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CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
EXHIBIT 10.14
SCREENING COLLABORATION AGREEMENT
THIS AGREEMENT ("AGREEMENT") is entered into as of the 16th day of
December, 1998 ("EFFECTIVE DATE") by and between CALIPER TECHNOLOGIES CORP., a
Delaware corporation ("CALIPER"), and NEUROCRINE BIOSCIENCES, INC.
("NEUROCRINE"), a Delaware corporation.
RECITALS
WHEREAS, Caliper has developed proprietary microfluidics technology
which has application in high throughput screening activities; and
WHEREAS, Neurocrine has and will continue to identify targets against
which it plans to screen chemical compounds, which screening activities would
benefit from Caliper's high throughput screening systems; and
WHEREAS, Neurocrine and Caliper possess and/or will acquire libraries of
compounds which may have potential therapeutic pharmaceutical utility for such
targets; and
WHEREAS, Caliper and Neurocrine desire to establish a relationship
whereby Caliper and Neurocrine will develop assays for such targets in Caliper's
LabChip format, and Caliper will screen compound libraries in such assays; and
WHEREAS, Neurocrine intends to develop and commercialize compounds
directed against targets screened in this program, [ * ];
NOW, THEREFORE, in consideration of the foregoing and the covenants and
promises contained herein, the parties agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1 "AFFILIATE" shall mean (i) any corporation or other entity which
directly or indirectly owns or controls at least fifty percent (50%) of the
outstanding voting securities of a party (a "Parent"), (ii) any corporation or
other entity in which a party owns or controls at least fifty percent (50%)
equity interest, and (iii) any corporation or other entity in which a Parent of
a party owns or controls at least fifty percent (50%) equity interest.
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1.2 "CALIPER COMPOUNDS" shall mean those compounds which Caliper owns or
possesses and has the right to make available to Neurocrine for screening as of
the Effective Date or during the Screening Term. For purposes of this Agreement,
Caliper Compounds shall not include the Neurocrine Compounds transferred to
Caliper pursuant to Sections 2.5(a) and 3.4.
1.3 "CALIPER KNOW-HOW" shall mean all discoveries, materials,
techniques, procedures, data and other technical information which Caliper
possesses and treats as confidential as of the Effective Date or during the
Screening Term, excluding Screening Data. Caliper Know-How does not include
Caliper Patents.
1.4 "CALIPER PATENTS" shall mean any and all patents, including, without
limitation, any substitutions, extensions, reissues, renewals, supplementary
protection certificates and inventors' certificates, which have not been held
invalid or unenforceable by a non-appealable or non-appealed decision of a court
of competent jurisdiction, issuing from patent applications filed in any
jurisdiction, including, without limitation, any provisionals, divisionals,
continuations, and continuations-in-part, which Caliper owns or has a license to
(with the right to sublicense to Neurocrine) as of the Effective Data or during
the Screening Program.
1.5 "CALIPER ROYALTY COMPOUND" shall mean a Royalty Compound which is
derived from, a Caliper Compound screened under this Agreement.
1.6 "CALIPER TECHNOLOGY" shall mean, collectively, the Caliper Patents,
the Caliper Know-How, and the Caliper Compounds.
1.7 "CONFIDENTIAL INFORMATION" shall mean all information provided by
one party to the other during the Screening Term, including, without limitation,
Neurocrine Know-How, Caliper Know-How, Screening Data, research plans,
engineering designs and drawings, research data, manufacturing processes and
techniques, scientific, manufacturing, marketing, and business plans, financial
or personnel matters relating to the party, its present or future products,
sales, suppliers, customers, employees, investors or business.
1.8 "DATA POINT" shall mean the experimental measurement reported to
Neurocrine from a high throughput LabChip Assay of a single discrete volume of
liquid (e.g., from a single well on a microtiter plate) containing a single
Neurocrine Compound, Neurocrine Limited Compound or Caliper Compound or a "pool"
of such compounds.
1.9 "FDA" shall mean the United States Food and Drug Administration.
1.10 "GLP TOXICOLOGY STUDIES" shall mean preclinical toxicology studies
carried out in accordance with Good Laboratory Practices described in the U.S.
Federal Register dated December 22, 1988, as amended, which are intended to
enable the filing of an IND.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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1.11 "IND" stands for "Investigational New Drug Application" and shall
mean an application for permission from the FDA, or comparable non-U.S.
regulatory authorities, to commence human clinical testing of a new drug.
1.12 "INSTRUMENT" shall mean an instrument designed to actuate fluid
manipulations on LabChips and to detect the results of such manipulations. An
Instrument may also perform other functions, such as introducing samples into
LabChips.
1.13 "LABCHIP" shall mean a Caliper chip, which typically consists of a
glass or polymer base with microchannels, bonded to a cover with reservoirs, and
which may have an attached pipettor capillary.
1.14 "LABCHIP ASSAY" shall mean a particular combination of a LabChip, a
set of reagents and software, all designed for use on one or more types of
Instruments to perform a high throughput screening assay for a particular
Target.
