RESEARCH AND LICENSE AGREEMENT
BETWEEN
DENDREON CORPORATION
AND
KIRIN BREWERY CO., LTD.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
ARTICLE 1 DEFINITIONS.................................... 1
1.1 "Affiliate".................................... 1
1.2 "Collaboration Discoveries".................... 2
1.3 "Collaboration Patent"......................... 2
1.4 "Collaboration Product"........................ 2
1.5 "Collaboration Technology"..................... 2
1.6 "Controlled"................................... 2
1.7 "Dendreon Technology".......................... 2
1.8 "Dendreon Territory"........................... 2
1.9 "Dendritic Cell"............................... 2
1.10 "Field"........................................ 2
1.11 "FTE".......................................... 2
1.12 "Information".................................. 3
1.13 "Joint Research Committee" or "JRC"............ 3
1.14 "Joint Territory".............................. 3
1.15 "Kirin/Dendreon Term Sheet".................... 3
1.16 "Kirin Technology"............................. 3
1.17 "Kirin Territory".............................. 3
1.18 "License Agreement"............................ 3
1.19 "Net Revenue".................................. 3
1.20 "Patent"....................................... 3
1.21 "Reasonable Efforts"........................... 3
1.22 "Regulatory Approval".......................... 4
1.23 "Research Plan"................................ 4
1.24 "Research Program"............................. 4
1.25 "Research Term"................................ 4
1.26 "Start Date"................................... 4
1.27 "Sublicensee".................................. 4
1.28 "Third Party".................................. 4
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
1
ARTICLE 2 COLLABORATIVE RESEARCH......................... 4
2.1 Collaborative Research......................... 4
2.2 Joint Research Committee....................... 5
2.3 JRC Meetings................................... 5
2.4 Decision-Making and Issue Resolution........... 6
2.5 Research Plan.................................. 6
2.6 Research Efforts and Expenses.................. 7
2.7 Other Research................................. 7
ARTICLE 3 LICENSES AND RIGHTS............................ 7
3.1 Research License to Kirin...................... 7
3.2 Research License to Dendreon................... 8
3.3 Commercial License to Dendreon................. 8
3.4 Sublicenses to Third Parties................... 8
ARTICLE 4 DEVELOPMENT AND COMMERCIALIZATION.............. 8
4.1 Kirin Territory................................ 8
4.2 Dendreon Territory............................. 9
4.3 Joint Territory................................ 9
ARTICLE 5 FEES AND ROYALTIES............................. 9
5.1 Sales of Collaboration Products by Kirin....... 9
5.2 Sales of Collaboration Products by Dendreon.... 9
5.3 Royalty Reduction.............................. 10
5.4 Payment of Royalties........................... 10
5.5 Manner of Payment.............................. 10
5.6 Reports........................................ 10
5.7 Records and Audit.............................. 10
5.8 Withholding of Taxes........................... 11
ARTICLE 6 CONFIDENTIALITY................................ 11
6.1 Confidentiality................................ 11
6.2 Exceptions..................................... 11
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
2
6.3 Authorized Disclosure.......................... 12
6.4 Survival....................................... 12
ARTICLE 7 INTELLECTUAL PROPERTY.......................... 12
7.1 Ownership...................................... 12
7.2 Kirin Responsibility for Patent Filings........ 12
7.3 Enforcement Rights............................. 12
7.4 Third Party Patent Rights...................... 13
7.5 Third Party Claims in the Kirin Territory...... 13
7.6 Third Party Claims in the Dendreon Territory... 13
7.7 Third Party Royalties.......................... 13
ARTICLE 8 REPRESENTATIONS AND WARRANTIES................. 14
ARTICLE 9 REPORTS, RECORDS AND SAMPLES................... 14
9.1 Sharing of Information......................... 14
9.2 Materials...................................... 14
9.3 Publicity Review............................... 15
9.4 Publications................................... 15
ARTICLE 10 TERM AND TERMINATION........................... 15
10.1 Term........................................... 15
10.2 Termination for Breach......................... 15
10.3 Surviving Rights............................... 16
ARTICLE 11 INDEMNIFICATION................................ 16
11.1 Indemnification in Kirin Territory............. 16
11.2 Indemnification in the Dendreon Territory...... 16
ARTICLE 12 MISCELLANEOUS.................................. 16
12.1 Assignment..................................... 16
12.2 Retained Rights................................ 17
12.3 Force Majeure.................................. 17
12.4 Further Actions................................ 17
12.5 No Trademark Rights............................ 17
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
3
12.6 Notices........................................ 17
12.7 Dispute Resolution............................. 18
12.8 Waiver......................................... 18
12.9 Severability................................... 19
12.10 Ambiguities.................................... 19
12.11 Entire Agreement............................... 19
12.12 Headings....................................... 19
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
4
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
EXHIBIT 10.16
RESEARCH AND LICENSE AGREEMENT
THIS RESEARCH AND LICENSE AGREEMENT (the "Agreement") is made and entered
into effective as of February 1, 1999 (the "Effective Date") by and between
DENDREON CORPORATION, a Delaware corporation having its principal place of
business at 3005 1st Avenue, Seattle, Washington, U.S.A. ("Dendreon"), and KIRIN
BREWERY CO., LTD., a corporation organized and existing under the laws of Japan
having its principal place of business at 10-1, Shinkawa 2-chome, Chuo-ku,
Tokyo, Japan ("Kirin"). Dendreon and Kirin may be referred to herein
collectively as the "Parties" or individually as a "Party."
RECITALS
A. In regard to Dendreon Technology (as defined below) and utilization
thereof for human immunotherapy, Kirin and Dendreon entered into on June 30,
1998 the Kirin/Dendreon Term Sheet, as hereinafter defined. Further, on
December 10, 1998, Kirin and Dendreon entered into the Collaborative License
Agreement (hereinafter defined as the "License Agreement") granting certain
licenses and other rights to Kirin Products and Dendreon Products, as defined
therein.
B. Kirin and Dendreon desire to conduct certain collaborative research
with the goal of creating improvements to the underlying Dendreon dendritic cell
technology, discovering new immunotherapy targets, and/or developing new
dendritic cell-based immunotherapy products for use to prevent or treat
diseases.
C. Kirin desires to obtain the rights to develop and commercialize
products based on the results of such collaborative research in the Kirin
Territory, and Dendreon desires to obtain the rights to develop and
commercialize such products in the Dendreon Territory.
