1
Portions of this Exhibit 10.2 have been redacted and are the subject of a
confidential treatment request filed with the Secretary of the Securities and
Exchange Commission.
2
COLLABORATIVE RESEARCH, DEVELOPMENT
AND COMMERCIALIZATION AGREEMENT
BETWEEN: BIOCHEM PHARMA (INTERNATIONAL) INC., a
corporation incorporated under the laws of Canada and
having its registered office at Commerce Court West,
Suite 5300, Toronto, Ontario, M5L 1B9 (hereinafter
called "BioChem").
AND: ONCOGENE SCIENCE, INC., a corporation
incorporated under the laws of Delaware and having its
principal place of business at 106 Charles Lindbergh
Boulevard, Uniondale, New York, 11553 (hereinafter
called "Oncogene").
WHEREAS each of BioChem and its Affiliates and Oncogene and its Affiliates is
currently conducting research in respect of antiviral agents which target
certain illnesses;
WHEREAS BioChem and its Affiliates, on the one hand, and Oncogene and its
Affiliates, on the other hand, have decided to collaborate and combine their
efforts in connection with the research, development and commercialization of
antiviral agents which primarily target protein/nucleic interactions for the
treatment of certain illnesses;
WHEREAS BioChem and its Affiliates and Oncogene and its Affiliates are willing
to use their research facilities, scientists, research assistants, technicians
and other personnel to conduct their obligations under this Agreement.
NOW THEREFORE, THE PARTIES AGREE AS FOLLOWS:
ARTICLE 1
INTERPRETATION
1.1 Defined terms. In this Agreement, unless the context or subject matter is
inconsistent therewith, the following terms and expressions shall have the
following meanings:
(a) "Acquisition" shall have the meaning ascribed thereto at Section
8.2(f) hereof.
(b) "Affiliate" shall mean, with respect to any Person (including a
Party), any other Person which directly or indirectly controls or is
controlled by, or is under direct or indirect common control with,
such first mentioned Person or any Person which is directly or
indirectly controlled by a Person which controls
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the first mentioned Person; for the purpose of this definition,
"control" shall mean, with respect to any Person (including any
Party), the ownership of more than 50% of the voting shares or other
voting equity of that Person.
(c) "Agreement" shall mean this collaborative research, development and
commercialization agreement and all instruments supplemental hereto or
in amendment or in confirmation hereof; "herein", "hereof", "hereto",
"hereunder" and similar expressions mean and refer to this Agreement
and not to any particular article, section, subsection or other
subdivision; "article", "section", "subsection" or other subdivision
of this Agreement shall mean and refers to the specific article,
section, subsection or other said subdivision of this Agreement.
(d) "BioChem Confidential Information" shall mean all confidential
information disclosed to Oncogene verbally and subsequently confirmed
in writing as "confidential" or designated as "confidential" by
Biochem or its Affiliates at the time of disclosure to Oncogene, to
the extent that such information as of the date of disclosure to
Oncogene is not (i) demonstrably known to Oncogene as evidenced by
written documentation other than by virtue of a prior confidential
disclosure to Oncogene by BioChem or its Affiliates, or (ii) disclosed
in the published literature or otherwise to the public through no
fault of Oncogene, its Affiliates, employees or consultants, or (iii)
obtained from an independent Third party without binder of secrecy,
provided that such independent Third Party has no obligation of
confidentiality to BioChem or its Affiliates.
(e) "BioChem Technology" shall mean and include all technology and
technical information willing to a Lead Compound or used or furnished
by BioChem and/or its Affiliates in respect of the performance by it
of its obligations hereunder, including all inventions, chemical
structures and methods for synthesis, structure-activity
relationships, assay methodology, methods, processes, formulae, plans,
specifications, characteristics, equipment and equipment designs, know
how, trade secrets, discoveries, results, formulations and biological,
toxicological and clinical data and physical, chemical or biological
material which are developed by employees of, or consultants to,
BioChem and/or its Affiliates, prior to or during the term of this
Agreement or acquired by purchase, license, assignment or other means
from third parties prior to or during the term of this Agreement that
is not Joint Technology, but only to the extent that BioChem or its
Affiliates is legally entitled to disclose such Technology and
technical information and use it in connection with the performance by
it of its obligations hereunder.
(f) "Commercial Product" shall mean any and all products in Final
Pharmaceutical Form emanating from Lead Compounds and any and all
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formulations, mixtures or compositions thereof emanating from the
Research Program pursued pursuant to this Agreement, the making or use
of which embodies any of BioChem Technology, Oncogene Technology or
Joint Technology and in respect of which BioChem and Oncogene each has
rights to commercialize pursuant to this Agreement or any other
agreement executed between the Parties in furtherance to this
Agreement.
(g) "Commercialization Agreement" shall have the meaning ascribed thereto
at Section 6.2 hereof.
(h) "Commitment Year" shall mean each calendar year during the term of
this Agreement and, in respect of the First Commitment Year, the
period commencing on the Effective Date and terminating on December
31, 1996.
(i) "Compound" shall mean any compound in connection with the Field being
analyzed by the Parties pursuant to the Research Program or developed
by BioChem and Oncogene and/or their respective Affiliates pursuant to
the provisions of this Agreement.
(j) "Confidential Information" shall mean BioChem Confidential Information
or Oncogene Confidential Information, as the case may be.
(k) "Deficiency Amount" shall have the meaning ascribed thereto at Section
2.4.1 hereof.
(l) "Development Candidate" shall mean a Lead Compound which has been
designated by the Joint Steering Committee as a potential Commercial
Product and which should be the subject of a Development Program.
(m) "Development Program" shall mean the written development plan to be
prepared and approved by the Joint Steering Committee describing the
development and other obligations of each Party in respect of the
development of any Compound for preclinical and clinical development,
which plan shall be approved by the Joint Development Committee no
later than ninety (90) days following the declaration by the Joint
Steering Committee that a Lead Compound has been designated as a
Development Candidate, failing which the matter shall be referred to
the President of BioChem and the Chief Executive Officer of Oncogene
for discussion and resolution.
(n) "Effective Date" shall mean May 1, 1996.
(o) "Electing Party" shall have the meaning ascribed thereto at Section
9.1 hereof.
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(p) "Election Notice" shall have the meaning ascribed thereto at Section
9.1 hereof.
(q) "Event of Termination" shall have the meaning ascribed thereto at
Section 8.2 hereof.
(r) "FDA" shall mean the United States Food and Drug Administration.
(s) "Field" shall mean, unless otherwise determined by the Joint Steering
Committee pursuant to Section 2.2, Hepatitis C ("HCV") and Human
Immunodeficiency Virus ("HIV") and such other viral targets designated
by the Joint Steering Committee.
(t) "Final Pharmaceutical Form" shall mean any presentation of a
Commercial Product in any final packaged and labelled pharmaceutical
dosage form suitable for sale to and use by an end user.
(u) "Full Development" shall mean the first of the two events described at
Section 6.2 to occur.
(v) "Indemnified Party" shall have the meaning ascribed thereto at Section
5.10 hereof.
(v) "Indemnified Party" shall have the meaning ascribed thereto at Section
5.10 hereof.
(w) "Indemnifying Party" shall have the meaning ascribed thereto at
Section 5.10 hereof.
(x) "Independent Third Party" shall mean any Person other than BioChem,
Oncogene and/or any of their respective Affiliates.
(y) "Initial Term" shall have the meaning ascribed thereto at Section 8.1
hereof.
(z) "Joint Development Committee" or "JDC" shall have the meaning ascribed
thereto at Section 6.1 hereof.
