Exhibit 10.12
Technology License and Development Agreement between the
Company and BASF-LYNX Bioscience AG
TECHNOLOGY LICENSE AND DEVELOPMENT AGREEMENT
THIS TECHNOLOGY LICENSE AND DEVELOPMENT AGREEMENT (the "Agreement") is
made and entered into as of January 1, 1997 (the "Effective Date"), by and
between BASF-Lynx Bioscience AG, a corporation established under the laws
of Germany, with its principal place of business at Heidelberg, Germany
("The Joint Venture"), LYNX THERAPEUTICS GMBH, a limited liability company
established under the laws of Germany ("Lynx Germany"), and BASF
BIOTECHNOLOGIE BETEILIGUNGS- UND VERWERTUNGSGESELLSCHAFT MBH, a limited
liability company established under the laws of Germany ("BASF GmbH").
RECITALS
WHEREAS, Lynx Therapeutics, Inc. ("Lynx USA"), the parent company of
Lynx Germany, and BASF AG have agreed to form, through Lynx GmbH and BASF
GmbH, respectively, the Joint Venture as a joint venture to conduct a
research program in the area of epilepsy, toxico-pharmacology, and the
development of production strains of microorganisms for fermentations;
WHEREAS, Lynx USA owns the rights to certain inventions and
technology, and related instruments and methods, including a novel
technique for determining cDNA sequence information rapidly from a sample,
which is potentially useful for identifying genes and drug targets of
interest, and Lynx USA has licensed such inventions and technology to Lynx
Germany and has committed certain materials and resources to support the
use thereof;
WHEREAS, BASF AG owns the rights to certain inventions and
technology, and BASFAG will, upon request of Lynx USA, license such
inventions and technology to BASF GmbH and has committed up to [.***.]* in
funding to support the research program;
WHEREAS, The Joint Venture desires to obtain a license under such
Lynx and BASF inventions and technology and to utilize Lynx instruments
and reagents, and to receive funding from BASF GmbH to conduct such
research; and
WHEREAS, Lynx Germany is willing to grant such licenses to The Joint
Venture and to provide The Joint Venture the use of inventions, know-how,
instruments, reagents, technical support and service as necessary to
conduct the research program, and BASF GmbH is willing to grant such
licenses to The Joint Venture and to contribute funding, in accordance
with the terms and conditions hereinafter specified.
NOW, THEREFORE, Lynx Germany, BASF GmbH and The Joint Venture hereby
agree as follows:
1. DEFINITIONS
1.1 "BASF Licensed Technology" shall mean the TET Technology, the
Incyte Database and the BASF AG toxicology database.
1.2 "Beads" shall mean the combitag beads that have covalently
attached to their surface [.***.] of at least [.***.],* which beads
are useful in the conduct of MPSS analysis.
1.3 "CNS Database" shall mean the neurobiological sequence database
owned or controlled by Lynx USA on the Effective Date and derived
from nervous system tissues.
1.4 "Field" shall mean the treatment or prevention of diseases or
disorders in area of epilepsy, the toxico-pharmacology of chemical
substances in microbial and metazoan organisms, and the development
of production strains of microorganisms for fermentation.
1.5 "Future BASF Technology" shall mean inventions, discoveries and
developments owned or controlled by BASF AG, relating to or derived
from the BASF Licensed Technology.
1.6 "Future Gene Technology" shall mean inventions, discoveries and
developments owned or controlled by Lynx USA, relating to or derived
from the MPSS, MPGS, or MPH techniques or analysis, that are useful
for gathering gene or cDNA sequence information rapidly and/or
analyzing gene expression via sequence information.
1.7 "Incyte Database" means the database with BASF AG may, according
to the Collaborative Agreement between BASF AG and Incyte dated June
27, 1996 (the "Incyte Agreement"), make available to The Joint
Venture [.***.] having to [.***.] therefor.
