CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT 10.31
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is made and entered into as of
July 17, 2001 (the "Effective Date") by and between EXELIXIS, INC., a Delaware
corporation having its principal place of business at 170 Harbor Way, P.O. Box
511, South San Francisco, California 94083 ("Exelixis"), and BRISTOL-MYERS
SQUIBB COMPANY, a Delaware corporation having its principal place of business at
Route 206 and Province Line Road, Princeton, NJ 08543 ("BMS"). Exelixis and BMS
are sometimes referred to herein individually as a "Party" and collectively as
the "Parties."
BACKGROUND
A. BMS is the owner of the compound Rebeccamycin (as defined below); and
B. As part of the consideration for the Cancer Collaboration Agreement
between BMS and Exelixis dated July 17, 2001 ("CCA"), and the Stock Purchase
Agreement between BMS and Exelixis dated July 17, 2001, BMS desires to grant to
Exelixis, and Exelixis desires to receive, a license to develop and
commercialize Rebeccamycin based on the terms and conditions set forth below.
NOW THEREFORE, BMS and Exelixis agree as follows:
1. DEFINITIONS
The following terms shall have the following meanings as used in this Agreement:
1.1 "AFFILIATE" means, with respect to a particular Party, a person,
corporation, partnership, or other entity that controls, is controlled by or is
under common control with such Party. For the purposes of the definition in
this Section 1.1, the word "control" (including, with correlative meaning, the
terms "controlled by" or "under the common control with") means the actual
power, either directly or indirectly through one or more intermediaries, to
direct or cause the direction of the management and policies of such entity,
whether by the ownership of at least fifty percent (50%) of the voting stock of
such entity, or by contract or otherwise.
1.2 "BMS KNOW-HOW" means all Information Controlled by BMS or its
Affiliates as of the Effective Date that relates to Rebeccamycin or to its
manufacture or use, including without limitation: (i) cell lines, including
without limitation [ * ], and related media; (ii) technical data; (iii)
preclinical data; (iv) protocols and clinical trial information; (v) methods of
manufacturing; (vi) quality assurance and stability data; (vii) all adverse
events data; and (viii) regulatory filings. For sake of clarity, no trademarks
or tradenames Controlled by BMS are included in the BMS Know-How.
1.3 "BMS PATENT RIGHTS" means (i) the Listed Patent Rights, (ii) all other
United States and foreign patents and patent applications Controlled by BMS or
its Affiliates as of the Effective Date that would be infringed by the
manufacture, importation, use, offer for sale or sale of Rebeccamycin by an
unlicensed Third Party, and (iii) all continuations, divisions, reissues,
extensions, substitutions, re-examinations, patents of addition, supplementary
protection certificates and foreign equivalents of the patents and patent
applications described in (ii).
1.4 "CONTROL" or "CONTROLLED" means, with respect to any material,
particular item of Information or intellectual property right, (i) that the
Party owns and has the ability to grant to the other Party the licenses to such
item provided for herein, without violating the terms of any agreement or other
arrangement with any Third Party, and/or (ii) that the Party has a license to
such item and has the ability to grant to the other Party the licenses to such
item provided for herein, without violating the terms of any agreement or other
arrangement with any Third Party.
1.5 "IND" means an Investigational New Drug application, as defined in the
U.S. Food, Drug and Cosmetics Act and the regulations promulgated thereunder, or
any corresponding or equivalent foreign application, registration or
certification.
1.6 "INFORMATION" means information, material, results and data of any type
whatsoever, in any tangible or intangible form whatsoever, including without
limitation, databases, inventions, practices, methods, techniques,
specifications, formulations, formulae, cell lines, cell media, knowledge,
know-how, skill, experience, manufacturing materials, financial data, test data
including pharmacological, biological, chemical, biochemical, toxicological and
clinical test data, analytical and quality control data, quality assurance data,
stability data, studies and procedures, and patent and other legal information
or descriptions.
1.7 "LISTED PATENT RIGHTS" means (i) the patents and patent applications
listed in Exhibit 1.7 and (ii) all continuations, continuations-in-part,
divisions, reissues, extensions, substitutions, re-examinations, patents of
addition, supplementary protection certificates and foreign equivalents of such
patents and patent applications.
1.8 "PRODUCT" means (i) Rebeccamycin, (ii) any product containing or
comprising Rebeccamycin, and (iii) any formulation of (i) or (ii).
1.9 "REBECCAMYCIN" means the rebeccamycin analog compound known as
BMY-027557, with the CAS Identification No. CAS-119673-08-4 and CAS nomenclature
1 anosyl)-5H-indolo[2,3-a]pyrrolo[3,4-c]carbazole-5,7(6H)-dione.
1.10 "THIRD PARTY" means any person or entity other than Exelixis, BMS or
an Affiliate of Exelixis or BMS.
2. LICENSES AND OBLIGATIONS
2.1 LICENSES TO EXELIXIS.
2.1.1 EXCLUSIVE LICENSE. BMS hereby grants to Exelixis a worldwide,
exclusive, irrevocable (except as provided in Section 7.5), Exelixis, fully
paid, royalty-free license (with the right to sublicense), under BMS Patent
Rights and BMS Know-How, to make, have made, use, develop, test, sell, offer for
sale and import Products. For clarity, the foregoing license excludes those BMS
Patent Rights and BMS Know-How which are licensed to Exelixis under Section
2.1.2.
2.1.2 NON-EXCLUSIVE LICENSE. BMS hereby grants to Exelixis a
worldwide, non-exclusive, irrevocable, fully paid, royalty-free license (with
the right to sublicense), under (i) the BMS Patent Rights described in Sections
1.3(ii) and (iii) to which BMS only has non-exclusive rights, and (ii) the BMS
Know-How to which BMS only has non-exclusive rights, to make, have made, use,
develop, test, sell, offer for sale and import Products.
2.2 LICENSE TO BMS. Exelixis hereby grants to BMS and its Affiliates a
worldwide, non-exclusive, fully paid, royalty-free license, under BMS Patent
Rights and BMS Know-How, to make, have made, use, and test Rebeccamycin solely
for internal pre-clinical research purposes (x) to profile or test the activity
of compounds other than Rebeccamycin or (y) to synthesize compounds that are not
Rebeccamycin.
