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Exhibit 10.36 Execution Copy LICENSE
AGREEMENT BETWEEN GILEAD SCIENCES, INC.
AND ARCHEMIX CORP. October 23, 2001
Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
LICENSE AGREEMENT This
License Agreement (" Agreement "), is entered into as of
October 23, 2001 (the " Effective Date "), by
and between Gilead Sciences, Inc. , a Delaware corporation
with its principal offices located at 333 Lakeside Drive, Foster
City, CA 94404 (" Gilead "), and Archemix Corp., a
Delaware corporation with its principal offices located at One
Hampshire Street, Cambridge, MA 02139 (" Company ").
Recitals A. Gilead
owns, or possesses licenses under certain patents, patent
applications, and know-how related to the SELEX Process (as defined
in Section 1.29 below).
B. Gilead is a party, either in its own right or as a
successor in interest, to certain Preexisting Agreements (as
defined in Section 1.26 below) with third parties pursuant to
which such third parties have obtained certain rights and licenses
to the SELEX Process and Aptamers (as defined in Section 1.2
below). C. Gilead
wishes to grant to Company a license under such patents, patent
applications and know-how for all uses other than those exclusively
granted to third parties as set forth in the Preexisting Agreements
(as defined herein), and Company wishes to receive such license,
subject to the terms and conditions set forth in this Agreement.
D. Gilead also wishes to
assign and transfer to Company, and Company wishes to acquire from
Gilead, a certain agreements relating to the SELEX Process and/or
Aptamers. Now, Therefore, in
consideration of the foregoing, of the mutual covenants and
undertakings contained in this Agreement and of other good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the Parties, intending to be legally bound,
hereby agree as follows: 1. Definitions.
In addition to the other terms
defined elsewhere in this Agreement, the following terms shall have
the following meanings when used herein (any term defined in the
singular shall have the same meaning when used in the plural and
vice versa, unless stated otherwise):
1.1 "Affiliate" means any
Person that, directly or indirectly, through one or more
intermediaries, Owns, is Owned by or is under common Ownership
with, a Party, where "Own" or "Ownership" means (a) direct or
indirect possession of at least fifty percent (50%) of the
outstanding voting securities of a corporation or a comparable
ownership in any other type of Person or (b) that a Person or
group of Persons otherwise has the unilateral ability to control
and direct the management of the entity, whether by contract or
otherwise. 1.2 "Aptamers"
means oligonucleotides, including any structural variations and
modifications, derivatives, homologs, analogs and/or mimetics
thereof, identified through the SELEX Process. Portions of this
Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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1.3 "Assumed Liabilities"
is defined in Section 2.6 below.
1.4 "[***] Agreement" means
the Collaborative Research Agreement and License Agreement, dated
May 5, 1993 and Termination Agreement, dated February 27,
1998, between NeXagen, Inc. and [***].
1.5 "Company Improvements"
means any inventions, patentable or not, information and/or data
Controlled by the Company after the Effective Date and during the
term of this Agreement, that were derived from the practice of the
Covered Intellectual Property, and that relate to: (a) improvements
in the SELEX Process and (b) improvements made to the Covered
Intellectual Property. 1.6
"Consent Date" means, with respect to a Transferred Asset, the
date on which all Third Parties to such Transferred Asset have
given their written consent to assignment thereof to Company
pursuant to Section 2.5. 1.7
"Control" , "Controls" , and "Controlled" means,
with respect to a particular item of information or intellectual
property right, that the applicable Party owns or has a license to
such item or right and has the ability to grant to the other Party
access to and a license or sublicense (as applicable) under such
item or rights as provided for in this Agreement without violating
the terms of any agreement or other arrangement with any Third
Party. 1.8 "Covered Intellectual
Property" means the Licensed Patents and Licensed Know-How.
1.9 "Damages" means any and
all costs, losses, claims, liabilities, fines, penalties, damages
and expenses, court costs, and reasonable fees and disbursements of
counsel, consultants and expert witnesses incurred by a Party
hereto (including any interest payments which may be imposed in
connection therewith). 1.10
"Documentation" means the documents, information, data, and
other written materials described in Exhibit A .
1.11 "Excluded Aptamers"
means (a) Radio Therapeutics, (b) In Vivo Diagnostic
Agents, (c) the compound identified as [***] as more fully
described in the [***] Agreement listed in Exhibit B
attached to this Agreement, (d) any Aptamer directed to [***],
(e) the Aptamers identified as the [***] in the [***]
Agreement listed in Exhibit B , and (f) the
[***] identified in the [***] Agreement listed in
Exhibit B . In addition, "Excluded Aptamers" shall
until September 1, 2003, include any Aptamer directed to the
[***], as defined in the [***] Agreement identified in Exhibit
B , which Aptamer is subject to [***] granted to [***] pursuant
to the [***] Agreement, and after September 1, 2003, shall
include any such Aptamer for which [***] exercises such [***] in
accordance with the terms and conditions set forth in the [***]
Agreement. 1.12 "Excluded
Liabilities" is defined in Section 2.6 below.