NOW, THEREFORE, the Parties agree as follows:
ARTICLE 1
DEFINITIONS
The following capitalized terms shall have the following meanings when used
in this Agreement:
1.1 "Affiliate" means, with respect to a particular Party, a person,
corporation or other entity that, directly or indirectly, through one or more
intermediaries, controls, is controlled by or is under common control with such
Party. For the purposes of this definition, "control" means the direct or
indirect ownership by a Party of at least fifty percent (50%) of the outstanding
voting securities of the controlled entity; provided, that in any country where
the law does not permit foreign equity ownership of at least fifty percent
(50%), then with respect to
1
corporations organized under such country's laws, "control" shall mean the
direct or indirect ownership by a Party of outstanding voting securities of such
corporation at the maximum amount permitted by the law of such country.
1.2 "Collaboration Discoveries" means any Information that is created,
developed or discovered pursuant to a Party's activities under the Research
Program. It is agreed that the all Dendreon Technology and Kirin Technology is
excluded from the definition of "Collaboration Discoveries."
1.3 "Collaboration Patent" means any Patent or application for a Patent
that claims an invention in Collaboration Discoveries.
1.4 "Collaboration Product" means any commercial product that comprises
or contains, or is developed or manufactured based on or utilizing or is derived
from, the Collaboration Technology or any part thereof, but excluding all Kirin
Products and Dendreon Products (as such terms are defined in the License
Agreement).
1.5 "Collaboration Technology" means the Collaboration Discoveries and
Collaboration Patents, either collectively or any part thereof.
1.6 "Controlled" means, with respect to a particular item, material, or
intellectual property right, that a Party owns or has a license under such item,
material or intellectual property right and has the ability to grant to the
other Party access to and/or a license or sublicense under such item, material
or intellectual property right as provided for herein without violating the
terms of any agreement or other arrangement with, or the rights of, any Third
Party.
1.7 "Dendreon Technology" means the Dendreon Know-How, the Dendreon
Improvements and the Dendreon Patents, either collectively or any part thereof,
as such terms are defined in the License Agreement.
1.8 "Dendreon Territory" means all countries of the world and all
territories and possessions thereof, excluding all countries, territories and
possessions within the Kirin Territory and the Joint Territory.
1.9 "Dendritic Cell" means a human dendritic cell or other antigen-
presenting cell or other cells from which dendritic cells can be derived.
1.10 "Field" means the discovery, development, manufacture, use and sale
of products that generally utilize Dendritic Cell separation, antigen
engineering, and antigen or antigen gene delivery to Dendritic Cells for use in
human therapies that are based on, comprise, utilize or are derived from the
Dendreon Technology. The foregoing products may have applications for other
human medical uses, and if Kirin demonstrates to Dendreon's reasonable
satisfaction that such other uses exist, then the Parties agree to negotiate in
good faith an amendment to the Agreement that extends the Field to cover such
additional uses, including such additional amendments as may be needed to
properly cover such products for royalty purposes.
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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1.11 "FTE" means work hours equivalent to the work performed by one full-
time employee working for one year (including normal vacation).
1.12 "Information" means any and all information and data of any kind,
including without limitation techniques, inventions, practices, methods,
knowledge, know-how, skill, experience, test data (including pharmacological,
toxicological and clinical test data), analytical and quality control data,
marketing, cost, sales and manufacturing data and descriptions, compositions,
and assays.
1.13 "Joint Research Committee" or "JRC" means the committee formed by
the Parties to direct and manage the Research Program, as provided in Section
2.2.
1.14 "Joint Territory" means the countries that are members of the
European Union, as such union is constituted at the applicable time.
1.15 "Kirin/Dendreon Term Sheet" means that certain Term Sheet executed
by the Parties and dated as of June 30, 1998.
1.16 "Kirin Technology" means the Kirin Improvements, Kirin Know-How and
Kirin Patents, either collectively or any part thereof, as such terms are
defined in the License Agreement.
1.17 "Kirin Territory" means Japan, Australia, New Zealand, the Peoples
Republic of China (including Hong Kong and Macao), Taiwan, South Korea, North
Korea, Mongolia, Vietnam, Laos, Cambodia, Thailand, Myanmar, Philippines,
Brunei, Singapore, Indonesia and Malaysia.
1.18 "License Agreement" means the Collaborative License Agreement by and
between the Parties dated December 10, 1998.
1.19 "Net Revenue" means the total revenue received by a Party for sale
or other disposition of a Collaboration Product by such Party or an Affiliate or
Sublicensee of such Party to a Third Party less the following to the extent
actually incurred or allowed with respect to such sale or disposition: (i)
reasonable costs paid by the Party to a Third Party on account of apheresis
performed as part of or in association with the Collaboration Product; (ii)
discounts, including cash discounts, or rebates, retroactive price reductions or
allowances actually allowed or granted from the billed amount; (iii) credits or
allowances actually granted upon claims, rejections or returns of Collaboration
Products, including recalls, regardless of the Party requesting such; (iv)
freight, postage, shipping and insurance charges paid for delivery of
Collaboration Product, to the extent billed; and (v) taxes, duties or other
governmental charges levied on or measured by the billing amount when included
in billing, as adjusted for rebates and refunds.
1.20 "Patent" means (i) a valid and enforceable patent, including any
extension, registration, confirmation, reissue, re-examination or renewal
thereof; and (ii) to the extent valid and enforceable rights are granted by a
governmental authority thereunder, a patent application.
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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1.21 "Reasonable Efforts" shall mean efforts and resources commonly used
in the research-based pharmaceutical industry for the research, development and
commercialization of a product at a similar stage in its product life taking
into account the establishment of the product in the marketplace, the
competitiveness of the marketplace, the proprietary position of the product, the
regulatory structure involved, the profitability of the product and other
relevant factors.
1.22 "Regulatory Approval" means any approvals, licenses, registrations
or authorizations of any federal, state or local regulatory agency, department,
bureau or other government entity, necessary for the manufacture, use, storage,
import, transport or sale, of products in a regulatory jurisdiction.
1.23 "Research Plan" means the plan established by the JRC setting forth
in reasonable detail the goals and activities to be undertaken in the Research
Program, performed by the Parties pursuant to Section 2.1.
1.24 "Research Program" means the cooperative research conducted by
Dendreon, in collaboration with Kirin, under this Agreement pursuant to the
Research Plan.
1.25 "Research Term" means the period commencing on the Start Date and
ending on the anniversary thereof, as determined and agreed by the JRC as
provided in Section 2.2.
1.26 "Start Date" means the date, established by mutual agreement of the
Parties, on which the Research Program shall commence, as provided in Sections
2.1 and 2.2.
