EXHIBIT 10.17
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
MASTER SERVICES AGREEMENT
This Agreement, including all attachments hereto, (this "Agreement") is
entered into as of October 2, 1998 (the "Effective Agreement Date"), by and
between Deltagen, Inc., a Delaware corporation having an address at 0000 Xxxx
Xxxxxx, Xxx Xxxxxx, Xxxxxxxxxx 00000, and all of its Affiliates (as defined
below) ("DELTAGEN"); and ROCHE BIOSCIENCE, A DIVISION OF SYNTEX (U.S.A.) INC., a
Delaware corporation having an address at 0000 Xxxxxxxx Xxxxxx, Xxxx Xxxx,
Xxxxxxxxxx 00000 (as defined below) ("ROCHE BIOSCIENCE").
WHEREAS, DELTAGEN possesses knowledge and experience in the research
and generation of Knockout Mice (defined below); and
WHEREAS, ROCHE BIOSCIENCE wishes to engage DELTAGEN to obtain the
benefit of such knowledge and experience with respect to projects being
conducted by ROCHE BIOSCIENCE in research, development or evaluation of various
gene sequences, pharmaceutical compounds or products of ROCHE BIOSCIENCE;
NOW THEREFORE, in consideration of mutual covenants set forth herein,
DELTAGEN and ROCHE BIOSCIENCE (individually "Party" and collectively "Parties")
agree as follows:
1. DEFINITIONS.
1.1 "Affiliate" of a Party shall mean any corporation or other
business entity controlled by, controlling or under common control with, such
Party. For this purpose "control" shall mean direct or indirect beneficial
ownership of more than fifty percent (50%) of the voting or income interest
in such corporation or other business entity.
1.2 "Budget" means the pricing and payment terms for a Knockout
Mice Project substantially in the form set forth in Attachment II attached
hereto.
1.3 "Claim(s)"shall have the meaning set forth in Section 12.1
below.
1.4 "Confidential Information" means with respect to a Party
hereto (the "Disclosing Party"), collectively, all technical, financial and
business information of any kind whatsoever, and all tangible and intangible
embodiments thereof of any kind whatsoever, disclosed by the Disclosing Party
to the other Party hereto (the "Receiving Party") or obtained by the
Receiving Party through observation or examination of the foregoing, but only
to the extent such information or embodiment is maintained, as confidential
by the Disclosing Party and is marked or otherwise identified as confidential
when disclosed to the Receiving Party or, in the case of information given
verbally, is identified as confidential in a written document provided to the
Receiving Party within thirty (30) days after verbal disclosure to the
Receiving Party. For purposes of this Agreement and without limiting the
generality of the foregoing, the Data and the Study materials shall be
considered the Confidential Information of ROCHE BIOSCIENCE.
1.5 "Data" means all data-or information generated under this
Agreement during a Knockout Mice Project, * * * required to be generated,
collected or analyzed by Deltagen under a Scope of Work.
1.6 "Deltagen Technology" means all Inventions owned by or
licensed to DELTAGEN for use in the design, creation, development, generation
or production of Knockout Mice.
1.7 "Designated Site(s)" means the site(s) designated for a
Knockout Mice Project as set forth in the applicable Scope of Work.
1.8 "Effective Commencement Date" shall have the meaning set
forth in Section 2.3 below.
* * * Confidential material redacted and separately filed with the Commission.
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1.9 "FDA" means the United States Food and Drug Administration.
1.10 "Inventions" means technology, information, data, know-how,
inventions, improvements and all patent or other intellectual property rights
therein-and thereto.
1.11 "Knockout Mice (Mouse)" means * * * mice having a Standard
mutation wherein such mice transmit the Standard Mutation, in the form of
* * *, through the germ line.
1.12 "Knockout Mice (Mouse) Project" means a specific project to
create, test and generate Knockout Mice under this Agreement in accordance
with the terms of a specific Scope of Work.
1.13 "Law" means any federal, state or local law, rule, or
regulation.
1.14 "Milestone" shall mean the milestones set forth on the
Scope of Work attached hereto.
1.15 "Regulatory Agency" means the FDA or any other similar
governmental agency or agencies in countries other than the United States.
1.16 "Regulatory Filing" means any form or other statement
required to be filed with any Regulatory Agency.
1.17 "Roche Bioscience Representative" means the representative
identified in writing by ROCHE BIOSCIENCE on a Scope of Work, as such
representative may be changed from time to time
* * * Confidential material redacted and separately filed with the Commission.
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in writing by ROCHE BIOSCIENCE.
1.18 "Roche Bioscience Technology" means all Inventions and
Study Materials owned by, licensed to or otherwise freely available (without
restriction) to ROCHE BIOSCIENCE and delivered by ROCHE BIOSCIENCE to
DELTAGEN for use or otherwise utilized by DELTAGEN pursuant to this Agreement.
1.19 "Scope of Work" means a work plan for a Knockout Mice
Project (or other similar document) substantially in the form attached hereto
as Attachment I which references this Agreement and is mutually agreed to in
writing by ROCHE BIOSCIENCE and DELTAGEN.
1.20 "Standard Mutation" means the interruption or deletion in a
portion of a single, specified gene by * * *.
1.21 "Study Materials" means any samples or materials (including
chemical or biological) provided by ROCHE BIOSCIENCE to DELTAGEN under this
Agreement for purposes of a Knockout Mice Project, including but not limited
to drugs, compounds, genes, probes, formulations and other substances.
2. SCOPE OF WORK
2.1 INDIVIDUAL KNOCKOUT MICE PROJECTS. If ROCHE BIOSCIENCE
wishes DELTAGEN to perform a Knockout Mice Project under this Agreement,
ROCHE BIOSCIENCE and DELTAGEN shall meet and attempt to reach
mutual-agreement upon a Scope of Work for such Knockout Mice Project,
including the applicable technical specifications, budget and a time schedule
for such Knockout Mice Project to be performed pursuant to Attachments I and
II. ROCHE BIOSCIENCE shall initiate a request for a Scope of Work by
notifying DELTAGEN in writing and providing a description of the particular
Knockout Mice Project requested. DELTAGEN shall evaluate each such request to
determine whether such Knockout Mice Project is feasible, if it is otherwise
acceptable to DELTAGEN or if DELTAGEN requires modifications thereto. If such
a Knockout Mice Project, in DELTAGEN's commercially reasonable discretion, is
not feasible or is not otherwise acceptable to DELTAGEN, DELTAGEN shall have
the right (without penalty) to decline to undertake such Knockout Mice
Project. The terms of this Agreement, the Scope of Work and the Budget shall
form the entire agreement of the Parties with respect to each Knockout Mice
Project.
