Confidential Treatment Requested
Under 17 C.F.R. Sections
200.80(b)(4), 200.83 and 230.406
*** Indicates omitted material that
is the subject of a confidential
treatment request filed separately
with the Commission.
This EARLY ACCESS PROGRAM AGREEMENT (this "Agreement") shall be effective as of
January 1, 1999 (the "Effective Date") by and between CELERA GENOMICS
CORPORATION, a Delaware corporation (including its Affiliates (as defined
hereinbelow), referred to as "Celera"), having its principal place of business
at 00 Xxxx Xxxx Xxxxx, Xxxxxxxxx, Xxxxxxxx 00000 and PHARMACIA & UPJOHN COMPANY
("PUC"), a Delaware corporation having its principal place of business at 0000
Xxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxx 00000 and PHARMACIA & UPJOHN AB, a corporation
organized and existing under the laws of Sweden ("AB"), having a place of
business at Xxxxxxxxxxxxxxx 000, X-000 00 Xxxxxxxxx, Xxxxxx which together with
their Customer Affiliates (as defined hereinbelow) being collectively referred
to as "Customer."
WHEREAS, Celera and Customer have previously entered into a certain
DROSOPHILA Genome License Agreement dated December 30, 1998, and the parties
intend for this Agreement to supercede such DROSOPHILA Genome License Agreement;
WHEREAS, Celera is undertaking the sequencing of the DROSOPHILA genome
and is obligated hereby to undertake the sequencing of the human genome;
WHEREAS, Celera has expended and will continue to expend significant
resources and efforts to develop the Celera Database and Analysis Products and
the Subscriber Information System, as hereinafter defined;
WHEREAS, the Celera Database and Analysis Products and the Subscriber
Information System represent highly valuable and confidential assets;
WHEREAS, Customer desires to obtain access and certain rights to the
Celera Database and Analysis Products and the Subscriber Information System as a
part of Celera's Early Access Program, as hereinafter defined;
WHEREAS, the objective in providing early access to the Celera Database
and Analysis Products and the Subscriber Information System is to provide
Customer with the ability to analyze and discover information of potential
interest to Customer;
WHEREAS, it is recognized by Customer that the comprehensive nature of
the content and analysis capabilities of the Celera Database and Analysis
Products and the Subscriber Information System is contingent upon the
generation, assimilation and annotation of DNA Sequence Information, as
hereinafter defined, and associated product development and as such will develop
over time;
WHEREAS, Customer recognizes that Celera may develop additional
products and services beyond those included in the Customer License.
1
NOW, THEREFORE, the parties agree as follows:
2
1.0 DEFINITIONS
For purposes of this Agreement, each capitalized term used shall have the
meaning assigned to it in this Agreement.
1.1 "Affiliate" shall mean any corporation, firm, partnership or other legal
entity which, directly or indirectly, controls, is controlled by, or is under
common control with a party. For purposes of this definition, control shall mean
the direct or indirect ownership of more than eighty percent (80%) of (i) the
stock shares entitled to vote for the election of directors or (ii) ownership
interest of any such corporation, firm, partnership or other legal entity.
1.2 "Analysis Tools" shall mean all algorithms and software listed in Exhibit A,
and all algorithms and software similar in function to those described in
Exhibit A, and which are released as a product during the Term, and which are
owned by or licensed to Celera with the right to sublicense.
1.3 "Annotation Information" shall mean information, derived from both internal
and external sources by Celera, that is associated with DNA Sequence Information
and External DNA Sequence Information, including but not limited to [***].
1.4 "Celera Database and Analysis Products" shall mean the DNA Sequence
Information, External DNA Sequence Information, Annotation Information, Analysis
Tools as listed in Exhibit A.
1.5 "Celera Discovery System" shall mean the informatics infrastructure and
database internal to Celera, which is the source of the contents for all Celera
Database and Analysis Products.
1.6 "Celera Technology" shall mean all proprietary data, information,
inventions, know-how, technology, trade secrets and the like, including, but not
limited to, each and every nucleotide sequence whether as genomic DNA, cDNA,
synthetic DNA, RNA or the like, including sense and antisense strands thereof,
ribozymes containing any of the foregoing, vectors containing any of the
foregoing, gene therapy delivery systems or control systems containing any of
the foregoing, host cells containing any of the foregoing, amino acid sequences
encoded by any of the foregoing, antibodies, formulations of any of the
foregoing, any and all processes and uses of any of the foregoing and
Polymorphism Information, whether patentable or not, which are identified,
discovered, developed, or invented in whole or part by Celera, wholly
independent of Customer, using Celera resources including Celera Database and
Analysis Products.
3
1.7 "Confidential Information" shall have the meaning as set forth in Section
7.0.
1.8 "Customer Affiliate" shall mean any Affiliate of PUC or AB.
1.9 "Customer Information System" shall have the meaning set forth in Section
3.2.2.
1.10 "Customer Server" shall mean a dedicated computer server configured for
utilization of the Customer License, which is the dedicated server for the
Subscriber Information System, as described in Exhibit B.
1.11 "Customer License" shall have the meaning set forth in Section 2.1.
1.12 "Customer License Log" shall mean the automated electronic record of
Customer's access and usage of the Celera Database and Analysis Products.
1.13 "Customer Technology" shall mean, other than Celera Technology, all
proprietary data, information, inventions, know-how, technology, trade secrets
and the like whether patentable or not, which are identified, discovered,
developed or invented, in whole or part, during the Term (or thereafter pursuant
to the terms hereof) by Customer using the Celera Database and Analysis Products
and the Subscriber Information System, in accordance with the terms of this
Agreement.
1.14 "Default" shall mean a Performance Default and/or Representation Default.
1.15 "Defaulting Party" shall have the meaning set forth in Section 9.2.1.
1.16 "DNA Sequence Information" shall mean the [***] human and DROSOPHILA
nucleotide sequences from nucleotide templates sequenced through Celera's
internal sequencing programs and released to the Celera Discovery System.
1.17 "DROSOPHILA Genome License" shall mean the DROSOPHILA Genome License
Agreement between Celera and Customer entered into on December 30, 1998.
1.18 "Early Access Program" shall mean a program through which customers gain
access to the Celera Database and Analysis Products and have the ability to
provide input for consideration in the development of the Subscriber Information
System and the Celera Database and Analysis Products.
1.19 "Early Access Program Forum" shall have the meaning set forth in Section
4.0.
1.20 "External DNA Sequence Information" shall mean the [***] human and
DROSOPHILA nucleotide sequences and associated annotation that are obtained
by Celera from sources other than Celera.
4
1.21 "First Extension License Fee" shall have the meaning set forth in Section
5.1.
1.22 "First Extension Term" shall have the meaning set forth in Section 2.3(b).
1.23 "Further Extension Term" shall have the meaning set forth in Section
2.3(c).
1.24 "Further Extension License Fee" shall have the meaning set forth in Section
5.1.
1.25 "Indemnitee" shall have the meaning set forth in Section 11.3.
1.26 "Indemnitor" shall have the meaning set forth in Section 11.3.
1.27 "Initial Term" shall have the meaning set forth in Section 2.3(a).
1.28 "Initial License Fee" shall have the meaning set forth in Section 5.1.
1.29 "Installation Date" shall have the meaning set forth in Section 3.4.
