EXHIBIT 10.16
***Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4),
200.83 and 230.406
COLLABORATIVE RESEARCH
AND
LICENSE AGREEMENT
BETWEEN
SENOMYX, INC.
AND
AURORA BIOSCIENCES CORPORATION
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COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the Effective Date by and between SENOMYX,
INC., a Delaware corporation having offices at 00000 Xxxxx Xxxxxx Xxxxx Xxxx, Xx
Xxxxx, Xxxxxxxxxx 00000 ("Senomyx"), and AURORA BIOSCIENCES CORPORATION, a
Delaware corporation having offices at 00000 Xxxxxxxxx Xxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000 ("Aurora").
RECITALS
WHEREAS, Senomyx conducts research in the field of chemosensation, an objective
of which is to discover potential biological targets and develop assays for use
in taste, olfaction and pheromone detection; and
WHEREAS, Aurora develops assays and screening systems and related
biologies/chemistries used therein; and
WHEREAS, Senomyx and Aurora are interested in collaborating in the development
of assays and screening systems to identify and develop small molecules for use
in consumer products and therapeutics.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing premises and of the covenants,
representations and agreements set forth below, the parties hereby agree as
follows:
1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
"Agreement" means this agreement, together with all exhibits attached hereto, as
the same may be amended or supplemented from time to time hereafter by a written
agreement duly executed by authorized representatives of each party.
"Assay Platform" means one or more cell lines or biochemical screens developed
under the collaboration by Aurora and/or Senomyx for Targets, as described in a
Work Plan.
"Aurora Compound" means any chemical Controlled by Aurora.
"Aurora Know-How" means all Know-How related to the Assay Platforms or Aurora
Reporters, which is not covered by the Aurora Patent Rights, but is necessary to
practice the licenses granted under this Agreement, and which is Controlled by
Aurora as of the Effective Date or developed by Aurora in the course of
performing activities under a Work Plan.
"Aurora Patent Rights" mean all Patent Rights that claim Assay Platforms or
Aurora Reporters, which are necessary to practice the licenses granted under
this Agreement, and which are
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Controlled by Aurora as of the Effective Date or developed by Aurora in the
course of performing activities under a Work Plan, but excluding any Joint
Patent Rights. The Aurora Patent Rights as of the Effective Date are set forth
on Exhibit 1.
"Aurora Reporter" means any of the reporters described in Exhibit 3.
"Aurora Screening Program" has the meaning set forth in Section 2.4.
"Aurora Technology " means Aurora Patent Rights and Aurora Know-How.
"Collaborative Period" means the period beginning on the Effective Date and
ending [...***...], unless terminated earlier in accordance with Section 10.2,
10.3 or 10.4.
"Compound Supply" has the meaning set forth in Section 2.4.1.
"Confidential Information" means all information, Inventions and Know-How
disclosed by one party to the other party pursuant to this Agreement, including,
without limitation, information and material (whether or not patentable)
regarding technology, products, research, development, manufacturing, marketing,
finances, personnel or other business information or objectives which is
designated as confidential in writing by the disclosing party, whether by letter
or by the use of an appropriate stamp or legend, prior to or at the time any
such material, trade secret or other information is disclosed by the disclosing
party to the other party. Notwithstanding the foregoing to the contrary,
Know-How or other information which is orally, electronically or visually
disclosed by a party, or is disclosed in writing without an appropriate letter,
stamp or legend, shall constitute Confidential Information of a party if the
disclosing party, within thirty (30) days after such disclosure, delivers to the
other party a written document or documents describing the Know-How or other
information and referencing the place and date of such oral, visual, electronic
or written disclosure and the names of the persons to whom such disclosure was
made.
"Control" or "Controlled" means, with respect to intellectual property,
possession by a party, as of the Effective Date or during the Collaborative
Period, of the ability to grant a license or sublicense in accordance with the
terms of this Agreement, without violating the terms of any agreement by such
party with any Third Party that is in effect on the Effective Date.
"Derivative" means a chemical that has a structure based on data derived from a
Hit; provided that such chemical has the same modulating effect as such Hit when
tested in the same assay which was used to identify such Hit. It is understood
that Senomyx will test chemicals having a structure based on data derived from a
Hit in the same assay which was used to identify such Hit. It is further
understood that a Derivative includes a chemical derived from another
Derivative.
"Development Compound" means any Hit or Derivative selected for development as a
Product and for which studies necessary for an IND filing (e.g., good laboratory
practice safety studies) have been initiated.
"Effective Date" means the date that this Agreement is signed by the last party
to sign below.
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"Excluded Compounds" has the meaning set forth in Section 2.4.4.
"FDA" means the United States Food and Drug Administration, or any successor
agency having regulatory jurisdiction over the manufacture, distribution and
sale of drugs in the United States or the equivalent governmental agency in any
other jurisdiction.
"Field I" means [...***...].
"Field II" means [...***...].
"Full Time Equivalent" or "FTE" means the full time equivalent of one (1) Aurora
scientist, based on a minimum of [...***...] hours per year.
"GAAP" means generally accepted accounting principles consistently applied.
"Hit" means any chemical (e.g. a small molecule or protein) identified or
discovered in the course of screening such chemical by or for Senomyx using an
assay which incorporates or uses the Aurora Technology or an Aurora Reporter.
"IND" means an Investigational New Drug Application filed with the FDA to
commence human clinical testing of a Product.
"Internal Research" means self-funded or Third Party funded biological research
conducted by Senomyx at the premises of Senomyx, including the development of
screens, the performance of screening, the cloning of genes and the validation
of Targets. Notwithstanding the foregoing, Internal Research does not include
[...***...].
"Invention" means any new and useful process, method, or composition of matter,
or improvement thereto, whether or not patentable.
"Joint Invention" has the meaning set forth in Section 4.3.4.
"Joint Patent Rights" means all Patent Rights containing one or more claims to a
Joint Invention.
"Know-How" means information and data, whether or not patentable, which is not
generally known to the public, including, without limitation, designs, concepts,
formulae, techniques, practices, processes, methods, knowledge, skill,
experience, expertise, technical information and data, including
pharmacological, toxicological and clinical test data, analytical and quality
control data, patent and legal data or marketing, sales and manufacturing data.
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"Licensee" means any Third Party to whom Senomyx or any of its Affiliates grants
a license, sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development Compounds.
"Licensor" means any Third Party that grants Senomyx or any of its Affiliates a
license, sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development Compounds.
"Materials" mean any reagents, promoters, enhancers, vectors, plasmids, genes,
polynucleotides, cell lines, proteins and fragments thereof, peptides, antigens,
antibodies, antagonists, agonists, inhibitors, compounds and chemicals.
"NDA" means a New Drug Application or the equivalent, and all supplements
pursuant to the requirements of the FDA, including all documents, data and other
information concerning Products which are necessary for FDA approval to market a
Product, or the equivalent governmental approval in any other country.
"Net Sales" means, with respect to a Product, the gross amount invoiced by
Senomyx, its Affiliates, Licensors, Licensees, and/or permitted sublicensees on
sales or other transfers of the Product, less the following items:
(i) allowances (actually paid and limited to rejections, returns,
and prompt payment and volume discounts granted to customers of
Products, whether in cash or Products in lieu of cash);
(ii) freight, transport packing, insurance charges associated with
transportation; and
(iii) taxes, tariff or import/export duties based on sales when
included in gross sales, but not value-added taxes or taxes
assessed on income derived from such sales.
Where Senomyx distributes to an Affiliate, Licensor, Licensee, a joint venture
or permitted sublicensees for end use by such Affiliate, Licensor, Licensee,
joint venture or permitted sublicensees then such distribution will be
considered a sale at list price normally charged to independent Third Parties
and Aurora will be entitled to collect a royalty on such sale in accordance with
Section 3. Such amounts shall be determined from the books and records of
Senomyx, its Affiliates, Licensor, Licensees, joint venture and/or its permitted
sublicensees, maintained in accordance with GAAP.
"Patent Rights" means all rights associated with all United States or foreign
(including regional authorities such as the European Patent Office) regular or
provisional patents or patent applications, including any continuation,
continuation-in-part, or division thereof or any substitute application therefor
or equivalent thereof, and any patent issuing thereon, including any reissue,
reexamination or extension thereof and any confirmation patent or registration
patent or patent of additions based on any such patent.
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"Phase II Clinical Trial" means studies in humans of the safety, dose ranging
and efficacy of a Product in Field I.
