Exhibit 10.17(b)
Dated 27th November 2000
----------------------------------------------------------------------
CEPHALON INC
- and -
NOVARTIS AG
---------------------------------------------
LICENCE AGREEMENT
----------------------------------------------
CMS ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇
T ▇▇▇(▇)▇▇ ▇▇▇▇ ▇▇▇▇
F ▇▇▇(▇)▇▇ ▇▇▇▇ ▇▇▇▇
Doc Ref: (51770166.06)
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
Table of Contents
1. Definitions and Interpretation....................................1
2. The Licence/Term..................................................3
3. Trademarks........................................................4
4. Product Licences..................................................5
5. Warranties........................................................5
6. Payments..........................................................6
7. Force Majeure.....................................................6
8. Termination.......................................................7
9. Confidential Information..........................................7
10. Notices...........................................................8
11. Relationship of Parties...........................................8
12. Waiver............................................................9
13. Severability......................................................9
14. Governing Law....................................................10
15. Transmission of Rights...........................................10
16. Counterparts.....................................................10
17. Third Party Rights...............................................10
18. Variations.......................................................10
SCHEDULE 1 Products...................................................12
SCHEDULE 2 Trade Marks................................................13
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
THIS LICENCE is made on 27th November 2000
BETWEEN
(1) NOVARTIS AG a company incorporated in Basel Switzerland whose principal
office is at ▇▇▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇-▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ("Novartis"); and
(2) CEPHALON, INC. a company incorporated in Delaware, USA whose principal
office is at ▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇-▇▇▇▇, ▇▇▇ ("Cephalon").
WHEREAS
(A) The parties hereto are both engaged in the manufacture, marketing,
distribution and sale of pharmaceutical products.
(B) Novartis wishes to license to Cephalon the trademarks and product licences
to certain of its products and to grant Cephalon the right to market and
sell those products in the Territory (as hereinafter defined) for a period
of 10 years.
NOW IT IS AGREED as follows:-
1. Definitions and Interpretation
1.1 In this Licence the following terms shall have the following meanings:
"Affiliate" means any company, partnership or other entity which directly
or indirectly Controls, is Controlled by or is under common Control with
the Party in question including as a Subsidiary or Holding Company;
"Commencement Date" means 1 January 2001;
"Control" means the ownership (direct or indirect) of more than 50% of the
issued share capital, or the legal power to direct or cause the direction
of the general management and policies of the Party in question and
"Controlled" and "Controller" shall be construed accordingly;
"End Users" means customers who are not reselling the Products to third
parties;
"Force Majeure" means in relation to any Party any event or circumstance
which is beyond the reasonable control of that Party which event that
Party could not reasonably be expected to have taken into account at the
date of this Licence
-1-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
including acts of God, war, riot, civil commotion, any overriding
emergency, fire, flood, storm and industrial dispute (other than
industrial dispute affecting only the employees of the Party suffering the
event of force majeure or any of its agents or subcontractors);
"Party" means Cephalon or Novartis (or their respective successors);
"Product Licence" means the authorisation for the sale and marketing of
the Products in the Territory granted by a Governmental or Regulatory
Authority as may be varied from time to time by Novartis;
"Products" means the Products listed in Schedule 1 together with such
additions as the Parties may agree in writing;
"Rights" means all or any copyright, design right, trademarks, tradenames,
patents, know how, trade secrets and other intellectual property or other
proprietary rights which may at any time subsist throughout all or any
part of the world whether registered or otherwise including, without
limitation, the Trademarks and all extensions and renewals thereof;
"Term" means the period of ten years from the Commencement Date;
"Territory" means the United Kingdom together with the Republic of Ireland
or as may be agreed between the parties from time to time;
"Trademarks" means the registered trademarks for the Products set out in
Schedule 2;
1.2 In this Licence:
1.2.1 unless the context otherwise requires all references to a particular
Clause, Schedule or paragraph shall be a reference to that Clause,
Schedule or paragraph, in or to this Licence as it may be amended
from time to time pursuant to this Licence;
-2-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
1.2.2 the table of contents and headings are inserted for convenience only
and shall be ignored in construing this Licence;
1.2.3 unless the contrary intention appears words importing the masculine
gender shall include the feminine and vice versa and words in the
singular include the plural and vice versa;
1.2.4 unless the contrary intention appears words denoting persons shall
include any individual, partnership, company, corporation, joint
venture, trust, association (incorporated or unincorporated),
organisation or other entity, in each case whether or not having
separate legal personality;
1.2.5 reference to any statute or regulation includes any modification or
re-enactment of that statute or regulation; and
1.2.6 reference to the words "include" or "including" are to be construed
without limitation to the generality of the preceding words.
2. The Licence/Term
2.1 Novartis hereby grants Cephalon a licence to promote, market, sell, and
distribute the Products in the Territory under the Trademarks and in
accordance with the Product Licences, together with a right to sub-license
the same to its Affiliates or to Novartis and its Affiliates.
2.2 This Agreement shall commence on the Commencement Date and continue for
the Term, provided that the provisions of Clauses 2.3 and 2.4 shall expire
on the fifth anniversary of the Commencement Date unless renewed by
specific agreement between the Parties.
