Exhibit 10.9
COLLABORATIVE PRONET RESEARCH AND LICENSE AGREEMENT
dated as of November 11, 1998
by and between
MYRIAD GENETICS, INC
and
MONSANTO COMPANY
COLLABORATIVE PRONET RESEARCH AND LICENSE AGREEMENT
---------------------------------------------------
This COLLABORATIVE PRONET RESEARCH AND LICENSE AGREEMENT (this
"Agreement"), is made as of November 11, 1998 (the "Effective Date"), by and
- ---------- --------------
between MONSANTO COMPANY, a Delaware corporation (hereinafter "MONSANTO"), and
--------
MYRIAD GENETICS, INC., a Delaware corporation (hereinafter "MYRIAD"). MONSANTO
------
and MYRIAD are sometimes referred to herein individually as a "Party" and
-----
collectively as the "Parties."
-------
W I T N E S S E T H:
WHEREAS, MYRIAD has expertise in the discovery and characterization of
genes related to major common diseases and in the development of human
diagnostic products and services derived from disease genes, and has developed a
proprietary ProNet Technology to identify and compile data with respect to
protein-protein Interactions with potential application in the development of
human diagnostic and therapeutic products; and
WHEREAS, MONSANTO has expertise in discovering, developing,
manufacturing, distributing and marketing human therapeutic products; and
WHEREAS, MYRIAD and MONSANTO are interested in entering into an
agreement whereby MYRIAD and MONSANTO will jointly perform research using
MYRIAD's proprietary ProNet Technology to identify Genes and Interactive
Proteins and whereby MONSANTO shall have the option to obtain from MYRIAD a
license to use, commercialize and exploit the results of such research for the
discovery, development, manufacture and marketing of Licensed Products derived
from such Genes and Interactive Proteins.
NOW THEREFORE, in consideration of the premises, and the
representations, covenants and agreements hereinafter set forth, and for other
good and valuable consideration, the adequacy and sufficiency of which is hereby
acknowledged, the Parties hereto, intending to be legally bound, do hereby agree
as follows:
ARTICLE 1
DEFINITIONS
-----------
As used in this Agreement, the following terms, when capitalized,
shall have the meanings ascribed to them below.
1.1 "Affiliate" means any person, corporation, partnership, firm,
---------
joint venture or other entity which, directly or indirectly, through one or more
intermediaries, controls, is controlled by, or is under common control with,
MONSANTO or MYRIAD, as the case may be. As used in this definition, "control"
means the possession of the power to direct or cause the direction of the
management and policies of an entity, whether through the ownership of the
outstanding voting securities or by contract or otherwise.
1.2 "Annual Research Plan" means the written plan describing the
--------------------
research in the Field to be carried out during each year of the Research Program
by MYRIAD and MONSANTO pursuant to this Agreement. Each Annual Research Plan
shall be approved by the Steering Committee pursuant to Section 2.1(b) below.
1.3 "Applicable Rate" has the meaning set forth in Section 4.7(b).
---------------
1.4 "Bait" means any protein or gene or fragment thereof intended to
----
be used with the ProNet Technology under the Research Program to identify and
select Interactive Proteins and/or Genes that Interact therewith.
1.5 "Characterize" means, with respect to any gene, understanding the
------------
function or activity of the protein produced by such gene.
1.6 "Claims" has the meaning set forth in Section 9.1.
------
1.7 "Confidential Information" means all information (including but
------------------------
not limited to information about any element of Technology) which is disclosed
by one Party to the other hereunder or under the Confidentiality Agreement
referred to in Section 5.4 to the extent that such information, as of the date
of its disclosure, is not demonstrably known to the Party or its Affiliates
receiving such disclosure as shown by written, electronic or other
2
records (other than by virtue of a prior confidential disclosure to such Party
or its Affiliates). For purposes of this definition, "Confidential Information"
shall not include any information which, as of the date of disclosure or
thereafter (i) is disclosed in published literature through no fault or omission
of the Party receiving such disclosure; (ii) is obtained from a Third Party free
from any obligation of confidentiality owed to the disclosing Party and having
the lawful right to disclose it; or (iii) is known to the receiving Party, other
than under an obligation of confidentiality, at the time of disclosure by the
other Party, as evidenced by the written, electronic or other records of the
receiving Party.
1.8 "Control" or "Controlled" refers to possession of the ability to
------- ----------
grant a license or sublicense of patent rights, know-how or other intangible
rights as provided for herein without violating the terms of any agreement or
other arrangement with any Third Party.
1.9 "Diagnostic Product" means all human, veterinarian and other in
------------------
vivo or in vitro diagnostic products and services derived from a Gene or
Interactive Protein discovered under the Research Program, including without
limitation products or services utilized to identify predisposition to disease,
confirm disease, predict therapeutic effectiveness, monitor disease progression,
determine prognosis or stratify patient groups.
1.10 "Discover" (and any derivation such as Discovered or Discovery
--------
with appropriate adjustments in tense as the context shall require) shall mean,
with respect to any Gene, to isolate, clone, identify and sequence that Gene.
1.11 "Discontinued Product" has the meaning set forth in Section 3.8.
--------------------
1.12 "Effective Date" has the meaning specified in the Preamble to
--------------
this Agreement.
1.13 "Exclusive License" has the meaning set forth in Section 3.3.
-----------------
1.14 "Expiration Date" has the meaning set forth in Section 2.4.
---------------
1.15 "FDA" means the United States Food and Drug Administration or
---
any successor agency.
1.16 "Field" means all life science uses of products, including,
-----
without limitation, products relating to human, veterinarian, agricultural,
therapeutic and prophylactic uses (including Small Molecule Drugs and Non-Small
Molecule Drugs and Diagnostic Products (subject to the remainder of this
definition), protein replacement, antisense, ribozymes, and cell or gene
therapy) for any clinical indication of the Genes and/or Interactive Proteins
discovered under the Research Program through the ProNet Technology, but
---
excluding human Diagnostic Products to the extent commercialized for sale to or
- ---------
use by a Third Party (provided that MONSANTO shall have a right of first offer
on any sales, transfers, assignments, licenses or other dispositions to a Third
Party by MYRIAD of rights in and/or to any such human Diagnostic Products).
1.17 "First Commercial Sale" shall mean, with respect to any Licensed
---------------------
Product, the first sale (including to wholesalers) for end use or consumption of
such Licensed Product in a country after all required approvals, including
marketing and pricing approvals, have been granted by the governing health
authority of such country.
1.18 "G7 Country" means Canada, England, France, Germany, Italy,
----------
Japan or the United States.
1.19 "Gene" means a DNA fragment, or portion thereof, that has been
----
identified under the Research Program through the ProNet Technology and which
codes for an Interactive Protein or a portion thereof.
1.20 "IND" means an investigational new drug application required to
---
be filed with the FDA pursuant to 21 C.F.R. (S) 312, as such regulations may be
amended from time to time, to test drug products in humans, or any foreign
equivalent in any G7 Country.
1.21 "Interaction" or "Interact" means contact between proteins that
----------- --------
is sufficiently stable to allow the ProNet Technology to identify such proteins
or portions thereof.
1.22 "Interactive Protein" means a gene or protein or portion of a
-------------------
protein or gene which has been identified under the Research Program by means of
the ProNet Technology as a protein which directly, or indirectly through a
series of Interactions, Interacts with another protein or gene or portion of a
protein or gene.
3
1.23 "Licensed Product" means any product for prophylactic or
----------------
therapeutic use in the Field as to which MONSANTO has exercised an Option
pursuant to Section 2.3(b), which consists of, is comprised of, is derived from
and/or related to:
(a) a Gene or Interactive Protein that is licensed by MONSANTO
hereunder;
(b) any fragment or mutation of (a);
(c) an RNA or a DNA sequence corresponding, complementary to, or
an antisense sequence to a Gene or fragment of a Gene in (a) or (b);
(d) an antibody to an Interactive Protein;
(e) a gene therapy or cell therapy product incorporating any of
(a), (b), (c) or (d); or
(f) a molecule or compound, regardless of its function or
utility, which is discovered or whose function or utility is discovered in the
Research Program utilizing the ProNet Technology or other information relating
to (a) through (e) above.
The entities listed in (b) through (f) are sometimes referred to herein as
"derived" from the Gene or Interactive Protein in (a) above. For purposes of
the payments required to be made by MONSANTO under Article IV only, the term
"Licensed Product" shall not include any Interactive Protein, Gene or other
specific composition of matter that (x) as of the date hereof, is already known
as a product candidate to Monsanto or its Affiliates, as shown by written,
electronic or other records, or their current and future licensors, or to any
third party that acquires, is acquired by or merges with Monsanto or any
successor entity (with the right to use), other than by receipt from MYRIAD, or
that after the date hereof ceases to be proprietary and comes within the public
domain or knowledge of MONSANTO or (y) at the time of disclosure to MONSANTO, or
at the time of use by MONSANTO, as applicable, is part of the public domain or
independently known to MONSANTO, as shown by written, electronic or other
records, provided, however, that any such Interactive Protein, Gene or other
specific composition of matter or use thereof shall be a "Licensed Product" for
purposes of payments required to be made by MONSANTO under Article IV if it or
its use is covered by a Valid Claim of a Research Program Patent.
1.24 "Losses" has the meaning set forth in Section 9.1.
------
1.25 "MONSANTO Database" has the meaning set forth in Section 2.6(a).
-----------------
1.26 "MONSANTO Indemnitees" has the meaning set forth in Section 9.2.
--------------------
1.27 "MONSANTO Information" means any information and materials,
--------------------
including DNA and other similar molecules, delivered by MONSANTO to MYRIAD for
use in the Research Program, and all results, including DNA and other similar
molecules produced in PCR reactions and otherwise, of research conducted using
such information and materials to the extent such information and materials are
proprietary and confidential to MONSANTO.
1.28 "MONSANTO Technology" has the meaning set forth in Section
-------------------
6.1(b).
1.29 "MYRIAD Indemnitees" has the meaning set forth in Section 9.1.
------------------
1.30 "MYRIAD Patent" means a Patent Controlled by MYRIAD which claims
-------------
any Technology necessary or useful for the development, manufacture, use,
importation, sale or offer for sale of a Licensed Product.
1.31 "MYRIAD Technology" means all Technology Controlled by MYRIAD,
-----------------
including the ProNet Technology, Research Program Technology and any Technology
claimed or described in a MYRIAD Patent or a Research Program Patent.
