COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
AMONG
X. XXXXXXXX-XX XXXXX LTD,
XXXXXXXX-XX XXXXX INC.
AND
AURORA BIOSCIENCES CORPORATION
1
This Agreement is entered into as of *** ("Effective Date") by and among
X.Xxxxxxxx-Xx Xxxxx Ltd, a company organized and existing under the laws of
Switzerland and having offices at XX-0000, Xxxxx, Xxxxxxxxxxx ("Roche
Basel"), Xxxxxxxx-Xx Xxxxx Inc., a company organized and existing under the
laws of New Jersey ("Roche Nutley" collectively, Roche Basel and Roche Nutley
are referred to as "Roche"), and Aurora Biosciences Corporation, a Delaware
corporation having offices at 00000 Xxxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx
00000 ("Aurora").
RECITALS
WHEREAS, Aurora has expertise in the development of screening systems and
screening biologies/chemistries used therein; and
WHEREAS, Aurora has the scientific expertise and capacity to undertake the
alliance activities described below; and
WHEREAS, Roche desires screen development and services and has the capability to
undertake screening and development of drug products for the prevention and
treatment of human diseases and disorders.
NOW, THEREFORE, in consideration of the foregoing premises and of the covenants,
representations and agreements set forth below, the parties agree as follows:
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1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
"Accounting Period" means a calendar half commencing respectively on January
1 and July 1, each being the first day of an Accounting Period, and finishing
respectively on June 30 and December 31, each being the last day of an
Accounting Period.
"Adjusted Gross Sales" shall mean, with respect to Product(s), the gross
amount invoiced to non-affiliated Third Parties for arm's length sale of the
Product(s) by Roche, its Affiliates, its Licensors, its Licensees or Third
Parties otherwise obtaining rights to Products from Roche less deductions of
returns (including withdrawals and recalls), rebates (price reductions,
including Medicaid and similar types of rebates e.g. chargebacks), volume
(quantity) discounts, discounts granted at the time of invoicing actually
allowed, sales taxes and other taxes directly linked to and included in such
invoice.
"Affiliate" means any corporation, association or other entity, which
directly or indirectly controls, is controlled by or is under common control
with the party in question. As used herein, the term control shall mean
direct or indirect beneficial ownership of more than 50% of the voting or
income interest in such corporation or other business entity***.
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"Agreement" means this agreement, together with all appendices, exhibits and
schedules hereto, and as the same may be amended or supplemented from time to
time hereafter by a written agreement duly executed by authorized
representatives of each party hereto.
"Aurora Copyrights" means all copyrights throughout the world Controlled by
Aurora.
"Aurora Patent Rights" means the Patent Rights Controlled by Aurora described
in Exhibit D attached hereto.
"Aurora Reporter" means any of the reporters described in Exhibit B attached
hereto.
"Aurora Target" means ***.
"Aurora Technology" means Technology Controlled by Aurora necessary for
Aurora Reporters.
"Collaborative Screen" means ***.
"Collaboration Term" means the period commencing on the Effective Date and
ending on the ***Agreement under Section *** or (ii) the later of ***of the
Effective Date, (2) ***First ***, if ***, or (3) the ***Year, if ***.
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"Combination Product" means a Product containing a Development Compound and
one or more ingredients that are therapeutically active alone or in
combination.
"Compound" means ***.
"Confidential Information" means all Information, excluding Information that
the receiving party can prove by competent evidence:
i) is now, or hereafter becomes, through no act or failure to
act on the part of the receiving party, generally known or available;
ii) is known by the receiving party at the time of receiving
such information, as evidenced by its records;
iii) is hereafter furnished to the receiving party without
restriction as to disclosure or use by a Third Party lawfully entitled
to so furnish same;
iv) is independently developed by the employees, agents or
contractors of the receiving party without the aid, application or use
of the disclosing party's Information; or
v) is the subject of a written permission to disclose provided
by the disclosing party; or
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vi) is provided by the disclosing party to a Third Party without
restriction as to confidentiality.
"Control" or "Controlled" means, with respect to intellectual property,
possession by a party of the ability to grant a license or sublicense in
accordance with the terms of this Agreement, and without violating the terms
of any agreement by such party with any Third Party on the Effective Date.
"Copyrights" means rights that protect expression in a tangible form, such as
the U.S. Copyright Laws.
"CPI" Consumer Price Index for Urban Consumers for the United States, using
1999 as the base year.
"CSP" means a program for developing Collaborative Screens.
"CSP Steering Committee" means the committee that is to manage the screen
development and validation work required by the CSP.
"CSP Work Plan" means the plan generated by the CSP Steering Committee to
guide the actions of the parties in developing a Collaborative Screen.
"Derivative" means ***.
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"Development Compound" means ***.
"Effective Date" means the date defined in the first paragraph of page 1 of
this Agreement.
"Exclusivity" means ***.
"FDA" means the United States Food and Drug Administration, or any successor
agency having regulatory jurisdiction over the manufacture, distribution and
sale of drugs in the United States or its equivalent in any other
jurisdiction.
"***Year" means the ***.
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"Hit" means ***.
"IND" means the first to occur of the following: (i) the filing with the FDA
of an Investigational New Drug application; or (ii) any corresponding
application filed in any Major Country; or (iii) the first administration of
a Development Compound into a human subject.
"Information" means all information, data, and materials received by one
party from the other party pursuant to this Agreement, and all information,
data, and materials developed pursuant to this Agreement, including, without
limitation, Technology of each party.
"Initial Period" means ***.
"Internal Research" means ***.
"Invention" means any new and useful process, machine, manufacture, or
composition of matter, or improvement thereto, whether or not patentable.
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"Know-How" means information and data which is not generally known to the
public, including designs, concepts, algorithms, formulae, software,
techniques, practices, processes, methods, knowledge, skill, experience,
expertise and technical information.
"Licensee" means a Third Party to whom Roche or its Affiliates grants a
license, sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development Compounds.
"Licensor" means a Third Party that grants Roche or its Affiliates a license,
sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development Compounds, and
has or has obtained the right to sell such Product(s).
"Major Country" means the U.S., Japan, Canada, United Kingdom, France,
Germany, Italy, or Spain.
"Manufacturing Cost" means the cost to Aurora and its Affiliates of raw
materials, energy, labor (salary and benefits) and reasonable ***in
accordance with generally accepted accounting methods consistently applied.
If an item is manufactured in whole or in part by a Third Party, the costs to
be taken into account shall be the amount paid to such Third Party plus any
costs for raw materials, energy, labor (salary and benefits) and reasonable
manufacturing overhead charges that are incurred by Aurora in completing the
manufacture and delivery.
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"Materials" means any ***.
"NDA" means a new drug application or product license application, as
appropriate in a Major Country.