1.13 "Gilead Key Personnel"
means [***]. Portions of this Exhibit were omitted and have been
filed separately with the Secretary of the Commission pursuant to
the Company’s application requesting confidential treatment
under Rule 406 of the Securities Act.
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1.14 "[***] Agreement"
means the SELEX Research Agreement, dated May 27, 1998, by and
among Gilead (as successor in interest to NeXstar Pharmaceuticals,
Inc. (" NeXstar ")), [***] and [***]
1.15 "[***] Agreement" means
the Collaborative Research Agreement, dated as of February 26,
1998, by and between Gilead (as successor to NeXstar) and [***], as
amended by letter agreement dated January 6, 2000.
1.16 "In Vitro Diagnostics"
shall have the meaning provided in the [***] Agreement listed in
Exhibit B , as such Agreement is in effect on the
Effective Date. 1.17 "In Vivo
Diagnostic Agent" shall have the meaning provided in the [***]
Agreement listed in Exhibit B , as such Agreement is in
effect on the Effective Date; provided that, (a) in the event
Third Parties shall no longer have any rights to In Vivo Diagnostic
Agents pursuant to the [***] Agreement, all references to "In Vivo
Diagnostic Agent" in this Agreement shall be automatically deleted,
without further action by the Parties, and (b) in the event
that the field rights embodied in the definition of "In Vivo
Diagnostic Agent" contained in the [***] Agreement shall at any
time be modified or amended to reduce the scope thereof, the
definition of "In Vivo Diagnostic Agent" contained in this
Agreement shall be automatically reduced in scope to the same
extent, without further action by the Parties, provided that
nothing in this Section 1.17 shall give Company any rights to
or interest in any products developed by or licensed to Third
Parties pursuant to the [***] Agreement that are in clinical
development, submitted for regulatory approval or being
commercialized. 1.18 "Licensed
Field" means use of the Licensed Processes and Methods,
including without limitation, the SELEX Process, the Licensed
Know-How, the inventions claimed in the Licensed Patents, any
Aptamers and any Licensed Products, as applicable, for any and all
purposes for which exclusive rights have not been granted to Third
Parties under the Preexisting Agreements, including without
limitation (a) the [***], (b) any [***], and
(c) Target Validation and other drug development and research
purposes, including [***], but specifically excluding (x) use
in any In Vitro Diagnostics application, (y) use of any
Excluded Aptamers, or (z) any purpose for which exclusive
rights have been granted to Third Parties under the Preexisting
Agreements; provided however , that in the event that Third
Parties to no longer have rights pursuant to a Preexisting
Agreement in any field, or the scope of the licenses granted
therein is reduced, then the Licensed Field shall be automatically
extended, without further action by the Parties, to include the
uses or fields in which Third Parties no longer have rights, or the
uses or fields removed from the Preexisting Agreement as a result
of the reduction of the scope of the licenses granted therein,
provided that (i) nothing in this Section 1.18 shall give
Company any rights to or interest in any products developed by or
licensed to any Third Party to any Preexisting Agreement that are
in clinical development, submitted for regulatory approval or being
commercialized and (ii) nothing in this Section 1.18
shall give Company any rights to or interest in any Aptamer
directed to [***]. 1.19 "Licensed
Know-How" means trade secrets, know-how and unpatentable and/or
unpatented inventions and discoveries Controlled by Gilead as of
the Effective Date and necessary or reasonably useful in the
practice of the Licensed Patents or the performance of the Licensed
Processes or Methods. Portions of this Exhibit were omitted and
have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
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1.20 "Licensed Patents"
means the patents and patent applications set forth in
Exhibit C , and all divisional, continuations,
continuations-in-part, and any foreign counterparts thereof and all
patents issuing on any of the foregoing and any foreign
counterparts thereof, together with all registrations, reissues,
re-examinations, supplemental protection certificates, or
extensions thereof, and any foreign counterparts thereof.
1.21 "Licensed Processes and
Methods" means any and all processes and methods claimed by the
Licensed Patents or consisting, in whole or in part, of Licensed
Know-How. 1.22 "Licensed
Product" means (a) any product that contains one or more
Aptamers (b) any product covered by the Licensed Patents or
the use of which is covered by the Licensed Patents, and
(c) any product made through the use of the Licensed Know-How,
but in no case any of the Excluded Aptamers, within the Licensed
Field. 1.23 "NeXstar Merger
Date" means July 29, 1999.
