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Exhibit 10.13
TECHNOLOGY LICENSE AGREEMENT
Agreement
made as of the 1st day of February, 1999 (the "Effective
Date"),
between VERTEX PHARMACEUTICALS INCORPORATED, a Massachusetts
corporation
(together with its Affiliates, "Vertex"), and ALTUS BIOLOGICS INC.,
a
Massachusetts corporation (together with its Affiliates,
"Altus").
WHEREAS,
Altus and Vertex are parties to a Technology License Agreement
dated as of December 31, 1992 (the "Old License Agreement") with
respect to the
research, development, manufacturing and sale of cross-linked
protein crystals
and other stabilized proteins;
WHEREAS,
each of Vertex and Altus is the respective owner of certain
patent rights, technology and intellectual property relating to
protein
stabilization and has the right to transfer or grant licenses or
sublicenses
under said patent rights, technology and intellectual property;
WHEREAS,
Altus and Vertex desire to terminate the Old License Agreement
as
of the Effective Date and enter into a new agreement with respect
to the subject
matter thereof;
NOW
THEREFORE, in consideration of the mutual covenants herein
contained,
and for other good and valuable consideration, the receipt and
sufficiency of
which are hereby acknowledged, the parties hereto agree as
follows:
1. DEFINITIONS
1.1.
"AFFILIATE" shall mean any corporation or legal entity which
controls, or is controlled by, or is -under common control with the
designated
party. "Control" means the ownership, directly or through one or
more
Affiliates, of more than fifty percent (50%) of the shares of stock
entitled to
vote for the election of directors, in the case of a corporation,
or more than
fifty percent (50%) of the equity interest, in the case of any
other type of
legal entity.
1.2.
"ALTUS FIELD" shall mean all fields of use.
1.3.
"ALTUS MANUFACTURING KNOW-HOW" shall mean that portion of
Vertex
Technology, Existing Altus Technology, Subsequent Altus Patents or
Subsequent
Altus Technology which is necessary or useful in the manufacture or
production
of cross-linked protein crystals.
1.4.
"COLLABORATORS" shall mean entities in collaboration with Vertex
with
respect to the research, development or manufacture of Vertex
Products and which
are engaged in the business of researching, developing, or
manufacturing
pharmaceutical products for human or animal therapeutics, but
specifically
excluding: (i) entities engaged in contract manufacturing of such
Vertex
Products; (ii) entities engaged in contract process development of
such Vertex
Products; and (iii) entities which are academic institutions or
not-for-profit
research institutions.
1.5.
"CONFIDENTIAL INFORMATION" shall mean (i) the Vertex Technology,
the
Existing Altus Technology, the Subsequent Altus Patents, or the
Subsequent Altus
Technology; and (ii) any other product, technology, or information
of or about
Vertex, its Collaborators, or Altus that is provided by a party to
the other
party hereunder; provided, however, that "Confidential
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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Information" shall not include any information described in
subsections (i)
through (iv) of Section 5.3 hereof.
1.6.
"EXISTING ALTUS PATENTS" shall mean the patent applications and
patents listed on Schedule 1.6 hereto, together with any
divisionals,
continuations, continuations-in-part, foreign counterparts,
reissues, renewals,
reexaminations, substitutions or extensions of or to any such
patent
applications or patents, and any patents issuing from any of the
foregoing.
Schedule 1.6 shall be updated from time to time, but in no event
less often than
once [****************], to include all patents and patent
applications
comprising the Existing Altus Patents.
1.7.
"EXISTING ALTUS TECHNOLOGY" shall mean (i) the Existing Altus
Patents, (ii) any and all proprietary processes, trade secrets,
technical
information, know-how, technology and other intellectual property
of Altus,
whether or not patented or patentable, existing as of the Effective
Date and
which are necessary or useful in the research, development,
manufacture, use and
sale of products for human and animal therapeutic applications, and
which are
owned, or have been acquired, developed, or licensed by Altus as of
the
Effective Date, and as to which Altus has the right to grant
licenses or
sublicenses in the Vertex Field.
