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Separately with the Securities and Exchange
Commission. Confidential Treatment Requested Under
17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
EXCLUSIVE LICENSE
AGREEMENT
This EXCLUSIVE LICENSE AGREEMENT (this
“ Agreement ”) dated as of December 31,
2008 is entered into by and between Novartis Pharma AG, a
corporation organized under the laws of Switzerland, having a place
of business at Lichtstrasse 35, 4056, Basel, Switzerland (“
Licensor ”), and Nektar Therapeutics, a Delaware
corporation, having a place of business at 201 Industrial Road, San
Carlos, CA 94070 (the “ Company ”). Licensor and
Company are each referred to herein as a “ Party
”, and collectively, as the “ Parties
”.
WHEREAS , Novartis Pharmaceuticals Corporation, Licensor
and Company have entered into an Asset Purchase Agreement (the
“ APA ”) for the sale and purchase of the
Transferred Assets related to the Business (each as defined in the
APA); and
WHEREAS , as a condition to Closing under the APA,
Licensor will grant Company certain exclusive license under
Intellectual Property included in the Transferred Assets in certain
Licensed Fields (as defined below) and Company will assign and
license rights to certain Improvements (as defined below) [***], on
the terms and conditions set forth herein.
NOW ,
THEREFORE , in consideration of the foregoing and the mutual
covenants contained herein and other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties agree as follows:
For the purposes of this Agreement, the
following terms shall have the following meanings. All other
capitalized terms used herein and not defined in this Article shall
be as defined in the body of this Agreement or the APA.
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17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
“ Collaborators ” means, with
respect to an Existing Agreement, the Third Party(ies) who are
parties to such Existing Agreement with the Company or its
Affiliate.
“
Company Group ” means, collectively, Company and each
of its Affiliates.
“
Company Improvements” means [***].
“ Controlled ” means, with
respect to specific Intellectual Property, that Intellectual
Property which the applicable Party owns or has a license such that
it can grant a license or sublicense thereto as contemplated under
this Agreement without violating the terms of any then-existing
agreement or other arrangement with, or the rights of, any Third
Party and without additional payment or obligation to such Third
Party.
“
Effective Date ” means the date set forth in the
Preamble.
“
Existing Agreements ” means [***].
“Future Collaborators”
means Third Parties to whom the
Company or Licensor or the respective Affiliates, licenses or
sublicenses, as applicable, rights granted hereunder, to the extent
permitted hereby.
“ Improvements ” means any
improvement, modification, derivative, analogue, mutation,
alteration, enhancement, translation, adaptation, addition, new
version or new invention, Controlled by either Party (including, in
the case of the Company, Controlled by any Future Collaborator of
the Company), solely or jointly, in or to any processes, products
or materials that are part of or related to the Business or the
Licensed Intellectual Property.
“
Intellectual Property ” shall have the meaning set
forth in the APA.
“
Know-How ” shall have the meaning set forth in the
APA.
“
Licensed Field ” means [***].
“Licensed Intellectual
Property” means
[***].
“
Licensed Improvements ” means [***].
“
Licensor Group ” means, collectively, Licensor and
each of its Affiliates.
“ Patent Right ” means any of
the following, whether existing now or in the future anywhere in
the Territory: (a) any issued patent, including
inventor’s certificates, utility model, substitutions,
extensions, confirmations, reissues, re-examination, renewal or any
like governmental grant for protection of inventions; and
(b) any pending application for any of the foregoing,
including any continuation, divisional, substitution, additions,
continuations-in-part, provisional and converted provisional
applications.
2
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17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
“Product” means, with respect to a Licensed Field,
products or services that may be developed, manufactured or
commercialized within such Licensed Field.
“ Regulatory Approval ” means
all approvals necessary, including price approval, for the
commercial sale of a therapeutic product in a given country or
regulatory jurisdiction.
“ Select Patent Rights ”
means the list of Patent Rights transferred to Licensor or its
Affiliates as part of the Transferred Assets under the APA
described on Exhibit D .
“ Services Agreement ” means
the Services Agreement attached hereto in Exhibit C ,
under which Licensor or an Affiliate thereof will provide Company
certain services as specified therein.
“
Territory ” means worldwide.
“
Third Party ” means any Person other than the Licensor
Group and the Company Group.
(a) License to Company . Subject to
the terms and conditions of this Agreement, Licensor hereby grants
to Company, with the right to sublicense pursuant to
Section 2.2, an exclusive (even as to Licensor) irrevocable,
perpetual, non-transferable (except pursuant to Section 7.9),
royalty-free, fully paid-up license in the Territory under the
Licensed Intellectual Property and Licensed Improvements to
develop, manufacture, have manufactured, use, import, export, sell,
offer to sell or otherwise commercialize Products within the
Licensed Field.