1.24 "Party" means Company or Gilead and "Parties"
means Company and Gilead. 1.25
"Person" means a natural person, a corporation, a partnership,
a limited liability company, a trust, a joint venture, any
governmental authority or any other entity or organization.
1.26 "Preexisting Agreements"
means (a) the agreements identified in Exhibit B
and (b) any other agreements entered into by Gilead or its
predecessors prior to the NeXstar Merger Date relating to the SELEX
Process or to any Aptamers. 1.27
"Proprietary Information" means, subject to the limitations set
forth in Section 8.1 hereof, any confidential information of a
Party disclosed by such Party to the other Party in the course of
negotiating or performing under this Agreement that is identified
as confidential by the disclosing party at the time of its
disclosure. The Licensed Patents, the Licensed Processes and
Methods, the Licensed Know-How, the due diligence materials
identified in Exhibit F attached to this Agreement, and
the terms and provisions of the Preexisting Agreements attached at
Exhibit G are deemed to be Gilead’s Proprietary
Information whether or not marked or identified as confidential or
proprietary. The terms and provisions of this Agreement and any
information that is "Confidential Information" as defined in the
Confidential Disclosure Agreement, dated June 6, 2001, between
Company and Gilead are deemed to be the Proprietary Information of
both Parties whether or not marked or identified as confidential or
proprietary. 1.28 "Radio
Therapeutics" shall have the meaning provided in the [***]
Agreement listed in Exhibit B , as such Agreement is in
effect on the Effective Date; provided that, (a) in the event
that Third Parties no longer have rights to Radio Therapeutics
pursuant to the [***] Agreement, all references to "Radio
Therapeutics" in this Agreement shall be automatically deleted,
without further action by the Parties, and (b) in the event
that the field rights embodied in the definition of "Radio
Therapeutics" contained in the [***] Agreement shall at any time be
modified or amended to reduce the scope thereof, the definition of
"Radio Therapeutics" contained in this Agreement shall be
automatically reduced in scope to the same extent, without further
action by the Parties, provided that nothing in this
Section 1.28 shall give Company any rights to or interest in
any products developed by or licensed to a Third Party pursuant to
the Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
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[***] Agreement in clinical development, submitted for
regulatory approval or being commercialized.
1.29 "SELEX Process" means
any process for identification or use of a nucleic acid, which
process is disclosed in or falls within the claimed scope of U.S.
Patent Nos. [***] or [***]. 1.30
"Target Validation" means the use of the SELEX Process to
create Aptamers that bind to a target and the use of such Aptamers,
through testing in [***] studies and other assay and studies, to
provide information as to a target’s biological utility
through the [***] of the target or some [***] on the target.
1.31 "Territory" means the
world. 1.32 "Third Party"
means any Person other than the Parties or their respective
Affiliates. 1.33 "Transferred
Assets" shall have the meaning given such term in
Section 2.5. 1.34 "URC
License Agreement" means the Restated Assignment and License
Agreement, dated July 17, 1991, by and between University Research
Corporation and Gilead as successor in interest to NeXstar.
1.35 "UTC" means University
Technology Corporation, the successor to the University Research
Corporation. 1.36 "Valid
Claim" means a claim of an issued and unexpired patent that has
not been held permanently revoked, unenforceable or invalid by a
decision of a court or governmental agency of competent
jurisdiction over such claim, which decision is unappealable or
unappealed within the time allowed for appeal.
1.37 "[***] Agreement" means
that certain License Agreement between [***] and Gilead (as
successor-in-interest to Nexagen, Inc.) dated September 15,
1992. 2. License. 2.1
License Grants and Certain Restrictions.
(a) Subject to the terms and conditions of this Agreement,
during the term of this Agreement, Gilead hereby grants to Company,
and Company hereby accepts, an exclusive (subject to the
restrictions and limitations specified in Sections 2.1(b),
2.1(c), and 2.2 below, and except that such license shall be
non-exclusive for portions of the Licensed Field as to which one or
more Third Parties has such non-exclusive rights pursuant to a
Preexisting Agreement) license and sublicense, as applicable, under
the Covered Intellectual Property (a) to exploit, use and
practice the Licensed Processes and Methods, including without
limitation, the SELEX Process, within the Licensed Field throughout
the Territory, (b) to develop, make, have made, use, sell,
offer to sell and import Licensed Products within the Licensed
Field throughout the Territory and Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
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(c) to utilize the Licensed Know-How and the inventions
claimed in the Licensed Patents for any purpose within the Licensed
Field throughout the Territory.