1.32 "NDA" means a new drug application required to be filed with the
---
FDA pursuant to 21 C.F.R. (S) 313, as such regulation may be amended from time
to time, to market a drug, or any foreign equivalent in a G7 Country.
4
1.33 "Net Sales" means, with respect to each country in the
---------
Territory, amounts invoiced by MONSANTO, its Affiliates and sublicensees with
respect to all sales of Licensed Products covered by a Valid Claim under any
MYRIAD Patent or Research Program Patent or Patent resulting from use of
Research Program Technology ("Patented Licensed Products") to unaffiliated Third
--------------------------
Parties (whether an end-user, a distributor or otherwise), and exclusive of
intracompany transfers in the Territory, less the reasonable and customary
deductions from such gross amounts including, without limitation:
(a) cash and quantity discounts, allowances and credits actually
allowed and taken;
(b) credits or allowances actually granted for damaged goods,
recalls, returns or rejections of Licensed Products and retroactive price
reductions;
(c) sales or similar taxes (including duties or other
governmental charges levied on, absorbed or otherwise imposed on the sale of
Licensed Products including, without limitation, value added taxes or other
governmental charges otherwise measured by the billing amount) when included in
billing;
(d) freight, postage, shipping, customs duties and insurance
charges paid by MONSANTO;
(e) charge back payments, discounts and rebates (whether
mandated or otherwise) incurred for managed health care organizations or to
federal, state and local governments, their agencies, and purchasers and
reimbursers or to trade customers, including but not limited to, wholesalers and
chain and pharmacy buying groups and charge back payments, discounts and rebates
(whether mandated or otherwise) charged by national or local government
authorities in countries other than the United States and paid or credited by
MONSANTO; and
(f) commissions paid to Third Parties other than sales personnel
and sale representatives or sales agents directly related to such sales.
1.34 "Non-Small Molecule Drugs" means genes, gene fragments,
------------------------
proteins, protein fragments, RNA, antibodies and any other compounds with
molecular weights equal to or greater than 1,000 daltons.
1.35 "Option" has the meaning set forth in Section 2.3(b).
------
1.36 "Option Period" has the meaning set forth in Section 2.3(b).
-------------
1.37 "Patent" means United States and foreign patents, applications
------
and provisional applications for United States and foreign patents, and all
reexaminations, reissues, extensions, term restorations, divisionals,
continuations and continuations-in-part thereof.
1.38 "Patented Licensed Products" shall have the meaning set forth in
--------------------------
Section 1.33.
1.39 "Pathway" means a series of Genes that code for Interactive
-------
Proteins that Interact with one another, including the related Interactions.
1.40 "Previously Licensed Proteins" shall mean those proteins and/or
----------------------------
genes licensed by MYRIAD to any Third Party prior to the date such proteins
and/or genes are placed in the MONSANTO Database; provided that, as of the date
of such license, MYRIAD had no reason to believe such proteins and/or genes
could form a part of a the Research Program and/or a Monsanto Database.
1.41 "ProNet" shall mean MYRIAD's database of Interactive Proteins
------
resulting from the use of the ProNet Technology.
1.42 "ProNet Technology" means the proprietary tools (robotics,
-----------------
plastics, software, etc.), proprietary methods (protocols, processes, etc.) and
proprietary reagents (vectors, strains, buffers and solutions, etc.) used by
MYRIAD to carry out yeast two hybrid protein-protein Interaction studies,
including MYRIAD's proprietary compilation of protein-protein Interaction data
for the human genome which is generally accessible to MYRIAD's ProNet
collaborators, including improvements thereto.
1.43 "Related Licensed Products" shall have the meaning set forth in
-------------------------
Section 4.2.
1.44 "Research Program" means the collaborative research program
----------------
specified in the applicable Annual Research Plan.
5
1.45 "Research Program Patent" means any Patent filed by either party
-----------------------
covering Research Program Technology.
1.46 "Research Program Technology" has the meaning set forth in
----------------------------
Section 6.1(a).
1.47 "Research Term" has the meaning set forth in Section 2.4.
-------------
1.48 "Small Molecule Drugs" means naturally occurring or synthetic
--------------------
compounds with molecular weights of less than 1,000 daltons.
1.49 "Steering Committee" has the meaning set forth in Section 2.2.
-------------------
1.50 "Surrogate Product" has the meaning set forth in Section 3.8.
-----------------
1.51 "Technology" means and includes all proprietary information and
----------
materials related to the Field, including but not limited to nucleic acid
constructs, genes, proteins, DNA fragments and primers, procedures, processes,
technical information, know-how, data, expertise and trade secrets.
1.52 "Territory" means the world.
---------
1.53 "Term" refers to the term of this Agreement as provided in
----
Section 7.1.
1.54 "Third Party" means any entity other than MONSANTO, MYRIAD and
-----------
their respective Affiliates.
1.55 "Valid Claim" means any claim of a pending patent application or
-----------
an unexpired patent which has not been held unenforceable, unpatentable or
invalid by a decision of a court of other governmental agency of competent
jurisdiction, unappealed or unappealable within the time allowed for appeal, and
which has not been admitted to be invalid or unenforceable through reissue,
reexamination, disclaimer or otherwise.
1.56 "Written Disclosure" has the meaning set forth in Section 5.3.
------------------
ARTICLE II
RESEARCH PROGRAM
----------------
2.1 Research Program.
----------------
(a) Objectives of Research Program. MYRIAD and MONSANTO shall engage
------------------------------
in the Research Program upon the terms and conditions set forth in this
Agreement and in the applicable Annual Research Plan. As will be specified in
the initial Annual Research Plan, Monsanto shall initially select for analysis
in the Research Program two Pathways and several Baits related thereto. From
time to time thereafter, MONSANTO may specify additional Baits to be used in the
Research Program. MYRIAD will use commercially reasonable efforts using the
ProNet Technology to identify all Genes and Interactive Proteins that Interact
with the initial Baits provided by MONSANTO hereunder and such additional Baits
as may be approved by the Steering Committee hereunder; provided, however, that
MYRIAD shall not be obligated to disclose the name and/or sequence of any
Previously Licensed Protein to the extent that MYRIAD is prohibited from doing
so under any binding agreement with the licensee of such Previously Licensed
Protein. It is hereby agreed that MONSANTO may, at anytime during the Research
Term and upon not less than thirty (30) days' written notice, or as otherwise
approved by the Steering Committee, and upon payment to MYRIAD of [ ],
add one additional Pathway (or more with the prior approval of the Steering
Committee) to the Research Program (and Baits related thereto) for analysis
using the ProNet Technology.
(b) Annual Research Plans. For each year of the Research Program
---------------------
commencing with the second year, an Annual Research Plan shall be prepared and
approved in preliminary form by the Steering Committee no later than one hundred
eighty (180) days before the end of the prior year and approved by the Steering
Committee in final form no later than ninety (90) days before the end of the
prior year. The Annual Research Plan for the first year shall be approved by
the Steering Committee in final form within 30 days after the Effective Date.
Each Annual Research Plan shall be in writing and shall set forth with
reasonable specificity research objectives and milestones for the period covered
by the Annual Research Plan. The Steering Committee may make adjustments in the
Annual Research Plan at its quarterly meetings or otherwise as it may determine.
6
2.2 Joint Research Steering Committee. The parties hereby establish
---------------------------------
a Joint Research Steering Committee (the "Steering Committee") to facilitate the
------------------
Research Program as follows:
(a) Establishment and Functions. The Steering Committee shall
---------------------------
plan, administer and monitor the Research Program. In particular, the Steering
Committee shall review progress in the Research Program and recommend necessary
adjustments to the Research Program as the research takes place.
(b) Membership. MYRIAD and MONSANTO each shall appoint, in its
----------
sole discretion, three members to the Steering Committee, unless otherwise
agreed to by the Parties. Substitutes or alternates may be appointed at any time
by notice in writing to the other Party.
The members of the Steering Committee initially shall be:
MYRIAD Appointees:
[
]
MONSANTO Appointees:
[
]
(c) Chairs. The Steering Committee shall be chaired by two co-
------
chairpersons, one appointed by MYRIAD and the other appointed by MONSANTO from
the Steering Committee members.
(d) Meetings. The Steering Committee shall meet at least
--------
quarterly, at places and on dates selected by each Party in turn, unless the
Parties agree otherwise. Representatives of each Party or its Affiliates, in
addition to the members of the Steering Committee, may attend such meetings at
the invitation of either Party.
(e) Minutes. The Steering Committee shall keep accurate minutes
-------
of its deliberations which record all proposed decisions and all actions
recommended or taken. Drafts of the minutes shall be delivered to all Steering
Committee members no later than two weeks after the date of the applicable
meeting. The Party hosting the meeting shall be responsible for the preparation
and circulation of the draft minutes relating thereto. Draft minutes shall be
edited by the co-chairpersons and shall be issued in final form only with their
approval and agreement as evidenced by their signatures on the minutes.
(f) Quorum; Voting; Decisions. At each Steering Committee
-------------------------
meeting, at least two representatives of each Party shall constitute a quorum.
The Steering Committee representatives of each Party shall collectively have one
vote on all matters before the Steering Committee. All decisions of the Steering
Committee shall be made by unanimous vote of both Parties present at any meeting
at which a quorum is present. In the event that the Steering Committee is unable
to resolve any matter before it, such matter shall be referred at the request of
either Party to the President of MYRIAD and the Head of Pharmaceutical Research
and Development of MONSANTO, or designee thereof, for attempted resolution by
good faith negotiations, which negotiations shall continue for a period not to
exceed ninety (90) days. In the event that such dispute is not resolved in such
manner within such period or any mutually agreed extension thereof, either Party
may terminate the Research Program upon written notice to the other Party.
(g) Expenses. MYRIAD and MONSANTO shall each bear all expenses of
--------
their respective Steering Committee members related to their participation on
the Steering Committee and attendance at Steering Committee meetings.
2.3 Access to ProNet; Pathway Options/Interactive Protein and Gene
--------------------------------------------------------------
License.
