EXHIBIT 10.21
AGREEMENT BETWEEN
AMERSHAM INTERNATIONAL PLC,
PHYTERA, INC
AND
PHYTERA LIMITED
COLLABORATION AGREEMENT
-----------------------
THIS AGREEMENT (reference number S930519C.L5) is made on the day of
of 1993
BETWEEN
(1) AMERSHAM INTERNATIONAL public limited company of Xxxxxxxx Xxxxx, Xxxxxx
Xxxxxxxx, Xxxxxxxxxxxxxxx XX0 0XX, Xxxxxxx ("AMERSHAM");
(2) PHYTERA, INC (formerly PLANT PHARMACEUTICALS, INC) of Xxx Xxxxxxxxxx Xxxxx,
Xxxxxxxxx, XX 00000, U.S.A.; and
(3) PHYTERA LIMITED (formerly PLANT SCIENCE LIMITED) of Xxxxx Xxxxx, Xxxxxxx
Xxxx, Xxxxxxxxx XX0 0XX, Xxxxxxx (together called hereafter "PHYTERA")
WHEREAS
A) AMERSHAM is engaged inter alia in the business of carrying out research
development and manufacture of products in the Life Science market.
B) PHYTERA is engaged in screening plant extracts and materials for potential
therapeutics.
C) The parties wish to collaborate with a view primarily to identifying novel
proprietary peroxidases and second to be able to screen for novel alkaline
phosphatases.
1. DEFINITIONS
-----------
In this agreement the following expressions shall bear the following
meanings:
1.1 "Confidential Information" shall mean any information, knowledge or
material of a confidential or secret nature of or concerning a party
hereto or its associated companies (the "Discloser") provided to
another party hereto (the "Recipient") which shall include but not be
limited to information, knowledge or material:
(a) of a technical or scientific nature relating to or concerning
know-how, technical data, computer programs and systems, designs,
data bases, inventions, manufacturing or engineering techniques
or procedures, equipment, materials, product designs and
specifications, test and quality assurance procedures, research
and research projects, and plans for future development;
(b) of a business nature such as marketing plans, product plans,
business strategies, costs, profits, formulae, markets, sales,
lists of customers and suppliers, distributors, agents,
consultants, information concerning or relating to any of its
employees, training methods and the like; and
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(c) entrusted to the Discloser by third parties on a confidential
basis.
1.2 "Improvements" means all improvements in the Products made by AMERSHAM
whether patentable or otherwise;
1.3 "Net Sales Price" means the gross invoice price of any product which
incorporates any of the Technology as sold by Amersham or any of its
Subsidiaries in an arms length transaction exclusively for money after
deduction of:
1.3.1 the cost of Packaging, transport and insurance;
1.3.2 all taxes and duties (including but not limited to value added
tax);
1.3.3 trade discounts, commissions and allowances and credits for
defective goods.
1.4 "New Product" means any product sold by AMERSHAM which incorporates an
enzyme the subject of the programme of research set out in Schedule I
of this agreement.
1.5 "Old Product" means any product manufactured by AMERSHAM which
incorporates a peroxidase enzyme not the subject of the programme of
research set out in Schedule I of this agreement.
1.6 "Packaging" means the outer containers for transporting the New
Product or the Old Product excluding vial, vial box, kit box or
anything else associated with such product itself.
1.7 "Subsidiary" means
(a) any company of which either party is a member and controls the
composition of its board of directors or holds more than half in
nominal value of its equity share capital or
(b) any company which is a subsidiary of any company which is a
subsidiary of that party.
1.8 "Life Sciences" means use of new products in fundamental and applied
scientific research and development in universities, research
institutes and pharmaceutical and biotechnology companies world wide.
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2. PERIOD OF AGREEMENT
---------------------------
This Agreement shall commence on the date hereof and shall last for a period of
[ ]* expiring without further notice unless otherwise agreed.
3. OBLIGATIONS OF AMERSHAM
---------------------------
3.1 AMERSHAM agrees to carry out its part of the programme of research set
out in schedule I of this agreement.
3.2 AMERSHAM agree to pay PHYTERA, Inc the following sums:-
3.2.1 [ ]*.
