EXHIBIT 2.1
CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
ASSIGNMENT AND LICENSE AGREEMENT
BY AND BETWEEN
WYETH HOLDINGS CORPORATION
AND
NEUROCRINE BIOSCIENCES, INC.
FEBRUARY 26, 2004
TABLE OF CONTENTS
PAGE
----
1. DEFINITIONS............................................................... 2
1.1 "Affiliate"......................................................... 2
1.2 "Amended and Restated License Agreement"............................ 2
1.3 "Assignment and Assumption Agreement"............................... 2
1.4 "Closing"........................................................... 2
1.5 "Closing Date"...................................................... 2
1.6 "Compound".......................................................... 2
1.7 "Compound License Agreement"........................................ 2
1.8 "Compound Patent"................................................... 3
1.9 "Confidential Information".......................................... 3
1.10 "Control" or "Controlled"........................................... 3
1.11 "Effective Date".................................................... 3
1.12 "HSR Act"........................................................... 3
1.13 "HSR Filing"........................................................ 3
1.14 "HSR Clearance Date"................................................ 3
1.15 "Neurocrine Sublicense Agreement"................................... 3
1.16 "Original License Agreement"........................................ 3
1.17 "Pfizer Collaboration Agreement".................................... 4
1.18 "Pfizer Sublicense Agreement"....................................... 4
1.19 "Share Price"....................................................... 4
1.20 "Stock Purchase Agreement".......................................... 4
1.21 "Territory"......................................................... 4
1.22 "Third Party"....................................................... 4
1.23 "Wyeth Intellectual Property"....................................... 4
1.24 "2002 Consent Agreement"............................................ 4
1.25 "2004 Consent Agreement"............................................ 4
2. ASSIGNMENT OF RIGHTS...................................................... 5
2.1 Assignment.......................................................... 5
2.2 Assumption.......................................................... 5
2.3 No Continuing Obligations........................................... 5
Assignment and Assumption Agreement.......................................... 6
3. LICENSES.................................................................. 6
3.1 Exclusive License................................................... 6
3.2 Retained Rights; No Implied Licenses................................ 6
3.3 Sublicensing........................................................ 6
3.4 Section 365(n) of the Bankruptcy Code............................... 7
4. CONSIDERATION............................................................. 7
4.1 Cash Payments....................................................... 7
4.2 Equity Payment...................................................... 7
4.3 No Other Payments................................................... 8
4.4 Taxes and Withholding............................................... 8
Page i
5. THE CLOSING............................................................... 8
5.1 Closing Date........................................................ 8
5.2 Deliveries by Neurocrine............................................ 8
5.3 Deliveries by Wyeth................................................. 9
6. CONDITIONS and covenants.................................................. 10
6.1 Conditions to Obligations of Each Party............................. 10
6.2 Conditions to Obligations of Wyeth.................................. 10
6.3 Conditions to Obligations of Neurocrine............................. 11
6.4 Covenants........................................................... 11
7. REPRESENTATIONS AND WARRANTIES............................................ 11
7.1 Representations and Warranties of Each Party........................ 11
7.2 Additional Representations and Warranties of Wyeth.................. 12
7.3 Additional Representations and Warranties by Neurocrine............. 14
7.4 Representation by Legal Counsel..................................... 15
7.5 No Inconsistent Agreements.......................................... 15
8. CONFIDENTIALITY........................................................... 15
8.1 Non-Disclosure and Use Restrictions................................. 15
8.2 SEC Filings......................................................... 16
8.3 Public Statements................................................... 16
9. TERM AND TERMINATION...................................................... 16
9.1 Government Approvals................................................ 16
9.1.1 HSR Filing.................................................... 16
9.1.2 Other Government Approvals.................................... 17
9.2 Termination by Mutual Agreement..................................... 17
9.3 Termination for Cause............................................... 17
9.4 Effects of Termination.............................................. 17
10. INDEMNIFICATION AND INSURANCE............................................. 18
10.1 Indemnification by Neurocrine....................................... 18
10.2 Indemnification by Wyeth............................................ 19
10.3 Procedure........................................................... 19
10.4 Insurance........................................................... 20
10.5 Limitation.......................................................... 20
11. MISCELLANEOUS............................................................. 20
11.1 Assignment.......................................................... 20
11.2 Further Actions..................................................... 21
11.3 Notices............................................................. 21
11.4 Amendment........................................................... 22
11.5 Waiver.............................................................. 22
11.6 Severability........................................................ 22
11.7 Descriptive Headings................................................ 22
11.8 Governing Law; Dispute Resolution................................... 22
11.9 Entire Agreement of the Parties..................................... 23
11.10 Independent Contractors.......................................... 23
11.11 Counterparts..................................................... 24
Exhibit 1.7 Form of Compound License Agreement
Page ii
Exhibit 1.20 Form of Stock Purchase Agreement
Exhibit 1.23 Wyeth Patents
Exhibit 2.1 Form of Assignment and Assumption Agreement
Exhibit 2.4 Form of Patent Assignment
Exhibit 8.3 Press Release
Page iii
ASSIGNMENT AND LICENSE AGREEMENT
This Assignment and License Agreement (the "Agreement") is entered into
on this 26th day of February, 2004 (the "Signature Date") by and between Wyeth
Holdings Corporation (formerly known as "American Cyanamid Company"), a Maine
corporation, having a place of business at 5 Giralda Farms, Madison, New Jersey
07940 (hereinafter "Wyeth") and Neurocrine Biosciences, Inc., a Delaware
corporation, having a place of business at 10555 Science Center Drive, San
Diego, California 92121 (hereinafter, "Neurocrine"). Wyeth and Neurocrine may
each be referred to herein individually as a "Party" and collectively as the
"Parties".
WHEREAS, Wyeth and DOV Pharmaceutical, Inc. (hereinafter "DOV") entered
into that certain license agreement, dated May 28, 1998 (hereinafter, the
"Original License Agreement"), pursuant to which Wyeth, inter alia, granted to
DOV an exclusive license, under certain patent rights and know-how, with respect
to several compounds, including the Compound (as defined below);
WHEREAS, DOV and Neurocrine entered into a Sublicense and Development
Agreement dated June 30, 1998 (as amended from time to time, the "Neurocrine
Sublicense Agreement"), pursuant to which DOV sublicensed to Neurocrine the
rights relating to the Compound licensed to DOV under the Original License
Agreement;
WHEREAS, Neurocrine and Pfizer, Inc. (hereinafter, "Pfizer") entered
into (i) that certain license agreement dated December 18, 2002 (as amended from
time to time, the "Pfizer Sublicense Agreement") pursuant to which Neurocrine,
inter alia, sublicensed to Pfizer the rights relating to the Compound licensed
to Neurocrine under the Neurocrine Sublicense Agreement and (ii) that certain
collaboration agreement dated December 18, 2002 (as amended from time to time,
the "Pfizer Collaboration Agreement") pursuant to which Neurocrine and Pfizer,
inter alia, will copromote the Compound in the United States;
WHEREAS, Wyeth, DOV and Neurocrine entered into that certain Consent
and Agreement dated December 13, 2002 (the "2002 Consent Agreement") in order to
facilitate the grant by Neurocrine to Pfizer of certain rights under the Pfizer
Sublicense Agreement;
WHEREAS, Neurocrine now desires to obtain from Wyeth and Wyeth now
desires to grant to Neurocrine: (i) an assignment of (x) all of Wyeth's rights
and obligations under the Compound License Agreement (as defined below), and (y)
Wyeth's rights and obligations under the 2002 Consent Agreement to the extent
such rights and obligations relate to the Compound and (z) the Compound Patent
(as defined below) and (ii) an exclusive license under the Wyeth Intellectual
Property (as defined below), to make, have made, use and sell the Compound
(which license rights are subject to the rights and licenses granted to DOV
under the Compound License Agreement);
Page 1 of 24
WHEREAS, on or before the Closing (as defined below), Wyeth and DOV
will enter into: (i) an amended and restated license agreement, pursuant to
which the Original License Agreement will be amended to delete therefrom all
rights and obligations of each of Wyeth and DOV with respect to the Compound
(the "Amended and Restated License Agreement"), and (ii) the Compound License
Agreement, setting forth the rights and obligations of each of Wyeth and DOV
solely as they relate to the Compound; and
WHEREAS, Wyeth, DOV and Neurocrine entered into that certain Consent
Agreement and Amendment, dated February 25, 2004 (the "2004 Consent Agreement")
pursuant to which, inter alia, DOV has provided its consent for Wyeth to enter
into and perform this Agreement.