(aa) "Joint Research Committee" or "JRC" shall have the meaning ascribed
thereto at Section 2.4 hereof.
(ab) "Joint Steering Committee" or "JSC" shall have the meaning ascribed
thereto at Section 2.4 hereof.
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(ac) "Joint Technology" shall mean and include all technology and
information including all inventions, chemical structures and methods
for synthesis, structure-activity relationships, assay methodology,
methods, processes, formulae, plans, specifications, characteristics,
equipment and equipment designs, know how, trade secrets, discoveries,
formulations and biological, toxicological and clinical data which are
developed jointly by employees of, or consultants to, BioChem and
Oncogene, or, solely in respect of the Field, licensed by either of
the Parties or on behalf of the Parties during the term of this
Agreement, such that BioChem and Oncogene, each having contributed to
the development of such technology and technical information, owns an
undivided interest therein.
(ad) "Lead Compound" shall mean, subject to the provisions of Section 2.16,
any Compound designated as a Lead Compound by the Joint Steering
Committee and which has demonstrated such properties of chemical
structure, potency, mechanism of action, selectivity and
non-cytotoxicity as deemed necessary by the JSC for such Compound to
be a potential candidate for chemical optimization studies.
(ae) "Net Invoiced Sales Value" shall mean the gross invoice price charged
for Commercial Products sold by BioChem, Oncogene and/or their
respective Affiliates and sublicensees to Independent Third Parties,
less all allowances or credits granted on such sales, including those
in respect of rejected or returned goods, recalls, transportation
charges or allowances, insurance charges, normal and customary trade,
quantity and trade discounts, and taxes or other governmental charges
on, or measured by, the sale, transportation, or use of Commercial
Products, which BioChem, Oncogene and/or their respective Affiliates
and sublicensees have to pay or absorb on such sales.
(af) "Net Sales" shall mean in the case of any Commercial Products sold in
a particular country by either Party and/or their respective
Affiliates and sublicensees in Final Pharmaceutical Form to an
Independent Third Party:
(i) uncompounded with any other active ingredient, the Net Invoiced
Sales Value of such Commercial Products;
(ii) compounded with any other active therapeutic ingredient, the
value of the total declared amount of the Commercial Product
contained therein, as agreed by discussions between BioChem and
Oncogene; if the value cannot be agreed upon there it should be
decided by an independent accountant mutually acceptable to
BioChem and Oncogene, whose decision shall be binding upon them;
and
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(iii) in bulk, the Net Invoiced Sales Value of such Commercial Product
sold to said Independent Third Party in Final Pharmaceutical
Form.
(ag) "Non-Electing Party" shall have the meaning ascribed thereto at
Section 9.1 hereof.
(ah) "Notice" shall have the meaning ascribed thereto at Section 9.1
hereof.
(ai) "Notice of Opportunity" shall have the meaning ascribed thereto at
Section 9.1 hereof.
(aj) "Notifying Party" shall have the meaning ascribed thereto at Section
9.2 hereof.
(ak) "Oncogene Confidential Information" shall mean all confidential
information disclosed to BioChem verbally and subsequently confirmed
in writing as "confidential" or designated as "confidential" by
Oncogene or its Affiliates at the time of disclosure to BioChem, to
the extent that such information as of the date of disclosure to
BioChem is not (i) demonstrably known to BioChem as evidenced by
written documentation other than by virtue of a prior confidential
disclosure to BioChem by Oncogene or its Affiliates, or (ii) disclosed
in the published literature or otherwise to the public through no
fault of BioChem, its Affiliates, employees or consultants, or (iii)
obtained from an Independent Third Party without binder of secrecy,
provided that such Independent Third Party has no obligation of
confidentiality to Oncogene or its Affiliates.
(al) "Oncogene Technology" shall mean and include all technology and
technical information relating to a Lead Compound or used or furnished
by Oncogene and/or its Affiliates in respect of the performance by it
of its obligations hereunder, including all inventions, chemical
structures and methods for synthesis, structure-activity
relationships, assay methodology, methods, processes, formulae, plans,
specifications, characteristics, equipment and equipment designs, know
how, trade secrets, discoveries, results, formulations and biological,
toxicological and clinical data and physical, chemical or biological
material which are developed by employees of, or consultants to,
Oncogene and/or its Affiliates, prior to or during the term of this
Agreement or acquired by purchase, license, assignment or other means
from third parties prior to or during the term of this Agreement that
is not Joint Technology, but only to the extent that Oncogene or its
Affiliates is legally entitled to disclose such Technology and
technical information and use it in connection with the performance by
it of its obligations hereunder.
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(am) "Parties" shall mean BioChem and Oncogene; and "Party" shall mean any
one of them.
(an) "Patent Expenses" shall mean all external fees and costs incurred by a
Party in financing the activities relating to a Patent Right,
including, without limitation, fees and reasonable attorneys' charges
in connection with the preparation, filing, prosecution, maintenance
and defense of the Patent Rights and translation charges.
(ao) "Patent Rights" shall mean all patents and patent applications,
including any divisional, continuation, continuation-in-part, reissue,
renewal or extension thereof, or substitute therefor, and the letters
patent that may be issued thereon, any registration or confirmation of
such letters patent, relating to any Technology, Lead Compounds or
Commercial Products, their methods of manufacture or uses of
intermediates therefor, or formulations thereof. "Oncogene Patent
Rights" shall mean Patent Rights claiming inventions that are
conceived and reduced to practice solely by employees of Oncogene or
its Affiliates. "Joint Patent Rights" shall mean Patent Rights
claiming inventions that are conceived or reduced to practice jointly
by employees or consultants of Oncogene and employees or consultants
of BioChem and of their respective Affiliates. "BioChem Patent Rights"
shall mean Patent Rights claiming inventions that are conceived and
reduced to practice solely by employees or consultants of BioChem or
its Affiliates.
(ap) "Person" shall mean any individual, corporation, company, cooperative,
partnership, trust, unincorporated association or any other entity
which possesses a juridical personality, including any governmental
authorities or body of competent jurisdiction; and pronouns when
referring to a Person, shall have a similar extended meaning.
(aq) "Program Representative" shall mean an employee of a Party designated
by such Party as its representative for consultation and communication
with the other party. Any Party may change its Program Representative
at any time by written notice given to the other Party or designate
more than one Program Representative provided that each of its
representatives shall be assigned different responsibilities.
(ar) "Renewal Period" shall have the meaning ascribed thereto at section
8.1 hereof.
(as) "Research Program" shall mean the written research plan annexed hereto
as Schedule A, as subsequently revised or replaced by the Joint
Steering Committee, which plan describes the research and other
obligations to be
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carried out during each Commitment Year by each of BioChem and
Oncogene and their Affiliates.
(at) "Secret Information" shall have the meaning ascribed thereto at
Section 4.1 hereof.
(au) "Submitted License" shall have the meaning ascribed thereto at Section
9.1 hereof.
(av) "Target" shall have the meaning ascribed thereto at Section 8.2
hereof.
(aw) "Technology" shall mean, collectively, BioChem Technology, Oncogene
Technology and Joint Technology.
(ax) "Valid Claim" shall mean a claim included among the Joint Patent
Rights so long as such claim shall not have been irrevocably abandoned
or held invalid in a final decision of a court or other authority of
competent jurisdiction.
ARTICLE 2
RESEARCH PROGRAM
2.1 General. Subject to the terms and conditions of this Agreement, each of
BioChem and Oncogene agrees, as of the Effective Date, to undertake and to
cause its Affiliates to undertake, the Research Program and, in the Field,
to collaborate in respect thereof.