1.15 "LABCHIP IMPROVEMENT INVENTIONS" shall mean [ * ] by an employee or
contractor of Neurocrine, solely or jointly with others, in the course of the
Screening Program during the term of this Agreement and that specifically relate
to improvements to the Screening Technology or to chip-based microfluidic
systems, [ * ]. LabChip Improvement Inventions specifically shall not include
Screening Data or potential pharmaceutical compounds identified as hits in the
Screening Program.
1.16 "NET SALES" shall mean, with respect to a Product, and on a
country-by-country basis, the gross invoice price of all Products sold by
Neurocrine, its Affiliates, and sublicensees to independent third party
customers after deducting, if not already deducted in the amount invoiced (a)
trade, quantity and cash discounts actually taken, (b) returns and rebates, (c)
duties, sales and excise taxes and (d) transportation and insurance costs
charged to the customer. Product transfers among Neurocrine and its Affiliates
or sublicensees shall not be deemed sales; the sale shall be deemed to take
place upon transfer to a bona fide customer. Products shall be considered sold
when invoiced.
1.17 "NEUROCRINE COMPOUNDS" shall mean those compounds which Neurocrine
owns or possesses and has the right to use in the Screening Program as of the
Effective Date.
1.18 "NEUROCRINE KNOW-HOW" shall mean all discoveries, materials,
techniques, procedures, data and other technical information which Neurocrine
possesses and treats as confidential as of the Effective Date or during the
Screening Term, excluding Screening Data. Neurocrine Know-How does not include
Neurocrine Patents.
1.19 "NEUROCRINE LIMITED COMPOUND" shall mean any compound which
Neurocrine acquires after the Effective Date and which Neurocrine elects to
provide to Caliper to enter into the Screening Program.
1.20 "NEUROCRINE PATENTS" shall mean any and all patents, including,
without limitation, any substitutions, extensions, reissues, renewals,
supplementary protection certificates
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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and inventors' certificates, which have not been held invalid or unenforceable
by a non-appealable or non-appealed decision of a court of competent
jurisdiction, issuing from patent applications filed in any jurisdiction,
including, without limitation, any provisionals, divisionals, continuations, and
continuations-in-part, which Neurocrine owns or has a license to (with the right
to sublicense to Caliper) as of the Effective Date or during the Screening Term.
1.21 "NEUROCRINE ROYALTY COMPOUND" shall mean a Royalty Compound which
is, or is derived from, a Neurocrine Compound or Neurocrine Limited Compound
screened under this Agreement.
1.22 "NEUROCRINE TECHNOLOGY" shall mean, collectively, the Neurocrine
Patents, the Neurocrine Know-How, the Neurocrine Compounds and the Neurocrine
Limited Compounds.
1.23 "PRODUCT" shall mean any product, including all formulations, line
extensions or modes of administration thereof, which contains a Royalty Compound
as an active ingredient.
1.24 "ROYALTY COMPOUND" shall mean a compound that is selected for
[ * ], which compound either is, or is derived from, a Caliper Compound,
Neurocrine Compound or Neurocrine Limited Compound for which Screening Data was
provided and [ * ]. For purposes of this definition, "derivatives" of a Caliper
Compound, Neurocrine Compound or Neurocrine Limited Compound will include direct
derivatives and all subsequent derivatives of derivatives.
1.25 "SCREENING COMMITTEE" shall mean that committee formed pursuant to
Section 2.2 hereof.
1.26 "SCREENING DATA" shall mean all Data Points delivered to Neurocrine
pursuant to instructions from the Screening Committee, as described in Section
2.6(b).
1.27 "SCREENING PROGRAM" shall mean the collaborative LabChip Assay
development and high throughput screening program described in Article 2.
1.28 "SCREENING TECHNOLOGY" shall mean the Instruments, LabChips,
reagents and software, and associated Caliper Patents and Caliper Know-how,
utilized by Caliper for high throughput screening activities under this
Agreement, excluding Caliper Compounds.
1.29 "SCREENING TERM" shall mean the period of three (3) years
commencing on the Effective Date, unless modified by mutual agreement of the
parties.
1.30 "TARGETS" shall mean the pharmaceutically relevant molecules,
complexes or cell lines nominated by Neurocrine for LabChip Assay development
and screening in accordance with Section 2.3, such as enzymes, binding proteins,
receptors, transporters, or ion channels.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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ARTICLE 2
SCREENING PROGRAM
2.1 CONDUCT OF THE SCREENING PROGRAM. Caliper and Neurocrine will
conduct the Screening Program under the direction of the Screening Committee.
2.2 SCREENING COMMITTEE.
(a) The Screening Committee shall consist of an equal number of
not less than two members from each of Neurocrine and Caliper, appointed and
substituted by each party as necessary from time to time. All decisions of the
Screening Committee shall be unanimous.
(b) The Screening Committee shall meet at such times as shall be
mutually agreed upon by the parties and at a site alternating between Caliper's
and Neurocrine's place of business, or as otherwise mutually agreed. Neurocrine
and Caliper shall each bear the travelling expenses and accommodation charges of
its own members attending meetings of the Screening Committee.
(c) The Screening Committee shall coordinate the activities
carried out under the Screening Program and monitor the progress of the
Screening Program. The Screening Committee shall conduct the Screening Program
as necessary to achieve the overall goals of developing LabChip Assays for the
Targets, screening the LabChip Assays, and discovering Royalty Compounds.
