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EXHIBIT 10.8(b)
AMENDMENT NO. 2 TO COLLABORATION AGREEMENT
XXXXX XX - SYMYX TECHNOLOGIES
This Amendment No. 2 to Collaboration Agreement (the "Second
Amendment"), effective as of November 1, 1998, is entered into by and between
Symyx Technologies ("Symyx"), a California corporation having a principal place
of business at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("Symyx"),
and Xxxxx XX, a German corporation, having a principal place of business at
X-00000 Xxxxxxxxxx, Xxxxxxx, and amends that certain Collaboration Agreement
entered into by and between Symyx and Bayer effective as of March 1, 1998, as
previously amended by Amendment No 1 to Collaboration Agreement effective as of
May 1, 1998 (the "Collaboration Agreement").
WHEREAS, Symyx and Bayer desire to amend the Collaboration Agreement to
provide for research concerning [******], as more fully set forth below;
NOW THEREFORE, the parties hereby agree as follows:
1. All capitalized terms not defined in this Second Amendment shall have
the meanings given to them in the Collaboration Agreement.
2. Section 2.2.1(b) is amended to read in its entirety as follows:
(b) Addition of [******] Project. Effective as of
September 1, 1998, the Catalysis Field shall also include the [******]
Project, which shall be directed to discovery, creation, identification
and research of [******].
3. Section 2.3 is amended to read in its entirety as follows:
2.3 Option to Expand Catalysis Field. It is understood that
existing obligations of Symyx prevent Symyx from including within the
Catalysis Field certain research projects concerning [******] (the
"Catalysis Option Project"). If Symyx obtains the right to include the
Catalysis Option Project within the Catalysis Field, Symyx will give
Bayer written notice (the "Availability Notice") and shall, for the
period commencing with delivery of the Availability Notice and ending
three (3) months after the Availability Notice was sent (the
"Negotiation Period"), negotiate with Bayer in good faith concerning
terms upon which such project may be included within the Catalysis
Field. Symyx may, in its discretion, continue to conduct such Catalysis
Option Project and perform related research activities during the
Negotiation Period, but Symyx will not enter into an agreement to
conduct such Catalysis Option Project for another party during the
Negotiation Period. It is understood that neither party is obligated to
agree to include such Project within the Catalysis Field, and that if
the parties do not mutually agree upon terms for including the Catalysis
Option Project during the Negotiation Period described above, Symyx
shall be free to perform the Catalysis Option Project on its own or with
third parties without obligation to Bayer. It is further understood that
the parties may agree to reallocate resources among the various Projects
within the Research Program if the Catalysis Option Project is to be
included within the Catalysis Field, and that the parties will attempt
to implement a smooth transition in connection with any such
reallocation, including provisions of reasonable resources and time
frames for wind-down or scale-back of other Projects within the
Catalysis Field.
4. The following new sentence is added to the end of Section 5.2:
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"Notwithstanding any other provision of this Agreement, Bayer shall not
have a right of first negotiation with respect to Program Technology
that is identified, discovered or reduced to practice in connection with
the [******] Project , and Bayer agrees not to perform research or use
any Lead Compound from the [******] Project other than in connection
with [******], unless Symyx provides written consent."
5. Section 6.2.1 is amended by the deletion of subsection 6.2.1(a).
6. Section 6.5 is amended to read in its entirety as follows:
6.5 [******] Project and [******] Project.
6.5.1 Alternative Royalties for [******] Project. The
Alternative Royalty Model will apply under this Agreement to Agreement
Compounds, Products and Technology discovered and developed in
conjunction with the [******] Project in the Catalysis Field, with
compensation as follows:
(A) On or before April 1, 1999, the RFC shall
agree upon (i) the criteria for a Lead Compound in the [******] Project,
(ii) the criteria for a "Validated Discovery" in the [******] Project
and (iii) the criteria for determining whether a Validated Discovery in
the [******] Project is sufficiently different from any previously
identified Validated Discovery to justify a separate payment under
Section 6.5.1(B). It is understood that the RFC may, from time to time,
revise the criteria for new Validated Discoveries based upon changes in
the competitive market place or such other reasons as the RFC may agree.
Bayer will conduct the testing of potential Validated Discoveries and
provide the results of such testing to the RFC within a time frame equal
to the later of (i) ninety (90) days of receiving a Lead Compound from
Symyx or, (ii) thirty (30) days added to the actual running time for the
test performed on a potential Validated Discovery. The RFC will promptly
review such results and determine whether the potential Validated
Discovery meets the criteria agreed upon by the RFC and, if one or more
Validated Discoveries have already been identified in the [******]
Project, whether the Validated Discovery is "different" from the prior
Validated Discoveries;
(B) Bayer shall pay Symyx [******] for each
different Validated Discovery identified by Symyx or Bayer in the
[******] Project that meets the criteria agreed upon by the RFC;
(C) Upon the decision of Bayer, or any Affiliate
of Bayer, to build, have built, use or run any pilot production facility
for production of [******] (or other production plant experiments by
Bayer of its Affiliates) that uses an Agreement Compound, Product, or
Program Technology, Bayer shall pay to Symyx a lump sum of [******];
provided, however, that if Bayer has previously paid Symyx for two (2)
or more Validated Discoveries in the [******] Project, the payment under
this Section 6.5.1(C) shall be reduced to [******]; and
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(D) Upon the decision of Bayer (or any Affiliate
of Bayer) to build (or have a third party build on behalf of Bayer or
any Affiliate of Bayer) a full scale plant for production of [******]
which uses an Agreement Compound, Product, or Program Technology with a
production capacity equal to or greater than [******], Bayer shall pay
to Symyx on the date of the first covered use or sale of such Product a
lump sum of [******].
