive license rights
pursuant to this Agreement,
1.19 "Universal Receptor Product" shall mean a substance that is
developed utilizing [***] Universal Receptor Technology.
1.20 "Universal Receptor Technology" shall mean technology for
universal receptors [***]. As used herein: (i) "universal receptor" shall mean a
receptor [***]
-3-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
4
[***].
1.21 "Valid Claim" shall mean a claim of a pending or issued and
unexpired patent included within the Licensed Technology, which has not been
held unenforceable, unpatentable or invalid by a court or other governmental
agency of competent jurisdiction, and which has not been admitted to be invalid
or unenforceable through reissue, disclaimer or otherwise.
1.22 "[***] Technology" shall mean (i) all U.S. patent applications
and patents listed on Schedule 2 and patents issuing on such applications; (ii)
any continuations, divisionals, reexaminations, reissues or extensions of any of
(i) above; (iii) any foreign counterparts issued or issuing on any of (i) or
(ii) above; and (iv) the Mice (as such term is defined in the Master Research
License and Option Agreement) and [***] as set forth on Schedule 2.
2. LICENSE GRANTS
2.1 Grant to CGI. Subject to the terms and conditions of this
Agreement and effective as of the CGI License Date, XT hereby grants to CGI an
exclusive license or sublicense, as the case may be, under the Licensed
Technology, to make and have made Product anywhere in the world for use, sale,
import or other distribution in the CGI Territory in the Licensed Field. Such
license or sublicense shall be exclusive even as to XT, and shall include the
exclusive right to grant and authorize sublicenses for exploitation within the
CGI Territory (excluding any rights to the Mice as defined in the Master
Research License and Option Agreement).
2.2 Grant to JTI. Subject to the terms and conditions of this
Agreement, and effective as of the JTI License Date, XT hereby grants to JTI an
exclusive license or sublicense, as the case may be, under the Licensed
Technology, to make and have made Product anywhere in the world for use, sale,
import or other distribution in the JTI Territory in the Licensed Field. Such
license or sublicense shall be exclusive even as to XT, and shall include the
exclusive right to grant and authorize sublicenses for exploitation within the
JTI Territory (excluding any rights to the Mice as defined in the Master
Research License and Option Agreement).
-4-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
5
2.3 Rest of World. Subject to the terms and conditions of this
Agreement, effective as of the CGI License Date and the JTI License Date, as the
case may be, XT hereby grants to each of CGI and JTI a co-exclusive license or
sublicense, as the case may be, under the Licensed Technology, to make and have
made Product anywhere in the world for use, sale, import or other distribution
in the Rest of the World in the Licensed Field. Such co-exclusive licenses or
sublicenses shall be co-exclusive even as to XT and shall include the
co-exclusive right to grant and authorize sublicenses for exploitation within
the Rest of the world (excluding any rights to the Mice as defined in the Master
Research License and Option Agreement)
3. LICENSE FEE
Subject to Section 15.1, each of CGI and JTI shall pay to XT a license
fee of [***].
4. ROYALTIES
4.1 Royalty Rates. In consideration for the license and rights
granted herein, CGI and JTI each agree to pay to XT royalties of [***] of Net
Sales of Product by it and its Affiliates and Sublicensees.
4.2 Royalty Offsets. CGI or JTI, as the case may be, shall have the
right to reduce the rate at which any royalties due to XT are payable pursuant
to Section 4.1 to offset [***]; provided, however, that the royalty rates paid
by such licensee pursuant to Section 4.1 shall not be reduced to less than [***]
of the rate set forth in Section 4.1. [***].
4.3 Single Royalty; Non-Royalty Sales. Only one royalty shall be
payable with respect to any Product, regardless of how many claims of patents
within the Licensed Technology cover such Product. In addition, no royalty shall
be payable under this Article 4 with respect to sales of Product among CGI or
JTI, as the case may be, and its Affiliates and/or Sublicensees or for use in
research and/or development or clinical trials.
-5-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
6
4.4 No Patent Protection. Royalties shall be payable at the rates
specified in Section 4.1 or 4.2 above only with respect to sales of a Product
that would infringe a Valid Claim in the country in which such Product is sold.
In the event that such Product is not covered by a Valid Claim in such country,
XT shall be paid a royalty on such sales in accordance with this Article 4,
[***].
4.5 Combination Products. In the event that Product is sold in
combination as a single product with another product or component, Net Sales
from such combination sales for purposes of calculating the amounts due under
this Article 4 shall be [***]. In the event that no such separate sales are made
in the same quarter by CGI or JTI, as the case may be, Net Sales for royalty
determination shall be [***].
4.6 Termination of Royalties. Royalties under Section 4.1, 4.2 or 4.4
will be due until the later of (i) ten years from the first commercial sale of
Product in any country or (ii) on a country-by-country basis, the expiration of
the last-to-expire patent within the Licensed Technology covering the Product in
such country,
5. THIRD PARTY ROYALTIES
5.1 Royalties Payable by XT. XT will be responsible for the payment
of any royalties, license fees and milestone and/or other payments due to third
parties under licenses or similar agreements entered into by XT necessary to
allow the manufacture, use or sale of Product. CGI and/or JTI, as the case may
be, shall reimburse XT for any royalties paid by XT to third parties under
licenses or similar agreements covering Product necessary to allow the
manufacture, use, sale or other exploitation of Product in accordance with this
Agreement. CGI and/or JTI shall continue any such reimbursement payments to XT
until XT's obligation to pay royalties to a third party under any license
covering Product expires or terminates. XT agrees not to enter into any license
or similar agreement after the Effective Date which would obligate CGI and/or
JTI, as they case may be, to make any payments under this Section 5.1 without
the prior written consent of CGI and/or JTI, as the case may be.
