exv10w1






Exhibit 10.1




AGREEMENT OF TERMINATION




by and between




BIOTIE THERAPIES CORP.




and




SOMAXON PHARMACEUTICALS, INC.




12 March 2009




 









 





2(6)




AGREEMENT OF TERMINATION





	 	 	 	THIS AGREEMENT OF TERMINATION (hereinafter the “Agreement of Termination”)
is entered into on this the 12th day of March 2009, by and between
	 
	 	1.	 	Biotie Therapies Corp., a corporation incorporated and existing under
the laws of Finland, having its registered domicile in Turku, Finland and with
business identity code 1475830-6 (“BTT”);
	 
	 	 	 	and
	 
	 	2.	 	Somaxon Pharmaceuticals, Inc., a corporation incorporated and
existing under the laws of the state of Delaware, in the United States of America
and having its principal place of business in San Diego, California (“Somaxon”).
	 
	 	 	 	Each also referred to as “Party” or together as “Parties”.





RECITALS





	 	A.	 	On 12 November 2004 the Parties entered into a license agreement
regarding the clinical development, obtaining of a regulatory marketing approval
and commercialising of the IPR in the Territory. On November 2, 2006, the Parties
entered into a letter agreement amending certain provisions in such license
agreement. The license agreement and letter agreement shall collectively
hereinafter be referred to as the “License Agreement”.
	 
	 	B.	 	With this Agreement of Termination the Parties desire to terminate
the License Agreement and agree on certain related arrangements thereto, such as
the return of all materials delivered to the other Party during the course of the
Agreement term, on the terms and conditions set forth herein. The intent of the
Parties is, thus, to put BTT in a position to freely license and/ or transfer any
and all rights granted to Somaxon under the License Agreement.
	 
	 	 	 	NOW THEREFORE, the Parties hereby agree as follows:





1. DEFINITIONS





	 	 	 	As used in this Agreement of Termination, unless expressly otherwise
stated or evident in the context, all captioned terms shall have the
meanings defined in the License Agreement.





2. TRANSFER AND TERMINATION





	 	 	 	Somaxon hereby returns to BTT all licensed rights acquired by Somaxon
under the License Agreement (the “Transfer”).




 









 











3(6)





	 	 	 	The Parties hereby jointly agree to terminate the License Agreement with
immediate effect. The Parties acknowledge that such termination shall
include the sublicense rights and the Tri-Party Agreements related to such
sublicense rights as set forth in Section 2.3 of the License Agreement.
After the termination, the Parties do not have any obligations or claims
towards each other based on the License Agreement other than:






	 	(a)	 	BTT to pay the sums as specified in Section
3 below;
	 
	 	(b)	 	Somaxon to return all Know-How and other
data, information, related materials (including but not limited to
expert reports) relating to the Product provided by BTT to Somaxon in
connection with the License Agreement or otherwise, including, but
not limited to, all material related to the Phase III Clinical Trial
involving the alcoholism study conducted by BTT (the “BTT Data”).
Somaxon shall return the BTT Data to BTT as reasonably practicable
after the date of this Agreement of Termination;
	 
	 	(c)	 	BTT to return all data, information,
related materials (including but not limited to expert reports) and
any correspondence with the FDA) relating to the Product as well as
any NDAs and/ or INDs provided by Somaxon to BTT in connection with
the License Agreement (collectively, the “Somaxon Data”). BTT shall
return the Somaxon Data to Somaxon as reasonably practicable after
the date of this Agreement of Termination;
	 
	 	(d)	 	Somaxon to execute and deliver such
documents related to the return transfer of the Trade Marks back to
BTT, if any, and do such other things as may be reasonably requested
by BTT, to confirm any and all rights to the Trade Marks to BTT and
to facilitate the recording of the transfer of the Trade Marks in the
Territory without any claim for remuneration; and
	 
	 	(e)	 	The confidentiality provision contained in
Section 15 of the License Agreement to remain valid.






	 	 	 	Further, Somaxon shall refrain from any and all further research and
development relating to or based on the IPR.
	 
	 	 	 	In addition, each of the Parties acknowledges that the indemnification
obligations contained in Section 14 of the License Agreement shall survive
the termination of the License Agreement. Each of BTT and Somaxon hereby
agrees not to assert any claim that the other party has violated any terms
of the License Agreement prior to the effective date of this Agreement of
Termination, except to the extent that any such claim is necessary to
limit an indemnification claim made by such other party pursuant to the
terms of Section 14. After the effective date of this Agreement and
Termination, BTT





 









 










4(6)





	 	 	 	shall have the full responsibility for any pre-clinical and clinical
trials conducted by it or any of third party as well as for the Product
marketing, distribution, manufacturing, sale or any other similar matters
and shall bear any and all liability resulting thereof. For the avoidance
of doubt, Somaxon shall continue to have the indemnity obligations set
forth in Section 14 of the License agreement and thereby bear any and all
liability relating to any pre-clinical and clinical trials conducted by
Somaxon based on the IPR during the term of the License Agreement
specifically pursuant to the terms and conditions set forth in Section 14
of the License Agreement.