1.30 "License Fee" shall mean the Initial License Fee, the First Extension
License Fee and the Further Extension License Fee, as applicable.
1.31 "Non-Defaulting Party" shall have the meaning set forth in Section 9.2.1.
1.32 "Notice of Default" shall have the meaning set forth in Section 9.2.1.
1.33 "Performance Default" shall have the meaning set forth in Section 9.2.1.
1.34 "Phase I" shall mean the period prior to completion of sequencing and
assembling the human genome.
1.35 "Phase II" shall mean the period following completion of sequencing and
assembling the human genome.
1.36 "Polymorphism Information" shall mean the variations between haplotypes
that occur in a nucleotide sequence and are contained in the Celera Discovery
System.
1.37 "Representation Default" shall have the meaning set forth in Section 9.2.1.
1.38 "Subscriber Information System" shall mean the computer hardware
configuration and requirements, the database structure and any other aspect of
the system required for the utilization of the Celera Database and Analysis
Products as further described in Exhibit B attached hereto.
5
1.39 "Term" shall mean the Initial Term, the First Extension Term, if any, and
any Further Extension Terms, unless earlier terminated or not extended, as
applicable.
1.40 "Third Party" shall mean any individual, partnership, joint venture,
corporation, trust, estate, unincorporated organization, government or any
department or agency thereof, or any other entity other than Customer or Celera.
2.0 CUSTOMER LICENSE
2.1 LICENSE GRANT: Subject to the terms and conditions contained in this
Agreement, and in consideration of the payments to be made hereunder, Celera
hereby grants to Customer, during the Term, a non-exclusive, non-transferable,
royalty-free license, with no right to sublicense, to the Celera Database and
Analysis Products and Subscriber Information System for Customer's internal
research and development programs for the purpose of developing Customer
Technology for the research, development and commercialization of products
("Customer License").
2.1.1 Customer shall retain all rights to Customer Technology, provided
such Customer Technology is used for internal research, development and
commercialization activities. Customer shall not have the right to transfer,
through sublicense, sale or any other manner, any rights to such Customer
Technology [***] subject to Section 2.1.2.
2.1.2 The Customer License does not include any rights to any
Polymorphism Information that may be contained in the Celera Database and
Analysis Products. Such Polymorphism Information may be made available to
Customer and other customers in the future under a separate agreement.
2.2 AUTHORIZED USE: Customer shall have the right to use the Celera Database
and Analysis Products, [***] of the Celera Database and Analysis Products
authorized herein, and the Subscriber Information System solely for the
purposes expressly permitted under this Agreement, including the licenses
granted under Section 2.1. [***]
6
or as otherwise agreed to by Celera in writing, (ii) for the purpose of
incorporating DNA Sequence Information in experimental assays for internal
research use only, or (iii) as authorized in Section 7.0; Customer shall not
reproduce, adapt, prepare derivative works based upon, or distribute copies
(by any means whatsoever whether now known or hereafter invented) of the
Celera Database and Analysis Products or of the Subscriber Information
System, including any portion of the Celera Database and Analysis Products or
from any field of any database included therein. Customer agrees that it
shall restrict access to the Celera Database and Analysis Products and the
Subscriber Information System only to Customer and Customer employees,
collaborators and consultants, solely to the extent required to accomplish
the purpose of this Agreement and subject to the provisions of Section 7.0.
2.3 TERM:
(a) Unless terminated earlier as provided herein, the Customer
License shall extend and remain in full force from the Effective Date through
the fifth anniversary thereof ("Initial Term"), unless extended in accordance
with Section 2.3 (b) or 2.3 (c).
(b) In the event Customer desires to extend the Initial
Term, Customer shall, ninety (90) days prior to the expiration of the Initial
Term, provide Celera with written notice of its desire to extend this
Agreement and, in such event, the Term shall be extended for an additional
[***] following the Initial Term ("First Extension Term") under the terms and
conditions set forth herein.
(c) If the parties so agree in writing at least ninety (90)
days prior to the [***] of the Effective Date thereafter, the First Extension
Term shall then be extended for [***] under the terms and conditions set
forth herein ("Further Extension Term(s)").
2.4 ACCESS TO CUSTOMER LICENSE LOG: Celera shall have the right to access and
examine the Customer License Log (i) to review a performance monitor of the
Customer Server or (ii) upon Celera's reasonable suspicion of Customer's
unauthorized use under the Customer License. In the event of Celera's access
under 2.4 (ii) such access shall be made in the presence of a designated
Customer employee.
7
3.0 DELIVERY MECHANISM, PLATFORM,
INSTALLATION, TRAINING AND CUSTOMER SUPPORT
3.1 PHASED DELIVERY: During the Term, Celera will utilize a phased delivery
mechanism as described herein for the delivery of the Celera Database and
Analysis Products through the Subscriber Information System, provided that, with
the consent of Customer (which shall not be unreasonably withheld), Celera
reserves the right to modify the delivery mechanism during Phase I; and further
provided that modification of the delivery mechanism shall not otherwise alter
Celera's obligations under this Agreement. Celera shall be obligated to develop
and deliver the Celera Database and Analysis Products through the Subscriber
Information System during the Initial Term.
3.1.1 PHASE I -- PRIOR TO HUMAN GENOME COMPLETION. The Subscriber
Information System configuration during Phase I of the sequencing of the
human genome will require the [***]. The Customer Server will receive data
updates directly from the Celera Discovery System for the Celera Database and
Analysis Products of the Customer License, in accordance with the terms of
Section 3.3. The Analysis Tools provided as a part of the Customer License,
and specified in Exhibit A, will reside on the Customer Server. During Phase
I, data queries and query results will be [***] Customer (at Customer's
facilities in the United States) via an on-line, secured, network line, or
via another secure mechanism selected by mutual agreement. During Phase I,
DNA Sequence Information, External DNA Sequence Information and Annotation
Information will be replicated from the Celera Discovery System to the
Customer Server as part of the Customer License. Such DNA Sequence
Information shall be transferred with the associated quality values. Subject
to the terms of this Agreement, Customer shall have a right of access at all
times during the Term to the Customer Server.
3.1.2 PHASE II -- POST-HUMAN GENOME COMPLETION. Upon completion of the
sequencing of the human genome, Customer may, at its discretion and expense,
modify the manner in which it accesses data from Celera as follows: the
Subscriber Information System configuration during Phase II will [***].
DNA Sequence Information, Annotation Information and External DNA Sequence
Information updates from the Celera Discovery System to the Customer Server at
Customer's designated site will be conducted via an online, secure, network
line, or via another secure mechanism selected by mutual agreement.
3.2 SUBSCRIBER INFORMATION SYSTEM PROVISIONS:
3.2.1 SUBSCRIBER INFORMATION SYSTEM CONFIGURATION. The Subscriber
Information System consists of a predefined hardware infrastructure designed to
meet the requirements necessary to facilitate the use of the Celera Database and
Analysis Products
8
included in the Customer License. See Exhibit B for the hardware infrastructure
configurations required to provide access to the Celera Database and Analysis
Products included in the Customer License. Celera, at its own expense, shall be
responsible for any maintenance of the Subscriber Information System; provided
however, to the extent a malfunction of the Subscriber Information System shall
be the result of Customer's improper use of Customer Information System as
defined hereunder, Celera shall be responsible, at Customer's expense and with
Customer's prior approval, for any maintenance, upgrades, improvements or
replacements of the Subscriber Information System.
