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EXHIBIT 10.37
RESEARCH COLLABORATION AGREEMENT
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THIS RESEARCH COLLABORATION AGREEMENT (this "Agreement"), effective as
of December 22, 1998 (the "Effective Date"), is made by and between ABGENIX,
INC., a Delaware corporation ("ABX"), having a place of business at 0000
Xxxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000, and Centocor, Inc., a Pennsylvania
corporation ("Centocor"), having a place of business at 000 Xxxxx Xxxxxx
Xxxxxxx, Xxxxxxx, XX 00000, with respect to the following facts:
RECITALS
A. ABX and Centocor are interested in negotiating a research license and
option agreement (the "Research License and Option Agreement") regarding the
generation of human monoclonal antibodies to [*] each, an "Antigen" and both,
collectively, the "Antigens") where the antibodies to either or both of the
Antigens are generated through the use of certain ABX technology.
B. ABX has certain transgenic mice, XenoMouse(TM) Mice (the "XenoMouse
Animals"), that are capable of producing human antibodies when immunized with
antigen.
C. In connection with and during such negotiations, the parties desire
to conduct a research program pursuant to which (a) Centocor will immunize, with
the Antigens, the XenoMouse(TM) Animals provided by ABX to Centocor in order to
generate antibodies therefrom, (b) Centocor will conduct certain analyses and
characterizations of such antibodies, and (c) the parties will review and
analyze the data and results of such research program.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants set forth below, the parties agree as follows:
A. Definitions. For purposes of this Agreement, the terms defined in
this Section 1 shall have the respective meanings set forth below:
"ABX Materials and Information" shall mean, collectively, (a) all
XenoMouse Animals, including all XenoMouse Animals immunized with either or both
of the Antigens, and all other materials specified in Exhibit A; [*] provided,
however, the ABX Materials and
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Information shall not include Research Program Materials and Information.
"Antibody" shall mean a composition comprising (a) a whole
antibody, or any fragment thereof, derived in whole or part from the XenoMouse
Animals, or (b) a whole antibody, or any fragment thereof, which is derived from
a whole antibody, or any fragment thereof, which itself is derived in whole or
part from the XenoMouse Animals (or nucleotide sequences encoding, or amino acid
sequences of, a whole antibody, or any fragment thereof, derived in whole or
part from the XenoMouse Animals).
"Antibody Cells" shall mean all cells that contain, express, or
secrete Antibodies or Genetic Materials.
"Confidential Information" shall mean, with respect to a party,
all information of any kind whatsoever (including without limitation,
compilations, data, formulae, models, patent disclosures, procedures, processes,
projections, protocols, results of experimentation and testing, specifications,
strategies and techniques), and all tangible and intangible embodiments thereof
of any kind whatsoever (including without limitation, apparatus, biological or
chemical materials, animals, cells, compositions, documents, drawings,
machinery, patent applications, records, reports), which is owned or controlled
by such party, is disclosed by such party to the other party pursuant to this
Agreement, and (if disclosed in writing or other tangible medium) is marked or
identified as confidential at the time of disclosure to the receiving party or
(if otherwise disclosed) is identified as confidential at the time of disclosure
to the receiving party and described as such in writing within thirty (30) days
after such disclosure. Notwithstanding the foregoing, Confidential Information
of a party shall not include information which the receiving party can establish
by written documentation (a) to have been publicly known prior to disclosure of
such information by the disclosing party to the receiving party, (b) to have
become publicly known, without fault on the part of the receiving party,
subsequent to disclosure of such information by the disclosing party to the
receiving party, (c) to have been received by the receiving party at any time
from a source, other than the disclosing party, rightfully having possession of
and the right to disclose such information free of confidentiality obligations,
(d) to have been otherwise known by the receiving party free of confidentiality
obligations prior to disclosure of such information by the disclosing party to
the receiving party, or (e) to have been independently developed by employees or
agents of the receiving party without access to or use of such information
disclosed by the disclosing party to the receiving party. The parties
acknowledge that the foregoing exceptions shall be narrowly construed and that
the obligations imposed upon each party under Section 6 below shall be relieved
solely with respect to such Confidential Information of the disclosing party
which falls within the above exceptions and not with respect to related
portions, other combinations, or characteristics of the Confidential Information
of the disclosing party including, without limitation, advantages, operability,
specific purposes, uses and the like.