2.2 Scope. The scope of the Research Program shall comprise the identification,
research and development of Lead Compounds derived from BioChem Technology,
Oncogene Technology and Joint Technology or which may be contained in any
compound library prepared by or on behalf of any Party or to which the
Parties and their Affiliates hereto have access to in respect of the Field.
The scope of the Research Program shall also comprise any derivatives, or
families of derivatives, which may result from the research performed
during the term of this Agreement, pursuant to the Research Program and
extend to any other antiviral targets identified by the Joint Steering
Committee.
2.3 General Obligations of the Parties. During the term of this Agreement, the
Parties hereto hereby agree to diligently pursue, and to cause their
respective Affiliates to diligently pursue, the Research Program and to do
the following:
(a) Each of BioChem and Oncogene and/or their respective Affiliates has
synthesized and isolated and/or shall continue to synthesize and/or
isolate Compounds within the Field.
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(b) Each of BioChem and Oncogene and/or their respective Affiliates shall
provide the other Party with information concerning, and, if required
by the JRC, with samples of, Compounds falling within the Field,
including those which pass primary screening in order that the other
Party may collaborate in the evaluation for potential activity as
antiviral agents which target the Field.
(c) Each of BioChem and Oncogene shall aid, and shall cause their
respective Affiliates to aid, the other Party in the fulfillment of
its obligations hereunder, provide structural chemistry analysis and
access to combinatorial chemistry technology and scale up potential
antiviral Compounds for in vitro and in vivo studies, as well as
provide through in vitro and in vivo evaluations, toxicity and
mechanisms of action studies in order to select, as promptly as
possible, Lead Compounds for development.
(d) Each of BioChem and Oncogene shall provide to the other Party access
to appropriate discovery technologies.
(e) Each of BioChem and Oncogene shall provide to the other Party access,
limited for use or access by such other Party in the Field to compound
libraries made by it or on its behalf or to which it has access to in
connection with the conduct of the Research Program.
(f) Each of BioChem and Oncogene shall provide to the other Party access
to all Technology within its control or within the control of its
Affiliates, including technology licensed from Independent Third
Parties to the extent permitted to do so.
(g) Each of BioChem and Oncogene shall, and each shall cause its
Affiliates to, conduct research and development activities in respect
of targets identified by the JSC.
(h) BioChem and Oncogene agree, on their behalf and on behalf of their
respective Affiliates, (i) to fulfil their respective obligations
under, and pursue the goals of, the Research Program and (ii) to
perform their responsibilities as outlined in the Research Program or
allocated to it by the Joint Steering Committee.
(i) Each of BioChem and Oncogene agrees to provide laboratory facilities
and equipment and research staff in accordance with the provisions
hereof to fulfil its obligations hereunder and to give effect to the
intention of the Parties to collaborate in the research and
development of Compounds.
(j) Oncogene shall provide BioChem and/or its Affiliates with technology
transfer and access to technological know how related to existing
robotic screening technology, to permit the implementation of
necessary screening infrastructures,
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the whole in accordance with the Technology Transfer and License
Agreement to be negotiated diligently and in good faith by the parties
and to be annexed hereto as Schedule B.
2.4 Joint Steering Committee.
2.4.1 Purpose. A steering committee (the "Joint Steering Committee" or
"JSC") is hereby established by BioChem and Oncogene to manage all
business and commercial aspects between the Parties pursuant to this
Agreement (including financial planning, resource allocation,
prioritization, addition of new targets within the Field), agree
upon and assign responsibilities (other than specific scientific
tasks) within the Research Program to each Party, approve the annual
budgets to be spent by each Party during any Commitment Year and
review and monitor work conducted by the Joint Research Committee
and to process and approve technical and scientific recommendations
of both the JRC and JDC. In particular, the JSC will be responsible,
throughout the term of this Agreement, for (i) reviewing the
Research Program and revising it as necessary, (ii) for preparing,
monitoring and revising on an annual basis the budgets necessary for
the performance by the Parties of their obligations pursuant to the
Research Program and this Agreement, (iii) monitoring the
fulfillment by each Party of its obligations pursuant to this
Agreement, (iv) designating any Compounds as Lead Compounds, (v)
determining the allocation between the Parties of their resources in
connection with the conduct of the Research Program, (vi)
designating Development Candidates, (vii) negotiating and
soliciting, if appropriate, third parties to collaborate for
purposes of conducting the Research Program, (viii) determining on
an annual basis the amount, if any, (the "Deficiency Amount") in
order that contributions of both Parties during any Commitment Year
referred to in Section 2.8 be approximately the same, and (ix)
determining the rules and principles applicable for purposes of the
accounting and maintenance of books and records by both Parties
including harmonization of the Canadian and American GAP. Either
Party may in committee propose that the Parties commence development
of a promising Lead Compound.
2.4.2 Expansion of Research Program. Save for the first Commitment Year,
in which case the Research Program is defined as set out in Schedule
A of this Agreement and a general outline in respect of the other
Commitment Years, the JSC shall define the Research Program in each
Commitment Year and amend, if it deems appropriate, the Field.
2.4.3 Composition. BioChem and Oncogene each shall appoint, in their sole
discretion, two (2) members to the JSC. Alternates or replacements
of any Party may be appointed by such Party at any time by notice to
the other Party. Initially the members shall be:
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for BioChem: *
for Oncogene: *
2.4.4 Voting. Each member of the JSC shall have one vote, and decisions
shall be made by unanimity. Where a vote on any decision does not
produce a consensus between all members, the matters at issue shall
be submitted to the President of BioChem and the Chief Executive
Officer of Oncogene for discussion and resolution.
2.4.5 Chair. A Chairperson shall be nominated alternatively by BioChem and
Oncogene for one year terms, the first term being served by a
nominee appointed by Oncogene.
2.4.6 Meetings. Meetings shall be convened at least two times a year at
locations and times determined by a JSC resolution. Representatives
of Oncogene, BioChem, or both, in addition to members of each of the
Parties on the JSC, may attend meetings but shall have no voting
rights. Meetings shall be held alternatively at each Party's
facilities. Minutes of each meeting shall, be prepared by a
representative of the Parties on an alternate basis and distributed
to all members of the JSC within thirty (30) days following any
meeting.
2.4.7 Expenses. The Parties will each bear their own expenses and those
expenses related to the participation of their appointees of the
JSC.
2.5 Joint Research Committee.
2.5.1 Purpose. A research committee (the "Joint Research Committee" or
"JRC") is hereby established by BioChem and Oncogene to (i) review
and discuss scientific questions which may arise in connection with
the execution of the Research Program and scientific inventions,
break throughs or developments in the Field made pursuant to the
Research Program, (ii) manage and deal with such other
responsibilities which may, from time to time, be delegated to it by
the Joint Steering Committee, (iii) recommend to the JSC any
Compound as Lead Compounds, and (iv) recommend to the JSC any Lead
Compounds as Development Candidates.
2.5.2 Composition. BioChem and Oncogene each shall appoint, in their sole
discretion, three (3) members to the JRC. Replacements of any Party
may be
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* This portion redacted pursuant to a request for confidential treatment.
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appointed by such Party at any time by notice to the other Party.
Initially, the members shall be:
for BioChem: *
for Oncogene: *
2.5.3 Decisions. Any decision of the JRC shall require consensus between
all members, failing which the matter of issue shall be submitted to
the Joint Steering Committee for discussion and resolution.
2.5.4 Meetings. Meetings of the JRC shall be held at least four times per
year at locations and times determined unanimously by the JRC.