"Net Sales" means, with respect to Product(s), the amount of Adjusted Gross
Sales of the Product ***of such Adjusted Gross Sales for those sales related
deductions which are not accounted for on a product by product basis (e.g.
outward freights, postage charges, transportation insurance, packaging
materials for dispatch of goods, custom duties, bad debt, discounts granted
later than at the time of invoicing, cash discounts and other direct sales
expenses). Such amounts shall be determined from the books and records of
Roche maintained in accordance with generally accepted accounting principles
("GAAP") consistently applied.
"Patent Rights" means all U.S. and foreign (including regional authorities
such as the European Patent Office) regular or provisional patent
applications, including any continuation, continuation-in-part, or division
thereof or any substitute application therefor or equivalent thereof, and any
patent issuing thereon, including any reissue, reexamination or extension
thereof and any confirmation patent or registration patent or patent of
additions based on any such patent, and which a party hereto owns or
Controls, individually or jointly, any title thereto or rights thereunder.
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"Phase 1" means the first phase of human clinical trials of a drug or
biological as required by FDA designed to determine the metabolism and
pharmacologic actions of the drug in humans, the side effects associated with
increasing doses, and, if possible, to gain early evidence on effectiveness.
"Phase 2" means the second phase of human clinical trials of a drug or
biological as required by FDA designed to evaluated the effectiveness of the
drug for a particular indication or indications in patients with the disease
or condition under study and to determine the common short-term side effects
and risks associated with the drug.
"Phase 3" means the third phase of human clinical trials of a drug or
biological as required by FDA designed to gather information about the
effectiveness and safety that is needed to evaluate the overall benefit-risk
relationship of the drug and to provide an adequate basis for physician
labeling.
"Product" ***.
"Pre-market Royalty One" ***.
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"Pre-market Royalty Two" means ***.
"Pre-market Royalty Three" ***.
"Pre-market Royalty Four" ***.
"Reuters System" means the average of the last bid and last ask rate of
foreign currency exchange for a given day as quoted by Reuters Limited or an
equivalent to be mutually agreed to in writing by the parties.
"Roche Copyrights" means all copyrights throughout the world Controlled by
Roche.
"Roche Patent Rights" means Patent Rights Controlled by Roche.
"Roche Target" means ***.
"Roche Technology" means Technology Controlled by Roche.
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"Royalty Term" means, in the case of any Product and as to any country, the
period of time commencing on the first commercial sale for use or consumption
of such Product in such country ***: (i) the date that there ***or (ii)
***after the date of such first commercial sale for use or consumption of
such Product in such country.
"Screen Number" means a sequential number given to each Collaborative Screen.
"Second Extended Year" means ***immediately ***Year.
"***.
"***.
"Technology" means Materials and Know-How.
"Term" means the period beginning on the Effective Date and terminating in
accordance with this Agreement, as set forth in Section 9.
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"Third Party" means any entity other than Aurora or its Affilates, or Roche
or its Affiliates.
"Validation" means CSP Steering Committee approval of a Collaborative Screen
as meeting the Validation Criteria.
"Validation Criteria" means the parameters, standards, and results
established by the CSP Steering Committee for each Collaboration Screen,
which must be met in order for that Collaboration Screen to be validated.
2. COLLABORATIVE SCREEN PROGRAM
2.1. Collaborative Screen Program.
The parties will collaborate in the development and validation of
Collaborative Screens as part of a CSP during the Collaborative Term. For
the Initial Period, Roche and Aurora will collaborate with the intention to
develop ***as listed in Exhibit A***, the *** under the terms described in
further detail in Section 2.6. The Parties will mutually agree in writing to
the nature *** therefore during the ***as outlined in Section 2.1.2 and
Section 2.2.3, respectively.
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2.1.1. CSP Steering Committees.
No later than ***after the Effective Date, the parties shall establish a CSP
Steering Committee. The mission of the CSP Steering Committee is to manage
the screen development and validation work required by the CSP including the
selection of Aurora Targets and Roche Targets as provided for under Section
2.1.2. The CSP Steering Committee shall decide on the principle aspects of
the CSP, including (a) planning and monitoring of the collaboration, and (b)
assigning tasks and responsibilities under the CSP Workplans. The CSP
Steering Committee shall consist of ***representatives designated by Roche
and ***representatives designated by Aurora. Each representative to the CSP
Steering Committee will have one vote resulting in each party having exactly
***.
The CSP Steering Committee will meet no later than ***after the Effective
Date and at *** per year at Aurora's facilities in San Diego, or using
mutually agreed upon meeting formats including tele- and video-conferencing.
On an alternating basis, one party shall promptly prepare and deliver to the
members of the CSP Steering Committee minutes in respect thereof, for review
and approval of both parties. Decisions in the CSP Steering Committee will
be made by ***, at a meeting where all ***representatives are present. Any
disagreement that cannot be resolved by ***vote of the CSP Steering Committee
shall be referred to the appropriate officers of Aurora and Roche for
resolution. If the officers of Aurora and Roche cannot reach resolution on
planning and monitoring of the collaboration, and assigning tasks and
responsibilities under the CSP Workplans, ***. For all ***outlined in
Section ***.
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2.1.2. ***.
Attached as Exhibit A is a list of ***by Roche for collaborative screen
development during the Initial Period. ***potential ***shall be presented by
Roche thereafter on a time frame established by the CSP Steering Committee;
provided, however, Roche shall provide Aurora with such additional lists, if
applicable, *** before the first anniversary of the Effective Date and, if
applicable, ***before the second anniversary of the Effective Date.
The ***in Exhibit A and ***thereafter ***to be amenable for ***. At the time
Roche provides the ***to Aurora, Roche shall also provide a written proposal
describing each ***. No more than ***in Exhibit A or otherwise provided for
in this Section 2.1.2 for the ***unless Roche agrees in writing that any such
***. Aurora may reasonably request further information regarding ***. Within
***of first receiving such information, Aurora shall notify Roche in writing
that it ***for ***, or ***because Aurora reasonably believes that the ***
based on the ***with Aurora's Third Party obligations or if Aurora believes
that the development ***information and that provided by Roche, ***. If
Aurora ***Xxxxx, Xxxxxx will provide ***work on the ***, to the extent that
Aurora does not have to reveal confidential information of a Third Party,
waive attorney client privilege or contravene an obligation to a Third Party.
If Aurora informs Roche *** obligation of Aurora, Roche ***and conditions,
if any, that would satisfy ***and if ***negotiations results in a written
agreement ***obligations then Aurora ***. The parties agree that ***may not
have to provide ***. The CSP Steering Committee will evaluate and ***within
***of Aurora's notification to Roche using a procedure decided in writing by
the CSP Steering Committee.
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2.1.3. ***.
2.1.3.1 CSP Work Plan. The CSP Steering Committee will coordinate the
preparation of a CSP Work Plan, which shall set forth the respective
responsibilities of the parties for the development of each Collaborative
Screen, and which must be approved by the CSP Steering Committee. Each such
CSP Work Plan will also contain a description of the specific deliverables
and documentation to be produced, the Aurora Technology to be used, the party
responsible ***shall be accomplished by the parties, and ***for each
Collaborative Screen and whether a screen is a ***.
