Technology Exchange And Development Agreement

EXHIBIT 10.2


EXECUTION COPY


Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


TECHNOLOGY EXCHANGE AND DEVELOPMENT AGREEMENT


This Technology Exchange and Development Agreement dated the 9th day of March, 2001 (the "Effective Date") is by and between Millennium Pharmaceuticals, Inc., a corporation organized and existing under the laws of the State of Delaware and having its principal office at 75 Sidney Street, Cambridge, Massachusetts 02139 ("Millennium") and Abbott Laboratories, a corporation organized and existing under the laws of the State of Illinois having its principal office at 100 Abbott Park Road, Abbott Park, Illinois 60064 ("Abbott").


INTRODUCTION


1. Millennium and Abbott have each developed certain process technologies which they are willing to exchange, and which are potentially useful in the discovery and development of pharmaceutical products.


2. Millennium and Abbott each desire to co-develop certain additional process technologies which are potentially useful in the discovery and development of pharmaceutical products.


NOW, THEREFORE, Millennium and Abbott agree as follows:


ARTICLE 1
DEFINITIONS, EXHIBITS AND SCHEDULES


When used in this Agreement, each of the following terms shall have the meanings set forth in this Article I:


1.1 "AFFILIATE". Affiliate means any corporation, company, partnership, joint venture and/or firm which controls, is controlled by, or is under common control with a specified person or entity. For purposes of this Section 1.1, "control" shall be presumed to exist if one of the following conditions is met: (a) in the case of corporate entities, direct or indirect ownership of at least fifty percent (50%) of the stock or shares having the right to vote for the election of directors, or (b) in the case of non-corporate entities, direct or indirect ownership of at least fifty percent (50%) of the equity interest with the power to direct the management and policies of such non-corporate entities. The Parties acknowledge that in the case of certain entities


organized under the laws of certain countries outside of the United States, the maximum percentage ownership permitted by law for a foreign investor may be less than fifty percent (50%), and that in such case such lower percentage shall be substituted in the preceding sentence, provided that such foreign investor has the power to direct the management and policies of such entity. For the purpose of this Agreement, TAP Pharmaceutical Products Inc. and its subsidiaries shall not be deemed Affiliates of Abbott.


1.2 "ABBOTT BACKGROUND TECHNOLOGY". Abbott Background Technology means Process Technology that does not constitute Abbott Development Program Technology or Abbott Exchange Technology and (a) is solely or jointly owned by Abbott or any of its Affiliates or is licensed in by Abbott or any of its Affiliates from Third Parties, in each case as of the Effective Date or during the Development Term (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties), and (b) is specified in the Technology Development Plan and is used by the Parties in the Development Project.


1.3 "ABBOTT BACKGROUND TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Abbott Background Technology Patent Rights and Copyrights means Patent Rights and copyrights that cover Abbott Background Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.4 "ABBOTT DEVELOPMENT PROGRAM TECHNOLOGY". Abbott Development Program Technology means Process Technology which is (a) developed by Abbott or any of its Affiliates alone or jointly by Abbott and Millennium in the course of Technology Development activities under Article V, or (b) licensed in by Abbott or any of its Affiliates from Third Parties pursuant to the Technology Development Plan, in each case during the Development Term (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.5 "ABBOTT DEVELOPMENT PROGRAM TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Abbott Development Program Technology Patent Rights and Copyrights means Patent Rights and copyrights that cover Abbott Development Program Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.6 "ABBOTT EXCHANGE TECHNOLOGY". Abbott Exchange Technology means the Process Technology described in EXHIBIT A to this Agreement which (a) is solely or jointly owned by Abbott or any of its Affiliates, or (b) is licensed by Abbott or its Affiliates from Third Parties, in each case as of the date of Delivery with respect to the Abbott Exchange Technology and as of the date of delivery with respect to the Upgrade to the Abbott Exchange Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties). Abbott Exchange Technology specifically excludes Direct Licensed Software and Sublicensed Software.


