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EXHIBIT 10.30
ARRAY LIBRARY SCREENING AGREEMENT
This LIBRARY SCREENING AGREEMENT (the "Agreement"), effective as of
August 1st, 2000 (the "Effective Date"), is made by and between Array BioPharma
Inc., a Delaware corporation having its principal offices located at 0000 00xx
Xxxxxx, Xxxxxxx, XX 00000 ("Array"), and E. I. du Pont de Nemours and Company, a
Delaware corporation having its principal offices located at 0000 Xxxxxx Xxxxxx,
Xxxxxxxxxx, XX 00000 (" DuPont").
BACKGROUND
A. Array has developed novel proprietary methods for the generation of
compound libraries.
B. Pursuant to that certain Confidentiality Agreement dated February 1st,
2000 (the "Confidentiality Agreement," attached hereto as Exhibit D),
Array has disclosed to DuPont the structures of certain compounds.
X. XxXxxx desires to obtain certain of such compound libraries for
screening to identify candidate compounds for further evaluation and at
DuPont's option to further optimize such compounds, all on the terms
and conditions set forth below.
NOW, THEREFORE, for and in consideration of the covenants, conditions,
and undertakings hereinafter set forth, it is agreed by and between the parties
as follows:
1 DEFINITIONS
1.1 "Activation Fee" shall have the meaning as set forth in
Section 3.3 below.
1.2 "Activation Period" shall mean the period commencing upon
delivery of the Compound to DuPont and ending on the date three (3) years
thereafter.
1.3 "Active Compound" shall mean a Compound designated and
activated pursuant to Section 3.2 and for which the Activation Fee has been paid
in accordance with Section 3.3 below. It is understood that each designation of
Active Compound shall include all non-covalent derivatives of such chemically
distinct compound, including but not limited to acid addition salts and cationic
salts, and shall include all diastereomeric and enantiomeric forms thereof.
1.4 "Active Derivative" shall have the meaning as set forth in
Section 3.4. It is understood that each designation of Active Derivative shall
include all non-covalent derivatives of such chemically distinct compound,
including but not limited to acid addition salts and cationic salts, and shall
include all diastereomeric and enantiomeric forms thereof.
1.5 "Analog" shall mean that:
[ * ] = 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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(a) in the event that DuPont or an Affiliate of DuPont files a
patent application and that patent application claims at least one Active
Compound (and/or a composition of matter containing at least one Active
Compound, and/or a method of use employing at least one Active Compound, and/or
a method of synthesizing at least one Active Compound) [ * ]; and
(b) in the event that DuPont or an Affiliate of DuPont files a
patent application and that patent application claims [ * ] from which at least
one Compound is specifically excluded by proviso (and/or a composition [ * ]
from which at least one Compound is specifically excluded by proviso, and/or a
[ * ] from which at least one Compound is specifically excluded by proviso,
and/or a [ * ] from which at least one Compound is specifically excluded by
proviso) [ * ].
It is further understood that the term Analog shall be deemed to
include all non-covalent derivatives of such compound, including but not limited
to acid addition salts and cationic salts, and shall include all diastereomeric
and enantiomeric forms thereof.
Moreover, for purposes of this Agreement, it is understood and agreed
that any compound subject to the confidentiality provisions of this Agreement or
the Confidentiality Agreement shall not be deemed an Analog.
1.6 "Compound" shall mean each chemically distinct compound
which is contained in the Library provided to DuPont by Array under this
Agreement.
1.7 "Core Chemistry" shall mean the core chemical structures
of the Compounds within the First Year Library, the Second Year Library or the
Third Year Library.
1.8 "Derivative" shall mean any compound which is chemically
related to a Core Chemistry but shall exclude specific compounds disclosed by
Array to DuPont pursuant to the Confidentiality Agreement or the provisions of
Section 4.1 of this Agreement.
1.9 "DuPont Field" shall mean [ * ] .
1.10 " Library" shall have the meaning as set forth in
Sections 2.1, 2.2, and 2.3 below.
1.11 "Licensed Technology" shall mean Array Patent Rights and
confidential Compound Information. Notwithstanding the foregoing, it is
understood that Licensed Technology shall not include any patent or other rights
to high-speed synthesis technology, methods or compound libraries (except
Libraries).
(a) "Array Patent Rights" shall mean (i) all patents
and patent applications that claim a Compound, or method of use or process for
the synthesis thereof or composition-of-matter containing such Compound, for
which the earliest effective filing date is prior to the end of the Activation
Period for the Compound, and (ii) any divisions, continuations,
continuations-in-part, reissues, reexaminations, or extensions to the extent the
same have an earliest effective filing date prior to the date described in (i)
above, and any substitutions, confirmations, or registrations of any
[ * ] = 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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of the foregoing, in each case, which is owned by Array (solely or jointly), to
the extent Array has the right to license or sublicense the same.
