AMENDMENT NO. 1 TO
COOPERATION AGREEMENT
---------------------
Amendment No. 1
dated and effective as of
August 10, 1998, between
SYNAPTIC PHARMACEUTICAL
CORPORATION, a corporation
organized under the laws of
the State of Delaware
("SYNAPTIC"), and
GRUNENTHAL GMBH, a
corporation organized under
the laws of the Federal
Republic of Germany
("GRUNENTHAL").
Witnesseth
----------
WHEREAS, SYNAPTIC and GRUNENTHAL are parties to a Cooperation Agreement
dated as of January 12, 1998 (the "Agreement"). Capitalized terms used and not
defined in this Amendment No. 1 shall have the meanings ascribed to them in the
Agreement;
WHEREAS, under Section 2.6.4 of the Agreement, SYNAPTIC is permitted to
use COMPOUNDS provided by GRUNENTHAL for purposes other than the cooperation,
and to commercialize any product resulting from such use, without obligation to
GRUNENTHAL, financial or otherwise, unless such product incorporates a compound
covered by an issued GRUNENTHAL PATENT RIGHT, in which case GRUNENTHAL is
entitled to receive compensation as provided in Section 2.6.4;
WHEREAS, the parties have determined that it may be in the best
interests of the cooperation for GRUNENTHAL to send certain compounds to
SYNAPTIC for screening and/or other testing promptly following their synthesis
and prior to the preparation and filing by GRUNENTHAL of a patent application
covering such compounds;
WHEREAS, the parties recognize that inventions may result from
SYNAPTIC's use of such COMPOUNDS and that SYNAPTIC may desire to prepare and
file patent applications covering such inventions;
WHEREAS, the parties have determined that, with respect to certain of
such inventions, GRUNENTHAL should be entitled to receive compensation as
provided in Section 2.6.4, notwithstanding that such inventions are not covered
by an issued GRUNENTHAL PATENT RIGHT, as currently defined in the Agreement,
and, accordingly, desire to amend the Agreement to provide for such compensation
and to make certain changes relating thereto;
1
WHEREAS, the Agreement contemplates that SYNAPTIC and GRUNENTHAL will
from time to time evaluate AVAILABLE TARGETS for the purpose of assessing the
desirability of initiating new PROJECTS which have as their focus one or more of
such AVAILABLE TARGETS;
WHEREAS, in connection with and in order to facilitate any such
evaluation, SYNAPTIC may provide to GRUNENTHAL biological materials comprising
or relating to an AVAILABLE TARGET; and
WHEREAS, the parties desire to amend the Agreement to further define
their rights and obligations as they relate to any such biological materials.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants hereinafter set forth, the parties agree as follows:
1. SYNAPTIC's Use of COMPOUNDS Provided by GRUNENTHAL. Section 2.6.4 of
the Agreement is hereby amended to read in its entirety as follows:
"2.6.4 SYNAPTIC's Use of COMPOUNDS Provided by GRUNENTHAL.
(a) SYNAPTIC shall be permitted to use COMPOUNDS provided
to SYNAPTIC by GRUNENTHAL and to exclusively
commercialize any product developed therefrom by or
on behalf of SYNAPTIC (a "SYNAPTIC PRODUCT"), without
compensation to GRUNENTHAL, financial or otherwise,
so long as the mechanism of action of the active
compound or compounds in such SYNAPTIC PRODUCT
involves:
(i) an EXCLUDED TARGET; or
(ii) an AVAILABLE TARGET and such product is not
useful for the alleviation of PAIN.
(b) Notwithstanding anything to the contrary contained in
paragraph (a) above, if:
(i) the active compound, or the use of such
active compound, in such SYNAPTIC PRODUCT is
claimed in terms of a chemical structure
either as a species or as a member of a
genus in an issued PATENT RIGHT which
GRUNENTHAL owns, solely or jointly with
SYNAPTIC; and
(ii) GRUNENTHAL is not independently of SYNAPTIC
commercializing a product which includes a
different compound claimed in such PATENT
RIGHT for the same therapeutic indication
2
for which the SYNAPTIC PRODUCT is commer-
cialized, then SYNAPTIC shall pay GRUNENTHAL
a royalty of:
(A) 3% of the NET SALES of such SYNAPTIC
PRODUCT in countries in which such
issued GRUNENTHAL PATENT RIGHT
exists if SYNAPTIC independently
commercializes such SYNAPTIC
PRODUCT; or
(B) 33% of any royalty which SYNAPTIC
receives from a third party in
respect of any such PATENT RIGHT if
SYNAPTIC licenses the issued
GRUNENTHAL PATENT RIGHT to a third
party.
(c) In the event that, as a result of its
commercialization of any SYNAPTIC PRODUCT, SYNAPTIC
would otherwise be required to pay GRUNENTHAL, under
both Section 2.6.2 and this Section 2.6.4, 33% of any
royalty which it receives from a third party in
respect of such SYNAPTIC PRODUCT, then
notwithstanding such sections, SYNAPTIC shall be
required to pay GRUNENTHAL 33% of such royalty only
under this Section 2.6.4."
