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EXHIBIT 10.23
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TRADEMARK, PATENT, COPYRIGHT AND KNOW-HOW
LICENSE AGREEMENT
between
▇▇▇▇▇▇-▇▇▇▇▇▇▇ COMPANY
and
GLAXO WELLCOME INC.
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Dated as of June 30, 1996
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TABLE OF CONTENTS
Page
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SECTION 1 Definitions ............................. 1
SECTION 2 Grant of Rights ......................... 4
SECTION 3 Scope of Rights ......................... 5
SECTION 4 Quality Control ......................... 6
SECTION 5 Reservation of Rights ................... 7
SECTION 6 Protection of the Mixed-Use Intellectual
Property................................ 8
SECTION 7 Maintenance of the Mixed-Use Trademarks,
Mixed-Use Patents and Mixed-Use
Copyrights; Challenging of Applications;
Abandonment ............................ 10
SECTION 8 Consultation ............................ 11
SECTION 9 Rights to the Mixed-Use Intellectual
Property ............................... 11
SECTION 10 Confidentiality ......................... 12
SECTION 11 Third Party Mixed-Use Know-How .......... 13
SECTION 12 Indemnification ......................... 14
SECTION 13 Term; Termination ....................... 14
SECTION 14 Further Assurances ...................... 16
SECTION 15 Notices ................................. 16
SECTION 16 Contractual Relationship ................ 17
SECTION 17 Governing Law ........................... 17
SECTION 18 Submission to Jurisdiction .............. 17
SECTION 19 Counterparts............................. 17
SECTION 20 Entire Understanding .................... 17
SECTION 21 Transferability; Binding Effect ......... 18
SECTION 22 Amendment ............................... 18
SECTION 23 Severability ............................ 19
SECTION 24 Waiver .................................. 19
SECTION 25 Remedies ................................ 19
SECTION 26 Headings ................................ 20
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TRADEMARK, PATENT, COPYRIGHT AND KNOW-HOW
LICENSE AGREEMENT
This AGREEMENT is made as of this 30th day of June, 1996, by and
between ▇▇▇▇▇▇-▇▇▇▇▇▇▇ COMPANY, a Delaware corporation with its principal place
of business at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ("Licensor"),
AND
GLAXO WELLCOME INC., a North Carolina corporation with its principal
place of business at Five ▇▇▇▇▇ Drive, Research ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ("Licensee").
WHEREAS Licensee or its Affiliates are the proprietor of certain
intellectual property outside the Core Territory and concurrently with the
execution of this Agreement Licensee or its Affiliates will enter into an
agreement dated as of the date hereof with Licensor or its Affiliates which
grants a license to Licensor or its Affiliates to use such intellectual property
outside the Core Territory to develop and manufacture products sold in the
Non-Prescription Field exclusively for sale in the Core Territory; and
WHEREAS Licensor is the proprietor of the Mixed-Use Intellectual
Property in the Territory and Licensee desires to license such Mixed-Use
Intellectual Property under the terms and conditions contained herein.
NOW IT IS HEREBY AGREED as follows:
1 . DEFINITIONS.
In this Agreement the following words shall have the meanings set forth
below:
"Claims" shall mean all claims, costs, liabilities, damages, losses,
expenses (including reasonable fees and disbursements of counsel), obligations,
liens, assessments, judgements and fines.
"Copyright" shall mean original works of authorship fixed in
any tangible medium of expression
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including, literary works, musical, dramatic, pictorial, graphic and sculptured
works.
"Core Territory" shall mean Andorra, Australia, Austria, Belgium,
Canada, Denmark, Finland, France (including its overseas departments and
overseas territories and Monaco), Germany, Gibraltar, Greece, Iceland, Ireland,
Italy, Liechtenstein, Luxembourg, Mexico, the Netherlands, New Zealand, Norway,
Portugal, San Marino, Spain, Sweden, Switzerland, the United Kingdom, the United
States and the Vatican City.
"Line Extensions" shall mean any extensions of (a) any Product listed
on Schedule 1A, 2A, 3A or 4A hereto which extensions (i) utilize any of the same
Mixed-Use Intellectual Property as such Product and (ii) are sold by or on
behalf of Licensee in the Non-Prescription Field exclusively for sale outside
the Core Territory (it being understood that such a sale may be made within the
Core Territory only if it is exclusively for resale and delivery outside the
Core Territory and each purchaser with respect thereto confirms and agrees to
such restriction) or (b) any Product listed on Schedule 13, 2B, 3B or 4B hereto
which extensions (i) utilize any of the same Mixed-Use Intellectual Property as
such Product, (ii) are of the same or similar product class, category or
formulation as such Product and (iii) are sold in the Prescription Field by or
on behalf of Licensee. For the avoidance of doubt, Line Extensions shall exclude
any extensions developed by or on behalf of Licensor,
"Mixed-Use Copyrights" shall mean any Copyright used in the Territory
on or in connection with a Product (i) in the Non-Prescription Field as
identified on Schedule 3A or (ii) in the Prescription Field as identified on
Schedule 3B. For the avoidance of doubt, unregistered copyrights used on or in
connection with Products identified on Schedule 3A or 3B as of the date hereof
are deemed Mixed-Use Copyrights; however, any unregistered copyrights developed
after the date hereof by Licensor shall not be considered Mixed-Use Copyrights.