2.3 NOMINATION OF TARGETS.
(a) Neurocrine shall nominate Targets for LabChip Assay
development. The Screening Committee will determine whether the Target and
proposed assay conditions are appropriate for LabChip Assay development. The
Screening Committee will also prioritize Targets for LabChip Assay development
and screening. In the event that development work upon any molecule, complex, or
cell line nominated as a Target pursuant to this Section 2.3(a) is abandoned by
Neurocrine, or LabChip development or screening efforts are discontinued by the
Screening Committee, such molecule, complex, or cell line shall no longer
constitute a Target.
(b) Neurocrine agrees to provide [ * ] Targets for screening
under this Agreement during the Screening Term; provided that [ * ] for LabChip
Assay development and screening.
(c) Caliper shall not be responsible for conducting due diligence
regarding third party intellectual property rights applicable to the Targets.
[ * ]. If Neurocrine is aware of any published or issued third party patent
which it believes applies to
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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such Target, it shall notify Caliper in writing referencing such patent(s)
before LabChip Assay development commences for such Target.
2.4 ASSAY DEVELOPMENT.
(a) The Screening Committee will allocate responsibilities
between the parties for specific assay development tasks. In general, Neurocrine
will develop the appropriate biochemical and/or cellular reagents for the assay
and provide necessary quantities to Caliper for LabChip Assay development and
screening. Initially, Caliper will direct work to adapt the assay into the
LabChip format. Over time, the parties expect that Neurocrine will assume an
increasing role in LabChip Assay development. The parties will arrange for
Neurocrine scientists to train in LabChip Assay development at Caliper and/or
for certain LabChip Assay development tools to be provided to Neurocrine. The
Screening Committee will determine, or establish criteria for others to
determine, when a LabChip Assay is ready for screening on Caliper's high
throughput system.
(b) Caliper and Neurocrine shall each use commercially reasonable
efforts to collaboratively develop LabChip Assays for the Targets selected by
the Screening Committee. The parties intend to [ * ]. Therefore, the parties
have [ * ]. The parties may mutually agree to pursue such research for certain
Targets, but Caliper shall not be required under this Agreement to [ * ].
2.5 COMPOUND LIBRARIES.
(a) Neurocrine shall provide its chemical library of Neurocrine
Compounds to Caliper promptly following the Effective Date. The timing and
details will be mutually agreed, but the library will consist of approximately
[ * ] discrete compounds plated in 96 well master plates of [ * ]. Each plate
will contain [ * ] of compound at a concentration of [ * ] in 100% DMSO. SDF
files will be provided containing structural information and plate mapping.
Neurocrine agrees to provide to Caliper all data in Neurocrine's possession
concerning the library of Neurocrine Compounds including (a) the criteria
utilized by Neurocrine in selecting compounds, (b) commercial or academic
sources of compounds, and (c) chemical structures of all compounds (and records
of tests performed to determine the chemical structures). Caliper will have
rights to use the library of Neurocrine Compounds as further provided in Section
3.4. If Neurocrine modifies its library after this initial transfer, it may
elect at its sole option to update the collection held at Caliper for use in
screening Neurocrine's Targets pursuant to Section 2.5(b).
(b) Neurocrine may at any time during the Screening Term in its
sole discretion elect to provide Neurocrine Limited Compounds to Caliper for use
in the Screening Program, in reasonable quantities and format to be mutually
agreed. Neurocrine Limited Compounds shall only be used by Caliper within the
Screening Program hereunder unless agreed in writing in advance by the parties.
(c) Neurocrine will determine which compounds it elects to have
screened in each LabChip Assay. However, if Caliper has previously screened
certain Caliper Compounds
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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against the Target of such LabChip Assay on behalf of a third party, then
Caliper may [ * ], provided that Caliper shall not [ * ]. Otherwise, Caliper
will provide available information concerning the structures represented in the
Caliper Compound library to facilitate Neurocrine's determination of whether or
not to screen Caliper Compounds. If Caliper elects to screen Caliper Compounds,
the parties may mutually agree on terms on which such data may be provided to
Neurocrine, provided that if either Neurocrine of Caliper elects to have Caliper
Compounds screened against a Target, then Neurocrine shall have the right of
first refusal to purchase such Screening Data. If Neurocrine declines to
purchase such Screening Data, Caliper shall not thereafter [ * ] unless Caliper
provides Neurocrine with [ * ] days written notice of such intent [ * ]. Caliper
shall not utilize any Neurocrine Know-How or data that is subject to non-use
obligations under Section 6.2 or data developed in the Screening Program that is
specific to such Target in [ * ] on behalf of a third party [ * ]. Caliper shall
not disclose any data generated for Neurocrine Targets against Caliper Compounds
to any third party except as may be permitted under Section 3.3. Neurocrine
acknowledges that [ * ].
(d) During the term of this Agreement, the parties may agree to
acquire new libraries of compounds to screen hereunder and to split the compound
supplies and share the cost of acquiring such compounds. Such compounds acquired
by both parties would be deemed to be Neurocrine Compounds for purposes of the
payment provisions of this Agreement.
2.6 SCREENING.
(a) Caliper shall use commercially reasonable efforts to
establish internal screening operations using its Screening Technology as soon
as practicable. As of the Effective Date, [ * ].