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2.1.3.2 ***. The CSP Steering Committee will coordinate screen development
(including the preparation and management of a CSP Work Plan, and the design
and approval of ***) for each Collaborative Screen within a time frame set by
the CSP Steering Committee that can satisfy the objectives of the CSP
Steering Committee and the partners. Promptly following the approval of each
CSP Work Plan, the parties ***under the CSP Work Plan for the development of
the applicable Collaborative Screen. All work under a CSP Work Plan shall be
performed in accordance with the provisions of this Agreement, and each party
will use its reasonable efforts to complete its obligations under the CSP
Work Plan as expeditiously as practicable.
2.1.3.3 Post-Collaboration Term Screen Development. After the
Collaboration Term, Roche and Aurora agree to negotiate in good faith for
access to Aurora Technology and Patent Rights.
2.1.4. Deployment of Collaborative Screens by Roche.
When Aurora or Roche completes the development of a Collaborative Screen, a
written report describing the Collaborative Screen and the data demonstrating
compliance with the CSP Work Plan including the Validation Criteria shall be
provided by Aurora and Roche to the CSP Steering Committee. The CSP Steering
Committee will approve the report and accept each Collaborative Screen
according to the Validation Criteria ("Validation") or decide on the
additional work, if any, necessary for Validation. ***. Within ***of such
Validation for a Collaborative Screen developed by Aurora, Aurora will ship
the Collaborative Screen to Roche or a designated Roche Affiliate by means
mutually agreed in writing by the parties and will advise the Roche personnel
in the use of the Collaborative Screen on its in-house screening operation
using the personnel provided for in Section 2.2.2. After the Validation of a
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Collaborative Screen, Roch may request to Aurora in writing, and the parties
may agree, that such Collaborative Screen be used to sereen ***.
2.2 Screen Development Resource, Training and Support, Technology
Access and Payments. During the Collaborative Term Aurora will provide access
to Aurora Technology, Aurora Reporters, Aurora Patent Rights, and Screen
Development at Aurora as follows:
2.2.1 Screen Development Resource.
For each year, upon payment by Roche of the funding provided for in Section
2.2.3, Aurora will use reasonable effort and a screen development resource of
***Aurora personnel each of which shall spend at least ***per year to develop
the Collaborative Screens ***as provided for in Section 2.1.3.
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2.2.2 ***.
2.2.3. Payments for Technology Access and Support of the Screen
Development Resource.
As ***for the screen development resources at Aurora under Sections 2.2.1 and
2.2.2, and access to Aurora Technology to develop Collaborative Screens at
Roche, Roche shall *** of which ***shall be payable ***of the Effective Date
***shall be payable ***after the Effective Date, ***. If Roche ***under
Section ***, then Roche shall ***to Aurora for each ***the sum of ***adjusted
to reflect adjustments to the CPI using 1999 as the base year, paid in two
equal installments, at the ***of each ***, for the resources equivalent to
those described in Sections 2.2.1 and 2.2.2.; ***Aurora for each ***the ***
adjusted to reflect adjustments to the CPI using 1999 as the base year,
payable at the beginning date of each ***, for ***personnel each of which
shall spend at least ***per year as described in section 2.2.1 and 2.2.2 and
an additional amount to be negotiated in good faith by Aurora and Roche for
each Collaborative Screen ***, transfer and ***. Such ***upon Validation of
any Collaborative Screen as provided for in Section 2.1.4 ***. The parties
may agree to increase in the quantity of additional resources and payments
required, subject to Aurora's resource availability. For any ***in the
resource under Section 2.2.1 and Section 2.2.2 there will be a proportionate
increase in payment, adjusted to also reflect adjustments to CPI using 1999
as the base year.
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2.3 Pre-market Royalties and Royalties.
In addition to such payments as are made by Roche to Aurora pursuant to
Section 2.2.3 hereof, the following payments shall be made to Aurora for each
Collaborative Screen:
2.3.1 For each Development Compound that reaches the following Pre-market
Royalties, Roche will promptly notify Aurora of the same: Pre-market Royalty
One, Pre-market Royalty Two, Pre-market Royalty Three, and Pre-market Royalty
Four***, Roche will pay Aurora the amount in Exhibit C corresponding to such
Pre-market Royalty and the particular Screen Number; ***Development Compound
was identified based on the use of ***the amount that Roche will pay for any
given Pre-market Royalty for such Development Compound will ***Exhibit C
corresponding to such Pre-market Royalty; provided, further, that such
Development Compound was not identified based on the use of a Collaborative
Screen that was not ***. For example, when a Development Compound for Screen
Number ***reaches Pre-market Royalty One, ***; provided, however, if Screen
Number ***was a ***, as provided for above, Roche will pay ***. It is
understood that for any given ***. It is further understood that for any
given Development Compound taken into clinical development, ***. For
example, ***.
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2.3.2 Royalties. With respect to each Product, Roche shall pay a royalty on
***of such Product to a Third Party during the Royalty Term for such Product.
The royalty applicable for each Product, is obtained by multiplying the
worldwide ***by the royalty rate from Exhibit C corresponding to the highest
Screen Number issued during the Collaboration Term; provided, however, if a
Product incorporates a Development Compound identified based on the use of a
***the Royalty applicable for such Product will be obtained using ***of the
amount in Exhibit C corresponding to such Screen Number. For example, if
during Collaboration Term the highest Screen Number issued was ***then the
royalty rate would be ***provided, however, if Screen Number ***was a ***, as
provided for above, ***the royalty rate ***. The parties agree that for both
Pre-Market Royalties and royalties on Products such payments will be owed to
Aurora even if Roche or its Affiliates licenses, assigns or otherwise
transfers rights to such Hits, Derivatives, Development Compounds or Products
to Third Parties.
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2.3.3. Combination Product. In case of Combination Product, the parties
shall meet approximately ***prior to commercial launch of such Combination
Product to negotiate in good faith and agree to an appropriate adjustment to
***to reflect the relative significance of the Development Compound and the
other pharmaceutically active agent(s) contained in the Combination Product.
If, after good faith negotiations (not to exceed ***), the Parties can not
agree to an appropriate adjustment, ***shall be equal to ***of the
Combination Product multiplied by a fraction, the numerator of which is the
reasonable fair market value of the Development Compound and the denominator
of which is the reasonable fair market value of all pharmaceutically active
agents contained in the Combination Product. In the event the fair market
value of the Development Compound or the other pharmaceutically active agents
contained in the Combination Product cannot be determined, then the
manufacturing cost of the respective Development Compound and active agents
shall be used in such calculation.