2.2 INITIATION OF KNOCKOUT MICE PROJECTS. Prior to DELTAGEN's
initiation of each Knockout Mice Project, ROCHE BIOSCIENCE shall:
2.2.1 Identify to DELTAGEN in writing each Knockout Mice
Project to be initiated and agree with DELTAGEN upon the Scope of Work for
such Knockout Mice Project;
2.2.2 Disclose in writing to DELTAGEN * * * in the
possession of or freely available (without restriction) to ROCHE BIOSCIENCE
that is reasonably necessary or useful for DELTAGEN to * * * to complete
Milestones 1 and 2 under this Agreement with respect to each Knockout Mice
Project.
2.2.3 Consult with and agree with DELTAGEN regarding the
* * *;
2.2.4 Transfer to DELTAGEN any * * * licensed (without
restriction or cost), owned by or freely available (without restriction) to
ROCHE BIOSCIENCE that may be suitable for * * *; and
2.2.5 Identify and notify DELTAGEN in writing of the
specifications (including the specific gene sequence) for each Knockout Mice
Project for which DELTAGEN is requested by ROCHE BIOSCIENCE to produce
Knockout Mice.
2.3 COMMENCEMENT OF KNOCKOUT MICE PROJECT. Each Knockout Mice
Project conducted hereunder shall commence fifteen (15) days after written
agreement by both parties on a Scope of Work and DELTAGEN's receipt from
ROCHE BIOSCIENCE of all information and materials set forth in Section 2.2
relating to such Knockout Mice project (the "Effective Commencement Date").
ROCHE BIOSCIENCE shall be solely responsible for identifying and notifying
DELTAGEN in writing of the specific gene sequence for each Knockout Mice
Project.
* * * Confidential material redacted and separately filed with the Commission.
3
2.4 PERFORMANCE. DELTAGEN shall use its commercially reasonable
efforts to perform its obligations under this Agreement, PROVIDED THAT, ROCHE
BIOSCIENCE acknowledges and agrees that the performance of the Knockout Mice
Projects involves a number of technologically complex steps and that any time
periods for performance are reasonable estimates only and may be subject to
change due to potential technological difficulties encountered. DELTAGEN
shall notify ROCHE BIOSCIENCE of any such technical difficulties as soon as
reasonably practicable after such difficulties are encountered and the
parties shall discuss in good faith methods to resolve such technical
difficulties in a reasonable manner. Except as otherwise set forth in this
Agreement, if DELTAGEN is unable to complete a Milestone under any Scope of
Work for a Knockout Mice Project within the estimated times set forth in the
Scope of Work, ROCHE BIOSCIENCE shall have the right to terminate such
Knockout Mice Project as set forth in Section 11.4.1.
2.5 COMPLETION OF KNOCKOUT MICE PROJECT. Each Knockout Mice
Project shall be deemed complete upon DELTAGEN's completion of Milestone 3 on
Attachment I for each such Knockout Mice Project ,and DELTAGEN's delivery of
at least * * * for a minimum of * * * and ROCHE BIOSCIENCE's confirmation
* * *.
2.6 DESIGN BY DELTAGEN. DELTAGEN shall use reasonable efforts
to design, as technically practical, * * * and to generate
Knockout Mice under each Knockout Mice Project according to the
specifications of ROCHE BIOSCIENCE as set forth in Section 2.2 above.
2.7 ADHERENCE TO SCOPE OF WORK. DELTAGEN shall perform those
activities described in the Scope of Work for each Knockout Mice Project at
the Designated Site, and shall comply with all the terms and requirements of
both this Agreement and the applicable Scope of Work. Neither Party shall
change or deviate from a Scope of Work without the prior written consent of
the other Party. Each party shall devote the necessary level of personnel and
resources to conduct and complete its obligations under this Agreement in a
commercially reasonable manner pursuant to the terms of this Agreement and in
compliance with all applicable laws.
2.8 CHANGES TO A KNOCKOUT MICE PROJECT. ROCHE BIOSCIENCE may,
from time to time, propose a modification to the terms of a Knockout Mice
Project. If ROCHE BIOSCIENCE intends to change any terms of a Knockout Mice
Project, including but not limited to the time schedule for the work, ROCHE
BIOSCIENCE shall submit such change(s) in writing to DELTAGEN (the "Proposed
Change"). Such Proposed Change shall be implemented by the parties only upon
DELTAGEN's acceptance of such modifications in writing and upon the mutual
agreement of the parties on a revised Budget as set forth in Section 3.2
below. DELTAGEN shall have the right, in its commercially reasonable
discretion, to accept or reject such Proposed Change based upon DELTAGEN's
good faith belief as to whether such change would alter DELTAGEN's technical
or financial obligations under a Scope of Work.
2.9 STANDARDS OF WORK AND ANIMAL CARE. With respect to each
Knockout Mice Project, DELTAGEN shall comply with all applicable * * * and
good industry standards regarding the maintenance and care of the Knockout
Mice. Prior to delivery to ROCHE BIOSCIENCE, * * *. DELTAGEN warrants that
the Knockout Mice delivered to ROCHE BIOSCIENCE under this Agreement shall be
in good health * * *. DELTAGEN shall replace any Knockout Mice that arrive at
ROCHE BIOSCIENCE diseased or dead (except for disease or death resulting from
the actions of ROCHE BIOSCIENCE's designated carrier). Upon the reasonable
request of ROCHE BIOSCIENCE, DELTAGEN shall provide * * * reports to ROCHE
BIOSCIENCE concerning maintenance and care of the Knockout Mice.