1.27 "Sublicensee" shall mean any Third Party expressly licensed by a
Party to make and sell one or more Collaboration Products. A Sublicensee shall
not include distributors or sales agents that do no more than purchase and
resell finished Products on behal f of a Party.
1.28 "Third Party" means any entity other than Dendreon or Kirin or an
Affiliate of Dendreon or Kirin.
ARTICLE 2
COLLABORATIVE RESEARCH
2.1 Collaborative Research. Dendreon and Kirin agree that, commencing on
the Start Date as established by mutual agreement, they will conduct a Research
Program on a collaborative basis, with the general goal of developing specific
improvements or extensions to certain of the Dendreon Technology as agreed by
the Parties. The specific scope of the Research Program shall be set forth in
detail in the Research Plan established by the Joint Research Committee, as
provided below. The specific work undertaken by the Parties in the Research
Program shall be governed by the Research Plan and shall be managed and directed
by the JRC. The Research Program shall commence on the Start Date, as provided
in Section 2.2, and terminate at the expiration of the Research Term, unless the
Agreement is earlier terminated as provided in Article 10.
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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2.2 Joint Research Committee. The Research Program will be managed and
directed by the Joint Research Committee, which shall be comprised of four (4)
individuals, two (2) being Dendreon employees appointed and replaced by Dendreon
at its discretion and two (2) being Kirin employees appointed and replaced by
Kirin at its discretion. The size and composition of the JRC may be modified by
mutual agreement of the Parties. The Parties shall form the JRC within twenty
(20) days after the Effective Date of this Agreement. The JRC shall determine,
prior to the Start Date, the length of the Research Term, which shall not exceed
five (5) years without written consent of the Parties, and shall be subject to
early termination as provided in Section 10.1. The JRC shall have the following
authority and obligations:
(a) To encourage and facilitate the ongoing cooperation and
collaboration of the Parties in conducting the Research Program;
(b) To establish, and amend as appropriate, the Research Plan as
discussed further in Section 2.5, which shall govern the specific research tasks
and goals of the Research Program;
(c) To establish and implement specific plans for accomplishing the
tasks and goals of the Research Plan;
(d) To allocate tasks and coordinate activities of the Parties
required to perform the Research Program;
(e) To evaluate the results of the Research Program and discuss
information related to the Research Program, and to amend the Research Plan as
appropriate; and
(f) To ensure that there is appropriate scientific management of the
Research Program.
(g) manage and expedite the progress of Collaboration Products
through the Research Program to development stages.
2.3 JRC Meetings. The JRC shall act at meetings held regularly with all
members present, according to the following:
(a) JRC meetings shall take place at such times and places as shall
be determined by the JRC at least twice a year; it is expected that the meetings
will alternate between appropriate offices of each Party, or at such other
convenient locations as agreed;
(b) If requested by a Party, the JRC may conduct a particular
meeting by telephone or video conference or other acceptable electronic means,
provided that all JRC members attend such meeting and can hear and communicate
with all other members, and any decisions made during such meeting are recorded
in writing and confirmed by signature of at least one of the JRC members from
each of the Parties;
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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(c) A Party may bring a reasonable number of additional
representatives, in a non-voting capacity, to attend appropriate JRC meetings,
provided that such attendance is helpful to the JRC carrying out its tasks and
obligations;
(d) Prior to each meeting, the designated chair of the JRC (which
may vary during the term) shall circulate an agenda for the meeting, and the JRC
shall keep minutes reflecting matters discussed and the actions taken at the
meeting, a copy of which shall be provided to each Party;
(e) The JRC may act on a specific issue or matter without a meeting
if the JRC members all agree as to such action and such agreement is set forth
in a written consent signed by all the members of the JRC;
(f) The JRC may form and subsequently disband subcommittees to
perform such tasks, within the authority of the JRC and on the JRC's behalf, as
are specifically delegated by the JRC. For example, the JRC could create a
subcommittee to address specific technical issues in the Research Plan. Any such
subcommittee shall have appropriate representation of each Party and may include
representatives of a Party who are not members of the JRC. All such
subcommittees shall act only by unanimous agreement of their members at meetings
as determined by the subcommittee. The subcommittees shall report all matters
discussed and actions taken promptly to the JRC in writing. At the request of
either Party at any time, any such subcommittee shall be dissolved and its
powers and functions returned to the Research Committee.
2.4 Decision-Making and Issue Resolution. All decisions of or actions
taken by the JRC or any subcommittee thereof shall be by unanimous approval of
all the members of the JRC or such subcommittee, and voting on any matters shall
be reflected in the minutes of the meeting at which the vote was taken. If the
JRC fails to reach unanimous agreement on an issue or matter needing resolution,
the matter shall be referred for good faith discussion and resolution by the
appropriate senior executive officer of each Parties. If a subcommittee fails to
reach unanimous agreement, the matter shall be referred for further review and
resolution by the JRC.
2.5 Research Plan. Promptly after its formation pursuant to Section 2.2,
the JRC shall develop the initial Research Plan, which shall be provided to each
Party for review and approval. The approved Research Plan shall then govern the
initial work of the Parties under the Research Program and shall establish the
number of FTEs at Dendreon dedicated to conducting the Research Program, which
number shall be six (6) FTEs. The JRC will periodically review the Research Plan
in light of the results of the Research Program and modify, amend or adjust the
Research Plan as needed, provided that such modifications or amendments may not
expand the scope of the Research Program unless agreed by the senior management
of each Party. The Research Plan shall specify, among other things, the
particular Dendreon Technology that shall be the subject of the Research
Program, the specific scope and goals of the research and development work to be
undertaken, the scientific direction and research milestones, and shall give a
general allocation between the Parties of the research responsibilities within
such plan for the research.
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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2.6 Research Efforts and Expenses. Each of the Parties will maintain
scientific staff, laboratories, offices and other facilities necessary to carry
out the Research Program tasks and obligations assigned to it by the JRC. Each
party shall use Reasonable Efforts to conduct and complete such tasks and
obligations and otherwise to achieve the goals of the Research Program. Kirin
will bear all of its own expenses incurred in connection with the Research
Program, including travel expenses. In addition, Kirin will provide to Dendreon
funding to support the Research Program work at Dendreon. Such funding shall be
at an FTE rate, based on the total number of FTEs allocated under the Research
Plan to conduct work at Dendreon on the Research Program, providing that such
funding will be for a total of six (6) FTEs, unless otherwise agreed by the JRC.
