WHENEVER CONFIDENTIAL INFORMATION IS OMITTED HEREIN (SUCH OMISSIONS ARE DENOTED BY AN ASTERISK*), SUCH CONFIDENTIAL INFORMATION HAS BEEN SUBMITTED SEPARATELY TO THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
 
 


EXCLUSIVE
LICENSE AGREEMENT


 


                                                This Agreement, effective November 12,
2007 (the “Effective Date”) is between Metabolix, Inc. (“Licensor”),
having an office and principal place of business at 21 Erie Street, Cambridge,
MA 02139, and Abbott Laboratories (“Licensee”), an Illinois corporation having
an office and principal place of business at 100 Abbott Park Road, Abbott Park,
Illinois 60064-6400.


 


WITNESSETH THAT:


 


                                                WHEREAS, Licensor is the owner of certain Patent
Rights (as later defined herein) and has the right to grant licenses under said
Patent Rights.


 


                                                WHEREAS, Licensee is a diversified health care
company that discovers, develops, manufactures and markets pharmaceutical
products, nutritional products and medical products.


 


                                                WHEREAS, Licensee wishes to obtain and Licensor
is willing to grant an exclusive license to the Patent Rights upon the terms
and subject to the conditions set forth herein.


 


                                                NOW, THEREFORE, in consideration of the premises and
the mutual covenants and agreements herein contained, Licensor and Licensee
agree as follows:


 


ARTICLE I


DEFINITIONS


 


                                                As used in this Agreement, each term
listed below shall have the meaning that is given after it:


 


“Abbott Diagnostic Product” means any Abbott
Product that is a Diagnostic Product.


 


“Abbott Product” means any Licensed Product,
that was discovered, developed or commercialized by Abbott or its Affiliates.


 


“Abbott Therapeutic Product” means any Abbott
Product that is a Therapeutic Product.


 


“Affiliate” means a corporation or any other
entity that directly, or indirectly through one or more intermediaries,
controls, is controlled, or is under common control with the designated
Party.  As used herein, the term of
control means possession of power to direct or cause the direction of the
management and policies of a corporation or other entity whether through the
ownership of voting securities, by contract or otherwise; provided, however,
that for the purposes of this Agreement, * and its subsidiaries, which
comprises *, shall not be considered an “Affiliate” of Licensee unless and
until Licensee has elected to include *,


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


1

















 


 


as an Affiliate hereunder  for
the express purposes of developing and commercializing an Abbott Product and
provides Licensor written notice of the same.


 


“Commercially Reasonable Efforts” means the
level of effort commonly used in the research-based pharmaceutical industry to
conduct research, development, and licensing activities for a technology that
is at a similar stage as the technology described in the Patent Rights and that
is of comparable market potential, profit potential or strategic value, taking
into account relevant considerations, and which may include, establishment of a
proof of concept, issues of safety (including adverse events) and efficacy,
product profile, the proprietary position, the then-current competitive
environment for such technology, the then-current market penetration, the
return on investment potential of such product, the regulatory environment and
status of the product, and other relevant scientific, technical and commercial
factors, as the case may be, and as measured by the facts and circumstances at
the time such efforts are due.


 


“Control” or “Controlled” means, with
respect to a particular item of information or intellectual property right, (i) that
the Party owns, or holds a license to, and has the ability to grant to the
other Party access and/or the licenses to such item, provided for herein,
without violating the terms of any agreement or other arrangement with any
third party.


 


 


“Cross-License” means a license agreement with
a Sublicensee in which Licensee receives non-cash receipts in the form of
license rights to technology or intellectual or tangible property.


 


                                                “Diagnostic Product” means a
Licensed Product that (i) identifies, images, or otherwise detects a
disease, disorder, medical state or condition in animals (including human) or
having a predisposition to a particular disease, and/or (ii) defines the
prognosis or monitors the progress of any disease disorder, medical state or
condition in animals (including human), including subsequent to medical or
pharmaceutical intervention and/or (iii) predicts the suitability of using
a specific prophylactic or therapeutic product to treat a disease, disorder,
medical state or condition in animals (including human) with specific patients
(“theranostic”).


 


“FDA” means the United States Food and Drug
Administration or any successor agency or authority thereto having substantially
the same functions.


 


“FDCA” means the United States Federal Food,
Drug, and Cosmetic Act, as amended from time to time, together with any rules,
regulations, and requirements promulgated thereunder.


 


                                                “First
Commercial Sale” means, with respect to any Licensed Product, the first
bona fide commercial sale of such Licensed Product by Licensee or its Sublicensees to any
unaffiliated third party who is not a Sublicensee in any country in the
Territory after all applicable marketing and pricing approvals (if any) have
been granted by the Regulatory Agency, provided such bona fide sale would,
absent the license granted hereunder, infringe one or more Valid Claims.


 


                                                “* Patents” means any issued
patent, that is (i) * directed to the * disclosed in the * and (ii) conceived
or discovered during the period beginning on * and through * by an employee or agent of
*, its Affiliates or * by use of the *.


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


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“Licensed Product” means any product or process
or part thereof, the manufacture, sale, offer to sell, use, or importation of
which, absent the license granted hereunder, would infringe one or more Valid
Claims.


 


“NDA” means a new drug application as defined
in the FDCA or any successor applications or procedures filed with the FDA.


 


“Net Sales” means, on Licensed
Product-by-Licensed Product basis, the gross amount invoiced by Licensee, its
Affiliates and its Sublicensees to independent, unrelated third parties in bona
fide arms’ length transactions for the sale of Licensed Products, less
deductions for:


 


(i) trade, quantity, or cash discounts, sales
returns and allowances (including charge backs, and uncollectible accounts);


 


(ii) amounts repaid or credited by reason of rejection,
defect or return, or because of price reductions, billing errors; rebates and
similar payments made with respect to sales paid for or reimbursed by any
governmental or regulatory authority such as, by way of illustration and not in
limitation of the Parties’ rights hereunder, federal or state Medicaid,
Medicare or similar state program or equivalent foreign governmental program;


 


(iii) administrative and other fees and
reimbursements and similar payments directly related to the sale or delivery of
Licensed Product paid to wholesalers and other distributors, buying groups,
pharmacy benefit management organizations, health care insurance carriers and
other institutions;


 


(iv) the cost of the Delivery System, where for
purposes of this Net Sales definition, a “Delivery System” means any delivery
system comprising equipment, instrumentation, one or more devices or other
components designed to assist in the administration of a Licensed Product; for
the purpose of example, Delivery Systems would include but not be limited to:
syringes, needle-free delivery devices, inhalers, trans-dermal patches and any
other similar equipment instrumentation, or devices;


 


(v) any taxes or other governmental charges or import and excise
duties levied on the production, sale, transportation, delivery or use of a
Licensed Product which is paid by or on behalf of a Party;


 


(vi) outbound transportation, importation,
freight, postage, shipping, insurance and other handling costs;


 


(vii) costs of collections; and


 


(viii) with respect to Abbott Diagnostic Product(s) sold
under a Reagent Agreement Plan, a lump sum deduction of * percent (*%) of the
gross amount invoiced for such Abbott Diagnostic Product.


 


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


3

















 


 


For
purposes of determining Net Sales, Licensed Product(s) shall be deemed to
be sold when shipped and invoiced and a “sale” shall not include transfers or
dispositions for charitable, promotional, pre-clinical, clinical, regulatory or
governmental purposes.


 


For
purposes of calculating Net Sales, sales between or among Licensee, its
Affiliates or its Sublicensees shall be excluded from the computation of Net
Sales, but sales by a Party, its Affiliates, or its Sublicensees to unrelated
third parties shall be included in the computation of Net Sales.


 


In the event a Licensed
Product is sold in combination with one or more other active ingredients, the
gross amount invoiced for that Licensed Product shall be calculated by
multiplying the gross amount invoiced for such combination by the fraction
A/(A+B), where “A” is the gross amount invoiced for the Licensed Product sold
separately and “B” is the gross amount invoiced for the other active ingredient(s) sold
separately.  In the event that the other
active ingredient(s) is not sold separately, then the gross amount
invoiced for that Licensed Product shall be calculated by multiplying the gross
amount invoiced for the combination by the fraction A/C, where “A” is the gross
invoice amount for the Licensed Product, if sold separately, and “C” is the
gross invoice amount for the Combination. In the event that a particular
combination is not addressed by the foregoing, the Parties shall determine the
allocation of the gross invoice amount between the Licensed Product and the
other active ingredient(s) in good faith.


