**[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.****EXHIBIT 10.2**RESEARCH, DEVELOPMENT AND MARKETINGCOLLABORATION AGREEMENTDATED AS OF MAY 2, 1995BETWEENONYX PHARMACEUTICALS, INC.ANDWARNER-LAMBERT COMPANY**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

 **TABLEOF CONTENTS**     ARTICLE A DEFINITIONS  1      Affiliate  1 Collaboration Compound(s)  1 Collaboration Lead Compound(s)  1 Collaboration Product(s)  1 Collaboration Product Exclusive Period  1 Co-Promotion Country  1 Effective Date  1 FDA  1 Field  2 IND  2 Invention(s)  3 Know-How  3 NDA  3 Net Sales  3 Onyx Know-How  3 Onyx Lead Compound(s)  3 Onyx Patents  3 Onyx Product(s)  4 Onyx Product Exclusive Period  4 Patent(s)  4 Product(s)  4 Research Management Committee  4 Research Plan  4 Term of Co-Promotion  4 Term of this Agreement  4 Term of the Research Collaboration  4 Warner Know-How  4 Warner Patents  4      ARTICLE I RESEARCH PROGRAM  5      1.1 Undertaking and Scope  5 1.2 Personnel and Resources  5 1.3 Term of the Research Collaboration  6 1.4 Rights to Know-How and Patents for Research  6 1.5 Collaboration Expenses  6      ARTICLE II COMMITTEES  6      2.1 Research Management Committee  6 2.2 Marketing Committee  7 2.3 Meetings  7 2.4 SAB Attendance  7      ARTICLE III PATENTS, KNOW-HOW, RIGHTS AND INVENTIONS  7      3.1 Rights to Inventions  7 3.2 Joint Inventions  8 3.3 Protection of Patent Rights  8 3.4 Allegations of Infringement by Third Parties  9 **[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

      ARTICLE IVDESIGNATION OF LEAD COMPOUNDS AND MARKETING RIGHTS  9      4.1 Designation of Lead Compound  9 4.2 Collaboration Product  10 4.3 Independent Development  10 4.4 Warner’s Re-engagement Option  10      ARTICLE V LICENSES AND ROYALTIES  11      5.1 Grant by Onyx  11 5.2 Grant by Warner  11 5.3 Royalties Payable by Warner  11 5.4 Royalties Payable by Onyx  12 5.5 Currency of Payment  13 5.6 Payment and Reporting  13 5.7 Records  13 5.8 Taxes Withheld  13 5.9 Computation of Royalties  13 5.10 Licenses to Affiliates  14 5.11 Restrictions on Payment  14      ARTICLE VI CO-PROMOTION OF COLLABORATION PRODUCTS  14      6.1 Co-Promotion Rights  14 6.2 Election or Revocation of Co-Promotion Right  14 6.3 Onyx’s Promotional Percentage  14 6.4 Marketing and Marketing Plans  15 6.5 Promotional Materials  15 6.6 No Delegation  15 6.7 Returns  15 6.8 Orders  15 6.9 Samples  15 6.10 Completion of Sales  15 6.11 Training  15 6.12 Exchange of Marketing Information  16      ARTICLE VII FDA  16      7.1 Side Effects  16 7.2 Regulatory and other Inquiries  16 7.3 Product Recall  16 7.4 Responsibility if not Co-Promoting  16      ARTICLE VIII RESEARCH FUNDING AND MILESTONES  16      8.1 Research Funding  16 8.2 Milestones  17      ARTICLE IX CONFIDENTIALITY  18      9.1 Confidentiality  18 9.2 Publicity  18 9.3 Publication  19      ARTICLE X JAPAN  19      10.1 Japanese Company  19 10.2 Japanese Company Agreement  19 10.3 Absence of Agreement  20 **[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

      ARTICLE XI REPRESENTATIONS AND WARRANTIES  20      11.1 Legal Authority  20 11.2 No Conflicts  20 11.3 Others Bound  20 11.4 Third Party Rights  21 11.5 Survival  21 11.6 Disclaimer  21 11.7 Exclusivity  21      ARTICLE XII  21      12.1 Termination for Breach  21 12.2 Effect of Bankruptcy  22 12.3 Key Personnel  22 12.4 Termination of Co-Promotion Rights  22 12.5 Remedies  23 12.6 Voluntary Termination  23      ARTICLE XIII GENERAL PROVISIONS  23      13.1 Indemnification  23 13.2 Assignment  24 13.3 Non-Waiver  24 13.4 Research Dispute Resolution  24 13.5 Governing Law  24 13.6 Partial Invalidity  24 13.7 Notice  24 13.8 Vaccines and Diagnostics  25 13.9 Headings  25 13.10 No Implied Licenses or Warranties  25 13.11 Force Majeure  25 13.12 Survival  26 13.13 Entire Agreement  26 13.14 Amendments  26 13.15 Independent Contractors  26 13.16 Counterparts  26 **[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.
 

 

 RESEARCH, DEVELOPMENT AND MARKETING COLLABORATION AGREEMENT     Research, Development and Marketing Collaboration Agreement, dated as of May 2, 1995, betweenOnyx Pharmaceuticals, Inc., a California corporation (“Onyx”), located at 3031 Research Drive,Richmond, California 94806, and Warner-Lambert Company, a Delaware corporation (“Warner”), locatedat 201 Tabor Road, Morris Plains, New Jersey 07950.W I T N E S S E T H:     WHEREAS, Onyx and Warner each has certain expertise in the discovery and development of agentsacting in the field of cell cycle control; and     WHEREAS, Warner and Onyx each wish to enter into a collaborative effort to share suchexpertise, to develop new expertise in the field of cell cycle control, to research togetherpotential applications thereof and, if successful, to market certain of such applications (the“Collaboration”);     NOW, THEREFORE, in consideration of the foregoing premises and the mutual promises, covenantsand conditions contained herein, Onyx and Warner agree as follows:ARTICLE ADEFINITIONS     The following capitalized terms shall have the meanings indicated for purposes of thisAgreement:     “Affiliate” shall mean any corporation, association or other entity which directly orindirectly controls, is controlled by or is under common control with the party in question. Asused herein the term “control” means possession of the power to direct, or cause the direction of,the management and policies of a corporation, association or other entity.     “Collaboration Compound(s)” shall have the meaning set forth in Section 1.1.     “Collaboration Lead Compound(s)” shall have the meaning set forth in Section 4.1.     “Collaboration Product(s)” shall have the meaning set forth in Section 4.2.     “Collaboration Product Exclusive Period” shall have the meaning set forth in Section5.3.     “Co-Promotion Country” shall mean the United States of America and its territories andpossessions, including the Commonwealth of Puerto Rico.     “Effective Date” shall mean the date of this Agreement first written above.     “FDA” shall mean the United States Food and Drug Administration.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

2     “Field” shall mean research, drug discovery and development collaboration aimed attherapeutic agents to restore control of, or otherwise intervene in, misregulated cell cycletransitions in tumor cells, vascular smooth muscle cells, or other pathological conditions, in eachcase insofar as it relates to the targets listed below. Such agents may restore growth controland/or result in death of cells with aberrant control.The Collaboration will seek to identify agents that modulate biological targets within the Field.The Collaboration will include all therapeutic benefits of such agents.The Field will consist initially of **[ * ]**. The Field shall also include the **[ * ]**. The Field willalso include the **[ * ]**.The parties may agree during the Term of the Research Collaboration to expand the Field bydesignating additional targets, and it is their intention to do so in the event logical extensionsof the Field are identified and may be accommodated within the resource commitment of the parties.Such expansion will be in writing signed by all members of the Research Development Committee.However, neither party shall be obligated to agree to expand the Field.Notwithstanding the general description of the Field provided above, the Field will exclude:(a) All molecular entitles that are part of or that regulate **[ * ]**. This includes but isnot restricted to **[ * ]**. This also includes molecules that directly or indirectly regulatethe aforementioned molecules, **[ * ]**. This also includes **[ * ]**. This exception shall notinclude (by way of example and not limitation) **[ * ]**     “IND” shall mean an Investigational New Drug Application.     “Invention(s)” shall have the meaning set forth in Section 3.1.     “Know-How” shall mean Onyx Know-How and/or Warner Know-How, as the case may be.     “NDA” shall mean a New Drug Application.     “Net Sales” shall mean the gross amount invoiced by a party hereto or one of itsAffiliates to customers who are not Affiliates of the selling party for all Products sold afterdeduction of the following items calculated in accordance with United States generally acceptedaccounting principles and Warner’s (or Onyx’s, as the case may be) normal internal accountingstandards consistently applied: **[ * ]**     “Onyx Know-How” shall mean all technology, inventions, information, data, know-how,compounds and materials that (i) are not Onyx Patents, (ii) Onyx owns or otherwise has the right tolicense to Warner and (iii) relate to the discovery, design, synthesis, delivery, development,testing, use, manufacture or sale of agents acting in the Field. Excluded from “Onyx Know-How” arecompounds and information relating to compounds that have been identified by Onyx as candidates forcGLP/cGMP studies on or before the Effective Date, or arehereafter so identified without material application of information provided by Warner ordeveloped by either party pursuant to the Collaboration.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