3.2.2 CUSTOMER SYSTEM REQUIREMENTS. Any additional hardware, software
and communications infrastructure, including information system resources and
Customer algorithms and analysis tools, not described as a part of the Analysis
Tools and the Subscriber Information System ("Customer Information System") will
be the financial responsibility of Customer. Customer may increase the capacity
and/or redundancy of the Customer Information System through the purchase of an
additional server at any time during this Agreement. The cost of such additional
server will be provided to Customer within thirty (30) days of the installation
date and such price will be in effect for up to three (3) months from the date
it was provided by Celera to Customer. In addition, any upgrades, maintenance,
improvements or replacements of the Customer Information System will also be the
financial responsibility of Customer. Celera shall, at Customer's expense,
perform such upgrades, improvements or replacements on the Customer Server.
3.3 UPDATE FREQUENCY: All new information covered under or pertaining to the
Customer License will be transferred to the Customer Server on a regular
basis. Updates will be regularly scheduled events that require all
applications to be terminated and the Customer Server to be shut down for
such updates to occur. During Phase I, Celera shall use commercially
reasonable efforts to transfer all generated DNA Sequence Information from
the Celera Discovery System to the Customer Server promptly upon its being
generated, in no event less frequently than [***] after being generated.
During Phase II, Celera shall use commercially reasonable efforts to transfer
all generated DNA Sequence Information, Annotation Information and External
DNA Sequence Information from the Celera Discovery System to the Customer
Server on a frequency of at least [***]. During Phase I and Phase II, Celera
shall make all DNA Sequence Information available to Customer not later than
when Celera first makes such DNA Sequence Information, Annotation
Information, and External DNA Information available to a Third Party or
available to Celera's internal gene discovery server. In the event Celera
releases new Analysis Tools, such Analysis Tools shall be made available to
Customer [***].
3.4 INSTALLATION: Not later than March 1, 1999, Celera agrees to provide
Customer with access to the Subscriber Information System for the purpose of
installing the Customer Information System at a date and time mutually
acceptable on a basis consistent with terms of this Agreement ("Installation
Date"). The integration of the
9
Customer Information System into the Subscriber Information System and costs
associated with such integration shall be the responsibility of Customer.
3.5 TRAINING: Celera will provide Customer with all documentation and
information reasonably necessary for utilization of the Celera Database and
Analysis Products and the Subscriber Information System provided under the
Customer License. From time-to-time during the Term, Customer may request Celera
to train Customer employees regarding the use of the Customer License. The
specific topics of the training relating to use of the Customer License will be
as requested by Customer. The training will occur within thirty (30) business
days of a request by Customer or as otherwise mutually agreed, provided,
however, no training will be conducted prior to installation of the Subscriber
Information System, pursuant to Section 3.4. The training will take place at
Celera's facility in Rockville, MD or other location designated by Celera. Each
party shall bear all out-of-pocket expenses of its own employees in connection
with any training activities.
3.5.1 INITIAL TERM. During the Initial Term, Customer may designate
[***] employees in groups of [***] employees to receive such training. Celera
shall provide Customer with [***] business days of training services per
employee, as requested by Customer.
3.5.2 FIRST EXTENSION TERM. In the event Customer elects under
Section 2.3(b) to extend the License through the period of the First
Extension Term, Customer may designate [***] employees to receive such
training [***]. Celera shall provide Customer with [***] business days of
training services per employee, as requested by Customer.
3.5.3 FURTHER EXTENSION TERM(S). In the event Customer elects under
Section 2.3(c) to further extend the Term of the License beyond the period of
the First Extension Term, Customer may designate [***] to receive such
training in a [***]. Celera shall provide Customer with [***] of training
services per employee, as requested by Customer.
3.5.4 ADDITIONAL TRAINING. Additional days of training and/or
participants may be negotiated separately.
3.6 CUSTOMER SUPPORT: Celera shall provide customer support services in
connection with the Customer License as shall be reasonably requested by
Customer. Celera shall provide for [***] between the hours of 8:00 A.M. to
6:00 P.M., Monday through Friday, excluding Celera's standard holidays. As
part of the customer support services provided under this Agreement, [***].
In the event of a malfunction of the Customer Server, Celera agrees to use
commercially
10
reasonable efforts to correct the malfunction. Customer shall cooperate and
participate in the correction of such malfunction, to the extent it is able.
4.0 EARLY ACCESS PROGRAM FORUM
Customer will have the right and opportunity to participate in the Early Access
Program Forum ("Forum"). This Forum will meet at least quarterly and will be
attended by representatives from each of the customers of the Early Access
Program and members of Celera's staff. The purpose of the Forum will be to
exchange ideas on future Celera product enhancements and to communicate Celera's
vision for the expected course of product development. Each customer shall bear
all out-of-pocket expenses of its own representatives to attend the Early Access
Program Forum. All disclosures made by Celera at any such Forum meetings shall
be subject to the confidentiality provisions of Section 7.0.
5.0 SCHEDULE OF PAYMENTS
5.1 LICENSE FEES: The license fee for the Customer License for the Initial Term
shall be a total of Twenty-Five Million Dollars ($25,000,000) payable in
accordance with the terms of Sections 5.2 below (the "Initial License Fee"). The
license fee for the First Extension Term shall be the
then-best-available-current fee for similar rights to use the Celera Database
and Analysis Products and such fee shall be payable in accordance with the terms
of Sections 5.3.1 below (the "First Extension License Fee"). License fees for
any subsequent extensions of the Customer License shall be in the amount and be
payable in accordance with Section 5.3.2 below ("Further Extension License
Fee"). In no event shall the First Extension License Fee or the Further
Extension License Fee, payable per annum, be more than $5,000,000 plus or minus
any increase or decrease in the Consumer Price Index ("CPI", as reported by the
Bureau of Labor Statistics of the United States Department of Labor, or any
successor agency thereof). Any increase or decrease in the CPI applicable to
each year of the First Extension Term or any Further Extension Term(s) shall be
determined by comparing the difference in the CPI on the Effective Date with the
CPI on each of the (i) the commencement of the First Extension Term, (ii) the
first anniversary of the First Extension Term and (iii) the commencement of any
Further Extension Term(s), respectively.
5.2 INITIAL LICENSE FEE: Subject to the other terms hereof, payment of the
Initial License Fee shall be non-refundable and made in advance in five equal
installments. Customer shall pay Celera a payment of Five Million Dollars
($5,000,000) on or before April 1, 1999, provided however, Celera acknowledges
receipt of Four Million Dollars ($4,000,000) from Customer on January 7, 1999 in
connection with the DROSOPHILA Genome License and hereby credits such amount
toward such initial Five Million Dollar ($5,000,000) payment. Subject to the
terms and conditions hereof, Customer will make payments of Five Million Dollars
($5,000,000) on or before the first, second, third and
11
fourth anniversaries of the Effective Date. Such payments will be dispersed
by PUC in U.S. Dollars for which twenty (20%) percent of the dispersed amount
will be reimbursed by AB to PUC.
5.3 EXTENSION OF THE CUSTOMER LICENSE:
5.3.1 In the event the Customer License shall be extended through the
First Extension Term pursuant to Section 2.3(b), subject to the terms and
conditions hereof, Customer will make a non-refundable payment of fifty percent
(50%) of the aggregate amount of the First Extension License Fee on or before
each of the [***] of the Effective Date.
