CONSENT, ACKNOWLEDGMENT AND AGREEMENT
Execution
Version
Exhibit
30.31
THIS AGREEMENT (the “Agreement”) is
entered into as of this 16th day of October, 2008, and is effective as of the
Effective Date (as hereinafter defined), by and among Wyeth, acting through its
Wyeth Pharmaceuticals Division, a corporation organized and existing under the
laws of the State of Delaware and having a principal place of business at ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, Wyeth-Whitehall Pharmaceuticals,
Inc., a corporation having a principal place of business at Road ▇▇. ▇,
▇▇▇▇▇▇▇▇▇ ▇▇▇.▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, and Wyeth-Ayerst Lederle, Inc., a
corporation having a principal place of business at 65th Infantry Road,
Kilometer 9.7, Carolina, Puerto Rico 00987-4904 (collectively “Wyeth”), Progenics
Pharmaceuticals, Inc., a corporation organized and existing under the laws of
the State of Delaware and having a principal place of business at ▇▇▇ ▇▇▇ ▇▇▇
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (“Progenics”), and Ono
Pharmaceutical Co., Ltd., a corporation existing under the laws of Japan and
having a place of business at ▇-▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇-▇▇▇▇▇,
▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇▇, ▇▇▇▇▇ (“Ono”).
BACKGROUND
A. Progenics,
ProNev and Wyeth entered into a License and Co-Development Agreement dated as of
December 23, 2005 (the “Progenics-Wyeth
Agreement”) pursuant to which Progenics granted to Wyeth an exclusive
worldwide license to develop and commercialize [*];
B. On even
date herewith, the parties to the Progenics-Wyeth Agreement intend to enter into
a Partial Termination and License Agreement (the “Partial
Termination”), confirming the termination of the rights granted to Wyeth
with respect to Japan under the Progenics-Wyeth Agreement and granting certain
rights with respect to Japan to Progenics;
C. On even
date herewith, Ono and Progenics intend to enter into a License Agreement (the
“Progenics-Ono
Agreement”), among other things, granting Ono an exclusive license to
develop and commercialize a certain formulation of [*] in Japan;
and
D. Ono has
requested that Wyeth make certain acknowledgments, consents, waivers,
representations and agreements as a prerequisite to entering into the
Progenics-Ono Agreement.
AGREEMENT
In
consideration of the foregoing, and for other good and valuable consideration,
the sufficiency and receipt of which are acknowledged by the parties, the
parties agree as follows:
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1.
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Definitions
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All
capitalized terms used, but not otherwise defined herein, shall have the
meanings ascribed to such terms below or in the Progenics-Wyeth
Agreement.
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CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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Effective
Date. “Effective Date” means the first date on which all of
the following shall have occurred: (1) this Agreement shall have been
duly executed and delivered by all of the parties hereto; (2) the Progenics-Ono
Agreement shall have been duly executed and delivered by the parties thereto and
shall be in full force and effect; and (3) the Partial Termination shall have
been duly executed and delivered by the parties thereto and shall be in full
force and effect.
Subject
Agreements. “Subject Agreements” means the Progenics-Wyeth
Agreement and the Partial Termination.
Wyeth
Technology. “Wyeth Technology” means the Wyeth Collaboration
Patent Rights, the Wyeth Collaboration Know-How and Wyeth’s interest in the
Joint Technology as and to the extent licensed by Wyeth to Progenics under the
Partial Termination.
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2.
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Wyeth Acknowledgments,
Consents, Waivers, Representations, Warranties, and Agreements
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2.1. Consent to Progenics-Ono
Agreement. Wyeth consents to Progenics granting a sublicense
to Ono of the non-exclusive license granted by Wyeth to Progenics under Section
3.6 of the Partial Termination.
2.2. Scope of
License. Wyeth acknowledges that, pursuant to the Partial
Termination, Wyeth granted to Progenics a non-exclusive license in the Field
under the Wyeth Technology (i) to make, have made, use, Develop, sell, offer to
sell, have sold, import and otherwise exploit and Commercialize the Compound and
the Products in Japan, and (ii) to make and have made the Compound and unlabeled
Products outside Japan solely for import into, and Development and
Commercialization in, Japan (and to export the Compound for such
purpose).
