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EXHIBIT 10.103
[THE OMITTED PORTIONS INDICATED BY AN
ASTERISK HAVE BEEN SEPARATELY FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT PURSUANT TO RULE 24B-2 UNDER THE
SECURITIES EXCHANGE ACT OF 1934.]
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This INTELLECTUAL PROPERTY LICENSE AGREEMENT (this "AGREEMENT")
is
dated this 15th day of July 2004, between
Q-Med AB, a company organized under
the laws of the Kingdom of Sweden with
corporate registration number 556258-6882
("Q-MED" or "LICENSOR"), and Medicis
Aesthetics Holdings Inc., a corporation
organized under the laws of the State of
Delaware ("MAHI" or "LICENSEE").
RECITALS
WHEREAS, Licensor desires to grant, and Licensee desires to
accept,
the rights and licenses set forth herein
with respect to the Licensed Rights,
Licensed Regulatory Data and certain
Website Content (as each such term is
defined below); and
WHEREAS, Licensee desires to grant, and Licensor desires to
accept,
the rights and licenses set forth herein
with respect to certain portions of the
Territory Specific Materials, Licensee
Regulatory Materials (as each such term
is defined below) and certain Website
Content.
NOW, THEREFORE, in consideration of the premises and the
representations, warranties, covenants and
agreements contained herein and for
other good and valuable consideration, the
receipt and sufficiency of which is
hereby acknowledged, intending to be
legally bound hereby, the Parties hereto
hereby agree as follows:
ARTICLE I
DEFINITIONS
1.1 Definitions.
As used in this Agreement, the following terms shall have
the meanings set forth or as referenced
below:
"ACCOUNT" shall have the meaning set forth in Section 8.2.
"ACCOUNTING FIRM" shall have the meaning set forth in Section
8.5.
"ACTION" shall mean any action, claim, suit, litigation,
arbitration, investigation, notification,
audit or other proceeding brought in
law or at equity by a Governmental
Authority or other Person.
"ADVERTISING" shall have the meaning set forth in the Supply
Agreement.
"AESTHETIC ENHANCEMENT" shall mean the alteration of the visual
appearance, visual form, visual size, or
visual shape of the naked human body or
any of its components; provided that
Aesthetic Enhancement shall not be deemed
to include modification of the functions,
restoration of the functions,
adjustment of the functions or correction
of the functions of the human body or
any of its component parts.
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"AFFILIATE" of a Person shall mean, with respect to any Person,
any
other Person that directly or indirectly,
through one or more intermediaries,
controls, is controlled by, or is under
common control with, such Person. As
used in this definition, the term "CONTROL"
means the possession, directly or
indirectly, of the power to direct or cause
the direction of the management and
policies of a Person, whether through
ownership of voting securities, by
contract, or otherwise.
"AGERUP LETTER AGREEMENT" shall mean that certain letter from
Bengt
Agerup to Medicis, dated as of the Closing
Date.
"AGREEMENT" shall mean this Agreement, as the same may be amended
or
supplemented from time to time in
accordance with the terms hereof.
"BUSINESS DAY" shall mean any day other than a Saturday, a Sunday
or
a day on which banks in Sweden or New York
are authorized or obligated by Law or
executive order to remain closed.
"CANADIAN STUDY" shall have the meaning set forth in Section
2.1(c).
"CANADA'S FDA" shall mean Canada's Food and Drugs Act, R.S.C.
1985,
c. F-27, as amended.
"CAP" shall have the meaning set forth in Section 10.1(b).
"CHANGE IN CONTROL" shall mean (a) the disposition of all or
substantially all of the outstanding
shares, assets or business of a Party or
Medicis on a consolidated basis; or (b) any
transaction or event (or series of
transactions or events) as a result of
which any Person (other than an Affiliate
of such Party or Medicis), acting singly or
as a part of a "partnership, limited
partnership, syndicate or group" (within
the meaning of Section 13(d)(3) of the
United States Securities Exchange Act of
1934, as amended): (i) acquires (by
purchase, merger, consolidation or
otherwise) or for the first time controls or
is able to vote (directly or through
nominees, beneficial ownership, proxy or
contract) fifty percent (50%) or more of
the aggregate of all outstanding equity
securities of a Party or Medicis; or (ii)
acquires (by purchase, merger,
consolidation or otherwise) equity
securities of a Party or Medicis with the
right to, or for the first time is
otherwise able to, nominate or designate
(directly or through nominees, beneficial
ownership, proxy or contract) at least
fifty percent (50%) of the nominees to the
board of directors of such Party or
Medicis, in each of (a) or (b), in the
event that Licensor, Licensee or Medicis,
as the case may be, was not a party to the
applicable transaction and/or such
transaction was not approved by the Board
of Directors of Licensor, Licensee or
Medicis, as the case may be.
"CIPO" shall mean the Canadian Intellectual Property Office.
"CLAIMING PARTY" shall have the meaning set forth in Section
8.5.
"CLOSING" shall have the meaning set forth in Section 7.1.
"CLOSING DATE" shall have the meaning set forth in Section 7.1.
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"COMPETING PRODUCT" shall have the meaning set forth in Section
3.13.
"COMPLAINING PARTY" shall have the meaning set forth in Section
3.10(b).
"CONFIDENTIAL LICENSEE INFORMATION" shall have the meaning set
forth
in Section 9.1.
"CONFIDENTIAL LICENSOR INFORMATION" shall have the meaning set
forth
in Section 9.2.
"CONFIDENTIALITY AGREEMENT" shall have the meaning set forth in
the
Supply Agreement.
"CONTRACT YEAR" shall have the meaning set forth in Section
8.2.
"DILIGENCE DEFAULT" shall have the meaning set forth in Section
3.1.
"DISPUTED LICENSE PAYMENT" shall have the meaning set forth in
Section 8.5.
"FDA" shall mean the United States Food and Drug
Administration.
"FDCA" shall mean the United States Federal Food, Drug, and
Cosmetic
Act of 1938, as amended (21 U.S.C. ss.ss.
301 et. seq.).
"FIELD" shall mean Aesthetic Enhancement.
"FOOD AND DRUGS ACT" shall mean the Canadian Food and Drugs Act
of
1985, as amended (R.S., c. F-27).
"GOVERNMENTAL AUTHORITY" shall mean any supranational,
national,
federal, state, provincial or local
judicial, legislative, executive or
regulatory authority.
"GUARANTEE" shall mean the guarantee dated as of the Closing
Date
from Medicis to Q-Med.