1.8 "Instrument Improvements" shall mean all modifications and
improvements to the MPSS equipment that are made by or on behalf of
Lynx USA and incorporated in the then current standard model of such
MPSS equipment for production or commercial use during the term of
this Agreement.
1.9 "The Joint Venture Inventions" shall mean any invention,
discovery, development, concept, or idea, whether or not patentable
or copyrightable, that is made by or on behalf of The Joint Venture
(including by any of its employees, agents, contractors or
collaborators) during the term of the Agreement, and including
without limitation processes, methods, software, formulae, data,
techniques, compositions of matter, and devices, and all
improvements thereof and know-how and trade secrets relating
thereto, but excluding The Joint Venture's rights from academic
collaborations contemplated in Section 2.4 below.
1.10 "Lynx Licensed Technology" shall mean the MPSS Patents and the
MPSS Know-How, the Lynx Bioinformatics, the Future Gene Technology,
the CNS Database, and the Phosphoramidate Patents.
1.11 "Lynx Bioinformatics" shall mean the software and other
proprietary means owned or controlled by Lynx USA during the term of
the Agreement that is useful for analyzing MPSS xxxxxxxx xxxx for
simulating and analyzing dynamic patterns of gene expression and for
genomic analyses.
1.12 "Massively Parallel Genomic Sequencing" or "MPGS" means the
acquisition of [.***.]* sequences from the genome of an organism by
proprietary technologies based on Lynx Licensed Technology.
1.13 "Massively Parallel Hybridization" or "MPH" means the use of
gridded solid phase arrays of cloned cDNAs for the purpose of
analyzing by [.***.] the levels of gene expression in tissue or cell
samples.
1.14 "Massively Parallel Signature Sequencing" or "MPSS" means the
parallel acquisition, of at least [.***.] (a "Signature Sequence")
from each of at least [.***.] templates sampled from a given cell
culture or tissue cDNA library.
1.15 "MPSS Know-How" shall mean the information, data, knowledge,
methods, procedures, processes, and techniques owned or controlled
by Lynx USA that comprise the method of MPSS sequencing or that are
directly related to using the MPSS Instruments in conducting MPSS
analyses. The term "MPSS Know-How" shall not include any
information or trade secrets relating to the manufacture of the
Beads or other proprietary Reagents and which are not necessary to
know in order to practice the MPSS analyses.
1.16 "MPSS Instrument" shall mean the equipment, designed and developed
by Lynx USA, that can conduct MPSS analyses of templates sampled
from a given cell culture or tissue cDNA library, and all Instrument
Improvements to such equipment made or acquired by Lynx USA during
the term of the Agreement.
1.17 "MPSS Patents" shall mean (a) any and all U.S. and corresponding
foreign patent applications, whether now existing or hereafter
filed, that are owned or controlled by Lynx USA and that claim MPSS
Instruments and/or reagents, or the use thereof, or the method of
MPSS, and (b) any divisions, continuations, continuations-in-part,
reissues or substitute applications arising from, and based upon,
any of the foregoing patent applications, and (c) any patent(s)
issuing from any of the foregoing, and including all reexamination,
reissues or extensions of such patents.
1.18 "Phosphoramidate Patents" shall mean the issued patents owned or
Controlled by Lynx USA during the term of the Agreement that claim
[.***.].*
1.19 "Reagents" shall mean the Beads and such other proprietary
reagents, diluents, or materials that are necessary for operating
the MPSS Instruments and conducting the MPSS sequence analyses of
template samples, to the extent that such materials are not
reasonably available for purchase on the open market.
1.20 "Research Program" shall mean the research and drug discovery
program to be conducted by The Joint Venture, that shall
characterize the dynamics of gene expression and gene product
activities, initially limited to the areas of: (a) discovering novel
drug targets for identifying drugs useful in the area of epilepsy;
(b) evaluating the use of "dynamic imaging" approach to predicting
the toxico-pharmacology of known chemical substances; and (c)
generating dynamic gene expression databases from tissues and cells
of interest in the Field; (d) developing production strains of
microorganisms for fermentation.