NOW THEREFORE, in consideration of the foregoing premises and the
promises, mutual covenants and obligations set forth below, and other good and
valuable consideration, the Parties agree as follows:
1. DEFINITIONS.
1.1 "AFFILIATE" shall mean, with respect to any person or entity,
any other person or entity which controls, is controlled by or
is under common control with such person or entity. A person
or entity shall be regarded as in control of another entity if
it owns or controls at least fifty percent (50%) of the equity
securities of the subject entity entitled to vote in the
election of directors (or, in the case of an entity that is
not a corporation, for the election of the corresponding
managing authority), provided, however, that the term
"Affiliate" shall not include subsidiaries or other entities
in which a Party or its Affiliates owns a majority of the
ordinary voting power necessary to elect a majority of the
board of directors or other governing board, but is restricted
from electing such majority by contract or otherwise, until
such time as such restrictions are no longer in effect.
1.2 "AMENDED AND RESTATED LICENSE AGREEMENT" shall have the
meaning set forth in the preamble of this Agreement.
1.3 "ASSIGNMENT AND ASSUMPTION AGREEMENT" shall have the meaning
set forth in Section 2.1 hereof.
1.4 "CLOSING" shall have the meaning set forth in Section 5.1
hereof.
1.5 "CLOSING DATE" shall have the meaning set forth in Section 5.1
hereof.
1.6 "COMPOUND" shall mean the chemical compound identified in the
License Agreement as CL 285,489, which compound is also known
as indiplon.
1.7 "COMPOUND LICENSE AGREEMENT" shall mean the license agreement
Page 2 of 24
relating solely to the Compound, which license agreement is to
be entered into by and between Wyeth and DOV upon their
amendment and restatement of the Original License Agreement as
described above in the preamble to this Agreement. The
Compound License Agreement shall be in the form attached
hereto as Exhibit 1.7.
1.8 "COMPOUND PATENT" shall mean United States Patent 6,399,621
granted on June 4, 2002, which patent claims the Compound.
1.9 "CONFIDENTIAL INFORMATION" shall mean, with respect to a
Party, all non-public proprietary data or information that is
disclosed by such Party to the other Party in connection with
this Agreement or information designated as "Confidential
Information" of such Party hereunder.
1.10 "CONTROL" OR "CONTROLLED" shall mean, with respect to any (a)
item of information or know-how, or (b) intellectual property
right, the possession (whether by ownership or license, other
than pursuant to this Agreement) by a Party of the ability to
grant to the other Party access and/or a license as provided
herein under such item or right without violating the terms of
any agreement with any Third Party existing as of the date
such Party is obligated under this Agreement to grant such
access and/or license.
1.11 "EFFECTIVE DATE" shall mean, upon completion of the Closing,
the Closing Date.
1.12 "HSR ACT" shall mean the Hart-Scott-Rodino Antitrust
Improvements Act of 1976, as amended, and the rules and
regulations promulgated thereunder.
1.13 "HSR FILING" shall mean filings by Wyeth and Neurocrine with
the United States Federal Trade Commission and the Antitrust
Division of the United States Department of Justice of a
Notification and Report Form for Certain Mergers and
Acquisitions (as that term is defined in the HSR Act) with
respect to the matters set forth in this Agreement and in the
Stock Purchase Agreement, as applicable, together with all
required documentary attachments thereto.
1.14 "HSR CLEARANCE DATE" shall mean the earliest date on which the
Parties have actual knowledge that all applicable waiting
periods under the HSR Act with respect to the transactions
contemplated hereunder have expired or have been terminated.
1.15 "NEUROCRINE SUBLICENSE AGREEMENT" shall have the meaning set
forth above in the preamble of this Agreement.
1.16 "ORIGINAL LICENSE AGREEMENT" shall have the meaning set forth
above in
Page 3 of 24
the preamble of this Agreement.
1.17 "PFIZER COLLABORATION AGREEMENT" shall have the meaning set
forth above in the preamble of this Agreement.
1.18 "PFIZER SUBLICENSE AGREEMENT" shall have the meaning set forth
above in the preamble of this Agreement.
1.19 "SHARE PRICE" shall mean the price per share for common stock
of Neurocrine calculated in accordance with the Stock Purchase
Agreement.
1.20 "STOCK PURCHASE AGREEMENT" shall mean that certain stock
purchase agreement to be entered into by Neurocrine and Wyeth
(or one of Wyeth's Affiliates designated by Wyeth) on the
Closing Date, which agreement shall be in the form attached
hereto as Exhibit 1.20.
1.21 "TERRITORY" shall mean all countries of the world.
1.22 "THIRD PARTY" shall mean any person or entity other than
Wyeth, Neurocrine or any of their respective Affiliates.
1.23 "WYETH INTELLECTUAL PROPERTY" shall mean (a) that Wyeth
know-how consisting of all information, patentable or
otherwise, developed, applied, or acquired by Wyeth as of
[***] relating to the production or development of the
Compound, which information is reasonably useful or necessary
to develop or manufacture the Compound and (b) those patents
and patent applications Controlled by Wyeth that claim the
Compound or the manufacture or use thereof, which patents and
patent applications are listed on Exhibit 1.23 attached
hereto, and including all continuations,
continuations-in-part, divisionals, re-issues,
re-examinations, extensions, substitutions, patents of
addition, and supplementary certificates (or equivalents
thereof) of any such patents and patent applications and all
foreign counterparts thereof, in each case, only to the extent
that they claim or would otherwise be infringed by the
manufacture, use or sale of the Compound, provided, however,
that the Wyeth Intellectual Property shall not include the
Compound Patent. [***]
1.24 "2002 CONSENT AGREEMENT" shall have the meaning set forth in
the preamble of this Agreement.
1.25 "2004 CONSENT AGREEMENT" shall have the meaning set forth in
the preamble of this Agreement.