- -------
(a) ProNet Technology. Promptly upon its receipt of the initial
-----------------
Baits specified in the initial Annual Research Plan, and thereafter, MYRIAD
shall use commercially reasonable efforts using the ProNet Technology to
identify all Genes and Interactive Proteins that Interact with such Baits and
any additional Baits approved by the Steering Committee or identified by
MONSANTO from time to time; provided, however, that
7
MYRIAD shall not be obligated to disclose the name and/or sequence of any
Previously Licensed Protein to the extent that MYRIAD is prohibited from doing
so under any binding agreement with the licensee of such Previously Licensed
Protein. In addition, as soon as practicable after the date hereof, and
thereafter, MYRIAD shall provide and disclose to MONSANTO all information
(public and confidential) within its knowledge as MYRIAD shall determine, in
good faith, is reasonably related to such Baits, Genes and Interactive Proteins,
and subsequent Interactions therewith.
(b) Exclusive Option to Interactive Proteins and Genes. MONSANTO
--------------------------------------------------
shall have the exclusive option (an "Option") at any time and from time to time
------
during the eighteen-month period following the expiration of the Research Term
(the "Option Period") to obtain an Exclusive License with respect to any
-------------
Interactive Protein(s) or Gene(s) included in any MONSANTO Database (as defined
in Section 2.6(a) below) (other than Previously Licensed Proteins) by (i)
delivering written notice to MYRIAD prior to the expiration of the Option Period
specifying the Interactive Proteins and Genes which MONSANTO is proposing to be
subject to an Exclusive License and (ii) paying [ ] per each
Interactive Protein or Gene covered by each such Exclusive License (up to a
maximum of [ ] for up to 10 different Interactive Proteins and Genes
contained in any MONSANTO Databases). MYRIAD shall retain all rights to all
Interactive Proteins and related Genes with respect to which MONSANTO has not
exercised an Option for an Exclusive License prior to the expiration of the
Option Period. Notwithstanding the foregoing, after the expiration of the
Option Period, MONSANTO will have the right at any time and from time to time to
seek an Exclusive License from MYRIAD with respect to any Interactive Protein or
related Gene which was previously the subject of an Option, provided that
MYRIAD, after the expiration of such Option Period, has not licensed the rights
to such Interactive Protein or related Gene to a Third Party or has not
commenced an internal program relating to such Interactive Protein or related
Gene as documented by written records. Notwithstanding the foregoing, in no
event shall any license fee be required with respect to any Interactive Protein,
Gene or other specific composition of matter that (x) as of the date hereof, is
already known as a product candidate to Monsanto or its Affiliates, as shown by
written, electronic or other records, or their current and future licensors, or
to any third party that acquires, is acquired by or merges with Monsanto or any
successor entity (with the right to use), other than by receipt from MYRIAD, or
that after the date hereof ceases to be proprietary and comes within the public
domain or knowledge of MONSANTO or (y) at the time of disclosure to MONSANTO, or
at the time of use by MONSANTO, as applicable, is part of the public domain or
independently known to MONSANTO, provided, however, that any such Interactive
Protein, Gene or other specific composition of matter or use thereof shall be a
"Licensed Product" for purposes of payments required to be made by MONSANTO
under Article IV if it or its use is covered by a Valid Claim of a Research
Program Patent.
(d) No Limit to Number of Option Rights. During the Option
-----------------------------------
Period, MONSANTO may exercise an unlimited number of Options.
(e) Exclusivity of Pathways. During the Research Term and the
-----------------------
Option Period, MYRIAD shall not assign, license or grant any option or other
rights in or to, or otherwise make available, to any Third Party any of its
rights in any Interactive Proteins or Genes that are the subject of the Research
Program and/or are contained in a MONSANTO Database (other than Previously
Licensed Proteins). MONSANTO shall have no rights with respect to any Previously
Licensed Proteins until the expiration or termination of such Third Party's
rights with respect thereto.
2.4 Research Term. The "Research Term" shall commence upon the
------------- -------------
Effective Date and terminate on the Expiration Date (as defined below), unless
earlier terminated pursuant to Article VII below or Section 2.2(f) above. The
initial expiration date (the "Expiration Date") of the Research Term shall be on
---------------
the 15-month anniversary of the Effective Date; provided that at any time prior
to such initial 15-month anniversary, and/or any extension thereof, MONSANTO may
extend the Expiration Date for a period of twelve (12) months by (i) delivering
written notice thereof to MYRIAD and (ii) paying [ ] to MYRIAD;
provided that MYRIAD shall have no obligation to conduct additional research
pursuant to the Research Program after expending the first [ ] of the
second [ ] extension payment or thereafter during any other extension.
2.5 Reports, Data and Information. MYRIAD shall keep MONSANTO fully
-----------------------------
informed about the status of the Research Program, shall provide to MONSANTO
upon its request and at MYRIAD's sole cost and expense from time to time during
the Research Term and the Option Period a copy of all records and data
pertaining to the Research Program and the MONSANTO Databases, and shall provide
(i) at least monthly formal updates regarding the MONSANTO Databases (in form
and substance reasonably acceptable to MONSANTO) and (ii) at least quarterly
summary reports regarding the Research Program (in form and substance reasonably
acceptable to MONSANTO). In addition, during the Research Term and the Option
Period, MYRIAD will make available to MONSANTO upon its request and at MYRIAD's
sole cost and expense any and all software within MYRIAD's
8
possession or control and which MYRIAD has the right to provide which is
required to use, review and manipulate the data generated in connection with the
Research Program; provided that to the extent MYRIAD does not have the right to
provide such software pursuant to the terms thereof, MYRIAD shall use its
reasonable efforts to provide MONSANTO with a comparable alternative. Upon the
expiration of the Option Period, MONSANTO shall permit MYRIAD to have access to
its facilities to enable MYRIAD to remove any and all such software provided to
MONSANTO; provided that upon such expiration, MYRIAD shall deliver a complete
copy of all such data and information in a form readable and usable by MONSANTO.
In addition, from time to time upon request of MONSANTO during the Research Term
and the Option Period, and upon the expiration of the Option Period, MYRIAD
shall return to MONSANTO or destroy upon MONSANTO's request any and all MONSANTO
Information.
2.6 MONSANTO Databases; Confidential Libraries. In addition to the
------------------------------------------
provisions of Article V below:
(a) MONSANTO Databases. As soon as practicable after the date
------------------
hereof, and thereafter, MYRIAD shall establish and maintain separate,
confidential databases (each, a "MONSANTO Database") for the sole benefit of
-----------------
MONSANTO to hold all data and results related to the Research Program. All such
data and results shall be kept confidential until expiration of the Research
Term; provided, however, that, MYRIAD shall keep confidential all such data and
results relating to any Licensed Products and/or Genes and Interactive Proteins
subject to an Exclusive License hereunder for so long as the Exclusive License
relating thereto remains in effect; provided further that, notwithstanding the
foregoing, upon the expiration of the foregoing confidentiality periods, MYRIAD
shall be entitled to update the ProNet database with the results of the Research
Program (other than with respect to MONSANTO Information which shall in no event
be disclosed or included in the ProNet or any other database). Without limiting
the foregoing, upon termination of this Agreement, MYRIAD shall return or
destroy (at MONSANTO's election) all copies and embodiments of such MONSANTO
Information. Any and all genes and proteins (whether or not originally part of
the ProNet) that are within the Pathways selected for analysis as part of the
Research Program, other than Previously Licensed Proteins, shall be deemed a
part of the MONSANTO Databases for purposes of this Agreement.
(b) Confidential Libraries. As soon as practicable after the date
----------------------
hereof, and thereafter, MYRIAD shall establish and maintain those libraries
contemplated by the Annual Research Plan. Each such library developed under the
Research Program shall be kept separate and confidential during the Research
Term and the Option Period. Upon expiration of the Option Period, both MONSANTO
and MYRIAD shall have the right to use all such libraries, including all copies,
embodiments and derivations thereof; provided that MYRIAD shall not have the
right to use any such library developed under the Research Program that relates
to an Exclusive License then in existence.
2.7 Dedicated Resources. MYRIAD shall use reasonable efforts to
-------------------
dedicate to the Research Program the personnel and resources necessary to meet
its obligations contained in the Annual Research Plan, but in no event shall
MYRIAD be obligated to dedicate resources that would exceed the costs of the
technology access fees as set forth in Section 4.1 or the extension fees as set
forth (and limited) in Section 2.4.
ARTICLE III
LICENSES
--------
3.1 License to MONSANTO to Conduct Research. MYRIAD hereby grants to
---------------------------------------
MONSANTO a paid-up, non-exclusive license, with a right to sublicense as
described in Section 3.5, in the Field and in the Territory during the Research
Term and the Option Period to make, have made and use the Genes, Interactive
Proteins and other items contained in the Pathways analyzed pursuant to the
Research Program, and derivations thereof, in connection with the exercise of
its rights and the performance of its obligations hereunder (including under the
Research Program).
3.2 License to MYRIAD to Conduct Research. MONSANTO grants to MYRIAD
-------------------------------------
a paid- up, worldwide, non-exclusive license, with a right to sublicense as
described in Section 3.5, during the Research Term and any extension thereof, to
make, have made and use MONSANTO's proprietary Baits and any MONSANTO
Information solely to conduct the Research Program.
3.3 License to MONSANTO to Develop and Commercialize Licensed
---------------------------------------------------------
Products. Upon the exercise by MONSANTO of an Option with respect to any
- --------
specified Interactive Protein(s) or Gene(s), and the payment by MONSANTO of the
Exclusive License fee(s) provided in Section 2.3(b), MYRIAD shall be deemed to
have granted to MONSANTO an exclusive, worldwide, royalty-bearing license (an
"Exclusive License"), with a right to
9
sublicense as described in Section 3.5, to (i) make, have made and use such
Interactive Protein and Gene to develop Licensed Products in the Territory and
(ii) make, have made, use, sell, offer for sale and import Licensed Products in
the Territory which are derived from the such Interactive Protein(s) or Gene(s),
subject to the terms of this Agreement, including without limitation the royalty
and milestone payments provided herein.
3.4 Restrictive Covenant. Each Party covenants and agrees not to use
--------------------
Technology owned or Controlled by the other Party other than with respect to
activities expressly contemplated hereby or as expressly permitted hereunder.
3.5 Sublicensing. The licenses set forth in Sections 3.1 through 3.3
------------
above shall include the right to grant sublicenses to Affiliates and any other
Third Party upon the same terms and conditions contained in this Agreement.
