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Exhibit 10.1
Morphosys - Immunogen Collaboration and License Agreement Execution Copy
COLLABORATION AND LICENSE AGREEMENT
This Collaboration and License Agreement ("Agreement") is made
effective as of September 29, 2000 ("Effective Date") by and between IMMUNOGEN,
a Massachusetts corporation with its principal place of business at 128 Sidney
Street, Cambridge, Massachusetts 02139 ("IMMUNOGEN"), and MORPHOSYS AG, a German
limited liability company with its principal place of business at Lena Christ
Strasse 48, 82152 Martinsried, Munich, Germany ("MORPHOSYS"). MORPHOSYS and
IMMUNOGEN are each hereafter referred to individually as a "Party" and together
as the "Parties".
WHEREAS, IMMUNOGEN and MORPHOSYS desire to collaborate in the discovery
and development of human monoclonal antibodies against certain specified
IMMUNOGEN Targets, whereby MORPHOSYS will use its MORPHOSYS HuCAL Technologies
to generate and characterize antibodies and optimize those antibodies and
IMMUNOGEN and MORPHOSYS will use their expertise in developing antibodies in
pre-clinical and clinical settings;
WHEREAS, the Parties desire to grant and receive licenses to
discoveries made utilizing the MORPHOSYS HuCAL Technologies on the terms set
forth herein; and
WHEREAS, IMMUNOGEN and MORPHOSYS desire to initiate the performance of
the above-described activities by MORPHOSYS and IMMUNOGEN and therefore agree to
undertake the foregoing, all under the terms and conditions set forth in this
Agreement.
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, and for other good and valuable consideration, the receipt and adequacy
of which is hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the
terms defined in this Section 1 shall have the meanings specified below.
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1.1 "AFFILIATE" shall mean any corporation, firm, limited liability
company, partnership or other entity which directly or indirectly controls or is
controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of more
than fifty percent (50%) of the shares of stock entitled to vote for the
election of directors, in the case of a corporation, more than fifty percent
(50%) of the equity interests in the case of any other type of legal entity,
status as a general partner in any partnership, or any other arrangement whereby
a Party controls or has the right to control the Board of Directors or
equivalent governing body of a corporation or other entity.
1.2 "AGREEMENT YEAR" shall mean an annual period commencing on January
1 and ending on December 31, except for the first Agreement Year which shall
commence on the Effective Date and end on December 31, 2000.
1.3 "ANTIBODY OPTIMIZATION" shall mean the modification of the variable
region of an antibody in order to achieve higher affinity and/or improved
specificity, including the replacement or modification of CDRs of the antibody.
1.4 "ANTIBODY PRODUCT" shall mean a product or composition containing
an antibody discovered or developed by either Party in the course of performance
of the Collaboration Plan through use of the MORPHOSYS HuCAL Technologies, or
through use of any Deliverable or fragments or variants of any such antibody,
alone or in combination with other materials.
1.5 "COLLABORATION DATA" shall mean any data generated by either Party
(as applicable) in the course of performance of the Collaboration Plan or
through use of MORPHOSYS HuCAL Technologies, Antibody Products, Collaboration
Materials or a Collaboration Invention during the Term of this Agreement.
Collaboration Data shall not include Clinical Data.
1.6 "COLLABORATION INVENTION" shall mean any discovery, invention,
know-how or trade secret conceived or made by either Party (as applicable) in
the course of performance of the Collaboration Plan or through use of MORPHOSYS
HuCAL Technologies, Antibody Products, Collaboration Data or Collaboration
Materials during the Term of this Agreement.
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confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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1.7 "COLLABORATION MATERIAL" shall mean any proprietary materials,
including but not limited to antibodies and antibody fragments and certain other
Deliverables, identified or developed by either Party (as applicable) in the
performance of the Collaboration Plan through the use of MORPHOSYS HuCAL
Technologies.
1.8 "COLLABORATION PLAN" shall mean the written description of the
research and development efforts and activities to be performed by MORPHOSYS and
IMMUNOGEN under this Agreement, as further described in Section 2.1.3 and in
Appendix 1.8. The Collaboration Plan may specify one or more independent
projects.
1.9 "COLLABORATION PROGRAM" shall have the meaning as indicated in
Section 2.1. All work performed in the Collaboration Program shall be as
described in the Collaboration Plan.
1.10 "COLLABORATION TERM" shall have the meaning set forth in Section
2.3.1.
1.11 "DELIVERABLES" shall mean information and materials, including but
not limited to Antibody Products, delivered to IMMUNOGEN by MORPHOSYS hereunder,
as further set forth in Section 2.1.3.
1.12 "FDA" shall mean the United States Food and Drug Administration
and any successor agency or authority thereto.
1.13 "FIELD" shall mean all therapeutic indications.
1.14 "FTE" shall mean the equivalent of one researcher involved in one
year of research on a full-time basis comprising at least thirty-two (32) hours
per week of scientific effort in support of the Collaboration Plan and as
furthermore outlined therein.
1.15 "IMMUNOGEN PROPRIETARY MATERIAL" shall mean all proprietary
information and materials including but not limited to antigens, IMMUNOGEN
Targets, cells, ligands, monoclonal antibodies, and other biological materials,
provided by IMMUNOGEN to MORPHOSYS for the purposes of performing the
Collaboration Plan.
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confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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1.16 "IMMUNOGEN TARGET" shall mean the Target designated in Appendix
1.16 as of the Effective Date and any additional Target subsequently designated
by mutual written agreement of the Parties.
1.17 "IND" shall mean an investigational new drug application (as
defined in Title 21 of the United States Code of Federal Regulation, as amended
from time to time) filed or to be filed with the FDA with regard to any Licensed
Product.
1.18 "JOINT STEERING COMMITTEE" or "JSC" shall have the meaning set
forth in Section 2.2.
1.19 "LICENSED PRODUCT" shall mean an Antibody Product which is the
subject of a license granted to IMMUNOGEN under Section 3.2 of this Agreement.
1.20 "MORPHOSYS BACKGROUND INVENTIONS" shall mean all inventions,
discoveries, patent rights, trade secrets and/or know-how, including without
limitation, any patents or patent applications, claiming any such inventions or
discoveries, in each case owned or exclusively licensed by MORPHOSYS, including
but not limited to the MORPHOSYS HuCAL Technologies, which MORPHOSYS has the
right to license and which would be infringed by the activities of IMMUNOGEN
contemplated hereunder, but for this Agreement and whether existing now or
obtained in the future; provided, however, that MORPHOSYS Background Inventions
shall expressly exclude (a) any inventions, discoveries, patent rights, trade
secrets or know-how arising from MORPHOSYS internal pharmaceutical product
development activities, occurring prior to the Effective Date of this Agreement
or from any MORPHOSYS collaboration with a third party, except to the extent
expressly permitted thereby, (b) any Target Specific Rights owned or controlled
by MORPHOSYS. As used in this Section 1.20, the term "exclusively licensed" does
not include co-exclusive licenses.
1.21 "MORPHOSYS HUCAL TECHNOLOGIES" shall mean the MORPHOSYS HuCAL
library and associated technologies described on Appendix 1.21 attached hereto.
1.22 "NDA" shall mean a new drug application (as defined in Title 21 of
the United States Code of Federal Regulations, as amended from time to time)
filed with the FDA seeking
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regulatory approval to market and sell any Licensed Product in the United States
for a particular indication within the Field.
1.23 "NET SALES" shall mean the gross invoiced sales price of any
Licensed Product charged by IMMUNOGEN, its Affiliates or its Sublicensees for
the sale of a Licensed Product in arm's length sales to unrelated third parties,
less the following amounts incurred by IMMUNOGEN or its Affiliates or
Sublicensees with respect to such sale of Licensed Product to the extent
separately included in the invoice for the Licensed Product as part of the gross
invoiced sales price:
(a) reasonable and customary trade, cash and quantity
discounts or rebates actually allowed or taken;
(b) reasonable and customary credits or allowances given or
made for rejection of or return of, and for uncollectible
amounts on, previously sold Licensed Products or for
retroactive price reductions (including Medicare and similar
types of rebates);
(c) reasonable and customary charges for insurance, freight,
and other transportation costs directly related to the
delivery of Licensed Product;
(d) sales, transfer and other excise taxes levied on the sale
or delivery of a Licensed Product (including any tax such as a
value added or similar tax or government charge) borne by the
seller thereof, other than franchise or income tax of any kind
whatsoever.
1.24 "PATENT RIGHTS" means the rights and interests in and to issued
patents and pending patent applications in any country, including, but not
limited to, all utility patent applications, provisional applications,
substitutions, continuations, continuations-in-part, divisions, and renewals,
all letters patent granted thereon, and all reissues, reexaminations and
extensions thereof, wherein at least one claim of such patent or patent
application is directly based, in whole or in part, on a Collaboration
Invention.
1.25 "PHASE III CLINICAL TRIAL" shall mean, as to a particular Licensed
Product for a particular indication, a controlled and lawful study in humans of
the safety and efficacy of such
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Licensed Product for such indication, which is prospectively designed to
demonstrate statistically whether such Licensed Product is safe and effective
for use in such indication in a manner sufficient to file a biologics license
application (as defined in Title 21 of the United States Code of Federal
Regulations, as amended from time to time) or NDA to obtain regulatory approval
to market and sell that Licensed Product in the United States for the indication
under investigation in such study.
1.26 "SUBLICENSEE" shall mean any non-Affiliate third party licensed or
sublicensed under the license granted to IMMUNOGEN hereunder by IMMUNOGEN to
make, have made, use, have used, offer to sell, sell, have sold, import or have
imported any Licensed Product.
1.27 "SUCCESS CRITERIA" shall mean, for each IMMUNOGEN Target,
characteristics of the Antibody Product to be delivered by MORPHOSYS pursuant to
the Collaboration Plan, as specified and agreed in the Collaboration Plan.
1.28 "TARGET" shall mean (i) a defined molecule such as a biological
receptor, an enzyme, or a macromolecule, (ii) an entity tentatively identified
through its reaction with a specific antibody or another reagent, or (iii) a
molecule which is encoded by a particular gene.