"Product" means any composition of matter which incorporates a Development
Compound or is manufactured using the Aurora Technology or an Aurora Reporter.
"Royalty Term" means, in the case of any Product and as to any country, the
period of time commencing [...***...] and ending upon [...***...] in such
country.
"Senomyx Compound" means any chemical Controlled by Senomyx.
"Senomyx Know-How" means all Know-How related to the Assay Platforms (including
the Targets), which is not covered by the Senomyx Patent Rights, but is
necessary to accomplish the activities to be conducted under this Agreement, and
which is Controlled by Senomyx as of the Effective Date or developed by Senomyx
in the course of performing activities under a Work Plan.
"Senomyx Patent Rights" means all Patent Rights which are necessary to
accomplish the activities to be conducted under this Agreement, and which are
Controlled by Senomyx as of the Effective Date or developed by Senomyx in the
course of performing activities under a Work Plan, but excluding any Joint
Patent Rights. The Senomyx Patent Rights as of the Effective Date are set forth
on Exhibit 2.
"Senomyx Technology" means Senomyx Patent Rights and Senomyx Know-How.
"Steering Committee" has the meaning set forth in Section 2.1.
"Stock Purchase Agreement" means the stock purchase agreement set forth on
Exhibit 4.
"Target" means a target identified in taste, olfaction and pheromone detection
and listed on Exhibit 5, as modified from time to time by the Steering Committee
as provided under Section 2.2.
"Term" has the meaning set forth in Section 10.1.
"Third Party" means any person or entity other than Aurora or Senomyx.
"Tracking Record" has the meaning set forth in Section 5.5.2.
"Ultra-High Throughput Screening System" or "UHTSS(TM) System" means a
technology platform sold by Aurora that has the capability of screening over
100,000 compounds per day, accessed from a store of compounds, with the
additional ability to capture and store large volumes of information.
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"Validation" has the meaning set forth in Section 2.3.3.
"Validation Criteria" means the parameters, standard and results established by
the Steering Committee for each Assay Platform based on the performance criteria
provided in Exhibit 6.
"Voltage Ion Probe Reader" or "VIPR" means the instrumentation described in
Exhibit 7.
"Voltage Ion Probe Reader II" or "VIPR II" means the instrumentation described
in Exhibit 7.
"Work Plan" has the meaning set forth in Section 2.3.1.
2. COLLABORATION, ASSAY PLATFORM DEVELOPMENT AND SCREENING PROGRAM
2.1 STEERING COMMITTEE. No later than ten (10) days after the Effective
Date, the parties shall establish a joint steering committee (the
"Steering Committee"). The Steering Committee shall prepare and manage
each Work Plan. The Steering Committee shall consist of two (2)
representatives designated by Senomyx and two (2) representatives
designated by Aurora. Each representative to the Steering Committee
will have one vote. The Steering Committee will meet no later than
thirty (30) days after the Effective Date and at least four (4) times
per year using mutually agreed upon meeting locations and formats
including tele- and video-conferencing. On an alternating basis, one
party shall promptly prepare and deliver to the members of the Steering
Committee minutes of such meetings for review and approval of both
parties. Aurora and Senomyx shall flip a coin to determine who shall
prepare the minutes for the first Steering Committee meeting. Decisions
in the Steering Committee will be made by unanimous vote, at a meeting
where all four (4) voting representatives are present. All unresolved
disputes will be settled in accordance with Section 11.13, or as
otherwise mutually agreed upon in writing.
2.2 TARGET SELECTION. The Steering Committee may, in its sole discretion,
add and/or remove Targets from the list of Targets set forth on Exhibit
5.
2.3 ASSAY PLATFORM PROGRAM.
2.3.1 WORK PLAN. The Steering Committee will prepare and agree upon a written
plan for each Assay Platform (a "Work Plan"), which sets forth the
respective responsibilities of the parties for the development of each
Assay Platform. Each Work Plan will contain a description of the
specific deliverables and documentation to be produced, any Aurora
Reporter to be used, the dates by which such activities are expected to
be accomplished by the parties, and Validation Criteria for each Assay
Platform.
2.3.2 ASSAY PLATFORM DEVELOPMENT. Within ten (10) days following the approval
of each Work Plan, Aurora will commence the development of the
applicable Assay Platform using
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reasonable efforts, consistent with commercial business practices, and
using the resources provided under Section 3.1. All work under a Work
Plan shall be performed in accordance with the provisions of this
Agreement.
2.3.3 VALIDATION OF ASSAY PLATFORMS. When Aurora completes the development of
an Assay Platform, a written report describing the Assay Platform and
the data demonstrating compliance with the Work Plan, including the
Validation Criteria, shall be provided by Aurora to the Steering
Committee. The Steering Committee will either approve the report and
accept each Assay Platform according to the Validation Criteria
("Validation") or decide on additional work, if any, necessary for
Validation. Within thirty (30) days of such Validation of an Assay
Platform developed by Aurora, and as requested in writing by Senomyx,
Aurora shall transfer such Assay Platform to Senomyx.
2.4 SCREENING BY AURORA. During the Collaborative Period and for
[...***...] thereafter, Senomyx may purchase from Aurora contract
screening pursuant to Section 3.3. Aurora will screen Aurora Compounds
or Senomyx Compounds as determined by the Steering Committee and
provide re-tests of putative Hits, and determination of crude EC50s or
IC50s as determined by the Steering Committee (an "Aurora Screening
Program").
2.4.1 SENOMYX COMPOUNDS. Senomyx shall, [...***...], supply Aurora with
Senomyx Compounds for each Aurora Screening Program. Any Senomyx
Compounds supplied by Senomyx for use in an Aurora Screening Program
will be [...***...], or another format mutually agreed to in writing by
the parties (the "Compound Supply"). The quantities needed for each
screen will be specified in writing in the Work Plan. Aurora agrees not
to transfer the Compound Supply to any Third Party or to use it for any
purpose other than developing or screening Assay Platforms without
Senomyx's prior written consent. Aurora will return to Senomyx any
unused Compound Supply.
2.4.2 AURORA COMPOUND SUPPLY. Aurora will make available to Senomyx
[...***...] Aurora Compounds for use in Aurora Screening Programs. The
Steering Committee will select, on an entire microtiter plate-by-entire
microtiter plate basis, Aurora Compounds for use in an Aurora Screening
Program. Information concerning Aurora Compounds shall be owned
exclusively by Aurora and shall be treated as Confidential Information
of Aurora hereunder.
2.4.3 SCREENING PROGRAM REPORTS. During the course of an Aurora Screening
Program, individuals from Senomyx and Aurora, appointed by the Steering
Committee, will discuss and review monthly, if not more frequently, the
progress and any issues relating to such Aurora Screening Program.
During the Collaboration Period, the Steering Committee will review
data and prepare summary quarterly reports for each Aurora Screening
Program in progress at that time. Each progress report shall provide a
written
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update of work performed, any Hits identified, and all available
supporting electronic data.
2.4.3 DESIGNATION OF EXCLUDED COMPOUNDS. At least thirty (30) days prior to
commencement of any Aurora Screening Program, Senomyx shall submit to
Aurora in writing a list of the Excluded Compounds designated for a
particular screen to be used as a positive control in such screens,
which list is subject to the approval of the Steering Committee, which
approval shall not be unreasonably withheld.
2.4.5 OWNERSHIP OF RESULTS AND DATA. All results and data generated from
screening the Compound Supply by or for Senomyx under this Agreement
shall be owned exclusively by Senomyx and shall be treated as Senomyx
Confidential Information hereunder. Aurora will not provide to a Third
Party the Materials provided by Senomyx to Aurora hereunder.
2.5 DEVELOPMENT OF PRODUCTS. Senomyx will be responsible, at [...***...]
expense, for all formulation and regulatory approval of Products
arising out of this Agreement. Senomyx shall use reasonable efforts,
consistent with commercial business practices, to develop any Product,
to perform all regulatory activities relating to the manufacture, use
or sale of any Product, and to commercialize and market any Product in
any country. All regulatory filings made or filed by Senomyx for any
Development Compound or Product [...***...]. [...***...], Aurora shall
cooperate to the extent reasonably necessary to permit Senomyx to
perform the foregoing activities.