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
Page 4 of 24
2. ASSIGNMENT OF RIGHTS.
2.1 ASSIGNMENT. Subject to the terms and conditions set forth in
this Agreement, and in consideration for the payment to be
made by Neurocrine to Wyeth under Section 4.1 hereof and the
transactions contemplated by the Stock Purchase Agreement in
accordance with Section 4.2 hereof, Wyeth hereby agrees to
assign, and shall assign at the Closing, to Neurocrine: (i)
all of Wyeth's rights and obligations under the Compound
License Agreement, and (ii) Wyeth's rights and obligations
under the 2002 Consent Agreement only to the extent such
rights and obligations relate to the Compound, and (iii) all
of Wyeth's right, title and interest in and to the Compound
Patent (all of which rights being so assigned are subject to
the rights and licenses granted to DOV under the Compound
License Agreement and granted to Neurocrine, DOV and
Neurocrine's sublicensee under the 2002 Consent Agreement).
Such assignments shall be contingent upon and become effective
only upon completion of the Closing and shall be made pursuant
to the Assignment and Assumption Agreement substantially in
the form attached hereto as Exhibit 2.1, to be executed and
delivered by the Parties and DOV at the Closing (the
"Assignment and Assumption Agreement").
2.2 ASSUMPTION. Subject to the terms and conditions set forth in
this Agreement, Neurocrine hereby agrees to assume: (i) all of
Wyeth's rights and obligations under the Compound License
Agreement, and (ii) Wyeth's rights and obligations under the
2002 Consent Agreement only to the extent such rights and
obligations relate to the Compound. Additionally, Neurocrine
as of the Closing and thereafter shall have the sole and
exclusive right, at its own expense, for the continued
maintenance and enforcement of the Compound Patent, subject
only to the obligations so assumed by Neurocrine and the
rights and licenses granted to DOV under the Compound License
Agreement. Neurocrine's assumption of such rights and
obligations shall be contingent upon and become effective only
upon completion of the Closing and shall be made pursuant to
the Assignment and Assumption Agreement.
2.3 NO CONTINUING OBLIGATIONS. Neurocrine agrees that, upon
completion of the Closing and thereafter, Wyeth shall have no
further or continuing rights or obligations (a) with respect
to the Compound Patent, (b) under the Compound License
Agreement, or (c) under the 2002 Consent Agreement, to the
extent that any such obligations relate solely to the
Compound. Notwithstanding the foregoing, Wyeth agrees that it
will at all times remain obligated under the 2002 Consent
Agreement as and only to the extent that Wyeth is and remains
the owner and licensor (to Neurocrine, DOV or Neurocrine's
Approved Sublicensee) of the Wyeth Know-How and Wyeth Patents
(as such terms are defined in the Compound License Agreement,
but not including the Compound Patent).
Page 5 of 24
2.4 ASSIGNMENT AND ASSUMPTION AGREEMENT. On the Effective Date or
such later date as may be mutually agreed to by the Parties,
Wyeth, after having received the payment due from Neurocrine
under Section 4.1 and the shares of Neurocrine common stock
and payments to be transferred and delivered to Wyeth in
accordance with Section 4.2 hereof and the Stock Purchase
Agreement, shall execute and deliver to Neurocrine the
Assignment and Assumption Agreement. Additionally, at such
time, Wyeth shall execute and deliver to Neurocrine the Patent
Assignment, substantially in the form attached hereto as
Exhibit 2.4 (the "Patent Assignment") and such other documents
that Neurocrine may reasonably require in order to record the
assignment to Neurocrine of the Compound Patent in the U.S.
Patent Office and/or any foreign patent office and to record
the assignment to Neurocrine of the Compound License Agreement
and/or the 2002 Consent Agreement in any governmental office
and/or as otherwise necessary or useful to perfect the rights
being assigned to Neurocrine hereunder.
3. LICENSES.
3.1 EXCLUSIVE LICENSE. Effective as of, and only upon, the
completion of the Closing, Wyeth hereby grants to Neurocrine
an exclusive, fully-paid, royalty free, perpetual, irrevocable
license under the Wyeth Intellectual Property, solely to make,
have made, use, import, offer for sale and/or sell
pharmaceutical products containing the Compound in the
Territory subject to the licenses granted to DOV pursuant to
the Compound License Agreement.
3.2 RETAINED RIGHTS; NO IMPLIED LICENSES. Except for the license
expressly granted to Neurocrine in Section 3.1 above, Wyeth
retains all right, title and interest under the Wyeth
Intellectual Property and shall have the right to practice and
use the Wyeth Intellectual Property for any purpose without
any obligation to Neurocrine, subject to the rights and
licenses granted by Wyeth to DOV under the Compound License
Agreement and by Wyeth to DOV, Neurocrine and/or Neurocrine's
sublicensee under the 2002 Consent Agreement. The Parties
expressly agree that, under this Agreement, Neurocrine shall
have no right, title or interest, either express or implied,
in or to any patent, patent application or other intellectual
property right owned or controlled by Wyeth or any of Wyeth's
Affiliates, except for the license rights expressly granted in
Section 3.1 above.
3.3 SUBLICENSING. Subject to and to the extent not in
contravention of the rights and licenses granted to DOV under
the Compound License Agreement, Neurocrine may grant to one or
more Third Parties sublicenses of the rights granted to it
under Section 3.1 hereof at any time. Each such sublicense
shall be subject and subordinate to, and consistent with, the
terms and conditions of this Agreement, and shall provide that
any such sublicensee shall not further sublicense except on
terms
Page 6 of 24
consistent with this Section 3.3. Neurocrine shall provide
Wyeth with a copy of any sublicense granted pursuant to this
Section 3.3 within thirty (30) days after the execution
thereof. Neurocrine shall remain responsible for the
performance of its sublicensees, and shall ensure that any
such sublicensees comply with the relevant provisions of this
Agreement.
3.4 SECTION 365(n) OF THE BANKRUPTCY CODE. All rights and licenses
granted under or pursuant to any Section of this Agreement
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 (35A) of
the Bankruptcy Code. The Parties shall retain and may fully
exercise all of their respective rights and elections under
the Bankruptcy Code.
4. CONSIDERATION.
4.1 CASH PAYMENTS. In partial consideration for the rights and
obligations assigned to Neurocrine under Article 2 hereof and
the licenses granted to Neurocrine under Article 3 hereof, and
subject to the terms and conditions of this Agreement,
Neurocrine shall pay to Wyeth :
(a) the non-creditable sum of Five Million Dollars
($5,000,000.00) (the "Initial Fee"), which amount
shall be payable within two (2) business days of the
Signature Date and shall be non-refundable except as
otherwise expressly set forth in Section 9.4 hereof;
and
(b) the non-refundable, non-creditable sum of Forty-Five
Million Dollars ($45,000,000.00) which amount shall
be payable at the Closing.
Such payments shall be made in United States Dollars by wire
transfer of immediately available funds to a bank account of
Wyeth or one of Wyeth's Affiliates, which bank account is
designated in writing by Wyeth to Neurocrine.
4.2 EQUITY PAYMENT. In further consideration for the rights and
obligations assigned to Neurocrine under Article 2 hereof and
the licenses granted to Neurocrine under Article 3 hereof,
Neurocrine, at the Closing and in accordance with the terms
and conditions of the Stock Purchase Agreement, shall
irrevocably transfer and deliver to Wyeth or, at Wyeth's
election, one of Wyeth's Affiliates, (i) that number of shares
of Neurocrine common stock that, based on the Share Price, has
a value of Forty-Five Million Dollars ($45,000,000.00), as
such amount may be adjusted in accordance with the terms and
conditions of the Stock Purchase Agreement and (ii) if
applicable, that amount of cash which may be due in accordance
with the terms and conditions of the Stock Purchase Agreement
as a result of any adjustment made to the number of shares of
Page 7 of 24
Neurocrine common stock to be transferred and delivered to
Wyeth pursuant to the Stock Purchase Agreement.
