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(g) Royalty Reductions in the Territory. Notwithstanding anything to the contrary in this Agreement, the tiered royalty percentages in Table 6.3(c) used to calculate the royalties payable by AbbVie on Net Sales of a Licensed Product that contains a Licensed Compound in a particular country shall be reduced by fifty per... |
(h) Cumulative Reductions Floor. In no event will the aggregate amount of royalties due to Mission for a Licensed Product in a country in the Territory in any given Calendar Quarter during the Royalty Term for such Licensed Product in such country be reduced by more than fifty percent (50%) of the amount that otherwise... |
6.4 Royalty Payments and Reports. AbbVie shall calculate all amounts payable to Mission pursuant to Section 6.3 at the end of each Calendar Quarter, which amounts shall be converted to Dollars, in accordance with Section 6.8. All amounts payable to Mission pursuant to Section 6.3 shall be paid in Dollars within seventy... |
6.5 Payment Method. All payments to Mission under this Agreement shall be made from the U.S. to the UK by deposit of Dollars in the requisite amount by electronic fund transfer in immediately available funds to such bank account(s) as Mission may from time to time designate by notice to AbbVie. |
6.6 Taxes. |
(a) Income Tax. The Party receiving payments shall pay any and all income taxes required by law that are levied on the payment it receives under this Agreement. |
(b) Withholding Taxes. Where any sum due to be paid to either Party hereunder is subject to any withholding or similar tax by Applicable Law, the Parties shall use their commercially reasonable efforts to do all such acts and things and to sign all such documents as will enable them to take advantage of any applicable ... |
(c) Indirect Taxes. All payments are exclusive of value added taxes, sales taxes, consumption taxes and other similar taxes as required by Applicable Law (the "Indirect Taxes"). If any Indirect Taxes are chargeable in respect of any payments, the paying Party shall pay such Indirect Taxes at the applicable rate in resp... |
6.7 Royalty on Sublicensee Sales. AbbVie shall have the responsibility to account for and report sales of any Licensed Product by a Sublicensee on the same basis as if such sales were Net Sales by AbbVie. AbbVie shall pay to Mission such Sublicensee amounts when due under this Agreement. |
6.8 Foreign Exchange. For the purpose of calculating any sums due under, or otherwise reimbursable pursuant to, this Agreement (including the calculation of Net Sales expressed in currencies other than Dollars), a Party shall convert any amount expressed in a foreign currency into Dollar equivalents using its, its Affi... |
6.9 Records. AbbVie shall keep, and shall cause its Affiliates and Sublicensees to keep, complete, true and accurate books of accounts and records in sufficient detail to determine and establish the amounts payable incurred under this Agreement, and compliance with the other terms and conditions of this Agreement (incl... |
6.10 Audit. Upon reasonable prior notice, AbbVie shall, and shall cause its Affiliates to, permit an independent public accounting firm of national recognized standing designated by Mission and reasonably acceptable to AbbVie, at reasonable times during normal business hours and upon reasonable notice, to audit the boo... |
6.11 Audit Dispute. In the event of a dispute with respect to any audit under Section 6.10, Mission and AbbVie shall work in good faith to resolve the disagreement. If the Parties are unable to reach a mutually acceptable resolution of any such dispute within thirty (30) days, the dispute shall be submitted for resolut... |
6.12 Confidentiality. The receiving Party shall treat all information subject to review under this ARTICLE 6 in accordance with the confidentiality provisions of ARTICLE 8 and the Parties shall cause the Audit Arbitrator to enter into a reasonably acceptable confidentiality agreement with the audited Party obligating s... |
6.13 Late Payments. Any payments or portions thereof due hereunder that are not paid on the date such payments are due under this Agreement shall bear interest at a rate equal to the lesser of: (a) the Bank of England Base Rate plus three percent (3%), at 12:01 a.m. on the first day of each Calendar Quarter in which su... |
6.14 Payments to or Reports by Affiliates. Any payment required under any provision of this Agreement to be made to either Party or any report required to be made by any Party shall be made to or by an Affiliate of that Party if designated in writing by that Party as the appropriate recipient or reporting entity. |
ARTICLE 7 PATENT PROSECUTION AND ENFORCEMENT |
7.1 Ownership of Information and Inventions. |
(a) Mission Ownership. As between the Parties, Mission shall own all right, title and interest in and to any Mission Background Patents, Mission Background Know-How, Mission Program Patents and Mission Program Know-How. |
(b) AbbVie Ownership. Subject to 7.1(c), as between the Parties, AbbVie or an Affiliate designated by AbbVie shall own and retain all right, title and interest in and to any and all Know-How that is developed or invented after the Effective Date solely by or on behalf of AbbVie and/or its Affiliates and/or their respec... |