3. ECONOMIC TERMS





	 	 	 	As a consideration of the Transfer, BTT shall within five (5) business
days after the signing of this Agreement of Termination pay to Somaxon a
fixed sum of USD one (1) million (the “Termination Fee”). This Agreement
of Termination shall only be effective upon receipt of the Termination Fee
by Somaxon.
	 
	 	 	 	The payments shall be made to Somaxon’s bank account as follows:
	 
	 	 	 	Account number: 3300399198
	 
	 	 	 	Routing number: 121140399
	 
	 	 	 	Swift Code (Intl): SVBKUS6S





4. PUBLICITY





	 	 	 	The Parties acknowledge and agree that the execution and main contents of
this Agreement of Termination shall be disclosed by a release to the
market upon the execution by the Parties. The contents of such release
shall be agreed upon by the Parties beforehand.





5. MISCELLANEOUS




5.1 Compliance with Laws





	 	 	 	Each Party shall comply with all laws, rules,
regulations and policies applicable to the conduct
of its duties and obligations under this Agreement
of Termination.





5.2 Severability





	 	 	 	In case one (1) or more of the provisions contained
in this Agreement of Termination should, for any
reason, be held invalid, illegal or unenforceable in
any respect, such invalidity, illegality or
unenforceability shall not affect any other
provisions of this Agreement of Termination, but
this Agreement of




 









 











5(6)





	 	 	 	Termination shall be construed by limiting such invalid, illegal or
unenforceable provision or, so that the invalid, illegal or unenforceable
provision is substituted by a valid, legal and enforceable provision which
as nearly as possible gives effect to the Parties’ intention expressed in
this Agreement of Termination.





5.3 Entire Agreement





	 	 	 	This Agreement of Termination constitutes the entire
agreement between the Parties regarding the subject matter hereof and
supersedes all written or oral prior agreements or understandings. The
Parties agree and acknowledge that the Parties do not have any
obligations or claims towards each other based on the License
Agreement other than those set forth in Sections 2, 3 and 4 above.





5.4 Governing Law





	 	 	 	This Agreement of Termination is acknowledged to have
been made, and shall be construed, governed, interpreted and applied
in accordance with the laws of England without reference to its
provisions relating to choice of laws.





5.5 Dispute Resolution





	 	 	 	In the event of any controversy, claim or dispute
arising out of or relating to any provisions of this Agreement of
Termination, the Parties shall try to settle those conflicts amicably
between themselves within thirty (30) days as of either Party’s
written request for amicable settlement negotiations. Should the
Parties fail to settle, the matter in dispute shall be finally and
exclusively settled by binding arbitration in accordance with Rules of
the International Chamber of Commerce. The arbitration shall be held
in the English language in London, England. In any such arbitration,
Somaxon shall select one (1) arbitrator and BTT shall select one (1)
arbitrator, who, in each case, shall be an experienced lawyer or judge
(or retired lawyer or judge) and fluent in English. The arbitrators
selected by the Parties shall select a third arbitrator to act as
Chairman. Judgement upon the award may be entered in any Court having
jurisdiction.





5.6 Third Parties





	 	 	 	The Parties do not intend that any terms of this
Agreement of Termination shall be enforceable by any person who is not
a party to this Agreement of Termination, except as such Agreement of
Termination shall effect the termination of the Tri-Party Agreements
entered into in connection with the License Agreement.





5.7 Counterparts of this Agreement of Termination





	 	 	 	This Agreement of Termination has been executed in two (2) identical
counterparts, one (1) for BTT and one (1) for Somaxon.




 









 











6(6)





	 	 	IN WITNESS WHEREOF, the Parties hereto have duly executed this Agreement of Termination
in San Diego, California and Turku, Finland as of the day and year first above written.





	 	 	 
	Biotie Therapies Corp.

	 	Somaxon Pharmaceuticals, Inc.
	 
	 	 
	/s/ Timo Veromaa

	 	/s/ Richard W. Pascoe
	Name: Timo Veromaa

	 	Name: Richard W. Pascoe
	Title: President and CEO

	 	Title: President and CEO