1
EXHIBIT 10.31
SOFTWARE LICENSE/RESEARCH AGREEMENT
between
D-MOL, INC. and BIOSYM TECHNOLOGIES, INC.
Effective February 19, 1988, this Agreement is drawn between D-Mol,
Inc., an Illinois corporation (hereinafter "D-Mol"), and BIOSYM Technologies,
Inc., a California corporation having offices at 00000 Xxxxxx Xxxxxx Xxxx, Xxxxx
X, Xxx Xxxxx, Xxxxxxxxxx 00000, U.S.A. (hereinafter "BIOSYM").
WHEREAS, D-Mol has acquired a body of technology including a valuable
and proprietary computer modeling package called "D-Mol" (Hereinafter
"Software") which includes certain computer programs and attendant documentation
relating to improved density functional quantum mechanical methods for
calculating molecular energies and charge and spin distributions; and
WHEREAS, BIOSYM is desirous of securing a license to copy, market and
sublicense Software, and D-Mol has the right to license and is willing to grant
this license to copy, market, and sublicense upon the terms and conditions
hereinafter set forth; and
WHEREAS, D-Mol and BIOSYM wish to collaborate on the further
development, application, and commercialization of this technology and the
Software program;
NOW THEREFORE, for and in consideration of the mutual covenants set
forth herein and other valuable considerations, it is agreed by and between the
parties as follows:
ARTICLE 1.0
GRANT OF LICENSE
1.1 D-Mol hereby grants to BIOSYM, upon the terms and conditions herein
specified, a non-exclusive, non-transferable 20 year license extendible by
mutual agreement to reproduce Software and all enhancements thereto, and an
exclusive, except to the extent provided for in Paragraph 1.2, worldwide license
to use and to sublicense others to use Software and all enhancements thereto
provided such sublicense is granted in writing and contains terms consistent
with those in BIOSYM's then current standard Sublicensing Agreement, a current
copy of which is attached hereto as Exhibit A. Material changes to the
Sublicensing Agreement will be subject to D-Mol's approval which shall not be
unreasonably withheld.
1.
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1.1.1 In return for the grant of the licenses hereunder,
BIOSYM shall use its best efforts to commercialize and market Software in all
territories for all commercially promising applications, including, but not
limited to, Software license and service agreements, time share use of the
Software, and research contracts, on a worldwide basis, and shall seek to
maximize the cumulative financial return for such efforts, consistent with
prudent and ethical business practice.
1.1.2 At any time within three years of the date hereof, if
opportunities exist or develop which D-Mol does not believe are being addressed
by BIOSYM in a timely and effective manner, D-Mol may ask BIOSYM to make
reasonable commitments to address such opportunities. If BIOSYM is unwilling to
make such commitments or subsequently does not substantially meet commitments
made, D-Mol upon written notification to BIOSYM's President and Board of
Directors specifying the steps D-Mol believes should be taken and provided that
BIOSYM does not effect reasonable commitments within 90 days following
notification, shall have the right to license to use and sublicense others to
use Software and all enhancements thereto with respect to such opportunities.
Where D-Mol grants such a license, D-Mol shall pay to BIOSYM twenty percent of
the compensation which it receives under the terms of said license.
1.1.3 In the event that BIOSYM shall license Software jointly
with any other product, the license fee attributable to Software shall be that
portion of the total license fee which corresponds to the proportion which the
retail license fee of Software bears to the total retail license fees of all of
the products jointly licensed.
1.2 D-Mol reserves to itself and others with whom D-Mol collaborates
directly on non-proprietary, non-commercial research, a non-exclusive, fully
paid, worldwide right to use Software but not to sublicense others, and further
reserves to itself, Xxxxxx X. Xxxxxxx, and Xxxxxxx Xxxxxx a non-exclusive, fully
paid, worldwide right to use Software and all enhancement thereto, for all
purposes, including research contracts.
ARTICLE 2.0
REPRESENTATIONS AND WARRANTIES
2.1 D-Mol represents and warrants to BIOSYM as follows:
2.1.1 D-Mol is a corporation duly organized, validly existing,
and in good standing under the laws of Illinois.
2.1.2 D-Mol has full corporate power and authority to enter
into this Agreement and this Agreement constitutes a valid and binding
obligation of D-Mol enforceable in accordance within terms.
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2.1.3 Xxxxxxx Xxxxxx, of Zurich, Switzerland, is the author of
Software, and Xxxxxxx Xxxxxx has assigned any and all of his rights in Software
to D-Mol.
2.2 Further, D-Mol warrants that to the best of its knowledge no third
party has any rights in the Software or in income generated therefrom, except
for small portions of the present code which are in the public domain.
ARTICLE 3.0
INDEMNIFICATION
3.1 D-Mol does hereby indemnify and shall hold harmless (including
reasonable attorney's fees) BIOSYM, its corporate affiliates, and any employee
or agent thereof (each of the foregoing being hereinafter referred to
individually as the "Indemnified Party") against all liability to third parties
(other than liability solely the fault of the Indemnified party) arising from
the negligence of D-Mol or its agents and the license to or use by BIOSYM of
Software, including (but not limited to) the violation of any third party's
ownership rights, trade secrets, proprietary information, trademark, copyright
or patent rights in connection with the licensing of Software. D-Mol may, at its
options, conduct the defense in any such third party action arising as described
herein and BIOSYM promises fully to cooperate with such defense. This
indemnification is limited to Software delivered to BIOSYM or as modified by
D-Mol and does not cover third party claims arising from modifications not
authorized by D-Mol.
ARTICLE 4.0
PAYMENTS
4.1 In consideration of D-Mol granting the license provided for in
Article 1.0 of this Agreement, BIOSYM agrees to pay D-Mol in United States
dollars, royalties on fees received as follows, where fees are defined as money
paid to BIOSYM as compensation under software license and service agreements or
research contracts net of any outside commission, taxes, shipping costs, or
other such reasonable and necessary expenses relating to this compensation:
4.1.1 On licensing fees paid to BIOSYM by sublicenses of
Software, [*] of fees paid within a [*] period from the date on which Software
is first offered in writing for sublicense, and [*] thereafter.
4.1.2 On fees paid to BIOSYM for time share use of Software,
[*] of fees paid within a [*] period from the date on which Software is first
offered in writing on a time share basis, and [*] thereafter.
* CONFIDENTIAL TREATMENT REQUESTED
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4.1.3 On fees paid to BIOSYM for annual maintenance of
Software, [*] of fees paid to BIOSYM as long as D-Mol is actively contributing
to program enhancements, promotion or the expansion of applications. For
purposes of this paragraph, actively contributing shall mean that, during any
year, principals or employees of D-Mol shall have engaged in activities designed
to promote or demonstrate Software, write and publish or present scientific
papers or articles pertaining to Software or its uses, or develop program
enhancements or expansions. When this condition is no longer met, the royalty
shall be [*] of fees paid.