3. PAYMENTS AND BUDGET.
3.1 BUDGET. ROCHE BIOSCIENCE shall pay to DELTAGEN the payments
set forth in the Budget for each Knockout Mice Project. Except as set forth
in Section 3.2, such payments shall constitute full payment for such Knockout
Mice Project, including all labor, materials and overhead and ROCHE
BIOSCIENCE shall have no other payment obligations hereunder. All payments
made by ROCHE BIOSCIENCE under this Agreement shall be made in accordance
with the Budget.
3.2 CHANGES TO BUDGET. Upon DELTAGEN's receipt of a Proposed
Change in accordance with Section 2.8, if such Proposed Change is acceptable
to DELTAGEN, ROCHE BIOSCIENCE and DELTAGEN shall negotiate in good faith a
revised Budget (based upon the pricing and standards set forth in Attachment
II) and
* * * Confidential material redacted and separately filed with the Commission.
4
milestones based on the revised Scope of Work. No such revised Budget or
schedule shall be effective until mutually agreed to in writing by both ROCHE
BIOSCIENCE and DELTAGEN.
3.3 PAYMENTS. For each Knockout Mice Project, DELTAGEN shall
submit invoices to ROCHE BIOSCIENCE upon DELTAGEN's completion of each
Milestone set forth in the Scope of Work. ROCHE BIOSCIENCE shall pay such
invoices within thirty (30) days after receipt. Invoices based on
accomplishment of Milestones shall include a written representation of
DELTAGEN's completion of such Milestones in compliance with the terms of this
Agreement and, where applicable, documentation showing such completion.
4. RIGHTS TO INVENTIONS.
4.1 DELTAGEN'S INVENTIONS. DELTAGEN shall own all Inventions
relating to the design, creation, development, generation or production of
Knockout Mice under this Agreement, excluding any Roche Bioscience Technology.
4.2 ROCHE BIOSCIENCE'S INVENTIONS. ROCHE BIOSCIENCE shall own
all Inventions relating to the genes and sequences submitted to DELTAGEN by
ROCHE BIOSCIENCE under this Agreement, excluding any Deltagen Technology.
4.3 KNOCKOUT MICE OWNERSHIP. With respect to each Knockout Mice
Project, after ROCHE BIOSCIENCE has made all applicable Milestone payments or
other payments under this Agreement to DELTAGEN for such Knockout Mice
Project pursuant to Section 3.3, ROCHE BIOSCIENCE shall own (a) such Project
Knockout Mice and all progeny of such Project Knockout Mice, regardless of
whether they are bred to other mice and (b) all phenotypic characteristics of
such Project Knockout Mice and all Data and results generated by DELTAGEN in
performing the Knockout Mice Project for such Project Knockout Mice. DELTAGEN
may not at any time disclose or transfer to a third party any Knockout Mice
owned by ROCHE BIOSCIENCE or that are the subject of this Agreement. DELTAGEN
grants ROCHE BIOSCIENCE the exclusive right to use the Project Knockout Mice,
and their progeny, for any purpose, without restriction, including, but not
limited to, research, development, production, breeding, sales and
distribution of the Project Knockout Mice to its Affiliates and third
parties. Notwithstanding anything to the contrary in this Agreement, ROCHE
BIOSCIENCE shall not use the Project Knockout Mice or any Data, results or
other information provided by DELTAGEN to ROCHE BIOSCIENCE directly or
indirectly to reverse-engineer or practice (and ROCHE BIOSCIENCE shall not
directly or indirectly acquire rights to) any of DELTAGEN's or its licensor's
methods, processes, techniques, inventions, know-how or intellectual property
rights relating directly or indirectly to the design, creation, development,
generation or production of Knockout Mice or transgenic animals.
4.4 GENE SEQUENCES. DELTAGEN shall not use the gene sequences
transferred by ROCHE BIOSCIENCE, * * * or to reverse-engineer or practice the
methods, processes, techniques, inventions or know-how relating directly or
indirectly to the design, creation, development, generation or production of
such sequences or genes. Such sequences shall be used by DELTAGEN only for
purposes of its work pursuant to this Agreement and may not be transferred or
disclosed by DELTAGEN to any third party other than to fulfill its
obligations pursuant to this Agreement.
4.5 NO OTHER TECHNOLOGY RIGHTS. Except as otherwise expressly
provided in this Agreement, under no circumstances shall a Party, as a result
of this Agreement, obtain any ownership interest or other right or license in
any technology, information, know-how, patents, pending patent applications,
products or materials of the other Party, including items owned, controlled
or developed by the other Party or transferred by the other Party to
the-first Party at any time pursuant to this Agreement.
4.6 FURTHER ACTIONS. Each party shall reasonably (a) provide
the other party with such information reasonably available to such party, and
(b) execute and deliver such instruments, in each case, to assist in
perfecting each respective party's patent and intellectual property rights to
Inventions under Sections 4.1, 4.2 and 4.3 above.
* * * Confidential material redacted and separately filed with the Commission.
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5. CONFIDENTIALITY.
5.1 CONFIDENTIAL INFORMATION. Except as otherwise expressly
provided in this Agreement, each Party shall maintain in confidence the
Confidential Information of the other Party for a period of eight (8) years.
Neither Party shall use, disclose or grant the use of the other's
Confidential Information except on a need-to-know basis to those directors,
officers, employees, Affiliates, agents, sublicensees and permitted
assignees, to the extent such disclosure is reasonably necessary in
connection with its activities as expressly authorized by this Agreement. To
the extent that disclosure is authorized by this Agreement, prior to
disclosure, the Party wishing to disclose the other's Confidential
Information shall obtain the written agreement of any such Person who is not
otherwise bound by confidentiality obligations at least as restrictive as the
obligations set forth in this Agreement, to hold in confidence and not make
use of the Confidential Information for any purpose other than those
permitted by this Agreement. Each Party shall notify the other upon discovery
of any unauthorized use or disclosure of that Party's Confidential
Information.