1.7 "ABBOTT EXCHANGE TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Abbott Exchange Technology Patent Rights and Copyrights means, with respect to each component of the Abbott


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Exchange Technology, Patent Rights and copyrights that are conceived and/or reduced to practice prior to the expiration of the Upgrade Term and that cover such component of Abbott Exchange Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.8 "ABBOTT TECHNOLOGY". Abbott Technology means Abbott Background Technology, solely owned Abbott Development Program Technology, Abbott Exchange Technology, and Sublicensed Software provided by Abbott.


1.9 "BACKGROUND TECHNOLOGY". Background Technology means Abbott Background Technology and/or Millennium Background Technology.


1.10 "CONFIDENTIAL INFORMATION". Confidential Information means all proprietary materials, know-how or other information (including software), whether or not patentable, regarding a Party's technology, products, business information or objectives, which is designated as confidential in writing by the disclosing Party, whether by letter or by the use of an appropriate stamp or legend, prior to or at the time any such material, know-how or other information is disclosed by the disclosing Party to the other Party. Notwithstanding the foregoing to the contrary, materials, know-how or other information which is orally, electronically or visually disclosed by a Party, or is disclosed in writing without an appropriate letter, stamp or legend, shall constitute Confidential Information of a Party (a) if the disclosing Party, within thirty (30) days after such disclosure, delivers to the other Party a written document or documents describing the materials, know-how or other information and referencing the place and date of such oral, visual, electronic or written disclosure and the names of the persons to whom such disclosure was made, or (b) such material, know-how or information is of the type that is customarily considered to be confidential information by persons engaged in activities that are substantially similar to the activities being engaged in by the Parties (including without limitation software source code). Notwithstanding the foregoing, any technical or financial information of a Party disclosed at a meeting of the Joint Technology Team shall constitute Confidential Information of a Party unless otherwise specified.


1.11 "DEVELOPMENT PROGRAM TECHNOLOGY". Development Program Technology means Abbott Development Program Technology and/or Millennium Development Program Technology.


1.12 "DEVELOPMENT TERM". Development Term means the period beginning on the Effective Date and ending on the second anniversary of the Effective Date.


1.13 "DIRECT LICENSED SOFTWARE". Direct Licensed Software means the software to be obtained and/or licensed directly from Third Parties by Abbott or Millennium in connection with the Technology Exchange.


1.14 "EXCHANGE TECHNOLOGY". Exchange Technology means Abbott Exchange Technology and/or Millennium Exchange Technology.


1.15 "EXCHANGE TERM". Exchange Term means the period beginning on the Effective Date and ending on the second anniversary of the Effective Date.


1.16 "EXECUTIVE OFFICERS". Executive Officers means the Chief Executive Officer of Abbott (or an executive of Abbott designated by such Chief Executive Officer) and the Chief


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Executive Officer of Millennium (or an executive of Millennium designated by such Chief Executive Officer).


1.17 "FIELD". Field means any and all fields of use other than the Prohibited Field.


1.18 "JOINT EXECUTIVE COMMITTEE". Joint Executive Committee means a committee comprised of an appropriate number of representatives of Abbott and Millennium to plan and oversee the activities contemplated by this Agreement, as well as the activities of the Parties under the Metabolic Agreement.


1.19 "JOINT TECHNOLOGY TEAM". Joint Technology Team means a committee comprised of an appropriate number of representatives of Abbott and Millennium to plan and oversee the Technology Exchange and the Technology Development, as more fully described in Articles III and V.


1.20 "METABOLIC AGREEMENT". Metabolic Agreement means the Collaboration and License Agreement between the Parties of even date herewith.


1.21 "MILLENNIUM BACKGROUND TECHNOLOGY". Millennium Background Technology means Process Technology that does not constitute Millennium Development Program Technology or Millennium Exchange Technology and (a) is solely or jointly owned by Millennium or any of its Affiliates or is licensed in by Millennium or any of its Affiliates from Third Parties, in each case as of the Effective Date or during the Development Term (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties), and (b) is specified in the Technology Development Plan and is used by the Parties in the Development Project.