"Mixed-Use Intellectual Property" shall mean the Mixed-Use
Trademarks, Mixed-Use Patents, Mixed-Use Copyrights and Mixed-Use Know-How.
"Mixed-Use Know-How" shall mean all trade secrets, technology,
discoveries and improvements, know-how,
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proprietary rights, formulae, confidential and proprietary information,
technical information, techniques, inventions, designs, drawings, procedures,
processes, models, manuals and systems, whether or not patentable, which are
invented, developed, acquired, owned or licensed by Licensor as of the date
hereof and which relate specifically to the manufacture, use or sale of the
Products (whether or not they also relate to the manufacture, use or sale of
other products) specified on Schedule 4A or 4B hereto, including, but not
necessarily limited to, all biological, chemical, biochemical, toxicological,
pharmacological and metabolic material and information and data relating thereto
and formulation, clinical, analytical and stability information and data;
provided, however, that Mixed-Use Know-How shall not include any know-how in the
public domain.
"Mixed-Use Patents" shall mean any Patent used in the Territory in
connection with a Product (i) in the Non-Prescription Field as identified on
Schedule 2A or (ii) in the Prescription Field as identified on Schedule 2B.
"Mixed-Use Trademarks" shall mean any Trademark used in the Territory
on or in connection with a Product (i) in the Non-Prescription Field as
identified on Schedule 1A or (ii) in the Prescription Field as identified on
Schedule 1B. For the avoidance of doubt, unregistered trademarks, service marks,
trade dress, logos and slogans used on or in connection with Products identified
on Schedule 1A or 1B as of the date hereof are deemed Mixed-Use Trademarks;
however, any of the foregoing developed after the date hereof by Licensor shall
not be considered Mixed-Use Trademarks.
"Non-Prescription Field" shall mean the non-prescription consumer
health care business.
"Patents" shall mean patents, patent rights, patent applications,
registered designs, registered design applications, industrial designs,
industrial design applications and industrial design registrations, including
any and all divisions, continuations, continuations-in-part, extensions,
substitutions, renewals, registrations, revalidations, reissues or additions,
including supplementary certificates of protection, of or to any of the
aforesaid items.
"Prescription Field" shall mean the prescription consumer health care
business.
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"Products" shall mean any of the products specified on Schedules 1A,
1B, 2A, 2B, 3A, 3B, 4A and 4B hereto, as applicable (and any Line Extensions in
respect of such Products, which Line Extensions shall be deemed to be Products
identified on Schedule 1A, 1B, 2A, 2B, 3A, 3B, 4A or 4B hereto, as applicable).
"Territory" shall mean the United States.
"Trademarks" shall mean trademarks, trademark registrations, trademark
applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇
applications, business marks, brand names, trade names, trade dress, names,
logos and slogans and all goodwill associated therewith.
"United States" shall mean the fifty states of the United States of
America, the District of Columbia, United States territories and possessions,
including the Commonwealth of Puerto Rico, and U.S. military bases worldwide.
Capitalized terms used herein which are not defined herein shall have
the meanings set forth in the Purchase Agreement dated as of June 30, 1996,
between (i) ▇▇▇▇▇▇-▇▇▇▇▇▇▇ Company and (ii) Glaxo Wellcome plc and Wellcome plc
(the "Purchase Agreement"). References to Licensee hereunder shall include
Affiliates of Licensee except to the extent the context requires otherwise.
2. GRANT OF RIGHTS.
(a) Subject to any pre-existing rights of any third party as described
in Schedule 6 and subject to Section 3, Licensor hereby grants to Licensee an
exclusive, royalty-free license to use and employ the Mixed-Use Intellectual
Property in the Territory solely in connection with
(i) the development and manufacture by or on behalf of Licensee of any
Product sold by or on behalf of Licensee in the Non-Prescription Field
exclusively for sale outside the Core Territory (it being understood that
such a sale may be made within the Core Territory only if it is exclusively
for resale and delivery outside the Core Territory and each purchaser with
respect thereto confirms and agrees to such restriction) which Product is
specified for such Mixed-
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Use Intellectual Property on Schedule 1A, 2A, 3A or 4A hereto, as applicable,
and
(ii) the development, manufacturing, marketing, distribution and sale
in the Prescription Field by or on behalf of Licensee of any Product
specified for such Mixed-Use Intellectual Property on Schedule 1B, 2B, 3B or
4B hereto, as applicable.
The right of Licensee to have any Product in the Non-Prescription Field
described in the foregoing clause (i) manufactured by a third party shall be
subject to the prior written consent of Licensor, which consent shall not be
unreasonably withheld or delayed. Licensor may only withhold consent with
respect to a third party manufacturer if Licensor has a reasonable basis to
believe that such third party manufacturer might engage in activities which
would result in the diversion of any Products in the Non-Prescription Field for
sale inside the Core Territory or engage in any other activities or arrangements
with similar results.
