EXHIBIT 10.20
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXCLUSIVE LICENSE AND TECHNICAL SUPPORT
AGREEMENT
THIS EXCLUSIVE LICENSE AND TECHNICAL SUPPORT AGREEMENT (the
"Agreement") is entered into as of the 28th day of August, 1998 (the "Effective
Date") by and between MOLECULAR DEVICES CORPORATION, a Delaware corporation
("MDC") having an address at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇,
AFFYMAX RESEARCH INSTITUTE, a ___________ corporation ("Affymax") having an
address at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, GLAXO GROUP
LIMITED, a ____________ corporation having an address at
___________________________, and GLAXO WELLCOME INC., a ___________ corporation
having an address at ____________________________, (Glaxo Group Limited and
Glaxo Wellcome are sometimes collectively referred to herein as "Glaxo"). MDC,
Affymax and Glaxo are sometimes referred to herein individually as a "Party" and
collectively as the "Parties."
RECITALS
WHEREAS, Affymax has developed proprietary expertise, materials and
technology related to a telecentric lens luminometer system further described
herein (defined below as the "Licensed Technology");
WHEREAS, Glaxo Wellcome Inc. is the beneficial owner of the Licensed
Technology in the United States;
WHEREAS, Glaxo Group Limited is the beneficial owner of the Licensed
Technology outside of the United States;
WHEREAS, MDC is engaged in the development and commercialization of
high performance bioanalytical measurement systems;
WHEREAS, MDC desires to develop and commercialize a luminometer system
based upon the Licensed Technology as further described herein;
WHEREAS, Glaxo desires to grant to MDC an exclusive license to develop
and commercialize products incorporating or based upon the Licensed Technology,
according to the terms contained herein;
NOW, THEREFORE, in consideration of the foregoing and the covenants and
premises contained in this Agreement, the parties agree as follows:
[*]=Confidential treatment requested
1
1. DEFINITIONS
As used herein, capitalized terms will have the meanings set forth
below.
1.1 "Affiliate" means any person or entity directly or indirectly
controlling, controlled by or under common control with either Party, where
"control" means the direct or indirect ownership of fifty percent (50%) or more
of the outstanding voting securities of an entity, or the right to receive fifty
percent (50%) or more of the profits or earnings of an entity, or the ability to
control management of an entity.
1.2 "Affymax Improvement" means any invention made solely by Affymax's
employees, agents or independent contractors during the term of the Agreement,
the manufacture, use, sale, offer for sale or import of which would infringe a
Valid Claim of a Licensed Patent Right or a Joint Patent Right.
1.3 "Best Efforts" means efforts to achieve the intended goal that are
consistent with sound business judgment and interests of the acting Party,
excluding any action, payment, or agreement that would result in significant
financial or commercial detriment to the acting Party, as such Party shall
determine in good faith.
1.4 "Confidential Information" means any information that one Party
discloses to the other Party pursuant to this Agreement, including without
limitation any information relating to any research, project, work in process,
future development, business plan, financial matter or personnel matter relating
to such Party, its present or future products, sales, suppliers, customers,
employees, investors or business, whether in oral, written, graphic or
electronic form. Confidential Information shall include the terms of this
Agreement.
1.5 "[*]" means the commercial luminometer system that MDC is currently
planning to develop and commercialize that is based upon the TLLS and that has
the configuration set forth in Exhibit A.
1.6 "Joint Inventions" means any invention made jointly by employees,
agents or independent contractors of both MDC and Affymax during the term of
this Agreement that relates to, is based upon or incorporates the TLLS.
1.7 "Joint Know-How" means all know-how, discoveries, creations,
inventions, technology, prototypes and information made jointly by employees,
agents or independent contractors of both MDC and Affymax during the term of
this Agreement that relates to Licensed Products or is based upon or
incorporates the TLLS. Joint Know-How includes Joint Inventions.
1.8 "Joint Patent Rights" means all patent applications, including any
and all continuations, continuation-in-part or divisional applications, that
claim Joint Inventions, any patents that issue from any of the foregoing
applications, and any extensions, reissues and re-examinations of the foregoing
patents, as well as foreign counterparts of all of the foregoing.
1.9 "Joint Technology" means the Joint Patent Rights and the Joint
Know-How.
[*]=Confidential treatment requested
2
1.10 "Licensed Know-How" means all know-how necessary or useful for
developing, making, selling, offering for sale or importing the TLLS that was or
is developed by Affymax and owned or controlled (with the right to grant a
license or sublicense thereunder) by Glaxo during the term of this Agreement.
The Licensed Know-How excludes the Licensed Patent Rights.
1.11 "Licensed Patent Rights" means (i) the U.S. patent application
listed on Exhibit B, hereto, and (ii) all patent applications that claim an
Affymax/Glaxo Improvement, in each case together with any and all continuation,
continuation-in-part or divisional applications of the foregoing application,
any patents that issue from any of the foregoing applications, and any
extensions, reissues and reexaminations of the foregoing patents, as well as
foreign counterparts of all of the above, that are owned or controlled (with a
right to grant a license or sublicense thereunder) by Glaxo during the term of
this Agreement. The Parties may update Exhibit B from time to time to set forth
all Licensed Patent Rights.
1.12 "Licensed Products" means any product sold by MDC, its Affiliates
or sublicensees, including but not limited to the [*], the manufacture, use,
sale, offer for sale or import of which, but for the license granted herein,
would infringe a Valid Claim included in the Licensed Patent Rights or
constitute a misappropriation of the Licensed Know-How.
1.13 "Licensed Technology" means the Licensed Patent Rights and the
Licensed Know-How.
1.14 "MDC Improvements" means any invention, development, technique,
process, machine, procedure or method representing an improvement, including any
incremental modifications, of the TLLS that are not included in the Licensed
Know-How as it exists as of the Effective Date and are not claimed in the
Licensed Patent Rights, and that are made, conceived, reduced to practice or
discovered solely by one or more employees, agents or independent contractors of
MDC.
1.15 "MDC Sole Inventions" means any invention made solely by MDC's
employees, agents or independent contractors during the term of this Agreement
that relates to Licensed Products or is based upon or incorporates the TLLS,
including without limitation all MDC Improvements.