2.6 SUPPLY OF VIPR AND OPTION TO UPGRADE TO VIPR II. Within [...***...]
after the Effective Date, Aurora will deliver a VIPR to the Senomyx
facility in La Jolla, California, or another Senomyx location mutually
agreed upon by the parties, and within [...***...] of receipt of such
VIPR, Aurora shall install and commission it to demonstrate
functionality as to the instrumentation specifications listed in
Exhibit 7. On or before [...***...], and [...***...], Senomyx shall
have the option to exchange the VIPR for a VIPR II by providing written
notice to Aurora and making the additional payment to Aurora in
accordance with Section 3.9. Within [...***...] of receipt of such
notice, Aurora will deliver a VIPR II to the Senomyx facility in La
Jolla, California, or another Senomyx location mutually agreed by the
parties, and within [...***...] of receipt of such VIPR II, Aurora
shall (i) install and commission the VIPR II to demonstrate
functionality as to the instrumentation specification listed in Exhibit
7, and (ii) return the VIPR to Aurora. Subject to payment of the
warranty fee set forth in Section 3.9, Aurora will provide to Senomyx
Aurora's then-current standard warranty as described on Exhibit 7 for
such VIPR or VIPR II for a period of [...***...]
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[...***...] from the date of delivery of the VIPR, provided that such
warranty may be extended as provided for in Section 3.9.
3. FINANCIAL TERMS
3.1 ANNUAL RESEARCH SUPPORT. Each year during the Collaborative Period,
Senomyx shall pay Aurora for [...***...] FTEs at an annual rate of
[...***...] per FTE. These payments shall be made in advance on an
equal quarterly basis. The first payment shall be made within ten (10)
business days following the Effective Date. These payments are
inclusive of overhead, labor, and supplies; PROVIDED, HOWEVER, that in
any given year, a portion of these payments may be allocated to cover
the cost of high throughput screening of Senomyx Compounds by Aurora
[...***...] with a commensurate reduction in the allocation of payments
for FTEs. These payments shall not cover the cost associated with
providing the Compound Supply to Aurora or other unanticipated
materials, as agreed to by the parties in advance in writing, or the
costs of high throughput screening for [...***...]. Additional funding,
if any, shall be proposed by the Steering Committee and agreed to by
the parties in advance in writing.
3.2 VALIDATION PAYMENTS. Senomyx will pay to Aurora the following
non-creditable, non-refundable milestone payments within thirty (30)
days following achievement of the following milestone events:
MILESTONE PAYMENT
[...***...] [...***...]
[...***...] [...***...]
[...***...] [...***...]
3.3 SCREENING BY AURORA. Aurora will screen Aurora Compounds and Senomyx
Compounds under each Aurora Screening Program in accordance with
Section 2.4. Senomyx will pay Aurora for such screening within thirty
(30) days after the completion of such screening. For screening
conducted by Aurora using its ultra-high throughput screening system,
Senomyx will pay Aurora [...***...], with [...***...]. For screening
conducted by Aurora using its VIPR, Senomyx will pay Aurora
[...***...], with [...***...]. The parties will negotiate in good faith
the payments To be made by Senomyx to Aurora for Aurora Compounds which
may be licensed to Senomyx hereunder, including, without limitation,
[...***...].
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3.4 MILESTONES AND ROYALTIES.
3.4.1 MILESTONE PAYMENTS FOR FIELD I. Senomyx will pay to Aurora the
following non-creditable, non-refundable milestone payments for each
Product in Field I within thirty (30) days following achievement of the
following milestone events:
MILESTONE PAYMENT
[...***...] [...***...]
[...***...] [...***...]
[...***...] [...***...]
[...***...] [...***...]
The foregoing milestones apply only to the first chemical developed for
each Product. Under no circumstances shall Senomyx be obligated to pay
any of the foregoing payments to Aurora more than once for each
Product.
3.4.2 ROYALTY ON NET SALES. Senomyx will pay to Aurora a royalty equal to
[...***...] of Net Sales for each Product in Field I during the Royalty
Term.
3.4.3 TRADE SECRET MILESTONES AND ROYALTY. The parties acknowledge that the
principal value contributed by Aurora under this Agreement is the
enhanced probability of identifying leads for Products, such as
consumer products enhancing taste and olfaction (or other products
having commercial value), and the potential to generate multiple leads,
either or both of which the parties reasonably believe will lessen the
time required to bring products to market and increase the efficiency
of discovery and development processes and technologies. Additionally,
the parties acknowledge that Aurora may not Control Patent Rights
covering the manufacture, sale, use or importation of a particular
Development Compound or Product. Senomyx acknowledges and agrees that
the value it receives hereunder is in the access and use of a Assay
Platform or Aurora Reporter. Accordingly, Senomyx agrees to pay
[...***...].
3.5 SUPPLY OF AURORA REPORTERS. Within [...***...] of a written purchase
order from Senomyx, Aurora will supply to Senomyx Materials pertaining
to the Aurora Reporters. Senomyx will be charged for all Materials so
delivered at Aurora's then-current list price less [...***...];
PROVIDED, HOWEVER, that Senomyx will purchase [...***...], as defined
on Exhibit 3, on or before [...***...], at a price of [...***...].
Senomyx will pay for all Materials so ordered within thirty (30) days
after delivery of such Materials to Senomyx.
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3.6 AURORA STOCK PURCHASE. Within ten (10) days following the Effective
Date, Aurora will purchase four million eight hundred thousand dollars
($4,800,000) of Senomyx Series C preferred stock under terms and
conditions consistent with its most recent round of financing and
pursuant to the Stock Purchase Agreement at a price of four dollars,
eighty cents ($4.80) per share.
3.7 LICENSE FEE. In partial consideration for the licenses granted under
Section 4.1, Senomyx will pay to Aurora a non-creditable,
non-refundable license fee of [...***...] within ten (10) days
following the Effective Date.
3.8 PURCHASE OF VIPR AND UPGRADE TO VIPR II. In consideration for the VIPR,
Senomyx shall pay to Aurora [...***...] payable in two equal
installments: (i) [...***...] within [...***...] after delivery of such
VIPR to Senomyx, and (ii) [...***...] within [...***...] after the
commissioning of such VIPR at Senomyx. If Senomyx exercises its option
To exchange the VIPR for a VIPR II, then Senomyx will pay to Aurora an
additional payment of [...***...] within [...***...] after the
commissioning of such VIPR II at Senomyx. In consideration for the
[...***...] VIPR warranty provided under Section 2.6, Senomyx shall pay
to Aurora a warranty fee of [...***...] within [...***...] after the
first anniversary of the date of delivery of the VIPR to Senomyx.
Senomyx may, at its sole discretion, extend the warranty on the VIPR or
the VIPR II beyond such [...***...] period for [...***...] per year
payable on [...***...] thereafter.
4. LICENSES; INTELLECTUAL PROPERTY RIGHTS
4.1 GRANT OF RIGHTS FROM AURORA TO SENOMYX.
4.1.1 NON-EXCLUSIVE LICENSE TO USE AURORA TECHNOLOGY IN ASSAY PLATFORMS.
Subject to the terms and conditions of this Agreement, Aurora hereby
grants to Senomyx a [...***...] license, without the right to grant
sublicenses, under the Aurora Technology to use the Assay Platforms
[...***...].
4.1.2 EXCLUSIVE LICENSE TO USE AURORA TECHNOLOGY IN ASSAY PLATFORMS
[...***...]. Subject to the terms and conditions of this Agreement,
Aurora hereby grants to Senomyx a [...***...] license, without
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the right to grant sublicenses, under the Aurora Technology to use the
Assay Platforms [...***...].
4.1.3 NON-EXCLUSIVE LICENSE TO USE AURORA REPORTERS [...***...]. Subject to
the terms and conditions of this Agreement, AURORA hereby grants to
Senomyx a [...***...] license, without the right to grant sublicenses,
under the Aurora Technology to use the Aurora Reporters [...***...].
4.1.4 EXCLUSIVE LICENSE TO USE AURORA REPORTERS [...***...]. Subject to the
terms and conditions of this Agreement, Aurora hereby grants to Senomyx
a [...***...] license, without the right to grant sublicenses, under
the Aurora Technology to use the Aurora Reporters [...***...].
4.1.5 NON-EXCLUSIVE LICENSE TO USE VIPR AND VIPR II [...***...]. Subject to
the terms and conditions of this Agreement, including the payment
obligations set forth in Section 3.9, Aurora hereby grants to Senomyx a
[...***...] license, without the right to grant sublicenses, under the
Aurora Technology to use the VIPR or VIPR II, if applicable,
[...***...].