"Genetic Material" shall mean a nucleotide sequence, including
DNA, RNA and complementary and reverse complementary nucleotide sequences
thereto, whether coding or noncoding and whether intact or a fragment.
"Materials and Information" shall mean, collectively, the ABX
Materials and Information and the Research Program Materials and Information.
"Research Program" shall mean the interim research program
conducted by
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Centocor described in Exhibit B for the generation, creation, and identification
of Antibodies that bind to either or both of the Antigens.
"Research Program Materials and Information" shall mean [*];
which results from the performance of the Research Program by Centocor strictly
in accordance with the terms and conditions set forth in this Agreement.
"XT" shall mean Xenotech L.P., a California limited partnership.
2. Research Program.
a. ABX shall transfer to Centocor those certain ABX Materials and
Information listed in Exhibit A on the terms and subject to the conditions of
this Agreement. Centocor shall use the ABX Materials and Information for the
sole purpose of performing the Research Program at its address listed above
under commercially and scientifically reasonable containment conditions, and not
for any commercial, business or other use or purpose without the prior express
written consent of ABX. Centocor shall not transfer or provide access to the ABX
Materials and Information to any other person or entity (other than ABX) or to
any location other than its address set forth above, without the prior express
written consent of ABX. Centocor shall limit access to the ABX Materials and
Information to those of its employees working on its premises, to the extent
such access is reasonably necessary in connection with its activities as
expressly authorized by this Agreement.
b. Centocor shall conduct the Research Program under the direct
supervision of [*], who shall be the primary contact for Centocor regarding the
Research Program. Centocor shall provide ABX with reasonable access to such
persons (in person, by telephone or otherwise as reasonably requested), on
reasonable notice and during normal business hours, to discuss the status of the
Research Program and the results thereof.
c. In consideration for ABX's resources and efforts expended in
connection with the transfer to Centocor of the ABX Materials and Information
listed on Exhibit A, upon execution of this Agreement, Centocor shall pay to ABX
[*]
d. In addition, on or before [*], Centocor will pay to ABX a [*]
of such fee will be creditable against the first nomination fee described below
in Exhibit C.
3. Further Restrictions on Use and Control over the XenoMouse Animals.
ABX is willing to transfer the XenoMouse Animals to Centocor solely on the terms
and conditions
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contained in this Agreement. ABX owns certain technology and intellectual
property rights, or has been licensed to certain technology and intellectual
property rights under specific terms and conditions set forth in certain
licensing agreements with third parties, including without limitation XT, which
technology and intellectual property rights are included or contained within, or
cover, the XenoMouse Animals and/or the Materials. The transfer of the XenoMouse
Animals to Centocor, and the use of the XenoMouse Animals and the Materials and
Information by Centocor, is made expressly subject to the following terms and
conditions:
a. All XenoMouse Animals transferred to Centocor shall be the
sole property of ABX, and the transfer of physical possession to Centocor,
and/or possession or use by Centocor, of the XenoMouse Animals shall not be, nor
be construed as, a sale, lease, offer to sell or lease, or other transfer of
title to or any interest in the XenoMouse Animals;
b. All XenoMouse Animals and all Materials and Information shall
remain in the control of Centocor, and Centocor shall not (and shall not attempt
or purport to) transfer the XenoMouse Animals or the Materials and Information
to any third party (other than ABX), without the prior express written consent
of ABX;
c. Centocor shall not directly or indirectly use or attempt to
use the XenoMouse Animals or the Materials and Information to reproduce,
generate, create or produce, through breeding, reverse-engineering, genetic
manipulation or otherwise, the XenoMouse Animals or other transgenic mice or
other transgenic animals;
d. Centocor shall not use the XenoMouse Animals for any purpose
other than immunizing the XenoMouse Animals with either or both of the Antigens
as specified in Exhibit B for the generation, creation and identification of
Antibodies and shall not subsequently use such immunized XenoMouse Animals for
any purpose other than conducting the Research Program;
e. Centocor shall not (and shall not attempt or purport to)
assign, sell, have sold, lease, offer to sell or lease, distribute, license,
sublicense or otherwise transfer title to or an interest in, or clinically
develop, commercialize or exploit the XenoMouse Animals or the Materials and
Information, without the prior express written consent of ABX;
f. Centocor shall not directly or indirectly use the XenoMouse
Animals to make or use antibodies to any antigen other than either or both of
the Antigens (including without limitation to [*]);
g. XT shall be a third-party beneficiary of all obligations and
commitments by Centocor set forth in Sections 3(a) through (f) above.