(b) Company acknowledges that the Covered Intellectual
Property remains subject to the licenses granted to certain Third
Parties pursuant to the [***] Agreement. In addition, Company
acknowledges that, pursuant to the [***] Agreement, certain
covenants and restrictions shall apply to Company’s use and
sublicensing of the Covered Intellectual Property, including
restrictions on Company’s further sublicensing of rights in
the field of Target Validation and certain Aptamers specified in
Paragraph 8.3 of the [***] Agreement.
(c) If at any time during the term of this Agreement,
Company develops any products, pursuant to the exercise of its
rights granted under this Agreement, that incorporate [***] as
defined in the [***] Collaboration Agreement listed in
Exhibit B and attached in Exhibit G ,
including without limitation Aptamers directed at [***] or [***],
to the extent any obligations to pay to [***] royalties upon such
products arise pursuant to Section 3.2 of the [***] License
Agreement listed in Exhibit B and attached in
Exhibit G , Company shall be responsible for such
obligations.
(d) If at any time during the term of this Agreement, any
Third Party develops, identifies, generates, or commercializes any
products pursuant to the exercise of the rights granted to it under
a Preexisting Agreement, and such Preexisting Agreement is
terminated, amended or modified in such a way as to cause an
enlargement of the Licensed Field hereunder, such termination,
amendment or modification shall not create a claim for Company to
any right, title or interest in any such products developed by such
Third Parties or the commercialization of any such products.
2.2 Negative Covenant of
Company. Company shall not use or practice the Covered
Intellectual Property (a) outside the Licensed Field,
(b) for any other purpose except activities that it conducts
in compliance with this Agreement, (c) to make, use, sell,
offer for sale, import or export any products containing any
Excluded Aptamers, (d) to make, use, sell, offer for sale,
import or export any Excluded Aptamers, or (e) to make, use,
sell, offer for sale, import or export any Aptamers for In Vitro
Diagnostics. 2.3 Sublicensing
Rights. Company shall have the right to sublicense the rights
granted to it by Gilead under this Agreement without the consent of
Gilead; provided that: (a) prompt notice of such
sublicense shall be given by Company to Gilead pursuant to
Section 10.5 of this Agreement; (b) a true, correct and
complete copy of such sublicense shall be provided by Company to
Gilead promptly after the date the parties enter into such
sublicense agreements, provided that Company may redact any
financial and other information to the extent not required to
enable Gilead to fulfill its reporting obligations under the URC
License Agreement or to monitor compliance with this Agreement; and
(c) Company shall remain at all times fully liable for
performance of its obligations under this Agreement without regard
to whether it has sublicensed its rights or whether Company’s
sublicensee is obligated to perform such obligations. Any such
sublicense granted by Company shall contain provisions providing
for the assignment to Gilead of Company’s interest therein
upon termination of this Agreement, subject to the last sentence of
this Section 2.3, unless the termination of this Agreement
arises out of the action or inaction of such sublicensee, in which
case Gilead, at its option, may Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
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terminate such sublicense, and shall further contain provisions
which obligate such sublicensee to comply with such terms,
conditions, agreements and obligations that are consistent with the
terms, conditions, agreements and obligations to which Company is
subject under this Agreement including, without limitation, the
provisions of Sections 2.1(b), 2.1(c), 2.2, Section 4,
Section 5, Section 6.4, Section 7.1(b),
Section 8 and Section 9.3. Gilead hereby agrees to accept
such assignment and that such sublicense, as assigned, will remain
in full force and effect, provided that Gilead shall have no
obligation thereunder except to maintain the continued
effectiveness of the sublicense.
2.4 Grant Back To Gilead. As of the Effective Date, and
subject to the terms and conditions hereof, Company hereby grants
back to Gilead, and Gilead hereby accepts the following worldwide,
royalty-free, paid-up, perpetual, irrevocable and nonexclusive
licenses: (a) (i) under the rights licensed to Company under
Section 2.1 above, and (ii) under Company’s
intellectual property rights to such of the Company Improvements as
constitute improvements to the SELEX Process, in both cases solely
to conduct internal research and (b) under Company’s
intellectual property rights in the Company Improvements to use and
practice any Company Improvements developed by Company under the
licenses granted pursuant to Section 2.1 above as may be
necessary for Gilead to fulfill its obligations, including, without
limitation, sublicensing obligations, under the Preexisting
Agreements (the " Grant-Back License ").