4.1.6 LICENSE RESTRICTIONS. Except as expressly licensed in this Section 4.1,
Senomyx covenants not to use the Assay Platforms, Aurora Technology or
Aurora Reporters for any purpose. Aurora will permit Senomyx to
transfer Materials containing Aurora Reporters or Aurora Technology to
a Third Party under terms mutually agreed upon in writing by Aurora and
Senomyx prior to such transfer; PROVIDED, HOWEVER, that such Third
Party is a bona fide licensee of Aurora under the Aurora Patent Rights.
4.1.7 EXCLUSIVE LICENSE EXCEPTIONS.
4.1.7.1 Notwithstanding anything contained herein to the contrary, the
exclusive licenses granted by Aurora to Senomyx in this Section 4 are
subject to all previous licenses granted by Aurora under the Aurora
Technology, which list of licensees, as of the Effective Date,
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includes, but is not limited to, [...***...]. Additionally, Aurora will
not be precluded by the grant of such exclusive licenses from licensing
the Aurora Technology in [...***...] for use with the Targets to future
licensees, but only when such license is granted in connection with the
purchase of a UHTSS(TM) System from Aurora. Aurora will notify Senomyx
in writing if and when such a license is granted.
4.1.7.2 Notwithstanding the exclusive licenses granted by Aurora to Senomyx in
this Section 4, Aurora will not be precluded from selling and/or
providing Aurora Reporters to academic, government and other
not-for-profit organizations. Aurora may grant licenses under the
Aurora Technology to such not-for-profit organizations to conduct
research using the Aurora Reporters through material transfer
agreements, shrink-wrap licenses or otherwise.
4.2 GRANT OF RIGHTS FROM SENOMYX TO AURORA. Senomyx hereby grants to Aurora
a fully-paid, non-transferable, except as provided in Section 11.1,
non-exclusive, worldwide license, without the right to grant
sublicenses, to use the Senomyx Technology solely to perform its
obligations under this Agreement. Except as expressly licensed in this
Section 4.2, Aurora covenants not to use the Senomyx Compounds or the
Senomyx Technology provided by Senomyx either for Internal Research or
with Third Parties.
4.3 OWNERSHIP OF INTELLECTUAL PROPERTY.
4.3.1 TRANSFER OF RIGHTS. All rights not expressly licensed or assigned
herein by Senomyx are retained by Senomyx. All rights not expressly
licensed or assigned herein by Aurora are retained by Aurora. Except as
otherwise expressly provided in this Agreement, nothing in this
Agreement is intended to convey or transfer ownership by either party
to the other party of any right, title or interest in any Confidential
Information, Patent Rights or Know-How Controlled by a party. Except as
expressly provided for in this Agreement, nothing in this Agreement
shall be construed as a license or sublicense by either party to the
other party of any rights in any Patent Rights or Know-How Controlled
by a party.
4.3.2 SENOMYX INVENTIONS. Senomyx shall own all Inventions and other Know-How
made solely by its employees and agents, and all Patent Rights claiming
such Inventions and other Know-How. Senomyx hereby irrevocably assigns
to Aurora all right, title and interest in and to any such Inventions
and other Know-How that consist of improvements to an Aurora Reporter,
the Aurora Technology or the Aurora Compounds, and all Patent Rights
claiming such Inventions and other Know-How, subject to the licenses
granted to Senomyx pursuant to Section 4.1. In the event that Senomyx
is legally unable to assign such rights to Aurora, then Senomyx agrees
either to waive the enforcement of such rights against Aurora and any
sublicensees and assignees, or to xxxxx Xxxxxx an
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exclusive, irrevocable, perpetual, worldwide, fully-paid license, with
right to sublicense through multiple tiers of sublicense, to such
rights.
4.3.3 AURORA INVENTIONS. Aurora shall own all Inventions and other Know-How
made solely by its employees and agents, and all Patent Rights claiming
such Inventions and other Know-How. Aurora hereby irrevocably assigns
to Senomyx all right, title and interest in and to any such Inventions
and other Know-How that consist of improvements to the Senomyx
Technology or the Senomyx Compounds, and all Patent Rights claiming
such Inventions and other Know-How, subject to the license granted to
Aurora pursuant to Section 4.2. In the event that Aurora is legally
unable to assign such rights to Senomyx, then Aurora agrees either to
waive the enforcement of such rights against Senomyx and any
sublicensees and assignees, or to grant Senomyx an exclusive,
irrevocable, perpetual, worldwide, fully-paid license, with right to
sublicense through multiple tiers of sublicense, to such rights.
4.3.4 JOINT INVENTIONS. During the Collaboration Period, all Inventions
conceived jointly by employees or agents of Senomyx and employees or
agents of Aurora (the "Joint Inventions") and all Joint Patent Rights
shall be owned jointly by Aurora and Senomyx. Aurora hereby assigns to
Senomyx all right, title and interest in and to any Joint Inventions
that consist of improvements to the Senomyx Technology or the Senomyx
Compounds, and all Joint Patent Rights claiming such Joint Inventions,
subject to the license granted to Aurora pursuant to Section 4.2. In
the event that Aurora is legally unable to assign such rights to
Senomyx, then Aurora agrees either to waive the enforcement of such
rights against Senomyx and any sublicensees and assignees, or to grant
Senomyx an exclusive, irrevocable, perpetual, worldwide, fully-paid
license, with right to sublicense through multiple tiers of sublicense,
to such rights. Senomyx hereby irrevocably assigns to Aurora all right,
title and interest in and to any Joint Inventions that consist of
improvements to the Aurora Technology, the Aurora Reporters or the
Aurora Compounds, and all Joint Patent Rights claiming such Joint
Inventions, subject to the licenses granted to Senomyx pursuant to
Section 4.1. In the event that Senomyx is legally unable to assign such
rights to Aurora, then Senomyx agrees either to waive the enforcement
of such rights against Aurora and any sublicensees and assignees, or to
xxxxx Xxxxxx an exclusive, irrevocable, perpetual, worldwide,
fully-paid license, with right to sublicense through multiple tiers of
sublicense, to such rights.
4.3.5 OTHER INVENTIONS. Any Inventions not included in Sections 4.3.2, 4.3.3
or 4.3.4 shall be owned by their inventors.
4.3.6 INVENTORSHIP AND ASSIGNMENT. Inventorship of patentable inventions
shall be determined by United States patent law. Senomyx and Aurora
agree to execute all documentation necessary to perfect all assignments
of Inventions, Know-How and Patent Rights contemplated herein.
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5. PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES AND RECORDS
5.1 PAYMENT AND REPORTING. The royalties due under Section 3.4.2 shall be
paid within thirty (30) days after the end of each calendar quarter
period in which such royalties are earned during the Royalty Term for
each Product. With each such quarterly payment, Senomyx shall furnish
to Aurora a royalty statement in sufficient detail to permit
confirmation of the accuracy of the royalty payment made, which sets
forth on a country-by-country basis the relevant sales information,
including the total number of units of each such Product sold, Net
Sales, the royalties payable in United States dollars, the method used
to calculate the royalty, the exchange rate used and other information
employed to calculate Net Sales for such Product.
5.2 CURRENCY OF PAYMENT. All payments to be made under this Agreement,
including the royalties payable to Aurora by Senomyx, shall be paid in
United States dollars by wire transfer or other mutually acceptable
means to a bank account designated by Aurora. With respect to each
quarter, for countries other than the United States, whenever
conversion of payments form any foreign currency shall be required,
such conversion shall be made at the rate of exchange reported in THE
WALL STREET JOURNAL on the last business day of the applicable
reporting period.
5.3 TAXES WITHHELD. Any income or other tax that Senomyx or any of its
Affiliates, Licensees or Licensees is required by a government agency
to withhold and pay on behalf of Aurora with respect to the royalties
payable under this Agreement shall be deducted from and offset against
such royalties prior to remittance to Aurora; PROVIDED, HOWEVER, that
in regard to any tax so deducted, Senomyx shall give or cause to be
given to Aurora such assistance as may reasonably be necessary to
enable Aurora to claim exemption therefrom or credit therefor, and in
each case shall promptly furnish to Aurora proper evidence of the taxes
paid on Aurora's behalf.
5.4 RECORDS.
5.4.1 NET SALES AND ROYALTY CALCULATIONS. During the Royalty Term and for a
period of [...***...] thereafter, Senomyx shall keep complete and
accurate records of sales and all other information necessary to
calculate Net Sales of each Product in sufficient detail to allow the
accrued royalties to be determined accurately in accordance with GAAP.
