EXHIBIT 10.65
CONFIDENTIAL TREATMENT
LICENSE AGREEMENT
dated December 27, 2001 between
CUBIST PHARMACEUTICALS, INC.
and
UNIVERSITY OF UTAH RESEARCH FOUNDATION
Revised July 2001
Exclusive License Agreement
TABLE OF CONTENTS
ARTICLE NO. PAGE
1. DEFINITIONS.......................................................4
2. LICENSE GRANT.....................................................6
3. EXCLUSIVE PERIOD AND TERM OF AGREEMENT............................7
4. SUBLICENSES.......................................................7
5. LICENSE ISSUE FEE.................................................8
6. ROYALTIES AND MILESTONE PAYMENTS..................................8
7. DUE DILIGENCE....................................................11
8. CONFIDENTIALITY..................................................12
9. REPORTS..........................................................14
10. PATENT PROSECUTION AND MAINTENANCE...............................15
11. PATENT MARKING...................................................16
12. BOOKS AND RECORDS................................................16
13. TERMINATION BY UNIVERSITY........................................16
14. TERMINATION BY CUBIST............................................17
15. DISPOSITION OF LICENSED PRODUCTS ON HAND.........................18
16. WARRANTY BY UNIVERSITY...........................................18
17. INFRINGEMENT.....................................................19
18. WAIVER...........................................................20
19. ASSIGNABILITY....................................................20
20. INDEMNIFICATION BY CUBIST........................................20
21. INDEMNIFICATION BY UNIVERSITY....................................21
22. LATE PAYMENTS....................................................21
23. NOTICES..........................................................22
24. FOREIGN LAWS.....................................................22
25. RELATIONSHIP OF PARTIES..........................................23
26. NON-USE OF NAMES.................................................23
27. DISPUTE RESOLUTION...............................................23
28. GENERAL PROVISIONS...............................................24
LICENSE AGREEMENT
THIS
LICENSE AGREEMENT ("AGREEMENT") is entered into this 27th day of
December, 2001 (the "Effective Date") by and between the UNIVERSITY OF
UTAH
RESEARCH FOUNDATION, a
Utah non-profit corporation, having its principal place
of business at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇,
hereinafter referred to as "UNIVERSITY," and CUBIST PHARMACEUTICALS, INC.,
having its principal place of business at ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,
hereinafter referred to as "CUBIST."
W I T N E S S E T H
WHEREAS, certain inventions, generally characterized as COMPLEXES TO
IMPROVE ORAL ABSORPTION OF POORLY ABSORBABLE ORAL ANTIBIOTICS and assigned
University of
Utah identification number U-3241, hereinafter collectively
referred to as "the INVENTION," have been made in the course of research at the
University of
Utah conducted by ▇▇. ▇▇▇▇▇ ▇▇▇ ▇▇▇ and at the University of
Utah
under a Testing Agreement dated July 1, 1996 with MC Technologies, Inc.
conducted by Dr. Seung-Ho ▇▇▇▇;
WHEREAS, patent applications have been filed related to such INVENTION;
WHEREAS, UNIVERSITY desires that the intellectual property captured in such
patent applications be developed and utilized to the fullest extent so that its
benefits can be enjoyed by the general public;
WHEREAS, CUBIST wishes to obtain from UNIVERSITY a license under certain
rights for the commercial development, production, manufacture, use sand sale of
products developed using such intellectual property, and UNIVERSITY is willing
to grant such a license upon the terms and conditions hereinafter set forth;
NOW THEREFORE, for and in consideration of the covenants, conditions and
undertakings hereinafter set forth, the parties hereby agree as follows:
ARTICLE 1. DEFINITIONS
SECTION 1.1 "AFFILIATE" means any person or entity that controls, is
controlled by, or is under common control with CUBIST, directly or indirectly.
For purposes of this definition, "control" and its various inflected forms means
the possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of such person or entity, whether
through ownership of voting securities, by contract or otherwise.
SECTION 1.2 "QUARTER" shall mean a period of three (3) consecutive
calendar months ending on March 31, June 30, September 30 or December 31.
SECTION 1.3 "FDA" shall mean., the United States Food and Drug
Administration.
SECTION 1.4 "FIELD" shall mean all fields of use. Notwithstanding the
foregoing, [ * ], pursuant to Section 4.2 below.
SECTION 1.5 "LICENSED PRODUCT" means any product, process, method,
apparatus, kit or component part thereof, or any other subject matter the
snaking, using, selling, offering for sale or import of which would constitute,
but for the license granted to CUBIST pursuant to this AGREEMENT, an
infringement of any VALID CLAIM or CLAIMS included within PATENT RIGHTS.
