FAITH BY THE PARTIES UP
TO [***] ([***]) [***], ROCHE SHALL ASSIST SYNTA AS REASONABLY REQUESTED IN
(A) CAUSING THE ASSIGNMENT TO SYNTA OF ANY AND ALL APPLICABLE THIRD PARTY
MANUFACTURING AND SUPPLY AGREEMENTS FOR SUCH LICENSED PRODUCT, TO THE EXTENT
POSSIBLE, OR (B) TRANSFERRING THE MANUFACTURING PROCESS FOR SUCH LICENSED
PRODUCT TO SYNTA OR A THIRD PARTY CONTRACT MANUFACTURER ENGAGED BY SYNTA.
SUCH
ASSISTANCE SHALL INCLUDE ASSISTING SYNTA IN DEVELOPING AND EXECUTING A
REASONABLE TRANSFER AND PROVIDING REASONABLE TECHNICAL AND REGULATORY ASSISTANCE
AND DOCUMENTATION RELATING TO THE MANUFACTURE, TESTING AND SUPPLY OF SUCH
LICENSED PRODUCT AS NECESSARY FOR SYNTA TO BE QUALIFIED OR TO QUALIFY A THIRD
PARTY FOR THE
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934,
as amended.
51
MANUFACTURING OF SUCH LICENSED PRODUCT.
NOTWITHSTANDING THE ABOVE, IF AT THE
TIME OF TERMINATION OF THIS AGREEMENT, THE TRANSFER OF DEVELOPMENT
RESPONSIBILITY PER SECTION 2.7.1 FOR SUCH LICENSED PRODUCT HAS NOT YET OCCURRED,
THEN THE TRANSFER ACTIVITIES REGARDING MANUFACTURE AND TESTING OF SUCH LICENSED
PRODUCT SHALL BE LIMITED TO THE TRANSFER OF DOCUMENTS AND SHIPMENT OF SUCH
LICENSED PRODUCT, INCLUDING REFERENCE MATERIALS AND STABILITY SAMPLES, AT NO
COST TO SYNTA.
12.6.6.
LICENSE GRANTS TO SYNTA.
ROCHE HEREBY GRANTS TO SYNTA AN
EXCLUSIVE, ROYALTY-BEARING (AS SET FORTH IN SECTION 12.6.8 BELOW), IRREVOCABLE,
PERPETUAL LICENSE, WITH THE RIGHT TO GRANT SUBLICENSES, UNDER THE ROCHE PATENT
RIGHTS, ROCHE KNOW-HOW, AND ROCHE'S INTEREST IN ANY JOINT PATENT RIGHTS OR JOINT
KNOW-HOW, IN EACH CASE COVERING COLLABORATION COMPOUNDS, LICENSED COMPOUNDS OR
LICENSED PRODUCTS, TO RESEARCH, DEVELOP, MANUFACTURE, HAVE MANUFACTURED, USE,
COMMERCIALIZE AND IMPORT SUCH COLLABORATION COMPOUNDS AND LICENSED COMPOUNDS (OR
PRODUCTS CONTAINING ANY SUCH COLLABORATION COMPOUND OR LICENSED COMPOUND AS AN
ACTIVE INGREDIENT) OR LICENSED PRODUCTS; PROVIDED, THAT SYNTA SHALL NOT EXERCISE
SUCH LICENSE UNLESS AND UNTIL THIS AGREEMENT IS TERMINATED BY ROCHE PURSUANT TO
SECTION 12.3 (TERMINATION FOR CONVENIENCE), OR BY SYNTA PURSUANT TO SECTION 12.2
(TERMINATION FOR NO ACTIVITY), 12.4 (TERMINATION FOR CAUSE) OR 12.5 (TERMINATION
IF ROCHE CHALLENGES SYNTA PATENT RIGHTS);
12.6.7.
PROSECUTION AND ENFORCEMENT.
THE PROVISIONS OF SECTIONS
8.2 (PROSECUTION AND MAINTENANCE OF PATENT RIGHTS), 8.3 (THIRD PARTY
INFRINGEMENT), 8.4 (PATENT INVALIDITY CLAIM), 8.6 (CERTIFICATION UNDER DRUG
PRICE COMPETITION AND PATENT RESTORATION ACT) AND 8.7 (COOPERATION) SHALL REMAIN
IN EFFECT WITH RESPECT TO THE ROCHE PATENT RIGHTS, ROCHE KNOW-HOW, JOINT PATENT
RIGHTS AND JOINT KNOW-HOW LICENSED TO SYNTA UNDER SECTION 12.6.6 ABOVE,
PROVIDED, THAT SYNTA SHALL HAVE THE FIRST RIGHT, AT ITS EXPENSE, TO PROSECUTE,
MAINTAIN, ENFORCE OR DEFEND, OR INITIATE LITIGATION WITH RESPECT TO, THE ROCHE
PATENT RIGHTS OR ROCHE KNOW-HOW UNDER SUCH PROVISIONS, WITH ROCHE HAVING THE
STEP-IN RIGHTS OF THE NON-INITIATING PARTY AS SET FORTH THEREIN;
12.6.8.
ROYALTIES PAYABLE TO ROCHE.
IN THE EVENT THAT THIS
AGREEMENT IS TERMINATED AFTER THE EXPIRATION OF THE RESEARCH TERM, SYNTA SHALL
PAY ROCHE, ON A COUNTRY-BY-COUNTRY AND LICENSED PRODUCT-BY-LICENSED PRODUCT
BASIS,