fined in the said agreement. The right to sell such products to others shall not, however, be construed to permit the sale of such products in bulk in the United States, its territories, or possessions; nor shall the right hereby granted authorize or permit the import of the products so sold into the United States, its territories, or possessions without the payment of royalties thereon as provided in the said agreement.

It is further agreed that no royalties are payable by you on sales of the licensed products to licensees under the "Patents" nor on sales to others who are acting under the protection of the foreign patents corresponding to the said United States patents.

In confirmation of the above we request that you sign and return to us the enclosed copy of this letter.

Yours very truly,

ROCHE-ORGANON, INC., AND SCHERING CORPORATION-LICENSE AGREEMENT

(Cortin)

DECEMBER 28, 1939.

AGREEMENT dated July 1, 1938, between ROCHE-ORGANON, INC., a New Jersey corporation with its head office at Nutley, New Jersey (the Licensor) and SCHERING CORPORATION, a New Jersey corporation with its head offices at Bloomfield, New Jersey (the Licensee).

WHEREAS the Licensor is the sole owner of United States Patent Application No. 195162 filed March 10, 1938, for substituted derivatives of saturated and unsaturated pregnene-diones.

WHEREAS the Licensee wishes to acquire from the Licensor a license under the said application for Letters Patent and under such letters patent and other applications therefor in the cortin field as the Licensor may from time to time acquire, upon the terms and conditions hereinafter stated;

NOW THEREFORE the parties hereto, each in consideration of the covenants of the other herein contained, hereby agree as follows:

1. (a) The Licensor hereby grants to the Licensee upon the terms and conditions hereinafter stated a nonexclusive, nonassignable license free of royalties to manufacture, use, and sell the products described and claimed in the said application for Letters Patent and to practice the processes described and claimed therein and in any Letters Patent that may issue upon said application throughout the United States of America, its territories, and possessions, but only in the cortin field, for a period beginning July 1, 1938, and ending at the end of the term for which the last expiring patent that may be included in this license is or shall be granted, or sooner as hereinafter provided.

(b) The Licensor shall give to the Licensee written notice at least three months prior to offering for sale any product described or claimed in or made in accordance with any process described or claimed in any United States letters patent or application therefor now or hereafter acquired by the Licensor in the cortin field (other than application for United States Letters Patent No. 195162); and the Licensor shall specify in said notice the prices, forms, and standards for the sale of the product as provided in Article 5 of this Agreement; and thereupon the said Letters Patent or the said application and the letters patent issuing thereon shall forthwith become included in the license hereby granted.

2. (a) Neither party hereto shall, without the written consent of the other party first obtained in each instance, give any license or sublicense, or any right of exploitation covering any of the products of said patent application or the Letters Patent to be issued thereon or of any other letters patent or application therefor covered by this license, or of the processes relating thereto, except that the Licensor may without the Licensee's consent grant any such license or right to Ciba Pharmaceutical Products, Inc., Summit, New Jersey.

(b) The Licensee shall manufacture under this license only in its own plant or plants located in the United States of America and distribution of products under this license shall be made only by the Licensee and only under a single corporate name and/or trade name.

(c) The "Cortin Field” means all substances of the cortex of the adrenal which can wholly or partly replace the essential functions of the adrenal cortex in adrenalectomized animals, as well as such substances with equal or analogous effect (whether of natural or synthetic origin) and such substances which increase the effectiveness of the hormone of the cortex of the adrenal (activators), but only insofar as they are used for this special purpose, as well as compounds of the "Lactoflavin-Phosphoric acid series," but not epinephrine (adrenalin). 3. (a) The Licensor shall pay unto the Licensee during the period commencing January 1, 1939, and ending December 31, 1956, 25% of all the royalties received by the Licensor from all licenses on said patent applications or letters patent therefor granted to Ciba Pharmaceutical Products, Inc., Summit, New Jersey, and a certain percentage which shall be the subject of a later agreement between the parties from all licenses on said patent applications or letters patent therefore granted to other licensees. The Licensor shall render to the Licensee within 30 days after the end of each calendar quarter a statement setting forth the royalties received by the Licensor from each Licensee. All payments of royalties due from Licensor to the Licensee for any calendar year shall be paid within at least 3 months of the close of said calendar year without any deduction.