2.3 NEGATIVE COVENANTS. Except as provided in Section 2.2, BMS and/or its
Affiliates shall not (itself or directly or indirectly with a Third Party) make,
have made, use, develop, test, sell, offer for sale and import Products during
the term of this Agreement.
2.4 TRANSFER OF BMS KNOW-HOW.
2.4.1 Within [ * ] of the Effective Date, BMS shall (i) commence and
use commercially reasonable efforts thereafter to disclose to Exelixis in an
orderly fashion as promptly as reasonably practicable all BMS Know-How that is
in the possession of BMS or its Affiliates, and (ii) commence and use
commercially reasonable efforts thereafter to transfer to Exelixis in an orderly
fashion as promptly as reasonably practicable all such BMS Know-How that relates
to Rebeccamycin; provided, that the foregoing shall not apply to BMS
manufacturing Know-How, which BMS shall be obliged to disclose pursuant to
Section 2.6. The Parties agree and acknowledge that BMS may retain one or more
copies of BMS Know-How that also pertain to compounds other than Rebeccamycin
and may use such BMS Know-How for purposes outside the scope of the license
granted in Section 2.1.1 or within the scope of the license granted in Section
2.2. [ * ] shall bear its own expenses in connection with this Section 2.4.1;
provided, that Exelixis shall reimburse BMS for [ * ].
2.4.2 [ * ], during normal business hours, BMS shall at reasonable
times permit Exelixis and its representatives to have full and complete access
to all contracts, data and records relating to Rebeccamycin in BMS' possession,
and BMS shall provide Exelixis and its representatives an opportunity to meet
and discuss with the individuals who have material knowledge pertaining to such
Rebeccamycin contracts, data and records and who are officers and employees of
BMS and its Affiliates.
2.5 CLINICAL TRIAL DEVELOPMENT.
2.5.1 [ * ], BMS shall use commercially reasonable efforts to provide,
over a mutually agreed time frame, reasonable assistance to Exelixis with
respect to: (i) the design of clinical trials for Products; (ii) the selection
of investigators and end points for clinical trials of Products; (iii) the
selection of contract research organizations for clinical trials of Products;
and (iv) providing access to multinational cooperative study groups for clinical
trials of Products. It is understood that such assistance will generally be
provided through a monthly teleconference scheduled at mutually convenient
times. No travel, other than to NCI Steering Committee meetings where
reasonably necessary, shall be required of BMS without its prior consent. [ * ]
shall bear its own expenses in connection with this Section 2.5.1; provided,
that Exelixis shall reimburse BMS for [ * ]. [ * ], BMS shall promptly provide
to Exelixis any notices or other communications regarding Third Party claims
arising from clinical trials based on use of the Products prior to the Effective
Date.
2.5.2 Subject to the consent of the National Cancer Institute ("NCI"),
BMS hereby assigns to Exelixis, and Exelixis agrees to accept such assignment
of, all of BMS' rights, obligations and interests in and under the "Agreement
Between Pharmaceutical Industry and the Division of Cancer Treatment, NCI for
the Clinical Development of Diethylaminorebeccamycin" between BMS and NCI dated
December 20, 1993 (the "NCI Agreement"). [ * ], BMS shall send the NCI a letter
that informs NCI of the license between BMS and Exelixis and that requests NCI
to send a letter assigning to Exelixis all of BMS' rights, obligations and
interests in and under the NCI Agreement. [ * ], BMS: (i) use commercially
reasonable efforts to facilitate the assignment to Exelixis of all of BMS'
rights, obligations and interests in and under the NCI Agreement; and agrees to
(ii) request that NCI perform whatever actions are needed to give Exelixis (A)
the right to review NCI's clinical trial data relating to Products, including
without limitation the amending of NCI's informed consents regarding clinical
trials of Products, (B) the right to cross-reference NCI's IND for Rebeccamycin,
and (C) the ability to formulate Rebeccamycin using formulation technology
developed or used by NCI pursuant to its work on Rebeccamycin. [ * ] shall bear
its own expenses in connection with this Section 2.5.2; provided, that Exelixis
shall reimburse BMS for [ * ].
2.5.3 Effective upon the date on which BMS' interest in the NCI
Agreement is assigned to Exelixis and consented to by NCI (the "Assignment
Date")
(A) BMS shall retain all liability for its failure to fulfill any
obligations under the NCI Agreement that accrued prior to the Assignment Date.
(B) Exelixis shall assume all liability for (i) its failure to
fulfill any obligations under the NCI Agreement that accrued after to the
Assignment Date, and (ii) any loss, claim, damage or liability resulting from
Exelixis' activities under the NCI Agreement after to the Assignment Date.
Following the Assignment Date, Exelixis covenants and agrees to perform and
fully discharge in a timely manner all obligations under the NCI Agreement.
2.5.4 Following the Effective Date of this Agreement the Assignment
Date: (x) BMS covenants and agrees to perform and fully discharge in until a
timely manner all obligations required of it under the NCI Agreement; and (y)
Exelixis shall assume all liability for any loss, claim, damage or liability
resulting from BMS' activities under the NCI Agreement after to the Assignment
Date, except to the extent attributable to a breach by BMS of its obligations in
(x).
2.6 IDENTIFICATION OF MANUFACTURER. [ * ], BMS shall (i) recommend to
Exelixis candidates for a Third Party manufacturer for the supply of
Rebeccamycin to Exelixis, and (ii) disclose a sufficient amount of BMS Know-How
related to the manufacture of Rebeccamycin to enable Exelixis to select a Third
Party manufacturer for the supply of Rebeccamycin to Exelixis. At the request
of Exelixis, BMS shall, subject to the execution by a Third Party manufacturer
of an appropriate license and confidentiality agreement with Exelixis, promptly
transfer to such Third Party manufacturer chosen by Exelixis all useful BMS
Know-How that relates to the manufacture of Rebeccamycin and advise such Third
Party manufacturer concerning the manufacture of Rebeccamycin. [ * ] shall bear
its own expenses in connection with this Section 2.6; provided, that Exelixis
shall reimburse BMS for [ * ]. It is not expected that BMS will be required to
provide on-site advice in connection with the foregoing, and provision of advice
by BMS with respect to its manufacturing Know-How shall not require BMS to
provide on-site support, unless BMS agrees to same in advance and is reimbursed
for its [ * ]. If Exelixis requests BMS to transfer BMS Know-How concerning the
manufacture of Rebeccamycin to one other Third Party manufacturer in addition to
the Third Party manufacturer described above in this Section 2.6, then BMS shall
transfer such BMS Know-How to such additional Third Party Manufacturer provided
that [ * ].
