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EXHIBIT 10.26
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REDACTED VERSION
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SUBLICENSE AGREEMENT
This License Agreement ("Agreement"), is made and entered into this 15th day of
May, 1997 ("Effective Date"), by and between
Boehringer Mannheim GmbH,
a German corporation
having its principal place of business at Sandhofer Strasse 116
Postfach 310120
D-68298 Mannheim Germany
("Boehringer")
and
NeoRx Co.,
an American corporation
having its principal place of business at 410 West Harrison Street
Seattle, Washington 98119
("NeoRx").
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WHEREAS:
Biogen Inc. has granted Boehringer the exclusive right to make, have made, use,
market and sell LICENSED PRODUCTS which right is covered by the U.S. Patents
Nos. 5,168,049 and 5,272,254 owned by Biogen Inc., and
NeoRx is interested in making, using, selling and having sold LICENSED PRODUCTS,
for its PRETARGETING TECHNOLOGY, and
BM is willing to grant NeoRx sublicense to make, have made, use, sell and have
sold LICENSED PRODUCTS in the FIELD.
ARTICLE I - DEFINITIONS
1.1 LICENSED PATENTS
The term "Licensed Patents" shall mean the Biogen, Inc. US Patent Nos.
5,168,049 and 5,272,254 (licensed by Boehringer from Biogen), and any
other patent owned or controlled by Boehringer relating to [*] and the
patents issued therefrom.
[*] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION.
1.2 LICENSED PRODUCTS
The term "Licensed Products" shall mean [*].
1.3 FIELD
"Field" shall mean all applications of NeoRx's proprietary Pretargeting
Technology.
1.4 PRETARGETING TECHNOLOGY
"Pretargeting Technology" means products and processes involving target
site localization in a patient through administration of a targeting agent
[*].
ARTICLE II - LICENSE GRANT
2.1 GRANT OF LICENSE
Boehringer hereby grants to NeoRx an exclusive sublicense to make, have
made, use, sell, and have sold Licensed Products in the Field.
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2.2 This sublicense to NeoRx shall include [*], consistent with the License
Agreement of March 1, 1994 between Biogen and Boehringer [*].
2.2.1 NeoRx shall comply with all government statutes and regulations that
relate to the Licensed Products including all export regulations.
2.3 [*]
2.4 RIGHTS
Boehringer represents and warrants that it has the right and power to
grant to NeoRx the sublicense provided herein.
ARTICLE III - ROYALTY
3.1 INITIAL PAYMENT
In consideration of the right and license granted hereunder, NeoRx shall
pay to Boehringer the sum of [*] as an initial payment within fifteen (15)
days of the Effective Date.
3.2 ANNUAL MAINTENANCE FEE
NeoRx shall pay to Boehringer an annual maintenance fee of [*] due on the
anniversary date of this Sublicense Agreement.
3.3 ONE-TIME MILESTONE PAYMENT
NeoRx shall pay to Boehringer a one-time milestone payment of [*] upon
approval by the United States Food and Drug Administration of the first
Pretargeting Product containing Licensed Product, no matter if this
product is a product of NeoRx or a Sublicensee of NeoRx.
3.4 WITHHOLDING TAX ON CONSIDERATION
Unless otherwise agreed, all taxes or other governmental charges which
NeoRx is required to withhold from the initial payment and other payments
under this Agreement shall be deducted from such payments and an evidence
of such withholding shall be delivered to Boehringer without undue delay.
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ARTICLE IV - OBLIGATION OF EXCLUSION OF LIABILITY
4.1 DISCLAIMER OF WARRANTY
Boehringer makes no representations, conditions or warranties that any of
the Licensed Patents are valid or enforceable and that any manufacture,
use, sale or other disposal of the Licensed Products is not an
infringement of any patent of any third party.