Aurora, with reasonable written notice to Senomyx, shall have the right
to cause a nationally recognized independent, certified public
accountant to audit such records at the place or places of business
where such records are customarily kept in order to verify the accuracy
of the reports of Net Sales and royalty payments made by Senomyx
hereunder. Such accountant shall execute a confidentiality agreement
prior to entering Senomyx's premises, obligating such accountant to
keep all information disclosed to it confidential and shall only be
permitted to disclose to Aurora the extent of any discrepancy between
royalty payments made by Senomyx hereunder and the actual royalty
required to be so
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paid. Aurora shall bear the full cost of such audit, unless such audit
discloses a variance of more than [...***...] from the amount of the
royalties due under this Agreement, in which event, Senomyx shall bear
the full cost of such audit. Aurora agrees not to disclose Confidential
Information concerning royalty payments and reports, and all
information learned in the course of any audit or inspection, except to
the extent necessary for Aurora to reveal such information in order to
enforce its rights under this Agreement or if disclosure is required by
law.
5.4.2 TRACKING RECORDS. The chemicals, screens and Targets tested using an
Assay Platform, Aurora Technology or Aurora Reporter will be recorded
and stored by Senomyx using its customary means in a computer
searchable database on a storage device. The information stored will
include the Target, screen type, the concentration, structure and
activity of the chemical tested, and date of testing in a format
mutually agreed upon in writing by the parties. Records of any Hits,
Derivatives, Aurora Compounds, Senomyx Compounds or other chemicals
subjected to additional screening will be stored by Senomyx in a
computer searchable file or database that will be separate from other
Senomyx data not related to an Assay Platform, Aurora Technology or
Aurora Reporter. Upon written request by Aurora, Senomyx will create an
annual written report of Hits, Derivatives, Aurora Compounds, Senomyx
Compounds or other chemicals subjected to additional screening, IN VIVO
testing, computer modeling, or medicinal chemistry to be accessible
only by an independent consultant. All the records described in this
Section 5.4.2 are collectively referred to as tracking records (the
"Tracking Records"). Senomyx will permit a Third Party appointed by
Aurora and reasonably agreed to by Senomyx, and subject to a
confidential relationship with Senomyx, to inspect the Tracking Records
once per year or upon reasonable request by Aurora for the sole purpose
of determining the attainment of a milestone or royalty under Section
3.4. The Tracking Records shall be securely retained for no less than
[...***...] from the last use of an Assay Platform, Aurora Technology
or Aurora Reporter. When a compound, such as a Hit, Derivative or
Development Compound, is selected for a good laboratory practice safety
or toxicology study, Senomyx will disclose the compound to Aurora under
strict confidentiality. Upon reasonable request by Aurora, and at a
minimum once per year, Senomyx will provide Aurora with a summary of
the status of Development Compounds and Products that may be used to
calculate royalties or milestones hereunder.
6. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF CLAIMS
6.1 INTELLECTUAL PROPERTY ENFORCEMENT. Each party shall have the right, but
not the obligation, to bring proceedings against any Third Party for
the inappropriate use, including patent infringement, of Patent Rights
solely Controlled by it, at its own risk and expense. If either party
brings such an action, such party shall be entitled to control such
action, hire and retain counsel, make decisions, settle on any terms,
and retain any and all awards or damages obtained in any such
proceeding. At the request and expense of either party, the
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other party shall give the requesting party all reasonable assistance
required to file and conduct any such proceeding.
6.2 DEFENSE OF INFRINGEMENT CLAIMS FOR AURORA TECHNOLOGY. Senomyx will
cooperate with Aurora, at Aurora's expense, in the defense of any suit,
action or proceeding against Aurora alleging the infringement of the
intellectual property rights of a Third Party by reason of Aurora's use
of any Aurora Technology or any Aurora Reporter in performing its
obligations under this Agreement. Aurora shall notify Senomyx promptly
in writing of the commencement of any such suit, action, proceeding or
claim of infringement. Senomyx shall give to Aurora full and sole
authority, information and assistance necessary to defend, hire
counsel, make decisions or settle on any terms any such suit, action or
proceeding, and Senomyx shall execute all documents, provide pertinent
records, and take all other actions, including requiring persons within
its control to give testimony, which may be reasonably required in
connection with the defense or settlement of such litigation.
6.3 DEFENSE OF INFRINGEMENT CLAIMS FOR PRODUCTS. Aurora will cooperate with
Senomyx, at Senomyx's expense, in the defense of any suit, action or
proceeding against Senomyx and Senomyx's Affiliates or Aurora alleging
the infringement of the intellectual property rights of a Third Party
by reason of the manufacture, use or sale of any Product. Each party
shall give the other party prompt written notice of the commencement of
any such suit, action, proceeding or claim of infringement. At the
request and expense of Senomyx, Aurora shall give Senomyx full and sole
authority, information and assistance necessary to defend, hire
counsel, make decisions or settle on any terms any such suit, action or
proceeding and Aurora shall execute all documents, provide pertinent
records, and take all other actions, including requiring persons within
its control to give testimony, which may be reasonably required in
connection with the defense or settlement of such litigation.
7. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY
7.1 CONFIDENTIALITY. Subject to the terms and conditions of this Agreement,
Senomyx and Aurora each agree that, during the Term and for a period of
[...***...] thereafter, it will keep confidential, and will cause its
Affiliates to keep confidential, all Confidential Information that is
disclosed to it or to any of its Affiliates by the other party. Neither
Senomyx nor Aurora nor any of their respective Affiliates shall use the
other party's Confidential Information, except as expressly permitted
in this Agreement.
7.1.1 DISCLOSURE TO RELATED PARTIES. Senomyx and Aurora each agree that any
disclosure of the other party's Confidential Information to any
officer, employee, contractor, consultant, sublicensee or agent of the
other party or to any of its Affiliates shall be made only if and to
the extent necessary to carry out its responsibilities under this
Agreement and to exercise the rights granted to it hereunder, shall be
limited to the extent consistent with
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such responsibilities and rights, and shall be provided only to such
persons or entities who are under an obligation of confidentiality no
less stringent than as set forth herein. Each party shall use
reasonable efforts to take such action, and to cause its Affiliates to
take such action, to preserve the confidentiality of each other's
Confidential Information, which shall be the same efforts as it would
customarily take to preserve the confidentiality of its own
Confidential Information. Each party shall promptly notify the other
party upon discovery of any unauthorized use or disclosure of the other
party's Confidential Information.
7.1.2 RETURN OF CONFIDENTIAL MATERIAL UPON TERMINATION. Upon termination of
this Agreement, each party, upon the other party's request, will return
or destroy all Confidential Information received from the other party
pursuant to this Agreement, including all copies and extracts of
documents, within thirty (30) days of the request of the other party;
PROVIDED, HOWEVER, one copy of such Confidential Information may be
retained for legal purposes.
7.1.3 EXCEPTIONS TO CONFIDENTIAL INFORMATION. Confidential Information shall
not include any information, which the receiving party can prove by
competent written evidence:
i) is now, or hereafter becomes, through no act or failure to act
on the part of the receiving party, generally known or
available;
ii) is known by the receiving party at the time of receiving such
information, as evidenced by its records;
iii) is hereafter furnished to the receiving party without
restriction as to disclosure or use by a Third Party lawfully
entitled to furnish such information;
iv) is independently developed by the employees, agents or
contractors of the receiving party without the aid,
application or use of the disclosing party's Confidential
Information;
vi) is the subject of a written permission to disclose provided by
the disclosing party; or
vii) is provided by the disclosing party to a Third Party without
restriction as to confidentiality.
A party may also disclose Confidential Information of the other party
where required to do so by law or legal process; PROVIDED, HOWEVER,
that, in such event, the party required to disclose such information
shall give advance written notice of such disclosure to the other party
and will cooperate with the other party's efforts to seek, at the
request and expense
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of the other party, all confidential treatment and protection for such
disclosure as is permitted by applicable law.
7.1.4 CONFIDENTIAL FINANCIAL INFORMATION. The parties agree that the material
financial terms of this Agreement will be considered Confidential
Information of both parties. Notwithstanding the foregoing, either
party may disclose such terms in legal proceedings or as are required
to be disclosed in its financial statements, by law, or under an
obligation of confidentiality to bona fide potential sublicensees.
Either party shall have the further right to disclose the material
financial terms of this Agreement under an obligation of
confidentiality to any potential acquirer, merger partner, bank,
venture capital firm, or other financial institution to obtain
financing. Notwithstanding the foregoing, the parties shall agree upon
a press release to announce the execution of this Agreement.
Thereafter, Aurora and Senomyx may each disclose to Third Parties the
information contained in such press release without the need for
further approval by the other party.
