Exhibit
10.41


 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


LICENSE AGREEMENT


 


THIS LICENSE AGREEMENT (the “Agreement”) is
made and entered into as of this 19th day of December, 2003 (the “Effective Date”) among ACORDA THERAPEUTICS, INC.,
a corporation organized and existing under the laws of the state of Delaware
having a principal place of business at 15 Skyline Drive, Hawthorne, New York
10532, USA (“Acorda”), CAMBRIDGE
UNIVERSITY TECHNICAL SERVICES LIMITED, an entity organized and
existing under the laws of England having a registered address at The Old
Schools, Trinity Lane, Cambridge CB2 1TS, UK. 
(“CUTS”), and KING’S
COLLEGE LONDON, an Institution incorporated by Royal Charter, of
Strand, London, WC2R 2LS, UK (“KCL”; CUTS and
KCL may be collectively referred to as the “Institutions”).  Each of Acorda, CUTS and KCL may be referred
to herein individually as a “Party” and
collectively as the “Parties.”


 


RECITALS


 


WHEREAS, CUTS is a wholly owned trading subsidiary of
The Chancellor, Masters and Scholars of the University of Cambridge (“Cambridge”) and administers the granting of licenses on
behalf of Cambridge;


 


WHEREAS, Professor James Fawcett of Cambridge,
together with Professor Stephen McMahon and Dr. 
Elizabeth Bradbury of KCL, have developed technology described and
claimed in the Patent Application (as defined in Section 1.17), and both
Professor Fawcett and Cambridge have assigned to CUTS all of their intellectual
property rights in the Patent Application, and all intellectual property rights
in Professor McMahon’s and Dr.  Bradbury’s
inventions claimed in the Patent Application are owned by KCL;


 


WHEREAS, Institutions jointly own all right, title
and interest in the international patent application entitled “Materials and
Methods for the Treatment of CNS Damage”;


 


WHEREAS, Acorda desires to obtain and Institutions
wish to grant to Acorda, an exclusive (except as otherwise provided in this
Agreement), worldwide development and commercialization license under such
international patent application and any patents owned or controlled by the
Institutions that arise or derive from such international patent application,
including all intellectual property rights therein, for the development and
commercialization of pharmaceutical products for all purposes; and


 


WHEREAS, Acorda also wishes to collaborate with
Cambridge and KCL to undertake a research project on the terms set out in a
sponsored research agreement of even date.


 


NOW, THEREFORE, in consideration of the foregoing premises
and the mutual covenants set forth below, and for other good and valuable
consideration, receipt of which is hereby acknowledged, the Parties hereby
agree as follows:


 


1

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 1


 


DEFINITIONS


 


The following terms as used
herein shall have the following meanings:


 


1.1          “Active Ingredient”
means any compound or molecule, whether chemical or biological, that is
intended to furnish pharmacological activity or other direct effect in the
diagnosis, cure, mitigation, treatment, or prevention of disease, or to affect
any structure or any function of the body of man or of animals.  For the avoidance of doubt, this term
includes those compounds or molecules that may undergo chemical change in the
manufacture of a drug product and be present in such drug product in a modified
form intended to furnish the specified activity or effect.


 


1.2          “Affiliate” means
any corporation or non-corporate business entity which controls, is controlled
by, or is under common control with Acorda. 
A corporation or non-corporate business entity shall be regarded as in
control of another corporation if it owns, or directly or indirectly controls,
at least fifty percent (50%) of the voting stock of the other corporation, or
alternatively in either (a) the absence of the ownership of at least fifty
percent (50%) of the voting stock of a corporation or (b) the case of a
non-corporate business entity, or non-profit corporation, if it possesses,
directly or indirectly, the power to direct or cause the direction of the
management and policies of such corporation or non-corporate business entity,
as applicable.


 


1.3          “Clinical Trial” means any experiment in which a drug
containing an Active Ingredient is administered or dispensed to, or used
involving, one or more human subjects, except for the use of a marketed drug in
the course of normal medical practice.


 


1.4          “CNS” means the
central nervous system.


 


1.5          “Control” or “Controlled”  means,
with respect to a particular item of information or intellectual property
right, that the particular Party (a) owns and has the ability to grant to
another Party the licenses to such item as provided for herein, without
violating the terms of an agreement with any Third Party, and/or (b) has a
license to such item and has the ability to grant to another Party the licenses
to such item provided for herein, without violating the terms of an agreement
with any Third Party.


 


1.6          “Dollars” means United States dollars.


 


1.7          “Earned Royalties” means the royalties payable to Institutions
by Acorda on Net Sales of Licensed Products by Acorda and/or its Affiliates as
provided in Article 3.


 


1.8          “FDA” means the United States Food and Drug
Administration or any successor entity.


 


1.9          “IND” means an investigational new drug application
submitted to the FDA, which requests authorization from the FDA to administer
an investigational drug or biological product to humans in the United States.


 


2

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


1.10        “Inventors” means Professor James Fawcett, Professor Steve McMahon and Dr.  Elizabeth Bradbury.


 


1.11        “Licensed Enzyme Product” means any pharmaceutical product containing
or directly activating an enzyme, including but not limited to chondroitinase,
to treat CNS disorders, diseases or injuries using the method covered by a
Valid Claim in the Licensed Patents.


 


1.12        “Licensed Patents” means any or all of: (a) the Patent Application; (b) the
substitutions, extensions, divisionals, continuations, or continuations-in-part
of such Patent Application; (c) the patents issuing on any of the
foregoing, including all re-examined or re-issued patents and extensions
thereof; and (d) the foreign counterparts of any of the foregoing.


 


1.13        “Licensed Product” means either a Licensed Enzyme Product or a Licensed Small Molecule
Inhibitor Product.


 


1.14        “Licensed Small Molecule Inhibitor Product” means any pharmaceutical product
incorporating a small molecule inhibitor which is used to treat CNS disorders,
diseases or injuries that is covered by a Valid Claim in the Licensed Patents.


 


1.15        “Licensed Territory” means the world.


 


1.16        “Net Sales” means the actual amounts invoiced by Acorda and/or its Affiliates for
the Sale of Licensed Products to a Third Party purchaser without deduction of
any commission paid to a Third Party purchaser but less the following
deductions to the extent that such amounts are actually allowed or incurred
with respect to such Sales: (a) freight, packaging and insurance costs
incurred in transporting the Licensed Product to such customers; (b) quantity,
cash and other trade discounts or rebates actually allowed and taken, including
without limitation, discounts or rebates granted to managed health care organizations,
or as mandated by any governmental agency or branch thereof in the Licensed
Territory; (c) customs, duty, sales and other similar taxes; (d) governmental
charges incurred in connection with the exportation or importation of such
Licensed Products; (e) amounts repaid or credited by reason of rejections,
return of goods, recalls or retroactive price reductions and (f) amounts
written off in accordance with GAAP as uncollectable debts from the purchasers,
not to exceed 4% of Net Sales in any particular royalty period, and provided,
however that if such amounts so written off are later collected by Acorda
and/or its Affiliates, then such amounts shall be deemed “Net Sales” and Acorda
shall pay Institutions the applicable royalty on Net Sales in accordance with
Sections 3.2 and 3.3.  In any event,
Acorda will use reasonable efforts to collect debts from its purchasers of
Licensed Products.  Sales of Licensed
Products or granting of sublicenses by Acorda and its Affiliates to Third
Parties shall be on an “arm’s length basis” and on a bona fide basis for the
purpose of maximizing revenue.


 


1.17        “Patent Application”  means the international patent
application entitled “Materials and Methods for the Treatment of CNS Damage,”
disclosing inventions by the Inventors, filed on the 4th March 2003
having serial number PCT/GB2003/000901.


 


1.18        “Payment Period” means a semi-annual period ending 30th June or 31st
December of each calendar year.


 


3

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


1.19        “Phase I Clinical Trial” means a Clinical Trial on sufficient numbers
of normal volunteers and subjects that is designed to establish that a
pharmaceutical product is safe for its intended use, and to support its
continued testing in Phase II Clinical Trials.


 


1.20        “Phase II Clinical Trial” means a Clinical Trial on sufficient numbers
of subjects that is designed to establish the safety and biological activity of
a pharmaceutical product for its intended use, and to define warnings,
precautions, and adverse reactions that are associated with such pharmaceutical
product in the dosage range to be prescribed.


 


1.21        “Phase III Clinical Trial” means a Clinical Trial on sufficient numbers
of subjects that is designed to establish that a pharmaceutical product is safe
and efficacious for its intended use, and to define warnings, precautions, and
adverse reactions that are associated with such pharmaceutical product in the
dosage range to be prescribed, and to support Regulatory Approval of such
pharmaceutical product or label expansion of such pharmaceutical product.


 


1.22        “Regulatory Approval” means the approvals, registrations or
authorizations of the Food and Drug Administration (FDA), or the equivalent
regulatory agency in a foreign country or jurisdiction necessary for the
manufacture, distribution, marketing and sale of a pharmaceutical or diagnostic
product in the United States, or such foreign country or jurisdiction, as
applicable.


 


1.23        “Sale”
or “Sold” means the sale or other
commercial disposition of a Licensed Product by Acorda, its Affiliates or
sublicensees.  In case of doubt, Sales of
Licensed Products shall be deemed consummated no later than invoicing of
payment to a Third Party for the applicable transaction involving such Licensed
Product.


 


1.24        “Sublicense Royalties” means any royalty payments (which for
clarity excludes any upfront payments, milestone payments, or any equity
investments made in Acorda at fair market value (and provided further that if
any equity investment is made at a premium to fair market value, the amount of
such premium would be deemed Sublicense Royalties)) received by Acorda and/or
its Affiliates from a Third Party sublicensee based on the Sublicense of Acorda’s
and/or its Affiliates rights in the Licensed Patents.


 


1.25        “Third Party” means any entity or individual other than Acorda, Cambridge, CUTS or
KCL, or an Affiliate.