2.3.4. Loss of Exclusivity and Third Party Patents. If a Product being sold
in a given country fails to achieve or maintain Exclusivity in that country,
then the royalties payable by Roche to Aurora for sales of Product in that
country shall be reduced by ***until such a time that Exclusivity is restored
and in addition, if Roche makes payments to a Third Party for Patent Rights
that cover the Product in order to sell Product, then Roche may reduce the
amount payable to Aurora by the amount of any such payments***; provided,
however such reductions shall not total more ***under Section 2.3.2
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2.4 Supply of Aurora Reporters.
If Roche has made payments in accordance with Section 2.2.3, then at Roche's
written request, Aurora will use reasonable efforts to supply within ***after
receipt of such request, Materials pertaining to the Aurora Reporters as
Roche may require solely for the development and use also after the
Collaborative Term of Collaborative Screens by Roche or its Affiliates for
Roche Targets and the use of Collaborative Screens developed by ***as
provided for in Section 2.1.2. Roche will be charged for all supplies so
delivered on the terms listed in Exhibit Ewhich are based on Aurora's
Manufacturing Cost plus ***. Roche will pay for all Materials so ordered
within ***after delivery to Roche ***.
2.5. Development of Products.
Roche will be responsible for all pre-clinical and clinical development,
including all regulatory filings, of Hits, Derivatives and Development
Compounds arising out of this Agreement at no expense to Aurora. Roche shall
use reasonable efforts, consistent with commercial business practices, to
conduct the activities associated with the development of any Development
Compound, all regulatory activities relating to the manufacture, use or sale
of any Development Compound or Product, and the commercialization and
marketing of any Product in any country. All regulatory filings made or filed
by Roche for any Development Compound or Product shall be owned solely by
Roche. At Roche's request and expense, Aurora shall cooperate to the extent
reasonably necessary to permit Roche to perform the foregoing activities.
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2.6 ***.
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3. INTELLECTUAL PROPERTY RIGHTS
3.1 Grant of Rights from Aurora to Roche.
3.1.1. License to Collaborative Screens developed by Aurora.
Aurora, upon payment under Sections 2.2.3, grants to Roche ***.
3.1.2. ***. Aurora, upon payment under Section 2.2.3 and CSP Steering
Committee approval of a CSP Work Plan for a Collaborative Screen to be developed
by Roche, grants to Roche and its Affiliates, ***.
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3.1.3 Except as expressly licensed in Section 3.1.1 and 3.1.2 Roche
covenants not to use the Aurora Patent Rights, Aurora Reporters, and Aurora
Technology.
3.2. ***.
3.3. Ownership of Intellectual Property and Property
3.3.1. Transfer of Rights. Except as otherwise expressly provided in this
Agreement, nothing in this Agreement is intended to convey or transfer
ownership by one party to the other of any rights, title or interest in any
Confidential Information, Technology, copyrights or Patent Rights owned or
Controlled by a party. Except as expressly provided for in this Agreement,
nothing in this Agreement shall be construed as a license or sublicense by
one party to the other of any rights in any Technology, copyrights, or Patent
Rights owned or Controlled by a party. All rights not expressly licensed or
assigned by Aurora are retained by Aurora. All rights not expressly licensed
or assigned by Roche are retained by Roche.
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3.3.2. Roche Inventions. Roche shall own all Inventions and other
Technology made solely by its employees and agents, and all patent
applications and patents claiming such Inventions and other Technology. If
Roche has a license pursuant to Sections 3.1.1 or 3.1.2, Aurora shall own
such Inventions and other Technology that consists of improvements relating
to an Aurora Reporter and Roche will assign the same to Aurora.
3.3.3 Aurora Inventions. Aurora shall own all Inventions and other
Technology made solely by its employees and agents, and all patent
applications and patents claiming such Inventions and other Technology,
except those Inventions and other Technology relating to Roche's Compounds
(including Hits, Derivatives, Development Compounds, and Products) and uses
thereof conceived by Aurora during the Collaboration Term in the performance
of this Agreement.
3.3.4. Joint Inventions. During the period from the Effective Date to the
end of the Collaboration Term, all Inventions and other Technology conceived
jointly by employees or agents of Roche and employees or agents of Aurora
shall be owned by Aurora and Roche; provided, however, that if a) Roche has a
license pursuant to Sections 3.1.1 or 3.1.2, Aurora will solely own such
Inventions and other Technology that consists of improvements relating to an
Aurora Reporter and Roche will assign the same to Aurora and b) Roche will
solely own all Inventions and other Technology relating to Roche's Compounds
(including Hits, Derivatives, Development Compounds, and Products) and
therapeutic uses thereof conceived by Aurora during the Collaboration Term in
the performance of this Agreement and Aurora ***.
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3.3.5 Roche shall own all Inventions and other Technology relating to
Roche's Compounds (including Hits, Derivatives, Development Compounds, and
Products), including uses thereof conceived by Aurora during the
Collaboration Term in the performance of this Agreement. Any such Inventions
or Technology shall be assigned by Aurora to Roche.
3.3.6 Other Inventions. Any Inventions not included in Section 3.3.4 (a)
or 3.3.4 (b) above shall be owned by their inventors.
3.3.7. Inventorship and Assignment. Inventorship of patentable inventions
shall be determined by the applicable patent law. Roche and Aurora agree to
execute all documentation necessary to perfect all assignments of Technology
and Patent Rights.
4. PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES AND RECORDS.
4.1. Payment and Reporting.
The royalties due under Section 2 and as follows in this Section 4, shall be
calculated semi-annually as of June 30and December 31, each being the end
date of an Accounting Period, and shall be paid within ***after the end of
each Accounting Period in which such royalties are earned during the Royalty
Term for each Product. With each such semi-annual payment, Roche shall
furnish Aurora a royalty statement setting forth on a country-by-country
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basis the relevant sales information, including at least the following
information:
(a) Total Adjusted Gross Sales for each Product subject to
royalty sold by Roche and its Affiliates, and
(b) Total royalty payable to Aurora.
4.2. Currency of Payment.
All payments to be made under this Agreement, including the royalties payable
to Aurora by Roche, shall be paid in U.S. dollars by wire transfer or other
mutually acceptable means to a bank account designated by Aurora. Whenever
for the purpose of calculating royalties conversion from any foreign currency
shall be required, such conversion shall be made as follows: (i) for Roche
and its Affiliates when calculating the Adjusted Gross Sales, the amount of
such sales in foreign currencies shall be converted into Swiss Francs as
computed using Roche's Swiss Francs Sales Statistics for the countries
concerned, using the average monthly rate of exchange at the time for such
currencies as retrieved from the Reuters System; and (ii) for a Licensee or
Licensor when calculating the Adjusted Gross Sales, the amount of such sales
shall be reported by the Licensee or Licensor to Roche within ***from the end
of an Accounting Period, after having converted each applicable monthly sales
in foreign currency into the Swiss Franc using the average rate of exchange
published in the Wall Street Journal or some other source agreed upon in
writing by Roche and such Licensee or Licensor and approved by Aurora, which
approval shall not be unreasonably witheld, for any particular country for
each respective month of the applicable Accounting Period. For both 4.2 (I)
and 4.2 (ii), when calculating the royalties on ***, such conversion shall be
at the average rate of the Swiss Franc to the United States currency as
retrieved from the Reuters System for the applicable Accounting Period.