5.2 Royalties Payable by CGI or JTI. CGI and JTI, as the case may be,
will be responsible for the payment of any royalties, license fees and milestone
and other payments due to
-6-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
7
third parties under licenses or similar agreements entered into by such party to
allow the manufacture, use or sale of Product.
6. ACCOUNTING AND RECORDS
6.1 Royalty Reports and Payments. After the first commercial sale of
Product on which royalties are required, CGI and JTI each agrees to make
quarterly written reports to XT within eighty days after the end of each
calendar quarter, stating in each such report the number, description, and
aggregate Net Sales of Product sold during the calendar quarter upon which a
royalty is payable under Article 4 above. Concurrently with the making of such
reports, CGI or JTI, as the case may be, shall pay to XT royalties at the
applicable rate specified in Section 4.1, 4.2 or 4.4 above and all royalties
payable pursuant to Section 5.1 above, and any adjustment to Net Sales for a
prior period in accordance with the definition of Net Sales in Section 1.13
hereof. All payments to XT hereunder shall be made in U.S. Dollars to a bank
account designated by XT.
6.2 Early Third Party License Payments. If XT is obligated to pay
royalties to a third party prior to ninety days after the end of the calendar
quarter, XT shall so notify CGI or JTI, as the case may be, and such licensee
shall provide the reports and payments set forth in Section 6.1 above not later
than ten (10) days before the date such payments are due to the third party. Up
to thirty-five days before such payments are due, XT may provide CGI or JTI with
an invoice by facsimile setting forth the royalties XT must pay third parties
with respect to such licensee's activities in its Territory in the preceding
quarter, and such licensee shall pay such invoices within thirty days of receipt
of such invoice.
6.3 Records; Inspection. CGI and JTI shall keep (and cause its
Affiliates and Sublicensees to keep) complete, true and accurate books of
account and records for the purpose of determining the royalty amounts payable
to XT under this Agreement. Such books and records shall be kept at the
principal place of business of CGI and JTI or its Affiliates or Sublicensees, as
the case may be, for at least three years following the end of the calendar
quarter to which they pertain. Such records of each licensee or its Affiliates
or Sublicensee will be open for inspection during such three-year period by a
representative of XT for the purpose of verifying the royalty statements. CGI
and JTI shall each require each of its Sublicensees to maintain similar books
and records and to open such records for inspection during the same three-year
period by a representative of CGI or JTI, as the case may be, reasonably
satisfactory to XT on behalf of, and as required by, XT for the purpose of
verifying the royalty statements. All such inspections may be made no more than
once each calendar year, at reasonable times mutually agreed by XT and the
particular licensee. The XT representative will be obliged to execute a
reasonable confidentiality agreement prior to commencing any such
-7-
8
inspection. Inspections conducted under this section 6.3 shall be at the expense
of XT, unless a variation or error of CGI or JTI, as the case may be, producing
an increase exceeding [***] of the amount stated for the period covered by the
inspection is established in the course of any such inspection, whereupon all
costs relating thereto will be paid by the particular licensee. Upon the
expiration of three years following the end of any fiscal year, the calculation
of royalties payable with respect to such year shall be binding and conclusive,
and CGI and JTI, as the case may be, shall be released from any liability or
accountability with respect to royalties for such year.
6.4 Currency Conversion. If any currency conversion shall be required
in connection with the calculation of royalties hereunder, such conversion shall
be made using the selling exchange rate for conversion of the foreign currency
into U.S. Dollars, quoted for current transactions reported in The Wall Street
Journal for the last business day of the calendar quarter to which such payment
pertains.
6.5 Late Payments. Any payments due from Licensee that are not paid
on the date such payments are due under this Agreement shall bear interest to
the extent permitted by applicable law at [***], calculated on the number of
days such payment is delinquent. This Section 6.5 shall in no way limit any
other remedies available to any party.
6.6 Withholding Taxes.
6.6.1 Unless immediately reimbursable under Section 6.6.2 below,
all payments required to be made pursuant to Articles 3, 4 and 5 hereof shall be
without deduction or withholding for or on account of any taxes (other than
taxes imposed on or measured by net income) or similar governmental charge
imposed by a jurisdiction. Such taxes are referred to herein as "Withholding
Taxes" and such Withholding Taxes shall be the sole responsibility of the
withholding party. The withholding party shall provide a certificate evidencing
payment of any Withholding Taxes hereunder.
6.6.2 XT agrees to elect to claim a tax credit for Withholding
Taxes with respect to which it is entitled so to elect, and further agrees not
to amend such election for the full carry-forward period with respect to such
credit. At the time that XT realizes a reduction in U.S. tax liability by
actually utilizing the Withholding Taxes as a credit against regular U.S. tax
liability (determined on a "first-in-first-out" basis pro rata with other
available foreign tax credits), then the amount of such reduction attributable
to such credit shall immediately be reimbursed to the withholding party. For
these purposes, a reduction in U.S. tax liability shall include both a direct
-8-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
9
reduction in XT's own tax liability and a reduction in the U.S. tax liability of
any of its partners.
6.7 Tax Indemnity. Except as provided in Section 6.6, each party (the
"Tax Indemnitor") shall indemnify and hold harmless the other party hereto (each
a "Tax Indemnitee") from and against any tax or similar governmental charge
assessed solely because of this Agreement, with respect to and directly
attributable to the income or the assets of the Tax Indemnitor. In the event
that any governmental agency shall make a claim against a party hereto which
could give rise to an indemnity hereunder, such potential Tax Indemnitee shall
give reasonably prompt notice to the potential Tax Indemnitor of the assertion
of such claim. If the transmission of such notice is unreasonably deferred and
has a material, adverse affect on the ability of the potential Tax indemnitor to
challenge such claim, such potential Tax Indemnitor shall be released from
liability hereunder. The Tax Indemnitor alone shall (at its own expense) control
the defense or compromise of any such claim. The Tax Indemnitee shall execute
any documents required to enable Tax Indemnitor to defend such claim, provide
any information necessary therefor, and cooperate with Tax Indemnitor in such
defense.