(b) In the event that Licensee desires to use any Trademark with
respect to a Product listed on Schedule 1B in the Prescription Field in the
Territory which is the same as or confusingly similar to any Mixed-Use Trademark
identified on Schedule 1B, Licensor shall, at Licensee's reasonable request, use
reasonable efforts to register such Trademark and license such Trademark to
Licensee pursuant to the terms of this Agreement.
3. SCOPE OF RIGHTS.
(a) Licensee shall not use or register, or attempt to register, in the
Core Territory any Trademark which is the same as or confusingly similar to any
Trademark on Schedule 1A, except for such use as is provided for herein.
(b) If required by any Governmental Rule, when any Mixed-Use Trademark
is used by Licensee, it shall be accompanied by wording to show that it is a
Trademark used by Licensee with the permission of Licensor. The terms of such
wording and its placement shall be in accordance with any applicable
Governmental Rules.
(c) Licensee undertakes to use the Mixed-Use Trademarks and Mixed-Use
Copyrights in the Territory only in
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respect of, upon or in connection with (i) Products identified on Schedule 1A or
3A, as applicable, that are developed and manufactured by or on behalf of
Licensee and sold by or on behalf of Licensee in the Non-Prescription Field
exclusively for sale outside the Core Territory or (ii) Products identified on
Schedule 1B or 3B, as applicable, that are developed, manufactured, marketed,
distributed and sold in the Prescription Field by or on behalf of Licensee. The
foregoing does not affect Licensee's right to use its Trademarks and Copyrights
outside of the Core Territory.
(d) In connection with Section 2 hereof, Licensee shall not:
(i) incorporate packaging of Products used by Licensor in the Core
Territory unless required by Governmental Authority to incorporate such
packaging, provided that where such packaging is used by Licensee as of the
date hereof, this restriction shall apply only to any change to such
packaging after the date of this Agreement which change increases or is
likely to increase the risk of confusion; and
(ii) use in connection with the marketing or sale, outside the Core
Territory, of any Product or any products that are the same as or similar to
any Products, any packaging or user instructions printed in any language
other than the language used by the government in the country where such
Product or product is intended to be marketed or sold (and in respect of
countries in the former Soviet Union, Russian), provided that (x) this
restriction shall apply only to any change in packaging or user instructions
after the date of this Agreement and (y) one or more languages commonly used
on packaging or user instructions in such country may be used if it can be
reasonably demonstrated that the use of such other language or languages is
well-established and widespread on packaging or user instructions in such
country for products similar to such Products or products in which event such
language or languages may be used on packaging or user instructions in such
country. Licensee shall notify Licensor of any such use under (y) within a
reasonable period of time.
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4. QUALITY CONTROL.
(a) Licensee agrees to adhere to all standards required by any
applicable Governmental Rule, including any standards relating to current good
manufacturing practices with respect to the Products, but only to the extent
that the failure to comply might reasonably be expected to have a material
adverse effect on the Mixed-Use Trademarks or Licensor's rights thereto.
Licenser acknowledges that the standards of quality employed as of the date
hereof with respect to the Products identified on Schedules 1A, 1B, 3A and 3B
hereto (excluding Line Extensions) are acceptable to Licensor and Licensee
agrees to adhere to such standards unless it obtains the prior written consent
of Licensor, such consent not to be unreasonably withheld or delayed. Licensee
shall notify Licensor of standards of quality with respect to any Line
Extensions within sixty (60) days prior to launch of such Line Extensions and
Licensor shall notify Licensee as to whether such standards of quality are
acceptable or, if unacceptable, provide a reasonably detailed description of the
reasons why such standards are unacceptable. If Licensor fails to notify
Licensee within thirty (30) days after being notified by Licensee of such
standards of quality, such standards of quality shall be deemed acceptable by
Licensor.
(b) Licensee agrees to furnish to Licensor or its representatives upon
the reasonable request of Licensor or its representatives, samples of the
Products, whether or not manufactured by Licensee, and other Product materials
using the Mixed-Use Trademarks, including, but not limited to, labelling,
packaging, advertising and publicity material.
(c) Licensee shall use the Mixed-Use Trademarks in an appropriate
manner, without jeopardizing the significance, distinctiveness or validity of
such Mixed-Use Trademarks. Licensor hereby consents to the Product packaging and
other uses of the Mixed-Use Trademarks existing on the date hereof.