4. Reports. Centocor shall keep ABX informed of all uses made of the
Materials and Information. Within ten (10) days after the expiration or earlier
termination of this Agreement and within ten (10) days of the effective date of
any amendment providing for an extension of this Agreement (if any), Centocor
shall prepare and provide ABX with a written report of the research performed to
such date under, and the results of, the Research Program. Centocor shall
provide ABX with reasonable access to all source data and information resulting
from the Research Program.
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5. Publication. Unless otherwise agreed to in writing by ABX and
Centocor or otherwise provided in Section 6 below, neither party shall have the
right to disclose to third parties, or to otherwise publish, the Research
Program Materials and Information, the reports described in Section 4 above (or
any data or information contained therein), or the source data and information
described in Section 4 above.
6. Confidentiality.
a. During the term of this Agreement and for a period of five (5)
years following the expiration or earlier termination hereof, each party shall
maintain in confidence the Confidential Information of the other party, and
shall not disclose, use or grant the use of the Confidential Information of the
other party except on a need-to-know basis to such party's directors, officers
and employees, and to such party's consultants working on such party's premises,
to the extent such disclosure is reasonably necessary in connection with such
party's activities as expressly authorized by this Agreement. To the extent that
disclosure to any person is authorized by this Agreement, prior to disclosure, a
party shall obtain written agreement of such person to hold in confidence and
not disclose, use or grant the use of the Confidential Information of the other
party except as expressly permitted under this Agreement. Each party shall
notify the other party promptly upon discovery of any unauthorized use or
disclosure of the other party's Confidential Information. Upon the expiration or
earlier termination of this Agreement, each party shall return to the other
party all tangible items regarding the Confidential Information of the other
party and all copies thereof; provided, however, that each party shall have the
right to retain one (1) copy for its legal files for the sole purpose of
determining its obligations hereunder.
b. Notwithstanding anything to the contrary in this Agreement,
for purposes of this Agreement, (i) the ABX Materials and Information and all
oral or written communications regarding the ABX Materials and Information are,
and shall remain, Confidential Information of [*], and (ii) the Research Program
Materials and Information and all oral or written communications regarding the
Research Program Materials and Information are, and shall remain, Confidential
Information of [*].
c. Neither party shall disclose any terms or conditions of this
Agreement to any third party without the prior consent of the other party;
provided, however, that a party may disclose the terms or conditions of this
Agreement, (i) on a need-to-know basis to its legal and financial advisors to
the extent such disclosure is reasonably necessary in connection with such
party's activities as expressly permitted by this Agreement, (ii) to a third
party in connection with (A) an equity investment in such party by a third
party, (B) a merger, consolidation or similar transaction entered into by such
party, or (C) the sale of all or substantially all of the assets of such party,
and (iii) as may, in the reasonable opinion of such party's counsel, be required
by applicable law, regulation or court order, including without limitation, a
disclosure in connection with such party's filing of a registration statement or
other filing with the United States Securities and Exchange Commission (in which
event such party will first consult with the other party with respect to such
disclosure). Notwithstanding the foregoing, prior to execution of this
Agreement, ABX and Centocor shall agree upon the substance of information that
can be used to describe the terms of this transaction, and each party may
disclose such information, as modified by written agreement of ABX and Centocor
from time to time, without the consent of the other.
d. The confidentiality obligations under this Section 6 shall not
apply to the
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extent that a party is required to disclose Confidential Information of the
other party by applicable law, regulation or order of a governmental agency or a
court of competent jurisdiction; provided, however, that such party shall
provide written notice thereof to the other party and sufficient opportunity to
object to any such disclosure or to request confidential treatment thereof.
