ments, solutions, or suppositories and other therapeutic forms 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 nine 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. 8. Subject to the provisions of Article 9, 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 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 deliver directly or indirectly any product 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. 9. The provisions of the foregoing Articles 7 and 8 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. 10. Both parties shall be free to manufacture and sell nonpharmaceutical products which contain products containing corpus luteum hormones. 11. (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 enjoyment 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 instituted against any of said letters patent shall be borne 70% by the Licensor and 30% by the Licensee. 12. 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. 13. 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. 14. From and after December 17, 1952, if this agreement be then in force and the Licensee be not then in default, the Licensee shall have a royalty-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. On December 31, 1956, this agreement, if then in force, shall terminate, except that the Licensee if not then in default shall have a free license under all patents and applications therefor then owned by the Licensor in the corpus luteum hormone field for the full life thereof. 15. Upon any termination of this agreement and the license hereby granted the parties hereto shall nevertheless remain liable for the payment of any royalties due and accrued up to the date of termination; the Licensee may for not longer than six months after termination continue to sell, subject to the provisions of this agreement and to the payment of any applicable royalties, such licensed products as the Licensee shall have had on hand and ready for delivery at the date of termination. 16. If one or more provisions of this agreement shall be or become unenforceable, all other provisions shall nevertheless continue in full force and effect. 17. 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. 18. 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. 19. 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. STATE OF NEW JERSEY, County of Essex, 88: SCHERING CORPORATION, By J. WELTZEIN, President. CIBA PHARMACEUTICAL PRODUCTS, INC., By H. KAMP, President. On this 7th day of June, 1939, before me personally came J. Weltzein, to me known, who being by me duly sworn, did depose and say: That he resides at No. 25 Woodfield Drive, Short Hills, New Jersey; that he is the 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. LUDWIG SCHOPFER, Notary Public of New Jersey. My Commission Expires Aug. 18, 1943. STATE OF NEW JERSEY, County of Union, 88: On this 7th day of June, 1939, before me personally came H. Kamp, to me known, who being by me duly sworn, did depose and say: That he resides at No. 106 South Harrison St., East Orange, N. J.; that he is the Vice President of CIBA PHARMACEUTICAL PRODUCTS, 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. KARL ZIMMERMANN, Notary Public of New Jersey. Schedule A.-Progesterone My Commission Expires Mar. 24, 1943. Ampules 1 cc,-1⁄2 mgm.-Boxes of 6. Boxes of 50. 1 mgm.-Boxes of 6 Boxes of 50. 2 mgm.-Boxes of 6. Boxes of 50 5 mgm.-Boxes of 6. Boxes of 50.... 10 mgm.-Boxes of 3.. Discount to wholesalers, jobbers, direct accounts and hospitals: 20%. Trade Price $1.75 13.00 3.50 25.95 6. 00 44. 45 10.00 74.00 9.10 EXHIBIT No. 227 SCHERING CORPORATION AND CIBA PHARMACEUTICAL PRODUCTS, INC.-SUPPLEMENTAL AGREEMENT (Corpus Luteum Hormones) AUGUST 1, 1939. SUPPLEMENTAL AGREEMENT dated August 1, 1939 between SCHERING CORPORATION, a New Jersey corporation with its head office in Bloomfied, New Jersey (the Licensor) and CIBA PHARMACEUTICAL PRODUCTS, INC., a New Jersey corporation with its head office in Summit, New Jersey (the Licensee). The purpose of this Supplemental Agreement is to modify in certain respects desired by both parties the agreement dated July 1, 1938 (the License Agreement) between the parties hereto under which the Licensor granted to the Licensee a license under certain patents and applications in the corpus luteum hormone field. NOW, THEREFORE, it is agreed as follows: FIRST: Subdivisions (a), (c), and (d) of Article 3 of the License Agreement are hereby stricken therefrom as of January 1, 1939, and the following is inserted in lieu of subdivision (a) of Article 3: 3. (a) The Licensor hereby acknowledges receipt of valuable consideration in lieu of all royalties and agrees that the license hereby granted shall be free of royalties. SECOND: Article 1 of the License Agreement is hereby amended as of January 1, 1939 to read as follows: 1. (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 listed in Schedule B annexed hereto and in all other United States patents and applications therefor in the corpus luteum hormone field now owned by or that may hereafter on or before December 31, 1956, be issued to or acquired by the Licensor or under which the Licensor shall have the right to grant a license coterminous with the license hereby granted (all of which are sometimes hereinafter referred to as "said letters patent or applications therefor") and to practice the processes described and claimed therein throughout the United States of America, its territories and possessions, but only in the corpus luteum hormone 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) All United States patents and applications therefor in the corpus luteum hormone field that