2. Patent Rights. The section reference "7.1.3" of the Agreement is hereby
renamed "7.1.4" and there is hereby added immediately prior to such
Section 7.1.4 the following new Section 7.1.3:
"7.1.3 Inventions Resulting from SYNAPTIC's Use of Compounds Provided
by GRUNENTHAL.
--------------------------------------------------------------
Notwithstanding the provisions of Sections 7.1.1 and 7.1.2,
GRUNENTHAL and SYNAPTIC agree that PATENT RIGHTS for any
invention which results from SYNAPTIC's use of COMPOUNDS
provided by GRUNENTHAL pursuant to Section 2.6.4 shall be
jointly owned by GRUNENTHAL and SYNAPTIC to the extent that
the PATENT RIGHTS relating to such invention claim in terms of
a chemical structure a compound or the use of a compound
provided to SYNAPTIC by GRUNENTHAL. For purposes of the
preceding sentence, a compound will be considered to be so
claimed if it is claimed either as a species or as a member of
a genus having such chemical structure. SYNAPTIC shall be
responsible for preparing all draft patent applications
encompassed within such PATENT RIGHTS and shall provide such
drafts to GRUNENTHAL for review and comment prior to filing.
SYNAPTIC and GRUNENTHAL shall discuss and agree which person
or persons should be named as inventor or inventors on such
patent applications in accordance with applicable principles
of inventorship under U.S. Patent Law. All expenses relating
to the preparation, filing, prosecution, extension and
maintenance of such jointly-owned
3
patent applications and any patents granted thereon shall be
borne by SYNAPTIC. If SYNAPTIC determines:
(a) not to file a patent application for such an invention
in any of the TERRITORIES;
(b) not to continue prosecution or maintenance thereof in
any of the TERRITORIES; or
(c) not to extend any patent granted thereon in any of the
TERRITORIES,
then SYNAPTIC shall promptly notify GRUNENTHAL and GRUNENTHAL
shall be given the opportunity to seek and pursue patent
protection on such invention in such territory at its own
expense. In the event GRUNENTHAL pursues such patent
protection, ownership of the PATENT RIGHTS for such invention
in any such territory shall be assigned to GRUNENTHAL and
GRUNENTHAL shall thereafter be the sole owner of such PATENT
RIGHTS in such territory."
3. Limitations on Use of Certain Information. There is hereby added
immediately following Section 2.6.7 of the Agreement the following new
Section 2.7:
"2.7 Limitations on Use of Information Resulting from
Evaluation of Available Targets.
-----------------------------------------------------
In connection with the evaluation by the parties of
AVAILABLE TARGETS for purposes of assessing the
desirability of initiating new PROJECTS that have as
their focus one or more of such AVAILABLE TARGETS, it
is contemplated that SYNAPTIC may provide to
GRUNENTHAL biological materials comprising or
relating to such TARGETS. In the event any biological
materials are so provided, GRUNENTHAL acknowledges
and agrees that:
(a) except to the extent necessary or desirable
to perform the evaluation, no right or
license under any patent, copyright or
trademark of SYNAPTIC is granted, or to be
construed as being granted, by implication,
estoppel or otherwise, to GRUNENTHAL by the
terms of this Agreement; and
(b) results or inventions derived, directly or
indirectly, from any assays involving the
use of such biological materials may be used
by GRUNENTHAL solely for purposes of the
evaluation and in connection with a PROJECT
which has as its focus the AVAILABLE TARGET
that is the subject of the evaluation and
may not be used by GRUNENTHAL for any other
purpose; and
4
(c) it will not develop any compounds identified
as agonists or antagonists of such AVAILABLE
TARGET pursuant to any assay conducted as
part of the evaluation except in connection
with a PROJECT which has as its focus such
AVAILABLE TARGET."
4. Confidentiality. Section 11.1 of the Agreement is hereby amended by
adding at the end thereof the following new sentence:
"For purposes of this Article 11, the term "information" shall
include all data and other information, whether disclosed
orally or in written or graphic form, as well as all
biological materials, including, without limitation,
eukaryotic expression vectors containing cDNAs encoding
receptors, bacterial stocks and cell lines."
5. Effect of Amendment and Supplement.
(a) From and after the date first written above, all references in
the Agreement to "this AGREEMENT," "hereunder," "hereof,"
"hereof," "herein," or words of similar import, shall be a
reference to the Agreement, as amended by this Amendment No.
1.
(b) Except as expressly amended and supplemented by this Amendment
No. 1, the Agreement shall remain in full force and effect and
unchanged.
5
IN WITNESS WHEREOF, the parties have caused this Amendment No. 1 to be
executed and delivered as of the date first written above.
SYNAPTIC PHARMACEUTICAL CORPORATION
By:/s/ Xxxxxxxx X. Xxxxxxxx
-----------------------------
Name: Xxxxxxxx X. Xxxxxxxx
Title: Chairman, President and
Chief Executive Officer
GRUNENTHAL GMBH.
By: /s/ Xx. X. Xxxxxx /s/ C. Baguette
--------------------------------------
Name: Dr. E. Pacques C. Baguette
Title: Managing Director Dir. Bus. Dvlpt.
6