(b) "Compound Information" shall have the meaning as
set forth in Section 2.5 below.
1.12 "Re-Supply Compound" shall have the meaning as set forth
in Section 2.4 below.
1.13 "Scaffold" shall mean a group of Compounds with [ * ]
Core Chemistry of the following functionality: [ * ] .
2 LIBRARY
2.1 The First Year Library. Subject to the terms and
conditions of this Agreement, in the calendar year 2000 , Array shall deliver to
DuPont the combinatorial compound library described in this Section 2.1 (the
"First Year Library") on a non-exclusive basis. The First Year Library shall
consist of a minimum of [ * ] Compounds, selected on a plate by plate basis by
DuPont from up to [ * ] Core Chemistries, as set forth in Exhibit A. The First
Year Library shall contain a minimum of [ * ] micromoles of each Compound and
shall conform to the specifications and meet the quality control criteria set
forth in Exhibit B. The Compounds will be supplied to DuPont at approximately
[ * ] Compounds per month from August, 2000 to November, 2000.
2.2 The Second Year Library. Subject to the terms and
conditions of this Agreement, in the calendar year 2001 , Array shall deliver to
DuPont the combinatorial compound library described in this Section 2.2 (the
"Second Year Library") on a non-exclusive basis. The Second Year Library shall
consist of a minimum of [ * ] Compounds, selected on a plate by plate basis by
DuPont from up to [ * ] Core Chemistries, from those described in Exhibit A and
Exhibit C. The Second Year Library shall contain a minimum of [ * ] micromoles
of each Compound and shall conform to the specifications and meet the quality
control criteria set forth in Exhibit B. The Compounds will be supplied to
DuPont at approximately [ * ] Compounds per month from January, 2000 to October,
2000.
2.3 The Third Year Library Option. The Third Year Library is
an option that can be cancelled by either party with 90 days written notice
prior to September 30, 2001. Assuming the parties agree to proceed with this
option, subject to the terms and conditions of this Agreement, in the calendar
year 2002, Array shall deliver to DuPont the combinatorial compound library
described in this Section 2.3 (the "Third Year Library") on a non-exclusive
basis. The Third Year Library shall consist of a minimum of [ * ] Compounds,
selected on a plate by plate basis by DuPont from up to [ * ] Core Chemistries
selected from those described in Exhibit C and from additional Core Chemistries
that will be shown to DuPont by Array prior to September 30th, 2001. The Third
Year Library shall contain a minimum of [ * ] micromoles of each Compound and
shall conform to the specifications and meet the quality control criteria set
forth in Exhibit B. The Compounds will be supplied to DuPont at approximately
[ * ] Compounds per month from January, 2002 to October, 2002.
2.4 Resupply of Compounds. DuPont shall have the option to
obtain additional quantities of any Compound already delivered hereunder
(collectively, "Re-Supply Compounds"), by
[ * ] = 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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written order to Array specifying the Compound(s) desired, together with a
complete description of the chemical structure. Upon receipt of the request for
Re-Supply Compounds, Array will provide DuPont within [ * ] business days with a
quote for the length of time and the cost to provide such Re-Supply Compounds.
Array will base such DuPont quotations [ * ] of Re-Supply Compounds. Such
Re-Supply Compounds shall be supplied in [ * ] per Re-Supply Compound and shall
comply with the applicable specifications of Exhibit B. Array's obligation to
re-supply Compounds shall continue for a period of [ * ] following the
expiration or earlier termination (other than by Array for breach by DuPont) of
this Agreement.
2.5 Compound Information. Array shall make available to DuPont
the following information for the Compounds delivered hereunder: (i) structural
data for each Compound; (ii) plate location coordinates and an identification
number for each Compound; and (iii) [ * ] Compounds ([ * ] "Compound
Information"). In addition, Array shall make available to DuPont a copy of the
quality control data and methods used for Compounds delivered hereunder.
2.6 Delivery. Array shall use good faith efforts to deliver
Compounds in accordance with a schedule mutually agreed upon by the parties.
Compounds shall be delivered F.O.B. Array's facility to DuPont's facility at the
address set forth above (or such other address as DuPont may specify in writing
prior to the shipping date). The carrier shall be paid by DuPont, and shall be
selected by agreement between Array and DuPont, provided that in the event no
such agreement is reached Array shall select the carrier.
