Patent License Agreement between Boston Biosystems, Inc. and Hybridon, Inc. (OriGenix Agreements)

Summary

Boston Biosystems, Inc. and Hybridon, Inc. entered into this agreement on September 20, 2000. Boston Biosystems acquired certain patents from Hybridon, but is granting Hybridon a worldwide license to use these patents solely to fulfill its obligations to OriGenix Technologies, Inc. under existing agreements. Hybridon must pay Boston Biosystems any royalties or lump sum payments it receives from OriGenix that relate to the licensed patents. The agreement also includes confidentiality provisions and specifies that any conflicting terms with the OriGenix agreements will not be enforced.

EX-10.64 9 b37714a3ex10-64.txt AGREEMENT OF ACQUIRED ASSETS 1 Exhibit 10.64 CONFIDENTIAL TREATMENT REQUESTED EXECUTION VERSION AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS dated as of September 20, 2000 by and between HYBRIDON, INC. and BOSTON BIOSYSTEMS, INC. 2 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS This AGREEMENT RELATING TO PATENTS FORMING PART OF ACQUIRED ASSETS BUT TO BE LICENSED BACK TO HYBRIDON FOR THE PURPOSES OF ORIGENIX AGREEMENTS (the "Agreement"), dated as of September 20, 2000 (the "Effective Date"), is entered into by and between Boston Biosystems, Inc., a Delaware corporation (the "Licensor"), having a principal place of business located at 75A Wiggins Avenue, Bedford, Massachusetts 01730 (hereinafter referred to as "BBI") and Hybridon, Inc., a Delaware corporation (the "Licensee"), having a principal place of business located at 155 Fortune Blvd., Milford, Massachusetts 01757 (hereinafter referred to as "HYBRIDON"). HYBRIDON and BBI are sometimes referred to herein individually as a "Party" and collectively as the "Parties", and all references to "HYBRIDON" and "BBI" shall include their respective Affiliates, where appropriate under the terms of this Agreement. W I T N E S S E T H: WHEREAS, HYBRIDON has entered into that certain Asset Purchase Agreement dated ________________ ("Purchase Agreement") to transfer certain patents and patent applications as listed in Appendix A attached hereto ("Patents") to BBI; WHEREAS, HYBRIDON has granted certain rights under the Patents to OriGenix Technologies, Inc., a corporation incorporated under the laws of the Province of Quebec, Canada ("OriGenix") by virtue of the license and supply agreements dated January 22, 1999 ("OriGenix License Agreement" and "OriGenix Supply Agreement," collectively the "OriGenix Agreements"), attached hereto as Appendix B; WHEREAS, BBI wishes to grant, and HYBRIDON wishes to receive, a license under the Patents to allow HYBRIDON to fulfill its obligations to OriGenix under the OriGenix Agreements; NOW, THEREFORE, in consideration of the foregoing recitals, the parties hereto, intending to be legally bound, do hereby agree as follows: ARTICLE I DEFINITIONS SECTION 1.01. Definitions. The following terms, when capitalized, shall have the following meanings (such meanings to be equally applicable to both the singular and plural forms of the terms defined) as used in this Agreement: -2- 3 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. "Affiliate(s)" means any person, corporation, partnership, firm, joint venture or other entity now currently existing or which may be formed in the future, which directly or indirectly, through one or more intermediaries, controls, is controlled by, or is under common control with, HYBRIDON, BBI, or AVECIA HOLDINGS PLC, as the case may be. As used in this definition, "control" means direct or indirect ownership of an entity, whether through the ownership of more than 50% of the outstanding voting securities or by contract or otherwise. "AVECIA HOLDINGS PLC" or "AVECIA HOLDINGS" is a company organized under the laws of United Kingdom, and its registered office address is PO Box 42, Hexagon House, Blackley, Manchester, M9 8ZS, United Kingdom. "Confidential Information" shall have the meaning set forth in Article III. "Control" or "Controlled" shall refer to possession of the ability to grant a license or sublicense of patent rights, know-how or other intangible rights as provided for herein without violating the terms of any agreement or other arrangement with any Third Party. "Effective Date" shall have the meaning set forth in the Recitals to this Agreement. "Patent" means United States and foreign patents, applications and provisional applications for United States and foreign patents, and all reexaminations, reissues, extensions, term restorations, divisionals, continuations and continuations-in-part thereof. "Territory" means worldwide. "Third Party" or "Third Parties" means any entity other than HYBRIDON, BBI or AVECIA HOLDINGS, and their respective