3     “Onyx Lead Compound(s)” shall have the meaning set forth in Section 4.3.     “Onyx Patents” shall mean all United States and foreign patents that are owned by Onyxor that Onyx otherwise has the right to license to Warner and that relate to the discovery, design,synthesis, delivery, development, testing, use, manufacture or sale of agents acting in the Field,including, without limitation, all reissues, extensions, substitutions, confirmations,registrations, revalidations, additions, continuations, continuations-in-part, and divisionsthereof. Excluded from “Onyx Patents” are compounds and information relating to compounds thathave been identified by Onyx as candidates for cGLP/cGMP studies on or before the Effective Date,or are hereafter so identified without material application of information provided by Warner ordeveloped pursuant to the Collaboration.     “Onyx Product(s)” shall have the meaning set forth in Section 4.3.     “Onyx Product Exclusive Period” shall have the meaning set forth in Section 5.4.     “Patent(s)” shall mean, Onyx Patents and/or Warner Patents, as the case may be.     “Product(s)” shall mean Collaboration Products and/or Onyx Products, as applicable.     “Research Management Committee” shall mean that entity organized and acting pursuantto Section 2.1.     “Research Plan” shall have the meaning set forth in Section 1.1.     “Term of Co-Promotion” for a Collaboration Product shall mean the period beginningupon the first commercial sale of a Collaboration Product in the Co-Promotion Country and **[ * ]**.     “Term of this Agreement” shall mean from the Effective Date until the expiration ofall licenses granted pursuant to this Agreement or until this Agreement is otherwise terminatedpursuant to its terms.     “Term of the Research Collaboration” shall have the meaning set forth in Section 1.3.     “Warner Know-How” shall mean all technology, inventions, information, data, know-how,compounds and materials that (i) are not Warner Patents, (ii) Warner owns or otherwise has theright to license to Onyx and (iii) relate to the discovery, design, synthesis, delivery,development, testing, use, manufacture or sale of agents acting in the Field. Excluded from”WarnerKnow-How” are (i) Warner’s high-volume screening technology and (ii) compounds and informationrelating to compounds that have been identified by Warner ascandidates for cGLP/cGMP studies on or before the Effective Date, or are hereafter soidentified without material application of information provided by Onyx or developed by eitherparty pursuant to the Collaboration.     “Warner Patents” shall mean all United States and foreign patents that are owned byWarner or that Warner otherwise has the right to license to Onyx and that relate to the discovery,design, synthesis, delivery, development, testing, use, manufacture or sale of agents acting in theField, including, without limitation, all reissues, extensions, substitutions, confirmations,**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

4registrations, revalidations, additions, continuations, continuations-in-part, and divisionsthereof. Excluded from”Warner Patents” are (i) Warner’s high volume screen technology and (ii)compounds and information relating to compounds that have been identified by Warner as candidatesfor cGLP/cGMP studies on or before the Effective Date, or are hereafter so identified withoutmaterial application of information provided by Onyx or developed pursuant to the Collaboration.ARTICLE IRESEARCH PROGRAM     1.1 Undertaking and Scope. From time to time the Research Management Committee willagree on the general direction of the research to be performed hereunder. Correspondence and othermaterial documenting such agreement are collectively referred to herein as the “Research Plan.”Each party agrees to use its best efforts to perform the activities detailed in the Research Plan,in a professional and timely manner. Onyx agrees to use its best efforts at its cost (includingthe cost of any royalties or other amounts payable by Onyx to third parties) to (i) develop andtransfer to Warner **[ * ]**screening assays per each year of the Term of the Research Collaborationfor specific targets in the Field selected by the Research Management Committee, (ii) supplyprotein required to run such screens and (iii) provide for the testing of substantially all ofOnyx’s compound library in such screens. Onyx shall not knowingly provide or perform research onany compounds the use of which would require a royalty or other payment to any third party, unlessthe Research Management Committee agrees that such compound should be provided and the partiesagree in writing how such royalty or other payment will be paid. Warner agrees to use its bestefforts at its cost (including the cost of any royalties or other amounts payable by Warner tothird parties) to (i) screen substantially all of its compound library with such screens providedby onyx and (ii) conduct medicinal chemistry and animal pharmacology as the Research ManagementCommittee deems appropriate. Promptly after the Effective Date, Onyx and Warner will disclose toeach other all information possessed by it relevant to the Field and necessary or helpful toperform the work described in the Research Plan (except to the extent precluded by the pre-existingconfidentiality obligations described on Schedule 1 hereto). Compounds identified byeither party during the Term of the Research Collaboration (or **[ * ]**thereafter) as showingsufficient activity against targets identified by the Research Management Committee in assayscontributed to or developed under the Collaboration such that further research on such compound forsuch target is pursued, and any analogs or derivatives of such compounds whenever identified, arereferred to herein as “Collaboration Compounds.” The Research Management Committee and eitherparty individually may from time to time declare each such compound to be a Collaboration Compound.Notwithstanding theforegoing, neither party will be required to offer the other party any compounds orinformation relating to compounds that have been identified as candidates for cGLP/cGMP studies onor before the Effective Date, or are hereafter so identified without material application ofinformation provided by the other party or developed pursuant to the Collaboration. Neither partyshall be required to screen under this Collaboration or to offer to the other party any informationregarding any compounds identified as having activity in pathways expressly excluded from theField, if so identified prior to being designated a “Collaboration Compound” hereunder.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

5     1.2 Personnel and Resources. Each party agrees to commit the personnel, facilities,expertise and other resources to perform this Agreement in accordance with its terms; provided,however, that neither party warrants that the Collaboration shall achieve any of the researchobjectives contemplated by them. During the Term of the Research Collaboration, Warner and Onyxwill each maintain at its cost an average of 15 full-time equivalents (“FTEs”) devoted tocooperative work under the Research Plan. During the first-year of the Term of the ResearchCollaboration Warner need maintain only 10 such FTEs; provided however, that Warner will staff athigher levels in later periods to achieve an average of 15 FTEs during the Term of the ResearchCollaboration, unless such term is terminated early as permitted hereunder. The scientificpriorities and direction of such staff of both parties will be determined by the ResearchManagement Committee. Such staff will include, as appropriate, scientists in the areas of massscreening, molecular biology, biochemistry, biochemical pharmacology, cancer and cardiovascularpharmacology, synthetic chemistry (including peptide synthesis), computer-assisted drug design, andanalytical chemistry (e.g., NMR spectroscopy).     1.3 Term of the Research Collaboration. Work under the Research Plan will commence asof the date of this Agreement and, unless terminated earlier by either party pursuant to the termsof this Agreement or extended by mutual agreement of the parties, will terminate on the thirdanniversary hereafter (as terminated, expired or extended, the “Term of the ResearchCollaboration”).     1.4 Rights to Know-How and Patents for Research. Each party hereby grants and agreesto grant to the other a non-exclusive, royalty-free license to use such party’s Know-How andPatents that are conceived or reduced to practice prior to the **[ * ]**anniversary of the end of theTerm of the Research Collaboration for (a) research and development purposes in the Field and (b),beginning **[ * ]**after termination of the Term of the Research Collaboration, research anddevelopment outside of the Field; provided, however, that the granting party may terminate suchlicenses granted by it immediately upon its termination of this Agreement for cause.Notwithstanding the foregoing, neither party is granted any interest in the other’s compounds (oranalogs or derivatives thereof) except as specifically set forth in this Agreement. In the eventthat one party does nonetheless conceive or reduce to practice any invention that is comprised ofthe other party’s compound (or analog or derivative thereof) and if such invention is not in theField, such party will promptly assign its entire interest therein exclusively to the other partywithout charge and will not be entitled to any milestones, royalties or other consideration inconnection therewith.     1.5 Collaboration Expenses.**[ * ]**the costs and expenses of work done pursuant to theCollaboration at **[ * ]**.ARTICLE IICOMMITTEES     2.1 Research Management Committee. Warner and Onyx will each appoint up to 4representatives to a research management committee (the “Research Management Committee”), whichwill oversee the operational aspects of performing the Research Plan. The Research**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