1.8.
"LICENSED PRODUCT(S)" shall mean any product (i) the
development,
manufacture, use, sale, or import of which would, but for the
licenses granted
to Altus hereunder, infringe the Vertex Patents, or which is
covered by a claim
of a pending patent application included in the Vertex Patents, or
(ii) which is
developed, manufactured, produced or used through the use of any
Vertex
Technology or which incorporates the Vertex Technology.
1.9.
"SUBSEQUENT ALTUS PATENTS" shall mean patent applications and
patents
claiming Subsequent Altus Technology, and any divisions,
continuations,
continuations-in-part, foreign counterparts, reissues, renewals,
reexaminations,
substitutions or extensions of or to any such patent applications
or patents,
and any patents issuing from any of the foregoing. Subsequent Altus
Patents
shall be set forth on Schedule 1.9, and Schedule 1.9 shall be
updated from time
to time, but in no event less often that once [****************],
to include all
patents and patent applications comprising the Subsequent Altus
Patents.
1.10.
"SUBSEQUENT ALTUS TECHNOLOGY" shall mean any and all
proprietary
processes, trade secrets, technical information, know-how,
technology and
intellectual property of Altus with respect to cross-linked protein
crystals,
whether or not patented or patentable, which are necessary or
useful in the
research, development, manufacture, use and sale of products for
human and
animal therapeutic applications and which are acquired, developed,
or licensed
by Altus during the five (5) year period beginning on the Effective
Date, and as
to which Altus has the right to grant licenses or sublicenses in
the Vertex
Field.
1.11.
"THIRD PARTY" means any entity other than Vertex and its
Affiliates
or Collaborators, or Altus and its Affiliates.
1.12.
"VERTEX FIELD" shall mean small molecule drugs for human and
animal
therapeutic uses.
1.13.
"VERTEX PATENTS" shall mean (i) the patent applications and
patents
listed on Schedule 1.13 hereto; and (ii) any patent applications
and patents
claiming Vertex Technology
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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identified in Section 1.15(iii) below, together with any
divisionals,
continuations, continuations-in-part, foreign counterparts,
reissues, renewals,
reexaminations, substitutions or extensions of or to any such
patent
applications or patents, and any patents issuing from any of the
foregoing.
Schedule 1.13 shall be updated from time to time, but in no event
less often
than [*********************], to include all patent applications
and patents
comprising the Vertex Patents, including, without limitation, all
patent
applications filed after the Effective Date and claiming Vertex
Technology
identified in Section 1.15 (iii) below.
1.14.
"VERTEX PRODUCT" shall mean any small molecule drug researched,
discovered, developed or produced for human or animal therapeutic
uses using the
Subsequent Altus Patents, the Subsequent Altus Technology, the
Vertex Technology
or the Existing Altus Technology.
1.15.
"VERTEX TECHNOLOGY" shall mean (i) the Vertex Patents, (ii) any
and
all proprietary processes, trade secrets, technical information,
know-how,
technology and other intellectual property of Vertex claimed in or
relating to
the Vertex Patents, or which is necessary or useful to practice the
technology
described in the Vertex Patents existing on the Effective Date and,
on the
Effective Date of this Agreement, owned or licensed to Vertex with
the right to
grant licenses or sublicenses thereunder, and (iii) any and all
proprietary
processes, trade secrets, technical information, know-how, and
other
intellectual property, whether or not patented or patentable, first
developed,
conceived or reduced to practice by Vertex or its Collaborators
within five (5)
years after the Effective Date, which constitutes an improvement to
the
technology described in clause 1.15(i) or 1.15(ii) above, and as to
which Vertex
has the right to grant licenses or sublicenses.
2. LICENSES GRANTED: TERMINATION OF OLD LICENSE AGREEMENT
2.1.
License to Altus Under Vertex Technology.