(b) The Licensee has a right to inspect, at its own cost, at all reasonable times, by a reputable certified public accountant representing but not regularly employed by the Licensor, the books of accounts of said royalty payments received; but such accountants shall not have access to accounts pretaining to matters not covered by this agreement, and the extracts or notes taken by them shall relate exclusively to the subject matter of this agreement. If such inspection shows that the said statement of royalties is not correct, the Licensor is obligated to compensate the Licensee for all expenses and costs of the accountants. 4. Each party hereto shall forthwith upon making, discovering, conceiving, or otherwise acquiring any other processes, whether secret or not, or any formulas, or any technical, clinical, experimental, and manufacturing data, and any other discoveries in the cortin field, disclose the same forthwith to the other party hereto and shall assist the other party in every way in the application and further development thereof, provided, however, that neither party shall be obligated to disclose to the other any information regarding its costs of manufacture, production, or distribution.

5. (a) Subject to the provisions of Article 7, the Licensee shall not sell or offer for sale any product described and claimed in any letters patent embodying and made in accordance with and by use of any of the inventions of the said letters patent, as long as such product is covered by letters patent, at a price lower, or with a discount greater, or on terms and conditions in any respect more favorable to the purchaser, than as fixed therefor by the Licensor and followed by the Licensor in making its sales. Until changed by the Licensor as hereinafter provided the prices, discounts, terms, and conditions fixed by the Licensor are those set forth in Schedule A annexed hereto.

(b) The prices, discounts, terms, and conditions set forth in Schedule A may be changed by the Licensor from time to time upon two months' written notice to the Licenseee.

(c) The Licensee shall not sell or offer for sale any product made pursuant to any of the process claims or any product coming within the product claims of the said letters patent in forms other than as tablets, ampules, ointments, solutions, or suppositories and other therapeutic forms and for each of such forms the Licensee will adhere to the standards as now established, or hereafter established by the Licensor, with respect to units or quantity per package, to dosage or strength per unit, and to designation of units.

(d) The Licensor may from time to time change the dosage, units, quantities, and/or forms of said products contained in the individual tablets, ampules, ointments, solutions, suppositories, or other therapeutic form or may add new preparations, but the Licensor shall not sell or offer for sale any such changed or new preparation without giving to the Licensee written notice of its intention to do so, which notice shall be given not less than three months nor more than 9 months prior to the first offering for sale.

(I) Upon the expiration of the three months' notice mentioned in the preceding paragraph of this subdivision (d) the Licensee may offer for sale any changed or new preparation therein specified, if within one month after receiving the said three months' notice the Licensee shall have given to the Licensor written notice of its intention to do so, and if the first offering for sale shall be made not later than six months after the expiration of the said three months' notice.

(II) Except as otherwise provided in the preceding paragraph (I) the Licensee shall not offer for sale any such changed or new preparation without giving to the Licensor prior written notice of its intention to do so, which notice shall be given not less than three months nor more than nine months prior to the first offering for sale.

(e) The distribution of samples to hospitals and the like by both Licensor and Licensee shall be subject to agreement between the parties.

6. Subject to the provisions of Article 7, neither party shall sell or offer for sale any product made pursuant to any of the process claims or any product coming within the product claims of the said letters patent or applications therefor excepting in a form ready for use by the consumer, completely packed and packaged under its own name or trade mark, nor shall either party sell or offer for sale or delivery directly or indirectly any products made pursuant to any of the process claims or any product coming within the product claims of said letters patent or applications therefor to others for use by them in putting up such products in commercial form for resale by them, nor sell the said product in bulk.

7. The provisions of the foregong Articles 5 and 6 shall not apply to sales by the Licensor or the Licensee of any of the products mentioned therein, if such sales are made to licensees under the said letters patent or applications therefor, nor shall such provisions apply to sales to others when written consent of both parties is first obtained.