6.8 XT Tax Indemnity. XT shall indemnify and hold harmless CGI and
JTI and their Affiliates from and against any increase to their respective
country of incorporation income tax liability directly attributable to a
positive adjustment to the amount of gross receipts (an "Adjustment" ) reported
or reportable by such party from the income, including the royalty income,
received from CGI or JTI on Covered Products. The amount payable hereunder shall
be equal to the difference between (a) the product of (i) the amount of the
Adjustment, and (ii) the highest combined marginal corporate tax rate in their
respective country of incorporation in effect for the taxable year for which
such Adjustment is made, and (b) the reduction in the party's foreign tax
liability, which for purposes of this Agreement shall be equal to the product of
(i) the amount of any correlative adjustment to its foreign taxable income, and
(ii) the highest combined marginal foreign corporate tax rate in effect for the
taxable year for which the correlative adjustment is made. No indemnification
payment shall be required hereunder until comprehensive efforts to obtain a
correlative adjustment to CGI's or JTI's, as the case may be, or its Affiliates'
taxable income in a foreign state (which may include, for example invoking
competent authority provisions under the U.S. Japanese Income Tax Treaty (if
applicable)or other applicable bilateral tax treaty) have, to the extent
reasonable to do so, been exhausted.
7. RESEARCH DEVELOPMENT
7.1 Funding and Conduct. CGI and JTI shall each independently furnish
and be responsible for funding and conducting all of its preclinical and
clinical research and development of Product, at its own expense.
-9-
10
7.2 Biomaterials. Xenotech shall make available to each of CGI and
JTI DNA or cDNA available to Xenotech and appropriate for use in development of
the Product, as well as the related data. The DNA or cDNA thus made available
will be used only by CGI and JTI and its permitted Affiliates and Sublicensees
and manufacturing subcontractors. Xenotech shall also make available as part of
the license granted hereunder to CGI and JTI any hybridomas, any reagents used
for hybridoma generation and any materials from generated hybridomas including
purified antibodies available to Xenotech and appropriate for use in development
of Product, as well as the related data. Such hybridomas, reagents and
materials, as well as the related data thus made available will be used only by
CGI and JTI and their Affiliates and Sublicensees and manufacturing
subcontractors.
7.3 Specialized Services. XT shall consider making available, as
reasonably requested by CGI and JTI, specialized services of the Xenotech
Division of CGI to aid in development of the Product. Such services shall be
paid for by the requesting party.
8. SHARING OF CLINICAL DATA
CGI and JTI and their respective Affiliates and Sublicensees shall be
free to use data prepared by or on behalf of Xenotech under joint funding by
them. However, there shall be no obligation for sharing data developed
independently, whether through the Xenotech Division as provided in Section 7.3
or otherwise, by or on behalf of CGI or JTI. As long as their development
projects remain on similar timelines, CGI and JTI will consider bilateral
sharing of relevant Product development information end clinical data.
9. DUE DILIGENCE
9.1 [***].
9.1.1 CGI and JTI, as the case may be, agree to [***] within
[***] from its respective License Date.
9.1.2 In the event that either CGI or JTI believes [***] in its
Territory, the [***] set forth in Section 9.1.1 shall be [***]; or, in the event
that either CGI or JTI believes [***] in its Territory, the [***] set forth in
Section 9.1.1 shall he [***].
-10-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
11
9.1.3 Notwithstanding the foregoing, each of CGI and JTI shall
be [***] in the United States or Japan.
9.2 Failure to Meet Due Diligence Obligation.
9.2.1 If the diligence requirements set forth in Section 9.1 are
not met by CGI (or its Affiliates or Sublicensees) in the United States or by
JTI (or its Affiliates or Sublicensees) in Japan, such licensee's rights in the
CGI Territory or the JTI Territory, as the case may be, will become co-exclusive
with the other licensee in such territory and all rights to the Product in the
Rest of the World will remain or become the exclusive rights of the other
licensee, upon written notice by XT to such licensee and subject to Sections
9.3, 9,4 and 14.3 below.
9.2.2. Notwithstanding Section 9.2.1, the license granted
hereunder to CGI or JTI, as the case may be, shall not become co-exclusive by
reason of a delay in meeting the [***] milestone set forth in Section 9.1.1, to
the extent that prudent business judgment, based on circumstances outside of
such licensee's reasonable control, reasonably justifies such delay.
9.3 Dispute Resolution. In the event that a dispute arises whether
the diligence requirements in Article 9 have been met, or circumstances exist
which CGI or JTI, respectively, believes justifies a failure on its part to meet
such obligation, the parties will attempt to resolve any dispute by mutual
agreement, and, if required, the Chief Executive Officer of CGI and the Vice
President of the Pharmaceutical Division of JTI shall meet personally and
negotiate in good faith to resolve such dispute during a period of thirty days
following licensee's receipt of the notice under Section 9.2.1.
9.4 Arbitration. In the event that the parties are unable to resolve
such dispute pursuant to Section 9.3 above, such dispute shall be settled
between XT and the other party by binding arbitration as set forth in Section
16.12. If the arbitrator determines that the party acted in good faith, but
failed to meet its obligations under Section 9.1 above, the license granted to
such party shall not terminate unless the nonperforming party fails to cure such
non-performance within a reasonable period of time, as determined by the
arbitrator.