SECTION 1.6 "INDIVIDUAL LICENSED PRODUCT" means any federally approved
LICENSED PRODUCT which requires separate governmental safety and efficacy
approval before introduction to the market. For example, if a LICENSED PRODUCT
must be subjected to a separate clinical trial so that a separate use for the
same formula is demonstrated for safety and efficacy, then it is a distinct
INDIVIDUAL PRODUCT.
SECTION 1.7 "FIRST LICENSED PRODUCT" means the first federally approved
INDIVIDUAL LICENSED PRODUCT to be subjected to a governmental safety and
efficacy approval process prior to market introduction, and which is sold in any
country of the TERRITORY.
SECTION 1.8 "NET SALES" means the aggregate gross sales of LICENSED
PRODUCT sold
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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by CUBIST or its SUBLICENSEE, net of the sum of the following items
(where applicable): (1) cash, trade or quantity discounts actually
allowed; (2) sales, use, tariff, customs duties or other excise taxes
directly imposed upon particular sales; (3) outbound transportation
charges prepaid or allowed; and (4) allowances or credits to third
parties for rejections or returns. A LICENSED PRODUCT shall be considered
sold when billed out or invoiced, or if not invoiced, upon transfer of
LICENSED PRODUCT to a THIRD PARTY end user of such LICENSED PRODUCT.
There shall be no deductions from NET SALES for costs of commissions or
collections. NET SALES shall not include (a) promotional or sampled
LICENSED PRODUCTS or (b) ▇▇▇▇▇▇▇▇ for LICENSED PRODUCTS sold by CUBIST to
any AFFILIATE unless such AFFILIATE is an end-user of any LICENSED
PRODUCT.
SECTION 1.9 "PATENT RIGHTS" means the patents and patent applications set
forth in Exhibit A, and any divisions, continuations, continuations-in-part,
reissues, renewals, extensions, supplementary protection certificates, utility,
models and the like of any such patents and patent applications, and any foreign
equivalents thereof. In addition, "PATENT RIGHTS" shall also mean any patents
and any applications for patents (including provisional, utility, priority
applications, international, and design applications) filed anywhere in the
world and disclosing the INVENTION, further including any and all patents
issuing from such applications, together with all foreign equivalents,
additions, divisionals, continuations, continuations-in-part (to the extent that
the INVENTION is disclosed therein), substitutions, extensions, registrations,
or renewals therefor, and all reissues, reexaminations, and revalidations
thereof, including supplementary protection certificates.
SECTION 1.10 "SUBLICENSEE" shall mean any THIRD PARTY (but not including
an AFFILIATE of a Party) expressly licensed by a Party to make, use, import,
offer for sale or LICENSED PRODUCTS.
SECTION 1.11 "THIRD PARTY" shall mean any person other than the
UNIVERSITY, CUBIST
5
and their respective AFFILIATE.
SECTION 1.12 "PHASE III CLINICAL TRIAL" shall mean a pivotal phase 3
study, as defined in 21 C.F.R. 312.21, of LICENSED PRODUCT aiming to generate
sufficient data and information to support Regulatory Approval.
SECTION 1.13 "TERRITORY" shall mean [ * ].
SECTION 1.14 "VALID CLAIM" means a claim of (i) a pending patent
application (other than a patent application that has been pending for more than
ten (10) years after the priority filing date thereof), or (ii) an issued and
unexpired patent, in either case which is included within the PATENT RIGHTS,
which has not been revoked or held unenforceable or invalid by a decision of a
court or other governmental agency of competent jurisdiction, unappealable or
unappealed within the time allowed for appeal, and which has not been
disclaimed, denied or admitted to be invalid or unenforceable in writing through
reissue or disclaimer or otherwise.
SECTION 1.15 "MAJOR MARKET" shall mean a market in [ * ].
ARTICLE 2. LICENSE GRANT
SECTION 2.1 Subject to the terms and conditions set forth herein,
UNIVERSITY hereby grants to CUBIST an exclusive license, with the right to
sublicense, under UNIVERSITY PATENT RIGHTS to [ * ] LICENSED PRODUCTS in the
FIELD [ * ].
SECTION 2.2 CUBIST hereby grants to the UNIVERSITY a non-exclusive,
non-sublicenseable license under UNIVERSITY PATENT RIGHTS to [ * ].
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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ARTICLE 3. EXCLUSIVE PERIOD AND TERM OF AGREEMENT
SECTION 3.1 This AGREEMENT shall be in full force and effect from the
EFFECTIVE DATE until the end of the term of the last-to-expire of UNIVERSITY'S
PATENT RIGHTS licensed under this AGREEMENT, unless otherwise terminated by
operation of law or by acts of the parties pursuant to the terms of this
AGREEMENT.