4.1.4 On fees paid to BIOSYM for contract research utilizing
Software, royalty shall be paid at the then prevailing time share royalty rate
as defined in Paragraph 4.1.2 applied to the CPU time charge assessed to the
customer for the use of Software in executing the project. Royalty shall no
longer be paid for this category of Software use when cumulative, collective
royalty paid to D-Mol under this sub-paragraph totals [*].
4.1.5 On royalty fees paid to BIOSYM under royalty bearing
research contracts in which Software was utilized, [*] of that portion of the
royalty attributed to Software for a [*] period starting with the date on which
royalty is first earned on each contract, and [*] thereafter. For purposes of
this paragraph, "royalty fees" shall include, without limitation, patent license
royalties. The determination of the portion of royalty attributable to Software
shall be determined initially by BIOSYM. BIOSYM shall provide D-Mol, in the
written report to be submitted to pursuant to Paragraph 5.1 hereof, an
explanation of the basis of such proration. D-Mol shall have thirty (30) days
after receipt of such written report in which to raise any written object to
such proration. If such objection is raised by D-Mol, the parties agree to
negotiate in good faith the resolution of such dispute. If no such resolution is
made within sixty (60) days of receipt of D-Mol's written objection, the dispute
concerning such proration shall be settled by arbitration in accordance with the
Commercial Arbitration Rules of the American Arbitration Association, and
judgment upon the award rendered by the arbitrator(s) may be entered in any
court having jurisdiction thereof.
4.1.6 On work funded by government agencies or industry groups
where the primary purpose is program enhancement or new application development,
no royalty shall be paid to D-Mol, but D-Mol shall have the opportunity for
consulting participation on a fee basis, such fees to be based on D-Mol's
customary rates or other rates as may be established for such services between
D-Mol, BIOSYM and such government agencies or industry groups.
* CONFIDENTIAL TREATMENT REQUESTED
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4.2 BIOSYM's obligation to make payments to D-Mol pursuant to Paragraph
4.1 hereof shall survive the termination of any license granted to BIOSYM
hereunder.
4.3 As an additional consideration, D-Mol shall receive a grant of
[*] shares of BIOSYM common stock conveyed to D-Mol within sixty (60) days of
the execution of this Agreement. Upon receipt of appropriate regulatory approval
and documentation including matters relating to investment suitability and
acknowledgments as to restrictions on transfer as appropriate in the opinion of
BIOSYM's counsel, D-Mol will instruct BIOSYM on the names of the principals of
D-Mol to whom the stock is to be issued. Valuation of the stock for tax purposes
shall be as determined by action of the BIOSYM Board of Directors at the time of
the grant.
ARTICLE 5
REPORTING AND RECORDS
5.1 Within thirty (30) days following the last day of the months of
March, June, September, and December, BIOSYM shall submit to D-Mol a written
report setting forth the amount owed to D-Mol pursuant to Paragraph 4.1 on fees
for which BIOSYM has been paid during the immediately preceding calendar quarter
period together with sufficient supporting data to permit D-Mol to determine the
basis on which said amount was determined by BIOSYM.
5.2 With each report referred to in Paragraph 5.1 BIOSYM shall pay to
D-Mol any royalty payment shown therein to be due.
5.3 BIOSYM shall keep such detailed records as may be necessary to
determine the payments due under this Agreement. At the request of D-Mol, BIOSYM
shall permit an independent public accountant selected by D-Mol (unless BIOSYM
has some reasonable objection to such choice of accountant) to have access
during ordinary business hours to such records as may be necessary to determine
for a period up to two (2) years prior to the time of such request:
(a) the correctness of any report and/or payment made under
this Agreement; and/or
(b) information as to the sum payable for such period in case
of BIOSYM's failure to render statements of payment pursuant to this Agreement.
* CONFIDENTIAL TREATMENT REQUESTED
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ARTICLE 6
DELIVERABLE ITEMS
6.1 Within a reasonable period not to exceed thirty (30) days after
execution of this Agreement, D-Mol shall provide BIOSYM with one (1) copy of:
(a) Software Source Code,
(b) Software User's Notes,
(c) Software Documentation File.
Items (a), (b), and (c) shall be supplied "as is" in the form extant on the date
of delivery.
6.2 On or about Xxxxx 00, 0000, X-Xxx shall deliver to BIOSYM a new
version of Software redesigned and reorganized to assure dependable operation on
VAX equipment, efficient porting to other major computing environments, and ease
of future modification and upgrade. Details of how this shall be accomplished
shall be worked out between D-Mol and BIOSYM as the work proceeds and, to the
extent such consultation between D-Mol and BIOSYM is reasonable in its time and
scope, such consultation will be exempt from the support time limits set forth
in Paragraph 7.1.2. Notwithstanding the foregoing, if such consultation extends
beyond a 180 day period following receipt by BIOSYM of the new version of
Software for any reason, D-Mol shall be compensated by BIOSYM at D-Mol's normal
rates or at other rates as may be established for this purpose between the
parties. D-Mol and BIOSYM hereby acknowledge that the conversion of the new
version of Software to a commercially acceptable version is the primary
responsibility of BIOSYM, that such conversion shall require additional
consultations between the parties, and that the scope of such consultation in
terms of time and services required is not certain. Notwithstanding Paragraph
7.1 and subject to the availability of the principals of D-Mol to provide such
services consistent with their other business, academic, and research
commitments, D-Mol shall provide BIOSYM with reasonable technical assistance and
consulting services to develop a commercially acceptable version of the Software
on such terms and conditions as shall be mutually agreed by D-Mol and BIOSYM.
ARTICLE 7
SUPPORT
7.1 As a part of the collaborative arrangement, D-Mol shall provide
support in the following areas:
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7.1.1 D-Mol shall provide to BIOSYM a total of 60 hours of
training, at no charge to BIOSYM, to designated BIOSYM personnel at a mutually
agreed upon location, in the scientific basis and use of Software as originally
delivered, and subsequently additional training for enhancements as they are
developed by D-Mol.
7.1.2 D-Mol shall provide reasonable advisory support, i.e.,
individual responses which require at most no more than [*] of work, and in
the aggregate do not exceed [*] of work in the first year, [*] of work
in the second year and [*] of work per year every year thereafter as long
as D-Mol remains active as defined under Paragraph 4.1 at no charge to BIOSYM,
in the areas of the scientific basis, code operation, algorithm enhancement, and
potential applicability of the code.
