Execution
Version
Exhibit
10.32
2008 AGREEMENT RELATED TO
PROGENICS’ MNTX IN-LICENSE
THIS AGREEMENT (the “ Agreement ”) is
entered into as of this 16th day of October, 2008 and is effective
as of the Effective Date (as hereinafter defined), by and among the
University of Chicago, acting on behalf of itself and its affiliate
ARCH Development Corporation (the “ University
”), Progenics Pharmaceuticals, Inc. (“ Progenics
”), Progenics Pharmaceuticals Nevada, Inc. (“
ProNev ”), and Ono Pharmaceutical Co., Ltd. (“
Ono ”).
BACKGROUND
A.
The University and UR Labs, Inc.
(“ UR Labs ”) entered into an Option and License
Agreement dated as of May 8, 1985, as amended (the “
University Agreement ”), under which the University
granted UR Labs a license, with the right to sublicense, under
certain patent rights and know-how of the University;
B.
UR Labs and Progenics entered into a
Sublicense Agreement dated as of September 21, 2001 (the “
UR Labs-Progenics Agreement ”), under which UR Labs
granted Progenics a license, with the right to further sublicense,
under certain patent rights and know-how, including the patent
rights and know-how licensed by the University to UR Labs under the
University Agreement;
C.
On December 22, 2005, UR Labs
assigned the UR Labs-Progenics Agreement together with all patent
rights and know-how licensed thereunder to ProNev, a wholly-owned
subsidiary of Progenics, in connection with the acquisition of
substantially all of the assets of UR Labs by ProNev;
D.
University, Progenics, ProNev and
Wyeth, acting through its Wyeth Pharmaceuticals Division (“
Wyeth ”), entered into an Agreement Related to
Progenics’ MNTX In-License dated as of December 22, 2005 (the
“ 2005 MNTX Agreement ”) regarding the
University Agreement.
E.
Progenics, ProNev, Wyeth and certain
affiliates of Wyeth entered into a License and Co-Development
Agreement dated as of December 23, 2005 (the “
Progenics-Wyeth Agreement ”) granting Wyeth a
worldwide license, with the right to sublicense, under certain
patent rights and know-how, including the patent rights and
know-how licensed by the University to UR Labs under the University
Agreement and the patent rights and know-how licensed to Progenics
under the UR Labs-Progenics Agreement;
F.
On even date herewith, the parties
to the Progenics-Wyeth Agreement are entering into a Partial
Termination and License Agreement (the “ Partial
Termination ”) confirming the termination of the rights
granted to Wyeth with respect to Japan under the Progenics-Wyeth
Agreement and under the 2005 MNTX Agreement.
G.
On even date herewith, Ono and
Progenics are entering into a License Agreement (the “
Progenics-Ono Agreement ”) granting Ono a license in
Japan, with the right to sublicense in certain circumstances, under
certain patent rights and know-how, including certain patent rights
and know-how licensed by the University to UR Labs under the
University Agreement and certain patent rights and know-how
licensed to Progenics under the UR Labs-Progenics
Agreement.
[*]
CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE
COMMISSION
Execution Version
H.
Ono has requested that the
University make certain acknowledgments, consents, waivers,
representations and agreements as a prerequisite to entering into
the Progenics-Ono Agreement;
I.
The University has requested that
Progenics and ProNev make certain acknowledgements, consents,
waivers, representations and agreements as set forth in this
Agreement; and
J.
The University, Progenics, and
ProNev will benefit financially and otherwise from the
Progenics-Ono Agreement and therefore desire to make the requested
acknowledgments, consents, waivers, representations and agreements
subject to the terms and conditions set forth below.
AGREEMENT
In consideration of the foregoing, and for other
good and valuable consideration, the sufficiency and receipt of
which are acknowledged by the parties, the parties agree as
follows:
Unless
specifically defined in the text of this Agreement, all capitalized
terms used in this Agreement shall have the meanings ascribed to
them below:
Compound. “Compound” means [*]
which is chemically defined as [*], and its pharmacologically
acceptable salts, together with their solvates, hydrates,
hemihydrates, metabolites, pro-drugs, esters, and if applicable,
any isomers or racemates thereof, [*]. The
“Compound” does not include the Excluded
Molecules.
Control or
Controlled. “Control” or
“Controlled” means with respect to any material, item
of information, or intellectual property right, the possession,
whether by ownership or license, of the right to grant a license or
other equivalent right with respect thereto.
Effective
Date. “Effective Date” means
the date on which all of the following shall have
occurred: (1) this Agreement shall have been duly
executed and delivered by all of the Parties hereto; and (2) the
Progenics-Ono Agreement shall have been duly executed and delivered
by Progenics and Ono and shall be in full force and
effect.
Excluded
Molecules. “Excluded Molecules”
means [*], chemically defined as [*], and its pharmacologically
acceptable salts, together with their solvates, hydrates,
hemihydrates, metabolites, pro-drugs, esters, and if applicable,
any isomers or racemates thereof, [*].