7.1.5 CONFIDENTIAL RESEARCH INFORMATION. The parties agree that information
developed using an Assay Platform will be considered Confidential
Information of both parties and shall be subject to the confidentiality
requirements of this Article 7. Notwithstanding the foregoing, either
party may disclose and use information developed using an Assay
Platform that is not specific to a Target proposed by Senomyx for
screen development and screening under an obligation of confidentiality
to bona fide sublicensees.
7.2 PERMITTED USE AND DISCLOSURES. Each party may use or disclose
Confidential Information disclosed to it by the other party to the
extent such information is included in the Aurora Technology, Senomyx
Technology or Joint Patent Rights, and to the extent such use or
disclosure is reasonably necessary and permitted in the exercise of the
rights granted hereunder in filing or prosecuting patent applications,
prosecuting or defending litigation, complying with applicable
governmental regulations or court orders or otherwise submitting
information to tax or other governmental authorities, conducting
clinical trials, or making a permitted sublicense or otherwise
exercising rights expressly granted to the other party pursuant to the
terms of this Agreement; PROVIDED, HOWEVER, that if a party is required
to make any such disclosure of the other party's Confidential
Information, other than pursuant to a confidentiality agreement, it
will give reasonable advance notice of such disclosure to the other
party where reasonably possible and, save to the extent inappropriate
in the case of patent applications, will use its reasonable efforts to
secure confidential treatment of such Confidential Information in
consultation with the other party prior to such disclosure (whether
through protective orders or otherwise) and disclose only the minimum
necessary to comply with such requirements.
7.3 USE OF DATA FOR PROMOTIONAL PURPOSES. Either party may (i) make public
statements regarding Products by announcing the achievement of
milestones and fees therefor, following consultation with the other
party and with the written consent of the other party
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to the form and content of the public statement, and (ii) without the
prior consent of the other party, make public statements regarding the
overall success rate(s) achieved by and/or for its customers with the
use of Aurora Technology or Senomyx Technology; PROVIDED, HOWEVER, that
it may not disclose any chemical structures, screens or the other
party's identity.
7.4 PUBLICATION OF RESULTS. Subject to this Article 7, results and data
obtained by either party in the course of the collaboration, including,
but not limited to, the execution of a Work Plan or an Aurora Screening
Program pursuant to this Agreement, may be submitted for publication by
Senomyx in accordance with Senomyx's customary practices; PROVIDED,
HOWEVER, that Senomyx shall credit Aurora in such publication as the
developer and/or provider of the technology that produced, in part, the
published results or data. Senomyx shall send a copy of the proposed
publication to Aurora at least forty-five (45) days prior to submitting
the paper to a publisher and shall allow Aurora thirty (30) days from
the date of receipt in which to determine whether such publication
contains subject matter for which patent protection should be sought
prior to disclosure, or otherwise contains Aurora Confidential
Information. Senomyx shall comply with Aurora's request to delete
references to Aurora's Confidential Information in any such paper and
agrees to withhold publication of the same for an additional one
hundred and eighty (180) days to permit Aurora to obtain patent
protection, if Xxxxxx xxxxx it necessary, in accordance with the terms
of this Agreement. If no answer is received from Aurora within thirty
(30) days of receipt of the proposed publication, Senomyx shall be free
to submit such proposed publication.
7.5 PUBLICITY. Except as required by law and as provided in this Article 7,
neither party may make any public announcement or otherwise disclose
the terms of this Agreement without the prior written consent of the
other party, which consent shall not be unreasonably withheld.
8. PATENT PROSECUTION AND MAINTENANCE
The control and expense of the filing, prosecution (including an
opposition or interference) and maintenance of Patent Rights or other
intellectual property rights claiming Inventions made solely by a party
will be the sole responsibility of the party that made such Invention,
and the party not filing the patent application will cooperate in such
filing, prosecution and maintenance. Senomyx and Aurora will determine
by mutual agreement which party will be responsible for, and will
cooperate in, the filing, prosecution and maintenance of Joint Patent
Rights and will share equally in the expenses incurred with respect
thereto.
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9. WARRANTIES AND INDEMNIFICATION
9.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each party hereby makes the
following representations and warranties to the other party:
9.1.1 CORPORATE POWER. Each party hereby represents and warrants that such
party (a) is duly organized and validly existing under the laws of the
state of its incorporation and has full corporate power and authority
to enter into this Agreement and to carry out the provisions hereof;
(b) has the requisite power and authority and the legal right to own
and operate its property and assets, to lease the property and assets
it operates under lease, and to carry on its business as it is now
being conducted; and (c) is in compliance with all requirements of
applicable law, except to the extent that any noncompliance would not
have a material adverse effect on its ability to perform its
obligations under the Agreement.
9.1.2 DUE AUTHORIZATION. Each party hereby represents and warrants that such
party (a) has the requisite power and authority and the legal right to
enter into the Agreement and to perform its obligations hereunder; and
(b) has taken all necessary action on its part to authorize the
execution and delivery of the Agreement and to authorize the
performance of its obligations hereunder and the grant of rights
extended by it hereunder.
9.1.3 BINDING AGREEMENT. Each party hereby represents and warrants to the
other that (a) this Agreement has been duly executed and delivered on
its behalf and is a legal and valid obligation binding upon it and is
enforceable in accordance with its terms; (b) the execution, delivery
and performance of this Agreement by such party does not conflict with
any agreement, instrument or understanding, oral or written, to which
it is a party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative or other
agency having authority over it; and (c) all necessary consents,
approvals and authorizations of all governmental authorities and other
persons required to be obtained by it in connection with the Agreement
have been obtained.
9.2 WARRANTIES REGARDING SENOMYX TECHNOLOGY. Senomyx represents and
warrants to Aurora as of the Effective Date the following:
9.2.1 To the best knowledge of Senomyx as of the Effective Date: (a) Senomyx
has the lawful right to license the Senomyx Technology to Aurora in
accordance with the terms of this Agreement; (b) the Senomyx Patent
Rights were properly filed and prosecuted; and (c) no Third Party suit
exists relating to the Senomyx Patent Rights.
9.2.2 EXCEPT AS EXPRESSLY SET FORTH HEREIN, SENOMYX (INCLUDING ITS OFFICERS,
EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIMS ANY REPRESENTATIONS AND
WARRANTIES, WHETHER EXPRESS OR IMPLIED, RELATING TO SENOMYX TECHNOLOGY.
SENOMYX FURTHER DISCLAIMS
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ANY EXPRESS OR IMPLIED WARRANTY (a) OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OF SENOMYX TECHNOLOGY; (b) THAT THE PRACTICE OF
SENOMYX TECHNOLOGY WILL NOT INFRINGE A PATENT, COPYRIGHT, TRADEMARK OR
OTHER RIGHT OF A THIRD PARTY; AND (c) REGARDING THE PATENTABILITY OF
ANY SENOMYX TECHNOLOGY, INCLUDING SENOMYX TECHNOLOGY CLAIMED IN PATENT
APPLICATIONS AS PART OF SENOMYX PATENT RIGHTS.
9.3 SENOMYX INDEMNIFICATION.
9.3.1 Senomyx hereby agrees to indemnify, defend and hold Aurora, and its
respective officers, directors, employees and agents (collectively, the
"Aurora Indemnitees") harmless from and against all damages, losses,
liabilities, expenses and costs or other amounts payable to a Third
Party, including reasonable attorneys' fees and costs of litigation,
resulting from a claim, demand, action, suit or other proceeding
brought or threatened by a Third Party against an Aurora Indemnitee
based on (a) any development, manufacture, use, handling, storage, sale
or other disposition of a Development Compound or Product by or through
Senomyx or its Affiliates, Licensees or permitted sublicensees, (b) the
practice by Senomyx of any license granted hereunder, or (c)
infringement by Aurora of Patent Rights of any Third Party as a result
of using a Target in an Assay Platform, or Compound Supply provided
under this Agreement by Senomyx; except to the extent such damages or
other amounts payable are attributable to: (i) a violation of any
contractual or fiduciary duty owed by any Aurora Indemnitee to a Third
Party, (ii) any material breach of this Agreement by an Aurora
Indemnitee, or (iii) trade secret misappropriation or patent
infringement by Aurora of screen components (other than a Target or
Compound Supply) that are Controlled by a Third Party or are covered by
a Third Party's Patent Rights. IN NO EVENT SHALL SENOMYX BE LIABLE FOR
ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES SUFFERED BY AURORA RESULTING
FROM THE EXERCISE OF ANY RIGHTS GRANTED IN ACCORDANCE WITH THIS
AGREEMENT.