5. RESERVATION OF RIGHTS.
Licenser reserves for itself all rights to use and employ any of the
Mixed-Use Intellectual Property for any purpose other than those granted in
Section 2, including, without limitation, Licensor or any of its Affiliates'
rights to use any of the Mixed-Use Intellectual Property in the Non-Prescription
Field in the Core Territory; provided,
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however, that Licensor and its Affiliates shall not have the right to use such
Mixed-Use Intellectual Property in the Prescription Field in the Core Territory
except for any of the Mixed-Use Intellectual Property identified on Schedule 1A,
2A, 3A or 4A which either:
(x) is to be used in connection with a Product identified in Schedule
1A, 2A, 3A or 4A in a jurisdiction in which such Product is required pursuant
to any Governmental Action after the date hereof to be sold only in the
Prescription Field;
(y) is used for sale of a product in the Prescription Field in a Switch
Jurisdiction (as defined below) in which Licensee is not selling a Product
associated with such Mixed-Use Intellectual Property in the Prescription
Field and Licensee consents to such use, such consent not to be unreasonably
withheld (Licensee agreeing to consider such potential use in good faith but
giving due consideration to its business needs). Licensor agrees that it will
use all commercially reasonable efforts to cause any product being sold in
the Prescription Field pursuant to clause (y) above to be switched to the
Non-Prescription Field as soon as possible consistent with applicable
Governmental Rules. "Switch Jurisdiction" means, with respect to a product, a
jurisdiction in the Core Territory in which it can be reasonably demonstrated
that under applicable Governmental Rules such product must be sold in the
Prescription Field for a period of time prior to being sold in the
Non-Prescription Field.
6. PROTECTION OF THE MIXED-USE INTELLECTUAL PROPERTY.
(a) As to any proceedings instituted by a third party seeking to
impeach the validity of or challenging the title to or ownership of any of the
Mixed-Use Intellectual Property, Licensor shall be responsible for taking
reasonable action to defend or prosecute such proceedings; provided, however,
that Licensor may, but shall not be required to act under this Section 6(a) with
respect to any Mixed-Use Intellectual Property if Licensee has discontinued sale
of the Product relating to such Mixed-Use Intellectual Property for three years.
(b) In the event that Licensee or Licensor becomes aware at any time
during the period of this Agreement of any unauthorized use or infringement, or
any
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alleged unauthorized use or infringement, by a third party of any of the
Mixed-Use Intellectual Property, whether in the Prescription Field or the
Non-Prescription Field, immediately upon becoming aware thereof, it shall notify
the other party hereto in writing of such unauthorized use or infringement or
alleged unauthorized use or infringement.
(c) Licensor may, but shall not be required to, prosecute any
unauthorized use or infringement, or any alleged unauthorized use or
infringement, by a third party of any of the Mixed-Use Intellectual Property of
which it is aware or which is brought to its attention, in which case it shall
act in its own name and at its own expense. In the event Licensor brings such an
action, Licensee shall, at the reasonable request and, subject to the following
sentence, expense of Licensor, cooperate fully with Licensor. Any recovery
obtained from such action shall accrue solely to the benefit of Licensor;
provided that if Licensee bears a proportionate share (based on its relative use
of the relevant Mixed-Use Intellectual Property) of the expenses of such action,
as incurred, it shall be entitled to the same proportionate share of such
recovery.
(d) If Licensor has failed to prosecute under Section 6(c) with respect
to an unauthorized use or infringement, or alleged unauthorized use or
infringement, by a third party of any of the Mixed-Use Intellectual Property by
the earlier of (i) three months after it has been notified in writing by
Licensee of such unauthorized use or infringement, or alleged unauthorized use
or infringement, or (ii) one month before the time limit, if any, set forth in
the appropriate laws and regulations for the filing of such actions, Licensee
may, but shall not be required to, prosecute any such alleged infringement or
threatened infringement. In such event, Licensee shall notify Licensor in
writing before taking such action and Licensee shall act in its own name and at
its own expense. In such event, Licensor shall cooperate fully with Licensee at
the reasonable request and, subject to the following sentence, expense of
Licensee, including, if required in order to bring such an action, the
furnishing of a power of attorney or, to the extent possible, consenting to
become a party. Any recovery obtained from any such action shall accrue solely
to the benefit of Licensee; provided that if Licensor bears a proportionate
share (based on its relative use of the relevant Mixed-Use Intellectual
Property) of the expenses of such action, as incurred, it shall be entitled to
the same proportionate share of such recovery. Licensee
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shall not reach any settlement with respect to any such action without the prior
written consent of Licensor, which consent shall not be unreasonably withheld.
Notwithstanding the provisions of this Section 6(d), in the event that Licensor
reasonably believes that the commencement of a prosecution of an unauthorized
use or infringement, or alleged unauthorized use or infringement, of any
Mixed-Use Intellectual Property in or with respect to the Non-Prescription Field
solely in the Core Territory is not in the best interests of Licensor, then
Licensor may give notice to Licensee to that effect and in such event Licensee
shall have no right to prosecute any such unauthorized use or infringement, or
alleged unauthorized use or infringement, of any Mixed-Use Intellectual Property
in or with respect to the Non-Prescription Field.
(e) Licensor and Licensee may agree jointly to prosecute any
infringement described in Section 6(b) with a mutually agreed upon allocation of
all costs and expenses of, as well as any recovery obtained from, such action.
(f) To the extent permitted or required by any Governmental Rule,
Licensor shall, at Licensor's expense, apply for registration of Licensee as a
registered user of the Mixed-Use Trademarks in the Territory and Licensee shall
join in and do all such things and execute such documents as may be necessary or
convenient for effecting the said registered user entry or, to the extent
appropriate, to effect the recordal of Licensee as a user of the Mixed-Use
Trademarks in the Territory.
7. MAINTENANCE OF THE MIXED-USE TRADEMARKS, MIXED-USE PATENTS AND MIXED-USE
COPYRIGHTS; CHALLENGING OF APPLICATIONS; ABANDONMENT.
