1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Xxxx"). This Exhibit has been filed separately with the
Secretary of the Commission without the Xxxx pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.30
SOFTWARE LICENSE AND RESEARCH AGREEMENT
WHEREAS, the parties have had a prior Agreement which the parties now wish to
renew. This Software License and Research Agreement (the "Agreement") is entered
into as of the date last signed below (the "Effective Date") between XXXXXXX X.
XXXXX, Ph.D., an individual with offices at the Department of Biological
Chemistry and Molecular Pharmacology, Harvard Medical School, 000 Xxxxxxxx
Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 ("Xxxxx") and BIOSYM Technologies, Inc., a
California Corporation ("BIOSYM") with offices located at 0000 Xxxxxxxx Xxxx,
Xxx Xxxxx, Xxxxxxxxxx 00000-0000 U.S.A., with reference to the following facts:
RECITALS
A. WHEREAS, XXXXX has developed the computer software described in Exhibit "A"
(the "Software"); and
B. WHEREAS, BIOSYM desires to license the Software in order to sublicense, use,
modify, produce, and distribute copies of the Software, and XXXXX desires to
license the Software to BIOSYM on the terms and conditions set forth in this
Agreement;
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing promises and mutual terms,
covenants and conditions contained herein, the parties agree as follows:
1. Definitions.
(a) "Affiliate" shall mean any corporation or other business entity which
directly or indirectly controls, is controlled by, or is under common control
with BIOSYM. Control means ownership or other beneficial interest in fifty
percent (50%) or more of the voting stock or other voting interest of a
corporation or other business entity.
(b) "Bundled Software" shall mean the merger and/or combination of the
Software with other software developed or licensed by BIOSYM as described in
Exhibit B, as modified from time to time by the parties.
(c) "Confidential Information" shall mean, without limitation, information
concerning invention, confidential know-how, copyrights and trade secrets.
(d) "Derivative Software" shall mean modifications, enhancements
derivatives of and/or portings of the Software.
1 of 14
2
(e) "Distributor" shall mean any corporation or other business entity
which is not an Affiliate, and which is authorized by BIOSYM to license or
sublicense BIOSYM Software products to end users.
(f) "Joint Improvements" shall mean any modifications, improvements or
enhancements to the Software arising as result of the collaboration of XXXXX and
BIOSYM.
(g) "Net License Fees" shall mean all monies invoiced by BIOSYM from
sales, sublicenses or transfers of the Software, Derivative Software, and/or the
Bundled Software for BIOSYM excluding maintenance fees and net of any
distributor commissions, taxes, import duties, rebates, customary discounts,
credits, refunds and shipping and handling costs.
(h) "Support Services" shall mean such technical and consulting support to
be provided by XXXXX in order to assist BIOSYM in marketing, developing and
supporting the Software, including without limitation, maintenance,
modification, enhancement, installation, consulting and training.
2. Grant of License.
(a) Subject to the terms and conditions of this Agreement, XXXXX hereby
grants BIOSYM a worldwide, non-exclusive, perpetual, irrevocable and
transferable license to use and modify the Software in both source and object
code form, and all enhancements thereto. Further, subject to the terms and
conditions of this Agreement, XXXXX hereby grants BIOSYM and BIOSYM's Affiliates
and Distributors a worldwide, exclusive (except as provided herein), perpetual
(subject to the provisions of Section 14), and transferable license to produce
and distribute the Software and all enhancements and modifications thereto in
object code and executable form only whether by sublicense or otherwise. Xxxxx
may license no more than [*] copies of the Software to colleagues at
academic institutions who are not affiliated with BIOSYM's competitors for use
for non-commercial purposes only. Such licenses made by XXXXX will clearly state
that BIOSYM Technologies, Inc. is not responsible for any support, maintenance,
documentation or updates of the Software. XXXXX shall obtain, from any such
colleagues, in writing and in a form approved by BIOSYM an Agreement not to use,
sublicense, or distribute the Software for commercial purposes nor to
disseminate it or to disclose details of its operation to others.
(b) BIOSYM grants XXXXX the right to install development versions of any
XXXXX Software to be used by academic and non profit institutions at a national
resource computing facility which will be mutually agreed upon by both parties.
Any legally licensed user would be able to use this Software at the facility.
Academic and
* CONFIDENTIAL TREATMENT REQUESTED
2 of 14
3
nonprofit users of the development versions of Software may use this Software
free of charge, until it becomes commercially available from BIOSYM, at which
point, a license must be obtained from BIOSYM for its usage.