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4.3. Taxes Withheld.
All amounts owed under this Agreement shall be paid net of all applicable
taces, fees, and other charges excluding only taxes on a party's income. Any
income or other tax that Roche or any of its Affiliates, Licensees or
Licensors is required by a government agency to withhold and pay on behalf of
Aurora with respect to the royalties payable under this Agreement shall be
deducted from and offset against said royalties prior to remittance to
Aurora; provided, however, that in regard to any tax so deducted, Roche shall
give or cause to be given to Aurora such assistance as may reasonably be
necessary to enable Aurora to claim exemption therefrom or credit therefor,
and in each case shall furnish Aurora proper evidence of the taxes paid on
Aurora's behalf.
4.4. Records.
4.4.1. ***and Royalty Calculations. Roche shall keep, and shall require
its Affiliates to keep, full, true and accurate books of account containing
all particulars that may be necessary for the purpose of calculating all
royalties payable to Aurora. Such books of accounts shall be kept at their
principal place of business.
At Aurora's expense, Aurora or its authorized independent public accountant
has the right to engage Roche's independent public accountant to perform, on
behalf of Aurora or its independent public accountant, an audit, conducted in
accordance with generally accepted auditing standards in the United States of
America, of such books and records of Roche that are deemed necessary by
Roche's independent public accountants to report on Net Sales of the Product
for the period or periods requested by Aurora.
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Such audit shall not be performed more frequently than once per calendar year
nor more frequently than once with respect to records covering any specific
period of time, upon at least ***prior written notice, and shall be
conducted during regular business hours in such a manner as to not
unnecessarily interfere with Roche's normal business activities.
All information, data, documents and abstracts herein referred to shall be
used only for the purpose of verifying royalty statements or compliance with
this Agreement, shall be treated as Roche Confidential Information subject to
the obligations of this Agreement and need neither be retained more than
***after completion of an audit hereof, if an audit has been requested; nor
more than ***from the end of the calendar year to which each shall pertain;
nor more ***the date of termination of this Agreement.
The failure of Aurora to request verification of any royalty calculation
during the period when records have to be retained shall be considered
acceptance of the accuracy of such reporting.
In the event that such audit shall indicate that in any calendar year the
royalties which should have been paid by Roche are at least ***greater than
those which were actually paid by Roche, then Roche shall promptly pay the
underpaid amount to Aurora and shall also reimburse Aurora for the reasonable
cost of such audit.
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In the event that such audit shall indicate that in any calendar year the
royalties which were actually paid by Roche are greater than those which
should have been paid, then Aurora shall promptly reimburse Roche with such
overpaid amount.
4.4.2. Tracking Records for Collaborative Screens.
4.4.2.1. The compounds, screens and targets tested using a Collaborative
Screen will be recorded and stored by Roche using its customary means and in
a computer searchable database on a storage device. The information stored
will include the target, screen type, the concentration, structure, Roche
number or alternative originator index number and activity of the compound
tested, and date of testing. Such records and records of any Hits,
Derivativers, Development Compound, or any compound subject to additional
screening, in vivo testing, computer modeling, medicinal chamistry or an IND
application or foreign equivalent to date will able be stored by Roche in a
computer searchable file or data base that may be separate from other Roche
data not related to Collaborative Screens, collectively referred to as the
tracking file (the "Tracking File"). Upon written request by Aurora, Roche
will create an annual written report of the Tracking File and provide such
report to Aurora within ***of such written request; provided, however, such
report will only refer to such chemicals by the associated Roche number or
alternative originator index number. Aurora may also request and Roche will
create a similar annual report which shall refer to chemicals by structure
and Roche number or alternative originator index number; provided however,
such report is to be accesible only by an independent consultant appointed by
Aurora and agreed to by Roche, and subject to a confidential relationship
with Roche, to inspect the Tracking File for the sole purpose of
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determining the attainment of a pre-market royalty or royalty under Section
2.3.1 and 2.3.2, respectively. The Tracking File shall be securely retained
for no less than ***from the last use of a Collaborative Screen. In
additional to the annual report when a Hit or Derivative is selected to
become a Development Compound, Roche will disclose the existence of this
compound to Aurora under an obligation of non-disclosure to Third Parties
within ***.
4.4.2.2. Upon reasonable request by Aurora and at a minimum once per year,
Roche will provide Aurora with a summary of the status of Development Compounds
and Products that may be used to calculate royalties or Pre-market Royalties.
4.5. Trade Secret Pre-market Royalties and Royalty.
The parties acknowledge that the principal value contributed by Aurora under
this Agreement is the enhanced probability of identifying leads for Products,
such as human pharmaceutical products (or other products having commercial
value), and the potential to generate multiple leads, either or both of which
the parties reasonably believe will lessen the time required to bring
pharmaceutical products to market and increase the efficiency of drug
discovery and development processes and technologies. Additionally, the
parties acknowledge that Aurora may not own or Control patent applications or
patents covering the manufacture, sale, use or importation of a particular
Development Compound or Product. Roche acknowledges and agrees that the
value it receives hereunder is in the access and use of a Collaborative
Screen or Aurora Technology. Accordingly, Roche agrees to pay those
Pre-market Royalties, royalties and other amounts during the Royalty Term as
provided for in this Agreement.
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5. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF CLAIMS
5.1. Intellectual Property Enforcement.
Roche and Aurora shall have the right, but not the obligation, to bring
proceedings against any Third Party for the inappropriate use, including
patent infringement, of Technology or Patent Rights solely owned or
Controlled by it, and at its own risk and expense. If one party brings such
action such party shall be entitled to control such action, hire and retain
counsel, make decisions, settle on any terms, and retain any and all awards
or damages obtained in any such proceeding. At the request and expense of
either party, the other party shall give the requesting party all reasonable
assistance required to file and conduct any such proceeding.
5.2. Defense of Infringement Claims for Roche Hits, Derivatives,
Development Compounds and Products.
Aurora will cooperate with Roche, at Roche's expense, in the defense of any
suit, action or proceeding against Roche and Roche's Affiliates alleging the
infringement of the intellectual property rights of a Third Party by reason
of the manufacture, use or sale of a Hit, Derivative, Compound, Development
Compound, Product or a derivative of any Roche chemical screened by a
Collaborative Screen. Each party shall give the other party prompt written
notice of the commencement of any such suit, action, proceeding or claim of
infringement. Aurora shall give Roche full and sole authority, information
and assistance necessary to defend, hire counsel, make decisions or settle on
any terms any such suit, action or proceeding and Aurora shall execute all
documents, provide pertinent records, and take all other actions, including
requiring persons
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within its control to give testimony, which may be reasonably required in
connection with the defense or settlement of such litigation.