2.7 Payments on Delivery. Except as set forth in Section 2.4
with respect to Re-Supply Compounds, the price to be paid by DuPont for
Compounds delivered in accordance with this Agreement shall be [ * ] per
Compound. Together with each shipment of Compounds hereunder, Array shall submit
an invoice to DuPont therefor. Each invoice shall state the total invoiced
amount and the number of Compounds included in a particular shipment, plus any
insurance, taxes or other costs incident to the shipment or delivery of
Compounds hereunder initially paid by Array but to be borne by DuPont. All
payments hereunder shall be made in U.S. Dollars, by direct bank transfer to an
account designated in Array's invoice, within thirty (30) days after DuPont's
receipt of the particular shipment meeting all sample and electronic data
formats specified by DuPont pursuant to this Agreement. If DuPont fails to
notify Array within one week that a shipment does not meet the applicable
specifications, then the shipment shall be deemed accepted. Any payments
hereunder that are not paid on the date such payments are due under this
Agreement shall bear interest to the extent permitted by applicable law at the
prime rate reported by Norwest Bank, Denver, Colorado, on the date such payment
is due, calculated on the number of days such payment is delinquent.
2.8 Taxes. Any sales, use or other taxes or other governmental
charges incident to the transfer of Compounds to DuPont pursuant to this
Agreement shall be the sole responsibility of DuPont.
2.9 Title. Without limiting DuPont's rights under Article 3
below, it is understood and agreed that Array retains title to the Compounds
subject to the confidentiality provisions of Section 4.1 that are delivered to
DuPont under this Agreement.
3 LICENSES; ACTIVE COMPOUNDS; INTELLECTUAL PROPERTY
3.1 Licenses.
[ * ] = 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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(a) License Grant. Subject to the terms and
conditions of this Agreement, Array hereby grants to DuPont the following
licenses under the applicable Licensed Technology: (i) a non-exclusive right and
license to make, have made and use the Compounds and Compound Information for
its own internal research and development purposes including the right to make
derivatives, and (ii) subject to Section 3.6, an exclusive, fully-paid,
perpetual license to make, have made, use, sell, offer for sale and export and
import Active Compounds and Active Derivatives.
(b) Sublicenses. The license granted under Section
3.1(a)(ii) above shall include the right to grant sublicenses, but the license
granted under Section 3.1(a)(i) shall be without the right to grant sublicenses.
(c) Reservation. Notwithstanding Section 3.1(a)
above, Array hereby reserves the right, including the right to authorize others,
under the Licensed Technology to make, have made, and use all Compounds for
research and/or other purposes. Notwithstanding the foregoing, once DuPont has
designated a Compound as an Active Compound, Array will not provide such Active
Compound to third parties as part of a compound library or otherwise.
3.2 Active Compounds. At any time prior to the expiration of
the Activation Period applicable to a particular Compound, DuPont shall have the
right to designate such compound as an Active Compound, as set forth in this
Section 3.2 below.
(a) Designation. To designate a Compound as an Active
Compound, DuPont shall so notify Array in writing, with a description of the
Compound (including a complete description of its chemical structure), and pay
Array the applicable Activation Fee for such Active Compound pursuant to Section
3.3 below. It is understood, however, that any such designation shall be subject
to Sections 3.2(b) and 3.6 below; and to the extent that such designation is
precluded as described in Section 3.6 below, such Compound shall not be an
Active Compound hereunder. Likewise, if [ * ] Compound [ * ] Compound. [ * ]
designation of a Compound as an Active Compound it is understood that the
designation shall include as Active Compounds all non-covalent derivatives of
such chemically distinct compound, including but not limited to acid addition
salts and cationic salts, and shall include as Active Compounds all
diastereomeric and enantiomeric forms thereof. A Compound designated as Active
Compound together with its non-covalent derivatives and its diastereomeric and
enantiomeric forms shall be considered a single designation.
(b) Restriction. DuPont agrees that for so long as
such Compounds are subject to the provisions of Section 4.1, it will not, and
will not authorize any third party to, commercialize any Compound for any
purpose unless such Compound has been designated and activated as an Active
Compound hereunder.
3.3 Activation Fee. For DuPont to designate up to [ * ]
Compounds (together with their non-covalent derivatives and disastereomers and
enantiomers as provided in Section 3.2(a)) based on [ * ] as Active Compounds
hereunder and to initiate DuPont's exclusive rights with respect thereto under
Section 3.1(a)(ii) above, DuPont shall pay to Array an activation fee of [ * ]
Compound so designated as an Active Compound. Separate Activation Fees shall be
due for [ * ] Compounds. Should DuPont wish to activate more [ * ] Compounds
based on a single Scaffold, then the parties will negotiate a suitable fee for
activation. [ * ] Compound [ * ] Compound [ * ].