1.29 "TARGET SPECIFIC RIGHTS" shall mean patent rights, trade secrets
or know-how arising from the application by MORPHOSYS or its third party
collaborators of MORPHOSYS HuCAL Technologies to any Target outside of the
Collaboration Plan.
1.30 "TERM" shall have the meaning set forth in Section 8.1.
1.31 "TERRITORY" shall mean the world.
1.32 "THIRD PARTY LICENSEE" shall mean a third party to whom MORPHOSYS
has granted rights to use the MORPHOSYS HuCAL Technologies or rights with
respect to any Target.
1.33 "THIRD PARTY PATENT RIGHTS" shall mean the rights and interests in
and to issued patents and pending patent applications in any country, as such
are licensed together with the
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confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
right to sublicense by MORPHOSYS from third parties, and which would be
infringed by the use or operation of the MORPHOSYS Background Inventions as
contemplated by this Agreement.
1.34 "VALID CLAIM" shall mean (a) a claim of an issued and unexpired
patent which has not been held permanently revoked, 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 admitted to be invalid or unenforceable through reissue or disclaimer or
otherwise; or (b) a claim of a pending patent application which claim was filed
in good faith, has not been pending for more than [______________] and has not
been abandoned or finally rejected/disallowed without the possibility of appeal
or refiling of the application; however, if a claim pending for more than
[_________________] issues in a patent (satisfying the conditions of this
Section 1.34(a)) then [_______________] or [________ _________] that
[_________________] will become [_________________].
1.35 "CLINICAL DATA" shall mean all information, data, documents and
results prepared by or on behalf of IMMUNOGEN without the assistance of
MORPHOSYS in connection with the performance of the pre-clinical and/or human
clinical testing of a Licensed Product necessary to obtain any approvals,
registrations or authorizations of any kind of the FDA or its foreign equivalent
applicable to the development of such Licensed Product.
2. COLLABORATION
2.1 IMPLEMENTATION OF THE COLLABORATION PLAN.
2.1.1 Basic Provisions. The objective of the collaboration hereunder
(the "Collaboration Program") will be for the Parties to jointly perform
research and development activities as outlined in the Collaboration Plan
utilizing the MORPHOSYS HuCAL Technologies and other resources, which shall
include without limitation efforts by MORPHOSYS to generate Collaboration
Materials and Collaboration Data using the MORPHOSYS HuCAL Technologies and the
delivery of such Collaboration Materials and Collaboration Data to IMMUNOGEN,
and the analysis and use by IMMUNOGEN of any such Collaboration Materials and
Collaboration Data for research as outlined in the Collaboration
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Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
Plan, in order to allow the Parties to discover and validate Targets and to
discover, identify, optimize and develop one or more human Antibody Products. In
carrying out the Collaboration Plan, the Parties shall use commercially
reasonable efforts to perform such tasks as are set forth to be performed by
them, respectively, in the Collaboration Plan to be agreed upon as set forth in
Section 2.1.3.
2.1.2 Collaborative Efforts and Reports.
(a) The Parties agree that the successful execution of the
Collaboration Plan will require the collaborative use of both
Parties' areas of expertise. The Parties shall keep the JSC
fully informed about the status of the portions of the
Collaboration Plan they respectively perform. In particular,
without limitation, each Party shall furnish to the JSC
quarterly written reports within five (5) business days before
each quarterly JSC meeting, describing the progress of its
activities under the Collaboration Plan in reasonable detail.
(b) Researchers at MORPHOSYS and IMMUNOGEN shall cooperate in
the performance of the Collaboration Plan and, subject to any
confidentiality obligations to third parties and to the
provisions of Section 5, shall exchange information and
materials as necessary to carry out the Collaboration Program.
Each Party will attempt to accommodate any reasonable request
of the other Party to send or receive personnel for purposes
of collaborating or exchanging information under the
Collaboration Program. Such visits and/or access will have
defined purposes and be scheduled in advance.
2.1.3 Collaboration Plan. The Collaboration Plan for the IMMUNOGEN
Targets to be pursued during the Collaboration Program shall be agreed upon by
the Parties prior to the Effective Date. The Collaboration Plan shall include
specifications for IMMUNOGEN Proprietary Material to be delivered to MORPHOSYS,
mutually agreed Success Criteria, and specifications for Deliverables for each
IMMUNOGEN Target, prior to the initiation of work on such IMMUNOGEN Target by
MORPHOSYS hereunder. The Collaboration Plan shall also specify (a) timelines for
the performance of work by each Party and (b) milestones and budgets
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confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
for the performance of work by MORPHOSYS pursuant to the Collaboration Plan.
During the Collaboration Term, or at any time on request of either IMMUNOGEN or
MORPHOSYS, the Collaboration Plan shall be updated by MORPHOSYS and IMMUNOGEN
and shall be approved by the JSC. Nothing in this Agreement shall be construed
as an obligation of either Party to perform any additional work beyond the scope
of the approved Collaboration Plan.
2.1.4 Permitted Activities.
(a) MORPHOSYS agrees that MORPHOSYS will not use and/or
replicate any IMMUNOGEN Proprietary Material for any purpose
other than as provided herein. During the Term of this
Agreement, MORPHOSYS will not collaborate with any other party
with respect to the development or commercialization of any
Licensed Products in the Field.
(b) IMMUNOGEN agrees that IMMUNOGEN will not utilize
Deliverables, Collaboration Material, Collaboration Inventions
or Patent Rights or the MORPHOSYS HuCAL Technologies other
than as expressly provided herein except to the extent
IMMUNOGEN has a joint ownership interest in any such item
which is not exclusively licensed to MORPHOSYS pursuant to
Section 3.7(a). Notwithstanding any other provision of this
Agreement, IMMUNOGEN shall in no event use or commercialize
any Antibody Product other than pursuant to a license
expressly granted herein and in no event shall IMMUNOGEN
engineer an Antibody Product so as to bind to a Target which
is not a IMMUNOGEN Target.
2.2 JOINT STEERING COMMITTEE.
2.2.1 Establishment and Functions of JSC. The Joint Steering
Committee ("JSC") will be established by the Parties as provided below and will
be responsible for the planning and monitoring the activities of the Parties
under the Collaboration Program. In particular, the activities of the JSC shall
include:
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(a) Approving Collaboration Plans and establishing
prioritization criteria for specific components thereof,
including explicit determination of proposed dates for
experimental initiation and completion;
(b) Monitoring workflow, including experimental sample
transfer, sample analysis and data quality control, data
analysis and summarization, software installation (access),
training and maintenance;
(c) Monitoring of sample throughput, and overall Collaboration
progress;
(d) Ensuring timely filing of patent applications;
(e) Assigning tasks and responsibilities taking into account
each Party's respective specific capabilities and expertise in
order to avoid duplication and enhance efficiency and
synergies; and
(f) Monitoring timely execution of the Collaboration Plan,
including compliance with budgets and timelines.
2.2.2 JSC Membership. MORPHOSYS and IMMUNOGEN each shall
appoint, in their sole discretion, three (3) members to the JSC (one of which
shall be a Project Coordinator as discussed below), which shall include a
Co-Chair to be designated by IMMUNOGEN and a Co-Chair to be designated by
MORPHOSYS. Substitutes or alternates for the Co-Chairs or other JSC members may
be appointed at any time by notice in writing to the other Party, provided that
such replacement members shall have sufficient authority to ensure acceptance
and execution of JSC decisions within their organizations. The Parties may
mutually agree to change the size of the JSC as long as there shall be an equal
number of representatives of each Party on the JSC. The initial Co-Chairs and
other JSC members shall be designated by the Parties on or prior to the
Effective Date. Each Party shall also appoint one or more Project Coordinators,
each of whom shall have sufficient responsibility to serve as principal liaison
for the various Collaboration projects and to ensure successful implementation
of the Collaboration Plan. Such Project Coordinator(s) will report to the JSC at
or prior to each JSC meeting and each Party shall appoint one Project
Coordinator to serve as a member to the JSC.
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2.2.3 JSC Meetings. The JSC shall meet at least quarterly,
with such meetings to be held, alternately, in Munich, Germany and at
IMMUNOGEN's facilities in Cambridge, Massachusetts, unless the Parties agree
otherwise. Any additional meetings shall be held at places and on dates selected
by the Co-Chairs of the JSC. As agreed upon from time to time by the Parties,
any meetings of the JSC may be conducted through teleconferences and/or video
conferences. In addition, the JSC may act without a formal meeting by a written
memorandum signed by the Co-Chairs of the JSC. Whenever any action by the JSC is
called for hereunder during a time period in which the JSC is not scheduled to
meet, the Co-Chairs of the JSC shall cause the JSC to take the action in the
requested time period by calling a special meeting or by action without a
meeting. Subject to the obligations set forth in Article 5, representatives of
each Party or of its Affiliates, in addition to the members of the JSC, may
attend JSC meetings at the invitation of either Party with the prior approval of
the other Party, which approval shall not be unreasonably withheld.
2.2.4 Minutes of JSC Meetings. The JSC shall keep accurate
minutes of its deliberations which record all proposed decisions and all actions
recommended or taken. Drafts of minutes shall be delivered to the Co-Chairs of
the JSC within twenty (20) days after any meeting. The Party hosting the meeting
shall be responsible for the preparation and circulation of the draft minutes.
Draft minutes shall be edited by the Co-Chairs and shall be issued in final form
only with the approval and agreement of the Co-Chairs as evidenced by their
signatures on the minutes.
2.2.5 Quorum; Voting; Decisions. At each JSC meeting, at least
two (2) member(s) appointed by each Party present in person or by telephone
shall constitute a quorum and decisions shall be made by majority vote. Each JSC
member shall have one vote on all matters before the JSC, provided that the
member or members of each Party present at any JSC meeting shall have the
authority to cast the votes of any of such Party's members on the JSC who are
absent from the meeting. Notwithstanding the foregoing, the objective of the
Parties to this Agreement is that decisions of the JSC shall be made by
consensus. Any matter in dispute hereunder shall be resolved, if possible, by
the Chief Executive Officers of each Party using good faith efforts.