5.2 PERMITTED DISCLOSURES. The nonuse and nondisclosure
obligations contained in this Article 5 shall not apply to the extent that
(a) the Receiving Party is required to disclose information by law, order or
regulation of a governmental agency or a court of competent jurisdiction,
PROVIDED THAT, the Receiving Party shall notify the Disclosing Party prior to
any such disclosure to permit the Disclosing Party to oppose such disclosure
or to seek confidential treatment of such information); or (b) the Receiving
Party can demonstrate that (i) the information was public knowledge at the
time of such disclosure by Receiving Party, or thereafter became public
knowledge, other than as a result of acts attributable to Receiving Party in
violation hereof; or (ii) the information was rightfully known by the
Receiving Party (as shown by its written records) prior to the date of
disclosure to it by the Disclosing Party; or (iii) the information was
disclosed to the Receiving Party on an unrestricted basis from a third party
not under a duty of confidentiality to the Disclosing Party; or (iv) the
information was independently developed by employees or agents of the
Receiving Party without access to the Confidential Information of the
Disclosing Party.
5.3 TERMS OF THIS AGREEMENT. Neither Party shall disclose any
terms or conditions of this Agreement to any Third Party without the prior
consent of the other Party, except as required by applicable law; PROVIDED
HOWEVER, that either Party may disclose the terms or conditions of this
Agreement to a third party under an obligation of confidentiality to such
Party in connection with a proposed sale or in the event of a proposed
merger, change in control, consolidation or other similar transaction.
Notwithstanding the foregoing, prior to execution of this Agreement, ROCHE
BIOSCIENCE and DELTAGEN shall agree upon the substance of information that
can be used to describe the existence and/or terms of this transaction in a
press release and ROCHE BIOSCIENCE and DELTAGEN may disclose such
information, as modified by mutual agreement from time to time, without the
other Party's consent.
5.4 NO LICENSE. Except as expressly provided in this Agreement,
nothing herein shall be construed as giving either Party any license, right,
title or interest in or ownership of the other Party's Confidential
Information. Upon termination of this Agreement or a particular Knockout Mice
Project as provided in Article 11, or upon either Party's request, each Party
shall return all Confidential Information of the other Party and/or destroy
any portion of any documents, computer records, notes and other material
retained by such Party which contains the Confidential Information of the
other Party. However, each Party may retain one copy of such Confidential
Information in its legal files to be used only for interpretation of this
Agreement.
6. REPRESENTATIONS AND WARRANTIES.
6.1 GENERAL REPRESENTATIONS. Each Party hereby represents and
warrants to the other Party as follows:
6.1.1 CORPORATE -EXISTENCE. Such Party is a corporation
duly organized, validly existing and in good standing under the laws of the
state in which it is incorporated.
6.1.2 AUTHORIZATION AND ENFORCEMENT OF OBLIGATIONS. Such
Party (a) has the corporate power and authority and the legal right to enter
into this Agreement and to perform its obligations hereunder, and (b) has
taken all necessary corporate action on its part to authorize the execution
and delivery of this Agreement and the performance of its obligations
hereunder. This Agreement has been duly executed and delivered on behalf of
such Party, and constitutes a legal, valid, binding obligation, enforceable
against such Party in accordance with its terms.
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6.1.3 NO CONSENTS. All necessary consents, approvals and
authorizations of all governmental authorities and other persons required to
be obtained by such Party in connection with this Agreement have been
obtained.
6.1.4 NO CONFLICT. The execution and delivery of this
Agreement and the performance of such Party's obligations hereunder (a) do
not conflict with or violate any requirement of applicable laws or
regulations, and (b) do not conflict with, or constitute a default under, any
contractual obligation of it.
6.2 DELTAGEN TECHNOLOGY. DELTAGEN represents and warrants to
its actual knowledge that DELTAGEN is not aware of any issued third party
patent, patent application or other intellectual property right that would be
infringed by ROCHE BIOSCIENCE's use of the Knockout Mice under this
Agreement. DELTAGEN represents and warrants to its * * * that DELTAGEN (a) is
the sole owner or licensee of the Deltagen Technology and (b) has not granted
to any third party any license or other interest in the Deltagen Technology
which would materially impair DELTAGEN's ability to perform its obligations
under this Agreement. Notwithstanding anything to the contrary in this
Agreement, ROCHE BIOSCIENCE acknowledges and agrees that (x) each gene
sequence of interest to ROCHE BIOSCIENCE has been or will be selected by
ROCHE BIOSCIENCE and ROCHE BIOSCIENCE bears full responsibility for
identifying, selecting and providing DELTAGEN with the specific gene
sequences for each Knockout Mice Project, and consequently, for any Claims
relating to such gene sequences and (y) DELTAGEN's representation and
warranty under this Section 6.2 shall not apply or relate to the
identification, selection or knockout of the specific gene sequences for each
Knockout Mice Project under this Agreement or any Knockout Mice arising from
such gene sequences.
6.3 ROCHE BIOSCIENCE TECHNOLOGY. ROCHE BIOSCIENCE represents
and warrants to its actual knowledge that Roche is not aware of any issued
third party patent, patent application or other intellectual property right
that would be infringed by DELTAGEN's use of the Roche Bioscience Technology
under this Agreement. ROCHE BIOSCIENCE represents and warrants to its actual
knowledge that Roche (a) is the sole owner or licensee of the Roche
Bioscience Technology and (b) has not granted to any third party any license
or other interest in the Roche Bioscience Technology which would materially
impair DELTAGEN's ability to perform its obligations under this Agreement.
6.4 LIMITATION OF WARRANTY AND LIABILITY. EXCEPT AS OTHERWISE
EXPRESSLY SET FORTH IN THIS AGREEMENT, DELTAGEN MAKES NO WARRANTIES, EXPRESS
OR IMPLIED, WITH RESPECT TO THE KNOCKOUT MICE GENERATED UNDER THIS AGREEMENT
OR THE KNOCKOUT MICE PROJECTS. DELTAGEN DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED,. INCLUDING WITHOUT LIMITATION A WARRANTY OF NON-INFRINGEMENT AND THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR LOSS OF PROFITS OR INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES DIRECTLY OR INDIRECTLY ARISING OUT OF THIS
AGREEMENT OR THE RESEARCH, DEVELOPMENT, GENERATION OR USE OF THE KNOCKOUT
MICE UNDER THIS AGREEMENT.