2.3 The licence granted to Cephalon shall be exclusive and Novartis will not
appoint in the Territory any other distributor or reseller of the Products
nor, except as provided in Clause 2.2, will it directly supply for its own
account any Product to distributors, resellers or End Users located within
the Territory.
-3-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
2.4 Cephalon will purchase all its requirements of the Products from Novartis.
3. Trademarks
3.1 Novartis will maintain the existing registrations of the Trademarks and
Cephalon will provide, at the request of Novartis, all necessary
assistance in maintaining such registrations.
3.2 Cephalon:
3.2.1 Shall not do or omit to do anything to diminish the rights of
Novartis in the Trademarks or impair any registration of the
Trademarks
3.2.2 Will comply with all regulations and practices in force or use in
the Territory to safeguard Novartis' rights in the Trademarks
3.2.3 Acknowledges that Novartis is the owner of the Trademarks and that
Cephalon shall not dispute or challenge the validity of the
Trademarks or the rights of Novartis to the Trademarks during the
term of this Licence and that any goodwill derived from the use by
Cephalon of the Trademarks shall accrue to Novartis
3.3 Each Party must promptly notify the other of any actual or suspected
infringement within the Territory of the Trademarks that comes to its
attention. Cephalon shall co-operate fully with Novartis in taking all
steps required by Novartis, in its sole discretion, in connection with the
infringement. Novartis will be responsible for the cost of any legal
proceedings it requires and is entitled to any damages, account of profits
and/or aware of costs recovered.
-4-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
4. Product Licences
4.1 Novartis will ensure the maintenance as far as possible of the existing
registrations of the Product Licences provided, however, that Novartis
shall have the right to amend the same in the normal course of business
after consultation with Cephalon.
4.2 Cephalon:
4.2.1 Shall not do anything to diminish the rights of Novartis in the
Product Licences or impair any registration of the Product Licences;
4.2.2 Will comply with all regulations and practices in force or use in
the Territory to safeguard Novartis' rights in the Product Licences.
5. Warranties
5.1 Novartis hereby represents and warrants to Cephalon that at the date of
this Licence:
5.1.1 That it is entitled to grant this Licence to Cephalon.
5.1.2 The execution of the Licence and the performance of Novartis'
obligations thereunder to Novartis' best knowledge and belief (i)
does not conflict with or violate any requirement of applicable laws
or regulations, (ii) does not conflict with, or constitute a default
under, any contractual or other obligation of Novartis and (iii)
will not infringe the Rights of any third party.
5.1.3 Novartis has not granted to any third party any sub-licence or other
interest of any kind (including any charge, lien or encumbrance) in
respect of the Products which would affect Cephalon's rights under
the Licence.
5.2 Cephalon hereby represents and warrants to Novartis that at the date of
this Licence:
-5-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
5.2.1 Cephalon has the full legal right to enter into the Licence and
to perform its obligations thereunder.
5.2.2 The execution and delivery of the Licence and the performance of
Cephalon's obligations thereunder to Cephalon's best knowledge and
belief (i) does not conflict with or violate any requirement of
applicable laws or regulations, (ii) does not conflict with, or
constitute a default under, any contractual or other obligation of
Cephalon and (iii) will not infringe the Rights of any third party.
5.2.3 Cephalon shall use all reasonable efforts to market, promote, sell
and distribute the Products in the Territory.
6. Payments
In consideration of the grant of the licence from Novartis to Cephalon in
respect of the Products Cephalon shall pay the sum of [**] in three equal
payments of [**] payable on 1 January 2001, 31 December 2001 and 31
December 2002.
7. Force Majeure
7.1 If a Party (the "Non-Performing Party") is unable to carry out any of its
obligations under this Licence due to Force Majeure this Licence shall
remain in effect but:-
7.1.1 the Non-Performing Party's relevant obligations under this Licence;
and
7.1.2 the relevant obligations of the other Party ("the Innocent Party")
under this Licence, shall be suspended for a period equal to the
circumstance of Force Majeure or 3 months whichever is the shorter
provided that:-
(a) the suspension of performance is of no greater scope than is
required by the Force Majeure;
(b) the Non-Performing Party gives the Innocent Party prompt
notice describing the circumstances of Force Majeure,
including
-6-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
the nature of the occurrence and its expected duration, and
continues to furnish regular reports during the period of
Force Majeure;
(c) the Non-Performing Party uses all reasonable efforts to remedy
its inability to perform and to mitigate the effects of the
circumstances of Force Majeure; and
(d) as soon as practicable after the event which constitutes Force
Majeure the Parties discuss how best to continue their
operations as far as possible in accordance with this Licence
8. Termination
This agreement shall expire at the end of the Term unless terminated
earlier pursuant to the prior agreement of the Parties.