Minutes of each meeting shall be prepared and distributed to all
members of the JRC.
2.5.5 Reports. During the term of this Agreement, each Party shall cause
its members of the JRC to prepare and submit to the Joint Steering
Committee summary reports within thirty (30) days following the end
of each calendar quarter, describing the progress under the Research
Program during the preceding calendar quarter and recommending any
qualified Compounds to be designated as Lead Compounds.
2.6 Reports. During the term of this Agreement, BioChem and Oncogene each shall
provide to the JSC and to the other Party access to primary data derived or
used in connection with the performance by it of its obligations hereunder
and the following:
(a) minutes of each JSC meeting to be distributed within fifteen (15) days
of each meeting;
(b) on an annual basis and no later than sixty (60) days following the end
of each Commitment Year, a statement of all costs and expenses
incurred by such Party and its Affiliates pursuant to Section 3.1; and
a summary written reports describing the work accomplished under the
Research Program and discussing and evaluating the results of such
work.
2.7 Laboratory Facilities. BioChem and Oncogene each agree to provide, or cause
their respective Affiliates, suitable laboratory facilities and equipment
for carrying out its obligations under the Research Program and this
Agreement.
2.8 Research Staff. Each of BioChem and Oncogene shall, no later than fifteen
(15) days following execution of this Agreement, appoint research team
comprised of such
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* This portion redacted pursuant to a request for confidential treatment.
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number of suitably qualified Ph.D. scientists and other suitable qualified
scientists and other personnel as may be needed and agreed to between the
Parties from time to time each to achieve the goals of the Research
Program, it being understood that over the term of this Agreement, each
Party shall have contributed, in terms of out-of-pocket expenses incurred
by the Parties and their Affiliates (including salaries and such other
costs and expenses referred to in Section 3.1 hereof), approximately
equally in connection with the performance of their obligations under the
Research Program and this Agreement.
2.9 Inspection. BioChem and Oncogene shall each have the right to arrange for
its employees, external consultants, and such other persons as it may
reasonably delegate, to visit the other Party at its offices and
laboratories and to discuss work under the Research Program and its results
in detail with the other Party's Program Representative, the staff, and
consultants of the other Party; provided that such visits are during normal
business hours, have been arranged on not less than five (5) business days
notice and shall not unreasonably interrupt the operations of the other
Party.
2.10 Patent and Confidential Information Agreements. Each of BioChem and
Oncogene shall require all of its employees, all employees of its
Affiliates and all independent Third Parties involved in, or associated
with the Research Program to have executed an agreement for the assignment
of inventions and for the protection of Secret Information in such
reasonable form as may from time to time be used by BioChem and Oncogene
for such purpose.
2.11 Flexibility. In conducting its research and other obligations under this
Agreement, each of BioChem and Oncogene shall have and maintain sufficient
flexibility to allow a shift in effort and emphasis within the Research
Program that will, in the opinion of the JSC, achieve the best results in
the attainment of the objectives of the Research Program.
2.12 Arrangements with Independent Third Parties. Each of BioChem and Oncogene
shall have the right to contract with its Affiliates and Independent Third
Parties for the performance of work, or the provisions of consulting
services, in connection with the Research Program provided that the other
Party shall have the opportunity to review, comment on and approve any such
proposed contract with Independent Third Parties prior to its execution.
Approval of any such contract shall not be unreasonably withheld, and a
response to a request for approval shall be provided within thirty (30)
days after its receipt by the other Party. Each Party will provide the
other Party with a complete copy of each such executed contract. The costs
incurred by any of BioChem or Oncogene, as the case may be, in respect of
such contract and the work and consultation services to be performed
thereunder shall be borne by the Party having contracted with such
Affiliate or Independent Third Party. Each Party represents and warrants to
the other Party that, as at the date hereof, Schedule C
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annexed hereto contains a full list of all arrangements with Independent
Third Parties relating to Technology and hereby agrees to use its best
efforts to obtain consent, where required, to disclose to the other Party
such Technology.
2.13 No Independent Research within the Scope of the Research Program. During
the term of this Agreement, the Parties to this Agreement shall not
undertake independent research, either directly or indirectly through any
Affiliate or any other Person, in any area falling within the Field or
which competes with any Compound being developed pursuant to this Agreement
without the consent of the Joint Steering Committee.
2.14 Other Research Permitted. The Parties and their Affiliates have the right
to conduct research on Compounds and use Joint Technology outside the
Field, notwithstanding their potential utility in the treatment of
illnesses or disorders being the object of the Field, it being understood
that any such Party shall not, in the course of such use or conduct, take
or omit to take any action which would cause prejudice to the other Party.
2.15 Clinical Data. All clinical data obtained from studies conducted pursuant
to the Research Program and the Development Program shall be jointly owned
by BioChem and Oncogene and may be used by either Party and its Affiliates
outside the Field, it being understood that any such Party shall not, in
the course of such use or conduct, take or omit to take any action which
would cause prejudice to the other Party or to the Research Program.
2.16 Lead Compounds. Notwithstanding any provision of this Agreement, if a Lead
Compound is not designated as a Development Candidate within two (2) years
following its designation by the JSC as a Lead Compound, such Lead Compound
shall cease to be considered a Compound within the meaning of this
Agreement and all rights, title and interest to such Compound shall be
returned to the Party having contributed such Compound to the Research
Program and the other Party shall cease to have any right in respect of
such Compound.
ARTICLE 3
COSTS AND EXPENSES OF THE RESEARCH PROGRAM
3.1 Payment of Costs and Expenses. Each Party shall be responsible for all
expenses and costs incurred by it and its employees, its Affiliates and its
consultants in the performance of such Party's obligations hereunder,
including, without limitation, in respect of Patent Expenses relating to
its Patent Rights, salaries of its employees, fees of its consultants,
materials, equipment and administrative expenses and travel costs of its
employees, employees of its Affiliates and consultants. A Party shall
reimburse the other Party one-half of the Deficiency Amount within ninety
(90) days from the end of any year, except in respect of the first three
years of the term of this Agreement where
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such calculation and payment shall be made for such period within thirty
(30) days of the third anniversary date of this Agreement.
ARTICLE 4
SECRET INFORMATION
4.1 General. Each of BioChem and Oncogene recognizes that the other Party's
Confidential Information, BioChem Technology, Oncogene Technology, Joint
Technology and the results of the Research Program (collectively, the
"Secret Information") all constitute highly valuable proprietary
confidential information.
4.2 Treatment of Secret Information.
(a) Subject to the disclosure obligations set forth in this Article 4,
each of BioChem and Oncogene agree that, during the term of this
Agreement, each Party will maintain, and shall cause its Affiliates to
maintain, the Secret Information in confidence and shall not disclose,
divulge or otherwise communicate such Secret Information to
Independent Third Parties (except its own Confidential Information, or
its own Technology), or use it for any purpose except pursuant to, and
in order to carry out the terms and objectives of this Agreement.
Notwithstanding any provision of an Agreement, BioChem and Oncogene
hereby agree that they shall, together with their Affiliates, be
entitled to use, outside of the Field, know how obtained during the
term of this Agreement (other than any information relating to Lead
Compounds).
(b) Each Party further agrees to exercise, and shall cause its Affiliates
to exercise, every reasonable precaution to prevent and restrain the
unauthorized disclosure of such Secret Information by any of its
directors, officers, employees, consultants, subcontractors,
sublicensees or agents or those of its Affiliates.