3.2.2 [ ]*
3.2.3 [ ]*
3.2.4 [ ]*.
3.2.5 [ ]*.
3.2.6 To pay the deferred consideration set out in clause 4 below.
4. DEFERRED CONSIDERATION
----------------------
4.1 Subject to the following provisions of this clause AMERSHAM agrees to
pay PHYTERA, Inc deferred consideration as follows:-
4.1.1 [ ]* of Net Sales Price of any New Product [ ]*
4.1.2 [ ]* of Net Sales Price of any New Product [ ]*.
____________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been requested, has been filed separately with the
Securities and Exchange Commission.
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4.2 [ ]*.
AMERSHAM agrees during such period to pay PHYTERA, Inc deferred
consideration as follows:-
4.2.1 [ ]* of Net Sales Price of such New Product [ ]*.
4.2.2 [ ]* of New Sales Price of such New Product [ ]*.
4.3 [ ]* it agrees to pay PHYTERA, Inc deferred consideration as follows:-
4.3.1 [ ]*.
4.3.2 [ ]*.
4.4.1 [ ]*.
4.4.2 [ ]*.
4.5.1 [ ]*.
4.5.2 [ ]*.
____________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been requested, has been filed separately with the
Securities and Exchange Commission.
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5. OBLIGATIONS OF PHYTERA
---------------------------
PHYTERA agrees to carry out its part of the programme of research set out
in schedule I of this agreement.
6. OWNERSHIP OF INTELLECTUAL PROPERTY
----------------------------------
All intellectual property including without limitation that involving or
relating to trade-names, trade-marks, patentable inventions, non-patentable
processes or know-how, computer software, designs or copyright arising out
of the programme of research set out in schedule I of this agreement shall
be the sole property of AMERSHAM. PHYTERA shall promptly execute any
document to secure such rights and to vest any such property legally in
AMERSHAM or its nominee and hereby appoints AMERSHAM as attorney in that
regard.
7. GRANT OF LICENCE TO PHYTERA, Inc
--------------------------------
AMERSHAM hereby grants PHYTERA, Inc an exclusive world wide royalty free
licence under any patents, patent applications or know-how which may arise
from the programme of research set out in schedule I of this agreement in
all fields other than that of LIFE SCIENCES, clinical diagnostics, forensic
testing and assays for microbiological contamination of food, water and the
environment.
8. GRANT OF LICENCES TO THIRD PARTIES
----------------------------------
8.1 AMERSHAM agrees to use its best efforts to grant licences under any
patents, patent applications or know-how which may arise from the
programme of research set out in schedule I of this agreement in the
field of clinical diagnostics on terms which are commercially
reasonable and agreed by Phytera, Inc but the parties agree that
Amersham may offer Xxxxxxx Kodak Ltd or its affiliates the right of
first refusal to an exclusive world wide licence on terms to be
agreed.
8.2 AMERSHAM agrees to pay PHYTERA, Inc half of any royalties it may
receive under the terms of any licence which AMERSHAM may grant under
the provisions of sub-clause 1 above of this clause.
9. CONFIDENTIALITY
---------------
9.1 The Recipient undertakes to treat any and all of such Confidential
Information as either may disclose to the other during the term of
this agreement as strictly confidential and not to divulge it to any
third party for any purpose whatsoever and not to make use of such
Confidential Information or any part thereof for any purpose other
than carrying out the terms of this agreement without the Discloser's
prior written consent.
9.2 In the event of the Recipient visiting any of the establishments of
the Discloser, the Recipient undertakes that any further Confidential
Information which may come to the Recipient's knowledge, as a result
of any such visit, shall be kept
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strictly confidential and that any such Confidential Information will
not be divulged to any third party and will not be made use of in any
way by the Recipient under any circumstances.
9.3 The undertakings in subclauses 1 and 2 shall not apply to:
(a) Confidential Information which at the time of disclosure is
published or otherwise generally available to the public.
(b) Confidential Information which after disclosure by the Discloser
is published or becomes generally available to the public,
otherwise than through any act or omission on the part of the
Recipient.
(c) Confidential Information which the Recipient can show by
reasonable written record was in its possession at the time of
disclosure and which was not acquired directly or indirectly from
the Discloser.