7. REPORTING.
DELTAGEN shall deliver via overnight delivery service (or other service
agreed to by the parties) to the ROCHE BIOSCIENCE Representative all reports
required to be delivered in connection with a Knockout Mice Project.
8. RECORD RETENTION, INSPECTIONS, AND COOPERATION.
8.1 MAINTENANCE OF DATA. DELTAGEN shall maintain all written Data for a
period of not less than two (2) years. At the expiration of such two (2) year
period, ROCHE BIOSCIENCE, at ROCHE BIOSCIENCE's cost and expense, shall promptly
arrange with DELTAGEN for delivery of such Data to ROCHE BIOSCIENCE or DELTAGEN
may dispose of such written Data sixty (60) days after providing written notice
of the same to ROCHE BIOSCIENCE.
* * * Confidential material redacted and separately filed with the Commission.
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8.2 NOTICE OF REGULATORY ACTION. If a Regulatory Agency or, any
other federal, state or local government authority conducts, or gives notice
of its intent to conduct, an inspection at any Designated Site, or takes any
other regulatory action with respect to a Knockout Mice Project conducted
under this Agreement, then the Party learning thereof shall promptly give the
other Party notice thereof, and each Party shall provide the other with any
information reasonably required in connection therewith.
9. DATA.
For each Knockout Mice Project, DELTAGEN shall prepare and submit to
ROCHE BIOSCIENCE or its designee all Data as set forth under the applicable
Scope of Work, but in no event later than thirty (30) business days after (i)
the date of termination of such Knockout Mice Project or (ii) the date on which
ROCHE BIOSCIENCE otherwise requests delivery of the Data.
10. SUBCONTRACTING AND INDEPENDENT CONTRACTOR.
10.1 SUBCONTRACTING. ROCHE BIOSCIENCE is aware that certain
Knockout Mice Projects may require DELTAGEN to subcontract to third parties
portions of the work required by a Scope of Work. ROCHE BIOSCIENCE shall be
deemed to have approved such subcontracting on the following terms and
conditions: (i) DELTAGEN shall not be allowed or authorized to make any
representations relating to ROCHE BIOSCIENCE without the prior written
consent of ROCHE BIOSCIENCE; and (ii) such third party subcontractor shall be
subject to the terms and conditions of this Agreement. Prior to
subcontracting any work contemplated by a Knockout Mice Project, DELTAGEN
shall notify ROCHE BIOSCIENCE of the intended third party subcontractor and
ROCHE BIOSCIENCE shall be provided with fourteen (14) days in which to object
to the use of a particular subcontractor. If ROCHE BIOSCIENCE does not object
to the use of a particular subcontractor within such fourteen (14) day
period, DELTAGEN may subcontract such work under the Scope of Work to such
third party subcontractor.
10.2 INDEPENDENT CONTRACTOR. DELTAGEN shall perform its
obligations under this Agreement as an independent contractor, and NOTHING
CONTAINED herein shall be construed to be inconsistent with that relationship
or status. Neither Party, nor their employees, agents and consultants, shall
be considered employees or agents of the other Party and shall not be
entitled to participate in any of the other Party's benefit plans, programs,
employment policies, or workers' compensation insurance. This Agreement shall
not constitute, create, or in any way be interpreted as a joint venture,
partnership or business organization of any kind. Neither Party shall have
the authority to bind the other Party to any agreement whatsoever. Each Party
shall provide evidence satisfactory to the other Party of the existence of
workers' compensation and employer's liability insurance covering any
personnel of such Party supplied hereunder.
11. TERM AND TERMINATION.
11.1 TERM . This Agreement shall begin on the Effective
Agreement Date and remain in full force and effect until the later of (a) two
(2) years after the Effective Agreement Date, or (b) the completion by
DELTAGEN of all Milestones under any applicable Knockout Mice Projects under
this Agreement, unless earlier terminated as provided in this Article 11.
11.2 TERMINATION BY ROCHE BIOSCIENCE. ROCHE BIOSCIENCE may
terminate this Agreement or a Knockout Mice Project at any time without
cause, upon thirty (30) days prior written notice.
11.3 TERMINATION BY DELTAGEN.DELTAGEN may terminate a Knockout
Mice Project upon DELTAGEN's identification of an item described in Section
2.4 which would prevent DELTAGEN from completing such Knockout Mice Project
using commercially reasonable efforts.
11.4 TERMINATION BY EITHER PARTY.
11.4.1 MATERIAL DEFAULT. This Agreement or a Knockout
Mice Project may be terminated by either Party upon any material breach of
this Agreement by the other Party, provided that any breaching Party shall
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be given not less than twenty (20) days prior written notice of such breach and
the opportunity to cure such breach during such period.
11.4.2 BANKRUPTCY. This Agreement or a Knockout Mice
Project may be immediately terminated by either Party if the other Party is
dissolved or liquidated, makes a general assignment for the benefit of its
creditors, or files or has filed against it, a petition in bankruptcy or has
a receiver appointed for a-substantial part of its assets.
11.5 RIGHTS AND OBLIGATIONS AFTER NOTICE OF TERMINATION.
11.5.1 TERMINATION BY ROCHE BIOSCIENCE WITHOUT CAUSE OR
FOR BREACH OR BANKRUPTCY OF ROCHE BIOSCIENCE. If this Agreement or a Knockout
Mice Project is terminated by ROCHE BIOSCIENCE pursuant to Section 11.2 or
terminated by DELTAGEN pursuant to Section 11.4, DELTAGEN shall cease further
work on applicable Knockout Mice Projects as immediately as practicable in
accordance with its responsibilities under this Agreement and applicable
Laws, in order to reduce or eliminate further costs, and to cancel, if
permitted under the terms of applicable agreements, any third party
obligations. Within thirty (30) days after DELTAGEN's ceasing of work on such
Knockout Mice Projects, DELTAGEN shall provide ROCHE BIOSCIENCE with a
written itemized statement of all work performed by it through termination,
including any non-cancelable costs or expenses incurred by DELTAGEN prior to
termination. DELTAGEN shall invoice ROCHE BIOSCIENCE for all unpaid
Milestones completed by DELTAGEN and if such notice is received by DELTAGEN
prior to DELTAGEN's completion of work under a Milestone, DELTAGEN shall in
addition have the right to further invoice ROCHE BIOSCIENCE for payment of
such one uncompleted Milestone as if DELTAGEN had completed such Milestone.