2.7 NON-SOLICITATION AND NON-HIRE. For [ * ], Exelixis will not, without
the prior written consent of BMS: [ * ] Nothing in this Section 2.7 shall
prohibit a general solicitation made by newspaper or other media.
3. CONFIDENTIALITY
3.1 NONDISCLOSURE OF CONFIDENTIAL INFORMATION. For all purposes
hereunder, "Confidential Information" shall mean all Information disclosed by
one Party to the other Party (i) prior to the Effective Date and relating to
Rebeccamycin or Products, or (ii) pursuant to this Agreement. The Parties agree
that for a period of [ * ] after a disclosure of an item of Confidential
Information is made hereunder, a Party receiving such item of Confidential
Information of the other Party will (i) use commercially reasonable efforts to
maintain in confidence such item of Confidential Information (but not less than
those efforts as such Party uses to maintain in confidence its own proprietary
industrial information of similar kind and value) and not to disclose such item
of Confidential Information to any Third Party without prior written consent of
the other Party, except for disclosures made in confidence to any Third Party
under terms consistent with this Agreement and made in furtherance of this
Agreement or of rights granted to a Party hereunder, and (ii) not use such other
Party's Confidential Information for any purpose except those permitted by this
Agreement.
3.2 EXCEPTIONS. The obligations in Section 3.1 shall not apply with respect
to any portion of the Confidential Information that the receiving Party can show
by competent written proof:
(A) Is publicly disclosed by the disclosing Party, either before or
after it is disclosed to the receiving Party hereunder; or
(B) Was known to the receiving Party or any of its Affiliates, without
obligation to keep it confidential, prior to disclosure by the disclosing Party;
or
(C) Is subsequently disclosed to the receiving Party or any of its
Affiliates by a Third Party lawfully in possession thereof and without
obligation to keep it confidential; or
(D) Is published by a Third Party or otherwise becomes publicly
available or enters the public domain, either before or after it is disclosed to
the receiving Party; or
(E) Has been independently developed by employees or contractors of
the receiving Party or any of its Affiliates without the aid, application or use
of Confidential Information.
3.3 AUTHORIZED DISCLOSURE. A Party may disclose the Confidential
Information belonging to the other Party to the extent such disclosure is
reasonably necessary in the following instances:
(A) Filing or prosecuting patents relating to Products;
(B) Regulatory filings;
(C) Prosecuting or defending litigation;
(D) Complying with applicable governmental regulations; and
(E) Disclosure, in connection with the performance of this Agreement,
to Affiliates, sublicensees, research collaborators, employees, consultants, or
agents, each of whom prior to disclosure must be bound by similar obligations of
confidentiality and non-use at least equivalent in scope to those set forth in
this Article 3. The Parties acknowledge that the terms of this Agreement shall
be treated as Confidential Information of both Parties. Such terms may be
disclosed by a Party to investment bankers, investors, and potential investors,
each of whom prior to disclosure must be bound by similar obligations of
confidentiality and non-use at least equivalent in scope to those set forth in
this Article 3. In addition, a copy of this Agreement may be filed by Exelixis
with the Securities and Exchange Commission in connection with any public
offering of Exelixis securities. In connection with any such filing, Exelixis
shall endeavor to obtain confidential treatment of economic and trade secret
information. In any event, the Parties agree to take all reasonable action to
avoid disclosure of Confidential Information except as permitted hereunder.
4. REPRESENTATIONS AND WARRANTIES
4.1 MUTUAL WARRANTIES. Exelixis and BMS each represents and warrants
to the other that (i) it has the authority and right to enter into and perform
this Agreement, (ii) this Agreement is a legal and valid obligation binding upon
it and is enforceable in accordance with its terms, subject to applicable
limitations on such enforcement based on bankruptcy laws and other debtors'
rights, and (iii) its execution, delivery and performance of this Agreement will
not conflict in any material fashion with the terms of any other agreement or
instrument to which it is or becomes a party or by which it is or becomes bound,
nor violate any law or regulation of any court, governmental body or
administrative or other agency having authority over it.
4.2 BMS WARRANTIES. BMS represents and warrants to Exelixis as of the
Effective Date that
4.2.1 BMS has the full right and power to grant the licenses set forth
in Section 2.1 in the manner and to the extent set forth in this Agreement
(including Exelixis' right to further sublicense), free and clear of any adverse
assignment, grant or other encumbrances inconsistent with such grant;
4.2.2 The individuals listed on Exhibit 4.2 are the individuals
employed by BMS who would be reasonably likely to have the most current
knowledge within BMS with respect to manufacture and clinical development, and
intellectual property issues, related to Rebeccamycin and Products and the
carrying out of the NCI Agreement;
4.2.3 To the knowledge of the BMS individuals listed on Exhibit 4.2:
(a) BMS and its Affiliates have not infringed any issued patents within the
United States of any Third Party or misappropriated any trade secrets of any
Third Party with respect to the manufacture (to the extent manufactured or
formulated by BMS) of, or the use in the treatment of cancer of, (i)
Rebeccamycin, or (ii) the Product being tested in human clinical trials; (b) BMS
has not entered into any agreement with any Third Party pursuant to which
royalties would be owed to such Third Party with respect to the manufacture, use
or sale of Rebeccamycin; and (c) neither BMS nor an Affiliate has received any
written notice or other written communication alleging that Rebeccamycin
infringes or misappropriates the intellectual property rights of a Third Party;
4.2.4 BMS owns all right, title and interest to the patents and patent
applications listed in Exhibit 1.7 and, to the knowledge of the individuals
listed on Exhibit 4.2, all inventors of the inventions claimed in each patent or
patent application are identified on such patent or patent application;
4.2.5 BMS has provided Exelixis with complete copies of all summaries
provided by NCI to BMS of clinical trial data relating to Products;