(b) All screening will be conducted at Caliper's facility, unless
the parties mutually agree otherwise as discussed in subparagraph (d) below.
Neurocrine will provide the necessary reagents, and Caliper will run the high
throughput screens, according to protocols established by the Screening
Committee. The Screening Committee will determine how the Screening Data will be
processed and presented, along with relevant reaction parameters such as
temperature, currents, concentrations and data for reference or control
compounds. The Screening Committee will also establish any procedures necessary
to validate the Screening Data prior to commencement of actual screening.
Screening Data will be conveyed to Neurocrine and also retained by Caliper, all
in accordance with the rights described in Article 3 below and the payment
provisions of Article 4. Caliper will provide all available information
concerning hit compounds, such as [ * ]. Caliper will not be required to provide
[ * ].
(c) The parties may mutually agree to perform other experiments
in addition to high throughput primary screening, such as [ * ]. Financial and
other business terms for such activities will be negotiated in good faith in
writing in advance and are not included in this Agreement.
(d) Caliper acknowledges that Neurocrine has expressed an
interest in having Caliper transfer screening Instruments to Neurocrine. [ * ].
Caliper will use commercially reasonable efforts to [ * ]. The parties will
confer from time to time regarding the [ * ]. [ * ],
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Caliper agrees to [ * ]. In any event, Caliper will retain the exclusive right
to supply LabChips for use on all screening systems that practice Caliper
Technology.
2.7 NON-EXCLUSIVE COLLABORATION. The Screening Program is a mutually
non-exclusive collaboration. Neurocrine and Caliper are each free to work with
any other company in any area, provided that the Screening Data is used by each
company in accordance with Article 3 below and each party complies with the
other terms of this Agreement, including but not limited to Section 2.5(c).
Neurocrine acknowledges that Caliper may use, or allow third parties to use, the
Screening Technology and Caliper Compounds, to (i) pursue development of drugs
that may compete with drugs Neurocrine is developing, or (ii) develop assays and
screen the same and similar targets as those pursued by Neurocrine, in each case
subject to Section 2.5(c) (Compound Libraries), Article 6 (Confidentiality) and
the other terms of this Agreement. Caliper acknowledges that Neurocrine may
elect to screen certain targets in its own facility rather than in the Screening
Program, and that Neurocrine may collaborate with third parties for screening,
again subject to Article 6 (Confidentiality) and the other terms of this
Agreement.
ARTICLE 3
INTELLECTUAL PROPERTY; SCREENING DATA
3.1 INTELLECTUAL PROPERTY.
(a) Except as expressly provided elsewhere in this Agreement, all
patent applications and issued patents claiming inventions made in the course of
the Screening Program shall be owned by the inventing party, or jointly if
invented jointly. Inventorship shall be determined under U.S patent laws.
(b) Except as expressly provided elsewhere in this Agreement, all
non-patented know-how, including but not limited to discoveries, materials,
techniques, procedures, data and other technical information, that is created in
the course of the Screening Program shall be owned by (for physical materials)
or deemed Confidential Information of (for information) the party that generated
such know-how.
(c) Neurocrine shall retain all of its rights in Neurocrine
Technology and Caliper shall have no rights in any Neurocrine Technology except
the rights expressly granted in this Agreement. Caliper shall retain all of its
rights in Caliper Technology and Neurocrine shall have no rights in any Caliper
Technology except the rights expressly granted in this Agreement.
3.2 NEUROCRINE DRUG DISCOVERY RIGHTS.
(a) Neurocrine shall have the exclusive (even as to Caliper),
worldwide right to use the Screening Data delivered to Neurocrine for each
LabChip Assay to discover, develop and commercialize Products directed against
the Target of such LabChip Assay, subject to the terms of this Agreement.
Neurocrine may assign or sublicense any or all such rights to third parties,
provided all assignees and sublicensees agree in writing to be bound by the
terms of this Agreement as they apply to the transferred rights. Neurocrine will
notify Caliper of any transaction involving such rights within thirty (30) days
of such transaction. If the use of
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Screening Data to discover, develop or commercialize a Product would require the
practice of a Caliper Patent claiming the Target or compounds screened, Caliper
agrees to grant to Neurocrine a [ * ] license under such Caliper Patent for such
use, [ * ]. If Neurocrine wishes to receive [ * ] to any Caliper Patent, or to
have Caliper [ * ], then such matters shall be the subject of good faith
negotiations regarding a separate agreement.
(b) In addition to the exclusive rights described above,
Neurocrine shall also have the non-exclusive, worldwide right to use the
Screening Data in drug discovery efforts directed against all Targets and
pharmaceutical targets other than the Targets screened in the Screening Program.
Neurocrine may sublicense such rights along with other rights to Neurocrine
Technology in connection with agreements to develop or commercialize
Neurocrine's drug products, but may not otherwise assign, sublicense or transfer
such rights.