7.1.3 Work requested by BIOSYM beyond the levels set forth in
Paragraphs 7.1.1 and 7.1.2 shall be compensated as paid consulting at D-Mol's
normal rates or other rates as may be established for this purpose between the
parties.
7.1.4 D-Mol shall make available to BIOSYM, at no charge to
BIOSYM, copies of scientific presentations and papers relating to Software, its
underlying science and/or their application for use by BIOSYM in its Software
marketing effort.
7.2 Copies of beta test or commercially offered versions of Software
shall be supplied by BIOSYM, simultaneously with their release to customers,
free of charge to D-Mol for its use in its own research relating to this
collaboration. BIOSYM shall provide Software Source Code as updated periodically
by BIOSYM and as reasonably requested by D-Mol. D-Mol shall exercise due care to
ensure maintenance of BIOSYM's proprietary rights in the Software Source code
and require that access to the Source code only be provided to persons who are
principals or employees of D-Mol or who have personally signed BIOSYM's
non-disclosure agreement, a current copy of which is attached hereto as Exhibit
B.
ARTICLE 8
DATA MARKING
8.1 BIOSYM shall exercise due care to ensure maintenance of D-Mol's
proprietary rights in the information licensed to BIOSYM under Article 1.0,
which shall include, but not be limited to, marking each copy produced of
Software Code (source and/or executable), User's manual, and Documentation File,
with a notice declaring D-Mol's ownership rights in the program and limitations
on its use.
* CONFIDENTIAL TREATMENT REQUESTED
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ARTICLE 9
PROPRIETARY INFORMATION
9.1 BIOSYM and D-Mol acknowledge that portions of Software (e.g.,
source code and applications knowhow) are, and modifications, improvements and
enhancements thereto shall be, of a proprietary nature and a commercial asset of
considerable value. Accordingly, BIOSYM and D-Mol mutually agree that such
proprietary information shall be used only as set forth in this Agreement and
that neither shall disclose to others, or use this information any other manner
without written permission of the other party. The obligations of this Paragraph
9.1 shall survive the termination of this Agreement except as provided in
Paragraph 9.2 Both parties agree that disclosure and access to the information
supplied under this license shall be limited to each party's and sublicensee's
employees and associates who have a need to know such information. In other
respects, each party shall exercise a standard of care the same as that used in
protecting their own information of like character.
9.2 The obligation of BIOSYM and D-Mol under Paragraph 9.1 shall not
apply to any information which (a) has become part of the public domain other
than by acts or omissions of the parties or a sublicensee; (b) has been
furnished or made known to either party by third parties as a matter of legal
right and without restriction on disclosure or use; or (c) was in the possession
of either party prior to disclosure.
ARTICLE 10
IMPROVEMENTS
10.1 D-Mol and BIOSYM agree to collaborate on the continuing
development of the concepts, algorithms, and software code of Software so as to
increase its scientific value and broaden its application. Twice yearly, if
BIOSYM requests, D-Mol and BIOSYM shall meet to review the status of the
Software program and to coordinate the technical and business programs which
depend on the collaborative efforts of the parties. The meeting shall be held at
BIOSYM's San Diego headquarters offices in July and January or at other places
and times as the parties may agree. All expenses associated with such meetings
at BIOSYM's San Diego headquarters office, including, but not limited to, travel
and hotel expenses, shall be borne by BIOSYM. Between meetings it shall be the
responsibility of each party to notify the other of any substantial departure
from the commitments made at these meetings.
10.2 Title to any modifications, improvements or enhancements made by
BIOSYM to Software as licensed in Article 1.0 herein shall vest in BIOSYM. For
the duration of this Agreement, BIOSYM shall promptly make available to D-Mol
any such
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modifications, improvements or enhancements. BIOSYM hereby grants a
non-exclusive, fully-paid worldwide license to D-Mol to use any such
modifications, improvements, or enhancements in their own work, including, but
not limited to, contract research, but not to sublicense others to so use.
BIOSYM agrees to provide, free of charge to D-Mol, copies of any software
containing any modifications, improvements, or enhancements made by BIOSYM
pursuant to this Article 10.0.
10.3 Title to any modifications, improvements or enhancements made by
D-Mol to Software as licensed in Article 1.0 herein shall vest in D-Mol, except
that all such improvements shall automatically be licensed to BIOSYM under the
terms of this Agreement. For the duration of this Agreement, D-Mol shall
promptly make available to BIOSYM any such modifications, improvements, or
enhancements, and agrees to provide free of charge to BIOSYM, copies of any
software and Software Source code containing any modifications, improvements, or
enhancements made by D-Mol pursuant to this Article 10.
10.4 Title to any modification, improvements or enhancements made by
the joint collaboration of D-Mol and BIOSYM to Software as licensed in Article
1.0 herein ("Joint Improvements") shall vest in D-Mol and BIOSYM as tenants in
common. All such improvements shall automatically be licensed to BIOSYM and to
D-Mol under the same terms of paragraphs 10.2 and 10.3 as apply to improvements
made by the parties independently. The licenses granted in this Paragraph 10.4
shall survive the termination of this Agreement. Neither party shall permit the
Joint Improvements to become part of the public domain without the prior express
written authorization of the other party.
ARTICLE 11
TERMINATION
11.1 Either party shall have the right to terminate the license granted
herein upon giving written notice of such termination upon the following to
occur:
11.1.1 The material breach or default of any material
obligation of this Agreement by the other party, which default is incapable of
cure or which, being capable of cure, has not been cured within thirty (30) days
after receipt of notice of such default from the non-defaulting party; or
11.1.2 If either party hereto becomes insolvent, makes a
general assignment for the benefit or creditors, suffers or permits the
appointment of a receiver for its business or assets, becomes subject to any
proceeding under any bankruptcy or insolvency law whether domestic or foreign,
or has wound up or liquidated, voluntarily or otherwise; or
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11.1.3 Any major adverse change in the business operation of
the other party occurs which shall materially and adversely affect that party's
obligations hereunder.
Termination under this Paragraph 11.1 shall be effective thirty (30) days
following the date of written notice thereof if the breaching party has not
remedied the effect of such breach within said thirty (30) days.
11.2 Upon termination of the license granted herein, BIOSYM shall no
longer have the right to market or sublicense Software. BIOSYM shall, however,
have the right to continue to use the Software code and to copy and maintain the
Software code as may be required to fulfill its contract responsibilities to
customers to whom Software has been licensed. In the event of a termination
under paragraph 11.1.2 or 11.1.3 of this Agreement, D-Mol shall have the right
to cause BIOSYM to assign to D-Mol or its nominee all of BIOSYM's rights and
obligations in and under such sublicensees as D-Mol selects. BIOSYM shall take
whatever additional actions it reasonably can to terminate its customer
responsibilities in this regard so that, in a period not to exceed three years,
all such responsibilities shall end.