The FTE rate initially shall be [ * ] per year per FTE; such rate will be
adjusted upward or downward, commencing on the first January 1 after the Start
Date, and every January 1 thereafter, an amount reflecting any changes (from the
last date the FTE rate was set) in the consumer price index for urban wage
earners in the Seattle region. Kirin shall provide such funding in advance at
the beginning of each calendar quarter during the Research Program. Dendreon
will provide Kirin a summary accounting of its FTE allocation to conduct the
Research Program, within sixty (60) days of the end of each year during the
Research Term. At least thirty (30) days prior to the beginning of each year
during the Research Term, Dendreon shall submit to Kirin a detailed budget which
is consistent with the budget described in the Research Plan approved by the
JRC. Dendreon shall provide Kirin with a detailed quarterly progress report
within thirty (30) days after the end of each calendar quarter.
2.7 Other Research. Dendreon acknowledges and agrees that the specific
research and development work set forth in the Research Plan should be conducted
solely by Dendreon and Kirin. Kirin acknowledges and agrees that nothing in
this Agreement shall prevent or otherwise hinder Dendreon from conducting, and
Dendreon shall retain full rights to conduct, its own independent research and
development work with respect to Dendreon Technology or any aspect thereof for
any use or purpose, and including conducting such research and development work
with or on behalf of third party partners. Dendreon acknowledges and agrees
that nothing in this Agreement shall prevent or otherwise hinder Kirin from
conducting research and development work with respect to Dendreon Technology or
any aspect thereof as permitted in the License Agreement, and including
conducting such research and development work with or on behalf of its
Affiliates in the Kirin Territory to the extent and as permitted in the License
Agreement.
ARTICLE 3
LICENSES AND RIGHTS
3.1 Research License to Kirin.
(a) Subject to the terms of this Agreement, Dendreon hereby grants
to Kirin a non-exclusive (subject to the following restriction) license under
the Dendreon Technology that is the subject of the Research Program solely to
conduct the Research Program activities assigned to Kirin under the Research
Plan. Dendreon further agrees that during the term of the Research
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Program Dendreon will not license to any Third Party any Dendreon Technology for
use in pursuing any research activity that is expressly the subject of the
Research Program.
(b) The license granted in Section 3.1(a) is subject to the
following express limitation (and to all other obligations and limitations in
the Agreement): Kirin obtains no license or rights to use the Dendreon
Technology to research or develop devices for use in the isolation or
purification of dendritic or any other cells, or to practice the Dendreon
Technology for any purpose except as expressly permitted in Section 3.1(a).
3.2 Research License to Dendreon.
(a) Subject to the terms of this Agreement, Kirin hereby grants to
Dendreon a non-exclusive (subject to the following restriction) license under
any applicable Kirin know-how and Patent rights solely to conduct the Research
Program activities assigned to Dendreon under the Research Plan. Kirin further
agrees that during the term of the Research Program Kirin will not license to
any Third Party any Kirin Technology for use in pursuing any research activity
that is expressly the subject of the Research Program.
(b) The license granted in Section 3.2(a) is subject to the
following express limitation (and to all other obligations and limitations in
the Agreement): Dendreon obtains no license or rights to use the Kirin know-how
or Patent rights for any purpose except as expressly permitted in Section
3.2(a).
3.3 Commercial License to Dendreon. Subject to the terms of this
Agreement, Kirin hereby grants to Dendreon the exclusive license in the Dendreon
Territory under the Collaboration Technology to research, develop, make, have
made, use, sell, offer for sale and import Collaboration Products and Dendreon
Products in the Dendreon Territory.
3.4 Sublicenses to Third Parties.
(a) Kirin shall have the right to grant sublicenses under the
Collaboration Technology (i) to its Affiliates to develop, make, have made, use,
sell, offer for sale and import Collaboration Products and Kirin Products in the
Kirin Territory without Dendreon's prior written approval, and (ii) to Third
Parties solely for sale (but not therapeutic development) of Collaboration
Products and Kirin Products incorporating Collaboration Technology in the Kirin
Territory without Dendreon's prior written approval. Kirin and its Affiliates
may conduct clinical development of particular Collaboration Products and Kirin
Products incorporating Collaboration Technology in the Dendreon Territory and
the Joint Territory so long as Kirin obtains Dendreon's prior written approval
of the location and clinical study protocol of any such clinical work or study
of each such Collaboration Product or Kirin Product, such approval not to be
unreasonably withheld, and such work is intended to generate data to be used in
obtaining Regulatory Approval of such Collaboration Product or Kirin Product for
manufacturing, marketing and sale in the Kirin Territory.
(b) Dendreon shall have the right to grant sublicenses under the
Collaboration Technology (i) to its Affiliates to develop, make, have made, use,
sell, offer for sale and import
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Collaboration Products and Dendreon Products in the Dendreon Territory without
Kirin's prior written approval, and (ii) to Third Parties solely for sale (but
not therapeutic development) of Collaboration Products and Dendreon Products
incorporating Collaboration Technology in the Dendreon Territory without Kirin's
prior written approval. Dendreon and its Affiliates may conduct clinical
development of particular Collaboration Products and Dendreon Products
incorporating Collaboration Technology in the Kirin Territory and the Joint
Territory so long as Dendreon obtains Kirin's prior written approval of the
location and clinical study protocol of a any such clinical work or study of
each such Collaboration Product or Dendreon Product, such approval not to be
unreasonably withheld, and such work is intended to generate data to be used in
obtaining Regulatory Approval of such Collaboration Product or Dendreon Product
for manufacturing, marketing and sale in the Dendreon Territory.
ARTICLE 4
DEVELOPMENT AND COMMERCIALIZATION
4.1 Kirin Territory. Kirin shall have the exclusive right to utilize the
Collaboration Technology to develop Collaboration Products for use and sale in
the Kirin Territory and to commercialize the Collaboration Products in the Kirin
Territory. Kirin agrees to use Reasonable Efforts to develop such Collaboration
Products and to market and sell in the Kirin Territory such Collaboration
Products developed by Kirin.
4.2 Dendreon Territory. Dendreon shall have the exclusive right to
utilize the Collaboration Technology to develop and commercialize Collaboration
Products in the Dendreon Territory, pursuant to the license and sublicense
rights granted by Kirin in Sections 3.3 and 3.4(b). Dendreon agrees to use
Reasonable Efforts to develop such Collaboration Products and to market and sell
in the Dendreon Territory such Collaboration Products developed by Dendreon.
4.3 Joint Territory. Development and commercialization of Collaboration
Products in the Joint Territory shall be conducted solely as provided in the
Commercialization Agreement, and neither Party may develop or sell Collaboration
Products in such countries except as provided in such agreement.