(c) Each Party shall maintain, and shall cause its Affiliates to maintain,
the other Party's Confidential Information in confidence. During the
term of this Agreement and for a period of ten (10) years thereafter
each Party shall not disclose, divulge or otherwise communicate the
other Party's Confidential Information to Independent Third Parties
except in the event of an assignment by such Party of its rights
hereunder in accordance with the provisions hereof.
4.3 Press Releases and Announcements.
(a) Neither Oncogene or BioChem shall, and Oncogene and BioChem shall
cause their Affiliates not to, issue any press release or other public
announcement relating to or disclosing any Secret Information (other
that its own Confidential Information or its own Technology) without
the prior written consent of the
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other Party, except where such announcements or press releases are
required by law for the purposes of securing the registration of, and
or governmental approval to market, in accordance with this Agreement,
any Commercial Products, or for the procurement of patent protection
of a Joint Patent Right. Notwithstanding the foregoing, each Party
shall have the right to disclose the existence of this Agreement in
any prospectus, offering memorandum or other document or filing
required by applicable securities laws or other applicable law or
regulation.
(b) Where a press release or public announcement is required by law, the
Party required to disclose Secret Information shall inform the other
Party and provide it with a copy of any such press release or public
announcement.
(c) Each of BioChem and Oncogene shall inform the other Party of any
Secret Information which it is required to disclose.
4.4 Contracts with Independent Third Parties. If BioChem or Oncogene or any of
their Affiliates, enters into any contract with an Independent Third Party
involving disclosure of Secret Information, it shall first obtain the
approval of the other Party, and, after signing, provide a copy of such
contract to the other Party.
4.5 Publications. Notwithstanding the provisions of Sections 4.1, 4.2 and 4.3,
a Party or its Affiliates, following review by the JSC and the JRC, may
submit the results obtained in the course of the Research Program for
publication subject to the following applicable restrictions:
(a) the Party intending to publish, directly or indirectly, shall provide
the other Party with a copy of the manuscript (including any abstract)
for any proposed publication or presentation no later than thirty (30)
days prior to the submission of such proposed publication or
presentation to a journal, editor or other Independent Third Party for
the purpose of review and comment. The other Party shall have the
right to request modifications of any manuscript to be published or
presented, if such manuscript will jeopardize a Patent Right, patent,
trade secret, or other proprietary right related to this Agreement. If
the Party intending to publish does not agree with such modification,
the Parties shall consult independent patent counsel satisfactory to
both Parties whose determination shall be final and binding on the
Parties.
(b) If such other Party informs the publishing Party within thirty (30)
days of receipt of an advance copy of a proposed publication that such
publication in its reasonable judgement could be expected to have
material adverse effect on Joint Patent Rights or Secret Information,
the publishing Party shall delay or prevent such publication as
proposed. In the case of inventions, such Party shall delay or cause
the author to delay submission of the work for publication
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or other public disclosure for up to six (6) months after filing of a
patent application.
ARTICLE 5
INTELLECTUAL PROPERTY RIGHTS
5.1 General. The following provisions relate to inventions and know how
developed, directly or indirectly through Affiliates, by BioChem or
Oncogene or BioChem and Oncogene, jointly, during the course of carrying
out the Research Program.
5.2 Research. Except for that which arises within or as a result of the
Research Program and this Agreement, all Technology, information, data,
discoveries and inventions arising and Programs of research carried out by
Oncogene and its Affiliates, on the one hand, or by BioChem and its
Affiliates, on the other hand, and all intellectual property rights
relating thereto shall be the exclusive property of Oncogene or BioChem and
their Affiliates, as the case may be, and shall be returned to such Party
upon termination of this Agreement, except as provided herein.
5.3 Maintenance of Joint Patent Rights. BioChem and Oncogene shall be jointly
responsible for taking all necessary actions to obtain, sustain and enforce
patent protection for joint Patent Rights [excluding patent applications
outside the Field] and for those inventions arising from the Research
Program including, without derogation from the foregoing:
(a) filing applications for patents on any patentable inventions included
within Joint Patent Rights; provided that any Party wishing to file
such application ding reform the other Party and the Joint Steering
Committee regarding countries in which such applications should be
filed; the JSC shall determine which countries where such applications
shall be made;
(b) prosecuting all pending and new patent applications included within
Joint Patent Rights and responding to opposition or any other form of
action for invalidity or revocation of Patent Rights filed by
Independent Third Parties against the grant of patents for such
applications; and
(c) maintaining in force any patents included within Joint Patent Rights
by duly filing all necessary papers and paying any fees required by
the patent laws of the particular country, in which such patents were
granted.
Each Party undertakes to provide all necessary assistance to the JSC and
the other Party to achieve the objectives of this Section 5.3. Both Parties
shall continue, through patent agents, to prosecute and maintain all
relevant patent property, including that in the U.S.A. and Canada, relating
to Technology within the Field in full
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consultation with the JSC. Each Party shall keep the other Party informed
as to all developments with respect to Joint Patent Rights by copying all
documents and correspondence related to such protection and maintenance.
If the JSC decides to abandon a patent application or an issued patent
included within Joint Patent Rights, any Party whose appointees on the JSC
shall have voted against such abandonment shall have the option, at its
expense, of continuing to prosecute any such patent application or of
keeping the issued patent in force. If a Party so elects to file, at its
own expense, patent applications in respect of Joint Patent Rights in
countries in which the JSC has elected not to file, such Party shall have
the unrestricted right to negotiate licenses with Independent Third Parties
in such non-elected countries or exploit it directly.
5.4 Infringement. Each Party shall promptly inform the other Party of any
suspected infringement of any Joint Patent Rights. During the term of this
Agreement, both Parties shall have the right to institute an action for
infringement of the Joint Patent Rights against such Independent Third
Party in accordance with the following:
(a) both Parties shall institute suit jointly, the suit shall be brought
in both their names and the out-of-pocket costs thereof shall be borne
equally. Any recovery or settlement received by a Party shall be
shared equally. The JSC shall decide upon the manner in which any
Party shall exercise control over such action. Any Party may, if it so
desires, also be represented by separate counsel of its own selection,
the fees for which counsel shall be paid by it.
(b) in the absence of agreement to institute a suit jointly, any Party may
institute suit, and, at its opinion, name the other Party as a
plaintiff. The Party instituting shall bear the entire costs of such
litigation, including defending any counterclaims brought against the
other Party and paying any judgments rendered against the other Party,
and shall be entitled to retain the entire amount of any recovery of
settlement.
(c) should either Party commence a suit under the provisions of this
Section 5.4 and thereafter elect to abandon such suit, the abandoning
Party shall give timely notice to the other Party who may, if it so
desires, continue prosecution of such suit, provided that the sharing
of expenses and any recovery in such suit shall be as agreed upon
between both Parties.
5.5 Costs for Applying, Prosecuting and Maintaining. The costs of applying for,
prosecuting and maintaining patent applications and patents as specified in
Section 5.3 shall be borne equally by BioChem and Oncogene.
5.6 Disclosure of Inventions. Each of BioChem and Oncogene shall promptly
inform the other Party of all inventions and Joint Technology that are
conceived, made or
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developed in the course of carrying out the Research Program by its
respective employees, its Affiliates or consultants, whether invented
solely or jointly with employees of or consultants to the other Party.
5.7 Ownership of Joint Intellectual Property. BioChem and Oncogene shall
jointly own the entire right, title and interest in all Technology,
patents, know how and other rights in any idea, design, invention,
discovery, improvement or other creation, including any Compound, method or
apparatus conceived, reduced to practice of developed by BioChem and
Oncogene, in the course of the Research Program. The commercial
exploitation by BioChem and Oncogene as joint owners of their rights is
subject to the provisions of Article 6 of this Agreement.