(a) Licensor shall be responsible for, and shall cause to be paid all
costs and fees in connection with, the application for and the prosecution,
maintenance (including, but not limited to, renewals, extensions, restorations,
fees, taxes, annuities, filings, evidences of use, certified copies of
registration, affidavits and declarations) or protection (including, but not
limited to, administrative or judicial proceedings unless any such proceeding is
initiated by Licensee in accordance with the terms hereof) of, the Mixed-Use
Trademarks, Mixed-Use Patents sad Mixed-Use Copyrights, in accordance with any
applicable Governmental Rule
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(b) Licensor shall be responsible for monitoring applications for
confusingly similar Trademarks in the Territory and for instituting proceedings
in the Territory in opposition to the registration or use of such Trademarks, in
each case as appropriate in the reasonable opinion of Licensor.
(c) Licensee shall provide Licensor with such assistance as Licensor
may reasonably request, including the provision of documentation and information
in its possession or knowledge to permit Licensor to fulfill its obligations
under this Section 7.
(d) With respect to Licensor's maintenance expenses incurred pursuant
to this Section 7 with respect to any Mixed-Use Trademark, Mixed-Use Patent or
Mixed-Use Copyright identified on Schedules 1B, 2B or 3B hereto, as applicable,
Licensee shall pay to Licensor within sixty (60) days after the end of each
calendar year an amount equal to one half of the actual cost of such expenses.
(e) Licensor may provide services under this Section 7 through any of
its Affiliates, in which case Licensor may require Licensee to provide the
assistance, compensation and reimbursement contemplated by this Section 7
directly to such Affiliate.
(f) In the event that at any time following the date of this Agreement
Licensee determines that a Mixed-Use Trademark, Mixed-Use Patent or Mixed-Use
Copyright is of no further interest to Licensee, Licensee shall give notice of
such determination to Licensor within sixty (60) days of such determination,
whereupon Licensor shall have full right to abandon such Mixed-Use Trademark,
Mixed-Use Patent or Mixed-Use Copyright.
8. CONSULTATION.
In the event that any applicable legal provision or governmental or any
other administrative act or decision is likely to the beat of the parties'
knowledge or belief to have the effect of invalidating or endangering any of the
Mixed-Use Intellectual Property, the parties shall consult with each other in
order to decide upon an appropriate course of action so as to implement to the
fullest extent legally possible the objectives of this Agreement.
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9. RIGHTS TO THE MIXED-USE INTELLECTUAL PROPERTY.
Licensee acknowledges that it has not acquired legal title to any of
the Mixed-Use Intellectual Property and will not acquire legal title to any of
the Mixed-Use Intellectual Property by reason of this Agreement. Licensee will
not at and time do or knowingly permit to be done any act or thing which is
designed, or might reasonably be expected, to in any way impair the rights of
Licensor in and to any of the Mixed-Use Intellectual Property or depreciate its
value or reputation, or which would threaten the confidentiality of the
Mixed-Use Know-How. Except as expressly permitted hereunder, Licensor will not
at any time do or knowingly permit to be done any act or thing which is
designed, or might reasonably be expected, to in any way impair the rights of
Licensee in and to any of the Mixed-Use Intellectual Property or depreciate its
value or reputation, or which would threaten the confidentiality of the
Mixed-Use Know-How, and Licensor shall use the Mixed-Use Trademarks in an
appropriate manner, without jeopardizing the significance, distinctiveness or
validity of such Mixed-Use trademarks. Licensee acknowledges that any goodwill
which relates to Mixed-Use Trademarks during the term of this Agreement shall
accrue to Licensor.
10. CONFIDENTIALITY
(a) Neither party shall, during the period while any provision of this
Agreement is in effect, disclose, or permit any of its Affiliates to disclose,
to any Person other than such party's Affiliates, any information (that is not
publicly available or generally known other than by breach of the provisions of
this Agreement or made available by a third party which is not in breach of an
obligation of confidentiality) (i) regarding the terms of this Agreement or (ii)
obtained by such party pursuant to or in connection with the negotiation,
execution, delivery and performance of this Agreement; except (v) with respect
to Intellectual Property Rights as permitted in Section 10(b), (w) with the
prior written consent of Licensor, in the case of a disclosure by Licensee or
any of its Affiliates, or the prior written consent of Licensee, in the case of
a disclosure by Licensor or any of its Affiliates; (x) to the extent necessary
to comply with the requirements of the Securities and Exchange Commission, the
London Stock Exchange and any other Governmental Authority or pursuant to any
Governmental Rule, in which event the party making such disclosure shall so
notify the other party as promptly as
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practicable (and, if possible, prior to making such disclosure) and shall seek
confidential treatment of such information; (y) any such disclosure that is
reasonably necessary in connection with enforcement of such party's rights
hereunder; or (z) disclosures to a professional advisor to such party.