(b) License to Licensor . Subject
to the terms and conditions of this Agreement, Company hereby
grants to Licensor, with the right to sublicense pursuant to
Section 2.2, an exclusive (even as to Company) irrevocable,
perpetual, non-transferable (except pursuant to Section 7.9),
royalty-free, fully paid-up license in the Territory under the
Company Improvements to develop, manufacture, have manufactured,
use, import, export, sell, offer to sell or otherwise commercialize
products or services outside the Licensed Field. The foregoing
shall not limit Licensor’s rights under
Section 2.1(c).
3
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Separately with the Securities and Exchange
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17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
(c)
Assignment to Licensor . [***].
2.2 Sublicenses . Subject to the terms
and conditions of this Agreement, each Party shall have the right
to grant sublicenses (to multiple tiers of sublicensees) under the
licenses granted under this Agreement to any Affiliate or Third
Party; provided that each such sublicensee shall be subject to a
written agreement with terms and condition that are consistent
with, and no less protective of, the other Party than the terms and
conditions hereunder.
2.3 No Implied Licenses . Any
Intellectual Property rights of a Party not expressly granted to
the other Party under the provisions of this Agreement shall be
retained by such Party. Except as expressly provided in this
Agreement, Party does not grant to the other Party any right or
license in any Intellectual Property right, whether by implication,
estoppel or otherwise.
2.4 Consideration . The rights and
obligations provided under this Agreement are being provided as a
condition to Closing under the APA. As such, no further
consideration, financial or otherwise, will be due under this
Agreement, except as expressly provided herein.
2.5 Representations and Warranties . The
Company represents and warrants that it has provided true, correct
and complete copies of the Existing Agreements to Licensor.
Licensor represents and warrants that it has reviewed the Existing
Agreements and understands the terms thereof.
3.1 Services . Licensor shall perform or
have performed certain services in connection with the
Company’s or its Affiliate’s obligations under the
Existing Agreements as and to the extent and for the consideration
provided in the Services Agreement.
PATENT PROSECUTION AND
ENFORCEMENT; DMFs
4.1
Invention Disclosures .
4
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17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
(a) [***]. Licensor shall file, prosecute
and maintain the [***] in manner consistent with the standards it
applies with respect to the filing, prosecution and maintenance of
its own patents and patent applications. With respect to all other
Patent Rights included in the Licensed Intellectual Property and
all other Patent Rights included in Improvements owned by Licensor
or its Affiliates, Licensor will be solely responsible for filing,
prosecuting and maintaining such Patent Rights in its sole
discretion.
(c) Patent Term Extensions .
Company shall provide written notice to Licensor of any applicable
Regulatory Approval obtained by or on behalf of the Company
(“ Company Approval ”) that can provide a basis
for a patent term extension of Patent Rights or Licensor Patent
Rights (as defined below) within ten (10) days of receiving
such Regulatory Approval. The Parties shall cooperate, if necessary
and appropriate, with each other in gaining patent term extension
based on such Company Approval wherever applicable to Patent Rights
included in the Licensed Intellectual Property or any Patent Rights
to Improvements owned by Licensor that are applicable to the
Licensed Fields (“ Licensor Patent Rights ”).
The Parties shall, if necessary and appropriate, agree upon a joint
strategy relating to patent term extensions based on a Company
Approval, but, in the absence of mutual agreement with respect to
any extension issue, if Licensor does not wish to file for an
extension of any Patent Rights included in the Licensed
Intellectual Property and any Patent Rights to Improvements owned
by Licensor that are applicable to the Licensed Fields, then
Licensor shall timely let Company know sufficiently in advance so
as to permit Company to request Licensor to file for such
extension, in which case, Licensor shall file such extension at
Company’s expense.
(d) Select
Patent Rights . [***].
4.4 Third
Party Infringement .
(a) Notice . Company shall promptly
report in writing to Licensor any actual or potential infringement
that it becomes aware of related to any Licensed Intellectual
Property or Improvements related thereto, and shall provide
Licensor with all available evidence supporting such infringement
or unauthorized use. Licensor shall promptly report in writing to
Company any actual infringement that it becomes aware of related to
[***].
(b) Licensor
Rights . [***].
(c) Company
Rights . [***].
(d) Conduct
of Certain Actions; Costs . [***].
(f) Patent
Invalidity Claim . [***].
4.5 Drug Master Files . The provisions
set forth in Schedule 4.5 attached hereto are hereby
incorporated by reference as if fully set forth herein.
5
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Separately with the Securities and Exchange
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17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
5.1 Treatment of Confidential Information
. In carrying out its obligations under this Agreement, the
Services Agreement or the Transition Services Agreement, each Party
or its Affiliates will be sharing confidential and proprietary data
and information (“ Confidential Information ”)
with the other Party or its Affiliates, with such Confidential
Information including, without limitation, any information
generated under this Agreement or the confidential or proprietary
information of Third Parties (including without limitation
Collaborators and Future Collaborators). For the avoidance of
doubt, all such data and information relating to the Business or
the Transferred Assets, other than those related to the Retained
Assets, (collectively, “ Business Confidential
Infor
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