5.3.2 In the event the Customer License shall be further extended
through any Further Extension Terms pursuant to Section 2.3(c), for [***] the
Customer License shall be so extended, subject to the terms and conditions
hereof, Customer will make a non-refundable payment of the Further Extension
License Fee [***] to use the Celera Database and Analysis Products, upon the
commencement of [***] that the Customer License is extended.
5.4 MODE OF PAYMENT: All payments under this Agreement will be made in U.S.
dollars by deposit to the credit and account of Celera or its designated nominee
in any commercial bank designated by Celera or in an alternative mutually
agreed-upon manner.
5.5 FAILURE BY CUSTOMER TO MAKE TIMELY PAYMENT: In the event Celera has not
received payment by the prescribed due date, Celera shall notify Customer of
such non-payment. In the event that a payment is not made within thirty (30)
days of receipt of such notice from Celera, such failure of Customer to make
timely payment due Celera will be considered a material breach and Celera shall
have the right to terminate access to the Customer Server and the data and
information contained therein in addition to any other remedies which may be
available to Celera at law or equity. In the event that such payment is not made
within sixty (60) days of receipt of such notice, Celera shall have the right to
terminate this Agreement.
[***]
[***]
12
7.0 CONFIDENTIALITY AND PUBLICATION
7.1 CONFIDENTIALITY: The parties acknowledge that during the course of this
Agreement they may each receive from the other information which is proprietary
and/or confidential and of commercial value to the disclosing party. For
purposes of this Agreement, "Confidential Information" shall mean business
information and technical information relating to the Customer License, Customer
Technology, Customer Information System, Celera Database and Analysis Products,
Subscriber Information System, and Celera Technology, belonging to the
disclosing party, including, where appropriate and without limitation, any
associated information, business, financial and scientific data, Annotation
Information, DNA Sequence Information, External DNA Sequence Information,
invention disclosures, patent disclosures, patent applications, structures,
models, techniques, processes, compositions, compounds, biological samples, and
the like, and bioinformatics methods, hardware configurations and software in
various stages of development or any software product (source code, object code
or otherwise), including its audiovisual components (menus, screens, structure
and organization) and any human or machine readable form of the program, and any
writing or medium in which the program or information therein is stored, written
or described, including, without limitation, diagrams, flow charts, designs,
drawings, specifications, models, data, bug reports, and the like. Except to the
extent expressly authorized by this Agreement, the parties agree that the
receiving party shall keep confidential and shall not publish or otherwise
disclose, and shall not use for any purpose (except those expressly permitted
under this Agreement), any Confidential Information furnished to it by the other
party pursuant to this Agreement, regardless of the medium on which it is
provided, including know-how, except to the extent that it can be established by
the receiving party by competent proof that such information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure by the other party;
(b) was generally known to the public or otherwise part of the public
domain at the time of its disclosure to the receiving party;
(c) became generally available to the public or otherwise part of the
public domain after its disclosure through no fault of the receiving party;
13
(d) was subsequently lawfully disclosed to the receiving party by a
Third Party who did not require the receiving party to hold it in confidence or
limit its use, provided it was not obtained by such Third Party under an
obligation of confidentiality directly or indirectly from the disclosing party;
or
(e) was independently discovered or developed by the receiving party
without the use of the other party's Confidential Information, as can be
documented by written records created at the time of such independent discovery
or development.
7.2 PERMITTED DISCLOSURE:
7.2.1 Notwithstanding the obligations of Section 7.1, Customer may
disclose Celera's Confidential Information only to the extent such disclosure
shall be reasonably necessary in (i) prosecuting patent applications and
maintaining patents, subject to Section 8.0 below or (ii) prosecuting or
defending litigation.
7.2.2 Notwithstanding the obligations of Section 7.1, each party may
disclose the other's Confidential Information in (i) establishing rights or
enforcing obligations under this Agreement or (ii) complying with applicable
law, or (iii) applying for regulatory approval for Customer products, provided
however, that in each case described herein if a party shall be required to make
any disclosure of the other party's Confidential Information under this Section
7.2.2, it will give reasonable advance notice to the other party of such
disclosure requirement; it will provide a copy of the proposed disclosure; and,
at the request of the disclosing party, will use its reasonable best efforts in
assisting the disclosing party to secure confidential treatment of such
Confidential Information required to be disclosed, including cooperating with
the other to obtain a protective order of the other party's Confidential
Information.
7.3 PUBLICATION:
7.3.1 Customer may publish scientific results of its work within the
scope of the licenses granted under this Agreement, provided however, that:
(a) any such publication by Customer that would disclose
Confidential Information of Celera not disclosable under Section 7.2, shall
require the prior written consent of Celera, provided that Customer shall have
submitted to Celera thirty (30) days prior to submission for publication, a copy
of such planned disclosure for Celera's comment and review. Celera may, at its
discretion, remove the Confidential Information or approve such disclosure of
Confidential Information prior to approving the publication. Customer agrees
that Celera may keep a copy of such disclosure for its records. Customer further
agrees that upon receiving notification by the publisher of the intent to
release the
14
publication, Customer will advise Celera of such publication, the planned
publication date, and furnish a final copy of the publication as it will appear
in the disclosure; and
(b) any such publications will include recognition of the
contributions of Celera according to standard practice for assigning scientific
credit, either through authorship or acknowledgment as may be appropriate.
7.3.2 Celera may disclose, publish or release DNA Sequence Information
and Annotation Information only in accordance with the procedures set forth in
Schedule 1.0.
7.4 OTHER PUBLICATION: Celera shall have the right to make public other
information included within the Customer License provided that (i) in case of
publication in a peer-reviewed scientific journal, Celera shall not make such
information public without first providing Customer with a draft manuscript of
such publication and thirty (30) days to review such publication; or (ii) in the
case of publication in other than in a scientific publication, without first
providing such information to Customer three (3) months prior to such
publication (in the same form as would be publicly disclosed).
7.5 THIRD PARTY DISCLOSURE: Customer may disclose, copy or distribute Celera
Confidential Information to its employees, collaborators, and consultants, in
the context of the disclosure of Customer's own scientific results or the
conduct of its work within the scope of the licenses granted herein, provided
however, that any such disclosure by Customer that would disclose Celera
Confidential Information shall require that Customer shall have obtained from
such parties a written agreement regarding obligations of confidentiality and
appropriate use restrictions comparable to and consistent with those set forth
herein, and provided that such parties shall agree not to further disclose
Celera Confidential Information other than to other Customer employees,
contractors, and consultants who have a need-to-know and who are under like
obligations of confidentiality. Such consultants and/or collaborators will have
executed a formal consulting or collaborative agreement with Customer and the
purpose of such agreement is to advance development of Customer Technology and
products.
7.6 RESTRICTED USE: Except as set forth in this Agreement, this Section 7.0
shall not be construed to allow Customer, or any other person or entity to use,
publish, disclose or re-distribute the Celera Database and Analysis Products
and/or the Subscriber Information System or any portion of its contents,
including, but not limited to, any DNA Sequence Information or portions of
Annotation Information, or any Celera software or hardware configurations, at
any time without the express written consent of Celera. Nor shall this Section
7.0 be construed to limit Celera's ability to enter into other license
agreements with other parties.