ARTICLE 5
FEES AND ROYALTIES
5.1 Sales of Collaboration Products by Kirin. Kirin shall pay Dendreon a
royalty equal to [ * ] of the Net Revenue of Collaboration Products sold by
Kirin, its Affiliates, licensees and Sublicensees in the Kirin Territory. For
each particular Collaboration Product, Kirin shall pay the royalties specified
above, on a country by country basis, until the later of the expiration of ten
(10) years from the first commercial launch of such Collaboration Product in
such country or the last to expire of the Patents with claims covering such
Collaboration Product or its manufacture or use in such country. For clarity,
it is understood that for any product that is
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claimed by patented Collaboration Discoveries and that also meets the definition
of a Kirin Product or a Dendreon Product, Kirin shall pay royalties on its sales
of such products as provided in Article 7 of the License Agreement, as
applicable, and shall not owe any additional royalties hereunder on account of
the patented Collaboration Discoveries in such products.
5.2 Sales of Collaboration Products by Dendreon. Dendreon will pay Kirin
a royalty equal to [ * ] of the Net Revenue of Collaboration Products sold by
Dendreon, its Affiliates, licensees and Sublicensees in the Dendreon Territory.
For each particular Collaboration Product, Dendreon shall pay the royalties
specified above, on a country by country basis, until the later of the
expiration of ten (10) years from the first commercial launch of such
Collaboration Product in such country or the last to expire of the Patents with
claims covering such Collaboration Product or its manufacture or use in such
country. For clarity, it is understood that for any product that is claimed by
patented Collaboration Discoveries and also meets the definition of a Kirin
Product, the sole and total royalty owed to Kirin by Dendreon based on the sale
of such product by Dendreon shall be as determined in the License Agreement for
Dendreon's sale of Kirin Products, and Dendreon shall not owe Kirin any
additional royalties hereunder based on such sales.
5.3 Royalty Reduction. If Kirin or Dendreon, as applicable, sells a
particular Collaboration Product that does not meet the definition of a Kirin
Product or a Dendreon Product in a country where, at the time of sale, there is
no issued Collaboration Patent that claims such Collaboration Product or its
manufacture or use, then the amount of royalty owed by such Party to the other
Party under Section 5.1 or 5.2 (as applicable) shall be reduced by [ * ] with
respect to such sale.
5.4 Payment of Royalties. Royalties under this Article 5 shall accrue
upon the sale of the particular Collaboration Product (deemed to occur on the
earlier of transfer of title or invoice date), and royalties that have accrued
during a particular calendar quarter shall be paid by the Party owing such
royalties within sixty (60) days after the end of each such calendar quarter.
Such royalties shall be calculated on the basis of Net Revenue in the local
currency of each country, and converted into U.S. Dollars and paid in U.S.
Dollars on the basis of the average currency exchange rate for the applicable
calendar quarter quoted by Tokyo Mitsubishi Bank (or its successor) for currency
exchange in excess of one million U.S. dollars ($1,000,000).
5.5 Manner of Payment. Remittance of payments under this Article 5 will
be made by means of wire or electronic transfer to the receiving Party's account
in a bank to be designated by such Party in writing.
5.6 Reports. All amounts payable under this Agreement shall be
accompanied by a report listing the gross selling price of each Collaboration
Product sold during such period on a product-by-product and country-by-country
basis, and the calculation of Net Revenue based on such sales, including all
other information necessary to determine the appropriate amount of such royalty
payments, and any additional information or reports required under the
Agreement.
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5.7 Records and Audit. For a period of three (3) years after the royalty
period to which the records relate, each Party shall keep complete and accurate
records pertaining to the sale or other disposition of the Collaboration
Products commercialized by it, in sufficient detail to permit the other Party to
confirm the accuracy of all payments due hereunder. A Party entitled to
payments hereunder shall have the right to cause an independent, certified
public accountant reasonably acceptable to the other Party (and who has executed
a confidentiality agreement with the Party to be audited) to audit such records
to confirm the Net Revenue and royalty payments; provided, however, that such
auditor shall not disclose the audited Party's confidential information to the
other Party, except to the extent such disclosure is necessary to verify the
amount of royalties and other payments due under this Agreement. In no event
may such accountant disclose the names of specific customers, price lists, or
the prices charged to specific customers. A copy of any report provided by such
accountant shall be provided to the audited Party at the time that it is
provided to the auditing Party. Such audits may be exercised once a year,
within three (3) years after the royalty period to which such records relate,
upon a mutually acceptable date(s) and upon not less than thirty (30) days
advance notice, and shall be conducted during normal business hours. Any
amounts shown to be owing by such audits shall be paid immediately with interest
in the amount of one percent (1%) per month (or the maximum amount permitted by
law, if less) from the date first owed until paid. The auditing Party shall
bear the full cost of such audit unless such audit discloses that royalties
actually paid by the audited Party are more than five percent (5%) less from the
amount of royalties and/or other payments actually owed. In such case, the
audited Party shall bear the full cost of such audit. The terms of this Section
5.7 shall survive any termination or expiration of this Agreement for a period
of two (2) years.
5.8 Withholding of Taxes. All turnover, income and other taxes levied on
account of the royalties and other payments accruing or made to a Party under
this Agreement shall be paid by such Party. If provision is made in law or
regulation for withholding of taxes of any type, levies or other charges with
respect to any royalty or other amounts payable under this Agreement by a Party
to the other Party, then such paying Party shall be entitled to deduct such tax,
levy or charge from the royalty or other payment to be made by such Party and
pay such tax, levy or charge to the proper taxing authority. A receipt of
payment of the tax, levy or charge secured shall be promptly delivered to the
other Party, together with copies of all pertinent communications from or with
such governmental authorities with respect thereto. Such paying Party agrees to
cooperate with the other Party in any effort in claiming any exemption from such
deductions or withholdings under any double taxation or similar agreement or
treaty from time to time in force and in minimizing the amount required to be so
withheld or deducted, such cooperation to consist of providing receipts of
payment of such withheld tax or other documents reasonably available to the
paying Party.
ARTICLE 6
CONFIDENTIALITY
6.1 Confidentiality. Except to the extent expressly authorized by this
Agreement or otherwise agreed in writing, the Parties agree that, for the term
of this Agreement and for ten (10)
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years thereafter, the receiving Party shall keep confidential and shall not
publish or otherwise disclose or use for any purpose other than as provided for
in this Agreement any Information or materials furnished to it by the other
Party pursuant to this Agreement (collectively, "Confidential Information"),
except as otherwise provided below.