1.16 "Net Sales" means the amount invoiced for sales of the [*] by MDC,
its Affiliates and sublicensees to a Third Party, less (i) discounts, including
cash discounts, rebates, retroactive price reductions or allowances actually
granted or allowed from the billed amount, (ii) credits or allowances actually
granted upon claims, rejections or returns of such Licensed Products, including
recalls, (iii) freight, postage, shipping and insurance charges paid for
delivery of the [*], to the extent billed, and (iv) taxes, duties or other
governmental charges levied on or measured by the billing amount when included
in billing, as adjusted for rebates or refunds.
1.17 "Related Technology" means any invention, development, technique,
process, machine procedure or method that is developed, created, discovered or
invented by Affymax or Glaxo during the term of this Agreement and that (i) [*]
the TLLS, Licensed Product or a [*]; (ii) is [*] of the Licensed Patent Rights
or the TLLS; or (iii) is [*] to manufacture, use, sell, offer for
[*]=Confidential treatment requested
3
sale or import [*]that are [*] as [*], in each case excluding Affymax/Glaxo
Improvements but including all related intellectual property rights.
1.18 "Third Party" means any person or entity other than a Party or an
Affiliate of a Party.
1.19 "TLLS" means the Telecentric Lens Luminometer System described in
Exhibit C.
1.20 "Transition Period" means the period commencing upon the Effective
Date and ending upon the first shipment to a Third Party end user, or to Glaxo,
in connection with a commercial sale of the [*].
1.21 "Valid Claim" means a claim of a pending patent application or an
issued, unexpired patent, which claim of a patent application has not lapsed or
been canceled, abandoned or disclaimed and which claim of an issued patent has
not lapsed, been declared invalid by a court or administrative body of competent
jurisdiction in an unappealed or unappealable decision, or been admitted to be
invalid or unenforceable through reissue, reexamination or disclaimer.
2. GRANT OF RIGHTS; PRODUCT DEVELOPMENT AND SUPPORT SERVICES
2.1 License Grant to MDC. Subject to the terms and conditions of this
Agreement, Glaxo hereby grants to MDC during the term of this Agreement an
exclusive (even as to Glaxo and Affymax), worldwide, royalty-bearing license
under the Licensed Technology and under Glaxo's and Affymax's interest in any
Joint Technology to make, use, sell, offer for sale and import Licensed
Products. Notwithstanding the foregoing, Affymax and its Affiliates retain a
non-exclusive license under the Licensed Technology and its interest in the
Joint Technology to make and use the Licensed Technology and Joint Technology
for solely internal research purposes. Affymax and its Affiliates shall have no
right to grant sublicenses under the foregoing license.
2.2 Sublicensing. During the term of this Agreement, MDC may sell
Licensed Product or grant sublicenses to Third Parties under the license granted
to MDC under Section 2.1; provided, however, that if MDC intends to sell
Licensed Product or grant a sublicense as permitted hereunder to any Third Party
outside the field of [*] (as defined below), then it shall so notify Affymax and
MDC and Affymax shall discuss in good faith appropriate adjustments to the
royalty rate applicable to Net Sales of Licensed Products in such other field.
Such adjusted royalty rate shall be commercially reasonable and determined in
view of relevant issues such as, but not limited to, the historical MDC
investment of MDC resources in development of the Licensed Technology including,
but not limited to, [*] and MDC Improvements; the amount of financial and other
resources necessary to develop and commercialize such Licensed Products; other
technology that must be licensed or acquired to develop and commercialize such
Licensed Products; and the potential profitability of such Licensed Products.
"[*]" shall mean all [*] applications, including without limitation (i) the
research, development, manufacture and commercialization of products useful in
the investigation of [*] or [*] processes, and (ii) the research, development,
manufacture and commercialization of [*] tools and other devices and
[*]=Confidential treatment requested
4
provision of services useful for the activities described in (i). Nothing in
this Agreement shall be interpreted to impose upon MDC any obligation to grant
any sublicense under this Section 2.2.
2.3 No Implied License. Neither Affymax nor Glaxo will obtain any
licenses or other rights in or to any of MDC's technology or any MDC Sole
Inventions or patent applications and patents claiming such inventions. Without
limitation, Affymax and Glaxo shall have no right to design, develop, produce,
distribute, market, sell and license any MDC Improvements.
2.4 MDC Marketing and Sales Authority. Subject to Section 2.7, MDC
shall have exclusive responsibility, authority and control regarding marketing
and sales of Licensed Products.
2.5 Glaxo Support Services. MDC agrees to provide support services as
provided in this Section 2.5 for the [*] TLLSs that Affymax, as of the Effective
Date, is manufacturing for its Affiliates. As a condition to MDC's obligation to
provide such services, Affymax must permit MDC to have full access, as
reasonably necessary and at times convenient to MDC, to assist in or to observe
the production process for such TLLSs, and permit MDC to be involved in the
production of such TLLSs. MDC shall provide to Glaxo routine maintenance and
repair services for the life of the foregoing [*] TLLSs. Spare parts for such
TLLSs shall be provided at the applicable list price, and travel and labor shall
be provided [*] during the first [*] after the Effective Date, and thereafter at
MDC's list price thereof.
2.6 Transition Period Obligations. During the Transition Period, MDC
and Affymax shall cooperate to complete on a timely basis the transfer to MDC of
all Licensed Know-How in Affymax's possession according to a mutually agreed
schedule. Without limitation, the technology and technical support listed on
Exhibit D shall be transferred to MDC during the Transition Period.
Additionally, as part of such technology transfer, Affymax shall (i) arrange for
[*], or another appropriate individual reasonably acceptable to MDC, to provide
to MDC up to [*] hours per week, for up to a total of [*] hours, of consulting
services as reasonably necessary to facilitate such technology transfer, and
(ii) assist in the design of a testing plan to compare the TLLS in Affymax's
possession on the Effective Date against the [*], and shall provide all
reasonable assistance to MDC in performing such studies.