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8.0 INTELLECTUAL PROPERTY
8.1 RIGHTS UNDER THE CUSTOMER LICENSE:
8.1.1 CELERA RIGHTS. Celera retains all rights, title and interest to
and in the Subscriber Information System and the Celera Database and Analysis
Products. Celera shall own all right, title and interest in and to Celera
Technology. To avoid doubt, with the exception of the rights granted under this
Agreement, Customer, its employees, collaborators, and consultants shall have no
rights, claims or interests whatsoever (including but not limited to any
intellectual property rights) with respect to the Subscriber Information System,
the Celera Database and Analysis Products, Celera Technology or products
incorporating Celera Technology. The filing, prosecution, maintenance, defense
and enforcement of patent(s), copyrights, and other proprietary rights regarding
the Celera Technology shall be the responsibility and expense of, and at the
discretion of Celera. If Celera desires, but is unable to assert its rights
against a Third Party for the infringement of an issued patent claiming the
Subscriber Information System and the Celera Database and Analysis Products,
which Customer's access under Section 2.0 would infringe but for the licenses
granted herein, Celera may, but is not obligated to, offer to Customer, the
right to assert such patents on Celera's behalf, provided that any settlement of
such assertion of rights shall not be made without the prior written consent of
Celera. If Customer undertakes such matters it shall be at Customer's expense,
and the proceeds of any settlement or judgment shall go first to reimburse
Customer for its expense. Any remaining proceeds shall be split evenly (50/50)
between Customer and Celera. Celera will provide reasonable assistance to
Customer so as to allow Customer to fully exercise its rights under this
section.
8.1.2 CUSTOMER RIGHTS.
(a) Customer shall own all right title and interest in and to
Customer Technology. Customer shall assume responsibility for all costs
associated with the application, prosecution and maintenance, and the defense
and enforcement of patent applications and patents claiming any such Customer
Technology. [***]. Celera agrees to treat the subject thereof as Confidential
Information.
(b) Subject to Celera's contractual obligations, Celera may offer to
any Third Party an opportunity to license intellectual property within Celera
Technology. If Celera offers such licenses during the Term, [***].
8.2 TRADE SECRET PROTECTION: If Celera chooses to protect any element of the
Subscriber Information System as a trade secret, Customer shall be given timely
written
16
notice thereof. The written notice must clearly indicate to Customer (i) what
elements of the technology are protected by trade secret and (ii) by mutual
agreement (which will not be unreasonably withheld), what explicit reasonable
methods or means Customer shall be expected to carry out in an effort to
maintain such trade secret protection. Customer must inform all employees, and
consultants who may have access to such proprietary technology of both the
status of the information as a trade secret and Customer's obligation to
maintain such status. It shall be however, Celera's obligation to periodically
examine and review the status of the trade secret protection such that it may be
properly maintained. Notwithstanding the above, designation of any aspect of the
Subscriber Information System as a trade secret shall not alter any right
granted hereunder to use such aspect.
8.3 COPYRIGHT PROTECTION: If Celera pursues copyright protection, Celera shall
notify Customer in writing. Celera shall indicate such product or document
protection by marking it with (C). Celera grants Customer a fully paid-up,
irrevocable, non-exclusive, worldwide license to any such copyright protection.
8.4 ENFORCEMENT OF PATENT RIGHTS: If any time during the Term of this Agreement,
Celera becomes aware of any Third Party infringement or threatened infringement
of any claim of an issued patent that covers Customer Technology it will give
prompt written notice to Customer.
8.5 CLAIMS BY THIRD PARTIES: If during the Term, a party hereto becomes aware of
any actual or threatened claim of a Third Party alleging that any activity
related to the Agreement infringes the intellectual property rights of such
Third Party, each party will give prompt written notice to the other party of
such claim. If the Third Party claim arises from Celera's activities under the
Agreement, Celera shall defend, indemnify and hold harmless Customer which shall
include costs or judgements, whether for money damages or equitable relief, and
shall include legal expenses and attorney's fees. Celera shall not enter into a
settlement agreement with such Third Party without the express written consent
of Customer which shall not be unreasonably withheld. If the Third Party claim
arises from Customer's use of the Celera Database and Analysis Products and the
Subscriber Information System under the Agreement (other than that permitted
hereunder), Customer shall defend, indemnify and hold harmless Celera which
shall include costs or judgements, whether for money damages or equitable
relief, and shall include legal expenses and attorney's fees. Customer shall not
enter into a settlement agreement with such Third Party without the express
written consent of Celera which shall not be unreasonably withheld.
9.0 TERMINATION
9.1 TERMINATION: This Agreement may be terminated by mutual written agreement of
Customer and Celera, effective as of the time specified in such written
agreement. [***].
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9.2 DEFAULT:
9.2.1 NOTICE OF DEFAULT. In the event any material representation or
warranty made hereunder by a party ("Representation Default") shall have been
untrue when made or upon any material breach or material default of a material
obligation of this Agreement by a party ("Performance Default"); the party not
in Default ("Non-Defaulting Party") must first give the other party ("Defaulting
Party") written notice thereof ("Notice of Default"), which notice must state
the nature of the untruthfulness, material breach or material default in
reasonable detail and request the Defaulting Party cure such Default within one
hundred twenty (120) days, only if such default can be cured within such period.
If the Defaulting Party shall dispute the existence, extent or nature of any
Default set forth in a Notice of Default, the parties shall use reasonable best
efforts to resolve the dispute.
9.2.2 DEFAULT BY CELERA. In the event of (i) a Representation Default
by Celera or (ii) a Performance Default by Celera that cannot be cured within
one hundred twenty (120) days, or (iii) a Performance Default by Celera shall
not be cured within one hundred twenty (120) days after receipt of a Notice of
Default; or, (iv) a Performance Default which can reasonably be cured within a
one hundred twenty (120) day period, but which Celera has failed to commence
substantial remedial actions within such one hundred twenty (120) day period and
to diligently pursue the same; then in addition to any other remedies which may
be available to Customer at law or equity, Customer, at its option, may
terminate this Agreement.
9.2.3 DEFAULT BY CUSTOMER. In the event of (i) a Representation Default
by Customer, then Celera, at its option, may terminate this Agreement, or (ii) a
Performance Default by Customer that cannot be cured within one hundred twenty
(120) days, or (iii) except as provided in Section 5.5, in the event a
Performance Default by Customer that is not cured within one hundred twenty
(120) days of receipt of a Notice of Default; or, (iv) a Performance Default
which can reasonably be cured within a one hundred twenty (120) day period, but
which Customer has failed to commence substantial remedial actions within such
one hundred twenty (120) day period and to diligently pursue the same; and such
Performance Default arises from a material breach or default of Sections 2.0,
7.0, 8.0, 11.0 or 12.0 with respect to the Customer License, then in addition to
any other remedies which may be available to Celera at law or equity, Celera at
its option may
18
terminate this Agreement.