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2.2.6 Expenses. MORPHOSYS and IMMUNOGEN shall each bear all
expenses of their respective JSC members related to their participation on the
JSC and attendance at JSC meetings.
2.3 TERM OF COLLABORATION.
2.3.1 Term of the Collaboration Program. The Collaboration
Program shall terminate on the earlier of (i) the date on which the JSC agrees
in writing that the Success Criteria have been met for an Antibody Product
directed towards each IMMUNOGEN Target, (ii) the date on which MORPHOSYS has
completed all activities or tasks under the Collaboration Plan required of
MORPHOSYS, or (iii) the end date on the time line set forth in the Collaboration
Plan, unless extended as provided below or unless this Agreement is earlier
terminated by either Party pursuant to the provisions of Article 8 (the
"Collaboration Term"). In no event shall MORPHOSYS have any obligation to
perform any activities with respect to the development or optimization of
Antibody Products after such date, except as specified in Section 2.3.2 or
Section 4.2 hereof.
2.3.2 Extension of the Collaboration Program. The
Collaboration Program and the Collaboration Term may be extended for additional
time periods to meet the development goals or milestones set forth in the
Collaboration Plan upon the mutual written agreement of the Parties with terms
of any such extension to be mutually agreed upon in writing by the Parties.
2.4 EXCLUSIVE USE OF COLLABORATION MATERIAL AND DATA. During
the Collaboration Term, MORPHOSYS:
(a) shall have the right but not the obligation to utilize
Collaboration Material, Collaboration Data and Collaboration
Inventions to develop Antibody Products that are not Licensed
Products , but
(b) shall keep such Collaboration Data, Collaboration Material
and Collaboration Inventions confidential in accordance with
the provisions of Section 5.1 hereof and will not disclose or
transfer such Collaboration Data, Collaboration Material or
Collaboration Inventions without the prior written
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consent of IMMUNOGEN. Notwithstanding the foregoing, IMMUNOGEN
agrees to negotiate in good faith an agreement on commercially
reasonable terms regarding the development and
commercialization of Antibody Products consisting of or
derived from any such Collaboration Material for uses outside
the Field (or inside the Field for Antibody Products that are
not Licensed Products) upon written request of MORPHOSYS.
Nothing in this Section 2.4 shall limit any rights expressly
granted to either Party in Article 3 hereof, which survive any
such termination.
2.5 OTHER COLLABORATIONS. MORPHOSYS and IMMUNOGEN hereby acknowledge
that, unless otherwise provided herein, MORPHOSYS may grant exclusive rights to
utilize the MORPHOSYS HuCAL Technologies with respect to the development and
commercialization of products (i) within or outside the Field directed to any
Target which is not an IMMUNOGEN Target, and (ii) for commercial applications
outside the Field directed to any Target, to any other party at any time and
that, unless otherwise provided herein, MORPHOSYS shall have the right, alone or
in conjunction with a third party, to utilize the MORPHOSYS HuCAL Technologies
with respect to any such Target for any such purpose, or to grant licenses to
third parties with respect thereto. Nothing contained in this Agreement shall in
any way restrict MORPHOSYS' right to perform research or collaborate with third
parties and to grant to third parties the right to exploit the results of any
such research or collaborations without restriction other than as expressly
provided in Sections 2.1.4 and 2.4, or in Article 3.
3. GRANT OF RIGHTS
3.1 RESEARCH LICENSE TO IMMUNOGEN. Subject to the provisions of Article 8,
MORPHOSYS hereby grants to IMMUNOGEN a non-exclusive research license under
MORPHOSYS Background Inventions and MORPHOSYS' rights in Collaboration Data,
Collaboration Materials and Collaboration Inventions, solely during the
Collaboration Term and as further described below, to the extent necessary to
allow IMMUNOGEN to utilize Collaboration Materials, Collaboration Data and
Collaboration Inventions to perform its obligations under the Collaboration
Plan. Such license (i) shall be personal to IMMUNOGEN
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and non-sublicensable without the prior written consent of MORPHOSYS, (ii) shall
not include the right to utilize any MORPHOSYS HuCAL Technologies, (iii) shall
not include the right to perform antibody development, screening, engineering or
optimization with respect to any Target which is not an IMMUNOGEN Target, (iv)
shall not include the right to have on-site access to the MORPHOSYS HuCAL
Technologies, and (v) shall not include the right to develop or commercialize
any products other than as set forth in Sections 3.2 hereof. Such license
includes a sublicense of certain rights licensed to MORPHOSYS
[_____________________ ___________________________], and [____] (the sublicense
of [____] rights shall be granted by [____]), which are listed in Appendix 3.2
and may require affirmation through separate instruments to be executed by
IMMUNOGEN in order to become effective.
3.2. COMMERCIAL LICENSE TO IMMUNOGEN. For each IMMUNOGEN Target listed
in Appendix 1.16, MORPHOSYS hereby grants to IMMUNOGEN an exclusive, worldwide
license to make, have made, use, have used, sell, have sold, offer for sale,
import and have imported Licensed Products for use in the Field directed to such
IMMUNOGEN Target under MORPHOSYS Background Inventions, and under MORPHOSYS'
rights in all Patent Rights and Collaboration Inventions and Collaboration
Material pertaining to such IMMUNOGEN Target and Licensed Products, or the uses
thereof in the Field. Such license shall be perpetual unless terminated as set
forth herein. Such license includes a sublicense of certain rights licensed to
MORPHOSYS from [_______________________________________], and [_____] (the
sublicense of [_____] rights shall be granted by [_____]), which are listed in
Appendix 3.2, and may require affirmation through separate instruments to be
executed by IMMUNOGEN in order to become effective.
3.3 DUE DILIGENCE.
(a) IMMUNOGEN will exercise commercially reasonable efforts and
diligence in developing and commercializing Licensed Products in accordance with
its business, legal, medical and scientific judgment, and in taking
investigations and actions required to obtain appropriate regulatory approvals
necessary to market Licensed Products in the Field, such reasonable efforts and
diligence to be in accordance with the efforts and resources that a similar
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company would use for a compound owned by it or to which it has rights, which is
of similar market potential at a similar stage in development as the applicable
Licensed Product, taking into account the competitiveness of the marketplace,
the proprietary position of the Licensed Product, the relative potential safety
and efficacy of the Licensed Product, the regulatory requirements involved in
its development, commercialization and regulatory approval, the cost of goods
and availability of capacity to manufacture and supply the Licensed Product at
commercial scale, the profitability of the applicable Licensed Product, and
other relevant factors including, without limitation, technical, legal,
scientific, or medical factors. In the event that IMMUNOGEN materially breaches
its obligation to use due diligence as required hereunder, then on a Licensed
Product-by-Licensed Product basis as to the Licensed Product for which IMMUNOGEN
has materially breached its obligation to use due diligence as required
hereunder, MORPHOSYS exclusive remedy shall be, in its sole discretion, (i) to
terminate the license granted under Section 3.2 of this Agreement for breach
under Section 8.2(a) below (including the notice and cure provisions therein) or
(ii) to convert the licenses granted under Section 3.2 of this Agreement from
exclusive licenses to non-exclusive licenses, in either case only as such
licenses apply to such Licensed Product, which termination or conversion, as the
case may be, shall be effective upon expiration of the cure period specified in
Section 8.2(a) below provided that such failure remains uncured upon such
expiration.
(b) IMMUNOGEN shall submit to MORPHOSYS, within [________________]
after delivery to IMMUNOGEN of a Licensed Product, a development schedule
outlining its intended marketing activities in connection with such Licensed
Product. IMMUNOGEN shall use reasonable commercial efforts to perform the
marketing activities for each Licensed Product in accordance with each such
development schedule; provided, that, it shall not be deemed to be a material
breach of this Agreement if IMMUNOGEN should fail to meet any timelines set
forth in such proposed schedule.
3.4 SUBLICENSES. IMMUNOGEN shall have the right to grant licenses or
sublicenses to all or any portion of its rights under any license granted
pursuant to Section 3.2 to any Affiliate or Sublicensee for the purposes of
making, having made, using, having used, offering to sell, selling, having sold,
importing or having imported any relevant Licensed Product; provided,
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however, that IMMUNOGEN shall remain obligated to ensure payment of royalty and
milestone obligations as set forth in Article 4 and that no right to use the
MORPHOSYS HuCAL Technologies may be granted, and no access to the MORPHOSYS
HuCAL Technologies may be provided, by IMMUNOGEN to any third party.
3.5 [_________________] If, during the Term of this Agreement, a [__
_____________] to [_______________] that [_____________] in [______________] to
[________________________________] in a [_________________] which
[_____________________] shall [_________________] of [_________________]. On or
before [_________________] from the [_________________] agrees to either (a)
[__________________ ______________] as a [_________________] and
[__________________________] with [__________] regarding the [________] of a
[________] from [____________] to [____________________________________] in
[_________________] or (b) [_______________________] as a [_________________]
and [_________________] of [___________________________].
3.6 ANTIBODY OPTIMIZATION. Notwithstanding the licenses granted in
Section 3.1 and 3.2, it is the intention of the Parties that Antibody
Optimization relating to Deliverables shall be performed by MORPHOSYS. MORPHYSYS
shall provide IMMUNOGEN, on or before the Effective Date, with a good faith
estimate of the aggregate costs it expects to incur to perform Antibody
Optimization activities, which estimate shall be attached as Appendix 3.6
hereto.
3.7 [_________________][____________] hereby [____________________], a
[_______________________________] with [_________________], under [________
_________], if any, in [________________________________________________________
________] thereon
(a) to [_________________] the
[_____________________________], which [_________________],
and
(b) to [____________________________________________________
___________________] the [_________________], other than
[_____
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____________] as are [____________] to [_________________]
hereunder, which [_______________] shall be [_______________].