11.3 Upon termination of this Agreement, D-Mol shall destroy or return
to BIOSYM all material received from BIOSYM which has been labeled by BIOSYM as
confidential and which relates to modifications, improvements or enhancements to
Software made by BIOSYM. No further use of these materials by D-Mol shall be
permitted. D-Mol shall, however, have the right to continue to use in its own
work, but not to sublicense, versions of the Software code and enhancements
thereto which may have been supplied to it by BIOSYM up to the date of
termination.
11.4 Upon termination of this Agreement, BIOSYM shall return to D-Mol
all copies of confidential material in its possession belonging to or provided
by D-Mol which has been labeled by D-Mol as confidential and which relates to
the Software or to modifications, improvements or enhancements to Software made
by D-Mol, without retaining any copies or summaries thereof or notes with
respect thereto.
11.5 D-Mol acknowledge and agrees that a material breach of any of the
terms in this Agreement will result in irreparable and continuing damage to
BIOSYM for which there will be no adequate remedy at law and in the event of any
breach of this Agreement, BIOSYM shall be entitled to injunctive and such other
and further relief, including damages, as may be proper.
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ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 This Agreement does not create a joint venture or partnership
relationship between D-Mol and BIOSYM. Neither party hereto shall have any right
or authority to act for or bind the other except as set forth in this Agreement
or in a written statement of the party to be bound signed by its chief executive
officer.
12.2 BIOSYM shall pay, in addition to other amounts paayable under this
Agreement, all sales, use, and other taxes, federal, state, or otherwise which
are levied or imposed by reason of the transactions contemplated by this
Agreement; provided, however, BIOSYM shall not be responsible for any tax based
on D-Mol net income.
12.3 The article headings are for convenience only and do not form part
of this Agreement for purposes of interpretation.
12.4 Any changes or modifications to this Agreement must be in writing
and executed by duly authorized representatives of the parties hereto.
12.5 Any notice or payment made pursuant to this Agreement shall be
deemed to have been made on the date mailed if mailed by certified mail, or upon
the date received if otherwise transmitted. Payments to and correspondence with
BIOSYM should be sent to:
BIOSYM Technologies, Inc.
00000 Xxxxxx Xxxxxx Xxxx, Xxxxx X
Xxx Xxxxx, XX 00000
With a copy to: Xxxxx X. Xxxxxxx
Xxxxxxx, Xxxxxxx & Xxxxxxxx
000 Xxxxxxxx, Xxxxx 0000
Xxx Xxxxx, XX 00000
Any notice to or correspon-
dence with D-Mol should
be sent to: D-Mol, Inc.
c/o Xxxxxx X. Xxxxxxx
000 Xxxxxxxxxx Xxxxx
Xxxxxxxx, XX 00000
With a copy to: Xxxxxx X. Xxxxxxxxxx Xx.
11.
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Xxxxxxxx & Xxxxxx
00 Xxxxx Xx Xxxxx Xxxxxx
Xxxxx 0000
Xxxxxxx, XX 00000
12.6 This Agreement shall be binding upon and inure to the benefit of
the successors, receivers, and assigns of the parties hereto; but the respective
interests of either party in and to this Agreement may not be assigned or
pledged without the written consent of the other party except incident to a sale
or transfer of the entire business to which this Agreement pertains, which
consent shall not be unreasonably withheld.
12.7 The Agreement may be executed in any number of counterparts and by
different parties in separate counterparts, each of which when so executed and
delivered shall be deemed to be an original and all of which, taken together,
shall constitute but one and the same instrument.
12.8 This Agreement shall be governed by and construed under the
internal laws of the State of California, U.S.A.
12.9 If any terms or provision of this Agreement shall be found to be
illegal or unenforceable then, notwithstanding that term, all other terms of
this Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto each have caused this Agreement
to be executed by its duly authorized representative in duplicate as of the date
and year first above written.
BIOSYM TECHNOLOGIES, INC.
a California corporation
By: /s/ [signature illegible]
---------------------------------------
Chairman and Chief Scientific Officers
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Title
2/16/88
---------------------------------------
Date
D-MOL, INC.
an Illinois corporation
12.
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By: /s/ Xxxxxx X. Xxxxxxx
---------------------------------------
President
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Title
2/14/88
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Date
13.
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EXHIBIT A
BIOSYM Technologies, Inc.
SOFTWARE LICENSE AGREEMENT
Agreement No.: ___________
Between BIOSYM Technologies, Inc. (BIOSYM)
a California Corporation
00000 Xxxxxx Xxxxxx xxxx, Xxxxx X
Xxx Xxxxx, XX., 00000, X.X.X.
And (LICENSEE)
WHEREAS, LICENSEE is desirous of obtaining the right to use licensed
Software, NOW, THEREFORE, BIOSYM and LICENSEE, for their mutual benefit, hereby
agree as follows:
ARTICLE 13
DEFINITIONS
13.1 The term "Agreement" shall mean the terms and conditions herein, as
well as the Appendix(ces) attached hereto and considered to be a part
of the Agreement.
13.2 The term "Software" shall mean the computer programs, derivative works
and support material including but not limited to documentation,
manuals, flow charts, specifications and training materials related
thereto.
13.3 The term "Designated System(s)" shall mean the specified CPU(s) on
which the Software under this Agreement is intended to run, as
specified in Appendix A.
13.4 The term "Site" shall mean a computer system or systems composed of one
or more CPU's that are located at the same physical address.
13.5 The term "Designated Purpose" shall mean the specific use of the
Software as permitted by this Agreement.
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13.6 The Software, Code Format, Fees, and Designated System(s), which are
the subject of this Agreement are identified in Appendix A.
ARTICLE 14
LICENSE AND TERM
14.1 BIOSYM hereby grants to LICENSEE, and LICENSEE hereby accepts a
nontransferable, nonexclusive right to use the Software at a single
site within LICENSEE'S own organization and with the Designated System
only; provided, however, that LICENSEE may use a single backup computer
system as a substitute for the Designated System only during such
periods when the Designated System is inoperative because it is
malfunctioning or undergoing repair, maintenance or modification.
14.2 LICENSEE agrees to inform BIOSYM immediately of any changes in the
location of Software, and upon written request of BIOSYM, provide
verification of the current location and computer system on which the
Software is resident. Whenever a second computer system is permanently
substituted for a first computer system, prior to the installation of
the Software on the second computer system, an Addendum to the
Agreement shall be executed which identifies the second computer system
as the single Designated System. The License and Maintenance and
Support Fees paid for use with the first computer system shall be
applied for use with the second computer system.