DELTAGEN shall deliver to ROCHE BIOSCIENCE all deliverables prepared or
completed by DELTAGEN at the time of such cessation of work and all unused
Study Materials and Data.
11.5.2 TERMINATION BY ROCHE BIOSCIENCE FOR BANKRUPTCY OF
DELTAGEN OR BY DELTAGEN FOR DELTAGEN'S INABILITY TO COMPLETE MILESTONE. If
this Agreement or a Knockout Mice Project is terminated by DELTAGEN pursuant
to Section 11.3 or by ROCHE BIOSCIENCE pursuant to Section 11.4.2 above,
DELTAGEN shall deliver all deliverables prepared or completed by DELTAGEN at
the time of such termination, all unused Study Materials and all Data to
ROCHE BIOSCIENCE within sixty (60) days of receipt by DELTAGEN of notice of
termination. DELTAGEN shall provide ROCHE BIOSCIENCE with a written itemized
statement of all work performed by DELTAGEN through the date of termination
(including any Milestones completed by DELTAGEN) and ROCHE BIOSCIENCE shall
pay such invoiced amount within thirty (30) days of receipt of such statement.
11.5.3 TERMINATION BY ROCHE BIOSCIENCE FOR BREACH BY
DELTAGEN. If this Agreement or a Knockout Mice Project is terminated by ROCHE
BIOSCIENCE pursuant to Section 11.4.1 above, DELTAGEN shall deliver all
deliverables prepared or completed by DELTAGEN at the time of such
termination, all unused Study Materials and all Data to ROCHE BIOSCIENCE
within sixty (60) days of receipt by DELTAGEN of notice of termination.
DELTAGEN shall provide ROCHE BIOSCIENCE with a written itemized statement of
all work performed by DELTAGEN through the date of termination (including any
Milestones completed by DELTAGEN) and ROCHE BIOSCIENCE shall pay such
invoiced amount (or portion thereof that is not reasonably the subject of
such breach) within thirty (30) days of receipt of such statement.
11.6 EFFECT OF EXPIRATION OR TERMINATION. Expiration or
termination of this Agreement shall not relieve the parties of any obligation
accruing prior to such expiration or termination. The provisions of Articles
4, 5, 6.4 and 12 shall survive any expiration or termination of this
Agreement.
12. INDEMNIFICATION.
12.1 ROCHE BIOSCIENCE'S INDEMNIFICATION. ROCHE BIOSCIENCE shall
defend, indemnify and hold harmless DELTAGEN and its directors, officers,
employees and agents from and against any and all losses, liabilities,
damages or expenses (collectively, "Liabilities") that they may suffer as a
result of any claims, demands, actions or other proceedings (collectively,
"Claims") made or instituted by any third party and arising out of or
relating to (a) a breach of any representation, warranty or covenant of ROCHE
BIOSCIENCE under this Agreement or (b) ROCHE BIOSCIENCE's gross negligence or
willful misconduct, except in each case to the extent such Liabilities
resulted from the gross negligence or willful misconduct of DELTAGEN.
9
12.2 DELTAGEN'S INDEMNIFICATION. DELTAGEN shall defend,
indemnify and hold harmless ROCHE BIOSCIENCE and its directors, officers,
employees and agents from and against any and all Liabilities that they may
suffer as a result of any Claims made or instituted by any third party and
arising out of or relating to (a) a breach of any representation, warranty or
covenant of DELTAGEN under this Agreement or (b) DELTAGEN's gross negligence
or willful misconduct, except in each case to the extent such Liabilities
resulted from the gross negligence or willful misconduct of ROCHE BIOSCIENCE.
12.3 PROCEDURE. A Party (the "Indemnified Party") which intends
to claim indemnification under this Article 12, shall promptly notify the
other Party (the "Indemnifying Party") of any Claim with respect to which the
Indemnified Party intends to claim such indemnification. The Indemnifying
Party shall assume and control the defense of such Claim with counsel
selected by the Indemnifying Party; PROVIDED, HOWEVER, that the Indemnified
Party shall have the right to retain its own counsel, with the fees and
expenses to be paid by the Indemnifying Party if representation of the
Indemnified Party by the counsel retained by the Indemnifying Party would
create a conflict for the interests of the Indemnified Party. The indemnity
obligations under this Article 12 shall not apply to amounts paid in
settlement of any Liability if such settlement is effected without the
consent of the Indemnifying Party, which shall be given or not in the
Indemnifying Party's sole discretion. The failure to deliver notice to the
Indemnifying Party within a prompt time after the commencement of any such
action, if prejudicial to its ability to defend such action, shall relieve
the Indemnifying Party of any liability to the Indemnified Party under this
Article 12, but the omission so to deliver notice to the Indemnifying Party
will not relieve it of any liability that it may have to the Indemnified
Party otherwise than under this Article 12. The Indemnifying Party may not
settle the action or otherwise consent to an adverse judgment in such action
that diminishes the rights or interests of the Indemnified Party without the
express written consent of the Indemnified Party. The Indemnified Party, its
employees and agents, shall cooperate fully with the Indemnified Party and
its legal representatives in the investigation of any Claim covered by this
indemnification.
13. TAXATION.
In order that ROCHE BIOSCIENCE may comply with applicable tax laws and
regulations, DELTAGEN, at ROCHE BIOSCIENCE's cost and expense, if reasonably
requested by ROCHE BIOSCIENCE, agrees to provide within thirty (30) days after
the close of each calendar year such non-confidential information reasonably
available to DELTAGEN which ROCHE BIOSCIENCE reasonably requests and deems
necessary to properly compute its tax liability. In order to assist DELTAGEN in
providing such information, ROCHE BIOSCIENCE shall provide DELTAGEN with a
summary of payments made to it during such year for research activities
conducted during such year.
14. TRADEMARKS.
Neither Party shall use of the trademarks or tradenames of the other
Party without the express written consent of the other Party.