 


“Party or Parties” means Licensee and/or
Licensor, depending on the context.


 


“Patent Rights” means all patents and patent
applications, including but not limited to those listed in Exhibit B attached
hereto, owned or Controlled by Licensor during the Term, filed *, which patents
and patent applications claim subject matter related to *, and including:


 


                                                (a) all additions, divisionals,
continuations, continuation-in-part applications, and continued prosecution
applications and substitutions of any of the preceding, and any letters patent
and/or registrations (and their relevant international equivalents);


 


                                                (b) all patents resulting from
reissues, reexaminations, renewals, confirmations, registration, extensions
(and their relevant international equivalents), and including any patent term
extensions, or supplementary protection certificates that may be granted on any
of the foregoing


 


“Pharmaceutical Field” means research,
development, manufacture, and commercialization of products directed to the
prevention, maintenance, treatment, diagnosis, prediction, detection,
evaluation or characterization of any disease, disorder, medical state or
condition in animals (including humans).


 


“Reagent Agreement Plan” means a plan for the
sales of Abbott Diagnostic Product(s) to customers with whom instruments
for use with reagents constituting Abbott Diagnostic Product(s) are placed
on a reagent rental basis, (i.e. without a charge for such instruments separate
from charges for such assays), or other successor or similar plan, such as
instrument service costs, instrument depreciation, finance costs, disposables,
and rental fees.


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


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“Regulatory Agency” means the United States
Food and Drug Administration and the applicable regulatory agencies in other
countries having responsibility for license of pharmaceutical products or
Licensed Product(s).


 


“Reporting Period” means each calendar quarter
during the Term.


 


“Non-Pharmaceutical Research Field” means
internal, non-commercial, research outside the Pharmaceutical Field, at
laboratory to pilot scale, and not for use in any process, intermediate, or
final product for commercial sale or distribution.  Non-Pharmaceutical Research Field excludes,
without limitation, any use of “*” Patents, as part of, or in any way in
connection with, a product or service which is sold, offered for sale or
licensed in the Territory.


 


“*” has the meaning ascribed to it in Section 2.3.


 


“Sublicense
Income” means any payments that Licensee or its Affiliates receives from a
Sublicensee, that is not an Affiliate of Licensee, in connection with a
sublicense granted pursuant to Section 2.2 hereof, which sublicense
includes a grant of rights to the Patent Rights but which sublicense does not
include a grant of rights to an Abbott Product. Payments under this definition
include without limitation license fees, license maintenance fees, milestone
payments, and royalties and the fair market value of any non-monetary
consideration.


 


“Sublicensee” means any non-Affiliate
sublicensee of the rights granted Licensee under Section 2.1.


 


                                                “Term” means the term of this
Agreement as set forth in section 11.1.


 


                                                “Territory” means the entire
world.


 


                                                “Therapeutic Product” means a
Licensed Product that prevents, maintains, treats and/or cures any disease,
disorder, medical state or condition in animals (including humans).


 


                                                “Valid Claim” means a claim of an
issued and unexpired patent included within the Patent Rights whose
enforceability has not been affected by one or more of any of the following: (1) permanent
lapse, revocation, or abandonment and/or (2) holding of unenforceability
or invalidity by a decision of a court or other appropriate body of competent
jurisdiction, unappealable or unappealed within the time allowed for appeal;
and/or (3) disclaimer or admission or declaration of invalidity or
unenforceability through reissue or re-examination or opposition, nullity
action or invalidation suit response or otherwise.


 


ARTICLE II


GRANT OF LICENSE AND
RIGHT OF FIRST NEGOTIATION


 


                                                2.1                                 License Grants. 
Subject to the terms of this Agreement, Licensor hereby grants to
Licensee and its Affiliates for the Term an exclusive (even as to Licensor)
royalty-bearing license, under the Patent Rights to research, develop, make,
have made, use, sell, offer to sell, lease, and import/export Licensed Products
in the Pharmaceutical Field in the Territory.


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


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                                                2.2                                 Sublicenses. 
Licensee shall have the exclusive right (even as to Licensor) to grant
sublicenses of its rights under Section 2.1. Licensee shall incorporate
terms and conditions into its sublicense agreements sufficient to enable
Licensee to comply with this Agreement and to ensure Sublicensee’s compliance
with the terms of this Agreement.


 


                                                2.3                                 * Patents. * hereby grants to * a * non-exclusive license, *
the right to grant sublicenses, to * Patents solely for * further grants to *
license to * Patents, solely for use *, upon terms and conditions to be
negotiated in good faith by the parties (“*”). * may exercise each * upon
notice to * within * (*) * (“* Election Period”) from the date upon which the
applicable * Patent issues. In the event that * elects to exercise a *, the
Parties shall enter into good faith negotiations for a commercially reasonable
sublicensing agreement for the specific field of interest, *.  The financial terms associated with such agreement
will include, to the extent usual and customary for the applicable field of
use, a license fee, annual maintenance fees, milestones, royalties on net sales
and a * and the absolute values for such financial terms will be usual and
customary for the scope of rights and field of use and, in the case of * that
are encompassed in such agreement. If the Parties, in good faith negotiations,
are unable to reach agreement within ninety days (90) days after the date upon
which * exercised the * (“Negotiation Period”), then neither Party
shall be under any obligation to continue such negotiations; provided that if the Parties are unable
to agree upon what constitutes commercially reasonable financial terms, then *
may submit the issue to Alternative Dispute Resolution under Section 12.1.


 


Notwithstanding anything to the contrary in this Agreement, * understands and agrees that
if * or any of its
Affiliates acquires, is acquired by, or merges or consolidates with a third
party (each a “Change in Control”), the * shall not apply to any patent that otherwise
meets the definition of “* Patent” if such patent was already owned or
otherwise controlled by the other party to such Change in Control as of the
effective date of said Change in Control, and is the subject of an agreement
that would not allow *, its
Affiliates and/or said third party to agree to this provision.  For example only and not to limit the
generality of the foregoing, if * acquires a third party that owns or is the
licensee of a patent that meets the definition of “* Patent”, and on the
effective date of the Change in Control, said third party had exclusively
licensed its rights to said “* Patent”, then the patent that is the subject of
such exclusive license is not available to * under this Section 2.3.


 


ARTICLE III


ROYALTIES AND PAYMENT
TERMS


 


3.1                                 Consideration for Grant of Rights.


 


(a)                                  License Issue Fee. 
Licensee shall pay to Licensor, within thirty (30) days of the Effective
Date, a license issue fee of Five Hundred Thousand United States dollars
(US$500,000).


 


(b)                                 Annual Maintenance Fee.  Effective on the * of the Effective Date and
on each anniversary thereafter, Licensee shall pay Licensor an annual
maintenance fee of * 


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


6

















 


 


United States Dollars ($*) (the “Maintenance Fee”).  The Maintenance Fee shall be creditable, on
an annual basis, against any amounts due under the provisions of Section 3.1(c),
3.1(d), 3.1(e) and 3.1(f) due to the Licensor by Licensee under this
Agreement.


 


(c)                                  Sublicense Fee — Related to Abbott
Products.  If Licensee grants a sublicense to a
Sublicensee to an Abbott Product and such sublicense includes a grant of rights
to the Patent Rights as required to make, have made and use an Abbott Product,
then Licensee shall pay to Licensor as a pass through obligation the milestone
and royalties related to such Abbott Product as stated in Section 3.1(e) and
3.1(f). No amounts shall be payable by Licensee to Licensor for such sublicense
under the provisions of Section 3.1(d). All such payments under this Section 3.1(c) shall
be made in conformity with the provisions of Section 3.2.