3.3 CALIPER USE OF SCREENING DATA. Neurocrine grants to Caliper the
exclusive (but for Neurocrine, per Section 3.2) worldwide right to use the data
generated for each LabChip Assay pursuant to this Agreement in drug discovery
efforts directed against pharmaceutical targets other than the Target of such
LabChip Assay, including [ * ], provided that such grant shall not be effective
unless and until [ * ] of this Agreement. The parties recognize that Caliper's
use or disclosure of the Screening Data could [ * ], and Caliper acknowledges
that Neurocrine may [ * ], and in no event shall Neurocrine be required to
[ * ]. Accordingly, the parties shall negotiate in good faith in an effort to
[ * ]. If the parties cannot agree on [ * ], (i) Caliper may elect to [ * ], or
(ii) either party may elect to terminate this Agreement under Section 7.4.
3.4 NEUROCRINE COMPOUNDS. Caliper shall be free to use the Neurocrine
Compounds to be shipped to Caliper pursuant to Section 2.5(a) [ * ]; provided,
however, that the restrictions set forth in Section 2.5(c) with respect to
screening Caliper Compounds against third party targets shall also apply to the
Neurocrine Compounds. In no event may Neurocrine Compounds [ * ] as defined in
Section 2.5(c). Neurocrine represents and warrants to Caliper as of the
Effective Date that (i) it is the sole owner of all of the Neurocrine Compounds
samples provided to Caliper, (ii) Neurocrine has not entered into any agreement
in which a third party retains rights or any economic interest pertaining to any
such compounds, and (iii) there are no Neurocrine Patents or, to Neurocrine's
knowledge without having conducted any investigations, any third party
intellectual property rights, that would be infringed by Caliper's use of the
compounds as described above. No interest in any Neurocrine Patent Rights is
conveyed to Caliper under this Section 3.4.
3.5 LABCHIP IMPROVEMENT INVENTIONS. Neurocrine hereby assigns to Caliper
all right, title and interest in all LabChip Improvement Inventions. If
requested by Caliper, Neurocrine agrees to cooperate in patenting activities for
LabChip Improvement Inventions and to execute any documents necessary to effect
such assignment, at Caliper's expense. Neurocrine also agrees to notify Caliper
of any significant non-patentable improvements Neurocrine may make to the
Screening Technology or to chip-based microfluidic systems during the term of
this
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Agreement, and agrees that Caliper may use such developments in its business
without restriction and transfer or sublicense such knowledge in connection with
the development or commercialization of Caliper's technologies and products.
Caliper hereby grants to Neurocrine a royalty-free, non-exclusive, license to
use LabChip Improvement Inventions for Neurocrine's drug discovery and
development programs, including the right to sublicense such rights in
connection with such programs. This license shall not be construed as conferring
on Neurocrine any license to any other Caliper Patents or Screening Technology.
ARTICLE 4
FINANCIAL TERMS
4.1 SCREENING FEES. Neurocrine shall pay to Caliper the following
amounts within thirty (30) days of receiving an invoice from Caliper, which will
be delivered concurrent with delivery of the Screening Data:
[ * ]/Data Point for the [ * ] LabChip Assays or [ * ], whichever comes
first.
[ * ]/Data Point for each LabChip Assay or Data Point thereafter up to a
total of [ * ] LabChip Assays (including the [ * ] LabChip Assays).
If the parties agree to develop and screen more than [ * ] LabChip
Assays, they will mutually agree on screening fees, milestones, royalties and/or
other financial terms for such work.
4.2 DEVELOPMENT MILESTONES.
(a) Neurocrine shall pay to Caliper the following amounts for
each Royalty Compound within thirty (30) days of the achievement of the
following milestone events by Neurocrine, its Affiliate, sublicensee or other
transferee of rights to a Royalty Compound:
Milestone Event Amount
--------------- ------
Neurocrine Caliper
Royalty Compound Royalty Compound
---------------- ----------------
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
(b) If Neurocrine develops a Neurocrine Royalty Compound that
acts on a Target [ * ] for such Neurocrine Royalty Compound.
(c) Neurocrine shall keep Caliper informed regarding the status
of development efforts directed at each Target screened in a LabChip Assay by
means of semi-
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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annual written reports due January 30 and July 30 each year. Such reports will
continue so long as compounds against any such Targets are being developed.
4.3 ROYALTIES. Neurocrine shall pay to Caliper a royalty on all Net
Sales of Products by Neurocrine, its Affiliates, sublicensees, or other
transferees of rights to a Product as follows, [ * ]:
PRODUCT ROYALTY RATE
Products containing a Caliper Royalty Compound [ * ]
Products containing a Neurocrine Royalty Compound (and no
Caliper Royalty Compound) [ * ]
4.4 ROYALTY PAYMENTS.
(a) Neurocrine will notify Caliper in writing when regulatory
filings are made and when approvals are received to market a Product in each
country, in addition to the semi-annual reports described in Section 4.2(b).
Each payment of royalties shall be accompanied by a statement detailing the
calculation of the amount of royalties due in such period.
(b) Royalty payments and reports for the sale of Products shall
be made for each three month period ending on the last day of March, June,
September and December and shall be due within forty-five (45) days of the end
of each such month. For the purpose of calculating royalties on Net Sales
generated in currencies other than U.S. dollars, such Net Sales shall be
converted into U.S. dollars at the rate of exchange on the last business day of
the relevant royalty period, established by the Wall Street Journal. All royalty
payments owed under this Agreement shall be made by means of wire transfer to
Caliper's account in a bank in the United States to be designated by Caliper.
