EXHIBIT 10 Page 12
EXHIBIT 10 Page 13
* CONFIDENTIAL TREATMENT
OMMITTED MATERIAL FILED
SEPARATELY WITH THE SEC
SUPPLEMENTAL AMENDMENT AND AGREEMENT
AGREEMENT dated March 1, 1994 between Schering Corporation, a
corporation organized under the laws of the State of New Jersey
("Schering"); and Biogen, Inc., a corporation organized under the laws
of the Commonwealth of Massachusetts ("Biogen").
WHEREAS, Schering has obtained royalty bearing licenses from
Genentech, Inc. ("Genentech") with respect to U.S. patent Nos.
4,704,362 and 5,221,619 and related U.S. and international patents and
applications;
WHEREAS, Biogen and Schering executed an Exclusive License and
Development Agreement ("License Agreement") dated December 8, 1979 and
an Amendment and Settlement Agreement ("First Amendment Agreement")
dated September 29, 1988;
WHEREAS, under the First Amendment Agreement Schering is entitled
to offset certain royalties paid to Genentech from the royalties to be
paid to Biogen with respect to Schering's sale of Licensed Product
(interferon-alpha);
WHEREAS, a dispute has arisen between Schering and Biogen as to
the amount of Schering's royalties paid to Genentech that are
offsettable against Biogen's royalties due from Schering under the
First Amendment Agreement; and
WHEREAS, Schering and Biogen agree that it is in their mutual
best interests to settle their dispute in accordance with the terms
and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants and
agreements herein contained, Schering and Biogen, intending to be
legally bound, do hereby agree as follows:
l. Definitions
1.1 All terms which are defined in the License Agreement and
First Amendment Agreement are used herein as so defined.
1.2 "Dispute" shall mean all issues arising from or relating to
Schering's assertion that it is entitled to offset from royalties
payable to Biogen those royalties paid and/or payable to Genentech
totaling * as provided for in the License and Settlement Agreement
between Genentech and Schering dated June 29, 1993.
2. Amendments to the First Amendment Agreement
2.1 Effective upon execution of this Supplemental Amendment and
Agreement, Schering and Biogen release each other from the terms of
Paragraphs 1.6 and 3.5 of the First Amendment Agreement and substitute
therefor the provisions of Paragraph 2.2 below of this Agreement. For
all other purposes, the remaining provisions of the License Agreement
and the First Amendment Agreement shall remain in full force and
effect, except that Paragraph 3.6 shall be amended to read as follows:
"3.6 Notwithstanding any other provisions of the
License Agreement, Schering shall not have the right to
deduct from earned royalty due under the License
Agreement with respect to given Licensed Products sold
during any accounting period any royalty payable to any
third party other than (i) the royalty payable under
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the Cohen-Boyer License as set forth in Section 3.3 of
the First Amendment Agreement, (ii) the royalty payable
under the NRDC License as set forth in Section 3.4 of
the First Amendment Agreement (as modified by the
Agreement dated January 7, 1994 among Schering, Biogen
and British Technology Group Limited), and (iii) the
royalty payable under the Genentech License to the
extent, but only to the extent, set forth in the First
Amendment Agreement as amended by this Supplemental
Amendment and Agreement.
2.2 Biogen agrees that Schering shall be entitled to deduct *
of the royalties paid to Genentech from the royalties paid or to be
paid to Biogen as provided for in the schedule set forth below, but in
no event more than * of the Sales Value of Licensed
Product sold by Schering in the indicated time period. These amounts
include royalties already paid to Genentech and deducted from
royalties already paid to Biogen as indicated.
Deductible From
Maximum Biogen Royalties
Deductible Due From Schering For
Amount The Indicated Time Period
* Already Deducted From the 2nd
Quarter 1993 Royalties
* Already Deducted From the 3rd
Quarter 1993 Royalties
* 4th Quarter 1993
* 1st Quarter 1994
* 2nd Quarter 1994
* 3rd Quarter 1994
* 4th Quarter 1994
* 1st Quarter 1995
* 2nd Quarter 1995
* 3rd Quarter 1995
* 4th Quarter 1995
* 1st Quarter 1996
* 2nd Quarter 1996
* 3rd Quarter 1996
* 4th Quarter 1996
_______________
The lesser of (i) * of Each subsequent Quarter until
the Sales Value of Schering's * is deducted.
sales of Licensed Product or
(ii) * minus the total
amount previously deducted.
___________
TOTAL *
It is understood and agreed by the parties that the above schedule
allows Schering to make deductions from the royalties due to Biogen
until a total of * has been deducted, notwithstanding that all
royalty payments to Genentech may have been completed by the first
quarter of l997.
It is agreed by the parties that no royalties paid by Schering to
Genentech, other than as specifically set forth above, shall be
deductible from royalties due to Biogen under the License Agreement
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and First Amendment Agreement, unless otherwise agreed to by the
parties in writing.
3. Waiver and Release
3.1 The parties hereby irrevocably waive and release each other
from each and every claim which was the subject of the Dispute,
including, but not limited to all claims one party may now or
hereafter have against the other party arising out of or relating to
such Dispute.
4. Other Terms and Conditions
4.1 This Supplemental Amendment and Agreement shall constitute
an amendment of the License Agreement within the meaning of Section 18
thereof.
4.2 Except as expressly set forth herein, all of the other terms
and conditions of the License Agreement and the First Amendment
Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the Parties have caused this instrument to be
executed by their officers, duly authorized, on the day and year first
written above.
BIOGEN, INC. SCHERING CORPORATION
/s/ /s/
By ___________________ By ____________________
Vice President Vice President
389774.1