"HIGHEST MILESTONE" shall have the meaning set forth in Section
8.2.
"IMPROVEMENTS" shall mean any replacements, improvements or
modifications, including without limitation
new indications or new uses, in each
case in the Field.
"INDEMNIFIED PARTY" shall have the meaning set forth in Section
10.3
herein.
"INDEMNIFYING PARTY" shall have the meaning set forth in
Section
10.3 herein.
"JOINTLY OWNED IMPROVEMENTS" shall have the meaning set forth
in
Section 2.3(c).
"LABELING" shall have the meaning set forth in the Supply
Agreement.
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"LAUNCH" of a Licensed Product shall mean the first offer for
sale
of the Licensed Product to the trade.
"LAWS" shall mean all applicable laws, statutes, rules,
regulations,
ordinances and other pronouncements of law
of any Governmental Authority.
"LIBOR RATE" shall have the meaning set forth in Section 8.2(b)
herein.
"LICENSED KNOW-HOW" shall mean, except to the extent published
or
otherwise known, all of Licensor's and its
Affiliates' proprietary know-how,
trade secrets, unpatented inventions,
technical data, formulations, technical
information and business and marketing
information which Licensor or any of its
Affiliates now own or have the right to
license, or hereafter acquire or obtain
the right to license during the Term, but
only to the extent necessary or
reasonably useful, in the ordinary course
of Licensee's business, for marketing,
using, distributing, importing, offering
for sale, selling, commercializing or
otherwise disposing of the Licensed
Products in the Field in the Territory,
including sales and marketing materials,
medical, clinical, toxicological
testing, scientific data and injection
techniques relating to the Licensed
Products; provided, that the Licensed
Know-How shall not include (a) information
that Licensor is under an obligation to
unrelated Third Parties not to disclose,
such as patient data and (b) the Licensed
Regulatory Data.
"LICENSED PATENTS" shall mean the U.S. Patent, U.S. Patent
Application and Canadian Patent Application
set forth on Schedule A attached
hereto and any other patent or patent
application or rights thereunder in the
Territory that covers the manufacture, use,
import or sale of the Licensed
Products, together with any extensions,
publications, reissues, continuations,
divisionals, continuations-in-part,
reexamination certificates, substitutions or
renewals, supplemental protection
certificates or certificates of inventions
thereof owned by Licensor or any of its
Affiliates, or under which Licensor or
any of its Affiliates has the right to
grant licenses in the Territory, as of
the date hereof or during the Term;
provided, that the Licensed Patents shall
not include the Licensed Regulatory
Data.
* * *
* * *
"LICENSED RIGHTS" shall mean the Licensed Patents and the
Licensed
Know-How.
"LICENSEE INDEMNIFIED PERSONS" shall have the meaning set forth
in
Section 10.1.
* * *
"LICENSEE MARKS" shall have the have the meaning set forth in
Section 3.2.
"LICENSEE REGULATORY MATERIALS" shall have the have the meaning
set
forth in Section 2.3(b)(ii).
"LICENSEE TRADE DRESS" shall have the have the meaning set forth
in
Section 3.2.
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"LICENSES" shall mean the licenses granted by Licensor to
Licensee
herein.
"LICENSOR INDEMNIFIED PERSONS" shall have the meaning set forth
in
Section 10.2.
"LICENSOR MARKS" shall have the have the meaning set forth in
Section 3.2.
"LICENSOR TRADE DRESS" shall have the have the meaning set forth
in
Section 3.2.
"LOSS" or "LOSSES" shall mean any and all damages, fines, fees,
penalties, deficiencies, losses and
expenses, including reasonable legal fees
and expenses, but excluding loss of profits
or other special, punitive or
consequential damages.
"MACROLANE SIDE LETTER" shall mean that certain letter from
Medicis
to Q-Med, dated as of the Closing Date.
"MANUFACTURE" shall have the meaning set forth in the Supply
Agreement.
"MEDICIS" shall mean Medicis Pharmaceutical Corporation, a
Delaware
corporation.
"MASTER FILES" shall have the meaning set forth in the Supply
Agreement.
"MILESTONE" shall have the meaning set forth in Section 8.2.
"MILESTONE PAYMENT" shall have the meaning set forth in Section
8.2.
"NET REVENUES" shall mean, with respect to any Licensed Product,
the
gross sales of such Licensed Product
invoiced by Licensee and/or its Affiliates
to Licensee's and/or its Affiliates'
customers who are not Affiliates, less, to
the extent actually paid or accrued net of
payments by Licensee and/or its
Affiliates (as applicable), (a) normal and
customary credits, allowances,
discounts and rebates to, and chargebacks
from the account of, such customers
for spoiled, damaged, out-dated and
returned Licensed Product; (b) normal and
customary freight and insurance costs
incurred in transporting such Licensed
Product to and from such customers; (c)
normal and customary cash, quantity and
trade discounts, rebates and other price
reductions or special programs for such
Licensed Product; and (d) excise, sales,
use, value-added and other direct taxes
(but not income taxes of any kind) imposed
upon the sale of such Licensed
Product to such customers. For avoidance of
doubt, Licensee shall calculate Net
Revenues for purposes of this Agreement
according to U.S. generally accepted
accounting principles applied on a
consistent basis and in a manner consistent
with Medicis' calculations of consolidated
net revenues and consistent with the
numbers used to consolidate net revenues
reported in Medicis' periodic reports
with the United States Securities and
Exchange Commission.
"NON-COMPETE PERIOD" shall have the meaning set forth in
Section
3.13(b).
"ONE TIME PAYMENT" shall have the meaning set forth in Section
8.1.
* * *
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"OTHER PARTY" shall have the meaning set forth in Section 8.5.
"OUT-OF-FIELD USE" shall have the meaning set forth in Section
3.10(b).
"PARTY" shall mean Licensor or Licensee and, when used in the
plural, means both Licensor and Licensee or
their respective Permitted
Transferees or Third Party transferees, in
each case upon the consummation of a
Transfer in accordance with the terms and
conditions herein.
"PATENT REQUEST" shall have the meaning set forth in Section
3.7.
"PAYMENT DATE" shall have the meaning set forth in Section 8.5.
"PAYMENT TERM" shall commence on the Closing Date and, unless
this
Agreement is earlier terminated pursuant to
Section 6.2, last until * * *.