3. Delivery.
In accord with the prior Agreement between XXXXX and BIOSYM, XXXXX has
delivered to BIOSYM master copies of the source code of that version of the
Software appropriate for compiling, linking, building and execution on Silicon
Graphics and for any other platforms on which it currently runs, suitable for
reproduction, together with one set of supporting documentation, including
instruction manuals for each of these Software versions.
4. Modification.
BIOSYM shall have the right to develop Derivative Software and Bundled
Software. The Derivative Software and that portion of the Software included in
such Bundled Software is subject to all terms and conditions of this Agreement.
5. Workstation Enhancement.
To facilitate further Software development by XXXXX, BIOSYM will either
contribute the sum of [ * ] towards the upgrade of XXXXX'x current system to a
workstation with TFP processor, or BIOSYM will provide XXXXX with a workstation
with a TFP processor. If BIOSYM provides XXXXX with a workstation with a TFP
processor, XXXXX will, in turn, convey his current workstation back to BIOSYM.
6. License Fees.
(a) Upon sale, sublicense or other transfer of the Software or Derivative
Software by or for BIOSYM to commercial or non-profit users, BIOSYM shall pay to
XXXXX a royalty equal to the greater of [ * ] of Net License Fees or [ * ] of
the then highest applicable current published retail price for the Software or
Derivative Software. Upon sale, sublicense or other transfer of the Software or
Derivative Software by or for BIOSYM to academic users, BIOSYM shall pay to
XXXXX a royalty equal to [ * ] of its Net License Fees.
(b) Bundled Software will receive royalties to set forth in the schedules
in Exhibit B.
(c) If the Software, Derivative Software, or Bundled Software is marketed
with other software products in a combined software package for a single price,
the Net
3 of 14
* CONFIDENTIAL TREATMENT REQUESTED
4
License Fees will be determined by prorating the license fees from the package
according to the suggested retail prices or values established by BIOSYM for the
separate products contained in the package, whether or not such products are
marketed separately, provided that such prices or values are reasonably related
to the values or marketing potential of the separate products and are consistent
with prices customarily charged in the industry.
(d) Notwithstanding the preceding paragraph, in the event that any
combined software is marketed by BIOSYM at a published retail price less than
[ * ] (or such greater amount as may be determined by multiplying [ * ] by the
average annual increase in BIOSYM's published retail price list for all BIOSYM
products as of the date of this Agreement) (Herein referred to as "Low End
Combined Software"), the royalty based on Net License Fees of such Low End
Combined Software shall be computed and payable to XXXXX as follows:
Royalty Cumulative Net License Fees
------- ---------------------------
[*] [ * ]
[*] [ * ]
[*] [ * ]
(e) Payments and Reports. All royalties due and payable by BIOSYM
hereunder shall be paid to XXXXX in United Sates dollars, and shall be due and
payable, within forty-five (45) days after the end of each calendar quarter.
Each payment to XXXXX shall be accompanied by a report on the distribution of
all copies of the Software, Derivative Software or Bundled Software during the
quarter. Each report will specify (1) the number of copies distributed and per
copy royalty, itemized by type of hardware and type of software (i.e., Software,
Derivative or Bundled); (2) the amount of any research funds being credited
against the total Net License Fees for the period; and (3) the net amount of
royalties (if any) due XXXXX.
(f) BIOSYM shall maintain and make available to XXXXX at XXXXX'x
reasonable request and expense, records sufficient to permit XXXXX to verify the
payments due. BIOSYM shall retain such records of a period of at least two
years.
7. Support Services.
(a) During the term of this contract, XXXXX shall provide Support Services
to BIOSYM with the goal of assisting BIOSYM to integrate the Software into
BIOSYM's Software in the most convenient and effective way possible, and to
assist in further development of new Software which will aid users in making the
most effective use of the Software. Time devoted by XXXXX to these activities
shall be allocated and scheduled by mutual agreement and shall not exceed in
total [ * ] man days per year not including travel time.
4 of 14
* CONFIDENTIAL TREATMENT REQUESTED
5
(b) To enable the development referred to in sub-section (a) XXXXX will be
available to participate with BIOSYM in scientific seminars and meetings for up
to [ * ] additional days per year. Normal and reasonable travel and out of
pocket expenses incurred by XXXXX in connection with the above Support Services
and scientific seminars will be borne by BIOSYM.
