Exhibit 10.3
"LICENSE AGREEMENT"
Confidential treatment requested for portions of this document
LICENSE AGREEMENT (this "Agreement") dated as of the day of ,
1999, (the "Effective Date") by and among Xxxx-Xxxxx Dasseux, with an address at
0000 Xxxxx Xxxx Xxxxx, Xxxxxxxx, Xxxxxxxx 00000, Xxxxxx Xxxxx with an address at
Xxxxxxxxxxxxxx 00, X-00000 Xxxxxxxxx, Xxxxxxx, Xxxxx Xxxxxxx with an address at
Xxxxxxxxxxxxxxxxxx 0, X-00000 Xxxxxxxxx, Xxxxxxx, Xxxxxxxx Xxxxxx with an
address at Xxxxxxxxx 00, X-00000 Xxxxxxx-Xxxxxxxxxxxx, Xxxxxxx, Xxxxxxxx Xxxx
with an address at Xxxxxxxxxxxxxxxxxxx 0, X-00000 Xxxx, Xxxxxxx, and Xxxx
Xxxxxxxx with an address at Avenue Xxxxxxxxx, F-33600 Pessac, France
(individually an "Inventor" and collectively the "Inventors"), and Esperion
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Therapeutics, Inc., a Delaware corporation with a principal place of business at
0000 X. Xxxxx Xxxxxx, 000 XXX Xxxxx, Xxx Xxxxx, Xxxxxxxx 00000 (the "Company").
W I T N E S S E T H :
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WHEREAS, the Inventors own or have exclusive rights to certain patent
rights, proprietary information and know-how with respect to compositions and
uses of peptide mimetics of Apoprotein A-I; and
WHEREAS, the Company has an interest in acquiring exclusive rights to
the Licensed Patents (as defined below) and non-exclusive rights to the Know-How
(as defined below) from the Inventors and continuing the development thereof and
products based thereon; and
WHEREAS, the parties desire to enter into an agreement pursuant to
which (i) the Inventors shall license to the Company the Licensed Patents and
Know-How, and (ii) the Company will pursue the continued development of the
Licensed Patents and Know-How and ultimately the commercialization of products
based thereon.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the parties hereto agree as follows:
SECTION 1. DEF1NITIONS
For the purpose of this Agreement, the following words and phrases
shall have the meanings set forth below:
1.1 "Affiliate" means, with respect to Company, any other Person that
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directly, or indirectly through one or more intermediaries, controls or is
controlled by or is under common control with the Company. For purposes hereof,
the term "control" (including, with its correlative meanings, the terms
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"controlled by" and "under common control with", with respect to the Company,
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means the possession, directly or indirectly, of the power to direct or cause
the direction of the management and policies of the
**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.
Company (whether through the ownership of voting securities, by contract or
otherwise); provided that in each event in which any Person owns directly or
indirectly more than 50% of the securities having ordinary voting power for the
election of directors or other governing body of a corporation or more than 50%
of the ownership interest of any other Person, such Person shall be deemed to
control such corporation or other Person.
1.2 "Confidential Information" means any and all information (in any and
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every form and media) not generally known in the relevant trade or industry,
which was obtained from any party or any Affiliate thereof in connection with
this Agreement or the respective rights and obligations of the parties
hereunder, including, without limitation, (a) information on trade secrets of
such party or any Affiliate thereof, (b) information relating to existing or
contemplated products, services, technology, designs, processes, formulae,
research and development (in any and all stages) of such party or any Affiliate
thereof, (c) information relating to the Licensed Patents, the Know-How or the
Licensed Products, and (d) information relating to business plans, methods of
doing business, sales or marketing methods, customer lists, customer usages
and/or requirements and supplier information of such party or any Affiliate
thereof, except that "Confidential Information" shall not include any
information which (i) at the time of disclosure, is generally known to the
public, (ii) after disclosure, becomes' part of the public knowledge (by
publication or otherwise) other than by breach of this Agreement by the
receiving party, (iii) the receiving party can verify by contemporaneous written
documentation was in its possession at the time of disclosure and which was not
obtained, directly or indirectly, from the other parry or any Affiliate thereof,
(iv) the receiving party can verify by contemporaneous written documentation
results from research and development by the receiving party or any Affiliate
thereof independent of disclosures by the other party or any Affiliate thereof
or (v) the receiving party can prove was obtained from any Person who had the
legal right to disclose such information, provided that such information was not
obtained to the knowledge of the receiving party or any Affiliate thereof by
such Person, directly or indirectly, from the other party or any Affiliate
thereof on a confidential basis.
1.3 "Control" (i) means with respect to any Licensed Patents, excluding
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Improvement(s), the possession of the ability to grant a license or sublicense
with respect thereto as provided for herein without violating the terms of any
agreement with, or the rights of, any third Person and, (ii) means with respect
to any Know-How and Improvement(s), that such Know-How or Improvement is known
to, in the custody of and owned solely by one or more of the Inventors, and such
Inventors are free to grant a license or sublicense hereunder without violating
the terms of any agreement with, or rights of, any third Person.
1.4 "FDA" means the United States Food and Drug Administration or any
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successor agency thereof, or equivalent thereof in any country other than the
United States.
1.5 "Field" means Apoprotein A-I mimetics as described in the Licensed
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Patents for the diagnosis and/or treatment of atherosclerosis and related
metabolic diseases.
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1.6 "Governmental Approval" means any and all approvals, licenses,
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registrations or authorizations, including pricing approval, of any Federal,
State or local agency, department, bureau or other governmental entity, foreign
or domestic, necessary for the manufacture, use, storage, import, transport and
sale of the Licensed Products in any regulatory jurisdiction.
1.7 "Improvement" means any modification of a Licensed Product which is
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conceived by one or more of the Inventors during the term of this Agreement,
provided that, such modification (i) if unlicensed, would infringe one or more
claims of any Patent included within the Licensed Patents, and (ii) is
Controlled by, such Inventor(s).
1.8 "Licensed Product" means any product the manufacture, use or sale of
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which would infringe at least one claim of any of the Licensed Patents.
1.9 "Know-How" means any and all non-patented proprietary technology and
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information necessary for the practice of the Licensed Patents, that is
Controlled by one or more of the Inventors.
1.10 "Licensed Patents" means all Patents(i) which have issued as of the
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date of this Agreement, a list of which is attached hereto as Appendix A, (ii)
which consist of applications pending as of the date of this Agreement, a list
of which is attached hereto as Appendix B, and all patents issuing thereon, and
(iii) which consist of any improvement, and in each case described in clauses
(i) through (iii) hereof including any reissue, extension, substitution,
continuation-in-part thereof and any provisional applications and any foreign
counterparts and all patents that issue therefrom Controlled by one or more of
the Inventors.