2.7 Commercialization of [*]; Diligence. MDC shall use Best Efforts to
commercialize Licensed Products. As a specific example of such efforts, MDC
shall commercially launch Licensed Products prior to or on [*] the Effective
Date. If MDC fails to achieve such commercial launch within such [*] time
period, the Parties shall promptly meet to discuss the reasons for such failure,
and mutually acceptable remedial measures that MDC shall perform to correct such
delay. If either the Parties are unable to agree upon such remedial measures
within thirty (30) days after [*] of the Effective Date, or if MDC fails to
perform diligently any mutually agreed remedial measure, then each of Affymax
and Glaxo shall have the right to terminate this Agreement pursuant to Section
8.2.
3. CONSIDERATION
[*]=Confidential treatment requested
5
3.1 License Fee. MDC will pay Glaxo Group Limited a license fee of [*],
which amount shall be paid in three (3) [*]. The first such installment shall be
due upon [*], the second such installment shall be due upon the date that is [*]
after the Effective Date, and the last such installment shall be due [*].
3.2 Royalties Payable to Glaxo.
(a) MDC shall pay to Glaxo Group Limited a royalty on sales of [*]
equal to [*] of Net Sales. [*] will be paid on sales of peripheral equipment or
add-on components to the [*].
(b) Except as otherwise provided in Section 2.2, MDC shall pay to
Glaxo Group Limited a royalty on sales of Licensed Products other than the [*]
at a rate to be agreed in good faith by the Parties no later than sixty (60)
days prior to commercial launch of such Licensed Products, which royalty shall
not exceed [*] of Net Sales. The royalty rate for Licensed Products other than
the [*] shall be determined based upon the value of the Licensed Technology
relative to the value of any other technology made or acquired by MDC that is
necessary or useful for development or commercialization of such Licensed
Products. For example, if the Parties determine that technology other than
Licensed Technology contributes thirty percent (30%) of the value of such other
Licensed Product, then the royalty rate due to Glaxo Group Limited on sales of
such other Licensed Products shall be equal to [*] x (100%-30%), or [*].
3.3 Payment; Records Retention.
(a) Royalties shall be calculated on a calendar quarter basis (the
"Payment Period"). Payment of royalties with respect to all of the [*] sold in a
Payment Period shall be due within thirty (30) days after the end of such
Payment Period, beginning with the Payment Period in which the first commercial
sale of the [*] occurs.
(b) MDC will keep complete and accurate records pertaining to the
sale of the [*]. Such records will be maintained for a five (5) year period
following the date in which any royalty payments were made hereunder.
3.4 Payments to Glaxo. Although all payments under this Article 3 will
be made to Glaxo Group Limited, Glaxo Group Limited and Glaxo Wellcome, Inc.
shall mutually agree upon an appropriate allocation of such payments between
them.
4. REPORTS; RECORDS; AUDIT
4.1 Reports. At the same time that it makes payments of royalties due
with respect to a Payment Period, MDC shall deliver to Glaxo Group Limited a
true and complete accounting of sales of the [*] and receipts from those sales
during the term of this Agreement. Such accounting shall include Net Sales and
royalties, by territory, by value (local currency and US$), and Net Sales, by
territory, by quantity. If no sales of the [*] were made in any given reporting
period, then the statement shall be to such effect. MDC shall maintain, and
cause its Affiliates and sublicensees to maintain, complete and accurate books
and records which enable the royalties
[*]=Confidential treatment requested
6
and other amounts payable hereunder to be verified. Such records shall be
maintained for five (5) years after the submission of each report pursuant to
this Article.
4.2 Marketing Reports. MDC shall advise Affymax on an annual basis of
MDC's general plans for marketing Licensed Products. Such plans shall not
include detailed information such as forecasts or sales projections. On December
1 of each year during the term of this Agreement, MDC shall provide Affymax with
reports on MDC's progress in performing under such plans.
4.3 Affymax Cost Reports. Within 10 days after the Effective Date,
Affymax will provide MDC with a complete, detailed analysis of all development
costs incurred by Affymax for developing the TLLS prior to the Effective Date.
4.4 Tax Withholding. In the event that MDC is required to withhold
taxes imposed upon Glaxo for any payment under this Agreement by virtue of the
statutes, laws, codes or governmental regulations of a country in which Licensed
Products are sold, then such payments will be made by MDC on behalf of Glaxo by
deducting them from the payment then due Glaxo and remitting such taxes to the
proper authorities on a timely basis. After payment of such taxes, the payments
provided for under this Agreement will be adjusted appropriately, provided that
MDC supplies Glaxo with official documentation and/or tax receipt on such
withholdings supporting such taxes and such payments as may be required by Glaxo
for its tax records on or before the date on which such payment is due Glaxo
under this Agreement.
4.5 Foreign Payments. In the event MDC or any of its Affiliates or
sublicensees receives payment for the [*] sold in a currency other than currency
which is legal tender in the United States of America, all payments due to
Affymax under Sections 3.1 and 3.2 hereof shall be converted, prior to payment,
into United States Dollars at the applicable rate of exchange of Citibank, N.A.,
in New York, New York, on the last day of the calendar quarter in which such
transaction occurred. If MDC is prevented from making any payment under this
Agreement by virtue of the statutes, laws, codes or governmental regulations of
the country from which the payment is to be made, then such payments may be paid
by depositing them in the currency in which accrued to Glaxo's account in a bank
acceptable to Glaxo in the country whose currency is involved.
4.6 Audit Request. Glaxo will have the right to engage, at its own
expense, an independent, certified public accountant reasonably acceptable to
MDC, to examine MDC's records from time to time as may be necessary to
determine, with respect to any calendar year, the correctness of any report or
payment made under this Agreement. If any such audit reveals an underpayment of
more than ten percent (10%) of the correct amount of royalties due hereunder,
such audit will be at the expense of MDC. If any audit conducted on behalf of
Glaxo shall show that MDC or its Affiliates or sublicensees underpaid the
royalties due to Glaxo under the licenses herein as to the period subject to the
audit, then MDC shall immediately pay to Glaxo any such deficiency with interest
thereon at an annual rate equal to the U.S. dollar reference rate ("prime rate")
charged from time to time by Citibank, N.A. from the date due until paid.
[*]=Confidential treatment requested
7
4.7 Survival. This Article 4 will survive any termination of this
Agreement for a period of five (5) years.
5. EXCLUSIVITY; OPTION FOR RELATED TECHNOLOGY.
5.1 Exclusivity. Except as expressly provided in this Article 5,
Affymax and Glaxo shall not commercialize any product that is [*] during the
term of this Agreement.