(c) XXXXX shall make available to BIOSYM, at no charge to BIOSYM, a copy
of such scientific presentations and papers relating to the Software, its
underlying science and/or their application as XXXXX may itself have published
or have acquired the right to distribute for these purposes, for use by BIOSYM
in its Software marketing effort.
8. Improvements.
(a) XXXXX and BIOSYM agree to collaborate on the continuing development of
the concepts, algorithms, and software code of the Software so as to increase
its scientific value and broaden its application and use in the scientific
market place.
Twice yearly XXXXX and BIOSYM shall meet to review the status of the
Software, to coordinate the technical and business programs, and to establish
and document a specific program of collaborative efforts designed to enhance the
Software and to broaden its use in the scientific market place. The meetings
shall be held at BIOSYM's San Diego headquarters office in April and October, or
at other places and times as the parties may agree. Days allocated by XXXXX to
these meetings shall be part of the [ * ] support service referred to in
section 7(a) and all expenses associated with such meetings, 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.
(b) To facilitate this collaboration, BIOSYM will make available, for the
duration of the contract, salary support at the rate of up to [ * ] per year
plus benefit costs not to exceed [ * ] to cover costs incurred by XXXXX
for employing a scientific programmer or research associate to assist XXXXX with
his future work. Candidates for this position will be chosen jointly by XXXXX
and BIOSYM. Work carried out by this person will be devoted at least 50% to the
BIOSYM-XXXXX joint collaborative program set forth in Section 8(a). Results
generated with the support of BIOSYM's funds under this section shall be
considered Joint Improvements under Section 8(h) and shall be reported to BIOSYM
in writing on a quarterly basis. Amounts paid under this subsection (b) shall be
non-refundable. Such amounts paid will reduce royalties earned by XXXXX by
multiplying the (1) actual royalty earned divided by the (2) actual reported Net
License Fees times the amounts paid under this subsection (b) and deducting the
result from royalties earned.
5 of 14
* CONFIDENTIAL TREATMENT REQUESTED
6
(c) Title to and copyright in any modifications, improvements, or
enhancements made by BIOSYM to the Software as licensed herein shall vest in
BIOSYM. For the duration of this Agreement, BIOSYM shall promptly make available
to XXXXX any such modifications, improvements, or enhancements. BIOSYM hereby
grants a non-exclusive, fully-paid worldwide license to XXXXX to use any
modifications, improvements, or enhancements in his own work, but not to
sublicense others for any purpose. BIOSYM agrees to provide, free of charge to
XXXXX, up to two (2) copies of any software containing any modifications,
improvements, or enhancements made by BIOSYM pursuant to this Section .
Copyrights on these enhancements will belong to BIOSYM. The sale, sublicense or
distribution of all such modifications, improvements, or enhancements shall be
subject to all the terms and conditions of this Agreement.
(d) Title to any modifications, improvements, or enhancements made by
XXXXX to the Software as licensed, except those (i) developed under BIOSYM
funding as set forth in Section 8(b), herein or (ii) jointly developed as set
forth in Section 8(e) herein shall vest in XXXXX, except that all such
improvements shall automatically be licensed to BIOSYM under the terms of this
Agreement. For the duration of this Agreement, XXXXX 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 containing
any modifications, improvements, or enhancements made by XXXXX pursuant to this
Section . Copyrights obtained on this Software will belong to XXXXX. The sale,
sublicense or distribution of all such modifications, improvements, or
enhancements shall be subject to all of the terms and conditions of this
Agreement.
(e) Title of any modifications, improvements, or enhancements made by the
joint collaboration of XXXXX and BIOSYM to the Software as licensed herein
("Joint Improvements") including all results of work supported by BIOSYM's
funding under Section 8(b) shall vest in XXXXX and BIOSYM as tenants in common.
Each party grants to the other a non-exclusive, non-transferable right and
license to use the Joint Improvements, and to BIOSYM a worldwide, exclusive,
perpetual, irrevocable, and transferable license to license to produce and
distribute the Joint Improvements to become part of the public domain without
the prior express written authorization of the other party. Copyrights on these
improvements will be held jointly. The sale, sublicense or distribution of all
such modifications, improvements, or enhancements shall be subject to all of the
terms and conditions of this Agreement.