4.3 NO OTHER PAYMENTS. Upon receipt by Wyeth of the payment
required under Section 4.1 above and the Neurocrine common
stock to be delivered to Wyeth in accordance with Section 4.2
above and the terms and conditions of the Stock Purchase
Agreement, Neurocrine, except as provided in Article 10 below,
shall have no further obligation to make any payments to Wyeth
in connection with the assignment of rights and obligations
hereunder, the grant of licenses to Neurocrine hereunder
and/or the development and/or commercialization of the
Compound or pharmaceutical products containing the Compound,
and the licenses granted to Neurocrine under Section 3.1 shall
thereafter be fully paid up and royalty free.
4.4 TAXES AND WITHHOLDING. All payments under this Agreement will
be made without any deduction or withholding for or on account
of any tax unless such deduction or withholding is required by
applicable laws or regulations. If Neurocrine is so required
to deduct or withhold, Neurocrine will (a) promptly notify
Wyeth of such requirement, (b) pay to the relevant authorities
the full amount required to be deducted or withheld promptly
upon the earlier of determining that such deduction or
withholding is required or receiving notice that such amount
has been assessed against Wyeth, and (c) promptly forward to
Wyeth an official receipt (or certified copy) or other
documentation reasonably acceptable to Wyeth evidencing such
payment to such authorities.
5. THE CLOSING.
5.1 CLOSING DATE. Unless this Agreement shall have been earlier
terminated, the closing of the transactions contemplated
hereby (the "Closing") shall take place at the offices of
Wyeth Pharmaceuticals, 500 Arcola Road, Collegeville,
Pennsylvania 19426 on the later of March 15, 2004 or the
second business day after the date on which the last to be
fulfilled or waived of the conditions set forth in Article 6
shall be fulfilled or waived in accordance with this Agreement
or at such other time, date or place as the Parties may
mutually agree upon in writing (the "Closing Date"). At the
Closing, the Parties will exchange funds, certificates and
other documents specified in this Agreement. For purposes of
this Agreement, the Closing will be treated as if it occurred
at 11:59 p.m. EST on the Closing Date.
5.2 DELIVERIES BY NEUROCRINE. On the Closing Date, Neurocrine
shall deliver to Wyeth the following:
(a) the Stock Purchase Agreement duly executed by
Neurocrine;
Page 8 of 24
(b) the payment due to Wyeth under Section 4.1(b) of this
Agreement;
(c) a stock certificate representing the number of shares
of Neurocrine common stock to be delivered to Wyeth
or Wyeth's Affiliate pursuant to the Stock Purchase
Agreement and Section 4.2 above;
(d) all payments that may be required to be paid by
Neurocrine to Wyeth under the Stock Purchase
Agreement in connection with any adjustment to be
made to the number of shares of Neurocrine common
stock to be transferred and delivered to Wyeth
thereunder;
(e) the Assignment and Assumption Agreement duly signed
by an authorized officer of Neurocrine and such other
instruments of assumption and other certificates,
instruments or documents, in form and substance
reasonably acceptable to Wyeth and Neurocrine, as may
be required under this Agreement or as may otherwise
be necessary to effect Neurocrine's assumption under
applicable laws of the rights and obligations and
other assets being assigned and/or licensed to
Neurocrine under this Agreement;
(f) such other instruments and documents, in form and
substance reasonably acceptable to Wyeth and
Neurocrine, as may be necessary to effect the
Closing; and
(g) a certificate, executed by an authorized officer of
Neurocrine, certifying (i) the due organization and
good standing of Neurocrine, and (ii) the authority
and incumbency of officers of Neurocrine executing
this Agreement and the other agreements, instruments
and certificates delivered by Neurocrine to Wyeth
upon the Closing.
5.3 DELIVERIES BY WYETH. On the Closing Date, Wyeth shall deliver
to Neurocrine the following:
(a) the Stock Purchase Agreement duly executed by Wyeth
(or an Affiliate of Wyeth designated by Wyeth);
(b) the Assignment and Assumption Agreement duly executed
by an authorized officer of Wyeth, and any other
appropriate instruments of assignment, sale,
conveyance or transfer, in form and substance
reasonably acceptable to Wyeth and Neurocrine, as may
be required under this Agreement or as may otherwise
be necessary to effect Wyeth's assignment under
applicable laws of the rights and obligations and
other assets being assigned and/or licensed to
Neurocrine under this Agreement;
Page 9 of 24
(c) the Patent Assignment duly executed by an authorized
officer of Wyeth;
(d) such other instruments and documents, in form and
substance reasonably acceptable to Wyeth and
Neurocrine, as may be necessary to effect the
Closing; and
(e) a certificate, executed by an authorized officer of
Wyeth, certifying (i) the due organization and good
standing of Wyeth, and (ii) the authority and
incumbency of officers of Wyeth executing this
Agreement and the other agreements, instruments and
certificates delivered by Wyeth to Neurocrine upon
the Closing.
6. CONDITIONS AND COVENANTS.
6.1 CONDITIONS TO OBLIGATIONS OF EACH PARTY. The obligation of
each Party to enter into and effect the transactions
contemplated by this Agreement shall be subject to the
fulfillment at or prior to the Closing Date of the following
conditions:
(a) all consents and approvals of governmental
authorities, if any, necessary to permit the
consummation of the transactions contemplated by this
Agreement shall have been obtained and any waiting
period (including any extension thereof) applicable
to the consummation of this Agreement under the HSR
Act shall have expired or been terminated; and
(b) no preliminary or permanent injunction or other
order, decree or ruling issued by a court of
competent jurisdiction or by a governmental authority
or executive order promulgated or enacted by any
governmental authority shall be in effect that would
restrain or otherwise prevent the entry into or the
consummation of the transactions contemplated by this
Agreement.
6.2 CONDITIONS TO OBLIGATIONS OF WYETH. The obligation of Wyeth to
effect the transactions contemplated by Sections 5.1 and 5.3
of this Agreement is subject to the fulfillment at or prior to
the Closing Date of the following conditions:
(a) Neurocrine and DOV shall have duly executed and
delivered the 2004 Consent Agreement which shall be
in full force and effect as of the Closing Date;
(b) Wyeth shall have received all necessary approvals
from its Board of Directors to effect the
transactions contemplated by this Agreement;
Page 10 of 24
(c) Neurocrine shall have made the payments contemplated
under Section 4.1 hereof, delivered those shares of
Neurocrine common stock and other payments to be
delivered to Wyeth in accordance with the provisions
of the Stock Purchase Agreement and delivered to
Wyeth all other documents and deliverables to be
delivered by Neurocrine to Wyeth at or before the
Closing in accordance with Section 5.2 hereof;
(d) Neurocrine shall have executed and delivered to
Wyeth, the Assignment and Assumption Agreement;
and(c)Neurocrine shall have duly executed and
delivered the Stock Purchase Agreement to be entered
into by the Parties on the Closing Date and shall
have met all other conditions and obligations
required of Neurocrine under the Stock Purchase
Agreement.