(c) Ownership of Joint Program Patents and Joint Program Know-How. As between the Parties, the Parties shall each own an equal, undivided interest in any and all Joint Program Patents and Joint Program Know-How. Accordingly, any invention made solely by or on behalf of Mission or its Affiliate's employees or Third Part... |
(d) United States Law. The determinations of whether Information or inventions are conceived, discovered, developed or otherwise made by a Party for the purpose of allocating proprietary rights (including Patent, copyright or other intellectual property rights) therein, shall, for purposes of this Agreement, be made in... |
(e) This Agreement will be understood to be a joint research agreement under 35 U.S.C. §102(c). Subject to the rights, licenses and obligations in this Agreement, it is understood that neither Party shall have any obligation to account to the other Party for profits, or to obtain any consent or approval of the other Pa... |
(f) Except as may otherwise be agreed in writing by the Parties: (i) AbbVie covenants that in any Patent applications filed by it under this Agreement it will not knowingly provide a written description (whether in the specification or the claims) exemplifying (which expression includes a description of, or data relati... |
7.2 Prosecution of Mission Product Patents. Before AbbVie's exercise of the Stage 2 Option and payment of the Exclusively Licensed DUB Fee, Mission shall draft, file, prosecute and maintain (such activities with respect to Patents being the "Prosecution", with the term "Prosecute" having the corresponding meaning) in t... |
(a) At such time as AbbVie selects each Exclusively Licensed DUB in accordance with Section 3.3(b), the Parties will compile a list of the Mission Product Patents, which list shall be incorporated as a Schedule to this Agreement. From time-to-time, the Parties may agree in writing, on a case-by-case basis, that a Missi... |
(b) Each Party that controls Prosecution shall keep the other Party fully informed of all steps with regard to the Prosecution of the Mission Product Patents, including by providing the other Party with a copy of material communications to and from any patent authority in the Territory regarding such Mission Product Pa... |
(c) Before AbbVie's exercise of the Stage 2 Option and payment of the Exclusively Licensed DUB Fee, in the event that Mission elects not to Prosecute any Patent within the Mission Product Patents, Mission will give AbbVie reasonable prior written notice of such intention (which notice shall, in any event, be given no l... |
(d) In the event that AbbVie elects not to Prosecute in any country any Patent within the Mission Product Patents that it has obtained the right to Prosecute pursuant to this Agreement, AbbVie will give Mission reasonable prior written notice of such intention (which notice shall, in any event, be given no later than s... |
(e) The Parties will cooperate in the Prosecution of the Mission Product Patents in all respects. Each Party will provide the other Party all reasonable assistance and cooperation in such Prosecution efforts, including executing all papers and instruments, or requiring its employees or Third Party contractors to execut... |
7.3 Data Exclusivity. As applicable, AbbVie will have the sole right and authority for securing, maintaining and enforcing exclusivity rights that may be available under Applicable Law in a country for a Licensed Product, such as any data, market, pediatric, orphan drug or other regulatory exclusivity periods. Mission ... |
7.4 Prosecution of Other Patents. |
(a) Other Mission Patents. This Section 7.4(a) will apply to (i) Mission Program Patents that are not Mission Product Patents and (ii) to all Mission Background Patents ("Other Mission Patents"). Mission will have the sole right at its own cost, but not the obligation, to Prosecute in all jurisdictions all Other Missio... |
(b) AbbVie Patents. This Section 7.4(b) will apply only to any Patents Controlled solely by AbbVie ("AbbVie Patents"). AbbVie will have the sole right in its absolute discretion and its own cost, but not the obligation, to Prosecute in all jurisdictions all AbbVie Patents. |
(c) Joint Program Patents. AbbVie will have the first right, but not the obligation, to Prosecute in all jurisdictions all Joint Program Patents that are Directed to Licensed Compounds (or molecules that would qualify as DUB Hits if an Initially Selected DUB or a Selected DUB becomes an Exclusively Licensed DUB on AbbV... |
7.5 Patent Term Adjustments or Extensions; Patent Listings. |
(a) The Parties will confer regarding the desirability of seeking in any country any patent term extension, supplementary patent protection or similar extension of rights with respect to the Mission Background Patents, Mission Program Patents, and Mission Product Patents, and will use commercially reasonable efforts in... |
(b) With respect to a Licensed Product, AbbVie will have the final decision-making authority with respect to any decision regarding patent term extension, supplementary patent protection, and any other extensions arising from or in connection with Regulatory Approval of such Licensed Product with respect to the Joint P... |