7. Ownership and Control of Materials and Information.
a. All right, title and interest to the ABX Materials and
Information and all patent rights and other intellectual property rights therein
shall belong [*]. Centocor shall not (and shall not attempt or purport to)
assign, sell, have sold, lease, offer to sell or lease, distribute, license,
sublicense or otherwise transfer title to or an interest in, or clinically
develop, commercialize or exploit any ABX Materials and Information or any
products derived therefrom, unless ABX otherwise expressly agrees in writing.
Promptly upon the earlier of (i) completion of the Research Program or (ii) the
expiration or termination of this Agreement, Centocor shall destroy all
remaining ABX Materials and Information and any products derived therefrom,
unless the Parties otherwise expressly mutually agree in writing prior to such
completion, expiration or termination. Centocor shall not (and shall not attempt
or purport to) file or prosecute in any country any patent application which
claims or uses or purports to claim or use the ABX Materials and Information,
any products derived therefrom or any use thereof, without the prior express
written consent of ABX.
b. Unless the parties otherwise expressly agree in writing, all
right, title and interest to all the Research Program Materials and Information
and all patent rights and other intellectual property rights therein shall
belong [*]. Notwithstanding the foregoing, Centocor shall use the Research
Program Materials and Information, at its address at 000 Xxxxx Xxxxxx Xxxxxxx,
Xxxxxxx, XX 00000, for the sole purpose of performing the Research Program at
its the address listed above under commercially and scientifically reasonable
containment conditions, and not for any commercial, business or other use or
purpose without the prior express written consent of ABX. Centocor shall not
transfer or provide access to the Research Program Materials and Information to
any third party (other than ABX) or to any location other than its address set
forth in this Section 7(b), without the prior express written consent of ABX.
Centocor shall not (and shall not attempt or purport to) assign, sell, have
sold, lease, offer to sell or lease, distribute, license, sublicense or
otherwise transfer title to or an interest in, or clinically develop,
commercialize or exploit any Research Program Materials and Information (or any
products derived therefrom), unless ABX otherwise expressly agrees in writing.
Promptly upon the earlier of (i) completion of the Research Program or (ii) the
expiration or earlier termination of the term of this Agreement, Centocor shall
destroy all remaining Research Program Materials and Information and any
products derived therefrom, unless ABX otherwise expressly agrees in writing
prior to such completion, expiration or termination. Centocor shall not (and
shall not attempt or purport to) file or prosecute in any country any patent
application which claims or uses or purports to claim or use the Research
Program Materials and Information, any products derived therefrom or any use
thereof, unless and until the parties duly execute and deliver the Research
Program License and Option Agreement in accordance with Section 12 below,
without the prior express written consent of ABX.
8. No Warranty. The Materials and Information are intended for research
purposes only solely to facilitate the Research Program. THE ABX MATERIALS ARE
BEING SUPPLIED "AS IS" AND WITHOUT ANY REPRESENTATIONS OR WARRANTIES. ABX MAKES
NO
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REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED, OF ANY TYPE WHATSOEVER
REGARDING THE MATERIALS AND INFORMATION. ABX EXPRESSLY DISCLAIMS ANY WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT.
9. Care in Use of the Materials and Information. The parties acknowledge
that the Materials and Information are experimental in nature and may have
unknown characteristics. Each party agrees to use prudence and reasonable care
in the use, handling, storage, transportation, disposition, and containment of
the Materials and Information. Centocor shall not administer the Materials and
Information to humans, or file or submit any regulatory application or other
submission to obtain approval therefor, under any circumstances, without the
prior express written consent of ABX.