"PERMITTED TRANSFEREE" shall mean any Affiliate of the Licensor
or
Medicis, as applicable, of whom the
Licensor or Medicis, as applicable, directly
or indirectly, through one or more
intermediaries, owns or controls more than
fifty percent (50%) of the voting
securities or economic interest in such
Affiliate and such Affiliate is able to
provide and at all times update a valid
Form W-8BEN in accordance with U.S.
Treasury Regulation 1.1441-(e)(4)(ii), for
so long as such Affiliate continues to be a
Permitted Transferee; provided, that
the Licensor or Licensee, as applicable,
shall remain directly liable for the
performance by the Permitted Transferee of
all obligations of the Licensor or
Licensee, as applicable, under this
Agreement and no Transfer to a Permitted
Transferee hereunder shall relieve the
Licensor or Licensee, as applicable, of
its obligations pursuant to this
Agreement.
"* * * PAYMENT" shall have the meaning set forth in Section
8.1.
* * *
"PMA APPLICATION" shall have the meaning set forth in the
Supply
Agreement.
"PMA APPROVALS" shall have the meaning set forth in the Supply
Agreement.
"PERSON" shall mean any individual, firm, corporation,
partnership,
limited liability company, trust, joint
venture or other entity or organization.
"PREVIOUS LICENSE AGREEMENT" shall mean the Amended and
Restated
Intellectual Property License Agreement
between Q-Med and HA North American
Sales AB, dated March 6, 2003 (as the same
may be amended from time to time in
accordance with its terms).
"PREVIOUS LICENSE LETTER AGREEMENT" shall mean that certain
letter
from Medicis to Q-Med, dated as of the
Closing Date.
"PREVIOUS SUPPLY AGREEMENT" shall mean that certain Supply
Agreement
dated as of March 7, 2003, between Medicis
and Q-Med, as the same may be amended
from time to
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time in accordance with its terms.
"PROMOTIONAL LABELING" shall have the meaning set forth in the
Supply Agreement.
"REGULATORY APPROVALS" shall have the meaning set forth in the
Supply Agreement.
"RESPONSIBLE PARTY" shall have the meaning set forth in Section
3.10(b).
"RETURN PAYMENT" shall have the meaning set forth in Section
8.2.
"STEERING COMMITTEE" shall have the meaning set forth in the
Supply
Agreement.
"SUPPLY AGREEMENT" shall mean the Supply Agreement, dated as of
the
Closing, between Q-Med and MAHI (as the
same may be amended from time to time in
accordance with its terms).
"TERM" shall have the meaning set forth in Section 6.1.
"TERRITORY" shall mean the United States, including its
territories
and possessions, and Canada.
"TERRITORY SPECIFIC MATERIALS" shall have the meaning set forth
in
Section 2.3(b)(i).
"THIRD ANNIVERSARY" shall have the meaning set forth in Section
10.1
herein.
"THIRD PARTY" shall mean any Person who or which is neither a
Party
nor an Affiliate of a Party.
"THIRD PARTY INDEMNIFIABLE CLAIM" shall have the meaning set
forth
in Section 10.4 herein.
"TPD" shall mean Canada's Therapeutic Products Directorate.
"TRANSACTION AGREEMENTS" shall mean this Agreement, the Supply
Agreement, the Macrolane Side Letter, the
Previous License Letter Agreement, the
Guarantee and the Confidentiality
Agreement.
"TRANSFER" shall mean any Change in Control or Volitional Change
in
Control of a Party or a transfer or
assignment by a Party of its rights and
obligations under this Agreement; provided,
however, that for purposes of this
Agreement the actions set forth in Section
2.1 hereof shall not be deemed to be
a Transfer.
"USPTO" shall mean the United States Patent and Trademark
Office.
"VOLITIONAL CHANGE IN CONTROL" shall mean (a) the disposition of
all
or substantially all of the outstanding
shares, assets or business of a Party or
Medicis on a
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consolidated basis; or (b) any transaction
or event (or series of transactions
or events) as a result of which any Person
(other than an Affiliate of such
Party or Medicis), acting singly or as a
part of a "partnership, limited
partnership, syndicate or group" (within
the meaning of Section 13(d)(3) of the
United States Securities Exchange Act of
1934, as amended): (i) acquires (by
purchase, merger, consolidation or
otherwise) or for the first time controls or
is able to vote (directly or through
nominees, beneficial ownership, proxy or
contract) fifty percent (50%) or more of
the aggregate of all outstanding equity
securities of a Party or Medicis; or (ii)
acquires (by purchase, merger,
consolidation or otherwise) equity
securities of a Party or Medicis with the
right to, or for the first time is
otherwise able to, nominate or designate
(directly or through nominees, beneficial
ownership, proxy or contract) at least
fifty percent (50%) of the nominees to the
board of directors of such Party or
Medicis, in each of (a) or (b),in the event
that Licensor, Licensee or Medicis,
as the case may be, was a party to the
applicable transaction or of which the
Board of Directors of Licensor, Licensee or
Medicis, as the case may be, shall
have approved.
"WEBSITE CONTENT" shall have the meaning set forth in Section
2.5.
1.2 Other
Definitional Provisions.
(a) The
words "HEREOF", "HEREIN", "HERETO" and "HEREUNDER" and words of
similar import, when used in this
Agreement, shall refer to this Agreement as a
whole and not to any particular provision
of this Agreement unless otherwise
indicated.
(b) The
terms defined in the singular shall have a comparable meaning
when
used in the plural, and vice versa.
(c) The
term "INCLUDING" shall mean "INCLUDING, WITHOUT LIMITATION."
(d) When a
reference is made in this Agreement to an Article, a Section or
Schedule, such reference shall be to an
Article of, a Section of or a Schedule
to, this Agreement unless otherwise
indicated.
ARTICLE II
LICENSE AND RESERVATION
2.1 Grant
of Licenses to Licensee.