(c) With respect to a Licensed Product, AbbVie will have the final decision-making authority with respect to listing relevant Joint Program Patents, Mission Product Patents, Mission Program Patents and Mission Background Patents with any relevant Governmental Authorities. |
7.6 Infringement of Mission Product Patents by Third Parties. |
(a) Notification. The Parties will promptly notify each other of any actual, threatened, alleged or suspected infringement of the Mission Product Patents of which such Party becomes aware (including alleged, threatened or actual infringement based on the making, using, selling, importing or other Exploitation of a prod... |
(b) Enforcement. AbbVie will have the first right, but not the obligation, to bring and control, at its expense, an appropriate suit or other action before any government or private tribunal against any person or entity allegedly engaged in any Infringement (an "Infringement Action") of any Mission Product Patent to re... |
(c) Settlement. Without the prior written consent of the other Party (not to be unreasonably withheld, conditioned or delayed), neither Party will settle any Product Specific Infringement Action in any manner that would impose any liability or out-of-pocket costs on, or involves any admission by, the other Party. |
(d) Expenses and Recoveries. A Party bringing a Product Specific Infringement Action under this Section 7.6 against any Third Party engaged in Infringement of the Mission Product Patents will be solely responsible for any expenses incurred by such Party as a result of such Product Specific Infringement Action. If such ... |
7.7 Enforcement of Other Patents. |
(a) The Parties will promptly notify each other of any actual, threatened, alleged or suspected infringement of the AbbVie Patents, Joint Program Patents or Other Mission Patents of which such Party becomes aware with respect to the unauthorized Exploitation of a Licensed Compound or Licensed Product. A submission of a... |
(b) AbbVie will have the sole right, but not the obligation, to bring at its expense an appropriate suit or other action against any Third Party allegedly engaged in any infringement of any AbbVie Patents, and Mission shall have no such right in respect of the AbbVie Patents. |
(c) AbbVie will have the first right, but not the obligation, to bring and control, at its expense, any Infringement Action of any Joint Program Patents that are Directed to any Licensed Compounds (or molecules that would qualify as DUB Hits if an Initially Selected DUB or a Selected DUB becomes an Exclusively Licensed... |
(d) With respect to the unauthorized Exploitation of any molecule (or any product containing such molecule) that is not a Licensed Compound (or Licensed Product), Mission will have the sole right but not the obligation to bring at its expense an appropriate suit or other action against any Third Party allegedly engaged... |
(e) A Party Enforcing a Patent in an Infringement Action under this Section 7.7 will be solely responsible for any expenses incurred by such Party as a result of such Infringement Action. If such Party recovers monetary damages in such Infringement Action, such recovery will first be applied to all out-of-pocket costs ... |
7.8 Third Party Rights. |
(a) The Parties will promptly notify each other of any written allegation received by such Party or its Affiliates that any activity pursuant to this Agreement infringes the Patent rights of any Third Party. In addition, the Parties will notify each other if either Party desires to obtain a license or otherwise pursue ... |
(b) Notwithstanding the foregoing, in the case a claim of infringement of a Patent is brought against a Party in a suit or other action or proceeding with respect to any Third Party Patent under Section 7.8(a), such Party will have the right, at its own expense and by counsel of its own choice, to prosecute and defend ... |
(c) Without the prior written consent of the other Party (not to be unreasonably withheld, conditioned or delayed), neither Party will settle any claim under this Section 7.8 in any manner that would impose any liability or out-of-pocket costs on, or involves any admission by, the other Party. |
(d) The Parties will cooperate in all respects with one another in prosecuting or defending any action pursuant to this Section 7.8. |
7.9 Reexaminations, Oppositions and Related Actions. |
(a) In the event that any Third Party files any paper in a court, patent office or other government entity, seeking to invalidate, reexamine, oppose or compel the licensing of any Mission Product Patent, Mission Program Patent, Mission Background Patent, AbbVie Patent, Joint Program Patent, or threatens to file such pa... |
(b) The Party who has such Enforcement right to or is Enforcing such Patent will have the first right to bring and control, at its expense, any effort in defense of such a Patent Challenge, and specifically in the case where such Patent Challenge is made in connection with an Infringement Action then currently being En... |
7.10 Patent Contacts. Each Party will designate patent counsel representatives who will be responsible for coordinating the activities between the Parties in accordance with this Article 7 (each a "Patent Contact"). Each Party will designate its initial Patent Contact within thirty (30) days following the Effective Dat... |