 


1.26        “Valid Claim” means (a) a claim of any issued, unexpired patent included among
the Licensed Patents, which patent claim has not been (i) held
unenforceable, unpatentable or invalid by a decision of a court or governmental
body of competent jurisdiction, which decision is not further appealable, or (ii) rendered
unenforceable through reexamination, reissue, disclaimer or otherwise, or (iii) lost
through an interference proceeding, or (iv) abandoned; or (b) a
pending claim of an international patent application filed under the Patent
Cooperation Treaty (the “PCT”) included
within the Licensed Patents, which claim (i) has been pending under
examination for less than seven (7) years from date of filing of such
claim, and (ii) has been asserted in good faith, and (iii) has not
been abandoned or finally rejected without the possibility of appeal or
re-filing.


 


4

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 2


 


GRANT OF LICENSE


 


2.1          Licenses to Acorda.


 


(a)           Subject to Section 2.2(a),
Institutions hereby grant to Acorda and its Affiliates an exclusive (even as to
the Institutions), royalty-bearing license, including (subject to the
provisions of Section 2.3) the right to grant sublicenses, under the
Licensed Patents to use and practice the inventions and information claimed or
disclosed therein that relate to enzymatic methods of treating CNS disorder,
disease or injury, and to research, develop, make, have made, use, sell, offer
for sale, have sold, import, export, lease and otherwise exploit Licensed
Enzyme Products for all purposes in the Licensed Territory during the term of
this Agreement.


 


(b)           Subject to Section 2.2(b),
Institutions hereby grant to Acorda and its Affiliates a non-exclusive,
royalty-bearing license, including (subject to the provisions of Sections 2.3
and 2.4) the right to grant sublicenses, under the Licensed Patents to use and
practice the inventions and information claimed or disclosed therein that
relate to small molecule inhibitors for use in treating CNS disorder, disease
or injury, and to research, develop, make, have made, use, sell, offer for
sale, have sold, import, export, lease and otherwise exploit Licensed Small
Molecule Inhibitor Products for all purposes in the Licensed Territory during
the term of this Agreement.


 


2.2          Retained Rights.


 


(a)           The license granted in Section 2.l(a) above
is subject to a right retained by the Institutions for their selves (and also
grants to Cambridge and any wholly owned subsidiary of Cambridge and/or KCL) to
use and practice the portions of the Licensed Patents relating to enzymatic
methods of treating CNS disorders, diseases or injuries for non-commercial,
academic research and educational purposes only.  Such retained right shall be transferable to
other academic institutions in the event that the Inventors become employed by
such institutions, provided, however, that such other institutions’ right to
use and practice such Licensed Patents shall be subject to the same limitations
as those on the Institutions’ right to use and practice hereunder.


 


(b)           The license granted in Section 2.1(b) above
is subject to a right retained by the Institutions for their selves (and also
grants to Cambridge and any wholly owned subsidiary of Cambridge and/or KCL) to
use and practice the portions of the Licensed Patents relating to small
molecule inhibitors for use in treating CNS disorders, diseases or injuries for
all commercial and/or non-commercial purposes. 
Such retained right shall be transferable to other academic institutions
in the event that the Inventors become employed by such institutions, provided,
however, that such other institutions’ right to use and practice such Licensed
Patents shall be subject to the same limitations as those on the Institutions’
right to use and practice hereunder.


 


5

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


2.3          Sublicenses.  Acorda and its Affiliates shall have the
right to grant sublicenses to Third Parties under any or all of their license
rights in the Licensed Patents granted in Section 2.1, provided that:


 


(a)           the pricing of all Licensed Products
that may be sold by Acorda or its Affiliate to any such sublicensee shall be
determined on an “arm’s length basis” and on a bona fide basis for the purpose
of maximizing the revenue;


 


(b)           each such sublicense shall include
obligations on the sublicensee that are consistent with the obligations made on
Acorda and its Affiliates and agents and sub-contractors under this Agreement
(e.g., each such sublicense will include an obligation on the sublicensee to
indemnify Acorda and its Affiliates for any losses resulting from claims
brought by a third party arising in connection with any personal injury and
property damage caused by the manufacture, testing, design, use, Sale or
labeling of any Licensed Products by such sublicensee);


 


(c)           each such sublicense shall be
memorialized in a written agreement with the sublicensee, a copy of which
agreement shall be delivered to each of the Institutions within sixty (60) days
of said sublicense becoming effective;


 


(d)           each such sublicense shall terminate
automatically on the termination of this Agreement for any reason whatsoever
and in such circumstances the Institutions shall grant the sublicensee a direct
license to the same extent wherein the financial terms shall be substantially
equivalent to those of the sublicense, with all payments due under such direct
license being payable directly to the Institutions;


 


(e)           each such sublicense shall provide
that Acorda may terminate the sublicense if the sublicensee commences legal
proceedings to challenge the validity of any of the Licensed Patents; and


 


(f)            Acorda and its Affiliates shall use
best endeavors to enforce all payment obligations contained in each such
sublicense.


 


2.4          Acorda
and its Affiliates (or its sublicensee, as applicable) may grant only one (1) sublicense
under the Licensed Patents relating to small molecule inhibitors for use in
treating CNS disorders, diseases or injuries in any given jurisdiction.  For clarity, the one (1) sublicense in a
given jurisdiction may be a sublicense granted by another sublicensee
hereunder.


 


2.5          No Implied License.  The
licenses and rights granted in this Agreement shall not be construed to confer
any rights upon Acorda and its Affiliates by implication, estoppel, or
otherwise as to any technology not specifically identified in this Agreement as
Licensed Patents.


 


ARTICLE 3


 


COMPENSATION


 


3.1          Upfront Payment.  Within ten (10) days of the Effective
Date, Acorda shall pay Institutions an upfront license fee in the amount of [***].


 


6

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


3.2          Royalties on Licensed Enzyme Products.  Subject to Sections 3.2(a) and 3.4, Acorda shall pay the
Institutions royalties in the amount of two and one-half percent (2.5%) of the
aggregate Net Sales of Licensed Enzyme Products made by Acorda and/or its
Affiliates in countries in the Licensed Territory where such sales are covered
by a Valid Claim in an issued patent in the Licensed Patents.


 


(a)           Royalty
Rate Adjustment.  If licenses to dominant Third Party patents
(that is, patents that claim the Licensed Enzyme Product or its manufacture or
use) are required for Acorda or its Affiliates to research, develop, make, have
made, use, sell, offer for sale, have sold, import, export, lease and otherwise
exploit Licensed Enzyme Products in the Licensed Territory, Acorda may deduct,
from the royalty amount payable by Acorda to Institutions, up to [***] of the
royalty amounts owed the Third Party under such licenses, provided that in no
event shall Institutions receive less than [***] of the aggregate Net Sales of
Licensed Enzyme Products Sold by Acorda and/or its Affiliates in the Licensed
Territory.


 


(b)           Royalties
on Sublicenses.  Subject to Section 3.5, if Acorda and/or
its Affiliates grants a sublicense under any or all of its rights in the
Licensed Patents to a Third Party to research, develop, make, have made, use,
sell, offer for sale, have sold, import, export, lease and otherwise exploit
Licensed Enzyme Products, then Acorda will pay Institutions a percentage of all
Sublicense Royalties received by Acorda and/or its Affiliates from such Third
Party sublicensee based on such sublicense, according to the following
schedule:


 


(i)           If Acorda and/or its Affiliates
grants such sublicense prior to filing an IND for any Licensed Enzyme Product,
[***] of Sublicense Royalties;


 


(ii)          If Acorda and/or its Affiliates grants
such sublicense after filing an IND for any Licensed Enzyme Product but prior
to commencing a Phase II Clinical Trial for any Licensed Enzyme Product, [***]
of Sublicense Royalties;


 


(iii)        If Acorda and/or its Affiliates grants
such sublicense after commencing a Phase II Clinical Trial for any Licensed
Enzyme Product but prior to commencing a Phase III Clinical Trial for any
Licensed Enzyme Product, [***] of Sublicense Royalties;


 


(iv)         If Acorda and/or its Affiliates grants
such sublicense after commencing a Phase III Clinical Trial for any Licensed
Enzyme Product but prior to Regulatory Approval of any Licensed Enzyme Product,
[***] of Sublicense Royalties; and


 


(v)           If Acorda and/or its Affiliates
grants such sublicense after Regulatory Approval of any Licensed Enzyme
Product, [***] of Sublicense Royalties.


 


For purposes of this Section 3.2(b) and Section 3.3(a),
“commencing” a Clinical Trial shall mean administration of the first dose of a
Licensed Product to a subject.


 


3.3          Royalties on Licensed Small Molecule
Inhibitor Products.  Subject to Section 3.4, Acorda shall pay
Institutions royalties in the amount of one-half percent (0.5%) of the


 


7

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


aggregate Net Sales of
Licensed Small Molecule Products by Acorda and/or its Affiliates in countries
in the Licensed Territory where such sales are covered by a Valid Claim in an
issued patent in the Licensed Patents.


 


(a)           Royalties on
Sublicenses.  Subject to Section 3.5, if Acorda and/or
its Affiliates grants a sublicense under any or all of their rights in the
Licensed Patents to a Third Party to research, develop, make, have made, use,
sell, offer for sale, have sold, import, export, lease and otherwise exploit
Licensed Small Molecule Inhibitor Products, then Acorda will pay Institutions a
percentage of all Sublicense Royalties received by Acorda and/or its Affiliates
from such Third Party sublicensee based on such sublicense, according to the
following schedule:


 


(i)           If Acorda and/or its Affiliates
grants such sublicense prior to filing an IND for any Licensed Small Molecule
Inhibitor Product, [***] of Sublicense Royalties;


 


(ii)          If Acorda
and/or its Affiliates grants such sublicense after filing an IND for any
Licensed Small Molecule Inhibitor Product but prior to commencing a Phase II
Clinical Trial for any Licensed Small Molecule Inhibitor Product, [***] of
Sublicense Royalties;


 


(iii)        If Acorda
and/or its Affiliates grants such sublicense after commencing a Phase II
Clinical Trial for any Licensed Small Molecule Inhibitor Product but prior to
commencing Phase III Clinical Trials for any Licensed Small Molecule Inhibitor
Product, [***] of Sublicense Royalties;


 


(iv)         If Acorda
and/or its Affiliates grants such sublicense after commencing Phase III
Clinical Trials for any Licensed Small Molecule Inhibitor Product but prior to
Regulatory Approval of any Licensed Small Molecule Inhibitor Product, [***] of
Sublicense Royalties; and


 


(v)           If Acorda
and/or its Affiliates grants such sublicense after Regulatory Approval of any
Licensed Small Molecule Inhibitor Product, [***] of Sublicense Royalties.