(d) Confidential Information rightfully acquired from a third party
who did not obtain it under pledge of secrecy to the Discloser or
another.
10. WARRANTIES
----------
Each party warrants and represents to the other that the Recitals of this
Agreement are true and that, by entering into and performing this
Agreement, it will not be in breach of any fiduciary or other contractual
duty to any third party, will not be creating any conflict of interest, has
the power to enter into this Agreement and has obtained all necessary
approvals to do so and that none of the results or products of the services
hereunder will infringe any third party's rights.
11. TERMINATION
-----------
11.1 Either party shall be entitled to terminate this Agreement:
11.1.1 upon giving [ ]* written notice to the other specifying the
nature of the breach in the event that the other party
commits a breach of a material term of this Agreement and
fails to remedy such breach (if capable of being remedied)
within the period of notice; or
11.1.2 immediately upon written notice in the event that the other
shall become insolvent or make any arrangement with its
creditors or has a receiver or administrator appointed to
the whole or any part of its assets or if an order
___________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities and Exchange
Commission.
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shall be made or a resolution passed for its winding up
unless such order or resolution is part of a scheme for its
amalgamation or reconstruction.
12. FORCE MAJEURE
-------------
12.1 Neither party shall be liable for its failure to perform hereunder
(other than the obligation to make payments of amounts due) as a
result of any events of force majeure beyond the party's reasonable
control including, but not limited to, acts of God, fire, flood, wars,
sabotage, civil strife or demonstrations, accidents, strikes, lockouts
or other labour disputes, shortages, government actions, governmental
laws, rules or regulations, inability to obtain supplies, raw
materials or transportation. If either party's performance is
prevented in whole or part by any such event, such party shall be
excused any of its obligations hereunder during the period of delay of
performance resulting from such event.
12.2 Promptly following the date of commencement of any event of force
majeure, the party affected by such event shall advise the other party
in writing of such date and the nature of such event of force majeure.
The term of the Agreement shall then be suspended for a period of time
equal to the total period of said party's delay in performance. If the
period of suspension of the agreement shall last for a period of six
months either party may give one months' written notice to the other
terminating this Agreement.
13. NON ASSIGNMENT
--------------
Neither party shall assign, subcontract or otherwise dispose of the whole
or any part of its rights and obligations under this Agreement without the
consent of the other except that
(i) AMERSHAM may assign the benefit of this Agreement to any of its
Subsidiaries or to the purchaser of the entire part of its
business of which the New Product forms part and
(ii) PHYTERA, Inc may delegate its obligations hereunder to PHYTERA
LIMITED, and may assign its right to receive payment under
Sections 3 and 4 and its license under Section 7 to the purchaser
of substantially all of its assets.
14. INDEMNITY
---------
14.1 Each of PHYTERA, Inc and AMERSHAM (each an "Indemnitor") warrants to
the other that:
(i) such party's contribution to the programme of research set out in
Schedule 1,
(ii) in the case of PHYTERA, Inc any results of PHYTERA's contribution
to such programme of research which are incorporated into a New
Product, and
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(iii) in the case of AMERSHAM, any results of AMERSHAM's contribution
to such programme of research which are licensed to PHYTERA, Inc
hereunder,
do not and will not infringe any patent, registered design, trademark
or other intellectual property right of any third party and agrees to
indemnify the other (the "Indemnitee") in respect of any claims,
costs, losses, expenses or damages it may incur as a result of the
breach of this warranty.
14.2 The provisions of subclause 1 of this clause shall not apply in
respect of infringement arising as a result of an Indemnitor having
followed a design or instruction furnished by the Indemnitee or
arising out of the independent negligence of the Indemnitee.
14.3 In the event of PHYTERA, Inc as an Indemnitor is liable to AMERSHAM as
an Indemnitee under this clause 14, PHYTERA, Inc in addition to
discharging its indemnification obligations, shall use its best
efforts to either:
14.3.1 procure the right for AMERSHAM to continue to sell the
infringing new Product; or
14.3.2 replace aspect of the new Product which has been deemed to be
infringing with a suitable non-infringing aspect.