6 of 14
7
(f) Should BIOSYM re-implement the Software in BIOSYM's interactive
software environment, XXXXX shall make all subsequent modifications,
improvements, or enhancements utilizing the same interactive environment as part
of the joint collaboration with BIOSYM as set forth under Section 8(b). BIOSYM
hereby grants XXXXX a non-exclusive, fully paid worldwide license for the term
of this contract to use the software that makes up BIOSYM's interactive software
environment pursuant to this Section , but not to sublicense others for any
purpose.
(g) During the term of this Agreement, BIOSYM will, under its standard
license terms, make available without change to XXXXX up to two (2) copies of
all products offered commercially by BIOSYM, excluding those developed within
BIOSYM's industry-funded consortia, together with its standard Software
documentation and academic support services. This will include, but is not
limited to, the programs INSIGHT and DISCOVER.
(h) XXXXX agrees to promptly inform BIOSYM during the term of this
Agreement and for [ * ] after the date of termination of this Agreement of
each new computer software program (i.e., beyond the scope of normal
enhancements to the Software) which XXXXX intends to develop for sale or
licensing, and XXXXX will give BIOSYM a written notice setting forth the
specifications for each such program. XXXXX will offer BIOSYM the right to
market each such program and will negotiate the terms and conditions of such
marketing in good faith. If BIOSYM and XXXXX are unable to agree upon the terms
and conditions within ninety (90) days of XXXXX'x written notice, then XXXXX
shall be free to market the program to end users, distributors, publishers or
any third party. BIOSYM agrees and understands that this right of first refusal
may be subject to the terms and conditions of XXXXX'x employment with Harvard
University. Further, in the case where XXXXX collaborates with others in the
development of such program, XXXXX shall attempt, but shall not be obligated to,
secure a similar right of first refusal from such collaborator.
9. Representations and Indemnity.
(a) Conformance. XXXXX warranted that for a period of one year from the
Effective Date of the prior Agreement between the parties, the Software would
operate substantially in conformance with its description as set forth on
Exhibit A to the prior Agreement. XXXXX makes no further warranties, and the
above described warranties shall be deemed to be ongoing as a result of this
Agreement.
XXXXX DISCLAIMS ALL WARRANTIES RELATING TO THE SOFTWARE. EXPRESS OR
IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
ANY PARTICULAR PURPOSE.
7 of 14
* CONFIDENTIAL TREATMENT REQUESTED
8
(b) Ownership. XXXXX hereby represents and warrants that they have
and will continue to have all right, title, ownership interest and/or rights
necessary to grant the rights and licenses to BIOSYM set forth herein, that they
have not entered into agreements or commitments which are inconsistent with or
in conflict with the rights granted to BIOSYM hereunder, and that the Software
and its use does not and will not violate or infringe upon any patent,
copyright, trade secret or other property right of any other person.
Specifically, XXXXX represents that he has obtained from his pervious
employer, the University of Michigan, the right to license the Software as
prescribed by this Agreement, and that he will be solely responsible for any
compensation to which it may be entitled as a result of the activities which
this Agreement envisions. A copy of XXXXX'x Agreement with the University of
Michigan is attached as Attachment C.
(c) Indemnification by XXXXX. XXXXX will indemnify BIOSYM against any
claim that the Software as delivered by XXXXX infringes any third party's
patent, copyright or trade secret under the laws of the United States. XXXXX'x
obligation to indemnify BIOSYM shall be subject to the following terms and
conditions:
(i) The obligation will arise only if BIOSYM gives XXXXX prompt
notice of the infringement claim. XXXXX may, at its option, conduct the defense
and BIOSYM promises fully to cooperate with such defenses. In any case no
settlement shall be agreed to without the consent of both parties which consent
will not be unreasonably withheld.
(ii) The obligation will cover only the Software as delivered by
XXXXX and will not cover any correction, modification or addition made by anyone
other than XXXXX.
(iii) The obligation will not cover claims that the Software
infringes any third party's rights as used in combination with any software not
supplied by XXXXX or hardware specified by XXXXX if that claim could have been
avoided by the use of the Software in combination with other software or
hardware.
(iv) If any infringement claim is asserted, or if XXXXX believes one
likely, XXXXX will have the right, but no obligation, to procure at no cost to
BIOSYM a license from the person claiming or likely to claim infringement or to
modify the Software to avoid the claim of infringement. Modification for this
purpose will not materially impair the operation of the Software.