5.3. Defense of Infringement Claims for Aurora Technology and Aurora
Patent Rights.
Roche will cooperate with Aurora, at Aurora's expense, in the defense of any
suit, action or proceeding against Aurora alleging the infringement of the
intellectual property rights of a Third Party by reason of Aurora's or
Roche's use of any Aurora Patent Rights and Aurora Technology licensed to
Roche under this Agreement. The parties shall notify each other promptly in
writing of the commencement of any such suit, action, proceeding or claim of
infringement. Roche shall give to Aurora full and sole authority, information
and assistance necessary to defend, hire counsel, make decisions or settle on
any terms any such suit, action or proceeding and Roche shall execute all
documents, provide pertinent records, and take all other actions, including
requiring persons within its control to give testimony, which may be
reasonably required in connection with the defense or settlement of such
litigation.
6. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY
6.1. Confidentiality.
6.1.1. Subject to the terms and conditions of this Agreement, Roche and
Aurora each agree that, during the term of this Agreement and for
***thereafter, it will not disclose to any Third Party, and will cause its
Affiliates to not disclose to any Third Party, all Confidential Information
that is disclosed to it or to any of its Affiliates by the other party in
connection with the performance of this Agreement. Neither Roche nor Aurora
nor any of their respective Affiliates shall use the other party's
Confidential Information except as expressly permitted in this Agreement.
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6.1.2. Roche and Aurora each agree that any disclosure of the other's
Confidential Information to any officer, employee, contractor, consultant,
sublicensee or agent of the other party or of any of its Affiliates shall be
made only if and to the extent necessary to carry out its responsibilities
under this Agreement and to exercise the rights granted to it hereunder,
shall be limited to the extent consistent with such responsibilities and
rights, and shall be provided only to such persons or entities who are bound
to maintain same in confidence in a like manner as the party receiving same
hereunder is so required. Each party shall use reasonable efforts to take
such action, and to cause its Affiliates to take such action, to preserve the
confidentiality of each other's Confidential Information, which shall be the
same efforts as it would customarily take to preserve the confidentiality of
its own Confidential Information.
Either party may be required to disclose some Confidential
Information in a patent application filed related to Compounds or uses
thereof or other Technology. The disclosing party shall limit this type of
information to the minimum necessary and the disclosing party shall inform
the non-disclosing party of exactly what Confidential Information will be
disclosed in the patent application at least two weeks before such
application is filed.
Each party, upon the other's request, will return all the
Confidential Information received from the other party pursuant to this
Agreement, including all copies and extracts of documents, within ***of the
request of the other party following any termination of this Agreement,
except for one (1) copy which may be kept for the purpose of ascertaining and
complying with continuing confidentiality obligations under this Agreement.
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A party may also disclose Confidential Information of the other where
required to do so by law or legal process, provided that, in such event, the
party required to so disclose shall give maximum practical advance written
notice of same to the other party and will cooperate with the other party's
efforts to seek, at the request and expense of the other party, all
confidential treatment and protection for such disclosure as is permitted by
applicable law.
The parties agree that the material financial terms of this Agreement will be
considered Confidential Information of both parties. Notwithstanding the
foregoing, either party may disclose such terms in legal proceedings or as
are required to be disclosed in its financial statements, by law, or under
strictures of confidentiality to bona fide potential sublicensees. Either
party shall have the further right to disclose the material financial terms
of this Agreement under strictures of confidentiality to any potential
acquirer, merger partner, bank, venture capital firm, or other financial
institution to obtain financing.
The parties agree that information developed pursuant to the development and
use of a Collaborative Screen will be considered Confidential Information of
both parties and shall be subject to the confidentiality requirements of this
Section 6.1. Notwithstanding the foregoing, either party may disclose and
use information developed pursuant to the development and use of a
Collaborative Screen that is not specific to a target selected by Roche for
screen development and screening under strictures of confidentiality to bona
fide sublicensees; provided, however such party must receive written approval
from the other party for such disclosure and such approval will not be
unreasonably withheld.
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6.2. Publication of Results.
Subject to Section 6.1 hereof, results and data obtained by either party in
the course of a Collaborative Screen Program through use of an Aurora
Reporter may be submitted for publication by Roche in accordance with Roche's
customary practices, provided, however, that Roche shall credit Aurora in
such publication as the developer and/or provider of the technology that
produced, in part, the published results or data. Roche shall send a copy of
the proposed publication and shall allow Aurora ***from the date of receipt
to determine whether such publication contains subject matter for which
patent protection should be sought prior to disclosure, or otherwise contains
Aurora Confidential Information.
6.3. Publicity.
Except as required by law and as provided in this Section 6, neither party
may make any public announcement or otherwise disclose the terms of this
Agreement without the prior written consent of the other party, which consent
shall not be unreasonably withheld.
7. PATENT PROSECUTION
The control and expense of the filing, prosecution (including an opposition
or interference) and maintenance of patents and patent applications claiming
Inventions will be the sole responsibility of the party filing the patent
application and the party not filing the patent application will cooperate in
such filing, prosecution and maintenance of the validity of such patent
position. Roche and Aurora will cooperate in the filing, prosecution and
maintenance of jointly owned
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patents and patent applications claiming inventions conceived or made
pursuant to activities under Section 2.
8. WARRANTIES AND INDEMNIFICATION
8.1. Mutual Representations and Warranties.
The parties make the following representations and warranties to each other:
8.1.1. Corporate Power. Each party hereby represents and warrants that such
party (a) is duly organized and validly existing under the laws of the state of
its incorporation and has full corporate power and authority to enter into this
Agreement and to carry out the provisions hereof; (b) has the requisite power
and authority and the legal right to own and operate its property and assets, to
lease the property and assets it operates under lease, and to carry on its
business as it is now being conducted; and (c) is in compliance with all
requirements of applicable law, except to the extent that any noncompliance
would not have a material adverse effect on the properties, business, financial
or other condition of it and would not materially adversely affect its ability
to perform its obligations under the Agreement.
8.1.2. Due Authorization. Each party hereby represents and warrants that
such party (a) has the requisite power and authority and the legal right to
enter into the Agreement and to perform its obligations hereunder; and (b) has
taken all necessary action on its part to authorize the execution and delivery
of the Agreement and to authorize the performance of its obligations hereunder
and the grant of rights extended by it hereunder.
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8.1.3. Binding Agreement. Each party hereby represents and warrants to
the other that: (a) this Agreement has been duly executed and delivered on
its behalf and is a legal and valid obligation binding upon it and is
enforceable in accordance with its terms; (b) the execution, delivery and
performance of this Agreement by such party does not conflict with any
agreement, instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or regulation of any
court, governmental body or administrative or other agency having authority
over it; and (c) all necessary consents, approvals and authorizations of all
governmental authorities and other persons required to be obtained by it in
connection with the Agreement have been obtained.