[ * ] = 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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3.4 Active Derivatives. At any time prior to the [ * ]
Agreement, whichever is earlier, DuPont shall have the right to [ * ] Derivative
[ * ] Active Derivative, as set forth in this Section 3.4 below. [ * ]
Derivative [ * ] Active Derivative, DuPont shall notify Array in writing of
DuPont's [ * ] Derivative [ * ] Active Derivative, [ * ] the Derivative
(including a complete [ * ]). Within [ * ] business days after receipt of such
notice, Array shall notify DuPont [ * ] Derivative prior to receipt of such
notice. If Array has [ * ] Derivative prior to receipt of such notice, the
Derivative [ * ] Active Derivative and Array [ * ] Active Derivative [ * ] or
otherwise. Upon [ * ] a Derivative [ * ] Active Derivative it is understood that
[ * ] Active Derivatives all [ * ] of such [ * ] compound, including but not
limited to [ * ], and shall include as Active Derivatives [ * ] thereof. No
Derivative [ * ] an Active Derivative hereunder unless and until Array notifies
DuPont that [ * ] such Derivative. DuPont shall have the right [ * ] Derivatives
[ * ] Core Chemistry, [ * ] Derivatives under this Agreement. A Derivative [ * ]
Active Derivative [ * ] and its [ * ] shall be considered a [ * ]
3.5 Intellectual Property.
(a) [ * ]
(i) [ * ] DuPont Field [ * ] Active
Compounds. Active Derivatives and Analogs as well as [ * ] DuPont [ * ] DuPont.
DuPont [ * ]. Matters of inventorship shall be determined in accordance with
U.S. patent law. For so long as a Compound remains subject to the
confidentiality obligations under Section 4.1 of this Agreement, DuPont will not
file, prosecute or maintain patent applications or patents claiming a Compound
(and/or a composition of matter containing a Compound, and/or a method of use
employing a Compound, and/or the Compound's non-covalent derivatives and
disastereomers and enantiomers) unless DuPont first designates the Compound as
an Active Compound under Section 3.2 of this Agreement. It is understood that
DuPont may nevertheless file, prosecute, and/or maintain patent applications and
patents which [ * ] Compound [ * ] Compound [ * ] Active Compound [ * ] Array
[ * ] Active Compound or Active Derivative, [ * ] DuPont [ * ]
(ii) For inventions other than those vested
in DuPont pursuant to 3.5(a)(i), all right, title and interest in and to such
inventions arising from or made in the performance of this Agreement are
retained by the party that is the employer of the inventor (i.e., inventions
made solely by Array personnel and all intellectual property rights therein
shall be owned by Array, inventions made solely by DuPont personnel and all
intellectual property rights therein shall be owned by DuPont, and inventions
made jointly by DuPont personnel and Array personnel and all intellectual
property rights therein shall be owned jointly by DuPont and Array). Except as
provided in this Article 3 (including Section 3.2(b)), neither party shall have
an obligation to account to the other, or obtain the consent of the other, with
respect to the exploitation (directly or through licensees of third parties) of
any jointly owned invention or intellectual property right, and each party
hereby waives any right it may have under the laws of any jurisdiction to
require such an accounting or consent.
(b) Patent Prosecution For inventions owned by DuPont
pursuant to Section 3.5(a)(i) Array will cooperate with and assist DuPont, at
DuPont's expense, in filing for and obtaining such patents or such other
protection of DuPont's intellectual property rights in the Active Compounds,
Active Derivatives and Analogs as is reasonably necessary or appropriate. For
[ * ] = 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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inventions co-owned according to 3.5(a)(ii) the parties will discuss at the
request of either party any steps desirable and/or necessary to secure patent
protection and their respective responsibilities.
(c) Infringement. In the event a third party is
infringing any Array Patent Right by reason of the manufacture, sale, use or
importation of an Active Compound, provided that such infringement is
substantial and continuing, DuPont shall have the right to bring a lawsuit or
other appropriate legal proceeding to enforce such Array Patent Rights with
respect to such infringement. Otherwise, the parties agree that Array shall have
and retain the exclusive right to enforce the Array Patent Rights (itself or
through third parties). Array agrees to cooperate with DuPont with respect to
the enforcement of the Array Patent Rights pursuant to this Section 3.5(c),
including upon request of DuPont by joining as a nominal party at DuPont's
expense, where so joining is required for the Initiating Party to bring such
suit. Any action brought in accordance with this Section 3.5(c) shall be at the
expense of the Initiating Party, and as between the parties hereto, any
recoveries shall be retained by the Initiating Party.
(d) Grant to Array. With respect to inventions vested
in DuPont pursuant to Section 3.5(a)(i) above and patents and patent
applications filed thereon claiming a composition of matter involving an Active
Compound, DuPont hereby grants Array a non-exclusive right and license, with the
right to grant sub-licenses, to make, have made and use any such Active
Compounds for internal purposes.