 


3.4          Royalties on Combination Licensed Products.  In the event a Licensed
Product is sold in the form of a combination product containing one or more
Active Ingredients in addition to the Licensed Product Active Ingredient
(hereinafter “Combination Licensed Product”) in
countries in the Licensed Territory where such sales are covered by a Valid
Claim in an issued patent in the Licensed Patents, then Net Sales for such
Combination Licensed Product, for purposes of calculating Earned Royalties due
hereunder on Net Sales of Licensed Enzyme Products and Licensed Small Molecule
Inhibitor Products (as applicable) by Acorda, will be adjusted by multiplying
actual Net Sales of such Combination Licensed Product by the applicable
fraction, which will be negotiated in good faith by the Parties with the
intention of agreeing upon a fair and equitable formula that reasonably
reflects the relative value contributed by the Licensed Product to the total
value of the combination in the Combination Licensed Product, as compared to
the other Active Ingredients therein.  Each
Party shall share with the


 


8

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


other Parties any
information in its possession that is relevant for determining such relative
value.


 


3.5          Sublicense Limitation. Acorda and/or its Affiliates agree to
use good faith efforts to avoid an economic arrangement in the deals with their
sublicensees that provide for [***]. For the avoidance of doubt any sublicenses
executed by Acorda and/or its Affiliates relating to the Licensed Patents may
be compared against similar stage and economic sector deals at a similar point
in time and involving similar technology to determine if [***]. In addition,
Acorda and/or its Affiliates shall not enter into cross-license arrangements
with any Third Party sublicensee under the Licensed Patents whereby [***]. For
clarity, cross-licenses received by Acorda and/or its Affiliates in the typical
course of partnering transactions where each partner to the transaction grants
the other partner a cross-license to enable each other to conduct collaborative
in-house research and development [***]. For further clarity, grants of
covenants not to sue under patent rights shall be deemed to be licenses or
sublicenses, as appropriate, under this Section.


 


3.6          Milestone Payments. Acorda shall pay Institutions milestone
payments in the amounts specified below no later than thirty (30) days after
the occurrence of each milestone as described below. Acorda shall pay the
specified milestone payment upon the achievement of the corresponding milestone
event by Acorda, its Affiliate or sublicensee.


 


	
  Event

  	
   

  	
   

  	
  Milestone
  Payment

  	
   

  
	
  Upon the
  issuance of the first U.S. patent included in the Licensed Patents which
  claims the use of chondroitinase to treat CNS damage in humans.

  	
   

  	
  [***]

  	
   

  
	
  Upon the
  first IND filing to conduct a Phase I Clinical Trial for a Licensed Product.

  	
   

  	
  [***]

  	
   

  
	
  Upon
  successful completion of the first U.S. Phase I Clinical Trial for a Licensed
  Product.

  	
   

  	
  [***]

  	
   

  
	
  Upon
  successful completion of the first U.S. Phase II Clinical Trial for a
  Licensed Product.

  	
   

  	
  [***]

  	
   

  
	
  Upon the
  approval of the first U.S. New Drug Application for a Licensed Product.

  	
   

  	
  [***]

  	
   

  
	
  Upon
  receiving Regulatory Approval anywhere in the Licensed Territory for other
  indications of a Licensed Product, excluding any spinal cord injury
  indications (the “Indication Milestone”).

  	
   

  	
  [***]

  	
   

  



 


For clarity,
in no event shall any milestone payment, except for the Indication Milestone,
be paid more than once to Institutions pursuant to this Section 3.6. As
used herein, “successful completion” of a Clinical Trial means that the
complete, analyzed data and results from such Clinical Trial have met or
exceeded the endpoints of the trial and support proceeding on to the next phase
of Clinical Trials on the applicable Licensed Product.


 


 


9

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 4


 


REPORTS, PAYMENTS AND ACCOUNTING


 


4.1          Royalties Reports and Records.  During the term of this Agreement, Acorda shall furnish, or cause to be
furnished to the Institutions, written reports for each of Acorda and its
Affiliates showing, for each fiscal quarter during the applicable Payment
Period, the applicable information as follows:


 


(a)           the gross sales of all Licensed
Products Sold by Acorda and its Affiliates in the Licensed Territory during the
reporting period, together with the calculations of Net Sales in accordance
with Section 1.16;


 


(b)           the Earned Royalties payable in
Dollars, together with the calculations thereof, which shall have accrued hereunder
in respect to such Net Sales;


 


(c)           the Sublicense Royalties received by
Acorda and the portion of such Sublicense Royalties payable to the Institutions
in accordance with Sections 3.2(b) and 3.3(a), as applicable;


 


(d)           the exchange rates, if any, in determining
the amount of Dollars payable to the Institutions; and


 


(e)           the occurrence of any event
triggering a milestone payment obligation in accordance with Section 3.6.


 


Such reports shall be
substantially in the form of the template as given in Schedule 1 Part A
and shall be due to Institutions within thirty (30) days after the close of the
second Acorda fiscal quarter in the applicable Payment Period.  Each such report shall: (a) contain a
statement in substantially the form “I hereby represent and warrant that this
report is true and correct to the best of my knowledge and belief” and; (b) be
signed by an officer of Acorda.  Acorda
shall keep accurate records in sufficient detail to enable Earned Royalties,
Sublicense Royalties and other payments payable hereunder to be determined,
such records to include without limitation the amounts and source of any
deductions made pursuant to Section 3.2(a).  Acorda shall be responsible for all Earned
Royalties, Sublicense Royalties and other payments that are due


 


10

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


Institutions from Acorda’s
Affiliates and have not been paid by such Affiliates.  If a report required pursuant to this Section 4.1
is not submitted to the Institutions by the applicable due date, Institutions
may give Acorda notice of such failure, and if Acorda does not provide such
report within thirty (30) days of such notice, then Acorda shall pay to the
Institutions the amount of one thousand dollars ($1,000) for each
calendar month after such notice that such report remains undelivered.


 


4.2          Payee Designation.  All payments made pursuant to Article 3
of this Agreement to be made to Institutions by Acorda (and/or its Affiliates)
under this Agreement shall be paid by telegraphic transfer to the account of
Cambridge University Technical Services Ltd at Barclays Bank of Bene’t Street,
Business Centre, PO Box No 2, Cambridge CB2 3PZ, sort code 20-17-19 account
number 90532215.  The Parties agree that
payments made by Acorda and/or its Affiliates and received by CUTS shall
satisfy Acorda’s payment obligations to the Institutions hereunder.


 


4.3          Payment Terms.  All payments made pursuant to Article 3
of this Agreement shall be made in accordance with Schedule 1 Part B.  Each report pursuant to Section 4.1
shall be accompanied by payment to CUTS of the Earned Royalties, Sublicense
Royalties or other payments due hereunder (as applicable) shown by said report
to be due to the Institutions.


 


4.4          Non-Payment Terms.  All payments made pursuant to Article 3
of this Agreement shall be made within thirty (30) days after the close of the
second Acorda fiscal quarter in the applicable Payment Period, failing which
the Institutions may charge interest on any outstanding amount on a daily basis
at 3% above Barclays Bank plc base lending rate then in force.  All payments due pursuant to Article 3
of this Agreement shall be made without deduction of income tax or other taxes
charges or duties.  Payments due between
the end of the final Payment Period and termination or expiry of this Agreement
shall be paid within thirty (30) days of said termination or expiry.


 


4.5          Right to Audit.  Upon prior written notice to Acorda and not
more than once in each Acorda fiscal year, the Institutions shall have the
right to engage an independent, nationally-certified auditing firm selected by
the Institutions and acceptable to Acorda, which acceptance shall not be
unreasonably withheld, to have access during normal business hours of Acorda
and on reasonable advance notice, to the applicable books and records of
Acorda, as may be reasonably necessary to verify the accuracy of the royalty
reports required to be furnished by Acorda pursuant to Section 4.1 of this
Agreement.  If such audit shows any
underpayment of Earned Royalties or Sublicense Royalties by Acorda, then, within
thirty (30) days after Acorda’s receipt of such report, Acorda shall remit or
shall cause its Affiliates to remit to the Institutions:


 


(a)           the amount of such
underpayment; and


 


(b)           if such underpayment
exceeds five percent (5%) of the total Earned Royalties and/or Sublicense
Royalties owed for the fiscal year then being reviewed, the reasonably
necessary fees and expenses of such auditing firm performing the audit.  Otherwise, such fees and expenses shall be
borne solely by Institutions.  Any
overpayment of Earned Royalties and/or Sublicense Royalties shall be fully
creditable against future Earned Royalties and/or Sublicense Royalties payable
in any subsequent Payment Period.


 


11

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


4.6          Confidentiality of Records. 
All
information provided by Acorda, or subject to review under this Article 4,
shall be deemed Acorda’s Confidential Information (as defined in Section 9.1).  The independent, nationally-certified
auditing firm shall not disclose to the Institutions or to any Third Party any
such Confidential Information, except for any information showing a discrepancy
in amount owed to the Institutions, and the Institutions shall not use or
disclose any such Confidential Information for any purpose other than
determining and enforcing its rights under this Agreement.


 


4.7          Currency Restrictions. 
Except as
otherwise provided hereinafter in this Section 4.7, all Earned Royalties
and Sublicense Royalties shall be paid in Dollars.  If, at any time, legal or other restrictions
imposed by a government or governmental agency or established by a court of
competent jurisdiction in a particular country, prevent the prompt remittance
and conversion into Dollars of part of or all Earned Royalties and/or
Sublicense Royalties with respect to Sales of Licensed Products in such
country, Acorda and/or its Affiliates shall have the right and option to make
such payments by depositing the amount thereof in local currency to the
Institutions’ account in a bank or depository in such country.