6.2 Exceptions. The obligations in Section 6.1 shall not apply to any
Information or materials to the extent that the receiving Party can establish by
competent proof that such Information or materials:
(a) was already known to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the other Party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving Party in breach of this Agreement; or
(d) was disclosed to the receiving Party, other than under an
obligation of confidentiality, by a Third Party who had no obligation to the
disclosing Party not to disclose such information to others.
6.3 Authorized Disclosure. Each Party may disclose the other's
Confidential Information to the extent such disclosure is reasonably necessary
in filing or prosecuting patent applications, prosecuting or defending
litigation, complying with applicable governmental regulations or conducting
preclinical or clinical trials, provided that if a Party is required by law or
regulation to make any such disclosure of the other Party's Confidential
Information it will except where impracticable for necessary disclosures, for
example in the event of medical emergency, give reasonable advance notice to the
other Party of such disclosure requirement and, except to the extent
inappropriate in the case of patent applications, will use its best efforts to
secure confidential treatment of such Confidential Information required to be
disclosed.
6.4 Survival. This Article 6 shall survive the termination or expiration
of this Agreement for a period of ten (10) years.
ARTICLE 7
INTELLECTUAL PROPERTY
7.1 Ownership. Subject to the terms of this Agreement and the
Commercialization Agreement, Kirin shall own the entire right, title and
interest in and to the Collaboration Technology throughout the world, and
Dendreon agrees to assign to Kirin its entire interest in the Collaboration
Technology, subject to the rights granted in Sections 3.3, 3.4(b) and 4.2.
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7.2 Kirin Responsibility for Patent Filings. Kirin will use Reasonable
Efforts to file, prosecute, issue and maintain Collaboration Patents. In each
event, Kirin will confer with Dendreon, and make Reasonable Efforts to adopt
Dendreon's suggestions, regarding the prosecution of such Patents. Upon Kirin's
reasonable request and at its sole expense, Dendreon will make Reasonable
Efforts to assist Kirin in the filing of any Collaboration Patent. As soon as
practical subsequent to filing, Kirin will provide Dendreon with an English
language translation of any filing. In addition, Kirin will copy Dendreon with
any official action and Kirin submissions in such Patents, including an English
translation summary thereof. If Kirin fails to file, prosecute, issue or
maintain a particular Collaboration Patent in the Dendreon Territory within
sixty (60) days of receipt of a request from Dendreon that Kirin take such
action, Dendreon shall have the right to file, prosecute, issue or maintain such
Collaboration Patent in the Dendreon Territory.
7.3 Enforcement Rights. With respect to infringement of any of the
Collaboration Patents in the Kirin Territory, Kirin shall have the initial
right, but not the obligation, to institute, prosecute and control any action or
proceeding with respect to such infringement in the Kirin Territory. Kirin
shall bear the costs of such patent enforcement within the Kirin Territory and
shall retain for its own account any amounts recovered from Third Parties.
Dendreon shall have the right, but not the obligation, to institute, prosecute
and control any action or proceeding with respect to infringement in the
Dendreon Territory. Dendreon shall bear the costs of patent enforcement within
the Dendreon Territory and retain for its own account any amounts recovered from
Third Parties. The Party first having knowledge of any infringement of the
Collaboration Patents shall promptly notify the other Party in writing. The
notice shall set forth the facts of such infringement in reasonable detail. If
a Party having the right to enforce a Collaboration Patent pursuant to this
Section 7.3 fails to bring an action or proceeding against a suspected infringer
within a period of ninety (90) days after having knowledge of such infringement
in the Field, the other Party shall have the right to bring and control an
action against such infringer by counsel of its own choice. If one Party brings
any such action or proceeding, the other Party agrees to be joined as a Party
plaintiff if necessary to prosecute the action and to give the first Party
reasonable assistance and authority to file and prosecute the suit. The Party
controlling a suit hereunder shall, at the other Party's expense, retain any and
all recovery from such suit. The Party controlling a suit hereunder shall not
settle or consent to an adverse judgment in any such action which would have a
material adverse effect on the rights or interests of the other Party without
the prior express written consent of the other Party.
7.4 Third Party Patent Rights. Except as otherwise provided in this
Agreement or the Commercialization Agreement, neither Party makes any warranty
with respect to the validity, perfection or dominance of any Collaboration
Patent or other proprietary right or with respect to the absence of rights of
Third Parties which may be infringed by the manufacture or sale of any
Collaboration Product.
7.5 Third Party Claims in the Kirin Territory. If a Third Party asserts
that a patent, trademark or other intangible right owned by it is infringed by
any Collaboration Product in the Kirin Territory, Kirin will be solely
responsible for defending against any such assertions at its cost and expense.
Each Party will give prompt written notice to the other of any such
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claim. Dendreon will assist in the defense of any such claim as reasonably
requested by Kirin, at Kirin's expense, and may retain separate counsel at its
own expense. Prior to settling any such claim, Kirin shall consider in good
faith any rights and interests of Dendreon that may be adversely affected by
such settlement and shall use good faith efforts to minimize such affect.
7.6 Third Party Claims in the Dendreon Territory. If a Third Party
asserts that a patent, trademark or other intangible right owned by it is
infringed by any Collaboration Product in the Dendreon Territory, Dendreon will
be solely responsible for defending against any such assertions at its cost and
expense. Each Party will give prompt written notice to the other of any such
claim. Kirin will assist in the defense of any such claim as reasonably
requested by Dendreon, at Dendreon's expense, and may retain separate counsel at
its own expense. Prior to settling any such claim, Dendreon shall consider in
good faith any rights and interests of Kirin that may be adversely affected by
such settlement and shall use good faith efforts to minimize such affect.
7.7 Third Party Royalties. In the event that a Party is required to
obtain a license under a Third Party patent that covers or claims the
manufacture, use or sale of a Collaboration Product in order to practice a
Collaboration Patent to sell such Collaboration Product as permitted in this
Agreement, then provided that such Party shall disclose the relevant portions of
such license under such Third Party patent to the other Party in English and, if
any, the extent of any alleged infringement, such Party shall be entitled to
deduct [ * ] of any royalties owing to such Third Party based on the sale of
such Collaboration Products under such license from amounts owing to the other
Party, subject to a maximum royalty reduction of [ * ] of the amounts that
otherwise would be owed by such Party under this Agreement.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Each of the Parties hereby represents and warrants as follows:
(a) This Agreement is a legal and valid obligation binding upon such
Party and enforceable in accordance with its terms. The execution, delivery and
performance of the Agreement by such Party does not conflict with any agreement,
instrument or understanding, oral or written, to which it is a Party or by which
it is bound, nor violate any law or regulation of any court, governmental body
or administrative or other agency having jurisdiction over it.