-11-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
12
10. PATENTS
10.1 [***] Technology.
(a) XT or its licensor, as they may agree, shall have
responsibility for preparing, filing, prosecuting and maintaining patents and
patent applications worldwide relating to the [***] Technology and conducting
any interferences, oppositions, reexaminations, or requesting reissues or patent
term extensions with respect to the [***] Technology. XT shall keep CGI and JTI
each reasonably informed as to the status of such patent matters in its
Territory, including without limitation, by providing such licensee the
opportunity to review and comment on any documents which will be filed in any
patent office, and providing such licensee copies of any documents received by
XT from such patent offices including notice of all interferences,
reexaminations, oppositions or requests for patent term extensions. CGI and JTI
shall cooperate with and assist XT in connection with such activities, at XT's
request and expense.
(b) In the event that CGI or JTI, as the case may be, becomes
aware that any [***] Technology necessary for the practice of the licenses
granted herein is infringed or misappropriated by a third party or is subject to
a declaratory judgment action arising from such infringement, such party shall
promptly notify XT (and the other licensee) and XT shall thereafter promptly
notify the owner of such intellectual property. XT or its licensor, as they may
agree, shall have the exclusive right to enforce, or defend any declaratory
judgment action, at its expense, involving any [***] Technology. In such event,
XT shall keep CGI and/or JTI, as the case may be, reasonably informed of the
progress of any such claim, suit or proceeding in its Territory. Any recovery
received by XT as a result of any such claim, suit or proceeding shall be used
first to reimburse XT for all expenses (including attorneys, and professional
fees) incurred in connection with such claim, suit or proceeding, [***].
10.2 [***] Technology.
10.2.1 XT shall have the initial worldwide responsibility for
preparing, filing, prosecuting and maintaining patent applications and
conducting any interferences, oppositions, reexaminations, or requesting
reissues or patent term extensions with respect to [***] Technology. XT shall
give CGI and JTI each the opportunity to review the status of all such pending
patent applications and actions in its Territory and shall keep CGI and/or JTI,
as the case may be, fully informed of the progress of such applications and
actions, including, without limitation, by promptly providing CGI and/or JTI
with copies of all correspondence sent to and received from patent offices, and
providing notice of all interferences, reexaminations,
-12-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
13
oppositions or requests for patent term extensions. [***]. In the event that XT
declines or fails to prepare, file, prosecute or maintain such patent
applications or patents or take such other actions, relating to the Product it
shall promptly and in no event later than ninety days prior to any filing
deadline, provide notice to CGI and JTI. CGI and JTI shall promptly discuss and
agree on who should assume such responsibilities and how the expenses related
thereto should be allocated.
10.2.2 In the event that a licensee becomes aware that any [***]
Technology necessary for the practice of the license granted herein is infringed
or misappropriated by a third party in any country in which CGI or JTI has
rights hereunder, or is subject to a declaratory judgment action arising from
such infringement in such country, CGI or JTI, as the case may be, shall
promptly notify XT and XT shall thereafter promptly notify the owner of such
intellectual property.
10.2.3 CGI or JTI, as the case may be, shall have the exclusive
right to enforce, or defend any declaratory judgment action, in any country in
which it has exclusive rights hereunder, at its expense, involving [***]
Technology. In such event, the party involved in such claim, suit or proceeding,
shall keep XT and the other of CGI or JTI reasonably informed of the progress of
any such claim, suit or proceeding. Any recovery by such party received as a
result of any such claim, suit or proceeding shall be used first to reimburse
such party for all expenses (including attorneys, and professional fees)
incurred in connection with such claim, suit or proceeding, and [***].
10.2.4 CGI and JTI shall consult and agree whether, and if so,
how, to enforce the [***] Technology in a country in which CGI and JTI have
co-exclusive rights hereunder. However, [***] (except as otherwise provided
below). The party taking such action shall keep XT and the other of CGI or JTI
reasonably informed of the progress of any such claim, suit or proceeding. Any
recovery by such party received as a result of any such claim, suit or
proceeding shall be used first to reimburse such party for all expenses
(including attorneys' and professional fees) incurred in connection with such
claim, suit or proceeding [***].
-13-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
14
10.3 Infringement Claims. If the production, sale or use of Product
pursuant to this Agreement results in any claim, suit or proceeding alleging
patent infringement against CGI or JTI (or their respective Affiliates or
Sublicensees), CGI or JTI, as the case may be, shall promptly notify XT thereof
in writing setting forth the facts of such claim in reasonable detail. [***]
CGI, JTI and XT dated March 22, 1996, as it may be amended from time to time,
CGI or JTI, as the case may be, shall have the exclusive right to defend and
control the defense of any such claim, suit or proceeding, at its own expense,
using counsel of its choice. Such parties shall keep XT reasonably informed of
all material developments in connection with any such claim, suit or proceeding
as it relates to Licensed Technology. The other of CGI or JTI may participate in
the defense. of any such claim, suit or proceeding at its own expense through
counsel of its choice. CGI or JTI, as the case may be, [***] pursuant to this
Agreement. Notwithstanding the above, neither CGI nor JTI shall be able to
settle any such claim, suit or proceeding that impinges upon the rights of JTI
or CGI, as the case may be, including, without limitation, involving any
admission of the invalidity of the Licensed Technology or rights to the Product
Antigen outside its Territory without the prior approval of XT.
10.4 Patent Marking, CGI and JTI agree to xxxx and have its Affiliates
and Sublicensees xxxx all Products sold pursuant to this Agreement in accordance
with the applicable statute or regulations in the country or countries of
manufacture and sale thereof.