1.21 "TET-Technology" means a method of [.***.] or [.***.] operating
via [.***.] or [.***.] or [.***.] or [.***.] to the extent BASF AG
may make such technology available to The Joint Venture Without
having to make additional payments therefor.
1.22 "Toxicology Database" means BASF AG's comprehensive collection of
non-proprietary toxicological data as well as the toxicological
expertise of BASF AG's department of toxicology.
2. LICENSES AND RIGHTS
2.1 Lynx MPSS License Grant. Lynx Germany hereby grants to The
Joint Venture, during the term of the Agreement, [.***.], without
the right to assign or to grant sublicenses, under the MPSS Patents
and the MPSS Know-How to use the MPSS Instruments provided by Lynx
Germany hereunder and to practice the method of MPSS with said MPSS
Instruments, all solely in order to conduct the Research Program.
Lynx Germany also grants The Joint Venture, during the term of the
Agreement, [.***.] without the right to assign or to grant
sublicenses, under the Future Gene Technology, solely in order to
conduct the Research Program.
2.2 Lynx Research Licenses. Lynx Germany hereby grants The Joint
Venture, during the term of the Agreement, [.***.]* without the
right to assign or to grant sublicenses, to use the Lynx
Bioinformatics and the CNS Database provided by Lynx Germany
hereunder, solely in order to conduct the Research Program. Lynx
Germany also grant The Joint Venture the right under the
Phosphoramidate Patents to utilize [.***.] containing [.***.] solely
in conducting research work under the Research Program, for example
as necessary to validate drug targets identified under the Research
Program.
2.3 BASF License Grant. BASF GmbH hereby grants to The Joint
Venture, during the term of the Agreement, [.***.], without the
right to assign or to grant sublicenses to use and practice the TET-
Technology and to use and access the Incyte Database and the
Toxicology Database, all solely in order to conduct the Research
Program. BASF GmbH also grants The Joint Venture, during the term
of the Agreement, [.***.], without the right to assign or to grant
sublicenses, under the Future BASF Technology.
2.4 Restriction on Use of Lynx Technology. The Joint Venture
covenants that The Joint Venture shall not utilize the MPSS
Instruments and shall not use or practice the MPSS Technology, the
Future Gene Technology, the Lynx Bioinformatics, or the CNS
Database, except as specifically required to conduct the Research
Program, as established and under the direction of the Advisory
Board. In particular, but without limiting the foregoing, The Joint
Venture agrees that it shall not use the MPSS Instruments or use or
practice the MPSS Technology to provide sequence analysis services
for any third party, including BASF AG and/or BASF GmbH and/or Lynx
USA and/or Lynx Germany, provided, however, that approximately
[.***.] of the research and development efforts of The Joint Venture
under the Research Program may be devoted to projects as part of
academic collaborations in the Field approved by the The Joint
Venture Advisory Board, provided that The Joint Venture retains all
rights resulting from such collaborative work. The Joint Venture
shall not, and shall not engage, permit or encourage any third party
to, reverse engineer or modify the MPSS Instruments or decompile,
translate or otherwise attempt to obtain the source code for any
software included in the MPSS Instruments or the Lynx
Bioinformatics.
2.5 Lynx Rights Retained. Lynx USA shall retain all rights to
use the Lynx Licensed Technology, the Lynx Bioinformatics, the CNS
Database, and to use and practice MPSS and the Phosphoramidate
Patents, for all research or commercial purposes, subject to Section
5.7 of The Joint Venture Agreement, provided that the scope of any
R&D project undertaken by the Joint Venture subject to that section
is set forth in the minutes of the Advisory Board.
2.6 Bioinformatics. As part of The Joint Venture's research and
development efforts under the Research Program, The Joint Venture
shall develop, acquire and/or integrate the bioinformatics
technologies as necessary for the analysis, interpretation and use
of the gene expression information generated by The Joint Venture in
practicing the MPSS method as permitted hereunder.