(a) Grant
of License to Licensed Rights. Subject to the terms and
conditions of this Agreement, Licensor
grants to Licensee, effective as of the
Closing Date, a payment bearing, exclusive
(even as to Licensor and its
Affiliates), nonsublicensable (except as
permitted in Section 12.1) and
nonassignable (except as permitted in
Section 12.1) license to the Licensed
Rights in the Field in the Territory (i) to
market, use, distribute, import,
offer for sale, sell, commercialize or
otherwise dispose of, but not to make or
have made, Licensed Products in the
Territory, itself or to have such done on
its behalf; (ii) to market, use,
distribute, offer for sale, sell, commercialize
or otherwise dispose of Licensed Products
in the Territory via the Internet,
itself or to have such done on its behalf,
provided that any web site owned and
operated by or on behalf of Licensee is
directed solely to users in the
Territory, and provided, further, that
Licensee may only ship Licensed Products
or direct promotional materials related
thereto to locations within the
Territory; and (iii) to conceive, but not
develop, Improvements to the Licensed
Rights
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except that Licensee may develop
Improvements and conduct clinical development
(or have such development done on its
behalf) only to the extent expressly
provided herein and in Article VI of the
Supply Agreement, provided with respect
to (iii) herein that (x) Licensor remains
the sole source of development work
for Licensee unless otherwise provided
herein or in Article VI of the Supply
Agreement or Licensor is unable to provide
Licensee with the research and
development reasonably required by
Licensee, in which case the Steering
Committee shall select a contract
laboratory to provide development work under
Licensor's supervision and (y) Licensor
retains ownership of all Improvements,
as set forth in Section 2.3 herein, except
as expressly provided herein and in
Article VI of the Supply Agreement. For
avoidance of doubt, Licensee
acknowledges and agrees that the right to
develop in accordance with Section
2.1(a)(iii) shall not include a right for
Licensee to modify or develop changes
to the formulation, primary packaging, or
manufacturing processes for Licensed
Products. Licensee shall not use the
Licensed Rights outside the Territory for
any purpose or in the Territory for any
purpose other than as specifically
authorized herein.
(b) Grant
of License to Licensed Regulatory Data. Subject to the terms
and
conditions of this Agreement, Licensor
grants to Licensee, effective as of the
Closing Date, a payment bearing, exclusive
(even as to Licensor and its
Affiliates), nonsublicensable (except as
permitted in Section 12.1) and
nonassignable (except as permitted in
Section 12.1) license in the Field in the
Territory to copy, reference and otherwise
use the Licensed Regulatory Data, but
only to the extent recommended or suggested
by the FDA or TPD or as necessary or
reasonably useful for the purpose of
conducting clinical trials and obtaining
and maintaining Regulatory Approvals for
the Licensed Products in the Field in
the Territory pursuant to this Agreement
and the Supply Agreement.
(c)
Limited Exception to Exclusivity. Notwithstanding the exclusive
rights
granted in Section 2.1(b), the Parties
agree that Licensor and its Affiliates
shall have the right to complete the
clinical study in Canada titled * * * in
progress as of the date hereof (the
"CANADIAN STUDY"). For the avoidance of
doubt, the data, materials and other
results of the Canadian Study shall be
owned by Licensor and deemed to be
"Licensed Regulatory Data" for purposes of
this Agreement without any additional
consideration on the part of Licensee.
(d) Rights
at End of Payment Term. As of the expiration of the Payment
Term, the Licenses shall be deemed fully
paid up and irrevocable (except as
otherwise provided in Section 6.2) for the
remainder of the Term.
2.2
Reservation of Rights. Other than as expressly stated herein or in
the
Previous License Agreement, Licensee shall
have no other right to use or
interest in the Licensed Rights or Licensed
Regulatory Data. Specifically,
Licensee shall not have any interest in any
other patents, trademarks or other
intellectual property owned, licensed,
developed or controlled by Licensor,
other than as expressly provided in this
Agreement, the Previous License
Agreement or other valid written
agreements. Licensee undertakes not to make,
market, use, import, offer for sale, sell
or in any other way take any action to
commercialize the Licensed Products,
Licensed Regulatory Data or Licensed Rights
outside the Territory. Each Party shall use
commercially reasonable efforts to
direct to the other Party customer requests
for Licensed Products received
through each Party's customer service that
relate, in case of the Licensee,
requests outside the Territory and, in the
case of Licensor, requests in the
Territory, in each case only to the
extent
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that such referral does not violate or
conflict with any confidentiality
obligations binding on the directing Party.
The Parties intend that this
Agreement shall not restrict Licensor's
freedom to make, use, import, offer for
sale, sell, practice or otherwise
commercialize the Licensed Products, Licensed
Regulatory Data or Licensed Rights (a)
within the Field outside the Territory or
(b) outside the Field whether or not in the
Territory. Except as specifically
provided herein or in Article VI of the
Supply Agreement, Licensee grants no
rights of ownership, use or otherwise in
Licensee's patents, trademarks,
know-how or other intellectual
property.
2.3
Ownership of Intellectual Property.
(a)
Licensor's Ownership. Licensee acknowledges and agrees that, as
between Licensee and Licensor, Licensor is
the sole owner of the Licensed Rights
and Licensed Regulatory Data and any
Improvements to the Licensed Rights or
Licensed Regulatory Data, including without
limitation products in whole or in
part based on, utilizing or otherwise
incorporating the Licensed Rights or
Licensed Regulatory Data, whether
conceived, created or developed by Licensor or
Licensee, except as expressly provided
herein and in Article VI of the Supply
Agreement. Licensee shall not directly or
indirectly question, attack, contest,
or in any other manner impugn the validity,
enforceability, registration or
Licensor's ownership of, or right to use
the Licensed Rights and Licensed
Regulatory Data and any Improvements
thereupon (other than the Improvements
owned by Licensee as expressly provided
herein and in Article VI of the Supply
Agreement), including without limitation
products in whole or in part based on,
utilizing or otherwise incorporating the
Licensed Rights and Licensed Regulatory
Data, nor shall Licensee willingly become
an adverse party to Licensor in any
Action contesting the validity or
enforceability of, or Licensor's ownership of
or rights in, the Licensed Rights and
Licensed Regulatory Data, except that
Licensee shall be permitted to be an
adverse party in connection with a
defensive counterclaim, and to assert any
claim or defense in any Action based
on any dispute arising out of or in
connection with this Agreement, or the
breach, termination, or invalidity
hereof.
(b)
Licensee's Ownership. Licensor acknowledges and agrees that, as
between Licensor and Licensee, Licensee
shall have the right to create, develop
and acquire (itself or to have such done on
its behalf) and own all right, title
and interest, and goodwill as applicable,
in the following that are created,
developed or acquired by or on behalf of
Licensee (and, to the extent that any
of the following constitute Improvements to
the Licensed Rights or Licensed
Regulatory Data, such Improvements):
(i) "TERRITORY SPECIFIC MATERIALS" which shall mean: (A)
trademarks
and trade
dress for or utilized with the Licensed Products in the
Territory
(including, for the avoidance of doubt, the mark "SUBQ" or any
mark
containing the term "SUBQ"), but excluding the Licensor
trademarks
used in
accordance with Section 3.2(a) e.g., NASHA or Licensor
corporate
identifier; (B) website content for the Licensed Products in
the
Territory;
and (C) marketing, sales and promotional materials for the
Licensed
Products in the Territory, including Advertising and
Promotional
Labeling;
(ii) * * *
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(iii) Improvements conceived by Licensee that are not in whole or
in
part based
on, do not utilize or do not otherwise incorporate, the
Licensed
Rights or Licensed Regulatory Data.
