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EXHIBIT 10.1
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
AGREEMENT
This agreement is made by and between
IDENIX PHARMACEUTICALS, INC., a corporation
organized and existing under the
laws of the State of Delaware, having its
principal offices located at 60
Hampshire Street, Cambridge, MA 02139
represented by its legal representative
Mr. Jean-Pierre Sommadossi (hereinafter
referred to as "Idenix")
and
IDENIX SARL, a corporation organized and
existing under the laws of France,
having registered offices in Immueuble "La
Vigie" 170 rue Leon Blum, 34000
Montpellier, France, represented by its
legal representative Mr. Jean-Marc
Allaire (hereinafter referred to as "Idenix
SARL")
and
UNIVERSITA' DEGLI STUDI DI CAGLIARI, having
a principal place of business at
Cittadella Universitaria, SS 554 KM 4.5,
09133 Monserrato, Cagliari, Italy,
represented by the Chancellor Prof.
Pasquale Mistretta (hereinafter referred to
as the "University")
whereas
a) on 4 January 1999, the University and
Idenix SARL, this last on behalf and
for the benefit of Idenix, entered into an
agreement entitled "Co-operative
Antiviral Research Activity Agreement"
(hereinafter referred to as the
"Co-operative Agreement") aimed at
performing a joint research activity in the
antiviral substances field;
b) in accordance with the Co-operative
Agreement, on 14 December 2000, the
University and Idenix entered into a
license agreement (hereinafter the "License
Agreement") according to which the
University grants to Idenix the exclusive
license for the exploitation, whether
direct or indirect, of the results
obtained and that will be obtained from the
performance of the activity
indicated under the previous point;
c) the above mentioned Co-operative
Agreement and License Agreement (together,
the "Original Agreements") have been
initially amended on 10 April 2002;
d) the Original Agreements, as so amended,
have been afterwards amended with the
deed undersigned by the parties on 8 May
2003, also in consideration of the
transactions at that time pending between
Idenix and Novartis Pharma AG for the
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acquisition, by this last, of the majority
of the shareholding of Idenix (the
amendments indicated in this point have
become effective on 8 May 2003,
following to the occurred execution of a
"Development, License and
Commercialization Agreement" and of a
"Manufacturing and Supply Agreement" by
and among Idenix, Idenix (Cayman) Limited
and Novartis) (together, the "Novartis
Agreements");
e) the parties further amended the Original
Agreements, as previously amended,
on 30 June 2004 (the "June 30 Letter
Amendment");
f) with the present agreement the parties
intend to further amend the terms of
the Original Agreements (the "Original
Agreements", as amended through and
including this agreement, collectively, the
"Cagliari Agreements", provided that
the "Cagliari Agreements" do not include
the "Novartis Agreements");
now, therefore, in consideration of the
premises and the mutual covenants herein
contained, Idenix, Idenix SARL and the
University agree as follows:
1. The premises shall represent an integral
and substantial part of this
agreement. Capital letter terms used and
not otherwise defined herein shall
refer to the definitions provided under the
Cagliari Agreements, which shall
apply for the purposes of this
agreement.
2. "Subject Intellectual Property Rights"
shall mean (A) those families of
patents and families of patent applications
(including U.S. provisional patent
applications, conversions, continuations,
divisions, continuations-in-part
thereof) (i) whose earliest priority filing
date is before May 14, 2003 or (ii)
which include compounds or methods first
disclosed in a patent or patent
application whose earliest priority filing
date is before May 14, 2003, and
which are set forth in Exhibit A attached
hereto under the caption "Original
Patents" ("Original Patents"); and (B)
those families of patents and families of
patent applications (including U.S.
provisional patent applications,
conversions, continuations, divisions and
continuations-in-part thereof) other
than Original Patents whose earliest
priority filing date is on or after 14 May
2003, and which are set forth in Exhibit A
attached hereto under the caption
"Subsequent Patents" ("Subsequent
Patents"). Exhibit A attached hereto shall
also replace and supercede the current
Annex A to the License Agreement.
Subsequent amendments to Exhibit A shall
occur as contemplated in paragraph five
of the June 30 Letter Amendment.
3. "Valid Claim" shall mean a claim (a) of
any issued, unexpired patent included
in the Subject Intellectual Property Rights
that has not been revoked or held
unenforceable or invalid by a decision of a
court or governmental agency of
competent jurisdiction from which no appeal
can be taken, or with respect to
which an appeal is not taken within the
time allowed for appeal, and that has
not been disclaimed or admitted to be
invalid or unenforceable through reissue,
disclaimer or otherwise, or (b) of any
patent application included in the
Subject Intellectual Property Rights that
has not been cancelled, withdrawn or
abandoned or been pending for more than ten
(10) years.
4. The parties hereby agree that, in
connection with any Subject Intellectual
Property Right sublicensed by Idenix to an
Affiliate, Idenix shall pay to the
University:
2
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A. a royalty
rate amounting to:
(i) [**]% of Net Sales
performed, after the Effective Date
as defined under article 6, by such Affiliate (or its
Affiliates and/or sublicensees) of products which, but
for the license granted under the Cagliari Agreements,
would infringe one or more Valid Claims of an Original
Patent;
and
(ii) [**]% of Net Sales performed, after the Effective Date
as defined under article 6, by such Affiliate (or its
Affiliates and/or sublicensees) of products which, but
for the license granted under the Cagliari Agreements,
would infringe one or more Valid Claims of a Subsequent
Patent only;
plus
B. a percentage
of any license fee, milestone payment and other cash
consideration, paid to Idenix by such Affiliate after the
Effective Date as defined under article 6 (excluding royalties
and amounts paid to fund or reimburse research, development,
manufacturing or commercialization expenses) with respect to
research, development or commercialization of products which,
but
for the license granted under the Cagliari Agreements, the sale
of which products would infringe one or more Valid Claims of
any
Subject Intellectual Property Right (an "Affiliate Fee"),
amounting
to:
(i) [**]% of any
Affiliate Fee where a relevant Subject
Intellectual Property Right is an Original Patent;
and
(ii) [**]% of any Affiliate Fee where the relevant Subject
Intellectual Property Right consists only of one or
more Subsequent Patents.
For clarification, in no event shall the
University have any right or claim to
payments made by an Affiliate with respect
to an Affiliate's purchase of Idenix
securities, any Id