8. (a) The Licensee shall cooperate with the Licensor to defend the rights under all patent applications and letters patent covered by this license, including interferences and attacks of third parties upon the validity of said patent applications and letters patent.

(b) The Licensee shall not do any act or thing which might lessen or endanger said protection or unfavorably affect the full enjoymment of the Licensor's and Licensee's rights in and to said products and processes.

(c) The cost of prosecuting any actions instituted by the Licensor for infringement of any letters patent covered by this license, and the cost of defending any suit that may be instituted against any of such letters patent shall be borne by both parties in a proportion which shall be the subject of a later agreement. 9. If and whenever either party hereto shall be in default in complying with any of the applicable terms of this agreement and the default shall continue unremedied or be repeated during a period of thirty days after the other party hereto shall have given to the defaulting party written notice specifying the default, then upon the expiration of the thirty-day period the party giving the notice of default shall have the right at its option to terminate this agreement and the license hereby granted by giving to the other party in default written notice to that effect; whereupon this agreement and the license hereby granted shall terminate forthwith, except that the party in default shall not thereby be discharged from any liability to the other party for damages or loss resulting from the default.

10. If a petition in bankruptcy or proceedings under the Bankruptcy Law shall be filed by or against Licensee, or if a receiver or trustee shall be appointed for the property of Licensee, or if the Licensee shall make a general assignment or take the benefit of any insolvent act, or upon the liquidation or dissolution of licensee, then, and upon the happening of any of the foregoing contingencies, the Licensor may at its option terminate this agreement and the license hereby granted by giving to the Licensee written notice to that effect; whereupon this agreement and the license hereby granted shall terminate forthwith.

11. On December 31, 1956, this agreement, if then in force, shall terminate, except that the Licensee if not then in default shall continue to have a free license to manufacture, use, and sell under the letters patent and applications therefor then covered by this license until the expiration of the last now or hereafter granted patent covered by this license.

12. If one or more provisions of this agreement shall be or become unenforceable, all other provisions shall nevertheless continue in full force and effect. 13. For all purposes of this agreement any notice required or permitted to be given to a party hereto shall be effectively given if directed to the party at its last known head office and sent by registered mail.

14. The Licensee accepts the license hereby granted and agrees to comply with all the conditions of this agreement requiring compliance on the part of the Licensee.

84949-44-pt. 10——7

15. The Licensor agrees to comply with all the conditions of this agreement requiring compliance on the part of the Licensor.

IN WITNESS WHEREOF the parties hereto have executed this agreement in duplicate as of the date first above written.

ROCHE-ORGANON, INC.. By E. H. BOBST, President SCHERING CORPORATION, By J. WELTZEIN, President.

STATE OF NEW JERSEY,

County of Esser, 88:

On this 29 day of December, 1939, before me personally came E. H. Bobst, to me known, who being by me duly sworn, did depose and say: That he resides at Montclair, N. J.; that he is President of Roche-Organon, Inc., the corporation described in and which executed the foregoing instrument; that he knows the seal of said corporation; that the seal affixed to said instrument is such corporate seal; that it was so affixed by order of the Board of Directors of said corporation and that he signed his name thereto by like order.

[SEAL]

My commission expires July 10, 1944.

STATE OF NEW JERSEY,

County of Essex, 88:

JOHN MOONEY, Notary Public of New Jersey.

On this 29 day of December, 1939, before me personally came J. Weltzein, to me known, who being by me duly sworn did depose and say: That he resides at 25 Woodfield Dr., Short Hills, N. J.; that he is President of Schering Corporation, the corporation described in and which executed the foregoing instrument; that he knows the seal of said corporation; that the seal affixed to said instrument is such corporate seal; that it was so affixed by order of the Board of Directors of said corporation and that he signed his name thereto by like order.

DEAR SIRS: Article 8 (b) of the Agreement between us dated July 1, 1938, relating to Male Hormones provides that sales in bulk of any of the products mentioned may be made to others when written consent of both of us is first obtained. We hereby confirm that each of us consents that either of us may sell the products mentioned in the said agreement in bulk to any persons or firms which are acting under the protection of foreign patents corresponding to the "Patents" as defined in the said agreement. The right to sell such products to others shall not however be construed to permit the sale of such products in bulk in the United States, its territories or possessions; nor shall the right hereby granted authorize or permit the import of the products so sold into the United States, its territories or possessions without the payment of royalties thereon as provided in the said agreement.