Affiliates. ARTICLE II LICENSE GRANT SECTION 2.01. Subject to the terms and conditions of this Agreement, BBI hereby grants to HYBRIDON a worldwide license with right to sublicense under the Patents solely for the purpose of allowing HYBRIDON to fulfill all its obligations to OriGenix under the OriGenix Agreements ("the License"). SECTION 2.02. In the event that HYBRIDON receives any lump sum, royalty or similar payments in respect of its obligations to OriGenix under the OriGenix Agreements (other than payments in respect of the supply of products thereunder), to the extent that such payments relate to the Patents, HYBRIDON shall promptly pay to -3- 4 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. BBI the equivalent amount of such payments, provided that if such payments relate in part to the Patents and in part to other patents or intellectual property: (a) HYBRIDON shall promptly pay to BBI the equivalent amount of such proportion of the payments as fairly and reasonably relates to the Patents ("the Proportion"); (b) In the event of any dispute between HYBRIDON and BBI as to the Proportion, such dispute shall be referred for decision to an independent expert agreed between the parties (and in default of agreement appointed by BBI), such person to act as an expert and his decision to be final and binding on the parties; and (c) If HYBRIDON receives a lump sum payment from OriGenix in full payment for a license to make or have made products under the OriGenix Agreements, HYBRIDON will pay *** of such payment to BBI, the payment to BBI not to be less than ***. SECTION 2.03. To the extent that any provision of this Agreement conflicts with Hybridon's obligations under the OriGenix License Agreement, that provision will not be enforced. ARTICLE III CONFIDENTIALITY SECTION 3.01. Confidentiality; Exceptions. 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 five (5) years thereafter, they shall keep confidential the existence of this Agreement and shall not publish or otherwise disclose or use for any purpose other than as provided for in this Agreement any information and materials furnished to it by the other Party pursuant to this Agreement, or any provisions of this Agreement that are the subject of an Effective order of the Securities Exchange Commission granting confidential treatment pursuant to the Securities Act of 1934, as amended (collectively, "Confidential Information"), except to the extent that it can be established by the receiving Party that such Confidential Information: (a) was already known to the receiving Party as shown by written record, 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 as shown by written record; (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 -4- 5 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. (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. SECTION 3.02. Authorized Disclosure. Each Party may disclose Confidential Information hereunder 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 pre-clinical or clinical trials, provided that if a Party is required by law or regulation to make any such disclosures 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 reasonable efforts to secure confidential treatment of such Confidential Information required to be disclosed. In addition, and with prior written notice to the other Party of each Third Party with whom a confidential disclosure agreement is being entered into, each Party shall be entitled to disclose, under a binder of confidentiality containing provisions as protective as those of this Article, Confidential Information to any Third Party for the purpose of carrying out the purposes of this Agreement. Nothing in this Article shall restrict any Party from using for any purpose any Confidential Information independently developed by it during the term of this Agreement. SECTION 3.03. Publicity Review. Subject to the further provisions of this Section, no Party shall originate any written publicity, news release, or other announcement or statement relating to this Agreement or to performance hereunder or the existence of an arrangement between the Parties (collectively, "Written Disclosure"), without the prior prompt review and written approval of the other, which approval shall not be unreasonably withheld or delayed. Notwithstanding the foregoing provisions of this Section, any Party may make any public Written Disclosure it believes in good faith based upon the advice of counsel is required by applicable law or any listing or trading agreement concerning its publicly traded securities, provided that prior to making such Written Disclosure, the disclosing Party shall provide the other Party with a copy of the materials proposed to be disclosed and provide the