For
avoidance of doubt, Licensee acknowledges and agrees that
Licensee's
ownership of the Improvements and materials
included in the Territory Specific
Materials or Licensee Regulatory Materials
does not imply ownership of the
Licensed Rights or Licensed Regulatory Data
or any other Improvements or
materials. Licensor shall not directly or
indirectly question, attack, contest,
or in any other manner impugn the validity,
enforceability, registration or
Licensee's ownership of, or right to use
the Territory Specific Materials or
Licensee Regulatory Materials nor shall
Licensor willingly become an adverse
party to Licensee in any Action contesting
the validity or enforceability of, or
Licensee's ownership of or rights in, the
Territory Specific Materials or
Licensee Regulatory Materials, except that
Licensor shall be permitted to be an
adverse party in connection with a
defensive counterclaim, and to assert any
claim or defense in any Action based on any
dispute arising out of or in
connection with this Agreement, or the
breach, termination, or invalidity
hereof.
(c) Joint
Ownership. The following Improvements shall be jointly owned by
the Parties: (i) Improvements to the
Licensed Rights, Licensed Regulatory Data
or Licensee Regulatory Materials that the
Parties' designees on the Steering
Committee mutually agree shall be jointly
owned by the Parties for the purpose
of avoiding prior art status, under 35
U.S.C. ss. 102(e), and (ii) clinical data
developed by the Parties that the Parties'
designees on the Steering Committee
mutually agree shall be jointly owned
pursuant to Article VI of the Supply
Agreement (the "JOINTLY OWNED
IMPROVEMENTS").
2.4
Improvements.
(a) Rights
to Improvements. Notwithstanding the foregoing, any
Improvements to the Licensed Rights or
Licensed Regulatory Data, including
Licensor's undivided interest in the
Jointly Owned Improvements, made by or for
Licensor during the Term (other than the
Improvements owned by Licensee as
expressly provided herein and in Article VI
of the Supply Agreement) shall be
made available to Licensee and be deemed
included within the scope of the
Licensed Rights or Licensed Regulatory
Data, as applicable, without any
additional consideration on the part of
Licensee. Without limiting the
generality of the foregoing and except for
the Improvements owned by Licensee as
expressly provided herein and in Article VI
of the Supply Agreement, Licensee
agrees not to, and not to assist any Third
Party to, apply to register or
register title to any intellectual property
rights in the Licensed Rights or
Licensed Regulatory Data or any
Improvements thereupon, including Improvements
to Licensed Products that are, in whole or
in part, based on, utilizing or
otherwise incorporating the Licensed Rights
or Licensed Regulatory materials,
except for the Improvements owned by
Licensee as expressly provided herein and
in Article VI of the Supply Agreement.
(b)
Certain Improvements Relating to * * *. If, in order to obtain * *
*
for the Licensed Products, Licensor
develops an Improvement to the Licensed
Products for * * * use and such Improvement
has an average particle size larger
than * * *, then such Improvement will be
deemed a Licensed Product under this
Agreement and the Supply Agreement
notwithstanding its average particle size or
any other provision of this Agreement or
the Supply Agreement to the
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contrary, and the definition of "Licensed
Product" herein and in the Supply
Agreement and Section 2.1(a) hereof shall
be automatically amended as necessary
to include such Improvement, provided,
however that in the event * * * are
achieved with a Licensed Product having an
average particle size equal to or
less than * * *, this Section 2.4(b) shall
not apply and shall be of no force or
effect. For the avoidance of doubt, nothing
in this Section 2.4(b) or this
Agreement is intended to require Licensor
to develop an Improvement to the
Licensed Products having an average
particle size larger than * * *.
(c) Grant
Back License Outside the Territory. Subject to the terms and
conditions of this Agreement and to the
extent that Licensee has the right to
grant license rights therein, Licensee
grants to Licensor, effective as of
Closing Date, a fully paid-up, exclusive
outside the Territory for all purposes,
nonsublicensable (except as permitted in
Section 12.1) and nonassignable (except
as permitted in Section 12.1) license to
make, market, use, distribute, import,
offer for sale, sell, commercialize or
otherwise dispose of (i) all of the
Territory Specific Materials, except for
the trademarks and trade dress for the
Licensed Products specified in Section
2.3(b)(i)(A) and the website content
specified in Section 2.3(b)(i)(B); (ii) all
of the Licensee Regulatory Materials
except for the Regulatory Approvals and Opt
Out Data; and (iii) Licensee's
undivided interest in the Jointly Owned
Improvements. For the avoidance of
doubt, subject to the terms and conditions
of this Agreement and to the extent
that Licensee has the right to grant
license rights therein, Licensee grants to
Licensor, effective as of Closing Date, a
fully paid-up, exclusive outside the
Territory for all purposes,
nonsublicensable (except as permitted in Section
12.1) and nonassignable (except as
permitted in Section 12.1) license to make,
market, use, distribute, import, offer for
sale, sell, commercialize or
otherwise dispose of the Licensee
Regulatory Materials (except for the
Regulatory Approvals and Opt Out Data),
including, for the avoidance of doubt,
the regulatory and clinical data and
materials generated in accordance with
Section 6.3(b)(iii) of the Supply
Agreement.
(d) Grant
Back License Inside the Territory Outside the Field. Subject to
the terms and conditions of this Agreement
and to the extent that Licensee has
the right to grant license rights therein,
Licensee grants to Licensor,
effective as of Closing Date, a fully
paid-up, exclusive inside the Territory
outside the Field, nonsublicensable (except
as permitted in Section 12.1) and
nonassignable (except as permitted in
Section 12.1) license to make, market,
use, distribute, import, offer for sale,
sell, commercialize or otherwise
dispose of (i) all of the Licensee
Regulatory Materials except for the
Regulatory Approvals and Opt Out Data; and
(ii) Licensee's undivided interest in
the Jointly Owned Improvements. For the
avoidance of doubt, subject to the terms
and conditions of this Agreement and to the
extent that Licensee has the right
to grant license rights therein, Licensee
grants to Licensor, effective as of
Closing Date, a fully paid-up, exclusive
inside the Territory outside the Field,
nonsublicensable (except as permitted in
Section 12.1) and nonassignable (except
as permitted in Section 12.1) license to
make, market, use, distribute, import,
offer for sale, sell, commercialize or
otherwise dispose of the Licensee
Regulatory Materials (except for the
Regulatory Approvals and Opt Out Data)
including, for the avoidance of doubt, the
regulatory and clinical data and
materials generated in accordance with
Section 6.3(b)(iii) of the Supply
Agreement.