5.2 Option Under Related Technology.
(a) Notice of Opportunity to Obtain License to Related Technology.
If Affymax or Glaxo develops or has developed Related Technology and desires to
commercialize, either itself or together with one or more third parties, such
Related Technology, then Affymax shall promptly notify MDC of such desire
pursuant to Section 11.9 of this Agreement. Along with such notice Affymax shall
provide any relevant data and other information in its possession that is
necessary or useful for MDC to evaluate its interest in obtaining a license with
respect to such Related Technology.
(b) Option and Negotiation of Related Technology License. MDC shall
have an exclusive option to obtain an exclusive license under the Related
Technology to develop, make, use, sell, offer for sale and import products based
upon or incorporating the Related Technology with respect to which Affymax or
Glaxo provides a notice to MDC pursuant to Section 5.2(a) (the "Option"), as
follows: If MDC notifies Affymax within sixty (60) days after receiving notice
and relevant data and information pursuant to Section 5.2(a) that MDC is
interested in obtaining a license, then Affymax and MDC shall negotiate in good
faith, for a period of sixty (60) days following MDC's receipt of such notice
and relevant data or for such additional period of time as the parties may
mutually agree (the "Negotiation period"), the terms pursuant to which MDC shall
obtain an exclusive license under such Related Technology. If, during the
Negotiation Period, MDC decides that it is not interested in obtaining such
license, it shall promptly notify Affymax in writing of such decision.
(c) Exclusivity of Option. Affymax and Glaxo agree that they shall
not offer to any third party the opportunity to obtain a license with respect to
Related Technology or enter into any license with any third party with respect
to Related Technology, until the first to occur of expiration of the period
commencing upon MDC's receipt of notice and relevant data and information
pursuant to Section 5.2(a), and ending sixty (60) days thereafter, if MDC does
not during such period notify Affymax of MDC's interest in obtaining a license
with respect to such Related Technology, (ii) the date upon which MDC notifies
Affymax that MDC is not interested in obtaining such license, or (iii) the
expiration of the Negotiation Period, if the Parties have not entered into a
license with respect to such Related Technology prior to such time. After such
date, Affymax and Glaxo shall be free to offer to third parties the opportunity
to obtain a license, and to enter into a license with respect to such Related
Technology on terms at least as favorable to Affymax or Glaxo as those last
offered by MDC.
(d) No Waiver. MDC's option under this Section 5.2 shall apply on a
Related Technology by Related Technology basis. Any failure by MDC to exercise
its option or any failure by the Parties to enter into a license pursuant to
this Section 5.2 with respect to a
[*]=Confidential treatment requested
8
particular Related Technology shall not be deemed a waiver of MDC's rights to
obtain a license with respect to any other Related Technology.
6. CONFIDENTIALITY
6.1 Confidentiality; Exceptions. Except to the extent expressly
authorized by this Agreement or otherwise agreed in writing, the Parties agree
that, for the term of this Agreement and for five (5) years thereafter, the
receiving Party shall keep confidential and shall not publish or otherwise
disclose or use for any purpose other than as provided for in this Agreement any
Confidential Information or materials furnished to it by the other Party
pursuant to this Agreement, except to the extent that it can be established by
the receiving Party that such Confidential Information:
(a) was already known to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the other Party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving Party in breach of this Agreement; or
(d) was disclosed to the receiving Party, other than under an
obligation of confidentiality, by a Third Party who had no obligation to the
disclosing Party not to disclose such information to others.
6.2 Authorized Disclosure. Each Party may disclose Confidential
Information hereunder to the extent such disclosure is reasonably necessary in
filing or prosecuting patent applications, prosecuting or defending litigation,
complying with applicable governmental regulations or conducting preclinical or
clinical trials, provided that if a Party is required by court order, law or
regulation to make any such disclosure of the other Party's Confidential
Information it will, except where impracticable, give reasonable advance notice
to the other Party of such disclosure requirement and, except to the extent
inappropriate in the case of patent applications, will use its reasonable
efforts to secure a protective order for, or confidential treatment of, such
Confidential Information required to be disclosed.
6.3 Survival. This Article 6 shall survive the termination or
expiration of this Agreement for a period of five (5) years.
6.4 Publicity. The Parties will agree upon an initial public
announcement regarding this Agreement to be released promptly after the
execution of this Agreement. The Parties shall agree upon any additional public
announcements regarding the terms of this Agreement in advance; provided,
however that MDC may make public announcements regarding its progress in
developing and commercializing Licensed Products without the prior consent of
Affymax.
[*]=Confidential treatment requested
9
7. OWNERSHIP OF INTELLECTUAL PROPERTY AND PATENT RIGHTS
7.1 Ownership. MDC shall solely own all MDC Sole Inventions, including
without limitation MDC Improvements, and all patent applications and patents
claiming MDC Sole Inventions. Glaxo shall solely own all Affymax Improvements
and all Licensed Patent Rights claiming such inventions. The Parties shall
jointly own all Joint Inventions and all Joint Patent Rights.
7.2 Disclosure of Patentable Inventions. Affymax shall disclose to MDC
all Affymax Improvements and any Joint Inventions of which they become aware
promptly to MDC. MDC shall disclose all Joint Inventions of which it becomes
aware promptly to Affymax.
7.3 Patent Filings. MDC shall have the first right, but not the
obligation, to prepare, file, prosecute and maintain patent applications and
patents (i) that are included in the Licensed Patent Rights other than those
that claim Affymax Improvements, (ii) that claim MDC Sole Inventions, and (iii)
that are included in Joint Patent Rights, in each case [*]. MDC shall keep
Affymax informed of the status of each such patent application and all related
filings. If MDC declines to file, prosecute or maintain any patent application
or patent included in the Licensed Patent Rights or Joint Patent Rights, it
shall so notify Affymax and Affymax may elect to pursue such patent application
or patent, at its expense. Affymax, itself or together with Glaxo, shall have
the first right, but not the obligation, to prepare, file, prosecute and
maintain patent applications and patents claiming Affymax Improvements, [*].