6.3 CONDITIONS TO OBLIGATIONS OF NEUROCRINE. The obligation of
Neurocrine to enter into and effect the transactions
contemplated by Sections 5.1 and 5.2 of this Agreement is
subject to the fulfillment at or prior to the Closing Date of
the following conditions:
(a) Wyeth and DOV shall have duly executed and delivered
the Compound License Agreement and the 2004 Consent
Agreement, each of which shall be in full force and
effect as of the Closing Date;
(b) Wyeth shall have executed and delivered to Neurocrine
the Assignment and Assumption Agreement and the
Patent Assignment;
6.4 COVENANTS. Each Party covenants and agrees to use diligent,
good faith efforts to fulfill or cause to be fulfilled each of
the conditions set forth above with respect to its effecting
the transactions contemplated by Article 5 of this Agreement,
at or prior to the Closing Date.
7. REPRESENTATIONS AND WARRANTIES.
7.1 REPRESENTATIONS AND WARRANTIES OF EACH PARTY. Each of
Neurocrine and Wyeth hereby represents, warrants, and
covenants to the other Party hereto as follows:
(a) it is a corporation or entity duly organized and
validly existing under the laws of the state or other
jurisdiction of its incorporation or formation;
(b) the execution, delivery and performance of this
Agreement and of the Stock Purchase Agreement by such
Party has been duly authorized by all requisite
corporate action and does not require any shareholder
action or approval, provided, however, that
Page 11 of 24
Neurocrine acknowledges that Wyeth is required to
seek and obtain approval of its Board of Directors in
order to complete the transactions contemplated this
Agreement and that obtaining such approval is a
condition to Wyeth's obligations hereunder;
(c) it has the power and authority to execute and deliver
this Agreement and the Stock Purchase Agreement and
to perform its obligations hereunder and thereunder;
(d) the execution, delivery and performance by such Party
of this Agreement and the Stock Purchase Agreement
and its compliance with the terms and provisions
hereof and thereof does not and will not conflict
with or result in a breach of any of the terms and
provisions of or constitute a default under (i) a
loan agreement, guaranty, financing agreement,
agreement affecting a product or other agreement or
instrument binding or affecting it or its property;
(ii) the provisions of its charter or operative
documents or bylaws; or (iii) any order, writ,
injunction or decree of any court or governmental
authority entered against it or by which any of its
property is bound;
(e) it shall at all times comply with all applicable laws
and regulations relating to its activities under this
Agreement and the Stock Purchase Agreement; and
(f) There is no action, demand, suit, proceeding,
arbitration, grievance, citation, summons, subpoena,
inquiry or investigation of any nature, civil,
criminal, regulatory or otherwise, in law or in
equity, pending or, to such Party's knowledge,
threatened against such Party with respect to this
Agreement, the License Agreement, the 2002 Consent
Agreement or the Compound Patent.
7.2 ADDITIONAL REPRESENTATIONS AND WARRANTIES OF WYETH. In
addition to the representations and warranties made by Wyeth
in Section 7.1 above and Sections 7.4 and 7.5 below, Wyeth
hereby represents, warrants, and covenants to Neurocrine that
(a) as of the Effective Date of this Agreement, the 2004
Consent Agreement will be in full force and effect
and that, to Wyeth's knowledge, neither Wyeth nor DOV
will have committed any material breach thereunder
which material breach remains uncured and would give
rise to a right of either Neurocrine, Wyeth or DOV to
terminate the 2004 Consent Agreement;
(b) as of the Effective Date of this Agreement, the
Compound License Agreement will be in full force and
effect and that, to Wyeth's knowledge, neither Wyeth
nor DOV will have committed any
Page 12 of 24
material breach thereunder which material breach
remains uncured and would give rise to a right of
either Wyeth or DOV to terminate the Compound License
Agreement; except for the rights and licenses granted
to DOV under the Compound License Agreement and the
rights and licenses granted to Neurocrine and
Neurocrine's sublicensees under the 2002 Consent
Agreement, Wyeth, as of the Effective Date of this
Agreement, will not have granted to any Third Party
any right, title or interest in or to the Compound
Patent or the Wyeth Intellectual Property in so far
as it relates to the Compound;
(c) Except as set forth in (i) the 2002 Consent
Agreement, (ii) the 2004 Consent Agreement, (iii) the
Amended and Restated License Agreement and (iv) the
Compound License Agreement, the Original License
Agreement has not been amended, modified or
supplemented in any way since its effective date,
insofar as it relates to the Compound or the Wyeth
Intellectual Property in so far as it relates to
Compound;
(d) to Wyeth's actual knowledge, without having made or
having any duty to make any inquiry, as of the
Signature Date there is no written safety or other
information in Wyeth's possession relating the
Compound per se, which information (i) has not been
previously disclosed by Wyeth to DOV and/or
Neurocrine, and (ii) in Wyeth's reasonable
determination, would have a material adverse effect
on the development of the Compound;
(e) to Wyeth's actual knowledge, without having made or
having any duty to make any inquiry, as of the
Signature Date, (i) the issued patents within the
Wyeth Intellectual Property and the Compound Patent
are valid and enforceable, (ii) no third party is
infringing any issued patents within the Wyeth
Intellectual Property or the Compound Patent through
the manufacture, use or sale of the Compound and
(iii) no third party owns or controls any patent, or
assuming issuance of the claims as filed therein, any
patent application, which claims the manufacture, use
and sale of Compound per se (for the sake of clarity,
this representation and warranty does not extend to
any pharmaceutical formulation of the Compound or any
general manufacturing or process technology which may
be used by Neurocrine or its sublicensees in
connection with the Compound); and
(f) to Wyeth's actual knowledge, without having made or
having any duty to make any inquiry, as of the
Signature Date there are no patents owned or licensed
by Wyeth or any of its Affiliates that would be
infringed by the making, using or selling the
Compound per se by Neurocrine or its sublicensees,
provided, however, that
Page 13 of 24
this representation and warranty does not and shall
not extend to any patents which may cover Wyeth's
general manufacturing or process technology or
pharmaceutical product formulation technology.
EXCEPT AS EXPRESSLY SET FORTH IN THIS ARTICLE 7, WYETH MAKES
NO REPRESENTATION OR WARRANTY OF ANY KIND, EITHER EXPRESS OR
IMPLIED, TO NEUROCRINE, INCLUDING, WITHOUT LIMITATION, ANY
EXPRESS OR IMPLIED WARRANTY WITH RESPECT TO THE COMPOUND, THE
COMPOUND PATENT, THE WYETH INTELLECTUAL PROPERTY, THE
POTENTIAL AMOUNT OF PAYMENTS TO BE RECEIVED BY WYETH FROM DOV
UNDER THE COMPOUND LICENSE AGREEMENT OR WYETH'S OR DOV'S PAST
AND FUTURE PERFORMANCE UNDER THE ORIGINAL LICENSE AGREEMENT,
THE COMPOUND LICENSE AGREEMENT OR THE 2002 CONSENT AGREEMENT.