2.3. Non-Assertion of
Rights. Wyeth acknowledges that, pursuant to Section 10.4.1(f)
of the Progenics-Wyeth Agreement, Wyeth has agreed not to assert any Wyeth
Independent Patent Rights against Progenics, its Affiliates or its sublicensees
relating to the Development, Commercialization or other exploitation of any
Product in Japan.
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3.
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Miscellaneous
Provisions
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3.1. Prior
Agreements. In the event of a conflict between this Agreement
and any provision of a Subject Agreement, then this Agreement will
control. To the extent any provision of this Agreement conflicts with
a provision of any Subject Agreement, then such prior agreement shall be and
hereby is amended to render it consistent with this Agreement. Except
as set forth in this Agreement, the Subject Agreements remain in full force and
effect.
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CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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3.2. Further Assurances. At the
request and expense of any other party hereto, each party hereto will cooperate
in any reasonable effort to carry out the intentions of this Agreement,
including, without limitation, providing such further assurances, and executing
such further consents, agreements, and releases, as are reasonably required by
the requesting party to allow it to fully enjoy the benefits of this
Agreement.
3.3. Successors and Assigns. This
Agreement shall be binding upon and inure to the benefit of the parties hereto,
their successors and permitted assigns.
3.4. Amendments. This Agreement may
be amended or modified at any time or from time to time only by an express
written agreement, signed by all parties to this Agreement, and which expressly
refers to this Agreement.
3.5. Waivers. The failure of any
party to require performance by another party of any provision hereof, or to
enforce any remedies it may have against such other party, shall in no way
affect the right thereafter to enforce this Agreement and require full
performance by any other party. The waiver by a party of any breach of any
provision of this Agreement shall not constitute a waiver of any succeeding
breach of that provision or of any other provision.
3.6. Severability. If any provision
of this Agreement shall be adjudicated to be invalid or unenforceable in any
action or proceeding for any reason, whether in its entirety or in any portion,
then such part shall be deemed amended, if possible, or deleted, as the case may
be, from this Agreement in order to render the remainder of this Agreement and
any provision hereof both valid and enforceable.
3.7. Entire Agreement. This
Agreement, together with the Subject Agreements and the Progenics-Ono Agreement,
constitutes the entire agreement between the parties with respect to the subject
matter hereof.
3.8. Counterparts. This Agreement
may be executed in any number of counterparts which taken together shall
constitute one and the same instrument.
3.9. Governing Law. All matters
affecting the interpretation, validity and performance of this Agreement shall
be governed by the laws in effect in the State of New York, without giving
effect to its conflicts of laws rules.
3.10. Independent Contractors. In
the performance of this Agreement no party is authorized or empowered to act as
agent for any other party for any purpose and shall not on behalf of any other
party enter into any contract, warranty, or other representation as to any
matter. No party shall be bound by the acts, conduct, obligations,
representations or warranties of any other party.
[Signature
page follows.]
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CONFIDENTIAL TREATMENT REQUESTED
CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE COMMISSION
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IN
WITNESS WHEREOF, duly authorized representatives of the Parties have duly
executed this Agreement to be effective as of the Effective Date of this
Agreement.
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Wyeth,
acting through its Wyeth Pharmaceuticals Division
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Progenics
Pharmaceuticals, Inc.
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By______________________________________
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By________________________________
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Name:
Title:
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Name:
Title:
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Wyeth-Whitehall
Pharmaceuticals, Inc.
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Progenics
Pharmaceuticals Nevada, Inc.
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By______________________________________
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By________________________________
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Name:
Title:
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Name:
Title:
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Wyeth-Ayerst
Lederle, Inc.
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Ono
Pharmaceutical Co., Ltd.
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By: _____________________________
Name:
Title:
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By: _____________________________
Name:
Title:
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