[*]
CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE
COMMISSION
Patent
Rights. “Patent Rights” means
any and all (a) U.S. or foreign patents, (b) U.S. or foreign patent
applications, including, without limitation, all provisional
applications, substitutions, continuations, continuations-in-part,
divisions, renewals, and all patents granted thereon, (c) all U.S.
or foreign patents-of-addition, reissues, reexaminations and
extensions or restorations by existing or future extension or
restoration mechanisms, including, without limitation,
supplementary protection certificates or the equivalent thereof,
and (d) any other form of government-issued right substantially
similar to any of the foregoing.
Product. “Product” means any
product containing the Compound as an active ingredient.
University
Compound. “University Compound”
means [*], which, for clarity, includes the Compound.
University
Patents in Japan. “University Patents in
Japan” means those patents and patent applications listed on
Schedule 2.9 to this Agreement; and any other Japanese
patents and patent applications owned by the University (whether
solely or jointly with others) which claim one or more [*], or
formulations of one or more [*], or processes for preparing one or
more [*], or intermediates for preparing one or more [*], or uses
of one or more [*], or dosage, packaging or means of delivery for
one or more [*]; as well as all continuations,
continuations-in-part, divisions, patents of addition, reissues,
renewals or extensions of any of the foregoing, in each case to the
extent that they claim the University Compound or [*].
University
Know-How. “University Know-How”
means all technology and information, including without limitation
methods, processes, techniques, compounds, drawings, indications,
data, results of tests or studies, including clinical studies
previously performed with respect to the University Compound,
expertise and trade secrets, whether patentable or not, relating to
the University Compound or necessary or useful for the
commercialization of Products, existing on the date hereof or at
any time during the term of this Agreement, which is owned or
controlled by University.
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2.
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University Acknowledgments, Consents, Waivers,
Representations, Warranties, and Agreements
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2.1.
Reservation of University
Rights. In
making this Agreement, the University reaffirms, and where
appropriate each provision shall be read to be subject to, the
University’s reservation to itself, subject to the rights
granted pursuant to the University Agreement, of the worldwide
right to (i) practice the inventions claimed in the University
Patents in Japan, and (ii) make, have made, use, import, offer to
sell and sell, transfer and disclose the University Compound, the
University Patents in Japan and the University Know-How in each
case solely for educational and non-commercial research purposes,
which it may choose in its own discretion and without payment to
any party therefor.
[*]
CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE
COMMISSION
2.2.
Consent to Progenics-Ono
Agreement. The University acknowledges that it
has reviewed the Progenics-Ono Agreement and hereby consents to
Progenics’ grant of the sublicense to Ono pursuant to the
Progenics-Ono Agreement.
2.3.
Scope of License Under University
Agreement. The University acknowledges and
agrees that subject to the reservation in Section 2.1 hereof
(Reservation of University Rights), pursuant to the University
Agreement, the University granted to UR Labs an exclusive license
under all rights in and to the University Compound, the University
Patents in Japan and the University Know-How. The
University further acknowledges that, to the knowledge of the
senior management of its technology transfer office (UChicago
Tech), as of this date, it does not own any patent, patent
application, or other intellectual property rights not included in
the rights granted to UR Labs under the University Agreement that
would be infringed (or if issued or granted would be infringed) by
the commercialization of the Compound as contemplated by the
Progenics-Ono Agreement.
2.4.
University Agreement in Effect;
No Breach. The University
Agreement is in full force and effect. The University
will notify Progenics and Ono of any breach of the University
Agreement by ProNev or other termination event or termination of
which the University has knowledge. The University
acknowledges that, as of the Effective Date of this Agreement, to
its knowledge UR Labs and ProNev are current in all payment
obligations required by the University Agreement, and the
University irrevocably waives any claims to the
contrary.
2.5.
Waiver of Claims.
The University irrevocably waives
any claims that, prior to the Effective Date, UR Labs or ProNev
failed to satisfy any of the diligence requirements set forth in
Section 3 of the University Agreement. The University irrevocably
waives any claims that, prior to the Effective Date of this
Agreement, UR Labs or ProNev failed to fulfill any of its
obligations under the University Agreement or otherwise failed to
comply with the terms and conditions of the University
Agreement.
2.6.
Enforcement Procedure.
During the term of the Progenics-Ono
Agreement, the University irrevocably waives compliance with the
first paragraph of Section 5 of the University Agreement that
requires an Independent Patent Attorney (as such term is defined in
the University Agreement) to make a prima facie
determination in the event of alleged third party infringement in
Japan. Rather, the University hereby agrees that during the term of
the Progenics-Ono Agreement, as between the University and
Progenics, Progenics shall have the right to enforce the University
Patents in Japan to the same extent, and following the same
procedure, as set forth in the Progenics-Ono Agreement.
2.7.
Access to University
Information. The
University hereby consents to Progenics sharing with Ono and any of
its Affiliates (as such term