3. FUNDING
3.1 BASF GmbH Funding. BASF GmbH hereby agrees to provide
research funding (the "Funding Commitment") for The Joint Venture
according to the following schedule:
(a) As promptly as is practical after the Effective Date, BASF GmbH
shall provide The Joint Venture with an initial contribution of
[.***.]* to enable The Joint Venture to initiate the Research
Program.
(b) BASF promises to provide up to [.***.] on a quarterly basis
according to research budgets prepared by the The Joint Venture
Executive Board, subject to review and unanimous approval by the
The Joint Venture Advisory Board. Operating shortfalls resulting
from the budgeting process set forth above shall be added to the
budget for the following quarter. BASF hereby agrees and promises
that such funds shall be contributed within [.***.] of budget
approval by the The Joint Venture Advisory Board.
4. INSTRUMENTS, REAGENTS AND SERVICES
4.1 Lynx loan of MPSS Instruments. As promptly as is practical
after the Effective Date, Lynx Germany shall provide The Joint
Venture with a fully operational MPSS Instrument for use as
permitted in Section 2.1. During the term of the Agreement, if The
Joint Venture demonstrates that it has the capability, need, and
resources to utilize, consistent with the Research Program plans and
goals, additional MPSS Instruments, Lynx Germany shall at such time
use reasonable efforts to arrange to provide The Joint Venture with
one or more additional MPSS Instruments for use under Section 2.1.
Lynx USA shall retain the entire right, title and interest in and to
all MPSS Instruments provided by Lynx Germany hereunder. The Joint
Venture shall use, and shall require all its employees, agents or
contractors to use, all reasonable efforts to keep such MPSS
Instruments in good working order and not to modify or permit
modification of or cause harm or loss to come to such equipment, or
any software associated with such equipment provided by Lynx
Germany.
4.2 Lynx Reagents Supply. During the term of the Agreement, Lynx
Germany shall supply The Joint Venture with its reasonable
requirements of Reagents for use in performing the Research Program
as permitted under Section 2.1. Delivery of the Reagents will be
based on orders made by The Joint Venture in writing, with delivery
times and methods of delivery to be agreed by the parties. In the
event that The Joint Venture in any calendar year desires to order
amounts of Reagents in excess of that amount needed to perform
[.***.] analyses, then with respect to ` such additional amounts of
Reagents that Lynx Germany is able to provide, Lynx Germany shall
charge The Joint Venture for such supply [.***.] equal to [.***.]
for such Reagents, plus reasonable shipping and insurance.
4.3 Lynx Training and Technical Assistance. Lynx Germany shall
provide technical assistance to The Joint Venture as reasonably
requested by The Joint Venture to assist in the transfer of the Lynx
Licensed Technology, to the extent The Joint Venture has rights to
use or practice such Lynx Licensed Technology as provided in Article
2 hereof. On a reasonable schedule after the Effective Date, Lynx
Germany shall also provide such documents and supporting materials
relating to the Lynx Licensed Technology as are necessary in order
for The Joint Venture to utilize such Lynx Licensed Technology as
permitted in Article 2. Lynx Germany, or Lynx USA as appropriate
shall also provide reasonable training for up to [.***.] of The
Joint Venture in the use, operation and maintenance of the MPSS
Instruments and the practice of the MPSS analysis methods. The
Joint Venture shall pay for all travel and living expenses of its
employees related to receiving such training.
4.4 BASF Training and Technical Assistance. BASF GmbH shall
provide technical assistance to The Joint Venture as reasonably
requested by The Joint Venture to assist in the transfer of the BASF
Licensed Technology, to the extent The Joint Venture has rights to
use or practice such BASF Licensed Technology as provided in `
Article 2 hereof.