Affymax shall keep MDC informed of the status of each such patent application
and all related filings. If Affymax or Glaxo declines to file, prosecute or
maintain any patent application or patent claiming an Affymax Improvement, it
shall so notify MDC and MDC may elect to pursue such patent application or
patent, [*]. The Parties shall cooperate reasonably in the prosecution of all
patent applications under this Section 7.3.
7.4 Enforcement Rights.
(a) Infringement by Third Parties. If any patent included in the
Licensed Patent Rights or Joint Patent Rights is infringed by a Third Party in
connection with the manufacture, import, use, sale or offer for sale of a
product competitive with the Licensed Products ("Competitive Product
Infringement"), the Party to this Agreement first having knowledge of such
infringement shall promptly notify the other in writing. The notice shall set
forth the facts of such infringement in reasonable detail. MDC shall have the
primary right, but not the obligation, to institute, prosecute or control any
action or proceeding with respect to such infringement of a Licensed Patent
Right or Joint Patent Right), by counsel of its own choice. Affymax shall have
the right to participate in such action and to be represented by counsel of its
own choice. If MDC fails to bring an action or proceeding within a period of
ninety (90) days after having received written notice of that infringement, then
Affymax, itself or together with Glaxo, shall have the right to bring and
control any such action by counsel of its own choice, and MDC shall have the
right to participate in such action and be represented by counsel of its own
choice. 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 Party bringing
such action reasonable assistance and authority to control, file and prosecute
the suit as necessary. The costs and expenses of the Party bringing suit under
this Article (including the internal costs and expenses specifically
attributable
[*]=Confidential treatment requested
10
to said suit) shall be [*]. Any remaining damages shall be [*] for the purpose
of [*]. No settlement or consent judgment or other voluntary final disposition
of a suit under this Section 7.4 may be entered into without the joint consent
of MDC and Affymax.
(b) Defense and Settlement of Third Party Claims Relating to
Licensed Products. If a Third Party asserts that a patent or other right owned
by it is infringed by the use, license, sale or other activity relating to the
Licensed Products, the Party first obtaining knowledge of such a claim shall
immediately provide the other Party notice of such claim and the related facts
in reasonable detail. Defense of any such claim shall be controlled by MDC,
provided that Affymax shall have the right to participate in such defense and to
be represented in any such action by counsel of its selection at its sole
discretion. MDC shall also have the right to control settlement of such claim
with respect to the Licensed Technology; provided, however, that no settlement
shall be entered into without the written consent of Affymax, which consent
shall not be withheld unreasonably.
(c) Allocation of Expenses Incurred Pursuant to Section 7.4(b). The
expenses of patent defense, settlement and judgments pursuant to Section 7.4(b)
with respect to the Licensed Technology and Joint Technology shall be borne [*],
except as provided in Section 7.4(d).
(d) Settlement of Third Party Claims for Infringement; Payment of
Third Party Royalties. If a Third Party asserts that a patent or other right
owned by it is infringed by the manufacture, use, sale, offer for sale, import
of, or any other activity relating to the Licensed Technology or Joint
Technology, and as a result of settlement procedures or litigation under this
Section 7.4, MDC is required to pay the Third Party a royalty or make any
payment of any kind for the right to use, license, sell or otherwise conduct
activity relation to the Licensed Technology or Joint Technology, such expense
shall be [*].
7.5 Trademarks.
MDC shall select, prosecute applications for, register, maintain
and enforce the trademark for the Licensed Products, at MDC's sole expense. All
uses of such trademark shall comply substantially with all applicable laws and
regulations, including without limitation those laws and regulations
particularly applying to the proper use and designation of trademarks. MDC shall
make the final decision of whether and how to defend the trademark in the event
of any actual, alleged or threatened infringement of the trademark for the
Licensed Products or of any unfair trade practices, trade dress imitation,
passing off of counterfeit goods or like offenses.
8. TERMS AND TERMINATION
8.1 Term. Except as otherwise provided herein, the term of this
Agreement shall commence on the Effective Date and, unless earlier terminated as
provided in this Agreement, shall expire upon the later of (i) the date upon
which the last to expire of the Licensed Patent Rights or Joint Patents expires,
or (ii) ten (10) years after first commercial sale of the Licensed Products.
8.2 Termination for Cause. Either Party may terminate this Agreement
upon sixty (60) days written notice upon or after the breach of any material
provision of this Agreement by
[*]=Confidential treatment requested
11
the other Party if the breaching Party has not cured such breach within the
sixty (60) day period following written notice of termination by the other
Party.
8.3 Termination for Bankruptcy. Either Party shall have the right, in
addition and without prejudice to any other rights or remedies available at law
or in equity, to terminate this Agreement immediately if (i) all or a
substantial portion of the assets of the other Party are transferred to an
assignee for the benefit of creditors, to a receiver or a trustee in bankruptcy,
(ii) a proceeding is commenced by or against the other Party for relief under
bankruptcy or similar laws and such proceeding is not dismissed within ninety
(90) days, or (iii) the other Party is adjudged bankrupt. All rights and
licenses granted under or pursuant to this Agreement by Affymax are, shall
otherwise be deemed to be, for purposes of Article 365(n) of the U.S. Bankruptcy
Code, licenses of rights to "intellectual property" as defined under Article 101
of the U.S. Bankruptcy Code. The Parties agree that MDC as licensee of such
rights under this Agreement shall retain and may fully exercise all of its
rights and elections under the U.S. Bankruptcy Code. Upon the termination of
this Agreement by MDC pursuant to this Section 8.3, MDC shall retain all
licenses to the Licensed Technology granted hereunder subject to the payment to
Affymax of a royalty on Net Sales as provided in this Agreement.
8.4 Effect of Termination.
(a) Upon termination of this Agreement pursuant to Section 8.2,
each Party shall pay all sums accrued hereunder which are then due (except as
expressly otherwise provided in this Agreement). Upon termination for any
reason, both Parties shall maintain confidentiality of the other Party's
Confidential Information consistent with Article 6.
(b) Upon termination of this Agreement by MDC for Affymax's
material breach pursuant to Section 8.2, all licenses granted to MDC shall
survive. The provisions of Section 3.2 shall continue to apply with respect to
any such royalties payable under this Section 8.4(b).
8.5 Accrued Rights, Surviving Obligations. Termination of this
Agreement shall not affect any accrued rights and remedies of either Party.