3.6 Third Party Rights. It is understood that Array is in the
business of providing combinatorial compound libraries to third parties, and
except as expressly provided herein, nothing herein shall prevent or restrict
Array from providing Compounds (together with their non-covalent derivatives and
disastereomers and enantiomers) and/or Derivatives to third parties, or from
using the Compounds (together with their non-covalent derivatives and
disastereomers and enantiomers) and/or Derivatives for any purposes. It is
further understood that Array may grant to third parties rights to acquire
licenses in the Compounds (together with their non-covalent derivatives and
disastereomers and enantiomers) similar to those granted to DuPont hereunder;
accordingly, DuPont's right to designate any particular Compound as an Active
Compound and/or any particular Derivative as an Active Derivative, and Array's
grant of rights to DuPont under this Article 3, are limited to the extent that
Array has prior to designation of an Active Compound or Active Derivative
granted a third party a license or other right with respect to such a Compound
(together with its non-covalent derivatives and disastereomers and enantiomers)
or Derivative. It is understood and agreed that so long as Array complies with
this Article 3, Array shall have no liability with respect to any conflict of
DuPont's rights and those rights granted to third parties by Array.
3.7 No Liability. It is understood and agreed that, even if
Array complies with its obligations under this Agreement, compounds provided to
Third Parties in the course of Array's other business activities may result in
Third Party patent applications and patents, including patent applications and
patents owned by such Third Parties, or jointly owned by Array and such Third
Parties, which could conflict with patent applications and patents owned by
DuPont, or jointly owned by Array and DuPont hereunder. Array shall use its
reasonable efforts to avoid such conflict; provided, however, that unless DuPont
is damaged as a proximate result of a material breach by Array of Section
3.1(c), that Array shall have no liability under this Agreement with respect to
any such conflict.
[ * ] = 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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4 CONFIDENTIALITY
4.1 Confidential Information. Except as expressly provided
herein, the receiving party (hereinafter, the "Receiving Party") shall not
disclose to any third party or use for any purpose any Confidential Information
furnished to it by the other party (hereinafter the "Disclosing Party") pursuant
to this Agreement for a period ending five (5) years after the term of this
Agreement provided in Section 7.1. For purposes of this Article 4, "Confidential
Information" shall mean any information disclosed by the Disclosing Party to the
Receiving Party which if disclosed in tangible form is marked "confidential" or
with other similar designation to indicate its confidential or proprietary
nature or if disclosed orally is indicated orally to be confidential or
proprietary by the Disclosing Party at the time of such disclosure and is
confirmed in writing as confidential or proprietary by the Disclosing Party
within forty-five (45) days after such disclosure; provided, however, the
Compounds (together with their non-covalent derivatives and disastereomers and
enantiomers) and Compound Information provided hereunder shall be deemed
Confidential Information of Array whether or not so marked. Notwithstanding the
foregoing, Confidential Information shall not include any information that, in
each case as demonstrated by written documentation (i) was already known to the
Receiving Party, other than under an obligation of confidentiality to the
Disclosing Party, at the time of disclosure; (ii) was generally available to the
public or otherwise part of the public domain at the time of its disclosure to
the Receiving Party; (iii) 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 this Agreement; (iv) was
subsequently lawfully disclosed to the Receiving Party by a third party who did
not acquire it directly or indirectly from the Disclosing Party; or (v) was
developed by the Receiving Party without use of or reference to any Confidential
Information of the Disclosing Party.
4.2 Disclosure to Array. Notwithstanding Section 4.1 above, if
DuPont desires to disclose to Array Confidential Information related to (i) the
activity of a compound in biological or other screens or targets, (ii) the
targets against which a compound is or will be screened, (iii) a request for
re-supply of a Compound, (iv) DuPont's election to activate a Compound or (v)
other development or screening efforts with respect to a compound, DuPont agrees
to first provide Array with a non-confidential summary of such information, and
shall not disclose such Confidential Information to Array, if Array notifies
DuPont that Array does not desire to receive such Confidential Information.
4.3 Permitted Use and Disclosures. The Receiving Party may use
and disclose the Confidential Information of the Disclosing Party to the extent
necessary to exercise its rights or perform its obligations under this
Agreement. Examples of permitted uses and disclosures include DuPont's rights to
file and prosecute patent applications and patents (including without limitation
DuPont's rights to disclose methods of synthesis of Active Compounds covered
under Licensed Technology), a Receiving Party's rights to prosecute or defend
litigation, a Receiving Party's obligation to comply with applicable
governmental regulations or court order or to otherwise submit information to
tax or other governmental authorities, or a Receiving Party's right to
sublicense or otherwise exercise license rights expressly granted by the other
party to it pursuant to the terms of this Agreement. However, except for any
DuPont disclosure to any government agency for the purpose of obtaining approval
to test or market a product or for the purpose of obtaining patent protection,
if the Receiving Party is required (e.g., by court order) to make any disclosure
of the Disclosing Party's Confidential Information without a confidentiality
[ * ] = 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.