11. CONFIDENTIALITY
11.1 Confidential Information. Except as expressly provided herein,
the parties agree that, for the term of this Agreement and for five years
thereafter, the receiving party shall keep completely confidential and shall not
publish or otherwise disclose and shall not use for any purpose any information
furnished to it by another party hereto pursuant to this Agreement except to the
extent that it can be established by the receiving party by competent proof that
such information:
(a) was already known to the receiving party, other than under
an obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving party;
-14-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
15
(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
(d) was subsequently lawfully disclosed to the receiving party
by a person other than a party or developed by the receiving party without
reference to any information or materials disclosed by the disclosing party.
11.2 Permitted Disclosures. Notwithstanding Sections 11.1 above and
16.16 below, each party hereto may disclose another party's information to the
extent such disclosure is reasonably necessary in filing or prosecuting patent
applications, prosecuting or defending litigation, complying with applicable
governmental regulations or otherwise submitting information to tax or other
governmental authorities, making a permitted sublicense or other exercise of its
rights hereunder or conducting clinical trials, provided that if a party is
required to make any such disclosure of the other party's secret or confidential
information, other than pursuant to a confidentiality agreement, it will give
reasonable advance notice to the latter party of such disclosure requirement
and, save to the extent inappropriate in the case of patent applications, will
use efforts consistent with prudent business judgment to secure confidential
treatment of such information prior to its disclosure (whether through
protective orders or otherwise) Notwithstanding the foregoing, XT shall not
disclose to third parties, clinical data or regulatory filings received from CGI
or JTI except as agreed in writing by such party.
12. SUBLICENSES
Pursuant to Article 2 herein, CGI and JTI shall each have the exclusive
right in in the CGI Territory and the JTI Territory, respectively, and the
co-exclusive right in the Rest of the World to grant and authorize sublicenses
to third parties; provided, however, such party shall remain responsible for any
payments due XT for Net Sales of Product by any Sublicensee. [***]. Any
sublicense granted by CGI or JTI pursuant to this Agreement shall. provide that
the Sublicensee will be subject to the applicable terms of this Agreement. CGI
or JTI, as the case may be, shall provide XT with a copy of relevant portions of
each sublicense agreement, as reasonably required by XT.
13. INDEMNITY
13.1 CGI. Subject to compliance by XT and/or JTI with its obligations
set forth in Section 13.3 below, CGI agrees:
(a) to indemnify and hold XT and its directors, officers,
employees and agents harmless from and against any
-15-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
16
losses, claims, damages, liabilities or actions (including reasonable attorneys'
fees and court and other expenses of litigation) (collectively, the
"Liabilities") suffered or incurred in connection with third party claims
relating to the Core Technology arising from any Product manufactured, used,
sold or otherwise distributed by CGI and its Affiliates or Sublicensees;
(b) to indemnify and hold XT, JTI, JTI's Affiliates and their
directors, officers, employees and agents harmless from and against any
Liabilities suffered or incurred in connection with third party claims relating
to intellectual property rights (other than Core Technology) arising from any
Product manufactured, used, sold or otherwise distributed by CGI and its
Affiliates or Sublicensees; and
(c) to indemnify and hold XT, JTI, JTI's Affiliates and their
directors, officers, employees and agents harmless from and against any
Liabilities suffered or incurred in connection with third party claims other
than relating to Core Technology or other intellectual property rights arising
from any Product manufactured, used, sold or otherwise distributed by CGI and
its Affiliates or Sublicensees; provided, however, that CGI shall not be
required to provide indemnification under this clause (c) to any party for any
Liabilities suffered or incurred in connection with third party claims resulting
from the gross negligence, recklessness or intentional misconduct by such party
or its Affiliates, or their directors, officers, employees or agent.
13.2 JTI. Subject to compliance by XT and/or CGI with its obligations
set forth in Section 13.3 below, JTI agrees:
(a) to indemnify and hold XT and its directors, officers,
employees and agents harmless from and against any Liabilities suffered or
incurred in connection with third party claims relating to the Core Technology
arising from any Product manufactured, used, sold or otherwise distributed by
JTI and its Affiliates or Sublicensees;
(b) to indemnify and hold XT, CGI, CGI's Affiliates and their
directors, officers, employees and agents harmless from and against any
Liabilities suffered or incurred in connection with third party claims relating
to intellectual property rights (other then Core Technology) arising form any
Product manufactured, used, sold or otherwise distributed by JTI and its
Affiliates or Sublicensees;
(c) to indemnify and hold XT, CGI, CGI's Affiliates and their
directors, officers, employees and agents harmless from and against any
Liabilities suffered or incurred in connection with third party claims other
than relating to Core Technology or other intellectual property rights arising
from any Product manufactured, used, sold or otherwise distributed by JTI and
its Affiliates or Sublicensees; provided, however, that JTI shall not
-16-
17
be required to provide indemnification under this clause (c) to any party for
any Liabilities resulting from the gross negligence, recklessness or intentional
misconduct by such party or its Affiliates, or their directors, officers,
employees or agents.