6Management Committee will assure that agendas and minutes are prepared for each of its meetings. Thepersonnel, facilities, expertise and other resources of each party to be used in performance of theResearch Plan shall be established by the Research Management Committee. The Research ManagementCommittee will meet quarterly, or more frequently if mutually agreed. Warner’s and Onyx’s initialrepresentatives to the Research Management Committee will be appointed by each of them promptlyafter the date of this Agreement. All actions taken and decisions made by the Research ManagementCommittee shall be by unanimous agreement. A party may change any of its appointments to theResearch Management Committee at any time upon giving written notice to the other party.     2.2 Marketing Committee. At the time that Warner appoints a committee to plan themarketing of a Collaboration Product (the “Marketing Committee”), it shall promptly inform Onyx andfor so long as Onyx has the right to co-promote such Collaboration Product, Onyx shall have theauthority to appoint one of its employees as a non-voting member of such committee. Onyx’snon-voting member of the Marketing Committee will have the right to attend all meetings of theMarketing Committee and will be kept current on the plans and proceedings of the MarketingCommittee. All actions taken and decisions made by the Marketing Committee shall be under thedirection and control of Warner. A party may change any of its appointments to the MarketingCommittee at any time upon giving written notice to the other party.     2.3 Meetings. The Research Management Committee and the Marketing Committee may meetby telephone or in person at such times as are agreeable to the members of each such committee.Attendance at meetings shall be at the respective expense of the participating parties. Warner andOnyx shall alternate the right to determine the location of each meeting of the Research ManagementCommittee, with Onyx determining the location of the first meeting of such committee. Warner shalldetermine the location of all meetings of the Marketing Committee.     2.4 SAB Attendance. During the Term of this Agreement, Warner will be entitled tohave up to three of its representatives attend all meetings of Onyx’s Scientific Advisory Boardthat relate to the Field and such other general symposia that do not contain confidentialinformation outside the Field of Onyx or of any third party to which Onyx owes a duty ofconfidentiality that would be breached by Warner’s attendance. Onyx will provide Warner reasonableadvance notice of all such meetings and will provide Warner copies of all written material given tothe members of the Scientific Advisory Board in connection with such meetings. Attendance at suchmeetings by Warner’s representatives will be at Warner’s expense. As a condition of suchattendance and access to such written material, Warner will executeappropriate Confidentiality Agreements with respect to information disclosed at such meetingsand in such written material.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

7ARTICLE IIIPATENTS, KNOW-HOW, RIGHTS AND INVENTIONS     3.1 Rights to Inventions. (a) Ownership of technology, inventions, information, data,know-how, compounds and material shall be determined in accordance with United States laws ofinventorship. The owner (the “Inventor”) of any invention that is discovered or reduced topractice during the Term of this Agreement or **[ * ]**thereafter and that relates to the discovery,design, synthesis, delivery, development, testing, use, manufacture or sale of agents acting in theField (an “Invention”) shall have the right, at its option and expense, to prepare, file andprosecute in its own name any patent applications with respect to any Invention owned by it and tomaintain any patents issued. In connection therewith, the non-Inventor party agrees to cooperatewith the Inventor at the Inventor’s expense in the preparation and prosecution of all such patentapplications and in the maintenance of any patents issued. This obligation shall survive theexpiration or termination of this Agreement.     (b) The parties will co-own technology, inventions, information, data, know-how, compounds andmaterials (whether or not patentable) that relate to **[ * ]**and that are developed in connectionwith performance of the Research Plan (“**[ * ]**Inventions”). The parties will cooperate in thejoint filing of patent applications claiming **[ * ]**Inventions. The parties will negotiate in goodfaith regarding the collaborative commercial exploitation of the **[ * ]**Inventions; provided,however, that each party will retain an undivided ownership interest in the **[ * ]**Inventions andwill be free to exploit the same without obligation to the other party.     3.2 Joint Inventions. Inventions that are jointly invented by Onyx and Warner will bejointly owned by them; however, **[ * ]**will have the rights and responsibilities of the “Inventor”as described in this Article III in respect of any such patentable, jointly owned Inventions and **[* ]**shall have the rights and responsibilities of a non-Inventor therein. **[ * ]**shall pay allexpenses in connection with its preparation, filing and prosecution of patent applications thatclaim patentable, jointly owned Inventions. **[ * ]**shall from time to time notify **[ * ]**of theamount of such expenses and **[ * ]**shall promptly thereafter pay **[ * ]**of its out-of-pocketexpenses. As used in the preceding sentence “out-of-pocket expenses” shall mean direct costs,excluding internal labor costs. Onyx may elect in writing to disclaim all interest in any jointlyinvented Invention, in which case (i) such Invention will be solely owned by Warner and Onyx willco-operate to assure Warner’s sole ownership, (ii) Onyx will have no further interest in suchInvention, by ownership, license or otherwise and (iii) **[ * ]**the date that Warner receives Onyx’swritten disclaimer. Warner may elect in writing to disclaim all interest in any jointly inventedInventions, in which case (i) such Invention will be solely owned by Onyx and Warner willco-operate to assure Onyx’s sole ownership, (ii) Warner will have no further interest in suchInvention, by ownership, license or otherwise and (iii) **[ * ]**.     3.3 Protection of Patent Rights. (a) The Inventor shall keep the other partycurrently informed of all steps to be taken in the preparation, prosecution and maintenance of allof its patents and patent applications which claim an Invention and shall furnish the otherparty with copies of patents and application, amendments thereto and other related correspondencerelating to such Invention to and from patent offices and permit the other party to offer itscomments thereon before the Inventor makes a submission to a patent office which could materiallyaffect**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

8the scope or validity of the patent coverage that may result. The non-Inventor party shalloffer its comments promptly. Onyx and Warner shall each promptly notify the other of anyinfringement and/or unauthorized use of an Invention which comes to its attention.     (b) The non-Inventor party may request in writing that the Inventor take specific, reasonableactions to (i) prepare, file or prosecute a patent application with respect to an Invention, (ii)maintain any patents issued with respect to an Invention, (iii) protect against abandonment of apatent or application which claims an Invention or (iv) obtain a discontinuance of an infringementor unauthorized use of such patent or application. If such actions are not undertaken withinthirty days of the Inventor’s receipt of such written request and timely pursued thereafter, theInventor shall permit, and the non-Inventor party at its option and expense may undertake, suchactions. The party not undertaking such actions shall fully cooperate with the other party andshall provide to the other party whatever assignments and other documents that may be needed inconnection therewith. The party not undertaking such actions may require a suitable indemnityagainst all damages, costs and expenses and impose such other reasonable conditions as such party’sadvisors may require.     (c) If either party commences any actions or proceedings (legal or otherwise) pursuant to thisSection, it shall prosecute the same vigorously at its expense and shall not abandon or compromisethem or fail to exercise any rights of appeal without giving the other party the right to take overtheir conduct at its own expense. The party finally conducting legal actions or proceedingsagainst an alleged infringer or other party shall be entitled to any damages or costs awardedagainst such infringer or other party.     3.4 Allegations of Infringement by Third Parties. In the event that Warner or Onyxreceives notice that any action by either of them under this Agreement is alleged to be a violationof the patent or other intellectual property rights of a third party, it shall notify the otherparty to this Agreement, and they shall jointly determine an appropriate response and course ofaction. The costs of such defense, and any damages, costs or expenses resulting from such action,shall be paid (i) 100% by Warner in the case of a Collaboration Product, (ii) 100% by Onyx in thecase of an Onyx Product and (iii) 50% by Warner and 50% by Onyx if such violation does not relateto the manufacture, use or sale of a Collaboration Product or an Onyx Product; provided, however,that each party will pay 100% of all such costs relating to allegations that it was aware of priorto the Effective Date. The Research Management Committee will decide whether or not to continueany activity following notice that such activity may be a violation of the patent or otherintellectual property rights of a third party.ARTICLE IVDESIGNATION OF LEAD COMPOUNDS AND MARKETING RIGHTS     4.1 Designation of Lead Compound. From time to time, Warner may formally designateone or more Collaboration Compounds for further development as a result of work performed under theResearch Plan (each, a “Collaboration Lead Compound”). Such designation shall be made underWarner’s then current standards for declaring one of its own compounds a “lead compound.” Suchdesignation generally indicates that Warner has identified such**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