(b) In addition to the above provisions and except for those rights
granted herein, Licensee (whether on its own behalf or with or on behalf of any
ether Person) shall not, and shall not permit any of its Affiliates to, at any
time after the date hereof, (1) make any use in the Core Territory of the
Mixed-Use Patents or Mixed-Use Know-How or (2) disclose in any country or
territory such Mixed-Use Patents or Mixed-Use Know-How, in whole or in part, to
any Person whatsoever other than its Affiliates, which Affiliates shall be bound
by the confidentiality provisions contained herein, and then only in accordance
with the provisions hereof; provided, however, that these obligations shall not
apply to (i) any such Mixed-Use Patents or Mixed-Use Know-How that are publicly
available or generally known other than by breach of the provisions of this
Agreement, (ii) any disclosure of such Mixed-Use Patents or Mixed-Use Know-How
required by the Securities and Exchange Commission, the London Stock Exchange or
any other Governmental Authority or pursuant to any Governmental Rule, in which
event Licensee shall notify Licensor as promptly as practicable (and, if
possible, prior to making such disclosure) and shall seek confidential treatment
of such information, (iii) any disclosure of such Mixed-Use Patents or Mixed-Use
Know-How that is reasonably necessary in connection with enforcement of the
rights of Licensee or any of its Affiliates hereunder, including disclosure to
such entity's counsel, (iv) any disclosure to a third party of such Mixed-Use
Patents or Mixed-Use Know-How pursuant to a confidentiality agreement with such
third party which agreement contains confidentiality provisions the same as or
substantially similar to those contained herein and as to which Licensee has
used all reasonable efforts to obtain a provision to the effect that Licensor or
its Affiliates are third party beneficiaries of such agreement or (v) any
disclosure of such Mixed-Use Patents to any patent authority having appropriate
jurisdiction to the extent necessary to fulfill the requirements of United
States Code, Title 35, Patents Sections 112-113 or its foreign equivalents.
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11. THIRD PARTY MIXED-USE KNOW-HOW.
In the case of Mixed-Use Know-How licensed or disclosed under license
to Licensor from or by a third party, with a right to sublicense, if Licensor
makes available to Licensee the benefit of such Mixed-Use Know-How in accordance
with the other provisions of this Agreement, Licensee shall assume and bear the
expense of all obligations of confidentiality, maintenance and royalty payments
and all other obligations of Licensor with respect thereto to the extent that
any such obligations relate to benefits derived by Licensee, as shall be
specified by Licensor and agreed upon by Licensee.
12. INDEMNIFICATION.
(a) Each of Licensee and Licensor shall indemnify, defend and hold
harmless the other and their respective Affiliates (and their respective
officers, directors, employees, agents and representatives) from and against all
Claims arising from, based upon, relating to or caused by any material breach of
this Agreement by Licensee or Licensor, as applicable.
(b) Any indemnification pursuant to this Section 12 shall be governed
by the provisions of Sections 7.04, 7.05, 7.06, 7.07 and 7.08 of the Purchase
Agreement.
(c) Without limiting the remedies set forth in Section 13(c), Licensor
may pursue any additional remedy pursuant to this Section 12.
13. TERM; TERMINATION.
(a) Term. Unless otherwise terminated earlier in accordance with the
provisions of this Section 13, the initial term of this Agreement shall commence
on the date hereof and continue for forty (40) years, and upon the expiration of
the initial term of this Agreement, this Agreement shall be automatically
renewed for successive one year periods.
(b) Patent Expiration. This Agreement shall terminate immediately in
respect of any Mixed-Use Patent upon the expiration of such Mixed-Use Patent.
17
15
(c) Termination for Breach. If Licensee (i) fails to meet the quality
control provisions with respect to any Product identified for any Mixed-Use
Trademark in a material respect or (ii) commits a material breach of any other
terms and conditions of this Agreement which, in each case has a significant
adverse effect on any Mixed-Use Trademark and, in any such case, fails to remedy
the same (where such failure or breach is capable of remedy) within one hundred
and twenty (120) days from the date of written notice given by Licensor of such
failure or breach, Licensor may bring an action against Licensee for equitable
relief and/or damages. If, however, Licensor obtains a favorable judgment from a
court of competent jurisdiction or a favorable settlement agreement in any two
such actions in the same country with respect to any particular Mixed-Use
Trademark, and Licensee commits a further breach described in the foregoing
clauses (i) or (ii) of this Agreement in such country with respect to such
Mixed-Use Trademark, Licensor may immediately terminate this Agreement as it
relates to the use of such Mixed-Use Trademark only.
(d) Effect of Termination. Upon any termination of this Agreement in
respect of any of the Mixed-Use Trademarks for any reason:
(i) Licensee will immediately (A) cease to use the relevant Mixed-Use
Trademarks and will not thereafter use upon or in respect of the Products or
any other products such Mixed-use Trademarks (or any Trademarks or packaging
which are similar to or so nearly resemble such Mixed-Use Trademarks) or any
Trademark as would or might be likely to deceive or cause confusion or to
constitute passing off; and (B) at the request of Licensor, relabel,
overlabel, destroy or deliver any and all remaining stocks of materials and
Products bearing the Mixed-Use Trademarks in respect of which this Agreement
has been terminated; provided, however, that, with respect to any
termination under Section 13(c) hereof, Licensee shall have the right to
dispose of existing stocks of materials and Products bearing the Mixed-Use
Trademark in respect of which this Agreement has been terminated within a
one (1) year period following the date of termination. The terms of this
Agreement in respect of any such Mixed-Use Trademark shall be deemed to be
in effect during such one (1) year period.
