Amendment Agreement to Co-operative Antiviral Research and License Agreements among Idenix Pharmaceuticals, Idenix SARL, and Università degli Studi di Cagliari
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Summary
This agreement, dated October 24, 2005, is between Idenix Pharmaceuticals, Inc., Idenix SARL, and Università degli Studi di Cagliari. It amends previous agreements related to joint antiviral research and the licensing of resulting intellectual property. The amendment clarifies the definition of covered patents, updates royalty and fee structures for sublicensing to affiliates (including Novartis), and specifies payment methods. The agreement ensures the University receives royalties and a share of certain payments from affiliates for products covered by the licensed patents, with the changes effective upon final signature.
EX-10.1 2 b57413ipexv10w1.txt EX-10.1 AGREEMENT DATED OCTOBER 24, 2005 EXHIBIT 10.1 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. AGREEMENT This agreement is made by and between IDENIX PHARMACEUTICALS, INC., a corporation organized and existing under the laws of the State of Delaware, having its principal offices located at 60 Hampshire Street, Cambridge, MA 02139 represented by its legal representative Mr. Jean-Pierre Sommadossi (hereinafter referred to as "Idenix") and IDENIX SARL, a corporation organized and existing under the laws of France, having registered offices in Immueuble "La Vigie" 170 rue Leon Blum, 34000 Montpellier, France, represented by its legal representative Mr. Jean-Marc Allaire (hereinafter referred to as "Idenix SARL") and UNIVERSITA' DEGLI STUDI DI CAGLIARI, having a principal place of business at Cittadella Universitaria, SS 554 KM 4.5, 09133 Monserrato, Cagliari, Italy, represented by the Chancellor Prof. Pasquale Mistretta (hereinafter referred to as the "University") whereas a) on 4 January 1999, the University and Idenix SARL, this last on behalf and for the benefit of Idenix, entered into an agreement entitled "Co-operative Antiviral Research Activity Agreement" (hereinafter referred to as the "Co-operative Agreement") aimed at performing a joint research activity in the antiviral substances field; b) in accordance with the Co-operative Agreement, on 14 December 2000, the University and Idenix entered into a license agreement (hereinafter the "License Agreement") according to which the University grants to Idenix the exclusive license for the exploitation, whether direct or indirect, of the results obtained and that will be obtained from the performance of the activity indicated under the previous point; c) the above mentioned Co-operative Agreement and License Agreement (together, the "Original Agreements") have been initially amended on 10 April 2002; d) the Original Agreements, as so amended, have been afterwards amended with the deed undersigned by the parties on 8 May 2003, also in consideration of the transactions at that time pending between Idenix and Novartis Pharma AG for the acquisition, by this last, of the majority of the shareholding of Idenix (the amendments indicated in this point have become effective on 8 May 2003, following to the occurred execution of a "Development, License and Commercialization Agreement" and of a "Manufacturing and Supply Agreement" by and among Idenix, Idenix (Cayman) Limited and Novartis) (together, the "Novartis Agreements"); e) the parties further amended the Original Agreements, as previously amended, on 30 June 2004 (the "June 30 Letter Amendment"); f) with the present agreement the parties intend to further amend the terms of the Original Agreements (the "Original Agreements", as amended through and including this agreement, collectively, the "Cagliari Agreements", provided that the "Cagliari Agreements" do not include the "Novartis Agreements"); now, therefore, in consideration of the premises and the mutual covenants herein contained, Idenix, Idenix SARL and the University agree as follows: 1. The premises shall represent an integral and substantial part of this agreement. Capital letter terms used and not otherwise defined herein shall refer to the definitions provided under the Cagliari Agreements, which shall apply for the purposes of this agreement. 2. "Subject Intellectual Property Rights" shall mean (A) those families of patents and families of patent applications (including U.S. provisional patent applications, conversions, continuations, divisions, continuations-in-part thereof) (i) whose earliest priority filing date is before May 14, 2003 or (ii) which include compounds or methods first disclosed in a patent or patent application whose earliest priority filing date is before May 14, 2003, and which are set forth in Exhibit A attached hereto under the caption "Original Patents" ("Original Patents"); and (B) those families of patents and families of patent applications (including U.S. provisional patent applications, conversions, continuations, divisions and continuations-in-part thereof) other than Original Patents whose earliest priority filing date is on or after 14 May 2003, and which are set forth in Exhibit A attached hereto under the caption "Subsequent Patents" ("Subsequent Patents"). Exhibit A attached hereto shall also replace and supercede the current Annex A to the License Agreement. Subsequent amendments to Exhibit A shall occur as contemplated in paragraph five of the June 30 Letter Amendment. 