1.22 "MILLENNIUM BACKGROUND TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Millennium Background Technology Patent Rights and Copyrights means Patent Rights and copyrights that cover Millennium Background Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.23 "MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY". Millennium Development Program Technology means Process Technology which is (a) developed by Millennium or any of its Affiliates along or jointly by Millennium and Abbott in the course of Technology Development activities under Article V, or (b) licensed in by Millennium or any of its Affiliates from Third Parties pursuant to the Technology Development Plan, in each case during the Development Term (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.24 "MILLENNIUM DEVELOPMENT PROGRAM TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Millennium Development Program Technology Patent Rights and Copyrights means Patent Rights and copyrights that cover Millennium Development Program Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.25 "MILLENNIUM EXCHANGE TECHNOLOGY". Millennium Exchange Technology means the Process Technology described in EXHIBIT B to this Agreement and which (a) is solely or


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jointly owned by Millennium or any of its Affiliates or (b) is licensed by Millennium or its Affiliates from Third Parties, in each case as of the date of Delivery with respect to the Millennium Exchange Technology and as of the date of delivery with respect to the Upgrade to the Millennium Exchange Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties). Millennium Exchange Technology specifically excludes Direct Licensed Software and Sublicensed Software.


1.26 "MILLENNIUM EXCHANGE TECHNOLOGY PATENT RIGHTS AND COPYRIGHTS". Millennium Exchange Technology Patent Rights and Copyrights means, with respect to a component of the Millennium Exchange Technology, Patent Rights and copyrights that are conceived and/or reduced to practice prior to the expiration of the Upgrade Term and that cover such component of Millennium Exchange Technology (but only to the extent that transfer or sublicensing is permitted by any applicable agreements with Third Parties).


1.27 "MILLENNIUM TECHNOLOGY". Millennium Technology means Millennium Background Technology, solely owned Millennium Development Program Technology, Millennium Exchange Technology, and Sublicensed Software provided by Millennium.


1.28 "PARTY". Party means Abbott or Millennium; "PARTIES" means Abbott and Millennium.


1.29 "PATENT RIGHT(S)". Patent Right(s) means all existing patents and patent applications and all patent applications hereafter filed, including any continuations, continuations-in-part (but solely to the extent claims are directed to inventions included in Background Technology, Development Program Technology or Exchange Technology), divisions, provisionals or any substitute applications, any patent issued with respect to any such patent applications, any reissue, reexamination, renewal or extension (including any supplemental patent certificate) of any such patent, and any confirmation patent or registration patent or patent of addition based on any such patent, and all foreign counterparts of any of the foregoing.


1.30 "PROCESS TECHNOLOGY". Process Technology means (a) technology in the form of methods, systems, programs, technology and software, together with know-how related thereto, and (b) Product-Process Tool Technology. Process Technology shall only include Product Technology to the extent that it is for use as Product-Process Tool Technology.


1.31 "PRODUCT-PROCESS TOOL TECHNOLOGY". Product-Process Tool Technology means Product Technology that is used as a tool for the discovery and/or development of Process Technology or that is necessary for the operation, verification or calibration of Process Technology. Product-Process Tool Technology shall include materials, and data related thereto, that are required to discover, develop, operate, verify or calibrate procedures that are part of Process Technology, provided that the utility of such materials and data in such procedures is not specific for a particular product or service.


1.32 "PRODUCT TECHNOLOGY". Product Technology means technology in the form of biological materials (e.g. genes, gene fragments, vectors, cell lines, tissues, fluids, cells,


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organelles, DNA and DNA fragments, proteins and peptides) and chemical compounds (e.g. small molecule and natural product compounds and libraries) and data relating to the foregoing.


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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


1.33 "PROHIBITED FIELD". Prohibited Field means (a) the research, development or commercialization of (i) [**] in the [**], (ii) [**], or (iii) [**] for the [**] of the [**]; (b) [**] to the [**] in subsection (a) above; and (c) [**]. Notwithstanding the foregoing, [**](each as defined by the U.S. Food and Drug Administration) [**] within the Prohibited Field.


1.34 "SUBLICENSED SOFTWARE". Sublicensed Software means the software owned by Third Parties that is capable of being sublicensed and is to be sublicensed by Abbott or Millennium to the other Party in connection with the Technology Exchange.


1.35 "TECHNOLOGY DEVELOPMENT". Technology Development means the technology development activities to be undertaken by the Parties pursuant to Article V and the Technology Development Plan.