 


(d)                                 Sublicense Fee — Other. 
Licensee shall pay to Licensor * percent (*%) of any Sublicense Income
for each sublicense under Section 2.2, directed solely to the Patent
Rights (without any license to an Abbott Product which is covered in Section 3.1(c) above).
All such payments under this Section 3.1(d) shall be made in
conformity with the provisions of Section 3.2.


 


(e)                                  Milestones.  Licensee, or
Licensee on behalf of an Affiliate or a Sublicensee to an Abbott Product, shall
pay to Licensor the following milestone payments, within 30 days of the
achievement of the stated event:


 


(i)                                     * United States Dollars ($*) upon the
administration of the first dose for the first-in-man study, solely for the
first Abbott Therapeutic Product to achieve this milestone.  The milestone payment under this Section 3.1(e)(i) is
a one-time payment, which is only payable for the first Abbott Therapeutic
Product to achieve this milestone. Licensee shall not pay this milestone for
any future Abbott Therapeutic Product’s achievement of this milestone but will
however pay the milestone payable under Section 3.1(e)(ii) for each
Therapeutic Product that meets the milestone stated in 3.1(e)(ii).


 


(ii)                                  * United States Dollars ($*) upon the
First Commercial Sale for each Abbott Therapeutic Product after the first NDA
approval for such product.


 


For clarity, the milestone under 3.1(e)(ii) is
due on a one-time basis * and additional milestones are not due for subsequent
NDA approvals for new dosage forms or strengths, new indications or new label
claims, or new packaging configurations or kits once a milestone has been paid
for an Abbott Product encompassing such *.


 


(iii)                               * United States Dollars ($*) upon First
Commercial Sale for each Abbott Diagnostic Product.


 


For clarity, the milestone under 3.1(e)(iii) is
due on a one-time basis * and additional milestones are not due for subsequent
First Commercial Sales for new 


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


7

















 


 


label claims or new packaging configurations or kits
once a milestone has been paid for an Abbott Product encompassing such *.


 


(f)                                    Royalties.  Licensee, or
Licensee on behalf of an Affiliate or a Sublicensee to an Abbott Product, shall
pay Licensor, on an Abbott Product-by-Abbott Product basis, a royalty based on
Annual Net Sales of such Abbott Product, as follows:


 


                                                                                                *% of Net Sales of each Abbott Therapeutic
Product


 




*% of Net Sales of each Abbott Diagnostic Product or any other Abbott Product
that is not an Abbott Therapeutic Product.


 


All such payments under this Section 3.1(e) shall
be made in conformity with the provisions of Section 3.2.


 


                                                (g)                                 Sublicense — Cross-License. 
In the event that, under a Cross-License, Licensee receives non-cash
receipts in the form of license rights to technology or intellectual or
tangible property (for example but not to limit the generality of the foregoing,
reagents, cell lines or genetic constructs) which may be necessary or useful in
providing freedom to operate under the Patent Rights, such non-cash receipts
shall not be deemed to be Sublicense Income under Section 3.1(d).


 


(h)                                 No Duplicate Licensee Fees or Royalties. 
If the manufacture, use, lease, or sale of any Licensed Product is
covered by more than one of the Patent Rights, multiple royalties shall not
be due.  In addition, except as per
3.1(c), no sublicense fees will be due for the sublicense of Abbott Products.


 


                                                3.2                                 Payments.


 


                                                (a)                                  Method of Payment. 
All payments under this Agreement should be made payable to Licensor and
sent to the address identified in Section 13.1.


 


(b)                                 Payment Terms. 
All payments due under this Agreement shall be payable in United States
dollars. Foreign currency amounts shall be converted into United States dollars
at the rates used by Licensee for conversion of foreign currencies for purposes
of calculating its publicly reported sales figures for that year. All payments
due under this agreement under the provisions of Sections 3.1(b), 3.1(c), 3.1(d) and
3.1(f) shall be due to Licensor within ninety (90) days of the end of each
Reporting Period.


 


(c)                                  In the event the enforceability of one or
more patents within the Patent Rights is under challenge or review in a court
of law, or other appropriate body of competent jurisdiction (including the
United States Patent Office), at the sole discretion of Licensee, payments due
under this Agreement may be held in an interest-bearing escrow account to be
chosen by the Licensee (Licensee’s choice of the interest-bearing escrow
account shall be subject to Licensor’s approval, which approval shall not be
unreasonably withheld), until such time as the patent challenge or review is
finally resolved. If the Patent Rights are finally deemed enforceable by
decision of a court or other appropriate body of competent jurisdiction, then
payments held in 


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


8

















 


 


escrow and interest thereon shall be due to Licensor
within thirty (30) days of such the decision. If the Patent Rights are finally
deemed unenforceable by decision of a court or other appropriate body of
competent jurisdiction, then payments held in escrow and interest thereon shall
be due to Licensee.


 


(d)                                 Withholding Taxes. 
Where any sum due to be paid to a Party hereunder is subject to any
withholding or similar tax, the Parties shall use their commercially reasonable
efforts to do all such acts and things and to sign all such documents as will
enable them to take advantage of any applicable double taxation agreement or
treaty.  In the event there is no
applicable double taxation agreement or treaty, or if an applicable double taxation
agreement or treaty reduces but does not eliminate such withholding or similar
tax, the Party making such payment shall pay such withholding or similar tax to
the appropriate government authority, deduct the amount paid from the amount
due the other Party and secure and send to the other Party the best available
evidence of such payment.


 


ARTICLE IV


REPORTS AND RECORDS


 


4.1                                 Frequency of Reports.


 


                                                (a)                                  Sublicense Agreement Reporting
Requirements.  Within thirty (30) days of the end of each
Reporting Period during which a sublicense is entered into, Licensee shall
report to Licensor (1) the date of the execution of any sublicense
agreement and (2) the date of the First Commercial Sale of a Licensed
Product that is the subject of the sublicense.


 


                                                (b)                                 After First Commercial Sale. 
After the First Commercial Sale of a Licensed Product or Licensee’s
first receipt of Sublicense Income, whichever occurs first, Licensee shall
deliver to Licensor within forty-five (45) days of the end of each Reporting
Period, a report containing information concerning the immediately preceding
Reporting Period, as further described in Section 4.2.


 


                                                4.2                                 Content of Reports and Payments. 
Each report delivered by Licensee to Licensor shall contain the
following information for the immediately preceding Reporting Period:


 


                                                (i)  the total royalty payable on
Net Sales in U.S. dollars, together with the exchange rates used for
conversion;


 


                                                (ii)  the number of sublicenses
entered into for the Patent Rights and Licensed Products and the amount payable
to Licensor pertaining to such sublicenses.


 


If no amounts are due to Licensor for any Reporting Period, or no
sublicenses were entered into, then no report is due from Licensee for such
Reporting Period.


 


                                                4.3                                 Records.  Licensee
shall maintain, and shall cause its Affiliates and Sublicensees to maintain,
accurate accounting records for the calculation of royalties payable
hereunder.  Licensee shall retain such
records for three (3) years following the end of the calendar year to
which they pertain.  Upon thirty (30)
days advance written notice by Licensor and not more than 


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


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once in any twelve (12) month period, Licensee shall make available
upon reasonable advance notice during normal business hours such records for
examination by independent certified public accountants appointed by Licensor
and acceptable to Licensee, solely to the extent necessary to verify Licensee’s
calculations of amounts due under this Agreement.


 


Such examination shall be limited to a period of time no more than
three (3) calendar years immediately preceding the request for
examination. The report of any such examination shall be made simultaneously to
Licensee and Licensor and shall simply report the amount, if any, by which
Licensee has overpaid or underpaid: (i) royalties on a Licensed Product by
Licensed Product basis and (ii) amounts payable for sublicensing income.
The costs for such examination shall be borne by Licensor. Licensee shall
promptly pay any underpayment and shall deduct from the next payment due to
Licensor any overpayment. In the event that an audit performed under this Section reveals
an underpayment in excess of * percent (*%), Licensee shall bear the full cost
of such audit and shall remit any amounts due to Licensor within sixty (60)
days of receiving notice thereof from Licensor.