 


ARTICLE 5


 


DEVELOPMENT RESPONSIBILITIES; DILIGENCE


 


5.1          Institutions’ Responsibilities:   During the term of this Agreement, each of CUTS and KCL (or their
designates) shall:


 


(a)           transfer to Acorda all relevant and
material information and data (except grant applications) in its possession and
generated by the Inventors directly relating to the inventions claimed in the
Licensed Patents, except to the extent such transfer is prevented by
confidentiality obligations or other limitations pursuant to agreements or
understandings between each of CUTS and KCL, respectively, and a Third Party,
and Acorda shall have the right to use such information and data for the
protection and exploitation of the Licensed Patents, including but not limited
to the development and commercialization of products covered by the Licensed
Patents, in accordance with its rights under the Agreement; and


 


(b)           have the right to review and comment
on the design and implementation of any Clinical Trial to be performed by
Acorda and/or its Affiliates relating to any Licensed Enzyme Product or
Licensed Small Molecule Inhibitor Product, provided that Institutions shall be
bound by typical confidentiality restrictions with respect to any information
disclosed by Acorda relating thereto.


 


5.2          Acorda Responsibilities. 
During the
term of this Agreement, Acorda and/or its Affiliates shall:


 


(a)           subject to 12.7, give credit to the
Institutions (or their designees) for co-authorship of any publications by
Acorda and/or its Affiliates relating to the Licensed Patents and acknowledge
the efforts of each of Cambridge, CUTS and KCL in creating the Licensed
Patents; and


 


12

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


(b)           be solely responsible for their own
expenses incurred in connection with their research and development efforts
relating to the Licensed Patents.


 


5.3          General Diligence Obligations.


 


(a)           Licensed Patents.  Acorda shall use commercially reasonable efforts to conduct further
research relating to Licensed Patents from time to time to evaluate their
scientific and commercial utility.


 


(b)           Licensed Products.  Acorda shall, either through its own efforts and/or those of its
Affiliates, use commercially reasonable efforts to develop and commercialize,
and/or sublicense for development and commercialization, Licensed Enzyme
Products and Licensed Small Molecule Inhibitor Products (subject to the
limitation on sublicensing in Section 2.4 with respect to Small Molecule
Inhibitor Products) as it deems appropriate, in the exercise of its business
judgment.


 


(c)           Share of Information.  Acorda and/or its Affiliates shall share with the Institutions and
Cambridge information developed through the research efforts of Acorda and/or
its Affiliates relating to the Licensed Patents, except to the extent
disclosure is prevented by confidentiality obligations of an agreement between
Acorda and/or its Affiliates and a Third Party.


 


5.4          Specific Diligence Obligations.


 


(a)           Acorda
shall, either through its own efforts and/or those of its Affiliates or
sublicensees, use commercially reasonable efforts to develop and commercialize
Licensed Products by performing the following actions (each, a “Diligence Milestone”):


 


(i)            within [***] years of the Effective
Date, file an IND for a Licensed Product;


 


(ii)           within [***] years of the Effective
Date, initiate a Phase I Clinical Trial for a Licensed Product; and


 


(iii)         within [***] years of the Effective
Date, file a New Drug Application with the FDA in the U.S. for a Licensed
Product.


 


Acorda shall provide written
notice to the Institutions within thirty (30) days after it achieves a Diligence
Milestone, such notice specifying the Diligence Milestone achieved.


 


(b)           Acorda
shall send to the Institutions within thirty (30) days of each calendar
anniversary of the Effective Date an updated written development plan covering
as a minimum the twelve (12) calendar months preceding the calendar anniversary
and the twelve (12) calendar months following it. The report shall be in the
form of Schedule 1 Part C and shall show:


 


(i)            the projected and actual dates of first commericial sale;


 


(ii)           milestone progression (dates for
projected and achieved milestones); and


 


(iii)         all past, current and projected
activities taken or to be taken by Acorda and/or its Affiliates and their
sublicensees to bring Licensed Products to market and maximize the sale of Licensed
Products in the Licensed Territory.


 


The
Institution’s receipt or approval of any such plan shall not be taken to waive
or qualify Acorda’s obligations under this Section 5.4


 


(c)           If Acorda does not in a timely manner
meet a Diligence Milestone set forth in Section 5.4(a), but Acorda
provides to Institutions written evidence that it has used commercially
reasonable efforts to meet such Diligence Milestone, then Institutions and
Acorda shall negotiate in good faith for sixty (60) days after the applicable
Diligence Milestone due date and agree upon a reasonable extension for such
Diligence Milestone; provided that the period of such extension shall be
between one (1) year and three (3) years. Additional extensions to
the same Diligence Milestone (and correlatively, extensions to subsequent
Diligence Milestones, as applicable) may be negotiated by the Parties in
accordance with this Section 5.4(c), if necessary, based upon the progress
that has been made by Acorda to meet the unmet Diligence Milestone.


 


(d)           If Acorda does not in a timely manner
meet a particular Diligence Milestone, and either (i) Acorda has not used
commercially reasonable efforts to meet the applicable Diligence Milestone and
Institutions provide the basis of such determination to Acorda in a written
statement, or (ii) the Parties cannot, despite using good faith efforts,
agree on a reasonable extension for the applicable Diligence Milestone in
accordance with Section 5.4(c), then Institutions may, upon written notice
to Acorda, terminate the exclusivity of the licenses granted to Acorda under
this Agreement, which licenses shall thereafter be non-exclusive.


 


5.5          Non-Diligence.
If Acorda ceases conducting, either itself or through its Affiliates or
sublicensees, the development and/or commercialization of any and all Licensed
Products, then Institutions may terminate this Agreement and the licenses
granted to Acorda under this Agreement in accordance with the following
provisions: the Institutions shall provide Acorda with written notice
specifying in detail the basis for Institutions’ belief that it has the right
to terminate under this Section 5.5, and Acorda shall have sixty (60) days
in which to demonstrate, to Institutions’ reasonable satisfaction, that it (or
its Affiliate or sublicensee), is conducting development and/or
commercialization of at least one (1) Licensed Product. During such sixty
(60) day period, the Parties shall discuss in good faith whether such
demonstration shows Acorda’s continued development and/or commercialization of
at least one (1) Licensed Product; provided, however, that periods of
inactivity in development that is typical for similar products in similar
stages of development shall not be deemed Acorda’s cessation of development.  If the Parties fail to agree on whether
Acorda has ceased conducting development and/or commercialization of at least
one (1) Licensed Product during such period, then the Parties shall
promptly agree upon and engage an independent, qualified individual (the “Expert”) to make such determination.  The Expert shall (a) have at least eight
(8) years of significant experience in the biotechnology industry relating
to strategic development of pharmaceutical products, (b) not be directly
or indirectly affiliated with either Party or with either Party’s Affiliates or
sublicensees, and (c) not have any direct or indirect interest of any kind
in the resolution of whether Acorda is continuing development and/or
commercialization of Licensed Products. 
If the Expert determines that Acorda has ceased conducting development
and/or commercialization of any and all Licensed Products, then Institutions
may thereafter terminate this Agreement upon written notice and, if applicable,
the provisions of Section 10.5 shall apply. 
In such event, costs for engaging such Expert shall be borne by
Acorda.  If the Expert determines that
Acorda is continuing development and/or commercialization of Licensed Products,
then the Parties shall continue their respective activities under this
Agreement and costs for engaging such Expert shall be borne by
Institutions.  For clarity, conduct of de
minimus development work which is not reasonably supportable as part of
a good faith development effort shall not, of itself, prevent a finding that Acorda
(or its Affiliate or sublicensee) has ceased development of Licensed Products.


 


 


13

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 6


 


PATENTS AND PATENT COSTS


 


6.1          Prosecution and Maintenance of Licensed Patents.  The Institutions and Acorda shall work collaboratively to effect and
conduct the ongoing patent prosecution and maintenance activities relating to
the Licensed Patents.  CUTS shall be
primarily responsible for overseeing such ongoing patent prosecution and shall
pursue such patent prosecution to further Acorda’s reasonable commercial
interest in the Licensed Patents.  CUTS
shall provide Acorda with copies of all material documents relating to the
filing, prosecution and maintenance of Licensed Patents, including filings and
correspondence with patent authorities, in a timely manner, so as to give
Acorda an opportunity to comment thereon.  Acorda may provide comments to the
Institutions regarding such patent prosecution (including but not limited to
guidance in the drafting of claims for the Patent Application and other
Licensed Patents) and the Institutions will pay due and reasonable
consideration to such comments regarding claims relating directly to Licensed
Enzyme Products.  Acorda agrees to keep
any documentation received under this Section 6.1 confidential in
accordance with Article 9 herein.


 


6.2          Patent Costs.


 


(a)           Enzyme Method Patent
Costs.  Acorda shall pay for all reasonable costs for
prosecution and maintenance of patent filings of the Licensed Patents, to the
extent of claims therein relating to enzymatic methods of treating CNS disorders,
diseases or injuries (“Enzyme Method Patent
Costs”), incurred by CUTS after the Effective Date of this Agreement.


 


(b)           Small Molecule
Inhibitor Method Patent Costs.  Acorda shall pay a percentage,
calculated in accordance with Section 6.2(b)(i), of all reasonable costs
for prosecution and maintenance of patent filings of the Licensed Patents, to
the extent of claims therein relating to small molecule inhibitors for use in
treating CNS disorders, diseases or injuries (“Small
Molecule Inhibitor Method Patent Costs”), incurred by CUTS after the
Effective Date of this Agreement.


 


(i)            Allocation and
Reimbursement of Small Molecule Inhibitor Method Patent Costs.  Acorda shall pay the percentage of Small Molecule Inhibitor Method
Patents Costs calculated on the basis of the total number of non-exclusive
licenses granted by


 


14

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


CUTS
and/or KCL under the claims in the Licensed Patents relating to small molecule
inhibitors for the treatment of CNS disorders, diseases or injuries in
accordance with the following formula:


 


	
  Acorda’s % =

  	
   

  	
  1

  	
   

  	
  x 100

  
	
   

  	
   

  	
  total number
  of non-exclusive licenses granted by CUTS and/or KCL

  	
   

  	
   

  



 


By way of example, if Acorda
holds one (1) of two (2) non-exclusive licenses under such claims, Acorda will
pay fifty percent (50%) of all Small Molecule Inhibitor Method Patent Costs.


 


 CUTS shall promptly notify Acorda in writing
of any grant of a non-exclusive license under the claims in the Licensed
Patents relating to small molecule inhibitors for the treatment of CNS
disorders, diseases or injuries.