9.3 BANKRUPTCY:
9.3.1 A party may terminate the Customer License if, during the term of
the Customer License, the other party shall file in any court or agency pursuant
to any statute or regulation of any state or country, a petition in bankruptcy
or insolvency or for reorganization or for an arrangement or for the appointment
of a receiver or trustee of the party or of its assets, or if the other party
proposes a written agreement of composition or extension of its debts, or if the
other party shall be served with an involuntary petition in bankruptcy or
seeking reorganization, liquidation, dissolution, winding-up arrangement,
composition or readjustment of its debts or any other relief under any
bankruptcy, insolvency, reorganization or other similar act or law of any
jurisdiction now or hereafter in effect, or there shall have been issued a
warrant of attachment, execution, distraint or similar process against it, filed
in any insolvency proceeding, and such petition shall not be dismissed within
ninety (90) days after the filing thereof, or if the other party shall propose
or be a party to any dissolution or liquidation, or if the other party shall
make an assignment for the benefit of creditors.
9.3.2 All rights and licenses granted under or pursuant to this
Agreement are, and shall otherwise be deemed to be, for purposes of Section
365(n) of the U.S. Bankruptcy Code, licenses of rights to "intellectual
property" as defined under Section 101 of the U.S. Bankruptcy Code. The parties
agree that each party which is a licensee of such rights under this Agreement
shall retain and may fully exercise all of its rights and elections under the
U.S. Bankruptcy Code. The parties further agree that, in the event of the
commencement of a bankruptcy proceeding by or against either party under the
U.S. Bankruptcy Code, the party hereto which is not a party to such proceeding
shall be entitled to a complete duplicate of (or complete access to, as
appropriate) any such intellectual property and all embodiments of such
intellectual property, and same, if not already in their possession, shall be
promptly delivered to them (i) upon any such commencement of a bankruptcy
proceeding upon their written request therefor, unless the party subject to such
proceeding (or a trustee on behalf of the subject party) elects to continue to
perform all of their obligations under this Agreement or (ii) if not delivered
under (i) above, upon the rejection of this Agreement by or on behalf of the
party subject to such proceeding upon written request therefor by the
non-subject party.
9.4 CONSEQUENCES OF TERMINATION: Upon termination of this Agreement under
Section 5.5 or this Section 9.0, the following rights and obligations shall
apply:
9.4.1 Customer shall cease use [***] the Celera Database and
Analysis Products under its license under Section 2.0, provided however that
termination or expiration shall not affect (i) Customer's rights to
incorporate DNA Sequence Information contained in experimental assays created
prior to such termination for internal research under Section 2.2; or (ii) its
19
rights and obligations under Sections 2.1.1 and 2.1.2;
9.4.2 The following provisions, shall survive the date of termination
of the Customer License for a period of ten (10) years: 7.0 (Confidentiality and
Publication) excluding the terms and conditions of Schedule 1.0; 9.0
(Termination); 11.0 (Indemnity) and 12.2, 12.3, 12.5, 12.7, 12.10, 12.13, 12.14,
12.15, and 12.16 (General Provisions). Sections 12.1, 12.4, 12.6 and 12.9 shall
survive indefinitely.
9.4.3 The Subscriber Information System, all data provided by Celera
through its Celera Database and Analysis Product or other means, any other
information, equipment, and documentation provided in the Customer License shall
be returned to Celera at Customer's expense.
9.4.4 The parties shall retain their respective ownership rights set
forth in Section 8.1.1 and 8.1.2(a).
9.5 TERMINATION BY REASON OF CUSTOMER DEFAULT: In the event of termination of
this Agreement by reason of Default by Customer, Customer shall, within thirty
(30) days following written notice by Celera, pay to Celera a termination fee
equal to the License Fee for the Initial Term plus the total fees for any
extensions beyond the Initial Term under Sections 2.3 (b) and (c) less the total
of all License Fees for the Initial Term and any extensions received by Celera
as of the date of such notice;
9.6 TERMINATION FOR ANY REASON OTHER THAN CUSTOMER DEFAULT. In the event of a
termination of this Agreement for any reason other than a Customer Default,
then, in addition to any other rights or remedies Customer may have, all
obligations of Customer (other than those which have accrued prior to such
termination) to pay any further License Fees or termination fees or amounts
shall be terminated.
9.7 REMEDIES: The rights and remedies provided in this Section 9.0 shall not be
exclusive and shall be in addition to any other rights and remedies available at
law or in equity.
10.0 REPRESENTATIONS, WARRANTIES AND COVENANTS
10.1 REPRESENTATIONS AND WARRANTIES:
10.1.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each party represents and
warrants to the other party on the date upon which this Agreement is signed and
thereafter throughout the Term, that:
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(a) the execution and delivery of this Agreement and the
performance of the transactions contemplated hereby have been duly authorized by
all necessary corporate action of such party;
(b) the execution and delivery of this Agreement and the
performance by such party of any of its obligations under this Agreement do not
and will not (i) conflict with, or constitute a breach or violation of, any
other contractual obligation to which it is a party, any judgment of any court
or governmental body applicable to such party or its properties or, to such
party's knowledge, any statute, decree, order, rule or regulation of any court
or governmental agency or body applicable to such party or its properties, and
(ii) with respect to the execution and delivery of this Agreement, require any
consent or approval of any governmental authority or other person;
(c) it shall comply with all applicable laws, regulations and
guidelines in connection with that party's performance of its obligations and
rights pursuant to this Agreement;
(d) it is aware of no action, suit or inquiry or investigation
contemplated or instituted by any governmental agency which questions or
threatens the validity of this Agreement; and
(e) this Agreement is legally binding upon its execution and
enforceable in accordance with its terms.
10.1.2 CELERA REPRESENTATIONS AND WARRANTIES. Celera further represents and
warrants to Customer on the date upon which this Agreement is signed and
thereafter throughout the Term, that
(a) it is duly organized and validly existing and in good
standing under the laws of the jurisdiction in which it is organized and it has
the corporate power and authority and the legal right to enter into this
Agreement and to perform its obligations hereunder;
(b) on the Installation Date and thereafter throughout the
Term, it has all rights necessary to grant the rights and licenses contemplated
herein;
(c) to the best of its knowledge, its performance of the work
under this Agreement does not and shall not infringe the patent, trade secret or
other proprietary rights of any Third Party; it is not aware of any patent,
know-how, trade secret or other right of any Third Party which could reasonably
be expected to materially adversely affect its ability to carry out its
responsibilities under this Agreement or to affect the Customer's (i) ability to
access and use the Celera Database and Analysis Products, (ii) right to exploit
the Customer License or (iii) ability to develop or commercialize Customer
Technology; and
21
(d) with exception of an action filed in the United States
District Court in the District of Delaware, Case Number 98-591, it has received
no notice of infringement or misappropriation of any alleged rights asserted by
any Third Party in relation to any technology to be used in connection with this
Agreement.
10.1.3 CUSTOMER REPRESENTATIONS AND WARRANTIES. Customer further
represents and warrants to Celera on the date upon which this Agreement is
signed and thereafter throughout the Term, that it is duly organized and validly
existing and in good standing under the laws of the jurisdiction in which it is
organized and it has the corporate power and authority and the legal right to
enter into this Agreement and to perform its obligations hereunder.
10.2 COVENANTS:
10.2.1 Celera covenants to Customer that Celera shall use commercially
reasonable efforts to perform its obligations hereunder to accomplish the goals
and objectives to conduct the Customer License, using no less than commonly
accepted professional standards of workmanship.
10.2.2 Celera covenants to Customer that all Celera Database and
Analysis Products will go through the Celera Discovery System.