15. DELAYS OR FORCE MAJEURE.
15.1 FORCE MAJEURE. Neither Party shall be liable for the
failure to perform its obligations under this Agreement or a Knockout Mice
Project if such failure is occasioned by a contingency beyond such Party's
reasonable control, including but not limited to strikes or other labor
disturbances, lockouts, riots, wars, fires, floods, earthquakes or storms. A
Party claiming a right to excused performance under this Section 15.1 shall
immediately notify the other Party in writing of the extent of its inability
to perform, which notice shall specify the occurrence beyond its reasonable
control that prevents such performance.
15.2 DELAY. If ROCHE BIOSCIENCE delays the actual start of a
Knockout Mice Project for any reason, the date by which DELTAGEN is obligated
to complete its duties and obligations as described in the applicable Scope
of Work shall be extended by the number of days the start was delayed.
10
16. NOTICES.
Any notice-required or permitted to be given hereunder shall be deemed
sufficient if sent by facsimile letter or overnight courier, or delivered by
hand to ROCHE BIOSCIENCE or DELTAGEN at (i) in the case of notices pursuant to
this Agreement, the respective addresses set forth below or at such other
address as either Party hereto may designate. If sent by facsimile letter,
notice shall be deemed given when the TRANSMISSION IS completed if the sender
has a confirmed transmission report. If a confirmed transmission report does not
exist, then the notice shall be deemed given when the notice is actually
received by the person to whom it is sent. If delivered by overnight courier,
notice shall be deemed given when it has been signed for. If delivered by hand,
notice shall be deemed given when received. Any notice sent by facsimile must
also be sent by mail or overnight courier or delivered by hand.
IF TO DELTAGEN:
Deltagen, Inc.
* * *
Fax: (000) 000-0000
Attn: Xxxxxxx Xxxxxxxx
President
IF TO ROCHE BIOSCIENCE:
Roche Bioscience, a Division of Syntex (U.S.A.) Inc.
0000 Xxxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Fax: (000) 000-0000
Attn: Business Development,
Neurobiology Unit., R7-101
With a copy to the above address,
Attn: Legal Affairs, A2-225
Fax: (000) 000-0000
17. MISCELLANEOUS PROVISIONS.
17.1 ASSIGNMENT AND SUBCONTRACTING. Neither Party may assign
this Agreement to any third party without the prior written consent of the
other Party, PROVIDED HOWEVER, that either Party may, without such consent,
assign this Agreement and its rights and obligations hereunder in connection
with the transfer or sale of all or substantially all of its business, or in
the event of its merger, consolidation, change in control or similar
transaction. Any permitted assignee shall assume all obligations of its
assignor under this Agreement.
17.2 AMENDMENTS. No provision of this Agreement, the Budget or
the Scope of Work may be amended, revoked, or waived except in writing signed
and delivered by an authorized officer of each Party. Either Party's failure
to require the other Party to comply with the provisions of this Agreement
shall not be deemed a waiver of such provision or any other provision of this
Agreement.
17.3 VALIDITY. If any clause, section or paragraph of this
Agreement is determined by a court of competent jurisdiction to be illegal,
invalid or unenforceable, it will be deemed severed from the remainder of
this Agreement and will have no effect on the legality, validity or
enforceability of the remaining provisions.
17.4 HEADINGS. The paragraph headings of this Agreement are
merely for the convenience of the parties and are not to be construed as
modifying or changing the obligations or conditions expressed in this
Agreement.
17.5 ENTIRETY. This Agreement represents the entire
understanding as of the Effective Agreement Date hereof between the parties
with respect to the matter hereof, and supersedes all prior agreements,
negotiations; understandings, representations, statements, and writings
between the parties relating thereto.
* * * Confidential material redacted and separately filed with the Commission.
11
17.6 CONFLICT WITH SCOPE OF WORK OR BUDGET. If any terms of this
Agreement are in conflict with any terms of any Scope of Work or Budget, the
terms of this Agreement shall govern.
17.7 COUNTERPARTS. This Agreement may be executed in several
counterparts, each of which shall be deemed an original but all of which
shall. constitute one and the same instrument.
17.8 GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of California, without
regard to the conflicts of law principles of California or any other state or
jurisdiction.
IN WITNESS WHEREOF, the Parties hereto through each of their respective
duly authorized representatives have caused this Agreement to be executed as of
the Effective Date.
ROCHE BIOSCIENCE DIVISION OF SYNTEX (U.S.A.) INC. DELTAGEN, INC
By By
/s/ X.X. XXXXXXX /s/ XXXXXXX XXXXXXXX
------------------------------------------------- -------------------------------------------------
Name: Name:
X.X. XXXXXXX XXXXXXX XXXXXXXX
---------------------------------------------- ---------------------------------------------
Title: SUP, HEAD, NEUROBIOLOGY Title: PRESIDENT
Date: Date:
8/2/98 9/30/98
-------------------------------------------- ---------------------------------------------
12
ATTACHMENT I
FORM OF SCOPE OF WORK
1. Each Knockout Mice Project shall be conducted according to
the general terms and conditions contained in this Scope of Work, the
following specifications contained herein and the provisions of the Master
Services Agreement between the parties. The Roche Bioscience Representative
shall be * * *. The parties shall agree in writing upon any additional
specific terms and conditions for each Scope of Work prior to the
commencement of each respective Knockout Mice Project.
Each Knockout Mice Project shall involve a knockout of * * * gene of
interest to ROCHE BIOSCIENCE. The first * * * genes-of interest for knockout
(each corresponding to a separate Knockout Mice Project) to ROCHE BIOSCIENCE are
listed below. ROCHE BIOSCIENCE shall have the option of expanding the number of
Knockout Mice Projects (and thus, the number of genes of interest) up to a total
number of * * * Knockout Mice Projects (and genes of interest), by providing
written notice to DELTAGEN during the term of this Agreement. The parties shall
mutually agree upon the Scope of Work for such genes.