4.2.6 There are no regulatory filings in the U.S. or abroad with
respect to Rebeccamycin that are Controlled by BMS or its Affiliates; and
4.2.7 To the knowledge of the BMS individuals listed on Exhibit 4.2,
NCI does not Control any patents or patent application that claim (i) methods of
formulating Rebeccamycin, or (ii) Rebeccamycin formulations. For clarity, the
representations and warranties concerning intellectual property rights under
Sections 4.2.3, 4.2.4, and 4.2.7 do not create, and shall not be interpreting as
requiring an obligation for BMS to perform any additional patent searches at any
time prior to the Effective Date other than those already made by BMS in the
ordinary course of its business
4.3 NO ADDITIONAL REPRESENTATIONS.
4.3.1 Exelixis acknowledges that, upon completion of the activities
described in Section 2.4.2, it and its representatives will have been permitted
full and complete access to the contracts, data and records relating to
Rebeccamycin that it has desired or requested to see or review, and that it and
its representatives will have had a opportunity to meet with the officers and
employees of BMS and its Affiliates to discuss Rebeccamycin. For the avoidance
of doubt, Exelixis' access to such information and its opportunity to meet with
such personnel shall not limit its right to make a claim for indemnification
under Article 6.
4.3.2 Exelixis acknowledges that BMS, its Affiliates, and its and
their directors, officers, employees, agents or contractors have not made any
representation or warranty, expressed or implied, as to the accuracy or
completeness of any information regarding Rebeccamycin and its development or
commercialization, as currently conducted or planned, except as expressly set
forth in this Agreement. BMS, its Affiliates, and its and their directors,
officers, employees, agents or contractors shall not have or be subject to any
liability to Exelixis or any other Person resulting from the provision to
Exelixis, or Exelixis' use of, any such information, documents or material made
available to Exelixis in any "data rooms", management presentations or in any
other form in expectation of the transactions contemplated hereby except to the
extent such information, documents or materials is included in the
representations or warranties of BMS expressly set forth in Article 4 of this
Agreement, provided that all such information, documents or material be made
available in their original state, without redaction or alteration.
4.3.3 Except as expressly set forth in the representations and
warranties set forth in Sections 4.1 and 4.2 of this Agreement, (i) there are no
representations or warranties by BMS of any kind, express or implied, with
respect to Rebeccamycin (including without limitation its research, development
or commercialization), (ii) Exelixis is taking the license rights granted
hereunder "as is", "where is" and "with all faults" (except for the liabilities
retained by BMS pursuant to Section 2.5.3(a)), and (iii) BMS NEITHER MAKES OR
EXTENDS ANY OTHER EXPRESS OR IMPLIED REPRESENTATION OR WARRANTY, INCLUDING
WITHOUT LIMITATION ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR OF
FITNESS FOR A PARTICULAR PURPOSE OR USE OF ANY PRODUCT OR ANY REPRESENTATIONS OR
WARRANTIES WITH RESPECT TO INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY
RIGHTS BY REASON OF THE MANUFACTURE, USE OR SALE OF ANY PRODUCT.
4.4 SURVIVAL OF REPRESENTATIONS. The representations and warranties
contained in this Agreement (including the Schedules) and in any other document
delivered in connection herewith shall survive solely for purposes of Article 6
hereof and shall terminate at the third anniversary of the Effective Date.
5. PATENT RIGHTS
5.1 PATENT PROSECUTION, MAINTENANCE AND ENFORCEMENT.
5.1.1 PATENT PROSECUTION AND MAINTENANCE. Exelixis shall have the
first right to control, at its expense and in its sole discretion, the
preparation, filing, prosecution and maintenance of the Listed Patent Rights and
for conducting any interferences, reexaminations, reissues, oppositions, or
request for patent term extension relating thereto. At the reasonable request
of Exelixis, BMS shall provide reasonable assistance to Exelixis in matters
pertaining to the preparation, filing, prosecution and maintenance of the Listed
Patent Rights, including without limitation any interferences, reexaminations,
reissues, oppositions, or request for patent term extension relating thereto,
and [ * ]. If Exelixis elects not to maintain or enforce any Listed Patent
Right and so notifies BMS, then BMS may maintain or enforce such Listed Patents
Right at its own expense, in its own name and entirely under its own direction
and control.
5.1.2 ENFORCEMENT OF PATENT RIGHTS BY EXELIXIS. If either Party
becomes aware of a suspected infringement of the Listed Patent Rights, such
Party shall notify the other Party promptly, and following such notification,
the Parties shall confer. Exelixis shall have the right, but shall not be
obligated, to bring an infringement action at its own expense, in its own name,
and entirely under its own direction and control. BMS will reasonably assist
Exelixis [ * ] in such actions or proceedings if so requested, and will lend its
name to such actions or proceedings if required by law in order for Exelixis to
bring such action. BMS shall have the right to participate and be represented in
any such suit by its own counsel at its own expense. No settlement of any such
action or defense which restricts the scope or affects the enforceability of
Listed Patent Rights may be entered into by Exelixis without the prior consent
of BMS, which consent shall not be unreasonably withheld.
5.1.3 ENFORCEMENT OF PATENT RIGHTS BY BMS. If Exelixis elects not to
bring any action for infringement described in Section 5.1.2 and so notifies
BMS, then, BMS may bring such action or defend such proceeding at its own
expense, in its own name, and entirely under its own direction and control.
Exelixis will reasonably assist BMS [ * ] in any action or proceeding being
prosecuted or defended by BMS, if so requested by BMS or required by law.
Exelixis shall have the right to participate and be represented in any such suit
by its own counsel at its own expense. No settlement of any such action or
defense which restricts the scope or affects the enforceability of Listed Patent
Rights may be entered into by BMS without the prior consent of Exelixis, which
consent shall not be unreasonably withheld
5.2 INFRINGEMENT CLAIMS. If an allegation is made or claim is brought
by a Third Party that any activity related to a Product infringes the
intellectual property rights of such Third Party, each Party will give prompt
written notice to the other Party of such claim.