9compound as a candidate forcGLP/cGMP studies. Warner will pursue the research and development of each Collaboration LeadCompound at its own expense and under its sole direction. Warner will provide Onyx quarterly,written updates regarding the status of each Collaboration Lead Compound.     4.2 Collaboration Product. Each Collaboration Lead Compound is referred to herein asa “Collaboration Product” from and after filing of an IND in respect of such compound with the FDAor the filing of its equivalent in any foreign country other than Japan. The preparation, filingand prosecution of IND’s, NDA’s and other regulatory filings required to be filed with the FDA andits foreign equivalents (other than in Japan) in regard to any Collaboration Product will be at thesole expense of, in the name of and under the direction of Warner. Warner does not warrant thatany regulatory filings will actually be filed or, if filed, will be approved.     4.3 Independent Development. From time to time, Onyx may request Warner in writing toundertake specific research and development regarding a Collaboration Compound or to declare aCollaboration Compound to be a Collaboration Lead Compound. Warner will notify Onyx within **[ * ]**of receiving Onyx’s written request if it determines before such date that it will not undertakesuch specific research and development (or declare such Collaboration Compound to be aCollaboration Lead Compound) within **[ * ]**of such request (“Warner’s Notice to Decline”). IfWarner does not so notify Onyx within such **[ * ]**period, it will periodically review Onyx’s requestand if it determines not to undertake such specific research and development (or declare suchCollaboration Compound to be a Collaboration Lead Compound) then it shall promptly so notify Onyx(also, “Warner’s Notice to Decline”). Onyx shall undertake the continued research and development(including the specific research and development requested by it) of such Collaboration Compoundindependently (an “Onyx Lead Compound”), at its sole cost and under its sole direction, promptlyupon (i) receipt of Warner’s Notice to Decline or (ii), if Warner does not so notify Onyx and ifWarner does not itself undertake the requested action within **[ * ]**of Onyx’s written request, then**[ * ]**after Warner’s receipt of Onyx’s written request. Onyx may not utilize the services of thepersonnel committed to the Collaboration pursuant to Section 1.2 in performance of research ordevelopment of an Onyx Lead Compound. Onyx may declare no more than **[ * ]**Onyx Lead Compoundsduring the Term of this Agreement. Onyx will keep Warner currently informed of all materialinformation in its research and development of each Onyx Lead compound and will allow Warner tocomment on the direction of such research and development. Each Onyx Lead Compound is referred toherein as an “Onyx Product” from and after filing of an IND in respect of such compound with theFDA or the filing of its equivalent in any foreign country other than Japan. Onyx will provideWarner a complete and accurate copy of the proposed filing, together withany additional information that Warner may request regarding the relevant Onyx Lead Compound,at least **[ * ]**prior to submitting such filing to the FDA or its foreign equivalent. Onyx will beentitled to commercialize any Onyx Product at its sole direction, alone or with another partner,subject to the terms of this Agreement.     4.4 Warner’s Re-engagement Option. Warner may elect to resume the research anddevelopment of an Onyx Lead Compound at its own cost and under its sole direction at any time priorto **[ * ]**in respect of such compound. In such event, such Onyx Lead Compound shall immediatelybecome a Collaboration Lead Compound for all purposes under this Agreement. Promptly after Warnermakes such election, Warner will pay Onyx **[ * ]**Onyx’s costs incurred**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

10for research and developmentof such Onyx Lead Compound. For purposes of this Section, Onyx’s cost for research and developmentwill mean (i) Onyx’s “Burdened Cost” (as defined below) for each professional research anddevelopment FTE (not including the personnel committed to the Collaboration pursuant to Section1.2) dedicated to the research and development of such Onyx Lead Compounds (with appropriateadjustment for staff members not fully dedicated to such work or not working a full year) and (ii)payments made to unaffiliated third parties, each to the extent incurred in connection with therelevant compound on or after its declaration as an Onyx Lead Compound and to the extent reasonablysupported by invoices, time sheets or other appropriate records. The “Burdened Cost” for each OnyxFTE shall mean **[ * ]**for work performed during 1995, and will be revised for work performed duringeach succeeding calendar year by the change in the Consumer Price Index (as determined by theUnited States of America Department of Labor) during the preceding calendar year (except that theBurdened Cost for work performed during 1996 will be revised only by the change in the ConsumerPrice Index from the Effective date to December 31, 1995).ARTICLE VLICENSES AND ROYALTIES     5.1 Grant by Onyx. Onyx hereby grants and agrees to grant to Warner exclusive,worldwide (except for Japan) licenses under the Onyx Patents to the extent necessary to make, havemade, use and sell (with the right to sublicense) each compound designated as a Collaboration LeadCompound or as a Collaboration Product. Such licenses with respect to a Collaboration LeadCompound are co-exclusive between Onyx and Warner. Such licenses with respect to a CollaborationProduct are exclusive even as to Onyx.     5.2 Grant by Warner. Warner hereby grants and agrees to grant to Onyx exclusive,worldwide (except for Japan) licenses under the Warner Patents to the extent necessary to make,have made, use and sell (with the right to sublicense) each compound designated as an Onyx LeadCompound or as an Onyx Product. Such licenses with respect to an Onyx Lead Compound areco-exclusive between Onyx and Warner. Such licenses with respect to an Onyx Product are exclusiveeven as to Warner.     5.3 Royalties Payable by Warner. Warner will pay Onyx **[ * ]**of Net Sales as a royaltyon worldwide sales (except for Japan) of Collaboration Products. If at the time of the firstcommercial sale of such Product in such country a Patent exists that is necessary to sell suchProduct in such country, or if at any time after such sale a composition of matter Patentnecessary to sell such Collaboration Product issues in such country, such **[ * ]**royalty shall bepayable in respect of sales in such country until the later of (a) the expiration of the last suchPatent to expire and (b) the date such **[ * ]**royalty would expire under the provisions of thefollowing sentence assuming that such Patent did not exist. Subject to the terms of the precedingsentence, if at the time of the first commercial sale of such Product in such country no Patentexists that is necessary to sell such Product in such country, such **[ * ]**royalty will be payableuntil the earliest of (x) the later to occur of (i) the **[ * ]**anniversary of such first sale and(ii) expiration of the last Patent necessary to make or use such Product in such country, whichPatent was in existence on the date of such first commercial sale, (y) the first calendar quarterin which**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

11the sale by any one entity (together with its Affiliates), other than Warner or itsAffiliates or licensees, of one or more products containing the same active ingredient as theProduct, constitutes **[ * ]**or more of all units sold in such country containing such activeingredient and (z) the first calendar quarter in which the sale by any entities (taken in theaggregate), other than Warner or its Affiliates or licensees, of one or more products containingthe same active ingredient as the Product, constitutes **[ * ]**or more of all units sold in suchcountry containing such active ingredient (the period from first commercial sale in each countryuntil the earlier of (x), (y) and (z) above is referred to herein as the “Collaboration ProductExclusive Period”). In the case of (y) and (z) above, the **[ * ]**royalty will terminate as to NetSales of Product sold on or after the day following the end of the triggering calendar quarter.Warner will pay Onyx **[ * ]**and **[ * ]**of Net Sales as a royalty on sales of Collaboration Productsin each country (except for Japan) for the **[ * ]**, respectively, following (a) such final Patentexpiration (in the event that the required Patent necessary to sell such Product in such countryexisted on the date of first commercial sale or issued thereafter) or (b) the end of theCollaboration Product Exclusive Period (if no such Patent existed or issued thereafter, andprovided that the Collaboration Product Exclusive Period lasted at least **[ * ]**years); provided,however, that no such royalty will be payable in respect of Collaboration Products sold without theuse of one or more trademarks developed by Warner for such Product during the time that the **[ * ]**royalty was applicable.     5.4 Royalties Payable by Onyx. Onyx will pay Warner **[ * ]**of Net Sales as a royaltyon worldwide sales (except for Japan) of Onyx Products. If at the time of the first commercialsale of such Product in such country a Patent exists that is necessary to sell such Product in suchcountry, or if at any time after such sale a composition of matter Patent necessary to sell suchCollaboration Product issues in such country, such **[ * ]**royalty shall be payable in respect ofsales in such country until the later of (a) the expiration of the last such Patent to expire and(b) the date such **[ * ]**royalty would expire under the provisions of the following sentenceassuming that such Patent did not exist. Subject to the terms of the preceding sentence, if at thetime of the first commercial sale of such Product in such country no Patent exists that isnecessary to sell such Product in such country, such **[ * ]**royalty will be payable until theearliest of (x) the later to occur of (i) the **[ * ]**anniversary of such first sale and (ii)expiration of the last Patent necessary to make or use such Product in such country, which Patentwas in existence on the date of such first commercial sale, (y) the first calendar quarter in whichthe sale by any one entity (together with its Affiliates), other than Warner or its Affiliates orlicensees, of one or more products containing the same active ingredient as the Product,constitutes **[ * ]**or more of all units sold in such country containing such active ingredient and(z) the first calendar quarter in which the sale by any entities (taken in the aggregate), otherthan Warner or its Affiliates or licensees, of one or more products containing the same activeingredient as the Product, constitutes **[ * ]**or more of all units sold in such countrycontaining such active ingredient (the period from first commercial sale in each country until theearliest of (x), (y) and (z) above is referred to herein as the “Onyx Product Exclusive Period”).In the case of (y) and (z) above, the **[ * ]**royalty will terminate as to Net Sales of Product soldon or after the day following the end of the triggering calendar quarter. Onyx will pay Warner **[ *]**of Net Sales as a royalty on sales of Onyx Products in each country (except for Japan) for the **[* ]**, respectively, following (a) such final Patent expiration (in the event that the requiredPatent necessary to sell such Product in such country existed on the date of first commercial saleor issued thereafter) or (b) the end of the Onyx Product Exclusive Period (if no such Patentexisted or issued thereafter, and provided that the Onyx Product Exclusive Period lasted at least **[* ]**years); provided, however, that no**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