9
agreement in place it shall give reasonable advance notice to the Disclosing
Party of such disclosure to enable the Disclosing Party to seek confidential
treatment of such Confidential Information, whether by protective order or
otherwise. Moreover for the avoidance of doubt and in recognition of DuPont's
various research interests, DuPont may disclose (a) any compound other than a
compound (together with its non-covalent derivatives and disastereomers and
enantiomers) specifically disclosed by Array to DuPont pursuant to either the
Confidentiality Agreement or the provisions of Section 4.1. In addition the
Receiving Party may disclose Confidential Information of the Disclosing Party to
an Affiliate of the Receiving Party which agrees to protect the Disclosing
Party's Confidential Information as provided by the Confidentiality Agreement or
by this Agreement as the case may be. For purposes of this Agreement "Affiliate"
shall mean companies under control of, controlled by or under common control
with either of the Parties and "control" shall mean ownership of at least 50% of
the stock or other interest of such company.
4.4 Nondisclosure of Terms. Each of the parties hereto agrees
not to disclose to any third party other than an Affiliate the terms of this
Agreement without the prior written consent of the other party hereto, except to
such party's attorneys, advisors, investors and others on a need to know basis
under circumstances that reasonably ensure the confidentiality thereof, or to
the extent required by law. Notwithstanding the foregoing, the parties shall
agree upon a press release to announce the execution of this Agreement
5 REPRESENTATIONS AND WARRANTIES
5.1 DuPont. DuPont represents and warrants that it has the
legal power, authority and right to enter into this Agreement, and to perform
all its obligations hereunder.
5.2 Array. Array represents and warrants that: (i) it has the
legal power, authority and right to enter into this Agreement, and to perform
all its obligations hereunder; (ii) it has the legal right and power to extend
the rights granted in this Agreement; (iii) it has not previously granted, and
during the term of this Agreement will not knowingly make any commitment or
grant any rights which are inconsistent in any material manner with the rights
and licenses granted to DuPont herein; (iv) to the best of its knowledge, as of
the Effective Date, there are no existing or threatened actions, suits or claims
pending against it with respect to the Licensed Technology; and (v) as of the
Effective Date, the Licensed Technology does not include intellectual property
licensed from third parties that would require DuPont to pay to such third
parties a royalty or other amounts to make, have made, use or import Active
Compounds.
5.3 Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN
THIS ARTICLE 5, NEITHER ARRAY NOR DUPONT MAKES ANY REPRESENTATION OR WARRANTIES
OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO COMPOUNDS
OR PRODUCTS BASED THEREON, OR INFORMATION DISCLOSED HEREUNDER, INCLUDING, BUT
NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF ANY LICENSED TECHNOLOGY, PATENTED OR UNPATENTED,
OR NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
[ * ] = 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.
10
6 INDEMNIFICATION
6.1 DuPont. DuPont agrees to indemnify, defend and hold Array,
and its directors, officers, employees and agents harmless from and against any
losses, costs, claims, damages, liabilities or expense (including reasonable
attorneys" and professional fees and court and other expenses of litigation)
(collectively, "Liabilities") arising out of or in connection with third party
claims relating to (i) any Compounds (together with their non-covalent
derivatives and disastereomers and enantiomers) or product based thereon
developed, manufactured, used, sold or otherwise distributed by or under
authority of DuPont or its designees (including, without limitation, product
liability claims), or (ii) any breach by DuPont of the representations and
warranties made in this Agreement, except in each case, to the extent such
Liabilities resulted from the gross negligence or intentional misconduct of
Array.
6.2 Array. Array agrees to indemnify, defend and hold DuPont,
and its directors, officers, employees and agents harmless from and against any
losses, costs, claims, damages, liabilities or expense (including reasonable
attorneys' and professional fees and court and other expenses of litigation)
(collectively, "Liabilities") arising out of or in connection with third party
claims relating to any breach by Array of the representations and warranties
made in this Agreement, except in each case, to the extent such Liabilities
resulted from the gross negligence or intentional misconduct of DuPont.
6.3 Procedure . A party that intends to claim indemnification
(the "Indemnitee") under this Article 6 shall promptly notify the indemnifying
party (the "Indemnitor") in writing of any third party claim, suit or proceeding
included within the indemnification described in this Article 6 above (each a
"Claim") with respect to which the Indemnitee intends to claim such
indemnification, and the Indemnitor shall have sole control of the defense
and/or settlement thereof; provided that the Indemnitee shall have the right to
participate, at its own expense, with counsel of its own choosing in the defense
and/or settlement of such Claim. The indemnification under this Article 6 shall
not apply to amounts paid in settlement of any Claim if such settlement is
effected without the consent of the Indemnitor, which consent shall not be
unreasonably withheld or delayed. The Indemnitee under this Article 6, and its
employees, at the Indemnitor's request and expense, shall provide full
information and reasonable assistance to Indemnitor and its legal
representatives with respect to such Claims.
7 TERM AND TERMINATION
7.1 Term. This Agreement shall become effective on the
Effective Date and shall remain in full force and effect until expiration of the
Activation Period for the last Compound delivered hereunder, unless earlier
terminated in accordance with this Article 7 below, or December 31, 2005,
whichever is earlier.