3.6 Third Party Technology. The licenses granted under Sections 3.1
----------------------
through 3.3 include sublicenses of Third Party technology to the extent that
such licensed rights can be so sublicensed and are necessary for the
manufacture, use or sale of the relevant Licensed Product. The licenses granted
under Sections 3.1 through 3.3, to the extent they include sublicenses of Third
Party technology, shall be subject to the terms and conditions of the license
agreement pursuant to which the sublicense is granted. To the best of MYRIAD's
knowledge, except as otherwise provided in Section 8.1, as of the date hereof,
the Research Program does not use or require any licensed Third Party
Technology. On and after the Effective Date and until expiration of the Research
Term and the Option Period, MYRIAD (i) shall promptly notify MONSANTO if MYRIAD
intends to license from any Third Party any Technology for use in the Research
Program and (ii) shall not use any such Technology in the Research Program
without the prior written consent of MONSANTO (which shall not be unreasonably
withheld).
3.7 Development and Commercialization. MONSANTO shall use
---------------------------------
commercially reasonable efforts to develop and commercialize Licensed Products
on a commercially reasonable basis in such countries in the Territory where in
MONSANTO's sole and absolute discretion it is commercially, strategically and
otherwise viable and desirable to do so; provided, however, that MONSANTO shall
-------- -------
have no obligation to develop and/or commercialize Licensed Products in any
country in which, in MONSANTO's sole and absolute discretion, such development
and/or commercialization is not commercially, strategically or otherwise viable
or desirable.
3.8 Discontinuation of Commercialization. In the event that MONSANTO
------------------------------------
discontinues commercialization (as determined by MONSANTO in good faith) of a
Licensed Product (a "Discontinued Product"), MONSANTO shall, upon written notice
--------------------
to MYRIAD within thirty (30) days thereafter, elect to either (i) return the
Exclusive License with respect to such Licensed Product as described below, in
which case the Exclusive License to such Licensed Product shall immediately
terminate, provided, however, that MYRIAD shall be obligated to make the
payments set forth in this Article III, as applicable, to MONSANTO in the same
manner as MONSANTO would have paid to MYRIAD, or (ii) shift the milestone
payments and royalty obligation of such Discontinued Product to a surrogate
product in the same pathway as such Discontinued Product and having equivalent
or greater projected revenues (a "Surrogate Product") for the remainder of
-----------------
milestone payments and royalty-bearing term of the Exclusive License with
respect to such Discontinued Product. MONSANTO shall have the right to shift
the milestone payments and royalty obligation of a Discontinued Product to only
a single Surrogate Product, as provided above, after which MONSANTO shall not
have the right to shift any milestone payments and royalty obligation of such
Surrogate Product without the prior written approval of MYRIAD (which shall not
be unreasonably withheld). In the event MONSANTO shifts the milestone payments
and royalty base to a Surrogate Product, all provisions of this Agreement
relating to record keeping, calculation and payment of milestone payments and
royalties and like matters shall apply to the Surrogate Product, but the
provisions of this paragraph shall not apply to the Surrogate Product unless the
Surrogate Product is also subject to an Exclusive License from MYRIAD. From time
to time thereafter for a period of seven (7) years, to the extent MYRIAD has not
pursued the commercialization of any Discontinued Product (as determined by
MONSANTO in good faith), MONSANTO shall be entitled to re-initiate the
commercialization of any such Discontinued Product by delivering written notice
to MYRIAD and if MONSANTO so re-initiates such commercialization, MONSANTO shall
be thereafter liable for all milestone and royalty obligations set forth herein
with respect to such Discontinued Product.
3.9 No Other Rights. No other rights of either Party are licensed
---------------
hereunder except as expressly provided herein.
ARTICLE IV
TECHNOLOGY ACCESS FEE; MILESTONE PAYMENTS; ROYALTIES
----------------------------------------------------
10
4.1 Technology Access Fee. In consideration of the expertise,
---------------------
technology, and investment related to the Field which will be contributed to the
Research Program by MYRIAD, MONSANTO shall pay MYRIAD a non-refundable
technology access fee in the aggregate amount of [ ]. It is hereby
agreed that all payments made by MONSANTO under this Section 4.1 and Section 2.4
above (up to a maximum of [ ]) shall be credited towards any fees
otherwise payable by MONSANTO to MYRIAD in connection with any agreement
executed by MONSANTO during the Research Term which provides MONSANTO with
general access to ProNet.
4.2 Milestone Payments. In consideration of the rights granted
------------------
MONSANTO under this Agreement, MONSANTO shall pay MYRIAD the following amounts
within thirty (30) days after each occurrence of the following milestones:
Cash Payment
(in millions) Milestone
------------- ---------
[
]
Notwithstanding anything to the contrary in the foregoing, applicable milestone
events and the payments related thereto shall be determined in good faith by the
Parties to the extent relating to applications outside of the Field.
Notwithstanding anything to the contrary contained in this Agreement, for
purposes of this Section 4.2 and Section 4.3(c) below, all Licensed Products
derived from a single Gene or Interactive Protein and within the same Pathway
("Related Licensed Products") shall be deemed to be only one (1) "Licensed
--------
Product" and no milestones shall be required to be paid on any of such Related
- -------
Licensed Products other than the first Licensed Product derived from such
Gene(s) or Interactive Protein(s). Royalties shall apply to all such Licensed
Products, including Related Licensed Products, subject to the caps set forth in
Section 4.3(c) below.
4.3 Royalties. MONSANTO shall pay to MYRIAD a royalty on Net Sales
---------
of Licensed Products by MONSANTO, its Affiliates and sublicensees as follows:
(a) For Patented Licensed Products that are Non-Small Molecule
Drugs, MONSANTO shall pay MYRIAD a royalty on Net Sales of Patented Licensed
Products at the following rates:
[
]
(b) For Patented Licensed Products that are Small Molecule Drugs,
MONSANTO shall pay to MYRIAD a royalty equal to [ ] of such Patented
Licensed Products.
(c) Notwithstanding anything to the contrary contained in
Sections 4.3(a) and (b) above, under no circumstances shall MONSANTO be
obligated to make royalty payments to MYRIAD in excess of [ ] in the
aggregate for any Licensed Product.
(d) Except where expressly provided otherwise in this Agreement,
all royalties to MYRIAD shall be paid, on a country-by-country basis, from the
date of the First Commercial Sale of each Patented Licensed Product in a
particular country until the later of (i) fifteen (15) years from the First
Commercial Sale in such country and (ii) the last to expire in any such country
of any valid and enforceable MYRIAD Patent or Research Program Patent which
covers the manufacture, use or sale of such Patented Licensed Product in such
country.
(e) Upon expiration of the royalty term for a Patented Licensed
Product in a country as described above, MONSANTO shall thereafter have an
irrevocable, exclusive, paid-up (royalty-free) license to make, have made, use,
sell, offer for sale, have sold and import that Patented Licensed Product in
that country.
4.4 Sales by Sublicensees. In the event that MONSANTO, subject to the
---------------------
provisions of this Agreement, grants licenses or sublicenses to others to make
or sell patented Licensed Products, such licenses or sublicenses shall include
an obligation for the licensee or the sublicensee to account for and report its
Net Sales of such patented Licensed Products on the same basis as if such sales
were Net Sales by MONSANTO, and such sublicensee shall pay royalties to MYRIAD
on the Net Sales of such sublicensees, as if they were Net Sales of
11
MONSANTO (it being understood that MONSANTO shall remain responsible with
respect to any such royalties not paid by such sublicensee).
4.5 Royalty Reports and Payments. MONSANTO shall deliver to MYRIAD a
----------------------------
report summarizing the Net Sales of any Patented Licensed Products during the
relevant quarter on a country-by-country basis within forty-five (45) days
following the end of each calendar quarter and sixty (60) days following the end
of each calendar year following the First Commercial Sale of a Licensed Product.
Royalty payments under this Agreement shall be made to MYRIAD or its designee
quarterly within thirty (30) days following the date for the report in the first
sentence of this paragraph.
4.6 Payments. Any payments due from MONSANTO to MYRIAD under this
--------
Agreement shall be in U.S. dollars and made by wire transfer to the following
account:
U.S. Bank of Utah
107 South Main
Salt Lake City, Utah 84111
ABA# 124 302 150
For the Account of: Myriad Genetics, Inc.
Account # 1531003611622
4.7 Maintenance of Records; Audits.
------------------------------
(a) MONSANTO shall keep records in sufficient detail to enable the
royalties payable hereunder to be determined. Upon the written request of
MYRIAD and not more than once in each calendar year, MONSANTO shall permit an
independent certified public accounting firm of nationally recognized standing
selected by MYRIAD and reasonably acceptable to MONSANTO, at MYRIAD's sole cost
and expense, to have access during normal business hours at a time, date and
place reasonably acceptable to MONSANTO to such of the records of MONSANTO as
may be reasonably necessary to verify the accuracy of the royalty reports
hereunder for any year ending not more than twenty-four (24) months prior to the
date of such request and no later than forty-five (45) days after written
request is made. The accounting firm shall disclose to MYRIAD only whether the
royalty reports are correct or incorrect and the specific details concerning any
discrepancies and shall simultaneously provide a copy of its report to MONSANTO.
No other information shall be provided to MYRIAD.
(b) If such accounting firm concludes that additional royalties were
owed or paid during such period, MONSANTO shall pay to MYRIAD any such
additional royalties due, or MYRIAD shall pay or provide a credit to MONSANTO
(at MONSANTO's election) of any additional royalties paid, together with
interest accrued from the date such royalty was due or paid, as applicable, at
an annual rate (based on a 360-day year) equal to the lesser of (i) the prime
interest rate for such year to date (as announced by Citibank, N.A.) plus one
percent and (ii) the highest rate permitted by applicable law within thirty (30)
days after the date of such accounting firm's written report (the "Applicable
----------
Rate"); provided that no interest shall be so paid unless the amount of the
- ----
additional royalties owed or paid, as applicable, varies by five percent (5%) or
more from the actual amount determined by the accounting firm. The fees charged
by such accounting firm shall be paid by MYRIAD, except MONSANTO shall pay such
fees in the event that the additional royalties owed by MONSANTO, together with
the royalties paid, for the period in question exceed such royalties paid by
five percent (5%) or more.
(c) MONSANTO shall include in each sublicense granted by it pursuant
to this Agreement a provision requiring the sublicensee to make reports to
MONSANTO, to keep and maintain records of sales made pursuant to such sublicense
and to grant access to such records by MYRIAD's independent accountant to the
same extent required of MONSANTO under this Agreement. Upon the expiration of
twenty-four (24) months following the end of any year, the calculation of
royalties payable with respect to such year shall be binding and conclusive upon
MYRIAD, and MONSANTO and its sublicensees shall be released from any liability
or accountability with respect to royalties for such year.