10.3 DISCLAIMERS:
(a) EXCEPT AS EXPRESSLY SET FORTH HEREIN, NOTHING IN THIS AGREEMENT
SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY CELERA THAT THE
USE OF ANY INFORMATION, DATA OR OTHER MATERIALS PROVIDED HEREUNDER WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OF ANY THIRD PARTY.
SUBJECT TO THE EXPRESS PROVISION HEREIN, THE INFORMATION, DATA OR OTHER
MATERIALS PROVIDED HEREUNDER ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND
WHATSOEVER, EXPRESS OR IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. SUBJECT TO SECTION 10.2.1,
CELERA MAKES NO WARRANTY THAT THE CELERA DATABASE AND ANALYSIS PRODUCTS AND THE
SUBSCRIBER INFORMATION SYSTEM DO NOT CONTAIN ERRORS.
(b) NEITHER PARTY WILL BE LIABLE FOR CONSEQUENTIAL OR INCIDENTAL
DAMAGES OF ANY NATURE ARISING FROM SUCH PARTY'S ACTIVITIES UNDER THIS AGREEMENT.
10.4 YEAR 2000 WARRANTY: Celera represents and warrants that on or before
July 1,
22
1999, the Analysis Tools will, under normal use and service, record, store,
process, and present calendar dates falling on or after January 1, 2000, in
the same manner, and with the same functionality, as the Analysis Tools
record, store, process, and present calendar dates on or before December 31,
1999. Celera warrants that the Analysis Tools will lose no functionality with
respect to the introduction of records containing dates falling on or after
January 1, 2000.
11.0 INDEMNITY
11.1 CUSTOMER INDEMNITY: Customer shall indemnify, defend and hold Celera
(including its officers, directors, employees and agents) harmless from and
against all personal or property losses, liabilities, damages and expenses
(including attorney's fees and costs) arising (i) out of the untruth or
inaccuracy in any material respect of any representation or warranty or out of
the breach or nonfulfillment of any material covenant or agreement of Customer
contained herein or contemplated hereby, or (ii) out of the gross negligence or
intentional misconduct of Customer in connection with the performance of
Customer of its obligations under this Agreement, (iii) out of Customer's use of
Customer Technology, or (iv) from products developed by Customer under the
license granted in Section 2.0. Customer acknowledges and agrees that with
respect to the nature of the Celera Database and Analysis Products and
Subscriber Information System, there may be no adequate remedy at law for any
breach of Customer's obligations under the confidentiality provisions of this
Agreement, that any such breach may result in irreparable harm to Celera, and
therefore, that upon any such breach, Celera shall be entitled to seek
appropriate equitable relief in addition to whatever remedies it might have at
law, including injunctive relief, specific performance or such other relief as
Celera may request to enjoin or otherwise restrain any act prohibited hereby, as
well as the recovery of all costs and expenses, including attorneys' fees
incurred.
11.2 CELERA INDEMNITY: Celera shall indemnify, defend and hold Customer
(including its officers, directors, employees and agents) harmless from and
against all personal or property losses, liabilities, damages and expenses
(including attorneys' fees and costs) arising (i) out of the untruth or
inaccuracy in any material respect of any representation or warranty or out of
the breach or nonfulfillment of any material covenant or agreement of Celera
contained herein or contemplated hereby or (ii) out of the gross negligence or
intentional misconduct of Celera in connection with the performance of its
obligations under this Agreement.
11.3 PROCEDURE: A party that intends to claim indemnification under this Section
11.0 (the "Indemnitee") shall promptly notify the other party (the "Indemnitor")
of any loss, liability, damage, expense, claim, demand, action or other
proceeding in respect of which the Indemnitee intends to claim such
indemnification, and the Indemnitor shall have the right to participate in, and,
to the extent the Indemnitor so desires, jointly with any other Indemnitor
similarly noticed, to assume the defense thereof with counsel selected by the
Indemnitor and reasonably satisfactory to the Indemnitee; provided, however,
that an
23
Indemnitee shall have the right to retain its own counsel, with the fees and
expenses to be paid by the Indemnitee. The indemnity agreement in this Section
11.0 shall not apply to amounts paid in settlement of any loss, liability,
damage, expense, claim, demand, action or other proceeding if such settlement
shall be effected without the consent of the Indemnitor, which consent shall not
be withheld unreasonably. The failure to deliver notice to the Indemnitor within
a reasonable time after the commencement of any such action, if prejudicial to
its ability to defend such action, shall relieve such Indemnitor of any
liability to the Indemnitee under this Section 11.0, but the omission so to
deliver notice to the Indemnitor will not relieve it of any liability that it
may have to the Indemnitee otherwise than under this Section 11.0. The
Indemnitor may not settle the action or otherwise consent to an adverse judgment
in such action or other proceeding that materially diminishes the rights or
interests of the Indemnitee without the express written consent of the
Indemnitee. The Indemnitee under this Section 11.0, and its employees and
agents, shall cooperate fully with the Indemnitor and its legal representatives
in the investigation of any action, claim or liability covered by this
indemnification.
11.4 INSURANCE: Each party will maintain, through self-insurance or commercially
placed insurance, adequate coverage for the indemnification obligations set
forth herein.
12.0 GENERAL PROVISIONS
12.1 NO PARTNERSHIP: Nothing in this Agreement is intended or shall be deemed to
constitute a partnership, agency, distributorship, employer-employee or joint
venture relationship between the parties. No party shall incur any debts or make
any commitments for the other, except to the extent, if at all, specifically
provided herein.
12.2 ASSIGNMENTS: Neither party shall assign any of its rights or obligations
hereunder except: (i) as incident to the merger, consolidation, reorganization
or acquisition of stock or assets or a similar transaction affecting all or
substantially all of the assets or voting control of the assigning party; (ii)
to any directly or indirectly wholly-owned subsidiary if the assigning party
remains liable and responsible for the performance and observance of all of the
subsidiary's duties and obligations hereunder; or (iii) with the consent of the
other party, such consent not to be unreasonably withheld. This Agreement shall
be binding upon the successors and permitted assigns of the parties, and the
name of a party appearing herein shall be deemed to include the names of such
party's successors and permitted assigns to the extent necessary to carry out
the intent of this Agreement. Any assignment not in accordance with the above
shall be void.
12.3 FURTHER ACTIONS: Each party agrees to execute, acknowledge and deliver such
further instruments, and to do all such other acts, as may be necessary or
appropriate in order to carry out the purposes and intent of this Agreement.
24
12.4 NO TRADEMARK RIGHTS: Except as otherwise provided herein or agreed to in
advance in writing, no right, express or implied, is granted by this Agreement
to use in any manner the names "Celera" or "Pharmacia & Upjohn", or any other
trade name or trademark of Celera or Customer or the names of any employees
thereof, for any purpose.
12.5 PUBLIC ANNOUNCEMENTS: Except as may otherwise be required by law or
regulation, neither party shall make any public announcement, directly or
indirectly, concerning the existence or terms of this Agreement or the subject
matter hereof without first submitting a copy of the proposed announcement to
the other party for review and obtaining the approval of the other party. The
other party shall have seven (7) business days or such other time as mutually
agreed upon to consent to the publication of such announcement, such consent not
to be unreasonably withheld. If either party shall be required by law or
regulation to make a public announcement concerning the existence or terms of
this Agreement, such party shall give reasonable prior advance notice of the
proposed text of such announcement to the other party for its prior review and
comment.
