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S-1
VITAE PHARMACEUTICALS, INC filed this Form S-1 on 08/12/2014
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respect to which the Serious Material Breach relate) based on the ****.

 

(iii)          In case of Serious Material Breach resulting in BI’s loss of exclusivity in either the **** or in **** (as evidenced by BI Product(s) facing Generic Competition in those markets), Vitae shall, no later than **** from the date of such termination, assign, transfer and convey to BI, free of charge, all of Vitae’s co-ownership interest in the Joint Intellectual Property, following which action such Joint Intellectual Property shall be owned exclusively by BI. Furthermore, Vitae shall assign, also on behalf of its Affiliates, to BI co-ownership rights in such Vitae Patent(s) which Cover(s) the Research, Development and Commercialization of the BACE Collaboration Compound(s) or Product(s), as applicable, to which the Serious Material Breach relates and which BACE Collaboration Compound(s) or Product(s) is or are Researched, Developed or Commercialized, as applicable, as of the effective date of such termination, and any Vitae Patent with respect to which co-ownership is assigned to BI pursuant to this Section 14.4.1(a)(iii) will be deemed a Joint Patent. Notwithstanding any statement to the contrary contained in this Agreement, all Vitae assignments effected pursuant to this Section 14.4.1(a)(iii) will be deemed to have occurred during the Term.

 

(iv)          If the Agreement was terminated by BI pursuant to Section 14.2, BI shall retain all of its rights to bring an action (through arbitration under Section 15.7) against Vitae for damages and any other available remedies in law or equity.

 

(b)           Terminations Other Than Material Breach by Vitae. In the event that this Agreement is terminated by BI or Vitae for reasons other than material breach by Vitae:

 

(i)            All licenses granted by Vitae to BI under this Agreement shall terminate;

 

(ii)           All Products containing (1) a BI BACE Compound that was previously selected as a Development Candidate or (2) a BACE Collaboration Compound shall be deemed to be Terminated Products;

 

(iii)          If the Agreement was terminated by Vitae pursuant to Section 14.2, Vitae shall retain all of its rights to bring an action (through arbitration under Section 15.7) against BI for damages and any other available remedies in law or equity;

 

(iv)          Vitae shall retain its rights granted by BI under Section 2.1.2(a)(ii) and 2.1.2(b)(ii) with the respective sublicense rights under 2.2.2; and

 

(v)           BI shall, no later than **** from the date of such termination, assign, transfer and convey to Vitae, free of charge, all of BI’s co-ownership interest in the Vitae Patents assigned to it pursuant to Section 13.1.2, following which action such Patents shall be owned exclusively by Vitae and all prior licenses, dispositions or assignments made by BI with respect thereto shall automatically become void and cease to be of any further effect.

 

****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.

 

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14.4.2     Supply of Compound. In the event this Agreement is terminated by either Party for any reason prior to or at the end of the Initial Funded Research Period, each Party shall, within **** after such termination becomes effective, provide the other Party with half of the BI Synthesized Compounds or Vitae Synthesized Compounds as set forth in Section 4.5.

 

14.4.3     Terminated Products. Notwithstanding anything else, with respect to each Terminated Product:

 

(a)           BI shall, at its sole expense, promptly transfer to Vitae, or shall cause its designee(s) to transfer to Vitae, ownership of all regulatory filings, Marketing Authorization Approvals, material correspondence, made or filed for the Terminated Product (to the extent that any are held in BI’s or such designee(s)’s name), such transfer to be as permitted by any Third Party licenses or other such prior rights and applicable Laws and regulations, and BI shall otherwise cooperate to permit Vitae to fully exercise its rights hereunder;

 

(b)           BI grants to Vitae an exclusive (even as to the BI Group), royalty-free, worldwide, fully paid-up, perpetual, irrevocable, transferable, sublicensable license (or sublicense, as applicable) in the Field under the BI Intellectual Property (excluding in-licensed BI Patents), and BI’s rights in the Joint Intellectual Property and with respect to in-licensed BI Patents as far as legally possible and equal to the scope of the license granted to BI a sub-license only to the extent necessary to make, have made, use, register, sell, offer to sell, import, export, exploit, Research, Develop and Commercialize any Terminated Products.

 

(c)           The Parties will negotiate in good faith the granting of a non-exclusive, license to BI Product Development Intellectual Property on reasonable and customary commercial terms to be mutually agreed between the Parties only to the extent necessary to make, have made, use, register, sell, offer to sell, import, export, exploit, Research, Develop and Commercialize any Terminated Products. For the avoidance of doubt, such license does not include any other implied license(s) to other intellectual property in the control of BI Group for any other BI products currently being researched, developed or marketed either alone or in combination with any Product; Should the Parties are not able to agree, despite their good faith negotiations, on a license agreement within a period of **** after termination, unless the Parties have agreed to extend the negotiation period, the terms and conditions of such license agreement shall be decided by the arbitrator pursuant to Section 15.7 follows: Within **** upon selection of the arbitrator each Party shall submit one written proposal for the afore mentioned license agreement. The arbitrator shall select one of the two proposals for such a license agreement. His decision shall be based solely on the criteria which of the proposals best reflects the terms on which the Parties have agreed so far, and standard provisions customary to such kind of agreements in the pharmaceutical industry. The arbitrator shall come to a decision within ****. The scope of authority of the arbitrator shall be limited to the aforementioned selection, and the license agreement so selected shall be binding upon the Parties. The decision of the arbitrator shall be binding on the Parties. The Party whose proposal has not been followed by the arbitrator shall bear the costs of this arbitration procedure.

 

(d)           In the event of material breach by BI pursuant to Section 14.2, then BI shall assign to Vitae any and all Trademarks (and associated goodwill) for relating

 

****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.

 

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