SECTION 3.2 The license granted under Section 2.1 shall be exclusive and
UNIVERSITY hereby agrees that it shall not grant any other license to make, have
made, use, lease, sell and import LICENSED PRODUCTS in the TERRITORY for the
FIELD during the term of this AGREEMENT.
ARTICLE 4. SUBLICENSE
SECTION 4.1 LICENSOR hereby grants to LICENSEE the right to enter into
sublicensing agreements with third parties to the extent of LICENSEE'S rights
under the grant provided in Section 2.1 and provided that LICENSEE has current
exclusive rights thereto in the TERRITORY being sublicensed pursuant to Section
2.1. Any sublicense granted by LICENSEE to a SUBLICENSEE shall incorporate
[ * ]. Upon any termination of this AGREEMENT, any sublicense granted by CUBIST
to a SUBLICENSEE shall be [ * ].
SECTION 4.2 CUBIST shall be obligated for a period of [ * ] from the
EFFECTIVE DATE to grant an exclusive sublicense under the PATENT RIGHTS to [ * ]
CUBIST agrees to negotiate the IIVAA sublicense in good faith and on reasonable
terms. CUBIST shall [ * ].
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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Notwithstanding the foregoing, in the event that (a) IHMA does not [ * ], or (b)
CUBIST and IHMA are [ * ], then CUBIST shall provide the UNIVERSITY with
evidence of either (a) or (b) as the case may be, and CUBIST will then no longer
be [ * ], and CUBIST shall be free to offer such rights to [ * ] for the rights
to [ * ] and [ * ].
SECTION 4.3 Upon UNIVERSITY'S request, CUBIST shall promptly provide
UNIVERSITY with a copy of any Sublicense granted and any relevant reports due to
CUBIST as a consequence of that Sublicense by CUBIST hereunder and any
amendments thereto or terminations thereof.
ARTICLE 5. LICENSE ISSUE FEE
CUBIST shall pay to UNIVERSITY a [ * ] of this AGREEMENT, which [ * ].
Such [ * ] shall be deemed [ * ]. Additionally, CUBIST shall pay to the
UNIVERSITY a [ * ].
ARTICLE 6. ROYALTIES AND MILESTONE PAYMENTS
SECTION 6.1 Subject to the terms and conditions of this AGREEMENT, and as
consideration for the licenses granted under this AGREEMENT, CUBIST shall pay to
the UNIVERSITY an earned royalty of [ * ] of NET SALES of the [ * ] launched by
CUBIST [ * ]. CUBIST shall pay to
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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the UNIVERSITY an earned royalty of [ * ] of NET SALES of [ * ] sold by
CUBIST [ * ].
SECTION 6.2 Commencing the QUARTER in which the first NET SALES occur
(the "first QUARTER"), and continuing as specified in the table below, CUBIST
shall pay to UNIVERSITY [ * ] royalties according to the following schedule:
QUARTERS [ * ] ROYALTY DUE
-------- -----------------
[ * ] [ * ]
[ * ] [ * ]
[ * ] [ * ]
[ * ] [ * ]
CUBIST shall continue to pay such [ * ] as defined in Section 3.1.
UNIVERSITY shall fully credit each payment of [ * ] royalties against any earned
royalties payable by CUBIST with respect to the QUARTER in which the minimum
royalty is made.
SECTION 6.3 CUBIST shall pay milestones payments to the UNIVERSITY as
follows:
(a) CUBIST shall pay UNIVERSITY a milestone payment of [ * ] upon
[ * ]. Such [ * ] is prepared for review;
(b) CUBIST shall pay UNIVERSITY a milestone payment of [ * ] upon
[ * ]. Such [ * ];
(c) CUBIST shall pay UNIVERSITY a milestone payment of [ * ] upon the
[ * ];
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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(d) CUBIST shall pay UNIVERSITY a milestone payment of [ * ] upon the
[ * ]; CUBIST shall pay to the UNIVERSITY a one time milestone
payment of [ * ] upon the receipt by [ * ]. Only one such
milestone payment shall be due [ * ]; and,
(e) CUBIST shall pay to UNIVERSITY a patent issue fee of [ * ] for
each [ * ]. The first of such fees will be due upon [ * ];
SECTION 6.4 CUBIST shall pay all royalties accruing to UNIVERSITY in U.S.
Dollars within [ * ] days following the QUARTER being reported. All milestone
payments shall be paid within [ * ] days of the occurrence of the milestone
event.