12such royalty will be payable in respect of an Onyx productsold without the use of one or more trademarks developed by Onyx for such Product during the timethat the **[ * ]**royalty was applicable.     5.5 Currency of Payment. All payments to be made under this Agreement shall be madein United States dollars in the United States to a bank account designated by the party to be paid.Royalties earned shall first be determined in the currency of the country in which they are earnedand then converted to its equivalent in United States currency. Such conversion shall be based onthe average buying rates of exchange for the currencies involved into the currency of the UnitedStates quoted by Citibank (or its successor in interest) in New York, New York at the close ofbusiness on each business day of the quarterly period in which the royalties were earned.     5.6 Payment and Reporting. The royalties due under Section 5.3 or Section 5.4 shallbe paid quarterly, within 45 days after the close of each calendar quarter immediately followingeach quarterly period in which such royalties are earned, or earlier if practical. With each suchquarterly payment, the payor shall furnish the payee a royalty statement, setting forth on acountry-by-country basis the total number of units and Net Sales of each royalty-bearing Productmade, used and/or sold hereunder for the quarterly period for which the royalties are due. Inaddition, the payor shall furnish such a royalty statement on a country-by-country basis for thefirst quarter during which payor makes sales of Product for which no royalty payment in respect ofsuch country is due hereunder, and shall state the basis for such sales then being free of royaltyobligations hereunder. The payor shall thereafter have no further obligation to report the numberof units or Net Sales of such Product made, used and/or sold in such country.     5.7 Records. The royalty paying party shall keep accurate books and accounts ofrecord in connection with the manufacture, use and/or sale by or for it of the Products hereunderin sufficient detail to permit accurate determination of all figures necessary for verification ofroyalty obligations set forth in this Article V. Such records shall be maintained for a period of3 years from the end of each year in which sales occurred. The payee, at its expense, through acertified public accountant, shall have the right to access such books and records for the solepurpose of verifying the royalty statements; such access shall be conducted after reasonable priornotice by the payee to the payor during the payor’s ordinary business hours and shall not be morefrequent than once during each calendar year. Said accountant shall not disclose to the payee orany other party any information except that which should properly be contained in a royalty reportrequired under this Agreement. If such accounting determines that a party’s error resulted in theother party receiving at least 5% less than properly due in respect of any quarter, then the partyin error will reimburse such amount and reimburse the other partyfor the costs of such accounting (including the fees and expenses of the certified publicaccountant).     5.8 Taxes Withheld. Any income or other tax that one party hereunder, its Affiliatesor sublicensees is required to withhold (the “withholding Party”) and pay on behalf of the otherparty hereunder (the “Withheld Party”) with respect to the royalties payable under this Agreementshall be deducted from and offset against said royalties prior to remittance to the Withheld Party;provided, however, that in regard to any tax so deducted, the Withholding Party shall give or causeto be given to the Withheld Party such assistance as may reasonably be necessary to enable theWithheld Party to claim exemption therefrom or credit therefor, and in each case shall furnish theWithheld Party proper evidence of the taxes paid on its behalf.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

13     5.9 Computation of Royalties. All sales of Onyx Products between Onyx and any of itsAffiliates and sublicensees shall be disregarded for purposes of computing royalties under thisArticle V, but in such instances royalties shall be payable only upon sales to unlicensed thirdparties. Nothing herein contained shall obligate Onyx to pay Warner more than one royalty on anyunit of an Onyx Product. All sales of Collaboration Products between Warner and any of itsAffiliates and sublicensees shall be disregarded for purposes of computing royalties under thisArticle V, but in such instances royalties shall be payable only upon sales to unlicensed thirdparties. Nothing herein contained shall obligate Warner to pay Onyx more than one royalty on anyunit of a Collaboration Product or a Warner Product.     5.10 Licenses to Affiliates. Each party shall, at the other party’s request, signlicense and/or royalty agreements directly with the other party’s Affiliates and sublicensees inthose situations where such agreements would not decrease the amount of royalties which would beowed hereunder. Such agreements shall contain the same language as contained herein withappropriate changes in parties and territory. No such license and/or royalty agreement willrelieve Warner or Onyx, as the case may be, of its obligations hereunder, and such party willguarantee the obligations of its Affiliate or sublicensee in any such agreement. Royaltiesreceived directly from one party’s Affiliates and sublicensees shall be credited towards suchparty’s royalty obligations under Section 5.3 or 5.4 hereof, as applicable.     5.11 Restrictions on Payment. The obligation to pay royalties under this Agreementshall be waived and excused to the extent that statutes, laws, codes or government regulations in aparticular country prevent such royalty payments by the seller of Products; provided, however, thatif legally permissible, the seller of Products shall pay the royalties owed to the other partyhereto by depositing such amounts in a bank account in such country that has been designated by theparty owed such royalties.ARTICLE VICO-PROMOTION OF COLLABORATION PRODUCTS     6.1 Co-Promotion Rights. Onyx will have the right to co-promote each CollaborationProduct in the Co-Promotion Country during the Term of Co-Promotion pursuant to the terms andconditions hereof.     6.2 Election or Revocation of Co-Promotion Right. Warner will give Onyx at least **[ *]**prior written notice of the anticipated first commercial sale of a Collaboration Product in theCo-Promotion Country. Onyx will notify Warner in writing at least **[ * ]**prior to such anticipatedfirst commercial sale whether it elects to exercise its right to co-promote such CollaborationProduct in such Co-Promotion Country beginning with the date of first commercial sale. If Onyxfails timely to give such notice to Warner, it shall be deemed to have waived its rights toco-promote. Onyx may terminate the Term of Co-Promotion at any time following **[ * ]**month’swritten notice to Warner. The Term of Co-Promotion can not be reinstated after delivery of suchnotice.     6.3 Onyx’s Promotional Percentage. If Onyx elects to exercise its co-promotion rightspursuant to Section 6.2, the Marketing Committee will meet and determine procedures**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

14whereby Onyx will supply up to **[ * ]**, but not less than **[ * ]**, of the sales efforts (including details, ifdetermined to be an appropriate sales activity) for the relevant Collaboration Product in theCo-Promotion Country. Warner will compensate Onyx for such effort at the lesser of (i) **[ * ]**and(ii) **[ * ]**. Prior to initiation of the Term of Co-Promotion in the Co-Promotion Country, theparties will negotiate in good faith and agree on appropriate accounting procedures and paymentterms to (i) confirm each party’s performance of its required sales effort, (ii) calculate thecosts for each party to provide its sales effort and (iii) compensate Onyx as required by thisSection.     6.4 Marketing and Marketing Plans. Each Collaboration Product will be marketed withone label and will bear one or more trademarks owned by Warner. The Marketing Committee will beresponsible for developing and approving marketing plans and the advertising and other promotionalmaterials to be used in co-promoting each Collaboration Product. Warner will be responsible forobtaining acceptance of each Collaboration Product on formularies, if applicable. Warner will keepOnyx informed of and will solicit and consider in good faith Onyx’s opinions regarding strategiesfor obtaining formulary acceptance.     6.5 Promotional Materials. Onyx shall not create any promotional or advertisingmaterials for Collaboration Products. Onyx shall disseminate only those promotional andadvertising materials which have been provided or approved for Onyx’s use by Warner. Warner shallsupply timely to Onyx, at Warner’s cost, quantities of promotional materials needed by Onyx toexercise its rights under this Agreement. Onyx shall not, and shall cause its employees,representatives and agents not, to make any claims or representations in respect of theCollaboration Products that have not been approved by Warner.     6.6 No Delegation. Onyx may use only its own employees or the employees of one ormore of its subsidiaries in the course of exercising its co-promotion rights under this Agreement.     6.7 Returns. Warner shall be responsible for handling all returns relating toCollaboration Products. Any Collaboration Product returned to Onyx shall be shipped by Onyx to theaddress designated by Warner with shipping costs authorized by Warner to be paid by Warner.     6.8 Orders. All customer orders for Collaboration Products shall be received andexecuted by Warner. Onyx shall transmit any such orders that it receives to Warner no later thanthe following business day.     6.9 Samples. Each of the parties will keep accurate records as to the distribution ofsamples of Collaboration Products and comply with all applicable laws, rules and regulationsdealing with the distribution of samples.     6.10 Completion of Sales. All sales of Collaboration Products will be completed,distributed, accounted for, billed and booked by Warner at prices established by Warner.     6.11 Training. Consistent with the marketing plans established by the MarketingCommittee, but not less than **[ * ]**prior to the commencement of the Term of Co-Promotion for eachCollaboration Product, Warner shall provide, at Onyx’s expense, reasonable access to its salestraining staff and facilities for appropriate, initial training of the Onyx sales force.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