receiving Party with an opportunity to promptly review the proposed Written Disclosure. To the extent that the receiving Party reasonably requests that any information in the materials proposed to be disclosed be deleted, the disclosing Party shall request confidential treatment of such information pursuant to Rule 406 of the Securities Act of 1933 or Rule 26b-2 of the Securities Exchange Act of 1934, as applicable (or any other applicable regulation relating to the confidential treatment of information), so that there be omitted from the materials that are publicly filed any information that the receiving Party reasonably requests to be deleted. The terms of this Agreement may also be disclosed to (i) government agencies where required by law, or (ii) Third Parties with the prior written consent of the other Party, which consent shall not be unreasonably withheld or delayed, so long as such disclosure is made under a binder of confidentiality and so long as highly sensitive terms and conditions such as financial terms are extracted from the Agreement or not disclosed upon the request of the other Party. All Written Disclosures shall be factual and as brief -5- 6 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. as is reasonable under the circumstances. Upon request by either Party, the Parties agree to prepare a mutually agreed press release and question and answer document with respect to this Agreement. Each Party agrees that all Written Disclosures and oral statements relating hereto shall be consistent with the answers specified in such question and answer document. SECTION 3.04. Survival. This Article shall survive the termination or expiration of this Agreement for a period of five (5) years. ARTICLE IV INTELLECTUAL PROPERTY AND PATENT RIGHTS SECTION 4.01. Notice. Each of the parties shall promptly notify the other in writing if it: (i) receives any notice or becomes aware of any information that in any way affects the other party's rights under this Agreement; or (ii) becomes aware of any actual or suspected infringement, misappropriation or misuse by a Third Party of the Patents in the Territory. SECTION 4.02. Infringement. (a) BBI's and HYBRIDON's Rights to Enforce. BBI shall have the right (but not the obligation), in its sole discretion, to take action at its own expense against actual or suspected infringers of the Patents in the Territory, and any and all recoveries resulting from such actions by BBI shall be retained by BBI. At BBI's request, and at BBI's expense, HYBRIDON shall take all reasonable steps and shall provide any materials, cooperation and assistance as may be reasonably required to assist BBI in taking action against actual or suspected infringers in the Territory. HYBRIDON shall join any such action as a necessary and indispensable party if so required. Notwithstanding any of the above in this Section 4.02 (a), HYBRIDON shall have all rights of enforcement reasonably necessary for it to fulfill its obligations under Section 5.1 of the OriGenix License Agreement. In any such action taken by HYBRIDON in fulfillment of its obligations thereunder, at HYBRIDON's request, and at HYBRIDON's expense, BBI shall take all reasonable steps and shall provide any materials, cooperation and assistance as may be reasonably required to assist HYBRIDON in taking action against actual or suspected infringers in the Territory. BBI shall join any such action as a necessary and indispensable party if so required. -6- 7 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. ARTICLE V INDEMNIFICATION; LIMITATION OF LIABILITY SECTION 5.01. Indemnification by BBI. BBI shall defend, indemnify and hold HYBRIDON, and its and their officers, directors, shareholders, employees and agents harmless and shall pay all losses, damages, fees, expenses or costs (including reasonable attorneys' fees) incurred by them based upon any claim or action alleging BBI's breach of its obligations, representations, warranties or covenants hereunder unless HYBRIDON's negligence caused the losses, damages, fees, expenses or costs. SECTION 5.02. Indemnification by HYBRIDON. HYBRIDON shall defend, indemnify and hold BBI and its officers, directors, shareholders, employees and agents harmless and shall pay all losses, damages, fees, expenses or costs (including reasonable attorney's fees) incurred by them based upon any claim or action alleging HYBRIDON's breach of its obligations, representations, warranties or covenants hereunder unless BBI's negligence caused the losses, damages, fees, expenses or costs. SECTION 5.03 Limitation of Liability. EXCEPT AS SET FORTH IN SECTION 7.03 HEREIN, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY OR ANY THIRD PARTY FOR ANY SPECIAL, CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE SAME), ARISING FROM ANY CLAIM RELATING TO THIS AGREEMENT, THE PATENTS OR ANY IMPROVEMENT, WHETHER SUCH CLAIM IS BASED ON WARRANTY, CONTRACT, TORT (INCLUDING NEGLIGENCE OR STRICT LIABILITY) OR OTHERWISE, EVEN IF AN AUTHORIZED REPRESENTATIVE OF SUCH PARTY IS ADVISED OF THE POSSIBILITY OR LIKELIHOOD OF SAME. ARTICLE VI DISPUTE RESOLUTION. SECTION 6.01. Disputes. Without prejudice to the provisions in SECTION 2.02(b), the Parties recognize that disputes as to certain matters may from time to time arise during the term of this Agreement which relate to either Party's rights and/or obligations hereunder or thereunder. It is the intent of the Parties to establish procedures to facilitate the resolution of disputes arising under this Agreement in an expedient manner by mutual cooperation and without resort to litigation. To accomplish this objective, the Parties agree to follow the procedures set forth in this Article if and when a dispute arises under this Agreement. SECTION 6.02. Good Faith. The parties shall negotiate in good faith to resolve the dispute. -7- 8 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. SECTION 6.03. Personal Meeting. If the dispute remains unresolved, executives from the interested business units or division of the parties shall meet in person, at a mutually agreed upon time and place, to negotiate in good faith to resolve the dispute. If the dispute continues to remain unresolved for more than sixty (60) days from the date the parties met to negotiate pursuant to this Section, then either party may pursue other dispute resolution procedures, including the institution of arbitration as more fully set forth herein. SECTION 6.04. Alternative Dispute Resolution. Any dispute controversy or claim arising out of or relating to the validity, construction, enforceability or performance of this Agreement, including disputes relating to an alleged breach or to termination of this Agreement, but excluding (i) any dispute, controversy or claim arising out of or relating to the validity, enforceability, or infringement of any Patent and (ii) other than disputes which are expressly prohibited herein from being resolved by this mechanism, shall be settled by binding Alternative Dispute Resolution ("ADR") in the manner described below: (a) If a Party intends to begin an ADR to resolve a dispute, such Party shall provide written notice (the "ADR Request") to counsel for the other Party informing such other Party of such intention and the issues to be resolved. From the date of the ADR Request and until such time as any matter has been finally settled by ADR, the running of the time periods contained in SECTION 6.05 as to which a Party must cure a breach of this Agreement shall be suspended as to the subject matter of the dispute. (b) Within sixty (60) days after receipt of the ADR Request, the other Party may, by written notice to counsel for the Party initiating ADR, add additional issues to be resolved. SECTION 6.05. Arbitration Procedures. An ADR initiated under this Agreement will proceed in accordance with the Commercial Arbitration Rules of the American Arbitration Association then in effect, insofar as such rules are not inconsistent with the provisions expressly set forth in this Agreement, unless the Parties mutually agree otherwise, and pursuant to the following procedures: (a) Notice of the demand for arbitration will be filed in writing with the other Party and with the American Arbitration Association. The arbitration panel shall consist of one (1) arbitrator mutually agreed to by the Parties and the decision shall be final and binding on the Parties and their legal successors. (b) The arbitrator may, at his discretion, provide for discovery by the Parties, not to exceed four (4) months from the date of filing of the Notice of Arbitration. (c) Any arbitration hearing shall be conducted in Wilmington, Delaware. The governing law will be as specified herein. The arbitrator will have authority to award both legal and equitable relief but not to award punitive damages. -8- 9 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. (d) All costs and fees of the arbitration, other than each Party's legal fees and expenses, will be allocated by the arbitrators. Subject to subsection (c), each Party shall bear its own legal fees and expenses. (e) A final written decision by the arbitrator will be rendered not later than thirty (30) days following the completion of the hearing. (f) The ADR proceeding shall be confidential and the arbitrator shall issue appropriate protective orders to safeguard each Party's confidential information. Except as required by law, no Party shall make (or instruct the arbitrator to make) any public announcement with respect