2.5 Assignment of Agreement and
Delivery of Documentation. Gilead shall use diligent,
reasonable, good faith efforts to obtain from each Third Party to
the [***] Agreement, the [***] Agreement, the [***] Agreement, and
the [***] Agreement (collectively, the "Transferred Assets"
) a written consent to the assignment of the respective Transferred
Asset to Company as promptly as reasonably practicable after the
Effective Date, and Company shall provide reasonable assistance in
such efforts as requested by Gilead (e.g., by agreeing to assume
Gilead’s rights and obligations thereunder). Effective as of
the respective Consent Dates therefor, Gilead hereby assigns to
Company all of Gilead’s right, title and interest in and to
the Transferred Assets (subject to the reversion rights specified
in Section 9.3 below), and Company hereby accepts such
assignment and agrees to assume Gilead’s rights and
obligations thereunder (subject to Gilead remaining liable for
certain Excluded Liabilities). On the date of receipt by Gilead of
the first Payment due from Company pursuant to Section 3.1
below, Gilead shall ship a single copy of the Documentation to
Company FCA to Company’s designated facilities (Incoterms
2000). The Documentation shall be provided to Company in
computer-readable format, where available, and otherwise in printed
format. Gilead shall be under no obligation to convert to
electronic format any portion of the Documentation that currently
is available only in printed format. Gilead shall have no further
obligation to Company to provide any other documentation or
transfer additional copies of the Documentation after the delivery
to Company pursuant to this Section 2.5. Gilead hereby grants
to Company a non-exclusive and royalty-free right to use and
reproduce the Documentation as required to exercise Company’s
rights to the Covered Intellectual Property granted under
Section 2.1 above. Gilead retains ownership of all
intellectual property rights in and to the Documentation, subject
only to this license and the Documentation shall be deemed to be
Gilead’s Proprietary Information subject to the provisions of
Section 8 below. 2.6 Assumed
Liabilities. Except as otherwise provided in this Agreement,
Company hereby assumes and agrees to bear and be responsible for
and to perform and satisfy [***] Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
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responsibilities, duties (including, without limitation,
compliance with all applicable laws and regulations), obligations
(including payment obligations, such as payments for filing,
prosecution and maintenance of Licensed Patents), claims, Damages,
liabilities, burdens and problems of any nature whatsoever
(collectively, the "Obligations" ) arising out of
(a) Company’s licensing and/or practice of the Covered
Intellectual Property from and after the Effective Date,
(b) such Obligations relating to payments that may be due to
the UTC under the URC License Agreement resulting from actions or
in-action of Company, its Affiliates or its sublicensees, and
(c) any such Obligations under any and all of the Transferred
Assets arising on or after the respective Consent Dates and prior
to a reversion of any of those Transferred Assets pursuant to
Section 9.3(c) of this Agreement or after such a reversion if
caused by a breach by Company of the Transferred Assets, except for
the hereinafter defined Excluded Liabilities, which items shall
remain the responsibility of Gilead as set forth in this Agreement
(collectively, the "Assumed Liabilities" ). For purposes of
this Agreement, the "Excluded Liabilities" means
(1) those Damages with respect to which Gilead is providing
indemnification pursuant to the provisions of Section 7.1(a)(i) of
this Agreement, (2) any Obligations that have accrued under
the Transferred Assets prior to the respective Consent Dates or
after a reversion of any such Transferred Assets pursuant to
Section 9.3(c) of this Agreement (except to the extent caused
by a breach by Company of the Transferred Assets), and (3) any
Obligations under the Preexisting Agreements listed in
Exhibit B , except for any Obligations arising from or
related to Company’s breach of any Obligations or duties
specified in this Agreement or any conduct described in
Section 7.1(b)(i) through (vii) of this Agreement.
2.7 Modification of URC License
Agreement. Gilead shall not enter into any amendment,
modification or supplement of or to the URC License Agreement, or
exercise any right or option to terminate the URC License Agreement
in whole or in part, without the express prior written consent of
Company in each instance, which shall not be unreasonably withheld.
3. Financial Terms. 3.1
Consideration. Company shall pay to Gilead a nonrefundable fee
which shall consist of the sum of seventeen million five hundred
thousand dollars ($17,500,000) payable in three nonrefundable
installments of [***] dollars ($[***]), [***] dollars ($[***]) and
[***] dollars ($[***]) (the "Payments" ), plus a warrant to
purchase up to [***] shares of Company Common Stock in the form
attached hereto as Exhibit I (the "Warrant" ).