(c) If Caliper does not receive payment of any sum on the date it
is due, simple interest shall thereafter accrue on the sum due to Caliper until
the date of payment at the per annum rate of three percent (3%) over the then
current prime rate of Citibank in New York City, which rate shall vary
concurrently with any change in the prime rate.
(d) Any withholding tax levied at source relating to the
royalties payable to Caliper under Section 4.3 shall be borne by Caliper.
Neurocrine shall reasonably assist Caliper in obtaining a tax credit under the
applicable taxation treaties and laws, including by providing appropriate
evidence of Caliper's payment of the withholding tax.
4.5 RECORDS AND AUDIT.
(a) During the term of this Agreement and for a period of three
(3) years thereafter, Neurocrine shall keep complete and accurate records
pertaining to the achievement of milestones and the sale or other disposition of
the Products commercialized by it, in sufficient
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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detail to permit Caliper to confirm the accuracy of all payments due hereunder.
In the event Neurocrine grants sublicenses to others to use or sell Products,
Neurocrine shall require the sublicensee and any subsequent sublicensees to
retain records and account for and report achievement of milestones and Net
Sales of Products on the same basis as if such sales were Net Sales of Products
by Neurocrine, and Neurocrine shall pay royalties to Caliper as if such sales
were Net Sales of Products by Neurocrine
(b) Caliper shall have the right to cause an independent,
certified public accountant to audit all records reasonably necessary to confirm
Neurocrine's Net Sales and royalty payments; provided, however, that such
auditor shall not disclose Neurocrine's confidential information to Caliper,
except to the extent such disclosure is necessary to verify the amount of
royalties due under this Agreement.
(c) Such audits may be exercised once a year, within three (3)
years after the royalty period to which such records relate, upon notice to
Neurocrine and during normal business hours.
(d) Caliper shall bear the full cost of such audit unless such
audit discloses an understatement of more than five percent (5%) from the amount
of the Net Sales or royalties previously paid during any payment period. In such
case, Neurocrine shall bear the full cost of such audit and pay the difference
with interest as provided in Section 4.4(c). If such audit discloses an
overpayment of royalties by Neurocrine, such overpayment shall be refunded to
Neurocrine.
ARTICLE 5
DISCLAIMERS; INDEMNIFICATION
5.1 CALIPER DISCLAIMER. THE CALIPER TECHNOLOGY, INCLUDING THE CALIPER
COMPOUNDS, PROVIDED HEREUNDER, IS PROVIDED "AS IS" AND CALIPER EXPRESSLY
DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING
WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF THIRD
PARTIES OR ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICES, IN ALL
CASES WITH RESPECT THERETO. Without limiting the generality of the foregoing,
Caliper expressly does not warrant (i) the success of any study or test
commenced pursuant to the Screening Program, or (ii) the safety or usefulness
for any purpose of Caliper Technology.
5.2 NEUROCRINE DISCLAIMER. THE NEUROCRINE TECHNOLOGY, INCLUDING THE
NEUROCRINE COMPOUNDS AND TARGETS, PROVIDED HEREUNDER ARE PROVIDED "AS IS" AND
NEUROCRINE EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR
IMPLIED, INCLUDING WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY
RIGHTS OF THIRD PARTIES OR ARISING FROM A COURSE OF DEALING, USAGE OR
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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TRADE PRACTICES, IN ALL CASES WITH RESPECT THERETO, EXCEPT AS EXPRESSLY PROVIDED
IN SECTIONS 2.3(c) OR 3.4. Without limiting the generality of the foregoing,
Neurocrine expressly does not warrant the safety or usefulness for any purpose
of the Neurocrine Technology or any Target or any compound developed as a result
of the Screening Program.
5.3 INDEMNIFICATION.
(a) INDEMNIFICATION BY NEUROCRINE.
(i) Neurocrine shall defend, indemnify and hold harmless
Caliper, its Affiliates and sublicensees, and all their officers, directors,
employees and agents from any costs and expenses (including court and
arbitration costs, witness fees and reasonable attorneys' fees), non-appealed or
non-appealable judicial or arbitration damage awards, and settlement payments
agreed with third party claimants payable or owed by Caliper in connection with
any demand, law suits or other legal actions by third parties arising from the
possession, development, manufacture, use, sale or administration of Targets,
compounds, Royalty Compounds or Products by Neurocrine or Neurocrine's
Affiliates or sublicensees.
(ii) In order to maintain the right to be defended,
indemnified and held harmless by Neurocrine, Caliper will:
(iii) notify Neurocrine promptly after learning of a
third party claim;
(iv) allow Neurocrine to manage and control (by way of
intervention or otherwise) the defense and settlement of any such third party
claim against the Caliper, with input from Caliper; and
(v) cooperate with Neurocrine in the defense or the
settlement negotiations of third party claims as reasonable required by
Neurocrine.
(vi) Neurocrine shall not take any position in the
dispute, or agree to any settlement, that adversely affects Caliper's rights or
interest without Caliper's prior written approval (which approval shall not be
unreasonably withheld).
(vii) Neurocrine shall have no obligation to indemnify
Caliper to the extent that a third party claim results from the negligence or
willful misconduct of Caliper.
(b) INDEMNIFICATION BY CALIPER.