THE FOREGOING IS XXXXX'X EXCLUSIVE OBLIGATION WITH RESPECT TO CLAIMS OF
INFRINGEMENT OF PROPRIETARY RIGHTS OF ANY KIND. XXXXX WILL NOT BE LIABLE FOR ANY
SPECIAL, INCIDENTAL OR
8 of 14
9
CONSEQUENTIAL DAMAGES, EVEN IF INFORMED OF THE POSSIBILITY THEREOF IN ADVANCE.
IN NO EVENT WILL XXXXX'X LIABILITY IN CONNECTION WITH THE SOFTWARE OR THIS
AGREEMENT EXCEED AMOUNTS PAID TO XXXXX BY BIOSYM HEREUNDER. THESE LIMITATIONS
APPLY TO ALL CAUSES OF ACTION IN THE AGGREGATE, INCLUDING WITHOUT LIMITATION
BREACH OF CONTRACT, STRICT LIABILITY, MISREPRESENTATION AND OTHER TORTS.
(d) BIOSYM represents and warrants that (a) any Derivative Software by
BIOSYM, and/or any contribution to the Software by BIOSYM, will not infringe
upon any patent, copyright, trade secret or other proprietary rights of others;
and (b) BIOSYM has full power to enter into this Agreement, and to carry out its
obligations hereunder.
BIOSYM will indemnify, defend and hold XXXXX harmless from any loss, expense
(including reasonable attorneys' fees), damage or liability arising out of any
claim, demand or suit resulting from a breach of the warranties set forth above,
and/or arising out of BIOSYM's marketing and distribution of the Software or
Derivative Software or Bundled Software. XXXXX will provide such cooperation
with all out of pocket costs as BIOSYM may reasonably require at BIOSYM's sole
expense in the defense of any such suit or action.
THE FOREGOING WARRANTIES ARE FOR XXXXX'X EXCLUSIVE BENEFIT AND ARE
NONTRANSFERABLE. THE FOREGOING WILL BE XXXXX'X EXCLUSIVE REMEDIES FOR BREACH
OF THE FOREGOING WARRANTY BY BIOSYM. BIOSYM DISCLAIMS ALL OTHER WARRANTIES,
EXPRESS AND IMPLIED, INCLUDING IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR ANY PARTICULAR PURPOSE.
THE FOREGOING IS BIOSYM'S EXCLUSIVE OBLIGATION WITH RESPECT TO CLAIMS OF
INFRINGEMENT OF PROPRIETARY RIGHTS OF ANY KIND. BIOSYM WILL NOT BE LIABLE FOR
ANY SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES, EVEN IF INFORMED OF THE
POSSIBILITY THEREOF IN ADVANCE. IN NO EVENT WILL BIOSYM'S LIABILITY IN
CONNECTION WITH THE SOFTWARE OR THIS AGREEMENT EXCEED AMOUNTS RECEIVED BY BIOSYM
AS NET LICENSE FEES HEREUNDER. THESE LIMITATIONS APPLY TO ALL CAUSES OF ACTION
IN THE AGGREGATE, INCLUDING WITHOUT LIMITATION BREACH OF CONTRACT, BREACH OF
WARRANTY, BIOSYM'S NEGLIGENCE, STRICT LIABILITY, MISREPRESENTATION AND OTHER
TORTS.
Sub-sections (c) and (d) of this section 8 shall survive any termination of this
Agreement.
9 of 14
10
10. Confidentiality.
(a) Confidentiality of Disclosures. In the course of performing and in the
negotiations leading to the execution of this Agreement, XXXXX and BIOSYM may
disclose to each other information concerning their respective inventions,
confidential know-how, copyrights and trade secrets, as may be necessary to
further the purposes of this Agreement. All such Confidential know-how,
copyrights and trade secrets disclosed hereunder shall remain the sole property
of the party disclosing them and the receiving party shall have no interest in
or rights with respect thereto except as expressly set forth in this Agreement.
Without prejudice to the generality of the foregoing, the source and object code
for the Software are regarded as included in the Confidential Information by
XXXXX. This Agreement shall not, however, prevent either party from marketing
products in the future that are competitive with products marketed by the other
party, provided no Confidential Information of the other party is made use of.