15. NOTICES
-------
All notices provided for in this Agreement shall be in writing and shall be
deemed validly sent when sent by first class post or air mail postage
prepaid, addressed to the respective parties as follows:
If to AMERSHAM:
Attention: Company Secretary
Amersham International plc
Xxxxxxxx Xxxxx
Xxxxxx Xxxxxxxx
Xxxxxxxxxxxxxxx
Xxxxxxx XX0 0XX
If to PHYTERA:
Attention: President and CEO
PHYTERA, Inc
c/o MBRI
Xxx Xxxxxxxxxx Xxxxx
Xxxxxxxxx, XX 00000
XXX
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Notices under this Agreement shall also deemed be validly sent if sent by
telex or facsimile to the telex or facsimile number of the parties as each
last gave written notice of to the other. Telexed or facsimile notices
shall be confirmed by first class post or airmail postage prepaid, but
failure to do so shall not render any notice invalid. Notices may also be
sent by leaving the same at the above addresses of the parties. Notices
sent by registered airmail shall be deemed to have been delivered on the
fourth day after posting excluding Saturdays and Sundays and public
holidays in England and the United States of America.
16. ENTIRE AGREEMENT
----------------
This Agreement supersedes all prior agreements, arrangements and
undertakings relating to the subject matter hereof between the parties. No
addition to or modification of any provision of this Agreement shall be
binding upon the parties unless made by a written instrument signed by a
duly authorised representative of each of the parties.
17. SEVERABILITY
------------
17.1 If any provision of this Agreement or the application of any such
provision to any person or circumstance shall be invalid under the law
of any jurisdiction, the remainder of this Agreement or the
application of such provision to persons or circumstances other than
those as to which it is invalid shall not be affected thereby.
17.2 In the event a court of competent jurisdiction rules any provision of
this Agreement to be invalid, such ruling shall have no effect on the
remaining provisions of this Agreement and they shall continue in full
force and effect.
18. WAIVER
------
The failure of either party to enforce its rights under this Agreement at
any time for any period shall not be construed as a waiver of such rights.
19. CHANGES AND MODIFICATIONS TO AGREEMENT
--------------------------------------
No changes or modification are to be made to this Agreement unless
evidenced in writing and signed for and on behalf of both parties.
20. LAW AND JURISDICTION
--------------------
This Agreement shall be governed by and construed in accordance with
English law and the parties hereby submit to the exclusive jurisdiction of
the English courts.
21. HEADINGS
--------
The clause headings herein are for convenience only and shall not effect
the construction of interpretation of this Agreement.
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IN WITNESS WHEREOF the parties have set their hands the day and year first
before written.
Signed for and on behalf of Signed for and on behalf of
AMERSHAM INTERNATIONAL PLC PHYTERA, INC
Signature /s/ X. Xxxxx Signature /s/ Xxxxxxx Xxxxxxxx
------------------------ ---------------------------
Name (capitals) Xx. X. Xxxxx Name (capitals) X. Xxxxxxxx
----------------------------- ----------------------
Position Head Business Development Position President
-------------------------- -----------------------------
Date 19/7/93 Date July 26, 1993
------------------------------ ---------------------------------
Signed for and on behalf of
PHYTERA LIMITED
Signature /s/ X. X. Xxxxxxx
-------------------------
Name (capitals) X. X. Xxxxxxx
-------------------
Position Chairman
--------------------------
Date 30/7/93
------------------------------
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AMERSHAM/PLS COLLABORATIVE PROGRAMME Schedule 1
As agreed 10.3.93 at Amersham Laboratories
[
]*
____________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities and Exchange
Commission.
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[
]*
___________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities and Exchange
Commission.