3.8 NO OTHER RIGHTS. IMMUNOGEN shall receive no rights to Collaboration
Data or Collaboration Material under MORPHOSYS Background Inventions or under
MORPHOSYS' rights in Patent Rights or Collaboration Inventions or rights with
respect to use of MORPHOSYS HuCAL Technologies except as expressly set forth
herein. Nothing in this Agreement shall be deemed to require MORPHOSYS to
provide IMMUNOGEN with on-site access to the MORPHOSYS HuCAL Technologies.
MORPHOSYS shall receive no rights under IMMUNOGEN's ownership interest in any
Collaboration Data, Collaboration Inventions or Patent Rights or under IMMUNOGEN
Proprietary Material or any other proprietary right of IMMUNOGEN except as
expressly set forth herein.
4. FINANCIAL TERMS
4.1 INITIATION FEE. IMMUNOGEN agrees to pay to MORPHOSYS a
collaboration initiation and license fee of
[_________________________________________________] for each IMMUNOGEN Target
upon execution of this Agreement.
4.2 RESEARCH FUNDING.
(a) In partial consideration of the developmental work to be
done by MORPHOSYS pursuant to this Agreement and the
Collaboration Plan, IMMUNOGEN will pay MORPHOSYS
non-refundable research payments of
[________________________________________] per year per
MORPHOSYS FTE utilized in the course of performing the
Collaboration Plan. Such payments will be made quarterly in
advance, within 30 days of receipt by IMMUNOGEN of an itemized
invoice. IMMUNOGEN will fund all of its own activities under
the Collaboration Program, and all activities required
pursuant to Section 3.2 and 3.3. IMMUNOGEN agrees to increase
the annual research budget and funding under the Collaboration
Plan if the Collaboration Program is extended by mutual
decision of the Parties as set forth in Section 2.3.2. For the
second and the
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following years of this Agreement, the FTE cost shall be
adjusted based on the aggregate appreciation of the consumer
price index for Munich, for all urban consumers as published
by the relevant German bureau of Labor Statistics from the
Effective Date of this Agreement and any anniversary thereof.
(b) In partial consideration of the work to be done by
MORPHOSYS pursuant to this Agreement, IMMUNOGEN will pay
MORPHOSYS non-refundable research payments of
[____________________________________________] year per
MORPHOSYS FTE for any FTEs performing Antibody Optimization on
Deliverables, as approved by the JSC prior to the expiration
of the Collaboration Term. Such payments will be made monthly
in advance, within 30 days of receipt by IMMUNOGEN of an
itemized invoice.
4.3 TRANSFER FEE.
IMMUNOGEN agrees to pay MORPHOSYS [______________________________]
within thirty (30) days of the first transfer of an Antibody Product derived
from the MorphoSys HuCAL Technologies relating to the IMMUNOGEN Target.
4.4 MILESTONE PAYMENTS. IMMUNOGEN shall make the following milestone
payments to MORPHOSYS for each IMMUNOGEN Target and/or Licensed Product:
(a) [____________________________________] for [____
______________________________________________________________
______________________________________________________________
____________________________________________________________];
(b) [____________________________________] for [____
______________________________________________________________
______________________________________________________________
____________________________________________________________];
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(c) [____________________________________] for [____
______________________________________________________________
______________________________________________________________
______________________________________];
(d) [____________________________________] for [____
______________________________________________________________
______________________________________________________________
_______________________________________];
(e) [____________________________________] for [____
______________________________________________________________
________________________________________] for [______________
___________________________________________];and
(f) [____________________________________] for [_________
___________________________________________________________
______________________________________________________________
__________________] for[______________________________________
[__________________________________________]; and
(g) [____________________________________] for [____
______________________________________________________________
______________________________________________________
_____________________________________].
It is hereby acknowledged and agreed that any milestone payment made
[__________________] for the same indication shall be made only once, with
respect to the first achievement of such milestone for the same indication for
the first Licensed Product, regardless
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of how many times such milestone is achieved for the same indication by Licensed
Products and regardless of how many times a particular Licensed Product achieves
such milestone for the same indication.
4.5 ROYALTIES ON LICENSED PRODUCTS.
IMMUNOGEN shall pay to MORPHOSYS a royalty on Net Sales of Licensed
Products sold by IMMUNOGEN or its Affiliates or Sublicensees for prophylactic or
therapeutic use as follows:
[__________________________________]
[__________________________________]
[__________________________________]
4.6 THIRD PARTY PAYMENTS. MORPHOSYS will be responsible for license
fees and milestone and royalty payments owed to the following third parties for
licenses under Third Party Patent Rights:
[_____________________________________________]. In the event that IMMUNOGEN is
required to pay license fees, milestone fees and/or royalties to any other third
party in order to have freedom to practice the MORPHOSYS Background Inventions
or commercialize a Licensed Product in accordance with this Agreement, IMMUNOGEN
shall pay all relevant payments due under any such license; provided, however,
that ImmunoGen may [_________________] the
[____________________________________________________________] of
[__________________________________] relating to [_________________] of the
[_________________________________] , but in no event shall
[___________________________________________________].
4.7 ONE ROYALTY. Only one royalty, calculated at the highest applicable
royalty rate hereunder, shall be payable to MORPHOSYS for each sale of a
Licensed Product.
4.8 PAYMENT TERMS.
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(a) Royalty payments shall be made to MORPHOSYS
[__________________] following the end of [_________________]
for which royalties are due. Each royalty payment shall be
accompanied by a report summarizing the total gross sales of
Licensed Products, credits allowed pursuant to Section 1.20,
and total Net Sales for each Licensed Product during the
relevant [_______________] and the calculation of royalties,
if any, due thereon pursuant to this Article 4.
(b) All royalties shall be payable in full in Germany in US
Dollars, regardless of the countries in which sales are made.
For the purpose of computing Net Sales for Licensed Products
sold in a currency other than US Dollars, such currency shall
be converted into US Dollars at the exchange rate for buying
US Dollars set forth in The Wall Street Journal for the last
business day of the [__________]. Such payments shall be
without deduction of exchange, collection or other charges.
4.9 ROYALTY TERM. IMMUNOGEN recognizes and acknowledges that each of
the following, separately and together, may have substantial economic benefit to
IMMUNOGEN:
(a) MORPHOSYS' expertise and know-how concerning the discovery
and optimization of Antibody Products;
(b) the performance by MORPHOSYS of the Collaboration Plan on
the terms specified herein;
(c) the disclosure to IMMUNOGEN of results obtained in the
performance of the Collaboration Plan by MORPHOSYS;
(d) the licenses and rights granted to IMMUNOGEN hereunder
with respect to Collaboration Inventions, Collaboration Data,
Collaboration Materials and Antibody Products, which are not
within the claims of any letters patent owned or controlled by
MORPHOSYS;
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(e) the licenses granted to IMMUNOGEN under letters patent
owned or controlled by MORPHOSYS;
(f) the foundation afforded to IMMUNOGEN for its internal
program of research, development, manufacturing and marketing
of Antibody Products by each of the elements set forth in
subparagraphs (i) through (iv) above;
(g) the "head start" afforded to IMMUNOGEN whether or not any
patents issue with respect to any Collaboration Inventions and
whether or not any or all unpatented Collaboration Data,
Collaboration Materials, Collaboration Inventions and Antibody
Products become a part of the public domain, by each of the
elements set forth in subparagraphs (i) though (vi) above;
and in consideration of each, separately and together, and in consideration of
the fact that MORPHOSYS is relying upon IMMUNOGEN to market and sell Licensed
Products, IMMUNOGEN agrees to pay to MORPHOSYS earned royalties as specified in
Section 4.5 with respect to Net Sales by IMMUNOGEN, its Affiliates, and
Sublicensees of Licensed Products in each country until [_________] (i) the
[______________________________________________________________________________
of a [_______________________________] a [__________] of a [_________________]
or (ii) [_________________] of the [___________________] of a [______________
__________]. Following such royalty term, IMMUNOGEN shall have a fully paid-up,
irrevocable, freely transferable and sublicensable license in such country under
MORPHOSYS' rights in all Patent Rights, Collaboration Inventions, Collaboration
Materials and MORPHOSYS Background Inventions, to research, develop, make, have
made, use, have used, sell, offer for sale, have sold, import and have imported
Licensed Products for any and all uses within the Field in such country.
4.10 OVERDUE ROYALTIES. Royalties not paid within the time period set
forth in this Article 4 shall bear interest at a rate of one and one-half
percent (1.5%) per month from the due date until the date paid in full.
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4.11 RECORDS RETENTION. AUDITS. IMMUNOGEN, its Affiliates and
Sublicensees shall keep for [____________] from the date of each payment of
royalties complete and accurate records of sales by IMMUNOGEN and its Affiliates
and Sublicensees of each Licensed Product in sufficient detail to allow the
accruing royalties to be determined accurately. MORPHOSYS shall have the right
for a period of [_____________] after receiving any report or statement with
respect to royalties due and payable to appoint an independent certified public
accountant reasonably acceptable to IMMUNOGEN to inspect the relevant records of
IMMUNOGEN and its Affiliates and Sublicensees to verify such report or
statement. IMMUNOGEN and its Affiliates and Sublicensees shall each make its
records available for inspection by such independent certified public accountant
during regular business hours at such place or places where such records are
customarily kept, upon reasonable notice from MORPHOSYS, solely to verify the
accuracy of the reports and payments. Such inspection right shall not be
exercised more than once in any calendar year nor more than once with respect to
sales of any Licensed Product in any given payment period. MORPHOSYS agrees to
hold in strict confidence all information concerning royalty payments and
reports, and all information learned in the course of any audit or inspection,
except to the extent necessary for MORPHOSYS to reveal such information in order
to enforce its rights under this Agreement or if disclosure is required by law,
regulation or judicial order. The results of each inspection, if any, shall be
binding on both Parties. MORPHOSYS shall pay for such inspections, except that
in the event there is any upward adjustment in aggregate royalties payable for
any year shown by such inspection of more than [____________] of the amount
paid, IMMUNOGEN shall pay for such inspection.