12.6 ENTIRE AGREEMENT OF THE PARTIES; AMENDMENTS: This Agreement, its Exhibits,
and Schedule executed on the same date herewith, as may be amended hereafter,
constitutes and contains the entire understanding and agreement of the parties
and cancels and supersedes any and all prior negotiations, correspondence,
representations, understandings and agreements, whether verbal or written,
between the parties respecting the subject matter hereof including the
DROSOPHILA Genome License. No waiver, modification or amendment of any provision
of this Agreement shall be valid or effective unless made in writing and signed
by a duly authorized representative of each of the parties. The failure or delay
of either party in enforcing any of its rights under this Agreement shall not be
deemed a continuing waiver or a modification by such party of such right.
12.7 SEVERABILITY: In the event any one or more of the provisions of this
Agreement should for any reason be held by any court or authority having
jurisdiction over this Agreement or either of the parties to be invalid, illegal
or unenforceable, such provision or provisions shall be validly reformed to as
nearly as possible approximate the intent of the parties and, if unreformable,
shall be divisible and deleted in such jurisdiction; elsewhere, this Agreement
shall not be affected so long as the parties are still able to realize the
principal benefits bargained for in this Agreement.
12.8 CAPTIONS: The captions to this Agreement are for convenience only, and are
to be of no force or effect in construing or interpreting any of the provisions
of this Agreement.
12.9. GOVERNING LAW: This Agreement shall be governed by and interpreted in
accordance with the substantive laws of the State of Delaware, without reference
to the conflicts of law principles thereof.
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12.10 NOTICES AND DELIVERIES: Any notice, requests, delivery, approval or
consent required or permitted to be given under this Agreement shall be in
writing and shall be deemed to have been sufficiently given if delivered in
person, transmitted by commercial overnight courier, or transmitted by telecopy
(receipt verified) to the party to whom it is directed at its address shown
below or such other address as such party shall have last given by notice to the
other party. All notices shall be effective upon receipt.
If to Celera, addressed to:
CELERA GENOMICS CORPORATION
00 Xxxx Xxxx Xxxxx
Xxxxxxxxx, XX 00000
Attn: Dr. Xxxxx Xxxxxxx, Executive Vice President, Chief Business Officer
cc: Legal Department
If to Customer addressed to:
PHARMACIA & UPJOHN COMPANY
00 Xxxxxxxxx Xxxxx
Xxxxxxxxxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxx Ph.D.
Group VP, Technology Acquisition and Skill Base Development
cc: Legal Department
Attn: Xxxxxx X. Xxxxxxx, Esquire
12.11 COUNTERPARTS: This Agreement may be executed in two or more counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
12.12 FORCE MAJEURE: If the performance of any part of this Agreement by either
party, or of any obligation under this Agreement, shall be prevented,
restricted, interfered with or delayed by reason of any cause beyond the
reasonable control of the party liable to perform, unless conclusive evidence to
the contrary shall be provided, the party so affected shall, upon giving written
notice to the other party, be excused from such performance to the extent of
such prevention, restriction, interference or delay, provided that the affected
party shall use its commercially reasonable efforts to avoid or remove such
causes of non-performance and shall continue performance with the utmost
dispatch whenever such causes are removed. When such circumstances arise, the
parties shall discuss what, if any, modification of the terms of this Agreement
may be required in order to arrive at an equitable solution.
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12.13 EXHIBITS AND SCHEDULE: All Exhibits and Schedule referenced in and
attached hereto are incorporated herein by reference. In case of any
discrepancies between terms incorporated from the Exhibits and Schedule and the
terms of the Sections herein, the terms of the Sections shall prevail. Any
amendment to an Exhibit and Schedule shall be approved in writing by a duly
authorized representative of each party; amendments to the Exhibit and Schedule
will not affect any of the rights granted hereunder. Unless a procedure for
amending an Exhibit and Schedule is specifically set forth in this Agreement,
the Exhibits and Schedule shall be amended promptly, as necessary, but in no
event less than on a once per calendar quarter basis by Customer and Celera.
12.14 DISPUTE RESOLUTION: Celera and Customer shall deal with each other in good
faith. The parties agree that in the event of a dispute between them arising
from, concerning or in any way relating to this Agreement, the parties shall
undertake good faith efforts to amicably resolve such dispute between
themselves. In the event the parties shall be unable to resolve any such
dispute, the matter shall be referred to Dr. Xxxxx Xxxxxxx, Executive Vice
President, Chief Business Officer, or another designated representative of
Celera, and to, Xxxxxxx X. Xxxxxx, Ph.D., or another designated representative,
of Customer for further review and resolution.
12.15 FURTHER ACTIONS: Each party agrees to execute, acknowledge and deliver
such further instruments and to perform all such other acts as may be necessary
or appropriate to carry out the purposes and intent of this Agreement.
12.16 AFFILIATE PERFORMANCE:
(a) To the extent that any Customer Affiliate shall have access to any
Celera Database and Analysis Products, and shall have the right to receive any
other rights or benefits under this Agreement, or otherwise shall be obligated
to perform any obligations under this Agreement, PUC or AB, as applicable, shall
cause such Customer Affiliate to perform in full, when due, all applicable
obligations under this Agreement to the same extent as if such Customer
Affiliate were a party to this Agreement; provided, however, that nothing in
this Section 12.16(b) shall expand the rights or benefits of PUC, AB or any
Customer Affiliates, or the obligations of Celera, beyond those otherwise
expressly set forth in this Agreement. PUC or AB, as applicable, shall guaranty
timely performance in full by such Customer Affiliate of all such obligations. A
breach by such Customer Affiliate of any such obligation shall constitute a
breach by PUC or AB, as applicable, of this Agreement and, if a material breach,
shall entitle Celera to exercise its rights under 9.0 (Termination) above, in
addition to any other rights and remedies to which Celera may be entitled.
(b) To the extent that any Celera Affiliate controlled by Celera shall
have the right to receive any other rights or benefits under this Agreement, or
otherwise shall be obligated to perform any obligations under this
27
Agreement, Celera shall cause such Celera Affiliate to perform in full, when
due, all applicable obligations under this Agreement to the same extent as if
such Celera Affiliate were a party to this Agreement; provided, however, that
nothing in this Section 12.16(b) shall expand the rights or benefits of PUC, AB
or any Customer Affiliates, or the obligations of Celera, beyond those otherwise
expressly set forth in this Agreement. Celera shall guaranty timely performance
in full by such Celera Affiliate of all such obligations. A breach by such
Celera Affiliate of any such obligation shall constitute a breach by Celera of
this Agreement and, if a material breach, shall entitle PUC or AB, as
applicable, to exercise its rights under Section 9.0 (Termination) above, in
addition to any other rights and remedies to which PUC or AB, as applicable, may
be entitled.
28
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their respective duly authorized officers on the date set forth below.
CELERA GENOMICS CORPORATION PHARMACIA & UPJOHN COMPANY
By: By:
------------------------------- ---------------------------------
Name: Name:
--------------------------------
Title: Title:
-------------------------------
Date: Date:
--------------------------------
PHARMACIA & UPJOHN AB
By:
----------------------------------
Name:
--------------------------------
Title:
--------------------------------
Date:
--------------------------------
29