The first Payment shall be due and payable one (1) day after the
Effective Date, the second Payment shall be due and payable on or
before December 31, 2001 and the third Payment shall be due
and payable on or before June 30, 2002. The Warrant shall be
issued to Gilead on the Effective Date. Failure to make any Payment
when due shall give rise to an immediate right of termination by
Gilead as set forth in Section 9.2(a) below. Company has
furnished to Gilead a copy of the Put Agreement pursuant to which
it has the right to call on certain investors in Company to
purchase equity to provide funds for the Payments in this Section
3.1. Company covenants and agrees to exercise such right if needed
to provide such funds and to utilize such funds to pay Gilead any
amounts payable under this Section 3.1, to the extent Company
does not use other funds to make such Payments, and the Parties
acknowledge and agree that Gilead shall have the right to
specifically enforce the preceding covenants in this sentence.
Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
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3.2 Payment Procedure. The
Payments shall be paid to Gilead in U.S. Dollars by Federal Reserve
wire transfer in accordance with the wire transfer instructions
specified in Exhibit H attached to this Agreement.
3.3 Third Party Payments. If
royalties, fees or other amounts become due and payable to any
Third Party, including any such payments that become due and
payable under the Preexisting Agreements listed in
Exhibit B , solely on account of Company’s
exercise of its rights under the licenses granted by Gilead in
Section 2.1 above, Company shall be liable for, and promises
to make, such payments to such Third Parties except to the extent
that such Third Party payments are caused by circumstances that
also result in a breach by Gilead of its representations, covenants
and/or warranties as set forth in Section 6 below.
Notwithstanding the foregoing, as between the Parties, Gilead shall
be solely responsible for making all payments under the Preexisting
Agreements, including without limitation the URC License Agreement,
on account of its receipt, or right to receive, payments from
Company hereunder. 3.4 Taxes.
The Payments are exclusive of and Company will remain fully liable
for any sales, transfer or other tax assessments, or duty payable
based on the transactions described in this Agreement except for
taxes based on the net income or net worth of Gilead. 4. Patent
Prosecution, Maintenance and Enforcement. 4.1 Prosecution
and Maintenance.
(a) Company Obligations . Company shall prosecute and
maintain the Licensed Patents in the Territory (excluding the
patents set forth on Exhibit D ) in Gilead’s name
using reasonably diligent efforts, at Company’s expense,
except as otherwise provided in Section 4.1(c) below. Company
shall promptly provide Gilead with notice of its intention not to
file a response to any office actions or other requests from the
United States Patent and Trademark Office or the equivalent
authority in a foreign jurisdiction, to abandon filings, or to make
material limitations to claims for the Licensed Patents and, at
Gilead’s request, shall promptly provide Gilead, or Third
Parties to Preexisting Agreements designated by Gilead who have a
right to such information under the applicable Preexisting
Agreement and who have requested such information, with copies of
correspondence and proposed or actual filings relating to
Company’s prosecution and maintenance of the Licensed
Patents, with any proposed filings to be provided at least [***]
days prior to the date of filing. Company shall direct all such
correspondence and filings provided to Gilead to Gilead’s
Vice President of Intellectual Property at the address listed
below. Gilead Sciences, Inc.
333 Lakeside Drive
Foster City, California 94404
Telephone: (650) 522-5878
Telefax: (650) 522-5575
Attention: Vice President of Intellectual Property Company agrees
to give good faith consideration to any reasonable comments with
respect to such filings that are provided by Gilead or by any Third
Parties to Preexisting Agreements Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
9
designated by Gilead but Company shall have final authority on
all decisions concerning such filings. Company shall control the
conduct of any inter partes patent proceeding, including
without limitation oppositions, interferences or contested
re-examinations. Company shall bear the expense of all such
proceedings. Company shall honor the consultation rights of [***]
under Section 6.4 of the [***] Collaboration Agreement (as
defined on Exhibit B ) and the rights of [***] under
Section 5.1(b) of the [***] Agreement (as defined on
Exhibit B ), including fulfillment of Gilead’s
obligations thereunder, in each case as applicable to any Licensed
Patents. If any conflict arises concerning the representation of
the Parties with respect to the Licensed Patents by the firm of
[***] hereby agrees to waive any such conflict and any objection it
may have to [***] representation of Gilead with respect to the
Licensed Patents.
(b) Assistance . Gilead shall assist Company in
obtaining patent extensions and supplementary protection
certificates, and provide such other assistance as reasonably
requested by Company in connection with the prosecution and
maintenance of the Licensed Patents in any part of the Territory at
Company’s sole expense, including without limitation, by
making reasonable efforts on behalf of Company to obtain the
assistance in such efforts of any individual who is obligated to
provide such assistance at the direction or request of Gilead.