15     6.12 Exchange of Marketing Information. From time-to-time the Marketing Committeewill develop call lists, schedules, and other appropriate information for the purpose ofdetermining the physicians and other persons involved in the drug purchase decision-making processto whom Onyx and Warner, respectively, may detail each Collaboration Product. The parties agree tocooperate in finding an inexpensive and expeditious way to provide a call list and otherinformation indicating the identity of those physicians and other persons involved in thedecision-making process regarding the purchase of pharmaceuticals.ARTICLE VIIFDA     7.1 Side Effects. Each party shall promptly advise the other by telefax or overnightdelivery service addressed to the attention of its Vice President, Medical Affairs (or, in Onyx’scase, the party with similar responsibilities), of any unexpected side effect, adverse reaction orinjury which has been brought to that party’s attention at any place and which is alleged to havebeen caused by a Collaboration Product. Warner shall have all rights and responsibility to reportsuch side effect, adverse reaction or injury to regulatory authorities and others as appropriate.     7.2 Regulatory and other Inquiries. Upon being contacted by the FDA or any drugregulatory agency for any regulatory purpose pertaining to this Agreement or to a CollaborationProduct, Onyx and Warner shall immediately notify and consult with one another and Warner shallprovide a response as it deems appropriate. Warner shall have sole responsibility for respondingto all inquiries to Warner or Onyx regarding the benefits, side effects and other characteristicsof Collaboration Products.     7.3 Product Recall. In the event that Warner or Onyx determines that an event,incident or circumstance has occurred which may result in the need for a recall or other removal ofany Collaboration Product or any lot or lots thereof from the market, it shall advise andconsult with the other party with respect thereto. Warner shall make the final determinationto recall or otherwise remove the Collaboration Product or any lot or lots thereof from the marketand shall be responsible for the cost and expense of notifying customers and the cost and expenseassociated with return of the recalled Collaboration Product from a customer. Onyx shall have nosuch rights or responsibilities in respect of territories outside of the Co-Promotion Country.     7.4 Responsibility if not Co-Promoting. Onyx will have the rights andresponsibilities referred to in this Article 7 only during the Term of Co-Promotion and for **[ * ]**thereafter.ARTICLE VIIIResearch Funding and Milestones     8.1 Research Funding. Warner will pay Onyx the following amounts on the followingdates during the Term of the Research Collaboration in consideration for work**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

16performed by Onyxprior to the Effective Date and to provide support for Onyx’s work under the Research Plan:     The Effective Date  **[ * ]** Three month anniversary of the Effective Date  **[ * ]** Six month anniversary of the Effective Date  **[ * ]** Nine month anniversary of the Effective Date  **[ * ]** Twelve month anniversary of the Effective Date  **[ * ]** Fifteen month anniversary of the Effective Date  **[ * ]** Eighteen month anniversary of the Effective Date  **[ * ]** Twenty-one month anniversary of the Effective Date  **[ * ]** Twenty-four month anniversary of the Effective Date  **[ * ]** Twenty-seven month anniversary of the Effective Date  **[ * ]** Thirty month anniversary of the Effective Date  **[ * ]** Thirty-three month anniversary of the Effective Date  **[ * ]**                  **[ * ]**      8.2 Milestones. (a) Warner will pay Onyx the following amounts with respect to thefirst Collaboration Product to achieve each stated milestone:   Commencement of Phase I clinical trials by or onbehalf of Warner anywhere in the world $500,000   Commencement of Phase II clinical trials by or onbehalf of Warner anywhere in the world **[ * ]**   Commencement of Phase III clinical trials by or onbehalf of Warner anywhere in the world **[ * ]**   The FDA’s acceptance for filing of an NDA **[ * ]**   Acceptance for filing of an MAA applicable to any ofthe following countries: (i) United Kingdom, (ii) Spain, (iii) Italy, (iv) France and (v) Germany (eacha “Major European Country”) **[ * ]**/country, up to **[ * ]**total   Approval by the FDA of an NDA **[ * ]**   Approval of an MAA applicable to a Major EuropeanCountry **[ * ]**/country, up to **[ * ]**total**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

17     (b) Warner will pay Onyx **[ * ]**upon the approval by the FDA of an NDA for the second and eachsubsequent Collaboration Product so approved and **[ * ]**upon the approval of an MAA applicable toeach Major European Country, up to **[ * ]**, for the second and each subsequent Collaboration Productso approved.     (c) Onyx will pay Warner **[ * ]**upon the approval by the FDA of an NDA for each Onyx Productand **[ * ]**upon the approval of an MAA applicable to each Major European Country, up to **[ * ]**, foreach Onyx Product.ARTICLE IXCONFIDENTIALITY     9.1 Confidentiality. (a) Except as specifically permitted hereunder, each partyhereby agrees to hold in confidence and not use on behalf of itself or others all data, samples,technical and economic information (including the economic terms hereof), commercialization,clinical and research strategies and know-how provided by the other party (the “Disclosing Party”)during the Term of this Agreement and all data, results and information developed pursuant to theCollaboration and solely owned by the other party (collectively the “Confidential Information”),except that the term “Confidential Information” shall not include:          (i) information that is or becomes part of the public domain through no fault of thenon-Disclosing Party or its Affiliates;          (ii) information that is obtained after the date hereof by the non-Disclosing Party or one ofits Affiliates from any third party which is lawfully in possession of such ConfidentialInformation and not in violation of any contractual or legal obligation to the Disclosing Partywith respect to such Confidential Information;          (iii) Information that is known to the non-Disclosing Party or one or more of its Affiliatesprior to disclosure by the Disclosing Party, as evidenced by the non-Disclosing Party’s writtenrecords; and          (iv) information that is necessary to be disclosed to any governmental authorities or pursuantto any regulatory filings, provided that in such case the non-Disclosing Party notifies theDisclosing Party reasonably in advance of such disclosure and cooperates with the Disclosing Partyto minimize the scope or content of such disclosure.     (b) The obligations of this Section 9.1 shall survive the expiration or termination of thisAgreement.     9.2 Publicity. All publicity, press releases and other announcements relating to thisAgreement or the transactions contemplated hereby shall be reviewed in advance by, and subject tothe approval of, both parties; provided, however, that either party may (i) publicize the existenceand general subject matter of this Agreement without the other party’s approval and (ii) disclosethe terms of this Agreement insofar as required to comply with applicable securities laws, providedthat in the case of such securities disclosures the disclosing party notifies the other party**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