 


(c)           Calculation of
Patent Costs.  The Parties acknowledge and agree that it may
be difficult to determine patent costs relating to either the use of enzymes,
or small molecule inhibitors, for the treatment of CNS disorders, diseases or
injuries, given that both methods are included in a single patent application.
If any Party disagrees with the allocation of patent costs calculated in
accordance with Sections 6.2(a) and 6.2(b), then Institutions and Acorda
shall use their good faith efforts to negotiate and determine a reasonable
allocation of any patent costs such that Enzyme Method Patent Costs will
reasonably reflect prosecution and maintenance costs relating to such enzyme
method and the Small Molecule Inhibitor Patent Costs will reasonably reflect
prosecution and maintenance costs relating to such small molecule inhibitor
method. For the avoidance of doubt, as of the Effective Date, the Small
Molecule Inhibitor Patent Costs and the Enzyme Method Patent Costs each
constitute fifty percent (50%) of the total patent costs for the Licensed
Patents since they are combined in one patent application, provided, however,
that such percentage may change during the term of this Agreement if, for
example, the Patent Application is separated into multiple patent applications.


 


6.3          Acorda’s Payment
Terms.  CUTS shall seek Acorda written approval prior
to commitment of Enzyme Method Patent Costs and Small Molecule Inhibitor Method
Patent Costs where practical and Acorda shall give or withhold approval within
ten (10) calendar days. Where impractical to seek Acorda approval in the
time available, CUTS shall have discretion to assume Acorda approval and commit
but limit any such commitment of Enzyme Method Patent Costs and Small Molecule
Inhibitor Method Patent Costs to five thousand dollars ($5,000).


 


6.4          Non-Payment Terms. In the event that payment is not received by
CUTS within thirty (30) days of receipt by Acorda of an invoice for Enzyme
Method Patent Costs and/or Small Molecule Inhibitor Method Patent Costs
pursuant to Article 6 of this Agreement, the Institutions may charge
interest on any outstanding amount on a daily basis at 3% above Barclays Bank
plc base lending rate then in force. All payments due pursuant to Article 6
of this Agreement shall be made without deduction of income tax or other taxes
charges or duties. Payments due between the end of the final Payment Period and
termination or expiry of this Agreement shall be paid within thirty (30) days
of said termination or expiry.


 


6.5          Acorda’s Payment Obligation. 
Acorda’s obligation, pursuant to Section 6.2, to pay for domestic and
foreign patent filing, prosecution, and maintenance costs for Licensed Patents
shall continue for so long as this Agreement remains in effect.  However, Acorda may terminate such obligation
with respect to any given patent and/or patent application in the Licensed
Patents in any particular country and/or jurisdiction upon thirty (30) days
written notice to Institutions.  If
Acorda terminates its payment obligation as to a particular patent or patent
application, then:


 


(a)                                  Acorda will be
responsible for the payment of (i) all outstanding Enzyme Method Patent
Costs and Small Molecule Inhibitor Method Patent Costs in the country and/or
jurisdiction at the time written notice is given; and (ii) any Enzyme
Method Patent Costs and Small Molecule Inhibitor Method Patent Costs in the
country and/or jurisdiction necessarily and reasonably incurred during the
thirty (30) days following the date such written notice is given; and


 


(b)                                  all license rights of
Acorda and/or its Affiliates and their sublicensees under such patent and/or
patent application in such country and/or jurisdiction shall terminate and all
rights under such patent and/or patent application in such country and/or
jurisdiction shall revert exclusively to the Institutions without encumbrance,
and Institutions shall retain the right to commercialise the Patent Application
at their sole discretion.


 


15

















 


Certain portions
of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 7


 


INFRINGEMENT


 


7.1          Enforcement of Licensed Patents Relating to Enzymes.   If either Acorda and/or its Affiliates or the Institutions become aware
of a product made, used or sold in the Licensed Territory, which it believes
infringes a Valid Claim relating to any pharmaceutical product containing or
directly activating an enzyme, including but not limited to chondroitinase, to
treat CNS disorders, diseases or injuries (the “Enzyme
Method”), the Party obtaining such knowledge shall promptly advise
the other Parties of all relevant facts and circumstances pertaining to the
potential infringement. Acorda shall have the first right, but not the
obligation, to enforce any patent rights within the Licensed Patents against
such infringement, at its own expense. The Institutions shall agree to be joined
with Acorda in any such legal action subject to being indemnified and secured
in a reasonable manner as to any costs, damages, expenses or other liability
and shall have the right to be separately represented by their own counsel at
their own expense. Before starting legal action in accordance with this Section 7.1
or agreeing to any settlement, Acorda shall consult the Institutions and
consider their views about the advisability of the action or settlement, its
effect on the public interest and how the action should be conducted.


 


(a)            Recovery.  Any damages or costs recovered
in connection with any action filed by Acorda under this Section 7.1 which
exceed Acorda’s out-of-pocket costs and expenses of litigation, shall be deemed
to be Net Sales of Licensed Enzyme Products in the fiscal quarter received by
Acorda.   Earned Royalties on such Net
Sales shall be payable by Acorda to Institutions in accordance with the terms
of this Agreement.


 


(b)            Backup Enforcement Right of Institutions. If Acorda does not, within one hundred twenty
(120) days after receiving notice from Institutions of a potential infringement,
or providing Institutions with notice of such infringement, either (i) effect
the


 


16

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


termination
of such infringement, or (ii) institute an action to prevent continuation
thereof and, thereafter prosecute such action diligently, or if Acorda notifies
Institutions that it does not plan to terminate the infringement or institute
such action, then Institutions shall have the right but not the obligation to
do so at their own expense; provided however, that Institutions shall first
consult with Acorda and give due consideration to Acorda’s reasons for not
instituting actions to terminate or otherwise prevent continuation of such
infringement. If Institutions decide to pursue such infringement, Acorda shall
cooperate with Institutions in such effort, at Institutions’ expense, including
being joined as a party to such action if necessary. Institutions shall be
entitled to retain all damages or costs awarded to Institutions in such action.


 


7.2          Enforcement of
Licensed Patents Relating to Small Molecule Inhibitors.  If either
Acorda and/or its Affiliates or Institutions become aware of a product made,
used or sold in the Licensed Territory, which it believes infringes a Valid
Claim relating to small molecule inhibitors for use in treating CNS disorders,
diseases or injuries (the “Small Molecule Inhibitor
Method”), the Party obtaining such knowledge shall promptly advise
the other Parties of all relevant facts and circumstances pertaining to the
potential infringement. Institutions shall have the first right, but not the
obligation, to enforce any patent rights within the Licensed Patents against
such infringement, at its own expense.  Acorda shall agree to be joined with the
Institutions in any such legal action subject to being indemnified and secured
in a reasonable manner as to any costs, damages, expenses or other liability
and shall have the right to be separately represented by their own counsel at
their own expense. Before starting legal action in accordance with this Section 7.2
or agreeing to any settlement, the Institutions shall consult Acorda and
consider their views about the advisability of the action or settlement, its
effect on the public interest and how the action should be conducted.


 


(a)             Recovery.  Any damages or costs recovered
in connection with any action filed by Institutions under this Section 7.2
which exceed Institutions’ out-of-pocket costs and expenses of litigation, shall
be divided equally among Institutions, Acorda and any Third Party(ies) holding
a non-exclusive license under Institutions’ rights in Licensed Patents relating
to small molecule inhibitors for use in treating CNS disorders, diseases or
injuries during the term of such infringement.


 


(b)             Backup Enforcement Right of Acorda.  If
Institutions do not, within one hundred eighty (180) days after receiving
notice from Acorda of a potential infringement, or providing Acorda with notice
of such infringement, either (i) effect the termination of such infringement,
or (ii) institute an action to prevent continuation thereof and,
thereafter prosecute such action diligently, or if Institutions notify Acorda
that it does not plan to terminate the infringement or institute such action,
then Acorda shall have the right but not the obligation to do so at its own
expense; provided however, that Acorda shall first consult with Institutions
and give due consideration to Institutions’ reasons for not instituting actions
to terminate or otherwise prevent continuation of such infringement.    If Acorda decides to pursue such infringement,
Institutions shall cooperate with Acorda in such effort, at Acorda’s expense, including
being joined as a party to such action if necessary.  Acorda shall be entitled to retain all damages
or costs awarded to Acorda in such action.


 


7.3          Enforcement of
Licensed Patents Generally.  If either Acorda or
Institutions become aware of a product made, used or sold in the Licensed
Territory, which it believes


 


17

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


infringes a Valid Claim that does not relate specifically to either the
Enzyme Method or the Small Molecule Inhibitor Method, the Party obtaining such
knowledge shall promptly advise the other Parties of all relevant facts and
circumstances pertaining to the potential infringement. Acorda shall have the
first right, but not the obligation, to enforce any patent rights within the
Licensed Patents against such infringement, at its own expense. The
Institutions shall agree to be joined with Acorda in any such legal action
subject to being indemnified and secured in a reasonable manner as to any
costs, damages, expenses or other liability and shall have the right to be
separately represented by their own counsel at their own expense. Before
starting legal action in accordance with this Section 7.3 or agreeing to
any settlement, Acorda shall consult the Institutions and consider their views
about the advisability of the action or settlement, its effect on the public
interest and how the action should be conducted.


 


(a)           Recovery. Any damages or costs recovered in connection
with any action filed by Acorda under this Section 7.3 which exceed Acorda’s
out-of-pocket costs and expenses of litigation, shall be deemed to be Net Sales
of Licensed Small Molecule Inhibitor Products in the fiscal quarter received by
Acorda. Earned Royalties on such Net Sales shall be payable by Acorda to
Institutions in accordance with the terms of this Agreement.


 


(b)           Backup Enforcement
Right of Institutions.
If Acorda does not, within one hundred eighty (180)  days after receiving notice from Institutions
of a potential infringement, or providing Institutions with notice of such
infringement, either (i) effect the termination of such infringement, or (ii) institute
an action to prevent continuation thereof and, thereafter, prosecute such
action diligently, or if Acorda notifies Institutions that it does not plan to
terminate the infringement or institute such action, then Institutions shall
have the right but not the obligation to do so at their own expense; provided
however, that Institutions shall first consult with Acorda and give due
consideration to Acorda’s reasons for not instituting actions to terminate or
otherwise prevent continuation of such infringement   If Institutions decide to pursue such
infringement, Acorda shall cooperate with Institutions in such effort, at
Institutions’ expense.  including being
joined as a party to such action if necessary.  
Institutions shall be entitled to retain all damages or costs awarded to
Institutions in such action.