6. INDEMNIFICATION
6.1 BMS. BMS shall indemnify, defend and hold harmless Exelixis, its
Affiliates, and their respective directors, officers and employees (each an
"Exelixis Indemnitee") from and against any and all liabilities, damages,
losses, costs or expenses (including attorneys' and professional fees and other
expenses of litigation and/or arbitration) ("Liabilities") resulting from a
claim, suit or proceeding made or brought by a Third Party against an Exelixis
Indemnitee arising from or occurring as a result of (i) any breach of the
representations and warranties set forth in Section 4.1 or 4.2, (ii) any claims
based on injury to a Third Party (including death) arising from the manufacture
of Products by BMS and their use prior to the Effective Date, and (iii) any
liability retained by BMS pursuant to Section 2.5.3(a), except to the extent
that Liabilities resulting from (i), (ii), or (iii) were caused by the gross
negligence or willful misconduct of Exelixis.
6.2 EXELIXIS. Exelixis shall indemnify, defend and hold harmless BMS, its
Affiliates, and their respective directors, officers and employees (each a "BMS
Indemnitee") from and against any and all Liabilities resulting from a claim,
suit or proceeding made or brought by a Third Party against a BMS Indemnitee,
arising from or occurring as a result of (i) any breach of the representations
and warranties set forth in Section 4.1, (ii) subject to Section 6.1, any
research, development, marketing, sale, promotion, and other commercialization
activities related to any Products by or for Exelixis or its licensees after the
Effective Date, (iii) the manufacture of any Products by or for Exelixis or its
licensees after the Effective Date or the use of any Products after the
Effective Date by any person or entity, and (iv) any liability retained by
Exelixis pursuant to Section 2.5.3(b), except to the extent that Liabilities
resulting from (i), (ii), (iii) or (iv) were caused by the gross negligence or
willful misconduct of BMS.
6.3 PROCEDURE. In the event that a Party indemnified hereunder (an
"Indemnitee") intends to claim indemnification under this Article 6, such
Indemnitee shall promptly notify the other Party (the "Indemnitor") in writing
of such alleged Liability. The Indemnitor shall have the sole right to control
the defense and settlement thereof. The Indemnitees shall cooperate with the
Indemnitor and its legal representatives in the investigation of any action,
claim or liability covered by this Article 6. The Indemnitee shall not, except
at its own cost and risk, voluntarily make any payment or incur any expense with
respect to any claim or suit without the prior written consent of the
Indemnitor, which the Indemnitor shall not be required to give. The Indemnitor
shall not be required to provide indemnification with respect to a Liability the
defense of which is prejudiced by the failure to give notice by the Indemnitee
or the failure of the Indemnitee to cooperate with the Indemnitor or where the
Indemnitee settles or compromises a Liability without the written consent of the
Indemnitor. Each Party shall cooperate with each other in resolving any claim
or liability with respect to which one party is obligated to indemnify the other
under this Agreement, including without limitation, by making commercially
reasonable efforts to mitigate or resolve any such claim or liability
6.4 LIMITATIONS ON LIABILITY.
6.4.1 BMS and Exelixis each acknowledges and agrees that its sole and
exclusive remedy with respect to any and all claims and causes of action
relating to this Agreement (other than claims of, or causes of action arising
from, fraud or relating to breaches of covenants requiring performance after the
Effective Date) shall be pursuant to the indemnification provisions set forth in
this Article 6, the termination provisions as provided in Article 7 and/or,
where and to the extent permitted by applicable law, specific performance.
6.4.2 Notwithstanding any provision herein, a Party shall in no event be
liable to the other Party or its Affiliates, officers, directors, employees,
stockholders, agents or representatives for any indirect, consequential or
punitive damages (including, but not limited to, lost profits, loss of use,
damage to goodwill or loss of business), unless such damages (i) are owed under
the liable Party's indemnification obligations under Article 6, (ii) breach of
Article 3, or (iii) are due to the gross negligence or willful misconduct of the
liable Party.
7. TERM AND TERMINATION
7.1 TERM. The term of this Agreement shall commence on the Effective
Date and continue until the Agreement is terminated pursuant to Section 7.2.
7.2 MATERIAL BREACH. In the event one Party has materially breached in the
performance of any of its obligations hereunder, and such breach has continued
for [ * ] after written notice thereof was provided to the breaching Party by
the non-breaching Party, the non-breaching Party may terminate this Agreement.
Any termination shall become effective at the end of such [ * ] period unless
the breaching Party has cured any such breach prior to the expiration of the [ *
] period.
7.3 BANKRUPTCY.
7.3.1 All rights and licenses granted under or pursuant to this
Agreement, including amendments hereto, by each Party to the other Party are,
for all purposes of Section 365(n) of Title 11 of the U.S. Code ("Title 11"),
licenses of rights to intellectual property as defined in Title 11. Each Party
agrees during the term of this Agreement to create and maintain current copies
or, if not amenable to copying, detailed descriptions or other appropriate
embodiments, to the extent feasible, of all such intellectual property. If a
case is commenced by or against either Party (the "Bankrupt Party") under Title
11, then, unless and until this Agreement is rejected as provided in Title 11,
the Bankrupt Party (in any capacity, including debtor-in-possession) and its
successors and assigns (including, without limitation, a Title 11 Trustee)
shall, at the election of the Bankrupt Party made within 60 days after the
commencement of the case (or, if no such election is made, immediately upon the
request of the non-Bankrupt Party) either (i) perform all of the obligations
provided in this Agreement to be performed by the Bankrupt Party including,
where applicable and without limitation, providing to the non-Bankrupt Party
portions of such intellectual property (including embodiments thereof) held by
the Bankrupt Party and such successors and assigns or otherwise available to
them or (ii) provide to the non-Bankrupt Party all such intellectual property
(including all embodiments thereof) held by the Bankrupt Party and such
successors and assigns or otherwise available to them.