Vertex
hereby grants to Altus an exclusive, worldwide, royalty-free,
fully-paid right and license in the Altus Field under the Vertex
Technology to
develop, make, use, sell, and import Licensed Products; provided,
however, that
Vertex shall retain non-exclusive rights for itself and its
Collaborators in the
Vertex Field under the Vertex Technology to develop, make, use,
sell, and import
Vertex Products; and provided, further, that Vertex shall give
Altus prompt
notice of any such use or access to the Vertex Technology by its
Collaborators.
Vertex will make available to Altus, at such time or times and in
such manner as
Altus shall reasonably request, such written or oral information
and documents
as constitute the Vertex Technology. Altus shall have the right to
grant
sublicenses to Third Parties under the Vertex Technology, provided,
that, it
shall give Vertex prompt notice of each such sublicense granted.
Neither Vertex
nor its Collaborators shall have the right to grant rights or
licenses under the
Vertex Technology to any Third Party, except as permitted by
Section 2.3 hereof.
2.2.
License to Vertex Under Existing Altus Technology, Subsequent
Altus
Patents and Subsequent Altus Technology. Altus hereby grants to
Vertex a
nonexclusive, worldwide, royalty-free, fully-paid right and license
in the
Vertex Field under the Existing Altus Technology, the Subsequent
Altus Patents,
and the Subsequent Altus Technology, to develop, make, use, sell,
and import
Vertex Products. Altus will make available to Vertex, at such time
or times and
in such manner as Vertex shall reasonably request, such written or
oral
information
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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and documents as constitute the Existing Altus Technology and the
Subsequent
Altus Technology. Vertex shall have the right to grant sublicenses
hereunder to
Collaborators in the Vertex Field; provided, that, it shall give
Altus prompt
notice of each such sublicense granted; and provided, further, that
Altus
Manufacturing Know-How shall not be disclosed or sublicensed to a
Collaborator
except as provided in Section 2.3.
2.3. Altus
Manufacturing Know-How.
(a) Vertex
may disclose, license and/or sublicense Altus Manufacturing
Know-How to its Collaborators, solely for the purpose of permitting
such
Collaborators to develop, make, use, sell, or import any Vertex
Products;
provided, that, each such Collaborator shall first enter into
confidentiality
and non-use agreements with Vertex upon terms at least as
restrictive as those
set forth in Section 5 hereof. The Altus Manufacturing Know-How
shall only be
disclosed to those employees of such Collaborators who have a
specific need to
access and/or use the Altus Manufacturing Know-How for purposes
permitted by
this Agreement. Vertex agrees to use commercially reasonable good
faith efforts
to limit, where possible, its disclosure of Altus Manufacturing
Know-How to
Collaborators.
(b) In the
event that Vertex requires the manufacture or production of
cross-linked protein crystals, Vertex may elect, in its sole
judgment: (x) to
conduct such manufacture or production itself; (y) to conduct such
manufacture
or production through one or more Collaborators; or (z) to cause
Altus to
manufacture and produce Vertex's requirements of cross-linked
protein crystals
on commercially reasonable terms. If Altus is unable or unwilling
to manufacture
and produce Vertex's requirements of cross-linked protein crystals
on terms
reasonably acceptable to Vertex, Vertex may: (yy) require Altus to
manufacture,
produce and supply the same at a price equal to the [******]to
produce the
cross-linked protein crystals plus [***************], or (zz) cause
a Third
Party to manufacture, produce, and supply such requirements.
Selection of such
Third Party shall require Altus's consent, such consent not to be
unreasonably
withheld or delayed. (As used in this subsection, [*********] shall
mean
[***********] of producing the cross-linked protein crystals, plus
a reasonable
allocation of [************].)