13.3 Procedure. If a party (an "Indemnitee") intends to claim
indemnification under this Article 13, it shall promptly notify the indemnifying
party (the "Indemnitor") in writing of any loss, claim, damage, liability or
action in respect of which the Indemnitee or its directors, officers, employees
or agents intend to claim such indemnification, and the Indemnitor shall have
the right to participate in, and, to the extent the Indemnitor so desires, to
assume the defense thereof with counsel mutually satisfactory to the parties;
provided, however, that an Indemnitee shall have the right to retain its own
counsel, with the fees and expenses to be paid by the Indemnitor, if
representation of such Indemnitee by the counsel retained by the Indemnitor
would be inappropriate due to actual or potential differing interests between
such Indemnitee and any other party represented by such counsel in such
proceeding. The indemnity agreement in this Article 13 shall not apply to
amounts paid in settlement of any loss, claim, damage, liability or action if
such settlement is effected without the consent of the Indemnitor, which consent
shall not be withheld or delayed unreasonably. The failure to deliver written
notice to the Indemnitor within a reasonable time after the commencement of any
such action, if prejudicial to its ability to defend such action, shall relieve
such Indemnitor of any liability to the Indemnitee under this Article 13, but
the omission so to deliver written notice to the Indemnitor shall not relieve it
of any liability that it may have to any party claiming indemnification
otherwise than under this Article 13. The party claiming indemnification under
this Article 13, its employees and agents, shall cooperate fully with the
Indemnitor and its legal representatives in the investigation of any action,
claim or liability covered by this indemnification.
14. REPRESENTATIONS AND WARRANTIES
14.1 XT. XT represents and warrants that:
(i) it has the full right and authority to enter into this
Agreement and grant the rights and licenses granted herein;
(ii) it has not previously granted and will not grant any
rights inconsistent or in conflict with the rights and licenses granted to CGI
and JTI herein;
(iii) there are no existing or threatened actions, suits or
claims pending against XT with respect to the Licensed Technology or the right
of XT to enter into and perform its obligations under this Agreement;
-17-
18
(iv) it has not previously granted, and will not grant during
the term of this Agreement, any right, license or interest in and to the
Licensed Technology, or any portion thereof, with respect to the Product, or its
manufacture or use;
(v) Schedule 1 hereto sets forth the [***] Technology as of
the Effective Date and Schedule 2 hereto sets forth The [***] Technology as of
the Effective Date; and
(vi) Schedule 3 hereto sets forth all royalties, license fees,
milestone payments and similar payments due to third parties for which a Grantee
would be obligated to reimburse XT under the Product Licenses as of the
Effective Date.
In the event that XT acquires rights to intellectual property
that would become either [***] Technology or [***] Technology, XT will promptly
update Schedule 1 or Schedule 2, as the case may be, and provide copies thereof
to each Grantee. In the event that XT enters into any agreement which could
require a Grantee to reimburse XT for any additional royalties, license fees,
milestone payments or similar payments, XT will promptly update Schedule 3 and
provide copies thereof to each Grantee.
14.2 CGI and JTI. Each of CGI and JTI represents and warrants that:
(i) it has the full right and authority to enter into this Agreement, (ii) to
its knowledge, there are no existing or threatened actions, suits or claims
pending with respect to the subject matter hereof (except for the pending or
threatened litigation with GenPharm International, Inc.) or the right of it to
enter into and perform its obligations under this Agreement; and (iii) it has
not entered and during the term of this Agreement will not enter any other
agreement inconsistent or in conflict with this Agreement.
14.3 Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS
AGREEMENT, XT MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF LICENSED
TECHNOLOGY CLAIMS, ISSUED OR PENDING.
14.4 Effect of Representations and Warranties. It is understood that
if the representations and warranties under this Article 13 are not true and
accurate and a party incurs liabilities, costs or other expenses is a result of
such falsity, the party at fault shall indemnify, defend and hold the injured
party harmless from and against any such liabilities, costs or expenses
incurred, provided that the party at fault receives prompt notice of any claim
against the injured party resulting from or related to such falsity and the sole
right to control the defense or settlement thereof.
-18-
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
19
15. TERM AND TERMINATION
15.1 Effectiveness. This Agreement shall become effective as of the
Effective Date and the license rights granted by XT under Article 2 above shall
be in full force and effect as to any licensee who shall have executed this
Agreement as of such date. In the event that either CGI or JTI shall not have
executed this Agreement as of the Effective Date, such party shall have the
option to become a party to this Agreement and to obtain the license rights
granted by XT under Article 2 above until September 1, 1996, whereupon such
option shall terminate, and, notwithstanding the termination of such option,
this Agreement and the license as to XT and the other party (the "Licensed
Party") shall continue in full force and effect for the term set forth in
Section 15.2 below. The Licensed Party shall thereupon have an option (the
"Exclusive License Option") to obtain all of the other worldwide license rights
offered hereunder in addition to the rights granted to the Licensed Party under
Article 2. The Exclusive License Option shall be exercisable by the Licensed
Party until March 1, 1997 at an exercise price equal to the License Fee, which
shall be paid within sixty days of exercise of the Exclusive License Option.
Upon exercise of the Exclusive License Option, the Licensed Party shall have an
exclusive worldwide license or sublicense, as the case may be, under the
Licensed Technology to make and have made the Product for use, sale or other
distribution in the Licensed Field, subject to the terms and conditions of this
Agreement.
15.2 Term. Unless earlier terminated pursuant to the other provisions
of this Article 15, this Agreement shall continue in full force and effect until
the later of (i) the expiration of the last to expire patent within the Licensed
Technology claiming the Product or (ii) the twentieth anniversary of the
Effective Date. The licenses granted under Article 2 and, if applicable, Section
15.1 above, and the obligations of CGI and JTI to reimburse XT for payments made
pursuant to licenses granted by third parties subject to Section 5 herein, shall
survive the expiration (but not an earlier termination) of this Agreement;
provided that such licenses shall become nonexclusive.