18reasonably in advance of such disclosure and cooperates to minimize the scope and content of suchdisclosure.     9.3 Publication. The parties shall cooperate in appropriate publication of theresults of research and development work performed pursuant to this Agreement, but subject to thepredominating interest to obtain patent protection for any patentable subject matter. To this end,it is agreed that prior to any public disclosure, the party proposing disclosure shall send theother party a copy of the information to be disclosed, and shall allow the other party **[ * ]**fromthe date of receipt in which to determine whether the information to be disclosed contains subjectmatter for which patent protection should be sought prior to disclosure. If notification is notreceived during the **[ * ]**period, the party proposing disclosure shall be free to proceed with thedisclosure. If due to a valid business reason or a belief by the nondisclosing party that thedisclosure contains subject matter for which a patentable invention should be sought, then prior tothe expiration of the **[ * ]**period, the nondisclosing party shall so notify the disclosing party,who shall then delay public disclosure of the information for an additional period of up to **[ * ]**to permit the preparation and filing of a patent application on the subject matter to be disclosedor other action to be taken. The party proposing disclosure shall thereafter be free to publish ordisclose the information. The determination of authorship for any paper shall be in accordancewith accepted scientific practice. In no event may any publication or other disclosure contain aparty’s Confidential Information without such party’s prior written consent.ARTICLE XJAPAN     10.1 Japanese Company. Neither party may license any of its Patents or Know-How to,or otherwise collaborate in the Field with, any person or other entity for use in Japan, exceptpursuant to an agreement mutually acceptable to Onyx and Warner (the “JapaneseCompany Agreement”). Onyx and Warner will work together to select a Japanese company tocollaborate with (the “Japanese Company”) and to hold negotiations with the Japanese Companyregarding the terms of the Japanese Company Agreement.     10.2 Japanese Company Agreement. Warner agrees that it will accept any proposedJapanese Company Agreement that includes the following provisions: (i) **[ * ]**; provided, however,that **[ * ]**, (ii) **[ * ]**, (iii) **[ * ]**, (iv) **[ * ]**, (v) **[ * ]**, (vi) **[ * ]**; provided, however, thatthis provision shall not apply to (a) any compound identified by the Japanese Company as acandidate for cGLP/cGMP studies before the effective date of the Japanese Company Agreement, oranalogs or derivatives thereof not identified pursuant to any collaboration between Onyx and theJapanese Company or (b) any compound identified after the **[ * ]**anniversary of the term of theresearch collaboration under such agreement; and further provided that this provision will apply tocompounds identified during the term of the research collaboration under such agreement or **[ * ]**year thereafter, and any derivatives or analogs of such compounds whenever identified, and (vii) **[* ]**. For purposes of clause (i) of this section, any dispute about the **[ * ]**that cannot beresolved by good faith negotiations between senior executive officers of Onyx and Warner will beresolved by the decision of **[ * ]**selected by the parties in good faith agreement, with the cost of**[ * ]**borne **[ * ]**.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

19     10.3 Absence of Agreement. If Onyx does not execute an agreement in the Field with aJapanese company pursuant to Sections 10.1 or 10.2, then neither party shall market or licenseothers to market any Collaboration Compounds in the Field in Japan without the consent of the otherparty.ARTICLE XIREPRESENTATIONS AND WARRANTIES     11.1 Legal Authority. Each party represents and warrants to the other that it has thelegal power, authority and right to enter into this Agreement and to perform its respectiveobligations set forth herein.     11.2 No Conflicts. Each party represents and warrants that as of the date of thisAgreement it is not a party to any agreement or arrangement with any third party or under anyobligation or restriction, including pursuant to its Certificate of Incorporation or By-Laws, whichin any way limits or conflicts with its ability to fulfill any of its obligations under thisAgreement.     11.3 Others Bound. Each party represents and warrants that anyone performing servicesunder this Agreement on its behalf shall be bound by all of the conditions of this Agreement, tothe extent necessary to give full effect to this Agreement.     11.4 Third Party Rights. Each party represents and warrants that to the best of itsknowledge its performance of the work under the Collaboration as contemplated by this Agreementwill not infringe the patent, trade secret or other proprietary rights of any third partyexcept insofar as any infringement may relate to technology, data or information provided bythe other party hereunder.     11.5 Survival. The foregoing representations and warranties shall survive theexecution, delivery and performance of this Agreement, notwithstanding any investigation by or onbehalf of either party.     11.6 Disclaimer. Except as otherwise expressly stated herein, Warner hereby disclaimsany warranty expressed or implied as to any Onyx Product sold or placed in commerce by or on behalfof Onyx. Except as otherwise expressly stated herein, Onyx hereby disclaims any warranty expressedor implied as to any Collaboration Product sold or placed in commerce by or on behalf of Warner.     11.7 Exclusivity. Except pursuant to the Japanese Company Agreement, during the Termof the Research Collaboration and **[ * ]**thereafter (i) neither party will conduct any research ordevelopment in the Field except pursuant to this Agreement, (ii) neither party will license (orotherwise permit access to) any of its Patents or Know-How for research or development in the Fieldto (or otherwise collaborate on research or development in the Field with) any other person orentity and (iii) Onyx will not license (or otherwise permit access to) any assay developed by itpursuant to the Collaboration to any other person or entity. In respect of (i), above, each partyshall have the right to conduct its own research and development in the**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

20Field during **[ * ]**following the end of the Term of the Research Collaboration, provided that all results of such workdiscovered during such period (including without limitation compounds and assays), and analogs andderivatives of compounds identified during such period whenever identified, are promptly disclosedto the other party and are covered by the licenses granted under Sections 1.4, 5.1 and 5.2, asapplicable.ARTICLE XII     12.1 Termination for Breach. In the event of a material breach of the provisions ofthis Agreement described below, the breaching party shall have 30 days after receipt of writtennotice from the non-breaching party to cure such breach.     (a) In the event of an uncured material breach of Article I, the non-breaching party mayterminate the Term of the Research Collaboration.     (b) In the event of an uncured material breach of Section 5.3 by Warner in respect of aCollaboration Product, Onyx may (i) terminate the licenses granted by it pursuant to Section 5.1 inrespect of such Product and (ii) require Warner to grant it an exclusive (even as to Warner),worldwide license (with the right to sublicense) under the Patents relating to such Product andowned or controlled by Warner, to the extent necessary to make, use or sell such Product.     (c) In the event of an uncured material breach of Section 5.4 by Onyx in respect of an OnyxProduct, Warner may (i) terminate the licenses granted by it pursuant to Section 5.2 in respect ofsuch Product and (ii) require Onyx to grant it an exclusive (even as to Onyx),worldwide license (with the right to sublicense) under the Patents relating to such Productand owned or controlled by Onyx, to the extent necessary to make, use or sell such Product.     (d) In the event of an uncured material breach by Onyx of any provision of Article VI, Warnermay immediately terminate the Term of Co-Promotion.     12.2 Effect of Bankruptcy. If either party files a voluntary petition in bankruptcy,is adjudicated a bankrupt, makes a general assignment for the benefit of creditors, admits inwriting that it is insolvent or fails to discharge within 15 days an involuntary petition inbankruptcy filed against it, then the other party will have 60 days to determine whether or not (a)the Term of the Research Collaboration shall immediately terminate and/or (b) the Term ofCo-Promotion shall immediately terminate.     12.3 Key Personnel. In the event that on or before the second anniversary of theEffective Date Frank McCormick (i) is physically and mentally capable of overseeing Onyx’s workunder the Research Plan but (ii) for any reason fails to oversee such work, then Onyx shallimmediately notify Warner thereof and Onyx will have up to six months after such failure to hire areplacement for McCormick (the “Search Period”). By notice delivered to Onyx during the one weekperiod after the end of the Search Period, Warner may voluntarily terminate the Term of theResearch Collaboration, effective **[ * ]**after the end of the Search Period, if in its sole opinionit does not wish to continue the Research Plan with such replacement (or with McCormick if hebecomes available again). Any stock purchases that Warner may be required**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

21to make pursuant to the Preferred Stock Purchase Agreement dated the date hereof shall be delayed during the Search Periodand during the **[ * ]**thereafter. Warner’s obligation to purchase such stock and any other stockunder such Purchase Agreement will terminate if it elects to terminate the Term of the ResearchCollaboration pursuant to this Section. Warner will, however, be required to make any researchfunding payments under Section 8.1 that come due on or before the effective date of suchtermination, and Onyx will continue to be obligated under the terms of Section 1.2 during suchperiod. Onyx and Warner will be released from the provisions of Section 11.7 immediately upontermination of the Term of the Research Collaboration pursuant to this Section. Upon terminationof the Term of the Research Collaboration under this Section, Warner will promptly pay Onyx (i) **[ *]**multiplied by the number of full months from the Effective Date until such termination, plus (ii)**[ * ]**, minus (iii) **[ * ]**. Onyx will pay such amount to Warner in the event such amount isnegative.     12.4 Termination of Co-Promotion Rights. Warner may terminate Onyx’s right toco-promote Collaboration Products hereunder if (i) any entity or person in the pharmaceuticalindustry directly or indirectly acquires ownership or control of more than 50% of Onyx’s votingcapital stock or substantially all of its assets or (ii) Onyx develops or acquires a financialinterest in any product that could compete with any Collaboration Product as to which product anNDA has been filed with or approved by the FDA.     12.5 Remedies. In the event of any breach of any provision of this Agreement, inaddition to the termination rights set forth herein, each party shall have all other rights andremedies at law or equity to enforce this Agreement.     12.6 Voluntary Termination. Warner may terminate this Agreement by providing writtennotice thereof to Onyx on the eighteen month anniversary of the Effective Date. In such event, theTerm of this Agreement will automatically terminate, and Warner’s obligation to purchase stock onthe second anniversary of the Effective Date under the Preferred Stock Purchase Agreement dated thedate hereof will also terminate. Notwithstanding the termination of the Term of this Agreement,(i) Warner will make all research payments to Onyx that are due before the second anniversary ofthe Effective Date pursuant to Section 8.1 (payable on the dates that such payments are due) andshall make a termination payment of **[ * ]**on the second anniversary of the Effective Date, (ii)Warner will grant Onyx an exclusive (even as to Warner), world-wide, fully-paid, perpetual licenseunder Warner’s Patents and Warner’s Know-How discovered or reduced to practice prior to the **[ * ]**anniversary of the termination of the Term of this Agreement that are necessary to make, use andsell any Collaboration Compound for therapeutic or diagnostic use in the Field, (iii) the licensesgranted under Section 5.1 will terminate and (iv) the licenses granted to Warner under Section 1.4will terminate.ARTICLE XIIIGENERAL PROVISIONS     13.1 Indemnification. Each of Warner and Onyx agrees to indemnify and hold harmlessthe other party and its Affiliates and their respective employees, agents, officers, directors andpermitted assigns (such party’s “Indemnified Group”) from and against any claims,**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