Additionally, the terms of Articles 4, 6, 9, 10 and 11, and Sections 7.1 through
7.5, 8.4, and 8.5, shall survive any termination or expiration of this
Agreement.
9. REPRESENTATIONS AND WARRANTIES
9.1 Mutual Representations and Warranties. Each Party hereby represents
and warrants:
(a) Corporate Power. Such Party is duly organized and validly
existing under the laws of the state or country of its incorporation and has
full corporate power and authority to enter into this Agreement and to carry out
the provisions hereof.
(b) Due Authorization. Such Party is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder.
[*]=Confidential treatment requested
12
(c) Binding Agreement. This Agreement is a legal and valid
obligation binding upon it and enforceable in accordance with its terms. The
execution, delivery and performance of this Agreement by such Party does not
conflict with any agreement, instrument or understanding, oral or written, to
which it is a Party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative or other agency
having jurisdiction over it. Such Party has not, and during the term of the
Agreement will not, grant any right to any Third Party with respect to its
Patents or Know-how that would conflict with the rights granted to the other
Party hereunder.
9.2 Other Representations by Affymax and Glaxo. Affymax and Glaxo
further represent and warrant to MDC that:
(a) to the best of Affymax's and Glaxo's knowledge on the Effective
Date, there are no Third Party claims to, or interferences or oppositions
pending before any court or administrative office or agency relating to, the
Licensed Patent Rights;
(b) Glaxo owns all right, title and interest in the Licensed
Technology, and Glaxo and Affymax own or control all rights necessary to grant
the rights Glaxo and Affymax purport to grant to MDC pursuant to this Agreement;
and
(c) as of the Effective Date, neither Affymax nor Glaxo has
received any notices of infringement or any written communications relating in
any way to a possible infringement with respect to the Licensed Technology, and
is not aware that the practice of the Licensed Technology as contemplated by
this Agreement will involve any infringement or unauthorized use of any
intellectual property rights of any Third Party.
10. INDEMNIFICATION
10.1 Indemnification by Affymax and Glaxo . Affymax and Glaxo hereby
agree to indemnify, hold harmless and defend MDC against any and all expenses,
costs of defense (including without limitation attorneys' fees, witness fees,
damages, judgments, fines and amounts paid in settlement) and any amounts MDC
becomes legally obligated to pay because of any Third Party claim or claims
against it to the extent that such claim or claims result from (i) Affymax's or
Glaxo's negligence, or (ii) Affymax's or Glaxo's breach or alleged breach of any
representation or warranty by Affymax or Glaxo or of any other provision of this
Agreement, in each case except to the extent such claim is the subject of MDC's
obligation to indemnify Affymax or Glaxo, as appropriate, pursuant to Section
10.2; provided that MDC provides Affymax or Glaxo with prompt notice of any such
claim and the exclusive ability to defend (with the reasonable cooperation of
MDC) or settle any such claim, subject to Section 10.3.
10.2 Indemnification by MDC. MDC hereby agrees to indemnify, hold
harmless and defend Affymax or Glaxo against any and all expenses, costs of
defense (including without limitation attorneys' fees, witness fees, damages,
judgments, fines and amounts paid in settlement) and any amounts Affymax or
Glaxo becomes legally obligated to pay because of any Third Party claim or
claims against it to the extent that such claim or claims arise out of (i) MDC's
negligence, recklessness or willful misconduct, (ii) MDC's breach or alleged
breach of any representation or warranty by MDC or of any other provision of
this Agreement, (iii) the
[*]=Confidential treatment requested
13
development, manufacture, use, sale, offer for sale or import of Licensed
Products by MDC, its Affiliates or sublicense, in each case except to the extent
any such claim is the subject of Affymax's or Glaxo's, as appropriate,
obligation to indemnify MDC pursuant to Section 10.1; provided that Affymax and
Glaxo provide MDC with prompt notice of any such claim and the exclusive ability
to defend (with the reasonable cooperation of Affymax and Glaxo) or settle any
such claim, subject to Section 10.3.
10.3 Mechanics. In the event that the parties cannot agree as to the
application of Sections 10.1 and 10.2 above to any particular loss or claim, the
parties may conduct separate defenses of such claim. Each Party further reserves
the right to claim indemnity from the other in accordance with Sections 10.1 and
10.2 above upon resolution of the underlying claim, notwithstanding the
provisions of Sections 10.1 and 10.2 above requiring a Party to tender to the
other Party the exclusive ability to defend such claim or suit. Neither Party
shall settle any claim in a manner could reasonably be believed to adversely
affect the other Party's business or rights hereunder without such other Party's
written consent.
11. MISCELLANEOUS
11.1 Assignment.
(a) MDC may assign any of its rights or delegate any of its
obligations under this Agreement to any Affiliates; provided, however, that such
assignment shall not relieve the assigning Party of its responsibilities for
performance of its obligations under this Agreement. This Agreement shall
survive any such merger or reorganization of MDC with or into, or such sale of
assets to, another party and no consent for such merger, reorganization or sale
shall be required hereunder. Neither Affymax nor Glaxo shall assign any of its
right or delegate any of its obligations under this Agreement without MDC's
prior written consent.
(b) This Agreement shall be binding upon and inure to the benefit
of the successors and permitted assigns of the Parties. Any assignment not in
accordance with this Agreement shall be void.
11.2 Dispute Resolution.
(a) The Parties recognize that disputes as to certain matters may
from time to time arise during the term of this Agreement which relate to either
Party's rights and/or obligations hereunder or thereunder. It is the objective
of the Parties to establish procedures to facilitate the resolution of disputes
arising under this Agreement in an expedient manner by mutual cooperation. To
accomplish this objective, the Parties agree to follow the procedures set forth
in this Article 11 if and when a dispute arises under this Agreement.
Unless otherwise specifically recited in this Agreement, disputes among
the Parties will be resolved by reference first to their respective chief
executive officers or their successors, for attempted resolution by good faith
negotiations within sixty (60) days after such notice is received. In the event
the designated executive officers are not able to resolve such dispute, either
Party may at anytime after the sixty (60) day period seek to resolve the dispute
through the means provided in Section 11.2(b).