(d) MYRIAD shall treat all financial information subject to review
under this Section 4.7 or under any sublicense agreement in accordance with the
confidentiality provisions of this Agreement, and shall cause its accounting
firm to enter into an acceptable confidentiality agreement with MONSANTO
obligating it to retain all such financial information in confidence pursuant to
such confidentiality agreement.
4.8 Income Tax Withholding. If at any time, any jurisdiction within the
----------------------
Territory requires the withholding of income taxes or other taxes imposed upon
payments set forth in this Article IV, MONSANTO shall
12
make such withholding payments as required and subtract such withholding
payments from the payments set forth in this Article IV or, if applicable,
MYRIAD will promptly reimburse MONSANTO or its designee(s) for the amount of
such withholding payments. MONSANTO shall provide MYRIAD with documentation of
such withholding payments in a manner that is reasonably satisfactory for
purposes of such taxing authority. Any withholdings paid when due hereunder
shall be for the account of MYRIAD and shall not be included in the calculation
of Net Sales.
4.9 Foreign Exchange. For the purpose of computing Net Sales for Licensed
----------------
Products sold in a currency other than United States Dollars, such currency
shall be converted into United States Dollars in accordance with the applicable
foreign exchange rate published in The Wall Street Journal for the last business
day of the calendar quarter for which the relevant royalty payment is to be
made.
4.10 No Overlapping Payments. Notwithstanding any other provision of this
-----------------------
Agreement, in no event shall any royalty or other payment provided for under any
Section of this Agreement be paid with respect to any Licensed Product to the
extent a royalty or other such payment has been paid pursuant to any other
Section of this Agreement with respect to such sale.
ARTICLE V
TREATMENT OF CONFIDENTIAL INFORMATION
-------------------------------------
5.1 Confidentiality.
---------------
(a) MYRIAD and MONSANTO each recognize that the other's Confidential
Information constitutes highly valuable and proprietary confidential
information. Subject to the terms and conditions of Article IV with respect to
licenses and subject to the publication provisions in Section 5.2, MYRIAD and
MONSANTO each agree that during the term of this Agreement and for seven (7)
years thereafter, it will keep confidential, and will cause its Affiliates to
keep confidential, all Confidential Information of the other Party that is
disclosed to it, or to any of its Affiliates, pursuant to or in connection with
this Agreement; provided, however, that, notwithstanding the foregoing, MYRIAD
shall keep confidential all Confidential Information relating to any Licensed
Products and/or licensed Genes and Interactive Proteins for so long as the
Exclusive License relating thereto remains in effect. Neither MYRIAD nor
MONSANTO nor any of their respective Affiliates shall use Confidential
Information of the other Party for any purpose whatsoever except as expressly
permitted in this Agreement.
(b) MYRIAD and MONSANTO each agree that any disclosure of the other's
Confidential Information to any officer, employee, consultant or agent of the
other Party or of any of its Affiliates shall be made only if and to the extent
necessary to carry out its responsibilities under this Agreement and shall be
limited to the maximum extent possible consistent with such responsibilities.
MYRIAD and MONSANTO each agree not to disclose the other's Confidential
Information to any Third Parties under any circumstance without written
permission from the other Party, except as required in any patent application or
patent prosecution, prosecuting or defending litigation, conducting pre-clinical
or clinical trials, or as otherwise required by law, and except as otherwise
expressly permitted by this Agreement. Each Party shall take such action, and
shall cause its Affiliates to take such action to preserve the confidentiality
of each other's Confidential Information as it would customarily take to
preserve the confidentiality of its own Confidential Information. Except as
otherwise expressly provided herein, each Party, upon the other's request, will
return or destroy (at such other Party's election) all the Confidential
Information disclosed to it by the other Party pursuant to this Agreement,
including all copies and extracts of documents, within sixty (60) days of the
request upon the termination of this Agreement; provided, that a Party may
retain Confidential Information of the other Party relating to any license or
right to use Technology which survives such termination and one copy of all
other Confidential Information may be retained in inactive archives solely for
the purpose of establishing the contents thereof. Nothing in this Article V
shall restrict any Party from using for any purpose any Confidential Information
independently developed by it during the course of the collaboration hereunder
or, with the other Party's prior written consent (which shall not be
unreasonably withheld), from using Confidential Information that is specifically
derived from pre-clinical or clinical trials to carry out marketing, sales or
professional services support functions as is customary in the pharmaceutical
industry.
(c) MYRIAD and MONSANTO each warrant that all of its employees, and
any consultants to such Party participating in the Research Program and/or the
development and commercialization of the Licensed Products who shall have access
to Confidential Information of the other Party shall be bound by agreements to
maintain such information in confidence and not to use such information except
as allowed herein.
5.2 Publication. Subject to the provisions of Sections 2.6 and 5.1 above,
-----------
results obtained in the
13
course of the Research Program may be submitted for publication and/or published
by either Party hereto or its investigators, consultants or contractors only
following full protection of all intellectual property rights in the results to
the satisfaction of the Steering Committee; provided that Steering Committee
approval shall not be required to the extent such results would not be deemed
Confidential Information; and provided further that the foregoing restrictions
shall not apply to results that have been previously submitted for publication
or published in accordance with the terms of this Agreement. Each Party hereto
shall be responsible for the compliance of its investigators, consultants and
contractors with the provisions of this Section 5.2. After full protection of
such intellectual property rights, the Steering Committee shall determine the
appropriate timing and content of any publication concerning Research Program
Technology.
5.3 Publicity Review. Subject to the further provisions of this Section
----------------
5.3, no Party shall originate any written publicity, news release, or other
announcement relating to this Agreement or to performance hereunder or
thereunder or the existence of an arrangement between the Parties (collectively,
"Written Disclosure"), without the prior prompt review and written approval of
------------------
the other, which approval shall not be unreasonably withheld or delayed.
Notwithstanding the foregoing provisions of this Section 5.3, any Party may make
any public Written Disclosure it believes in good faith, based upon the opinion
of outside counsel (which counsel shall be reasonably acceptable to the other
Party), is required by applicable law or any listing or trading agreement
concerning its publicly traded securities, provided that prior to making such
Written Disclosure, the disclosing Party shall provide the other Party with a
copy of the materials proposed to be disclosed and provide the receiving Party
with an opportunity to promptly review the proposed Written Disclosure. The
disclosing Party shall make any changes reasonably requested by the receiving
Party. To the extent that the receiving Party reasonably requests that any
information in the materials proposed to be disclosed be deleted, changed or
otherwise modified, the disclosing Party shall make any such deletions, changes
or modifications and, in the event of a request to delete information required
to be filed, request confidential treatment of such information pursuant to Rule
406 of the Securities Act of 1933 or Rule 24b-2 of the Securities Exchange Act
of 1934, as applicable (or any other applicable regulation relating to the
confidential treatment of information) so that there be omitted from the
materials that are publicly filed any information that the receiving Party
reasonably requests to be deleted. The terms of this Agreement may also be
disclosed to (i) government agencies where required by law, or (ii) Third
Parties with the prior written consent of the other Party, which consent shall
not be unreasonably withheld or delayed, so long as such disclosure is made
under an agreement of confidentiality. Once a "Disclosure" is approved, it can
be reused by either Party.
5.4 Termination of Prior Agreement. This Agreement supersedes the
------------------------------
Confidentiality Agreement between G. D. Searle, an Affiliate of MONSANTO, and
MYRIAD dated as of February 10, 1998. All information exchanged between the
Parties under that Agreement shall be deemed Confidential Information and shall
be subject to the terms of this Article V.
5.5 Use of Names. Neither Party shall use the name of the other Party in
------------
relation to this transaction in any public announcement, press release or other
public document without the written consent of such other Party, which consent
shall not be unreasonably withheld or delayed; provided, however, that either
Party may use the name of the other Party in any document filed with any
regulatory agency or authority, including the FDA and the Securities and
Exchange Commission. In addition to the foregoing, MYRIAD agrees not to use the
name "MONSANTO", "SEARLE" or the name of any of their respective Affiliates in
relation to this transaction in any press release, public announcement or other
public document without the approval of MONSANTO, which approval shall not be
unreasonably withheld or delayed.
ARTICLE VI
OWNERSHIP OF INVENTIONS; PATENT RIGHTS
--------------------------------------
6.1 Ownership.
---------
(a) Research Program Technology. MYRIAD shall have the sole and
---------------------------
exclusive ownership of all right, title and interest in and to (i) all Genes and
Interactive Proteins Discovered and/or Characterized in connection with the
Research Program, including but not limited to any fragments or mutations of
such Genes, the DNA and RNA sequences corresponding, complementary or antisense
to such Genes, any expressions of such Genes, the proteins resulting from any
such expression and any antibodies derived from such genes and (ii) any human
Diagnostic Products but only to the extent commercialized for sale to end users
(collectively, the "Research Program Technology"). MONSANTO hereby (x)
---------------------------
disclaims any right, title and interest in or to the foregoing, subject only to
the Exclusive License provided in this Agreement and (y) agrees from time to
time to execute all necessary and proper documentation and take such actions as
shall be appropriate to effect MYRIAD's ownership interest in such Research
Program Technology.
14
(b) MONSANTO Technology. MONSANTO shall have the sole and exclusive
-------------------
right, title and interest in and to any Licensed Products and any Technology
developed by MONSANTO independent of the Research Program and without the use of
Research Program Technology ("MONSANTO Technology"). MYRIAD hereby disclaims
-------------------
any right, title and interest in or to the foregoing.
6.2 Filings, Prosecution and Maintenance of Patent Rights.
-----------------------------------------------------
(a) At its sole expense, MYRIAD shall be responsible for the filing,
prosecution and maintenance of all patent applications relating to any invention
deemed patentable included in Research Program Technology; provided, however,
that with respect to those Genes and Interactive Proteins which are exclusively
licensed by MONSANTO hereunder and all Licensed Products (i) MYRIAD shall
consult and cooperate fully with MONSANTO with respect to the jurisdictions in
which patent applications will be filed (as determined by the Steering
Committee) and (ii) MONSANTO shall bear the cost of filing, prosecution and
maintenance of all patent applications outside the United States related to such
licensed Genes, Interactive Proteins and Licensed Products.