7.3.2 If a Title 11 case is commenced by or against the Bankrupt Party
and this Agreement is rejected as provided in Title 11 and the non-Bankrupt
Party elects to retain its rights hereunder as provided in Title 11, then the
Bankrupt Party (in any capacity, including debtor-in-possession) and its
successors and assigns (including, without limitations, a Title 11 Trustee)
shall provide to the non-Bankrupt Party all such intellectual property
(including all embodiments thereof) held by the Bankrupt Party and such
successors and assigns or otherwise available to them immediately upon the
non-Bankrupt Party's written request therefor. Whenever the Bankrupt Party or
any of its successors or assigns provides to the non-Bankrupt Party any of the
intellectual property licensed hereunder (or any embodiment thereof) pursuant to
this Section 7.3, the non-Bankrupt Party shall have the right to perform the
obligations of the Bankrupt Party hereunder with respect to such intellectual
property, but neither such provision nor such performance by the non-Bankrupt
Party shall release the Bankrupt Party from any such obligation or liability for
failing to perform it.
7.3.3 All rights, powers and remedies of the non-Bankrupt Party
provided herein are in addition to and not in substitution for any and all other
rights, powers and remedies now or hereafter existing at law or in equity
(including, without limitation, Title 11) in the event of the commencement of a
Title 11 case by or against the Bankrupt Party. The non-Bankrupt Party, in
addition to the rights, power and remedies expressly provided herein, shall be
entitled to exercise all other such rights and powers and resort to all other
such remedies as may now or hereafter exist at law or in equity (including,
without limitation, under Title 11) in such event. The Parties agree that they
intend the foregoing non-Bankrupt Party rights to extend to the maximum extent
permitted by law and any provisions of applicable contracts with Third Parties,
including without limitation for purposes of Title 11, (i) the right of access
to any intellectual property (including all embodiments thereof) of the Bankrupt
Party or any Third Party with whom the Bankrupt Party contracts to perform an
obligation of the Bankrupt Party under this Agreement, and, in the case of the
Third Party, which is necessary for the development, registration and
manufacture of licensed products and (ii) the right to contract directly with
any Third Party described in (i) in this sentence to complete the contracted
work. Any intellectual property provided pursuant to the provisions of this
Section 7.3 shall be subject to the licenses set forth elsewhere in this
Agreement and the payment obligations of this Agreement, which shall be deemed
to be royalties for purposes of Title 11.
7.4 EFFECT OF TERMINATION OR EXPIRATION. Termination or expiration of
this Agreement for any reason shall not release either Party hereto from any
liability which, at the time of such termination or expiration, has already
accrued to the other Party or which is attributable to a period prior to such
termination or expiration or preclude either Party from pursuing any rights and
remedies it may have hereunder or at law or in equity with respect to any breach
of, or default under, this Agreement. It is understood and agreed that monetary
damages may not be a sufficient remedy for any breach of this Agreement and that
the non-breaching Party may be entitled to specific performance as a partial
remedy for any such breach.
7.5 SURVIVAL. Articles 1, 3, 4 (where the Agreement is terminated by
Exelixis), 5, 6, and 8 and Sections 2.1 (except where terminated by BMS for
material breach under Section 7.2 by Exelixis of its obligations under Sections
2.5.3, 2.5.4, 2.7, or 6.2, breach of its representations and warranties under
Section 4.1), 2.6, 7.4, and 7.5 of this Agreement shall survive expiration or
termination of this Agreement for any reason.
8. MISCELLANEOUS
8.1 GOVERNING LAW. Resolution of all disputes arising out of or
related to this Agreement or the performance, enforcement, breach or termination
of this Agreement and any remedies relating thereto, shall be governed by and
construed under the substantive laws of the State of California, as applied to
agreements executed and performed entirely in the State of California by
residents of the State of California, without regard to conflicts of law rules;
provided, however, that resolution of all disputes arising out of or related to
the performance, enforcement or breach of Section 2.7 of this Agreement and any
remedies relating thereto shall be governed by and construed under the
substantive laws of the State of New York, as applied to agreements executed and
performed entirely in the State of New York by residents of the State of New
York, without regard to conflicts of law rules.
8.2 PATENTS. Any dispute, controversy or claim relating to the scope,
validity, enforceability or infringement of any BMS Patent Rights covering the
manufacture, use or sale of any Products shall be submitted to a court of
competent jurisdiction in the territory in which such Patent or trademark rights
were granted or arose.
8.3 CONSENTS NOT UNREASONABLY WITHHELD OR DELAYED. Whenever provision is
made in this Agreement for either Party to secure the consent or approval of the
other, that consent or approval shall not unreasonably be withheld or delayed,
and whenever in this Agreement provisions are made for one Party to object to or
disapprove a matter, such objection or disapproval shall not unreasonably be
exercised.
8.4 MAINTENANCE OF RECORDS. Each Party shall keep and maintain all records
required by law or regulation with respect to Products and shall make copies of
such records available to the other Party upon request.
8.5 INDEPENDENT CONTRACTORS. The relationship of the Parties hereto is that
of independent contractors. The Parties hereto are not deemed to be agents,
partners or joint venturers of the others for any purpose as a result of this
Agreement or the transactions contemplated thereby.
8.6 ASSIGNMENT. Neither Party may assign or transfer this Agreement or any
rights or obligations hereunder without the prior written consent of the other,
except a Party may make such an assignment without the other Party's consent to
an Affiliate or to a successor to substantially all of the business of such
Party, whether in a merger, sale of stock, sale of assets or other transaction;
provided, that any such permitted successor or assignee of rights and/or
obligations hereunder shall, in a writing to the other Party, expressly assume
performance of such rights and/or obligations. Any permitted assignment shall
be binding on the successors of the assigning Party. Any assignment or
attempted assignment by either Party in violation of the terms of this Section
8.6 shall be null and void and of no legal effect.
8.7 BINDING EFFECT. This Agreement shall be binding upon and inure to the
benefit of the Parties and their successors and permitted assigns.
8.8 NOTICES. Any notice required or permitted to be given under this
Agreement shall be in writing, shall specifically refer to this Agreement and
shall be deemed to have been sufficiently given for all purposes if mailed by
first class certified or registered mail, postage prepaid, express delivery
service or personally delivered. Unless otherwise specified in writing, the
mailing addresses of the Parties shall be as described below.
For Exelixis: Exelixis, Inc.
170 Harbor Way
P.O. Box 511
South San Francisco, CA 94083
Attention: Chief Executive Officer
With a copy to: Cooley Godward LLP
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306
Attention: Robert L. Jones, Esq.