5. TREATMENT OF CONFIDENTIAL INFORMATION
5.1 CONFIDENTIAL INFORMATION. During the Term of this Agreement, each
Party may disclose to the other Party proprietary information, materials and
technical and business information, including but not limited to MORPHOSYS
Background Technologies and Collaboration Material (which information shall be
deemed Confidential Information of MORPHOSYS) and Collaboration Inventions
(collectively, "Confidential Information"). During the Term (with respect to all
Collaboration Inventions) and ten (10) years after the end of the Collaboration
Term (with respect to all other Confidential Information), except as expressly
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permitted hereunder, the receiving Party shall keep confidential all such
Confidential Information of the other Party and will not disclose such
Confidential Information of the other Party to third parties by publication or
otherwise. Each Party further agrees not to use Confidential Information of the
other Party for any purpose other than conducting research hereunder or
exercising any rights granted to it or reserved by it hereunder. Upon any
termination or expiration of this Agreement, upon request, a Party shall return
to the requesting Party all copies of any of such requesting Party's
Confidential Information which is not the subject of a surviving license or
right hereunder. Notwithstanding the foregoing, it is understood and agreed that
the receiving Party's obligations of confidentiality and nonuse herein shall not
apply to any information which:
(a) is, at the time of disclosure by the disclosing Party
hereunder, or thereafter becomes, a part of the public domain
or publicly known or available through no fault or negligence
of the receiving Party or any of its Affiliates or
Sublicensees; or
(b) was otherwise in the receiving Party's lawful possession
prior to disclosure by the disclosing Party other than under
an obligation of confidentiality; or
(c) was independently discovered or developed by the receiving
Party or any of its Affiliates, without use of the other
Party's Confidential Information, as can be demonstrated by
competent proof; or
(d) is lawfully disclosed to the receiving Party or any of its
Affiliates on a non-confidential basis by a third party that
is not in violation of an obligation of confidentiality to the
disclosing Party relative to such information.
Information disclosed that is not in written or electronic form shall be subject
to the terms of this Section 5.1 for a period of at least thirty (30) days and
shall be subject to Section 5.1 for a continuing period only if confirmed in
writing to the other Party within thirty (30) days of initial disclosure and
specifying with particularity that Confidential Information disclosed other than
in
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confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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written or electronic form which is to continue to be subject to the
provisions of this Section 5.1. Each Party may disclose the other's Confidential
Information to the extent such disclosure is reasonably necessary in (i)
prosecuting patent applications and maintaining patents, or (ii) prosecuting or
defending litigation, or (iii) complying with applicable governmental
regulations provided, however, that if a Party is required to make any
disclosure of the other Party's Confidential Information it will give reasonable
advance notice to the other Party of such disclosure requirement and will use
reasonable efforts to secure confidential treatment of such information required
to be disclosed.
5.2 PUBLICATIONS. It is expected that each Party may wish to publish
the results of its research under the Collaboration Program. In order to
safeguard intellectual property rights, the Party wishing to publish or
otherwise publicly disclose the results of such research shall first submit a
draft of each proposed manuscript to the two Project Coordinators, determined as
set forth in Section 2.2.2, for review, comment and consideration of appropriate
patent action at least eight (8) weeks prior to any submission for publication
or other public disclosure. Within thirty (30) days of receipt of the
pre-publication materials, the Project Coordinators will advise the Party
seeking publication as to whether a patent application will be prepared and
filed or whether trade secret protection should be pursued and, if so, the Joint
Steering Committee will, in cooperation with both Parties, determine the
appropriate timing and content of any such publications. Any dispute of the
Project Coordinators with respect to the subject matter hereof shall be resolved
by the Joint Steering Committee.
5.3 PUBLICITY. The Parties shall mutually agree on a press release
announcing the execution of this Agreement, which press release shall be
attached as Appendix 5.3. The Parties shall also be permitted hereunder to
disclose the general nature of this Agreement to the extent reasonably necessary
to obtain financing from third parties or potential collaborators, and to make
such other disclosures as mutually agreed by the Parties. Once any written
statement is approved for disclosure by both Parties, either Party may make
subsequent public disclosures of the contents of such statement without the
further approval of the other Party.
6. INTELLECTUAL PROPERTY RIGHTS
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6.1 INVENTIONS. Except as otherwise expressly provided herein, all
inventions and discoveries governed by this Agreement shall be owned based on
inventorship, as inventorship is determined in accordance with the patent laws
of the priority filing country. Notwithstanding the foregoing, Collaboration
Data and Collaboration Materials generated during the Term shall be jointly
owned by IMMUNOGEN and MORPHOSYS. Any inventions jointly invented by the Parties
shall be jointly owned and any patent rights obtained thereon shall be owned and
used as expressly provided herein or as determined in accordance with U.S.
Patent Law. The rights and interests of MORPHOSYS and IMMUNOGEN in Collaboration
Inventions shall be subject to the provisions of Section 2.1.4 and of Article 3
and this Article 6.
7. PROVISIONS CONCERNING THE FILING,
PROSECUTION AND MAINTENANCE OF PATENT RIGHTS
7.1 PATENT FILING.
(a) IMMUNOGEN shall have the right (but not the obligation) to
prepare, file, prosecute, obtain and maintain patent
applications and patents relating to Collaboration Inventions,
Collaboration Data and Collaboration Materials, and all patent
applications or patents claiming rights relating to Licensed
Products which are exclusively licensed in their entirety to
IMMUNOGEN hereunder pursuant to Section 3.2, with the expenses
for any such preparation, filing, prosecution and maintenance
to be borne by IMMUNOGEN.
(b) IMMUNOGEN may elect not to exercise its first right to
prepare, file, prosecute, obtain and maintain patent
applications and patents as described in Section 7.1(a) above
at any time by giving written notice thereof to MORPHOSYS.
Such notice shall specifically identify the invention(s),
patent application(s) and/or patent(s) for which IMMUNOGEN
wishes to relinquish such right. Following the receipt of such
notice, MORPHOSYS shall have the right to prepare, file,
prosecute, obtain and maintain the patent application(s) and
patent(s) identified in the notice, at its sole expense, and
MORPHOSYS shall thereafter be deemed the sole owner of any
such application or patent, and any
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such patents and patent applications shall be assigned to
MORPHOSYS and removed from operation of this Agreement.
(c) MORPHOSYS shall prepare, file, prosecute, obtain and
maintain patent applications and patents on MORPHOSYS
Background Inventions at its sole expense. IMMUNOGEN agrees to
provide reasonable assistance and cooperation to MORPHOSYS to
facilitate such filing, prosecution and maintenance upon
request of MORPHOSYS.
(d) Each Party agrees to cooperate fully in the preparation,
filing, and prosecution of any patent applications to be filed
or prosecuted pursuant to Section 7.1 (a), (b) or (c). Such
cooperation includes, but is not limited to:
(i) executing all papers and instruments, or
requiring its employees or agents, to
execute such papers and instruments, so as
to effectuate the ownership of such patent
applications and any patents thereon and to
enable the filing and prosecution of
applications in any country as contemplated
herein; and
(ii) promptly informing the other Party of any
matters coming to such Party's attention
that may affect the preparation, filing, or
prosecution of any such patent applications.
(e) The Parties shall mutually agree before permitting any
patent application or patent within Patent Rights licensed to
IMMUNOGEN hereunder to lapse as well as before authorizing any
amendment to any patent application or patent within such
Patent Rights that would irrevocably limit the lawful scope of
such Patent Rights.
7.2 INFRINGEMENT.
(a) Notice of Infringement. If, during the Term of this
Agreement or the term of any license hereunder, either Party
learns of any infringement or threatened
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infringement by a third party of any patent right licensed
hereunder, such Party shall promptly notify the other Party
and shall provide such other Party with available evidence of
such infringement.
(b) Infringement.
(i) IMMUNOGEN shall have the first right (but
not the obligation), at its own expense, to
bring suit (or other appropriate legal
action) against any actual or suspected
infringement of any Patent Rights licensed
hereunder provided that IMMUNOGEN has an
exclusive license to the infringed claim(s)
of any such Patent Right pursuant to Article
3. If IMMUNOGEN does not take such action
within one hundred twenty (120) days after
written notice from MORPHOSYS of such
infringement, MORPHOSYS shall have the right
(but not the obligation), at its own
expense, to bring suit against such
infringement. Any amount recovered, whether
by judgment or settlement, shall first be
applied to reimburse the costs and expenses
(including attorneys' fees) of the Party
bringing suit, then to the costs and
expenses (including attorneys' fees), if
any, of the other Party. Any amounts
remaining shall be allocated [_____
____________] to the Party bringing suit and
[_______________] to the other Party, or
shall be allocated [___________] if the suit
is brought jointly.
(ii) MORPHOSYS shall have the sole right (but not
the obligation), at its own expense, to
bring suit (or other appropriate legal
action) against any actual or suspected
infringement of any Patent Rights not
exclusively licensed to IMMUNOGEN hereunder.
(iii) MORPHOSYS shall have the sole right to
defend and enforce any claims relating to
infringement of MORPHOSYS Background
Inventions licensed to IMMUNOGEN hereunder.
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7.3 COOPERATION. Each Party shall execute all papers and perform such
other acts (other than monetary) as may be reasonably required to maintain any
infringement suit brought in accordance with Section 7.2 above (including giving
legal consent for bringing such suit, and agreeing to be named as a plaintiff or
otherwise joined in such suit), and at its option and expense, may be
represented in such suit by counsel of its choice. In addition, the Parties
shall cooperate with each other in obtaining patent term restoration or
supplemental protection certificates or their equivalents in any country in the
Territory where applicable to Patent Rights. In the event that elections with
respect to obtaining such patent term restoration, supplemental protection
certificates or their equivalents are to be made, the Parties shall agree upon
such elections.