[*]=Confidential treatment requested
14
(b) Any claim or controversy arising out of or related to this
Agreement or any breach hereof that is not resolved by the designated officers
as provided in this Agreement shall be submitted for resolution to a court of
competent jurisdiction located in California, and each party hereby submits to
the jurisdiction and venue of such court.
11.3 Force Majeure. Neither Party shall lose any rights hereunder or be
liable to the other Party for damages or losses on account of failure of
performance by the defaulting Party if the failure is occasioned by government
action, war, fire, explosion, flood, strike, lockout, earthquake, embargo, act
of God, or any other similar cause beyond the control of the defaulting Party,
provided that the Party claiming force majeure has exerted all reasonable
efforts to avoid or remedy such force majeure.
11.4 Compliance with Law. Each Party hereto shall comply with all
applicable laws, rules, ordinances, guidelines, consent decrees and regulations
of any applicable federal, state or other governmental authority.
11.5 Governing Law. This Agreement is deemed to have been entered into
in the State of California, as applied to contracts entered into and performed
entirely in California by California residents and its interpretation,
construction, and the remedies for its enforcement or breach are to be applied
pursuant to and in accordance with the laws of the State of California.
11.6 Entire Agreement. This Agreement, including all Exhibits attached
hereto, sets forth all the covenants, promises, agreements, warranties,
representations, conditions and understandings between the Parties hereto and
supersede and terminate all prior agreements and understanding between the
Parties, including without limitation the [*] Term Sheet dated August 13, 1998.
No subsequent alteration, amendment, change or addition to this Agreement, shall
be binding upon the Parties hereto unless reduced to writing and signed by the
respective authorized officers of the Parties.
11.7 Transaction Costs. Each Party shall bear all costs incurred by
such Party for legal, accounting and administrative services provided to such
Party in connection with the investigation, negotiation and execution of this
Agreement.
11.8 Relationship of the Parties. Nothing hereunder shall be deemed to
authorize either Party to act for, represent or bind the other except as
expressly provided in this Agreement.
11.9 Notices. All notices hereunder shall be in writing and shall be
deemed given if delivered personally or by facsimile transmission (receipt
verified), telexed, mailed by registered or certified mail (return receipt
requested), postage prepaid, or sent by express courier service, to the Parties
at the following addresses (or at such other address for a Party as shall be
specified by like notice; provided, that notices of a change of address shall be
effective only upon receipt thereof by the other Party).
[*]=Confidential treatment requested
15
If to Affymax,
addressed to: AFFYMAX RESEARCH INSTITUTE
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Executive
Officer
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
If to Glaxo Group Limited,
addressed to: GLAXO GROUP LIMITED
____________________________________
____________________________________
____________________________________
Attention: ___________________
Telephone: ___________________
Telecopy: ___________________
If to Glaxo Wellcome Inc.,
addressed to: GLAXO WELLCOME INC.
____________________________________
____________________________________
____________________________________
Attention: ___________________
Telephone: ___________________
Telecopy: ___________________
If to MDC,
addressed to: MOLECULAR DEVICES CORPORATION
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇▇, Chief
Executive Officer
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
With a courtesy copy to: ▇▇▇▇▇▇ GODWARD LLP
Five Palo Alto Square
▇▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Esq.
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
11.10 Waiver. Except as specifically provided for herein, the waiver
from time to time by either of the Parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a continuing
waiver of same or of any other of such Party's rights or remedies provided in
this Agreement.
[*]=Confidential treatment requested
16
11.11 Severability. If any term, covenant or condition of this
Agreement or the application thereof to any Party or circumstance shall, to any
extent, be held to be invalid or unenforceable, then (i) the remainder of this
Agreement, or the application of such term, covenant or condition to Parties or
circumstances other than those as to which it is held invalid or unenforceable,
shall not be affected thereby and each term, covenant or condition of this
Agreement shall be valid and be enforced to the fullest extent permitted by law;
and (ii) the Parties hereto covenant and agree to renegotiate any such term,
covenant or application thereof in good faith in order to provide a reasonably
acceptable alternative to the term, covenant or condition of this Agreement or
the application thereof that is invalid or unenforceable, it being the intent of
the Parties that the basic purposes of this Agreement are to be effectuated.
11.12 Headings. The Article and Section headings contained herein are
for the purposes of convenience only and are not intended to define or limit the
contents of said Articles or paragraphs.
11.13 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
[Remainder of page intentionally Customer to supply.]
[*]=Confidential treatment requested
17
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the Effective Date.
AFFYMAX RESEARCH INSTITUTE MOLECULAR DEVICES CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
---------------------- ----------------------
Title: Secretary Title: President and CEO
---------------------- ----------------------
Date: 28 August 1998 Date: 9/1/98
---------------------- ----------------------
GLAXO WELLCOME, INC. GLAXO GROUP LIMITED
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
---------------------- ----------------------
Title: Vice President, Research Title: Assistant Company Secretary
---------------------- ----------------------
Date: 8/28/98 Date: 28 August, 1998
---------------------- ----------------------
[*]=Confidential treatment requested
18
EXHIBIT A
[*]
The term [*] is used to represent the initial Licensed Product that MDC plans to
develop incorporating the TLLS Technology. [*] will essentially consist of the
TLLS currently produced by Affymax, along with certain modifications (MDC
Improvements) that may be added by MDC. These improvements include, but are not
limited to, rendering the TLLS system [*], addition of a [*] feature such as an
[*], and modified [*].
[*]=Confidential treatment requested
19
EXHIBIT B
LICENSED PATENT RIGHTS
[*].
[*]=Confidential treatment requested
20
EXHIBIT C
AFFYMAX TELECENTRIC LENS LUMINOMETER SYSTEM tlls
TECHNOLOGY DESCRIPTION
The TLLS is a microplate luminometer system comprising a CCD camera and a [*]
that provides for [*] of all standard microplates having [*]. The unprocessed
image of the microplate is substantially free from [*]. The system is described
in technical detail in the [*].
The sensitivity of the TLLS system for detecting [*] is as follows: Dilutions of
[*] in [*] are mixed with [*]. [*] is added to multiple ▇▇▇▇▇ of a [*]. Within
[*] of mixing the [*] and [*], the plate is imaged for [*] using the TLLS
system. Using this procedure, less than [*] of [*] can be detected as having a
signal greater than [*] fold over the [*] control (both values with invariate
"empty well" counts subtracted).