(c) Reversion of Rights . Company shall promptly
notify Gilead in writing if Company determines that it has no
material or commercially useful application for a Licensed Patent.
Gilead or any party to a Preexisting Agreement, as determined by
Gilead (the " Assuming Party "), shall have the right to
prosecute and maintain such Licensed Patents or file for such
patent term extension therefor at the Assuming Party’s sole
discretion and expense. In this event all rights in and to such
Licensed Patents shall revert to the Assuming Party and shall be
removed from the list of patents or patent applications included
within the definition of Licensed Patents under this Agreement.
Company shall assist the Assuming Party in obtaining patent
extensions and supplementary protection certificates, and provide
such other assistance as reasonably requested by the Assuming Party
in connection with the prosecution and maintenance of such Licensed
Patents in any part of the Territory at the Assuming Party’s
sole expense. 4.2
Enforcement.
(a) Notice . Each Party shall promptly notify the
other in writing its knowledge of any actual or potential
infringement or misappropriation of any Licensed Patent or Licensed
Know-How by Third Parties within the Territory and provide any
information available to that Party relating to such actual or
potential infringement or misappropriation. Company shall have no
rights with respect to any infringement of Licensed Patents or
infringement or misappropriation of Licensed Know-How that occurs
outside of the Licensed Field and/or outside the Territory except
the right to receive notice pursuant to this Section 4.2(a);
provided however, that, to the extent within the control of Gilead,
Gilead shall not enter into any settlement, consent judgment or
other voluntary final disposition with respect to any such
infringement or misappropriation if it would have a material
adverse effect on any Licensed Patent or Licensed Know-How within
the Licensed Field without the prior consent of Company, which
consent shall not be unreasonably withheld.
(b) Enforcement of Licensed Patents . With respect to
any infringement of Licensed Patents within the Licensed Field or
with respect to any Licensed Products within the Portions of this
Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
10
Licensed Field, Company shall have the primary right, but not
the obligation, to initiate, prosecute and control any action with
respect to such infringement, by counsel of its own choice, to
secure the cessation of the infringement or to enter suit against
the infringer. Gilead shall have the right to participate in any
such action and to be represented by counsel of its own choice and
at its own expense. If Company fails to exercise its right to bring
an action or proceeding to so enforce a Licensed Patent within a
period of [***] days after receipt of written notice of
infringement of such Licensed Patent, then Gilead shall have the
right to bring and control any such action by counsel of its own
choice and at its own expense. Gilead shall have the right to
extend the right to participate in and control, as applicable, any
such action to its Affiliates and sublicensees, as Gilead in its
sole discretion deems necessary to satisfy its obligations under
the Preexisting Agreements. If a Party brings any such action or
proceeding hereunder, the other Party agrees to be joined as a
party plaintiff and to give the first Party reasonable assistance
and authority to control, file and prosecute the suit as necessary,
at the first Party’s sole expense. The costs and expenses of
the Party bringing suit under this Section 4.2(b) (including
the internal costs and expenses specifically attributable to such
suit) shall be reimbursed first out of any damages or other
monetary awards recovered in favor of the Parties, and any
remaining damages shall be paid to the Party that controlled such
action. No settlement or consent judgment or other voluntary final
disposition of a suit under this Section 4.2(b) relating to a
Licensed Patent may be entered into without the consent of the
Party not controlling such action, such consent not to be
unreasonably withheld, delayed or conditioned.
4.3 Infringement of Third Party
Rights.
(a) Notice of Claim . If the practice of the Licensed
Patents by Company, its Affiliates or sublicensees, in accordance
with the licenses granted under Section 2.1 above, results in
a claim of patent infringement against Company, its Affiliates or
sublicensees, the Party to this Agreement first having notice of
that claim shall promptly notify the other Party in writing. The
notice shall set forth the facts of the claim in reasonable detail.
(b) Resolution of Claims . If a Third Party asserts
that a patent or other right owned by or licensed to it is
infringed within a country by the practice of the Licensed Patents
by Company, its Affiliates or sublicensees, in accordance with the
licenses granted under Section 2.1 above, Company may attempt
to resolve the asserted infringement; provided, however that
Gilead shall have the right, at its sole discretion, to participate
in any such resolution and to be represented by counsel of its own
choice and at its own expense. Company shall control the process to
resolve any such infringement. The matter shall be deemed resolved
if Company obtains: (i) a license permitting Company to
manufacture, use, import, offer for sale and sell Licensed Products
in that country on a royalty-free basis (ii) a legally binding
statement or representation from the Third Party that: (A) no
action will be taken against Company, its Affiliates or its
sublicensees, or (B) that the patent or other right is not
infringed the practice of the Licensed Patents by Company, its
Affiliates or its sublicensees in such country; or (iii) a
final judgment by a court of competent jurisdiction from which no
appeal has or can be taken that the Third Party’s patent(s)
alleged to be infringed is invalid, or the Third Party’s
patent(s) or other right(s) are unenforceable or not infringed by
the practice of the Licensed Patents by Company, its Affiliates or
sublicensees. Company shall have the primary right to defend any
such claim. Gilead shall have the right, but not the obligation, to
participate in any such suit at its sole option and at its own
expense. Each Party shall reasonably cooperate with the Party
conducting the Portions of this Exhibit were omitted and have been
filed separately with the Secretary of the Commission pursuant to
the Company’s application requesting confidential treatment
under Rule 406 of the Securities Act.