 


                                                4.4                                 Due Diligence Progress Reports. 
In addition to the reports required under Section 4.1, Licensee
shall report to Licensor within thirty (30) days after the end of each of the
first * (*) calendar years during the Term on the progress of Licensee’s
research and development and licensing activities in compliance with its due
diligence obligations under Section 8.4. 
Such reports will be in summary format and will be solely directed to
the * disclosed in the Patent Rights. 
Such reports shall identify Licensed Products, if any, that Abbott has
submitted a New Drug Application or Biological License Application to the FDA.
Other information and activities relating to the discovery and development of
Licensed Products are deemed to be confidential to Abbott and will not be
disclosed.  By way of example only, * are
confidential to Abbott and will not be disclosed.


 


ARTICLE V


PATENT PROSECUTION


 


5.1                                 Responsibility for Patent Rights. 
Licensor shall be responsible for the maintenance of the Patent Rights,
including all preparation, filing, prosecution, interferences, reissues, re-examinations, and
oppositions related to said Patent Rights. 
Licensor shall instruct patent counsel authorized with maintaining the
Patent Rights to consult with Licensee as to the prosecution and maintenance of
such Patent Rights in sufficient time before any action is due to allow
Licensee to provide comments and instructions thereon, which comments and
instructions  shall be reasonably
adopted.


 


5.2                                 Payment of Expenses. 
Payment of all fees and costs, including attorney’s fees, relating to
the filing, prosecution and maintenance of the Patent Rights as of the
Effective Date shall be the responsibility of Licensor, unless the option to
prosecute and maintain patents is exercised by Licensee as per Section 5.3.


 


                                                5.3                                 Option to Prosecute and Maintain Patents. 
Licensor shall give notice to Licensee of any desire to cease
prosecution and/or maintenance of any patents included within the Patent Rights
licensed to Licensee hereunder at least ninety (90) days prior to the date of
lapse, revocation, surrender, invalidation or abandonment of such patents
included within the Patent


 


 


 


* CONFIDENTIAL TREATMENT REQUESTED


 


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Rights.  In such case, Licensor shall permit Licensee,
at its sole discretion, to continue prosecution or maintenance at its own
expense.  If Licensee elects to continue
prosecution or maintenance, Licensor shall execute such documents and perform
such acts as may be reasonably necessary to effect an assignment of such
patents included within the Patent Rights to Licensee in a timely manner to
allow Licensee to continue such prosecution or maintenance.  Any patents or patent applications so
assigned shall no longer be considered patents included within the Patent
Rights.


 


5.4           Patent Term Extensions and
Supplementary Protection Certificates. 
Licensee shall have the right to pursue extensions of exclusivity beyond
the full term expiry date of any Patent Rights, for example and without
limitation, the extensions provided under United States Law, such as 35 U.S.C.
§154, 35 U.S.C. §155, 35 U.S.C. §155A, 35 U.S.C. §156, and 21 U.S.C. §355a, and
under Laws outside of the United States, such as a Supplementary Protection
Certificate (“SPC”) in European Patent Office (“EPO”) member countries.  An application for extension shall be brought
under Licensee’s control and expense. 
Licensor shall fully cooperate with Licensee in obtaining an extension
of a Patent Rights’ expiry date.


 


ARTICLE VI


PATENT ENFORCEMENT


 


6.1           Notification of Action.  Each Party agrees to provide written notice
to the other Party promptly after becoming aware of any infringement of the
Patent Rights or the institution by a third party of any proceeding for the
purpose of revoking or holding unpatentable, invalid or unenforceable any
patent within the Patent Rights.  Such
notice shall include copies of all documentary evidence in support of the
infringement.


 


6.2           Right to Enforce and to Defend Patent
Rights.  Upon receipt of Notification of Action
pursuant to Section 6.1, Licensee shall have the right, but not the
obligation, to institute an action for such suspected infringement within the
Pharmaceutical Field, or to defend against any such third party proceeding for
revocation, or invalidity, under Licensee’s own control and at its own expense
and shall have the right to select counsel for any such action or
proceeding.  Neither Party shall enter
into any settlement, consent judgment, or other voluntary final disposition of
any action under this Section without the prior written consent of the
other Party, which consent may not be unreasonably withheld or delayed. 
Such action by Licensee shall be brought under Licensee’s own name or if
required by law, jointly with Licensor. 
If Licensee does not initiate legal proceedings or take other actions
(for example and without limiting the generality of the foregoing, licensing
discussions) regarding said infringement within one hundred twenty (120) days
from the date of notice pursuant to Section 6.1, Licensor shall have the
right to institute or defend any such actions at its own cost and expense.  Further, Licensor retains the right to
institute, defend and settle any such actions outside the Pharmaceutical
Field.  Each Party shall keep the other
reasonably informed and cooperate with the other as to the prosecution and/or
settlement of any action, in or outside the Pharmaceutical Field.


 


                6.3           Offsets.
Licensee may offset any expenses incurred under Section 6.2 against any
payments due to Licensor under Article 3, provided that in no event shall
such payments under Article 3, when aggregated with any other offsets and
credits allowed under this Agreement, be reduced by more than * (*%) in any
calendar year.


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


11

















 


 


                6.4           Recovery.  Any recovery obtained in an action brought by
Licensee under Section 6.2 shall be distributed as follows:  (i) each party shall be reimbursed for
any expenses incurred in the action (including the amount of any royalty or
other payments withheld from Licensor as described in Section 6.3 and
including reimbursements according to Section 6.5), (ii) as to
ordinary damages, Licensee shall receive an amount equal to *, or whichever
measure of damages the court shall have applied, and Licensee shall pay
Licensor based upon such amount a reasonable approximation of * and other
amounts that *, and (iii) as to special or punitive damages, the parties
shall * any award.


 


                6.5           Cooperation.  Licensor agrees to cooperate in any action
under this Article which is controlled by Licensee at no charge to
Licensee, provided that Licensee reimburses Licensor for any costs and expenses
incurred by Licensor in connection with providing such assistance.


 


                6.6           Right
to Sublicense. Licensee shall have the sole right to sublicense any alleged
infringer in the Pharmaceutical Field in the Territory for future use of the
Patent Rights in accordance with the terms and conditions of this Agreement
relating to sublicenses.


 


ARTICLE VII


INDEMNIFICATION


 


                7.1           Indemnification
by Licensee.  Licensee shall
indemnify, defend and hold harmless Licensor and its respective officers,
directors, employees including inventors, if any, and agents and their
respective successors, heirs and assigns (the “Licensee Indemnitees”), against
any liability, damage, loss, or expense (including reasonable attorneys fees
and expenses) incurred by or imposed upon any of the Licensee Indemnitees in
connection with any claims, suits, actions, demands or judgments arising out
of: (i) any theory of liability concerning any product, process or service
that is made, used, sold, imported, or performed pursuant to any right or
license granted under this Agreement or (ii) Licensee’s breach of its
representations and warranties stated in Section 8.2, to the extent such
liability, loss, damage or expense is not attributable to the negligent act or
omission or reckless conduct or willful misconduct of Licensee Indemnitees.


 


7.2           Indemnification by Licensor.  Licensor shall indemnify, defend and hold
harmless Licensee, its Affiliates, Sublicensees and their respective officers,
directors, employees and agents and their respective successors, heirs and
assigns (the “Licensor Indemnitees”), against any liability, damage, loss, or
expense (including reasonable attorneys fees and expenses) incurred by or
imposed upon any of the Licensor Indemnitees in connection with any claims,
suits, actions, demands or judgments arising out Licensor’s breach of its
representations and warranties stated in Section 8.1, to the extent such
liability, loss, damage or expense is not attributable to the negligent act or
omission or reckless conduct or willful misconduct of Licensor Indemnitees.