4.5 Lynx Maintenance of MPSS Instruments. The Joint Venture
shall be responsible for the day-to-day maintenance and upkeep of
all MPSS Instruments as directed by Lynx Germany and provided
hereunder. Lynx Germany shall provide, or shall arrange to be
provided, reasonable service and repair of such MPSS Instruments to
the extent The Joint Venture, using reasonable efforts, is not able
to address any such service or maintenance needs of the MPSS
Instruments.
5. INVENTIONS AND RESULTS
5.1 Disclosure of Inventions. On a regular basis, and in any
event at least [.***.]*, The Joint Venture shall provide to Lynx
Germany and BASF GmbH a written summary of all The Joint Venture
Inventions made during the term of the Agreement. For any such The
Joint Venture Inventions that The Joint Venture believes may be
patentable (the "Patentable Invention"), The Joint Venture shall
include in such report a complete written disclosure for each and
every such Patentable Invention. The Joint Venture also shall, at
Lynx Germany's or BASF GmbH's request, provide Lynx Germany and BASF
GmbH copies of, and/or the right to inspect and copy, all results
and raw data of the Research Program and other activities of The
Joint Venture that may pertain to inventions or patentable
discoveries.
5.2 Recording of Results and Data. The Joint Venture shall
require that all its employees, consultants and collaborators
performing work for The Joint Venture, whether pursuant to the
Research Program or otherwise, shall record all results and raw data
from such work, and all The Joint Venture Inventions, in laboratory
notebooks owned and maintained by The Joint Venture. Such
laboratory notebooks shall be regularly reviewed, witnessed and
dated by appropriate senior scientists at The Joint Venture. The
Joint Venture shall maintain such notebooks in its control at all
times and shall use reasonable efforts to keep such notebooks
confidential and in a secure manner. As used herein, "results and
raw data" means all results, information and data resulting from or
derived from research or development work, and all conclusions based
upon analysis or such results, information and data, including
without limitation all materials such as films, printouts, graphs
and photographs that generate, comprise or analyze such results,
information or data and are typically included in laboratory
notebooks.
5.3 Assignment of The Joint Venture Inventions. The Joint
Venture hereby assigns and conveys to Lynx Germany and BASF GmbH
jointly all right, title and interest in and to all The Joint
Venture Inventions, subject only to The Joint Venture's right to
continue to use and practice the The Joint Venture Inventions,
solely as needed to further conduct the Research Program during the
term of this Agreement. Lynx Germany and BASF GmbH hereby
acknowledge and agree that each possesses [.***.]* in The Joint
Venture Inventions which may not be conveyed, transferred or severed
without the permission of the other, as provided in The Joint
Venture Operating Agreement. The Joint Venture agrees to execute
all documents and instruments and take all other reasonable actions,
at its expense, as are necessary to assign and transfer to Lynx
Germany and BASF GmbH, and to perfect title in Lynx Germany and BASF
GmbH, all such The Joint Venture Inventions. The Joint Venture,
Lynx Germany, and BASF GmbH further agree that as to any Joint
Venture Invention or any invention arising out of any academic
collaboration contemplated by paragraph 2.4, relating to Future Gene
Technology, MPSS, MPH, or MPGS processes, instruments, or reagents,
the Joint Venture and BASF GmbH hereby respectively grant to Lynx
Germany and Lynx USA worldwide [.***.], with full rights to
sublicense, under their respective rights, to make, have made, use,
sell, or otherwise commercialize such inventions, subject to section
5.7 of the Joint Venture Agreement.
5.4 Non-Encumbrance. The Joint Venture hereby covenants and
agrees that The Joint Venture shall not permit any lien,
encumbrance, burden or claim by any Third Party upon The Joint
Venture Inventions, except for any rights therein under the R&D
Agreement and statutory rights of its employees.
6. CONFIDENTIALITY AND PUBLICATION
6.1 Publication. The parties agree that it may be beneficial to
a party to publish or present at academic conferences or symposia,
or similar events, certain of the The Joint Venture Inventions.