9. Confidential Information
9.1 Each Party shall treat (both during and after the subsistence of this
Licence) as confidential all know-how and confidential information of the
other including, without limitation, all information and data in respect
of the Products supplied or made available by or on behalf of either
Party, and details of trade prices at which the Products are sold between
the Parties or between Affiliates of either of them (the "Confidential
Information") and neither Party shall without the prior written consent of
the other:
9.1.1 exploit any part of the Confidential Information save as is
reasonably necessary to enable it to perform its obligations under
the Licence;
9.1.2 disclose any part of the Confidential Information (other than to
Regulatory Authorities who require the same where the Party
concerned is legally obliged to disclose the same or entitled to do
so under this Licence) or to its employees or customers (or
potential customers) who need to
-7-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
know the Confidential Information for the purpose of performing
their obligations under this Licence provided that:
(a) such person is made aware prior to disclosure of the
proprietary and confidential nature of the Confidential
Information; and
(b) such person owes an express duty of confidence to the
Disclosing Party which the Disclosing Party shall fully
enforce.
10. Notices
10.1 Any notice to be given in connection with this Licence shall be in writing
and shall be deemed duly served if delivered personally or sent by first
class or recorded delivery post or by facsimile to the Company Secretary
at the address of the Party concerned which is set out in this Licence or
as may be notified to the other Party in accordance with the provisions of
this Clause. Any notices which are sent by e-mail shall not be valid
unless and until confirmed by personal delivery, first class or recorded
delivery post or by facsimile.
Any such notice shall be deemed to be served:
10.1.1 if delivered personally, on the day on which it is delivered;
10.1.2 if sent by post, 5 Business Days after the time of posting;
10.1.3 if sent by facsimile, on acknowledgement by the recipient's
facsimile receiving equipment on a Business Day if the
acknowledgement occurs before 1700 hours local time of the
recipient and in any other case on the following Business Day.
11. Relationship of Parties
11.1 This Licence shall not permit or authorise either Party to:
11.1.1 incur any expenses on behalf of the other Party;
-8-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
11.1.2 enter into any commitment or make any representation or warranty on
behalf of the other Party;
11.1.3 pledge the credit of, or otherwise bind or oblige the other Party;
or
11.1.4 commit the other Party in any way whatsoever
without in each case obtaining the other Party's prior written consent.
12. Waiver
In no event shall any delay failure or omission on the part of any Party
in enforcing exercising or pursuing any right, power, privilege, claim or
remedy, which is conferred by this Licence, or arises under this Licence,
or arises from any breach by the other Party to this Licence of any of its
obligations under this Licence, be deemed to be or be construed as:
12.1.1 a waiver thereof, or of any other such right, power, privilege,
claim or remedy, in respect of the particular circumstances in
question; or
12.1.2 operate so as to bar the enforcement or exercise thereof, or of any
other such right, power, privilege, claim or remedy, in any other
instance at any time or times afterwards.
13. Severability
Any provision of this Licence which is held invalid or unenforceable in
any jurisdiction shall be ineffective to the extent of such invalidity or
unenforceability without invalidating or rendering unenforceable the
remaining provisions hereof, and any such invalidity or unenforceability
in any jurisdiction shall not invalidate or render unenforceable such
provisions in any other jurisdiction
-9-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
14. Governing Law
14.1 This Licence is governed by and shall be construed in accordance with the
laws of England and the Parties hereby submit to the non-exclusive
jurisdiction of the English Courts.
15. Transmission of Rights
Neither Party shall assign the benefit and/or the burden of this Licence
to any third Party without the prior written consent of the other.
16. Counterparts
This Licence may be executed in any number of counterparts and by the
Parties on separate counterparts, each of which when so executed shall be
an original of this Licence, and all of which shall together constitute
one and the same instrument. Complete sets of counterparts shall be lodged
with each Party.
17. Third Party Rights
Nothing in this Agreement is intended to confer on any person any right to
enforce any term of this Licence which that person would not have had but
for the Contracts (Rights of Third Parties) ▇▇▇ ▇▇▇▇.
18. Variations
Except as provided herein, this Licence may not be amended, varied or
modified except in writing signed by a duly authorised officer or
representative of each of the Parties.
-10-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
IN WITNESS WHEREOF the parties hereto have executed this Licence on the day and
year first before written.
SIGNED by )
for and on behalf of ) J. ▇▇▇▇▇ ▇▇▇▇▇
CEPHALON INC )
in the presence of: )
▇▇▇▇ ▇▇▇ ▇▇▇▇
SIGNED by )
for and on behalf of )▇▇▇▇▇▇ ▇▇▇▇▇▇
NOVARTIS AG ) ▇▇▇▇ ▇▇▇▇▇▇▇
in the presence of: )▇▇▇▇▇▇▇▇ Lyssser
▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇
-11-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
SCHEDULE 1
Products
Brand Name/Active Ingredient
ANAFRANIL - clomipramine hydrochloride
LIORESAL - baclofen
RITALIN - methylphenidate
TEGRETOL - carbamazepine
-12-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
SCHEDULE 2
The Trade Marks
Product Territory Class Registered Valid until
number
ANAFRANIL UK 5 884607 2010
LIORESAL UK 5 853707 2008
RITALIN UK 5 669833 2007
TEGRETOL UK 5 831335 2007
-13-
**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.