 


                7.3           Procedures.  The Indemnitees agree to provide the
indemnifying Party with prompt written notice of any claim, suit, action,
demand, or judgment for which indemnification is sought under this Agreement.
The indemnifying Party agrees, at its own expense, to provide attorneys
reasonably acceptable to the other Party to defend against any such claim.  The Indemnitees shall cooperate fully with
the indemnifying Party in such defense and will permit 


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


12

















 


 


the indemnifying Party to
conduct and control such defense and the disposition of such claim, suit, or
action (including all decisions relative to litigation, appeal, and
settlement); provided, however, that any Indemnitee shall have the right to
retain its own counsel, at the expense of the indemnifying Party, if
representation of such Indemnitee by the counsel retained by the indemnifying
Party would be inappropriate because of actual or potential differences in the
interest of such Indemnitee and any other party represented by such counsel.
The indemnifying Party agrees to keep the other Party informed of the progress
in the defense and disposition of such claim and to consult with the other
Party with regard to any proposed settlement.


 


ARTICLE VIII


REPRESENTATIONS AND
WARRANTIES


 


                8.1           Representations and Warranties of Licensor.
Licensor represents and warrants to and covenants with Licensee that:


 


(i)            Licensor is a corporation duly
organized, validly existing and in good standing under the laws of Delaware;


 


(ii)           Licensor has the authority and power
to enter into this Agreement, and to extend the rights and licenses granted to
Licensee in this Agreement;


 


(iii)          To
Licensor’s reasonable knowledge, the conception, development and reduction to
practice of the Patent Rights have not constituted or involved the
misappropriation of trade secrets or other rights or property of any third
party;


 


(iv)          As of the Effective
Date, there are no claims, judgments or settlements against or amounts with
respect thereto owed by Licensor relating to the Patent Rights;


 


(v)           As of the Effective
Date, no claim or litigation has been brought or threatened by any person
alleging, that (a) the Patent Rights are invalid or unenforceable, or (b) the
Patent Rights or the disclosing, copying, making, assigning, licensing, or
exploiting of the Patent Rights, or products and services embodying the Patent
Rights, violates, infringes or otherwise conflicts or interferes with any
intellectual property or proprietary right of any third party;


 


(vi)          To Licensor’s
reasonable knowledge, there is no actual or threatened infringement claim made
by a third party against Licensor relating to the subject matter encompassed
within the Patent Rights;


 


(vii)         Licensor has taken all necessary action
to authorize the execution, delivery and performance of this Agreement;


 


(viii)        upon the execution and delivery of this
Agreement, this Agreement shall constitute a valid and binding obligation of
Licensor, enforceable in accordance with its terms, except as enforceability
may be limited by applicable bankruptcy, insolvency, reorganization, moratorium
or similar laws affecting creditors’ and contracting parties’ rights generally
and except as enforceability may be subject to general principles of 


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


13

















 


 


equity (regardless
of whether such enforceability is considered in a proceeding in equity or at
law);


 


(ix)           the performance of its obligations
under this Agreement will not conflict with its charter documents or result in
a breach of any agreements, contracts or other arrangements to which it is a
party; and


 


(x)            Licensor will not during the term of
this Agreement enter into any agreements, contracts or other arrangements that
would conflict with its obligations under this Agreement;


 


(xi)           Licensor represents, warrants and
covenants to Licensee that Licensor will promptly disclose to Licensee any
information that Licensor learns after the Effective Date, relating to any
legal conflict or litigation with a third party, threatened or actual, relating
to the Patent Rights; and


 


(xii)          Other than patent application * and
its corresponding foreign applications and resulting patents therefrom which
are not licensed hereunder, Licensor represents and warrants that Exhibit B
attached hereto is a complete list of all Patent Rights owned or Controlled, or
licensed by Licensor as of the Effective Date of this Agreement that disclose
subject matter related to *.


 


8.2           Representations and Warranties of
Licensee. Licensee represents and warrants to and covenants with Licensor
that:


 


 (i)           Licensee
is a corporation duly organized, validly existing and in corporate good
standing under the laws of Illinois;


 


(ii)           Licensee has the corporate authority
and power to enter into this Agreement;


 


(iii)          Licensee has taken all necessary
action to authorize the execution, delivery and performance of this Agreement;


 


(iv)          upon the execution and delivery of
this Agreement, this Agreement shall constitute a valid and binding obligation
of Licensee enforceable in accordance with its terms, except as enforceability
may be limited by applicable bankruptcy, insolvency, reorganization, moratorium
or similar laws affecting creditors’ and contracting parties’ rights generally
and except as enforceability may be subject to general principles of equity
(regardless of whether such enforceability is considered in a proceeding in
equity or at law);


 


8.3           Debarment
and Exclusion.  Each Party covenants,
represents, and warrants that neither it, nor any of its employees, have ever
been, are currently, or are, to its knowledge, the subject of a proceeding that
could lead to it or such employees becoming, as applicable, a Debarred Entity
or Individual, an Excluded Entity or Individual or a Convicted Entity or
Individual.  Each Party further
covenants, represents and warrants that if, during the Term, it, or any of its
employees or agents performing hereunder, become or are the subject of a
proceeding 


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


14

















 


 


that could lead to that Party
becoming, as applicable, a Debarred Entity or Individual, an Excluded Entity or
Individual or a Convicted Entity or Individual, such Party shall immediately
notify the other Party, and the other Party shall have the right to immediately
terminate this Agreement. This provision shall survive termination or
expiration of this Agreement. For purposes of this provision, the following
definitions shall apply:


 


(i)            A “Debarred Individual” is an
individual who has been debarred by the FDA pursuant to 21 U.S.C. §335a (a) or
(b) from providing services in any capacity to a person that has an
approved or pending drug product application.


 


(ii)           A “Debarred Entity” is a corporation,
partnership or association that has been debarred by the FDA pursuant to 21
U.S.C. §335a(a) or (b) from submitting or assisting in the submission
of any abbreviated drug application, or a subsidiary or affiliate of a Debarred
Entity.


 


(iii)          An “Excluded Individual” or “Excluded
Entity” is (i) an individual or entity, as applicable, who has been
excluded, debarred, suspended or is otherwise ineligible to participate in
federal health care programs such as Medicare or Medicaid by the Office of the
Inspector General (OIG/HHS) of the U.S. Department of Health and Human
Services, or (ii) is an individual or entity, as applicable, who has been
excluded, debarred, suspended or is otherwise ineligible to participate in
federal procurement and non-procurement programs, including those produced by
the U.S. General Services Administration (GSA).


 


(iv)          A “Convicted Individual” or “Convicted
Entity” is an individual or entity, as applicable, who has been convicted of a
criminal offense that falls within the ambit of 21 U.S.C. §335a(a) or 42
U.S.C. §1320a - 7(a), but has not yet been excluded, debarred, suspended or
otherwise declared ineligible.


 


8.4           Due Diligence. Licensee shall
use Commercially Reasonable Efforts to maintain an active research and
development program with respect to the rights granted to Licensee under the
Patent Rights. Upon the establishment of the proof of concept in the
Pharmaceutical Field, with respect to such Patent Rights, Licensee agrees to
utilize Commercially Reasonable Efforts to establish a licensing program to
such Patent Rights.  Licensee will
provide Due Diligence Progress Reports to Licensor under Section 4.4.


 


ARTICLE IX


ASSIGNMENT


 


9.1           Assignment. This Agreement may
not be assigned or otherwise transferred by either Party without the prior
consent of the other Party, where such consent will not be unreasonably
withheld.  Notwithstanding the foregoing,
either Party may assign this Agreement to any of its Affiliates or to any third
party to whom it sells or transfers all or substantially all of that portion of
its business to which the subject matter of this Agreement relates.  The assignor shall notify the other Party of
such sale and transfer promptly after the date thereof.  This Agreement shall be binding upon, and
subject to the terms of the foregoing sentence, inure to the 


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


15

















 


 


benefit of the Parties
hereto, their respective successors, legal representatives and permitted assigns.


 


ARTICLE X


GENERAL COMPLIANCE WITH
LAWS


 


                10.1         Compliance
with Laws.  Licensee shall use
reasonable commercial efforts to comply with all commercially material local,
state, federal, and international laws and regulations relating to the
development, manufacture, use and sale of Licensed Products.


 


10.2         Non-Use of Licensor/Licensee Name.
Neither Party shall use in any manner the other Party’s name or insignia, or
any contraction, abbreviation or adaptation thereof, without the express
written consent of the other Party.