18
16
(ii) Licensor may apply for cancellation of the entry of Licensee as a
registered user under the Mixed-Use Trademarks in respect of which this
Agreement has been terminated and Licensee hereby consents to such
cancellation and undertakes to execute any documents that Licensor may
reasonably request Licensee to execute for that purpose.
(e) Other. Unless termination of this Agreement, or a part hereof, is
the result of a breach by a party hereto, such party shall have no liability for
such termination but shall have liability for antecedent breaches. The
provisions of Section 10 hereof shall survive for a period of five years (except
with respect to Mixed-Use Know-How, the protection of which shall be unlimited
in duration or such shorter duration as provided by applicable law) after all
provisions of this Agreement have been otherwise ended or terminated.
14. FURTHER ASSURANCES.
Subject to the provisions of this Agreement with respect to costs, each
party shall facilitate the implementation of the terms of this Agreement by
executing at its own expense all appropriate assignments, licenses and all other
documents, and by taking other actions, reasonably necessary or desirable to
give effect to this Agreement.
15. NOTICES.
All notices, demands, requests and other communications required or
permitted to be given hereunder shall be in writing and deemed duly given on the
date delivered by hand, mailed by registered or certified mail, postage prepaid,
or by overnight courier or by facsimile transmission the receipt of which is
confirmed by the
19
17
telephone and, pending the designation of another address, addressed as follows:
If to Licensor:
▇▇▇▇▇▇-▇▇▇▇▇▇▇ Company
▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention of Vice President of Planning,
Investment and Development
Facsimile: ▇▇▇-▇▇▇-▇▇▇▇
Attention of Vice President and
General Counsel
Facsimile: ▇▇▇-▇▇▇-▇▇▇▇
If to Licensee:
Glaxo Wellcome Inc.
Five ▇▇▇▇▇ Drive
Research ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention of Vice President and
General Counsel
Facsimile:
With a copy to:
Glaxo Wellcome plc
Glaxo ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇ ONN
England
Attention of Trademark Manager
Facsimile: ▇▇-▇▇▇-▇▇▇-▇▇▇▇
16. CONTRACTUAL RELATIONSHIP.
Nothing in this Agreement shall be deemed to constitute the parties
hereto as partners or as principal or agent between themselves.
17. GOVERNING LAW.
This Agreement shall be governed, construed and enforced in
accordance with the laws of the State of New
20
18
York without regard to the applicable principles of conflicts of laws that might
otherwise govern.
18. SUBMISSION TO JURISDICTION.
(a) In the event of any legal suit, action or proceeding arising out of
or relating in any way to this Agreement, the parties to this Agreement agree to
submit to the jurisdiction of any New York State court sitting in New York
County or any Federal court of the United States sitting in the Borough of
Manhattan in the City of New York, and any appellate court from any such court.
(b) Each party irrevocably consents to service of process on it or any
agent for service appointed from time to time in the manner provided for notices
in Section 15 with respect to any suit, action or proceeding. Nothing in this
Agreement shall affect the right of any party to serve process in any other
manner permitted by law.
19. COUNTERPARTS.
This Agreement may be executed in multiple counterparts, each of which
shall be deemed an original.
20. ENTIRE UNDERSTANDING.
No rights are granted by either party to the other hereunder with
respect to the subject matter of this Agreement except those expressly set forth
in this Agreement. Without limiting the foregoing, no representation made by
either party to the other prior to the execution of this Agreement with respect
to the subject matter of this Agreement shall survive the execution of this
Agreement.
21. TRANSFERABILITY; BINDING EFFECT.
The respective rights and obligations of each party hereto shall be
assignable in whole or in part by such party without the prior written consent
of the other party so long as such assignee executes and delivers to the other
party an agreement satisfactory in form and substance to such other party under
which such assignee assumes and agrees to perform and discharge all the
obligations and liabilities of the assigning party; provided, however, that (a)
any such assignment to an Affiliate of either party shall not relieve the
assigning party of its obligations
21
19
hereunder and (b) Licensee's right to assign any of its rights and obligations
under this Agreement shall be subject to Licensor's rights pursuant to the
Miscellaneous Agreement including its rights of first offer and first refusal.
In the extent this Agreement can not be assigned to a third party by Licensee
due to the provisions of any Governmental Rule, Licensor shall, if permitted to
do so by applicable Governmental Rules, enter into an agreement with such third
party under the same terms and conditions set forth herein and provided that
this Agreement could otherwise be assigned to such third party in accordance
with the terms hereof. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective permitted successors and
assignees. Nothing in this Agreement, expressed or implied, is intended or shall
be construed to confer upon or give to any Person, other than the parties hereto
and their respective permitted successors and assignees, any remedy or claim
under or by reason of this Agreement.
22. AMENDMENT.
No amendment or variation of this Agreement shall be valid and
effective unless in writing and signed by or on behalf of each party.