(e) Grant
Back License to the Opt Out Data. Subject to the terms and
conditions of this Agreement and to the
extent that Licensee has the right to
grant license rights therein, Licensee
grants to Licensor, effective as of
Closing Date, a fully paid-up, exclusive
inside the
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Territory outside the Field and outside the
Territory, nonsublicensable (except
as permitted in Section 12.1) and
nonassignable (except as permitted in Section
12.1) license to access and use the Opt Out
Data solely for the purpose of
complying with the safety reporting
requirements of the FDA, TPD, or an
equivalent regulatory body in a country
outside the Territory; provided, that
the Opt Out Data shall not include data or
information owned by Third Parties or
that Licensee is under an obligation at law
or to Third Parties not to disclose
(e.g., protected patient identification
information). For purposes of the
preceding sentence, "Third Party" shall not
include contract laboratories or
other agents acting on behalf of Licensee
or its Affiliates. Notwithstanding the
foregoing, with respect to data or
information owned by Third Parties or that
Licensee is under an obligation to Third
Parties not to disclose, Licensee shall
use commercially reasonable efforts to
cause such Third Parties to provide
letters of authorization granting necessary
rights of reference or permission to
disclose (e.g., to their confidential
information).
2.5
Website Content and URLs.
(a) Cross
License. To the extent a Party or an Affiliate of a Party has
the right to grant licenses to the content
for its website that describes a
Licensed Product ("WEBSITE CONTENT"), such
Party grants the other Party,
effective as of the Closing Date, a fully
paid-up, non-exclusive,
nonsublicensable (except as permitted in
Section 12.1) and nonassignable (except
as permitted in Section 12.1) license to
use such Website Content in connection
with the marketing, offering for sale, and
distribution of the Licensed
Products, which license shall include the
right to copy, prepare derivative
works and publicly display such Website
Content. The licensor of such Website
Content shall in all instances act
reasonably to provide materials embodying the
Website Content to the licensee of such
content and in allowing the licensee of
the Website Content to display such content
as provided in all cases at the
licensee's reasonable request and sole
expense. Prior to copying the Website
Content of the other Party or its
Affiliates, the licensee of the Website
Content shall send the licensor an email
describing the Website Content it wants
to copy, and the licensor shall, within
five (5) Business Days, provide the
licensee with its commentary, updates and
notes, if any, on the Website Content
identified in the licensee's email.
(b)
Conditions to License. The license granted to Licensee in
Section
2.5(a) is subject to the conditions that
(i) any website owned or operated by or
on behalf of Licensee that displays Website
Content (A) is directed solely to
users in the Territory, and (B) contains a
prominent disclaimer to the effect
that any Website Content is directed solely
to users in the United States or
Canada; (ii) any website owned or operated
by or on behalf of Licensor that
displays Website Content (A) is directed
solely to users outside the Territory,
and (B) contains a translation of
Licensee's Website Content into a language
other than the English language or a
prominent disclaimer to the effect that any
Website Content written in the English
language is not directed to users in the
United States or Canada.
(c) Access
to Websites. It is understood and agreed that it shall not be a
breach of this Section 2.5 if (i) users
outside the Territory are able to gain
access to websites owned or operated by or
on behalf of Licensee, provided that
Licensee does not take any affirmative
measures to target such users and takes
commercially reasonable measures to respond
only to users located within the
Territory, for example, by declining to
provide additional information to users
who identify themselves as being located
outside the Territory, or (ii) users in
the Territory
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<PAGE>
are able to gain access to websites owned
or operated by or on behalf of
Licensor, provided that Licensor does not
take any affirmative measures to
target such users and takes commercially
reasonable measures to respond only to
users located outside the Territory, for
example, by declining to provide
additional information to users who
identify themselves as being located in the
Territory. Licensor and Licensee shall
ensure that their respective websites
substantially comply with the applicable
FDA and the applicable TPD
requirements. Licensor shall not, and shall
cause its licensees not to, register
or use (i) any Licensee Mark in any URL or
domain name, or (ii) any trademark
for a Licensed Product in any URL or domain
name that contains the international
extension ".us" (for the United States) or
".ca" (for Canada).
ARTICLE III
OBLIGATIONS
3.1
Diligence Efforts.
(a)
Diligence Obligations of the Parties. Licensee shall use
commercially
reasonable efforts to obtain Regulatory
Approvals for the Licensed Products in
the Territory, to bring Licensed Products
to market, and to maximize sales of
Licensed Products in the Territory. At a
minimum, it is Licensee's obligation
under this Section 3.1(a) to adopt and
implement efforts to bring Licensed
Products to market and to maximize sales
for each Licensed Product hereunder
that are reasonably equivalent to the sales
and other efforts and sales
strategies adopted and implemented by
Licensee's Affiliate pursuant to the
Previous License Agreement with regard to
the launch and ongoing sales efforts
for Restylane;(TM) provided, however, that
Licensee may adjust its efforts under
this Agreement to account for the
differences in the products and the market
opportunities therefor. In the event the
product currently marketed in Europe
under the trademark Restylane SubQ does not
meet the requirements of * * *,
Licensor shall use commercially reasonable
efforts to develop at least one
Licensed Product having * * *.
(b)
Diligence Default. In the event that Licensor believes that
Licensee
has committed a material breach of its
obligations under Section 3.1(a) for a
particular Licensed Product and Licensor
provides Licensee with written notice
of such alleged material breach, and
Licensee thereafter fails to effect a cure
of such alleged material breach within
thirty (30) days of receipt of the
written notice from Licensor, Licensor may
invoke the dispute resolution
procedures set forth in Article XI. If, in
a final arbitral decision, the
arbitral tribunal determines that Licensee
has committed a material breach of
its obligations in Section 3.1(a) with
respect to a particular Licensed Product
(a "DILIGENCE DEFAULT"), Licensor shall
have the exclusive remedies specified in
Sections 3.1(c) and 3.1(d).