7.11 Personnel Obligations. Prior to receiving any Confidential Information or beginning work under this Agreement each employee, agent or Third Party contractor of AbbVie or Mission or of either Party's respective Affiliates will be bound in writing by non-disclosure and invention assignment obligations which are cons... |
7.12 Further Action. Each Party will, upon the reasonable request of the other Party, provide such assistance and execute such documents as are reasonably necessary for such Party to exercise its rights and perform its obligations pursuant to this ARTICLE 7; provided, however, that neither Party will be required to tak... |
ARTICLE 8 CONFIDENTIALITY |
8.1 Product Information. Mission recognizes that by reason of, inter alia, AbbVie's status as an exclusive licensee pursuant to the grants under Section 4.1, AbbVie has an interest in Mission's maintaining the confidentiality of certain information of Mission. Accordingly, during the Term, Mission shall, and shall caus... |
8.2 Mission Unrestricted Compound Information. AbbVie recognizes that by reason of, inter alia, Mission's status as an exclusive licensee pursuant to the grants under Section 4.4, Mission has an interest in AbbVie's maintaining the confidentiality of certain information of AbbVie. Accordingly, AbbVie shall, and shall c... |
8.3 Confidentiality Obligations. At all times during the Term and for a period of ten (10) years following termination or expiration hereof in its entirety, each Party shall, and shall cause its officers, directors, employees and agents to, keep confidential and not publish or otherwise disclose to a Third Party and no... |
(a) has been published by a Third Party or is or hereafter becomes part of the public domain by public use, publication, general knowledge or the like through no wrongful act, fault or negligence on the part of the receiving Party; |
(b) have been in the receiving Party's possession prior to disclosure by the disclosing Party without any obligation of confidentiality with respect to such information; |
(c) is subsequently received by the receiving Party from a Third Party without restriction and without breach of any agreement between such Third Party and the disclosing Party; or |
(d) have been independently developed by or for the receiving Party without reference to, or use or disclosure of the disclosing Party's Confidential Information. |
Specific aspects or details of Confidential Information shall not be deemed to be within the public domain or in the possession of the receiving Party merely because the Confidential Information is embraced by more general information in the public domain or the general nature of the Confidential Information is in the ... |
8.4 Permitted Disclosures. Each Party may disclose Confidential Information to the extent that such disclosure is: |
(a) in the reasonable opinion of the receiving Party's legal counsel, required to be disclosed pursuant to law, regulation or made in response to a valid order of a court of competent jurisdiction or other supra-national, federal, national, regional, state, provincial and local governmental or regulatory body of compet... |
(b) made by or on behalf of the receiving Party to the Regulatory Authorities as required in connection with any filing, application or request for Regulatory Approval in accordance with the terms of this Agreement; provided, however, that reasonable measures shall be taken to assure confidential treatment of such info... |
(c) made by or on behalf of the receiving Party to a patent authority as may be reasonably necessary or useful for purposes of obtaining, defending or enforcing a Patent in accordance with the terms of this Agreement; provided, however, that reasonable measures shall be taken to assure confidential treatment of such in... |
(d) excluding, with respect to Mission, any Confidential Information relating to the structure of any Licensed Compound or Licensed Product and, with respect to AbbVie, any Confidential Information relating to the structure of any Unrestricted Mission Compound, made to its or its Affiliates' financial and legal advisor... |
(e) excluding, with respect to Mission, any Confidential Information relating to the structure of any Licensed Compound or Licensed Product and, with respect to AbbVie, any Confidential Information relating to the structure of any Unrestricted Mission Compound, made by the receiving Party or its Affiliates or Sublicens... |
(f) excluding, with respect to Mission, any Confidential Information relating to the structure of any Licensed Compound or Licensed Product and, with respect to AbbVie, any Confidential Information relating to the structure of any Unrestricted Mission Compound, made by the receiving Party or its Affiliates to potential... |
8.5 Use of Name. Except as expressly provided herein, neither Party shall mention or otherwise use the name, logo, or Trademark of the other Party or any of its Affiliates (or any abbreviation or adaptation thereof) in any publication, press release, marketing and promotional material, or other form of publicity withou... |