15.3 Termination for Breach. Any party to this Agreement may terminate
this Agreement as to another party hereto in the event such other party shall
have materially breached or defaulted in the performance of any of its material
obligations hereunder, and such shall have continued for sixty days after
written notice thereof was provided to the breaching party by the nonbreaching
party that terminates the Agreement as to such party. Any termination shall
become effective at the end of such sixty day period unless the breaching party
has cured any such breach or default prior to the expiration of the sixty day
period. However, if the party alleged to be in breach of this Agreement disputes
such breach within such sixty day period, the non-breaching party shall not have
the right to terminate this Agreement unless it has been determined by an
arbitration
-19-
20
proceeding in accordance with Section 16.12 below that this Agreement was
materially breached, and the breaching party fails to cure such breach within
thirty days following the final decision of the arbitrators or such other time
as directed by the arbitrators.
15.4 Other Termination Rights. CGI or JTI may terminate this Agreement
and the license granted to such party herein, in its entirety or as to any
particular patent within the Licensed Technology in a particular country, at any
time, by providing XT ninety-days written notice. In the event of termination as
to a particular country, the subject patent in such country shall cease to be
within the Licensed Technology for all purposes of this Agreement that apply to
the terminating party.
15.5 Effect of Termination.
15.5.1 In the event that this Agreement (i) is terminated under
Section 15,3 above, by reason of a breach by CGI or JTI, this Agreement shall
terminate with respect to the breaching party only, and shall continue in effect
with respect to XT and the non-breaching party; (ii) is terminated by CGI or JTI
by reason of a breach by XT, this Agreement shall terminate as to XT and the
terminating party, and shall continue in effect with respect to XT and the other
of CGI and JTI; or (iii) is terminated by CGI or JTI in its entirety under
Section 15.4 above, this Agreement shall terminate with respect to the party
exercising its right to terminate thereunder, and shall continue in effect in
its entirety with respect to XT and the non-terminating party. In each case, the
non-breaching or non-terminating license shall thereupon have the right to
obtain an exclusive license or sublicense, as the case may be, under the
Licensed Technology, to make and have made Product for use, sale or other
distribution in the Licensed Field throughout the world, on the terms and
conditions set forth herein that are applicable to it.
15.5.2 Termination of this Agreement for any reason shall not
release any party hereto from any liability which at the time of such
termination has already accrued to the other party or which is attributable to a
period prior to such termination.
15.5.3 In the event this Agreement is terminated with respect to
CGI or JTI for any reason, such licensee and its Affiliates and Sublicensees
shall have the right to sell or otherwise dispose of the stock of any Product
subject to this Agreement then on hand. Upon termination of this Agreement by XT
for any reason, any sublicense granted by a licensee hereunder shall survive,
provided that upon request by XT, such Sublicensee promptly agrees in writing to
be bound by the applicable terms of this Agreement.
-20-
21
15.5.4 This Agreement, including, without limitation, any
licenses or sublicenses granted pursuant to this Agreement, shall survive any
dissolution, liquidation or acquisition of XT. Such licenses shall remain in
full force and effect even after any distribution, following dissolution, of the
intellectual property owned or licensed to XT, to any entity. Any transfer of
such intellectual property prior to or following dissolution shall be subject to
the licenses granted herein.
15.5.5 This Agreement, including the licenses granted in Article
2 and, if applicable, Section 15.1, is independent of, and shall not be affected
by, any breach or termination of the Master Research License and Option
Agreement or any other agreement among the parties or their Affiliates.
15.5.6 Sections 6.3, 6.5, 6.6, 6.7 and 6.8 and Articles 11, 13,
15 and 16 shall survive the expiration and any termination of this Agreement for
any reason.
16. MISCELLANEOUS
16.1 Governing Laws. This Agreement shall be interpreted and construed
in accordance with the laws of the State of California, without regard to
conflicts of law principles.
16.2 Waiver. It is agreed that no waiver by any party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
16.3 Assignment. This Agreement and the licenses granted hereunder may
not be assigned by CGI or JTI to any third party without the written consent of
XT, and XT may not assign this Agreement to a third party without the consent of
both CGI and JTI; except any party may assign this Agreement without such
consent to (a) an Affiliate (provided that such Affiliate is two-thirds or
greater owned directly or indirectly) or (b) an entity that acquires
substantially all of the assets of the monoclonal antibody business segment of
the assigning party. The terms and conditions of this Agreement shall be binding
on and inure to the benefit of the permitted successors and assigns of the
parties.
16.4 Independent Contractors. The relationship of the parties hereto
is that of independent contractors. The parties hereto are not deemed to be
agents, partners or joint venturers of the others for any purpose as a result of
this Agreement or the transactions contemplated thereby.
16.5 Compliance with Laws. In exercising their rights under this
license, the parties shall fully comply with the requirements of any and all
applicable laws, regulations, rules and orders of any governmental body having
jurisdiction over the exercise of rights under this license.
-21-
22
16.6 No Implied Obligations. Except as expressly provided in Article 9
above, nothing in this Agreement shall be deemed to require CGI or JTI to
exploit the Licensed Technology nor to prevent CGI or JTI from commercializing
products similar to or competitive with any Product, in addition to or in lieu
of such Product.
16.7 Notices. Any notice required or permitted to be given to the
parties hereto shall be given in writing and shall be deemed to have been
properly given if delivered in person or when received if mailed by first class
certified mail to the other party at the appropriate address as set forth below
or to such other addresses as may be designated in writing by the parties from
time to time during the term of this Agreement.
Xenotech: Xenotech, L.P.
000 Xxxxxxxx Xxxxx
Xxxxxx Xxxx, Xxxxxxxxxx 00000
Attn: Chief Financial Officer
Japan Tobacco Inc.: Japan Tobacco Inc.
JT Xxxxxxxx
0-0 Xxxxxxxxx 0-xxxxx
Xxxxxx-xx, Xxxxx 000
Xxxxx
Attn: Vice President,
Pharmaceutical Division
with a copy to: JT America Inc.