 


7.4          Invalidity or Unenforceability
Defenses or Actions.


 


(a)           If a Third Party
asserts, as a defense or as a counterclaim in any infringement action under
Sections 7.1, 7.2 or 7.3, that any Licensed Patent is invalid or unenforceable,
or that an interference should be declared with respect to a Licensed Patent,
then the Parties shall promptly meet (which meeting may at any Party’s request
be by telephone conference or videoconference) to discuss the response to such
defense or defense of such counterclaim or action (as applicable) and shall
cooperate with one another in such response or defense. The Party or Parties
that are the plaintiffs in the underlying suit or action against such Third
Party shall have the initial right to respond to such defense or defend against
such counterclaim (as applicable), provided that
such response or defense shall be conducted in collaboration with the other
Parties, to the extent that the other Parties’ intellectual property rights or
rights under this Agreement are the subject of such invalidity or
unenforceability defense or counterclaim. The Party plaintiff shall involve
such other Party(ies) in all decisions as to such response or defense, and in
any event such Party plaintiff shall not settle or otherwise compromise such
defense or counterclaim in any way that adversely affects such other Party’s


 


18

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for confidentiality.  Such omitted portions, which are marked with
brackets [   ] and an asterisk*, have
been separately filed with the Commission.


 


 


intellectual property rights or rights under
this Agreement without such other Party’s written consent, not to be unreasonably
withheld or delayed.


 


(b)           Similarly, if a Third Party asserts,
in a declaratory judgment action or similar action or claim filed by such Third
Party that any Licensed Patent is invalid or unenforceable or that an
interference should be declared with respect to a Licensed Patent, then the
Parties shall promptly meet (which meeting may at any Party’s request be by
telephone conference or videoconference) to discuss the defense of such action
or claim and shall cooperate with one another in such defense. The Party that
is the defendant in such claim, suit or action shall have the initial right to
defend against same, provided that
such defense shall be conducted in collaboration with the other Parties and a
process under which each Party shall have a reasonable opportunity to
participate in such defense shall be established, and in any event Acorda shall
at all times be permitted to intervene in such defense, at its expense, and provided further that to the extent that
any other Party’s intellectual property rights or interests under this Agreement
are the subject of, or materially impacted by, such invalidity or
unenforceability claim, suit or action, the defending Party shall involve such
other Party in all decisions as to such defense, and in any event such
defending Party shall not settle or otherwise compromise such defense in any
way that adversely affects such other Party’s intellectual property rights or
its rights under this Agreement without such other Party’s written consent, not
to be unreasonably withheld or delayed.


 


(c)           The Party defending any claim or
action under this Section 7.4 shall be responsible for one hundred percent (100%) of the
out-of-pocket and reasonable costs and expenses of any such defenses, provided
that if Acorda is defending, Acorda may credit such defense costs and expenses
against royalties owed to Institutions under Sections 3.2 and 3.3.


 


7.5          Third
Party Litigation.  If a Third Party institutes an infringement
suit or action against Acorda and/or its Affiliate and/or sublicensee alleging
that the manufacture, use or sale of any Licensed Product by Acorda and/or an
Affiliate and/or sublicensee, in a country in the Licensed Territory infringes
one or more patent or other intellectual property right held by such Third Party
(an “Infringement Suit”), Acorda (or such
Affiliate or sublicensee) shall have the right to defend and settle such
Infringement Suit at its sole expense. In such event, the Parties shall meet
(which meeting may at any Party’s request be by telephone conference or
videoconference) and discuss in good faith the best defenses to such
Infringement Suit, and Institutions shall, subject to being indemnified against
any liability and having the right to be separately represented by their own
counsel at their own expense, provide Acorda with reasonable assistance and
cooperation in defending such Infringement Suit at Acorda’s sole expense.
Acorda shall have the right to credit against royalties owed to the
Institutions under Sections 3.2 and 3.3 fifty
percent (50%) of any costs and expenses of such defense and settlement,
but solely to the extent such costs and expenses relate directly to the defense
and settlement (if any) of any claims or allegations relating directly to
infringement by the Licensed Product. If, however, such Third Party makes a
payment to reimburse Acorda (and/or its Affiliate and/or sublicensee) for such
costs and expenses of defending such infringement suit or action, then Acorda
will pay to Institutions, out of such Third Party payment, a pro rata amount (i.e., the ratio of the
amount of the Third Party payment compared to the total defense costs and
expenses), but not to exceed the total amount that Acorda credited against
royalties owed under the previous sentence. Notwithstanding the foregoing,
Acorda (or such Affiliate or sublicensee)


 


19

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


shall not settle any such
Infringement Suit in a manner that materially adversely impacts the Licensed
Patents without Institutions’ prior written consent, such consent not to be
unreasonably withheld or delayed. For clarity, any costs and expenses of
enforcing Licensed Patents, including those costs relating to the assertion of
a counterclaim alleging infringement of Licensed Patents by a Third Party in
response to an Infringement Suit, shall not be included in the calculation and
allocation of costs and expenses under this Section 7.5, but instead shall
be included in the calculation and allocation of costs and expenses under Section 7.1,
7.2 or 7.3, as applicable.


 


ARTICLE 8


 


INDEMNIFICATION
AND LIMITATION OF LIABILITY


 


8.1          Limitation of
Liability.  NO PARTY SHALL BE LIABLE TO ANOTHER PARTY, ITS
AFFILIATES, CUSTOMERS OR SUBLICENSEES FOR ANY COMPENSATORY, SPECIAL, INCIDENTAL,
INDIRECT, CONSEQUENTIAL OR EXEMPLARY DAMAGES ARISING FROM OR RELATING TO ANY
BREACH OF THIS AGREEMENT OR THE MANUFACTURE, TESTING, LABELING, USE OR SALE OF LICENSED
PRODUCTS. NOTWITHSTANDING THE FOREGOING, NOTHING IN THIS SECTION 8.1 IS
INTENDED TO LIMIT OR RESTRICT THE INDEMNIFICATION RIGHTS OR OBLIGATIONS OF ANY
PARTY UNDER SECTIONS 8.2, 8.3 OR 8.4, OR DAMAGES AVAILABLE FOR BREACHES OF
CONFIDENTIALITY OBLIGATIONS IN ARTICLE 9.


 


8.2          Indemnification
by Acorda.


 


(a)           Indemnification of
CUTS.  Acorda and/or its Affiliate shall defend, indemnify
and hold harmless CUTS and the University of Cambridge, and their respective directors,
students and employees (the “CUTS Indemnitees”),
from and against any and all losses, liabilities, expenses or damages
(including reasonable attorneys’ fees) (collectively, the “Losses”)
resulting from claims made or legal proceedings instituted, made or brought
against any CUTS Indemnitee by a Third Party arising or alleged to arise by
reason of, or in connection with, any and all personal injury (including death)
and property damage caused by the manufacture, testing, design, use, Sale or
labeling of any Licensed Products by Acorda or its Affiliates, contractors,
agents or sublicensees, except to the extent of any Losses that arise from the
negligence or intentional misconduct of any CUTS Indemnitee.


 


(b)           Indemnification of KCL. Acorda shall defend, indemnify and hold harmless
KCL and its directors, students and employees (the “KCL
Indemnitees”), from and against any and all Losses resulting from
claims or legal proceedings instituted, made or brought against any KCL
Indemnitee by a Third Party arising or alleged to arise by reason of, or in connection
with, any and all personal injury (including death) and property damage caused
by the manufacture, testing, design, use, Sale or labeling of any Licensed
Products by Acorda or its Affiliates, contractors, agents or sublicensees,
except to the extent of any Losses that arise from the negligence or
intentional misconduct of any KCL Indemnitee.


 


8.3          Indemnification by
CUTS.  CUTS shall defend, indemnify and hold harmless
Acorda and its Affiliates, directors, officers, agents, contractors,
sublicensees and employees (the


 


20

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


“Acorda Indemnitees”) from and against any
and all Losses resulting from claims or legal proceedings instituted, made or
brought against any Acorda Indemnitee by a Third Party arising or alleged to
arise by reason of, or in connection with, any breach of Section 12.2 by
CUTS, except to the extent of any Losses that arise from the gross negligence
or intentional misconduct of any Acorda Indemnitee, and in any such event, CUTS
liability to the Acorda Indemnitees shall not exceed the total amount of the
portion of all payments paid by Acorda to CUTS under this Agreement that CUTS
retains and is not subsequently paid by CUTS to KCL; provided however, and CUTS
hereby agrees, that such limitation shall not exclude or restrict CUTS
liability for any fraud or other intentional misrepresentation, or death and
personal injury caused by gross negligence or wilful misconduct of any CUTS
Indemnitee.


 


8.4          Indemnification by
KCL.  KCL shall defend, indemnify and hold harmless
Acorda Indemnitees from and against any and all Losses resulting from claims or
legal proceedings instituted, made or brought against any Acorda Indemnitee by
a Third Party arising or alleged to arise by reason of, or in connection with,
any breach of Section 12.1 by KCL, except to the extent of any Losses that
arise from the gross negligence or intentional misconduct of any Acorda
Indemnitee, and in any such event, KCL liability to the Acorda Indemnitees
shall not exceed the total amount of the portion of all payments paid by Acorda
to KCL under this Agreement; provided however, and KCL hereby agrees, that such
limitation shall not exclude or restrict KCL liability for any fraud or other
intentional misrepresentation, or death and personal injury caused by gross
negligence or wilful misconduct of any KCL Indemnitee.