IN ADDITION TO BUT NOT IN LIMITATION OF THE FOREGOING, AND
EXCEPT AS EXPRESSLY PROVIDED OTHERWISE IN THIS AGREEMENT,
WYETH SPECIFICALLY DISCLAIMS (i) ANY EXPRESS OR IMPLIED
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE WITH RESPECT TO THE COMPOUND OR ANY PHARMACEUTICAL
PRODUCT CONTAINING THE COMPOUND, (ii) ANY EXPRESS OR IMPLIED
WARRANTY REGARDING THE TITLE, VALIDITY OR ENFORCEABILITY OF
THE COMPOUND PATENT OR ANY PATENT OR OTHER INTELLECTUAL
PROPERTY RIGHT INCLUDED IN THE WYETH INTELLECTUAL PROPERTY,
AND (iii) ANY EXPRESS OR IMPLIED WARRANTY THAT THE
DEVELOPMENT, MANUFACTURE, USE, DISTRIBUTION, MARKETING,
PROMOTION OR SALE OF THE COMPOUND OR ANY PHARMACEUTICAL
PRODUCT CONTAINING THE COMPOUND BY OR ON BEHALF OF DOV,
NEUROCRINE OR ANY OF THEIR RESPECTIVE LICENSEES OR
SUBLICENSEES WILL NOT INFRINGE ANY PATENT OR OTHER
INTELLECTUAL PROPERTY RIGHT OF ANY THIRD PARTY OR ANY PATENT
OR OTHER INTELLECTUAL PROPERTY OF WYETH OR ANY OF WYETH'S
AFFILIATES, WHICH PATENT OR OTHER INTELLECTUAL PROPERTY RIGHT
IS NOT INCLUDED IN EITHER THE COMPOUND PATENT OR THE WYETH
INTELLECTUAL PROPERTY.
7.3 ADDITIONAL REPRESENTATIONS AND WARRANTIES BY NEUROCRINE. In
addition to the representations and warranties made by
Neurocrine in Section 7.1 above and Sections 7.4 and 7.5
below, Neurocrine hereby represents, warrants, and covenants
to Wyeth that
Page 14 of 24
(a) as of the Effective Date of this Agreement, the 2004
Consent Agreement will be in full force and effect
and that, to Neurocrine's knowledge, neither
Neurocrine nor DOV will have committed any material
breach thereunder which material breach remains
uncured and would give rise to a right of either
Neurocrine, Wyeth or DOV to terminate the 2004
Consent Agreement;
(b) as of the Effective Date of this Agreement it will
have sufficient funds available to fulfill its
payment obligations under this Agreement;
(c) except as set forth in the 2002 Consent Agreement and
the 2004 Consent Agreement, the Neurocrine Sublicense
Agreement has not been amended, modified or
supplemented in any way since its effective date.
7.4 REPRESENTATION BY LEGAL COUNSEL. Each Party hereto represents
that it has been represented by legal counsel in connection
with this Agreement and acknowledges that it has participated
in the drafting hereof. In interpreting and applying the terms
and provisions of this Agreement, the Parties agree that no
presumption shall exist or be implied against the Party which
drafted such terms and provisions.
7.5 NO INCONSISTENT AGREEMENTS. Except for the Compound License
Agreement and the 2002 Consent Agreement, to each of which
Wyeth is a party and under each of which Wyeth requires and
has obtained DOV's consent to enter into this Agreement, as of
the Effective Date of this Agreement neither Party has in
effect nor shall enter into any oral or written agreement or
arrangement that is inconsistent with its obligations under
this Agreement.
8. CONFIDENTIALITY.
8.1 NON-DISCLOSURE AND USE RESTRICTIONS. Except to the extent
expressly authorized by this Agreement or otherwise agreed in
writing, the Parties agree that, for the term of this
Agreement and for five (5) years thereafter, each Party (the
"Receiving Party") receiving any Confidential Information of
the other Party (the "Disclosing Party") hereunder shall keep
such Confidential Information confidential and shall not
publish or otherwise disclose or use such Confidential
Information for any purpose other than as provided for in this
Agreement except for Confidential Information that the
Receiving Party can establish
(a) was already known by the Receiving Party (other than
under an obligation of confidentiality), at the time
of disclosure by the Disclosing Party and such
Receiving Party has documentary evidence to that
effect;
Page 15 of 24
(b) was generally available to the public or otherwise
part of the public domain at the time of its
disclosure to the Receiving Party;
(c) became generally available to the public or otherwise
part of the public domain after its disclosure or
development, as the case may be, and other than
through any act or omission of a Party in breach of
this confidentiality obligation;
(d) was disclosed to that Party, other than under an
obligation of confidentiality, by a Third Party who
had no obligation to the Disclosing Party not to
disclose such information to others; or
(e) was independently discovered or developed by or on
behalf of the Receiving Party without the use of the
Confidential Information belonging to the other Party
and the Receiving Party has documentary evidence to
that effect.
8.2 SEC FILINGS. Either Party may disclose the terms of this
Agreement to the extent required, in the reasonable opinion of
such Party's legal counsel, to comply with applicable laws,
including, without limitation, the rules and regulations
promulgated by the United States Securities and Exchange
Commission (the "SEC"). Notwithstanding the foregoing, before
disclosing this Agreement or any of the terms hereof pursuant
to this Section 8.2, the Parties will consult with one another
on the terms of this Agreement to be redacted in making any
such disclosure. If a Party discloses this Agreement or any of
the terms hereof in accordance with this Section 8.2, such
Party agrees, at its own expense, to seek confidential
treatment of portions of this Agreement or such terms, as may
be reasonably requested by the other Party.
8.3 PUBLIC STATEMENTS. So long as this Agreement is in effect,
neither of the Parties hereto shall issue or cause the
dissemination of any press release or other announcement with
respect to this Agreement or the transactions contemplated
hereby without consulting with and obtaining the consent of
the other Party which consent shall not be unreasonably
withheld; provided, however, that such consent shall not be
required where such release or announcement is required by
applicable law or legal process. The Parties agree that the
press release attached hereto as Exhibit 8.3 may be released
on or after the Effective Date or such earlier date as may be
required by applicable law.
9. TERM AND TERMINATION.
9.1 GOVERNMENT APPROVALS.
9.1.1 HSR FILING. To the extent necessary and to the extent
not already done so prior to the Signature Date, each
of Neurocrine and Wyeth shall, as soon as reasonably
practicable after the Signature Date,
Page 16 of 24
but in no event later than five (5) business days
after the Signature Date, file with the United States
Federal Trade Commission and the Antitrust Division
of the United States Department of Justice, any HSR
Filing required of it in the reasonable opinion of
both Parties under the HSR Act with respect to the
transactions contemplated hereby. The Parties shall
cooperate with one another to the extent necessary in
the preparation of any such HSR Filing. Each Party
shall be responsible for its own costs, expenses, and
filing fees associated with any HSR Filing, provided,
however, that, except as expressly set forth in
Section __ below, Neurocrine shall be solely
responsible for any fees required to be paid to any
government agency in connection with making any such
HSR Filing.
9.1.2 OTHER GOVERNMENT APPROVALS. To the extent not
otherwise addressed in Section 9.1.1 above,
Neurocrine and Wyeth will cooperate and use
respectively all reasonable efforts to make all
registrations, filings and applications, to give all
notices and to obtain as soon as practicable all
governmental or other consents, transfers, approvals,
orders, qualifications authorizations, permits and
waivers, if any, and to do all other things necessary
or desirable for the consummation of the transactions
as contemplated hereby.