If the decision of Bayer (or any Affiliate of Bayer) to build (or have a
third party build on behalf of Bayer or any Affiliate of Bayer) a
full-scale plant for production of [******] which uses an Agreement
Compound, Product, or Program Technology with a production capacity
equal to or greater than [******] occurs before some or all of the
amounts specified in (B) and (C) have been paid to Symyx with respect to
such Agreement Compound, Product, or Program Technology, a Validated
Discovery shall be deemed to have been identified, and the amounts in
(B) and (C) that have not already been paid to Symyx will become due. In
addition, if the amount in (C) is paid, then as of the date of such
payment, Bayer shall have no further obligation to make additional
payments under (B) for Validated Discoveries identified after such date.
6.5.2 Alternative Royalties for [******] Project. The
Alternative Royalty Model will apply under this Agreement to Agreement
Compounds, Products and Technology discovered and developed in
conjunction with the [******] Project in the Catalysis Field, with
compensation as follows:
(A) On or before April 1, 1999, the RFC shall
agree upon (i) the criteria for a Lead Compound in the [******] Project,
(ii) the criteria for a "Validated Discovery" in the [******] Project
and (iii) the criteria for determining whether a Validated Discovery in
the [******] Project is sufficiently different from any previously
identified Validated Discovery to justify a separate payment under
Section 6.5.2(B). It is understood that the RFC may, from time to time,
revise the criteria for new Validated Discoveries based upon changes in
the competitive market place or such other reasons as the RFC may agree.
Bayer will conduct the testing of potential Validated Discoveries and
provide the results of such testing to the RFC within a time frame equal
to the later of (i) ninety (90) days of receiving a Lead Compound from
Symyx or, (ii) thirty (30) days added to the actual running time for the
test performed on a potential Validated Discovery. The RFC will promptly
review such results and determine whether the potential Validated
Discovery meets the criteria agreed upon by the RFC and, if one or more
Validated Discoveries have already been identified in the [******]
Project, whether the Validated Discovery is "different" from the prior
Validated Discoveries;
(B) Bayer shall pay Symyx [******] for each
different Validated Discovery identified by Symyx or Bayer in the
[******] Project that meets the criteria agreed upon by the RFC;
(C) Upon the decision of Bayer, or any Affiliate
of Bayer, to build, have built, use or run any pilot production facility
for production of [******] (or other production plant experiments by
Bayer of its Affiliates) that uses an Agreement Compound, Product, or
Program Technology, Bayer shall pay to Symyx a lump sum of [******];
provided, however, that if Bayer has
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previously paid Symyx for two (2) or more Validated Discoveries in the
[******] Project, the payment under this Section 6.5.2(C) shall be
reduced to [******]; and
(D) Upon the decision of Bayer (or any Affiliate
of Bayer) to build (or have a third party build on behalf of Bayer or
any Affiliate of Bayer) a full scale plant for production of [******]
which uses an Agreement Compound, Product, or Program Technology with a
production capacity equal to or greater than [******], Bayer shall pay
to Symyx on the date of the first covered use or sale of such Product a
lump sum of [******].
If the decision of Bayer (or any Affiliate of Bayer) to build (or have a
third party build on behalf of Bayer or any Affiliate of Bayer) a
full-scale plant for production of [******] which uses an Agreement
Compound, Product, or Program Technology with a production capacity
equal to or greater than [******] occurs before some or all of the
amounts specified in (B) and (C) have been paid to Symyx with respect to
such Agreement Compound, Product, or Program Technology, a Validated
Discovery shall be deemed to have been identified, and the amounts in
(B) and (C) that have not already been paid to Symyx will become due. In
addition, if the amount in (C) is paid, then as of the date of such
payment, Bayer shall have no further obligation to make additional
payments under (B) for Validated Discoveries identified after such date.
7. Exhibit A is amended by addition of the following new Section 1.26:
1.26 "Affiliate" shall mean any individual or entity directly
or indirectly controlling, controlled by or under common control with,
Symyx Technologies or Xxxxx XX. For purposes of this Agreement, the
direct or indirect ownership of fifty percent (50%) or more of the
outstanding voting securities of an entity, or the right to receive
fifty percent (50%) or more of the profits or earnings of an entity
shall be deemed to constitute control, or if not meeting the preceding
requirements, any company owned or controlled by, or owning or
controlling, Bayer or Symyx at the maximum control or ownership right
permitted in a country where such company exists. Such other
relationship as in fact results in actual control over the management,
business and affairs of an entity shall also be deemed to constitute
control.
8. Except as specifically modified or amended hereby, the Collaboration
Agreement shall remain in full force and effect and, as modified or
amended, is hereby ratified, confirmed and approved. No provision of
this Amendment may be modified or amended except expressly in a writing
signed by both parties nor shall any terms be waived except expressly in
a writing signed by the party charged therewith. This Amendment shall be
governed by, construed and enforced in accordance with the laws of the
State of California, without reference to conflicts of laws principles.
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IN WITNESS WHEREOF, each of the parties has executed this Amendment as of the
date indicated on this Amendment.
XXXXX XX SYMYX TECHNOLOGIES
By: /s/ DAHME By: /s/ XXX XXXXXXXXXX
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Name: DAHME Name: XXX XXXXXXXXXX
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Title: Managing Director Title: President & COO
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Date: November 12, 1998 Date: November 10, 1998
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By: /s/ XXXXXX
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Name: Xxxxxx, Xxxx X.
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Title: VP - PU Research
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Date: November 19, 1998
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