3. "Valid Claim" shall mean a claim (a) of any issued, unexpired patent included in the Subject Intellectual Property Rights that has not been revoked or held unenforceable or invalid by a decision of a court or governmental agency of competent jurisdiction from which no appeal can be taken, or with respect to which an appeal is not taken within the time allowed for appeal, and that has not been disclaimed or admitted to be invalid or unenforceable through reissue, disclaimer or otherwise, or (b) of any patent application included in the Subject Intellectual Property Rights that has not been cancelled, withdrawn or abandoned or been pending for more than ten (10) years. 4. The parties hereby agree that, in connection with any Subject Intellectual Property Right sublicensed by Idenix to an Affiliate, Idenix shall pay to the University: 2 A. a royalty rate amounting to: (i) [**]% of Net Sales performed, after the Effective Date as defined under article 6, by such Affiliate (or its Affiliates and/or sublicensees) of products which, but for the license granted under the Cagliari Agreements, would infringe one or more Valid Claims of an Original Patent; and (ii) [**]% of Net Sales performed, after the Effective Date as defined under article 6, by such Affiliate (or its Affiliates and/or sublicensees) of products which, but for the license granted under the Cagliari Agreements, would infringe one or more Valid Claims of a Subsequent Patent only; plus B. a percentage of any license fee, milestone payment and other cash consideration, paid to Idenix by such Affiliate after the Effective Date as defined under article 6 (excluding royalties and amounts paid to fund or reimburse research, development, manufacturing or commercialization expenses) with respect to research, development or commercialization of products which, but for the license granted under the Cagliari Agreements, the sale of which products would infringe one or more Valid Claims of any Subject Intellectual Property Right (an "Affiliate Fee"), amounting to: (i) [**]% of any Affiliate Fee where a relevant Subject Intellectual Property Right is an Original Patent; and (ii) [**]% of any Affiliate Fee where the relevant Subject Intellectual Property Right consists only of one or more Subsequent Patents. For clarification, in no event shall the University have any right or claim to payments made by an Affiliate with respect to an Affiliate's purchase of Idenix securities, any Idenix financing or any other payment made by an Affiliate other than such payments which specifically relate to the Subject Intellectual Property Rights and drug products covered thereby, as provided above. The parties hereby agree that Novartis is an Affiliate. In the case of direct exploitation by Idenix and / or of licensing to a third party other than an Affiliate, the terms of the License Agreement as in effect immediately prior to this agreement are and remain in effect unmodified by this agreement. 3 5. As regards the method of payment of the amounts indicated in the foregoing art. 4 of this agreement, the parties hereby agree that art. 4 of the License Agreement shall apply. 6. The amendments provided under the present agreement shall apply from the date of its subscription by the last of all the subscribing parties to so subscribe (the "Effective Date"). 7. Notwithstanding anything in the Cagliari Agreements, Idenix and Idenix SARL or their successor(s) shall have the right, without the University's consent, to amend, modify or terminate any agreements, including the Novartis Agreements, but excluding the Cagliari Agreements. 8. This agreement is drafted in English and, for the sole purpose of allowing the University to better comprehend the relevant content, in Italian, being understood that in case of contrasts between the English version and the Italian version, the English one shall prevail. 9. Except as amended hereby, the Original Agreements remain in full force and effect. [Remainder of Page Intentionally Left Blank] 4 IN WITNESS WHEREOF, Idenix, Idenix SARL and the University have caused this agreement to be duly executed by their authorized representatives. IDENIX PHARMACEUTICALS, INC. By: /s/ Andrea J. Corcoran --------------------------------- Name: Andrea J. Corcoran Title: Executive Vice President, Legal and Administration Date October 24, 2005 IDENIX SARL By: /s/ Jean-Pierre Sommadossi --------------------------------- Name: Jean-Pierre Sommadossi Title: Chairman and Chief Executive Officer Date October 24, 2005 THE UNIVERSITY By: /s/ Pasquale Mistretta --------------------------------- Prof. Pasquale Mistretta Chancellor of the University Date October 24, 2005 By: /s/ Paolo La Colla --------------------------------- Prof. Paolo La Colla Date October 24, 2005 EXHIBIT A