(i) Caliper shall defend, indemnify and hold harmless
Neurocrine, its Affiliates and sublicensees, and all their officers, directors,
employees and agents from any costs and expenses (including court and
arbitration costs, witness fees and reasonable attorneys' fees), non-appealed or
non-appealable judicial or arbitration damage awards, and settlement payments
agreed with third party claimants payable or owed by Neurocrine in connection
with any demand, law suits or other legal actions by third parties arising from
Caliper's [ * ].
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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(ii) In order to maintain the right to be defended,
indemnified and held harmless by Caliper, Neurocrine will:
(iii) notify Caliper promptly after learning of a third
party claim;
(iv) allow Caliper to manage and control (by way of
intervention or otherwise) the defense and settlement of any such third party
claim against the Neurocrine, with input from Neurocrine; and
(v) cooperate with Caliper in the defense or the
settlement negotiations of third party claims as reasonable required by Caliper.
(vi) Caliper shall not take any position in the dispute,
or agree to any settlement, that adversely affects Neurocrine's rights or
interest without Neurocrine's prior written approval (which approval shall not
be unreasonably withheld).
(vii) Caliper shall have no obligation to indemnify
Neurocrine to the extent that a third party claim results from the negligence or
willful misconduct of Neurocrine.
ARTICLE 6
CONFIDENTIALITY
6.1 DISCLOSURE OF CONFIDENTIAL INFORMATION. Confidential Information
disclosed by one party to the other pursuant to and during the term of this
Agreement shall be subject to the confidentiality obligations set forth below:
(a) if disclosed in writing and marked "confidential" or
"proprietary" by the disclosing party prior to or at the time of the disclosure
thereof; or
(b) if within 30 days after disclosure of Confidential
Information, the disclosing party informs the receiving party in writing of the
confidential nature of the disclosed information, describing such information
and referencing the place and date of the oral, visual or written disclosure and
the names of the employees or officers of the receiving party to whom such
disclosure was made.
6.2 CONFIDENTIALITY AND NON-USE. Except to the extent expressly
authorized by this Agreement or unless otherwise agreed in writing by the
parties, each party agrees that, during the Screening Term and for five (5)
years thereafter, it shall keep confidential and shall not publish or otherwise
disclose and shall not use for any purpose other than as provided for in this
Agreement any Confidential Information received from the other party, unless the
receiving party can demonstrate by competent proof that such Confidential
Information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure by the other party;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving party;
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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(c) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of such Agreements;
(d) is obtained by the receiving party from a third party who is
lawfully in possession of such Confidential Information and is not subject to an
obligation of confidentiality or non-use owed to the disclosing party; or
(e) was independently discovered or developed by the receiving
party without the use of Confidential Information belonging to the disclosing
party.
6.3 AUTHORIZED DISCLOSURE.
(a) Each party may disclose Confidential Information received
from the other party to Affiliates, sublicensees and other commercial partners
for the purpose of exercising rights provided under this Agreement, provided
such recipients agree to be bound by similar terms of confidentiality. In
addition, each party may disclose Confidential Information of the other party to
the extent such disclosure is reasonably necessary to (i) comply with applicable
securities laws and regulations and other applicable governmental regulations,
(ii) file or prosecute patents, or (iii) prosecute or defend litigation.
Notwithstanding the foregoing, Caliper shall have no right to disclose
Confidential Information that could [ * ], and Neurocrine shall have no right to
disclose Confidential Information specific to [ * ].
(b) Notwithstanding the foregoing, in the event a party is
required to make a disclosure of the other party's Confidential Information
pursuant to subparagraph (a) above, it will, except where impracticable, give
reasonable advance notice to the other party of such disclosure and use best
efforts to secure confidential treatment of such information. In any event, the
parties agree to take all reasonable action to avoid disclosure of Confidential
Information hereunder.
6.4 PUBLICITY. Except as otherwise provided herein or required by law,
no party shall originate any publication, news release or other public
announcement, written or oral, whether in the public press, or stockholders'
reports, or otherwise, relating to the material terms of or the performance
under this Agreement, without the prior written approval of the other party,
which approval shall not be unreasonably withheld, but in no case shall be
withheld for longer than fifteen (15) days; provided, however, that each party
may disclose the existence of and the general nature of this Agreement.
ARTICLE 7
TERM; TERMINATION
7.1 TERM. This Agreement shall commence upon the Effective Date and
expire upon the completion of the Screening Term. This Agreement may not be
terminated unilaterally by either party except pursuant to Sections 7.2 and 7.3
below.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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7.2 TERMINATION FOR MATERIAL BREACH. If either party materially breaches
this Agreement, and the breaching party has not within sixty (60) days of notice
of breach from the non-breaching party (i) cured the breach or (ii) initiated
good faith efforts to cure such breach to the reasonable satisfaction of the
non-breaching party, the non-breaching party may terminate this Agreement upon
expiration of such sixty (60)-day period.
7.3 TERMINATION FOR TECHNICAL REASONS. Either party may terminate this
Agreement upon [ * ] written notice to the other party at any time after the
first anniversary of this Agreement if it becomes reasonably apparent that
technical constraints of LabChip Assay development and Caliper's screening
capacity will make it commercially impractical or impossible to perform LabChip
Assay development and screening [ * ] Targets in accordance with the terms of
this Agreement.