1.11 "NDA" means a complete New Drug Application and all supplements
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thereto filed with the FDA, including all documents, data and other information
concerning a Licensed Product which are necessary for, or included in, FDA
approval to market such Licensed Product as more fully defined in 21 C.F.R.
(Sec.)314.5 et seq. For purposes of this Agreement, "NDA" shall also include any
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analogous foreign applications f6r governmental and/or regulatory approval.
1.12 "Net Sales" means gross receipts received by the Company, whether or
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not invoiced, and/or its Affiliates for the sale or other disposition of the
Licensed Products, less the sum of the following (collectively, "Permitted
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Deductions"):
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(1) discounts and rebates actually allowed in amounts customary in the
trade;
(2) ales taxes, customs and tariff duties and/or use taxes directly
imposed and with reference to particular sales;
(3) transportation and delivery charges (including insurance premiums
related to transportation and delivery) prepaid or allowed; and
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(4) amounts actually repaid, allowed or credited on returns.
In the event of any sale of the Licensed Products by the Company to any
Affiliate for resale to its customers, "Net Sales" shall be based on the greater
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of the amount actually received by the Company from its Affiliate or the amount
actually received by such Affiliate from its customers for the sale of the
Licensed Products, less (in either such case) the Permitted Deductions.
Where Licensed Products are not sold, but are otherwise disposed of,
the Net Sales of such products for the purpose of computing royalties shall be
the selling price at which such products or products of a similar kind and
quality, sold in similar quantities, are currently being offered for sale by
Company, its sublicensees and/or Affiliates. Where such products are not
currently being offered for sale by Company, the Net Sales of products otherwise
disposed of, for purpose of computing royalties, shall be the average selling
price at which products of similar kind and quality, sold in similar quantities,
are then currently being offered for sale by other manufacturers. Where such
products are not currently sold or offered for sale by Company or others, then
the Net Sales, for the purpose of computing royalties, shall be the Company's
cost of manufacture, determined by Company's accounting procedures, plus fifty
percent (50%).
If the Company, its sublicensees, or any of its Affiliates sells any
Licensed Products in combination with other items which are not Licensed
Products ("Other Items") at a single invoice price "Net Sales" for purposes
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computing royalty payments on the combination shall be determined as follows:
(1) if all Licensed Products and Other Items contained in the
combination are available separately, "Net Sales" for purposes of
computing royalty payments shall be determined by multiplying Net
Sales of the combination of the fraction A/A + B, where A is the
selling price of all Licensed Products in the combination and B is the
selling price of all Other Items in the combination;
(2) if the combination includes Other Items which are not sold
separately (but all Licensed Products contained in the combination are
available separately), "Net Sales" for purposes of computing royalty
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payments shall be determined by multiplying Net Sales of the
combination by A/C, where A is as defined above and C is the selling
price of the combination; and
(3) if neither the Licensed Products nor the Other Items
contained in the combination are sold separately, "Net Sales" for
purposes of computing royalty payments shall be determined by
multiplying Net Sales of the combination by the fraction D/D + E,
where D is the cost of manufacture of all Licensed Products in the
combination and E is the cost of manufacture of all Other Items in the
combination, all as reasonably determined by the Company (which
determination shall be conclusive).
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1.13 "Patent" means (i) unexpired letters patent (including inventor's
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certificates) which have not been held invalid or unenforceable by a court of
competent jurisdiction from which no appeal can be taken or has been taken
within the required time period, including, without limitation, any
substitution, extension, registration, confirmation, reissued, reexamination,
renewal or any like filing thereof, and (ii) pending applications for letters
patent.
1.14 "Person" means any individual, estate, trust, partnership, joint
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venture, association, firm, corporation or company, or governmental body, agency
or official, or any other entity.
1.15 "U.S. Dollars" and the sign "$" each means lawful currency of the
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United States of America.
SECTION 2. GRANT
2.1 Grant of License. Upon the terms and subject to the conditions herein
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stated, the Inventors hereby grant the Company (a) an exclusive, worldwide
license, with the right to grant sublicenses, under the Licensed Patents to
make, have made, use, import, offer for sale, sell and otherwise dispose of the
Licensed Products in the Field, and (b) subject to any pre-existing rights of
third Persons, a non-exclusive worldwide license, with the right to grant
sublicenses, under the Know-How to make, have made, use, import, offer for sale,
sell and otherwise dispose of the Licensed Products in the Field.
2.2 Delivery of Know-How. Pursuant to the license granted in Section 2.1
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hereof, the Inventors shall promptly deliver to the Company originals or copies
of all of their records, data and documentation relating to the Know-How, not
already known to and/or in the possession of the Company as of the Effective
Date.
SECTION 3. DEVELOPMENT
3.1 Development Effort. The Company shall use commercially reasonable
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efforts to develop and commercialize the Licensed Products.
3.2 Development Review. The Company will make available to the Inventors an
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annual summary of the Company's development efforts hereunder as follows: The
Inventors hereby designate Dr. Xxxx-Xxxxx Dasseux as their representative to
receive such annual summaries, which summaries will disclose, in detail
appropriate to the intent of the review, the activities undertaken pursuant to
Section 3.1 hereof and any significant developments during the preceding year.
The Inventors may change their representative on written notice to the Company,
but only to another of the Inventors who is not involved in any competitive
activities in drug discovery or development, or a consultant to or employed by
any third party so engaged. Such annual summaries will be held by
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the Inventors' representative in confidence. The Inventors may elect at any time
(but not more than once each year) to designate an independent consultant who is
acceptable to both the Company and the Inventors, for the purpose of determining
compliance by the Company with its diligence obligations under Section 3.1
hereof. Such consultant shall enter into a written confidentiality agreement
satisfactory to the Company, and shall disclose to the Inventors only whether
the Company, in the opinion of such consultant, is in compliance with its
diligence obligations under Section 3.1 hereof. The Company will provide such
consultant with commercially reasonable access to information. The consultant
shall conduct his/her review during normal business hours, and in a manner that
does not interfere with the Company's business, and will complete his/her review
within a reasonable time (not to exceed two weeks). The cost of such consultant,
which will be borne solely by the Company, shall not exceed $1500 for each
review plus reasonable out-of-pocket expenses. In the event that the Inventors'
representative or consultant believes that the Company has not made a
commercially reasonable effort pursuant to Section 3.1 hereof, then the parties
shall enter into good faith discussions to resolve the issue(s) raised,
including a cure for the potential breach in diligence, and allowing for a
reasonable period of time within which the breach can be resolved. If the
parties, however, are unable to agree on whether there has, in fact, been a
breach of the Company's diligence obligations under Section 3.1 hereof, then the
dispute will be resolved by binding arbitration, provided that, if the
arbitrator determines that the Company s diligence obligations have not been
satisfied, the Inventors shall have the right to terminate this Agreement and
the Company's rights hereunder.