5.8 Copies of Patent Applications. [Each Party shall provide to the other Party
copies of all patent applications for Joint Patent Rights prior to filing,
for the purpose of obtaining comments and advice from the other Party's
patent advisors and the other Party's approval to so file which approval
shall be provided within a reasonable time. Upon the other Party's
approval, such Party shall be free to file said patent applications covered
by this Agreement. Such Party shall also consult with the other Party on
the prosecution of said applications and provide to such Party copies of
all documents relating to the prosecution of said applications. Such Party
shall provide to the other Party every six (6) months a report detailing
the status of all patent applications that are part of Joint Patent
Rights.]
5.9 Other Patent Rights. Each Party shall be responsible for taking all
necessary actions to obtain, sustain and enforce patent protection for
those of its Patent Rights which are not Joint Patent Rights or Patent
Rights of the other Party and those outside the scope of the Research
Program, including the following:
(a) filing applications for such patents on any patentable inventions;
(b) prosecuting all pending and new patent applications and responding to
opposition or any other form of action for invalidity or revocation or
Patent Rights filed by Independent Third Parties against the grant of
patents for such application;
(c) maintaining in force any patents by duly filing all necessary papers
and paying any fees required by the patent legislation of the
particular country in which such patents were granted.
In the event that a Party institutes suit to protect its own Patent Rights
against suspected infringement, it shall notify the other Party who shall,
have the option, to be exercised in writing no later than thirty (30) days
from receipt of the notice, to elect to assume 50% of all expenses relating
to such suit, including attorneys' fees, in which case any recovery or
settlement received by the Party having instituted suit shall be
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shared equally by both Parties. The Party having instituted suit shall have
the authority to make all decisions concerning such suit, including without
limitation, the right to compromise the claim.
5.10 Indemnification. Each Party (the "Indemnifying Party") shall indemnify the
other Party, its directors, officers, employees and consultants (the
"Indemnified Party") from and against any and all claims, demands, losses,
liabilities, expenses or damages which the Indemnified Party may suffer,
pay or incur as a result of claims, demands or suits against the
Indemnified Party arising or alleged to arise by reason of or in connection
with any and all personal injury and property damage caused or contributed
to, in whole or in part, by the Indemnifying Party's actions or
infringement.
ARTICLE 6
DEVELOPMENT AND COMMERCIALIZATION
6.1 Decision to Commercialize. The Joint Steering Committee has the authority,
following recommendation from the JRC, to determine that a Lead Compound is
suitable for development and therefore qualifies as a Development
Candidate. This authority of the JSC is governed by Section 2.5. No later
than thirty (30) days following the determination that the first Compound
is suitable for development the Parties shall establish a development
committee (the "Joint Development Committee").
6.2 Commercialization Agreement. Where a Lead Compound has been designated as a
Development Candidate, the Parties shall enter into a commercialization
agreement (the "Commercialization Agreement") for the development and
commercialization of that Compound as soon as possible after the first to
occur of the following events: (i) the decision to enter into a full
clinical development program as approved by the JSC, or (ii) the beginning
of Phase III clinical studies, conducted to support the application for
marketing approval of the Development Candidate for an indication.
6.3 Content of Commercialization Agreement. The Commercialization Agreement
shall provide that the Parties will jointly exploit any Commercial Products
in the Field. The mechanism for commercialization will be negotiated
between the Parties through good faith negotiations and shall take into
account the respective contributions of the Parties pursuant to Section 2.8
which should, unless agreed to by the Parties, be essentially the same. The
Parties agree that they shall both have commercialization rights in the
United States of America and Europe and that BioChem shall have the
commercialization rights in Canada. The Commercialization Agreement shall
provide that rights thereunder may be sublicensed to a third party by
mutual agreement of the Parties.
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6.4 Joint Development Committee.
6.4.1 Purpose. The Joint Development Committee purpose is to manage, agree
upon and assign specific responsibilities within the Development
Program to each party. The Joint Development Committee will be
responsible, throughout the duration of the Development Program, for
preparing and reviewing the Development Program and revising it as
necessary and will participate in all aspects of the planning and
development work carried out on any Development Candidate as well as
the information and data generated by that work. The Joint
Development Committee shall, when establishing the Development
Program, determine the responsibilities of each Party in seeking
regulatory approvals and in particular, notwithstanding that the JRC
will be responsible for nominating any Lead Compound for full
clinical development, and that such nomination will require approval
of the JSC.
6.4.2 Composition. BioChem and Oncogene each shall appoint, in their sole
discretion, three members to the Joint Development Committee.
Replacements of any Party may be appointed by such Party at any time
by notice to the other Party.
6.4.3 Voting. Each member of the Joint Development Committee shall have
one vote, and decisions shall be made by unanimity. Where a vote on
any decision does not produce a consensus between all members, the
matters at issue shall be submitted to the President of BioChem and
the Chief Executive Officer of Oncogene for discussion and
resolution.
6.4.4 Chair. A Chairperson shall be nominated alternatively by BioChem and
Oncogene for one year terms, the first term being served by a
nominee appointed by BioChem.
6.4.5 Meetings. Meetings shall be convened at least four times a year at
locations and times determined by a Joint Development Committee
resolution. Representatives of Oncogene, BioChem, or both, in
addition to members of each of the Parties on the Joint Development
Committee, may attend meetings but shall have no voting rights.
Meetings shall be held alternatively at each Party's facilities.
6.4.6 Expenses. The Parties will each bear their own expenses and those
expenses related to the participation of their appointees of the
Joint Development Committee.
6.5 No Support. If any Party's representatives on the JSC, JRC or the Joint
Development Committee declines to support the advancement of a Compound to
a Lead Compound stage or a Lead Compound to a development stage for reasons
which may include, but
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are not limited to, the proposed market being outside the scope of its
interest or being too small, and the other Party's representatives on the
JSC, JRC or the Joint Development Committee support the advancement of said
Compound to a Lead Compound stage or of a Lead Compound to a development
stage with an objective of commercialization of said Compound, then the
JSC, JRC or the Joint Development Committee, as the case may be, shall
record a notice (a "Notice of Opportunity") in the minutes of the meeting
where the representatives express such positions. For a period of sixty
(60) days after the date of such Notice of Opportunity the Parties shall
negotiate in good faith to resolve the issue in a mutually agreeable
manner. If the Parties are unable to resolve the issue then for a period of
one hundred and twenty (120) days thereafter the other Party having
supported the advancement of the Compound or the Lead Compound (the
"Notifying Party") shall have a first right to undertake worldwide
development and commercialization of such Compound or Lead Compound. Upon
the Notifying Party exercising such right, such Party shall be granted a
worldwide royalty license from the other Party which shall contain usual
term and conditions for agreements of that type and provide for the payment
by the Notifying Party to the other Party of royalties of * of Net Sales to
be paid within thirty (30) days following the end of any calendar quarter.
If, at any time, a Party which has commenced development on a Compound or a
Lead Compound, halts such development, then the other Party shall have the
right to undertake development of said Compound or Lead Compound, under the
same mechanism and subject to the same conditions as described in this
Section 6.5.
ARTICLE 7
OTHER RESEARCH, VENTURES ETC.
7.1 Acquisition of Rights from Third Parties. During the term of this
Agreement, BioChem and Oncogene shall promptly notify the other in writing
of any and all opportunities to acquire from Independent Third Parties,
whether by license, assignment or otherwise, technology or patents which
may be useful in, or may relate to, the purposes of the Research Program.