SECTION 6.5 If any patent or any claim thereof included within
UNIVERSITY'S PATENT RIGHTS shall be found invalid by a court of competent
jurisdiction and last resort, from which decision no appeal may be taken,
CUBIST'S obligation to pay UNIVERSITY
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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royalties based on such patent or claim or any claim patentably indistinct
therefrom shall cease as of the date of such decision. CUBIST shall not,
however, be relieved from paying UNIVERSITY any royalties or fees that accrued
prior to the date of such decision or that are based on any of UNIVERSITY'S
PATENT RIGHTS not the subject of such decision.
ARTICLE 7. DUE DILIGENCE
SECTION 7.1 Immediately following the EFFECTIVE DATE, CUBIST shall
diligently proceed with the [ * ] in order to make them [ * ] on commercially
reasonable terms. CUBIST shall continue active, diligent development and
marketing efforts for one or more INDIVIDUAL LICENSED PRODUCT(S) throughout the
term of this AGREEMENT. Diligence for purposes of this Section 7.1 shall mean
efforts commensurate in scope with those that would be applied by a similarly
situated pharmaceutical company to the development and pursuit of regulatory
approval in the United States of drug candidates of commercial potential similar
to the applicable LICENSED PRODUCT.
SECTION 7.2 In addition to the obligations set forth in Section 7.1,
CUBIST shall perform the following obligations as part of its due diligence
activities hereunder:
(a) CUBIST shall deliver to UNIVERSITY, on or before [ * ] a [ * ]
showing the amount of [ * ] of the LICENSED PRODUCTS.
(b) CUBIST or its SUBLICENSEE shall [ * ] within [ * ] of the
EFFECTIVE DATE;
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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(c) CUBIST or is SUBLICENSEE shall have [ * ] within [ * ] of the
EFFECTIVE DATE; and,
(d) CUBIST or its SUBLICENSEE shall [ * ] within [ * ] of the
EFFECTIVE DATE.
ARTICLE 8. CONFIDENTIALITY
SECTION 8.1 CUBIST and UNIVERSITY acknowledge that either party may
provide certain information to the other about LICENSED PRODUCTS or the
INVENTION that is considered to be confidential. CUBIST and UNIVERSITY shall
take reasonable precautions to protect such confidential information. Such
precautions shall involve at least the same degree of care and precaution that
CUBIST and UNIVERSITY customarily uses to protect its own confidential
information. All confidential information disclosed by or on behalf of one Party
to the other Party hereunder shall be maintained in confidence by the receiving
Party and shall not be disclosed to a non-Party or used for any purpose
whatsoever except as set forth herein without the prior written consent of the
other Party, except to the extent that such confidential information:
(a) is known by recipient at the time of its receipt, and not through
a prior disclosure by or on behalf of the disclosing party, as
documented by contemporaneous business records;
(b) is properly in the public domain through no fault of the
recipient;
(c) is subsequently disclosed to a receiving party by a THIRD PARTY
who may lawfully do so and is not directly or indirectly under an
obligation of confidentiality to the disclosing Party, as
documented by written business records in existence prior to the
receipt of such information from the disclosing Party;
(d) is developed by the recipient independently of, and without
reference to or use of, Confidential Information received from
the disclosing Party;
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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(e) is required to be disclosed to governmental or other regulatory
agencies in order to obtain patents, to obtain approval to
conduct clinical trials or to market LICENSED PRODUCT, or to
comply with applicable NASDAQ or Securities and Exchange
Commission regulations, provided however, that such disclosure
may be only to the extent reasonably necessary to obtain patents
or approval, or to comply with regulations as appropriate and
that confidential treatment will be sought to the extent
reasonable practicable;
(f) is necessary to be disclosed to permitted SUBLICENSEES, agents,
consultants, AFFILIATES and/or other THIRD PARTIES for the
purpose of conducting activities in accordance with this
AGREEMENT on the condition that such THIRD PARTIES agree to be
bound by confidentiality obligations substantially equivalent to
the terms herein, and, provided that such confidentiality
obligations shall endure for no less than [ * ];
(g) is required to be disclosed by law or court order, provided that
notice is promptly delivered to the other party in order to
provide an opportunity to challenge or limit the disclosure
obligations, and provided further that such disclosure may be
only to the extent reasonably necessary to comply with the
applicable law or court order.
SECTION 8.2 CUBIST acknowledges that UNIVERSITY is subject to the
Utah
Governmental Records Access and Management Act ("GRAMA"), Section ▇▇-▇-▇▇▇ ▇▇.