 


10.3         No Publicity.  Neither Party shall issue or make any public
announcement, press release or other public disclosure regarding this Agreement
or its subject without the other Party’s prior written consent, except for any
such disclosure that is, in the opinion of the disclosing Party’s counsel,
required by law or the rules of a stock exchange on which the securities
of the disclosing Party are listed.  In
the event a Party is, in the opinion of its counsel, required to make a public disclosure
by law or the rules of a stock exchange on which its securities are
listed, such Party shall submit the proposed disclosure in writing to the other
Party at least fifteen (15) business days prior to the date of disclosure for
an opportunity to comment thereon. 
Notwithstanding the foregoing, Licensee acknowledges that the Licensor
intends to file with the Securities and Exchange Commission within four (4) business
days after the execution of this Agreement a Current Report on Form 8-K
substantially in the form heretofore provided to Licensee.


 


ARTICLE XI


TERM AND TERMINATION


 


                11.1         Term.  The Agreement shall commence upon the
Effective Date and shall, unless earlier terminated pursuant to this Agreement,
continue in full force and effect on a country-by-country basis until the
expiration, invalidation or abandonment of the last Valid Claim of the Patent
Rights in a country (including any extensions described in Section 5.4
above), at which time the Agreement shall expire in its entirety in such country
(“Term”) and all licenses and sublicenses granted hereunder shall become
fully-paid, royalty-free, irrevocable, perpetual, nonexclusive licenses in such
country.


 


                11.2         Voluntary
Termination by Licensee.  Licensee
shall have the right to terminate this Agreement, in whole or with respect to
any Patent Rights, on a country-by-country basis, and for any reason, upon at least  * (*) * prior written notice to Licensor.


 


11.3         Termination for Material Breach.  In the event either Party commits a material
breach of its obligations under this Agreement, and fails to cure that breach
within sixty (60) days after receiving written notice thereof, the
non-breaching Party may terminate this Agreement immediately upon written
notice to the breaching Party.  Notwithstanding
the foregoing, if the allegedly breaching Party contests the notice of material
breach, the non-


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


16

















 


 


breaching Party may
terminate the Agreement only following the final, non-appealable decision by
the neutral party in an ADR proceeding (see ADR Procedure, Exhibit A), and
where the finding by the neutral party of a material breach is not cured within
sixty (60) days after receiving written notice thereof.


 


11.4         Cessation of Business or Insolvency.  To the extent permitted by law, if either
Party shall become insolvent, or shall make or seek to make or arrange an
assignment for the benefit of creditors, or if proceedings in voluntary or
involuntary bankruptcy shall be initiated by, on behalf of or against such
Party and, in the case of any such involuntary proceeding, not dismissed within
ninety (90) days, or if a receiver or trustee of such Party’s property shall be
appointed and not discharged within ninety (90) days, the other Party shall
have the right to terminate this Agreement.


 


                11.5         Effect
of Termination.


 


                (a)           Survival.  The following provisions shall survive the
expiration or termination of this Agreement: 
Articles 1, 7, 8, 12 and 13, and Sections 4.2 (obligation to provide
final report and payment), 4.3, and 11.5 (for the period of time, if
applicable, stated in each subsection). 
In addition, Section 2.3 shall survive, if applicable, to the
extent provided in Section 11.5(e) below.


 


                (b)           Inventory.  Upon the early termination of this Agreement,
Licensee and its Affiliates and Sublicensees may complete and sell any
work-in-progress and inventory of Licensed Products that exist as of the
effective date of termination, provided that (i) Licensee pays Licensor
the applicable running royalty or other amounts due on such sales of Licensed
Products in accordance with the terms and conditions of this Agreement, and (ii) Licensee
and its Affiliates and Sublicensees shall complete and sell all
work-in-progress and inventory of Licensed Products within one (1) year
after the effective date of termination.


 


(c)           Termination for Bankruptcy.  If this Agreement is terminated by Licensee
pursuant to Section 11.4 due to the rejection of this Agreement by or on
behalf of Licensor under Section 365 of the United States Bankruptcy Code
(the “Code”), all licenses and rights to licenses granted under or pursuant to
this Agreement by Licensor to Licensee are, and shall otherwise be deemed to
be, for purposes of Section 365(n) of the Code, licenses of rights to
“intellectual property” as defined under Section 101(35A) of the
Code.  The Parties agree that Licensee,
as a licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the Code. Such intellectual
property and all embodiments thereof shall be promptly delivered to Licensee (a) upon
commencement of a bankruptcy liquidation proceeding and final declaration of
dissolution upon written request therefor by Licensee, unless Licensor elects,
under a plan of reorganization, to continue to perform all of its obligations
under this Agreement or (b), upon the rejection of this Agreement by or on
behalf of Licensor.  The foregoing
provisions are without prejudice to any rights Licensee may have arising under
the Code or other applicable law or regulation.


 


                (d)           Sublicensees.
Licensee may include a provision in any sublicense agreement, that: (i) in
the event of the termination of this Agreement by either Licensor or Licensee, (ii) the
sublicense agreement(s) entered into by Licensee shall remain in full
force and effect with respect to the Sublicensee, provided that the Sublicensee
is in compliance with the terms of the 


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


17

















 


 


sublicense agreement and (iii) the
Licensor (Metabolix) shall be substituted for Licensee (Abbott) for all
purposes under such sublicense agreement.


 


                (e)           Post-Termination
Rights to * Patents and * Patent Applications.


 


(i)            * Patents. Upon expiration of
this Agreement pursuant to Section 11.1 or termination of this Agreement
by * pursuant to Section 11.* or termination of this Agreement by *
pursuant to Section 11.* or Section 11.*, if an * Patent issued prior
to the termination date of this Agreement for which the * Election Period has
not yet expired, then *. Thereafter, * shall have no further rights thereunder.


 


(ii)           Non-Exclusive in the *. The
non-exclusive license granted to * in the * in Section 2.3 shall survive,
if applicable, upon the last to expire of the (x) * or, if applicable, *
or (y) * or, if applicable, *.


 


(iii)          * Patent Application. Upon
expiration of this Agreement pursuant to Section 11.1 or termination of
this Agreement by * pursuant to Section 11. * or termination of this
Agreement by * pursuant to Section 11. * or Section 11. *, * shall
notify *, of any patent application that has been filed with the United States
Patent & Trademark Office claiming an invention (i) solely
directed to the * and (ii) conceived or discovered during the
period beginning on *
and through * by an employee or agent of *, its Affiliates or * by use of the
Patent Rights (an “* Patent Application”). * grants to * a * to obtain a
* license to any such * Patent Application, solely for use *, upon terms and
conditions to be negotiated in good faith by the parties (“* Patent
Application *”). * may exercise this * Patent Application * upon notice to
* within * (*) * after the date of expiration of this Agreement pursuant to Section 11.1
or termination of this Agreement by * pursuant to Section 11. * or
termination of this Agreement by * pursuant to Section 11. * or Section 11.
* (“* Patent Application * Election Period”). In the event that *
exercises the * Patent Application *, the Parties shall enter into good faith
negotiations for a commercially reasonable sublicensing agreement for the
specific field of interest, *.  The
financial terms associated with such agreement will include, to the extent usual
and customary for the applicable field of use, a license fee, annual
maintenance fees, milestones, royalties on net sales and * and the absolute
values for such financial terms will be usual and customary for the scope of
rights and field of use and, *, will reflect the proportionate value provided
by the * relative to any other patents that are encompassed in such agreement.
If the Parties, in good faith negotiations, are unable to reach agreement
within ninety days (90) days after the date upon which * exercised the * Patent
Application * (“* Patent Application Negotiation Period”), then neither Party
shall be under any obligation to continue such negotiations; provided that if the Parties are unable
to agree upon what constitutes commercially reasonable financial terms, then *
may submit the issue to Alternative Dispute Resolution under Section 12.1.