 


8.5          General Conditions of
Indemnification.  To be eligible to be indemnified hereunder,
the indemnified Party shall provide the indemnifying Party with prompt notice
of the claim giving rise to the indemnification obligation pursuant to this Article 8
and the exclusive ability to defend (with the reasonable cooperation of the
indemnified Party) or settle any such claim; provided,
however, that the indemnifying Party shall not enter into any
settlement for damages other than monetary damages without the indemnified
Party’s prior written consent, such consent not to be unreasonably withheld or
delayed. The indemnified Party shall have the right to participate, at its own
expense and with counsel of its choice, in the defense of any claim or suit
that has been assumed by the indemnifying Party.


 


8.6          Insurance.  Each
Party shall maintain reasonable levels of insurance or other adequate forms of
protection to satisfy its respective indemnification obligations under this Agreement.


 


ARTICLE 9


 


CONFIDENTIALITY


 


9.1          Nondisclosure of
Confidential Information.  Except as otherwise provided
hereunder, during the term of this Agreement and for a period of five (5) years
thereafter, each Party (the “Receiving Party”)
agrees to retain in strict confidence, use only for the purposes of this
Agreement, and not disclose any written information or data supplied by or on
behalf of another Party to such Receiving Party under this Agreement and marked
as proprietary or confidential (“Confidential Information”).
Any written information, materials or data disclosed by one Party to another
Party pursuant to the Confidential Disclosure Agreement


 


21

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


among the Parties dated July 3, 2002 shall be deemed the
disclosing Party’s Confidential Information under this Agreement and shall be
subject to the provisions of this Article 9.


 


9.2          Permitted Disclosure.  It
shall not be a breach of this Article 9 if the Receiving Party is required
to disclose another Party’s Confidential Information pursuant to an order of
the government or a court of competent jurisdiction, provided that the
Receiving Party (a) provides such other Party with adequate notice of the
required disclosure, (b) cooperates with such other Party’s efforts to
protect its Confidential Information with respect to such disclosure and (c) takes
all reasonable measures requested by such other Party to challenge or to modify
the scope of such required disclosure. To the extent that it is reasonably
necessary to fulfill its obligations or exercise its rights under this
Agreement, or any rights which survive termination or expiration hereof, the
Receiving Party may disclose Confidential Information of such other Party to
its Affiliates, sublicensees, consultants, outside contractors and clinical
investigators provided that such entities or persons are bound by obligations
of confidentiality and non-use no less restrictive than the obligations in this
Agreement and agree to use the Confidential Information only for such purposes
as the Receiving Party is authorized to use the Confidential Information hereunder.


 


9.3          Exceptions.  The
obligation of a Party under Section 9.1 not to use or disclose another
Party’s Confidential Information shall not apply to any part of such
Confidential Information that the Receiving Party can establish by competent
written proof:


 


(a)           at the time of disclosure is in the
public domain or after disclosure comes into the public domain other than by
unauthorized acts of the Receiving Party obligated not to disclose such
Confidential Information and/or its Affiliates and/or sublicensees in
contravention of this Agreement;


 


(b)           is disclosed to the Receiving Party,
its Affiliates or sublicensees by a Third Party having the right to disclose
it;


 


(c)           can be shown by written proof to
already have been in the possession of the Receiving Party, its Affiliates or
sublicensees prior to disclosure under this Agreement; or


 


(d)           results from the research and
development by the Receiving Party, its Affiliates or sublicensees, independent
of disclosures from the disclosing Party of this Agreement, provided that the
persons developing such information have not had exposure to the Confidential
Information received from the disclosing Party.


 


9.4          Confidential Nature
of Terms of Agreement.  Except as expressly provided herein, each
Party agrees not to disclose any terms of this Agreement to any Third Party
without the consent of the other Parties; provided, however, that disclosures
may be made as required by securities or other applicable laws, or to actual or
prospective investors, sublicensees, corporate or merger partners or acquirers,
or to a Party’s accountants, attorneys, and other professional advisors, and,
in the case of the Institutions, to The Wellcome Trust and in the case of KCL
to IP2IPO Limited, provided that such individuals or entities expressly agree
to keep the terms of the Agreement confidential.


 


22

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


ARTICLE 10


 


TERM AND
TERMINATION


 


10.1        Term.  Unless
sooner terminated as otherwise provided in this Agreement, the term of this
Agreement shall commence on the Effective Date hereof and shall continue in
full force and effect until the expiration of the last to expire Valid Claim
and on such date this Agreement and the licenses granted hereunder shall
automatically become non-exclusive, worldwide, fully paid-up, irrevocable
licenses upon such expiry.


 


10.2        Termination by Acorda.  Acorda
may terminate this Agreement at any time upon ninety (90) days prior written
notice to each of CUTS and KCL.


 


10.3        Termination by
Institutions.  The Institutions may terminate this Agreement forthwith
by giving written notice to Acorda if Acorda and/or its Affiliates and/or
agents and/or sub-contractors and/or sublicensees commence(s) legal proceedings
to challenge the validity or ownership of any of the Licensed Patents.


 


10.4        Termination by any
Party


 


(a)           Material Breach.  CUTS
and KCL may terminate this Agreement if Acorda materially breaches its material
obligations under this Agreement (e.g., material failure to pay CUTS and KCL
pursuant to the terms of this Agreement) and Acorda fails to cure the breach
within sixty (60) days after receipt of written notice from the non-breaching
Party, such notice specifying in detail the nature of the alleged breach. Acorda
may terminate this Agreement if one or both of the other Parties materially
breaches its material obligations under this Agreement and such breaching Party(ies)
fails to cure the breach within sixty (60) days after receipt of written notice
from Acorda, such notice specifying in detail the nature of the alleged breach


 


(b)           Cease of Business.  Without prejudice to any other right or
remedy, any Party may terminate this Agreement at any time by notice in writing
to the other Parties, if any Party ceases to carry on business, is declared by
a court of competent jurisdiction to be bankrupt, or an order made or a
resolution passed for the winding up of any Party or upon the appointment of a
liquidator of that Party.


 


10.5         Consequences of Termination.  No
termination of this Agreement shall relieve Acorda of the liability for payment
of any Earned Royalties due for Licensed Products sold prior to the effective
date of such termination or for Sublicense Royalties paid or payable prior to
the effective date of such termination. Notwithstanding anything herein to the
contrary, upon any termination or expiration of this Agreement, Acorda shall
have the right to use or sell Licensed Products on hand on the date of such
termination or expiration and to complete Licensed Products in the process of
manufacture at the time of such termination or expiration and use or sell the
same, provided that Acorda shall submit the applicable royalty reports
described in Section 4.1, along with Earned Royalty and/or Sublicense
Royalty payments in accordance with Sections 3.2, 3.3 and 3.4 for Sale of such
Licensed Products. For clarity, upon termination of


 


23

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


this Agreement under Section 10.2 or 10.3, Institutions are free
to enter into a commercial license or similar agreement with any Third Party
with respect to such Licensed Patents, or otherwise exploit such Licensed
Patents. Further, upon the Institutions written request, the Parties shall
negotiate in good faith the terms of an agreement between them on reasonable
commercial terms to enable the Institutions to arrange for further exploitation
of the Licensed Products as they exist at the date of termination, including to
provide the Institutions with all improvements, information and results created
or developed by Acorda and/or its Affiliates and/or their agents.


 


ARTICLE 11


 


ASSIGNMENT


 


No Party may
assign or transfer this Agreement or any rights or obligations hereunder
without the prior written consent of the other Parties, except Acorda may make
such an assignment without Institutions’ written consent to an Affiliate or to
a successor to all, or substantially all, of the business of Acorda, whether in
a merger, sale of stock, sale of assets or other transaction, provided,
however, that Acorda may not assign or transfer this Agreement or any rights or
obligations hereunder without Institutions’ written consent to such a successor
entity where a significant portion of such entity’s commercial business
activity constitutes: (a) the manufacture and/or sale of military arms or
weapons, or (b) the manufacture and/or sale of tobacco containing
products. Any permitted successor or assignee of rights and/or obligations
hereunder shall, in a writing to the other Parties, expressly assume
performance of such rights and/or obligations. Any assignment or attempted
assignment by any Party in violation of the terms of this Article 11 shall
be null and void and of no legal effect.


 


ARTICLE 12


 


MISCELLANEOUS


 


12.1        KCL confirms to Acorda that with respect
to the Patent Application and/or the Licensed Patents:


 


(a)           as far as KCL is aware, having
neither commissioned nor performed any searches or investigations into the
existence of any third party rights, KCL owns its interests in the Patent
Application free and clear of all licenses and encumbrances and the like of any
nature whatsoever;


 


(b)           KCL is not currently involved in any
litigation, and is unaware of any pending litigation proceedings, relating to
Institutions’ ownership of the Patent Application;


 


(c)           this Agreement is a legal and valid
obligation of, binding upon, and enforceable against KCL in accordance with the
terms of this Agreement;


 


(d)           the execution, delivery and performance
of this Agreement does not as of the Effective Date conflict with, constitute a
breach of, or violate any arrangement, understanding or agreement to which KCL
is a party or by which KCL is bound;


 


24

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


(e)           KCL has not granted to a Third Party
any right or interest in any of the Licensed Patents that is inconsistent with
the rights granted to Acorda herein and shall not grant a Third Party any such
right during the term of this Agreement;


 


(f)            KCL has the right to enter into this
Agreement, grant the rights granted herein and perform the obligations set
forth in this Agreement; and


 


(g)           KCL is the legal owner of its right,
title and interest in the inventions developed by its respective Inventors
giving rise to the Licensed Patents.


 


12.2        CUTS confirms to Acorda that with
respect to the Patent Application and/or the Licensed Patents:


 


(a)           as far as CUTS is aware, having
performed no searches or investigations into the existence of any third party
rights, CUTS owns its interests in the Patent Application free and clear of all
licenses and encumbrances and the like of any nature whatsoever;


 


(b)           CUTS is not currently involved in any
litigation, and is unaware of any pending litigation proceedings, relating to
Institutions’ ownership of the Patent Application;


 


(c)           this Agreement is a legal and valid
obligation of, binding upon, and enforceable against CUTS in accordance with
the terms of this Agreement;


 


(d)           the execution, delivery and
performance of this Agreement does not as of the Effective Date conflict with, constitute
a breach of, or violate any arrangement, understanding or agreement to which
CUTS is a party or by which CUTS is bound;


 


(e)           CUTS has not granted to a Third Party
any right or interest in any of the Licensed Patents that is inconsistent with
the rights granted to Acorda herein and shall not grant a Third Party any such
right during the term of this Agreement;


 


(f)            CUTS has the right to enter into
this Agreement, grant the rights granted herein and perform the obligations set
forth in this Agreement; and


 


(g)           CUTS is the legal owner of its right,
title and interest in inventions developed by Professor James Fawcett giving
rise to the Licensed Patents.