7.4 NO OBLIGATION. No Party shall have any obligation to the other
Party under this Agreement to pay any fees or costs: (i) for that Party's
bringing a lawsuit or other action to enforce any of the Patent Rights, any
patents within MORPHOSYS Background Inventions, or any other patent owned by a
Party against an actual or suspected infringement or (ii) for any other Party to
obtain for its own benefit independent business or legal advice concerning any
of the patent rights set forth in subparagraph (i) hereof.
8. TERM AND TERMINATION
8.1 TERM. Unless earlier terminated or as otherwise provided herein,
the term of this Agreement shall extend until the end of such period as
IMMUNOGEN is obligated to pay royalties to MORPHOSYS pursuant to Section 4.9
hereof (the "Term").
8.2 TERMINATION.
-----------
(a) This Agreement and the rights and options granted herein
may be terminated by either Party upon any material breach by
the other Party of any material obligation or condition,
effective [______________] after giving written notice to the
breaching Party of such termination in the case of a payment
breach and [_______________] after giving written notice to
the breaching Party of such termination in the case of any
other breach, which notice shall describe such
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Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
breach in reasonable detail. The foregoing notwithstanding, if
such default or breach is cured or shown to be non-existent
within the aforesaid [____________] or [________] period, the
notice shall be deemed automatically withdrawn and of no
effect. However, prior to giving any notice for breach, the
Parties shall first attempt to resolve any disputes as to the
existence of any breach as set forth in Section 9.18.
(b) If either Party files for protection under bankruptcy
laws, makes an assignment for the benefit of creditors,
appoints or suffers appointment of a receiver or trustee over
its property, files a petition under any bankruptcy or
insolvency act or has any such petition filed against it which
is not discharged within sixty (60) days of the filing
thereof, then the other Party may terminate this Agreement by
notice to such Party.
(c) IMMUNOGEN, in its sole discretion, at any time may
terminate this Agreement, and the rights and obligations
hereunder, or may remove any Licensed Product and the licenses
related thereto from operation of this Agreement, in any case
effective [__________] (i) [_________________] after
[________________ ______________], if [_________________] is
given [_________________] for the [_________________], or (ii)
[_________________] after [______________ ______________], if
[_________________] is given [______________________
_____________________]. In the event of any termination under
this Section 8.2(c) only as to a Licensed Product, (1) the
consequences set forth in Section 8.3(a) below relating to
termination of the Agreement under this Section 8.2(c) shall
apply only with respect to such terminated Licensed Product,
and this Agreement and the rights and obligations hereunder
shall continue in full force and effect as to any and all
other Licensed Products, and (2) [_________
______________________________________________________________
(including [_______ __________)_______________] as of
[________] ) and [________________
_____________________________________] so as to
[_________________] to
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Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[____________________________________________________________
__________________________].
(d) If, despite using the efforts and resources specified in
Section 2.1.1 during the Collaboration Term, (1) the Parties
fail to meet any Success Criteria within the respective
timelines specified in the Collaboration Plan for any
IMMUNOGEN Target, and the JSC has decided to terminate the
Collaboration Program or (2) the last Success Criteria has not
been met within the total timeline given in the Collaboration
Plan or its extension as set forth in Section 2.3.2, then
along with the related Deliverables, all relevant licenses and
obligations hereunder shall terminate with respect to such
IMMUNOGEN Target with the consequences as set forth in Section
8.3(a) below, unless the Parties otherwise mutually agree. In
the event that efforts are unsuccessful with respect to all
IMMUNOGEN Targets, this Agreement shall terminate in its
entirety upon the expiration of the Collaboration Term and the
consequences as set forth in Section 8.3(a) below shall apply
mutatis mutandis.
8.3 EFFECT OF TERMINATION.
(a) Termination resulting in rights passing to MORPHOSYS.
(i) Upon termination of this Agreement by MORPHOSYS
pursuant to Sections 8.2 (a) or (b) above or by IMMUNOGEN
pursuant to Section 8.2(c) above or by operation of Section
8.2(d) above, (A) IMMUNOGEN shall cease all uses of
Collaboration Data, Collaboration Materials, Clinical Data,
and Collaboration Inventions, as well as sales of all Licensed
Products covered by the terminated license(s), and (B) all
rights included in the relevant licenses granted by MORPHOSYS
to IMMUNOGEN hereunder shall immediately and automatically
revert to MORPHOSYS. Without limiting the generality of the
foregoing, all relevant licenses and sublicenses granted by
MORPHOSYS to IMMUNOGEN hereunder with respect to Licensed
Products shall terminate
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
automatically and IMMUNOGEN shall promptly transfer to
MORPHOSYS all related documents, instruments, records and data
relevant to the development or commercialization of the
relevant Licensed Product(s) generated or developed by or on
behalf of IMMUNOGEN during the Term of this Agreement, along
with all related Collaboration Data, Clinical Data,
Collaboration Material in its possession, without retaining
any copies of any of the foregoing.
(ii) In addition, upon any termination of this
Agreement by MORPHOSYS pursuant to Sections 8.2(a) or (b)
above or by IMMUNOGEN pursuant to Section 8.2(c) above or by
operation of Section 8.2(d) above, (A) IMMUNOGEN shall be
deemed without any further action [__________________________]
an [___________________________________] (including
[________________ _______]) under [_______________________] in
[_________________
_____________________________________________________________]
to the
[____________________________________________________________]
that are the subject of [___________________________________].
Nothing in this Section 8.3(a) shall limit any rights
expressly granted to either Party in Article 3 hereof, which
survive any such termination.
(b) Termination resulting in rights passing to IMMUNOGEN. Upon
any termination of this Agreement by IMMUNOGEN pursuant to
Section 8.2(a) or (b) above, (A) the [_______________________
__________________________________________________________](B)
IMMUNOGEN shall [___________] the [__________________________]
[____________________________________________________________]
for the [____________] and (C) MORPHOSYS shall be deemed
without any further action [__________________________]
an [______________________________________](including [______
____________________], under [_______________________________
_____________________________________________________________
_____________________________________________________________
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[_____________________________________________________________
________________________________________________________
______ for use ________].
(c) Documentation. At the request of the non-breaching Party,
the breaching Party shall execute and deliver such bills of
sale, assignments and licenses and other documents as may be
necessary to fully vest in the non-breaching Party all right,
title and interest to which it is entitled as aforesaid
pursuant to this Section 8.3.
(d) Payment Obligations. IMMUNOGEN shall have no obligation to
make any milestone or royalty payment to MORPHOSYS that has
not accrued prior to the effective date of such termination,
but shall remain liable for all obligations accruing prior to
termination.
(e) [_________________].
(i) Upon termination of this Agreement [________________
_________________________________] to [_______________________
_________] that is the
[___________________________________________ _____________] ,
provided that [_____________________________
_________________________] (A) [______________________] shall
[_____________________________________________________________
_____________________] (which [_____________________________]
to [____ _______________]) and (B) and
[______________________________________
______________________________________________________________
______]. As used herein, the term "[_________________]" shall
mean [_______
____________________________________________________________]
of a [_________________], including, without limitation, with
respect to [_________________] (A) the [___________
________________], including, without limitation,
[____________________ ________________]; (B)
[__________________________________________
______________________________________] and are based
[__________
________________________________________________________]; (C)
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[_____________________________________________________________
_____________________] under clause (A) above, including,
without limitation,
[___________________________________________________________];
and (D) [_______________ __________________________].
(ii) [__________________________________________________
_________________________________] , provide
[_________________] with a
[___________________________________________________________].
Upon [_________________] from [___________________] and
[________________________________________] an [_______________
_________________] of
[_________________________________________ ___________] and
[_________________] to[___________________________
____________________________________________________________]
for purposes of [_____________________ _______]. In every case
[___________] must have [_____________] into a
[___________________________________________________________]
of this Agreement and [__________________________________
_______] by [_________________] to [________________________]
and [________________________________________. ___________]
shall [________ _________________________________________] and
the [_______
__________._______________________________._________________.
_____________________________________________________________]
of this Agreement.[____________________________] or
[______________] in the [_______] of
[______________________________ _______________].
8.4 REMEDIES. If either Party shall fail to perform or observe or
otherwise breaches any of its material obligations under this Agreement, in
addition to any right to terminate this
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
Agreement, the non-defaulting Party may elect to obtain other relief and
remedies available under law, subject to compliance with the provisions of
Section 9.18.
8.5 SURVIVING PROVISIONS. Notwithstanding any provision herein to the
contrary, the rights and obligations set forth in Sections 1, 5, 6, 7, 8.3, and
9 hereof shall survive the expiration or termination of the Term of this
Agreement.
9. MISCELLANEOUS
9.1 MORPHOSYS REPRESENTATIONS. MORPHOSYS represents and warrants that:
(a) the execution and delivery of this Agreement and the performance of the
transactions contemplated hereby have been duly authorized by all appropriate
MORPHOSYS corporate action; (b) MORPHOSYS is under no obligation which is
inconsistent with this Agreement; and (c) MORPHOSYS has the full right and legal
capacity to grant the rights to IMMUNOGEN pursuant to Article 3 without
violating its obligations to or the rights of any third party.
9.2 IMMUNOGEN REPRESENTATIONS. IMMUNOGEN represents and warrants that:
(a) the execution and delivery of this Agreement and the performance of the
transactions contemplated hereby have been duly authorized by all appropriate
IMMUNOGEN corporate action; (b) IMMUNOGEN is under no obligation which is
inconsistent with this Agreement; and (c) IMMUNOGEN has the full right and legal
capacity to grant the rights to MORPHOSYS pursuant to Article 3 without
violating its obligations to or the rights of any third party.
9.3 NO WARRANTIES.
(a) Nothing in this Agreement is or shall be construed
as:
(i) a warranty or representation by either Party
as to the validity or scope of any
application or patent licensed hereunder;
(ii) a warranty or representation that anything
made, used, sold or otherwise disposed of
under any license granted pursuant to this
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
Agreement is or will be free from
infringement of patents, copyrights, and
other rights of third parties;
(iii) obligating either Party to commercialize
inventions made hereunder or to perform any
additional work beyond that set forth in the
Collaboration Plan and in Section 3.3.