9.3.2 With respect to rights licensed to Aurora by the [...***...] or by
[...***...], Senomyx hereby agrees to indemnify, defend and hold
harmless [...***...], as appropriate, and their respective officers,
directors, employees, sponsors and agents from and against all damages
or other amounts payable to a Third Party (including product liability)
resulting or arising from Senomyx's use of the rights granted herein to
the extent that such indemnification by Senomyx is required by
[...***...] pursuant to agreements between [...***...] and Aurora or
between [...***...] and Aurora.
9.4 WARRANTIES RELATING TO AURORA TECHNOLOGY. Aurora represents and
warrants to Senomyx as of the Effective Date the following:
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9.4.1 To the best knowledge of Aurora as of the Effective Date: (a) Aurora
has the lawful right to license (or sublicense, as the case may be) the
Aurora Technology to Senomyx in accordance with the terms of this
Agreement; (b) the Aurora Patent Rights were properly filed and
prosecuted; and (c) no Third Party suit against Aurora exists relating
to the Aurora Patent Rights.
9.4.2 EXCEPT AS EXPRESSLY SET FORTH HEREIN, AURORA (INCLUDING ITS OFFICERS,
EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIMS ANY REPRESENTATIONS AND
WARRANTIES OF ANY KIND, WHETHER EXPRESS OR IMPLIED, RELATING TO AURORA
TECHNOLOGY OR AURORA REPORTERS. AURORA FURTHER DISCLAIMS ANY EXPRESS OR
IMPLIED WARRANTY (a) OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OF AURORA TECHNOLOGY OR AURORA REPORTERS; (b) THAT THE PRACTICE
OF AURORA TECHNOLOGY OR AURORA REPORTERS WILL NOT INFRINGE A PATENT,
COPYRIGHT, TRADEMARK, TRADE SECRET OR OTHER RIGHT OF A THIRD PARTY; AND
(c) REGARDING THE PATENTABILITY OF ANY AURORA TECHNOLOGY OR AURORA
REPORTERS, INCLUDING AURORA TECHNOLOGY OR AURORA REPORTERS CLAIMED IN
PATENT APPLICATIONS AS PART OF AURORA PATENT RIGHTS.
9.5 AURORA INDEMNIFICATION.
9.5.1 Aurora hereby agrees to indemnify, defend and hold Senomyx and its
respective officers, directors, employees and agents (collectively the
"Senomyx Indemnitees") harmless from and against all damages, losses,
liabilities, expenses and costs or other amounts payable to a Third
Party, including reasonable attorneys' fees and costs of litigation,
resulting from a claim, demand, action, suit, or other proceeding
brought or threatened by a Third Party against a Senomyx Indemnitee
based on Aurora's gross negligence, intentional misconduct, trade
secret misappropriation or material misrepresentations contained
herein. IN NO EVENT SHALL AURORA BE LIABLE FOR ANY INDIRECT, INCIDENTAL
,SPECIAL OR CONSEQUENTIAL DAMAGES SUFFERED BY SENOMYX RESULTING FROM
THE EXERCISE OF ANY RIGHTS GRANTED IN ACCORDANCE WITH THIS AGREEMENT.
9.5.2 Aurora hereby agrees to indemnify, defend and hold [...***...], and the
[...***...] and its respective officers, sponsors, directors, employees
and agents (collectively the "IP Indemnitees") harmless from and
against all damages or other amounts payable to a Third Party,
including reasonable attorneys' fees and costs of litigation, resulting
or arising from the exercise of rights under the license granted from
Senomyx to Aurora under Section 4.2 and pursuant to any agreement
between [...***...] and Senomyx, including product liability.
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10. TERM AND TERMINATION
10.1 TERM. The term of this Agreement will begin on the Effective Date and
shall continue until [...***...], unless terminated earlier in
accordance with the provisions of Section 10.2, 10.3 or 10.4 hereof
(the "Term").
10.2 TERMINATION BY [...***...].
10.3 TERMINATION BY MUTUAL AGREEMENT. Notwithstanding Section 10.2, the
parties may terminate this Agreement at any time, in whole or in part,
by mutual written agreement executed by both Aurora and Senomyx.
10.4 TERMINATION FOR BREACH. Aurora shall have the right to terminate this
Agreement at any time if Senomyx fails to make any payment when due
under this Agreement, provided that Senomyx has not made such payment
within [...***...] after written notice thereof by Aurora. Either party
shall have the right to terminate this Agreement at any time for a
material breach of this Agreement (other than non-payment) by the other
party, provided that the breaching party has not cured such breach
within [...***...] after written notice thereof by the non-breaching
party. The non-breaching party, upon termination of this Agreement, may
seek actual or general damages and remedies available to it at law or
in equity. NO PUNITIVE OR CONSEQUENTIAL DAMAGES MAY BE SOUGHT BY EITHER
PARTY.
10.5 EFFECT OF TERMINATION.
10.5.1 Upon termination of this Agreement pursuant to Section 10.2, (i)
Senomyx shall have no right to practice within the Aurora Patent Rights
or use any of the Aurora Technology or any Aurora Reporter, unless
Senomyx pays to Aurora an early termination fee of [...***...] within
[...***...], and (ii) Senomyx shall pay Aurora additional research
support in accordance with Section 3.1 for a period of [...***...]
following the date Senomyx notifIES Aurora of such termination.
10.5.2 Upon termination of this Agreement pursuant to Section 10.3, (i)
Senomyx shall have no right to practice within the Aurora Patent Rights
or use any of the Aurora Technology or any Aurora Reporter, and (ii)
all rights, title or interest in, or other incidents of ownership
under, the Aurora Technology and Aurora Reporters shall revert to and
become the sole property of Aurora, unless otherwise agreed upon in
writing by the parties on or before the effective date of such
termination.
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10.5.3 Upon termination of this Agreement pursuant to Section 10.4, (i)
Senomyx shall have no right to practice within the Aurora Patent Rights
or use any of the Aurora Technology or any Aurora Reporter, and (ii)
all rights, title or interest in, or other incidents of ownership
under, the Aurora Technology and Aurora Reporters shall revert to or
become the property of Aurora.
10.5.4 Expiration or termination of this Agreement shall not relieve either
party of any obligation accruing prior to such expiration or
termination.
10.6 SURVIVAL. The obligations and rights of the parties under Sections
2.4.5, 4.3, 5.4, 10.5 and 10.6 and Articles 1, 7, 9 and 11 shall
survive termination or expiration of this Agreement.
11. MISCELLANEOUS
11.1 ASSIGNMENT. Notwithstanding any provision of this Agreement to the
contrary, neither party may assign any of its rights or obligations
under this Agreement in any country to any Third Party without the
prior written consent of the non-assigning party, which consent shall
not be unreasonably withheld; PROVIDED, HOWEVER, that either party may
assign its rights and obligations under this Agreement without the
consent of the other party (i) in connection with the transfer or sale
of all or substantially all of its assets, or (ii) to any Affiliate. In
the event of such transaction, however, intellectual property rights
(including Know-How) of a party to such transaction other than one of
the parties to this Agreement, shall not be included in the technology
licensed hereunder. Notwithstanding the foregoing, any such assignment
to an Affiliate shall not relieve the assigning party of its
responsibilities for performance of its obligations under this
Agreement. This Agreement shall survive any merger or consolidation of
either party with or into another party and no consent for any such
merger, consolidation or similar reorganization shall be required
hereunder.
11.2 BINDING EFFECT. This Agreement shall be binding upon and inure to the
benefit of the successors and permitted assigns of the parties. Any
assignment not in accordance with this Agreement shall be void.
11.3 FORCE MAJEURE. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses on account of failure
of performance by the defaulting party if the failure is occasioned by
war, fire, explosion, flood, El Nino, earthquake, strike, lockout,
embargo, act of God, or any other similar cause beyond the control of
the defaulting party; PROVIDED, HOWEVER, that the party claiming force
majeure has exerted all reasonable efforts to avoid or remedy such
force majeure and thereafter takes all reasonable steps to mitigate any
such delay in performance hereunder and any damages that may be
incurred by the other party thereby.
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11.4 NOTICES. Any notices or communications provided for in this Agreement
to be made by either party to the other party shall be in writing, in
English, and shall be made by prepaid air mail or overnight carrier
with return receipt addressed to the other party at its address set
forth below. Any such notice or communication may also be given by hand
or facsimile to the appropriate designation. Notices shall be sent:
If to Senomyx, to:
Senomyx, Inc.