 


12.3        Acorda confirms to Institutions that:


 


(a)           this Agreement is a legal and valid
obligation of, binding upon, and enforceable against Acorda in accordance with
the terms of this Agreement;


 


(b)           Acorda has the right to enter into
this Agreement and perform the obligations set forth in this Agreement;


 


(c)           the execution, delivery and
performance of this Agreement does not conflict with, constitute a breach of,
or violate any arrangement, understanding or agreement to which Acorda is a
party or by which Acorda is bound; and


 


25

















 


Certain portions
of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


(d)           Acorda shall be responsible for the performance
by its Affiliates in accordance with the terms of this Agreement.


 


12.4        Disclaimer of
Warranties.  CUTS AND KCL MAKE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES
NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO THE USE, SALE, OR OTHER
DISPOSITION BY ACORDA AND/OR ITS AFFILIATES AND/OR ITS SUBLICENSEES OF LICENSED
PRODUCT(S).


 


12.5        Independent
Contractor.  Acorda’s relationship to Institutions shall be
that of a licensee only. None of the Parties shall be considered to be an
employee or agent of another, nor shall this Agreement constitute, create or in
any way be interpreted as a joint venture, partnership or formal business
organization of any kind. In that respect, no Party shall have the authority to
execute any agreement on behalf of another Party, nor shall any Party have any
authority to negotiate any agreement, except as such other Party may expressly
direct in writing.


 


12.6        Patent Marking.  Acorda
agrees to mark the appropriate patent number or numbers on all Licensed
Products made or Sold in the Licensed Territory in accordance with all applicable
governmental laws, rules and regulations, and to require its sublicensees
to do the same.


 


12.7        Use of Names.  Acorda shall obtain the prior written approval
of KCL or CUTS (as applicable), such approval not to be unreasonably withheld,
prior to making use of the name, trademarks, logos or symbols of KCL, the
University of Cambridge, CUTS (an authorized designee of the University of
Cambridge for purposes of this Agreement), or their respective employees,
students and faculty members for any commercial purpose, except as required to comply
with law, regulation or court order. Institutions shall obtain the prior
written approval of Acorda, such approval not to be unreasonably withheld,
prior to making use of the name, trademarks, logos or symbols of Acorda for any
commercial purpose, except as required to comply with law, regulation or court
order.


 


12.8        Governing Law.  This Agreement
and all amendments, modifications, alterations, or supplements hereto, and the
rights of the Parties hereunder, shall be construed under and governed by the
laws of England and shall be subject to the exclusive jurisdiction of the
English courts to which the Parties hereby submit, except that a Party may seek
interim injunction in any court of competent jurisdiction.


 


12.9        Entire Agreement.  This
Agreement, the Sponsored Research Agreement and the Material Transfer
Agreements of even date constitutes the entire, final and exclusive agreement among
the Parties hereto, and supercedes and terminates all prior agreements and
understandings between the Parties, with respect to the subject matter hereof
and thereof, whether written or oral, including the Confidential Disclosure
Agreement among the Parties dated July 3, 2002. No subsequent alteration,
amendment, change or addition to this Agreement shall be binding upon the
Parties unless reduced to writing and signed by an authorized officer of each
Party.


 


12.10      Survival.  Articles
1, 8, 9, and 12, and Sections 4.5, 4.6, 5.2 and 10.5 shall survive termination
of this Agreement for any reason.


 


26

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


12.11      Severability.  All
rights and restrictions contained herein may be exercised and shall be
applicable and binding only to the extent that they do not violate any
applicable national laws and are intended to be limited to the extent necessary
so that they will not render this Agreement illegal, invalid or unenforceable.
If any provision or portion of any provision of this Agreement, not essential
to the commercial purpose of this Agreement, shall be held to be illegal,
invalid or unenforceable by a court of competent jurisdiction, it is the
intention of the Parties that the remaining provisions or portions thereof shall
constitute their agreement with respect to the subject matter hereof, and all
such remaining provisions, or portions thereof, shall remain in full force and
effect. To the extent legally permissible, the Parties shall use good faith efforts
to agree to replace any illegal, invalid or unenforceable provision of this
Agreement with a valid provision that shall implement as much as permitted the
commercial intent of the illegal, invalid, or unenforceable provision. If any
provision essential to the commercial purpose of this Agreement is held to be
illegal, invalid or unenforceable and cannot be replaced by a valid provision
which will implement the commercial intent of this Agreement, the Party(ies)
who is the beneficiary of such illegal, invalid or unenforceable provision has
the right to terminate this Agreement upon written notice, effective upon
receipt, to the other Parties.


 


12.12      Notices.  Any
notice required or permitted to be given under this Agreement shall be in
writing, shall specifically refer to this Agreement and shall be deemed to have
been sufficiently given and received for all purposes (a) upon personal
delivery to the appropriate address, (b) five (5) days after the date
of mailing when sent first class certified or registered mail, postage prepaid,
(c) three (3) business days after sending by internationally
recognized express delivery service, or (d) one (1) business day
after facsimile transmission to the appropriate number(s) below, with
transmission confirmed by the recipient. Unless otherwise specified in writing
in accordance with this Section 12.12, the mailing addresses and facsimile
numbers of the Parties shall be as set forth below.


 


	
   

  	
  For
  Acorda:

  	
   

  	
  Acorda
  Therapeutics, Inc.

  
	
   

  	
   

  	
   

  	
  15
  Skyline Drive

  
	
   

  	
   

  	
   

  	
  Hawthorne,
  New York 10532 USA

  
	
   

  	
   

  	
   

  	
  Attention:

  	
  Harold
  Safferstein, Vice President,

  
	
   

  	
   

  	
   

  	
   

  	
  Business
  Development

  
	
   

  	
   

  	
   

  	
  Fax
  Number:

  	
  (914)
  347-4560

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  For
  CUTS:

  	
   

  	
  Cambridge
  University Technical Services Limited

  
	
   

  	
   

  	
   

  	
  c/o
  Research Services Division

  
	
   

  	
   

  	
   

  	
  University
  of Cambridge

  
	
   

  	
   

  	
   

  	
  16
  Mill Lane

  
	
   

  	
   

  	
   

  	
  Cambridge
  CB2 1SB, UK

  
	
   

  	
   

  	
   

  	
  Attention:
  Director

  
	
   

  	
   

  	
   

  	
  Fax
  Number: +44 (0)12 2333 2988

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  For KCL:

  	
   

  	
  King’s
  College London

  
	
   

  	
   

  	
   

  	
  KCL
  Enterprises Ltd

  
	
   

  	
   

  	
   

  	
  James
  Clerk Maxwell Building

  
	
   

  	
   

  	
   

  	
  57
  Waterloo Road

  
	
   

  	
   

  	
   

  	
  London,
  SEI 8WA, UK

  



 


27

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


	
   

  	
   

  	
  Attention:
  Director of Technology Transfer

  
	
   

  	
   

  	
  Fax
  Number: +44 (0)20 7848 3320

  



 


12.13      Force Majeure.  Any delays in, or failure of
performance of any Party to this Agreement, shall not constitute a default
hereunder, or give rise to any claim for damages, if and to the extent caused
by occurrences beyond the control of the Party affected; including, but not limited
to, acts of God, acts of terrorism, strikes or other concerted acts of workmen,
civil disturbances, fires, floods, earthquakes, explosions, riots, war, rebellion,
sabotage, acts of governmental authority or failure of governmental authority
to issue licenses or approvals which may be required. The Party suffering such
occurrence shall immediately notify the other Parties as soon as practicable
and any time for performance hereunder shall be extended by the actual time of
delay caused by the occurrence, provided that the Party affected by such
occurrence uses reasonable efforts to overcome or avoid such delay.


 


12.14      Farther Assurances.  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.


 


12.15      Headings.  The
headings appearing in this Agreement have been inserted for convenience of
reference only and shall not affect the construction, meaning or interpretation
of this Agreement or any of its terms and conditions.


 


12.16      No Waiver.  The
failure by any Party, at any time, or for any period of time, to enforce any of
the provisions of this Agreement, shall not be construed as a waiver of such provisions
or as a waiver of any Party’s rights thereafter to enforce each and every such provision
of this Agreement.


 


12.17      Construction.  This
Agreement has been prepared jointly by all Parties and shall not be strictly
construed against any Party.


 


12.18      Counterparts. This Agreement may be executed in one (1) or
more counterparts, each of which shall be deemed an original, but all of which
shall constitute one (1) and the same instrument.


 


[Signature Page Follows]


 


28

















 


Certain
portions of this Exhibit have been omitted pursuant to a request for
confidentiality.  Such omitted portions,
which are marked with brackets [   ] and
an asterisk*, have been separately filed with the Commission.


 


 


IN WITNESS WHEREOF, Acorda, CUTS and KCL have caused this
Agreement to be executed as of the Effective Date by their duly authorized
representatives below.


 


	
  ACORDA
  THERAPEUTICS, INC.

  	
   

  	
  CAMBRIDGE
  UNIVERSITY TECHNICAL

  
	
   

  	
   

  	
  SERVICES
  LIMITED

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  By:

  	
    /s/ Hank Safferstein

  	
   

  	
  By:

  	
   
  /s/ R. C. Jennings

  	
   

  
	
  Print
  Name:

  	
   Hank Safferstein

  	
   

  	
  Print
  Name:

  	
  DR.
  R. C. Jennings

  	
   

  
	
  Title:

  	
    V.P. Business Dev.

  	
   

  	
  Title:

  	
    DIRECTOR

  	
   

  
										



 


 


KING’S COLLEGE LONDON


 


 


	
  By:

  	
    /s/ SUSAN SMITH

  	
   

  
	
  Print
  Name:

  	
  SUSAN SMITH

  	
   

  
	
  Title:

  	
  DIRECTOR OF TECHNOLOGY TRANSFER

  	
   

  
					



 


29