(b) Except as expressly set forth in this Agreement, NEITHER
PARTY MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR
IMPLIED WARRANTIES OF MErcHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, OR OF NON-INFRINGEMENT OF ANY PATENT,
COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR
IMPLIED WARRANTIES.
9.4 [__________]. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR
OTHERWISE, [_________________] WILL BE [_________________ ___________] OF THIS
AGREEMENT [________________________________________________] FOR (I) [_________
____________________________________________________________] OR (II)
[_________________________________________________________ ____________].
9.5 NOTICES. Any notices, requests, deliveries, approvals or consents
required or permitted to be given under this Agreement to IMMUNOGEN or MORPHOSYS
shall be in writing and shall be personally delivered or sent by telecopy (with
written confirmation to follow via United States first class mail), overnight
courier providing evidence of receipt or certified mail, return receipt
requested, postage prepaid, in each case to the respective address specified
below (or to such address as may be specified in writing to the other Party
hereto):
MORPHOSYS: Lena-Christ-Str. 48
82152 Martinsried
Munich, Germany
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
Attn: Chief Executive Officer
Telecopy: 011-49-89-899-27-222
With a copy to : Ronald J. Kamis, Esq.
Foley & Lardner
3000 K Street, N. W., Washington Harbor
Washington, D.C. 20007
Telecopy: 202-672-5399
IMMUNOGEN: IMMUNOGEN, INC.
128 Sidney Street
Cambridge, Massachusetts 02139
Attn: Chief Executive Officer
With a copy to : Mintz, Levin, Cohn, Ferris. Glovsky & Popeo, P.C.
One Financial Center
Boston, Massachusetts 02111
Attn: Jeffrey M. Wiesen, Esq.
Telecopy: 617-542-2241
Such notices shall be deemed to have been sufficiently given on: (i)
the date delivered if delivered in person or transmitted by telecopy, (ii) the
next business day after dispatch in the case of overnight courier or (iii) five
(5) business days after deposit in the U.S. mail in the case of certified mail.
9.6 GOVERNING LAW. This Agreement will be construed, interpreted and
applied in accordance with the laws of Delaware (excluding its body of law
controlling conflicts of law) and, where appropriate, the United States of
America.
9.7 LIMITATIONS. Except as set forth elsewhere in this Agreement,
neither Party grants to the other Party any right or license to any of its
intellectual property.
9.8 ENTIRE AGREEMENT. This is the entire Agreement between the Parties
with respect to the subject matter hereof and supersedes all prior agreements
between the Parties with respect to the subject matter hereof. No modification
shall be effective unless in writing with specific reference to this Agreement
and signed by the Parties.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
9.9 WAIVER. The terms or conditions of this Agreement may be waived
only by a written instrument executed by the Party waiving compliance. The
failure of either Party at any time or times to require performance of any
provision hereof shall in no manner affect its rights at a later time to enforce
the same. No waiver by either Party of any condition or term shall be deemed as
a continuing waiver of such condition or term or of another condition or term.
9.10 HEADINGS. Section and subsection headings are inserted for
convenience of reference only and do not form part of this Agreement.
9.11 ASSIGNMENT. This Agreement may not be assigned by either Party
without the consent of the other, except that each Party may, without such
consent, assign this Agreement and the rights, obligations and interests of such
Party, in whole or in part, to any of its Affiliates, to any purchaser of all or
substantially all of its assets in the line of business to which this Agreement
pertains or to any successor corporation resulting from any merger or
consolidation of such Party with or into such corporations.
9.12 FORCE MAJEURE. Neither Party shall be liable for failure of or
delay in performing obligations set forth in this Agreement, and neither shall
be deemed in breach of its obligations, if such failure or delay is due to
natural disasters or any causes beyond the reasonable control of such Party. In
event of such force majeure, the Party affected thereby shall use reasonable
efforts to cure or overcome the same and resume performance of its obligations
hereunder.
9.13 CONSTRUCTION. The Parties hereto acknowledge and agree that: (i)
each Party and its counsel reviewed and negotiated the terms and provisions of
this Agreement and have contributed to its revision; (ii) the rule of
construction to the effect that any ambiguities are resolved against the
drafting Party shall not be employed in the interpretation of this Agreement;
and (iii) the terms and provisions of this Agreement shall be construed fairly
as to all Parties hereto and not in a favor of or against any Party, regardless
of which Party was generally responsible for the preparation of this Agreement.
9.14 SEVERABILITY. If any provision(s) of this Agreement are or become
invalid, are ruled illegal by any court of competent jurisdiction or are deemed
unenforceable under then
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
current applicable law from time to time in effect during the Term hereof, it is
the intention of the Parties that the remainder of this Agreement shall not be
affected thereby provided that a Party's rights under this Agreement are not
materially affected. The Parties hereto covenant and agree to renegotiate any
such term, covenant or application thereof in good faith in order to provide a
reasonably acceptable alternative to the term, covenant or condition of this
Agreement or the application thereof that is invalid, illegal or unenforceable,
it being the intent of the Parties that the basic purposes of this Agreement are
to be effectuated.
9.15 STATUS. Nothing in this Agreement is intended or shall be deemed
to constitute a partner, agency, employer-employee, or joint venture
relationship between the Parties.
9.16 INDEMNIFICATION.
(a) IMMUNOGEN shall indemnify, defend and hold harmless
MORPHOSYS, its Affiliates and their respective directors,
officers, employees, and agents and their respective
successors, heirs and assigns (the "MORPHOSYS Indemnitees"),
against any liability, damage, loss or expense (including
reasonable attorneys' fees and expenses of litigation)
incurred by or imposed upon the MORPHOSYS Indemnitees, or any
of them, in connection with any claims, suits, actions,
demands or judgments of third parties, including without
limitation personal injury and product liability matters
(except in cases where such claims, suits, actions, demands or
judgments result from gross negligence or willful misconduct
on the part of MORPHOSYS) arising out of or relating to any
actions of IMMUNOGEN or any Affiliate, licensee, sublicensees,
distributor or agent of IMMUNOGEN under this Agreement or in
the development, testing, production, manufacture, promotion,
import, sale or use by any person of any Licensed Product
manufactured or sold by IMMUNOGEN or by an Affiliate,
Sublicensee, distributor or agent of IMMUNOGEN.
(b) If and only if MORPHOSYS commercializes an Antibody
Product, MORPHOSYS shall indemnify, defend and hold harmless
IMMUNOGEN, its Affiliates and their respective directors,
officers, employees, and agents and their
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
respective successors, heirs and assigns (the "IMMUNOGEN
Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of
litigation) incurred by or imposed upon the IMMUNOGEN
Indemnitees, or any of them, in connection with any claims,
suits, actions, demands or judgments of third parties,
including without limitation personal injury and product
liability matters (except in cases where such claims, suits,
actions, demands or judgments result from gross negligence or
willful misconduct on the part of IMMUNOGEN) arising out of or
relating to any actions of MORPHOSYS or any Affiliate,
licensee, sublicensees, distributor or agent of MORPHOSYS
under this Agreement or in the development, testing,
production, manufacture, promotion, import, sale or use by any
person of the commercialized Antibody Product manufactured or
sold by MORPHOSYS or by an Affiliate, Sublicensee, distributor
or agent of MORPHOSYS.
(c) Indemnitees shall promptly notify the indemnifying party
of any action or claim for which it is to be indemnified
hereunder.
9.17 FURTHER ASSURANCES. Each Party agrees to execute, acknowledge and
deliver such further instructions, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
9.18 DISPUTE RESOLUTION.
(a) The Parties recognize that disputes as to certain matters
may from time to time arise during the term of this Agreement
which relate to either Party's rights and/or obligations
hereunder. It is the objective of the Parties to establish
procedures to facilitate the resolution of disputes arising
under this Agreement in an expedient matter by mutual
cooperation and without resort to litigation. To accomplish
this objective, the Parties agree to follow the procedures set
forth in this Section 9.18 if and when a dispute arises under
this Agreement between the Parties or among the Joint Steering
Committee.
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(b) If the Parties or the Joint Steering Committee cannot
resolve any such dispute by good faith negotiations, which
good faith negotiations both Parties agree to undertake within
20 days of formal request by either Party to the other, any
Party may, by written notice to the other, have such dispute
referred to the Chief Executive Officers of both Parties for
attempted resolution by good faith negotiations within 30 days
after such notice is received.
(c) Any such dispute arising out of or relating to this
Agreement (except disputes relating to patent validity,
enforceability and/or infringement, which disputes shall not
be subject of this Section 9.18), which is not resolved
between the Parties or the Joint Steering Committee or the
Chief Executive Officers of the Parties pursuant to Section
9.18(b), shall be resolved by final and binding arbitration
conducted in Boston, Massachusetts under the then current
rules of the American Arbitration Association ("AAA"). The
arbitration shall be conducted by three arbitrators who are
knowledgeable in the subject matter which is at issue in the
dispute. Each party selects within two weeks after
notification by one party to initiate arbitration one arbiter
and the arbiters selected by the parties elect the chairman of
the arbitration panel, or, failing such election within four
weeks after nomination of the arbiters by the parties the
chairman of the arbitration panel, shall be selected according
to the AAA rules. In conducting the arbitration, the
arbitrator shall be able to decree any and all relief of an
equitable nature, including but not limited to such relief as
a temporary restraining order, a preliminary injunction, a
permanent injunction, or replevin of property. The arbitrator
shall also be able to award actual damages, but shall not
award any other form of damage (e.g., consequential,
incidental, punitive or exemplary damages). The Parties shall
share equally the arbitrator's fees and expenses pending the
resolution of the arbitration unless the arbitrator, pursuant
to his or her right but not his or her obligations, requires
the non-prevailing Party to bear all or any portion of the
costs of the prevailing Party. The decision of the arbitrator
shall be
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final and may be sued on or enforced by the Party in whose
favor it runs in any court of competent jurisdiction at the
option of such Party.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representative in two (2) originals.