3.3 Development Charges. All costs incurred by the Company in the
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development of the Licensed Products, including, without limitation, payments
for clinical trials and other studies, tests and all filings and applications
and other actions necessary for achieving Governmental Approval of the Licensed
Products, shall be the sole responsibility of the Company.
SECTION 4. ROYALTIES AND OTHER PAYMENTS
4.1 License Fees. The Company shall pay to the Inventors an initial license
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fee of $50,000 in cash, which initial license fee shall be paid on the Effective
Date.
4.2 Milestone and Royalty Obligations.
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4.2.1. For the rights, privileges and licenses granted hereunder, the
Company shall pay the amounts set forth in this Section to the Inventors in the
manner hereinafter provided during the term of this Agreement as follows:
(1) a milestone payment in the amount of $50,000 in cash shall be made by
the Company to the Inventors within fifteen (15) business days after
the identification of the first lead candidate, which the Company
decides to advance into pre-phase I evaluation, as a potential
Licensed Product;
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(2) a milestone payment in the amount of [**] in cash shall be made by
the Company to the Inventors within fifteen (15) business days after
the enrollment of the first patient in a Phase HI clinical trial for
the first Licensed Product after generation of data in a Phase H trial
of data satisfactory to the Company supporting a clinical indication
for which the Company is seeking approval;
(3) a milestone payment in the amount of [**] in cash shall be made by
the Company to the Inventors within fifteen (15) business days after
submission of the first NDA in the United States or Europe for the
first Licensed Product;
(4) a milestone payment in the amount of [**] in cash shall be made by
the Company to the Inventors within fifteen (15) business days after
submission of the first NDA in the United States or Europe for the
second and third Licensed Products;
(5) a milestone payment in the amount of [**] in cash shall be made by the
Company to the Inventors within fifteen (15) business days after
approval of the first NDA in the United States or Europe for the first
Licensed Product; and
(6) a milestone payment in the amount of [**] in cash shall be made by the
Company to the Inventors within fifteen (15) business days after
approval of the first NDA in the United State s or Europe for the
second and third Licensed Products.
[**] of the milestone payments made pursuant to clauses (iii) through (vi) of
this Section 4.2.1 shall be creditable against future royalties owed by the
Company to the Inventors pursuant to Section 4.2.2 hereof.
**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.
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4.2.2. The Company shall pay to the Inventors royalties in the amount of
[**] of the Net Sales of the Licensed Products by the Company and its
Affiliates, and the Company shall pay the Inventors [**] of the royalties
received by the Company based on the sales of the Licensed Products by its
sublicensees and [**] of all other cash payments received by the Company from
its sublicenses, excluding equity and research payments. In the event that the
Company licenses additional patents from third parties which are required to
practice the Licensed Patents, the Company shall be entitled to reduce Company's
royalty payments to the Inventors hereunder by the amount of such royalty
payments paid by the Company to such third parties; provided that the reduction
for any given year does not reduce the royalties paid to the Inventors for such
year to an amount less than [**] of Net Sales. In the event that no valid
current claims of any Licensed Patent (including any claims of any patent
application included therein) exist in a country with respect to a Licensed
Product, then the royalties otherwise payable by the Company to the Inventors
with respect to such Licensed Product in such country will be reduced by [**].
4.3 Limitation on Royalties. Notwithstanding anything to the contrary
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contained herein, (a) no royalties shall be payable by the Company with respect
to the Net Sales of the Licensed Products to any of its Affiliates thereof
(although such sales may be used as the basis for calculating Net Sales pursuant
to Section 1. 12 hereof and the royalties payable to the Inventors based upon
such Affiliates' Net Sales), and (b) no multiple royalties shall be payable in
the event that any of the Licensed Products or the manufacture, use or sale
thereof is covered by more than one patent included in the Licensed Patents.
4.4 Unlicensed Competition. The Company shall promptly notify the
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Inventors, in writing, of any substantial unlicensed competition by any Person
making, using, selling or importing a product in any geographic area which
product infringes one or more claims of any Licensed Patent. If, one (1) year
after such notice by Company, Company, after diligent efforts, has not abated
such infringement (e.g., by sublicense or legal action), Inventors shall
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negotiate with Company in good faith in an attempt to adjust the royalty
provided in Section 4.2.2 hereof, provided that, Company presents Inventors with
evidence, satisfactory to Inventors, that such unlicensed competition, and not
other market factors, is materially adversely affecting Net Sales.
4.5 Withholding Taxes. The parties acknowledge and agree that there may be
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deducted from any payments or royalties otherwise due and payable hereunder any
taxes or other payments required to be paid by Inventors under applicable law
with respect to such payments or royalties or otherwise relating to the Licensed
Products.
4.6 Payments to Inventors. All payments to be made by the Company to the
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Inventors under this Agreement shall be made by the Company to Xxxx-Xxxxx
Dasseux, and the Company shall have no responsibility whatsoever with respect to
the division of any such payment among Inventors or the receipt by any
particular Inventor of any particular portion of any such payment.
**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.
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SECTION 5. PAYMEENT OF ROYALTIES, ACCOUNTING FOR
ROYALTIES, RECORDS, ETC.
5.1 Payment. Royalties payable hereunder shall be paid within 60 days after
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the end of each calendar quarter, based on the Net Sales of the Licensed
Products by the Company and its sublicensees and Affiliates during the preceding
calendar quarter.
5.2 Accounting Reports. With each quarterly payment, the Company shall
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deliver to Xxxx-Xxxxx Dasseux, on behalf of the Inventors, a full and accurate
accounting that sets forth the following information:
(a) total receipts for each Licensed Product sold or otherwise
disposed of by Company and/or its Affiliates subject to royalty,
by country, and, to the extent used in any royalty calculations
during such quarter, the exchange rate set forth in Section 5.3
of this Agreement;
(b) Royalties and other payments received by Company in connection
with any sublicense of Company's rights under this Agreement, and
compensation due to Inventors on sales or other disposition of
Licensed Products by sublicensees and other cash payments
pursuant to such sublicense; and
(c) total royalties and/or compensation payable to the Inventors.
5.3 Accounting: Foreign Currency. The aggregate amount of the Net Sales of
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the Licensed Products used for computing the royalties payable hereunder shall
be computed in U.S. Dollars, and all payments of such royalties shall be made in
U.S. Dollars. For purposes of determining the amount of royalties due, the
amount of the Net Sales of the Licensed Products in any foreign currency shall
be computed by converting such amounts into U.S. Dollars at the prevailing
commercial rate of exchange for purchasing U.S. Dollars, as quoted in The Wall
Street Journal, on the last business day of the calendar quarter with respect to
which such royalty payment is payable hereunder.