7.2 Termination.
(a) For Cause. Either party to this Agreement shall
have the right to terminate this Agreement in the event the other party
materially breaches or defaults in the performance of any of its material
obligations hereunder, and such default continues for sixty (60) days after
written notice thereof is provided to the breaching party by the non-breaching
party. Any such termination shall become effective at the end of such sixty (60)
day period unless the breaching
[ * ] = 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.
11
party (or any other party on its behalf) has cured any such breach or default
prior to the expiration of the sixty (60) day period.
(b) Without Cause. After September 30, 2001, either
party may without cause terminate this Agreement by giving the other party 90
days advance written notice.
7.3 Termination for Insolvency. If voluntary or involuntary
proceedings by or against a party are instituted in bankruptcy under any
insolvency law, or a receiver or custodian is appointed for such party, or
proceedings are instituted by or against such party for corporate reorganization
or the dissolution of such party, which proceedings, if involuntary, shall not
have been dismissed within sixty (60) days after the date of filing, or if such
party makes an assignment for the benefit of creditors, or substantially all of
the assets of such party are seized or attached and not released within sixty
(60) days thereafter, the other party may immediately terminate this Agreement
effective upon notice of such termination.
7.4 Effects. It is understood that termination of this
Agreement shall not relieve a party from any right or obligation which, at the
time of such termination, has already accrued to the other party. The provisions
of Articles 1, 4, , 6 and 8 and Sections 3.1, 3.5, 3.6, 3.7 and 7.4 shall
survive the expiration or termination of this Agreement for any reason. In
addition, the provisions of Sections 2.5, 2.6, 3.2, 3.3, and 3.4 shall survive
the expiration or termination of this Agreement for breach by Array but not
breach by DuPont. The provisions of Sections 3.2, 3.3, and 3.4 also shall
survive termination of this Agreement under Section 7.2(b). All other rights and
obligations of the parties shall cease upon expiration or termination of this
Agreement. For purposes of the foregoing, if a Section that so survives is
expressly stated to continue for a period of time specified in such surviving
Section, the same shall survive only for the remainder of the period specified
in such Section. Except as otherwise expressly provided in this Article 7, all
other rights and obligations of the parties shall terminate.
8 MISCELLANEOUS
8.1 Governing Laws. This Agreement and any dispute arising
from the construction, performance or breach hereof shall be governed by and
construed and enforced in accordance with the laws of the state of Colorado,
without reference to conflicts of laws principles.
8.2 No Implied Licenses. Nothing herein shall be construed as
granting either party, by implication, estoppel or otherwise, any license or
other right to any intellectual property, except for the licenses expressly
granted herein.
8.3 Waiver. Any waiver of the terms and conditions hereof must
be explicitly in writing. The waiver by either party of any breach of any
provision hereof by the other party shall not be construed to be a waiver of any
succeeding breach of such provision or a waiver of the provision itself.
8.4 Assignment. The parties agree that their rights and obligations under this
Agreement may not be assigned or otherwise transferred to a third party without
the prior written consent of the other party hereto except as follows: either
party may transfer or assign its rights and obligations under this Agreement to
a successor to all or substantially all of its business or assets relating to
this Agreement whether by sale, merger, operation of law or otherwise; provided
that such
[ * ] = 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.
12
assignee or transferee has agreed in writing to be bound by the terms and
conditions of this Agreement. Any attempted transfer or assignment in violation
of this Section 8.4 shall be void. Subject to the foregoing, this Agreement
shall be binding upon and inure to the benefit of the parties hereto, their
successors and assigns.
8.5 Independent Contractors. The relationship of the parties
hereto is that of independent contractors. The parties hereto shall not be
deemed to be agents, partners or joint ventures for any purpose as a result of
this Agreement or the transactions contemplated thereby.
8.6 Compliance with Laws. In exercising their rights under
this Agreement, each party shall fully comply in all material respects with the
requirements of any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of rights hereunder
including, without limitation, those applicable to the discovery, development,
manufacture, distribution, import and export and sale of products pursuant to
this Agreement.
8.7 Notices. Any notice required or permitted to be given or
made under this Agreement by either party shall be in writing and delivered to
the other party at its address indicated below (or to such other address as a
party may specify by notice hereunder by courier or by registered or certified
airmail, postage prepaid, or by facsimile; provided, however, that all facsimile
notices shall be promptly confirmed, in writing, by registered or certified
airmail, postage prepaid. All notices shall be effective as of the date received
by the addressee.
if to Array, to: Array BioPharma Inc.