14.3 Upon request at any time by LICENSEE for the right to make or install
additional copies of the Software on additional Designated Systems
within LICENSEE'S organization, and upon payment to BIOSYM of the
corresponding, then prevailing fee together with identification of the
Make and Model Number of the Designated Systems, BIOSYM shall promptly
issue an Addendum to the Agreement to reflect a corresponding extension
of the LICENSE.
14.4 LICENSEE is permitted to make such copies of the Software as are needed
for normal System Back-up. Any copy or partial copy of the Software
shall contain all the proprietary and copyright notices appearing on
the original being copied. All copyright notices are precautionary only
and do not imply publication.
14.5 Title to Software and to all copies and derivative works thereof is
permanently and irrevocably vested in BIOSYM and shall remain with
BIOSYM notwithstanding the delivery of copies to and use of Software by
LICENSEE.
14.6 The term of this Agreement shall be perpetual.
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ARTICLE 15
FEES AND PAYMENT
15.1 LICENSEE agrees to pay BIOSYM the fees set forth in Appendix A. All
fees due to BIOSYM are payable in U.S. Dollars.
15.2 LICENSEE shall be invoiced for all amounts due to BIOSYM. All invoices
are due and payable within thirty (30) days of their receipt.
15.3 Any balance which remains unpaid beyond thirty (30) days shall bear
interest at the rate of one and one half percent (1 1/2%) per month.
15.4 In addition to the above license fees, LICENSEE shall pay any sales
taxes, Value Added Taxes, and any export or import taxes or duties.
ARTICLE 16
LIMITED WARRANTY
16.1 BIOSYM warrants that the Software shall conform to BIOSYM's published
product specifications in effect on the date of this Agreement, and
that the Software shall be free from defects in material and
workmanship for a period of ninety (90) days from the date of shipment.
In the event that the Software proves to be defective in material or
workmanship within such ninety (90) day period, such defect(s) shall be
remedied as follows:
Upon receipt of written notice of defect(s) in the Software design or
workmanship, BIOSYM shall use its best efforts to provide a verbal
and/or written response to LICENSEE within thirty (30) days, or sooner,
if possible, after the receipt of LICENSEE Software defect
notification. Such response typically includes the issuance of a
correction to the Software and/or the associated Software
documentation, issuance of a program operating restriction, or issuance
of a program bypass, as appropriate under the circumstance. In order
for this software warranty to be applicable, LICENSEE must promptly
provide the following information to BIOSYM in writing for any alleged
Software defects:
(a) the operating conditions under which the defect occurs
(including the specific hardware/Software configuration), and
(b) a description of what occurs vs. what should occur, and
(c) a representative example of inputs for repeating and analyzing
the problem.
16.
17
This Software warranty shall not be applicable if LICENSEE has made any
unauthorized changes in the hardware comprising the Designated System or
Software or if the Software is used on a different computer system other than
the Designated System.
Further, BIOSYM does not warrant that the Software will necessarily
meet LICENSEE'S planned application, or that it will be error free, or that all
Software defects can be corrected. In the event the Software has a material
defect which cannot be corrected within one hundred eight (180) days from the
date of shipment, LICENSEE shall have the option to cancel the LICENSEE granted
in Article 2.0 and receive a cash refund from BIOSYM in the amount equal to the
original license fee for the Software, providing LICENSEE adheres to the terms
in Section 8.2.
EXCEPT AS SET FORTH ELSEWHERE IN THIS AGREEMENT, BIOSYM DISCLAIMS ALL
WARRANTIES RELATING TO THE SOFTWARE, EXPRESS OR IMPLIED, INCLUDING, BUT NOT
LIMITED TO, ANY IMPLIED WARRANTIES AGAINST INFRINGEMENT OF THIRD PARTY PROPERTY
RIGHTS, OF MERCHANTABILTY AND FITNESS FOR A PARTICULAR PURPOSE. BIOSYM SHALL NOT
BE LIABLE FOR ANY LOSS OF USE, INTERRUPTION OF BUSINESS OR INDIRECT, SPECIAL,
INCIDENTAL, PUNITIVE, OR CONSEQUENTIAL DAMAGES OF ANY KIND.
BIOSYM shall not be liable for, and LICENSEE assumes all liability for,
all personal injury, loss of profit and property damage connected with or
arising out of the use of the Software or any information supplied by BIOSYM
under this Agreement.
LICENSEE agrees to defend, indemnify, and hold harmless BIOSYM from any
loss, liability, expenses, or action against BIOSYM arising out of or in
connection with any act or omission by LICENSEE resulting from LICENSEE'S use of
the Software.
16.2 BIOSYM shall defend at its own expense any claim suit or proceeding
brought against LICENSEE insofar as it is based on a claim that the
Software constitutes an infringement of a United States patent or a
United States copyright, or other proprietary rights of any third party
arising under United States law. BIOSYM shall pay all reasonable
damages, costs and expenses finally awarded to third parties against
LICENSEE but shall not be responsible for any compromise made without
its consent. BIOSYM shall have the right, at its option, either to
obtain for LICENSEE the right to continue the use of Software,
substitute other computer software with similar operating capabilities,
or modify the Software so that it is no longer infringing. In the event
that none of the above options are reasonable available, LICENSEE's
sole and exclusive remedy shall be to terminate this Agreement, to
cease using the Software, and to return to BIOSYM all copies of the
Software and to obtain a refund of the orignial license fee paid to
BIOWYM.
17.
18
BIOSYM's liability for damages to LICENSEE for any cause and
regardless to the form of action, whether in contract or tort including
negligence, shall be limited to the greater of $100,000 or the fee paid
to BIOSYM. BIOSYM shall have no liability for any claim based on the
modification to the Software by LICENSEE or use of the Software in
combination with software or data not supplied by BIOSYM or use of the
Software on hardware other than the Designated System.
ARTICLE 17
MAINTENANCE AND SUPPORT
17.1 At the end of the ninety (90) day warranty period, BIOSYM shall provide
a subscription for it standard one year maintenance and support
service, for the fee set forth in Appendix A. The Warrant period shall
begin five days from the date of first shipment of Software licensed
under this Agreement.
BIOSYM's obligation to provide maintenance and support
services and LICENSEE's obligation to pay the then prevailing
maintenance and support charges shall be automatically renewed for
successive one year periods unless either party gives to the other
written notice of cancellation at least ninety (90) days prior to the
expiration of the then expiring term.