IMMUNOGEN, INC. MORPHOSYS AG
_______________________ ________________________
By: By:
Title: Title:
_________________________
By:
Title:
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APPENDIX 1.8
Collaboration Plan
[___________________________________________________________________________]
DELIVERY OF [_________________]
Success criteria
[_________________]
Workplan
1.) [_________________]
2.) [_________________]
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------
DETAILS COMMENTS DURATION
<S> <C> <C>
</TABLE>
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<TABLE>
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
1) [__________] [__________] [__________] BEST CASE:
[_________]
WORST CASE:
[_________]
------------------------------------------------------------------------------------------------------------------------
2) [__________] [__________] [__________]
------------------------------------------------------------------------------------------------------------------------
3) [__________] [__________] [__________]
------------------------------------------------------------------------------------------------------------------------
4) [__________] [__________] [__________]
------------------------------------------------------------------------------------------------------------------------
5) [__________] [__________] [__________]
------------------------------------------------------------------------------------------------------------------------
6) [__________] [__________] [__________]
------------------------------------------------------------------------------------------------------------------------
GOAL 1: [____________________]
------------------------------------------------------------------------------------------------------------------------
7) [__________] [__________] [__________] BEST CASE:
[_________]
WORST CASE:
[_________]
------------------------------------------------------------------------------------------------------------------------
GOAL 1: [____________________]
------------------------------------------------------------------------------------------------------------------------
</TABLE>
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<TABLE>
------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
8) [__________] [__________] [__________] BEST CASE:
[_________]
WORST CASE:
[_________]
------------------------------------------------------------------------------------------------------------------------
GOAL 2: [____________________]
------------------------------------------------------------------------------------------------------------------------
</TABLE>
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APPENDIX 1.16
IMMUNOGEN TARGET LIST
[___________________]
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APPENDIX 1.21
MORPHOSYS HuCAL Technologies
[________________________________]
1. [__________] is a [_______________________________________________
___________________] used for [____________________________. _____
___________________________]. The [_____] of [__________] as well as
[__________] are
[__________________________________________________________________].
The [__________________] was determined to be [__________________].
2. [___________________________________].
3. The [___________________] with [___________________________________
__________].
4. [__________] are available for [__________].
[__________________]
1. [____________________________________________________________________].
2. [______________________________________________________] and can be
used to [__________________]. It
[___________________.[____________________________ __________] at the
[_________________________________] useful for [__________
_______________________] using the [__________], followed by
[________________ _______________________] useful for [__________].
[__________]
1. [____________________________________________________________________]
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Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[__________]
1. [______________________________________________] for the [__________]
of [_______________________________________________________].
2. [____________________] the [____________________] of
[______________________________] into [__________].
3. [____________________________________________________________________].
The [___________________________________________] for [_________
__________________________].
4. [______________________________________________].
5. [_______________________________________________________]. The [____
____________________________________________________________________].
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
APPENDIX 3.2
SUBLICENSE OF CERTAIN RIGHTS
1) [________________________] in relation to [____________].
[_____________________________________________________________________
______________________________________________________________________
_____________________________________________________________________].
2) [____________________________] in relation to [____________________
___________]:
[___________________________________________________________________].
3) [________________] in relation [_____________________________________]:
[____________]
<TABLE>
<CAPTION>
--------------------------------------------------------------------------------------------------------------------
COUNTRY SERIAL NUMBER FILING DATE PATENT NUMBER ISSUE DATE STATUS
--------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
[________] [________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
[________] [________] [________] [________] [________]
--------------------------------------------------------------------------------------------------------------------
</TABLE>
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[________________________________]
Title: [___________________________________________________]
Inventors: [__________________________________]
1) Based on [____________], which is a [________________________________
________________________]
<TABLE>
<CAPTION>
COUNTRY SERIAL NO. PATENT NO.
<S> <C> <C>
[________] [________] [________]
[________] [________] [________]
[________] [________] [________]
[________] [________] [________]
[________] [________] [________]
[________] [________] [________]
</TABLE>
2) Based on [_________________] which [__________________] which is
[______ _____________________________________], which is [____________
___________ _________________]
<TABLE>
<CAPTION>
COUNTRY SERIAL NO. PATENT NO.
<S> <C> <C>
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
</TABLE>
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
[____________________________]
<TABLE>
<S> <C> <C>
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____]
</TABLE>
3) Based on [____________________________________] which is [____________
___________________________________________________________________] and
[_____________________________________________________________________].
<TABLE>
<CAPTION>
COUNTRY SERIAL NO. PATENT NO.
<S> <C> <C>
[_____] [_____]
[_____] [_____]
[_____] [_____]
[_____] [_____]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
</TABLE>
[___________________________________________]
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
TITLE: [_________________________________]
INVENTORS: [________]
Based on [_________________________________________________]
<TABLE>
<CAPTION>
COUNTRY SERIAL NO. PATENT NO.
<S> <C> <C>
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____] [________]
[_____] [_____]
</TABLE>
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Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
APPENDIX 3.6
GOOD FAITH ESTIMATE OF AGGREGATE COSTS FOR ANTIBODY OPTIMIZATION
Based on an FTE rate of [_____________], the estimate for antibody optimization
aggregate costs is [________________________] based upon [_________________] and
may vary depending on the amount of work needed.
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Morphosys - Immunogen Collaboration and License Agreement Execution Copy
APPENDIX 5.3
Press Release
Cambrdige, Massachusetts and Munich, Germany, October 2, 2000
MORPHOSYS ENTERS CANCER COLLABORATION WITH IMMUNOGEN
MorphoSys AG (Neuer Markt: MOR), the German biotechnology company based in
Munich/Martinsried, today announced a collaboration with ImmunoGen, Inc.
(NASDAQ: IMGN), a Cambridge, Massachusetts-based biotechnology company. The two
companies will collaborate on the development of human antibodies for the
treatment of cancer. Under the agreement, MorphoSys will receive a technology
access payment, as well as development-related milestone payments and royalties
on marketed products. Financial details were not disclosed.
In the collaboration, MorphoSys will apply its HuCAL-Fab technology to discover
and optimize fully human antibodies against an unspecified ImmunoGen cell
surface target associated with a number of forms of cancer. ImmunoGen will be
responsible for developing one or more antibodies generated by MorphoSys into a
marketable product.
"We are delighted to be collaborating with ImmunoGen, a company with great
experience in the development of antibody-based cancer therapeutics", commented
Daniel L. Menichella, President, MorphoSys USA and Senior Vice President of
Corporate Development. "This deal, our sixth this year, is another example of
our ability to form partnerships based on our HuCAL technology with companies
committed to developing fully human antibodies."
"We look forward to working with MorphoSys in this program. We believe their
antibody library is the best technology available for rapid generation of human
antibodies to our target," said Walter A. Blattler, Ph.D., Executive Vice
President, Science and Technology, ImmunoGen. "This program is a part of our
strategy of developing antibody-based products from targets generated by our
Apoptosis Technology, Inc. subsidiary, and is an example of our efforts to fill
our pipeline of internally-developed products."
MorphoSys develops and applies innovative technologies for the production of
synthetic antibodies which accelerate drug discovery and target
characterisation. Founded in 1992, the Company's proprietary Human Combinatorial
Antibody Library (HuCAL) technology is used by researchers world-wide for human
antibody generation. The Company currently has licensing and research
collaborations with Bayer (Berkeley, California/USA), Roche AG
(Basel/Switzerland), DuPont Pharmaceuticals (Wilmington, Delaware/USA),
Millennium (Cambridge, Mass/USA), Chiron (Emeryville, California/USA), GPC
Biotech AG (Munich/Germany) ProChon Biotech (Revohot/Israel) and Eos
Biotechnology (South San Francisco/California/USA).
ImmunoGen, Inc. develops innovative biopharmaceuticals, primarily for cancer
treatment. The
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Company creates potent tumor-activated prodrugs (TAPs), consisting of small
molecular, cytotoxic drugs coupled to monoclonal antibodies for delivery to and
destruction of cancer cells. The most advanced TAP, huC242-DM1/SB-408075,
designed to treat colorectal and pancreatic cancer, is in two Phase I/II human
clinical studies. The Company's subsidiary, Apoptosis Technology, Inc. (ATI),
identifies defects in apoptosis - also known as cell suicide -- pathways.
Besides MorphoSys, the company has collaborations with SmithKline Beecham,
Genentech, Abgenix and British Biotech.
Statements included in this press release which are not historical in nature are
intended to be, and are hereby identified as, "forward-looking statements" for
purposes of the safe harbour provided by Section 21E of the Securities Exchange
Act of 1934, as amended by the Private Securities Litigation Reform Act of 1995.
Forward-looking statements may be identified by words including "anticipates",
"believes", "intends", "estimates", "expects" and similar expressions. The
companies caution readers that forward-looking statements, including without
limitation those relating to the companies' future operations and business
prospects, are subject to certain risks and uncertainties that could cause
actual results to differ materially from those indicated in the forward-looking
statements. Factors that may affect future operations and business prospects
include, but are not limited to, clinical and scientific results and
developments concerning corporate collaborations and the companies' proprietary
rights, uncertainties related to operations and other factors described in the
Offering Circular of MorphoSys dated March 5, 1999 relating to the company's
public offering. The companies are not undertaking any obligation to release
publicly any updates to any forward-looking statements to reflect events or
circumstances after the date of this release or to reflect the occurrence of
unanticipated events.
FOR FURTHER INFORMATION PLEASE CONTACT:
MORPHOSYS AG MORPHOSYS AG
Lisa Richert, Head of PR Dave Lemus; Chief Financial Officer
Tel.: +49 (0) 89 / 899 27-122 Tel: +49 (0) 89 / 899 27-439
Fax: +49 (0) 89 / 899 27-5122 Fax: +49 (0) 89 / 899 27-5309
[email protected] [email protected]
www.morphosys.de www.morphosys.de
IMMUNOGEN
Mitchel Sayare; Chairman and CEO
Tel: (617)995-2500
Fax: (617)995-2510
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[email protected]
www.immunogen.com
- Redacted version of 1381142
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