However, to preserve commercial value and rights in such The Joint
Venture Inventions, The Joint Venture agrees that, prior to the
submission for publication of any article or abstract or the public
disclosure at a scientific meeting, of any information related to
the The Joint Venture Inventions, The Joint Venture shall notify
Lynx Germany and BASF GmbH and provide Lynx Germany and BASF GmbH a
copy of the proposed manuscript, abstract, speech or other
disclosure, for Lynx Germany's and BASF GmbH's prior review and
approval at least [.***.]* to submission or release. The Joint
Venture, and any of its employees, agents, or collaborators, shall
not make any such publication or disclosure unless Lynx Germany and
BASF GmbH give their prior approval, which approval shall not be
unreasonably withheld. Lynx Germany shall have the right to publish
articles on the The Joint Venture Inventions. As part of any
article or other disclosure, The Joint Venture shall not publish or
disclose any information relating to the BASF Licensed Technology,
Future BASF Technology, TET-Technology, or Toxicology Database,
unless given prior written approval from BASF GmbH, and the Joint
Venture shall not publish or disclose any information relating to
Lynx Licensed Technology, Future Gene Technology, Beads, CNS
Database, Instrument Improvements, Lynx Bioinformatics, MPGS, MPSS,
MPSS Know-How, MPSS Instrument, MPSS Patents, or Reagents, unless
given prior written approval from Lynx Germany.
6.2 Confidentiality. The Joint Venture shall use its best
efforts to keep the Lynx Licensed Technology and BASF Licensed
Technology and all information relating thereto, and, except as
provided in Section 5.1, all The Joint Venture Inventions strictly
confidential and shall only use such information to the extent
reasonably necessary to further the purposes of this Agreement. The
Joint Venture may disclose the Lynx Licensed Technology, the BASF
Licensed Technology and/or the The Joint Venture Inventions only to
those of its employees and collaborators with a need to know such
information in order to perform the Research Program as contemplated
herein. Confidential Disclosure Agreements related to the
disclosure or distribution of confidential information by The Joint
Venture or its employees may be executed only by the Executive
Board.
6.3 Non-Disclosure Agreements. All employees of The Joint
Venture shall be required to enter into non-disclosure agreements
governing the use of Confidential information.
6.4 Survival. Except as otherwise provided in Article 9, the
provisions of this Article 5 shall survive any termination of this
Agreement for a period of [.***.]* such [.***.].
7. WARRANTIES AND REPRESENTATIONS
7.1 BASF Representation. BASF GmbH represents that to the best
of its knowledge it has the unencumbered right to grant the licenses
to The Joint Venture under the BASF Licensed Technology granted
hereunder and that to the best of its knowledge it has the authority
and capacity to enter into this Agreement and to perform its
obligations hereunder.
7.2 Lynx Representation. Lynx Germany represents that to the
best of its knowledge it has the unencumbered right to grant the
licenses to The Joint Venture under the Lynx Licensed Technology
granted hereunder and that to the best of its knowledge it has the
authority and capacity to enter into this Agreement and to perform
its obligations hereunder.
7.3 Joint Representation. Each Party represents and warrants to
the best of its knowledge that the use by The Joint Venture of its
technology as provided for hereunder will not infringe the
intellectual property rights of third parties.
7.4 OTHER THAN THE REPRESENTATION IN SECTIONS 7.1 TO 7.3, LYNX GERMANY
AND BASF GMBH MAKE NO OTHER, AND HEREBY DISCLAIM ALL,
REPRESENTATIONS OR WARRANTIES, WHETHER EXPRESS OR IMPLIED, REGARDING
THE LYNX AND/OR BASF LICENSED TECHNOLOGY, INCLUDING WITHOUT
LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, OR NON-INFRINGEMENT, AND ALL SUCH INFORMATION AND MATERIALS
ARE PROVIDED "AS IS."