17.2 BIOSYM shall provide LICENSEE with maintenance and support service for
the Software as follows:
BIOSYM technical personnel shall provide telephone
consultation assistance during normal San Diego business hours (8:00
A.M. - 5:00 P.M., Monday through Friday) for U.S. customers. To
accommodate time differences, International customers shall be provided
an after hours service number of its equivalent to arrange for
telephone consultation;
BIOSYM technical personnel shall be available, at BIOSYM's
discretion, for on site service for problems not resolved by telephone
consultation. LICENSEE shall commit in advance to system availability
during the scheduled on site service visit; and
BIOSYM shall provide improvements and enhancements to the
Software, provided that they are not optional features for which a
separate charge is due.
17.3 Maintenance and service subscription shall be available to LICENSEE
subject to the follow conditions:
18.
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(a) LICENSEE is using the Software at the site and on the
equipment and operating system for which it is licensed;
(b) LICENSEE is using the hardware and operating system on which
the Software is running in the form supplied by the
manufacturer, without alternation; and
(c) LICENSEE is using the current version of the Software.
17.4 Written claims made by LICENSEE of the existence of errors in the
Software shall be submitted to BIOSYM in the format outlined in Section
4.1 (a.-c.).
17.5 Any changes made, by any person or agency, to the Software, without the
written permission of BIOSYM, immediately releases BIOSYM from any
responsibility to correct or maintain said Software, but in no way
alters LICENSEE's obligation to protect the Software under the terms of
this Agreement.
ARTICLE 18
LICENSEE ENHANCEMENTS
18.1 LICENSEE is permitted to make modification to enhance the software,
however it is the responsibility of the LICENSEE to integrate with new
versions any modifications made to the software by the LICENSEE. BIOSYM
technical personnel shall be available for limited telephone
consultation to assist in integrating customer enhancements in new
versions.
18.2 LICENSEE has the option to assign the rights to enhancements of mutual
benefit to BIOSYM. If BIOSYM accepts the enhancements as consistent
with its program objectives and coding standards, BIOSYM, upon
assignment, shall maintain that new feature or enhancement and include
it in new versions for a period of three (3) years or until such time
that it is agreed by both LICENSEE and BIOSYM that the feature is no
longer required.
ARTICLE 19
PROPRIETARY RIGHTS AND NON-DISCLOSURE
19.1 LICENSEE acknowledges that BIOSYM has asserted that portions of the
Software are of a proprietary nature and a commercial asset of
considerable value to BIOSYM. Accordingly, LICENSEE agrees that the
proprietary information shall be used by LICENSEE only as set forth in
this Agreement and LICENSEE shall not, without the written consent of
BIOSYM, disclose or otherwise making
19.
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available the Software or copies thereof to any third party. LICENSEE
agrees to take all responsible measures to maintain the Software in
confidence and to apply such procedures and precautions as LICENSEE
customarily uses to protect its own proprietary information. LICENSEE
shall disclose the Software only to those of its employees and
consultants as are necessary for the uses that LICENSED hereunder, and
shall notify each of such employees or consultants to such disclosure
is made in confidence. LICENSEE shall instruct such employees and
consultants to maintain such confidence and not to use the Software
except within the scope of their employment.
19.2 LICENSEE agrees to notify BIOSYM of any unauthorized use, copying,
and/or disclosure of the Software, and further agrees to take such
reasonable action as is necessary to prevent further use, copying,
and/or disclosure by any unauthorized third party which has gained
access to the Software as a result of LICENSEE having failed to comply
with covenants of this Article 7.0.
19.3 LICENSEE shall not rent, sell, lease or otherwise transfer the
Software.
19.4 LICENSEE shall not reverse assemble or reverse compile the Software.
19.5 LICENSEE agrees not to make copies to the Software in whole or in part
for archival purposes.
19.6 The obligations of LICENSEE under this Article 7.0 shall not apply to
any information which it can be demonstrated:
(a) has become part of the public domain other than by acts or
omissions of LICENSEE;
(b) has been furnished or made known to LICENSEE by third parties
(other than those acting on behalf of BIOSYM) as a matter of
legal right and without restriction on disclosure or use; or
(c) was in the possession of LICENSEE prior to disclosure by
BIOSYM, as evidenced by a written agreement, and was not
acquired directly or indirectly from BIOSYM.
19.7 This obligation of confidentiality shall continue without regard to the
termination of this Agreement until the Software becomes a part of the
public domain, without a breach of this Agreement by LICENSEE.
20.
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ARTICLE 20
TERMINATION
20.1 BIOSYM may terminate the license granted in Article 2.0 hereof if
LICENSEE breaches any of the covenants of this Agreement. Such
termination shall be effective thirty (30) days following the date of
written notice thereof if LICENSEE has not remedied the effect of such
breach within said thirty (30) day period.
20.2 Upon termination of the LICENSE granted in Article 2.0 hereof, LICENSEE
shall immediately purge all copies or partial copies of the Software
from all Designated Systems, and from any computer storage device or
medium on which LICENSEE has placed the Software, and return or destroy
all copies of support material in its possession and/or under its
control and shall provide BIOSYM with an executed certification that
all such programs, copies, and material have been destroyed. Backup or
archived copies shall be destroyed as regeneration occurs. No further
use of the Software by LICENSEE shall be permitted.
ARTICLE 21
INJUNCTIVE RELIEF/RESOLUTION OF DISPUTES
21.1 BIOSYM shall have, in addition to any other remedies available to it,
the right to injunctive relief to enjoin breaches of this Agreement.
LICENSEE hereby acknowledges that other remedies may be inadequate to
protect BIOSYM's rights.
If disputes or differences of opinion arise from this
Agreement or from provisions for its execution, both parties shall
endeavor to obtain an amicable, out-of-court settlement. Such endeavor
to reach out-of-court settlement shall be deemed to have failed when
one party advises the other party correspondingly in writing. When an
endeavor to reach out-of-court settlement has failed, the dispute shall
be settled according to the Rules of Conciliation and Arbitration of
the International Chamber of Commerce (ICC) in Paris, France by three
arbitrators nominated in accordance with said rules. Substantive law of
the State of California of the United State of America shall apply.
Place of arbitration proceedings will be Bern, Switzerland. Procedural
law of Switzerland shall be additionally applicable if the rules of the
ICC contain no applicable provisions.
The arbitrators' award shall be sustained in writing. The
court of arbitration shall also decide on the costs of arbitration
proceedings.
21.
22
ARTICLE 22
MISCELLANEOUS PROVISIONS
22.1 The article headings are for convenience only and do not form part of
this Agreement for purpose of interpretation.
22.2 The preprinted portions of any purchase order other LICENSEE document
submitted in conjunction with an order for licensed Software hereunder
shall not add to or vary the terms of this Agreement.
22.3 This Agreement and its attachments constitute the sole, entire and
final Agreement between the parties hereto and with respect to the
subject matter hereof and shall supersede all previous negotiations,
commitments, writings and understandings. Any changes or modifications
to this Agreement must be in writing and executed by duly authorized
representatives of the parties hereto.