▇▇▇, ▇▇▇▇ Code ▇▇▇. (1953), as amended. UNIVERSITY shall keep confidential any
information provided to UNIVERSITY by CUBIST that CUBIST considers confidential,
to the extent allowable under GRAMA and as provided in Section 53B-16-301 et
seq.,
Utah Code ▇▇▇. In order to be eligible for such protection under GRAMA,
confidential information of CUBIST disclosed to UNIVERSITY must be in written or
other tangible form, marked as proprietary, and accompanied by a written claim
by CUBIST stating the reasons that such information must be kept confidential.
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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ARTICLE 9. REPORTS
SECTION 9.1 Commencing on [ * ] and on [ * ] thereafter, until the first
occurrence of NET SALES, CUBIST shall [ * ] covering CUBIST'S progress in (a)
[ * ]; (b) [ * ]; and (c) [ * ]. Each [ * ] shall be in substantially similar
form and contain at least the information required by Exhibit "B" attached
hereto and incorporated herein.
SECTION 9.2 Within [ * ] days after the QUARTER in which NET SALES first
occur, and within [ * ] days after each QUARTER thereafter, CUBIST shall provide
UNIVERSITY with a [ * ], and detailing the amount of [ * ] and [ * ] pursuant to
Articles 6.1 and 6.2 hereof. Each [ * ] shall include at least the following:
a. [ * ];
b. [ * ];
c. [ * ];
d. [ * ];
e. [ * ];
f. [ * ];
g. [ * ];
h. [ * ];
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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SECTION 9.3 Each [ * ] shall be in substantially similar form as Exhibit
"C" attached hereto. Each such [ * ]. With each such [ * ] submitted, CUBIST
shall [ * ] under this AGREEMENT. [ * ].
SECTION 9.4 CUBIST shall provide written notification to UNIVERSITY of
the date of first occurrence of NET SALES in each country within [ * ] days of
its occurrence.
ARTICLE 10. PATENT PROSECUTION AND MAINTENANCE
SECTION 10.1 CUBIST, at its sole discretion, may diligently prosecute and
maintain PATENT RIGHTS with legal counsel of its choice, after consultation with
UNIVERSITY. CUBIST shall provide UNIVERSITY with copies of all relevant
documentation and keep UNIVERSITY informed and apprised of the continuing
prosecution. UNIVERSITY shall keep any such documentation and information
confidential. The UNIVERSITY shall use its best efforts to cooperate in such
prosecution and maintenance, including, but not limited to, signing appropriate
documents, providing strategic input, and reviewing documents.
SECTION 10.2 CUBIST shall pay all costs and legal fees incurred in the
preparation, prosecution and maintenance of PATENT RIGHTS, including without
limitation, any taxes on such PATENT RIGHTS.
SECTION 10.3 If CUBIST decides to abandon or to allow to lapse any of the
PATENT RIGHTS, CUBIST shall inform the UNIVERSITY at least [ * ] days prior to
the effective date of such decision and the UNIVERSITY shall be given the
opportunity to assume responsibility and control with respect to such PATENT
RIGHT, at its cost. Upon transfer of CUBIST's responsibility and control with
respect to prosecuting, maintaining and defending any PATENT RIGHTS under the
preceding sentence, CUBIST shall promptly deliver to the UNIVERSITY all
necessary files related to the PATENT RIGHTS with respect to which
responsibility has been transferred and shall take all actions and execute
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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all documents reasonably necessary for the UNIVERSITY to assume prosecution.
ARTICLE 11. PATENT MARKING
CUBIST shall ▇▇▇▇ all LICENSED PRODUCTS made, used or sold under the
terms of this AGREEMENT, or their containers, in accordance with all applicable
patent marking laws.
ARTICLE 12. BOOKS AND RECORDS
CUBIST shall keep complete, true and accurate books of account containing
all particulars that may be necessary for the purpose of showing the amounts
payable to UNIVERSITY hereunder. Said books of account shall be kept at CUBIST'S
principle place of business or the principal place of business of the
appropriate division of CUBIST to which this AGREEMENT relates. Said books and
the supporting data shall be open at all reasonable times for [ * ] following
the end of the calendar year to which they pertain, to inspection by UNIVERSITY
or its agents, upon notice to CUBIST, for the purpose of verifying CUBIST'S
royalty statement or compliance in other respects with this AGREEMENT. Should
such inspection lead to the discovery of a greater than [ * ] discrepancy in
reporting to UNIVERSITY'S detriment, CUBIST agrees to pay the full cost of such
inspection.
ARTICLE 13. TERMINATION BY UNIVERSITY
SECTION 13.1 If CUBIST should (a) fail to deliver to [ * ]; (b) fail to
make any payment at the time that the same should be due; (c) violate or fail to
perform any covenant, condition, or undertaking of this AGREEMENT to be
performed by it hereunder; or (d) file a bankruptcy action, or have a bankruptcy
action against it, or become insolvent, enter into a composition with creditors
or have a receiver appointed for it; then UNIVERSITY
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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may give written notice of such default to CUBIST. If CUBIST should fail to cure
such default within [ * ] days of such notice, the rights, privileges, and
license granted hereunder shall automatically terminate.