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CONFIDENTIALITY AGREEMENT "TWO WAY"
THIS AGREEMENT (reference number J930318E.E3) is made on the day of
19
BETWEEN
(1) AMERSHAM INTERNATIONAL public limited company of Xxxxxxxx Xxxxx, Xxxxxx
Xxxxxxxx, Xxxxxxxxxxxxxxx XX0 0XX, Xxxxxxx ("AMERSHAM");
(2) PLANT PHARMACEUTICALS INC of Xxx Xxxxxxxxxx Xxxxx, Xxxxxxxxx, XX 00000,
XXX; and
(3) PLANT SCIENCE LIMITED of Xxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxxxxxx X00 0XX,
Xxxxxxx (together known as "PLANT")
WHEREAS
(a) AMERSHAM possesses or has access to valuable information, technical
knowledge, experience and data of a secret and confidential nature,
specified in the First Schedule, all of which are regarded by AMERSHAM as
commercial assets of considerable value;
(b) PLANT possesses valuable information, technical knowledge, experience and
data of a secret and confidential nature, specified in the Second Schedule,
all of which are regarded by PLANT as commercial assets of considerable
value;
(c) Each party is willing to consider disclosing its information as
respectively set out in the First and Second Schedules (the "CONFIDENTIAL
INFORMATION") to the other on the condition that the Recipient does not
disclose the same to any third party nor make use thereof in any manner
except as set out below.
In consideration of either party ("the DISCLOSER") disclosing any information of
which it is the possessor to the other party ("the RECIPIENT"), IT IS AGREED as
follows:
1. The RECIPIENT undertakes to treat any and all of such CONFIDENTIAL
INFORMATION as strictly confidential and not to divulge it to any third
party for any purpose whatsoever and not to make use of such CONFIDENTIAL
INFORMATION or any part thereof for any purpose other than that specified
in the Third Schedule without the DISCLOSER's prior written consent. For
the avoidance of doubt, the RECIPIENT has no right to use any part of the
CONFIDENTIAL INFORMATION to develop its own technology or seek patent
protection therefor.
2. In the event of the RECIPIENT visiting any of the establishments of the
DISCLOSER, the RECIPIENT undertakes that any further information of a
confidential nature which may come to the RECIPIENT's knowledge, as a
result of any such visit, shall deemed to be CONFIDENTIAL INFORMATION and
shall be kept strictly confidential and will not
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be divulged to any third party or made use of in any way by the RECIPIENT
under any circumstances.
3. The undertakings in Clauses 1 and 2 shall not apply to:
(a) information which at the time of disclosure is published or otherwise
generally available to the public; or
(b) information which after disclosure by the DISCLOSER is published or
becomes generally available to the public otherwise than through any
act or omission on the part of the RECIPIENT; or
(c) information which the RECIPIENT can show by reasonable written record
was in its possession at the time of disclosure and which was not
acquired directly or indirectly from the DISCLOSER; or
(d) information rightfully acquired from a third party who did not obtain
it under pledge of secrecy to the DISCLOSER or another.
4. This Agreement shall be governed by and construed in accordance with
English law and the parties hereby submit to the non-exclusive jurisdiction
of the English courts.
THE FIRST SCHEDULE
(CONFIDENTIAL INFORMATION disclosed by AMERSHAM
referred to in recital (a))
[
]*
THE SECOND SCHEDULE
(CONFIDENTIAL INFORMATION disclosed by PLANT
referred to in recital (b))
[
]*
___________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities and Exchange
Commission.
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THE THIRD SCHEDULE
(Purpose of Use referred to in Clause 1)
The RECIPIENT is permitted to use the CONFIDENTIAL INFORMATION for the
purpose only of research into the discovery of peroxidase enzymes which may
be of use in the techniques described in the first schedule and for
discussions with the DISCLOSER concerning possible future research
collaboration.
Signed for and on behalf of Signed for and on behalf of
AMERSHAM INTERNATIONAL PLC PHYTERA, INC
Signature /s/ X. X. Xxxxxx Signature /s/ Xxxxxxx Xxxxxxxx
--------------------------- ---------------------------
Name (capitals) X. X. Xxxxxx Name (capitals) X. Xxxxxxxx
-------------------------------- ----------------------
Position Head LS Business Development Position President
----------------------------- -----------------------------
Date 1 April 1993 Date 12 April 1993
--------------------------------- ---------------------------------
Signed for and on behalf of
PHYTERA LIMITED
Signature /s/ X. X. Xxxxxxx
----------------------------
Name (capitals) X. X. Xxxxxxx
----------------------
Position Director
-----------------------------
Date 21 April 1993
---------------------------------
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