8.2. Warranties and Aurora Technology.
Aurora represents and warrants to Roche as of the Effective Date the
following:
8.2.1. ***.
8.2.2. EXCEPT AS SET FORTH IN SECTION 8.2.1 ABOVE, AURORA (INCLUDING ITS
OFFICERS, EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIMS ANY REPRESENTATIONS AND
WARRANTIES, WHETHER EXPRESS OR IMPLIED, RELATING TO AURORA PATENT RIGHTS,
AURORA COPYRIGHTS AND AURORA TECHNOLOGY. AURORA FURTHER DISCLAIMS I) ANY
EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OF AURORA TECHNOLOGY AND AURORA PATENT RIGHTS, II) ANY EXPRESS OR
IMPLIED WARRANTY THAT THE PRACTICE OF AURORA COPYRIGHTS, AURORA
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TECHNOLOGY OR AURORA PATENT RIGHTS WILL NOT INFRINGE A PATENT, COPYRIGHT,
TRADEMARK OR OTHER RIGHT OF A THIRD PARTY, AND III) ANY EXPRESS OR IMPLIED
WARRANTY REGARDING THE PATENTABILITY OF ANY AURORA TECHNOLOGY, INCLUDING
AURORA TECHNOLOGY CLAIMED IN PATENT APPLICATIONS AS PART OF AURORA PATENT
RIGHTS.
8.3. ***.
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8.4. Warranties and Roche Technology.
Roche warrants to Aurora as of the Effective Date the following:
8.4.1. ***.
8.4.2. EXCEPT AS SET FORTH IN SECTION 8.4.1 ABOVE, ROCHE (INCLUDING ITS
OFFICERS, EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIM ANY REPRESENTATIONS AND
WARRANTIES, WHETHER EXPRESS OR IMPLIED, RELATING TO ROCHE PATENT RIGHTS,
ROCHE COPYRIGHTS AND ROCHE TECHNOLOGY. ROCHE FURTHER DISCLAIMS: I) ANY
EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OF ROCHE TECHNOLOGY OR ROCHE PATENT RIGHTS; II) PRACTICE OF ROCHE
COPYRIGHTS, ROCHE TECHNOLOGY OR ROCHE PATENT RIGHTS WILL NOT INFRINGE A
PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHT OF A THIRD PARTY; AND III) THE
PATENTABILITY OF ANY ROCHE TECHNOLOGY, INCLUDING ROCHE TECHNOLOGY CLAIMED IN
PATENT APPLICATIONS AS PART OF ROCHE PATENT RIGHTS.
8.5. ***.
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9. TERM, PARTIAL PERFORMANCE AND TERMINATION
9.1. Term.
The term of this Agreement will begin on the Effective Date and shall
continue for the later of (i) ***or (ii) until there is no longer a royalty
obligation owed or payable by Roche to Aurora unless terminated earlier in
accordance with the provisions of Sections 9.2-9.4 hereof; .
9.2. Termination By Mutual Agreement.
The parties may at any time terminate this Agreement, in whole or in part, by
written agreement executed by both Aurora and Roche. In such event, the
document effecting such termination shall specify the continuation or
termination of any license rights granted hereunder, as well as any other
terms agreed to by both parties.
9.3 Termination by Roche for No Cause.
Roche may terminate this Agreement at any time and for any reason. If Roche
terminates this Agreement other than by expiration of the term under Section
9.1, mutual agreement under Section 9.2, or for cause under Section 9.4, then
all licenses granted will terminate, and Collaborative Screens will be
destroyed or returned, at Aurora's sole discretion to Aurora within ***, and
Aurora shall be entitled to retain any moneys paid and retain the rights to
receive Pre-market Royalties and royalties accrued by Aurora under this
Agreement. In addition, all Materials will be destroyed or returned, at the
providing party's sole discretion, to the providing party within ***of such
termination.
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9.4. Termination for Cause.
Either party shall have the right to terminate this Agreement at any time for
a material breach of this Agreement by the other party, provided that the
non-breaching party shall have given the breaching party ***written notice of
the breach and intention to terminate this Agreement in the absence of a cure
within ***of receipt of such notice by the beaching party. Upon termination
of this Agreement for cause, all licenses and sublicenses granted in
accordance with this Agreement shall continue and rights shall also continue
to accrue to Aurora and Roche; unless decided otherwise by arbitration
pursuant to Section 10.13. Such arbitration will also determine how all
Materials and Collaborative Screens will be destroyed, returned or otherwise
treated. The non-breaching party, upon termination of this Agreement may
seek actual or general damages and remedies available to it at law or in
equity. NO PUNITIVE OR CONSEQUENTIAL DAMAGES MAY BE SOUGHT BY EITHER PARTY.
9.5 Effect of Expiration or Termination.
The obligations and rights of the parties under Sections 2.3, 2.5, 3.3, 4, 6,
9 and 10, thereof, as well as any provisions, which, by their intent or
meaning are intended to so survive, shall survive termination or expiration
of this Agreement. Except as otherwise expressly provided in this Agreement,
the rights and obligations of the parties under Section 2 hereof shall
terminate and be of no further force or effect whatsoever upon any
termination of this Agreement. Upon expiration or other termination of the
Agreement all licenses granted will terminate and upon written request all
Materials and Collaborative Screens will be destroyed or returned, at the
sole discretion of the requesting party, to the party providing screens
within ***except as provided under Section 9.2, 9.3 and 9.4.
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10. MISCELLANEOUS
10.1. Assignment.
Either party may assign its rights or obligations under this Agreement in
connection with the sale of all or substantially all of its assets, or may
otherwise assign its rights or obligations under this Agreement with the
prior written consent of the other party. This Agreement shall survive any
merger or consolidation of either party with or into another party and no
consent for any such merger, consolidation or similar reorganization shall be
required hereunder. In the event of such merger, consolidation or similar
reorganization or in the event of a sale of all assets, no intellectual
property rights of the acquiring or acquired company shall be included in the
technology licensed hereunder. Roche may assign this Agreement to an
Affiliate upon written notice to Aurora.
10.2. Binding Effect.
This Agreement shall be binding upon and inure to the benefit of the
successors and permitted assigns of the parties. Any assignment not in
accordance with this Agreement shall be void.
10.3. Force Majeure.
Neither party shall lose any rights hereunder or be liable to the other party
for damages or losses on account of failure of performance by the defaulting
party if the failure is occasioned by war, fire, explosion, flood,
earthquake, strike, lockout, embargo, act of God, or any other similar cause
beyond the control of the defaulting party, provided that the party claiming
force majeure has exerted all reasonable efforts to avoid or remedy such
force majeure and thereafter takes all
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reasonable steps to mitigate any such delay in performance hereunder and any
damages that may be incurred by the other party thereby.