4.2 DISCLAIMER OF LIABILITY
Boehringer shall be under no liability whatsoever to NeoRx (whether in
negligence or otherwise) for any expense, loss, damage or injury of any
kind (including any loss of profit or consequential damage) sustained by
NeoRx or any third party arising or incurred in connection with the
manufacture, use, sale or other disposal of Licensed Products or deriving
directly or indirectly out of the use of the Licensed Patents or otherwise
arising out of the grant of any rights hereunder, or the provision of any
information in connection herewith.
4.3 INDEMNIFICATION BY NEORX
NeoRx shall indemnify Boehringer from and against all claims, demands,
actions, liabilities and damages made by, or awarded to, any person and
any costs and expenses thereof arising from, or connected with, the
design, production, manufacture, use, sale, promotion, or other disposal
of Licensed Products or the provision or use of the Licensed Patents or
otherwise arising out of the grant of any rights hereunder.
4.4 INFRINGEMENT BY THIRD PARTIES
NeoRx shall notify Boehringer forthwith of any infringement or threatened
infringement of any of the Licensed Patents which shall at any time come
to its knowledge. NeoRx shall give sufficient cooperation that is legally
appropriate and within reasonable range to protect Boehringer's rights
over the Licensed Patents.
ARTICLE V - DURATION, TERMINATION AND MISCELLANEOUS
5.1 TERM
This Agreement shall commence on the Effective Date and endure and remain
in full force, unless terminated under the provisions of this Agreement,
throughout the life of any one of the Licensed Patents.
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5.1.1 [*] In case Boehringer intends not to maintain the Biogen license,
Boehringer shall inform NeoRx with six (6) months prior notice.
5.1.2 Boehringer shall have the right to terminate this Agreement and license
granted hereunder if: NeoRx is in breach or default under this Agreement
and has not cured such breach of or default within sixty (60) days after
written notice is sent by Boehringer to NeoRx specifying the nature of
such breach or default.
5.1.3 NeoRx shall have the right to terminate this Agreement upon ninety (90)
days written notice to Boehringer, if: (1) Boehringer is in breach or
default under this Agreement and has not cured such breach or default with
the aforementioned period or, (2) NeoRx is no longer practicing or using
the Licensed Patents.
5.1.4 Either Party shall have the right by written notice to the other party to
terminate this Agreement in the event that the other party shall file for
prosecution under federal or state Bankruptcy Laws, becomes insolvent or
makes an assignment for the benefit of creditors, enters or is put into
voluntary or compulsory liquidation or has its business enjoined or
ordered into receivership of the equivalent.
5.1.5 Termination shall not affect the provisions as set forth in articles 5.5.
5.2 ENFORCEABILITY
Should any part of this Agreement be held unenforceable or in conflict
with the law of any jurisdiction, the validity of the remaining parts or
provisions shall not be affected by such holding.
5.3 WAIVER
A waiver of any breach of any provision of this Agreement shall not be
construed as a continuing waiver of other breaches of the same or other
provisions of this Agreement.
5.4 ASSIGNMENT
Neither this Agreement nor any interest herein is assignable or
transferable by NeoRx without a prior approval of Boehringer. In the event
that Boehringer will assign or otherwise transfer this Agreement to any
third party, Boehringer shall notice NeoRx prior to such assignment or
transference and shall bind the assignee or transferee of this Agreement
to
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the same extent as Boehringer is bound by all of terms and conditions
hereof.
5.5 CONFIDENTIALITY
5.5.1 Each party shall treat all confidential information received from the
other party (or its agents or employees), including information regarding
or relating to NeoRx Patent Rights, and any information derived therefrom,
(any and all such information to be hereinafter referred to as
"Proprietary Information") as the confidential and proprietary information
of the disclosing party.
As used herein, "Proprietary Information" does not include:
(i) information which at the time of disclosure to the receiving party
is generally available to the public, or which after such disclosure
becomes generally available to the public by publication or
otherwise other than as the result of a prohibited disclosure by the
receiving party;
(ii) information that is demonstrated to have been in the receiving
party's possession prior to the time of disclosure by the disclosing
party;
(iii) information that is demonstrated by a preponderance of the evidence
to have been independently developed by the receiving party's
personnel without reference to Proprietary Information disclosed by
the disclosing party; and
(iv) information received from a third party unless such information is
obtained subject to a confidential disclosure agreement.