0000 Xxxxx Xxxxx Xxxxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
Attn: President
and to: Xxxxxxx, Xxxxxx and Xxxxx LLP
000 Xxxx Xxxxxx Xxx Xxxx, XX 00000
Attn: Xxxx X. Xxxxxx, Esq.
Cell Genesys, Inc.: Cell Genesys, Inc.
000 Xxxxxxxx Xxxxx
Xxxxxx Xxxx/ Xxxxxxxxxx 00000
Attn: President
with a copy to: Xxxxxx Xxxxxx White & XxXxxxxxx
000 Xxxxxxxxxx Xxxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxx, Esq.
16.8 Export Laws. Notwithstanding anything to the contrary contained
herein, all obligations of XT, CGI and JTI are subject to prior compliance with
United States and Japanese export regulations and such other United States and
Japanese laws and, regulations as may be applicable, and to obtaining all
necessary
-22-
23
approvals required by the applicable agencies of the government of the United
States and Japan. CGI and JTI each shall use efforts consistent with prudent
business judgment to obtain such approvals. XT shall cooperate with CGI and JTI
and shall provide assistance to them as reasonably necessary to obtain any
required approvals.
16.9 Severability. In the event that any provision of this Agreement
becomes or is declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full force and effect
without said provision, and the parties shall discuss in good faith appropriate
revised arrangements.
16.10 Force Majeure. Nonperformance of any party (except for payment
obligations) shall be excused to the extent that performance is rendered
impossible by strike, fire, earthquake, flood, governmental acts or orders or
restrictions, failure of suppliers, or any other reason where failure to
perform, is beyond the reasonable control and not caused by the negligence,
intentional conduct or misconduct of the nonperforming party.
16.11 No Consequential Damages. IN NO EVENT SHALL ANY PARTY HERETO BE
LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS
AGREEMENT OR THE EXERCISE OF RIGHTS HEREUNDER.
16.12 Dispute Resolution; Arbitration. The parties will attempt to
resolve any dispute under this Agreement by mutual agreement, and, if required,
there shall be a face-to-face meeting between senior executives of the parties.
Any dispute under this Agreement which is not settled after such meeting, shall
be finally settled by binding arbitration, conducted in accordance with the
Rules of Arbitration of the International Chamber of Commerce by three
arbitrators appointed in accordance with said rules. The arbitration proceedings
and all pleadings and written evidence shall be in the English language. Any
written evidence originally in a language other than English shall be submitted
in English translation accompanied by the original or a true copy thereof. The
costs of the arbitration, including administrative and arbitrators' fees, shall
be shared equally by the parties. Each party shall bear its own costs and
attorneys' and witness' foes. The prevailing party in any arbitration, as
determined by the arbitration panel, shall be entitled to an award against the
other party in the amount of the prevailing party's costs and reasonable
attorneys, fees. The arbitration shall be held in San Francisco, California,
unless initiated by XT or CGI against JTI in which event it will be held in
Tokyo, Japan. A disputed performance or suspended performances pending the
resolution of the arbitration must be completed within thirty days following the
final decision of the arbitrators. Any arbitration shall be completed within six
months from the filing of notice of a request for such arbitration.
-23-
24
6.13 Complete Agreement. It is understood and agreed by the parties
that this Agreement constitutes the entire agreement, both written and oral,
among the parties with respect to the subject matter hereof, and that all prior
agreements respecting the subject matter hereof, either written or oral,
expressed or implied, shall be abrogated, canceled, and are null and void and of
no effect. No amendment or change hereof or addition hereto shall be effective
or binding on either of the parties hereto unless reduced to writing and
executed by the respective duly authorized representatives of XT, CGI and JTI.
16.14 Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed to be an original and both together shall be
deemed to be one and the same agreement.
16.15 Headings. The captions to the several Articles and Sections
hereof are not a part of this Agreement, but are included merely for convenience
of reference only and shall not affect its meaning or interpretation.
16.16 Nondisclosure. Except as provided in Article 11, each of the
parties hereto agrees not to disclose to any third party the terms of this
Agreement without the prior written consent of each other party hereto, except
to advisors, investors and others on a need to know basis under circumstances
that reasonably ensure the confidentiality thereof, or to the extent required by
law. Without limitation upon any provision of this Agreement, each of the
parties hereto shall be responsible for
-24-
25
the observance by its employees, consultants and contractors of the foregoing
confidentiality obligations.
IN WITNESS WHEREOF, the parties have executed this Agreement, in
triplicate originals, their respective originals, hereunto duly authorized, as
of the day and year first above written.
JAPAN TOBACCO INC. CELGENESYS INC.
By:_____________________ By:/s/ Xxxxx Xxxxx
R. Xxxxx Xxxxx
Name:___________________ Senior Vice President,
Corporate Development
Title:__________________
Date: 6/19/96
Date:___________________
XENOTECH, INC. (as General
Partner of XENOTECH, L.P.)
By: /s/ Takahashi Kamiya
Xxxxxxx Xxxxxx
Chairman
Date: 6/19/96
By: /s/ Xxxxxxx X. Xxxxx
Xxxxxxx X. Xxxxx President and
Chief Executive Officer
Date: 6/19/96
-25-
26
Schedule 1 [***]
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
27
Schedule 2
Patents
DOCKET NO.FILING DATE SERIAL NO. TITLE INVENTORS
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
28
Schedule 2
Patents
DOCKET NO.FILING DATE SERIAL NO. TITLE INVENTORS
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
29
Schedule 2
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
30
SCHEDULE 2
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
31
SCHEDULE 2
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
32
SCHEDULE 2
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
33
SCHEDULE 2
[***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
34
SCHEDULE 3
ROYALTIES PAYABLE BY XENOTECH
(1) [***]
[***] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