22.4 Any notice or payment made pursuant to this Agreement shall be deemed
to have been made on the date mailed if made certified mail, or upon
the date received if otherwise transmitted. Payments to and
correspondence with BIOSYM shall be sent to BIOSYM at its address set
forth above or as otherwise directed by BIOSYM in writing. Any notice
or correspondence with LICENSEE shall be sent to the address specified
in Appendix A.
22.5 This Agreement shall be binding upon and inure to the benefit of the
successors, and assigns of the parties hereto; but the respective
interests of either party in and to this Agreement may not be assigned
or pledged without the written consent of the other party except
incident to a sale or transfer of the entire business to which this
Agreement pertains, which consent shall not be unreasonably withheld.
LICENSEE consents in advance to the assignment or pledge of BIOSYM of
any amounts payable by LICENSEE under this Agreement.
22.6 The Agreement may be executed in any number of counterparts and by
different parties in separate counterparts, each of which when so
executed and delivered shall be deemed to be an original and all of
which, taken together, shall constitute but one and the same
instrument.
22.7 LESSEE agrees that neither the technical data of the Software, nor the
direct product thereof is intended to be shipped, either directly or
indirectly to Afghanistan, Albania, Bulgaria, Cuba, Czechoslovakia,
Estonia, German Democratic Republic, Hungary, Laos, Latvia, Libya,
Lithuania, Mongolian People's Republic, North Korea, People's Republic
of China, Poland, Romania, Union of Soviet Socialist Republics, or
Vietnam.
22.
23
22.8 If any term or provision of this Agreement shall be found to be illegal
or unenforceable then, notwithstanding that term, all other terms of
this Agreement shall remain in full force and effect.
22.9 This Agreement shall be effective on the date of execution by the last
signator.
LICENSEE BIOSYM Technologies, Inc.
-------------------------------------- --------------------------------------
Signature Signature
-------------------------------------- --------------------------------------
Typed Name Typed Name
-------------------------------------- --------------------------------------
Title Title
-------------------------------------- --------------------------------------
Date Date
23.
24
EXHIBIT B
NON-DISCLOSURE AGREEMENT
I, _________________________ understand that the source code for the
software products Insight and Discover from BIOSYM Technologies, Inc. are
proprietary and have been licensed to the Agouron Institute, 000 Xxxxx Xxxxxxxxx
Xxxxx, Xx Xxxxx, Xxxxxxxxxx. I have read and personally agree to maintain the
terms of this license. In addition I agree to the following conditions:
a. I will not distribute the products (including source code,
executable code, or manuals) to anyone not explicitly included in the license.
b. I will not take them with me when I leave this institution or any
copy of them.
c. I am not affiliated with any commercial or non profit group which
either directly or indirectly is receiving money for molecular modeling software
other than from government funding agencies.
d. I also realize and acknowledge that these conditions apply both to
the original code and to any modified version of the code and that I gain no
ownership of the code through any modifications that I might make. I further
understand that I may not distribute any such modifications to anyone outside
this institution, even though they may be licensed for the products, without
express written permission from BIOSYM.
UNDERSTOOD AND AGREED:
BIOSYM TECHNOLOGIES, INC
--------------------------------- -----------------------------
Signature Signature
--------------------------------- -----------------------------
Typed Name Typed Name
--------------------------------- -----------------------------
Title Title
--------------------------------- -----------------------------
Date Date
24.
25
AMENDMENT NUMBER ONE
TO THE
SOFTWARE LICENSE/RESEARCH AGREEMENT
BETWEEN
D-MOL, INC. and BIOSYM TECHNOLOGIES, INC.
THIS AMENDMENT NUMBER ONE TO THE SOFTWARE LICENSE/RESEARCH AGREEMENT
(the "Amendment to the Agreement) is made and entered into as of the date of the
last signature hereto, by and between BIOSYM Technologies, Inc. ("BIOSYM"), a
California corporation, and D-Mol, Inc. ("D-Mol"), an Illinois corporation.
RECITALS
WHEREAS, the parties have entered into a Software License/Research
Agreement (the "Agreement") dated February 19, 1988; and
WHEREAS, the parties wish to modify the Agreement;
NOW THEREFORE, in consideration of the promises and the mutual
covenants contained herein and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
Paragraph 1.1 is replaced in its entirety with the following:
1.1 D-Mol hereby grants to BIOSYM, upon the terms and conditions
herein specified, a non-exclusive, non-transferable 20 year
license, extendable by mutual agreement, to reproduce Software
and all enhancements thereto. D-Mol further grants to BIOSYM
an exclusive, except to the extent provided for in Paragraph
1.1.2, worldwide license to convert, or to have converted, the
Software to operate on various computer hardware lines, thus
creating products (hereinafter "Software Product(s)"). D-Mol
further grants BIOSYM an exclusive, except to the extent
provided for in Paragraph 1.2, worldwide license to use and to
sublicense others to use Software, Software Products, and all
enhancements thereto, provided such sublicense is granted in
writing and contains terms consistent with those in BIOSYM's
then current standard Sublicensing Agreement, a current copy
of which is attached hereto as Exhibit A. Material changes to
the Sublicensing Agreement will be subject to D-Mol's approval
which shall not be unreasonably withheld.
Paragraph 1.1.2 is replaced in its entirety with the following:
25.
26
1.1.2 At any time within three years of the date hereof, if
opportunities, including the opportunity to create new
Software Product(s) by converting the Software to operate on
additional computer hardware lines, exist or develop which
D-Mol does not believe are being addressed by BIOSYM in a
timely and effective manner, D-Mol may provide written
notification to BIOSYM's President and/or Board of Directors
identifying the opportunities and requesting BIOSYM to make
reasonable commitments to address such opportunities. BIOSYM
shall have 180 days following such notification to make such
commitments to D-Mol. In the case of conversions of the
Software to create new Software Product(s), BIOSYM shall have
one year from the date of commitment to accomplish the
conversion. In the case of other opportunities, BIOSYM shall
have a reasonable period of time from the date of commitment
to accomplish the committed work. If BIOSYM fails to make such
timely commitments or subsequently fails to meet, in a timely
manner, commitments made, D-Mol shall have the right to
license to convert, to use, and to sublicense others to use
Software and all enhancements thereto with respect to the
neglected opportunities. Where D-Mol grants such a license,
D-Mol shall pay to BIOSYM twenty percent of the compensation
which D-Mol receives under the terms of said license.
In Paragraph 4.1.1 through 4.1.5 inclusive, in each occurrence, the
work "Software" is replaced by the words "each Software Product."