5.4 Records. The Company shall keep, and shall cause each of its Affiliates
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and sublicensees to keep, for five (5) years, complete and accurate records of
the Net Sales of the Licensed Products sold in sufficient detail to allow the
royalties payable by the Company to be accurately determined. The Inventors
shall have the right for a period of five (5) years after receiving any report
or statement with respect to royalties due and payable hereunder by the Company
to appoint an independent accounting firm to inspect and audit the relevant
records of the Company and its Affiliates to verify such report or statement.
The Company and its Affiliates shall make their records available for inspection
and audit by such independent accounting firm during regular business hours at
such place or places where such records are customarily kept, upon reasonable
notice to the Company, to the extent reasonably necessary to verify the accuracy
of the reports and payments required hereunder. The cost of any such inspection
and audit shall be paid by the Inventors unless such inspection and audit
discloses for any calendar quarter examined that there shall have been a
discrepancy of greater than seven and one-half
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percent (7-1/2%) between the royalties payable hereunder by the Company and the
royalties actually paid by the Company with respect to such calendar quarter, in
which case the Company shall be responsible for the payment of the entire cost
of such inspection and audit. In all cases, the Company shall pay to the
Inventors any underpaid royalties promptly and with interest at the prime rate
quoted by Citibank, N.A. on the date such payment was due.
SECTION 6. PATENT PROSECUTION
6.1 Prosecution Obligation. The Company shall apply for, and maintain
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during the term of this Agreement any and all Licensed Patents in the European
Patent Community, Japan, the United States of America and Canada and such other
countries in which the Company desires in its sole discretion to commercialize
the Licensed Products. All reasonable costs and expenses of the prosecution and
maintenance of the Licensed Patents in such countries (including all
governmental filing fees) shall be paid by the Company. The Inventors shall
render reasonable assistance to the Company in filing and prosecuting such
applications and maintaining the Licensed Patents in such countries whenever
requested to do so, at the Company's expense.
SECTION 7. REPRESENTATIONS AND WARRANTIES.
7.1 By the Company. The Company hereby represents and warrants to the
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Inventors that (a) the Company has full legal right, power and authority to
execute, deliver and perform its obligations under this Agreement, (b) the
execution, delivery and performance by the Company of this Agreement do not
contravene or constitute a default under any provision of applicable law or its
articles or by-laws (or equivalent documents) or of any agreement, judgment,
injunction, order, decree or other instrument binding upon the Company, (c) all
licenses, consents, authorizations and approvals, if any, required for the
execution, delivery and performance by the Company of this Agreement have been
obtained and are in full force and effect and all conditions thereof have been
complied with, and no other action by or with respect to, or filing with, any
governmental authority or any other Person is required in connection with this
execution, delivery and performance by the Company of this Agreement, (d) this
Agreement constitutes a valid and binding agreement of the Company, enforceable
against the Company in accordance with its terms, and (e) Company's patent
counsel, Xxxxxx Xxxxx, Esq. has had full access to and has reviewed to her
satisfaction the complete and correct files relating to the prosecution of the
Licensed Patents.
7.2 By The Inventors. The Inventors hereby jointly and severally represent
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and warrant to the Company that (a) the Inventors have full legal right, power
and authority to execute, deliver and perform their obligations under this
Agreement, (b) the execution, delivery and performance by the Inventors of this
Agreement do not contravene or constitute a default under any provision of
applicable law or of any agreement, judgment, injunction, order, decree or other
instrument binding upon the Inventors, (c) all licenses, consents,
authorizations and approvals, if any, required for the
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execution, delivery and performance by the Inventors of this Agreement have been
obtained and are in full force and effect and all conditions thereof have been
complied with, and no other action by or with respect to, or filing with, any
governmental authority or any other Person is required in connection with the
execution, delivery and performance by the Inventors of this Agreement, (d) to
the best knowledge of the Inventors, the Inventors are the exclusive owners of
all legal and beneficial right, title and interest in and to the Licensed
Patents, (e) as of the Effective Date (and without undertaking any independent
investigation), the Inventors are not aware of any patent or other right of any
third Person that would be infringed or violated by the practice of the Licensed
Patents as contemplated by Section 2.1 hereof, (f) the Inventors have caused to
be made available to the Company complete and correct files of their patent
counsel relating to the prosecution of the Licensed Patents, and (g) this
Agreement constitutes a valid and binding agreement of the Inventors,
enforceable against the Inventors, in accordance with its terms.
7.3 Survival of Representations and Warrants. The representations and
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warranties contained herein shall survive the execution, delivery and
performance of this Agreement by the parties, notwithstanding any investigation
at any time on or prior to the date hereof made by or on behalf of any party or
parties.
SECTION 8. THIRD PARTY INFRINGEMENT
8.1 Third Party Infringement.
8.1.1. Notice. In the event that either party becomes aware of any
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substantial infringement of the Licensed Patents, such party shall notify the
other party of the substantial infringement in writing and must provide a
summary of the relevant facts and circumstances known to such party relating to
such infringement. Neither party will notify a third Person of the substantial
agreement of any of the Licensed Patents without first obtaining consent of the
other party, which consent shall not be unreasonably withheld or delayed. The
parties agree to consult with each other, prior to the commencement of any legal
or patent office proceedings, as to the most effective way of pursuing such
matter.
8.1.2. Company Options. During the term of this Agreement, the Company
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shall have the right, but shall not be obligated, to prosecute, at its own
expense, any infringements of the Licensed Patents, to defend the Licensed
Patents and to recover, for its own account, any damages, awards or settlements
resulting therefrom. The Inventors hereby agree that the Company may join one or
more of the Inventors as a party plaintiff in any such suit, without expense to
the Inventors. The Company shall hold harmless and indemnify the Inventors from
and against any order for costs arising without fault of the Inventors that may
be made against the Inventors by reason of being named a party plaintiff in such
proceedings. The Company shall have sole control of any such suit and all
negotiations for its settlement or compromise, provided that, the Company shall
not settle or compromise any such suit or enter into any consent order for the
settlement or compromise thereof that adversely affects the Licensed Patents
without
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the prior written consent of a majority of the Inventors, or Xxxx-Xxxxx Dasseux
(on behalf of the Inventors), which consent shall not be unreasonably withheld
or delayed. The total cost of any infringement action commenced or defended
solely by the Company shall be borne by the Company.