to the proceedings or decision of the arbitrator without prior written consent of each other Party. The existence of any dispute submitted to ADR, and the award, shall be kept in confidence by the Parties and the arbitrator, except as required in connection with the enforcement of such award or as otherwise required by applicable law. SECTION 6.06. Survivability. Any duty to arbitrate under this Agreement shall remain in effect and enforceable after termination of this Agreement for any reason. SECTION 6.07. Jurisdiction. For the purposes of this Article, each Party agrees to abide by the award rendered in any arbitration, and the Parties agree to accept the jurisdiction of any court having jurisdiction over the Parties for the purposes of enforcing awards entered pursuant to this Article and for enforcing the agreements reflected in this Article. SECTION 6.08. Equitable Remedies. Nothing in this Section shall prevent either party from pursuing a temporary restraining order, injunctive relief or other equitable relief against the other party at any time if the allegedly aggrieved party believes that a breach or a threatened breach of this Agreement would cause it irreparable harm provided that the other party is given thirty (30) days written notice prior to equitable relief being sought. ARTICLE VII REPRESENTATIONS AND WARRANTIES SECTION 7.01. BBI represents, warrants and covenants that: (a) BBI is a corporation duly organized, existing and in good standing under the laws of the State of Delaware, with full right, power and authority to enter into and perform this Agreement and to grant all of the rights, powers and authorities herein granted. -9- 10 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. (b) The execution, delivery, and performance of this Agreement do not conflict with, violate, or breach any agreement to which BBI is a party, or BBI's articles of incorporation or bylaws. (c) This Agreement has been duly executed and delivered by BBI and is a legal, valid, and binding obligation enforceable against BBI in accordance with its terms. (d) BBI knows of no fact which does or could materially adversely affect the rights granted to HYBRIDON hereunder, except as disclosed herein. SECTION 7.02. HYBRIDON represents, warrants and covenants that: (a) HYBRIDON is a corporation duly organized, existing, and in good standing under the laws of the State of Delaware, with full right, power and authority to enter into and perform this Agreement and to grant all of the rights, powers, and authorities herein granted. (b) The execution, delivery, and performance of this Agreement do not conflict with, violate, or breach any agreement to which HYBRIDON is a party, or HYBRIDON's certificate of incorporation or bylaws. (c) This Agreement has been duly executed and delivered by HYBRIDON, and is a legal, valid, and binding obligation enforceable against HYBRIDON in accordance with its terms. SECTION 7.03. Effect of Representations, Warranties and Covenants. The Parties agree that if the representations and warranties made by BBI under this Article are not true and accurate, or if the covenants made by BBI under this Article are not upheld and complied with, and HYBRIDON incurs reasonably foreseeable damages, liabilities, costs or other expenses as a result of such falsity or non- compliance, then BBI shall indemnify and hold HYBRIDON harmless from and against any such reasonably foreseeable damages, liabilities, costs or other expenses incurred as a result of such falsity or such non-compliance. ARTICLE VIII INFORMATION AND REPORTS SECTION 8.01. Records of Revenues and Expenses. (a) HYBRIDON will maintain complete and accurate records which are relevant to payments subject to SECTION 2.02, costs, expenses and payments under this Agreement and such records shall be open during reasonable business hours for a period of two (2) years from creation of individual records for examination at BBI's expense and not more often than once each year by a certified public accountant -10- 11 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. selected by BBI for the sole purpose of verifying for the BBI the correctness of calculations and classifications of such revenues, costs, expenses or payments made under this Agreement. In the absence of material discrepancies in any request for reimbursement resulting from such audit, the accounting expense shall be paid by BBI. Any records or accounting information received from HYBRIDON shall be Confidential Information. Results of any such audit shall be provided to both Parties. (b) If there is a dispute between the Parties following any audit performed pursuant to SECTION 8.01(a), either Party may refer the issue (an "Audit Disagreement") to an independent certified