EXHIBIT 10.7
CREATIVE
IRREVOCABLE LICENSE AGREEMENT
This Agreement, dated November 20, 1998 by and between Creative
BioMolecules, Inc., a Delaware corporation with its principal office at ▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("CBM") and Stryker Corporation, a
Michigan corporation with its corporate office at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇.▇. ▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("Stryker").
WHEREAS, the patents and patent applications listed on Schedule 1 attached
hereto have been assigned to Stryker by CBM; and
WHEREAS, it is the intention of Stryker, by this Irrevocable License
Agreement, to grant to CBM an exclusive license under the Assigned Patent
Rights, subject, however, to the exclusive rights of Stryker in the Stryker
Field (as such terms are defined herein);
NOW, THEREFORE, in consideration of the foregoing, and of the assignment of
the Assigned Patent Rights by CBM to Stryker, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties, intending to be legally bound, hereby agree as follows:
1. Definitions. As used herein, the following words shall have the
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following meanings:
a. "Assigned Patent Rights" shall mean (i) the patents and patent
applications listed on Schedule 1 attached hereto, (ii) any patent
applications and patents deemed to be Assigned Patents pursuant to Section
4.2 of the Master Agreement, and (iii) all worldwide counterparts and
registrations, continuations, divisions, reissues, extensions or
supplementary protection certificates, continuations-in-part or additions
(but only to the extent such continuations-in-part or additions claim
inventions disclosed as required by 35 U.S.C. (S)112 (CIPs) or the
applicable laws (additions) in the parent application therefor listed in
Schedule 1) with respect thereto, and all patents issuing therefrom.
b. "Biological Materials" shall mean any biological materials, assays,
substances or reagents, including without limitation transformed or
transfected cells (including any cell expressing an OP Product or any
analog, mutation or heterodimer thereof), cell lines, DNA sequences,
vectors, host cells, proteins, antibodies and any fragments or subcellular
components thereof.
c. "Bone Diseases" shall mean Osteoporosis, Osteomalacia and Paget's
Disease.
d. "OP" shall mean proteins (or the active sites thereof) or
polypeptides or combinations of proteins and polypeptides which produce an
osteogenic effect.
e. "OP Products" shall mean OP and polyclonal or monoclonal antibodies
of OP and specific inhibitors or inhibitory activities of the osteogenic
effect of OP, which inhibitors or inhibitory activities are found and
identified as such in the course of the Research Project (as defined in the
Second Amended and Restated Research, Development and Supply Agreement,
dated May 17, 1991, between CBM and Stryker, as amended).
f. "OP Devices" shall mean the combination of OP Products with
suitably biocompatible and biodegradable carriers.
g. "Bone Disease Field" shall mean the prevention or treatment of the
Bone Diseases other than (i) by the local application of OP Products and OP
Devices in an insoluble formulation directly on bone or joint tissue for
local, as opposed to general or systemic, effect and (ii) the treatment of
fractures regardless of whether they result from a Bone Disease.
h. "Stryker Manufacturing Know-How" means all inventions, know-how,
Biological Materials, designs, trade secrets, copyrights, processes,
formulas, techniques, discoveries, ideas and the like that, as of the
Closing Date (as defined in the Master Agreement), are owned by Stryker or
as to which Stryker has acquired rights which are
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licensable hereunder, that are necessary or useful in the manufacture of OP
Products or OP Devices.
i. "Stryker Field" shall mean the field of (i) treatment, repair or
replacement of bone and joint tissue, including, without limitation,
meniscus and articular cartilage and ligaments and tendons, but excluding
the Bone Disease Field, and (ii) treatment, repair or replacement of the
tooth, dentin, alveolar bone, cementum, enamel, gingiva (to the extent, but
only to the extent, the gingiva functions as part of the apparatus holding
the tooth to the jaw) and/or periodontal ligament, but excluding the
treatment of Oral Ulcerations (as defined below) or any other disease or
disorder of the tissues of the mouth not involving the tooth, dentin, bone
(including alveolar bone), cementum, enamel, gingiva (to the extent, but
only to the extent, the gingiva functions as part of the apparatus holding
the tooth to the jaw), ligament (including the periodontal ligament),
tendon and/or cartilage.
As used herein, "Oral Ulcerations" means the formation of lesions on
the surface of skin lining the oral cavity caused by loss of tissue but
does not include Periodontal Disease (as defined below) or any other
disease or disorder involving the tooth, dentin, bone (including alveolar
bone), cementum, enamel, gingiva (to the extent, but only to the extent,
the gingiva functions as part of the apparatus holding the tooth to the
jaw), ligament (including the periodontal ligament), tendon and/or
cartilage.
As used herein, "Periodontal Disease" means degeneration of the
apparatus holding the tooth to the jaw involving damage to any or all of
the gingiva (to the extent, but only to the extent, the gingiva functions
as part of the apparatus holding the tooth to the jaw), alveolar bone,
cementum, enamel and periodontal ligament.
j. "Creative Field" means all uses and applications other than the
Stryker Field. The Creative Field includes, without limitation, the Bone
Disease Field.
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k. "Master Agreement" means the Master Restructuring Agreement dated
October 15, 1998 between Stryker and CBM.
2. Grant of Exclusive License. Stryker hereby grants to CBM an irrevocable,
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exclusive, worldwide license, with the unrestricted right to grant sublicenses,
to all of the Assigned Patent Rights for all uses and applications of all
inventions claimed therein, except for the manufacture, use, importation and
sale of OP Products and OP Devices for use in the Stryker Field, which grant
shall be exclusive even as to Stryker, with respect to the Creative Field, it
being understood that Stryker retains the exclusive right to manufacture, use,
import and sell OP Products and OP Devices for use in the Stryker Field. Such
license shall not be terminable by Stryker or any successor, assign or any party
claiming through Stryker under any circumstances or for any reason (including,
without limitation, any breach or default under any other agreement between
Stryker and CBM).
3. Grant of Non-Exclusive License. Stryker hereby grants to CBM an
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irrevocable, non-exclusive, worldwide license, with the unrestricted right to
grant sublicenses under all Stryker Manufacturing Know-How solely for use (a) in
the manufacture of OP, OP Products or products or devices formulated with OP for
use in the Creative Field, and (b) in the manufacture of proteins or
polypeptides (or combinations of proteins or polypeptides) other than OP.
4. Retained Rights. Notwithstanding Section 2, Stryker hereby retains for
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itself the right to use OP Products and OP Devices as research and development
tools for the development of other products and devices for use in the Stryker
Field. Nothing in the license granted to Creative hereunder shall preclude
Stryker from engaging in the development, production and sale of products and
devices in the Stryker Field.
5. Recording of License. Stryker shall record this license in the United
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States Patent and Trademark Office and such other foreign patent offices as CBM
shall determine to be appropriate.
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6. Miscellaneous.
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a. This Agreement may only be amended by a written instrument signed
by both parties, which makes specific reference to this Agreement.
b. CBM may assign this Agreement without the consent of Stryker. This
Agreement shall be binding upon and shall inure to the benefit of CBM and
Stryker and their respective successors and assigns.
c. This Agreement is governed by the laws of the State of Delaware.
d. This Agreement shall supersede the Irrevocable License Agreement
dated May 17, 1991 between Stryker and CBM.
IN WITNESS WHEREOF, the parties have executed this Agreement under seal as
of the date first above written.
CREATIVE BIOMOLECULES, INC. STRYKER CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ REK
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Title: President and CEO Title: Assistant Secretary
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