It is further agreed that no royalties are payable by you on sales of the licensed products to licensees under the "Patents" nor on sales to others who are acting under the protection of the foreign patents corresponding to the said United States patents.

In confirmation of the above, we request that you sign and return to us the enclosed copy of this letter.

Very truly yours,

SCHERING CORPORATION, By J. WELTZEIN, President.

EXHIBIT No. 221

SCHERING CORPORATION AND CIBA PHARMACEUTICAL PRODUCTS, INC.-LICENSE AGREEMENT

(Male Hormones)

JULY 1, 1938

AGREEMENT dated July 1, 1938 between SCHERING CORPORATION, a New Jersey corporation with its head office in Bloomfield, New Jersey (the Licensor) and CIBA PHARMACEUTICAL PRODUCTS, INC., a New Jersey corporation with its head office in Summit, New Jersey (the Licensee).

WHEREAS the Licensor is the sole owner of the letters patent and applications for letters patent of the United States set forth in Schedule A annexed hereto; and

WHEREAS the Licensee wishes to acquire from the Licensor a license on the terms and conditions hereinafter stated.

NOW THEREFORE the parties hereto, each in consideration of the covenants of the other herein contained, hereby agree as follows:

1. Whenever used in this agreement the term "the Patents" means not only the patents and the applications listed in Schedule A annexed hereto but also all other United States patents and applications therefor in the male sex hormone field that may hereafter on or before December 31, 1954 be issued to or acquired by the Licensor or in which the Licensor shall have the right to grant a license coterminous with the license hereby granted.

2. (a) The Licensor hereby grants to the Licensee upon the terms and conditions hereinafter stated a nonexclusive nonassignable license to manufacture, use and sell the products described and claimed in the Patents and to practice the processes described and claimed therein throughout the United States of America, its territories and possessions, but only in the male sex hormone field, for a period beginning July 1, 1938 and ending at the end of the term for which the last expiring of the Patents is or shall be granted, or sooner as hereinafter provided.

(b) All United States patents and applications therefor in the male sex hormone field that shall be hereafter issued to or otherwise acquired by the Licensor or in which the Licensor shall hereafter acquire any right, title, or interest shall be promptly disclosed by the Licensor to the Licensee and upon such disclosure by the Licensor to the Licensee shall without more forthwith come under the license hereby granted.

3. (a) Neither party hereto shall, without the written consent of the other party first obtained in each instance, give any license or sub-license, or any right of exploitation covering any of the products of the Patents or of the processes relating thereto, except that the Licensor may, without the Licensee's consent, grant any such licenses and rights to Roche-Organon, Inc., Nutley, New Jersey, and to Rare Chemicals, Inc., Nepera Park, N. Y., or either of them.

(b) The Licensee shall manufacture under this license only in its own plant or plants located in the U. S. A. and distribution of products under this license shall be made only by the Licensee and only under a single corporate name and/or trade name.

(c) The Licensor shall pay unto the Licensee during the period commencing January 1, 1939, and ending December 31, 1954, thirty-six and one-third percent (36%) of all the royalties received by the Licensor from all licenses granted under the Patents to others than the Licensee and said Roche-Organon, Inc., and said Rare Chemicals, Inc.

4. (a) The Licensee shall pay unto the Licensor a royalty or license fee of three per cent (3%) of the Licensee's turn-over in the United States during the period commencing January 1, 1939, and ending December 31, 1952, of all products and preparations containing male sex hormones.

(b) The "male sex hormone field" includes all products and preparations containing male sex hormones of natural or synthetic origin and/or such substances as increase their effectiveness (activators), but activators only in so far as used as such. "Male sex hormones" mean hormones of the sterol series, as, for instance, androsterone or testosterone, or their derivatives, as well as any materials having similar effects, and materials with physiological and clinical effects