10. Indemnification. [ * ]
11. Compliance with Laws. Centocor shall use the Materials and
Information in compliance with all applicable laws, guidelines and regulations
which are applicable to the Materials and Information or the use thereof,
including without limitation any biosafety procedures and all safety precautions
accompanying the Materials and Information.
12. Negotiation of Research License and Option Agreement.
a. During the term of this Agreement, the parties shall negotiate
in good faith, and attempt to reach mutual agreement upon and enter into, the
Research License and Option Agreement. The Research License and Option
Agreement, if entered into between the parties, shall include the terms set
forth on Exhibit C and may include such other terms and conditions as the
parties mutually agree.
b. The obligations of ABX relating to the negotiations described
above or the Research License and Option Agreement are limited to the extent
that ABX has, and hereafter will have, the right to grant licenses and other
rights to the XenoMouse Animals, the Research Program Materials and Information
and/or technology related thereto.
c. The Research License and Option Agreement shall not be binding
on the parties unless and until set forth in a separate written agreement which
is mutually acceptable to, and duly authorized, executed and delivered by, both
parties.
13. No Conflict. Each party represents that this Agreement does not, and
during the term of this Agreement will not, conflict with any other right or
obligation provided under any other agreement or obligation that such party has
with any third party.
14. Term of Agreement. This Agreement shall remain in effect through
September 30,
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1999, or such other date as the parties mutually agree upon in writing. Either
party may terminate this Agreement for any reason immediately upon thirty (30)
days prior written notice to the other party, which notice shall be effective on
receipt. Upon the expiration or termination of this Agreement for any reason,
Sections 2(a) (other than the first sentence thereof), 3, 5, 6, 7, 10, and 17
shall survive.
14. Assignment. Centocor shall not assign its rights or obligations
under this Agreement, in whole or in part, by operation of law or otherwise,
without the prior express written consent of the ABX; provided, however, that
Centocor may, without such consent, assign this Agreement and its rights and
obligations hereunder in connection with the transfer or sale of all or
substantially all of its business, or in the event of its merger or
consolidation or change in control or similar transaction. Any permitted
assignee shall assume all obligations of its assignor under this Agreement. Any
purported assignment in violation of this Section 15 shall be void.
15. Waivers and Amendments. No change, modification, extension,
termination or waiver of this Agreement, or any of the provisions herein
contained, shall be valid unless made in writing and signed by duly authorized
representatives of the parties.
17. Injunctive Relief. The parties acknowledge that (a) the breach by
one party of the non-disclosure or non-use provisions (including, without
limitations, restrictions on filing patent applications) of this Agreement
relating to Materials and Information or Confidential Information would cause
irreparable harm to the other party; (b) monetary damages alone would be
insufficient to compensate the other party for such a breach; and (c) the other
party shall be entitled to obtain injunctive or other equitable relief to
specifically enforce such provisions of this Agreement relating to Materials and
Information and Confidential Information in addition to all other relief to
which the other party may be entitled without being required to post any bond or
other security.
18. General. This Agreement contains the entire agreement between the
parties regarding the subject matter of this Agreement and supersedes any
previous understandings, representations, acknowledgements, commitments or
agreements, oral or written, regarding such subject matter. This Agreement shall
be governed by and construed under laws of the State of Delaware, without regard
to its conflicts of laws principles.
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IN WITNESS THEREOF, the parties have caused this Agreement to be duly
executed and delivered as of the date first set forth above.
ABGENIX, INC.
By: /s/ Xxxxxxx X. Xxxxx
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(Signature)
Xxxxxxx X. Xxxxx, Ph.D.
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(Printed Name)
Vice President, Corporate Development
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(Title)
CENTOCOR, INC.
By: /s/ Xxxxxxxxxxx Xxxxxxxxx
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(Signature)
Xxxxxxxxxxx Xxxxxxxxx, Ph.D.
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(Printed Name)
Senior Vice President and
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Chief Scientific Officer
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(Title)
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EXHIBIT A
ABX MATERIALS AND INFORMATION
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EXHIBIT B
RESEARCH PROGRAM
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EXHIBIT C
TERMS OF RESEARCH LICENSE AND OPTION AGREEMENT
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