5.5.2 Except as required by law and as otherwise set forth herein, each party
agrees (i) to hold in strict confidence and trust and maintain as
confidential all Proprietary Information of the other party except as
required by applicable law or regulation including, without limitation,
applicable securities laws and regulations, (ii) not to disclose any such
Proprietary Information to any person, except to those employees or legal
counsel of the receiving party who are required to receive the Proprietary
Information for the purposes described in this Agreement and who are bound
by a similar obligation of confidentiality and (iii) to use the
Proprietary Information only for the purposes described in this Agreement.
5.5.3 Each party agrees that all Proprietary Information disclosed by the other
party will at all times be and remain the sole property of the disclosing
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party and the disclosing party is the sole owner of all patents,
copyrights and other intellectual property rights and other proprietary
rights related to the Proprietary Information disclosed by it. Nothing in
this Agreement shall be construed as granting to the receiving party an
implied license in, or right or option to license or use any intellectual
property right (including but not limited to any patent right obtained by
the disclosing party) relating to the Proprietary Information disclosed by
it or any right to use such Proprietary Information except as expressly
provided herein.
5.5.4 Immediately upon the termination of this Agreement, or upon disclosing
party's request, the receiving party will deliver to the disclosing party
all Proprietary Information disclosed by the disclosing party and all
documents and data storage media containing any such Proprietary
Information and any and all copies thereof, and will delete all such
Proprietary Information from its documents and data storage media.
5.6 GOVERNING LAW
This Agreement shall be interpreted and construed, and the legal relations
created herein shall be determined, in accordance with the substantive
laws of Germany.
5.7 ARBITRATION
5.7.1 Any dispute, controversy or claim rising out of or relating to this
Agreement shall be referred to arbitration in accordance with the rules of
conciliation and arbitration of the Zurich Chamber of Commerce.
5.7.2 The Court of Arbitration shall consist of three arbitrators; each party
shall nominate one member. The chairman shall be appointed by the
President of the Zurich Chamber of Commerce in accordance with the
aforementioned arbitration rules.
5.7.3 The arbitration shall be held at a location to be agreed upon by the
arbitrators in the English language. Arbitration shall be final and
binding upon both parties.
5.8 MODIFICATION
No modification or alteration of this Agreement included this provision
shall be effective unless they are made in writing and signed by duly
authorized representatives of the parties.
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5.9 ENTIRE AGREEMENT
This Agreement constitutes the entire agreement and understanding between
the parties and supersedes any prior agreements and understandings with
respect to the Licensed Patents.
5.10 NOTICES
Notices required under this Agreement shall be in writing and shall for
all purposes be deemed to be fully given and received when sent by
registered mail, postage prepaid, to the respective parties at the
following addresses:
If to Boehringer
Boehringer Mannheim GmbH
Legal Counsel Biochemical Division
Sandhofer Stra(greek beta)e 116
Postfach 31 01 20
68298 Mannheim
Germany
If to NeoRx
NeoRx Corporation
Attention: Anna Wight
410 West Harrison
Seattle, WA 98119-4007
USA
Either party hereto may change its address for the purposes of this Agreement by
giving the other party written notice of its new address.
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In Witness whereof, the parties have affixed their signatures on the dates
indicated below to two (2) duplicate originals, each of which shall be
considered an original.
Date: May 15, 1997 Date:
BOEHRINGER MANNHEIM GMBH NEORX CORPORATION
By:___________________________________ By:__________________________________
i. V. Dieter Lingelbach John M. Reno, Ph.D.
V.P. Biochemicals for the Pharm. V.P. Research & Development
Ind. Business
By:___________________________________
i. V. Dr. Claus Schneider
Senior Director Biochemicals for
the Pharm. Ind. Business
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