The system has been used to perform [*] in a manner that provides sensitivities
for assays in [*] well plates equivalent to those achieved by competitive
instruments on [*] well plates.
[*]=Confidential treatment requested
21
EXHIBIT D
OTHER TECHNOLOGY TRANSFER ELEMENTS
TRANSFER ELEMENTS
The purpose of this Attachment is to define those elements of the Affymax TLLS
and related proprietary information and technical advice that will be necessary
for MDC to receive from Affymax under the terms of this Agreement in order for
MDC to develop and commercialize Licensed Products.
The following is a list of specific items that have been identified at this
time. While every effort has been made to ensure the list is complete, it is in
the spirit of the Agreement that the first paragraph will be used to guide any
decision with regard to the transfer of any necessary items not yet listed.
1. Patent applications and related office actions and correspondence filed in
regard to the Affymax TLLS.
2. TLLS drawings, circuit diagrams, CAD programs and files.
3. Costed parts listed and associated vendors, including materials
specifications and lead-time for procurement.
4. Vendor information, including letter of right to purchase from Affymax
suppliers (if applicable).
5. Clearance for TLLS information disclosure to MDC from all applicable
consultants and vendors involved in the development of the TLLS, e.g.,
external software consultant, optics design consultant, [*].
6. All [*] for the camera.
7. Information in regard to obtaining software required from outside vendors.
8. Access to external consultants involved in the development of the TLLS,
e.g., external software consultants, optics design consultant, [*].
9. Fabrication documentation, including build sequence.
10. Access to tooling, including molds, jigs, fixtures, dies and associated
documentation.
11. Test procedures.
12. Utility requirements.
13. Special manufacturing room requirements, e.g., darkroom, cleanroom.
14. Agreement that MDC personnel may observe assembly of Affymax TLLS
luminometers by Affymax personnel.
15. Specific documentation for Glaxo units described in Section 2.5.
[*]=Confidential treatment requested
22
TABLE OF CONTENTS
PAGE
1. DEFINITIONS................................................................2
1.1 "Affiliate"........................................................2
1.2 "Affymax Improvement"..............................................2
1.3 "Best Efforts".....................................................2
1.4 "Confidential Information".........................................2
1.5 "[*]"..............................................................2
1.6 "Joint Inventions".................................................2
1.7 "Joint Know-How"...................................................2
1.8 "Joint Patent Rights"..............................................2
1.9 "Joint Technology".................................................2
1.10 "Licensed Know-How"................................................3
1.11 "Licensed Patent Rights"...........................................3
1.12 "Licensed Products"................................................3
1.13 "Licensed Technology"..............................................3
1.14 "MDC Improvements".................................................3
1.15 "MDC Sole Inventions"..............................................3
1.16 "Net Sales"........................................................3
1.17 "Related Technology"...............................................3
1.18 "Third Party"......................................................4
1.19 "TLLS".............................................................4
1.20 "Transition Period"................................................4
1.21 "Valid Claim"......................................................4
2. GRANT OF RIGHTS; PRODUCT DEVELOPMENT AND SUPPORT SERVICES..................4
2.1 License Grant to MDC...............................................4
2.2 Sublicensing.......................................................4
2.3 No Implied License.................................................5
2.4 MDC Marketing and Sales Authority..................................5
2.5 Glaxo Support Services.............................................5
2.6 Transition Period Obligations......................................5
2.7 Commercialization of [*]; Diligence................................5
i
TABLE OF CONTENTS
(CONTINUED)
PAGE
3. CONSIDERATION..............................................................6
3.1 License Fee........................................................6
3.2 Royalties Payable to Glaxo.........................................6
3.3 Payment; Records Retention.........................................6
3.4 Payments to Glaxo..................................................6
4. REPORTS; RECORDS; AUDIT....................................................6
4.1 Reports............................................................6
4.2 Marketing Reports..................................................7
4.3 Affymax Cost Reports...............................................7
4.4 Tax Withholding....................................................7
4.5 Foreign Payments...................................................7
4.6 Audit Request......................................................7
4.7 Survival...........................................................8
5. EXCLUSIVITY; OPTION FOR RELATED TECHNOLOGY.................................8
5.1 Exclusivity........................................................8
5.2 Option Under Related Technology....................................8
6. CONFIDENTIALITY............................................................9
6.1 Confidentiality; Exceptions........................................9
6.2 Authorized Disclosure..............................................9
6.3 Survival...........................................................9
6.4 Publicity..........................................................9
7. OWNERSHIP OF INTELLECTUAL PROPERTY AND PATENT RIGHTS......................10
7.1 Ownership.........................................................10
7.2 Disclosure of Patentable Inventions...............................10
7.3 Patent Filings....................................................10
7.4 Enforcement Rights................................................10
7.5 Trademarks........................................................11
8. TERMS AND TERMINATION.....................................................12
8.1 Term..............................................................12
8.2 Termination for Cause.............................................12
ii
TABLE OF CONTENTS
(CONTINUED)
PAGE
8.3 Termination for Bankruptcy........................................12
8.4 Effect of Termination.............................................12
8.5 Accrued Rights, Surviving Obligations.............................12
9. REPRESENTATIONS AND WARRANTIES............................................13
9.1 Mutual Representations and Warranties.............................13
9.2 Other Representations by Affymax and Glaxo........................13
10. INDEMNIFICATION..........................................................13
10.1 Indemnification by Affymax and Glaxo..............................13
10.2 Indemnification by MDC............................................14
10.3 Mechanics.........................................................14
11. MISCELLANEOUS............................................................14
11.1 Assignment........................................................14
11.2 Dispute Resolution................................................14
11.3 Force Majeure.....................................................15
11.4 Compliance with Law...............................................15
11.5 Governing Law.....................................................15
11.6 Entire Agreement..................................................15
11.7 Transaction Costs.................................................15
11.8 Relationship of the Parties.......................................15
11.9 Notices...........................................................16
11.10 Waiver............................................................17
11.11 Severability......................................................17
11.12 Headings..........................................................17
11.13 Counterparts......................................................17
iii