(b) Such Party has not, and during the term of the Agreement will
not, grant any right to any Third Party relating to its respective technology in
the Field licensed to the other Party hereunder which would conflict with such
rights granted to the other Party under Article 3.
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ARTICLE 9
REPORTS, RECORDS AND SAMPLES
9.1 Sharing of Information. Dendreon and Kirin will make available and
disclose to each other all Information resulting from or arising out of the work
conducted under the Research Program during the Research Term. All discoveries
or inventions made by either Party resulting from or arising out of the Research
Program will be promptly disclosed to the other, with significant discoveries or
advances being communicated as soon as practical after such information is
obtained or its significance is appreciated. The Parties will exchange at least
monthly verbal or written reports in English presenting a meaningful summary of
research done under this Agreement. In addition to any presentations made to
the JRC, each Party will make regular presentations to the other of its research
under this Agreement, and additionally on an informal basis, to inform the other
Party of the work done under this Agreement.
9.2 Materials. The Parties intend to maintain an open and extensive
exchange of research materials that relate to the Research Program during the
course of the Research Program. Information obtained by the other Party in the
testing of such materials will be promptly disclosed to the Party providing the
sample, and all such Information will be considered Information to be protected
by both Parties under the restrictions of Article 6. ANY MATERIALS EXCHANGED
BETWEEN THE PARTIES ARE SUPPLIED TO THE RECEIVING PARTY WITH NO WARRANTIES OF
ANY KIND, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR THAT THEY ARE FREE FROM THE RIGHTFUL CLAIM
OF ANY THIRD PARTY, BY WAY OF INFRINGEMENT OR THE LIKE. NEITHER PARTY MAKES ANY
REPRESENTATION OR WARRANTY THAT THE USE OF ANY MATERIALS PROVIDED HEREUNDER WILL
NOT INFRINGE ANY PATENT OR PROPRIETARY RIGHTS OF ANY THIRD PARTIES.
9.3 Publicity Review. If either Party is required by law or regulation
to make a public disclosure or announcement concerning the Research Program or
this Agreement or the subject matter thereof, such Party shall give reasonable
prior advance notice of the proposed text of such disclosure or announcement to
the other Party for its review and comment. The terms of this Agreement may also
be disclosed to: (i) Third Parties with the consent of the other Party, which
consent shall not be unreasonably withheld, so long as such disclosure is made
under a binder of confidentiality, and (ii) investors, potential investors,
underwriters and potential underwriters of Dendreon or Kirin, so long as such
disclosure is made under a binder of confidentiality.
9.4 Publications. Each Party agrees that it shall not publish or present
the results of studies carried out as part of the Research Program without the
opportunity for prior review by the other Party. Each Party shall provide to the
other the opportunity to review any proposed abstracts, manuscripts or
presentations (including information to be presented verbally) which relate to
Collaboration Technology or Collaboration Products at least thirty (30) days
prior to their intended submission for publication and such submitting Party
agrees, upon written request
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from the other Party, not to submit such abstract or manuscript for publication
or to make such presentation until the other Party is given a reasonable period
of time to secure patent protection for any material in such publication or
presentation which it believes is patentable.
ARTICLE 10
TERM AND TERMINATION
10.1 Term. This Agreement shall commence as of the Effective Date and,
unless sooner terminated as provided in this Article 10, shall continue in
effect until the latest of: (a) the expiration of the last to expire of the
Collaboration Patents, or (b) the date on which the Parties are no longer
obligated to pay royalties to each other under Article 5. In the event that,
commencing after the 3rd anniversary of the Start Date, Kirin decides in Kirin's
sole discretion that the Research Program does not make adequate progress, Kirin
may terminate the Agreement with six (6) months prior written notice to
Dendreon. In the case of termination by Kirin as stipulated in the preceding
sentence, Kirin shall own the entire right, title and interest in and to the
Collaboration Technology throughout the world, which was created, developed or
discovered before such termination, and Articles 4, 5, 6, 7 and 11, and Sections
3.3, 3.4, 9.4, 12.6 and 12.7 of the Agreement will survive such termination.
10.2 Termination for Breach. If either Party materially breaches this
Agreement at any time, which breach is not cured within thirty (30) days of
written notice thereof if such breach is caused by the failure of a Party to
meet its financial obligations under this Agreement, or within ninety (90) days
of written notice thereof for any other material breach of this Agreement, from
the non-breaching Party specifying in detail the nature of the breach, the non-
breaching Party may terminate the Agreement, provided that:
(a) if Dendreon terminates for Kirin's uncured breach, Kirin's
obligations under Sections 5.1 shall survive termination, and Kirin is deemed to
have automatically granted to Dendreon an exclusive, fully-paid, irrevocable,
sublicensable, perpetual license in the Dendreon Territory under the
Collaboration Technology for any and all purposes, provided that Kirin retains
the right granted in Section 7.1 of the Agreement; and
(b) if Kirin terminates for Dendreon's uncured breach: (i) Kirin's
obligations under Section 5.1 shall survive termination, (ii) Dendreon shall
cease development and commercialization of all Collaboration Products, (iii) the
rights and licenses granted to Dendreon in Section 3.2(a) and 4.2 shall
terminate and revert to Kirin, and (iv) Kirin may thereafter practice the
Collaboration Technology throughout the world.
10.3 Surviving Rights. In addition to survival of Sections and Articles
as provided elsewhere in the Agreement, the obligations and rights of the
Parties under Articles 6, 7 and 11 and Sections 9.4, 12.6 and 12.7 of this
Agreement will survive any termination.
ARTICLE 11
INDEMNIFICATION
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11.1 Indemnification in Kirin Territory. Kirin shall indemnify, defend
and hold Dendreon harmless from and against any and all liability, damage, loss,
cost (including reasonable attorneys' fees) and expense resulting from any claim
of infringement, bodily injury or property damage (a) relating to the
development, manufacture, use, distribution or sale of any Collaboration Product
in the Kirin Territory, or (b) due to the negligence or willful misconduct of
Kirin or its employees or agents.
11.2 Indemnification in the Dendreon Territory. Dendreon shall
indemnify, defend and hold Kirin harmless from and against any and all
liability, damage, loss, cost (including reasonable attorneys' fees) and expense
resulting from any claim of infringement, bodily injury or property damage (a)
relating to the development, manufacture, use, distribution or sale of any
Collaboration Product in the Dendreon Territory, or (b) due to the negligence or
willful misconduct of Dendreon or its employees or agents.