SECTION 13.2 If CUBIST shall cease to carry on its business with respect
to the rights granted in this AGREEMENT, this AGREEMENT shall terminate upon
[ * ] day written notice by UNIVERSITY.
SECTION 13.3 No termination of this AGREEMENT by UNIVERSITY shall relieve
CUBIST of its obligation to pay any royalty or license fees due or owing at the
time of such termination and shall not impair any accrued right of UNIVERSITY.
CUBIST shall pay all attorneys' fees and costs incurred by UNIVERSITY in
enforcing any obligation of CUBIST or accrued right of UNIVERSITY. Articles
[ * ] shall survive any termination of this AGREEMENT.
ARTICLE 14. TERMINATION BY CUBIST
SECTION 14.1 CUBIST may terminate this AGREEMENT at any time and from
time to time without cause, by giving written notice thereof to UNIVERSITY. Such
termination shall be effective [ * ] days after such notice and all CUBIST'S
rights associated therewith shall cease as of that date.
SECTION 14.2 Any termination pursuant to Section 14.1 shall not relieve
CUBIST of any obligation or liability accrued hereunder prior to such
termination, or rescind or give rise to any right to rescind any payments made
or other consideration given to UNIVERSITY hereunder prior to the time such
termination becomes effective. Such termination shall not affect in any manner
any rights of UNIVERSITY arising under this AGREEMENT prior to the date of such
termination.
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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ARTICLE 15. DISPOSITION OF LICENSED PRODUCTS ON HAND
Upon expiration or termination of this AGREEMENT by either party, CUBIST
shall provide UNIVERSITY with a [ * ]. CUBIST may dispose of any such [ * ]
within the [ * ]-day period following such expiration or termination, [ * ].
ARTICLE 16. WARRANTY BY UNIVERSITY
SECTION 16.1 UNIVERSITY warrants that it has the lawful right to grant
the license set forth in this AGREEMENT.
SECTION 16.2 EXCEPT AS EXPRESSLY PROVIDED IN SECTION 16.1, THE PARTIES
ACKNOWLEDGE AND AGREE THAT UNIVERSITY HAS MADE NO REPRESENTATIONS OR WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL UNIVERSITY BE HELD
RESPONSIBLE FOR ANY SPECIAL, INDIRECT OR CONSEQUENTIAL DAMAGES ARISING OUT OF
THE USE OF PATENT RIGHTS, EVEN IF UNIVERSITY IS ADVISED IN ADVANCE OF THE
POSSIBILITY OF SUCH DAMAGES.
SECTION 16.3 Nothing in this AGREEMENT shall be construed as:
(a) a warranty or representation by UNIVERSITY as to the validity or
scope of any PATENT RIGHTS.
(b) a warranty or representation by UNIVERSITY that anything made,
used, sold or otherwise disposed of pursuant to any license
granted under this AGREEMENT is or will be free from infringement
of patents of THIRD PARTIES.
(c) an obligation by UNIVERSITY to bring or prosecute actions or
suits
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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against THIRD PARTIES for patent infringement, except as
expressly provided in Article 17 hereof.
(d) conferring by implication, estoppel or otherwise any license or
rights under any patents of UNIVERSITY other than PATENT RIGHTS.
SECTION 16.4 Any breach of the representations or warranties made in this
Article 16 shall entitle CUBIST to a refund of all payments made to UNIVERSITY
as consideration for the rights granted under this AGREEMENT, and said refund
shall be the sole remedy available to CUBIST for breach or violation of any
provisions contained in this Article 16.
ARTICLE 17. INFRINGEMENT
SECTION 17.1 If either party learns of a claim of infringement of or by
any of UNIVERSITY'S PATENT RIGHTS licensed under this AGREEMENT, that party
shall give written notice of such claim to the other party. CUBIST shall then
use reasonable efforts to terminate such infringement. In the event CUBIST fails
to ▇▇▇▇▇ the infringing activity within [ * ] days after such written notice or
to bring legal action against the THIRD PARTY, either party may bring suit for
patent infringement, naming the other party as nominal party plaintiff. No
settlement, consent judgment or other voluntary final disposition of the suit
may be entered into without the consent of UNIVERSITY, which consent shall not
be unreasonably withheld.