8.6 Public Announcements. The Parties have agreed upon the content of a press release which shall be issued substantially in the form attached hereto as Schedule 8.6, the release of which the Parties shall coordinate in order to accomplish such release promptly upon execution of this Agreement. Neither Party shall issu... |
8.7 Publications. Each Party recognizes that the publication of papers regarding results of, and other information regarding, activities under this Agreement, including oral presentations and abstracts, may be beneficial to both Parties, provided that such publications are subject to reasonable controls to protect Conf... |
8.8 Return of Confidential Information. Upon the effective date of the termination of this Agreement for any reason, either Party may request in writing, and the other Party shall either, with respect to Confidential Information (in the event of termination of this Agreement with respect to one or more Exclusively Lice... |
8.9 Survival. All Confidential Information shall continue to be subject to the terms of this Agreement for the applicable periods set forth in this Article 8 regardless of the termination or expiration of this Agreement. |
8.10 Termination of Prior CDA. This Agreement terminates, as of the Effective Date, the Prior CDA. All Information exchanged between the Parties under the Prior CDA shall be deemed Information exchanged under this Agreement, and shall be subject to the terms and conditions of this Agreement. |
ARTICLE 9 TERM AND TERMINATION |
9.1 Term. This Agreement shall become effective on the Effective Date and, unless earlier terminated pursuant to this ARTICLE 9, shall continue until the expiry of the last Royalty Term for the last Licensed Product for the last country (such period, the "Term"). Upon expiration of the Term, the license granted to AbbV... |
9.2 Termination by AbbVie for Convenience. AbbVie shall have the right to terminate this Agreement in its entirety or on an Exclusively Licensed DUB-by-Exclusively Licensed DUB basis for any reason or no reason (i) upon ninety (90) days' prior written notice to Mission prior to Regulatory Approval for any applicable Li... |
9.3 Termination by Mission for Failure to Select DUBs. |
(a) Initially Selected DUBs and Selected DUBs. In the event that AbbVie has not (i) selected any Pre-Selected DUBs as Initially Selected DUBs within thirty (30) days of the end of the Stage 1A Period (a "Stage 1A DUB Failure"), or (ii) paid the Stage 1 Fee within thirty (30) days of the end of the Stage 1 Period (a "St... |
(b) Exclusively Licensed DUBs. In the event that AbbVie has not paid the Exclusively Licensed DUB Fee within thirty (30) days of the end of the Stage 2 Period, then Mission shall provide written notice to AbbVie of such failure. If, within ten (10) Business Days following such written notice, AbbVie does not pay the Ex... |
9.4 Termination for Material Breach. |
(a) Material Breach. |
(i) Prior to the Completion of Stage 2. If, prior to completion of the Stage 2 Period (which period shall include, for the purposes of this Section 9.4(a)(i), the period during which any dispute under Section 9.3 is resolved), either Party (the "Non-Breaching Party") believes that the other Party (the "Breaching Party"... |
(ii) Following the Completion of Stage 2. Notwithstanding clause (i) of this Section 9.4(a), following the completion of the Stage 2 Period, the following terms and conditions will apply: if the Non-Breaching Party believes the Breaching Party has materially breached one (1) or more of its obligations under this Agreem... |
(b) Invocation of Termination for Material Breach. Notwithstanding the foregoing, the Parties agree that termination pursuant to this Section 9.4 is a remedy to be invoked only if the breach cannot be adequately remedied through a combination of specific performance and the payment of money damages. In that regard, if ... |
9.5 Termination by Mission for Patent Challenge. In the event that AbbVie or any of its Affiliates or Sublicensees directly assert in its own respective name or directs or assists a Third Party to assert a Patent Challenge, Mission will have the right to terminate this Agreement in its entirety upon ninety (90) days wr... |
9.6 Termination by Either Party for Insolvency. In the event that either Party (a) files for protection under bankruptcy or insolvency laws, (b) makes an assignment for the benefit of creditors, (c) appoints or suffers appointment of a receiver or trustee over substantially all of its property that is not discharged wi... |
9.7 Rights in Bankruptcy. |
(a) Applicability of 11 U.S.C. § 365(n). All rights and licenses (collectively, the "Intellectual Property") granted under or pursuant to this Agreement, including all rights and licenses to use improvements or enhancements developed during the Term, are intended to be, and shall otherwise be deemed to be, for purposes... |
(b) Rights of non-Debtor Party in Bankruptcy. If a bankruptcy proceeding is commenced by or against either Party under the Bankruptcy Code or any analogous provisions in any other country or jurisdiction, the non-debtor Party shall be entitled to a complete duplicate of (or complete access to, as appropriate) any Intel... |
9.8 Effects of Termination. |
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