(c) If
Vertex selects a Third Party to manufacture, produce and supply
its
requirements for cross-linked protein crystals pursuant to clause
(b)(zz) above,
then, upon receipt of Altus' consent as provided under Section
2.3(b) above,
Vertex may disclose, license and/or grant sublicenses with respect
to Altus
Manufacturing Know-How to such Third Party solely for purposes of
manufacturing,
producing and supplying Vertex's requirements for cross-linked
protein crystals;
provided, that, such Third Party shall first enter into
confidentiality and
non-use agreements with Vertex upon terms at least as restrictive
as those set
forth in Section 5 hereof. The Altus Manufacturing Know-How shall
only be
disclosed to those employees of such Third Party who have a
specific need to
access and/or use the Altus Manufacturing Know-How for the purposes
permitted
under this Agreement. Vertex agrees to use commercially reasonable
good faith
efforts to limit, where possible, its disclosure of Altus
Manufacturing Know-How
to Third Parties.
2.4. Old
License Agreement Terminated. The Old License Agreement is
terminated as of the Effective Date, except for the provisions of
Section 6
thereof ("Confidentiality"), which
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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<PAGE>
shall survive such termination; provided, however, that to the
extent Section 5
of this Agreement may conflict with Section 6 of the Old License
Agreement,
Section 5 of this Agreement shall govern.
2.5.
Trademark. The parties acknowledge that the trademarks "CLECO(R)"
and
"CLECs(R)" and all rights thereunder have previously been assigned
to Altus by
Vertex pursuant to an instrument dated September 27, 1996 and
recorded with the
United States Patent and Trademark Office on October 11, 1996.
3. PATENT PROSECUTION
3.1. Altus
shall be responsible for the preparation, filing, prosecution
and maintenance of the Vertex Patents, the Existing Altus Patents
and the
Subsequent Altus Patents. Altus agrees to provide Vertex with
[*******] updates
regarding the status (as such status relates to the Vertex Field)
of all patent
applications and/or patents comprising the Vertex Patents, the
Existing Altus
Patents and the Subsequent Altus Patents, and to respond in good
faith to any
reasonable inquiries of Vertex regarding the status and/or scope of
such patents
and/or patent applications. Vertex agrees to cooperate fully with
Altus to
provide such consultation and assistance as may be necessary, or as
is requested
by Altus, in the preparation, prosecution, filing and maintenance
of such
patents or patent applications. Any information provided by Altus
to Vertex
pursuant to this Section 3.1. shall be treated as the Confidential
Information
of Altus hereunder.
3.2. In
the event that Altus decides to abandon or to cease prosecution
or
fails to maintain a patent or patent applications included in the
Vertex
Patents, the Existing Altus Patents or the Subsequent Altus Patents
in any
jurisdiction, Vertex shall have the right, at its expense, to
prepare, file,
prosecute and maintain the applicable patent(s) or patent
application(s) in such
jurisdiction.
4. INFRINGEMENT
4.1. Each
party shall promptly notify the other of infringement or
alleged
infringement of any patent or other proprietary right included in
the Vertex
Technology, the Existing Altus Technology, the Subsequent Altus
Patents or the
Subsequent Altus Technology, or of any unauthorized or alleged
unauthorized use
thereof, which comes to its attention. In such event, the parties
shall confer
promptly with respect to the assertion of proprietary rights or to
the
initiation and prosecution of litigation against the alleged
infringer or
unauthorized user. If the parties agree to proceed jointly, they
shall
[*************] with one another, in such proportions as they may
mutually agree
upon from time to time, (i) [**********************], and (ii)
[***************
***********].
4.2. If
any claim, litigation or proceeding is threatened or brought by
any person against a party alleging that any use, application or
disclosure of
the Vertex Technology, the Existing Altus Technology, the
Subsequent Altus
Patents, or the Subsequent Altus Technology as contemplated by this
Agreement
infringes any patent or other proprietary right held by such
person, the parties
shall promptly confer with respect to such claim, litigation or
proceeding. If
the parties agree to proceed jointly in the defense of such claim,
litigation or
proceeding, 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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parties shall [*************] with one another, in such proportions
as they may
mutually agree upon from time to time,
[***************************************
*******].
4.3.
Neither party shall settle or comp