IN WITNESS WHEREOF, the undersigned have executed this Amendment to the
Agreement.
D-MOL, INC. GENERAL PARTNER BIOSYM TECHNOLOGIES, INC.
D-Mol Partners
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ X.X. Xxxxx, Xx.
----------------------------- ---------------------------------
Signature Signature
Xxxxxx X. Xxxxxxx X.X. Xxxxx, Xx.
----------------------------- -------------------------------------
Typed Name Typed Name
President President and Chief Operating Officer
----------------------------- -------------------------------------
Title Title
May 18, 1990 May 16, 1990
----------------------------- -------------------------------------
Date Date
26.
27
AMENDMENT NUMBER 2 TO SOFTWARE LICENSE/RESEARCH AGREEMENT
This Amendment Number 2 ("Amendment") to the Software License/Research
Agreement dated February 19, 1988 between Biosym Technologies Inc. ("Biosym"), a
corporation having offices at 0000 Xxxxxxxx Xxxx, Xxx Xxxxx, XX and D-Mol
Limited Partnership ("D-Mol"), a limited partnership having offices at 0000
Xxxxx Xxxxxx, Xxxxxxxx, XX 00000 (the "License Agreement") is made this 10th day
of August, 1996, pursuant to parragraph 12.4 of the License Agreement. The
License Agreement was previously amended by Amendment Number 1 thereto dated May
16, 1990 and references herein to the License Agreement shall mean the original
License Agreement, as amended by Amendment Number. 1. All terms capitalized but
not otherwise defined herein shall have the mean is ascribed to them in the
License Agreement.
WHEREAS, Biosym and D-Mol wish to amend certain provisions of the
License Agreement;
NOW THEREFORE, BE IT RESOLVED, for good and valuable consideration,
receipt of which is hereby acknowledged, the undersigned hereby agree that the
License Agreement shall be amended by this Amendment as follows:
1. REFERENCES TO BIOSYM. All references to Biosym in the License
Agreement, as amended by this Amendment, shall be deemed to include Molecular
Simulations Incorporated ("MSI"), the parent corporation by which Biosym is
wholly-owned.
2. DEVELOPMENT AND MARKETING PLAN. Within a reasonable period of time
after execution of this Amendment, D-Mol and Biosym will prepare a plan for
development and marketing of the D-Mol(3) software, and both parties will use
their reasonable, best efforts to implement such plan. The plan will include
integration of D-Mol into Cerius2 and the development of an alpha version of
D-Mol(3). The D-Mol(3) software will be an enhanced version of the D-Mol
software incorporating aspects of the current commercial D-Mol software, the
D-Mol variant known as D-Solid, and some new algorithmic developments. The
D-Mol(3) software will be deemed to be "Software Product" as defined in the
License Agreement. MSI will promote the D-Mol(3) software as the primary code in
the application areas where such software has superior functionality. During the
period that D-Mol(3) software is being integrated into Cerius2, the fact that
the D-Mol(3) software has not been integrated into Cerius2 will not in and of
itself adversely affect assessment of the D-Mol(3) software's functionality.
3. ADJUSTMENT TO ROYALTY RATE. Upon Biosym's announced commercial
release of the D-Mol(3) software, the [*] royalty rate in effect
* CONFIDENTIAL TREATMENT REQUESTED
27.
28
under Sections 4.1.1, 4.1.2, and 4.1.5 of the License Agreement shall be
[*].
4. MINIMUM ANNUAL ROYALTIES. A new Section 4.1.7 is hereby added to the
License Agreement as follows:
"4.1.7 Upon Biosym's commercial release of the
Software known as D-Mol(3) (the "Release Date"), Biosym will
begin paying D-Mol minimum annual royalties under Sections
4.1.1 through 4.1.5, collectively, of this Agreement ("Minimum
Annual Royalties") at least equal to the Minimum Target, as
such term is defined in this Section . For purposes of this
Section 4.1.7, "Minimum Target" means [*] of the average annual
royalties paid by Biosym to D-Mol pursuant to Sections 4.1.1
through 4.1.5, collectively, of this Agreement during the three
calendar years immediately preceding the year in which the
Release Date occurs. Provided that D-Mol meets the schedule in
the Development and Marketing Plan to deliver D-Mol(3) to
Biosym, the relevant years shall be 1994, 1995 and 1996. If the
Minimum Annual Royalties in any year in which the Minimum
Target applies do not equal or exceed the Minimum Target, then
D-Mol, in its discretion and upon written notice to Biosym, may
convert Biosym's exclusive license under Section 1.1 of this
Agreement to a non-exclusive license. In the event that D-Mol
converts such exclusive licenses to a non-exclusive license,
the royalty rate in effect under Sections 4.1.1, 4.1.2 and
4.1.5 of this Agreement shall [*] and Biosym's obligation to
pay Minimum Annual Royalties at or above the Minimum Target
shall no longer apply. The foregoing set forth D-Mol's
exclusive remedy in the event that Biosym does not pay Minimum
Annual Royalties equal to or exceeding the Minimum Target. For
purposes of convenience and because Biosym's fiscal year is a
calendar year, the parties agree that the Minimum Target shall
be prorated for the balance of the calendar year in which the
Release Date occurs."
5. OPTION GRANTS. In connection with the parties' execution of this
Amendment, MSI agrees to grant each of Xxxxxx Xxxxxxx and Xxxxxxx Xxxxxx an
option to purchase [*] shares of MSI's common stock at an exercise price equal
to the fair market value at the date of grant, as determined by MSI's board of
directors. Such options shall be non-qualified stock options that vest at a rate
of 25% per year so long as the License Agreement remains in effect, starting May
1997.
Except as amended hereby, the terms and provisions of the License
Agreement shall remain in full force and effect.
* CONFIDENTIAL TREATMENT REQUESTED
28.
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This Amendment may be executed in any number of counterparts, each of
which may be executed by less than all of the parties hereto and each of which
shall constitute one and the same instrument.
IN WITNESS WHEREOF, the undersigned have executed this Amendment to the
Agreement.
BIOSYM TECHNOLOGIES, INC. D-MOL, INC. GENERAL PARTNER
By: /s/ Xxxxx X. Xxxxx By: /s/ Xxxxxx X. Xxxxxxx
---------------------------- ------------------------------
Title: Chief Financial Officer Title: President
--------------------------- ----------------------------
Title
MOLECULAR SIMULATIONS
INCORPORATED /s/ Xxxxxx Xxxxxxx
--------------------------------
XXXXXX XXXXXXX
By: /s/ Xxxxx X. Xxxxx
--------------------------------
Title: Chief Financial Officer /s/ Xxxxxxx Xxxxxx
---------------------------- --------------------------------
XXXXXXX XXXXXX
29.