(b) Nondisclosure Obligations. XXXXX and BIOSYM each agrees to take all
reasonable precautions to prevent any unauthorized disclosure of such
confidential information. The foregoing restrictions on disclosure shall survive
the termination, expiration or cancellation of this Agreement, but shall not
apply to any information which: (a) is in the public domain as of the date of
receipt by the receiving party; (b) hereafter becomes known to the public
through no fault of the receiving party; (c) is in the possession of the
receiving party at the time of disclosure; (d) is independently developed by the
receiving party's employees having no access to such confidential information;
(e) is subsequently obtained by the receiving party from an independent,
third-party source having no obligation of confidentiality directly or
indirectly to the disclosing party; (f) the disclosure of which is required by
law.
This Section 10 shall survive any termination of this Agreement.
11. Relationship of the Parties.
The relationship between XXXXX and BIOSYM under this Agreement is intended
to be that of independent contractors. Except as set forth in Section 8(e),
nothing in this Agreement is intended to be construed so as to constitute BIOSYM
and XXXXX as partners or joint venturers, or either party hereto as the employee
or agent of the other party. Except as expressly set forth herein, neither party
hereto has any express or implied right or authority under this Agreement to
assume or create any obligations on behalf of or in the name of the other party
hereto or to bind the other party hereto to any contract, Agreement or
undertaking with any third party.
10 of 14
11
12. Ownership of the Software.
(a) Subject to the rights granted to BIOSYM herein, XXXXX has and will
retain and maintain all ownership rights to the Software. XXXXX agrees to take
all actions required or appropriate, in BIOSYM's opinion and at BIOSYM's cost,
to protect the proprietary nature of the Software, including making copyright
filings where directed by BIOSYM.
(b) BIOSYM will, at its sole expense, take all actions reasonably required
to appropriate in XXXXX'x opinion, to protect BIOSYM's proprietary rights of the
modifications, improvements and enhancements referred to in Section 6(b) of this
Agreement.
(c) The parties agree that they will take all actions required as
appropriate, in their joint opinion and at BIOSYM's cost, to protect their joint
proprietary rights in the Joint Improvements.
(d) BIOSYM will place or cause to be placed in and on each copy of
Software, Derivative Software and Bundled Software that it distributes an
appropriate copyright notice in the following form:
(i) In the case of the Software or any Derivative Software
developed by XXXXX: Copyright(C) 19__ Xxxxxxx X. Xxxxx, Ph.D.;
(ii) In the case of any Derivative Software or Bundled Software
developed with contributions from BIOSYM, or in the case of any Derivative
Software developed by BIOSYM: Copyright(C) 19__ XXXXX and BIOSYM Technologies,
Inc.
13. Term and Termination.
(a) The prior agreement between XXXXX and BIOSYM was for a period of three
years commencing on November 15, 1990 and ending on November 15, 1993. This
Agreement shall continue for an initial period of [*] from the
November 16, 1993 and shall continue thereafter on a year-to-year basis unless
terminated by written notice by either party to the other party at least ninety
(90) days prior to the annual renewal date. All other sections of this Agreement
will survive any such termination.
Should the Agreement be allowed to lapse, however, BIOSYM will
nevertheless retain the right to market the Software together with enhancements
developed under this Agreement in its then current form as long as it continues
to pay royalties on the Net License Fees which it receives therefrom as
prescribed in Section 5(a) through 5(d). This Agreement shall be terminable at
any time upon a material breach of this Agreement, at the discretion of the
non-breaching party, upon the thirtieth (30th) day after either party
11 of 14
* CONFIDENTIAL TREATMENT REQUESTED
12
gives the other notice of such breach by the other, unless the breach is cured
before that day.
14. Infringement by Others.
Each party will notify the other of any infringement of rights in the
Software or Derivative Software and/or Bundled Software that comes to such
party's attention. In the event of any infringement of any rights granted to
BIOSYM hereunder, BIOSYM shall bring an action for such infringement on behalf
of itself and XXXXX, and XXXXX will cooperate fully with BIOSYM in such action.
BIOSYM will bear the expenses of the action and may recover its expenses from
any sums recovered in the action. The balance of the proceeds from such action
will be deemed to be Net License Fees from a sublicense of the Software or
Derivative Software and/or Bundled Software that is infringed and will be
divided between BIOSYM and XXXXX according to the percentage specified in
Section 4(a), provided, however, that if the infringement involves a combination
of the Software with other products, then the percentage will be prorated.
15. Miscellaneous.
(a) Amendment. This Agreement may be amended or supplemented only in
writing signed on behalf of both parties.
(b) Waiver. No waiver will be implied from conduct or failure to enforce
rights. No waiver will be effective unless in writing signed on behalf of the
party claimed to be waived.