BioChem and Oncogene shall work together in a manner mutually agreeable and
beneficial to secure technology or patents which they have determined would
be useful in or relate to the purpose of the Research Program. Each Party
shall (1) inform the other Party of all third party technology or patents
that may be useful or relate to the Research Program, (2) solicit the other
Party's participation and approval in the formulation and implementation of
a strategy for securing such technology or patents and, (3) provide status
reports on the progress of such strategy.
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* This portion redacted pursuant to a request for confidential treatment.
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ARTICLE 8
TERM, EXTENSION, TERMINATION AND DISENGAGEMENT
8.1 Term. The initial term (the "Initial Term") of this Agreement shall be five
(5) years, commencing on the Effective Date; provided, however, that either
Party may terminate this Agreement at any time following the third
anniversary of the Effective Date by providing the other Party with one
hundred and eighty (180) days' prior written notice. Following the
expiration of the Initial Term, this Agreement shall be automatically
renewed for additional successive one-year periods (each, a "Renewal
Period") unless either Party gives the other notice of its intent not to
renew one hundred and twenty (120) days prior to the expiration of the
Initial Term or any Renewal Period, as the case may be.
8.2 Events of Termination. The following events shall constitute events of
termination (each an "Event of Termination"):
(a) Any representation or warranty by BioChem or Oncogene in this
Agreement proves incorrect, or inaccurate, in any material respect
when made or deemed made as determined by an independent arbitrator
and the defaulting Party does not remedy or cure such incorrect on
inaccurate representation or warranty within sixty (60) days following
written notice from the other Party of such breach.
(b) BioChem or Oncogene fails to perform or observe any term of this
Agreement or Schedules thereto and such failure remains unremedied for
a period of sixty (60) days following written notice thereof from the
non-defaulting Party or such longer period if the defaulting Party is
diligently taking action to remedy such failure.
(c) BioChem or Oncogene makes an assignment for the benefit of its
creditors, becomes insolvent, files a petition in bankruptcy,
petitions or applies to any tribunal for the appointment of a
custodian, receiver or any trustee for it or a substantial part of its
assets, or commences any proceeding under any bankruptcy,
reorganization, arrangement, readjustment of debt, dissolution or
liquidation law or statute of any jurisdiction, whether now or
hereafter in effect; or if there has been filed any such petition or
application against BioChem or Oncogene, or any such proceeding has
been commenced against it, in which an order for relief is entered or
which remains undismissed for a period of thirty (30) days or more; or
BioChem or Oncogene by any act or omission indicates its consent to,
approval of or acquiescence in, any such petition, application or
proceeding or order for relief or the appointment of a custodian,
receiver or any trustee for it or any substantial part of any of its
properties, or is the subject of any such custodianship, receivership
or trusteeship that continues undischarged for a period of thirty (30)
days or more.
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(d) BioChem or Oncogene generally fails to pay its debts as such debts
become due.
(e) Either of BioChem or Oncogene assigns this Agreement and that portion
of its business related to the Research Program to a company which
sells products or services, which are in the reasonable opinion of the
other Party, in direct competition with BioChem or Oncogene.
(f) In respect of any Party, if a Person acquires (the "Acquisition")
shares of such Party (the "Target"), directly or indirectly, which
carry the right to cast, in the aggregate, more than 50% of the votes
for the election of directors or, if such Person is, in the reasonable
opinion of the Party, a competitor of such other Party, more than 35%
of the votes for the election of directors.
For purposes of this Section 8.2, a Person shall be deemed to be a
competitor or to be in competition if such Person or its Affiliates is,
directly or indirectly, considered a biotechnological or pharmaceutical
company which carries research and development activities in the Field.
ARTICLE 9
CONSEQUENCES OF TERMINATION
9.1 Licenses upon Termination. Where this Agreement is terminated pursuant to
Section 8.1, each Party's intellectual property rights shall revert to such
Party and the Parties shall execute cross-licensing agreements for any
Joint Patent Rights or Joint Technology arising from this Agreement.
The Parties shall immediately following the delivery of a notice pursuant
to Section 8.1, negotiate in good faith such cross-licensing agreements. If
the Parties fail to negotiate and sign cross-licensing agreements before
the expiration of a period of one hundred and eighty (180) days following
delivery of the notice pursuant to Section 8.1, either Party (the "Electing
Party") may, by written notice (the "Notice") accompanied by a Submitted
License (as defined hereinafter) at its option offer to the other Party:
(i) to have an exclusive worldwide license for the Joint Patent Rights or
Joint Technology, the whole in accordance with the terms and conditions of
an agreement to be submitted by the Electing Party to the other Party (the
"Submitted License"); or (ii) to grant to the other Party (the
"Non-Electing Party") an exclusive worldwide license for the Joint Patent
Rights or Joint Technology in accordance with the Submitted License.
The Non-Electing Party shall have the option to either (i) grant to the
Electing Party a worldwide exclusive license for the Joint Patent Rights or
Joint Technology in accordance with the terms and conditions of the
Submitted License, or (ii) to have an
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exclusive worldwide license for Joint Patent Rights or Joint Technology in
accordance with the terms of the Submitted License.
Such election may be made by the Non-Electing Party in writing, addressed
to the Electing Party (the "Election Notice") within ninety (90) days
following receipt of the Notice, failing which he shall be deemed to have
elected to grant the Electing Party a license upon the term of the
Submitted License. The Parties shall execute a license based on the
Submitted License within six (6) months following receipt by the Electing
Party of the Election Notice.
9.2 Termination upon the Occurrence of an Event of Termination. Upon the
occurrence of any Event of Termination set forth in Section 8.2, for a
period of sixty (60) days from the date of the occurrence of any Event of
Termination the Parties shall negotiate in good faith to resolve the issue
in a mutually agreeable manner and if the Parties are unable to resolve the
issue then the Party not responsible for such Event of Termination may, by
notice to the other Party, terminate this Agreement. In the event of any
termination by a Party (the "Notifying Party") pursuant to Section 8.2, all
information and data, including Joint Technology and Joint Patent Rights,
accumulated throughout the term of this Agreement shall become the sole
exclusive property of the Notifying Party, and the other Party shall
execute and perform all transfers and assignments to the Notifying Party
which are required by law. Notwithstanding the foregoing, upon the
occurrence of an Event of Termination described in Section 8.2(f), the
Party, the shall of which are not being acquired may, at its option, in
which case the other Party shall not be considered in default hereunder,
(i) require the Target to pay, in which event the Target shall pay,
royalties on Net Sales made by such Target and its Affiliates in the amount
of * for Commercial Products which where not, at the time of the
Acquisition, in Full Development or * for Commercial Products which where,
at the time of the Acquisition, in Full Development, and (ii) require the
Target to reimburse the other Party for all costs and expenses incurred by
such Party in the performance of its obligations under this Agreement in
respect of Commercial Products which have not reached Full Development.
9.3 Survival of Obligations: Return of Confidential Information.
Notwithstanding any termination of this Agreement, the obligations of the
Parties with respect to the protection and non-disclosure of Confidential
Information shall survive and continue to be enforceable. Upon any
termination of this Agreement, each Party shall promptly return to the
other Party all of that other Party's Confidential Information, and all
copies thereof. Biochem and Oncogene acknowledge that after termination of
this Agreement each Party will be free to use its own Confidential
Information and Technology without restriction.
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* This portion redacted pursuant to a request for confidential treatment.
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ARTICLE 10
REPRESENTATIONS AND WARRANTIES
Each of BioChem and Oncogene represents and warrants as follows:
(a) Good Standing. It is a corporation duly organized, validly existing
and is in good standing under the laws of its jurisdiction of
incorporation and has all requisite power and authority, corporate or
otherwise, to conduct its business as now being conducted, to own,
lease and operate its properties and to execute, deliver and perform
this Agreement.