(b) At its sole expense, MONSANTO shall be responsible, after due
consultation with MYRIAD, for the filing, prosecution and maintenance of all
patent applications with respect to any other Technology arising out of the
Research Program.
6.3 Third Party Patent Rights. Except as expressly provided in Section
-------------------------
8.1, neither Party makes any warranty with respect to the validity, perfection
or dominance of any Patent or other proprietary right or with respect to the
absence of rights in Third Parties which may be infringed by the manufacture or
sale of any Licensed Product. Each Party agrees to bring to the attention of
the other Party any Patent or Patent application it discovers, or has
discovered, and which relates to the rights of either Party pursuant to this
Agreement.
6.4 Enforcement Rights.
------------------
(a) Notification of Infringement. If either Party learns of any
----------------------------
infringement or threatened infringement by a Third Party of any Research Program
Patent or MYRIAD Patent, the other Party shall promptly give written notice to
such Party and shall use its reasonable efforts to provide such Party with all
available evidence of such infringement to the extent permitted by applicable
law and contractual obligations.
(b) Enforcement.
-----------
(i) The Parties shall jointly determine the appropriate course of
action to pursue with respect to infringement of any MYRIAD Patents or
Research Program Patents covering the development, manufacture, use,
importation, sale or offer for sale of Licensed Products exclusively
licensed to MONSANTO hereunder. To the extent not recovered under Section
6.4(c), the costs of such patent enforcement shall be paid by MONSANTO
(provided that MONSANTO shall be entitled to offset one-half of such costs
against any future royalty payments to be made to MYRIAD hereunder).
MYRIAD shall have the right to join as a party plaintiff in any suit
prosecuted by MONSANTO hereunder at MYRIAD's expense and shall give
MONSANTO reasonable assistance.
(ii) Each Party shall execute all necessary and proper documents
and take such actions as shall be appropriate to allow the other Party to
institute and prosecute infringement actions in accordance with this
Section at the expense of the Party instituting any such action.
(c) Recoveries. Any recoveries with respect to patent infringement
----------
actions undertaken pursuant to Section 6.4(b)(i) shall be divided as follows:
(i) First, MONSANTO shall recover its expenses;
-----
(ii) Second, MYRIAD shall recover its expenses, if any;
------
(iii) Third, MYRIAD shall receive a percentage royalty as
-----
specified in Section 4.3 of this Agreement on any recovery received if such
infringement is related to a Licensed Product; and
(iv) Finally, MONSANTO shall retain any remaining proceeds.
-------
15
(d) Settlement with a Third Party. The Party that is pursuing any
-----------------------------
action hereunder shall have the exclusive right to control settlement of a such
action; provided, however, that no settlement shall be entered into without the
-------- -------
written consent of the other Party if such settlement would materially and
adversely affect the interests of the other Party hereunder.
6.5 Defense and Settlement of Third Party Claims.
--------------------------------------------
(a) Defense. If a Third Party asserts that a patent, trademark or
-------
other intangible right owned by it is infringed by the manufacture, use or sale
of any Licensed Product, MONSANTO will be solely responsible for defending
against any such assertions at its cost and expense; provided that if any such
Third Party claim relates to any actions taken by or on behalf of MYRIAD with
respect to MYRIAD Technology or MYRIAD Patents, or a defect in or infringement
by such MYRIAD Technology or MYRIAD Patent, MYRIAD shall be solely responsible
for defending against such claims at its sole cost and expense. The non-
defending Party shall have the right to participate in the defense of any such
Third Party action or expenses, at its own expense.
(b) Damages. Any and all expenses, damages or payments, including any
-------
royalties, owed to a Third Party with respect to a claim defended under this
Section 6.5 shall be the responsibility of MONSANTO; provided that if any such
Third Party claims relates to actions taken by or on behalf of MYRIAD with
respect to MYRIAD Technology or MYRIAD Patents, or a defect in or infringement
by such MYRIAD Technology or MYRIAD Patent, MYRIAD shall be solely responsible
for all such expenses, damages and payments.
(c) Settlement with a Third Party. MONSANTO shall have the right to
-----------------------------
control settlement of a Third Party claim; provided, however, no settlement may
be entered into without the written consent of MYRIAD if such settlement would
materially and adversely affect MYRIAD's interests pursuant to this Agreement,
which consent shall not be unreasonably withheld or delayed.
ARTICLE VII
TERM AND TERMINATION
--------------------
7.1 Term. This Agreement shall commence as of the Effective Date and
----
continue in effect until the later of (a) the end of the Research Term and the
Option Period and (b) the date on which MONSANTO is not obligated to pay a
royalty to MYRIAD, as the case may be.
7.2 Termination for Cause. This Agreement may be terminated by a Party at
---------------------
any time during the term of this Agreement as follows:
(a) with respect to obligations other than payment obligations, if the
other Party is in breach of its material obligations hereunder and has not cured
or taken steps to substantially cure such breach within ninety (90) days after
notice of the breach with reasonable detail of the particulars of the alleged
breach and, with respect to payment obligations due and owing, if MONSANTO has
not cured or taken steps to substantially cure such breach (such as the mailing
of the check therefor) within thirty (30) days after notice of the particulars
of the alleged breach;
(b) in the event substantially all of MYRIAD's assets are sold, or
greater than 50% of MYRIAD's equity securities are transferred (whether by stock
sale, merger, consolidation, reorganization, recapitalization or otherwise), to
a third party, MONSANTO shall have the right to immediately terminate this
Agreement with delivery to MYRIAD of written notice; or
(c) upon the filing or institution of bankruptcy, liquidation or
receivership proceedings, or upon an assignment of a substantial portion of the
assets for the benefit of creditors by the other Party, or in the event a
receiver or custodian is appointed for such Party's business or of a substantial
portion of such party's business is subject to attachment or similar process;
provided, however, in the case of any involuntary bankruptcy proceeding such
right to terminate shall only become effective if the Party consents to the
involuntary bankruptcy or such proceeding is not dismissed within sixty (60)
days after the filing thereof.
7.3 Effect of Termination on License.
--------------------------------
(a) In the event MYRIAD terminates this Agreement because of material
breach by MONSANTO (whether before or after the Research Term), the licenses for
commercial purposes granted to MONSANTO hereunder shall terminate (and, in
effect, automatically revert back to MYRIAD).
(b) In the event MONSANTO terminates this Agreement because of
material breach by
16
MYRIAD (whether before or after the Research Term), MONSANTO shall have the
option to either (i) continue any Exclusive License then in place in which case
the milestone and royalty obligations provided in this Agreement shall continue
in full force and effect, but at a level reduced by 50% of the applicable
amount; or (ii) convert any such Exclusive License to a non-exclusive, royalty-
free license in which case MONSANTO shall have an irrevocable paid-up, royalty-
free license for research and development purposes and for commercial purposes.
(c) In the event MONSANTO terminates this Agreement under Section
7.2(b), (i) any Exclusive Licenses then in existence shall continue in full
force and effect subject to the existing milestone and royalty obligations
provided in this Agreement and (ii) notwithstanding anything in this Agreement
to the contrary, MONSANTO shall have the right to require MYRIAD (or its
successor) to immediately return to MONSANTO or destroy, at MONSANTO's election,
all MONSANTO Information and all other information, records, results, libraries
and other materials (written, electronic or otherwise) provided to MYRIAD by
MONSANTO in connection with the Research Program or otherwise developed under or
in connection with the Research Program.
(d) In the event MONSANTO terminates this Agreement under Section
7.2(c) or this Agreement is otherwise terminated under Section 7.2(c), all
rights and licenses granted under or pursuant to this Agreement by MYRIAD to
MONSANTO are, and shall otherwise be deemed to be, for purposes of Section
365(n) of the Bankruptcy Code, licenses of rights to "intellectual property" as
defined under Section 101(52) of the Bankruptcy Code. The parties agree that
MONSANTO, as a licensee of such rights under this Agreement, shall retain and
may fully exercise all of its rights and elections under the Bankruptcy Code.
The parties further agree that, in the event of the commencement of a bankruptcy
proceeding by or against MYRIAD under the Bankruptcy Code, MONSANTO shall be
entitled to a complete duplicate of (or complete access to, as appropriate) any
such intellectual property and all embodiments of such intellectual property
upon written request therefor by MONSANTO. Such intellectual property and all
embodiments thereof shall be promptly delivered to MONSANTO (i) upon any such
commencement of a bankruptcy proceeding upon written request therefore by
MONSANTO, unless MYRIAD elects to continue to perform all of its obligations
under this Agreement or (ii) if not delivered under (i) above, upon the
rejection of this Agreement by or on behalf of MYRIAD upon written request
therefor by MONSANTO. MYRIAD shall not interfere with the rights of MONSANTO as
provided in this Agreement, or any agreement supplementary hereto, to such
intellectual property (including all such embodiments thereof), including any
right of MONSANTO to obtain such intellectual property (or such embodiment) from
any other entity.
7.4 Remedies. If either Party shall fail to perform or observe or
--------
otherwise breach in any material respect any of its material obligations under
this Agreement, in addition to any right to terminate all or any portion of this
Agreement, the non-defaulting Party may elect to obtain other relief and
remedies available under law.
7.5 Survival. Each Party shall remain liable for all obligations
--------
(including liabilities for breach of this Agreement) accruing prior to any
termination of this Agreement; provided that neither Party shall have any
obligation to make any payment to the other to the extent that it has not
accrued or is not due prior to the effective date of such termination. In
addition, the rights and obligations of the Parties pursuant to Article V, X and
XI and Sections 2.5, 2.6, 6.1, 7.3, 7.4 and 7.5 hereof shall survive any
termination of this Agreement.
ARTICLE VIII
REPRESENTATIONS AND WARRANTIES
------------------------------
8.1 Representations and Warranties.
------------------------------
(a) Each Party represents and warrants to the other Party that:
(i) Organization. It is a corporation duly organized, validly
------------
existing and in good standing under the laws of its jurisdiction of
incorporation.
(ii) Authority. It has full corporate power and authority to
---------
execute and deliver this Agreement and any other agreements and instruments
to be executed and delivered by such Party pursuant hereto and to
consummate the transactions contemplated hereby and thereby. All corporate
acts and other proceedings required to be taken to authorize such
execution, delivery and consummation have been duly and properly taken and
obtained.