(c)
Termination of Exclusive Rights. In the event a Diligence Default
has
occurred, Licensor may (i) terminate the
exclusive rights granted in Section 2.1
hereof for that particular Licensed Product
by sending written notice of such
termination to Licensee, and (ii) obtain a
duplicate PMA Approval with respect
to such Licensed Product in accordance with
Section 3.1(d) only for purposes of
obtaining and maintaining approval to
market and distribute such Licensed
Product in the Territory. If Licensor
terminates the exclusive rights granted in
Section 2.1 hereof for a particular
Licensed Product, such license with respect
to such Licensed Product shall continue in
effect but shall become nonexclusive
with regard to such Licensed Product
only.
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<PAGE>
(d)
Duplicate PMA Approvals.
(i) For purposes of this Section 3.1(d), "Licensor" shall refer
to
"Licensor
or its licensee." The procedure for obtaining duplicate PMA
Approvals
in the event of a Diligence Default shall be as follows:
(A) Pursuant to the FDA's existing procedure, Licensor shall
prepare
and file a complete original PMA Application based upon a right
of
reference to the information in Licensee's Regulatory Approvals
for
the
nonexclusive Licensed Product. Licensee shall cooperate fully
to
ensure that such PMA Application is complete, accurate and
acceptable for filing under 21 C.F.R. ss. 814.12. Licensee
shall
promptly provide all necessary letters of authorization
granting
rights of reference, shall use commercially reasonable efforts
to
cause Third Parties to provide letters of authorization
granting
necessary rights of reference (e.g., to their Master Files) and
otherwise shall use commercially reasonable efforts to enable
Licensor to fully comply with and pursue the FDA requirements
for
obtaining duplicates of the original PMA Approvals in
accordance
with the
terms of this Agreement. Licensee shall promptly cooperate
with Licensor's efforts and the FDA procedures as reasonably
requested by Licensor and as necessary to obtain such duplicate
PMA
Approvals.
(B)
The FDA generally refers to the foregoing procedure as
licensing
of a PMA Approval, with the owner of the original Regulatory
Approval as the licensor and the owner of the newly issued PMA
Approval as the licensee. These terms are not used in this
Section
3.1(d) in order to avoid confusion with this Agreement and
terms
related hereto.
(ii) Upon the completion of the procedures referenced in
Section
3.1(d)(i),
above: (A) Licensor shall have irrevocable ownership of its
duplicate
Regulatory Approvals for the sole purpose of marketing and
distributing the nonexclusive Licensed Product and (B)
Licensor's
distribution (or distribution by its other licensees and/or agents)
of
such
nonexclusive Licensed Products in the United States shall be
conducted
under the Regulatory Approvals that Licensor owns.
(iii) As applicable, both Parties shall provide all necessary
letters of
authorization granting rights of reference, shall use
commercially reasonable efforts to cause Third Parties to provide
letters
of
authorization granting necessary rights of reference (e.g., to
their
Master
Files) and otherwise shall cooperate fully in complying with
the
FDA
requirements for obtaining duplicate PMA Approvals in accordance
with
the terms
of this Agreement.
(e)
Exclusive Remedies. The remedies specified in Sections 3.1(b),
3.1(c)
and 3.1(d), shall be the exclusive remedy
in the event of a Diligence Default
notwithstanding any other rights, powers,
remedies and privileges that may be
available to Licensor under this Agreement
(including, without limitation,
Article X hereof), the Transaction
Agreements or Laws of any Governmental
Authority. If, following a Diligence
Default, the exclusive license rights
granted in Section 2.1 hereof for a
particular Licensed Product become
nonexclusive in accordance with
15
<PAGE>
Section 3.1(c), Licensee shall have no
further obligations under Section 3.1(a)
for that Licensed Product.
3.2
Markings and Trade Dress.
(a)
Licensee shall use commercially reasonable efforts to
substantially
comply with all patent marking and
placement of corporate identifiers and
identifiers of NASHA technology on the
packaging and package inserts of the
Licensed Products as required by applicable
Law in the U.S. and Canada. Licensee
shall use and display on all packaging and
package inserts of the Licensed
Products Licensor corporate identifiers and
identifiers of NASHA technology that
are reasonably requested by Licensor and
are of a size, format and location
appropriate for said packaging as
reasonably determined by Licensee, provided
that such identifiers shall be displayed in
a reasonably prominent manner.
Licensee shall not use or display
Licensor's corporate identifiers or
identifiers of NASHA technology other than
on promotional literature, packaging
and package inserts, without Licensor's
express written consent, and in any
event shall not use or display Licensor's
corporate identifiers or identifiers
of NASHA technology in a manner
inconsistent with Licensor's use and display
thereof. It shall not be considered a
breach by Licensee of this Section 3.2 if,
through inadvertence or Third Party error,
such identifiers are not, or are
incorrectly, displayed on a small number of
promotional literature, packages or
package inserts of the Licensed
Products.
(b)
Licensee shall have the right to adopt, own for registration and
use
for Licensed Products, in each case solely
in the Territory, (i) trademarks
owned or controlled by Licensor and used to
brand the Licensed Products outside
the Territory or trademarks substantially
similar thereto (the "LICENSOR MARKS)
and/or the trade dress owned or controlled
by Licensor and used in connection
with the Licensed Products outside the
Territory, or trade dress substantially
similar thereto (the "LICENSOR TRADE
DRESS"); or (ii) trademarks distinctive to
Licensee, provided such trademarks are not
confusingly similar to the Licensor
Marks existing and publicly known (the
"LICENSEE MARKS) and/or trade dress
distinctive to Licensee, provided such
trade dress is not confusingly similar to
the Licensor Trade Dress existing and
publicly known (the "LICENSEE TRADE
DRESS") and provided further that Licensee
(x) shall bear its own expenses with
regard to adoption or modification of
Licensee Marks and Licensee Trade Dress,
and (y) shall not adopt a Licensee Trade
Dress which is incompatible with or
unduly burdensome on Licensor's packaging
or other equipment. For the avoidance
of doubt, Licensee may adopt any
combination of the foregoing (e.g., the
Licensee Marks with the Licensor Trade
Dress or the Licensor Marks with the
Licensee Trade Dress).