SECTION 17.2 Any such legal action shall be at the expense of the party
by whom suit is filed, hereinafter referred to as the "Litigating Party". Any
damages or costs recovered by the Litigating Party in connection with a legal
action filed by it hereunder, and remaining after the Litigating Party is
reimbursed for its costs and expenses reasonably incurred in the lawsuit, and
after any royalties or other payments due to UNIVERSITY under Articles 4, 5 and
6 are paid, shall be equally divided between CUBIST and UNIVERSITY.
SECTION 17.3 CUBIST and UNIVERSITY shall cooperate with each other in
litigation
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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proceedings instituted hereunder, provided that such cooperation shall be at the
expense of the Litigating Party, and such litigation shall be controlled by the
Litigating Party.
ARTICLE 18. WAIVER
No waiver by either party hereto of any breach or default of any of the
covenants or agreements herein set forth shall be deemed a waiver as to any
subsequent and/or similar breach or default.
ARTICLE 19. ASSIGNABILITY
This AGREEMENT is binding upon and shall inure to the benefit of the
parties, their successors and assigns. Subject to CUBIST'S rights to sublicense,
as set forth in Article 4 hereof, CUBIST may assign this AGREEMENT only with the
written consent of UNIVERSITY, which consent shall not be unreasonably withheld.
ARTICLE 20. INDEMNIFICATION BY CUBIST
CUBIST shall indemnify, hold harmless and defend UNIVERSITY, the University of
Utah, and their respective officers, employees and agents, against any and all
claims, suits, losses, damages, costs, liabilities, fees and expenses (including
reasonable fees of attorneys) resulting from or arising out of exercise of: a)
any license granted under this AGREEMENT; or b) any act, error, or omission of
CUBIST, its agents, employees or SUBLICENSEES, except where such claims, suits,
losses, damages, costs, fees, or expenses result solely from the negligent acts
or omissions, or willful misconduct of the UNIVERSITY, its officers, employees
or agents. CUBIST shall give UNIVERSITY [ * ] notice of any claim or suit
instituted of which CUBIST has knowledge that in any way, directly or
indirectly, affects or might affect UNIVERSITY, and UNIVERSITY shall have the
right at its own expense to participate in the defense of the same.
* Confidential Treatment Requested. Omitted portions filed with the Commission.
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ARTICLE 21. INDEMNIFICATION BY UNIVERSITY
The UNIVERSITY is a governmental entity and is subject to the
Utah
Governmental Immunity Act, Section 63-30-1 et seq., Utah Code ▇▇▇. (1997 and
Supp. 2000)(the "Act"). Section 63-30-34 of the Act expressly limits judgments
against the UNIVERSITY, its officers and employees to $250,000 per person and
$500,000 per occurrence for bodily injury and death and to $100,000 per
occurrence for property damage. Subject to the provisions of the Act, UNIVERSITY
shall indemnify, defend and hold harmless CUBIST, its officers, agents, and
employees against any and all claims, suits, losses, damages, costs,
liabilities, fees, and expenses (including reasonable fees of attorneys)
resulting solely from the negligent acts or omissions of UNIVERSITY, its
officers, agents or employees in connection with this AGREEMENT. Nothing in this
AGREEMENT shall be construed as a waiver of any rights or defenses applicable to
UNIVERSITY under the Act, including without limitation, the provisions of
Section 63-30-34 regarding limitation of judgments. UNIVERSITY shall give CUBIST
timely notice of any claim or suit instituted of which UNIVERSITY has knowledge
that in any way, directly or indirectly, affects or might affect CUBIST, and
CUBIST shall have the right at its own expense to participate in the defense of
the same.
ARTICLE 22. LATE PAYMENTS
In the event royalty payments or other fees are not received by
UNIVERSITY when due hereunder, CUBIST shall pay to UNIVERSITY interest charges
at the rate of [ * ] over the prime lending rate as published in the Wall Street
Journal at the time of invoice on the total royalties or fees due for the
reporting period.
* Confidential Treatment Requested. Omitted portions filed with the Commission.
21
ARTICLE 23. NOTICES
Any payment, notice or other communication required or permitted to be
given to either party hereto shall be in writing and shall be deemed to have
been properly given and effective: (a) on the date of delivery if delivered in
person during recipient's normal business hours; or (b) on the date of delivery
if delivered by courier, express mail service or first-class mail, registered or
certified. Such notice shall be sent or delivered to the respective addresses
given below, or to such other address as either party shall designate by written
notice given to the other party as follows:
In the case of CUBIST:
▇▇▇▇ ▇▇▇▇▇▇, Ph.D., MBA
Cubist Pharmaceuticals, Inc.
▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
In the case of UNIVERSITY:
UNIVERSITY OF UTAH RESEARCH FOUNDATION
Technology Transfer ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
With a copy to:
OFFICE OF GENERAL COUNSEL
University of Utah
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
ARTICLE 24. FOREIGN LAWS
SECTION 24.1 When required by local/national law, CUBIST shall register
this AGREEMENT, pay all costs and legal fees connected therewith, and otherwise
insure that the local/national laws affecting this AGREEMENT are fully
satisfied.
SECTION 24.2 CUBIST shall comply with all applicable U.S. laws dealing
with the export of technology or technical information.
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ARTICLE 25. RELATIONSHIP OF PARTIES
In assuming and performing the obligations of this AGREEMENT, CUBIST and
UNIVERSITY are each acting as independent parties and neither shall be
considered or represent itself as a joint venturer, partner, agent or employee
of the other.
ARTICLE 26. NON-USE OF NAMES
CUBIST shall not use the names or trademarks of the University of Utah,
or its employees, nor any adaptation thereof, nor the names of any of their
employees, in any advertising, news releases, promotional or sales literature
without prior written consent obtained from UNIVERSITY, or said employee, in
each case, except that CUBIST may state that it is licensed by UNIVERSITY under
one or more of the patents and/or applications comprising the PATENT RIGHTS.
In addition, UNIVERSITY shall not use the names or trademarks of CUBIST,
or its employees, nor any adaptation thereof, nor the names of any of their
employees, in any advertising, news releases, promotional or sales literature
without prior written consent obtained from CUBIST, or said employee, in each
case, except that UNIVERSITY may state that it has licensed to CUBIST under one
or more of the patents and/or applications comprising the PATENT RIGHTS.
ARTICLE 27. DISPUTE RESOLUTION
Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary injunction, or
other equitable relief to preserve the status quo or prevent irreparable harm,
any and all claims, disputes or controversies arising under, out of, or in
connection with the AGREEMENT, including any dispute relating to patent validity
or infringement, which the parties shall be unable to resolve within [ * ] days
shall be mediated in good faith. The party raising such dispute shall promptly
advise the other party of such dispute. By not later than [ * ] days after the
date
* Confidential Treatment Requested. Omitted portions filed with the Commission.
23
of such notice of dispute, the party against whom the dispute shall be raised
shall select a mediator in the Salt Lake City area for mediation and such
representative shall schedule a date with such mediator for a hearing. The
parties shall enter into good faith mediation and shall share the costs equally.
If the representative of the parties have not been able to resolve the dispute
within [ * ] business days after such mediation hearing, then the parties may
resort to any legal or equitable remedies available to them.
ARTICLE 28. GENERAL PROVISIONS
SECTION 28.1 The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this AGREEMENT.
SECTION 28.2 This AGREEMENT shall not be binding upon the parties until
it has been signed herein below by or on behalf of each party, in which event it
shall be effective as of the date first above written.
SECTION 28.3 No amendment or modification of this AGREEMENT shall be
valid or binding upon the parties unless made in writing and signed by both
parties.
SECTION 28.4 This AGREEMENT embodies the entire understanding of the
parties and supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof.
SECTION 28.5 The provisions of this AGREEMENT are severable, and in the
event that any provision of this AGREEMENT shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceablility shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
SECTION 28.6 This AGREEMENT may be signed in counterparts, each of which
when taken together shall constitute one fully executed document. Each
individual executing this AGREEMENT on behalf of a legal entity does hereby
represent and warrant to each other person so signing that he or she has been
duly authorized to execute this AGREEMENT on behalf of such entity.
* Confidential Treatment Requested. Omitted portions filed with the Commission.
24
SECTION 28.7 In the event of any litigation, arbitration, judicial
reference or other legal proceeding involving the Parties to this AGREEMENT to
enforce any provision of this AGREEMENT, to enforce any remedy available upon
default under this AGREEMENT, or seeking a declaration of the rights of either
Party under this AGREEMENT, the prevailing Party shall be entitled to recover
from the other such attorney's fees and costs as may be reasonably incurred,
including the costs of reasonable investigation, preparation and professional or
expert consultation incurred by reason of such litigation, arbitration, judicial
reference, or other legal proceeding.
IN WITNESS WHEREOF, UNIVERSITY and CUBIST have executed this AGREEMENT by
their respective officers hereunto duly authorized, on the day and year
hereinafter written.
"CUBIST" "UNIVERSITY"
CUBIST PHARMACEUTICALS, INC. UNIVERSITY OF UTAL RESEARCH
FOUNDATION
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
---------------------------- -------------------------------
Name: ▇▇▇▇ ▇▇▇▇▇▇ Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
---------------------------- -------------------------------
Title: Senior Vice President Title: President
---------------------------- -------------------------------
Date: 12/31/01 Date: 12-28-01
---------------------------- -------------------------------
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