00000 Xxxxx Xxxxxx Xxxxx Xxxx
Xx Xxxxx, XX 00000
Facsimile number: (000) 000-0000
Attention: Vice President, Corporate Counsel
with a copy to the President
If to Aurora, to:
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX 00000
Facsimile number: (000) 000-0000
Attention: General Counsel
with a copy to the President
Either party may by like notice specify or change an address to which
notices and communications shall thereafter be sent. Notices sent by
mail, facsimile or overnight carrier shall be effective upon receipt
and notices given by hand shall be effective when delivered.
11.5 GOVERNING LAW AND JURISDICTION. This Agreement shall be governed by the
laws of the State of California, as such laws are applied to contracts
entered into and to be performed entirely within such state.
11.6 WAIVER. Except as specifically provided for herein, the waiver from
time to time by either party of any right or the failure to exercise
any remedy shall not operate or be construed as a continuing waiver of
the same right or remedy or any of the other of such party's rights or
remedies provided in this Agreement.
11.7 SEVERABILITY. If any term, covenant or condition of this Agreement or
the application thereof to any party or circumstance shall, to any
extent, be held to be invalid or unenforceable, then the remainder of
this Agreement, or the application of such term, covenant or condition
to parties or circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected thereby and each term,
covenant or
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condition of this Agreement shall be valid and enforced to the fullest
extent permitted by law. The parties covenant and agree to renegotiate
any such term, covenant or condition or the application thereof in good
faith in order to provide a reasonably acceptable alternative to the
term, covenant or condition of this Agreement or the application
thereof that is invalid or unenforceable, it being the intent of the
parties that the basic purposes of this Agreement are to be
effectuated.
11.8 INDEPENDENT CONTRACTORS. It is expressly agreed that Aurora and Senomyx
shall be independent contractors and that the relationship between the
parties shall not constitute a partnership or agency of any kind.
Neither Aurora nor Senomyx shall have the authority to make any
statements, representations or commitments of any kind, or to take any
action, which shall be binding on the other party, without the prior
written authorization of the other party to do so.
11.9 COUNTERPARTS. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
11.10 ENTIRE AGREEMENT; AMENDMENT. This Agreement sets forth all of the
covenants, promises, agreements, warranties, representations,
conditions and understandings between the parties, and supersedes and
terminates all prior agreements and understandings between the parties,
with respect to the subject matter hereof. There are no covenants,
promises, agreements, warranties, representations, conditions or
understandings, either oral or written, between the parties other than
as set forth herein. No subsequent alteration, amendment, change or
addition to this Agreement shall be binding upon the parties unless
reduced to writing and signed by the respective authorized officers of
the parties. This Agreement shall not be strictly construed against
either party. Any conflict between the terms set forth in the text of
this Agreement and the terms of any Exhibit hereto shall be resolved in
favor of the text of this Agreement.
11.11 NO THIRD PARTY BENEFICIARIES. No Third Party, including any employee of
any party to this Agreement (except as specifically provided in
Sections 9.3 and 9.5), shall have or acquire any rights by reason of
this Agreement. Nothing contained in this Agreement shall be deemed to
constitute the parties partners with each other or any Third Party.
11.12 CONSTRUCTION. The term "Article" or "Section" can refer to any single
paragraph level found herein or any collection of multiple paragraphs
thereunder.
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11.13 DISPUTE RESOLUTION. The parties recognize that disputes as to certain
matters may from time to time arise during the Term, which relate to
either party's rights and/or obligations hereunder. It is the objective
of the parties to establish procedures to facilitate the resolution of
disputes arising under this Agreement in an expedient manner by mutual
cooperation and without resort to arbitration. The parties agree that
prior to any arbitration concerning this Agreement, Senomyx's President
and Aurora's President will meet in person or by video-conferencing in
a good faith effort to resolve any disputes concerning this Agreement.
Within thirty (30) days of a formal request by either party to the
other party, either party may, by written notice to the other party,
have such dispute referred to their respective officers designated or
their successors, for attempted resolution by good faith negotiations,
such good faith negotiations to begin within thirty (30) days after
such notice is received. Any dispute arising out of or relating to this
Agreement which is not resolved between the parties or the designated
officers of the parties pursuant to this Section 11.13 shall be
resolved by final and binding arbitration conducted in San Diego,
California (unless the parties mutually agree to another location) in
accordance with Sections 1282 through 1288 of the California Code of
Civil Procedure. The arbitration shall be conducted by three (3)
arbitrators who are knowledgeable in the subject matter which is at
issue in the dispute. One (1) arbitrator will be selected by Senomyx
and one (1) arbitrator will be selected by Aurora. The third arbitrator
will be selected by mutual agreement of the two (2) arbitrators
selected by the parties. In conducting the arbitration, the arbitrators
shall (i) determine what discovery will be permitted, consistent with
the goal of limiting the cost and time which the parties must expend
for discovery (and provided that the arbitrators shall permit such
discovery they deem necessary to permit an equitable resolution of the
dispute), (ii) ensure that the total time of the arbitration from
filing to a final decision or executed settlement agreement is less
than six (6) months, and (iii) be able to decree any and all relief of
an equitable nature, including, but not limited to, such relief as a
temporary restraining order, a preliminary injunction, a permanent
injunction, specific performance or repletion of property. The
arbitrators shall also be able to award actual or general damages, but
shall not award any other form of damage (e.g., consequential, punitive
or exemplary damages). The parties shall share equally the arbitrator's
fees and expenses pending the resolution of the arbitration, unless the
arbitrators, pursuant to their right, but not their obligations,
require the non-prevailing party to bear all or any portion of the
costs of the prevailing party. The decision of the arbitrators shall be
final and binding on the parties and may be sued on or enforced by the
party in whose favor it runs in any court of competent jurisdiction at
the option of such party. Notwithstanding anything to the contrary in
this Section 11.13, either party may seek immediate injunctive or other
interim relief from any court of competent jurisdiction with respect to
any breach of Articles 4 or 7 hereof, or otherwise to enforce and
protect the Patent Rights, copyrights, trademarks, or other
intellectual property rights Controlled by such party. In addition,
arbitration shall not be used to resolve disputes concerning Patent
Rights. Disputes concerning Patent Rights, including, but not limited
to, disputes concerning patent
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ownership, claim language, claim scope and issues of validity shall be
settled in a court of law. Any arbitration ruling that relies on an
interpretation of Patent Rights shall have no binding effect in a court
of law on any Patent Rights related to this Agreement, unless such
Patent Rights have been adjudicated in a court of law. In no event
shall a demand for arbitration be made after the date when the
institution of a legal or equitable proceeding based on such claim,
dispute or other matter in question would be barred by the applicable
statute of limitations.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the Effective Date.
SENOMYX, INC. AURORA BIOSCIENCES CORPORATION
By: /s/ XXXX X. XXXXXXX By: /s/ STUART X. X. XXXXXXXXX
--------------------------- --------------------------------
Name: Xxxx X. Xxxxxxx Name: Stuart X. X. Xxxxxxxxx
Title: President and CEO Title: Chairman, CEO and
President
Date: November 1, 2000 Date: November 1, 2000
------------------------- ------------------------------
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LIST OF EXHIBITS
EXHIBIT 1: LIST OF AURORA PATENT RIGHTS
EXHIBIT 2: LIST OF SENOMYX PATENT RIGHTS
EXHIBIT 3: DESCRIPTION OF REPORTERS
EXHIBIT 4: STOCK PURCHASE AGREEMENT
EXHIBIT 5: SENOMYX TARGET LIST
EXHIBIT 6: ASSAY PLATFORM VALIDATION CRITERIA
EXHIBIT 7: VIPR AND VIPR II PERFORMANCE CRITERIA AND SERVICE
AND SUPPORT
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EXHIBIT 1
LIST OF AURORA PATENT RIGHTS
[...***...]
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EXHIBIT 2
LIST OF SENOMYX PATENT RIGHTS
[...***...]
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[...***...]
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EXHIBIT 3
DESCRIPTION OF REPORTERS
[...***...]
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EXHIBIT 5
SENOMYX TARGET LIST
Sequences listed as an attachment to this Exhibit, and incorporated by
reference, include the following molecules:
[...***...]
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EXHIBIT 6
ASSAY PLATFORM VALIDATION CRITERIA
[...***...]
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EXHIBIT 7
PERFORMANCE SPECIFICATIONS
[...***...]
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