Genes of Interest:
* * *
2. The following Milestones shall apply to each Knockout Mice Project
--------- ---------------------------------------------- ---------------------------------------------------
Milestone Completion Date
--------- ---------------------------------------------- ---------------------------------------------------
1. * * * * * * from Effective Commencement Date
--------- ---------------------------------------------- ---------------------------------------------------
2. * * * * * * from Effective Commencement Date
--------- ---------------------------------------------- ---------------------------------------------------
3. * * * * * * from Effective Commencement Date
--------- ---------------------------------------------- ---------------------------------------------------
Milestone 1: * * *
DELTAGEN will * * * based on * * * received from ROCHE BIOSCIENCE.
Anticipated time frame for completion will be within * * * after receipt of
necessary * * *. In the event of unforeseen technical difficulties occurring
within * * * of initiating * * * resulting from the * * *, DELTAGEN (upon
consultation with ROCHE BIOSCIENCE) may * * * at * * *, or ROCHE BIOSCIENCE
may terminate the Knockout Mice Project with no obligation to pay Milestone
1. Irrespective of the number of * * *, there will be * * * Milestone 1
payment for the * * * for each * * *, unless a * * * is-selected because of *
* * in Milestone 2, in which case * * *.
Milestone 2: * * *
DELTAGEN will * * * and * * * and * * *. DELTAGEN will * * * a
maximum of * * * for * * * of at least * * * and up to a maximum * * * in
fulfillment of this Milestone 2. If * * * is identified by DELTAGEN and ROCHE
BIOSCIENCE requests DELTAGEN to identify additional * * *, or if * * * is the
* * *, DELTAGEN, after consultation with ROCHE BIOSCIENCE, will either (a) *
* * and * * * with the * * * and * * * or (b) * * *, in each case at the
"Additional Payment" rates set forth in the Budget. Alternatively, ROCHE
BIOSCIENCE may terminate this Knockout Mice Project without any further
obligation to DELTAGEN. The anticipated time for completion of * * * the * *
* will be * * * from the Effective Commencement Date* * *. ROCHE BIOSCIENCE
will also receive * * * in order to confirm * * * to confirm the * * *, as
well as * * *, * * *.
* * * Confidential material redacted and separately filed with the Commission.
13
Milestone 3: * * *
DELTAGEN will transfer a minimum of * * * and up to a maximum of * * *
independent * * * will be transferred only if * * * clones happen to be * * *
by DELTAGEN in the * * * of the * * * in Milestone 2) into * * * to
generate * * * mice (dependent upon the * * *).
DELTAGEN shall inform ROCHE BIOSCIENCE as to what * * * was used,
what * * *. Anticipated time frame for completion will be * * * from the
Effective Commencement Date. DELTAGEN will provide to ROCHE BIOSCIENCE by
delivery FOB ROCHE BIOSCIENCE's designated carrier, * * * mice (* * *), with
* * * from at least * * * of the * * *. Such * * * shall be reasonably and
promptly confirmed by ROCHE BIOSCIENCES using * * *. ROCHE BIOSCIENCE shall
use commercially reasonable and good scientific practices in undertaking * *
*. If the * * * reasonably demonstrates that * * * has occurred with the * *
* mice provided by DELTAGEN to ROCHE BIOSCIENCE, DELTAGEN shall provide to
ROCHE BIOSCIENCE by delivery FOB ROCHE BIOSCIENCE's designated carrier * * *,
PROVIDED THAT, ROCHE BIOSCIENCE has reasonably and properly conducted * * *.
Prior to DELTAGEN providing such additional * * * mice, ROCHE BIOSCIENCE
shall demonstrate to DELTAGEN's reasonable satisfaction that * * *.
* * * Confidential material redacted and separately filed with the Commission.
14
ATTACHMENT II (BUDGET) [PAGE 1 of 2
PREFERRED PRICING SCHEDULE
Total cost for each Knockout Mice Project through * * *
STANDARD MUTATIONS AND STANDARD PROCEDURES:
The following pricing schedule in this Budget is based upon a total of * * *
Knockout Mice Projects (* * * gene sequences-of interest to ROCHE BIOSCIENCE).
If ROCHE BIOSCIENCE requests DELTAGEN to perform more than * * * Knockout Mice
Projects, the parties shall negotiate and agree in good faith upon a revised
payment schedule for each additional Knockout Mice Project performed after the
tenth Project.
THE FOLLOWING MILESTONE PAYMENT SCHEDULE SHALL APPLY TO EACH KNOCKOUT
MICE PROJECT:
---------------- ---------------------------------- ------------------------------------- ----------------------------
DELIVERABLE (MUST MEET FULL
DESCRIPTIONS IN ATTACHMENT I UNLESS
MILESTONE OTHERWISE PROVIDED) PAYMENT
---------------- ---------------------------------- ------------------------------------- ----------------------------
0. * * * No additional requirements under $13,000
Attachment I; to be paid by ROCHE
BIOSCIENCE within 30 days of
Effective Commencement Date
---------------- ---------------------------------- ------------------------------------- ----------------------------
1. * * * Notification from DELTAGEN to ROCHE * * *
BIOSCIENCE of successful completion
of Milestone I
---------------- ---------------------------------- ------------------------------------- ----------------------------
2. * * * DELTAGEN's * * * of initial * * *
* * * colonies for * * *
---------------- ---------------------------------- ------------------------------------- ----------------------------
3. * * * Successful generation and delivery * * *
FOB to ROCHE BIOSCIENCE's
designated carrier of * * * for at
least * * *
---------------- ---------------------------------- ------------------------------------- ----------------------------
* * * Confidential material redacted and separately filed with the Commission.
15
(ATTACHMENT II (BUDGET)) [PAGE 2 of 2]
ADDITIONAL PAYMENTS:
---------------------------------------- -------------------------------------- --------------------------------------
MILESTONE TASK DESCRIPTION PAYMENT TERMS
---------------------------------------- -------------------------------------- --------------------------------------
2a. * * * Construction of * * * , and * * * Not to exceed $* * *, negotiated on
of the * * * colonies. a case-by-case basis, for the
combined achievement of selecting a
* * * and * * * up to * * *
---------------------------------------- -------------------------------------- --------------------------------------
2b. * * * * * * of additional * * * $* * * per each * * *
following * * * of * * *.
---------------------------------------- -------------------------------------- --------------------------------------
* * * Confidential material redacted and separately filed with the Commission.
16