(c) In the
event that Licensee adopts the Licensor Marks to brand and
market the Licensed Products in the
Territory, the Parties agree that Licensor
shall, and shall cause its Third Party
licensees to, refrain from adopting new
trademarks, or changing or modifying the
existing trademarks, for any product of
Licensor that is distributed inside the
Territory (either inside or outside the
Field) in a way as to make it confusingly
similar to the marks adopted by
Licensee, provided that Licensor shall be
free to change, modify or adapt its
trademarks used in connection with its
products outside the Territory, even if
such changes, modifications or adaptations
result in trademarks that are
confusingly similar to the trademarks used
by Licensee in connection with
Licensed Products within the Territory.
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<PAGE>
(d) In the
event that Licensee elects to adopt the Licensor Trade Dress
for use in connection with the Licensed
Products in the Territory, the Parties
agree that each Party shall be free to
change, modify or adapt its trade dress
used in connection with its products, even
if such changes, modifications or
adaptations result in trade dress that is
confusingly similar to the trade dress
used by the other Party in connection with
its products; provided however
Licensor shall, and shall use commercially
reasonable efforts to cause its Third
Party licensees to, refrain from modifying
the Licensor Trade Dress in a way
identical to Licensee's modifications of
Licensor Trade Dress adopted by the
Licensee.
(e) In the
event that Licensee adopts the Licensee Marks or Licensee Trade
Dress to brand and market the Licensed
Products in the Territory, the Parties
agree that Licensor shall, and shall cause
its Third Party licensees to, refrain
from adopting new trademarks or trade dress
or changing or modifying the
existing trademarks or trade dress, for any
product of Licensor that is
distributed either in or outside the
Territory in a way as to make it identical
or confusingly similar to the Licensee
Marks or Licensee Trade Dress.
3.3
Protection of Intellectual Property. Licensee shall take such
action
as Licensor reasonably requests in writing,
at Licensor's expense except as
otherwise determined by the Steering
Committee in accordance with the Supply
Agreement, to assist Licensor in obtaining,
registering and perfecting the
Licensed Rights and disclosing pertinent
information and executing documents in
connection therewith.
3.4
Compliance With Relevant Law. Licensor and Licensee shall each
comply
in all material respects with all
applicable Laws that pertain to the activities
for which Licensor and Licensee are each
responsible under this Agreement.
3.5
Prosecution and Maintenance of Licensed Patents. Subject to the
terms
and conditions of this Agreement, Licensor
shall use reasonable best efforts to
prosecute and maintain all Licensed Patents
in the Territory in Licensor's name
in accordance with the applicable terms set
forth herein. Except as otherwise
set forth in Section 4.2 herein with
respect to Actions for the infringement,
misappropriation or impairment of or damage
to the Licensed Rights, Licensor
shall be responsible for all actions and
costs associated with maintaining the
enforceability and validity of the Licensed
Patents, and paying maintenance fees
and/or annuities, and all other costs
required to maintain the Licensed Patents.
Licensor shall use reasonable best efforts
to prosecute each of the Licensed
Patents either to issuance or until
administrative appeals to the Board of
Patent Appeals and Interferences or its
Canadian equivalent are exhausted.
Except as provided in Section 3.7 herein
with regard to patent applications
requested by Licensee, the preparation and
filing of any new patent applications
shall be entirely and solely at Licensor's
discretion.
3.6
Correspondence Relating to Patent Prosecution. Licensor shall
deliver
to Licensee, or counsel designated by
Licensee, copies of all non-privileged
correspondence to and from the USPTO and
CIPO relating to the Licensed Patents
in the Territory, as well as all
non-privileged correspondence with the World
Intellectual Property Organization relating
to any International Application
designating the United States or Canada,
and all non-privileged correspondence
with any national or regional patent office
containing any information that may
reasonably be material to the validity,
scope or enforceability of the Licensed
Patents, relating to
17
<PAGE>
applications corresponding to or claiming
priority with or from the Licensed
Patents. Such correspondence shall be
delivered promptly after the origination
or receipt of such correspondence. With
respect to the Licensed Patents,
Licensee or counsel designated by Licensee
shall have the right to submit
comments on such correspondence to Licensor
within fifteen (15) Business Days
after Licensor sends such correspondence to
Licensee or counsel designated by
Licensee. If Licensee or counsel designated
by Licensee timely submits comments
to Licensor, and subject always to the best
judgment of Licensor and its
counsel, Licensor shall use commercially
reasonable efforts to incorporate all
reasonable comments in its further
correspondence with the USPTO or CIPO,
provided incorporation of the comments
would not unreasonably delay, burden or
increase the expense of the prosecution of
pending patent applications.
3.7
Divisional, Continuation and New Patent Applications. From time
to
time Licensee may desire that Licensor file
a divisional, continuation or new
application for patent in the Territory
embodying an invention conceived by
Licensee and in whole or in part based on,
utilizing or otherwise incorporating
the Licensed Rights. In such circumstances,
Licensee shall submit to the
Steering Committee, in accordance with the
Supply Agreement, a request for
patent filing detailing the invention, the
effect of the invention on the
commercialization of the Licensed Products
in the Territory (if any) and any
information known to Licensee regarding the
novelty, non-obviousness and general
patentability of the invention (a "PATENT
REQUEST"). Licensee and Licensor shall
cause their respective designees on the
Steering Committee, in accordance with
the Supply Agreement, to decide whether or
not to approve the Patent Request,
taking into consideration both any effect
on the commercialization of the
Licensed Products in the Territory and the
patentability of the invention
proposed for patenting. If the Steering
Committee in accordance with the Supply
Agreement approves a Patent Request,
Licensor shall use commercially reasonable
efforts to timely file a patent application
based on the invention detailed
therein and to diligently prosecute such
application to issuance, provided that
Licensee shall pay all reasonable costs
related to any patent application filed
pursuant to a Patent Request and any patent
that issues therefrom to the extent
the application and patent relate
exclusively to the Territory. To the extent
the application and any patent that issues
therefrom are relevant to the
worldwide market, Licensee and Licensor
shall cause their respective designees
on the Steering Committee to determine the
appropriate allocation of cost as
between Licensee and Licensor.
Notwithstanding Licensee's payment of prosecution
and maintenance fees, any patent
application embodying an invention in whole or
in part based on, utilizing or otherwise
incorporating the Licensed Rights,
filed pursuant to a Patent Request, or
otherwise, and any patent that issues
therefrom shall be owned in its entirety by
Licensor unless the Parties'
designees on the Steering Committee
mutually agree that such application or
patent shall be jointly owned for the
purpose of avoiding prior art status, such
as under 35 U.S.C. ss. 102(e). For the
avoidance of doubt, the Parties intend
that Licensee has the right, on its own
and