(c) Contingencies. Neither party will have the right to claim damages or
to terminate this Agreement as a result of the other's failure or delay in
performance due to circumstances beyond its reasonable control, such as labor
disputes, strikes, act of God, or governmental action not the fault of the
non-performing party.
(d) Severability. If any party of this Agreement is found invalid or
unenforceable, it will be enforced to the maximum extent permitted by the law,
and all other parts of this Agreement will remain in force.
(e) Equitable Relief. Either party may have injunctive, preliminary or
other equitable relief to remedy any actual or threatened unauthorized
disclosure or confidential information.
(f) Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original but all of which shall
constitute one and the same instrument.
12 of 14
13
(g) Governing Law. This Agreement shall be governed by and construed under
the internal laws of the State of California, U.S.A., without regard to any
rules of conflicts of law applicable to agreements made and to be performed by
such state by and among residents of such state.
(h) Assignment. BIOSYM may assign this Agreement to the surviving entity
in a merger or consolidation in which its participates or to a purchaser of all
or substantial all of its assets and to any of its Affiliates or Distributors.
Otherwise, neither party may assign any rights or delegate any duties under this
Agreement without the other's prior written consent, and any attempt to do so
without that consent will be void. Subject to the foregoing, this Agreement
shall bind and inure to the benefit of the parties and their respective
successors, heirs and permitted assigns.
(i) Notices. All notices and other communications required herein shall be
in writing and shall be delivered personally (which shall include delivery by
courier or overnight delivery service) or sent by certified or registered mail,
postage prepaid, return receipt requested or sent by telex, telecopier or other
similar facsimile transmission. Items delivered personally or by telex,
telecopier or facsimile shall be deemed delivered on the day of delivery; items
sent by certified or registered mail shall be deemed delivered three (3) days
after mailing. The address of the parties for purposes of this provision are:
XXXXX: Xxxxxxx X. Xxxxx, Ph.D.
Department of Biological Chemistry
& Molecular Pharmacology
Harvard Medical School
000 Xxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
BIOSYM: BIOSYM Technologies, Inc.
0000 Xxxxxxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Xxxx Xxxxxxx
Vice President, Finance and Administration
Either party may change its address by giving notice thereof as required herein.
(j) Entire Agreement. This Agreement represents the entire Agreement
between the parties relating to the Software and supersedes all prior
representations, discussions, negotiations and agreements, whether written or
oral.
13 of 14
14
(k) Further Assurances. Each of the parties hereto shall execute and
deliver all additional documents and shall do any and all acts and things
reasonably required in connection with the performance of the obligations
undertaken in the Agreement and to effectuate in good faith the intent of the
parties.
(l) Exhibits. All exhibits referred to herein are hereby deemed
incorporated by reference.
IN WITNESS WHEREOF, each of the parties have executed this Agreement
effective as of the date last written below:
XXXXX BIOSYM Technologies, Inc.
a California corporation
By: /s/ Xxxxxxx X. Xxxxx By: /s/ X.X. Xxxxxxx
--------------------------------- ----------------------------------
Title: Lecturer, HMS Title: V P Finance and Administration
------------------------------ -------------------------------
Date: 11/22/94 Date: 11/21/94
------------------------------- --------------------------------
14 of 14
15
EXHIBIT "A"
DESCRIPTION OF DISTANCE GEOMETRY SOFTWARE
SOFTWARE NAME: DG-II
SOFTWARE DESCRIPTION: A package of computer programs designed to assist chemists
and biochemists in the construction of three-dimensional molecular models of
essentially arbitrary molecules from constraints on the values of their
interatomic distances, together with the chirolities and/or planarities of
selected quadruples of atoms.
CODE DESCRIPTION: Modular design in C language suitable to run on Silicon
Graphics and Sun Workstations.
16
EXHIBIT "B"
Royalties
BUNDLED SOFTWARE ROYALTY RATE (*) DATES
---------------- ---------------- -----
Consensus [*], with a minimum of [*]
[*] of list price
NMR Refine Complete [*] with a minimum of [*] [*]
NMR Refine DGII [*], with a minimum of [*] [*]
of list price
Converter [*], with a minimum of [*] [*]
of list price
Sketcher [*], with a minimum of [*]
[*] of list price
(*) Minimums apply to commercial users and non-profit users only
* CONFIDENTIAL TREATMENT REQUESTED