10.4. Notices.
Any notices or communications provided for in this Agreement to be made by
either of the parties to the other shall be in writing, in English, and shall
be made by prepaid air mail or overnight carrier with return receipt
addressed to the other at its address set forth below. Any such notice or
communication may also be given by hand, or facsimile to the appropriate
designation. Notices shall be sent:
If to Roche, to: X.Xxxxxxx-Xx Xxxxx Ltd
Xxxxxxxxxxxxxxxxx 000
XX - 0000 Xxxxx
Xxxxxxxxxxx
Attn. Corporate Law
and, Xxxxxxxx-Xx Xxxxx Inc.
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attn: Corporate Secretary
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If to Aurora, to: Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX 00000
Attention: Xxxx Xxxxxxx
Senior Vice President
Corporate Development
provided that if such notice or communication relates to an amendment to this
Agreement or to any notice pursuant to Section 9 hereof, a copy shall also be
sent to:
Attention: Xxxx X. Xxxxxxxx, Ph.D., X.X.
Vice President
Intellectual Property & General Counsel
Either party may by like notice specify or change an address to which notices
and communications shall thereafter be sent. Notices sent by mail, facsimile
or cable shall be effective upon receipt and notices given by hand shall be
effective when delivered.
10.5. Waiver.
Except as specifically provided for herein, the waiver from time to time by
either of the parties of any of their rights or their failure to exercise any
remedy shall not operate or be construed as a
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continuing waiver of same or any of the other of such party's rights or
remedies provided in this Agreement.
10.6. Severability.
If any term, covenant or condition of this Agreement or the application
thereof to any party or circumstance shall, to any extent, be held to be
invalid or unenforceable, then the remainder of this Agreement, or the
application of such term, covenant or condition to parties or circumstances
other than those as to which it is held invalid or unenforceable, shall not
be affected thereby and each term, covenant or condition of this Agreement
shall be valid and be enforced to the fullest extent permitted by law; and
the parties hereto covenant and agree to renegotiate any such term, covenant
or application thereof in good faith in order to provide a reasonably
acceptable alternative to the term, covenant or condition of this Agreement
or the application thereof that is invalid or unenforceable, it being the
intent of the parties that the basic purposes of this Agreement are to be
effectuated.
10.7. Independent Contractors.
It is expressly agreed that Aurora and Roche shall be independent contractors
and that the relationship between the two parties shall not constitute a
partnership or agency of any kind. Neither Aurora nor Roche shall have the
authority to make any statements, representations or commitments of any kind,
or to take any action, which shall be binding on the other, without the prior
written authorization of the other party to do so.
10.8. Counterparts.
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This Agreement may be executed in two (2) or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute one
and the same instrument.
10.9. Entire Agreement.
This Agreement between the parties of even date herewith sets forth all of
the covenants, promises, agreements, warranties, representations, conditions
and understandings between the parties hereto, and supersedes and terminates
all prior agreements and understanding between the parties, with respect to
the subject matter hereof. There are no covenants, promises, agreements,
warranties, representations conditions or understandings, either oral or
written, between the parties other than as set forth herein and therein. No
subsequent alteration, amendment, change or addition to this Agreement shall
be binding upon the parties hereto unless reduced to writing and signed by
the respective authorized officers of the parties. This Agreement shall not
be strictly construed against either party hereto. Any conflict between the
terms set forth in the text of this Agreement and the terms of any Exhibit
hereto shall be resolved in favor of the text of this Agreement.
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10.10. No Third Party Beneficiaries.
No third party, including any employee of any party to this Agreement, shall
have or acquire any rights by reason of this Agreement. Nothing contained in
this Agreement shall be deemed to constitute the parties partners with each
other or any third party.
10.12. Dispute Resolution.
The parties recognize that disputes as to certain matters may from time to
time arise during the term of this Agreement which relate to either party's
rights and/or obligations hereunder. It is the objective of the parties to
establish procedures to facilitate the resolution of disputes arising under
this Agreement in an expedient manner by mutual cooperation and without
resort to arbitration. The parties agree that prior to any arbitration
concerning this Agreement, a member of Roche's senior management and Aurora's
president will meet in person or by video-conferencing in a good faith effort
to resolve any disputes concerning this Agreement. Within ***of a formal
request by either party to the other, any party may, by written notice to the
other, have such dispute referred to their respective officers designated or
their successors, for attempted resolution by good faith negotiations, such
good faith negotiations to begin within ***after such notice is received.
Any dispute arising out of or relating to this Agreement which is not
resolved between the parties or the designated officers of the parties
pursuant to this Section 10.12 shall be resolved by final and binding
arbitration conducted in San Diego, California (unless the parties mutually
agree to another location) under the then current Licensing Agreement
Arbitration Rules of the American Arbitration Association ("AAA"). The
arbitration shall be conducted by three (3) arbitrators who are knowledgeable
in the subject matter which is at issue in the dispute. One arbitrator is
selected by Roche and one arbitrator is selected Aurora
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and the third arbitrator is appointed by the AAA. In conducting the
arbitration, the arbitrators shall determine what discovery will be
permitted, consistent with the goal of limiting the cost and time which the
parties must expend for discovery (and provided that the arbitrators shall
permit such discovery they deem necessary to permit an equitable resolution
of the dispute), ensure that the total time of the arbitration from filing to
a final decision or executed settlement agreement is ***, and be able to
decree any and all relief of an equitable nature, including but not limited
to such relief as a temporary restraining order, a preliminary injunction, a
permanent injunction, specific performance or repletion of property. The
arbitrators shall also be able to award actual or general damages but shall
not award any other form of damage (e.g., consequential, punitive or
exemplary damages). The parties shall share equally the arbitrator's fees
and expenses pending the resolutin of the arbitration unless the arbitrator,
pursuant to its right but not its obligations, requires the non-prevailing
party to bear all or any portion of the costs of the prevailing party. The
decision of the arbitrator shall be final and may be sued on or enforced by
the party in whose favor it runs in any court of competent jurisdiction at
the option of such party. Notwithstanding anything to the contrary in this
Section 10.13, either party may seek immediate injunctive or other interim
relief from any court of competent jurisdiction with respect to any breach of
Sections 3, or 6 hereof, or otherwise to enforce and protect the patent
rights, copyrights, trademarks, or other intellectual property rights owned
or Controlled by such party. In no event shall a demand for arbitration be
made after the date when the institution of a legal or equitable proceeding
based on such claim, dispute or other matter in question would be barred by
the applicable statute.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives.
X.Xxxxxxxx-Xx Xxxxx Ltd. Aurora Biosciences Corporation
By: By:___________________________
Name: Name: Xxxx X. Xxxxxxx
Title: Title: Senior Vice President
Corporate Development
Date: Date:
Xxxxxxxx-Xx Xxxxx Inc.
By:
Name:
Title:
Date:
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LIST OF EXHIBITS
***
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EXHIBIT A
***
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Exhibit B
***
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EXHIBIT C
***
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EXHIBIT D
***
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EXHIBIT E
***
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