9.2 TERMINATION BY MUTUAL AGREEMENT. This Agreement may be
terminated at any time by mutual written agreement of the
Parties.
9.3 TERMINATION FOR CAUSE. This Agreement may be terminated at any
time prior to the Closing Date:
(a) by Wyeth if the Closing shall not have occurred on or
prior to March 31, 2004;
(b) by Neurocrine if the Closing shall not have occurred
on or prior to March 31, 2004; or
(c) subject to Section 9.1, by Wyeth or Neurocrine if a
court of competent jurisdiction or governmental
authority shall have issued an order, decree or
ruling or taken any other action, in each case
permanently restraining, enjoining or otherwise
prohibiting the transactions contemplated by this
Agreement, and such order, decree, ruling or other
action shall have become final and nonappealable.
9.4 EFFECTS OF TERMINATION. Upon expiration or termination of this
pursuant to this Article 9, (a) this Agreement shall forthwith
become null and void, except that nothing herein shall relieve
any Party from liability for breach
Page 17 of 24
of this Agreement prior to such termination. Upon termination
of this Agreement for any reason other than Neurocrine's
failure to meet one or more of the conditions set forth in
Section 6.2 , Wyeth shall refund to Neurocrine the Initial Fee
(without interest) within thirty (30) days following such
termination. Additionally, if this Agreement is terminated as
a result of a failure to meet the condition set forth in
Section 6.2(b), Wyeth, within thirty (30) days of such
termination, shall reimburse Neurocrine the amount of any fees
actually paid by Neurocrine to any government agency in
connection with the making of any HSR Filing pursuant to
Section 9.1.1 above, provided, however, the maximum amount
that Wyeth shall be obligated to so reimburse Neurocrine shall
be forty-five thousand dollars ($45,000). Notwithstanding the
foregoing, this Article 9, Articles 8 and 10 and Sections
4.1(a), 11.3, and 11.8 of this Agreement shall survive any
such expiration or termination.
10. INDEMNIFICATION AND INSURANCE.
10.1 INDEMNIFICATION BY NEUROCRINE. Neurocrine will indemnify,
defend and hold harmless Wyeth, Wyeth's Affiliates, and each
of its and their respective employees, officers, directors and
agents (each, a "Wyeth Indemnified Party") from and against
any and all liability, loss, damage, expense (including
reasonable attorneys' fees and expenses) and cost
(collectively, a "Liability") that the Wyeth Indemnified Party
may be required to pay to one or more Third Parties resulting
from or arising out of or in connection with any Third Party
claims of any nature arising out of:
(a) the research, development, manufacture or
commercialization of the Compound or any
pharmaceutical product containing the Compound by, on
behalf of, or under the authority of Neurocrine, its
Affiliates, and its or their licensees or
sublicensees, and their further licensees or
sublicensees including, without limitation, Pfizer
and any of Pfizer's Affiliates, sublicensees,
contractors or commercialization partners;
(b) any Neurocrine representation or warranty set forth
herein being untrue in any material respect when
made;
(c) any breach or other action taken or omission made by
or on behalf of Neurocrine or any of Neurocrine's
Affiliates under the Compound License Agreement or
the 2002 Consent Agreement; and/or
(d) any action taken or failure to act by Neurocrine, its
Affiliates, any of their respective licensees or
sublicensees (including, without
Page 18 of 24
limitation, Pfizer and Pfizer's Affiliates) and any
of their further licensees or sublicensees, in
connection with the filing, prosecution, maintenance
or enforcement of the Compound Patent, whether such
action or failure to act occurred prior to or after
the Effective Date of this Agreement;
except in each case, to the extent caused by the negligence or
willful misconduct of Wyeth or any Wyeth Indemnified Party.
10.2 INDEMNIFICATION BY WYETH. Wyeth will indemnify, defend and
hold harmless Neurocrine and its sublicensees, distributors
and each of its and their respective employees, officers,
directors and agents (each, a "Neurocrine Indemnified Party")
from and against any and all Liabilities that the Neurocrine
Indemnified Party may be required to pay to one or more Third
Parties resulting from or arising out of any Third Party
claims of any nature arising out of:
(a) the conduct of any activities by, on behalf of, or
under the authority of Wyeth (other than by DOV,
Neurocrine, Pfizer or their respective Affiliates)
prior to the Effective Date of this Agreement; and/or
(b) any Wyeth representation or warranty set forth herein
being untrue in any material respect when made;
except in each case, to the extent caused by the negligence or
willful misconduct of DOV, Neurocrine or any Neurocrine
Indemnified Party.
10.3 PROCEDURE. Each Party will notify the other in the event it
becomes aware of a claim for which indemnification may be
sought hereunder. In case any proceeding (including any
governmental investigation) shall be instituted involving any
Party in respect of which indemnity may be sought pursuant to
this Article 10, such Party (the "Indemnified Party") shall
promptly notify the other Party (the "Indemnifying Party") in
writing within fifteen (15) days and the Indemnifying Party
and Indemnified Party shall meet to discuss how to respond to
any claims that are the subject matter of such proceeding. The
Indemnifying Party, upon request of the Indemnified Party,
shall retain counsel reasonably satisfactory to the
Indemnified Party to represent the Indemnified Party and shall
pay the fees and expenses of such counsel related to such
proceeding. The Indemnified Party agrees to cooperate fully
with the Indemnifying Party in the defense of any such claim,
action or proceeding, or any litigation resulting from any
such claim. In any such proceeding, the Indemnified Party
shall have the right to retain its own counsel, but the fees
and expenses of such counsel shall be at the expense of the
Indemnified Party unless (a) the Indemnifying Party and the
Indemnified Party shall have mutually agreed to the retention
of such counsel or (b) the named parties
Page 19 of 24
to any such proceeding (including any impleaded parties)
include both the Indemnifying Party and the Indemnified Party
and representation of both Parties by the same counsel would
be inappropriate due to actual or potential differing
interests between them. All such fees and expenses shall be
reimbursed as they are incurred. The Indemnifying Party shall
not be liable for any settlement of any proceeding effected
without its written consent, but if settled with such consent
or if there be a final judgment for the plaintiff, the
Indemnifying Party agrees to indemnify the Indemnified Party
from and against any loss or liability by reason of such
settlement or judgment. The Indemnifying Party shall not,
without the written consent of the Indemnified Party, effect
any settlement of any pending or threatened proceeding in
respect of which the Indemnified Party is, or arising out of
the same set of facts could have been, a party and indemnity
could have been sought hereunder by the Indemnified Party,
unless such settlement includes an unconditional release of
the Indemnified Party from all liability on claims that are
the subject matter of such proceeding.
10.4 INSURANCE. Neurocrine further agrees to use reasonable efforts
to obtain and maintain, during the term of this Agreement,
commercial general liability insurance, including products
liability insurance, with reputable and financially secure
insurance carriers to cover its indemnification obligations
under Sections 10.1 with limits of not less than Five Million
Dollars ($5,000,000.00) per occurrence and in the aggregate.
Insurance shall be procured with carriers having an A.M. Best
Rating of A-VII or better. Upon Wyeth's request, Neurocrine
shall provide Wyeth with a certificate of insurance evidencing
said coverage.