For BMS: Bristol-Myers Squibb Pharmaceutical Research Institute
Route 206 and Province Line Road
Princeton, NJ 08543-4000
Attention: Senior Vice President - External Development
With a copy to: Bristol-Myers Squibb Pharmaceutical Research Institute
Route 206 and Province Line Road
Princeton, NJ 08543-4000
Attention: Vice President and Senior Counsel - BMSPRI
8.9 FORCE MAJEURE. Both Parties shall be excused from the performance
of their obligations under this Agreement to the extent that such performance is
prevented by force majeure and the nonperforming Party promptly provides notice
of the prevention to the other Party. Such excuse shall be continued so long as
the condition constituting force majeure continues and the nonperforming Party
takes reasonable efforts to remove the condition. For purposes of this
Agreement, force majeure shall include conditions beyond the control of the
Parties, including without limitation, an act of God, voluntary or involuntary
compliance with any regulation, law or order of any government, war, civil
commotion, labor strike or lock-out, epidemic, failure or default of public
utilities or common carriers, destruction of production facilities or materials
by fire, earthquake, storm or like catastrophe; provided, however, the payment
of invoices due and owing hereunder shall not be delayed by the payer because of
a force majeure affecting the payer.
8.10 ADVICE OF COUNSEL. BMS and Exelixis have each consulted counsel of
their choice regarding this Agreement, and each acknowledges and agrees that
this Agreement shall not be deemed to have been drafted by one Party or another
and shall be construed accordingly.
8.11 COMPLIANCE WITH LAWS. Subject to Article 3, Party shall use reasonable
efforts to furnish to the other Party any information reasonably requested or
required by that Party during the term of this Agreement or any extensions
hereof to enable that Party to comply with the requirements of any U.S. or
foreign federal, state and/or government agency that is consistent with the
license rights granted hereunder.
8.12 FURTHER ASSURANCES. At any time or from time to time on and after the
date of this Agreement, either Party shall at the request of the other Party
hereto (i) subject to the provisions of Article 3, deliver to the requesting
Party any records, data or other documents consistent with the provisions of
this Agreement, and (ii) execute, and deliver or cause to be delivered, all such
consents, documents or further instruments of transfer or license.
8.13 RETAINED RIGHTS; NO FURTHER RIGHTS. Only the licenses granted pursuant
to the express terms of this Agreement shall be of any legal force or effect.
No other license rights shall be granted or created by implication, estoppel or
otherwise.
8.14 SEVERABILITY. In the event that any provision of this Agreement is
determined to be invalid or unenforceable by a court of competent jurisdiction,
the remainder of the Agreement shall remain in full force and effect without
said provision. In such event, the Parties shall in good faith negotiate a
substitute clause for any provision declared invalid or unenforceable, which
shall most nearly approximate the intent of the Parties in entering this
Agreement.
8.15 WAIVER. It is agreed that no waiver by either Party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
8.16 COMPLETE AGREEMENT. This Agreement, along with the CCA, the Stock
Purchase Agreement between BMS and Exelixis dated July 17, 2001, and the NCI
Agreement, constitutes the entire agreement, both written and oral, between the
Parties with respect to the subject matter hereof, and all prior agreements
respecting the subject matter hereof, either written or oral, expressed or
implied, are superseded hereby, merged and canceled, and are null and void and
of no effect. No amendment or change hereof or addition hereto shall be
effective or binding on either of the Parties hereto unless reduced to writing
and duly executed on behalf of both Parties. For clarity, the termination of
this Agreement does not affect in any way either the CCA or the Stock Purchase
Agreement between BMS and Exelixis dated July 17, 2001.
8.17 USE OF NAME. Except as required by law, neither Party shall use the
name or trademarks of the other Party without the prior written consent of such
other Party.
8.18 HEADINGS. The captions to the several sections and articles hereof are
not a part of this Agreement, but are included merely for convenience of
reference only and shall not affect its meaning or interpretation.
8.19 COUNTERPARTS. This Agreement may be executed in two (2) counterparts,
each of which shall be deemed an original and which together shall constitute
one instrument.
[Rest of Page Intentionally Left Blank]
IN WITNESS WHEREOF, BMS and Exelixis have executed this Agreement by their
respective duly authorized representatives as of the Effective Date.
BRISTOL-MYERS SQUIBB COMPANY EXELIXIS, INC.