8.1.3. Investors' Options. If, within one (1) year after having been
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notified of any, potential infringement subject to the provisions of Sections
8.1.2, the Company shall have been unsuccessful in causing the alleged infringer
to desist and shall not have brought and shall not be diligently prosecuting an
infringement action, or if the Company notifies the Inventors at any time prior
thereto of its intention not to bring suit against any alleged infringer, then,
in those events only, the Inventors shall have the right, but shall not be
obligated, to prosecute, at their own expense, any infringements of the Licensed
Patents, to defend the Licensed Patents and to recover, for their own account,
any damages, awards or settlements resulting therefrom. The Company hereby
agrees that the Inventors may join the Company as a party plaintiff in any such
suit, without expense to the Company. The Inventors shall hold harmless and
indemnify the Company from and against any order for costs arising without fault
of the Company that may be made against the Company by reason of being named a
party plaintiff in such proceedings. The Inventors shall have sole control of
any such suit and all negotiations for its settlement or compromise, provided
that the Inventors shall not settle or compromise any such suit or enter into
any consent order for the settlement or compromise thereof that adversely
affects the Licensed Patents or any of the licenses or rights of the Company
hereunder, without the prior written consent of the Company which consent shall
not be unreasonably withheld or delayed. The total cost of any infringement
action commenced or defended solely by the Inventors shall be borne by the
Inventors.
8.2 Infringement Charges Against the Company. In the event that any action,
----------------------------------------
suit or proceeding is brought against, or written notice or threat thereof is
provided to, the Company alleging infringement of any patent or unauthorized use
or misappropriation of technology arising out of or in connection with the
Company's practice of Licensed Patents, the Company shall defend at its own
expense such action, suit or proceeding and, in futherance of such rights, the
Inventors hereby agree that the Company may join one or more of the Inventors as
a party in such suit, without expense to the Inventors. The Company shall hold
harmless and indemnify the Inventors from and against any order for costs
arising without fault of the Inventors that may be made against the Inventors in
such proceedings. The Inventors agree to cooperate with the Company, at the
Company's expense, in connection with the Company's response to or defense of
such action, suit or proceeding, or notice or threat thereof
8.3 Cooperation. In the event that a party shall undertake the enforcement
-----------
and/or defense of the Licensed Patents by legal or patent office proceedings
pursuant to this Agreement, the other party shall, at the request and expense of
the party undertaking such enforcement and/or defense, cooperate in all
reasonable respects and, to the extent possible, have its employees testify when
requested and make available relevant records, papers, information, samples and
the like.
-12-
8.4 Company Rights. The Company shall have the sole right in accordance
--------------
with the terms and conditions hereof to sublicense any alleged infringer for
future use of the Licensed Patents to which it has exclusive rights under
Section 2.1 of this Agreement.
SECTION 9. INDEMNIFICATION
9.1 Indemnification. The Company hereby agrees that it shall be responsible
---------------
for, indemnify, hold harmless and defend the Inventors and their Affiliates and
heirs, successors and assigns (collectively, the "Indemnities"), from and
against any and all claims, demands, losses, liabilities, damages, costs and
expenses (including the cost of settlement, reasonable legal and accounting fees
and any other expenses for investigating or defending any actions or threatened
actions) (collectively, "Losses") suffered or incurred by any Indemnitee arising
out of, relating to, resulting from or in connection with (a) a claim brought by
a third Person of personal injury (including death) or property damage caused by
a Licensed Product manufactured by or for the Company its Affiliates or
sublicensees, (b) the exercise of any of the rights and/or licenses granted
herein to Company, its Affiliates, or any sublicensee, and (c) any action, suit
or other proceeding, or compromise, settlement or judgment, relating to any of
the foregoing matters described in subparagraph (a) hereof with respect to which
the Indemnitees are entitled to indemnification hereunder. The foregoing shall
not apply to the extent that such Losses are due to the willful misconduct or
gross negligence of any of the Indemnitees.
9.2 Notice of Claims. In the event that a claim is made pursuant to Section
----------------
9.1 above against any Indemnitee, the Indemnitee agrees to promptly notify the
Company of such claim or action and, in any such case the Company shall assume
control of the defense of such claim or action; provided, however, that (a) all
Indemnitees shall be entitled to participate therein (through a single counsel
of their own choosing) at the Indemnitees' sole cost and expense, (b) the
Indemnitees shall fully cooperate with the Company in all reasonable respects,
and (c) the Company shall not settle or compromise any such claim or action
without the prior written consent of the Indemnitees, unless such settlement or
compromise includes a general release of the Indemnities from any and all
liability with respect thereto and does not include an admission of liability on
the part of any Indemnitee, and does not impose any restriction on the conduct
by such Indemnitee of any of its activities.
SECTION 10. CONFIDENTIALITY
10.1 Confidentiality. The parties each recognize that the Confidential
---------------
Information of the other party and any and all Affiliates and sublicensees
thereof constitute valuable confidential and proprietary information.
Accordingly, the parties each agree that they and any Affiliates shall, during
the term of this Agreement and for a period of five (5) years after the
termination hereof for any reason, hold in confidence all Confidential
Information of the other party (including this Agreement and the terms hereof)
and not use the same for any purpose other dm as set forth in this Agreement or
disclose the same to any other Person except to the extent that it is necessary
for such
-13-
party to enforce its rights under this Agreement or if required by law or any
governmental authority (including, without limitation, any stock exchange upon
which such party's shares or other equity securities may be traded); provided,
however' if any party shall be required by law to disclose any such Confidential
Information to any other Person, such party shall give prompt written notice
thereof to the other party and shall minimize such disclosure to the amount
required. Notwithstanding the foregoing, either party may disclose Confidential
Information of the other (a) to such party's attorneys, accountants and other
professional advisors under an obligation of confidentiality to such party, (b)
to such party's banks or other financial institutions or venture capital sources
for the purpose of raising capital or borrowing money or maintaining compliance
with agreements, arrangements and understandings relating thereto, and (c) to
any Person who proposes to purchase or otherwise succeed (by merger, operation
of law or otherwise) to all of such party's right, title and interest in, to and
under this Agreement, if such Person identified in subparagraphs (b) and (c) of
this Section IO. I agrees to maintain the confidentiality of such Confidential
Information pursuant to a written agreement in form and substance reasonably
satisfactory to the parties. The standard of care required to be observed
hereunder shall be not less than the degree of care which each party uses to
protect its own information of a confidential nature. The Company agrees that
any and all Affiliates and sublicensees thereof shall enter into and maintain
appropriate confidentiality agreements prior to receiving Confidential
Information belonging to the Inventors and/or relating to the subject matter of
this Agreement.
SECTION 11. INTELLECTUAL PROPERTY; IMPROVEMENTS
11.1 Rights to Propriety Technology. Neither party shall through this
------------------------------
Agreement obtain any rights to the other party's proprietary technology except
for such rights as are expressly granted or allocated under this Agreement.
11.2 Improvements and Filing, Prosecution and Maintenance of Patents.
---------------------------------------------------------------
11.2.1. Any improvement to the Licensed Patents, the Know-How or any
Licensed Product discovered or developed by any party during the term of this
Agreement shall be owned solely by such party, provided that, any Improvement
shall be subject to the license granted to Company under Section 2. 1(c) hereof.