22judgments, expenses (including reasonable attorney’s fees), damages and awards (collectively a “Claim”)arising out of or resulting from (i) its negligence or misconduct in regard to any Product, (ii) abreach of any of its representations or warranties hereunder or (iii) the manufacture, use or saleof a Collaboration Product (in the case of Warner) or an Onyx Product (in the case of Onyx), exceptto the extent that such Claim arises out of or results from the negligence or misconduct of a partyseeking to be indemnified and held harmless or the negligence or misconduct of a member of suchparty’s Indemnified Group. A condition of this obligation is that, whenever an indemnified partyhas information from which it may reasonably conclude an incident has occurred which could giverise to a Claim, such indemnified party shall immediately give notice to the indemnifying party ofall pertinent data surrounding such incident and, in the event claim is made or suit is brought,all indemnified parties shall assist the indemnifying party and cooperate in the gathering ofinformation with respect to the time, place and circumstances and in obtaining the names andaddresses of any injured parties and available witnesses. No indemnified party shall, except atits own cost, voluntarily make any payment or incur any expense in connection with any such Claimor suit without the prior written consent of the indemnifying party. The obligations set forth inthis Section shall survive the expiration or termination of this Agreement.     13.2 Assignment. This Agreement shall not be assignable by either party without theprior written consent of the other party, such consent not to be unreasonably withheld. In noevent will any assignment relieve the assigning party of its obligations hereunder. This Agreementshall be binding upon and, subject to the terms of the foregoing sentence, inure to the benefit ofthe parties’ successors, legal representatives and assigns. Notwithstanding the foregoing, Warnermay assign this Agreement to any of its wholly-owned subsidiaries or any entity succeeding to amajority of its Parke-Davis business, and either party may assign this Agreement to its successorin connection with any merger, consolidation or sale of all or substantially all of its assets.     13.3 Non-Waiver. The waiver by either of the parties of any breach of any provisionhereof by the other party shall not be construed to be a waiver of any succeeding breach of suchprovision or a waiver of the provision itself.     13.4 Research Dispute Resolution. The parties recognize that the collaborativeresearch program under the Research Plan may require the resolution of certain issues or thenegotiation of additional agreements in the future. In the event the Research Management Committeeis unable to resolve a dispute under the Research Plan, either party may have the dispute referredto the President of Onyx and the senior officer of Warner’s pharmaceutical business for good faithresolution.     13.5 Governing Law. This Agreement shall be construed and interpreted in accordancewith the laws of the State of New York, other than those provisions governing conflicts of law.     13.6 Partial Invalidity. If and to the extent that any court or tribunal of competentjurisdiction holds any of the terms or provisions of this Agreement, or the application thereof toany circumstances, to be invalid or unenforceable in a final nonappealable order, the parties shalluse their best efforts to reform the portions of this Agreement declared invalid to realize the**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

23intent of the parties as fully as practical, and the remainder of this Agreement and theapplication of such invalid term or provision to circumstances other than those as to which it isheld invalid or unenforceable shall not be affected thereby, and each of the remaining terms andprovisions of this Agreement shall remain valid and enforceable to the fullest extent of the law.     13.7 Notice. Any notice to be given to a party under or in connection with thisAgreement shall be in writing and shall be (i) personally delivered, (ii) delivered by a nationallyrecognized overnight courier or (iii) delivered by certified mail, postage prepaid, return receiptrequested to the party at the address set forth below for such party:       To Warner: To Onyx:       Senior Vice President, Research Hollings Renton  Parke-Davis Pharmaceutical Research President & CEO       Division, Onyx Corporation  Warner-Lambert Company 3031 Research Drive  2800 Plymouth Road Building A  Ann Arbor, MI 48105 Richmond, CA 94806       with a copy to: with a copy to:       President, Parke-Davis North America Robert L. Jones., Esq.  Warner-Lambert Company Cooley Godward Castro  201 Tabor Road Huddleson & Tatum  Morris Plains, NJ 07950 5 Palo Alto Square    Palo Alto, CA 94306    4th Floor       and a copy to:         Vice President and General Counsel    Warner-Lambert Company    201 Tabor Road    Morris Plains, NJ 07950  or to such other address as to which the party has given notice thereof. Such notices shall bedeemed given upon receipt.     13.8 Vaccines and Diagnostics. Pursuant to an Agreement, between Chiron Corporation(“Chiron”) and Onyx, dated April 24, 1992, Chiron has certain rights to Vaccines and Diagnosticsdeveloped by Onyx. Warner and Onyx agree that, notwithstanding any other term or provision of thisAgreement to the contrary, neither party shall license to the other any Patents or Know-How tomake, use or sell Vaccines or Diagnostics. Furthermore, each party hereto may make, use or sellVaccines and Diagnostics in the Field without obligation to the other party, including as relatesto payment of milestones and royalties. As used in this Section, (i) “Vaccines” shall mean **[ * ]**and (ii) “Diagnostics” shall mean **[ * ]**.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

24     13.9 Headings. The headings appearing herein have been inserted solely for theconvenience of the parties hereto and shall not affect the construction, meaning or interpretationof this Agreement or any of its terms and conditions.     13.10 No Implied Licenses or Warranties. No right or license under any patentapplication, issued patent, know-how or other proprietary information is granted or shall begranted by implication. All such rights or licenses are or shall be granted only as expresslyprovided in the terms of this Agreement. Neither party warrants the success of any clinical orother studies undertaken by it.     13.11 Force Majeure. No failure or omission by the parties hereto in the performanceof any obligation of this Agreement shall be deemed a breach of this Agreement nor shall it createany liability if the same shall arise from any cause or causes beyond the reasonable control of theaffected party, including, but not limited to, the following, which for purposes of this Agreementshall be regarded as beyond the control of the party in question: acts of nature; acts oromissions of any government; any rules, regulations, or orders issued by any governmental authorityor by any officer, department, agency or instrumentality thereof; fire; storm; flood; earthquake;accident; war; rebellion; insurrection; riot; invasion; strikes; and lockouts or the like; providedthat the party so affected shall use its best efforts to avoid orremove such causes or nonperformance and shall continue performance hereunder with the utmostdispatch whenever such causes are removed.     13.12 Survival. The representations and warranties contained in this Agreement aswell as those rights and/or obligations contained in the terms of this Agreement which by theirintent or meaning have validity beyond the term of this Agreement shall survive the termination orexpiration of this Agreement.     13.13 Entire Agreement. This Agreement constitutes the entire understanding betweenthe parties with respect to the subject matter contained herein and supersedes any and all prioragreements, understandings and arrangements whether oral or written between the parties relating tothe subject matter hereof. This Agreement will control in the event of any conflict between thisAgreement and the Research Plan.     13.14 Amendments. No amendment, change, modification or alteration of the terms andconditions of this Agreement shall be binding upon either party unless in writing and signed by theparty to be charged.     13.15 Independent Contractors. It is understood that both parties hereto areindependent contractors and engage in the operation of their own respective businesses, and neitherparty hereto is to be considered the agent or partner of the other party for any purposewhatsoever. Neither party has any authority to enter into any contracts or assume any obligationsfor the other party or make any warranties or representations on behalf of the other party.     13.16 Counterparts. This Agreement may be executed in counterparts, each of whichshall be deemed an original and both of which together shall constitute one and the sameinstrument.**[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

25     IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their dulyauthorized officers as of the date first above written,         ONYX PHARMACEUTICALS, INC. WARNER-LAMBERT COMPANY           By: /s/ Hollings C. Renton Name: Hollings C. Renton By: /s/ M. R. Goodes Name: M. R. Goodes    Title: President & CEO   Title: Chairman and CEO  **[ * ]**= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HASBEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED.

 

26SCHEDULE 1