 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


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Notwithstanding anything to the contrary in this Agreement, * understands and agrees that
if * or any of its
Affiliates acquires, is acquired by, or merges or consolidates with a third
party (each a “Change in Control”), the * Patent Application * shall not apply to any
patent that otherwise meets the definition of “* Patent Application” if such
patent application was already owned or otherwise controlled by the other party
to such Change in Control as of the effective date of said Change in Control,
and is the subject of an agreement that would not allow*, its Affiliates and/or said
third party to agree to this provision. 
For example only and not to limit the generality of the foregoing, if * acquires a third party that
owns or is the licensee of a patent application that meets the definition of “*
Patent Application”, and on the effective date of the Change in Control, said
third party had exclusively licensed its rights to said “* Patent Application”,
then the patent application that is the subject of such exclusive license is
not available to * under this
Section.


 


                (f)            Abbott’s Termination Pursuant to Section 11.3.
If a neutral, in accordance with the procedures set forth in Section 12.1,
has rendered a ruling that Metabolix has materially breached Section 8.1,
and either Metabolix has failed to comply with the remedies imposed on it for
such breach (“Adverse Ruling”) within the time period specified therein for
compliance, or such material breach cannot be remedied, upon termination by
Abbott pursuant to Section 11.3, all rights and licenses granted to Abbott
pursuant to Article II shall become fully paid-up, perpetual and
irrevocable rights and licenses.


 


ARTICLE XII


DISPUTE RESOLUTION


 


12.1         Dispute Resolution. In the event
a dispute arises under this Agreement between the Parties, they shall in the
first instance, explore whether the dispute can be resolved without more formal
proceedings.  If the Parties are unable
to resolve the dispute, the Parties shall follow the alternative dispute
resolution provisions provided for in Exhibit A.


 


ARTICLE XIII


MISCELLANEOUS


 


                13.1         Notice.  Any notices required or permitted under this
Agreement shall be in writing, shall specifically refer to this Agreement, and
shall be sent by recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, or delivered by hand to the
following addresses or facsimile numbers of the parties:


 


	
   

  	
  If to Licensor:

  	
   

  	
  Metabolix, Inc.

  
	
   

  	
   

  	
   

  	
  21 Erie Street

  
	
   

  	
   

  	
   

  	
  Cambridge, MA 02139

  
	
   

  	
   

  	
   

  	
  Attention: General
  Counsel

  
	
   

  	
   

  	
   

  	
  Telephone: (617)
  583-1700

  
	
   

  	
   

  	
   

  	
  Facsimile: (617)
  583-1767

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  If to Licensee:

  	
   

  	
  Abbott Laboratories

  



 


 


 


* CONFIDENTIAL TREATMENT
REQUESTED


 


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  Legal Division —
  Domestic Legal Operations

  
	
   

  	
   

  	
  100 Abbott Park Road

  
	
   

  	
   

  	
  Abbott Park, Illinois
  60064-6400 USA

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Attention: Division
  Vice President

  
	
   

  	
   

  	
  Facsimile: (847)
  938-1206

  
	
   

  	
   

  	
   

  
	
  Payments from Licensee
  under Article III shall be sent to:

  
	
   

  	
   

  	
  Metabolix, Inc.

  
	
   

  	
   

  	
  21 Erie Street

  
	
   

  	
   

  	
  Cambridge, MA 02139

  
	
   

  	
   

  	
  Attention:
  Accounts Receivable, or by wire transfer in accordance with wiring
  instructions provided by  

  
	
  Licensor
  from time to time.

  
	
   

  
	
  Reports from the
  Licensee under Article IV shall be sent to:

  
	
   

  	
   

  	
  Metabolix, Inc.

  
	
   

  	
   

  	
  21 Erie Street

  
	
   

  	
   

  	
  Cambridge, MA 02139

  
	
   

  	
   

  	
  Attention: Chief
  Scientific Officer

  



 


 


                All notices under this Agreement shall be deemed
effective upon receipt.  A party may
change its contact information immediately upon written notice to the other
party in the manner provided in this Section.


 


                13.2         Governing
Law.  This Agreement and all disputes
arising out of or related to this Agreement, or the performance, enforcement,
breach or termination hereof, and any remedies relating thereto, shall be
construed, governed, interpreted and applied in accordance with the laws of
Illinois, without regard to conflict of laws principles, except that questions
affecting the construction and effect of any patent shall be determined by the law
of the country in which the patent shall have been granted.


 


                13.3         Confidentiality.
During the Term and for a period of * (*) years after the expiration or
termination of this Agreement, each party agrees not to disclose Confidential
Information received from the other to any third person and not to use
Confidential Information for any purpose other than as indicated in this
Agreement, without the prior written approval of the disclosing Party.  Confidential Information shall include all
information provided under this Agreement, except any portion thereof which is:
(a) known to the receiving Party, as evidenced by its written records,
prior to receipt thereof under this Agreement; (b) disclosed to the
receiving Party by a third person after the full execution of this Agreement,
and that third person has a legal right to make such disclosure; (c) or
becomes part of the public domain other than through breach of this Agreement
by recipient; or (d) independently developed by or for the receiving Party
as evidenced by its written records, without reference to Confidential
Information received from the disclosing Party. If, in the opinion of the
receiving Party’s counsel, any of the disclosing Party’s Confidential
Information is required to be disclosed pursuant to law, regulation, or court
order, the receiving Party shall give the disclosing Party prompt, written
notice (and in any case at least fifteen (15) business days notice) in order to


 


 


 


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REQUESTED


 


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allow the disclosing
Party to take whatever action it deems necessary to protect its Confidential
Information. In the event that no protective order or other remedy is obtained,
or the disclosing Party waives compliance with the terms of this Agreement, receiving
Party will furnish only that portion of the Confidential Information which
receiving Party is advised by counsel is legally required.


 


13.4         Force Majeure. Neither party
will be responsible for delays resulting from causes beyond the reasonable control
of such party, including without limitation fire, explosion, flood, war,
strike, or riot, provided that the non-performing party uses commercially
reasonable efforts to avoid or remove such causes of nonperformance and
continues performance under this Agreement with reasonable dispatch whenever
such causes are removed.


 


                13.5         Amendment
and Waiver. This Agreement may be amended, supplemented, or otherwise
modified only by means of a written instrument signed by both parties. Any
waiver of any rights or failure to act in a specific instance shall relate only
to such instance and shall not be construed as an agreement to waive any rights
or fail to act in any other instance, whether or no similar.


 


                13.6         Severability.
If any provision of this Agreement is held by a court of competent jurisdiction
to be invalid or unenforceable, it shall be modified, if possible, to the
minimum extent necessary to make it valid and enforceable or, if such
modification is not possible, it shall be stricken and the remaining provisions
shall remain in full force and effect; provided, however, that if a provision
is stricken as to materially affect the economic benefits of this Agreement,
the Party adversely affected may terminate this Agreement upon sixty (60) days
written notice to the other Party.


 


                13.7         Binding
Effect. This Agreement shall be binding upon and inure to the benefit of
the parties and their respective permitted successors and assigns.


 


                13.8         Headings.
All headings are for convenience only and shall not affect the meaning of any
provision of this Agreement.


 


                13.9         Entire
Agreement. Prior to the execution of this Agreement, the Parties have had
numerous discussions, conversations and negotiations, and have generated
correspondence, writings and other memoranda with respect to the subject matter
of this Agreement; notwithstanding which, this Agreement is intended to define
the full extent of the Parties’ respective agreements, arrangements and
obligations with respect to the subject matter hereof and each Party represents
that it is not relying on any such other discussions, conversations,
negotiations, correspondence, writings and memoranda in executing and
delivering this Agreement or performing its respective obligations hereunder. This Agreement
shall not be changed or modified orally, but only by an instrument in writing
signed by both parties.


 


13.10       Counterparts. This Agreement may
be executed in two (2) or more counterparts, each of which shall be deemed
an original and both of which, taken together shall constitute one and the same
instrument.  Signatures to this Agreement
transmitted by facsimile transmission, by electronic mail in “portable document
format” (“.pdf”) form, or by any other electronic means 


 


 


 


21

















 


 


intended to preserve the
original graphic and pictorial appearance of a document, will have the same
effect as physical delivery of the paper document bearing the original
signature.


 


[Remainder of page intentionally left blank.]