11.2.2. Subject to Company'sobligationsetforthinSection6.lhereofifany
improvements owned by either party are deemed patentable, such party shall be
entitled to file and prosecute patent applications related thereto and maintain
patents issued thereon, in its own name and, at its own cost. The other party
shall render reasonable assistance to such party in filing such applications
whenever requested to do so, at such party's sole cost and expense. The Company
and the Inventors agree to sign and execute such forms and documents as may be
reasonably requested by the other party as being necessary or desirable to vest
or confirm in such other party title to all such improvements owned by such
other party.
-14-
SECTION 12. LIMITATIONS ON LIABILITY
12.1 No Warranties. Except as expressly set forth in Section 7 hereof,
-------------
neither party makes any representations or warranties as to any matter
whatsoever. EACH PARTY HEREBY DISCLAIMS ANY AND ALL OTHER REPRESENTATIONS AND
WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE LICENSED PATENTS, THE
KNOW-HOW AND THE LICENSED PRODUCTS, INCLUDING, WITHOUT LMTATION, ANY WARRANTIES
OF MERCHANTABI]LITY OR FITNESS FOR ANY PARTICULAR PURPOSE.
12.2 Limitations of Liability. UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE
------------------------
LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON FOR ANY SPECIAL, CONSEQUENTIAL OR
INDIRECT DAMAGES OF ANY KIND WHATSOEVER.
12.3 Force Majeure. No party shall be liable for failure or delay in
-------------
performing any of its obligations hereunder if such failure or delay is
occasioned by compliance with any governmental regulation, request or order, or
by circumstances beyond the reasonable control of the party so failing or
delaying, including, without limitation, Acts of God, war, insurrection, fire,
flood, accident, labor strikes, work stoppage or slowdown (whether or not such
labor event is within the reasonable control of the parties), or inability to
obtain raw materials, supplies, power or equipment necessary to enable such
party to perform its obligations hereunder. Each party shall (a) promptly notify
the other party in writing of any such event of force majeure, the expected
duration thereof and its anticipated effect on the ability of such party to
perform its obligations hereunder, and (b) make reasonable efforts to remedy any
such event of force majeure.
SECTION 13. NON-USE OF NAMES
Neither party shall use the name of the other party nor the name of any of
Affiliates or employees of such other party, nor any adaptation thereof, in any
advertising, promotional or sales literature without prior written consent
obtained from such other party in each case (which consent shall not be
unreasonably withheld or delayed).
SECTION 14. PATENT MARKING
The Company shall xxxx all Licensed Products made, used, offered for sale,
sold or imported under this Agreement, or their containers, in accordance with
the applicable patent marking laws.
-15-
SECTION 15. TERM AND TERMINATION
15.1 Term. This Agreement shall be effective from the date of its execution
----
by the parties and, unless sooner terminated in accordance with the provisions
of this Section 15, shall continue until the later to occur of (i) 10 years from
the date of this Agreement, or (ii) the last to expire of any Patent included
within the Licensed Patents.
15.2 Events of Default. Each party shall have the right to terminate this
-----------------
Agreement upon the occurrence of any of the following events (each, an "Event of
--------
Default") with respect to the other party (the "Defaulting Party"): (a) to the
------- ----------------
extent permitted by law, the Inventors may terminate this Agreement if a decree
or order shall have been entered by a court of competent jurisdiction adjudging
the Company bankrupt or insolvent, or approving as properly filed a petition
seeking reorganization, readjustment, arrangement, composition or similar relief
for the Company under any bankruptcy law or any other similar applicable
statute, law or regulation, or a decree or order of a court of competent
jurisdiction shall have been entered for the appointment of a receiver or
liquidator or trustee or assignee in bankruptcy or insolvency of the Company or
a substantial part of its property, or for the winding up or liquidation of its
affairs; and (b) to the extent permitted by law, the Inventors may terminate
this Agreement if the Company shall institute proceedings to be adjudicated a
voluntary bankrupt, or shall consent to the filing of a bankruptcy petition
against it, or shall file a petition or answer or consent seeking
reorganization, readjustment, arrangement, composition, liquidation or similar
relief under any bankruptcy law or any other similar applicable statute, law or
regulation, or shall consent to the appointment of a receiver or liquidator or
trustee or assignee in bankruptcy or insolvency of it or of a substantial part
of its property, or shall make an assignment for the benefit of creditors, or
shall be unable to pay its debts generally as they become due.
15.3 Termination. Each party may terminate this Agreement upon the
-----------
occurrence of an Event of Default specified in Section 15.2 by giving written
notice thereof to the other party, which notice shall specifically identify the
reason(s) for such termination. In addition, (i) the Company may terminate this
Agreement at any time by giving at least ninety (90) days' prior written notice
to the Inventors; and (ii) this Agreement shall terminate upon written notice of
a material breach of the terms of this Agreement to a Defaulting Party unless
the same and all of its effects are remedied within thirty (30) days after such
written notice thereof is given by the other party to the Defaulting Party. The
failure by the Company substantially to comply with the diligence obligations
set forth in Section 3.1 of this Agreement, or to pay the Inventors any
royalties or other payments when due and payable in accordance with the
provisions of Section 4 hereof shall be deemed a material breach of this
Agreement.
15.4 Consequences of Termination. Upon the termination of this Agreement by
---------------------------
the Company for any reason other than an Event of Default on the part of the
Inventors, all rights and obligations of the Company hereunder shall revert to
the Inventors. The termination of this Agreement for any reason shall be without
prejudice to (i) the right of the Inventors to receive all amounts accrued under
Section 4 hereof prior to the effective date of such termination, (ii) the
rights and obligations of the parties
-16-
pursuant to Sections 6, 8 and 9 hereof, and (iii) any other remedies as may now
or hereafter be available to any party, whether under this Agreement or
otherwise. Upon any termination of this Agreement which results in the reversion
to the Inventors of the rights and obligations of the Company hereunder pursuant
to the first sentence of this Section 15.4 (a) the Company and its Affiliates
and sublicensees shall immediately discontinue the manufacture, use and sale of
the Licensed Products, and (b) each party and its Affiliates shall immediately
cease the use of all Confidential Information obtained from the other party or
any Affiliate thereof, provided that, upon termination of this Agreement by the
Company, the Inventors may, in their sole discretion, ratify and maintain in
full force and effect any sublicense(s) of the rights granted under this
Agreement.
SECTION 16. EXPORT CONTROLS
All obligations to furnish goods, technology, or software under this
Agreement are subject to U.S. Export Control Laws and Regulations. Company
agrees to comply fully with all applicable laws and regulations before exporting
any goods, technology, or software to any Person. Company recognizes and agrees
that its obligations to comply with U.S. export control laws and regulations
survive the termination or expiration of this Agreement.