(iii) Enforceability. This Agreement has been duly executed and
--------------
delivered by such Party and constitutes, and such other agreements and
instruments when duly executed and delivered by
17
such Party will constitute, legal, valid and binding obligations of such
Party enforceable against such Party in accordance with their respective
terms, subject to bankruptcy, liquidation and equitable defenses.
(iv) Approvals, Consents, Etc. No approval, authorization,
------------------------
consent or other order or action of or filing with any court,
administrative agency or other governmental authority is required for the
execution and delivery by such Party of this Agreement and the execution
and delivery by such Party of such other agreements and instruments or the
consummation by such Party of the transactions contemplated hereby or
thereby.
(v) No Conflicts. None of the execution, delivery or
------------
performance of this Agreement or the other agreements and instruments to be
executed and delivered by such Party (A) conflict with (or will conflict
with) or result in a breach under (or will result in a breach under) the
charter documents or any material contractual undertaking of such Party or
its Affiliates; or (B) conflict with (or will conflict with) or result in a
violation of (or will result in a violation of) any of the laws of the
jurisdiction of incorporation of such Party.
(vi) Title. It has good and marketable title to or valid leases
-----
or licenses for, all of its properties, rights and assets necessary for the
fulfillment of its responsibilities under this Agreement, subject to no
claim of any Third Party.
(b) MYRIAD represents and warrants to MONSANTO that as of the date of
this Agreement:
(i) unless otherwise disclosed to MONSANTO in writing as of the
date hereof, MYRIAD is the sole owner of, or the exclusive worldwide
licensee of, the MYRIAD Patents and Technology licensed to MONSANTO under
this Agreement and/or otherwise used in connection with the Research
Program, free and clear of any liens or encumbrances which would prevent or
impair the grant of such license.
(ii) MYRIAD has the right and power to enter into this Agreement
and grant the licenses granted to MONSANTO under this Agreement in the
manner set forth in this Agreement.
(iii) unless otherwise disclosed to MONSANTO in writing as of
the date hereof, MYRIAD Patents and Technology sublicensed to MONSANTO
under this Agreement are licensed to MYRIAD in a manner sufficient to
permit MYRIAD to grant the sublicenses to MONSANTO hereunder, all fees and
other payments in respect of such licenses have been duly made by MYRIAD
and MYRIAD has not breached in any material respect the terms of any such
license.
(iv) MYRIAD has not assigned or conveyed any interest in the
MYRIAD Patents or MYRIAD Technology licensed to MONSANTO under this
Agreement, or entered into any agreement or made any commitment, which is
inconsistent with or in derogation of the licenses granted to MONSANTO
hereunder.
(v) The execution, delivery and performance by MYRIAD of this
Agreement does not require the consent of any Third Party.
(vi) There are no material adverse proceedings, claims or
actions pending, or to the best of such its knowledge, threatened, relating
to the MYRIAD Technology or MYRIAD Patents as of the Effective Date of this
Agreement which would materially interfere with MYRIAD's performance of its
obligations under this Agreement. Further, MYRIAD has disclosed, and shall
disclose to MONSANTO any material adverse proceedings, claims or action
that have arisen or that may arise and come to its knowledge, relating to
such MYRIAD Technology or MYRIAD Patents, which would reasonably be
expected to materially interfere with its performance of its obligations
under this Agreement.
(vii) The MYRIAD Technology and the MYRIAD Patents comprise all
proprietary rights necessary for the conduct of the Research Program as
contemplated hereby, no loss or expiration of any MYRIAD Technology or
MYRIAD Patent is threatened, pending or reasonably foreseeable, MYRIAD has
not received any notices of, nor is MYRIAD aware of any facts which
indicate a likelihood of, any infringement or misappropriation by, or
conflict with, any Third Party with respect to any MYRIAD Technology or
MYRIAD Patent including, without limitation, any demand or request that
MYRIAD license rights from a Third Party which demand or request would
reasonably be expected to materially interfere with MYRIAD's performance of
its obligations under this Agreement. MYRIAD has not
18
infringed, misappropriated or otherwise conflicted with any rights of any
Third Parties and MYRIAD is not aware of any infringement, misappropriation
or conflict which shall occur as a result of the conduct of the Research
Program as contemplated hereby, and to MYRIAD's knowledge, the MYRIAD
Technology and MYRIAD Patents owned or licensed to MYRIAD have not been
infringed, misappropriated or conflicted by any Third Party.
ARTICLE IX
INDEMNIFICATION
---------------
9.1 Indemnification of MYRIAD by MONSANTO. MONSANTO shall indemnify,
-------------------------------------
defend and hold harmless MYRIAD and its affiliates and subcontractors, and their
respective stockholders, directors, officers, employees, and agents and their
respective successors, heirs and assigns (the "MYRIAD Indemnitees"), against any
------------------
liability, damage, loss, settlement, cost or expense (including reasonable
attorneys' fees and expenses of litigation) ("Losses") incurred by or imposed
------
upon the MYRIAD Indemnitees, or any one of them, in connection with any claims,
suits, actions, administrative proceedings, demands or judgments of third
parties ("Claims"), including without limitation personal injury and product
------
liability matters (except in cases where such Claims result from a material
breach of this Agreement or negligence or willful misconduct on the part of
MYRIAD or from or relating to any actions taken by or on behalf of MYRIAD with
respect to MYRIAD Technology or MYRIAD Patents, or a defect in or infringement
by such MYRIAD Technology or MYRIAD Patents), arising out of or related to (a)
any actions of MONSANTO and its directors, officers, employees and agents and
their respective successors, heirs and assigns in the performance of the
Research Program, (b) the production, manufacture, promotion, sale or use by any
person of any Licensed Product which is manufactured or sold by MONSANTO or by
an Affiliate, sublicensee, distributor or agent of MONSANTO (other than MYRIAD
or any Affiliate of MYRIAD's), (c) MONSANTO Baits or other materials provided by
MONSANTO to MYRIAD in connection with the Research Program, or (d) the breach by
MONSANTO of any provision of this Agreement.
9.2 Indemnification of MONSANTO by MYRIAD. MYRIAD shall indemnify,
-------------------------------------
defend and hold harmless MONSANTO and its affiliates and subcontractors, and
their respective stockholders, directors, officers, employees, and agents and
their respective successors, heirs and assigns (the "MONSANTO Indemnitees"),
--------------------
against any Losses incurred by or imposed upon the MONSANTO Indemnitees, or any
one of them, in connection with any Claims, including without limitation claims
of suppliers and MYRIAD employees in the case of clause (a) below and personal
injury and product liability matters in the case of clause (b) below (except in
cases where such Claims result from a material breach of this Agreement or
negligence or willful misconduct on the part of MONSANTO or from or relating to
any actions taken by or on behalf of MONSANTO with respect to MONSANTO
Technology or MONSANTO Patents, or a defect in or infringement by such MONSANTO
Technology or MONSANTO Patents), arising out of or related to (a) any actions of
MYRIAD and its directors, officers, employees and agents and their respective
successors, heirs and assigns in the performance of the Research Program, (b)
the production, manufacture, promotion, sale or use by any person of any
Discontinued Product which is manufactured or sold by MYRIAD or an Affiliate,
sublicensee, distributor or agent of MYRIAD (other than MONSANTO or any
Affiliate of MONSANTO), (c) MYRIAD Technology or MYRIAD Patents or (d) the
breach by MYRIAD of any provision of this Agreement.
9.3 Notice, Etc. Each Indemnitee agrees to give the indemnifying Party
-----------
prompt written notice of any Claim, for which such Indemnitee intends to assert
a right to indemnification under this Agreement; provided, however, that failure
to give such notification shall not affect the Indemnitee's entitlement to
indemnification hereunder except to the extent that the indemnifying Party shall
have been prejudiced as a result of such failure. The indemnifying Party shall
have the sole right (but not the obligation) to defend, settle or otherwise
dispose of any Claim for which the Indemnitee intends to assert a right to
indemnification under this Agreement as contemplated in the preceding sentence
on such terms as the indemnifying Party, in its sole discretion, shall deem
appropriate if and so long as the indemnifying Party has recognized in a written
notice to the Indemnitee its obligation to indemnify the Indemnitee for any
Losses relating to such Claim, and at the indemnifying party's option (subject
to the limitations set forth below) shall be entitled to appoint lead counsel of
such defense with a nationally recognized reputable counsel acceptable to the
Indemnitee; provided, that the indemnifying party shall not have the right to
assume control of such defense and shall pay the fees and expenses of counsel
retained by the Indemnitee, if the claim which the indemnifying party seeks to
assume control (i) seeks non-monetary relief, (ii) involves criminal or quasi-
criminal allegations, (iii) involves a claim to which the Indemnitee reasonably
believes an adverse determination would be detrimental to or injure the
Indemnitee's reputation or future business prospects, or (iv) involves a claim
which, upon petition by the Indemnitee, the appropriate court rules that the
indemnifying party failed or is failing to vigorously prosecute or defend. If
the indemnifying party is permitted to assume and control the defense and elects
to do so, the Indemnitee shall have the right to employ counsel separate from
counsel employed by the indemnifying party in any such action and to participate
in the defense thereof, but the fees and
19
expenses of such counsel employed by the Indemnitee shall be at the expense of
the Indemnitee unless (i) the employment thereof has been specifically
authorized by the indemnifying party in writing, or (ii) the indemnifying party
has been advised by counsel that a reasonable likelihood exists of a conflict of
interest between the indemnifying party and the Indemnitee. If the Indemnifying
Party shall control the defense of any such claim, the indemnifying Party shall
obtain the written consent of the Indemnitee prior to ceasing to defend,
settling or otherwise disposing of any Claim if as a result thereof the
Indemnitee would become subject to injunctive or other equitable relief that
could reasonably be expected to have a material adverse effect on the business
of the Indemnitee in any nonmonetary manner.
ARTICLE X
DISPUTE RESOLUTION
------------------
10.1 Senior Officials. The Parties recognize that a bona fide dispute as
----------------
to certain matters may from time to time arise during the term of this Agreement
which relate to either Party's rights and/or obligations hereunder or
thereunder. It is the objective of the Parties to establish procedures to
facilitate the resolution of disputes arising under this Agreement in an
expedient manner by mutual cooperation. To accomplish this objective, the
Parties agree to follow the procedures set forth in this Article X if and when a
dispute arises under this Agreement. In the event of the occurrence of such a
dispute, either Party may, by notice to the other Party, have such dispute
referred to their respective senior officials designated below or their
successors, for attempted resolution by good faith negotiations within thirty
(30) days after such notice is received. Said designated senior officials are as
follows:
For MONSANTO: Head of Pharmaceutical Research and Development,
Monsanto Company, or designee thereof
For MYRIAD: President, Myriad Genetics, Inc.