 


IN WITNESS WHEREOF, the
parties have caused this Agreement to be executed by their duly authorized
representatives.


 


	
  METABOLIX, INC.

  	
  ABBOTT LABORATORIES

  
	
   

  	
   

  
	
  By:

  	
  /s/ Jay Kouba

  	
   

  	
  By:

  	
  /s/ Sean E. Murphy

  	
   

  
	
   

  	
  (Signature)

  	
   

  	
  (Signature)

  
	
   

  	
   

  
	
  JAY KOUBA

  	
   

  	
  SEAN E. MURPHY

  	
   

  
	
  (Printed Name)

  	
  (Printed Name)

  
	
   

  	
   

  
	
  President & CEO

  	
   

  	
  VP Business Development

  	
   

  
	
  (Title)

  	
  (Title) 

  
	
   

  	
   

  
	
  November 9, 2007

  	
   

  	
  11/16/07

  	
   

  
	
  (Date)

  	
  (Date)

  



 


 


[SIGNATURE
PAGE TO THE EXCLUSIVE LICENSE AGREEMENT]


 


 


22

















 


 


EXHIBIT A


ALTERNATIVE DISPUTE RESOLUTION


 


The Parties recognize that from
time to time a dispute may arise relating to either Party’s rights or
obligations under this Agreement. The Parties agree that any such dispute shall
be resolved by the Alternative Dispute Resolution (“ADR”) provisions set forth
in this Exhibit, the result of which shall be binding upon the Parties.


 


To begin the ADR process, a Party
first must send written notice of the dispute to the other Party for attempted
resolution by good faith negotiations between their respective presidents (or
their designees) of the affected subsidiaries, divisions, or business units
within twenty-eight (28) days after such notice is received (all references to “days”
in this ADR provision are to calendar days). If the matter has not been
resolved within twenty-eight (28) days of the notice of dispute, or if the
Parties fail to meet within such twenty-eight (28) days, either Party may
initiate an ADR proceeding as provided herein. The Parties shall have the right
to be represented by counsel in such a proceeding.


 


1.             To
begin an ADR proceeding, a Party shall provide written notice to the other
Party of the issues to be resolved by ADR. Within fourteen (14) days after its
receipt of such notice, the other Party may, by written notice to the Party
initiating the ADR, add additional issues to be resolved within the same ADR.


 


2.             Within
twenty-one (21) days following the initiation of the ADR proceeding, the
Parties shall select a mutually acceptable independent, impartial and conflicts-free
neutral to preside in the resolution of any disputes in this ADR proceeding. If
the Parties are unable to agree on a mutually acceptable neutral within such
period, each Party will select one independent, impartial and conflicts-free
neutral and those two neutrals will select a third independent, impartial and
conflicts-free neutral within ten (10) days thereafter.  None of the
neutrals selected may be current or former employees, officers or directors of
either Party, its subsidiaries or affiliates.


 


3.             No
earlier than twenty-eight (28) days or later than fifty-six (56) days after
selection, the neutral(s) shall hold a hearing to resolve each of the
issues identified by the Parties. The ADR proceeding shall take place at a
location agreed upon by the Parties. If the Parties cannot agree, the neutral(s) shall
designate a location other than the principal place of business of either Party
or any of their subsidiaries or affiliates.


 


4.             At
least seven (7) days prior to the hearing, each Party shall submit the
following to the other Party and the 

neutral(s):


 


(a)           a
copy of all exhibits on which such Party intends to rely in any oral or written
presentation to the neutral;


 


(b)           a
list of any witnesses such Party intends to call at the hearing, and a short
summary of the anticipated testimony of each witness;


 


 


 


23

















 


 


(c)           a
proposed ruling on each issue to be resolved, together with a request for a
specific damage award or other remedy for each issue. The proposed rulings and
remedies shall not contain any recitation of the facts or any legal arguments
and shall not exceed one (1) page per issue. The Parties agree
that neither side shall seek as part of its remedy any punitive damages.


 


(d)           a
brief in support of such Party’s proposed rulings and remedies, provided that
the brief shall not exceed twenty (20) pages. This page limitation shall
apply regardless of the number of issues raised in the ADR proceeding.


 


Except as expressly set
forth in subparagraphs 4(a) - 4(d), no discovery shall be required or
permitted by any means, including depositions, interrogatories, requests for
admissions, or production of documents.


 


5.             The
hearing shall be conducted on two (2) consecutive days and shall be
governed by the following rules:


 


(a)           Each
Party shall be entitled to five (5) hours of hearing time to present its
case. The neutral shall determine whether each Party has had the five (5) hours
to which it is entitled.


 


(b)           Each
Party shall be entitled, but not required, to make an opening statement, to
present regular and rebuttal testimony, documents or other evidence, to
cross-examine witnesses, and to make a closing argument. Cross-examination of
witnesses shall occur immediately after their direct testimony, and cross-examination
time shall be charged against the Party conducting the cross-examination.


 


(c)           The
Party initiating the ADR shall begin the hearing and, if it chooses to make an
opening statement, shall address not only issues it raised but also any issues
raised by the responding Party. The responding Party, if it chooses to make an
opening statement, also shall address all issues raised in the ADR. Thereafter,
the presentation of regular and rebuttal testimony and documents, other
evidence, and closing arguments shall proceed in the same sequence.


 


(d)           Except
when testifying, witnesses shall be excluded from the hearing until closing
arguments.


 


(e)           Settlement
negotiations, including any statements made therein, shall not be admissible
under any circumstances. Affidavits prepared for purposes of the ADR hearing
also shall not be admissible. As to all other matters, the neutral(s) shall
have sole discretion regarding the admissibility of any evidence.


 


6.             Within
seven (7) days following completion of the hearing, each Party may submit
to the other Party and the neutral(s) a post-hearing brief in support of
its proposed rulings and remedies, provided that such brief shall not contain
or discuss any new evidence and shall 


 


 


 


24

















 


 


not exceed ten (10) pages.
This page limitation shall apply regardless of the number of issues raised
in the ADR proceeding.


 


7.             The
neutral(s) shall rule on each disputed issue within fourteen (14)
days following completion of the hearing. Such ruling shall adopt in its
entirety the proposed ruling and remedy of one of the Parties on each disputed
issue but may adopt one Party’s proposed rulings and remedies on some issues
and the other Party’s proposed rulings and remedies on other issues. The
neutral(s) shall not issue any written opinion or otherwise explain the
basis of the ruling.


 


8.             The
neutral(s) shall be paid a reasonable fee plus expenses. These fees and
expenses, along with the reasonable legal fees and expenses of the prevailing
Party (including all expert witness fees and expenses), the fees and expenses
of a court reporter, and any expenses for a hearing room, shall be paid as
follows:


 


(a)           If
the neutral(s) rule(s) in favor of one Party on all disputed issues
in the ADR, the losing Party shall pay 100% of such fees and expenses.


 


(b)           If
the neutral(s) rule(s) in favor of one Party on some issues and the
other Party on other issues, the neutral(s) shall issue with the rulings a
written determination as to how such fees and expenses shall be allocated
between the Parties. The neutral(s) shall allocate fees and expenses in a
way that bears a reasonable relationship to the outcome of the ADR, with the
Party prevailing on more issues, or on issues of greater value or gravity,
recovering a relatively larger share of its legal fees and expenses.


 


                9.             The
rulings of the neutral(s) and the allocation of fees and expenses shall be
binding, non-reviewable, and non-appealable, and may be entered as a final
judgment in any court having jurisdiction.


 


                10.           Except
as provided in paragraph 9 or as required by law, the existence of the dispute,
any settlement negotiations, the ADR hearing, any submissions (including
exhibits, testimony, proposed rulings, and briefs), and the rulings shall be
deemed Confidential Information. The neutral(s) shall have the authority
to impose sanctions for unauthorized disclosure of Confidential Information.


 


                11.           All
ADR hearings shall be conducted in the English language.


 


 


 


 


25

















 


 


EXHIBIT B


Patents and Patent Applications


 


1.               *


 


2.               *


 


3.               *


 


4.               *


 


5.               *


 


6.               *


 


 


 


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