SECTION 17. MISCELLANEOUS
17.1 Notices. All notices, reports and/or other communications made in
-------
accordance with this Agreement, shall be deemed to be duly made or given (i)
when delivered by hand, (ii) three days after being mailed by registered or
certified mail (air mail if mailed overseas), return receipt requested, or (iii)
when received by the addressee, if sent by facsimile transmission or by Express
Mail, Federal Express or other express delivery service (receipt requested), in
each case addressed to such party at its address set forth below (or to such
other address as such party may hereafter designate as to itself by notice to
the other party hereto):
In the case of the Company:
Esperion Therapeutics, Inc.
0000 X. Xxxxx Xxxxxx
000 XXX Xxxxx
Xxx Xxxxx, XX 00000
Attention: President
Telecopier: (000) 000-0000
-17-
with a copy to:
Xxxxx Cummis Radin
Tischman Xxxxxxx & Xxxxx, P.A.
Xxx Xxxxxxxxxx Xxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attention: Xxx X. Xxxxxxxxx, Esq.
Telecopier: (000) 000-0000
In the case of the Inventors:
To his or her address set forth at the beginning of this
Agreement
with a copy to:
Xxx X. Xxxxxxx, Esq.
Xxxxxx & Xxxxxxx LLP
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telecopier: (000) 000-0000
17.2 Amendment, etc. This Agreement may not be amended or modified, nor may
--------------
any right or remedy of any party be waived, unless the same is in writing and
signed by such party or a duly authorized representative of such party. The
waiver by any party of the breach of any term or provision hereof by any other
party shall not be construed as a waiver of any other subsequent breach.
17.3 No Waiver: Remedies. No failure or delay by any party in exercising
-------------------
any of its rights or remedies hereunder shall operate as a waiver thereof, nor
shall any single or partial exercise of any such right or remedy preclude any
other or further exercise thereof or the exercise of any other right or remedy.
The rights and remedies of the parties provided in this Agreement are cumulative
and not exclusive of any rights or remedies provided by law.
17.4 Assignment. Neither party may assign or otherwise transfer this
----------
Agreement or any -of its rights, duties or obligations hereunder without the
prior written consent of the other party.
17.5 Sublicense of Rights by the Company. If the Company sublicenses any of
-----------------------------------
its rights under this Agreement to a sublicensee, such sublicensee shall be
bound by the terms and conditions of this Agreement. The Company shall advise
the Inventors in writing of any such sublicense and provide the Inventors with a
copy of any sublicense within thirty (30) days of execution of such sublicense;
provided that, the Company may redact such copy to delete any financial
provisions.
17.6 The Company as Guarantor. The Company shall guarantee and be
------------------------
responsible for the payment of all royalties due and the making of reports under
this
-18-
Agreement by reason of the development and sales of any Licensed Products by the
Company, its Affiliates and sublicensees and their compliance with all
applicable terms of this Agreement. The performance or satisfaction of any
obligations of the Company under this Agreement by any of its Affiliates or
sublicensees shall be deemed performance or satisfaction of such obligation by
the Company.
17.7 Relationship of Parties. The Company, on the one hand, and the
-----------------------
Inventors, on the other hand, are not (and nothing in this Agreement shall be
construed to constitute them) partners, joint venturers, agents, representatives
or employees of each other (except that Xxxx-Xxxxx Dasseux is an employee of the
Company), nor to create any relationships between them other than that of an
independent contractor. Neither the Company, on one hand, nor the Inventors, on
the other hand, shall have any responsibility or liability for the actions of
the other party except as specifically provided herein. Neither the Company, on
one hand, nor the Inventors, on the other hand, shall have any right or
authority to bind or obligate the other in any manner or make any representation
or warranty on behalf of the other. The foregoing provisions of this Section
17.7 relate solely to the relationship between the Company, on the one hand, and
the Inventors, on the other hand. All covenants, representations and warranties
of the Inventors hereunder are joint and several obligations of the Inventors to
the Company hereunder and one or more Inventors may act as agent or
representative of the other Inventors hereunder to the extent expressly provided
herein.
17.8 Expenses. Unless otherwise provided herein, all costs and expenses
--------
incurred in connection with this Agreement and the transactions contemplated
hereby shall be paid by the party which shall have incurred the same and the
other party shall have no liability relating thereto.
17.9 Entire Agreement. This Agreement constitutes the entire agreement
----------------
between the parties and supersedes all prior proposals, communications,
representations and agreements, whether oral or written, with respect to the
subject matter hereof.
17.10 Severability. Any term or provision of this Agreement which is
------------
invalid or unenforceable in any jurisdiction shall, as to such jurisdiction, be
ineffective to the extent of such invalidity or unenforceability without
rendering invalid or unenforceable the remaining terms and provisions of this
Agreement or affecting the validity or enforceability of any of the terms or
provisions hereof in any other jurisdiction.
17.11 Counterparts. This Agreement may be signed in any number of
------------
counterparts,each of which shall be deemed an original, with the same effect as
if the signatures thereto and hereto were upon the same instrument.
17.12 Headings. The headings used in this Agreement are for convenience of
--------
reference only and shall not affect the meaning or construction of this
Agreement.
17.13 Governing Law. This Agreement, including the performance and
-------------
enforceability hereof, shall be governed by and construed in accordance with the
laws of the State of Michigan, without reference to choice of law doctrine. Each
party hereby
-19-
submits itself for the sole purpose of this Agreement and any controversy
arising hereunder to the jurisdiction of the courts located in the State of
Michigan and any courts of appeal therefrom, and waives any objection (on the
grounds of lack of jurisdiction, or forum non conveniens or otherwise) to the
--- ----------
exercise of such jurisdiction over it by any such courts.
17.14 Arbitration. Except as expressly provided herein, any dispute,
-----------
controversy, or claim arising out of or relating to this Agreement, its
validity, construction or enforceability or the breach of any of the terms or
provisions hereof shall be settled by arbitration under the Commercial
Arbitration Rules of the American Arbitration Association by a panel of three
arbitrators, one selected by each party and the third selected by the other two
arbitrators. Any arbitration proceeding commenced by either party shall be held
in the New York City, New York. The decision of the arbitrators shall be final
and binding upon the parties and judgment upon the decision by the arbitrators
may be entered in any court of competent jurisdiction, and execution may be had
thereon. The expense of such arbitration, including attorneys' fees, shall be
allocated between the parties as the arbitrators may decide and as the claims
and interests of each party may prevail. Notwithstanding anything to the
contrary contained in this Section 17.14, any dispute, controversy or claim
relating to actual or threatened unauthorized use or disclosure of any
Confidential Information, or the validity, applicability, enforceability or
infringement of any patent rights, shall not be required to be submitted to
arbitration hereunder and may be resolved by a court of competent jurisdiction.