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defense of the claim. Neither Party shall enter into any
settlement that affects the other Party’s rights or interests
without such other Party’s prior written consent, not to be
unreasonably withheld, delayed or conditioned.
4.4 Reimbursement under
Preexisting Agreements. Gilead covenants that it will make
reasonable efforts to collect all amounts owing from Third Parties
under Preexisting Agreements in connection with the prosecution,
maintenance and enforcement of the Licensed Patents as and when
such amounts become due and payable and that Gilead will forward
all such amounts to Company as and when they are collected by
Gilead. 5. Progress Report and Commercial Application.
5.1 Progress Report. On or
before [***] and [***] of each year, commencing as of [***] and
ending on [***] of the calendar year following the calendar year in
which Company, its Affiliates or sublicensees first begins to
market any product or service utilizing the Covered Intellectual
Property, Company shall provide a [***] progress report to Gilead,
each report covering the [***] month period preceding the due date
of the report. Thereafter, Company shall provide such reports on an
annual basis covering the [***] month period preceding the due date
of the report. Each report shall describe any Company Improvements
(including any modifications and the updates to the Documentation),
notice of any patents filed by Company in connection with any
Company Improvements and the progress made by Company, its
Affiliates or sublicensees toward the commercial development of any
products or services utilizing the Covered Intellectual Property.
Such report shall include at a minimum, information reasonably
sufficient to enable Gilead to satisfy its reporting obligations to
the UTC under the URC License Agreement with respect to this
Agreement, including any reporting obligations of the U.S.
Government, and to assess the progress made by Company toward
meeting the diligence requirements of Section 5.2 below.
Company shall also provide to Gilead on or before the
February 28 reporting date set forth in this Section 5.1
an updated version, if any, to the SELEX Manual (in an electronic,
organized and printable format) provided to Company as part of the
Documentation listed on Exhibit A .
5.2 Commercial Application.
Company, either directly or with and through the efforts of its
Affiliates and sublicensees, shall at all times use commercially
reasonable efforts to proceed with the development, manufacture and
sale of products and services utilizing the Covered Intellectual
Property, including, without limitation, maintaining sufficient
facilities, resources and personnel to fulfill its obligations
under this Agreement. In the event that Company, its Affiliates,
assignees and sublicensees cease reasonable efforts to develop the
commercial applications of the products and services utilizing the
Covered Intellectual Property for a period of at least [***] months
Gilead will have the option, at its sole discretion, to terminate
this Agreement pursuant to Section 9.2(a) below;
provided that Gilead may exercise such option only if Gilead
shall have received written notice from UTC of a default under the
URC License Agreement by reason of the failure by Company to use
reasonable efforts to develop the commercial application of the
Covered Intellectual Property, and UTC has sent to Gilead written
notice of termination of the URC License Agreement as a consequence
thereof. In such event, Gilead may exercise its option;
provided that (a) Gilead delivers advance written
notice of its decision to exercise such option to force a reversion
of the technology to Gilead, and (b) for a period of [***]
months following Company’s receipt of such notice, Company,
its Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
12
Affiliates, and all assignees and sublicensees, shall have the
right and opportunity to cure the alleged cessation of such
reasonable commercial development. Company acknowledges and agrees
that under the URC License Agreement, Company’s rights in the
Covered Intellectual Property may revert to the UTC if Company, its
Affiliates and all assignees and sublicensees cease reasonable
efforts to develop the commercial applications of the products and
services utilizing the Covered Intellectual Property. Company and
Gilead further acknowledge and agree that, in the event of any
termination of the URC License Agreement, the sublicenses granted
to Company hereunder shall remain in full force and effect in
accordance with Section 3.4 of the URC License Agreement,
provided that Company is not then in breach of this Agreement and
agrees to be bound to UTC as a licensor under the terms and
conditions of this Agreement. 6. Representations, Covenants and
Warranties. 6
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