By: /s/ Elliott Sigal By: /s/ Geoffrey Duyk
------------------------------------------ -------------------
Title: Sr. Vice President Drug Discovery Title: CSO
---------------------------------------- -------------------
& Exploratory Development
- ----------------------------------------------
Date: July 17, 2001 Date: 7/20/01
----------------- -------------------
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT 1.7
PATENTS (BMY-027557 Rebaccamycin Analog)
COUNTRY DESIGNATION PATENT NUMBER EXPIRATION DATE
- -------------------- -------------- ----------------
United States
[ * ] 4,785,085 Nov. 21, 2006
- ------------------------------------------------- ------------- ---------------
United States
[ * ] 4,808,613 Nov. 21, 2006
- ------------------------------------------------- ------------- ---------------
Australia 614068 Nov. 12, 2007
- ------------------------------------------------- ------------- ---------------
Austria 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Belgium 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Canada 1287349 Aug. 6, 2008
- ------------------------------------------------- ------------- ---------------
China 23842 Nov. 20, 2002
- ------------------------------------------------- ------------- ---------------
Cyprus Republic 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Czech Republic 265248 Nov. 17, 2002
- ------------------------------------------------- ------------- ---------------
Denmark 165986 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
European Patent 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Finland 86189 Nov. 18, 2007
- ------------------------------------------------- ------------- ---------------
France 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Germany 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Great Britain 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Greece 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Hong Kong 490/1993 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Hungary 201773 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Ireland 60595 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Israel 84515 Nov. 18, 2007
- ------------------------------------------------- ------------- ---------------
Italy 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
South Korea 42361 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Luxembourg 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Malaysia MY102722A Sept.30, 2007
- ------------------------------------------------- ------------- ---------------
Mexico 181199 Nov. 21, 2006
- ------------------------------------------------- ------------- ---------------
Netherlands 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
New Zealand 222544 Nov. 13, 2007
- ------------------------------------------------- ------------- ---------------
Norway 167741 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Portugal 86188 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Singapore 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
South Africa 87/8714 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Spain 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Sweden 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Switzerland 0269025 Nov. 20, 2007
- ------------------------------------------------- ------------- ---------------
Taiwan 049467 Nov. 18, 2005
- ------------------------------------------------- ------------- ---------------
PATENTS (BMY-027557 REBECCAMYCIN ANALOG SOLUTION)
COUNTRY DESIGNATION PATENT NUMBER EXPIRATION DATE
- ------------------------------------------------- ------------- ---------------
United States
[ * ] 5,496,809 March 5, 2013
- ------------------------------------------------- ------------- ---------------
Australia 618896 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Austria 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Belgium 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Canada 2015632 Apr. 27, 2010
- ------------------------------------------------- ------------- ---------------
China 90102658 May 9, 2005
- ------------------------------------------------- ------------- ---------------
Czech Republic 283416 May 7, 2010
- ------------------------------------------------- ------------- ---------------
Denmark 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
European Patent 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Finland 95777 May 7, 2010
- ------------------------------------------------- ------------- ---------------
France 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Germany 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Great Britain 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Greece 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Hong Kong 1005033A May 9, 2010
- ------------------------------------------------- ------------- ---------------
Hungary 206627 May 10, 2010
- ------------------------------------------------- ------------- ---------------
Ireland 66515 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Israel 94312 May 7, 2010
- ------------------------------------------------- ------------- ---------------
Italy 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Japan 1918587 May 9, 2010
- ------------------------------------------------- ------------- ---------------
South Korea 054248 May 8, 2010
- ------------------------------------------------- ------------- ---------------
Liechtenstein 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Luxembourg 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Malaysia MY105696 Nov. 30, 2009
- ------------------------------------------------- ------------- ---------------
Netherlands 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
New Zealand 233512 May 1, 2010
- ------------------------------------------------- ------------- ---------------
Norway 176390 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Portugal 93991 Sep. 2, 2011
- ------------------------------------------------- ------------- ---------------
Russian Fed 2053766 May 8, 2010
- ------------------------------------------------- ------------- ---------------
South Africa 90/3535 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Spain 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Sweden 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Switzerland 0397147 May 9, 2010
- ------------------------------------------------- ------------- ---------------
Taiwan 061465 Mar. 20, 2008
- ------------------------------------------------- ------------- ---------------
2.
1.
EXHIBIT 4.2
INDIVIDUALS
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
TABLE OF CONTENTS
PAGE
1. Definitions . . . . . . . . . . . . . . . . . . 1
2. Licenses And Obligations. . . . . . . . . . . . 2
2.1 Licenses to Exelixis. . . . . . . . . . . . . . 2
2.2 License to BMS. . . . . . . . . . . . . . . . . 3
2.3 Negative Covenants. . . . . . . . . . . . . . . 3
2.4 Transfer of BMS Know-How. . . . . . . . . . . . 3
2.5 Clinical Trial Development. . . . . . . . . . . 3
2.6 Identification of Manufacturer. . . . . . . . . 5
2.7 Non-solicitation and Non-hire . . . . . . . . . 5
3. Confidentiality . . . . . . . . . . . . . . . . 6
3.1 Nondisclosure of Confidential Information . . . 6
3.2 Exceptions. . . . . . . . . . . . . . . . . . . 6
3.3 Authorized Disclosure . . . . . . . . . . . . . 6
4. Representations And Warranties. . . . . . . . . 7
4.1 Mutual Warranties . . . . . . . . . . . . . . . 7
4.2 BMS Warranties. . . . . . . . . . . . . . . . . 7
4.3 No Additional Representations . . . . . . . . . 8
4.4 Survival of Representations . . . . . . . . . . 9
5. Patent Rights . . . . . . . . . . . . . . . . . 9
5.1 Patent Prosecution, Maintenance and Enforcement.. 9
5.2 Infringement Claims . . . . . . . . . . . . . . 10
6. Indemnification . . . . . . . . . . . . . . . . 10
6.1 BMS . . . . . . . . . . . . . . . . . . . . . . 10
6.2 Exelixis. . . . . . . . . . . . . . . . . . . . 10
6.3 Procedure . . . . . . . . . . . . . . . . . . . 10
6.4 Limitations on Liability. . . . . . . . . . . . 11
7. Term And Termination. . . . . . . . . . . . . . 11
7.1 Term. . . . . . . . . . . . . . . . . . . . . . 11
7.2 Material Breach . . . . . . . . . . . . . . . . 11
7.3 Bankruptcy. . . . . . . . . . . . . . . . . . . 11
7.4 Effect of Termination or Expiration . . . . . . 12
7.5 Survival. . . . . . . . . . . . . . . . . . . . 13
8. Miscellaneous . . . . . . . . . . . . . . . . . 13
8.1 Governing Law . . . . . . . . . . . . . . . . . 13
8.2 Patents . . . . . . . . . . . . . . . . . . . . 13
8.3 Consents Not Unreasonably Withheld or Delayed . 13
8.4 Maintenance of Records. . . . . . . . . . . . . 13
8.5 Independent Contractors . . . . . . . . . . . . 13
8.6 Assignment. . . . . . . . . . . . . . . . . . . 13
8.7 Binding Effect. . . . . . . . . . . . . . . . . 14
8.8 Notices . . . . . . . . . . . . . . . . . . . . 14
8.9 Force Majeure . . . . . . . . . . . . . . . . . 14
8.11 Compliance with Laws. . . . . . . . . . . . . . 15
8.12 Further Assurances. . . . . . . . . . . . . . . 15
8.13 Retained Rights; No Further Rights. . . . . . . 15
8.14 Severability. . . . . . . . . . . . . . . . . . 15
8.15 Waiver. . . . . . . . . . . . . . . . . . . . . 15
8.16 Complete Agreement. . . . . . . . . . . . . . . 15
8.17 Use of Name . . . . . . . . . . . . . . . . . . 15
8.18 Headings. . . . . . . . . . . . . . . . . . . . 15
8.19 Counterparts. . . . . . . . . . . . . . . . . . 16
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.