8. INDEMNITY
8.1 Indemnifications. The Joint Venture shall defend, indemnify
and hold harmless Lynx Germany and BASF GmbH from and against any
and all claims, damages, losses and expenses of any nature
(including reasonable attorney's fees), included, but not limited to
death, personal injury, illness, property damage or products
liability arising from or in connection with any of the following:
(a) the use by The Joint Venture of any method or process related to
MPSS, the MPSS Instruments, the Lynx Licensed Technology or the BASF
Licensed Technology except for negligence or willful conduct by the
Parties or the Parents; or
(b) the breach by The Joint Venture or its employees, agents or
collaborators of any material obligation under this Agreement.
(c) any third party patent infringement actions brought against The
Joint Venture which are not based on Lynx or BASF Licensed
Technology.
9. TERM AND TERMINATION
9.1 Term. This Agreement shall enter in force from and after the
Effective Date hereof and expires on [.***.], unless sooner
terminated in accordance with the provisions of Paragraphs 9.2 or
9.3 below.
9.2 Termination. Lynx Germany may terminate this Agreement upon
written notice of termination to BASF GmbH and The Joint Venture in
the event that:
(a) BASF GmbH has failed to make its initial capital contribution of
[.***.];
(b) BASF GmbH has materially failed to contribute to The Joint Venture
amounts it is required to contribute under its obligation under this
Agreement, and such failure has not been cured [.***.] of receiving
written notice from Lynx Germany or The Joint Venture of such failure;
and BASF GmbH may terminate this Agreement upon written notice
of termination to Lynx Germany and The Joint Venture in the event that
Lynx Germany has failed to achieve by [.***.] the Milestone described
in Exhibit A.
9.3 Termination for Breach. Any party may terminate the
Agreement upon [.***.] written notice in the event the other party
breaches a material term of the `"Agreement and fails to cur*e such
breach within such [.***.] after receiving such notice.
10. MISCELLANEOUS
10.1 Non-Assignment. This Agreement and the rights and benefits
conferred upon a party hereunder, or any part hereof, may not be
assigned or transferred by such party without the express written
consent of the other party, except pursuant to a merger or other
acquisition of such party or all of its relevant business assets.
10.2 Binding. This Agreement shall be binding upon and inure to
the benefit of the permitted successors, representatives and assigns
of the parties hereto.
10.3 Notices. Any payment, notice or other communication required
or permitted to be given by either party hereto shall be deemed to
have been properly given and be given and be effective on the date
of delivery if delivered, in writing, in person, by facsimile
transmission or by first class mail to the respective addresses set
forth below, or to such other address as either party shall
designate by written notice given to the other party:
In the case of BASF-Lynx
Bioscience AG: As communicated to Lynx
Germany and BASF GmbH
from time to time
In the case of Lynx Germany: [.***.]*
with a copy to:
Lynx Therapeutics, Inc.
0000 Xxx Xxxxxx Xxxxx
Xxxxxxx, XX 00000
XXX
Attn: [.***.]
In the case of BASF GmbH: As communicated to
BASF-Lynx Bioscience AG and
Lynx Germany from time to time
10.4 Governing Law. This Agreement shall be construed in
accordance with, and its performance shall be governed by, the laws
of the Federal Republic of Germany.
10.5 Dispute Resolution. In the event that Lynx Germany and BASF
GmbH cannot reach agreement on any matter pursuant to this
Agreement, the matter will be referred to further review,
discussion, and resolution between a senior officer of BASF AG and
Lynx USA (the "Decision-Makers"). The Decision-Makers will
attempt in good faith to resolve the matter in dispute for a period
of [.***.]. If no successful resolution of the dispute has been
mutually agreed to, the dispute will be settled according to the
arbitration procedures of Sections 10.6 and 10.7 of this Agreement.