public accountant for resolution. In the event an Audit Disagreement is submitted for resolution by either Party, the Parties shall comply with the following procedures: (i) The Party submitting the Audit Disagreement for resolution shall provide written notice to the other Party. (ii) Within thirty (30) business days of the giving of such notice, the Parties shall jointly select a recognized international accounting firm to act as an independent expert to resolve such Audit Disagreement. (iii) The Audit Disagreement submitted for resolution shall be described by the Parties to the independent expert, which description may be in written or oral form, within ten (10) business days of the selection of such independent expert. (iv) The independent expert shall render a decision on the matter as soon as practicable. (v) The decision of the independent expert shall be final and binding, unless such Audit Disagreement involves alleged fraud, breach of this Agreement or construction or interpretation of any of the terms and conditions hereof. (vi) All fees and expenses of the independent expert, including any Third Party support staff or other costs incurred with respect to carrying out the procedures specified at the direction of the independent expert in connection with such Audit Disagreement, shall be borne by the losing Party. -11- 12 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. ARTICLE IX TERM AND TERMINATION SECTION 9.01. Term. This Agreement shall commence as of the Effective Date and shall remain in force, unless terminated as provided herein. (a) The License shall expire on the date of expiry or termination of HYBRIDON'S obligations to OriGenix under the OriGenix Agreements with respect to the Patents. HYBRIDON shall notify BBI of such expiry or termination. (b) Survivability. Termination, relinquishment or expiration of the Agreement for any reason shall be without prejudice to any rights which shall have accrued to the benefit of either Party prior to such termination, relinquishment or expiration, including damages arising from any breach hereunder. Such termination, relinquishment or expiration shall not relieve either Party from obligations which are expressly indicated to survive termination or expiration of the Agreement. ARTICLE X BANKRUPTCY SECTION 10.01. BBI shall be responsible for the maintenance of the Patents licensed hereunder pursuant to clause 5.5 of the OriGenix License Agreement. All rights and licenses granted under or pursuant to this Agreement by BBI to HYBRIDON are, and shall otherwise be deemed to be, for purposes of Section 365(n) of the Bankruptcy Code, licenses of rights to "intellectual property" as defined under Section 101(56) of the Bankruptcy Code. The parties agree that HYBRIDON, as a licensee of such rights and licenses, shall retain and may fully exercise all of its rights and elections under the Bankruptcy Code. The parties further agree that, in the event that any proceeding shall be instituted by or against BBI seeking to adjudicate it a bankrupt or insolvent, or seeking liquidation, winding up, reorganization, arrangement, adjustment, protection, relief or composition of it or its debts under any law relating to bankruptcy, insolvency or reorganization or relief of debtors, or seeking an entry of an order for relief or the appointment of a receiver, trustee or other similar official for it or any substantial part of its property or it shall take any action to authorize any of the foregoing actions (each a "Proceeding"), HYBRIDON shall have the right to retain and enforce its rights under this Agreement. -12- 13 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. ARTICLE X MISCELLANEOUS SECTION 11.01. Assignment. (a) The License granted hereunder shall be personal to HYBRIDON and shall not be assigned without the consent of BBI, except that HYBRIDON may assign the License to any party to whom HYBRIDON assigns the OriGenix Agreements, and provided HYBRIDON notifies BBI of such assignment. (b) BBI shall be entitled to assign the Patents without HYBRIDON's consent, provided that BBI also assigns the License thereunder, and provided BBI notifies HYBRIDON of such assignment. (c) This Agreement shall be binding upon and inure to the benefit of the successors and permitted assigns of the Parties. SECTION 11.02. Consents Not Unreasonably Withheld or Delayed. Whenever provision is made in this Agreement for either Party to secure the consent or approval of the other, that consent or approval shall not unreasonably be withheld or delayed. SECTION 11.03. 