shall be hereafter issued to or acquired by the Licensor or under which the Licensor shall acquire the right to grant a license conterminous with the license hereby granted 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. THIRD: Article 4 (b) of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 4. (b) Within three calendar months after the end of each calendar year the Licensor shall render to the Licensee a statement setting forth the royalties received by the Licensor under the said patents and applications therefor. The share of such royalties due from the Licensor to the Licensee for any calendar year shall be paid on or before the 30th day of April following the close of that calendar year. FOURTH: Article 5 of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 5. The Licensor shall keep on file accurate records of the royalties received under the said patents and applications therefor and shall permit such records to be inspected at all reasonable times by reputable certified public accountants representing but not regularly employed by the Licensee, but such accountants shall not have access to accounts pertaining 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 and shall contain no reference to names or addresses of customers or to extraneous matters. FIFTH: Article 7 of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 7. (a) Subject to the provisions of Article 9, the Licensee shall not sell or offer for sale any product being currently sold or offered for sale by the Licensor and described and claimed in the said 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 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 Licensee. (c) The Licensee shall not sell or offer for sale any product being currently sold or offered for sale by the Licensor 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. The forms in which the Licensor now sells such products and the Licensor's established standards for use thereof (which are to be adhered to by the Licensee) are as follows: Progesterone : Ampules 1 cc.-1⁄2 mgm.-Boxes of 6 Boxes of 50 1 mgm.-Boxes of 6 Boxes of 50 2 mgm.-Boxes of 6 Boxes of 50 5 mgm.-Boxes of 6 10 mgm.-Boxes of 3 (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 or suppositories and other therapeutic forms 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 nine 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. SIXTH: Article 11 (c) of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 11. (c) The cost of prosecuting any actions instituted by the Licensor for infringement of said letters patent and the cost of deferring any suit instituted against any of said letters patent shall be borne, if the cost is incurred prior to December 31, 1942, 80% by the Licensor and 20% by the Licensee, and if incurred after January 1, 1943, in the proportion of the respective turn-overs of the Licensor and the Licensee of products in the corpus luteum hormone field. SEVENTH: Article 14 of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 14. On December 31, 1956, this agreement, if then in force, shall terminate, except that the Licensee if not then in default shall have a license under all patents and applications therefor in the corpus luteum hormone field than owned by the Licensor or under which the Licensor shall have the right to grant licenses coterminous with the license hereby granted for the full life thereof. EIGHTH: Article 15 of the License Agreement is hereby amended as of January 1, 1939, to read as follows: 15. Upon any termination of this agreement and the license hereby granted the Licensor shall nevertheless remain liable for the payment to the Licensee of the Licensee's share of any royalties due and accrued up to the date of termination; and the Licensee may for not longer than six months after termination continue to sell, subject to the provisions of this agreement, such licensed products as the Licensee shall have had on hand and ready for delivery at the date of termination. NINTH The License Agreement dated July 1, 1938, as modified by this Supplemental Agreement, is hereby in all respects ratified and confirmed. IN WITNESS WHEREOF the parties have executed this Supplemental Agreement in duplicate as of the date first above written. SCHERING CORPORATION. CIBA PHARMACEUTICAL PRODUCTS, INC. Schedule B. Schering-Ciba-Corpus Luteum Hormones Arthur Serini, Lothar Strassber- 2, 151, 661 Mar. 21, 1939 2, 153, 700 Apr. 11, 1939 2, 156, 275 May 2, 1939 Friedrich Hildebrandt.. Erwin Schwenk, Bradley Whit- Adolf Butenandt... Title Pregnanolones and a Method of Producing Pregnanone Compounds and a Method of Pregnanolones and Methods for Producing Pregnanolones and Methods for Producing the Same from Pregnandiols. Adolf Butenandt & Willy Loge- Compounds of the Androstane and Preg mann. nane Series and Methods of Producing Method for the Preparation of Epi-Allo EXHIBIT No. 228 CIBA PHARMACEUTICAL PRODUCTS, INC., AND SCHERING CORPORATION-AGREEMENT (Corpus Luteum Hormones) AUGUST 1, 1939. AGREEMENT dated August 1, 1939, between CIBA PHARMACEUTICAL PRODUCTS, INC., a New Jersey corporation with its head office in Summit, New Jersey (the Licensor and SCHERING CORPORATION, a New Jersey corporation with its head office in Bloomfield, 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 corpus luteum hormone field now owned by or that may hereafter on or before December 31, 1956, 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 non-exclusive, non-assignable 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 corpus luteum hormone field, for a period beginning August 1, 1939, 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. |