(b) Proper Authorization. The execution, delivery and performance of this
Agreement have been duly authorized by all necessary corporate action
and do not and win not (a) require any consent or approval of its
stockholders, (b) violate any provision of any law, rule, regulation,
order, writ, judgement, injunction, decree, determination or award
presently in effect having applicability to it or any provision of its
charter or by-laws or (c) result in a breach of or constitute a
default under any material agreement, mortgage, lease, license, permit
or other instrument or obligation to which it is a party or by which
it or its properties may be bound or affected.
(c) Binding Agreement. This Agreement is a legal, valid and binding
obligation of it enforceable against it in accordance with its terms
and conditions, except as such enforceability may be limited by
applicable bankruptcy, insolvency, moratorium, reorganization or
similar laws, from time to time in effect, affecting creditors' rights
generally.
(d) Absence of Conflict. It is not under any obligation to any Person,
contractual or otherwise, that is conflicting or inconsistent in any
respect with the terms of this Agreement or that would impede the
diligent and complete fulfillment of its obligations hereunder.
(e) Title. Each of BioChem and Oncogene for itself represents it has good
and marketable title to or valid leases or licenses for, all of its
properties, rights and assets, excluding patent property, to be used
in the fulfillment of this responsibilities under the Research
Program, subject to no claim of any third party other than the
relevant lessors or licensors.
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ARTICLE 11
COVENANTS
11.1 Affirmative Covenants Other than Reporting Requirements. Throughout the
term of this Agreement, each of BioChem and Oncogene shall:
(a) comply in all material respects with the requirements of all
applicable laws, rules, regulations and orders of any government
authority to the extent necessary to conduct the Research Program;
(b) maintain and preserve all of its properties, rights and assets to be
used in the proper conduct of the Research Program in good working
order and condition in accordance with the general practice of other
companies of similar size and character;
(c) conduct all experiments related to the Research Program and maintain
all facilities used in connection therewith in accordance with Medical
Research Council Guidelines, where applicable, and with all applicable
federal, provincial, and local environmental requirements;
(d) pay to the other Party, if any, any Deficiency Amount determined by
the JSC.
ARTICLE 12
DISPUTE RESOLUTION
In the event BioChem and Oncogene cannot agree on any matter requiring agreement
between the Parties, the matter of differences shall be determined by
arbitration. Arbitration shall be conducted under the Commercial Arbitration
Rules of the American Arbitration Association by one (1) person appointed by the
Parties or, if the Parties cannot agree within thirty (30) days following
notification by one Party that it wishes to refer a matter to arbitration, by
such person empowered by the American Arbitration Association to so appoint an
arbitrator. Arbitration shall take place in a location agreed to by the Parties,
or absent such agreement, chosen by the arbitrator. The decision of the
arbitrator shall be final and binding on both Parties. The fees and expenses of
the arbitrator shall be borne equally by the Parties.
ARTICLE 13
NOTICES
Any notice, statement, payment or other document required to be given hereunder
shall be in writing and shall be given either personally, by mailing the same,
postage prepaid, by certified or registered mail (return receipt requested), in
the absence of an actual or apprehended disruption of mail service or delivered
by telecopier addressed as follows, or to
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such other addresses as may be designated from time to time by notice given, in
the manner provided in this Article 13.
If to BioChem: BioChem Pharma (International) Inc.
c/o BioChem Therapeutic Inc.
Armand-Frappier Blvd.
Laval, Quebec
H7V 4A7
Attention: President
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Telecopier: (514) 978-7767
If to Oncogene: Oncogene Science, Inc.
106 Charles Lindbergh Blvd.
Uniondale, New York 11553-3649
Attention: Chief Executive Officer
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Telecopier: (516) 745-6429
Notices given personally shall be deemed given as of the date delivered. Notices
given by telecopier shall be deemed given on the first business day following
the date of transmission. Mailed notices shall be deemed given on the fifth
business day following the date of such mailing.
ARTICLE 14
MISCELLANEOUS
14.1 Binding Effect. This Agreement shall be binding upon and enure to the
benefit of the Parties hereto and their respective legal representatives,
successors and permitted assigns.
14.2 Headings. The headings contained in this Agreement are for convenience of
reference only and do not form a part of this Agreement, and no
construction or inference shall be derived therefrom.
14.3 Entire Agreement. This Agreement and the documents and other agreements
referred to herein or signed concurrently herewith set forth the entire
agreement and understanding of the Parties.
14.4 Severability. In the event that any provision of this Agreement is held by
a court of competent jurisdiction to be unenforceable because it is invalid
or in conflict with any law of any relevant jurisdiction, the validity of
the remaining provisions shall be
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construed and enforced as if the Agreement did not contain the particular
provisions held to be unenforceable.
14.5 Counterparts. This Agreement may be executed simultaneously in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
14.6 Amendment, Waiver, etc. This Agreement may be amended, modified, superseded
or cancelled, and any of the terms hereof may be waived, only by a written
instrument executed by each Party hereto or, in the case of waiver, by the
Party or Parties waiving compliance. The delay or failure of any Party at
any time or times to require performance of any provision hereof shall in
no manner affect the rights at a later time to enforce the same. No waiver
by any Party of any condition or of the breach of any term contained in
this Agreement, whether by conduct or otherwise, in any one or more
instance, shall be deemed to be, or construed as, a further or continuing
waiver of any such condition or of the breach of such term or any other
term of this Agreement.
14.7 Force Majeure. In the event that either Party is prevented from or is
unable to perform any of its obligations under this Agreement due to any
act of God, fire, casualty, flood, war, strike, lockout, failure of public
utilities, injunction of any act, exercise, assertion or requirement of
governmental authority, including any governmental law, order, or
regulation permanently or temporarily prohibiting or reducing the level of
research and development work hereunder, epidemic, destruction or
production facilities, riots, insurrection, inability to procure or use
materials, labour, equipment, transportation or energy sufficient to meet
experimentation needs, or any other cause beyond the reasonable control of
the Party invoking this Article 14 if such Party shall have used its best
efforts to avoid such occurrence, such Party shall give notice to the other
Party in writing promptly, and thereupon the affected Party's performance
shall be excused and the time for performance shall be extended for the
period of delay or inability to perform due to such occurrence.
14.8 Independent Contractor. Nothing in this Agreement shall be construed as
constituting both Parties as partners or joint venturers with respect to
this Agreement. Both Parties are independent contractors under this
Agreement.
14.9 Assignment and Successors. This Agreement and the rights and interests
hereunder may not be assigned by either Party in whole or in part except to
an Affiliate, a purchaser of all or substantially all of the assets of a
Party or to any successor corporation resulting from any merger or
consolidation of either Party with or into such corporation.
14.10 Governing Law. This Agreement shall be construed and interpreted in
accordance with the laws of the State of New York.
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14.11 Language. The Parties hereto have expressly requested that this Agreement
and a related documents and notices be drafted in the English language.
Les parties aux presentes ont exige, de facon expresse, que la presente
convention de meme que tous les documents et avis qui s'y rattachent
soient rediges en langue francaise.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
as a sealed instrument in their names by their properly and duly authorized
representatives as of the date first written above.
BIOCHEM PHARMA (INTERNATIONAL) INC.
By: /s/ Francois Legault
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Francois Legault
By: /s/ Michael Grey
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Michael Grey
ONCOGENE SCIENCE, INC.
By: /s/ Gary E. Frashier
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Gary E. Frashier
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