10.5 LIMITATION. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE
OTHER PARTY UNDER THIS AGREEMENT FOR SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES SUFFERED BY SUCH OTHER
PARTY EXCEPT (A) TO THE EXTENT SUCH DAMAGES ARE PAID TO A
THIRD PARTY AS PART OF OR OTHERWISE INCURRED IN CONNECTION
WITH A THIRD PARTY CLAIM AND (B) IN THE EVENT OF INTENTIONAL
AND WILLFUL BREACH IN BAD FAITH OF ANY REPRESENTATION,
WARRANTY OR COVENANT MADE BY SUCH PARTY HEREUNDER.
11. MISCELLANEOUS.
11.1 ASSIGNMENT. Neither this Agreement nor any interest hereunder
shall be assignable by either Party, without the prior written
consent of the other Party, which consent shall not be
unreasonably withheld or delayed, except a Party may make such
an assignment without the other Party's consent to Affiliates
or to a successor to substantially all of the business of such
Party to which this Agreement relates, whether in merger, sale
of stock, sale of assets or other transaction. This Agreement
shall be binding
Page 20 of 24
upon the successors and permitted assigns of the Parties and
the name of a Party appearing herein shall be deemed to
include the names of such Party's successors and permitted
assigns to the extent necessary to carry out the intent of
this Agreement. Any assignment not in accordance with this
Section 11.1 shall be void.
11.2 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other
acts, as may be necessary or appropriate in order to carry out
the purposes and intent of this Agreement.
11.3 NOTICES. All notices and other communications hereunder
(including, without limitation, any notice of breach,
termination, change of address, etc.) shall be in writing and
shall be deemed given if delivered personally or by facsimile
transmission (receipt verified), mailed by registered or
certified mail (return receipt requested), postage prepaid, or
sent by nationally recognized express courier service, to the
Parties at the following addresses (or at such other address
for a Party as shall be specified by like notice, provided,
however, that notices of a change of address shall be
effective only upon receipt thereof):
All correspondence to Wyeth shall be addressed as follows:
Wyeth Pharmaceuticals
500 Arcola Road
Collegeville, PA 19426
Attn: Senior Vice President, Worldwide Licensing
Fax: (484) 865-9301
with a copy to:
Wyeth
5 Giralda Farms
Madison, NJ 07940
Attn: General Counsel
Fax: (973) 660-7156
All correspondence to Neurocrine shall be addressed as
follows:
Neurocrine Biosciences, Inc.
10555 Science Center Drive
San Diego, California 92121
Attn: Senior Vice President, Business Development
Fax: (858) 658-7605
with a copy to:
Page 21 of 24
Neurocrine Biosciences, Inc.
10555 Science Center Drive
San Diego, California 92121
Attn: General Counsel
Fax: (858) 658-7605
11.4 AMENDMENT. No amendment, modification or supplement of any
provision of this Agreement shall be valid or effective unless
made in writing and signed by a duly authorized officer of
each Party.
11.5 WAIVER. No provision of the Agreement shall be waived by any
act, omission or knowledge of a Party or its agents or
employees except by an instrument in writing expressly waiving
such provision and signed by a duly authorized officer of the
waiving Party. The waiver by either of the Parties of any
breach of any provision hereof by the other Party shall not be
construed to be a waiver of any succeeding breach of such
provision or a waiver of the provision itself.
11.6 SEVERABILITY. If any clause or portion thereof in this
Agreement is for any reason held to be invalid, illegal or
unenforceable, the same shall not affect any other portion of
this Agreement, as it is the intent of the Parties that this
Agreement shall be construed in such fashion as to maintain
its existence, validity and enforceability to the greatest
extent possible. In any such event, this Agreement shall be
construed as if such clause of portion thereof had never been
contained in this Agreement, and there shall be deemed
substituted therefor such provision as will most nearly carry
out the intent of the Parties as expressed in this Agreement
to the fullest extent permitted by applicable law.
11.7 DESCRIPTIVE HEADINGS. The descriptive headings of this
Agreement are for convenience only, and shall be of no force
or effect in construing or interpreting any of the provisions
of this Agreement.
11.8 GOVERNING LAW; DISPUTE RESOLUTION. This Agreement shall be
governed by and interpreted in accordance with the substantive
laws of the State of New York, without regard to conflict of
law principles thereof. The Parties recognize that a bona fide
dispute as to certain matters may from time to time arise
during the term of this Agreement. In the event of the
occurrence of such a dispute either Party may, by written
notice to the other Party, have such dispute referred to their
respective officers (designated below) or their successors or
designees for attempted resolution by good faith negotiations
within ten (10) calendar days after such notice is received.
Said designated officers are as follows:
For Wyeth: Senior Vice President
Page 22 of 24
Global Business Development
Wyeth Pharmaceuticals
For Neurocrine: Senior Vice President,
Business Development
In the event the designated officers are not able to resolve
such dispute through good faith negotiations within such ten
(10) calendar day period, either Party may pursue any legal or
equitable remedies available to it by filing a claim in the
state or federal courts of the state of New York and each
Party hereby consents to the jurisdiction of such court and
each Party hereby irrevocably waives its right to a jury trial
before such court. Notwithstanding the foregoing, nothing in
this Section 11.8 shall prohibit a Party from seeking
temporary or injunctive relief from a state or federal court
in New York pending the resolution of a dispute in accordance
with the provisions of this Section 11.8.
11.9 ENTIRE AGREEMENT OF THE PARTIES. This Agreement constitutes
and contains the complete, final and exclusive understanding
and agreement of the Parties as to the subject matter hereof
and cancels and supersedes any and all prior negotiations,
correspondence, understandings and agreements, whether oral or
written, among the Parties respecting the subject matter
hereof,. Except as expressly provided otherwise herein, this
Agreement shall have no effect on, and shall be subject to,
the 2002 Consent Agreement, the 2004 Consent Agreement, the
Sublicense Agreement and Compound License Agreement which
agreements shall continue in full force and effect in
accordance with the terms and conditions thereof and subject
to the assignments and assumptions effected pursuant to this
Agreement.
11.10 INDEPENDENT CONTRACTORS. Both Parties are independent
contractors under this Agreement. Nothing herein contained
shall be deemed to create an employment, agency, joint venture
or partnership relationship between the Parties hereto or any
of their agents or employees, or any other legal arrangement
that would impose liability upon one Party for the act or
failure to act of the other Party. Neither Party shall have
any express or implied power to enter into any contracts or
commitments or to incur any liabilities in the name of, or on
behalf of, the other Party, or to bind the other Party in any
respect whatsoever.
Page 23 of 24
11.11 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which need not contain the signature of
more than one Party but all such counterparts taken together
shall constitute one and the same agreement.
IN WITNESS WHEREOF, duly authorized representatives of the Parties have
duly executed this Agreement to be effective as of the Signature Date.
WYETH HOLDINGS CORPORATION NEUROCRINE BIOSCIENCES, INC.
By /s/ Robert A. Dougan By /s/ Gary A. Lyons
Name: Robert A. Dougan Name: Gary A. Lyons
Title: Senior Vice President Title: President and CEO
Page 24 of 24
EXHIBIT 1.23
WYETH PATENTS
CL 285,489
United States
U.S. 6,399,621 expires 8/9/2020
U.S. 4,900,836 expires 2/13/2007
U.S. 4,521,422 expires 6/23/2003