0000 00xx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000
Attn: Xxxxx X. Xxxxxxx
Fax number: (000) 000-0000
if to DuPont, to: [ * ]
8.8 Severability. In the event that any provision of this
Agreement becomes or is declared by a court of competent jurisdiction to be
illegal, unenforceable or void, this Agreement shall continue in full force and
effect without said provision, and the parties shall amend the Agreement to the
extent feasible to lawfully include the substance of the excluded provision to
as fully as possible realize the intent of the parties and their commercial
bargain, unless the invalid provision(s) are of such essential importance to
this Agreement that it is to be reasonably assumed that the parties would not
have entered into this Agreement without the invalid provision(s).
8.9 Force Majeure. Nonperformance of either party (except for
payment obligations) shall be excused to the extent that performance is rendered
impossible by acts of God, strike, fire, earthquake, flood, governmental acts or
orders or restrictions, failure of suppliers, or any other reason where failure
to perform is beyond the reasonable control and not caused by the negligence,
intentional conduct or misconduct of the non-performing party, provided such
party uses its best efforts to resume performance as promptly as possible.
8.10 No Consequential Damages. EXCEPT PURSUANT TO ARTICLE 6,
NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL,
[ * ] = 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.
13
CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING LOST OR ANTICIPATED
REVENUES OR PROFITS RELATING TO THE SAME), ARISING FROM ANY CLAIM RELATING TO
THIS AGREEMENT, WHETHER SUCH CLAIM IS BASED ON CONTRACT, TORT (INCLUDING
NEGLIGENCE) OR OTHERWISE, EVEN IF AN AUTHORIZED REPRESENTATIVE OF SUCH PARTY IS
ADVISED OF THE POSSIBILITY OR LIKELIHOOD OF SAME. THESE LIMITATIONS SHALL APPLY
NOTWITHSTANDING THE FAILURE OF THE ESSENTIAL PURPOSE OF ANY LIMITED REMEDY, AND
THE PARTIES ACKNOWLEDGE THAT THIS SECTION 8.10 REPRESENTS A REASONABLE
ALLOCATION OF RISK.
8.11 Further Assurances. At any time and from time to time
after the Effective Date, each party hereby agrees to execute, acknowledge and
deliver, and cause to be done, executed, acknowledged or delivered, and take or
cause to be taken all such further acts, transfers, conveyances, or assignments
as may be reasonably required to carry out the transactions contemplated by this
Agreement.
8.12 Headings. Headings included herein are for convenience
only, do not form a part of this Agreement and shall not be used in any way to
construe or interpret this Agreement.
8.13 Entire Agreement. The terms and provisions contained in
the Agreement, including the Exhibits hereto, constitute the entire agreement
between the parties and shall supersede all previous communications,
representations, agreements or understandings, either oral or written, between
the parties with respect to the subject matter hereof. No agreement or
understanding varying or extending this Agreement shall be binding upon either
party hereto, unless set forth in a writing which specifically refers to the
Agreement signed by duly authorized officers or representatives of the
respective parties, and the provisions hereof not specifically amended thereby
shall remain in full force and effect. Notwithstanding the foregoing, it is
understood and agreed that the provisions of the Confidentiality Agreement shall
remain in full force and effect; except that, for that any chemical compound
disclosed by Array to DuPont pursuant to the Confidentiality Agreement that
DuPont selects to be delivered by Array as a Compound under this Agreement, the
provisions of this Agreement shall apply. ANY ADDITIONAL OR INCONSISTENT TERMS
OR CONDITIONS OF ANY PURCHASE ORDER, ACKNOWLEDGMENT OR SIMILAR STANDARDIZED FORM
GIVEN OR RECEIVED PURSUANT TO THIS AGREEMENT SHALL HAVE NO EFFECT AND SUCH TERMS
AND CONDITIONS ARE HEREBY EXCLUDED.
8.14 Counterparts. This Agreement may be executed in
counterparts, each of which shall be deemed to be an original and all of which
together shall be deemed to be one and the same agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their authorized representatives and delivered in duplicate
originals as of the Effective Date.
[ * ] = 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.
14
ARRAY BIOPHARMA INC. E. I. DU PONT DE NEMOURS AND COMPANY
By: /s/ Xxxxx Snitmann By: [ * ]
-------------------------------- ---------------------------------
Name: Xxxxx Snitmann Name: [ * ]
------------------------------ -------------------------------
Title: COO Title: [ * ]
----------------------------- ------------------------------
Date: 7/31/00 Date: [ * ]
------------------------------ -------------------------------
[ * ] = 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.
15
EXHIBIT A
CORE CHEMISTRIES
[ * ]
[ * ] = 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.
16
EXHIBIT B
COMPOUND SPECIFICATIONS/QUALITY CONTROL
[ * ]
[ * ] = 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.
17
EXHIBIT C
CORE CHEMISTRIES
[ * ]
[ * ] = 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.
18
EXHIBIT D
Confidential Disclosure Agreement
[ * ]
[ * ] = 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.