ARTICLE 12
MISCELLANEOUS
12.1 Assignment. Neither Party shall assign any of its rights and
obligations hereunder except (i) as incident to the merger, consolidation,
reorganization or acquisition of stock affecting actual voting control or of
substantially all of the assets of the assigning Party or (ii) to an Affiliate;
provided, however, that in no event shall either Party's rights and obligations
hereunder be assigned without prior written notice to the other Party. In any
case, neither Party may make an assignment of its assets which renders it unable
to perform its material obligations hereunder. This Agreement shall be binding
upon and inure to the benefit of the Parties hereto and their permitted
successors and assigns.
12.2 Retained Rights. Nothing in this Agreement shall limit in any
respect the right of either Party to conduct research and development with
respect to and market products outside the Field using such Party's Technology,
but no license to use the other Party's technology to do so is granted herein
expressly or by implication.
12.3 Force Majeure. Neither Party shall lose any rights hereunder or be
liable to the other Party for damages or losses on account of failure of
performance by the defaulting Party if the failure is occasioned by government
action, war, fire, explosion, flood, strike, lockout, embargo, act of God, or
any other similar cause beyond the control of the defaulting Party, provided
that the Party claiming force majeure has exerted all Reasonable Efforts to
avoid or remedy such force majeure; provided, however, in no event shall a Party
be required to settle any labor dispute or disturbance.
12.4 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments, 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.
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12.5 No Trademark Rights. Except as otherwise provided herein, no right,
express or implied, is granted by the Agreement to use in any manner the name
"Dendreon" or "Kirin" or any other trade name or trademark of the other Party in
connection with the performance of the Agreement.
12.6 Notices. All notices and other communications hereunder shall be in
writing and shall be deemed given if delivered personally or by facsimile
transmission (receipt verified), telexed, mailed by registered or certified mail
(return receipt requested), postage prepaid, or sent by express courier service,
to the Parties at the following addresses (or at such other address for a Party
as shall be specified by like notice; provided, that notices of a change of
address shall be effective only upon receipt thereof):
If to Dendreon, addressed to:
Dendreon Corporation
3005 1st Avenue
Seattle, Washington 98121-1010
U.S.A.
Attention: Christopher Henney, CEO
Telephone: (206) 256-4545
Telecopy: (206) 256-0571
With copy to:
Cooley Godward llp
Five Palo Alto Square, 4th Floor
Palo Alto, CA 94306
Attention: Barclay James Kamb, Esq.
Telephone: (650) 843-5052
Telecopy: (650) 857-0663
If to Kirin, addressed to:
Kirin Brewery Co., Ltd.
26-1, Jingumae 6-chome
Shibuya-ku
Tokyo 150-8011, Japan
Attention: Akihiro Shimosaka
Research and Product Development Department
Pharmaceutical Division
Telephone: (03) 5485-6805
Telecopy: (03) 3499-6152
12.7 Dispute Resolution. If any dispute, controversy or claim arises
out of or in connection with this Agreement, the Parties shall use reasonable
efforts to settle it by friendly negotiation within sixty (60) days of notice
from one Party to the other of such dispute,
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controversy or claim, before pursuing any other remedies available to them. If
either Party fails or refuses to participate in such negotiations, or if, in any
event, the dispute, controversy or claim is not resolved to the satisfaction of
both Parties within the sixty (60) day period, any such dispute, controversy or
claim shall be settled by arbitration. Any such arbitration shall be conducted
in accordance with the Japan-American Trade Arbitration Agreement of September
16, 1952. The Parties agree that any such arbitration shall be conducted in the
English language in a location within the United States selected by the Party
that did not initiate such arbitration, and the Agreement shall be governed by
and construed in accordance with the laws of the State of California and the
United States of America. The arbitrators shall include one independent, un-
affiliated nominee selected by each Party and a third neutral arbitrator
selected by such nominees. The Parties agree that any arbitration panel shall
include members knowledgeable as to the evaluation of biopharmaceutical
technology. Judgment upon the award rendered may be entered in the highest state
or federal court or forum, state or federal, having jurisdiction; provided,
however, that the provisions of this Section 12.7 shall not apply to any dispute
or controversy as to which any treaty or law prohibits such arbitration. The
prevailing Party shall be entitled to reasonable attorney's fees and costs to be
fixed by the arbitrators.
12.8 Waiver. Except as specifically provided for herein, the waiver from
time to time by either of the Parties of any of their rights or their failure to
exercise any remedy shall not operate or be construed as a continuing waiver of
same or of any other of such Party's rights or remedies provided in this
Agreement.
12.9 Severability. If any term, covenant or condition of this Agreement
or the application thereof to any Party or circumstance shall, to any extent, be
held to be invalid or unenforceable, then the remainder of this Agreement, or
the application of such term, covenant or condition to Parties or circumstances
other than those as to which it is held invalid or unenforceable, shall not be
affected thereby and each term, covenant or condition of this Agreement shall be
valid and be enforced to the fullest extent permitted by law.
12.10 Ambiguities. Ambiguities, if any, in this Agreement shall not be
construed against any Party, irrespective of which Party may be deemed to have
authored the ambiguous provision.
12.11 Entire Agreement. This Agreement and any agreements referenced
herein, set forth all the covenants, promises, agreements, warranties,
representations, conditions and understandings between the Parties hereto and
supersedes and terminates all prior agreements and understanding between the
Parties. There are no covenants, promises, agreements, warranties,
representations conditions or understandings, either oral or written, between
the Parties other than as set forth herein and therein. No subsequent
alteration, amendment, change or addition to this Agreement shall be binding
upon the Parties hereto unless reduced to writing and signed by the respective
authorized officers of the Parties.
12.12 Headings. The Section and Paragraph headings contained herein are
for the purposes of convenience only and are not intended to define or limit the
contents of the Section or Paragraphs to which they apply.
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
19
IN WITNESS WHEREOF, the Parties have executed this Agreement in duplicate
originals by their proper officers as of the date and year first above written.
DENDREON CORPORATION KIRIN BREWERY CO., LTD.
By: /s/ Christopher S. Henney By: /s/ Koichiro Aramaki
------------------------- -----------------------------------
Title: President Title: President, Pharm. Div.
----------------------- ---------------------------------
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
20
Research and License Agreement - Dendreon Corp. And Kirin Brewery Co. Ltd.
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