7.4 TERMINATION UNDER SECTION 3.3. Either party may terminate this
Agreement upon sixty (60) days written notice to the other party if the parties
are unable to reach agreement under Section 3.3.
7.5 EFFECT OF TERMINATION. In the event this Agreement is terminated by
either party before Screening Data is delivered for the [ * ] LabChip Assay, the
parties shall negotiate in good faith the terms and conditions under which
Caliper may retain a portion of the Neurocrine Compounds. In the event the
parties are unable to reach an agreement after sixty (60) days from the date of
termination, [ * ].
7.6 SURVIVING RIGHTS. The obligations and rights of the parties under
Article 3 and Sections 4.2 through 4.5, 5.3, 6.2, 6.3, 7.4, 7.5, 8.3 and 8.5
shall survive expiration or termination of this Agreement.
ARTICLE 8
MISCELLANEOUS
8.1 WAIVER. No waiver by either party hereto of any breach or default of
any of the covenants or agreements herein set forth shall be deemed a waiver as
to any subsequent or similar breach or default.
8.2 ASSIGNMENT. Neither party shall assign any of its rights and
obligations hereunder except (i) as incident to the merger, consolidation,
reorganization or acquisition of stock affecting actual voting control or of
substantially all of the assets of the assigning party or the line of business
to which this Agreement relates, or (ii) to an Affiliate; or (iii) after
termination or expiration of the Screening Term, Caliper may assign its rights
to receive milestone and royalty payments to any third party who is not a
competitor of Neurocrine; provided, however, that in no event shall either
party's rights and obligations hereunder be assigned without prior written
notice to the other party. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their permitted successors and assigns.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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8.3 NOTICES. Any notice or other communication required or permitted to
be given to either party hereto shall be in writing and shall be deemed to have
been properly given and to be effective on the date of delivery if delivered in
person or by facsimile or fourteen (14) days after mailing by registered or
certified airmail, postage paid, to the other party at the following address:
In the case of Caliper: Caliper Technologies Corp.
0000 Xxxxxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Fax: (000) 000-0000
Attention: Chief Operating Officer
In the case of Neurocrine: Neurocrine Biosciences, Inc.
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attention: Chief Executive Officer
8.4 AMENDMENT. No amendment or modification hereof shall be valid or
binding upon the parties unless made in writing and signed by authorized
representatives of both parties.
8.5 CHOICE OF LAW; RESOLUTION OF DISPUTES.
(a) This Agreement shall be governed exclusively by and construed
according to the laws of California, U.S.A., excluding its choice of law
provisions.
(b) All disputes which may arise between the parties hereto in
relation to the interpretation or administration of this Agreement shall be
first referred to the Screening Committee for resolution. Any disputes which the
Screening Committee is unable to resolve within a reasonable period of time
shall be referred to the Chief Executive Officers or the Presidents of the
respective parties, whether before or after termination or expiration of this
Agreement. If such officers are unable to resolve the matter, either party may
elect to pursue any available dispute resolution forum.
8.6 FORCE MAJEURE. Any delays in performance by any party under this
Agreement shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the party
affected, including but not limited to acts of God, embargoes, governmental
restrictions, strikes or other concerted acts of workers, fire, earthquake,
flood, or explosion. The party suffering such occurrence shall immediately
notify the other party as soon as practicable and any time for performance
hereunder shall be extended by the actual time of delay caused by the
occurrence.
8.7 INDEPENDENT CONTRACTORS. In making and performing this Agreement,
Neurocrine and Caliper are, and shall act at all times as independent
contractors and nothing contained in this Agreement shall be construed or
implied to create an agency, partnership or employer and employee relationship
between Caliper and Neurocrine. At no time shall one party make commitments or
incur any charges or expenses for or in the name of the other party.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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8.8 SEVERABILITY. If any term, condition or provision of this Agreement
is held to be unenforceable for any reason, it shall, if possible, be
interpreted rather than voided, in order to achieve the intent of the parties to
this Agreement to the extent possible. In any event, all other terms, conditions
and provisions of this Agreement shall be deemed valid and enforceable to the
full extent.
8.9 CUMULATIVE RIGHTS. The rights, powers and remedies hereunder shall
be in addition to, and not in limitation of, all rights, powers and remedies
provided at law or in equity, or under any other agreement between the parties.
All of such rights, powers and remedies shall be cumulative, and may be
exercised successively or cumulatively.
8.10 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
8.11 ENTIRE AGREEMENT. This Agreement embodies the final and complete
understanding of the parties with respect to the subject matter hereof and shall
supersede all previous communications, representations or understandings, either
oral or written, between the parties relating to the subject matter hereof.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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IN WITNESS WHEREOF, both parties have executed this Agreement, in
duplicate originals, by their respective officers hereunto duly authorized, as
of the day and year set forth in the introductory paragraph of this Agreement.
CALIPER TECHNOLOGIES CORP. NEUROCRINE BIOSCIENCES, INC.
By: /s/ Xxxxxx Xxxx By: /s/ Xxxx Xxxxx
--------------------------- ----------------------------
Name: Xxxxxx Xxxx Name: Xxxx Xxxxx
Title: Chief Operating Officer Title: CEO
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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