23. SEVERABILITY.
If and to the extent that any Governmental Authority holds any
provision (or any part thereof) of this Agreement to be invalid or
unenforceable, such holding shall in no way affect the validity of the remainder
of the Agreement. If and to the extent compliance with any provision of this
Agreement, in the reasonable opinion of a party, would result in a violation of
a Governmental Rule, such party need not comply with such provision; provided,
however, that such party shall provide, to the extent practicable, prior written
notice to the other party and, where not practicable, prompt notice following
such non-compliance.
24. WAIVER.
The failure of either party at any time to require performance by the
other of any provision hereof shall in no way affect the full right to require
such performance at any time thereafter. Nor shall the waiver, indulgence or
toleration by one party of a breach of any provision hereof
22
20
by the other be taken or held to be a waiver, indulgence or toleration of any
succeeding breach of such provision or as a waiver, indulgence or toleration of
the breach of any other provision hereof. The termination for any reason or
expiration of this Agreement shall be without prejudice to the rights of either
party to receive all payments accrued and unpaid at the effective date of such
termination or expiration and to any remedies of a party in respect of any
previous breach of any of the covenants herein contained.
25. REMEDIES.
Except as may otherwise be specifically provided herein, the rights and
remedies of the parties hereunder are cumulative and are not exclusive of any
rights or remedies which the parties hereto would otherwise have. Each party
acknowledges and agrees that the other party would be irreparably damaged in the
event any of the provisions of this Agreement were not performed by it in
accordance with their specific terms or were otherwise breached. It is
accordingly agreed that each party hereto shall be entitled to an injunction or
injunctions to prevent breaches of such provisions and specifically to enforce
such provisions, in addition to any other remedy to which such party may be
entitled, at law or in equity.
26. HEADINGS.
The headings before each paragraph of this Agreement are inserted
merely for convenience and as an aid in locating paragraphs. They are not part
of this Agreement
23
and are not to be used as an aid in the interpretation of this Agreement.
IN WITNESS WHEREOF the parties hereto haves caused this Agreement to be
duly executed as of the date first written above.
▇▇▇▇▇▇-▇▇▇▇▇▇▇ COMPANY
by /s/
---------------------------
Name:
Title:
GLAXO WELLCOME INC.
by /s/
---------------------------
Name:
Title:
24
SCHEDULE 1A
-----------
MIXED-USE TRADEMARKS
--------------------
APPLICATION/ PRODUCT IN NON-
TRADEMARK REGISTRATION NO. PRESCRIPTION FIELD
--------- ---------------- ------------------
25
SCHEDULE 1B
-----------
MIXED-USE TRADEMARKS
--------------------
PRODUCT IN
APPLICATION/ PRESCRIPTION
TRADEMARK REGISTRATION NO. FIELD (1)
--------- ---------------- ---------
NEOSPORIN 572,764 Neosporin
NEOSPORIN 75-009,285 Neosporin
POLYSPORIN 546,132 Polysporin
------------------------
(1) Sold as of the date hereof.
26
SCHEDULE 2A
-----------
MIXED-USE PATENTS
-----------------
PATENT PRODUCT IN NON-
------ PRESCRIPTION FIELD
------------------
Application Grant
----------- -----
Number Date Number Date
------ ---- ------ ----
--------------------
(1) Designated in a PCT Application.
27
SCHEDULE 2B
-----------
MIXED-USE PATENTS
-----------------
PATENT (1) PRODUCT IN
---------- PRESCRIPTION FIELD
------------------
Application Grant
----------- -----
Number Date Number Date Neosporin
------ ---- ------ ----
415142 03/28/95 Polysporin
971766 02/12/93
182104 07/29/92
TBN (2) 06/14/94
892830 06/05/92 351795 10/25/94
002766 12/30/92 346102 03/l9/94
003802 01/15/93
-------------------
(1) Each of the Patents listed below can be used with respect to each
of the Products listed in the column to the right and which Products are sold as
of the date hereof or permitted Line Extensions.
(2) Designated in a PCT Application.
28
SCHEDULE 3A
-----------
MIXED-USE COPYRIGHTS
--------------------
COPYRIGHT REGISTRATION NO. PRODUCT IN NON-
--------- ---------------- PRESCRIPTION FIELD
------------------
29
SCHEDULE 3B
-----------
MIXED-USE COPYRIGHTS
--------------------
COPYRIGHT REGISTRATION NO. PRODUCT IN NON-
--------- ---------------- PRESCRIPTION FIELD
------------------
None
Unregistered
------------
Copyrights
----------
Neosporin
Polysporin
30
SCHEDULE 4A
-----------
MIXED-USE KNOW-HOW
------------------
PRODUCT IN
PRESCRIPTION FIELD
------------------
31
SCHEDULE 4B
-----------
MIXED-USE KNOW-HOW
------------------
PRODUCT IN
PRESCRIPTION FIELD
------------------
Neosporin
Polysporin
32
SCHEDULE 5
----------
EXCLUDED KNOW-HOW
-----------------
None
33
SCHEDULE 6
----------
PRE-EXISTING RIGHTS
-------------------