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 cause beyond the control of the defaulting Party, provided that the Party claiming force majeure has extended all reasonable efforts to avoid or remedy such force majeure and has given the other Party prompt notice describing such event, the effect thereof and the actions being taken to avoid or remedy such force majeure; provided, however, that in no event shall a Party be required to settle any labor dispute or disturbance. SECTION 11.04. Notices. All notices 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). (a) If to HYBRIDON: President HYBRIDON, INC. 155 Fortune Blvd. Milford, MA 01757 -13- 14 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. (b) If to BBI: BOSTON BIOSYSTEMS, INC. 75A Wiggins Ave. Bedford, MA 01730 SECTION 11.05. 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 any other of such Party's rights or remedies provided in this Agreement. SECTION 11.06. Severability. If any term, covenant or condition of this Agreement or the application thereof to any Party or circumstances shall, to any extent or in any country, be held to be invalid or unenforceable, then (i) the remainder of this Agreement 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; and (ii) the Parties hereto covenant and agree to renegotiate any such term, covenant or application thereof in good faith. SECTION 11.07. No Strict Construction; Ambiguities. The language used in this Agreement shall be deemed to be the language chosen by the parties hereto to express their mutual intent and no rule of strict construction against either party shall apply to any term or condition of this Agreement. 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. SECTION 11.08. Headings. The Sections and paragraph headings contained herein are for the purposes of convenience only and are not intended to define or limit the contents of said Sections or paragraphs. SECTION 11.09. Governing Law. This Agreement shall be governed by and interpreted under the laws of the State of Delaware as applied to contracts entered into and performed entirely in Delaware by Delaware residents. SECTION 11.10. Further Assurances. Each of the parties agrees to execute and deliver such other documents, including but not limited to, updating the list of Patents set forth in Appendix A, and to take all such actions as the other party, its successors, assigns or other legal representatives may reasonably request to effect the terms of this Agreement. SECTION 11.11. Counterparts. This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. -14- 15 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. SECTION 11.12. Entire Agreement; Amendments. This Agreement, including all Appendices attached hereto and thereto, and all documents delivered concurrently herewith and therewith, set forth all the covenants, promises, agreements, warranties, representations, conditions and understandings between the Parties hereto and supersede and terminate all prior agreements and understandings between the Parties. Both Parties acknowledge that in deciding to enter into the Agreement and to consummate the transaction contemplated thereby neither has relied upon any statement or representations, written or oral, other than those explicitly set forth therein. SECTION 11.13. Independent Contractors. The status of the Parties under this Agreement shall be that of independent contractors. Neither Party shall have the right to enter into any agreements on behalf of the other Party, nor shall it represent to any person that it has any such right or authority. Nothing in this Agreement shall be construed as establishing a partnership or joint venture relationship between the Parties. SECTION 11.14. Successors. This Agreement will be binding upon and inure to the benefit of the parties and their respective successors and assigns in whole or in part. SECTION 11.15. Authority of Signatories. Each person executing this Agreement individually and personally represents and warrants that he is duly authorized to execute and deliver the same on behalf of the corporation for which he is signing and that this Agreement is binding upon the corporation in accordance with its terms. IN WITNESS WHEREOF, HYBRIDON and BBI have caused this Agreement to be executed as of the date first written above by their respective officers thereunto duly authorized. [SIGNATURE PAGES TO FOLLOW] -15- 16 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. HYBRIDON, INC.. By: /s/ Robert G. Andersen ------------------------------------ Name: Robert G. Andersen Title: Chief Financial Officer -16- 17 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. BOSTON BIOSYSTEMS, INC. By: /s/ Gregory S. Kurey ------------------------------------ Name: Gregory S. Kurey Title: General Counsel -17- 18 CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. APPENDIX A - PATENTS PATENT/APPLICATION NUMBER HYBRIDON CASE REFERENCE *** -18-