10.6 Arbitration. Any controversy arising which cannot be
resolved pursuant' to Section 10.5 of this Agreement will be
submitted to arbitration pursuant to the Arbitration Rules of the
Deutsche Institution fur Schiedsgerichstbarkeit e.V., then in
effect, by three arbitrators knowledgeable as to pharmaceutical
industry standards. The place of arbitration shall be Heidelberg,
Germany. The arbitrators will be appointed by mutual agreement of
the Decision-Makers within [.***.]* of the filing of the arbitration
claim. In the event the Decision-Makers fail to mutually agree to
the arbitrators, three qualified arbitrators will be appointed by
the Deutsche Institution fur Schiedsgerichstbarkeit. The
arbitrators will be instructed to consider, in making any
determination, the customary practices in the biotechnology and
pharmaceutical industry to the extent such practices exist. The
language of the arbitration shall be English.
10.7 Arbitration Rules. The arbitrators will be instructed to
issue detailed written findings of fact and law. The arbitrators
will be authorized to provide for interim and final injunctive
relief and the parties acknowledge and agree that such arbitration
will be the sole forum for such interim and final injunctive relief.
The arbitrators will have the right but not the obligation to award
to the prevailing party the cost of resolving any dispute regarding
this Agreement or the formation, breach, enforcement or performance
hereof, including any reasonable fees of attorneys, accountants and
expert witnesses incurred by the prevailing party. Punitive damages
will not be recoverable in any arbitration initiated pursuant to
this Agreement. Judgment upon the award rendered by the arbitrators
may be entered in any court having jurisdiction thereof.
10.8 Headings. The headings of the several sections of this
Agreement are inserted for convenience and reference only and are
not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
10.9 Amendment. No amendment or modification hereof shall be
valid or binding upon the parties unless made in writing signed by
both parties.
10.10 Integration. This Agreement embodies the entire, complete
and exclusive understanding of the parties hereto and supersedes all
previous communications, representations or understandings, either
oral or written, between the parties hereto relating to the subject
matter hereof.
10.11 Waiver. Any waiver by either party of any breach of this
Agreement shall not constitute a waiver of any subsequent or other
breach.
10.12 Severability. If any provision or provisions of this
Agreement shall be held to be invalid, illegal or unenforceable, the
validity, legality and enforceability of the remaining provisions
shall not be in any way affected or impaired thereby.
IN WITNESS WHEREOF, Lynx Germany, BASF GmbH, and The Joint Venture
Bioscience AG have executed this Agreement, in triplicate originals but
collectively evidencing only a single contract.
BASF BIOTECHNOLOGIE BETEILIGUNGS-UND
VERWERTUNGSGESELLSCHAFT MBH
By: \s\ Xx. Xxxxx Xxxxxxxxxx
Title: Managing Director
LYNX THERAPEUTICS GMBH
By: \s\ Xxxxxx X. Xxxxxx
Title: Managing Director
BASF-LYNX BIOSCIENCE AG
By: \s\ Xxxxxx Xxxx, Ph.D.
Title: Chief Executive Officer
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* Confidential Treatment Request
EXHIBIT A
MILESTONE
The achievement of the Milestone will be demonstrated as follows:
1. The parties will jointly select a cell system or cell culture
suitable for this demonstration experiment.
2. One portion of the cell culture will be "induced" using an agreed
upon inducer, such as a [.***.],* for a specified period, such as
[.***.].
3. Lynx will take [.***.] from the "uninduced" and [.***.] from the
"induced" system or culture, following its internal protocols for
sampling.
4. Lynx will extract the [.***.] contained in each of the [.***.] such
samples, using its internal protocols for [.***.] extraction.
5. The cDNA extracted from each of the [.***.] will be divided into
[.***.], and a separate MPSS Library Analysis will be conducted on
all of the resulting [.***.] samples.
6. If the data generated from all [.***.] of each of the [.***.] are
within the set (induced or uninduced) substantially identical, but
yet between the sets substantially different, then the Milestone has
been achieved.
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* Confidential Treatment Request