In the event the designated senior officials are not able to resolve
such dispute within the thirty (30) day period, such dispute will be submitted
to arbitration in accordance with Section 10.2 hereunder.
10.2 Arbitration. In the event that the parties cannot resolve any
------------
dispute hereunder as set forth above, the Parties shall submit the matter to
arbitration as provided herein. Binding arbitration shall be conducted in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association. The arbitration panel shall be composed of three arbitrators, one
of whom shall be chosen by MONSANTO, one by MYRIAD and the third by the two so
chosen. If both or either of MYRIAD or MONSANTO fails to choose an arbitrator
or arbitrators within fourteen (14) days after receiving notice of commencement
of arbitration or if the two arbitrators fail to choose a third arbitrator
within fourteen (14) days after their appointment, then the President of the New
York office of the American Arbitration Association shall, upon the request of
both or either of the parties to the arbitration, appoint the arbitrator or
arbitrators required to complete the board or, if he shall decline or fail to do
so, such arbitrator or arbitrators shall be appointed by the Boston office of
the American Arbitration Association.
(a) Within ten (10) days of the appointment of the full arbitration
panel, the Parties shall exchange documents setting forth their final detailed
proposals for resolution of the matter in dispute, together with a brief or
other written memorandum supporting the merits of their final proposal. The
arbitration panel shall promptly convene a hearing in (Boston, Massachusetts),
at which time each Party shall have an agreed upon time to argue and present
witnesses in support of its final proposal.
(b) The arbitration panel shall select the proposal which most closely
reflects a commercially reasonable interpretation of the terms of this Agreement
as the way to resolve the matter. In making their selection, the arbitrators
shall not modify the terms or conditions of either Party's final proposal nor
shall the arbitrators combine provisions from both final proposals. In making
their selection, the arbitrators shall consider the terms and conditions of this
Agreement, the relative merits of the final proposals, and the written and oral
arguments of the Parties. In the event the arbitrators seek the guidance of the
law of any jurisdiction, the law of the State of Delaware shall govern.
(c) The arbitrators shall make their decision known to both Parties as
quickly as possible by delivering written notice of their decision to both
Parties. The Parties shall agree in writing to comply with the proposal selected
by the arbitration panel within five (5) days of receipt of such selection. The
decision of the arbitrators shall be final and binding on the Parties, and
specific performance may be ordered by any court of competent jurisdiction.
20
(d) The Parties shall bear their own costs in preparing for the
arbitration and the costs of the arbitrators shall be equally divided between
the Parties; provided that the arbitrators shall be entitled to award costs to
the successful Party.
ARTICLE XI
MISCELLANEOUS
-------------
11.1 No Agency. Nothing contained in this Agreement or the other
---------
agreements and instruments to be executed and delivered by the Parties hereto
shall be deemed to constitute MYRIAD or any of its Affiliates as agent or
representative of MONSANTO for any purpose, or constitute MONSANTO or any of its
Affiliates as agent or representative of MYRIAD for any purpose. The status of
each of the Parties hereto with respect to the transactions contemplated by this
Agreement is that of an independent contracting party acting for its own
account.
11.2 Expenses. Except as otherwise specifically provided in this
--------
Agreement, each Party will pay its own expenses incident to this Agreement and
the transactions contemplated hereby, including legal and other fees and
disbursements.
11.3 Binding Effect. This Agreement shall be binding upon and inure to
--------------
the benefit of each Party and its successors and permitted assigns upon the
execution thereof by the Parties.
11.4 Notices. Notices hereunder shall be in writing and shall be
-------
delivered by telecopier, telex, international cable, air courier or air mail,
postage prepaid, as follows:
To MONSANTO: MONSANTO Company
700 Chesterfield Parkway North
St. Louis, Missouri 63198
Telecopier: (314) 694-9009
Attention: Legal Department
To MYRIAD: Myriad Genetics, Inc.
320 Wakara Way
Salt Lake City, UT 84108
Telecopier: (801) 584-3640
Attention: President
With a copy to: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
Telecopier: (617) 542-2241
Attention: Jonathan Kravetz, Esq.
Either Party may designate any other address for notices hereunder by written
notice to the other Party given in accordance with this Section 11.4 at least
ten (10) days prior to the effective date of such change. Notices shall be
deemed given: (i) when delivered, in the case of personal delivery; or (ii) on
the date transmitted, in the case of a telecopy, as evidenced by a dated
confirmation report generated by the sending telecopy machine indicating
successful transmission to the recipient's telecopier number.
11.5 Severability. If any term or other provision of this Agreement is
------------
invalid, illegal or incapable of being enforced by any rule of law or public
policy, all other conditions and provisions of this Agreement shall nevertheless
remain in full force and effect so long as the economic or legal substance of
the transactions contemplated hereby is not affected in any manner adverse to
either Party. Upon such determination that any term or other provision hereof
is invalid, illegal or incapable of being enforced, the Parties hereto shall
negotiate in good faith to modify this Agreement so as to effect the original
intent of the Parties as closely as possible in an acceptable manner to the
extent that the transactions contemplated hereby are fulfilled to the extent
possible.
11.6 Cooperation. The Parties shall cooperate with one another in signing
-----------
such documents and instruments and taking such other reasonable and lawful
action as may be necessary or appropriate in performing and carrying out the
terms of this Agreement.
21
11.7 Amendments and Waivers. The Parties hereto may, by written agreement
----------------------
signed by each Party, modify any of the covenants or agreements or extend the
time for the performance of any of the obligations contained in this Agreement.
Any Party hereto may waive, by written instrument signed by such Party, any
inaccuracies in the representations and warranties of the other Party or
compliance by another Party with any of its obligations contained in this
Agreement. This Agreement may be amended only by written instrument signed by
the Parties hereto and any waiver relating to this Agreement must be in writing
signed by the Party granting such waiver.
11.8 Counterparts. This Agreement may be executed in two or more
------------
counterparts, each of which shall be deemed to be an original, but all of which
together shall constitute one and the same instrument.
11.9 Entire Agreement. This Agreement, together with the exhibits hereto
----------------
and thereto, and the agreements and instruments delivered pursuant hereto and
thereto, contain the entire agreement between the Parties hereto, and supersede
all prior agreements and undertakings between the Parties hereto relating to the
subject matter hereof and thereof. No representation or warranty shall be
deemed to have been made herein except for those representations and warranties
expressly made herein.
11.10 Headings. The section headings contained in this Agreement are
--------
included for convenience only and form no part of the agreement between the
Parties.
11.11 Assignment and Successors. This Agreement may not be assigned by
-------------------------
either Party, except that each Party may assign this Agreement and the rights,
obligations and interests of such Party, in whole or in part, to any of its
Affiliates, to any purchaser of all or substantially all of its assets or to any
successor corporation resulting from any merger or consolidation of such Party
with or into such corporations or any Affiliate thereof.
11.12 Force Majeure. Neither MONSANTO nor MYRIAD shall be liable for
-------------
failure of or delay in performing obligations set forth in this Agreement, and
neither shall be deemed in breach of its obligations, if such failure or delay
is due to natural disasters or any causes beyond the reasonable control of
MONSANTO or MYRIAD. In event of such force majeure, the Party affected thereby
shall use reasonable efforts to cure or overcome the same and resume performance
of its obligations hereunder.
11.13 Parties in Interest. Except as provided herein, nothing in this
-------------------
Agreement, express or implied, is intended to confer on any person or entity
other than the Parties hereto and their respective permitted sublicensees and
assignees any rights or remedies under or by virtue of this Agreement, and no
person or entity shall assert any rights as a Third Party beneficiary hereunder.
11.14 Governing Law. This Agreement shall be governed by and construed in
-------------
accordance with the laws of the State of Delaware without regard to Delaware's
choice of law provisions.
11.15 Further Assurances. The Parties agree to duly execute and deliver,
------------------
or cause to be duly executed and delivered, such further instruments and do and
cause to be done such further acts and things, including, without limitation,
the filing of such additional assignments, agreements, documents and
instruments, that may be necessary or as any other party hereto may at any time
and from time to time reasonably request in connection with this Agreement to
carry out more effectively the provisions and purposes of, or to better assure
and confirm unto such other party its rights and remedies under, this Agreement.
11.16 Bankruptcy. All rights and licenses granted under or pursuant to
----------
this Agreement are, and shall otherwise be, deemed to be, for purposes of
Section 365(n) of the U.S. Bankruptcy Code, licenses of rights to "intellectual
property" as defined under Section 101(52) of the U.S. Bankruptcy Code. The
Parties to this Agreement shall retain and may fully exercise all of their
respective rights and elections under the U.S. Bankruptcy Code. The Parties
further agree that, in the event of the commencement of bankruptcy proceeding by
or against a party licensor under the U.S. Bankruptcy Code, the licensee shall
be entitled to a complete duplicate of (or complete access to, as appropriate)
any such intellectual property and all embodiments of such intellectual
property, and same, if not already in its possession, shall be promptly
delivered to the licensee (a) upon any such commencement of a bankruptcy
proceeding upon written request therefor by the licensee, unless the licensor
elects to continue to perform all of its obligations under this Agreement, or
(b) if not delivered under (a) above, upon the rejection of the Agreement by or
on behalf of the licensor upon written request therefor by the licensee,
provided, however, that upon the licensor's (or its successor's) written
notification to the licensee that it is again willing and able to perform all of
its obligations under this Agreement, the licensee shall promptly return all
such tangible materials to the licensor, but only to the extent that the
licensee does not require continued access to such materials to enable the
licensee to perform its obligations under this Agreement.
22
* * * * *
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed on its behalf by its duly authorized representative.
MONSANTO COMPANY
By: /s/ Philip Needleman, Ph.D.
-----------------------------------------
Name: Philip Needleman, Ph.D.
----------------------------------------
Title: President, Searle
---------------------------------------
MYRIAD GENETICS, INC.
By: /s/ Peter D. Meldrum
------------------------------------------
Name: Peter D. Meldrum
----------------------------------------
Title: President & C.E.O.
---------------------------------------
23