17.15 Representative of Inventors. Each of Inventors, by executing this
---------------------------
Agreement, irrevocably appoints Xxxx-Xxxxx Dasseux (the "Inventors'
Representative") as his agent and true and lawful attorney-in-fact, with full
power of substitution, with full capacity and authority and in his sole
discretion, to act in the name of and for and on behalf of each of them in
connection with all matters arising out of, resulting from, contemplated by or
related or incident to this Agreement. Without limiting the generality of the
foregoing, the powers of the Inventors' Representative shall include the power
to represent each of the Inventors with respect to all aspects of this
Agreement, which power shall include, without limitation, the power to (i)
receive any payment or transfer to be made pursuant to this Agreement, (ii)
waive any and all conditions of this Agreement, (iii) amend this Agreement and
any agreement executed in connection herewith in any respect, (iv) settle claims
for indemnity pursuant to Section 9.1 hereof, (v) retain legal counsel and be
reimbursed by Inventors for all fees, expenses and other charges of such legal
counsel, (vi) receive notices or other communications, (vii) deliver any
notices, certificates or other documents required, and (viii) take all such
other action and to do all such other things as the Inventors' Representative
deems necessary or advisable with respect to this Agreement. The Company shall
have the absolute right and authority to rely upon the acts taken or omitted to
be taken by the Inventors' Representative on behalf of the Inventors and the
Company shall have no duty to inquire as to the acts and omissions of Inventors'
Representative. Each of the Inventors acknowledge and agree that (i) all
deliveries by the Company to Inventors Representative shall be deemed deliveries
to each of the Inventors, (ii) the Company shall not have any liability with
respect to any aspect of the distribution or communication of such deliveries
-20-
between the Inventors' Representative and any of the Inventors or among any
thereof, and (iii) any disclosure made to the Inventors Representative by or on
behalf of the Company shall be deemed to be disclosure made to each. In the
event the Inventors' Representative refuses to, or is no longer capable of,
serving as Inventors' Representative hereunder, each of the Inventors shall
promptly appoint a successor Inventors' Representative who shall thereafter by a
successor Inventors' Representative hereunder.
[SIGNATURE PAGE FOLLOWS]
-21-
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first written below.
EXPERION THERAPEUTICS, INC.
By: /s/ Xxxxx X. Xxxxxx
----------------------------------
Xxxxx X. Xxxxxx, President & CEO
/s/ Xxxx-Xxxxx Dasseux
----------------------------------
Xxxx-Xxxxx Dasseux
/s/ Xxxxxx Xxxxx
----------------------------------
Xxxxxx Xxxxx
/s/ Xxxxx Xxxxxxx
----------------------------------
Xxxxx Xxxxxxx
/s/ Xxxxxxxx Xxxxxx
----------------------------------
Xxxxxxxx Xxxxxx
/s/ Xxxxxxxx Xxxx
----------------------------------
Xxxxxxxx Xxxx
/s/ Xxxx Defourcq
----------------------------------
Xxxx Xxxxxxxx
-22-
APPENDIX A
----------
Amended as of February 22, 2000
--------------------------------------------------------------------------------
Title Patent No. Issue Date
----- ---------- -----------
--------------------------------------------------------------------------------
APOLIPOPROTEIN AI US 6,004,925 12/21/99
AGONISTS AND THEIR USE
TO TREAT DYSLIPIDEMIC
DISORDERS (10001)
--------------------------------------------------------------------------------
APPENDIX B
----------
Amended as of February 22, 2000
---------------------------------------------------------------------------------------------------------------------------
Title Serial No. Filing Date
----- ---------- -----------
---------------------------------------------------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT PCT/US98/20327 09/28/98
DYSLIPIDEMIC DISORDERS (10001)
-------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT 08/940,096 09/28/97
DYSLIPIDEMIC DISORDERS (5005)
---------------------------------------------------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT PCT/US98/20326 09/28/98
DYSLIPIDEMIC DISORDERS (50051)
-------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT 08/940,093 09/28/97
DYSLIPIDEMIC DISORDERS (18-mer)
-------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT PCT/US98/20328 09/28/81
DYSLIPIDEMIC DISORDERS (18-mer)
---------------------------------------------------------------------------------------------------------------------------
GENE THERAPY APPROACHES TO SUPPLY APOLIPOPROTEIN 08/940,136 09/29/97
A-I AGONISTS AND THEIR USE TO TREAT DYSLIPIDEMIC
DISORDERS
-------------------------------------------------------------------------------
GENE THERAPY APPROACHES TO SUPPLY APOLIPOPROTEIN PCT/US98/20329 09/28/98
A-I AGONISTS AND THEIR USE TO TREAT DYSLIPIDEMIC
DISORDERS
---------------------------------------------------------------------------------------------------------------------------
PEPTIDE/LIPID COMPLEX FORMATION BY CO- 08/942,597 10/02/97
LYOPHILIZATION
---------------------------------------------------------------------------------------------------------------------------
PEPTIDE/LIPID COMPLEX FORMATION BY CO- PCT/US98/20330 09/28/98
LYOPHILIZATION
---------------------------------------------------------------------------------------------------------------------------
MULTIMERIC APO AI AGONIST COMPOUNDS 09/453,841 12/01/99
---------------------------------------------------------------------------------------------------------------------------
MULTIMERIC APO AI AGONIST COMPOUNDS 09/453,840 12/01/99
---------------------------------------------------------------------------------------------------------------------------
BRANCHED APO AI AGONIST COMPOUNDS 09/453,833 12/01/99
---------------------------------------------------------------------------------------------------------------------------
LIPID COMPLEXES OF APO AI AGONIST COMPOUNDS 09/453,838 12/01/99
---------------------------------------------------------------------------------------------------------------------------
METHOD OF TREATING DYSLIPIDEMIA 09/453,826 12/01/99
---------------------------------------------------------------------------------------------------------------------------
METHOD OF TREATING SEPTIC SHOCK 09/453,605 12/01/99
---------------------------------------------------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT 09/453,834 12/01/99
DYSLIPIDEMIC DISORDERS (10001)
---------------------------------------------------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT 09/465,719 12/17/99
DYSLIPIDEMIC DISORDERS (5005)
---------------------------------------------------------------------------------------------------------------------------
APOLIPOPROTEIN AI AGONISTS AND THEIR USE TO TREAT 09/465,718 12/17/99
DYSLIPIDEMIC DISORDERS (18-mer)
---------------------------------------------------------------------------------------------------------------------------
The foregoing Amended Appendices A and B to the License Agreement entered into
between Esperion Therapeutics, Inc. and the Inventors on August 23, 1999 are
hereby Acknowledged and Agreed to:
/s/ Xxxxx X. Xxxxxx 2/22/00
-------------------------------- ---------------------------
By Esperion Therapeutics, Inc. Date
/s/ Xxxx-Xxxxx Dasseux February 22, 2000
--------------------------------- ---------------------------
By the Inventors,
as represented by Xxxx-Xxxxx Dasseux