1.36 "TECHNOLOGY DEVELOPMENT PLAN". Technology Development Plan means a plan to be developed by the Joint Technology Team for the Technology Development, to be updated as necessary during the Development Term, setting forth, among other things, the matters described in Section 5.4.


1.37 "TECHNOLOGY EXCHANGE". Technology Exchange means the technology exchange activities to be undertaken by the Parties pursuant to Article III and the Technology Exchange Plan.


1.38 "TECHNOLOGY EXCHANGE PLAN". Technology Exchange Plan means a plan to be developed by the Joint Technology Team for a Technology Exchange, to be updated as necessary during the Exchange Term, setting forth, among other things, the matters described in Section 3.4.


1.39 "TECHNOLOGY EXCHANGE SERVICES". Technology Exchange Services means those services related to Technology Exchange to be provided by a Party to the other Party as set forth in a Technology Exchange Plan.


1.40 "TERRITORY". Territory means all the countries in the world.


1.41 "THIRD PARTY". Third Party means any person or entity other than a Party and its Affiliates.


1.42 "THIRD PARTY SOFTWARE". Third Party Software means Direct Licensed Software and Sublicensed Software.


1.43 "UPGRADE TO ABBOTT EXCHANGE TECHNOLOGY". Upgrade to Abbott Exchange Technology means [**] to a component (i.e., [**] components detailed in EXHIBIT A) of the Abbott Exchange Technology (which component is delivered to Millennium during the Exchange Term) which becomes available during the Upgrade Term for use in the then-current Abbott Supported Environment (i.e., hardware, software and other infrastructure then being


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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


specified by Abbott for the Upgrade to the component of the Abbott Exchange Technology pursuant to Section 3.1(h)) or for use in an agreed upon Minimum Environment. Upgrades shall include [**] procedures or otherwise.


1.44 "UPGRADE TO MILLENNIUM EXCHANGE TECHNOLOGY". Upgrade to Millennium Exchange Technology means [**] a component (i.e., [**] components detailed in EXHIBIT B) of the Millennium Exchange Technology (which component is delivered to Abbott during the Exchange Term) which becomes available during the Upgrade Term for use in the then-current Millennium Supported Environment (i.e., hardware, software and other infrastructure then being specified by Millennium for the Upgrade to the component of the Millennium Exchange Technology pursuant to Section 3.1(h)) or for use in an agreed upon Minimum Environment. Upgrades shall include [**] procedures or otherwise.


1.45 "UPGRADE TERM". Upgrade Term means, with respect to a component of Exchange Technology transferred to a receiving Party, the period commencing on the date on which the Delivery Criteria are met for such component of Exchange Technology and ending on the [**] anniversary thereof, it being understood that if a Party proceeds with the installation of such component of Exchange Technology in an agreed upon Minimum Environment, the Delivery Criteria for such component [**] in accordance with Section 3.5(a), and that, in any such case, there shall be [**]such component of Exchange Technology.


1.46 ADDITIONAL DEFINITIONS. Each of the following definitions is set forth in the section of this Agreement indicated below:


DEFINITION SECTION/ARTICLE
---------- ---------------

Abbott Introduction
Abbott Indemnified Parties 12.1(b)
Abbott Supported Environment 3.1(c)
ADR 10.5
Authorized Servers 4.3(c)(i)
Breaching Party 9.1/9/3
Deliverables 5.4(c)
Delivery 3.5(a)
Delivery Criteria 3.4(h)
Development Project 5.1
Effective Date Introduction
Intellectual Property 11.4(a)
Inventions 7.1(a)
Joint Invention 7.1(c)
Millennium Introduction
Millennium Indemnified Parties 12.1(a)
Millennium Supported Environment 3.1(c)
Minimum Abbott Environment 3.1(c)
Minimum Environment 3.1(c)


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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


Minimum Millennium Environment 3.1(c)
Non-Breaching Party 9.1/9.3
Supported Environment 3.1(c)
Source Code 4.3(b)
Source Code Recipient 4.3(b)
Upgrade 3.1(h)


The Exhibits referred to in the definitions of this Agreement are being simultaneously delivered with the execution of this Agreement as separate documents and shall have the following titles:


Exhibit A Abbott Exchange Technology


Exhibit B Millennium Exchange Technology


Exhibit C Millennium Supported Environment


Exhibit D Abbott Supported Environment


Exhibit E Technology Development Plan


The Schedule referred to in the definitions of this Agreement has been attached to this Agreement and shall have the following title:


Schedule I Alternative Dispute Resolution Rules


ARTICLE 2
JOINT TECHNOLOGY TEAM


2.1 ESTABLISHMENT OF JOINT TECHNOLOGY TEAM. 2.2 As soon as practicable after the Effective Date, Abbott and Millennium shall establish a Joint Technology Team to manage the Technology Exchange and the Technology Development under this Agreement. The Joint Technology Team shall be comprised of five (5) representatives designated by Abbott and five (5) representatives designated by Millennium, PROVIDED THAT Abbott and Millennium may designate an equal number of additional representatives from time to time. With respect to each Party, such representatives shall include one person responsible for [**] component described in EXHIBIT A, one person responsible for [**] component described in EXHIBIT A, one person responsible for [**] components described in EXHIBIT B, one person responsible for Technology Development, and one senior officer of a Party responsible for technology at such Party. Abbott and Millennium shall each make its initial designation of its representatives not later than thirty (30) days after the Effective Date. Either Party may change its designees to the Joint Technology Team at any time upon written notice to the other Party.


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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


2.2 JOINT TECHNOLOGY TEAM DECISIONS. All decisions of the Joint Technology Team shall be made by unanimous approval of Abbott and Millennium, with each Party having one vote. With respect to each of the four areas described in Section 2.1, a quorum for decision-making shall consist of the two (2) senior officers of the Parties and the two (2) representatives of the Parties designated for such area. Except as provided in Section 5.3(e), if the Joint Technology Team is unable to reach agreement on any issue, such issue shall be resolved in accordance with the provisions of Article 10.


2.3 MEETINGS. The Joint Technology Team shall meet at such times as they deem necessary or desirable during the term of this Agreement. Such meetings shall be held at such times and places as are mutually agreed upon by the Joint Technology Team and may be conducted in person, by telephone or by videoconference. Each Party shall use reasonable efforts to cause its representatives to attend the meetings of the Joint Technology Team. If a representative of a Party is unable to attend a meeting, such Party may designate an alternate to attend such meeting in place of the absent representative. In addition, each Party may, at its discretion, invite other employees, and, with the consent of the other Party, consultants or scientific advisors, to attend the meetings of the Joint Technology Team. Either Party may convene a special meeting of the Joint Technology Team for the purpose of resolving disputes upon reasonable advance written notice to the other Party. The Parties shall each bear their respective costs and expenses of attendance of Joint Technology Team meetings by their respective representatives.


ARTICLE 3
TECHNOLOGY EXCHANGE


3.1 TECHNOLOGY EXCHANGE.


(a) NOTIFICATION AND SELECTION. At any time prior to the [**] anniversary of the Effective Date, Millennium shall have the right to notify the Joint Technology Team that it desires to receive from Abbott the Abbott Exchange Technology. At any time prior to the [**] anniversary of the Effective Date, Abbott shall have the right to notify the Joint Technology Team that it desires to receive from Millennium the Millennium Exchange Technology. Upon each such notification, the Joint Technology Team shall commence the Technology Exchange of such Exchange Technology in accordance with the terms of this Article III.


(b) GENERAL RESPONSIBILITIES. Each Party will use reasonable efforts to undertake and effect the Technology Exchange in accordance with the Technology Exchange Plans and to provide Technology Exchange Services to the other Party. It is specifically understood that each Party shall be responsible for obtaining and installing, at its own expense, all equipment, hardware, technology and Direct Licensed Software, and for employing appropriately trained personnel on a timely basis, so as to facilitate the Technology Exchange and the fulfillment of each Party's respective responsibilities and obligations, all in accordance with the Technology Exchange Plans.


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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.


(c) SUPPORTED ENVIRONMENT. Attached as EXHIBIT C are the major items of equipment, hardware, technology, Direct Licensed Software and Sublicensed Software which are necessary to receive and operate the Millennium Exchange Technology as of the Effective Date and which (other than the Sublicensed Software) are to be obtained and/or licensed by Abbott (the "Millennium Supported Environment"). Within [ ...